Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA711465
`ESTTA Tracking number:
`11/30/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91223239
`Defendant
`Green Regimen
`RON LAZEBNIK
`LINCOLN SQUARE LEGAL SERVICES INC
`150 W 62ND ST FL 9
`NEW YORK, NY 10023-7407
`UNITED STATES
`rlazebnik@lsls.fordham.edu
`Opposition/Response to Motion
`Ron Lazebnik
`rlazebnik@lsls.fordham.edu
`/Ron Lazebnik/
`11/30/2015
`20151130161543.pdf(570056 bytes )
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`Proceeding
`Party
`
`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`Bayer HealthCare LLC,
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`Opposer,
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`v.
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`Green Regimen,
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`Applicant.
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`Opposition No.: 91223239
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`Application Serial. No.: 86486647
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`Mark: A SMOOTHIE A DAY KEEPS
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`THE DOCTOR AWAY
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`RESPONSE IN OPPOSITION TO OPPOSER’S
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`MOTION TO STRIKE APPLICANT’S UNCLEAN HANDS DEFENSE
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`Green Regimen submits this Response in opposition to Bayer HealthCare LLC’s
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`(“Bayer”) Motion to Strike Applicant’s Unclean Hands Defense (“Mot. to Strike”). The
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`affirmative defense alleges that Bayer is barred from opposing Green Regimen’s registration due
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`to Bayer unfairly forcing small businesses to abandon their applications because they could not
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`afford to litigate an opposition for marks comprising “a day” for goods in class 5, regardless of
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`how dissimilar they were to Bayer’s marks. Bayer requests that Green Regimen’s defense be
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`stricken because in order to plead it, Green Regimen had to allege that the merits of Bayer’s
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`previous oppositions were questionable. As Bayer is on notice of the basis for Green Regimen’s
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`defense, and discovery is required to test its merits, Bayer’s motion should be denied and Green
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`Regimen should be given the opportunity to prove the merits of its defense after discovery is
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`completed.
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`Moreover, Bayer’s motion should be viewed with skepticism because “motions to strike
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`are not favored” by the Board. TBMP § 506; Harsco Corp. v. Electrical Sciences Inc., 9
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`U.S.P.Q.2d 1570, 1571 (T.T.A.B. 1988). “A defense should only be stricken if it clearly has no
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`bearing upon the issues in the case” Id. To succeed on a motion to strike, the opposer must
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`demonstrate that the affirmative defense being challenged is either insufficient or is redundant,
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`immaterial, impertinent, or scandalous. See TBMP § 506.01; see also Harjo v. Pro Football,
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`Inc., 30 U.S.P.Q.2d 1828 (T.T.A.B. 1994) (stating that a defense will not be stricken if the
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`insufficiency of the defense is not clearly apparent, or if it raises factual issues that should be
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`determined on a hearing on the merits); Harsco Corp. , 9 U.S.P.Q.2d at 1571 (holding that
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`affirmative defenses need not be stricken if there is no prejudice to the adverse party, or if
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`evidentiary facts are pleaded that give a fuller understanding of the complaint as a whole). As
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`detailed below, Bayer does not meet this burden and its motion should be denied.
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`1.
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`GREEN REGIMEN HAS SUFFICIENTLY PLEADED UNCLEAN HANDS
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`The United States Patent and Trademark Office allows a defendant to include any
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`defense in its answer to a trademark registration opposition proceeding, including the affirrnative
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`defense of unclean hands. See TBMP § 31l.02(b); 37 C.F.R. § 2.l06(b)(l). When pleading this
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`affirrnative defense, a defendant is “not bound by formula or restrained by any limitation that
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`tends to trammel the free and just exercise of discretion.” Keystone Driller Co. v. Gen. Excavator
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`Co. , 290 U.S. 240, 245-46 (1933) (holding that five patents-in-suit were unenforceable due to
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`unclean hands because of plaintiffs conduct concerning a related patent). It is sufficient to plead
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`that the plaintiff through “unfair means has gained an advantage.” Id. at 245; see Precision
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`Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 814-15 (1945) (stating that the
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`unclean hands defense is to help assure plaintiffs “have acted fairly and without fraud or deceit
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`as to the controversy in issue.”). The unfair conduct giving rise to an unclean hands defense may
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`be action previously taken before the U.S.P.T.O. See Consol. Aluminum Corp. v. Foseco Int ’l
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`Ltd., 910 F.2d 804, 812 (Fed. Cir. 1990) (“To hold that unclean hands applies only to conduct
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`before a court would be contrary to our precedent applying the doctrine to conduct before the
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`PTO.”). To sufficiently plead the conduct, the defendant need only include a short and plain
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`2
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`statement giving the plaintiff fair notice of the basis for the defense. See TBMP 31 l.02(b); 37
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`C.F.R. § 2.106(b)(1). Whether that defense is ultimately successful is immaterial to whether it
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`can be included in a pleading. See Central MFG. Co. v. Stealth, LTD, Opposition No. 91158263,
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`2004 WL 1447639, at * 1-2 (T.T.A.B. 2004) (noting that the applicant sufficiently pleaded the
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`defense of unclean hands based on a theory of “aggressive filing of suits” and that “proving the
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`defense should be preserved for trial.”).
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`By not raising it in its motion, Bayer concedes that Green Regimen has given Bayer fair
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`notice of the basis for the unclean hands defense. Instead, Bayer complains that part of two of
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`the allegations in Green Regimen’s Answer to the Notice of Opposition, 111] 20 and 23, are
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`conclusory. Mot. to Strike at 2. The first allegation states that Bayer’s grounds for the opposition
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`of registration of marks comprising “a day” are often dubious, weak, or exaggerated, and the
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`second alleges that Bayer is attempting to unfairly raise the cost of entry for Green Regimen to
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`compete in the marketplace by filing this and other groundless oppositions with the T.T.A.B. See
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`Answer To Notice of Opposition (“Answer”) ‘H11 20, 23. Essentially, Bayer disagrees with Green
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`Regimen’s allegations regarding the merits of Bayer’s previously filed claims. The merit of a
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`claim of likelihood of confusion, however, is not a factual question — it is a question of law. See
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`Giant Food, Inc. v. Nations Food Service, Inc., 710 F.2d 1565, 1569 (Fed. Cir. 1983) (holding
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`that “the issue of likelihood of confusion is the ultimate conclusion of law to be decided by the
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`court.”). Legal allegations may be pleaded in a conclusory nature and should not be stricken
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`from a pleading. See 5 C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE: CIVIL §
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`1383 (3d ed.) (“the rules do not condemn the pleading of conclusions of law and occasionally
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`encourage them as the clearest and simplest way of stating a claim for relief”). Just as Bayer
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`was allowed in its Notice of Opposition (“Opp.”) to state that it believes Green Regimen’s mark
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`is “likely to cause confusion, mistake or deception as to the source of origin,” (Opp. 1] 8) or
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`“likely to dilute the distinctiveness of [Bayer’s]” mark (Opp. 1] 9), so too can Green Regimen
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`plead legal conclusions to assist it in putting Bayer on notice as to the basis for its affirmative
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`defense of unclean hands.
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`Bayer also attempts to say that the allegation questioning the merits of Bayer’s previous
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`claims are false by noting that its prior oppositions have never been found invalid, nor dismissed
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`for failure to state a claim, nor had a previous affirmative defense against it based on unclean
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`hands or other inappropriate behavior ever succeeded. Mot. to Strike, at 2. In doing so, Bayer
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`fails to admit that the proceedings it lists were never resolved on the merits. Bayer’s recitation of
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`previous actions only shows instances where it has asserted a claim which lead to the applicants’
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`eventual abandonment of the opposed registrations, regardless of how strong the Board may have
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`ultimately found Bayer’s claim.
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`Moreover, Bayer’s reliance on cases dismissing an unclean hands defense based on an
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`opposer’s right as a trademark owner to file oppositions is premature given the difference
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`between the procedural posture of those proceedings and the one here. In Avia Group Int ’l Inc.
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`v. Faraut, the unclean hands defense was not originally pleaded, but rather requested by the
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`respondent after discovery was well underway, and the respondent thought it found a conspiracy
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`between the petitioner and a third-party to force the respondent out of business when the
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`respondent discovered a relationship between the two entities through means outside of the
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`litigation. Avia Group Int ’I Inc. v. Faraut, 25 U.S.P.Q.2d 1625, 1626 (T.T.A.B. 1992). In
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`refusing respondent’s request, the Board noted that respondent had not effectively participated in
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`discovery and had not alleged that there was any fault with the petitioner’s claim that the
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`respondent’s mark was confusingly similar. Id. at 1627. The unclean hands defense in Time
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`Warner Entm ’t Co. L. P. v. Karen Jones, was only rejected after discovery was completed and the
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`applicant had “not presented any evidence or argument specifically directed to this defense” to
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`the Board. Time Warner Entm ’t Co. L.P. v. Karen Jones, 65 U.S.P.Q.2d 1650, 1653, n. 4
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`(T.T.A.B. 2002). Here, discovery has not commenced and Green Regimen has not had an
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`opportunity to collect evidence of the merits of its defense. Green Regimen’s pleading does,
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`however, make the basis of the unclean hands defense clear to Bayer.
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`A defense that puts the plaintiff on sufficient notice, as the one here does, should not be
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`stricken, but rather determined on the merits at trial after discovery is completed. Harjo v. Pro
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`Football, Inc., 30 U.S.P.Q.2d 1828, 1830 (T.T.A.B. 1994) (“a defense will not be stricken if. .
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`.
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`it raises factual issues that should be determined on a hearing on the merits”); See Central MFG.
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`Co. v. Stealth, LTD, Opposition No. 91158263, 2004 WL 1447639, at *2 (T.T.A.B. 2004)
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`(denying a motion to strike after finding that Green Regimen sufficiently pleaded its unclean
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`hands affirmative defense); 5 C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE:
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`CIVIL § 1381 (3d ed.) (noting that even for purely legal questions, motions to strike should be
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`denied because the questions are “best determined only after further development by way of
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`discovery and a hearing on the merits”). In Central MFG Co. , the applicant based its unclean
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`hands defense on the opposer’s “aggressive filling of suits” or “overzealous enforcemen .”
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`Central MFG. Co., 2004 WL 1447639, at *2. In its answer, the applicant claimed that opposer
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`arbitrarily proceeded against any entity that used the word STEALTH, regardless of whether it
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`was similar to the opposer’s use of its trademark. Id. at *1. The Board found that the applicant
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`sufficiently pleaded unclean hands, and stated that proving the defense should be preserved for
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`trial. Id. at *2. Green Regimen, like the applicant in Central MFG. Co. , bases its affirmative
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`defense of unclean hands on Bayer’s aggressive filing of oppositions to any mark comprising the
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`words “a day” for goods in class 5, regardless of how similar the marks are, in order to force
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`abandonment of the applications. Answer 111] 19-21. In its Motion to Strike, Bayer lists many
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`proceedings where such aggressiveness may have occurred. Mot. to Strike at 2-3. Whether
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`Green Regimen is correct, or whether Bayer has previously acted fairly and in good faith, should
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`be determined after discovery. See Central MFG, 2004 WL 1447639, at *2, *4 (allowing
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`proceedings to move into the discovery phase after the Board determined Green Regimen’s
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`unclean hands affirmative defense was sufficiently pleaded). All that is required at this stage of
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`the proceeding is for Green Regimen’s defense to put Bayer on notice of the relevant facts,
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`which judging from Bayer’s motion has been done. Green Regimen’s unclean hands defense
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`should not be stricken as insufficient.
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`II.
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`GREEN REGIMEN’S AFFIRMATIVE DEFENSE IS PERTINENT
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`A defense will only be stricken if it “clearly has no bearing upon the issues in the case.”
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`Ohio State University v. Ohio University, 51 U.S.P.Q.2d 1289, 1292 (T.T.A.B. 1999); Harsco
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`Corp. v. Electrical Sciences Inc., 9 U.S.P.Q.2d 1570, 1571 (T.T.A.B. 1988) (holding that a
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`defense will not be stricken unless it does not relate to the issues being litigated, regardless of
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`whether it is redundant or immaterial, so long as it does not prejudice the adverse party); Leon
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`Shaffer Golnick Advertising, Inc. v. William G. Pendill Marketing Co., 177 U.S.P.Q. 401, 402
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`(T.T.A.B. 1973) (declining to strike a pleading where there was enough factual foundation
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`pleaded to signal the pertinence of the pleadings complained of); 5 C. WRIGHT & A. MILLER,
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`FEDERAL PRACTICE AND PROCEDURE: CIVIL § 1380 (3d ed.). Green Regimen’s affirmative
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`defense alleges that Bayer routinely engages in the opposition of registration of marks
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`comprising “a day” for goods in class 5 by small businesses based on its ownership of the
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`pleaded marks of this opposition. Answer 111] 19, 20. Green Regimen further pleads that in
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`Bayer’s oppositions, Bayer attempts to enforce its alleged trademark rights beyond a reasonable
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`interpretation of the scope of the rights legitimately granted to a trademark owner. Answer 1111
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`20, 22 and 24. This pattern of conduct results in abandonment of the small businesses’
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`applications because they do not have the resources to sustain the costs associated with T.T.A.B.
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`proceedings. Answer 11 21. Green Regimen alleged that it is a small business, like the ones
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`previously targeted by Bayer’s prior proceedings, seeking to register a mark that contains “a
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`day” for goods in Class 5. Answer 1111 21-22. Therefore, the conduct alleged in Green
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`Regimen’s unclean hands defense is directly related to the current proceeding. See Central MFG
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`Co., 2004 WL 1447639, at *1 (finding that applicant’s allegations of opposer’s “aggressive filing
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`of suits” over the same trademark was sufficient to survive a motion to strike); Consol.
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`Aluminum Corp. v. Foseco Int ’l Ltd., 910 F.2d 804, 809 (Fed. Cir. 1990) (holding that the patent
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`owner’s inequitable conduct before the U.S.P.T.O. in one patent was relevant to a case involving
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`other patents owned by the plaintiff that were for the same machine).
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`III.
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`GREEN REGIMEN’S DEFENSE DOES NOT DISCOURAGE SETTLEMENT
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`Bayer takes issue with the effect Green Regimen’s unclean hands defense may have on
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`Bayer’s future conduct outside of this proceeding. Mot. to Strike at 4-6. While encouraging
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`settlements of legitimate disputes is beneficial to the judicial process, the Board should be wary
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`of allowing parties with an unfair advantage to misuse the opposition process. What Green
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`Regimen raises in its affirrnative defense is not an attack on settlements or a situation that would
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`place trademark owners in a “Catch-22” predicament. Mot. to Strike at 5. It is more akin to
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`asking the Board to remind litigants that there are limits to their claims. Cf Lenz v. Universal
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`Music Corp., 801 F.3d 1126, 1133 (9th Cir. 2015) (holding that in order to formulate a good faith
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`belief of copyright infringement, a “copyright holder must consider the existence of fair use
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`before sending a takedown notice under [17 U.S.C.] § 5l2(c).”). The idea that an intellectual
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`property owner should consider the strength of their claim before commencing a proceeding is in
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`fact just as good for public policy as encouraging a settlement once a suit has commenced.
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`The problem that some may use dispute forums to force settlements of questionable
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`intellectual property claims is not new. See Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed
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`Cir. 201 1); Assessment Techs. of WI, LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir. 2003)
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`(finding that the use of a dubious copyright infringement suit “hoping to force a settlement” is
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`“an abuse of process”); Humphreys & Partners Architects, L. P. v. Lessard Design, Inc., No.
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`1:13-CV-433, 2015 WL 7176010, at *7 (E.D.Va. Nov. 13, 2015) (“There is some indication that
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`plaintiff brought this lawsuit in an effort to extract money through a settlement rather than
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`protecting its purported copyright”). In Eon-Net, the plaintiff had a history of filing nearly
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`identical patent infringement claims that were quickly followed by demands for quick
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`settlements far below litigation defense costs. 653 F.3d at 1326. This tactic lead to a finding that
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`the plaintif “acted in bad faith by exploiting the high cost to defend litigation to extract a
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`nuisance value settlement.” Id. at 1326-27 (noting that the record supported the district court’s
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`finding that plaintiffs behavior had an “indicia of extortion”). Green Regimen alleges that
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`Bayer has filed numerous oppositions against applicants whose marks contain the term “a day,”
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`with no consideration for the strength of the claim in any given case, resulting in the eventual
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`abandonment of the application before discovery has commenced.‘ See Answer 1111 19-21.
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`1 One could further argue that moving to strike an affirrnative defense, as Bayer has done when
`they were pleaded in previous T.T.A.B. opposition proceedings, is another example of trying to
`increase the overall cost of litigation faced by applicants to force abandonments. See Bayer
`HealthCare LLC v. Pharmascience Inc., “FLUOR-A—DAY”, Opp. 91200243 (T.T.A.B. 2011);
`Bayer HealthCare LLC v. Health Essist, Inc., “APPLE-A-DAY EDIBLE STRIPS”, Opp.
`91 198407 (T.T.A.B. 201 1); see also 5 C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND
`PROCEDURE: CIVIL § 1381 (3d ed.) (“Motions to strike a defense as insufficient are not favored
`by the federal courts because of their somewhat dilatory and often harassing character”).
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`Indeed, from the oppositions referenced in Bayer’s motion, it appears that Bayer filed nearly
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`identical oppositions in at least eight proceedings, regardless of the mark at issue.2 Green
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`Regimen’s allegation is that for instances where the applicant being opposed was a small
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`business, the abandonment of the application was due more to litigation costs than the merits of
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`Bayer’s claim. Cf Assessment Technologies of WI, LLC, 350 F.3d at 647 (“for a copyright owner
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`to use an infringement suit to obtain property protection, .
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`.
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`. that copyright law clearly does not
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`confer, hoping to force a settlement [against] an opponent that may lack the resources or the
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`legal sophistication to resist effectively, is an abuse of process”). Although there is nothing
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`wrong with a trademark owner protecting its trademark rights, like in the protection of patents,
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`the owner should not let its desire to protect its mark “overpower [its] and its counsel’s
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`obligation to file cases reasonably based in law and fact and to litigate those cases in good faith.”
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`Eon-Net LP, 653 F.3d at 1328. Here, Green Regimen’s unclean hands defense questions whether
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`Bayer’s previous filings against small businesses were done with the good faith and fair intent
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`required. The Board should allow Green Regimen an opportunity to investigate this defense.
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`IV.
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`CONCLUSION
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`Bayer’s motion to strike Green Regimen’s unclean hands affirmative defense should be
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`denied. The affirmative defense was sufficiently pleaded to put Bayer on notice of the relevant
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`facts, and clearly relates to the issues at hand in this opposition. Green Regimen should be given
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`2 See Bayer HealthCare LLC v. Health Essist, Inc. , “APPLE-A-DAY EDIBLE STRIPS”, Opp.
`91198407 (T.T.A.B. 2011); Bayer HealthCare LLC v. Drucker Labs, LP, “PANADAY”, Opp.
`91195493 (T.T.A.B. 2010); Bayer HealthCare LLC v. Health & Longevity Systems LLC, “TEA-
`A-DAY” and “TEA A DAY”, Opp. 91194924 (T.T.A.B 2010); Bayer HealthCare LLC v. Pierre
`Fabre Medicament, “ORADAY”, Opp. 91193549 (T.T.A.B. 2010); Bayer HealthCare LLC v.
`Bioalliance Pharma, “ACYCLADAY” and “LABIADAY”, Opp. 91189538 (T.T.A.B. 2009);
`Bayer HealthCare LLC v. Genova Diagnostics, Inc. , “1 ONE”, Opp. 91187081 (T.T.A.B. 2008);
`Bayer HealthCare LLC v. Alcon, Inc., “PATADAY”, Opp. 91177624 (T.T.A.B. 2007); Bayer
`HealthCare LLC v. Stoneyfield Farms, Inc., “2-A-DAY”, Opp. 91177494 (T.T.A.B. 2007).
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`9
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`the opportunity to collect evidence in discovery that would prove that Bayer has acted with
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`unclean hands.
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`Dated: November 30, 2015
`New York, New York
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`Respectfully submitted,
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`LINCOLN SQUARE LEGAL SERVICES, INC.
`
`By:
`
`0LV_Z€l>r\;
`
`Ron Lazebnik
`
`150 West 62"“ Street, 9th Floor
`New York, NY 10023
`(212) 636-6934
`r1azebnik@1sls.fordham.edu
`
`Attorneysfor Green Regimen Green Regimen
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`

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`_(_3ERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing RESPONSE IN OPPOSITION TO
`0PPOSER’S MOTION TO STRIKE APPLICANT’S UNCLEAN HANDS DEFENSE
`was served by first class mail on November 30, 2015, upon the following:
`
`Phillip Barengolts
`Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
`200 South Wacker Drive
`
`Suite 2900
`
`Chicago, Illinois 60606
`(312) 554-8000
`Attorneys for Bayer HealthCare LLC
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`/‘Ea Jmti.~L
`
`Ron Lazebnik
`
`