Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1158468
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`Filing date:
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`09/09/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91255161
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`Party
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`Correspondence
`Address
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`Defendant
`Three Frog, LLC
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`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
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Reply in Support of Motion
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`Thomas Dietrich
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`tom@smcarthurlaw.com, stephen@smcarthurlaw.com
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`/Thomas Dietrich/
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`09/09/2021
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`Attachments
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`2021.09.09. Elderwood Reply ISO MSJ FINAL (for filing).pdf(167988 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No.: 91255161
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`Application Serial No. 88/125,640
`Filed: September 20, 2018
`Published: December 10, 2019
`Mark: Hex Shaped Box
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`CHRIS W. TAYLOR, JR.,
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` Opposer,
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` v.
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`THREE FROG, LLC,
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` Applicant.
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`APPLICANT’S REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`Opposer Taylor is the quintessential “self-appointed guardian of the Register” who lacks
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`standing to bring this proceeding. Opposer does not deny he has never purchased or sold a single
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`dice box bearing the Applicant’s Hex Chest Trade Dress. Opposer bases standing solely on a
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`declaration, which vaguely claims, with no actual evidence or business plans, that he may at some
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`point in the future want to distribute similar dice boxes printed from his personal 3D printer on an
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`ad hoc basis. But if the Board finds Opposer has standing here, then anyone would have standing
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`at any time to challenge any trademark application. That is contrary to the purposes of the Lanham
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`Act as well as Board and Federal Circuit precedent.
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`Opposer acknowledges he failed to comply with the Board’s order to properly plead Count
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`One regarding functionality. [15 TTABVUE 12-13] The Board gave Opposer 30 days to amend
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`his pleading and he never did so. [Id. at 13] He offers no reason at all for that failure. Rather than
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`allow a belated amendment after discovery has closed, which would prejudice Applicant, the
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`Board should abide by its prior order and dismiss Opposer’s Count One, which Opposer had clear
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`notice was not properly pled.
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`Opposer does not offer any opposition to Applicant’s motion for summary judgment on
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`Count Three regarding alleged lack of bona fide use in commerce. Because there is no genuine
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`issue of material fact on this count, the Board should grant summary judgment in Applicant’s favor.
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`1
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`

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`A.
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`Applicant’s Copyright-Related Statement Was Not Fraudulent and Cannot
`Support Unclean Hands Finding
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`As a preliminary matter, Opposer appears to argue that Applicant should be barred from
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`obtaining summary judgment and registration of the Hex Chest mark because of purported unclean
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`hands. Specifically, Opposer contends the owner of Applicant intentionally lied in a Digital
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`Millennium Copyright Act (“DMCA”) notice submitted to the Thingiverse website on January 14,
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`2019, which stated “We own the Copyright to the sculptural design of Hex Chest products,
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`including the interior beehive design.” [Opp. Br. at 7-8] But that was not a fraudulent statement.
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`Going by the Opposer’s own timeline of events, there is no fraudulent copyright issue. The
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`DMCA removal request from Applicant was sent to Opposer on January 14, 2019. [Opp. Br. at 7]
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`Opposer correctly notes that the Copyright Office did not reject Applicant’s request for
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`reconsideration of its copyright registration application until several months later, on April 9, 2019.
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`[Id.] Subsequently, Applicant filed a second appeal with the Copyright Office, which was not
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`decided until June 22, 2020, a year-and-a-half after the DMCA removal request. Thus, when the
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`DMCA notice was sent to Opposer, Applicant’s copyright application for its dice box design was
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`still pending, in the middle of reconsideration and appeal, and Applicant reasonably and honestly
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`believed the Copyright Office would accept the application for registration following the request
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`for reconsideration or following appeal. That the Copyright Office finally refused Applicant’s
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`application a year-and-a-half after the DMCA takedown was sent cannot be a basis for finding
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`Applicant did not believe it owned the copyright at the time the takedown was sent.1
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`1 It is also worth noting that a creator owns a copyright in his or her design whether or not the
`Copyright Office accepts it for registration. See 17 U.S.C. § 408 (the “owner of copyright or of
`any exclusive right in the work may obtain registration of the copyright claim” but “[s]uch
`registration is not a condition of copyright protection.”). In addition, obtaining a copyright
`registration is not a prerequisite to submitting a legal DMCA takedown notice. See 17 U.S.C. §
`512(c)(3) (listing elements of a DMCA notification and requiring only an “[i]dentification of the
`copyrighted work claimed to have been infringed,” not a registration number). Therefore,
`Applicant’s owner committed no wrong whatsoever in submitting a DMCA notice concerning
`Applicant’s dice chest design. That design constituted Applicant’s copyrighted work whether or
`not registration was granted by the Copyright Office.
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`2
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`

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`B.
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`Opposer’s Contrived Post Hoc Attempt to Generate Standing Should Fail
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`Standing is assessed as of the time an opposition is filed. See, e.g., Friends of the Earth,
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`Inc. v. Laidlaw Envir. Servs. (TOC), Inc., 528 U.S. 167, 185-87 (2000); Wheaton College v.
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`Sebelius, 703 F.3d 551, 552 (D.C. Cir. 2012) (“standing is assessed at the time of filing”); Del.
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`Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013). At the time he
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`filed this Opposition (and to the present), Opposer does not deny that he had never purchased or
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`sold a single dice box. [18 TTABVUE at Applicant’s Statement of Undisputed Facts (“App. SUF”)
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`¶¶ 15-16] Opposer has never purchased a Hex Chest box from Applicant or anyone else; it is
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`undisputed that Opposer is not a customer of Applicant or consumer of its products. It is undisputed
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`that Opposer does not intend to become a consumer of Applicant or to purchase Hex Chest boxes
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`from any other party. Further, Applicant has no means for selling dice boxes, does not sell physical
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`products or electronic files, and suffered zero impact from the copyright DMCA-related removal
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`of his first Thingiverse re-post of a 3D printing file for a dice box. [App. SUF ¶¶ 14-15, 24-25]
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`While Opposer’s new declaration filed with his opposition to this Motion vaguely claims he “wants”
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`to use his personal 3D printer to make and sell dice boxes at some time in the future, that post hoc
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`claim—made long after he filed the Opposition—cannot support standing, which had to exist at
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`the time the Opposition was filed. See Wheaton, 703 F.3d at 552; Sweats Fashions Inc. v. Pannill
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`Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987) (“Mere conclusory statements
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`and denials do not take on dignity by placing them in affidavit form”). Opposer has no method for
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`actually selling these products as part of a business, and his claim he may use eBay is unsupported
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`by his prior testimony that he does not and has never sold physical goods. Opposer admits he has
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`never before sold dice boxes or even 3D printing files for dice boxes, which belies his claim he
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`may want to sell them in the future. Opposer has provided no actual business plans or provided
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`any evidence that he could sell dice boxes in interstate commerce.
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`Instead, Opposer’s sole connection to the Hex Chest box is not the item itself, but a digital
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`design file he uploaded to a third-party website solely to draw the target of the legal consequences
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`away from another user who had originally uploaded it. As laid out in Applicant’s opening brief,
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`3
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`

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`Opposer injected himself into a copyright dispute between Applicant and a third party, Mr. Griffith
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`(“Agrif”), when Opposer re-posted a 3D printing file for a dice box to the Thingiverse website
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`solely to shield Agrif from the consequences of having his name attached to the file he created and
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`to cause conflict with Applicant. [See McArthur Decl., Att. 5] Opposer wrote: “send me the file. I
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`will repost it to thingiverse and tell [Elderwood] to go F OFF if they try to say anything about it.”
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`[Id.] Opposer admitted in writing that he did this in order to protect Mr. Griffith, stating “he does
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`not want his name attached to the endeavor. SO I am going to post it ‘as my own’ on thingiverse”).
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`[Id.] In explaining his reasoning for why he would re-post the file, Mr. Taylor testified it was
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`because “I would like to spank [Elderwood] and make them squeal because they can’t own a
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`hexagon.” [App. SUF ¶ 20 (citing Taylor Depo. 36:13-24)] Opposer further testified that he re-
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`posted the Agrif File to Thingiverse because: “I don't like when people abuse the legal system in
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`this country to try to claim monopolistic ownership of things they are not legally allowed to own.”
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`[App. SUF ¶ 21 (citing Taylor Depo. 42:3-9)] In Opposer’s email to Mr. Griffith asking for
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`permission to re-post the Agrif File, Opposer wrote he wanted to re-post the file because “I have
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`nothing to lose and an axe to grind :-) I like a challenge. . . . I just REALLY freaking hate it when
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`people abuse copyright and the legal system to smash the little guy. really wrankles me good :-)”.
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`[App. SUF ¶ 22 (citing Taylor Depo. 42:3-9, Depo. Ex. 1)] None of the above was disputed by
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`Opposer or even could be disputed by Opposer. Opposer is the very definition of someone who
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`had no real interest relating to Opposer’s trademark rights but merely has “an axe to grind”—i.e.,
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`a “self-appointed guardian of the register” who the Lanham Act did not intend to grant standing to
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`oppose another’s trademark application. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1305
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`(Fed. Cir. 2020); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1027 (CCPA 1982).
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`Opposer therefore has failed to raise a genuine dispute as to whether he has satisfied the zone-of-
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`interests test; he clearly has not.
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`Further, Opposer has not demonstrated proximate causation. Opposer makes YouTube
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`videos about 3D printing; he does not sell dice boxes. [App. SUF ¶¶ 13-15 (citing Taylor Depo.
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`9:7-13:17)]. Opposer chose to inject himself into the Thingiverse dispute between Agrif and
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`4
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`

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`Applicant out of nothing more than the desire to make Applicant “squeal” for claiming copyright
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`in its dice box design. [App. SUF ¶ 20 (citing Taylor Depo. 36:13-24, 42:3-9)] While Applicant
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`submitted a DMCA request to remove Opposer’s first repost of the Agrif File from Thingiverse,
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`that request was (1) based on copyright law, and (2) did not cause any measurable harm whatsoever
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`to Opposer.2 Cf. Corcamore, 978 F.3d at 1307 (describing situation where mark owner’s use of
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`mark supported challenger’s assertion of likelihood of confusion which was not wholly without
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`merit, thus showing proximate causation). Opposer admits the DMCA removal caused him zero
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`harm. [App. SUF ¶¶ 24-26] Opposer has not just suffered harm that is “too remote” from
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`Applicant’s conduct, but he has suffered no harm at all. See Lexmark Int'l, Inc. v. Static Control
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`Components, Inc., 572 U.S. 118, 132 (2014) (“the proximate-cause requirement generally bars
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`suits for alleged harm that is ‘too remote’ from the defendant’s unlawful conduct”). Therefore,
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`Opposer has not raised a genuine dispute of material fact concerning proximate causation.
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`Overall, Opposer does not dispute he has never purchased or sold a Hex Chest dice box.
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`He has made no income off of dice boxes. Opposer does not personally use or purchase dice boxes.
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`He does not run an e-commerce business and has no manufacturing capability and no ability to
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`actually sell dice boxes. If the Board were to find Opposer has standing here, then anyone would
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`have standing to challenge any trademark application regardless of they were doing so merely for
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`“moral” reasons or just to “spank” an applicant to make them “squeal.” And any defects in standing
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`could easily be remedied by generating a post hoc declaration claiming the opposer “wants to”
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`engage in similar business activity (despite no evidence of having done so or planning to do so).
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`If the Board finds Opposer has standing from injecting himself into a third-party dispute just to
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`2 Opposer’s claim in his new declaration that his “strong statements” about Applicant were made
`“[a]fter I received the DMCA notice” is demonstrably false based on Opposer’s own timeline.
`Opposer made those statements about Applicant purportedly abusing the legal system in
`November 2018 while Opposer was communicating with Agrif about re-posting his 3D printing
`file. [App. SUF ¶¶ 19-20, 22 (citing Taylor Depo. 39:11-42:21, Depo. Ex. 1; McArthur Decl.,
`Att. 5 at Taylor-000201-03 (Reddit posts made by user “nerys71” were made by Opposer)]
`Applicant did not file its DMCA removal request until several months later in 2019. [App. SUF ¶
`23] That Opposer would be so casually dishonest with the Board should result in less weight
`being given to Opposer’s bare assertion that he vaguely intends to sell dice boxes in the future.
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`5
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`

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`“spank” Applicant, “then trademark owners would be discouraged from registering their marks,
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`contrary to public policy encouraging registration [and] unscrupulous plaintiffs could file baseless
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`proceedings not contemplated by the Trademark Act for harassment or other improper purposes.”
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`NSM Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1033 n.5. (TTAB 2014). For these reasons,
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`the Board should grant summary judgment in Applicant’s favor and find Opposer lacks standing
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`and dismiss the Opposition in its entirety.
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`Opposer Completely Disregarded the Board’s Order to Re-Plead Count One
`and There is No Legal Basis to Allow an Amendment Now
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`C.
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`Opposer acknowledges he disregarded the Board’s order giving him 30 days to amend his
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`opposition to properly plead Count One regarding functionality. [15 TTABVUE 12-13] Opposer
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`admits Count One is not properly pled, as the Board has already found. [Id.] Contrary to Opposer’s
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`assertion, Applicant did plead in its Answer to First Amended Notice of Opposition that Opposer
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`failed to state a claim upon which relief could be granted. [16 TTABVUE 11]; TBMP § 503.01
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`(“The defense of failure to state a claim upon which relief can be granted . . . may be raised . . . by
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`a motion for summary judgment”). This is not a matter of Applicant seeking summary judgment
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`on a defense that it did not plead but rather of Opposer’s complete, inexcusable failure to follow
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`the Board’s order. As such, the case law cited by Opposer in his brief are inapposite. See Kidsart,
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`Inc. v. Kidzart Texas, LLC, 2006 WL 2007542, at*2 (TTAB 2006) (finding notice of opposition
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`failed to include allegation that mark was generic so opposer could not obtain summary judgment
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`on that ground). Opposer was clearly on notice—via the Board’s order and Applicant’s Answer—
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`that he had failed to plead a claim upon which relief could be granted.
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`While Opposer has offered a bare-bones request to amend within his opposition brief, he
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`has not supported that with an actual motion or with a proposed amended opposition demonstrating
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`that the amended claim would be legally sufficient. Because there has been no showing that an
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`amended claim would be legally sufficient, the “motion” to amend should be denied. See Hurley
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`Int’l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007) (“Where the moving party seeks to add a new
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`claim or defense, and the proposed pleading thereof is legally insufficient, or would serve no useful
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`6
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`

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`purpose, the Board normally will deny the motion for leave to amend.”) (citing Octocom Systems
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`Inc. v. Houston Computer Services Inc., 918 F.2d 937 (Fed. Cir. 1990)).
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`In addition, the Board must consider prejudice to Applicant before granting any
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`amendment. Id. at *2. In the Hurley case relied on by Opposer, the parties had fully conducted
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`discovery on the issue of fraud which was sought to be added by a pre-trial amendment, and adding
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`that claim did not therefore prejudice the applicant. Id. at *2-3. Indeed, there the applicant had
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`admitted that it had not used the mark in commerce at the time it filed its Section 1(a) application,
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`in response to opposer’s discovery requests on the issue of fraud. Id. at *3-4. Here, by contrast, the
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`Board gave Opposer a chance to amend the defective Count One under threat that the count would
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`be dismissed if Opposer failed to amend it within 30 days. The Board specifically stated that
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`“failing [an amendment], based on the Board’s determination that Count One is insufficiently
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`pleaded, the Board will dismiss the count for failure to state a claim upon which relief can be
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`granted.” [15 TTABVUE 13 (citing Fed. R. Civ. P. 12(b)(6)) (emphasis added)] The Board gave
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`Opposer 30 days to re-plead Count One in order “to achieve judicial economy, and to assure that
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`discovery proceeds focused on the matters that are well-pleaded . . . .” [15 TTABVUE 13] Opposer,
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`however, did not take the opportunity provided by the Board. The parties subsequently continued
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`in the discovery phase of this proceeding, and Applicant focused on the matters that were well-
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`pleaded, which did not include functionality. Applicant relied on Opposer’s failure to amend and
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`the Board’s promise that it would dismiss Count One. Opposer now wants to plead both kinds of
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`functionality, neither of which were properly pled in Count One. However, Applicant has not been
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`on notice of either issue. Opposer declined to amend to specify which of the two functionality
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`attacks he was pursuing, so Applicant did not perform discovery, produce evidence, or, importantly,
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`designate an expert witness on those issues. Allowing Opposer to now re-plead to fix a defect that
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`he ignored (offering no reason for doing so), would unduly prejudice Applicant and permit
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`Opposer to disregard the Board’s authority without consequence.
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`Opposer is not pro se; he is represented by competent counsel. Opposer indisputably failed
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`to adequately plead Count One. Discovery is now over. The Board should abide by its order that
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`7
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`if Opposer fails to amend Count One within 30 days, it will “dismiss the count for failure to state
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`a claim upon which relief can be granted.” [15 TTABVUE 13] Applicant is simply asking that the
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`Board do what it already said it would do, a response that is particularly warranted by Opposer’s
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`unreasonable failure to follow the Board’s order and the prejudice that would be caused by
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`allowing a belated amendment on an improper motion without even a hint of what is proposed for
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`a new pleading. For these reasons, the Board should grant summary judgment in Applicant’s favor
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`on Opposer’s Count One, if Opposer even has standing to pursue that claim.
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`Opposer Has Not Opposed Applicant’s Motion With Regard to Count Three
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`D.
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`Applicant moved for summary judgment on Opposer’s Count Three, alleging a failure to
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`make bona fide use in commerce of the Hex Chest Trade Dress, as that count was contradicted by
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`undisputed documentary evidence and testimony. In his opposition brief, Opposer did not address,
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`deny, or otherwise dispute Applicant’s arguments and facts. Because Applicant was indisputably
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`using its trade dress in commerce long before the September 2018 filing date of the Application,
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`the Board should grant summary judgment in Applicant’s favor on Count Three. See Embarcadero
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`Techs., Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) (non-moving party failed to
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`rebut moving party’s evidence or raise genuine dispute of material fact); Venture Out Properties
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`LLC v. Wynn Resort Holdings LLC, 81 USPQ2d 1887, 1890 (TTAB 2007) (to avoid summary
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`judgment the non-movant “must designate specific portions of the record or produce additional
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`evidence showing the existence of a genuine issue of material fact for trial.”).
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`CONCLUSION
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`Opposer lacks standing because he is merely an admitted self-appointed guardian of the
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`Register who is not within the zone of interests an opposition proceeding is intended to protect and
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`cannot prove proximate causation. Even if Opposer has standing, the Board should grant summary
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`judgment on Count One for failure to state a claim and on Count Three, for which Opposer did not
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`even dispute Applicant’s facts and analysis proving use in commerce of the Hex Chest Trade Dress.
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`8
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`Date: September 9, 2021
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`Respectfully submitted
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`THE MCARTHUR LAW FIRM, P.C.
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`By:
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`/s/ Stephen McArthur
`Stephen Charles McArthur
`9465 Wilshire Blvd., Ste. 300
`Beverly Hills, CA 90212
`Telephone: (323) 639-4455
`Email: stephen@smcarthurlaw.com
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`Attorneys for Applicant Three Frog, LLC
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`9
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Serial Nos.
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`88/125,640
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`Mark:
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`Opposition No.: 91255161
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`CHRIS W. TAYLOR JR,
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` Opposer,
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` v.
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`Three Frog, LLC
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` Applicant.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing Reply in Support of Motion
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`for Summary Judgment has been served on the following parties by mailing said copy via email
`to Opposer’s attorney of record:
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`J. Curtis Edmondson
`Edmondson IP Law
`2660 SE 39th Loop, Ste. D
`Hillsboro, OR 97123
`jcedmondson@edmolaw.com
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`/s/ Stephen McArthur
`Stephen McArthur
`The McArthur Law Firm, P.C.
`9465 Wilshire Blvd., Ste. 300
`Beverly Hills, CA 90212
`Telephone: (323) 639-4455
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`10
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