ESTTA Tracking number:
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`ESTTA1349603
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`Filing date:
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`04/01/2024
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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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`92084360
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`Party
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`Correspondence
`address
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`Plaintiff
`Latinas & Power, Inc.
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`ALEXANDRA SUMMERS
`SAUSSER SUMMERS, PC
`4846 PAYTON STREET
`SANTA BARBARA, CA 93111
`UNITED STATES
`Primary email: info@onlinetrademarkattorneys.com
`Secondary email(s): alex@onlinetrademarkattorneys.com
`843-654-0078, Ext. 3
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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 Dismiss - Rule 12(b)
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`Alexandra Summers
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`info@onlinetrademarkattorneys.com
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`/ABS/
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`04/01/2024
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`Attachments
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`MotiontoDismissCounterclaim_040124.pdf(61420 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Mark: LATINAS POWER
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`Registration No. 5,668,753 + 5,668,754
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`Cancellation No. 92084360
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`Latinas & Power, Inc.,
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`Petitioner,
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`v.
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`Zulmarie Padin,
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`Respondent.
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`_______________________________________
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`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
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`MOTION TO DISMISS COUNTERCLAIM
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`Petitioner, Latinas & Power, Inc. (“Petitioner”), through its undersigned counsel,
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`hereby moves to dismiss the above-captioned Counterclaim filed by Zulmarie Padin
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`(“Petitioner”) for failure to state a claim, as well as failure to submit the requisite fees.
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`Specifically, Respondent’s purported counterclaim fails to state a claim upon which relief
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`can be granted. See Fed. R. Civ. P. 12(b)(6); 37 C.F.R. § 2.127(d). It also did not include the
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`requisite filing fees. See 37 C.F.R. § 2.111(d); TBMP § 313.02.
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`I.
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`FACTUAL BACKGROUND
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`Petitioner seeks to cancel Respondent’s registration for the mark LATINAS POWER
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`(Reg. No. 5,668,753 and 5,668,754). The basis of the Petition for Cancellation is priority,
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`and the application was void as filed under 15 U.S.C. § 1051. In response, Respondent filed
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`an answer that attempts to allege a Counterclaim. However, the Answer does not contain
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`sufficient factual matter, if accepted as true, that would state a claim upon which relief for
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`1
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`can be granted to support a counterclaim. Moreover, the counterclaim fails to include the
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`fee as required by 37 C.F.R. § 2.111(d); TBMP § 313.02.
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`II.
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`LEGAL ARGUMENT
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`To survive a motion to dismiss, a complaint (or counterclaim in this case) must
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`“state a claim to relief that is plausible on its face”. TMBP § 503.02; Ashcroft v. Iqbal, 129 S.
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`Ct. 1937, 1950, 173 L. Ed. 2d 868 (2009) (“[O]nly a complaint that states a plausible claim
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`for relief survives a motion to dismiss”); Bell Atl. Corp. v. Twombly, 550 U.S. 544, 545, 127 S.
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`Ct. 1955, 167 L. Ed. 2d 929 (2007) (“Asking for plausible grounds does not impose a
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`probability requirement at the pleading stage; it simply calls for enough facts to raise a
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`reasonable expectation that discovery will reveal evidence [to support plaintiff’s claims]”).
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`In particular, the claimant must allege well-pleaded factual matter and more than
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`"[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements." TMBP § 503.02; Ashcroft at 678 (2009) (citing Twombly, 550 U.S. at 555).
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`Respondent has failed to satisfy these requirements by providing details of what
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`seems to be a defense – not a counterclaim. Here are the allegations under the
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`Counterclaim:
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`7. The evidence in support of the registration pleaded by Petitioner establishes
`June 19, 2020, as it’s date of first use. Respondent’s Registration Nos. 5668754
`and 5668753 were in use at least since February 27, 2015, therefore they have
`priority over the registration pleaded by Petitioner. Given that Petitioner’s
`registration pleaded is likely to cause confusion, Respondent respectfully
`requests that the registration pleased by Petitioner be denied.
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`See Respondent Answer, March 15, 2024 at pg. 3.
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`2
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`While this does attempt to state an allegation that Petitioner denies, i.e. that the evidence
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`pleaded by Petitioner establishes June 19, 2020 as its date of first use1, the allegation does
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`not support a valid counterclaim since it doesn’t allege anything where relief can be
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`granted. Rather, this seems to be Respondent’s defense. As a result, it should be dismissed
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`as a counterclaim.
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`Moreover, Respondent has not submitted the requisite filing fee of $600 to include a
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`counterclaim against Petitioner as required by 37 C.F.R. § 2.111(d); TBMP § 313.02.
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`III.
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`CONCLUSION
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`Based on the foregoing, Petitioner’s Motion to Dismiss the Counterclaim should be
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`granted in its entirety and with prejudice.
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`Respectfully submitted,
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`/ABS/
`________________________________________________
`Alexandra Summers, Esq.
`4846 Payton Street
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`Santa Barbara, CA 93111
`Phone: (843) 654-0078
`Email: info@onlinetrademarkattorneys.com
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`Attorney for Petitioner
`Latinas & Power, Inc.
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`1 It should be noted that at this stage of the cancellation proceeding, we are only dealing with allegations.
`Evidence in support of what has been alleged will be provided during the discovery portion of the
`cancellation.
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`3
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`CERTIFICATE OF SERVICE
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`I confirm that on April 1, 2024, I served a copy of the above MOTION TO DISMISS
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`COUNTERCLAIM to Respondent to the following by email:
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`Zulmarie Padin
`zulmarie@gmail.com
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`/ABS/
`________________________________________________
`Alexandra Summers, Esq.
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`4
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