Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1184219
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`Filing date:
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`01/12/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92074422
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`Party
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`Correspondence
`address
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`Defendant
`Safiery Pty Ltd
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`JOSEPH MCGUINNESS
`MCGUINNESS & ASSOCIATES
`3858 CARSON STREET
`SUITE 301
`TORRANCE, CA 90503
`UNITED STATES
`Primary email: jeff@mcguinnesslawgroup.com
`310-792-0495
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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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`Opposition/Response to Motion
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`Joseph McGuinness
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`jeff@mcguinnesslawgroup.com
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`/Joseph G. McGuinness/
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`01/12/2022
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`Attachments
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`Respondent Opposition to Motion for Summary Judgment.pdf(553222 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Kimberley Kampers IP Pty Ltd,
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`Registrant/Respondent.
`____________________________________)
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`Cancellation No.: 92074422
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`In re Registration No.: 5584926
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`Mark: KIMBERLEY KAMPERS
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`Registered: July 31, 2018
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`Petitioner,
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`v.
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`Safiery Pty Ltd,
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`OPPOSITION TO MOTION FOR SUMMARY JUDGMENT
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`I. INTRODUCTION
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`To prevail on summary judgment, Petitioner Kimberley Kampers IP Pty Ltd has the
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`burden to provide admissible evidence that: (1) it has standing to pursue this action; (2) that it is
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`the rightful owner of the trademark at issue in this matter; and (3) that Respondent Safiery Pty
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`Ltd. intended to abandon the use of the trademark. Petitioner does not meet its burden on any of
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`these issues. Not only should Petitioner’s motion be denied, on the record created by Petitioner,
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`summary judgment should be granted to Respondent.
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`Petitioner has not provided any admissible evidence whatsoever to support its position
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`that it is entitled to summary judgment. Indeed, Petitioner is well-aware of the facts which it
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`asserts to be undisputed are, indeed, contested. Moreover, those facts are irrelevant.
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`The relevant and undisputed facts establish that Respondent is the proper owner of the
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`Kimberly Kampers trademark (number 5584926, the “Trademark”) 1 that is the subject of this
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`proceeding. The rights to the United States use of the name Kimberly Kampers or the
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`Trademark was never held by any entity that transacted business with Petitioner.
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`1 Attached to the Declaration of Bruce Loxton as Exhibit K is a timeline that demonstrates the chain of ownership of
`the rights underlying the Trademark and the Trademark.
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`Page 1
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`Since the rights to use the Kimberly Kampers name and Trademark were never
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`transferred to Petitioner, Petitioner lacks standing to assert its claim.
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`Petitioner asserts that it purchased the rights to the Trademark, and rights to other
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`Kimberley Kampers intellectual property (collectively, the “Intellectual Property”), in the United
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`States. As discussed, it did not. In fact, the document Petitioner contends transferred these
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`rights to Petitioner, expressly excluded the United States Intellectual Property rights. In is
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`extremely important to note that nowhere in its papers does Petitioner provide the source of its
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`claim of ownership to the Trademark. Petitioner does so because it knows it never purchased
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`rights to any of the Kimberley Kampers intellectual property in the United States.
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`Rather, the rights to the trademark remained with the predecessor entity, which in turn
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`transferred those rights to Respondent Safiery Pty Ltd.
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`Moreover, Petitioner has absolutely no evidence that Respondent has abandoned its use
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`of the Trademark or the Intellectual Property. Indeed, Petitioner’s explanation for why it has not
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`attempted to use the Trademark is the exact same explanation for why Respondent has not – it is
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`futile while this litigation is ongoing. While this trademark dispute is pending, there is no clean
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`way to use the Trademark. Respondent has stated it is developing a product that will be
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`manufactured in China and sold in the United States under the Kimberley Kampers name. It
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`cannot sell while the Trademark is in dispute. Regardless, the evidence of this intention – which
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`Petitioner cannot refute – is sufficient to defeat summary judgment.
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`Not only should Petitioner’s motion be denied, but based on the undisputed facts,
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`pursuant to Trademark Trial and Appeal Board Manual of Procedure section 528.08(1), summary
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`judgment should be granted in favor of Respondent. Petitioner’s own papers demonstrate that it
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`cannot provide a viable claim to own the Trademark or demonstrate abandonment.
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`Page 2
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`II. PRELIMINARY STATEMENT
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`Petitioner makes disparaging accusations against the character of Respondent’s principle
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`based solely on an assertion of trademark rights Respondent has formally established with the
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`U.S. Trademark Office dating back to 2004. Petitioner’s assertions and entire summary
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`judgment argument emanates from its argument that it became the “true owner” of this
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`trademark through a purchase agreement (“Agreement”). This cornerstone Agreement, however,
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`is never quoted by Petitioner. Indeed, this Agreement is noticeably absent from the evidence
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`Petitioner presented for the board to consider.
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`Indubitably, this Agreement makes apparent specifically what itemized trademark rights
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`Petitioner indeed purchased and, by exclusion, what trademark right was never purchased. The
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`very value of a written agreement is to memorialize such a detail to avoid conflict, or in this case,
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`to serve as evidence of accurate facts. Petitioner’s Agreement speaks to say, -- Petitioner never
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`purchased the trademark rights at issue, which plainly remain the property of Respondent.
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`Next, Petitioner makes sweeping self-serving statements lacking in evidence and reality.
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`Petitioner argues that a U.S. trademark was unknown to its predecessor in interest. Ostensibly,
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`this sophistry is to be a foundational explanation to the board as to why Petitioner never
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`purchased this trademark right, or any general rights to all trademarks owned by the entity it
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`acquired in the itemized purchase Agreement. Such a general term is standard, if actually
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`intended. In sum, Petitioner explains: -- I would have, or I should have, purchased these
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`trademark rights.
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`The accurate facts are, however, that Petitioner’s predecessor was absolutely aware of the
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`trademark rights at issue. These rights were originally obtained by said predecessor, and
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`specifically Mr. Loxton, in 2004, long before Petitioner or its predecessor conceived of the
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`Page 3
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`Agreement. To state that such trademark rights were a “scheme” conceived by Loxton for
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`dubious 2017 reasons, is belied by this registration history, which illuminates the actual facts.
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`Many sale transactions by the predecessor in the U.S. have actually and factually occurred.
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`III. EVIDENTIARY OBJECTIONS
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`Pursuant to Trademark Trial and Appeal Board Manual of Procedure section 528.05(a)(1)
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`(and Note 10 thereto), Respondent objects to the following evidence and evidentiary statements
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`in Petitioner’s Motion.
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`1.
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`Declaration of James Cockburn, ¶3: “Attached as Exhibit A is a true and correct
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`copy of a notification letter sent by Kimberley Kampers Pte Ltd on January 4, 2019, to
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`Kimberley (USA) LLC concerning Kimberley Kampers IP Pty Ltd's acquisition of trademarks
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`licensed to Kimberley (USA) LLC.”
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`Objections: This statement lacks foundation. There is no evidence presented that Mr. Cockburn
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`had any position with either Kimberley Kampers Pte Ltd or Kimberley (USA) LLC, the parties
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`to the communication. Mr. Cockburn lacks any personal knowledge or foundational bases to
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`authenticate the referenced document, let alone provide any evidence to support an exception to
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`the hearsay rule.
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`2.
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`Exhibit A to James Cockburn Declaration.
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`Objections: This document purports to be a letter between two non-parties to this action. The
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`document has not been authenticated in any way, and it, therefore, lacks foundation. Further, the
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`document is hearsay. Finally, the document lacks relevance because : (1) Kimberley Kampers
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`Pte is not a party to this proceeding; (2) there is no showing made that the rights transferred by
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`Kimberley Kampers Pte are rights that in any way affect this litigation. Kimberley Kampers Pte
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`never owned the rights to the Trademark or to use the Kimberely Kampers tradename in the U.S.
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`Page 4
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`3.
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`Declaration of James Cockburn, ¶4: “Attached as Exhibit B is a true and correct
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`copy of the Product License & Distribution Agreement which was referred to in the January 4,
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`2019, notification letter attached as ‘Exhibit A’ hereto.”
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`Objections: This statement lacks foundation. There is no evidence presented that Mr. Cockburn
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`had any position with either Kimberley Kampers Pte Ltd or Kimberley (USA) LLC, the parties
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`to the purported contract. Mr. Cockburn cannot authenticate the referenced document, let alone
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`provide any evidence to support an exception to the hearsay rule.
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`4.
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`Exhibit B to James Cockburn Declaration.
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`Objections: This document purports to be a contract between two non-parties to this action. The
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`document has not been authenticated in any way, and it, therefore, lacks foundation. Further, the
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`document is hearsay. Finally, the document lacks relevance because: (1) Kimberley Kampers
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`Pte is not a party to this proceeding; (2) there is no showing made that the rights transferred by
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`Kimberley Kampers Pte are rights that in any way affect this litigation. Kimberley Kampers Pte
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`never owned the rights to the Trademark or to use the Kimberely Kampers tradename in the U.S.
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`Even if this agreement were somehow admissible, it does not relate in any way to the Trademark
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`at issue in this case, or the rights in dispute in this matter.
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`5.
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`Exhibit C to James Cockburn Declaration.
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`Objections: The email from Mr. Cannock is hearsay, as are the attachments to the email.
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`Petitioner is offering these documents for the truth of the statements made therein. The
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`attachments have not been authenticated in any way. Finally, the document lacks relevance, as
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`Petitioner has not provided any competent evidence that the “IP rights” described in the
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`purported contract in any way relates to the Trademark at issue in this case, or intellectual
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`property at issue in this action.
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`Page 5
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`IV. FACTUAL BACKGROUND
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`A. General Background
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`On November 23, 2017, Kimberley Group Pty Ltd assigned the rights to certain
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`trademarks to Kimberley Kampers Pte Ltd. (Loxton Dec., ¶6; Exhibit D.) The United States
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`trademark rights, the Trademark and the Intellectual Property, were explicitly not part of that
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`transaction. (Loxton Dec., ¶6; Exhibit D.) The specific trademarks assigned are enumerated in
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`the agreement. (Exhibit D.)
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`On December 6, 2017, an agreement was reached between Todd Cannock, then the sole
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`director and officer of Kimberley Kampers Pty Ltd (ACN 134 825 639) and Bruce Loxton as
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`sole director and officer of Kimberley Kampers (Aust) Pty Ltd (ACN 089 659 370) (the “2017
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`Agreement”). (Loxton Dec., ¶7; Exhibit E.) Todd Cannock executed this agreement in Bruce
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`Loxton’s presence. (Loxton Dec., ¶7.) The 2017 Agreement expressly stated that the right to the
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`Kimberley Kampers United States trademarks and intellectual property would remain in Bruce
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`Loxton's entity Kimberley Kampers (Aust) Pty Ltd. (Loxton Dec., ¶7; Exhibit E.)
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`Todd Cannock agreed that his controlled entities would not pay for the legal costs of
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`current or future registration of United States trademarks. (Loxton Dec., ¶8.) Consequently, all
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`responsibility for the cost for maintaining the Trademark were assigned to Mr. Loxton’s
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`company, along with the trademark rights, consistent with an authentic ownership of these rights.
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`Mr. Loxton acted to pay the expenses and undertook all efforts necessary to continue the
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`Trademark. (Loxton Dec., ¶8.) In essence, this assignment was not only an assignment of rights,
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`but an assignment of burdens, which were undertaken by Mr. Loxton in furtherance of valid
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`trademark ownership.
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`Page 6
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`On December 16, 2017, Kimberley Kampers (Aust) Pty Ltd transferred ownership of the
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`United State Intellectual Property to Changyi Hou, the principal of Respondent. (Loxton Dec.,
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`¶9.) Bruce Loxton was the sole director at the time, and executed this agreement on behalf of
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`Kimberley Kampers (Aust) Pty. Ultimately, the ownership of the trademark was transferred to
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`Respondent. (Loxton Dec., ¶9; Exhibit F.)
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`Almost a year later, on or about December 4, 2018, Mr. Cannock sold the rights to other
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`Kimberley Kampers intellectual property (largely, the Australian rights) that Kimberley Kampers
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`Pte Ltd. retained, to the Petitioner. (Exhibit L, Agreement – filed under seal.) Again, at no time
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`did Kimberley Kampers Pte Ltd. ever obtain the rights to the Trademark or Kimberley Kampers
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`intellectual property in the United States – indeed, Kimberley Kampers Pte Ltd. expressly
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`disclaimed those rights because it did not want to bear the cost of maintaining the registration.
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`The transferred rights, which were enumerated in the Agreement, did not include any of
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`the United States Intellectual Property, and did not include the Trademark at issue in this
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`proceeding. (Exhibit L, Agreement – filed under seal.) “Schedule 2, Addendum to Purchase of
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`IP Contract – Items Included in Sale” sets forth the specific intellectual property rights that are
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`being sold. (Exhibit L, Bates Pages KKIP_32 - KKIP_33.) This schedule does not identify a
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`single item of United States Intellectual Property, including the Trademark, that is being
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`transferred. (Exhibit L, Bates Pages KKIP_32 - KKIP_33.)
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`Petitioner simply cannot establish that it ever had any claim whatsoever to the
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`Trademark. The Agreement is the sole basis that Petitioner has proffered in discovery for its
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`rights – yet Petitioner does not even attempt to use this Agreement in its summary judgment
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`motion. Petitioner, thereby, acknowledges that it has no ownership interest in the Trademark or
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`the Intellectual Property in the United States. Thus, Petitioner lacks standing to bring this action.
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`Page 7
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`Indeed, in March 2020, Petitioner acknowledged Respondent’s ownership of the United
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`States rights to the United States trademarks (including the Trademark) and offered to purchase
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`them from Respondent. (Loxton Dec., ¶10; Exhibit G; Exhibit H.) When a deal was not
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`finalized, Petitioner filed this meritless action in an effort to bully Respondent into lowering its
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`price or abandoning the United States rights to the Kimberley Kampers trademarks.
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`B.
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`Trademark and Entity History
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`The United States Trademarks for Kimberely Kampers, and its logo, and another
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`tradename (King Kampers), were originally obtained and held by Kimberly Kampers Pty Ltd in
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`or around February 2004. After the original trademark expired, Kimberly Kampers Pty Ltd
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`reapplied for the trademarks in 2015, but did not proceed with the registration. (Exhibit M.)
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`In or around December 2015, Bruce Loxton was the sole Director and Officer of
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`Kimberley Kampers Pty Ltd. The Australian Company Number (ACN) for identification of the
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`company is 089 659 370. On November 18, 2016, Kimberley Kampers Pty Ltd (ACN 089 659
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`370) changed its company name to Kimberley Kampers (Aust) Pty Ltd. Kimberley Kampers
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`(Aust) Pty Ltd. assigned its rights to the Kimberley Kampers United States trademarks, or to use
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`the tradenames and logo to obtain trademarks, to Kimberley Group Pty Ltd, a company
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`controlled by Bruce Loxton. (Loxton Dec., ¶3.)
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`On November 23, 2017, Kimberley Group Pty Ltd assigned the rights to certain
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`trademarks and intellectual property to Mr. Cannock’s company, Kimberley Kampers Pte Ltd.
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`The United States trademark rights, including the trademark at issue in this action, were not part
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`of that transaction. (Loxton Dec., ¶6; Exhibit D.) The rights to renew, obtain or apply for
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`trademarks for Kimberely Kampers remained with Kimberley Group Pty Ltd, which then
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`reverted those rights back to Kimberley Kampers (Aust) Pty Ltd. (Loxton Dec., ¶8.)
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`Page 8
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`On December 6, 2017, the 2017 Agreement was reached between Todd Cannock, then
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`the sole director and officer of Kimberley Kampers Pty Ltd (ACN 134 825 639) and Bruce
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`Loxton as sole director and officer of Kimberley Kampers (Aust) Pty Ltd (ACN 089 659 370).
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`(Loxton Dec., ¶7; Exhibit E.) The 2017 Agreement expressly stated that the right to the
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`Kimberley Kampers United States trademarks would remain in Bruce Loxton's entity Kimberley
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`Kampers (Aust) Pty Ltd. (Loxton Dec., ¶8; Exhibit E.) Indeed, as an adjunct to that transaction,
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`Mr. Cannock paid to Safiery (via its owner) $80,000 to compensate for having used the U.S.
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`intellectual property during the proceeding year. (Loxton Dec., ¶8; Exhibit I and J.) Certainly,
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`Mr. Cannock would not have paid that fee if he owned the Trademark.
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`On December 16, 2017, Kimberley Kampers Pty (Aust) Ltd transferred the rights to
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`Respondent’s owner, who in turn transferred the rights to Respondent herein. (Loxton Dec., ¶¶8-
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`9; Exhibit F.) Respondent registered the Trademark in March 2018. (Exhibit M.)
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`On December 24, 2018, Mr. Cannock’s company purported to sell certain intellectual
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`property rights to Petitioner. (Exhibit L, Agreement – filed under seal.) The intellectual
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`property rights listed in that agreement did not include the rights to trademarks in the United
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`States, and specifically listed the Australian intellectual property rights. Nonetheless, Petitioner
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`asserts that this agreement is the basis for the claim that it procured rights to use the Kimberely
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`Kampers name in the United States. Petitioner has absolutely no documentation that it ever
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`acquired rights to the use trademarks, intellectual property, logos or tradenames of Kimberely
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`Kampers in the United States.
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`Indeed, in March 2020, Petitioner acknowledged the ownership of the United States
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`trademark and offered to purchase or license the rights. Petitioner stated: “I need to get the US
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`Kimberley Kampers Trade Mark ownership back to Kimberley Kampers HQ.” An invoice was
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`Page 9
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`created for the sale of the “USA Trademark” from Respondent to Petitioner, but the deal failed to
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`close by the date set forth. Petitioner failed to complete the transaction, and the offer related
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`thereto was rescinded by Safiery. (Exhibit G and Exhibit H.)
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`Petitioner never owned the rights to the Trademark or the Intellectual Property, and it
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`knows it.
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`C.
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`Respondent’s Use and Anticipated Use of the Trademark
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`In July of 2018, Mr. Cannock’s company entered liquidation proceedings. This
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`liquidation was highly publicized in the industry. Thus, until the fallout from the liquidation
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`could be avoided, it was not practical to proceed with efforts to sell Kimberley Kamper products
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`in the United States. (Loxton Dec., ¶¶3 and12.) Then, this action was filed, further inhibiting
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`any use of the Trademark. (Loxton Dec., ¶12.) Additionally, there was also a global pandemic
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`that further impeded the ability to proceed with sales in the United States. (Loxton Dec., ¶12.)
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`At all times, Respondent has fully intended to successfully market its campers and
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`camper components in the United States under the Trademark at issue. For that purpose,
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`Respondent has developed a superior rechargeable camper battery technology and other features,
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`to significantly distinguish its campers as unique and most desirable. (See video at
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`https://www.youtube.com/watch?v=eEfrkzKG4_w; which describes this battery technology.)
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`(Loxton Dec., ¶12.)
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`Kimberley Kampers (Aust) Pty Ltd. and then Safiery has used the Trademark to sell
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`vehicles in the United States for many years. As late as July 2018, Safiery was selling
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`Kimberley Kamper’s badged products for shipment to the United States. Sales were stalled
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`because the existing Kimberley Kampers products did not meet requirements for sales in the
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`United States. (Loxton Dec., ¶12.)
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`Page 10
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`Respondent is in the process of developing products that can be legally sold in the United
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`States. Respondent has not abandoned the trademark, and intends to commence sales in the
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`United States as soon as possible. Respondent is the holder of the engineering designs, bill of
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`materials and other material for an off-road caravan known as a "Kimberley Kruiser" for
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`manufacture in China. Respondent is in discussions with Chinse company, Conquer Falcon, for
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`the manufacture and export of the Kimberley Kruiser to the United States to be sold under the
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`Kimberley Kampers trademarks and using the Kimberley Kampers badge. Because of this
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`litigation, Respondent cannot put the Kimberley Kampers badge on the products. Once this
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`litigation is resolved, Safiery will be licensing Kimberley Kampers products for export to the
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`United States by Conquer Falcon. (Loxton Dec., ¶12, Ex. N.)
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`Safiery has always considered the U.S. market to be the superior market in international
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`trade for the marketing and sale of Safiery’s camper product. Safiery absolutely has the intention
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`to sell campers in the U.S. under the Trademark at issue in this case. (Loxton Dec., ¶¶12-14.)
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`IV. LEGAL ANALYSIS
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`A.
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`Petitioner Is Not the Rightful Owner of the Trademark
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`The basis for Petitioner’s claim, as set forth in its motion is: “Petitioner has a real interest
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`in the case because it is the rightful owner of the trademark underlying the ‘926 Registration
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`and owns a pending U.S. Trademark application . . . for the exact same mark.” (Motion, p. 7.)
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`Thus, Petitioner’s alleged ownership of the right to the Kimberley Kampers name is the sole
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`basis for the First Claim for Relief in its Petition. Petitioner has provided no evidence
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`whatsoever to support its ownership of the Trademark or the right to the underlying tradename.
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`The motion completely lacks any evidence showing a transfer of the rights to the
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`Page 11
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`intellectual property of Kimberly Kampers Pty Ltd, or any of its successors or assignees, to
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`Petitioner.
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`It is simply impossible for Petitioner to prevail on this motion without establishing its
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`right to claim it owns the Trademark or the tradename “Kimberley Kampers.”
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`The chain of title of the rights to the Trademark, and any rights to use the tradename
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`Kimberely Kampers in the United States is clear. Those rights belonged to the original
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`Kimberely Kampers entity, Kimberley Kampers Pty (Aust) Ltd, ACN 134 825 639. Those rights
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`were not transferred to Mr. Cannock’s entity, Kimberley Kampers Pte Ltd. Rather, those rights
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`were eventually transferred to Respondent, which properly owns the Trademark at issue in this
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`action, and the rights to the Kimberely Kampers tradename and logo in the United States.
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`Petitioner can produce no evidence that it is the lawful owner of the Trademark or the
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`rights to use the name Kimberley Kampers in the United States. Petitioner has provided no
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`evidence of how it obtained any such rights.
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`Indeed, Mr. Cannock recognized that his company did not own these rights when he
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`made efforts to purchase the rights from Mr. Loxton in March 2020.
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`Petitioner has provided no evidence (let alone admissible evidence) that it ever received
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`any right to the use of the Kimberley Kampers tradename or the Trademark in the United States.
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`Thus, Petitioner, as a matter of law, lacks standing to seek cancellation of the Trademark.
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`Petitioner simply has no commercial interest since it has no right to the Trademark. Not only
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`must Petitioner’s summary judgment motion be denied, summary judgment should be granted in
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`favor of Respondent.
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`Page 12
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`B.
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`Petitioner Lacks Standing
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`The party invoking jurisdiction bears the burden of establishing that it has standing. See
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`FW/PBS, Inc. v. Dallas, 493 U.S. 215, 231, 110 S.Ct. 596, 608, 107 L.Ed.2d 603 (1990). Since
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`they are not mere pleading requirements but rather an indispensable part of the petitioner's case,
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`each element must be supported in the same way as any other matter on which the petitioener
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`bears the burden of proof, i.e., with the manner and degree of evidence required at the successive
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`stages of the litigation. See Lujan v. National Wildlife Federation, 497 U.S. 871, 883–889, 110
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`S.Ct. 3177, 3185–3189, (1990); Gladstone, Realtors v. Village of Bellwood, 441 U.S. 91, 114–
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`115, and n. 31, 99 S.Ct. 1601, 1614–1615, and n. 31 (1979). Petitioner herein has not provided
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`any admissible evidence to establish it has standing to challenge the Trademark. Indeed,
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`Petitioner has assiduously avoided providing the contractual basis for its right, because Petitioner
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`is well-aware that contract did not convey any rights to the U.S. intellectual property.
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`Cancellation of registration is proper only “when (1) there is a valid ground why the
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`trademark should not continue to be registered and (2) the party petitioning for cancellation has
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`standing.” International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 1091
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`(Fed.Cir.1984) (Job's Daughters). See also Lipton Industries, Inc. v. Ralston Purina Co., 670
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`F.2d 1024, 1026 (C.C.P.A.1982) (Lipton) (quoting Int'l Order of Job's Daughters v. Lindeburg &
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`Co., 727 F.2d 1087, 1091 (Fed. Cir. 1984) ); Halicki Films, LLC v. Sanderson Sales & Mktg.,
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`547 F.3d 1213, 1228–1229 (9th Cir. 2008). To establish standing as a cancellation petitioner, the
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`petitioner “must show a real and rational basis for [its] belief that [it] would be damaged by the
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`registration sought to be cancelled, stemming from an actual commercial or pecuniary interest
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`in [its] own mark.” Star–Kist Foods, Inc. v. P.J. Rhodes & Co., 735 F.2d 346, 349 (9th Cir.
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`1984), emphasis added.
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`Page 13
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`

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`“A petition to cancel a registration of a mark ... may ... be filed by any person who
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`believes that he is or will be damaged by the registration of a mark....” 15 U.S.C. § 1064
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`(emphasis added).
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`To obtain a cancellation, petitioner must show he is “more than an intermeddler” but
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`rather has a personal interest, and that there is a “real controversy between the parties.” Lipton,
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`670 F.2d at 1028–29. Thus, his “allegations alone do not establish standing.” Id. The petitioner,
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`instead, must show a real and rational basis for his belief that it is damaged by the registration
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`that it seeks to be cancel. Importantly, that interest must stem from an actual commercial or
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`pecuniary interest in the petitioner’s own mark. E.g., id. at 1029; Tanners' Council of America,
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`Inc. v. Gary Industries, Inc., 440 F.2d 1404, 1406, 58 CCPA 1201 (1971). See generally 4A
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`Callman, Unfair Competition, Trademarks and Monopolies § 25.45 (4th ed. 1983).
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`Petitioner asserts that it has standing because it claims to be the owner of the Kimberley
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`Kampers tradename and has the exclusive right to trademark that name in the United States. As
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`set forth above, Petitioner provides no evidence whatsoever to support its claim of ownership.
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`Petitioner’s second basis for asserting standing is that it has filed an application for the
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`exact same trademark as is at issue in this proceeding. Petitioner concedes: “Petitioner has a
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`reasonable belief that [Petitioner’s application for the same trademark] will be rejected under
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`Trademark Act Section 2(d) based on the” Trademark already owned by Respondent. (Motion,
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`p. 7.) Of course it will be rejected. That is the sole purpose of trademark registrations, so two
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`companies cannot sell the same product using the same name.
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`A party cannot create standing to cancel a trademark simply by filing a doomed
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`application for the exact same trademark, and alleging that application alone creates standing.
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`Such a process would completely defeat the standing requirement to seek to cancel a trademark.
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`Page 14
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`Regardless, the issue in this summary judgment proceeding is not merely whether
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`Petitioner has standing – which it does not – but whether Petitioner can establish it is the rightful
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`owner of the Kimberley Kampers trademark.
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`As set forth herein, Petitioner has provided no evidence whatsoever that it rightfully owns
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`the Kimberley Kampers trademark.
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`C.
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`Respondent Has Not Abandoned the Trademark
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`Under the Lanham Act, a trademark is abandoned when its use is discontinued with intent
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`not to resume. 15 U.S.C. § 1127 (1982). Abandonment of a trademark, being in the nature of a
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`forfeiture, must be strictly proved. Wallpaper Mfrs., Ltd. v. Crown Wall Covering Corp., 680
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`F.2d 755, 761 (C.C.P.A.1982). Further, a “party arguing for abandonment has a high burden of
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`proof: . . . ‘abandonment, being in the nature of a forfeiture, must be strictly proved.’ ”
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`Doeblers' Pa. Hybrids, Inc. v. Doebler, 442 F.3d 812, 822 (3rd Cir.2006). “Because a finding of
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`abandonment works an involuntary forfeiture of rights, federal courts uniformly agree that
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`defendants asserting an abandonment defense face a ‘stringent,’ ‘heavy,’ or ‘strict burden of
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`proof.’ ” Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc., 304 F.3d 1167, 1175 (11th Cir.
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`2002).
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`Moreover, in ruling on summary judgment motion, all reasonable inferences are to be
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`made in favor of the non-moving party. See McLaughlin v. Liu, 849 F.2d 1205, 1208 (9th Cir.
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`1988).
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`“To prove abandonment of a mark as a defense to a claim of trademark infringement, a
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`defendant must show that there was: ‘(1) discontinuance of trademark use and (2) intent not to
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`resume such use.’ ” Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc., 758 F.3d 1069, 1072
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`(9th Cir.2014), as amended (Mar. 11, 2014) (quoting Electro Source, LLC v. Brandess–Kalt–
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`Page 15
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`

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`Aetna Grp., Inc., 458 F.3d 931, 935 (9th Cir.2006)); see also 15 U.S.C. § 1127(1). Non-use for
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`three consecutive years creates only a rebuttal presumption of abandonment – it does not shift
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`the burden of proof to the trademark owner. Abdul–Jabbar v. Gen. Motors Corp., 85 F.3d 407,
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`411 (9th Cir.1996). A trademark owner can rebut the presumption of abandonment by showing
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`valid reasons for non-use or lack of intent to abandon the mark. Id.
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`In general, temporary suspension of use for reasons beyond the control of the mark owner
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`is excused and does not lead to abandonment. See J. Thomas McCarthy, 2 McCarthy on
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`Trademarks and Unfair Competition § 17:16 (4th ed.2006) (citing myriad cases and
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`summarizing the rule as follows: “[a]bandonment does not result from a temporary forced
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`withdrawal from the market due to causes such as war, prohibition, a labor strike, bankruptcy,
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`import problems, unprofitable sales, being sued for patent infringement, or some other
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`involuntary action.” The Second Circuit, for example, found the presumption of abandonment to
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`be rebutted where New York stopped operating a water business due to a legislative decision,
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`and where the state had sought continuously thereafter to continue to use the goodwill of the
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`business and the trademark. Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044
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`(2nd Cir.1980).
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`In Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1189 (5th Cir. 1980), the court found no
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`abandonment occurred because “[t]here was no evidence that [the mark owner] intended to
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`abandon its trademark.” Moreover, in Am. Motors Corp. v. Action–Age, Inc., 178 U.S.P.Q.
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`(BNA) ¶ 377 (P.T.O. Apr. 27, 1973), the board found no abandonment because although the
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`trademark owner had discontinued the product, there was a “considerable reservoir of goodwill
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`in the mark” that inured to the owner “as a consequence of the large number of [trademarked]
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`vehicles still on the road,” among other things.
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`Page 16
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`Abandonment cannot be established where a petitioner failed to prove respondent
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`intended to abandon trademark. Tillamook County Creamery Ass'n v. Tillamook Cheese and
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`Dairy Ass'n, 345 F.2d 158, 162 (9th Cir. 1965). Where a company’s predecessors ceased using
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`the trademarks in the United States during a period due to the unprofitability of importing goods
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`into the United States, but intended to and did resume use of the trademarks when profits could
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`again be made, the trademark had not been a