Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA702427
`ESTTA Tracking number:
`10/15/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057500
`Plaintiff
`Orbis Distribution, Inc.
`JOHN M BOLGER
`BOLGER LEGAL GROUP LLC
`PO BOX 170616
`WHITEFISH BAY, WI 53217
`UNITED STATES
`John@BolgerLegalGroup.com
`Motion for Summary Judgment
`John M. Bolger
`john@bolgerlegalgroup.com
`/John M. Bolger/
`10/15/2015
`Motion for Summary Judgment. 10.15.15.pdf(695864 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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`In the Matter of Trademark Application Serial Number: 78/368710
`Registration Number: 3197276
`For the Mark: Bee Naturals
`___________________________________________
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`Orbis Distribution, Inc,
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`Plaintiff,
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`v.
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`Bee Naturals, Inc.,
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`Defendant.
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`___________________________________________
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`Cancellation Number:
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`92057500
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`PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT AND BRIEF IN SUPPORT
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`Because the solely remaining issues before the Board are a legal matters, this
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`Cancellation proceeding is appropriate for summary judgment.1 Therefore, the Plaintiff requests
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`that the Board decide the remaining legal issues.
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`INTRODUCTION
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`This matter concerns the most basis aspects of the federal laws governing trademark
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`registration and maintenance: (1) use in commerce, and (2) ownership of a mark.
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`First, in order to maintain a federal trademark registration in the United States, a mark
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`must be used in continuous lawful commerce during the five to six year period prior to the
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`submission of the declaration of use document. The Defendant was administratively dissolved
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`for nearly nine consecutive years of the “Bee Naturals” mark’s registration and was unable to use
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`its mark in commerce as a matter of law. Thus, the mark must be cancelled.
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`In its Answer, the Defendant has admitted all material aspects of the Plaintiff’s case
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`regarding administrative dissolution and use in commerce. The Defendant has exclusively relied
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`1 The parties have exchanged Initial Disclosures and had a Discovery Conference.
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`1
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`on a defensive argument in its Answer that Missouri law allows for rescission of the corporation
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`and that said rescission of a corporation somehow makes illegal commerce during its period of
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`dissolution legal. However, that argument is contrary to the United States Code, decisions of the
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`Federal Circuit, the Missouri statutes, and decisions of the Missouri Court of Appeals and
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`Federal Courts. Furthermore, the Missouri rescission statute was repealed in 1990.
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`Second, at the time of filing the Combined Declaration of Use and Incontestability, a
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`registrant must be the owner of the mark, pursuant to federal trademark law. In this case, the
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`Defendant could not have used the mark in commerce; thus, it was not an owner of the mark as a
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`matter of law, and the mark must be cancelled.
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`The Defendant’s case fails both of these basic areas of law. Each one of these carries the
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`same penalty—cancellation of the mark; therefore, the Plaintiff is only required to prove one in
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`order for the mark to be cancelled.
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`The following facts are undisputed.
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`FACTS
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`I. Facts Regarding Use in Commerce and Administrative Dissolution
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`The Defendant has admitted it was administratively dissolved. (Defendant’s Answer,
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`¶¶24-25.) The Defendant was administratively dissolved in 2006. (Exhibits A-E.) The mark was
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`registered in 2007. (TSDR, Serial Number 78368710, Registration Certificate.) The Defendant
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`did not reinstate its company until April 29, 2014. (TTAB Record.)
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`The Defendant has admitted that a corporation when dissolved cannot carry on any
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`business. (Defendant’s Answer, ¶26.) Specifically, the Defendant answered two allegations by
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`admitting that Missouri does not authorize an administratively dissolved corporation to carry on
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`business except to wind up and liquidate its business and referenced two section of the Missouri
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`2
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`statutes in support. (Id. at ¶¶24, 26.) Sections 351.476 and 351.486 of the Missouri Statutes are
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`incorporated into the Defendant’s Answer. (Id.) The Defendant also admitted the following
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`allegations of the Complaint:
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`As shown on the Missouri Secretary of State Business Name History
`24.
`webpage, the relevant part of which is attached hereto as Exhibit B, the business
`BeeNaturals, Inc. had been previously administratively dissolved and did not exist
`as a legal entity as of July 10, 2013. [ADMITTED as to Administrative
`Dissolution.]
`25.
`As shown on the Administrative Dissolution or Revocation for a For-
`Profit Corporation dated December 29, 2006, attached hereto as Exhibit D,
`BeeNaturals, Inc. was administratively dissolved or revoked under relevant
`Missouri law “as of December 29, 2006.” [ADMITTED as to Administrative
`Dissolution or Revocation.]
`26.
`As shown on the Administrative Dissolution or Revocation for a For-
`Profit Corporation dated December 29, 2006, attached hereto as Exhibit D,
`BeeNaturals, Inc., due to its administrative dissolution, cannot (as of 2006) carry
`on any business except that necessary to wind up and liquidate its business and
`affairs. [ADMITTED BY DEFENDANT, except for the year 2006.]
`27.
`Pursuant to the Trademark Act, an owner must be a legal entity or person
`in order to maintain a trademark registration. [ADMITTED BY DEFENDANT.]
`28.
`Pursuant to the Trademark Act, an owner must be a legal entity or person
`in order to file a Combined Declaration under Section 8 and Section 15.
`[ADMITTED BY DEFENDANT.]
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`(Petition to Cancel, ¶¶24-28.) Specifically, this is how the Defendant answered
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`allegations 24-28 of the Complaint:
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`24. Defendant admits that the corporation has been administratively dissolved
`subject to rescission; however, under Missouri law, this does not mean the
`corporation ceases to exist. RSMO 351.486.
`25. Denied. The corporation was administratively dissolved or revoked,
`subject to rescission.
`26. It is admitted that Missouri does not authorize an administratively
`dissolved corporation to carry on business except to wind up and liquidate its
`business as in RSMO 351.476. The parenthetical “(as of 2006)” in paragraph 26
`is denied.
`27. Admitted.
`28. Admitted.
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`Answer, ¶¶24-29. (Emphases added.)
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`II. Facts Regarding Ownership
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`3
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`As the Board found in its Decision of June 14, 2014, the responded has put forth the
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`contention that it alone owned the mark, and “the record now supports respondent’s contention
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`that BeeNaturals Inc. is the sole owner of the registration . . . .” (Decision, June 14, 2014, 5.)
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`LAW
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`Introduction: Summary Judgment and Abandonment
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`A. The Law of Summary Judgment
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`Motion for summary judgment is appropriate where “the pleadings . . . show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to
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`judgment as a matter of law.” Trademark Trial and Appeal Board Manual of Procedure, §
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`528.01 (2014)(citations omitted).
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`The purpose . . . [is] to avoid an unnecessary trial where there is no genuine
`issue of material fact and more evidence than is already available in
`connection with the summary judgment motion could not reasonably be
`expected to change the result in the case. . . . [T]he Board does not hesitate
`to dispose of cases on summary judgment when appropriate.
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`Id. (citations omitted).
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`A party moving for summary judgment has the burden of demonstrating the
`absence of any genuine issue of material fact, and that it is entitled to
`judgment as a matter of law . . . [which] may be met by showing “that there
`is an absence of evidence to support the nonmoving party's case.” If the
`moving party meets its burden, that is, if the moving party has supported its
`motion with affidavits or other evidence which if unopposed would
`establish its right to judgment, the nonmoving party may not rest on mere
`denials or conclusory assertions, but rather must proffer countering
`evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56,
`showing that there is a genuine factual dispute for trial.
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`Id. (citations omitted).
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`A factual dispute is genuine only if, on the evidence of record, a reasonable
`fact finder could resolve the matter in favor of the nonmoving party. . . . A
`fact is material if it “may affect the decision, whereby the finding of that
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`4
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`fact is relevant and necessary to the proceedings.” However, a dispute over
`a fact which would not alter the Board’s decision on the legal issue will not
`prevent entry of summary judgment.
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`Id. (citations omitted).
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`B. The Law of Abandonment
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`1. Abandonment: United States Codes
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`A registered trademark may be canceled if it has been abandoned. 15 U.S.C. 1064(3).
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`“Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” 15 U.S.C.
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`1127. “‘Use’ of a mark means the bona fide use of such mark made in the ordinary course of
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`trade, and not made merely to reserve a right in a mark.” Id.
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`2. Abandonment: Federal Cases Interpreting the United States Code
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`Establishing a prima facie case “eliminates the challenger’s burden to establish the intent
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`element of abandonment as an initial part of its case,” creating a presumption that the trademark
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`owner has abandoned the mark. Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575,
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`1579, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)(holding that two years of nonuse was enough to
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`establish abandonment and necessitated cancellation of the mark, where the registrant’s four
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`excuses were not legitimate excuses for failure to use the mark in commerce). The burden then
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`shifts to the trademark owner to produce evidence that it used the mark during the statutory
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`period. Id.; see also, Rivard v. Linville, 133 F.3d 1446, 1449, 45 USPQ2d 1374, 1376 (Fed. Cir.
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`1998)(noting that the prima facie case creates a presumption that the trademark owner
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`abandoned the mark and holding that five years of nonuse was enough to establish abandonment
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`and necessitated cancellation of the mark, where registrant’s excuses for nonuse were not
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`legitimate excuses).
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`I. The Law Regarding Use in Commerce and Administrative Dissolution
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`5
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`A. Federal Law Concerning Use in Commerce and Administrative Dissolution
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`1. United States Code Regarding Use in Commerce and Administrative
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`Dissolution
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`Trademark Act Section 45, 15 U.S.C. Section 1127, states in relevant part that, “The term
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`‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not
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`made merely to reserve a right in a mark.” 15 U.S.C. § 1127. “The word ‘commerce’ means all
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`commerce which may lawfully be regulated by Congress.” Id.
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`2. Federal Cases Interpreting Use in Commerce and Administrative
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`Dissolution
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`An administratively dissolved corporation does not have rights to its intellectual property
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`as a result of the dissolution. Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1309
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`(Fed. Cir. 2003). The requirement of standing in the federal scheme must be complete at the
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`inception of the lawsuit, and retroactive state statutes cannot subsequently give said rights nor
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`allow the alleged owner to fulfill said federal requirements. Id.; accord Gaia Techs., Inc. v.
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`Reconversion Techs., Inc., 93 F.3d 774, 778, 39 USPQ2d 1826, 1830 (Fed. Cir. 1996); Abraxis
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`Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir. 2010).
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`B. Missouri Law Regarding Use in Commerce and Administrative Dissolution
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`1. Missouri Statutes Regarding Use in Commerce and Administrative
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`Dissolution
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`The state of Missouri law provides in two separate statutes that once administratively
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`dissolved, a corporation cannot conduct any business, except that necessary to wind up its affairs
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`and liquidate its assets. Mo. Rev. Stat. §§ 351.486 & 351.476. Furthermore, the Missouri
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`rescission statute was repealed in 1990. Mo. Rev. Stat. § 351.540 (repealed 1990).
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`6
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`2. Missouri Cases Interpreting Use in Commerce and Administrative
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`Dissolution
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`The federal courts of Missouri have held that reinstatement of a corporation does not
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`retroactively validate its illegal actions during the period of administrative dissolution. Byrd v.
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`Hometown Heating & Air Conditioning, Inc., 228 B.R. 435, 437-38 (Bankr. W.D. Mo. 1999).
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`The federal courts of Missouri have also held that an administrative dissolved corporation must
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`not carry on any business except that necessary to wind up and liquidate its business and affairs.
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`Id. at 437. Any exercise of corporate powers, including conducting any business, during a period
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`of administrative dissolution is illegal and void. Id.
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`The Missouri Court of Appeals has also ruled in numerous cases that an administratively
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`dissolved business cannot carry on any business except to wind up and liquidate its business and
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`affairs. U.S. Ctr. Under. v. Manchester L. & Cas., 952 S.W.2d 719, 720-21 (Mo. App. 1997);
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`Behr v. Bird Way, Inc., 923 S.W.2d 470, N.2 (Mo. App. 1996); Mabin Const. v. Historic
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`Constructors, 851 S.W.2d 98, 102-03 (Mo. App. 1993).
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`II. The Law Regarding Ownership
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`A. Federal Law Regarding Ownership
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`1. Federal Statutes Regarding Ownership
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`The United States federal trademark laws provide that a Section 8 Declaration of Use
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`must be executed by and filed in the name of the then current owner of the trademark. 15 U.S.C.
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`§ 1058(a)&(c). If the affidavit or declaration was filed in the name of the wrong party, and there
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`is no time remaining in the grace period, the registration will be cancelled. Id.
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`2. Federal and Trademark Cases Interpreting Ownership
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`Filing in the name of another entity who is not the owner of the mark at that time is not a
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`deficiency that can be corrected after the expiration of the grace period. See In re Precious
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`Diamonds, Inc., 635 F.2d 1637, 208 U.S.P.Q. 410 (C.C.P.A. 1980); In re Media Central IP
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`Corp., 65 U.S.P.Q.2d 1637 (Comm’r Pat. & Trademarks 2002); In re Caldon Co. Ltd.
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`Partnership, 37 U.S.P.Q.2d 1539 (Comm’r pat. & Trademarks 1995); In re Weider, 212 U.S.P.Q.
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`947 (Comm’r Pat. & Trademarks 1981); In re ACE III Communications, Inc., 62 U.S.P.Q.2d
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`1049 (TTAB 2001).
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`B. The Missouri Laws Regarding Ownership
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`1. Missouri Statutes Regarding Ownership
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`As stated above, two sections of the Missouri statutes mandate that a dissolved
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`corporation cannot conduct any business. Mo. Rev. Stat. §§ 351.476 & 351.486. Furthermore,
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`Missouri Revised Statute Section 351.476 provides that “2. Dissolution of a corporation does
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`not: (1) Transfer title to the corporation’s property . . . .” Mo. Rev. Stat. § 351.476.2(1).
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`2. Missouri Cases Interpreting Ownership
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`Any contract or agreement regarding a corporation’s property made during a period of
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`dissolution are illegal acts and are void. Byrd v. Hometown Heating, 228 B.R. at 437.
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`ARGUMENT
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`I. Abandonment
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`As shown in the Law section of this Brief, the United States federal trademark laws
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`provide that a mark must be used in commerce. 15 U.S.C. § 1127. Nonuse for three consecutive
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`years is prima facie evidence of abandonment. Id. Because the Defendant has admitted it could
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`not have conducted any business for nearly nine years, the Defendant abandoned the mark. Id.
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`The Defendant was administratively dissolved from prior to the mark’s certificate being issued
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`until well after the grace period for filing the Combined Declaration had expired. (Defendant’s
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`Answer, ¶¶24-25; Exhibit E; TSDR, Serial Number 78368710, Registration Certificate.)
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`Therefore, this abandonment is a matter of law due to (A) the federal trademark laws of
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`the United States requiring use in commerce and relevant case law interpreting those laws, and
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`(B) the statutory laws and relevant case law of the state of Missouri that prevent an
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`administratively dissolved corporation from using a mark in commerce. As shown in the
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`following two subsections, neither the federal trademark laws nor the Missouri corporate laws
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`are compatible with the Defendant’s erroneous claims of retroactive application due to the
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`doctrine of rescission, by which the Defendant apparently hopes the Board will apply to this case
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`to mean as “retroactive use in commerce” and “retroactive curing of illegalities.” The
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`Defendant’s error is that both the federal and state statutes prevent such an interpretation.
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`Furthermore, the Defendant ignores recent cases from both the Federal Circuit and the Missouri
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`federal district courts, all of which hold that that the Defendant’s argument is contrary to law.
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`Finally, the statute allowing for rescission was repealed by the Missouri legislature (in 1990).
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`A. Abandonment Pursuant to Federal Law
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`1. Abandonment Pursuant to Use in Commerce Laws
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`Trademark Act Section 45, 15 U.S.C. Section 1127, states in relevant part that, “The term
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`‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not
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`made merely to reserve a right in a mark. . . . .” 15 U.S.C. § 1127 (emphases added). “The
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`word ‘commerce’ means all commerce which may lawfully be regulated by Congress.” Id.
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`(emphasis added). “Nonuse for 3 consecutive years shall be prima facie evidence of
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`abandonment.” Id. (emphasis added).
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`Even if Missouri law were to allow for the reinstatement (or rescission) of a company as
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`if a dissolution never occurred, trademark law does not allow for such variance. It is one of the
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`most basic tenants of Trademark law that the Lanham Act allows for registration of trademarks
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`that have been used in commerce that Congress may regulated, namely, legal, interstate
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`commerce in the United States. 15 U.S.C. § 1127. Thus, use in commerce for a trademark must
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`be:
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`(1) good faith use,
`(2) used in ordinary course of trade,
`(3) not made merely to reserve a right,
`(4) placed on goods (etc.),
`(5) which are then sold or transported in commerce,
`(6) that is regulated by Congress, meaning
`(7) interstate commerce and extra-national commerce, which is also must be
`(8) lawful and
`(9) continuous.
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`Id. It is impossible to image a scenario whereby the above nine tenants of trademark law could
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`be fulfilled by (A) a dissolved company (Exhibit E), (B) conducting business against the express
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`directive of both Statute and the Secretary of State (Id.), (C) whose owner knew that her
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`company was dissolved (Exhibit C) and that any business transactions were contrary to law
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`(Exhibit E), (D) which was dissolved for nearly nine consecutive years, including prior to the
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`registration’s issuance and after the expiration of the grace period for filing the Declaration of
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`Use. Even presuming that the Defendant sold its goods in commerce during the period of
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`dissolution, such “business” would not meet the federal definition of use in commerce as a
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`matter of law.
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`How can an administratively dissolved company conduct “ordinary business”? Ordinary
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`business by a corporation requires an actual, registered corporation. How can it transfer goods to
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`another state if it is dissolved in its home state? Such an act would be contrary to numerous laws.
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`10
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`How can such commerce be considered legal? Congress cannot regulate goods passed through
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`commerce by an illegal corporate act.2 Thus, even if the Board were to find that the corporate
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`reinstatement statute in Missouri3 somehow legitimizes or legalizes illegal activity, it cannot
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`retroactively confer such legitimacy on federal trademark law. Congress does not regulate nor
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`does the Trademark Act provide for “retroactive commerce.” 27 U.S.C. § 1127.
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`Because the administratively dissolved Defendant could not have used its mark in the
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`ordinary course of trade, and because there was nonuse for more than eight years, a prima facie
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`case of abandonment has been established. Imperial Tobacco Ltd. v. Philip Morris, Inc., 899
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`F.2d 1575, 1579, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990)(holding that two years of nonuse was
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`enough to establish abandonment and necessitated cancellation of the mark); Rivard v. Linville,
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`133 F.3d 1446, 1449, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998)(holding that five years of nonuse
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`was enough to establish abandonment and necessitated cancellation of the mark). Reinstatement
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`occurred nearly nine years after it had been dissolved, nearly a year after litigation began in this
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`matter, and approximately one year after the grace period for filing the Combined Declaration
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`had expired. (Facts Section, supra.) Thus, the duration of the Defendant’s nonuse of the mark
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`was nearly twice as long as occurred in Rivard and nearly five times as long as in Imperial
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`Tobacco. Therefore, the mark must be cancelled.
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`2. Abandonment: Defendant’s Retroactive Argument Does Not Apply to
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`Federal Trademark Law Pursuant to Relevant Federal Cases
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`The United States Court of Appeals for the Federal Circuit recently examined a very
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`similar defense to the one that the Defendant has raised—whether a reinstatement statute can
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`2 By analogy, Congress does not “regulate” illegal or black market goods and their peddlers, in terms of allowing
`registration of their marks. Rather, Congress attempts to establish laws that prevent and punish such behavior.
`3 As shown in the law section and argued in the argument section, the unambiguous language of two Missouri
`statutes and the precedent from federal and state Missouri courts expressly described conducting business while
`administratively dissolved as illegal behavior and any actions undertaken as void.
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`11
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`retroactively confer intellectual property rights. Paradise Creations, Inc. v. UV Sales, Inc., 315
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`F.3d 1304 (Fed. Cir. 2003). The beginning of the Federal Circuit’s analysis involves the concept
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`that an administratively dissolved corporation does not have rights to its patent as a result of the
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`dissolution. Paradise, 315 F.3d at 1308-09, ¶¶14-16. In essence, the defending party argued that
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`the party seeking to enforce its patent rights did not in fact have enforceable patent rights during
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`the period of its administrative dissolution, and therefore, did not hold such rights to the patent at
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`the time it filed suit. Id. at 1308, ¶15.
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`The Federal Circuit analyzed the Florida Corporations Statutes, which contains a clause
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`that is essentially identical to the Missouri clause, stating that a “corporation administratively
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`dissolved continues its corporate existence but may not carry on any business except that
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`necessary to wind up and liquidate its business and affairs.” Id. The defending party (the
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`appellee) contended that a contract entered into in violation of the administrative dissolution
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`statute cannot grant enforceable rights under Florida law, during the period of corporate
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`dissolution. Id. Like the Defendant in this case, the party seeking to enforce its rights (the
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`appellant) did not challenge this construction of the statute, thus admitting that it did not hold
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`enforceable patent rights when the suit was filed. Id. Instead, again like the Defendant in this
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`case, the appellant relied on the theory that when it gained reinstatement, under Florida
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`Corporation Statutes corporate reinstatement provision, this reinstatement related back to the
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`date of dissolution. Id.
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`Therefore, the main issue on appeal in Paradise was whether a state corporate revival
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`statute can retroactively confer Article III standing where it did not exist at the time the
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`complaint was filed. Id. Similarly, the primary issue before the Board is whether a state
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`corporate revival statute can retroactively confer legal use in commerce where it did not exist
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`12
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`from before the mark’s registration until a year after the Combined Declaration of Use and
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`Incontestability was filed.
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`The appellant contends that, pursuant to this statute, its licensing agreement was
`retroactively validated upon reinstatement, and that it constructively held
`enforceable patent rights on the day it filed its complaint. The appellee counters
`that whatever the effect of the corporate revival statute in Florida State courts, it
`cannot retroactively confer standing in federal court.
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`Paradise, 1309, ¶16. Despite the alleged patent holder’s objections to the contrary and citation to
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`state reinstatement statutes, the federal court held that regardless of what the state courts might
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`hold, they had no bearing on the federal laws concerning standing: “It cannot rely on the Florida
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`corporate revival statute to retroactively claim enforceable patent rights on the day it filed its
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`complaint, in order to assert standing.” Id.
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`Again, the Federal Circuit agreed that regardless of the effect of the corporate revival
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`statute, a state statute cannot confer standing upon it retroactively. Id. The Federal Circuit
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`pointed to numerous cases that held that similarly. Id. Some of these cases also involved the
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`retroactive application of trademarks rights, which were also denied because of the inability to
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`retroactively claim interests in trademarks. See Gaia Techs., Inc. v. Reconversion Techs., Inc., 93
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`F.3d 774, 778, 39 USPQ2d 1826, 1830 (Fed. Cir. 1996)(holding that the plaintiff’s patent and
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`trademark infringement claims were required to be dismissed for lack of standing, because of its
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`“inability to prove that it was the owner of the Intellectual Property at the time the suit was
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`filed”), as amended on rehearing on different grounds, 104 F.3d 1296, 41 USPQ2d 1134 (Fed.
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`Cir. 1996); accord Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir.
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`2010)(“[D]ismissing plaintiff's patent and trademark infringement claims for lack of standing
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`because of its ‘inability to prove that it was the owner of the Intellectual Property at the time the
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`suit was filed.’”). “Accordingly, this court has determined that in order to assert standing for
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`patent infringement, the plaintiff must demonstrate that it held enforceable title to the patent at
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`the inception of the lawsuit.” Id. at 1309, ¶17 (emphasis in original).
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`In summary, the Paradise court found that (1) the alleged patent holder had the right to
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`appear in state court, but only to wind up its affair and liquidate its business, id. at 1307-08, ¶12;
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`(2) the alleged patent holder had no right to its patent during the period of dissolution, id. at
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`1308-09, ¶15; and as a result (3) the patent holder could not establish standing through
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`retroactive arguments, id. at 1309, ¶16-17.
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`Similarly, in this Cancellation, the Defendant lacked the requisite legal ability to conduct
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`legal business, to use its mark in commerce, and to obtain any interest in its trademark. Id. First,
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`while administratively dissolved, no state or federal rights may be legally gained in intellectual
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`property. Second, even presuming the state statute were to somehow allow for state rights to be
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`obtained, because standing in federal court and rights pursuant to trademark law are federal
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`issues that exist as of the date of filing a complaint, a state statute does not create new rights
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`within the federal scheme; otherwise, the federal landscape would be filled with many peaks and
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`valleys. Id. Certainly, federal trademark itself law would be compromised if companies could do
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`business illegally and still obtain federal trademark registrations. In the same way that a state
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`statute cannot retroactively allow for standing or patent rights in the Paradise Creations case, the
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`federal issues of use in commerce cannot be met by a dissolved corporation.4 If an
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`administratively dissolved corporation has no rights to its patent for the purpose of standing, an
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`administratively dissolved corporation that is expressly prevented from conducting business
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`cannot have any ownership interests in its trademark, because such ownership would directly
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`contradict the most basic tenant of federal trademark law: use in commerce.
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`4 Furthermore, as with standing, the defendant needed to be the owner of the mark at the time it filed the Declaration
`of Use, as argued in Section II of this Argument.
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`B. Abandonment Pursuant to Missouri Law
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`1. Abandonment Pursuant to Missouri Administrative Dissolution Laws
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`Missouri law does not allow for a company that has been administratively dissolved to
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`conduct any business, except for that necessary to wind up and liquidate its business and affairs.
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`Mo. Rev. Stat. §§ 351.476 & 351.486. In fact, the state of Missouri law provides in two separate
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`statutes that once administratively dissolved, a corporation cannot conduct any business, except
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`that necessary to wind up its affairs and liquidate its assets. Id. First, Missouri Revised Statute
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`Section 351.486 provides, which the Defendant directly references in its Answer mandates:
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`A corporation administratively dissolved continues its corporate existence but
`may not carry on any business except that necessary to wind up and liquidate its
`business and affairs under section 351.476 and notify claimants under sections
`351.478 and 351.482, and any officer or director who conducts business on behalf
`of a corporation so dissolved except as provided in this section shall be personally
`liable for any obligation so incurred.
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`Mo. Rev. Stat. § 351.486.3. Furthermore, Missouri Revised Statute Section 351.476, which the
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`Defendant also directly references in its Answer mandates:
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`1. A dissolved corporation continues its corporate existence but may not carry on
`any business except that appropriate to wind up and liquidate its business and
`affairs, including: (1) Collecting its assets; (2) Disposing of its properties that will
`not be distributed in kind to its shareholders; (3) Discharging or making provision
`for discharging its liabilities; (4) Distributing its remaining property among its
`shareholders according to their interests; and (5) Doing every other act necessary
`to wind up and liquidate its business and affairs.
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`2. Dissolution of a corporation does not: (1) Transfer title to the corporation’s
`property; (2) Prevent transfer of its shares or securities, although the authorization
`to dissolve may provide for closing the corporation's share transfer records; (3)
`Subject its directors or officers to standards of conduct different from those
`applicable to directors and officers of a corporation which has not been dissolved;
`provided that any such officer or director who conducts business on behalf of the
`corporation except as provided in this section shall be personally liable for any
`obligation so incurred; (4) Change quorum or voting requirements for its board of
`directors or shareholders; change provisions for selection, resignation, or removal
`of its directors or officers or both; or change provisions for amending its bylaws;
`(5) Prevent commencement of a proceeding by or against the corporation in its
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`corporate name; (6) Abate or suspend a proceeding pending by or against the
`corporation on the effective date of dissolution; (7) Terminate the authority of the
`registered agent of the corporation; or (8) Make available for use by others its
`corporate name for a period of one year from the effective date of its dissolution.
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`Mo. Rev. Stat. § 351.476 (emphasis added). These two sections of the statutes refer to each
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`other and should be read in the context of providing an absolute prohibition against conducting
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`business once a corporation has been administratively dissolved. See Mo. Rev. Stat. §§ 351.486
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`& 351.476.
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`Once a Missouri corporation is reinstated, it can “resume” normal business. RSMo. §
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`351.488.3 (emphasis added). It cannot “continue” business or “go on conducting its business,”
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`but it must “resume” business from the point at which the company is reinstated. Id. According
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`to Dictionary.com, “Resume,” when used as a verb with an object (in thi