Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA751663
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`Filing date:
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`06/10/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91225185
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Defendant
`Don Sebastiani & Sons International Wine Negotiants
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`WARREN L DRANIT
`SPAULDING MCCULLOUGH & TANSIL LLP
`90 SOUTH E STREET SUITE 200
`SANTA ROSA, CA 95404-6500
`UNITED STATES
`dranit@smlaw.com
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`Motion to Dismiss - Rule 12(b)
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`Warren L. Dranit
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`dranit@smlaw.com
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`/wld/
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`06/10/2016
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`Attachments
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`Motion to Dismiss Amended NOO v01.pdf(49014 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`NOUVEAU, INC.,
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`) Opposition No. 91225185
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`Opposer,
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`v.
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`) Mark: VINEAU
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`DON SEBASTIANI & SONS INTERNATIONAL ) Serial No. 86-643,989
`WINE NEGOCIANTS,
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`Applicant.
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`__________________________________________)
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`APPLICANT'S MOTION TO DISMISS
`AMENDED NOTICE OF OPPOSITION
`Federal Rule of Civil Procedure §12(b)(6)
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`Applicant Don Sebastiani and Sons International Wine Negociants ("DSS") respectfully
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`moves the Board to dismiss all claims of Opposer NouvEau, Inc. ("NouvEau") set forth in its
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`Amended Notice of Opposition for failure to state a claim upon which relief can be granted
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`under Fed. R. Civ. P. §12(b)(6). NouvEau's Amended Notice of Opposition fails to establish a
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`valid basis on which to oppose DSS's application.
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`I.
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`INTRODUCTION
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`Applicant DSS has applied to register VINEAU based on its intent to use the mark in
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`connection with "flavored waters" and other "water beverages." NouvEau, appearing pro se, has
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`filed to oppose the application. DSS's Motion to Dismiss the initial Notice of Opposition was
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`granted with leave for NouvEau to filed an amended Notice of Opposition. NouvEau filed its
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`Amended Notice of Opposition ("Amended NOO") on May 20, 2016. 12 TTABVUE. DSS
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`now moves to dismiss the Amended NOO for failure to state a claim upon which relief can be
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`granted.
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`II.
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`STANDARD OF REVIEW
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`In lieu of filing an answer, an applicant may file a motion to dismiss for failure to state a
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`claim upon which relief can be granted, pursuant to Fed. R. Civ. P. 12(b)(6). Nike Inc. v. Palm
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`Beach Crossfit Inc. DBA Crossfit Cityplace, 116 USPQ2d 1025 (TTAB 2015).
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`To withstand such a motion to dismiss, "a plaintiff need only allege sufficient factual
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`matter that, if proved, would allow the Board to conclude, or to draw a reasonable inference, that
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`(1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for
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`opposing or cancelling the mark. Doyle v. Al Johnson's Swed. Rest. & Butik Inc., 101 USPQ2d
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`1780, 1782 (TTAB 2012) (citing Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
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`(Fed. Cir. 1998)); see also TBMP § 503.02 (2015). Specifically, a complaint “must contain
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`sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.”’
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`Doyle, 101 USPQ2d at 1782 (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). In particular,
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`the claimant must allege well pleaded factual matter and more than “[t]hreadbare recitals of the
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`elements of a cause of action, supported by mere conclusory statements.” Iqbal, 556 U.S. at 678
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`(citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007))." Id.
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`III. FACTUAL BACKGROUND
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`On May 28, 2015, DSS filed its application to register VINEAU on the Principal Register
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`based on its intent to use the mark on "flavored waters" and other "water beverages" (the
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`"Application").1 The Application has been assigned Serial No. 86-643,989. On initial
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`examination, the Application was approved for publication on September 11, 2015. The
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`Application was published for opposition on October 20, 2015.
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`1 DSS currently has nearly 30 marks registered on the Principal Register for use in connection with wine. It also has
`nearly 20 applications pending for a variety of goods including nuts, water beverages and alcoholic beverages.
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`NouvEau owns U.S. patent rights in a product consisting of potable water extracted from
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`the residual biomass of a fermentation process. (Amended NOO ¶2, 12 TTABVUE 2-3.) Such
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`a fermentation process includes the production of wine. NouvEau claims exclusive rights in
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`potable water extracted from mass remaining in the bottom of barrels and tanks used to produce
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`wine. It also owns patent rights in France for the method to make this potable water product.
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`(Amended NOO ¶3, 12 TTABVUE 3.)
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`NouvEau has filed to register EAU DE VIN; its application has been assigned Serial No.
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`86-810,563. (Amended NOO ¶3, 12 TTABVUE 3.)
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`NouvEau's Amended NOO was filed on May 20, 2016 (12 TTABVUE). Pursuant to the
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`Board's order granting DSS's initial Motion to Dismiss, the deadline for DSS to respond to
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`NouvEau's Amended NOO is June 10, 2016. 11 TTABVUE 8.
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`IV. LEGAL DISCUSSION
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`For the purposes of this Motion to Dismiss, DSS does not dispute that NouvEau has
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`standing to maintain the proceeding. Rather, NouvEau's opposition proceeding fails because it
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`has not set forth a valid ground for opposing the VINEAU mark. 15 U.S.C. §1063.
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`A. Opposer Has Not Established A Valid Claim Under Lanham Act §2(d)
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`"To allege a valid ground for opposition under Section 2(d), Opposer need only allege it
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`has valid proprietary rights that are prior to those of Applicant, or that it owns a registration
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`which Applicant has not counterclaimed to cancel, and that Applicant's mark so resembles
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`Opposer's mark as to be likely to cause confusion." Nike, supra (citing Lanham Act § 2(d), 15
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`U.S.C. § 1052(d); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40
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`(CCPA 1981)).
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`"Rights in a trademark are determined by the date of the mark's first use in commerce.
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`The party who first uses a mark in commerce is said to have priority over other users." Hana
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`Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 909, 190 L. Ed. 2d 800 (2015). Contingent on the
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`registration of a mark on the principal register, the filing of an application to register a trademark
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`constitutes constructive use of the mark, conferring a right of priority, nationwide in effect, on
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`the goods specified in the registration against any other person except someone who has prior
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`use of their mark. Lanham Act §7(c), 15 U.S.C. §1057(c).
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`NouvEau does not assert that it has a prior registration of EAU DE VIN. Moreover, it
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`fails to allege facts which support a claim that it has priority rights in EAU DE VIN.
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`NouvEau's Amended NOO sets out the support for its opposition in nine numbered
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`paragraphs that reference eight exhibits. Only paragraphs 1 through 4 of the Amended NOO
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`offer any allegations that reflect on establishing priority rights. 12 TTABVUE 2-3. However, a
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`review of those paragraphs confirms that NouvEau has not established such priority:
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`• Paragraph 1 asserts NouvEau's rights in French trademarks. Trademark rights in
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`France do not establish priority trademark rights in the United States. Foreign use has
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`no effect on U.S. commerce and cannot form the basis for a holding that Opposer has
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`priority. Person's Co., Ltd. v. Christman, 900 F.2d 1565, 1568-69 (Fed. Cir. 1990)
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`(relying on use of the mark in Japan is not sufficient to support a claim for priority in
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`the United States). The concept of territoriality is basic to trademark law; trademark
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`rights exist in each country solely according to that country's statutory scheme. Id.
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`• Paragraph 2 asserts NouvEau's rights in U.S. Patent 7,569,146. However, rights in a
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`U.S. patent do not establish priority rights for a trademark in the U.S. A patent is by
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`definition not a trademark or trademark use.
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`• Paragraph 3 asserts NouvEau's rights in French Patent 1,748,835. However, rights in
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`a French patent do not establish priority rights for a trademark in the U.S.
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`• Paragraph 3 also alleges the sale of product on November 4, 2015. The allegation is
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`supported by Exhibit 6 which sets forth images of the product and a copy of an
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`invoice dated November 4, 2015. 12 TTABVUE 10. However, the November 4,
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`2015 date of sale is after May 28, 2015, the filing date for DSS's Application.
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`Accordingly, the allegation in paragraph 3 does not establish priority rights in EAU
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`DE VIN. Automedx, Inc. v. Artivent Corporation, 95 U.S.P.Q.2d 1976 (TTAB 2010)
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`(for purposes of determining priority of use, applicant's date of first use is the filing
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`date of its intent-to-use application); see also Lanham Act §7(c), 15 U.S.C. §1057(c).
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`• Paragraph 4 alleges that NouvEau has engaged in research and development of its
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`patented product since 2007. The allegation is supported by Exhibits 7 and 8 which
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`are presumably intended to show the product "referred" to as EAU DE VIN. 12
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`TTABVUE 11-12. However, Exhibit 7 is an email message and a brochure of some
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`kind. Exhibit 8 is also an email. Neither shows EAU DE VIN affixed to a product.
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`Neither is trademark use. See, e.g., 15 U.S.C. §1127 (definition of "use in
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`commerce" on goods). Neither is sufficient to establish trademark rights, let alone
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`rights that have priority over the subject Application.
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`• Paragraph 4 also alleges the "water from wine product" was sold in commerce in
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`2008. This allegation is supported by a reference to Exhibits 5 and 9. 12 TTABVUE
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`9, 12. But the nature of the allegation, as supported by these exhibits, is not of
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`trademark use of EAU DE VIN. Rather, to the extent there may be trademark use it
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`is "Aqua Vin Naturale" and "NouvEau". Neither provides NouvEau with priority
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`rights in EAU DE VIN.
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`Because NouvEau has not established priority rights in EAU DE VIN, it has failed to
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`state a claim upon which relief may be granted under Lanham Act §2(d).
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`B. Opposer Has Not Established A Valid Claim Under Lanham Act §2(e)(1)
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`In its order granting the initial Motion to Dismiss, the Board suggested that NouvEau
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`appeared to be asserting a claim under Lanham Act §2(e)(1). 11 TTABVUE 3. The Board also
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`provided a roadmap of how to properly plead such a claim. 11 TTABVUE 4-5. However, a
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`review of the supporting paragraphs in the Amended NOO confirms that this is not the case.
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`Rather, NouvEau's complaint is that DSS's mark may describe some aspects of NouvEau's
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`patented product. Similarly, NouvEau's reference to genericness is in relation to its own product.
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`Its complaint is intended to protect its patent rights. It is not a valid basis for opposing a
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`trademark application including asserting a claim under §2(e)(1).
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`Paragraphs 5 through 9 of the Amended NOO offer the allegations that seem to reflect on
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`what the Board suggested was a claim under §2(e)(1). 12 TTABVUE 3-4. However, a review of
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`those paragraphs confirms that NouvEau's concern is focused on its patent rights and that
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`NouvEau is concerned that DSS's mark describes some aspect of the product protected by the
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`patent:
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`• The first sentence in paragraph 5 is telling. It begins "Applicant's proposed VINEAU
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`(wine water) mark is an imitation and willful attempt to appropriate by trademark
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`Opposer's patented water of wine product...." That is, NouvEau is alleging that DSS's
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`mark infringes NouvEau's patent rights by describing some aspect of the product
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`protected by its patent.
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`• Paragraph 5 also cites to U.S. Supreme Court precedent. Regardless of whether
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`NouvEau's interpretation of the decision is correct, the key point is that NouvEau
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`alleges that "a product name made generic by a patent is carried with the patented
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`product that manufactures it until off-patent when it comes into the public domain."
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`That is, NouvEau appears to be claiming exclusive rights in the generic name of the
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`product covered by its patent.
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`• Paragraph 6 confirms this interpretation by citing to precedent of the Third Circuit
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`Court of Appeals for a "nexus between trademark law and patent protection." This
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`case law has no relevance to a claim under Lanham Act §2(e)(1).
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`• Paragraph 7 continues NouvEau's reliance on its patent rights as the basis for
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`opposing the subject trademark Application. That paragraph concludes by asserting
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`that "Applicant has no right to copy Opposer's unique singular product made by
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`patent which, in effect, constitutes a patent infringement of Opposer's unique patented
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`product by trademark." The alleged infringement of NouvEau's patent rights is not a
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`valid basis for an opposition proceeding including a claim under §2(e)(1).
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`In paragraph 8, NouvEau alleges that DSS has other choices for a trademark for its
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`product rather than the subject trademark. That is always true but it's not a valid basis
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`for opposing an application to register.
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`In paragraph 9, NouvEau continues with its reliance on its patent rights. It alleges
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`that the subject trademark "is confusingly similar to Opposer's unique singular
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`patented product, brand and statement of identity…" The reference in this sentence
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`to its "patented product" and the "statement of identity" for its patented product
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`further confirms that NouvEau is seeking to protect its patent rights. The reference to
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`•
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`•
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`brand is presumably to EAU DE VIN. But as established in the prior section,
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`NouvEau has not established priority rights in this designation.
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`These paragraphs confirm that NouvEau is seeking to protect its patent rights through this
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`opposition proceeding. It is not alleging a claim under Lanham Act §2(e)(1). NouvEau's
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`allegations do not assert a valid ground for opposing a trademark application. 15 U.S.C. §1063.
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`As a result, here again, NouvEau fails to state a claim upon which relief may be granted.
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`C. Leave To Amend Should Not Be Granted
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`The Board, in its discretion, may refuse to allow an opportunity for amendment of a
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`Notice of Opposition. Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929 n.10
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`(TTAB 2014). No opportunity to correct a defective pleading is needed when it would serve no
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`useful purpose. Id. (citing Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 154 (TTAB
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`1983), aff'd, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984)). Here, the Board's order granting
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`the initial Motion to Dismiss provided NouvEau with a roadmap on how to properly plead a
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`valid claim in a notice of opposition. 11 TTABVUE 4-5. However, even with that guidance,
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`NouvEau has not established a valid basis for opposing DSS's mark. NouvEau has not
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`established priority rights in its EAU DE VIN mark. Instead, it has alleged the sale of one bottle
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`of the product which occurred after the filing date of the subject Application. It has not
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`established priority rights. Moreover, NouvEau's allegations also make clear that it is not
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`seeking to establish a valid claim under Lanham Act §2(e)(1). Rather, NouvEau is concerned
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`that DSS is invading its patent rights because DSS's mark arguably describes the product set
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`forth in the NouvEau patent. This is not a valid ground for opposing a trademark application. 15
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`U.S.C. §1063. Having failed to establish a valid basis for its opposition proceeding, the motion
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`to dismiss should be granted without leave to amend.
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`V. CONCLUSION
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`NouvEau cannot state a claim under Lanham Act §2(d) because it does not have priority
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`rights in EAU DE VIN. Furthermore, it other allegations are not directed to a valid basis for
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`opposition of a trademark application. Accordingly, NouvEau has not alleged a valid ground for
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`opposing DSS's application to register VINEAU. DSS requests the Board dismiss all of
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`NouvEau's claims for failure to state a claim upon which relief can be granted under Fed. R. Civ.
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`P. §12(b)(6). Because NouvEau cannot re-plead the asserted facts to create a viable claim, the
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`motion should be granted without leave to amend.
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`Respectfully submitted,
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`SPAULDING MCCULLOUGH & TANSIL LLP
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`Dated: June 10, 2016
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`/wld/
`By:
`Warren L. Dranit
`Spaulding McCullough & Tansil LLP
`90 South E Street, Suite 200
`Santa Rosa, CA 95402
`t: (707) 524-1900
`f: (707) 524-1906
`e: dranit@smlaw.com
`Attorneys for Applicant
`Don Sebastiani & Son International Wine Negociants
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`CERTIFICATE OF SERVICE
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` hereby certify that a true and complete copy of the foregoing Applicant's Motion to Dismiss
`(Federal Rule of Civil Procedure §12(b)(6)) has been served on NouvEau, Inc. by transmitting
`such copy by email on June 10, 2016 to:
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`Thomas O. Peyton
`NouvEau Inc.
`PO Box 1685
`Lafayette, IN 47902-1685
`tpeyton@nouv-eau.com
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`SPAULDING MCCULLOUGH & TANSIL LLP
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`/wld/
`By:
`Warren L. Dranit
`Spaulding McCullough & Tansil LLP
`90 South E Street, Suite 200
`Santa Rosa, CA 95402
`t: (707) 524-1900
`f: (707) 524-1906
`e: dranit@smlaw.com
`Attorneys for Applicant
`Don Sebastiani & Son International Wine Negociants
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`- 10 -