Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1141449
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`Filing date:
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`06/20/2021
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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
`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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`Other Motions/Submissions
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`Padraic McFreen
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`pmcfreen@gmail.com
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`/Padraic McFreen/
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`06/20/2021
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`McFreen YUKK REPLY to YukBGone Response to Motion To Dis-
`miss.20210620 _fin.pdf(281345 bytes )
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`YukBGone, LLC,
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`Padraic McFreen,
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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` Opposition No. 91265543 (Parent)
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`Petitioner,
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`Respondent.
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`RESPONDENT’S REPLY TO APPLICANT/COUNTERCLAIM
`PETITIONER’S RESPONSE AND OPPOSITION TO
`OPPOSER/REGISTRANT’S MOTION TO DISMISS COUNTERCLAIMS
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`Padraic McFreen (“Respondent”) filed the instant Motion To Dismiss
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`Petitioner’s Counterclaims for Cancellation of U.S. Registration Nos. 4,787,253;
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`4,787,160; and 4,538,61, May 26, 2021 (“Motion”). 14 TTABVUE.
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`In Applicant/Counterclaim Petitioner’s Response And Opposition To
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`Opposer/Registrant’s Motion to Dismiss Counterclaims (“Response”), YukkBGone,
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`LLC (“Petitioner”) recites two of the three basis upon which Respondent rests its
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`instant Motion. 16 TTABVUE 2.
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`Specifically, Petitioner’s Response remains silent on Respondent’s attack on
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`Petitioner’s standing based on the fact it “…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.” 14 TTABVUE 3.
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` Opposition No. 91265543
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`Petitioner’s silence here is nothing new, but a pattern of acquiescent
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`behavior. When its Answer to Respondent’s Notice of Opposition was challenged,
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`this Board afforded Petitioner the opportunity to modify its Answer and bolster its
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`position concerning intended use. Petitioner did not respond. Petitioner simply
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`acquiesced. 6-11 TTABVUE.
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`When Petitioner’s accompanying applied-for mark YUK SPRAY, S/N
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`90045909, was issued an Office Action Refusal by the examining attorney, “…for the
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`likelihood of confusion with U.S. Registration No. 4229934 as well as a requirement
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`to disclaim the wording ‘SPRAY’ because it was merely descriptive of an ingredient,
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`quality, characteristic, function, feature, purpose or use of Petitioner’s good’s and/or
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`services, Petitioner acquiesced, disclaimed the descriptive wording and took no
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`action toward the mark’s Registrant for the cancellation of U.S. Registration No.
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`4229934.” 14 TTABVUE 3.
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`Petitioner had no bona fide intent to use its applied-for mark in commerce at
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`the time it submitted its application. Here, in its instant Response to Respondent’s
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`Motion, it simply remained silent. No bona fide intent exists. Petitioner concedes
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`and Respondent’s Motion should be granted.
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`Petitioner has no interests viable enough to survive the “zone-of-interests
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`test.” Petitioner’s interests are not related to and inconsistent with the purposes of
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`the statute. The TTAB cannot assume “Congress authorized [Petitioner a fishing
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`license].” Philanthropist.com, Inc. v. The General Conference Corporation of
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` Opposition No. 91265543
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`Seventh-Day Adventists, Cancellation Nos. 92065178 and 92065255, June 15, 2021.
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`Petition’s petitions to cancel Registration[s] […] denied. [Precedential].
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`Respondent’s Motion relies on Scheuer v. Rhodes, 416 U.S. 232, 236 (1974);
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`Fed. R. Civ. P. 12(b)(6); TBMP § 503.02 for its instant Motion. In Rhodes, the U.S.
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`Supreme Court held, in pertinent part, “…a complaint should not be dismissed for
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`failure to state a claim unless it appears beyond doubt that the plaintiff can prove
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`no set of facts in support of his claim which would entitle him to relief,” relying in
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`part on Conley v. Gibson, 355 U.S. 41, 45-46, 78 S. Ct. 99, 102 L.Ed.2d 80 (1957).
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`The TTAB has well established that “[d]etermining whether a complaint
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`states a plausible claim for relief will…be a context-specific task that requires the
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`reviewing court to draw on its judicial experience and common sense.” Lewis Silkin
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`LLP v. Firebrand LLC, Cancellation No. 9206737, 14 TTABVUE 2 [precedential],
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`quoting Ashcroft v. Iqbal, 556 U.S. at 679.
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`The TTAB further stated in Silkin, “[w]hile the Board’s primary reviewing
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`court has not applied the Iqbal/Twombly standard to an abandonment claim under
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`the Trademark Act, its application of the standard to the pleadings of patent
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`infringement is instructive.” Id.
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`The PTAB has consistently analyzed the question using “the plausibility
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`standard,” which is consistent with what Respondent is seeking from the TTAB.
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`Specifically, “[t]he plausibility standard ‘does not impose a probability requirement
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`at the pleading stage; it simply calls for enough facts to raise a reasonable
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`expectation that discovery will reveal evidence’ to support the [Petitioner’s]
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` Opposition No. 91265543
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`allegations.” Nalco v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. Feb. 27,
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`2018), (quoting Twombly, 550 U.S. at 556).
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`Petitioner’s argument that Respondent is seeking more than precedent
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`requires is indeed misplaced. Simplicity, either explicitly or implicitly referenced in
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`the language of the holding, speaks more to the subject patented device, than it does
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`to the nature of pleadings generally. This argument flows to the context-specific
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`elements of the standard discussed herein above.
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`And even if this TTAB believes it should continue to follow the practices of a
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`few—but not all peer Boards—and ignore this nation’s highest court’s ruling in
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`Twombly, doing so would not prove judicially prudent. There are enough “common
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`sense” facts here to support the granting of Respondent’s instant Motion.
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`Respondent’s Motion should be granted.
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`Even if this TTAB remains undecided, reviewing courts have long held, “[the]
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`court[s] will take the pleadings and exhibit(s) together, and construe any disputes
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`in [Petitioner’s] favor.” Iqbal, 556 U.S. at 679.
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`In its pleading, Petitioner pleads no facts and supports its claim with no
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`exhibits. Petitioner relies only on the misplaced belief that this TTAB will continue
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`to ignore Twombly.
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`The abandonment cases relied upon in its Response have been noted by this
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`TTAB to have steered away from the Iqbal/Twombly standards all together and
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`“either employ[ed] the traditional language to describe the abandonment claim or
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`cite[d] the statutory definition.” Silkin.
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` Opposition No. 91265543
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`Respondent’s Motion should be granted.
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`Petitioner relies on Finanz St. Honroe B.V. v. Johnson & Johnson, 85
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`USPQ2d 1478, 1479 (TTAB 2007), to support its alleged position that it has legal
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`standing to bring an action for cancellation. Its reliance is misplaced.
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`Johnon & Johnson is a Section 18 case and not Section 12(b)(6).
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`Additionally, this first impression case addressed the question of a disclaimer of
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`goods and services for a registered mark, with a registration period in excess of five
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`years. The Petitioner in that case, was also the owner of a registered mark.
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`In Johnson & Johnson, the TTAB held the Petitioner “failed to state a claim.”
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`Respondent’s Motion should be granted.
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`Submitted this 20th Day of June 2021
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`/s /Padraic McFreen
`Padraic McFreen, Opposer
`13357 Dumbarton Street
`Carmel, IN 46032
`pmcfreen@gmail.com
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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 Reply
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`To Applicant/Counterclaim Petitioner’s Response And Opposition/Registrant’s
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`Motion To Dismiss Counterclaims has been served on Matthew Saunders, Saunders
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`& Silverstein LLP., by emailing said copy on this 20th day of June 2021, to:
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`trademarks@sandsip.com, 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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