Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA32802
`
`Filing date3
`
`05/] 1/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92044444
`
`Defendant
`LASALLE BUSINESS CREDIT, LLC
`LASALLE BUSINESS CREDIT, LLC
`§ 135 SOUTH LASALLE STREET
`CHICAGO, IL 606034105
`
`Alfred R Cowger, Jr
`Finanz St Hon0re', BV
`Correspondence Suite 115 395 Oak Hill Road
`Address
`Mountain Top, PA 18707
`i UNITED STATES
`ARCOWGER@DANACLASSICS.COM
`Motion to Dismiss - Rule 12(b)
`Alfred R. Cowger, Jr.
`
`Submission
`Filer's Name
`
`Filer's e-mail
`
`arcoWger@danac1assics.corn
`
`/Alfred R Cowger Jrl
`
`Signature
`“Date
`llililllseeibl;
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No. 854,850 Baby Soft
`
`JOHNSON & JOHNSON,
`
`Petitioner,
`
`FINANZ ST. HONORE, B.V.
`
`Respondent.
`
`Cancellation No. 92044444
`
`MOTION OF RESPONDENT TO DISMISS
`
`PURSUANT TO FRCP 12(b)(1) and 12(b)(6)
`
`Now comes Respondent Finanz St. Honore, B.V. (hereinafter “Finanz”) and
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`moves this Board to dismiss the Petition to Cancel of Petitioner Johnson & Johnson
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`(hereinafter “J ohnson). This motion is based on the following:
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`1. To the extent that Johnson is asserting that the registration and renewal of
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`Finanz’s registered trademark “Baby Soft”, as referenced above, (hereinafter the
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`“Trademark”) was based on fraud or has been abandoned, Johnson has no standing to
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`bring such a claim, and thus the Petition should be dismissed pursuant to FCRP l2(b)(l);
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`and,
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`2. To the extent that Johnson is asserting Finanz’s registered trademark is merely
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`descriptive, Johnson’s claim is barred by the time limitations of 15 U.S.C. 1064, and thus
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`

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`Johnson has failed to state a claim, and the Petition should be dismissed pursuant to
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`FCRP l2(b)(6).
`
`A brief in support of this Motion is attached hereto.
`
`Respectfully submitted,
`
`May 11, 2005
`
`Alfred R. Cowger, Jr.
`Managing Director and Attorney for
`Finanz St. Honore, B.V.
`
`395 Oak Hill Road, Suite ll5
`
`Mountain Top, PA 18707
`PH: 570-474-6540
`
`FAX: 570-474-6819
`
`Certificate of Service
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
`MOTION OF RESPONDENT TO DISMISS PURSUANT TO FRCP l2(b)(l) and
`
`l2(b)(6), including the Brief in Support, was served on counsel for Petitioner Johnson &
`Johnson, Luna M. Samman, at Drinker Biddle & Reath LLP, 1500 K Street, N.W., Suite
`
`ll00, Washington, DC 20005, on this llth day of May, 2005, by regular U.S. mail,
`postage prepaid.
`
`Alfred R. Cowger, Jr.
`Managing Director and Attorney for
`Finanz St. Honore, B.V.
`
`395 Oak Hill Road, Suite ll5
`
`Mountain Top, PA 18707
`PH: 570-474-6540
`
`FAX: 570-474-6819
`
`

`
`BRIEF IN SUPPORT OF MOTION TO DISMISS
`
`I. SUMMARY OF ARGUMENT
`
`Johnson’s Petition is based on three grounds which are all subject to dismissal
`
`under FRCP 12. First, Johnson has petitioned for cancellation of the Trademark because
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`the registration and renewals were fraudulently obtained (Petition, para. 2-6), or because
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`Finanz has abandoned the Trademark (Petition, para. 7-8). However, because Finanz
`
`owns a total of seven registered trademarks for “Baby Soft” or “Love’s Baby Soft”, two
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`of which are in International Class 3, even if the Trademark were cancelled, Johnson
`
`would have no right to use or register an alternative “Baby Soft” trademark. Therefore,
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`Johnson cannot be harmed by the existence of the Trademark, and thus has no standing to
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`bring this cancellation proceeding. As such, the part of its petition based on these
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`grounds should be dismissed pursuant to FRCP l2(b)(l).
`
`Second, the remaining basis of the Petition fails to state a claim upon which relief
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`may be granted. Johnson has asserted that the descriptiveness of the Trademark is
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`grounds for Cancellation (para. 9). However, the Trademark was registered on August
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`13, 1968. As such, pursuant to 15 U.S.C. 1064, the Trademark cannot be cancelled on
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`the grounds it is descriptive. Thus, the part of the Petition based on this claim should be
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`dismissed pursuant to FRCP l2(b)(6).
`
`II. ARGUMENT
`
`A. Johnson Does Not Have Standing to Bring This Petition.
`
`Because Johnson could not use a “Baby Soft” trademark even if the Trademark
`
`were cancelled, it cannot suffer harm based on a fraudulent registration and renewal of
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`

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`the Trademark, or the alleged abandonment of the Trademark, and thus has no standing to
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`bring this Petition. Under 15 U.S.C. 1064, a party can only seek cancellation of a
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`trademark if the existence of that trademark is damaging to the petitioner. This
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`requirement is consistent with the general principle under federal law that, to haVe
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`standing to bring a claim, a party must show that:
`
`1.
`
`the petitioner has suffered an injury;
`
`2.
`
`there is a nexus between the injury and the matter complained of; and,
`
`3.
`
`the injury will be redressed by the remedy requested.
`
`Joint Stock Society V. UDV North America, Inc., 266 F.3d 164, 172 (3d Cir. 2001). In
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`the context of a trademark cancellation proceeding, a party seeking to cancel a trademark
`
`because that registration is blocking the petitioner’s trademark use will not haVe standing
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`unless it would haVe the right to use that trademark after the cancellation occurred.1
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`AVedis Zildjian Co. V. Fred Gretsch Manufacturing Co., 251 F.2d 530 (2nd Cir. 1958);
`
`Prince Dog and Cat Food Co. V. Central Nebraska Packing Co., 305 F.2d 904, 907
`
`(CCPA 1962); PAN AM World Airways V. Eclipse Holdings Inc., 1998 U.S.Dist. LEXIS
`
`5871 (SDNY 1998) (attached hereto as Ex. “A”); HaVana Club Holding SA V. Jimmy
`
`Buffett, 2003 TTAB LEXIS 129 (TTAB 2003) (attached hereto as Ex. “B”).
`
`HoweVer, because of Finanz’s other registered “Baby Soft” trademarks, Johnson
`
`will be barred from using its own “Baby Soft” brand name, and thus the cancellation of
`
`the Trademark will not lift the bar to J ohnson’s use of its trademark. Specifically, in
`
`1 Finanz concedes that, as the manufacturer of similar products to those coVered by the Trademark, Johnson
`would haVe standing to pursue a cancellation based on descriptiveness. HoweVer, such a claim is barred by
`the time limitations of 15 U.S.C. 1064, and thus cannot be a basis for standing in this matter. E Part B
`below.
`
`

`
`addition to the Trademark, Finanz owns the following other registered “Baby Soft”
`
`trademarks:
`
`Registered
`Trademark
`
`Registration
`@
`
`In_t’l
`Class
`
`Description of Goods
`
`LOVE'S BABY
`SOFT
`
`LOVE'S BABY
`SOFT
`
`LOVE'S BABY
`SOFT
`LOVE'S BABY
`SOFT
`
`2891127
`
`14
`
`Jewelry, namely watches.
`
`2851887
`
`18
`
`Cosmetic bags sold empty, travel bags, handbags and
`clutch purses.
`
`2659795
`
`2489370
`
`16, 18
`
`16: Stationery, pens and notecards.
`18: Backpacks, totes and wallets.
`16, 18, 16: Pencils, eraser, notebooks and decals.
`26
`18: Purses.
`26: Barrettes.
`
`LOVE'S BABY
`SOFT
`
`1199240
`
`LOVE'S BABY
`SOFT
`
`1746723
`
`3
`
`3
`
`Perfume, cologne, hair shampoo and cream rinse,
`bubble bath, body lotion, body talcum powder and
`facial cleanser.
`
`Cologne spray, light cologne splash, body mist,
`cologne mist, skin moisturizing lotion, body wash,
`body powder, personal deodorant, perfume, all over
`body spray, and gift sets containing two or more of
`these products.
`
`Two of these registrations are in International Class 3, the exact same class of goods for
`
`which Johnson is seeking a registration for its “Baby Soft” trademark. In fact, the goods
`
`described include lotion and body wash (Reg. Nos. 1199240 and 1746723), the exact
`
`same goods also described in J ohnson’s trademark application. Given these other
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`trademark registrations, including those in International Class 3 for exactly the same
`
`goods as J ohnson’s application, it is clear that a cancellation of the Trademark will have
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`still not give rise to any right of Johnson to use this trademark. As such, Johnson cannot
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`have been harmed by the Trademark registration and will have no new rights or remedies
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`should the Trademark be cancelled. Thus, Johnson has no standing to bring this action,
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`and the Petition should be dismissed pursuant to FRCP 12(b)(l).
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`

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`B. Johnson’s Petition Based on Descriptiveness is Time—Barred.
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`Johnson’s final basis for its Petition is time—barred by 15 U.S.C. §l064, and thus
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`must be dismissed as a failure to state a claim. J ohnson’s last basis for its Petition is that
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`“that the “Baby Soft” trademark is merely descriptive:
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`9. The term “baby soft” is used ubiquitously as a descriptive term to describe
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`personal care products (including hair care products) by numerous competitors,
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`including Johnson. . ..
`
`Section 14 of the Lanham Act is clear that a registered trademark may not be cancelled
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`on the grounds of descriptiveness after a period of five years from the date of the
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`registration. 15 U.S.C. §l064. As the records of the U.S. Patent and Trademark Office
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`indicate, the Trademark was registered on August 13, 1968, over thirty—siX years prior to
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`the filing of Johnson’s Petition to Cancel. J ohnson’s prayer to cancel the Trademark on
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`the grounds of descriptiveness is time—barred, and thus fails to state a claim upon which
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`relief may be granted.
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`111. CONCLUSION
`
`Because Johnson has no standing to seek a cancellation of Finanz’s Trademark on
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`the grounds of fraud or abandonment, and because Johnson’s claim of descriptiveness
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`does not state a claim upon which relief may be granted, Johnson’s Petition to Cancel
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`must be dismissed pursuant to FRCP l2(b).
`
`Respectfully submitted,
`
`Alfred R. Cowger, Jr.
`
`

`
`Exhibit “A”
`
`1998 U.S. Dist. LEXIS 5871,
`
`PAN AMERICAN WORLD AIRWAYS, INC., Plaintiff, -against- ECLIPSE
`HOLDINGS, INC., Defendant. ECLIPSE HOLDINGS, INC., DAVID LOCKWOOD,
`DAVID SCOTT and RICHARD BARTEL, Counterclaim Plaintiffs, -against- PAN
`AMERICAN WORLD AIRWAYS, INC., Counterclaim Defendant.
`
`95 Civ. 2763 (LMM)
`
`UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW
`YORK
`
`1998 U.S. Dist. LEXIS 5871
`
`April 24, 1998, Decided
`April 27, 1998, Filed
`
`[*1] Plaintiff's motion for summary judgment on complaint
`DISPOSITION:
`and permanent injunction granted. Plaintiff's motion for summary judgment
`on counterclaims granted in part and denied in part. EcIipse's motion to
`amend granted and BarteI's motion to amend denied. Mr. Bargman's motion
`to be relieved granted.
`
`CASE SUMMARY
`
`PROCEDURAL POSTURE: Plaintiff assignee sought summary judgment on
`its complaint against defendant assignors for failure to comply with
`contractual obligations and a permanent injunction requiring defendants to
`execute documents to record a trademark assignment. Plaintiff also moved
`for summary judgment on defendants‘ counterclaims of fraudulent
`inducement, promissory estoppel, and breach of contract. Defendants
`sought leave to amend their answer and counterclaim.
`
`OVERVIEW: In negotiating a trademark assignment, plaintiff assignee
`signed a letter of intent, promising to negotiate with defendants, company
`and individuals, regarding a licensing arrangement. The parties did not
`reach an agreement regarding licensing and defendants refused to execute
`documents necessary to record the trademark assignment. Plaintiff sought a
`permanent injunction and defendants filed various counterclaims. Plaintiff
`moved for summary judgment. The court granted a permanent injunction
`requiring defendant company to execute all documents necessary because
`the letter of intent did not relieve it of its duty to perform under the
`purchase agreement. Defendant corporation's could amend its pleadings
`because it raised relevant facts and allegations. Partial summary judgment
`was granted to plaintiff because defendants failed to state a claim for
`fraudulent inducement under Florida law and their reliance on plaintiff's oral
`promise to grant a license was neither reasonable nor foreseeable. There
`was a genuine issue of material fact concerning whether plaintiff fulfilled its
`contractual obligation to negotiate a license. Accordindlv. summarv
`
`

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`judgment was denied on that counterclaim.
`
`OUTCOME: The court partially granted plaintiff assignee's motion for
`summary judgment, granting it a permanent injunction requiring defendant
`company to execute documents for recording a trademark, and dismissing
`the counterclaims of defendants, company and individuals, for fraudulent
`inducement and promissory estoppel. Plaintiff was denied summary
`judgment on the breach of contract claim and defendant company was
`granted leave to amend.
`
`CORE TERMS: counterclaim, letter of intent, summary judgment, charter,
`execute, negotiate, negotiation, license, licensing agreement, recording,
`trademark, airline, permanent injunction, promissory estoppel, fraudulent,
`inducement, relieved, license to use, duty, proposed amendment, motion to
`amend, assignment-in-gross, assigned, amend, abandonment, purchaser,
`preliminary injunction, specific intent, material fact, right to use
`
`LexisNexis(R) Headnotes + Hide Headnotes
`
`Civil Procedure > Summary Judgment > Summary Judgment Standard
`’J’”’.t. Summary judgment should be granted only where the pleadings,
`depositions, answers to interrogatories, and admissions on file,
`together with the affidavits,
`if any, show that there is no genuine issue
`of material fact and that the moving party is entitled to judgment as a
`matter of law. Fed. R. Civ. P. 56(c). In making a determination upon a
`motion for summary judgment, a district court must resolve all
`ambiguities and draw all reasonable inferences in favor of the non-
`moving party. However, the mere existence of some alleged factual
`dispute between the parties will not defeat an otherwise properly
`supported motion for summary judgment; the requirement is that
`there be no genuine issue of material fact. More Like This Headnote
`
`Civil Procedure > Summary Judgment > Summary Judgment Standard
`“"’2.?. In a contract dispute, a motion for summary judgment is to be granted
`where the agreement's language is unambiguous and conveys a
`definite meaning.
`If a contract is unambiguous, its proper
`interpretation is a question of law that may be resolved by the district
`
`court on summary judgment. More Like This Headnote
`
`Trademark Law > Protection of Rights > Abandonment > Intentional Nonuse
`Trademark Law > Conveyances > Assignments
`Trademark Law > Subject Matter > Distinctiveness > General Overview
`””‘ZtA trademark may be deemed abandoned by virtue of an assignment-
`in—gross, loss of distinctiveness, or non-use of the mark. More Like
`This Headnote
`
`Trademark Law > U.S. Trademark Trial &_‘_Appeal Board
`Proceedings > Cancellations > Standing
`
`

`
`Civil Procedure > Justiciability > Standing
`Trademark Law > Federal Unfair Competition Law > Lanham Act > Standing
`“N”-.-i’. When a plaintiff has no right to use a name shown in a registered
`trademark of a defendant, that plaintiff has no standing to seek
`cancellation of the trademark. More Like This Headnote
`
`Civil Procedure > Pleading & Practice > Pleadings > Amended Pleadings
`'”"”5.1l:. Leave to amend a complaint shall be freely given when justice so
`requires, Fed. R. Civ. P. 15(a), and if the plaintiff has at least colorable
`grounds for relief, justice does so require unless the plaintiff is guilty of
`undue delay or bad faith or unless permission to amend would unduly
`prejudice the opposing party. Leave to amend need not be granted,
`
`however, where the proposed amendment would be futile. More Like
`This Headnote
`
`Torts > Business & Employment Torts > Deceit & Fraud
`”""5;t Under Florida law, a false statement amounting to a promise to do
`something in the future is not actionable fraud. Rather, a
`misrepresentation must ordinarily relate to a past or existing fact to be
`
`the basis of a claim for relief sounding in fraud. More Like This
`Headnote
`
`Torts > Business & Employment Torts > Deceit & Fraud
`'””7...§‘!'. Under Florida law, a promise may be the basis for fraud where there is
`evidence that the promisor had a specific intent not to perform at the
`
`time the promise was made. More Like This Headnote
`
`Contracts Law > Consideration > Promissory Estoppel
`”""‘3..;‘t'.A promise which the promisor should reasonably expect to induce
`action or forbearance on the part of the promisee or a third person and
`which does induce such action or forbearance on the part of a
`promisee or a third person is binding if injustice can be avoided only by
`enforcement of the promise. The promisor is affected only by reliance
`which he does or should foresee, and enforcement must be necessary
`to avoid injustice. Satisfaction of the latter requirement may depend
`on the reasonableness of the promisee's reliance. More Like This
`Headnote
`
`COUNSEL: For PAN AMERICAN WORLD AIRWAYS, INC., plaintiff: Doreen L.
`Costa, Brumbaugh, Graves, Donohue & Raymond, New York, NY.
`
`For PAN AMERICAN WORLD AIRWAYS, INC., counter—defendant: Doreen L.
`Costa, Brumbaugh, Graves, Donohue & Raymond, New York, NY.
`
`JUDGES: Lawrence M. McKenna, U.S.D.J.
`
`OPI NI ONBY: Lawrence M. McKenna
`
`

`
`OPINION: MEMORANDUM AND ORDER
`
`MCKENNA, D.J.
`
`|nc., a
`Plaintiff and Counterclaim Defendant Pan American World Airways,
`Delaware corporation ("Pan American Delaware") moves for summary
`judgment and a permanent injunction requiring defendant Eclipse Holdings,
`Inc. ("Eclipse") to execute documents necessary to record in numerous
`countries worldwide a trademark assignment made by Eclipse to Pan American
`Delaware.
`
`Eclipse opposes plaintiff's motion and moves for leave to amend its answer
`and counterclaims. Counterclaim plaintiffs David Lockwood ("Lockwood"),
`David Scott ("Scott"), and Richard [*2] Bartel ("Bartel"), although no longer
`defendants in this action, join in the cross-motion of Eclipse. n1 Bartel also
`moves to amend the answer and the counterclaims. n2
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`— --Footnotes-—---—---—---—-
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`n1 This Court's Memorandum and Order dated March 25, 1996 ("1996
`Memorandum") dismissed the complaint as to Lockwood, Scott, and Bartel,
`but their counterclaims remained pending. These parties now appear pro se.
`
`n2 In its Memorandum of February 5, 1998 the Court accepted all papers filed
`as of that date, including Eclipse's amended opposition papers and papers filed
`by the individual counterclaim plaintiffs. On March 10, 1998, Bartel filed
`another motion for leave to supplement Eclipse's and the counterclaim
`plaintiffs‘ pleadings. On March 18, 1998, plaintiff submitted an opposition to
`this motion. The Court considers Bartel's motion for leave to amend in Part II.
`G. of this Memorandum.
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`— --EndFootnotes————-—--—-————
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`In addition to moving for summary judgment on the complaint, Pan American
`Delaware moves for summary judgment on the counterclaims.
`
`David W. Bargman,
`counsel for Eclipse.
`
`[*3] Esq., counsel for Eclipse, moves to be relieved as
`
`For the reasons stated below, the Court grants plaintiff's motion for summary
`judgment on the complaint and a permanent injunction. The Court grants in
`part and denies in part plaintiff's motion for summary judgment on the
`counterclaims. The Court grants Eclipse's motion to amend and denies Bartel's
`motion to amend. The Court grants Mr. Bargman's motion to be relieved.
`
`I. BACKGROUND
`
`This Court discussed the parties‘ agreements in its 1996 Memorandum (see
`supra note 1) and familiarity with the facts there described is assumed.
`Because the Court reached the factual findings of the 1996 Memorandum
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`10
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`

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`upon plaintiff's motion for a preliminary injunction, these facts may be
`considered by the Court upon a motion for summary judgment, see Lanvin,
`Inc. v. Colonia,
`|nc., 776 F. Supp. 125, 127 (S.D.N.Y. 1991), but are not
`determinative at the summary judgment stage. See Dorsey v. McQuillian,
`1997 U.S. Dist. LEXIS 19849, 1997 WL 772779 (S.D.N.Y. Dec. 15,
`1997)(internal citations omitted). The Court thus considers anew the
`previously discussed facts that are relevant to the present motions as well as
`the additional allegations and facts [*4] now presented.
`
`On January 5, 1996 Pan American Delaware filed a motion for a preliminary
`injunction alleging that Eclipse's refusal to comply with its contractual
`obligation to execute certain documents placed Pan American Delaware at
`imminent risk of losing its trademark registrations ("the Marks") n3 and being
`unable to enforce the Marks against infringers and other third party users of
`confusingly similar marks.
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`— --Footnotes-—---—---—---—-
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`n3 As explained in the 1996 Memorandum, Eclipse assigned to Pan American
`Delaware certain trademarks, trade names, service marks, and worldwide
`
`registrations therefore ("the Marks") and other property. See 1996 Mem. at 2-
`4.
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`— --EndFootnotes---—---—---—--
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`In its 1996 Memorandum, this Court granted Pan American Delaware's motion
`for a preliminary injunction and ordered Eclipse to execute, without
`amendment or modification, documents prepared for recording the
`assignment of the Marks in South and Central American countries. Pursuant to
`the 1996 Memorandum, Eclipse executed the documents necessary for
`recording the Marks in South [* 5] and Central American countries. (Quigley
`Aff. P 7).
`
`Now requesting a permanent injunction, Pan American Delaware contends that
`the process of recording the assignment of the Marks is ongoing, and that it is
`likely, pursuant to the practices of local trademark offices in the numerous
`countries, that additional documents will be required to perfect the change of
`title to the Marks. (Pl. Mem. at 5-6; Quigley Aff. PP 7-8). Perfection of title will
`enable Pan American Delaware to enforce its rights against counterfeiting and
`other third party uses of the Marks (Pl. Mem. at 7), and to enter into
`assignments, licenses, franchise agreements, and other business ventures
`involving the Marks. (Pl. St. Facts, Exh. 2). According to Pan American
`Delaware, a permanent injunction requiring Eclipse to execute all documents
`necessary for recording the assignment of the Marks will secure to it these
`rights and protections, which, as owner of the Marks, are its due.
`
`Contesting this request for a permanent injunction, Eclipse argues, inter alia,
`that Pan American Delaware failed to fulfill its obligations under the parties‘
`agreements, thus relieving Eclipse of its duty to perform. Two
`agreements [*6] are at issue: a December 20, 1993 agreement ("Asset
`Purchase Agreement") by which Eclipse assigned to Cobb Partners, Inc.
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`11
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`

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`("Cobb") (predecessor-in-interest to Pan American Delaware n4 all of the
`right, title and interest in and to the Marks (Pl. Stat. Facts, Exh. 1); and a
`December 20, 1993 agreement between Cobb and Eclipse (entitled "Proposed
`Licensing Arrangement for Pan Am Charter")("Letter of Intent''),
`contemplating the negotiation of a license to use the Marks to a new company
`owned by Eclipse and Scott. n5 (Pl. Stat. Facts, Exh. 3).
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`— --Footnotes-—---—---—---—-
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`n4 On December 29, 1993, Cobb and Eclipse assigned all of their rights and
`obligations under the Asset Purchase Agreement to Pan American Delaware.
`(Cobb Aff. P6; Pl. Stat. Facts, Exh. 2; 1996 Mem. at 4).
`
`n5 The new company, entitled "Newco," was to be 50% owned by Eclipse and
`50% owned by Scott. (Pl. St. Facts, Exh. 3 at 1).
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`— --EndFootnotes————-—--—-————
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`Eclipse argues that these two agreements were integrated so that Pan
`American Delaware's failure to comply with the terms of the Letter of
`Intent [*7]
`relieved Eclipse of its duty to perform under the Asset Purchase
`Agreement. Eclipse also argues that it was relieved of its duty to perform
`under the Asset Purchase Agreement due to Pan American Delaware's failure
`to provide the consideration due under that agreement.
`
`In addition to arguing that it has been relieved of its duty to perform under
`the Asset Purchase Agreement, Eclipse claims that Pan American Delaware
`has abandoned the Marks and that the assignment to Pan American Delaware
`is void as an assignment-in-gross.
`
`Eclipse and the other counterclaim plaintiffs also bring three counterclaims.
`First, they allege that Pan American Delaware fraudulently induced Eclipse into
`signing the Asset Purchase Agreement by representing that Eclipse would
`receive a license to use the Marks for a charter airline business. Second, they
`bring a claim for promissory estoppel based on their reliance on Cobb's alleged
`promise to grant Eclipse a license for this charter airline business. Finally,
`Eclipse and the counterclaim plaintiffs contend that Pan American Delaware
`breached the Letter of Intent by failing to negotiate in good faith, as that
`agreement required.
`
`II. DISCUSSION
`
`A. Summary [*8] Judgment Standard Under Fed. R. Civ. P. 56(c)
`
`’””“"47~'Summary judgment should be granted only where "the pleadings,
`depositions, answers to interrogatories, and admissions on file, together with
`the affidavits,
`if any, show that there is no genuine issue of material fact and
`that the moving party is entitled to judgment as a matter of law. Fed. R. Civ.
`Proc. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 91 L. Ed. 2d 265,
`106 S. Ct. 2548 (1986). In making a determination upon a motion for
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`summary judgment, a court must resolve all ambiguities and draw all
`reasonable inferences in favor of the non-moving party. See Matsushita Elec.
`Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 89 L. Ed. 2d 538, 106 S.
`Ct. 1348 (1986). However, "the mere existence of some alleged factual
`dispute between the parties will not defeat an otherwise properly supported
`motion for summary judgment; the requirement is that there be no genuine
`issue of material fact." Anderson v. Liberty Lobby, lnc., 477 U.S. 242, 247-48,
`91 L. Ed. 2d 202,106 S. Ct. 2505 (1986).
`
`““9Tln a contract dispute, a motion for summary judgment is to be granted
`where the agreement's language is unambiguous and conveys [*9]
`a definite
`meaning. John Hancock Mut. Life Ins. Co. v. Amerford |nt'| Corp., 22 F.3d
`458, 461 (2d Cir. 1994). ''If a contract is unambiguous, its proper
`interpretation is a question of law that may be resolved by the Court on
`summary judgment." American Express Travel Related Services Co., Inc. v.
`Accu—Weather, lnc., 849 F. Supp. 233, 239 (S.D.N.Y. 1994) (citing Seiden
`Assoc., Inc. v. ANC Holdings, Inc. 959 F.2d 425, 428 (2d Cir. 1992)).
`
`B. Letter of Intent
`
`Eclipse first alleges that the Letter of Intent furnished consideration for the
`Asset Purchase Agreement so that, in failing to execute its obligations under
`the Letter of Intent, Pan American Delaware lost its rights under the Asset
`Purchase Agreement. (Bartel and Scott Mem. at 4). The Court disagrees.
`
`The Letter of Intent contains the following provision:
`
`The parties hereto will use their best efforts, to negotiate
`exclusively during a period of 180 days in good faith, with the
`goal of preparing and entering into the Licensing Arrangement.
`Cobb Partners and Newco [Eclipse] acknowledge that this letter
`of intent does not create a binding contract and does not create
`rights or benefits in any party,
`[*10] except to the extent the
`parties have agreed to negotiate the Licensing Agreement.
`
`(Cobb Aff. P 9)(emphasis added). This language makes clear that the Letter of
`Intent is not a binding contract, has no bearing on the parties‘ other
`agreements, and does not create rights or benefits in either party, apart from
`the entitlement to good faith negotiations.
`
`The Court accordingly dismisses Eclipse's claim that Pan American Delaware's
`failure to comply with the terms of the Letter of Intent relieved Eclipse of its
`duty to perform under the Asset Purchase Agreement.
`
`C. The Asset Purchase Agreement
`
`The Court now turns to the parties‘ obligations under the Asset Purchase
`Agreement. Pan American Delaware argues that the Asset Purchase
`Agreement requires Eclipse to execute all documents necessary for recording
`the assignment of the Marks. The Court agrees.
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`The Asset Purchase Agreement provides:
`
`Upon the request of Purchaser, and without further
`consideration, the Seller and each Principal Shareholder, shall
`do, execute, acknowledge, and deliver all such further acts,
`assignments, assurances, as may be reasonably necessary or
`desirable, in the sole and absolute [*11] discretion of the
`Purchaser, to consummate the transactions contemplated
`hereby and confirm in the Purchaser the benefits of the rights
`acquired herein .
`.
`.
`
`(Pl. Stat. Facts, Exh. B at 4; 1996 Mem. at 4)(emphasis added). In its 1996
`Memorandum, the Court found that "this provision requires Eclipse to execute
`in favor of the purchaser under the Asset Purchase Agreement documents of
`the nature of those [submitted by plaintiff]". 1996 Mem. at 6. The issue before
`the Court upon plaintiff's request for a permanent injunction is whether this
`provision requires Eclipse to execute documents -- not yet presented to
`defendant or the Court -- that Pan American may consider necessary at some
`future point for recording the assignment of the Marks.
`
`The Court finds that the Asset Purchase Agreement imposes on Eclipse the
`continuing obligation to execute all documents deemed necessary by Pan
`American Delaware for recording the assignment of the Marks. Pan American
`Delaware's entitlement to such documents is guaranteed by the above cited
`provision, which requires Eclipse to "do, execute, acknowledge, and deliver all
`such further acts, assignments, [and] assurances" that Pan American [*12]
`Delaware deems "reasonably necessary or desirable" for recording the
`assignment of the Marks. (Pl. Stat. Facts, Exh. B. at 4; 1996 Mem. at 4).
`
`Having found that the Asset Purchase Agreement imposes on Eclipse the
`continuing obligation to execute all documents deemed necessary by Pan
`American Delaware for recording the assignment of the Marks, the Court
`grants Pan American Delaware summary judgment on this issue and a
`permanent injunction requiring Eclipse to execute such documents. n6
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`n6 Bartel argues that Eclipse cannot supply this relief because the "the assets
`of the Pan American New York and Pan Am have not been transferred to and
`
`perfected in Eclipse." (Bartel Am. Opp. at 15-16). The Court finds this
`argument unpersuasive for several reasons. First, Eclipse has executed the
`documents presented to it by Pan American Delaware thus far. (Quigley Aff. P
`7). Second, and contrary to Bartel's assertion that "the assets" have not been
`perfected in Eclipse, Bartel has stated that "the Pan Am trademarks, etc. were
`assigned to Eclipse Holdings, Inc. as the Court Order specified and were
`perfected in Eclipse Holdings, Inc. at the U.S. Patent and Trademark Office in
`January, 1994." (Bartel Aff. P 5)(emphasis added).
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`D. Failure to make payment
`
`Eclipse also argues that Pan American Delaware failed to furnish the
`consideration required under the Asset Purchase Agreement. The Court
`disagrees.
`
`The Asset Purchase Agreement required Cobb, upon the satisfaction of certain
`conditions, to pay $ 50,000 to Eclipse through check or wire transfer and to
`pay $ 1,325,000 to Pan American World Airways ("Pan American New York")
`and the Pan American Corporation ("Pan Am") through wire transfer or "as
`Pan Am shall otherwise direct." (Pl. St. Facts, Exh.
`1 at 2). Eclipse assets that
`the latter payment "did not occur as specifically required." (Scott & Bartel
`Mem. at 4)
`
`Eclipse has provided no facts in support of this claim, nor has it alleged that
`Pan American New York and Pan Am did not receive the payment. Eclipse has
`stated that it received its $ 50,000 payment. (Bartel Letter of 1/18/1996; Def.
`Cross—Mot., Exh. B)
`
`Since Eclipse has stated that it received the consideration due under the Asset
`Purchase Agreement, and has not shown a failure of other consideration due,
`the Court finds Eclipse's argument unpersuasive.
`
`E. Abandonment
`
`HMTA trademark may be deemed abandoned by virtue of an assignment—in—
`gross,
`[*14]
`loss of distinctiveness or non—use of the mark.
`1 J. McCarthy,
`Trademarks and Unfair Competition, § 17 (4th ed. 1996); see also Dial-A-
`Mattress Operating Corp. v. Mattress Madness, lnc., 841 F. Supp. 1339, 1354-
`1355 (S.D.N.Y. 1994). Eclipse alleges that Pan American Delaware abandoned
`the Marks through non—use and that the assignment of the Marks constituted
`an invalid assignment—in—gross. (Def. Cross-Mot. at 2; Scott & Bartel Mem. at
`4-5; Def. Mem. at 8; Bartel Am. Opp. at 7).
`
`The Court does not reach the merits of these claims because it finds that
`
`Eclipse lacks standing to allege abandonment. "The case law establishes that
`H”*"?~'when a plaintiff has no right to use a name shown in a registered
`trademark of a defendant, that plaintiff has no standing to seek cancellation of
`the trademark." In re Houbigant, Inc. v. ACB Mercantile, lnc., 914 F. Supp.
`997, 1