Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA670485
`ESTTA Tracking number:
`05/04/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060895
`Defendant
`Starbuzz Tobacco, Inc.
`
`STARBUZZ TOBACCO INC
`10871 FORBES AVE
`GARDEN GROVE, CA 92843
`UNITED STATES
`Opposition/Response to Motion
`Jason Chuan
`NPatel@thePatelLawFirm.com, JChuan@thePatelLawFirm.com,
`MUy@thePatelLawFirm.com
`/jasonchuan/
`05/04/2015
`Reply to Opp to MTD - 050415.pdf(123886 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`

`IN THE UNITED STATES PATENT AND TRADE MARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Registration No. 3,619,407
`Mark:
`BLUE MIST
`Registered: May 12, 2009
`
`
`SIS RESOURCES LTD.,
`
`
` Petitioner,
`
`
` v.
`
`
`
`STARBUZZ TOBACCO, INC.,
`
`
`
`Registrant.
`
`CANCELLATION NO: 92060895
`
`REGISTRANT STARBUZZ TOBACCO,
`INC.’S REPLY TO OPPOSITION TO
`MOTION TO DISMISS PETITION TO
`CANCEL
`
`Petition Filed: February 17, 2015
`
`[RELATED OPPOSITION NO. 91213286]
`
`
`)
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`)
`)
`)
`)
`)
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`)
`)
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`)
`)
`)
`
`
`
`i
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1 
`
`ARGUMENT ...................................................................................................................... 2 
`
`I. 
`
`II. 
`
`BASED UPON THE DOCUMENTS ATTACHED TO THE PETITION,
`IT APPEARS CERTAIN THAT PETITIONER CANNOT PROVE ANY
`SET OF FACTS WHICH WOULD SUPPORT ITS CLAIM OR
`ENTITLE IT TO RELIEF .......................................................................... 2 
`
`LOEC’S COUNTERCLAIMS DID NOT PUT STARBUZZ’S RIGHTS
`FOR TOBACCO PRODUCTS AT ISSUE ................................................ 3 
`
`A. 
`
`B. 
`
`LOEC’S Counterclaims Concerned Starbuzz’s Right to Use
`Various BLUE Marks for Electronic Cigarettes, Not Tobacco
`Products........................................................................................... 3 
`
`Petitioner’s Arguments Regarding Starbuzz’s Answer to LOEC’s
`Counterclaims are Irrelevant. .......................................................... 4 
`
`III. 
`
`STARBUZZ’S COMPLAINT IN THE LORILLARD ACTION FOR
`DECLARATORY RELIEF DID NOT PUT ITS RIGHTS INTO ISSUE . 5 
`
`A. 
`
`B. 
`
`C. 
`
`Starbuzz’s Complaint Against Lorillard Did Not Put its Rights to
`Own and Register the BLUE MIST Mark Into Issue. .................... 5 
`
`Starbuzz’s Position as a Declaratory Relief Plaintiff Against
`Lorillard Did Not Automatically Put its Rights to the BLUE MIST
`Mark for Tobacco Products at Issue. .............................................. 6 
`
`LOEC’s Answer to Starbuzz’s Complaint Also Did Not Involve
`Starbuzz’s Right to Own and Register the BLUE MIST Mark for
`Tobacco Products. ........................................................................... 8 
`
`IV. 
`
`V. 
`
`VI. 
`
`STARBUZZ, LORILLARD, AND LOEC’S PRELAWSUIT
`DISCUSSIONS DID NOT INVOLVE STARBUZZ’S RIGHT TO OWN
`AND REGISTER THE BLUE MIST MARK FOR TOBACCO
`PRODUCTS ................................................................................................ 9 
`
`PETITIONER’S STANDING ARGUMENT IS A FRIVOLOUS
`ATTEMPT TO CONFUSE THE ISSUES ................................................. 9 
`
`PETITIONER’S ARGUMENT THAT STARBUZZ WAIVED ITS
`RIGHT TO ASSERT A RULE 12(b)(6) DEFENSE IS ALSO
`FRIVOLOUS ............................................................................................ 10 
`
`CONCLUSION ................................................................................................................. 11 
`ii
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases 
`
`Aetna Life Ins. Co. v. Alla Medical Services, Inc., 855 F.2d 1470, 1474-1475 (9th Cir.
`1988) ............................................................................................................................. 10
`
`Brown v. Trustees of Boston Univ., 891 F.2d 337, 357 (1st Cir. 1989) ............................ 10
`
`Constellation Brands, Inc. v. Arbor Hill Assocs., Inc., 535 F. Supp. 2d 347 (W.D.N.Y.
`2008) ............................................................................................................................... 6
`
`Durning v. First Boston Corp., 815 F.2d 1265, 1267 (9th Cir. 1987) ................................ 2
`
`Erlich v. Ouellette, Labonte, Roberge & Allen, P.A., 637 F.3d 32, 35 (1st Cir. 2011) .... 10
`
`In re Colonial Mortg. Bankers Corp., 324 F.3d 12, 16 (1st Cir. 2003) .............................. 2
`
`Knievel v. ESPN, 393 F.3d 1068 (9th Cir. 2005) ................................................................ 2
`
`Levi Strauss & Co. v. Abercrombie & Fitch Trading, 548 F. Supp. 2d 811 (N.D. Cal.,
`2008) ............................................................................................................................... 7
`
`Nishimatsu Const. Co., Ltd. v. Houston Nat’l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975) 2
`
`Plumtree Software v. Datamize, LLC, No. C 02-5693 VRW, 2003 WL 25841157 (N.D.
`Cal., Oct. 6, 2003) ........................................................................................................... 7
`
`Spreewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001) ........................... 2
`
`Thompson v. Illinois Dept. of Prof. Reg., 300 F.3d 750, 754 (7th Cir. 2002) .................... 2
`
`Statutes 
`
`15 U.S.C. § 1065(2) ............................................................................................................ 6
`
`Other Authorities 
`
`TMEP § 1605.04 ............................................................................................................. 5, 7
`
`Rules 
`
`Fed. R. Civ. P. 12(h) ......................................................................................................... 10
`
`Fed. R. Civ. P. 13 ................................................................................................................ 2
`
`Fed. R. Civ. P. 8 .................................................................................................................. 2
`
`iii
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`

`

`MEMORANDUM OF POINTS AND AUTHORITIES
`
`INTRODUCTION
`
`
`
`Petitioner, SIS Resources LTD. (“SIS Resources” or “Petitioner”), attempts to
`
`avoid dismissal of its meritless challenge to Registrant Starbuzz Tobacco, Inc.’s
`
`(“Starbuzz”) registration for BLUE MIST for tobacco products by presenting a lengthy
`
`pleading that makes irrelevant arguments and attempts to confuse the issues. In making
`
`its arguments, Petitioner repeatedly ignores the fact that this petition for cancellation (the
`
`“Petition”) only involves Starbuzz’s right to own and register the BLUE MIST trademark
`
`for tobacco products (Reg. No. 3619407). The entire Petition is based upon Starbuzz’s
`
`filing of a Section 15 affidavit for that registration during the pendency of the Starbuzz
`
`Tobacco, Inc. v. Lorillard, Inc., et al. action (the “Lorillard Action”). Petitioner alleges
`
`that since the Lorillard Action was pending, Starbuzz’s statement that there was no
`
`proceeding involving Starbuzz’s right to own and register the BLUE MIST mark was
`
`false and thus fraudulent. The Lorillard Action, however, concerned Starbuzz’s right to
`
`own and register the BLUE MIST mark for electronic cigarettes, not tobacco products.
`
`This is made abundantly clear by reviewing the plain allegations in the counterclaims (the
`
`“Counterclaims”) filed by LOEC, Inc. (“LOEC”), which are attached as exhibits to the
`
`Petition. As such, the Lorillard Action did not involve Starbuzz’s right to own and
`
`register the BLUE MIST mark for tobacco products, and Starbuzz’s Section 15 affidavit
`
`was not false.
`
`1
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`
`ARGUMENT
`
`I.
`
`BASED UPON THE DOCUMENTS ATTACHED TO THE PETITION, IT
`APPEARS CERTAIN THAT PETITIONER CANNOT PROVE ANY SET
`OF FACTS WHICH WOULD SUPPORT ITS CLAIM OR ENTITLE IT TO
`RELIEF
`
`Petitioner begins its opposition by arguing that there may be a factual issue as to
`
`the scope of the Lorillard Action, and the test is whether the Petition has stated a claim
`
`for relief that is plausible on its face. Opposition, p. 2. Petitioner, however, ignores the
`
`rule that documents attached to the complaint and incorporated therein by reference are
`
`also treated as part of the complaint for purposes of a Rule 12(b)(6) motion. In re
`
`Colonial Mortg. Bankers Corp., 324 F.3d 12, 16 (1st Cir. 2003). A court may disregard
`
`allegations in the complaint if contradicted by facts established by reference to
`
`documents attached as exhibits to the complaint. Nishimatsu Const. Co., Ltd. v. Houston
`
`Nat’l Bank, 515 F.2d 1200, 1206 (5th Cir. 1975); Durning v. First Boston Corp., 815
`
`F.2d 1265, 1267 (9th Cir. 1987); Spreewell v. Golden State Warriors, 266 F.3d 979, 988
`
`(9th Cir. 2001); Thompson v. Illinois Dept. of Prof. Reg., 300 F.3d 750, 754 (7th Cir.
`
`2002) (“[W]hen a written instrument contradicts allegations in a complaint to which it is
`
`attached, the exhibit trumps the allegations.”). This incorporation by reference doctrine
`
`allows the court to look beyond the pleadings without converting the Rule 12(b)(6)
`
`motion into a motion for summary judgment. Knievel v. ESPN, 393 F.3d 1068 (9th Cir.
`
`2005).
`
`Here, Petitioner attached the complaint and counterclaims from the Lorillard
`
`Action as exhibits to the Petition. These documents set forth the parties’ claims for relief
`
`against each other and the grounds for those claims. Fed. R. Civ. P. 8(a), 13. Thus, the
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`2
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`Board may rely upon those documents in determining what rights were at issue in the
`
`Lorillard Action.
`
`II.
`
`LOEC’S COUNTERCLAIMS DID NOT PUT STARBUZZ’S RIGHTS FOR
`TOBACCO PRODUCTS AT ISSUE
`
`A.
`
`LOEC’S Counterclaims Concerned Starbuzz’s Right to Use Various
`BLUE Marks for Electronic Cigarettes, Not Tobacco Products.
`
`The entire Petition is based upon the premise that the Lorillard Action involved
`
`Starbuzz’s right to own and register the BLUE MIST trademark for tobacco products.
`
`Opposition, p. 7. Yet, the very same pleadings from that action show that such rights
`
`were never at issue. In particular, the Complaint and Counterclaims show that Starbuzz’s
`
`right to own and register the BLUE MIST trademark for tobacco products was never at
`
`issue in the Lorillard Action. Rather, at issue was Starbuzz’s right to use BLUE MIST
`
`for electronic cigarettes, which Starbuzz had separate trademark applications for.
`
`Petitioner argues that the line between tobacco products and electronic cigarettes is not
`
`clearly drawn. Opposition, p. 4. LOEC’s Counterclaims, however, specifically recited
`
`how LOEC owns the BLU ECIGS mark for electronic cigarettes. Petition, Exhibit E, pp.
`
`15-18. In the Counterclaims, LOEC alleged that Starbuzz’s entry into the electronic
`
`cigarette market, and use of the BLUE MIST mark in connection with electronic
`
`cigarette products, is confusingly similar to LOEC’s BLU marks. Petition, Exhibit E, p.
`
`18 ¶ 24. LOEC further claimed that it only demanded that Starbuzz cease and desist from
`
`use of the BLUE MIST mark for electronic cigarette products, and withdraw its
`
`application for BLUE MIST for electronic cigarette products. Petition, Exhibit E, p. 19 ¶
`
`27. LOEC further complained of Starbuzz’s use of BLUE for electronic cigarettes.
`
`Petition, Exhibit E, p. 20 ¶ 31. The trademark infringement counterclaims themselves
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`3
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`were only based upon Starbuzz’s use of BLUE marks for electronic cigarette products,
`
`not any product in general. Petition, Exhibit E, p. 23-25 ¶¶ 38, 40, 49, 50. In fact, not
`
`once in the Counterclaims did LOEC allege that Starbuzz’s use of BLUE MIST for
`
`tobacco products was likely to cause confusion with LOEC’s marks, or that Starbuzz
`
`had no right to use BLUE MIST for tobacco products. Petitioner has also failed to
`
`address the fact that LOEC’s prayer for relief did not challenge Starbuzz’s right to keep
`
`the registration for BLUE MIST for tobacco products. Petition, Exhibit E, p. 26 ¶ 8.
`
`Therefore, LOEC’s counterclaims neither affected nor involved Starbuzz’s right to own
`
`and register the BLUE MIST trademark for tobacco products.
`
`Petitioner also makes a misleading argument that LOEC defined the “BLUE
`
`MIST Mark” in its Counterclaims as the BLUE MIST mark for tobacco products.
`
`Opposition, p. 11. This is irrelevant. As shown above, every allegation against Starbuzz
`
`concerned its use of BLUE MIST for electronic cigarettes. Thus, Starbuzz’s right to own
`
`and register the BLUE MIST mark for tobacco products was not at issue.
`
`B.
`
`Petitioner’s Arguments Regarding Starbuzz’s Answer to LOEC’s
`Counterclaims are Irrelevant.
`
`In an attempt to derail Starbuzz’s analysis, Petitioner argues that Starbuzz’s
`
`denials and refutations of fact to LOEC’s counterclaims are not pertinent to a Rule
`
`12(b)(6) analysis. Opposition, p. 4. However, Starbuzz is using LOEC’s allegations to
`
`show that Starbuzz’s rights to the BLUE MIST mark for tobacco products was never at
`
`issue in the Lorillard Action. Thus, Starbuzz’s statement to the USPTO that there were
`
`no pending proceedings involving Starbuzz’s right to use and own the BLUE MIST mark
`
`for tobacco products was true. Since the exhibits attached to the Petition support that
`
`Starbuzz’s statement to the USPTO was true, Petitioner’s allegation that Starbuzz
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`4
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`committed fraud is contradicted on the face of the Petition, and thus the sole basis for the
`
`Petition fails. Therefore, the Petition should be dismissed with prejudice.
`
`III.
`
`STARBUZZ’S COMPLAINT IN THE LORILLARD ACTION FOR
`DECLARATORY RELIEF DID NOT PUT ITS RIGHTS INTO ISSUE
`
`A.
`
`Starbuzz’s Complaint Against Lorillard Did Not Put its Rights to
`Own and Register the BLUE MIST Mark Into Issue.
`
`Petitioner also argues that by relying upon its BLUE MIST mark in the Complaint
`
`for the Lorillard Action, Starbuzz put its rights in that mark at issue. Petition, pp. 9-10.
`
`The issue for a Section 15 declaration, however, is not whether the trademark owner has
`
`claimed rights in a trademark as part of its complaint. Rather, there must be a
`
`counterclaim involving the owner’s right in the mark. See TMEP § 1605.04 (“The
`
`USPTO does not consider a proceeding involving the mark in which the owner is the
`
`plaintiff, where there is no counterclaim involving the owner’s rights in the mark, to be a
`
`“proceeding involving these rights” that would preclude the filing or acknowledgment of
`
`a §15 affidavit or declaration.”). Since, as explained supra, none of the Counterclaims
`
`involved Starbuzz’s right to own and register the BLUE MIST mark for tobacco
`
`products, the Lorillard Action was not a proceeding involving those rights that would
`
`preclude the filing or acknowledgment of a §15 affidavit.
`
`Furthermore, Starbuzz’s own allegations never put its right to own and register
`
`the BLUE MIST mark for tobacco products at issue. Rather, Starbuzz claimed ownership
`
`of the BLUE MIST mark for tobacco products. LOEC did not allege that Starbuzz was
`
`not the owner of the BLUE MIST mark for tobacco products, and it did not allege that
`
`Starbuzz did not have the right to keep the registration of the same.
`
`
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`5
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`
`B.
`
`Starbuzz’s Position as a Declaratory Relief Plaintiff Against Lorillard
`Did Not Automatically Put its Rights to the BLUE MIST Mark for
`Tobacco Products at Issue.
`
`Petitioner also claims that courts have found declaratory relief claims for non-
`
`infringement and counterclaims for infringement to constitute proceeding involving said
`
`rights under 15 U.S.C. § 1065(2). Opposition, p. 14. Careful review of the cases cited,
`
`however, show that they are not applicable here.
`
`In Constellation Brands, Inc. v. Arbor Hill Assocs., Inc., 535 F. Supp. 2d 347
`
`(W.D.N.Y. 2008), the declaratory relief plaintiff, Constellation, owned trademark
`
`registrations for ARBOR VALLEY for table wine, and ARBOR MIST for wine
`
`beverages. Id. at 350, 352. The defendant and counterclaimant, AHA, owned a
`
`registration for ARBOR HILL for food products. Id. at 350, 351. AHA asserted that
`
`Constellation’s use of ARBOR MIST for wine beverages infringed upon the ARBOR
`
`HILL trademark. Id. at 352-353. Constellation filed a complaint for declaratory relief,
`
`asserting no trademark infringement. Id. at 353. AHA counterclaimed for trademark
`
`infringement. Id. During the pendency of that same case, Constellation filed a Section 8
`
`and 15 affidavit for the ARBOR MIST mark. Id. AHA then amended its counterclaims
`
`to assert that Constellation had committed fraud in filing that affidavit. Id. at 355.
`
`This case differs markedly from Constellation Brands. As explained supra,
`
`LOEC has never asserted that Starbuzz’s use of the BLUE MIST mark for tobacco
`
`products infringed upon LOEC’s BLU marks. Also, LOEC’s counterclaims did not
`
`challenge Starbuzz’s right to own and register the BLUE MIST mark for tobacco
`
`products. Furthermore, Starbuzz’s declaratory relief action was not brought defensively
`
`to protect its registration for BLUE MIST for tobacco products, but to protect its
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`6
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`registration for electronic cigarettes. Additionally, though the Lorillard Action was
`
`pending, LOEC never amended its counterclaims to assert that Starbuzz had committed
`
`fraud in filing the Section 8 and 15 affidavit. Thus, Constellation Brands is inapplicable.
`
`In Plumtree Software v. Datamize, LLC, No. C 02-5693 VRW, 2003 WL
`
`25841157 (N.D. Cal., Oct. 6, 2003), the declaratory relief defendant had already filed a
`
`complaint for patent infringement in the District of Montana. Id. at 2. The court was not
`
`concerned with issues of trademark infringement or cancellation. Furthermore, focusing
`
`on realignment is irrelevant. The TMEP rule regarding counterclaims reflects that a party
`
`has to actively seek invalidation of the trademark owner’s rights in order for it to affect
`
`the owner’s right to own and register the trademark. TMEP § 1605.04. Again, LOEC
`
`did not allege that Starbuzz’s BLUE MIST mark for tobacco products was likely to cause
`
`confusion with LOEC’s BLU marks, or seek cancellation of Starbuzz’s BLUE MIST
`
`mark for tobacco products. Rather, LOEC’s claims focused on Starbuzz’s use of the
`
`BLUE MIST mark for electronic cigarettes.
`
`In Levi Strauss & Co. v. Abercrombie & Fitch Trading, 548 F. Supp. 2d 811
`
`(N.D. Cal., 2008), Levi Strauss was previously engaged in contested federal lawsuits
`
`when the section 8 and 15 affidavit was filed. Id. at 812. Abercrombie alleged that in
`
`one of those cases, the defendant specifically challenged Levi Strauss’ claim of
`
`ownership of the trademark and its right to register and keep the same. Id. at 812. Since
`
`there was no such claim in this case, Levi Strauss is not applicable.
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`7
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`
`C.
`
`LOEC’s Answer to Starbuzz’s Complaint Also Did Not Involve
`Starbuzz’s Right to Own and Register the BLUE MIST Mark for
`Tobacco Products.
`
`Petitioner also argues that LOEC’s answer to the Complaint involved Starbuzz’s
`
`right to own and register the BLUE MIST mark. Opposition, p. 10. None of the
`
`paragraphs that Petitioner cites support this argument.
`
`The first paragraph is a denial that Starbuzz’s rights in the BLUE MIST mark for
`
`tobacco have priority over LOEC’s rights in the BLU Marks. There is no denial of the
`
`fact that Starbuzz owns the BLUE MIST mark for tobacco products, or has the right to
`
`register the same.
`
`In the second paragraph, LOEC admits that there is a controversy regarding
`
`Starbuzz’s use of the BLUE MIST mark. As explained supra, however, the controversy
`
`involved Starbuzz’s use of BLUE MIST for electronic cigarettes, not tobacco products.
`
`As to the third paragraph, LOEC simply admits that Starbuzz filed an action and
`
`further denies that Starbuzz is entitled to relief. Again, there was no claim regarding
`
`Starbuzz’s right to own and register the BLUE MIST mark for tobacco products.
`
`With the fourth paragraph, LOEC simply acknowledges that Starbuzz asserted a
`
`lack of confusion between Starbuzz’s BLUE MIST mark for electronic cigarettes, and
`
`LOEC’s BLU marks.
`
`None of these paragraphs concerned Starbuzz’s right to own and register the
`
`BLUE MIST mark for tobacco products. Thus, LOEC’s answer did not make the
`
`Lorillard Action a proceeding involving Starbuzz’s right to own and register the BLUE
`
`MIST mark for tobacco products.
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`8
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`IV.
`
`STARBUZZ, LORILLARD, AND LOEC’S PRELAWSUIT DISCUSSIONS
`DID NOT INVOLVE STARBUZZ’S RIGHT TO OWN AND REGISTER
`THE BLUE MIST MARK FOR TOBACCO PRODUCTS
`
`Petitioner further argues that the BLUE MIST registration was at issue from the
`
`outset of the dispute between Starbuzz and Lorillard and LOEC. First, these pre-lawsuit
`
`communications are irrelevant because they were not proceedings that involved
`
`Starbuzz’s right to own and register the BLUE MIST mark for tobacco products. Second,
`
`review of the communications at issue show that the parties were only discussing whether
`
`Starbuzz had the right to continue owning and using the BLUE MIST mark for electronic
`
`cigarettes, not tobacco products. Petition, Exhibit E, p. 27 (“We have recently learned
`
`that [Starbuzz] is selling, offering for sale, advertising, and/or distributing electronic
`
`cigarettes under the mark BLUE MIST (the “Infringing Mark”), and has applied to
`
`register the Infringing Mark with the Trademark Office in connection with electronic
`
`cigarettes”) (emphasis added). In fact, Lorillard only demanded that Starbuzz abandon its
`
`trademark application for BLUE MIST for electronic cigarettes, not tobacco products.
`
`Petition, Exhibit E, p. 28. Even after Starbuzz informed LOEC of the existence of the
`
`BLUE MIST registration for tobacco products, LOEC did not challenge Starbuzz’s
`
`ownership of that mark. Instead, LOEC only demanded that Starbuzz cease use of BLUE
`
`MIST for electronic cigarettes. Petition, Exhibit E, p. 40. Thus, none of the pre-litigation
`
`communications involved Starbuzz’s right to own and register the BLUE MIST mark for
`
`tobacco products.
`
`V.
`
`PETITIONER’S STANDING ARGUMENT IS A FRIVOLOUS ATTEMPT
`TO CONFUSE THE ISSUES
`
`Petitioner further presents a long discussion regarding standing. Opposition, pp.
`
`4-6. As Petitioner itself acknowledges, however, Starbuzz did not challenge SIS
`
`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
`
`9
`
`

`

`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
`
`Resources’ standing to assert a petition for cancellation. Therefore, the entire discussion
`
`is a frivolous waste of resources.
`
`VI.
`
`PETITIONER’S ARGUMENT THAT STARBUZZ WAIVED ITS RIGHT
`TO ASSERT A RULE 12(b)(6) DEFENSE IS ALSO FRIVOLOUS
`
`Finally, Petitioner argues that Starbuzz’s motion to consolidate and suspend
`
`proceedings constituted an appearance and waived Starbuzz’s right to assert any
`
`defenses. This argument is meritless, and Petitioner has never presented any existing law
`
`to support the assertion. Rather, existing law holds that the filing of non-Rule 12 motions
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`does not trigger any waiver of Rule 12 defenses. See Aetna Life Ins. Co. v. Alla Medical
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`Services, Inc., 855 F.2d 1470, 1474-1475 (9th Cir. 1988) (motion to stay did not bar a
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`subsequent Rule 12(b)(6) motion). Furthermore, a defense of failure to state a claim may
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`be raised in any pleading allowed or ordered under Rule 7(a), by a motion for judgment
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`on the pleadings, or at trial. Fed. R. Civ. P. 12(h). The defense cannot be waived by
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`failing to assert it in a preliminary motion or answer. Brown v. Trustees of Boston Univ.,
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`891 F.2d 337, 357 (1st Cir. 1989). Even if a Rule 12(b)(6) motion is deemed untimely, it
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`will simply be construed to be a Rule 12(c) motion for judgment on the pleadings. Erlich
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`v. Ouellette, Labonte, Roberge & Allen, P.A., 637 F.3d 32, 35 (1st Cir. 2011). Therefore,
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`Petitioner’s legal contention is not warranted by existing law and its argument is
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`frivolous.
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`///
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`///
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`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
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`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
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`CONCLUSION
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`Based on the foregoing, Registrant Starbuzz Tobacco, Inc. respectfully requests
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`that the Trademark Trial and Appeal Board dismiss the Petition with prejudice.
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`Respectfully submitted,
`THE PATEL LAW FIRM, P.C.
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`/jasonchuan/
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`Natu J. Patel
`Jason Chuan
`Attorneys for Registrant,
`Starbuzz Tobacco, Inc.
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`The Patel Law Firm, P.C.
`22952 Mill Creek Drive
`Laguna Hills, CA 92653
`Telephone:
`(949) 955-1077
`Facsimile:
`(949) 955-1877
`NPatel@thePatelLawFirm.com
`JChuan@thePatelLawFirm.com
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`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
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`11
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`Cancellation No. 92060895
`In the matter of TM Registration No. 3619407
`Registered Date of May 12, 2009
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`CERTIFICATE OF SERVICE
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`I certify that a copy of REGISTRANT STARBUZZ TOBACCO, INC.’S REPLY
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`TO OPPOSITION TO MOTION TO DISMISS PETITION TO CANCEL is being served
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`Via United States mail, postage prepaid, on this the 4th day of May 2015, to the
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`following:
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`Applicant’s Attorney/Representative:
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`ANN K FORD
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`JOHN M. NADING
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`DLA PIPER LLP US
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`500 8TH STREET NW
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`WASHINGTON, DC 20004
`UNITED STATES
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`Ann.Ford@d1apiper.com, dctradernarks@dlapiper.com,
`john.nading@dlapiper.com,
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`l
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`l/Z'dpi A.
`W‘
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`Registrant Starbuzz Tobacco, Inc.’s Reply to Opposition to Motion to Dismiss Petition to Cancel
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`12
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