Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1138585
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`Filing date:
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`06/07/2021
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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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`91264952
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`Party
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`Correspondence
`Address
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`Defendant
`Immunocore Limited
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`ANDREW D. PRICE
`VENABLE LLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-4385
`UNITED STATES
`Primary Email: trademarkdocket@venable.com
`Secondary Email(s): ADPrice@venable.com, HBMarkus@Venable.com,
`PJWyles@Venable.com, AMWeinstein@Venable.com, pehop-
`kins@venable.com
`202-344-8156
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`Submission
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`Filer's Name
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`Filer's email
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`Reply in Support of Motion
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`Marcella Ballard
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`mballard@venable.com, trademarkdocket@venable.com, pehop-
`kins@venable.com, ADPrice@venable.com, mrsinatra@venable.com
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`Signature
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`Date
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`/s/Marcella Ballard
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`06/07/2021
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`Attachments
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`Reply in Support of Motion to Strike Affirmative Defense.pdf(183946 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Immatics Biotechnologies GmbH,
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`Applicant.
` ___________________________________ )
`Attorney’s Reference: 85846-528638
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`Opposer,
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`v.
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`Immunocore Limited
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`Opposition No. 91264952
`Mark: ImmTAX
`Application Serial No. 88/711,924
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`APPLICANT’S REPLY IN SUPPORT OF MOTION TO STRIKE AFFIRMATIVE
`DEFENSE
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`Applicant Immunocore Limited (“Applicant”) submits this Reply in further support of its
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`Motion to Strike Affirmative Defense (“Motion”) and to address certain arguments made by
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`Opposer Immatics Biotechnologies Gmbh (“Opposer”) in opposition. See § 502.02(b). For the
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`reasons set forth below, Applicant requests that the Board grant its Motion as the laches defense
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`is not available to claims where public policy favors removal of unworthy registrations from the
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`federal registry, as is the case with Applicant’s counterclaims.
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`ARGUMENT
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`I.
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`Laches is Inapplicable to Abandonment Claims.
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`For public policy reasons, Opposer’s laches defense is unavailable to Applicant’s
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`counterclaim for cancellation on the ground of abandonment, which concerns all goods/services
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`connected with U.S. Trademark Reg. No. 5,004,034 for the mark
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` (“Old Logo”),
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`and the contested goods/services connected with U.S. Trademark Registration No. 5,196,392 for
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`the mark
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` (“New Logo”) and U.S. Trademark Registration No. 5,004,036 for the
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`mark IMMATICS (“Word Mark”). Opposer has not cited any legal authority justifying its
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`argument that those public policy considerations are inapplicable. The Board’s long-standing
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`precedent has repeatedly held that laches defenses do not apply to abandonment claims. See
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`DSM IP Assets B.V. v. Neurohacker Collective, LLC, 2019 WL 91241675 (TTAB Feb. 21,
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`2019); Saint-Gobain Abrasives, Inc. v. Unova Indus. Auto. Sys., Inc., 66 USPQ2d 1355, 1359
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`(TTAB 2003); Harjo v. Pro Football, Inc., 30 USPQ2d 1828, 1831 (TTAB 1994); TBC Corp. v.
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`Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989) (“It is in the public interest to remove
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`abandoned registrations from the register.”); Midwest Plastic Fabricators, Inc. v. Underwriters
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`Labs., Inc., 5 USPQ2d 1067, 1069 (TTAB 1987); see also East West Bank v. The Plubell Firm
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`LLC, 2018 WL 1110045, (TTAB Feb. 27, 2018) (striking affirmative defense of laches to
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`abandonment claim); TBMP § 311.02(b).
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`Instead of presenting any legal authority that would support its contention that a laches
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`defense would be applicable to Applicant’s claims, Opposer attempts to argue trademark tacking
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`to say that the use of its New Logo creates a continuing commercial impression with the Old
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`Logo. Therefore Opposer tries to argue that there “is no public interest in ‘clearing the register’”
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`of Opposer’s unused Old Logo. This argument is without merit because the use of the Old Logo
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`is non-existent and was so when the use-based application was made. Whether Opposer’s
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`argument concerning trademark tacking ultimately prevails on Applicant’s abandonment claim
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`has no bearing on Applicant’s Motion concerning Opposer’s laches defense. Tacking is
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`inapplicable as the Old Logo has not been used in commerce at all, as evidenced by a Securities
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`and Exchange Commission filing and by Opposer’s own admission. 1 TTABVUE ¶ 11 (stating
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`that “Opposer has at least eight programs encompassing at least four therapeutics in clinical trials
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`and four in preclinical development. . .”). As of October 9, 2020, Opposer did not have the
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`required FDA exemption to transport or distribute its goods across U.S. state lines and therefore
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`Opposer was not using its mark in U.S. commerce. That is, while the ongoing shipment of
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`trademarked pharmaceuticals for purposes of a clinical trial may be considered use in commerce,
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`Opposer does not have the required exemptions or approval from the FDA to transport or
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`distribute its goods across state lines. Further, use of a mark in a party’s own preclinical
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`development by its very definition is not use of a mark in commerce; to the extent Opposer may
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`have been doing pre-clinical trials, such pre-clinical trials were for its own benefit and not the
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`benefit of others. As such, the mark is unused and thus is of the exact kind the public has an
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`interest in clearing from the register.
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`Accordingly, Opposer has not provided any reason for the Board to deviate from its long-
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`standing precedent concerning the unavailability of the laches defense to abandonment claims,
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`and the board should therefore strike the Opposer’s laches defense as to Applicant’s
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`abandonment claim.
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`II.
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`Opposer’s Laches Defense is Inapplicable to Applicant’s Lack of Bona Fide
`Intent to Use and Lack of Bona Fide Use Claims Because Opposer’s Marks Have
`Never Been Used in Commerce and are Void Ab Initio.
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`In arguing against the Motion, Opposer ignores the underlying public policy rationale
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`supporting the removal of invalid marks from the federal registry: that the interest of clearing
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`unused and wrongfully obtained registrations “cannot be waived by the inaction of any single
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`person or concern, no matter how long the delay persists.” Bausch & Lomb, Inc. v. Leupold &
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`Stevens Inc., 1 USPQ2d 1497, 1499 (TTAB 1986).
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`First, the Federal Circuit has routinely held that where, as here, there is a broader public
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`policy concern at issue, the equitable defense of laches does not apply. Opposer’s argument that
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`the unavailability of a laches defense is limited to abandonment claims is directly contrary to
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`settled precedent. See Linville v. Rivard, 41 USPQ2d 1731, 1733 n. 5 (TTAB 1997), aff'd on
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`other grounds, 133 F.3d 1446, 45 U.S.P.Q.2d (BNA) 1374 (Fed. Cir. 1998) (laches is
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`unavailable against abandonment); Bausch & Lomb, Inc., 1 USPQ2d at 1499 (finding laches is
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`not available against a claim of descriptiveness or fraud); Midwest Plastic Fabricators, Inc., 5
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`USPQ2d at 1069 (laches does not apply against a claim that respondent does not control the use
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`of a certification mark because of the public interest in making sure that certification marks are
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`properly controlled); Int'l Assn. of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940,
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`947 (TTAB 1985), rev'd on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)
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`(laches is not available where the petition to cancel is based on genericness of the registered
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`matter because it would frustrate Section 14(3) of the Trademark Act that a registered mark may
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`be cancelled at any time on the ground that it is generic); Ultra-White Co. v. Johnson Chem.
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`Indus., Inc., 465 F.2d 891, 59 C.C.P.A. 1251, 175 USPQ 166, 167 (CCPA 1972) (holding there
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`is a public interest in preventing likelihood of confusion that prevails over a laches defense);
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`W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313, 316 (TTAB 1965), aff'd, 377
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`F.2d 1001, 54 C.C.P.A. 1442, 153 USPQ 749 (CCPA 1967) (laches is not available to a
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`defendant in a proceeding where, as here, the adverse party is claiming in essence that the mark
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`in question has not been used in commerce at the time of the use-based application because "it is
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`within the public interest to have registrations which are void ab initio stricken from the
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`register and this interest or concern cannot be waived by the inaction of a single person or
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`concern, no matter how long the delay persists.") (emphasis added); compare
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`Bridgestone/Firestone Research Inc. v. Auto. Club, 245 F.3d 1359, 58 USPQ2d 1460, 1463-64
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`(Fed. Cir. 2001) (laches may be an affirmative defense against a Section 2(a) false suggestion of
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`a connection claim because it is designed to protect a single person or institution from
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`exploitation of their persona, not to protect the public or a broader group). Accordingly, the
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`laches defense is unavailable involving any claim, like Applicant’s counterclaims, where there is
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`a public policy reason that would favor clearing the registration from unworthy registrations.
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`Second, public policy makes a laches defense inapplicable against Applicant’s lack of
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`bona fide intent to use and lack of bona fide use claims as Opposer is not using its marks in
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`commerce. Public policy supports the cancellation of void ab initio marks and those that are not
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`in use; therefore, if equitable defenses do not apply to abandonment claims grounded in
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`discontinued bona fide use, then “it follows that said defenses also do not bar a claim that a
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`mark…was never used in commerce.” United States Postal Serv. v. Epostal Servs., 2018 TTAB
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`LEXIS 445 (Trademark Trial & App. Bd. 2018). See also Brooks Sports, Inc. v. Anta (China)
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`Co. , 2018 TTAB LEXIS 429 (Trademark Trial & App. Bd. 2018) (finding that public policy
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`supports making unavailable the affirmative defense of laches against claims of abandonment,
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`non-use, lack of bona fide intent to use, and fraud). The Board has stricken affirmative defenses,
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`including laches, with respect to claims of non-use in commerce. See id. Applying the same logic
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`to the instant case, laches should similarly be unavailable against Applicant’s lack of bona fide
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`intent to use and lack of bona fide use claims in support of the public policy favoring clearing the
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`federal register from unworthy registrations.
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`Opposer attempts to draw a distinction between its marks and those deemed void ab initio
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`by arguing that bona fide use in commerce “may be contingent on the outcome of an event” and
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`thus can be outside the purview of the Board’s public policy considerations, but the fact that
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`Opposer’s marks were not “used in commerce” on the day the use-based applications were filed
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`indeed makes Opposer’s marks void ab initio themselves. Couture v. Playdom, 778 F.3d 1379,
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`113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015) (upholding cancellation of mark where mark had
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`not been "used in commerce" on the day the use-based application or statement of use is filed, as
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`the application and resulting registration of that mark are void ab initio) (internal citation
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`omitted). See also, e.g., Lens.com Inc. v. 1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672,
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`1677 (Fed. Cir. 2012); Int'l Mobile Machs. Corp. v. Int'l Tel. and Tel. Corp., 800 F.2d 1118, 231
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`USPQ 142 (Fed. Cir. 1986); Paramount Pictures Corp. v. White, 31 USPQ2d at 1769.
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`Third, Opposer argues against striking its laches defense by claiming that bona fide intent
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`to use and bona fide use are fact-intensive inquiries, and resolution at the pleading stage is
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`premature. Opposer’s argument that striking the laches defense is premature is unpersuasive and
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`fails for two reasons: (1) the facts and law are clear that Opposer is not using its marks as
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`required in U.S. commerce because it does not have the FDA exemptions or approvals to do so
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`and to the extent Opposer may have been doing pre-clinical trials, it was doing so for its own
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`benefit and not the benefit of others; and (2) the public policy reasons present for striking the
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`laches defense do not require a factual inquiry.
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`a. Opposer is Not Using Its Marks in U.S. Commerce and Was Not Using Its
`Marks in Commerce at the Time Registration Was Granted.
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`Current federal law requires that a drug be the subject of an approved marketing
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`application before it is transported or distributed across state lines. This application is referred to
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`as an “investigational new drug” or “IND” application. On October 9, 2020, Opposer’s parent
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`corporation Immatics N.V. submitted a filing with the Securities Exchange Commission
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`representing that the “IND submission is expected in 2021.”
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`As of October 9, 2020, Opposer had not received the IND exemption or approval from
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`the FDA, making it legally unable to transport or distribute the drugs referenced in Opposer’s
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`alleged registrations across state lines. As Opposer has not transported the drugs per the
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`registrations across state lines, Opposer’s registrations have not been used in commerce,
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`making the resolution of the matter on the pleadings entirely appropriate. No further factual
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`development concerning this matter is warranted as Opposer legally has not used its registrations
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`in commerce due to the lack of exemption from the FDA, which is required to transport or
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`distribute a drug across state lines, making striking Opposer’s laches defense in the public
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`interest.
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`b. The Public Interest in Removing Unworthy Marks from the Federal Registry
`is Not a Factual Inquiry.
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`Striking Opposer’s laches defense as it is against public policy reasons does not depend
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`upon a factual inquiry where – as is the case here – the registrations at issue are void ab initio.
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`Not one of the cases cited by Opposer argues that the issue of use in commerce cannot be
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`resolved at the pleadings stage, and as discussed above, Opposer attempts to conflate “intent to
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`use” with “use,” which can absolutely be resolved without further evidentiary inquiry. Opposer
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`rests its argument on Adv. Cardiovascular Sys., Inc. v. Scimed Life Sys., Inc., 988 F.2d 1157,
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`1161 (Fed. Cir. 1993), which was decided in the context of a 12(b)(6) motion in a patent
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`infringement case wherein one of the inventors at issue was not apprised of the existence of the
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`patent for nearly a decade before asserting his ownership interest, which the court ruled was
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`barred by laches. Further fact development was required there because the reasonableness of the
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`inventor’s ignorance was in question, which is not at all similar to the facts of this case. Unlike
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`Adv. Cardiovascular Sys, no amount of record development will establish that the marks are used
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`in commerce or were used in commerce at the time of the use-based applications and therefore
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`Opposer’s argument that resolution of the lack of bona fide intent and lack of bona fide use
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`issues is premature is fatally flawed. Accordingly, the Board should strike Opposer’s equitable
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`defense of laches as to Applicant’s lack of bona fide intent to use and lack of bona fide use
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`claims.
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`III. Leave to Amend Will Not Cure Deficiencies in Opposer’s Affirmative Defense
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`As Opposer’s laches defense is inapplicable to Applicant’s counterclaims involving
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`abandonment, lack of bona fide use, and lack of bona fide intent to use, as a matter of law,
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`Opposer’s request for leave to amend its affirmative defense should be denied. Leave to amend
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`cannot cure the deficiencies in Opposer’s laches defense because as a matter of law, the Board
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`has held the public policy interest of removing unworthy registrations from the federal register
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`prevails against any unreasonable delay by a single party as the public interest cannot be waived.
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`The Motion should be granted without providing leave to amend as any amendment cannot plead
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`additional facts sufficient to overcome the legal deficiencies in Opposer’s defense, namely, the
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`public interest will always support removal of registrations, like Opposer’s, that have been
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`abandoned, or are void ab initio.
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`CONCLUSION
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`For all the foregoing reasons, Applicant respectfully requests that its Motion be granted.
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`Date: June 7, 2021
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`Respectfully submitted,
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`/s/Marcella Ballard
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`Andrew D. Price, Esq.
`Paula E. Hopkins, Esq.
`Venable LLP
`P.O. Box 34385
`Washington, D.C. 20043
`Telephone: (202) 344-8156
`Facsimile (202) 344-8300
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`Marcella Ballard, Esq.
`Maria R. Sinatra, Esq.
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
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`24th Floor
`New York, NY 10020
`Telephone: (212) 370-6289
`Facsimile: (212) 307-5598
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`Attorneys for Applicant
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`CERTIFICATE OF SERVICE
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`The undersigned, attorney for Applicant, hereby certifies that she served, by email, a copy of
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`Applicant’s Reply in Support of Motion to Strike Affirmative Defense upon the following attorneys of record
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`for Opposer on June 7, 2021:
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`this 7th day of June, 2021.
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`Robert D. Carroll of Goodwin Procter LLP
`rcarroll@goodwinlaw.com
`mchan@goodwinlaw.com
`jlin@goodwinlaw.com
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`/s/Maria R. Sinatra, Esq.
`Maria R. Sinatra, Esq.
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