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: July 28, 2016
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`Cancellation No. 91227572
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`Hummel Holding A/S
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`v.
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`Thread Wallets
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`Faint
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`By the Trademark Trial and Appeal Board:
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`This case now comes before the Board for consideration of Applicant’s motion,
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`filed June 3, 2016, pursuant to Fed. R. Civ. P. 12(b)(6) to dismiss Opposer’s notice of
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`opposition for failure to state a claim upon which relief may be granted. Opposer filed
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`a timely response to Applicant’s motion.1
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`Background
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`Applicant seeks to register the mark:
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`1 Applicant filed two motions to dismiss on the same date. By its order of June 9, 2016, the
`Board noted that the docket entry number 5 was the operative motion.
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`Opposition No. 91227572
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`for backpacks and wallets in Class 18.2
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`By the notice of opposition, filed April 27, 2016, Opposer alleges claims of
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`priority and likelihood of confusion under Trademark Act § 2(d), that the mark is void
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`ab initio as to backpacks because the mark was not used in commerce for those goods
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`prior to the filing of Applicant’s use-based application, and fraud based on non-use as
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`to backpacks.
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`In lieu of filing an answer to the notice of opposition, Applicant filed a motion
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`to dismiss for failure to state a claim upon which relief may be granted. In support of
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`its motion, Applicant maintains that Opposer has failed to set forth allegations to
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`support any of its asserted claims.3
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`Analysis
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` To withstand a motion to dismiss for failure to state a claim upon which relief
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`can be granted, a plaintiff need only allege sufficient factual matter that, if proved,
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`would allow the Board to conclude, or to draw a reasonable inference, that (1) the
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`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
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`USPQ2d 1780, 1782 (TTAB 2012) (citing Young v. AGB Corp., 152 F.3d 1377, 47
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`2 Application Serial No. 86798882, filed October 26, 2015, claiming dates of first use and first
`use in commerce of April 1, 2014. The mark description, “The mark consists of two arrows
`sitting side by side pointing to the right bounded by a square box,” is of record, and color is
`not claimed as a feature of the mark.
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` To the extent Applicant has argued the merits of Opposer’s asserted claims, the Board
`has not given any consideration to such arguments. The purpose of a motion to dismiss is to
`test the sufficiency of the complaint, not to decide the merits of the case. See Scotch
`Whiskey Ass’n v. United States Distilled Prods. Co., 18 USPQ2d 1391 (TTAB 1991).
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` 3
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`2
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`Opposition No. 91227572
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`USPQ2d 1752, 1754 (Fed. Cir. 1998)); see also TBMP § 503.02 (2015). Specifically, 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.’” Doyle, 101 USPQ2d at 1782 (quoting Ashcroft
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`v. Iqbal, 556 U.S. 662, 678 (2009)). In particular, the claimant must allege well-
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`pleaded factual matter and more than “[t]hreadbare recitals of the elements of a cause
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`of action, supported by mere conclusory statements.” Iqbal, 556 U.S. at 678 (citing
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)).
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`For purposes of determining such motion, all of the plaintiff’s well-pleaded
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`allegations must be accepted as true, and the complaint must be construed in the
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`light most favorable to the plaintiff. See Advanced Cardiovascular Sys. Inc. v. SciMed
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`Life Sys. Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993).
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`Dismissal for insufficiency is appropriate only if it appears certain that the
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`plaintiff is entitled to no relief under any set of facts which could be proved in support
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`of its claim. See Stanspec Co. v. American Chain & Cable Co., Inc., 531 F.2d 563, 189
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`USPQ 420 (CCPA 1976).
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`Standing and the Ground of Priority and Likelihood of Confusion
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`The Board, after reviewing Opposer’s pleading, finds that Opposer has
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`sufficiently alleged a “real interest” and a “direct and personal interest” in the
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`outcome of this proceeding. Specifically, Opposer has pleaded common-law
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`trademark rights in and ownership of registrations and an application for the
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`following marks:
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`3
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`Opposition No. 91227572
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`4
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`,5 and
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`6
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` prior to Applicant’s filing of its application, that its trademark rights predate
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`Applicant’s filing date, that the marks are similar, that Opposer uses its marks for
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`related goods and services, and that the marks are likely to be confused. Opposer
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`therefore has sufficiently alleged its standing and the ground of priority and
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`likelihood of confusion. See Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020,
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`1022 (TTAB 2009). Proof of Opposer’s standing and ground are left to final decision.
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`See Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (at
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`4 Registration No. 3115908, registered July 18, 2006 for, “Leather and imitations of leather
`and goods made of these materials, namely athletic and shoulder bags, sport bags, handbags;
`animal skins and hides; trunks and travelling bags, umbrellas, parasols and walking sticks;
`whips, harnesses and saddlery” in Class 18, as well as goods in Classes 25 and 28, under
`Trademark Act § 44(e). The mark description, “The mark consists of 2 CHEVRONS appearing
`side by side,” is of record, and color is not claimed as a feature of the mark.
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` 5
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` Registration Nos. 2980889 and 3389216, registered August 2, 2005 for goods in Class 25
`and Feb. 26, 2008 for, “Bags, namely, athletic bags, sports bags, all-purpose carrying bags,
`duffel bags, traveling bags, backpacks, haversacks, tote bags, fanny packs; luggage; purses,
`hand bags, shoulder bags” in Class 18 and goods in Classes 25 and 28, respectively. The
`description of the mark, “The mark consists of 2 CHEVRONS in vertical position,” is of record
`in Registration No. 2980889, which is based on Trademark Act § 44(e). Registration No.
`3389216 is based on Trademark Act § 66(a).
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` 6
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` Registration No. 4975465, registered June 14, 2016, for “Bags, namely, athletic bags,
`sports bags, all-purpose carrying bags, duffel bags, traveling bags, backpacks, haversacks,
`tote bags, fanny packs; luggage; purses, hand bags, shoulder bags,” in Class 18 and goods in
`Class 25, based on Trademark Act § 66(a). The mark description, “The mark consists of two
`downward-pointing chevrons within a stylized badge design” is of record. At the time the
`notice of opposition was filed, the trademark had not yet registered.
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`4
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`Opposition No. 91227572
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`final decision, inquiry is not whether pleading of standing is sufficient, but whether
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`allegations have been proven).
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`Where a plaintiff has alleged standing as to at least one properly pleaded
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`ground, its allegation of standing satisfies the standing requirement for any other
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`legally sufficient ground. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668
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`F.3d 1356, 1377, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012) (“[O]nce an opposer
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`meets the requirements for standing, it can rely on any of the statutory grounds for
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`opposition set forth in 15 U.S.C. § 1052.”); Petróleos Mexicanos v. Intermix S.A., 97
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`USPQ2d 1403, 1405 (TTAB 2010).
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`Based on the foregoing, Applicant’s motion to dismiss for failure to properly plead
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`a claim of priority and likelihood of confusion is denied.
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`Ground of Non-Use
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`An application filed based on use in commerce is void ab initio if, at the time
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`of filing the application, the mark was not used in commerce with only some, or all,
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`of the goods in the identification of goods. Grand Canyon West Ranch, LLC v.
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`Hualapai Tribe, 78 USPQ2d 1696, 1697 (TTAB 2006).
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`Opposer alleges Applicant was not using its mark in commerce with backpacks
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`at the time of filing its use-based application, and that the application is void ab initio.
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`The Board finds the pleading is sufficient for a claim of non-use.
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`Applicant’s motion to dismiss for failure to properly plead a claim of non-use is
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`denied.
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`5
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`Opposition No. 91227572
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`Ground of Fraud Based on Non-Use
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`Fraud based on non-use of a mark occurs when a party knowingly, and with
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`the intent to deceive the USPTO, represents that it is using the mark in connection
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`with goods or services, when in fact no use of the mark has been made.
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`Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., 86 USPQ2d 1572 (TTAB 2008).
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`Opposer alleges the following as its claim of fraud:
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`22. Because, upon information and belief, Applicant was not using
`Applicant’s Mark in commerce in connection with all of the goods set
`forth in the Application at the time Applicant filed the Application under
`Section 1(a) of the Lanham Act, the statements in the Application that
`“[t]he applicant is using the [applied-for] mark in commerce on or in
`connection with the identified goods” and that the [sic] “the [applied-for]
`mark was first used by the applicant or applicant’s related company or
`licensee predecessor in interest at least as early as 04/01/2014, and first
`used in commerce at least as early as 04/01/2014, and is now in use in
`such commerce” were false.
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`23. Upon information and belief, Applicant knew that as of the filing
`date of the Application it was not using Applicant’s Mark in interstate
`commerce in connection with each of the goods specified in the
`Application and that, therefore, its statements in the Application to that
`effect were false.
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`24. Upon information and belief, by falsely asserting that it was using
`Applicant’s Mark in interstate commerce as of the filing date of the
`Application, Applicant intended to and did deceive the United States
`Patent and Trademark Office (“USPTO”). Upon information and belief,
`Applicant’s false statements were made for the purpose of obtaining
`registration to which Applicant was not entitled.
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`25. Applicant’s false statement that it was using Applicant’s mark in
`interstate commerce as of the filing date of the Application was material
`to the USPTO’s examination of the Applicable [sic] for registrability and
`therefore was a material misstatement of fact.
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`26. As a result of Applicant’s willful and material false statements in
`connection with the Application, Applicant has committed fraud against
`the USPTO.
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`6
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`Opposition No. 91227572
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`27. By reason of the foregoing, Opposer will be injured by registration of
`Applicant’s Mark.
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`Fraud in procuring a trademark registration occurs when an applicant
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`knowingly makes false, material representations of fact in connection with his
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`application. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009)
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`(Bose). The Board has applied Bose to require specific allegations of the necessary
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`intent to deceive the USPTO to claim fraud. See Dragon Bleu (SARL) v. VENM, LLC,
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`112 USPQ2d 1925, 1928 (TTAB 2014) (finding amended counterclaim neither
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`generally alleges intent to deceive USPTO, nor pleads supporting facts from which
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`Board may reasonably infer Opposer intended to deceive USPTO). Pleadings of fraud
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`“based on information and belief” without allegations of specific facts upon which the
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`belief is reasonably based are insufficient. See NSM Res. Corp. v. Microsoft Corp., 113
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`USPQ2d 1029, 1034 (TTAB 2014) and Asian and Western Classics B.V. v. Lynne
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`Selkow, 92 USPQ2d at 1479. See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F3d
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`1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) (patent infringement case discussing
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`when pleading on information and belief under Fed. R. Civ. P. 9(b) is permitted).
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`Opposer’s fraud claim is legally insufficient inasmuch as it rests on
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`“information and belief,” and not the facts upon which the belief in Applicant’s
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`fraudulent intent is reasonably based. Bose, 91 USPQ2d at 1942 (finding fraud
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`requires specificity as to pleadings).
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`Accordingly, Applicant’s motion to dismiss for failure to properly plead a claim
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`of fraud is granted.
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`7
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`Opposition No. 91227572
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`The Board, however, freely grants leave to amend pleadings found, upon challenge
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`under Fed. R. Civ. P. 12(b)(6), to be insufficient, particularly where the challenged
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`pleading is the initial pleading. In view thereof, Opposer is allowed until TWENTY
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`DAYS from the mailing date of this order to file an amended notice of opposition that
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`properly pleads a claim of fraud, failing which the opposition will go forward on the
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`pleadings as construed herein.
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`If an amended notice of opposition is filed, Applicant is allowed until TWENTY
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`DAYS from the date indicated on the certificate of service of any such amended notice of
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`opposition to file an answer or otherwise plead. If no amended notice of opposition is filed,
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`Applicant’s time to answer is set out below.
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`Schedule
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`Proceedings are resumed.
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`Opposer is allowed until TWENTY DAYS from the mailing date of this order to
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`file an amended notice of opposition that properly pleads the dismissed claim, failing
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`which the opposition will go forward on the pleadings as construed herein.
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`If an amended notice of opposition is filed, Applicant is allowed until TWENTY
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`DAYS from the date indicated on the certificate of service of any amended notice of
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`opposition to file an answer or otherwise plead. If no amended notice of opposition is filed,
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`Applicant’s time to answer is set out below.
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`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
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`9/4/2016
`10/4/2016
`10/4/2016
`11/3/2016
`3/3/2017
`4/2/2017
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`8
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`Opposition No. 91227572
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`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
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`5/17/2017
`7/1/2017
`7/16/2017
`8/30/2017
`9/14/2017
`10/14/2017
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`In each instance, a copy of the transcript of testimony, together with copies of
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`documentary exhibits, must be served on the adverse party within thirty days after
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`completion of the taking of testimony. Trademark Rule 2.125.
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
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`oral hearing will be set only upon request filed as provided by Trademark Rule 2.129.
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`***
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`9