Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA778347
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`Filing date:
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`10/21/2016
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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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`92064206
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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 e-mail
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`Signature
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`Date
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`Defendant
`JDA Technology, LLC
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`CHARLES T RIGGS JR
`LAW OFFICES OF CHARLES T RIGGS JR
`551 FOREST AVE
`RIVER FOREST, IL 60305
`UNITED STATES
`riggs@riggs.pro
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`Motion to Dismiss - Rule 12(b)
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`Charles T. Riggs Jr.
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`riggs@riggs.pro
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`/Charles T. Riggs Jr./
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`10/21/2016
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`Attachments
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`Motion to Dismiss 1st Amended Complaint final.pdf(159915 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Registration No. 4823007
`For the Mark: SONIC VORTEX and design
`Date of Issue: September 29, 2015
`__________________________________________
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`AFCO INC.,
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`Registrant.
`__________________________________________)
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`JDA TECHNOLOGY, LLC,
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`Petitioner,
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`v.
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`Cancellation No. 92064206
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`Trademark Trial and Appeal Board
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`MOTION TO DISMISS FIRST AMENDED PETITION
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`Registrant JDA Technology, LLC (“Registrant”) brings this Motion to Dismiss the above
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`identified Amended Petition for Cancellation (“Amended Petition”) filed by Petitioner AFCO
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`Inc. (“Petitioner”) for lack of standing under 15 U.S.C. §1064 and TBMP 309.03(b), and for
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`failure to state a cause of action pursuant Fed. R. Civ. P. 12(b)(6) and TBMP 503. In support of
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`its Motion, Registrant respectfully states:
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`Introduction
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`1.
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`On August 11, 2016, Petitioner filed its original Petition for Cancellation
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`(“Petition,” Dkt. #1). On September 20, 2016, Registrant moved to dismiss the Petition for
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`failure to state a cause of action and for lack of standing (“Motion to Dismiss,” Dkt. #6). On
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`September 30, 2016, Petitioner, realizing the Petition was improperly plead, filed a first
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`1
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`Amended Petition (Dkt. #9). In view of the Amended Petition, the Board deemed Registrant’s
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`Motion to Dismiss moot and it was given no further consideration (“Order,” Dkt. #10).
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`2.
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`In its Order, the Board stated:
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`As a final matter, the Board has sua sponte reviewed Petitioner’s amended
`pleading and notes that Petitioner has alleged a claim of fraud and, alternatively, a
`claim of nonuse in commerce as of the filing date of the statement of use of
`Respondent’s underlying application for its subject registered mark as grounds for
`cancellation. The Board finds that Petitioner’s allegations regarding its standing,
`as well as its asserted claims of fraud and nonuse, are sufficiently pleaded.
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`3.
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`However, for the reasons set forth herein, Registrant respectfully states that even
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`though Petitioner’s Amended Petition asserts a subjective belief that it is being damaged,
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`standing has not been properly plead because its allegations in support of Petitioner’s belief of
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`damage do not have a reasonable basis in fact. Further, Petitioner’s own case law cited in its
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`Response (Dkt. #8) to the Motion to Dismiss, makes it clear that requisite elements of its fraud
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`claim have not been plead at all. As such, Registrant respectfully requests that the Board
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`consider the arguments and case law presented herein, and reconsider its finding that the
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`Amended Complaint is sufficiently plead.1
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`4.
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`Petitioner’s sole allegation of damages is now asserted in paragraph 13 of its
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`Amended Petition, which states:
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`13. AFCO believes it has been and will continue to be damaged by the '007 Registration
`because a shipment of its products bearing the SONIC VORTEX mark has been seized
`by the United States Customs and Border Protection agency, and AFCO faces possible
`forfeiture, fines, and/or penalties. See Exhibit B - Copy of the August 4, 2016 Notice of
`Seizure and Information.
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`5.
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` This allegation of damages alone fails to establish any reasonable basis in fact
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`because nowhere in the Amended Petition does Petitioner allege that it has any right to use the
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`1
` This is the first opportunity Registrant has had to enter into the record its objections and
`arguments relating to the sufficiency of the Amended Petition, and to preserve these issues for
`appeal if necessary.
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`2
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`mark. Instead, Petitioner is an intermeddler who is infringing Registrant’s trademark, and does
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`not have the right to import the infringing goods.
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`6.
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`The purpose of standing is to prevent litigation where there is no real controversy
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`between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler.
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`Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPWQ 185, 187 (CCPA
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`1982). To survive a Rule 12(b)(6) motion to dismiss, petitioner must allege sufficient factual
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`matter as would, if proved, establish that (1) it has standing to maintain the proceeding, and (2) a
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`valid ground exists for opposing or cancelling the mark. Id.
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`7.
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`As discussed in TBMP 309.03(b), the allegations in support of plaintiff’s belief of
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`damage must have a reasonable basis "in fact." Ritchie v. Simpson, 170 F.3d 1092, 50
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`USPQ2d1023, 1027 (Fed. Cir. 1999) (stating that the belief of damage alleged by plaintiff must
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`be more than a subjective belief) (citing Universal Oil Products v. Rexall Drug & Chemical Co.,
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`463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972)). See also Doyle v. Al Johnson’s Swedish
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`Restaurant & Butik Inc., 101 USPQ2d 1780, 1783 (TTAB 2010) (petitioner’s alleged belief that
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`he would be damaged by respondent’s registrations is not reasonable).
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`8.
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`Because Petition has failed to allege it has any right to use the registered mark and
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`is not an intermeddler or infringer, Petitioner has failed to allege facts sufficient to show a
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`"reasonable basis" for its belief that it would suffer some kind of damage if the registration is not
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`canceled. See Doyle, supra (“petitioner has not alleged that he … has any right” to [use the mark
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`in connection with the services]).
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`9.
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`Petitioner’s allegations of fraud are similarly deficient. On pages 3-4 of
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`Petitioner’s Response, Petitioner sets forth the requisite elements necessary to properly plead
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`fraud relating to a declaration or oath, stating:
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`3
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`A party claiming that the declaration or oath in a respondent’s application
`for registration was executed fraudulently must allege particular facts which, if
`proven, would establish the following: (1) that there was in fact another use of the
`same or a confusingly similar mark at the time the oath was signed; (2) that the
`other user had legal rights superior to respondent’s; (3) that respondent knew that
`the other user had rights in the mark superior to respondent’s, and either believed
`that a likelihood of confusion would result from applicant’s use of its mark or had
`no reasonable basis for believing otherwise; and (4) that respondent, in failing to
`disclose these facts to the USPTO, intended to procure a registration to which it
`was not entitled. (emphasis added) See Qualcomm Incorporated v. FLO
`Corporation, 93 U.S.P.Q.2d 1768 (TTAB 2010) (citing Intellimedia Sports, Inc.
`v. Intellimedia Corp., 43 U.S.P.Q.2d 1203, 1205 (TTAB 1997)).
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`Nowhere in in the Amended Petition does Petitioner allege that any other user had
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`10.
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`legal rights superior to respondent’s; or that that respondent knew that the other user had rights in
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`the mark superior to respondent’s, and either believed that a likelihood of confusion would result
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`from applicant’s use of its mark or had no reasonable basis for believing otherwise. Clearly, the
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`Amended Petition contains no such allegations. Accordingly, Petitioner clearly fails to plead
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`key, requisite elements of its fraud claim, which Petitioner itself has specifically recognized are
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`necessary to plead such a cause of action.
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`11.
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`Likewise, Petitioner fails to plead sufficient factual matter, accepted as true, to
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`state a claim to relief that is plausible on its face as to its claim of non-use. Petitioner’s
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`conclusory allegations in paragraph 14 of the Amended Complaint are exactly the type of bare-
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`bone statements which are insufficient to plead a plausible claim of non-use under the requisite
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`pleading standards of Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556
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`U.S. 662 (2009). Therefore, Petitioners’ claim of non-use should be dismissed as well.
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`12.
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`For the above reasons, Petitioner’s subjective belief that it would be damaged by
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`Respondent’s registration is not reasonable, i.e., does not have any reasonable basis "in fact"
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`since Petitioner has not plead any right to use the mark. As such, the Amended Petition fails to
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`sufficiently plead Petitioner’s standing. Further, the Amended Petition absolutely and
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`4
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`unequivocally fails to plead requisite elements of fraud in connection with a declaration or oath.
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`Finally, the Amended Petition’s bare-bone allegation of non-use is insufficiently plead under
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`Iqbal/Twombley. Therefore, the Amended Petition should be dismissed in its entirety.
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`WHEREFORE, for the reasons set forth above, Registrant respectfully requests that the
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`Board grant this Motion, and dismiss the Amended Petition. Alternatively, should this Motion
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`be denied, Registrant respectfully requests a very short extension of time to file its Answer to the
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`Amended Complaint.
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`Date: October 21, 2016
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`Respectfully submitted,
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`By:
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`s/Charles T. Riggs Jr./
` Attorney for Registrant
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`Charles T. Riggs Jr.
` (riggs@riggs.pro)
`The Law Office of Charles T. Riggs Jr.
`551 Forest Ave.
`River Forest, Illinois 60305
`(708) 828-6130
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Motion to Dismiss First
`Amended Petition has been served on the Attorney of Record and Correspondent as listed on the
`TTAB website of the United States Patent and Trademark Office by first class mail, postage
`paid, on October 21, 2016 to:
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`Ekundayo Seton
`WYATT, TARRANT & COMBS, LLP
`500 West Jefferson Street, Suite 2800
`Louisville, Kentucky 40202-2898
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`s/Charles T. Riggs Jr./
` Charles T. Riggs Jr.
` (riggs@riggs.pro)
`The Law Office of Charles T. Riggs Jr.
`551 Forest Ave.
`River Forest, Illinois 60305
`(708) 828-6130
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`By:
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`6