ESTTA Tracking number:
`
`ESTTA1331273
`
`Filing date:
`
`12/28/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91285997
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`S&G Hampton Sun, LLC
`
`ROBERT L. POWLEY
`POWLEY & GIBSON, P.C.
`60 HUDSON STREET
`SUITE 2203
`NY, NY 10013
`UNITED STATES
`Primary email: trademarks@powleygibson.com
`Secondary email(s): rlpowley@powleygibson.com, rsbrook@powleygibson.com
`212-226-5054
`
`Motion to Dismiss - Rule 12(b)
`
`Stephen M. Ankrom
`
`smankrom@powleygibson.com, trademarks@powleygibson.com
`
`s/Stephen M. Ankrom/
`
`12/28/2023
`
`2023.12.28 - 91285997 - Motion to Dismiss Counterclaim and Exhibits.p
`df(1472789 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
` OPPOSER,
`
`
`S&G Hampton Sun, LLC,
`
`
`v.
`
`Hamptons Aromatherapy, Inc.,
`
`
` APPLICANT.
`
`
`
`
`
`Opposition Proceeding No. 91/285997
`against App. Serial No. 97379210
`
`
`
`MOTION TO DISMISS COUNTERCLAIM
`
`Opposer S&G Hampton Sun, LLC (“Opposer”) in the above-identified opposition
`
`proceeding, by and through its respective attorneys, hereby moves to dismiss Applicant
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`Hamptons Aromatherapy, Inc.’s (“Applicant”) Counterclaim pursuant to Federal Rule of Civil
`
`Procedure 12(b)(6).
`
`INTRODUCTION
`
`
`
`The sole basis for Applicant’s counterclaim alleging fraud on the USPTO is Opposer’s
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`June 23, 2015 response to the Examining Attorney’s December 23, 2014 Office Action. While
`
`examining Opposer’s application to register the mark HAMPTON SUN for “room fragrances;
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`and air fragrancing preparations; passive scent diffusers, namely, air diffusers comprised of a
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`wick and sold with oil in a container used to emit scent by diffusion into the air” in class 3 and
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`“candles; scented candles” in class 4 (the “Fragrance and Candle Goods”), the Examining
`
`Attorney requested that Opposer “provide a written statement explaining whether the goods are
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`manufactured, packaged, shipped from, sold in or have any other connection with the geographic
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`location named in the mark, namely, Hampton, New York, Hampton, Connecticut, or
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`Hampton, New Jersey.” Ex. A at 6 (emphasis added). Opposer accurately responded that the
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`

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`goods and services in question have no connection to Hampton, New York, Hampton,
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`Connecticut, or Hampton, New Jersey. Opposer’s mark HAMPTON SUN for the Fragrance and
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`Candle Goods subsequently issued to registration under Reg. No. 5617639.
`
`
`
`The Counterclaim fails to allege any facts that would make the fraud allegations
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`plausible. Every single purported fact alleged by Applicant in support of its Counterclaim is
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`entirely irrelevant to the allegation that Opposer materially misled the USPTO, because none of
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`the facts alleged by Applicant are directed to the geographic areas to which the Examining
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`Attorney inquired. While the Examining Attorney asked whether the Fragrance and Candle
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`Goods were associated with Hampton, New York, Hampton, Connecticut, or Hampton, New
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`Jersey, all of Applicant’s ostensible support for its counterclaim allegation of fraud rely on a
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`supposed connection to a different geographic location, eastern Long Island, which is not one of
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`the locations identified in the Examiner’s question to Opposer.1
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`
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`Instead, Applicant is trying to allege a misstatement by Opposer on the basis of a
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`supposed connection between the Fragrance and Candle Goods and a different geographic area
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`than the ones the Examining Attorney asked about. Further, Applicant’s purported support does
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`not even establish a connection between the Candles and Fragrances goods and any geographic
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`location, including eastern Long Island.
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`
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`Applicant’s Counterclaim fails to understand the facts and the standard for evaluating
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`whether a mark is merely geographically descriptive, and does not properly allege or plead fraud.
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`For these reasons, the Counterclaim should be dismissed in its entirety.
`
`
`1 Applicant confuses “the Hamptons” on eastern Long Island with Hampton, New York, but they are
`separate and distinct geographic locales. Hampton, New York is not located in or near Long Island, and
`is instead situated in upstate New York, over 180 miles north of Long Island.
`
`
`
`2
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`

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`LEGAL STANDARD
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`A court may dismiss a complaint for “failure to state a claim upon which relief can be
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`granted.” Fed. R. Civ. P. 12(b)(6). “[A] plaintiff’s obligation to provide the ‘grounds’ of his
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`‘entitle[ment] to relief’ requires more than labels and conclusions, and a formulaic recitation of
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`the elements of a cause of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
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`(2007). Specifically, a complaint “must contain sufficient factual matter, accepted as true, to
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`‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In particular, to state a
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`claim plausible on its face, the claimant must allege well-pleaded factual matter and more than
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`“[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements.” Ashcroft, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555). For purposes of
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`determining the motion, all of the plaintiff’s well-pleaded allegations must be accepted as true,
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`and the claims must be construed in the light most favorable to the plaintiff. See Petróleos
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`Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1404-05 (TTAB 2010).
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`To sufficiently plead a claim of fraud, Applicant must allege that 1) Opposer made a
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`false representation to the USPTO; 2) the false representation is material to the determination
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`of registrability of a mark; 3) Opposer had knowledge of the falsity of the representation; and
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`4) Opposer made the representation with the intent to deceive the USPTO to issue the
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`registration. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009).
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`All claims of fraud on the USPTO must be pleaded with heightened particularity pursuant to
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`Fed. R. Civ. P. 9(b). Intent to deceive is an indispensable element of the analysis in a fraud
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`case and must be pleaded. See In re Bose Corp., 91 USPQ2d at 1941. While malice, intent,
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`knowledge, and other conditions of mind may be averred generally, a plaintiff “must state with
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`particularity the circumstances constituting [the alleged] fraud.” See Fed. R. Civ. P. 9(b).
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`
`
`3
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`

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`However, pleadings must allege sufficient underlying facts from which the Board may
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`reasonably infer that a party acted with the requisite state of mind. Asian and Western Classics
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`B.V. v. Selkow, 92 USPQ2d 1478, 1479 (TTAB 2009). Further, to satisfy Rule 9(b), any
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`allegations based on “information and belief” must be accompanied by a statement of facts
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`upon which the belief is founded. See Asian & W. Classics B.V. v. Selkow, 92 USPQ2d 1478,
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`1479 (TTAB 2009) (citing Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d
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`1656, 1670 n.7 (Fed. Cir. 2009)). The pleadings must “contain explicit rather than implied
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`expression of the circumstances constituting fraud.” King Auto., Inc. v. Speedy Muffler King,
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`Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981).
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`ARGUMENT
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`I. Applicant Alleges No Facts That Show a Connection Between the Goods Sold in
`Connection with the Mark HAMPTON SUN as Shown in the ‘639 Registration and
`Hampton, NY, Hampton, NJ, or Hampton, CT
`
`
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`The basis for Applicant’s Counterclaim allegations of fraud on the USPTO rests entirely
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`on Opposer’s June 23, 2015 response to the Examining Attorney’s Office Action. However,
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`Applicant fails to allege any facts that would make its claims plausible. The Examining Attorney
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`asked Opposer whether its goods were manufactured, shipped from, sold in, or have any other
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`connection to Hampton, New York, Hampton, Connecticut, or Hampton, New Jersey, and all of
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`Applicant’s support for its Counterclaim alleging fraud purport to show a connection between
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`Opposer’s goods and eastern Long Island—not Hampton, New York, Hampton Connecticut, or
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`Hampton, New Jersey. However, Applicant fails to provide any factual basis that Opposer’s
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`trademark has any relationship to the three (3) cities noted by the Examining Attorney. The
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`Counterclaim alleges a connection with eastern Long Island, New York—which Opposer
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`strongly disputes the veracity of—but more importantly the supposed connection to eastern Long
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`Island is irrelevant to Opposer's June 23, 2015 response. As such, Applicant fails to state a claim
`
`
`
`4
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`

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`because it has alleged no factual support that Opposer made a false statement and its
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`Counterclaim allegations are not plausible.
`
`
`
`As noted above, the Examining Attorney’s December 23, 2014 Office Action asked
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`Opposer, among other things, to “provide a written statement explaining whether the goods are
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`manufactured, packaged, shipped from, sold in or have any other connection with the geographic
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`location named in the mark, namely, Hampton, New York, Hampton, Connecticut, or Hampton,
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`New Jersey.” Ex. A at 6. On June 23, 2015, Opposer responded in part, “Applicant states that:
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`Its goods and services have no connection to Hampton, New York, Hampton, Connecticut or
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`Hampton, New Jersey,” a true statement. Ex. B at 12.
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`
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`Applicant alleges that Opposer’s statement was false because “the goods sold under the
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`mark HAMPTON SUN have a strong connection to the Hamptons,2 New York…” D.E. 14 at ¶
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`14. All of Applicant’s ostensible factual support for this allegation is found in paragraphs 17-26
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`of the Counterclaim. Every purported fact that Applicant lists in paragraphs 17-26 to
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`purportedly demonstrate that Opposer’s statement was false has to do with a supposed
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`connection between the Fragrance and Candle Goods that Opposer intended to offer under the
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`HAMPTON SUN Trademark and the Hamptons on eastern Long Island, not any of the three
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`geographic locations the Examining Attorney inquired about in the Office Action. For example,
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`the Counterclaim alleges that Opposer’s co-founder is a native of the Hamptons, and that
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`Opposer hosted a launch party in the Hamptons in 2005. D.E. 14 at ¶¶ 17, 24. While these
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`statements fail to establish a connection between the Fragrance and Candle Goods and eastern
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`
`2 Applicant identifies “the Hamptons” as “a collection of towns and villages on the east end of Long Island, New
`York.” Counterclaim at ¶ 15.
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`
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`5
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`

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`Long Island, the Examining Attorney’s inquiry, however, was not directed to the Hamptons.3
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`None of the listed items in paragraphs 17-26 have any relevance to the question posed by the
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`Examining Attorney in December 2014 or Opposer’s response in June 2015, both of which were
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`concerned with Hampton, New York, Hampton, Connecticut, and Hampton, New Jersey.
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`
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`Thus, Applicant has failed to allege any facts to support the first element of its fraud
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`claim, namely that Opposer made a false representation to the USPTO. Applicant fails to muster
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`any factual support for its Counterclaim allegations, let alone the heightened factual pleadings
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`required by Rule 9(b). For this reason alone, the Counterclaim should be dismissed.
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`II. Applicant Alleges No Facts That Establishes a False Statement.
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`
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`For the Board’s benefit, Opposer will address Applicant’s factual assertions below.
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`While the Examining Attorney did not ask Opposer about a geographical connection to eastern
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`Long Island, none of the purported facts recited by Applicant establish a connection between the
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`mark HAMPTON SUN for the Fragrance and Candle Goods and any geographic location,
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`including eastern Long Island. Thus, even if the Examining Attorney had asked Opposer if the
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`Fragrance and Candle Goods were manufactured, packaged, shipped from, sold in or have any
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`other connection to eastern Long Island, Opposer’s responses would still have been true and
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`correct, and Applicant’s Counterclaim would fail to state a claim.
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`
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`As discussed above, the sole basis for Applicant’s fraud counterclaim is Opposer’s June
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`23, 2015 Office Action response. Thus, the question at issue can only concern Opposer’s
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`statement regarding the lack of any primarily merely geographical relationship between the
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`goods and Hampton, New York, Hampton, Connecticut, or Hampton, New Jersey.
`
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`3 As noted previously, Hampton, New York is geographically distinct from eastern Long Island. The town of
`Hampton, New York is located in Washington County, over 180 miles north of Long Island. See, e.g.,
`http://www.hamptonny.org/ (last visited December 18, 2023)
`
`
`
`6
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`

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`Applicant’s Counterclaim alleging fraud ignores this critical element and instead attempts to
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`plead that the Fragrance and Candle Goods in Reg. No. 5617639 have a relationship to eastern
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`Long Island, which does not relate to any statement made by Opposer in the prosecution of Reg.
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`No. 5617639, and independently justifies the dismissal of Applicant’s Counterclaim.
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`
`
`Paragraphs 17 through 26 contain the entirety of Applicant’s professed support for the
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`Counterclaim alleging fraud are reproduced and addressed below.
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`
`
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`
`
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`17. Salvatore Piazzolla, CEO and co-founder of Opposer, is a native of the
`Hamptons and has resided there since about 1995.
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`18. Grant Wilfrey, vice president and co-founder of Opposer, has resided in the
`Hamptons since the late 1980s.
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`Neither of these two alleged facts, even if taken to be true, supports any connection
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`between the Fragrance and Candle Goods (subject at the time of an ITU application) and any
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`“Hampton” location. First, as noted above, “the Hamptons” as defined by the Applicant are not
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`Hampton, New York, Hampton, Connecticut, or Hampton, New Jersey, so Paragraphs 17
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`and 18 are simply irrelevant to the counterclaim allegations. Further, the proper inquiry is
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`whether the goods have any connection to the geographic area, not the owners. Where the
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`owners of a brand reside has nothing to do with whether or not a geographic area is known for
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`the goods or services at issue. Applicant’s alleged facts in these two paragraphs of the
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`Counterclaim are simply not relevant.
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`
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`In order for a mark to be considered primarily geographically descriptive it must be
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`shown that: (1) the primary significance of the mark is a generally known geographic location;
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`(2) the goods or services originate in the place identified in the mark; and (3) purchasers would
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`be likely to believe that the goods or services originate in the geographic place identified in the
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`
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`7
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`

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`mark). TMEP § 1210.01(a) (November 2023 edition). Whether a company’s co-founders were
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`born in a particular location or have a residence there is not material to any element of the
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`geographic descriptiveness test. The location of the co-founders’ summer home has no bearing
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`on whether the primary significance of Opposer’s mark is a generally known geographic
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`location. Nor is it relevant to whether the goods or services originate from the geographic
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`location. See In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (holding that “the mere fact that
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`applicant sleeps in Montecito” was insufficient to show THE MONTECITO DIET was primarily
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`geographically descriptive). The location of Opposer’s co-founders’ summer home is not
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`something that the purchasing public would be aware of and therefore would not impact the
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`consuming public’s perception of where the Fragrance and Candle Goods originate from. (Again,
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`at the time of the Office Action response in 2015, the application was based on an ITU and there
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`were no sales of the Fragrance and Candle Goods.)
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`
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`Paragraphs 17-18 of the Counterclaim, even if taken as true, do not provide any factual
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`support that would make Applicant’s allegations that Opposer materially misled the USPTO
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`plausible.
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`
`
`
`
`
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`19. Mr. Piazzolla and Mr. Wilfrey, together, conceived and developed the
`HAMPTON SUN mark, brand, and business concept in the Hamptons.
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`Again, “the Hamptons” as used by the Applicant is not Hampton, New York, Hampton,
`
`Connecticut, or Hampton, New Jersey. Thus, Paragraph 19 is irrelevant to whether Opposer’s
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`June 23, 2015 statement to the USPTO was false.
`
`
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`Moreover, assuming Paragraph 19 is true, where the co-founders of Opposer conceived
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`of a business idea is not relevant to whether the Fragrance and Candle Goods are manufactured,
`
`
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`8
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`packaged, shipped from, sold in or have any other connection to eastern Long Island. Paragraph
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`19 of the Counterclaim does not provide any factual support, even if taken as true, that would
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`make the Counterclaim allegations plausible. Furthermore, Paragraph 19 does not establish a
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`connection between the Fragrance and Candle Goods with any of the locations noted by the
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`Examining Attorney, or any other geographic location, including eastern Long Island.
`
`
`
`20. Mr. Wilfrey has testified before the Board in previously proceedings that “The
`HAMPTON SUN trademark was selected to evoke the image of a luxury product
`line made for the sophisticated lifestyle, such as that of the beautiful beaches of
`eastern Long Island, New York, in the minds of consumers.” See Opposition No.
`91222391 and Cancellation No. 92062549.
`
`21. Opposer’s goods sold under the HAMPTON SUN mark are advertised as
`intending to evoke the Hamptons.
`
`22. Opposer’s “Privet Bloom Room Spray” sold under the HAMPTON SUN mark
`is advertised as follows: “Simply spritz wherever, whenever, and be instantly
`transported to a quintessential summer day in the Hamptons.” A true and correct
`copy of Opposer’s webpage for Privet Bloom Room Spray is attached hereto as
`Exhibit D.
`
`23. Opposer’s “Privet Bloom Candle” sold under the HAMPTON SUN mark is
`advertised as follows: “Experience the clean, delicate notes of White Hyacinth,
`Lily of the Valley, Jasmine, and Sea Spray subtly drift about your home, instantly
`transporting you to a quintessential summer day in the Hamptons.” A true and
`correct copy of Opposer’s webpage for Privet Bloom Candle is attached hereto as
`Exhibit E.
`
`
`
`
`
`Paragraphs 20-23 are concerned with a supposed connection with “the Hamptons,” and as
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`repeatedly noted above, “the Hamptons” as used by the Applicant was not one of the geographic
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`locations the Examining Attorney asked Opposer about in December 2014, and therefore
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`Paragraphs 20-23 cannot support Applicant’s fraud allegations. Moreover, the facts alleged in
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`these paragraphs do not suggest a connection between the Fragrance and Candle Goods and any
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`geographic location, including Long Island.
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`
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`9
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`
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`Mr. Wilfrey’s testimony that the mark HAMPTON SUN was intended to be evocative or
`
`suggestive does not provide any factual support that would make the Counterclaim allegations
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`plausible. Similarly, suggestive or evocative advertisements for HAMPTON SUN goods are
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`immaterial to the Counterclaim allegations. While Opposer maintains that the mark HAMPTON
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`SUN is a strong, arbitrary mark when used in connection with Opposer’s goods, at the worst, Mr.
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`Wilfrey’s testimony may indicate that the mark is suggestive. Suggestive trademarks are those
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`that, when applied to the goods at issue, require imagination, thought, or perception to reach a
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`conclusion as to the nature of those goods. In re N.C. Lottery, 866 F.3d1363, 1367, 123 USPQ2d
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`1707, 1709 (Fed. Cir. 2017) (citing DuoProSS Meditech Corp. v. Inviro Med.Devices, Ltd., 695
`
`F.3d 1247, 1251-52, 13 USPQ2d 1753, 1755 (Fed. Cir. 2012)). Suggestive marks, like fanciful
`
`and arbitrary marks, are valid and registrable on the Principle Register without proof of
`
`secondary meaning. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340,
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`71 USPQ2d 1173, 1180 (Fed. Cir. 2004). The fact that the mark HAMPTON SUN may be seen
`
`by some as being suggestive has no relevance to whether the Fragrance and Candle Goods were
`
`manufactured, packaged, shipped from, sold in or have any other connection to any geographic
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`location.
`
`
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`Moreover, the advertisements referenced in Paragraphs 22 and 23 of the Counterclaim
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`are recent. Contemporary advertisements from November 2023 do not provide factual support
`
`for the allegation that Opposer’s statements to the USPTO in June of 2015 were materially
`
`misleading.
`
`
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`Thus, Applicant can provide no factual support, even if taken as true, that would make its
`
`Counterclaim allegations plausible.
`
`
`
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`10
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`24. In 2005, a launch party for Opposer and the HAMPTON SUN brand was held
`in the Hamptons, which Mr. Piazzolla and Mr. Wilfrey both attended.
`
`
`
`
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`Once again, Applicant’s allegations purport to show a connection between the Fragrance
`
`and Candle Goods and “the Hamptons,” which was not a geographic location referenced in the
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`Examining Attorney’s Office Action or Opposer’s response to the same. Additionally, the
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`launch party referenced by the Applicant was not for the Fragrance and Candle Goods at issue,
`
`which were not launched until 2018. Opposer held a launch party for the HAMPTON SUN
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`tanning and sunscreen preparations in 2005, nearly a decade prior to the filing date of the
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`application to register HAMPTON SUN for the Fragrance and Candle Goods, and the launch
`
`party is irrelevant to whether the Fragrance and Candle Goods originate from the three cities
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`referenced by the Examining Attorney in 2014.
`
`
`
`25. Opposer’s products sold under the HAMPTON SUN mark were first sold at
`specialty boutiques in the Hamptons.
`
`26. Opposer’s products sold under the HAMPTON SUN mark can be found at
`retail stores throughout the Hamptons, including at Nieman Marcus, White’s
`Apothecary, Hildreths, Second Nature, Gurney’s Montauk, and many more.
`
`
`
`
`
`As a preliminary statement, once again Applicant’s statements relate to “the Hamptons,”
`
`as defined by Applicant, which is irrelevant to the fraud counterclaim as it was not one of the
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`three locations that were at issue in the December 23, 2014 Office Action which is the sole basis
`
`for Applicant’s fraud Counterclaim. Furthermore, Applicant’s statements in Paragraphs 25 and
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`26 are intentionally misleading. The sale of Opposer’s tanning and sunscreen preparations is
`
`unrelated to fragrances and candles. The sale of Opposer's tanning and sunscreen preparations
`
`alone would not make any term geographically descriptive. It stretches all credibility to suggest,
`
`
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`11
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`as Applicant does, that if a product is merely sold in any geographical location then that same
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`location becomes known as a geographical indicator for goods. If such was the case, the sale of
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`groceries in New York would make NEW YORK merely descriptive for groceries. The test is
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`whether there is an association between the goods and the place such that purchasers would be
`
`likely to believe that the goods originate in the geographic location. See Spiritline Cruises LL v.
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`Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *8 (TTAB 2020). An area must be commonly
`
`known as the geographical origin of the relevant goods to be mere geographically descriptive,
`
`such as Swiss cheese is known to be from Switzerland and Paris is known for high fashion. See
`
`In re Miracle Tuesday, LLC, 695 F.3d 1339, 1344 104 USPQ2d 1330, 1333 (Fed. Cir. 2012)
`
`(holding that JPK PARIS 75 and design were primarily geographically misdescriptive of fashion
`
`accessories when Paris is famous for such products). Opposer submits that there is no area in
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`the entire world that is known for fragrances and candles, let alone the Hamptons.
`
`
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`Further, Applicant is purposefully confusing the goods for two different marks for
`
`HAMPTON SUN. The mark that is the subject of the Counterclaim is Reg. No. 5617639 for the
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`Fragrance and Candle Goods. Opposer also owns Reg, No. 3851704 for “tanning and sunscreen
`
`preparations; sun block; sun care lotion; sun cream; sun tan gel; sun tan lotion; suntan oil;
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`cosmetics and skin care products, namely, cream for face, after sun moisture, after sun body
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`cooling spray, sunless tanning gel, after sun cream for face and body, face and body
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`moisturizers, skin lotion, and after sun lotion; body care products, namely, body cream, and
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`body lotion; cosmetic preparations for body care; facial cream; facial lotion; and fragrances for
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`personal use” in Class 3, which is incontestable. Applicant is confusing the two marks, alleging
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`that Opposer misled the USPTO regarding the origin of the Fragrance and Candle Goods by
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`referencing sales of the creams and lotions in Class 3 in Reg. No. 3851704, which as stated
`
`
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`12
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`above is irrelevant. Further, the Applicant's allege factual support does not involve the three
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`cities cited by the Examining Attorney in 2014, and therefore, fails to allege any false statement
`
`at all.
`
`III. Absent Any Evidence of False Statement, Applicant Cannot Establish the
`Other Elements of Fraud
`
`
`
`Since Applicant fails to establish Opposer made any false statement to the USPTO,
`
`Applicant cannot not establish there was a false statement the was material in the determination
`
`of registrability of the HAMPTON SUN trademark for the Fragrance and Candle Goods.
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`Without establishing the existence of a false statement, it logically follows that Applicant cannot
`
`establish Opposer knowingly made a materially false statement or had any intent to deceive the
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`USPTO.
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`Establishing a false statement is the first and essential element for pleading fraud.
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`Applicant's pleadings, when construed as true, do not demonstrate the existence of a false
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`statement made by the Opposer at any time.
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`CONCLUSION
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`
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`The only basis for Applicant’s Counterclaim is the statements Opposer made on June 23,
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`2015 in response to the Examining Attorney’s Office Action, namely, whether or not there was a
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`connection between Opposer’s goods and services and the geographic locations of Hampton,
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`New York, Hampton, Connecticut, and Hampton, New Jersey. Opposer responded truthfully
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`and correctly, and Applicant has not plead any facts to show that Opposer’s response was not
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`accurate. All of the alleged facts in Applicant’s Counterclaim attempt to create a connection
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`between Opposer’s goods and eastern Long Island, not the three cities the Examining Attorney
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`inquired about. Thus, Applicant’s references to eastern Long Island and “the Hamptons” is a red
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`herring that has no relevance to the Examiner’s question in 2014 or Opposer’s answer in 2015.
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`13
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`

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`None of Applicant’s statements in support of its Counterclaim have anything to do with the three
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`locations cited by the Examining Attorney and moreover, fails to establish any primarily
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`geographical significance of Opposer's HAMPTON SUN trademark for the Fragrance and
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`Candle Goods.
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`
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`In order to state a claim for fraud, Applicant must plead sufficient facts to make
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`plausible the allegation that Opposer made a (1) false, (2) material representation of fact in
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`connection with the underlying application, (3) with the intent to deceive the USPTO. Applicant
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`cannot plead any facts that would even show a misrepresentation on Opposer’s part, because
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`none of Applicant’s factual support has anything to do with the three cities that were the subject
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`of the Office Action and Opposer’s statement to the USPTO. Furthermore, Applicant’s
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`conclusory pleading is not sufficient to show that the statement was made with the intent to
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`deceive, as the Counterclaim utterly fails to identify a false statement. Applicant has failed to
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`allege any factual support, even if taken as true, that would make its Counterclaim allegations
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`plausible, and thus fails to reach the heightened pleading standard for fraud required by Rule
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`9(b). The Counterclaim should be dismissed with prejudice.
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`Dated: December 28, 2023
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`14
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`Respectfully submitted,
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`By:
`
`/s/ Stephen M. Ankrom
`
`Robert L. Powley
`James M. Gibson
`Stephen M. Ankrom
`Rylan S. Brook
`POWLEY & GIBSON, P.C.
`60 Hudson Street
`Suite 2203
`New York, NY 10013
`
`

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`Tel: (212) 226-5054
`Fax: (212) 226-5085
`
`
`Attorneys for Opposer
`S&G Hampton Sun, LLC
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`15
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`

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`
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`CERTIFICATE OF SERVICE
`
` I
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` hereby certify that a true and complete copy of MOTION TO DISMISS COUNTERCLAIM
`will be served on counsel for Applicant by forwarding said copy on December 28, 2023, via
`email, to Applicant’s attorneys of record:
`
`
`Eric Huang
`Sarah Cohen
`G. Mathew Lombard
`LOMBARD & GELIEBTER LLP
`scohen@lombardip.com, ehuang@lombardip.com, mlombard@lgtrademark.com,
`mail@lgtrademark.com
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`s/Stephen M. Ankrom
`Stephen M. Ankrom
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`16
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`

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`EXHIBIT A
`EXHIBIT A
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`

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`To:
`
`S&G Hampton Sun, LLC (trademarks@powleygibson.com)
`
`Subject:
`
`U.S. TRADEMARK APPLICATION NO. 86386811 - HAMPTON SUN - 162.3(US-3)
`
`Sent:
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`12/23/2014 5:56:45 PM
`
`Sent As:
`
`ECOM113@USPTO.GOV
`
`Attachments:
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`Attachment - 7
`Attachment - 8
`Attachment - 9
`Attachment - 10
`Attachment - 11
`Attachment - 12
`Attachment - 13
`Attachment - 14
`Attachment - 15
`Attachment - 16
`Attachment - 17
`Attachment - 18
`Attachment - 19
`Attachment - 20
`Attachment - 21
`Attachment - 22
`Attachment - 23
`
` 
`
` 
`
` 
` 
`
` 
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO.  86386811
` 
`MARK: HAMPTON SUN
` 
`
`CORRESPONDENT ADDRESS:
`       ROBERT L. POWLEY
`       POWLEY & GIBSON, P.C.
`       304 HUDSON ST STE 202
`       NEW YORK, NY 10013-1015
`       
`
`APPLICANT: S&G Hampton Sun, LLC
` 
`CORRESPONDENT’S REFERENCE/DOCKET NO :  
`       162.3(US-3)
`CORRESPONDENT E-MAIL ADDRESS: 
`       trademarks@powleygibson.com
`
` 
`        
`
`*86386811*
`
` 
`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response forms.jsp
` 
`VIEW YOUR APPLICATION FILE
` 
` 
` 
`
` 
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`
`

`

`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
` 
`ISSUE/MAILING DATE: 12/23/2014
` 
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
` 
`SUMMARY OF ISSUES
`
` 
`Applicant must address:
` 
`
`Section 2(d) Partial Refusal – Likelihood of Confusion;
`Identification of Goods Amendment Required;
`Clarification of the Number of Classes for Which Registration Is Sought Required;
`Disclaimer Required; and
`Additional Information Required.
`
` 
`
` 
`
`SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
`
`THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
`
` 
`Registration of the applied-for mark is refused as to "providing nutrition counseling and health information" because of a likelihood of confusion
`with the marks in U.S. Registration Nos. 4392493, 4559686, 4559683, and 4559685 (attached).  Trademark Act Section 2(d), 15 U.S.C.
`§1052(d); see TMEP §§1207.01 et seq. 
` 
`The applicant's mark is HAMPTON SUN for, among other things, providing nutrition counseling and health information, and the registrant's
`marks, owned by the same entity, are HAMPTON HEALTH, LTD (U.S. Registration No. 4392493) for medical healthcare services, HAMPTON
`HEALTH, LTD (U.S. Registration No. 4559686) for counseling services in the fields of health, nutrition and lifestyle wellness, HAMPTON AT
`WORK (U.S. Registration No. 4559683) for medical services, and HAMPTON AT HOME (U.S. Registration No. 4559685) for counseling
`services in the fields of health nutrition and lifestyle wellness.
` 
`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer
`would be confused, mistaken, or deceived as to the source of the services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A
`determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637
`F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc.,