`
`
`
`THIS ORDER IS NOT A
`PRECEDENT OF THE
`TTAB
`
`LTS
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`May 15, 2024
`
`Opposition No. 91276760 (Parent)
`Opposition No. 91285997
`
`S&G Hampton Sun, LLC
`
`v.
`
`Hamptons Aromatherapy, Inc.
`
`
`
`Before Zervas, Pologeorgis, and English,
`Administrative Trademark Judges.
`
`
`By the Board:
`
`
`These consolidated proceedings now come up on Opposer S&G Hampton Sun,
`
`LLC’s motion,
`
`filed February 26, 2024, to dismiss Applicant Hamptons
`
`Aromatherapy, Inc.’s amended counterclaims in Opposition No. 91285997 (“the ’997
`
`Opposition”).1 ’997 Opposition, 21 TTABVUE.2 Opposer’s motion to dismiss is fully
`
`briefed.
`
`
`1 Opposition No. 91276760 (“the ’760 Opposition”) and the ’997 Opposition were consolidated
`by Board order dated March 20, 2024. See ’760 Opposition, 34 TTABVUE.
`
`2 Citations to the record and briefs in this opinion are to the publicly available documents on
`TTABVUE, the Board’s electronic docketing system. The number preceding “TTABVUE”
`corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the
`page number(s) of that particular docket entry, if applicable. The Board expects the parties
`to cite to the record using TTABVUE throughout this proceeding and particularly when
`referring to the evidentiary record in final briefs.
`
`
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`We have carefully considered all of the parties’ arguments, presume the parties’
`
`familiarity with the bases for their filings, and do not recount the facts or arguments
`
`here except as necessary to explain this decision. See Guess? IP Holder LP v.
`
`Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
`
`I.
`
`Background
`
`On June 14, 2022, Opposer filed a notice of opposition in the ’760 Opposition
`
`against Applicant’s
`
`application Serial No.
`
`90835433
`
`for
`
`the mark
`
` for the following goods:
`
`• “Lotions for cosmetic purposes; Lotions for face and body care; After-sun
`lotions; Age retardant lotion; Aromatic preparations, namely, lotions using
`ingredients from the sea; Bath lotion; Bathing lotions; Beauty lotions; Body
`lotion; Body mask lotion; Cosmetic preparations, namely, firming lotions;
`Cosmetics in the form of milks, lotions and emulsions; Face and body
`lotions; Face milk and lotions; Facial lotion; Hand lotions; Massage lotions;
`Moisturizing body lotions; Non-medicated skin care creams and lotions;
`Non-medicated skin care preparations, namely, creams, lotions, gels,
`toners, cleaners and peels; Non-medicated skin care preparations, namely,
`skin creams using ingredients from the sea; Non-medicated stimulating
`lotions for the skin; Scented body lotions and creams; Skin lotion; Skin
`lotions; Skin and body topical lotions, creams and oils for cosmetic use; Skin
`cleansing lotion; Styling lotions; Sun care lotions; Toning lotion, for the face,
`body and hands; facial scrubs; cosmetic masks; cosmetic soaps; lip balms;
`salves in the nature of non-medicated herbal body care products; hydrosol
`in the nature of toilet water; bath and body products in the nature of
`cosmetic body care preparations that include clay, salt and seaweed,
`namely, body scrubs, non-fragranced shower gels” in International Class 3;
`
`• “Antibacterial hand soaps; Medicated lip balms; Anti-inflammatory salves”
`in International Class 5;
`
`• “Bath products, namely, body sponges” in International Class 21; and
`
`
`
`2
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`• “Sleep masks” in International Class 25.3
`
`’760 Opposition, 1 TTABVUE.
`
`In its notice of opposition in the ’760 Opposition, Opposer alleges prior use and
`
`registration of the following marks (collectively, “Opposer’s Marks”):
`
`• HAMPTON SUN, in standard characters, for “tanning and sunscreen
`preparations; sun block; sun care lotion; sun cream; sun tan gel; sun tan
`lotion; suntan oil; cosmetics and skin care products, namely, cream for face,
`after sun moisture, after sun body cooling spray, sunless tanning gel, after
`sun cream for face and body, face and body moisturizers, skin lotion, and
`after sun lotion; body care products, namely, body cream, and body lotion;
`cosmetic preparations for body care; facial cream; facial lotion; fragrances
`for personal use” in International Class 3;4 and
`
`• HAMPTON SUN, in standard characters, for “room fragrances; and air
`fragrancing preparations; passive scent diffusers, namely, air diffusers
`comprised of a wick and sold with oil in a container used to emit scent by
`diffusion into the air” in International Class 3 and “candles; scented
`candles” in International Class 4.5
`
`’760 Opposition, 1 TTABVUE 6-8, ¶¶ 5-11. As grounds for opposition, Opposer pleads
`
`a claim of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
`
`§ 1052(d). Id. at 8-9, ¶¶ 12-17.
`
`On July 8, 2022, Applicant filed an answer, denying the salient allegations of the
`
`notice of opposition and asserting several purported affirmative defenses. ’760
`
`Opposition, 5 TTABVUE.
`
`
`3 Filed July 19, 2021, based upon Applicant’s allegation of a bona fide intention to use the
`mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
`“HAMPTONS” is disclaimed.
`
`4 Registration No. 3851704; issued September 21, 2010; renewed.
`
`5 Registration No. 5617639; issued November 27, 2018.
`
`
`
`3
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`Over a year later, on July 11, 2023, Opposer filed the ’997 Opposition against
`
`Applicant’s
`
`application
`
`Serial
`
`No.
`
`97379210
`
`for
`
`the
`
`mark
`
` for the following goods:
`
`• “Lotions for cosmetic purposes; Lotions for face and body care; After-sun
`lotions; Age retardant lotion; Aromatic preparations, namely, lotions using
`ingredients from the sea; Bath lotion; Bathing lotions; Beauty lotions; Body
`lotion; Body mask lotion; Cosmetic preparations, namely, firming lotions;
`Cosmetics in the form of milks, lotions and emulsions; Face and body
`lotions; Face milk and lotions; Facial lotion; Hand lotions; Massage lotions;
`Moisturizing body lotions; Non-medicated skin care creams and lotions;
`Non-medicated skin care preparations, namely, creams, lotions, gels,
`toners, cleaners and peels; Non-medicated skin care preparations, namely,
`skin creams using ingredients from the sea; Non-medicated stimulating
`lotions for the skin; Scented body lotions and creams; Skin lotion; Skin
`lotions; Skin and body topical lotions, creams and oils for cosmetic use; Skin
`cleansing lotion; Styling lotions; Sun care lotions; Toning lotion, for the face,
`body and hands; facial scrubs; cosmetic masks; cosmetic soaps; non
`medicated lip balms; salves in the nature of non-medicated herbal body care
`products; hydrosol in the nature of toilet water; bath and body products in
`the nature of cosmetic body care preparations that include clay, salt and
`seaweed, namely, body scrubs, non-fragranced shower gels”
`in
`International Class 3.6
`
`’997 Opposition, 1 TTABVUE. Opposer alleges prior use and registration of Opposer’s
`
`Marks (i.e., the same marks pleaded by Opposer in the ’760 Opposition). Id. at 7-8,
`
`¶¶ 7-12. As grounds for opposition, Opposer pleads a claim of likelihood of confusion
`
`under Section 2(d) of the Trademark Act. Id. at 9-10, ¶¶ 13-20.
`
`
`6 Filed April 25, 2022, based upon Applicant’s allegation of use the mark in commerce under
`Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging January 31, 2022 as the date
`of first use and date of first use in commerce. “HAMPTONS” and “AROMATHERAPY” are
`disclaimed.
`
`
`
`4
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`On November 21, 2023, Applicant filed an answer and counterclaim in the ’997
`
`Opposition. ’997 Opposition, 14 TTABVUE. Applicant denied the salient allegations
`
`of the notice of opposition, asserted several purported affirmative defenses, and
`
`counterclaimed to cancel Opposer’s pleaded registration, Registration No. 5617639,
`
`on the basis of fraud. Id. On December 28, 2023, Opposer filed a motion to dismiss
`
`Applicant’s counterclaim for failure to state a claim for relief under Fed. R. Civ. P.
`
`12(b)(6). ’997 Opposition, 17 TTABVUE.
`
`On January 18, 2024, Applicant filed an amended answer and counterclaim in the
`
`’997 Opposition as of right pursuant to Fed. R. Civ. P. 15(a)(1). ’997 Opposition, 19
`
`TTABVUE. In its amended answer and counterclaim, Applicant again denies the
`
`salient allegations of the notice of opposition (id. at 3-6), asserts several purported
`
`affirmative defenses (id. at 6-8), and counterclaims to cancel Opposer’s pleaded:
`
`(1) Registration No. 5617639, on the grounds of fraud (first counterclaim) (id. 12-21)
`
`and that the mark subject to the registration is primarily geographically descriptive
`
`(second counterclaim) (id. at 21-22); and (2) Registration Nos. 3851704 and 5617639,
`
`on the basis that the marks subject to the registrations are geographically deceptive
`
`(third counterclaim) (id. at 22-24).
`
`On January 25, 2024, the Board issued an order in the ’997 Opposition accepting
`
`Applicant’s amended answer and counterclaim as Applicant’s operative pleading in
`
`the ’997 Opposition, mooting Opposer’s motion to dismiss the counterclaim set forth
`
`in Applicant’s original answer and counterclaim, and set a deadline of February 26,
`
`
`
`5
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`2024 for Opposer to file an answer to the amended counterclaim. ’997 Opposition, 20
`
`TTABVUE.
`
`On February 26, 2024, Opposer filed a motion to dismiss Applicant’s amended
`
`counterclaims in the ’997 Opposition on the following grounds: (1) Applicant’s
`
`counterclaims were compulsory counterclaims in the ’760 Opposition that Applicant
`
`failed to timely plead (’997 Opposition, 21 TTABVUE 4-7); (2) Applicant’s second
`
`counterclaim, alleging that the mark HAMPTON SUN subject to Opposer’s
`
`Registration No. 5617639 is primarily geographically descriptive, and third
`
`counterclaim, alleging that the mark HAMPTON SUN subject to Opposer’s
`
`Registration No. 5617639 and the mark HAMPTON SUN subject to Registration
`
`Number 3851704 are geographically deceptive, are time-barred because, when
`
`Applicant asserted its second and third counterclaims, the involved registrations had
`
`been valid and subsisting for more than five years (id. at 7-9); and (3) Applicant has
`
`not sufficiently stated a claim upon which relief may be granted for any of its
`
`counterclaims (id. at 9-24).
`
`II. Opposer’s Motion to Dismiss Applicant’s Counterclaims
`
`We first consider Opposer’s motion to dismiss Applicant’s counterclaims on the
`
`basis that Applicant’s counterclaims were compulsory counterclaims in the ’760
`
`Opposition.
`
`Counterclaims for cancellation of pleaded registrations in Board opposition
`
`proceedings are governed by Trademark Rule 2.106(b)(3)(i), 37 C.F.R. § 2.106(b)(3)(i),
`
`which provides as follows:
`
`
`
`6
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`A defense attacking the validity of any one or more of the registrations
`pleaded in the opposition shall be a compulsory counterclaim if grounds
`for such counterclaim exist at the time when the answer is filed. If
`grounds for a counterclaim are known to the applicant when the answer
`to the opposition is filed, the counterclaim shall be pleaded with or as
`part of the answer. If grounds for a counterclaim are learned during the
`course of the opposition proceeding, the counterclaim shall be pleaded
`promptly after the grounds therefor are learned.
`
`See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
`
`§ 313.04 (2023).
`
`“The use of ‘shall’ in the rule makes the counterclaim compulsory in the proceeding
`
`in which the subject registration has been pleaded.” Jive Software, Inc. v. Jive
`
`Commc’n, Inc., 125 USPQ2d 1175, 1177 (TTAB 2017). Accordingly, a “defendant may
`
`not ‘reserve’ a counterclaim for a new proceeding … even if the defendant learns of
`
`the grounds after its answer has been filed.” Id. See also Vitaline Corp. v. Gen. Mills
`
`Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir.1989) (Trademark Rule requiring
`
`the pleading of compulsory counterclaims was “clearly violated” by an assertion of a
`
`claim not as a counterclaim in the original proceeding but as a “purportedly new claim
`
`in a separate proceeding”); Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77
`
`USPQ2d 1152, 1154 (TTAB 2005) (“To be timely, a [compulsory] counterclaim must
`
`be brought as part of defendant’s answer or promptly after the grounds therefore are
`
`learned.”).
`
`Applicant seeks to cancel Opposer’s pleaded registration, Registration No.
`
`5617639, on the grounds of fraud and that the mark subject to the registration is
`
`primarily geographically descriptive, and to cancel Opposer’s pleaded registrations,
`
`Registration Nos. 3851704 and 5617639, on the basis that the marks subject to the
`
`
`
`7
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`registrations are geographically deceptive. ’997 Opposition, 19 TTABVUE 9-24.
`
`Opposer’s pleaded registrations subject to Applicant’s counterclaims are the same
`
`registrations that Opposer pleads in the ’760 Opposition. Compare ’760 Opposition, 1
`
`TTABVUE and ’997 Opposition, 1 TTABVUE.
`
`Upon review of the counterclaims pleaded in the ’997 Opposition, we conclude that
`
`the counterclaims were compulsory counterclaims in the ’760 Opposition within the
`
`meaning of Trademark Rule 2.106(b)(3)(i). Accordingly, in assessing Opposer’s
`
`motion to dismiss, we must consider: (i) whether the grounds for the counterclaim
`
`were known to Applicant when it filed its answer in the ’760 Opposition, and (ii) if
`
`not, whether Applicant acted “promptly” in pleading its counterclaims after it learned
`
`of the grounds for such claim. See Turbo Sportswear, 77 USPQ2d at 1154. Applicant
`
`has the burden of demonstrating that it has promptly asserted the counterclaims. Cf.
`
`Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1541 (TTAB 2001) (denying
`
`motion for leave to amend notice of opposition to add dilution claim where such claim
`
`became available as ground for opposition nine months before the opposition was
`
`filed, but opposer did not raise the claim until eight months after filing the opposition,
`
`and opposer failed to explain the reason for its delay).
`
`In response to Opposer’s motion to dismiss, Applicant argues, inter alia, that:
`
`(1) “Applicant did not learn of the facts supporting its counterclaims until it
`
`undertook preparations for responding to the Notice of Opposition served in the [’997
`
`Opposition]” (’997 Opposition, 23 TTABVUE 5); (2) Opposer produced materials in
`
`discovery in the ’760 Opposition that contradicted the asserted counterclaims in the
`
`
`
`8
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`’997 Opposition (id. at 6-8); (3) Applicant learned of the grounds for its counterclaims
`
`“[o]nly after Applicant conducted an independent investigation into publicly
`
`available materials not produced in discovery in the [’760 Opposition]” (id. at 6)
`
`(emphasis in original); (4) Applicant’s affirmative defenses in the ’760 Opposition
`
`have no relation to its asserted counterclaims in the ’997 Opposition (id. at 6-7);
`
`(5) the existence of the evidence supporting Applicant’s counterclaims “untethered to
`
`Applicant’s knowledge of its existence, is not the measure by which a counterclaim
`
`is determined timely” (id. at 7) (emphasis in original); and (6) through Applicant’s
`
`independent investigation, Applicant discovered social media pages and marketing
`
`materials that supported its pleaded counterclaims in the ’997 Opposition (id. at 8).
`
`Here, the factual allegations supporting Applicant’s counterclaims in the ’997
`
`Opposition existed at the time Applicant filed its answer in the ’760 Opposition.
`
`Applicant filed its answer in the ’760 Opposition on July 8, 2022. ’760 Opposition,
`
`5 TTABVUE. Applicant’s counterclaims for fraud, geographic descriptiveness, and
`
`geographic deceptiveness are based on the following factual allegations: (1) during
`
`prosecution of the underlying application to Registration No. 5617639, the Examining
`
`Attorney issued an Office Action on December 23, 2014, whereby the Examining
`
`Attorney requested additional information about the geographic significance of the
`
`involved mark (’997 Opposition, 19 TTABVUE 12-13, ¶ 10); (2) Opposer allegedly
`
`made a false, material misrepresentation in its response to the Office Action on June
`
`23, 2015 by stating that “[i]ts goods and services have no connection to Hampton,
`
`New York, Hampton, Connecticut or Hampton, New Jersey” (id. at 13, ¶ 11; see also
`
`
`
`9
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`id. at 13-21, ¶¶ 12-21 and 51-58); (3) the Hamptons are a well-known geographical
`
`area, consisting of a collection of towns and villages on the east end of Long Island,
`
`New York (id. at 14-16, ¶¶ 16-17, 22-23); (4) Opposer’s co-founders reside in the
`
`Hamptons (and have resided in the Hamptons for many years) (id. at 16, ¶¶ 24-25);
`
`(5) Opposer’s marketing materials and social media pages inform consumers of both
`
`Opposer’s connection and their products’ connection to the Hamptons (id. at 16-20,
`
`¶¶ 26-50); (6) the primary significance of the mark subject to Registration No.
`
`5617639 is a place known generally to the public, namely, the geographic location of
`
`the Hamptons (id. at 22-23, ¶¶ 61 and 68); and (7) purchasers of Opposer’s goods
`
`bearing the HAMPTON SUN mark are likely to believe that the goods originate in
`
`the Hamptons or otherwise have a connection to the Hamptons (id. at 22-23, ¶¶ 64
`
`and 72).
`
`Although Applicant claims that Opposer produced materials during discovery in
`
`the ’760 Opposition that “contradict” the counterclaims in the ’997 Opposition,
`
`Applicant does not claim that it learned of the bases for its counterclaims through
`
`discovery in the ’760 Opposition. To the contrary, Applicant acknowledges that it was
`
`through its “independent investigation into publicly available materials” while
`
`preparing its answer to the notice of opposition in the ’997 Opposition that it became
`
`“aware of facts to support its counterclaims.” ’997 Opposition, 23 TTABVUE 6.
`
`We find that the facts underlying the counterclaims were, through reasonable
`
`effort, knowable when Applicant filed its answer in the ’760 Opposition (i.e., almost
`
`two years ago). Applicant does not sufficiently explain why it could not have asserted
`
`
`
`10
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`its counterclaims in the ’760 Opposition, or filed a motion for leave to amend its
`
`answer to add its counterclaims in the ’760 Opposition, at least during the more than
`
`10 months of active litigation after filing the answer in the ’760 Opposition on July 8,
`
`2022 and before the parties filed a series of motions to suspend for settlement starting
`
`in July 2023. ’760 Opposition, 5, 17, 19, 21 TTABVUE. Cf. ChaCha Search Inc. v.
`
`Grape Tech. Grp. Inc., 105 USPQ2d 1298, 1300 (TTAB 2012) (recognizing that “[a]
`
`long delay in filing motion for leave to amend may render proposed amendment
`
`untimely); Media Online Inc. v. El Clasificado, Inc., 88 USPQ2d 1285, 1286-87 (TTAB
`
`2008) (petitioner unduly delayed seeking leave to amend to plead descriptiveness and
`
`fraud claims; “Petitioner appears to have consulted dictionary definitions and
`
`accessed respondent’s web site, actions which could quite easily have been
`
`undertaken prior to filing of the petition to cancel, or by any prompt investigation
`
`conducted immediately thereafter”).
`
`Inasmuch as Applicant’s counterclaims were compulsory in the ’760 Opposition,
`
`and were not timely asserted in that proceeding, they are waived. Opposer’s motion
`
`to dismiss is granted, and Applicant’s counterclaims in the ’997 Opposition are
`
`dismissed with prejudice.7
`
`III. Sua Sponte Review of Pleadings
`
`In the interest of efficiency, the Board has reviewed the sufficiency of the operative
`
`pleadings in the ’760 and ’997 Oppositions. NSM Res. Corp. v. Microsoft Corp., 113
`
`
`7 In light of this finding, we do not address Opposer’s contention that Applicant’s second and
`third counterclaims are time-barred (’997 Opposition, 21 TTABVUE 7-9) or that Applicant
`has failed to state a claim upon which relief may be granted (id. at 9-24).
`
`
`
`11
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`USPQ2d 1029, 1039 n.19 (TTAB 2014) (Board may sua sponte dismiss any
`
`insufficiently pleaded pleading).
`
`A.
`
`Opposer’s Notices of Opposition
`
`1.
`
`Opposer’s Entitlement to a Statutory Cause of Action
`
`In both the ’760 and ’997 Oppositions, Opposer alleges, inter alia, prior use and
`
`registration of Opposer’s Marks, that Opposer will be damaged by registration of the
`
`involved applications, and that the marks of the parties are similar and confusion is
`
`the likely result. ’760 Opposition, 1 TTABVUE 6-9, ¶¶ 5-17; ’997 Opposition, 1
`
`TTABVUE 7-10, ¶¶ 7-20. Opposer therefore has sufficiently pleaded its entitlement
`
`to a statutory cause of action in the ’760 and ’997 Oppositions. See Barbara’s Bakery
`
`Inc. v. Landesman, 82 USPQ2d 1283, 1285 (TTAB 2007) (plausible claim of priority
`
`and likelihood of confusion sufficient to plead standing).
`
`2.
`
`Likelihood of Confusion
`
`To allege a valid claim of likelihood of confusion under Section 2(d) of the
`
`Trademark Act, Opposer need only allege that it has valid proprietary rights that are
`
`prior to those of Applicant, or that it owns a registration which Applicant has not
`
`counterclaimed to cancel, and that Applicant’s mark so resembles Opposer’s mark as
`
`to be likely to cause confusion. See 15 U.S.C. § 1052(d); Nike, Inc. v. Palm Beach
`
`Crossfit Inc., 116 USPQ2d 1025, 1030 (TTAB 2015). To plead a sufficient claim under
`
`Section 2(d) of the Trademark Act, only a general allegation of likelihood of confusion
`
`is required. See The Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1639 n.21
`
`
`
`12
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`(TTAB 2007) (“Opposer is not required to specifically plead every factual component
`
`of a likelihood of confusion claim.”).
`
`We find that Opposer has sufficiently pleaded a claim for likelihood of confusion
`
`in that it alleges that it has priority in Opposer’s Marks (based on its registrations of
`
`Opposer’s Marks and prior use of Opposer’s Marks) (’760 Opposition, 1 TTABVUE 6-
`
`8, ¶¶ 5-12; ’997 Opposition, 1 TTABVUE 7-9, ¶¶ 7-16); and Applicant’s mark so
`
`closely resembles Opposer’s Marks that consumers are likely to be confused as to the
`
`source of origin of Applicant’s goods or the affiliation between Opposer and Applicant
`
`(’760 Opposition, 1 TTABVUE 8-9, ¶¶ 13-17; ’997 Opposition, 1 TTABVUE 9-10,
`
`¶¶ 17-19).
`
`B.
`
`Applicant’s Affirmative Defenses
`
`1.
`
`Applicable Standard
`
`The Board may strike from a pleading any insufficient defense, or any redundant,
`
`immaterial, impertinent, or scandalous matter. Fed. R. Civ. P. 12(f); Am. Vitamin
`
`Prods. Inc. v. DowBrands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992); TBMP § 506.01.
`
`A defense will not be stricken as insufficient if the insufficiency is not clearly
`
`apparent, or if it raises factual issues that should be determined on the merits. TBMP
`
`§ 506.01. The primary purpose of the pleadings, under the Federal Rules of Civil
`
`Procedure, is to give fair notice of the claims or defenses asserted. See McDonnell
`
`Douglas Corp. v. Nat’l Data Corp., 228 USPQ 45, 47 (TTAB 1985); TBMP
`
`§ 309.03(a)(2). Thus, the Board, in its discretion, may decline to strike even
`
`objectionable pleadings where their inclusion will not prejudice the adverse party,
`
`
`
`13
`
`

`

`Opposition Nos. 91276760 and 91285997
`
`
`but rather will provide fuller notice of the basis for a claim or defense. Harsco Corp.
`
`v. Elec. Scis. Inc., 9 USPQ2d 1570, 1571 (TTAB 1988).
`
`2.
`
`Failure to State a Claim
`
`For its first affirmative defense in the ’760 and ’997 Oppositions, Applicant alleges
`
`that Opposer fails to state a claim upon which relief can be granted. ’760 Opposition,
`
`5 TTABVUE 6; ’997 Opposition, 19 TTABVUE 6. Failure to state a claim is not a true
`
`affirmative defense because it asserts the insufficiency of the pleading of Opposer’s
`
`claims rather than a statement of a defense to a properly pleaded claim. See
`
`Blackhorse et al. v. Pro Football, Inc., 98 USPQ2d 1633, 1637 (TTAB 2011);
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`Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1738 n.7
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`(TTAB 2001). In any event, as noted above, Opposer has properly pleaded its
`
`entitlement to a statutory cause of action and a claim upon which relief may be
`
`granted. Therefore, Applicant’s first defense in both the ’760 and ’997 Oppositions is
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`stricken.
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`3.
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`Amplification of Applicant’s Denials
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`For its second affirmative defense in the ’760 Opposition and for its fourth and
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`fifth affirmative defenses in the ’997 Opposition, Applicant alleges that there is no
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`likelihood of confusion because Opposer’s Marks are “diluted” as a result of numerous
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`third-party trademark registrations and uses of the word “HAMPTON” or
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`“HAMPTONS” as a trademark or as part of a trademark in connection with goods
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`that are identical to, similar to, and/or related to Opposer’s alleged products. ’760
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`Opposition, 6-7; ’997 Opposition, 19 TTABVUE 6. For its third affirmative defense in
`
`the ’997 Opposition, Applicant alleges that Opposer will not be damaged by
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`
`
`14
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`Opposition Nos. 91276760 and 91285997
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`registration of the involved mark in that proceeding. ’997 Opposition, 19 TTABVUE
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`6. For its fifth affirmative defense in the ’760 Opposition and eighth affirmative
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`defense in the ’997 Opposition, Applicant alleges that there can be no confusion
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`because the word “Hamptons” is disclaimed in Applicant’s involved marks. ’760
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`Opposition, 5 TTABVUE 7; ’997 Opposition, 19 TTABVUE 7.
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`These are not true affirmative defenses. However, to the extent they amplify the
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`denials in Applicant’s answers, they are permissible. See ProMark Brands Inc. v. GFA
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`Brands, Inc., 114 USPQ2d 1232, 1236 n.11 (TTAB 2015).
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`4.
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`Laches, Waiver, Estoppel, and Acquiescence
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`For its second affirmative defense in the ’997 opposition, Applicant alleges that
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`“Opposer’s claims are barred by one or more of the doctrines of laches, waiver,
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`estoppel, or acquiescence.” ’997 Opposition, 19 TTABVUE 6.
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`Applicant’s second affirmative defense in the ’997 Opposition consists of bald
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`conclusory allegations of laches, waiver, estoppel, and acquiescence, which are legally
`
`insufficient because they do not provide Opposer with fair notice of the factual bases
`
`for the defenses. Fed. R. Civ. P. 8(b)(1) and 12(f); see e.g., IdeasOne Inc. v. Nationwide
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`Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Fair Indigo LLC v. Style
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`Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007); see also TBMP § 311.02(b) (“The
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`elements of a defense should be stated simply, concisely, and directly. However, the
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`pleading should include enough detail to give the plaintiff fair notice of the basis for
`
`
`
`15
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`

`

`Opposition Nos. 91276760 and 91285997
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`the defense.”). Accordingly, Applicant’s second defense in the ’997 Opposition is
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`stricken.8
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`5.
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`Unclean Hands
`
`For its third and fourth affirmative defenses in the ’760 Opposition, Applicant
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`alleges that “Opposer is not entitled to prevail on its claims, in whole or in part, due
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`to unclean hands resulting from its fraud” committed in both filing its involved
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`application and in filing the instant opposition because Opposer lacked “a bona fide
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`intent to use [its] mark in commerce.” 5 TTABVUE 7. For its sixth affirmative defense
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`in the ’997 Opposition, Applicant alleges that “Opposer is not entitled to prevail on
`
`its claims, in whole or in part, due to unclean hands” resulting from the conduct
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`subject to Applicant’s fraud claim (and Applicant incorporates by reference the
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`allegations from its counterclaims). ’997 Opposition, 19 TTABVUE 6-7. For its
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`seventh affirmative defense in the ’997 Opposition, Applicant alleges that “Opposer
`
`is not entitled to prevail on its claims, in whole or in part, due to unclean hands
`
`resulting from Opposer engaging in ‘trademark bullying.’” Id. at 7.
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`Applicant’s allegations of fraud against Opposer’s pleaded registrations are
`
`attacks on the validity of those pleaded registrations, and therefore, are not proper
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`affirmative defenses. The Board will not entertain a collateral attack against a
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`pleaded registration absent the filing of a timely and properly pleaded counterclaim
`
`
`8 The affirmative defenses of laches, acquiescence, and estoppel generally are not applicable
`in opposition proceedings because these defenses start to run from the time a mark is
`published for opposition, not from the time of knowledge of use. See Nat’l Cable Television
`Ass’n Inc. v. Am. Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991);
`Barbara’s Bakery, 82 USPQ2d at 1292 n.14.
`
`
`
`16
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`

`

`Opposition Nos. 91276760 and 91285997
`
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`accompanied by the required fee. See Trademark Rules 2.6 and 2.106(b)(3)(ii), 37
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`C.F.R. §§ 2.6 and 2.106(b)(3)(ii); Textron, Inc. v. Gillette Co., 180 USPQ 152, 153
`
`(TTAB 1973) (defense attacking validity of pleaded registration must be raised by
`
`way of cancellation of registration); see also TBMP §§ 313.01 and 313.02. Accordingly,
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`Applicant’s third defense in the ’760 Opposition and sixth defense in the ’997
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`Opposition are stricken.
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`Applicant’s allegations of unclean hands in connection with filing the notice of
`
`opposition in the ’760 Opposition is insufficient because Applicant does not provide
`
`Opposer with fair notice of the factual bases for the defense. Accordingly, Applicant’s
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`fourth defense in the ’760 Opposition is stricken.9
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`Applicant’s allegation of unclean hands in the form of “trademark bullying” is also
`
`insufficiently pleaded. “Trademark bullying” is not a recognized affirmative defense.
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`In order to provide fair notice of the defense of unclean hands, a pleading must include
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`specific allegations of conduct by a plaintiff that, if proved, would prevent the plaintiff
`
`from prevailing on its claim. See Midwest Plastic Fabricators, Inc. v. Underwriters
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`Labs. Inc., 5 USPQ2d 1067, 1069 (TTAB 1987). Further, the concept of unclean hands
`
`must be related to a plaintiff’s claim. See Tony Lama Co., Inc. v. Di Stefano, 206 USPQ
`
`176, 179 (TTAB 1980). Even if Applicant showed that, based on an unreasonably
`
`inflated view of the scope of its marks, Opposer has been overly aggressive in the
`
`
`9 To the extent Applicant’s fourth defense in the ’760 Opposition is intended to contest
`Opposer’s entitlement to a statutory cause of action, such defense is not a true affirmative
`defense. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 2022 USPQ2d 1242, at *2 n.14
`(TTAB 2022) (“Lack of standing, now referred to as entitlement to a statutory cause of
`action[,] . . . is also not a true affirmative defense because ‘[t]he facts regarding standing . . .
`are part of [a plaintiff's] case and must be affirmatively proved.’”) (citations omitted).
`
`
`
`17
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`

`Opposition Nos. 91276760 and 91285997
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`enforcement of its trademarks, such a showing would not prevent Opposer from
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`prevailing on its Section 2(d) claim in these proceedings. Thus, the allegations set
`
`forth in Applicant’s seventh defense in the ’997 Opposition do not identify a defense
`
`against the claim in the notice of opposition. Accordingly, Applicant’s seventh defense
`
`in the ’997 Opposition is stricken.
`
`6.
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`Reservation of Rights
`
`In the conclusion to Applicant’s affirmative defenses section of its answer in the
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`’997 Opposition, Applicant attempts to reserve the right to assert other defenses that
`
`will be developed through discovery. ’997 Opposition, 19 TTABVUE 8. This is not an
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`affirmative defense but merely an advisory statement that Applicant may amend its
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`pleading at some future date after conducting discovery or further independent
`
`investigation in this matter. A defendant cannot reserve unidentified defenses since
`
`it does not provide a plaintiff fair notice of such defenses. Made in Nature, LLC v.
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`Pharmavite LLC, 2022 USPQ2d 557, at *2 (TTAB 2022). Whether or not Applicant
`
`may, at some future point, add an affirmative defense must be resolved by way of a
`
`motion for leave to amend. Accordingly, Applicant’s reservation of rights defense in
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`the ’997 Opposition is stricken.
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`IV. Summary
`
`Opposer’s motion to dismiss Applicant’s counterclaims in the ’997 Opposition is
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`granted, a