Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1047416
`04/06/2020
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91254347
`
`Defendant
`GRUNT STYLE, LLC
`
`MATTHEW DE PRETER
`ARONBERG GOLDGEHN DAVIS & GARMISA
`SUITE 1700 330 NORTH WABASH AVE
`CHICAGO, IL 60611
`UNITED STATES
`cdepreter@agdglaw.com, USPTO@dockettrak.com, tmdocket@agdglaw.com,
`Kdiesner@agdglaw.com
`312-755-3153
`
`Motion to Dismiss - Rule 12(b)
`
`Matthew De Preter
`
`cdepreter@agdglaw.com, tmdocket@agdglaw.com, uspto@dockettrak.com
`
`/Matthew De Preter/
`
`04/06/2020
`
`Motion to Dismiss TWD Amended opposition.pdf(630419 bytes )
`Exhibit A - ORDER Granting in Part and Denying in Part GS 12c
`MTD.pdf(989593 bytes )
`Exhibit B - TWD Complaint.pdf(2515719 bytes )
`Exhibit C - Grunt Style First Amended Counterclaims.pdf(2041096 bytes )
`Exhibit D - Grunt Style LLC Motion to Dismiss.pdf(1958094 bytes )
`Exhibit E - TWD Amended Answer.pdf(2353805 bytes )
`Exhibit F - Assignment.pdf(885299 bytes )
`
`

`

`Opposer,
`
` v.
`
`TWD, LLC,
`
`
`
`
`
`GRUNT STYLE LLC,
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`Opposition No.: 91254347
`
`Application Serial No.: 85926093
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`Mark: GRUNT STYLE
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`
`
`
`
`
`
`
`Applicant.
`
`GRUNT STYLE’S MOTION TO DISMISS TWD’S FIRST AMENDED OPPOSITION
`
`

`

`Contents
`
`I.
`
`II.
`
`III.
`
`Introduction ......................................................................................................................... 1
`
`The Background Facts ........................................................................................................ 2
`
`Federal Rule of Civil Procedure 12(b)(6) Requires Factual Pleadings Not Met by
`TWD ................................................................................................................................... 3
`
`IV.
`
`This Court Should Dismiss TWD’s Opposition in Its Entirety .......................................... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`TWD Lacks Standing to Bring the Opposition ....................................................... 4
`
`TWD Lacks Standing to Challenge Grunt Style’s Assignment and Thus
`Lacks Standing to Assert its Bases for Opposition ................................................. 7
`
`TWD’s Opposition Is Barred by Collateral Estoppel ............................................. 8
`
`Even if All of TWD’s Alleged Facts Were True, TWD Still Fails to Assert
`a Valid Basis for Opposing Grunt Style’s Registration of GRUNT STYLE ....... 10
`
`Conclusion ........................................................................................................................ 15
`
`V.
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Ashcroft v. Iqbal,
` 556 U.S. 662 (2009) ....................................................................................................... 2, 3, 4
`
`Asian and Western Classics B.V. v. Selkow,
` 92 USPQ2d 1478 (TTAB 2009) .......................................................................................... 13
`
`Bank of America Nat'l Ass'n v. Bassman FBT, L.L.C.,
` 2012 IL App (2d) 110729, 981 N.E.2d 1 (2nd Dist. 2012).............................................. 8, 12
`
`Bank v. Al Johnson's Swedish Rest. & Butik, Inc.,
` 795 F. App'x 822 (Fed. Cir. 2019) ..................................................................................... 5, 6
`
`Bell Atl. Corp. v. Twombly,
` 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ........................................................ 3
`
`Bell Atlantic Corp. v. Twombly,
` 550 U.S. 544 (2007) ........................................................................................................... 2, 4
`
`Coca-Cola Co. v. Victor Syrup Corp.,
` 218 F.2d 596, 104 USPQ 275 (C.C.P.A. 1954) ................................................................... 14
`
`Colt Industries Operating Corp. v. Olivetti Controllo Numerico S.p.A.,
` 221 USPQ 73 (TTAB 1983) ................................................................................................ 13
`
`Defiance Button Machine Co. v. C & C Metal Products Corp.,
` 759 F.2d 1053 (2nd.Cir. 1985)............................................................................................. 12
`
`Double Coin Holdings, Ltd. V Tru Dev.,
` No. CANCELLATION 9206380, 2019 WL 4877349 (Oct. 1, 2019) ................................. 11
`
`Edgewood Manor Apartment Homes, LLC v. RSUI Indem. Co.,
` 733 F.3d 761 (7th Cir. 2013) ................................................................................................. 7
`
`Giant Food, Inc. v. Standard Terry Mills, Inc.,
` 229 USPQ 955 (TTAB 1986) .............................................................................................. 13
`
`Harrison v. Diamonds,
` No. 14 Civ. 484(VEC), 2014 WL 3583046 (S.D.N.Y. July 18, 2014) ................................. 1
`
`In re Bose Corp.,
` 91 USPQ2d 1240 (Fed. Cir. 2009)....................................................................................... 13
`
`Ingersoll v. Klein,
` 46 Ill.2d 42, 262 N.E.2d 593 (1970) ...................................................................................... 7
`
`ii
`
`

`

`Kramer v. Time Warner Inc.,
` 937 F.2d 767 (2d Cir.1991).................................................................................................... 1
`
`Lexmark Intern., Inc. v. Static Control Components, Inc.,
` 572 U.S. 118 (2014) ............................................................................................................... 9
`
`Lipton Indus., Inc. v. Ralston Purina Co.,
` 670 F.2d 1024 (C.C.P.A. 1982) ............................................................................................. 5
`
`Lujan v. Defenders of Wildlife,
` 504 U.S. 555, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992) ........................................................ 7
`
`Merry Hull & Company v. Hi-Line Co.,
` 243 F.Supp. 45 (S.D.N.Y.1965)........................................................................................... 12
`
`Murphy v. Gallagher,
` 761 F.2d 878 (2d Cir.1985).................................................................................................... 8
`
`Olsen v. Celano,
` 234 Ill.App.3d 1045, 175 Ill.Dec. 799, 600 N.E.2d 1257 (1992) .......................................... 7
`
`P. A. B. Produits et Appareils de Beaute, v. Satinine Societa in Nome Collettivo Di S.A. E. M.
`Usellini,
` 570 F.2d 328, 196 USPQ 801 (CCPA 1978) ....................................................................... 11
`
`Prince v. Dart,
` 2015 WL 3798435 (N.D. Ill. 2015) ....................................................................................... 4
`
`Qualcomm Inc. v. FLO Corp.,
` 93 USPQ2d 1768 (TTAB 2010) .......................................................................................... 13
`
`Rawoof v. Texor Petroleum Co.,
` 521 F.3d 750 (7th Cir. 2008) ................................................................................................. 7
`
`Roux Labs., Inc. v. La Cade Prods. Co.,
` 558 F.2d 33 (C.C.P.A. 1977) ................................................................................................. 3
`
`S.C. Johnson & Son, Inc. v. Gold Seal Co.,
` 90 USPQ 373 (Comm’r Pats. 1951) .................................................................................... 14
`
`SiRF Tech., v. ITC,
` 601 F.3d 1319 (Fed. Cir. 2010)........................................................................................ 7, 12
`
`Smith International Inc. v. Olin Corp.,
` 209 USPQ 1033 (TTAB 1981) ............................................................................................ 13
`
`Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha,
` 77 USPQ2d 1917 (TTAB 2006) .................................................................................... 12, 13
`
`iii
`
`

`

`TWD, LLC v. Grunt Style LLC, No. 18 C 7695,
` 2019 WL 5420153 (N.D. Ill. Oct. 23, 2019).......................................................................... 2
`
`Universal Oil Prod. Co. v. Rexall Drug & Chem. Co.,
` 59 C.C.P.A. 1120, 463 F.2d 1122, 174 USPQ 458 (C.C.P.A.1972)...................................... 5
`
`Yan Won Liao v. Holder,
` 691 F.Supp.2d 344 (E.D.N.Y.2010) ...................................................................................... 1
`
`Young v. AGB Corp.,
` 152 F.3d 1377 USPQ2d 1752 (Fed. Cir. 1998) ................................................................. 4, 5
`
`Other Authorities
`
`15 U.S.C. § 1063 ............................................................................................................................. 4
`
`15 U.S.C. § 1064 ............................................................................................................................. 4
`
`15 U.S.C. § 1127 ........................................................................................................................... 11
`
`37 C.F.R. § 2.116 ............................................................................................................................ 3
`
`37 C.F.R. § 2.83 ............................................................................................................................ 14
`
`Fed. R. Civ. P. 12(b)(6)................................................................................................................... 3
`
`TFSR § 2.59 .................................................................................................................................. 11
`
`TMEP § 1206.01(a) ...................................................................................................................... 14
`
`TMEP § 902.04 ............................................................................................................................. 14
`
`TMEP § 904.07 ............................................................................................................................. 11
`
`TMEP § 906.02 ............................................................................................................................. 14
`
`TMEP §906.3 ................................................................................................................................ 14
`
`
`
`iv
`
`

`

`I.
`
` Introduction
`
`TWD, LLC (“TWD”) is nothing more than an intermeddler. TWD’s filed its initial
`
`Notice of Opposition solely for the improper purposes of delaying Grunt Style’s registration,
`
`causing Grunt Style to unnecessarily expend resources, and to attempt to improperly gain
`
`leverage in a co-pending litigation between the parties. Despite having full knowledge that
`
`TWD has no standing to challenge Grunt Style’s trademark application, TWD filed its frivolous
`
`Notice of Opposition. Indeed, the initial Notice of Opposition was devoid of factual bases for
`
`any contention by TWD that it has a real interest in the proceeding.
`
`TWD’s First Amended Notice of Opposition (“Notice”) does nothing to remedy the
`
`myriad of problems exemplified in the initial Notice of Opposition. Instead, the Notice serves to
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`confirm that TWD has no standing, is an intermeddler, and has intentionally abused and misused
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`the opposition proceedings to harass Grunt Style, and waste the time, energy, and resources of
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`Grunt Style and the Trademark Trial and Appeal Board at a time when resources are already
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`stretched to the limit due to an unprecedented pandemic.
`
`Furthermore, TWD again failed to provide the Board with the decision in TWD, LLC v.
`
`Grunt Style LLC, Civil Action No. 1:18-cv-07695 (N.D. Ill., Oct. 23, 2019) in which the Court
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`already ruled on the issue of whether TWD has an interest in the GRUNT STYLE mark and held
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`that it does not. For that reason, the District Court dismissed the claims of TWD that were based
`
`on identical activity to what TWD complains about in its Notice. A copy of that decision is
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`enclosed herewith as Exhibit A.1
`
`1
`
`
`In the context of a motion to dismiss, courts are permitted to take judicial notice of public records, including
`complaints and other documents filed in federal court. See Harrison v. Diamonds, No. 14 Civ. 484(VEC), 2014
`WL 3583046, at *2 (S.D.N.Y. July 18, 2014) citing Yan Won Liao v. Holder, 691 F.Supp.2d 344, 351–52
`(E.D.N.Y.2010) (internal quotation marks omitted). In taking judicial notice of documents, the court does so
`“not for the truth of the matters asserted in the other litigation, but rather to establish the fact of such litigation
`and related filings.” Kramer v. Time Warner Inc., 937 F.2d 767, 774 (2d Cir.1991).
`
`

`

`TWD’s opposition must be dismissed.
`
`II.
`
`The Background Facts
`
`On March 9, 2018, Grunt Style sued TWD in the United States District Court for the
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`Northern District of Illinois (Civil Action No. 1:18-cv-01736) due to TWD’s infringement of
`
`Grunt Style’s common law trademark rights in the mark THIS WE’LL DEFEND, and it moved
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`to cancel TWD’s trademark registration along with asserting other claims. Through various
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`procedural rulings not relevant here, all of Grunt Style’s claims are now pending against TWD in
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`the case captioned TWD, LLC v. Grunt Style LLC, Civil Action No. 1:18-cv-07695 (N.D. Ill).
`
`In that case, TWD complained that “Defendant [Grunt Style] uses ‘®’ adjacent to marks
`
`not federally registered.” Exhibit B, p. 20, ¶45. The only statement TWD made respecting
`
`damage is the following: “Plaintiff [TWD] believes that it is likely to be damaged by such
`
`violation of 15 U.S.C. §1125(a).” Exhibit B, p. 20, ¶46. Grunt Style moved to dismiss TWD’s
`
`claims for lack of standing and for failure to meet the pleading requirements of Ashcroft v. Iqbal,
`
`556 U.S. 662, 678 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 557 (2007). The
`
`Court agreed with Grunt Style and dismissed TWD’s claims. See TWD, LLC v. Grunt Style LLC,
`
`No. 18 C 7695, 2019 WL 5420153, at *5 (N.D. Ill. Oct. 23, 2019). Specifically, the Court held
`
`as follows: “The complaint is devoid of any allegations regarding TWD’s injured reputation or
`
`sales. At no point does TWD state that consumers would confuse the “GRUNT STYLE” words
`
`for a TWD product. Even assuming there were sufficient allegations regarding TWD’s injury,
`
`the causation element would still be lacking. TWD does not allege that the use of a false
`
`registration symbol after the words “GRUNT STYLE” would impact TWD’s reputation or sales.
`
`As such, TWD has not established a factual basis for its standing on the unregistered mark
`
`
`
`
`
`2
`
`

`

`claim.” Id. emphasis added. TWD then abandoned its claim of misuse of the “®” symbol.
`
`Here, no allegation of damage to TWD is included in TWD’s Notice. The Notice, opens
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`with a conclusory introduction that states: “Opposer TWD, LLC…believes that it, the United
`
`States Patent And Trademark Office (‘USPTO’) and the public will be damaged….” TWD
`
`follows that with a “Standing” section that contains nothing but a rambling hodgepodge of
`
`attorney argument that is both devoid of fact and in no way pertains to standing under 15 U.S.C.
`
`§ 1063. TWD’s continual reliance on being a self-ordained champion of the people—after being
`
`put on notice that it had no standing by 1) the Illinois District Court, 2) Grunt Style’s original
`
`motion to dismiss which meticulously laid out the standing requirements, and 3) Grunt Style’s
`
`Rule 11 letter warning TWD of its intent to seek sanction for its frivolous filing—only serves to
`
`confirm that TWD has no basis at all for bringing the present opposition. The Notice is nothing
`
`more than an improper means of continuing to harass Grunt Style.
`
`III.
`
`Federal Rule of Civil Procedure 12(b)(6) Requires Factual Pleadings Not Met by
`TWD
`
`The Federal Rules of Civil Procedure govern opposition proceedings. 37 C.F.R. § 2.116;
`
`Roux Labs., Inc. v. La Cade Prods. Co., 558 F.2d 33, 35–36 (C.C.P.A. 1977). Under Federal
`
`Rule of Civil Procedure 12(b)(6) the court may dismiss a complaint that fails to state a claim
`
`upon which relief may be granted. Fed. R. Civ. P. 12(b)(6). A complaint should be dismissed
`
`unless it contains “sufficient factual matter, accepted as true, to state a claim to relief that is
`
`plausible on its face.” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570). “A claim has
`
`facial plausibility when the plaintiff pleads factual content that allows the court to draw the
`
`reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at
`
`678. “Where a complaint pleads facts that are ‘merely consistent with’ a defendant’s liability, it
`
`3
`
`

`

`‘stops short of the line between possibility and plausibility of “entitlement to relief.’” Id. quoting
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`Twombly, 550 U.S. at 557.
`
`In considering a motion brought under Rule 12, the court considers the complaint itself,
`
`documents attached to the complaint, documents critical to the complaint and referred to in it,
`
`and information subject to judicial notice. Prince v. Dart, 2015 WL 3798435 *1 (N.D. Ill.
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`2015). But still, the requirement to accept an allegation in a complaint as true is “inapplicable to
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`legal conclusions.” Iqbal, 556 U.S. at 678. “Threadbare recitals of the elements of a cause of
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`action, supported by mere conclusory statements, do not suffice.” Id. In other words, a pleading
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`that merely offers “labels and conclusions,” a “formulaic recitation of the elements,” or “naked
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`assertions” will not be sufficient to state a claim upon which relief can be granted. Id. at 678
`(citations and internal quotation marks omitted). Indeed, Rule 8 if the Federal Rules of Civil
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`Procedure “does not unlock the doors of discovery for a plaintiff armed with nothing more than
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`conclusions.” Id. at 678-679.
`
`IV.
`
`This Court Should Dismiss TWD’s Opposition in Its Entirety
`
`A.
`
`TWD Lacks Standing to Bring the Opposition
`
`As a threshold issue, to challenge a mark, a petitioner must plead and prove that it has
`
`standing, in addition to proving that there is a valid ground for challenge. Young v. AGB Corp.,
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`152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998). The statutory standing requirements
`
`are clear. Only a person “who believes that he would be damaged by the registration of a mark
`
`upon the principal register…may, upon payment of the prescribed fee, file an opposition in the
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`Patent and Trademark Office.” 15 U.S.C. § 1063.2 To challenge a mark, a challenger must show
`
`
`2 An identical requirement applies to petitions to cancel. See 15 U.S.C. § 1064. The Federal Circuit has held
`that both are interpreted constituent with one another. See Young, 152 F.3d at 1379-1380 (“When construing
`the requirements of [§ 1063], it is instructive to consider its sister provision, [§ 1064], which allows for
`the cancellation of a previously registered mark… There is no basis for interpreting them differently”).
`
`4
`
`

`

`“(1) that it possesses standing to challenge the continued presence on the register of the subject
`
`registration and (2) that there is a valid ground why the registrant is not entitled under law to
`
`maintain the registration.” Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1026
`
`(C.C.P.A. 1982). “The standing requirement is based on the statutory requirement that a
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`cancellation petitioner must believe that ‘he is or will be damaged by the registration.’” Young,
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`152 F.3d at 1379-1380 citing Lipton, 670 F.2d at 1028-1029. For nearly 50 years, the law has
`
`demanded that an opposer must establish that he has a “real interest” in the outcome of a
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`proceeding to have standing. See, e.g., Universal Oil Prod. Co. v. Rexall Drug & Chem. Co., 59
`
`C.C.P.A. 1120, 463 F.2d 1122, 1123, 174 USPQ 458, 459 (C.C.P.A.1972) ( “Standing, within
`
`the meaning of § 13, is found when the opposer establishes a real interest in the proceeding.”
`
`(internal citation omitted)). The “real interest” mandate stems from a policy of preventing “mere
`
`intermeddlers” who do not raise a real controversy from bringing oppositions or cancellation
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`proceedings in the PTO. See Lipton, 670 F.2d at 1028. Accordingly, an opposer “must have a
`
`legitimate personal interest in the opposition.” Bank v. Al Johnson's Swedish Rest. & Butik, Inc.,
`
`795 F. App'x 822, 823 (Fed. Cir. 2019) internal citations omitted. Furthermore, more than an
`
`empty “belief of damage” required. To avoid dismissal, any belief of damage must be more than
`
`a subjective belief; it must have a “reasonable basis in fact.” Universal Oil Prod., 463 F.2d at
`
`1124.
`
`TWD purports to represent the interests of the USPTO and the public. Such allegations
`
`are immaterial and should be rejected. The sole issue under §1063 is whether TWD has a real
`
`interest. It does not.
`
`
`
`
`
`5
`
`

`

`The mark at issue is GRUNT STYLE. Throughout the entire “Standing” diatribe TWD
`
`inserted in its Notice (see 91254347-OPP-5, p. 2-3, ¶¶1-3), TWD never asserts that it has the
`
`right to use GRUNT STYLE. TWD never asserts that it has ever used the GRUNT STYLE
`
`mark. TWD never asserts that it has ever used any trademark that is in any way similar to the
`
`GRUNT STYLE mark. TWD never asserts that any likelihood of confusion would arise due to
`
`Grunt Style’s registration of its GRUNT STYLE trademark.
`
`Instead, TWD purports to be the defender of the rule of law for all “American business
`
`owners that believe that trademark laws must be applied evenhandedly.” 91254347-OPP-5, p. 2,
`
`¶ 1. For no discernable factual reason, Plaintiff states: “Opposer has a reasonable belief of
`
`damage.” 91254347-OPP-5, p. 3, ¶ 2. The Notice is devoid of any facts to support that naked
`
`assertion. Instead, the Notice just drips with saccharine sentiment that Grunt Style’s registration
`
`will single handedly drag America down to a third world country if not for TWD’s willingness to
`
`swing the sword of justice. That is just as frivolous as the opposition filed in Bank v. Al
`
`Johnson's Swedish Rest. where the Federal Circuit affirmed the TTAB’s determination that one
`
`man’s desire to be the champion the respect, dignity and worth of goats which was offensive to
`
`himself and “numerous persons” is not at all sufficient for standing. See 795 F. App'x at 824-
`
`825.3
`
`
`
`In view of TWD’s failure to allege any anything more than a conclusory unfounded
`
`“belief” that it may suffer some abstract “competitive harm,” its Notice must be dismissed.
`
`TWD has no standing to oppose Grunt Style’s registration.
`
`3
`
`
`The Federal Circuit held that notice to be frivolous and granted Swedish Restaurant’s motion for sanctions. Id.
`at 827.
`
`6
`
`

`

`B.
`
`TWD Lacks Standing to Challenge Grunt Style’s Assignment and Thus
`Lacks Standing to Assert its Bases for Opposition
`
`Aside from a general lack of standing to maintain the opposition, TWD specifically lacks
`
`standing to assert its bases of opposition. TWD asserts that Grunt Style somehow abandoned its
`
`entitlement to its mark GRUNT STYLE because, according to TWD, Grunt Style (Georgia)
`
`could not assign its rights to Grunt Style (Illinois). Its purported claim of fraud also rests solely
`
`on that allegation. TWD has no standing to contest the validity of the assignment between Grunt
`
`Style (Georgia) and Grunt Style (Illinois).
`
`As an initial matter, an assignment is nothing more than a contract, and when parties have
`
`filed an executed assignment with the USPTO, the Court presumes the assignment is valid. See
`
`SiRF Tech., v. ITC, 601 F.3d 1319, 1327 (Fed. Cir. 2010) (“The recording of an assignment with
`
`the PTO is not a determination as to the validity of the assignment.... However, we think that it
`
`creates a presumption of validity as to the assignment and places the burden to rebut such a
`
`showing on one challenging the assignment.”). The contract here was entered into in Illinois by
`
`an Illinois company and a Georgia company. Illinois follows the conflict of law provisions set
`
`forth in the Restatement (Second) Conflict of Law. Ingersoll v. Klein, 46 Ill.2d 42, 45, 262
`
`N.E.2d 593 (1970). Under the Restatement, Illinois utilizes the “most significant contacts” test
`
`with respect to contracts. Olsen v. Celano, 234 Ill.App.3d 1045, 1050, 175 Ill.Dec. 799, 600
`
`N.E.2d 1257 (1992). Illinois law governs.
`
`To have standing, a party much have suffered an injury in fact that is both “concrete and
`
`particularized.” Lujan v. Defenders of Wildlife, 504 U.S. 555, 560–61, 112 S.Ct. 2130, 119
`
`L.Ed.2d 351 (1992); see also Edgewood Manor Apartment Homes, LLC v. RSUI Indem. Co., 733
`
`F.3d 761, 771 (7th Cir. 2013). A litigant must assert his or her own legal rights, rather than the
`
`rights of a third party. Rawoof v. Texor Petroleum Co., 521 F.3d 750, 757 (7th Cir. 2008).
`
`7
`
`

`

`Particularly, under Illinois law, a third party lacks standing to challenge the validity of an
`
`assignment. Bank of America Nat’l Ass’n v. Bassman FBT, L.L.C., 2012 IL App (2d) 110729, ¶
`
`16, 981 N.E.2d 1 (2nd Dist. 2012).4
`
`Here, the parties to the assignment are Grunt Style (Georgia) and Grunt Style (Illinois).
`
`Neither have challenged the validity of the assignment. TWD has no connection to either. TWD
`
`is nothing but a third party intermeddler. Accordingly, TWD has no standing to bring its
`
`complaints of abandonment and fraud because TWD has no ability to challenge the
`
`presumptively valid assignment.
`
`C.
`
`TWD’s Opposition Is Barred by Collateral Estoppel
`
`Issue preclusion, or collateral estoppel, is defined as “the preclusive effect of a judgment
`
`that prevents a party from litigating a second time an issue of fact or law that has once been
`
`decided.” Murphy v. Gallagher, 761 F.2d 878, 879 (2d Cir.1985). The District Court sitting in
`
`the Northern District of Illinois has already decided that TWD has no standing to challenge
`
`Grunt Style’s alleged improper use of “®” in association with the mark GRUNT STYLE because
`
`TWD has no basis to claim any harm based on that alleged misuse. That issue is decided and
`
`cannot be resurrected by TWD in an alternate proceeding such as the present opposition.
`
`Indeed, TWD raised the same complaints before United States District Courts that it now
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`attempts to bring before the Trademark Office. Grunt Style first sued TWD for, among other
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`things, trademark infringement of Grunt Style’s common law trademark rights in the mark THIS
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`WE’LL DEFEND. Grunt Style v. TWD, Civil Action No. 1:18-cv-01736 (N.D.Ill. March 9,
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`2018). TWD retaliated by filing a complaint against Grunt Style. TWD v. Grunt Style, Civil
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`4
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`The one exception—not applicable here—being that a borrower facing foreclosure on an assigned mortgage
`may raise a defense that an assignment is void. Id.
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`8
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`Action No. 18-cv-0532 (S.D.Ca. March 13, 2018). In that case, TWD brought claims against
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`Grunt Style including one for false marking based on an alleged improper use of “®” by Grunt
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`Style. See Exhibit A, p. 20, ¶45. That case was transferred to the Northern District of Illinois,
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`and after some procedural wrangling not relevant here, those two cases were essentially
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`consolidated in a new action, TWD v. Grunt Style, Civil Action No. 1:18-CV-07695, in which
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`Grunt Style reasserted its claims as counterclaims. Exhibit C.
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`Grunt Style further moved to dismiss TWD’s false marking claim for lack of standing.
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`Exhibit D, p. 8. In that motion, Grunt Style pointed out that 1) TWD has never alleged that it
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`used the mark GRUNT STYLE; 2) TWD has never alleged that it used the phrase “Grunt Style”
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`in association with its products; and 3) TWD has never alleged that it has the right to use the
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`mark GRUNT STYLE in association with the advertisement or sale of its products. Exhibit D, p.
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`3. Grunt Style further established that TWD’s claim failed precisely because TWD had no real
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`interest in Grunt Style’s GRUNT STYLE mark—a prerequisite for any §1125(a) claim. Indeed,
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`the law states that to bring a claim under §1125 “a plaintiff must allege an injury to a commercial
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`interest in reputation or sales.” Lexmark Intern., Inc. v. Static Control Components, Inc., 572
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`U.S. 118, 123 (2014). That is, a plaintiff must show “economic or reputational injury flowing
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`directly from the deception wrought by the defendant’s advertising; and that occurs when
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`deception of consumers causes them to withhold trade from the plaintiff.” Id.
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`The Court agreed with Grunt Style and dismissed TWD’s claim for lack of standing.
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`Exhibit A, pp. 11-12. Specifically, the Court held:
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`The complaint is devoid of any allegations regarding TWD’s
`injured reputation or sales. At no point does TWD state that
`consumers would confuse the “GRUNT STYLE” words for a
`TWD product. Even assuming there were sufficient allegations
`regarding TWD’s injury, the causation element would still be
`lacking. TWD does not allege that the use of a false registration
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`9
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`symbol after the words “GRUNT STYLE” would impact TWD’s
`reputation or sales. As such, TWD has not established a factual
`basis for its standing on the unregistered mark claim.
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`Exhibit A, p. 12, emphasis added. TWD did not appeal that ruling. Instead, it abandoned its
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`claim and filed an amended complaint without it. Exhibit E.
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`
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`The threshold issue before the Court with respect to TWD’s §1125 claim, and the
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`threshold issue in TWD’s Notice before the Board are identical: has TWD asserted any factual
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`basis that could support a real interest in Grunt Style’s GRUNT STYLE mark?
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`The answer is a resounding “NO” as the District Court already held.
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`TWD tried to claim harm due to Grunt Style’s use of the mark GRUNT STYLE and
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`alleged misuse of “®” before the District Court and lost. It lacked standing to bring its claim for
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`wont of a real interest. It was unable to remedy the deficiencies in its district court complaint
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`and it abandoned its claim entirely. TWD is now barred by the doctrine of issue preclusion from
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`relitigating the same issue before the Board.
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`D.
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`Even if All of TWD’s Alleged Facts Were True, TWD Still Fails to Assert a
`Valid Basis for Opposing Grunt Style’s Registration of GRUNT STYLE
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`1.
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`TWD’s Claim of Non-Use Is Immaterial
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`TWD does not even pretend that it would be damage. Indeed, while other sections
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`purport to incorporate TWD’s generic “belief of competitive harm,” Claim 1 does not. See
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`91254347-OPP-5, p. 3, ¶¶ 4-7.
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`Even setting that failure aside, Claim 1 does not set forth a basis for opposing the mark.
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`All TWD does is complain about the specimen submitted. That is an improper attack on the
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`Examining Attorney, not on the legitimacy of Grunt Style’s entitlement to its trademark. In any
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`case, had there been an issue with Grunt Style’s specimen, the appropriate action would have
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`been simply for the Examining Attorney to request a substitute—not bar registration. See TMEP
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`10
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`§ 904.07; TFSR § 2.59. TWD’s Claim 1 is both inadequately pleaded and cannot support the
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`relief it seeks. It must be dismissed.
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`2.
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`TWD’s Claims of Abandonment and Fraud Fail
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`TWD’s allegations of abandonment and fraud each fail to state a claim. Even if
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`everything TWD alleges were true, nothing in TWD’s Notice constitutes abandonment. TWD’s
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`fraud allegation is wholly contingent on abandonment, and as noted, any claim for abandonment
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`is not supported.
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`Under 15 U.S.C. § 1127, a trademark is considered abandoned if “its use has been
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`discontinued with the intent not to resume such use.” “‘Abandonment being in the nature of a
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`forfeiture, must be strictly proved’” by a preponderance of the evidence. Double Coin Holdings,
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`Ltd. V Tru Dev., No. CANCELLATION 9206380, 2019 WL 4877349, at *19 (Oct. 1, 2019)
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`quoting P. A. B. Produits et Appareils de Beaute, v. Satinine Societa in Nome Collettivo Di S.A.
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`E. M. Usellini, 570 F.2d 328, 196 USPQ 801, 804-05 (CCPA 1978).
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`TWD’s Notice states that Grunt Style filed a petition to revive its trademark application
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`on April 4, 2014, and that on April 5, the application was revived. In a wholly conclusory
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`statement, TWD then alleges that Grunt Style ceased all trademark use on May 15, 2014.
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`91254347-OPP-5, ¶17. According to TWD that is because of a perceived one month gap
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`between when Mr. Alarik filed termination papers for Grunt Style (Georgi