ESTTA Tracking number:
`
`ESTTA1312161
`
`Filing date:
`
`09/25/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91286603
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Purple Innovation, LLC
`
`JAMES LARSON
`DENTONS - DURHAM JONES & PINEGAR
`3301 THANKSGIVING WAY, SUITE 400
`LEHI, UT 84043
`UNITED STATES
`Primary email: djp.ipmail@dentons.com
`Secondary email(s): james.l@purple.com, tami.ro@purple.com
`801-375-6600
`
`Motion to Dismiss - Rule 12(b)
`
`Dale M. Cendali
`
`dale.cendali@kirkland.com, purpletm@kirkland.com
`
`/Dale M. Cendali/
`
`09/25/2023
`
`Motion to Dismiss.pdf(200518 bytes )
`Ex A - Serial 97650658 Application.pdf(1714807 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`SEALY TECHNOLOGY, LLC,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
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`PURPLE INNOVATION, LLC,
`
`
`
`
`
`
`
`
`Opposition No. 91286603
`
`Application Serial No. 97650658
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
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`
`
`
`
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`PURPLE INNOVATION, LLC’S MOTION TO DISMISS
`SEALY TECHNOLOGY, LLC’S NOTICE OF OPPOSITION
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`
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`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION............................................................................................................. 1
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`II.
`
`FACTUAL BACKGROUND ........................................................................................... 2
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`III.
`
`LEGAL STANDARD ....................................................................................................... 5
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`IV. ARGUMENT ..................................................................................................................... 5
`
`A.
`
`B.
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`Opposer’s Mere Descriptiveness Claim Should Be Dismissed .............................. 5
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`Opposer’s Misdescriptiveness Claim Should be Dismissed ................................... 9
`
`V.
`
`CONCLUSION ............................................................................................................... 11
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`CERTIFICATE OF SERVICE ................................................................................................. 13
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`
`
`
`
`
`i
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Alxigna Inc. v. Amstrong Laboratorios de Mexico S.A.,
`Opposition No. 91235782, 2019 WL 2387405 (T.T.A.B. May 31, 2019) ......................5, 7, 10
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...........................................................................................................1, 5, 6
`
`Brooklyn Brewery Corp. v. Brooklyn Brew Shop,
`17 F.4th 129 (Fed. Cir. 2021) ....................................................................................................6
`
`In re Budge Mfg. Co., Inc.,
`857 F.2d 773 (Fed. Cir. 1988)....................................................................................................9
`
`Classic Liquor Importers, Ltd. v. Spirits Int’l B.V.,
`151 F.Supp.3d 451 (S.D.N.Y. Dec. 29, 2015) ...........................................................................6
`
`Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
`586 F.3d 1352 (Fed. Cir. 2009)..................................................................................................7
`
`Collaborative Continuing Educ. Council, Inc. v. The Ilumni Inst. Inc.,
`Opposition No. 91256129, 2021 WL 2769893 (T.T.A.B. June 29, 2021) ..........................9, 10
`
`DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,
`695 F.3d 1247 (Fed. Cir. 2012)............................................................................................6, 10
`
`Duramax Marind, L.L.C. v. R.W. Fernstrum & Co.,
`Opposition No. 119899, 2001 WL 431506 (T.T.A.B. Apr. 26, 2001) ..................................8, 9
`
`Exec. Transp. Servs. of WNY, Inc. v. Buffalo Niagara Chauffeured Servs., Inc.,
`Opposition No. 91211008, 2015 WL 984131 (T.T.A.B. Feb. 20, 2015)...................................9
`
`Express, LLC v. EXP613, LLC,
`Opposition Nos. 91194918, et al., 2013 WL 10925118 (T.T.A.B. July 16, 2013) ...............5, 7
`
`Fair Indigo LLC v. Style Conscience,
`85 U.S.P.Q.2d 1536 (T.T.A.B. Nov. 21, 2007) .........................................................................5
`
`Global Garlic, Inc. v. Distribuidora Mi Honduras, LLC,
`No. JKB-21-1487, 2022 WL 414313 (D. Md. Feb. 10, 2022) ..................................................7
`
`Goya Foods, Inc. v. Holland Coffee, Inc.,
`Cancellation No. 92030908, 2006 WL 2850874 (T.T.A.B. Sept. 12, 2006) .............................8
`
`
`
`ii
`
`

`

`
`
`Kwan v. Schlein,
`246 F.R.D. 447 (S.D.N.Y. Oct. 23, 2007) .........................................................................10, 11
`
`Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
`28 U.S.P.Q.2d 1464 (T.T.A.B. 1993) ........................................................................................5
`
`Lipton Indus., Inc. v. Ralston Purina Co.,
`670 F.2d 1024 (C.C.P.A. 1982) .................................................................................................7
`
`Loren Stocker v. Golfline, Inc.,
`Opposition No. 91241278, 2019 WL 495331 (T.T.A.B. Feb. 5, 2019).....................................6
`
`In re Minky Couture,
`Ser. No. 87589711, 2020 WL 1873064 (T.T.A.B. Apr. 2, 2020) ..............................................8
`
`Purple Innovation LLC v. Sealy Mattress Mfg. Co LLC,
`1:23-cv-00257, Dkt. No. 1 (M.D.N.C. 2023) ............................................................................4
`
`Ralston Purina Co. v. Thomas J. Lipton, Inc.,
`341 F. Supp. 129 (S.D.N.Y. 1972).............................................................................................7
`
`Sealy Tech., LLC v. Purple Innovation, LLC,
`Cancellation No. 92081943, 1 TTABVUE (T.T.A.B. 2023) .....................................................4
`
`Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc.,
`Opposition No. 91224000, 2020 WL 636467 (T.T.A.B. Feb. 7, 2020).....................................8
`
`In re Spirits Int’l, N.V.,
`563 F.3d 1347 (Fed. Cir. 2009)................................................................................................10
`
`Sunbeam Corp. v. Battle Creek Equip. Co.,
`216 U.S.P.Q. 1101 (T.T.A.B. 1982) ..........................................................................................8
`
`The Hoover Co. v. Royal Appliance Mfg. Co.,
`238 F.3d 1357 (Fed. Cir. 2001)............................................................................................9, 11
`
`In re Tires, Tires, Tires Inc.,
`94 U.S.P.Q.2d 1153 (T.T.A.B. 2009) ........................................................................................8
`
`In re Tower Tech, Inc.,
`64 U.S.P.Q.2d 1314 (T.T.A.B. May 14, 2002) ..........................................................................6
`
`In re Virtual Indep. Paralegals, LLC,
`Ser. No. 86947786 2019 WL 1453034 (T.T.A.B. Mar. 27, 2019) ............................................8
`
`Yamaha Int’l Corp. v. Hoshino Gakki Co.,
`840 F.2d 1572 (Fed. Cir. 1988)..............................................................................................7, 8
`
`
`
`iii
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`

`

`
`
`Rules
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`Fed. R. Civ. P. 12(b)(6)................................................................................................................1, 5
`
`Other Authorities
`
`37 C.F.R. §2.41(a)............................................................................................................................3
`
`5 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1285
`(3d ed. 2004) ......................................................................................................................10, 11
`
`Trademark Manual of Examining Procedure § 1209.01(b) .............................................................6
`
`Trademark Manual of Examining Procedure § 1212 ...................................................................3, 7
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`
`
`
`
`
`
`iv
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`

`

`
`
`Applicant Purple Innovation, LLC (“Applicant”) hereby moves to dismiss Sealy
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`Technology, LLC’s (“Opposer”) Notice of Opposition (“Opposition”).
`
`I.
`
`INTRODUCTION
`
`This Opposition represents Opposer’s second retaliatory strike against Applicant’s
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`HYPER-ELASTIC POLYMER mark (the “Mark”), which has been registered and continuously
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`used for over six years in connection with Applicant’s proprietary mattress, seat cushion, and
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`pillow products. Applicant already owns four registrations for the Mark, dating back to June
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`2017. On October 27, 2022, Applicant filed the application at issue in this Opposition (Ser. No.
`
`97650658, the “Application”), to register the Mark in connection with two goods—“mattresses;
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`seat cushions”—on the Principal Register based on, inter alia, its ownership of its related
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`registration for the Mark on the Principal Register for similar goods, as well as Applicant’s
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`substantially exclusive and continuous use of the mark for over five years. Opposer has filed a
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`three-page, threadbare Opposition to the Application alleging that the Mark should not register
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`because it is both merely descriptive and deceptively misdescriptive. The Opposition, however,
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`does not adequately plead or state a valid claim, and thus should be dismissed under
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`Rule 12(b)(6).
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`First, Opposer fails to state a claim for relief under its “descriptiveness” claim because it
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`includes only a “[t]hreadbare recital[] of the elements of a cause of action, supported by mere
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`conclusory statements,” which is insufficient as a matter of law. Ashcroft v. Iqbal, 556 U.S. 662,
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`678 (2009). Opposer does nothing to explain how the Mark is descriptive, nor does it plead any
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`theory that the Mark has not acquired distinctiveness—both of which are necessary elements
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`here. Second, Opposer likewise has failed to allege the elements of its misdescriptiveness claim,
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`in no way explaining how the mark is misdescriptive, thus leaving Applicant in the dark as the
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`1
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`

`

`
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`basic nature of the claim. Opposer also does nothing to explain its inconsistent descriptiveness
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`and misdescriptiveness claims, which it must.
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`Ultimately, the Opposition is so deficient that it does not meet the basic pleading standard
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`or put Applicant on sufficient notice of Opposer’s claims. Opposer’s Opposition is a misuse of
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`the U.S. Patent and Trademark Office (“USPTO”), and is designed to burden Applicant and the
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`USPTO with vague allegations as retaliation for a patent suit that Applicant filed against
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`Opposer in federal court. Thus, the Opposition should be dismissed in full.
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`II.
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`FACTUAL BACKGROUND
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`Applicant is the owner of the Mark (HYPER-ELASTIC POLYMER), for which it owns
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`trademark registrations on the Principal Register and which it has used extensively for over six
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`years (since October 2016) in connection with its mattress, cushion, and pillow products. For
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`instance, since March 2018, Applicant has owned a registration for the Mark on the Principal
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`Register in connection with “elastomeric polymer in pre-shaped form sold as an integral
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`component of pillows” (Registration No. 5416146, the “’146 Registration”). The USPTO issued
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`the ’146 Registration without requiring evidence of acquired distinctiveness, and Applicant filed
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`a Declaration of Incontestability for the ’146 Registration on September 5, 2023. Applicant also
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`has owned a registration for the Mark on the Principal Register since March 2023 in connection
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`with “[p]lasticized elastomeric gel material sold as an integral component of cushioned products,
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`namely, mattresses; Plasticized elastomeric gel material sold as an integral component of
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`cushioned products, namely, seat cushions” (Registration No. 7006242, the “’242 Registration,”
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`collectively, along with the ’146 Registration, the “Principal Register Registrations”). The USPTO
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`issued the ’242 Registration under Section 2(f), finding the Mark had acquired distinctiveness.
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`
`
`2
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`

`

`
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`In addition, more than six years ago on June 13, 2017, Applicant was issued a registration
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`on the Supplemental Register for the Mark in connection with “mattresses; seat cushions”
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`(Registration No. 5224901, the “’901 Registration”). Applicant has continuously and substantially
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`exclusively used the Mark in connection with those goods since October 2016—the date of first
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`use. Consistent with TMEP § 1212 and 37 C.F.R. §2.41(a), on October 27, 2022, Applicant filed
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`the Application to register the Mark in connection with goods that are identical to those in the ‘901
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`Registration, and similar to those in the Principal Register Registrations—namely, “mattresses;
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`seat cushions”—on the Principal Register. See Exhibit A.1 Applicant claims acquired
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`distinctiveness under Section 2(f) based on two, independent (and each individually sufficient)
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`bases: (1) one based on Applicant’s ownership of a mark on the Principal Register for the same /
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`similar goods, and (2) the other based on Applicant’s “substantially exclusive and continuous use
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`of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years
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`immediately before the date of this statement.” Exhibit A. On May 10, 2023, the USPTO accepted
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`the Application without requiring further evidence of acquired distinctiveness, and approved it for
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`registration.
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`In addition to Applicant’s length and substantial exclusivity of use, Applicant has also
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`extensively promoted and featured the Mark in its advertising and marketing materials, including
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`on its website, social media, on product displays, product listings, and elsewhere. Applicant’s
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`mattresses and seat cushions marketed under the Mark have also amassed material sales and the
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`Applicant’s products sold under the mark have received unsolicited media coverage from major
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`national news sources, such as the New York Times.
`
`
`1 Attached hereto as Exhibit A is a true and correct copy of the Application, Serial No.
`97650658.
`
`
`
`3
`
`

`

`
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`Opposer claims to be “a domestic and international seller of mattresses, pillows, bed
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`foundations, adjustable bed bases, mattress toppers, upholstered furniture, crib mattresses, and
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`related products (‘SEALY Products’).” 1 TTABVUE 1. On March 24, 2023, Applicant
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`commenced a patent infringement proceeding against Opposer (and its related entities) in the U.S.
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`District Court for the Middle District of North Carolina, relating to Opposer’s infringing use of
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`Applicant’s innovative mattress technology. Purple Innovation LLC v. Sealy Mattress Mfg. Co
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`LLC, 1:23-cv-00257, Dkt. No. 1 (M.D.N.C. 2023) (the “Patent Proceeding”). Although that
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`proceeding does not involve trademark claims, a mere three days after Applicant commenced the
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`Patent Proceeding, on March 27, 2023, Opposer filed a threadbare petition to cancel Applicant’s
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`’146 Registration on the grounds that it is (i) “merely descriptive of the goods,” (ii) “deceptively
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`misdescriptive of the goods,” and (iii) “generic of the goods.” Sealy Tech., LLC v. Purple
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`Innovation, LLC, Cancellation No. 92081943, 1 TTABVUE (T.T.A.B. 2023) (the “Cancellation
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`Action”). Applicant moved to dismiss the petition. Id. at 7 TTABVUE. In response, Opposer
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`amended its petition to drop its claims for descriptiveness and deceptive misdescriptiveness,
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`conceding that both claims were time barred. Id. at 9 TTABVUE.
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`Despite being aware of the deficiencies with its cancellation petition as a result of
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`Applicant’s motion to dismiss, Opposer recycled the descriptive and misdescriptive claims from
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`the original cancellation pleading in this Opposition proceeding (which it had dropped in the
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`Cancellation Action) without curing those deficiencies. Notably, both actions concern the same
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`products at issue in the Patent Proceeding, and Opposer has not disputed that its actions are in
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`retaliation for Applicant’s Patent Proceeding (though that proceeding does not implicate the Mark).
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`See id. 10 TTABVUE, 11 TTABVUE.
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`
`
`4
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`

`

`
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`III. LEGAL STANDARD
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`To avoid dismissal under Federal Rule of Civil Procedure 12(b)(6), Opposer must “allege
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`sufficient factual matter as would, if proved, establish that 1) it has standing to maintain the
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`opposition, and 2) a valid ground exists for opposing the mark.” Express, LLC v. EXP613, LLC,
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`Opposition Nos. 91194918, et al., 2013 WL 10925118, at *6 (T.T.A.B. July 16, 2013) (quoting
`
`Ashcroft, 556 U.S. at 678). “Threadbare recitals of the elements of a cause of action, supported
`
`by mere conclusory statements, do not suffice.” Ashcroft, 556 U.S. at 678. Rather, the pleading
`
`must include enough detail to give the respondent fair notice of the basis for each claim. Alxigna
`
`Inc. v. Amstrong Laboratorios de Mexico S.A., Opposition No. 91235782, 2019 WL 2387405, at
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`*6 (T.T.A.B. May 31, 2019) (denying claim where allegations failed to give “fair notice” to
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`responding party of the basis of the claim) (citing Fair Indigo LLC v. Style Conscience, 85
`
`U.S.P.Q.2d 1536 (T.T.A.B. Nov. 21, 2007)); Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
`
`28 U.S.P.Q.2d 1464 (T.T.A.B. Aug. 10, 1993), recon. denied, 36 U.S.P.Q.2d 1328, at *1
`
`(T.T.A.B. July 5, 1995) (although pleading need not allege particular “magic words,” it must
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`“give the defendant fair notice of the ground alleged”).
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`IV. ARGUMENT
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`A. Opposer’s Mere Descriptiveness Claim Should Be Dismissed
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`Opposer’s “merely descriptive” claim fails because Opposer does not adequately plead
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`either of the required elements of (1) descriptiveness and (2) lack of acquired descriptiveness.
`
`(1)
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`Opposer Fails to Adequately Plead a Claim for Descriptiveness
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`Opposer’s mere descriptiveness claim fails because Opposer’s allegations do nothing more
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`than plead the legal test for descriptiveness and fail to provide Applicant with fair notice of the
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`alleged factual basis for the claim. Alxigna, 2019 WL 2387405, at *6; Levi Strauss & Co., 28
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`U.S.P.Q.2d 1464 at *1. “A mark is [] merely descriptive if it describes an ingredient, quality,
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`
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`5
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`

`

`
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`characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.” TMEP
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`§ 1209.01(b). This does not involve a question of “whether someone presented with only the mark
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`could guess what the goods or services are” but rather “whether someone who knows what the
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`goods and services are will understand the mark to convey information about them.” DuoProSS
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`Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012) (quoting In re
`
`Tower Tech, Inc., 64 U.S.P.Q.2d 1314 (T.T.A.B. May 14, 2002)). In other words, a “descriptive
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`mark . . . is one that ‘conjure[s] up the image’ of the precise good with which it is associated.”
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`Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129, 147 (Fed. Cir. 2021) (citation
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`omitted).
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`Opposer, however, does not allege (1) what “ingredient, quality, characteristic, function,
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`feature, purpose, or use of” Applicant’s goods its Mark allegedly describes, TMEP § 1209.01(b);
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`(2) that someone “who knows what the goods and services are will understand the mark to convey
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`information about them”; or (3) that the Mark “conjures up the image” of a particular good.
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`DuoProSS Meditech Corp., 695 F.3d at 1254; Brooklyn Brewery Corp., 17 F.4th at 147. Opposer’s
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`sole allegation in support of its claim is that the Mark allegedly “describes the goods or an
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`ingredient, quality, characteristic, function, feature, purpose, or use of the goods of the challenged
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`application,” absent any factual allegations in support, or further explanation as to what it is
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`claiming. 1 TTABVUE 2. Thus, Opposer’s allegation amounts to nothing more than a
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`“[t]hreadbare recital[] of the elements,” which is insufficient as a matter of law. Ashcroft, 556
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`U.S. at 678; see also Loren Stocker v. Golfline, Inc., Opposition No. 91241278, 2019 WL 495331,
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`at *3 (T.T.A.B. Feb. 5, 2019) (dismissing descriptiveness claim where allegations did not “link the
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`[mark] to a feature or quality of the goods and services offered by Applicant”); Classic Liquor
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`Importers, Ltd. v. Spirits Int’l B.V., 151 F.Supp.3d 451, 459 (S.D.N.Y. Dec. 29, 2015) (dismissing
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`
`
`6
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`

`

`
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`mere descriptiveness claim where plaintiff “does not itself plead, other than in wholly conclusory
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`fashion, that ‘elit’ is a merely descriptive term”); Global Garlic, Inc. v. Distribuidora Mi
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`Honduras, LLC, No. JKB-21-1487, 2022 WL 414313, at *5 (D. Md. Feb. 10, 2022) (geographic
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`descriptiveness claim dismissed where plaintiff failed to “include[] any allegations regarding the
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`public perception” of the meaning of the mark). Opposer’s mere descriptiveness claim thus should
`
`be dismissed as it fails to give Applicant “fair notice of the basis [for] the claim.” Alxigna Inc.,
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`2019 WL 2387405, at *6.
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`(2)
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`Descriptiveness Alone Is Insufficient Grounds to Oppose the Application
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`Even if Opposer’s pleading did state a claim for descriptiveness, which—as set forth
`
`above—it does not, its claim still fails for the separate and independent reason that descriptiveness
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`alone is not a valid ground to oppose Applicant’s Mark. To survive a motion to dismiss, Opposer
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`must allege “sufficient factual matter” to establish that “a valid ground exists for opposing the
`
`mark.” Express, 2013 WL 10925118, at *6 (citing Lipton Indus., Inc., 670 F.2d at 1028). Where
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`“an applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a
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`nonissue.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed.
`
`Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577 (Fed. Cir. 1988))
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`(emphasis added). Rather, the issue is whether the mark has become distinctive of Applicant’s
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`goods (i.e., acquired secondary meaning). Id.
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`Secondary meaning is an entirely separate, independent issue from descriptiveness. The
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`“crux” of this inquiry is whether “the mark comes to identify not only the goods but the source of
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`those goods.” TMEP § 1212 (citing Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp.
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`129, 133 (S.D.N.Y. 1972)). In other words, whether “the primary significance of the term in the
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`minds of the consuming public is not the product but the producer.” Id. (emphasis in original). To
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`assess secondary meaning, the TTAB considers a variety of factors, including: “(1) association of
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`
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`7
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`

`

`
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`the mark with a particular source by actual purchasers . . .; (2) length, degree, and exclusivity of
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`use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5)
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`intentional copying; and (6) unsolicited media coverage of the product embodying the mark.” In
`
`re Minky Couture, Ser. No. 87589711, 2020 WL 1873064, at *6 (T.T.A.B. Apr. 2, 2020) (citing
`
`In re Virtual Indep. Paralegals, LLC, Ser. No. 86947786 2019 WL 1453034, *11 (T.T.A.B. Mar.
`
`27, 2019)). “All six factors are to be weighed together,” and “no single factor is determinative.”
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`Id (citing In re Tires, Tires, Tires Inc., 94 U.S.P.Q.2d 1153, 1157 (T.T.A.B. 2009)).
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`Opposer’s only allegation regarding acquired distinctiveness is a conclusory assertion
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`that Applicant’s Mark is “so highly descriptive of the goods of the challenged registration that it
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`cannot be shown to have acquired distinctiveness in connection with the goods of the
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`registration.” 1 TTABVUE 3. Opposer does not address a single element of the acquired
`
`distinctiveness factors, nor allege any basis to establish that the USPTO’s acceptance of
`
`Applicant’s evidence of secondary meaning was in error—an issue on which Opposer has the
`
`initial burden, and thus must adequately plead. See Yamaha Int’l Corp., 840 F.2d at 1580 (“the
`
`opposer has the initial burden to establish prima facie that the applicant did not satisfy the
`
`acquired distinctiveness requirement of Section 2(f)”); see also Spiritline Cruises LLC v. Tour
`
`Mgmt. Servs., Inc., Opposition No. 91224000, 2020 WL 636467, at *10 (T.T.A.B. Feb. 7, 2020)
`
`(same); Goya Foods, Inc. v. Holland Coffee, Inc., Cancellation No. 92030908, 2006 WL
`
`2850874, at *5 (T.T.A.B. Sept. 12, 2006) (same). Opposer also fails to set forth any “specific
`
`allegations” that “if proved, would establish that applicant’s merely descriptive mark has not
`
`become distinctive of applicant’s services or that the primary significance of the proposed mark
`
`remains the original descriptive significance.” Duramax Marind, L.L.C. v. R.W. Fernstrum &
`
`Co., Opposition No. 119899, 2001 WL 431506, at *4 (T.T.A.B. Apr. 26, 2001) (citing Sunbeam
`
`
`
`8
`
`

`

`
`
`Corp. v. Battle Creek Equip. Co., 216 U.S.P.Q. 1101 (T.T.A.B. 1982)). Thus, dismissal is
`
`warranted on this basis, as well. See id. (dismissing descriptiveness claim against Section 2(f)
`
`application where the plaintiff failed to adequately plead no acquired distinctiveness); Exec.
`
`Transp. Servs. of WNY, Inc. v. Buffalo Niagara Chauffeured Servs., Inc., Opposition No.
`
`91211008, 2015 WL 984131, at *3 (T.T.A.B. Feb. 20, 2015) (finding descriptiveness claim an
`
`“unpleaded claim[] which [the Board] need not entertain” because the opposer failed to properly
`
`plead lack of acquired distinctiveness).
`
`B. Opposer’s Misdescriptiveness Claim Should be Dismissed
`
`Opposer’s deceptively misdescriptive claim also is deficient in the most basic of respects.
`
`In addition to being merely conclusory, Opposer fails to even utter each of the elements required
`
`to establish a prima facie case. Accordingly, Opposer’s deceptively misdescriptive claim should
`
`be dismissed.
`
`Under Trademark Act Section 2(e), to prevent registration of a mark as deceptively
`
`misdescriptive, Opposer must establish that (1) “the term [is] misdescriptive of the character,
`
`quality, function, composition or use of the goods;” (2) “prospective purchasers [are] likely to
`
`believe that the misdescription actually describes the goods;” and (3) “the misdescription [is] likely
`
`to affect the decision to purchase[.]” The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357,
`
`1361 (Fed. Cir. 2001) (citing In re Budge Mfg. Co., Inc., 857 F.2d 773, 775 (Fed. Cir. 1988));
`
`Collaborative Continuing Educ. Council, Inc. v. The Ilumni Inst. Inc., Opposition No. 91256129,
`
`2021 WL 2769893 at *3 (T.T.A.B. June 29, 2021).
`
`Opposer’s allegations fail to state such a claim. As a threshold matter, Opposer fails to
`
`allege—at all—that Applicant’s Mark misdescribes “the character, quality, function, composition
`
`or use” of the goods or that the alleged misdescription is “likely to affect the decision to purchase.”
`
`Hoover Co., 238 F.3d at 1361. Opposer only provides a single conclusory allegation that “[t]o the
`
`
`
`9
`
`

`

`
`
`extent that Applicant’s mark does not accurately describe the goods of the challenged application
`
`or an ingredient, quality, characteristic, function, feature, purpose, or use of those goods,
`
`Applicant’s Purported Mark misdescribes the goods of the challenged application and consumers
`
`would be likely to believe the misrepresentation.” 1 TTABVUE 3. Opposer fails to identify what
`
`alleged false conclusion the Mark will cause consumers to draw about the character, quality,
`
`function, composition, or feature of “mattresses; seat cushions.” Thus, Opposer neglects to “give
`
`[Applicant] fair notice of the basis [for] the claim”—Applicant cannot reasonably answer the
`
`Opposition when it does not even know what is allegedly “misdescriptive” of the Mark. Alxigna
`
`Inc., 2019 WL 2387405, at *6. Dismissal of the claim is warranted on this basis alone. See id.;
`
`see also Collaborative Continuing Educ. Council, Inc., 2021 WL 2769893, at *3 (citing In re
`
`Spirits Int’l, N.V., 563 F.3d 1347 (Fed. Cir. 2009)) (dismissing deceptively misdescriptive claim
`
`for failure to plead at all one element and the conclusory pleading of another).
`
`Opposer’s claim also fails because it does not allege facts to support its inconsistent
`
`pleadings. Under the Federal Rules,
`
`A party . . . should not set forth inconsistent, or alternative, or
`hypothetical statements in the pleadings unless, after a reasonable
`inquiry, the pleader legitimately is in doubt about the factual
`background or legal theories supporting the claims or defenses or is
`otherwise justified in pleading in this fashion and the pleader can
`represent that he is not doing so for an improper purpose.
`
`Kwan v. Schlein, 246 F.R.D. 447, 451–52 (S.D.N.Y. Oct. 23, 2007) (quoting 5 Charles Alan
`
`Wright & Arthur R. Miller, Federal Practice and Procedure § 1285 (3d ed. 2004)). Here, Opposer
`
`claims that the Mark is both “deceptively misdescriptive” and “merely descriptive” of “the goods
`
`of [the] Application.” 1 TTABVUE 2–3. In other words, Opposer simultaneously contends that
`
`the Mark deceptively misdescribes and (accurately) describes the “character, quality, function,
`
`composition or use of” the goods. Compare DuoProSS Meditech Corp., 695 F.3d at 1254
`
`
`
`10
`
`

`

`
`
`(providing standard for merely descriptive claims) with Hoover Co., 238 F.3d at 1361 (providing
`
`standard for deceptively misdescriptive claims). Both claims cannot be true, yet Opposer alleges
`
`no facts that it “legitimately is in doubt about” to support these inconsistent pleadings. Kwan, 246
`
`F.R.D. at 451–52 (quoting 5 Charles Alan Wright & Arthur R. Miller, Federal Practice and
`
`Procedure § 1285). This failure is also fatal to Opposer’s claim. Kwan, 246 F.R.D. at 452
`
`(dismissing inconsistent claim unsupported by factual allegations).
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Applicant respectfully requests that the Board dismiss
`
`Opposer’s claims in full.
`
`
`
`
`
`
`
`11
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`

`

`
`
`Dated: September 25, 2023
`
`
`/s/ Dale M. Cendali
`Dale M. Cendali
`Shanti Sadtler Conway
`Abbey Elizabeth Quigley
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022
`dale.cendali@kirkland.com
`shanti.conway@kirkland.com
`abbey.quigley@kirkland.com
`
`Attorneys for Applicant
`Purple Innovation, LLC
`
`
`
`12
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 25, 2023, I caused copies of the foregoing PURPLE
`
`INNOVATION, LLC’S MOTION TO DISMISS SEALY TECHNOLOGY, LLC’S NOTICE
`
`OF OPPOSITION to be served via e-mail as follows:
`
`VICE, COX & TOWNSEND PLLC
`Amy Sullivan Cahill, Esq.
`2303 River Road, Suite 301
`Louisville, KY 40206
`502-290-3492
`acahill@vctfirm.com
`
`Dated: September 25, 2023
`
`
`
`
`
`
`/s/ Dale M. Cendali
`Dale M. Cendali
`
`Attorney for Applicant
`Purple Innovation, LLC
`
`
`
`13
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`PTO- 1478
`
`Approved for use through 10/31/2024. OMB 0651-0009
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 97650658
`Filing Date: 10/27/2022
`
`NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory
`under the facts of the particular application.
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`TEAS Plus
`
`MARK INFORMATION
`
`*MARK
`
`*STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`*MARK STATEMENT
`
`REGISTER
`
`APPLICANT INFORMATION
`
`*OWNER OF MARK
`
`*MAILING ADDRESS
`
`*CITY
`
`*STATE
`(Required for U.S. applicants)
`
`YES
`
`HYPER-ELASTIC POLYMER
`
`YES
`
`YES
`
`HYPER-ELASTIC POLYMER
`
`The mark consists of standard characters, without claim to any
`particular font style, size, or color.
`
`Principal
`
`Purple Innovation, LLC
`
`4100 CHAPEL RIDGE RD. SUITE 200
`
`LEHI
`
`Utah
`
`*COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`*ZIP/POSTAL CODE
`(Required for U.S. and certain international addresses)
`
`*EMAIL ADDRESS
`
`WEBSITE ADDRESS
`
`LEGAL ENTITY INFORMATION
`
`84043
`
`XXXX
`
`purple.com
`
`*TYPE
`
`LIMITED LIABILITY COMPANY
`
`* STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`WHERE LEGALLY ORGANIZED
`
`Delaware
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`* INTERNATIONAL CLASS
`
`*IDENTIFICATION
`
`020 
`
`Mattresses; Seat cushions
`
`

`

`*FILING BASIS
`
`       FIRST USE ANYWHERE DATE
`
`       FIRST USE IN COMMERCE DATE
`
`       SPECIMEN
`       FILE NAME(S)
`
`       
`
`       
`
`       
`
`       
`
`       
`
`       SPECIMEN DESCRIPTION
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`ADDITIONAL STATEMENTS SECTION
`
`*TRANSLATION
`(if applicable)
`
`*TRANSLITERATION
`(if applicable)
`
`*CLAIMED PRIOR REGISTRATION
`(if applicable)
`
`*CONSENT (NAME/LIKENESS)
`(if applicable)
`
`*CONCURRENT USE CLAIM
`(if applicable)
`
`SECTION 1(a)
`
`At least as early as 10/11/2016
`
`At least as earl