Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1088840
`
`Filing date:
`
`10/14/2020
`
`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.
`
`MARINA A LEWIS
`LEWIS KENT LLP
`235 MONTGOMERY STREET, 30TH FLOOR
`SAN FRANCISCO, CA 94104
`UNITED STATES
`Primary Email: docketing@lewiskentllp.com
`415-966-3402
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Amend Pleading/Amended Pleading
`
`Marina A. Lewis
`
`docketing@lewiskentllp.com, marina@lewiskentllp.com
`
`/Marina A. Lewis/
`
`10/14/2020
`
`Opposer Motion for Leave to File Amended Notice of Opposition.pdf(2343028
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Chris W. Taylor, Jr.
`
`Opposition No.: 91/255,161
`
`Opposer,
`
`Interlocutory Attorney: Jennifer Krisp
`
`v.
`
`Three Frog LLC,
`
`Application No.: 88/125,640
`
`Mark: Miscellaneous Design
`
`Applicant.
`
`Publication Date: December 10, 2019
`
`OPPOSER’S MOTION FOR LEAVE TO
`FILE AMENDED NOTICE OF
`OPPOSITION UNDER 37 CFR § 2.115
`
`
`
`Opposer Chris J. Taylor, Jr. (“Opposer”) moves to amend his Notice of Opposition to
`
`clarify the grounds on which this Opposition rests by including additional factual allegations to
`
`support the claims previously asserted. An explanation of the factual and legal basis for this
`
`Motion follows below.
`
`Amendment of Factual Allegations in Support of Claim of Failure-to-Function
`
`On April 8, 2020, Opposer filed the original Notice of Opposition in this proceeding.
`
`Count One of the Notice of Opposition asserts failure to function as a mark under Trademark Act
`
`Sections 14(1) and 1, 2, and 45. In support of this claim, the Notice of Opposition contains
`
`factual allegations directed toward Applicant’s efforts to obtain both copyright and trademark
`
`ownership of the product configuration depicted in the applied-for mark.
`
`For example, Paragraphs 23-24 describe Applicant’s efforts to disrupt Opposer’s business
`
`by sending DMCA take-down notices to the Thingaverse e-commerce platform using only a U.S.
`
`Copyright Office “case number”, not an issued registration number. Opposer has now learned
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`Page 1 of 5
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`

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`that the U.S. Copyright Office has expressly and finally rejected Applicant’s copyright
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`application for the Hex Chest design on the grounds that it depicts a functional and useful item.
`
`Opposer has also now obtained a copy of the U.S. Copyright Office file history for
`
`Applicant’s copyright application. In addition to the Copyright Office’s reasoning for denying
`
`copyright protection for the Hex Chest design, the file history reflects Applicant’s position that
`
`the various elements of its Hex Chest design were chosen for aesthetically functional reasons,
`
`and that these features of its design have special significance within the relevant consuming
`
`public. These facts relate directly to Opposer’s claim of failure-to-function. Therefore, Opposer
`
`seeks leave to amend his Notice of Opposition to include these additional factual allegations to
`
`support the claim of failure-to-function. Please see in particular Paragraphs 16 – 24 of Opposer’s
`
`Amended Petition to Cancel.
`
`Under Rule 15(a), a party’s leave to amend pleadings “shall be freely given when justice
`
`so requires.” Fed. R. Civ. P. 15(a); see also Embarcadero Technologies, Inc. v. Delphix Corp.,
`
`117 USPQ2d 1518, 1523 (TTAB 2016) (“Trademark Rule 2.115, 37 CFR § 2.115, and Fed. R.
`
`Civ. P. 15(a) encourage the Board to look favorably on motions to amend pleadings, stating that
`
`‘leave shall be freely given when justice so requires’.”). Moreover, leave to amend is appropriate
`
`where there is no undue delay and where the non-moving party would not be prejudiced.
`
`Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) (“In
`
`deciding whether to grant leave to amend, the Board may consider undue delay, prejudice to the
`
`opposing party, bad faith or dilatory motive, futility of the amendment, and whether the party has
`
`previously amended its pleadings.”)
`
`In this case, Opposer’s proposed amended Notice of Opposition is timely because
`
`Opposer only learned of these new facts after discovering that Applicant’s copyright application
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`Page 2 of 5
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`

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`for the Hex Chest design had been rejected on June 22, 2020. Moreover, Opposer acknowledges
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`that the Board does not determine issues of copyright validity or infringement. However, a
`
`determination by the U.S. Copyright Office that Applicant’s product design is merely a “useful
`
`item” and ineligible for copyright protection is relevant and of probative value to the issues in
`
`this proceeding concerning failure-to-function and acquired secondary meaning. Carano v. Vina
`
`Concha y Toro S.A., 67 USPQ2d 1149, 1152 (TTAB 2003) (Board has no jurisdiction to
`
`determine copyright infringement claim but may determine some limited copyright issues as
`
`necessary to determine questions of trademark registration).
`
`Finally, there has been no undue delay or bad faith, and Applicant will not be unduly
`
`prejudiced by the proposed amendments because none of the additional factual allegations
`
`contain information that Applicant would not already know. On the other hand, Opposer
`
`acknowledges that its complaint must “state a claim to relief that is plausible on its face”, and
`
`that Opposer is obligated to allege well-pleaded factual matter and more than “[t]hreadbare
`
`recitals of the elements of a cause of action, supported by mere conclusory statements.” Ashcroft
`
`v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 555). See, e.g., Dragon Bleu
`
`(SARL) v. VENM, LLC, 112 USPQ2d 1925, 1926 (TTAB 2014) (motion to dismiss applicant’s
`
`fraud, non-use and abandonment counterclaims granted); Covidien LP v. Masimo Corp., 109
`
`USPQ2d 1696, 1697 (TTAB 2014). Amending his Notice of Opposition to provide a complete
`
`recitation of the facts surrounding Applicant’s attempts to copyright its unprotectable product
`
`design conforms to the Twombly pleading standard required by the Board and the federal rules.
`
`Amendment of Allegations Related to Identity of Applicant
`
`Opposer also requests leave to amend its pleading in order to more accurately describe
`
`Applicant’s corporate identity. Specifically, Opposer has added language to Paragraph 12 to
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`Page 3 of 5
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`

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`acknowledge that Applicant Three Frog, LLC is also known as Elderwood Academy, the name
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`under which Applicant operates the Elderwood Website identified in Paragraph 13. According to
`
`the file history for the mark in dispute, Applicant claims ownership of prior-issued Registration
`
`No. 5390970, in which Applicant is identified as Three Frog LLC AKA Elderwood Academy, a
`
`Michigan partnership listing Quentin John Anderson Weir and Daniel Jacob Reiss as partners.
`
`In view of the foregoing, Opposer respectfully requests that the Board grant his Motion
`
`for leave to file an amended Notice of Opposition.
`
`Respectfully submitted,
`
`Dated: October 14, 2020
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Marina A. Lewis
`LEWIS KENT LLP
`235 Montgomery Street, 30th Floor
`San Francisco, CA 94104
`Telephone: (415) 966-3402
`
`Attorneys for Opposer
`Christopher Taylor
`
`
`Page 4 of 5
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`Certificate of Service
`
`The undersigned hereby certifies that a copy of OPPOSER’S MOTION FOR LEAVE
`
`TO FILE AMENDED NOTICE OF OPPOSITION UNDER 37 CFR § 2.115 has been served
`
`upon all parties, at their address of record by email (stephen@smcarthurlaw.com) on this date.
`
`Dated: October 14, 2020
`
`
`
`
`
`By:
`
`/Marina A. Lewis/
`Marina A. Lewis
`
`
`
`
`
`
`
`
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`Page 5 of 5
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`

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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.: 91/255,161
`
`Opposer,
`
`Interlocutory Attorney: Jennifer Krisp
`
`v.
`
`Three Frog LLC,
`
`Applicant.
`
`Application No.: 88/125,640
`Mark: Miscellaneous Design
`Publication Date: December 10, 2019
`
`OPPOSER’S FIRST AMENDED NOTICE
`OF OPPOSITION
`
`
`
`
`
`Opposer Chris J. Taylor, Jr. (“Opposer”) believes that he will be damaged by the
`
`registration of the product design depicted in Application No. 88/125,640 (“the ‘640
`
`Application”). Specifically, Opposer alleges that Applicant’s applied-for product configuration
`
`is ineligible for registration because Applicant’s product configuration is merely functional and
`
`therefore fails to serve as a source identifier for the relevant goods. Moreover, Applicant’s
`
`registration of a functional product design harms both Opposer and the consuming public at large
`
`because it would confer an unfair monopoly upon Applicant to which it is not entitled under law.
`
`Opposer also alleges in the alternative that Applicant’s product design is ineligible for
`
`registration on the Principal Register because the applied-for product design is not inherently
`
`distinctive as a matter of law, and Applicant has failed to show the acquired distinctiveness and
`
`secondary meaning necessary to support registration. Finally, the product design is ineligible for
`
`registration because the mark was not in use in commerce on or before the filing date of the
`
`application. Therefore, Opposer hereby opposes this application on the following grounds.
`
`Chris Taylor and His Hexagonal Box
`
`1.
`
`Opposer is a citizen of the United States with a mailing address of Post Office
`
`Box 842, Edgewood, New Mexico 87015.
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`Page 1 of 13
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`

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`
`2.
`
`Opposer designs and sells dice boxes. Opposer sells his products through various
`
`online channels, including on social media and e-commerce sites like Thingaverse.
`
`3.
`
`Opposer’s designs are popular with players of the decades-old, multi-player role-
`
`playing game, Dungeons and Dragons (known affectionately by its players as “D&D”). D&D is
`
`a fantasy role-playing game played with a set of seven dice and a player handbook. The dice
`
`used for D&D come in a variety of shapes, but the most-frequently used (and most iconic) is the
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`20-sided or “icosahedron” die, known in D&D parlance as the “D20.” A D20 shown in two-
`
`dimensional view forms a hexagon, as shown below:
`
`
`
`4.
`
`For decades, D&D fans have collected accessories and memorabilia designed for
`
`gameplay. Some of the most popular items are boxes designed to hold dice sets, and they range
`
`from the simplest boxes to exotic carrying cases. D&D dice boxes are made and sold in a variety
`
`of materials and shapes, and they often share similar characteristics designed to appeal to D&D
`
`gamers. For example, boxes commonly include seven pockets or slots to accommodate the
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`seven-die dice sets used for gameplay. In addition, the pockets or slots are often shaped to fit the
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`dice snugly in the box in order the prevent them from rolling around and knocking against each
`
`other. (D&D dice sets are often made of metal and fabricated with ornate designs, and can
`
`scratch easily if allowed to roll around inside a box. Therefore, gamers often seek out a box or
`
`case in which the dice will fit snugly to prevent scratching or other damage.)
`
`5.
`
`Hexagon shapes are also quite popular, as the hexagon shape perfectly
`
`accommodates the D20 die, along with the other dice required for play.
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`6.
`
`Seven hexagons arranged together side-by-side will form one large hexagon,
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`known in geometry as a “tessellation.” A naturally-occurring example of a hexagonal tessellation
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`is a honeycomb:
`
`
`
`7.
`
`Opposer’s dice boxes, like those of other sellers and players, were designed
`
`specifically with these factors in mind. For example, Opposer’s dice box includes exactly seven
`
`spaces for each of the dice in a D&D set, and each space is in the shape of a hexagon in order to
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`accommodate the D20 die, regardless of which space the player places the die. The configuration
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`of the hexagonal tessellation, such as that depicted in Opposer’s dice box, is the most efficient
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`way to arrange the seven dice slots within a singular container.
`
`8.
`
`Opposer has been designing and fashioning these types of hexagon tessellation-
`
`shaped dice boxes for literally decades. Opposer began crafting his hexagonal tessellation-
`
`shaped boxes back in the mid-1990’s after seeing a similar box used as a model in a
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`woodworking class. (This third-party box which Opposer used as his model was, in turn, made
`
`several years prior to the time Opposer began crafting his own boxes.) Opposer then began
`
`selling his boxes casually to customers upon request, for which he charged a modest sum to
`
`compensate Opposer for his time and materials.
`
`9.
`
`Originally, Opposer crafted his boxes from wood. Over time, Opposer began
`
`crafting boxes from wood-filled PLA, a composite of plastic and wood fibers, due to the
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`Page 3 of 13
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`material’s popularity with customers. Later still, Opposer began developing his boxes using 3D
`
`printing. Photos depicting Opposer’s designs and products appear below:
`
`
`
`
`
`10.
`
`Over the years, others have put their own spin on the hexagon dice box used in
`
`D&D play. For example, a seller by the name of “Mr Rouseau” has been producing a template
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`for making a hexagon dice box out of cardstock since at least December 2014:
`
`
`
`11.
`
`Knowing that the functional aspects of his boxes are common within the D&D
`
`universe, Opposer has never sought trademark or copyright protection for the general shape and
`
`configuration of his boxes, and was not aware of any other maker or seller seeking such a
`
`monopoly, prior to being notified of Applicant’s filing at issue in this proceeding.
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`Page 4 of 13
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`
`Elderwood Academy and its Activities
`
`12.
`
`According to the USPTO file history for the ‘640 Application, Applicant Three
`
`Frog, LLC is a Michigan limited liability company with a principal place of business at 6087
`
`Jackson Road, Ann Arbor, Michigan, 48103. Also according to the USPTO file history for the
`
`‘640 Application, Applicant claims ownership of prior-issued Registration No. 5390970, in
`
`which Applicant is identified as Three Frog LLC AKA Elderwood Academy, a Michigan
`
`partnership listing Quentin John Anderson Weir and Daniel Jacob Reiss as partners.
`
`13.
`
`According to its website at www.elderwood.com (the “Elderwood Website”),
`
`Elderwood Academy was founded by principals Quentin Weir and Daniel Reiss.
`
`14.
`
`According to the Elderwood Website, Elderwood sells products and gifts related
`
`to role-player gaming (including D&D) such as dice boxes and dice trays. Included among
`
`Applicant’s product offering is a hexagon-shaped dice box featuring a 7-compartment “beehive”
`
`interior which Applicant refers to as its “Hex Chest” box. Below are screenshots from the
`
`Elderwood Website that depict its “Hex Chest” box holding the 7 dice required for D&D
`
`gameplay:
`
`
`
`Page 5 of 13
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`
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`15.
`
`According to the Elderwood Website, the “beehive” interior for its Hex Chest
`
`product “holds 7 18mm dice (or smaller)”, and photos displayed at the website description for
`
`the box feature typical D&D dice sets. A separate page on the Elderwood Website titled “RPG
`
`[“Role-Playing Game”] & DND Dice features several sets of dice designed for D&D play,
`
`including those featured in the photos depicting the Hex Chest boxes. In fact, the product page
`
`for the “Mini Phoenix Dice” set states that the dice are “a perfect companion for your Mini Hex
`
`Chest.” By all accounts, it appears the boxes are intended for use with D&D gaming, and are
`
`marketed in such a way as to highlight the functional aspects of the box in terms of
`
`accommodating D&D dice sets specifically.
`
`16.
`
`On August 23, 2018, Applicant applied to register a copyright in the Hex Chest
`
`box with the U.S. Copyright Office. This application was assigned Copyright Appln. Case No. 1-
`
`6886106851 (the Hex Chest Copyright Application).
`
`17.
`
`According to the Copyright Office file history for the Hex Chest Copyright
`
`Application, the application was refused registration on October 24, 2018 on the basis that the
`
`applied-for design was “a useful article that does not contain any copyrightable authorship
`
`needed to sustain a claim to copyright.”
`
`Page 6 of 13
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`
`
`18.
`
`On November 19, 2018, Applicant filed a request for reconsideration with the
`
`U.S. Copyright Office in response to this refusal. In its request, Applicant argued that “the
`
`specific decorative pattern in and of itself serves no useful function and its hexagonal shape is
`
`not related to the use of the item”, and that the patterns depicted in the Hex Chest design “serve a
`
`purely aesthetic purpose.”
`
`19.
`
`On April 9, 2019, the Copyright Office affirmed its initial rejection of Three
`
`Frog’s copyright application, finding that “the separable features of this design are common and
`
`familiar shapes or designs that do not contain the requisite amount of creativity” required for
`
`copyright protection.
`
`20.
`
`On August 14, 2019, Applicant filed a second request for reconsideration of the
`
`Copyright Office’s refusal of registration. This time, Applicant argued that the various aesthetic
`
`features of its Hex Chest were included in its box design specifically because of their connection
`
`to the gaming industry. For example, with respect to the use of the hexagon shape, Applicant
`
`stated that “[h]exagons are a repeated element in the gaming community, used for tokens,
`
`miniatures, and terrain.” Applicant also acknowledged that the twenty-sided die was iconic in the
`
`gaming industry, and that Applicant had made certain design choices for its dice box specifically
`
`because they had significance in the gaming industry and would be recognized as such by
`
`members of the gaming community:
`
`Twenty-sided dice are a core component of roleplaying games, and in profile their
`shape is six-sided. By choosing to use the hexagonal shape rather than alternatives,
`the Hex Chests [sic] invites a comparison between an iconic element in gaming and
`the pattern deployed. Further, the number seven has special significance in
`roleplaying games and the decision to create seven concatenated hexes instead of
`another number further highlights the gaming nature of the design. These elements
`are self evident to those steeped in the proper context and may be invisible to those
`without sufficient background knowledge of the domain.”
`
`21.
`
`On June 22, 2020, the U.S. Copyright Office issued a final ruling, upholding its
`
`refusal to register a copyright in the Hex Chest box.
`
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`
`22.
`
`According to the USPTO file history for the ‘640 Application, the applied-for
`
`mark appears directed to the design of Applicant’s Hex Chest box with its “Beehive” interior,
`
`and is the same product configuration depicted in the Hex Chest Copyright Application.
`
`Specifically, the drawing page of Applicant’s Mark depicts a hexagonal tessellation described as
`
`“a three-dimensional configuration of the interior of a hex shaped box with a honeycomb
`
`configuration of seven interior hexagonal indentations on the bottom of the box and the design of
`
`a six point star, having flat points.”
`
`23.
`
`On January 16, 2019 Opposer received a notification from Thingaverse that his
`
`listings had been removed in response to a complaint filed by Applicant under the Digital
`
`Millennium Copyright Act (DMCA). This complaint was filed on behalf of Quentin Weir and
`
`alleged that Opposer’s Thingaverse listing “infringe[s] on our sculptural copyright of our Hex
`
`Chest dice boxes.” Applicant’s complaint asserted both trademark and copyright ownership of
`
`the hexagonal tessellation depicted in both Opposer’s boxes and its own, despite the fact that
`
`Applicant had no issued trademark registration and no issued copyright registration. Instead,
`
`Applicant’s complaint asserted only the serial number from the published trademark application
`
`now at issue in this opposition and the case number assigned by the U.S. Copyright Office when
`
`it refused registration of Applicant’s copyright application several months earlier.
`
`24.
`
`Despite Applicant’s claim in its January 2019 DMCA notice that it “own[s] the
`
`Copyright to the sculptural design of Hex Chest products”, Applicant’s application to register a
`
`copyright in the Hex Chest Design had already been expressly refused by the U.S. Copyright
`
`Office on October 24, 2018 on the basis that the Hex Chest was "a useful article that does not
`
`contain any copyrightable authorship needed to sustain a claim to copyright.”
`
`25.
`
`In response to Applicant’s complaint, Opposer filed a “counter-notice” under the
`
`DMCA on January 17, 2019, pointing out that Applicant did not, in fact, possess rights in
`
`trademark or copyright, and that his listings were removed in error. Thingaverse immediately
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`Page 8 of 13
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`reinstated Opposer’s product listings. Copies of Applicant’s DMCA take-down notice and
`
`Opposer’s response are attached as Exhibit A.
`
`26.
`
`On December 5, 2019, Opposer received notice from Thingaverse that his listings
`
`were again being suspended, this time based on a complaint brought by Applicant under
`
`Thingaverse’s “Other IP Rights Violation” policy. Applicant’s second complaint contained
`
`essentially the same facts and allegations as Applicant’s earlier complaint, although this time
`
`Applicant filed the complaint in the name of its principal Daniel Reiss. Once again, Applicant
`
`asserted proprietary rights to the hexagonal configuration of Opposer’s dice boxes based on its
`
`filing of the ‘640 Application, which Opposer falsely characterized as “granted” – despite the
`
`fact that Opposer’s application had not yet passed the required publication period and was not
`
`yet approved for registration by the Trademark Office.
`
`27.
`
`On December 16, 2019, Opposer submitted another counter-notice to
`
`Thingaverse, again stating that Applicant did not possess statutory rights in either copyright or
`
`trademark to the functional aspects of the dice boxes sold by Applicant, Opposer, or others.
`
`Shortly thereafter, Thingaverse again reinstated Opposer’s sales listing on their platform. Copies
`
`of Applicant’s Other IPR take-down notice and Opposer’s response are attached as Exhibit B.
`
`28.
`
`After securing reinstatement of his Thingaverse listings, it was then that Opposer
`
`learned of Applicant’s trademark filing and Applicant’s further attempts to gain an unfair
`
`monopoly on hexagonal tessellation-shaped dice boxes. Opposer also learned from his review of
`
`industry comments that Opposer was targeting other sellers of similar box designs with its bogus
`
`claims of exclusive ownership of the hexagon tessellation box design.
`
`29.
`
`Fearing that he and others would continue to be targeted by Opposer’s anti-
`
`competitive bullying, Opposer filed this Notice of Opposition.
`
`Page 9 of 13
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`
`
`Count One
`Failure to Function as a Mark
`(Trademark Act Sections 14(1) and 1, 2, and 45)
`
`30.
`
`Opposer repeats and realleges each and every allegation set forth in each of the
`
`preceding paragraphs.
`
`31.
`
`The product design depicted in the ‘640 Application contains several key features
`
`which are merely functional or aesthetically functional, including a) the use of exactly seven (7)
`
`slots to hold the seven (7) dice used for D&D play, b) hexagonal-shaped slots to accommodate
`
`the D20 and other polygonal dice used in D&D play, and c) an overall configuration of seven (7)
`
`hexagonal-shaped slots that form a hexagonal tessellation.
`
`32.
`
`In view of the functional aspects of Applicant’s product (both aesthetic and
`
`utilitarian), Applicant’s product design fails to function as a source identifier for the relevant
`
`goods and is therefore ineligible for registration as a trademark on either the Principal or
`
`Supplemental Register.
`
`33.
`
`Opposer possesses standing to bring this action under this count because Opposer
`
`will be damaged by the registration of the applied-for mark. The registration of the ‘640
`
`Application would essentially grant Applicant an unfair monopoly on the use of a hexagonal
`
`tessellation for the interior of a box design, and would exclude Opposer and other sellers from
`
`using this functional and utilitarian design for their own products. Moreover, Opposer has
`
`already been targeted by Applicant twice before when Applicant attempted to remove Opposer’s
`
`products from Thingaverse. Because Applicant has already attempted to use its filing as a
`
`weapon to disrupt Opposer’ business, Opposer has good reason to fear that Applicant’s
`
`anticompetitive behavior will intensify upon registration of the ‘640 Application.
`
`Page 10 of 13
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`
`
`Count Two
`Lack of Acquired Distinctiveness
`(Trademark Act Sections 14(1) and 2(e)(1)
`
`34.
`
`Opposer repeats and realleges each and every allegation set forth in each of the
`
`preceding paragraphs.
`
`35.
`
`In the alternative, and in the event Respondent’s mark could ever be perceived as
`
`a source identifier, Applicant’s product design is not eligible for registration on the Principal
`
`Register under Section 2(f) because Applicant has not made continuous and substantially
`
`exclusive use of the product design.
`
`36.
`
`Applicant and other third-parties have been using the hexagonal tessellation
`
`design in their own products prior to both the filing date of the ‘640 Application and the date
`
`upon which Applicant claims to have acquired secondary meaning in its product configuration.
`
`37.
`
`In view of this third-party prior use of the hexagon tessellation, Applicant has
`
`failed to demonstrate continuous and substantially exclusive use of the hexagonal tessellation
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`design as a trademark for the relevant goods. As such, consumers do not view the applied-for
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`mark as a source identifier for the goods, and the ‘640 Application is therefore ineligible for
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`registration on the Principal Register under Section 2(f).
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`38.
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`Opposer possesses standing to bring this action under this count because Opposer
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`will continue to be damaged by the registration of Applicant’s product design. Opposer has
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`already been the subject of two take-down notices, and although Opposer successfully had his
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`listings reinstated, there is a genuine concern that Applicant will continue to bully and pressure
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`others like Opposer on the basis of this filing, notwithstanding the fact that Applicant has failed
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`to make the required showing of acquired distinctiveness.
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`Page 11 of 13
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`

`

`
`
`Count Three
`No Bona Fide Use in Commerce
`(Trademark Act Sections 14(1) and 1(b) and 1(c))
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`39.
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`Opposer repeats and realleges each and every allegation set forth in each of the
`
`preceding paragraphs.
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`40.
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`Applicant filed the present application on September 20, 2018. According to the
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`USPTO file history, Applicant asserted a date of first use in commerce of October 2, 2014.
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`However, upon information and belief, Applicant only began soliciting funds to launch its
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`product on its Kickstarter website in 2017. Although alleging an incorrect date of first use is not
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`grounds to oppose Applicant’s filing per se, Opposer has reason to believe that Applicant’s
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`product design may not have been in use as of the date of filing of the ‘640 application.
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`Therefore, Opposer alleges that Applicant’s applied-for mark was not in use in federal commerce
`
`as of the filing date of the application and is therefore not entitled to registration under Section
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`1(a).
`
`WHEREFORE, Opposer respectfully requests that this opposition be granted and that
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`Applicant’s application be permanently abandoned. A filing fee for this Notice of Opposition is
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`being submitted electronically.
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`Respectfully submitted,
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`Dated: October 14, 2020
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`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Marina A. Lewis
`LEWIS KENT LLP
`235 Montgomery Street, 30th Floor
`San Francisco, CA 94104
`Telephone: (415) 966-3402
`
`Attorneys for Opposer
`Christopher Taylor
`
`
`Page 12 of 13
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`
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`Certificate of Service
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`The undersigned hereby certifies that a copy of OPPOSER’S FIRST AMENDED
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`NOTICE OF OPPOSITION has been served upon all parties, at their address of record by
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`email (stephen@smcarthurlaw.com) on this date.
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`Dated: October 14, 2020
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`
`
`
`
`By:
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`
`
`/Marina A. Lewis/
`Marina A. Lewis
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`
`
`
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`Page 13 of 13
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`

`

`EXHIBIT A
`
`EXHIBIT A
`
`
`
`

`

`From: MakerBot Thingiverse no-reply@thingiverse.com
`Subject: Content Removal Request
`Date: January 14, 2019 at 4:20 PM
`To: dmca@makerbot.com
`
`Date: 01/14/2019
`
`Dear Sir or Madam:
`
`I, the undersigned, represent that the information in this notification is accurate and CERTIFY UNDER PENALTY OF PERJURY that I
`am the owner or an agent authorized to act on behalf of the owner of certain intellectual property, said owner being named Quentin
`Weir ("Owner"). I have a good faith belief that the materials identified below are not authorized by the above Owner, its agent, or the
`law and therefore infringe or violate the Owner's rights. Please act expeditiously to remove or disable access to the material or items
`claimed to be infringing or violating Owner's rights
`
`Description of the infringing or unauthorized issues
`The works infringe on our sculptural copyright of our Hex Chest dice boxes. Current and original examples can be found
`below: https://www.elderwoodacademy.com/hex-chest-dice-boxes/ https://www.kickstarter.com/projects/1584169644/hex-
`chests
`
`Identification of the material on our services that you claim is infringing and that you request us to remove. Include the URLs or Thing
`IDs for the content in question
`https://www.thingiverse.com/thing:3248479 https://www.thingiverse.com/thing:2852404
`https://www.thingiverse.com/thing:2933303 https://www.thingiverse.com/thing:2964781
`https://www.thingiverse.com/thing:3074181 https://www.thingiverse.com/thing:3062079
`https://www.thingiverse.com/thing:2703906 https://www.thingiverse.com/thing:3338119
`https://www.thingiverse.com/thing:2870278
`
`Please explain why the above identified material is unlawful. Include identification of the work(s) or rights that you claim to have been
`infringed, including any link or other identifying information to the work or rights in question, and any additional information regarding
`alleged infringement that may be relevant.
`We believe the items above infringes Three Frog LLC dba Elderwood's intellectual property, including Copyright (case
`number 1-6886106851) and Trade Dress (serial number 8812564) for hex shaped dice boxes with beehive interior designs. We
`understand that there is no ill will at work here and this is likely an honest mistake, but Elderwood is obligated to enforce its
`intellectual property. We own the Copyright to the sculptural design of Hex Chest products, including the interior beehive
`design, and we further own the Trade Dress rights over the same aesthetic Hex Chest shape with the beehive interior design.
`Elderwood Academy was the first to create and sell this unique and the original Hex Chest design in 2014. Our designs are
`frequently imitated and those imitations may create the perception that the designs are open to broader use without license
`or permission. We ask that you respect this notice and remove the named items from the store. Thank you! <3 Quentin and
`Dan
`
`I may be contacted at:
`
`Quentin Weir
`6087 jackson road, suite 200
`Ann Arbor Michigan 48103
`
`elderwoodboxes@gmail.com
`
`7346571665 Fax:
`
`

`

`The DMC A Takedown request provided by 3 trees is unlawful. not only is it unlawful its explicitly unlawful and
`they are previously aware that their actions are unlawful making their actions potentiall criminal in nature and
`punishable under the law
`
`Trade Dress can not be applied
`
`In the United States, the “functionality” doctrine exists to stop a party from obtaining exclusive trade dress or
`trademark rights in the functional features of a product or its packaging. The doctrine developed as a way to
`preserve the division between what trademark law protects and areas that are better protected by patent or
`copyright law. Thus, the functionality doctrine serves to prevent trademark owners from inhibiting legitimate
`competition
`
`they can not trade dress the "basic concept" of a hex hole in a hex shape. this is specifically excluded from trade
`dress protection.
`
`Copyright protecton
`
`they have no valid copyright for my object
`
`https :/ .t'www. copyri ght. govr‘title l 7/9 2chap l 3 .html
`
`copyright law is explicit and very clear. you can not copyright staple or commonplace things such as a standard
`geometric figure ...... such as a HEXAGON box with HEXAGON HOLES. Period. this is clear and explicit.
`
`their "claim" violates l, 2 3, & 4 of the points laid out in