Trademark Trial and Appeal Board P.O.

The request to extend time to oppose is granted until 08/22/2020 on behalf of potential opposer Padraic McFreen.

Trademark Trial and Appeal Board P.O.

The request to extend time to oppose is granted until 08/22/2020 on behalf of potential opposer Padraic McFreen.

Specifically, Petitioner’s Response remains silent on Respondent’s attack on Petitioner’s standing based on the fact it “…did not have a bona fide intent to use the applied-for mark in commerce at the time of the filing date of its mark’s application.” 14 TTABVUE 3.

The TTAB has well established that “[d]etermining whether a complaint states a plausible claim for relief will…be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Lewis Silkin LLP v. Firebrand LLC, Cancellation No. 9206737, 14 TTABVUE 2 [precedential], quoting Ashcroft v. Iqbal, 556 U.S. at 679.

Specifically, “[t]he plausibility standard ‘does not impose a probability requirement at the pleading stage; it simply calls for enough facts to raise a reasonable expectation that discovery will reveal evidence’ to support the [Petitioner’s] Opposition No. 91265543 allegations.” Nalco v. Chem-Mod, LLC, 883 F.3d 1337, 1350 (Fed. Cir. Feb. 27, 2018), (quoting Twombly, 550 U.S. at 556).

Simplicity, either explicitly or implicitly referenced in the language of the holding, speaks more to the subject patented device, than it does to the nature of pleadings generally.

Additionally, this first impression case addressed the question of a disclaimer of goods and services for a registered mark, with a registration period in excess of five years.

P. 12(b)(6) and TBMP § 503 on the grounds that (i) Applicant’s counterclaims failed to state a claim for which relief could be granted; and (ii) Applicant lacked standing to petition for the cancellation of Opposer’s pleaded registrations.

As the Board has recently had occasion to clarify in its precedential opinion in Lewis Silkin LLP v. Firebrand LLC, Iqbal/Twombly “does not establish a per se pleading standard.” Cancellation No. 9206737, 14 TTABVUE 3, 13 (determining that all that is required for a legally sufficient abandonment claim is to plead that Respondent is not using the mark with its good and services and has no intent to resume use, and therefore denying Respondent’s motion to dismiss) [precedential].

Rather, “‘[d]etermining whether a complaint states a plausible claim for relief will ... be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.’” Id., quoting Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009).

In the context of a petition to cancel based on abandonment, it is sufficient to simply plead that the registrant is not using the mark with its goods and/or services and has no intent to resume use.

In this case, Applicant has satisfactorily pleaded its counterclaims for the cancellation of Opposer’s pleaded registrations by alleging that Opposer “is not using and has no intent to resume use of [Opposer’s] Marks in connection with the goods identified in the Registrations” and further that Opposer “has not made use of [Opposer’s] Marks in connection with the goods identified in the Registrations for at least three consecutive years prior to the commencement of the Opposition.” 4 TTABVUE 5.

P. 12(b)(6) and TBMP § 503, Padraic McFreen (“Respondent”) respectfully moves The Trademark Trial and Appeal Board (“TTAB”) to dismiss YukBGone, LLC’s (“Petitioner”) Counterclaims For Cancellation of U.S.

Petitioner makes unsubstantiated naked assertions as well as conclusionary statements leaving the TTAB with nothing more to accept as true.

Registration No. 4229934 as well as a requirement to disclaim the wording “SPRAY” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose or use of Petitioner’s good’s and/or services.

Opposition No. 91265543 Under Trademark Act Section 14, Petitioner should have alleged that cancellation of the Respondent’s “registrations was within the zone of interests protected by the statute and that it has a reasonable belief of damage proximately caused by the continued registration of Respondent’s marks.” Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *5 (TTAB 2020).

Petitioner’s Petition contains no allegations beyond mere substandard recitals and fails to meet the requirements established to support a claim for the relief its seeking.

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Padraic McFreen (“Opposer”) respectfully moves the Trademark Trial And Appeal Board (“Board”) to suspend these proceedings (“Motion”).

Pursuant to: Federal Rules of Civil Procedure, specifically, 37 C.F.R. § 2.117, Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), specifically, TBMP 510.03; and TTAB precedent, Opposer has good cause.

Applicant has been informed of Opposer’s intent to move this Board for suspension.

Based upon the aforementioned, Opposer respectfully requests the Trademark Trial And Appeal Board to grant Opposer’s Motion.

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Padraic McFreen (“Opposer”) respectfully moves the Trademark Trial And Appeal Board (“Board”) to suspend these proceedings (“Motion”).

Pursuant to: Federal Rules of Civil Procedure, specifically, 37 C.F.R. § 2.117, Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), specifically, TBMP 510.03; and TTAB precedent, Opposer has good cause.

Applicant has been informed of Opposer’s intent to move this Board for suspension.

Based upon the aforementioned, Opposer respectfully requests the Trademark Trial And Appeal Board to grant Opposer’s Motion.

1 Application Serial No. 86786555, filed on October 13, 2015, based on Applicant’s declared intent to use the mark in commerce on the goods pursuant to Trademark Act Section 1(b), 15

and in support of his claim, Opposer pleaded ownership of Registration No. 4539050 for his MIVU mark for “computer software and hardware for use with associated network of Internet connected devices, to collect, aggregate, analyze, transform, prioritize, and distribute content of any type across electronic systems

Opposition No. 91228289 “E” is too insignificant to avoid confusion, because the parties’ marks both use the configuration of a capital “M” and “V” with the remaining letters in lowercase.9 Opposer further asserts that he identified instances of actual confusion on YouTube by “above average purchasers.”10 Opposer also contends that both parties’ goods “are computer software and computer hardware based goods.”11 In support of his assertion, Opposer argues that Applicant’s goods use computer software or hardware, relying on his own professional knowledge and assessment, “commonly agreed upon conventions” taken from various industry publications and writings, and third party registrations “for marks used on computer software and computer hardware based goods identical to Applicant’s goods.”12 Opposer further contends that neither party has restricted their recited or pleaded goods, channels of trade or classes of purchasers, and that “both parties utilize online Internet-based outlets, Internet stores and direct sales channels.”13 Opposer further asserts that there is an overlap in their customers.14 In response, Applicant contends that Opposer’s mark is weak and therefore only entitled to a narrow scope of protection.

There are also genuine disputes of material fact as to the similarity of the goods, their channels of trade, and the conditions under which the sales are made, including the sophistication of the relevant consumers.

The parties may stipulate to a wide variety of matters, and many requirements relevant to the trial phase of Board proceedings are set forth in Trademark Rules 2.121 through 2.125.

The court makes it clear that “…Iqbal must plead sufficient factual matter to show that petitioners adopted and implemented the detention policies at issue not for a neutral, investigative reason, but for the purpose of discriminating on account of race, religion, or natural origin.” This is a requirement for specific factual content.

The court went further by stating, “…[u]nder Federal Rule of Civil Procedure 8(a)(2), a complaint must contain a ‘short and plain statement of the claim showing that the pleader is entitled to relief’…detailed factual allegations are not required.” Further stating “…the Rule does call for sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.” Twombly 550 U.S., at 570.

Though the Board here acknowledges the application of the court’s holding, it ignores the court’s position concerning “threadbare recitals of a cause of action’s elements, supported by mere conclusory statements.” Id., at 555.

Opposition No. 91265543 In its reliance on Twombly, the Board should adopt the holding in its entirety, and not filter or dilute the brilliance of the court’s decision.

For the forgoing reasons, Respondent respectfully requests the Board reconsider its denial and reverse its order denying Respondent’s Motion.

Specifically, if the TTAB denies Opposer’s instant motion, Opposer will, then, need to expend additional time and resources addressing the merits of applicant’s unfair pleading in discovery and at summary judgment or trial.

4 The instant opposition proceeding is of the type envisioned by the architects of the Trademark Modernization Act, signed into law, December 27, 2020.

Opposition No. 91265543 Going further with Order of Sons of Italy in America, there the TTAB indeed did strike two of the applicant’s affirmative defenses that were legally insufficient and redundant.

The surviving affirmative defense gave the opposer “more complete notice of applicant’s position” and clear indication of the type of evidence it may seek to introduce at trial.

Applicant’s relied upon precedent clearly establishes a standard for striking those pleadings that fail to provide full notice of the basis for a claim or defense.

Procedural Background YukBGone seeks to register the standard character marks, YUK MOP, for “mops” and other floor cleaning products in International Class 21,3 and YUK WIPES, for “[w]ipes impregnated with a cleaning preparation,” and other surface cleaners in International Class 3.4 Mr. McFreen opposes registration of YukBGone’s involved marks on grounds of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1152(d), with its three registered marks,5 and mere descriptiveness under Trademark Act Section 2(e)(1), 15 U.S.C. § 1152(e)(1).

Default is Set Aside The Board construes Mr. McFreen’s arguments in his motion to dismiss as to why YukBGone has failed to state a claim for relief in its counterclaims as a general denial of the allegations therein.

6 Board decisions have previously analyzed the requirements of Section 14 of the Trademark Act, 15 U.S.C. § 1064, under the rubric of “standing.” We now refer to this inquiry as entitlement to bring whatever statutory cause of action is at issue.

A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.

In Lewis Silkin, the Board found allegations that “Respondent is not using the mark with its goods and services, and has no intent to resume use,” similar to those here, were not merely conclusory, but rather, pleaded a legally sufficient claim of abandonment.

Applicant YukBGone, LLC (“Applicant” or “YukBGone”), by its counsel, hereby responds to Opposer’s December 7, 2020, Motion to Strike Applicant’s Answer, Paragraph 11, as follows: Background On October 21, 2020, Opposer Padraic McFreen (“Opposer”) filed a Notice of Opposition (the “Notice”) with the Board, formally opposing registration of Applicant’s YUK WIPES trademark (“Applicant’s Mark”) and the Board instituted the present Opposition Proceeding (the “Opposition”).

Motions to strike are a drastic and severe remedy and, inasmuch as the primary purpose of pleadings under the Federal Rules of Civil Procedure is to give fair notice of the claims or defenses asserted, see id., the Board may decline to strike even objectionable pleadings if their inclusion will not prejudice the adverse party, but rather will provide fuller notice of the basis for a claim or defense.

Indeed, Applicant has done no more than respond to Opposer’s allegations, as is required of an Answer, see 37 C.F.R. §2.106(b)(2) (“An answer shall state in short and plain terms the applicant’s defenses to each claim asserted and shall admit or deny the averments upon which the opposer relies.”), and to explain that, contrary to Opposer’s explicit and implicit allegations, Applicant’s Mark is not descriptive and therefore never required a Section 2(f) claim of acquired distinctiveness.

Applicant is frankly at a loss to understand what about this statement Opposer feels is prejudicial, or what harm he will suffered as a result of its inclusion.

As is discussed in greater detail supra, the content of Applicant’s Answer, Paragraph 11 bears directly upon the issues of the case raised by Opposer himself in his Notice, namely, whether or not Applicant’s Mark is descriptive, and, if so, whether or not it has acquired distinctiveness.

Applicant/Counterclaim Petitioner YukBGone, LLC (“Applicant” or “YukBGone”), by its counsel, hereby responds to Opposer/Counterclaim Respondent’s December 7, 2020, Motion to Strike Applicant’s Answer, Paragraph 11, as follows: Background On October 21, 2020, Opposer/Counterclaim Respondent Padraic McFreen (“Opposer”) filed a Notice of Opposition (the “Notice”) with the Board, formally opposing registration of Applicant’s YUK MOP trademark (“Applicant’s Mark”) and the Board instituted the present Opposition Proceeding (the “Opposition”).

Motions to strike are a drastic and severe remedy and, inasmuch as the primary purpose of pleadings under the Federal Rules of Civil Procedure is to give fair notice of the claims or defenses asserted, see id., the Board may decline to strike even objectionable pleadings if their inclusion will not prejudice the adverse party, but rather will provide fuller notice of the basis for a claim or defense.

Indeed, Applicant has done no more than respond to Opposer’s allegations, as is required of an Answer, see 37 C.F.R. §2.106(b)(2) (“An answer shall state in short and plain terms the applicant’s defenses to each claim asserted and shall admit or deny the averments upon which the opposer relies.”), and to explain that, contrary to Opposer’s explicit and implicit allegations, Applicant’s Mark is not descriptive and therefore never required a Section 2(f) claim of acquired distinctiveness.

Applicant is frankly at a loss to understand what about this statement Opposer feels is prejudicial, or what harm he will suffered as a result of its inclusion.

As is discussed in greater detail supra, the content of Applicant’s Answer, Paragraph 11 bears directly upon the issues of the case raised by Opposer himself in his Notice, namely, whether or not Applicant’s Mark is descriptive, and, if so, whether or not it has acquired distinctiveness.

Opposition No. 91228289 • Opposer Has Priority o Empresa Cubana Del Tabaco v. Gen Cigar Co., 753 F.3d 1270 o Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002) o King NASDAQ Stock Market Inc. v. Antarctica S.r.L., 69 USPQ2d 1718, 1726 (TTAB 2003) • Marks And Goods Are Legally Related o B&B Hardware, Inc. v. Hargis Ind., Inc.113 USPQ2d (BNA) 2045, In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406

o M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378 o Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202 o TMEP § 1207.01 (b) (iii) o Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 o Coach Servs., Inc. v. Triumph Learning, LLC, 668 F.3d 1356 In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009)

• Applicant began using its applied-for Mark, MIVUE, on its computer software and hardware based goods in the United States before August 8, 2016, the date it submitted its Answer.

• Camcorders, cameras, time recording devices, radar detectors, satellite navigational systems, GPS, satellite global positioning receivers, GPS tracking devices for tracking vehicles and ships, speedometers, directional compasses, velocimeters, stabilizers, gradient indicators, software and apparatus for measuring distance, speed and indicating direction are computer software and computer hardware based goods.

Opposer’s goods are comprised of computer software and hardware, electronic systems and both parties utilize online Internet-based outlets, Internet stores and direct sales channels.

Opposition No. 91228289 • Opposer Has Priority o Empresa Cubana Del Tabaco v. Gen Cigar Co., 753 F.3d 1270 o Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002) o King NASDAQ Stock Market Inc. v. Antarctica S.r.L., 69 USPQ2d 1718, 1726 (TTAB 2003) • Marks And Goods Are Legally Related o B&B Hardware, Inc. v. Hargis Ind., Inc.113 USPQ2d (BNA) 2045, In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406

o M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378 o Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202 o TMEP § 1207.01 (b) (iii) o Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 o Coach Servs., Inc. v. Triumph Learning, LLC, 668 F.3d 1356 In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009)

• Applicant began using its applied-for Mark, MIVUE, on its computer software and hardware based goods in the United States before August 8, 2016, the date it submitted its Answer.

• Camcorders, cameras, time recording devices, radar detectors, satellite navigational systems, GPS, satellite global positioning receivers, GPS tracking devices for tracking vehicles and ships, speedometers, directional compasses, velocimeters, stabilizers, gradient indicators, software and apparatus for measuring distance, speed and indicating direction are computer software and computer hardware based goods.

Opposer’s goods are comprised of computer software and hardware, electronic systems and both parties utilize online Internet-based outlets, Internet stores and direct sales channels.