Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA613713
`ESTTA Tracking number:
`07/03/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214535
`Plaintiff
`Madmann Trademark Holding Company, Ltd.
`JILL M PIETRINI
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`1901 AVENUE OF THE STARS, SUITE 1600
`LOS ANGELES, CA 90067
`UNITED STATES
`jpietrini@smrh.com, pbost@smrh.com, shwang@smrh.com, mdan-
`ner@smrh.com, rwalsh@smrh.com
`Motion to Strike
`Jill M. Pietrini
`jpietrini@smrh.com, pbost@smrh.com, lmartin@smrh.com, rwalsh@smrh.com,
`mdanner@smrh.com
`/Jill M. Pietrini/
`07/03/2014
`Motion to Strike.pdf(161200 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`Docket No. 30XV-167415-238
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91-214535
`
`OPPOSER AND REGISTRANT
`MADMANN TRADEMARK HOLDING
`COMPANY LTD.’S MOTION TO STRIKE
`CERTAIN AFFIRMATIVE DEFENSES OF
`APPLICANT AND PETITIONER
`TRAFFICKING LLC
`
`
`In re Matter of Application No. 85/865,699 for
`the mark: MAVERICK MUSIC FESTIVAL
`in Classes 25 and 41
`
`
`
`Madmann Trademark Holding Company Ltd.,
`
`
`
`Opposer,
`
`vs.
`
`
`
`
`
`
`Trafficking LLC,
`
`
`
`Applicant.
`
`
`
`
`
`
`
`In Matter of Registration Nos. 1,923,429,
`1,925,200, and 3,998,404
`
`
`
`
`
`Trafficking LLC,
`
`
`
`Petitioner,
`
`vs.
`
`
`
`
`
`
`Madmann Trademark Holding Company Ltd.,
`
`
`
`Registrant.
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`Pursuant to Fed.R.Civ.P. 12(f) and TBMP § 506.01, Opposer and Registrant Madmann
`
`Trademark Holding Company Ltd. (“Opposer”) files this motion to strike certain affirmative
`
`defenses asserted by Applicant and Petitioner Trafficking LLC (“Applicant”) in its answer and
`
`
`
`
`
`
`
`-1-
`
`
`
`
`
`

`
`
`
`counterclaims of April 28, 2014. [Docket No. 9.] Specifically, the Board should strike the
`
`following affirmative defenses asserted by Applicant:
`
`• Paragraph 17: “Opposer fails to state a claim upon which relief can be
`granted.”
`
`• Paragraph 18: “Alternatively and/or in addition, Applicant affirmatively
`alleges that Opposer does not own or has not acquired any lawful rights in the
`marks.”
`
`• Paragraph 19: “Alternatively and/or in addition, Opposer’s claims are barred
`by the doctrine of laches.”
`
`• Paragraph 21: “Alternatively and/or in addition, Opposer’s marks are not
`inherently distinctive and have not acquired secondary meaning.”
`
`• Paragraph 24: “Alternatively and/or in addition, Opposer’s claims are barred
`by the doctrine of waiver.”
`
`• Paragraph 25: “Alternatively and/or in addition, Opposer’s claims are barred
`by the doctrine of waiver.”
`
`• Paragraph 26: “Alternatively and/or in addition, Opposer’s claims are barred
`by the doctrine of estoppel.”
`
`• Paragraph 27: “Alternatively and/or in addition, Opposer’s claims are barred
`by the doctrine of unclean hands.”
`
`• Paragraph 28: “Alternatively and/or in addition, Opposer’s claims are barred
`by the doctrine of trademark misuse.”1
`
`For the reasons stated below, each of these affirmative defenses is insufficient and should be
`
`stricken in order to narrow the parties’ dispute to those claims and defenses which have, at least,
`
`a modicum of factual and legal support.
`
`
`1
`Although Applicant’s “affirmative defenses” listed in Paragraphs 16, 20, 22, and 23 are
`not true affirmative defenses, Opposer does not seek to strike them to the extent they merely
`amplify Applicant’s denials of Opposer’s allegations. See TBMP § 311.02(d). Unlike the
`affirmative defenses at issue in this motion, Applicant’s abandonment affirmative defense set
`forth in Paragraph 29 is, at least, supported by factual allegations in its counterclaims, even
`though Opposer believes such defense will fail.
`
`
`
`
`
`
`
`-2-
`
`
`
`
`
`

`
`
`
`II.
`
`STATEMENT OF RELEVANT FACTS
`
`On January 8, 2014, Opposer filed a notice of opposition opposing Applicant’s
`
`application to register the mark MAVERICK MUSIC FESTIVAL in Classes 25 and 41, bearing
`
`Ser. No. 85/865,699 (the “Application”). [Docket No. 1.] In its opposition, Opposer alleged its
`
`rights in the MAVERICK mark by virtue of its use of said mark in commerce and ownership of
`
`MAVERICK & Design in Classes 9 and 41 (Reg. No. 1,923,439), MAVERICK in Classes 9 and
`
`41 (Reg. No. 1,925,200), and MAVERICK in Class 41 (Reg. No. 3,998,404) (collectively,
`
`“MAVERICK Registrations”). Opposer’s Reg. Nos. 1,923,429 and 1,925,200 are both over five
`
`years old and are incontestable. Based on said rights, Opposer claimed that Applicant’s mark is
`
`likely to cause confusion with and dilute Opposer’s MAVERICK marks, and, thus, it should be
`
`refused registration.
`
`On April 28, 2014, Applicant filed its answer to Opposer’s notice of opposition and
`
`counterclaims seeking cancellation of the MAVERICK Registrations on the grounds that
`
`Opposer has abandoned the MAVERICK marks which are the subject of the Registrations.
`
`[Docket No. 9.] Also, in its answer, Applicant raised 14 affirmative defenses, including those
`
`identified above and which Opposer seeks stricken.
`
`On June 30, 2014, Opposer filed its timely answer to Applicant’s counterclaims. [Docket
`
`No. 14.]
`
`III. OPPOSER’S MOTION TO STRIKE SHOULD BE GRANTED
`
`“Upon motion, or upon its own initiative, the Board may order stricken from a pleading
`
`any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.”
`
`TBMP § 506.01. Although motions to strike are not favored, they are granted in appropriate
`
`cases, i.e., in order to strike insufficient affirmative defenses. Id.; see also American Vitamin
`
`
`
`
`
`
`
`-3-
`
`
`
`
`
`

`
`
`
`Products, Inc. v. DowBrands Inc., 22 U.S.P.Q.2d 1313, 1314 (TTAB 1992) (motion to strike
`
`affirmative defenses granted.) Although a motion to strike “should” be filed within 21 days after
`
`service of the answer at issue, “the Board, in its discretion, may entertain an untimely motion to
`
`strike matter from a pleading.” TBMP § 506.02; see also Order of Sons of Italy in America v.
`
`Profumi Fratelli Nostra AG, 36 U.S.P.Q.2d 1221, 1222 (TTAB 1995) (the Board exercised its
`
`discretion to decide opposer’s motion to strike, which it granted in part.) In this case, the Board
`
`should exercise its discretion to consider Opposer’s motion to strike because Applicant is not
`
`prejudiced by any slight delay in the filing of the motion to strike and the clear insufficiency of
`
`the affirmative defenses at issue.
`
`A.
`
`Paragraph 17: Failure to State a Claim
`
`This affirmative defense should be stricken because it is not an affirmative defense, and,
`
`moreover, because Opposer has properly pled a claim. “The asserted defense of failure to state a
`
`claim upon which relief can be granted is not a true affirmative defense because it relates to an
`
`assertion of the insufficiency of the pleading of opposer’s claim rather than a statement of a
`
`defense to a properly plead claim.” John W. Carson Foundation v. Toilets.com Inc., 94
`
`U.S.P.Q.2d 1942, 1949 (TTAB 2010). The Board will strike this “affirmative defense” if the
`
`opposer has alleged facts “which, if proved, establish that (1) it has standing to challenge
`
`respondent's registration [or application] and (2) there is a valid ground for seeking to cancel the
`
`subject registration [or application].” DowBrands, 22 U.S.P.Q.2d at 1314. Opposer clearly has
`
`standing to challenge the Application, as Opposer has alleged ownership of the MAVERICK
`
`Registrations and likelihood of confusion resulting from the registration of Applicant’s mark.
`
`See TBMP § 309.03(b) (“A real interest in the proceeding and a reasonable belief of damage
`
`may be found, for example, where plaintiff pleads (and later proves): A claim of likelihood of
`
`
`
`
`
`
`
`-4-
`
`
`
`
`
`

`
`
`
`confusion that is not wholly without merit, including claims based upon current ownership of a
`
`valid and subsisting registration or prior use of a confusingly similar mark..” Also, Opposer has
`
`asserted two valid grounds for opposing the Application: likelihood of confusion and dilution.
`
`Accordingly, this affirmative defense is patently insufficient.
`
`B.
`
`Paragraphs 18 and 21: Collateral Attacks on the MAVERICK
`Registrations
`
`Applicant cannot defend against Opposer’s claims by claiming that Opposer does not
`
`own or has not acquired lawful rights in the marks which are the subject of the MAVERICK
`
`Registrations or that said marks are not inherently distinctive and have not acquired secondary
`
`meaning. Because Applicant has not counterclaimed for cancellation of the MAVERICK
`
`Registrations on these grounds, these affirmative defenses constitute impermissible collateral
`
`attacks on the validity of the MAVERICK Registrations. See 37 C.F.R. § 2.114(b)(2)(i) (“A
`
`defense attacking the validity of any one or more of the registrations pleaded in the petition shall
`
`be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer
`
`if filed”); TBMP § 311.02(b) (“The Board will not entertain a defense that attacks the validity of
`
`a registration pleaded by a plaintiff unless the defendant timely files a counterclaim or a separate
`
`petition to cancel the registration”); Textron Inc. v. The Gillette Co., 180 U.S.P.Q. 152, 153
`
`(TTAB 1973) (motion to strike allegations constituting a “collateral attack upon the validity of
`
`opposer’s [registration]” granted; “[t]here can be no doubt but that applicant in denying in its
`
`answer that opposer's registration was duly issued or that it is now valid or ever was valid is
`
`directly attacking the validity of this registration. Such assertion manifestly contravenes the
`
`basic requirement of Rule 2.106(b) that no defense attacking the validity of a pleaded registration
`
`may be raised except by way of cancelation of the registration.”)
`
`
`
`
`
`
`
`-5-
`
`
`
`
`
`

`
`
`
`Furthermore, Opposer’s Reg. Nos. 1,923,429 and 1,925,200 are over five years old and,
`
`thus, are not susceptible to attack on the grounds of lacking distinctiveness or secondary
`
`meaning. See 15 U.S.C. § 1064; TBMP § 307.02(a) (15 U.S.C. § 1052(e) may only be asserted
`
`as a ground for cancellation of a registration under 5 years old); The Equine Touch Foundation
`
`Inc. v. Equinology, Inc., 91 U.S.P.Q.2d 1943, 1945 (TTAB 2009) (“Since the mark in this case
`
`registered on September 14, 2004, petitioner has until the fifth anniversary of the date of the
`
`registration, namely, September 14, 2009, to properly file a petition to cancel asserting a claim of
`
`descriptiveness.”) Indeed, Opposer’s Reg. Nos. 1,923,429 and 1,925,200 are both incontestable.
`
`Accordingly, these MAVERICK Registrations are not subject to cancellation on the grounds that
`
`they lack inherent or acquired distinctiveness and are merely descriptive or functional.
`
`C.
`
`Paragraph 19: Laches
`
`Applicant asserts that Opposer’s claims are barred by the doctrine of laches. To
`
`successfully assert the affirmative defense of laches, one must establish (1) undue delay in
`
`asserting rights against a claimant to a conflicting mark, and (2) prejudice resulting therefrom.
`
`Nat’l Cable Television Ass’n Inc. v. American Cinema Editors Inc., 19 U.S.P.Q.2d 1424, 1431-
`
`32 (Fed. Cir. 1991). Laches cannot apply where, as here, an opposer acts at its first opportunity
`
`to oppose the issuance of a registration. See Panda Travel Inc. v. Resort Option Enterprises Inc.,
`
`94 U.S.P.Q.2d 1789, 1797 (TTAB 2009) (“Laches begins to run from the time action could be
`
`taken. In an opposition, where the objection is to the issuance of a registration of a mark and the
`
`plaintiff had prior knowledge of applicant's use, laches starts to run when the mark in question is
`
`published for opposition. [Citations omitted.] Because opposer timely filed notices of
`
`opposition, there has been no undue delay by opposer or prejudice to applicant caused by
`
`opposer's delay.”) Accordingly, this defense must be stricken.
`
`
`
`
`
`
`
`-6-
`
`
`
`
`
`

`
`
`
`D.
`
`Paragraphs 24-28: Waiver, Acquiescence, Estoppel, Unclean Hands,
`and Trademark Misuse
`
`Applicant asserts, in conclusory fashion, that Opposer’s claims are barred by the
`
`doctrines of waiver, acquiescence, estoppel, unclean hands, and trademark misuse. To
`
`successfully assert affirmative defenses of acquiescence or estoppel, one must establish: “(1)
`
`misleading conduct, which may include not only statements and action but silence and inaction,
`
`leading another to reasonably infer that rights will not be asserted against it; (2) reliance upon
`
`this conduct; and (3) due to this reliance, material prejudice if the delayed assertion of such
`
`rights is permitted.”2 Id. at 1797. Furthermore, it well established that estoppel may be invoked
`
`only by one who has been prejudiced by the conduct relied upon to create the estoppel, and a
`
`party may not therefore base its claim for relief on the asserted rights of strangers with whom it
`
`is not in privity of interest. See Textron, Inc. v. The Gillette Co., 180 U.S.P.Q. 152, 154 (TTAB
`
`1973). To establish waiver, one must establish by clear and convincing evidence “‘intentional
`
`relinquishment or abandonment of a known right.’” Barnes & Noble, Inc. v. LSI Corp., 849
`
`F.Supp.2d 925, 941 (N.D. Cal. 2012), citing U.S. v. Perez, 116 F.3d 840, 845 (9th Cir. 1997). To
`
`establish unclean hands, “misconduct in the abstract, unrelated to the claim to which it is asserted
`
`as a defense” is insufficient. Republic Molding Corp. v. B. W. Photo Utilities, 138 U.S.P.Q. 101,
`
`103 (9th Cir. 1963). Instead, one must establish, by clear and convincing evidence, “egregious”
`
`misconduct related to the claims and dispute at issue. Citizens Financial Group, Inc. v. Citizens
`
`Nat. Bank of Evans City, 72 U.S.P.Q.2d 1389, 1405 (3d Cir. 2004). Lastly, the defense of
`
`trademark misuse is applicable “where the mark is being used to violate the antitrust laws” or as
`
`
`2
`With respect to the affirmative defense of acquiescence, the “misleading conduct”
`Applicant must establish must “expressly or by clear implication consents to, encourages, or
`furthers the activities of the defendant.” Id. at n. 21.
`
`
`
`
`
`
`
`-7-
`
`
`
`
`
`

`
`
`
`a defense tantamount to unclean hands. Juno Online Services L.P. v. Juno Lighting Inc., 44
`
`U.S.P.Q.2d 1913, 1917 (N.D. Ill. 1997).
`
`Applicant has not pleaded any facts sufficient to give Opposer notice of the bases for its
`
`these affirmative defenses3, e.g., which conduct of Opposer allegedly misled Applicant to believe
`
`that Opposer would not oppose registration of Applicant’s mark or that Opposer was
`
`relinquishing its right to oppose, Applicant’s reliance thereon, and prejudice resulting therefrom,
`
`or Opposer’s violation of antitrust laws, or Opposer’s inequitable conduct or unclean hands.
`
`Accordingly, Applicant’s pleading “fail[s] to meet the heightened pleading standards enunciated
`
`by the Supreme Court in Twombly and Iqbal.” Topline Solutions, Inc. v. Sandler Sys., 2010 U.S.
`
`Dist. LEXIS 76174, at *1-4 (D. Md. July 27, 2010) (granting motion to strike defenses of failure
`
`to state a claim, waiver, estoppel, laches, statute of limitations, mitigation, and failure to preform,
`
`which, like Applicant, the defendant had asserted in a conclusory manner; “even before Twombly
`
`and Iqbal, the defenses of waiver, estoppel and laches were consistently struck when pled
`
`without reference to some facts”); Dodson v. Strategic Restaurants Acquisition Co. II, LLC, 289
`
`F.R.D. 595, 603 (E.D. Cal. 2013), relying on Kohler v. Island Restaurants, LP, 280 F.R.D. 560,
`
`564 (S.D. Cal. 2012) (an affirmative defense is insufficient as a matter of pleading when it fails
`
`to provide the plaintiff with fair notice; it must be supported by factual support, not merely legal
`
`conclusions or conclusory statements); Qarbon.com Inc. v. eHelp Corp., 315 F.Supp.2d 1046,
`
`1049 (E.D. Cal. 2004) (the defendant’s affirmative defenses of waiver, estoppel and unclean
`
`hands to a patent infringement claim failed to provide ‘fair notice’ because defendants merely
`
`referenced the doctrines without setting forth the elements of the affirmative defenses); J & J
`
`
`3
`Applicant’s failure to plead facts supporting its affirmative defenses applies equally to the
`other affirmative defenses that are the subject of this motion, and should be stricken for this
`reason in addition to the other reasons cited above.
`
`
`
`
`
`
`
`-8-
`
`
`
`
`
`

`
`
`
`Sports Productions, Inc. v. Ramirez Bernal, 2014 WL 2042120, at *7 (E.D. Cal. 2014) (holding
`
`the defendant’s contention that “Plaintiff engaged in conduct which constituted a waiver of
`
`rights” failed to allege facts supporting the application of the doctrine to the facts, and merely
`
`referenced the legal doctrine.) Applicant has not pleaded any facts sufficient to support these
`
`defenses. Instead, like the Topline defendant, Applicant merely states these affirmative defenses
`
`without any supporting facts. The Board should strike these defenses, which Applicant clearly
`
`asserted only as a matter of course and without any factual or legal basis.
`
`IV. CONCLUSION
`
`Based on the foregoing, Opposer respectfully requests that the Board strike Applicant’s
`
`affirmative defenses set forth in Paragraphs 17-19, 21, and 24-28 of Applicant’s answer and
`
`counterclaims.
`
`
`Dated: July 3, 2014
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Jill M. Pietrini
`Jill M. Pietrini
`Paul A. Bost
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`1901 Avenue of the Stars, Suite 1600
`Los Angeles, California 90067-6017
`(310) 228-3700
`
`Attorneys for Opposer and Registrant Madmann
`Trademark Holding Company Ltd.
`
`
`
`
`
`
`
`
`-9-
`
`
`
`
`
`

`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that OPPOSER AND REGISTRANT MADMANN TRADEMARK
`HOLDING COMPANY LTD.’S MOTION TO STRIKE CERTAIN AFFIRMATIVE
`DEFENSES OF APPLICANT AND PETITIONER TRAFFICKING LLC is being deposited
`with the United States Postal Service, postage prepaid, first class mail, in an envelope addressed
`to:
`
`
`Charles W. Hanor, Esq.
`Hanor Law Firm PC
`750 Rittiman Road
`San Antonio, Texas 78209
`
`
`on this 3rd day of July, 2014.
`
`
`
`
`
`/LaTrina Martin/
`LaTrina Martin
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that this correspondence is being transmitted electronically to
`Commissioner of Trademarks, Attn: Trademark Trial and Appeal Board through ESTTA
`pursuant to 37 C.F.R. §2.195(a), on this 3rd day of July, 2014.
`
`/LaTrina Martin/
`LaTrina Martin
`
`
`
`
`
`
`
`
`
`
`
`SMRH:426137558.1
`
`
`
`
`
`
`
`-10-