ESTTA Tracking number:
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`ESTTA1366871
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`Filing date:
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`06/24/2024
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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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`92084682
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`Party
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`Correspondence
`address
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`Plaintiff
`CARAWAY HOME, INC.
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`SERGE KRIMNUS
`BOCHNER PLLC
`1040 AVENUE OF THE AMERICAS, 15TH FLOOR
`NEW YORK, NY 10018
`UNITED STATES
`Primary email: serge@bochner.law
`Secondary email(s): andrew@bochner.law, ariel@bochner.law,
`john@bochner.law, uspto@bochner.law
`646-971-0685
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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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`Other Motions/Submissions
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`John Rossler
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`john@bochner.law
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`/John Rossler/
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`06/24/2024
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`Attachments
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`Opp to Motion to Set Aside Default.FINAL.pdf(341418 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CARAWAY HOME, INC.
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` Cancellation No.: 92084682
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` BEAUTIFUL BRANDS LLC,
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`Petitioner,
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`v.
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`Registrant.
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`MEMORANDUM OF LAW IN OPPOSITION TO REGISTRANT’S MOTION TO SET
`ASIDE DEFAULT
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION................................................................................................................. 1
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`II. PROCEDURAL BACKGROUND ...................................................................................... 1
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`III. STANDARD OF LAW ......................................................................................................... 1
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`IV. ARGUMENT ......................................................................................................................... 2
`A. Registrant’s Delay In Filing Was The Result Of Registrant’s Gross Negligence ........ 2
`B. Registrant Has Not Established a Meritorious Defense To Petitioner’s Grounds For
`Cancellation ........................................................................................................................ 4
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`1. Registrant Has No Meritorious Defense To Mere Descriptiveness ................................ 4
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`2. Registrant Has No Meritorious Defense The Cancellation For Fraud ............................ 5
`C. Registrant’s Delay In Responding To The Petition Has Prejudiced Petitioner ........... 6
`V. CONCLUSION ..................................................................................................................... 7
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`ii
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`I.
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`INTRODUCTION
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`Pursuant to Section 312.02 of the Trademark Trial and Appeal Board Manual of Procedure
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`(“TBMP”), Petitioner Caraway Home, Inc. (“Petitioner”) hereby submits this opposition to
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`Registrant Beautiful Brands LLC’s (“Registrant”) Motion to Set Aside Default (“Motion” or
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`“Mot.”) [TTABVUE 5]. For the reasons set forth below, Registrant’s Motion should be denied.
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`II.
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`PROCEDURAL BACKGROUND
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`On March 14, 2024, Petitioner filed its Petition for Cancellation (“Pet.” or “Petition”)
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`[TTABVUE 1] against U.S. Trademark Registration No. 6,456,638 for the mark BEAUTIFUL in
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`standard characters (“Registrant’s Mark”), asserting as grounds for cancellation that Registrant’s
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`Mark is merely descriptive, void ab initio, and was obtained through fraud. Registrant’s response
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`to the Petition was due on April 23, 2024. See Notice of Institution [TTABVUE 2]. Registrant’s
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`filed no response, and the Trademark Trial and Appeal Board (“TTAB”) issued a Notice of Default
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`on May 5, 2024 [TTABVUE 4]. On June 3, 2024, Registrant filed its Motion to set aside the
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`default. Petitioner respectfully submits that the TTAB should deny Registrant’s Motion due to
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`Registrant’s lack of good cause for the default and the absence of a meritorious defense.
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`III.
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`STANDARD OF LAW
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`The entry of a default judgement is “necessary in some cases,” and this determination “lies
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`within the sound discretion of the Board.” TBMP § 312.02. The Board will set aside a notice of
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`default only upon a showing of good cause. See Fed. R. Civ. P. 55(c). Good cause may be found
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`where (1) the delay in filing an answer was not the result of willful conduct or gross negligence;
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`(2) the plaintiff will not be substantially prejudiced by any delay; and (3) the defendant has a
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`meritorious defense. See Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 21 USPQ2d
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`1556, 1557 (T.T.A.B. 1991). Gross negligence is “the failure to exercise even a slight degree of
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`care,” the “absence of slight diligence, or the want of even scant care . . . indifference to present
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`legal duty,” and “utter forgetfulness of legal obligations.” Conway v. O'Brien, 312 U.S. 492, 495
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`(1941).
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`Under Section 2(e) of the Lanham Act, a mark shall be refused registration if the mark used
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`on or in connection with the goods of the applicant is “merely descriptive.” 15 U.S.C. § 1052(e)(1);
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`see also United States PTO v. Booking.com B.V., 591 U.S. 549, 553 (2020) (holding that “merely
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`descriptive” marks are “not eligible for the principle register”). When a “merely descriptive” mark
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`describes a product, it does not “inherently identify a particular source, and hence cannot be
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`protected.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). A mark is considered
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`“merely descriptive” under Section 2(e)(1) if the mark “immediately conveys . . . knowledge of
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`the ingredients, qualities, or characteristics of the goods.” In re Gyulay, 820 F.2d 1216, 1217 (Fed.
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`Cir. 1987); see also Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir.
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`1976). Conversely, a term is considered “suggestive,” and may be entitled to registration, if it
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`“requires imagination, thought and perception to reach a conclusion as to the nature of goods.”
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`Abercrombie, 537 F.2d at 11.
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`IV. ARGUMENT
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`As discussed in the Petition, Registrant’s Mark is merely descriptive, is void ab initio, and
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`was obtained through fraud. As such, Registrant’s Mark should be cancelled, and Registrant’s
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`Motion presents no meritorious defense to those grounds. Nor does the Motion establish any good
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`cause to vacate Registrant’s default. As discussed in more detail below, Registrant’s Motion should
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`be denied.
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`A. Registrant’s Delay In Filing Was The Result Of Registrant’s Gross Negligence
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`Registrant contends that the failure to respond was due to a good faith misinterpretation of
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`a USPTO form. Mot. at 2. However, Registrant’s failure to exercise even a slight degree of care
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`was so extreme as to rise to the level of “gross negligence” required to deny a finding of good
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`cause. For instance, in DeLorme Publishing Co. v. Eartha’s Inc., applicant did not file an answer
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`for several months, arguing that the notice he received was “incomplete.” 60 U.S.P.Q.2d 1222,
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`1223 (T.T.A.B. 2000). Yet no request for extension was made, and “the Board’s order establishing
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`the time for applicant’s answer was unambiguous.” Id. The applicant chose to take no action for
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`months and could have “at the very least” contacted the board or opposer to inquire whether the
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`notice was complete or would be supplemented in some fashion. Id. And the TTAB held that “the
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`delay here was the result of applicant’s willful conduct and gross negligence” sufficient to find a
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`lack of good cause. Id.
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`Here, Registrant states that Petitioner had initiated a related civil action against Registrant,
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`asserting claims of trade dress and design patent infringement concerning the cookware claimed
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`in the Registration. Mot. at 3-4. Notably, the civil action against Registrant does not deal with
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`Registrant’s Mark at all. Rather, that case regards Registrant’s infringement of Petitioner’s trade
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`dress. However, since Registrant believes (incorrectly) that the two actions are related, a
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`reasonable person would anticipate that a Petition to Cancel is likely to be filed and would check
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`all emails provided
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`to
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`the USPTO
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`for
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`such a petition. Despite putting
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`the
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`dctrademarksrecords@us.dlapiper.com email under the “Owner” section of the filed “Change of
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`Address or Representation” for the Registration (the “Change Filing”), Mot. at 3, Registrant paid
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`little to no attention to the inbox of that account. Though the USPTO sent documents to this
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`“Owner” email, and not the “primary email address for correspondence,” even a slight degree of
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`care or diligence would require Registrant’s counsel to check each and every email account
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`provided to the USPTO, regardless of the section of the form where the email was provided.
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`Additionally, a reasonable person exercising a slight degree of care or diligence under these
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`circumstances would be sure to be notified for, or regularly check, each email filed with the
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`USPTO. Many Change of Address or Representation forms are filed with the USPTO each year.
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`Clerical errors by the USPTO are bound to occur due to the sheer number of forms filed, so
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`reasonable action should have been taken to check the inbox of each email account provided to the
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`USPTO.
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`Simply put, Registrant has not established any good cause for its failure to respond to the
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`Petition. Registrant’s choice to take no action for over a month (including but not limited to
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`checking all email accounts listed with the USPTO) shows enough disregard for even a slight
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`degree of care to rise to the level of “gross negligence” sufficient to find a lack of good cause,
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`regardless of whether there is lack of substantial prejudice.
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`B. Registrant Has Not Established a Meritorious Defense To Petitioner’s Grounds
`For Cancellation
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`Petitioner brings three grounds for cancellation of Registrant’s Mark: mere descriptiveness,
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`void ab initio, and fraud. In its Motion, Registrant fails to establish that it has a meritorious defense
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`to the grounds of mere descriptiveness or fraud and, as such, its Motion should be denied.
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`1. Registrant Has No Meritorious Defense To Mere Descriptiveness
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`Registrant argues that Registrant’s Mark is “distinctive and at least suggestive.” Mot. at 5-
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`6. Registrant is incorrect. The word “beautiful” is a common, descriptive adjective as it is used to
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`“immediately convey” the “qualities or characteristics” of goods. Abercrombie, 537 F.2d at 11.
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`Indeed, when a manufacturer or company uses the word “beautiful” for their goods, aesthetic
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`quality is immediately conveyed. Such immediate conveyance of aesthetic quality of the goods,
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`coupled with the fact that the word “beautiful” does not “inherently identify a particular source,”
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`strongly supports Petitioner’s assertion that Registrant’s Mark is “merely descriptive” and
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`therefore cannot be protected. Two Pesos, 505 U.S. at 769.
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`Additionally, Registrant’s Mark does not require any “imagination, thought, [or]
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`perception to reach a conclusion as to the nature of the goods” as necessary to find the mark
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`suggestive. Abercrombie, 537 F.2d at 11. Goods with the mark “beautiful” do not require any
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`imagination or perception to convey such aesthetic quality of the goods. Registrant’s Mark is
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`therefore not suggestive, but rather merely descriptive, and cannot be protected. Accordingly,
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`Registrant lacks a meritorious defense to Petitioner’s Petition to Cancel, sufficient to find a lack
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`of good cause.
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`Registrant’s Mark is not suggestive, but descriptive, and Registrant’s conclusory attempt
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`to show otherwise fails. Registrant has therefore not established that it has a meritorious defense
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`to Petitioner’s claim for cancellation for mere descriptiveness, and its Motion should therefore be
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`denied.
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`2. Registrant Has No Meritorious Defense To Cancellation For Fraud
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`Like its supposed defense to descriptiveness, Registrant fails to establish a meritorious
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`defense to cancellation for fraud. Registrant argues only that Petitioner’s claim is insufficiently
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`pled because certain allegations are pled upon information and belief, without allegations of
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`“specific facts upon which the belief is reasonably based.” Mot. at 8. Not so, Petitioner has alleged
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`specific facts to support its ground for cancellation for fraud. Specifically, Petitioner has alleged
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`that: (1) “Registrant’s representation that it was using the mark at issue in commerce as of June
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`23, 2021, was false at the time Registrant made it,” Pet. ¶ 25; (2) “Registrant was not actively using
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`the ‘BEAUTIFUL’ mark [as of] June 23, 2021,” id. ¶ 26; (3) “Registrant was not actively using
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`the ‘BEAUTIFUL’ mark in connection with all of the services recited in Registrant’s application
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`in U.S. commerce as of June 23, 2023, when it filed the statement of use and specimen,” id. ¶ 27;
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`and (4) “Registrant falsely represented its use of the ‘BEAUTIFUL’ mark in commerce with the
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`intent to mislead the USPTO and to cause the USPTO to issue Registrant’s Registration.” Id. ¶ 28.
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`While these allegations may be alleged upon information and belief, they include specific facts
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`to support cancellation on the ground of fraud. These are not “bare recitals of the elements of
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`fraud” as Registrant argues. Mot. at 9. This is not an instance in which Petitioner merely alleged,
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`for example, “upon information and belief, Registrant committed fraud.” Petitioner has pled
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`allegations of fact identifying the exact misrepresentation made, when, how, and to whom.
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`Accordingly, Registrant’s supposed “meritorious defense” to Petitioner’s claim for
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`cancellation for fraud is without merit. As such, Registrant’s Motion should be denied.
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`C. Registrant’s Delay In Responding To The Petition Has Prejudiced Petitioner
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`Registrant’s over 40-day delay in responding to the Petition substantially prejudiced
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`Petitioner. For instance, in KPS & Assocs., Inc. v. Designs By FMC, Inc., the registrant argued that
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`they had a meritorious defense which weighed in favor of setting aside the default, but the court
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`declared that the registrant was “stonewalling” and “merely trying to postpone the inevitable.” 318
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`F.3d 1, 14–15 (1st Cir. 2003). Though “delay itself does not constitute prejudice,” the issue is not
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`“mere delay” but rather “its accompanying dangers” such as “increased difficulties” and
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`“enhanced opportunity for fraud or collusion.” Id. (citing FDIC v. Francisco Inv. Corp., 873 F.2d
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`474, 479 (1st Cir.1989)). Here, Registrant’s over 40-day delay in response, which is likely an
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`attempt to postpone the inevitable cancellation, caused such delay as to open the door for the
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`accompanying dangers and increased difficulties that interfere with, and are inconsistent with, the
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`“orderly administration of justice,” causing substantial prejudice to Petitioner.
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`As such, the Motion should be denied.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests Registrant’s Motion to Set Aside
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`Default be denied.
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`Date: June 24, 2024
`New York, New York
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`By: /s/ Serge Krimnus
`Ariel Reinitz, Esq.
`Serge Krimnus, Esq.
`Andrew D. Bochner, Esq.
`John A. Rossler, Esq.
`1040 Avenue of the Americas
`15th Fl.
`New York, NY 10018
`Office: 646-971-0685
`serge@bochner.law
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`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing is being sent via email on June 24, 2024
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`to Registrant’s email address of record at:
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`michael.geller@dlapiper.com
`keith.medansky@dlapiper.com
`tamar.duvdevani@dlapiper.com
`marc.miller@dlapiper.com
`ch.tm@dlapiper.com
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`/s/ Serge Krimnus
`Serge Krimnus
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