Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA983804
`
`Filing date:
`
`06/27/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067341
`
`Party
`
`Correspondence
`Address
`
`Defendant
`International Watchman, Inc.
`
`JOHN D GUGLIOTTA
`LAW OFFICES OF JOHN D GUGLIOTTA PE Esq LPA
`PO BOX 506
`RICHFIELD, OH 44286
`UNITED STATES
`johng@inventorshelp.com, nathan@inventorshelp.com
`330-253-2225
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
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`Opposition/Response to Motion
`
`Nathan Gugliotta, Esq.
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`trademarks@inventorshelp.com, johng@inventorshelp.com, nath-
`an@inventorshelp.com
`
`/NJG/
`
`06/27/2019
`
`Response Reinstatement.pdf(155259 bytes )
`Exhibit 1.pdf(140634 bytes )
`Exhibit 2.pdf(170885 bytes )
`Exhibit 3.pdf(775158 bytes )
`Exhibit 4.pdf(106639 bytes )
`Exhibit 5.pdf(200256 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92067341
`Registration No. 3907646
`
`Watching Time, LLC
`
`Petitioner,
`
`
`
`v.
`
`International Watchman, Inc.
`
`
`
`
`
`Registrant.

`
`Registrant’s Response to Petitioner’s Motion to Resume Proceedings and Renew
`Petitioner’s Motions to Strike and Compel
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`Registrant International Watchman, Inc. (“IW”) respectfully responds to Petitioner Watching
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`Time, LLC’s (“WT”) Motion to Resume Proceedings and Renew Petitioner’s Motions to Strike and
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`Compel, and Brief in Support of the same (together, the “Motion”).
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`I. Background.
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`
`
`On November 18, 2017, Petitioner commenced this cancellation proceeding by filing a
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`Petition to Cancel the Registrant’s Mark. 1 TTABVUE. Registrant respectfully contends that
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`Petitioner had and continues to have no standing to bring this proceeding, but nevertheless is
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`seeking to cancel Registrant’s mark on the grounds of genericness (1 TTABVUE 2-3), false
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`suggestion of a connection (1 TTABVUE 3-6), and fraud (1 TTABVUE 6-7). On December 30,
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`2017, Registrant filed its Answer, which contained numerous affirmative defenses. 4 TTABVUE. On
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`February 9, 2018, Petitioner filed a Motion to Strike the Affirmative Defenses from Registrant’s
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`Answer. 7 TTABVUE. On February 15, 2018, the Board suspended the proceedings pending
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`disposition of Petitioner’s Motion to Strike. 8 TTABVUE. On February 26, 2018, Registrant filed a
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`Motion to Amend its Answer to the Petition to Cancel, amending numerous affirmative defenses.
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`!1
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`

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`9-10 TTABVUE. On June 30, 2018, the Board issued an order striking some affirmative defenses in
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`Registrant’s Amended Answer, permitting others, and resuming the proceedings. 15 TTABVUE. On
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`July 20, 2018, Registrant filed a Second Amended Answer to the Petition to Cancel, whereby
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`Registrant amended multiple affirmative defenses and omitting some others. 16 TTABVUE. On
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`August 17, 2018, Petitioner filed a Motion to Strike the Affirmative Defenses from Registrant’s
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`Second Amended Answer. 20 TTABVUE.
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`
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`On July 20, 2018, Registrant filed a Motion to Suspend the subject proceeding pending a
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`civil action between the parties in the United States District Court for the Northern District of
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`Ohio Case No 1:18 CV 1690 (the “Federal Case”) which may have had a bearing on this proceeding.
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`18 TTABVUE. On September 24, 2018, the TTAB suspended this proceeding pending the outcome
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`of the Federal Case. 27 TTABVUE. On June 20, 2019, Petitioner filed its Motion to Resume and
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`Renew. 28 TTABVUE.
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`II. Motion to Resume.
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`A. The subject proceeding should be resumed.
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`
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`Registrant agrees that, at this time, it is appropriate for the present proceeding to resume.
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`However, Petitioner’s Motion fraudulently misrepresents the nature and outcome of the Federal
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`Case in front of the Board. In its Motion, Petitioner knowingly makes factually incorrect statements
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`to the effect that “the Federal Case has been fully and finally determined with no appeal filed.” (28
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`TTABVUE 4). In reality, the Federal Case was resolved as to all other defendant parties, with the
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`Court issuing a permanent injunction against the other defendant parties. See a true and accurate
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`copy of the Court’s Permanent Injunction, attached as “Exhibit 1”. With respect to Watching Time,
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`LLC, the court dismissed the Federal Case on the the basis that the Court did not have jurisdiction
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`over WT. See a true and accurate copy of the Court’s Memorandum of Opinion and Order
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`dismissing the Federal Case against WT, attached as “Exhibit 2”. For Petitioner to view these facts
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`and conclude that the Federal Case was “fully and finally determined” in its favor is well outside the
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`!2
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`

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`bounds of our reality. For Petitioner to repeatedly claim as much in front of the Board is a textbook
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`example of fraud. In actuality, the Court dismissed the Federal Case as to WT on mere jurisdictional
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`grounds, and thus issued no final determination of the Federal Case on its merits. See Exhibit 2.
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`III. Motion to Renew.
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`A. Petitioner’s Motion to Strike and Compel should not be renewed.
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`
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`Pursuant to the Board’s September 24, 2018 Order (27 TTABVUE 4), Registrant respectfully
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`requests that the Board not renew Petitioner’s Motion to Strike Affirmative Defenses from
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`Registrant’s Second Amended Answer, filed August 17, 2018 (20 TTABVUE) and Petitioner’s
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`Motion to Compel Discovery, filed August 30, 2018. 23 TTABVUE.
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`B. Registrant should not be subject to sanctions.
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`
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`Petitioner claims many times in its Motion that “[w]hen Registrant filed its Federal Case, it
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`knew it had no chance of succeeding and did so only to harass Petitioner and delay this cancellation
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`proceeding.” 28 TTABVUE 5. In fact, Registrant had no such knowledge nor intent, but rather
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`brought good faith claims against Petitioner. In bringing the Federal Case, Registrant filed in the
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`Northern District of Ohio on the good faith belief that Petitioner would be subject to jurisdiction
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`in such Court, due to Petitioner’s telephone number, as listed in this present action, having a “330”
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`area code. This is an area code in Summit County, Ohio, within the Northern District of Ohio.
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`Additionally, the Federal Case was not, despite Petitioner’s fraudulent misrepresentations to the
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`Board to the contrary, fully nor finally determined on the merits, but merely on jurisdictional
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`grounds. See Exhibit 2. Registrant is still of the good-faith and well-reasoned belief that Petitioner
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`committed the claims contained in the Federal Case against it — namely, of a civil conspiracy to
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`injure Registrant.
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`
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`Regardless of the merits of Petitioner’s petition for sanctions contained in the Motion, it has
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`serious procedural defects that warrant the Board dismissing such claims. Specifically, TMBP §
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`527.02 governs the procedures for moving for sanctions in an inter partes proceeding. Specifically,
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`!3
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`

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`TMBP § 527.02 adopts Fed. R. Civ. P 11, which clearly states that “[a] motion for sanctions must be
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`made separately from any other motion and must describe the specific conduct that allegedly
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`violates Rule 11(b). The motion must be served … but it must not be filed or be presented to the
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`court if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately
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`corrected within 21 days after service or within another time as the court sets. …” Fed. R. Civ. P.
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`11(c).
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`
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`TBMP § 527.02 clearly states that “[a] motion for sanctions under Fed. R. Civ. P. 11(c) is
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`governed by, and should not be filed in violation of, Fed. R. Civ. P. 11(b). If the Board finds that a
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`motion for Fed. R. Civ. P. 11(c) sanctions itself violates the provisions of Fed. R. Civ. P. 11(b), an
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`appropriate Fed. R. Civ. P. 11(c) sanction may be entered against the party that filed the motion.
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`
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`Consequently, Petitioner’s petitions for sanctions on Registrant and Registrants attorneys is
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`improper, as it clearly violated the Rules of Civil Procedure, as adopted by TMBP § 527.02, and thus
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`should not be considered by the Board.
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`1. Registrant’s lawsuit against Petitioner did not fail on the merits.
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`
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`As it did in the Federal Case, Petitioner continues to misrepresent the context and nature of
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`the complaint here to this Board. When reading the entirety of the Complaint itself in context, it is
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`clear that the Federal Case did not include claims of trademark infringement nor unfair competition
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`against WT, but instead a related claim of civil conspiracy. See a true and accurate copy of the
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`Complaint in the Federal Case with exhibits omitted, attached as “Exhibit 3”. Indeed, the Complaint
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`itself acknowledges that WT has admitted to not using the Mark in commerce (and thus not having
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`standing to bring this cancellation proceeding), and thus makes clear the nature of the claims. Id.
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`
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`Petitioner further fraudulently misrepresents the nature of the outcome in the Federal Case
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`by stating “Registrant knew at the time of filing its Complaint that the District Court would dismiss
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`with prejudice Claim No. 2: Ohio Unfair Competition and Claim No. 3: Civil Conspiracy against
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`Petitioner for lack of subject matter jurisdiction.” 28 TTABUE 7. This, simply put, is a fiction. The
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`!4
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`

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`Court did not dismiss the Federal Case on any grounds with prejudice against Petitioner, but merely
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`dismissed without prejudice for a lack of subject matter jurisdiction over Petitioner. See Exhibit 2;
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`See Also a true and accurate copy of the Judge’s Order on Defendant’s Motion for Fees, attached as
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`“Exhibit 4”. It seemed that the Court, in dicta, noted that even if it had personal jurisdiction over
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`Defendant, there was case law in the 6th Circuit that could make Plaintiff ’s trademark conspiracy
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`claim difficult absent direct trademark infringement by the named Defendant; however, the Court
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`had already found that it would be improper to exercise jurisdiction over this Defendant. Id. In fact,
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`the Court made clear in its final Order that “defendant [WT] did not obtain a judgment on the
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`merits” and that “defendant [WT] is not a prevailing party under the Lanham Act and attorney’s fees
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`will not be awarded.” See Exhibit 4, page 3.
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`
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`As such, Petitioner’s assertion that “Registrant filed the Complaint and subsequent motion to
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`stay this cancellation proceeding solely to harass Petitioner and delay these proceeding [sic]” is not
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`supported by the facts. On the contrary, it clear from its behavior and very admissions in its Motion
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`and elsewhere that it is Petitioner—a sham entity, indistinguishable from its sole Member John P.
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`Heim III, with no legitimate interest in the Mark nor standing to bring this proceeding— who is
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`using this cancellation proceeding as a tactic to harass Registrant.
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`2. Registrant did not commit fraud on the Board in its Motion to Suspend.
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`
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`Petitioner further claims that Registrant somehow committed fraud against the Board in its
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`Motion to Suspend. 28 TTABVUE. The rationale behind this claim seems to be based upon the
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`Petitioner’s knowingly false and misleading misrepresentation of the Complaint.
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`
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`Indeed, Petitioner’s assertions, both in the present proceeding and in the Federal Case, that
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`Registration levied claims under the Lanham Act continue to be misleading, unreasonable, and not
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`supported by the Complaint. Petitioner’s Motion, as well as its Brief in Support of its Motion and as
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`Motion for Judgement on the Pleadings in the Federal Case, purposefully misconstrue Registrant’s
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`position and statements as set forth within the four corners of the Complaint itself. Petitioner
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`!5
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`

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`contends, falsely, that Registrant brought claims of trademark infringement and unfair competition
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`against Petitioner. The facts, as set forth in the Complaint, never levy any allegation of trademark
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`infringement nor unfair competition against Watching Time, LLC—only against the other named
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`defendants—and indeed explicitly disclaims any allegation that Watching Time, LLC partook in any
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`such conduct. Petitioner’s argument takes statements from the Complaint out of context in an effort
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`to fraudulently misconstrue the nature of the Complaint. Indeed, the Complaint (as set forth in
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`Exhibit 3) states the following facts:
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`19. Upon information and belief, Defendant KH Trading Corp. has used multiple fictitious
`names on Amazon, eBay, and other marketplaces in an effort to circumvent Plaintiffs’ take
`down notices in order to continually and illegally infringe upon the Trademark.
`
`26. Defendant KJ has used “NATO” in social media advertising, including but not limited to
`posting on their Instagram page using the marketing strategy of including #natostrap on
`posts. (See a true copy of Defendant Kardesh Jeweler's infringing Instagram advertisement,
`attached as “Exhibit 2.”)
`
`27. Defendants Strap.ly and/or Defendant KH Trading Corp. has used “NATO” in social
`media advertising for watches and watch bands and straps, including but not limited to
`posting on their Instagram page with the description of "“Your NATO strap supplier.”" (See
`a true copy of Defendant Strap.ly's infringing Instagram profile, attached as “Exhibit 3.”)
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`28. Upon information and belief, Defendant KH, doing business as "“genuine_watches”,
`has various items listed for sale on eBay.com and other online market places including a
`listing for a watch advertising the product as having a “N ATO” watch band. (See a true
`copy of Defendant K H Trading Corp.’s infringing eBay listing, attached as “Exhibit 4.”)
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`29. Defendants Strap.ly and/or KH Trading Corp. are also using “NATO” in association
`with one or more product listings for sale on Amazon.com for watch bands and straps. (See
`a true copy of Defendants’' infringing Amazon listing, attached as “Exhibit 5.”)
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`30. Upon information and belief, Defendant STG does business under the trade name
`“Blackout Watches” and is the business of selling watches and watch straps. Defendant STG
`has used Plaintiff's “NATO" trademark in social media advertising for watches and watch
`bands and straps, including but not limited to using "#natostrap”, “#natoband”, and
`“#natonation”. (See a true copy of Defendant STG'’s infringing Instagram post, attached as
`"“Exhibit 6”".)
`
`34. However, Defendant WT is a non-practicing entity that has not been using the
`“NATO” trademark in commerce nor has a bona fide intention to do so. As such,
`WT has no standing to bring such a cancellation proceeding against Plaintiff.
`[emphasis added]
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`With respect to the claim for trademark infringement under the Lanham Act, the Complaint
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`reads:
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`!6
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`

`

`37. Plaintiff incorporates by reference each statement, whether written above or below, as if
`each is fully re-written herein.
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`This means, in part, that the Registrant was purposefully alerting the Court, the parties, and the
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`Board that paragraph 34 was included in the claim, and consequently that no claim against Watching
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`Time, LLC for trademark infringement at that time could, nor indeed was, being brought against
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`Watching Time, LLC. To conclude that Petitioner was being accused of trademark infringement or
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`unfair competition is incongruous with the words of the complaint itself. Claim 1 of the Complaint
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`further only includes claims and evidence that specifically references evidence from the other named
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`defendants, not Watching Time, LLC.
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`Similarly, claim 2 of the Complaint, for unfair competition, reads:
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`45. Plaintiff incorporates by reference each statement, whether written above or below, as if
`each is fully re-written herein.
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`This means, in part, that the Registrant was purposefully alerting the Court, the parties, and the
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`Board that paragraph 34 was included in the claim for unfair competition and that as such no claim
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`against Watching Time, LLC for unfair competition at that time could, nor indeed was, being
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`brought against Watching Time, LLC.
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`As can be clearly seen from the above, the facts that Registrant specifically set forth in the
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`Complaint explicitly disclaim any and all allegations of trademark infringement and/or unfair
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`competition against Defendant Watching Time, LLC. Registrant made no allegation in its Complaint
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`that Petitioner has or had, at that time, committed trademark infringement nor unfair competition.
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`To the contrary, the Complaint went out of its way to specifically disclaim any such claims and
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`allegations against Petitioner.
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`Registrant’s use of the word “Defendants’” in claims 1 and 2 of the Complaint, therefore, is
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`clearly to only indicate that more than one defendant (and indeed all of the other named defendants
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`accused in the complaint of infringing on Plaintiff ’s trademark rights) was being accused of such
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`!7
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`

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`conduct. Nowhere did the Complaint state that “all” defendants nor that Watching Time, LLC was
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`being accused of such conduct. To take excerpts of the complaint out of context and skew them to
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`read in a way in which they clearly do not is a mere attempt by the Petitioner to misrepresent and
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`mislead as to the actual nature of the Complaint, which can be clearly determined by reading the
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`Complaint in full. Indeed, Petitioner raised this exact same argument in the Federal Case in a Motion
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`for Fees, attached as “Exhibit 5”. This exact argument was denied by the judge in the Federal Case.
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`See Exhibit 4. It reasonable appears, then, that Petitioner brings these same arguments again now
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`solely to harass Registrant and as a delay tactic, in order to incur additional and unnecessary
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`expenses in legal fees.
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`Therefore, and despite Petitioner’s false, out-of-context, and misleading statements to the
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`contrary—now raised again for the sole purpose of harassing Registrant—it is clear that, by the
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`language of the very Complaint itself, Registrant never raised claims of trademark infringement nor
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`unfair competition claims against Watching Time, and indeed explicitly disclaimed any such claims
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`against Petitioner. Consequently, Registrant did not knowingly mislead the Board as to the nature of
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`the Complaint in its Motion to Stay, and thus did not commit fraud upon the Board.
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`Most importantly, however, Registrant’s Motion to Stay states, in full, that “[a] lawsuit for
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`trademark infringement, which will encompass all (and more) of the issues raised in this proceeding,
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`has been filed in the U.S. District Court for the N.D. Ohio, and given Case No. 1:18-cv-1690. That
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`lawsuit was filed by Registrant / Respondent herein as Plaintiff, and against Petitioner herein as
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`Defendant. Additionally, other party- Defendants were also sued in that case beyond Watching Time, LLC upon
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`the allegation that Petitioner herein is related to its co-Defendant and has conspired with them in this proceeding and
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`elsewhere. [emphasis added]” 18 TTABVUE 1. The Motion to Stay further included the complaint as an
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`exhibit, which, as argued above, makes clear that WT was only being sued for civil conspiracy.
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`This is appropriate conduct under 37 C.F.R. §2.117(a), which states “[w]henever it shall come
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`to the attention of the Trademark Trial and Appeal Board that a party or parties to a pending case
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`!8
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`

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`are engaged in a civil action or another Board proceeding which may have a bearing on the case,
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`proceedings before the Board may be suspended until termination of the civil action or the other
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`Board proceeding.” This rule does not state that the parties to the TTAB action must be sued for
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`trademark infringement, nor that both need to be involved, only that one party is engaged in a civil
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`litigation which “may have a bearing on the case. [emphasis added]” 37 C.F.R. §2.117(a). Consequently,
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`it is abundantly clear that Registrant did not commit fraud on the Board in its Motion to Stay.
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`3. Registrant is not subject to sanctions for violating 37 C.F.R. § 11.18.
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`
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`For the reasons set forth above, Registrant has clearly not violated 37 C.F.R. § 11.18 and has
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`not knowingly made false statements to the Board. As such, neither Registrant nor its counsel
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`should be subject to sanctions under 37 C.F.R. § 118(c)–(d). Additionally,
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`4. Petitioner should be subject to sanctions for violating 37 C.F.R. § 11.18
`fraudulently misleading the Board as to the nature of the Federal Case and its
`outcome.

`
`
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`Ironically and conversely, it is quite clear that Petitioner has repeatedly violated 37 C.F.R. §
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`11.18 in this proceeding, including in its recent Motion. As discussed above, Petitioner’s Motion
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`repeatedly and fraudulently misrepresented to the Board the nature and outcome of the Federal
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`Case. Petitioner made the following false statements to this Board in its Motion alone: (1)
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`“Accordingly, the Federal Case has been fully and finally determined with no appeal filed. [emphasis
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`added]” (28 TTABVUE 4); (2) “Registrant knew at the time of filing its Complaint that the District
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`Court would dismiss with prejudice Claim No. 1 … against Petitioner [emphasis added]” (28 TTABVUE
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`6); (3) “Registrant knew at the time of filing its Complaint that the District Court would dismiss with
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`prejudice Claim No. 2 … and Claim No. 3 … against Petitioner [emphasis added]” (28 TTABVUE 7).
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`
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`Petitioner has repeatedly violated 37 CFR §11.18 because none of the claims in the complaint
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`were dismissed with prejudice nor did Petitioner achieve a full and final adjudication on the merits. See
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`Exhibits 2, 4. Rather, the Court’s ultimate decision was on mere jurisdictional bounds, whereby the
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`Court found that exercising personal jurisdiction over Petitioner would be improper, stating “the
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`!9
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`

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`Court finds that the exercise of personal jurisdiction over Watching Time would be improper here.”
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`See Exhibits 2. Indeed, the Court noted in its final Order that “the fact remains that defendant did
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`not obtain a judgment on the merits” and that “defendant is not a prevailing party under the
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`Lanham Act and attorney’s fees will not be awarded.” See Exhibit 4, page 3. Petitioner has repeatedly
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`and verifiably committed fraud upon the Board in this proceeding.
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`
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`As such, Registrant is concurrently, and properly, serving a separate Motion for Sanctions
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`against Petitioner and its counsel, whereby it will respectfully request all such remedies for Petitioner
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`and its counsel clearly, obviously, repeatedly, and verifiably committing fraud on the Board.
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`IV. Conclusion.
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`
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`For the reasons set forth above, Registrant respectfully requests that the Board reinstate this
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`proceeding at this time; deny Petitioner’s Motion to Renew Petitioner’s Motions to Strike Affirmative
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`Defenses and Compel Discovery; order Petitioner to reply to this Response within seven (7) days of
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`said order; permit the Registrant to further stay this proceeding if it is appropriate and reasonable
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`under the circumstances; prohibit Petitioner from further delaying and harassing Registrant by
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`preventing Petitioner from filing any motion to stay this proceeding; disregard all of the prayers for
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`relief set forth by Petitioner in its Motion; reset the deadlines for discovery and trial; refer John P.
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`Heim, III’s conduct to the Director of Enrollment and Discipline for appropriate action; dismiss the
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`present action with prejudice; award Registrant’s reasonable attorneys fees and costs; and/or grant
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`Registrant all other relief to which it is entitled to or which the Board deems proper.
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`
`
`Dated: June 27, 2019
`
`Respectfully submitted,

`
`Nathan Gugliotta, Esq.
`John D. Gugliotta, Esq.
`Gugliotta & Gugliotta, LLP
`55 S. Miller Road, Ste. 203 | Akron, OH 44333
`Attorneys for Registrant
`
`!10
`
`

`

`Exhibit 1
`Exhibit 1
`
`

`

`Case: 1:18-cv-01690-PAG Doc #: 57 Filed: 04/12/19 1 of 1. PageID #: 501
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`
`International Watchman Inc.,
`
`Plaintiff,
`
`vs.
`
`Strap.ly, et al.,
`
`Defendants.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`Case No. 1:18-cv-1690-PAG
`
`Judge Gaughan
`
`STIPULATED INJUNCTION
`
`Defendants KH Trading Corp., Kardesh Jewelers, Inc. and Swiss Time Group, LLC, and
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`their subsidiaries and divisions, as well as their officers, directors, employees, and agents, shall
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`be permanently enjoined and restrained from using International Watchman’s Trademark
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`Registration No. 3,907,646 in association with watch straps for so long as the same remains in
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`force.
`
`
`
`
`
`s/ David A. Welling
`DAVID A. WELLING (0075934)
`CHOKEN WELLING LLP
`55 S. Miller Rd., Ste. 203
`Akron, Ohio 44333
`
`Tel.
`(330) 865 – 4949
`Fax
`(330) 865 – 3777
`davidw@choken-welling.com
`
`
`
`Most Respectfully Submitted,
`
`
`
`s/ Nancy Schuster
`NANCY C. SCHUSTER
`SCHUSTER & SIMMONS CO. L.P.A.
`2913 Clinton Avenue
`Cleveland, Ohio 44113
`Tel.
`(216) 348-1100
`Fax:
`(216) 348-0013
`ss@apk.net
`
`Counsel for the Plaintiff
`
`Counsel for Defendants
`
`IT IS SO ORDERED.
`
`/s/ Patricia A. Gaughan
`_______________________________
`JUDGE PATRICIA A. GAUGHAN
`UNITED STATES DISTRICT COURT JUDGE
`4/12/19
`Date: _______________________
`
`1
`
`

`

`Exhibit 2
`Exhibit 2
`
`

`

`Case: 1:18-cv-01690-PAG Doc #: 66 Filed: 04/29/19 1 of 13. PageID #: 700
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`CASE NO. 1:18 CV 1690
`
`JUDGE PATRICIA A. GAUGHAN
`
`MEMORANDUM OF OPINION AND
`ORDER
`
`)
`)
`)
`)
`
`) )
`
`) )
`
`)
`)
`
`International Watchman Inc.,
`
`Plaintiff,
`
`vs.
`
`Strap.ly, et al.,
`
`Defendants.
`
`INTRODUCTION
`
`This matter is before the Court upon Defendant Watching Time, LLC’s Motion for
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`Judgment on the Pleadings (Doc. 43). This is a trademark infringement case. For the reasons
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`that follow, Defendant’s motion is GRANTED.
`
`FACTS
`
`Plaintiff International Watchman Inc. brings this lawsuit against Defendants Watching
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`Time, LLC, (hereinafter “Watching Time”), Strap.ly, Kardesh Jewelers, KH Trading Corp., and
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`Swiss Time Group, LLC (together, “Defendants”) alleging claims of trademark infringement,
`
`1
`
`

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`Case: 1:18-cv-01690-PAG Doc #: 66 Filed: 04/29/19 2 of 13. PageID #: 701
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`unfair competition, and civil conspiracy.1
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`According to the complaint, Plaintiff is an Ohio corporation that sells watches, watch
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`straps and bands, and original equipment parts. (Doc. 1, ¶¶ 1, 12). Plaintiff is the owner of a
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`federally registered mark for the word “NATO,” which appears on some of its watch bands and
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`straps. Id. at ¶¶ 15, 16. Plaintiff alleges that Defendants have been infringing upon the NATO
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`trademark by imitating the mark on their own products and using the mark in social media and
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`advertising. Id. at ¶¶ 5, 17, 25-30. With regard to Watching Time in particular, however,
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`Plaintiff alleges that Watching Time is a “non-practicing entity that has not been using the
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`‘NATO’ trademark in commerce nor has a bona fide intention to do so.” Id. at ¶ 34. Plaintiff
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`alleges that attorney John Heim III is the sole member of Watching Time, and was hired as the
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`trademark attorney by each of the other defendants. Id. at ¶¶ 22, 23. Plaintiff alleges that
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`Watching Time improperly initiated a cancellation proceeding against Plaintiff in front of the
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`Trademark Trial and Appeals Board (“TTAB”), even though Watching Time had no standing to
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`do so. Id. at ¶ 33. Plaintiff also alleges that the cancellation action is an effort by Watching
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`Time and Mr. Heim to “purposely attempt[] to conceal the identity of the true party-in-interest
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`for the cancellation proceeding” – namely, the other defendants. Id. at ¶ 35-6. Following the
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`initiation of the cancellation action, Plaintiff filed the complaint giving rise to this case.
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`The complaint contains three claims: Claim One alleges a violation of § 43(a) of the
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`Lanham Act (Federal Trademark Infringement), Claim Two alleges a violation of Ohio Rev.
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`Code § 4165.02 (Ohio Deceptive Trade Practices/unfair competition), and Claim Three alleges
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`1
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` Plaintiff dismissed its claims against Strap.ly, Kardesh Jewelers,
`KH Trading Corp., and Swiss Time Group, LLC. (Doc. 61).
`Watching Time is the only remaining defendant in the case.
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`2
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`Case: 1:18-cv-01690-PAG Doc #: 66 Filed: 04/29/19 3 of 13. PageID #: 702
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`civil conspiracy. Defendant Watching Time filed a motion for judgment on the pleadings.
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`Plaintiff opposes the motion.
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`STANDARD OF REVIEW
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`A “motion for judgment on the pleadings under Rule 12(c) is generally reviewed under
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`the same standard as a Rule 12(b)(6) motion.” Mellentine v. Ameriquest Mortg. Co., 2013 WL
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`560515 (6th Cir. Feb. 14, 2013) (citing EEOC v. J.H. Routh Packing Co., 246 F.3d 850, 851 (6th
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`Cir. 2001)). “For purposes of a motion for judgment on the pleadings, all well-pleaded
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`allegations of the pleadings of the opposing party must be taken as true, and the motion may be
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`granted only if the moving party is nevertheless entitled to judgment.” JPMorgan Chase Bank,
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`N.A. v. Winget, 510 F.3d 577, 581 (6th Cir. 2007).
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`Thus, “[w]e assume the factual allegations in the complaint are true and construe the
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`complaint in the light most favorable to the plaintiff.” Comtide Holdings, LLC v. Booth Creek
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`Management Corp., 2009 WL 1884445 (6th Cir. July 2, 2009) (citing Bassett v. Nat'l Collegiate
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`Athletic Ass'n, 528 F.3d 426, 430 (6th Cir. 2008)). In construing the complaint in the light most
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`favorable to the non-moving party, “the court does not accept the bare assertion of legal
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`conclusions as enough, nor does it accept as true unwarranted factual inferences.” Gritton v.
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`Disponett, 2009 WL 1505256 (6th Cir. May 27, 2009) (citing In re Sofamor Danek Group, Inc.,
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`123 F.3d 394, 400 (6th Cir. 1997). As outlined by the Sixth Circuit:
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`Federal Rule of Civil Procedure 8(a)(2) requires only “a short and plain statement of the
`claim showing that the pleader is entitled to relief.” “Specific facts are not necessary; the
`statement need only give the defendant fair notice of what the ... claim is and the grounds
`upon which it rests.” Erickson v. Pardus, 551 U.S. 89, 93 (2007) (quoting Bell Atlantic
`Corp. v. Twombly, 550 U.S. 544, 555 (2007)). However, “[f]actual allegations must be
`enough to raise a right to relief above the speculative level” and to “state a claim to relief
`that is plausible on its face.” Twombly, 550 U.S. at 555, 570. A plaintiff must “plead[ ]
`factual content that allows the court to draw the reasonable inference that the defendant is
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`3
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`Case: 1:18-cv-01690-PAG Doc #: 66 Filed: 04/29/19 4 of 13. PageID #: 703
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`liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
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`Keys v. Humana, Inc., 684 F.3d 605, 608 (6th Cir. 2012). Thus, Twombly and Iqbal require that
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`the complaint contain sufficient factual matter, accepted as true, to state a claim to relief that is
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`plausible on its face based on factual content that allows the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged. Twombly, 550 U.S. at 570;
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`Iqbal, 556 U.S. at 678. The complaint must contain “more than labels and conclusions, and a
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`formulaic recitation of the elements of a cause of action will not do.” Twombly, 550 U.S. at 555.
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`ANALYSIS
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`A. Personal Jurisdiction
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`Watching Time argues that this Court’s exercise of personal jurisdiction is improper here.
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`The Court agrees.2 The party seeking to assert personal jurisdiction bears the burden of
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`demonstrating that such jurisdiction exists. Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d
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`883, 887 (6th Cir. 2002). The plaintiff’s burden is to make a prima facie showing that personal
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`2
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`At the outset, Plaintiff argues that Watching Time has waived the
`defense of personal jurisdiction by entering appearances with the
`Court and litigating the merits of the case. Plaintiff also argues
`that Watching Time may not, as a matter of law, raise personal
`jurisdiction in a motion for judgment on the pleadings. Plaintiff is
`incorrect. See Boulger v. Woods, 306 F. Supp. 3d 985, 995 (S.D.
`Ohio 2018) (noting that personal jurisdiction may be raised in a
`motion for judgment on the pleadings). To the extent that
`Watching Time did not timely file its motion to dismiss which
`raised the personal jurisdiction defense, this Court already ruled
`that Watching Time could raise the issue in a motion for summary
`judgment. See Order, 1/9/2019. Moreover, Watching Time has
`made abundantly clear throughout the litigation that all of its
`participation in the case occurred while reserving the personal
`jurisdiction defense. Thus, the Court finds that Watching Time did
`not waive its personal jurisdiction defense here.
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`4
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`Case: 1:18-cv-01690-PAG Doc #: 66 Filed: 04/29/19 5 of 13. PageID #: 704
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`jurisdiction exists in order to de