Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91202245
`
`Plaintiff
`Facebook, Inc.
`LORI F MAYALL
`COOLEY LLP
`777 6TH STREET NW, SUITE 1100
`WASHINGTON, DC 20001
`UNITED STATES
`
`trademarks@coo|ey.com, |maya||@coo|ey.com
`
`Opposition/Response to Motion
`
`Lori F. Mayall
`
`
`
`trademarks@coo|ey.com, |maya||@coo|ey.com,
`llfml
`
`03/21/2012
`
`Facebook's Opposotion to Fedore's Motion to Suspend.pdf ( 23 pages )(579899
`bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA463022
`ESTTA Tracking number:
`03/21/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91202245
`Plaintiff
`Facebook, Inc.
`LORI F MAYALL
`COOLEY LLP
`777 6TH STREET NW, SUITE 1100
`WASHINGTON, DC 20001
`UNITED STATES
`trademarks@cooley.com, lmayall@cooley.com
`Opposition/Response to Motion
`Lori F. Mayall
`trademarks@cooley.com, lmayall@cooley.com,
`/lfm/
`03/21/2012
`Facebook's Opposotion to Fedore's Motion to Suspend.pdf ( 23 pages )(579899
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 85/196,484
`For the Trademark F ACEMEETING
`Published in the Official Gazette on April26, 2011
`
`F ACEBOOK, INC.,
`
`Opposer,
`
`v.
`
`JASON A. FEDORE,
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. 91202245
`
`OPPOSER FACEBOOK, INC.'S OPPOSITION TO
`APPLICANT'S MOTION TO SUSPEND
`
`Applicant Jason Fedore's motion to suspend should be denied because the outcome of the
`
`parallel opposition proceeding, on which Applicant's motion is based, will have no bearing on
`
`the outcome of this proceeding.
`
`In this proceeding, Facebook has alleged that Applicant's
`
`proposed F ACEMEETING trademark is likely to cause confusion with and dilution of
`
`Facebook's rights in the trademark FACEBOOK, under the common law and as reflected in 11
`
`registrations and 15 trademark applications. (Facebook's Notice of Opposition at ,[,]2-4, 8-27.)
`
`Applicant's motion asserts that the present opposition should be suspended because the
`
`Applicant has filed an opposition to one of those 15 applications. (Fedore's Motion to Suspend
`
`at ,]9.) Applicant has failed to show, however, that the outcome of this later filed opposition will
`
`have any bearing on this proceeding. It will not. In the unlikely event that Applicant's later filed
`
`opposition is sustained, Faeebook's remaining 11 registrations and 14 applications will be
`
`

`
`unaffected, and Facebook's opposition to the FACEMEETING application will proceed.
`
`Suspending, therefore, would simply and unreasonably delay the resolution of the present
`
`dispute.
`
`Nor is the parallel opposition proceeding likely to be sustained or involve any of the
`
`issues present in this proceeding because Applicant has flatly refused to plead any statutory basis
`
`for opposing Facebook's proposed registration. Applicant's sole claim in the parallel opposition
`
`proceeding is that registration of the F ACEBOOK trademark would cause injury to Applicant
`
`because Facebook is asserting the application against Applicant's FACEMEETING application
`
`in this proceeding. See Declaration of Lori Mayall in Support of Facebook's Opposition to
`
`Motion to Suspend ("Mayall Decl."), Ex. A. This is insufficient as a matter of law to sustain an
`
`opposition, which must contain both an allegation of standing and a statutory basis for refusal
`
`(such as likelihood of confusion with a senior mark). See Corporacion Habanos SA v.
`
`Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011) (citing Fair Indigo LLC v. Style Conscience,
`
`85 USPQ2d 1536, 1538 (TT AB 2007)) (A notice of opposition must allege such facts that would
`
`(if proved) establish that (1) the plaintiff has standing to maintain the proceedings, and (2) a
`
`valid statutory ground exists for opposing the mark). Facebook has therefore moved to dismiss
`
`the parallel opposition. Mayall Decl. Ex. B. Thus, contrary to Applicant's claim, it is extremely
`
`unlikely that any of the issues present in this proceeding will be resolved in the parallel
`
`opposition proceeding.
`
`Applicant's motion to suspend represents little more than an effort to avoid the
`
`resumption of proceedings that Facebook requested on February 27, 2012. Because none of the
`
`issues in the parallel opposition proceeding will have any bearing on the outcome of this case,
`
`2
`
`

`
`and because Applicant has failed to provide any other reason for suspension of this proceeding,
`
`Facebook respectfully requests that Applicant's motion be denied.
`
`COOLEYLLP
`
`Date: March 21, 2012
`
`ec
`ori F. Mayall
`Attorneys for Opposer Facebook, Inc.
`
`3
`
`

`
`CERTIFICATE OF TRANSMITTAL AND SERVICE
`
`I hereby certify that on the date indicated below, a true and correct copy of this Opposer
`
`Facebook, Inc.'s Opposition to Applicant's Motion to Suspend was placed in the United States
`
`Mail, postage prepaid, to the correspondent for the subject application to the following address:
`
`Gregg Zegarelli
`Technology & Entrepreneurial
`Ventures Law Group, PC
`2585 Washington Road, Suite 134
`Summerfield Commons Office Park
`Pittsburgh, PA 15241-2565
`
`Date: March 21,2012
`
`4
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 851196,484
`For the Trademark FACEMEETING
`Published in the Official Gazette on April 26, 2011
`
`F ACEBOOK, INC.,
`
`Opposer,
`
`v.
`
`JASON A. FEDORE,
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. 91202245
`
`DECLARATION OF LORI F. MAYALL IN SUPPORT OF OPPOSER FACEBOOK,
`INC.'S OPPOSITION TO APPLICANT'S MOTION TO SUSPEND
`
`I, Lori F. Mayall, hereby declare as follows:
`
`1.
`
`I am an attomey at the law firm of Cooley, LLP and counsel of record for Facebook, Inc.
`
`("Facebook") in this matter. Unless otherwise stated, I have personal knowledge of the
`
`facts set forth in this declaration and, if call to testify as a witness, could and would
`
`testify competently hereto.
`
`2. Attached hereto as Exhibit A is a true and correct copy of the Notice of Opposition filed
`
`by Jason Fedore on November 09, 2011 against Facebook, Inc.'s application Serial No.
`
`851147,955 for the mark FACEBOOK (Proceeding No. 91202494).
`
`3. Attached hereto as Exhibit B is a true and correct copy of Applicant Facebook, Inc.'s
`
`Motion to Dismiss Notice of Opposition (Proceeding No. 91202494) for Failure to State a
`
`Claim Under Rule 12(b)(6), filed December 19, 2011.
`
`

`
`I declare under penalty of perjury that the foregoing statements are true and correct.
`
`Executed in Palo Alto, California this 21 day of March, 2012.
`
`- 2 -
`
`

`
`EXHIBIT A
`
`EXHIBIT A
`
`
`

`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA440340
`ESTTA Tracking number:
`11/09/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`JASONAFEDORE
`11/09/2011
`
`127 ALEXANDER DRIVE
`IRWIN, PA 15642
`UNITED STATES
`
`Attorney
`information
`
`GREGG R ZEGARELLI
`ATTORNEY
`PO BOX 113345
`PITTSBURGH, PA 15241
`UNITED STATES
`mailroom.grz@zegarelli.com Phone:4127650401
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85147955
`11/09/2011
`
`Publication date
`Opposition
`Period Ends
`
`07/12/2011
`11/09/2011
`
`Facebook, Inc.
`1601 S. California Avenue
`Palo Alto, CA 94304
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 045.
`Opposed goods and services in the class: dating services
`Grounds for Opposition
`
`Other
`
`Please see Notice of Opposition. In Opp.
`91202245, Facebook has opposed Opposer's
`mark. Opposer believes the marks are distinct;
`however, Opposer has standing and a real
`interest in this application and registration, which
`would have a material bearing on the prior
`pending cited Opposition filed by Facebook,
`injuring the rights of Opposer. Common law and
`Lanham ActA§13, 15 U.S.C.S. A§ 1063.
`
`Related
`Proceedings
`
`Opp. 91202245. Same parties, same marks, same description.
`
`

`
`I Attachments
`
`I Opposition.pdf ( 6 pages )(15747 bytes)
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/gregg zegarelli/
`GREGG R ZEGARELLI
`11/09/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of
`Facebook, Inc.
`
`85/147,955
`Serial No.:
`Mark:
`"FACEBOOK"
`
`JASON FEDORE,
`
`FACEBOOK, INC.
`
`Opposer,
`
`v.
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer, JASON FEDORE
`
`("Opposer") ,
`
`is a resident of the Common(cid:173)
`
`wealth of Pennsylvania, residing at 127 Alexander Drive, Irwin, Penn(cid:173)
`
`sylvania 15642.
`
`Opposer applied for a registered trademark, "FACEMEETING,"
`1.
`filed at Serial No. 85/196,484 ("Opposer's Mark") for "dating services"
`
`with a date of first use long ago at least as early as October 7, 2007,
`
`and a date of first use in interstate commerce
`
`long ago as least as
`
`early as April 12, 2008.
`
`a. Opposer' s Mark was reviewed by the Examining Attorney of
`
`the United States Patent and Trademark Office, said Examining Attorney
`
`charged by law and trained to do so pursuant to the standards and con(cid:173)
`
`ditions of the Lanham Act in the interest of the public.
`
`b. The Examining Attorney, so charged and trained, approved
`
`Opposer's Mark for publication in the Official Gazette.
`
`2.
`
`On October 24, 2011, Facebook, Applicant herein, opposed
`
`Opposer's Mark, at Opposition No. 91,202,245, now pending before the
`TTAB ("Facebook's Opposition of Opposer's Mark").
`
`

`
`a. In Facebook's Opposition of Opposer's Mark, Facebook dis(cid:173)
`
`agreed with the USPTO Examining Attorney and asserted that "FACEMEET(cid:173)
`
`ING" is confusingly similar to "FACEBOOK"
`
`(and apparently was so since
`
`the date of Opposer's use at least as early as October 7, 2007).
`
`b. Upon information and belief, and without suggesting perva(cid:173)
`
`sive Fed.R.Civ.P. 11 violations by Facebook or actions grounded in un(cid:173)
`
`fair competition, it appears that Facebook is in the superficially me(cid:173)
`
`chanical process of opposing marks that have the word "FACE" or "BOOK"
`
`as part of the mark.
`
`For example, FACEBOOK has opposed "MYEWORKBOOK"
`
`at 91,202,363. Opposer requests that this experienced TTAB take notice
`
`of Facebook's significant TTAB docket activity.
`
`3.
`
`Assuming Facebook is using logic with a good-faith basis
`
`for its multitude of oppositions, Facebook is thereby formulaically as(cid:173)
`
`serting (as it relates to the look, sound and meaning of the marks un-
`
`der comparison) A
`
`B = C. Therefore, using logic: A
`
`C and C
`
`A.
`
`That is, Facebook's apparent proposition is that, under the Lanham Act,
`
`the variety of marks it has opposed are Lanham Act analytical equiva(cid:173)
`
`lents for Facebook-related assessments; that is, any mark that is con(cid:173)
`
`fusingly similar to Facebook, Facebook is confusingly similar to that
`
`mark.
`
`( "FACEBOOK" sounds like, looks like and means the same thing as
`
`"MYEWORKBOOK," and, presumably, visa versa at a prima facie basis,
`
`etc.) This logic may very well be applicable, if it is not surely ap-
`
`plicable, to marks existing at the time of Facebook' s own initial ap-
`
`plication and assertion of ownership.
`
`Facebook' s expressly or impli-
`
`edly admitted standard of assessment for Facebook' s opposition is a
`
`standard of assessment for oppositions and cancellations of Facebook's
`
`applications and marks, respectively. That is, Facebook's attack upon
`
`others creates the same analytical basis for an attack upon itself.
`
`The logic simply works both ways, for it and against it. This is fair. 1
`
`1 Opposer intends to examine Facebook's methodology for its plethora of
`filings, and the existence of a good faith basis for its actions, aver(cid:173)
`ments and assertions, in due course during discovery, and reserves the
`right to amend its pleading accordingly.
`
`2
`
`

`
`4.
`
`Opposer concurs with the USPTO Examining Attorney's trained
`
`and careful assessment, and believes that Opposer's Mark is distinct
`
`from the mark at issue; however, Opposer is a real party in interest
`
`and will be or is likely to be injured if Facebook acquires a registra(cid:173)
`
`tion of "FACEBOOK" for "dating services" because the question of prior(cid:173)
`
`ity for the same competing respective marks and usages is at issue in
`
`the prior pending matter of Facebook's Opposition of Opposer. That is,
`
`the mark at issue being opposed herein is based upon intent to use for
`
`"dating services," and the question of relative mark assessment,
`
`in(cid:173)
`
`tended and actual uses, in conjunction with Opposer's priority, must be
`
`determined for both marks for a full and just adjudication of the ques(cid:173)
`tion initiated by Facebook. 2
`
`5.
`
`In the pending matter of Facebook's Opposition of Opposer's
`
`Mark, Facebook has thereby conceded the standing and real interest of
`
`Opposer to adjudicate the relative rights of Opposer's Mark relative to
`
`the mark claimed by Facebook herein for "dating services," which are
`
`the same for Facebook's Opposition of Opposer's Mark and in this pro(cid:173)
`
`ceeding, without requiring any concession by Opposer that the marks are
`
`confusingly similar.
`
`6.
`
`If Opposer does not oppose Facebook' s registration herein,
`
`Facebook may or will attain a registration which contradicts its own
`
`premise, injuring Opposer: if the two respective marks are confusingly
`
`similar, as Facebook claims in Facebook's Opposition of Opposer's Mark,
`
`then Opposer herein has standing and a real interest in determining
`
`priority of actual use on "dating services," as stated above,
`
`to at
`
`least as early as October 7, 2007, and a date of first use in inter(cid:173)
`
`state commerce long ago at least as early as April 12, 2008, prior to
`
`the filing date of this application by Facebook on October 7, 2010.
`
`2 For this reason, Opposer intends to file a TBMP Rule 511, Fed.R.Civ.P.
`42 (a), Motion to Consolidate for judicial efficiency. As stated, the
`motion to consolidate and issues to be determined are inherently con(cid:173)
`joined and must be necessarily determined in unison.
`
`3
`
`

`
`7.
`
`In addition to the above, allowing a registration of Face-
`
`book's mark
`
`in the application at issue, with such presumptions as
`
`would become appurtenant thereto, would have a material adverse impact
`
`on the ability of Opposer to defend and to assert its rights regarding
`
`Facebook's claims, thereby injuring Opposer. 3
`
`8.
`
`Opposer forthrightly avers that Facebook, with some appar-
`
`ent cleverness, has told Opposer that Opposer must concede that Op(cid:173)
`
`poser's Mark and the mark at issue herein are confusingly similar for
`
`Opposer to bring this opposition; thereby, in bringing this opposition,
`
`Opposer would be collaterally estopped from raising certain defenses in
`
`Facebook's Opposition of Opposer's Mark. However, Opposer forthrightly
`
`indicates hereby that Opposer believes it to be well-settled that the
`
`Lanham Act §13, 15 U.S. C. S. § 1063 does not .require an opposer to plead
`
`confusing similarity, but only damage by standing and a real interest
`
`in the proceeding and registration, which has been duly averred above.
`
`Moreover, as a practical matter, Facebook's assertion, if true as Face(cid:173)
`
`book asserts, places Facebook in the position to push everyone over,
`
`with the conveniently neat theory that anyone who stands up or pushes
`
`back thereby must concede confusing similarity.
`
`So, Facebook asserts
`
`it should win either way. This is not fair.
`
`9.
`
`Opposer believes that Opposer would be damaged by the reg-
`
`istration of the mark at issue herein, and Opposer does so forthrightly
`
`without any concession or admission of confusing similarity as a basis
`
`of this opposition.
`
`WHEREFORE, Opposer believes that Opposer would be damaged by the
`
`registration of the mark at issue herein and requests that Facebook's
`
`application be refused registration; that no registration be issued to
`
`Facebook for the mark; and that this opposition be su~tained in favor
`
`of Opposer.
`
`3 Opposer does not and should not have to wait for a registration of
`Facebook' s mark herein, and
`then to initiate a cancellation action,
`then with Facebook having achieved presumptions to which Opposer claims
`Facebook is not entitled and which begs the question to be litigated in
`the initial instance. Opposer's legal rights would be prejudiced and
`Opposer injured thereby.
`
`4
`
`

`
`Date: November 9, 2011
`
`Respectfully submitted,
`
`s/Gregg Zegarelli/
`Gregg R. Zegarelli, Esq.
`
`Attorney for Opposer
`
`Z E G A R E L L I
`Technology & Entrepreneurial
`Law Ventures Group, P.C.
`2585 Washington Road, Suite 134
`Summerfield Commons Office Park
`Pittsburgh, PA 15241-2565
`mailroom.grz®zegarelli.com
`
`5
`
`

`
`CERTIFICATE OF SERVICE
`
`The following person or persons have been served by United
`States first class mail, postage pre-paid on the date below:
`
`November 9, 2011
`
`LORI F MAYALL, ESQ.
`COOLEY LLP
`777 6TH STREET, NW, SUITE 1100
`WASHINGTON, DC 20001
`UNITED STATES
`
`s/Gregg R. Zegarelli/
`Gregg R. Zegarelli, Esq.
`PA I.D. #52717
`
`Counsel for Opposer
`
`Z E G A R E L L I
`Technology & Entrepreneurial
`Law Ventures Group, P.C.
`2585 Washington Road, Suite 134
`Summerfield Commons Office Park
`Pittsburgh, PA 15241-2565
`mailroom.grz®zegarelli.com
`
`6
`
`

`
`EXHIBITB
`
`

`
`Trademark Trial and Appeal Board Electronic Filing System. http./iestta.uspto gov
`ESTTA447174
`ESTTA Tracking number:
`12119/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91202494
`Defendant
`Facebook, Inc.
`ANNE PECK
`COOLEY LLP
`777 6TH ST NW STE 1100
`WASHINGTON, DC 20001-3706
`
`trademarks@cooley .com
`Motion to Dismiss - Rule 12(b)
`Kathryn D. Duvall
`kduvall@cooley.com, trademarks@cooley.com, nmcmahon@cooley.com,
`jnorberg@cooley.com
`/KDD/
`12/19/2011
`Facebook Motion to Dismiss Fedore Opposition_ Dec 19 2011.pdf ( 91 pages
`)(2615798 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AL"JD TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In thematterofSer. No. 85/147,955
`Mark: F ACEBOOK
`
`JASON FEDORE,
`
`Opposition No. 91202494
`
`Opposer,
`
`V.
`
`FACEBOOK, INC.,
`
`)
`)
`)
`)
`)
`)
`)
`)
`Applicant.
`)
`-------------------------------- )
`APPLICANT FACEBOOK, INC.'S MOTION TO DISMISS NOTICE OF OPPOSITION
`FOR FAILURE TO STATE A CLAIM UNDER RULE 12(b)(6
`
`Pursuant to Federal Rule of Civil Procedure l2(b }(6), Applicant Facebook, Inc.
`
`("Facebook"), through its undersigned counsel, moves to dismiss the Notice of Opposition filed
`
`by Jason Fedore ("Opposer" or "Mr. Fedore") on the ground that it fails to state a claim upon
`
`which relief may be granted.
`
`I.
`
`INTRODUCTION
`
`Mr. Fedore's Notice of Opposition (the "Opposition") to Facebook's application for the
`
`mark FACEBOOK (Ser. No. 85/147,955) ("the Application") should be dismissed because Mr.
`
`Fedore fails to allege any ground for the refusal of Facebook's application. The Opposition
`
`consists almost exclusively of allegations regarding Mr. Fedore's purported standing to oppose
`
`the Application, without ever stating a legal basis for the request that the application be refused.
`
`Indeed, Mr. Fedore explicitly disavows the sole ground for opposition mentioned in his
`
`Opposition- likelihood of confusion. Even if Mr. Fedore's allegations are sufficient to establish
`
`

`
`standing, the opposition cannot proceed without a legally recognized ground for refusal.
`
`It
`
`should therefore be dismissed.
`
`II. BACKGROUND
`
`This Opposition is the second of two TTAB actions between Facebook and Mr. Fedore.
`
`In October of 2011, Facebook instituted an Opposition proceeding (No. 91202245), requesting
`
`that the Board refuse Mr. Fedore's application to register the mark F ACEMEETING for use in
`
`connection with "[d]ating services, namely, providing an on-line computer database featuring
`
`single people interested in meeting other single people" (the "FACEMEETING Opposition").
`
`(Declaration of Kathryn D. Duvall in Support of Applicant Facebook's Motion to Dismiss
`
`("Duvall Decl."), Ex. A.) The FACEMEETING Opposition alleges, inter alia, that Mr. Fedore's
`
`use and registration of the F ACEMEETING mark creates a likelihood of confusion with and
`
`dilution of Facebook's senior rights in its FACEBOOK mark. As a basis for the
`
`F ACEMEETING Opposition, Facebook asserted its common law rights in the F ACEBOOK
`
`mark and relied on several issued trademark registrations and pending applications. One of those
`
`applications (Ser. No. 85/147,955) is the Application Mr. Fedore seeks to bar from registration in
`
`this proceeding.
`
`Mr. Fedore filed the present Opposition on November 9, 2011. Mr. Fedore then filed an
`
`Answer to the FACEMEETING Opposition on December 5, 2011, in which he denied any
`
`likelihood of confusion or dilution as between the F ACEBOOK marks and the F ACEMEETING
`
`mark. (Duvall Decl., Ex. Bat~ 10, 14, 17, Fedore Answer to FACEMEETING Opposition.)
`
`Mr. Fed ore similarly states in the present Opposition that he considers the F ACEMEETING and
`
`F ACEBOOK marks to be distinct, such that he will not allege any likelihood of confusion
`
`between the marks. (Opposition,~ 4, 9.)
`
`- 2-
`
`

`
`The first three paragraphs of Mr. Fedore's Opposition are spent casting aspersiOns
`
`generally upon Facebook's trademark enforcement efforts, none of which raise a basis for this
`
`Opposition. Mr. Fedore then attempts to establish his standing to file the Opposition in
`
`paragraphs four through nine, but alleges neither a likelihood of confusion, nor any other ground
`
`for opposition. The only paragraphs in which Mr. Fedore even mentions possible grounds for
`
`opposition are paragraphs four and nine, where he explicitly states that he considers the marks to
`
`be distinct, and refuses to allege that there is a likelihood of confusion. Aside from this glancing
`
`reference to (and disavowal of) likelihood of confusion, Mr. Fedore mentions no other possible
`
`statutory basis for the Opposition.
`
`Ill. ARGUMENT
`
`Mr. Fedore's Opposition should be dismissed because he has failed to state a legal basis
`
`to refuse Facebook's Application.
`
`In considering a motion to dismiss, the Board evaluates
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`whether all the facts as alleged, accepted to be true and construed in a light most favorable to the
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`plaintiff, state a claim for relief. Advanced Cardiovascular Systems Inc. v. SciMed Life Systems
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`Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Corporacion Habanos SA v.
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`Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011). A motion to dismiss is designed "to eliminate
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`actions that are fatally flawed in their legal premises and destined to fail ... " Advanced
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`Cardiovascular, 26 USPQ2d at 1041.
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`Mr. Fedore's Opposition intentionally avoids stating facts sufficient to state a legal basis
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`for his claim, and is therefore so "fatally flawed" that it must be dismissed. To properly
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`withstand Facebook's motion to dismiss, Mr. Fedore must allege such facts as would, if proved,
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`establish that (1) the plaintiff has standing to maintain the proceedings, and (2) a valid statutory
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`ground exists for opposing the mark. Corporacion Habanos, 99 USPQ2d at 1874 (citing Fair
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`Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (emphasis added). Mr.
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`- 3-
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`

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`Fedore only attempts to allege the first of these two elements - his standing to bring this
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`proceeding.
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`Indeed, he alleges, without citation, that he need only allege injury: "Opposer
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`believes . . . [The Lanham Act] does not require an opposer to plead confusing similarity, but
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`only damage by standing and a real interest in the proceeding and registration." Opposition,~ 8.
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`Mr. Fedore is wrong. Opposers must allege both standing and statutory grounds for the
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`opposition. Corporacion Habanos, 99 USPQ2d at 1874.
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`What's more, Mr. Fedore expressly alleges that there is no factual basis for the only
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`statutory ground mentioned in the Opposition -likelihood of confusion -because he believes no
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`likelihood of confusion exists between the two cited marks. He states: "Opposer ... believes that
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`Opposer's Mark is distinct from the mark at issue." Opposition,~ 4.
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`And yet, Mr. Fedore seeks to bar registration of Facebook's Application based on an
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`alleged prior use of the F ACEMEETING mark. Even assuming the truth of that priority
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`allegation for purposes of this motion, priority alone does not create a statutory basis for this
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`opposition. Priority is irrelevant if there is no likelihood of confusion. See 15 U.S.C. § 1 052(b)
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`(setting forth as a basis for refusal another's prior use of a mark that is "likely, when used on or
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`in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to
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`deceive.") Since Mr. Fedore refuses to allege that there is a likelihood of confusion between the
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`marks, he fails to allege a basis for the opposition.
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`IV. CONCLUSION
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`For the foregoing reasons, Mr. Fedore's Opposition fails to meet the requirements
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`necessary to maintain this proceeding. Facebook respectfully requests that the Board grant its
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`Motion to Dismiss Mr. Fedore's Notice of Opposition in its entirety.
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`-4-
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`

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`Dated: December 19, 2011
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`COOLEY LLP
`ANNE H. PECK
`KATHRYN D. DUVALL
`
`Kathryn D. Duvall
`Coole~ LLP
`777 61 St., NW
`Suite 1100
`Washington, DC 20001
`
`Attorneys for Applicant Facebook Inc.
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`- 5 -
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on December 19, 201 I, a true and correct copy of the foregoing
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`APPLICANT FACEBOOK, INC.'S MOTION TO DISMISS OPPOSITION FOR
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`F AlLURE TO STATE A CLAIM UNDER RULE 12(b)(6) was placed in the United States
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`Mail, postage prepaid, addressed to correspondent for Opposer as follows:
`
`Gregg R Zegarelli
`Attorney
`PO Box 113345
`Pittsburgh, PA 15241
`
`Date: December 19, 20ll