UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`Mailed: March 4, 2014
`
`Opposition No. 91212237
`
`Golding Farms Foods, Inc.
`
`
`v.
`
`
`Nature's Healthiest
`Certification
`
`
`
`
`
`
`
`CME
`
`
`
`By the Trademark Trial and Appeal Board:
`
`
`
`
`
`This case now comes up on opposer’s combined motion to
`
`dismiss and strike, filed November 8, 2013. Applicant
`
`opposes the motion.
`
`
`
`In its answer, applicant asserts three counterclaims
`
`for fraud and one for abandonment and asserts a number of
`
`affirmative defenses, including unclean hands and
`
`abandonment. Opposer argues that applicant’s counterclaims
`
`for fraud are not pleaded with sufficient particularity and
`
`“fail to allege sufficient facts from which the Board could
`
`reasonably infer that [o]pposer acted with the requisite
`
`state of mind.” Motion, pp. 3-5. Opposer further argues
`
`that “reckless disregard for the truth is not a legally
`
`sufficient basis for a fraud claim” in view of the Supreme
`
`Court’s decision in Global-Tech Appliances, Inc. v. SEB
`
`S.A., 563 U.S. ___, 131 S.Ct. 2060 (2011), which concerns
`
`inducement of patent infringement. Id. at p. 5. In
`
`
`
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`Mailed: March 4, 2014
`
`Opposition No. 91212237
`
`Golding Farms Foods, Inc.
`
`
`v.
`
`
`Nature's Healthiest
`Certification
`
`
`
`
`
`
`
`CME
`
`
`
`By the Trademark Trial and Appeal Board:
`
`
`
`
`
`This case now comes up on opposer’s combined motion to
`
`dismiss and strike, filed November 8, 2013. Applicant
`
`opposes the motion.
`
`
`
`In its answer, applicant asserts three counterclaims
`
`for fraud and one for abandonment and asserts a number of
`
`affirmative defenses, including unclean hands and
`
`abandonment. Opposer argues that applicant’s counterclaims
`
`for fraud are not pleaded with sufficient particularity and
`
`“fail to allege sufficient facts from which the Board could
`
`reasonably infer that [o]pposer acted with the requisite
`
`state of mind.” Motion, pp. 3-5. Opposer further argues
`
`that “reckless disregard for the truth is not a legally
`
`sufficient basis for a fraud claim” in view of the Supreme
`
`Court’s decision in Global-Tech Appliances, Inc. v. SEB
`
`S.A., 563 U.S. ___, 131 S.Ct. 2060 (2011), which concerns
`
`inducement of patent infringement. Id. at p. 5. In
`
`
`
`
`
`Opposition No. 91212237
`
`
`addition, opposer asserts that applicant’s first
`
`counterclaim for fraud is insufficiently pleaded because it
`
`is “based on allegedly false dates of first use,” which is
`
`not a valid basis for a fraud claim. Id. With respect to
`
`applicant’s counterclaim for abandonment, opposer argues
`
`that it is merely conclusory and does not plead facts “that
`
`would raise a reasonable inference of abandonment.” Id. at
`
`p. 8.
`
`
`
`In response, applicant argues that its counterclaims
`
`for fraud mirror the counterclaims in DaimlerChrysler Corp.
`
`and Chrysler, LLC v. American Motor Corp., 94 USPQ2d 1086
`
`(TTAB 2010), which the Board found to be sufficiently
`
`pleaded. See Response, p. 2. Applicant further asserts
`
`that the Board “indicated approval of ‘reckless disregard
`
`for the truth’” in the DaimlerChrysler case, and that “there
`
`has been no precedential decision by the CAFC or TTAB
`
`applying the Supreme Court’s Global-Tech decision to fraud
`
`claims.” Id. at p. 3. In addition, applicant attaches the
`
`affidavit of its counsel “which details the specific
`
`information” on which applicant’s counterclaims for fraud
`
`are based, namely, information obtained from an
`
`investigation of opposer that “uncovered no use whatsoever”
`
`of the pleaded mark for any goods other than honey. Id.
`
`Applicant asserts that this investigation further supports
`
`its counterclaim for abandonment. See id. at p. 5.
`
`
`
`2
`
`
`
`Opposition No. 91212237
`
`
`
`
`Turning to the motion to strike, opposer argues that
`
`the affirmative defense of unclean hands is “irrelevant to
`
`the issues in this proceeding” because it concerns opposer’s
`
`later-filed application, which is “not directly asserted as
`
`a basis for this opposition.” Motion, p. 6. Opposer
`
`further argues that even if such a defense were viable, it
`
`is based on allegations of fraud, which are not sufficiently
`
`pleaded. See id. at p. 7. With respect to applicant’s
`
`affirmative defenses of abandonment, opposer reiterates its
`
`assertion that the allegations are merely conclusory in
`
`nature. See id. at p. 8. In addition, opposer asserts that
`
`such defenses are an impermissible collateral attack on its
`
`pleaded registration. See id.
`
`
`
`In response, applicant contends that it has adequately
`
`asserted affirmative defenses of abandonment based on the
`
`information gathered through its investigation of opposer.
`
`See Response, p. 5. Applicant also questions why opposer
`
`would have pleaded application Serial No. 86046752 if it is
`
`not a basis for its claim, and asserts that it “is entitled
`
`to defend itself against whatever assertions [o]pposer makes
`
`based on its pleading.” Id. In addition, applicant argues
`
`that it has sufficiently pleaded an affirmative defense of
`
`unclean hands by alleging that opposer made false statements
`
`in connection with application Serial No. 86046752. See id.
`
`
`
`3
`
`
`
`Opposition No. 91212237
`
`
`Motion to Dismiss
`
`A motion to dismiss under Rule 12(b)(6) is a test of
`
`the sufficiency of the complaint or counterclaim, as is the
`
`case here. To survive a motion to dismiss, a claimant need
`
`only allege sufficient factual matter as would, if proved,
`
`establish that 1) it has standing to maintain the
`
`counterclaims, and 2) a valid ground exists for cancelling
`
`the pleaded mark. See Lipton Industries, Inc. v. Ralston
`
`Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982).
`
`Specifically, a complaint or counterclaim “must contain
`
`sufficient factual matter, accepted as true, to ‘state a
`
`claim to relief that is plausible on its face.’” Ashcroft
`
`v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949-50 (2009)
`
`(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
`
`(2007)). In particular, the claimant must allege well-
`
`pleaded factual matter and more than “[t]hreadbare recitals
`
`of the elements of a cause of action, supported by mere
`
`conclusory statements,” to state a claim plausible on its
`
`face. Iqbal, 556 U.S. 662, 129 S. Ct. at 1949 (citing
`
`Twombly, 550 U.S. at 555). “For purposes of determining the
`
`motion, all of [applicant’s] well-pleaded allegations must
`
`be accepted as true, and the [counterclaims] must be
`
`construed in the light most favorable to [applicant]. The
`
`pleading must be construed so as to do justice, as required
`
`
`
`4
`
`
`
`Opposition No. 91212237
`
`
`by Fed. R. Civ. P. 8(e).” Petroleos Mexicanos v. Intermix
`
`SA, 97 USPQ2d 1403, 1405 (TTAB 2010).
`
`Standing
`
`Applicant has sufficiently pled its standing, which is
`
`inherent in its position as defendant in the opposition.
`
`See TBMP § 309.03(b) (3d ed. rev.2 2013) and cases cited in
`
`footnote 14 therein. We consider now whether applicant has
`
`sufficiently pled counterclaims upon which relief can be
`
`granted.
`
`Fraud
`
`The Federal Circuit in In re Bose Corp., 91 USPQ2d 1938
`
`(Fed. Cir. 2009) held that “a trademark is obtained
`
`fraudulently under the Lanham Act only if applicant or
`
`registrant knowingly makes a false, material representation
`
`with the intent to deceive the PTO.” Id. at 1941. The
`
`circumstances constituting the alleged fraud must be stated
`
`with particularity, though intent to deceive may be averred
`
`generally. See DaimlerChrysler, 94 USPQ2d at 1088 (citing
`
`Fed. R. Civ. P. 9(b)).
`
`Counterclaims I-III recite the elements of a fraud
`
`claim, but are not plead with sufficient particularity as
`
`required by Fed. R. Civ. P. 9(b).1 While applicant’s
`
`
`1
`Because applicant alleges that opposer “knew” its statements
`were false, the Board need not address whether the alternative
`allegation of “reckless disregard for the truth” is sufficient to
`state a claim for fraud. Cf. Alcatraz Media, Inc. v. Chesapeake
`Marine Tours Inc. DBA Watermark Cruises, 107 USPQ2d 1750, 1770
`
`
`
`5
`
`
`
`Opposition No. 91212237
`
`
`response to the motion includes the affidavit of its
`
`counsel, which provides specific details of an investigation
`
`that support the assertions in counterclaims I-III,
`
`applicant’s counterclaims themselves are devoid of such
`
`factual allegations. Compare Petróleos Mexicanos, 97 USPQ2d
`
`at 1407 (complaint contained the following allegation:
`
`“Indeed, based on the results of an investigation it
`
`conducted, [p]etitioner asserts that [r]espondent is not
`
`currently selling, and has not previously sold, any goods or
`
`services in the United States under [the involved mark]…);
`
`Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold LLC, 95
`
`USPQ2d 1185, 1187 (TTAB 2010) (“[P]etitioner alleges that
`
`its investigation revealed that respondent’s mark was not
`
`used on any of the goods listed in its Statements of Use at
`
`the time the Statements of Use were filed.”). As such,
`
`counterclaims I, II, and III, are distinguishable from the
`
`claims of fraud in DaimlerChrysler, which as applicant
`
`acknowledges, “included allegations showing that the
`
`
`(TTAB 2013) (acknowledging that “the Federal Circuit in Bose left
`unanswered the question of whether recklessness would satisfy the
`intent to deceive requirement….”).
`
`
`In addition, the Board notes that to the extent applicant
`may have intended to allege fraud based on incorrect dates of
`first use, such allegations are not sufficient to establish a
`claim for fraud. See Giant Food, Inc. v. Standard Terry Mills,
`Inc., 231 USPQ 626, 630 (TTAB 1986) (It “is well settled, that a
`missstatement of a date of first use in commerce is not
`fraudulent nor is it otherwise fatal to the securing of a valid
`registration provided that there has been use of the mark in
`commerce prior to the filing date of the registrant's
`application.”)
`
`
`
`6
`
`
`
`Opposition No. 91212237
`
`
`statements were false.” Response, p. 2; see also
`
`DaimlerChrysler, 1088 USPQ2d at 1088 (reciting petitioner’s
`
`allegations of fraud, which pointed to specific evidence
`
`uncovered during discovery allegedly showing that the
`
`identified statements were false).
`
`Abandonment
`
`To sufficiently set forth a claim of abandonment, a
`
`claimant must allege “at least three consecutive years of
`
`non-use or must set forth facts that show a period of non-
`
`use less than three years coupled with an intent not to
`
`resume use. By so alleging, a plaintiff provides fair
`
`notice to the defendant of plaintiff's theory of
`
`abandonment.” Otto International Inc. v. Otto Kern GmbH, 83
`
`USPQ2d 1861, 1863 (TTAB 2007) (internal citations omitted).
`
`Here, applicant has alleged abandonment based on non-use of
`
`the pleaded mark for three years as well as non-use and an
`
`intent not to resume use, and has identified the specific
`
`goods in connection with which opposer has allegedly
`
`abandoned its pleaded mark. As such, applicant has
`
`sufficiently alleged a counterclaim of abandonment with
`
`respect to the pleaded registration. See Johnson & Johnson
`
`and ROC International S.A.R.L. v. Obschestvo S
`
`Ogranitchennoy; Otvetstvennostiu WDS, 104 USPQ2d 2037 (TTAB
`
`2012) (finding counterclaim sufficiently pleaded where
`
`
`
`7
`
`
`
`Opposition No. 91212237
`
`
`applicant asserted “abandonment of the mark as to particular
`
`goods through nonuse with no intent to resume use”).
`
`In view of the foregoing, opposer’s motion to dismiss
`
`is GRANTED with respect to counterclaims I, II and III, but
`
`DENIED with respect to counterclaim IV. Counterclaims I, II
`
`and III are dismissed without prejudice and applicant is
`
`allowed until April 2, 2014 to file amended counterclaims
`
`that set forth with particularity the factual basis for its
`
`allegations of fraud.
`
`II. Motion to Strike
`
`A. Abandonment
`
`
`
`Applicant’s affirmative defenses in Paragraphs 14 and
`
`15 of its answer assert abandonment with respect to several
`
`goods identified in the pleaded registration and goods in
`
`connection with which opposer claims common law rights in
`
`the pleaded mark. Applicant’s affirmative defenses of
`
`abandonment are sufficiently pleaded with respect to
`
`opposer’s common law rights as they allege abandonment with
`
`respect to specific goods based on non-use for three years
`
`and, in the alternative, non-use with an intent not to
`
`resume use. However, to the extent applicant’s affirmative
`
`defenses allege abandonment with respect to goods covered by
`
`the pleaded registration, such affirmative defenses are
`
`impermissible collateral attacks on the pleaded
`
`
`
`8
`
`
`
`Opposition No. 91212237
`
`
`registration.2 Accordingly, opposer’s motion to strike
`
`applicant’s affirmative defenses of abandonment is GRANTED,
`
`IN PART, to the extent that the goods covered by opposer’s
`
`pleaded registration, namely, “jams, jellies, salad
`
`dressing, molasses, maple syrup, steak sauce, salsa, hot
`
`sauce, relish, mustard, barbecue sauce, cocktail sauce,
`
`tartar sauce, fruit juices, bottled liquid bloody mary mix,
`
`syrups for making fruit drinks” are STRICKEN from Paragraphs
`
`14 and 15 of applicant’s answer.
`
`B. Unclean Hands
`
`“It is a rule of equity that a plaintiff must come with
`
`‘clean hands’, i.e., he must be free from reproach in his
`
`conduct. But there is this limitation to the rule: that his
`
`conduct can only be excepted to in respect to the subject
`
`matter of his claim; everything else is immaterial.” VIP
`
`Foods, Inc. v. V.I.P. Food Products, 200 USPQ 105, 112-
`
`113(TTAB 1978) (quoting Black’s Law Dictionary, Third
`
`Edition (1933)). Thus, “the concept of unclean hands must
`
`be related to a plaintiff's claim, and misconduct unrelated
`
`to the claim in which it is asserted as a defense does not
`
`constitute unclean hands.” Tony Lama Company, Inc. v.
`
`Anthony Di Stefano, 206 USPQ 176, 179 (TTAB 1980).
`
`
`2
`Moreover, the affirmative defenses are redundant of
`applicant’s adequately pleaded counterclaim for abandonment of
`the pleaded registration.
`
`
`
`9
`
`
`
`Opposition No. 91212237
`
`
`Here, applicant’s affirmative defense of unclean hands
`
`concerns allegations that opposer made false statements in
`
`pleaded application Serial No. 86046752 concerning use of
`
`the mark subject to the application. See Answer, ¶ 16.
`
`However, pleaded application Serial No. 86046752 was filed
`
`after applicant’s involved application, and therefore, it
`
`cannot serve as a basis for opposer’s priority and
`
`likelihood of confusion claim. For this reason, applicant’s
`
`affirmative defense of unclean hands does not concern
`
`opposer’s claim and, even if proven, would not prevent
`
`opposer from prevailing in this proceeding. See Midwest
`
`Plastic Fabricators Inc. v. Underwriters Laboratories, 5
`
`USPQ2d 1067 (TTAB 1987) (“There are no specific allegations
`
`… that, if proved, would prevent petitioner from prevail on
`
`its claim.”); VIP Foods, 200 USPQ at 113-114 (finding that
`
`petitioner’s likelihood of confusion claim was not barred by
`
`the doctrine of unclean hands because petitioner’s claim was
`
`based on additional registrations and common law rights not
`
`subject to the unclean hands defense). Accordingly,
`
`opposer’s motion to strike is GRANTED with respect to
`
`Paragraph 16 of applicant’s answer, which is STRICKEN.
`
`
`
`Dates are reset as follows:
`
`Deadline to File Any Amended
`
`Counterclaims
`
`
`Answer to Counterclaim(s) Due
`Deadline for Discovery Conference
`Discovery Opens
`
`
`
`
`
`April 2, 2014
`April 22, 2014
`May 22, 2014
`May 22, 2014
`
`
`
`10
`
`
`
`Opposition No. 91212237
`
`
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`30-day testimony period for
`plaintiff's testimony to close
`Defendant/Counterclaim Plaintiff's
`Pretrial Disclosures
`
`30-day testimony period for defendant
`and plaintiff in the counterclaim to
`close
`Counterclaim Defendant's and
`Plaintiff's Rebuttal Disclosures Due
`
`30-day testimony period for defendant
`in the counterclaim and rebuttal
`testimony for plaintiff to close
`Counterclaim Plaintiff's Rebuttal
`Disclosures Due
`15-day rebuttal period for plaintiff
`in the counterclaim to close
`Brief for plaintiff due
`Brief for defendant and plaintiff in
`the counterclaim due
`
`Brief for defendant in the
`counterclaim and reply brief, if any,
`for plaintiff due
`Reply brief, if any, for plaintiff in
`the counterclaim due
`
`
`June 21, 2014
`October 19, 2014
`November 18, 2014
`January 2, 2015
`
`February 16, 2015
`
`March 3, 2015
`
`April 17, 2015
`
`May 2, 2015
`
`June 16, 2015
`
`July 1, 2015
`
`July 31, 2015
`September 29, 2015
`
`October 29, 2015
`
`November 28, 2015
`
`December 13, 2015
`
`In each instance, a copy of the transcript of
`
`testimony, together with copies of documentary exhibits,
`
`must be served on the adverse party within thirty days after
`
`completion of the taking of testimony. Trademark Rule 2.l25.
`
`Briefs shall be filed in accordance with Trademark
`
`Rules 2.128(a) and (b). An oral hearing will be set only
`
`upon request filed as provided by Trademark Rule 2.l29.
`
`
`
`11
`
`
`
`Opposition No. 91212237
`
`
`
`
`***
`
`
`
`12
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
