Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1138525
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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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`91265543
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`Party
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`Correspondence
`Address
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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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`Defendant
`YUKBGONE, LLC
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`MATTHEW SAUNDERS
`SAUNDERS & SILVERSTEIN LLP
`14 CEDAR STREET SUITE 224
`AMESBURY, MA 01913
`UNITED STATES
`Primary Email: trademarks@sandsip.com
`Secondary Email(s): msaunders@sandsip.com
`978-463-9100
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`Opposition/Response to Motion
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`Seth A. Walters
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`msaunders@sandsip.com, trademarks@sandsip.com, swalters@sandsip.com
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`/Seth A. Walters/
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`06/07/2021
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`Attachments
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`20210606 Response to Motion to Dismiss.pdf(112644 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`PADRAIC MCFREEN,
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`Opposer
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` v.
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`YUKBGONE, LLC,
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`Applicant.
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`Opposition No. 91265543 (Parent)
`Opposition No. 91265545
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`Mark: YUK MOP
`Serial No. 88/812523
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`Mark: YUK WIPES
`Serial No. 88/812525
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`APPLICANT/COUNTERCLAIM PETITIONER’S RESPONSE AND OPPOSITION TO
`OPPOSER/REGISTRANT’S MOTION TO DISMISS COUNTERCLAIMS
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`Applicant/Counterclaim Petitioner YukBGone, LLC (“Applicant”), by its counsel, hereby
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`responds to and opposes Opposer/Counterclaim Respondent’s (“Opposer”) May 26, 2021, Motion
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`to Dismiss Petitioner’s Counterclaims for Cancellation of U.S. Registration Nos. 4,787,253; 4,787,160;
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`and 4,538,617.
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`Background
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`On October 21, 2020, Opposer/Counterclaim Respondent Padraic McFreen (“Opposer”)
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`filed Notices of Opposition (the “Notices”) with the Board, formally opposing registration of
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`Applicant’s YUK MOP and YUK WIPES trademarks (“Applicant’s Marks”) and the Board instituted
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`the present Opposition Proceedings (the “Oppositions”). On March 27, 2021, the Board consolidated
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`the Oppositions into Opposition No. 91265543 (Parent) and Opposition No. 91265545 (Child). 10
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`TTABVUE 7.
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`As grounds for and in support of both Oppositions, Opposer alleged, inter alia, that
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`“Applicant’s applied-for Mark is confusingly similar to Opposer’s Marks as more fully identified in
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`U.S. Registration Nos. 4538617, 4787160, and 4787253.” 1 TTABVUE 5. Opposer further alleged in
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`1
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`both Oppositions that “registration of Applicant’s Mark will diminish and dilute the distinctive
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`qualities of Opposer’s Marks” and that, as a result of this alleged harm, Applicant’s YUK MOP and
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`YUK WIPES marks should be refused registration. Id. at 5–6.
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`On November 24, 2020, Applicant filed Answers in both Oppositions and, in Opposition No.
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`91265543, simultaneously petitioned for the cancellation of Opposer’s pleaded U.S. Registrations Nos.
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`4,787,253; 4,787,160; and 4,538,617. 4 TTABVUE 5. As grounds for cancellation, Opposer alleged as
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`follows:
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`7. Upon information and belief, Registrant is not using and has no intent to resume use of
`Registrant’s Marks in connection with the goods identified in the Registrations.
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`8. Upon information and belief, Registrant has not made use of Registrant’s Marks in
`connection with the goods identified in the Registrations for at least three consecutive years
`prior to the commencement of the Opposition, thereby constituting prima facie evidence of
`Registrant’s abandonment of Registrant’s Marks, which are the subject of the Registrations,
`and upon which Registrant has relied in part in opposing registration of Applicant’s Mark.
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`Id. On December 7, 2020, Opposer filed the present Motion to Dismiss Petitioner’s Counterclaims
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`for Cancellation of U.S. Registration Nos. 4,787,253; 4,787,160; and 4,538,617, in which Opposer
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`moved to dismiss Applicant’s counterclaims for the cancellation of Opposer’s pleaded registrations
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`under Fed. R. Civ. P. 12(b)(6) and TBMP § 503 on the grounds that (i) Applicant’s counterclaims
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`failed to state a claim for which relief could be granted; and (ii) Applicant lacked standing to petition
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`for the cancellation of Opposer’s pleaded registrations. 14 TTABVUE 1–5.
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`Argument
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`“A motion to dismiss for failure to state a claim upon which relief can be granted is a test
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`solely of the legal sufficiency of a complaint.” TBMP 503.02; see Young v. AGB Corp., 152 F.3d 1377,
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`47 USPQ2d 1752, 1754 (Fed. Cir. 1998) (“[Defendant’s] arguments appear to confuse the sufficient
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`pleading of a claim with the obligation of proving that claim.”). “In order to withstand a motion to
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`dismiss, Petitioner need only allege such facts which, if proved, would establish that Petitioner is
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`2
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`entitled to the relief sought; that is: (1) Petitioner has standing to bring the proceeding; and (2) a valid
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`statutory ground exists for cancelling the registration.” Lewis Silkin LLP v. Firebrand LLC, Cancellation
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`No. 9206737, 14 TTABVUE 2 [precedential].
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`1. Applicant has standing to bring its counterclaims
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`Opposer’s allegations that Applicant lacks standing to bring its counterclaims for cancellation
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`of Opposer’s pleaded registrations “because it does not own the mark for which it relies [sic] for
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`purposes of its Petition, nor has the application for the applied-for mark YUK MOP, which it alleges
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`ownership, been refused registration because of Respondent’s Registrations,” 14 TTABVUE 2, are
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`completely meritless. Here, because Opposer has pleaded the subject registrations and based the
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`Oppositions thereon, Applicant has standing to seek to cancel these registrations. TMBP 313.03 (“[A]
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`counterclaimant’s standing to cancel a pleaded registration is inherent in its position as defendant in
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`the original proceeding.”); see Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479
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`(TTAB 2007).
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`2. Applicant’s pleadings allege facts sufficient to state a claim upon which relief can be granted
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`Similarly meritless are Opposer’s claims that Applicant’ counterclaims fail because they
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`“contain no allegations beyond mere substandard recitals” and fail “to meet the requirements
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`established to support a claim for the relief its [sic] seeking.” 14 TTABVUE 5. In essence, Opposer
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`argues that Applicant’s counterclaims fail to meet the federal standard of notice pleading, followed by
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`the Board (commonly called the Iqbal/Twombly standard).
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`Opposer’s reliance on Iqbal/Twombly is misplaced. As the Board has recently had occasion to
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`clarify in its precedential opinion in Lewis Silkin LLP v. Firebrand LLC, Iqbal/Twombly “does not
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`establish a per se pleading standard.” Cancellation No. 9206737, 14 TTABVUE 3, 13 (determining
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`that all that is required for a legally sufficient abandonment claim is to plead that Respondent is not
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`using the mark with its good and services and has no intent to resume use, and therefore denying
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`3
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`Respondent’s motion to dismiss) [precedential]. Rather, “‘[d]etermining whether a complaint states a
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`plausible claim for relief will ... be a context-specific task that requires the reviewing court to draw on
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`its judicial experience and common sense.’” Id., quoting Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009).
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`In the context of a petition to cancel based on abandonment, it is sufficient to simply plead
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`that the registrant is not using the mark with its goods and/or services and has no intent to resume
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`use. Lewis Silkin LLP, Cancellation No. 9206737, 14 TTABVUE 3. In fact, in its 2018 precedential
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`opinion in Lewis Silkin LLP, the Board specifically rejected the argument that factual allegations of
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`abandonment must also include allegations which demonstrate how petitioner will prove the
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`allegations of nonuse plus intent. Id. at 11 (“We see no purpose to such detailed pleading requirements
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`for an abandonment claim, besides unnecessarily complicating the pleadings . . . [T]here is no list of
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`activities which always show trademark use, and thus there is no list of activities whose
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`cessation would always show trademark nonuse. Actual intent not to resume use (as opposed to the
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`statutory period of nonuse which gives rise to the presumption of intent not to resume use) does not
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`exist in a vacuum, but also must relate to the use in commerce of the mark.”). Rather, as the Board
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`explained, because the allegations of nonuse plus intent “serve both to describe the claim and to
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`describe the necessary facts to support the claim,” no more is needed than to plead that a registrant is
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`not using the mark with its goods and/or services and has no intent to resume use. Id.
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`In this case, Applicant has satisfactorily pleaded its counterclaims for the cancellation of
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`Opposer’s pleaded registrations by alleging that Opposer “is not using and has no intent to resume
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`use of [Opposer’s] Marks in connection with the goods identified in the Registrations” and further
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`that Opposer “has not made use of [Opposer’s] Marks in connection with the goods identified in the
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`Registrations for at least three consecutive years prior to the commencement of the Opposition.” 4
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`TTABVUE 5. As the Board explicitly held in Lewis Silkin LLP, no more than this is required at the
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`pleading stage, as addressing specific factual allegations to demonstrate nonuse and intent not to
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`4
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`resume use “are best, and traditionally, left to trial.” Lewis Silkin LLP, Cancellation No. 9206737, 14
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`TTABVUE 12.
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`Conclusion
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`Accordingly, Applicant respectfully requests that the Board deny Opposer’s Motion in full.
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`Dated: June 7, 2021
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`Respectfully submitted,
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`By:/s/Matthew Saunders
`Matthew Saunders
`Seth A. Walters
`Saunders & Silverstein LLP
`14 Cedar Street, Suite 224
`Amesbury, MA 01913
`+1.617.714.1600
`msaunders@sandsip.com
`swalters@sandsip.com
`trademarks@sandsip.com
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`Attorneys for Applicant
`YukBGone, LLC
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`5
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that a true and complete copy of the foregoing Applicant/Counterclaim Petitioner’s
`Response and Opposition to Opposer/Registrant’s Motion to Dismiss Counterclaims has been served
`on Padraic McFreen by forwarding said copy on June 7, 2021, via email to:
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`Padraic McFreen
`13357 Dumbarton St.
`Carmel, IN 46032
`pmcfreen@gmail.com
`padraic.mcfreen@gmail.com
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`/s/ Matthew Saunders
`Matthew Saunders
`Saunders & Silverstein LLP
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`6
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