Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1248968
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`Filing date:
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`11/18/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91277190
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`1661, Inc.
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`JENNIFER L. BARRY
`LATHAM & WATKINS LLP
`650 TOWN CENTER DRIVE, SUITE 2000
`COSTA MESA, CA 92626
`UNITED STATES
`Primary email: ipdocket@lw.com
`Secondary email(s): ipdocket2@lw.com, tara.villegas@lw.com,
`alethia.corneil@lw.com
`7145401235
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`Motion to Dismiss 2.132
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`Jennifer L. Barry
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`Jennifer.Barry@lw.com
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`/s/ Jennifer L. Barry
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`11/18/2022
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`2022_11_18_Goat v. Goatpix Gallery - Motion to Dismiss Counterclaims and
`Strike Aff. Defenses_Opp. No. 91277190.pdf(647484 bytes )
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`1661, Inc. d/b/a GOAT,
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`Opposer,
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`v.
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`Goatpix, LLC,
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`Applicant.
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`Opposition No. 91277190
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`Trademark: GOATPIX GALLERY
`Serial No. 90/724856
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`OPPOSER’S MOTION TO DISMISS APPLICANT’S AMENDED
`COUNTERCLAIMS FOR ABANDONMENT AND FRAUD AND MOTION TO
`STRIKE AFFIRMATIVE DEFENSES
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`Pursuant to Federal Rule of Civil Procedure 12(b)(6) and the Trademark Trial and Appeal
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`Board Manual of Practice (“TBMP”) § 503, Opposer 1661, Inc. d/b/a GOAT (“GOAT”) requests
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`that the Board dismiss Applicant Goatpix, LLC’s (“Goatpix”) counterclaims for abandonment
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`and fraud in its First Amended Answer, Affirmative Defenses, and Counterclaims (“Amended
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`Counterclaims”). Further, pursuant to Federal Rule of Civil Procedure 12(f) and TBMP § 506,
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`GOAT requests that the Board strike Goatpix’s affirmative defenses.
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`I.
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`INTRODUCTION
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`In the face of GOAT’s superior trademark rights and registrations, Goatpix brings
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`counterclaims against GOAT to try to buy leverage in this opposition proceeding. Specifically,
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`Goatpix seeks to cancel several of GOAT’s registrations for the GOAT® mark on the grounds of
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`abandonment and fraud. These counterclaims, however, are meritless and legally defective.
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`Goatpix also raises several baseless affirmative defenses to needlessly multiple the issues in this
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`proceeding. Despite GOAT’s attempts to meet and confer on these improper claims, Goatpix has
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`refused to withdraw either its counterclaims or affirmative defenses. Thus, the Board should
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`dismiss Goatpix’s counterclaims for abandonment and fraud and strike its affirmative defenses.
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`First, Goatpix claims that three of GOAT’s trademark registrations have been
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`abandoned. But Goatpix does not (and cannot) allege a prima facie case of abandonment based
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`on three consecutive years of nonuse. Goatpix also fails to allege specific facts that show GOAT
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`has discontinued use of its marks with intent not to resume such use. Goatpix acknowledges that
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`GOAT acquired its trademark registrations from its predecessor, Goat Fashion Limited (“GFL”)
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`on November 29, 2021, and, fixating on this fact, Goatpix claims that GOAT did not use its
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`acquired marks since that date. Even if this allegation were true, Goatpix has alleged at most one
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`year of nonuse (and not three consecutive years). This leaves Goatpix with only one other way
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`to state an abandonment claim: Goatpix must allege that (1) GOAT has discontinued use of its
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`marks and (2) GOAT does not have intent to resume such use. Goatpix fails to properly allege
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`such facts, particularly as to GOAT’s intent. Indeed, Goatpix’s only allegation about GOAT’s
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`intent is that “[u]pon information and belief,” GOAT does not have an intent to resume use of its
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`marks. See 9 TTABVUE 12, ¶¶ 52, 55. As Goatpix’s conclusory allegations made “upon
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`information and belief” cannot state an abandonment claim, this claim should be dismissed.
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`Second, Goatpix claims that one of GOAT’s registrations should be cancelled because it
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`was allegedly procured by fraud. Specifically, Goatpix alleges that GOAT’s predecessor, GFL,
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`committed fraud on the U.S. Patent and Trademark Office (“USPTO”) by claiming that its mark
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`was in use for all goods and services covered by its registration, which Goatpix claims was not
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`the case. Goatpix makes its fraud allegations almost exclusively “upon information and belief,”
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`which is simply insufficient to meet the heightened pleading standard to state a fraud claim.
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`Indeed, Goatpix even tries to cite to deposition testimony in a separate lawsuit, despite not being
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`a party to the suit or even having access to the deposition transcript. See id. at 7-8, ¶ 29.
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`Because Goatpix does not even have firsthand knowledge of the allegations that it makes,
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`Goatpix has no basis to bring its fraud claim. Thus, the counterclaim should be dismissed.
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`Finally, the Board should strike nearly all of Goatpix’s affirmative defenses. Goatpix’s
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`defenses are either redundant and mirror Goatpix’s counterclaims (abandonment, lack of
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`secondary meaning, and fraud), lack a scintilla of factual support (unclean hands), or not
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`cognizable in a TTAB proceeding (a reservation of rights). Thus, the Board should strike these
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`affirmative defenses.
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`II.
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`STATEMENT OF FACTS
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`A.
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`GOAT’S Trademark Rights And Registrations
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`For many years, GOAT has offered its wildly successful e-commerce platform GOAT,
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`available on both a mobile app and website (www.goat.com). 1 TTABVUE 6. On July 24, 2015,
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`GOAT applied to register the GOAT mark (Serial No. 86/703347), which later matured into U.S.
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`Reg. No. 5,357,448 (“‘448 Registration”). 9 TTABVUE 10, ¶ 40. The ‘448 Registration covers
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`“Providing an online marketplace for buyers and sellers of collectible consumer goods namely,
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`athletic and sporting footwear; database management services; providing a website featuring
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`evaluative feedback in the form of ratings, reviews, recommendations and other consumer
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`information regarding the value and prices of sellers’ goods, buyers’ and sellers’ performance,
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`delivery, and transaction experience for commercial purposes; providing a searchable
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`advertising guide featuring the goods and services of sellers; advertising and advertising
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`services” in Class 35. Id., ¶ 39.
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`Since then, GOAT has continued to expand the scope of its trademark protections and
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`registrations. GOAT acquired U.S. Reg. Nos. 3,506,834 (“‘834 Registration”) for the mark
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`GOAT; 4,103,419 (“‘419 Registration”) for the mark GOAT; and 5,066,855 (“‘855
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`Registration”) for the mark KID BY GOAT. See id. at 4-9. These registrations were previously
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`owned by Goat Fashion Limited (“GFL”), a fashion company in the business of selling clothing
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`through its website and various retailers in the U.S. and abroad. Id. at 4-6. Indeed, GFL used the
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`marks GOAT and KID BY GOAT on its clothing items and online retail store since as early as
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`2004. Id. GFL filed a combined Sections 8 and 15 statement for the ‘834 Registration on
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`November 12, 2013, and a combined Declaration of Use for Renewal on October 1, 2018.
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`Id. at 4-5, ¶¶ 8-9. Similarly, GFL filed a Combined Declaration of Use and Incontestability for
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`the ‘419 Registration on September 26, 2017. Id. at 6-7, ¶ 23.
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`In December 2019, GFL sued GOAT in the U.S. District Court for the Southern District
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`of New York. Id. at 7, ¶ 25. In response, GOAT filed a Petition to Cancel GFL’s ‘419
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`Registration for fraud, asserting that GFL did not offer all the claimed services listed in the ‘419
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`Registration. Id. at 8, ¶ 30. GOAT later withdrew this petition, and on March 5, 2021, GFL
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`filed a Section 7 Request deleting the services that GOAT previously asserted GFL did not offer.
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`Id. at 8, ¶¶ 32-33. On November 29, 2021, GFL assigned the ‘834 Registration, the ‘419
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`Registration, and the ‘855 Registration to GOAT. Id. at 5, 8.
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`B.
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`Goatpix’s Counterclaims And Affirmative Defenses
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`In May 2021, Goatpix applied to register the mark GOATPIX GALLERY in connection
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`with “[a]rts gallery services, namely, retail store services featuring works of art, photographs,
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`and pictures of sports figures” in Class 35. 9 TTABVUE 3, ¶ 1. GOAT opposed this application
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`on July 6, 2022, citing a likelihood of confusion between the GOATPIX GALLERY mark and
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`GOAT’s trademarks. See 1 TTABVUE 6-8.
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`Goatpix asserts cancellation counterclaims against certain of GOAT’s trademark
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`registrations. First, Goatpix alleges that the ‘834 Registration, the ‘855 Registration, and the
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`‘419 Registration have been abandoned. 9 TTABVUE 11-13. Notably, Goatpix admits that
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`GOAT’s predecessor, GFL, only recently transferred the ‘834 Registration, the ‘855
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`Registration, and the ‘419 Registration to GOAT on November 29, 2021. Id. at 5, 8. Yet
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`Goatpix claims that “upon information and belief” GOAT is not using, and has never used in
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`commerce the marks covered by these registrations on the goods and services listed in the
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`registrations. Id. at 12. Goatpix also asserts that GOAT did not acquire goodwill from its
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`predecessor and that the assignment was an invalid assignment in gross. Id. at 12, ¶¶ 57-58.
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`Additionally, Goatpix claims that GOAT’s ‘419 Registration should be cancelled because
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`it was allegedly procured by fraud. Id. at 13-14. Specifically, Goatpix alleges that GFL
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`committed fraud on the USPTO by falsely claiming that the mark was being used in commerce
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`for all goods and services covered by the ‘419 Registration when GFL was not using the mark
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`for all goods and services at the time. Id. at 13-14, ¶¶ 61-62.
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`Finally, Goatpix raises the following affirmative defenses: (1) unclean hands,
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`(2) abandonment, (3) lack of secondary meaning, and (4) fraud. See id. at 2-3. Goatpix also
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`“reserves the right to amend its Answer to the Notice to allege additional affirmative defenses.”
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`Id. at 2.
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`For the reasons discussed below, the Board should dismiss Goatpix’s counterclaims for
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`abandonment and fraud and strike Goatpix’s affirmative defenses.
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`III. GOATPIX’S CANCELLATION COUNTERCLAIMS ARE LEGALLY
`INSUFFICIENT
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`The Board should dismiss Goatpix’s counterclaims for abandonment and fraud, as they
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`are insufficiently pled.
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`A.
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`Legal Standard
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`A party may move to dismiss a claim for “failure to state a claim upon which relief can
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`be granted.” Fed. R. Civ. P. 12(b)(6); TBMP § 503. A motion to dismiss tests the legal
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`sufficiency of the allegations set forth in a pleading. See Advanced Cardiovascular Sys. Inc. v.
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`SciMed Life Sys. Inc., 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Covidien LP v. Masimo Corp.,
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`109 USPQ2d 1696, 1697 (TTAB 2014). To withstand a motion to dismiss, a counterclaim must
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`properly plead standing and must state a statutory ground for cancellation. See Liberty Trouser
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`Co., Inc. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983). The counterclaim “must
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`contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its
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`face.” See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). While the Board must generally accept
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`allegations as true at the motion to dismiss stage, it is “not bound to accept as true a legal
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`conclusion couched as a factual allegation.” See id. Similarly, “threadbare recitals of a cause of
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`action’s elements, supported by mere conclusory statements, do not suffice” to state a claim.
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`Id.; see also TBMP § 503.02.
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`B.
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`Goatpix Has Not Sufficiently Pled An Abandonment Claim
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`First, Goatpix’s claim that the ‘834 Registration, the ‘855 Registration, and the ‘419
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`Registration have been abandoned misunderstands the law. Under the Lanham Act, a trademark
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`is abandoned if “its use has been discontinued with intent not to resume such use.” 15 U.S.C.
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`§ 1127. Nonuse for three consecutive years establishes prima facie evidence of abandonment.
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`Id. Thus, for a motion to dismiss, a claimant must recite facts which, if proven, would establish
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`at least three consecutive years of nonuse, or alternatively, a period of nonuse less than three
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`years coupled with proof of intent not to resume. See Otto Int’l, Inc. v. Otto Kern GmbH, 83
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`USPQ2d 1861, 1863 (TTAB 2007); see also Imperial Tobacco Ltd. v. Philip Morris Inc., 14
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`USPQ2d 1390 (Fed. Cir. 1990). Goatpix fails to do either.
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`As Goatpix acknowledges, GOAT’s predecessor, GFL, used the marks covered by the
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`‘834 Registration, the ‘855 Registration, and the ‘419 Registration and only transferred the
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`registrations to GOAT less than a year ago. See 9 TTABVUE 5-8, ¶¶ 10, 16, 34.1 Thus, even
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`assuming that GOAT has not used the marks covered by these registrations, Goatpix alleges a
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`period of less than a year of nonuse, far below the three-year threshold to establish a prima facie
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`case of abandonment.
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`As an obfuscation tactic, Goatpix adds stray allegations asserting that GFL’s assignment
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`of the challenged registrations was an assignment in gross. According to Goatpix, because
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`GOAT has not operated the website previously operated by GFL, sold goods previously sold by
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`GFL, or offered catalog ordering service or online retail store services offered by GFL, GOAT
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`apparently did not acquire goodwill from the assignment of the assigned registrations. Id. at 12
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`¶¶ 56-58.2 But these allegations simply repeat the fact that GOAT has only recently acquired
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`these registrations. Since GOAT acquired the challenged registrations through an assignment
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`less than a year ago, there cannot be a presumption that GOAT abandoned these registrations
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`simply because it did not immediately resume its predecessor’s business operations. As
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`explained above, to plead a claim for cancellation, Goatpix must allege that GOAT and its
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`predecessor have ceased use for over three consecutive years. Otto Int’l, 83 USPQ2d at 1863.
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`1 Importantly, Goatpix does not (and cannot) allege that GFL was not using the marks before
`transferring them to GOAT.
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`2 Respectfully, this argument is facially absurd, as the USPTO has on record a trademark
`assignment of “the entire interest and the goodwill” of the registrations. See Declaration of
`Adam Herrera, Exhibit 3.
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`These allegations, at most, establish nonuse for one year. This is insufficient to plead a claim of
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`abandonment.
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`Goatpix also fails to plead actual facts indicating GOAT’s lack of intent to resume use.
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`Goatpix offers a mere conclusory allegation that “[u]pon information and belief,” GOAT does
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`not intend to resume use of the marks covered by the ’834 Registration, the ‘855 Registration,
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`and the ‘419 Registration for the claimed goods and services. See 9 TTABVUE 12, ¶¶ 52, 55.
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`This is not enough. The Board has held that a claimant must allege “ultimate facts pertaining to
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`the alleged abandonment.” Otto Int’l, 83 USPQ2d at 1863. A claimant must allege actual facts
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`to provide the defendant fair notice of the claimant’s theory of abandonment. See Dragon Bleu
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`(SARL) v. VENM, LLC, 112 USPQ2d 1925, 1930 (TTAB 2014). Goatpix’s conclusory allegation
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`that merely recites the element of its claim is insufficient. See Otto Int’l, 83 USPQ2d at 1863
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`(granting motion to dismiss abandonment claim because petitioner “provided no facts to support
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`its conclusory allegation of abandonment.”); see also Bentley Motors Ltd. v. Aucera SA, 2016
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`TTAB LEXIS 618, at *4 n.4 (TTAB Nov. 29, 2016) (finding allegations that “upon information
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`and belief, Respondent discontinued use in the United States of its involved mark with no intent
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`to resume said use” to be insufficient to plead a claim for cancellation).
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`Since Goatpix cannot plead nonuse for three consecutive years, nor has Goatpix
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`sufficiently pled actual facts evidencing GOAT’s intent not to resume use, the Board should
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`dismiss the abandonment counterclaim.
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`C.
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`Goatpix Has Not Sufficiently Pled A Fraud Claim
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`Goatpix makes generalized allegations “upon information and belief” that are insufficient
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`to plead a fraud claim to cancel the ‘419 Registration. A claimant must assert the elements of
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`fraud with particularity in accordance with Fed. R. Civ. P. 9(b). NSM Resources Corp. v.
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`Microsoft Corp., 113 USPQ2d 1029, 1034 (TTAB 2014). “Pleadings of fraud based on
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`‘information and belief’ without allegations of specific facts upon which the belief is reasonably
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`based are insufficient.” Id. (citing Asian & W. Classics B.V. v. Selkow, 92 USPQ2d 1478, 1479
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`(TTAB 2009)). Goatpix’s allegations cannot meet this high burden.
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`First, Goatpix claims that “[u]pon information and belief, [GFL] knowingly made false
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`representations of material fact” to deceive the USPTO. 9 TTABVUE 13, ¶ 61. Such barebones
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`allegations made “upon information and belief” do not satisfy the requirements of Rule 9(b). See
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`Asian & W. Classics, 92 USPQ2d at 1479 (“Allegations based solely on information and belief
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`raise only the mere possibility that such evidence may be uncovered and do not constitute
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`pleading of fraud with particularity.”); see also Freki Corp. N.V. v. Pinnacle Enter., Inc., 126
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`USPQ2d 1697, 1702-03 (TTAB 2018) (finding allegations made “upon information and belief”
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`insufficient).
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`Second, Goatpix alleges that GFL made false statements when it submitted a declaration
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`to the USPTO that the GOAT mark was in use for all the goods and services listed in the ‘419
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`Registration because these statements conflicted with the deposition testimony of GFL’s CEO.
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`9 TTABVUE 13-14, ¶ 62. But Goatpix’s entire theory stems from alleged deposition testimony
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`which Goatpix has never reviewed and to which Goatpix has no personal knowledge. Put
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`another way, Goatpix’s allegations are speculative and the purest example of hearsay. The
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`Board should reject such allegations.
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`Third, Goatpix also alleges that GFL’s later-filed Section 7 amendment deleting certain
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`services from the ‘419 Registration constitutes evidence of GFL’s fraud. Id. at 14, ¶ 63. This
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`sort of pleading is nothing more “than implied expression” of the circumstances constituting
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`fraud. Asian & W. Classics, 92 USPQ2d at 1479; see also NSM Corp., 113 USPQ 2d at 1034
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`(finding that later deletions from a trademark registration does not evidence fraud and does not
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`satisfy Rule 9(b)). In short, none of Goatpix’s allegations of fraud meet the heightened pleading
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`standard.
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`Finally, Goatpix fails to plead intent, a required element of a fraud claim. See In re Bose,
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`91 USPQ 2d 1938, 1939-40 (Fed. Cir. 2009). Allegations that an applicant or registrant made
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`material misrepresentations of fact which it “knew or should have known” to be false are
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`insufficient because it implies negligence or mistake, and negligence is not sufficient to infer
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`fraud or dishonestly. Asian & W. Classics, 92 USPQ2d at 1479. Here, Goatpix alleges “upon
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`information and belief,” GFL “knowingly made false representations of material fact with intent
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`to deceive” the USPTO during the maintenance of the ‘419 Registration. 9 TTABVUE 13, ¶ 61.
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`Goatpix’s bare bones allegations, made “upon information and belief,” are insufficient, as
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`Goatpix does not allege facts that imply more than negligence or mistake. Thus, the Board
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`should dismiss the fraud counterclaim.
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`IV.
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`THE BOARD SHOULD STRIKE GOATPIX’S AFFIRMATIVE DEFENSES
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`Goatpix’s laundry list of affirmative defenses are not legally cognizable or are otherwise
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`insufficiently pled. The Board should strike these defenses to narrow the issues in this
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`proceeding.
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`A.
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`Legal Standard
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`“Upon motion . . . the Board may order stricken from a pleading any insufficient defense
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`or any redundant, immaterial, impertinent, or scandalous matter.” TBMP § 506.01. “The Board
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`also has the authority to strike an impermissible or insufficient claim or portion of a claim from a
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`pleading.” Id. A motion to strike affirmative defenses is appropriate where the insufficiency is
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`“clearly apparent.” TBMP § 506.01. As explained below, these affirmative defenses are
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`improper: (1) unclean hands, (2) abandonment, (3) lack of secondary meaning, and (4) fraud.
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`Thus, the Board should strike these defenses.
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`Goatpix also reserves the right to assert new affirmative defenses later in this proceeding.
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`This is improper, and thus the Board should strike this language.
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`B.
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`The Unclean Hands Affirmative Defense Is Improperly Pled
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`Goatpix fails to properly plead an unclean hands affirmative defense, given that Goatpix
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`has not advanced a single supporting allegation in support of this defense. Indeed, Goatpix’s
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`entire defense is a single sentence: “The Opposition is barred by the doctrine of unclean hands.”
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`9 TTABVUE 2. This is a “bald conclusory allegation that fails to provide [GOAT] with fair
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`notice of the factual bases for the defense,” and thus the defense is improperly pled. See
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`Tavistock Freebirds, LLC v. Mobileoffer, Inc., 2020 WL 4746596, at *3 (TTAB 2020) (striking
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`unclean hands defense); see also Midwest Plastic Fabricators Inc. v. Underwriters Labs. Inc.,
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`5 USPQ2d 1067, 1069 (TTAB 1987) (pleading of unclean hands insufficient as answer did not
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`include “specific allegations . . . instead, the allegations . . . [were] either unclear, non-specific,
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`irrelevant to the pleading of unclean hands, or merely conclusory in nature”); The Solomon-Page
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`Grp LLC v. Clinical Res. Network, 2012 TTAB LEXIS 124, at *5 (TTAB 2012) (striking
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`unclean hands affirmative defense because applicant “failed to plead sufficient facts to support
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`this defense or provide opposer with sufficient notice of any allegedly specific improper
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`actions”); Servi-Tek, Inc. v. Jimmy’s Contractor Servs., Inc., 2021 TTAB LEXIS 383, at *11
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`(TTAB 2021) (striking affirmative defenses that were “baldly pleaded, with no supporting facts,
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`and as such are legally insufficient because they do not provide Petitioner with fair notice of the
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`factual bases for the defenses”).
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`Given that Goatpix fails to allege even a single fact supporting its unclean hands
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`affirmative defense, the Board should strike this defense.
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`C.
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`The Abandonment, Lack Of Secondary Meaning, And Fraud Affirmative
`Defenses Are Redundant And Improper
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`Goatpix improperly raises the affirmative defenses of (1) abandonment, (2) lack of
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`secondary meaning, and (3) fraud. See 9 TTABVUE 2-3. These defenses are improper because
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`they are an attack on GOAT’s registrations, and Goatpix has already asserted these defenses as
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`counterclaims. See id. at 11-15. “[W]hen a defense is raised by way of a counterclaim, it should
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`not also be pleaded as an affirmative defense, because the pleading of it as an affirmative defense
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`is unnecessary and redundant.” TBMP § 311.02(b)(1) (citing Space Base Inc. v. Stadis Corp., 17
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`USPQ2d 1216, 1220 (TTAB 1990)); Cont’l Gummi-Werke AG v. Continental Seal Corp., 222
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`USPQ 822, 825 (TTAB 1984) (granting motion to strike affirmative defense “predicated on same
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`facts alleged in counterclaim,” as the defense was “in effect, a collateral attack on the validity” of
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`the opposer’s registration); see also TBMP § 506.01 (the Board can strike “redundant” defenses).
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`Thus, the Board should strike these redundant and improper affirmative defenses.
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`D.
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`The “Reservation Of Rights” Language Is Improper
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`Finally, Goatpix alleges that there “may be additional affirmative defenses” that are
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`unknown and that it “reserves the right to amend its Answer to the Notice to allege additional
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`affirmative defenses.” See 9 TTABVUE 2. However, this reservation of rights is improper. The
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`Board has consistently held that it is “improper reservation under the Federal Rules of Civil
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`Procedure” for a party to reserve its rights to add affirmative defenses at a later date. See
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`Richard Starkey AKA Ringo Starr v. Pac. Coast Holdings IP, LLC, 2021 WL 1050402, at *9
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`(TTAB 2021) (striking the following language: “[Applicant] reserves the right to assert
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`additional defenses in the event discovery and/or investigation indicated that additional
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`affirmative defenses are applicable”); Tatsu Ramen LLC v. Ramen Tatsu-Ya, Inc., 2017 WL
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`4220039, at *3 (TTAB 2017) (“Applicant’s attempt to reserve the right to put forward additional
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`defenses is improper under the Federal Rules of Civil Procedure.”); The Solomon-Page Grp,
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`2012 TTAB LEXIS 124, at *5 (“We find that this is not an appropriate affirmative defense . . .
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`that applicant reserves the “right” to amend its answer at some future date to add additional
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`affirmative defenses after conducting discovery in this matter.”).
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`Given that it is improper for Goatpix to reserve its rights to assert new affirmative
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`defenses, the Board should strike this language.
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`V.
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`GOATPIX SHOULD NOT BE GRANTED ANOTHER ATTEMPT TO PLEAD
`ITS COUNTERCLAIMS
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`The abandonment and fraud counterclaims should be dismissed with prejudice because
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`further amendment would be futile, especially as Goatpix has already amended once and refused
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`to withdraw its counterclaims and defenses when presented with GOAT’s arguments. Goatpix
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`filed its initial set of counterclaims on August 15, 2022. See 5 TTABVUE. After reviewing
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`Goatpix’s counterclaims, GOAT initiated the meet and confer process and requested withdrawal
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`of the counterclaims, as they were deficiently pled. See Declaration of Adam Herrera In Support
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`of GOAT’s Motion ¶¶ 3-5, Exhibits 1-2. Although Goatpix withdrew one of its counterclaims
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`and some of its affirmative defenses, it otherwise refused to withdraw the other counterclaims
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`and defenses. See id. ¶ 6. GOAT was then forced to bring this motion.
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`Unless Goatpix has withheld facts from its pleadings, it appears that Goatpix has “no
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`additional facts to plead.” Zucco Partners, LLC v. Digimarc Corp., 552 F.3d 981, 1007 (9th Cir.
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`2009). Nor can Goatpix plausibly plead additional facts that would save its deficient
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`counterclaims, as discussed above. See Institut Nat’l des Appellations d’Origine v. Brown-
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`Forman Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (amendment would be futile because
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`opposers cannot prevail on claim as a matter of law). Goatpix should not be given the chance to
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`amend after a ruling on this motion, as that would essentially reward it for obstructionist
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`behavior and unnecessarily draining the Board’s and GOAT’s time and resources. With each
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`new attempted pleading, GOAT must expend considerable time and resources to oppose
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`frivolous counterclaims, and Goatpix is unnecessarily consuming judicial resources. Goatpix
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`decided to stand firm on its Amended Counterclaims, and the Board should hold Goatpix to this
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`decision and dismiss the abandonment and fraud counterclaims with prejudice and without
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`further leave to amend.
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`In short, as any attempt to further amend the Amended Counterclaims would be futile and
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`unnecessarily delay the resolution of this action, the Board should exercise its discretion to
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`dismiss the abandonment and fraud counterclaims with prejudice.
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`VI. REQUEST FOR RELIEF
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` For these reasons, GOAT requests that the Board (1) dismiss Goatpix’s abandonment
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`and fraud counterclaims with prejudice and (2) strike Goatpix’s affirmative defenses.
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`Dated: November 18, 2022
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`Respectfully submitted,
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`By
`Jennifer L. Barry
` Adam A. Herrera
`12670 High Bluff Drive
`San Diego, CA 92130
`858.523.5400 / 858.523.5450 Fax
`jennifer.barry@lw.com
` adam.herrera@lw.com
`ipdocket@lw.com
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`Attorneys for Opposer
`1661, Inc. d/b/a GOAT
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`DECLARATION OF ADAM HERRERA IN SUPPORT OF MOTION TO DISMISS
`APPLICANT’S AMENDED COUNTERCLAIMS FOR ABANDONMENT AND FRAUD
`AND MOTION TO STRIKE AFFIRMATIVE DEFENSES
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`The signatory being warned that willful false statements and the like are
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`1.
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`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false
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`statements and the like may jeopardize the validity of the application or submission or any
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`registration resulting therefrom, declares that all statements made of his own knowledge are true
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`and all statements made on information and belief are believed to be true.
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`2.
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`I am counsel for 1661, Inc. d/b/a GOAT (“GOAT”) in this proceeding, and I have
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`personal knowledge of the matters stated herein and am competent to testify thereto.
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`3.
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`On August 23, 2022, after Goatpix, LLC (“Goatpix”) filed its Answer,
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`Affirmative Defenses, and Counterclaims, GOAT’s counsel initiated the meet and confer process
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`with Goatpix’s counsel, raising issues with Goatpix’s counterclaims and affirmative defenses.
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`Attached as Exhibit 1 is a true and correct copy of the email reflecting GOAT’s meet and confer
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`email.
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`4.
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`Goatpix’s counsel provided a written response on September 8, 2022. Attached
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`as Exhibit 2 is a true and correct copy of the email reflecting this response.
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`5.
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`The parties had a telephonic meet and confer to discuss Goatpix’s counterclaims
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`and affirmative defenses on September 12, 2022.
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`6.
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`On September 30, 2022, Goatpix filed its First Amended Answer, Affirmative
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`Defenses, and Counterclaims. Although Goatpix withdrew some of its affirmative defenses and
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`a counterclaim against one of GOAT’s trademark registrations, it otherwise did not withdrew its
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`remaining defenses or counterclaims.
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`7.
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`Attached as Exhibit 3 is a true and correct copy of the trademark assignment
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`between Goat Fashion Limited and GOAT, which was filed with the United States Patent and
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`Trademark Office.
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`I declare under penalty of perjury that the foregoing is true and correct. Executed in San
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`Diego, California on November 18, 2022.
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`__________________________________
`Adam Herrera
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`EXHIBIT 1
`EXHIBIT 1
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`From: Mai, Dennis (NY) <Dennis.Mai@lw.com>
`Sent: Tuesday, August 23, 2022 11:49 AM
`To: Michael.Friedland@knobbe.com; Doreen.Buluran@knobbe.com; Lori.Yamato@knobbe.com;
`lauren.katzenellenbogen@knobbe.com; Morgan.Robertson@knobbe.com
`Cc: Barry, Jennifer (SD) <Jennifer.Barry@lw.com>; Herrera, Adam (SD) <Adam.Herrera@lw.com>
`Subject: 1661, Inc. d/b/a GOAT v. Goatpix, Inc., Opp. No. 91277190 (TTAB) - Meet and Confer Request
`re: Goatpix's Counterclaims and Aff. Defenses
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`Counsel,
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`We have reviewed Goatpix’s answer and counterclaims. We are concerned that your pleadings do not
`meet the requirements set forth by the Federal Rules and TBMP. In particular, (1) we do not believe
`Goatpix has a good faith basis to assert its counterclaims as required by Rule 11 (made applicable by
`TBMP 527.02) and (2) nearly all of Goatpix’s affirmative defenses are deficient. Below are our specific
`concerns regarding Goatpix’s counterclaims and affirmative defenses. Please provide your availability to
`meet and confer this week to discuss.
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`First, Goatpix’s claim that GOAT has abandoned U.S. Registrations Nos. 3506834, 5066855, and 4103419
`is simply implausible. A quick search of publicly available internet records shows that GOAT’s
`predecessor was making use of these marks within the last eighteen months. See, e.g.,
`http://web.archive.org/web/20210508221122/https://www.goatfashion.com/. Such use falls well
`within the three-year statutory period before the presumption of abandonment applies. See 15 U.S.C.
`1127. In light of this publicly available and easily accessible information, please provide the factual basis
`for your counterclaims that GOAT has abandoned these registrations. Since Goatpix cannot credibly
`allege nonuse in three years, Goatpix is required to allege specific facts evidencing GOAT’s intent not to
`resume. See Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1930 (TTAB 2014). Please clarify
`exactly what facts evidence GOAT’s intent not to resume use of these marks.
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`Second, Goatpix’s claim that U.S. Reg. No. 4103419 should be canceled f