Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1059783
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`Filing date:
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`06/04/2020
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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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`91254878
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Defendant
`Heineken USA Incorporated
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`DAVID DONAHUE
`FROSS ZELNICK LEHRMAN & ZISSU PC
`151 WEST 42ND ST, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`ddonahue@fzlz.com, skipen@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
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`Motion to Dismiss - Rule 12(b)
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`Sydney Kipen
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`skipen@fzlz.com, ddonahue@fzlz.com, ttabfiling@fzlz.com
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`/Sydney Kipen/
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`06/04/2020
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`Attachments
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`F3548961.pdf(27006 bytes )
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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CB BRAND STRATEGIES, LLC,
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`Opposer,
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`Opposition No. 91254878
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`v.
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`HEINEKEN USA INCORPORATED,
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`Applicant.
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`APPLICANT’S MOTION TO DISMISS OPPOSITION
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`Applicant Heineken USA Incorporated (“Applicant”) hereby moves to dismiss the Notice
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`of Opposition under Federal Rule of Civil Procedure 12(b)(6) because Opposer CB Brand
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`Strategies, LLC (“Opposer”) has failed to state the claim upon which relief can be granted. In
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`this proceeding, Opposer impermissibly attempts to establish priority based upon registrations
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`that Opposer does not own and common-law use by a licensor that does not inure to Opposer’s
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`benefit. As such, Opposer has failed to allege priority and, therefore, cannot succeed on the sole
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`ground pleaded in its Notice of Opposition – likelihood of confusion under Section 2(d) of the
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`Lanham Act, 15 U.S.C. § 1052(d).
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`FACTUAL BACKGROUND
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`On January 4, 2019, Applicant filed Application Serial No. 88249763 (the “Application”)
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`to register the mark THE OFFICIAL BEER OF SOCCER (“Applicant’s Mark”) for use in
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`connection with “beer” in International Class 32 and “promotional sponsorship of soccer” in
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`International Class 35 pursuant to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).
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`{F3535070.4 }
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`On March 25, 2020, Opposer filed the Notice of Opposition against the Application,
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`asserting as its sole grounds for the opposition priority and likelihood of confusion under Section
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`2(d) of the Lanham Act, 15 U.S.C. § 1052(d). 1 TTABVUE 1.
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`In support of its opposition, Opposer purports to rely on registrations for four marks that
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`Opposer defines as the “BEAUTIFUL GAME Marks.”1 1 TTABVUE 5-6 at ¶ 2. But Opposer
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`does not own these registrations; rather, they are owned by Cervecería Modelo De México, S. de
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`R.L. de C.V. (“Modelo”), and Opposer claims to be Modelo’s exclusive U.S. licensee. Id.
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`Opposer claims to be the “exclusive U.S. licensee of common law trademark rights in the
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`trademark OFFICIAL BEER OF THE BEAUTIFUL GAME for use in connection with beer and
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`related goods,” which Opposer separately defines as the “Common Law BEAUTIFUL GAME
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`Marks.” 1 TTABVUE 6 at ¶ 3. Opposer further alleges that the Common Law BEAUTIFUL
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`GAME Marks “have a first use date at least as early as July 1, 2016,” but does not state which
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`entity – Opposer or Modelo – used the common law marks at that time. Id.
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`Opposer then shifts focus back to Modelo’s registered BEAUTIFUL GAME Marks,
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`alleging that “[f]or many years—and long prior to the filing date of the Application—Opposer
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`and its predecessors-in-interest” – presumably Modelo, as no other predecessor-in-interest is
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`identified – “have marketed, advertised, distributed, and sold beer and related goods … using the
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`BEAUTIFUL GAME Marks in U.S. commerce as part of promotions and sponsorships related to
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`soccer.” 1 TTABVUE 6 at ¶ 4. However, Opposer does not identify when Modelo’s use stopped
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`1 The four registered marks pleaded by Opposer, yet owned by Modelo, are Registration No. 5138986 for
`OFFICIAL BEER OF THE BEAUTIFUL GAME, Registration No. 5297243 for CERVEZA MODELO OFFICAL
`BEER OF THE BEAUTIFUL GAME (and design), Registration No. 5038089 for CERVEZA OFFICIAL DEL
`JUEGO BONITO, and Registration No. 5317781 for CERVEZA MODELO CERVEZA OFFICIAL DEL JUEGO
`BONITO (and design), all of the foregoing are registered for beer in International Class 32.
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`{F3535070.4 }
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`2
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`and Opposer’s use began and whether Opposer’s use, as opposed to Modelo’s, occurred before
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`Applicant’s priority date. See id.
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`Based on these allegations, Opposer asserts a single claim for relief under Section 2(d) of
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`the Lanham Act, 15 U.S.C. § 1052(d), but only based upon the registered BEAUTIFUL GAME
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`Marks, not the separately defined Common Law BEAUTIFUL GAME Marks:
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`The Opposed Mark so resembles Opposer’s previously used, registered,
`11.
`valid, and persisting BEAUTIFUL GAME Marks as to be likely, when used on or
`in connection with the goods and services identified in the Application, to cause
`confusion, to cause mistake, or to deceive. The Opposed Mark is thus not
`registrable under Section 2(d) of the United States Trademark Act, 15 U.S.C.
`1052(d).
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` TTABVUE 7 at ¶ 11.
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`ARGUMENT
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`As set forth below, Opposer’s allegations fail to state a claim upon which relief can be
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` 1
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`granted because they impermissibly rely on registrations and use by Modelo, Opposer’s licensor,
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`to prove Opposer’s priority.
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`I.
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`Applicable Legal Standards
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`Under Federal Rule of Civil Procedure 12(b)(6), an applicant may move to dismiss an
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`opposition for “failure to state a claim upon which relief can be granted.” To withstand such a
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`motion, a notice of opposition “must contain sufficient factual matter, accepted as true, to ‘state a
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`claim to relief that is plausible on its face.’” Corporacion Habanos, S.A. v. Rodriguez, Canc. No.
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`92052146, 2011 WL 3871952, at *1 (T.T.A.B. Aug. 1, 2011) (quoting Ashcroft v. Iqbal, 556
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`U.S. 662, 678 (2009)).
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`In the context of proceeding before the Board, “a claim is plausible on its face when the
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`Opposer pleads factual content that if proved, would allow the Board to conclude, or draw a
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`reasonable inference that, the Opposer has standing and that a valid ground for [the opposition]
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`{F3535070.4 }
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`3
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`… exists.” Id.; see also Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §
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`503.02. Factual allegations must not only be well-pleaded, but they also must be more than
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`“‘[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements.” Doyle v. Al Johnson’s Swedish Rest. & Butik, Inc., 101 U.S.P.Q.2d 1780, 1782
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`(T.T.A.B. 2012) (quoting Iqbal, 556 U.S. at 678). Such threadbare statements “do not suffice and
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`are not accepted as true.” Id. (internal quotation marks omitted); see also Bell Atl. Corp. v.
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`Twombly, 550 U.S. 544, 555 (2007) (stating that “courts are not bound to accept as true a legal
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`conclusion couched as a factual allegation” (citation and internal quotation marks omitted)).
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`II.
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`Opposer Cannot Rely on Registrations That It Does Not Own to Support Its Claim
`of Priority
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`To state a claim under Section 2(d), an opposer must plead that it has proprietary rights in
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`its pleaded mark that are prior to Applicant's rights in the applied-for mark. See, e.g., Herbko
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`Int’l, Inc. v. Kappa Books, Inc., 64 U.S.P.Q.2d 1375, 1378 (Fed. Cir. 2002).
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`Here, Opposer alleges in Paragraph 11 of its Opposition that Applicant’s Mark “so
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`resembles Opposer’s previously used, registered, valid, and persisting BEAUTIFUL GAME
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`Marks as to be likely… to cause confusion, to cause mistake, or to deceive. [Applicant’s Mark] is
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`thus not registrable under Section 2(d) of the United States Trademark Act, 15 U.S.C. 1052(d).”
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`1 TTABVUE 7 at ¶ 11 (emphasis added). But Opposer does not own the registered BEAUTIFUL
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`GAME Marks – rather, its licensor, Modelo, owns them.
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`It is black-letter law that as a mere licensee, Opposer is not entitled to the benefits of
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`these registrations and cannot rely upon them to establish its priority. See TBMP
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`§ 704.03(b)(1)(B) (“§ 7(b) presumptions accorded to a registration on the Principal Register
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`accrue only to the benefit of the owner of the registration, and hence come into play only when
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`the registration is made of record by its owner”). As such, the pleaded registrations are irrelevant
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`{F3535070.4 }
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`4
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`to these proceedings. See, e.g., Nat’l Ass’n of Certified Home Inspectors, Inc. v. Am. Soc’y of
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`Home Inspectors, Inc., Opp. No. 91166484, 2008 WL 4155525, at *4 (T.T.A.B. Aug. 28, 2008)
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`(dismissing opposition and finding no priority where opposer, a licensee, could not rely on
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`“ownership of a [pleaded] registration because it [was] not the owner of the registration”);
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`Joseph S. Finch & Co. v. E. Martinoni Co., 157 U.S.P.Q. 394, 395 (T.T.A.B. 1968) (rejecting
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`opposer’s attempt to rely on registrations owned by its corporate parent and affiliates: “Opposer
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`is not the registrant of any of the registrations filed with its notice … and said registrations stand
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`in the same category as if they were owned by independent and unaffiliated companies.”).
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`Accordingly, to the extent Opposer purports to rely on Modelo’s registrations, its Notice
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`of Opposition must be dismissed.
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`III. Opposer Cannot Rely on Modelo’s Prior Use to Support Its Claim of Priority
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`Opposer cannot save its failed claim of priority by pointing to common law use. While
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`Opposer asserts that it is the exclusive licensee of the “Common Law BEAUTIFUL GAME
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`Marks” (1 TTAB 6 at ¶ 3), it does not rely on those purported common law marks in its claim for
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`relief; rather, it relies solely on rights in the “BEAUTIFUL GAME Marks,” which solely
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`encompass Modelo’s registered marks (see 1 TTAB 6 at ¶ 2).
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`Nor can Opposer claim priority based on its allegations concerning use of Modelo’s
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`registered BEAUTIFUL GAME Marks. In the Notice of Opposition, Opposer asserts “for many
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`years-and long prior to the filing date of the Application-Opposer and its predecessors-in-interest
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`have marketed, advertised, distributed, and sold beer and related goods …using the BEAUTIFUL
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`GAME Marks in U.S. commerce as part of promotions and sponsorships related to soccer.” 1
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`TTABVUE 6 at ¶¶ 4 (emphasis added). But Opposer fails to allege when the license was granted or
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`when Modelo’s use stopped and Opposer’s use began. While a licensee’s use inures to the benefit
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`of the licensor, this is a one-way street – to establish priority based upon use of a licensed mark, a
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`{F3535070.4 }
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`5
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`licensee must establish its own priority and cannot rely on use by its licensor. Moreno v. Pro
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`Boxing Supplies, Inc., 124 U.S.P.Q.2d 1028, 1036 (T.T.A.B. 2017) (“[Petitioner,] a mere licensee,
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`cannot rely on her licensor’s use to prove priority.”). Since Opposer fails to clearly state its own
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`use of the BEAUTIFUL GAME Marks in connection with the goods identified in the Application
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`prior to Applicant’s priority date, it has failed to allege priority on common law use of the marks.2
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`As such, its Notice of Opposition must be dismissed on this ground as well. See id. (denying
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`petition to cancel due to licensee’s failure to prove her own prior use of pleaded mark).
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`CONCLUSION
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`Opposer has failed to allege facts sufficient to establish priority and, thus, has failed to
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`state any claim upon which relief can be granted. For this reason, the Opposition should be
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`dismissed in its entirety.
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`Dated: June 3, 2020
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`New York, New York
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`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
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`By: /David Donahue/
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`David Donahue
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`Sydney Kipen
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`Telephone: (212) 813-5900
`Email: ddonahue@fzlz.com
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`skipen@fzlz.com
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`Attorneys for Applicant Heineken USA Incorporated.
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`2 While Opposer also alleges that it has “used the BEAUTIFUL GAME Marks, and has continued to use the
`BEAUTIFUL GAME Marks, without interruption in U.S. commerce prior to Applicant’s adoption, use, and application
`to register the Opposed Mark” (1 TTABVUE 7 at ¶ 10), it fails to identify the goods or services for which such
`purported use occurred. As such, this vague and conclusory allegation is insufficient to support a claim of priority. See,
`e.g., Entrepreneurial Ventures Capital Co. v. Wet Holdings (Global) Ltd., Opp. No. 91241478, 2019 WL 1306912, at
`*2 (T.T.A.B. Mar. 20, 2019) (rejecting reliance on purported common law rights in design mark where opposer failed
`to “identify with particularity the goods or services for which the logo is used”). Moreover, given Opposer’s prior
`attempt to rely upon use by Modelo (1 TTABVUE 6 at ¶ 4), it is not clear whose “use” Opposer is referring to in
`Paragraph 10.
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`{F3535070.4 }
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`6
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`I hereby certify that, on this 4th day of June, 2020, I caused a copy of the foregoing
`APPLICANT’S MOTION TO DISMISS OPPOSITION to be sent by email to Opposer at the
`email addresses emaluf@seyfarth.com, jschachter@seyfarth.com, jheinbockel@seyfarth.com,
`and ttabdocket@seyfarth.com.
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` /Sydney Kipen/
` Sydney Kipen
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`CERTIFICATE OF SERVICE
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`{F3535070.4 }
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