Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA625376
`ESTTA Tracking number:
`09/04/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92059746
`Defendant
`Mighty Media Group, LP
`MIGHTY MEDIA GROUP LP
`3710 RAWLINS STREET SUITE 150
`DALLAS, TX 75219
`UNITED STATES
`bonnie.seggelink@firstventures.com
`Motion to Dismiss - Rule 12(b)
`Philip G. Hampton, II
`phil.hampton@haynesboone.com, nance.pitzer@haynesboone.com, ipdocket-
`ing@haynesboone.com
`/Philip G. Hampton, II/
`09/04/2014
`Motion to Dismiss (Cancellation No. 92059746).pdf(2188545 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`ESTTA625376
`ESTTA Tracking number:
`09/04/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92059746
`Defendant
`Mighty Media Group, LP
`MIGHTY MEDIA GROUP LP
`3710 RAWLINS STREET SUITE 150
`DALLAS, TX 75219
`UNITED STATES
`bonnie.seggelink@firstventures.com
`Motion to Dismiss - Rule 12(b)
`Philip G. Hampton, II
`phil.hampton@haynesboone.com, nance.pitzer@haynesboone.com, ipdocket-
`ing@haynesboone.com
`/Philip G. Hampton, II/
`09/04/2014
`Motion to Dismiss (Cancellation No. 92059746).pdf(2188545 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
`
`In the Matter of Trademark Registration No. 4,530,668
`For the mark GUESS FM
`
`Guess‘HP Holder L.P.
`
`Petitioner,
`
`<
`
`Mighty Media Group, LP.
`
`Registrant.
`
`vvvvvvvWV
`
`Cancellation No.: 92059746
`
`MOTION TO DISMISS
`
`MOTION TO DISMISS PETITION TO CANCEL
`
`Registrant, Mighty Media Group LP. (“Mighty Media”), respectfully moves to dismiss
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`the above—identified Petition to Cancel under Rule 12(b)(6) of the Federal Rules of Civil
`
`Procedure and Section 503 of the Trademark Trial and Appeal Board Manual of Procedure. The
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`petitioner, Guess?IP Holder, L.P. (“Guess‘HP”), has failed to state a claim upon which relief can
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`be based.
`
`The Petitioner, Guess?lP Holder L.P., alleges two grounds for cancellation of US.
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`Trademark Registration No. 4,530,668. First, Petitioner alleges that Respondent’s GUESS FM
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`mark so resembles Petitioner’s marks, “as to be likely, when applied to the services of
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`Respondent. to cause confusion or to cause mistake or to deceive.” The Petitioner also alleges
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`that “the GUESS marks have achieved extensive recognition and are famous in the United States
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`and worldwide” and that “[r]espondent‘s actual use of the GUESS FM mark has created a
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`likelihood of dilution by blurring and by impairing the distinctiveness of Petitioner’s famous
`
`Motion to Dismiss Petition to Cancel
`
`W-90449_|
`
`
`
`GUESS Marks, causing irreparable injury and damage to Petitioner.” However, as demonstrated
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`below, the Petition to Cancel fails as a matter of law, because it fails to set forth facts that can
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`support either of the stated grounds for cancellation.
`
`1.
`
`Preliminary Statement
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`This dispute involves the word "GUESS“ and marks that incorporate the word “Guess.”
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`Petitioner, or a related entity, began use of GUESS and GUESS?, along with a design around
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`Guess?, years ago as a trademark for clothing.
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`In recent years, it began using its marks on cases
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`for various electronics. More recently, it has begun using the mark to sell clothes online and to
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`provide fashion and personal advice. Conversely,
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`in 2013, Registrant began using the mark
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`GUESSFM to distinguish its FM radio station, and filed its application to register GUESS PM
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`with the PTO. The Examining Attorney handling the GUESS FM trademark application, after
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`conducting a search of the USPTO database and uncovering several of the Petitioner‘s marks,
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`found that “there are not similar registered or pending marks that would bar registration under
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`the Trademark Act.”
`
`The first two paragraphs ofthe petition set forth Petitioner’s synopsis regarding its use of
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`the Guess Marks.
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`In Paragraphs 3 through 16 of the petition, Petitioner sets forth its ownership
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`of fourteen (14) trademark registrations. Only two of the registrations cover services, and those
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`two services have nothing to do with radio broadcast services. Attached hereto is a chart of
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`Petitioner‘s marks, provided by Petitioner’s counsel in his demand letter provided the same day
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`the Petition to Cancel was filed with the Trademark Trial and Appeal Board.
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`An acceptable ground for cancellation of a registration “must be a statutory ground which
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`negates the appellant’s right to the subject mark.” Carano v. Vina C‘oncha Y Taro SA, 67
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`Motion to Dismiss Petition to Cancel
`
`Page 2
`
`Vii—904494
`
`
`
`U.S.P.Q.2d 1 149, 1151 (T.rl‘.A.B. 2003) (internal citations omitted). Such grounds generally fall
`
`into one of two categories: (1) any ground that would have negated an applicant’s right to
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`register a mark in the first instance or (2) one of the statutorily enumerated grounds identified at
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`15 U .S.C . § 1064. See 3 J. Thomas McCarthy, McCarthy Orr Trademarks & Unfair Competition
`
`5,9 20:52 (4th ed. 2010). However, having a statutory basis for the Petition to Cancel is not a
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`defense against a motion to dismiss if the Petition to Cancel fails to allege facts which, if proved,
`
`establish a valid ground for cancellation. See Cineplex ()deorr Corp. v. Fred Wehrertherg Circuit
`
`ofTheatres. Inc, 56 U.S.P.Q.2d 1538, 1539 (T.T.A.B. 2000). As is shown below, the Petition to
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`Cancel should be dismissed for failing to state a claim for which reliet‘can be granted.
`
`11.
`
`No Likelihood of Confusion is Sufficiently Alleged in the Petition to Cancel
`
`Paragraphs 19 and 20 of the Petition to Cancel recite Petitioner’s allegations related to
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`likeiihood of confusion —— that Mighty Media’s radio program broadcasting services marketed as
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`GUESS FM are related to Petitioner’s goods and services rendered under its GUESS Marks and
`
`that Mighty Media‘s GUESS 13M mark. so resembles the Petitioner’s marks that it is likely “to
`13
`
`cause confusion or mistake or to deceive. However, in the first 18 paragraphs of its petition, the
`
`Petitioner fails to provide any facts that support its allegation of likelihood of confusion in the
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`Petition to Cancel, only conclusory statements. But the Supreme Court has stated that threadbare
`
`recitals of the elements of a cause of action, supported by mere conclusory statements do not
`
`state a claim for which reliefcan be granted. Ashcroft v. Iqbaf, 556 US. 662 (2009). Therefore,
`
`since the TTAB cannot grant Petitioner its requested relief, this motion to dismiss should be
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`granted with regards to the allegation concerning likelihood of confusion.
`
`Motion to Dismiss Petition to Cancel
`
`Page 3
`
`W—90449_l
`
`
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`III.
`
`No Likelihood of Dilution is Sufficiently Pled in the Petition to Cancel
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`Petitioner has deficiently pleaded its likelihood of dilution claim as a matter of law.
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`A necessary showing of a likelihood of dilution claim is a showing that the mark has
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`become famous prior to the Registrant’s date of first use of the mark. Tom Co. v ToroHead
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`Inc, 61 USPQ2d 1164, 1174 (TTAB 2001). Since Petitioner does not allege that its GUESS
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`Marks had become famous prior to June 28, 2013,
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`the TTAB cannot grant
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`the relief
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`requested by Petitioner, and this motion to dismiss as to the allegations of likelihood of
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`dilution should be granted.
`
`IV.
`
`Conclusion
`
`Petitioner has failed to state any claim upon which relief may be based. Registrant,
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`therefore, respectfully requests that this motion to dismiss be granted and the Petition to
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`Cancel be dismissed in its entirety.
`
` Date: September 4, 2014
`
`Respectfully submitted.
`
`Philip G. Hampton, 11, Esq.
`Attorney for Registrant
`
`HAYNES AND BOONE,
`LLP 800 17‘“ Street, NW
`
`Washington, DC 20006
`Telephone: 202.654.4533
`Facsimile: 202.654.4270
`
`grail. hamQ1012@hawmsboone. ("0m
`
`Motion to Dismiss Petition to Cancel
`
`Page 4
`
`Vii—904493
`
`
`
`ATTACHMENT
`
`ATTACHMENT
`
`
`
`MARK
`
`REG. NO.
`
`GOODS
`
`DESCRIPTION
`
`GUESS? and Design
`
`GUESS? and Design
`01 E88? and Design
`
`GL ESS
`
`GLESS
`
`
`
`GL‘ESS‘?
`
`GL'ESS
`
`GL ESS
`
`GUESS“?
`
`
`
`Clocks and watches.
`
`
`1,433,022
`
`Perfume.
`
`
`Jewelry. watches.
`
`
`
`Decorative and
`
`4,210,798
`
`protective covers and
`cases [‘or electronic
`
`devices,
`
`
`Decorative and
`protective covers and
`
`cases for electronic
`
`4.210.801
`
`2.370.424
`
`G UlESS‘? and Design
`
`GU ESS‘?
`
`GUESS
`
`devices.
`
`
`4,210,802
`Decorative and
`protective covers and
`
`cases for electronic
`
`devices.
`
`
`2 3,
`
`
`
`08,468
`[‘iyewear, liomological
`instruments and jewelry.
`
`
`
` Online retail store
`
`
`services.
`GUESS? and Design
` Providing inlbrmation
`
`
`online pertaining to
`fashion and personal
`
`advice.
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 4,530,668
`For the mark GUESS FM
`
`Guess?IP Holder L.P.
`
`Petitioner,
`
`Mighty Media Group, LP.
`
`Registrant.
`
`
`
`vvvvvvv\._/~._/
`
`Cancellation No.: 92059746
`
`MOTION TO DISMISS
`
`MOTION TO DISMISS PETITION TO CANCEL
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on this
`
`4th
`
`day of September, 2014,
`
`the
`
`foregoing Marion 10 Dismiss Petition to Cancel was served on Petitioner’s counsel of record,
`
`via first—class mail to the following:
`
`Gary J. Nelson
`Christie, Parker & Hale, LLP
`P.O. Box 2900]
`
`Glendale, California 91209—9001
`
`W P
`
`hilip G. Hampton, ll
`
`Motion to Dismiss Petition to Cancel
`
`Page I
`
`W-904497i
`
`
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