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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
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`Mailed: November 30, 2017
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`Opposition No. 91235047
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`LEGO Juris A/S
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`v.
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`Mary Beth Myles, Interlocutory Attorney:
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`REXSITT Italia s.r.l.
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`Now before the Board is Opposer’s motion (filed August 9, 2017) to strike each of
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`the affirmative defenses asserted by Applicant in its answer to Opposer’s notice of
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`opposition. The motion is fully briefed.1 Additionally, the Board notes Applicant’s
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`counsel’s request to withdraw as counsel, filed October 24, 2017, which is also
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`addressed herein.
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`I.
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`Motion to Strike
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`The Board has considered the parties’ submissions and presumes the parties’
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`familiarity with the arguments made therein. Therefore, the parties’ arguments will
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`not be summarized herein except as necessary to explain the Board’s decision.
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`1 Applicant filed two copies of a brief in response to Opposer’s motion to strike on August 23
`and September 7, 2017. Although the responses appear to be identical, the Board has
`considered the timely August 23, 2017 response to be the correct submission for
`consideration.
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`Opposition No. 91235047
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`Opposer has moved to strike each of Applicant’s affirmative defenses, which are
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`as follows:
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`First Affirmative Defense
`Opposer’s claims fail to state a cause of action upon which relief may be
`granted.
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`Second Affirmative Defense
`Opposer’s claims are barred by the doctrine of waiver.
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`Third Affirmative Defense
`Opposer’s claims are barred by the doctrine of laches.
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`Fourth Affirmative Defense
`Opposer’s claims are barred by the doctrine of estoppel, including equitable
`estoppel.
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`Fifth Affirmative Defense
`Applicant reserves the right after further discovery to amend its Answer to
`Notice of Opposition and Affirmative Defenses and/or to add counterclaims.
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`The Board may strike from a pleading any insufficient defense, or any redundant,
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`immaterial, impertinent or scandalous matter. Fed. R. Civ. P. 12(f); Am. Vitamin
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`Prods. Inc. v. DowBrands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992); TBMP § 506.01
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`(June 2017). Motions to strike are not favored, and as such, a defense will not be
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`stricken as insufficient if the insufficiency is not clearly apparent, or if it raises
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`factual issues that should be determined on the merits. TBMP § 506.01. Moreover,
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`the primary purpose of the pleadings is to give fair notice of the claims or defenses
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`asserted. Id; see also TBMP §§ 309.03 and 311.02. Thus, the Board, in its discretion,
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`may decline to strike even objectionable pleadings where their inclusion will not
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`prejudice the adverse party, but rather will provide fuller notice of the basis for a
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`2
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`Opposition No. 91235047
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`claim or defense. See Order of Sons of Italy in Am. v. Profumi Fratelli, 36 USPQ2d
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`1221, 1223 (TTAB 1995).
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`A. First Affirmative Defense—Failure to State a Claim
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`Applicant’s first affirmative defense provides that the notice of opposition fails to
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`state a claim upon which relief may be granted. A statement that the notice of
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`opposition fails to state a claim upon which relief may be granted is not actually an
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`affirmative defense, but is rather an attack on the sufficiency of the pleadings, which
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`is properly asserted by separate motion filed prior to or concurrently with the answer.
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`See Fed. R. Civ. P. 12(b)(6). The defense, when raised as an affirmative defense, is
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`subject to a motion to strike, which sanctions the Board to determine the sufficiency
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`of the pleadings. See Order of Sons of Italy in Am., 36 USPQ2d at 1222 (citing S.C.
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`Johnson & Son Inc. v. GAF Corp., 177 USPQ 720 (TTAB 1973)).
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`To withstand a motion to dismiss for failure to state a claim upon which relief can
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`be granted, an opposer need only allege such facts as would, if proven, establish that
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`(1) the opposer has standing to maintain the proceeding, and (2) a valid ground exists
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`for opposing registration. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,
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`213 USPQ 185 (CCPA 1982). Specifically, a complaint “must contain sufficient factual
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`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly,
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`550 U.S. 544, 570 (2007)). In particular, a plaintiff must allege well-pleaded factual
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`matter and more than “[t]threadbare recitals of the elements of a cause of action,
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`supported by mere conclusory statements,” to state a claim plausible on its face. Id.
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`3
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`Opposition No. 91235047
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`(citing Twombly, 550 U.S. at 555). Further, all of the plaintiff’s well-pleaded
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`allegations must be accepted as true, and the complaint must be construed in the
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`light most favorable to the plaintiff. See, e.g., Advanced Cardiovascular Sys. Inc. v.
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`SciMed Life Sys. Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Fair
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`Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007).
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`1) Standing
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`Opposer must allege facts in the notice of opposition that, if ultimately proved,
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`would establish that Opposer has a real interest in the proceeding and a reasonable
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`basis for the belief that it will be damaged by the issuance of a registration. Empresa
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`Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
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`Herbko Int’l v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002);
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`Ritchie v. Simpson, 170 F.3d 1092, 1098, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999).
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`In support of its claims, Opposer has pleaded, inter alia, ownership of 11
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`registrations for marks consisting of or containing the word LEGO for a variety of
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`goods and services. Opposer also alleges that it will be damaged by registration of the
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`subject mark LEGOLA. These allegations, read in conjunction with the other
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`allegations in the complaint, demonstrate that Opposer has a real interest in this
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`opposition proceeding and thus, if proved, would establish its standing. Cunningham
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`v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) (registrations
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`sufficient to establish direct commercial interest and standing). In view thereof,
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`Opposer has sufficiently pleaded its standing.
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`4
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`Opposition No. 91235047
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`2) Grounds for Opposition
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`The notice of opposition indicates that the grounds for opposition are: (1)
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`likelihood of confusion pursuant to Section 2(d) of the Trademark Act; (2) dilution by
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`blurring pursuant to Section 43(c) of the Trademark Act; and (3) dilution by
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`tarnishment pursuant to Section 43(c) of the Trademark Act.
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`A. Likelihood of Confusion
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`In order to properly state a claim of likelihood of confusion, Opposer must plead
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`that (1) Applicant’s mark, used in connection with its goods, so resembles Opposer’s
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`mark as to be likely to cause confusion, mistake or deception; and (2) Opposer has
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`either priority of use or a federal registration of Opposer’s pleaded mark. See Fed. R.
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`Civ. P. 8(a); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
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`108 (CCPA 1974).
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`The Board finds that Opposer has sufficiently pleaded a claim of likelihood of
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`confusion. Opposer pleads that Applicant’s mark is similar to Opposer’s LEGO mark
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`and that the goods and services are closely related. See Notice of opposition ¶¶ 9-10.
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`The pleading is legally sufficient to the extent that it clearly contains allegations that,
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`if proved, would establish Opposer’s claim of likelihood of confusion under Section
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`2(d) of the Trademark Act.
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`B. Dilution by Blurring and Tarnishment
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`Pursuant to Section 43(c) of the Trademark Act:
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`the owner of a famous mark that is distinctive, inherently or through acquired
`distinctiveness, shall be entitled to an injunction against another person who,
`at any time after the owner’s mark has become famous, commences use of
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`5
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`Opposition No. 91235047
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`a mark or trade name in commerce2 that is likely to cause dilution by
`blurring or dilution by tarnishment of the famous mark, regardless of the
`presence or absence of actual or likely confusion, of competition, or of actual
`economic injury.
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`15 U.S.C. § 1125(c)(1) (emphasis added).
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`Additionally, to plead a claim of dilution, a plaintiff must allege that its mark
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`became famous prior to any prior to any established, continuous use of Applicant’s
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`involved marks, whether as a trademark or trade name. See Omega SA (Omega AG)
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`(Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1297-98 (TTAB 2016). Here,
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`Opposer pleads that is mark was famous prior to any date upon which Applicant could
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`rely and that Applicant’s registration of its mark in connection with the goods
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`identified therein will dilute the distinctiveness of Opposer’s mark. Notice of
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`opposition ¶¶ 16-17. Accordingly, Opposer has sufficiently pleaded a claim of dilution
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`by blurring.3
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`The Board finds, however, that Opposer has failed to plead a claim of dilution by
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`tarnishment. Dilution by tarnishment is “association arising from the similarity
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`between a mark or trade name and a famous mark that harms the reputation of the
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`famous mark.” 15 U.S.C. § 1125(c)(2)(C). Opposer pleads that Applicant’s use and
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`registration of its mark “in connection with goods that are not manufactured,
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`inspected or approved by Opposer will tarnish the hard earned reputation and
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`2 Commerce is defined by the Lanham Act as “all commerce which may lawfully be regulated
`by Congress,” which includes interstate commerce or commerce between the United States
`and a foreign country. Section 45 of the Lanham Act, 15 U.S.C. § 1127.
`3 The Board does not find Applicant’s argument that Opposer must plead “how” or “why” its
`mark is famous, or each of the factors provided in Section 43(c)(2)(B) of the Trademark Act,
`persuasive.
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`6
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`Opposition No. 91235047
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`goodwill built up in Opposer’s LEGO mark… .” Notice of opposition ¶ 16. Opposer
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`does not plead how Applicant’s registration of its mark is harmful to Opposer’s
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`reputation and thus the pleading does not provide sufficient notice for the basis for
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`Opposer’s claim.
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`Accordingly, Opposer’s motion to strike Applicant’s first affirmative defense is
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`GRANTED with respect to Opposer’s claims of likelihood of confusion and dilution
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`by blurring and DENIED with respect to Opposer’s claim of dilution by tarnishment.
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`The Board freely grants leave to amend pleadings found to be insufficient,
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`however. In view thereof, Opposer will be allowed time in which to file and serve an
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`amended pleading that properly states a claim of dilution by tarnishment, failing
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`which this claim will be dismissed with prejudice.
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`B. Second, Third, and Fourth Affirmative Defenses—Waiver, Laches, and
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`Estoppel
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`Applicant pleads the doctrines of waiver, laches, and estoppel as affirmative
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`defenses. Each of these affirmative defenses consists of a naked, conclusory assertion
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`with no factual support and is therefore insufficiently pleaded. See Fair Indigo LLC
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`v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). A pleading of a defense
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`must include enough factual detail to provide Opposer fair notice of the defense. Fed.
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`R. Civ. P. 8(b)(1); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952,
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`1953 (TTAB 2009); Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292 (TTAB
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`1999) (the primary purpose of pleadings “is to give fair notice of the claims or defenses
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`asserted.”).
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`7
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`Opposition No. 91235047
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`Moreover, the Board notes that in general, the affirmative defense of laches is
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`inapplicable in opposition proceedings. See Nat’l Cable Television Ass’n Inc. v. Am.
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`Cinema Editors Inc., 19 USPQ2d 1424, 1432 (Fed. Cir. 1991).4
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`With regard to Applicant’s affirmative defense of estoppel, the Board also notes
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`that it has been consistently held that the doctrine of estoppel may be invoked only
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`by one who has been prejudiced by the conduct relied upon to create the estoppel, and
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`a party may not therefore base its claim for relief on the asserted rights of strangers
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`with whom it is not in privity of interest. See Textron, Inc. v. The Gillette Co., 180
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`USPQ 152, 154 (TTAB 1973) (internal citations omitted).
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`In this case, because Applicant has failed to plead any facts to support its
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`affirmative defenses of waiver, laches, and estoppel, the affirmative defenses are
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`insufficient.
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`In view thereof, Opposer’s motion to strike Applicant’s affirmative defenses of
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`waiver, laches, and estoppel is GRANTED and the affirmative defenses are
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`STRICKEN from its answer. In its brief in response, however, Applicant requests
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`that if any of its affirmative defenses are stricken, that it is given an opportunity to
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`replead said affirmative defenses. As further set forth below, Applicant is granted
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`4 The Board notes, however, that “under certain circumstances, a laches defense in an
`opposition may be based upon an opposer’s failure to object to an applicant’s earlier
`registration of substantially the same mark for substantially the same goods.” See Aquion
`Partners L.P. v. Envirogard Prod. Ltd., 43 USPQ2d 1371, 1373 (TTAB 1997). Here, however,
`Applicant has not alleged ownership of an earlier-issued registration of substantially the
`same mark for substantially the same goods as its involved mark and identified goods to form
`a valid basis for its laches defense.
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`8
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`Opposition No. 91235047
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`leave to amend its affirmative defenses of waiver, laches, and estoppel, if the facts so
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`warrant.
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`C. Fifth Affirmative Defense—Reservation of Right
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`By way of its fifth “affirmative defense,” Applicant attempts to reserve the right
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`to amend its answer to assert additional affirmative defenses at some unspecified
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`time in the future. The Board finds that Applicant’s reservation of the right to assert
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`additional affirmative defenses is not an appropriate affirmative defense, but rather
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`merely an advisory statement that Applicant may amend its pleading at some future
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`point. A defendant cannot reserve unidentified defenses since it does not provide a
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`plaintiff fair notice of such defenses. Whether or not Applicant may, at some future
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`point, add affirmative defenses would be resolved by way of a motion to amend for
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`Board approval. See Trademark Rule 2.115; Fed. R. Civ. P. 15(a); TBMP § 507.
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`Accordingly, Opposer’s motion to strike Applicant’s fifth affirmative defenses is
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`GRANTED and Applicant’s fifth affirmative defense is STRICKEN.
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`II.
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`Attorney Withdrawal
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`Finally, the Board notes Applicant’s withdrawal of counsel of record, filed October
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`24, 2017.5
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`The motion to withdraw as counsel of record in this proceeding is hereby DENIED
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`without prejudice because it fails to comply with the requirements of Trademark
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`Rules 2.19(b) and Patent and Trademark Rule 11.116.
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`5 Applicant should note that Trademark Rule 11.14 governs individuals authorized to
`practice before the Board in trademark matters.
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`9
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`Opposition No. 91235047
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`Specifically, the motion does not include (1) a statement that if any part of a fee
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`paid in advance has not been earned, a statement that the unearned part has been
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`refunded (or, if appropriate, a statement that no fees have been paid in advance and
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`not refunded); and (2) proof of service of the request upon the client. See Trademark
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`Rule 2.19(b). Cf. In re Legendary Inc., 26 USPQ2d 1478 (Comm'r 1992).
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`In view thereof, counsel is allowed until thirty days from the mailing date of this
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`order to submit a motion that complies with Trademark Rules 2.19(b) and Patent and
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`Trademark Rule 11.116, as indicated above.
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`Proceedings are otherwise suspended pending response to this order. The parties
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`will be notified by the Board when proceedings are resumed, and dates will be reset, as
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`appropriate.
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`A copy of this order has been sent to all persons listed below.
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`cc:
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`Dennis H Cavanaugh
`D H Cavanaugh Associates
`555 Fifth Ave. Fl. 17
`New York, NY 10017
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`Laura Popp-Rosenberg
`Fross Zelnick Lerhman & Zissu PC
`4 Times Square 17th Floor
`New York, NY 10036
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`Rexsitt Italia s.r.l.
`Via Nuova, 534
`I-47032 Bertinoro (ForlÌ-Cesena)
`Italy
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`10
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`Opposition No. 91235047
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`D. Conclusion
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`In summary, Opposer’s motion to strike is GRANTED, in part, and the following
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`affirmative defenses are stricken from Applicant’s answer: first affirmative defense
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`with respect to Opposer’s claim of likelihood of confusion and dilution by blurring;
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`Applicant’s second, third, fourth, and fifth affirmative defenses. Opposer’s motion to
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`strike is DENIED with respect to the following: first affirmative defense with respect
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`to Opposer’s claim of dilution by tarnishment.
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`Proceedings are herein suspended pending Applicant’s response to this order.
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`Upon resumption, dates will be reset and the parties will be granted time in which to
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`file and serve amended pleadings. Opposer will be provided time in which to file and
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`serve an amended notice of opposition that properly states a claim of dilution by
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`tarnishment, failing which this claim will be dismissed with prejudice and this case
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`will proceed solely on Opposer’s asserted claims of likelihood of confusion and dilution
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`by blurring. In turn, Applicant will be allowed time in which to file and serve its
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`answer to the amended pleading, including amended affirmative defenses consistent
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`with this order, if possible, justified, and appropriate.
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`11
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