ESTTA Tracking number:
`
`ESTTA1370046
`
`Filing date:
`
`07/10/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91291409
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Now! Media, Inc.
`
`NOEL COOK
`HANSON BRIDGETT LLP
`1676 N CALIFORNIA BLVD
`SUITE 620
`WALNUT CREEK, CA 94596
`UNITED STATES
`Primary email: ttabfilings@hansonbridgett.com
`Secondary email(s): ncook@hansonbridgett.com, jthiele@hansonbridgett.com
`925-746-8460
`
`Motion to Strike Pleading/Affirmative Defense
`
`Justin Thiele
`
`ttabfilings@hansonbridgett.com, jthiele@hansonbridgett.com,
`ncook@hansonbridgett.com
`
`/Justin Thiele/
`
`07/10/2024
`
`Motion to Strike Affirmative Defenses NOWMEDIA 91291409.pdf(200010 bytes
`)
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`NOW! Media, Inc.,
`
`
`Opposer,
`
`
`
`v.
`
`
`NFT Now Media, Inc.,
`
`
`Applicant.
`
`
`
`
`
` Opposition No. 91291409
`
`Trademark Application Serial No.: 97939609
`Filed: May 16, 2023
`Published: March 12, 2024
`Mark: NOWMEDIA
`
`Motion to Strike Second through Seventh
`Airmative Defenses and Reservation of Rights
`
`Pursuant to Rule 12(f) of the Federal Rules of Civil Procedure and Trademark Trial and Appeal
`
`Board Manual of Procedure § 506, Opposer NOW! Media, Inc. (“Opposer” or “Now! Media”)
`
`respectfully moves the Board to strike as legally insuicient the second through seventh airmative
`
`defenses and reservation of rights to plead additional airmative defenses in the Answer of Applicant
`
`NFT Now Media, Inc. (“Applicant” or “NFT Now”) (4 TTABVUE) (the “Answer”).
`
`1.
`
`he Second through Seventh Airmative Defenses are Legally Impermissible and Must be
`Stricken
`
`he Board may, upon motion, strike from a pleading any insuicient defense. Fed. R. Civ. P.
`
`12(f); Lacteos de Honduras, S.A. v. Industrias Sulas, S. de R.L. de C.V., 98 USPQ 2d 1921 (TTAB 2020).
`
`Airmative defenses are subject to the requirements of Fed. R. Civ. P. 8, and require that the asserting
`
`party include enough detail to give the party in position of plaintif fair notice of the basis of the defenses.
`
`Fed. R. Civ. P. 8(b); Ohio State Univ. v. Ohio Univ., 51 USPQ 2d 1289 (TTAB 1999); see also Heller
`
`Financial, Inc. v. Midwhey Powder Co., 883 F.2d 1286, 1294 (7th Cir. 1989) (“Airmative defenses are
`
`pleadings and, therefore, are subject to all pleading requirements of the Federal Rules of Civil Procedure.
`
`… hus, defenses must set forth a short and plain statement … of the defense”).
`
`20975774.1
`
`1
`
`

`

`
`
`1.1 he second through ifth airmative defenses, pleading various equitable defenses,
`are legally impermissible and insuiciently pleaded
`
`In the second airmative defense, Applicant pleads only that “as a result of Opposer’s own acts
`
`and/or omissions, the opposition is barred by the doctrine of laches.” (4 TTABVUE 2.) In the third
`
`airmative defense, Applicant pleads only that “the opposition is barred by the doctrine of estoppel.” (4
`
`TTABVUE 2.) In the fourth airmative defense, Applicant pleads only that “as a result of its own acts and
`
`omissions, Opposer has waived any right to pursue its opposition.” (4 TTABVUE 2–3.) And in the ifth
`
`airmative defense, Applicant pleads only that “the opposition is barred by the doctrine of acquiescence.”
`
`(4 TTABVUE 3.) We address each of these in turn.
`
`Laches requires a showing of unreasonable delay in assertion of one’s rights against another; and
`
`material prejudice to another attributable to that delay. Bridgestone/Firestone Research, Inc. v. Automobile
`
`Club de L’Ouest de la France, 58 USPQ 2d 1460, 1462 (Fed. Cir. 2001). Laches in a Board proceeding is
`
`tied to registration and not use of the challenged mark. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes,
`
`Inc., 23 USPQ 2d 1701, 1703 (Fed. Cir. 1992). In an opposition, laches will not begin to run until the
`
`mark is published for opposition—“Before then, no opposition is possible.” DAK Indus. Inc. v. Daiichi
`
`Kosho Co. Ltd., 25 USPQ 2d 1622, 1624 (TTAB 1992). Applicant has not pleaded any facts supporting its
`
`laches airmative defense establishing an unreasonable delay by Opposer causing material prejudice to
`
`Applicant with respect to the Application. Applicant cannot do so for the reason that Opposer iled this
`
`opposition to the Application within the relevant opposition period. Warner-Lambert Co. v. Sports Sols.
`
`Inc., 39 USPQ 2d 1686, 1691 (TTAB 1996) (laches defense fails “as a matter of law” where opposer
`
`“iled a timely notice of opposition”). And laches will not apply in a case where likelihood of confusion is
`
`inevitable. Allstate Ins. Co. v. DeLibro, 6 USPQ 2d 1220, 1224 (TTAB 1988). For the same reason,
`
`logically laches cannot apply to a lack-of-bona-ide-intent-to-use claim under § 1(b), because there is no
`
`earlier opportunity to raise such a claim. Accordingly, the second airmative defense must be stricken.
`
`Applicant has not alleged any facts supporting the application of an estoppel defense under any
`
`theory. Blackhorse v. Pro Football Inc., 98 USPQ 2d 1633, 1637 (TTAB 2011) (“Equitable estoppel is the
`
`20975774.1
`
`2
`
`

`

`
`
`doctrine by which a person may be precluded by his act or conduct, or silence when it is his duty to speak,
`
`from asserting a right which he otherwise would have had. In other words, the defendant justiiably relied
`
`on the plaintif’s action or inaction.”). Under any theory of estoppel, the defense must be tied to a party’s
`
`registration of a mark, not to a party’s use. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 23
`
`USPQ 2d 1701, 1703 (Fed. Cir. 1992). Accordingly, the third airmative defense must be stricken.
`
`he same principles apply to acquiescence. Acquiescence is a type of estoppel that is based on the
`
`plaintif’s conduct that expressly or by clear implication consents to, encourages, or furthers the activities
`
`of the defendant.” Nahshin v. Product Source Int’l LLC, 107 USPQ 2d 1257, 1263 (TTAB 2013).
`
`Importantly, acquiescence in an opposition proceeding before the Board must be tied to registration, not
`
`use, of the defendant’s mark. Krause v. Krause Publ’ns, Inc., 76 USPQ 2d 1904, 1914 (TTAB 2005).
`
`Opposer iled this opposition to the Application within the extended opposition period; that is, at the irst
`
`available opportunity. Applicant has not alleged that it has previously iled for the mark in the
`
`Application, nor has Applicant alleged any speciic conduct by Opposer that expressly or by clear
`
`implication consented to, encouraged, or furthered Applicant’s registration of its mark. Additionally, in a
`
`§ 2(d) claim, acquiescence cannot be applied in cases where likelihood of confusion is inevitable.
`
`Relange Inc. v. R-Con Int’l, 17 USPQ 2d 1125, 1131 (TTAB 1990). Accordingly, the ifth airmative
`
`defense is insuiciently pleaded and must be stricken.
`
`Finally, a “waiver is ordinarily an intentional relinquishment or abandonment of a known right or
`
`privilege.” Johnson v. Zerbst, 304 U.S. 458, 464 (1938); see also In re Google Tech. Holdings LLC, 980
`
`F.3d 858, 2020 USPQ 2d 11465, at *3 (Fed. Cir. 2020). Generally, “the three requirements or elements
`
`necessary to establish an efective waiver are: an existing right, knowledge of the right, [and] an actual
`
`intention to relinquish the right.” Enotec Imports Inc. v. Blue Monster Estate LLC, No. 9208124, 2023
`
`WL 4743751, at *5 (TTAB July 14, 2023). By “waiver,” the Board generally assumes that the defending
`
`party is attempting to assert a defense based on “estoppel by agreement” or “contractual estoppel,” i.e.,
`
`that a prior agreement between the parties estops the plaintif from iling the present opposition or
`
`cancellation proceeding. M-5 Steel Mfg., Inc. v. O'Hagin's Inc., 61 USPQ 2d 1086 (TTAB 2001). Here,
`
`20975774.1
`
`3
`
`

`

`
`
`Applicant has pleaded no facts giving rise to the application of an airmative defense of waiver, nor could
`
`it do so. Accordingly, the fourth airmative defense is insuiciently pleaded and must be stricken.
`
`1.2
`
`Applicant’s sixth airmative defense of unclean hands is insuiciently pleaded
`
`In its sixth airmative defense, Applicant pleads only that “Applicant alleges on information and
`
`belief that the opposition is barred by the doctrine of unclean hands.” (4 TTABVUE 3.) A defense of
`
`unclean hands must be supported by speciic allegations of misconduct by plaintif that, if proved, would
`
`prevent the plaintif from prevailing on its claim. Midwest Plastic Fabricators, Inc. v. Underwriters Labs.
`
`Inc., 5 USPQ 2d 1067, 1069 (TTAB 1987). In addition, the misconduct must be related to the plaintif's
`
`claim: the defendant’s entitlement to registration. Tony Lama Co. v. Di Stefano, 206 USPQ 176, 179
`
`(TTAB 1980). Applicant has pleaded no facts giving rise to its unclean-hands defense, and accordingly
`
`Opposer lacks fair notice of the basis for such defense. Fed. R. Civ. P. 8. he sixth airmative defense
`
`must therefore be stricken.
`
`1.3
`
`Applicant’s seventh airmative defense of “lack of knowledge and lack of willful
`intent” are legally insuicient
`
`In its seventh airmative defense, Applicant pleads only that “Any and all acts alleged to have
`
`been committed by Applicant were performed with lack of knowledge and lack of willful intent.” (4
`
`TTABVUE 3.) his is not a true airmative defense because the knowledge or willful intent of a junior
`
`user (or applicant) are not defenses to claims before the Board for opposition based on § 2(d). Lebanon
`
`Seaboard Corp. v. R&R Turf Supply, Inc., 101 USPQ 2d 1826, 1834 (TTAB 2012) (“Good faith adoption
`
`of a mark will not prevent a inding of likelihood of confusion.”). Further, Opposer also has brought a
`
`cause of action for opposition under § 1(b) for Applicant’s lack of a bona ide intent to use the mark in the
`
`Application. Applicant’s lack of knowledge or willful intent have no bearing on the disposition of such a
`
`claim, which asks only whether Applicant possessed, at the time of iling of the Application, the requisite
`
`bona ide intention to use the mark in commerce. SmithKline Beecham Corp. v. Omnisource DDS LLS, 97
`
`USPQ 2d 1300 (TTAB 2010) (an opposition under § 1(b) does not have to show that the applicant acted
`
`20975774.1
`
`4
`
`

`

`
`
`in bad faith or intended to deceive the USPTO, as with a fraud claim). Accordingly, the seventh
`
`airmative defense must be stricken.
`
`2.
`
`Applicant’s Reservation of Right to Amend its Airmative Defenses is Improper and Must
`be Stricken
`
`Finally, Applicant’s reservation of rights—stating that “Applicant expressly reserves the right to
`
`plead additional airmative and other defenses should any defenses be revealed by discovery in this
`
`case.” (4 TTABVUE 2)—should be stricken as improper under the Board’s rules. First, such bare
`
`allegations fail to give Opposer fair notice of the grounds for such defenses under Fed. R. Civ. P. 8.
`
`Philanthropist.com, Inc. v. Gen. Conf. Corp. of Seventh-Day Adventists, 2021 USPQ 2d 643, n.6 (TTAB
`
`2021) (“attempt to reserve the right to add defenses is improper under the Federal Rules of Civil
`
`Procedure, because that would not give ... [plaintif] fair notice of such defenses.”). Second, amendment
`
`of pleadings including defenses and counterclaims is governed strictly by Fed. R. Civ. P. 15. 37 C.F.R.
`
`§ 2.107(a). To assert new airmative defenses after the iling of the answer, a defendant must move to
`
`amend its pleading. J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577 (TTAB 1975) (if applicant
`
`learns through discovery that grounds exist for counterclaim or defense, applicant may move to amend
`
`answer).
`
`Accordingly, a party may not “reserve” the right assert airmative defenses at a later date separate
`
`from the standard motion procedures provided for in the Board’s rules and the Federal Rules of Civil
`
`Procedure, and the standard utilized by the Board in considering such motions. Applicant’s reservation of
`
`rights must therefore be stricken.
`
`3.
`
`Conclusion
`
`For the reasons provided in this Motion, Opposer NOW! Media, Inc., respectfully requests that
`
`the Board strike from Applicant’s Answer the second through seventh airmative defenses and
`
`Applicant’s purported reservation of the right to amend its airmative defenses.
`
`20975774.1
`
`5
`
`

`

`
`
`
`
`
`
`Respectfully submitted,
`
`OPPOSER NOW! MEDIA, INC.
`
`
`
`By:
`/s/ Justin hiele
` Noel M. Cook
`ncook@hansonbridgett.com
`Justin P. hiele
`Jthiele@hansonbridgett.com
`Attorneys for Opposer NOW! Media, Inc.
`
`HANSON BRIDGETT LLP
`425 Market Street, 26th Floor
`San Francisco, California 94105
`Tel.: (415) 777-3200
`
` Date: July 10, 2024
`
`
`
`20975774.1
`
`6
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I, Justin hiele, hereby certify that true and correct copies of the foregoing Motion to Strike
`Second through Seventh Airmative Defenses and Reservation of Rights were served on the parties listed
`below by mailing said copies on July 10, 2024 via email to:
`
`JEREMY PETER GREEN ECHE
`JPG LEGAL
`163 23RD STREET, GROUND FLOOR
`BROOKLYN, NY 11232
`UNITED STATES
`docket@jpglegal.com
`
`Dated: July 10, 2024
`
`
`
`
`/s/ Justin hiele
`Justin hiele
`
`20975774.1
`
`7
`
`