Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1149674
`
`Filing date:
`
`07/28/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91255161
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Three Frog, LLC
`
`STEPHEN MCARTHUR
`THE MCARTHUR LAW FIRM PC
`9465 WILSHIRE BLVD SUITE 300
`BEVERLY HILLS, CA 90212
`UNITED STATES
`Primary Email: stephen@smcarthurlaw.com
`323-639-4455
`
`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: 07/29/2021
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Stephen McArthur
`
`stephen@smcarthurlaw.com
`
`/Stephen McArthur/
`
`07/28/2021
`
`2021.07.28. Elderwood MSJ re Standing (final).pdf(296683 bytes )
`Exhibit A to Summary Judgment-compressed.pdf(4895444 bytes )
`Exhibits C-D-compressed.pdf(532994 bytes )
`Exhibit B-compressed_compressed.pdf(6202837 bytes )
`
`

`

`A.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91255161
`
`Application Serial No. 88/125,640
`Filed: September 20, 2018
`Published: December 10, 2019
`Mark: Hex Shaped Box
`
`
`
`
`CHRIS W. TAYLOR, JR.,
`
` Opposer,
`
` v.
`
`THREE FROG, LLC,
`
` Applicant.
`
`
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`Applicant Three Frog, LLC (“Applicant”) moves pursuant to Rule 56(a) of the Federal
`
`Rules of Civil Procedure and TBMP § 528 for summary judgment in its favor in this opposition
`
`brought by Opposer Chris W. Taylor, Jr. (“Opposer”) to Applicant’s U.S. Trademark Serial No.
`
`88/125,640. The applicable records of the U.S. Patent & Trademark Office, the pleadings, and
`
`record evidence establish that Opposer lacks standing to bring this opposition, and Applicant is
`
`therefore entitled to judgment as a matter of law.
`
`Alternatively, with regard to Opposer’s Count One, as the Board has already found,
`
`Opposer has failed to state a claim upon which relief can be granted, and Applicant is entitled to
`
`judgment as a matter of law on that claim.
`
`With regard to Opposer’s Count Three, undisputed evidence shows Applicant was using
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`the applied-for trade dress in commerce long before the 2018 filing date of the Application.
`
`Because Opposer cannot offer record evidence to create a genuine dispute on this issue, summary
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`judgment on Count Three is also warranted.
`
`INTRODUCTION
`
`The undisputed facts show Opposer has no commercial interest at issue and is not a
`
`purchaser of Applicant’s dice boxes or seller of similar dice boxes. Rather, Opposer is a mere
`intermeddler who filed this opposition only because, as he testified under oath, he had “nothing to
`
`
`
`1
`
`

`

`lose and an axe to grind” due to his subjective dislike of Applicant’s attempt to register its trade
`
`dress. Opposer cannot demonstrate facts under which he has a statutory cause of action. As such,
`
`there are no disputed material facts that would preclude the Board from entering summary
`
`judgment as a matter of law in Applicant’s favor due to Opposer’s lack of standing.
`Further, with regard to Opposer’s Count One, the Board found in its order granting
`Opposer’s motion for leave to amend that Opposer’s original claim and proposed amended claim
`“d[id] not sufficiently plead a claim of either failure to function or functionality.” [15 TTABVUE
`
`12-13] Despite being given leave to file a second amended notice of opposition, Opposer never
`
`did so. Count One thus remains exactly as it was when the Board found it did not state a claim
`
`upon which relief could be granted and should be dismissed if not amended.
`
`Opposer’s Count Three also fails to create a genuine dispute of fact, as there is undisputed
`
`documentary evidence and testimony that Applicant has been using its dice box trade dress in
`
`commerce since 2014—long before the September 2018 filing date of the Application. Opposer
`
`cannot offer any evidence to support its allegation that Applicant failed to use its mark in
`
`commerce prior to the filing date. Therefore, even if the Board finds Opposer has standing,
`
`Applicant is entitled to judgment as a matter of law on Counts One and Three.
`
`I.
`
`STATEMENT OF UNDISPUTED FACTS
`
`Undisputed Facts Regarding Applicant
`
`1.
`
`Applicant is a company that makes and sells role-playing game accessories,
`
`including wooden boxes that can be used to store dice such as those commonly used in games like
`
`Dungeons & Dragons. See Exhibit (“Ex.”) A filed herewith (Deposition of Quentin Weir (“Weir
`Depo.”) 63:21-63:16, 84:12-18.
`In August and September of 2014, Applicant’s founders, Quentin Weir and Daniel
`
`2.
`
`Reiss, designed a wooden dice box with a particular hexagonal outer shape and hexagonally-
`
`shaped internal compartments (the “Hex Chest box”). On or about September 7, 2014, Mr. Weir
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`created a CAD design file that became the final version of the Hex Chest box. In the following
`
`days, Mr. Weir and Mr. Reiss manufactured dozens of wooden copies of the Hex Chest box. Weir
`
`
`
`2
`
`

`

`Depo. 17:2-19:9, 132:8-20, Deposition Exhibit (“Depo. Ex.”) 2.
`
`3.
`
`Photographs and video of this woodworking and manufacturing of those very first
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`Hex Chest boxes were documented on Imgur and then shared to Reddit on September 10, 2014,
`
`with updated new photographs and video posted on September 24, 2014. Weir Depo. 24:9-25:22;
`
`Exhibit B filed herewith (Declaration of Stephen McArthur filed herewith (“McArthur Decl.”)),
`Attachment (“Att.”) 1.
`
`4.
`
`Applicant first sold Hex Chest boxes in early September and October 2014 through
`
`direct messages via Reddit. Some of those sales were to out-of-state residents. Weir Depo. 19:13-
`
`31:5, 38:3-43:15, 137:2-141:2, Depo. Exs. 11, 12.
`
`5.
`
`In mid-October 2014, Applicant began using the Dazzle Designer software to track
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`orders and sales of Hex Chest boxes. Applicant’s Dazzle Designer account was run by Mr. Weir.
`Attached to Mr. Weir’s declaration are copies of order and shipping records regarding several of
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`the orders for Hex Chest boxes that were placed in October 2014. These included sales to out-of-
`
`state residents. Weir Depo. 24:9-25:22, 137:2-141:2, Depo. Exs. 11, 12.1
`
`6.
`
`Applicant also launched a Kickstarter campaign on October 2, 2014, where 1,028
`
`individuals from around the world paid $60,689 to order over a thousand copies of the Hex Chest
`
`box. Weir Depo. 24:1-26:1, 50:14-25, Depo. Ex. 3. This Kickstarter page is still publicly available
`
`at https://www.kickstarter.com/projects/keyring-spellbooks/hex-chests (last visited July 6, 2021).
`
`7.
`
`Applicant has sold Hex Chest boxes continuously from 2014 to the present. Weir
`
`Depo. 33:2-38:2, 57:20-77:19, 113:5-14:12, Depo. Ex. 12.
`
`8.
`
`Applicant ran a second Kickstarter campaign for its Hex Chest box in August 2017
`
`that resulted in $88,823 of total Hex Chests sales delivered to 994 different customers. McArthur
`
`Decl., Att. 2.
`
`9.
`
`Applicant ran a third Kickstarter campaign for its Hex Chest box in March 2018
`
`that resulted in $108,776 of total Hex Chests sales delivered to 2,028 different customers. Weir
`
`
`1 Personal identifying information has been redacted from this exhibit. Each line indicates a
`separate sale, and the city/state of the purchaser remains visible.
`
`
`
`3
`
`

`

`Depo. Ex. 6.
`
`10.
`
`Applicant’s Hex Chest box has been the subject of numerous blog and media
`
`articles that were released prior to September 2018. See, e.g., Weir Depo. Ex. 4.; McArthur Decl.,
`
`Att. 3.
`
`11.
`
`Applicant filed application Serial No. 88/125,640 (the “Application”) on
`September 20, 2018, seeking to register its trade dress in the Hex Chest boxes (the “Hex Chest
`Trade Dress”). Weir Depo. 134:11-36:4; McArthur Decl. Att. 4.
`
`Undisputed Facts Regarding Opposer
`
`12.
`
`Opposer is an individual who makes YouTube videos relating to 3D printing,
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`rocketry, and design. See Exhibit C filed herewith (Deposition of Chris Taylor (“Taylor Depo.”))
`
`at 8:8-18.
`
`13.
`
`Viewers of Opposer’s videos may donate money to Opposer via sites such as
`Patreon. Opposer’s videos may also contain affiliate links to products sold on Amazon. Taylor
`
`Depo. 9:7-13:17.
`
`14.
`
`Opposer does not sell any products. Donations from viewers and revenue from
`
`viewers who clicked on affiliate links to Amazon.com are Opposer’s primary source of income.
`
`Taylor Depo. Id.
`
`15. Within the last 20 years, Opposer has not sold a physical dice box to anyone.
`
`Opposer has never shipped a dice box to a customer. Nor has Opposer sold digital files to print
`
`dice boxes. Taylor Depo. 17:1-18:7; 29:10-30:5, 73:13-74:22, 85:6-22.
`
`16.
`
`Opposer obtained a file to make a 3D-printed version of a hexagonal dice box in or
`
`about mid-2018, from the website www.thingiverse.com (“Thingiverse”). The 3D print file
`obtained by Opposer had been uploaded by the user, Agrif (Aaron Griffith) (the “Agrif File”).
`
`Taylor Depo. 35:4-41:22.
`
`17.
`
`Thingiverse removed the Agrif File from its site in response to a copyright
`
`complaint submitted under the Digital Millennium Copyright Act (“DMCA”) by Applicant. Taylor
`
`Depo. Ex. 1.
`
`
`
`4
`
`

`

`18.
`
`Opposer retained a copy of the Agrif File. After the file was removed from
`
`Thingiverse, on or about November 29, 2018, Opposer re-posted the Agrif File to Thingiverse
`
`after asking for Agrif’s permission to do so. Taylor Depo. 39:11-42:21, Depo. Ex. 1; McArthur
`
`Decl., Att. 5 (Reddit conversation chain) at Taylor-000201-03 (Reddit posts made by user
`
`“nerys71” were made by Opposer).
`The genesis of Opposer’s involvement with Applicant began by this uploading of
`
`19.
`
`the digital Agrif File.2 At the time, Opposer wrote that he did so solely to shield Mr. Griffith from
`
`the potential consequences of having his name attached to the file and to create a conflict with
`
`Applicant. See McArthur Decl., Att. 5. Opposer wrote: “send me the file. I will repost it to
`thingiverse and tell [Elderwood] to go F OFF if they try to say anything about it.” Id. Opposer
`admitted in writing that he did this in order to protect Mr. Griffith (“he does not want his name
`attached to the endeavor. SO I am going to post it ‘as my own’ on thingiverse”). Id. (internal
`
`quotations placed by Opposer in original).
`
`20.
`
`In explaining his reasoning for why he would re-post the file, Mr. Taylor testified
`
`that it was because “I would like to spank [Elderwood] and make them squeal because they can’t
`own a hexagon.” Taylor Depo. 36:13-24.
`Opposer testified that he re-posted the Agrif File to Thingiverse because: “I don't
`
`21.
`
`like when people abuse the legal system in this country to try to claim monopolistic ownership of
`
`things they are not legally allowed to own.” Taylor Depo. 42:3-9.
`In Opposer’s email to Agrif asking for permission to re-post the Agrif File, Opposer
`wrote he wanted to re-post the file because “I have nothing to lose and an axe to grind :-) I like a
`
`22.
`
`challenge. . . . I just REALLY freaking hate it when people abuse copyright and the legal system
`
`to smash the little guy. really wrankles me good :-)” Taylor Depo. 42:3-9, Depo. Ex. 1.
`
`23.
`
`After Opposer re-posted the Agrif file to Thingiverse, Applicant submitted a
`
`
`2 All of this previous history between Opposer and Applicant has only involved a digital file
`containing and a copyright claim, not an actual physical dice box containing the applied-for mark
`or any trademark or trade dress claim.
`
`
`
`5
`
`

`

`copyright complaint under the DMCA to Thingiverse to have Opposer’s post removed. Taylor
`
`Depo. 43:1-13.
`
`24.
`
`The post was removed by Thingiverse for approximately 22 days in response to the
`
`copyright complaint and was then reinstated. That post is still publicly available on Thingiverse.
`
`Taylor Depo. 42:22-43:15.
`
`25.
`
`The removal of the 3D print file from Thingiverse had zero impact on Opposer’s
`income. Opposer admitted “[a] month takedown would probably cause basically zero impact” on
`
`his income. Taylor Depo. 68:3-18.
`
`26.
`
` After re-posting the Agrif File to Thingiverse, Opposer made a second post to
`
`Thingiverse of another 3D print file for a hexagonal dice box. That post has never been removed
`
`and is still available. Taylor Depo. 44:10-49:6, 49:22-50:6.
`
`27.
`
`Applicant has never sent any trademark- or trade dress-related takedown notices to
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`Opposer. Taylor Depo. 53:2-9.
`
`28.
`
`Opposer testifies (with zero corroborating evidence) that he gave away a handful
`
`of 3D-printed dice boxes for free at two 3D printing festivals in 2019. Those were the only physical
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`dice boxes that Opposer has ever purportedly distributed during the relevant time period. Opposer
`
`has no records at all to support his testimony. Taylor Depo. 30:6-31, 50:10-17.
`
`29.
`
`The photograph of hexagonal dice boxes in Opposer’s petition which purports to
`depict Opposer’s dice boxes does not actually show dice boxes made by Opposer. Rather, it is a
`
`photograph of dice boxes made by an unknown third party, which Opposer obtained from Etsy.
`
`Taylor Depo. 85:23-87:10.
`
`30.
`
`Opposer has never purchased a Hex Chest box from Applicant nor is there evidence
`
`that he intended to do so.
`
`The Board’s Prior Order on Count One
`31. With regard to Count One of Opposer’s original opposition notice, the Board found
`
`as follows:
`
`[I]n the original pleading it is unclear as to whether Count One is intended to assert
`
`
`
`6
`
`

`

`a claim that the mark fails to function as a trademark under Sections 1, 2, and 45 of
`the Trademark Act, or that the mark is functional under Section 2(e)(5) of the
`Trademark Act. Consequently, Opposer sufficiently pleads neither claim. See D.C.
`One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) (providing
`the failure to function standard). See also Qualitex Co. v. Jacobson Prods. Co., 514
`U.S. 159, 34 USPQ2d 1161, 1163-64 (1995) (articulating the functionality
`standard).
`
`[15 TTABVUE 12]
`
`32. With regard to the amendments to the opposition proposed by Opposer in his
`
`motion to amend, the Board found as follows:
`
`With respect to the proposed amendments to Count One, the amendments to add
`references to aesthetic and utilitarian functionality in amended ¶¶ 31 and 32 are
`acceptable in that they are timely (as noted above) and do not prejudice Applicant.
`8 TTABVUE 35. However, even in view of the amendments, and as with the
`original pleading, Opposer does not sufficiently plead a claim of either failure to
`function or functionality, and thus does not address or cure the deficiencies in the
`original notice of opposition.
`
`[15 TTABVUE 12-13]
`
`33.
`
`After finding Count One did not sufficiently plead a claim, the Board sua sponte
`
`allowed Opposer to file a second amended notice of opposition. [15 TTABVUE 13]
`
`34.
`
`The Board stated in its February 13, 2021, Order that if Opposer failed to remedy
`
`the deficiencies in Count One by filing a second amended notice of opposition, the Board would
`
`dismiss Count One for failure to state a claim upon which relief can be granted. [Id.]
`
`35.
`
`Opposer never filed a second amended notice of opposition. Opposer never made
`
`any further amendments to Count One other than the minor proposed changes that the Board had
`
`already reviewed and found did not sufficiently plead a claim. See Ex. D (redline of original Count
`
`One versus amended Count One).
`
`II.
`
`ARGUMENT
`
`B.
`
`Summary Judgment Standard
`
`A motion for summary judgment is a pretrial device intended to save the time and expense
`
`of a full trial when the moving party is able to demonstrate, prior to trial, that there is no genuine
`
`dispute of material fact, and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P.
`
`56(a); Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland USA Inc. v. Great Am. Music Show
`
`
`
`7
`
`

`

`Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Sweats Fashions Inc. v. Pannill Knitting
`
`Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The evidence on summary judgment is
`
`viewed in a light most favorable to the nonmoving party, and all reasonable inferences are drawn
`
`in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027,
`
`2029 (Fed. Cir. 1993).
`
`Where, as here, the non-moving party carries the burden at trial, the moving party may
`
`discharge its initial burden of production by either submitting affirmative evidence that negates an
`
`essential element of the nonmoving party’s claim or by demonstrating that the nonmoving party’s
`evidence is insufficient to establish an essential element of the claim.” See Celotex, 477 U.S. at
`
`321-26. If the movant successfully discharges its initial burden of production, the burden shifts to
`
`the nonmovant to demonstrate the existence of a genuine dispute for trial. Id. at 324. This requires
`
`more than showing the “mere existence of a scintilla of evidence in support of the [non-movant’s]
`position; there must be evidence on which the jury could reasonably find for the [non-movant].”
`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). In other words, the non-movant “must
`do more than simply show that there is some metaphysical doubt as to the material facts.”
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Rather, “the
`
`nonmoving party must come forward with specific facts showing that there is a genuine issue for
`
`trial.” Id. If the non-movant’s showing is insufficient to demonstrate that a genuine dispute exists
`
`on an essential element of the subject claim, the moving party is entitled to judgment as a matter
`
`of law. See Celotex, 477 U.S. at 322.
`
`Opposer Has The Burden of Proving Standing, Including (1) Satisfying the
`Zone-of-Interests Test, and (2) Showing Proximate Causation
`
`C.
`
`Opposer has the burden of proving, by a preponderance of evidence, that he has standing
`
`to pursue this opposition. See Sterling Jewelers Inc. v. Romance & Co., Inc., 110 USPQ2d 1598
`
`(TTAB 2014) (“Opposer, as the plaintiff in this proceeding, has the burden of proof to establish,
`
`by a preponderance of the evidence, that it has standing and a ground upon which relief may be
`
`granted.”); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
`
`
`
`8
`
`

`

`Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
`
`(CCPA 1982). The Federal Circuit has recently clarified that standing in an opposition or
`
`cancellation proceeding is viewed through the lens of a plaintiff’s entitlement to bring or maintain
`
`a statutory cause of action. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303-05 (Fed. Cir.
`
`2020), cert. denied, No. 20-1309, 2021 WL 2044561 (U.S. May 24, 2021). To satisfy the
`
`requirements to maintain an opposition, the opposer “must demonstrate (i) an interest falling
`within the zone of interests protected by the statute and (ii) proximate causation.” Id. The evidence
`
`submitted by Applicant shows Opposer cannot satisfy either of these elements, and Opposer cannot
`
`1.
`
`carry his burden of showing the existence of a genuine dispute of fact.
`
` Opposer Cannot Satisfy the Zone-of-Interests Test; He is An Admitted
`“Self-Appointed Guardian of the Purity of the Register” and No More
`Opposer is the definition of a “mere intermeddler” who has no interest but guarding the
`“purity of the Register.” That is not sufficient to confer standing. The zone-of-interests test is
`intended to bar a suit “when a plaintiff's interests are so marginally related to or inconsistent with
`
`the purposes implicit in the statute that it cannot reasonably be assumed that Congress authorized
`
`that plaintiff to sue.” Corcamore, 978 F.3d at 1305 (quoting Lexmark Int'l, Inc. v. Static Control
`Components, Inc., 572 U.S. 118, 130 (2014). This test “share[s] a similar purpose and application”
`to the Board’s long-standing “real-interest requirement” whose purpose is to “distinguish parties
`
`demonstrating a real interest from mere intermeddlers or meddlesome parties acting as self-
`
`appointed guardians of the purity of the Register.” Corcamore, 978 F.3d at 1305 (quoting Selva &
`Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1326 (Fed. Cir. 1983)). Indeed, the “real interest”
`element of the standing test is specifically intended to “to preclude meddlesome parties from
`instituting proceedings as self-appointed guardians of the purity of the Register.” Lipton, 670 F.2d
`
`at 1027; Norac Co. v. Occidental Petroleum Corp., 197 USPQ 306, 320 (TTAB 1977).
`
`In Corcamore, the parties sold similar goods (food and vending machines) under nearly
`
`the same marks (SPROUTS and SPROUT), leading the Federal Circuit to conclude the petitioner
`
`had identified a legitimate commercial interest falling within the zone of interests and had thus
`
`
`
`9
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`

`

`pleaded allegations sufficient to demonstrate a right to challenge [the registrant’s] registered
`mark . . . .” 978 F.3d at 1306. Similarly, in Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
`F.3d 1270 (Fed. Cir. 2014), the Federal Circuit found standing existed where the petitioner’s
`
`trademark application had been refused based on a likelihood of confusion with the registered
`
`mark at issue. Id. at 1275. The Federal Circuit explained that “the desire for a registration with its
`‘attendant statutory advantages’ is a ‘legitimate commercial interest,’ so to satisfy the requirements
`for bringing a cancellation proceeding . . . .” Id. In stark contrast, Opposer here has no commercial
`interest whatsoever in preventing Applicant’s Application for its Hex Chest trade dress from
`
`registering. Opposer is not in the business of selling dice boxes or related products, has not sold
`
`dice boxes within the last 20 years, and is not a consumer who has purchased dice boxes. See
`
`Taylor Depo. 17:1-18:7; 29:10-30:5, 73:13-74:22, 85:6-22. Opposer has not applied to register a
`
`trademark that was rejected because of the pending Application. Opposer did not even create the
`
`3D print file for a hexagonal dice box that was the original basis for Applicant’s copyright
`complaint to Thingiverse. See Taylor Depo. 39:11-42:21. Rather, Opposer’s sole involvement with
`Applicant was as an intruding gadfly—Opposer re-posted the Agrif File to Thingiverse, and
`subsequently pursued this opposition, because, as he stated, “I don’t like when people abuse the
`
`legal system in this country to try to claim monopolistic ownership of things they are not legally
`
`allowed to own.” Taylor Depo. 42:3-9, Depo. Ex. 1. This opposition is nothing more than a
`continuation of Opposer seeking to “spank them and make them squeal because they can’t own a
`hexagon.” Taylor Depo. 36:13-24. The facts of this case demonstrate that Opposer appointed
`
`himself to police the trademark Register, trying to prevent Applicant from registering its trade
`
`dress because Opposer did not believe the Application was legally registrable. That is the very
`
`definition of a “mere intermeddler” who is without a valid, real interest that falls within the zone-
`
`of-interests test for standing. See Corcamore, 978 F.3d at 1305; Selva & Sons, 705 F.2d at 1326;
`
`Lipton, 670 F.2d at 1027.
`
`This case is more analogous to NSM Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029
`
`(TTAB 2014) (precedential). There, the Board granted registrant Microsoft’s motion to dismiss
`
`
`
`10
`
`

`

`finding no standing to support petitioners’ challenge to Microsoft’s XBOX360 registration that
`was based on petitioners’ ownership of registrations for the word HUCK, and Microsoft’s use of
`the word “huck” several times in its videogame user manuals. Id. The Board found that “even if
`petitioners do suffer damage by respondent’s distribution of its user manuals, that damage has
`nothing to do with respondent’s registered mark.” Id. slip op. at 7-8. Thus, the petitioners failed to
`allege facts supporting standing “[b]ecause the petition and petitioners’ arguments show that it is
`not the continued registration of respondent’s XBOX 360 mark that is harming petitioners (and
`that, as a consequence, the mark’s cancellation cannot help), petitioners have no personal stake in
`
`this proceeding to cancel the XBOX 360 registration, and no reasonable belief of damage caused
`
`by the continued subsistence of the XBOX 360 registration.” Id. at 8. Likewise, Opposer has no
`personal stake in opposing registration of Applicant’s Hex Chest trade dress, he just does not like
`
`it and is acting the self-envisioned superhero. Nor does Opposer have any reasonable belief the
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`registration of the Application would cause him damage—he does not compete with Opposer, and
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`he has not alleged any facts that would prove his YouTube video business would be impacted in
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`any way if the Application were to register.
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`In NSM, the Board made a point that is relevant here:
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`[I]f standing to oppose or seek cancellation of a registration could be based on a
`defendant’s mere use of a term in written materials, without more, and no matter
`how tangentially related to a registered mark, trademark owners would be
`discouraged from registering their marks, contrary to public policy encouraging
`registration. Moreover, unscrupulous plaintiffs could file baseless proceedings not
`contemplated by the Trademark Act for harassment or other improper purposes.
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`Id. at 7 n.5. If the Board finds Opposer here falls within the zone-of-interest test based on nothing
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`more than his needless intervention into a copyright-related dispute between Applicant and Agrif
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`involving the digital file Agrif uploaded to Thingiverse, and Opposer’s subsequent prosecution of
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`this proceeding merely because he does not like that Applicant is seeking to register its trade dress,
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`there would be no limit on who has standing to seek to oppose or cancel a registration. If the
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`standard is merely “I don’t like it,” everyone will have standing, or they can claim as much in
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`order to harass, or seek payment from, applicants or registrants. That runs contrary to the purpose
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`of the Lanham Act to encourage registration of marks. See id. Rather than going down that
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`exceedingly slippery slope, the Board should find Opposer is a self-appointed Register guardian
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`who cannot prove has an interest that falls within the “real interest” or zone-of-interests test. As
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`such, Opposer lacks standing to bring the instant opposition. See Corcamore, 978 F.3d at 1305;
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`Lipton, 670 F.2d at 1027.
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`2.
` Opposer Cannot Prove Proximate Causation
`Opposer also cannot show proximate causation necessary to support standing. A “statutory
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`cause of action is limited to plaintiffs whose injuries are proximately caused by violations of the
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`statute.” Lexmark, 572 U.S. at 132. As the Supreme Court noted, “the proximate-cause requirement
`generally bars suits for alleged harm that is ‘too remote’ from the defendant’s unlawful conduct,”
`and “[t]hat is ordinarily the case if the harm is purely derivative of misfortunes visited upon a third
`person by the defendant’s acts.” Id. at 133. In the context of a § 1125(a) false advertising claim,
`the Lexmark Court held that, to demonstrate proximate causation, a plaintiff “must show economic
`or reputational injury flowing directly from the deception wrought by the defendant’s advertising;
`and that that occurs when deception of consumers causes them to withhold trade from the plaintiff.”
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`Id. Applying Lexmark to a trademark cancellation, the Federal Circuit in Corcamore explained
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`that the petitioner satisfied the proximate cause requirement by alleging that, because goods sold
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`under its SPROUTS trademark and the registrant’s SPROUT trademark were substantially similar,
`“purchasers will be led to the mistaken belief that [petitioner’s] goods and [registrant’s] goods
`originate from the same source, or that [registrant’s] use of SPROUT has been sponsored,
`authorized, or warranted by [petitioner], all to [petitioner’s] detriment.” 978 F.3d at 1307. Those
`allegations demonstrated the petitioner’s “reasonable belief of damage resulting from a likelihood
`of confusion between [its] SPROUTS mark and [registrant’s] SPROUT mark.” 978 F.3d at 1307
`citing Lipton, 670 F.2d at 1029 (“To establish a reasonable basis for a belief that one is damaged
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`by the registration sought to be cancelled, a petition may assert a likelihood of confusion which is
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`not wholly without merit.”)).
`
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`Here, Opposer cannot offer record evidence sufficient to establish a genuine dispute of
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`material fact as to whether Applicant proximately caused Opposer to suffer an economic injury
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`flowing directly from Applicant’s trademark application. Unlike the petitioner in Corcamore,
`Opposer does not sell any products that are similar to Opposer’s Hex Chest dice boxes. See Taylor
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`Depo. 17:1-18:7; 29:10-30:5, 73:13-74:22, 85:6-22. Nor does he have any other reasonable basis
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`to believe consumers might be confused between Applicant’s applied-for trade dress and any
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`goods or services offered by Opposer. Opposer makes YouTube videos about 3D printing; he does
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`not sell dice boxes. Taylor Depo. 9:7-13:17. Opposer chose to inject himself into the Thingiverse
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`dispute between Agrif and Applicant out of nothing more than the desire to make Applicant
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`“squeal” for claiming copyright in its dice box design. Taylor Depo. 36:13-24, 42:3-9. That cannot
`support proximate causation. Further, while Opposer’s subsequent re-post of the Agrif File to
`Thingiverse was removed for several weeks because of Applicant’s copyright complaint under the
`DMCA, that had no relation to Applicant’s trademark Application. Moreover, Opposer admitted
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`that his post was reinstated, the takedown caused zero financial impact upon Opposer, and a
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`follow-up post to Thingiverse relating to another hexagonal dice box file has never been removed.
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`See Taylor Depo. 44:10-49:6, 49:22-50:6, 68:3-18. Thus, there is no evidence that any action of
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`Applicant’s has proximately caused Opposer any cognizable harm whatsoever. Opposer therefore
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`cannot carry his burden of proving by a preponderance of evidence that he can satisfy both steps
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`of the Lexmark standing test. Because the undisputed facts demonstrate Opposer is a mere
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`intermeddler who cannot demonstrate a real interest in this proceeding or any cognizable injury
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`that was proximately caused by Applicant, the Board should find Opposer lacks standing and grant
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`D.
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`summary judgment in Applicant’s favor.
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`Opposer’s Count One Fails to State a Claim Upon Which Relief Can Be
`Granted and the Board Has Already Found It Should Be Dismissed
`Even if the Board finds Opposer has standing, it should still dismiss Opposer’s Count One
`for failure to state a claim upon which relief can be granted. “The defense of failure to state a claim
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`upon which relief can be granted . . . may be raised, after an answer is filed, by a motion for
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`judgment on the pleadings, by a motion for summary judgment, or at trial.” TBMP § 503.01; DAK
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`Indus. Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1436 (TTAB 1995).
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`Here, the Board has already found Opposer’s Count One fails to state a claim. Opposer
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`filed his original notice of opposition on April 8, 2020, reciting a first count purporting to allege
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`functionality or failure to function as a trademark. [1 TTABVUE ¶¶ 23-26] On October 14, 2020,
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`Opposer filed a motion to amend the opposition. [8 TTABVUE] The Board granted the motion to
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`amend on February 2, 2021 [15 TTABVUE] However, with regard to Opposer’s Count One, the
`Board stated “in the original pleading it is unclear as to whether Count One is intended to assert a
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`claim that the mark fails to function as a trademark under Sections 1, 2, and 45 of the Trademark
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`Act, or that the mark is functional under Section 2(e)(5) of the Trademark Act.” [15 TTABVUE
`12] “Consequently, Opposer sufficiently pleads neither claim.” [Id. (citing D.C. One Wholesaler,
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`120 USPQ2d at 1713; Qualitex, 34 USPQ2d at 1163-64)] And the Board found that the minor
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`changes Opposer had proposed to make to Count One, “to add references to aesthetic and utilitarian
`functionality,” still did not state a valid claim. [15 TTABVUE 12-13] Rather, “even in view of the
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`amendments, and as with the original pleading, Opposer does not sufficiently plead a claim of
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`either failure to function or functionality, and thus does not address or