Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1136491
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`Filing date:
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`05/26/2021
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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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`91265543
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`Party
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`Correspondence
`Address
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`Plaintiff
`Padraic McFreen
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`PADRAIC MCFREEN
`OWNER
`13357 DUMBARTON ST
`CARMEL, IN 46032
`UNITED STATES
`Primary Email: pmcfreen@gmail.com
`Secondary Email(s): padraic.mcfreen@gmail.com
`281-736-0510
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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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`Attachments
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`Motion to Dismiss - Rule 12(b)
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`Padraic McFreen
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`pmcfreen@gmail.com
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`/Padraic McFreen/
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`05/26/2021
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`McFreen YUKK Motion To Dismiss.91265543 Rule12b6 YukBGon-
`eLLC.20210526 .pdf(285134 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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`Petitioner,
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` Opposition No. 91265543
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`Respondent.
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`RESPONDENT’S MOTION TO DISMISS PETITIONER’S COUNTERCLAIMS
`FOR CANCELLATION OF U.S. REGISTRATIONS NOS.
`4,787,253; 4,787,160; AND 4,538,617
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`YukBGone, LLC,
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`Padraic McFreen,
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`Pursuant to Fed. R. Civ. P. 12(b)(6) and TBMP § 503, Padraic McFreen
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`(“Respondent”) respectfully moves The Trademark Trial and Appeal Board
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`(“TTAB”) to dismiss YukBGone, LLC’s (“Petitioner”) Counterclaims For
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`Cancellation of U.S. Registration No. 4,787,253 for the standard character mark
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`YUKK; U.S. Registration No. 4,787,160 for the design plus words, letters, and/or
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`numbers mark YUKK; and U.S. Registration No. 4,538,617 for the words, letters
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`and/or numbers in stylized mark YUKK (Petition).
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`Respondent’s Motion to Dismiss (“Motion”) is appropriate, when, on the face
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`of the Petition, Petitioner fails to allege facts upon which relief can be granted.
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`Scheuer v. Rhodes, 416 U.S. 232, 236 (1974); Fed. R. Civ. P. 12(b)(6); TBMP §
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`503.02. The allegations in Petitioner’s Counter Claim are not supported by facts
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`and are legally insufficient.
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`1
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` Opposition No. 91265543
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`To state a claim upon which relief can be granted and survive Respondent’s
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`instant Motion under Fed. R. Civ. P. 12(b)(6), Petitioner needed to allege facts
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`“which if proved, would establish that it has 1) entitlement to a statutory cause of
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`action under the Trademark Act Section 14, and 2) a valid statutory ground exists
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`for cancelling the subject registration.” See. DrDisabilityQuotes.com, LLC v.
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`Charles Krugh, 2021 USPQ2d 262 (TTAB 2021); See also Spanishtown Enters., v.
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`Townscend Resources, Inc., 2020 USPQ2d 11388 at *2 (TTAB 2020) and Fair Indigo
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`LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007).
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`Petitioner’s Petition does not contain a “short and plain statement of the
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`claim showing that it is entitled to relief.” Fed. R. Civ. P. 8(a)(2). Petitioner makes
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`unsubstantiated naked assertions as well as conclusionary statements leaving the
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`TTAB with nothing more to accept as true.
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`Petitioner is without standing, because it does not own the mark for which it
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`relies for purposes of its Petition, nor has the application for the applied-for mark
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`YUK MOP, which it alleges ownership, been refused registration because of
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`Respondent’s Registrations.
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`When a Petitioner in a TTAB proceeding “can plead and later prove that it
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`has been refused registration of its mark because of a Respondent’s registration, it
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`has established reasonable belief of damage,” thus satisfying the standing
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`requirement. See Saddlesprings Inc. v, Mad Croc Brands Inc., 104 USPQ2d 1948,
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`1950 (TTAB 2012).
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`2
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` Opposition No. 91265543
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`The TTAB and Federal Circuit Courts have been clear concerning the
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`question of standing. Specifically, Petitioner must have a reasonable basis in fact
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`and that basis must “reflect a real interest in the case.” Richie v. Simpson, 170 F.3d
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`1092, 50 USPQ2d 1023, 1028 (Fed. Cir. 1999).
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`Petitioner’s mere belief “that it has and will continue to be damaged by the
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`continued registration of [Petitioner’s] marks…”, without pleading even a scintilla
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`of factual matter, raises its claim to a point no higher than that of a third-party
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`intermeddler and should be dismissed with prejudice.
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`And even if the TTAB were to determine Petitioner has met the liberal
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`requirement to establish standing, Petitioner did not have a bona fide intent to use
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`the applied-for mark in commerce at the time of the filing date of its mark’s
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`application. See. Hole In 1 Drinks, Inc. v. Michael Latjay, 2020 USPQ2d 10020
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`(TTAB 2020); Norris v. PAVE: Promoting Awareness Victim Empowerment, 2019
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`USPQ2d 370880 *4 (TTAB 2019). 1
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`Petitioner’s Petition does not meet the requirements of Fed. R. Civ. P. 8(a)(2).
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`See. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“[petitions] must contain sufficient
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`factual matter, accepted as true, to ‘state a claim to relief that is plausible on its
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`face.’). See Also. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). Petitioner
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`1 Petitioner has demonstrated no real bona fide intent to use its applied-for mark in commerce.
`Petitioner was afforded the opportunity to establish a defense of the use of its marks in commerce in
`these instant proceedings and remained silent. Petitioner’s companion applied-for mark, YUK
`SPRAY, S/N 90045909, received an office action refusal for Likelihood of Confusion with U.S.
`Registration No. 4229934 as well as a requirement to disclaim the wording “SPRAY” because it is
`merely descriptive of an ingredient, quality, characteristic, function, feature, purpose or use of
`Petitioner’s good’s and/or services. Petitioner acquiesced, disclaimed the descriptive wording and
`took no action toward the mark’s Registrant for the cancellation of U.S. Registration No. 4229934.
`3
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` Opposition No. 91265543
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`has not alleged facts to support a conclusion that its claim is indeed plausible and
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`its right to relief is above the level of speculation.
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`In its Petition, Petitioner further states “[u]pon information and belief,
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`Registrant is not using and has no intent to resume use of Registrant’s Marks in
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`connection with the goods identified in the Registrations [; and u]pon information
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`and belief, Registrant has not made use of Registrant’s Marks in connection with
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`the goods identified in the Registrations for at least three consecutive years prior to
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`the commencement of the Opposition, thereby constituting prima facie evidence of
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`Registrant’s abandonment of Registrant’s Marks, which are the subject of the
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`Registrations, and upon which Registrant has relied in part in opposing registration
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`of Applicant’s Mark.”
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`Therein, Petitioner simply relies on formulaic recitations of the elements of a
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`cause of action, but no factual matter for the TTAB to deem true and to construe as
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`due substantial justice. Twombly, 550 U.S. at 555-56; Corporacion Habanos SA v.
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`Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011). Petitioner’s Petition fails to meet
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`the test’s minimum requirements. Respondent’s Motion must be granted.
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`Petitioner does not have a statutory cause of action. As the TTAB and
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`Federal Circuit Courts TTAB have well established, “entitlement to a statutory
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`cause of action is a threshold issue in every inter partes case.” Australian
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`Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3rd 1370, 2020 USPQ2d
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`10837, at 3 (Fed. Cir. 2020).
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`4
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` Opposition No. 91265543
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`Under Trademark Act Section 14, Petitioner should have alleged that
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`cancellation of the Respondent’s “registrations was within the zone of interests
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`protected by the statute and that it has a reasonable belief of damage proximately
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`caused by the continued registration of Respondent’s marks.” Peterson v. Awshucks
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`SC, LLC, 2020 USPQ2d 11526, at *5 (TTAB 2020). Petitioner has not met these
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`threshold requirements.
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`Petitioner’s Petition contains no allegations beyond mere substandard
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`recitals and fails to meet the requirements established to support a claim for the
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`relief its seeking. Petitioner’s Petition should be denied with prejudice and
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`Respondent’s Motion granted.
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`Submitted this 26th Day of May, 2021
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`/s /Padraic McFreen
`Padraic McFreen, Opposer
`13357 Dumbarton Street
`Carmel, IN 46032
`pmcfreen@gmail.com
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`5
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` Opposition No. 91265543
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Opposer’s
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`Motion To , have been served on Matthew Saunders, Saunders & Silverstein LLP.,
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`by emailing said copy on this 26th day of May, 2021, to: trademarks@sandsip.com,
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`msaunders@sandsip.com.
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`/Padraic McFreen/
`Padraic McFreen, Petitioner
`13357 Dumbarton Street
`Carmel, IN 46032
` pmcfreen@gmail.com
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`6
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