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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
`General Email: TTABInfo@uspto.gov
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`November 26, 2018
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`Opposition No. 91239816
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`Kiss Catalog, Ltd.
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`v.
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`Watson Design, LLC
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`By the Trademark Trial and Appeal Board:
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`This case comes up for consideration of Applicant’s May 8, 2018 response to notice
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`of default and Applicant’s May 11, 2018 motion, which the Board construes as moving
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`to dismiss the notice of opposition for failure to state a claim for relief, for inadequate
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`factual support for the pleaded claims.1 Opposer filed a responsive brief opposing
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`Applicant’s motion2, and no reply was filed.
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`1. Background
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`Applicant is the owner of Serial No. 87507551 for the mark KISS (in standard
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`character form) for consulting services in the field of photography; consulting services
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`in the field of the exhibition of photography; production services in the fields of
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`1 This filing also includes Applicant’s answer. From this point forward, Applicant is ordered
`to make separate filings for Applicant’s required responses to Board orders and Applicant’s
`own requests for Board action.
`2 Opposer’s May 16, 2018 consented motion for an extension of time to file Opposer’s response
`to Applicant’s motion to dismiss is granted. Trademark Rule 2.127(a).
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`Opposition No. 91239816
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`photography, film and video; providing facilities and equipment for photography, film
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`and video; photography, namely, digital imaging services; photographic computer
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`imaging; location scouting services for entertainment purposes; location scouting
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`services for photography, film and video productions consulting, in International
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`Class 41. The application is based on an allegation of Applicant’s intent to use the
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`mark.
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`Opposer is the owner of Registration Nos. 1155932 and 1055765 for the mark
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`KISS (in standard character and stylized formats, respectively) for musical
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`entertainment services rendered by a group in International Class 41; and
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`Registration Nos. 4009074 and 4005970 for the mark KISS (in standard character
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`and stylized formats, respectively) for sound recordings featuring music; sound and
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`video recordings featuring music and musical performances in International Class 9.
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`These registrations issued on May 26, 1981, January 4, 1977, August 9, 2011, and
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`August 2, 2011, respectively. Opposer further alleges common law rights to the mark
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`KISS for a variety of goods and services prior to Applicant’s constructive use date.
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`Opposer seeks to prevent the registration of Applicant’s application on the
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`following grounds: (1) priority and a likelihood of confusion; (2) dilution by blurring;
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`(3) dilution by tarnishment; and (4) false suggestion of a connection. See 1 TTABVUE.
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`Under the deadline set forth in the institution order, Applicant’s answer was due
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`on April 11, 2018. No answer or request to extend the time period was filed by that
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`date and a notice of default issued on April 21, 2018, providing Applicant 30 days to
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`show cause why default judgment should not be entered against it.
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`2
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`Opposition No. 91239816
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`2. Notice of Default Set Aside
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`The Board applies the good cause standard set forth in Fed. R. Civ. P. 55(c) to
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`determine whether default judgment should entered against a defendant. Fred
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`Hayman Beverly Hills, Inc. v. Jacques Bernier, Inc., 21 USPQ2d 1556, 1557 (TTAB
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`1991). 3 Good cause is established when it is shown that: (1) the late filing was not
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`the result of willful conduct or gross neglect; (2) acceptance of the late answer would
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`not prejudice Opposer; and (3) Applicant has a meritorious defense to the action. Id.
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`The determination of whether default judgment should be entered against a party
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`lies within the sound discretion of the Board. See, e.g., Identicon Corp. v. Williams,
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`195 USPQ 447, 449 (Comm’r 1997); see also Trademark Trial and Appeal Board
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`Manual of Procedure (TBMP) § 312.02 (2018).4
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`On May 8, 2018, Applicant filed a “motion for extension of time to answer by
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`stipulation” attaching two email messages from Opposer. The April 6, 2018 message
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`consents to a 30 day extension of Applicant’s time to answer, and the April 25, 2018
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`message states that if Applicant wishes to seek to reopen its time to answer, Opposer
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`will honor the agreement.
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`3 Applicant’s May 8, 2018, submission need only meet the standard of good cause because the
`deadline which passed was the time to answer. See TBMP § 509.01. If the expired time period
`had required other action (e.g., a response to a motion or to take discovery), then the stricter
`standard of excusable neglect would have been applied. Fed. R. Civ. P. 6(b), see also TBMP §
`509.01.
`4 The TBMP provides stakeholders with basic information generally useful for litigating trial
`cases before the Trademark Trial and Appeal Board, describes current practice and procedure
`under the applicable authority, and incorporates amendments to the Trademark Rules of
`Practice, Trademark Act and Federal Rules, and updates in case law, where applicable.
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`3
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`Opposition No. 91239816
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`Because Applicant failed to file the stipulation before the expiration of the
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`original April 11, 2018, deadline, it is inaccurate to state that the required action is
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`extension. As Opposer pointed out in its email message, since Applicant had missed
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`the period for extension, the proper course was to seek to reopen Applicant’s time to
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`answer. Moreover, since Applicant’s motion was not filed until after Applicant was
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`in default, the “stipulation” will be construed as Applicant’s response to the notice of
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`default.
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`Because Applicant timely obtained consent to an extension of time to answer,
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`but failed to file the stipulation, Applicant’s failure to file its answer appears to be
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`the result of inadvertence and not willful conduct or gross neglect. In view of
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`Opposer’s second email message honoring the grant of more time to answer, there is
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`nothing in the record to suggest prejudice to Opposer. Finally, Applicant has since
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`filed its answer (6 TTABVUE), demonstrating that it has the necessary meritorious
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`defense. Accordingly, the Board sets aside the entry of default and accepts
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`Applicant’s May 11, 2018 answer.
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`3. Inappropriate Motion for Sanctions
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`While the Board has given Applicant the benefit of the doubt and construed its
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`motion as alleging a lack of factual support for the pleaded claims, on its face
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`Applicant’s motion relies solely upon Fed. R. Civ. P. 11 (Rule 11) as a basis for its
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`motion to dismiss the opposition.5 6 TTABVUE 8. This is inappropriate. The Advisory
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`5 Applicant also provides a hyperlink to an article on a third party law firm website on
`prefiling duties in patent cases. Applicant has provided no authority to support an assertion
`that the Board is governed by the possible prefiling investigation requirements for patent
`infringement cases.
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`4
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`Opposition No. 91239816
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`Committee’s statements in in its Notes to the 1993 Amendment to Rule 11 clearly
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`state “Rule 11 motions … should not be employed … to test the legal sufficiency or
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`efficacy of allegations in the pleadings; other motions are available for those
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`purposes.”
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`Furthermore, there is nothing in the record demonstrating that Applicant
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`complied with the requirements of a Rule 11 motion. Fed. R. Civ. P. 11(c) (2) requires
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`that a motion for sanctions be made separately from any other motion, and provides
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`a “safe harbor” provision allowing the party or attorney an opportunity to withdraw
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`or correct a challenged submission. This provision delays filing of a motion for
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`sanctions before the Board for twenty-one days after service of the motion and allows
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`the motion to be filed only if the challenged submission is not withdrawn or
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`appropriately corrected within those twenty-one days or within another time that the
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`Board may set. NSM Resources Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1037
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`(TTAB 2014).
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`Applicant is advised that if the Board finds that a motion for Fed. R. Civ. P. 11(c)
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`sanctions itself violates the provisions of Fed. R. Civ. P. 11(b), an appropriate Fed. R.
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`Civ. P. 11(c) sanction may be entered against the party that filed the motion.
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`Accordingly, the motion for Rule 11 sanctions in the form of dismissal of the
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`opposition is not properly before the Board, and the motion will be given no
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`consideration.
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`5
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`Opposition No. 91239816
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`4. Applicant’s Mistaken Assumptions
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`Opposer is under no obligation to accept the statements made in the opposed
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`application as true. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL
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`AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69952 (October 7, 2016) (“In
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`response to Cold War Museum Inc. v. Cold War Air Museum Inc., 56 F.3d 1352, 92
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`USPQ2d 1626, 1629 (Fed. Cir. 2009), this final rule makes clear that while the file
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`history of the subject application or registration is of record, statements in affidavits
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`or declarations in the file are not testimony.”). See also UMG Recordings, Inc. v.
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`O'Rourke, 92 USPQ2d 1042, 1047 (TTAB 2009) (dates of use not evidence); Life Zone
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`Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (alleged date of
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`use in application not evidence); Baseball America, Inc. v. Powerplay Sports, Ltd., 71
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`USPQ2d 1844, 1848 n.10 (TTAB 2004) (dates of use and specimens not evidence);
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`Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993)
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`(without proof of use, application filing date, not dates of use alleged in the
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`application, is the earliest use date on which the applicant may rely), recon. denied,
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`36 USPQ2d 1328 (TTAB 1994).
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`As explained in the Board’s March 2, 2018 institution and trial order, the
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`discussion of possible settlement as part of the mandatory discovery conference takes
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`place after the pleadings have closed. Opposer was under no obligation to respond to
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`Applicant’s settlement overture when Applicant was in default for failure to file an
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`answer. Applicant asserts that the failure to respond to its settlement overture is
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`6
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`Opposition No. 91239816
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`confirmation that Opposer’s claims are frivolous, but Applicant provides no factual or
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`legal nexus demonstrating how this assertion could be true.
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`Finally, Applicant asserts a “right to present, if needed, a fully documented formal
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`Motion to Dismiss documenting, for example, the crowded field in which the parties
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`respective marks exist.” There are multiple problems with this statement. A motion
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`to dismiss must be filed before, or concurrently with, the movant’s answer. Fed. R.
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`Civ. P. 12(b); Hollowform Inc. v. Delma Aeh, 180 USPQ 284, 285 (TTAB 1973), aff’d,
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`515 F.2d 1174, 185 USPQ 790 (CCPA 1975). See also TBMP § 503.01. Therefore, if
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`Applicant wanted to file a “fully documented formal motion to dismiss” based on a
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`defense that Opposer failed to state a claim, the time to file a motion to dismiss has
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`passed. In addition, Applicant’s assertion makes clear that its motion to dismiss filed
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`with its answer is not adequately supported. The Board expects motions to have legal
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`and factual support and to be “fully documented” at the time the motion is filed.
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`Finally, the reference to a crowded field has nothing to do with the sufficiency of the
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`pleaded claims. If Applicant believes that Opposer will be unable to prove its pleaded
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`claims, the appropriate motion would seek summary judgment.
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`Applicant, who is represented by counsel, is strongly advised to read the relevant
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`TBMP provisions before making ANY filing with the Board.
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`5. Sufficiency of Notice of Opposition
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`A motion to dismiss for failure to state a claim concerns only one issue: the legal
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`sufficiency of the pleaded claims. See Advanced Cardiovascular Systems Inc. v.
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`SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993), and
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`7
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`Opposition No. 91239816
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`cases cited in TBMP § 503.02. In order to withstand a motion to dismiss, Opposer
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`need only allege such facts which, if proved, would establish that Opposer is entitled
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`to the relief sought; that is, (1) Opposer has standing to bring the proceeding, and (2)
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`a valid statutory ground exists for opposing the registration. Fair Indigo LLC v. Style
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`Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007).
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`Specifically, “a complaint must contain sufficient factual matter, accepted as true,
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`to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662,
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`129 S. Ct. 1937, 1949 (2009), quoting Bell Atlantic Corp. v. Tomboy, 550 U.S. 544, 570
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`(2007). Whether Opposer will be able to prove its well pleaded trademark claims is a
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`matter for trial or summary judgment, and not relevant to the Board’s assessment of
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`the legal sufficiency of the notice of opposition. Guess? IP Holder LP v. Knowluxe LLC,
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`116 USPQ2d 2018, 2019 (TTAB 2015).
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`standing
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` Opposer pleads ownership of several registrations as well as common law use.
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`This is sufficient to plead Opposer’s standing. See Cunningham v. Laser Golf Corp.,
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`222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
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`priority of use and likelihood of confusion
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`Opposer’s pleading of its prior registrations also is sufficient to plead its priority
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`for the likelihood of confusion claim.6 Cunningham v. Laser Golf Corp., 55 USPQ2d
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`6 The priority, however, extends only to the marks and corresponding goods or services
`identified in the pleaded registrations. To the extent Opposer intends to argue priority and a
`likelihood of confusion based on Opposer’s common law use of its marks, Opposer will need
`to establish priority through evidence during the proceeding. Embarcadero Techs., Inc. v.
`RStudio, Inc., 105 USPQ2d 1825, 1834 (TTAB 2013)(citing Hydro-Dynamics Inc. v. George
`Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987)).
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`8
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`Opposition No. 91239816
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`at 1844. Moreover, the notice of opposition pleads (Par. 6) that the similarities
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`between the parties’ respective marks, and their goods and services, are likely to
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`cause confusion. Thus, the claim of likelihood of confusion is legally sufficient. See
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`Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735
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`(TTAB 2001).
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`dilution
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`To prevail on a dilution claim, a plaintiff must show that: (1) it owns a famous
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`mark that is distinctive; (2) the defendant is using a mark in commerce that allegedly
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`dilutes the plaintiff's famous mark; (3) the defendant's use of its mark began after
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`the plaintiff's mark became famous; and (4) the defendant's use of its mark is likely
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`to cause dilution by blurring or by tarnishment. Coach Servs. Inc. v. Triumph
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`Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012). Dilution
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`by blurring is an “association arising from the similarity between a mark or trade
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`name and a famous mark that impairs the distinctiveness of the famous mark” and
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`dilution by tarnishment is “an association arising from the similarity between a mark
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`or trade name and a famous mark that harms the reputation of the famous mark.”
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`Trademark Act Sec. 43 § (c)(2)(B) and (C).
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`A review of the notice of opposition in its entirety shows Opposer pleads that its
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`KISS mark is famous and distinctive (Par. 8); that Applicant’s mark will cause
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`dilution of Opposer’s mark (Par. 13); and that Applicant’s constructive use date falls
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`after Opposer’s KISS mark became famous (Par. 11). With respect to blurring, the
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`notice of opposition pleads that use and registration of Applicant’s mark will erode
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`9
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`Opposition No. 91239816
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`the association of the KISS mark with Opposer and lessen the capacity of the mark
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`to identify Opposer as the source of Opposer’s goods and services (Par. 14). This is
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`sufficient to plead dilution by blurring. Coach Servs. Inc. v. Triumph Learning LLC,
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`101 USPQ2d at 1613.
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`However, with respect to dilution by tarnishment, the notice of opposition pleads
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`“if specified services of Applicant are inferior in quality, there will be irreparable
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`injury to Opposer’s valuable goodwill and its registered marks.” (Par. 14). This is
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`insufficient to plead any factual nexus between a negative association suffered by
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`Opposer’s KISS mark and Applicant’s use of its KISS mark. Coach Servs. Inc. v.
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`Triumph Learning LLC, 101 USPQ2d at 1615.
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`false suggestion of a connection
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`“[T]he purpose of the false suggestion of a connection language of Section 2(a) was
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`to protect ‘the name of an individual or institution which was not a ‘technical’
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`trademark or ‘trade name’ upon which an objection could be made under Section 2(d),’
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`and that this statutory section embraces the concepts of the right of privacy and the
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`related right of publicity.” Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX
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`Companies, Inc., 87 USPQ2d 1411, 1424 (TTAB 2008) (quoting University of Notre
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`Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ
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`505, 508 (Fed. Cir. 1983)). A plaintiff asserting a claim that a mark falsely suggests
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`a connection must plead: (i) that the defendant’s mark is the same or a close
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`approximation of plaintiff's previously used name or identity; (ii) that the mark would
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`be recognized as such; (iii) that the plaintiff is not connected with the activities
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`10
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`Opposition No. 91239816
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`performed by the defendant under the mark; and (iv) that the plaintiff’s name or
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`identity is of sufficient fame or reputation that when the defendant’s mark is used on
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`the goods or services, a connection with the plaintiff would be presumed. Association
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`pour la Defense et la Promotion de l'oeuvre de Marc Chagall Dite Comite Marc Chagall
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`v. Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007) (citations omitted). The second
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`factor has been construed to require that “the name claimed to be appropriated by
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`the defendant must point uniquely to the plaintiff.” Hornby, 87 USPQ2d at 1424, see
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`also Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985) (“the name claimed to
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`be appropriated points uniquely and unmistakably to that party’s personality or
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`‘persona’.”)
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`Opposer alleges in its notice of opposition that Opposer “is the owner of
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`intellectual property rights pertaining to the artists professionally known as KISS”,
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`that Opposer is a world famous, heavy metal rock group which is well known for its
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`distinctive KISS trademark, facial paint designs, costumes and theatrical stage
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`performances, and has toured every year since 1972 (Par. 1); that Opposer uses “the
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`mark KISS” (Par. 3 and 5); that “the mark KISS has identified the Opposer and the
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`provision of Opposer’s services and goods.” (Par. 17); that Applicant’s “mark is
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`identical and/or a close approximation of the Opposer’s KISS mark as it includes the
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`entirety of the Opposer’s mark” (Par. 18); that “Applicant’s mark KISS would be
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`recognized as Opposer’s name or identity by purchasers in that the mark points
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`uniquely and unmistakably to Opposer” (Par. 19); that Opposer is not connected to
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`the activities Applicant will perform using the mark (Par. 20); and “Opposer’s name
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`11
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`Opposition No. 91239816
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`or identity, KISS, is of sufficient fame or reputation that when Applicant’s mark is
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`used on services, a connection with Opposer will be presumed.” (Par. 19 and 21). This
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`is sufficient to plead the claim of false suggestion of a connection.
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`6. Summary
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`The notice of default is set aside and Applicant’s answer submitted May 11, 2018,
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`(6 TTABVUE 1-7) is accepted.
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`The motion to dismiss for failure to state a claim is denied except with respect to
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`the claim of dilution by tarnishment.
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`Opposer is allowed FIFTEEN DAYS from the date of this order to file an amended
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`notice of opposition with a legally sufficient pleading of dilution by tarnishment,
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`failing which this proceeding will continue only with respect to Opposer’s claims of
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`likelihood of confusion, dilution by blurring, and false suggestion of a connection.
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`If Opposer files an amended notice of opposition, Applicant is ordered to file an
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`answer to the amended notice of opposition within FIFTEEN DAYS of the date of
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`service of the amended notice of opposition.
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`7. Proceedings Are Resumed
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`Proceedings were stayed with issuance of the notice of default but now resume.
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`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
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`
`
`1/4/2019
`2/3/2019
`3/5/2019
`7/3/2019
`8/2/2019
`9/16/2019
`10/31/2019
`11/15/2019
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`12
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`
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`Opposition No. 91239816
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`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional) Due
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`
`12/30/2019
`1/14/2020
`2/13/2020
`4/13/2020
`5/13/2020
`5/28/2020
`6/7/2020
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`In each instance, a copy of the transcript of testimony, together with copies of
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`documentary exhibits, must be served on the adverse party within thirty days after
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`completion of the taking of testimony. Trademark Rule 2.l25. An oral hearing will be
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`set only upon request filed as provided by Trademark Rule 2.l29.
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`13
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