`
`ESTTA Tracking number:
`
`ESTTA1005422
`
`Filing date:
`
`09/30/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91244316
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Audemars Piquet Holding S.A.
`
`JOHN GALBREATH
`GALBREATH LAW OFFICES PC
`2516 CHESTNUT WOODS CT
`REISTERSTOWN, MD 21136-5523
`UNITED STATES
`jgalbreath@galbreath-law.com, jgalbreath@verizon.net
`410-628-7770
`
`Submission
`
`Motion for Summary Judgment
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 03/05/2020
`
`John A. Galbreath
`
`jgalbreath@galbreath-law.com, jgalbreath@verizon.net
`
`/John A. Galbreath/
`
`09/30/2019
`
`91244316-Summary Judgment Motion and Motion to Amend Plead-
`ing.pdf(197615 bytes )
`91244316-Amended Notice of Opposition.pdf(158913 bytes )
`Galbreath Declaration.pdf(203505 bytes )
`Exhibit 1-TSDR Entry.pdf(308885 bytes )
`Exhibit 2-First TEAS Printout.pdf(250324 bytes )
`Exhibit 3-Second TEAS Printout.pdf(301946 bytes )
`Exhibit 4-Application As Filed.pdf(365647 bytes )
`Exhibit 5-First Interrogatories to Applicant.pdf(398619 bytes )
`Exhibit 6-Applicant Responses to First Interrogatories.pdf(846814 bytes )
`Exhibit 7-Second Interrogatories to Applicant.pdf(168355 bytes )
`Exhibit 8-First Requests for Admission to Applicant.pdf(431174 bytes )
`Exhibit 9-Applicant Response to First Requests for Admission.pdf(594263 bytes
`
`) R
`
`EDACTED-Exhibit 10-Applicant Responses to Second Interrogator-
`ies.pdf(252136 bytes )
`Exhibit 11-Applicant Supplemented Responses to First Interrogator-
`ies.pdf(567350 bytes )
`Exhibit 12-TESS Record List Display.pdf(1123682 bytes )
`REDACTED-Exhibit 13-Applicant Supplemented Responses to Requests for Ad-
`mission.pdf(225499 bytes )
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`
`
`Audemars Piguet Holding S.A.
`
`IN THE UNITED STATES
`)
`) PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`) )
`
`Plaintiff/Opposer
`
`v.
`
`Tenengroup Ltd
`
`) APPL. NO. 87/888,209
`)
`) OPPOSITION NO. 91244316
`Defendant/Applicant
`_______________________________________)
`
`OPPOSER'S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION,
`
`MOTION FOR SUMMARY JUDGMENT, AND MOTION TO SUSPEND
`
`PROCEEDINGS PENDING THE DISPOSITION OF OPPOSER'S MOTION FOR
`
`SUMMARY JUDGMENT; AND MEMORANDUM IN SUPPORT OF OPPOSER'S
`
`MOTION FOR LEAVE TO AMEND, MOTION FOR SUMMARY JUDGMENT,
`
`AND MOTION TO SUSPEND THE OPPOSITION PROCEEDING
`
`Pursuant to Federal Rules of Civil Procedure ("FRCP") 15(a), C.F.R. §2.107(a) and
`
`T.B.M.P. § 507, Audemars Piguet Holding S.A. (“Audemars Piguet”, “Opposer”, or
`
`“Plaintiff”) hereby moves the Trademark Trial and Appeal Board (the "Board") for leave to
`
`amend its Notice of Opposition under FRCP 15(a) to add a cause of action for fraud. The
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`First Amended Notice of Opposition is necessary to add a cause of action for fraud, which
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`has recently been revealed in Tenengroup Ltd’s ("Tenengroup", “Defendant”, or
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`“Applicant”) responses to Opposer's First Set of Requests for Admission Nos. 1-39,
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`("Opposer's Requests for Admissions"), Opposer's First Set of Interrogatories Nos. 1-36
`
`("Opposer's First Interrogatories") and Opposer's Second Set of Interrogatories Nos. 37-38
`
`("Opposer's Second Interrogatories") (collectively "Opposer's Discovery Requests").
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`Moreover, Opposer moves the Board for summary judgment under FRCP 56(c),
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`granting its opposition to U.S. Trademark Application No. 87/888,209.
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`
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`2
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`Furthermore, Opposer hereby requests that the Board suspend the proceeding pending
`
`a decision on its motions.
`
`Opposer's Motions are supported by the Declaration of John A. Galbreath ("Galbreath
`
`Decl.") and the associated Exhibits attached hereto. Additionally, a First Amended Notice of
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`Opposition is being submitted concurrently herewith.
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`MEMORANDUM IN SUPPORT OF OPPOSER'S
`
`MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`
`The application at issue in this proceeding, U.S. Trademark Application Serial No.
`
`87/888,209, filed on April 23, 2018 ("Applicant's Application") for the mark OAK & LUNA
`
`("Applicant's Mark") identifies the following goods and services: in Class 14, jewels; clocks;
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`chokers; jewelry chains; bracelets; rings; jewelry watches; pins, namely, cloisonne pins,
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`jewelry pins for use on hats, lapel pins jewelry, ornamental lapel pins, ornamental pins,
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`ornamental pins made of precious metal, pins being jewelry, tie pins, tie-pins of precious
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`metal; pearls; necklaces; imitation pearls; semi-precious stones; rough precious stones;
`
`synthetic precious stones; spinel; jewelry, precious stones; earrings; ear clips; ankle bracelets;
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`bracelets of precious metal; gold; gold jewelry; gold watches; gold alloy ingots; silver
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`watches; silver jewelry; silver alloys; and in Class 35, on-line retail store services featuring
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`jewels and clocks and clothing, namely, shirts, dresses, skirts, blouses, pants, suits
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`beachwear, swimwear, underwear, sportswear. Applicant's sole basis for registration, for
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`both the goods and services, is Applicant's actual use of the mark in U.S. commerce under
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`Section 1(a) of the Trademark Act.
`
`
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`3
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`On April 19, 2019, Opposer received Applicant’s Responses to Opposer’s First
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`Interrogatories Nos. 1-36, and on June 24, 2019, Applicant supplemented those responses.
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`On June 13, 2019, Opposer received Applicant’s Responses to Opposer’s First Requests for
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`Admission, and on June 14, 2019, Opposer received Applicant’s Responses to Opposer’s
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`Second Interrogatories Nos. 37-38 (collectively "Applicant's Responses to Opposer's
`
`Discovery Requests").
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`As discussed in more detail below, in Applicant's Responses to Opposer's Discovery
`
`Requests, Applicant admits that, at the time of filing its application, Applicant had not used
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`the mark OAK & LUNA in U.S. commerce for many of the goods/services identified in the
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`application – despite the fact that the sole filing basis for Applicant's Application was Section
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`1(a) of the Trademark Act. In fact, in Applicant's Responses to Opposer's Discovery
`
`Requests, Applicant also admits that it is not currently using, and has never used, its mark in
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`U.S. commerce for many of the goods/services listed in its application.
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`These are material misrepresentations of fact that Applicant knew or should have
`
`known were false or misleading. Since the sole basis for the goods and services in
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`Applicant's Application is Applicant's actual use of its mark in U.S. commerce under Section
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`1(a) of the Trademark Act, Applicant has committed fraud on the U.S. Patent and Trademark
`
`Office ("USPTO"). As a result of this fraud, Applicant's Application is void ab initio.
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`As the facts concerning Applicant's fraud in filing and prosecuting Applicant's
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`Application came to light in Applicant's Responses to Opposer's Discovery Requests,
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`Opposer seeks leave to amend its Notice of Opposition to add a cause of action for fraud.
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`Please note that this proceeding was suspended from May 24, 2019 until just recently due to
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`
`
`4
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`a pending Motion to Compel, and Opposer could not seek leave to amend its Notice of
`
`Opposition while the suspension was in effect.
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`OPPOSER'S MOTION TO AMEND SHOULD BE GRANTED
`
`T.B.M.P. Section § 507.02 and FRCP 15(a) state that once an answer has been filed, a
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`party may amend its pleading by leave of the Board and that leave must be freely given when
`
`justice so requires as long as it does not unduly prejudice the adverse party. Moreover, the
`
`Board has held that amendments to pleadings should "be allowed with great liberality . . . "
`
`Commodore Elec. Ltd. v . CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1505 (T.T.A.B.
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`1993).
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`As this proceeding is still in its early stages, Applicant will not be prejudiced by
`
`Opposer's filing of its First Amended Notice of Opposition. Moreover, there has been no
`
`undue delay, because Opposer received the relevant responses to its discovery requests in
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`mid-June 2019, and could not seek leave to amend its Notice of Opposition while the case
`
`was suspended from May 24, 2019 until just recently. Further, all evidence relevant to the
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`fraud claim that may benefit Applicant is already in Applicant's possession and control. In
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`light of the foregoing, justice requires the Board to grant leave to Opposer to amend its
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`Notice of Opposition to plead this cause of action.
`
`For the above reasons, Opposer respectfully requests leave to amend its Notice of
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`Opposition to properly reflect the charge of fraud based on this evidence obtained during
`
`discovery. See Turbo Sportswear, Inc. v. Marmot Mountain Ltd., 77 U.S.P.Q.2d 1152
`
`(T.T.A.B. 2005) (“Turbo”) (the Board granted a Motion to Amend where a claim of fraud
`
`
`
`5
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`based on goods not being offered at the time the application was filed in a use-based
`
`application was revealed during the testimony deposition).
`
`MEMORANDUM IN SUPPORT OF OPPOSER'S MOTION FOR
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`SUMMARY JUDGMENT AND MOTION TO SUSPEND
`
`I.
`
`INTRODUCTION
`
`Since Opposer believes that it will be damaged by Application Serial No. 87/888,209
`
`("Applicant's Application") for the mark OAK & LUNA ("Applicant's Mark"), Opposer
`
`brought the subject opposition proceeding against Applicant's Application.
`
`As set forth in the memorandum herein, the exhibits attached thereto, and in the
`
`attached Declaration of John A. Galbreath ("Galbreath Decl."), this motion is based on the
`
`grounds that Applicant committed fraud in attempting to procure a registration for
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`Applicant's Mark because Applicant had not used Applicant's Mark in connection with all of
`
`the goods/services identified in Applicant's Application as of the filing date of the
`
`Application. Since Applicant has committed fraud, Applicant's Application is void ab initio.
`
`The dispositive issue in this case is whether Applicant's Application, which is based
`
`solely on Section 1(a) of the Trademark Act, is void due to Applicant's fraudulent assertion
`
`that it had used Applicant's Mark in U.S. commerce in association with all of the
`
`goods/services listed in Applicant's Application. The undisputed facts demonstrate that
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`Applicant had not used, nor could have had an objective reasonable belief that it had used,
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`the mark in connection with all of the goods/services listed in Applicant's Application within
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`the meaning of Section 1(a) of the Trademark Act as of the April 23, 2018 filing date of
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`Applicant's Application, or as of the September 18, 2018 publication date of Applicant's
`
`
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`6
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`Application. Accordingly, Opposer requests that the Board deny registration of Applicant's
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`Application in light of the fraud committed by Applicant.
`
`II.
`
`UNDISPUTED FACTS
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`The undisputed facts in this matter are as follows:
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`1. On April 23, 2018, Applicant electronically filed Applicant's Application, seeking
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`registration in the United States for Applicant's Mark based solely on Section 1(a) of the
`
`Trademark Act on or in connection with the following Class 14 goods and Class 35 services:
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`Jewels; clocks; chokers; jewelry chains; bracelets; rings; jewelry watches; pins,
`
`namely, cloisonne pins, jewelry pins for use on hats, lapel pins jewelry, ornamental lapel
`
`pins, ornamental pins, ornamental pins made of precious metal, pins being jewelry, tie pins,
`
`tie-pins of precious metal; pearls; necklaces; imitation pearls; semi-precious stones; rough
`
`precious stones; synthetic precious stones; spinel; jewelry, precious stones; earrings; ear
`
`clips; ankle bracelets; bracelets of precious metal; gold; gold jewelry; gold watches; gold
`
`alloy ingots; silver watches; silver jewelry; silver alloys; on-line retail store services featuring
`
`jewels and clocks and clothing, namely, shirts, dresses, skirts, blouses, pants, suits
`
`beachwear, swimwear, underwear, sportswear. Ex. 1; Galbreath Decl. ¶ 2.
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`2. While filing a Section 1(a) – Use in Commerce trademark application, an
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`applicant must verify the following statement with respect to the goods and services
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`identified in the application: “The applicant requests that the trademark/service mark
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`identified on the preceding page be registered with the USPTO on the Principal Register for
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`
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`7
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`the class(es) and goods/services displayed below, and asserts herein the specific basis(es)
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`that covers the listed goods/services.” Ex. 2, p. 1; Galbreath Decl. ¶ 3.
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`3. While filing a Section 1(a) – Use in Commerce trademark application, an
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`applicant must verify the following statement with respect to the goods and services
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`identified in the application: “The applicant is using the mark in commerce on or in
`
`connection with the identified goods/services.” Ex. 3, p. 2; Galbreath Decl. ¶ 4.
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`4. While filing a Section 1(a) – Use in Commerce trademark application, an
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`applicant is warned that:
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`“WARNING: Registration Subject to Cancellation for Fraudulent Statements
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`You must ensure that statements made in filings to the USPTO are accurate,
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`as inaccuracies may result in the cancellation of a trademark registration. The
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`lack of a bona fide intention to use the mark with all goods/services included
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`in an application, or the lack of use on all goods/services for which you claim
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`use, could jeopardize the validity of the registration and result in its
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`cancellation.” Ex. 2, p. 2 (emphasis in original); Galbreath Decl. ¶ 3.
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`5. While filing its application for Applicant's Mark, Applicant made the following
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`declarations with respect to the goods and services identified in the application:
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` “The signatory believes that the applicant is the owner of the
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`trademark/service mark sought to be registered;
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` The mark is in use in commerce on or in connection with the goods/services
`
`in the application;
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` The specimen(s) shows the mark as used on or in connection with the
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`goods/services in the application; and
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` To the best of the signatory's knowledge and belief, the facts recited in the
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`application are accurate.”
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`
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`8
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`Ex. 4, p. 5; Galbreath Decl. ¶ 5.
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`6. The above declarations were made under penalty of "fine or imprisonment, or both
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`. . . and [knowing] that . . . willful false statements and the like may jeopardize the validity of
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`the application or submission or any registration resulting therefrom.” Id.
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`7. On September 18, 2018, Applicant's Application was published for opposition
`
`purposes, with the sole basis of registration under Section 1(a) for the goods and services.
`
`See the file history for Applicant's Application.
`
`8. On October 17, 2018, Opposer filed the subject Opposition against Applicant's
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`Application and the Opposition proceeding was assigned Opposition No. 91244316. See the
`
`file history for Applicant's Application.
`
`9. On March 20, 2019, Opposer served its First Set of Interrogatories on Applicant.
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`Ex. 5; Galbreath Decl. ¶ 6.
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`10. On April 19, 2019, Applicant responded to Opposer’s First Set of Interrogatories.
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`Ex. 6; Galbreath Decl. ¶ 7.
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`11. Interrogatory No. 7 requests that Applicant “Describe in detail the goods/services
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`in connection with which Applicant has used or plans to use Applicant's Mark in the U.S.”
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`Applicant’s Response: “Please refer to the items listed on the Application. With
`
`respect to future plans for use of Applicant’s Mark, Applicant objects to Interrogatory No. 7
`
`on the grounds that it is overbroad, unduly burdensome, and beyond the scope of discovery
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`under Fed. R. Civ. P. 26(b)(1) and TBMP 402.01. Ex. 6, p. 5; Galbreath Decl. ¶ 7.
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`12. Interrogatory No. 10 requests that Applicant “State the U.S. dollar sales for each
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`good/service in connection with which Applicant has used Applicant's Mark, by calendar
`
`
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`9
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`year since the first use of the mark.”
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`Applicant’s Response: “Applicant objects to Interrogatory No. 10 on the grounds that
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`it is overbroad, unduly burdensome and beyond the scope of discovery under Fed. R. Civ. P.
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`26(b)(1) and TBMP 402.01. Ex. 6, p. 5-6; Galbreath Decl. ¶ 7.
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`13. On May 13, 2019, Opposer served its Second Set of Interrogatories on Applicant.
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`Ex. 7; Galbreath Decl. ¶ 8.
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`14. On May 14, 2019, Opposer served its First Requests for Admission on Applicant.
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`Ex. 8; Galbreath Decl. ¶ 9.
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`15. On June 13, 2019, Applicant responded to Opposer’s First Requests for
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`Admission. Ex. 9; Galbreath Decl. ¶ 10.
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`16. Opposer's Request for Admission No. 3 asks Applicant to admit that: “Applicant
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`did not use Applicant’s Mark in commerce for clocks by April 23, 2018. Please note that the
`
`phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
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`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for clocks." Ex. 9, p. 1; Galbreath Decl. ¶ 10.
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`17. Opposer's Request for Admission No. 8 asks Applicant to admit that: “Applicant
`
`did not use Applicant’s Mark in commerce for jewelry watches by April 23, 2018. Please
`
`note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
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`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for watches." Ex. 9, p. 2; Galbreath Decl. ¶ 10.
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`10
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`18. Opposer's Request for Admission No. 9 asks Applicant to admit that: “Applicant
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`did not use Applicant’s Mark in commerce for cloisonne pins by April 23, 2018. Please note
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`that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
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`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for cloisonne pins." Ex. 9, p. 2-3; Galbreath Decl. ¶ 10.
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`19. Opposer's Request for Admission No. 10 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for jewelry pins for use on hats by
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`April 23, 2018. Please note that the phrase ‘use in commerce’ shall mean the definition
`
`given in 15 U.S.C. §1127."
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`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for jewelry pins." Ex. 9, p. 3; Galbreath Decl. ¶ 10.
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`20. Opposer's Request for Admission No. 11 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for lapel pins jewelry by April 23,
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`2018. Please note that the phrase ‘use in commerce’ shall mean the definition given in 15
`
`U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for lapel pins jewelry." Id.
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`21. Opposer's Request for Admission No. 12 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for ornamental lapel pins by April 23,
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`2018. Please note that the phrase ‘use in commerce’ shall mean the definition given in 15
`
`U.S.C. §1127."
`
`
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`11
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`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for ornamental lapel pins." Id.
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`22. Opposer's Request for Admission No. 13 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for ornamental pins by April 23, 2018.
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`Please note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C.
`
`§1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for ornamental pins." Ex. 9, p. 3-4; Galbreath Decl. ¶ 10.
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`23. Opposer's Request for Admission No. 14 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for ornamental pins made of precious
`
`metal by April 23, 2018. Please note that the phrase ‘use in commerce’ shall mean the
`
`definition given in 15 U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for ornamental pins made of precious metal." Ex. 9, p. 4; Galbreath Decl. ¶ 10.
`
`24. Opposer's Request for Admission No. 15 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for pins being jewelry by April 23,
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`2018. Please note that the phrase ‘use in commerce’ shall mean the definition given in 15
`
`U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for pins being jewelry." Id.
`
`25. Opposer's Request for Admission No. 16 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for tie pins by April 23, 2018. Please
`
`
`
`12
`
`note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for tie pins." Id.
`
`26. Opposer's Request for Admission No. 17 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for tie-pins of precious metal by April
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`23, 2018. Please note that the phrase ‘use in commerce’ shall mean the definition given in 15
`
`U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for tie-pins of precious metal." Id.
`
`27. Opposer's Request for Admission No. 20 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for imitation pearls by April 23, 2018.
`
`Please note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C.
`
`§1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for imitation pearls." Ex. 9, p. 5; Galbreath Decl. ¶ 10.
`
`28. Opposer's Request for Admission No. 24 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for spinel by April 23, 2018. Please
`
`note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for spinel." Ex. 9, p. 6; Galbreath Decl. ¶ 10.
`
`29. Opposer's Request for Admission No. 28 asks Applicant to admit that:
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`“Applicant did not use Applicant’s Mark in commerce for ear clips by April 23, 2018. Please
`
`
`
`13
`
`note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for ear clips." Ex. 9, p. 7; Galbreath Decl. ¶ 10.
`
`30. Opposer's Request for Admission No. 31 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for gold by April 23, 2018. Please
`
`note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for gold independently of jewelry." Id.
`
`31. Opposer's Request for Admission No. 32 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for gold jewelry by April 23, 2018.
`
`Please note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C.
`
`§1127."
`
`Applicant's Supplemented Response: "Admitted. Applicant has been using its Mark
`
`in commerce for gold jewelry since November 25, 2018." Ex. 13, p. 1; Galbreath Decl. ¶ 14.
`
`32. Opposer's Request for Admission No. 33 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for gold watches by April 23, 2018.
`
`Please note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C.
`
`§1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for gold watches." Ex. 9, p. 8; Galbreath Decl. ¶ 10.
`
`33. Opposer's Request for Admission No. 34 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for gold alloy ingots by April 23,
`
`
`
`14
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`2018. Please note that the phrase ‘use in commerce’ shall mean the definition given in 15
`
`U.S.C. §1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for gold alloy ingots." Id.
`
`34. Opposer's Request for Admission No. 35 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for silver watches by April 23, 2018.
`
`Please note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C.
`
`§1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for silver watches." Id.
`
`35. Opposer's Request for Admission No. 37 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for silver alloys by April 23, 2018.
`
`Please note that the phrase ‘use in commerce’ shall mean the definition given in 15 U.S.C.
`
`§1127."
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for silver alloys." Id.
`
`36. Opposer's Request for Admission No. 39 asks Applicant to admit that:
`
`“Applicant did not use Applicant’s Mark in commerce for online retail store services
`
`featuring clocks by April 23, 2018. Please note that the phrase ‘use in commerce’ shall mean
`
`the definition given in 15 U.S.C. §1127."
`
`
`
`15
`
`Applicant's Response: "Admitted. Applicant does not currently use Applicant’s Mark
`
`in commerce for online retail store services featuring clocks." Ex. 9, p. 9; Galbreath Decl. ¶
`
`10.
`
`37. On June 14, 2019, Applicant responded to Opposer’s Second Set of
`
`Interrogatories. Ex. 10; Galbreath Decl. ¶ 11.
`
`38. Interrogatory No. 37 requests: “For each good and service listed in Applicant’s
`
`Mark, state the exact date when Applicant first used Applicant's Mark in commerce for that
`
`good/service. Please note that the phrase “used in commerce” shall mean the definition
`
`given in 15 U.S.C. §1127.”
`
`Applicant’s Response: Applicant provided a table of the first use date for each
`
`good/service identified in its application. First use dates were shown for jewels; chokers;
`
`jewelry chains; bracelets; rings; pearls; necklaces; semi-precious stones; rough precious
`
`stones; synthetic precious stones; jewelry, precious stones; earrings; ankle bracelets;
`
`bracelets of precious metal; gold jewelry; silver jewelry; and on-line retail store services
`
`featuring jewels.
`
`No first use date was shown for clocks; jewelry watches; cloisonne pins, jewelry pins
`
`for use on hats, lapel pins jewelry, ornamental lapel pins, ornamental pins, ornamental pins
`
`made of precious metal, pins being jewelry, tie pins, tie-pins of precious metal; imitation
`
`pearls; spinel; ear clips; gold; gold watches; gold alloy ingots; silver watches; silver alloys;
`
`and on-line retail store services featuring clocks. Instead, the table showed an “N/A” for
`
`these latter goods and services. Ex. 10, p. 1-3; Galbreath Decl. ¶ 11.
`
`
`
`16
`
`39. Interrogatory No. 38 requests: “For each good and service listed in Applicant’s
`
`Mark, identify the U.S. entity to whom the good was first sold, or to whom the service was
`
`first rendered. Please note that “entity” shall mean a person, company, organization, or any
`
`other being or thing.”
`
`Applicant’s Response: Applicant provided a table of the first sale entity for each
`
`good/service identified in its application. First sale entities were shown for jewels; chokers;
`
`jewelry chains; bracelets; rings; pearls; necklaces; semi-precious stones; rough precious
`
`stones; synthetic precious stones; jewelry, precious stones; earrings; ankle bracelets;
`
`bracelets of precious metal; gold jewelry; silver jewelry; and on-line retail store services
`
`featuring jewels.
`
`No first sale entity was shown for clocks; jewelry watches; cloisonne pins, jewelry
`
`pins for use on hats, lapel pins jewelry, ornamental lapel pins, ornamental pins, ornamental
`
`pins made of precious metal, pins being jewelry, tie pins, tie-pins of precious metal; imitation
`
`pearls; spinel; ear clips; gold; gold watches; gold alloy ingots; silver watches; silver alloys;
`
`and on-line retail store services featuring clocks. Ex. 10, p. 3-4; Galbreath Decl. ¶ 11.
`
`40. On June 24, 2019, Applicant supplemented its response to Opposer’s First Set of
`
`Interrogatories. Ex. 11; Galbreath Decl. ¶ 12.
`
`41. Regarding Interrogatory No. 7 (which requested that Applicant describe in detail
`
`the goods/services in connection with which Applicant has used or plans to use Applicant's
`
`Mark in the U.S.): Applicant stated that ‘it currently uses and has used its mark in
`
`connection with bracelets, rings, earrings and necklaces and in connection with online sales
`
`of said goods in the U.S.” Ex. 11, p. 2; Galbreath Decl. ¶ 12.
`
`
`
`17
`
`42. Regarding Interrogatory No. 10 (which requested that Applicant state the U.S.
`
`dollar sales for each good/service in connection with which Applicant has used Applicant's
`
`Mark, by calendar year since the first use of the mark): Applicant provided “a table
`
`summarizing the annual U.S. dollar sales for each good”. The table listed 2018 and 2019
`
`U.S. sales for necklaces (including chokers), rings, bracelets, and earrings. Id.
`
`III.
`
`ARGUMENT
`
`A. SUMMARY JUDGMENT STANDARD AND BURDEN OF PROOF.
`
`Summary judgment should be granted where, as here, it is shown that there is no
`
`genuine issue of material fact, and the moving party is entitled to judgment as a matter of
`
`law. FRCP Rule 56(c). FRCP 56(c), in pertinent part, states that a summary judgment should
`
`be granted where, as here, "the pleadings, . . . answers to interrogatories, and admissions on
`
`file, together with the affidavits ... show that there is no genuine issue as to any material fact
`
`and that the moving party is entitled to a judgment as a matter of law."
`
`These general principles of summary judgment apply under FRCP 56 to inter-parties
`
`proceedings before the Board. See, Medinol Ltd. v. Neuro VASX Inc., 67 U.S.P.Q.2d 1205
`
`(T.T.A.B. 2003) ("Medinol"); Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
`
`U.S.P.Q.2d 1793, 1797 (Fed. Cir. 1987). Moreover, summary judgment in an opposition
`
`proceeding is designed to save the time and expense of a full opposition proceeding where
`
`there is no genuine issue as to any material fact. Bet Lock Corp. v. Schlage Lock Co., 413
`
`F.2d 1195 (C.C.P.A. 1969).
`
`
`
`18
`
`As the moving party, Opposer has the burden of demonstrating that it is entitled to
`
`summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986). By meeting its
`
`burden of identifying undisputed facts, Opposer is entitled to relief. Applicant cannot respond
`
`merely by pointing to allegations or denials in the pleadings. Matsushita Elec. Indus. Co. v.
`
`Zenith Radio Corp., 475 U.S. 574, 586 (1986). Accordingly, the Applicant cannot rely upon
`
`denials contained in its pleadings to support its response to the motion for summary
`
`judgment; such denials alone are insufficient to raise a genuine issue of material fact.
`
`Moreover, mere denials or conclusory statements are insufficient. Collins, Inc. v. N.
`
`Telecomm., Ltd., 216 F.3d 1042, 1046, 55 U.S.P.Q.2d 1143, 1146 (Fed. Cir. 2000)
`
`("Collins"). As a result, Applicant cannot rely upon legally-conclusory declarations or mere
`
`denials to create a genuine issue of material fact.
`
`Instead, Applicant must submit specific facts showing that there is a genuine issue for
`
`trial. Zenith Radio Corp., 475 U.S. 574, 587 (1986). In doing so, Applicant must present
`
`objective evidence from which a reasonable trier of fact might return a verdict in its favor.
`
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249250 (1986). If the Applicant fails to set
`
`out "specific facts showing a genuine issue for trial . . . summary judgment should, if
`
`appropriate, be entered against that party." FRCP Rule 56(e)(2). Moreover, to "raise a
`
`genuine issue of material fact, [an] applicant must rely on specific facts that establish the
`
`existence of an ability and willingness to use the mark in the United States to identify its
`
`claimed [goods/services] at the time of the filing of the application." Honda Motor Co., Ltd.
`
`v. Friedrich Winkelmann, 90 USPQ2d 1660 (T.T.A.B. 2009) (“Honda”). In this case, the
`
`undisputed evidence demonstrates that Applicant did not use Applicant's Mark in commerce
`
`for all the identified goods/services as of the filing date of Applicant's Application.
`
`
`
`19
`
`B. THERE IS NO GENUINE ISSUE OF MATERIAL FACT THAT APPLICANT
`
`DID NOT USE ITS MARK IN COMMERCE FOR ALL OF THE IDENTIFIED
`
`GOODS/SERVICES, AND THAT APPLICANT'S ALLEGATION OF USE
`
`WAS FALSE.
`
`There is no genuine issue of material fact that Applicant was not using Applicant's
`
`Mark in connection with all of the goods and services identified in Applicant's Application at
`
`the time the application was filed, or at the time the application was published. Indeed, the
`
`undisputed facts demonstrate that Applicant has never used its mark in U.S. commerce for all
`
`the goods and all the services identified in Applicant's Application. Moreover, Applicant
`
`could not have had an objective reasonable belief that it was using its mark in U.S. commerce
`
`for all the identified goods and services.
`
`To support
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