Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA617323
`ESTTA Tracking number:
`07/23/2014
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056317
`Plaintiff
`Cockpit USA, Inc.
`E COOKE RAND
`RAND ROSENZWEIG RADLEY & GORDON LLP
`800 THIRD AVENUE, SUITE 2604
`NEW YORK, NY 10022
`UNITED STATES
`ccampbell@randrose.com,erand@randrose.com
`Motion to Amend Pleading/Amended Pleading
`Catherine S Campbell
`ccampbell@randrose.com,erand@randrose.com
`s/cscampbell/
`07/23/2014
`Reply.pdf(320943 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`COCKPIT USA, INC.,
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`Petitioner,
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`v.
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`TOP GUN INTELLECTUAL
`PROPERTIES LLC,
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`Registrant.
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`Cancellation No. 92056317
`Registration No. 2817325
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`PETITIONER’S REPLY TO REGISTRANT’S OPPOSITION TO
`THE MOTION FOR LEAVE TO FILE AN AMENDED PETITION TO CANCEL
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`Petitioner, Cockpit USA, Inc. (“Petitioner” or “Cockpit”), by its attorneys Rand
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`Rosenzweig Radley & Gordon LLP, hereby replies to the opposition of Registrant, Top Gun
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`Intellectual Properties LLC (“Registrant”) to Petitioner’s motion for leave to file an amended
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`petition to cancel (“Motion”). Petitioner commenced this proceeding for cancellation of
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`Registrant’s trademark registration of “Top Gun” in international class 25 (the “Mark”), and now
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`seeks leave to amend its initial petition to reinstate claims of fraud on the USPTO based on false
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`declarations in the Registrant’s Sections 8 and 15 filings (also referred to herein as the
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`“Combined Declaration”). Specifically, Petitioner alleges in its proposed amended petition
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`(“Amended Petition”; attached as Exhibit 1 to the Motion) that Registrant falsely declared that it
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`was offering for sale shoes, sandals, sports coats, and jeans at the time it filed its Combined
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`Declaration and continuously for the five years since registration. Registrant provides no viable
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`basis for denying Petitioner’s Amended Petition restating these two fraud counts.
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`1
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`Petitioner’s Amended Fraud Claims Meet
`Both Pleading Standards for Particularity and Plausibility
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`As Registrant concedes, Fed. R. Civ. P. 15(a)’s proviso that “leave [to amend a pleading]
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`shall be freely given when justice so requires” applies in TTAB proceedings. See generally
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`TBMP §507.02; Iomega Corp. v. Information Technology International Corp., 2001 WL 826856
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`(TTAB) (amendment permitted under Rule 15(a) standard). Petitioner’s restated allegations of
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`fraud based on “information and belief” are now accompanied by a statement of facts upon
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`which the belief is founded. Petróleos Mexicanos v. Intermix S.A., 2011 WL 586300 (TTAB
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`2012); Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold, LLC, 2010 WL 2561535
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`(TTAB). The Amended Petition specifies Petitioner’s counsel’s personal investigation at the
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`time of preparing the pleadings and clearly shows that contrary to the Combined Declaration’s
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`listing of all the goods registered to the Mark, in fact Registrant did not offer shoes, sandals,
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`sports coats and jeans for sale on its website on the dates reviewed by Petitioner’s counsel.
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`(Amended Petition at ¶¶ 25, 35).
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`Registrant argues that the newly alleged facts fail to meet the Supreme Court’s
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`requirement that a claim “must contain sufficient factual matter, accepted as true, to ‘state a
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`claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). According to Registrant, the
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`allegations regarding what it did not offer for sale at a certain sales outlet on a certain date is
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`insufficient to state a claim of fraud as to its Combined Declaration made several years before,
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`and thus the claim is not plausible. Of course evidence of what Registrant offered for sale at all
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`times and through all sales outlets is necessarily in the control of Registrant and not Petitioner.
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`Therefore, any personal investigation by Petitioner of any sales outlet at any specific point in
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`time is subject to such an attack by Registrant. For this very reason, similar arguments have
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`2
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`been rejected by courts in addressing fraud claims where such essential information is uniquely
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`with the other party. See Exergen v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1330-31 (Fed. Cir.
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`2009) (information and belief pleading is permitted under Rule 9(b) when “essential information
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`lies uniquely within another party's control” if the pleading “sets forth the specific facts upon
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`which the belief is reasonably based.”); Simonian v. Pfizer Inc., 2011 WL 780836 *2 (N.D. Ill.)
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`(with essential information uniquely within the other party’s control, claimant asserted specific
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`facts sufficiently in support of its information and belief allegations of fraud); Brinkmeier v.
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`Graco Children's Products Inc., 767 F. Supp.2d 488, 496 (D. Del. 2011) (same). Therefore, the
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`facts of Petitioner’s personal investigation support a plausible claim of falsity in the Combined
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`Declaration.
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`Additional facts ignored by Registrant further underscore that Petitioner’s claims as pled
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`are plausible. First, it must be emphasized that Registrant provided no documentary proof, not
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`even an affirmation of its principal, that it did in fact offer these listed goods for sale in
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`compliance with its declarations in the Combined Declaration, i.e., the essential information
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`uniquely held by Registrant. It must be presumed that if Registrant could produce this proof, it
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`would have done so at this stage of the proceeding to eliminate the claims prior to discovery.
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`But it has not. Second, Registrant ignores Petitioner’s previous allegations of fraud already
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`accepted by the TTAB, namely that Respondent committed fraud in its registration of the Mark
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`by falsely declaring it knew of no other use of the Mark when in fact Registrant had been
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`purchasing from Petitioner goods sold under the Mark for years prior to its registration.
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`(Amended Petition at ¶¶ 12-13, 19-21). The allegations of prior fraud on the USPTO, clearly
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`supplement the plausible contention that in addition to its registration application, Registrant’s
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`Combined Declaration is also false.
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`3
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`Therefore, Petitioner has presented specific facts of fraud by Registrant on the USPTO
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`that accepted as true, as they must be, are plausible on their face. Contrary to Registrant’s
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`arguments, the Iqbal decision clearly holds that it does not impose a “probability requirement”
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`on the claimant’s allegations, only a plausibility standard. See Iqbal, 556 U.S. at 678. See also
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`Exergen, 575 F.3d at 1330-31 (applying a plausibility standard to review of fraud claims brought
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`upon information and belief). With the essential information of whether Registrant’s Combined
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`Declaration is false ultimately in the possession of Registrant, at this pleading stage the
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`Amended Petition fully meets the plausibility and particularity standards in restating Petitioner’s
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`fraud claims.
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`Registrant’s Citations are Inapposite and
`Do Not Provide a Basis for Denying Petitioner’s Motion
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`Registrant’s citations in opposition to Petitioner’s Motion do not establish that Petitioner
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`has failed to meet the TTAB’s pleading requirements for the two restated fraud claims.
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`Registrant cites to several cases to support its argument that Petitioner’s amendment of its
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`petition is futile, but none of the cases involve claims of fraud on the USPTO. In Trek Bicycle
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`Corp. v. Styletrek Limited, 64 U.S.P.Q.2d 1540, 2001 WL 1869327 (TTAB 2001), the TTAB
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`found the claimant was unable to plead an essential element of its dilution claim, clearly making
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`amendment futile. Trek Bicycle Corp., 2001 WL 1869327 at *3. In Kemin Foods L.C. v.
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`Pigmentos Vegetales Del Centro S.A., 464 F.3d 1339 (Fed. Cir. 2006), the court’s determination
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`of futility was based on the specific facts related to this patent infringement case, including prior
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`judgments on the issues of invalidity and unenforceability of the patents at issue. Id. at 1353-54.
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`Finally, Registrant’s citation to Themis Capital, LLC v. Democratic Republic of Congo, 2013
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`WL 1687198 (S.D.N.Y.), is inapposite as the case addressed a proposed amendment of an
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`affirmative defense to a breach of contract claim filed post discovery which the court found futile
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`in the face of an imminent summary judgment motion. Id. at *6. Here at the pre-discovery
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`stage, as the elements of each claim are properly pled including the facts of personal
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`investigation in support of the frauds, Petitioner’s proposed amendments are not futile.
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`With regard to decisions addressing amended pleadings asserting fraud on the USPTO,
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`Registrant presents no case denying the amendment in which the claimant alleges each element
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`of the fraud and provides the facts underlying its personal investigation in support. Registrant in
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`fact cites to Caymus Vineyards v. Caymus Medical, Inc., 2013 WL 6665451 (TTAB), a post-
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`Iqbal case in which the TTAB found that “[c]onstruing applicant’s allegations so as to do justice
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`and in the light most favorable to the applicant,” the fraud allegations were sufficiently particular
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`as “applicant alleges when and how the fraud allegedly occurred and the content of the false
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`representation and identifies what was obtained by reason of the asserted fraud.” Id. at *3
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`(permitting amendment of fraud pleading). Similarly, Petitioner’s Motion cited to numerous
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`TTAB decisions allowing amendments of fraud claims to state the particulars of the fraud, just as
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`Petitioner has done in the Amended Petition. (See Motion at 6-8). Thereafter, Registrant refers
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`to Asian and Western Classics B.V. v. Selkow, 92 U.S.P.Q.2d 1478 (TTAB2009), in which the
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`Board found that petitioner’s fraud allegations based on information and belief “were
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`unsupported by any statement of facts providing the information upon which petitioner relies or
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`the belief upon which the allegation is founded.” Id. at 1479. But in contrast, Petitioner’s
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`Amended Petition does just that, reciting the particulars of Registrant’s fraud, including its
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`failure to offer shoes, sandals, sports coats and jeans for sale on its website, as well as its prior
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`fraudulent declaration in its registration application despite its purchases over many years of
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`Petitioner’s goods sold under the Mark. (Amended Petition at ¶¶ 19-42).
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`5
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`Most egregious is Registrant’s final argument that attempts to impose a Fed. R. Civ. P.
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`Rule 26(g) discovery inquiry standard upon Petitioner to defeat the admission of its amended
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`claims. However, Registrant cites to no case in support of the proposition that at this pre-
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`discovery pleading stage, Petitioner must go beyond the heightened pleading requirements for
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`fraud and establish that it has met the “reasonable inquiry” certification requirements imposed by
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`Rule 26(g) as to all discovery. The only case Registrant cites for this added burden is Micro
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`Motion, Inc. v. Kane Steel Co., Inc., 894 F.3d 1318 (Fed. Cir. 1990), which is clearly not on
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`point. In Micro Motion, a patent litigant sought nonparty discovery from its competitors to
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`establish its damages, and the court granted the nonparty’s motion to quash the discovery
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`demand for its “confidential business information.” Id. at 1320. This case has no bearing on
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`Petitioner’s motion to amend its fraud claims, and certainly the many TTAB and federal cases
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`addressing the dual requirements of Rules 9(b) and 15 on fraud claims do not reference Rule
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`26(g). Thus, Registrant’s discovery standard arguments are a nullity and have no bearing on the
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`Motion before the Board.
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`CONCLUSION
`In conclusion, on the grounds presented in the Motion and herein, Petitioner respectfully
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`requests of the TTAB leave to file the proposed Amended Petition realleging the facts in support
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`of its claims for cancellation of Reg. ‘325 based upon fraud on the USPTO with regard to
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`Registrant’s Section 8 declaration and Section 15 declaration.
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`Dated:
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`July 23, 2014
`White Plains, N.Y.
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`___________/s/_____________
`Catherine S. Campbell, Esq.
` RAND ROSENZWEIG RADLEY & GORDON LLP
`445 Hamilton Avenue, Suite 1201
`White Plains, New York 10601
`Tel: (914) 406-7000
`Attorneys for Petitioner
`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of Petitioner’s Reply to Registrant’s
`Opposition to the Motion for Leave to File an Amended Petition to Cancel, dated July 23, 2014,
`as filed by Petitioner, Cockpit USA, Inc. with the TTAB was served on July 23, 2014 via email
`to counsel, Michael Samey, Esq., for Registrant, Top Gun Intellectual Properties, Inc., per the
`prior agreement of the parties to this proceeding, at the following email address provided for
`such purpose:
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`msarney@rnoritthock.com
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`flown /fltét//défiy
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`Catherine S. Campbell