Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91197240
`
`Defendant
`Trans Research International Trust Limited
`
`TRANS RESEARCH INTE
`78 KINKORA DR
`WINNIPEG R3R2L6,
`CANADA
`
`Motion to Dimiss.pdf ( 6 pages )(208720 bytes )
`
`Motion to Dismiss — Rule 12(b)
`Bruno Tarabichi
`
`btarabichi@owenstarabichi.com
`/bruno tarabichil
`
`12/08/2010
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA382635
`ESTTA Tracking number:
`12/08/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197240
`Defendant
`Trans Research International Trust Limited
`TRANS RESEARCH INTE
`78 KINKORA DR
`WINNIPEG R3R2L6,
`CANADA
`Motion to Dismiss - Rule 12(b)
`Bruno Tarabichi
`btarabichi@owenstarabichi.com
`/bruno tarabichi/
`12/08/2010
`Motion to Dimiss.pdf ( 6 pages )(208720 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91197240
`
`Defendant
`Trans Research International Trust Limited
`
`TRANS RESEARCH INTE
`78 KINKORA DR
`WINNIPEG R3R2L6,
`CANADA
`
`Motion to Dimiss.pdf ( 6 pages )(208720 bytes )
`
`Motion to Dismiss — Rule 12(b)
`Bruno Tarabichi
`
`btarabichi@owenstarabichi.com
`/bruno tarabichil
`
`12/08/2010
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA382635
`ESTTA Tracking number:
`12/08/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197240
`Defendant
`Trans Research International Trust Limited
`TRANS RESEARCH INTE
`78 KINKORA DR
`WINNIPEG R3R2L6,
`CANADA
`Motion to Dismiss - Rule 12(b)
`Bruno Tarabichi
`btarabichi@owenstarabichi.com
`/bruno tarabichi/
`12/08/2010
`Motion to Dimiss.pdf ( 6 pages )(208720 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`Owens Tarabichi Docket No. 291‐2001
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91197240
`Application Serial No. 85/027,022
`Mark: TPR 20
`
`
`FGN USA INC.
`
`
`Opposer,
`
`
`
`v.
`
`
`
`
`TRANS RESEARCH INTERNATIONAL
`TRUST LIMITED,
`
`
`Applicant.
`
`
`
`APPLICANT’S MOTION TO DISMISS
`
`
`I.
`
`Introduction
`Pursuant to Federal Rule of Civil Procedure 12(b)(6) and TBMP § 503, Applicant
`Trans Research International Trust Limited (“Applicant”) hereby moves to dismiss the
`Notice of Opposition filed by Opposer FGN USA Inc. (“Opposer”) in its entirety for
`failure to state a claim upon which relief can be granted. In this regard, Opposer merely
`selected several grounds for its opposition in the Electronic System for Trademark
`Trials and Appeals (“ESTTA”) form without providing the required pleading alleging
`facts sufficient to support each alleged ground for opposition as required by 37 CFR
`§ 2.104.
`II.
`Relevant Procedural History
`On April 30, 2010, Applicant filed an application to register the TPR 20
`trademark in connection with “topical pain relief medication; topical pain relief cream;
`anti‐inflammatory cream” in International Class 5. The U.S. Patent and Trademark
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`1
`
`
`
`Applicant’s Motion to Dismiss
`
`
`
`Office (“PTO”) assigned the application Serial No. 85/027,022 and the application was
`published for opposition on November 2, 2010.
`That same day on November 2, 2010, Opposer filed the Notice of Opposition in
`this proceeding on the alleged grounds of (1) immoral or scandalous matter under
`§ 2(a); (2) deceptiveness under § 2(a); (3) false suggestion of a connection under § 2(a);
`(4) priority and likelihood of confusion under § 2(d); mere descriptiveness under § 2(a);
`and (5) fraud on the PTO pursuant to the Torres v. Cantine Torresella S.r.l. case.
`However, Opposer merely selected these alleged grounds in the ESTTA form without
`providing a proper pleading containing the required factual and legal allegations
`supporting each of the alleged grounds. Because Opposer’s Notice of Opposition fails
`to state a claim, Applicant hereby moves to dismiss the Notice of Opposition in its
`entirety.
`III.
`Legal Argument
`A.
`The Notice of Opposition fails to state a claim for immoral or
`scandalous matter under § 2(a)
`In order to state a claim for immoral or scandalous matter under § 2(a), an
`opposer must allege facts showing that a substantial composite of the general public
`views the mark at issue to be immoral or scandalous in the context of the goods, the
`relevant marketplace, and contemporary attitudes. Boston Red Sox Baseball Club LP v.
`Sherman, 88 U.S.P.Q.2d 1581 (TTAB 2008); In re Boulevard Entertainment, Inc., 334 F.3d
`1336, 67 U.S.P.Q.2d 1475, 1477 (Fed. Cir. 2003); and In re Mavety Media Group, Ltd., 33
`F.3d 1367, 31 U.S.P.Q.2d 1923, 1925‐26 (Fed. Cir. 1994).
`In the instant case, Opposer simply has not alleged any of these required
`elements in the Notice of Opposition. Accordingly, Opposer has failed to state a claim
`for immoral or scandalous matter under § 2(a), and Applicant’s motion to dismiss this
`claim should be granted.
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`2
`
`
`
`Applicant’s Motion to Dismiss
`
`
`
`B.
`
`The Notice of Opposition fails to state a claim for deceptiveness under
`§ 2(a) of the Lanham Act
`In order to state a claim for deceptiveness under § 2(a), an opposer must allege
`facts supporting the following elements: (1) that applicant’s mark misrepresents or
`misdescribes the character, quality, function, composition, or use of applicant’s goods
`or services; (2) that public is likely to believe the misdescription describes applicant’s
`goods or services; and (3) that the misdescription is likely to affect the purchasing
`decision. In re Budge Mf’g Co., Inc., 857 F.2d 773, 775 (Fed. Cir. 1988); In re South Park
`Cigar, Inc., 82 U.S.P.Q.2d 1507, 2007 TTAB LEXIS 16, at *3 (TTAB 2007).
`In the instant case, Opposer simply has not alleged any of these required
`elements in the Notice of Opposition. Accordingly, Opposer has failed to state a claim
`for deceptiveness under § 2(a), and Applicant’s motion to dismiss this claim should be
`granted.
`C.
`
`The Notice of Opposition fails to state a claim for false suggestion of a
`connection under § 2(a) of the Lanham Act
`In order to state a claim for false suggestion of a connection under § 2(a), an
`opposer must allege facts supporting the following elements: (1) that the applicant’s
`mark is the same or a close approximation of opposer’s previously used name or
`identity; (2) that the mark would be recognized as such; (3) that the opposer is not
`connected with the activities performed by the applicant under the mark; and (4) that
`the opposer’s name or identity is of sufficient fame or reputation that when the
`applicant’s mark is used on its goods or services, a connection with the opposer would
`be presumed. Buffett v. Chi‐Chi’s, Inc., 226 U.S.P.Q. 428, 1985 TTAB LEXIS 80, at *6–7
`(TTAB 1985); Hornby v. TJX Companies, Inc., 87 U.S.P.Q.2d 1411, 2008 TTAB LEXIS 19, at
`*42–43 (TTAB 2008); University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc.,
`703 F.2d 1372 (Fed. Cir. 1983).
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`3
`
`
`
`Applicant’s Motion to Dismiss
`
`
`
`In the instant case, Opposer simply has not alleged any of these required
`elements in the Notice of Opposition. Accordingly, Opposer has failed to state a claim
`for false suggestion of a connection under § 2(a), and Applicant’s motion to dismiss this
`claim should be granted.
`D.
`The Notice of Opposition fails to state a claim for priority and
`likelihood of confusion under § 2(d) of the Lanham Act
`In order to state a claim for priority and likelihood of confusion under § 2(d) , an
`opposer must allege facts supporting the following elements: (1) priority and (2)
`likelihood of confusion. 15 U.S.C. § 1052(d); Herbko International, Inc. v. Kappa Books, Inc.,
`308 F.3d 1156, 1161–62 (Fed. Cir. 2002); Holmes Products Corp. v. Duracraft Corp., 30
`U.S.P.Q.2d 1549 (TTAB 1994); TBMP § 309.03(c), at 300‐152.
`In the instant case, Opposer simply has not alleged any of these required
`elements in the Notice of Opposition. Accordingly, Opposer has failed to state a claim
`for priority and likelihood of confusion under § 2(d), and Applicant’s motion to dismiss
`this claim should be granted.
`E.
`The Notice of Opposition fails to state a claim for mere descriptiveness
`under § 2(e)(1) of the Lanham Act
`In order to state a claim for mere descriptiveness under § 2(e)(1), an opposer
`must allege facts showing that the mark merely describes an ingredient, quality,
`characteristic, function, feature, purpose, or use of the relevant goods. Callaway
`Vineyard & Winery v. Endsley Capital Group Inc., 63 USPQ2d 1919, 1921 (TTAB 2002);
`Dominoʹs Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359 (TTAB 1988); TBMP §
`309.03(c).
`In the instant case, Opposer simply has not alleged any of these required
`elements in the Notice of Opposition. Accordingly, Opposer has failed to state a claim
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`4
`
`
`
`Applicant’s Motion to Dismiss
`
`
`
`for mere descriptiveness under § 2(e)(1), and Applicant’s motion to dismiss this claim
`should be granted.
`F.
`The Notice of Opposition fails to state a claim for fraud under
`Torres v. Cantine Torresella S.r.l.
`In order to state a claim for fraud under Torres v. Cantine Torresella S.r.l., an
`opposer must allege facts supporting the following elements: (1) the applicant made a
`false representation of fact in connection with applicant’s trademark application; (2) the
`false representation was material; and (3) the applicant made the false, material
`representation of fact knowingly. PCAOB‐Online v. Public Company Accounting
`Oversight Board, 2005 TTAB LEXIS 76, at *8 (TTAB 2005) (non‐precedential); Torres v.
`Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986). Moreover, the circumstances
`constituting the fraud must be pled with particularity. Fed. R. Civ. P. 9(b); Intellimedia
`Sports, Inc. v. Intellimedia Corporation, 43 U.S.P.Q.2d 1203.
`In the instant case, Opposer simply has not alleged any of these required
`elements in the Notice of Opposition and certainly has not alleged anything with the
`requisite particularity. Accordingly, Opposer has failed to state a claim for fraud under
`Torres, and Applicant’s motion to dismiss this claim should be granted.
`IV. Conclusion
`For all the foregoing reasons, Applicant respectfully requests that the Board
`dismiss the Notice of Opposition in its entirety.
`
`Dated: December 8, 2010
`
`
`
`
`Respectfully submitted,
`
`Bruno W. Tarabichi
`OWENS TARABICHI LLP
`111 N. Market St., Suite 730
`San Jose, California 95113
`Tel. (408) 298‐8204
`Fax (408) 521‐2203
`Attorneys for Applicant
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`5
`
`
`
`Applicant’s Motion to Dismiss
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the following document:
`
`APPLICANT’S MOTION TO DISMISS
`
`has been served on Opposer at
`
`
`
`Marco D’Amici
`FGN USA Inc.
`1358 West Georgia Street
`RPO BOX 76025
`Vancouver, BC V6E 4S2
`Canada
`
`by mailing such document on December 8, 2010 by First Class Mail, postage prepaid.
`
`I declare under penalty of perjury under the laws of the State of California and the
`United States of America that the foregoing is true and correct.
`
`
`
`Bruno W. Tarabichi
`
`
`
`Dated: December 8, 2010
`
`
`
`
`
`
`owens tarabichi llp
`Counselors At Law
`
`6
`
`
`
`Applicant’s Motion to Dismiss
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