Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA689412
`ESTTA Tracking number:
`08/13/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91222483
`Plaintiff
`Nautica Apparel, Inc.
`NEIL B FRIEDMAN
`BAKER & RANNELLS PA
`575 ROUTE 28, SUITE 102
`RARITAN, NJ 08869
`UNITED STATES
`n.friedman@br-tmlaw.com, k.hnasko@br-tmlaw.com
`Other Motions/Papers
`Neil B. Friedman
`n.friedman@br-tmlaw.com,k.hnasko@br-tmlaw.com
`/Neil B. Friedman/
`08/13/2015
`Motion to Strike with exhibits 8-13-2015.pdf(209033 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`__________________________________
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`NAUTICA APPAREL, INC.,
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`Opposer,
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`Opp. No. 91222483
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`Mark:
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`NAUTICA
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`Serial No.
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`86493998
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`Filed:
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`January 1, 2015
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`HANS CROSBY,
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`Applicant.
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`__________________________________
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`OPPOSER’S MOTION TO STRIKE ABSENCE OF LIKELIHOOD OF
`CONFUSION PARAGRAPHS 2 AND 3 AND AFFIRMATIVE DEFENSES FROM
`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION
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`Opposer, Nautica Apparel, Inc. ("Opposer"), hereby moves to strike Absence Of
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`Likelihood of Confusion Paragraphs 2 and 3 and the Affirmative Defenses of Applicant,
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`Hans Crosby’s (“Applicant”) Answer to the Notice of Opposition. For the foregoing
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`reasons, the alleged defenses do not provide Applicant with legally sufficient or legally
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`supportable defenses to the Notice of Opposition. As such, the defenses are insufficient.
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`This motion is made within the time prescribed in F.R.Civ.P. Rule 12(c) and is
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`thereby timely. Insofar as the motion falls under F.R.Civ.P 12(f), the Board has
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`discretion to hear the same at this time. To the extent that the motion requires the Board
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`to look beyond the pleadings, the motion may be considered a motion for partial
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`summary judgment pursuant to F.R.Civ.P. Rule 56(c).
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`Opposer makes this motion in order to narrow and limit the issues in this
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`proceedings and to serve as a guide in conducting discovery. As stated in 2A Moores
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`Federal Practice paragraph 12.21[3]:
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`Although courts are reluctant to grant motions to strike,
`where a defense is legally insufficient, the motion should
`be granted in order to save the parties unnecessary
`expenditure in time and money in preparing for trial.
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`Opposer’s grounds for this motion are set forth below.
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`Applicant’s “Absence of Likelihood of Confusion” Paragraphs 2 and 3
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`Applicant provides five numbered paragraphs alleging that there is no likelihood
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`of confusion. However, certain of Applicant’s paragraphs contain statements which are
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`incomplete, misleading or make claims which fall outside the jurisdiction of the
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`Trademark Trial and Appeal Board and should be stricken.
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`In Paragraph 2, Applicant states that “[t]he mark NAUTICA has been used within
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`the United States for more than three decades in connection with boats. The mark
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`NAUTICA is famous, within the United States and internationally, in connection with
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`boats.” In the present proceeding, the Applicant is Hans Crosby, a trademark attorney.
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`Mr. Crosby’s website bio is attached as Exhibit A. To the extent that Mr. Crosby has not
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`filed a phantom mark/application, Mr. Crosby has given no indication who the alleged
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`owner of the NAUTICA mark is and his privity with this person/entity. The misleading
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`paragraph should be stricken.
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`Paragraph 3 states, “Any use of the mark NAUTICA by Opposer in connection
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`with boats without appropriate consent or permission would have constituted trademark
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`infringement.” Such a statement has no place in pleadings before the TTAB. It is
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`common knowledge that the Board has no jurisdiction to consider questions of
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`infringement or unfair competition. See, Board of Trustees of University of Alabama v.
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`Pitts, 107 USPQ2d 2001, 2022 (TTAB 2013). Therefore, paragraph 3 should be stricken.
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`Applicant’s Affirmative Defense Nos. 1, 2 & 3 Should Be Stricken
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`Opposer believes Applicant’s First, Second and Third Affirmative Defenses in
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`Applicant’s Answer for laches, acquiescence and estoppel should be stricken. Applicant
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`has provided no factual basis for the affirmative defenses.
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`The elements necessary to establish the equitable
`defense of laches normally involve knowledge,
`actual or constructive, of the subsequent party's use
`of the same or similar mark for like or related
`goods; an inordinate delay under the particular fact
`situation in taking some affirmative action to
`preclude such further use, and reliance on such
`inaction or silence by the junior user. The estoppel
`is based upon the ethical consideration of not
`allowing a party to preclude a course of conduct
`that he
`tolerated, where
`the result will be
`prejudicial to the person who relied on and acted
`on the belief that the activity was sanctioned by
`said party.
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`Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199, 1205 (TTAB
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`1981).
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`In Board proceedings, laches, acquiescence and estoppel can only begin from the
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`first time when Opposer could object to registration; i.e. the date when an application is
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`published for opposition, not from the time of knowledge of use. See National Cable
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`Television Association Inc. v. American Cinema Editors Inc., 19 USPQ2d 1424, 1431-
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`1432 (Fed.Cir. 1991); Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762
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`(TTAB 2007) (holding that a laches defense must be tied to a party's registration or
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`failure to object to an applicant's earlier registration of the same mark for substantially
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`the same goods). Likewise, “conduct which occurs prior to the publication of the
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`application for opposition generally cannot support a finding of equitable estoppel.”
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`Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1531 (TTAB
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`2008) (citing Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 23 USPQ2d 1701,
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`1703 (Fed. Cir. 1992); National Cable Television Ass'n Inc. v. American Cinema Editors
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`Inc., 19 USPQ2d 1424, 1432 (Fed. Cir. 1991)).
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` Applicant filed its application, Serial No. 86493998, on January 1, 2015 and it was
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`published on June 23, 2015. Opposer filed a Notice of Opposition promptly on June 23,
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`2015, the date of publication. Opposer did not acquiesce to Crosby’s use of the
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`NAUTICA mark, nor has Opposer entered into any agreement with Crosby. Applicant
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`has not proffered a single factual allegation upon which its alleged defenses could be
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`maintained.
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`Opposer is entitled to judgment striking Affirmative Defense Nos. 1, 2 and 3.
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`The defenses pleaded are insufficient as a matter of law.
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`Applicant’s Affirmative Defense #4 and 5 Should Be Stricken
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`Opposer believes Applicant’s Fourth and Fifth Affirmative Defenses of
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`abandonment and the doctrine of unclean hands should be stricken as well.
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`Applicant has not filed a counterclaim in this proceeding. The following
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`definition of abandonment is set forth in Section 45 of the Trademark Act: Abandonment
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`of mark. A mark shall be deemed to be "abandoned"-- (b) When any course of conduct
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`of the registrant, including acts of omission as well as commission, causes the mark to
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`lose its significance as an indication of origin.
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` In order to state a claim upon which relief can be granted for the ground of
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`abandonment, Applicant must plead facts which show a course of conduct by Opposer
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`which has caused Opposer's mark to lose its trademark significance. Colgate-Palmolive
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`Company v. Colton Razor Blade Company, 153 USPQ 370 (TTAB 1966). See also,
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`Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corporation, 680 F.2d 755, 214
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`USPQ 327, 332 and 334 (CCPA 1982). Applicant has stated the affirmative defense of
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`abandonment by alleging no facts to support same. On that basis, Affirmative Defense
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`No. 4 should be stricken.
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`It is unclear what Applicant’s basis is for the Fifth Affirmative Defense of
`unclean hands. This defense is clearly without merit and plead insufficiently. Any
`defense of unclean hands must include specific facts showing conduct that, if proved,
`would prevent Opposer from prevailing on its claims. Midwest Plastic Fabricators Inc. v
`Underwriters Laboratories, Inc., 5 USPQ2d 1067, 1069. Applicant’s defense does not
`specify what acts could allegedly constitute unclean hands, and therefore lacks any
`adequate support. Applicant’s defense is unclear, non-specific, irrelevant or merely
`conclusory, and from which no allegation of bad faith can be made. Id. It fails to state a
`proper defense. Opposer is entitled to have this defense stricken.
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`WHEREFORE, Opposer respectfully moves that its motion to strike be granted in
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`Respectfully submitted for
`Opposer Nautica Apparel, Inc.
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`/ Neil B. Friedman /
`Neil B. Friedman
`BAKER and RANNELLS, PA
`575 Route 28, Suite 102
`Raritan, New Jersey 08869
`(908) 722-5640
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`all respects
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`Dated: August 13, 2015
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`By:
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of Opposer’s Motion to Strike was
`forwarded by first class postage prepaid mail by depositing the same with the U.S. Postal
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`Service on this 13th day of August, 2015 to:
`Hans Crosby, Esq.
`Classic Counsel, P.C.
`4938 Hampden Lane, Suite 412
`Bethesda, Maryland 20814
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`/Neil B. Friedman/
`Neil B. Friedman
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`LITIGATION
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`Hans J. Crosby, Director
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`Tel 240.744.4614, Fax 1.800.655.2806, hcrosby@classiccounsel.com
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`Hans Crosby's expertise includes client counseling, conducting clearance, invalidity and infringement
`studies and preparation of patent applications in the chemical and biotechnology practice group.
`
`Mr. Crosby's patent procurement experience is focused in the pharmaceutical, biotechnology and
`polymer arts, involving subject matter such as generics, medical and diagnostic devices, recombinant
`technology, transgenic animals and plants, gene therapy, vaccines, oligonucleotide/antisense technology,
`herbal extracts and supplements, blood technology and fluoropolymers.
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`Mr. Crosby's litigation experience is wide ranging, involving subject matter such as pharmaceuticals,
`herbal supplements and electronic mapping. Mr. Crosby was also a leading member of a team that
`successfully represented Microsoft and twenty co-defendants in a multi-million dollar patent litigation
`matter concerning the field of electronic mapping.
`
`Mr. Crosby graduated from Virginia Tech, in Blacksburg, Virginia where he received a Bachelors of
`Science degree in Biology. He went on to graduate from Drexel University in Philadelphia,
`Pennsylvania with a Masters of Science in Finance. Mr. Crosby then graduated from Villanova
`University School of Law in Villanova, Pennsylvania where he received his Juris Doctor degree.
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`Chad Ziegler, Senior Counsel
`
`Mr. Ziegler is a registered patent attorney with over fifteen years of experience
`litigating complex patent infringement, trade secret, and trademark actions in Federal
`Court. Throughout his career, Mr. Ziegler has represented both plaintiffs and
`defendants in cases involving complex scientific technology in various fields –
`including genetics (RNA interference); electrical engineering (power systems for
`Hadron Collider at CERN); pharmacokinetics (drug metabolites); and computer
`science (CDMA and codecs). Mr. Ziegler also has extensive experience with patent
`prosecution and patent studies and other opinion work, particularly in the fields of
`biotechnology and organic chemistry. Prior to his work with Classic Counsel, Mr.
`Ziegler was a partner and lead litigator at Scully Scott Murphy and Presser. Prior to
`Scully Scott, Mr. Ziegler was a partner at Woodcock Washburn. Mr. Ziegler
`received his J.D. from Ohio Northern University, Claude W. Pettit School of Law
`and his B.S. in Biology from Albright College.
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`Laba Karki, Ph.D., J.D., Associate Attorney
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`Dr. Karki's specialties include the fields of chemistry and pharmaceuticals. Dr. Karki's education
`includes a B.S. in Chemistry from Davidson College, a M.S. and a Ph.D. in Physical/Analytical
`Chemistry from Northwestern University and a law degree from the George Washington University Law
`School. Prior to joining Classic Counsel, Dr. Karki worked for one of the largest and most prominent
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`Jai-wei Fishman, M.S. is a patent agent specializing in the chemical, biological, pharmaceutical and
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`received a B.S. in Microbiology and Molecular Genetics. Mrs. Fishman also graduated from George
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`numerous publications in journals such as Neuron and Molecular Pharmacology.
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