Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA832547
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`Filing date:
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`07/11/2017
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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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`91234318
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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 email
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`Signature
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`Date
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`Defendant
`Smithsonian Institution
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`LAURYN H GUTTENPLAN
`SMITHSONIAN INSTITUTION
`PO BOX 37012 SIB 302 MRC 012
`WASHINGTON, DC 20013-7012
`UNITED STATES
`Email: guttenplanl@si.edu
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`Motion to Dismiss - Rule 12(b)
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`Lauryn Guttenplan
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`guttenplanl@si.edu
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`/Lauryn Guttenplan/
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`07/11/2017
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`Attachments
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`Final Combined.pdf(840374 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Before the Trademark Trial and Appeal Board
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`CARL RAYMOND AMOS,
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`Plaintiff-Opposer,
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`v.
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`SMITHSONIAN INSTITUTION,
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`Defendant-Applicant.
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`Opposition No. 91234318
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`APPLICANT’S MOTION TO DISMISS FOR LACK OF
`SUBJECT MATTER JURISDICTION AND FOR FAILURE TO STATE A CLAIM
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`Defendant-Applicant, The Smithsonian Institution, (hereinafter Applicant), moves
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`pursuant to Fed. R. Civ. P. 12(b)(1) and 12(b)(6) to dismiss each and every ground for opposition
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`pled by Plaintiff-Opposer (hereinafter Opposer) in this matter in the Opposer’s amended notice of
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`opposition (hereinafter, “Am. Not.”), which was accepted by the Board as Opposer’s operative
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`pleading in this proceeding on June 1, 2017.
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`1.
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`Whether Opposer’s alleged ground of opposition of “Copyright Infringement” should be
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`STATEMENT OF THE ISSUES
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`dismissed because this Board lacks jurisdiction. See Am. Not. at ¶¶ 6-8.
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`2.
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`Whether Opposer has failed to state a claim for likelihood of confusion under § 1052(d)
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`because Applicant’s first use defeats this ground as a matter of law where Opposer’s allegations
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`are founded on applications for registration, the filing basis of which were both amended to
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`become “intent to use” applications under 15 U.S.C. § 1051(b) and to delete 15 U.S.C. § 1051(a)
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`as an alleged filing basis. See Am. Not. at ¶¶ 9-12.
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`3.
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`Whether Opposer has failed to properly plead dilution as a ground for opposition given
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`that Opposer’s pleading conspicuously omits any allegation that Opposer’s marks are famous.
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`See Am. Not. at ¶¶ 13-15.
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`4.
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`Whether Opposer has failed to properly plead deception as a ground for opposition given
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`that Opposer’s pleading conspicuously omits (1) any allegation relating to the character, quality,
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`function, composition or use of Applicant’s listed services, omits (2) any allegation relating to
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`whether prospective users of Applicant’s services are likely to believe that an alleged
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`misdescription actually describes the Applicant’s listed services, and omits (3) any allegation
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`relating to whether the misdescription is likely to affect the decision to purchase Applicant’s
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`goods or services. See Am. Not. at ¶¶ 16-17.
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`5.
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`Whether Opposer’s “Differing Classification” statements fail to state a claim for relief in
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`support of a valid ground of opposition. See Am. Not. at ¶¶ 18-19.
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`STATEMENT OF THE CASE
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`“The Smithsonian Institution is the world’s largest museum, education, and research
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`complex, with 19 museums, 9 research institutions and the National Zoo—shaping the future by
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`preserving our heritage, discovering new knowledge, and sharing our resources with the world.”
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`See https://www.si.edu/about (last visited June 29, 2017). The Smithsonian Institution was
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`2
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`established as a trust instrumentality of the United States by act of Congress.
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`The National Museum of African American History and Culture (“NMAAHC”) was
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`established in 2003 by an act of Congress, making it the 19th Smithsonian Institution museum. It
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`is the only national museum devoted exclusively to the documentation of African American life,
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`art, history and culture. The Smithsonian Board of Regents, the governing body of the
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`Institution, voted in January 2006 to build the museum on a five-acre site on the National Mall.
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`See Serial Number 87081623, Response to Office Action filed February 1, 2017 (News Release
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`dated October 3, 2008, page 2).
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`On June 23, 2016, the Smithsonian Institution filed an application for registration of a
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`service mark pursuant to § 1051(a) of the Lanham Act in international class 041 for museum
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`services for NMAAHC. See Serial Number 87081623. “The mark consists of a representation
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`of a silhouette of the exterior tiered design of the museum building with the following words
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`stacked on top of each other inside the silhouette: ‘NATIONAL, MUSEUM OF, AFRICAN,
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`AMERICAN, HISTORY &, CULTURE,’ with ‘OF’ and ‘&’ underlined.’” Id. As required by
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`15 U.S.C. § 1051(a)(2) the application provided “the date of the applicant’s first use of the mark
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`in commerce[,]” which was identified as October 28, 2015. See Serial Number 87081623,
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`Service Mark application filed June 23, 2016 (indicating a “first use in commerce” date of “at
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`least as early as 10/28/2015”).
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`Opposer filed an opposition with this Board contesting the registration of Applicant’s
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`mark. Opposer’s amended notice of opposition was accepted by this Board as Opposer’s
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`operative pleading in this proceeding on June 1, 2017. As the pleaded basis for priority over
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`Applicant’s mark, Opposer wrote as follows: “The Opposer had filed his JWAHMOSE
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`3
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`trademarks 01-18-2016 and 12-07-2015, see Appendix B, nearly a year and a half ago. The
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`Applicant’s ‘mark’ on the other hand has a filing date of 06-23-2016 not quite a year ago, see
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`Appendix C.” Am Not. at ¶ 11. Appendix B to Opposer’s pleading references two applications
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`for registration, namely Serial Number 86878041, filed January 18, 2016, and Serial Number
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`86840684, filed December 7, 2015. Am Not., Appendix B. In both of these applications,
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`following refusal by the PTO, Opposer amended the filing basis to delete “actual use” under 15
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`U.S.C. § 1051(a) as the alleged filing basis, and replaced them with “intent to use” applications
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`under 15 U.S.C. § 1051(b).1
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`THE PERTINENT LEGAL STANDARDS
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`ARGUMENT
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`The government is filing this motion in lieu of an answer, in accordance with Fed. R. Civ.
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`I.
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`
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`P. 12(a)(4).2 “The filing of a motion to dismiss for failure to state a claim upon which relief can
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`1 This is not the only proceeding Opposer has brought relating to Applicant’s mark. On
`September 1, 2016, Opposer sued the Smithsonian in the U.S. Court of Federal Claims, asserting
`claims for copyright infringement (28 U.S.C. § 1498), as well as violations of the Digital
`Millennium Copyright Act (17 U.S.C. §§ 1203, 1204), the Lanham Act (15 U.S.C. § 1125), and
`the Racketeer Influenced and Corrupt Organizations Act (18 U.S.C. § 1962). Complaint, Amos
`v. United States, No. 16-cv-01094-EJF (Fed. Cl. Sept. 1, 2016), ECF No. 1. The court dismissed
`Opposer’s complaint. Id. at ECF No. 38. Mr. Amos filed an untimely appeal which was
`dismissed on June 28, 2017. See Amos v. United States, No. 2017-2036, ECF No. 12 (Fed. Cir.
`June 28, 2017) (Order dismissing Appeal). Opposer also filed a Complaint in the District Court
`of the Eastern District of Virginia against the Smithsonian alleging, inter alia, “violation of US
`Trademark, US Copyright and US Patent Infringement Laws . . . .” Amos v. Smithsonian
`Institution, No. 1:16-CV-01191, (E.D. Va. Sept. 19, 2016), ECF. No. 1 (Complaint) at 1. The
`court dismissed Opposer’s complaint in that matter on February 27, 2017. Id. at ECF. No. 38
`(order dismissing case)).
`2 These proceedings are governed by the Federal Rules of Evidence and Federal Rules of Civil
`Procedure. 37 C.F.R. §§ 2.116(a), 2.122(a).
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`4
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`be granted tolls the time for filing an answer.” Trademark Trial and Appeal Board Manual of
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`Procedure (hereinafter TBMP), § 503.01.
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`A.
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`THE LEGAL STANDARD FOR SUBJECT MATTER JURISDICTION
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`Pursuant to Fed. R. Civ. P. 12(b)(1), Applicant, the Smithsonian Institution, seeks
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`dismissal of Opposer’s pleading in part due to lack of subject matter jurisdiction. In considering
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`a motion for dismissal under Rule 12(b)(1) for lack of subject matter jurisdiction, the tribunal
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`normally considers the facts alleged in the complaint to be true and correct, but may consider
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`relevant evidence in order to resolve any factual dispute. See Reynolds v. Army & Air Force
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`Exch. Serv., 846 F.2d 746, 747 (Fed. Cir. 1988). The ultimate burden is on a plaintiff to prove
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`that the tribunal has jurisdiction to hear its claims.
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`B.
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`THE LEGAL STANDARD FOR FAILURE TO STATE A CLAIM ON WHICH
`RELIEF CAN BE GRANTED
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`
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`In order to withstand a motion to dismiss for failure to state a claim, a plaintiff must allege
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`such facts as would, if proved, establish that (1) the plaintiff has standing to maintain the
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`proceedings, and (2) a valid ground exists for opposing the mark. See Lipton Industries, Inc. v.
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`Ralston Purina Co., 670 F.2d 1024, 1026, 213 USPQ 185, 187 (CCPA 1982). More generally,
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`“[t]o survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as
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`true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009) (internal citation and quotation marks omitted). The pleading must be examined in its
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`entirety, construing the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to
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`determine whether it contains any allegations which, if proved, would entitle plaintiff to the relief
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`5
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`sought. Id. The purpose of a Rule 12(b)(6) motion is to challenge “the legal theory of the
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`complaint, not the sufficiency of any evidence that might be adduced” and “to eliminate actions
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`that are fatally flawed in their legal premises and destined to fail . . . .” Advanced
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`Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 1160, 26 USPQ2d 1038,
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`1041 (Fed. Cir. 1993). However, “[the relevant tribunal is] not bound to accept as true a legal
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`conclusion couched as a factual allegation.” Iqbal, 556 U.S. at 678 (internal citation and
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`quotation marks omitted). “The claimant must allege well-pleaded factual matter and more than
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`‘[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements.’” TBMP, § 503.02 (quoting Iqbal, 556 U.S. at 678).
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`II.
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`THIS BOARD LACKS JURISDICTION TO CONSIDER COPYRIGHT
`INFRINGEMENT AS AN ALLEGED GROUND OF OPPOSITION
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`
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`Opposer alleges copyright infringement as an alleged ground of opposition in this
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`proceeding. See Am. Not. at ¶¶ 6-8. However, as set forth in Carano v. Vina Concha y Toro
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`S.A., “the Board has no jurisdiction to determine copyright infringement.” 67 U.S.P.Q.2d 1149,
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`1151 (T.T.A.B. June 5, 2003). As explained by the panel in Carano,
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`[a]n allegation of copyright infringement alone does not constitute the necessary
`statutory ground which negates the appellant's right to the subject registration.
`Questions of copyright are left to the federal courts as specified in the Copyright
`Act (28 U.S.C. § 1338(a)) or to administrative agencies with specified authority to
`address copyright issues, e.g., the International Trade Commission ([19] U.S.C.
`§ 1337).
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`Id. at 1151 (internal citations omitted). Accordingly, this Board should dismiss Copyright
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`Infringement as an alleged ground of opposition in this proceeding.3
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`3 Opposer makes a passing reference under the heading “Copyright Infringement” to a taking
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`6
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`III. OPPOSER HAS FAILED TO STATE A CLAIM FOR LIKELIHOOD OF
`CONFUSION UNDER § 1052(d) BECAUSE APPLICANT’S FIRST USE DEFEATS
`THIS GROUND AS A MATTER OF LAW BY VIRTUE OF OPPOSER’S
`AMENDMENTS TO PURSUE “INTENT TO USE” APPLICATIONS UNDER 15
`U.S.C. § 1051(b) AND TO DELETE 15 U.S.C. § 1051(a) AS AN ALLEGED FILING
`BASIS
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`A.
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`Opposer Improperly Segregates “Priority” from “Likelihood of Confusion”
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`Opposer appears to have presented “Priority” as an independent ground of opposition in
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`this proceeding. See Am. Not. at ¶¶ 9-12. However, an allegation of “priority” without a direct
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`or hypothetical pleading of likelihood of confusion is insufficient pleading of Trademark Act
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`§ 2(d), 15 U.S.C. § 1052(d). See Intersat Corp. v. International Telecommunications Satellite
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`claim under the 5th Amendment. See Am. Not. at ¶ 6 (“[i]n essence, allowance would be
`tantamount to a taking, under the 5th Amendment . . . .”). To the extent this averment can
`somehow be construed as a claim separate from Opposer’s claim for “Copyright Infringement,”
`Applicant hereby seeks dismissal for lack of jurisdiction. This tribunal lacks jurisdiction to
`consider claims for taking of personal property under the 5th Amendment. Instead,
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`the Court of Federal Claims has exclusive original jurisdiction over any claim
`against the United States founded . . . upon the Constitution” in excess of $10,000.
`28 U.S.C. § 1491(a)(1); see also 28 U.S.C. § 1346(a)(2) (granting district courts
`concurrent jurisdiction over claims against the United States founded upon the
`Constitution not exceeding $10,000 in amount). A Fifth Amendment takings
`claim falls within the Tucker Act's grant of jurisdiction because it is a claim
`against the United States founded upon the Constitution.
`
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`Acceptance Ins. Companies Inc. v. United States, 503 F.3d 1328, 1336 (Fed. Cir. 2007) (quotation
`marks omitted). However, Opposer already filed a complaint alleging, inter alia, claims for
`copyright infringement against the government in the U.S. Court of Federal Claims, and that
`lawsuit was dismissed by the court. See Amos v. United States, No. 16-cv-01094-EJF (Fed. Cl.
`Sept. 1, 2016), ECF No. 1 (Complaint), ECF No. 38 (Fed. Cl. Mar. 10, 2017) (Opinion granting
`motion to dismiss). Opposer’s Appeal to the Federal Circuit in the same matter was dismissed as
`untimely. See Amos v. United States, No. 2017-2036, ECF No. 12 (Fed. Cir. June 28, 2017)
`(order dismissing Appeal). Accordingly, to the extent the content of paragraph 6 in the
`Amended Notice can be considered a constitutional takings claim, it should be dismissed along
`with the proposed claim for copyright infringement as this tribunal lacks jurisdiction to consider
`claims for taking of personal property under the 5th Amendment.
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`Organization, 226 USPQ 154, 156 (T.T.A.B. April 4, 1985) (granting applicant’s motion to
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`dismiss an opposition for failure to state a claim where the opposer merely pled priority of use
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`without any allegation of any likelihood of confusion between the involved marks). In other
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`words, priority is a necessary element of the ground of likelihood of confusion brought under
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`Trademark Act Section 2(d) and is not an independent ground for opposition on its own. See
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`Threshold.TV, Inc. & Blackbelt TV, Inc. v. Metronome Enterprises, Inc., 96 U.S.P.Q.2d 1031,
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`1039 (T.T.A.B. July 27, 2010) (“Because opposer cannot establish its priority, a necessary
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`element of the ground of likelihood of confusion, opposer’s priority and likelihood of confusion
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`claim is dismissed.”). Accordingly, Opposer’s allegations of “priority” in Paragraphs 9-12 must
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`be considered in concert with opposer’s allegations of “confusion” asserted in Paragraphs 13-15
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`of the Amended Notice to pass muster under Trademark Act Section 2(d). Thus, as required by
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`Fed. R. Civ. P. 8(f), the Board should liberally construe the allegations of “priority” in Paragraphs
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`9-12 and “confusion” asserted in Paragraphs 13-15 together as providing a single basis for
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`opposition. Even when taken together, however, Opposer has failed to state a claim of likelihood
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`of confusion under Trademark Act § 2(d) because Opposer cannot establish priority as a matter of
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`law given the dates of first use resulting from his “intent to use” applications under 15 U.S.C. §
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`1051(b).
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`B. Opposer Cannot Establish “Priority” as a Matter of Law
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`To establish priority on a likelihood of confusion claim brought under Trademark Act
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`Section 2(d), a party must prove that, vis-à-vis the other party, it owns “a mark or trade name
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`previously used in the United States … and not abandoned….” 15 U.S.C. § 1052. A party may
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`establish its own prior proprietary rights in a mark through ownership of a prior registration,
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`8
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`actual use, or through use analogous to trademark use, such as use in advertising brochures, trade
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`publications, catalogues, newspaper advertisements and Internet web sites, which create a public
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`awareness of the designation as a trademark identifying the party as a source. See 15 U.S.C.
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`§ 1052(d) and 1127; T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 1376 (Fed. Cir. 1996).
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`As the pleaded basis for priority over Applicant’s mark, Opposer wrote as follows: “The
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`Opposer had filed his JWAHMOSE trademarks 01-18-2016 and 12-07-2015, see Appendix B,
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`nearly a year and a half ago. The Applicant’s ‘mark’ on the other hand has a filing date of 06-23-
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`2016 not quite a year ago, see Appendix C.” Am. Not. at ¶ 11. Appendix B to Opposer’s
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`pleading references two applications for registration, namely Serial Number 86878041, filed
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`January 18, 2016, and Serial Number 86840684, filed December 7, 2015. Am. Not., Appendix
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`B. In each of these applications, following refusal by the PTO, Opposer amended the filing basis
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`to become an “intent to use” applications under 15 U.S.C. § 1051(b) and to delete 15 U.S.C. §
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`1051(a) as an alleged filing basis. See Exhibit A-B, at A2, A7.4
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`This Board has discretion to look to Patent and Trademark Office (Office) records in
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`considering a motion to dismiss under Rule 12(b)(6) to determine if a party’s allegations are well-
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`pleaded. For example, in Compagnie Gervais Danone, 89 U.S.P.Q.2d 1251 (T.T.A.B. Jan. 5,
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`2009), the Board explained that:
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`Despite the requirement that the Board must treat all well-pleaded allegations as
`true, there are facts the Board may consider when a party has filed a motion to
`dismiss under Fed. R. Civ. P. 12(b)(6). For example, the Board may look to such
`facts as the filing date, filing basis, priority date, publication date, and applicant's
`name in an application that is the subject of an opposition proceeding. These are
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`4 Exhibits A and B to this motion comprise copies of Opposer’s Responses to pending Office
`Actions in Serial Numbers 86878041 and 86840684, respectively. “A__” refers to individual
`page numbers in the attached Appendix.
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`9
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`facts not subject to proof, and the Board may look to Office records for such facts
`to determine if a party's allegations are well-pleaded.
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`Id. at 1256. Consistent with this analysis, Office records reflect that Opposer’s two applications,
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`upon which he relies for priority (i.e., Serial Number 86878041, filed January 18, 2016, and Serial
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`Number 86840684, filed December 7, 2015), were refused registration because Opposer could not
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`show use of the marks in commerce. See Serial Number 86878041, Office Action dated March
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`28, 2016; Serial Number 86840684, Office Action dated March 28, 2016. Despite having the
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`opportunity to submit substitute specimens to support a claim for actual use, Opposer instead
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`opted to amend the applications to become “intent to use” applications under 15 U.S.C. § 1051(b)
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`and to delete 15 U.S.C. § 1051(a) as an alleged filing basis. See, e.g., Exhibit A-B, at A2, A7.
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`Each of the Responses is dated April 5, 2016, long before Opposer initiated this proceeding. Id.
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`As a result, and consistent with Compagnie Gervais Danone, Opposer’s amendment to switch to
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`an “intent to use” filing basis under § 1051(b) serves as a conclusive admission that Opposer has
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`not made any use of his marks applied for in Serial Numbers 86878041 and 86840684.
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`Opposer's lack of use is fatal to his claim for priority in that it serves as an admission that he has
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`never made any use of the marks in commerce.
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`
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`As explained above, 15 U.S.C. § 1051(a)(2) required that Applicant’s application provided
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`“the date of the applicant’s first use of the mark in commerce[,]” which was identified as October
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`28, 2015. See Serial Number 87081623, Service Mark application filed June 23, 2016
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`(indicating a “first use in commerce” date of “at least as early as 10/28/2015”). As a result,
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`Applicant’s first use date of October 28, 2015, has priority as a matter of law over Opposer’s
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`applications, for which Opposer merely has a possible, future “intent to use” due to the
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`10
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`amendments Opposer voluntarily presented to the Office on April 5, 2016. See 15 U.S.C.
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`§ 1057(c) (registrant of mark has no priority over person who “has used the mark” or “has filed an
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`application to register the mark which is pending or has resulted in registration of the mark”).
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`In addition, Applicant’s first use date of October 28, 2015, has priority as a matter of law
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`over Opposer because Opposer has not pled a claim or allegation of any analogous use sufficient
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`to tack onto his intent to use “constructive use” date resulting from Opposer’s amendment to
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`switch to an “intent to use” filing basis under § 1051(b). See generally Am. Not. ¶¶ 13-24; see
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`also T.A.B. Sys., 77 F.3d 1372, 1375 (Fed. Cir. 1996) (detailing the requirements for establishing
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`priority by an earlier “analogous use” showing) (“Such an ‘analogous use’ opposition can
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`succeed, however, only where the analogous use is of such a nature and extent as to create public
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`identification of the target term with the opposer's product or service.”). Accordingly, this Board
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`should dismiss the combined allegations of “priority,” see Am. Not. at ¶¶ 6-8, and “confusion,”
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`see Am. Not. at ¶¶ 13-15, as an alleged ground of opposition in this proceeding.
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`IV. OPPOSER HAS FAILED TO STATE A CLAIM FOR DILUTION BECAUSE
`OPPOSER’S PLEADING CONSPICUOUSLY OMITS ANY ALLEGATION THAT
`OPPOSER’S MARKS ARE FAMOUS
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`Opposer alleges Dilution as an alleged ground of opposition in this proceeding. See Am.
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`Not. at ¶¶ 13-15. Pursuant to 15 U.S.C. § 1125(c), “dilution” requires, as a prerequisite, an
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`averment (and later successful proof) that the owner’s mark is “famous.” 15 U.S.C.
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`§ 1125(c)(1). Matters have been dismissed by this Board where a party asserting dilution has
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`failed to allege in a pleading that its mark is famous. See Demon International LC v. Lynch, 86
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`USPQ2d 1058, 1059-60 (T.T.A.B. Feb. 5, 2008) (dilution claim in pleading must include an
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`11
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`allegation that opposer’s mark at issue is famous); Trek Bicycle Corp. v. StyleTrek Ltd., 64
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`USPQ2d 1540, 1542 (T.T.A.B. Dec. 20, 2001) (dilution pleading legally insufficient where
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`opposer failed to allege that its mark became famous before constructive use date of involved
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`intent-to-use application). In this case, Opposer’s pleading conspicuously omits any allegation
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`that Opposer’s marks are famous. See Am. Not. at ¶¶ 13-15. Accordingly, this Board should
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`dismiss Dilution as an alleged ground of opposition in this proceeding.
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`
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`V.
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`OPPOSER HAS FAILED TO STATE A CLAIM FOR DECEPTION BECAUSE
`OPPOSER’S PLEADING CONSPICUOUSLY OMITS ANY ALLEGATIONS
`RELATING TO APPLICANT’S LISTED SERVICES
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`Opposer alleges “[d]eception” as a ground of opposition in this proceeding. See Am.
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`Not. at ¶¶ 16-17. The only conceivable ground of opposition relating to “[d]eception” appears in
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`Section 2(a) of the Lanham Act. That Section bars registration of a mark which: “Consists of or
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`comprises . . . deceptive . . . matter . . . .” 15 U.S.C. § 1052(a). The Federal Circuit has stated
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`the elements of proof for “deception” in the following (3) part test:
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`(1) Is the term misdescriptive of the character, quality, function, composition or
`use of the goods? (2) If so, are prospective purchasers likely to believe that the
`misdescription actually describes the goods? (3) If so, is the misdescription likely
`to affect the decision to purchase?
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`In re Budge Mfg. Co., Inc., 857 F.2d 773, 775 (Fed. Cir. 1988). In this case, Opposer’s pleading
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`conspicuously omits any allegation relating to element (1): the character, quality, function,
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`composition or use of Applicant’s listed services. See Am. Not. at ¶¶ 16-17. Nor does it
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`provide any allegation relating to element (2) concerning whether prospective users/purchasers of
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`Applicant’s services are likely to believe that an alleged misdescription actually describes the
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`Applicant’s listed services. Id. Finally, Opposer’s pleading similarly fails to present any
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`allegation relating to element (3): namely, that the misdescription is likely to affect the decision to
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`purchase Applicant’s good or services. Id. Accordingly, on the face of his pleading, Opposer
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`has plainly failed to allege any of the three elements necessary to support a ground of Deception.
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`Accordingly, this Board should dismiss Deception as an alleged ground of opposition in this
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`proceeding.
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`VI. OPPOSER’S “DIFFERING CLASSIFICATION” STATEMENTS DO NOT STATE
`A CLAIM FOR RELIEF IN SUPPORT OF A VALID GROUND OF OPPOSITION
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`Opposer alleges that “[t]he argument that the marks use differing classification is moot.”
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`See Am. Not. at ¶ 18. To the extent Applicant understands this argument, it appears that Opposer
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`is responding to what Opposer assumes will be one of Applicant’s defenses to an allegation of
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`Confusion in Applicant’s Answer, i.e., that there can be no confusion given that Opposer’s and
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`Applicant’s applications list differing classifications. Because this argument does not support
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`any basis for opposition, it does not preclude dismissal of each and every ground for opposition
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`pled by Plaintiff-Opposer (hereinafter Opposer) in this matter pursuant to Fed. R. Civ. P. 12(b)(1)
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`and 12(b)(6) for all the reasons set forth above in Sections II.-V., supra.
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`For the reasons stated above, Applicant requests that this Board dismiss each and every
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`CONCLUSION
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`ground for opposition pled by Plaintiff-Opposer (hereinafter Opposer) in this matter pursuant to
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`Fed. R. Civ. P. 12(b)(1) and 12(b)(6).
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`July 11, 2017
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`Respectfully submitted,
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`CHAD READLER
`Acting Assistant Attorney General
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`GARY L. HAUSKEN
`Director
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`/David M. Ruddy/*
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`DAVID M. RUDDY
`Attorney
`Commercial Litigation Branch
`Civil Division
`U.S. Department of Justice
`Washington, DC 20530
`Telephone: (202) 353-0517
`Facsimile: (202) 307-0345
`E-Mail: david.ruddy@usdoj.gov
`USPTO Reg. No. 53,945
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`Attorneys for Applicant
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` *
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` Pursuant to 28 U.S.C. § 517 and 37 C.F.R. § 2.119(e), counsel represents that he is an attorney
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`representative who is authorized to sign and file this motion on behalf of Applicant.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing “APPLICANT’S MOTION
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`TO DISMISS FOR LACK OF SUBJECT MATTER JURISDICTION AND FOR FAILURE TO
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`STATE A CLAIM,” (including its accompanying exhibits A-B, have been served on Mr. Carl R.
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`Amos by forwarding said copy on July 11, 2017, via email to: ahmose_inc@hotmail.com.
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`s/ David M. Ruddy
`DAVID M. RUDDY
`Attorney
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`E-mail: david.ruddy@usdoj.gov
`Washington, D.C. 20530
`Telephone: (202) 353-0517
`Facsimile: (202) 307-0345
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`15
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`EXHIBIT A
`EXHIBIT A
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`

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`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
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`OMB No. 0651-0050 (Exp 07/31/2017)
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`Response to Office Action
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`The table below presents the data as entered.
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`Input Field
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`Entered
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`SERIAL NUMBER
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`LAW OFFICE ASSIGNED
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`MARK SECTION
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`MARK FILE NAME
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`LITERAL ELEMENT
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`STANDARD CHARACTERS
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`USPTO-GENERATED IMAGE
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`COLOR(S) CLAIMED
`(If applicable)
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`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
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`86878041
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`LAW OFFICE 108
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`http://tmng-al.uspto.gov/resting2/api/img/86878041/large
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`JWAHMOSE MUSEUM
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`NO
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`NO
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`Color is not claimed as a feature of the mark.
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`The mark consists of the image of a building showing an inverted pyramidal frustum
`shaped façade (on all sides) for at least one additional level stacked above ground
`level represents the copyrighted Architectural Work: VAu 1-225-290, VAu
`1-223-323 and US Patents: 9,128,461 and 5,369,511 The word Jwahmose in all
`capitals or proper name format above, through, around or below the image of the
`building NMAAHC.
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`GOODS AND/OR SERVICES SECTION (current)
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`INTERNATIONAL CLASS
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`DESCRIPTION
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`042
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`Architectural and engineering services; Architectural consultancy; Architectural consultancy services; Architectural consultation; Architectural
`design; Architectural design in the field of solar power production, efficient solar energy use.; Residential building design; Consulting in the
`fields of engineering and architecture; Consulting services in the field of architectural design; Interior design services in the nature of aroma
`consulting services in the selection and use of aromas for hotels, casinos, resorts, conference facilities, retail stores, sports and fitness centers,
`spas, health care facilities, residential buildings and private residences; Lighting design and technology specification services pertaining to
`permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; Lighting design and technology
`specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications;
`Providing a web site featuring temporary use of non-downloadable software allowing web site users to upload, post and display online videos
`for sharing with others for entertainment purposes; Providing a website featuring information about green architecture, interior design,
`sustainable community planning and infrastructure development; Providing a website featuring information in the field of architectural design;
`Providing a website featuring information in the field of interior design and architecture for use by interior designers and architects; Providing
`a website featuring information in the field of interior design and architecture for use by interior designers and architects; Providing design
`services for others in the field of theme parks, museums, and miniature golf courses
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`FILING BASIS
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`Section 1(a)
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`        FIRST USE ANYWHERE DATE
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`At least as early as 08/21/1991
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`        FIRST USE IN COMMERCE DATE
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`At least as early as 11/29/1994
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`GOODS AND/OR SERVICES SECTION (proposed)
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`INTERNATIONAL CLASS
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`DESCRIPTION
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`042
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`Architectural and engineering services; Architectural consultancy; Architectural consultancy services; Architectural consultation; Architectural
`design; Architectural design in the field of solar power production, efficient solar energy use.; Residential building design; Consulting in the
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`Applicant's Exhibit A
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`Opposition No. 91234318
`Amos v. Smithsonian
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`A1
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`

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`fields of engineering and architecture; Consulting services in the field of architectural design; Interior design services in the nature of aroma
`consulting services in the selection and use of aromas for hotels, casinos, resorts, conference facilities, retail stores, sports and fitness centers,
`spas, health care facilities, residential buildings and private residences; Lighting design and technology specification services pertaining to
`permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; Lighting design and technology
`specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications;
`Providing a web site featuring temporary use of non-downloadable software allowing web site users to upload, post and display online videos
`for sharing with others for entertainment purposes; Providing a website featuring i