ESTTA Tracking number:
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`ESTTA1399413
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`Filing date:
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`12/03/2024
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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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`92086581
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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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`Attachments
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`Defendant
`Douglas Kohlberg French
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`DOUGLAS KOHLBERG FRENCH
`CALLE CRESPO #213
`OAXACA, OAXACA, 68000
`MEXICO
`Primary email: scorpionmezcal@yahoo.com
`No phone number provided
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`Motion to Dismiss - Rule 12(b)
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`Sheryl De Luca
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`sld@nixonvan.com, nixonptomail@nixonvan.com
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`/Sheryl De Luca/
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`12/03/2024
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`5120-22.motion to dismiss Petition.pdf(438434 bytes )
`Anderson v Kimberly-Clark.pdf(268990 bytes )
`In Re Centruro ttabvue-77946053-EXA-13.pdf(134849 bytes )
`Status Search SN 78586170.pdf(642486 bytes )
`Status Search SN 78842776.pdf(534560 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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`v.
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`Respondent.
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`5120-22
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`
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`Cancellation No. 92086581
`Reg. Nos. 6603368, 6827887, 7327591
`Marks: ALACRAN
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`)
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`)
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`La Botella Negra, S.A.P.I. de C.V.,
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`
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`Douglas Kohlberg French,
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`MOTION TO DISMISS WITH INCORPORATED BRIEF
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`Pursuant to Fed.R.Civ.P. 12(b)(6), 37 C.F.R. §2.127 and TBMP §503, Douglas
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`Kohlberg French (“Respondent”), through his undersigned attorneys, respectfully moves
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`the Trademark Trial and Appeal Board (the “Board”) for an order dismissing the Petition
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`for Cancellation of La Botella Negra, S.A.P.I. de C.V. (“Petitioner”), for failure to state a
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`claim upon which relief can be granted.
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`Petitioner’s pleadings do not comprise allegations containing sufficient factual
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`matter, accepted as true, to state a claim to relief that is plausible on its face.
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`I.
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`Factual Background
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`On October 23, 2024, Petitioner filed a petition to cancel Registration Nos.
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`6603368, 6827887 and 7327591 all for the marks ALACRAN, in the USPTO. On
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`October 24, 2024, the Board instituted the proceeding. Respondent’s due date to
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`respond to the Petition is December 3, 2024. Respondent has not yet filed a response
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`to the Petition.
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`II.
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`Legal Standard
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`A motion to dismiss for failure to state a claim upon which relief may be granted
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`is a test of the legal sufficiency of the complaint. Advanced Cardiovascular Sys. Inc. v.
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`SciMed Life Sys. Inc., 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); NSM Research Corp. v.
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`Microsoft Corp., 113 USPQ2d 1029, 1032 (TTAB 2014); TBMP § 503.02 (June 2024).
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`To state a claim upon which relief may be granted, Petitioner need allege such
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`facts which, if proven, would establish that: (1) the Plaintiff has an entitlement to a
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`statutory cause of action under Trademark Act Section 14, 15 U.S.C. § 1064; and (2) a
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`valid ground exists for cancelling the subject registrations. See Doyle v. Al Johnson’s
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`Swedish Rest. & Butik Inc., Can. No. 92054059, 2012 TTAB LEXIS 30, at *4 (TTAB
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`2012); IdeasOne, Inc. v. Nationwide Better Health, Inc., Can. No. 92049636, 2009
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`TTAB LEXIS 86, at *3 (TTAB 2009).
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`To survive a motion to dismiss, a complaint “must contain sufficient factual
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`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft
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`v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,
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`570 (2007)). 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
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`conclusory statements.” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 555).
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`In reviewing a complaint, all well-pleaded material allegations are accepted as
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`true and construed in favor of the complaining party. See, e.g., Ritchie v. Simpson, 170
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`F.3d 1092, 1097 (Fed. Cir. 1999); Advanced Cardiovascular Sys. Inc. v. SciMed Life
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`Sys. Inc., 988 F.2d 1157, 1160-61 (Fed. Cir. 1993); Doyle, 2012 TTAB LEXIS 30, at *5.
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`Determining whether a complaint states a plausible claim for relief is “a context-
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`specific task that requires the reviewing court to draw on its judicial experience and
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`2
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`common sense.” Iqbal. at 679. Iqbal also instructs that “[a] court considering a motion
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`to dismiss may begin by identifying allegations that, because they are mere
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`conclusions, are not entitled to the assumption of truth. While legal conclusions can
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`provide the complaint's framework, they must be supported by factual allegations.”
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`Iqbal, 556 U.S. at 664.
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`A claim has facial plausibility when the plaintiff pleads factual content that allows
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`the court to draw the reasonable inference that the defendant is liable for the
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`misconduct alleged. Iqbal, 556 U.S. at 678. The plausibility standard is not akin to a
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`“probability requirement,” but it asks for more than a sheer possibility of the allegations
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`asserted. Id.
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`Although “[a]ll allegations of material fact are taken as true and construed in the
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`light most favorable to the nonmoving party,” a “court need not [ ] accept as true
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`allegations that contradict matters properly subject to judicial notice or by exhibit.”
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`Anderson v. Kimberly-Clark Corp., 570 F. App'x 927, 931–32 (Fed. Cir. 2014)
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`(nonprecedential)1, citing Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th
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`Cir.2001). “Nor is the court required to accept as true allegations that are merely
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`conclusory, unwarranted deductions of fact, or unreasonable inferences.” Kimberly-
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`Clark Corp, 570 F. App'x 927 at 932; see also Iqbal, 556 U.S. at 678–79. Further, it is
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`not bound to accept as true a legal conclusion couched as a factual allegation.
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`Twombly, 550 U.S. at 555.
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`In evaluating a Rule 12(b)(6) motion, a court may rely on documents outside the
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`pleadings if they are integral to the plaintiff's claims and their authenticity is not
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`1 Copy attached.
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`3
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`disputed. Kimberly-Clark Corp, 570 F. App'x 927 at 932, citing Parrino v. FHP, Inc., 146
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`F.3d 699, 705–06 (9th Cir.1998), superseded on other grounds as stated in Abrego
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`Abrego v. The Dow Chem. Co., 443 F.3d 676, 681 (9th Cir.2006). The Board may also
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`rely on matters subject to judicial notice. Kimberly-Clark Corp, 570 F. App'x 927 at 932,
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`(citation omitted).
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`Dismissal of the petition is appropriate "if it is clear that no relief could be granted
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`under any set of facts that could be proved consistent with the allegations." Abbott
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`Labs. v. Brennan, 952 F.2d 1346, 1353, 21 USPQ2d 1192, 1198 (Fed.Cir.1991)
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`(citations and internal quotations omitted). See also, Dragon Bleu (SARL), 112
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`USPQ2d 1925, 1926 (TTAB 2014)(motion to dismiss applicant’s fraud, non-use and
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`abandonment counterclaims granted).
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`III.
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`Argument
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`The Petition for Cancellation fails to plead sufficient facts relevant to an
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`entitlement to a statutory ground or to a statutory ground to enable the Board to draw
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`the reasonable inference that valid legal grounds exist for the cancellation request
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`lodged by Petitioner.
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`a. Count 1 (Petition, ¶¶ 17-27) - Petitioner Fails to State a Claim of
`Priority and Likelihood of Confusion
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`As to this count, Petitioner alleges, inter alia, that:
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`“Petitioner, through its predecessor-in-interest, has continuously used the
`ALACRÁN mark in connection with spirits and alcoholic beverages in U.S.
`commerce since at least February 10, 2011.” (Petition, ¶ 18)
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`“Respondent cannot establish priority based on the filing date of his 1(b)
`Application because Respondent did not possess the requisite bona fide
`intent to use the ALACRAN mark and/or committed fraud upon the
`USPTO at the time said application was filed.” (Petition, ¶ 19)
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`4
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`“Even assuming, arguendo, that Respondent could rely on the October 5,
`2017 filing date of his 1(b) Application, Petitioner’s actual use of the
`ALACRÁN mark in U.S. commerce long predates October 5, 2017.”
`(Petition, ¶ 20)
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`“Respondent is further precluded from relying on the Statements of Use
`dates as Respondent committed fraud upon the USPTO when submitting
`said statements.” (Petition, ¶ 21)
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`“Even if Respondent were permitted to rely on the Statements of Use
`dates for priority purposes, Petitioner’s actual use of the ALACRÁN mark
`long predates any of Respondent’s alleged dates of first use in U.S.
`commerce.” (Petition, ¶ 22)
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`“Accordingly, Respondent’s Registrations should be cancelled based on
`Petitioner’s priority in the ALACRÁN mark for spirits and alcoholic
`beverages.” (Petition, ¶ 27)
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`Here, Petitioner’s Count 1 appears to be an attempt to allege fraud in Paragraphs
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`19 and 21. However, adequate pleading of a fraud claim requires an allegation of a
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`specific false statement of material fact that respondent made in obtaining the involved
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`registration with the intent to deceive the USPTO into issuing that registration. See In re
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`Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). An allegation of
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`fraud must assert the elements of fraud with particularity in accordance with Fed. R. Civ.
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`P. 9(b). Under Rule 9(b), together with Fed. R. Civ. P. 11 and USPTO Rule 11.18, “the
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`pleadings [must] contain explicit rather than implied expression of the circumstances
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`constituting fraud.” Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478
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`(TTAB 2009) (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212
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`USPQ 801, 803 (CCPA 1981)). Thus, a party alleging fraud must set out facts which if
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`true, would at least support an inference of deceptive intent. In re Bose, 91 USPQ2d at
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`1942 (fraud standard at trial).
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`5
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`The allegations in Count 1 (although labeled Priority and Likelihood of Confusion)
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`fail to sufficiently set forth a claim of fraud. There is no allegation that constitutes a
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`proper pleading of Respondent’s intent to deceive the Patent and Trademark Office with
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`respect to an issue affecting registration. The claims fail to identify with sufficient
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`particularity the underlying bases for the allegation of fraud, including, but, not limited to
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`what material fact was falsely represented, which specific statements are false or
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`fraudulent; and the underlying basis for intent. To the extent the assertions assert that
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`“Respondent did not possess the requisite bona fide intent to use the ALACRAN mark .
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`. . at the time said application was filed” and thus, “cannot establish priority based on
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`the filing date of his 1(b) Application” as alleged in paragraph 19 of the Petition, they are
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`conclusory and unsupported by factual allegations. Accordingly, for this reason too,
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`Count 1 is insufficiently plead.
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`Petitioner has also failed to sufficiently plead a claim of priority and likelihood of
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`confusion in Count 1. In order to plead a legally sufficient claim of likelihood of
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`confusion, Petitioner is required to plead both priority of use and that Respondent’s
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`mark, as applied to the goods at issue, so resembles the mark previously used by
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`Petitioner as to be likely to cause confusion, mistake, or deception. lntersat Corp. v.
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`International Telecommunications Satellite Organization, 226 USPQ 154 at *2 (TTAB
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`1985). However, Petitioner cannot sufficiently plead the first element of this claim.
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`To properly assert priority, Petitioner must allege facts showing proprietary rights
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`in the mark ALACRAN prior to Respondent’s rights. More specifically, Petitioner must
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`establish it has prior rights to the mark ALACRAN before the filing date of the
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`application underlying Petitioner’s registration or Petitioner’s proven date of first use
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`6
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`(whichever is earlier). See Herbko International Inc. v. Kappa Books, Inc., 308 F.3d
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`1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Here, Petitioner is relying on alleged
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`rights from a predecessor-in-interest. See Petition, ¶¶10, 18. Assuming the
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`predecessor-in-interest of Petitioner is Centruro, S.A. de C.V. (See Exhibit A of
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`TTABVUE-92074109-CAN-31, discussing allegation that Centruro transferred all of its
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`rights, title, and interest in and to eight trademarks to La Botella Negra, including
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`several versions of the mark “Alacran”), then, the TTAB already issued a prior judgment
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`in In re Centruro, S.A. de C.V., Serial No. 77946053 (TTAB March 25, 2019)
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`(TTABVUE-77946053-EXA-13)(See copy attached) denying registration for the mark
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`ALACRAN on the ground of a likelihood of confusion with the Respondent’s Registration
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`No. 3841502 for SCORPION MEZCAL (filed March 21, 2006, registered on August 31,
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`2010; renewed) and Registration No. 4340359 for SCORPION & Design (filed March
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`13, 2005, registered on May 28, 2013; renewed) (see status copies of the registrations
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`attached), based on an application of the doctrine of foreign equivalents. In that
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`decision, the TTAB decision found that ALACRAN is the Spanish word for the English
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`term “scorpion.” The Board can also take judicial notice that Respondent’s Registration
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`Nos. 6603368, 6827887 and 7327591, which are the subject of this proceeding, claim
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`ownership of Respondent’s Registration Nos. 3841502 and 4340359. Accordingly,
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`Petitioner has not and cannot sufficiently plead priority of use because Respondent’s
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`rights were first as per the prior judgment In re Centruro, S.A. de C.V., Serial No.
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`77946053 (TTAB March 25, 2019). Accordingly, the allegations in Count 1 are not
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`plausible. Therefore, Petitioner’s claim for likelihood of confusion fails to state a claim
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`as a matter of law and must be dismissed.
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`7
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`For all the above reasons, the Count 1 for cancellation of Registration Nos.
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`6603368, 6827887 and 7327591 is insufficiently pled.
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`b. Count 2 (Petition, ¶¶ 28-35) – Petitioner Fails to State a Claim of Lack
`of Bona Fide Intent Claim (At the time of filing Section 1(b)
`Application)
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`As to the Second Count Petitioner alleges, inter alia:
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`“Petitioner incorporates the allegations contained in Paragraphs 1 to 27
`herein.” (Petition, ¶ 28)
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`“Petitioner has continuously used the mark ALACRÁN in connection with
`spirits and alcoholic beverages in the United States and Mexico prior to
`the filing date of Respondent’s 1(b) Application.” (Petition, ¶ 29)
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`“Petitioner’s rights in the ALACRÁN mark are superior to Respondent’s
`alleged rights and were known to Respondent prior to the filing date of
`Respondent’s 1(b) Application.” (Petition, ¶ 29)
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`“Respondent’s knowledge of Petitioner’s prior use and superior rights in
`the ALACRÁN mark demonstrates that Respondent lacked a bona fide
`intent to use the mark ALACRAN in U.S. commerce for alcoholic spirits at
`the time Respondent filed the 1(b) Application.” (Petition, ¶ 31)
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`“Respondent filed its Application to reserve rights in a mark that it knew
`was already in use by another party, and to prevent Petitioner from
`registering the mark or otherwise benefiting from the goodwill associated
`with Petitioner’s prior use of the ALACRÁN mark.” (Petition, ¶ 32)
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`“Respondent’s intent at the time of filing Respondent’s Application was not
`genuine or in good faith, but rather was predicated on an intent to disrupt
`or block Petitioner’s use of the ALACRÁN mark.” (Petition, ¶ 33)
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`“Based on the foregoing, Respondent did not have the requisite bona fide
`intent to use the ALACRAN mark in U.S. commerce for alcoholic spirits
`when it filed his 1(b) Application.” (Petition, ¶ 34)
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`“As a result, Respondent’s Registrations for the mark ALACRAN are
`subject to cancellation under Section 1(b) of the Lanham Act for lack of
`bona fide intent to use the mark in commerce at the time of filing the
`Application” (Petition, ¶ 35)
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`8
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`Petitioner’s Count 2 allegations also fail to state a claim. These allegations are
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`unclear, vague and non-specific and make unwarranted deductions. Petitioner has not
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`alleged “enough factual matter … to suggest that [a claim is plausible]” and “raise a right
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`to relief above the speculative level.” Totes-Isotoner Corp. v. U.S., 594 F.3d 1346, 1354
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`(Fed. Cir. 2010). It is unclear if the Count is directed to an ownership issue and/or to a
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`fraud issue. The pleading does not allege a lack of objective evidence of intent on
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`Respondent’s part to use the mark, i.e., it does not allege Respondent does not have
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`documentary evidence to support its bona fide intent to use or that Respondent did not
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`have the capacity to produce the goods identified in the application. Rather, the claims
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`are conclusory in nature, only focusing on Petitioner’s claimed use, and are not
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`plausible in view of the prior judgment In re Centruro, S.A. de C.V., Serial No. 77946053
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`(TTAB March 25, 2019), denying registration for the mark ALACRAN to Petitioner’s
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`assumed predecessor-in-interest on the ground of a likelihood of confusion with the
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`Respondent’s prior Registration No. 3841502 for SCORPION MEZCAL (filed March 21,
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`2006, registered on August 31, 2010) and Registration No. 4340359 for SCORPION &
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`Design (filed March 13, 2005, registered on May 28, 2013), based on an application of
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`the doctrine of foreign equivalents. Notably, in that decision, the TTAB decision found
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`that ALACRAN is the Spanish word for the English term “scorpion.” The Board can also
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`take judicial notice that Respondent’s Registration Nos. 6603368, 6827887 and
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`7327591, the subject registrations of this proceeding, claim ownership of Respondent’s
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`Registration Nos. 3841502 and 4340359. Considering Respondent’s Registration Nos.
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`3841502 and 4340359, Petitioner’s allegations of Count 2 lack plausibility.
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`9
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`The assertions of this Count fail to set forth a sufficient claim of lack of bona fide
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`intent to use and are also conclusory and not plausible because Petitioner does not
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`allege facts which would show Respondent’s alleged knowledge of Petitioner’s use in
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`October 2017 at the time when Respondent filed its application, to support the
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`allegations that Respondent’s intent was “not genuine or in good faith” as alleged in
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`Paragraph 33 of the Petition.
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`Petitioner’s assertions in support of this Count are also not plausible in view of
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`the contradictory information in the Petition, i.e., Petitioner states that Respondent
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`actually filed statements of use alleging use of his mark in commerce for his mark of
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`Registration Nos. 6603368, 6827887 and 7327591 (See Paragraph 7 of the Petition).
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`Thus, there are no specific well-pled allegations of conduct by Respondent that, if
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`proved, would allow Petitioner to prevail on its claim.
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`c. Count 3 (Petition, ¶¶ 36-44) – Petitioner Fails to State a Claim of
`Improper Fraud (At the time of filing Section 1(b) Application)
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`With respect to Petitioner’s third basis for cancellation, Petitioner alleges, inter
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`alia:
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`“Petitioner incorporates the allegations contained in Paragraphs 1 to 35
`herein.” (Petition, ¶ 36)
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`“At the time Respondent filed his verified declaration in support of his 1(b)
`Application, and based on Respondent’s statements under oath in the
`District Court proceedings, Respondent knew that Petitioner’s
`predecessor-in-interest was already using the ALACRÁN mark in
`connection with spirits and alcoholic beverages in the United States.”
`(Petition, ¶ 37)
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`“Respondent also knew that Petitioner’s predecessor-in-interest was the
`rightful owner of the ALACRÁN mark in connection with spirits and
`alcoholic beverages and had legal rights superior to Respondent’s
`because Respondent was aware of Petitioner’s predecessor-in-interest’s
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`10
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`ownership and priority of use of the ALACRÁN mark in connection with
`spirits and alcoholic beverages in the United States” (Petition, ¶ 38)
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`“Respondent also knew that Petitioner’s predecessor-in-interest was the
`owner of trademark registrations for the ALACRÁN mark in connection
`with spirits and alcoholic beverages in Mexico, dating back to 2009.”
`(Petition, ¶ 39)
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`“Respondent has also represented that he had no rights to the ALACRÁN
`mark at the time of filing his verified declaration in the 1(b) Application
`because, according to Respondent’s own statements under oath in the
`District Court proceedings, he does not personally manufacture, import, or
`sell any spirits or alcoholic beverages under the ALACRÁN mark in the
`United States.” (Petition, ¶ 40)
`
`“Further, at the time of filing his verified declaration in support of the 1(b)
`Application, Respondent had no reasonable basis to believe that no
`likelihood of confusion would arise from his registration and use of the
`ALACRÁN mark, given his knowledge of Petitioner’s superior legal
`rights in the ALACRÁN mark.” (Petition, ¶ 41)
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`“In failing to disclose the above facts to the USPTO at the time of filing his
`1(b) Application, Respondent intended to procure the Registrations to
`which it was not entitled.” (Petition, ¶ 42)
`
`“The USPTO’s decision to grant the Registrations was predicated on
`Respondent’s material misrepresentations in his 1(b) Application
`declaration, including his assertions that “the applicant is the owner of the
`mark sought to be registered” and that “no other persons … have the right
`to use the mark in commerce.” (Petition, ¶ 43)
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`“These statements were knowingly false or, at the very least, made with
`reckless disregard for the truth. Accordingly, the Registrations were
`procured through fraud and are therefore void ab initio and subject to
`cancellation pursuant to Sections 14 and 45 of the Lanham Act, 15 U.S.C.
`§§ 1064(3), 1127.”
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`As noted above, an adequate pleading of a fraud claim requires an allegation of
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`a specific false statement of material fact that respondent made in obtaining the
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`involved registration with the intent to deceive the USPTO into issuing that registration.
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`See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). An
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`allegation of fraud must assert the elements of fraud with particularity in accordance
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`11
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`with Fed. R. Civ. P. 9(b). Under Rule 9(b), together with Fed. R. Civ. P. 11 and USPTO
`
`Rule 11.18, “the pleadings [must] contain explicit rather than implied expression of the
`
`circumstances constituting fraud.” Asian and Western Classics B.V. v. Selkow, 92
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`USPQ2d 1478 (TTAB 2009) (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667
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`F.2d 1008, 212 USPQ 801, 803 (CCPA 1981)). Allegations of fraud must allege
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`sufficient underlying facts from which the Board may reasonably infer that Petitioner
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`acted with the requisite state of mind (i.e., intent to deceive). Asian & W. Classics B.V.
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`v. Selkow, 92 USPQ2d 1478, 1479 (TTAB 2009). Thus, a party alleging fraud must set
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`out facts which if true, would at least support an inference of deceptive intent. In re
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`Bose, 91 USPQ2d at 1942 (fraud standard at trial).
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`The allegations in Count 3 fail to sufficiently set forth a claim of fraud for a
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`number of reasons. Petitioner’s assertions are vague and lacking sufficient detail.
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`Specifically, the assertions do not specify which District Court proceedings and which
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`statements of Respondent in such cases are at issue, they do not specify who
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`Respondent’s predecessor-in interest is, or specific details concerning how Respondent
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`allegedly knew that Petitioner’s predecessor-in-interest was allegedly already using the
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`ALACRÁN mark in connection with spirits and alcoholic beverages in the United States.
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`Petitioner does not specify with sufficient specificity how Respondent was allegedly
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`“aware of Petitioner’s predecessor-in-interest’s ownership and priority of use of the
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`ALACRÁN mark in connection with spirits and alcoholic beverages in the United
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`States,” as alleged in Paragraph 38 of the Petition. The assertions regarding
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`Respondent’s alleged knowledge of Petitioner’s predecessor-in-interest’s rights
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`regarding marks in Mexico in Paragraph 39 of the Petition also lack specificity as to who
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`12
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`the predecessor-in-interest is and, in any case, do not support Petitioner’s rights in the
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`United States. Specifically, the assertions made in Paragraphs 37 and 40 of the
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`Petition fail to give any specificity about which District Court proceedings and which
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`statements of Respondent are of issue. The allegations in Paragraphs 37 and 40 of the
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`Petition also fail to provide specific facts regarding the nature of Respondent’s alleged
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`knowledge of Petitioner’s alleged superior legal rights in the ALACRAN mark. The
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`assertions of this Count are also conclusory and not plausible because Petitioner fails to
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`set forth sufficient facts in the Petition that show Respondent had knowledge of
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`Petitioner’s alleged use in October 2017 at the time Respondent filed its Application
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`Serial No. 87/635,679. Thus, Petitioner fails to allege facts sufficient to support the
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`conclusion that Respondent, when filing its application in 2017 acted with the alleged
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`requisite state of mind as alleged in Paragraphs 43 and 44 regarding alleged material
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`misrepresentations.
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`In addition to lacking the required specificity to plead fraud, the allegations in
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`Count 3 are not plausible considering the Respondent’s prior rights vis-à-vis his
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`registered marks of Registration No. 3841502 for SCORPION MEZCAL (filed March 21,
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`2006, registered on August 31, 2010; renewed) and Registration No. 4340359 for
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`SCORPION & Design (filed March 13, 2005, registered on May 28, 2013; renewed),
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`which were filed many years prior to any alleged use by the Petitioner. The Board can
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`also take judicial notice that Respondent’s Registration Nos. 6603368, 6827887 and
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`7327591 assert ownership of its Registration Nos. 3841502 and 4340359 and that the
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`TTAB in In re Centruro, S.A. de C.V., Serial No. 77946053 (TTAB March 25, 2019)
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`denied registration for the mark ALACRAN to Petitioner’s assumed predecessor-in-
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`interest on the ground of a likelihood of confusion with the Respondent’s Registration
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`Nos. 3841502 and 4340359 based on an application of the doctrine of foreign
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`equivalents, finding that ALACRAN is the Spanish word for the English term “scorpion.”
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`Thus, are no specific well-pled allegations of conduct by Respondent that, if
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`proved, would allow Petitioner to prevail on its Fraud claim of Count 3.
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`d) Count 4 – Petitioner Fails to State a Claim of Fraud (At the time of
`filing Statements of Use) (Petition, ¶¶ 45-53)
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`With respect to Petitioner’s fourth basis for cancellation, Petitioner alleges, inter
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`alia:
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`“Petitioner incorporates the allegations contained in Paragraphs 1 to 44
`herein.” (Petition, ¶ 45)
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`“At the time Respondent submitted Statements of Use under 15 U.S.C. §
`1051(d), and based on Respondent’s sworn declaration in the District
`Court proceedings, Respondent knew that Petitioner’s predecessor-in-
`interest was using the ALACRÁN mark in connection with spirits and
`alcoholic beverages in the United States.” (Petition, ¶ 46)
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`“Respondent also knew that Petitioner’s predecessor-in-interest was the
`rightful owner of the ALACRÁN mark in connection with spirits and
`alcoholic beverages and had legal rights superior to Respondent’s
`because Respondent was aware of Petitioner’s predecessor-in-interest’s
`ownership and priority of use of the ALACRÁN mark in connection with
`spirits and alcoholic beverages in the United States at the time of
`submitting the Statements of Use.” (Petition, ¶ 47)
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`“Respondent also knew that Petitioner’s predecessor-in-interest was the
`owner of trademark registrations for the ALACRÁN mark in connection
`with spirits and alcoholic beverages in Mexico, dating back to 2009.”
`(Petition, ¶ 48)
`
`“Respondent has also represented that he had no rights to the ALACRÁN
`mark at the time of submitting the Statements of Use because, according
`to Respondent’s own statements under oath in the District Court
`proceedings, he does not personally manufacture, import, or sell any
`spirits or alcoholic beverages under the ALACRÁN mark in the United
`States.” (Petition, ¶ 49)
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`“Further, at the time of submitting the Statements of Use, Respondent had
`no reasonable basis to believe that no likelihood of confusion would arise
`from his registration and use of the ALACRÁN mark, given his knowledge
`of Petitioner’s superior legal rights in the ALACRÁN mark.” (Petition, ¶ 50)
`
`“In failing to disclose the above facts to the USPTO at the time of
`submitting the Statements of Use, Respondent intended to procure the
`Registrations to which it was not entitled.” (Petition, ¶ 51)
`
`“The USPTO’s decision to grant the Registrations was predicated on
`Respondent’s material misrepresentations in the Statements of Use,
`including his assertions that “the applicant is the owner of the mark sought
`to be registered” and that “no other persons … have the right to use the
`mark in commerce.” (Petition, ¶ 52)
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`“These statements were knowingly false or, at the very least, made with
`reckless disregard for the truth. Accordingly, the Registrations were
`procured through fraud and are therefore subject to cancellation pursuant
`to Sections 14 and 45 of the Lanham Act, 15 U.S.C. §§ 1064(3), 1127.”
`(Petition, ¶ 53)
`
` As noted above, an adequate pleading of a fraud claim requires an allegation of
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`a specific false statement of material fact that respondent made in obtaining the
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`involved registration with the intent to deceive the USPTO into issuing that registration.
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`See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). An
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`allegation of fraud must assert the elements of fraud with particularity in accordance
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`with Fed. R. Civ. P. 9(b). Under Rule 9(b), together with Fed. R. Civ. P. 11 and USPTO
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`Rule 11.18, “the pleadings [must] contain explicit rather than implied expression of the
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`circumstances constituting fraud.” Asian and Western Classics B.V. v. Selkow, 92
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`USPQ2d 1478 (TTAB 2009) (citing King Auto., Inc. v. Speedy Muffler King, Inc., 667
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`F.2d 1008, 212 USPQ 801, 803 (CCPA 1981)). Thus, a party alleging fraud must set
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`out facts which if true, would at least support an inference of deceptive intent. In re
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`Bose, 91 USPQ2d at 1942 (fraud standard at trial).
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`The allegations in Count 4 fail to sufficiently set forth a claim of fraud for a
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`number of reasons. Petitioner’s assertions are vague and lacking sufficient detail.
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`Specifically, the assertions do not specify which District Court proceedings and which
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`statements of Respondent in such cases are at issue. They do not specify who
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`Respondent’s predecessor-in interest is, or specific details concerning how Respondent
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`allegedly knew that Petitioner’s predecessor-in-interest was already using the
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`ALACRÁN mark in connection with spirits and alcoholic beverages in the United States.
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`Petitioner does not specify with sufficient specificity how Respondent was allegedly
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`“aware of Petitioner’s predecessor-in-interest’s ownership and priority of use of the
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`ALACRÁN mark in connection with spirits and alcoholic beverages in the United
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`States,” as alleged in Paragraph 47 of the Petition. The assertions regarding
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`Respondent’s alleged knowledge of Petitioner’s predecessor-in-interest’s rights
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`regarding marks in Mexico in Paragraph 48 of the Petition also lack specificity as to who
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`the predecessor-in-interest is and, in any case, do not support Petitioner’s rights in the
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`United States. The assertions made in Paragraphs 46 and 49 of the Petition also fail to
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`give any specificity about which District Court proceedings and which statements of
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`Respondent are of issue. The allegations in Paragraph 46 and 49 of the Petition also
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`fail to provide specificity regarding the nature of Respondent’s alleged knowledge of
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`Petitioner’s alleged superior legal rights in the ALACRAN mark.
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`The assertions of this Count are also conclusory and not plausible because
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`Petitioner does not set forth specific facts in the Petition to support Respondent’s
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`alleged knowledge of Petitioner’s alleged use at the times Respondent filed its
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`Statements of Use. Thus, Petitioner fails to allege facts sufficient to support the
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`conclusion that Respondent, when filing its Statements of Use acted with the alleged
`
`requisite state of mind as alleged in Paragraphs 52 and 53 of the Petition regarding
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`alleged material misrepresentations.
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`In addition to lacking the required specificity to plead fraud, the allegations in
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`Count 4 are not plausible considering the Respondent’s prior rights vis-à-vis his
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`registered marks of Registration No. 3841502 for SCORPION MEZCAL (filed March 21,
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`2006, registered on August 31, 2010; renewed) and Registration No. 4340359 for
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`SCORPION &