Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA911734
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`Filing date:
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`07/25/2018
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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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`92067668
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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 email
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`Plaintiff
`TAJMA Enterprises
`
`DAVID LUDWIG
`DUNLAP BENNETT & LUDWIG PLLC
`211 CHURCH STREET SE
`LEESBURG, VA 20175
`UNITED STATES
`Email: mwitzel@dbllawyers.com, trademarks@dbllawyers.com, dlud-
`wig@dbllawyers.com
`
`Opposition/Response to Motion
`
`David Ludwig
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`dludwig@dbllawyers.com, mwitzel@dbllawyers.com, cwigfall@dblawyers.com,
`litigation@dbllawyers.com
`
`Signature
`
`Date
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`/David Ludwig/
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`07/25/2018
`
`Attachments
`
`BEESBUTTER MTN AND RESPONSE 7.25.18.pdf(3237351 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`IN THE MATTER OF Trademark Registration No. 5,368,804
`For the mark BEESBUTTER
`
`)
`
`)
`TAJMA ENTERPRISES, LLC,
`)
`
`)
`Petitioner,
`
`)
`
`
`) Cancellation No. 92067668
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`v.
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`)
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`
`
`)
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`Rubrecht, Shaun M,
`)
`
`
`
`)
`Respondent.
`
`
`______________________________________ )
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`
`PETITIONER’S MOTION FOR LEAVE TO WITHDRAW AND REPLACE
`ADMISSIONS AND OPPOSITION TO
`RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`
`
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`TAJMA Enterprises, LLC (“Petitioner”), through counsel, hereby submits this Motion for
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`Leave
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`to Withdraw and Replace Admissions and Opposition
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`to Shaun Rubrecht’s
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`(“Respondent’s”) Motion for Summary Judgment. In support thereof, Petitioner respectfully
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`submits the arguments and facts set forth below.
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`MOTION FOR LEAVE TO WITHDRAW AND REPLACE ADMISSIONS
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`Petitioner requests the Board for leave to withdraw any admissions deemed admitted and
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`replace them with Petitioner’s responses to Respondent’s requests for admission. (See attached
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`Exhibit 1.) In his motion for summary judgment, Respondent argues that a delay in replying to
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`requests for admission has produced a result that the requests “automatically stand admitted.”
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`(D. Mtn. Sum. J. at 3.) This argument is the basis for the forty “uncontested facts” upon which
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`Respondent bases his motion for summary judgment. (Id. at 3-7.) However, as of the date of this
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`filing, Petitioner has served Answers to Requests for Admission on Respondent’s counsel.
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`
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`1
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`

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`Indeed, as of the date of this filing, Petitioner has provided responses to all of the discovery
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`propounded by Respondent. (See attached Exhibit 2.)
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`As an initial matter, any delay was inadvertent. The delay in providing responses to
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`Respondent’s requests for admission was canvassed with Respondent well in advance of the date
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`the requests were served: Respondent was informed that Petitioner might face an unavoidable
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`delay in discovery due to a significant move that could impair Petitioner’s communicability. (See
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`attached Exhibit 3; Exhibit 2.) Petitioner’s counsel was under the impression (mistaken though it
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`was) that the parties understood and accepted the impact these circumstances could have on the
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`discovery process. (See attached Exhibit 3; Exhibit 2.) Petitioner reiterated these circumstances
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`and this understanding to Respondent in a letter dated June 11, 2018, to which Petitioner
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`received no reply. (See attached Exhibit 3; Exhibit 2.)
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`The answers provided by Petitioner deny all of Respondent’s primary allegations. (See
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`attached Exhibits 1-2.) There was never any question that this matter involves issues of disputed
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`fact. Indeed, in discussions between counsel, Petitioner’s counsel has repeatedly informed
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`Respondent’s counsel that Petitioner “has every intention of continuing the opposition
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`proceeding” in accordance with its pleadings. (See attached Exhibit 3).
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`If Petitioner is deemed to have admitted the material in Respondent’s requests for
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`admission, any such admission was inadvertent and due to a good faith mistake on Petitioner’s
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`part regarding an understanding between the parties. Accordingly, Petitioner requests that such
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`admissions be deemed withdrawn and amended by Petitioner’s response to Respondent’s
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`requests for admission. (See attached Exhibit 1.)
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`Federal Rule of Civil Procedure 36(b) provides a two-prong test for withdrawal and
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`amendment of admissions when (1) it would promote presentation of the merits of the action and
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`2
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`

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`(2) the party who obtained the admissions will not be prejudiced in maintaining or defending an
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`action on the merits. Fed. R. Civ. P. 36(b); Giersch v. Scripps Networks, Inc., 85 U.S.P.Q.2d
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`1306, 1309 (TTAB 2007). Here, Petitioner has already submitted a response to Respondent’s
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`requests in which all of the facts relied on by Respondent in its motion for summary judgment
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`are denied, thereby demonstrating that the matters are dispute. (See attached Exhibit 1, denying
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`that Respondent first conceived of the idea for a leather conditioner (Request 4), denying that
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`Respondent first used the BEESBUTTER mark (Request 5), and denying that Respondent first
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`affixed the mark to the goods (Request 8), among other material denials.)
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`As to Rule 36(b)’s second prong, Respondent will not be prejudiced by allowing
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`withdrawal of Petitioner’s possible admissions and replacement with the later-served responses.
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`Indeed, Respondent has received Petitioner’s responses while this case is still in the pre-trial
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`stage, discovery is still open, and any potential prejudice can be mitigated by extending the
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`discovery period. Here, Respondent faces no particular prejudice, and indeed, no burden other
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`than the existent burden of defending a cancellation proceeding. Giersch, 85 U.S.P.Q.2d 1306,
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`1309 (finding reliance on admissions in filing motion for summary judgment does not rise to
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`level of prejudice contemplated by Fed. R. Civ. P. 36(b)). Accordingly, Petitioner requests an
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`order of the Board withdrawing any deemed admissions and deeming Petitioner’s answers to
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`have been timely filed.1
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`
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`1 Because Petitioner’s response to the requests for admission which expressly denies the
`Respondent’s allegations, the “Undisputed Facts” listed by Respondent are in fact very much in
`dispute. (D. Mtn. Sum. J. at 3-7.)
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`
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`3
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`

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`OPPOSITION TO RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
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`The allegations raised in Respondent’s motion for summary judgment are inaccurate, and
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`the motion accordingly must be denied. Respondent’s motion can be distilled into three simple
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`allegations:
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`1. The allegation that there exist no issues of material fact with respect to
`Petitioner’s claim of likelihood of confusion. (D. Mtn. Sum. J. at 17-18);
`2. The allegation that there exist no issues of material fact with respect to
`Petitioner’s claim of fraud in the procurement. (Id. at 13-17); and
`3. The allegation that there exist no issues of material fact with respect to
`Respondent’s asserted defenses of licensee estoppel, waiver, and unclean hands.
`(Id. at 7-12.)
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`Petitioner has expressly denied the admissions upon which Respondent’s motion is based. (See
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`attached Exhibit 1.) As these denials suggest, there exist genuine issues of disputed fact between
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`the parties such that a motion for summary judgment is inappropriate. Among these contested
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`issues of fact are questions regarding ownership of the BEESBUTTER mark, the import of a
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`Memorandum of Understanding (“MOU”) between the parties, Respondent’s intent in filing for
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`the BEESBUTTER application, and the impact of Petitioner’s use of another trademark (AGED
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`LEATHER PROS).
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`Summary judgment is only appropriate when there is no genuine dispute as to any
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`material fact. See Fed. R. Civ. P. 56(a); LinkedIn Corp. v. International Council for Education
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`Reform and Development (ICERD), 2018 WL 529851 (TTAB Jan. 19, 2018). The party moving
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`for summary judgment has the initial burden of demonstrating that there is no genuine dispute of
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`material fact remaining for trial and that it is entitled to judgment as a matter of law. See Fed. R.
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`Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1987).
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`In considering the propriety of summary judgment, all evidence must be viewed in a light
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`favorable to the nonmovant – in this case Petitioner – and all justifiable inferences are to be
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`
`
`4
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`

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`drawn in the nonmovant’s favor. Opryland USA Inc. v. The Great American Music Show, Inc.,
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`970 F.2d 847, 850, 23 U.S.P.Q.2d 1471, 1472 (Fed. Cir. 1992). In considering a motion for
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`summary judgment, the Board does not resolve issues of material fact, but only determines
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`whether such issues are present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 767,
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`25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993). Here, there exist genuine issues of material fact with
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`respect to Petitioner’s likelihood of confusion claim, Petitioner’s claim that Respondent
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`committed fraud upon the Trademark Office, and Respondent’s asserted defenses.
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`I. A Genuine Dispute Exists Regarding Likelihood of Confusion and Priority of
`Use
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`This matter does not present a straight-forward likelihood of confusion inquiry. Rather,
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`this matter presents a fact-intensive case involving a working relationship between two parties
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`and questions of whether use and ownership of a trademark inured to the benefit of the company
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`in whose name the trademark was initially used (and continues to be used). Respondent argues
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`that summary judgment is appropriate on the likelihood of confusion claim because the marks at
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`issue are identical. (D. Mtn. Sum. J. at 17.) However, the likelihood of confusion claim involves
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`other, contested issues of fact that are not appropriate for resolution on a motion for summary
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`judgment.
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`Respondent cites Wonderbread 5 v. Patrick Gilles, 115 U.S.P.Q.2d 1296, 1301 (TTAB
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`2015) in support of his curious argument that a likelihood of confusion claim is “not a correct
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`basis” for cancelling a mark when “there was an active agreement between the parties during the
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`first sale in commerce.” (D. Mtn. Sum. J. at 17.) Yet the nature of the “active agreement” in this
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`matter – a MOU between the parties – is very much in dispute. Notably, the MOU contains no
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`provision regarding ownership or licensure of the BEESBUTTER mark. (See attached Exhibit 4.)
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`Instead, as alleged in the petition for cancellation, use of the BEESBUTTER mark has accrued to
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`
`
`5
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`

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`Petitioner’s benefit since 2014, as the mark has always been used with goods offered under
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`Petitioner’s company. (See, e.g., First Amended Pet. to Cancel ¶¶ 3-5.)
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`Ownership is a key component of any likelihood of confusion claim. See, e.g., Herbko
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`Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1378 (Fed. Cir. 2002) (“[A]
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`party petitioning for cancellation under section 2(d) must show that it had priority and that
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`registration of the mark creates a likelihood of confusion. … To establish priority, the petitioner
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`must show proprietary rights in the mark that produce a likelihood of confusion.”); T.A.B. Sys. v.
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`Pactel Teletrac, 77 F.3d 1372, 37 U.S.P.Q.2d 1879, 1881 (Fed. Cir. 1996) (“In an opposition
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`founded on section 2(d), the opposer must establish its own prior proprietary rights in the same
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`or a confusingly similar designation in order to defeat the application.”); The Land-O-Nod Co. v.
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`Paulison, 220 U.S.P.Q. 61, 65 (TTAB 1983) (“One who opposes registration to an applicant
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`under Section 2(d) … must prove that he has proprietary rights in the term he relies upon to
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`demonstrate likelihood of confusion as to source, whether by ownership of a registration, prior
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`use of a technical ‘trademark,’ prior use in advertising, prior use as a trade name, or whatever
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`other type of use may have developed a trade identity.”); Person’s Co. v. Christman, 900 F.2d
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`1565, 14 U.S.P.Q.2d 1477, 1479 (Fed. Cir. 1990) (use of a trademark is what gives rise to
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`ownership rights). Here, ownership of the BEESBUTTER mark is heavily contested – indeed, it
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`is the crux of the claims of both Petitioner and Respondent in this matter. Though the marks at
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`issue here are patently identical, there exist multiple contested questions of fact that relate to
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`likelihood of confusion between the marks, including:
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`• Priority of use of the BEESBUTTER mark in commerce;
`• Respondent’s knowledge of Petitioner’s rights in the BEESBUTTER mark; and
`• Ownership of the BEESBUTTER mark.
`
`
`
`
`6
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`

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`(See, e.g., First Amended Pet. to Cancel ¶¶ 3-5.) Contrary to Respondent’s argument,
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`these contested issues of ownership support, rather than undercut, the need for a thorough
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`determination of the likelihood of confusion issue. Here, although both Petitioner and
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`Respondent agree that a working relationship did exist, the precise composition of the
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`relationship and its impact on the BEESBUTTER trademark rights is in dispute. (See, e.g.,
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`Exhibit 1, Requests 6-21; Exhibit 5, depicting emails between Petitioner and Respondent
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`wherein Petitioner instructs Respondent and approves Respondent’s work; Exhibit 6, Requests 9-
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`29.) There clearly exists a material dispute regarding use and ownership of the mark.
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`The very case relied on by Respondent, Wonderbread 5 v. Patrick Gilles, 115 U.S.P.Q.
`
`2d 1296, 1301 (TTAB 2015), indicates that summary judgment would be inappropriate here. In
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`Wonderbread 5, the Board considered a trademark dispute not unlike the present dispute, where
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`the parties contested the effect that a legal document (there, an alleged settlement agreement) had
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`upon ownership of a trademark. Crucially, the effect of this settlement agreement was raised as
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`an issue in a motion for summary judgment submitted by the Wonderbread 5 petitioner.
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`Wonderbread 5 v. Patrick Gilles, Can. No. 92052150 at 3 (TTAB Mar. 13, 2012) (non-
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`precedential). The Board denied the motion for summary judgment, finding that “there is a
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`genuine dispute concerning, inter alia, the terms of the alleged settlement agreement and its
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`impact, if any, on the respective rights of the parties vis-à-vis the mark.” Id. The Board further
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`opined:
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`Because the effect of any settlement agreement is tied to petitioner’s claims of
`priority and fraud, this, of course, precludes us from finding that petitioner has
`demonstrated the absence of a genuine dispute so as to grant judgment in its favor
`on its claims.
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`Id. Notably, the later decision cited by Respondent was issued after both parties in the
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`matter had fully briefed the case on the merits, rather than at the summary judgment stage.
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`
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`7
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`

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`Wonderbread 5, 115 U.S.P.Q.2d at 1301. Here, as in Wonderbread 5, the effect of any
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`agreement is intrinsically tied to each party’s claims regarding priority, likelihood of confusion,
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`and fraud. There remain genuine issues of material fact regarding the nature of the MOU,
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`ownership of the mark, and confusion between the two BEESBUTTER marks. For this reason,
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`summary judgment is inappropriate.
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`II. A Genuine Dispute Exists Regarding Whether Respondent Committed Fraud in
`the Procurement
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`As Respondent himself acknowledges, a claim of fraud in the procurement is a fact-based
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`inquiry subject to the heightened pleading standard of Rule 9(b). (D. Mtn. Sum. J. at 13.)
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`Because it is a fact-based inquiry, a claim of fraudulent procurement, “[a]s a general rule . . . [is]
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`particularly unsuited to disposition on summary judgment.” Copelands’ Enters., Inc. v. CNV,
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`Inc., 20 U.S.P.Q.2d 1295, 1299 (Fed. Cir. 1991). Here, Petitioner has claimed that Respondent
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`committed fraud upon the Trademark Office by 1) submitting a fraudulent allegation of
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`ownership; 2) submitting a fraudulent allegation of use in commerce, and 3) submitting a
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`fraudulent specimen of use. (First Amended Pet. to Cancel ¶¶ 9-32.) The key question is
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`whether Respondent intended to mislead the Trademark Office in averring he owned the mark, in
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`submitting an allegation of use in commerce, and in submitting a specimen of use. See In re Bose
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`Corp., 91 U.S.P.Q. 2d 1938, 1941 (Fed. Cir. 2009). This question is not appropriate for
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`determination on a motion for summary judgment.
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`Here, Petitioner has raised genuine issues of fact as to the circumstances and intent of
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`Respondent’s trademark application. Respondent was engaged in a working relationship with
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`Petitioner for a number of years.2 (First Amended Pet. to Cancel ¶ 6.) The parties disagree
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`2 Petitioner notes that Respondent continues to make much of differences in terminology
`between the parties, in particular, the definition of “employee.” (See D. Mtn. Sum. J. at 2, 13,
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`
`
`8
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`

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`regarding the circumstances of that relationship, the import of any agreements entered into by the
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`parties, and the extent to which any use of the BEESBUTTER mark by Respondent inured to
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`Petitioner’s benefit. (See id. ¶¶ 12-15, 22-24, 30-32; D. Mtn. Sum. J. at 3-7.) Nonetheless, to
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`suggest that Respondent did not know that Petitioner had an interest in the mark is insupportable.
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`(See D. Mtn. for Sum. J. at 13.) Respondent has admitted:
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`• That all sales revenue for the BEESBUTTER product flowed through Petitioner.
`(Exhibit 6 ¶ 9);
`• That Petitioner paid Amazon Marketing Services directly for all marketing campaigns
`for the branded goods. (Id. ¶ 15);
`• That Petitioner’s member Tricia Mischler gave Respondent “her username and
`password to log into an online video seminar series called Amazing Selling Machine
`(“ASM”) to learn how to sell on Amazon.” (Id. ¶¶ 27-28);
`• That “[o]n occasion I received instructions from Petitioner regarding the nature, scope,
`and content of my work.” (Id. ¶ 39);
`• That Respondent created graphics for Petitioner using software at Petitioner’s expense.
`(Id. ¶ 56);
`• That Petitioner financed all equipment and raw material needs for the BEESBUTTER
`product development. (Id. ¶ 57);
`• That Respondent never assumed any expenses related to the development of the
`BEESBUTTER product. (Id. ¶ 58);
`• That Petitioner controlled the capital investment in all inventory for BEESBUTTER
`during Petitioner and Respondent’s working relationship. (Id. ¶ 63);
`• That Petitioner paid product suppliers for all the BEESBUTTER product production. (Id.
`¶ 64);
`• That the BEESBUTTER label design was approved by Petitioner before it entered into
`interstate commerce. (Id. ¶ 66).
`
`
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`Given Petitioner’s consistent and admitted role in overseeing use of the mark, a genuine
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`dispute exists as to whether Respondent intended to commit fraud on the Trademark Office in
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`15, 16: “Petitioner’s argument for fraud is based on the falsehood that Respondent was an
`employee.”) Respondent’s motion was filed after Petitioner amended its pleading to clarify that it
`does not use “employee” as a term of art in the copyright-law sense of the word. (See Mtn. to
`Amend Pet. for Cancellation ¶¶ 1, 6, specifying that Petitioner defines “employment” to mean
`the working relationship and independent contractor status of Respondent.) Respondent’s
`contentions regarding the difference in terminology are accordingly moot.
`
`
`
`9
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`

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`applying for the BEESBUTTER registration.3 In light of the disagreement between the parties
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`regarding Respondent’s intent in filing for the BEESBUTTER mark, there exist genuine issues
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`of material fact regarding whether Respondent’s BEESBUTTER registration is valid, whether
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`Respondent is the owner, and whether Respondent has the exclusive right to use the mark in
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`commerce. See 15 U.S.C. § 1057(b); Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha
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`Opposition, 26 U.S.P.Q.2d 1503, 1508 (TTAB 1993) (finding summary judgment “not warranted
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`because the material factual issue of whether applicant’s intent is bona fide or not remains, in
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`light of the inferences in favor of opposer from the undisputed facts, genuinely in dispute.”).
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`Summary judgment is “notoriously inappropriate for determination of claims in which
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`issues of intent, good faith and other subjective feelings play dominant roles.” Pfizer, Inc. v.
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`Int’l Rectifier Corp., 90 U.S.P.Q. 273, 277 (8th Cir. 1976); see also Albert v. Kevex Corp., 221
`
`U.S.P.Q. 202, 207 (Fed. Cir. 1984) (“Intent is a factual matter which is rarely free from
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`dispute.”); Kangaroos U.S.A., Inc. v. Caldor, Inc., 228 U.S.P.Q. 32, 33 (Fed. Cir. 1985) (“Good
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`faith, intent to deceive, scienter, honest mistake are all questions of fact.”). For this reason,
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`Respondent’s motion must be denied.4
`
`
`3 Petitioner further notes that – contrary to Respondent’s assertion, which appears to erroneously
`apply the standard for a motion to dismiss (D. Mtn. for Sum. J. at 13) – it has pled the
`circumstances regarding its fraud claim with particularity. Petitioner has claimed that it has made
`exclusive use of the BEESBUTTER mark since 2014 (First Amended Pet. to Cancel ¶¶ 4-5), that
`Respondent was aware of its use (id. ¶ -7, 12-13, 20-22, 30), and that Respondent misled the
`Trademark Office about the scope and validity of his purported rights in BEESBUTTER (id. ¶¶
`12-15, 22-24, 30-32).
`4 Discovery is ongoing in this matter. Nonetheless, Respondent appears to contend that Petitioner
`had a duty to prove its fraud case in its initial disclosures. (D Mtn. for Sum. J. at 1.) In the
`experience of Petitioner’s counsel, its initial disclosures are in keeping with those submitted in
`every Trademark Trial and Appeals Board matter in which it has participated in the past. (See
`attached Exhibit 7.) If Respondent thought Petitioner’s disclosures deficient in some respect
`(they were not), Respondent has had ample opportunity to discuss the alleged defects with
`Petitioner or seek more information in discovery.
`
`
`
`10
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`

`

`III. Respondent’s Defense of Licensee Estoppel Presents Contested Issues of Fact
`and Does Not Support a Motion for Summary Judgment
`
`Respondent’s defense of licensee estoppel presents highly contested issues of fact. This
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`defense is based on an MOU entered into by the parties in 2014. (D. Mtn. for Sum. J. at 8; see
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`attached Exhibit 4.) Contrary to Respondent’s assertion, this document in no way establishes “an
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`agreement to pay Respondent in perpetuity for all sales of BEESBUTTER,” nor is it a “licensing
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`deal.” (D. Mtn. for Sum. J. at 8.) No provision of the MOU contemplates intellectual property
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`licensure. (See attached Exhibit 4.) Even if the MOU contained a licensing provision, as
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`Respondent alleges (it does not), it would be ineffective to transfer rights in the mark to
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`Respondent. Rights to a mark are transferred “only in connection with the transfer of the
`
`goodwill of which it is a part.” Visa, U.S.A., Inc. v. Birmingham Tr. Nat. Bank, 696 F.2d 1371,
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`1375 (Fed. Cir. 1982). A naked transfer of the mark—known as a transfer in gross—is invalid.
`
`See id. Given the MOU’s sparse treatment of intellectual property rights and lack of any mention
`
`of goodwill, any transfer effected by it (there was none) would be a naked transfer, and therefore
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`invalid. (See attached Exhibit 4.)
`
`The MOU has no bearing on the actual trademark use or ownership of BEESBUTTER.
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`Instead, Petitioner has plainly claimed that is has made exclusive use of the BEESBUTTER
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`mark since 2014 (First Amended Pet. to Cancel ¶¶ 4-5), that Respondent was aware of its use (id.
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`¶ -7, 12-13, 20-22, 30), and that Respondent misled the Trademark Office about the scope and
`
`validity of his purported rights in BEESBUTTER (id. ¶¶ 12-15, 22-24, 30-32). Respondent
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`contends, however, that the MOU is the governing document in this matter. (D. Mtn. for Sum. J.
`
`at 8-9.) As a result, there exists a genuine disagreement between the parties as to an issue of
`
`material fact. For this reason, summary judgment is inappropriate.
`
`
`
`11
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`

`

`IV. Respondent’s Defense of Unclean Hands Presents Contested Issues of Fact and
`Does Not Support a Motion for Summary Judgment
`
`
`
`Respondent’s unclean hands defense presents contested issues of fact. (D. Mtn. Sum. J. at
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`10.) Respondent’s cursory statement that “Petitioner cannot demonstrate lawful use of the
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`BEESBUTTER mark” is incorrect and cannot support summary judgment. (See id.) It is
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`axiomatic that trademarks are “integral and inseparable elements of the goodwill of the business
`
`or services to which they pertain.” Visa, U.S.A., Inc., 696 F.2d at 1375. Here, as alleged in the
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`petition for cancellation, use of the BEESBUTTER mark has accrued to Petitioner’s benefit since
`
`2014, as the mark has always been used with goods offered under the mantle of Petitioner’s
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`company. (See, e.g., First Amended Pet. to Cancel ¶¶ 3-5.) Respondent’s motion for summary
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`judgment improperly characterizes the issues involved in the cancellation proceeding as issues of
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`contract law, rather than trademark law. (See D Mtn. for Sum. J. at 11, alleging breach of
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`contract.) This is incorrect. Trademark rights are generated by use in commerce. 15 U.S.C. §
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`1127. It is use in commerce – not contracts that do not contemplate the transfer of trademark
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`rights (see attached Exhibit 4) – that creates enforceable trademark rights. Petitioner has been
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`explicit about its rights under the proper standard of trademark law from the outset:
`
`• “Petitioner has used its BEESBUTTER mark in a valid and continuous manner in
`United States commerce since at least as early as December 1, 2014.” (First
`Amended Pet. to Cancel ¶ 4.)
`• “By virtue of this substantial and continuous use, Petitioner’s BEESBUTTER
`mark has acquired significant value and goodwill as an identification of the source
`of Petitioner’s goods. Petitioner has invested time and effort in advertising and
`promoting the mark, and Petitioner’s mark serves to distinguish its goods from the
`goods of others.” (Id. ¶ 5.)
`• “Petitioner is the rightful owner of superior common law rights in Petitioner’s
`BEESBUTTER mark, and possessed these rights at the time the application was
`verified by Respondent.” (Id. ¶ 12.)
`
`Here, the issue is not whether Petitioner has pled a “claim for which relief can be granted,”
`
`though Petitioner unquestionably has done so. (D. Mtn. Sum. J. at 10, articulating the standard
`
`
`
`12
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`

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`for a motion to dismiss, rather than a motion for summary judgment.) Instead, the question is
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`whether there exists a genuine dispute as to any material fact. See Fed. R. Civ. P. 56(a). Notably,
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`Respondent does not plead that no genuine dispute exists regarding any material fact related to
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`its unclean hands defense. (See D. Mtn. Sum. J. at 9-11.) He cannot do so, as the parties patently
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`disagree about the import of the MOU and the extent to which this matter is governed by
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`contract law. For these reasons, summary judgment is inappropriate.
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`V. Respondent’s Defense of Waiver Presents Contested Issues of Fact and Does Not
`Support a Motion for Summary Judgment
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`Petitioner’s adoption of an additional trademark as a source-identifier does not constitute
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`waiver of rights in the BEESBUTTER mark. (See id. at 11-12.) Although it is not entirely clear,
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`Respondent’s waiver argument appears to assert that Petitioner has abandoned use of the
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`BEESBUTTER mark. (See id.) As an initial matter, this very proceeding serves as a counterpoint
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`to Respondent’s allegations: Petitioner would not have initiated this proceeding if it “inten[ded]
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`to relinquish BEESBUTTER,” as Respondent asserts. (See id.) The argument that Petitioner
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`“waived its use of BEESBUTTER as a trademark”– raised in a proceeding where Petitioner is
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`seeking to cancel Respondent’s BEESBUTTER registration based on its prior, substantial rights
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`in the mark (Pet. to Cancel ¶¶ 4-5)– cannot be borne. (See D. Mtn. Sum. J. at 11-12.) Had
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`Petitioner navigated away to use another mark and abandon the BEESBUTTER mark, it
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`logically follows that Petitioner would have no reason to assert its rights in the BEESBUTTER
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`mark in this proceeding.
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`Far more is required to establish abandonment of rights in a trademark. See 15 U.S.C. §
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`1127 (establishing that abandonment can only be inferred where “use has been discontinued with
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`intent not to resume such use.”). Respondent does not (and cannot) argue that Petitioner has
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`discontinued use of the BEESBUTTER mark, or that Petitioner intends not to resume such use.
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`Instead, Respondent’s waiver argument is premised on a curious understanding of branding
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`formalities. Respondent appears to be confused by Petitioner’s use of multiple marks on the label
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`of its goods. (See D. Mtn. Sum. J. at 11, stating that “Petitioner. . . added the AGED LEATHER
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`PROS mark” to its product label, and arguing that this conclusively establishes waiver of rights
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`in BEESBUTTER.)
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`Respondent’s misunderstanding of the role of Petitioner’s multiple marks is reflected in
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`its opposition of Petitioner’s unrelated AGED LEATHER PROS mark on the grounds of
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`likelihood of confusion. See Opp. No. 91241537. Respondent’s sole contention in the AGED
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`LEATHER PROS proceeding relates to an alleged confusing similarity between Petitioner’s
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`AGED LEATHER PROS mark and Respondent’s registration for BEESBUTTER. (Opp. No.
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`91241537, Opp. ¶ 27.)
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`By way of illustration, a SPRITE® and ARTIC COKE® emanate from the same source
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`(The Coca-Cola Company) but are distinct trademarks. The Coca-Cola Company’s adoption of
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`SPRITE® does not constitute a waiver of rights in ARTIC COKE®.5 Respondent’s contention
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`that “Petitioner waived its rights to the BEESBUTTER mark after it began to use a new mark as
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`the source indicator for the goods” is insupportable. (D. Mtn. Sum. J. at 11-12.) Respondent’s
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`assertions regarding waiver are very much contested issues of fact, and Respondent’s waiver
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`defense cannot support a motion for summary judgment.
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`CONCLUSION
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`Because there exist multiple contested issues of fact, the Respondent’s motion for
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`summary judgment is inappropriate, and accordingly, should be denied.
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`5 Nor would the marks’ shared ownership by The Coca-Cola Company be a basis for a rival soda
`company to oppose or seek to cancel ARTIC COKE® based on an alleged interest in SPRITE®.
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`Dated this 25th day of July 2018.
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` Respectfully submitted,
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`TAJMA ENTERPRISES, LLC,
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`Petitioner,
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` By counsel,
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` /David Ludwig/
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` David Ludwig
` Mary Witzel
` Dunlap Bennett & Ludwig PLLC
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`211 Church Street, SE
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`Leesburg, VA 20175
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`Tel.: (703) 777-7319
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`Fax.: (703) 777-3656
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`dludwig@dbllawyers.com
` mwitzel@dbllawyers.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing Petitioner’s Response served
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`upon Respondent by depositing two copies thereof in the U.S. Mail, First Class, postage prepaid,
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`on this 25th day of July 2018, addressed as follows:
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`Lisa R. Wilcox
`WILCOX LAW PA
`721 First Avenue North, Suite 100
`St. Petersburg, FL 33701
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`/David Ludwig/
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` David Ludwig
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`15
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`Exhibit 1
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`Exhibit 1
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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 Trademark Registration No. 5,368,804
`For the mark BEESBUTTER;
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`Registered on January 2, 2018
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`)
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`) )
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`) )
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`Petitioner,
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`) Cancellation No. 92067668
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`) )
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`TAJMA Enterprises, LLC
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`v.
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`Shaun M. Rubrecht,
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`)
`Respondent.
`______________________________________ )
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`PETITIONER’S RESPONSE TO
`RESPONDENT’S FIRST SET OF REQUESTS FOR ADMISSIONS
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`Petitioner, TAJMA Enterprises, LLC, hereby responds to Respondent’s First Set of
`Requests for Admissions as follows:
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`GENERAL OBJECTIONS
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`1. Petitioner objects to Respondent’s First Set of Requests for Admissions to the extent that they
`seek information that may be protected by the attorney-client privilege, the work-product
`doctrine, and any other privilege.
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`2. Petitioner objects to Respondent’s First Set of Requests for Admissions to the extent that they
`seek to impose obligations broader than those required by or authorized by the TBMP and/or any
`other applicable law.
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`3. Petitioner objects to Respondent’s First Set of Requests for Admissions to the extent that they
`may not reasonably be expected to yield information relevant t