Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92054069
`
`Defendant
`
`Skydive Arizona, Inc.
`
`SKYDIVE ARIZONA INC
`4900 N TAYLOR ROAD
`ELOY, AZ 85231
`UNITED STATES
`
`Motion to Dismiss — Rule 12(b)
`Sid Leach
`
`s|each@sw|aw.com,dbarker@sw|aw.com
`/Sid Leachl
`
`07/12/2011
`
`Skydive Arizona Motion to Dismiss Cancellation Petition.pdf ( 14 pages
`)(182856 bytes )
`Exhibit A — Summary judgment decision in Skydive Arizona v Mullins case.pdf (
`35 pages )(1542462 bytes )
`Exhibit B — Judgment entered in Skydive Arizona v Mullins case.pdf (2 pages
`)(46022 bytes )
`Exhibit C — Court decision on damages in Skydive Arizona v Mullins case.pdf (
`16 pages )(796931 bytes )
`Exhibit D — Settlement agreement signed by Marc Hogue.pdf ( 6 pages )(247853
`bytes)
`Exhibit E — Mike Mullins deposition.pdf ( 52 pages )(122736 bytes)
`Exhibit F — Marc Hogue deposition.pdf ( 100 pages )(217694 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA419379
`ESTTA Tracking number:
`07/13/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054069
`Defendant
`Skydive Arizona, Inc.
`
`SKYDIVE ARIZONA INC
`4900 N TAYLOR ROAD
`ELOY, AZ 85231
`UNITED STATES
`Motion to Dismiss - Rule 12(b)
`Sid Leach
`sleach@swlaw.com,dbarker@swlaw.com
`/Sid Leach/
`07/12/2011
`Skydive Arizona Motion to Dismiss Cancellation Petition.pdf ( 14 pages
`)(182856 bytes )
`Exhibit A - Summary judgment decision in Skydive Arizona v Mullins case.pdf (
`35 pages )(1542462 bytes )
`Exhibit B - Judgment entered in Skydive Arizona v Mullins case.pdf ( 2 pages
`)(46022 bytes )
`Exhibit C - Court decision on damages in Skydive Arizona v Mullins case.pdf (
`16 pages )(796931 bytes )
`Exhibit D - Settlement agreement signed by Marc Hogue.pdf ( 6 pages )(247853
`bytes )
`Exhibit E - Mike Mullins deposition.pdf ( 52 pages )(122736 bytes )
`Exhibit F - Marc Hogue deposition.pdf ( 100 pages )(217694 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 3,099,847 (Application Serial No. 76/641,146)
`
`MARK: SKYDIVE ARIZONA
`
`Registered on the Principal Register on June 6, 2006
`
`
`Cancellation No.: 92/054,069
`
`SKYDIVE ARIZONA’S MOTION TO
`DISMISS CANCELLATION
`PETITION
`
`
`
`
`
`
`
`
`
`
`Marc Hogue,
`
`
`
`
`
`
`
`vs.
`
`
`
`
`
`Petitioner,
`
`Skydive Arizona, Inc.,
`
`
`
`
`
`
`Respondent.
`
`Motion
`
`
`
`I.
`
`Respondent Skydive Arizona, Inc. moves, pursuant to Rule 12(b)(6) and Rule 12(d) of
`
`the Federal Rules of Civil Procedure, to dismiss Cancellation No. 92/054,069 filed by Petitioner
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`March Hogue (“Hogue”) for failure to state a claim upon which relief can be granted. In
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`addition, Respondent moves to dismiss Cancellation No. 92/054,069 on grounds that it is barred
`
`by res judicata.
`
`
`
`
`
`
`
`
`1
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`
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`

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`The Board should dismiss the Petition to Cancel filed in this case, pursuant to Rule
`
`12(b)(6) of the Federal Rules of Civil Procedure, for failure to plead sufficient facts to state a
`
`claim upon which relief can be granted. The Petition to Cancel filed in this case contains nothing
`
`more than labels and conclusions, and a formulaic recitation of the elements of a cause of action,
`
`which is insufficient. In addition, the Petition to Cancel filed in this case is barred by res
`
`judicata. The Board is requested to treat this motion to dismiss as a motion for summary
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`judgment pursuant to Rule 12(d) of the Federal Rules of Civil Procedure. Consideration of this
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`motion as a motion for summary is appropriate at this stage of the proceeding because this
`
`motion asserts claim and issue preclusion. Zoba International Corp. v. DVD Format/LOGO
`
`Licensing Corp., 98 U.S.P.Q.2d 1106, 2011 TTAB LEXIS 69, at *4 n.4 (T.T.A.B. 2011) (“[O]ur
`
`consideration of the subject motion as one for summary judgment is appropriate at this stage of
`
`the proceedings because it asserts claim preclusion.”). Trademark Rule 2.127(e)(1) expressly
`
`allows a motion for summary judgment asserting claim or issue preclusion to be made prior to a
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`party making its initial disclosures. 37 C.F.R. §2.127(e)(1).
`
`II.
`
`Background
`
`
`
`Respondent filed Application Serial No. 76/641,146 on June 17, 2005, which registered
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`as Registration No. 3,099,847 on June 6, 2006. The ‘847 registration is for the mark SKYDIVE
`
`ARIZONA.
`
`
`
`The SKYDIVE ARIZONA Registration matured from a use-based application filed under
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`15 U.S.C. § 1051(a), listing a first use date in commerce of 1986. Petitioner Hogue has not
`
`challenged Respondent’s priority.
`
`
`
`The services listed in the SKYDIVE ARIZONA Registration are: “educational services,
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`namely, providing instructions and training in parachuting and skydiving.” The application file
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`is part of the record pursuant to Trademark Rule 2.122(b).
`
`
`
`
`
`
`2
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`
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`

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`On September 28, 2001, Respondent filed a trademark infringement suit against Mike
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`Mullins for infringement of Respondent’s SKYDIVE ARIZONA mark. Exh. A, at 3; Exh. C, at 2
`
`(“On September 28, 2001, Skydive Arizona initiated this lawsuit.”). The trademark infringement
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`suit was styled Skydive Arizona, Inc. vs. Mike Mullins d/b/a Arizona Skydiving, Civil Action No.
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`CIV 01-1854 PHX SMM, in the United States District Court for the District of Arizona. Exh. D,
`
`at 1, ¶3.
`
`Mike Mullins was operating a competing business under the mark “ARIZONA
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`SKYDIVING. A final judgment was entered in favor of Respondent and against Defendant Mike
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`Mullins in that trademark infringement suit. Exh. B. In May 2002, while that trademark
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`infringement suit was pending, Petitioner Hogue purchased the business from Mike Mullins that
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`was at issue in the trademark infringement suit. Exh. D, at 1, ¶2 (“Marc Hogue has entered into
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`an agreement to purchase the business involving the skydiving operations previously conducted
`
`by Mike Mullins under the name of Arizona Skydiving… . Marc Hogue…has effectively taken
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`over the skydiving operations of the business…”). Petitioner Hogue is the successor-in-interest
`
`to Defendant Mike Mullins in the prior trademark infringement suit, and is in privity with
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`Defendant Mike Mullins.
`
`The validity of the SKYDIVE ARIZONA mark was at issue in the trademark
`
`infringement suit. Defendant Mike Mullins asserted as defenses that the mark was invalid
`
`because it was allegedly descriptive of the services and allegedly geographically descriptive, the
`
`same issues that Petitioner Hogue attempts to raise again here in the Petition to Cancel filed in
`
`this proceeding. See Exh. A, at 18. In the trademark infringement suit, the federal court found
`
`that the SKYDIVE ARIZONA mark “describes the activity of skydiving in general, as well as
`
`the location of the service,” but held that the mark was valid because it had acquired secondary
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`meaning. Exh. A, at 18-19.
`
`
`
`
`
`
`3
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`
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`

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`The federal court found that the SKYDIVE ARIZONA mark “has been continuously
`
`used for over 15 years” by Respondent. Exh. A, at 19. The court found that “Skydive Arizona is
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`well known for instructional services and team training.” Exh. A, at 20. The court found that
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`“Skydive Arizona is the largest dropzone in the world, and is well known worldwide.” Exh. A, at
`
`21. Respondent “offered hundreds of pages of exhibits, dating pre-1998, to prove that
`
`[Respondent] advertised heavily both locally and worldwide. Exh. A, at 19. The court found that
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`SKYDIVE ARIZONA hosted several national skydiving events. Exh. A, at 19. The court found
`
`that “Teams sponsored by Skydive Arizona have won approximately three quarters of all the
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`gold metals awarded in freefall events in the United States National Championships and the
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`World Championships since 1994.” Exh. A, at 20. The court found that “Skydive Arizona has
`
`annual non-competition events that attract many skydivers from around the country, and from
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`other countries as well. … These events draw hundreds of skydivers from around the world.”
`
`Exh. A, at 20. The court made findings concerning the extent that Respondent advertised using
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`the SKYDIVE ARIZONA mark. Exh. A, at 20-21. In short, the court found that the evidence
`
`introduced by Respondent showed “a lengthy, continuous, frequent use of the mark, worldwide
`
`recognition, widespread advertising, [and] affiliation with worldwide events.” Exh. A, at 21.
`
`Based upon the evidence introduced in the prior trademark infringement suit, the court
`
`found that “a finding of secondary meaning is appropriate as a matter of law.” Exh. A, at 21.
`
`This finding was necessary to support the court’s judgment. See Exhs. A, B & C.
`
`
`
`While the trademark infringement suit was pending, Petitioner Marc Hogue entered into a
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`Settlement Agreement with Respondent. Exh. D. In that Settlement Agreement, Petitioner agreed
`
`“to immediately change the name of his business to ‘Coolidge Skydiving,’ and will stop using
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`the name ‘Arizona Skydiving’ …”. Exh. D, at 1, ¶4. In return, Respondent agreed it would not
`
`sue Petitioner “for any claim of trademark infringement … based upon the use of the ‘Arizona
`
`
`
`
`
`
`4
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`
`
`

`
`Skydiving’ name in connection with the business purchased by Marc Hogue from Mike
`
`Mullins.” Exh. D, at 1-2, ¶5.
`
`
`
`The Petition to Cancel filed in this case, in the first claim for relief, alleges as the basis
`
`for standing: “Petitioner is harmed by the registration of Respondent’s mark because Petitioner is
`
`unable to offer his goods and services, i.e., skydiving instruction in Arizona, without facing a
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`challenge from Respondent for alleged infringement of Respondent’s mark.” The Petition fails to
`
`meet Hogue’s obligation to provide the grounds of his entitlement to relief. The Petition offers
`
`nothing more than labels and conclusions, and a formalistic recitation of the elements of a cause
`
`of action.
`
`III. The Board Should Dismiss the Cancellation Petition Because Hogue’s Petition to
`Cancel Is Barred by Res Judicata
`
`The doctrine of res judicata includes two concepts: (1) claim preclusion and (2) issue
`
`preclusion. Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320 (Fed. Cir. 2008) (“[T]he
`
`doctrine of res judicata … includes the two related concepts of claim preclusion and issue
`
`preclusion.”) (citation omitted). In this case, both doctrines apply. The Petition to Cancel should
`
`be dismissed because it is barred by claim preclusion. In addition, the Petition to Cancel should
`
`also be dismissed because it is barred by issue preclusion.
`
`A.
`
`Hogue’s Petition to Cancel Is Barred by Claim Preclusion
`
`Under the doctrine of claim preclusion, “a judgment on the merits in a prior suit bars a
`
`second suit involving the same parties or their privies based on the same cause of action.” Jet
`
`Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 U.S.P.Q.2d 1854 (Fed. Cir. 2000), quoting
`
`Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979). Thus, claim preclusion will bar a
`
`party in a second suit if: (1) there is identity of parties (or their privies); (2) there has been an
`
`earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set
`
`of transactional facts as the first. Jet Inc. v. Sewage Aeration Systems, 55 U.S.P.Q.2d at 1856; see
`
`
`
`
`
`
`
`5
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`

`
`also Lawlor v. National Screen Service Corp., 349 U.S. 322 (1955); Flowers Industries, Inc. v.
`
`Interstate Brands Corp., 5 U.S.P.Q.2d 1580 (T.T.A.B. 1987).
`
`Over the years, the doctrine has come to incorporate common law concepts of merger and
`
`bar, extending to those claims or defenses that could have been raised in the prior action. Perma
`
`Ceram Enterprises Inc. v. Preco Industries Ltd., 23 U.S.P.Q.2d 1134, 1138 (T.T.A.B. 1992); see
`
`also Jet Inc. v. Sewage Aeration Systems, 55 U.S.P.Q.2d at 1856.(“Claim preclusion refers to the
`
`effect of a judgment in foreclosing litigation of a matter that never has been litigated, because of
`
`a determination that it should have been advanced in an earlier suit.”).
`
`Factor (1) is met in this case, because Petitioner Hogue is in privity with Mike Mullins,
`
`who was the defendant in a trademark infringement suit brought by Respondent. On September
`
`28, 2001, Respondent filed a trademark infringement suit against Mike Mullins for infringement
`
`of Respondent’s SKYDIVE ARIZONA mark. Exh. A, at 3; Exh. C, at 2 (“On September 28,
`
`2001, Skydive Arizona initiated this lawsuit.”). The validity of the SKYDIVE ARIZONA mark
`
`was at issue in the trademark infringement suit, and Defendant Mike Mullins asserted as
`
`defenses that the mark was invalid because it was allegedly descriptive of the services and
`
`allegedly geographically descriptive, the same issues that Petitioner Hogue attempts to raise
`
`again in the Petition to Cancel filed in this proceeding. In May 2002, while that trademark
`
`infringement suit was pending, Petitioner Hogue purchased the business from Mike Mullins that
`
`was the basis for the trademark infringement suit. Petitioner Hogue is the successor-in-interest to
`
`Defendant Mike Mullins, and purchased the business from Defendant Mullins with knowledge of
`
`the pending trademark infringement suit. Thus, factor (1) is met because there is an identity of
`
`parties or their privities. See John W. Carson Foundation v. Toilets.com, Inc., 94 U.S.P.Q.2d
`
`1942, 2010 TTAB LEXIS 226, at *17-19 (T.T.A.B. 2010).
`
`Factor (2) is clearly met. In the prior trademark infringement action, the federal district
`
`
`
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`
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`6
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`

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`court entered a final judgment in favor of Respondent and against Defendant Mike Mullins on
`
`the defense of descriptiveness, and expressly found that the SKYDIVE ARIZONA mark had
`
`acquired secondary meaning. Exh. B; see also Exh. A.
`
`Factor (3) is also met. Petitioner’s claims in this case are based upon the same set of
`
`transactional facts as the prior trademark infringement suit. Petitioner’s standing is based on the
`
`business that Petitioner purchased from Mike Mullins, the Defendant in the prior trademark
`
`infringement suit. The claims alleged in the Petition to Cancel are the same issues that were
`
`raised as defenses by Mike Mullins in the prior trademark infringement suit. Petitioner alleges
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`that he provides skydiving educational services through business entities including Skydive
`
`Coolidge, Inc. See Petition to Cancel, ¶1. The same evidence would be introduced here by
`
`Petitioner to attempt to show that the SKYDIVE ARIZONA mark is descriptive, as the evidence
`
`that was used by Defendant Mike Mullins in the prior trademark infringement suit. The same
`
`evidence of secondary meaning introduced in the prior trademark infringement suit would be
`
`used here to once again show that the mark SKYDIVE ARIZOINE has acquired secondary
`
`meaning. This cancellation proceeding would merely be a re-litigation of exactly the same issues
`
`previously decided against Petitioner’s predecessor in the prior trademark infringement suit.
`
`“Under the doctrine of res judicata, the entry of a final judgment ‘on the merits’ of a
`
`claim in a proceeding serves to preclude the relitigation of the same claim, cause of action, or
`
`defense, in a subsequent proceeding that involves the same parties or their privities, even when
`
`the prior judgment resulted from the default, consent of the parties, or dismissal with prejudice.”
`
`Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 U.S.P.Q.2d 1106, 2011
`
`TTAB LEXIS 69, at *7 (T.T.A.B. 2011). The Petition to Cancel in this case is an attempt to
`
`relitigate the defenses that Petitioner’s predecessor-in-interest raised in the prior trademark
`
`infringement suit.
`
`
`
`
`
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`7
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`

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`The Petition to Cancel should be dismissed, because (1) Petitioner Marc Hogue is in
`
`privity with Defendant Mike Mullins in the prior trademark infringement suit, (2) an earlier final
`
`judgment was entered on the merits of the claim; and (3) the claims asserted in the Petition to
`
`Cancel are the same as the descriptiveness defenses litigated in the prior suit, and are based on
`
`the same set of transactional facts as the prior lawsuit. The Petition to Cancel is essentially a
`
`collateral attack on the judgment entered in the prior trademark infringement suit, and an attempt
`
`to re-litigate the federal court’s finding of secondary meaning.
`
`B.
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`Hogue’s Petition to Cancel Is Barred by Issue Preclusion
`
`Under the doctrine of issue preclusion, sometimes referred to as collateral estoppel, once
`
`an issue is actually and necessarily determined by a court of competent jurisdiction, that
`
`determination is conclusive in a subsequent proceeding involving the same parties or their
`
`privities. See Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 2011 TTAB LEXIS 195, at *13
`
`(T.T.A.B. June 8, 2011); Int'l Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 220
`
`USPQ 1017, 1019 (Fed. Cir. 1984). The underlying rationale is that a party who has litigated an
`
`issue and lost should be bound by that decision and cannot demand that the issue be decided
`
`again. Mother’s Rest. Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 221 USPQ 394, 397 (Fed. Cir.
`
`1983). That policy is implicated here where Petitioner is attempting to have this Board decide
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`issues that Petitioner’s predecessor already lost on. If this were permitted, a party losing a
`
`trademark infringement suit could merely transfer the business to someone else, and that new
`
`owner of the business could force the trademark owner to relitigate all of the issues that were
`
`already decided against the prior owner of the business.
`
` In order for issue preclusion to apply, the following requirements must be met: (1) the
`
`issue to be determined must be identical to the issue involved in the prior litigation; (2) the issue
`
`must have been raised, litigated and actually adjudged in the prior action; (3) the determination
`
`
`
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`
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`8
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`

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`of the issue must have been necessary and essential to the resulting judgment; and (4) the party
`
`precluded must have been fully represented in the prior action. See Mayer/Berkshire Corp. v.
`
`Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1312-13 (Fed. Cir. 2005); Jet Inc. v.
`
`Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1858-59 (Fed. Cir. 2000); Stephen
`
`Slesinger, Inc. v. Disney Enterprises, Inc., 2011 TTAB LEXIS 195, at *14 (T.T.A.B. June 8,
`
`2011); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1843-44 (TTAB 1995).
`
`In the prior trademark infringement action, the same issues of descriptiveness were
`
`decided. Respondent overcame the defense of descriptiveness by proving that the mark
`
`SKYDIVE ARIZONA had acquired secondary meaning. The federal court’s decision submitted
`
`as Exhibit A shows that the issues are the same, and were actually raised, litigated, and actually
`
`adjudged in the prior trademark infringement suit.
`
`The determination of the issue was necessary and essential to the resulting judgment. The
`
`rejection of the defenses of descriptiveness was necessary and essential to the court’s judgment.
`
`Otherwise, the decision would have been in favor of Mullins.
`
`The interests of Petitioner were fully represented by Hogue’s predecessor-in-interest in
`
`the prior trademark infringement suit. The final requirement is also met if the parties are in
`
`privity, which is the case here.
`
`III. The Board Should Dismiss the Cancellation Petition Because Hogue Has Not Stated
`a Claim Upon Which Relief Can Be Granted
`
`Except as otherwise provided in the Trademark Rules, cancellation proceedings are
`
`governed by the Federal Rules of Civil Procedure. Trademark Rule 2.116(a); Young v. AGB
`
`Corp., 152 F.3d 1377, 1378 n.3, 47 U.S.P.Q.2d 1752, 1754 n.3 (Fed. Cir. 1998). In a
`
`cancellation proceeding, a petition to cancel corresponds to the complaint in a court proceeding.
`
`Trademark Rule 2.116(c). Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a
`
`defendant may move to dismiss a complaint for failure to state a claim upon which relief can be
`
`
`
`
`
`
`
`9
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`

`
`granted.
`
`Under Rule 8(a) of the Federal Rules of Civil Procedure, “a plaintiff must provide a short
`
`and plain statement of the claim showing that the pleader is entitled to relief, in order to give the
`
`defendant fair notice of what the claim is and the grounds upon which it rests.” Totes-Isotoner
`
`Corp. v. United States, 594 F.3d 1346, 1354 (Fed. Cir. 2010) (internal quotations omitted),
`
`quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007).
`
`At the pleading stage, a cancellation petitioner must allege facts in support of a statutory
`
`ground for opposition. The problem with the Petition to Cancel filed in this case is that it merely
`
`alleges conclusions, and does not allege sufficient facts on which Petitioner Hogue would rely to
`
`prove the conclusions. “While a complaint attacked by a Rule 12(b)(6) motion to dismiss does
`
`not need detailed factual allegations, a plaintiff’s obligation to provide the grounds of his
`
`entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the
`
`elements of a cause of action will not do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555-56
`
`(2007) (internal quotations omitted); Totes-Isotoner, 594 F.3d at 1354. “Mere parroting of the
`
`requisite elements without sufficient factual support therefor is insufficient to meet the
`
`requirements” for pleading a claim. McDonnell Douglas Corp. v. National Data Corp., 228
`
`U.S.P.Q. 45, 48 (T.T.A.B. 1985) (Dismissing cancellation petition where “Petitioner has merely
`
`alleged the conclusion, not the facts on which it would rely to prove this conclusion.”).
`
`The precedents of this Board require a petitioner in a cancellation petition to allege
`
`sufficient facts that, if proved, would provide a statutory ground for cancellation. McDonnell
`
`Douglas Corp. v. National Data Corp., 228 U.S.P.Q. 45, 47 (T.T.A.B. 1985) (“[B]ald allegations
`
`in the language of the statute neither give respondent fair notice of the basis for petitioner’s claim
`
`nor set forth sufficient facts to establish the elements necessary for recovery, if proven.”)
`
`(emphasis added). See also Young v. AGB Corp., 152 F.3d 1377, 1380, 47 U.S.P.Q.2d 1752,
`
`
`
`
`
`
`10
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`

`
`1755 (Fed. Cir. 1998) (“[W]e agree with the Board that Young failed to plead any facts relevant
`
`to a statutory ground negating AGB’s entitlement to registration.”) (emphasis added).
`
`In summary, “a complaint must contain sufficient factual matter, accepted as true, to state
`
`a claim to relief that is plausible on its face.” Ashcroft v. Iqbal,129 S. Ct. at 1949 (internal
`
`quotes and citation omitted). See also Zoba International Corp. v. DVD Formay/Logo Licensing
`
`Corp., No. 92051821, 2011 TTAB LEXIS 69, at *1 (T.T.A.B. March 10, 2011).
`
`The Supreme Court’s opinion in Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), is instructive
`
`on the proper analysis that should be applied in determining whether sufficient facts are alleged
`
`to state a claim upon which relief can be granted. The Supreme Court further refined the analysis
`
`by explaining that a two step approach should be followed in deciding a Rule 12 motion to
`
`dismiss. First, the Board should identify allegations that “are no more than conclusions, [and]
`
`are not entitled to the assumption of truth.” Ashcroft v. Iqbal, 129 S. Ct.. at 1950. Second, the
`
`Board should consider the remaining factual allegations, if any, and “determine whether they
`
`plausibly give rise to an entitlement to relief.” Id.
`
`Therefore, Respondent respectfully submits that the Board should first disregard the
`
`conclusions and labels in the Petition to Cancel, and then decide whether the remaining factual
`
`allegations, if any, are sufficient to establish a valid statutory ground for cancellation, (in the
`
`event that the factual allegations are proven to be true). See Ashcroft v. Iqbal, 129 S. Ct. at 1950.
`
`A cancellation petition should be dismissed where the “[p]etitioner has merely alleged the
`
`conclusion, not the facts on which it would rely to prove this conclusion.” McDonnell Douglas
`
`Corp. v. National Data Corp., 228 U.S.P.Q. 45, 48 (T.T.A.B. 1985). In this case, the Petition to
`
`Cancel merely alleges conclusions, and does nothing more than parrot the elements of a
`
`descriptiveness claim.
`
`
`
`
`
`
`
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`11
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`
`
`

`
`V.
`
`Conclusion
`
`In conclusion, Respondent Skydive Arizona, Inc. moves the Board to dismiss the Petition
`
`to Cancel in its entirety, because the Petition is barred by res judicata under the doctrine of claim
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`preclusion and under the doctrine of issue preclusion, and because Petitioner Hogue has not
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`plead facts sufficient to establish a claim upon which relief can be granted.
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`DATED: July 12, 2011
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`Respectfully submitted,
`SNELL & WILMER L.L.P.
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` By /Sid Leach/
`Sid Leach
`David G. Barker
`One Arizona Center
`400 East Van Buren
`Phoenix, Arizona 85004-2202
`Tel. (602) 382-6372
`Attorneys for Respondent
` Skydive Arizona, Inc.
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`Certificate of Transmission
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`I hereby certify that on this 12th day of July, 2011, I filed the foregoing SKYDIVE
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`ARIZONA’S MOTION TO DISMISS CANCELLATION PETITION electronically through the
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`Board’s ESTTA system.
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`By: /David G. Barker/
` David G. Barker
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`Certificate of Service
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`I hereby certify that on this 12th day of July, 2011, I caused a copy of the foregoing
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`SKYDIVE ARIZONA’S MOTION TO DISMISS CANCELLATION PETITION to be served
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`by United States Post Office, postage prepaid, in an envelope addressed to:
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`Jimmie Pursell
`Jennings Strouss & Salmon PLC
`One East Washington Street, Suite 1900
`Phoenix, AZ 85004
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`By: /Sid Leach/
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`Exhibit A
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`Exhibit A
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`FILED
`RECENED _
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`LODGED
`COPY
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`AR 2 9 2004
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`E (U S DISTRICT COURT
`STRiCT OF ARIZONA
`DEPUTY
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`IN THE UNITED STATES DISTRICT COURT
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`.
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`FOR THE DISTRICT OF ARIZONA
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`) No. CIV 01-01854-PHX~SMM
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`) ORDER
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`j )
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`SKYDIVEARIZONA LLC,
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`Plaintiff,
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`vs.
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`MIKE MULLINS,
`d/b/a Arizona SKYDIVING,
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`Defendant.
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`Pending before the Court, inter alia, are Defendant's Motion for Summary Judgment
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`on the Dilution claim [Doc. No. 51-1]; Defendant's Motion for Summary Adjudication that all
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`forms of monetary award to the Plaintiffare barred [Doc. No. 54-1]; Defendant's Motion for
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`Summary Adjudication on Claims Barred by Statute ofLimitations [Doc. No. 55-1]; Plaintiffs
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`Motion for Summary Judgment on Trademark Infringement Claim [Doc. No. 62-1]; Plaintiffs
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`Motion in Limine to Exclude Evidence [Doc. No. 84-1]; Defendant's Motion to strike
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`Declaration [75-1], Declaration [74-1], Declaration [73-1], Declaration [72-1], Declaration
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`[71-1], Declaration [70-1], Declaration [69-1], Declaration [68-1], Declaration [67-1], and
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`Declaration [66-1]; and Defendant's Motion to strike Exhibits [85-1] [Doc. No. 95-1]. After
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`considering the arguments raised by the parties in their briefing and during oral argument, the
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`26 Court now issues the following rulings.
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`•
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`SKY AZ031390
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`322-0001
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`BACKGROUND
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`SKYDIVE ARIZONA ("Plaintiff', "SKYDIVE Arizona") is limited liability corporation
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`established under the laws ofArizona whose principle place ofbusiness is in Arizona. Plaintiff
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`has been in business of providing skydiving services since 1986. Originally, SKYDIVE
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`5 ARIZONA waslocated atthe Coolidge Airport in Coolidge, Arizona. Plaintiffhas adopted the
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`6 mark, "SKYDIVE ARIZONA" in connection with its services and painted its aircraft with a its
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`name in a unique pattern and distinct colors. Furthermore, Plaintiff has advertised its services
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`in various media, including newspapers, magazines, telephone directories, and the Internet.
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`SKYDIVE ARIZONA offers instructional skydiving skills at all levels, serves as a training
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`facility for professional skydivers, and has hosted numerous national and world skydiving
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`competitions.
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`In 1991, SKYDIVE ARIZONA relocated to Eloy, Arizona, a location
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`approximately 20 miles from the Coolidge airport. Since 1991, SKYDIVE ARIZONA has
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`hosted numerous skydiving competitions and has gained substantial fame in the niche market
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`of skydiving services. According to BOTH parties, SKYDIVE ARIZONA has developed a
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`reputation for providing high-quality skydiving services. (Defendant's Statement Of Facts)
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`Defendant Mike Mullins' ("Defendant", "Mullins") primary place of residence is
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`18· Germantown, Tennessee. Defendant has owned and operated a skydiving facility near
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`19 Memphis, Tennessee under the service mark "West Tennessee skydiving"since 1989. The
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`20 Defendant is an experienced pilot for Federal Express and operates a skydiving aircraft. The
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`Tennessee business provides instructional services and serves as a training facility for skydivers
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`throughout the United States and from many foreign countries.
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`In December of 1998, Mullins
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`established a competing skydiving business located in Coolidge, Arizona, under the mark
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`"ARIZONA SKYDIVING COOLIDGE."
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`Furthermore, Defendant registered the domain
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`name ..www.arizonaskydiving.com.. at that time.
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`Mullins operated the Arizona facility duringthe winter months (December through April)
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`from 1998 to 2002.
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`In May 2002,Mullins sold his skydiving business to Mark Hogue who
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`SKY AZ031391
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`322-0002
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`•
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`•
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`I .
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`changed the name of the business to "COOLIDGE SKYDIVING."
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`On September 28,2001, SKYDIVE ARIZONA initiated this lawsuit, alleging
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`trade name infringement under the Lanham Act § 43(a), trade name dilution under the Lanham
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`4 Act § 43(c) and Arizona statute, and Arizona common law trade name infringement.
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`STANDAIU> OF REVIEW
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`A court must grant summary judgment if the pleadings and supporting documents,
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`viewed in the light most favorable to the nonmoving party, "show that there is no genuine issue
`as to any material fact and that the moving party is entitled to judgment as amatter oflaw."
`Fed. R. Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322'-23 (1986); Jesingerv~
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`Nevada Federal Credit Union, 24 F.3d 1127, 1130 (9th Cir. 1994). Substantive law determines
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`which facts are material. See Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986); see also
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`Jesinger, 24 F.3d at 1130. "Only disputes over facts that might affect the outcome of the suit
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`under the governing law will properly preclude the entry of summary judgment." Anderson,
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`477 U.S. at 248. The dispute must also be genuine, that is, the evidence must be "such that a
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`reasonable jury could return a verdiCt for the nonmoving party." Id.; see Jesinger, 24 F.3d at
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`1130.
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`A principal purpose of summary judgment is "to isolate and dispose of factually
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`unsupported claims." Ce10tex, 477 U.S. at 323-24. Summary judgment is appropriate against
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`a party who "fails to make a showing sufficient to establish the existence ofan element essential
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`to that party's case, and on which that party will bear the burden of proof at trial." Id. at 322;
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`see also Citadel Holding Corp. v. Roven, 26 F.3d 960,964 (9th Cir. 1994). The moving party
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`need not disprove matters on which the opponent has the burden of proofat trial. See Celotex,
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`477 U.S. at 317. The party opposing summary judgment "may not rest upon the mere
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`allegations or denials of [the party's] pleadings, but ... must set forth specific facts showing that
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`there is a genuine issue for trial." Fed. R. Civ. P. 56(e); see Matsushita Elec. Indus. Co. v.
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`SKY AZ031392
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`322-0003
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`l.
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`1 Zenith Radio, 475 U.S. 574, 585-88 (1986); Brinson v. Linda Rose Joint Venture; 53 F.3d1044,
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`1049 (9th Cir. 1995).
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`DISCUSSION
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`As a preliminary matter, the Court notes the difficulty in working with the pleadings and
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`exhibits offered by both parties. In this Circuit, where the party's papers filed in support ofand
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`opposing summary judgment are "extraordinarily difficult to use" due to their size and poor
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`citation, the court is not required to scour those papers in search of a genuine issue of triable
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`fact. Keenan v. Allan, 91 F.3d 1275, 1278-79 (9th Cir. 1996) (noting opposing papers, due to
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`size and poor citation, "obfuscates rather than promotes an understandi