Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1261153
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`Filing date:
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`01/20/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91277115
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
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`Filer's email
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`Signature
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`Date
`
`Attachments
`
`Plaintiff
`Institute of Divine Metaphysical Research
`
`PATRICE P JEAN
`HUGHES HUBBARD & REED
`ONE BATTERY PARK PLAZA
`NEW YORK, NY 10004-1482
`UNITED STATES
`Primary email: trademarks@hugheshubbard.com
`Secondary email(s): patrice.jean@hugheshubbard.com
`212-837-6000
`
`Motion to Dismiss - Rule 12(b)
`
`Patrice P. Jean
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`trademarks@hugheshubbard.com
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`/Patrice P. Jean/
`
`01/20/2023
`
`2023-01-20 Motion to Dismiss Amended CC 2022-Nov OPP
`91277115.pdf(312793 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
` INSTITUTE OF DIVINE METAPHYSICAL
`RESEARCH
`
`vs.
`
`CARLA KINLEY DAVIS
`
`Opposer and Counter-
`Defendant,
`
`Opposition No. 91277115
`Application Serial No. 90509259
`
`Mark:
`ELOHIM THE ARCHETYPE
`(ORIGINAL) PATTERN OF THE
`UNIVERSE
`
`Applicant and Counter-
`Claimant
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`MOTION TO DISMISS APPLICANT’S AMENDED COUNTERCLAIMS
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`Opposer and Counter-Defendant, Institute of Divine Metaphysical Research (“IDMR”),
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`moves to dismiss the amended counterclaims filed by Applicant and Counter-Claimant Carla
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`Kinley Davis (“Davis”), for failure to state a claim or cause of action on which relief can be
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`granted. Davis has lodged counterclaims for cancellation of IDMR’s registered mark ELOHIM,
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`U.S. Reg. No. 6,669,266. Applicant’s counterclaims do not assert a statutory cause of action
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`because the Board does not have jurisdiction under the statute to consider Applicant’s assertion of
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`copyright infringement, and Davis asserts no other claim that can survive a motion to dismiss.
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`Further, res judicata precludes Davis from re-litigating issues already raised, and dismissed with
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`prejudice by this Board, in Davis’ prior Opposition to IDMR’s now-registered mark. IDMR
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`respectfully requests that the counterclaims be dismissed.
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`IDMR is a nonprofit, nondenominational, religious and scientific research organization,
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`offering public religious meetings, religious and scientific lectures, seminars and prayer dedication
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`of religious services. IDMR was founded in 1931 by Dr. Henry C. Kinley, and was incorporated
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`

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`as a California non-profit in 1958. Since its founding, IDMR has grown into an organization with
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`multiple branches across the country. It has used the ELOHIM mark continuously since at least
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`January 1, 1958.
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`I.
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`
`
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`DAVIS FAILS TO STATE A CLAIM OR CAUSE OF ACTION ON
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`WHICH RELIEF CAN BE GRANTED
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`Davis’ counterclaim for cancellation of IDMR’s ELOHIM mark, as amended, still does
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`not establish a statutory cause of action. First, the Board does not have statutory authority to
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`address Davis’ copyright claims. Second, Davis’ allegations of false association and fraud are
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`inadequately pled and cannot survive a motion to dismiss.
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`
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`
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`A.
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`
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`DAVIS IS NOT ENTITLED TO A STATUTORY CAUSE OF ACTION
`BECAUSE THE BOARD DOES NOT HAVE JURISDICTION OVER
`DAVIS’ COPYRIGHT CLAIM
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`
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`
`
`
`
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`Davis’ counterclaim for cancellation of IDMR’s ELOHIM mark, as amended, still does
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`not establish a statutory cause of action. This is because the Board does not have authority under
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`the statute to adjudicate Davis’ core contention: that the ELOHIM mark infringes on Davis’
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`alleged copyright. The only right to the registered mark alleged by Davis is that Davis “is an
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`heiress” to “artwork” created by R.P. Kinley, and thus Davis’ claim rests in copyright, not
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`trademark law. Amended Counterclaim at ¶¶ 3-8.
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`Trademark Act § 14, 15 U.S.C. § 1064, provides authority to cancel registration of a
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`trademark. However, the TTAB “has no jurisdiction to determine copyright infringement.”
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`Carano v. Vina Concha y Toro S.A., 67 U.S.P.Q. 1149, 2003 WL 21353890 at *3 (TTAB 2003)
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`(citing Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 509 (C.C.P.A. 1972) (“[the
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`TTAB] has no jurisdiction over…pleadings insofar as they allege copyright infringement…”)).
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`In Carano, an opposition was filed against a design mark by the graphic artist who created
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`the design portion of the mark and registered it with the Copyright Office. Carano, 2003 WL
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`2
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`

`

`
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`21353890 at *1. The opposer claimed that the applicant was not the owner of the design portion
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`of the mark and that opposer would be damaged by registration of applicant’s mark. Id. In
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`response, the applicant moved to dismiss the opposition, arguing that the opposer had “failed to
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`allege any statutory ground for denying registration of applicant’s mark.” Id. The Board agreed
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`with the applicant and dismissed the opposition, stating that:
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`An allegation of copyright infringement alone does not constitute the necessary statutory
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`ground which negates the appellant’s right to the subject registration… Questions of
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`copyright infringement are left to the federal courts as specified in the Copyright Act (28
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`U.S.C. §1338(a)) or to administrative agencies with specified authority to address
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`copyright issues, e.g., the International Trade Commission (37 U.S.C. §1337). Thus, the
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`Board has no jurisdiction to determine copyright infringement. In fact, the statutory
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`schemes set out in the Copyright Act and the Trademark Act are entirely separate and
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`independent, and protect different rights even when those rights arise from the same words
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`and/or designs.
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`Id. at *3 (citations omitted).
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`For the reasons outlined in Carano, the Board must dismiss Davis’ copyright infringement
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`claims. Davis’s counterclaims rest on the assertions that the ELOHIM mark should be cancelled
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`because “the artwork shown in Opposer’s mark was created in 1955 by R. P. Kinley” and that R.
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`P. Kinley and his heirs—which allegedly includes Davis—did not give IDMR the right to use the
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`artwork. Amended Counterclaim at ¶¶ 3-9. As such, Davis’ argument that IDMR lacks rights to
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`the ELOHIM mark “is not distinct from [Applicant’s] copyright claim” and therefore “presents no
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`statutory trademark issues to be decided by the Board.” See, Carano at *4; see also, In Re Derek
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`A. Lopez v. Ted Wong JKD, Opp. Nos. 91216538; 91216605; 91216672, 2019 WL 2067731 at *5
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`(TTAB 2019) (non-precedential) (citing Carano in support of the determination that an opposer’s
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`
`
`3
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`

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`claim that he is the owner of the applied-for logo under the Copyright Act fails to state a ground
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`for opposition because “[a]n allegation of copyright infringement, standing alone, is not a statutory
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`claim found in the Lanham Act.”).
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`Davis’ claims based on copyright ownership fail to assert a cause of action that is
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`adjudicable by the Board. As the Board lacks jurisdiction to determine issues of copyright
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`infringement, Davis’ counterclaims for cancellation of the registration for IDMR’s ELOHIM mark
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`must be dismissed.
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`
`
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`B.
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`
`DAVIS’ CLAIM OF FALSE ASSOCIATION IS INSUFFICIENT TO
`SURVIVE A MOTION TO DISMISS
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`Davis alleges that IDMR’s use of its registered mark “creates a false association” with
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`Davis under the Lanham Act, Section 43(a), 15 U.S.C. § 1125(a). Amended Counterclaim at ¶ 19.
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`However, Davis fails to meet the minimum pleading requirements to state a claim for false
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`association. Davis’ assertion of a “false association” is a bare legal conclusion unsupported by
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`any facts, and thus cannot survive a motion to dismiss.
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`An allegation of false association requires, at a minimum, factual allegations supporting
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`each element of such a claim, as outlined in Univ. of Notre Dame du Lac v. J.C. Gourmet Food
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`Imps. Co., 703 F.2d 1372, 1375-77 (Fed. Cir. 1983) and TMEP 1203.03(b)(i) (listing the necessary
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`elements to establish false association under Lanham Act Sec. 2(a)).
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`The necessary elements of a claim of false association in this case, following the guidance
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`in Notre Dame and TMEP 1203.03(b)(i), would be:
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`1. The ELOHIM mark is “the same as, or a close approximation of” a name or identity
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`used by Davis prior to IDMR’s adoption of the mark in 1958;
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`2. The ELOHIM mark “points uniquely and unmistakably” to Davis;
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`3. Davis is not connected with the services provided by IDMR under the mark; and
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`4
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`

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`4. Davis has sufficient fame or reputation that use of the mark in connection with the
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`services offered by IDMR is presumed to be associated with Davis.
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`See, Notre Dame at 1376-77; TMEP 1203.03(b)(i).
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`None of these elements are alleged, even in conclusory fashion, in the Amended
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`Counterclaims. As a practical matter, based on IDMR’s understanding that Davis was born years
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`after IDMR’s first use of the mark in 1958, Davis would be unable to prove even the first element
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`of a false association allegation. Thus, Davis’ claims of false association fail as a matter of law.
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`“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
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`accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S.
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`662, 678, 129 S.Ct. 1937, 1948 (2009) (citing Bell Atlantic v. Twombly, 550 U.S. 544, 570 (2007)).
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`However, “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements, do not suffice” and therefore, courts “are not bound to accept as true a legal conclusion
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`couched as a factual allegation.” Id.
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`Here, Davis’ amended counterclaim fails to even plead the elements required for a claim
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`of false association, let alone provide factual allegations for the elements of such a claim. At no
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`point does Davis actually claim to be a senior user of the mark or the artwork.
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`Accordingly, Davis’ claim of false association under 2(a) must be dismissed.
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`
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`C.
`
`
`DAVIS’ CLAIM OF FRAUD IS SIMILARLY INSUFFICIENT TO SURVIVE
`A MOTION TO DISMISS
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`Davis further alleges that IDMR’s registered ELOHIM mark should be cancelled for fraud
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`because IDMR “knowingly falsely represented” that it was the owner of the mark. Counterclaim
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`for Cancellation at ¶¶ 16-18. Specifically, according to Davis, when IDMR filed the application
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`to the ELOHIM mark, IDMR allegedly “knew” that it did not own the artwork, and also allegedly
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`“knew” that the Pasadena Institute of Divine Metaphysical Research (the “Pasadena Institute”)
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`5
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`

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`was using the mark in commerce. Id. However, such allegations fail to plead either law or facts
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`that, if proven, would invalidate IDMR’s registration under Trademark Act § 1 or § 14.
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`“Fraud in procuring a trademark registration occurs when an Applicant for registration
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`knowingly makes a false, material representation of fact in connection with an application to
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`register with the intent of obtaining a registration to which it is otherwise not entitled. Fed. R.
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`Civ. P. 9(b) provides that the circumstances constituting the alleged fraud shall be stated with
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`particularity.” Dragon Bleu (SARL) v. VENM, LLC, Opp. No. 91212231 at 4 (T.T.A.B. Dec. 1,
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`2014) (internal citations omitted).
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`Allegations of fraud lacking support must be dismissed. In Dragon Bleu, the Board
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`dismissed counterclaims by the applicant that alleged that the opposer’s registered marks were
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`fraudulently obtained. The applicant contended that the opposer made false statements during
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`prosecution of an application when the opposer narrowed the description of goods “to martial-arts-
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`related goods” to overcome a refusal while “[a]t the same time… planning to use the mark
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`offensively against others who did not sell martial arts goods and, in particular, against those who
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`sought registration of marks phonetically similar to ‘VENUM’ outside of martial arts-related
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`goods.” Id. at 5-6. The Board determined, however, that the applicant had not alleged any false
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`statements on which a fraud claim could be based, because the statements made by the opposer
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`limiting the application “were not false.” Id. at 7. The Board further determined that there was
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`“no allegation which constitutes a proper pleading of Opposer’s intent to deceive the Patent and
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`Trademark Office” because the counterclaim did not “plead[] supporting facts from which [the
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`Board] may reasonably infer that Opposer intended to deceive the USPTO.” Id. at 9. Accordingly,
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`the Board granted the opposer’s motion to dismiss the Applicant’s fraud counterclaims. Id. at 10.
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`6
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`

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`Another critical aspect of a “fraudulent statement” claim is that both the alleged fraudulent
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`statement, and the alleged fraudulent intent, must be tied to the specific person making the
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`statement. That is, a pleading under Rule 9(b) “must include sufficient allegations of underlying
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`facts from which a court may reasonably infer that a specific individual (1) knew of the withheld
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`material information or of the falsity of the material misrepresentation, and (2) withheld or
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`misrepresented this information with a specific intent to defraud the PTO.” Dragon Bleu at 9,
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`citing Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1328-29 (Fed. Cir. 2009) (emphasis
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`added).
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`In Exergen, the Court upheld a determination by the district court that the defendant’s
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`allegations of inequitable conduct in a patent infringement action “failed to satisfy the heightened
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`pleading requirement” of Rule 9(b). Id. at 1316. In particular, the Court found that the defendant’s
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`fraud pleading referring generally to actions by the plaintiff corporation and “its agents and/or
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`attorneys” “fail[ed] to name the specific individual associated with the filing or prosecution of the
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`application… who both knew of the material information and deliberately withheld or
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`misrepresented it.” Id. at 1329. The Court noted that “[n]o facts are alleged from which one can
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`reasonably infer that, at the time of the allegedly false statement, the individual who made this
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`statement to the PTO was aware of [the allegedly material information being withheld or
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`misrepresented],” or that that individual “decided to deliberately withhold it.” Id. at 1330-31.
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`Accordingly, the Court confirmed that the district court “correctly held that [defendant’s]
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`allegations of inequitable conduct were deficient under Rule 9(b).”
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`Further, fraudulent statement allegations fail without pleadings of fact which would
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`directly belie the assumption that the declarant “might reasonably have believed” itself to be the
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`owner of the mark. King Automotive, Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1010
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`7
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`

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`(C.C.P.A. 1981). In King Automotive, the CCPA upheld a Board decision granting a motion to
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`dismiss appellant Speedy Muffler King’s petition to cancel appellee King Automotive’s
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`registrations for SPEEDY MUFFLER KING on the basis of fraud. Appellant argued that the
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`registrant knew of others’ use of MUFFLER KING and SPEEDY MUFFLER KING through
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`trademark search reports conducted prior to registration. Id. at 1009-10. Appellant argued that
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`the declaration by the registrant that “no one else has the right to use” the mark, despite knowing
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`that others were using it, was therefore made “in bad faith with the intent to deceive” the Patent
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`Office. Id. at n.8. However, the Board determined, and the Court agreed, that the appellant had
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`not alleged facts that, if proven, would constitute fraud, id. at 1010. In particular, the Board stated
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`that the appellant did not allege that the third party use of SPEEDY MUFFLER KING was prior
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`to the registrant’s use and was continuous, and further, the registrant “might reasonably have
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`believed that the contemporaneous use… would not be likely to cause confusion.” Id.
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`Accordingly, the Board and the Court agreed that no fraudulent intent could therefore be inferred.
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`Davis’ counterclaims for fraud must be dismissed under the holdings in Dragon Bleu,
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`Exergen, and King Automotive. Specifically, Davis has alleged fraud based on statements made
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`by IDMR that (a) are not false, (b) do not plead facts that support an inference of intent to deceive
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`the USPTO; and (c) do not impute either knowledge or intent by the person who made the alleged
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`fraudulent statements.
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`Davis has not adequately pled any false statements. Davis alleges that IDMR falsely
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`represented that it was the owner of the mark even though IDMR “knew” it did not own the
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`artwork. Counterclaim at ¶ 17. However, Davis fails to support the alleged “falsity” of these
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`statements. First, Davis provides no factual support for either Davis’ ownership of the artwork, or
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`IDMR’s supposed “knowledge” of Davis’ rights to the artwork. Second, even if Davis were to
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`8
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`

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`prove ownership in the artwork, Davis does not provide any legal basis for how ownership of a
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`copyright negates or overrides ownership in a trademark, particularly in an administrative
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`proceeding where, as noted previously, the Board has no jurisdiction over copyright claims. Davis
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`does not claim to have ever used the mark, let alone be a prior user of the mark. Thus, Davis has
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`failed to plead sufficient factual and legal support for the allegation that IDMR, in representing
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`itself to be the owner of the mark, made a false statement.
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`Davis further alleges that IDMR falsely represented that “no others had the right to use the
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`mark” despite IDMR’s supposed knowledge that “others were using the mark.” Id. This allegation
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`is also inadequately pled. In support of such claims, Davis points to IDMR as having “knowledge”
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`of the other three organizations in 1983 (without any claim that this knowledge of the organizations
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`also involves knowledge of use of the mark). Davis then points to a document from 1989 from
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`The Institute of Divine Metaphysical Research, Inc., of Pasadena, CA, that includes the now-
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`registered mark in its header. Davis contends that this Pasadena entity “continues to use the mark
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`in connection with the provision of educational and religious services” and that IDMR “knew” of
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`this use “since at least as early as 1978.” Id. at ¶¶ 13-16. But Davis does not allege that any of
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`these other users were using the mark prior to IDMR’s adoption of the mark in 1958. “It is
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`axiomatic in trademark law that ownership of a mark is predicated on priority of use in commerce.”
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`Lyons v. Am. College of Veterinary Sports, 859 F.3d 1023, 1027 (Fed. Cir. 2017) (citing Holiday
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`Inn v. Holiday Inns, Inc., 534 F.2d 312, 319 (C.C.P.A. 1976). Davis further does not provide any
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`factual basis for IDMR’s knowledge of the Pasadena entity’s alleged continuous use, or that such
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`use was confusingly similar to IDMR’s use. Thus, Davis has not adequately alleged that IDMR’s
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`statement that “no others had the right to use the mark” was a false statement.
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`9
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`

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`Davis has not adequately pled intent to deceive the USPTO. As outlined above, Davis fails
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`to provide support for the allegation that IDMR knew that it was not the owner of the mark, or that
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`others had the right to use the mark, and that IDMR made these statements of ownership and
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`exclusive rights to use the mark with intent to deceive the USPTO. Davis’ allegations are legal
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`conclusions without factual support and are not sufficient to survive a motion to dismiss. Davis
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`does not provide any evidence to discredit the presumption that IDMR “reasonably believed” that
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`it owned and had exclusive right to use the ELOHIM mark, as required under King Automotive
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`and Dragon Bleu. Without any evidence that satisfies “the heightened pleading requirement” of
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`Rule 9(b), Exergen at 1316, Davis’ allegations of deceptive intent do not meet the threshold for
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`fraud under Twombly/Iqbal.
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`Davis has not alleged either knowledge or intent by the person who made the alleged
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`fraudulent statements. The “fraudulent statements” alleged by Davis are contained in a declaration
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`by Lamar Greer, International Public Relations Director for IDMR, on March 3, 2020. Davis has
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`provided no factual basis to support the allegation that Lamar Greer “knew” that IDMR did not
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`own the mark when Mr. Greer signed the trademark application on March 3, 2020. Davis further
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`fails to provide any factual basis to support the allegation that Lamar Greer “knew” that the
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`Pasadena Institute, or indeed any other entity, had priority of use of the mark over IDMR, when
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`Mr. Greer signed the application on that day. In fact, Mr. Greer is not mentioned at all in the fraud
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`allegations. As Davis fails to allege that Mr. Greer “both knew of the material information and
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`deliberately withheld or misrepresented it,” Exergen at 1329, Davis’ fraud claims must fail.
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`Davis’ counterclaims fail to plead either a statutory or factually-supported basis for
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`cancellation of IDMR’s registered ELOHIM mark for fraud, and therefore Davis fails to state a
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`10
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`claim or cause of action on which relief can be granted. Accordingly, IDMR respectfully requests
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`that the counterclaims be dismissed.
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`II.
`
`
`DAVIS’ CLAIMS ARE BARRED BY CLAIM PRECLUSION/RES
`
`JUDICATA
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`Davis is barred by claim preclusion/res judicata from bringing counterclaims against IDMR’s
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`registered ELOHIM mark, after Davis’ opposition to the same mark, based on the same facts,
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`was dismissed with prejudice by this Board’s decision dated February 3, 2022. See, Board
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`decision issued February 3, 2022 in Opposition No. 91268778 (“the ’778 Opposition”), and
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`Amended Pleading filed Sept 9, 2021, substituting Davis for the entity name she had initially
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`used to file the opposition.
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` “[A] judgment on the merits in a prior suit bars a second suit involving the same party
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`or their privies based on the same cause of action.” Parklane Hosiery Co. v. Shore, 439 U.S.
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`322, 326 n. 5 (1979). Claim preclusion requires “(1) an identity of the parties or their privies, (2)
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`a final judgment on the merits of the prior claim, and (3) the second claim must be based on the
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`same transactional facts as the first and should have been litigated in the prior case.” Orouba
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`Agrifoods Processing Co. v. United Food Import, 97 U.S.P.Q. 1310, 2010 WL 5574283 at *3
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`(T.T.A.B. 2010).
`
`Orouba involved a cancellation proceeding lodged by Orouba Agrifoods (“Orouba”)
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`against a mark owned by United Food Import (“UFI”). Orouba had previously filed an
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`opposition to UFI’s mark, claiming that Orouba, not UFI, was the owner and prior user of the
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`mark. 2010 WL 5574283 at *1. However, Orouba failed to file a brief or submit evidence in
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`support of its claims, and the Board dismissed the opposition with prejudice. Id. at *2. After the
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`registration issued, Orouba filed for cancellation of the registration, alleging again that it was the
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`proper owner and prior user of the mark, along with allegations not brought in the opposition,
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`11
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`

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`including likelihood of confusion and fraud. Id. UFI moved to dismiss the claims as barred by
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`res judicata. Id. at *1. The Board agreed that res judicata barred Orouba from re-litigating its
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`claims against UFI’s mark and dismissed the cancellation proceeding with prejudice. Id. at *6.
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`In dismissing the cancellation, the Board noted that the three factors for claim preclusion,
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`namely, (1) party identity, (2) final judgment against Orouba, and (3) same transactional facts as
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`the prior opposition, were met. Id. at **3-5. In particular, the Board noted that the order that
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`dismissed Orouba’s opposition with prejudice, and entered judgment against Orouba, was “a
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`final judgment on the merits” for the purposes of claim preclusion, citing International Nutrition
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`Co. v. Horphag Research, Ltd., 220 F.2d 1325, 55 U.S.P.Q.2d 1492, 1494 (Fed. Cir. 2000)
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`(“default judgments can give rise to res judicata…”). Id. The Board further held that Orouba’s
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`claims “are based on the same transactional facts as, and could have been litigated in, the prior
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`opposition…Indeed, the prior opposition, like this proceeding, is based on petitioner’s
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`allegations of ownership and use” of the same mark. Id. at **4-5. Regarding the additional
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`allegations in the cancellation, the Board held that Orouba “cannot avoid the application of claim
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`preclusion by merely bringing additional claims…based on the same transactional facts” and that
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`Orouba “could (and should) have asserted each of these claims in the earlier case.” Id.
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`Under this Board’s holding in Orouba, res judicata applies here to bar Davis from
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`seeking cancellation of the ELOHIM registered mark.
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`First, the parties/privies in the opposition and cancellation crossclaim are identical. Davis
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`filed the Notice of Opposition in Opposition No. 91268778 (“the ’778 Opposition”) using the
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`name of The Institute of Divine Metaphysical Research, Inc. (“the Ohio corporation”), as the
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`Opposer. Davis later filed an Amended Notice of Opposition substituting herself for the Ohio
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`corporation. See, Amended Notice of Opposition (OPP-14). The Board accepted the amended
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`12
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`

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`notice substituting Davis as Opposer. OPP-16. Even when the ’788 Opposition was filed using
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`the Ohio corporation’s name, it was still Davis, as Davis noted in the Motion to Amend the
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`Pleadings (OPP-14) at p. 3, point 7 (“The correct Opposing Party is Carla Kinley-Davis…the
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`agent of the Original Opposer corporation…”). Thus, the parties are the same. Davis is in truth
`
`the only party involved, as the Ohio corporation was dissolved in 1983 following its merger with
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`IDMR, with IDMR as the surviving entity. Davis used the name of a dead corporation to file the
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`opposition papers. See, IDMR’s Second Motion to Dismiss, OPP-17, at 2.
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`Second, the Board’s decision dismissing the ’788 Opposition was a final judgment on the
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`merits. The Amended Opposition filed by Davis (OPP-14) substituted the Ohio corporation with
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`Davis and added claims that Davis had rights to the ELOHIM mark due to her relation to the
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`Kinley family, and her “possession and control of her family’s significant intellectual property.”
`
`(Amended Opposition, p.1, points 1-2). In response, IDMR filed a Second Motion to Dismiss
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`(OPP-17) stating that, under the laws of Ohio, IDMR assumed all rights—including trademark
`
`rights—to the ELOHIM mark at least as of the merger of IDMR and the Ohio corporation in
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`1983. See, OPP-17 at 6. Thus, IDMR argued that “neither [the Ohio corporation nor Davis] has
`
`a cause of action” to bring the opposition (OPP-17 at 4). Davis did not file a response, and the
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`Board granted IDMR’s Motion to Dismiss with prejudice as conceded by Davis (OPP-19). The
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`Board’s decision was “a final judgment on the merits” for the purposes of claim preclusion. See,
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`Orouba, 2010 WL 5574283 at *3.
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`Third, Davis’ allegations that IDMR lacks rights to the mark are based on the same
`
`transactional facts as the opposition. Davis claimed in the ’788 Opposition that she has
`
`ownership of her family’s “intellectual property” just as she does here in the counter-claims, and
`
`she continues to claim that her rights to the ELOHIM mark stem from her inheritance, which
`
`13
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`

`

`somehow disprove or displace IDMR’s trademark rights. These are clearly the same alleged
`
`transactional facts as the current contentions that she has familial rights to the “artwork” in the
`
`ELOHIM design. As to any other allegations raised in Davis’ crossclaims for cancellation,
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`Davis “could (and should) have asserted each of these claims in the earlier case.” Orouba at *3.
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`Accordingly, because the same parties are involved, there was a final judgment on the
`
`merits, and the counterclaim for cancellation is based on the same transactional facts/allegations,
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`Davis is precluded by res judicata from petitioning for cancellation of IDMR’s registered mark.
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`CONCLUSION
`
`Applicant’s counterclaims are deficient as a matter of law because they fail to assert a
`
`statutory cause of action on which the Board has jurisdiction to consider. Applicant's assertions
`
`of false association and fraud also cannot survive a motion to dismiss. Further, res judicata
`
`precludes Davis from re-litigating issues already raised, and dismissed with prejudice by this
`
`Board, in Davis’ prior Opposition to IDMR’s now-registered mark. IDMR respectfully requests
`
`that the counterclaims be dismissed.
`
`14
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`

`

`Dated: January 20, 2023
`
`Respectfully submitted,
`
`HUGHES HUBBARD & REED LLP
`
`By: /s/ Patrice P. Jean
`Patrice P. Jean
`Lynn M. Russo
`
`One Battery Park Plaza
`New York, New York 10004-1482
`Telephone: (212) 837-6000
`Fax: (212) 422-4726
`Patrice.Jean@hugheshubbard.com
`Lynn.Russo@hugheshubbard.com
`Attorneys for Institute of Divine Metaphysical
`Research
`
`15
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the within MOTION TO DISMISS is being
`
`served upon counsel of record for Applicant, via electronic mail to:
`
`William E. O’Brien, Esq.
`O’Brien Global Law
`2 Connector Road, Suite 200
`Westborough, MA 01581
`william@masstechlawyer.com
`
`HUGHES HUBBARD & REED LLP
`
`By:
`
` /Kathyann Saunders/
`KATHYANN SAUNDERS
`
`CERTIFICATE OF MAILING
`
`The undersigned hereby certifies that on January 20, 2023, the within MOTION TO
`
`DISMISS is being filed electronically with the Trademark Trial and Appeal Board, via the
`
`Electronic System for Trademark Trials and Appeals (ESTTA).
`
`HUGHES HUBBARD & REED LLP
`
`By:
`
` /Kathyann Saunders/
`KATHYANN SAUNDERS
`
`