Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1160577
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`Filing date:
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`09/20/2021
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`Proceeding
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`Party
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`Correspondence
`Address
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`92077633
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`Plaintiff
`Zuffa, LLC
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`JOHN L KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PKWY
`SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary Email: trademarkslv@dickinsonwright.com
`Secondary Email(s): jkrieger@dickinsonwright.com,
`slnorton@dickinsonwright.com, mfeder@dickinsonwright.com, amor-
`etto@dickinsonwright.com
`702-550-4400
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Motion to Strike Pleading/Affirmative Defense
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`John L. Krieger
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`jkrieger@dickinsonwright.com
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`/John L. Krieger/
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`09/20/2021
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`Attachments
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`BMF - Motion to Strike.pdf(38503 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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`Petitioner,
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`Registrant.
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`Cancellation No. 92077633
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`Mark:
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`BMF
`(Reg. No. 6,002,970)
`International Class 041
`Registered: March 3, 2020
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`v.
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`Zuffa, LLC,
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`
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`Byron Belin,
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`MOTION TO STRIKE CERTAIN AFFIRMATIVE DEFENSES AND
`MOTION TO SUSPEND PENDING DETERMINATION ON MOTION
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`Petitioner Zuffa, LLC, (“Zuffa” or “Petitioner”), moves to strike Registrant Byron Belin’s
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`(“Registrant” or “Belin”) first through seventh and tenth affirmative defenses. The Board’s
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`decision on this motion will affect the scope of discovery, therefore, Petitioner also moves to
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`suspend proceedings until this motion is decided.
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`I.
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`LEGAL STANDARD
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`The Board has the authority to strike from a pleading any “insufficient defense or any
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`redundant, immaterial, impertinent, or scandalous matter.” TBMP § 506.01. The Registrant must
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`support its affirmative defenses with sufficient facts to provide notice of the basis for the defense.
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`Edge Games, Inc. v. Razer (Asia-Pacific) PTE, Ltd., 2015 WL 9913827, at *3. (T.T.A.B. Sept. 15,
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`2015).
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`II.
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`ARGUMENT
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`A.
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`Failure to State a Claim Is not a True Affirmative Defense.
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`Registrant’s first affirmative defense, failure to state a claim, is not a true affirmative
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`defense, but rather relates to the sufficiency of the pleading. Edge Games, at *3; Hornblower &
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`Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 n.7 (T.T.A.B. 2001). To state a
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`claim in a cancellation proceeding, an opposer need only allege sufficient facts that (1) it has
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`standing, and (2) there are valid grounds for denying cancelling registration. Saint-Gobain
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`4832-9125-2218 v2 [66108-30842]
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`1
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`

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`Abrasives, Inc. v. Unova Indus. Automation Sys., Inc., 66 USPQ2d 1355, at *3 (T.T.A.B. 2003).
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`Petitioner set forth several paragraphs describing its standing to cancel Registrant’s
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`registration. (See 1 TTABVUE ¶¶ 1-5.) Petitioner also included extensive factual allegations
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`regarding its prior use of the BMF mark and Registrant’s false statements to the PTO, supporting
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`its claim for fraud, no bona fide intent to use, and non-use/abandonment. See id, generally. TBMP
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`§ 309.03(c)(1) (identifying 27 basis to petition for cancellation, including those set forth in Zuffa’s
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`petition).
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`Petitioner sufficiently pled its petition for cancellation, therefore, the Board must strike
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`Registrant’s first affirmative defense for failure to state a claim.
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`B.
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`Registrant’s Second Through Seventh Affirmative Defenses Are
`Insufficiently Pled.
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`The Board must strike Registrant’s second (lack of standing), third (acquiescence), fourth
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`(laches), fifth (estoppel), sixth (waiver), and seventh (undue delay) affirmative defenses.
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`Affirmative defenses must be stated “simply, concisely, and directly. However, the pleading
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`should include enough detail to give the plaintiff fair notice of the basis of the defense.” TBMP §
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`311.02(b)(1).
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`Registrant provides no factual basis or enhancement for any of these affirmative defenses,
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`and, instead, only lists the name of the defense. (See 4 TTABVUE at ¶¶ 42-51.) Merely listing the
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`name of a defense is insufficient – as Registrant must allege specific conduct related to each
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`affirmative defense, which it has not done here. See Black Fin Yacht Corp. v. Black Point Marine,
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`LLC, 2015 WL 9907035, at *5 (T.T.A.B. Mar. 30, 2015) (striking affirmative defenses where they
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`are nothing more than “bald, conclusory allegations that are not supported by facts.”). The Board
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`regularly strikes these affirmative defenses when the registrant fails to meet the pleading standard:
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`• Lack of Standing: Corporacion Habanos, S.A. & Empresa Cubana Del Tabaco,
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`DBA Cubatabaco, No. Cancellation 9205324, 2013 WL 6056505, at *3, n.3 (June
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`12, 2013) (quoting Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1637
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`(T.T.A.B. 2011)) (“Lack of standing is not an affirmative defense. Standing is an
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`4832-9125-2218 v2 [66108-30842]
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`2
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`element of petitioners’ claim.”)
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`• Acquiescence: Ricardo Bell, Michael Bivins, Robert Brown, & Ronald Devoe v.
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`Johnny Gill and Ralph Tresvant, No. CANCELLATION 9206854, 2019 WL
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`3564543, at *3 (Aug. 2, 2019) (striking acquiescence defense because it “merely
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`listed [the] defense[] by name without supporting factual allegations”)(citation
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`omitted.)
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`• Laches: Id. (striking laches defense because it “merely listed [the] defense[] by
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`name without supporting factual allegations”)(citation omitted.)
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`• Estoppel: Warner Bros. Ent. Inc. v. Wizarding Dayz LLC, No. 91248102, 2019 WL
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`7423421, at *3 (Dec. 23, 2019) (striking estoppel defense because it was
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`“unsupported by factual allegations regarding the elements of an estoppel
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`defense.”) (citation omitted.)
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`• Waiver: Travel Warrior v. TW Travel, No. 91255797, 2021 WL 389278, at *2 (Jan.
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`29, 2021) (striking affirmative defense where it did not give plaintiff fair notice of
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`an existing right, knowledge of the right, and an intent to relinquish that right)
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`(citation omitted.)
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`• Undue Delay:
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`See also TBMP § 311.02(b). Given the complete lack of factual allegations in support Registrant’s
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`second through seventh affirmative defenses, the Board must strike them.
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`C.
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`“Reservation of Rights” Is Not a Proper Affirmative Defense.
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`Registrant’s reservation of rights affirmative defense is similarly improper. Indeed, the
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`right to assert defenses uncovered during discovery “must be resolved by way of motion for leave
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`to amend.” Country Life, LLC v. Barlean’s Organic Oils, LLC, 2019 WL 4567854, at *5 (T.T.A.B.
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`2019) (striking reservation of rights affirmative defense). For this reason, the Board must strike
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`Registrant’s tenth affirmative defense.
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`4832-9125-2218 v2 [66108-30842]
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`3
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`D.
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`The Board Should Suspend This Proceeding Until It Rules on This Motion.
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`The Board should treat the determination of Registrant’s motion challenging the
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`sufficiency of Petitioner’s pleading, through its failure to properly state any claim defense, in the
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`same manner in which the Board would treat a motion to dismiss. TBMP § 316 (cases are
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`suspended pending decision on potentially dispositive motion); TBMP § 510.03(a) (potentially
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`dispositive motions, including motions to dismiss, result in a suspension of the proceedings.)
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`Additionally, the Board’s determination on this motion may affect the scope of discovery.
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`Accordingly, Petitioner requests the Board suspend proceedings and reset the schedule after the
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`Board rules.
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`III. CONCLUSION
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`Petitioner sufficiently pled standing and valid grounds for relief. For this reason,
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`Registrant’s first affirmative defense, failure to state a claim, is improper and must be stricken.
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`Registrant’s second through seventh affirmative defenses are unsupported by any factual
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`averments and must be stricken. Registrant’s tenth affirmative defense, reservation of rights, is not
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`a proper defense and must also be stricken.
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`Dated: September 20, 2021
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`Respectfully submitted,
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`DICKINSON WRIGHT PLLC
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`/John L. Krieger/
`John L. Krieger, Esq.
`jkrieger@dickinsonwright.com
`Michael Feder, Esq.
`mfeder@dickinsonwright.com
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`(702) 550-4400 (phone)
`(844) 670-6009 (fax)
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`4832-9125-2218 v2 [66108-30842]
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 20, 2021, a true and correct complete copy of the
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`foregoing was sent to all interested parties, via email to:
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`
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`Jeffrey Williams
`Law Office of Jeff Williams, PLLC
`800 E. Border Street, Ste. 305
`Arlington, TX 76010
`jeff@williamsiplaw.com
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`/s/ Ashley B. Moretto
`An Employee of Dickinson Wright PLLC
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`4832-9125-2218 v2 [66108-30842]
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`5
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