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UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`
`Mailed: March 10, 2016
`
`Opposition No. 91225573
`
`Crown Imports LLC
`
`v.
`
`
`
`RK
`
`
`Crown Brewing LLC
`
`
`
`Opposition No. 91225577
`
`CI Cerveza S.a.r.l.
`
`v.
`
`
`Yong Oh (Richard) Kim, Interlocutory Attorney:
`
`Crown Brewing LLC
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and (2),
`
`the parties to this proceeding conducted a discovery conference on March 8,
`
`2016. Board participation was requested by Opposers. Luke W. DeMarte,
`
`Esq., of Michael Best & Friedrich LLP appeared on behalf of Opposers and
`
`David Bryan and Zachary Bryan appeared pro se in their respective
`
`capacities as Applicant’s President/Owner and General Manager. In this
`
`regard and in response to the Board’s order of March 7, 2016, approving the
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`withdrawal of Applicant’s counsel, Applicant stated its intention to proceed
`
`pro se.
`
`Introductory Remarks
`
`At the outset of the conference, the Board informed the parties that a
`
`spirit of cooperation and good faith dealing were expected from the parties
`
`during the duration of this proceeding and that any points of contention that
`
`may arise during the course of the proceeding should be handled through
`
`direct communication between the parties and in a spirit of good faith. The
`
`parties were put on notice that a motion to compel would not be
`
`entertained and good faith would not be found where the parties
`
`have failed to previously conduct at least one telephone conference
`
`to resolve the issue.
`
`The Board also noted that telephone conferences with a Board attorney
`
`are available as necessary but that both parties would need to be on the call
`
`to discuss any substantive matter and that ex parte communications with the
`
`Board are generally inappropriate.
`
`The parties were instructed to file appearances of counsel and change of
`
`correspondence forms as necessary, preferably via ESTTA, the Board’s
`
`electronic filing system.
`
`Prior Communications and Disputes
`
`The parties have had, through Applicant’s prior counsel, some preliminary
`
`but unsuccessful settlement discussions. Notwithstanding, the parties remain
`
`
`
`2
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`open to settlement discussions. To encourage and facilitate a potential
`
`settlement of this matter, proceedings herein are SUSPENDED through
`
`APRIL 8, 2016, for settlement discussions.
`
`The Board then inquired as to whether the parties were involved in any
`
`other disputes with each other involving the subject mark to which the
`
`parties responded in the negative. Applicant further confirmed that its mark
`
`was not the subject of any third-party dispute.
`
`Pleadings
`
`In reviewing the notices of opposition, Opposers’ counsel confirmed that
`
`Opposer Crown Imports LLC (“Crown”) was only asserting a claim of priority
`
`and likelihood of confusion in Opposition No. 91225573 and that Opposer CI
`
`Cerveza S.a.r.l. (“Cerveza”) was only asserting claims of priority and
`
`likelihood of confusion and dilution in Opposition No. 91225577 and that
`
`Opposers were relying on the pleaded registrations and their common law
`
`use in support of such claims. However, the Board noted, and Opposers’
`
`counsel confirmed, that Crown and Cerveza are separate legal entities and
`
`that neither is the owner of any of the registrations pleaded in the notices of
`
`opposition.1 Accordingly, the Board questioned the ability of either opposer to
`
`rely on any of the pleaded registrations in support of their priority and
`
`likelihood of confusion claims. See Chemical New York Corp. v. Conmar Form
`
`Sys., Inc., 1 USPQ2d 1139, 1144 (TTAB 1986) (only owner of registration may
`
`1 As pleaded, Opposers’ counsel asserts that Crown is the licensee of Cerveza,
`which, in turn, is “the exclusive importer, marketer and distributor in the United
`States” of the owner of the pleaded registrations.
`
`
`
`3
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`rely on the Section 7(b) presumptions accorded to such registration).
`
`Although counsel suggested that Opposers may rely on the registrations as
`
`licensees, the Board is unaware of any such exception.
`
`Similarly, the Board questions Cerveza’s ability to assert a dilution claim
`
`considering that a cause of action for dilution under § 43(c) of the Lanham
`
`Act is expressly reserved for “the owner of a famous mark.” To the extent that
`
`Cerveza pleads marks that it does not own, its pleading of dilution is
`
`insufficient. The Board also noted during the conference that Cerveza’s
`
`inclusion of “other marks comprised of the terms CROWN, CORONA and the
`
`image of a crown” as part of the collective reference “the CROWN marks,” see
`
`Notice of Opposition (‘577) ¶ 4, is indefinite and fails to provide Applicant
`
`with adequate notice of the marks relied on by Cerveza in support of its
`
`claims.
`
`In view thereof, Opposers are ordered to review the claims in
`
`their respective notices of opposition and the bases therefor and to
`
`replead, or otherwise strike, those claims as necessary in accordance
`
`with this order. Cerveza is further ordered to replead its notice of
`
`opposition to specify the marks and the respective goods and
`
`services contemplated by the description “other marks comprised of
`
`the terms CROWN, CORONA and the image of a crown.”
`
`As to Applicant’s answer to each of the notices of opposition, the Board
`
`observed that the putative “defenses” in the “Affirmative Defenses/Pleadings”
`
`
`
`4
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`section of the answer are not true affirmative defenses but rather
`
`amplifications of Applicant’s denials of Opposers’ claims. Although their
`
`inclusion in the answer is not necessary, neither is it prejudicial as they serve
`
`to provide Opposers with further notice of Applicant’s defense.
`
`Although Applicant raises acquiescence as an affirmative defense in each
`
`of the oppositions, Applicant has failed to plead a basis for the defense.
`
`Specifically, that “Opposer did not seek opposition of Applicant’s existing
`
`trademark Application until only after the publication of Applicant’s
`
`trademark application despite the many public recognitions and awards of
`
`Applicant’s goods,” see Answer (‘573), ¶ 9, and Answer (‘577), ¶ 10, is
`
`insufficient to support an acquiescence defense because, in an opposition
`
`proceeding, the defense must be tied to the registration and not use of the
`
`mark and, as such, does not begin to run until the mark is published for
`
`opposition. See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1914 (TTAB
`
`2005). This defense is therefore STRICKEN.
`
`Discovery and Stipulations
`
`The parties were advised that the Board’s standard protective order is
`
`operative in these proceedings, made applicable by operation of Trademark
`
`Rule 2.116(g) and available at http://www.uspto.gov/trademarks/process/
`
`appeal/guidelines/stndagmnt.jsp. If the parties wish to acknowledge their
`
`obligations under the standard protective order in writing, the parties are
`
`
`
`5
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`referred to the form found at http://www.uspto.gov/trademarks/process/
`
`appeal/guidelines/ackagrmnt.jsp.
`
`Should the parties wish to modify the Board’s standard protective order,
`
`the parties may negotiate any changes and file a copy of the proposed
`
`protective order for Board approval.
`
`The parties did not offer or otherwise suggest any potential discovery or
`
`testimonial stipulations. The Board encourages the parties to consider ways
`
`in which to potentially limit and simplify discovery and testimony through
`
`reciprocal disclosures, stipulations of fact, and/or agreements. For instance,
`
`the parties may consider greater use of reciprocal disclosures and less use of
`
`formal discovery or streamlining their discovery by limiting the number of
`
`depositions,2 interrogatories, document production requests and admission
`
`requests. The parties may also consider simplifying the introduction of
`
`evidence into the record such as by stipulating to the authentication of
`
`documents produced in response to document requests via a notice of reliance
`
`by the propounding party.
`
`The parties declined to accept service of papers by e-mail thereby
`
`retaining the five-day grace period under Trademark Rule 2.119(c)
`
`but the parties did agree to send, via e-mail, courtesy copies of any
`
`
`2 Pursuant to Fed. R. Civ. P. 30(a), made applicable to Board proceedings by
`Trademark Rule 2.116, a party may not seek more than ten discovery depositions
`without a prior stipulation between the parties or leave of the Board.
`
`
`
`
`6
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`papers served. Courtesy copies of any papers served by a party are
`
`to be sent to the opposing party as follows:
`
`For Opposers:
`
`jhbrown@michaelbest.com
`lwdemarte@michaelbest.com
`
`
`For Applicant:
`
`The parties were advised that the five day grace period afforded them
`
`orders@crownbrewing.com
`
`under Trademark Rule 2.119(c) would apply so long as one of the prescribed
`
`methods of service3 is utilized and, to that end, were reminded to specify the
`
`method of service in the certificate of service.
`
`Alternative Dispute Resolution and Accelerated Case Resolution
`
`The Board informed the parties that mediation and arbitration are
`
`outside resources available to the parties to facilitate settlement discussions.
`
`Although the Board will not refer the parties to any particular arbitrator or
`
`mediator, the Board would be amenable to suspending these proceedings
`
`should the parties choose these alternatives to aid in settlement.
`
`Accelerated Case Resolution (ACR) was also discussed as a way to
`
`expeditiously obtain a final determination of these proceedings without the
`
`time and expense of a full trial. A proceeding that is ideally suited for ACR is
`
`one in which the parties anticipate being able to stipulate to many facts, or in
`
`which each party expects to rely on the testimony of only one or two
`
`witnesses and the overall record will not be extensive.
`
`
`3 Currently, Trademark Rule 2.119(c) applies to service made by first-class mail,
`Priority Mail Express®, or overnight courier.
`
`
`
`7
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`
`Although none of the parties expressed an interest in this procedure at
`
`this point in the proceedings, the parties are, nevertheless, encouraged to
`
`remain open to the procedure, particularly if the parties believe they can
`
`simplify these proceedings through the use of factual and evidentiary
`
`stipulations. As mentioned during the conference, the parties must mutually
`
`agree to ACR as the procedure cannot be instituted unilaterally and there is
`
`no procedural mechanism by which an unwilling party can be compelled to
`
`engage in ACR. To facilitate the parties’ consideration, they are referred to
`
`the following for additional information on the procedure:
`
`http://www.uspto.gov/trademarks/process/appeal/Accelerated_Case_Resol
`ution__ACR__notice_from_TTAB_webpage_12_22_11.pdf
`
`http://www.uspto.gov/trademarks/process/appeal/Accelerated_Case_Resol
`ution_(ACR)_FAQ_updates_12_22_11.doc
`
`Conclusion
`
`As noted by the Board during the conference, neither the service of
`
`discovery requests nor the filing of a motion for summary judgment (except
`
`on the basis of res judicata, collateral estoppel, or lack of Board jurisdiction)
`
`may occur until after initial disclosures (required under Fed. R. Civ. P.
`
`26(a)(1)) are made.
`
`As noted supra, proceedings are SUSPENDED until APRIL 8, 2016, for
`
`settlement discussions. Should the parties fail to reach an agreement,
`
`proceedings herein will resume on APRIL 9, 2016, for the limited purpose of
`
`amending the pleadings. Opposers are allowed until MAY 9, 2016, to serve
`
`
`
`8
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`and file their amended notices of opposition and Applicant is allowed until
`
`JUNE 8, 2016, to serve and file its answers thereto.
`
`On the question of consolidation, counsel requested, and the Board
`
`granted, time for Opposers to consider the merits of consolidating these
`
`proceedings. Opposers are therefore allowed until JUNE 22, 2016, to file any
`
`objections to consolidation, failing which these opposition proceedings will be
`
`consolidated. The consolidation order will provide a consolidated schedule.
`
`Pro Se Information
`
`The record does not reflect that Applicant is represented by legal counsel
`
`in this proceeding. While Patent and Trademark Rule 11.14(e) permits any
`
`person to represent itself, it is generally advisable for a person who is not
`
`acquainted with the technicalities of the procedural and substantive law
`
`involved in an opposition proceeding to secure the services of an attorney who
`
`is familiar with such matters. The Patent and Trademark Office cannot aid
`
`in the selection of an attorney.
`
`The Trademark Rules of Practice, other federal regulations governing
`
`practice before the Patent and Trademark Office, and many of the Federal
`
`Rules of Civil Procedure govern the conduct of this proceeding. The
`
`Trademark Act, the Trademark Rules of Practice, and the Trademark Trial
`
`and Appeal Board Manual of Procedure (TBMP) are all available on the
`
`TTAB page of the USPTO website at http://www.uspto.gov/trademarks/
`
`process/appeal/index.jsp. This web page also includes information on
`
`
`
`9
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`Alternative Dispute Resolution (ADR), Frequently Asked Questions about
`
`Board proceedings, and other relevant topics.
`
`Applicant is reminded that Trademark Rules 2.119(a) and (b) require that
`
`every paper filed in the Patent and Trademark Office in a proceeding before
`
`the Board must be served upon the attorney for the other party (or
`
`adversary), and proof of such service must be made before the paper will be
`
`considered by the Board. Consequently, copies of all papers that the parties
`
`may subsequently file in this proceeding must be accompanied by “proof of
`
`service” of a copy on the other party or the other party’s counsel.
`
`“Proof of service” usually consists of a signed, dated statement stating: (1)
`
`the nature of the paper being served, (2) the method of service (e.g., first class
`
`mail), (3) the person being served and the address used to effect service, and
`
`(4) the date of service. For future reference, a suggested format for the
`
`certificate of service is provided below:
`
`I hereby certify that a true and complete copy of the foregoing
`(insert title of submission) has been served on (insert name
`of opposing counsel or party) by mailing said copy on (insert
`date of mailing), via First Class Mail, postage prepaid (or
`insert other appropriate method of delivery) to:
`
`
`(set out name and address of opposing
`counsel or party)
`
`
`
`_______________________________
`Signature
`
`
`
`See TBMP § 113.
`
`
`
`10
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`
`Applicant should further note that any paper it is required to file with the
`
`Board should not take the form of a letter; proper format should be utilized.
`
`The form of submissions is governed by Trademark Rule 2.126. See also
`
`TBMP § 106.03. In particular, “[a] paper submission must be printed in at
`
`least 11-point type and double-spaced, with the text on one side only of each
`
`sheet” and text “in an electronic submission must be in at least 11-point type
`
`and double-spaced.” Trademark Rule 2.126(a)(1) and 2.126(b).
`
`While it is true that the law favors judgments on the merits wherever
`
`possible, it is also true that the Patent and Trademark Office is justified in
`
`enforcing its procedural deadlines. Hewlett-Packard v. Olympus, 18 USPQ2d
`
`1710 (Fed. Cir. 1991). In that regard, the parties should note that any paper
`
`they are required to file herein must be received by the Board by the due
`
`date, unless one of the filing procedures set forth in Trademark Rules 2.197
`
`and 2.198 is utilized.
`
`In submitting an answer, Applicant is referred to Rule 8(b) of the Federal
`
`Rules of Civil Procedure, made applicable to this proceeding by Trademark
`
`Rule 2.116(a). Fed. R. Civ. P. 8(b) provides:
`
`(b) Defenses; Admissions and Denials
`(1)
`In General. In responding to a pleading, a party
`must:
`(A)
`
`state in short and plain terms its defenses to
`each claim asserted against it; and
`admit or deny the allegations asserted
`against it by an opposing party.
`(2) Denials – Responding to the Substance. A
`denial must fairly respond to the substance of the
`allegation.
`
`(B)
`
`
`
`11
`
`

`
`Opposition No. 91225573 and Opposition No. 91225577
`
`
`(3) General and Specific Denials. A party that
`intends in good faith to deny all the allegations of a
`pleading – including the jurisdictional grounds –
`may do so by a general denial. A party that does
`not intend to deny all the allegations must either
`specifically deny designated
`allegations
`or
`generally deny all except
`those specifically
`admitted.
`(4) Denying Part of an Allegation. A party that
`intends in good faith to deny only part of an
`allegation must admit the part that is true and
`deny the rest.
`Lacking Knowledge or Information. A party
`that lacks knowledge or information sufficient to
`form a belief about the truth of an allegation must
`so state, and the statement has the effect of a
`denial.
`Effect of Failing to Deny. An allegation – other
`than one relating to the amount of damages – is
`admitted if a responsive pleading is required and
`the allegation is not denied. If a responsive
`pleading is not required, an allegation is considered
`denied or avoided.
`
`(5)
`
`(6)
`
`
`In accordance with Fed. R. Civ. P. 8(b), it is incumbent on Applicant to
`
`answer the notice of opposition by admitting or denying the allegations
`
`contained in each paragraph. If Applicant is without sufficient knowledge or
`
`information on which to form a belief as to the truth of any one of the
`
`allegations, she should so state and this will have the effect of a denial.
`
`Files of TTAB proceedings can be examined using TTABVue, accessible at
`
`http://ttabvue.uspto.gov/ttabvue. After entering the 8-digit proceeding
`
`number, click on any entry in the prosecution history to view that paper in
`
`PDF format.
`
`
`
`* * *
`
`12

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