Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91210383
`
`Plaintiff
`
`Flyboard, Inc.
`KENNETH M MOTOLENICH SALAS
`WEISS & MOY PC
`4204 N BROWN AVENUE
`SCOTTSDALE, AZ 85251
`UNITED STATES
`
`kmoto|enich@weissip|aw.com, gmarine||i@weissip|aw.com
`
`
`
`Opposition/Response to Motion
`Michael B. Dvoren
`
`mdvoren@weissip|aw.com
`/Michael B. Dvorenl
`
`06/24/2013
`
`Opposition to Applicant's MTD _F|NAL_.pdf(71100 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA544683
`ESTTA Tracking number:
`06/24/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210383
`Plaintiff
`Flyboard, Inc.
`KENNETH M MOTOLENICH SALAS
`WEISS & MOY PC
`4204 N BROWN AVENUE
`SCOTTSDALE, AZ 85251
`UNITED STATES
`kmotolenich@weissiplaw.com, gmarinelli@weissiplaw.com
`Opposition/Response to Motion
`Michael B. Dvoren
`mdvoren@weissiplaw.com
`/Michael B. Dvoren/
`06/24/2013
`Opposition to Applicant's MTD _FINAL_.pdf(71100 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
`
`
`
`
`FLYBOARD, INC.,
`a Florida corporation,
`
`
`Opposer,
`
`v.
`
`PERSONAL WATER CRAFT PRODUCT,
`a French Société a Responsabilité Limitée,
`
`
`Opposition No. 91/210,383
`Serial No.: 79/112,746
`Mark: FLYBOARD
`Filed: April 5, 2012
`Published: February 19, 2013
`
`Applicant.
`
`
`
`OPPOSER’S RESPONSE TO APPLICANT’S MOTION TO DISMISS
`
`Flyboard, Inc. (“Opposer”), by and through its attorneys, hereby responds to Personal
`
`Water Craft Product’s (“Applicant”) Motion to Dismiss Notice of Opposition, served on June 4,
`
`2013 (“Motion”).
`
`I. OPPOSER’S NOTICE OF OPPOSITION SUFFICIENTLY PLEADS FACTUAL
`ALLEGATIONS WHICH, WHEN TAKEN AS TRUE, COMPEL THE DENIAL
`OF APPLICANT’S MOTION TO DISMISS.
`A. Motion to Dismiss Standard.
`To withstand Applicant’s Motion, “a complaint need only allege such facts as would, if
`
`proved, establish that the plaintiff is entitled to the relief sought, that is, that (1) the plaintiff has
`
`standing to maintain the proceeding, and (2) a valid ground exists for denying the registration
`
`sought (in the case of an opposition).” TBMP § 503.02 (3d ed., Rev. 1, June 2012) (emphasis
`
`added). “Whether a plaintiff can actually prove its allegations is a matter to be determined not
`
`upon motion to dismiss, but rather at final hearing or upon summary judgment, after the parties
`
`have had an opportunity to submit evidence in support of their respective positions.” Id. The
`
`complaint need only “‘state a claim to relief that is plausible on its face.’” Id. (quoting Bell
`
`Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007)). See also Ashcroft v. Iqbal, 556 U.S. 662,
`
` 
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`1 
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`

`
`678 (2009) (to be plausible on its face, a complaint must plead sufficient “factual content that
`
`allows the court to draw the reasonable inference that the defendant is liable for the misconduct
`
`alleged.”). When considering a motion to dismiss, all allegations of material fact must be taken
`
`as true and construed in the light most favorable to the nonmoving party. See, e.g., Hall v. Bed
`
`Bath & Beyond, Inc., 705 F.3d 1357, 1362 (Fed. Cir. 2013); Cousins v. Lockyer, 568 F.3d 1063,
`
`1067-1068 (9th Cir. 2009).
`
`For Opposer to have standing to maintain the present proceeding against Applicant at this
`
`stage, “all that is required is that [Opposer] allege facts sufficient to show a ‘real interest’ in the
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`proceeding, and a ‘reasonable basis’ for its belief that it would suffer some kind of damage if the
`
`mark is registered.” TBMP § 309.03(b) (emphasis added) (explaining further that a “real
`
`interest” means a “‘direct and personal stake’ in the outcome of the proceeding.”).
`
`B. The Factual Allegations in the Notice of Opposition Sufficiently Withstand the
`Motion and Demonstrate Opposer’s Standing.
`In this case, Opposer set forth numerous specific factual allegations in its Notice of
`
`Opposition (“NOA”), including:
`
`Per the negotiations conducted before and after execution of the February, 2012 Master
`
`License and Distribution Agreement (“Flyboard Contract”) between Opposer and Applicant, the
`parties agreed that Opposer would have the exclusive right to use the term “FLYBOARD” in the
`United States for the importation, promotion, distribution, marketing, and sale of, inter alia, jet
`skis and accessories manufactured by or for Applicant. (NOA, ¶ 6).
`
`After the parties executed the Flyboard Contract, Applicant acquiesced to Opposer’s use
`
`of the term FLYBOARD in accordance with the parties’ agreement such that any rights
`Applicant had in the mark FLYBOARD in U.S. interstate commerce, including rights in any
`domain name, were expressly and/or impliedly waived and/or abandoned. (Id., ¶ 11).
`
` 
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`2 
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`

`
`
`Before purchasing the domain name “Flyboard.com” (“Domain Name”) on May 14,
`2012, Opposer consulted with and offered the Domain Name to Applicant, but Applicant
`declined to purchase the Domain Name and stated that Opposer could own it. (Id., ¶¶ 12-13).
`
`
`Applicant acquiesced to Opposer’s registration and use of the Domain Name by
`acknowledging that the Domain Name was Opposer’s sole property, updating its own website in
`order to reference Opposer’s Domain Name, and providing website-related materials to Opposer
`for use on the Domain Name. (Id., ¶ 14).
`
`
`Based in part on Applicant’s acquiescence, Opposer owns all right, title, and interest in
`the Domain Name, has used has used the Domain Name to offer for sale and sell personal
`watercraft (namely, water-jet propulsion driven harnesses) in interstate commerce under the
`mark FLYBOARD, and has substantial common law rights in and to the Domain Name and the
`mark FLYBOARD (Id., ¶¶ 16-18).
`
`
`Opposer actively uses the FLYBOARD mark in U.S. interstate commerce while
`Applicant has not used the FLYBOARD mark in Application Serial No. 79/112,746 (“Opposed
`Mark”) in U.S. interstate commerce (i.e., has not directly sold or offered for sale any goods to
`U.S. consumers which are set forth in the description of goods in the application for the Opposed
`Mark).1 As such, Opposer’s use of the FLYBOARD mark is prior to time to Applicant’s use of
`the Opposed Mark and Opposer has common law rights to the FLYBOARD mark that are
`superior to Applicant’s based on the application for the Opposed Mark. (Id., ¶¶ 24-25).
`
`
`Opposer, unlike Applicant, has continually used the FLYBOARD mark in U.S.
`commerce in connection with the advertising, promotion, sale, and offering of personal
`watercraft (namely, water-jet propulsion driven harnesses) and purchasers have come to
`                                                            
`1
`Although the application for the Opposed Mark claims an alleged priority date of October
`10, 2011 based on French Trademark No. 11 3865414, filed October 10, 2011, Opposer’s use of
`the FLYBOARD mark and Applicant’s non-use of the Opposed Mark support Opposer’s
`assertions of ownership and injury. See, e.g., Slaska Wytwornia Wodek Gatunkowtch "Polmos"
`SA v. Stawski Distrib. Co., 2010 TTAB LEXIS 342 (TTAB, July 27, 2010) (“a foreign
`registration is not evidence of the use, registrability, or ownership of the subject mark” in the
`United States); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470, n.6 (TTAB 1988)
`(third-party registrations based on foreign registrations “are not even necessarily evidence of a
`serious intent to use the marks shown therein in the United States on all of the listed goods and
`services, and they have very little, if any, persuasive value on the point for which they were
`offered.”).
`
` 
`
`3 
`
`

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`recognize Opposer’s FLYBOARD mark as identifying goods emanating exclusively from
`Opposer. (Id., ¶¶ 29-30).
`
`
`Due to Opposer’s: (i) extensive investment of time, money, and effort; (ii) use; and (iii)
`advertising and promotion of the FLYBOARD mark in U.S. interstate commerce, Opposer’s
`FLYBOARD mark, unlike Applicant’s Opposed Mark, has come to be recognized as signifying
`Opposer and its products. Opposer, not Applicant, has built up extensive goodwill in the
`FLYBOARD mark through such efforts. (Id., ¶ 31).
`
`
`Opposer, and not Applicant, has invested significant sums of money into the
`development, commercialization, exploitation, and maintenance of the Domain Name and
`FLYBOARD mark in U.S. interstate commerce, and these investments were made in reliance on
`Applicant’s grant, abandonment, and/or waiver of any and all of its rights, title, and interest to
`use the FLYBOARD mark in U.S. interstate commerce. (Id., ¶¶ 33-35).
`
`
`Applicant’s use and registration of the Opposed Mark will interfere with Opposer’s
`FLYBOARD mark and will injure and damage Opposer, its business, and good will in that there
`will likely be consumer confusion, deception, and/or mistake as a result of such use and
`registration. (Id., ¶¶ 41-42).
`
`If the Board takes the NOA’s allegations as true and construes them in the light most
`
`favorable to Opposer, Opposer has sufficiently alleged that: (i) it has acquired and owns the U.S.
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`trademark rights in and to the FLYBOARD mark and Domain Name, by and through the course
`
`of dealing between Applicant and Opposer after execution of the Flyboard Contract and the
`
`doctrines of acquiescence, waiver and abandonment; (ii) it has continually used the FLYBOARD
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`mark in U.S. interstate commerce while Applicant has not used the Opposed Mark (see Footnote
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`1); (iii) it thus has standing to oppose the Opposed Mark based on these allegations (which
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`cannot be defeated by Applicant’s reliance on the Flyboard Contract, due in part to the post-
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`execution course of dealing between the parties); and (iv) it will be damaged by the registration
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`of the Opposed Mark.
`
` 
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`4 
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`

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`The NOA’s allegations are sufficient to meet the low threshold to survive a motion to
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`dismiss. See TBMP § 503.02. The NOA alleges sufficient facts which are plausible on their
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`face and allow the Board to reasonably infer that if Opposer’s allegations are proven, Opposer
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`has acquired the U.S. trademark rights in and to the FLYBOARD mark and Domain Name, has
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`continually used the FLYBOARD mark while Applicant has not, and will be damaged by the
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`registration of the Opposed Mark, thus providing valid grounds for Opposer to oppose
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`registration of the Opposed Mark. Id. For these same reasons, Opposer has sufficient standing
`
`to maintain this proceeding at this stage. See TBMP § 309.03(b).
`
`Applicant’s Motion relies almost entirely on the argument that Opposer has no standing
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`to oppose the Motion because of the terms contained in the Flyboard Contract regarding
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`trademark ownership and licensing. See Motion at 1, 3, 6, 8-9. Even if the Board were to accept
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`Applicant’s assertions regarding the Flyboard Contract (which it should not, given the
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`unresolved questions of fact regarding the Flyboard Contract, its interpretation, and the parties’
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`post-execution course of dealing), Applicant incorrectly contends that the terms of the Flyboard
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`Contract are “central to Opposer’s claims” and wrongly implies that Opposer is limited to them.
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`Motion at 2, 6. Key to Opposer’s allegations regarding its U.S. trademark ownership rights in
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`and to the FLYBOARD mark are: (i) the negotiations and course of dealing that Opposer asserts
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`occurred between Applicant and Opposer after execution of the Flyboard Contract which
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`resulted in Applicant’s acquiescence, waiver, and abandonment of its U.S. trademark rights in
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`and to the FLYBOARD mark2 and (ii) Applicant’s acquiescence to Opposer’s registration, use,
`
`                                                            
`2
`See, e.g., In re Geo. J. Ball, Inc., 1967 TTAB LEXIS 41, at **4-5, 153 U.S.P.Q. (BNA)
`426 (TTAB 1967)  (“The acknowledgement, express or otherwise, by the manufacturer of the
`goods abroad that the trademark which it affixes to the goods is the property right of the
`exclusive distributor or an assignment by the manufacturer to the exclusive distributor of all of
`the former's rights in the trademark in the United States together with the business and goodwill
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` 
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`5 
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`

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`and ownership of the Domain Name after execution of the Flyboard Contract. NOA, ¶¶ 6, 11-
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`14, 16-18. These post-execution allegations do not rely on, and are not limited by the terms of,
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`the Flyboard Contract. They also belie Applicant’s assertions that Opposer is “estopped” from
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`alleging ownership of the FLYBOARD mark by the terms of the Flyboard Contract. Motion at
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`2.
`
`Applicant’s reliance on Pfizer Inc. v. Elan Pharm. Research Corp., 812 F. Supp. 1352 (D.
`
`Del. 1993) for its lack of standing assertion is also unavailing. Motion at 8-9. The plaintiff in
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`Pfizer did “not allege[] that it is the owner of the patent” on which it sued the defendant for
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`patent infringement. Id. at 1357. Instead, it sued the defendant based on its rights as licensee to
`
`a patent license agreement with a non-party to the suit. Id. That is entirely unlike this
`
`proceeding in which Opposer has asserted that it owns the U.S. trademark rights in and to the
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`FLYBOARD mark by virtue of, among other things, Applicant’s and Opposer’s course of
`
`dealing after execution of the Flyboard Contract. Pfizer is therefore inapposite on the issue of
`
`Opposer’s standing to bring this proceeding under the facts and circumstances Opposer alleges in
`
`the NOA.
`
`C. Despite the Rebuttable Presumption That a Manufacturer May Have Superior
`Trademark Ownership Rights to Those of a Distributor, a Factual Dispute
`Remains as to Whether Opposer Has Rebutted the Presumption.
`In addition to its standing argument, Applicant also asserts that “[i]n the absence of an
`
`agreement to the contrary” between Applicant as manufacturer and Opposer as distributor, “there
`
`is a legal presumption that [Applicant] is the owner of the trademark in question.” Motion at 11.
`
`Applicant then concludes that the Flyboard Contract reinforces this presumption and that the
`
`NOA “contains no allegations that could rebut that presumption.” Id. Belying these assertions
`                                                                                                                                                                                                
`appurtenant thereto, is sufficient to bestow upon the exclusive distributor a right of ownership of
`the mark in the United States sufficient to qualify him as ‘owner’ of the mark for purposes of
`registration under the 1946 Act.”).
`
` 
`
`6 
`
`

`
`are Opposer’s NOA allegations discussed above and Applicant’s admission on the same page
`
`that “[t]his presumption may be rebutted based on a factual analysis that includes consideration
`
`of” six factors3 cited by Applicant. Id. (emphasis added).
`
`Even if the Board applies this rebuttable presumption, Applicant admits that a factual
`
`analysis is required to determine if it can be rebutted, making it improper for the Board to
`
`dispose of this proceeding on a motion to dismiss. See Sengoku Works v. RMC Int’l, 96 F.3d
`
`1217 (9th Cir. 1996) (“[t]he presumption in favor of the manufacturer is rebuttable, an exclusive
`
`distributor may acquire trademark rights superior to those of the manufacturer;” applying the
`
`factors in footnote 3 below); Harrison-Hoge Indus. v. Panther Martin S.R.L., 2008 U.S. Dist.
`
`LEXIS 25480, at **103-04 (E.D.N.Y. Mar. 31, 2008) (explaining that courts should consider the
`
`Sengoku factors to determine whether a manufacturer or distributor has superior trademark
`
`ownership rights; denying defendants’ summary judgment motion on this issue in that case
`
`because “there are numerous issues of material fact as to each of these factors”) (emphasis
`
`added); see also TBMP § 503.02 (whether Opposer can prove its allegations “is a matter to be
`
`determined not upon motion to dismiss, but rather at final hearing or upon summary judgment,
`
`after the parties have had an opportunity to submit evidence in support of their respective
`
`positions”).
`
`Because of the factual analysis required to determine whether Opposer or Applicant has
`
`superior U.S. trademark rights in and to the FLYBOARD mark, the parties must be allowed to
`
`                                                            
`3
`The six factors Applicant cites are nearly identical to the factors set forth in Sengoku
`Works v. RMC Int’l, 96 F.3d 1217, 1220 (9th Cir. 1996), which are: “(1) which party invented
`and first affixed the mark onto the product; (2) which party’s name appeared with the trademark;
`(3) which party maintained the quality and uniformity of the product; and (4) with which party
`the public identified the product and to whom purchasers made complaints. Furthermore, courts
`will also consider which party possesses the goodwill associated with the product, or which party
`the public believes stands behind the product.” Id.
`
` 
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`7 
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`

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`present their evidence, which the Board can then review, apply the Sengoku factors to, and
`
`determine whether those factors favor Opposer or Applicant.
`
`II.
`
`IF THE BOARD WERE TO FIND THAT THE ALLEGATIONS IN OPPOSER’S
`NOTICE OF OPPOSITION ARE INADEQUATE, THE BOARD SHOULD
`GRANT OPPOSER LEAVE TO AMEND IT.
`For the reasons set above, the NOA pleads material facts which, when accepted as true
`
`and construed in the light most favorable to Opposer, are sufficient to state a claim for relief, i.e.,
`
`that Opposer owns the U.S. trademark rights in and to the FLYBOARD mark and will be
`
`damaged by the registration of the Opposed Mark. If the Board were to disagree and determine
`
`that the allegations in Opposer’s NOA are insufficient to survive the Motion, the Board should
`
`freely grant (and Opposer hereby requests) leave to file an amended NOA. See, e.g., Miller
`
`Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993) (“the Board freely
`
`grants leave to amend pleadings found, upon challenge under Fed. R. Civ. P. 12(b)(6), to be
`
`insufficient, particularly where challenged pleading is the initial pleading”).
`
`The Board should also reject Applicant’s contentions that granting Opposer leave to
`
`amend would be futile because all of Opposer’s use of the FLYBOARD mark has been in
`
`Opposer’s “capacity as Applicant’s licensee” and has thus “inured to the benefit of Applicant for
`
`purposes of the present case.” Motion at 12. Applicant fails to address the fact that Opposer was
`
`not only Applicant’s “licensee” but was also the exclusive importer, distributor, and seller of
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`products imported, sold, offered for sale, and transported under the FLYBOARD mark in the
`
`United States. Applicant’s argument and cited legal authority does not encompass Opposer’s
`
`capacity as exclusive distributor. As discussed above, the Board must conduct a factual analysis
`
`to determine whether Applicant or Opposer (as manufacturer and distributor respectively) has
`
`superior U.S. trademark ownership rights in and to the FLYBOARD mark. Applicant’s
`
`conclusory assertion that any use of the FLYBOARD mark by Opposer inured to Applicant’s
`
` 
`
`8 
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`

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`benefit rings hollow where, as here, the Board has not yet reviewed the parties’ evidence or
`
`applied the Sengoku factors to determine which party has superior U.S. trademark ownership
`
`rights. Because the Board could determine that the Sengoku factors favor Opposer and conclude
`
`that Opposer owns the U.S. trademark ownership rights in and to the FLYBOARD mark,
`
`allowing amendment of the NOA to more fully plead Opposer’s trademark ownership allegations
`
`cannot be futile where this outcome is possible.
`
`As sufficiently alleged in the NOA and discussed at length above, Opposer claims U.S.
`
`ownership of the FLYBOARD mark based on, among other things, the parties’ post-execution
`
`dealings, Applicant’s resulting acquiescence, waiver, and abandonment of its U.S. trademark
`
`rights in and to the FLYBOARD mark, and Applicant’s acquiescence to Opposer’s registration,
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`use, and ownership of the Domain Name. These post-execution dealings between the parties and
`
`the trademark ownership rights alleged as a result, take Opposer and Applicant beyond the roles
`
`of licensor and licensee. As such, Opposer’s claims of trademark ownership and injury from the
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`registration of the Opposed Mark are made as a trademark owner, not a mere licensee. If the
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`Board finds Opposer’s factual allegations insufficient, it should grant Opposer leave to amend to
`
`more fully plead its trademark ownership and injury claims.
`
`III. CONCLUSION
`For the reasons set forth herein, Applicant’s Motion would be improperly granted under
`
`the current standard for motions to dismiss and should therefore be denied. Alternatively, if the
`
`Board were to find that better articulated factual allegations are required to support Opposer’s
`
`opposition to the registration of the Opposed Mark, Opposer respectfully requests leave to file an
`
`amended Notice of Opposition.
`
`///
`
`///
`
` 
`
`9 
`
`

`
`Dated this 24th day of June, 2013
`
`
`
`
`
`
`Respectfully submitted,
`
`WEISS & MOY, P.C.
`
`/Michael B. Dvoren/
`Kenneth M. Motolenich-Salas
`Michael B. Dvoren
`4204 N. Brown Avenue
`Scottsdale, Arizona 85251
`Tel: (480) 994-8888; Fax: (480) 947-2663
`Attorneys for Opposer Flyboard, Inc.
`
` 
`
`10 
`
`

`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this correspondence is being electronically transmitted to the United
`
`States Patent and Trademark Office on June 24, 2013.
`
`/Michael B. Dvoren/
`Michael B. Dvoren
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing document has been served
`
`on Applicant by mailing said copy on June 24, 2013 via U.S. First Class Mail, postage prepaid,
`
`and sending the same via electronic means addressed to Applicant’s correspondence address and
`
`/Michael B. Dvoren/
`Michael B. Dvoren
`
`email of record as follows:
`
`Fred. W. Hathaway
`Bruce A. McDonald
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, VA 22314
`fred.hathaway@bipc.com
`bruce.mcdonald@bipc.com
`
`
`
`
`
` 
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`11