ESTTA Tracking number:
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`Filing date:
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`ESTTA1332543
`01/05/2024
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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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`91285990
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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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`Defendant
`Felix & Fido, Inc.
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`MAKIKO COFFLAND
`CHRISTENSEN O'CONNOR JOHNSON KINDNESS
`1201 THIRD AVENUE, SUITE 3600
`SEATTLE, WA 98101
`UNITED STATES
`Primary email: makiko.coffland@cojk.com
`Secondary email(s): john.whitaker@cojk.com, litdoc@cojk.com
`206-682-8100
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`Opposition/Response to Motion
`
`John Whitaker
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`john.whitaker@cojk.com, makiko.coffland@cojk.com, litdoc@cojk.com
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`/John Whitaker/
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`01/05/2024
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`2 pt 1 Response to Dreamworks MSJ - Entress Decl - Ex A-Q and S - Woo dy
`Decl.pdf(2828591 bytes )
`2 pt 2 Response to Dreamworks MSJ - Entress Decl - Ex A-Q and S - Woo dy
`Decl.pdf(3455714 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`DreamWorks Animation L.L.C.,
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`Opposer,
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`v.
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`Felix & Fido, Inc.,
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`Applicant.
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`Opposition No. 91285990
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`Applicant's Marks:
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`FELIX & FIDO VET CARE
`Serial No. 97398193
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`FELIX & FIDO PET CARE
`Serial No. 97398204
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`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION FOR SUMMARY
`JUDGMENT AND CROSS-MOTION FOR PARTIAL SUMMARY JUDGMENT
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`Applicant Felix & Fido, Inc. (“F&F” or “Applicant”) hereby opposes the Motion for
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`Summary Judgment (8 TTABVUE (“MSJ”)) filed by Opposer DreamWorks Animation L.L.C.
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`(“Opposer”) in this matter on December 6, 2023, and hereby submits Applicant’s Cross-Motion
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`for Partial Summary Judgment on the same issues.
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`I.
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`INTRODUCTION
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`Opposer has moved for summary judgment that F&F’s applied-for marks, FELIX &
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`FIDO VET CARE and FELIX & FIDO PET CARE (collectively, the “F&F Marks” or
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`“Applicant’s Marks”) should be invalidated on the grounds that F&F has not produced any
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`documentation to substantiate its predecessor’s bona fide intent to use the F&F Marks in
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`commerce at the time U.S. Application Serial Nos. 97398193 and 97398204 (collectively, the
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`“Applications”) were filed. However, Opposer critically fails to mention that it never even
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`asked for the documents it erroneously complains do not exist. Exacerbating the issue is
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`Opposer’s allegation that F&F did not produce documents “[d]uring the discovery period” (MSJ
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`at 11) when afforded the chance. Opposer neglects to mention that it filed its MSJ (and thereby
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`suspended this proceeding) over two weeks before the date F&F had already agreed to produce
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`documents.
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`Opposer’s MSJ advances legal theories that directly contradict established law and are
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`unsupported by the undisputed facts. As evidenced by the attached exhibits, the documented
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`facts unequivocally prove that Opposer’s MSJ should be denied and, instead, partial summary
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`judgment should be granted in favor of F&F on the issues presented: (1) Pioneer Square Labs,
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`Inc. (“PSL”) had a demonstrable and bona fide intent to use the F&F Marks in commerce well
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`prior to filing the Applications; and (2) the assignments of the Applications did not violate
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`Lanham Act § 10(a)(1) because PSL created a business to which the F&F Marks pertained and
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`assigned the entirety of that ongoing and existing business first to Pioneer Square Labs Holdings
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`II, LLC, and Pioneer Square Labs Holdings II-A, LLC (collectively, “PSL II”) which were then
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`assigned to F&F, all of whom are successors to that ongoing and existing business.
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`II.
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`STATEMENT OF DISPUTED AND UNDISPUTED FACTS
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`A. Opposer’s Disputed Facts.
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`Although Opposer’s statement of undisputed facts contains some true statements, there
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`are several glaring errors in which Opposer either presents inaccurate legal conclusions as
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`undisputed facts or simply misrepresents the facts which Opposer claims are undisputed. The
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`following are the most salient errors in Opposer’s statement of undisputed facts.
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`Opposer’s claim that it served discovery requests upon F&F (or any other entity)
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`requesting information and documents related to PSL’s intent to use the Marks for the services
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`identified in the Applications is simply wrong. MSJ at 4.
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`First, Opposer’s position that the discovery requests it served on F&F somehow
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`translate to responses from PSL—which is not a party to this proceeding—is flatly wrong. In
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`Opposer’s Revised First Set of Interrogatories and Revised First Document Production
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`Requests, Opposer defined “You” or “Your” as “collectively, [F&F], its predecessors in interest
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`([PSL and PSL II]) and any of their employees, agents, representatives, attorneys, or other
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`persons or entities acting on their behalf.” See Declaration of Joel Feldman (“Feldman Decl.”),
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`Exh. 1, at 2, and Exh. 2, at 2. F&F objected to that definition on the basis that PSL and PSL II
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`are not parties to this Opposition and therefore Opposer cannot impose discovery obligations
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`on those entities merely by incorporating them within Opposer’s definition. Accordingly, F&F
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`responded to Opposer’s discovery requests by lodging that formal objection and substituting
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`the following definition of “You” or “Your”: “Collectively, [F&F] and any of its employees,
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`agents, representatives, attorneys, or other persons or entities acting on its behalf.” See Feldman
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`Decl. Exh. 3, at 2, and Exh. 4, at 2. Therefore, critically, F&F’s responses did not (as they could
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`not) represent the positions of either PSL or PSL II.
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`Second, not one document request or interrogatory sought documents or information
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`concerning any entity’s (neither F&F’s nor PSL’s) intended use of the F&F Marks for services.
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`Instead, Opposer served one document request and one interrogatory concerning F&F’s (not
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`PSL’s) intended use of the F&F Marks for goods, but not services. See Feldman Decl. Exh. 3,
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`Interrogatory No. 14 (“For each of the Opposed Marks, provide all facts and circumstances
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`concerning goods branded with the mark that You intend to sell”) (emphasis added); Feldman
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`Decl. Exh. 4, Request for Production No. 18 (“For each of the Opposed Marks, produce all
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`relevant documents and things concerning goods branded with the mark that You intend to
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`sell”) (emphasis added).
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`Lastly, Opposer’s assertion that F&F “has no documentary evidence of its or PSL’s
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`bona fide intent to [use the F&F Marks outside of the State of Washington]” (MSJ at 7) is a
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`gross misrepresentation. No evidence was produced prior to Opposer filing its MSJ regarding
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`PSL’s bona fide intent to use the F&F Marks simply because Opposer failed to ask for such
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`evidence in its discovery requests. Given that PSL is not a party to these proceedings, F&F’s
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`responses were confined to those of F&F. Opposer cannot fail to ask for information and then
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`complain that it does not have the information that it failed to ask for. As extensively detailed
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`below, PSL has an abundance of documentary and testimonial evidence clearly demonstrating
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`PSL’s bona fide intent to use Applicant’s Marks in commerce prior to filing the Applications.
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`B. F&F’s Undisputed Facts.
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`F&F submits that the following facts are undisputed or not capable of legitimate dispute.
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`PSL is a startup studio and venture capital fund that collaborates with entrepreneurs to explore
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`and develop business opportunities. See Declaration of Geoffrey R. Entress (“Entress Decl.”),
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`¶3. As a matter of course, PSL reviews and analyzes many ideas and concepts for whether they
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`might form the basis for a potentially successful business. Id. While most ideas never come to
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`fruition, the few promising ones undergo thorough evaluation and receive dedicated support
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`from entrepreneurs, designers, engineers, and other PSL employees. Id. ¶4. Once these ventures
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`mature into a self-sustainable business, PSL spins that business out into a separate corporate
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`entity (a “Spin Out”). Id. At that time, all business assets, product plans, know-how, and
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`goodwill specific to that business are transferred from PSL to the Spin Out. Id. F&F is one of
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`those Spin Outs.
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`In late 2021, PSL conceived of an idea for a novel pet care and veterinary clinic. Id. ¶6.
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`The new venture was envisioned to provide subscription-based veterinary care through a
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`combination of 24/7 telemedicine, in-clinic, and at-home services. Id. In addition, that new
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`venture would provide pet health and care information disseminated by way of a website. Over
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`the next several months, PSL conducted extensive market research, gauged the competitive
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`landscape, and evaluated the viability of a business that would ultimately become a new PSL
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`Spin Out (the “F&F Business”). Id. ¶¶7-19; Exhibits A-B.
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`For instance, in a slide deck dated January 4, 2022, PSL thoroughly outlined the
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`challenges faced by pet owners and veterinarians within the existing pet care landscape, offered
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`in-depth insights into certain pain points, and presented a list of solutions that could ameliorate
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`those pain points—solutions which would be integrated into the F&F Business model. Id. ¶10;
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`Exhibit B. The subscription-based model was dissected into three different tiers of service
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`offerings, each designed to provide consumers with a range of veterinary service options. Id.
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`As shown in that slide deck, and an email between PSL employees, as early as January 4, 2022,
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`PSL intended to use some formulation of the term “FELIX & FIDO” in connection with that
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`venture. Id. at ¶¶9-10; Exhibits A-B.
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`In addition, PSL conducted a comparative analysis of the anticipated F&F Business
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`model with competitors such as BondVet, Modern Animal, BetterVet, and Chewy to position
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`the F&F Business within the veterinary service marketplace. See Exhibit B. Veterinarians
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`employed by F&F would provide a wide range of veterinary services, including diagnosis,
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`prescription, physical exams, lab testing, medication administration, and dental procedures—
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`all services covered in the Applications. Id. The slide deck was punctuated by a Gantt chart,
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`which identified key milestones for the F&F Business between January and March 2022,
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`including hiring a care team, launching the F&F website, and completing the first in-home visit.
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`Id.
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`During those early days, PSL continued to develop the F&F Business by engaging in
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`frequent conversations with prospective employees, consultants, independent contractors,
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`insurance companies, and other entities crucial to the success of the venture. See Entress Decl.
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`¶¶9, 11, 13, 17-18; Exhibits A, C-F. Between January 1 and February 1 of 2022, PSL discussed
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`a roadmap and strategy for the F&F Business with prospective consultants (Exhibit A),
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`provided company-related information for the F&F Business’ valuation (Exhibit C), sought
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`(Exhibit D) and confirmed (Exhibit G) professional liability insurance from the American
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`Veterinary Medical Association, hired a veterinary strategy consultant (Exhibit F), and hired a
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`consultant to assist PSL with the design and development of a software program to provide
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`veterinary care and ancillary services to end users (Exhibit E). See id. ¶¶9, 11, 13, 15, 17-18.
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`In addition, on January 13, 2022, PSL acquired the <felixandfido.com> domain name
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`to provide the web-based services identified in the Applications. See id. ¶12; Exhibit H. PSL
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`launched the initial F&F website in support of the F&F Business some time prior to June 25,
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`2022. See id. ¶22. By June 25, 2022 (after the Applications’ filing date), the F&F website was
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`fully operational, “providing care information for pet owners relating to animal health and
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`animal behavior via a website and “providing information and advice in the fields of pet health
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`and pet care.” See id.; Exhibit I; Applications. On July 12, 2022, Thomas Khun, a Doctor of
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`Veterinary Medicine, purchased professional liability and business-related insurance. See
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`Entress Decl. ¶14-16; Exhibits G, J-K. On July 13, 2022, PSL posted a job application on
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`ZipRecruiter for a Vet Tech position (Exhibit L) and another on July 25, 2022 for a Veterinary
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`Assistant position. (Exhibit M). See id. ¶23-24.
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`By June of 2022, the F&F Business had achieved self-sustainability, so PSL
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`incorporated F&F “to build a company that provides routine and acute veterinary services to
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`pets” (i.e., the F&F Business) on or about June 10, 2022. See id. ¶21, Exhibits N-O; Declaration
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`of Gavin Woody (“Woody Decl.”) ¶4. On or about July 29, 2022, PSL assigned and transferred
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`the entirety of the F&F Business (through PSL II as an intermediary) to F&F. See Entress Decl.
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`¶25-26, Exhibits P-Q; Woody Decl. ¶5. That transfer included the Applications, the
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`<felixandfido.com> domain name, business and product plans related to the F&F Business,
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`early product wireframes, designs related to the F&F Business, software code developed in
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`furtherance of the F&F Business, and all intellectual property rights associated with the
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`foregoing. See Woody Decl. ¶5; Exhibits P-Q.
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`The Applications were thus included in two assignments: (1) from PSL (original
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`applicant) to PSL II (“Assignment 1”); and (2) from PSL II to F&F (“Assignment 2”)
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`(collectively, the “Assignments”). Exhibits P-Q. The two assignments are substantially
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`identical but for the definitions of “assignee” and “assignor.”
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`III. POINTS AND AUTHORITIES
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`Opposer’s MSJ should be denied, and partial summary judgment should be entered in
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`favor of F&F on the issues presented in Opposer’s MSJ. As detailed below, PSL had a
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`demonstrable and bona fide intent to use the F&F Marks in commerce for the services identified
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`in the Applications when it filed the Applications, and the Assignments did not violate Lanhan
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`Act § 10(a)(1).
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`A. Opposer Improperly Served Discovery on PSL (a Non-Party) and Attempts to
`Erroneously Impute F&F’s Discovery Responses to PSL.
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`The law is very clear: “[i]nterrogatories may not be served on a non-party” and
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`“[r]equests for production may not be served on a nonparty.” TBMP §§ 405.01 and 406.01.
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`PSL is undeniably a nonparty to this proceeding. See Sept. 18, 2023 Order on Discovery
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`Conference (“In view of an assignment of the involved applications from [PSL] to [F&F], prior
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`to the commencement of this proceeding, [F&F], as assignee, has been substituted as party
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`defendant”.) (emphasis added). 7 TTABVUE, at 2.
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`Opposer’s MSJ is replete with attempts to improperly ascribe discovery responses to
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`PSL. However, Opposer has served no discovery on any PSL entity. Thus, Opposer’s MSJ
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`presents no evidence regarding PSL’s positions on any issue in this opposition. See Airbnb, Inc.
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`v. the Sovereign Kingdom, No. 91244866, 43 TTABVUE 5, n.4 (Mar. 27, 2023) (denying
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`attempt to obtain discovery responses from predecessor-in-interest that had been substituted out
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`and was therefore a nonparty). Instead, Opposer erroneously attempted to create the illusion of
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`a discovery obligation on PSL through creative—yet inappropriate—definitions. MSJ Exh. 2,
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`at 2. F&F properly rejected Opposer’s incorrect definition and instead responded to Opposer’s
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`discovery requests using the appropriate definition of “You” and “Your,” which excluded PSL.
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`MSJ Exh. 4, at 1-2.
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`Accordingly, F&F’s discovery responses provided to the Board by Opposer are solely
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`on behalf of F&F and do not reflect any position taken by PSL.
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`B. The Applications are Valid Because PSL Had a Bona Fide Intent to Use The F&F
`Marks in Commerce When It Filed the Applications.
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`“[A]n applicant may file a trademark or service mark application based on a bona fide
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`intention to use a mark in commerce ‘under circumstances showing the good faith of such
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`person.’” TMEP § 1101 (quoting 15 U.S.C. § 1051(b)(1)). “Under our case law, ‘the evidentiary
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`bar is not high,’ and the circumstances must simply indicate ‘that the applicant’s intent to use
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`the mark was firm and not merely intent to reserve a right in the mark.’” Tiger Lily Ventures v.
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`Barclays Cap. Inc., 35 F.4th 1352, 1365 (Fed. Cir. 2022) (quoting M.Z. Berger & Co. v. Swatch
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`AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015)).
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`Opposer bears the burden of demonstrating by a preponderance of the evidence that PSL
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`lacked a bona fide intent to use the Marks for the recited services when PSL filed the
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`Applications. See Societe Des Produits Nestle S.A., No. 91232597, 2020 WL 4530518, at *11
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`(Aug. 5, 2020). One indicator of a lack of bona fide intent can be a lack of documentary
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`evidence demonstrating such intent as of the application filing date. See, e.g., a&h Sportsware
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`Co., Inc., No. 91235843, 2019 WL 1453071, at *4 (Mar. 29, 2019)
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`For the reasons set forth below, Opposer has entirely failed to demonstrate that F&F
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`lacked a bona fide intent to use the Marks in commerce as of May 6, 2022. The documentary
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`evidence submitted as exhibits herewith clearly and undeniably establish PSL’s bona fide intent
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`to use the F&F Marks in commerce prior to filing the Applications.
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`1. F&F Has an Abundance of Documentation Substantiating PSL’s Bona Fide
`Intent to Use the F&F Marks Prior to May 6, 2022.
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`Opposer’s argument that F&F lacks documentary evidence establishing PSL’s bona fide
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`intent is a red herring. Opposer was not provided with documentary evidence simply because
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`Opposer did not ask for it. Obviously, Opposer cannot establish a prima facie case based on the
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`absence of evidence that it did not request.
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`Moreover, Opposer’s MSJ was filed over two weeks before the agreed-upon date for
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`F&F to produce documents. When producing documents responsive to a request, “the
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`production must then be completed no later than the time for inspection specified in the request
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`or another reasonable time specified in the response.” Fed. R. Civ. P. 34(b)(2)(B) (emphasis
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`added). As is evident from Opposer’s own filings, F&F specified in its response that its
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`production would be made “within thirty (30) days of these responses,” which would have been
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`on December 22, 2023 if Opposer had not filed the instant MSJ. MSJ, Exh. 4, at 1. Opposer
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`cannot complain that it does not have documents it allegedly requested when it did not even
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`wait until document production was due.
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`F&F is submitting, in conjunction with this paper, numerous documents definitively
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`establishing PSL’s bona fide intent to use the Marks in commerce for the services identified in
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`the Applications, namely, “Veterinary services, namely, treatment, care, advice or guidance
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`related to animals; veterinary consultations provided via telephone, online chat, text and email;
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`providing care information for pet owners relating to animal health and animal behavior via a
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`website; pet care services, namely, administration of medicine, in-home medical care, triage
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`and consultation on veterinary services; providing information and advice in the fields of pet
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`health and pet care” (the “Class 44 Services”).
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`Included in those documents are: (1) the Declaration of Geoffrey R. Entress attesting to
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`a multitude of steps taken by PSL to develop the F&F business to provide the Class 44 Services
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`prior to May 6, 2022; (2) an email dated January 3, 2022 outlining PSL’s agenda for a meeting
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`regarding the F&F Business, including work done to-date, strategy for the 2022 year, and the
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`business and product roadmap for 2022’s first quarter (Exhibit A); (3) a “Deep Dive” slide deck
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`dated January 4, 2022 which provides a detailed analysis of the F&F Business and the services
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`to be provided (Exhibit B); (4) an email dated January 12, 2022 from the Chief Financial Officer
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`of PSL seeking company-related information to initiate the valuation process for the F&F
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`Business (Exhibit C); (5) a receipt dated January 13, 2022 confirming PSL’s acquisition of the
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`<felixandfido.com> domain name for use in providing the web-based services recited in the
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`Applications (Exhibit H); (6) an email dated January 18, 2022 from an American Veterinary
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`Medical Association representative regarding professional liability insurance (Exhibit D); (7) a
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`Consulting Agreement between PSL and Dr. Shlomo Freiman dated January 18, 2022 under
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`which Dr. Freiman would “play a key role in designing and developing a software platform that
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`provides veterinary care and ancillary services to end users” (Exhibit E); (8) an email dated
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`February 1, 2022 regarding an Independent Contractor Agreement between PSL and Thomas
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`Reuss (Exhibit F); and (9) an invoice from Reuss, detailing work done through early May
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`(immediately prior to PSL filing the Applications), including the creation of an operational
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`planning document (Exhibit S). See Entress Decl. ¶7-13, 17-19.
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`The foregoing evidence is more than sufficient to overcome the low evidentiary bar to
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`demonstrate PSL’s bona fide intent to use the F&F Marks in commerce in connection with the
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`Class 44 Services. Accordingly, partial summary judgment in F&F’s favor on this issue is
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`proper and appropriate.
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`2. The Applications’ Intended Services Fall Within Regulable Commerce.
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`Opposer argues that the F&F Marks should be voided because Opposer believes that
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`F&F did not intend to provide services in states other than Washington at the time the
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`Applications were filed. That argument fails for many reasons.
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`First, Opposer misreads F&F’s response to Opposer’s Interrogatory. F&F stated that it
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`did intend to expand its veterinary clinics outside of Washington but had no concrete plans to
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`do so at the time the responses were served. MSJ Exh. 3, at 11. The law does not impose a bona
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`fide “concrete plans” requirement on an intent-to-use trademark application, and Opposer’s
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`argument is simply meritless.
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`Second, even if F&F (or its predecessor PSL) did not have a concrete plan to provide
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`the Class 44 Services in states other than Washington, there is no requirement that it did.
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`Opposer misunderstands the law. The Lanham Act defines “commerce” as “all commerce
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`which may lawfully be regulated by Congress.” 15 U.S.C. § 1127. It is irrefutable that
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`“[i]ntrastate use of a mark may qualify as use in commerce within the meaning of the [Lanham]
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`Act if the intrastate use is of a type that would, taken in the aggregate, have a direct effect on
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`interstate commerce.” TMEP § 901.03; Christian Faith Fellowship Church v. adidas AG, 841
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`F.3d 986, 995 (Fed. Cir. 2016) (“[b]ecause one need not direct goods across state lines for
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`Congress to regulate the activity under the Commerce Clause, there is likewise no such per se
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`condition for satisfying the Lanham Act’s ‘use in commerce’ requirement.”); Gonzales v.
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`Raich, 545 U.S. 1, 22 (2005) (“That the regulation [passed under the Commerce Clause]
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`ensnares some purely intrastate activity is of no moment.”); 3 J. Thomas McCarthy, McCarthy
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`on Trademarks and Unfair Competition § 19:123 (4th ed.) (footnote omitted) (“a sale or
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`delivery does not have to cross a state line in order to affect ‘commerce.’”). For services, the
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`reach of the Commerce Clause is even greater. See, e.g., Larry Harmon Pictures Corp. v.
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`Williams Rest. Corp., 929 F.2d 662, 664 (Fed. Cir. 1991).
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`Here, the Applications recite that one of the services that F&F intends to provide under
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`the F&F Marks is “providing care information for pet owners relating to animal health and
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`animal behavior via a website.” It is indisputable that the Commerce Clause provides Congress
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`with the power to regulate websites on the Internet. See TMEP § 901.03; Utah Lighthouse
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`Ministry v. Found. for Apologetic Info. & Rsch., 527 F.3d 1045, 1054 (10th Cir. 2008) (“the
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`Internet is generally an instrumentality of interstate commerce”); Planned Parenthood Fed'n of
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`Am., Inc. v. Bucci, 42 USPQ2d 1430, 1997 WL 133313, at *4 (S.D.N.Y. 1997), aff'd, 152 F.3d
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`920 (2d Cir. 1998) (“The nature of the Internet indicates that establishing a typical home page
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`on the Internet, for access to all users, would satisfy the Lanham Act's ‘in commerce’
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`requirement”). Courts have repeatedly held that offering services via the Internet constitutes
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`use in commerce—specifically providing information on a website. See, e.g., id., at *3
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`(registration of domain name “plannedparenthood.com” and creation of a website containing
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`information antithetical to Planned Parenthood's views constituted use in commerce); DeVivo
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`v. Ortiz, No. 91242863, 23 TTABVUE 29-30 (Mar. 11, 2020) (providing educational
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`information on an interactive website constituted use in commerce); Savannah Coll. of Art &
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`Design, Inc. v. Houeix, 369 F. Supp. 2d 929, 942 (S.D. Ohio 2004) (holding that defendant's
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`“dissemination of information over the internet satisfies the ‘use in commerce’ requirement”).
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`In a manner similar to providing information over the Internet, the provision of in-home
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`veterinary services and telephone-based veterinary services also fall into the realm of the type
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`of commerce that can be regulated by Congress. Still further, all of the services recited in the
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`Applications, taken in the aggregate, have an impact on commerce that can be regulated by
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`Congress. Accordingly, all of the services recited in the Applications are of the type that even
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`purely intrastate conduct falls within the scope of commerce that can be regulated by Congress
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`and there is no requirement that an intent to perform any of those services in a different state is
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`required.
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`Therefore, Opposer’s argument should be rejected, and partial summary judgment
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`should be entered in favor of F&F on this issue.
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`C. The Applications are Valid Because Neither Assignment of the Applications
`Violated Lanham Act § 10(a)(1).
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`Section 10(a)(1) of the Lanham Act provides that an ITU application to register a mark
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`may be assigned prior to the filing of an allegation or statement of use if the application is
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`assigned “to a successor to the business of the applicant, or portion thereof, to which the mark
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`pertains, if that business is ongoing and existing.” 15 U.S.C. § 1060(a)(1).
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`There is no dispute that the Applications were assigned to F&F prior to filing an
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`allegation or statement of use. However, the assignments qualify for the existing business
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`exception because (1) PSL established an ongoing and existing business to which the F&F
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`Marks pertained prior to their assignment to F&F; and (2) F&F is the successor to that portion
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`of PSL’s business to which the F&F Marks pertained.
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`As demonstrated below, PSL assigned all the assets of the F&F Business, including the
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`Applications and the business to which the F&F Marks pertain, to F&F, its successor to that
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`portion of the ongoing and existing business. Accordingly, the claim that the Applications’
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`assignments violated Section 10(a)(1) should be rejected and partial summary judgment should
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`be entered in F&F’s favor.
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`1. The Assignment Documents Do Not Violate Section 10(a)(1) as a Matter of
`Law.
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`Opposer cites The Clorox Co. v. Chemical Bank (MSJ at 15) to argue that the
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`Applications’ assignments violated Lanham Act § 10(a)(1) as a matter of law. However, the
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`facts of the present case are distinguishable from the situation involved in Clorox. In Clorox,
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`“it was apparent from the face of the assignment document itself (entitled TRADEMARK AND
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`TRADENAME SECURITY ASSIGNMENT AND LICENSE AGREEMENT) that the
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`assignment violated the express language of Section 10(a)(1). The assignment’s terms
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`specifically included a provision that the business to which the assigned mark pertained was
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`not to be transferred to the assignee, but rather was to be retained by the assignor, which was
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`to ‘operate its business … in relation to the goods as heretofore conducted by the Assignor.’”
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`A.V. Brands, Inc., No. 9204334, 2009 WL 1068777, at *7 (Mar. 31, 2009) (quoting
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`assignment/license agreement) (emphasis added).
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`The instant case is exactly the opposite of the situation presented in Clorox. Here, both
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`assignments’ terms expressly transferred all of the F&F Business to which the F&F Marks
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`pertain from assignor to assignee. Neither assignment retained any right for assignor to continue
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`the F&F Business. Nothing in the Assignments raises the issues presented in Clorox, therefore
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`Clorox is inapplicable.
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`2. PSL II is the Successor of PSL to the F&F Business.
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`Opposer argues, without citation to any legal authority, that the two PSL II entities (PSL
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`II, LLC and PSL II-A, LLC) are not “successors” to PSL. MSJ at 16. Opposer fails to explain
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`why it believes that those entities are not “successors” to the F&F Business. Instead, Opposer
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`merely misstates that erroneous legal conclusion as fact. Opposer’s position directly contradicts
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`the law and, indeed, common sense.
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`Longstanding legal precedent dictates that when an acquiring entity acquires the
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`business of another entity, that acquiring entity is the “successor” to the other entity of that
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`business. See, e.g., Nat'l Spiritual Assembly of Baha'is of U.S. Under Hereditary Guardianship,
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`Inc. v. Nat'l Spiritual Assembly of Baha'is of U.S., Inc., 628 F.3d 837, 857 (7th Cir. 2010) (citing
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`Walling v. James v. Reuter, Inc., 321 U.S. 671, 674 (1944) (“successors are ‘those to whom the
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`business may have been transferred’”); Golden State Bottling Co. v. N.L.R.B., 414 U.S. 168,
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`179 (1973) (“finding bona fide purchaser of a business enterprise was the legal successor to the
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`enterprise”); Reich v. Sea Sprite Boat Co., 50 F.3d 413, 417 (7th Cir. 1995) (“a company that
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`‘acquired the business to this court’s order’ was legal successor”). In the absence of any legal
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`authority to the contrary, or even a cursory explanation of Opposer’s reasoning, F&F cannot
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`understand the basis for Opposer’s position that PSL II and PSL II-A are not “successors” to
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`PSL.
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`The undisputed facts are that PSL transferred the entirety of the F&F Business
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`(including the Applications) to PSL II, which then became the successor of the entire F&F
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`Business. PSL II then immediately transferred the entire F&F Business to F&F, which then
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`became the successor of the F&F Business. Opposer’s unsubstantiated statements to the
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`contrary are simply wrong in both fact and law.
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`3. PSL Engaged in an Ongoing and Existing Business to Which the Marks
`Pertained Prior to the Assignments.
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`Prior to 1988, U.S. trademark law did not recognize a trademark application unless the
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`mark was already in use in commerce. This greatly disadvantaged American companies, as
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`foreign companies could establish their foreign trademark rights in the U.S. without ever using
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`those marks in their home countries. To address this imbalance and ameliorate the
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`disadvantages suffered by American companies, Congress passed the Trademark Law Revision
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`Act of 1988 (“TLRA”).
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`The TLRA made three crucial amendments to the Lanham Act that are pertinent to this
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`proceeding. First, the TLRA introduced a new filing category for trademark registrations that
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`did not require prior use of the mark—the intent-to-use application. Second, the TLRA
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`amended the definition of “use in commerce” to add the phrase “bona fide use of a mark in the
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`ordinary course of trade, and not made merely to reserve a right in a mark.” TMEP § 901.02.
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`Third, the TLRA amended that portion of the Lanham Act addressing the assignability of
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`trademarks to allow assignment of intent-to-use (“ITU”) applications under certain
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`circumstances. Specifically, an ITU application may be assigned prior to the filing of an
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`allegation or statement of use so long as the application is assigned “to a successor to the
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`business of the applicant, or portion thereof, to which the mark pertains, if that business is
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`ongoing and existing.” 15 U.S.C. § 1060(a)(1).
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`The concern surrounding the assignability of ITU applications stemmed from a fear of
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`“trafficking” in trademarks—the practice of filing an ITU application when the applicant did
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`not have a legitimate intent to use the mark but rather merely to reserve the mark and then sell
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`it to another entity that legitimately wanted to use it. See S. REP. 100-515, 25, 1988
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`U.S.C.C.A.N. 5577, 5587. “As the Senate Report said, the purpose of the anti-trafficking
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`prohibition is to insure that the applicant has a bona fide intention to use. Having a bona fide
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`intention to use does not require that the applicant has already sold goods or services under the
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`mark.” J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition § 18:13