Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1155955
`
`Filing date:
`
`08/27/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91255161
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Chris W. Taylor Jr.
`
`J CURTIS EDMONDSON
`EDMONDSON IP LAW
`2660 SE 39TH LOOP
`SUITE D
`HILLSBORO, OR 97123
`UNITED STATES
`Primary Email: jcedmondson@edmolaw.com
`503-336-3749
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Opposition/Response to Motion
`
`J. Curtis Edmondson
`
`jcedmondson@edmolaw.com
`
`/s/ J. Curtis Edmondson
`
`08/27/2021
`
`NER 1002 PET OPPOSITION TO MSJ TO FILE 20210826 optimized
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Chris W.Taylor,Jr.
`
`Opposition No.: 91255161
`
`Plaintiff/Opposer,
`
`Application No.: 88/125,640
`
`Mark:
`
`
`
`Three Frog, LLC
`
`Defendant/Applicant.
`
`Publication Date: December 10, 2019
`
`Filing Date: September 20, 2018
`
`TAYLOR’S OPPOSITION TO THREE FROG’S MOTION FOR SUMMARY
`
`JUDGMENT, TAYLOR’S MOTION FOR SUMMARY JUDGMENT, TAYLOR’S
`CROSS MOTION FOR SUMMARY JUDGMENT, AND REQUEST FOR ENTRY OF
`SUMMARY JUDGMENTIN FAVOR OF TAYLOR UNDERFRCP56(f)
`
`Pursuant to TMEP 528 and Fed. R. Civ. P. 56 (J, Chris W. Taylor, Jr. (““Opposer”,
`
`“Plaintiff” or “Taylor”) requests that the Board deny summary judgment to Three Frog, LLC
`
`(“Applicant”, “Defendant”, and “Three Frog’) and grant summary judgment in Taylor’s favor
`
`against Three Frog under FRCP 56(f).
`
`To summarize, Three Frog would like a reward of trade dress rights for a common
`
`unadorned container under the Lanham Act, while falsely sending DMCA under the Copyright
`
`Act. Principles of legal equity should not reward one with the benefits of the Lanham Act where
`
`that same party misuses the Copyright Act.
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`I.
`
`SUMMARYOF THE OPPOSITION
`
`At issue is an applied for trade dress mark on an unornamented wood hexagon box
`
`(“hexagon box”) that has seven interior hexagon holding spaces.
`
`
`
`Application File Wrapper, Ex1-173
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`Three Frog has already been deniedthe right for a sculptural copyright on the hexagon box.
`
`(See Ex. 2). Despite being denied a copyright, Three Frog sent Taylor, and several other parties
`
`fraudulent DMCA take-down requests, claiming both trade dress rights and copyrights in this
`
`article of manufacture.
`
`From: Makerfot Thinghverse sc-raplyatingivernea.com
`Subject: Gontent Removal Request
`Qete: January 14, 2079 at 420 PM
`To: dca G) makeiniet coi
`
`Date: 01nd
`
`Deer Sir or Magan
`
`|, the undersigned, represent that the information in this notificahon is accurate and CERTIFY UNDER PENALTY OF PERJURY thet!
`amthe owner or an agent authorized to action behal of the canerot certain intellectual property, send owner being named Quentin
`Walr Owner’). | have gand tality bale thet the materiais gentified below ara not authodzead by tha above Owner, ite agent, orine
`lew and theretona infringe or vinlate the Owner's rights. Plaase act expactioualy to remove or disable access to the material or tema
`dlained to be infinging or violating Owner's rights.
`
`Description of the intringing or unauthorinedt suas
`The worke infringe on our eculptural copyright of our Hex Chest dice boxes. Current and original examples can be found
`below: hitpestwweeldenvoodacadenycom hex-chest-dlice-bowea! htipaswkick etartercomprojects15041f06d4/hex-
`chesis
`
`identification of the material on our services: that you claims infringing and that you requaal us-to remove. Inchude tha UALS or Thing
`[De for tha conitant In question
`bitpe:www.thingl verse comthing: 3242479 hthpaswww.thinglversecomthing: 2652404
`hitpesteww.thinglverss.comthing: 2933300 htpeswew.lhingiverse comthing:2564784
`hitpestannathinglverse. combing 3074181 httpe:www.thingiverse comvthing: 3062079
`hitpevienwew.thinglverse. comthing-2703900 httpeswew.hingiverse comthing:3238119
`hitpe:www.thinglveras.combing -2870278
`
`Pigaae exqplalnowhy the-above kentitted material ¢.untewtul. Include identticeton of the work(s) or nights thet youraim to have bean
`infringed, including any link or other enttying Information to the work or nights in question, and any additional information regarding
`Slaged infringermant that may be relevant,
`We bellevethe Heme above infringes Three Frog LLC dba Elderwood's Intellectual property, Incliding Copyright (case
`fummiber 1-B86106057) and Trade Drees (eerial number 8872508) for he shaped dice boxes with beehive interior designs. We
`undersiand that thers ie me fll will at work here and this ia likely an honee! mistake, bul Elderwood ia obligated to enforce ite
`intellectual property. Wie own the Copyright to the aculptural deeign of Hax Cheat products, Including the interlar beehive
`design, and we furiher own lhe Trade Dress rights over the same aesthetic Hex Chee ehape with the beehive Interior design.
`Eldenwood Academy wae the first to creste andi eel this unique and the original Hex Chest design in 2014. Our designe are
`trequently imitated and thee imitations may create the perception that the designs are open to broader use withoul license
`oF permisaion. We aek that you reepect this notice and remove the named Meme from the etere. Thank you! <3 Quentin and
`Dan
`
`Denay be: Gonbacted at
`
`Quentin Weir
`087 jackson read, sults 200
`Arn Are Michigan 44703
`
`Bidarwoodbanead?greall.com
`TA4657 1685 Fax:
`
`DMCANotice, Ex.3.
`
`This notice was sent after Three Frog had been denied Copyright Registration.
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`Three Frog’s primary argumentis that Taylor does not have standing under 15 U.S.C.
`
`1063(a). Taylor has standing under the zone ofinterests test of Australian Therapeutic Supplies
`
`Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,1374 (Fed. Cir. 2020). Like in Jewelers Vigilance
`
`Comm., Inc. v. Ullenberg Corp. , 823 F.2d 490, 493 (Fed. Cir. 1987) a party does not have to have
`
`proprietary interests in a competing mark to have standing. Here, Taylor not only pled that he
`
`will be damaged, he has actually been damaged.
`
`Three Frog’s design do notpassthe trade dress functionality test of Traffix Devices Inc. v.
`
`Marketing Displays Inc., 532 U.S. 23 (2001). The hexagon box is: a simple, unadorned, box, that
`
`can hold dice, jewelry, loose change, or paperclips for legal briefs. Three Frog’s design also fails
`
`to function as a mark. Even if the box somehow falls outside the functionality test, Three Frog has
`
`not demonstrated acquired distinctiveness. Three Frog submitted numerous declarations, all
`
`identical and all with the same typos. Declarations of non-experts are inadmissible to show
`
`consumerperception of distinctiveness. There are numerous vendors of a similar box.
`
`Under principles of equity, Three Frog is barred from registration under the doctrine of
`
`administrative judicial estoppel and unclean hands. The Copyright Office has already held the
`
`hexagonal chest to be purely utilitarian and is not the proper subject of copyright. Three Frog
`
`should be allowed to send fraudulent copyright notices and at the same timealleged infringement
`
`of trade dressrights.
`
`When the application record is viewed as a whole, this application that should have been
`
`denied based on functionality alone.
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`Il.
`
`FACTUAL BACKGROUND
`
`1.
`
`Chris Taylor distributes “CAD files” allowing individuals to use 3-D printers to
`
`print various objects by first downloading these files from the Internet on the “Thingverse”
`
`website. (Taylor Declaration). One of these objects is a hexagonal design to hold various objects
`
`including playing dice. Taylor current opposes the registration of trade mark application
`
`88/125,640,
`
`2.
`
`Three Frog is a Michigan based limited liability company that goes by the name
`
`“Elderwood Academy.” Three Frog hasfiled a trade dress application, 88/125,640, for a hexagonal
`
`shaped box the “hexagon box”.
`
`PROCEDURAL BACKGROUND OF APLICATION 88/125,640
`
`3.
`
`On September 20, 2018, Three Frog filed a trademark application 88/125,640 (Ex.
`
`1, “Application”) claiming a design mark (“Hex Chest Mark’) with this description:
`
`The mark consists of (left) a drawing of a the bottom of a hex shaped box with a
`beehiveinterior, and (right) the top of the hex shaped box. (Ex 1-1).
`
`Three Frog asserted interstate use on October 2, 2014.
`
`In the miscellaneous comments
`
`section, the Applicant stated:
`
`Applicant believes this trade dress is inherently distinctive and does not
`require additional evidence. The arbitrary beehive design and hexagonal shape
`of the box and of each individual hexagonal
`sections of the chest,
`the
`hexagonal shapes being completely arbitrary and purely aesthetic, as any
`shape would work equally as well. (Ex 1-250.)
`
`4.
`
`On December4, 2018, the Examiner issued an office action refusing registration
`
`on a number of grounds. (Ex. 1-232 to 1-237). One of the grounds wasa refusal based on
`
`“Nondistinctive Product Design” under Trademark Act, Sections 1, 2, and 45. (Ex. 1-233).
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`5.
`
`On May 28, 2019, Three Frog filed a response to the Examiners Objections
`
`(“Application”). (Ex. 1-202 to 1-209). Three Frog amendedthe description of the Hex Chest Mark
`
`as:
`
`The mark consists of a three-dimensional configuration of the interior of a hex
`shaped box with a honeycombconfiguration of seven interior hexagonal
`indentations on the bottom of the box and the design of a six point star, having
`flat points, on the top of the box. The broken lines depicting circular magnets
`indicate placement of the mark on the goods and are not part of the mark.
`(Ex. 1-203).
`
`The Applicant did not argue that the Hex Chest Mark was non-functional, rather that Hex
`
`Chest Mark had acquired secondary meaning. (Ex. 1-203 to 1-204). [] In support of this argument,
`
`Applicant provided a list of tradeshows and three declarations by Dyke, Cameron, and Foulke.
`
`(Ex. 1-206 to 1-208, and 1-215 to 1-225). The three declarations submitted were identical and
`
`contained identical spelling errors.
`
`6.
`
`On June 18, 2019, the Examiner issued a second office action which refused
`
`registration on a numberof grounds.
`
`(Ex. 1-182 to 1-185). [] The Examinerinterpreted the May
`
`28, 2019 response as that Three Frog had argued that the Hex Chest Mark wasinherently distinctive
`
`and had acquired distinctiveness. (Ex. 1-183).
`
`7.
`
`On October 28, 2019, Three Frog requested reconsideration. (Ex. 1-21 to 1-181). []
`
`Three Frog did not present any argument to the Examiner, rather submitted new evidence
`
`consisting of new declarations with the same typographicalerrors. (See Ex. 1-164 through 1-173).
`
`8.
`
`On October 30, 2019, the Examiner approved the Hex Chest Mark for publication.
`
`(Ex. 1-10 to 1-20). Id.
`
`9. On April 7, 2020 this Opposition wasinstituted.
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`PROCEDURAL BACKGROUND OF HEX CHEST COPYRIGHT APPLICATION
`
`10.
`
`On August 23, 2018, Three Frog filed a copyright application for the “Hex Chest”
`
`and was assigned an application number SR 1-6886106851. (Ex 2-25 to 26).
`
`The Applicant
`
`called the Copyright Office requesting special handling. (Ex. 2-27).
`
`11.
`
`On October 24, 2018, The Copyright Office Examiner issued an office action
`
`(correspondence ID 1-38YLE8G)stating that the “Hex Chest” (Ex 2-22 to 2-23).
`
`12.
`
`On November 19, 2018, Three Frog requested reconsideration of the Copyright
`
`Application.
`
`13.
`
`OnApril 9, 2019, The Copyright Office denied reconsideration of the “Hex Chest”
`
`stating that the “Hex Chest’ was a useful article that does not contain any separable, copyrightable
`
`features” (Ex. 2-17).
`
`14.
`
`OnJuly 9, 2019, Three Frog made a second request for reconsideration. (Ex 2-3 to
`
`2-13).
`
`15.
`
`There is no record of Three Frog filing a petition with Copyright Office to seek
`
`further review ofthis application.
`
`TAYLOR’S OPPOSITION PROCEEDING
`
`16.
`
`On November 28, 2018, Taylor uploaded to Thingverse a file which, when printed
`
`on a 3D printer resembled Applicant’s hexagonal box. Taylor, using modelling software, made
`
`some minor changesto file, but did not alter the hexagon configuration. (Declaration of Taylor).
`
`17.
`
`On January 14, 2019, Three Frog’s owner, Quentin Weir, sent a DMCAnotice to
`
`Makerbot’s Thingverse.
`
`(Ex 3-1). Despite having their copyright rejected on October 24, 2018
`
`(See Ex 2- Quentin Weir falsely declared, under the penalty ofperjury, to Makerbot the following:
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`“We own the Copyright to the sculptural design of Hex Chest products, including the interior
`
`beehive design”. (emphasis added). (Ex 2-22).
`
`18.
`
`Taylor then disputed the validity of the DMCAnotice to Makerbot and Elderwood.
`
`(Declaration of Taylor).
`
`Il.
`
`AUTHORITY AND ARGUMENT
`
`A.
`
`SUMMARY JUDGMENT STANDARD
`
`Summary judgment is appropriate only where there are no genuine disputes of material
`
`fact, therefore allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). “[I]f the
`
`evidence is such that a reasonable jury could return a verdict for the nonmovingparty,” a factual
`
`dispute is genuine and summary judgmentis inappropriate. Anderson v. Liberty Lobby, Inc., 477
`
`U.S. 242, 248 (1986). The party seeking summary judgment bears the initial burden of
`
`demonstrating the absence of any genuinedispute of material fact. See Celotex Corp. v. Catrett,
`
`477 USS. 317, 323 (1986).
`
`Evidence on summary judgment must be viewedin a light most favorable to the non-
`
`movant, and all justifiable inferences are to be drawn in the non-movant's favor. Lloyd's Food
`
`Products, Inc.v. Eli's, Inc., 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, Inc. v. Great
`
`American Music Show, Inc., 23 USPQ2d 1471 (Fed. Cir. 1992) The Board may not resolve
`
`disputes of material fact; it may only ascertain whether disputes of material fact exist. See Lloyd's
`
`at 2029.
`
`Whenthe evidence is not in dispute, entry of judgment for the non-movant under Rule
`
`56(f)(1) is appropriate in view ofjudicial economy under Rule 1.
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`B.
`
`TAYLOR HAS STANDING AS AN INJURED PARTY UNDER15 U.S.C. 1063(A
`
`Three Frog claims that Taylor lacks standing (MSJ at 7-12). Taylor has statutory standing
`
`under Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 which
`
`was recently relied upon by Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965
`
`F.3d 1370 (Fed. Cir. 2020).
`
`1. Taylor has standing under the plain language ofthe statute.
`
`The enabling statute is clear:
`
`(a) Any person whobelieves that he would be damagedbytheregistration of a
`mark upon the principal register, ... may, upon paymentofthe prescribedfee,file
`an opposition in the Patent and Trademark Office, stating the groundstherefor...
`
`The language ofthis statute provides an extremely broad definition of the class of parties
`
`who may file an opposition proceeding. This includes people who have had a claim brought
`
`against them andthey use a cancellation proceeding against them. See Berhad v. Godaddy.com,
`
`Inc., 897 F.Supp.2d 856,870 (E.D. Cal. 2012).
`
`Taylor’s injury was not a hypothetical, instead he incurred actual injury when he had to
`
`resolve a DMCAtakedown request by Three Frog. At that point, Taylor could haveinitiated a
`
`civil action under the Copyright Act for a false DMCA notice, but, he elected to initiate an
`
`administrative proceeding under the Lahham Act. Under the Lanham Act, Taylor only had this
`
`option since as an opposition proceeding cannot be maintained asa civil action in the district
`
`courts. Continental Connector Corp. v. Continental Spec. Corp., 413 F.Supp. 1347,1348 (D.
`
`Conn. 1976)
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`

`

`2. Taylor is within the “Zone of Interests” of Australian Therapeutics and Coramore
`
`The test for standing in Australian Therapeutic was concisely explained by the Federal
`
`Circuit as:
`
`“,.a petitioner seeking to cancel a trademarkregistration establishes an
`entitlement to bring a cancellation proceeding under 15 U.S.C. § 1064 by
`demonstrating a real interest in the cancellation proceeding and a reasonable
`belief of damage regardless of whether petitioner lacks a proprietary interest in an
`asserted unregistered mark. Id. at 1372.
`
`To satisfy standing petitioner must satisfy the two-part,first the zone of interest test must
`
`be satisfied and the petitioner must show the injury was the proximate causeofthe violation ofthe
`
`statute. Obesity Research Inst., LLC v. Fiber Research Int'l, LLC, 310 F.Supp.3d 1089, 1105 (S.D.
`
`Cal. 2018). Any doubt as to standing should benefit the petitioner. /d.. The boundaries of those
`
`petitioners who outside the zone are “... a plaintiff's 'interests are so marginally related to or
`
`inconsistent with the purposes implicit in the statute.” Lexmark at 130. To determine these
`
`boundaries, one muststart with the clear language of the opposition statute, 15 USC 1063(a) “Any
`
`person whobelieves that he would be damagedbythe registration of a mark upon the principal
`
`register.” This language is almostidentical to the sister statute 15 USC 1064(a) whichstates “by
`
`any person who believes that he is or will be damaged...” which wasthe statute at issue in
`
`Australian Therapeutic.
`
`There is no requirement that the petitioner be a direct competitor or have a proprietary
`
`interest in a competing mark. Jewelers Vigilance Committee Inc. v. Ullenberg Corp.,823 F.2d 490,
`
`493 (Fed. Cir. 1987). Also, when standingis established on onebasis, the petitioner may challenge
`
`the application on all grounds. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1377
`
`(Fed. Cir. 2012). The question of standing is alleged based on the allegations of the pleadings, not
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`10
`
`

`

`the ultimate facts that were proven. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1032
`
`(Cust. Ct. 1982) “...a party who demonstrates a real interest in the proceeding has standing to
`
`litigate even though ultimately its allegation that he is or will be damagedis refuted.”
`
`To confer standing, Taylor must show thatthat he satisfies the low threshold ofAustralian
`
`Therapeutic Supplies Pty. Ltd, “zone of interest” and “proximate cause” test with very little
`
`evidence.
`
`a. TAYLOR CAME WITHIN THE “ZONE OF INTEREST” WHEN THREE FROG SENT
`FRAUDULENT DMCANOTICES TO THINGVERSE STATING THE FILE UPLOADED
`BY TAYLOR WASSUBJECT TO COPYRIGHT PROTECTION AND TAYLOR WAS
`
`INJURED DUE TO RESPONDING TO THE REQUEST.
`
`Three Frog does not dispute that Taylor uploadeda file to Thingverse that could be used
`
`to make a copy ofthe “Hex Chest”. There is also no dispute that Taylor makes videos about 3D
`
`printers and how theseprinters may be used to make various objects. There is no dispute that
`
`Three Frog caused this proceeding when it sent a DMCAnotice to take down.
`
`Three Frog makesthe following argumentin their opposition “Thingiverse was removed
`
`for several weeks because of Applicant’s copyright complaint under the DMCA,that had no
`
`relation to Applicant’s trademark Application.”.
`
`Three Frog’s argumentis factually incorrect. The DMCAnotice alleged a copyright
`
`infringement (where none existed) andit also stated as a basis for removingthefile as: “Trade
`
`Dress (serial number 8812564) for hex shaped dice boxes with beehive interior designs” . The
`
`DMCAnotice expressly referred to this trademark application. It is Three Frog’s DMCAnotice
`
`that joined the intellectual property rights at the hip.
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`11
`
`

`

`b. TAYLOR HAS A COMPETITIVE INTEREST THAT HAS BEEN INJURED EVEN IF HE
`DOES NOT SELL PHYSICAL “HEX CHESTS’, HIS DISTRIBUTION OF FILES THAT
`PRODUCE HEX CHESTS WOULD EXPOSE HIM AS A CONTRIBUTORY INFRINGER
`
`AND/OR TO THIRD PARTY WARRANTY CLAIMS.
`
`Three Frog argues that Taylor has to manufacture a “dice box” to suffer a competitive
`
`injury. This is a very narrow interpretation of the competitive injury test under the Lanham Act.
`
`See Trafficschool.Com Inc. v. Edriver Inc., 653 F.3d 820, 826 (9th Cir. 2011). There is no such
`
`requirementeither under Trafficshool.com or Lexmark International.
`
`OF
`
`TAYLOR HAS SUFFICIENTLY ALLEGED THAT THE HEXAGON BOX FAILS
`TO FUNCTION AS A MARK AND IS FUNCTIONAL
`
`Three Frog argues that summary judgment should be granted as the pleadings have not
`
`been amended per this Court’order. Pursuant to TBMP § 528.07(a), “[A] party may not obtain
`
`summary judgmenton an issue that has not been pleaded. See Fed. R. Civ. P. 56(a); See also Asian
`
`and Western Classics B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009) (petitioner
`
`cannot obtain summary judgment on an insufficiently pleaded fraud claim). Unpleaded issues
`
`cannot be a basis for entering summary judgment because:
`
`... at the summary judgmentstage of a proceeding before the Board, there
`has not yet been a trial of any issue, whether pleaded or unpleaded, and therefore
`the requirements of Fed. R. Civ. P. 15(b) for an amendment to conform the
`pleadings to the evidence cannot have been met.
`
`TBMP, § 528.07(a) - Not Basis for Entering Summary Judgment.
`
`“Generally, a party that
`
`seeks
`
`summary judgment on an unpleaded issue may
`
`simultaneously move to amendits pleading to assert the matter.” Asian and Western Classics B.V
`
`at 1480. . In Kidsart, Inc. v. Kidzart Texas, LLC, the TTABheld that when a party desires to pursue
`
`summary judgment on an unpleaded ground, the appropriate procedure is to move to amend the
`
`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
`
`12
`
`

`

`notice of opposition or petition to cancel. Id. See Kidsart, Inc. v. Kidzart Texas, LLC; 2006 WL
`
`2007542, at *_ (TTAB 2006).
`
`In Hurley International, LLC v. Volta, after the TTAB deniedits initial motion, the opposer
`
`filed a combined motion to amendits notice of opposition and a motion for summary judgment.
`
`Despite claims of prejudice by the applicant, the TTAB held that leave to amend should be freely
`
`given, citing Fed. R. Civ. P. 15(a) and TBMP § 507.02. Hurley International, LLC v. Volta, 2007
`
`WL 196407 (TTAB 2007). See also Asics Corp. v. Paragon Development Corp., 2007 WL 775578
`
`(TTAB 2007); Drive Trademark Holdings v.
`
`Inofin, 2007 WL 616039 at *_ (TTAB
`
`2007); and Florida Engineered Construction Products Corp. v. Cast-Crete Inc., 2006 WL
`
`1087855 (TTAB 2006).
`
`Here, Three Frog arguesthat the issues of failure to function as a trademark and trademark
`
`functionality (under the functionality doctrine) have both been deemedinsufficiently pleaded. See
`
`Applicant’s Brief at 35. While it is clear under the Supreme Court’s holding under Twombly that
`
`Taylor was only required to give sufficient notice of the opposition proceeding. Belmora LLCv.
`
`Bayer Consumer Care AG, 819 F.3d 697, 705 (4th Cir. 2016). Once notice is established, the
`
`complaint is be read broadly. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d
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`490, (Fed. Cir. 1987) holding “Once standingis established, the opposeris entitled to rely on any
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`of the groundsset forth in section 2 of the Lanham Act which negate applicant's rightto its subject
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`registration. Id. at 1031, 213 USPQ at 190; citing Warth v. Seldin, 422 U.S. 490, 501.
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`To the extent that Three Frog will be prejudiced, Taylor moves herein to amendits notice
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`of opposition to sufficiently plead both issues. Both issues are ripe for summary judgment. “For
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`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
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`purposesof determining the summary judgment motion, the Board will deem such newallegations
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`to be denied if no amended answeris accepted and of record at the time.” TBMP, § 528.07(a).
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`D.
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`THE HEXAGONAL BOX IS FUNCTIONAL
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`Functional matter cannot be protected as a trademark. 15 U.S.C. §§1052(e)(S) and (f),
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`1064(3), 1091(c), and 1115(b). The functionality doctrine prevents trademark law, which seeks to
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`promote competition by protecting a firm’s reputation,
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`from instead inhibiting legitimate
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`competition by allowing a producerto control a useful product feature. It is the province of patent
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`law, not trademark law, to encourage invention by granting inventors a monopoly over new
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`product designsor functionsfor a limited time, 35 U.S.C. §§ 154, 173, after which competitors are
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`free to use the innovation.If a product’s functional features could be used as trademarks, however,
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`a monopoly over such features could be obtained without regard to whether they qualify as patents
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`and could be extended forever (because trademarks may be renewedin perpetuity). Qualitex Co.
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`v. Jacobson Prods. Co., 514 U.S. 159, 164-165, 34 USPQ2d 1161, 1163 (1995).
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`In its application, the functionality doctrine bars protection for useful or aesthetically
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`pleasing trade dress even when a would-be-infringer’s use of the same trade dressis likely to
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`confuse consumers. The scope of the doctrine has to do with what is required to bar protection
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`beyond the fact that the feature serves someutilitarian or aesthetic purpose important to the
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`product’s value. See, e.g., Vornado Air Circ. Sys,, Inc. v. Duracraft Corp., 58 F.3d 1498 (10th Cir.
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`1995); (distinguishing between de facto functionality and de jure functionality).
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`Trade dress is de facto functional whenit is functional in the ordinary lay sense; that is,
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`whenit actually contributes to what the product is supposedto do. Trade dress is de jure functional
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`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
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`whenit is legally barred from trademarkprotection. Thus, de facto functionality is a necessary but
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`not a sufficient condition for de jure functionality.
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`The standard for the functionality doctrine originated from the CCPA in the Morton-
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`Norwich case of 1982. Morton-Norwich involved the overall exterior shape of a spray container,
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`whichincluded the design of the bottle and its spray top. The Trademark Trial and Appeal Board
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`refused to register the shape on the groundthat it was legally functional under the Restatement
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`rules. The Morton-Norwich court reversed. It found that the bottle “can have an infinite variety of
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`forms or designs andstill function to hold liquid” and that the spray top can take many different
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`formsandstill spray perfectly well. It concludedthat “we do not see that allowing the applicant to
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`exclude others from using his trade dress will hinder competition or impinge upon the rights of
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`others to compete effectively in the sale of the goods” Jn Re Morton-Norwich Products, Inc. 671
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`F.2d 1332 at 1342; (CCPA 1982); emphasis added by Opposer.
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`But Morton-Norwich does not override the doctrine of functionality that ordinary
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`functional features must be configured in an arbitrary, fanciful, or distinctive way to qualify as
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`trade dress. That is because, as our Supreme Court has said, product design almost invariably
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`serves purposes other than source identification.” TrafFix, 532 U.S. at 29 (quoting Wal Mart
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`Stores, Inc. v. Samara Bros., 529 U.S. 205, 213 (2000)).
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`E.
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`APPLICANT’S HEX CHEST PRODUCT DESIGN FAILS TO FUNCTION AS A
`TRADEMARK.
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`In the event that an applicant should ultimately prevail on the question of functionality, the
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`Board turns to the question of whether the applicant’s evidence in support of its claim of acquired
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`distinctiveness is sufficient to overcomea refusal grounded in Trademark Act Sections 1, 2 and
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`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
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`45. The USPTO will not register an applied-for mark unlessit functions as a mark. See 15 U.S.C.
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`§§1051, 1052, 1053, 1127; In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976).
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`Inre UDOR U.S.A, Inc., 89 USPQ2d 1978 (TTAB 2009) is quite similar to the instant case
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`at hand. The Board first determined, in that case, that the applicant’s mark was functional, using
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`the Morton-Norwich test. Then, the Board went on to consider, (assuming arguendo that the
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`applicant’s product design was not functional) whether the design was registrable based upon
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`acquired distinctiveness. See Wal-Mart Stores Inc. v. Samara Brothers Inc., 529 U.S. 205, 54
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`USPQ2d 1065 1068-69 (2000).
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`In that case, the applicant’s product design comprised an ordinary device such that many
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`third parties were using similarly-shaped configurations. In re UDOR U.S.A, Inc., at 23. The Board
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`intimated: “As with a highly descriptive literal mark, a registration may not issue except upon a
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`substantial showing of acquired distinctiveness.” /d. citing: In re D.C. Comics, Inc., 689 F.2d 1042,
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`215 USPQ 394, 401-02 (CCPA 1982) (J. Nies, concurring).
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`Next, the Board turned to UDOR’s evidence in the application’s file wrapper. The Board
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`found no statements from the ultimate users of the device and the few declarations from the
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`industry were deemed “simply insufficient.” /d. at 25; See In re Dimitri's Inc., 9 USPQ2d 1666
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`(TTAB 1988).
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`Consequently, the Board held that UDOR’s evidence wasinsufficient to prove acquired
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`distinctiveness, andit affirmed this alternative refusal to register.
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`Here, Applicant’s evidence before the Examining Attorney submitted to prove acquired
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`distinctiveness is in the form of declarations from Drew Foulke (1-40), Nicholas Dyke, (1-35)
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`Mike Cameron, (1-34) and Norse Foundry Doug Johnson (1-169), Ted Sikora (1-172), amongst
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`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
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`others, See Ex. 1-177. Like UDOR,these declarations are from the Applicant’s industry, not the
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`ultimate users of the product design. Further, Applicant provides no evidence of “look for”
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`advertising. In re UDOR U.S.A, Inc., at 25. Additionally, there is no evidence in Quentin Weir’s
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`declaration (1-43) or elsewhere in the record as to the extent of Applicant’s sales of goods under
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`the alleged mark, either in terms ofdollars or units. /d. at 26.
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`Accordingly, Applicant’s purported evidence of the effectiveness of its attempts to cause
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`the purchasing public to identify the alleged mark with the source of its product design is
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`insufficient to overcomea failure to function as a trademark refusal. See In re Owens-Corning
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`Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985).
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`F.
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`THE REGISTRATION SHOULD BE DENIED FOR LACK OF SECONDARY
`MEANING AS THE DECLARATIONS ARE INADMISSIBLE EVIDENCE OF
`ACQUIED DISTINCTIVENESS
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`Three Frog contends that they have sufficient evidence of secondary meaning as having
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`acquired distinctiveness. To establish acquired distinctiveness, an applicant must showthatin the
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`minds of the public, the primary significance of a product feature or term is to identify the source
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`of the product rather than the productitself. Jn re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116
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`USPQ2d 1262, 1265 (Fed. Cir. 2015)
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`For Three Frog to support a registration as supported by acquired distinctiveness from an
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`evidentiary standpoint, one musteither: 1) provide survey evidence of consumers of hexagonal
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`box in such a manner that the evidence can be considered reliable; and/or 2) opinion testimony
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`from a qualified expert where that evidence would be admissible under FRE 702. See Daubertv.
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`Merrell Dow Pharms., Inc., 509 U.S. 579, 591-94 (1993). Since Three Frog failed to designate an
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`expert for this proceeding, one can only rely on the evidence submitted before the Examiner.
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`Taylor’s Opp to Mo for Summary Judgmentand
`Request for Entry of Judgment to the Non-Movant
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`17
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`The evidence presented before the Examiner consists declarations from Drrew Foulke (1-
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`40), Nicholas Dyke, (1-35) Mike Cameron, (1-34) and Norse Foundrry Doug Johnson (1-169),
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`Ted Sikora (1-172), amongst others, See Ex. 1-177.. All of t