Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1168224
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`Filing date:
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`10/25/2021
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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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`91269584
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`Party
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`Correspondence
`Address
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`Plaintiff
`Republic Brands L.P.
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`ANTONY J MCSHANE
`NEAL GERBER & EISENBERG LLP
`2 N LASALLE STREET, SUITE 1700
`CHICAGO, IL 60602
`UNITED STATES
`Primary Email: ecfdocket@nge.com
`Secondary Email(s): amcshane@nge.com, temanuelson@nge.com, acraw-
`ford@nge.com, ecfdocket@nge.com, lstark@nge.com
`312-269-8000
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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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`Antony J. McShane
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`amcshane@nge.com, afraker@nge.com, temanuelson@nge.com, acraw-
`ford@nge.com, ecfdocket@nge.com
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`Signature
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`Date
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`/Antony J. McShane/
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`10/25/2021
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`Attachments
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`Reply in Support of Motion to Dismiss Counterclaim.pdf(129341 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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`REPUBLIC BRANDS L.P.
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`Opposer/Respondent,
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`v.
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`KRETEK INTERNATIONAL, INC.
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`Applicant.
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`
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`Opposition No. 91269584
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`Mark: VENTURA CIGAR
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`Serial No.: 88/499,702
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`REPLY IN SUPPORT OF MOTION TO DISMISS COUNTERCLAIM
`AND MOTION TO DISMISS FIRST AMENDED COUNTERCLAIM
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`Applicant seeks to gain leverage in this proceeding by attempting to transform an example
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`of routine co-branding in the marketplace into a claim that Opposer has somehow abandoned the
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`mark it asserts. However, because the mere allegation that Opposer’s affiliate owns the marks that
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`also appear on a co-branded specimen does not support any reasonable inference that the mark has
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`been abandoned, Applicant is forced to build its claim through a series of suppositions, speculation
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`and conclusions. The Iqbal/Twombly pleading standard is clear that such allegations do not open
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`the door to discovery, and that Applicant must come forward with factual allegations sufficient to
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`state a plausible claim. Applicant has failed to do so in both its original counterclaim and its First
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`Amended Counterclaim, which adds only two conclusory allegations based on “information and
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`belief” reciting the elements of an abandonment claim. Accordingly, Opposer hereby moves to
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`dismiss Applicant’s First Amended Counterclaim for the reasons set forth below and in Opposer’s
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`motion to dismiss the original counterclaim.
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`I.
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`The Iqbal/Twombly Pleading Standard Requires More Than Bare Notice.
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`
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`Applicant acknowledges that “a complaint must contain sufficient factual matter, accepted
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`as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
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`

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`(2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). However, Applicant
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`appears to be unfamiliar with the ramifications of Iqbal and Twombly, repeatedly citing pre-
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`Twombly cases and invoking the very standard rejected by the Supreme Court. Indeed, the Court
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`expressly addressed “the accepted rule that a complaint should not be dismissed for failure to state
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`a claim unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his
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`claim which would entitle him to relief.” Twombly at 561. The Court held that “[t]he phrase is best
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`forgotten” and “described the breadth of opportunity to prove what an adequate complaint claims,
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`not the minimum standard of adequate pleading to govern a complaint's survival.” Id. at 563
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`(emphasis added).
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`Applicant cobbles together a hodgepodge of de-contextualized snippets from inapposite
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`cases1 in an attempt to suggest that its counterclaim is sufficiently pled merely because Opposer
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`“understands that Kretek is moving to cancel Republic’s mark's registration based on
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`abandonment.” Resp. at 6. Applicant further asserts that “it is the purpose of discovery, not
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`pleading, to flesh out specific factual issues.” Id. at 1-2. However, the Iqbal/Twombly standard is
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`clear: Rule 8 “does not unlock the doors of discovery for a plaintiff armed with nothing more than
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`conclusions.” Iqbal at 678. “Factual allegations must be enough to raise a right to relief above the
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`speculative level[.]” Twombly at 545.
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`1 For example, in addition to the many pre-Twombly cases, Applicant cites patent-specific cases such as K-Tech
`Telecomm., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013), involving Form 18, a sample complaint
`for direct patent infringement that required a plaintiff to provide only bare-bones allegations. Form 18 was abrogated
`in 2015, and “compliance with the skeletal pleading of Form 18 is no longer sufficient to state a claim of direct
`infringement.” Dresser, LLC v. VRG Controls, LLC, 2018 WL 10426611 at n.2 (N.D. Ill. Nov. 28, 2018). Applicant
`also cites a patent case involving a pro se plaintiff, in which pleadings are held to a lesser standard. McZeal v. Sprint
`Nextel Corp., 501 F.3d 1354, 1356 (Fed. Cir. 2007).
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`2
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`II.
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`Applicant’s Factual Allegations Are Insufficient.
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`Applicant correctly notes that determining a motion to dismiss requires a “context-specific”
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`inquiry. Resp. at 6. Here, the context is unusual in that Applicant does not allege that the
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`VENTURA WHITES mark is not in use, as in a typical abandonment claim. Instead, Applicant
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`makes only two allegations that could be reasonably considered material and factual in nature.
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`First, Applicant alleges that the VENTURA WHITES mark appears alongside two other marks –
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`GAMBLER and a Gambler Portrait – on a specimen of use submitted in 2017. Second, Applicant
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`alleges that Opposer’s affiliate, Top Tobacco L.P., owns federal registrations for the GAMBLER
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`and Gambler Portrait marks. These facts plainly cannot support a claim of abandonment on their
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`own, as Applicant admits that use of the VENTURA WHITES mark has not ceased. Applicant
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`must therefore allege additional facts sufficient to make plausible its contention that although the
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`mark is in use, it is not (and has not been) in use by Opposer.
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`Applicant fails to allege any such facts. Instead, Applicant relies on a string of speculation,
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`suppositions and conclusions. Rather than alleging facts that would show how the appearance of
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`two entities’ marks on the same product is anything other than ordinary co-branding, Applicant
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`merely concludes that the single term “by GAMBLER” is somehow an admission that the source
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`is one entity and not the other. Counterclaim, ¶ 10. Rather than alleging facts bearing on whether
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`the co-branded use depicted on the specimen is the only use of the VENTURA WHITES mark,
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`Applicant merely concludes that Opposer improperly claims ownership of the mark. Id., ¶ 21.
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`Applicant engages in speculation, completely devoid of any factual basis, with regard to how
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`consumers perceive the co-branded products. Id., ¶¶ 15-16. There are simply no alleged facts
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`linking Applicant’s premise – the co-branded specimen – to its conclusion of abandonment. Under
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`these circumstances, where the mark is admittedly in use, Applicant’s allegations cannot satisfy
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`3
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`the Iqbal/Twombly standard and open the door to discovery. Indeed, the entirely speculative nature
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`of Applicant’s counterclaim reveals it to be a litigation tactic, seeking to gain leverage through the
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`threat of forcing Opposer to expend resources on discovery.
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`III. Applicant’s First Amended Counterclaim Does Not
`Cure the Deficiencies of the Original.
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`Like Applicant’s original counterclaim, its First Amended Counterclaim fails to set forth
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`sufficient factual allegations to state a plausible claim of abandonment. The amended claim adds
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`only two allegations, both of which are based on “information and belief” and merely recite the
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`elements of an abandonment claim in conclusory fashion. See First Amend. Counterclaim at ¶¶
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`23-24. These two formulaic statements are insufficient to cure the rampant speculation and
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`conclusions on which Applicant’s claim is based. Because the First Amended Counterclaim is no
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`more factually substantive than the original, it should be dismissed for the same reasons, as set
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`forth above and in Opposer’s initial motion to dismiss the original.
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`IV. Conclusion
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` Applicant has twice failed to allege sufficient facts to state a plausible claim that although
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`Opposer’s VENTURA WHITES mark is admittedly in use, such use nonetheless constitutes
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`abandonment based merely on a single co-branded specimen. Applicant’s allegations plainly do
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`not rise above the speculative level, as required by the Iqbal/Twombly standard. Rather than
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`unlocking the door to costly and time-consuming discovery based on nothing more than
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`speculation and conclusions, the Board should dismiss the operative iteration of Applicant’s
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`counterclaim.
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`4
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`

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`Date: October 25, 2021
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`Respectfully submitted,
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`
`
`/Antony J. McShane/
`One of the Attorneys for the
`Opposer, Republic Brands L.P.
`
`Antony J. McShane
`Andrew S. Fraker
`NEAL, GERBER & EISENBERG, LLP
`Two North LaSalle Street, Suite 1700
`Chicago, Illinois 60602-3801
`Telephone: (312) 269-8000
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`5
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`CERTIFICATE OF SERVICE
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`I, Antony J. McShane, an attorney, state that I caused a copy of the foregoing MOTION
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`TO DISMISS COUNTERCLAIM to be served upon:
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`CATHERINE F HOFFMAN
`DICKINSON WRIGHT PLLC
`350 EAST LAS OLAS BLVD, SUITE 1750
`FT. LAUDERDALE, FL 33301
`choffman@dickinsonwright.com
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`by email on October 25, 2021
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`/Antony J. McShane/
`Antony J. McShane
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`6
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