`
`THIS ORDER IS A
`PRECEDENT OF THE
`TTAB
`
`DUNN
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`
`Date: December 21, 2018
`
`Cancellation No. 92067378
`
`Lewis Silkin LLP
`
`v.
`
`Firebrand LLC
`
`
`
`By the Trademark Trial and Appeal Board
`
`This case comes up on Respondent’s contested motion to dismiss the petition to
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`cancel for failure to state a legally sufficient claim of abandonment.
`
`RELEVANT FACTS
`
`Petitioner seeks to cancel Registration No. 1835414, claiming that the registration
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`issued May 10, 1994 for the mark FIREBRAND for a “newsletter dealing with brand
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`and product development” and “business consultation services”; that Respondent
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`alleged use of the mark FIREBRAND in commerce for the newsletter and
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`consultation services as the basis for its registration; and that the registered mark
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`has been abandoned pursuant to Trademark Act Section 14(3). The petition
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`specifically pleads:
`
`On information and belief, Respondent is not using Respondent’s Mark on or
`in connection with Respondent’s Goods and Services with no intent to resume
`such use.
`
`
`

`

`Cancellation No. 92067378
`
`
`MOTION TO DISMISS
`
`A motion to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6)
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`concerns only one issue: the legal sufficiency of the pleaded claims. See Young v. AGB
`
`Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998) (“[Defendant’s]
`
`arguments appear to confuse the sufficient pleading of a claim with the obligation of
`
`proving that claim.”). In order to withstand a motion to dismiss, Petitioner need only
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`allege such facts which, if proved, would establish that Petitioner is entitled to the
`
`relief sought; that is: (1) Petitioner has standing to bring the proceeding; and (2) a
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`valid statutory ground exists for cancelling the registration.1 McDermott v. San
`
`Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1212 (TTAB 2006), aff’d
`
`unpub’d, 240 Fed. Appx. 865 (Fed. Cir. July 11, 2007), cert. denied, 552 U.S. 1109
`
`(2008); Young v. AGB Corp., 47 USPQ2d at 1753.
`
`Under the simplified notice pleading rules of the Federal Rules of Civil Procedure,
`
`the petition to cancel must contain “a short and plain statement of the claim showing
`
`that the pleader is entitled to relief” and must be “construed so as to do justice.” Fed.
`
`R. Civ. P. 8(a)(2) and (e); Scotch Whisky Ass’n v. U.S. Distilled Prods. Co., 952 F.2d
`
`1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991); Corporacion Habanos SA v. Rodriguez,
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`99 USPQ2d 1873, 1874 (TTAB 2011). The federal standard of notice pleading,
`
`followed by the Board, includes the requirement that the complaint “state a claim to
`
`
`1 While Petitioner’s standing has not been challenged, Petitioner pleads ownership of an
`application which was refused registration based on Respondent’s involved registration. This
`is a sufficient pleading of Petitioner’s standing to seek cancellation of the registration.
`Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1061 (Fed.
`Cir. 2014).
`
`
`
`2
`
`

`

`Cancellation No. 92067378
`
`relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
`
`Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)) (“the Iqbal/Twombly
`
`standard”). This plausibility standard is met when “the plaintiff pleads factual
`
`content that allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged.” Id. Accord Disc Disease Sols. Inc. v. VGH Sols.,
`
`Inc., 888 F.3d 1256, 126 USPQ2d 1494, 1497 (Fed. Cir. 2018).
`
`The gist of Respondent’s argument for dismissal is that Petitioner’s abandonment
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`claim does not meet the Iqbal/Twombly standard for pleadings. When applying the
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`Iqbal/Twombly standard, the reviewing court or tribunal must bear in mind the
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`Supreme Court’s stricture: “Threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S.
`
`at 678. However, this much-quoted reference to “threadbare” recitals does not
`
`establish a per se pleading standard. “Determining whether a complaint states a
`
`plausible claim for relief will ... be a context-specific task that requires the reviewing
`
`court to draw on its judicial experience and common sense.” Ashcroft v. Iqbal, 556
`
`U.S. at 679. That is, while the Iqbal/Twombly standard applies to all civil complaints,
`
`the Supreme Court makes clear that there is flexibility in application of the standard.
`
`While the Board’s primary reviewing court has not applied the Iqbal/Twombly
`
`standard to an abandonment claim under the Trademark Act, its application of the
`
`standard to pleadings of patent infringement is instructive.2 The Federal Circuit
`
`
`2 The post Iqbal/Twombly abandonment cases under Trademark Act 45(1), 15 U.S.C. §
`1127(1), considered by the Federal Circuit court have addressed the sufficiency of the
`evidence of abandonment, and not the whether the abandonment claim was properly pleaded.
`Lens.com Inc. v. 1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672 (Fed. Cir. 2012) and
`
`
`
`3
`
`

`

`Cancellation No. 92067378
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`reversed a district court finding that the plaintiff had not pleaded “any facts from
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`which intent [to infringe] could be inferred in this case” but only “only made
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`conclusory allegations.” Lifetime Indus., Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 124
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`USPQ2d 1061, 1064 (Fed. Cir. 2017). The court found that the defendant’s
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`“complaints concerning lack of detail ask for too much. There is no requirement for
`
`[the plaintiff] to ‘prove its case at the pleading stage.’” Id. at 1066 (citations omitted).
`
`In another instance, the Federal Circuit reversed a district court finding that the
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`patent infringement complaint, accompanied by the asserted patents and photos of
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`the product packaging, failed to explain how defendant’s product’s infringed
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`Plaintiff’s patent claims, but merely alleged that certain of Defendants’ products
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`“meet each and every element of at least one claim’ of Plaintiff's patents.” Disc Disease
`
`Sols. Inc. v. VGH Sols., Inc., 126 USPQ2d at 1497. The court found the allegations in
`
`combination with disclosures met the plausibility standard of Iqbal/Twombly and
`
`were “enough to provide VGH Solutions fair notice of infringement of the asserted
`
`patents.” Id.3
`
`Finally, as discussed below, the Board has applied the Iqbal/Twombly standard
`
`to consider the legal sufficiency of an abandonment claim in three cases, without
`
`
`Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir.
`2010).
`3 Accord ABB Turbo Sys. AG v. TurboUSA, Inc., 774 F.3d 979, 113 USPQ2d 1248, 1254 (Fed.
`Cir. 2014) (there is a “particular need to apply the plausibility standard with a recognition
`that direct evidence of some facts—such as guilty knowledge, in some cases—may be
`distinctively in the defendant’s possession ....”); Nalco Co. v. Chem-Mod LLC, 883 F.3d 1337,
`125 USPQ2d 1832, 1841 (Fed. Cir. 2018) (quoting In re Bill of Lading Transmission &
`Processing Sys. Patent Litig., 681 F.3d 1323, 103 USPQ2d 1045, 1053 (Fed. Cir. 2012)) (“the
`Federal Rules of Civil Procedure do not require a plaintiff to plead facts establishing that
`each element of an asserted claim is met.”).
`
`
`
`4
`
`

`

`Cancellation No. 92067378
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`finding that the Iqbal/Twombly standard required more than the traditional
`
`pleading of nonuse plus intent not to resume.4 See Dragon Bleu (SARL) v. VENM,
`
`LLC, 112 USPQ2d 1925, 1931 (TTAB 2014); SaddleSprings Inc. v. Mad Croc Brands
`
`Inc., 104 USPQ2d 1948, 1950 (TTAB 2012); and Johnson & Johnson v. Obschestvo s
`
`Ogranitchennoy, 104 USPQ2d 2037 (TTAB 2012) (Johnson & Johnson).
`
`ABANDONMENT UNDER THE TRADEMARK ACT
`
`Because the Trademark Act establishes a use-based federal registration scheme,
`
`understanding how to plead abandonment as a ground for cancellation of a
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`registration requires an understanding of use in commerce as a prerequisite to
`
`obtaining the registration. See Christian Faith Fellowship Church v. adidas AG, 120
`
`USPQ2d 1640, 1645 (Fed. Cir. 2016) quoting United States v. Lopez, 514 U.S. 549,
`
`
`4 The Board disagrees with Respondent’s argument that the Board’s post-Iqbal final decision
`in Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872 (TTAB 2010), in which the Board found
`the evidence submitted to prove an abandonment claim insufficient, imposes requirements
`for what is sufficient to plead an abandonment claim. In fact, cases discussing proof of
`abandonment only are relevant here to the extent, if any, they describe how to plead an
`abandonment claim. The Board’s post-Iqbal final decisions addressing abandonment do not
`discuss the Iqbal/Twombly standard, but either employ the traditional language to describe
`the abandonment claim or cite the statutory definition. See Exec. Coach Builders, Inc. v. SPV
`Coach Co., Inc., 123 USPQ2d 1175, 1180 (TTAB 2017) (“There are two elements to a nonuse
`abandonment claim: nonuse of the mark and intent not to resume use.”); Noble House Home
`Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1417 (TTAB 2016) (“There are
`two elements to an abandonment claim: non-use of the mark and intent not to resume use.”);
`Toufigh v. Persona Parfum Inc., 95 USPQ2d at 1875 (“There are two elements to an
`abandonment claim: non-use and an intent not to resume use.”); ShutEmDown Sports Inc. v.
`Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012) (“There are two elements to an abandonment
`claim that a plaintiff must prove: nonuse of the mark and intent not to resume use.”).
` See also, for post-Iqbal final decisions on abandonment which cite the statutory language:
`Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1605 (TTAB 2018); Yazhong Investing Ltd.
`v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1532 (TTAB 2018); Harry Winston,
`Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1429 (TTAB 2014); City National Bank
`v. OPGI Management GP Inc./GestionOPGI Inc., 106 USPQ2d 1676, 1678 (TTAB 2013); and
`General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1182
`(TTAB 2008).
`
`
`
`5
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`

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`Cancellation No. 92067378
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`561 (1995) (“[T]he ‘use in commerce’ pre-registration requirement is an ‘essential
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`part’ of the Act.”). Under the version of the Trademark Act in effect prior to 1989, the
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`preregistration use requirement “led to the practice of some applicants engineering a
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`‘token use,’ which refers to the most minimal use of a trademark, designed purely to
`
`secure rights in that mark before an applicant is truly prepared to commercialize a
`
`good or service in connection with a given mark.” M.Z. Berger & Co. v. Swatch AG,
`
`114 USPQ2d 1892, 1896 (Fed. Cir. 2015). To address the token use problem, the
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`Trademark Law Revision Act of 1988 (TLRA) heightened the burden for use
`
`applications by requiring that an applicant’s use be “bona fide use of [the] mark in
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`the ordinary course of trade.” Id. quoting 15 U.S.C. § 1127.
`
`What is “bona fide use of the mark in the ordinary course of trade” (or use in
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`commerce) may vary over time as markets and businesses change. The Board has
`
`reviewed the legislative history of the TLRA and found that the stricter standard for
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`use in commerce contemplates “commercial use of the type common to the particular
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`industry in question.” Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1774
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`(TTAB 1994) aff’d without published opinion, White v. Paramount Pictures Corp., 108
`
`F.3d 1392 (Fed. Cir. 1997). The Board noted the legislative discussion declining to
`
`limit what constitutes use in commerce: “The committee intends that the revised
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`definition of ‘use in commerce’ be interpreted to mean commercial use which is typical
`
`in a particular industry. Additionally, the definition should be interpreted with
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`flexibility so as to encompass various genuine, but less traditional, trademark uses,
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`such as those made in test markets, infrequent sales of large or expensive items, or
`
`
`
`6
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`

`

`Cancellation No. 92067378
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`ongoing shipments of a new drug to clinical investigators by a company awaiting FDA
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`approval, and to preserve ownership rights in a mark if, absent an intent to abandon,
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`use of a mark is interrupted due to special circumstances.” Id. at n.8, quoting Senate
`
`Judiciary Committee Report on S. 1883, Senate Report No. 100-515 dated September
`
`15, 1988. See also M.Z. Berger & Co. v. Swatch AG, 114 USPQ2d at 1898 (“Congress
`
`expressly rejected inclusion of a statutory definition for ‘bona fide’ in order to preserve
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`‘the flexibility which is vital to the proper operation of the trademark registration
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`system.’”).
`
`Turning to how to plead abandonment as a ground for cancellation, the statutory
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`definition of “abandonment” reiterates the same language used in the statutory
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`definition of “use in commerce.” Trademark Act Section 45(1)5 provides:
`
`A mark shall be deemed to be “abandoned” ... [w]hen its use has been
`discontinued with intent not to resume such use. Intent not to resume may be
`inferred from circumstances. Nonuse for 3 consecutive years shall be prima
`facie evidence of abandonment. “Use” of a mark means the bona fide use of
`such mark made in the ordinary course of trade, and not made merely to
`reserve a right in a mark.
`
`15 USC § 1127(1). Applying the statutory definition, an abandonment claim must
`
`plead nonuse, which is use that has been discontinued, plus “intent not to resume
`
`such use.” According to the statutory language and legislative history, “nonuse” of a
`
`mark for abandonment purposes means “no bona fide use of the mark made in the
`
`
`5 Section 45(2) of the Trademark Act, 15 USC § 1127(2), provides that a mark is deemed to
`be abandoned when the course of conduct of the owner of the mark causes the mark to lose
`its significance as an indication of origin. The pleading requirements discussed in this order
`address only the more common abandonment claim based on nonuse of the mark plus intent
`not to resume use.
`
`
`
`7
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`

`

`Cancellation No. 92067378
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`ordinary course of trade,” and this is to be interpreted with flexibility to encompass a
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`variety of commercial uses.
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`An allegation of “no intent to resume use” is equivalent to the statutory language
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`of “intent not to resume use” for an abandonment claim.6 Cerveceria Centroamericana
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`S.A. v. Cerveceria India Inc., 13 USPQ2d 1307, 1312 (Fed. Cir. 1989) (“a registrant
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`may rebut a prima facie case either by disproving the underlying fact from which the
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`presumption arises, i.e., two consecutive years of nonuse, or the presumed fact itself,
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`i.e., no intent to resume use.”). Accord Johnson & Johnson, 104 USPQ2d at 2038 n. 2
`
`(“a counterclaim to delete goods or services from the registration on the ground that
`
`registrant does not use the mark on those goods or services and has no intent to
`
`resume use, without regard to likelihood of confusion, is a straightforward
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`abandonment claim”); Western Worldwide Enterprises Group Inc. v. Qinqdao
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`Brewery, 17 USPQ2d 1137, 1138 (TTAB 1990) (abandonment was sufficiently pleaded
`
`with the allegation “China National abandoned all use of the mark with no intent to
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`resume use of the mark”); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d
`
`1879, 1880 (TTAB 1990) (sufficient abandonment counterclaim alleges plaintiff
`
`“discontinuing its use for more than two years with no intent to resume such use.”).
`
`
`6 The Federal Circuit also found that the statutory language “intent not to resume” use is
`“appropriate for the usual situation in which a registered mark has been used at some time
`in this country.” Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390,
`1394 (Fed. Cir. 1990) (Imperial Tobacco). The Federal Circuit held that the language “intent
`to begin use” or “intent to use” are an appropriate adaptation of the statutory language in
`the situation of a never-used mark registered on the basis of foreign rights. Imperial Tobacco
`at 1395. Accord Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998)
`(“Where a registrant has never used the mark in the United States because the registration
`issued on the basis of a foreign counterpart registration, ... cancellation is proper if a lack of
`intent to commence use in the United States accompanies the nonuse.”)
`
`
`
`8
`
`

`

`Cancellation No. 92067378
`
`
`The Federal Circuit has explained that a pleading of nonuse plus intent not to
`
`resume is sufficient to plead abandonment, and that the statutory reference to “prima
`
`facie evidence of abandonment” creates a presumption intended to facilitate proof of
`
`intent at trial:
`
`At common law there was no similar presumption of abandonment of a mark
`simply from proof of nonuse. A challenger had to prove not only nonuse of the
`mark but also that the former user intended to abandon the mark. However,
`with respect to rights under the Lanham Act, proof of abandonment was
`facilitated by the creation of the above statutory presumption.
`
`Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1393
`
`(Fed. Cir. 1990) (Imperial Tobacco). Accord Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d
`
`273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989) (“abandonment requires both non-use
`
`and intent not to resume use of the mark”).
`
`In its first application of the Iqbal/Twombly standard to an abandonment claim,
`
`the Board addressed the sufficiency of a counterclaim seeking partial cancellation of
`
`a pleaded registration on the ground of abandonment due to nonuse without an intent
`
`to resume use of the mark for some of the goods. Johnson & Johnson, 104 USPQ2d
`
`at 2039. The Board noted that the parties shared an incorrect belief that Trademark
`
`Act Section 18 is the only means to seek partial cancellation, and found that the
`
`pleading “sufficiently pleaded a ground for partial cancellation by alleging
`
`abandonment of the mark as to particular goods through nonuse with no intent to
`
`resume use.” Id.
`
`In one of the two subsequent cases applying the Iqbal/Twombly standard to an
`
`abandonment claim, although the factual allegations were more detailed than those
`
`
`
`9
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`

`

`Cancellation No. 92067378
`
`here (or found sufficient in Johnson & Johnson), the Board did not cite a new pleading
`
`standard, or state that the more detailed factual allegations were central to the
`
`sufficiency of the claim. See SaddleSprings Inc. v. Mad Croc Brands Inc., 104
`
`USPQ2d at 1950 (“petitioner has alleged that respondent has either never used the
`
`registered mark in commerce or completely ceased using the mark in commerce, in
`
`connection with the goods identified in the registration, for at least a period of three
`
`consecutive years. ... The facts alleged by petitioner set forth a prima facie claim of
`
`abandonment.”). In the other case, the abandonment claim was found insufficient,
`
`but this was not related to the lack of detailed allegations, but the failure to plead the
`
`required intent not to resume use. Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d
`
`at 1931 (“[B]ecause both of Opposer’s registrations were less than three years old
`
`when Applicant’s abandonment counterclaim was filed, the presumption of intent to
`
`abandon pursuant to Trademark Act Section 45 arising from nonuse for three
`
`consecutive years does not apply, and the counterclaim is insufficient absent an
`
`allegation of Opposer’s intent not to commence use of its registered marks”).7
`
`Finally, Respondent cites one of the Board’s pre-Iqbal decisions to contend that
`
`Respondent has failed to “allege ultimate facts pertaining to the alleged
`
`abandonment.” Otto Int’l Inc. v. Otto Kern Gmbh, 83 USPQ2d 1861, 1863 (TTAB
`
`2007) (Otto). In that case, the petition to cancel alleged “Upon information and belief,
`
`Registrant has abandoned use of Registration No. 2432890” and the Board held:
`
`Here, petitioner has provided no facts to support its conclusory allegation of
`abandonment in paragraph no. 5 of the amended petition to cancel. The
`
`7 The Board notes that, under the Federal Rules of Civil Procedure, “intent … may be alleged
`generally” in pleadings other than those involving fraud or mistake. Fed. R. Civ. P. 9(b).
`
`
`
`10
`
`

`

`Cancellation No. 92067378
`
`
`allegation that respondent has “abandoned use” makes no claim that
`respondent has failed to use its mark for a period greater than 3 years, nor
`does it make the claim that respondent has discontinued use of its mark with
`an intent not to resume use.
`
`
`Id. As discussed below, this case differs from Otto because, in lieu of a “conclusory
`
`allegation of abandonment,” Petitioner has pleaded the required factual
`
`allegations that Respondent ceased use of the mark with no intent to resume its
`
`use.
`
`DISCUSSION
`
`The petition to cancel pleads that Respondent is not using the mark with its goods
`
`and services, and has no intent to resume use. The Board finds that no more is
`
`necessary for a legally sufficient abandonment claim in the context of the Board’s
`
`narrow jurisdiction limited to trademark registrability. Petitioner’s abandonment
`
`claim is not merely a formulaic recitation of the elements of the claim, because the
`
`allegations of nonuse plus intent work double duty. That is, the allegations of nonuse
`
`plus intent serve both to describe the claim and to describe the necessary facts to
`
`support the claim. The Board specifically rejects the argument that the factual
`
`allegations of nonuse plus intent must include additional allegations which
`
`demonstrate how Petitioner will prove the allegations of nonuse plus intent.
`
`We see no purpose to such detailed pleading requirements for an abandonment
`
`claim, besides unnecessarily complicating the pleadings. As noted above, there is no
`
`list of activities which always show trademark use, and thus there is no list of
`
`activities whose cessation would always show trademark nonuse. Actual intent not
`
`to resume use (as opposed to the statutory period of nonuse which gives rise to the
`
`
`
`11
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`

`

`Cancellation No. 92067378
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`presumption of intent not to resume use) does not exist in a vacuum, but also must
`
`relate to the use in commerce of the mark. The Board is reluctant to see pleadings
`
`devolve into wrangling over whether specific factual allegations offered to
`
`demonstrate nonuse and intent not to resume use are sufficient to support the
`
`abandonment claim. These matters addressing what activities constitute use in
`
`commerce under the Trademark Act are best, and traditionally, left to trial.
`
`As shown by the cases cited throughout this order, the same pleading standard
`
`for abandonment claims has been in effect since the 1989 implementation of the
`
`TLRA. The Board perceives no threat of an increase in unwarranted abandonment
`
`claims. In the event that such an increase should take place, the Board has various
`
`options available to contain it: participation in the parties’ mandatory discovery
`
`conference, imposition of sanctions, and issuance of precedential orders.
`
`The Board does see an increase in the argument (also made by Respondent)
`
`contending that every pleading must demonstrate that the party undertook a
`
`reasonable inquiry or investigation before filing its pleading. The argument generally
`
`either cites no authority, or cites a jumble of the Iqbal/Twombly standard, the patent
`
`duty of disclosure, and/or Fed. R. Civ. P. 11 in support of this argument that the
`
`pleadings must demonstrate the results of the pre-filing investigation. The Board
`
`strongly disagrees that this is a requirement of the pleadings.
`
`As discussed, under the federal rules followed by the Board, the pleadings must
`
`include “a short and plain statement of the claim showing that the pleader is entitled
`
`to relief” and must be “construed so as to do justice.” Fed. R. Civ. P. 8(a)(2) and (e).
`
`
`
`12
`
`

`

`Cancellation No. 92067378
`
`The Iqbal/Twombly standard does not require the pleadings to recount the results of
`
`the inquiry or investigation, and the patent duty to disclose is inapplicable to
`
`pleadings in Board cases. While a Fed. R. Civ. P. 11 motion for sanctions may be
`
`brought at any time that such a motion is warranted, it is a serious accusation of
`
`misconduct with specific procedural requirements, and should not be employed as a
`
`throwaway argument reflecting a party’s belief that the adverse party will be unable
`
`to prove its claims (or defenses).8
`
`Whether the plaintiff will be able to prove its trademark claims is a matter for
`
`trial or summary judgment after the pleadings have closed, and is irrelevant to
`
`assessment of the legal sufficiency of the complaint. Guess? IP Holder LP v. Knowluxe
`
`LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
`
`DECISION
`
`The petition to cancel is legally sufficient because Petitioner pleaded a basis for
`
`standing and abandonment. Respondent’s motion to dismiss the petition to cancel is
`
`denied.
`
`PROCEEDINGS ARE RESUMED
`
`Respondent is ordered to file its answer to the petition to cancel within thirty
`
`days of the date of this order.
`
`
`8 All submissions to the Office, whether made by an attorney or a party, including those made
`in Board proceedings, are made subject to the certification standards of USPTO Rule
`11.18(b), 37 C.F.R. 11.18(b). “A practitioner who fails to comply with these PTO standards
`may receive a suspension or disbarment.” Carter v. ALK Holdings Inc., 605 F.3d 1319, 94
`USPQ2d 1769, 1773 (Fed. Cir. 2010). Like Fed. R. Civ. P. 11, the USPTO rule does not require
`a party to specifically recount the results of the inquiry or investigation before filing a
`pleading, and citing the rule to indicate disagreement on the merits of a claim would be
`inappropriate.
`
`
`
`13
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`

`

`Cancellation No. 92067378
`
`
`
`2/17/2019
`Deadline for Discovery Conference
`2/17/2019
`Discovery Opens
`3/19/2019
`Initial Disclosures Due
`7/17/2019
`Expert Disclosures Due
`8/16/2019
`Discovery Closes
`9/30/2019
`Plaintiff's Pretrial Disclosures Due
`11/14/2019
`Plaintiff's 30-day Trial Period Ends
`11/29/2019
`Defendant's Pretrial Disclosures Due
`1/13/2020
`Defendant's 30-day Trial Period Ends
`1/28/2020
`Plaintiff's Rebuttal Disclosures Due
`2/27/2020
`Plaintiff's 15-day Rebuttal Period Ends
`4/27/2020
`Plaintiff's Opening Brief Due
`5/27/2020
`Defendant's Brief Due
`6/11/2020
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional) Due 6/21/2020
`
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`In each instance, a copy of the transcript of testimony, together with copies of
`
`documentary exhibits, must be served on the adverse party within thirty days after
`
`completion of the taking of testimony. Trademark Rule 2.125. An oral hearing will
`
`be set only upon request filed as provided by Trademark Rule 2.129
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`
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`14
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