Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA818497
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`Filing date:
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`05/03/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92065406
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Defendant
`Pharmadel LLC
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`ROBERT R JIMENEZ
`ESPINOSA TRUEBA MARTINEZ PL
`1428 BRICKELL AVE SUITE 100
`MIAMI, FL 33131
`UNITED STATES
`rjimenez@etlaw.com, jespinosa@etlaw.com, lmansen@etlaw.com,
`zsanchez@etlaw.com, trademarks@etlaw.com
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`Opposition/Response to Motion
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`Robert R. Jimenez
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`rjimenez@etlaw.com
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`/Robert R. Jimenez/
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`05/03/2017
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`Pharmadel Response in Opposition to Motion to Strike - FNL
`5.3.2017.pdf(279046 bytes )
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`

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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:
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`4,581,604
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`Registration No.:
`August 5, 2014
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`Registered:
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`KOFAL
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`Trademark:
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`__________________________________________
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`Plaza Izalco, Inc.,
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`Petitioner,
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`v.
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`Pharmadel, LLC,
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`Registrant.
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`__________________________________________)
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`Cancellation No. 92065406
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`REGISTRANT’S RESPONSE IN OPPOSITION TO PETITIONER’S
`MOTION TO STRIKE REGISTRANT’S AFFIRMATIVE DEFENSES
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`Registrant, Pharmadel, LLC (“Registrant”), by and through undersigned counsel, hereby
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`responds to the Motion to Strike Affirmative Defenses (the “Motion” or “Motion to Strike”) filed
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`by Petitioner Plaza Izalco, Inc. (“Applicant”), and in support states as follows:
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`I.
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`SUMMARY OF ARGUMENT
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`The weaknesses in Applicant’s arguments can most easily be summarized in a short
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`outline:
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`A. Registrant’s first two defenses of failure to state a cause of action as to lack of standing are
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`supported by case law and function as an amplification of the Fourth Affirmative Defense.
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`B. Registrant’s Third Affirmative Defense is proper on its face as it raises factual issues that
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`should be determined on the merits.
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`1
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`C. Applicant’s Motion to Strike Registrant’s Morehouse Defense should fail because:
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`i) Applicant has proper notice of the defense;
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`ii) a debate over the verbiage of the proper standard is not a basis for a strike;
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`iii) the KOFAL and KOFAL-T Marks are substantially identical, as the
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` Examiner also argued;
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`iv) the goods for all three relevant marks at issue are substantially identical
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` or substantially similar, as the Examiner also found.
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`D. Registrant’s Fifth, Sixth, and Seventh Affirmative Defenses should not be stricken
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`because they provide proper notice and are pled with specificity.
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`E. The reservation of rights clause should not be stricken because, insofar as Registrant can
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`subsequently amend to add additional defenses, amendments should be freely given in the
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`interest of justice.
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`Applicant’s Motion to Strike cites to a litany of case law that is inapplicable to the
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`affirmative defenses as pled by Registrant, and Applicant’s arguments fail to substantiate that any
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`of Registrant’s affirmative defenses are “redundant, immaterial, impertinent, or scandalous” as a
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`matter of law. See TBMP § 506.01. For the reasons set forth below, Applicant’s Motion to Strike
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`should be denied in its entirety.
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`II.
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`RESPONSE IN OPPOSITION
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`“Motions to strike are not favored, and matter will not be stricken unless it clearly has no
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`bearing upon the issues in the case.” TBMP § 506.01; see also, Harsco Corp. v. Electrical
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`Sciences Inc., 9 USPQ2d 1570 (TTAB 1988). “The primary purpose of pleadings, under the
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`Federal Rules of Civil Procedure, is to give fair notice of the claims or defenses asserted.” Great
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`Adirondack Steak & Seafood Cafe, Inc. v. Adirondack Pub & Brewery, Inc., 2015 TTAB LEXIS
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`2
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`321, *8 (TTAB Mar. 30, 2015); TBMP § 506.01. “A defense will not be stricken as insufficient
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`if the insufficiency is not clearly apparent, or if it raises issues that should be determined on the
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`merits.” TBMP § 506.01. “Thus, the Board, in its discretion, may decline to strike even
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`objectionable pleadings where their inclusion will not prejudice the adverse party, but rather will
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`provide fuller notice of the basis for a claim or defense.” Id. Motions such as this, to strike
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`defenses applicable to inter partes trademark proceedings pursuant to Trademark Act Section
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`19 (15 U.S.C. § 1069), are generally not received well by the Board. Guardian Royalty LLC v.
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`Guardian Prot. Devices, Inc., 2000 TTAB LEXIS 855, *8 (TTAB Nov. 30, 2000)(denying motion
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`to strike affirmative defenses).
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`A. Registrant’s First Affirmative Defense Is Proper, Both On Its Own And As An
`Amplification.
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`Failure to state a cause of action is an affirmative defense, itself subject to analysis
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`regarding whether it is valid. See Order of Sons of Italy in America v. Profumi Fratelli Nostra AG,
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`36 USPQ2d 1221, 1222-23 (TTAB 1995) (“While Fed. R. Civ. P. 12(b)(6) permits a defendant to
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`assert in the answer the ‘defense’ of failure to state a claim upon which relief can be granted, it
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`necessarily follows that a plaintiff may utilize this assertion to test the sufficiency of the defense
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`in advance of trial by moving under Fed. R. Civ. P. 12(f) to strike the ‘defense’ from the
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`defendant’s answer.”). While Registrant notes that the aforementioned opinion seems to contradict
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`cases cited by Applicant for this point of law, Applicant’s cases are nonetheless inapposite because
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`in this matter Registrant’s affirmative defense of failure to state a cause of action is an
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`amplification of its Morehouse defense and is not merely directed at an alleged defect in the
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`pleading. See Registrant’s Answer and Affirmative Defenses, Aff. Def. 4.
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`3
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`Where one affirmative defense is seen as an amplification of another, both are addressed
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`together. See Nebraska Brewing Co. v. Emerald City Beer Company, LLC, 2015 TTAB LEXIS
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`359 at *18 (TTAB 2015). Moreover, where an answer provides a “road map” for a party’s defense
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`through allegations that bear on the issues of the case, same will not be stricken. See Disney
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`Enterprises, Inc. v. Ronica Holdings Limited, 2015 TTAB LEXIS 128, *6 (TTAB 2015) (“The
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`broad scope of the allegations in Applicant’s answer have a bearing on the issues of the case and
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`will not be stricken. Specifically, Applicant has provided a “road map” for its defense.”). Here,
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`the unchallenged registration for KOFAL-T –cited by the Examiner in refusing registrant’s
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`application—is the foundation for four affirmative defenses in Registrant’s Answer, including
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`Applicant’s failure to properly state a cause of action.
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`Applicant’s inability to validly state a cause of action stems from its lack of standing, itself
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`the product of Applicant’s inability to achieve any relief in this matter due to the unchallenged
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`registration of KOFAL-T that will continue to subsist and prevent registration of Applicant’s mark
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`COFAL. Therefore, because Registrant’s Fourth Affirmative Defense is valid and not subject to
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`attack (as more fully set forth infra and in Registrant’s Motion for Summary Judgment filed
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`contemporaneously with the instant Response), Applicant’s Motion to Strike Registrant’s First
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`Affirmative Defense should be denied.
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`B. Registrant’s Second Affirmative Defenses Is Similarly Proper Because It Is An
`Amplification Of The Fourth Affirmative Defense.
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`Registrant’s Second Affirmative Defense is that Applicant does not have standing because
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`“Petitioner does not have a real interest in this matter and does not have a direct and personal stake
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`in the outcome of this cancellation action (or in the maintenance of the registration of the mark
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`KOFAL).” As with Registrant’s First Affirmative Defense, the Second Affirmative Defense
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`4
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`should not be considered by the Board in a vacuum but, rather, in conjunction with Registrant’s
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`Fourth Affirmative Defense under the Morehouse Doctrine. Due to Applicant’s inherent inability
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`to secure relief in the instant matter given that its mark COFAL cannot proceed to registration as
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`a result of the likelihood of confusion with Registrant’s unchallenged KOFAL-T Mark (as cited
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`by the Examiner in refusing Applicant’s application), Applicant cannot have standing.
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`Under TBMP § 309.03(b), “any person who believes it is or will be damaged by the
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`registration of a mark has standing to file a complaint.” Although at the pleading stage, “all that
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`is required is that a plaintiff allege facts sufficient to show a ‘real interest’ in the proceeding, and
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`a ‘reasonable basis’ for its belief that it would suffer some kind of damage,”1 such allegations
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`“must later be affirmatively proved by the plaintiff.” Id. Despite Applicant’s contention in its
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`Motion to Strike, courts reject the premise that in a cancellation action “a petitioner should be
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`found to have standing by virtue of its complaint alone.” Lipton Indus. v. Ralston Purina Co., 670
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`F.2d 1024, 1029 (C.C.P.A. 1982).
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`In this matter, although the cancellation action filed by Applicant is against the mark
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`KOFAL, because COFAL can never register as a result of the likelihood of confusion with the
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`incontestable KOFAL-T, Applicant cannot have a “direct and personal interest” in the outcome of
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`this action. As such, Applicant has no standing because it cannot show “a direct injury to itself,”2
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`and there is no controversy sufficient for Applicant to maintain the action. Plainly, as a result of
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`the pre-existing and subsisting registration for KOFAL-T, Applicant cannot by definition have a
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`personal stake in the outcome of the proceeding given that it cannot be impacted by maintenance
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`of KOFAL. See e.g., Ritchie v. Simpson, 170 F. 3d 1092 (Fed. Cir. 1999) (explaining standing in
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`1 Id.
`2 Ritchie v. Simpson, 170 F. 3d 1092, 1096 (Fed. Cir. 1999).
`5
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`the context of Board actions and stating that “[t]he crux of the matter is not how many others share
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`one’s belief that one will be damaged by the registration, but whether that belief is reasonable and
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`reflects a real interest in the issue”). Applicant’s Motion to Strike Registrant’s Second Affirmative
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`Defense should be denied.
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`C. Registrant’s Third Affirmative Defense Is Proper On Its Face And Applicant
`Misrepresents Same In Its Motion.
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`In the Motion to Strike, Applicant moves the Board to strike Registrant’s Third Affirmative
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`Defense, which states as follows:
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`Registrant began use of its trademarks KOFAL and KOFAL-T in commerce prior to
`Petitioner applying for registration in the United States, and, therefore, Registrant has
`superior trademark rights to its trademarks over any right that Petitioner may have in
`its mark.
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`Applicant’s arguments concerning the Third Affirmative Defense paint said defense as being
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`focused solely on Registrant’s unchallenged registration for the Mark KOFAL-T, which is
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`glaringly inaccurate. As can be easily gleaned from the text of the Third Affirmative Defense,
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`citation is to both KOFAL and KOFAL-T as marks that were in use by Registrant prior to
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`Applicant’s alleged first date of use in commerce for COFAL. Registrant’s affirmative defense of
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`prior use in commerce is –axiomatically—a proper affirmative defense not subject to being
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`stricken as it squarely “raises factual issues that should be determined on the merits.” TBMP §
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`506.01; Great Adirondack Steak & Seafood Cafe, Inc. v. Adirondack Pub & Brewery, Inc., 2015
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`TTAB LEXIS 321, *7-8 (TTAB Mar. 30, 2015)(affirmative defense that raise factual issues that
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`should be determined on the merits.) Applicant’s Motion to Strike Registrant’s Third Affirmative
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`Defense should be denied.
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`6
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`D. Registrant’s Morehouse Defense Is Properly Pled, Applicable, And The
`Examiner’s Conclusions Agree.
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`Applicant begins its attack upon Registrant’s Morehouse Defense by arguing that
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`Registrant has cited the incorrect standard. This, according to Applicant, is a supposed basis for
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`striking Registrant’s Morehouse Defense. Overlooking the fact that, as evinced infra, this Board
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`has articulated the verbiage of the Morehouse standard in differing forms, Applicant’s argument
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`about how Registrant discussed the standard is plainly not a basis to strike an affirmative defense.
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`As this Board points out, “[t]he primary purpose of pleadings under the Federal Rules of Civil
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`Procedure, is to give fair notice of the claims or defenses asserted.” TBMP 506.01. Applicant
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`undeniably has full notice of Registrant’s reliance on the Morehouse Defense regardless of any
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`dispute between the parties as to the proper standard to be employed. Registrant’s Fourth
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`Affirmative Defense reads:
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`Petitioner’s Petition to Cancel fails because of the Morehouse defense; that is,
`Petitioner cannot suffer damage within the meaning of Section 14 of the Lanham
`Act by the maintenance of the registration for KOFAL because Registrant owns an
`unchallenged registration for the same or similar mark (KOFAL-T) on the same or
`similar goods. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F. 2d 881
`(C.C.P.A. 1969).
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`Applicant cites no case law –nor can it—for the proposition that a dispute over which element is
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`to be employed renders a defense subject to a strike under Fed. R. Civ. P. 12(f) and TBMP 506.01.
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`The Board should reject Applicant’s argument.
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`Applicant’s final argument for striking Registrant’s Morehouse Defense reads more like a
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`backdoor motion for summary judgment as it tacitly concedes that nothing about Registrant’s
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`Fourth Affirmative Defense is redundant, immaterial, impertinent, scandalous, or lacking in
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`relation to the facts or issues of this matter. Applicant’s argument is that the unchallenged
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`registration for KOFAL-T and the challenged KOFAL are dissimilar and that the categories of
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`7
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`goods covered by both registrations are not “essentially the same.” Although Registrant has
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`already moved for summary judgment contemporaneously with the instant Response, Registrant
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`will nonetheless address the specifics of Applicant’s incorrect suppositions below.
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`“The Morehouse defense, an equitable affirmative defense… is based on the theory that an
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`opposer cannot be injured by the registration sought because there already exists a similar
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`registration and, therefore, an additional registration for the same or substantially similar mark and
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`goods or services can no more injure the plaintiff than the prior registration.” See Mag Instrument,
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`Inc. v. The Brinkmann Corporation, 2010 TTAB LEXIS 322, *23 (TTAB 2010). “It is well settled
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`that ownership of a subsisting registration is a proper defense to a cancellation proceeding when
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`the registration is for the same or substantially identical mark for the same or substantially identical
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`goods or services.” See Dimitri Valiant v. Carl Karcher Enterprises, Inc., 1984 TTAB LEXIS 97
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`(TTAB 1984) (warning that summary judgment would be entered if the petitioner failed to petition
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`for cancellation of the pre-existing registrations). See also, Morehouse Manufacturing
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`Corporation v. J. Strickland & Co., 407 F 2d 881 (CCPA 1969)); The Solomon-Page Group LLC
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`and The Clinical Resource Network LLC v. Clinical Resources Network, 2012 TTAB LEXIS 124
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`(TTAB 2012).
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`Applicant’s arguments in the Motion to Strike fail because Applicant cannot be damaged
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`by KOFAL’s listing on the Principal Register due to the pre-existing registration for KOFAL-T,
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`also owned by Registrant. As discussed below, the two requirements for application of the
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`Morehouse defense –substantially identical marks and substantially identical or substantially
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`similar goods—are satisfied as a matter of law.
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`8
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`i. The marks are all substantially identical.
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` “For purposes of the Morehouse defense, two marks are ‘substantially identical’ when
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`they are either literally identical or legally equivalent.” See O-M Bread Inc. v. United States
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`Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995) (OLYMPIC and OLYMPIC
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`KIDS are neither the same nor legally equivalent). In the instant case, and as the Examiner found
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`with relation to the refusal to register Applicant’s confusingly similar COFAL mark, the Marks
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`KOFAL and KOFAL-T are substantially identical because they share the same commercial
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`impression and the differences between them are insignificant. See Dimitri Valiant v. Carl
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`Karcher Enterprises, Inc., 1984 TTAB LEXIS 97 (TTAB 1984).
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`In Dimitri Valiant, the term “star” was held to be “the dominant feature” of the marks
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`STAR HAMBURGER and STAR CHEESEBURGER in much the same way as the dominant
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`portion of the KOFAL and KOFAL-T marks are the word “kofal.” This Board also held in Dimitri
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`Valiant, supra, that the addition of the word “cheese” was insignificant, and in this matter the “-
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`T” represents an insignificant difference between KOFAL and KOFAL-T. Thus, the Morehouse
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`rationale is applicable because the KOFAL mark to be cancelled is substantially identical to the
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`subsisting and pre-existing registration for KOFAL-T, meaning Applicant cannot be damaged by
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`maintenance of the KOFAL registration. Moreover, and as the Examiner determined through
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`denial of the application for COFAL, there is a likelihood of confusion between COFAL on the
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`one hand and both KOFAL and KOFAL-T on the other, satisfying the first of the two Morehouse
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`requirements.
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`Applicant’s arguments that both KOFAL and KOFAL-T are not substantially identical
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`should be rejected, and the Board should agree with the conclusion previously reached by the
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`Examiner regarding all three marks relevant here: “[a]ccordingly, it is the examining attorney’s
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`9
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`opinion that the marks are similar.” See Jan. 30, 2016 Final Office action in Application No.
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`86029611 for COFAL, p. 3.
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`ii. The goods are substantially identical or substantially similar3 between
` Registrant’s own marks and Applicant’s mark.
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`Applicant argues in its Motion to Strike that Registrant’s Morehouse Defense should also
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`be stricken because the goods on the registration for KOFAL and KOFAL-T are not substantially
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`identical or substantially similar. The Examiner who refused registration of Applicant’s COFAL
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`mark, however, considered the relatedness of all the goods at issue in this matter, finding they were
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`all substantially the same or related in a way that bars registration of Applicant’s mark COFAL
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`(which evinces that Applicant cannot be injured by maintenance of KOFAL given the
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`unchallenged KOFAL-T). The Examiner stated as follows in the Final Office action:
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`In this case, the identification set forth in the application and registration has no restrictions
`as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that
`these goods and/or services travel in all normal channels of trade, and are available to the
`same class of purchasers. Further, the registrant uses broad wording to describe the goods
`and this wording is presumed to encompass all goods of the type described, including those
`in applicant’s more narrow identification. The registrant’s broad identification of “balms
`for medical purposes” and “balms for pharmaceutical purposes” is seen to include the
`applicant’s analgesic balm. Similarly, the applicant’s broad identification of “analgesic
`preparations” is seen to include goods such as the registrant’s analgesic balm and analgesic
`muscle relaxant pharmaceutical preparations. In addition, see the attached evidence
`illustrating a producer of both bandages and analgesic cream.
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` A
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` search of Office records illustrates a more specific connection between the
`identified goods. The trademark examining attorney has attached evidence from the
`USPTO’s X-Search database consisting of a number of third-party marks registered for use
`in connection with the same or similar goods as those of both applicant and registrant in
`this case. This evidence shows that the goods listed therein, namely, “analgestic
`preparations” and “analgesic balm” or “adhesive bandages” goods, are of a kind that
`may emanate from a single source under a single mark. See In re Aquamar, Inc., 115
`USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d
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`3 As cited in case law within the instant Response, the Board has utilized both terms –substantially identical
`and substantially similar—when articulating the Morehouse standard.
`10
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`1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
`86 (TTAB 1993); TMEP §1207.01(d)(iii).
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`See Jan. 30, 2016 Final Office action in Application No. 86029611 for COFAL, p. 3 (emphasis
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`added). As discussed below, the Examiner was correct.
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`“The Morehouse defense requires the goods to be ‘identical, substantially the same, or so
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`related so as to represent in law a distinction without a difference.” See Mag Instrument, Inc. v.
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`The Brinkmann Corporation, 2010 TTAB LEXIS 322, *26 (TTAB 2010). This is precisely what
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`the Examiner found and what Registrant hopes
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`the Board
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`rules
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`in
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`this matter.
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`Registration for KOFAL-T is for analgesic balm in International Class 005, and Registrant’s
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`KOFAL and Applicant’s COFAL similarly list analgesic balm as a category of goods in the same
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`class. Notably, the goods listed by Applicant for its mark are Analgesic and muscle relaxant
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`pharmaceutical preparations; Analgesic balm; Analgesic preparations; Curare for use as a
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`muscle relaxant; Medicaments for promoting recovery from tendon and muscle injuries and
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`disorders and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm
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`and mentholated salve; Muscle relaxants also in International Class 005. Again, the Examiner
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`found that these goods are related as evidence shows they emanate from a single source and are
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`connected. The Examiner is correct.
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`The aforementioned goods listed for both COFAL and KOFAL4 are indeed related to those
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`in the registration for KOFAL-T because consumers “are likely to believe that the [goods],
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`4 The goods listed in the registration for KOFAL are Adhesive bandages; Adhesive bands for medical
`purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Anti-
`inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical purposes;
`Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal topical creams, gels,
`salves, sprays, powder, balms, liniment and ointments for the relief of aches and pain; Medicaments for
`promoting recovery from tendon and muscle injuries and disorders and sports related injuries;
`Multipurpose medicated antibiotic cream, analgesic balm and mentholated salve; Muscle relaxants; Sports
`cream for relief of pain; Therapeutic spray to sooth and relax the muscles.
`11
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`similarly marked, come from the same source, or are somehow connected with or sponsored by a
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`common company.” See Daddy’s Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109
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`F.3d 275 (6th Cir. 1997). As such, the pre-existing KOFAL-T registration bars Applicant’s
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`cancellation action under Morehouse and its progeny because, as the Examiner also pointed out
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`supra, the goods listed for KOFAL and KOFAL-T qualify as substantially identical and related,
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`preventing COFAL from registering as a result. Applicant was clearly incorrect in its contention
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`that the goods covered by the KOFAL and KOFAL-T registrations are “indisputably not ‘esentially
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`the same’.” Motion to Strike at pgs. 4-5.
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`Finally, Applicant argued in its Motion that KOFAL and KOFAL-T fail to meet the
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`Morehouse standard because KOFAL additionally includes a registration for goods in International
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`Class 10 (drug delivery patches sold without medication; Elastic bandages), as well as adhesive
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`bandages (which are listed in Class 05 and which the Examiner found is sufficiently related to
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`analgesic balm so as to prevent COFAL’s registration).5 This argument is a red herring because
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`Applicant never applied in Class 10 and cannot allege an injury with relation to same within the
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`instant cancellation action. A different class of goods not part of the injury alleged in a cancellation
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`action by a petitioner is irrelevant to the central inquiry under Morehouse: whether it is true that
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`the petitioner (here, Applicant) cannot be injured by the registration it seeks to cancel (KOFAL)
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`given the existence of an unchallenged similar registration (KOFAL-T). Additionally, Applicant’s
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`off point commentary in the Motion to Strike regarding a pleading in an opposition action for an
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`application that was dismissed voluntarily is wholly immaterial and irrelevant to the question of
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`whether Registrant’s Morehouse Defense should be stricken.
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`5 Applicant states in the Motion to Strike: “By way of just a few examples, the ‘KOFAL-T’ Registration’s
`‘analgesic balm’ is not essentially the same as the ‘adhesive bandages’ or ‘drug delivery patches sold
`without medication’ identified in the ‘KOFAL’ registration that is at issue in this proceeding.”
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`As set forth above, KOFAL-T blocks registration of COFAL under every scenario,
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`showcasing that the Morehouse Defense pled in this case is sound, that Applicant can have no
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`interest in the maintenance of the registration for KOFAL, and that Applicant has no standing
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`given the inability to obtain relief in this action.
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`E. Registrant’s Fifth, Sixth, and Seventh Affirmative Defenses Are Pled With
`Specificity, Affording Applicant Proper Notice.
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`As previously outlined, the primary purpose of an answer or defense is to give proper notice
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`to the opposing party. TBMP 506.01. Applicant also admits this is the standard. See Motion to
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`Strike at p. 6 (discussing fair notice). Registrant’s Fifth, Sixth, and Seventh Affirmative Defenses
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`are each pled with specificity.
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`“The elements of a defense should be stated simply, concisely, and directly.” TBMP
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`311.02(b). “However, the pleading should include enough detail to give the plaintiff fair notice of
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`the basis for the defense.” Id. Registrant’s Fifth Affirmative Defense is that “Petitioner’s mark
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`[C]OFAL6 is primarily merely a surname and cannot register as a matter of law.” This affirmative
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`defense meets the textbook standard of what a defense is: even taking the allegations in the
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`cancellation action as true, the lack of distinctiveness of Applicant’s mark is a “matter constituting
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`an avoidance” of Applicant’s petition. If it is proven that Applicant’s mark COFAL is primarily
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`merely a surname, the cancellation action necessarily fails given that Applicant could not register
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`its mark regardless of the maintenance of the registration for KOFAL. Registrant’s Fifth
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`Affirmative Defense thus meets the case law and procedural standards cited in TBMP, and
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`Applicant’s Motion to Strike said defense should thus be denied.
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`6 Registrant mistakenly wrote KOFAL instead of COFAL within the Fifth Affirmative Defense. Applicant,
`however, rightfully assumed same was a small typographical error and proceeded to move to strike the
`defense, interpreting same as relating to COFAL.
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`Registrant’s Sixth Affirmative Defense (estoppel) is as follows:
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`Petitioner should be estopped from bringing the instant cancellation action against KOFAL
`because it never opposed the prior KOFAL-T registration, which has the same commercial
`impression as Petitioner’s COFAL Mark for related goods, relates to the KOFAL registration
`at issue, and was cited by the Examiner in denying Petitioner’s Application for COFAL on the
`basis of a likelihood of confusion.
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`This Board has stated outright that both estoppel and laches are valid affirmative defenses. See
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`TBMP 311.02(b). As even a cursory glance reveals, Applicant’s characterization of the Sixth
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`Affirmative Defense as “mere reference to the doctrine of estoppel” lacking “specific allegations”
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`falls flat on its face. With specificity, Registrant discussed how and why estoppel bars the instant
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`cancellation action. Specifically, Registrant averred that Applicant should be estopped because it
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`failed to oppose the now unchallenged registration for KOFAL-T, which is at the heart of
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`Registrant’s Morehouse Defense and which was cited by the Examiner as a bar to the registration
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`of Applicant’s mark COFAL. Applicant’s Motion to Strike the Sixth Affirmative Defense is
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`simply spurious and unsupported by application of case law to the text of what has been pled.
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`Applicant’s Motion to Strike the Seventh Affirmative Defense7 (laches) fails for the identical
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`reason.
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`F. Registrant’s Reservation Of Rights Should Be Acknowledged In The Event Of
`Amendment.
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`Although Registrant’s reservation of rights above its WHEREFORE clause seeks to reserve
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`the right to add further affirmative defenses as a result of facts discovered during the course of this
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`proceeding, Registrant opines that the characterization by Applicant that the reservation of rights
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`functions somehow to prevent notice of a future affirmative defense is nonsensical. As Applicant
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`7 Registrant’s Seventh Affirmative Defense reads as follows: “Petitioner’s cancellation action should be
`barred as a result of waiver given that Petitioner never opposed the KOFAL-T registration, which was cited
`by the Examiner in denying Petitioner’s Application for COFAL and which has the same commercial
`impression on related goods.”
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`correctly points out, Registrant would have to move to amend its Answer in the event it desires to
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`add another defense in the future. Insofar as Applicant’s argument seeks to prevent Registrant
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`from being able to later amend its pleading, Registrant prays the Board deny the Motion to Strike
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`as amendments are to be liberally and freely given. See Fed. R. Civ. P. 15(a)(2) (“The court should
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`freely give leave when justice so requires.”).
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`III. CONCLUSION
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`Registrant respectfully requests that for the reasons set forth above, the Board deny Applicant’s
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`Motion to Strike. Alternatively, to the extent that the Board strikes any defense Registrant asks
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`for leave to amend. Registrant also respectfully requests the Board grant its Motion for Summary
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`Judgment filed contemporaneously with the instant Response.
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`Respectfully Submitted,
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`ESPINOSA TRUEBA MARTINEZ P.L.
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`By: /s/ Robert R. Jimenez
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`Jorge Espinosa
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`Florida Bar No. 779032
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`jespinosa@etlaw.com
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`Robert R. Jimenez
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`Florida Bar No. 72020
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`rjimenez@etlaw.com
`1428 Brickell Ave., Suite 100
`Miami, FL 33131
`Tel: 305-854-0900
`Fax: 855-854-0900
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`Dated: May 3, 2017.
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`CERTIFICATE OF SERVICE
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`As per TBMP R. 113, I hereby certify that on May 3, 2017 a true copy of this document
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`was served via email upon the following attorney of record for Applicant, Oliver A. Ruiz of Malloy
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`& Malloy, P.L., 2800 SW 3rd Ave., Miami, Florida 33129, to oruiz@malloylaw.com, and
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`jcmalloy@malloylaw.com, jnmcdonaled@malloylaw.com.
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`By: /s/ Robert R. Jimenez
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`Robert R. Jimenez
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