Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1059087
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`Filing date:
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`06/01/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91254454
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`JRS Management L.L.C.
`
`JOHN L KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PKWY SUITE 800
`LAS VEGAS, UM 89169
`UNITED STATES
`trademarkslv@dickinsonwright.com, jkrieger@dickinsonwright.com,
`jcraft@dickinsonwright.com
`702-550-4400
`
`Opposition/Response to Motion
`
`Jennifer Smith
`
`jjsmith@dickinsonwright.com, trademarkslv@dickinsonwright.com,
`ndkramer@mindspring.com
`
`/s/ Jennifer Smith
`
`06/01/2020
`
`JRS DIPPED SANDWICHES- Opp to Mot to Strike Aff Def
`91254454.pdf(146088 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91254454
`
`Mark:
`
`JR.’S DIPPED SANDWICHES
`
`(Serial No. 88/219446)
`International Class 043
`Published: November 12, 2019
`
`
`
`FOOD FOR JUNIORS INC.,
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`
`
`
`
`Opposer,
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`vs.
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`JRS MANAGEMENT L.L.C.,
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`
`
`
`
`Applicant.
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`
`
`OPPOSITION TO MOTION TO STRIKE CERTAIN AFFIRMATIVE DEFENSES
`ASSERTED BY APPLICANT AND MOTION TO SUSPEND PENDING
`DETERMINATION OF MOTION
`
`JRS Management L.L.C. (“Applicant”), a Nevada limited liability company, with a
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`
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`principal place of business in Las Vegas, Nevada, owner of the JR.’S DIPPED SANDWICHES
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`(Ser. No. 88/219446) mark (the “Mark”), by and through counsel, hereby responds to the
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`Opposer’s Motion to Strike Certain Affirmative Defenses Asserted by Applicant, Motion to
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`Suspend Pending Determination of Motion, and Motion to Consolidate Proceedings filed by Food
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`For Juniors, Inc. (“Opposer”).
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`
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`Opposer’s motion to strike Applicant’s validly pled affirmative defenses is untimely and
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`must be denied. Moreover, the motion fails to identify any prejudice from allowing Applicant’s
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`affirmative defenses to proceed. In the alternative, the Board should grant Applicant leave to
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`amend its affirmative defenses.
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`I.
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`
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`LEGAL STANDARD
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`The Trademark Trial and Appeal Board (the “Board” or “TTAB”) may “order stricken
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`from a pleading any insufficient defense or any redundant, immaterial, impertinent, or scandalous
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`matter.” See TBMP 506.01; see also Fed. R. Civ. P. 12(f). However, the Board and Federal Circuit
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`view motions to strike with disfavor and rarely grant them. Wash. Mut., Inc. v. United States,
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`
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`1
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`

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`130 Fed. Cl. 653, 704 (Fed. Cl. 2017); Fisherman's Harvest, Inc. v. United States, 74 Fed. Cl. 681,
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`690 (2006); Great Adirondack Steak & Seafood Cafe, Inc. v. Adirondack Pub & Brewery, Inc.,
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`2015 TTAB LEXIS 321, at *7-8 (T.T.A.B. Mar. 30, 2015). As a result, the Board will not strike
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`an affirmative defense as insufficient if the insufficiency is not clearly apparent, or if it raises
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`factual issues that should be determined on the merits. See TBMP § 506.01; Great Adirondack
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`Steak & Seafood Cafe, Inc., 2015 TTAB LEXIS, at *7-8. Moreover, the primary purpose of the
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`pleadings is to give fair notice of the claims or defenses asserted. See id., at *8; see also TBMP §
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`506.01; see also TBMP §§ 309.03 and 311.02. The Board, in its discretion, may decline to strike
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`even objectionable pleadings where their inclusion will not prejudice the adverse party. See Harsco
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`Corp. v. Elec. Scis. Inc., 9 U.S.P.Q.2d 1570 (T.T.A.B. 1988).
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`II.
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`LEGAL ARGUMENT
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`Opposer’s Motion Is Untimely.
`A.
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`A motion to strike a matter from a pleading should be filed within 21 days of service of
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`Applicant’s answer. TMBP § 506.02. Here, Applicant filed its answer on April 13, 2020, which
`means Opposer’s motion was due May 4, 2020. (4 TTABVUE.) However, Opposer waited to file
`its motion to strike until May 11, 2020, which was just two days before the discovery conference
`deadline.1 (5 TTABVUE.) Opposer’s motion is untimely must be denied on that basis.
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`
`
`
`
`
`B.
`
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`Opposer’s Motion to Strike Certain Affirmative Defenses Asserted by
`Applicant Should Be Denied
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`Setting aside its untimeliness, Opposer’s motion is without merit. An answer may include
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`a short and plain statement of any defenses, including affirmative defenses that the defendant may
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`have to the claim or claims asserted by the plaintiff. TBMP § 311.02(b); see also Fed. R. Civ. P.
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`8(b). Failure to raise an affirmative defense, results in waiver of that defense. See, e.g., Canedo v.
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`
` 1 To date, Opposer’s counsel has not scheduled or conducted the discovery conference. (2 TTABVUE.)
`2
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`
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`

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`Mad Man Motor Sports, L.L.C., 2019 TTAB LEXIS 348, *5 (T.T.A.B. Sept. 24, 2019). An
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`affirmative defense pleading should give plaintiff fair notice of the basis for the defense. See
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`TBMP § 311.02(b); see also IdeasOne Inc. v. Nationwide Better Health Inc., 89 U.S.P.Q.2d 1952,
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`1953 (T.T.A.B. 2009). In particular, a party need only allege enough factual matter to suggest its
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`defense is plausible and “raise a right to relief above the speculative level.” Corporacion Habanos,
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`S.A. v. Rodriguez, 2011 TTAB LEXIS 258, *3-4, 99 U.S.P.Q.2d (BNA) 1873, 1874 (Trademark
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`Trial & App. Bd. Aug. 1, 2011) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555-56, 127
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`S. Ct. 1955, 167 L. Ed. 2d 929 (2007)). Here, Applicant has provided fair notice of the basis for
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`its defense, which notice is far above a speculative level.
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`1.
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`Applicant properly pled a failure to state a claim affirmative defense.
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`Applicant properly asserted an affirmative defense for failure to state a claim in response
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`to Opposer’s allegation that the Mark is likely to be confused with Opposer’s JUNIOR’S Mark.
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`(See 1 TTABVUE ¶ 8.) See TBMP § 503.01; see also Peterson v. U.S., 68 Fed. Cl. 773, 776
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`(2005) (where a claim is insufficient, failure to state a claim upon which relief can be granted is
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`an appropriate affirmative defense).
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`
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`In determining whether confusion is likely, “[t]he issue is not whether the actual goods [or
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`services] are likely to be confused but, rather, whether there is a likelihood of confusion as to the
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`source of the goods [or services].” TMEP § 12.07.01. Thus, a likelihood of confusion is predicated
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`upon whether the relevant purchasing public would mistakenly believe that the Applicant's
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`services originated from the same source as the Opposer’s services. FBI v. Societe: “M. Bril &
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`Co.,” 172 U.S.P.Q. 310 (T.T.A.B. 1971).
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`
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`In order to sufficiently state a claim for likelihood of confusion, the Opposer must set forth
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`facts supporting the similarity of the marks in sight, sound, and/or meaning, similarity of the goods
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`3
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`

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`and/or services; similarity of the trade channels and classes of purchasers of the good and/or
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`services; the fame of Opposer’s mark, the similarity of the conditions under which buyers
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`encounter Opposer and Applicant’s marks; and the nature and extent of actual confusion. The
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`Wonderful
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`Co.,
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`LLC
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`v.
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`Earthwonderful
`
`LLC,
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`Opp’n
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`No.
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`91234849,
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`http://ttabvue.uspto.gov/ttabvue/v?pno=91234849&pty=OPP&eno=38 (citing In re E.I. du Pont
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`de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
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`
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`Here, Opposer merely asserts that confusion will arise because “JR.’S is . . . [a] regularly
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`used abbreviation of JUNIOR’S” and, because of this, there is a “similarity of the respective
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`parties’ marks and the complete overall of the services involved.” (1 TTABVUE ¶ 8.) Yet, Opposer
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`fails to allege it has ever been known by “JR.’S,” nor has Opposer alleged any priority for the
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`“JR.’S” mark. (See id generally.) The fact that the services may overlap is not dispositive,
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`particularly given the fact that USPTO has granted registrations for marks including “JR” in Class
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`43 for restaurant services. See, e.g., CARL’S JR. (Reg. No. 5,522,576) in Class 43 for restaurant
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`services; CARL’S JR. CHARBROILED BURGERS (Reg. No. 3,524,587) in Class 43 for
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`restaurant services; THE VARSITY JR. (Reg. No. 3,052,910) in Class 43 for restaurant services.
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`Moreover, there are numerous registrations for the JUNIOR/JUNIOR’S formative and variant
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`marks for restaurant services. See, e.g., JUNIOR COLUMBIAN BURGER (Reg. No. 4,205,279)
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`in Class 43 for Fast-food restaurant services; Restaurant services featuring colombian style
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`burgers, cheeseburgers, hot dogs, corncakes, quesadillas, salchipapas, chorizos, beef and chicken
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`skewers and empanadas; JUNIOR HOAGIE (Reg. No. 2,229,821) in Class 30 for sandwiches;
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`JUNIOR’S FOOD OUTLET (Reg. No. 2,391,956) in Class 42 for retail food services; and JR
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`4
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`

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`RESTAURANT GROUP (Reg. No. 5,570,917) in Class 43 for restaurant and bar services. (Reg.
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`No. 4,782,395).2
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`
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`And, while both marks would be used in connection with restaurant services, Opposer fails
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`to allege it has ever sold dipped sandwiches or that JUNIORS is famous for anything other than
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`cheesecakes. (See id generally.) See Long John Distilleries, Ltd. v. Sazerae Co., 426 F.2d 1406,
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`166 U.S.P.Q. 30 (C.C.P.A. 1970) (evaluating whether confusion exists between LONG JOHN and
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`FRIAR JOHN, both used for liquor and finding “the third party registrations of record are
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`themselves sufficient to establish that the word ‘John’ has been so frequently used as a part of
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`distilled beverage marks that it is incapable of indicating origin in any one source ... Further, the
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`board was of [the] opinion [] that, considered in their entireties, the differences in sound,
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`appearance and commercial impression of the two marks are obvious and one is in no way
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`suggestive of the other.”); see also Steve’s Ice Cream v. Steve's Famous Hot Dogs, 3 U.S.P.Q.2d
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`1477 (T.T.A.B. 1987) (evaluating whether confusion exists between STEVE’S for ice cream and
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`STEVE’s for restaurant services featuring hot dogs and finding “the numerous third party uses [of
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`STEVE'S, STEVE, STEVEN and STEPHEN] demonstrate that the purchasing public has become
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`conditioned to recognize that many businesses in the restaurant and food store fields use the term
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`2 There are also numerous common law usages of the JUNIOR/JUNIOR’S formative and variant marks for related
`goods and services. See, e.g., Juniors’, American restaurant, https://www.facebook.com/Juniors939Central/,
`California, Junior Barbecue Burger, Burgers https://www.yelp.com/biz/junior-barbecue-burger-san-francisco,
`California, Junior Barbour Seafood, Seafood, http://www.jandbseafood.com/, Alabama, Junior Fish & Chicken, Fried
`chicken, https://www.facebook.com/Junior-Fish-Chicken-179120192168908/, Indianapolis, Junior’s Bar & Grill,
`American
`restaurant, https://www.juniorsbarandgrill.com/, New York,
`Junior’s Barbecue, Barbecue,
`http://www.juniorsbarbecue.com/, Idaho, Junior’s Barbeque, Barbeque, https://www.yelp.com/biz/juniors-barbeque-
`red-oak-2, Texas, Junior’s Beef & Pork, Barbeque, https://www.facebook.com/juniorsbeefandpork/, Pennsylvania,
`Junior’s Café, Breakfast and brunch, https://www.yelp.com/biz/juniors-cafe-el-centro, California, Junior’s Café,
`Breakfast, http://www.juniorscafepdx.com/, Oregon, Junior’s Café & Creamery, Sandwiches and Ice Cream,
`http://www.juniorscafe.net/home.html, Michigan, Junior’s Café & Grill, Variety American family style,
`https://www.facebook.com/Juniors-Cafe-And-Grill-122331585292215/, Minnesota.
`5
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`

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`and that this purchasing public is able to distinguish between these businesses based on small
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`distinctions.”).
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`
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`There is simply no basis to strike Applicant’s affirmative defense of failure to state a claim.
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`There are significant concerns that Opposer has failed to state a claim for relief. Opposer’s claims
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`are not well plead and, as set forth above, call facts alleged in the Notice of Opposition into dispute,
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`which requires the motion to be denied. See U.S. v. Marisol, Inc., 725 F. Supp. 833,836 (M.D. Pa.
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`1989) (where the sufficiency of a defense depends on disputed issues of fact, a motion to strike
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`will not be granted). “An affirmative defense can be stricken ‘only if the defense asserted could
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`not possibly prevent recovery under any pleaded or inferable set of facts.’” Linker v. Custom-Bilt
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`Machinery, Inc., 594 F. Supp. 894, 898 (E.D.Pa. 1984) (quoting United States v. Pennsalt Chem.
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`Corp., 262 F. Supp. 101 (E.D.Pa. 1967)).
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`
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`Applicant has a legitimate basis upon which to defend against Opposer and its failure to
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`state a claim for likelihood of confusion.3 The Board should therefor deny Opposer’s motion to
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`strike Applicant’s failure to state a claim affirmative defense.
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`
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`2.
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`Applicant’s equitable defenses are sufficiently pled.
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`Opposer’s request to strike Applicant’s affirmative defenses for laches, estoppel, waiver,
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`acquiescence, and unclean hands defenses is without merit. (See 5 TTABVUE 4.) Laches and
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`acquiescence require a showing of undue delay in asserting rights against a conflicting mark and
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`prejudice therefrom. Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d
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`1572, 1580 (Fed. Cir. 1991). Relatedly, estoppel requires an affirmative act by Opposer that
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`Applicant relied on to its detriment. Id. at 1582. Here, Opposer admits in the Notice of Opposition
`
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`3 Whether or not a party’s asserted claim of defense can prevail is “a matter to be determined after the introduction of
`evidence at trial (or in connection with a proper motion for summary judgment).” Prosper Bus. Dev. Corp. v. IBM,
`2014 TTAB LEXIS 354, *13, 113 U.S.P.Q.2d (BNA) 1148, 1152 (T.T.A.B. Dec. 19, 2014) (citing Flatley v. Trump,
`11 U.S.P.Q.2d 1284, 1286 (T.T.A.B. 1989)); see also TBMP § 507.02.
`6
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`

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`that Applicant’s rights in the Mark derive from an assignment of a prior application in Class 43
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`for the identical mark filed initially in October 2014. (1 TTABVUE ¶¶ 12-13.4) See also JR.’S
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`DIPPED
`
`SANDWICHES
`
`(App.
`
`No.
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`86/415852)
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`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4805:5ar9yv.2.4.
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`(the
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`“Prior
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`JR.’S
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`Application”). The Prior JR.’S Application was published for opposition on October 13, 2015.
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`Id. USPTO issued a notice of allowance on December 8, 2015. Id. Notably, Opposer did not file
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`an opposition proceeding and failed to take any action during that proceeding. See TMBP §
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`311.02(b) (defenses of laches and acquiescence start to run from time the mark is published for
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`opposition). Because Opposer had constructive, if not actual knowledge, since at least 2015, its
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`claim is barred by laches. Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 980-81 (9th Cir.
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`2006). Opposer’s failure to take any action on the Prior JR.’S Application resulted in waiver and
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`estoppel to do so in this proceeding. Nat’l Cable, 937 F.2d at 1580, 1582. Similarly, Opposer
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`possibly comes to the Board with unclean hands for omitting details of prior knowledge and failure
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`to take action in its opposition. See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829,
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`841 (9th Cir. 2002) (“unclean hands ‘closes the doors of a court of equity to one tainted with
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`inequitableness or bad faith relative to the matter in which he seeks relief.’” Moreover, “the party
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`must have acted fairly…as to the controversy in issue.’”) (citations omitted).
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`
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`Furthermore, “because the correct disposition of the equitable defense of laches can only
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`be made ‘by a close scrutiny of the particular facts and a balancing of the respective interests and
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`equities of the parties, as well as of the general public,’ 2 J. MCCARTHY TRADEMARKS AND UNFAIR
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`COMPETITION 573 (2d ed. 1984), it usually requires the kind of record only created by full trial on
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`the merits.” Country Floors v. P’ship of Gepner and Ford, 930 F.2d 1056, 1066 (3d Cir.1991).
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`4 The Board may consider the Prior JR.’s Application as it is referenced in Opposer’s notice of opposition and forms
`the basis for Applicant’s affirmative defenses. (1 TTABVUE ¶¶ 12-13.)
`7
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`

`

`Because Opposer was on notice of the prior JR.’S application since at least October 13, 2015, the
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`Board should allow Applicant’s equitable affirmative defenses to stand.
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`
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`
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`C.
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`Alternatively, the Board Should Grant Applicant Leave to Amend
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`As a general rule, pleadings in opposition proceedings before the Board may be amended
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`in the same manner and to the same extent as pleadings in a civil action before a United States
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`district court. See TBMP § 315. TBMP § 507.01 provides that leave to amend pleadings shall be
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`freely given when justice so requires. See Fed. R. Civ. P. 15(a); see also Trademark Rules 2.116(a)
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`and (c); TBC Corp. v. Grand Prix Ltd., 1989 TTAB LEXIS 22, at *2, 12 U.S.P.Q.2d (BNA) 1311,
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`1313 (T.T.A.B. May 30, 1989) (granting a party’s motion to amend affirmative defenses because
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`“justice requires the Board to allow applicant to amend its answer so that all matters relating to the
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`opposition are properly before the Board”).
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`
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`In accordance with that principle, the Board liberally grants leave to amend pleadings
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`where the other party will not be prejudiced thereby. See Buffett v. Chi-Chi’s, Inc., 226 U.S.P.Q.
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`428 (T.T.A.B. 1985); see also Cool-Ray, Inc. v. Eye Care, Inc., 183 U.S.P.Q. 618 (T.T.A.B. 1974).
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`The question of prejudice is largely dependent upon the timing of the motion to amend. See
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`Charles Greiner & Co. v. Mari-Med Mfg., Inc., 962 F.2d 1031, 1038, 22 U.S.P.Q.2d (BNA) 1526,
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`1531 (Fed. Cir. 1992); Carolina Exps. Int'l v. Bulgari, S.p.A., 96-1446, 1997 U.S. App. LEXIS
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`4701, at *7 (Fed. Cir. Mar. 12, 1997) (affirming granting the motion for leave to amended because
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`“the opposition proceedings were still in the pretrial stage” at the time). Undue delay in moving to
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`amend may be prejudicial to the non-moving party. See Long John Silver's, Inc. v. Lou Scharf Inc.,
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`213 U.S.P.Q. 263 (T.T.A.B. 1982). An opposer will not suffer prejudice where an applicant seeks
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`to amend its answer to plead its affirmative defenses in “greater particularity.” Chesapeake Bank
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`v. Chesapeake Bank of Md., 2004 TTAB LEXIS 49, at *7 (T.T.A.B. Feb. 5, 2004).
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`8
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`

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`
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`To the extent the Board finds any deficiency with Applicant’s affirmative defenses, it
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`requests leave to amend. Opposer will not suffer prejudice by granting Applicant leave to amend
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`its affirmative defense because Applicant would seek only to add additional details to its existing
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`affirmative defenses. Applicant is not seeking to include additional affirmative defenses or claims.
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`Cf. Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783
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`(Fed. Cir. 1990). Instead, Applicant would amend its Answer to include information regarding
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`Opposer’s specific conduct. See Lincoln Logs Ltd. v. Lincoln Precut Log Homes, Inc., 971 F.2d
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`732, 735 (Fed. Cir. 1992).
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`
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`Furthermore, Opposer will not suffer prejudice because Applicant did not unduly delay in
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`requesting leave to amend its answer. On April 13, 2020, Applicant filed its Answer. (4
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`TTABVUE.) On May 11, 2020, Opposer filed its motion to strike. (5 TTABVUE.) Additionally,
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`this opposition proceeding is in the pretrial stage. Accordingly, Applicant did not unduly delay
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`and Opposer will not suffer prejudice if Applicant is granted leave to amend its Answer in the
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`alternative.
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`
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`
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`D.
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`Consolidation and Suspension
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`Applicant does not oppose Opposer’s Motion to consolidate this opposition proceeding
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`with the companion opposition proceeding, No. 91254456. Applicant also does not oppose
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`suspension of this proceeding pending a decision on the motion.
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`. . .
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`. . .
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`. . .
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`. . .
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`. . .
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`9
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`III. CONCLUSION
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`
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`For the foregoing reasons, the Board should deny Opposer’s motion. Alternatively, to the
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`extent the Board finds any deficiency in Applicant’s affirmative defenses, it should grant leave to
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`Respectfully submitted,
`
`DICKINSON WRIGHT PLLC
`
`
`
`
`
`__/s/ John L. Krieger, Esq.________
`John L. Krieger, Esq.
`jkrieger@dickinsonwright.com
`Jennifer Ko Craft
`jcraft@dickinsonwright.com
`3883 Howard Hughes Pkwy.
`Suite 800
`Las Vegas, Nevada 89169
`(702) 382-4002 (phone)
`(702) 382-1661 (fax)
`Attorneys for Applicant
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`amend.
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`
`
`Dated: June 1, 2020
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`10
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`CERTIFICATE OF SERVICE
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`I hereby certify that according to TBMP §311.01 (c) and 37 CFR § 2.119(b) a true and
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`
`
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`complete copy of the foregoing, was served via email on June 1, 2020 to the following address:
`
`
`NATHANIEL KRAMER
`KIRSCHSTEIN ISRAEL SCHIFFMILLER &
`PIERONI
`425 FIFTH AVENUE FIFTH FLOOR
`NEW YORK, NY 10016
`UNITED STATES
`ndkramer@mindspring.com
`Phone: (212)697-3750 (x135)
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`
`
`4817-2942-1758 v3 [66268-1]
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`___/s/ Jennifer Smith_________________
`An Employee of Dickinson Wright PLLC
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`11
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