Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1296279
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`Filing date:
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`07/10/2023
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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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`92081943
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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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`Defendant
`Purple Innovation, LLC
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`DALE M. CENDALI
`KIRKLAND & ELLIS LLP
`601 LEXINGTON AVENUE
`44TH FLOOR
`NEW YORK, NY 10022
`UNITED STATES
`Primary email: dale.cendali@kirkland.com
`Secondary email(s): purpletm@kirkland.com
`212-446-4800
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`Reply in Support of Motion
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`Dale M. Cendali
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`dale.cendali@kirkland.com, purpletm@kirkland.com
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`/Dale M. Cendali/
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`07/10/2023
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`Attachments
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`TTAB Reply ISO MTD.pdf(168315 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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`SEALY TECHNOLOGIES, LLC,
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`Petitioner,
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`Cancellation No.: 92081943
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`v.
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`PURPLE INNOVATION, LLC,
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`Registrant.
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`PURPLE INNOVATION, LLC’S REPLY IN SUPPORT OF ITS MOTION TO DISMISS
`SEALY TECHNOLOGY, LLC’S PETITION FOR CANCELLATION
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`TABLE OF CONTENTS
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`Page
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`I.
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`INTRODUCTION............................................................................................................. 1
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`II.
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`ARGUMENT ..................................................................................................................... 2
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`A.
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`B.
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`C.
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`Petitioner’s Amended Petition Does Not Allege a Real Interest in the
`Proceeding............................................................................................................... 2
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`Petitioner’s Amended Petition Does Not State a Claim for Genericness. .............. 3
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`Petitioner’s Proposed Amendment is Futile and Should Be Denied. ..................... 5
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`III. CONCLUSION ................................................................................................................. 6
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`CERTIFICATE OF SERVICE ................................................................................................... 7
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`i
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`American Express Mktg. & Dev. Corp. v. Gilad Dev. Corp.,
`Opposition Nos. 91183362 and 91186156,
`2010 WL 956669 (T.T.A.B. Mar. 15, 2010)..............................................................................5
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) ...............................................................................................................1, 4
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`Clinton v. Boladian,
`No. CV 11-10062-R, 2013 WL 12126107 (C.D. Cal. May 2, 2013) ........................................4
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`Doyle v. Al Johnson’s Swedish Rest. & Butik Inc.,
`101 U.S.P.Q.2d 1780 (T.T.A.B. Feb. 10, 2012) ........................................................................3
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`Embarcadero Techs., Inc. v. Dephix Corp.,
`Opposition No. 91197762; Cancellation No. 92055153,
`2016 WL 462869 (T.T.A.B. Jan. 21, 2016) ...............................................................................5
`
`Foman v. Davis,
`371 U.S. 178 (1962) ...................................................................................................................5
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`Gang Cao v. Apple Inc.,
`Opposition No. 91239006, 85 TTABVUE 13 (June 28, 2021) .................................................3
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`H. Marvin Ginn Corp. v. Int’l Assoc. of Fire Chiefs, Inc.,
`782 F.2d 987 (Fed. Cir. 1986)....................................................................................................4
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`In re Health Sci. Funding,
`2012 WL 4763146 .....................................................................................................................4
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`In re Hui Lian Ke,
`No. 17-cv-02555-EMC, 2017 WL 4865553 (N.D. Cal. Oct. 27, 2017) ....................................6
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`Humanetics Corp. v. Neways, Inc.,
`Opposition No. 123123, 2003 WL 22022072 (T.T.A.B. Aug. 21, 2003) ..................................5
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`NSM Resources Corp. v. Microsoft Corp.,
`Cancellation No. 92057932, 2014 WL 7206403 (T.T.A.B. Nov. 25, 2014) .........................3, 5
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`Sarieddine v. D&A Distrib.,
`No. CV-17-2390-DSF, 2018 WL 5094957 (C.D. Cal. Apr. 24, 2018) ......................................3
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`Tovar v. City of San Jose,
`No. 5:21-cv-02497-EJD, 2021 WL 6126931 (N.D. Cal. Dec. 28, 2021) ..............................2, 4
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`ii
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`Tyler v. Travelers Com. Ins. Co.,
`499 F. Supp. 3d 693 (N.D. Cal. 2020) ...................................................................................2, 4
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`Wright v. Whitehall Township,
`No. 5:20-cv-02664, 2021 WL 100091 (E.D. Pa. Jan. 12, 2021)................................................5
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`iii
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`Registrant hereby replies in support of its motion to dismiss Petitioner’s Petition.1
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`I.
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`INTRODUCTION
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`Petitioner’s Opposition confirms that two of its three original claims were time barred and
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`improperly pled, and that its remaining claim also should be dismissed. Tellingly, Petitioner does
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`not dispute that its commencement of this cancellation proceeding was purely retaliatory in
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`response to the patent infringement suit filed by Registrant. It also does not dispute that its
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`descriptive and deceptively misdescriptive claims are improper and must be dismissed, and
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`Petitioner has affirmatively withdrawn those claims. The sole issue remaining is whether
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`Petitioner can maintain its claim for genericness. It cannot.
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`As set forth in Registrant’s Motion, Petitioner’s genericness claim fails to two reasons.
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`First, Petitioner lacks standing to bring the claim because it has failed to allege a “real interest in
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`this proceeding.” Petitioner’s Amended Petition (which it seeks leave to file) adds no substantive
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`allegations and remains deficient. Merely claiming the need to “compete fairly in [Petitioner’s]
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`industry” is insufficient and does not plead a bona fide need to use the mark, as is required. 9
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`TTABVUE 2 ¶¶ 6, 9. Second, Petitioner’s pleading does not adequately plead the substantive
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`elements of a genericness claim because it is comprised of nothing more than a “[t]hreadbare
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`recital[] of the elements of a cause of action, supported by mere conclusory statements,” which is
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`insufficient as a matter of law. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Petitioner’s Amended
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`Petition does not add any allegations on the elements of genericness, and Petitioner’s arguments
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`do not save its claim. Third, Petitioner’s request for leave to amend is futile and should be denied.
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`Accordingly, Registration’s Motion to Dismiss should be granted with prejudice.
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`1 Capitalized terms used herein are defined in Registrant’s Motion. 7 TTABVUE 1-11.
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`1
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`
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`II.
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`ARGUMENT
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`A. Petitioner’s Amended Petition Does Not Allege a Real Interest in the
`Proceeding.
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`Petitioner’s genericness claim fails because the proposed Amended Petition fails to allege
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`that Petitioner has a “real interest” in this proceeding. As set forth in Registrant’s Motion,
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`Petitioner’s original Petition failed to allege any facts indicating that it has a need to use
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`Registrant’s Mark in connection with its products, such as allegations that Petitioner: (1) has ever
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`used Registrant’s Mark, (2) has the need to use Registrant’s Mark to describe its products, or (3)
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`sells or uses “elastomeric polymer in preshaped form sold as an integral component of pillows”
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`(i.e., the goods subject to Registrant’s Mark). 7 TTABVUE 5. In response, Petitioner made no
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`attempt to argue that its pleading was sufficient, thus conceding that the deficiencies with its
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`Petition were fatal to its claim. See Tovar v. City of San Jose, No. 5:21-cv-02497-EJD, 2021 WL
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`6126931, at *2 (N.D. Cal. Dec. 28, 2021) (“By failing to respond to the [defendant’s] arguments,
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`Plaintiffs have conceded those arguments and have acknowledged that their [] claims should be
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`dismissed on those grounds”); Tyler v. Travelers Com. Ins. Co., 499 F. Supp. 3d 693, 701 (N.D.
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`Cal. 2020) (holding that the plaintiff conceded “arguments by failing to address them in her
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`opposition” and collecting cases).
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`Despite being aware of these defects, the Amended Petition remains woefully deficient.
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`Petitioner hardly adds any new allegations to its pleading at all. Its only change in the proposed
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`Amended Petition is to include two conclusory and vague allegations that “Petitioner has the need
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`to use the challenged mark as a generic term to compete fairly in its industry[.]” 9 TTABVUE 2
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`¶¶ 6, 9 (emphasis added). Those allegations, however, fail to allege why Petitioner allegedly needs
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`to use the term in order to “compete fairly” (such as to identify products that it allegedly sells or
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`uses as a component of its own products). This vague allegation does not provide any “reasonable
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`2
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`

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`basis for its [alleged] belief that it would suffer some kind of damage by the continued registration
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`of [Registrant’s Mark].” NSM Resources Corp. v. Microsoft Corp., Cancellation No. 92057932,
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`2014 WL 7206403, at *3 (T.T.A.B. Nov. 25, 2014) (citation omitted); Doyle v. Al Johnson’s
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`Swedish Rest. & Butik Inc., 101 U.S.P.Q.2d 1780, at 1782 (T.T.A.B. Feb. 10, 2012) (dismissing
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`cancellation claims where petitioner alleged an interest in “taking photographs of goats on grass
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`roofs generally” but failed to establish that the registrant’s mark actually prevented petitioner from
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`doing so); Sarieddine v. D&A Distrib., No. CV-17-2390-DSF, 2018 WL 5094957, at *3 (C.D. Cal.
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`Apr. 24, 2018) (dismissing cancellation claims where plaintiff failed to allege any damage from
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`defendant’s continued use of marks, including that defendant’s “registrations are in any way
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`inconsistent with [plaintiff’s] rights to use [the mark] in connection with his [goods]”).
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`Petitioner’s claim that “it is enough to have a ‘prospective’ need to use the term to maintain
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`a level competitive playing field” misstates the law. 10 TTABVUE 3. In Petitioner’s cited
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`authority, the Board only found that a “prospective need” established standing where the petitioner
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`had a prospective need to “use [the challenged mark] as a generic or descriptive term to describe
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`[the petitioner’s product].” Gang Cao v. Apple Inc., Opposition No. 91239006, 85 TTABVUE
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`13 (June 28, 2021) (emphasis added). Specifically, the petitioner argued that he had an interest in
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`using the applied-for mark, “LIVE PHOTOS,” as a generic or descriptive term to describe his
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`software that allegedly “creates the impression of moving photographs.” Id. Here, Petitioner fails
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`to allege any prospective (or actual) need to use Registrant’s Mark to describe its products. It
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`merely alleges a vague interest in “competing fairly;” yet it offers no authority holding that such
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`an allegation is sufficient—it is not. Thus, dismissal of Petitioner’s genericness claim for lack of
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`standing is warranted. See 7 TTABVUE 4-5 (collecting cases).
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`B. Petitioner’s Amended Petition Does Not State a Claim for Genericness.
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`Petitioner does not dispute that “[t]hreadbare recitals of the elements of a cause of action,
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`3
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`supported by mere conclusory statements” cannot survive a motion to dismiss. Ashcroft, 556 U.S.
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`at 678. Yet, that is precisely what Petitioner’s genericness claim does. Despite being on notice of
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`this pleading deficiency from Registrant’s Motion, Petitioner’s proposed Amended Petition
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`proposes no supplemental allegations in support of its genericness claim—presumably, because
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`no supplemental facts exist. Petitioner’s sole allegation that “when Respondent’s Mark is used on
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`or in connection with the goods of Respondent’s Mark, namely ‘elastomeric polymer in pre-shaped
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`form sold as an integral component of pillows’, it is generic of them as it is understood by the
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`relevant public to refer to the common name or the genus of the goods” 9 TTABVUE 2—which
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`is a nearly verbatim recitation of the ultimate legal standard for genericness—is insufficient as a
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`matter of law. See In re Health Sci. Funding, LLC, Serial Nos. 85255510 and 85255541, 2012
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`WL 4763146, at *1 (T.T.A.B. Sept. 19, 2012) (quoting H. Marvin Ginn Corp. v. Int’l Assoc. of
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`Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986)) (genericness requires the petitioner to (1) identify
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`“the genus of goods or services at issue” and (2) establish that “the term sought to be registered
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`[is] understood by the relevant public primarily to refer to that genus of goods or services”); See 7
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`TTABVUE 10-11 (collecting cases). For instance, nowhere does Petitioner even define “the genus
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`of goods or services at issue.” In re Health Sci. Funding, 2012 WL 4763146, at *1 (citation
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`omitted).
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`Petitioner makes no attempt to respond to Registrant’s arguments, and cited authorities,
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`demonstrating that Petitioner’s allegations are conclusory. As a result, Petitioner has conceded
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`Registrant’s arguments. Tovar, 2021 WL 6126931, at *2; Tyler, 499 F. Supp. 3d at 701.
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`
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`Accordingly, Petitioner’s genericness claim should be dismissed. Because this is now
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`Petitioner’s second unsuccessful attempt to state a plausible claim for relief, dismissal with
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`prejudice is warranted. See Clinton v. Boladian, No. CV 11-10062-R, 2013 WL 12126107, at *2
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`4
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`

`

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`(C.D. Cal. May 2, 2013) (dismissing claim with prejudice after the plaintiff failed to cure pleading
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`deficiencies in amended complaint); Wright v. Whitehall Township, No. 5:20-cv-02664, 2021 WL
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`100091, at *17-18 (E.D. Pa. Jan. 12, 2021) (dismissing claims with prejudice, without leave to re-
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`plead, where plaintiffs were “on notice of the potential defects in these claims and failed to cure
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`them in the Amended Complaint”).
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`C. Petitioner’s Proposed Amendment is Futile and Should Be Denied.
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`It is well-settled that leave to amend should be denied where the amendment would be
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`“futil[e].” Foman v. Davis, 371 U.S. 178, 182 (1962); NSM Resources, 2014 WL 7206403, at *7
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`(leave to amend denied where “amendment would be futile”). A proposed amendment is futile if
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`it “would not withstand a motion to dismiss for failure to state a claim.” Humanetics Corp. v.
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`Neways, Inc., Opposition No. 123123, 2003 WL 22022072, at *3 (T.T.A.B. Aug. 21, 2003).
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`As set forth above, the additional two allegations Petitioner seeks to add in its Amended
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`Petition are insufficient to establish that Petitioner has standing (and do nothing to cure the
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`deficiencies with Petitioner’s genericness claim). Thus, the Amended Petition cannot withstand
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`a motion to dismiss for failure to state a claim. Supra Sections II(A)-(B).
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`As a result, granting leave to amend would be futile, and Petitioner’s request for leave to
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`amend its genericness claim should be denied.2 See Embarcadero Techs., Inc. v. Dephix Corp.,
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`Opposition No. 91197762; Cancellation No. 92055153, 2016 WL 462869, at *5 (T.T.A.B. Jan.
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`21, 2016) (motion for leave to amend to add false declaration claims denied where proposed
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`claims were futile); American Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., Opposition Nos.
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`91183362 and 91186156, 2010 WL 956669, at *3 (T.T.A.B. Mar. 15, 2010) (leave to amend
`
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`2 Petitioner’s response to the Motion to Dismiss also concedes that its descriptiveness claim and
`deceptively misdescriptive claims are not cognizable as a matter of law and withdraws them in its
`Amended Petition. Registrant’s motion to dismiss those claims should be granted, as well.
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`5
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`answer denied where proposed additional defense was futile); In re Hui Lian Ke, No. 17-cv-
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`02555-EMC, 2017 WL 4865553, at *3 (N.D. Cal. Oct. 27, 2017) (denying leave to amend
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`because it would be futile where plaintiff was aware of the “pleading deficiencies and Plaintiff
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`was unable or unwilling to cure them”).
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`III. CONCLUSION
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`For the foregoing reasons, Registrant respectfully requests that the Board deny Petitioner’s
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`motion for leave to amend and dismiss Petitioner’s claims with prejudice.
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`
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`Dated: July 10, 2023
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`
`/s/ Dale M. Cendali
`Dale M. Cendali
`Shanti Sadtler Conway
`Abbey Elizabeth Quigley
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, NY 10022
`dale.cendali@kirkland.com
`shanti.conway@kirkland.com
`abbey.quigley@kirkland.com
`
`Attorneys for Registrant
`Purple Innovation, LLC
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 10, 2022, I caused copies of the foregoing PURPLE
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`INNOVATION, LLC’S REPLY IN SUPPORT OF ITS MOTION TO DISMISS SEALY
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`TECHNOLOGY, LLC’S PETITION FOR CANCELLATION to be served via e-mail as
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`follows:
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`STEPTOE & JOHNSON PLLC
`Amy Sullivan Cahill, Esq.
`700 N. Hurstbourne Parkway, Suite 115
`Louisville, KY 40222
`502-423-2054
`amy.cahill@steptoe-johnson.com
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`Dated: July 10, 2023
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`/s/ Dale M. Cendali
`Dale M. Cendali
`
`Attorney for Registrant
`Purple Innovation, LLC
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`7
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