Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92057664
`
`Plaintiff
`Tastes Great LLC
`
`JOSEPH A URADNIK
`URADNIK LAW FIRM PC
`PO BOX 47624
`MINNEAPOLIS, MN 55447
`UNITED STATES
`
`joe@ip|awspot.com
`
`Motion to Dismiss - Rule 12(b)
`
`Joseph A. Uradnik
`
`)oe@ip|awspot.com
`
`/Joseph A Uradnikl
`10/23/2013
`
`2013-10-23 Plaintiffs Response to Motion to Dismiss.pdf(298380 bytes)
`2013-10-23 Declaration of Joseph Uradnik Part1.pdf(3962440 bytes)
`2013-10-23 Declaration of Joseph Uradnik Part2.pdf(5127355 bytes)
`2013-10-23 Declaration of Joseph Uradnik Part3.pdf(2072071 bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA566599
`ESTTA Tracking number:
`10/23/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057664
`Plaintiff
`Tastes Great LLC
`JOSEPH A URADNIK
`URADNIK LAW FIRM PC
`PO BOX 47624
`MINNEAPOLIS, MN 55447
`UNITED STATES
`joe@iplawspot.com
`Motion to Dismiss - Rule 12(b)
`Joseph A. Uradnik
`joe@iplawspot.com
`/Joseph A Uradnik/
`10/23/2013
`2013-10-23 Plaintiffs Response to Motion to Dismiss.pdf(298380 bytes )
`2013-10-23 Declaration of Joseph Uradnik Part1.pdf(3962440 bytes )
`2013-10-23 Declaration of Joseph Uradnik Part2.pdf(5127355 bytes )
`2013-10-23 Declaration of Joseph Uradnik Part3.pdf(2072071 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92057664
`
`PLAINTIFF’S RESPONSE TO
`DEFENDANT’S MOTION TO
`DISMISS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`
`In re Registration No. 3,484,548
`On the Principal Register
`Mark: STEVE’S & ED’S
`Issued: August 12, 2008
`
`Tastes Great LLC,
`Plaintiff,
`
`v.
`Master Sales & Marketing, LLC,
`
`Defendant.
`
`
`
`
`
`PLAINTIFF’S RESPONSE TO DEFENDANT’S MOTION TO DISMISS
`
`Plaintiff respectfully requests the US Trademark Trial and Appeal Board (“Board”) deny
`
`Defendant’s motion in its entirety. As shown below, the petition sufficiently establishes that
`
`Plaintiff has standing, i.e., a real interest in the outcome of this proceeding, since Defendant has
`
`asserted the registration at issue against Plaintiff. Statutory grounds for cancellation of
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`Defendant’s registration also exist.
`
`
`I.
`
`
`
`History of the Parties’ Current Dispute
`
`On June 25, 2013, Defendant asserted claims of trademark infringement, unfair
`
`competition, false designation of origin, and false description claims against Plaintiff. Petition,
`
`¶2; Exh. A.1 Defendant demanded that Plaintiff “immediately” stop using “STEVE’S” and “any
`
`confusingly similar term” for its products. Exh. A, at p. 2.
`
`                                                                                                                
`  
`
`
`
`Defendant asserted, among other things, the existence of actual confusion in the
`
`marketplace due to Plaintiff’s actions. Exh. A, at pp. 1-2; Exh. B, at p. 1. Defendant asserted that
`
`such actual confusion “substantiated” trademark infringement, unfair competition, false
`
`1 As used herein, “Petition ¶___” refers to the specific referenced paragraph of Plaintiff’s petition
`for cancellation in this proceeding, and “Exh. ___” refers to the specific referenced exhibit
`accompanying this Response.
`
`1  
`
`

`
`designation of origin, and false description. Exh. A, at p. 1. Defendants asserted as “fact” that
`
`“there has been at least one instance of actual confusion in the marketplace.” Exh. A, at pp. 1-2.
`
`Defendants even asserted specific details of the alleged actual confusion:
`
`Specifically, a representative with Wakefern Food Corporation,
`one of our client’s distributors, has recently contacted Master
`Sales & Marketing regarding the “STEVE’S PEPPER SAUCE”
`brand, inquiring as to whether this was a new product line of our
`client.
`
`
`Exh. A, at p. 2.
`
`
`
`In reality, Defendant’s assertion of actual confusion was false. Exh. C, at p. 1. With
`
`apparently only minimal investigative efforts, Defendant belatedly confirmed on or about July 10,
`
`2013, that no actual confusion exists. 2 Exh. C, at p. 1.
`
`
`
`Defendant however continued to press the current dispute. Apparently, on or about July
`
`10, 2013, Defendant developed a scheme of plausible deniability for its falsehoods involving: (i)
`
`claiming that an “honest mistake” had been made, (ii) maintaining their assertion of likelihood of
`
`confusion, and (iii) claiming “We were misinformed with regard to the brand.” Exh. C, at p. 1.
`
`
`
`On July 26, 2013, Plaintiff responded to Defendants June 25, 2013 cease and desist letter
`
`through counsel, and requested additional information to support Defendant’s trademark
`
`infringement allegations:
`
`If you have any evidence that tends to suggest that there is a
`likelihood of confusion
`in
`this case,
`that confusion
`is
`widespread, and/or that actual confusion has in fact occurred
`here, please provide specific details for our consideration
`without delay (preferably set forth in the form of a likelihood of
`confusion analysis that addresses each of the pertinent factors).
`
`
`
`                                                                                                                
`
`2 Presumably, Defendant made its false assertions of actual confusion knowing them to be false,
`or in complete disregard for the truth of the assertions, recklessly, and willfully. Defendant, on
`July 9, 2013, learned for the first time that Plaintiff had retained counsel to investigate the
`trademark dispute. On information and belief, only after learning that fact did Defendant even
`attempt to determine whether the assertions set forth above were true or not. Plaintiff’s counsel
`first contacted counsel for Defendant at the close of business on July 9, 2013, at 3:50 PM CDT.
`Exh. B. Defendant’s counsel admitted the falsehoods in Exh. A the very next day, at 1:12 PM
`CDT, after only a few working hours had passed. Exh. C.
`
`  
`
`2  
`
`

`
`Exh. D. Plaintiff on July 26, 2013, also provided Defendants an “out” to avoid its unfortunate
`
`predicament of having made false statements:
`
`However, we trust that your client by now has reconsidered its
`position, and that it will agree in writing to drop this matter
`completely.
`
`
`Exh. D.
`
`
`
`Plaintiff received no response to its request and offer of July 26, 2013. Plaintiff
`
`contacted Defendant to confirm their receipt of Plaintiff’s July 26 communication. Exh. E, at p.
`
`2. Defendant promptly responded on July 31, 2013, that Plaintiff’s July 26 communication was
`
`received, and that “We will be providing a reply soon.” Exh. E, at p. 1.
`
`
`
`During the period July 26-31, 2013, Defendants apparently adopted a stall strategy, in the
`
`hope of beginning to turn the current dispute to Defendants’ favor by simply not responding for
`
`approximately two weeks. Presumably, Defendants hoped that Plaintiff, with its limited
`
`resources and desire to resolve the dispute amicably, simply would wait for a response from
`
`Defendant, and thus permit an impending August 12, 2013 deadline to slip past. That is,
`
`Defendant apparently refused to respond to Plaintiff’s reasonable request for information in hopes
`
`that the 5-year anniversary of the grant of US Trademark Registration No. 3,484,548 would slip
`
`by, and the registered mark would become incontestable. See 15 U.S.C. § 1065 (registered
`
`trademark that has been in continuous use for five consecutive years subsequent to its registration
`
`date and is still in use in commerce shall be incontestable, subject to certain provisions set forth).
`
`
`
`Receiving no timely substantive response from Defendants, Plaintiff instituted this
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`cancellation proceeding on August 9, 2013, seeking to cancel US Trademark Registration No.
`
`3,484,548 for the designation STEVE’S & ED’S (the “registration at issue”).
`
`
`
`Plaintiff promptly informed Defendant of the filing of the petition for cancellation via US
`
`first class mail service on two attorneys for Defendant, Mr. Carl Spagnuolo and Ms. Amy Price.
`
`Exh. G, at p. 10. Plaintiff also sent Ms. Price that same day a courtesy email including the
`
`petition. Exh. F.
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`3  
`
`

`
`
`
`Defendant apparently had not expected the timely filing of the cancellation petition. On
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`information and belief, on or about August 9, Defendant abandoned its failed stall strategy and
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`instead began to act with increased urgency to settle the dispute quickly. On August 13, 2013,
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`Defendant broke its previous silence by offering to enter into a consent and coexistence
`
`agreement with Plaintiff. Exh. I, at p. 2.
`
`
`
`On August 15, 2013, Defendant learned that a quick resolution of the present dispute had
`
`become unlikely. Counsel for Plaintiff informed Defendant’s counsel that day that Defendant’s
`
`August 13 settlement proposal had not been discussed yet with Plaintiff. Exh. J, at pp. 1-2.
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`Further, counsel for Plaintiff advised Defendants to prepare to respond to the recently-filed
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`petition for cancellation by the September 21, 2013 deadline to answer. Exh. J, at pp. 1-2.
`
`
`
`The next day, on Friday, August 16, 2013, at the close of business, Mr. Spagnuolo swore
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`to “facts” that upon information and belief Mr. Spagnuolo knew were untrue. Exh. K. Mr.
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`Spagnuolo submitted a Combined Declaration of Use and Incontestability under Sections 8 & 15
`
`to the US Patent and Trademark Office for US Trademark Registration No. 3,484,548 (i.e., the
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`registration at issue here). Exh. K. That Affidavit, in part, provided:
`
`
`Declaration
`
`
`The mark is in use in commerce on or in connection with the goods and/or
`services identified above, as evidenced by the attached specimen(s) showing the
`mark as used in commerce. The mark has been in continuous use in commerce
`for five (5) consecutive years after the date of registration, or the date of
`publication under Section 12(c), and is still in use in commerce. There has been
`no final decision adverse to the owner's claim of ownership of such mark, or to
`the owner's right to register the same or to keep the same on the register; and
`there is no proceeding involving said rights pending and not disposed of either
`in the U.S. Patent and Trademark Office or in the courts.
`
`The undersigned being hereby warned that willful false statements and the like
`are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001,
`and that such willful false statements and the like may jeopardize the validity of
`this document, declares that he/she is properly authorized to execute this
`document on behalf of the Owner; and all statements made of his/her own
`knowledge are true and that all statements made on information and belief are
`believed to be true.
`
`
`4  
`
`

`
`Signature: /Carl J. Spagnuolo/ Date: 08/16/2013
`Signatory's Name: Carl J. Spagnuolo
`Signatory's Position: Attorney of record, Florida bar member
`
`
`
`Exh. K, at p. 6 (bold/underline emphasis added).
`
`The above-highlighted portion of the Affidavit signed and submitted on August 16, 2013,
`
`
`
`by Mr. Spagnuolo, is false in view of the present pending cancellation proceeding filed by
`
`Plaintiff on August 9, 2013. Attorney Spagnuolo was served a copy of that petition, which was
`
`scheduled to be delivered on August 13, 2013 (Exh. H), and presumably he was informed by Ms.
`
`Price of the cancellation petition upon its filing. So, Mr. Spagnuolo undoubtedly knew of the
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`pending cancellation proceeding by the time he signed and submitted the Affidavit on August 16.
`
`On information and belief, the Affidavit was submitted in self-interest, for the purpose of
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`plausible deniability.
`
`
`
`By September 12, 2013, Plaintiff had discovered and brought the matter of the false
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`Affidavit to the attention of Defendant, strongly suggesting that it be promptly abandoned. Exh.
`
`L, at p. 1. However, no effort toward abandonment of the false Affidavit apparently has been
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`made to date. Also, Ms. Price no longer represents Defendant, and she no longer works for Mr.
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`Spagnuolo’s firm. Exh. M. Defendant’s promised basis for the charge of likelihood of confusion
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`still has not been provided to Plaintiff.
`
`
`II.
`
`
`
`The Parties’ Dispute Continues, Which Establishes Plaintiff’s Standing
`
`Plaintiff is a fledgling small business in northern Minnesota harmed by Defendants’
`
`assertion of the registration at issue. Defendant here is attempting through its trademark bullying
`
`tactics to enforce alleged trademark rights beyond a reasonable interpretation of the scope of the
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`rights legitimately granted to a trademark owner.
`
`
`
`Defendant asserted the registration at issue against Plaintiff on June 25, 2013. Since
`
`then, Defendant has refused to resolve the dispute amicably. Even after Defendant admitted that
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`5  
`
`

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`no actual confusion in fact exists here, Defendant continues to assert a likelihood of confusion,
`
`and continues to press alleged Lanham Act violations against Plaintiff. See, e.g., Exh. C.
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`
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`To the best of Plaintiff’s knowledge, neither the Board nor any court has ever dismissed a
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`cancellation or other proceeding for lack of standing when a cancellation petitioner faced charges
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`of trademark infringement involving the registration sought to be canceled. However, that is
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`what Defendant is now asking the Board to do.3 Defendant’s motion should be denied.4
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`III.
`
`
`
`
`
`
`Plaintiff’s Real Interest in the Outcome of this Proceeding is
`Sufficient To Establish Plaintiff’s Standing
`
`The statutory basis for a cancellation proceeding is Section 14 of the Trademark Act of
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`1946, 15 U.S.C. § 1064, which in pertinent part provides:
`
`A petition to cancel a registration of a mark, stating the grounds relied
`upon, may … be filed as follows by any person who believes that he is or
`will be damaged … by the registration of a mark on the principal register
`. . .
`
`Within five years from the date of the registration of the
`(1)
`
`mark under this Act.
`
`(3) At any time if the registered mark becomes the generic name
`
`for the goods or services, or a portion thereof, for which it is registered,
`
`                                                                                                                
`
`3 The Board may assume in deciding the question before it that Defendant has made a non-
`frivolous likelihood of confusion claim against Plaintiff. See Exh. A. Such a claim, along with
`making the registration of record, would establish Plaintiff’s standing here. See, e.g., Barbara's
`Bakery, Inc. v. Barbara Landesman, Opposition No. 91157982, (TTAB 2007) (“We find that
`opposer has established its standing to oppose registration of applicant's mark. In particular,
`opposer has properly made its pleaded registration of record, and opposer's likelihood of
`confusion claim is not frivolous.”) (citing Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
`USPQ2d 1842 (Fed. Cir. 2000) and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
`213 USPQ 185 (CCPA 1982)) and Young v. AGB Corp., 47 USPQ2d 1752, 1755 (Fed. Cir. 1998)
`(“no basis” for construing standing requirements inconsistently in opposition and cancellation
`proceedings).
`
` 4
`
` Defendant now argues that there is no standing here. In view of the Board’s prior decisions on
`standing, logic suggests that Defendant must now believe its earlier claim of trademark
`infringement is frivolous (although Defendant likely will refuse to admit as much). Thus, one of
`Defendant’s present motion and Defendant’s continuing likelihood of confusion allegation
`against Plaintiff now must be frivolous. If the former, the Board is respectfully requested to
`cancel the registration at issue as an appropriate sanction for Defendant’s conduct.
`
`  
`
`6  
`
`

`
`or is functional, or has been abandoned, or its registration was obtained
`fraudulently or contrary to the provisions of section 4 [15 U.S.C. § 1054]
`or of subsection (a), (b), or (c) of section 2 [15 U.S.C. § 1052] for a
`registration under this Act, or contrary to similar prohibitory provisions
`of such prior Acts for a registration under such Acts, or if the registered
`mark is being used by, or with the permission of, the registrant so as to
`misrepresent the source of the goods or services on or in connection with
`which the mark is used. If the registered mark becomes the generic name
`for less than all of the goods or services for which it is registered, a
`petition to cancel the registration for only those goods or services may be
`filed.
`
`15 U.S.C. § 1064. Thus, a petition to cancel may be brought by any person who believes she is
`
`or will be damaged by the registration of a mark. Defendant meets that test. See, e.g., Petition
`
`¶1-¶4 (registration asserted against Plaintiff); ¶32 (Plaintiff’s rights impaired by continuing
`
`registration); ¶34-¶36 (registration impinges upon Plaintiff’s right to use name in business); ¶34-
`
`¶35 and ¶37-¶40 (Plaintiff’s right to create and strengthen public association with Steve Olds
`
`impaired); ¶34-¶35, ¶37-¶39 and ¶41 (Plaintiff damaged by chilling effect of the registration at
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`issue on Plaintiff’s speech); and ¶34-¶35, ¶37-¶39, and ¶42 (Plaintiff damaged by registration at
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`issue inasmuch as Plaintiff denied opportunity to establish, maintain, and/or expand worth,
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`standing, fame, publicity, and respect for Plaintiff’s voice); see also, Petition ¶34 (public interest
`
`implicated here too).5
`
`
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`To meet the standing requirement, Plaintiff need only show that it has a real interest in
`
`the outcome of the proceeding. DaimlerChrysler Corp. et al. v. American Motors Corp.,
`
`Cancellation No. 92045099 (TTAB 2010). Proof of standing in a TTAB cancellation is a low
`
`threshold. Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, Opposition No. 91175091 n.8
`
`(TTAB 2009). Also, standing is liberally construed. Duramax Marine, LLC v. R.W. Fernstrum
`
`& Company, Opposition No. 91119899, (TTAB 2005) (citing Cunningham v. Laser Golf Corp.,
`
`55 USPQ2d 1842, 1844 (Fed. Cir. 2000)).
`
`                                                                                                                
`
`5 Loglan Inst. v. Logical Language Group, 22 USPQ2d 1531, 1534 (Fed. Cir. 1992) (noting "the
`public interest in a cancellation proceeding to rid the register of a generic mark").
`
`7  
`
`

`
`
`
`Plaintiff has standing to cancel the registration at issue at least by virtue of the fact that
`
`plaintiff has asserted the registration at issue against defendant. Liberty Trouser Co. v. Liberty &
`
`Co., 222 USPQ 357, 358 (TTAB 1983) (allegation of likelihood of confusion accepted as proper
`
`allegation of petitioner's standing with respect to pleaded grounds of fraud and abandonment); see
`
`also Anthony's Pizza & Pasta International, Inc. v. Anthony's Pizza Holding Company, Inc.,
`
`Opposition No. 91171509 and Cancellation No. 92045956 (TTAB 2009) (citing Aries Systems
`
`Corp. v. World Book Inc., 26 USPQ2d 1926, 1930 n.12 (TTAB 1993)). Paragraph 2 of the
`
`petition for cancellation states as much:
`
`2. On June 25, 2013, Registrant (acting through its attorneys)
`issued a demand letter to Tastes Great LLC alleging, among
`other things, trademark infringement with respect to US
`Trademark Registration No. 3,484,548 (i.e., the registration
`at issue).
`
`
`Petition ¶2. A copy of Registrant’s demand letter is attached hereto as Exhibit A.
`
`
`
`Registrant’s claim against Petitioner of trademark infringement for the registration at
`
`issue here is sufficient basis for standing. Faced with the charge of trademark infringement for
`
`the registration at issue, Petitioner most certainly has a real interest in the matter, and should not
`
`be treated as a mere intermeddler. See Syngenta Crop Protection, Inc. v. Bio-Chek, LLC,
`
`Opposition No. 91175091 (TTAB 2009) (“Proof of standing in a Board opposition is a low
`
`threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a
`
`mere intermeddler.”) (citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed.
`
`Cir. 1999).
`
`
`
`Because Plaintiff has a direct and personal stake in the outcome of this proceeding,
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`Defendant’s motion to dismiss based upon lack of standing should be denied.
`
`
`
`
`
`8  
`
`

`
`III.
`
`Standing and Grounds for Cancellation are Distinct Inquiries
`
`
`
`Standing and grounds for cancellation are distinct inquires. Coach Services v. Triumph
`
`Learning, 96 USPQ2d 1600, 1605 (TTAB 2010) (citing Jewelers Vigilance v. Ullenberg Corp., 2
`
`USPQ2d 2021, 2024 (Fed. Cir. 1987)). Defendant’s motion completely misses that point.
`
`
`
`Defendant incorrectly argues that Plaintiff must establish standing for each alleged
`
`ground for cancellation. See, e.g., Defendant’s brief at p. 3 (“Petitioner has failed to plead facts
`
`sufficient to establish standing with regard to its grounds that the mark . . . is merely descriptive
`
`or generic of Registrant’s goods.”) and at p. 4 (“With regard to Petitioner’s allegations under
`
`Section 2(c) of the Trademark Act, Petitioner lacks standing to cancel Registrant’s mark on this
`
`ground because it is not in privity with . . . the individuals named in the mark.”). In a
`
`precedential opinion in Coach Services, the Board rejected the very approach to the standing
`
`inquiry that Defendant urges the Board to adopt. Coach Services, 96 USPQ2d at 1604-05. The
`
`Board found that “standing and grounds may be related, but they are distinct inquiries.” Coach
`
`Services 96 USPQ2d at 1605.
`
`
`
`In Coach Services, the Board specifically rejected the argument Defendant now makes.
`
`Coach Services held that where standing is otherwise established, an opposer may object to the
`
`registration of a mark as being merely descriptive “even if opposer does not claim the right to use
`
`the mark descriptively.” Id. Defendant’s argument here – that Plaintiff must have a present or
`
`prospective right to use the mark at issue descriptively in its business to show a real interest in the
`
`proceeding – similarly should be rejected by the Board.
`
`
`
`There is no question that Plaintiff has established a real interest in the cancellation of the
`
`registration at issue. Defendant, among other things, alleges likelihood of confusion and has
`
`charged Plaintiff with trademark infringement based upon the registration at issue here.
`
`Defendant’s motion to dismiss based upon lack of standing should be dismissed.
`
`
`
`
`
`9  
`
`

`
`Plaintiff’s Petition States Claims Upon Which Relief May Be Granted
`
`Since Plaintiff has established standing here, Plaintiff is entitled to rely on any of the
`
`IV.
`
`
`
`grounds set forth in the Lanham Act that negate Defendant’s registration. Jewelers Vigilance v.
`
`Ullenberg Corp., 823 F.2d 4990, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987); Coach Services, 96
`
`USPQ2d at 1605 (quoting Jewelers Vigilance, 2 USPQ2d at 2023, and citing Young v. AGB
`
`Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) and Lipton Industries, 213 USPQ
`
`at 190).
`
`
`
`Defendant admits that Plaintiff has raised valid statutory grounds for cancellation. See
`
`Defendant’s Motion at p. 2. Defendant notes in its brief that Plaintiff has alleged, among other
`
`things, three grounds for cancellation: (i) Trademark Act Section 23, 15 U.S.C. § 1064(3)
`
`(genericness); (ii) Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1) (mark is merely
`
`descriptive); and Trademark Act Section 2(c), 15 U.S.C. § 1052(c) (no written consent to
`
`registration). As shown below, Defendant’s motion to dismiss should be denied to the extent
`
`based on alleged insufficiencies of Plaintiff’s grounds for cancellation.
`
`A.
`
`Genericness is a Basis for Cancellation of Defendant’s Registration
`
`
`
`The Lanham Act provides for the cancellation of a mark that is or has become the generic
`
`name for goods or services. 15 U.S.C. § 1064(3). “While a trademark registration has a
`
`presumption of validity, in a cancellation proceeding that presumption may be rebutted by
`
`evidence from the party seeking cancellation.” Loglan Inst., 22 USPQ2d at 1533 (citing Dan
`
`Robbins & Assoc. v. Questar, 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979)). “The
`
`public's perception is the primary consideration in a determination of genericness.” Loglan Inst.,
`
`22 USPQ2d at 1533 (citing In re Merrill Lynch, 828 F.2d 1567, 1569-70, 4 USPQ2d 1141, 1142
`
`(Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l. Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 991, 228
`
`USPQ 528, 530 (Fed. Cir. 1986)). The "relevant public" encompasses both "actual [and]
`
`10  
`
`

`
`potential purchasers of . . . goods or services." Magic Wand v. RDB, 940 F.2d 638, 641, 19
`
`USPQ2d 1551, 1553 (Fed. Cir. 1991).
`
`
`
`The proper question at trial is whether the relevant public understands the designation at
`
`issue as a name for a genus of goods. If it is found that the designation at issue is the name for a
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`genus of goods that the relevant public understands as including the goods at issue, then the
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`designation at issue is generic.
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`
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`Here, the designation at issue (i.e., STEVE’S & ED’S) is more analogous to a compound
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`word than to a phrase.6 Even Defendant admits the designation at issue is a composite.
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`Defendant’s brief, at p. 3 and at p. 6 n.3. Accordingly, the Board here applies the test of In re
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`Gould Paper Corp., 5 USPQ2d 1110 (Fed Cir. 1987). Under Gould, dictionary definitions of the
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`constituent words may suffice to show genericness of the compound term, provided that the
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`joining of the two words lends no additional meaning to the term. Gould, 5 USPQ2d at 1111-12.
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`
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`Here, the pertinent genus is a product or service endorsed or approved by an individual
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`named Steve (“STEVE’S”) and by an individual named Ed (“ED’S”). Combining those two
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`terms (STEVE’S & ED’S) using an ampersand (“&”) imparts no additional meaning here.
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`Plaintiff has pled as much. See Petition, ¶3-¶9 and ¶12-¶23.
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`1.
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`“Steve” is an Extremely Common First Name (and so is “Ed”)
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`Defendant manufactured this trademark dispute merely based on Plaintiff’s use of Steve
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`
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`
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`Olds’ first name to sell a pepper sauce that Steve Olds created. Neither Plaintiff nor Steve Olds is
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`famous; however, by allowing Plaintiff to register and use his name with Plaintiff’s pepper
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`sauces, Mr. Olds’ reputation and fame, as well as Plaintiff’s reputation and fame, are growing.
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`                                                                                                                
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`6 In determining the genericness of a phrase, "[t]he Board cannot simply cite definitions and
`generic uses of the constituent terms of a mark … in lieu of conducting an inquiry into the
`meaning of the disputed phrase as a whole to hold a mark … generic." In re American Fertility
`Society, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). However, even if the Board would find
`STEVE’S & ED’S more akin to a phrase instead of a compound word, the designation as a whole
`has no meaning beyond the sum of the meanings of its terms, so no different result would be
`obtained.
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`  
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`11  
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`

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`Petition ¶¶37-42. As a result, both Plaintiff and Mr. Olds are lawfully establishing worth, fame,
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`and names for themselves. Petition ¶42.
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`
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`Defendant does not possess exclusive rights in the word “STEVE’S” for uses related to
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`the products involved here any more so than Steve Olds or any other individual named “Steve.”
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`Petition ¶26. The laws of the United States do not forbid Plaintiff’s actions here. The relevant
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`consuming public understands that the right to use one’s name in a personal business is
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`sacrosanct under the United States Constitution. Petition ¶¶30-31 and ¶¶36-37.
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`
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`Defendant is a trademark bully. On information and belief, Defendants wrongfully
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`pressed a bogus claim of trademark infringement against Plaintiff when Defendant knew, or
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`reasonably should have known: that Defendant Master Sales had suffered no harm as a result of
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`Plaintiff’s actions; that it was unlikely that Defendant Master Sales would, with any degree of
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`immediacy, suffer any harm due to Plaintiff’s actions; that Defendant Master Sales had no
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`legitimate claim to exclusive use of the name “Steve” or its variants related to the products
`
`involved here; and that Defendant Master Sales would need to stretch its trademark rights beyond
`
`a reasonable interpretation of the scope of rights granted to a trademark owner to achieve the
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`selfish result of causing Plaintiff to alter Plaintiff’s trademark use and related business practices.
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`
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`That the relevant public would recognize each of the terms “Steve” and “Ed” as a male
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`given name is beyond dispute. The term “Steve” is “a male given name, form of Steven or
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`Stephen.” Exh. N.7 Further, the term “ ’s ” is “an ending used in writing to represent the
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`possessive morpheme after most singular nouns, some plural nouns, especially those not ending
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`in a letter or combination of letters representing an s or z sound, noun phrases, and noun
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`substitutes.” Exh. O.
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`                                                                                                                
`
`7 To the extent that any Exhibits here are outside Plaintiff’s petition, the Board is respectfully
`requested to consider them to support a determination that Plaintiff’s complaint is well-pled.
`Board proceedings are conducted in accordance with Federal Rule of Evidence (FRE) 201(b).
`FRE 201(b) permits judges to take judicial notice of two categories of facts:
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`12  
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`

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`
`
`
`
`2.
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`Third Party Use of “STEVE’S” is Extensive
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`Many businesses other than Defendant Master Sales use the word “STEVE” in various
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`forms, including in its possessive form “Steve’s.” Petition ¶¶15-18. Many companies and
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`entities use the name “Steve’s” in business. Petition ¶¶15-18. These companies and entities
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`include but are not limited to those associated with the following federal registrations and marks:
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`1,158,271 (STEVE’S ICE CREAM); 1,158,272 (STEVE’S ICE CREAM); 1,158,273
`
`(STEVE’S); 1,287,136 (UNCLE STEVE’S); 1,363,738 (STEVE’S DETAILING); 1,423,280
`
`(STEVE’S DETAILING); 1,432,651 (STEVE’S CAR CARE PRODUCTS); 1,488,848
`
`(STEVE’S); 1,514,027 (STEVE’S); 1,514,028 (STEVE’S); 1,621,525 (STEVE’S SHO-PAC);
`
`1,631,799 (STEVE’S MOM INC.); 2,043,023 (STEVE’S PLACE); 2,259,097 (STEVE’S OINK-
`
`N-SQUEEL); 2,380,646 (STEVE’S SUPER SHINE MOBILE DETAILING); 2,389,966
`
`(STEVE’S CHEESE); 2,437,060 (STEVE’S REAL FOOD); 2,527,660 (STEVE’S PRINCE OF
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`STEAKS); 2,599,555 (“STEVE’S” STEVIA); 2,602,435 (CAPTAIN STEVE’S); 2,935,002
`
`(STEVE’S SMOOTH FRENCH); 3,061,129 (STEVE’S SWEET CHILI SEASONING);
`
`3,150,627 (STEVE’S CREATIONS-FROM SOIL TO SKILLET); 3,190,647 (STEVE’S WOOD
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`FIRED PIZZA); 3,238,999 (STEVE’S PRINCE OF STEAKS); 3,239,000 (STEVE’S STEAKS);
`
`3,279,021 (SODA STEVE’S); 3,279,192 (SODA STEVE’S “ADVENTURES IN GOOD
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`EATS”); 3,318,227 (STEVE’S SNAPPIN DOGS); 3,345,351 (STEVE’S PIZZA SP STEVE’S
`
`PIZZA EST. 1978); 3,368,977 (76FRED & 99STEVE’S STEAKHOUSE); 3,377,427 (STEVE’S
`
`                                                                                                                                                                                                                                                                                                                                          
`
`(1)
`
`facts "generally known within the territorial jurisdiction of