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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA445826
`ESTTA Tracking number:
`12/12/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91202010
`Plaintiff
`Allstate Insurance Company
`Richard M. LaBarge
`Marshall Gerstein Borun LLP
`233 S Wacker Drive 6300 Willis Tower
`Chicago, IL 60606 6357
`UNITED STATES
`rlabarge@marshallip.com
`Opposition/Response to Motion
`Richard M. Labarge
`rlabarge@marshallip.com, mhoover@marshallip.com, kking@marshallip.com
`/rmlabarge/
`12/12/2011
`Response_to MMAAs_Motions.PDF ( 11 pages )(110889 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
`
`Opposition no. 91202010
`
`Serial no. 85/146,741
`
`Mark: MARCH MAYHEM
`
`) ) ) ) ) ) ) )
`
`) )
`
`Allstate Insurance Company,
`
`Opposer,
`
`V.
`
`March Madness Athletic Association,
`
`Applicant.
`
`RESPONSE TO MMAA’S 12(b), (c), AND (1) MOTIONS
`
`Allstate Insurance Company (“Allstate”) urges the Board to deny the motions filed by
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`March Madness Athletic Association (“MMAA”). As discussed in more detail below, MMAA’s
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`12(b) motion to dismiss Allstate’s dilution claim on the ground that Allstate has not alleged
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`when the MAYHEM mark became famous should be denied because Allstate has already alleged
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`that its mark is now famous and that MMAA knew about Allstate’s use of the mark before
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`MMAA began use or filed its application. MMAA’s 12(c) motion for partial judgment on the
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`pleadings should be denied because it is based on statements that MMAA itself says should not
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`be considered by the Board, because there is no admission in the pleading that MMAA ever had
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`a bona fide intent to use the mark, and because whatever MMAA’s intent was when it filed its
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`application, it had no bona fide intent to use the mark after negotiations with Allstate ended.
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`MMAA’s 12(1) motion to strike should be denied because MMAA has not met the standard
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`under Fed.R.Civ.P. 12(1), because the rule of evidence that MMAA relies upon does not apply to
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`pleadings, and because even if that rule did apply to pleadings, the facts raised are admissible for
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`purposes other than showing that MMAA conceded the merits or amount of the claim at issue.
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`

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`I.
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`MMAA’s 12gb; motion to dismiss should be denied
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`MMAA argues that Allstate has not pleaded its dilution claim adequately because
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`Allstate did not “allege when the Opposer’s mark became famous...” Brief at 4, emphasis
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`added. What, exactly, is an opposer obligated to allege with respect to when its mark became
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`famous? The parties disagree.
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`The dilution statute (15 USC 1125(c)(1)) specifically says that a trademark owner has a
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`cause of action if the mark becomes famous before the applicant_b_egins use of the mark:
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`Subject to the principles of equity, the owner of a famous mark
`that is distinctive, inherently or through acquired distinctiveness,
`shall be entitled to an injunction against another person who, at
`any time after the owner ’s mark has become famous, commences
`use of a mark or trade name in commerce that is likely to cause
`dilution by blurring or dilution by tarnishment of the famous mark,
`regardless of the presence or absence of actual or likely confusion,
`of competition, or of actual economic injury.
`
`(Emphasis added.) MMAA has not yet begun use of the mark, and Allstate has alleged that its
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`mark is already famous (paragraphs 11 and 13). Thus, assuming the allegations of the complaint
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`are true, there is no set of facts under which Allstate cannot have satisfied the statutory
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`requirement of fame prior to MMAA’s first use of the mark.
`
`MMAA argues that Allstate must prove that its mark was famous at a time different than
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`the one set in the statute: specifically, at the time when MMAA applied for registration. The first
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`case that MMAA cites on this issue is Polaris Industries, Inc. v. DC Comics, 59 USPQ2d 1798
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`(TTAB 2000). In that case, the Board answered the “when” question the same way the statute
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`does: by saying that the opposer could state a cause of action by alleging fame before the
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`applicant began use. Specifically, the Board granted an opposer leave to maintain a dilution
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`2
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`

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`claim so long as the opposer alleged that the mark had become famous by the time the applicant
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`began use of the mark:
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`[W]e conclude that opposer’s allegation of dilution is legally
`insufficient inasmuch as there is no allegation as to when opposer’s
`mark became famous. In view thereof, opposer’s motion to amend
`the notice of opposition is denied.
`
`However, we note that in its reply brief opposer states that
`‘[o]pposer adopted [its] mark at least as early as 1954, and it was a
`famous trademarkby the time that [alpplicantbegan using [the
`opposed mark].’
`In view thereof, opposer is allowed until
`THIRTY DAYS from the mailing date stamped on this order to
`file and serve an amended pleading which states a claim of dilution
`in accordance with this order.. ..
`
`59 USPQ2d at 1800 (emphasis added.)
`
`Because the current application already alleges the equivalent -— that is, that the
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`MAYHEM mark is already famous and that MMAA has not yet begun use of the mark in
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`connection with the recited services — the opposition, as filed, should already be sufficient.
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`There may be instances where an opposer should be required to prove that its mark was
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`famous before the applicant’s filing date, but this is not one of them. For example, the statue is
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`designed to give some protection to applicants who apply for registration without realizing that
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`their use of the mark may conflict with a prior use. When an applicant did not know of a prior
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`use, it makes sense to require a dilution claimant to prove that its mark was famous before the
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`applicant applied for registration.
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`That is not the case here. The opposition already includes allegations (paragraphs 5 and
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`6) that MMAA only filed its application after starting negotiations with Allstate for a joint
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`promotion that would “expand and leverage Allstate’s popular MAYHEM ad campaign.” Thus,
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`it has been alleged that MMAA already knew of Allstate’s use of the popular MAYHEM
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`campaign before MMAA filed its application.
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`In cases like this, the statute is not intended to
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`3
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`

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`give applicants any rights over known prior users. Thus, there is no reason, under the facts of
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`this case, to depart from the clear statutory language prescribing when a mark must have become
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`famous.
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`In Taro Co. v. Torohead Inc., 61 USPQ2d 1164 (TTAB 2001) (one of the two cases
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`besides the Polaris case that TBMP 309.03(c) cites as suggesting that opposers may sometimes
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`need to allege fame prior to an applicant’s filing date), the court found that it didn’t matter
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`whether the opposer was required to establish fame at the time the applicant began use or at the
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`applicant’s filing date; in either case, there was no dilution:
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`[W]e ultimately hold that opposer’s mark has not been diluted.
`Our opinion would not change whether we considered only the
`pre-application filing date evidence or all the evidence. Because it
`does not affect the outcome, we will not attempt to determine
`what, if any evidence is dated prior to applicant’s filing date.
`Therefore, we will discuss all the evidence.
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`61 USPQ2d at 1175. Elsewhere, the opinion suggests in dictum that a rule requiring an opposer
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`to prove that a mark was famous by the applicant’s filing date might be an appropriate way to
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`protect an applicant’s investment in a potential mark when the applicant was unaware of any
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`prior related use. 61 USPQ2d at 1175. As discussed above, that is not the case here. The Tom
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`dictum does not offer any logical reason why a party that actually does know about a national
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`prior use (like MMAA did) should be able to force an opposer to prove fame at a time other than
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`the time specified in the statute.
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`In Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (the other
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`case cited in TBMP 309.03(c)), the Board denied an opposer leave to add a dilution claim
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`because the motion was filed eight months into the case: “Accordingly, we find that, based on
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`the record herein, opposer has not shown that it did not unduly delay in seeking to add its
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`dilution claim.” 64 USPQ2d at 1541. The suggestion that the dilution claim might be
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`4
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`

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`inadequate under the facts of that case is pure dictum, and again offers no basis to require
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`Allstate to allege that the MAYHEM mark was famous when MMAA applied for registration.
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`Allstate does intend to prove that MAYHEM was famous when MMAA applied for
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`registration. If the Board concludes that Allstate must prove that to prove dilution, and that the
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`current opposition is deficient for not specifically including such an allegation, then Allstate
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`requests leave to file an amended opposition that includes that allegation. However, in the
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`circumstances of t_l;i_s case, where it has already been alleged that the applicant knew about the
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`opposer’s mark before it filed the opposed application, there is no reason why Allstate should be
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`required to prove that its mark was also famous at that time.
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`11.
`
`MMAA’s 12gc) motion for partial judgment should be denied
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`MMAA’s motion for partial summary judgment should be denied for three reasons: 1)
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`because the motion is based on paragraphs of the opposition that MMAA itself says should not
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`be considered, 2) because even if those paragraphs are read as admitting that MMAA originally
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`had a bona fide intent to use the mark in connection with some recited services, it cannot be read
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`as admitting that MMAA originally had a bona fide intent to use the mark on afl the recited
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`services, and 3) because, no matter what MMAA’s original intent was, an ITU application
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`should not be valid when (as alleged here) the applicant does not currently have a bona fide
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`intent to use the mark.
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`The only facts that are said to support MMAA’s motion are found paragraphs 5 and 6 of
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`the opposition. Brief at 5. MMAA has simultaneously moved to strike those paragraphs.
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`MMAA has not explained why it thinks that a 12(c) motion can be premised on allegations that it
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`says should not be considered, nor has it offered any legal support for that proposition.
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`The allegation in question is that, prior to MMAA filing the opposed application:
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`

`
`...the NCAA and Allstate contemplated a “March MAYHEM”
`theme that would expand and leverage Allstate’s popular
`MAYHEM ad campaign.
`
`Contrary to MMAA’s assertions, this is not an admission that the NCAA had a bona fide intent
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`to use the mark. First, mere “contemplation” of use is not the same as a bona fide intent to use.
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`LC Licensing V. Berman, 86 USPQ2d 1883 (TTAB 2008). Second, there is no suggestion that
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`Allstate contemplated (much less conceded) that it would be the NCAA (or MMAA) that would
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`use the mark, or that Allstate’s contemplated use of the mark would inure to the benefit of
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`MMAA. The contemplation that has been alleged was that Afitatg would use the mark, and that
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`use would inure to its benefit. Finally, even if the parties together contemplated that MMAA
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`might “use” the mark in connection with §_O__IT_1§ of the services recited in the opposed application,
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`the allegations certainly cannot fairly be read as an admission that MMAA had a bona fide intent
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`to use the mark in connection with the insurance services listed in MMAA’s application. It was
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`contemplated both by Allstate and (Allstate believes) by the NCAA that those services would be
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`provided by Allstate and by Allstate alone.
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`Even if the parties had contemplated some form of cooperative arrangement under which
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`use of the proposed mark would inure to the benefit of MMAA, the bona fides of that intent
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`evaporated when the negotiations between the parties ended. MMAA says that a bona fide intent
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`to use the mark is only required at the time of filing; Allstate maintains that the intent must
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`continue throughout the pendency of the application.
`
`Unfortunately, Allstate has found no cases that squarely address this issue. MMAA cites
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`TBMP 309.03(c)(5) for the proposition that an application can be opposed if the applicant cannot
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`prove a bona fide intent as of the filing date. However, that section of the TBMP specifically
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`

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`says that lack of a bona fide intent at the filing date is only one of many examples of possible
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`grounds for opposition, and that the list “is exemplary, not exhaustive”!
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`The statute expressly provides that an applicant must not only have a bona fide intent to
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`use the mark at the time of filing, but must also have such an intent every time it requests an
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`extension of time to prove use. 15 USC 1051(d)(2). In addition, when an applicant files an ITU
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`or 44(e) application without an oath, the regulations and the office require the applicant to
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`confirm not only that the applicant had a bona fide intent to use the mark as of the filing date, but
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`also that it s_ti_ll has such an intent. 37 CFR 2.34(a)(2), (a)(3)(i); TMEP 1101. Surely an
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`applicant bereft of bona fide intent at the time its mark is opposed should not prevail in the case.
`
`In Spirits International, B. V. v. SS. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatzfleri
`
`Birligi, 99 USPQ2d 1545 (TTAB 2011), the Board suggested that an opposer can prevail by
`
`proving that an applicant gave up its bona fide intent to use the mark after the filing date:
`
`Opposer has the initial burden of demonstrating by a
`preponderance of the evidence that applicant lacked on the
`filing date of the application, or now lacks, a bona fide
`intent to use the mark on the identified goods.
`
`Although this language is dictum, the position that an ITU applicant must maintain a bona fide
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`intent to use throughout the application process is consistent with the statutory scheme and
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`intent.
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`For all these reasons, the motion for partial summary judgment should be denied.
`
`111.
`
`MMAA’s 1211) motion to strike should be denied
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`MMAA’s motion to strike should be denied (1) because MMAA has not met the
`
`I The statutory section that MMAA cites (15 USC 1052(b)) has nothing to do with the issue.
`
`

`
`applicable standard under Fed.R.Civ.P. 12(f); (2) because MMAA’s motion is based upon an
`
`evidentiary rule that does not relate to pleadings and should not be considered until trial; and (3)
`
`because even under the rule that MMAA seeks to invoke, the facts at issue are admissible.
`
`A.
`
`MMAA has not met the standard under Fed.R.Civ.P. 12(1)
`
`A motion to strike should not be granted unless the questioned allegations are “so
`
`unrelated to the plaintiffs claim as to be unworthy of any consideration.” Steak Umm ’s, LLC v.
`
`Steak ‘Em Up, Inc. 2009 WL 3540786 (E.D. Pa.), quoting Johnson v. Anhorn, 334 F.Supp.2d
`
`802, 809 (E.D.Pa.2004) (quoting Becker v. Chicago Title Ins. Co, 2004 WL 228672, at *6
`
`(E.D.Pa.Feb.4, 2004)). Wright & Miller (upon which MMAA relies) explains that the standard
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`is comprised of two parts, and emphasizes that 12(f) motions “should be denied unless the
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`challenged allegations have no possible relation or logical connection to the subject matter of the
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`controversy and that their presence in the pleading throughout the proceeding will be prejudicial
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`to the moving party.” 5C Wright & Miller, §1380 at 436. MMAA has not met this standard.
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`The allegations at issue assert that MMAA refused to withdraw the opposed application
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`after sponsorship negotiations with Allstate ended. Far from demonstrating that these allegations
`
`have no possible relation to the case and will unfairly prejudice MMAA, MMAA relies on the
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`very allegations in its 12(c) motion, arguing they constitute a material admission by Allstate.
`
`The motion to strike can be denied on this basis alone.
`
`Decisional law confirms that allegations like these are permitted. In Kimpton Hotel &
`
`Restaurant Group, LLC v. Monaco Inn, Inc. Slip Op. 2008 WL 140488 (D. Colo.), the owner of
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`a hotel chain sued another hotel using a similar name. The complaint included allegations
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`detailing the defendant’s demand for a payment of $2.5 million to stop using the mark. The
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`court refused to strike the allegations, agreeing that the allegations were potentially relevant to
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`

`
`the issues of standing and to the defendant’s unclean hands, and that the defendant had not met
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`the Rule 12(f) standard for showing that the allegations were unworthy of consideration. 2008
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`WL 140488 at p.2.
`
`MMAA makes no effort to explain how it is prejudiced by the allegation that it refused to
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`withdraw its application after sponsorship negotiations ended, and the allegation is clearly
`
`worthy of consideration. Because MMAA has not met the pertinent standard under rule 12(f), its
`
`motion to strike can and should be denied.
`
`B.
`
`MMAA’s reliance on the Fed.R.Evid. 408 is misplaced.
`
`Rather than address the pertinent legal standard, MMAA argues that the allegation is
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`inadmissible, citing Fed.R.Evid. 408. MMAA’s motion fails because Rule 408 does not govern
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`pleadings. Steak Umm Co., LLC v. Steak ”Em Up, Inc., Slip Op., 2009 WL 3540786 (E.D. Pa.);
`
`see also Peace Software, Inc. V. Hawaiian Elec. Co., Inc., 2009 WL 3923350 (D. Haw.) (Rule
`
`408 does not provide a basis for striking allegations since allegations are not evidence).
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`Moreover, under Board procedure, substantive objections to trial evidence are not entertained
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`until trial. Trademark Trial and Appeal Board Rule 503.03. In Toro Co. v. ToroHead Inc., 61
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`U.S.P.Q.2d 1164 (TTAB 2001) as well as the non precedential case cited by MMAA, Pac. Sea
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`Foods Co. v. Emerald Seafoods, 1997 TTAB LEXIS 187 (TTAB June 6, 1997), the Board’s
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`comments about the admissibility of the evidence were not in the context of motions to strike,
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`but instead came at the conclusion of the case, after discovery closed and the briefs were filed.
`
`C.
`
`Rule 408 does not require exclusion of evidence relatingto the allegations
`at issue
`
`Were the Board to consider Applicant’s Rule 408 argument, the facts of the allegations at
`
`issue here are admissible because 1) they do not describe settlement negotiations within the
`
`meaning of the rule and 2) they are relevant to issues other than liability for or the amount of the
`9
`
`

`
`opposition claim.
`
`Paragraphs 5 through 7 of the opposition describe negotiations about sponsorship of the
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`2011 NCAA basketball tournament (115). Those sponsorship negotiations are not “settlement
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`negotiations” under Rule 408. First, they took place before the case was filed. See Ecrix Corp.
`
`v. Exabyte Corp., 191 F.R.D. 611, 615 (D. Colo. 2000) (in patent infringement case, allegations
`
`regarding negotiations that took place prior to filing the complaint were not “settlement
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`negotiations,” and would not be stricken). Second, the sponsorship negotiations were not
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`intended to settle a dispute. The rule covers negotiations about a claim that is disputed a_t_the
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`time of the negotiations in question. The dispute about whether MMAA has a right to register
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`MAYHEM without Allstate’s permission only arose after the sponsorship negotiations ended.
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`Therefore, the sponsorship negotiations fall outside the scope of the rule. See Peace Software.
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`WL 3923350 at p. 7 (denying motion to strike and noting that it was unclear whether the
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`negotiations would trigger Rule 408 because they could have occurred prior to the contemplation
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`of a claim by either party).
`
`The sponsorship negotiations and their subsequent termination are relevant to MMAA’s
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`knowledge of Allstate’s mark and its intent (both at the time of filing and after the negotiations
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`ended), and also demonstrate that the parties had terminated any consideration of Allstate and the
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`NCAA working together. In Victor G. Reiling Associates and Design Innovation, Inc. v. Fisher-
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`Price, Inc., 60 Fed.R.Serv.3d 4, 6 (D. Conn. 2004), the defendant sought to strike paragraphs that
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`it argued related to settlement negotiations. The court noted that the statements reflected
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`affirmative acts by the defendant to terminate the parties’ business relationship.
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`It denied the
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`motion to strike since “it cannot be said to be beyond all doubt that no evidence in support of the
`
`allegations” would be admissible. Further, Rule 408 provides that even evidence of settlement
`
`10
`
`

`
`negotiations can be offered for purposes of showing a defendant’s intent. Fed.R.Evid. 408(b),
`
`see Steak Umm, (the court refused to strike from the complaint references to settlement
`
`negotiations where the allegations were relevant to the defendant’s willful and deliberate
`
`conduct).
`
`Accordingly, Allstate asks that all three motions be denied.
`
`Respectfully submitted,
`
`Allstate Insurance Companyg
`'1 ,
`
`I
`
`
`
`By:
`
`6
`
`,;:;I§/larsha K. Hoover
`Richard M. LaBarge
`Marshall, Gerstein & Borun LLP
`6300 Willis Tower
`
`233 South Wacker Drive
`
`Chicago, Illinois 60606
`(312) 474-6300
`
`December 12, 2011
`
`CERTIFICATE OF SERVICE
`
`I certify that this document is being served on the applicant on December 12, 2011 by
`
`hand-delivering a copy to the attorney of record for the applicant:
`
`Douglas N. Masters
`LOEB & LOEB LLP
`
`321 N CLARK ST STE 2300
`
`CHICAGO, IL 60654-4746
`
`Richard M. LaBarge
`
`S)
`
`11

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