Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA484099
`ESTTA Tracking number:
`07/18/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201925
`Plaintiff
`Starbuzz Tobacco, Inc.
`NATU J PATEL
`TTHE PATEL LAW FIRM PC
`2532 DUPONT DRIVE
`IRVINE, CA 92612
`UNITED STATES
`NPatel@thePatelLawFirm.com
`Opposition/Response to Motion
`Natu J. Patel
`NPatel@thePatelLawFirm.com
`/natupatel/
`07/18/2012
`Starbuzz - Opposition to Motion to Compel RFA - 071812.pdf ( 11 pages
`)(695175 bytes )
`Decl of N. Patel RFA - 071812.pdf ( 16 pages )(972998 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADE MARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 85/052,510
`Mark:
`MAI TAI
`
`Filed:
`
`June 2, 2010
`
`Published:
`
`June 14, 2011
`
`a
`
`STARBUZZ TOBACCO, INC.,
`
`Opposer,
`
`FANTASIA DISTRIBUTION, INC.,
`
`Applicant.
`
`\J\/\/\./\J\¢/\/\./\&&/9/\/\_/\../L/\./‘\/\2
`
`OPPOSITION NO: 91201925
`
`STARBUZZ TOBACCO, INC.’S
`OPPOSITION TO APPLICANT’S
`
`MOTION TO COMPEL RESPONSES TO
`
`REQUESTS FOR ADMISSION
`
`Opposition Filed: October 5, 2011
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................................ .. 1
`
`FACTUAL BACKGROUND ....................................................................................................... .. 1
`
`ARGUMENT ................................................................................................................................ .. 3
`
`I.
`
`FANTASIA’S MOTION TO COMPEL RFA RESPONSES FAILS BECAUSE
`
`SUCH MOTION IS COMPLETELY INAPPROPRIATE FOR REQUESTS FOR
`ADMISSION ........................................................................................................ .. 3
`
`II.
`
`EVEN ASSUMING THAT THE MOTION IS PROPER, IT SHOULD BE
`DENIED SINCE FANTASIA FAILS TO PROVIDE ANY EXPLANATION
`
`FOR SEEKING RESPONSES TO THE REQUESTS AT ISSUE ....................... .. 4
`
`III.
`
`ALL OF STARBUZZ’S OBJECTIONS TO FANTASIA’S RFA ARE SOUND . 5
`
`A.
`
`The Requests at Issue are Irrelevant to the Present Opposition Proceeding.
`................................................................................................................... .. 5
`
`B.
`
`The Remaining Objections to Fantasia’s Requests are Also Justified ...... .. 6
`
`CONCLUSION ............................................................................................................................. .. 7
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Halo Mgmt, LLC V. Irzterlcmd, Inc, 308 F. Supp. 2d 1019, 1031-1032
`
`Cal.) ..................... .. 5
`
`Herrera v. Scully, 143 F.R.D. 545, 549 (S.D.N.Y. 1992) ............................................................. .. 6
`
`Playboy Enterprises, Inc. v. Welles, 60 F. Supp. 2d 1050, 1057 (S.D.CA 1999) ......................... .. 7
`
`Watercare Corp. V. Midwesc0—Enterprise, Inc, 171 U.S.P.Q. 696 (TTAB 1971) ....................... .. 4
`
`Other Authorities
`
`TBMP § 523.01 ............................................................................................................................. .. 3
`
`TBMP § 524.04 ............................................................................................................................. .. 4
`
`Rules
`
`37 C.F.R. § 2.120(6) ...................................................................................................................... ..3
`
`37 C.F.R. § 2.120(h) ................................................................................................................. .. 3, 4
`
`Fed. R. Civ. P. 36(a) ................................................................................................................. .. 3, 4
`
`iii
`
`

`
`Opposition No. 91201925
`in the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`INTRODUCTION
`
`Applicant, Fantasia Distribution, lnc.’s (“Fantasia”) motion to compel responses to
`
`requests for admission (the ‘‘Motion’’) is clearly improper. Fantasia’s mere six page motion to
`
`compel three different sets of discovery requests is procedurally and substantively deficient. The A
`
`Motion is designed to do nothing more than waste Opposer, Starbuzz Tobacco, Inc.’s
`
`(“Starbuzz”) resources in an effort to force the abandonment of this Opposition.
`
`Under the Federal Rules, a motion to compel procedure is inapplicable to requests for
`
`admission. Just for this reason, the motion is procedurally deficient and should be denied.
`
`Additionally, combining three separate discovery motions into one memorandum is highly
`
`inappropriate. 1
`
`Even assuming that the Motion was procedurally filed properly, it is still subtantively
`
`deficient. The Motion fails to provide detailed explanations as to why Starbuzz’s responses or
`
`objections were insufficient. The disputed requests seek information that are simply irrelevant to
`
`the issues in the Opposition. Additionally, several of the requests are highly objectionable
`
`because they are compound, call for legal conclusions, and are unduly burdensome. Therefore,
`
`Starbuzz’s objections are completely warranted.
`
`Accordingly, Starbuzz respectfully requests the Honorable Board to deny Fantasia’s
`
`Motion in its entirety.
`
`FACTUAL BACKGROUND
`
`Background Facts. On June 2, 2010, Fantasia filed Application No. 85/052,510 for
`
`protection of the mark “MAI TAI” in International Class 034 for use in various tobacco products
`
`1 Starbuzz notes that Fantasia’s combination of three motions in one memorandum and filing the same memorandum
`three times on the ESTTA system is completely improper. See TBMP § 502.02(b). To avoid any further confusion
`and in accordance with the TTAB rules, Starbuzz is concurrently filing separate oppositions to the three motions.
`Each opposition addresses each set of discovery request.
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`(the “Application”). The Application was filed, pursuant to Section 1(a) of the Lanham Act,
`
`based on alleged use in commerce since November 24, 2009. Fantasia filed the Application even
`
`though Starbuzz has been using the “MAI TAI” mark for tobacco goods since at least as early as
`
`January 13, 2007. Therefore, on June 5, 2010 Starbuzz filed a trademark application for the
`
`mark “MAI TAI”. Starbuzz subsequently filed the present proceeding to oppose Fantasia’s
`
`Application (the “Opposition”) and to adjudicate its rights to the mark “MAI TAI”.
`
`Discovery Dispute. On or about March 20, 2012, Fantasia served discovery requests
`
`including requests for admission (“RFA”), requests for production of documents and
`
`interrogatories to Starbuzz, which were objectionable for several reasons, including relevance to
`
`the claims alleged.
`
`(See Declaration of David Oskin Re Applicant’s Motion to Compel (“Oskin
`
`Decl.) M 3-5, Exhibits A-C). On or about April 24, 2012, Starpuzz timely served its responses
`
`to all the discovery requests. (Oskin Decl. W 6-8, Exhibits D—F).
`
`Despite Starbuzz'”s response, Fantasia still brought this frivolous Motion without
`
`providing a detailed explanation as to why each request is relevant, and why Starbuzz’s
`
`objections are inapplicable. Review of the Motion further reveals that Fantasia has not complied
`
`with the TTAB rules in bringing its motion.
`
`///
`
`///
`
`///
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`Particularly troubling is Fantasia’s improper assertion of completely irrelevant arguments
`
`and document regarding an unrelated mark. Fantasia baselessly asserts that Starbuzz “fabricated
`
`evidence,” regarding a completely unrelated “BLUE SURFER” mark, even after a Federal
`
`District Court already rejected Fantasia’s arguments. 2 Fantasia should be reprimanded for
`
`attempting to bring irrelevant issues into this Motion, especially when a Court has already
`
`determined its arguments to be both baseless and unprofessional. In view of Fantasia’s harassing
`
`litigation tactics and blatant violation of the TTAB rules, Starbuzz respectfully request the Board
`
`to strike Fantasia’s Motion in its entirety as a sanction.
`
`ARGUMENT
`
`I.
`
`FANTASIA’S MOTION TO COMPEL RFA RESPONSES FAILS BECAUSE
`
`SUCH MOTION IS COMPLETELY INAPPROPRIATE FOR REQUESTS FOR
`ADMISSION
`
`As a preliminary matter, Fantasia’s Motion to Compel responses to RFA should fail since
`
`such motion is inappropriate for requests for admission. Pursuant to the rules, a motion to
`
`compel responses is only applicable for other discovery requests such as interrogatories and
`
`requests for production. See 37 C.F.R. § 2.l20(e).
`
`in fact, the motion to compel procedure is
`
`not applicable to reguests for admission. See TBMP § 523.01. The procedure to be followed in
`
`the case of requests for admission is set forth in 37 C.F.R. § 2] 20(h) and Fed. R. Civ. P. 36(a).
`
`2 Fantasia recently made the same arguments before the Federal District Court of Florida when the parties were
`litigating the date of first use of Starbuzz’s BLUE SURFER mark. In opposing summary judgment, Fantasia
`presented the “Investigative Report” attached to the Oskin Decl. as Exhibit G. The Court expressly rejected
`Fantasia’s arguments, finding that: “Fantasia accuses Starbuzz of tampering with evidence, bad faith and other ills,
`and contends that a private investigator sent at Fantasia’s behest was unable to order Blue Surfer hookah tobacco at
`Starbuzz locations. (See id. 4—5). The Court has fully reviewed the evidence submitted by Fantasia and finds it
`does not support Fantasia’s assertions of bad faith and tampering. The evidence of how Starbuzz generates
`invoices does not create even an inference of hand as to which products were covered by the Blue Surfer Mark, or
`as to any other issue for that matter. If anything, the deposition excerpts Fantasia provides are consistent with
`Starbuzz’s assertions, heretofore uncontested, that it has in fact sold Blue Surfer tobacco products. If indeed
`Fantasia has thrown around such weightv accusations without any basis, as the documents would appear to
`show, such conduct is unprofessional and unbecoming of a member of the Bar.” (emphasis added)
`See Declaration of Natu J. Patel ‘J 1, Exhibit A; see also Drew Estate v. Fantasia Distribzrtion, Inc, Case No. l:l l-
`cv-2l900-CMA at * 10-ll (S.D. Fla., July 2, 2012) [ECF N0. l7l].
`
`3
`
`

`
`Opposition No. 91201925
`in the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`Under those rules, if a propounding party is dissatisfied with a responding party’s answer or
`
`objection, and wishes to obtain a ruling on the sufficiency thereof, the propounding party may
`
`file a motion with the Board to determine the sufficiency of the answer or objection. See 37
`
`C.F.R. § 2.1 20(h); Fed. R. Civ. P. 36(a). If the propounding party [ails to file a motion to test
`
`the sufltciencg of the response, it may not thereafter be heard to complain about the
`
`sufliciency thereof.
`
`(emphasis addeofl. See TBMP § 524.04; Watercare Corp. v. Mz'dwesc0—
`
`Enterprise, Inc., I71 U.S.P.Q. 696 (TTAB 1971).
`
`Here, Fantasia has failed to follow the rules and filed a motion to compel instead of a
`
`motion to test the sufficiency of the responses as required under the rules. The Motion should
`
`therefore be stricken based solely on its failure to follow the rules. Additionally, the Motion is
`
`combined with two other motions requesting the Board to compel responses to interrogatories
`
`and compel requests for production. In general, all motions should be filed separately, or at least
`
`be captioned separately. See TBMP § 502.02(b). Fantasia’s failure to file the correct motion and
`
`improper combination of three motions into one brief should be grounds for striking the Motion
`
`in its entirety.
`
`II.
`
`EVEN ASSUMING THAT THE MOTION IS PROPER, IT SHOULD BE DENIED
`SINCE FANTASIA FAILS TO PROVIDE ANY EXPLANATION FOR SEEKING
`
`RESPONSES TO THE REQUESTS AT ISSUE.
`
`Even assuming that the Motion was proper, it should be denied because Fantasia failed to
`
`provide any explanation whatsoever for seeking responses to the requests at issue. For example,
`
`Fantasia failed to explain how responses RFA nos. 4-6 are “critical to the merits of the
`
`Opposition.” (Motion, p. 2). Furthermore, Fantasia failed to articulate how RFA No. 11 relates
`
`to “Starbuzz’s intent to defraud the Trademark Office when filing its numerous applications,
`
`including the subject Application.” (Motion, pp. 2-3). Additionally, Fantasia has not provided
`
`

`
`Opposition No. 91201925
`in the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`any justification for requesting a response to RFA No.12. Fantasia simply makes the conclusory
`
`assertion that the request is “narrowly tailored to inquire as to Starbuzz’s knowledge and intent
`
`when it filed its Application” without any supporting authority.
`
`In View of Fantasia’s failure to provide any explanation whatsoever with respect to the
`
`requests at issue, the Board should deny the Motion in its entirety.
`
`111.
`
`ALL OF STARBUZZ’S OBJECTIONS TO FANTASlA’S RFA ARE SOUND
`
`Contrary to Fantasia’s assertion, Starbuzz did not respond to the requests with “repetitive
`
`and boilerplate objections.” In fact, Starbuzz’s objections are specifically tailored to each of
`
`Fantasia’s inappropriate request. Therefore, Fantasia’s Motion is rneritless.
`
`A.
`
`The Re uests at Issue are Irrelevant to the Present O osition Proceedin .
`
`
`
`
`Staruuzz propeuy objected to the requests at issue since they seek inforrnation that is
`
`irrelevant to the present Opposition. For example, RFA Nos. 4-6 inquire into the date Starbuzz
`
`first “publicly advertised” tobacco products bearing the Mark. However, this inquiry is
`
`irrelevant to Starbuzz’s claims in the Opposition or to Fantasia’s allegations in its answer. The
`
`date Starbuzz first publicly advertised products has no bearing on whether or not it actually sold
`
`those products. In fact, Starbuzz has already provided answers to the issue of priority by
`
`responding to inquiries regarding dates of first sale in RFA Nos. 1-3, 7-9. Therefore, the date of
`
`first “public advertisement” is completely irrelevant to the issues in this proceeding.
`
`RFA nos. ll-l2 are also irrelevant. Starbuzz’s non-sale of herbal molasses products
`
`under the Mark is irrelevant to the issue of Starbuzz’s purported fraud on the USPTO. Even if
`
`Starbuzz’s list of goods is imprecise, that does not evidence intent to defraud the USPTO in a
`
`material way during the registration process. See Halo Mgml, LLC v. Interlcma’, Inc, 308 F.
`
`Supp. 2d 1019, 1031-1032 (ND. Cal).
`
`LII
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`As to RFA No. 12, Starbuzz’s knowledge of the Application is completely immaterial to
`
`intent to defraud. Fantasia has further failed to provide any authority for its position that
`
`Starbuzz’s knowledge is relevant to showing Starbuzz’s intent to defraud. Accordingly, Fantasia
`
`is not entitled to discovery on these irrelevant issues.
`
`B.
`
`The Remaining Objections to Fantasia’s Reguests are.Als0 Justified.
`
`Starbuzz’s remaining objections are also well—supported under Federal law. Starbuzz
`
`properly objected to the requests as compound based on Fantasia’s request for information
`
`regarding Starbuzz’s products _a_t_n_(1 services.3 These are conceptually different topics, which
`
`require separate requests for admission. Therefore, when RFA Nos. 4-6 were asking Starbuzz to
`
`admit that it never publicly advertised tobacco products, it was also asking Starbuzz to admit that
`
`it never publicly advertised any tobacco services. Sucl. requests are iinproper. In fact, requests
`
`for admissions may not contain compound, conjunctive, or disjunctive (e.g. “and/or”) statements.
`
`See Herrera v. Scully, 143 F.R.D. 545, 549 (S.D.N.Y. 1992).
`
`Additionally, Fantasia’s definition of the term “Opposer” in the requests is completely
`
`vague, ambiguous and unintelligible. 4 Fantasia cannot reasonably expect Starbuzz to provide
`
`responses based on information from other entities, which Starbuzz has no control over.
`
`Moreover, as a result of the ill—defmed term “Opposer,” the requests are also 1) compound since
`
`they seek information both in Starbuzz’s control and Fantasia’s control; 2) vague and ambiguous
`
`as to what information Fantasia has the right to obtain; 3) overly broad to the extent they
`
`attempted to impose an obligation on Starbuzz to obtain information from Fantasia’s sources to
`
`3 Fantasia stated that the term “products” shall also refer to “services”.
`
`4 Fantasia defined “Opposer,” “Starbuzz,” “you,” or “your” to refer to: “any company, corporation, entity, or
`individual from which or from whom Applicant has a right to obtain information, documents, and/or things by
`contract or otherwise.”
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052,510
`Published On June 14, 2011
`
`answer Fantasia’s requests; and 4) made solely for the purpose of harassment and annoyance in
`
`imposing such unreasonable burden.
`
`Furthermore, the requests are objectionable since they require Starbuzz to provide a legal
`
`conclusion as to which “company, corporation, entity or individual” Fantasia “has a Lzggg to
`
`obtain information...” from. (emphasis added). Requests for admissions cannot be used to
`
`compel an admission of a pure conclusion of law. See Playboy Enterprises, Inc. v. Welles, 60 F.
`
`Supp. 2d 1050, 1057 (Sy.D.CA 1999).
`
`Starbuzz also properly objected that the requests as burdensome since some of the
`
`requests are unnecessarily repetitive. Therefore, all of Starbuzz’s objections are proper.
`
`CONCLUSION
`
`Based on the foregoing, Starbuzz respectfully requests the Board to strike Fantasia’s
`
`Motion for its failure to follow the rules, or in the alternative deny the Motion in its entirety
`
`because all of Starbuzz’s objections are proper.
`
`Respectfully Submitted,
`THE PATEL LAW FIRM, P.C.
`
`Q2/«Ia-1‘
`
`Carla A. Federis
`
`Jason Chuan
`
`Attorneys for Opposer
`Starbuzz Tobacco, Inc.
`
`The Patel Law Firm, P.C.
`2532 Dupont Drive
`Irvine, CA 92612
`Telephone:
`(949) 955-1077
`Facsimile:
`(949) 955-1877
`CFederis@thePatelLawFirm.com
`.lChuan@thePatelLawFirm.com
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of STARBUZZ TOBACCO, INC.’S OPPOSITION TO
`
`APPLICANT’S MOTION TO COMPEL RESPONSES TO REQUESTS FOR
`
`ADMISSION is being served via United States mail, postage prepaid, on the following, on this
`
`the 18th day of July, 2012 to:
`
`David Oskin
`
`Caliber II’, LLC
`150 N. Michigan Ave, Suite 2800
`Chicago, Illinois 60601
`
`Dana N assiri
`
`

`
`IN THE UNITED STATES PATENT AND TRADE MARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter ofApplication Serial No. 85/052,510
`Mark:
`MAI TAI
`
`Filed:
`
`June 2, 2010
`
`Published:
`
`June 14, 2011
`
`STARBUZZ TOBACCO, INC.,
`
`Opposer,
`
`FANTASIA DISTRIBUTION, INC.,
`
`Applicant.
`
`OPPOSITION NO: 91201925
`
`DECLARATION OF NATU J. PATEL IN
`
`SUPPORT OF STARBUZZ TOBACCO,
`INC.’S OPPOSITION TO APPLICANT’S
`
`MOTION TO COMPEL RESPONSES TO
`
`REQUESTS FOR ADMISSION
`
`Opposition Filed: October 5, 2011
`
`§/\./\/&./§/§/'§/§/§/\_/\.../§/\./\/§/\¢/\¢/\&%/\./§/
`
`I, Natu J. Patel, declare that I am the attorney of record for Opposer, Starbuzz Tobacco,
`
`Inc. (“Starbuzz”), in the above-captioned Opposition.
`
`I am making this declaration in support of
`
`Starbuzz’s Opposition to Applicant’s Motion to Compel Responses to Requests for Admissions.
`
`As such, I have personal knowledge of the following facts and if called upon, I could and would
`
`competently testify thereto:
`
`1.
`
`A true and correct copy of the Order from the Southern District Court of Florida
`
`granting Starbuzz Tobacco, Incfs Motion for Summary Judgment against Fantasia Distribution,
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No, 85/052, 510
`Published On June 14, 2011
`
`Inc.’s third-party claim for trademark cancellation of “BLUE SURFER” mark in Case No. 1:11-
`
`cv-21900-CMA, is attached hereto as Exhibit A.
`
`I declare under the penalty of perj ury under the laws of the United States that the
`
`foregoing is true and correct.
`
`Executed this the 18th day of July, 2012 at Irvine, California.
`
`/x9t%C22/
`
`Natu J. Pate]
`
`

`
`Opposition No. 91201925
`In the matter of Application Serial No. 85/052, 510
`Published On June 14, 2011
`
`CERTIFICATE OF SERVICE
`
`I Certify that a copy of the DECLARATION OF NATU J. PATEL IN SUPPORT OF
`
`STARBUZZ TOBACCO, INC.’S OPPOSITION TO APPLICANT’S MOTION TO
`
`COMPEL RESPONSES TO REQUESTS FOR ADMISSION is being served Via United
`
`States mail, postage prepaid, on the following, on this the 18th day of July, 2012:
`
`David Oskin
`
`Caliber IP, LLC
`150 N. Michigan Ave, Suite 2800
`Chicago, Illinois 60601
`
`/
`
`Dana Nassiri
`
`

`
`Exhibit A
`
`

`
`Case 1:11~cv-21900-CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 1 of 12
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. l1-21900—CIV-ALTONAGA/Simonton
`
`DREW ESTATE HOLDING CO., LLC,
`
`Plaintiff,
`
`vs.
`
`FANTASIA DISTRIBUTION, INC.,
`
`’ Defend ant/
`
`Third-Party Plaintiff,
`
`VS.
`
`STARBUZZ TOBACCO, IN C.,
`
`'l‘hird—Party Defend ant.
`
`/
`
`ORDER
`
`THIS CAUSE came before the Court upon Third-Party Defendant Starbuzz Tobacco,
`
`Inc.’s (“Starbuzz[’s]”) Motion for Summary Judgment on Third-Party Plaintiff Fantasia
`
`Distribution,
`
`lnc.’s (“Fantasia[’s]”) Claim for Trademark Cancellation (“Motion”) [ECF No.
`
`140], filed May 11, 2012. On May 25, 2011, Plaintiff, Drew Estate Holding Company LLC
`
`(“Drew”) filed a Complaint [ECF No. l] alleging unfair competition in violation of 15 U.S.C. §
`
`ll25(A) against Defendant, Fantasia Distribution, Inc. (“Fantasia”). Fantasia filed an answer
`
`and counterclaims/third—party claims against Drew and Starbuzz on three separate occasions; on
`
`each occasion the Court granted motions to dismiss these claims at least in part.
`
`(See June 25,
`
`2012 Order [ECF No. l65]). Most recently, on March 13, 2012, the Court granted in part and
`
`denied in part Starbuzz’s motion to dismiss Fantasia’s second amended third—party complaint
`
`

`
`Case 1:11-cv-21900—CI\/IA Document 171 Entered on FLSD Docket 07/02/2012 Page 2 of 12
`
`Case No. 1 1-21900—CIV-ALTONAGA/Simonton
`
`(“SATPC”) [ECF No. 99].
`
`(See Mar. 13, 2012 Order [ECF No. 109]).
`
`In the SATPC, F‘antasia
`
`alleges two claims against Starbuzz —— Count
`
`1
`
`for unfair competition and trademark
`
`infringement as to the ACID mark, and Count
`
`11
`
`for cancellation of various trademark
`
`registrations.
`
`In the March 13 Order, the Court permitted only Fantasia’s claim for cancellation
`
`of Starbuzz’s U.S. Trademark Application No. 85/055,511 (now Registration No. 4,004,853) for
`
`the mark “Blue Surfer” (“Blue Surfer Mark”) to proceed, on the sole ground that Starbuzz made
`
`allegedly false statements that the Blue Surfer Mark was being used on a “Tobacco Substitute,
`
`Namely, Herbal Molasses.” (Id. 11-12). Starbuzz now seeks summary judgment in its favor on
`
`the remaining portion of Fantasia’s trademark cancellation claim. Fantasia filed a Reply in
`
`Opposition .
`
`.
`
`. (“Response”) [ECF No. 152] on May 29, 2012; and Starbuzz filed a Reply .
`
`.
`
`.
`
`(“Reply”) [ECF No. 162] on June 7, 2012. Fantasia also filed a Motion for Leave to File
`
`Surreply .
`
`.
`
`. (“Motion to File Surreply") [ECF No. 166] with the Surreply [ECF No. 166-1]
`
`attached, on June 25, 2012. The Court has carefully reviewed the parties’ written submissions
`
`and applicable law.
`
`I.
`
`BACKGROUND1
`
`On J Line 5, 2010, Starbuzz filed an application to register the Blue Surfer Mark with the
`
`United States Patent and Trademark Office (“USPTO”).
`
`(See Third Party Def. Starbuzz
`
`Tobacco, lnc’s Statement of Undisputed Facts .
`
`.
`
`. (“SMF”) [ECF No. 140-1] ]] 5). Starbuzz’s
`
`application for the Blue Surfer Mark (“Blue Surfer Application") included the following list of
`
`goods: “Pipe Tobacco; Molasses Tobacco; Tobacco; Smoking Tobacco; Flavored Tobacco;
`
`Tobacco Substitute, Namely, Herbal Molasses.”
`
`(Id. 1] 6). The Blue Surfer Application was
`
`accompanied by a declaration by Wael Salim Elhalwani (“Elhalwani”).
`
`(See id. ] 7). Elhalwani
`
`‘ Unless otherwise noted, the facts are undisputed.
`
`

`
`Case 1:11-cv-21900-CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 3 of 12
`
`Case No. l l-21900-CIV-/XLTONAGA/Simonton
`
`declared that he “believes the applicant to be the owner of the trademark/service mark sought to
`
`be registered,
`
`.
`
`.
`
`. that all statements made of his/her own knowledge are true; and that all
`
`statements made on information and belief are believed to be true.” (Id. ‘J 8).
`
`Randy Bahbah (“Bahbah”) is Fa.ntasia’s executive director and president.
`
`(See id. $1 17).
`
`Bahbah is also the sole owner, officer, and director of Herbal Technology, Inc. (“Herbal
`
`Technology”).
`
`(See id.
`
`‘ll l8). Herbal Technology sells herbal molasses products under the
`
`HYDRO mark, which it purchased from the _m_ark’s former owners.
`
`(Leg id W 19-20). The
`
`HYDRO mark is registered in connection with “Tobacco products, namely, flavored tobacco,
`
`cigars, cigar wraps, and cigarettes.”
`
`(Id.
`
`1] 21). When acquiring the HYDRO mark, Bahbah
`
`understood the mark could be used for herbal molasses.
`
`(See id.
`
`fil 22; Def.’s Statement of
`
`Material Facts in Opposition .
`
`.
`
`. (“SMFO”) [ECF No. l52-1] 1] 22).
`
`Fantasia’s earliest claimed date of first use of the marks SURFER ON ACID and
`
`SURFER is November 24, 2009.
`
`(See SMF ll 24). Fantasia. continues to sell products in
`
`connection with the SURFER and SURFER ON ACID marks.
`
`(See id. $ 25). From January
`
`2010 to December 2010, Fantasia’s gross annual sales of SURFER ON ACID products were
`
`$65,000.
`
`(See id.
`
`‘ll 26). The same figure for the period January 2011 to December 2011 is
`
`$240,000. (See id. fl 27).
`
`II.
`
`LEGAL STANDARD
`
`Summary judgment
`
`shall be rendered “if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
`
`genuine issue as to any material fact and that the moving party is entitled to a judgment as a
`
`matter of law.” FED. R. CIV. P. 56(0).
`
`In making its assessment of summary judgment, the Court
`
`“must view all the evidence and all factual inferences reasonably drawn from the evidence in the
`
`

`
`Case 1:11-cv-21900—CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 4 of 12
`
`Case No. 1 1-21900—CIV-ALTONAGA/Simonton
`
`light most favorable to the nonmoving party,” Stewart’ 1/. Happy Herman ’s Cheshire Bridge, 1116.,
`
`117 F.3d 1278, 1285 (1 1th Cir. 1997), and “must resolve all reasonable doubts about the facts in
`
`favor of the non-movant.” United of Omaha Life Ins. Co. v. Sun Life Ins. Co. ofAmerica, 894
`
`F.2d 1555, 1558 (11th Cir. 1990).
`
`“By its very terms, this standard provides that the mere existence of some alleged factual
`
`dispute between the parties will not defeat an otherwise properly supported motion for summary
`
`judgment; the requirement is that there be no gmuine issue of material fact.” Anderson 12.
`
`Liberty Lobby, Inc, 477 U.S. 242, 247-48 (1986) (emphasis in original). “As to materiality, the
`
`substantive law will identify which facts are material. Only disputes over facts that might affect
`
`the outcome of the suit under the governing law will properly preclude the entry of summary
`
`judgment. Factual disputes that are irrelevant or unnecessary will not be counted.” Id. at 248.
`
`Likewise, a dispute about a material fact is a “genuine” issue “if the evidence is such that a
`
`reasonable jury could return a verdict for the nonmoving party.” Id.
`
`The moving party “always bears the initial responsibility of informing the district court; of
`
`the basis for its motion, and identifying those portions of ‘the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes
`
`demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrelt, 477 U.S.
`
`317, 323 (1986). Summary judgment is proper “against a party who fails to make a showing
`
`sufficient to establish the existence of an element essential to that party’s case, and on which that
`
`party will bear the burden of proof at trial.” Id. at 322.
`
`In those cases, there is no genuine issue
`
`of material fact “since a complete failure of proof concerning an essential element of the
`
`nonmoving party’s case necessarily renders all other facts immaterial.” Id. at 323.
`
`

`
`Case l:11—cv—21900-CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 5 of 12
`
`Case No. 1 1-21900-CIV-ALTONAGA,/Simonton
`
`III.
`
`ANALYSIS
`
`The sole remaining claim at issue is whether Starbuzz committed fraud upon the USPTO
`
`by stating that the Blue Surfer Mark was used for “Tobacco Substitute, Namely, Herbal
`
`Molasses.” (Mar. 13, 2012 Order 11~l2). Starbuzz asserts it is entitled to summary judgment on
`
`Fantasia’s claim because it never had any intent
`
`to defraud the USPTO, Fantasia has not
`
`produced any evidence of intent by Starbuzz to commit fraud, and Fantasia has not been
`
`damaged in any event by the alleged fraud.
`
`(,1. ea Mem. of Points and Authorities (“Mem.”) [ECF
`
`No. 140] 1). The Court addresses Starbuzz’s arguments in turn.
`
`1.
`
`Evidence of Starbuzz’s Intent
`
`When a registration is fraudulently obtained, a party may petition to cancel it. See Angel
`
`Flight of Ga, Inc.
`
`12. Angel Flight Am._, Inc., 522 F.3d 1200, 1209 (11th Cir. 2008) (citing 15
`
`U.S.C.
`
`§ 1064(3)).
`
`“Fraud occurs when an applicant knowingly makes false, material
`
`representations of fact in connection with an application for a registered mark.” Id. (citing Metro
`
`Traflic Control, Inc.
`
`12. Shadow Network, Inc, 104 F.3d 336, 340 (Fed. Cir. 1997). “The party
`
`seeking to cancel a mark bears the burden of proving the alleged fiaud by clear and convincing
`
`evidence.” Id. (citing Citibank, NA. v. Citibanc Group, Inc., 724 F.2d 1540, 1544 (11th Cir.
`
`1984)).
`
`Both parties agree that the relevant standard of fraud on the USPTO is set forth in In re
`
`Bose Corp, 5 80 F .3d 1240 (Fed. Cir. 2009). “[D]eception must be willful to constitute fraud” --
`
`a merely “false” representation “occasioned by a misunderstanding, an inadvertence, a mere
`
`negligent omission, or the like” is not enough.
`
`Id. at 1243 (quotation marks and citations
`
`omitted). Moreover,
`
`the standard for intent
`
`is not an objective one.
`
`“Subjective intent to
`
`deceive, however difficult it may be to prove, is an indispensable element in the analysis.” Id. at
`
`

`
`Case 1:11-cv-21900—CMA Document 171 Entered on FLSD Docket 07/02/2012 Page 6 of 12
`
`Case No. 1 1-2l900—ClV—ALTONAGA/Simonton
`
`1245. Absent direct evidence of a party’s intent, subjective intent may be inferred from indirect,
`
`circumstantial evidence, “[b]ut such evidence must still be clear and convincing, and inferences
`
`drawn from lesser evidence cannot satisfy the deceptive intent requirement.” Id. (quoting Star
`
`S’cz'entific, Inc. v. RJ. Reynolds Tobacco Co., 537 F.3d 1357, i366 (Fed. Cir. 2008)).
`
`Starbuzz asserts that summary judgment is proper because Fantasia cannot show the
`
`requisite fraudulent intent to sustain a claim for trademark cancellationz As an initial matter,
`
`Fa.-tasia raises several arguments that are irrelevant to the issue at hand. As it has previously
`
`done in this litigation, Fantasia again asserts that Starbuzz intended to defraud the USPTO by
`
`misrepresenting the date of first use of the Blue Surfer Mark, an argument the Court has already
`
`addressed and dismissed as immaterial in a previous Order.
`
`(See Mar. 13, 2012 Order ll).
`
`Fantasia also, again, alleges that Starbuzz made fraudulent assertions with respect to various
`
`other trademark applications, which the Court has also previously held are utterly irrelevant to
`
`the present action.
`
`(See id. 10). The Court finds them still irrelevant as to whether Starbuzz
`
`made fraudulent representations to the USPTO with respect to the goods covered by the Blue
`
`Surfer Mark.
`
`Starbuzz submits a Declaration of Wael Salim Elhalwani .
`
`.
`
`. (“Elhalwani Declaration”)
`
`[ECF No. l40—3] as evidence that E1halwani’s intent in making statements to the USPTO was not
`
`fraudulent. Elhalwani is CEO of Starbuzz and responsible for managing its business operations.
`
`(See Elhalwani Decl. 1] l). Elhalwani declares the following:
`
`2 The parties also dispute whether Elhalwani’s statement to the USPTO was even false to begin with, let
`alone fraudulent. Fantasia seems to take it as a given that the statement was n