Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1061743
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`Filing date:
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`06/12/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92074109
`
`Defendant
`Douglas Kohlberg French
`
`DOUGLAS KOHLBERG FRENCH
`CALLE CRESPO 213
`OAXACA, 68000
`MEXICO
`rick@airlawyer.com
`no phone number provided
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`Motion to Dismiss - Rule 12(b)
`
`Sheryl De Luca
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`nixonptomail@nixonvan.com, sld@nixonvan.com
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`/Sheryl De Luca/
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`06/12/2020
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`5120-17 Motion to Dismiss with certificate of service.pdf(181459 bytes )
`Exhibit A - 2020-04-17 French Declaration_r.pdf(2706299 bytes )
`Anderson v Kimberly-Clark Corp.pdf(499411 bytes )
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Petitioner,
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`
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`v.
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`Respondent.
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`Centruro, S.A DE C.V. ,
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`
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`Douglas Kohlberg French,
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`5120-17
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`
`
`
`
`Cancellation No. 92074109
`Reg. Nos. 3841502, 4340359, 5120883
`Marks: SCORPION MEZCAL, SCORPION
`& DESIGN and ESCORPION
`
`
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`)
`)
`)
`)
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`)
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`)
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`MOTION TO DISMISS WITH INCORPORATED BRIEF
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`Pursuant to Fed.R.Civ.P. 12(b)(6), 37 C.F.R. §2.127 and TBMP §503, Douglas
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`Kohlberg French (“Respondent”), through his undersigned attorneys, respectfully moves
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`the Trademark Trial and Appeal Board (the “Board”) for an order dismissing the Petition
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`for Cancellation of Centruro, S.A DE C.V. (“Petitioner”), for failure to state a claim upon
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`which relief can be granted.
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`Petitioner’s Petition for Cancellation follows from a baseless case that Petitioner
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`recently filed in the Eastern District of California (1:20-cv-00078-DAD-EPG, Centruro,
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`S.A.P.I. De C.V. v. French, et al. (E.D. Cal.)) (the “California Case”), which included a
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`petition to cancel the same marks at issue in this proceeding. Petitioner’s California
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`Case was procedurally and substantively deficient and was dismissed by Petitioner after
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`Respondent filed a Motion to Dismiss. The present petition is another frivolous and
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`unfounded malicious attack against Respondent now brought in this administrative body
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`ostensibly to harass Respondent. Since it too lacks a legal basis and appears designed
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`to waste Respondent’s and the Board’s resources, it should also be dismissed.
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`In the present petition, Petitioner deceptively and exclusively relies on selective
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`statements taken out of context from a declaration filed by Respondent in the California
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`Case as an alleged factual basis to support its claims. Respondent attaches hereto the
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`full declaration of Douglas Kohlberg French filed in the California Case (Doc. 11-2 of
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`April 17, 2020) as Exhibit A that shows that Petitioner’s misleading pleading of
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`selective statements from this declaration do not comprise allegations containing
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`sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its
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`face. Petitioner’s claims are also deficient for other reasons as detailed below.
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`I.
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`Factual Background
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`On May 1, 2020 Petitioner filed a petition to cancel Registration Nos. 3841502,
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`4340359 and 5120883 for the marks SCORPION MEZCAL, SCORPION & Design and
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`ESCORPION, respectively in the USPTO. On May 4, 2020, the Board instituted the
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`proceeding. Respondent’s due date to respond to the Petition is June 13, 2020.
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`Respondent has not yet filed a response to the Petition.
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`II.
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`Legal Standard
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`A motion to dismiss for failure to state a claim upon which relief may be granted
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`is a test of the legal sufficiency of the complaint. Advanced Cardiovascular Sys. Inc. v.
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`SciMed Life Sys. Inc., 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); NSM Research Corp. v.
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`Microsoft Corp., 113 USPQ2d 1029, 1032 (TTAB 2014); TBMP § 503.02 (June 2019).
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`To survive a motion to dismiss, a plaintiff must allege such facts that, if proved would
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`allow the Board to conclude, or to draw a reasonable inference, that (1) the plaintiff has
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`standing to maintain the proceeding, and (2) a valid ground exists for denying the
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`registration of the mark. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
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`(Fed. Cir. 1998); see also Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
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`USPQ 185, 187 (CCPA 1982); Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc.,
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`101 USPQ2d 1780, 1782 (TTAB 2012). Specifically, a complaint must contain
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`“sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on
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`its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (quoting Bell Atlantic Corp. v.
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`Twombly, 550 U.S. 544, 570 (2007)). A claimant must allege well-pleaded factual
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`matter and more than “[t]hreadbare recitals of the elements of a cause of action
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`supported by mere conclusory statements.” Iqbal, 556 U.S. at 678, citing Twombly, 550
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`U.S. at 555.
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`Elements of a cause of action are sufficiently alleged when the facts in the
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`complaint "show" that the plaintiff is entitled to relief. Iqbal, 556 U.S. at 679 (quoting
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`Fed. R. Civ. P. 8(a)(2)). The plaintiff must plead “factual content that allows the court to
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`draw the reasonable inference that the defendant is liable for the misconduct alleged.”
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`Iqbal, 556 U.S. at 678. Determining whether a complaint states a plausible claim for
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`relief is “a context-specific task that requires the reviewing court to draw on its judicial
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`experience and common sense.” Id. at 679. Iqbal also instructs that “[a] court
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`considering a motion to dismiss may begin by identifying allegations that, because they
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`are mere conclusions, are not entitled to the assumption of truth. While legal
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`conclusions can provide the complaint's framework, they must be supported by factual
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`allegations.” Iqbal, 556 U.S. at 664.
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`Although “[a]ll allegations of material fact are taken as true and construed in the
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`light most favorable to the nonmoving party,” a “court need not [ ] accept as true
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`allegations that contradict matters properly subject to judicial notice or by exhibit.”
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`Anderson v. Kimberly-Clark Corp., 570 F. App'x 927, 931–32 (Fed. Cir. 2014)
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`(nonprecedential)1, citing Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th
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`Cir.2001). “Nor is the court required to accept as true allegations that are merely
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`conclusory, unwarranted deductions of fact, or unreasonable inferences.” Kimberly-
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`Clark Corp, 570 F. App'x 927 at 932; see also Iqbal, 556 U.S. at 678–79. In evaluating a
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`Rule 12(b)(6) motion, a court may rely on documents outside the pleadings if they are
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`integral to the plaintiff's claims and their authenticity is not disputed. Kimberly-Clark
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`Corp, 570 F. App'x 927 at 932, citing Parrino v. FHP, Inc., 146 F.3d 699, 705–06 (9th
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`Cir.1998), superseded on other grounds as stated in Abrego Abrego v. The Dow Chem.
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`Co., 443 F.3d 676, 681 (9th Cir.2006). The Board may also rely on matters subject to
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`judicial notice. Kimberly-Clark Corp, 570 F. App'x 927 at 932, (citation omitted).
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`Dismissal of the petition is appropriate "if it is clear that no relief could be granted
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`under any set of facts that could be proved consistent with the allegations." Abbott
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`Labs. v. Brennan, 952 F.2d 1346, 1353, 21 USPQ2d 1192, 1198 (Fed.Cir.1991)
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`(citations and internal quotations omitted). See also, Dragon Bleu (SARL), 112
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`USPQ2d 1925, 1926 (TTAB 2014)(motion to dismiss applicant’s fraud, non-use and
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`abandonment counterclaims granted).
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`III.
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`Argument
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`The Petition for Cancellation fails to plead sufficient facts relevant to a statutory
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`ground to enable the Board to draw the reasonable inference that valid legal grounds
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`exist for the cancellation request lodged by Petitioner.
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`a. First Basis for Cancellation – Fraud on the U.S. Patent and
`Trademark Office (¶¶ 34-41)
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`1 Copy attached.
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`Adequate pleading of a fraud claim requires an allegation of a specific false
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`statement of material fact that respondent made in obtaining the involved registration
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`with the intent to deceive the USPTO into issuing that registration. See In re Bose
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`Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). An allegation of fraud
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`must assert the elements of fraud with particularity in accordance with Fed. R. Civ. P.
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`9(b). Under Rule 9(b), together with Fed. R. Civ. P. 11 and USPTO Rule 11.18, “the
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`pleadings [must] contain explicit rather than implied expression of the circumstances
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`constituting fraud.” Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478
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`(TTAB 2009) (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212
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`USPQ 801, 803 (CCPA 1981)). Thus, a party alleging fraud must set out facts which if
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`true, would at least support an inference of deceptive intent. In re Bose, 91 USPQ2d at
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`1942 (fraud standard at trial).
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`Pleadings of fraud made “on information and belief,” when there is no allegation
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`of “specific facts upon which the belief is reasonably based” are insufficient. Exergen
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`Corp. v. Wal-Mart Stores Inc., 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) and cases cited
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`therein (discussing when pleading on information and belief under Fed. R. Civ. P. 9(b) is
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`permitted); see also In re Bose Corp., 91 USPQ2d at 1938. Additionally, under USPTO
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`Rule 11.18(b)(2)(iii), the factual basis for a pleading requires either that the pleader
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`know of facts that support the pleading or that evidence showing the factual basis is
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`“likely” to be obtained after a reasonable opportunity for further investigation or
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`discovery. Allegations based solely on information and belief raise only the mere
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`possibility that such evidence may be uncovered and do not constitute pleading of fraud
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`with particularity. Thus, to satisfy Fed.R.Civ.P. 9(b), allegations based on “information
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`and belief” must be accompanied by a statement of facts upon which the belief is
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`founded. Asian and W. Classics B.V., 92 USPQ2d at 1479, citing Exergen Corp., 91
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`USPQ2d 656, 1670 n. 7.
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`The allegations in the Petition for Cancellation, ¶¶ 34-41 appear to relate to all
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`three of Respondent’s registrations. Petitioner’s allegations of fraud in relevant part are
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`couched as follows:
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`“Petitioner seeks to cancel the Registrations on the ground that they were
`obtained as a result of Registrant’s knowingly false statements about the
`Marks’ actual use in commerce, which were made with the intent to
`deceive the USPTO and constitute fraud on the USPTO.” (Petition, ¶ 34)
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`“Under 15 U.S.C. §1064(3), a petitioner may move at any time for the
`cancellation of a mark when the mark was obtained fraudulently or
`contrary to the provisions of 15 U.S.C. §1052.” (Petition, ¶ 35)
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`“Registrant executed a declaration under penalty of perjury on April 17,
`2020, stating that since 2004 Registrant had not made any use of the
`Marks in commerce in the United States. This declaration was made after
`filing the applications for the Marks. The declaration establishes, by
`Registrant’s own sworn statement, that he fraudulently represented to the
`USPTO that he was making use of the Marks in the United States when
`filing the applications for the Marks, and also establishes he did not have a
`bona fide intention to use the mark in commerce.” (Petition, ¶ 36);
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`“Registrant’s application for the Marks list the date of first use in
`commerce in the United States as May 26, 1999 (ESCORPION Mark),
`June 28, 2000 (Word Mark), and June 1, 2001 (Design Mark). However,
`Petitioner did not disclose that he (or a company he controls) had ceased
`use of the Marks in Commerce in the United States.” (Petition, ¶ 37).
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`“As demonstrated, Registrant had not made use of the Marks in
`commerce in the United States as of the time it filed the applications for
`registration. Nevertheless, it knowingly misrepresented to the USPTO that
`it was using the Marks as required under a 1(a) application, seeking to
`mislead the USPTO.” (Petition, ¶ 38).
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`“Registrant knowingly made false, material misrepresentations of fact in
`connection with the application, which Registrant knew were false, and
`upon which it sought to have (and to which the USPTO did) rely on in
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`issuing the Marks to Registrant. But for the false representation, the
`USPTO would not have granted the Marks.” (Petition, ¶ 39)
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`“Furthermore, Registrant knowingly made false and material
`representations of fact in connection with the filings under Sections 8, 9,
`and 15, which Registrant knew were false, and upon which it sought to
`have (and to which the USPTO did) rely on in accepting those filings, and
`not cancelling the registration of the Marks for lack of use or excusable
`non-use. But for these false representations, the USPTO would not have
`accepted the Declarations under Section 8 and would have cancelled the
`registrations of the Marks.” (Petition, ¶ 40).
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`“Because the Marks were filed and maintained with deliberate attempts to
`mislead the USPTO and consumers, the Board should cancel the
`Registrations.” (Petition, ¶ 41).
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`The Petitioner alleges earlier in the Petition:
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`“. . . according to recent judicial admissions and statements, . . . ,
`Registrant does not use the Marks or sell the products for which the Marks
`were registered in the United States and had not been using the Mark in
`the United States for many years. Registrant’s own statements establish
`that “[s]ince 2004, Scorpion Mezcal products produced by the Scorpion
`Distillery in Mexico have been exported to a third party importer, not [one
`of Registrant’s companies].” (Petition, ¶ 12);
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`“Evidence submitted with the Mark application as a Specimen fails to
`show that Registrant made use of the Mark in the United States.” (Petition,
`¶ 13)
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`“Registrant has acknowledged and admitted under oath that neither he nor
`the companies he controls import or sell SCORPION-branded mezcal in
`the United States.” (Petition, ¶ 22);
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`“Registrant acknowledges that he ‘d[oes] not manufacture Scorpion
`Mezcal or any other products in a personal capacity.’ Further, Registrant
`‘do[es] not manufacture, sell, promote, or market Scorpion Mezcal or any
`other products in California, or anywhere else in the US’ (emphasis
`added).” (Petition, ¶ 23);
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`“Indeed, Registrant has stated: ‘The only business that I conduct in a
`personal capacity in the US is the leasing of a condominium that I own in
`the state of New York.’ Registrant also acknowledges that he “do[es] not
`manufacture Scorpion Mezcal or any other products in a personal
`capacity.’” (Petition, ¶ 24)
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`“Perhaps most crucially, Registrant acknowledges that neither he nor the
`companies he controls has imported products in the United States under
`the Marks: ‘Since 2004. Scorpion Mezcal products produced by the
`Scorpion Distillery in Mexico have been exported to a third party importer,
`not “Registrant’s co-owned company] Caballeros.’ As such, Registrant
`does to sell products bearing the Marks in the United States as per his
`own admission under oath.”(Petition, ¶ 25)
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`“Upon information and belief, Petitioner alleges that Registrant knowingly
`and intentionally submitted false and fraudulent statements to the USPTO
`because Registrant was not making use of the Marks in the United States,
`nor was an entity controlled by Registrant making use of the Marks in the
`United States. As there was no basis for excusable non-use of the Marks,
`such an admission would have result in the abandonment of the Marks
`and cancellation of the Registrations if know t the USPTO.” (Petition, ¶
`29).
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`These allegations fail to sufficiently set forth a claim of fraud for a number of
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`reasons.
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`First, Petitioner’s only evidence of the supposed fraud, the excerpted statements
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`from the French Declaration in the California Case pled by Petitioner, are not material to
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`the Office’s decision to issue or maintain the Registrations. These statements do not
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`contain sufficient factual matter, accepted as true, to state a claim to relief that is
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`plausible on its face. The facts pled cannot possibly prove fraud merely because
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`Respondent did not use the mark in US commerce in his personal capacity. There is no
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`allegation that constitutes a proper pleading of Respondent’s intent to deceive the
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`Patent and Trademark Office with respect to an issue affecting registration.
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`To support a registration, the law does not require that the mark owner
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`personally use the mark. Nor does the law require that the mark be used by a company
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`that the owner controls. Instead, the mark may legitimately be used by a “related
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`company” to support a registration, where the owner controls use of the mark. Under
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`Section 45 of the Trademark Act, 15 U.S.C. §1127 a "related company" is any person
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`whose use of a mark is controlled by the owner of the mark with respect to the nature
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`and quality of the goods or services on or in connection with which the mark is used.
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`Section 5 of the Trademark Act, 15 U.S.C. §1055, provides that “where a registered
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`mark or a mark sought to be registered is or may be used legitimately by related
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`companies, such use shall inure to the benefit of the registrant or applicant for
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`registration, and such use shall not affect the validity of such mark or of its registration, .
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`. . .” This section of the Act expressly permits applicants to rely on use of the mark by
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`related companies. Ownership rights in a trademark or service mark may be acquired
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`and maintained through the use of the mark by a controlled licensee even when the only
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`use of the mark has been made, and is being made, by the licensee. Pneutek, Inc. v.
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`Scherr, 211 USPQ 824, 833 (TTAB 1981). See also, e.g., Cent. Fid. Banks, Inc. v. First
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`Bankers Corp. of Fla., 225 USPQ 438, 440 (TTAB 1984) (holding that use of the mark
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`by petitioner’s affiliated banks considered to inure to the benefit of petitioner bank
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`holding company, even though the bank holding company could not legally render
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`banking services and, thus, could not use the mark). See further TMEP 1201.03(a) (The
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`USPTO does not require an application to specify if the applied-for mark is not being
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`used by the applicant but is being used by one or more related companies whose use
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`inures to the benefit of the applicant under §5 of the Act).
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`The French Declaration of Exhibit A2 shows that Respondent, even if he is not
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`personally making use of the mark, makes use of his marks through related companies.
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`2 While a court may not normally consider matters outside the pleadings on a motion to
`dismiss, consideration may be given to matter of public record, such as the French
`Declaration. Sebastian v. United States, 185 F.3d 1368, 1374 (Fed. Cir. 1999) (finding
`district court properly considered superseded military regulations on motion to dismiss
`as regulations were matter of public record); Nike, Inc. v. Palm Beach Crossfit Inc., 116
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`Specifically it shows that Respondent licenses his mark to third parties (Caballeros, an
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`entity of which Respondent is the president; and Park Street) for use of the mark in
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`commerce. Petitioner’s allegations regarding lack of personal use by Respondent are
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`irrelevant to how Respondent’s Marks are used by related companies.
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`Significantly, the following statements in the French Declaration in the California
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`Case (Exhibit A) show that Respondent’s use of his marks is by one or more related
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`companies, rather than by personal use. See e.g.:
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`“[Respondent] formed Caballeros, Inc. (“Caballeros”) as a Nevada
`Corporation in 2003.. . . [he] then established Caballeros as a registered
`foreign corporation in Virginia in 2004, which is where Caballeros’ office is
`located. . . [he is] the President of Caballeros. [he is] also an owner of
`Caballeros, but, not the sole owner.” (French Decl., ¶ 7).
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`“Since 2004, Scorpion Mezcal products produced by the Scorpion
`Distillery in Mexico have been exported to a third party importer not to
`Caballeros. From roughly 2004 to 2014 MHW, Ltd. (“MHW”), which is
`located in New York, imported and warehoused Scorpion Mezcal in the
`US, shipped it to distributors, and collected the sales revenue from the
`distributors. In 2014, MHW’s duties were transferred to Park Street
`Imports, LLC (“Park Street”), which is located in Miami, Florida. Park
`Street has carried out the US importation, warehousing, shipping,
`invoicing, and revenue collection for Scorpion Mezcal since 2014.”
`(French Decl., ¶ 8)
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`
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`USPQ2d 1025, 1028 (TTAB 2015); see also 5B Charles A. Wright & Arthur R. Miller,
`Fed. Practice and Procedure § 1357 (3d ed. 2015) (noting, inter alia, that items subject
`to judicial notice, matters of public record, orders and items appearing in record of
`cases may be considered on motion to dismiss). See also A & D Auto Sales, Inc. v.
`United States, 748 F.3d 1142, 1147 (Fed. Cir. 2014) (While we primarily consider the
`allegations in the complaint, we may also look to “matters incorporated by reference or
`integral to the claim, items subject to judicial notice, [and] matters of public
`record.”(citation omitted); Kimberly-Clark Corp., 570 F.App’x 927 at 932 (Fed. Cir. 2014)
`(non-precedential) (photographs considered, matters outside the pleadings may be
`considered “if they are integral to the plaintiff’s claims and their authenticity is not
`disputed”).
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`“Caballeros operation includes establishing a distributor network for
`distributing Scorpion Distillery’s products to which the third party importer .
`. . can ship Scorpion Distillery’s products, buying advertising in states
`where Scorpion Distilleries products are distributed, and to collect
`proceeds from the sales of Scorpion Mezcal from the third party importer, .
`. . . Caballeros facilitates the sales of Scorpion Distillery’s products by
`finding distributors throughout the US interested in carrying Scorpion
`Distillery’s products, and connecting those distributors with the third party
`importer to establish trade channels for Scorpion Distillery’s products in
`the US. . . . Caballeros has contractual relationships [sic] Scorpion
`Distillery as its US agent for establishing distribution of the Scorpion
`Distillery’s products and with Park Street authorizing Park Street to import
`Scorpion Distillery’s products and sell the product to distributors. . . .”
`(French Decl., ¶9)
`
`“Caballeros engages in the same kinds of distributorship networking and
`advertising activities in over twenty states in the U.S. Caballeros also
`attends tradeshows on a regular basis in multiple states. . . .” (French
`Decl., ¶ 10)
`
`“Scorpion Distillery began using the ESCORPION mark on mezcal and
`exporting the ‘Escorpion Mezcal’ product to the US in 2015. . . ” (French
`Decl., ¶ 12)
`
`“My sole personal involvement in the business of making, importing, and
`selling Scorpion Mezcal and Escorpion mescal is a licensor of the
`trademarks to Scorpion Distillery, Caballeros, and Park Street.” (French
`Decl., ¶ 15) (emphasis added)
`
`“I attended the Wine & Spirits Wholesalers (WSWA) trade show, which is
`held in either Las Vegas, Nevada or Orlando, Florida. I attended the
`WSWA in 2010 and 2011 as a representative of Caballeros. . . ” (French
`Decl., ¶ 16) (emphasis added)
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`To assert its false fraud claims, Petitioner’s pleading deceptively omits French’s
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`statements showing that use of the marks at issue was made by related companies on
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`behalf of Respondent. Since Petitioner’s basis for its fraud claim was only that that
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`Respondent made statements in a declaration indicating that he was not personally
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`making use of the mark, Petitioner’s pleading cannot state a plausible case. Petitioner’s
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`assertions about Respondents’ statements are irrelevant to Respondent’s claim of use
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`in commerce, where the use is made by related companies. The fraud claim must fail
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`simply on the basis that Respondent made no false statement during the prosecution of
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`its underlying applications or maintenance of its registrations at issue.
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` A second reason Petitioner’s fraud claim is insufficiently pled is because
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`Petitioner has not supported its allegations made “on information and belief” with
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`sufficient specific factual allegations. In the Petition for Cancellation, Petitioner alleges:
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`“Upon information and belief, Petitioner alleges that Registrant
`knowingly and intentionally submitted false and fraudulent statements to
`the USPTO because Registrant was not making use of the Marks in the
`United States, nor was an entity controlled by Registrant making use of
`the Marks in the United States. As there was no basis for excusable non-
`use of the Marks, such an admission would have result in the
`abandonment of the Marks and cancellation of the Registrations if know to
`the USPTO. (Petition, ¶ 29).” (emphasis added).
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`The claims based upon information and belief fail to identify with sufficient
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`particularity the underlying bases for the allegation of fraud, including, but, not limited to
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`what material fact was falsely represented, which specific statements are false or
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`fraudulent; and the underlying basis for intent.
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`As noted above, Mr. French’s statements in his declaration in the California Case
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`statements show his use was by related companies rather than by personal use.
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`Petitioner’s allegations of Respondent’s statements in the California Case about use in
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`his personal capacity do not plead supporting facts from which the Board may
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`reasonably infer that Respondent intended to deceive the USPTO, about his use of the
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`marks by related companies to support the registrations he sought and to maintain
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`them.
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`Third, Petitioner’s fraud pleading against Registration No. 5120883 for
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`ESCORPION fails because this registration was filed with an intent-to-use filing basis3,
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`not use in commerce as Petitioner improperly repeatedly alleges in Paragraphs 4, 11,
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`12, 36 and 37 of the Petition, e.g.: “On November 25, 2015, Registrant filed an
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`application to register the ESCORPION Mark under Section 1(a) of the Trademark Act. .
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`. . (Petition, ¶ 4); “Registrant filed for the ESCORPION MARK on November 25, 2015,
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`claiming May 26, 1999 as a date of first use, and August 21, 2015 as the date of first
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`use in commerce” (Petition, ¶ 11); “In each of the Mark applications, Registrant claimed
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`it is using the Mark in commerce in the United States” (Petition, ¶ 12); (“. . . The
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`declaration establishes, by Registrant’s own sworn statement, that he fraudulently
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`represented to the USPTO that he was making use of the Marks in the United States
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`when filing the applications for the Marks. . .” (Petition, ¶ 36); and Registrant’s
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`application for the Marks lists the date of first use in commerce in the United States as
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`of May 26, 1999 (ESCORPION Mark). . .” (Petition, ¶ 36).
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`Since Board can take judicial notice that the application that issued as
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`Registration No. 5120883 was based on an intent to use the mark under Section 1(b).
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`Petitioner’s claim of fraud against that registration is not well pled.
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`Finally to the extent Petitioner is attempting to assert a claim of fraud based on
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`the insufficiency of Respondent’s specimens (see Petition, ¶ 13: “Evidence submitted
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`with the Mark application as a Specimen fails to show that Registrant made use of the
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`3 The Board may consider certain objective, verifiable facts available from Office records
`under a motion to dismiss, such as the filing date, filing basis, priority date, publication
`date and Applicant’s name in an application that is the subject of an opposition
`proceeding. See Compagnie Gervais Danone v. Precision Forumulations LLC, 89
`USPQ2d 1251, 1256 (TTAB 2009).
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`Mark in the United States”), the allegation is conclusory, providing no support or
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`specificity as to which mark or specimen it refers to or the reason why the same does
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`not show use. Thus, it should not be accepted as true. Moreover, that is an ex parte
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`examination issue and not a proper basis for a claim of fraud. See Century 21 Real
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`Estate Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (The
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`question of the acceptability of specimens is solely an ex parte examination issue and
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`does not constitute a valid ground for cancellation).
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`For all the above reasons, the Fraud basis for cancellation of Registration Nos.
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`3841502, 4340359 and 5120883 must fail.
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`b. Second Basis for Cancellation – Abandonment (¶¶ 42-48)
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`Petitioner’s abandonment contentions are premised on the same false and
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`
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`deficient allegations as its fraud claims. For its abandonment claims, Petitioner alleges:
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`“Petitioner hereby repeats and realleges the allegations of the proceeding
`paragraphs as if set forth fully herein.” (Petition, ¶ 42)
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`“A mark shall be deemed to be ‘abandoned’ if its use has been
`discontinued with intent not to resume such use. 15 U.S.C. §1127. Intent
`not to resume may be inferred from circumstances. Id. “Use” of a mark
`means the bona fide use of such mark made in the ordinary course of
`trade, and not made merely to reserve a right in the mark. Id. (Petition, ¶
`43)
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`“The courts have established that abandonment occurs when there is: ‘(1)
`discontinuous of trademark use and (2) intent not to resume such use.’
`Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 935
`(9th Cir. 2006)” (Petition, ¶ 44).
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`“Nonuse of a mark for three consecutive years shall be prima facie
`evidence of abandonment. 15 U.S.C. ¶1127.” (Petition, ¶ 45).
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`“Upon information and belief and Registrant’s recent declaration, the
`Marks have been prima facie abandoned by Registrant.” (Petition, ¶ 46).
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`“As provided in the French Declaration, Registrant has failed to use the
`Marks for more than three years, with no intent to resume. Further,
`Registrant has acquiesced to Petitioner’s use of the ALACRAN mark.”
`(Petition, ¶ 47).
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`“If there was any valid, non-fraudulent registration of the Marks, Registrant
`has nevertheless abandoned them and the Registrations should be
`cancelled.” (Petition, ¶ 48).
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`Petitioner has failed to allege facts to support an abandonment claim under
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`Trademark Act Section 45, 15 U.S.C. § 1127. In order to allege a prima facie case of
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`abandonment, a plaintiff must plead at least three consecutive years of discontinued
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`use or must facts that show a period of non-use less than three years with an intent not
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`to resume use. See Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14
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`USPQ2d 1390 (Fed. Cir. 1990). In the present case, Petitioner’s allegation of
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`abandonment is conclusory and unsupported by factual allegations regarding a period
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`of nonuse of at least three years or nonuse for less than three years with the intent not
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`to resume use. Petitioner’s allegations do not provide sufficient notice as to what years
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`they allege Respondent has not used the Marks at issue. Here, Petitioner did not recite
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`facts which, if proven, would establish at least three consecutive years of nonuse, or
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`alternatively, a period of nonuse less than three years coupled with proof of intent not to
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`resume use. Id.
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`Further, and more significantly, to the extent the claim relies on assertions in the
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`French Declaration in the California Case that Respondent personally did not use the
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`marks in commerce, the claim must fail. As detailed above, the statements in the
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`French Declaration show that Respondent’s use of his marks are by one or more
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`related companies, rather than by personal use. If, as alleged here by Petitioner that
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`Respondent did not personally use the marks, then Petitioner's allegations, even if true,
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`would not establish that Respondent did not use the marks at issue in commerce.
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`Accordingly, these allegations do not raise a claim of entitlement to relief.
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`There are no specific allegations of conduct by Respondent that, if proved, would
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`allow Petitioner to prevail on its claim. Instead, the allegations are either unclear, non-
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`specific, irrelevant to a