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`Case 3:12—cv—OO669—RDM Document 89 Filed 08/04/14 Page 1 of 14
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
`
`UNITED STATES SO0 BAHK DO
`MOO DUK KWAN FEDERATION, lNC.,
`
`:
`:
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`Plaintiff,
`
`v.
`
`INTERNATIONAL TANG SOO DO
`DUK KWAN ASSOCIATION,
`M00
`
`t
`e a
`
`Defendants.
`
`Q
`'
`:
`|., :
`;
`
`3:12-CV-00669
`(JUDGE MARIANI)
`
`FILED
`SCRANTON
`
`
`
`MEMORANDUM OPINION
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`I.
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`Introduction
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`Presently before the Court is a Motion for Summary Judgment (Doc. 43) filed by the
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`Plaintiff on certain of the Defendants‘ counterclaims. For the reasons discussed below, the
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`Court will deny the Motion.
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`ll.
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`Factual Background and Procedural Histogyl
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`Plaintiff, United States Soo Bahk Do Moo Duk Kwan Federation is a New Jersey
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`corporation involved in the “practice, teaching, and regulation" of a Korean form of martial
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`arts. (See Pl.'s Statement of Mat. Facts, Doc. 45, at 1) 4.) The parties agree that “Tang Soo
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`In their Answer to Plaintiffs Statement of Material Facts (Doc. 53), Defendants do not admit any
`1
`fact without qualification.
`Instead, they often engage in lengthy and digressive legal arguments or
`interpretations of Korean history that repeat points raised in their brief, but which do not directly address the
`issue asserted as a material fact. (See, e.g., Doc. 53 atm) 4, 5, 9, 14, 35.) As such, the Courts task in
`sorting out legitimately disputed and undisputed facts has been rendered much more difficult. Nonetheless,
`the facts discussed in this section are all ones which the Court finds, based on a neutral reading of the
`record before it, to not be subject to reasonable dispute.
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`

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`Do” is the generic term for the type of martial art that Plaintiff practices.
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`(Id. at 1] 7; Defs.' Br.
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`in Opp. to Pl.‘s Mot. for Summ. J., Dec. 55, at 2-3.) However, Plaintiff also holds registered
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`trademarks on the related term "Moo Duk Kwan," which translates to “martial virtue
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`institute,” and on the symbol for Moo Duk Kwan: a fist surrounded by laurel leaves with
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`words written in a scroll across the bottom. (Doc. 45 at ‘ll 1; Doc. 53 at 11 1.) Plaintiff argues
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`that the term “Moo Duk Kwan" and its associated logo are properly registrable trademarks
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`because, whereas "the generic name for the martial art taught by the Plaintiff and the
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`Defendants is Tang Soo Do,” the term Moo Duk Kwan was independently created by one
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`Hwang Kee in South Korea in 1945 as a mark to designate a type of Tang Soo Do school
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`that he founded.
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`(Doc. 45 at1l 5.)
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`In the Plaintiffs words,
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`Founder Hwang Kee chose the mark Moo Duk Kwan® to suggest the
`particular services provided by the school,
`including the style and
`practices he developed for instruction of martial arts. This is similar to
`the name of an educational institution, a religious organization, or a
`grocery store, in that the trademark identifies the nature and quality of
`the services provided by the owner.
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`(Doc. 45 at 1] 6.) Hwang later founded the Plaintiff Moo Duk Kwan Federation, of which his
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`son, H.C. Hwang, is the current president. (See H.C. Hwang Decl., Doc. 45-4, at 111] 1, 3.)
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`Believing that the Defendants, owners of a Pennsylvania corporation called
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`International Tang Soo Do Moo Duk Kwan Association, were engaged in the unauthorized
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`use of its trademarks, Plaintiff filed this action in federal court on April 10, 2012. (See
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`Compl., Doc. 1, at 1H] 4, 16-18.) Plaintiffs most recent Complaint alleges claims for
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`trademark infringement, trademark counterfeiting, and unfair competition under federal and
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`2
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`

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`common law. (See Am. Compl., Doc. 27, at pp. 10, 12, 14.)
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`in response, Defendants
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`asserted a series of counterclaims. (See Answer, Doc. 28, at pp. 8-12.) P|aintiff—but not
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`Defendants—then filed a Motion for Summary Judgment, which is the subject of this
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`Opinion. (See P|.'s Mot. for Summ. J., Doc. 43.) That Motion seeks judgment on several of
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`Defendants‘ counterclaims, to wit: claims to cancel Plaintiffs trademark registrations for
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`genericness (Count I), for abandonment (Count III), and as based on fraud (Count IV), as
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`well as a general counterclaim for a declaratory judgment that Plaintiff's trademarks are
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`unenforceable (Count V). (See Pl.’s Mot. for Summ. J., Doc. 43, at 1-2.)
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`Ill.
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`Standard of Review
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`Through summary adjudication, the court may dispose of those claims that do not
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`present a “genuine dispute as to any material fact." Fed. R. Civ. P. 56(a). “As to materiality,
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`.
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`.
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`. [o]nly disputes over facts that might affect the outcome of the suit under the governing
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`law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, lnc.,
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`477 U.S. 242, 248, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202 (1986). The party moving for
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`summary judgment bears the burden of showing the absence of a genuine issue as to any
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`material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 2552, 91 L. Ed.
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`265 (1986). Once such a showing has been made, the nonmoving party must offer specific
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`facts contradicting those averred by the movant to establish a genuine issue of material fact.
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`Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888, 110 S. Ct. 3177, 3188, 111 L. Ed. 2d 695
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`(1990). "inferences should be drawn in the light most favorable to the non-moving party,
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`

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`A
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`and where the non-moving party's evidence contradicts the movant’s, then the non-
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`movant‘s must be taken as true." Big Apple BMW, Inc. v. BMW of N. Am., lnc., 974 F.2d
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`1358, 1363 (3d Cir. 1992), cert. denied 507 U.S. 912 (1993). Nonetheless, “[t]he mere
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`existence of a scintilla of evidence in support of the [non-movant's] position will be
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`insufficient[todefeatsummaryjudgment]; theremustbeevidenceon which thejurycould
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`reasonably find for the [non-movant]." Anderson, 477 U.S. at 252.
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`IV.
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`Analysis
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`a. Cancellationofa Registered Trademark
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`“The Lanham Act, 15 U.S.C. § 1051 et seq., provides national protection for
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`trademarks used in interstate and foreign commerce.“ Bemer Int’! Corp. v. Mars Sales Co.,
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`987 F.2d 975, 979 (3d Cir. 1993). Nonetheless. a registered trademark may be cancelled
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`upon petition “by any person who believes that he is or will be damaged,“ inter alia, “[a]t any
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`timeiftheregisteredmarkbecomesthegenericnameforthegoodsorservices,oraportion
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`thereof, for which it is registered, or is functional, or has been abandoned, or its registration
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`was obtained fraudulently.” 15 U.S.C. § 1064(3). Defendants allege counterclaims on
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`several of these grounds.
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`It is to these counterclaims that the Court now turns.
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`i. Cancellation forGenericness (Count I)
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`The Lanham Act “provides no protection for generic terms.” E.T. Browne Drug Co. v.
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`Cococare Prods., lnc., 538 F.3d 185, 191 (3d Cir. 2008). Generic terms are those “which
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`function as the common descriptive name of a product class." A.J. Canfield Co. v.
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`4
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`}
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`N
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`%
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`’
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`F
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`

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`Honickman, 808 F.2d 291, 296 (3d Cir. 1986).
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`in other words, a "generic term is one that
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`refers to the genus of which the particular product is a species.” Park ‘N Fly, Inc. v. Dollar
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`Park and Fly, lnc., 469 U.S. 189, 194, 105 S. Ct. 658, 661, 83 L. Ed. 2d 582 (1985).
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`“Generic terms are not registrable, and a registered mark may be canceled at any time on
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`the grounds that it has become generic." Id.
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`The same principles apply when, as here, the term being challenged for genericness
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`is a tenn in a foreign language. As the Second Circuit has noted:
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`It is a bedrock principle of the trademark law that no trader may acquire the
`exclusive right to the use of a term by which the covered goods or services
`are designated in the language. Such a term is “generic." .
`.
`.
`The same rule applies when the word designates the product in a
`language other than English. This extension rests on the assumption that
`there are (or someday will be) customers in the United States who speak that
`foreign language. Because of the diversity of the population of the United
`States, coupled with temporary visitors, all of whom are part of the United
`States marketplace, commerce in the United States utilizes innumerable
`foreign languages. No merchant may obtain the exclusive right over a
`trademark designation if that exclusivity would prevent competitors from
`designating a product as what it is in the foreign language their customers
`know best. Courts and the USPTO apply this policy, known as the doctrine of
`“foreign equivalents," see 2 J. Thomas McCarthy, McCarthy on Trademarks &
`Unfair Competition, § 12:41 at 12-83, 12—84 (1996 ed.),
`to make generic
`foreign words ineligible for private ownership as trademarks.
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`Otokoyama Co., Ltd. v. Wine of Japan Import, Inc, 175 F.3d 266, 270-71 (2d Cir.
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`1999) (collecting cases).
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`Defendants argue that the trademarks “Moo Duk Kwan" and the corresponding logo
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`must be cancelled for genericness because "[Defendants’] use of the marks and fist and
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`laurel leaves design pre-date any of the Plaintiffs registrations by at least 20 years; and that
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`5
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`the registrations are comprised of terms that are generic for the services for which they are
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`registered.” (Doc. 55 at 4.) In other words.
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`The Plaintiff actually registered terms that are commonly used in the martial
`arts industry. The Plaintiffs registrations have lost whatever significance as
`trademarks they may have ever had due to its own conduct or omissions as
`the terms and designs of the Plaintiff's marks are ubiquitous for the Korean
`style karate called “Tang Soo Do" and is [sic] used by practitioners around the
`United States.
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`(Id. at 5.)
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`In support of this conclusion, Defendants make several arguments. First, they argue
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`that Moo Duk Kwan was not created by Hwang Kee as Plaintiff alleges, but is in fact an
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`ancient art form which may date as far back as the year 794 A.D., when it was first used in
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`Japan by Emperor Kanmu “to promote chivalry and martial excellence" under the name
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`“Butokuden" ("Hall of Martial Virtue").
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`(id. at 12.) Moreover, Defendants allege that, even in
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`the United States, the marks and logos at issue “have been in common use in the United
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`States as far back as 1961 as evidenced by their use as patches worn during Tang Soo
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`Do gatherings and competitions and as advertisements for Moo Duk Kwan schools and
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`related services, all of which is captured in various karate magazines dating back to the
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`early 1960s that Defendants submitted to the summary judgment record.
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`(Id. at 6; see also
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`id. at 9 (citing Defs.' Exs. in Opp. to Summ. J. 1-44. 46-48, 50-51, 53, 55-56).) Aside from
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`the evidence contained in old karate magazines, this historical argument depends in large
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`part on a book authored by Daniel Segarra, a former board member of the Plaintiff
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`federation, entitled The Secrets of the Warrior-Scholar: The Untold History of Tang Soo Do
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`6
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`V 1.2. (See id. at 9-10, 12-13; see also Defs.' Exs. in Opp. to Summ. J., Doc. 71, Ex. 69
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`(Segarra book).)
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`Second, Defendants argue that the term “Moo Duk Kwan” is a generic term meaning
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`“name of a tang soo do school." (Doc. 55 at 11.) This comes from the glossary of terms
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`contained in alleged Moo Duk Kwan founder Hwang Kee's book, Tang Soo D0, which
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`defines “Moo Duk Kwan" as “Name of Tang Soo Do School.” (Defs.' Exs. in Opp. to Summ.
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`J., Doc. 66, Ex. 49, at 36.) However, it is unclear from a facial reading of the glossary
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`whether this definition was intended to define Moo Duk Kwan as “the name of any Tang Soo
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`Do school," as Defendants indicate, or, as Plaintiffs would argue, as only “the name of the
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`specific Tang Soo Do school founded by Hwang Kee,” in the same way that the term
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`“General Motors" might be defined as “name of automotive company."
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`Third, Defendants argue that the fist-and-laurel-leaves emblem of Moo Duk Kwan
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`was “in the public domain long before a registration was granted to the plaintiff.” (Doc. 55 at
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`15.)
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`in addition to referencing the documentary evidence from karate magazines discussed
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`above, Plaintiff states that “a quick google search of ‘martial arts patches‘ brings up
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`hundreds of hits, with countless examples of patches containing the fist and laurel leaves. or
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`Moo Duk Kwan." lld.)
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`These arguments illustrate several disputes of fact that cannot be resolved on
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`summary judgment.
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`‘
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`First, there is the question of when the phrase "Moo Duk Kwan” was in fact coined.
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`If, as Plaintiff argues, it was coined by Hwang Kee in 1945, then that could defeat a claim
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`for genericness.
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`If, on the other hand, the term was widely used in the United States,
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`Korea, andlor Japan before Plaintiff registered its trademarks, as Defendants argue, then
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`this could mean—though it need not necessarily do so—that “Moo Duk Kwan" is actually a
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`generic term for the type of services that Plaintiff offers. Of course, this Court is neither
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`equipped nor permitted to resolve such historical disputes at the summary judgment stage.
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`Second, and intertwined with the first question, is the fundamental question of what
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`“Nico Duk Kwan" actually means. Even if it is undisputed that the direct translation is
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`“martial virtue institute," (see P|.’s Reply Mem. in Supp. of Mot. for Summ. J., Doc. 80, at 6),
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`the parties dispute whether such a “martial virtue institute" refers to (a) a Tang Soo Do
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`school generally, or (b) only to a Tang Soo Do school founded by Hwang Kee, as discussed
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`above. There is not enough evidence in the record for the Court to determine that one
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`definition must be right as a matter of law.
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`Indeed, the glossary on which Defendants base
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`their argument is ambiguous as to which definition applies. Evidence would need to be
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`offered at trial to demonstrate what the writers of the glossary, Korean speakers, and/or
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`people in the martial arts community would commonly understand the term to mean.
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`Third, there is the question of whether the fist-and-laurel-leaves emblem is generic.
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`it must be determined at trial whether this emblem was actually designed by Hwang Kee
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`and/or his successors, such that it may be the intellectual property of the Plaintiff, or
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`

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`whether it is simply a generic mark that arose over the centuries without a known author
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`and which therefore cannot be trademarked. Again, this issue is in dispute and cannot be
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`resolved on summary judgment.
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`Fourth, it is unclear whether the many uses of the M00 Duk Kwan name and logo
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`that Defendants compile in their exhibits in opposition to summary judgment, based on
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`Google searches and reviews of old karate magazines, are actually evidence of generic and
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`widespread use of the name and logo. They may in fact be, to the contrary, evidence of
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`individual uses that were approved by the Plaintiff federation or even examples of the
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`Plaintiffs own use of its own marks. Without any context behind the various uses of the
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`trademarks, the Court cannot know what kind of use is being displayed. This factual dispute
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`will have to be resolved at trial, when the authenticity, context, and meaning of Defendants’
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`exhibits can be better established.
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`if. Cancellation for Abandonment (Count III)
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`Abandonment “is [another] ground for the cancellation of marks.” Ditri v. Coldwell
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`Banker Residential Affr'I.-‘ates, 954 F.2d 869,873 (3d Cir. 1992). The Lanham Act provides
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`that:
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`A mark shall be deemed to be “abandoned" if either of the following occurs:
`(1) When its use has been discontinued with intent not to resume such
`use.
`Intent not
`to resume may be inferred from circumstances.
`Nonuse for 3 consecutive years shall be prima facle evidence of
`abandonment. “Use” of a mark means the bona tide use of such mark
`made in the ordinary course of trade, and not made merely to reserve
`a right in a mark.
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`

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`including acts of
`(2) When any course of conduct of the owner,
`omission as well as commission, causes the mark to become the
`generic name for the goods or services on or in connection with which
`it is used or otherwise to lose its significance as a mark. .
`.
`.
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`15 U.S.C. § 1127.
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`In order to prevail on a defense of abandonment, subsection (1) of the statutory
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`definition of abandonment imposes a "twin requirement of non-use and intent to abandon."
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`U. S. Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 138 (3d Cir. 1981) (citing Baglin v.
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`Cusenier C0,, 221 U.S. 580, 31 S. Ct. 669, 55 L. Ed. 863 (1911)).
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`in deciding whether the
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`twin requirement has been met, courts “also bear in mind that abandonment, being in the
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`nature of a forfeiture, must be strictly proved.” Id. at 139. The nonuse that gives rise to
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`abandonment must consist of “much more than failure to prosecute promptly trademark
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`infringements, and even total, but temporary non-use of a name has, at times, been found
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`insufficient to support a finding of abandonment." Id.
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`its disaffiliated or
`[a trademark registrant] has tolerated some of
`That
`disobedient chapters in the use of its marks does not constitute non-use.
`Consistent and proper use of those marks elsewhere in the United States,
`see [U.S. Jaycees v. Philadelphia Jaycees,] 490 F. Supp. [688,] 690 [E.D. Pa.
`1979], defeats any claim of non-use. Dawn Donut Co. [v. Harf’s Food Stores,
`lnc.], 267 F.2d [358,] 363 (abandonment occurs only when registrant fails to
`use its mark anywhere in the nation); Johanna Farms, Inc. v. Citrus Bowl,
`Inc, 468 F. Supp. 866, 878-79 (E.D.N.Y. 1978) (no abandonment of mark
`used elsewhere in the United States).
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`Here, there is no evidence in the summary judgment record that Plaintiff has
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`discontinued its use of the trademarks with the intent not to resume them under subsection
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`10
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`(1). Indeed, Plaintiff has “consistentiy and properly" used its trademarks in the United
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`States during the period in which Defendants allege that they have elapsed, by consistently
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`conducting business here with them. This, according to Jaycees, supra, “defeats any claim
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`of non-use." Likewise under Jaycees, Defendants’ argument that Plaintiff “selectively
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`enforce[s] infringement” by only litigating some infringements and not others, (see Doc. 55
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`at 17), even if accepted as true for summary judgment purposes, could not lead to the
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`defense of abandonment, because it at most shows “a failure to prosecute promptly
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`trademark infringements,” which does not give rise to abandonment.
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`Nonetheless, the Court finds sufficient disputes of fact to warrant denying summary
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`judgment under subsection (2) of the statutory definition of abandonment. As discussed in
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`the preceding section of this Opinion on genericness, there is insufficient evidence in the
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`record for the Court to determine on summary judgment whether the phrase "Moo Duk
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`Kwan” or its associated logo was generic at the time that it was registered as a trademark
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`by the Plaintiff. By the same token, there is insufficient evidence to determine whether
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`Plaintiffs acts of commission or omission since registration have caused the term and logo
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`to lose any significance that they may have had as registered trademarks.
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`If the tenn or the
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`logo has become a generic name in the time since they were registered, and if this
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`genericness came about by Plaintiffs own course of conduct, then the trademark could be
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`cancelled for abandonment. But in order to make this factual determination, the factfinder
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`would need to, inter alia, resolve the questions of what “Moo Duk Kwan” and its associated
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`11
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`logo are understood to mean now, as well as the question of what occurred in the time since
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`registration that would have made the term or logo generic. For the reasons discussed in
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`the preceding section, these are not questions that can be decided at summary judgment.
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`Thus, while the Court sees no evidence of an intent to abandon the trademarks in
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`the summary judgment record, there is a sufficient dispute of fact concerning the
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`applicability of subsection (2) of the statutory definition of abandonment to warrant denying
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`summary judgment on the abandonment claim as well.
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`iii. Cancellation Based on Fraud
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`Finally, a “third party may petition to cancel a registered service mark on the grounds
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`that the registration was obtained fraudulently." Metro Traffic Control, Inc. v. Shadow
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`Network, lnc., 104 F.3d 336, 340 (Fed. Cir. 1997). “Fraud in procuring a service mark
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`occurs when an applicant knowingly makes false, material representations of fact in
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`connection with an application.” Id.
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`If the declarant who, in procuring a trademark, swears
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`that the applicant has a superior right to use the mark “subjectively believes [his own
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`declaration], there is no fraud, even if the declarant was mistaken." Sovereign Military
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`Hospitaller Order of St. John of Jersualem, of Rhodes, and of Malta v. Florida Priory of
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`Knights Hospltallers of Sovereign Order of St. John of Jerusalem, 702 F.3d 1279, 1289
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`(11th Cir. 2012).
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`In the present case, there are at least two material disputes of fact that prevent
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`summary judgment on the fraud counterclaim.
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`12
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`First, following the issuance of this Opinion, the counterciaims of genericness and
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`descriptiveness? will still be left to be resolved at trial. But the crux of Defendants’ fraud
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`argument is that Plaintiff committed fraud by claiming proprietary ownership in words and
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`marks that were generic or were descriptive of common terms in the martial arts world,
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`given that the term Moo Duk Kwan and its associated logo allegedly existed in the public
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`domain for hundreds of years, and that any representations to the contrary were knowingly
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`false. (See Doc. 55 at 19-20.) To determine the merits of this argument, the factfinder will
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`first have to determine whether there is enough evidence to side with the Defendants on the
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`genericness andlor descriptiveness counterciaims. But doing that will, at the very least,
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`necessitate answering the disputed questions of material fact enumerated above, which
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`cannot be decided on summary judgment.
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`Second, even if the trademarks were found to be invalid for genericness andlor
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`descriptiveness, the factfinder would still need to determine whether Plaintiff's declarant
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`knowingly represented the contrary.’ The declarant’s subjective mental state at the time of
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`application is clearly a disputed issue of fact which cannot be resolved at the summary
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`judgment stage.
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`Indeed, the Court is aware of no documents submitted to the record which
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`demonstrate what the declarant thought at the time of application.
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`Accordingly, the Court must deny summary judgment on Defendant's fraud
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`counterclaim as well.
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`2 The counterclaim for descriptiveness (Count II) was not a subject of the Motion for Summary
`Judgment.
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`b. Declaratory Judgment of Unenforceabiiity (Count V)
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`Finally, Plaintiff seeks summary judgment on Defendants‘ counterclaim for a
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`declaratory judgment that Plaintiffs trademarks are unenforceable.
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`(Doc. 43 at 2.) This
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`catch-all counterclaim alleges that “Plaintiffs marks are unenforceable on the ground that
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`they are generic, descriptive, have been abandoned, andlor were obtained by fraud.” (Doc.
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`28 at fl 90.)
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`Because all of the bases alleged in support of unenforceability are left to be resolved
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`at trial. the Court cannot grant summary judgment on this counterclaim.
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`It too must be
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`resolved at trial in connection with its underlying subject matter.
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`V.
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`Conclusion
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`For the foregoing reasons, Plaintiffs Motion for Summary Judgment (Doc. 43) is
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`DENIED. A separate Order follows.
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`obert
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`.
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`nani
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`United States District Judge
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`14