Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA761777
`08/01/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063675
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Defendant
`Premier Companies, Inc.
`
`DANIEL J FISCHER
`KOLEY JESSEN PC LLO
`1125 SOUTH 103RD STREET, SUITE 800
`OMAHA, NE 68124
`UNITED STATES
`dan.fischer@koleyjessen.com,patrice.ott@koleyjessen.com,tonia.campbell@kol
`eyjessen.com
`
`Other Motions/Papers
`
`Daniel J. Fischer
`
`Dan.Fischer@koleyjessen.com, patrice.ott@koleyjessen.com, to-
`nia.campbell@koleyjessen.com, jeri.mcgill@koleyjessen.com
`
`Signature
`
`Date
`
`/s/Daniel J. Fischer
`
`08/01/2016
`
`Attachments
`
`PNB -Reply Brief in Support of the Motion to Dismiss.pdf(27132 bytes )
`
`
`ESTTA761777
`08/01/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063675
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Defendant
`Premier Companies, Inc.
`
`DANIEL J FISCHER
`KOLEY JESSEN PC LLO
`1125 SOUTH 103RD STREET, SUITE 800
`OMAHA, NE 68124
`UNITED STATES
`dan.fischer@koleyjessen.com,patrice.ott@koleyjessen.com,tonia.campbell@kol
`eyjessen.com
`
`Other Motions/Papers
`
`Daniel J. Fischer
`
`Dan.Fischer@koleyjessen.com, patrice.ott@koleyjessen.com, to-
`nia.campbell@koleyjessen.com, jeri.mcgill@koleyjessen.com
`
`Signature
`
`Date
`
`/s/Daniel J. Fischer
`
`08/01/2016
`
`Attachments
`
`PNB -Reply Brief in Support of the Motion to Dismiss.pdf(27132 bytes )
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92063675
`Registration No. 4,397,439
`
`
`REPLY BRIEF IN SUPPORT OF
`PREMIER COMPANIES, INC.’S
`MOTION TO DISMISS WITH
`PREJUDICE THE PETITION FOR
`CANCELLATION
`
` )
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`_____________________________________
`
`
`XPRESS BENEFITS SOLUTIONS, INC.,
`
`
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`
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`Petitioner,
`
`
`v.
`
`
`
`
`
`
`PREMIER COMPANIES, INC.
`
`
`
`Registrant.
`
`
`
`_____________________________________
`
`
`INTRODUCTION
`
`Premier respectfully submits the following reply brief in support of its Motion to
`
`Dismiss. Xpress lacks standing to maintain the Petition and seek the relief it requests.
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`Nothing in Xpress’ Opposition Brief saves its claim, because Xpress provides no
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`authority for its assertion that when a business like PNB LLC is contractually prohibited
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`from acting (by its very operating agreement), then a 50% owner such as Xpress, who
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`is bound by that operating agreement, can nonetheless step into the shoes of that
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`business and file a cancellation action. It cannot do so, and Xpress should not be
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`allowed to cite the liberal standing threshold as a vehicle to avoid its contractual
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`obligations. Despite admitting in its Opposition Brief that a corporate standoff/dispute
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`between the two owners of PNB LLC exists, Xpress is attempting to do something with
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`its 50% ownership in PNB LLC that PNB LLC itself cannot do itself. Xpress also fails to
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`cite any authority for its assertion that it has the right to petition to cancel a mark that it
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`has never used and has never had the right to use.
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`
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`4836-5107-9732.2
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`1
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`
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`A.
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`
`
`ARGUMENT
`
`Xpress Cannot Be Permitted to do Indirectly what it is Prohibited from
`Doing Directly.
`
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`Through this action, Xpress attempts to bootstrap its 50% ownership interest in
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`PNB LLC into a right to maintain a cancellation proceeding. While standing may be a
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`low hurdle, it is one that Xpress cannot leap over.
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`
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`Xpress’ 50% ownership is not enough to confer standing, especially when it is
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`contractually prohibited from requesting cancellation on PNB LLC’s behalf. (Petition,
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`¶7). As admitted in the Petition and as also explained in Premier’s opening brief,
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`Xpress never obtained the consent needed to maintain this Petition, and thus it lacks
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`standing. See (Id.; Premier’s opening brief at pp. 10-11). Furthermore, while Xpress
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`has an interest in PNB LLC, it does not have the requisite interest in the mark at issue.
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`Xpress has never had the right to use the mark at issue. Only PNB LLC had that right—
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`as licensed from Premier—and that right has been revoked.1
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`Xpress claims, without any citation to authority, that the common law rights to
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`PREMIER NATIONAL BENEFITS “cannot be protected or enforced” absent its ability
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`(as a 50% owner with no rights in the mark) to bring a cancellation action. (Opposition at
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`pp. 1-2, 4-6). However, Xpress’ argument is fundamentally flawed because there is a
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`mechanism to protect the common law rights to PREMIER NATIONAL BENEFITS—
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`Xpress and PSM can agree to pursue such action, as agreed upon in its legally binding
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`contract. See (Petition, ¶7); (Opposition at p. 4) (admitting that “corporate restrictions
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`prohibit Xpress from acting without the consent of the other 50% owner [PSM]”);
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`1 Still further, if Xpress’ purported standing is based on PNB LLC’s right in the mark at
`issue, then Xpress’ Petition must also fail because Premier revoked PNB LLC’s right to
`use the mark at issue. Accordingly, Xpress cannot have greater rights than that of PNB
`LLC in the first place.
`
`4836-5107-9732.2
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`2
`
`
`
`
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`(Premier’s opening brief at pp. 10-11); see also Selva & Sons, Inc. v. Nina Footwear,
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`Inc., 705 F.2d 1316, 217 USPQ 641, 647 (Fed. Cir. 1983) (noting that Board may
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`consider agreement, its construction, or its validity if it is necessary to decide issues
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`properly before it). Here, neither party disputes that “corporate restrictions” prohibit the
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`Petition that Xpress seeks to maintain. Through its motion to dismiss, Premier seeks to
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`hold Xpress to the obligations it agreed to in its contract with PSM, nothing more.
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`Xpress cannot now complain about a result it negotiated.
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`Standing Does Not Serve The Public Interest In This Case.
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`B.
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`Xpress argues, in two paragraphs, that allowing its Petition to go forward
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`
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`somehow serves the public interest. See (Opposition, p. 6-7). Without any citation to
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`primary authority, Xpress attempts to reason that because a government agency can
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`bring a cancellation proceeding when not engaged in the sale of goods, a for-profit
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`company (like Xpress) can do the same. (Id.). A failure in Xpress’ argument, however,
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`is that the the government still must show that it is damaged by the continued
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`registration of the mark. See e.g. National Aeronautics & Space Admin. v. Record
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`Chemical Co. Inc., 185 U.S.P.Q. 563, 566 (TTAB 1975) (in proceeding before Board,
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`government must “establish conditions and circumstances from which damage to it from
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`the opposed mark can be assumed”) (emphasis added). Here, damage to Xpress
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`cannot be presumed as such damage is speculative at best, nor has Xpress shown any
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`damage regarding a mark it has never had the right to use; rather, it has made only
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`conclusory allegations of damage that are insufficient to pass the standing threshold in
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`this case. The public interest cannot be served by allowing Xpress to proceed to cancel
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`a mark it has never had the right to use and in circumstances where it is contractually
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`bound not to act.
`
`4836-5107-9732.2
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`3
`
`
`
`
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`Moreover, Xpress is not the government. It is a private party seeking to maintain
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`a cancellation when it contractually put certain restrictions on that right and ability. An
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`agreement is interpreted by review of the objective words of the agreement. See
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`Novamedix Ltd. v. NDM Acquisition Corp., 166 F.3d 1177, 49 U.S.P.Q.2d 1613, 1616
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`(Fed. Cir. 1999). Here, Xpress has admitted that the objective words of the agreement
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`between Xpress and PSM prohibit its Petition. See e.g. (Petition, ¶7). As such, the
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`public interest is served by holding parties to their contractual rights and obligations and
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`dismissing the Petition.
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`
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`C.
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`Xpress Does Not Overcome the Standing Threshold.
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`To have standing, Xpress needs to show that it is more than a mere intermeddler
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`and has a real interest in the proceeding. NSM Res. Corp. & Huck Doll LLC v. Microsoft
`
`Corp, 113 U.S.P.Q.2d 1029 (P.T.O. Nov. 25, 2014) (internal citations omitted); see also
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`McDermott v. San Francisco Women's Motorcycle Contingent, 81 U.S.P.Q.2d 1212,
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`1214 (TTAB 2006), aff'd, 240 Fed. Appx. 865 (Fed. Cir. 2007) (“The purpose of the
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`standing requirement, which is directed solely to the interest of the plaintiff, is to prevent
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`litigation when there is no real controversy between the parties.”). The only controversy
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`is the business divorce that is the background of this proceeding but which is not
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`between the named parties here. The Petition improvidently seeks cancellation of a
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`properly registered trademark by one with no real interest in the mark, and it is not the
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`proper forum to resolve the larger business divorce issues.
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`Xpress alleges that PNB LLC has been damaged. (Petition; Opposition, p. 2).
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`However, such alleged “damage” does not result in Xpress having a “personal interest
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`in this proceeding.” See Robert Doyle v. Al Johnsons Swedish Restaurant & Butik, Inc.,
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`101 U.S.P.Q.2d 1780, 2012 WL 695211 at *3, n. 3 (P.T.O. Feb. 10, 2012) (noting that
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`4836-5107-9732.2
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`4
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`
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`“to the extent petitioner alleges that others have been damaged by respondent's
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`Registrations, such damage does not constitute petitioner's personal interest in this
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`proceeding” and that petitioner failed to establish facts that any such injury constituted
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`damage to the petitioner or that the petitioner had any legitimate right to petition for
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`cancellation on behalf of others.”). Xpress’ logical leap that purported “damage” to PNB
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`LLC equates to damage to Xpress itself is a legal conclusion without factual support.
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`The Board is not required to accept as true such legal conclusions or unwarranted
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`factual inferences when considering the pending motion. See, e.g., NSM Res. Corp.,
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`113 U.S.P.Q.2d 1029 (on a motion to dismiss, all well-pleaded, material allegations are
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`accepted as true and construed in favor of the complaining party, but the Board “is not
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`required to accept as true legal conclusions or unwarranted factual inferences”); In re
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`Bill of Lading Transmission and Processing System Patent Litig., 681 F.3d 1323, 103
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`U.S.P.Q.2d 1045, 1051 (Fed. Cir. 2012) (same). Dismissal is therefore warranted.
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`CONCLUSION
`
`If Xpress was to be believed here, then a shareholder of a company like Coca
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`Cola would have the right to file suit based on Coke’s trademark even if Coke itself
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`could not. Of course, that is not the law and Xpress’ arguments cannot prevail here.
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`Registrant Premier Companies, Inc. respectfully requests that the Board enter an Order
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`dismissing with prejudice the above-captioned Petition for Cancellation and for such
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`further and different relief as the Board deems just and equitable and is empowered to
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`provide.
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`
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`4836-5107-9732.2
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`5
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`
`
`
`PREMIER COMPANIES, INC., Registrant,
`
`By: s/ Daniel J. Fischer
`Daniel J. Fischer #22272
` Patrice D. Ott, #24435
`
`Koley Jessen P.C., L.L.O.
`
`1125 South 103rd Street, Suite 800
` Omaha, NE 68124
`
`Telephone: (402) 390-9500
`
`Fax: (402) 390-9005
`
`dan.fischer@koleyjessen.com
` patrice.ott@koleyjessen.com
`
` Attorneys for Registrant.
`
`
`
`
`Dated August 1, 2016.
`
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on August 1, 2016, a true and correct copy
`of the foregoing was served by U.S. first class mail, postage prepaid, and properly
`addressed upon the following:
`
`Dianne M. Smith-Misemer
`Hovey Williams LLP
`10801 Mastin Blvd., Suite 1000
`84 Corporate Woods
`Overland Park, KS 66210
`
`
`
`
`
`
`s/ Daniel J. Fischer
`
`4836-5107-9732.2
`
`6
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