Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA878134
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`Filing date:
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`02/19/2018
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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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`91238857
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`Party
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`Correspondence
`Address
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`Defendant
`Unique Casting Partners, LLC
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`RUBEN ALCOBA
`ALCOBA KHULLAR
`3399 NW 72ND AVE STE 211
`MIAMI, FL 33122-1343
`UNITED STATES
`Email: alcoba@miamipatents.com, jalcoba@miamipatents.com
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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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`Attachments
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`Motion to Dismiss - Rule 12(b)
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`Juliet Alcoba
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`jalcoba@miamipatents.com
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`/Juliet Alcoba/
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`02/19/2018
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`Grafas Motion to Dismiss 02.19.18.pdf(715886 bytes )
`ttabvue-92056074-CAN-29.pdf(71797 bytes )
`ttabvue-92056074-CAN-18.pdf(32738 bytes )
`ttabvue-92056074-CAN-103.pdf(425181 bytes )
`ttabvue-92056074-CAN-104.pdf(16886 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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`Kathleen Duncan
`Petitioner
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`v.
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`Unique Casting Partners, LLC
`Respondent
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`Honorable Commissioner for Trademarks
`PO Box 1451
`Alexandria, VA 22313-1451
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`Opposition No. 91238857
`For the Mark UNIQUE CASTING
`Serial No. 85760984
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`PETITIONER’S MOTION TO DISMISS OR IN THE ALTERNATIVE, MOTION TO
`DISMISS FOR FAILURE TO STATE A CLAIM.
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`
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`Pursuant to Sections 37 CFR 2.126 of the Trademark Trial and Appeal Board Manual of
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`Procedure (TMBP), Federal Rules of Civil Procedure 12(b)(6) and 8(a), Respondent, UNIQUE
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`CASTING PARTNERS, hereby moves the Trademark Trial and Appeal Board (hereinafter
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`“Board”) to dismiss the opposition filed January 10, 2018, and in support thereof state as
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`follows:
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`1. Petitioner served its Opposition on Respondent January 10, 2018 regurgitating the same
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`theories alleged in its response to Cancellation Proceeding No. 920560741.
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`1 Petitioner in that earlier filed proceeding was the Respondent seeking to defend ownership rights to Reg. No.
`3865864.
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`1
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`2. Proceeding No. 92056074 proceeded all the way to trial and Interlocutory Attorney
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`Elizabeth Dunn made a decision as to the ownership of the contested UNIQUE
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`CASTING Reg. No. 3865864.
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`3. The time frame to appeal the decision rendered in the earlier proceeding has expired.
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`4. Reg. No. 3865864 for UNIQUE CASTING has been cancelled.
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`5. This proceeding involves the same parties.
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`6. The same claims were discussed specifically, ownership of the mark, priority and
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`likelihood of confusion under Section 2(d) of the Lanham Act, and Fraud.
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`7. The remaining theories identified are based upon the same set of operative facts existing
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`at the time the cancellation proceeding was pending before the Trademark Trial and
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`Appeal Board.
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`8. This proceeding is being initiated to harass Respondent and prevent the current UNIQUE
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`CASTING application from being issued a Notice of Allowance.
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`9. The earlier proceeding spanned a five year period where Petitioner submitted frivolous
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`and baseless documents to torment Respondent.
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`10. The opposition filed by Petitioner is long on innuendo and conclusory allegations that
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`have no bearing on the claims being alleged.
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`11. There are virtually no factual allegations to support Petitioner’s allegations.
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`12. Petitioner accuses the Patent and Trademark Office of conspiracy in Paragraphs 16- 19.
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`13. Petitioner identifies and incorporates the Board’s previous findings in the opposition in
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`Paragraph 29.
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`14. The allegations contained in the opposition proceeding filed on its face reveals the
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`existence of the defense of res judicata.
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`2
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`15. Petitioner has failed to meet the pleading requirements of the Federal Rules of Civil
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`Procedure.
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`Memorandum of Law
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`I.
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`The Opposition filed must be dismissed because the allegations made by
`Petitioner mentioning the earlier filed and decided cancellation proceeding
`relating to UNIQUE CASTING Reg. No. 92056074 demonstrates the existence of
`res judicata.
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`To survive a motion to dismiss, a plaintiff must plead sufficient facts to “state a claim to
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`relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007).
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`“A claim has facial plausibility when the plaintiff pleads factual content that allows the court to
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`draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft
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`v. Iqbal, 129 S. Ct. 1937, 1949 (2009). The Court must first identify and disregard conclusory
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`allegations “that are not entitled to the presumption of truth.” Id. at 1951; see also Bell Atlantic
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`Corp., 550 U.S. at 555 (pleading “requires more than labels and conclusions”). Once those are
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`excluded, the Court must assess whether any “well pleaded facts give rise to a plausible
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`inference” of illegality. Iqbal, 127 S.Ct. at 1952. Petitioner has failed to plead any specific
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`factual allegations that would support any of their claims for relief. The Complaint is long on
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`innuendo and conclusory allegations of undefined wrongdoing.2 But, more importantly,
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`Petitioner highlights the Board has already rendered a decision with regards to ownership of the
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`UNIQUE CASTING trademark.
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`The reference to the earlier proceeding brings to light the existence of the affirmative
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`defense of res judicata. “[T]he issue of res judicata is an affirmative defense, and affirmative
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`2 The corporation is in existence and is rendering casting services.
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`3
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`defenses cannot be raised in a motion to dismiss unless the allegations of a prior pleading in the
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`case demonstrate its existence.” City of Clearwater v. United States Steel Corp., 469 So.2d 915,
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`916 (Fla. 2d DCA 1985). This being the case, Respondent respectfully requests the Board take
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`judicial notice of Cancellation Proceeding No. 92056074 to expedite the dismissal of this action
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`and preserve the resources of the Board for matters that are not precluded from the Board’s
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`consideration. The record of the previous proceeding is extensive and there is no reason to doubt
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`the quality, extensiveness, or fairness of the procedures followed in the earlier Cancellation
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`Proceeding.
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`Once a court has decided an issue, it is “forever settled as between the parties,” Baldwin
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`v. Iowa State Traveling Men's Assn., 283 U.S. 522, 525, 51 S.Ct. 517, 75 L.Ed. 1244 (1931),
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`thereby “protect[ing]” against “the expense and vexation attending multiple lawsuits,
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`conserv[ing] judicial resources, and foster[ing] reliance on judicial action by minimizing the
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`possibility of inconsistent verdicts,” *1303 Montana v. United States, 440 U.S. 147, 153–154, 99
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`S.Ct. 970, 59 L.Ed.2d 210 (1979). In short, “a losing litigant deserves no rematch after a defeat
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`fairly suffered.” Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U.S. 104, 107, 111 S.Ct. 2166,
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`115 L.Ed.2d 96 (1991). The Board should follow the position adopted by the Supreme Court in
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`B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct. 1293, 1303 (U.S.,2015) which
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`supports the longstanding view that ‘[w]hen an administrative agency is acting in a judicial
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`capacity and resolves disputed issues of fact properly before it which the parties have had an
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`adequate opportunity to litigate, the courts do not hesitate to apply res judicata to enforce
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`repose.’ ” University of Tenn. v. Elliott, 478 U.S. 788, 797–798, 106 S.Ct. 3220, 92 L.Ed.2d 635
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`(1986) (quoting United States v. Utah Constr. & Mining Co., 384 U.S. 394, 422, 86 S.Ct. 1545,
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`16 L.Ed.2d 642 (1966)); see also Hayfield Northern R. Co. v. Chicago & North Western Transp.
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`4
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`Co., 467 U.S. 622, 636, n. 15, 104 S.Ct. 2610, 81 L.Ed.2d 527 (1984) (noting Utah Construction
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`); Kremer v. Chemical Constr. Corp., 456 U.S. 461, 484–485, n. 26, 102 S.Ct. 1883, 72 L.Ed.2d
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`262 (1982) (characterizing Utah Construction 's discussion of administrative preclusion as a
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`holding).
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`Petitioner had an opportunity to appeal the decision rendered in Cancellation Proceeding
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`No. 92056074. Petitioner did not appeal the judgment. Petitioner’s failure to pursue an appeal
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`does not undermine the judgment’s preclusive effect. Res judicata, or claim preclusion, bars the
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`filing of a claim that was raised or could have been raised in prior litigation where (1) there is a
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`final judgment on the merits; (2) rendered by a court of competent jurisdiction; (3) that involved
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`the same parties or individuals in privity with them; and (4) involved the same cause of action.
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`See Soro v. Citigroup, 287 Fed.Appx. 57, 59, 2008 WL 2640440, at *2 (C.A.11 (Fla.),2008)
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`quoting Ragsdale v. Rubbermaid, Inc., 193 F.3d 1235, 1238-39 (11th Cir.1999). “[T]he principal
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`test for determining whether the causes of action are the same is whether the primary right and
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`duty are the same in each case. Id. In determining whether the causes of actions are the same, a
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`court must compare the substance of the actions, not their form. Id. It is now said, in general, that
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`if a case arises out of the same nucleus of operative fact, or is based upon the same factual
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`predicate, as a former action, that the two cases are really the same ‘claim’ or ‘cause of action’
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`for purposes of res judicata.” Id. at 1239 (internal quotation marks and citation omitted).
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`The majority of the causes of actions were before the Board in the earlier cancellation
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`proceeding. Even if the Board determines there are issues that were not before the Board in the
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`earlier proceeding, the concerns being raised by now Petitioner could have been brought forth
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`and are still precluded from being heard because they are based upon the same operative facts
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`alleged in the earlier preceding. Moreover, Petitioner seeks to challenge the authenticity of the
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`5
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`documents and testimony relied upon in the earlier cancellation proceeding. The time has come
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`and passed to object. This alone supports granting Respondent’s Motion to Dismiss.
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`II.
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`Petitioner has failed to plead any specific factual allegations that would support
`its claims for relief requiring dismissal for failing to satisfy the threshold
`pleading requirements by law.
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`Respondent’s counsel is left to guess which facts support the claims being made against
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`Respondent. Rule 8(a)(2) of the Federal Rules of Civil Procedure provides that “[a] pleading that
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`states a claim for relief must contain…a short and plain statement of the claim showing that the
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`pleader is entitled to the relief. If a plaintiff fails to adhere to this requirement, the claim may be
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`challenged by the defendant via a motion to dismiss for failure to state a claim upon which relief
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`can be granted pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. None of the
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`counts have been pled. The counts have merely been identified on the ETTSA coversheet. For
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`this reason, they should be dismissed for failure to state a claim upon which relief can be
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`granted.
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`A. Immoral or scandalous matter under Section 2(a) of the Lanham Act.
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`B. Deceptiveness under Section 2(a) of the Lanham Act.
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`C. False suggestion of a connection under Section 2(a) of the Lanham Act.
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`D. Likelihood of confusion under Section 2(d) of the Lanham Act.
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`E. Dilution by blurring under Sections 2 and 43(c ) of the Lanham Act.
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`F. Dilution by tarnishment under Sections 2 and43(c ) of the Lanham Act.
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`G. Ownership of the mark under Section 1(a) of the Lanham Act.
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`H. False suggestion of a connection with persons, living or dead, institutions, and beliefs,
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`national symbols, or brings them into contempt or disrepute under Section 2(a).
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`I. Fraud on the USPTO.
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`6
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`

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`Petitioner repeats various conclusory allegations in the Opposition filed and discounts the
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`elements that need to be alleged for each purported cause of action. Petitioner’s nonsensical
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`ramblings include asserting Respondent hacked into her business and personal email
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`accounts3, previous USPTO Director’s alleged conspiracy against her, Respondent’s
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`employee’s cell phone usage4, and Respondent’s alleged attempt to steal a gym business
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`from a woman in Brazil5. The connection of all this to the UNIQUE CASTING trademark
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`application remains unclear. It is impossible for Respondent to respond to the counts
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`identified above as A-I for Petitioner has failed to plead factual content that would allow the
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`Board to draw reasonable inferences that the Respondent is responsible for the misconduct
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`alleged. For this reason, they must be dismissed.
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`CONCLUSION
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`Respondent respectfully requests that the Board dismiss the proceeding on the grounds of
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`res judicata and or failure to state a claim upon which relief can be granted. The opposition filed
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`by Petitioner affirmatively and clearly shows the applicability of res judicata which bars this
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`action. Moreover, Petitioner has failed to plead factual content that would allow the Board to
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`draw reasonable inferences that the Respondent is responsible for the misconduct herein alleged.
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`These fatal deficiencies cannot be cured. Respondent further requests that the Board take
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`judicial notice of Cancellation Proceeding No. 92056074 and that the Board order Petitioner to
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`obtain legal counsel to avoid prolonging this matter unnecessarily. For all the foregoing reasons,
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`3 Paragraphs 11, 13, 14, 15, 29, TTABVUE 1.
`4 Paragraph 30, TTABVUE 1.
`5 Paragraph 24, TTABVUE 1.
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`7
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`Respondent’s Motion to Dismiss should be granted and the purported Counts listed should be
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`dismissed with prejudice.
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`Dated: February 19, 2018
`Submitted,
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`Respectfully
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`/s/Juliet Alcoba
`Juliet Alcoba
`Florida Bar 95502
`Alcoba Law Group, P.A.
`3399 NW 72 Avenue, #211
`Miami, FL 33122
`305.362.8118
`305.436.7429
`jalcoba@miamipatents.com
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`/s/Ruben Alcoba
`Ruben Alcoba
`Florida Bar 169160
`alcoba@miamipatents.com
`Attorneys for Respondent
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`8
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`CERTIFICATE OF TRANSMISSION
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`I, Juliet Alcoba, hereby certify that the foregoing Motion is being electronically transmitted via
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`the Electronic System for Trademark Trials and Appeals (“ESTTA”) at http://estta.uspto.gov/
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`and served upon Respondent by email: tessupsto@yahoo.com and brassballsus@outlook.com
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`By: /Juliet Alcoba, Esq./
`Juliet Alcoba, Esq.
`Representing the Respondent
`Florida Bar No. 95502
`3399 NW 72nd Avenue, Suite 211
`Miami, FL 33122
`Tel: (305) 362- 8118
`Facsimile: (305) 436 -7429
`jalcoba@miamipatents.com
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`9
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`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: May 2, 2014
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`DUNN
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`Cancellation No. 92056074
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`Unique Casting Partners LLC
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`v.
`Kathleen Duncan dba Unique Casting
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`
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`By the Trademark Trial and Appeal Board:
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`This case comes up on the motion of respondent, acting pro se, to
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`dismiss the amended petition to cancel for failure to state a claim upon which
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`relief can be granted. The motion is contested.
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`The amended petition to cancel was filed May 28, 2013 in response to
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`the Board’s May 14, 2013 order granting the motion to dismiss the original
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`petition to cancel to cancel Registration No. 3865864, which issued October
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`19, 2010 for the mark UNIQUE CASTING for “wearable garments and
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`clothing, namely, shirts” and “employment services in the nature of talent
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`casting in the fields of music, video, and films.” The amended petition to
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`cancel alleges in pertinent part:
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`1. Petitioner seeks to register the same trademark currently
`registered by Registrant for the same services being offered by
`Registrant under the mark which will result in confusion if
`Registrant’s mark is not cancelled because both Registrant and
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`

`

`Cancellation No. 92056074
`
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`Petitioner would offer their services in the same trade channels
`and the same geographic areas.
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`2. Petitioner is the owner of the mark “UNIQUE CASTING”,
`subject of pending Application Serial No. 85760984, filed
`October 23, 2012 under the basis of intent to use for
`International Class 35 Employment services in the nature of
`talent casting in the fields of music, video, and films.
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` …
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`
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`7. On information and belief, Duncan did not assist in the
`casting of any of the motion pictures relied upon in the specimen
`submitted consisting of the IMDB screenshot to demonstrate use
`in commerce in August 10, 2010 nor in September 7, 2010. See
`Exhibit “F”.
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`8. Upon information and belief, as reflected by documents filed
`to the United States Patent and Trademark Office August 10,
`2010, Duncan and Arenas submitted sham proof that the mark
`was being used in commerce, specifically they submitted a photo
`shopped t-shirt in order with the specific intent to deceive the
`USPTO so that their application could be approved and
`eventually be issued a federal registration. See Exhibit “F”.
`Registrant knowingly made false material representations
`regarding use to procure a registration.
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`MOTION TO DISMISS AMENDED PETITION TO CANCEL DENIED
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`In order to withstand a motion to dismiss, petitioner need only allege
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`such facts which, if proved, would establish that petitioner is entitled to the
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`relief sought; that is, (1) petitioner has standing to bring the proceeding, and
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`(2) a valid statutory ground exists for cancelling the registration. Fair Indigo
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`LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). Specifically,
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`“a complaint must contain sufficient factual matter, accepted as true, to ‘state
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`a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662,
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`2
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`

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`Cancellation No. 92056074
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`129 S. Ct. 1937, 1949 (2009), quoting Bell Atlantic Corp. v. Twombly, 550
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`U.S. 544, 570 (2007).
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`A motion to dismiss for failure to state a claim upon which relief can be
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`granted is a test solely of the legal sufficiency of a complaint. Therefore, a
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`plaintiff served with a motion to dismiss for failure to state a claim upon
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`which relief can be granted need not, and should not respond by submitting
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`proofs in support of its complaint. Whether a plaintiff can actually prove its
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`allegations is a matter to be determined not upon motion to dismiss, but
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`rather at final hearing or upon summary judgment, after the parties have
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`had an opportunity to submit evidence in support of their respective
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`positions. Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc.,
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`988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993). The exhibits
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`submitted with the amended petition to cancel will be given no consideration.
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`See Trademark Rule 2.122(c).
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`An allegation of a plaintiff’s ownership of an application based on a
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`bona fide intent to use, when coupled with an allegation of a reasonable basis
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`(such as a belief of likelihood of confusion that is not wholly without merit)
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`for plaintiff’s belief that it would be damaged by the registration sought to be
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`cancelled, is a legally sufficient pleading of standing. Hartwell Co. v. Shane,
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`17 USPQ2d 1569, 1570 (TTAB 1990). Fraud in procuring a trademark
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`registration or renewal occurs when an applicant knowingly makes false,
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`3
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`

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`Cancellation No. 92056074
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`material representations of fact in connection with his application. In re Bose
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`Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009).
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`The allegations from the amended petition to cancel which are quoted
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`above, in conjunction with the petition to cancel taken as a whole, are
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`sufficient to plead petitioner’s standing and a claim of fraud based on
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`respondent’s failure to use the mark in commerce with the goods and services
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`listed in the registration at the time the statement of use was filed. Contrary
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`to respondent’s unsupported argument, the petition to cancel is not untimely.
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`Accordingly, respondent’s motion to dismiss the amended petition to cancel is
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`DENIED.
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`The amended petition to cancel is accepted as the operative pleading.
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`Both parties are advised that the filings in connection with the
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`amended petition to cancel wander from the point, and that the Board will
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`not allow this case to be delayed by matters extraneous to the pleaded claims
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`and defenses. Petitioner is advised that its fraud claim alleges no trademark
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`use on August 10, 2010 when the statement of use was filed. It is not clear
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`why petitioner includes allegations regarding changes in ownership of the
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`registration which occurred after (and were recorded after) the relevant date.
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`As noted in the Board’s May 14, 2013 order, there is no separate fraud claim
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`based on alleged improprieties associated with recordation of an assignment,
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`because such recordation is not material to procuring or maintaining the
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`registration. Respondent is advised that her allegations of priority of use and
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`4
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`

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`Cancellation No. 92056074
`
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`cybersquatting by petitioner are irrelevant to the pleaded claim of fraudulent
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`procurement of the registration.
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`
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`Bothe parties are urged to consult the Trademark Trial and Appeal
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`Board Manual of Procedure (TBMP) (3rd ed. 2013) as well as the Trademark
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`Rules of Practice, and respondent is encouraged to obtain legal
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`representation. Strict compliance with the Trademark Rules of Practice and,
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`where applicable, the Federal Rules of Civil Procedure, is expected of all
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`parties before the Board, whether or not they are represented by counsel.
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`McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d
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`1212, 1212 n.2 (TTAB 2006).
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`ANSWER TO AMENDED PETITION TO CANCEL
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`Within thirty days of the mailing date of this order, respondent must
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`file an answer to the petition to cancel which complies with Rule 8(b) of the
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`Federal Rules of Civil Procedure, made applicable to this proceeding by
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`Trademark Rule 2.116(a). Fed. R. Civ. P. 8(b) provides, in part:
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`A party shall state in short and plain terms the
`party's defenses to each claim asserted and shall
`admit or deny the averments upon which the
`adverse party relies. If a party is without
`knowledge or information sufficient to form a belief
`as to the truth of an averment, the party shall so
`state and this has the effect of a denial. Denials
`shall fairly meet the substance of the averments
`denied. When a pleader intends in good faith to
`deny only a part or a qualification of an averment,
`the pleader shall specify so much of it as is true and
`material and shall deny only the remainder.
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`5
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`

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`Cancellation No. 92056074
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`The petition to cancel herein consists of twenty-one paragraphs setting
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`forth the basis of the claim of damage. In accordance with Fed. R. Civ. P. 8(b)
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`it is incumbent on respondent to answer the petition to cancel by admitting
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`or denying the allegations contained in each paragraph. If respondent is
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`without sufficient knowledge or information on which to form a belief as to
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`the truth of any one of the allegations, it should so state and this will have
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`the effect of a denial.
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`Proceedings herein are resumed. As stated, respondent is allowed
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`until THIRTY DAYS from the mailing date of this order to file an answer to
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`the petition to cancel. Dates are reset below.
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`Deadline for Discovery Conference
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`Discovery Opens
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`Initial Disclosures Due
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`Expert Disclosures Due
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`Discovery Closes
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`Plaintiff's Pretrial Disclosures
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`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial Disclosures
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`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal Disclosures
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`Plaintiff's 15-day Rebuttal Period
`Ends
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`
`
`7/1/2014
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`7/1/2014
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`7/31/2014
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`11/28/2014
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`12/28/2014
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`2/11/2015
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`3/28/2015
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`4/12/2015
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`5/27/2015
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`6/11/2015
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`7/11/2015
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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
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`days after completion of the taking of testimony. Trademark Rule 2.l25.
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`Cancellation No. 92056074
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
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`(b). An oral hearing will be set only upon request filed as provided by
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`Trademark Rule 2.l29.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Goodman
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`Mailed: May 14, 2013
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`Cancellation No. 92056074
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`Unique Casting Partners LLC
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`v.
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`Kathleen Duncan dba Unique
`Casting
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`By the Trademark Trial and Appeal Board:
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`This case now comes up on respondent’s motion, filed
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`December 27, 2012, to dismiss under Fed. R. Civ. P.
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`12(b)(6). The motion is fully briefed.1
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`The Board has considered the parties’ submissions and
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`presumes the parties’ familiarity with the factual bases for
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`the motion, and does not recount them here.
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`Respondent’s motion to dismiss references matters
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`outside the pleadings and includes exhibits. Because
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`initial disclosures have not been served, the Board will
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`consider the motion as one to dismiss, not one for summary
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`1 Respondent has filed an opposition (19 pages), docket entry #13
`and a memorandum in opposition (14 pages), docket entry nos. 14
`and 15 which the Board considers to be reply papers. The Board
`has not considered these filings either combined or separately as
`these filings exceed the page limits for a reply brief (10 pages)
`under Trademark Rule 2.127(a). See Saint-Gobain Corp. v.
`Minnesota Mining and Manufacturing Co., 66 USPQ2d 1220 (TTAB
`2003) (brief which exceeded page limits of Trademark Rule
`2.127(a) not considered).
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`

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`Cancellation No. 92056074
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`judgment. Compagnie Gervais Danone v. Precision
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`Formulations LLC, 89 USPQ2d 1251, 1256 (TTAB 2009) (“if a
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`motion to dismiss is filed that references matters outside
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`the pleadings, the Board may exclude from consideration the
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`matters outside the pleadings and may consider the motion
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`for whatever merits it may present as a motion to dismiss”).
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`At the motion to dismiss stage, the Board does not
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`consider the merits of petitioner’s standing or its claims,
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`but only considers whether the pleading is sufficient to
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`state a claim to relief that is plausible on its face. Bell
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`Atl. Corp. v Twombly, 550 U.S. 544, 570 (2007); Libertyville
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`Saddle Shop Inc. v. E. Jeffries & Sons, Ltd., 22 USPQ2d
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`1594, 1597 (TTAB 1992) (“A motion to dismiss does not
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`involve a determination of the merits of the case”).
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`Accordingly, the Board has not considered the multitude of
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`arguments on the merits that both parties have made in
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`considering the motion to dismiss.
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`In order to survive respondent’s motion to dismiss for
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`failure to state a claim under Fed. R. Civ. P. 12(b)(6),
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`petitioner’s complaint must allege facts which would, if
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`proved, establish that: (1) petitioner has standing to
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`maintain the proceeding; and (2) there is a valid ground for
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`cancelling the Registration. Young v. AGB Corp., 152 F.3d
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`1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); TBMP § 503.02
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`(3d ed. rev. 2012). The complaint must provide “sufficient
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` 2
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`Cancellation No. 92056074
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`factual matter, accepted as true, to ‘state a claim to
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`relief that is plausible on its face.’” Ashcroft v. Iqbal,
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`556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v.
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`Twombly, 550 U.S. 544, 570 (2007)). For purposes of a
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`motion to dismiss, all of petitioner’s well-pleaded
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`allegations in the petition for cancellation must be
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`accepted as true and the complaint must be construed in a
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`light most favorable to petitioner. See Advanced
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`Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988
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`F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993).
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`Standing
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`With respect to the question of standing, all that is
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`required is that petitioner have a “real interest” in the
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`cancellation proceeding. Int'l Order of Job's Daughters v.
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`Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed.
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`Cir. 1984).
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`Although the ESTTA coversheet identifies the grounds of
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`fraud, Section 2(a) immoral or scandalous matter, Section
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`2(a) deceptiveness, Section 2(a) false suggestion of a
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`connection and Section 2(d) priority and likelihood of
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`confusion, the only ground that has been pleaded in the
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`petition to cancel is fraud.2
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`2 Petitioner’s response in the motion to dismiss addresses only
`the sufficiency of standing and the fraud ground, which the Board
`considers as a concession that no other grounds have been alleged
`in the petition to cancel.
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` 3
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`Cancellation No. 92056074
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`To allege standing based on fraud, petitioner is
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`required to allege that it is using the same or similar mark
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`on the same or similar goods or services, along with a
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`direct or hypothetical pleading of confusion in trade. See
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`Yard-Man, Inc. v. Getz Exterminators, Inc., 157 USPQ 100
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`(TTAB 1968).
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`As to standing, petitioner points to its allegations in
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`paragraphs 14-16 of the petition to cancel wherein it was
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`alleged that the Unique Casting trademark was pledged as
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`collateral by Ed Arenas and Mr. Arenas defaulted on the
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`loan. However, these allegations are not sufficient to
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`assert standing with respect to a claim of fraud.3
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`Petitioner’s allegations of damage in paragraph 23 that it
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`has been harassed by respondent and that respondent has
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`posted slanderous and defamatory comments about Unique
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`Casting Partners LLC, George Grafas, and his affiliates are
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`insufficient to allege standing based on fraud.
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`Accordingly, the Board finds that petitioner has failed
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`to sufficiently allege standing in the petition to cancel.
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`Accordingly, respondent’s motion to dismiss is granted with
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`respect to standing.
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`3 Although petitioner argues in its response that a real interest
`can be established if a party has been denied registration of its
`mark based on likelihood of confusion, no such allegations have
`been pleaded in the petition to cancel. Petitioner also argues
`that petitioner “uses and sought to use the mark UNIQUE CASTING
`since at least as early as March 2011”; however, this allegation
`is not specifically pleaded in the petition to cancel.
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` 4
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`Cancellation No. 92056074
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`Grounds for Opposition
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`Section 2(a) immoral or scandalous matter, Section 2(a)
`deceptiveness, Section 2(a) false suggestion of a
`connection; Section 2(d) priority and likelihood of
`confusion
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`Although these grounds are identified in the ESTTA
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`coversheet, these grounds are not alleged in the petition to
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`cancel. Accordingly, respondent’s motion to dismiss is
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`granted to the extent that all Section 2(a) and 2(d) grounds
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`are stricken from the ESTTA coversheet and deemed dismissed.
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`Fraud
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`Fed. R. Civ. P. 9(b) provides that the circumstances
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`constituting the alleged fraud shall be stated with
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`particularity. See also King Automotive, Inc. v. Speedy
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`Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801 (CCPA 1981)
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`(“[t]he pleadings [must] contain explicit rather than
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`implied expressions of the circumstances constituting
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`fraud”). Intent to deceive the Office, whether to procure
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`or maintain a registration is an indispensable element of
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`the analysis in a fraud case. In re Bose Corp., 580 F.3d
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`1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). “The preferred
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`practice for a party alleging fraud in a Board opposition or
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`cancellation proceeding is to specifically allege the
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`adverse party's intent to deceive the U.S. Patent and
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`Trademark Office (USPTO), so that there is no question that
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`this indispensable element has been pled.” DaimlerChrysler
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` 5
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`Cancellation No. 92056074
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`Corp. v. American Motors Corp., 94 USPQ2d 1086, 1089 (TTAB
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`2010).
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`Thus, to assert a viable claim of fraud, the plaintiff
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`must allege with particularity, rather than by implied
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`expression, that the defending party knowingly made a false,
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`material representation in the procurement of or renewal of
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`a registration with the intent to deceive the USPTO and the
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`circumstances must be stated with particularity. In re Bose
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`Corp., 91 USPQ2d at 1942; Enbridge Inc. v. Excelerate Energy
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`LP, 92 USPQ2d 1537 (TTAB 2009).
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`Petitioner has asserted multiple bases for its fraud
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`claim.
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`1. Dates of Use in the