`CME/TAB
`THIS ORDER IS A
`PRECEDENT OF THE
`TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`September 20, 2022
`
`tab/cme
`
`
`
`
`
`Opposition No. 91269057
`
`PepsiCo, Inc.
`
`v.
`
`Arriera Foods LLC
`
`
`Before Taylor, Goodman and English,
`Administrative Trademark Judges.
`
`
`By the Trademark Trial and Appeal Board:
`
`This case is now before the Board on: (1) Applicant’s June 4, 2021 motion to
`
`dismiss Opposer’s originally-filed notice of opposition for failure to state a claim upon
`
`which relief can be granted under Fed. R. Civ. P. 12(b)(6);1 (2) Applicant’s June 30,
`
`2021 motion to dismiss Opposer’s proposed amended notice of opposition2 under Fed.
`
`R. Civ. P. 12(b)(6); 3 and (3) Applicant’s counsel’s April 10, 2022 motion for
`
`withdrawal.4
`
`
`
`1 4 TTABVUE.
`
`2 8 TTABVUE.
`
`We note the entry of appearance and change of correspondence address of Opposer’s counsel,
`both filed June 24, 2021. 6 and 7 TTABVUE. The Board’s records have been updated
`accordingly.
`
`3 9 TTABVUE.
`
`4 11 TTABVUE. We address this motion at the end of this order. A copy of the motion to
`withdraw has been placed in the file for the application involved in this proceeding.
`
`

`

`Opposition No. 91269057
`
`Preliminary Issue
`
`I.
`
`
`Applicant seeks registration of the standard character mark TORTRIX for “corn-
`
`based snack foods,” in International Class 30.5 On March 3, 2021, the Board granted
`
`PepsiCo, Inc. (“PepsiCo”) an extension of time until May 1, 2021 to oppose the
`
`application. On April 29, 2021, a notice of opposition was timely filed. The ESTTA
`
`coversheet to the notice of opposition identified PepsiCo as the sole opposer, but the
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`body of the notice of opposition identified both PepsiCo and “its wholly owned
`
`subsidiary Fabrica de Productos Alimenticios Rene Y Cia S. En. C.” (“Fabrica”) as
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`joint opposers.
`
`Two or more parties may file an opposition, but “[t]he opposition must be
`
`accompanied by the required fee for each party joined as opposer for each class in the
`
`application for which registration is opposed.” Trademark Rule 2.101(c), 37 C.F.R.
`
`§ 2.101(c) (emphasis added); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL
`
`OF PROCEDURE (TBMP) § 308.03 (2022). Because PepsiCo was the only opposer
`
`identified in the ESTTA coversheet to the notice of opposition, the fee for only one
`
`opposer, PepsiCo, was charged and paid.
`
`Accordingly, Fabrica is not a party to this proceeding and, because the opposition
`
`period is closed, cannot be added as an opposer. Syngenta Crop Prot. Inc. v. Bio-Chek
`
`LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (where only one opposer was identified
`
`and charged during the filing process, second named opposer not considered party to
`
`
`
`5 Application Serial No. 90171766, filed September 10, 2020, based on Applicant’s alleged
`bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
`§ 1051(b).
`
`
`
`2
`
`

`

`Opposition No. 91269057
`
`proceeding); SDT, Inc. v. Patterson Dental Co., 30 USPQ2d 1707, 1709 (TTAB 1994)
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`(opposer’s licensee, having failed to join opposer in filing opposition during extension
`
`of time to oppose, cannot be joined after opposition is filed); see also TBMP § 303.05(b)
`
`(“Once a timely notice of opposition has been filed, and the time for opposing has
`
`expired, the right to pursue the filed case is a right individual to the timely filer.”).
`
`II. Opposer’s Amended Notice of Opposition Filed as a Matter of
`Course
`
`Opposer filed its amended notice of opposition on June 24, 2021, within twenty-
`
`one days of service of Applicant’s June 4, 2021 motion to dismiss. A plaintiff may
`
`amend its complaint once as a matter of course within twenty-one days after service
`
`of a responsive pleading or a motion to dismiss. Fed. R. Civ. P. 15(a)(1)(B).
`
`Accordingly, Opposer’s amended notice of opposition was filed as a matter of course
`
`and is Opposer’s operative pleading in this proceeding. Id.
`
`Applicant’s motion to dismiss Opposer’s original notice of opposition is therefore
`
`moot and will be given no further consideration. Dragon Bleu (SARL) v. VENM, LLC,
`
`112 USPQ2d 1925, 1926 (TTAB 2014).
`
`
`
`3
`
`

`

`Opposition No. 91269057
`
`III. Applicant’s Motion to Dismiss Opposer’s Amended Notice of
`Opposition
`
`
`
`
`
`A. Background
`
`In its amended notice of opposition, Opposer pleads the following grounds for
`
`opposition:6
`
`(1) “The TORTRIX mark is being or will be used by, or with the permission of,
`
`Applicant so as to misrepresent the source of the Goods on or in connection
`
`with which the mark is used. Registration of the Application therefore is
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`unlawful and should be refused pursuant to 15 U.S.C. § 1064(3)”;
`
`(2) Applicant did not and “does not have a bona fide intention to make lawful
`
`use of the TORTRIX mark in the United States”; and
`
`(3) “Applicant seeks to procure registration of the applied-for mark through
`
`fraud.”
`
`8 TTABVUE 5-6, ¶¶ 17, 19 and 20.
`
`
`
`6 Opposer pleads two additional “counts” for opposition, namely, that (1) “Applicant is not
`entitled to use the TORTRIX mark in commerce. Registration of the Application should
`therefore be refused under 15 U.S.C. § 1051(b),” 8 TTABVUE 5, ¶ 16; and (2) “Registration
`of the Application is barred by 15 U.S.C. § 1051 because the facts recited in the Application
`are not true.” Id. at ¶ 18. Neither “count” identifies a cognizable ground for opposition under
`the Trademark Act on its own. Rather, the first allegation is applicable to the entire
`opposition and the second allegation is subsumed within Opposer’s fraud claim.
`
` To the extent the amended notice of opposition may be construed as alleging that Applicant
`did not adopt the TORTRIX mark in good faith because it was aware of Opposer’s use of the
`TORTRIX mark outside the United States (8 TTABVUE 3, ¶ 6), no such claim is available.
`Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480 (Fed. Cir. 1990)
`(“Knowledge of a foreign use does not preclude good faith adoption and use in the United
`States.”).
`
`
`
`4
`
`

`

`Opposition No. 91269057
`
`In lieu of filing an answer to the amended notice of opposition, Applicant filed the
`
`motion to dismiss before us now, asserting that Opposer does not have “standing”;
`
`that Opposer has failed to allege “any interest in a US common law or federal
`
`trademark”; and that Opposer has not pleaded “any basis that would provide Opposer
`
`a claim upon which relief can be granted.” 9 TTABVUE 3.
`
`B. Analysis
`
`
`
`A motion to dismiss for failure to state a claim upon which relief can be granted
`
`is a test solely of the sufficiency of the complaint. Advanced Cardiovascular Sys. Inc.
`
`v. SciMed Life Sys. Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); NSM
`
`Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1032 (TTAB 2014); Covidien LP v.
`
`Masimo Corp., 109 USPQ2d 1696, 1697 (TTAB 2014). To withstand a motion to
`
`dismiss, a plaintiff need only allege facts that, if proved, would allow the Board to
`
`conclude, or to draw a reasonable inference, that: (1) the plaintiff is entitled to bring
`
`a statutory cause of action; 7 and (2) a valid ground exists for seeking to oppose
`
`registration. See, e.g., Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
`
`(Fed. Cir. 1998); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
`
`185, 187 (CCPA 1982); Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1028
`
`(TTAB 2015).
`
`
`
`7 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
`Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
`nomenclature, the Board’s prior decisions and those of the Federal Circuit interpreting
`Sections 13 and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Res., Inc.,
`2020 USPQ2d 11388, at *2 (TTAB 2020).
`
`
`
`5
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`

`

`Opposition No. 91269057
`
`For purposes of determining a motion to dismiss for failure to state a claim, the
`
`complaint must be examined in its entirety, construing the allegations liberally, as
`
`required by Fed. R. Civ. P. 8(e). IdeasOne Inc. v. Nationwide Better Health, 89
`
`USPQ2d 1952, 1953 (TTAB 2009); Fair Indigo LLC v. Style Conscience, 85 USPQ2d
`
`1536, 1538 (TTAB 2007). “Threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements, do not suffice” and are not accepted as
`
`true. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. Twombly,
`
`550 U.S. 544, 555 (2007)). “Factual allegations must be enough to raise a right to
`
`relief above the speculative level.” Twombly, 550 U.S. 544, 555 (2007). All well-
`
`pleaded, material allegations in the complaint are accepted as true and are construed
`
`in the light most favorable to the plaintiff. Ritchie v. Simpson, 170 F.3d 1092, 50
`
`USPQ2d 1023, 1027 (Fed. Cir. 1999); Young, 47 USPQ2d at 1754; Advanced
`
`Cardiovascular Sys., 26 USPQ2d at 1041; Fair Indigo, 85 USPQ2d at 1538.
`
`In defending a motion to dismiss, a plaintiff does not bear the burden of proving
`
`its case in its complaint. NSM Res. Corp., 113 USPQ2d at 1032; Enbridge, Inc. v.
`
`Excelerate Energy Ltd. P’ship, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009). Whether a
`
`plaintiff ultimately can prove its allegations is a matter to be determined at trial or
`
`on summary judgment, if appropriate. Advanced Cardiovascular Sys., 26 USPQ2d at
`
`1041; Covidien LP, 109 USPQ2d at 1697, n.3.
`
`
`
`6
`
`

`

`Opposition No. 91269057
`
`1. Availability of Misrepresentation of Source Claim in an
`Opposition
`
`
`
`Since Opposer’s allegations of entitlement to a statutory cause of action arise from
`
`its misrepresentation of source claim, we begin with a review of the availability of
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`such a claim in an opposition.
`
`The Trademark Act does not expressly provide that misrepresentation of source
`
`is an available claim in an opposition. Rather, misrepresentation of source is
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`identified in Section 14(3) of the Trademark Act as a claim that may be brought
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`against a registered mark “at any time.” 15 U.S.C. § 1064(3).
`
`To determine whether misrepresentation of source is an available ground for relief
`
`in an opposition, we look at the nature of the claim. Misrepresentation of source refers
`
`to the blatant misuse of a mark, or conduct amounting to the deliberate passing-off
`
`of one’s goods as those of another. Bayer Consumer Care AG v. Belmora LLC, 110
`
`USPQ2d 1623, 1632 (TTAB 2014) (“In order to prevail, petitioner must show that
`
`respondent took steps to deliberately pass off its goods as those of petitioner.”), rev’d
`
`on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d
`
`697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp.
`
`3d 1477 (E.D. Va. 2018), district court decision vacated and remanded, 2021 USPQ2d
`
`126 (4th Cir. 2021) (Board decision upheld by 4th Circuit), petition for rehearing en
`
`banc filed, No. 18-2183, 18-2232 (4th Cir. March 2, 2021); Belmora LLC v. Bayer
`
`Consumer Care AG, 142 S.Ct. 483 (Nov. 15, 2021) (petition for writ of certiorari to the
`
`to the United States Court of Appeals for the Fourth Circuit denied). That is, such a
`
`claim arises where the defendant actually uses a mark in a manner “to deliberately
`
`
`
`7
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`

`

`Opposition No. 91269057
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`pass off its goods as those of the plaintiff.” Id. (respondent’s initial packaging copied
`
`petitioner’s packaging and respondent “repeatedly invoked the reputation of
`
`petitioner’s FLANAX mark when marketing respondent’s FLANAX product in the
`
`United States”); see also E.E. Dickinson Co. v. T.N. Dickinson Co., 221 USPQ 713,
`
`715 (TTAB 1984) (petitioner alleged that respondent “willfully and deliberately
`
`commenced using its mark … to trade on petitioner’s good will and to deceive the
`
`consuming public” and pleaded specific examples of how respondent was using the
`
`mark); McDonnell Douglas Corp. v. Nat’l Data Corp., 228 USPQ 45, 47 (TTAB 1985)
`
`(granting motion to dismiss misrepresentation of source claim where there were “no
`
`allegations of conduct of respondent amounting to use of its registered mark in such
`
`a way as to misrepresent the source of the services as required by the board’s prior
`
`decision.”); Osterreichischer Molkerei-und Kasereiverband Registriete GmbH v. Marks
`
`and Spencer Ltd., 203 USPQ 793, 794 (TTAB 1979) (misrepresentation of source
`
`claim lies where a “mark is being used by, or with the permission of, the registrant
`
`so as to misrepresent the source of the goods or services in connection with which the
`
`mark is used.”).
`
`There is nothing in the nature of a misrepresentation of source claim that would
`
`limit it to registered marks. Moreover, other claims expressly identified only in
`
`Section 14(3), e.g. fraud, abandonment and genericness, may be asserted in opposition
`
`proceedings.
`
`Public policy further supports allowing a claim of misrepresentation of source in
`
`an opposition. It would be judicially inefficient to limit misrepresentation of source
`
`
`
`8
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`

`

`Opposition No. 91269057
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`claims to cancellation proceedings as a plaintiff with facts supporting multiple claims,
`
`including misrepresentation of source, would not be able to bring all of its claims in
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`a single opposition proceeding potentially leading to piecemeal litigation. Colorado
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`Rive Water Conservation Dist. v. U.S., 424 U.S. 800, 818 (discussing the “desirability
`
`of avoiding piecemeal litigation”); Ultra-Precision Mfg. Ltd. v. Ford Motor Co., 338
`
`F.3d 1353, 67 USPQ2d 1790, 1794 (Fed. Cir. 2003) (recognizing the “long-standing
`
`policy against piecemeal litigation”). The potential harm to a plaintiff also might be
`
`compounded if it were required to wait until a mark registers to assert
`
`misrepresentation of source.
`
`For these reasons, we find that a plaintiff should be permitted to assert
`
`misrepresentation of source in an opposition. But because the claim arises from the
`
`blatant misuse of another’s mark, a plaintiff must be able to point to present, not
`
`speculative future, activity of the defendant aimed at deceiving the public that results
`
`in the misrepresentation of source. Otto Int’l, Inc. v. Otto Kern GmbH, 83 USPQ2d
`
`1861, 1864 (TTAB 2007). Accordingly, we find that misrepresentation of source is an
`
`available ground for opposition: (1) against a use-based application (either filed as
`
`use or amended to allege use) under Section 1(a) of the Trademark Act, 15 U.S.C.
`
`§ 1051(a); or (2) a non-use based application, provided that the opposer alleges
`
`sufficient facts to support use of the applied-for mark in commerce.
`
`2. Sufficiency of Entitlement Allegations Arising from Alleged
`Misrepresentation of Source
`
`
`Opposer must plead facts sufficient to demonstrate that it is entitled to bring a
`
`statutory cause of action against Applicant. Peterson v. Awshucks SC, LLC, 2020
`
`
`
`9
`
`

`

`Opposition No. 91269057
`
`USPQ2d 11526, at *5 (TTAB 2020) (citing Australian Therapeutic Supplies Pty. Ltd.
`
`v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020), cert.
`
`denied, 142 S. Ct. 82 (2021) (internal citation omitted)). A party in the position of
`
`plaintiff may oppose the registration of a mark where such an opposition is within
`
`the zone of interests protected by the statute, 15 U.S.C. § 1063, and the party’s
`
`reasonable belief in damage is proximately caused by registration of the mark.
`
`Peterson, 2020 USPQ2d 11526, at *5 (citing Corcamore, LLC v. SFM, LLC, 978 F.3d
`
`1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671
`
`(2021)).
`
`“Proof of [entitlement to a statutory cause of action] in a Board opposition is a low
`
`threshold, intended only to ensure that the plaintiff has a real interest in this matter,
`
`and is not a mere intermeddler.” Syngenta Crop. Protection, 90 USPQ2d at 1118 n.8
`
`(citing Ritchie v. Simpson, 50 USPQ2d at 1025-26); see also Meenaxi Enter., Inc. v.
`
`Coca-Cola Co., 38 F.4th 1067, 2022 USPQ2d 602, at *4 (Fed. Cir. 2022) (“While the
`
`zone-of-interest ‘test is not especially demanding,’ it nonetheless imposes a critical
`
`requirement.”) (internal citations omitted); Bayer Consumer Care AG v. Belmora
`
`LLC, 110 USPQ2d 1623, 1631 (TTAB 2014) (“The Federal Circuit has enunciated a
`
`liberal threshold for determining [entitlement to a statutory cause of action].”), aff’d
`
`338 F. Supp. 3d 477 (E.D. Va. 2018), aff’d in relevant part, vacated and remanded on
`
`other grounds, 987 F.3d 284, 2021 USPQ2d 126 (4th Cir. 2021).
`
`Applicant argues that Opposer has not sufficiently alleged its entitlement to a
`
`statutory cause of action because “Opposer has not alleged any interest in a US
`
`
`
`10
`
`

`

`Opposition No. 91269057
`
`common law or federal trademark[.]” 9 TTABVUE 3. Opposer, however, need not
`
`allege ownership of a U.S. trademark to plead entitlement to a statutory cause of
`
`action. See Australian Therapeutic, 2020 USPQ2d 10837, at *1 (holding that a
`
`plaintiff in a Board proceeding may establish entitlement to bring a statutory cause
`
`of action “regardless of whether [the plaintiff] lacks a proprietary interest in an
`
`asserted unregistered mark”). The Federal Circuit has held that misrepresentation
`
`of source “extend[s] to the improper use of marks that cause commercial injury[.]”
`
`Meenaxi v. Coca-Cola, 2022 USPQ2d 602, at *6. Accordingly, a plaintiff pleading
`
`misrepresentation of source may plead entitlement based on reputational injury or
`
`lost sales provided that the plaintiff establishes a reputational interest in the United
`
`States. Id. at *4 (holding petitioner did not establish entitlement to a statutory cause
`
`of action because it failed to introduce sufficient evidence to support that its
`
`reputation extends to the United States).8
`
`Here, Opposer has not pleaded any lost sales due to Applicant’s alleged conduct.
`
`Rather, Opposer pleads injury to reputation in the United States and that Opposer
`
`will not be able to register its TORTRIX mark in the United States if the involved
`
`application matures to registration. Specifically, Opposer pleads:
`
`
`
`8 A plaintiff that can show an entitlement to a statutory cause of action on one ground has
`the right to assert any other grounds in an opposition or cancellation proceeding. See Hole In
`1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *3 (TTAB 2020) (once standing shown on
`one ground, plaintiff has right to assert any other ground in proceeding); Poly-Am., L.P. v.
`Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show
`standing on the ground of functionality, it can assert any other grounds, including
`abandonment). We discuss entitlement to a statutory cause of action with respect to
`misrepresentation of source because, as discussed below, no grounds presently remain in the
`opposition.
`
`
`
`11
`
`

`

`Opposition No. 91269057
`
`• “For years, Opposers 9 have sold corn-based snack foods and related
`goods using the identical trademark, TORTRIX, shown in the
`application, in many countries in Central and South America. Opposers
`also own several registrations for the identical trademark, TORTRIX,
`for corn-based snack foods and related goods in many countries in
`Central and South America.” 8 TTABVUE 3, ¶ 3.
`
`• “As the result of Opposers’ use and registration of TORTRIX in Central
`and South America, consumers have come to know, rely on, and
`recognize Opposers’ goods by the mark TORTRIX, not just in Central
`and South America, but in the United States as well.” Id. at ¶ 4.
`
`• “On information and belief, Applicant is improperly importing,
`distributing, and/or selling Opposers’ products in the United States,
`using Opposers’
`identical packaging with Opposers’
`identical
`trademark, or intends to do so.” Id. at 4, ¶ 7.
`
`• “On information and belief, Applicant intends to make, and/or is
`making, blatant misuse of the TORTRIX mark in a manner calculated
`to deceive U.S. consumers, and to trade on the goodwill and reputation
`of Opposers and Opposer’s’ TORTRIX mark in the United States created
`by Opposers’ use in Central and South America.” Id. at ¶ 8.
`
`• “Registration of the Application by Applicant would provide prima facie
`exclusive rights to Applicant to use and enforce rights in Opposers’
`trademark. Therefore, allowing registration of Applicant’s mark is a
`source of damage and injury to Opposers inasmuch as it would preclude
`Opposers from properly owning and using its trademark in the United
`States and from preventing confusion among consumers in the United
`States.” Id. at 6, ¶ 21.
`
`
`
`
`
`
`
`9 PepsiCo uses the plural “Opposers” in the amended notice of opposition to refer to itself and
`its alleged wholly owned subsidiary, Fabrica. Even though Fabrica is not joined as a party-
`plaintiff, PepsiCo can rely on allegations of Fabrica’s use as a wholly owned subsidiary to
`establish its entitlement to a statutory cause of action. See AT&T Mobility LLC v. Dormitus
`Brands LLC, 2020 USPQ2d 53785, at *10 (TTAB 2020) (entitlement to a statutory cause of
`action established for parent corporation through damage to its wholly-owned subsidiary);
`see also Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1679 (TTAB 2007) (entitlement to a
`statutory cause of action established based, in part, on opposer’s privity relationship, as a
`wholly-owned subsidiary, with company that had a competitive right to use mark
`descriptively).
`
`
`
`12
`
`

`

`Opposition No. 91269057
`
`Opposer has not pleaded a plausible entitlement to relief. The allegations that
`
`Applicant “intends to make, and/or is making, blatant misuse” of the TORTRIX mark
`
`and is “using Opposers’ identical packaging with Opposers’ identical mark or intends
`
`to do so” are merely speculative. Opposer has not pleaded any facts to support that
`
`Applicant is actually using the TORTRIX mark that would “raise [the] right to relief
`
`above the speculative level.” Twombly, 550 U.S. at 555. Nor has Opposer pleaded any
`
`facts to support how its use of the TORTRIX mark in Central and South America has
`
`resulted in the mark having a reputation among consumers in the United States.
`
`Meenaxi v. Coca-Cola, 2022 USPQ2d 602, at *9 (Coca-Cola did not prove that
`
`consumers in the United States were aware of its THUMS UP and LIMCA marks).
`
`In view of the foregoing, Opposer has failed to sufficiently plead its entitlement to
`
`a statutory cause of action for misrepresentation of source, and as discussed below,
`
`no other ground for opposition presently remains.
`
`3. Sufficiency of Misrepresentation of Source Allegations
`
`
`
`A plaintiff asserting misrepresentation of source “must do more than make a bald
`
`allegation in the language of the statute, as this does not give fair notice of the basis
`
`for [the] claim.” Otto Int’l v. Otto Kern, 83 USPQ2d at 1864. Specifically, a plaintiff
`
`must plead the following three elements to set forth a viable claim for
`
`misrepresentation of source: (1) present use of the challenged mark by the defendant;
`
`(2) specific acts or conduct by the defendant that are deliberately aimed at passing-
`
`off its goods as those of the plaintiff; see id., and (3) the nature of the injury to plaintiff
`
`
`
`13
`
`

`

`Opposition No. 91269057
`
`as a result of defendant’s deliberate conduct (i.e. damage to reputation or lost sales).
`
`See Meenaxi v. Coca-Cola, 2022 USPQ2d 602, at *6.
`
`In its amended notice of opposition, Opposer pleads that:
`
`• “For years, Opposers have sold corn-based snack foods and related goods
`using the identical trademark, TORTRIX, shown in the application, in
`many countries in Central and South America. Opposers also own
`several registrations for the identical trademark, TORTRIX, for corn-
`based snack foods and related goods in many countries in Central and
`South America. 8 TTABVUE 3, ¶ 3.
`
`• “As a result of Opposers’ use and registration of TORTRIX in Central
`and South America, consumers have come to know, rely on, and
`recognize Opposers’ goods by the mark TORTRIX, not just in Central
`and South America, but in the United States as well. Id. at ¶ 4.
`
`• “On information and belief, Applicant was aware that Opposers were
`using the TORTRIX mark in Central and South America in connection
`with the Goods when it filed the Application seeking to register the
`identical mark in the United States.” Id. at ¶ 6.
`
`• “On information and belief, Applicant is improperly importing,
`distributing, and/or selling Opposers’ products in the United States,
`using Opposers’
`identical packaging with Opposers’
`identical
`trademark, or intends to do so.” Id. at ¶ 7.
`
`• “On information and belief, Applicant intends to make, and/or is
`making, blatant misuse of the TORTRIX mark in a manner calculated
`to deceive U.S. consumers, and to trade on the goodwill and reputation
`of Opposers and Opposers’ TORTRIX mark in the United States created
`by Opposers’ use in Central and South America.” Id. at 4, ¶ 8.
`
`• “On information and belief, Applicant intends to use, and/or is using, the
`TORTRIX mark to misrepresent to consumers, including consumers in
`the U.S. familiar with Opposers’ TORTRIX mark, that Applicant is the
`source of Opposers’ goods sold and distributed in the United States
`under the TORTRIX mark.” Id. at ¶ 9.
`
`• “Applicant intends to pass off, and/or is passing off, Opposers’ goods as
`those of Applicant.” Id. at ¶ 10.
`
`14
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`Opposition No. 91269057
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`• “The TORTRIX mark is being or will be used by, or with the permission
`of, Applicant so as to misrepresent the source of the Goods on or in
`connection with which the mark is used. Registration of the Application
`therefore is unlawful and should be refused pursuant to 15 U.S.C.
`§ 1064(3).” Id. at 5-6, ¶ 20.
`
`
`
`The pleading is insufficient for several reasons.
`
`First, as explained, a claim of misrepresentation of source may be asserted in an
`
`opposition only if the opposed mark is in use. Here, the involved application was filed
`
`based on an allegation of a bona fide intention to use the mark in commerce, Applicant
`
`has not filed an allegation of use of the mark in commerce, and the pleading is
`
`speculative as to whether Applicant is using the TORTRIX mark (e.g. Applicant
`
`“intends to use, and/or is using” and the mark “is being or will be used by” Applicant).
`
`Opposer must allege unequivocal facts to support that Applicant is using its mark.
`
`Mere speculation is not sufficient. Twombly, 550 U.S. at 555.
`
` Second, Opposer has not alleged any unequivocal facts10 to support that Applicant
`
`has engaged in specific acts or conduct, such as copying Opposer’s display of its mark,
`
`product packaging or advertising, to support that Applicant is using the TORTRIX
`
`mark in a manner to deliberately pass-off its goods as those of Opposer. See Bayer
`
`Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587, 1592 (TTAB 2009)
`
`(misrepresentation of source sufficiently pleaded where complaint included
`
`“photographic comparison of the parties’ respective packaging” and allegations that
`
`
`
`10 In the amended notice of opposition, Opposer speculatively pleads “On information and
`belief, Applicant is improperly importing, distributing, and/or selling Opposers’ products in
`the United States, using Opposers’ identical packaging with Opposers’ identical trademark,
`or intends to do so.” 8 TTABVUE 3, ¶ 7 (emphasis added).
`
`
`
`15
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`

`

`Opposition No. 91269057
`
`the “respondent copied petitioner’s mark, including its particular display, and
`
`virtually all elements of its packaging”); E.E. Dickinson, 221 USPQ at 715
`
`(misrepresentation of source claim sufficient where plaintiff alleged facts to support
`
`that the defendant was using its registered marks in an attempt to appropriate
`
`petitioner’s “trade identity,” namely, using a product label “giv[ing] prominence to
`
`‘T.N. DICKINSON’S’ so as to colorably imitate and appropriate petitioner’s
`
`‘DICKINSON’S’ trademark,” and using “a bottle … substantially identical to
`
`petitioner’s and … a label which includes colorable imitations of and appropriates
`
`petitioner’s ‘YELLOW LABEL’ and bull’s eye mark”). Again, the pleading here is
`
`speculative. See 8 TTABVUE 3, ¶ 7.
`
`Third, as discussed, Opposer has not alleged facts to support how Opposer’s
`
`TORTRIX mark has a reputation among relevant U.S. consumers when it alleges use
`
`of the mark only in Central and South America. Opposer must allege facts that, if
`
`proven, would establish a nexus between its use of the TORTRIX mark in Central
`
`and South America and the alleged reputation of the TORTRIX mark among relevant
`
`U.S. consumers. Without such allegations of facts, Applicant has no fair notice of the
`
`basis for Opposer’s conclusory allegation that its TORTRIX mark has a reputation in
`
`the United States.
`
`Accordingly, Opposer has failed to state a claim for misrepresentation of source
`
`on which relief can be granted.
`
`
`
`16
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`

`

`Opposition No. 91269057
`
`4. Sufficiency of Lack of Bona Fide Intent to Use Allegations
`
`
`
`Opposer bases its lack of bona fide intent to use claim on allegations that “any use
`
`Applicant has made or will make of the TORTRIX mark in the United States is or
`
`would be unlawful pursuant to 15 U.S.C. § 1064(3) [Section 14(3)] and/or 15 U.S.C.
`
`§ 1125(a)(1) [Section 43(a)(1)]” 11 and that “Applicant is not entitled to use the
`
`TORTRIX mark in commerce.” 8 TTABVUE 4-5, ¶¶ 11-12, 16, 17.
`
`The Board will hold that a use of, or intent to use, a mark is unlawful only when
`
`either: (1) a court or government agency having competent jurisdiction under the
`
`statute involved has previously determined that the party is not in compliance with
`
`the relevant statute; or (2) the moving party has shown there is a per se violation of
`
`a statute regulating the sale of a party’s goods. See General Mills Inc. v. Health Valley
`
`
`
`11 15 U.S.C. § 1125(a)(1) reads:
`
`Any person who, on or in connection with any goods or services, or any
`container for goods, uses in commerce any word, term, name, symbol,
`or device, or any combination thereof, or any false designation of origin,
`false or misleading description of fact, or false or misleading
`representation of fact, which—
`
`(A) is likely to cause confusion, or to cause mistake, or to deceive
`as to the affiliation, connection, or association of such person
`with another person, or as to the origin, sponsorship, or approval
`of his or her goods, services, or commercial activities by another
`person, or
`
`(B) in commercial advertising or promotion, misrepresents the
`nature, characteristics, qualities, or geographic origin of his or
`her or another person’s goods, services, or commercial activities,
`shall be liable in a civil action by any person who believes that
`he or she is or is likely to be damaged by such act.
`
`
`
`
`
`17
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`

`

`Opposition No. 91269057
`
`Foods, 24 USPQ2d 1270, 1273 (TTAB 1992); Kellogg Co. v. New Generation Foods
`
`Inc., 6 USPQ2d 2045, 2047 (TTAB 1988). Accordingly, to plead a lack of bona fide
`
`intent to use claim on the ground that the intended use would be unlawful, a plaintiff
`
`must plead that (1) a court or agency has determined that use of the involved mark
`
`for the involved goods does not comply with a relevant statute; or (2) such use would
`
`be a per se violation of a relevant statute. See In re JuJu Joints, LLC, 120 USPQ2d
`
`1568, 1569 (TTAB 2016) (holding that applicant could not have a bona fide intent to
`
`use its mark because the identified goods (cannabis and marijuana vaporizing
`
`apparatuses) were per se unlawful under the Controlled Substances Act); see also
`
`John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1947-48 (TTAB 2010)
`
`(finding applicant could not have a bona fide intent to use the mark because a court
`
`had enjoined applicant from using the mark that violated opposer’s right of publicity).
`
`Opposer has not alleged any final determination of noncompliance by a court or
`
`agency. Rather, Opposer has alleged that Applicant’s intended use of the TORTRIX
`
`mark would be a per se violation of Section 14(3) and Section 43(a)(1) of the
`
`Trademark Act. But a claim on such grounds is not viable.
`
`A trademark cancellation or opposition proceeding