TrademarkTrialandAppealBoardElectronicFilingSystem - PDF document

1 TrademarkTrialandAppealBoardElectronicFi
TrademarkTrialandAppealBoardElectronicFilingSystem. http://estta.uspto.gov ESTTATrackingnumber:Filingdate:INTHEUNITEDSTATESPATENTANDTRADEMARKOFFICEBEFORETHETRADEMARKTRIALANDAPPEALBOARD Proceeding 91229885 Party NudeSkincareLimited Correspondence JENNIFERLBARRYLATHAM&WATKINSLLP12670HIGHBLUFFDRIVESANDIEGO,CA92130UNITEDSTATESjennifer.barry@lw.com,ipdocket@lw.com,alethia.corneil@lw.com Submission MotiontoDismiss-Rule12(b) Filer'sName JenniferL.BarryofLatham&Watkins Filer'se-mail jennifer.barry@lw.com,allison.blanco@lw.com,alethia.corneil@lw.com,ipdock- Signature /JenniferL.Barry/ Date 11/30/2016 Attachments 2016_11_30_MotiontoDismissCounterclaim_Opposition91229885.pdf(33706bytes) DOCS73666518.1IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDIn reApplicationNo. 86/593436 Filed: April 10, 2015 Published: March 8, 2016 For: NUDUNUDE Skincare Limitedan English limited company, ) ) Oppose ) v. ) ) The Happiness Group, Inc., ) Cayman Islands corporation, ) ) Applicant. ) ) OPPOSER’S MOTION TO DISMISS COUNTERCLAIMPETITION TO CANCEL Introduction Opposer NUDE Skincare LimitedNudeand its predecessor entities have been marketing and selling a prestige line of beauty products under the NUDE brand for several years, including through the popular retail store Sephora. Nude learned of an application pending with the USPTO for the mark NUDU for use on

2 identical types of beauty products filed
identical types of beauty products filed by Applicant The Happiness Group, Inc. (“THGI”). Given the near identity in the names and the identical goods, Nude anticipated that there would be confusion in the marketplace and thus filed an opposition to the application. Rather than simply respond to the Notice of Opposition on its merits, and faced with an incontestable registration,THGI filed a threadbare Counterclaim requesting cancellation of Opposition No. 91229885 DOCS73666518.1 2 Nude’s registration for the NUDE word mark on the bases of abandonment and genericness, in transparent attempt todrive up litigation costs and intimidate Nude into dropping its opposition. The entire Counterclaim consists of 6 paragraphs, only 3 of which actually address the cancellation claims. Indeed, the Counterclaim for abandonment consists of a single sentence. These skeletal recitations do not rise to the level of a cognizable claim and therefore should be dismissed without leave to amend pursuant to Federal Rule of Civil Procedure 12(b)(6) and 37 C.F.R. § 2.127.Background Nude filed a Notice of Opposition on September 2, 2016 against THGI’s application for the mark NUDU in Class 3 (skincare), based in part on Opposer’s Registration No. 3,476,728 (the ‘728 Registration) for the word mark NUDE in Classes 3 (skincare) and 35 (retail serviceDkt. #1. THGI filed an Answer to the Notice of

3 Opposition on October 12, 2016, along wi
Opposition on October 12, 2016, along with a Counterclaim seeking cancellation of Nude’s ‘728 Registration. Dkt. #4. The entirety of the cancellation allegations are as follows:A simple search of the USPTO database shows that there are more than 30 registrations featuring the term NUDE with overlapping products in class and several pending applications featuring the term NUDE with overlapping products in class 3. Moreover, upon information and belief companies such as NUDE BY NATURE, NUDE WEAR, NUDE & NOIR and others are selling cosmetics in a manner that would conflict with any rights in the NUDE Mark owned by Registrant if any such rights were enforceable.Any trademark rights Registrant may have once owned in connection with the NUDE Mark have been abandoned by Registrant. 5. In addition, the NUDE Mark has become generic in connection with cosmetics and skincare products and it is not enforceable. Legal Standard TBMP § 503 provides that a party may move to dismiss claims pursuant to Rule 12(b)(6). In turn, Rule 12(b)(6) provides that a party may move to dismiss claims for “failure to state a DOCS73666518.1 3 claim upon which relief can be granted.” “While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff’s allegations to provide the ‘grounds’ of his entitle[ment] to relief requires more than labels and concl

4 usions, and a formulaic recitation of th
usions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic Corp. v. TwomblyU.S. 544, 555 (2007). The Supreme Court expressed concern that parties should not be permitted to obtain costly and protracted discovery without first alleging facts sufficient to show a plausible entitlement to reliefSee id. at 557-60. Thus, courts need not accept as true conclusory allegations, unreasonable inferences, legal characterizations, or unwarranted deductions of fact contained in a counterclaim. Clegg v. Cult Awareness Network, 18 F.3d 752, 754-755 (9th Cir. 1994). In assessing whether a counterclaimstates a claim upon which relief may be granted, “[l]egal conclusions, deductions or opinions couched as factual allegations are not given a presumption of truthfulness.” US. v. Bonanno Organized Crime Family of La Cosa NostraF.2d 20, 27 (2d Cir. 1989); see also Twombly, 550 U.S. 555 (a “formulaic recitation of the elements of a cause of action will not do). “Nor does a complaint suffice if it tenders naked assertions devoid of further factual enhancement.” Ashcroft v. Iqbal, 556 U.S. 662 (2009). Accordingly, where the “allegations in a complaint, however true, could not raise a claim of entitlement to relief, ‘this basic deficiency should ... be exposed at the point of minimum expenditure of time and money by the parties and the court.Twombly, 550 U.

5 S. at 558 (quoting 5 Charles Alan Wright
S. at 558 (quoting 5 Charles Alan Wright & Arthur R. Miller, FEDERAL PRACTICE AND PROCEDURE § 1216 at 233-34 (3d ed. 2004)). The GenericnessCounterclaim Should Be Dismissed Without Leave To Amend “ e test for genericness is a two-step inquiry. First, [the court] determine[s] the genus of goods or services at issue. Second, [the court] determine[s] whether the mark in question is DOCS73666518.1 4 understood by the relevant public primarily to refer to that genus of goods or services.Beling v. Ennis, Inc., 613 Fed. Appx. 924, 926 (Fed. Cir. 2015) (citing H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986)). “[T]hirdparty uses of [the challenged mark] are not probative of whether a consumer would recognize them to possess a meaning that is generic [of the challenged mark’s goods].Beling, 613 Fed. Appx. at 926. Indeed, when the challenged mark has been registered on the principal register, it confirms that the USPTO considered the mark not to be generic. Seeid.15 U.S.C. § 1052 (prohibiting registration on principal register of marks that do not distinguish the associated goods or services). Here, the only allegation of genericness is based on third-party uses, which are “not probative” of genericness. See Beling, 613 Fed. Appx. at 926. The allegation, in fact, argues just the opposite, as it confirms that the USPTO has registered the te

6 rm “nude” multiple times in the cosmetic
rm “nude” multiple times in the cosmetics and skincare space, confirming that the mark is not a generic term. Accordingly, THGI’s counterclaim based on genericness must fail, and cannot be cured by amendment. It should therefore be dismissed with prejudice. The Abandonment Counterclaim Should Be Dismissed Without Leave To Amend A trademark registration may be cancelled if the underlying mark “has been abandoned.” 15 U.S.C. § 1064. “[A]bandonment . . . being in the nature of a forfeiture, must be strictly proved.” Herb Reed Enters., LLC v. Florida Entm’t Mgmt., Inc., 736 F.3d 1239, 1247 (9th Cir. see alsoUnited States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 139 (3d Cir. 1981) (same). A mark is deemed “abandoned” in either of two cases: (1) when the mark’s use “has been discontinued with intent not to resume such use,” or (2) “[w]hen any course of conduct ofthe owner … causes the mark to become the generic name for the goods or services on or iconnection with which it is used or otherwise to lose its significance as a mark.” 15 U.S.C. DOCS73666518.1 5 Giving the formulaic abandonment allegation as broad an interpretation as possible, THGI appears to allege that Nude has abandoned the NUDE mark because the term “nude” is used by others on allegedly similar goods. This assertion is not sufficient to support an abandonment finding. Alleged third-party use does not

7 indicate that the mark has become a “gen
indicate that the mark has become a “genericname” as required for abandonment under the Lanham Act. See 15 U.S.C. § 1127. [T]he mere existence of thirdpartyinfringers is irrelevant” in the context of “allegations that a plaintiff has abandoned a trademark.” Adidas-America, Inc. v. Payless ShoeSource, Inc., 546 F. Supp. 2d 1029, 1076 (D. Or. 2008) (citing Eclipse Assocs., Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1119 (9th Cir. 1990)); see also Citibank, N.A. v. City Bank of S.F., No. 79-1922, 1980 U.S. Dist. LEXIS 14410 at *36 (N.D. Cal. March 23, 1980) (the “mere existence of [] other infringers” does not constitute the required “intent to abandon”). Similarly, alleged failure to police third-party use does not give rise to an abandonment claim. See Babbit Elecs. v. Dynascan Corp., 38 F.3d 1161, 1180 (11th Cir. 1994) (“failure to institute legal action against an infringer is insufficient to establish abandonment of a trademark”).THGI knows it cannot attack the NUDE registration as descriptive, because that registration is incontestable. So it is forced to try to fit its arguments into the much more difficult bucket of generic, which is not supportable. As discussed above, the USPTO hasconfirmed multiple times that the term “nude” is not generic when applied to cosmetics or skincare, given the very registrations THGI attempts to rely on in its allegations. Its abandonment

8 counterclaim thus fails and should be di
counterclaim thus fails and should be dismissed without leave to amend. Conclusion THGI’s Counterclaim is an abuse of the litigation process. It is an obvious attempt to make Nude’s legitimate opposition proceeding too expensive and time-consuming to pursueThe case law is clear that third-party use does not support either genericness or abandonment. DOCS73666518.1 6 Indeed, the USPTO has rejected this argument by registering the “nude” term multiple times, according to THGI’s own allegation. Nude respectfully requests that the Board discourage this type of frivolous litigation and dismiss the Counterclaim without leave to amend. Dated: November 30, 2016 Respectfully submitted, LATHAM AND WATKINS LLPBy: /s/ Jennifer L. Barry Jennifer L. Barry12670 High Bluff Drive San Diego, CA 92130 (858) 523-5400 / (858) 523-5450 (Fax) jennifer.barry@lw.com Attorneys for Opposer NUDE Skincare Limited DOCS73666518.1 7 CERTIFICATE OF SERVICE I, Jennifer L. Barry, hereby certify thata true and complete copy of the foregoing MOTION TO DISMISS has been served on The Happiness Group, Inc. by mailing said copy on November 30, 2016 via firstclass mail and email to: Cynthia MoyerLaura MyersFredrikson & Byron, P.A. 200 S 6Street, Suite 400Minneapolis, MN 55402-1425 cmoyer@fredlaw.comlmyers@fredlaw.com lrand@fredlaw.com /s/ Jennifer L. Barry Jennifer L. Bar