throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1036192
`
`Filing date:
`
`02/14/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92071109
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Majik Medecine, LLC
`
`BLYNN L SHIDELER
`3500 BROOKTREE ROAD, SUITE 200
`WEXFORD, PA 15090
`UNITED STATES
`Blynn@BLKLawGroup.com
`724-934-5450
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Papers
`
`Blynn Shideler
`
`Blynn@BLKLawGroup.com
`
`/Blynn L. Shideler/
`
`02/14/2020
`
`Attachments
`
`Motion under rule 12E.pdf(60151 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`CBDMD, LLC
`
`Plaintiff/Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation Proceeding # 92071109
`
`Registration # 5173264
`
`-v-
`
`Majik Medecine, LLC,
`
`Defendant/ Registrant
`
`
`
`Motion and Brief under Fed. R. Civ. P. Rule 12(e)
`
`Background
`
`This action remains a blatant attempt of a multimillion dollar corporation to usurp
`
`the legitimate trademark rights of a smaller competitor with prior trademark rights. The
`
`registrant in this action is a small herbal company called Majik Medicine, LLC (Majik
`
`Medicine). Majik Medicine co-founder Christy Peachy is the driving force of the
`
`registrant who, together with her former step mother co-founder Brenda M. Craft, owns
`
`a controlling interest in the registrant. Ms. Peachy began investigating the beneficial
`
`effects of CBD as a natural anti-inflammatory in 2015 after personally experiencing the
`
`benefits of taking CBD. Ms. Peachy, through Majik Medicine, developed a line of
`
`products incorporating the benefits of CBD and worked on finding a suitable brand
`
`name, eventually settling on the subject mark CBD MD. Ms. Peachy filed the
`
`application for the subject mark on behalf of Majik Medicine and Majik Medicine began
`
`selling the product line through medical practitioners in February 2016, long before the
`
`1 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`Petitioner used the mark in 2017. Majik Medicine has continuously used the mark since
`
`the introduction in the beginning of 2016.
`
`Upon learning of the petitioner’s entry into the market with substantially the same
`
`goods and substantially the same mark, Majik Medicine advised the petitioner of the
`
`subject registration and mark, and advised the petitioner to avoid the use of Majik
`
`Medicine’s mark and to respect Majik Medicine’s rights. When the petitioner was
`
`unable to secure a co-existence agreement, mainly because the onerous proposed
`
`agreement from the petitioner refused to respect the trademark rights of Majik Medicine
`
`in the subject mark, then the petitioner proceeded with this more nefarious approach of
`
`blatant theft.
`
`The petitioner/plaintiff filed the petition or original complaint in this matter on April
`
`16, 2019 containing nine (9) stated grounds of cancellation.
`
`The defendants alleged in a rule 12(b)(6) motion filed that the original complaint
`
`fails to contain sufficient factual matter, even if accepted as true, which states a claim to
`
`relief that is plausible on its face.
`
`On December 30, 2019 the TTAB granted the motion to dismiss with regard to
`
`seven of the nine stated grounds for cancellation and denied the Defendant’s motion
`
`with regard to two grounds of cancellation.
`
`The TTAB noted that “Nevertheless, in view of the Board’s liberal policy in
`
`allowing amendment of pleadings, Petitioner is allowed until TWENTY DAYS from the
`
`mailing of this order to file and serve an amended pleading for cancellation”.
`
`2 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`With a weekend and Martin Luther King Day observance the time for an
`
`amended pleading was due January 21, 2020.
`
`The Petitioner filed an amended petition on January 21, 2020.
`
`The undersigned contacted counsel for petitioner and suggested that the filing of
`
`January 21, 2020 failed to comply with much of the Board’s order with regard to at least
`
`the second grounds of the petition. It was requested that the Petitioner’s counsel review
`
`the filing and advise if he disagreed or wished to take corrective action.
`
`The petitioner filed a “Corrected” amended petition on January 22, 2020. It is not
`
`clear to the undersigned that the “corrected” amended petition actually corrects all of the
`
`deficiencies of the amended petition, however it is unclear as to which petition the
`
`registrant must direct a responsive pleading.
`
`ARGUMENTS
`
`Amendment to pleadings “as a matter of course” are not available to either the
`
`amended or corrected amended pleading under Fed. R. Civ. P. 15(a)(1). Further
`
`amendments to pleadings may only be filed with the opposing party’s written consent or
`
`with the court’s leave. Fed. R. Civ. P. 15(a)(2). In general, an amendment to a complaint
`
`that cannot be made as of right and that is filed and served without obtaining leave of
`
`court is a legal nullity. Hoover v. Blue Cross & Blue Shield of Ala., 855 F.2d 1538, 1544
`
`(11th Cir. 1988); 6 Fed. Prac. & Proc. Civ. § 1484 (3d ed. 2015 Westlaw).
`
`The TMEP § 503.03 provides similar guidance explaining that a plaintiff may
`
`amend its complaint within 21 days after service of a motion under Fed. R. Civ. P.
`
`3 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`12(b)(6) or with the written consent of every adverse party, or by leave of the Board,
`
`which is freely given when justice so requires. See Fed. R. Civ. P. 15(a); see,
`
`e.g., Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1521 (TTAB
`
`2013). Thus, plaintiffs to proceedings before the Board ordinarily can, and often do,
`
`respond to a motion to dismiss by filing, inter alia, an amended complaint.
`
`If a timely amended complaint is submitted, the original motion to dismiss
`
`normally will be moot. Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1926
`
`(TTAB 2014) (finding first motion to dismiss moot in view of filing of amended pleading;
`
`considering amended pleading filed in response to second motion to dismiss); Fair
`
`Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1537 (TTAB 2007) (considering
`
`amended pleading, filed in response to motion to dismiss, in connection with the motion
`
`to dismiss).
`
`As happened to the original complaint here, even if no amended complaint is
`
`submitted in response to a motion to dismiss for failure to state a claim upon which relief
`
`can be granted, and the Board finds, upon determination of the motion, that the
`
`complaint fails to state a claim upon which relief can be granted, the Board generally will
`
`allow the plaintiff an opportunity to file an amended pleading. Wise F&I, LLC, et al. v.
`
`Allstate Insurance Co., 120 USPQ2d 1103, 1110 (TTAB 2016) (allowed time to cure
`
`defective pleading); Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203,
`
`1208 (TTAB 1997) (allowed time to perfect fraud claim); Miller Brewing Co. v. Anheuser-
`
`Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993) ("the Board freely grants leave to
`
`amend pleadings found, upon challenge under Fed. R. Civ. P. 12(b)(6), to be
`
`insufficient, particularly where challenged pleading is the initial pleading"); Intersat Corp.
`
`4 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB
`
`1985) (allowed time to file an amended opposition setting forth a statutory ground).
`
`In the present case the court gave leave to file an amended complaint by,
`
`effectively, January 21, 2020, which the Plaintiff actually did file the amended complaint
`
`on January 21, 2020. It seems clear that further amendments required leave of court or
`
`written consent of the Defendant. Even though leave of court is liberally given, that
`
`does not suggest the step can be skipped.
`
`If written consent of the Defendants was requested for filing the corrected
`
`amended complaint the Defendant would have requested that the parties addressed the
`
`other concerns touched on below and the timing of the responsive pleading issues
`
`before granting such consent in this filing.
`
`Regarding leave to amend it is noted that, although leave is liberally granted,
`
`where justice does not require that leave to amend be given, the Board, in its discretion,
`
`may refuse to allow an opportunity, or a further opportunity, for amendment. See Pure
`
`Gold, Inc. v. Syntex (U.S.A.) Inc., 221 USPQ 151, 154 (TTAB 1983) ("Although it is the
`
`general practice of the Board to allow a party an opportunity to correct a defective
`
`pleading, in the instant case leave to amend the pleading would serve no useful
`
`purpose"), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).; Sun Hee Jung v. Magic
`
`Snow, LLC, 124 USPQ2d 1041, 1044 (TTAB 2017) (Board did not grant leave to
`
`replead opposer’s Trademark Act § 2(d) claim due to futility where opposer twice failed
`
`to plead prior use); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929 n.10
`
`(TTAB 2014) (Board did not grant leave to replead fraud claim due to futility and lack of
`
`5 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`plausibility based on recited facts); Bayer Consumer Care AG v. Belmora LLC, 90
`
`USPQ2d 1587, 1590-91 (TTAB 2009) (because petitioner twice failed to properly allege
`
`prior use, petitioner’s Trademark Act § 2(d) claim was dismissed with prejudice); Institut
`
`National des Appellations d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896
`
`(TTAB 1998) (amendment would be futile because opposers cannot prevail on claim as
`
`a matter of law); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48
`
`(TTAB 1985) (plaintiff had already been allowed two opportunities to perfect its
`
`pleading, therefore, the Board did not find that it was in the interests of justice to grant
`
`plaintiff an additional opportunity to amend the complaint); Pure Gold, Inc. v. Syntex
`
`(U.S.A.) Inc., 221 USPQ 151, 154 (TTAB 1983) (amendment would serve no useful
`
`purpose), aff’d, 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). Cf. Trek Bicycle Corp. v.
`
`StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (where proposed pleading of
`
`dilution was legally insufficient, leave to re-plead not allowed in view of delay in moving
`
`to amend); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 5
`
`USPQ2d 1067, 1069 (TTAB 1987) (motion to amend to add claim or defense which is
`
`legally insufficient will be denied); American Hygienic Labs, Inc. v. Tiffany & Co., 228
`
`USPQ 855, 859 (TTAB 1986) (would serve no useful purpose).
`
`In this case the late filing of the corrected amended complaint without leave of
`
`court nor written permission of Defendant is believed to be a nullity. If the Plaintiff
`
`desires to use the essence of the corrected amended complaint it is suggested that
`
`refiling of a third amended complaint in response to this filing is permitted by the rules
`
`and would allow the Defendant and the court to know what exact pleadings must be
`
`responded to in this case.
`
`6 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`It is recognized and admitted by the undersigned that in this circumstance some
`
`courts have suggested that a better practice would have been for Defendants to move
`
`to strike the late/unauthorized amended pleading, however this motion is believed to
`
`allow for easier corrective action and clarification of this matter by the Plaintiff or Court
`
`in a faster easier fashion.
`
`Further the order on the rule 12(b)(6) motion dismissed WITH PREJUDICE the
`
`alleged basis of cancellation that the CBD mark was merely descriptive (#2 page 5-6) or
`
`deceptively mis-descriptive (#3 page 6). The order dismissed the alleged basis of
`
`cancellation that applicant had no Bona Fide Use in Commerce based upon alleged
`
`Louisiana law (#4 Page 6-7). The order dismissed the alleged basis of cancellation
`
`based upon alleged fraudulent procurement of the registration (#8 Page 9-12)
`
`Despite the dismissal of the above grounds, the alleged corrected amended
`
`complaint maintains arguments relating to alleged illegality under Louisiana law in
`
`paragraph 38 to support the cancellation, alleged fraudulent procurement of the
`
`registration in paragraphs 51 and 54, and 59-60, that the mark is “merely descriptive or
`
`deceptively mis-descriptive in paragraph 57, and 64-65.
`
`In addition to clarifying which amendment complaint or corrected amended
`
`complaint remains in this case and should be responded to, the Defendants request
`
`clarification if these dismissed grounds are being reasserted by the Plaintiff in spite of
`
`the dismissal. If they are being reasserted then the new facts supporting such grounds
`
`should be highlighted for the Defendants and the court.
`
`REQUEST:
`
`7 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`The Board is requested to grant this motion and require timely and authorized
`
`refiling of a third amended complaint that fully complies with the Board’s prior order.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted:
`
`___/Blynn L. Shideler/__
`
`Blynn L. Shideler
`
`Attorney for the Applicants
`
`Registration No. 35,034
`
`3500 Brooktree Road Suite 200
`
`Wexford Pa 15090
`
`Blynn@BLKLawGroup.com
`
`Telephone: (724) 934-5450
`
`Facsimile: (724) 934-5461
`
`
`
`
`
`
`
`
`
`
`
`
`
`8 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`CBDMD,LLC
`
`Plaintiff/Petitioner
`
`-v-
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation Proceeding # 92071109
`
`Registration # 5173264
`
`Majik Medecine, LLC,
`
`Registrant.
`
`
`
`Certificate of Service
`
`I, Blynn L. Shideler, hereby certify that on the 14th day of February, 2020, a true and
`
`correct copy of the foregoing Motion and Brief under Fed. R. Civ. P. Rule 12(e)filed
`
`with consent of the parties was served upon Counsel for the Plaintiff/Petitioner, by E-
`
`mail addressed as follows:
`
`BLAKE E VANDE GARDE
`
`ERICKSON KERNELL IP
`
`8900 STATE LINE ROAD, SUITE 500
`
`LEAWOOD, KS 66206
`
`UNITED STATES
`
`ekdkdocket@kcpatentlaw.com, bvg@kcpatentlaw.com,
`
`9 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

`

`debbied@kcpatentlaw.com
`
`Phone: 913-549-4700
`
`Respectfully Submitted:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`___/Blynn L. Shideler/__
`
`Blynn L. Shideler
`
`Attorney for the Applicants
`
`Registration No. 35,034
`
`3500 Brooktree Road Suite 200
`
`Wexford Pa 15090
`
`Blynn@BLKLawGroup.com
`
`Telephone: (724) 934-5450
`
`Facsimile: (724) 934-5461
`
`10 | P a g e Cancellation Proceeding No. 92071109
`
`
`12E Motion
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket