UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: June 15, 2016
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`Opposition No. 91225704
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`True LLC
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`v.
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`Baxley
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`By the Trademark Trial and Appeal Board:
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`Trapsoul, Inc.
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`Trapsoul, Inc. (“Applicant”) filed an intent-to-use application under Trademark
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`Act Section 1(b), 15 U.S.C. § 1051(b), to register the mark TRAPSOUL in standard
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`characters
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`for “Audio and video recordings
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`featuring music and artistic
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`performances” in International Class 9 and “Entertainment, namely, live music
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`concerts” in International Class 41.1 True LLC (“Opposer”) filed a notice of
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`opposition to registration of Applicant’s mark. The ESTTA cover form of the notice
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`of opposition indicates that Opposer alleges claims of (1) priority and likelihood of
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`confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on the
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`mark TRAPSOUL for goods in International Class 25 and services in International
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`Class 41.2
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`1 Application Serial No. 86613095, filed April 28, 2015.
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` 2
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` Opposer pleads its intent-to-use Application Serial No. 86614447, filed April 29, 2015, for
`the mark TRAPSOUL for “A-shirts; Apparel for dancers, namely, tee shirts, sweatshirts,
`pants, leggings, shorts and jackets; Athletic apparel, namely, shirts, pants, jackets,
`footwear, hats and caps, athletic uniforms; Athletic shirts; Baseball caps and hats; Body
`shirts; Button down shirts; Camouflage shirts; Clothing, namely, shirts and hats; Collared
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`Opposition No. 91225704
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`In lieu of an answer, Applicant, on February 16, 2016, filed a motion to dismiss
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`under Fed. R. Civ. P. 12(b)(6) for failure to state a claim. Because such motion was
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`served by mail on February 16, 2016, Opposer’s brief in response to that motion was
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`due by March 7, 2016. See Trademark Rules 2.119(c) and 2.127(a). After Opposer
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`filed an untimely brief in response on March 10, 2016, Applicant, on March 22,
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`2016, filed a motion to strike Opposer’s brief in response to the motion to dismiss.
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`Although no brief in response to the motion to strike is of record, the Board, in
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`its discretion, will decide that motion on the merits. See Trademark Rule 2.127(a);
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`TBMP § 502.04 (2015). For the Board to consider Opposer’s brief in response,
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`Opposer must make a showing that its failure to timely respond to the motion to
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`dismiss was caused by excusable neglect.3 See Fed. R. Civ. P. 6(b)(1)(B); TBMP §
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`shirts; Dress shirts; Fashion hats; Golf shirts; Graphic T-shirts; Hats; Hats for infants,
`babies, toddlers and children; Headgear, namely, hats, caps; Hooded sweat shirts; Leather
`hats; Long-sleeved shirts; Moisture-wicking sports shirts; Night shirts; Open-necked shirts;
`Over shirts; Polo shirts; Rain hats; Rugby shirts; Shirt fronts; Shirts; Shirts and short-
`sleeved shirts; Shirts and slips; Shirts for infants, babies, toddlers and children; Shirts for
`babies, adults, children, women, men; Short-sleeved or long-sleeved t-shirts; Short-sleeved
`shirts; Sleep shirts; Small hats; Sport shirts; Sports caps and hats; Sports shirts; Sports
`shirts with short sleeves; Sweat shirts; T-shirts; T-shirts for babies, adults, children,
`women, men; Tee shirts; Toboggan hats; Turtle neck shirts; Wearable garments and
`clothing, namely, shirts; Wind shirts; Women's clothing, namely, shirts, dresses, skirts,
`blouses; Women's hats and hoods; Yoga shirts” in International Class 25 and “Multimedia
`publishing of books, magazines,
`journals, software, games, music, and electronic
`publications; On-line journals, namely, blogs featuring hip hop music, culture, and lifestyle;
`Providing a website featuring blogs and non-downloadable publications in the nature of
`articles in the field(s) of hip hop music, culture, and lifestyle; Providing on-line magazines
`in the field of hip hop music, culture, and lifestyle; Providing on-line non-downloadable
`general feature magazines; Publication of electronic magazines” in International Class 41.
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` There are four factors to be considered, in the context of all the relevant circumstances, to
`determine whether a party's neglect of a matter is excusable. They are: (1) the danger of
`prejudice to the non-moving party; (2) the length of the delay and its potential impact on
`judicial proceedings; (3) the reason for the delay, including whether it was within the
`reasonable control of the moving party; and, (4) whether the moving party has acted in good
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`Opposition No. 91225704
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`509.01(b). A review of Opposer’s brief in response indicates that it includes no
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`showing of excusable neglect. Accordingly, Applicant’s motion to strike is granted as
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`well-taken, and Opposer’s brief in response to the motion to dismiss will receive no
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`consideration in deciding the motion to dismiss.
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`Notwithstanding the foregoing, the filing of the brief in response to the motion to
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`dismiss clearly indicates that Opposer does not concede the motion to dismiss.
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`Accordingly, the Board, in its discretion, will decide the motion to dimiss on the
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`merits. See Trademark Rule 2.127(a); TBMP § 502.04.
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`A motion to dismiss for failure to state a claim is a test solely of the legal
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`sufficiency of the complaint.4 To withstand a motion to dismiss for failure to state a
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`claim in a Board cancellation proceeding, the plaintiff need only allege such facts as
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`would, if proved, establish that (1) it has standing, and (2) a valid ground exists for
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`cancelling the subject registration. Lipton Industries, Inc. v. Ralston Purina Co., 670
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`F.2d 1024, 213 USPQ 185, 187 (CCPA 1982). Specifically, “a complaint must contain
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`sufficient factual matter, accepted as true, to state a claim to relief that is plausible
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`on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1949-50 (2009), quoting
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). In particular, a plaintiff
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`faith. See Pioneer Investment Services Company v. Brunswick Associates Limited
`Partnership, 507 U.S. 380, 395 (1993). These factors do not carry equal weight. See
`FirstHealth of the Carolinas Inc. v. CareFirst of Maryland Inc., 479 F.3d 825, 81 USPQ2d
`1919, 1921-22 (Fed. Cir. 2007) (Court affirmed finding of no excusable neglect based on
`second and third factors, with third weighed heavily in the analysis). The Board has noted
`on numerous occasions that, as several courts have stated, the third factor may be
`considered the most important factor in any particular case. See, e.g., Pumpkin Ltd. v. The
`Seed Corps, 43 USPQ2d 1582, 1586 n.7 (TTAB 1997).
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` Accordingly, the exhibits to the notice of opposition have received no consideration. See
`Trademark Rule 2.122(c); TBMP § 503.04.
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` 3
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`Opposition No. 91225704
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`need only allege “enough factual matter ... to suggest that [a claim is plausible]” and
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`“raise a right to relief above the speculative level.” Totes-Isotoner Corp. v. U.S., 594
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`F.3d 1346 (Fed. Cir. 2010).
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`Regarding Opposer’s standing to oppose, the starting point for a standing
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`determination in an opposition proceeding is Trademark Act Section 13(a), 15
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`U.S.C. § 1063(a), which provides that “[a]ny person who believes that he would be
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`damaged by the registration of a mark upon the [P]rincipal [R]egister ... may ... file
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`an opposition in the Patent and Trademark Office, stating the grounds therefor....”
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`Section 13 of establishes a broad class of persons who are proper opposers; by its
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`terms the statute only requires that a person have a belief that he would suffer
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`some kind of damage if the mark is registered. That is, that person must have a real
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`interest in the proceedings, i.e., a personal interest in the outcome of the
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`proceeding, and a reasonable basis for a belief of damage. See, e.g., Universal Oil
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`Prod. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 1123, 174 USPQ 458, 459
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`(CCPA 1972). There is no requirement that actual damage be pleaded and proved to
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`establish standing or to prevail in an opposition proceeding. See Ritchie v. Simpson,
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`50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
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`Regarding Opposer’s pleading of standing, the allegations set forth in
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`paragraphs 1 through 3 and 9 and 10 would ordinarily indicate a personal interest
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`in the proceeding and a reasonable belief of damage. See Cunningham v. Laser Golf
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`Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
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`v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189-90 (CCPA 1982);
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`Opposition No. 91225704
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`American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB
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`1992). However, the allegations in paragraphs 14 through 18 of the notice of
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`opposition indicate that Articles of Dissolution of Opposer were filed with the
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`Secretary of State of the State of Kentucky on August 18, 2015. Opposer alleges
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`that such filing was fraudulent and ineffective because such articles were filed
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`without the written consent of all of Opposer’s members in compliance with
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`Kentucky Revised Statute § 275.285(3). However, Opposer raised the issue of its
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`dissolution without clarifying that was active and in good standing when it filed the
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`notice of opposition.
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`Under Kentucky Revised Statute § 275.300 (2010), a “dissolved limited liability
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`company shall continue its existence but shall not carry on any business except that
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`appropriate to wind up and liquidate its affairs....” If Opposer was dissolved, its
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`filing of the notice of opposition may not constitute business appropriate to wind up
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`and liquidate Opposer’s affairs and therefore may have been impermissible under
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`Kentucky law.5
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`Opposer must plead and later establish that it had standing when it filed the
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`notice of opposition. See Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008
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`(TTAB 2015). Because the notice of opposition raises questions regarding whether
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`Opposer was dissolved when it filed the notice of opposition, Opposer has failed to
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`adequately plead its standing to maintain this proceeding. Cf. Paradise Creations
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`Inc. v. UV Sales Inc., 315 F.3d 1304, 65 USPQ2d 1293, 1296 (Fed. Cir. 2003)
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`5 The Board is empowered only to determine registrability and is not authorized to make
`determinations regarding a business entity’s alleged dissolution. See TBMP § 102.01.
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`Opposition No. 91225704
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`(plaintiff
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`lacks standing to sue
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`for patent
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`infringement because
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`it was
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`administratively dissolved at the time it filed suit).
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`Regarding grounds for opposition set forth in the notice of opposition, Federal
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`Rule of Civil Procedure 8(a)(2) requires that a pleading contain a “short and plain
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`statement of the claim showing that the pleader is entitled to relief.” Rule 8(a)(2)
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`announces does not require detailed factual allegations, but requires more than
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`labels, conclusions, formulaic recitations of the elements of a cause of action, and
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`naked assertions. See Ashcroft v. Iqbal, 555 U.S. 662, 678 (2009). Indeed, “a
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`complaint must contain sufficient factual matter, accepted as true, to ‘state a claim
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`to relief that is plausible on its face.’” Id., quoting Bell Atlantic Corp. v. Twombly,
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`550 U.S. 544, 570 (2007). A claim has facial plausibility when the plaintiff pleads
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`factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged. Ashcroft, 555 U.S. at 678. The
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`plausibility standard is not akin to a “probability requirement,” but it asks for more
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`than a sheer possibility of the allegations asserted. Id. Indeed, a plaintiff need not
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`allege specific facts that would establish a prima facie case for the claim(s) asserted.
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`See Bell Atlantic Corp., 550 U.S. at 547, citing Swierkiewicz v. Sorema N. A., 534
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`U.S. 506, 508 (2002).
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`In the context of Board inter partes proceedings, a claim is plausible on its face
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`when the plaintiff pleads factual content that if proved, would allow the Board to
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`conclude, or draw a reasonable inference that, the petitioner has standing and that
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`a valid ground for cancellation exists. Cf. Bell Atlantic Corp., 550 U.S. at 556. In
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`Opposition No. 91225704
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`particular, a plaintiff need only allege enough factual matter to suggest its claim is
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`plausible and “raise a right to relief above the speculative level.” Id. at 555-56.
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`Although the Board, in deciding a Rule 12(b)(6) motion, must accept as true all
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`factual allegations in the complaint, it is not bound to accept as true a legal
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`conclusion couched as a factual allegation. Id. at 555.
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`The ESTTA cover form indicates that Opposer intends to allege the following
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`claims: (1) priority and likelihood of confusion under Trademark Act Section 2(d);
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`and (2) fraud. To oppose under Section 2(d), Opposer must plead (and later prove)
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`prior proprietary rights in the term TRAPSOUL to demonstrate likelihood of
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`confusion as to source, whether by ownership of a registration, prior use of a
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`technical “trademark,” prior use in advertising, prior use as a trade name, or
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`whatever other type of use may have developed a trade identity. See Otto Roth &
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`Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
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`The allegations in the notice of opposition merely indicate an intent to use the mark
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`TRAPSOUL prior to the filing of Applicant’s involved intent-to-use application and
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`do not indicate an acquisition of proprietary rights prior to such filing. See Zirco
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`Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
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`1991) (intent-to-use applicant can rely on application filing date for purposes of
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`priority). As such, those allegations fail to set forth a legally sufficient Section 2(d)
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`claim.
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`To the extent that Opposer intends to allege fraud, fraud in procuring or
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`maintaining a trademark registration occurs when an applicant for registration or a
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`Opposition No. 91225704
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`registrant in a declaration of use or a renewal application knowingly makes specific
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`false, material representations of fact in connection with an application to register
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`or in a post-registration filing with the intent of obtaining or maintaining a
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`registration to which it is otherwise not entitled.6 See In re Bose Corp., 580 F.3d
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`1240, 91 USPQ2d 1938 (Fed. Cir. 2009). In determining the sufficiency of fraud
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`allegations, Federal Rule of Civil Procedure 9(b) requires identification of the
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`specific who, what, when, where, and how of the material misrepresentation or
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`omission committed before the USPTO. Cf. Exergen Corp. v. Wal-Mart Stores Inc.,
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`575 F.3d 1312, 91 USPQ2d 1656, 1667 (Fed. Cir. 2009) (allegations of inequitable
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`conduct in patent cases require pleadings of specific conduct upon which allegation
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`is based). Knowledge and intent, as conditions of mind of a person, may be averred
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`generally in support of an allegation of fraud. See Fed. R. Civ. P. 9(b);
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`DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086, 1088 (TTAB
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`2010). However, pleadings must allege sufficient underlying facts from which the
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`Board may reasonably infer that a party acted with the requisite state of mind.
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`Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1479 (TTAB 2009).
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`Opposer’s fraud claim is based on (1) an allegedly false averment of ownership of
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`the involved mark TRAPSOUL, and (2) an allegedly false application declaration.
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`To the extent that Opposer based its fraud claim on an averment of ownership of
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`the involved TRAPSOUL mark in the application, an intent-to-use applicant does
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`6 “Materiality” of any false application statement is determined in the context of whether
`the false statement is critical to the Trademark Examining Attorney's decision to approve a
`mark for publication. See Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77
`USPQ2d 1917, 1926 (TTAB 2006).
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`Opposition No. 91225704
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`not aver to ownership of a mark. The application declaration expressly limits that
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`averment to applications under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). In
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`an intent-to-use application under Section 1(b), such as Applicant’s involved
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`application, an applicant avers that it “is entitled to use the mark in commerce;
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`[and that it] has a bona fide intention to use or use through the applicant's related
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`company or licensee the mark in commerce on or in connection with the
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`goods/services in the application.” Because the allegation of fraud due to an
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`allegedly false averment of ownership is based on a statement that is inapplicable
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`to Applicant’s involved application, that fraud allegation fails to set forth a
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`plausible claim.
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`To the extent that Opposer alleges that Applicant committed fraud in the
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`application declaration,
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`a plaintiff claiming that the declaration or oath in defendant's
`application for registration was executed fraudulently, in that there
`was another use of the same or a confusingly similar mark at the time
`the oath was signed, must allege particular facts which, if proven,
`would establish that: (1) there was in fact another use of the same or a
`confusingly similar mark at the time the oath was signed; (2) the other
`user had legal rights superior to applicant's; (3) applicant knew that
`the other user had rights in the mark superior to applicant's, and
`either believed that a likelihood of confusion would result from
`applicant's use of its mark or had no reasonable basis for believing
`otherwise; and that (4) applicant, in failing to disclose these facts to
`the Patent and Trademark Office, intended to procure a registration to
`which it was not entitled.
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`Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1205 (TTAB 1997).
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`An applicant's failure to disclose to the USPTO the asserted rights of another party
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`is not fraudulent unless the applicant knew that the other party possessed a
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`Opposition No. 91225704
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`superior or clearly established right to use the same or a substantially identical
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`mark for the same or substantially identical goods or services as those in connection
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`with which registration is sought.7 Thus, if the parties’ respective marks and goods
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`or services are not substantially identical, then the applicant has a reasonable basis
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`for believing that contemporaneous use of such marks by the parties, on or in
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`connection with their respective goods or services, is not likely to cause confusion.
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`Intellimedia Sports Inc., 43 USPQ2d at 1207. Opposer has not alleged a superior or
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`clearly established right to use the mark TRAPSOUL for the same or substantially
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`identical goods or services as those in connection with which registration is sought
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`and therefore has failed to plead a sufficient claim of fraud based on the application
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`declaration.
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`In view thereof, the motion to dismiss is hereby granted. In keeping with Board
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`practice, Opposer is allowed until thirty days from the mailing date set forth in this
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`order to file an amended notice of opposition that corrects the defects noted supra,
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`failing which the opposition will be dismissed without prejudice. See TBMP §
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`503.03. Proceedings herein otherwise remain suspended.
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`7 A declaration “is phrased in terms of a subjective belief, such that it is difficult, if not
`impossible, to prove objective falsity and fraud so long as the affiant or declarant has an
`honestly held, good faith belief.” J. Thomas McCarthy, McCarthy on Trademarks and
`Unfair Competition, § 31:76 (4th ed. 2015) (emphasis in original).
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