ESTTA Tracking number:
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`ESTTA1408607
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`Filing date:
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`01/16/2025
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91295292
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Activision Publishing, Inc.
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`JOHN L KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PARKWAY, SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary email: jkrieger@dickinson-wright.com
`Secondary email(s): trademarkslv@dickinson-wright.com, amor-
`etto@dickinson-wright.com, BBathke@dickinson-wright.com
`702-550-4400
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`Motion to Strike Pleading/Affirmative Defense
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`John L. Krieger
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`jkrieger@dickinson-wright.com
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`/John L. Krieger/
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`01/16/2025
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`2025-01-16 Motion to Strike Certain Affirmative Defenses and Motion t o Sus-
`pend Pending Determination on Motion.pdf(167952 bytes )
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Activision Publishing, Inc.,
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`MMMera, Inc.,
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`Opposition No. 91295292
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`Mark: SPACE QUEST
`Ser. No.: 98/046,988
`Published: Jul. 23, 2024
`Class: 009
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`Opposer,
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`Applicant.
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`v.
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`MOTION TO STRIKE CERTAIN AFFIRMATIVE DEFENSES AND MOTION TO
`SUSPEND PENDING DETERMINATION ON MOTION
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`Pursuant to Fed. R. Civ. P. 12(f), Opposer Activision Publishing, Inc. (“Activision” or
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`“Opposer”), moves to strike all of Applicant MMMera, Inc.’s (“Applicant”) Affirmative Defenses
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`listed in Applicant’s Answer on the basis that the asserted defenses are objectively insufficient,
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`improper, and immaterial. (4 TTABVUE 5-6.) The Board’s determination of this motion will
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`affect the scope of discovery, therefore, Opposer also moves to suspend proceedings until this
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`motion is decided.
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`I. RELEVANT BACKGROUND
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`Applicant filed the subject application (Application Serial No. 98/046,988) (“the ‘988
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`Application”), on June 16, 2023, seeking to register the mark SPACE QUEST for use in connection
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`with “Video game cartridges and discs; Downloadable video game programs; Downloadable video
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`game software; Downloadable video and computer game programs; Downloadable multiplayer
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`video game software; all of the foregoing goods intended for mature adult audiences and none of
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`the foregoing goods intended for nor relating in any manner to education or children's education”
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`in International Class 009 (“Applicant’s Goods”). (See TSDR (Serial No. 98/046,988).)
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`The ‘988 Application was published on July 23, 2024. (See id.) After filing and being
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`granted a 90-day extension of time to Oppose, Opposer timely filed its Notice of Opposition
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`asserting that registration of the ‘988 Application, when used on or in connection with Applicant’s
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`Goods, is likely to cause confusion with Opposer’s SPACE QUEST mark as previously used in
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`connection with Opposer’s computer games and will dilute Opposer’s rights in its famous SPACE
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`QUEST mark. (See 1 TTABVUE.) Opposer further asserted that Applicant committed fraud on
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`the USPTO in seeking to register the ‘988 Application. (See id.)
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`In response to Opposer’s Notice of Opposition, Applicant filed an Answer and Affirmative
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`Defenses on December 31, 2024. (See 4 TTABVUE.) Specifically, Applicant asserts the
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`affirmative defenses of lack of standing (First Affirmative Defense), acquiescence (Second
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`Affirmative Defense), waiver (Third Affirmative Defense), laches (Fourth Affirmative defense),
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`lack of actual damage (Fifth Affirmative Defense), and fair use/first amendment (Sixth Affirmative
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`Defense). (See id. at 5-6.) Applicant’s affirmative defenses, however, are insufficient, immaterial,
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`and improper under the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”),
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`Lanham Act, and binding precedent, and, therefore, should be stricken under Federal Rule of Civil
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`Procedure 12(f) (“Rule 12(f)”) without affording Applicant any opportunity to amend.
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`II. LEGAL STANDARD
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`Pursuant to Fed. R. Civ. P. 12(f), the Board may order stricken from a pleading any
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`insufficient or impermissible defense, or any redundant, immaterial, impertinent or scandalous
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`matter. TBMP § 506.01. The Board may grant a motion to strike or, on its own initiative, strike
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`from a pleading any insufficient defense. See Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289,
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`1292 (TTAB 1999).
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`2
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`III. LEGAL ARGUMENT
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`A. Applicant’s Lack of Standing and Lack of Actual Damage (First and Fifth
`Affirmative Defenses) are Not True Affirmative Defenses.
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`An affirmative defense is an assertion that, if true, will defeat the plaintiff’s claim, even if
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`all of the allegations in the complaint are true. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2D
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`1715, 1720 (TTAB 2008) (quoting Black’s Law Dictionary, p. 430 (7th ed. 1999)). Applicant’s
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`first (lack of standing) and fifth (lack of damage)) defenses are not true affirmative defenses
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`because they assert purported insufficiencies in Opposer’s pleading, rather than a statement of a
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`defense to a properly pleaded claim. Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
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`USPQ2d 1733, 1738, n.7 (TTAB 2001); Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1637
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`(TTAB 2011) (lack of standing is not an affirmative defense, but an element of opposer’s claim.”)
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`Here, Opposer has alleged sufficient facts to show standing and that it has valid grounds for
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`seeking denial of Applicant’s registration. See Saint-Gobain Abrasives, Inc. v. Unova Indus.
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`Automation Sys., Inc., 66 USPQ2d 1355, at *3 (TTAB 2003). In fact, Opposer has set forth several
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`paragraphs explaining its standing and included extensive factual allegations describing the
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`decades of prior use of the SPACE QUEST mark by Opposer and its predecessors-in-interest, how
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`Applicant made misrepresentations in order to falsely procure a registration, how Applicant’s mark
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`dilutes Opposer’s rights in its mark, and how consumer confusion will result if Applicant’s mark
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`is allowed to register. (See, generally, 1 TTABVUE.) Opposer has sufficiently plead its notice of
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`opposition, therefore, the Board must strike Applicant’s first affirmative defense for failure to state
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`a claim.
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`In addition, as to Applicant’s lack of actual damage affirmative defense, there is no
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`requirement that actual injury, impact, or damage be proved in order to prevail in an opposition.
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`See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
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`3
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`Cir. 1987); International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ
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`1017 (Fed. Cir. 1984). In its likelihood of confusion claim, Opposer pleads that it will be damaged
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`by registration of the ’988 Application (1 TTABVUE 7, ¶ 29), which Applicant denies (4
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`TTABVUE 4, ¶ 14). Accordingly, Applicant’s Fifth Affirmative Defense is a conclusory and
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`baseless allegation that should be stricken as improper, immaterial, and insufficient.
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`B. Affirmative Defenses of Acquiescence, Waiver, and Laches (Second, Third,
`and Fourth Affirmative Defenses) Are not Available in an Opposition
`Proceeding.
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`It is well-established that the defenses of acquiescence, waiver, and laches are not available
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`to a defendant in a timely-filed opposition proceeding because these defenses start to run from the
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`time of knowledge of the application for registration, namely, from the time the mark is published
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`for opposition, not from the time of knowledge of use. See, e.g., TBMP 311.02(b)(1) (“In Board
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`opposition proceedings, [equitable] defenses start to run from the time of knowledge of the
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`application for registration (that is, from the time the mark is published for opposition), not from
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`the time of knowledge of use.”). See also Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC,
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`17 F.4th 129, 142 (Fed. Cir. 2021) (“Laches and acquiescence are generally not available as
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`defenses in an opposition proceeding, given that the clock for laches begins to run from the date
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`the application is published for opposition.”); National Cable Television Ass’n v. American
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`Cinema Editors, Inc., 937 F.2d 1572, 1581 (Fed. Cir. 1991) (holding laches runs from the time
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`action could be taken against the acquisition of trademark rights which flow from registration of
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`the mark); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 n.14 (TTAB 2007)
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`(holding defenses of laches, acquiescence, or estoppel generally are not available in an opposition
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`proceeding); Ohio, 51 USPQ2d at 1295 (“[L]aches can only begin from the first time when opposer
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`could object to registration; i.e. the date when an application is published for opposition”); Clot
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`4
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`Co. Ltd. v. Kclot Inc., Opposition No. 91277830, 2022 WL 17175403, at *2 (TTAB Nov. 16, 2022)
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`(finding the affirmative defenses of laches, waiver, acquiescence, and estoppel are not available in
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`an opposition proceeding).
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`Here, Applicant’s Notice of Opposition was timely filed. In no way “was the delay
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`between publication and opposition undue or prejudicial to applicant’s rights.” DAK Indus., Inc.
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`v. Daiichi Kosho Co., 25 USPQ2d 1622, 1624 (TTAB 1992).
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`Further, even if these affirmative defenses were available in a timely-filed opposition
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`proceeding, Applicant has failed to allege sufficient facts to properly allege these defenses. A
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`pleading of acquiescence requires (1) an affirmative act by a party that it would not assert a right
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`or claim, (2) the delay between the active representation and assertion of the right or claim was
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`not excusable, and (3) the delay caused the other party undue prejudice. See DAK Indus. Inc., 25
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`USPQ2d at 1625; see also Christian Broad. Network, Inc., 84 USPQ2d at 1573. Applicant has not
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`adequately pleaded acquiescence because it does not allege any conduct by Opposer, let alone
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`“conduct that expressly or by clear implication consents to, encourages, or furthers the activities
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`of the defendant.” Nahshin v. Prod. Source Int’l, LLC, 107 USPQ2d 1257, 1263 (TTAB 2013)
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`(emphasis added) (quoting Panda Travel, Inc. v. Resort Option Enters., Inc., 94 USPQ2d 1789,
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`1797 n.21 (TTAB 2009)) (other citation omitted). In particular, Applicant does not point to any
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`affirmative act by Opposer that it would not assert a right or claim.
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`Similarly, a pleading of laches requires a showing of undue delay and prejudice. Christian
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`Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1572 (TTAB 2007) As
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`noted above, Applicant has not asserted any facts supporting either element.
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`Finally, a pleading of waiver requires (1) an existing right; (2) knowledge of the right; and
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`(3) an actual intention to relinquish the right. 28 Am.Jur.2d Estoppel and Waiver § 201; see also
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`5
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`Kristin Marie Conolty d/b/a Fairway Fox Golf v. Conolty O'Connor NYC LLC, 111 USPQ2d 1302,
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`1310 (TTAB 2014) (denying waiver claim because there was no evidence that Opposer ever agreed
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`to Applicant’s registration or use of the mark). Applicant has failed to allege any facts supporting
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`its waiver claim.
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`Accordingly, Applicant’s affirmative defenses of acquiescence, waiver, and laches are not
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`available in this opposition proceeding as a matter of law, and alternatively, are improperly plead,
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`and should be stricken. See Clot Co. Ltd., 2022 WL 17175403, at *2 (granting opposer’s motion
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`to strike affirmative defenses of laches, waiver, acquiescence, and estoppel because these defenses
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`are not available in an opposition proceeding); Rheem Mfg. Co. v. Emax, Inc., No. 91247242, 2021
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`WL 4077800, at *3 (TTAB Sept. 1, 2021) (striking applicant’s affirmative defenses of waiver,
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`laches, and acquiescence).
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`C.
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`The Affirmative Defense of Fair Use Is not Applicable in an Opposition
`Proceeding (Sixth Affirmative Defense).
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`The defense of “fair use” is only available in a trademark infringement lawsuit, and has no
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`applicability in opposition proceedings before the Board, which involve only the issue of
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`registrability of a mark. See, e.g., TBMP 311.02(b)(1) (“The “fair use” defense of Trademark Act
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`§ 33(b)(4), 15 U.S.C. § 1115(b)(4), is a defense available to a defendant in a federal action charged
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`with infringement of a registered mark, and has no applicability in inter partes proceedings before
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`the Board, which involve only the issue of registrability of a mark.”). See also Truescents LLC v.
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`Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006) (finding the defense of fair use is
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`legally unavailable to applicant in an opposition proceeding); Aidin Inc. v. Fabiola Sabogal, No.
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`91277783, 2024 WL 2316592, at *2 (May 8, 2024) (“[T]he fair use defense has no applicability
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`in inter partes proceedings before the Board, which deals solely with the issue of registrability.”).
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`Further, even if the defense were legally available in this proceeding, Applicant cannot rely
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`on it because Applicant seeks to register the applied-for mark and is not purporting to use the
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`applied-for mark in a non-trademark, descriptive manner. See Truescents, 81 USPQ2d at 1338
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`(holding that even if the fair use defense were legally available in an opposition proceeding,
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`applicant cannot rely on it because applicant was not using the mark in a non-trademark,
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`descriptive manner, but instead sought to register the mark). Indeed, “[f]air use under the Lanham
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`Act requires that the alleged infringer prove that the use of the allegedly-infringing term is used
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`‘otherwise than as a mark ... or of a term or device which is descriptive of and used fairly and in
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`good faith only to describe the goods or services of such party....’” 3M Co. v. Mohan, 482 F. App’x
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`574, 579 (Fed. Cir. 2012) (quoting 15 U.S.C. § 1115(b)(4)).
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`Accordingly, Applicant’s affirmative defense of “fair use” has no applicability in an
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`opposition proceeding and should be stricken.
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`D.
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`The Board Should Suspend This Proceeding Until It Rules on This Motion.
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`The Board’s determination on this motion may affect the scope of discovery. Accordingly,
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`Petitioner requests the Board suspend proceedings and reset the schedule after the Board rules. See
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`TBMP 510.03.
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`III. CONCLUSION
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`All of Applicant’s affirmative defenses listed in its Answer are not proper affirmative
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`defenses in an Opposition proceeding. As such, the Board must strike these improper defenses
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`without any opportunity to amend.
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`Dated: January 16, 2025.
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`Respectfully submitted,
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`DICKINSON WRIGHT PLLC
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`By: /John L. Krieger/
`John L. Krieger
`Brady A. Bathke
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`Telephone: (702) 550-4400
`trademarkslv@dickinsonwright.com
`jkrieger@dickinsonwright.com
`bbathke@dickinsonwright.com
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`Attorneys for Opposer
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`CERTFICIATE OF SERVICE
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`I hereby certify that on January 16, 2025, I served a true and correct copy of MOTION TO
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`STRIKE CERTAIN AFFIRMATIVE DEFENSES AND MOTION TO SUSPEND PENDING
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`DETERMINATION ON MOTION on the following counsel of record via email:
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`PEROFF IP
`Bryan Peroff
`169 Madison Avenue, Suite 2478
`New York, NY 10016
`bryan@peroff-ip.com
`docket@peroff-ip.com
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`/s/ Ashley B. Moretto
`An Employee of Dickinson Wright PLLC
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`9
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