Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA499414
`ESTTA Tracking number:
`10/10/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206800
`Defendant
`Jelly Belly Candy Company
`JONATHAN A. HYMAN
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN ST FL 14
`IRVINE, CA 92614-8214
`UNITED STATES
`efiling@kmob.com;jhyman@kmob.com
`Opposition/Response to Motion
`Jonathan A. Hyman
`efiling@knobbe.com, jhh@kmob.com
`/jhh/
`10/10/2012
`JELLYB 088M-Jelly Belly Response to OGFC Request for Suspension.pdf ( 115
`pages )(6184634 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`JELLYB.O88M
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Original Gourmet Food Company, Inc.,
`
`) Opposition No.: 91206800
`
`Oppose};
`
`V_
`
`Jelly Belly Candy Company,
`
`Applicant.
`
`)
`)
`)
`)
`)
`
`)
`
`I hereby certify that this correspondence and all marked
`attachments are being electronically filed with the Trademark
`Trial and Appeal Board through their web site located at
`hgp://estta.uspto.gov on:
`
`October 10 2012
`(Date)
`
`
`
`APPLICANT’S RESPONSE TO OPPOSER’S RE UES
`
`OF THE PROCEEDING
`
`OR SU PENSION
`
`
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Arlington, VA 22313-1451
`
`Dear Sir:
`
`On October 5, 2012, Opposer, Original Gourmet Food Company, Inc. (“OGFC”), filed a
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`Request For Suspension Of Opposition based on Civ. Action No. l:l 1-cv-0539 pending in the
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`United States District Court for the District of New Hampshire. Applicant, Jelly Belly Candy
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`Company, hereby requests that the Trademark Trial and Appeal Board (the “Board”) exercise its
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`discretion and deny OGFC’s request for suspension.
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`Instead, Jelly Belly respectfully requests
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`that the Board grant Jelly Belly’s pending Motion for Summary Judgment filed on October 8,
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`2012.
`
`OGFC’s request states that its Amended Pleading filed August 10, 2012, is the operative
`
`I. The Civil Litigation
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`pleading. This is wrong. OGFC has only sought leave to file that amended pleading. Jelly Belly
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`vigorously opposed OGFC’s request for leave on the ground that the proposed new claims are
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`futile. See Declaration of Jonathan A. Hyman (“Decl.”) at fil 2, Ex. 1. The District Court has not
`
`

`
`ruled on OGFC’s motion. Thus, the operative pleading is the original Petition for Declaratory
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`Judgment, which OGFC filed on November 19, 2011. See Decl. at ll 3, Ex. 2. The Petition for
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`Declaratory Judgment merely seeks a declaration that OGFC does not infringe Jelly Belly’s
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`trademark rights by reason of OGFC’s use of the mark ORIGINAL GOURMET on candy.
`
`Lg’.
`
`At the time the Petition for Declaratory Judgment was filed, Jelly Belly’s application, which is
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`the subject of the opposition, was not yet published. The Petition for Declaratory Judgment does
`
`not
`
`include claims that have any bearing on the opposition, which ‘seeks only to prevent
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`registration of Jelly Belly’s application on the grounds of alleged infringement of OGFC’s
`
`
`alleged junior rights in the mark I
`"
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`for “Gourmet food items, namely, pretzels,
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`brownies, cookies and popcorn,” in International Class 30.
`
`Similarly, Jelly Belly’s Answer and Counterclaim in the civil action does not include
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`claims that have any bearing on the opposition. See Decl. at
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`I] 4, Ex. 3.
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`Jelly Belly’s
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`Counterclaims include claims for: (1) infringement of Jelly Belly’s registrations for the marks
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`THE ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL GOURMET CANDY
`
`CORN under Section 32(a) of the Lanham Act; (2) false designation of origin and unfair
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`competition based on Jelly Belly’s prior use of the marks THE ORIGINAL GOURMET JELLY
`
`BEAN and THE ORIGINAL GOURMET CANDY CORN, (3) common law trademark
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`infringement based on Jelly Belly’s prior use of the marks THE ORIGINAL GOURMET JELLY
`
`BEAN and THE ORIGINAL GOURMET CANDY CORN; and (4) deceptive and unfair trade
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`practices and unfair competition under New Hampshire state law based on Jelly Belly’s prior use
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`of the marks THE ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL GOURMET
`
`CANDY CORN. None of these causes of action for infringement of Jelly Belly’s rights have
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`bearing on or are germane to the opposition, which seeks only to prevent registration of Jelly
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`2
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`

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`Belly’s application on the grounds of alleged infringement of OGFC’s alleged junior rights in the
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`
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`for “Gourmet food items, namely, pretzels, brownies, cookies and
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`popcorn,” in International Class 30.
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`II. The Board Should Not Suspend The Opposition
`
`A. The pending civil action has no bearing on the opposition
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`In this opposition, OGFC claims that Jelly Be11y’s application for the mark THE
`
`ORGINAL GOURMET for candy should not register because Jelly Belly is allegedly infringing
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`for non-candy food items. As noted above,
`
`/77
`
`
`
`'
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`OGFC’s junior rights in the mark
`
`the civil action has no bearing on the opposition. The causes of action at issue in the civil
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`litigation do not include a claim by OGFC that Jelly Belly is infringing OGFC’s junior rights.
`
`As such suspension is not warranted and, if anything, would be premature. Accordingly, rather
`
`than suspending, the Board should exercise its discretion under Section 5l0.02(a) of the TBMP
`
`and decide Jelly Belly’s pending Motion for Summary Judgment, which is dispositive of this
`
`opposition.
`
`(TBMP § 5l0.02(a): “If there is pending, at the time when the question of
`
`suspension of proceedings before the Board is raised, a motion which is potentially dispositive of
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`the case, the potentially dispositive motion may be decided before the question of suspension is
`
`considered. ”).1
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`B. The opposition is barred by the Morehouse defense
`
`The Board should also deny suspension because the opposition is legally untenable. As
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`1 Jelly Belly reserves its right to address the effect of OGFC’s proposed First Amended Petition
`for Declaratory Judgment if and when the District Court grants OGFC’s motion for leave to
`amend its operative pleading.
`'
`
`

`
`stated above,
`
`the opposition seeks to prevent Jelly Belly’s registration of the mark THE
`
`ORIGINAL GOURMET for candy based on alleged infringement of OGFC’s subsequently
`
`obtained rights and registration for
`
`
` Wi for non-candy food items. However, JellyI
`
`
`
`Belly is the owner of U.S. Registration Nos. 1,942,689 and 3,771,488 for the mark THE
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`ORIGINAL GOURMET JELLY BEAN and U.S. Registration Nos. 2,085,121, and 3,378,061
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`for the mark THE ORIGINAL GOURMET CANDY CORN.
`
`In fact, U.S. Registration No.
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`l,942,689,is incontestable. As such, and as explained in more detail in Jelly Belly’s pending
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`Motion for Summary Judgment, OGFC’s opposition is barred by the Morehouse defense.
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`Accordingly, as a matter of law, OGFC cannot establish that there is any harm from the issuance
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`of a second registration, or in this case a fifth registration, for the same or substantially identical
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`mark for the same or substantially identical goods and is not entitled to the granting of the
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`opposition. The suspension of the opposition pending disposition of the civil action will severely
`
`prejudice Jelly Belly by delaying the granting of its application based on an opposition on which
`
`OGFC cannot prevail. As such, the Board should exercise its discretion under Section 510.02(a)
`
`of the TBMP and decide Jelly Belly’s pending Motion for Summary Judgment, which is
`
`dispositive of this opposition.
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`C. The opposition is barred because Jelly Belly has priority
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`Moreover, Jelly Belly has priority of use in the mark THE ORIGINAL GOURMET, and
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`its other THE ORIGINAL GOURMET-formative marks - THE ORIGINAL GOURMET JELLY
`
`BEANS and THE ORIGINAL GOURMET CANDY CORN. Jelly Belly has used the mark THE
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`ORIGINAL GOURMET JELLY BEAN since at least as early as January 1977 and the mark
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`THE ORIGINAL GOURMET CANDY CORN since at least as early as September 1996, years
`
`before OGFC even existed.
`
`See Decl. at 1111 5-8, Ex. 4-7. Based on Jelly Belly’s prior,
`
`4
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`

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`continuous and pervasive use of these marks, Jelly Belly has priority to the mark THE
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`ORIGINAL GOURMET and OGFC therefore can have no claim that Jelly Belly’s registration of
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`the mark THE ORIGINAL GOURMET infringes OGFC’s junior rights.
`
`See Serzgoku Works
`
`Ltd. v. RMC Int 7, Ltd, 96 F.3d 1217, 1219 (9th Cir. 1996) (“It is axiomatic in trademark law that
`
`the standard test of ownership is priority of use.”). Accordingly, as a matter of law, and as
`
`explained in more detail in Jelly Belly’s pending Motion for Summary Judgment, OGFC is not
`
`entitled to the granting of the opposition. Thus, the suspension of the opposition will severely
`
`prejudice Jelly Belly by delaying the granting of its application.
`
`D. The opposition is barred on the ground of laches
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`Furthermore, OGFC’s claims are barred under the doctrine of laches. The Board has
`
`recognized that the laches period may run from the date of a prior registration because of the
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`failure of opposer to object to applicant’s earlier registration of the same mark for the same
`
`goods. E Aguion Partners L.P. v. Envirogard Products Ltd., 43 U.S.P.Q.2d 1371, 1997 WL
`
`424968 (T.T.A.B. 1997) (defense of laches is available in an Opposition based on an opposer’s
`
`failure to object to an applicant's earlier registration that inadvertently expired). Jelly Belly has
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`used its mark THE ORIGINAL GOURMET JELLY BEAN since at least as early as January
`
`1977 and the mark THE ORIGINAL GOURMET CANDY CORN since at least as early as
`
`September 1996, and has owned registrations for the mark THE ORIGINAL GOURMET
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`JELLY BEAN since 1995 and the mark THE ORIGINAL GOURMET CANDY CORN on the
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`Supplemental Register since 1997 and on the Principal Register since 2008. As such, as a matter
`
`of law, OGFC is not entitled to relief in the opposition based on the doctrine of laches. Thus, the
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`suspension of the opposition will severely prejudice Jelly Belly by delaying the granting of its
`
`application.
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`

`
`E. The opposition shouldnot be suspended because the district court does not have
`jurisdiction to grant the remedy sought by Opposer
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`Lastly, a district court does not generally have jurisdiction over the USPTO whether to
`
`grant or deny a pending application. E Whitney Information Network, Inc. v. Gagnon, 353 F.
`
`Supp. 2d 1208, 1211 (M.D. Fla. 2005) (“The Court concludes that in order to state a claim under
`
`these statutory provisions, one of the parties must hold a registered trademark with the USPTO;
`
`‘
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`the existence of a pending application is not sufficient”); Universal Tube & Rollform Eguipment
`
`Corp. V. YouTube, Inc., 504 F. Supp. 2d 260, 83 U.S.P.Q.2d 1023 (N.D. Ohio 2007) (dismissing
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`counterclaim seeking cancellation of plaintiff’ s application to register a mark that was the subject
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`of plaintiffs infringement claim). As such, a district court will generally not address the remedy
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`sought by OGFC in the opposition. Suspending the opposition pending a decision in the pending
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`civil action will only serve to delay Jelly Belly’s registration and severely prejudice Jelly Belly.
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`III. CONCLUSION
`
`For the foregoing reasons, Jelly Belly requests that the Board exercise its discretion and
`deny suspension of the opposition and rule on Jelly Belly’s pending Motion for Summary
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`Judgment.
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`Los Angeles, CA 90067
`(310) 551-3450
`Attorneys for Applicant, Jelly Belly Candy Company
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing APPLICANT’S RESPONSE TO
`OPPOSER’S REQUEST FOR SUSPENSION OF THE PROCEEDING upon counsel for
`Endo Pharmaceuticals Inc. by depositing one copy thereof in the United States Mail, first-class
`postage prepaid, on October 10, 2012, addressed as follows:
`
`Claire Zopf
`Z IP Law PLLC
`
`1015 Elm Street Suite 201
`
`Manchester, NH 03101
`
`
`
`

`
`JELLYB.088M
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91206800
`
`Original Gourmet Food Company, Inc.,
`
`Opposer,
`
`V.
`
`Jelly Belly Candy Company,
`
`Applicant.
`
`€\2\2$/\/k/\%%/M
`
`DECLARATION OF JONATHAN A. HYMAN IN SUPPORT OF JELLY BELLY
`
`CANDY COMPANY’S RESPONSE TO OPPOSER’S REg QUEST FOR SUSPENSION OF
`THE PROCEEDING
`'
`
`I, Jonathan A. Hyman, declare as follows:
`
`1.
`
`I am a partner with Knobbe, Martens, Olson & Bear, LLP, counsel of record for
`
`Jelly Belly Candy Company, (“Applicant”) in the above-identified opposition proceeding.
`
`I am
`
`familiar with the facts of this case. The following is true, of my own personal knowledge, and, if
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`called as a witness, I would and could testify competently thereto.
`
`2.
`
`On August 28, 2012, Jelly Belly filed its Memorandum Of Law In Support Of Its
`
`Objection To Original Gourmet Food Company, Inc.’s Motion For Leave To File First Amended
`
`Petition For Declaratory Judgment. Attached as Exhibit 1
`
`is a true and correct copy of Jelly
`
`Belly’s Memorandum Of Law In Support Of Its Objection To Original Gourmet Food Company,
`
`Inc.’s Motion For Leave To File First Amended Petition For Declaratory Judgment.
`
`3.
`
`On November 19, 2011, Original Gourmet Food Company, Inc. (“OGFC”) filed a
`
`Petition for Declaratory Judgment in the United States District Court for the District of New
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`Hampshire. Attached as Exhibit 2 is a true and correct copy of OGFC’s Petition for Declaratory
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`Judgment. On August 10, 2012, OGFC filed a motion in the District Court, seeking leave to file
`
`

`
`a First Amended Petition for Declaratory Judgment. The District Court has not ruled on OGFC’s
`motion.
`I
`
`4.
`
`On May 14, 2012, Jelly Belly filed its Answer to Petition for Declaratory
`
`Judgment and Counterclaims. Attached as Exhibit 3 is a true and correct copy of Jelly Belly’s
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`Answer to Petition for Declaratory Judgment and Counterclaims.
`
`5.
`
`Attached hereto as Exhibit 4 is a true and correct copy of Jelly Belly’s U.S.
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`Registration No. 1,942,689, for the mark THE ORIGINAL GOURMET JELLY BEAN for “jelly
`
`beans” in Class 30, stating that Jelly Belly’s first use of the mark in commerce was January
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`1977.
`
`6.
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`Attached hereto as Exhibit 5 is a true and correct copy of _Jelly Belly’s U.S.
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`Registration No. 3,771,488, for the mark THE ORIGINAL GOURMET JELLY BEAN for
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`“candy” in Class 30, stating that Jelly Belly’s first use of the mark in commerce was January 31,
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`1977.
`
`7.
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`Attached hereto as Exhibit 6 is a true and correct copy of Jelly Belly’s U.S.
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`Registration No. 2,085,121, for the mark THE ORIGINAL GOURMET CANDY CORN for
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`“candy” in Class 30, stating that Jelly Belly’s first use of the mark in commerce was September
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`17,1996.
`
`8.
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`Attached hereto as Exhibit 7 is a true and correct copy of Jelly Belly’s U.S.
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`Registration No. 3,378,061, for the mark THE ORIGINAL GOURMET CANDY CORN for
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`“candy” in Class 30, stating that Jelly Belly’s first use of the mark in commerce was September
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`17, 1996.
`
`

`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct.
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`Executed on October 10, 2012, at Los Angeles, California.
`
`I nathan A. man
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that
`
`I
`
`served a copy of the foregoing DECLARATION OF
`
`JONATHAN A. HYMAN IN SUPPORT OF Jelly Belly Candy C0mQany’S RESPONSE
`
`TO OPPOSER’S REQUEST FOR SUSPENSION OF THE PROCEEDING upon Opposer’s
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`counsel by depositing one copy thereof in the United States Mail, first-class postage prepaid, on
`
`October 10, 2012, addressed as follows:
`
`Claire Zopf
`Z IP Law PLLC
`
`l0l5 Elm Street Suite 201
`
`Manchester, NH 03101
`
`14124466
`
`J
`
`athan
`
`yman
`
`

`
`Exhibit 1
`
`

`
`Case 3.:11~cv«®G§39~SEk-4 Basement: 2&4:
`
`Fiiezé @8f28s*2.2 Rage 2.
`
`:3? 1::
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW HAMPSHIRE
`
`ORIGINAL GOURMET FOOD COMPANY, INC. :
`
`Petitioner,
`
`V.
`
`Civil Action No. 1:11-cv-0539-SM
`
`JELLY BELLY CANDY COMPANY
`
`JURY TRIAL DEMANDED
`
`JELLY BELLY CANDY COMPANY
`
`Respondent.
`
`Counterclaim—Plaintiff,
`
`V.
`
`ORIGINAL GOURMET FOOD COMPANY, INC.
`
`Counterclaim—Defendant.
`
`JELLY BELLY CANDY COMPANY’S MEMORANDUM OF LAW IN SUPPORT OF
`
`ITS OBJECTION TO ORIGINAL GOURMET FOOD COMPANY INC.’S MOTION
`FOR LEAVE TO FILE FIRST AMENDED PETITION FOR DECLARATORY
`JUDGMENT
`
`Respondent and Counterclaim—Plaintiff, Jelly Belly Candy Company (“Jelly Belly”),
`
`respectfully submits this memorandum of law in support of its Objection to Petitioner’s Motion
`
`For Leave To File First Amended Petition For Declaratory Judgment.
`
`INTRODUCTION
`
`Original Gourmet Food Company (“OGFC”) should not be allowed to amend its Petition
`
`because its proposed amendments would be futile. OGFC’s Proposed Counts ll-V are premised
`
`on the allegation that Jelly Belly’s use of THE ORIGINAL GOURMET by itself, without a
`
`Exhibit 1
`
`

`
`Case 3.:3.f.«cx.«w{}t1>S’;39~;‘:“>§v%
`
`Qzaeztzmé.-ant; 25»:
`
`?5§§£§{§ {ESZZSIZE Sage
`
`of 11:
`
`generic or descriptive product identifier, infringes OGFC’s alleged rights in “Original Gourmet.”
`
`But, these proposed claims are futile because Jelly Belly has been continuously using THE
`
`ORIGINAL GOURMET on candy some 27 years before OGFC first used the virtually identical
`
`trade name or mark “Original Gourmet” on any product and 31 years before OGFC first used the
`
`mark on candy. Specifically, Jelly Belly’s prior rights to THE ORIGINAL GOURMET are
`
`based on its longstanding and continuous use of the marks THE ORIGINAL GOURMET JELLY
`
`BEAN and THE ORIGINAL GOURMET CANDY CORN (collectively “THE ORIGINAL
`
`GOURMET marks” or “THE ORIGINAL GOURMET family of marks”). Given that Jelly Belly
`
`has used THE ORIGINAL GOURMET for decades before OGFC ever used “Original
`
`Gourmet”, Jelly Belly cannot possibly infringe any rights that OGFC may own.
`
`OGFC’s Proposed Counts VI-VIII to restrict Jelly Belly’s federal trademark registrations
`
`for THE ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL GOURMET CANDY
`
`CORN to jelly beans and candy corn, respectively, would also be futile. OGFC contends that
`
`three of Jelly Belly’s trademark registrations, which are registered for “candy”, should be
`
`cancelled in part because Jelly Belly only uses the registered marks on jelly beans and candy
`
`corn, respectively, and because any use on any candy product other than jelly beans and candy
`
`corn would constitute deceptive matter. OGFC cannot possibly succeed on either of these
`
`theories.
`
`Jelly Belly’s use of its THE ORIGINAL GOURMET JELLY BEAN and THE
`
`ORIGINAL GOURMET CANDY CORN marks on jelly beans and candy corn, respectively, is
`
`sufficient to support its registrations for “candy”. Moreover, OGFC does not claim that Jelly
`
`Belly has actually made deceptive use of its registered marks, and contrary to OGFC’s
`
`contentions, Jelly Belly could use its registered marks in a non-deceptive manner on candy other
`
`than jelly beans and candy corn. Thus, there is no basis to restrict Jelly Belly’s registrations
`
`Exhibit 1
`
`

`
`Cass 3‘t:§.3.«cv»t}§53@~$Evi Q:::::ume:“:‘:
`
`?%%é-:~{;% €38z"2é*é;’3.:i
`
`Page 3 of it
`
`because of some hypothetical, speculative future alleged deceptive use.
`
`W
`
`Since 1977, Jelly Belly has continuously used THE ORIGNAL GOURIVIET on
`
`packaging and advertising for candy. See Declaration of Karen Vogel Weil (“Decl.”) at 1111 2-4.
`
`Jelly Belly has historically used THE ORIGNAL GOURMET followed by a generic descriptor,
`
`i.e. THE ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL GOURMET CANDY
`
`CORN. See Decl. at 1111 3-6. Jelly Belly owns several United States trademark registrations for
`
`its THE ORIGINAL GOURMET marks. See Decl. at 1111 3-7.
`
`Jelly Belly owns two federal
`
`registrations for THE ORIGINAL GOURMET JELLY BEAN, one for “jelly beans” and one for
`
`“candy.” See Decl. at 1111 3-4; U.S. Reg. Nos. 1,942,689 and 3,771,488. Jelly Belly also owns
`
`two federal registrations for THE ORIGINAL GOURMET”CANDY CORN, both for “candy.”
`
`See Decl. at 1111 5-6; U.S. Reg. Nos. 2,085,121, and 3,378,061.
`
`OGFC did not even start doing business until 2004, selling cookies and other baked
`
`goods under the name “Original Gourmet”. See Petition for Declaratory Judgment at 11 7 (Dkt.
`
`No. 1). According to OGFC’s own recently filed trademark application, in late 2008, OGFC
`
`expanded its product offering to include lollipops, also under the name “Original Gourmet”. See
`
`Decl. at 11 8.
`
`On November 19, 2011, OGFC filed a Petition seeking a declaration that its use of
`
`“Original Gourmet” on baked goods and candy does not
`
`infringe any of Jelly Belly’s
`
`longstanding trademark rights (Dkt. No.
`
`I).
`
`Jelly Belly counterclaimed on May 14, 2012,
`
`alleging,
`
`inter alia, that OGFC willfully and intentionally infringed Jelly Belly’s trademark
`
`rights in the THE ORIGINAL GOURMET marks, in violation of state and federal law, by its use
`
`of “Original Gourmet” on lollipops (Dkt. No. 9).
`
`Exhibit 1
`
`

`
`Case» §.:3.§.M~ci;w£>€:5:‘*;€..%~8Ev%;
`
`Da»eL:mefltZ€3-E
`
`flied G8f28ifi.2 Page 430231.:
`
`OGFC now seeks to amend its Petition. First, OGFC proposes to allege that Jelly Be11y’s
`
`use of THE ORIGINAL GOURMET separate from descriptive product identifiers——jelly bean
`
`and candy com—+:onstitutes infringement of OGFC’s alleged trademark rights. Second, OGFC
`
`seeks to partially cancel
`
`three Jelly Belly trademark registrations for THE ORIGINAL
`
`GOURMET JELLY BEAN and THE ORIGINAL GOURMET CANDY CORN, to restrict these
`
`registrations to just jelly beans and candy corn, respectively.
`
`ARGUMENT
`
`I.
`
`' Legal Standard
`
`Leave to amend should be denied when the proposed amendment would be futile. Dwyer
`
`v. United States, 76 F. Supp. 2d 154, 160 (D.N.H. 1999); see Abraham v. Woods Hole
`
`Oceanographic Inst, 553 F.3d 114, 117 (1st Cir. 2009). A proposed amendment would be futile
`
`when the proposed amended complaint could not withstand a motion to dismiss under Federal
`
`Rule of Civil Procedure 12(b)(6). Dwyer, 76 F. Supp. 2d at 160; see Abraham, 553 F.3d at 117.
`
`II.
`
`OGFC’s Motion to Amend the Petition Should be Denied Because the Proposed
`Amendments Would Be Futile
`
`A.
`
`OGFC’s Proposed Counts II — V, Related to Alleged Trademark
`Infringement And Unfair Competition, Would Be Futilel
`
`Jelly Belly has used the THE ORIGINAL GOURMET JELLY BEAN mark since
`
`January 1977 and the THE ORIGINAL GOURMET CANDY CORN mark since September
`
`1996, years before OGFC even existed. See Decl. at 1111 2-6. Based on Jelly Belly’s prior,
`
`continuous and pervasive use of these marks, Jelly Belly has priority to THE ORIGINAL
`
`GOURMET and OGFC therefore can‘ have no cause of action for infringement. See Sengoku
`
`Works Ltd. v. RMC Int 7, Ltd, 96 F.3d 1217, 1219 (9th Cir. 1996) (“It is axiomatic in trademark
`
`is substantially similar to OGFC’s original Count I, for
`I OGFC’s amended Count I
`declaratory judgment of noninfringement of Jelly Belly’s trademark rights.
`
`_ 4 _
`
`Exhibit1
`
`

`
`Case 3.:3.§.«c\;«8853<_%~S?v% Z><:»::umea%:' 2&1 ziiieri 985253533
`
`9-ag;»a§§ of
`
`law that the standard test of ownership is priority of use.”).
`
`OGFC appears to be contending that
`
`the words THE ORIGINAL GOURMET are
`
`somehow different than the fiill marks Jelly Belly has used—THE ORIGINAL GOURMET
`
`JELLY BEAN and THE ORIGINAL GOURMET CANDY CORN.
`
`This argument
`
`is
`
`nonsensical and has been rejected by the U.S. Patent and Trademark Office. Indeed, OGFC filed
`
`a trademark application for the mark “Original Gourmet and Design” for candy and the U.S.
`
`Patent and Trademark Office rejected registration of that mark on the ground that OGFC’s
`
`proposed mark was confusingly similar
`
`to Jelly Belly ’s prior registrations for THE
`
`ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL GOURMET CANDY CORN.
`
`In so doing, the Examining Attorney stated:
`
`In the present case, applicant’s mark ORIGINAL GOURMET and design is
`
`similar to [Jelly Bel1y’s] registered marks in sound, appearance, and connotation.
`
`All of the marks include the wording “ORIGINAL GOURMET”. Marks may be
`
`confusingly similar in appearance where there are similar terms or phrases or
`
`similar parts of terms or phrases appearing in both applicant’s and registrant’s
`
`mark.
`
`...Overall, the marks have the same commercial impression.
`
`Decl.1J 11 (emphasis added).
`
`Under the “tacking rule,” “[m]inor changes in a mark which do not change the basic,
`
`overall commercial impression created on buyers will not constitute any abandonment and will
`
`not interrupt the user’s chain of ownership back to adoption and use of the original form.” D&J
`
`Master Clean, Inc., v. The Servicemaster C0., 181 F. Supp. 2d 821, 825 n.2 (S.D. Ohio 2002)
`
`(quoting McCarthy on Trademarks & Unfair Competition § l7:27 (4th ed. 1998)). Specifically,
`
`the appendage or removal of a generic or descriptive term to or from a primary mark is covered
`
`Exhibit 1
`
`

`
`Case :t:?_:¥.~s:::.1w{‘;{I2§I«3£3a~.‘}3§‘vE
`
`E.‘:<:»z::.::~r:<:::i:'2E§§~§.
`
`iiiiieci {}8f:«38!3£5 %ae;;e£S{>?:§,:E.
`
`by the “tacking rule.” See D&J Master Clean, Inc., 181 F. Supp. 2d at 825. (appendage of
`
`generic term “Clean” to primary mark ServiceMASTER, covered by tacking rule); Sands, Taylor
`
`& Wood Co. v. Quaker Oats Co., 978 F.2d 947, 955 (7th Cir. 1992) (altering registered version:
`
`THIRST AID—FIRST AID FOR YOUR THIRST, to just THIRST AID, continued the “key
`
`element” and was not an “abandonment” of registered rights).
`
`Here, as the Examining Attorney in connection with OGFC’s application concluded,
`
`THE ORIGNAL GOURMET, THE ORIGINAL GOURMET JELLY BEAN and THE
`
`ORIGINAL GOURMET CANDY CORN all create the same commercial
`
`impression.
`
`See
`
`American Sec. Bank v. American Sec. & Trust Co., 571 F.2d 564, 566 (C.C.P.A. 1978);
`
`McCarthy on Trademarks & Unfair Competition § 17:26-27; Colonial Electric & Plumbing
`
`Supply of Hammonton, LLC v. Colonial Electric Supply, Ltd., 2007 WL 4571105, *9 (D.N.J.
`
`Dec. 27, 2007) (trademark may “be changed without abandonment or loss of priority if it is done
`
`in such a way that
`
`‘the continuing common element of the mark retains its impact and
`
`symbolizes a continuing commercial impression.’”). Thus, Jelly Belly’s use of THE ORIGINAL
`
`GOURMET with descriptive appendages supports Jelly Belly’s trademark rights to the primary
`
`mark, THE ORIGINAL GOURMET. Because Jelly Belly undisputedly has rights to THE
`
`ORIGINAL GOURMET mark dating back to 1977,
`
`long before OGFC ever started doing
`
`business and long before it ever started using “Original Gourmet”, Jelly Belly cannot possibly be
`
`infringing any rights OGFC may have.
`
`Further, Jelly Belly’s decision to register composite marks with descriptive appendages,
`
`does not negate Jelly Belly’s prior
`
`right
`
`to the protectable element THE ORIGINAL
`
`GOURMET. An applicant may apply to register any element of a composite mark if that
`
`element presents a separate and distinct commercial impression as a mark. See In re Curriculum
`
`Exhibit 1
`
`

`
`Case ft:3.Zt~cv~G{}:’5E‘>@-535% Q<:sa::n"2<.-3z‘zfz2€:-it
`
`?§§{':?{§ {3€.%f28;“§.£
`
`?5€i€§€37{>‘i3.3.,
`
`Associates, Inc., 2004 WL 2075094 (TTAB 2004) (trademark rights recognized for QUICK-
`
`STUDY, even though use of mark was A QUICK-STUDY PROGRAM, since additional
`
`verbiage was “highly descriptive, if not generic”); see also In re Raychem _Corp., 12 U.S.P.Q.2d
`
`(BNA) 1399 (TTAB June 29,1989). Here, although Jelly Belly’s registrations were for the full
`
`scope of the composite marks, this does not undermine Jelly Belly’s rights to the isolatable,
`
`protectable elements, including THE ORIGINAL GOURMET. See Courtenay Communs. Corp.
`
`v. Hall, 334 F.3d 210, 217 (2d Cir. 2003) (an unregistered mark is entitled to protection if it
`
`qualifies for registration).
`
`In addition, by reason of Jelly Belly’s continuous and pervasive use of the marks THE,
`
`ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL GOURMET CANDY CORN,
`
`Jelly Belly owns the THE ORIGINAL GOURMET family of marks for candy since long prior to
`
`OGFC’s first use of “Original Gourmet”. A plurality of marks with a recognizable common
`
`characteristic may qualify as a “family” of marks where the commonality is recognized by
`
`consumers as denoting a common origin. See J&J Snack Foods Corp. v. McDonald ’s Corp., 932
`
`F.2d 1460, 1462-63 (Fed. Cir. 1991) (family trademark rights to surname Mc); Geoflrey, Inc. v.
`
`Stratton, 16 U.S.P.Q.2d (BNA) 1691, 1694-96 (C.D. Cal. July 25, 1990) (family trademark
`
`rights to suffix “R US”.).
`
`Because Jelly Belly has been using THE ORIGINAL GOURMET for at least 27 years
`
`before OGFC first used any mark with the words “Original Gourmet”, Jelly Belly cannot
`
`possibly infringe any rights OGFC may claim to have.
`
`OGFC’s proposed trademark
`
`infringement and unfair competition claims fail to state a claim upon which relief could be
`
`granted. OGFC’s proposed Counts II-V would be futile and leave to amend should be denied.
`
`Exhibit 1
`
`

`
`{E525521:f..3.w<:<./»Z}€}€£3é2~E§€x,/E
`
`3oc:.:ment25~: Fiieai {}8f28!§..?. Raggeéiatti
`
`B.
`
`OGFC’s Proposed Counts VI — VIII, Related to Cancelling In Part Jelly
`Belly’s Trademark Registrations, Would Be Futile
`
`Jelly Belly’s use of the marks THE ORIGINAL GOURMET JELLY BEAN and THE
`
`ORIGINAL GOURMET CANDY CORN on jelly beans and candy corn, respectively,
`
`is
`
`sufficient to maintain registrations for those marks for “candy” in Class 30.
`
`Jelly beans and
`
`candy corn are indisputably candy. And, “candy” is listed as an approved category of goods in
`
`the USPTO’s Manual of Acceptable Goods and Services? See Decl. 1[ 9.3 There is no legal
`
`basis to require an applicant to subdivide an approved category of goods. A mark owner is
`
`entitled to a registration that covers an approved category of goods, even if the mark owner uses
`
`the mark on only a specific good within the approved category. See Tri-Star Alktg, LLC, v. Nino
`
`Franco Spumanti S.R.L., 84 U.S.P.Q.2d (BNA) 1912, 1915-16 (TTAB Aug. 28, 2007)
`
`(approving registration for a broader class of goods when applicant had only used the mark on a
`
`narrower category within the broader class).
`
`Nevertheless, OGFC seeks to raise two futile bases in an attempt to restrict Jelly Belly’s
`
`registrations. First, OGFC claims that Jelly Belly’s registrations should be cancelled pursuant to
`
`15 U.S.C. § 1064, because Jelly Belly’s marks supposedly misrepresent the source of goods. See
`
`First Amended Petition at 1111 60, 66, 72. But, a cancellation claim for misrepresentation under
`
`this section “requires a pleading that registrant deliberately sought to pass off its goods as those
`
`of petitioner.” Karoun Dairies, Inc. v. Karoun Dairies, Inc., 2010 WL 3633109, *lO (SD. Cal.
`
`2 As stated in Section 1402.04 of the Trademark Manual of Examination Procedure,
`“[t]he USPTO ID Manual contains identifications of goods and services and their classifications
`that are acceptable in the USPTO without further inquiry by an examining attorney. .
`.
`. Using
`identification language from the Manual enables trademark owners to avoid objections by
`examining attorneys concerning indefinite identifications of goods or services .
`.
`. .” See Decl. ‘ll
`10.
`
`3 OGFC also filed a trademark application for Class 30 covering “candy,” although it
`appears that OGFC has only used _“Original Gourmet” on one type of candy. See Decl. 1] 8.
`
`_ 3 _
`
`Exhibit 1
`
`

`
`Case i:i1«cv«G{3S3§~S§\s% {i3oeL:rn€3n£2€=~§_
`
`§:§§§3{§ €38f:i8;’Z:»Z
`
`§3ag<:@z>?3.:i.
`
`Sept. 13, 2010) (quoting McCarthy on Trademarks & Unfair Competition, §20:6O (4th Ed.
`
`2010)). Because OGFC does not allege that Jelly Belly is attempting to pass off its candy as
`
`OGFC’s candy-—or anyone else’s candy for that matter—Jelly Belly’s marks cannot be cancelled
`
`pursuant to 15 U.S.C. § 1064.
`
`Second, OGFC claims that, because there are allegedly hypothetical uses of Jelly Belly’s
`
`registrations within the “candy” category that might be misdescriptive, Jelly Belly’s registrations
`
`should be cancelled-in-part for being illegally deceptive pursuant to 15 U.S.C. § l052(a). See
`
`First Amended Petition at W 62, 68, 74 (Dkt. No. 21-1). Critically, however, OGFC has not
`
`claimed that Jelly Belly has ever actually used its marks in a deceptive manner. Moreover,
`
`OGFC is plain wrong that Jelly Belly would necessarily deceive the public if it used its
`
`registered marks THE ORIGINAL GOURMET JELLY BEAN and THE ORIGINAL
`
`GOURMET CANDY CORN on any candy other than jelly beans and candy corn. See First
`
`.
`
`Amended Petition at M 63, 69, 75 (Dkt. No. 21-1).
`
`In order to show a mark is imperrnissibly deceptive, OGFC would need to prove that any
`
`use of the mark (1) is misdescriptive of the character, quality, function, composition or use of the
`
`goods; (2) prospective purchasers are likely to believe the misdescription actually describes the
`
`goods; and (3) the misrepresentation materially affects a significant portion of the relevant
`
`consumers. In re Budge Mfg. Co., Inc., 857 F.2d 773, 774-75 (Fed Cir. 1988). However, there
`
`are numerous possible uses of these marks on other candy products that would not be
`
`misdescriptive,
`
`let alone rise to the level of being illegally deceptive.
`
`Some hypothetical