Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA944398
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`Filing date:
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`12/28/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91243939
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`Party
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`Correspondence
`Address
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`Plaintiff
`Facebook, Inc.
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`JENNIFER R FINDLEY
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET NE, SUITE 2800
`ATLANTA, GA 30309
`UNITED STATES
`jfindley@ktslaw.com, tlord@ktslaw.com, rdthomas@ktslaw.com, kteil-
`haber@ktslaw.com, tmadmin@ktslaw.com
`404-815-6500
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`Submission
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`Filer's Name
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`Filer's email
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`Motion to Dismiss - Rule 12(b)
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`Tywanda H. Lord
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`tlord@ktslaw.com, jfindley@ktslaw.com, rdthomas@ktslaw.com, brnel-
`son@ktslaw.com, kteilhaber@ktslaw.com, tmadmin@ktslaw.com
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`Signature
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`Date
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`/Tywanda H. Lord/
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`12/28/2018
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`Attachments
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`2018.12.28 Facebook Motion to Dismiss (PAWSBOOK).pdf(132367 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of application Serial No. 87761486
`For the Trademark PAWSBOOK
`Published in the Official Gazette on June 5, 2018
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`MOTION TO DISMISS APPLICANT’S COUNTERCLAIM
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`Opposer/Counterclaim-Respondent Facebook,
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`Inc.
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`(“Facebook” or “Opposer”)
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`respectfully requests the Board enter an order dismissing Applicant’s counterclaim asserting
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`Opposer’s mark, Reg. No. 4,471,1611, should be cancelled (Dkt. 6 at 5) for failure to state a claim
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`upon which relief may be granted in accordance with Fed. R. Civ. P. 12(b)(6) and TBMP § 503.
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`I.
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`Statement of Facts and Procedural Background
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`On January 19, 2018, Applicant filed the Subject Application on the basis of Applicant’s
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`use of the mark in commerce pursuant to 15 U.S.C. § 1051(a). And on June 5, 2018 the United
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`1 Applicant’s Answer and Counterclaim states in the heading on page 5 that Applicant seeks to
`cancel Opposer’s mark, Reg. No. 4,339,123. However, in the first paragraph underneath that
`heading, (and on the first page of the Answer and Counterclaim) Applicant says he “hereby seeks
`cancellation of Opposer’s Registration No. 4,471,161, registered on January 21, 2014 for the word
`mark FACEBOOK covering various services in International Class 041.” Dkt. 6 at 5. The analysis
`does not change whether Applicant is asking the Board to cancel one particular FACEBOOK word
`mark or another. Opposer intends this motion to ask the Board to dismiss Applicant’s counterclaim
`to cancel either Reg. No. 4,339,123 or 4,471,161. To the extent Applicant is asking the Board to
`cancel any other registrations that he mentions throughout his Answer and Counterclaim, this
`motion applies to those as well.
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` Opposition No. 91243939
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`FACEBOOK, INC.,
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`v.
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`OLUSEGUN AKOGUN,
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`Opposer,
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`Applicant.
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`States Patent and Trademark Office published the Subject Application in the Official Gazette in
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`connection with the following services in International Class 42:
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`Computer services, namely, creating an on-line community for registered users to
`participate in discussions, get feedback from their peers, form virtual communities, and
`engage in social networking services in the field of pet ownership, pet care, pet adoption,
`pet grooming, pet nutrition, pet care; Computer services, namely, creating an on-line
`community for registered users to participate in discussions, get feedback from their peers,
`form virtual communities, and engage in social networking, all related to pet ownership;
`Creating an on-line community for pet owners.
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`On June 28, 2018, Facebook timely took a 30-day extension of time. On July 26, 2018, Facebook
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`took a second extension of time. During that time the parties discussed potential settlement, but
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`were unable to reach a resolution. On October 2, 2018, Facebook timely filed its Notice of
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`Opposition. See Dkt. 1. Then on November 26, 2018, Applicant filed his Answer and
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`Counterclaim. See Dkt. 6. Applicant asserts a counterclaim for cancellation of Facebook’s word
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`mark FACEBOOK, Reg. No. 4,471,161 (“Facebook’s Mark”), registered on January 21, 2014 for
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`services in International Class 41, and specifically for:
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`Providing computer, electronic and online databases in the field of cultural commentary,
`social entertainment events, art, performing arts, music, dance, and education; on-line
`journals, namely, blogs in the fields of cultural commentary, social entertainment events,
`art, performing arts, music, dance, education, politics, culture, economics, and science;
`electronic publishing services, namely, publication of text and graphic works of others via
`computer and communications networks in the fields of cultural commentary, social
`entertainment events, art, performing arts, music, dance, education, politics, culture,
`economics, and science; publishing of electronic publications; entertainment services,
`namely, providing temporary use of interactive, multiplayer and single player games for
`games played via computer or communication networks; providing information about
`online non-downloadable computer games and video games via computer or
`communication networks; contest and incentive award programs designed to recognize,
`reward and encourage individuals and groups which engage in self-improvement, self-
`fulfillment, charitable, philanthropic, volunteer, public and community service and
`humanitarian activities and sharing of creative work product.
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`Applicant alleges Facebook’s Mark should be cancelled because it was “in reality a phantom mark
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`registration of ____Book,” or an improper registration of “two marks simultaneously,” and
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`2
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`constitutes fraud on the United States Patent and Trademark Office (“USPTO”). See Dkt. 6 ¶¶ 70-
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`76.
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`II.
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`Applicant’s Counterclaim for Cancellation Should be Dismissed
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`A. Motion to Dismiss Legal Standard
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`Federal Rule of Civil Procedure 12(b)(6) allows a party to move to dismiss allegations for
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`“failure to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). “The purpose
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`of a Rule 12(b)(6) motion is to allow for elimination of actions that are fatally flawed in their legal
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`premises and destined to fail, and thus to spare litigants the burdens of unnecessary pretrial and
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`trial activity.” See Fiat Grp. Autos. S.p.A. v. ISM, Inc., 94 U.S.P.Q.2d 1111, 1112 (T.T.A.B. 2010)
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`(citation omitted).
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`To state a claim upon which relief may be granted in a proceeding before the Board, a
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`notice or petition “must contain sufficient factual matter, accepted as true, to state a claim to relief
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`that is plausible on its face.” See Doyle v. Al Johnson’s Swedish Rest. & Butik Inc., 101 U.S.P.Q.2d
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`1780, 1782 (T.T.A.B. 2012) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (dismissing
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`petition to cancel based on deficient factual pleadings)). “Determining whether a complaint states
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`a plausible claim for relief [is] a context-specific task that requires the reviewing court to draw on
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`its judicial experience and common sense.” Iqbal, 556 U.S. at 679 (citation omitted). “While the
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`court assumes that the facts in a complaint are true, it is not required to indulge in unwarranted
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`inferences in order to save a complaint from dismissal.” Juniper Networks Inc. v. Shipley, 98
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`U.S.P.Q.2d 1491, 1493 (Fed. Cir. 2011) (citation omitted). Additionally, the Board is “not bound
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`to accept as true a legal conclusion couched as a factual allegation.” Acceptance Ins. Cos., Inc. v.
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`United States, 583 F.3d 849, 853 (Fed. Cir. 2009) (citation omitted).
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`3
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`For claims asserting fraud, Trademark Rule 2.116(a) incorporates the heightened pleading
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`standard set forth in Federal Rule of Civil Procedure 9(b). See Asian & W. Classics B.V. v. Selkow,
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`92 U.S.P.Q.2d 1478, 1479 (T.T.A.B. 2009). Under Rule 9(b), “a party must state with particularity
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`the circumstances constituting fraud or mistake.”
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`B.
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`Applicant’s Counterclaim for Cancellation Fails to State a Claim
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`Applicant alleges Facebook’s Mark should be cancelled on two grounds: 1) because
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`Facebook registered two marks simultaneously in registering FACEBOOK, and 2) because
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`Facebook committed fraud in procuring the subject registration of FACEBOOK. Applicant’s
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`counterclaim is essentially an attack on Facebook’s enforcement efforts employed AFTER it
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`acquired the subject registration; neither ground for cancellation states a claim of relief.
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`i.
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`Facebook Did Not Register Two Marks in a Single Registration
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`Applicant alleges that the subject registration improperly comprises two separate
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`marks—Face and Book. Applicant’s allegation is unsupported by the facts alleged in the
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`counterclaim and well-established law.
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`Facebook can and did obtain a registration for the compound mark FACEBOOK. A
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`compound mark is one that is comprised of two or more distinct words (or words and syllables)
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`that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, and
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`PULSAIR). TMEP 1213.05(a).
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`Applicant alleges that Facebook’s compound mark is two separate marks because
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`Facebook uses its registration as the basis to support oppositions against applications to register
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`marks that contain either the term “face” or “book.” The law permits Facebook’s actions where
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`the marks at issue are “sufficiently similar” in terms of sight, sound, and commercial impression
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`such that confusion is likely. In Re White Birch Vineyards, LLC, No. 86217989, 2016 WL
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`4
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`1045685, at *3 (T.T.A.B. Feb. 19, 2016). Where two marks share one word and differ on one
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`word, they can still be confusingly similar when considering the commercial impression of the
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`marks as a whole. See id. (finding TANGLED TREE and TANGLED BIRCH to be confusingly
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`similar because the marks share the same first word and both have one syllable second words
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`that create similar commercial impressions).
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`Asserting a compound mark against an applied-for mark that shares the same or a similar
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`word does not render the registration of the compound mark invalid, as Applicant suggests. To
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`hold otherwise would necessarily mean that the owners of compound marks could never oppose
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`a mark that incorporated only one word of the compound mark. Because Applicant has only
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`relied on Facebook’s enforcement efforts as a basis for his claim that Facebook registered two
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`marks in a single registration, this ground for cancellation cannot stand and must be dismissed.
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`ii.
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`Applicant Fails to State a Claim for Fraud
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`Applicant’s allegations for fraud also fail to state a claim. A claim of fraud requires that
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`the registrant knowingly make a false, material representation with the intent to deceive the PTO.
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`In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009).
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` Here again, Applicant relies solely on Facebook’s enforcement efforts that occurred
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`AFTER the procurement of the FACEBOOK registration at issue to allege fraud in the
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`procurement of that registration. Applicant is wrong on the logic and the law.
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`Fundamentally, Applicant fails to identify a single false statement Facebook made in
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`procuring the registration at issue. “[A] false statement is one of the critical elements in proving
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`fraud.” Swiss Watch Int’l Inc. v. Fed’n. of the Swiss Watch Indus., 101 U.S.P.Q.2d 1731, 1746
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`(T.T.A.B. 2012); accord Dragon Bleu (SARL) v. VENM, LLC, 112 U.S.P.Q.2d 1925, 1928
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`5
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`(T.T.A.B. 2014) (“Because a false statement is one of the critical elements in proving fraud, the
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`fraud claim is insufficient.”) (citation omitted).
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`Applicant attempts to manufacture a false statement by broadly claiming that Facebook
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`represented to the USPTO that it was applying to register a single trademark, while having the
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`intent to enforce against “book” and “face” alone. Facebook’s enforcement intentions were not at
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`issue during the procurement of the registration. As explained above and permitted by law,
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`Facebook filed for and obtained a registration for a single compound mark. There is nothing
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`misleading or improper about doing so. Similarly, using its registration of its compound mark to
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`enforce against marks that it believes will damage its rights in, and cause confusion with, its
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`famous FACEBOOK mark is authorized by the law. See 15 U.S.C. § 1063(a) (“Any person who
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`believes that he would be damaged by registration of a mark upon the principal register, including
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`the registration of any mark which would be likely to cause dilution . . . may, upon payment of the
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`prescribed fee, file an opposition . . . .”). Everything Applicant alleges Facebook did is authorized
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`by the plain reading of the law and does not constitute a deliberate and material misrepresentation
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`made to the USPTO with the intent to defraud the office.
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`Applicant’s pleading lacks on its face a false, material statement made by Facebook with
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`an intent to deceive the USPTO in the procurement of the FACEBOOK registration at issue.
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`Therefore no viable claim for fraud exists, and Applicant’s fraud counterclaim must be dismissed.
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`Dragon Bleu (SARL), 112 U.S.P.Q.2d at 1928 (dismissing fraud claim based on insufficient
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`allegations).
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`III. Conclusion
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`For all of the foregoing reasons, Opposer respectfully requests that the Board issue an order
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`dismissing Applicant’s counterclaim for cancellation of Facebook’s Mark.
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`6
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`/Tywanda H. Lord/
`Tywanda H. Lord
`Jennifer R. Findley
`Rhojonda D. C. Thomas
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309
`Telephone: 404.815.6500
`Facsimile: 404.815.6555
`tlord@kilpatricktownsend.com
`jfindley@kilpatricktownsend.com
`rdthomas@kilpatricktownsend.com
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`Counsel for Opposer Facebook, Inc.
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`Date: December 28, 2018
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`By:
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`7
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`This is to certify that a copy of the foregoing document was served on applicant’s
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`counsel of record via email correspondence, addressed to:
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`CERTIFICATE OF SERVICE
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`ben@manevitzlaw.com
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` /Kris Teilhaber/
` Kilpatrick Townsend & Stockton
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`8
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`In the matter of application Serial No. 87761486
`For the Trademark PAWSBOOK
`Published in the Official Gazette on June 5, 2018
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` Opposition No. 91243939
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`FACEBOOK, INC.,
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`v.
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`OLUSEGUN AKOGUN,
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`Opposer,
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`Applicant.
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