Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1056036
`05/18/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92072868
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Gecko Active Ltd
`
`ERIK M PELTON
`ERIK M PELTON & ASSOCIATES PLLC
`111 PARK AVENUE SUITE 1A
`FALLS CHURCH, VA 22046
`UNITED STATES
`uspto@tm4smallbiz.com
`703-525-8009
`
`Submission
`
`Motion for Summary Judgment
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 12/09/2020
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Erik M. Pelton
`
`uspto@tm4smallbiz.com
`
`/ErikMPelton/
`
`05/18/2020
`
`2020-05-18 MSJ Meru1.pdf(3078490 bytes )
`2020-05-18 MSJ Meru2.pdf(6266845 bytes )
`2020-05-18 MSJ Meru3.pdf(2064980 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Cancellation No. 92072868
`
`Reg. No. 5083554
`
`Mark:
`
`
`
`
`
`
`SCOTT SEPKOVIC,
` Petitioner,
`
`v.
`
`GECKO ACTIVE LTD,
` Registrant.
`
`
`
`
`
`
`
`RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ERIK M. PELTON
`ERIK M. PELTON & ASSOCIATES, PLLC
`PO Box 100637
`Arlington, Virginia 22210
`TEL: (703) 525-8009
`EMAIL: uspto@tm4smallbiz.com
`
`ATTORNEY FOR RESPONDENT
`
`
`
`
`
`
`
`
`
`Respondent’s Motion for Summary Judgment i
`
`

`

`
`
`Table of Contents
`
`Table of Contents ....................................................................................................................... ii
`
`Table of Authorities .................................................................................................................. iii
`
`I. RELEVANT FACTS ........................................................................................................5
`
`II. PROCEDURAL BACKGROUND ...................................................................................7
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`III. ARGUMENT ..................................................................................................................8
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`a. Summary Judgment Standard. .......................................................................................8
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`b. The Evidence Demonstrates that Respondent Has Not Committed Fraud in Procuring its
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`Trademark.....................................................................................................................8
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`c. The Evidence Demonstrates that Respondent Has Never Abandoned its MERU Mark. ..
`
`
`
` ................................................................................................................................... 11
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`IV. CONCLUSION ........................................................................................................... 13
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`Respondent’s Motion for Summary Judgment ii
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`

`

`Table of Authorities
`
`
`CASES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ........................................................................................................ 8
`
`
`Carter-Wallace, Inc. v. Procter & Gamble Co.,
`
`434 F.2d 794 (9th Cir. 1970) .......................................................................................... 12
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ........................................................................................................ 8
`
`
`Daniel J. Quirk, Inc. v. Village Car Co.,
`
`120 USPQ2d 1146 (TTAB 2016) ..................................................................................... 9
`
`Daniel Ryan Way and CMDW, Inc. v. Anthony R. Falwell,
`
`2011 TTAB LEXIS 150, *1 (TTAB 2011) ................................................................... 10
`
`In re Bose Corp.,
`
`91 USPQ2d 1938 (Fed. Cir. 2009) ......................................................................... 8, 9, 10
`
`King Auto., Inc. v. Speedy Muffler King, Inc.,
`212 USPQ 801 (CCPA 1981) .......................................................................................... 9
`
`
`Morehouse Mfg. Corp. v. J. Strickland & Co.,
`
`407 F.2d 881 (CCPA 1969) .......................................................................................... 11
`
`Quality Candy Shoppes/Buddy Squirrel of Wisconsin Inc. v. Grande Foods,
`
`90 USPQ2d 1389 (TTAB 2007)..................................................................................... 12
`
`Smith Int’l, Inc. v. Olin Corp.,
`
`209 USPQ 1033 (TTAB 1981) .................................................................................. 9, 10
`
`Sweats Fashions, Inc. v. Pannill Knitting Co. Inc.,
`
`4 USPQ2d 1793 (Fed. Cir. 1987) ..................................................................................... 8
`
`Symbol Techs., Inc. v. Opticon, Inc.,
`
`935 F.2d 1569 (Fed. Cir. 1991) ........................................................................................ 9
`
`W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co.,
`
`153 USPQ 749 (CCPA 1967) .......................................................................................... 8
`
`
`
`
`
`Respondent’s Motion for Summary Judgment iii
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`

`

`STATUTES
`
`37 C.F.R. § 2.127(e)(1) ............................................................................................................... 7
`
`15 U.S.C. § 1127 ....................................................................................................................... 12
`
`
`
`OTHER AUTHORITIES
`
`TBMP § 528.01................................................................................................................ 8, 13-14
`
`TBMP § 528.02........................................................................................................................... 7
`
`FED. R. CIV. P. 56(a). ................................................................................................................... 8
`
`
`
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`Respondent’s Motion for Summary Judgment iv
`
`

`

`
`
`Pursuant to Rule 56 of the Federal Rules of Civil Procedure, Respondent Gecko Active
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`Ltd (“Respondent” or “Gecko Active”) submits its Motion for Summary Judgment (“Motion”)
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`on all claims pending and requests this Board to dismiss this Cancellation Proceeding No.
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`92072868 because Petitioner’s Scott Sepkovic (“Petitioner”) Petition to Cancel (“Petition”) is
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`filled with unsupported allegations and conclusions. Respondent’s Motion demonstrates that
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`there are no genuine issues as to any material facts and support a finding that judgment must be
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`entered in favor of Respondent as a matter of law.
`
`
`
`
`I.
`
`RELEVANT FACTS
`
`On October 24, 2015, Respondent filed an intent-to-use application to register a
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`trademark for MERU with the United States Patent and Trademark Office (“USPTO”) in
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`connection with goods in International Class 18. See Declaration of Michael Deslippe
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`(hereinafter “Deslippe Decl.”), attached hereto as Exhibit A, at ¶ 3, and USPTO application
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`Serial No. 86798345. Respondent developed its MERU products in January of 2016 and began
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`selling the bags online via its Amazon marketplace. Deslippe Decl., at ¶ 3.
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`Respondent’s application Serial No. 86798345 was approved for publication in the
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`Official Gazette and was published on April 12, 2016. See Exhibit B. On September 23, 2016,
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`Respondent submitted a statement of use to the USPTO, showing use of the MERU mark in
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`connection with goods in International Class 18. See id.
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`The USPTO issued Registration No. 5.083,554 on the Principal Register on November
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`15, 2016, for MERU® in connection with goods in International Class 18 (“Respondent’s
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`Mark”). See Registration Certificate for the MERU mark, attached hereto as Exhibit C.
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`Respondent has enjoyed steady sales of MERU bags in the United States since its
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`Respondent’s Motion for Summary Judgment 5
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`

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`inception in 2016, with approximately 49,000 transactions to date. Deslippe Decl., at ¶ 4. Since
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`2016, Respondent has continuously used Respondent’s Mark in commerce in conjunction with
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`its bags. Id. at ¶ 12. For each year since 2016, Respondent has sold at least 5,000 bags under
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`Respondent’s Mark. Id. at ¶¶ 13-16. Moreover, Respondent has had no interruption of sales
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`from 2016 to present. Id. at ¶ 12.
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`Each bag that Respondent sold and continues to sell under Respondent’s Mark displays
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`the MERU mark in a contrasting font and on a high visible location to indicate the source of
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`the product. Deslippe Decl., at ¶ 5 and accompanying images of the MERU products contained
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`therein. Respondent’s bags are sold using the MERU name in the product listing, as well as
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`the product description. Id. at ¶¶ 5, 7. Respondent has sold MERU bags to consumers in the
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`United States in each year since 2016. Id. at ¶ 12. Respondent has never ceased sales of
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`MERU bags to the consumers in the United States at any point in time since 2016. See id.
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`Hundreds of consumers have reviewed Respondent’s MERU products via Amazon. Id.
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`at ¶ 6. The customer reviews of Respondent’s MERU products span back to 2016. See id.
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`Each product offered under Respondent’s Mark has been sent to customers with a branded
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`MERU hang tag attached to it. Id. at ¶ 7. Likewise, consumers purchasing Respondent’s
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`products are familiar with Respondent’s brand and understand that they are buying MERU
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`products.
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`To advertise its MERU products, Respondent has offered promotional deals on
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`Amazon from time to time. Specifically, Respondent has offered “Lightning Deals,” which
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`are run from a specified date range and offer the selected products at a discounted price.
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`Deslippe Decl., at ¶ 9. Respondent has also spent at least $9,000 on advertising campaigns on
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`Amazon for its MERU products from 2017 to present. Id. at ¶ 10.
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`Respondent’s Motion for Summary Judgment 6
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`

`

`Due to success in sales and to handle demand for its products, Respondent has
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`replenished the inventory of MERU products at Amazon’s warehouse on multiple occasions
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`from 2016 to present. Deslippe Decl., at ¶ 8. Respondent’s MERU products are currently
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`available for purchase on Respondent’s Amazon storefront at amazon.com/meru. Id. at ¶ 11.
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`Respondent’s Mark is prominently displayed in the upper left-hand corner of its Amazon
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`storefront, and the mark appears on each page that displays a MERU bag for purchase. Id.
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`
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`II.
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`PROCEDURAL BACKGROUND
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`On November 26, 2019, Petitioner filed the Petition of Gecko Active’s MERU mark. 1
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`TTABVUE. In the Petition, Petitioner alleged two claims: fraud and abandonment. 1
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`TTABVUE. On January 6, 2020, Petitioner filed a consented thirty-day extension for
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`Respondent to file its Answer. 4 TTABVUE. On January 10, 2020, Respondent’s counsel filed a
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`motion to withdrawn for the proceeding. 5 TTABVUE. The Board issued an Order on January
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`30, 2020, granting Respondent an additional “thirty days from the date of this order to appoint
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`new counsel, or to file a paper stating that Respondent chooses to represent itself.” 6 TTABVUE.
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`On February 2, 2020, Respondent appointed present counsel to represent Respondent in this
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`proceeding. 7 TTABVUE. Subsequently, the Board reset the trial dates for the proceeding,
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`indicating that Respondent’s deadline to submit its Answer is March 29, 2020. 8 TTABVUE. On
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`March 4, 2020, Respondent filed its Answer. 9 TTABVUE.
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`The discovery period in this matter recently opened on April 28, 2020. 8 TTABVUE.
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`Respondent has served initial disclosures on the Petitioner prior to the filing of this Motion. See
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`37 C.F.R. § 2.127(e)(1) (requiring the moving party to make initial disclosures prior to filing a
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`motion for summary judgment); see also TBMP § 528.02.
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`Respondent’s Motion for Summary Judgment 7
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`

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`III. ARGUMENT
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`a. Summary Judgment Standard.
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`Summary judgment is appropriate only where there are no genuine disputes of material
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`fact, therefore allowing the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). “[I]f the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party,” a factual
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`dispute is genuine and summary judgment is inappropriate. Anderson v. Liberty Lobby, Inc., 477
`
`U.S. 242, 248 (1986). Respondent, as movant, must show there is an absence of evidence to
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`support Petitioner’s case. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats
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`Fashions, Inc. v. Pannill Knitting Co. Inc., 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). Petitioner
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`must do more than simply show there is doubt as to the material facts; he must go beyond the
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`pleadings and present evidence showing there is a genuine issue of material fact for trial. Celotex
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`Corp., 477 U.S. at 324. Summary judgment procedure is available to the Trademark Trial and
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`Appeal Board when appropriate. TBMP § 528.01. Respondent submits that there is no genuine
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`issue as to any material fact concerning any of Petitioner’s claims and that dismissal of
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`Petitioner’s petition to cancel is warranted.
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`b. The Evidence Demonstrates that Respondent Has Not Committed Fraud in
`Procuring its Trademark.
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`To prove fraud, Petitioner must establish that Respondent knowingly made false, material
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`representations of fact in connection with the application to register or in connection with an
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`affidavit or declaration of continued use under Section 8. In re Bose Corp., 91 USPQ2d 1938,
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`1939 (Fed. Cir. 2009). A party seeking cancellation of a trademark registration for fraudulent
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`procurement bears a heavy burden of proof. W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co.,
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`153 USPQ 749, 750 (CCPA 1967). In fact, “the very nature of the charge of fraud requires that it
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`be proven ‘to the hilt’ with clear and convincing evidence. There is no room for speculation,
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`Respondent’s Motion for Summary Judgment 8
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`

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`inference or surmise and, obviously, any doubt must be resolved against the charging party.”
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`Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981). In the present proceeding,
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`the evidence irrefutably shows that, for each allegation of fraud, Respondent made no false
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`material misrepresentations of fact, and thus Petitioner’s claims based on fraud must be denied.
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`In the Bose decision, the Federal Circuit emphasized that proving falsity was insufficient.
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`Citing earlier precedent, the Court noted, “absent the requisite intent to mislead the PTO, even a
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`material misrepresentation would not qualify as fraud under the Lanham Act warranting
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`cancellation.” Bose, 91 USPQ2d at 1940 (citing King Auto., Inc. v. Speedy Muffler King, Inc.,
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`212 USPQ 801, 803 n.4 (CCPA 1981)). Subjective intent to deceive is an indispensable element
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`in the analysis of fraud. Consequently, fraud based on a purportedly false declaration statement
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`in an application may be even more difficult to establish given the subjective nature of these
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`statements. See Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146, 1149 (TTAB 2016)
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`(“Fraud will not lie against an applicant who holds an honest, good faith belief in its right to
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`register a mark and signs an application with the statutorily prescribed ownership statement,
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`which is phrased in terms of subjective belief.”). Consequently, “[m]ere negligence is not
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`sufficient to infer fraud or dishonesty.” Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1582
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`(Fed. Cir. 1991).
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`Petitioner contends that the registration was fraudulently procured because the statements
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`concerning use of the MERU mark were false because Respondent claimed it was using all of the
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`goods in the application. Petition to Cancel, at ¶ 2 (“Upon information and belief, Registrant’s
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`application fraudulently represented to the United States Patent & Trademark Office that it
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`was using goods that it knowingly did not use in commerce.”). Petitioner, however, is unable
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`to prove that Respondent had the subjective intent (an indispensable element of fraud) to
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`Respondent’s Motion for Summary Judgment 9
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`

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`deceive the USPTO. See Bose at 1941 (“Thus, we hold that a trademark is obtained
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`fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a
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`false, material representation with the intent to deceive the PTO.”). Here, Respondent did not
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`have the subjective intent to deceive the USPTO when it signed the declaration, attesting to
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`use of the MERU mark in commerce for the applied-for goods. Rather, Respondent had an
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`honest belief that it was using the mark in commerce upon signing the declaration. See Bose,
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`91 USPQ at 1246 (citing to Smith Int’l, 209 USPQ at 1043) (“There is no fraud if a false
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`misrepresentation is occasioned by an honest misunderstanding or inadvertence without a
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`willful intent to deceive.”). Even if Respondent’s statement was false, it does not
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`automatically imply that the statement was made with the intent to mislead the USPTO, and
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`thus Petitioner cannot satisfy the clear and convincing evidence standard required to establish
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`a fraud claim.
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`Unless Petitioner can point to evidence to support an inference of deceptive intent, it
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`has failed to satisfy the clear and convincing evidence standard. As the Federal Circuit stated
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`in Bose, there is “a material legal distinction between a ‘false’ representation and a
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`‘fraudulent’ one, the latter involving the intent to deceive, whereas the former may be
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`occasioned by a misunderstanding, an inadvertence, a mere negligent omission, or the like.”
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`91 USPQ2d at 1940. The Board has gone further to note that “[t]here is a difference between
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`the ground of nonuse and the ground of fraud; intent is a critical element of the latter but is
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`not required to prove the former.” Daniel Ryan Way and CMDW, Inc. v. Anthony R. Falwell,
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`2011 TTAB LEXIS 150, *1, *15 (TTAB 2011). Here, Respondent did not commit fraud as it
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`did not have the requisite intent to do so, and, in fact, has and continues to use the MERU
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`mark in commerce on at least some of the applied-for goods. By using the mark in commerce,
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`Respondent’s Motion for Summary Judgment 10
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`

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`Respondent fulfills the obligation to refrain from knowingly make material misrepresentations
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`as “[i]t is in the public interest to maintain registrations of technically good trademarks on the
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`register so long as they are still in use.” Morehouse Mfg. Corp. v. J. Strickland & Co., 407
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`F.2d 881, 888 (CCPA 1969). Since “practically all of the user’s substantive trademark rights
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`derive” from continued use of the mark, when a trademark is still in use, “nothing is to be
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`gained from and no public purpose is served by cancelling the registration of” the mark. Id.
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`Therefore, since Respondent did not have the subjective intent to deceive the USPTO
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`and the MERU mark is still in use with goods in Class 18, Respondent has not committed
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`fraud in procuring its trademark registration. Rather, Respondent’s registration should be
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`amended to reflect the commercial reality of the goods for which the mark is currently in use.
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`Likewise, Respondent is willing to amend its identification of goods to those for which the
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`mark is currently in use: “Backpacks; General purpose bags for carrying yoga equipment;
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`Sling Bags.”
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`c. The Evidence Demonstrates that Respondent Has Never Abandoned its
`MERU Mark.
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`
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`In Paragraph 3 of the Petition, Petitioner claims that Respondent has abandoned use of
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`the MERU mark on all of the goods in the Gecko Active Registration, with no intention to
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`resume use of the mark. See Petition to Cancel, at ¶ 3. The evidence of use submitted herewith,
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`including the Deslippe Declaration and exhibits thereto, however, demonstrates Respondent’s
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`continued use of the MERU mark in commerce in the United States for goods in Class 18, as
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`well as widespread publicity of Respondent’s MERU products. See Deslippe Decl. The
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`evidence is clear that Respondent has at no point in time abandoned Respondent’s MERU
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`mark.1
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`1 In fact, the evidence makes it clear that Petitioner’s claim is completely unfounded and frivolous.
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`Respondent’s Motion for Summary Judgment 11
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`

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`Even if Petitioner has sufficiently pled a claim for abandonment, Petitioner cannot
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`prove that Respondent has abandoned the MERU mark in the Gecko Active Registration. A
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`mark is abandoned “[w]hen its use has been discontinued with intent not to resume such use. …
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`Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” Trademark Act
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`Section 45, 15 U.S.C. § 1127. ‘“Use” of a mark means the bona fide use of such mark made in
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`the ordinary course of trade, and not made merely to reserve a right in a mark. Id.
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`Abandonment is a question of fact; therefore, any inference of abandonment must be
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`based on proven fact. Quality Candy Shoppes/Buddy Squirrel of Wisconsin Inc. v. Grande
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`Foods, 90 USPQ2d 1389, 1393 (TTAB 2007). Here, given that Respondent has clearly and
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`unequivocally demonstrated that the Gecko Active Registration has been in use in commerce
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`continuous since Respondent’s asserted date of first use, it is not possible for Petitioner to
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`establish a prima facie case of abandonment.
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`Furthermore, there is no genuine issue of material fact surrounding Respondent’s use of
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`Respondent’s MERU mark in commerce. “A mark is deemed to be in use in commerce on goods
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`when placed in any manner on the goods or their containers or the displays associated therewith,
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`or on tags or labels affixed thereto and the goods are sold in commerce.” 15 U.S.C. § 1127.
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`“Even a single instance of use is sufficient against a claim of abandonment of a mark if such use
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`is made in good faith.” Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 804 (9th
`
`Cir. 1970). Here, the evidence shows that Respondent has used and continues to use
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`Respondent’s MERU mark in the ordinary course of business. Since January 29, 2016,
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`Respondent has had continuous sales of MERU products, conducting approximately 49,000
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`transactions. Deslippe Decl., at ¶ 4.
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`Although each year the number of units sold has fluctuated, Respondent has
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`Respondent’s Motion for Summary Judgment 12
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`

`

`consistently sold at least 5,000 MERU bags each year since 2016. Id. at ¶¶ 13-16. Respondent
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`has promoted its products via “Lightning Deals” on Amazon and has had numerous
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`advertising campaigns for its MERU products. Id. at ¶¶ 9-10. Respondent has also used its
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`MERU mark on its physical products, on its Amazon storefront, and on hangtags affixed to its
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`products. Deslippe Decl., at ¶¶ 5, 7, and 11. Each MERU product has the mark sewn onto the
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`bag in a visible font and on a highly noticeable location. Id. at ¶ 5. At no point since its first
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`use has Respondent’s use of the MERU mark been interrupted. Id. at ¶ 12. Likewise,
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`Respondent’s Mark has been in use in commerce in a manner that associates the mark with
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`the goods.
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`There are simply no facts that Petitioner can allege or demonstrate that would create a
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`material issue of fact, or that would refuse the clear lack of abandonment of Respondent’s
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`MERU mark for goods in International Class 18. Despite the Petitioner’s assertions, there is
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`no genuine issue of material fact that Respondent has used Respondent’s Mark in the ordinary
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`course of business since its date of first use in January of 2016. Further, there is no genuine
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`issue of material fact surrounding Respondent’s intent not to use Respondent’s Mark in the
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`ordinary course of business. In fact, the evidence is uncontroverted that Respondent has used,
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`continues to use, and intends to use the MERU mark in the future.
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`
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`IV. CONCLUSION
`
`
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`The purpose of a motion for summary judgment is to decide the matter in the interest of
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`conserving time, unnecessary legal fees. and judicial effort. The purpose of the motion is
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`“judicial economy, that is, to avoid an unnecessary trial where there is no genuine issue of
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`material fact and more evidence than is already available in connection with the summary
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`Respondent’s Motion for Summary Judgment 13
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`

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`jugdment motion could not reasonably be expected to change the result in the case.” TBMP §
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`528.01.
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`
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`Because there are no genuine issues of material fact concerning whether Respondent acted
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`in good faith and did not commit fraud in prosecuting Respondent’s application to register
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`Respondent’s Mark, and Respondent did not have the subjective intent to deceive the USPTO,
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`Petitioner’s fraud claim should be dismissed. Respondent has also not abandoned the mark and
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`has continuously used Respondent’s Mark in commerce since the date of first use, without
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`interruption, and therefore Petitioner’s abandonment claim cannot prevail.
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`WHEREFORE, Gecko Active prays that the Trademark Trial and Appeal Board GRANT
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`Respondent’s Motion for Summary Judgment and that Petitioner’s claims be dismissed in their
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`entireties with prejudice.
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`
`
`Dated this 18th day of May, 2020.
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`
`
`Erik M. Pelton
`ERIK M. PELTON & ASSOCIATES, PLLC
`
`Attorney for Respondent
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`Respondent’s Motion for Summary Judgment 14
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and accurate copy of RESPONDENT’S MOTION FOR SUMMARY
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`JUDGEMENT has been served on the following by delivering said copy on May 18, 2020, via
`email, to counsel for Petitioner at the following address:
`
`
`Scott P. Shaw
`Call & Jensen
`sshaw@calljensen.com
`
`
`
`
`
`
`By:
` Erik M. Pelton, Esq.
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`Respondent’s Motion for Summary Judgment 15
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`SCOTT SEPKOVIC,
` Petitioner,
`
`v.
`
`GECKO ACTIVE LTD,
` Registrant.
`
`
`
`
`
`
`
`
`Cancellation No. 92072868
`
`Reg. No. 5083554
`
`Mark:
`
`
`
`
`
`
`
`RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
`
`
`
`
`
`
`
`
`
`Exhibit A
`
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`ｄｯ｣ｵｓｩｧｮ＠ｅｮｶ･ｬｯｰ･＠ｉｄＺ＠ＱＹＴＷＱＲＴＱＭｃｄＰＳＭＴＳＱａＭｂＷＲＲＭＰＶＴＵｃｆＲＵＱＳＳｅ
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`SCOTT SEPKOVIC,
` Petitioner,
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`v.
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`GECKO ACTIVE LTD,
` Registrant.
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`Cancellation No. 92072868
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`Reg. No. 5083554
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`Mark:
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`DECLARATION OF MICHAEL DESLIPPE PURSUANT TO 37 CFR 2.123(a)(1)
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`I, Michael Deslippe, owner and managing member of Gecko Active Ltd, attests, under
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`penalty of perjury, to each of the below statements. The following facts are based upon his
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`personal knowledge or are based upon information received from persons upon whom he relies
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`on in the normal course of business and/or the business records of Gecko Active Ltd. Michael
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`Deslippe, therefore, declares as follows:
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`1.
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`I am over 18 years of age, and I am fully competent to make this Declaration. The
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`information contained herein is within my personal knowledge and is true and correct.
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`2.
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`I am the Owner and Managing Member of Gecko Active Ltd (“Gecko Active”),
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`the owner of U.S. Trademark Registration 5,083,554 for the mark MERU, the subject of the
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`present cancellation proceeding (hereinafter “the Gecko Active Registration”). I have been the
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`Managing Member of Gecko Active since its formation in April of 2015 and am fully familiar
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`with the facts and circumstances set forth herein.
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`3.
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`On October 24, 2015, Gecko Active filed an intent to use trademark application
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`with the United States Patent and Trademark Office (“USPTO”) for the mark MERU. Gecko
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`ｄｯ｣ｵｓｩｧｮ＠ｅｮｶ･ｬｯｰ･＠ｉｄＺ＠ＱＹＴＷＱＲＴＱＭｃｄＰＳＭＴＳＱａＭｂＷＲＲＭＰＶＴＵｃｆＲＵＱＳＳｅ
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`Active filed a statement of use for the MERU mark on September 23, 2016, stating a first use in
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`commerce of January 29, 2016. The mark was registered by the USPTO on November 15, 2016.
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`4.
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`Gecko Active has enjoyed steady sales of MERU bags in the United States, with
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`approximately 49,000 transactions since its date of first use.
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`5.
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`Each the bags sold under the Gecko Active Registration displays the MERU mark
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`in a contrasting font and on a highly visible location. See images, below and Exhibit 1. As shown
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`below, a patch that contains the MERU mark is sewn onto the product.
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`Declaration of Michael Deslippe 2
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`ｄｯ｣ｵｓｩｧｮ＠ｅｮｶ･ｬｯｰ･＠ｉｄＺ＠ＱＹＴＷＱＲＴＱＭｃｄＰＳＭＴＳＱａＭｂＷＲＲＭＰＶＴＵｃｆＲＵＱＳＳｅ
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`6.
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`Since 2016, Gecko Active’s MERU bags have been reviewed by hundreds of
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`consumers on Amazon. See Exhibit 2 (displaying a screenshot of reviews). For example, the
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`MERU sling bag has 929 customer reviews that span from 2016 to present. See Exhibit 3.
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`7.
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`All MERU bags sold through Gecko Active’s MERU Amazon storefront have a
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`branded MERU hang tag attached to them. See Exhibit 4.
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`8.
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`From 2016 to present, Gecko Active has, on multiple occasions, replenished the
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`inventory of MERU bags at Amazon’s warehouse. See Exhibit 5.
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`9.
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`From 2017 to present, Gecko Active has offered “Lightning Deals” on its MERU
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`bags via its Amazon storefront. See Exhibit 6 (demonstrating a sample of lightning deals over the
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`years). “Lightning Deals” run from a specified date range and offer the selected products at a
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`discounted price. Each “Lightning Deal” requires a deal fee to Amazon.
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`10.
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`From 2017 to present, Gecko Active has spent at least $9,000 on advertising
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`campaigns on Amazon for its MERU bags. See Exhibit 7.
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`11. MERU bags are currently available on MERU’s Amazon storefront at
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`www.amazon.com/meru. The MERU mark is prominently displayed in the upper left-hand
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`corner of its storefront and on each separate product page where consumers can purchase Gecko
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`Active’s MERU products.
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`12.
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`Gecko Active has continuously used the MERU mark in the Gecko Active
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`Registration in connection with the sales of bags in the United States since January 29, 2016,
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`without interruption.
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`13.
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`Gecko Active sold at least 5,000 MERU bags in the United States in 2016.
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`14.
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`Gecko Active sold at least 5,000 MERU bags in the United States in 2017.
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`15.
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`Gecko Active sold at least 5,000 MERU bags in the United States in 2018.
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`Declaration of Michael Deslippe 3
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`ｄｯ｣ｵｓｩｧｮ＠ｅｮｶ･ｬｯｰ･＠ｉｄＺ＠ＱＹＴＷＱＲＴＱＭｃｄＰＳＭＴＳＱａＭｂＷＲＲＭＰＶＴＵｃｆＲＵＱＳＳｅ
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`16.
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`Gecko Active sold at least 5,000 MERU bags in the United States in 2019.
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`17.
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`To the best of Gecko Active’s knowledge, no other entity is authorized or, uses,
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`the MERU mark, in connection with bags, and the MERU mark solely identifies Gecko Active
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`as the source of the associated goods.
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`18.
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`At no time since the registration of the Gecko Active Registration with the
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`USPTO has Gecko Active had the intent to abandon the use of the MERU mark.
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`Pursuant to 28 U.S.C. Sect. 1746(2) and 37 C.F.R. Sect. 2.20, I declare under penalty of
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`perjury that the foregoing is true and correct.
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`ＵＯＱＶＯＲＰＲＰ
`Execut