Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA985232
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`Filing date:
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`07/03/2019
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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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`92071109
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`Party
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`Correspondence
`Address
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`Defendant
`Majik Medecine, LLC
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`MAJIK MEDECINE LLC
`629 VILLAGE LANE SOUTH
`MANDEVILLE, LA 70471
`UNITED STATES
`Blynn@BLKLawGroup.com
`no phone number provided
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Motion to Dismiss - Rule 12(b)
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`Blynn Shideler
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`Blynn@BLKLawGroup.com
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`/Blynn Shideler/
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`07/03/2019
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`Attachments
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`Motion under rule 12b6 finalJuly3.pdf(165895 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CBDMD, LLC
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`Plaintiff/Petitioner
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`Cancellation Proceeding # 92071109
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`Registration # 5173264
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`-v-
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`Majik Medicine, LLC,
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`Defendant/ Registrant
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`Background
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`Motion and Brief under Fed. R. Civ. P. Rule 12(b)(6)
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`This petition is nothing more than the blatant attempt of a multimillion dollar corporation to usurp
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`the legitimate prior trademark rights of a smaller competitor. The essence of the petitioner’s argument
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`can be boiled down to the fact that since they are much bigger and spent a large amount of money on the
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`use of the subject mark CBDMD then they assert that they should be allowed to steal the mark for their
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`own use.
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`The registrant in this action is a small herbal company, Majik Medicine, LLC (Majik Medicine).
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`The co-founder, Christy Peachey, is the driving force of the registrant who, together with her former
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`stepmother and co-founder Brenda M. Kraft, owns a controlling interest in the registrant. Ms. Peachey is a
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`single mother raising three children and attempting to grow two businesses. The final principle of the
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`registrant is co-founder Daniel Sinclair, a serial entrepreneur who provides continued guidance and
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`mentoring to Ms. Peachey as she tirelessly grows this business.
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`Ms. Peachey began investigating the effects of CBD as a natural anti-inflammatory in 2015. Ms.
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`Peachey personally experienced the benefits of taking CBD. Ms. Peachey, through Majik Medicine,
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`developed a line of products incorporating CBD and worked on finding a suitable brand name, eventually
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`settling on the subject mark CBD MD, noting that CBD aside from its obvious connection to the product
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`also reflected the initials for the principles: Christy, Brenda and Daniel. Ms. Peachey filed the application
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`for trademark registration for the mark CBD MD that issued as the subject registration on behalf of Majik
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`Medicine and Majik Medicine began legally selling the product line through medical practitioners in
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`February 2016, long before the Petitioner used substantially the same mark in 2017. Majik Medicine has
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`continuously used the mark CBD MD in commerce since the introduction in the beginning of 2016.
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`Upon learning of the petitioner’s entry into the market with the same goods and the substantially
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`the identical mark CBDMD, Majik Medicine advised the petitioner of the subject registration and the
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`associated mark CBD MD, and advised the petitioner to avoid the use of Majik Medicine’s mark and to
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`respect Majik Medicine’s rights. When the petitioner was unable to secure a co-existence agreement,
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`mainly because the onerous proposed agreement from the petitioner refused to respect the trademark
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`rights of Majik Medicine, then the petitioner proceeded with this more nefarious approach of blatant
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`trademark theft.
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`The petitioner/plaintiff filed the petition in this matter on April 16, 2019, and this proceeding was
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`instituted on April 24, 2019. As set forth below the petition fails to contain sufficient factual matter, even
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`if accepted as true, which states a claim to relief that is plausible on its face. The implausibility of the
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`petitioner’s positions are addressed in turn below.
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`TABLE OF CONTENTS
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`Contents
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`Background ................................................................................................................................................... 1
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`TABLE OF CONTENTS .............................................................................................................................. 3
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`Table Of Authorities ..................................................................................................................................... 4
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`Deceptively Misdescriptive .......................................................................................................................... 7
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`Dilution by Blurring or Dilution by Tarnishment ......................................................................................... 9
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`Registrant not the Rightful Owner of Mark CBD MD ............................................................................... 10
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`Failure to Function as a Mark ..................................................................................................................... 11
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`Merely Descriptive ...................................................................................................................................... 13
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`Fraud on the United States Patent and Trademark Office ........................................................................... 14
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`Non-use of the mark .................................................................................................................................... 16
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`Possible Allegation of Non-use of the Mark by Registration because the mark has been Abandoned .. 16
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`Allegation of Non-use of the Mark by Registration because the products allegedly violate Louisiana
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`state law .................................................................................................................................................. 17
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`Allegation of Non-use of the Mark by Registration because the products allegedly violate Federal law
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`Priority and Likelihood of Confusion ......................................................................................................... 21
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`Table Of Authorities
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`CasesCases
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`CasesCases
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`15 U.S.C. § 1125(c)(1) .................................................................................................................................. 9
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) ................................................................................................. 7
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`Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003 (TTAB 1984) .......................................... 8
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`Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1023 (Fed. Cir. 1989) ....... 17
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`Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1374 (Fed. Cir. 2012) ................................. 9
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`Enterprises Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333, 1337 (Fed. Cir. 2003) ......... 10
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`Everest Capital, Ltd. v. Everest Funds Mgmt. LLC, 393 F.3d 755, 763 (8th Cir.2005) ............................... 9
`
`Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) ............................................. 7
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`Hemp Industries Association v. Drug Enforcement Administration, 357 F.3d 1012 (9th Cir. 2004) WL
`225037 03-71693, 03-71366 ................................................................................................................... 20
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`I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47, 49 USPQ2d 1225, 1239 (1st Cir. 1998) ................ 9
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`In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009) ............................................................................ 15
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`In re Bush Bros. & Co., 884 F.2d 569, 570 (Fed. Cir. 1989) ...................................................................... 14
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`In re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227, 1229, 2010 WL 3441109 (T.T.A.B.2010)) .......................... 12
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`In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983) .............................................................................. 8
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`In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984) ....................................................................... 8
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`In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991) .................................................... 11
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`In re Volvo Cars of North America, Inc., 46 U.S.P.Q. 2d 1455, 1998 WL 239298, at *5 (T.T.A.B.1998) 12
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`In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (CCPA 1977) ........................................................ 13
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`Jean-Claude Boisset Wines U.S.A., Inc., CANCELLATION 920685, 2018 WL 5920965, at *1–2 (Nov. 2,
`2018) ......................................................................................................................................................... 7
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`Kemin Indus., Inc. v. Watkins Prods., Inc., 192 USPQ 327, 329 (T.T.A.B.1976) ...................................... 15
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`Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1031, 213 USPQ 185, 191 (CCPA 1982) ....... 17
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`Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982) ................... 7
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`New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 556 (2d Cir. 2002) ............ 9
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`Petroleos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010) .............................................. 7
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`Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (T.T.A.B.1981) ..................................................... 15
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`Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1180 (T.T.A.B.2001) ...................................................... 9
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`Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed.Cir.1986) ........................................................... 14
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`W.D. Byron & Sons v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1003-04, 153 USPQ 749, 750 (CCPA 1967)
` ................................................................................................................................................................ 17
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`W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 54 C.C.P.A. 1442, 377 F.2d 1001, 1004 (1967) ......... 15
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`West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir.
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`1994) ....................................................................................................................................................... 11
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`
`StatutesStatutes
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`StatutesStatutes
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`15 U.S.C. § 1064(3) .................................................................................................................................... 14
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`15 U.S.C. § 1092 ........................................................................................................................................... 9
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`15 U.S.C. § 1127 ......................................................................................................................................... 12
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`15 U.S.C. §1052(e)(1) .................................................................................................................................... 8
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`15 U.S.C. §1091 .......................................................................................................................................... 13
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`15 U.S.C. §1095 .......................................................................................................................................... 14
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`21 U.S.C. 802(16) ....................................................................................................................................... 19
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`21 U.S.C. 812, ............................................................................................................................................. 19
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`21 U.S.C. 844(a) ......................................................................................................................................... 19
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`U.S.C. 841(a)(1) .......................................................................................................................................... 19
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`
`RulesRules
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`RulesRules
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`37 C.F.R. § 2.71(d) ..................................................................................................................................... 11
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`TreatisesTreatises
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`TreatisesTreatises
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`4 McCarthy, § 24:104 ................................................................................................................................... 9
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`McCarthy § 3:1 ........................................................................................................................................... 12
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`McCarthy on Trademarks § 3:3 (4th ed. 2014) ........................................................................................... 11
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`Applicable Law
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`A motion to dismiss under Fed. R. Civ. P. Rule 12(b)(6) is a test of the sufficiency of the petition
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`(or complaint). To survive a motion to dismiss, a petitioner must allege sufficient factual content that, if
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`proved, would allow the Trademark Trial and Appeal Board (Board) to conclude, or to draw a reasonable
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`inference, that (1) the petitioner has standing to maintain the proceeding, and (2) a valid ground exists for
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`cancelling the registration. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
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`187 (CCPA 1982). Specifically, a petition “must contain sufficient factual matter, accepted as true, to
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`‘state a claim to relief that is plausible on its face.”’ Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
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`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “Under the simplified notice pleading of the
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`Federal Rules of Civil Procedure, the allegations of a complaint should be construed liberally so as to do
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`substantial justice.” Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). Yet
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`even when liberally construing the allegations in a complaint, the claimant must allege well-pleaded
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`factual matter and more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere
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`conclusory statements,” to state a claim plausible on its face. Ashcroft. (citing Twombly, 550 U.S. at 555).
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`“For purposes of determining the motion, all of [the claimant's] well-pleaded allegations must be accepted
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`as true, and the [claims] must be construed in the light most favorable to [the claimant].” Petroleos
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`Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010). See also Jean-Claude Boisset Wines
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`U.S.A., Inc., CANCELLATION 920685, 2018 WL 5920965, at *1–2 (Nov. 2, 2018)
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`
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`As set forth below the Plaintiff has failed to adequately state a claim upon which relief can be
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`granted.
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`Deceptively Misdescriptive
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`The petitioner lists one ground of cancellation that the registrant’s mark is deceptively
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`misdescriptive. This is repeated in paragraph 67 of the petition. Paragraphs 75-79 in the same section of
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`the petition purport to suggest why the registrant’s mark is merely descriptive and should be cancelled
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`(which ground is separately denied and discussed below). It is entirely unclear from the petition why the
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`petitioner believes or asserts the mark is deceptively misdescriptive. It is possible this is listed merely in
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`error.
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`It is true that Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), prohibits registration
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`of designations that are deceptively misdescriptive of the goods or services to which they are applied. The
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`Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively
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`misdescriptive, that is, unless persons who encounter the mark, as used on or in connection with the
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`goods or services in question, are likely to believe the misrepresentation. See Binney & Smith Inc. v.
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`Magic Marker Indus., Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYON held neither common
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`descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers). As
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`explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984) “The test for
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`deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered
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`misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe
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`the misrepresentation. {citations omitted}. A third question, used to distinguish between marks that are
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`deceptive under Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1), is
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`whether the misrepresentation would materially affect the decision to purchase the goods. Cf. In re House
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`of Windsor, Inc., 221 USPQ 53 (TTAB 1983).
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`The petitioner has not and cannot establish any of the grounds of deceptive misdescriptiveness in
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`the complaint. There is no discussion in the petition of what alleged matter that is registered misdescribes
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`the goods, or what matter is also deceptive, that is, if anyone is likely to believe the alleged
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`misrepresentation, and further no discussion of how the alleged misrepresentation would materially affect
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`the decision to purchase the goods. With regard to the ground of cancellation that the mark is deceptively
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`misdescriptive the Plaintiff has failed to adequately state a claim upon which relief can be granted
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`Dilution by Blurring or Dilution by Tarnishment
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`In order to proceed with dilution by blurring or dilution by tarnishment the petitioner must
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`establish they own a famous mark. To succeed on a claim for trademark dilution, a petitioner must “show
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`that its mark is both famous and distinctive.” See New York Stock Exch., Inc. v. New York, New York
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`Hotel LLC, 293 F.3d 550, 556 (2d Cir. 2002) ; 15 U.S.C. § 1125(c)(1). Further the relevant statute 15
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`U.S.C. § 1092 makes clear that in cancelation of a supplemental register mark the “effective filing date is
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`after the date on which such person's mark became famous and which would be likely to cause dilution by
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`blurring or dilution by tarnishment under section 1125(c) of this title” (emphasis added). The petitioner
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`has not established, and cannot establish ownership of famous mark, or that the mark became famous
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`before the effective filing date and asserted use of the registrant.
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`In Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1374 (Fed. Cir. 2012) where the
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`only sales and advertising figures in the record were for one year and which was after the other party
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`filed its use-based applications, the Federal Circuit agreed with the Board that this limited evidence of
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`sales and advertising is insufficient to show fame. Similarly here the alleged use of the petitioner is after
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`the application for the subject registration and the petitioner cannot establish it has a famous mark.
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`The standard for fame and distinctiveness required to obtain anti-dilution protection is more
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`rigorous than that required to seek infringement protection” See I.P. Lund Trading ApS v. Kohler Co., 163
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`F.3d 27, 47, 49 USPQ2d 1225, 1239 (1st Cir. 1998). The CAFC noted in Coach, 668 F.3d at 1373, that
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`“It is well-established that dilution fame is difficult to prove. See Toro Co. v. ToroHead Inc., 61
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`U.S.P.Q.2d 1164, 1180 (T.T.A.B.2001) (“Fame for dilution purposes is difficult to prove.”); Everest
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`Capital, Ltd. v. Everest Funds Mgmt. LLC, 393 F.3d 755, 763 (8th Cir.2005) (“The judicial consensus is
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`that ‘famous' is a rigorous standard.”); see also 4 McCarthy, § 24:104 at 24–286, 24–293 (noting that
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`fame for dilution is “a difficult and demanding requirement” and that, although “all ‘trademarks' are
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`‘distinctive’—very few are ‘famous' ”). …. Importantly, the owner of the allegedly famous mark must
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`show that its mark became famous “prior to the filing date of the trademark application or registration
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`against which it intends to file an opposition or cancellation proceeding.” Toro, 61 U.S.P.Q.2d at 1174”.
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`(Emphasis added).
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`In Enterprises Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333, 1337 (Fed. Cir.
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`2003), the CAFC noted that the TTAB has held that “a party seeking to invoke dilution as a ground for
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`cancellation must establish that its mark became famous prior to applicant's first use of the mark.” Id. at
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`1861 (citation omitted). “Unless [Enterprise] can establish that its mark was famous prior to
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`[Advantage's] use—anywhere in the country—it cannot prevail.” Id. The Board found that “[a]s noted in
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`the Fifth Circuit's opinion, applicant has used the mark since at least as early as 1990,” making “the
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`question of whether opposer's mark has achieved fame since the earlier trial ... irrelevant.” Id. at 1860–61.
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`As with the cases above the petitioner cannot maintain the dilution claim here because the
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`petitioner cannot establish they have a famous mark nor that their alleged mark became famous before the
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`relevant effective filing date or asserted use of the registrant.
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`It is possible the petitioner will argue that the applicant has not used the mark (as argued
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`separately in the petition) and thus the petitioner could establish that the petitioner’s marks in question
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`became famous prior to the use of the subject mark by the registrant. This argument is simply a waste of
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`the Board’s time. If the registrant has not used the mark (the registrant strenuously argues that it has
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`legally used the mark since the date established in the registration as detailed below) then the registrant’s
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`mark is subject to cancelation under separate grounds and the Board need not waste time determining if
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`the petitioner has, or can ever, meet the strenuous standard of having a famous mark (which they cannot).
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`With regard to the ground of cancellation that the mark will dilute a famous mark of the
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`petitioner, the petitioner has failed to adequately state a claim upon which relief can be granted.
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`Registrant not the Rightful Owner of Mark CBD MD
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`The petitioner lists one ground of cancellation that the registrant is not the rightful owner of the
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`mark. It is well established that under section 1 of the Lanham Act, only the owner of a mark is entitled
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`to apply for registration. “[A]n application filed by one who is not the owner of the mark sought to be
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`registered is a void application.” In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690 (TTAB 1991)
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`(citing In re Techsonic Ind., Inc., 216 USPQ 619 (TTAB 1982)). Trademark Rule 2.71(d), 37 C.F.R. §
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`2.71(d) (“An application filed in the name of an entity that did not own the mark as of the filing date of
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`the application is void.”).
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`Petitioner bears the burden of that the listed owner is not the owner of the mark by a
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`preponderance of the evidence. See West Florida Seafood, Inc. v. Jet Restaurants, Inc., 31 F.3d 1122, 31
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`USPQ2d 1660, 1662 (Fed. Cir. 1994).
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`Paragraph 17 of the petition mentions ownership stating that “MM, LLC made false
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`representations to the U. S. Patent and Trademark Office (USPTO) regarding material facts when he
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`signed declarations asserting ownership of the CBD MD mark.” Paragraph 37 of the petition mentions
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`ownership stating that “MM, LLC made false representations to the U. S. Patent and Trademark Office
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`(USPTO) regarding material facts when he signed declarations asserting ownership of the CBD MD
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`mark. Similar statements are made in paragraphs 53 and 68 of the petition. However even when liberally
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`construing these allegations in a complaint, these are no more than “[t]hreadbare recitals of the elements
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`of a cause of action, supported by mere conclusory statements,” and thus completely fail to state a
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`separate claim plausible on its face.
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`With regard to the separate ground of cancellation that the registrant is not the owner of the mark
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`CBD MD, the petitioner has failed to adequately state a claim upon which relief can be granted.
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`Failure to Function as a Mark
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`The petitioner lists a separate ground of cancellation that the registrant’s mark CBD MD cannot
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`function as a mark, distinctly listed from the grounds that the mark is merely descriptive. Thus this
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`ground of cancelation is arguably distinct from the grounds that the mark is merely descriptive, and must
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`stand on its own.
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`It is well established that not every word, name, or symbol qualifies as a protectable trademark.
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`McCarthy on Trademarks § 3:3 (4th ed. 2014). A trademark is “any word, name, symbol, or device or any
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`combination thereof ... used ... to identify and distinguish [one's] goods, including a unique product, from
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`those manufactured or sold by others and to indicate the source of the goods, even if that source is
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`unknown.” 15 U.S.C. § 1127. To qualify as a trademark, the mark “must be used in a manner calculated
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`to project to purchasers or potential purchasers a single source or origin for the goods. Mere intent that a
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`term or phrase function as a trademark is not enough in and of itself.” In re Volvo Cars of North America,
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`Inc., 46 U.S.P.Q. 2d 1455, 1998 WL 239298, at *5 (T.T.A.B.1998) (citation omitted). The critical enquiry
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`in determining whether a designation functions as a mark is how the designation would be perceived by
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`the relevant public. In re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227, 1229, 2010 WL 3441109
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`(T.T.A.B.2010)).
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`“In determining what can qualify as a trademark, it is crucial that the symbol in question be so
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`distinctive that it is capable of performing the function of identifying and distinguishing the goods that
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`bear the symbol.” McCarthy § 3:1.
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`The petition makes it quite clear that the mark CBD MD can serve as a mark as the petitioner
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`repeatedly notes their use of the nearly identical mark CBDMD that they allegedly used since May 16,
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`2017. (See Paragraphs 12, 26, 45). The petitioner notes in paragraph 47 of the petition that the
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`registrants mark and the petitioners alleged marks identical in aural depiction and nearly identical in
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`visual depiction of CBDMD save for the space between CBD and MD. Thus it is abundantly clear from
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`the petition that even from the petitioner’s viewpoint (outside of the merely descriptive aspect addressed
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`separately) the registrants mark CBD MD can function as a trademark
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`With regard to the separate ground of cancellation that the registrant’s mark CBD MD cannot
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`function as a mark, as separated from the merely descriptive argument addressed below, the petitioner has
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`failed to adequately state a claim upon which relief can be granted.
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`Merely Descriptive
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`The Plaintiff’s arguments that the CBD MD mark is “merely descriptive” are believed to be set
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`forth in paragraphs 67-79 of the petition.
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`As set forth in 15 U.S.C. §1091 “(a) In addition to the principal register, the Director shall keep a
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`continuation of the register provided in paragraph (b) of section 1 of the Act of March 19, 1920, entitled
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`"An Act to give effect to certain provisions of the convention for the protection of trademarks and
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`commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20,
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`1910, and for other purposes," to be called the supplemental register. All marks capable of distinguishing
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`applicant’s goods or services and not registrable on the principal register herein provided, except those
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`declared to be unregistrable under subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title,
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`which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services
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`may be registered on the supplemental register upon the payment of the prescribed fee and compliance
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`with the provisions of subsections (a) and (e) of section 1051 of this title so far as they are
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`applicable. Nothing in this section shall prevent the registration on the supplemental register of a mark,
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`capable of distinguishing the applicant’s goods or services and not registrable on the principal register
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`under this chapter, that is declared to be unregistrable under section 1052(e)(3) of this title, if such mark
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`has been in lawful use in commerce by the owner thereof, on or in connection with any goods or services,
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`since before December 8, 1993.”
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`Certain marks that are not eligible for registration on the Principal Register, but are capable of
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`distinguishing an applicant’s goods or services, may be registered on the Supplemental Register.
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`It is well settled that a mark that is ineligible for registration on the Principal Register because it
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`is “merely descriptive” of the goods or services may be registered on the Supplemental Register. In re
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`Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (CCPA 1977) (stating that “descriptiveness alone does
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`13 | P a g e Cancellation Proceeding No. 92071109
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`12B6 Motion
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`not necessarily preclude registration on the Supplemental Register. 15 U.S.C. § 1091.”) See also In re
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`Bush Bros. & Co., 884 F.2d 569, 570 (Fed. Cir. 1989)
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`The subject registration is on the supplemental register and the arguments that the mark is merely
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`descriptive seem unavailing for cancelation of a mark on the supplemental register where it is permissible
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`for allegedly merely descriptive marks to reside.
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`It is important to note that under 15 U.S.C. §1095, registration of a mark on the Supplemental
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`Register does not constitute an admission that the mark has not acquired distinctiveness. The registrant
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`asserts that the mark CBD MD is not merely descriptive at all and is sufficiently distinctive to warrant
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`registration on the principle register. The petitioner agrees that the mark CBDMD is indistinguishable
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`from CBD MD and it is believed the petitioner asserts that CBDMD is distinctive, like CBD MD of the
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`registrant. That point appears moot as regarding this motion to dismiss. The petition to cancel a mark on
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`the supplemental register on the basis of merely descriptiveness when it is acknowledged by the plaintiff
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`that the mark could become distinctive is inappropriate.
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`With regard to the ground of cancellation that the registrant’s mark CBD MD on the
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`supplemental register because it is allegedly merely descriptive, the petitioner has failed to adequately
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`state a claim upon which relief can be granted.
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`Fraud on the United States Patent and Trademark Office
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`The petitioner lists one ground of cancellation that the registrant committed fraud on the United
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`States Patent and Trademark Office. A third party may petition to cancel a registered trademark on the
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`ground that the “registration was obtained fraudulently.” 15 U.S.C. § 1064(3). “Fraud in procuring a
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`trademark registration or renewal occurs when an applicant knowingly makes false, material
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`representations of fact in connection with his application.” Torres v. Cantine Torresella S.r.l., 808 F.2d
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`46, 48 (Fed.Cir.1986). A party seeking cancellation of a trademark registration for fraudulent
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`14 | P a g e Cancellation Proceeding No. 92071109
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`12B6 Motion
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`procurement bears a heavy burden of proof. W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 54 C.C.P.A.
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`1442, 377 F.2d 1001, 1004 (1967). Indeed, “the very nature of the charge of fraud requires that it be
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`proven ‘to the hilt’ with clear and convincing evidence. There is no room for speculation, inference or
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`surmise and, obviously, any doubt must be resolved against the charging party.” Smith Int'l, Inc. v. Olin
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`Corp., 209 USPQ 1033, 1044 (T.T.A.B.1981)
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`Mandated by the statute and case law, the Board had consistently and c