Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA698218
`ESTTA Tracking number:
`09/25/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061955
`Plaintiff
`DFASS Brands Holdings, LLC
`DAVID EVERETT MARKO
`MARKO & MAGOLNICK PA
`3001 SW 3RD AVE
`MIAMI, FL 33129
`UNITED STATES
`friedman@mm-pa.com, marko@mm-pa.com
`Other Motions/Papers
`David Everett Marko
`marko@mm-pa.com, friedman@mm-pa.com, robert@mm-pa.com
`/David E Marko/
`09/25/2015
`Motion in Opposition of Motion to Dismiss for Standing (FINAL).pdf(233251
`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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`DFASS Brand Holdings, LLC, a Florida
`limited liability company,
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`Petitioner,
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`and
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`Reginald Williams, an individual,
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`Registrant.
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`__________________________________
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`In the matter of Registration No.
`4313253
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`For the mark TIME TRAVEL ACADEMY
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`Registered on April 2, 2013
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`Cancellation No. 92061955
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`MEMORANDUM OF PETITIONER DFASS BRAND HOLDINGS, LLC
`IN OPPOSITION TO REGISTRANT’S MOTION TO
`DISMISS THE PETITION TO CANCEL FOR LACK OF STANDING
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`Petitioner, DFASS Brand Holdings, LLC by and through undersigned counsel,
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`hereby submits this Memorandum in Opposition to Registrant’s Motion to Dismiss the
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`Petition to Cancel for Lack of Standing. Petitioner’s Petition to Cancel sufficiently
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`alleges standing to challenge Registration of the Mark and states a claim upon which
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`relief may be granted. Accordingly, Registrant’s motion should be denied.
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`STATEMENT OF FACTS AND PROCEDURAL HISTORY
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`Reginald Williams (“Registrant”) maintains a website to sell books, videos, and
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`promotional items with a time travel theme. Pet. Cancel at ¶ 3. Registrant applied for
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`trademark protection on April 5, 2008 to protect the mark TIME TRAVEL ACADEMY
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`(the “Mark”). Id. at ¶ 1. On April 2, 2013, the United States Patent and Trademark
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 2
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`Office (“USPTO”) issued registration number 4313253 to Registrant for trademark
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`protection of the Mark in class 035 (the “Registration”). Id at Introduction.
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`DFASS Brand Holdings, LLC, a Florida limited liability company (“Petitioner”), is
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`in the business of duty-free retail sales at international ports throughout the Americas.
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`Id. at ¶ 1. Petitioner created a subsidiary company called “Time Travel,” at significant
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`expense, for retail store facilities that would sell, inter alia, watches, clocks, and jewelry.
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`Id. at ¶¶ 2, 33. Petitioner attempted to register the “Time Travel” mark, but this
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`application was denied due to Registrant’s registration of the Mark. Id. at ¶ 8. Inability
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`to protect the “Time Travel” mark has damaged, and continues to damage, Petitioner.
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`Id. at ¶ 9.
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`Petitioner filed a Petition to Cancel the Registration on July 31, 2015 (the
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`“Petition”) with the USPTO. See generally id. In the Petition, Petitioner alleges that the
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`Mark is not registrable because it is comprised of two parts; a descriptive term (TIME
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`TRAVEL) and a generic term (ACADEMY), neither of which are registrable, making the
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`Mark entirely unregistrable. See id. at ¶¶ 10-22. Petitioner also argues that the Mark is
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`not inherently distinctive, and has not acquired a secondary meaning in the
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`marketplace. Id. at ¶¶ 34-43.
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`On September 14, 2015, Registrant filed a Motion to Dismiss the Petition to
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`Cancel for Lack of Standing. See generally Reg’s Mot. Dismiss. In his motion,
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`Registrant asserts that Petitioner failed to sufficiently allege standing, and therefore
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`failed to state a claim upon which relief can be granted. Id. at 2. Registrant also
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`peppered the motion with various random legal theories on which to dismiss the petition
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`such as alleged failure to provide proper notice of the claim, alleged failure to plead
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 3
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`essential elements of the claim, and alleged failure to provide “even a modicum of
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`details.” Id. at 3. In the interest of clarity and completeness, Petitioner will address
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`each assertion independently, supporting its contention that the motion to dismiss
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`should be denied.
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`LEGAL DISCUSSION
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`Registrant’s Motion to Dismiss Should be Denied.
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`“Motions to dismiss are rarely granted and generally viewed with disfavor.” Alpha
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`Kappa Alpha Sorority, Inc. v. Converse, Inc., 175 Fed. Appx. 672, 676 (5th Cir. 2006)
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`(citing Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 570 (5th Cir. 2005)).
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`Courts may dismiss a complaint “only if it is clear that no relief could be granted under
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`any set of facts that could be proved consistent with the allegations.” Powell v. U.S.,
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`945 F.2d 374, 375 (11th Cir. 1991) (citing Hishon v. King & Spalding, 467 U.S. 69, 73
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`(1984)). When reviewing a motion to dismiss, courts must “accept well pleaded facts as
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`true and draw all reasonable inferences in [Petitioner’s] favor.” Johnson v. Wal-Mart
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`Stores, Inc., 588 F.3d 439, 441 (7th Cir. 2007).
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`Petitioner has demonstrated standing to bring this cancellation action.
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`Petitioner agrees that it is required to possess standing to maintain this
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`cancellation action. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1026
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`(C.C.P.A. 1982). “A petition to cancel a registration of a mark . . . may . . . be filed . . .
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`by any person who believes that he is or will be damaged . . . by the registration of a
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`mark . . .” Lanham Act, 15 U.S.C. § 1064 (2006). The “‘case’ and ‘controversy’
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`restrictions for standing [required in an Article III court] do not apply to matters before
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`administrative agencies and boards, such as the PTO.” Ritchie v. Simpson, 170 F.3d
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 4
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`1092, 1094 (Fed. Cir. 1999). To establish standing, a plaintiff must “show that it has a
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`‘real interest’ in the proceeding, by alleging, and thereafter proving at trial, that is has a
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`real commercial interest in [the Mark], plus a reasonable basis for its belief that it would
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`be damaged by the registration in question.” Chemical New York Co. v. Conmar Forms
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`Systems, Inc., 1 U.S.P.Q.2d 1139, *3 (T.T.A.B. 1986) (emphasis added).
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`A complaint should be considered in its entirety. “It is elementary that, on a
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`motion to dismiss, a complaint must be read as a whole, drawing all inferences
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`favorable to the pleader.” Yoder v. Orthomolecular Nutrition Institute, Inc., 751 F.2d
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`555, 562 (2nd Cir. 1985) (citing Conley v. Gibson, 355 U.S. 41, 47-48 (1957)). A
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`complaint should not be judged by “dismembering it and viewing its separate parts, but
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`only by looking at it as a whole.” Ostrofe v. H. S. Crocker, Co., Inc., 670 F.2d 1378,
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`1381 (9th Cir. 1982).
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`Registrant fails to consider the complaint as a whole when concluding that
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`Petitioner has made only two vague assertions that relate to standing. In his analysis,
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`Registrant looks solely to paragraphs eight and nine of the Petition to support this
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`conclusion. However, factors supporting standing can be found elsewhere in the
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`complaint. See, e.g., Pet. Cancel at ¶ 2 (explaining that Petitioner has already
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`expended significant resources to create a business); and id. at ¶ 33 (explaining that
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`Registrant’s registration of the Mark is a source of injury for Petitioner). Petitioner
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`expressly alleged this interest in Paragraph 7 of the Petition, wholly ignored by
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`Registrant.
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`1. Establishing Real Interest
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 5
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`The USPTO defined real interest as an interest in the outcome of a proceeding
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`“beyond that of the general public.” Ritchie v. Simpson, 41 U.S.P.Q.2d 1859, 1861
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`(T.T.A.B. 1996) (citing Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d
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`490, 493 (Fed. Cir. 1987)). On appeal, the Federal Circuit relaxed the standard, holding
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`that to satisfy the real interest standard, a plaintiff need merely have a stake in the
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`outcome of the proceeding, and be more than a “mere intermeddler.” Ritchie v.
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`Simpson, 170 F.3d 1092, 1097 (Fed. Cir. 1999). In Ritchie, the plaintiff’s alleged belief
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`that his belief was disparaged was sufficient to satisfy real interest for standing
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`purposes.
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`Petitioner’s interest meets the more restrictive USPTO requirement for real
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`interest. Petitioner’s interest in the outcome of the instant proceeding is beyond that of
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`the general public because Petition alleges that it is, and will continue to be, damaged
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`by Registration of the Mark. Pet. Cancel at ¶ 9. Facts supporting this allegation include
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`the significant resources expended to create the business, and inability to protect the
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`Time Travel mark due to the Registration. Id. at ¶¶ 2, 33. Petitioner is more than a
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`mere intermeddler because, as alleged in the Petition, its application to register the
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`Time Travel mark was denied due to Registrant’s existing Registration. Id. at ¶ 8.
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`2. Establishing Reasonable Belief of Potential Damages
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`To establish a reasonable belief of potential damages, Petitioner needs only to
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`show a belief that it will be damaged, so long as the belief has a basis in fact. Ritchie v.
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`Simpson, 170 F.3d 1092, 1098 (Fed Cir. 1999). This reasonable belief can be shown in
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`many ways. Id. Facts alleged in the pleadings need not be sufficient to prevail on the
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`merits, but need only show that the belief is not a subjective one. Id.
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 6
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`Petitioner believes that it will be damaged, as alleged in the Petition. Pet. Cancel
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`at ¶ 9. This belief is not subjective because it is based on two material facts: (i) that
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`Petitioner has “expended significant resources to create a subsidiary” and (ii) that
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`Petitioner is unable to register its mark to protect the brand it has invested said
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`resources in. See Pet. Cancel at ¶¶ 2, 7, and 8. Petitioner need only allege these facts
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`in the pleadings, but bears the burden of proving that the resources were expended,
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`and that it was unable to register the mark, during the trial. Chemical New York Co. v.
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`Conmar Forms Systems, Inc., 1 U.S.P.Q.2d 1139, *3 (T.T.A.B. 1986).
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`Finally, Registrant claims that Petitioner failed to identify its application for
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`registration, and asserts that Petitioner failed to identify the trademark protection
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`sought. Reg’s Mot. Dismiss at 3. This assertion ignores the facts provided in the
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`Petition. Petitioner alleges that the trademark sought is Time Travel. Pet. Cancel at ¶
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`33. Further, Petitioner alleges that it applied for and was denied registration based on
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`the Registration. Id. at ¶ 8. Petitioner’s allegation of application and denial is sufficient
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`to establish standing. See Chemical New York Co., 1 U.S.P.Q.2d at *3. Petitioner need
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`not prove in the Petition that it applied for, and was rejected, registration of the “Time
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`Travel” mark. See id. Petitioner will bear the burden of proving that application was
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`made and rejected when the case is heard on the merits during a trial. See id.
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`Petitioner has Provided Notice of the Nature and Basis for the Petition to Cancel.
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`A complaint need only give Respondent “fair notice of what [Petitioner’s] claim is
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`and the grounds upon which it rests.” Swierkiewicz v. Sorema, N.A., 534 U.S. 506, 507
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`(2002). To provide fair notice, a complaint should identify the circumstances underlying
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`the claim and basis of the litigation. Aktieselskabet AF 21. November 2001 v. Fame
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 7
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`Jeans, Inc., 525 F.3d 8, 16 (DC Cir. 2008). The complaint should contain direct
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`allegations; in the absence of direct allegations, “a complaint must contain . . . inferential
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`allegations.” Id. (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 562 (2007)). To
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`illustrate, in a complaint for patent infringement, the complaint should include the patent
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`number allegedly infringed, and describe the defendant’s product that infringes the
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`patent. Id. at 17.
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`A complaint must provide enough facts to state a plausible claim, such that a
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`court can reasonably separate facts from legal conclusions, and reasonably infer that
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`the Petitioner can prevail. A.G. ex rel. Maddox. v. Elsevier, Inc., 732 F.3d 77, 80 (1st
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`Cir. 2013). To withstand a motion to dismiss, a plaintiff need not demonstrate that it is
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`likely to succeed on the merits, but instead need only show ‘more than a sheer
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`possibility’ of success. Id. (citing Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
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`Petitioner has notified Registrant of its claim and the grounds supporting it. In
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`the introduction of the Petition, Petitioner includes the registration number of the
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`trademark that it is petitioning to cancel, and asserts that “it will be damaged by the
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`continued registration of the mark . . .” Pet. Cancel at Introduction. Throughout the
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`Petition, Petitioner makes direct allegations, explaining the grounds upon which its
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`argument rests, in separate sections, labeled with bold headings. See, e.g., id. at ¶¶
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`10-15 (arguing that the term ACADEMY in the Mark is generic); and id. at ¶¶ 16-23
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`(arguing that the term TIME TRAVEL in the Mark is descriptive); and id. at ¶¶ 24-32
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`(arguing that because all terms in the Mark are unregistrable, that the Mark as a whole
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`is unregistrable); and id. at ¶¶ 34-38 (arguing in the alternative that the Mark is not
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 8
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`inherently distinctive; and id. at ¶¶ 39-42 (arguing in the alternative that the Mark has
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`not acquired a secondary meaning).
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`A plausibility analysis will conclude that sufficient facts were pleaded to support
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`Petitioner’s claim. Separating conclusory legal allegations from fact, Petitioner has
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`alleged facts relating to the nature of Registrant and Petitioner’s businesses. Id. at ¶¶
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`2-3. Petitioner has described the terms contained in the Mark. Id. at Introduction.
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`Petitioner has described Registrant’s services as disclosed in the registration
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`application for the Mark. Id. at ¶ 5. Petitioner has included the instructions provided to
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`Registrant by the USPTO relating to registering the Mark. Id. at ¶ 21. Finally, Petitioner
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`described its failed efforts to register its mark, leading to the filing of the cancellation
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`action. Id. at ¶ 8. These facts, coupled with the relevant underlying law, demonstrate
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`more than a “mere possibility” for Petitioner to prevail, and the Petition should survive a
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`motion to dismiss for failure to provide notice.
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`Petitioner has Provided Sufficient Facts to Support a Petition to Cancel.
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`“Unless [Petitioner] cannot prove any set of facts entitling them to relief, the
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`complaint should not be dismissed.” Alpha Kappa Alpha Sorority, Inc. v. Converse, Inc.,
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`175 Fed. Appx. 672, 676 (5th Cir. 2006) (citing General Elec. Capital Corp. v. Posey,
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`415 F.3d 391, 395 (5th Cir. 2005)). “A court may dismiss a complaint only if it is clear
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`that no relief could be granted under any set of facts that could be proved consistent
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`with the allegations.” Id. Further, “the court must construe the complaint in a light most
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`favorable to the plaintiff, and accept all . . . factual allegations as true.” Bird v. Parsons,
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`289 F.3d 865, 871 (6th Cir. 2002) (emphasis added).
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 9
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`Registrant’s motion to dismiss is partially based on the assertion that the Petition
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`“failed to provide even a modicum of details.” Reg’s Mot. Dismiss at 2. To support this
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`argument, Registrant points to Twombly, a case where the court had to decide “what a
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`plaintiff must plead in order to state a claim under § 1 of the Sherman Act.” Bell Atlantic
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`Corp. v. Twombly, 550 U.S. 544, 545 (2007). Section 1 of the Sherman Act prohibits
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`restraint of trade “effected by . . . conspiracy.” Id. at 553. The Court held, in terms of a
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`Section 1 claim, that the claim requires enough factual matter, taken as true, to suggest
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`an agreement was made, and that pleadings require “enough fact to raise a reasonable
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`expectation that discovery will reveal evidence of illegal agreement,” even if “actual
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`proof of those facts is improbable, and ‘that recovery is very remote and unlikely.’” Id.
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`Allegations of conspiracy require “action or inaction alleged with a plausible suggestion
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`of conspiracy.” Id. at 566. The “common economic experience” and alleged “parallel
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`conduct” in the complaint did not support an allegation of conspiracy. Id. at 566-68.
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`In contrast, a petition to cancel can be filed, by “any person who believes that he
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`is or will be damaged . . . by the registration of a mark on the principal register” by
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`stating the grounds relied upon. Lanham Act, 15 U.S.C. § 1064 (2006) (emphasis
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`added). Petitioner need not allege a complex fact pattern such as is required to
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`establish conspiracy. Instead, Petitioner need only allege that it believes it is or will be
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`damaged by continued registration of the mark, and the legal grounds relied upon for
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`the cancellation of the mark. Petitioner alleges a belief that it is, and will continue to be,
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`damaged by the Registration. Pet. Cancel at ¶ 9. Petitioner provides multiple legal
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`grounds relied upon for cancellation of the mark. See, e.g., id. at ¶¶ 10-15; ¶¶ 16-23; ¶¶
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 10
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`24-32; ¶¶ 34-38; and ¶¶ 39-42. Accordingly, the Petition should survive the motion to
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`dismiss for failure to allege sufficient facts.
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`Petitioner has pleaded the essential elements of a claim for which relief is sought.
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`“[A] complaint must contain sufficient factual matter . . . to state a claim to relief
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`that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “The
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`plausibility standard is not akin to a ‘probability requirement,’ but it asks for more than a
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`sheer possibility” of prevailing. Id. at 679. Courts must accept Petitioner’s allegations
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`as true but need not accept legal conclusions. Id. at 678. This analysis requires the
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`court, not only to accept the facts alleged as true, but to its “judicial experience and
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`common sense” to determine if the facts alleged lead to a plausible claim for relief. Id.
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`at 679. “The complaint should be read as a whole, not parsed piece by piece to
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`determine if each allegation, in isolation, is plausible.” Hernandez-Cuevas v. Taylor,
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`723 F.3d 91, 103 (1st Cir. 2013).
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`Registrant’s motion improperly attempts exactly such a piece by piece parsing
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`technique. By isolating paragraphs eight and nine of the Petition, Registrant
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`conveniently hand picks two paragraphs and determines that they are, in their own
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`universe, insufficient legal grounds to establish standing.
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`More accurately, and read as a whole, Petitioner is
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`a Florida based company, in the business of duty-free retail
`sales at airports in North America, Latin America, and the
`Caribbean, that has expended significant resources to create
`a subsidiary to sell . . . watches, clocks, jewelry, and travel
`related goods, and is entitled to use the term ‘Time Travel,’
`which is not a descriptive term as it relates to Petitioner.
`Petitioner’s application to register the term ‘Time Travel’ was
`denied, and this denial does, and will continue to damage
`Petitioner.
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 11
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`Pet. Cancel at ¶¶ 1-2, 33, 8-9.
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`Petitioner alleges that it applied for registration. Pet. Cancel at ¶ 8. The
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`trademark which Petitioner seeks to protect is not unidentified; it is “Time Travel.” Id. at
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`33. The reason the trademark protection was denied was not unstated; Petitioner
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`alleges it is because the USPTO claimed that Registrant’s claim to the mark is valid. Id.
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`at 8. Registrant correctly points out that Petitioner believes, and alleges, that it is, and
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`will continue to be damaged by Registration of the Mark. Reg’s Mot. Dismiss at 3 (citing
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`Pet. Cancel at ¶ 9). Petitioner was required to allege, not prove, these facts to plead
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`the elements of a claim for which relief is sought. See Chemical New York Co. v.
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`Conmar Forms Systems, Inc., 1 U.S.P.Q.2d 1139, *3 (T.T.A.B. 1986). Petitioner is
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`prepared to prove all allegations at trial.
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`CONCLUSION
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`Petitioner has established standing to challenge Registration of the Mark. The
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`Petition satisfies all pleading requirements, and alleges sufficient facts to support the
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`petition; discovery and argument will add further detail during trial. The Petition also
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`provides Registrant with fair notice of the nature and basis of the petition. For the
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`foregoing reasons, Petitioner respectfully requests this Court to deny Registrant’s
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`Motion to Dismiss the Petition for Cancel for Lack of Standing.
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`Memorandum in Opposition to Registrant’s Motion to Dismiss the Petition to Cancel for Lack of Standing
`Cancellation No. 92061955
`Page 12
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`CERTIFICATE OF SERVICE
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`I certify that a true and correct copy of the foregoing PETITIONER’S
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`MEMORANDUM IN OPPOSITION TO REGISTRANT’S MOTION TO DISMISS THE
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`PETITION TO CANCEL FOR LACK OF STANDING is being served on September 25,
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`2015, by e-mail addressed to counsel for Petitioner, Joseph J. Zito, Esq. at
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`jzito@dnlzito.com.
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`Respectfully submitted,
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`MARKO & MAGOLNICK, P.A.
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`By: /s/ David Everett Marko
` David Everett Marko, Esq.
` 3001 S.W. 3rd Avenue
` Miami, Florida 33129
` Phone: 305-285-2000
` Fax:
`305-285-5555
` Email: marko@mm-pa.com
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` Attorney for Petitioner
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`DATED: September 25, 2015