Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA822734
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`Filing date:
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`05/23/2017
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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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`92065406
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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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`Plaintiff
`Plaza Izalco, Inc.
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`OLIVER A RUIZ
`MALLOY & MALLOY PL
`2800 SW 3RD AVE
`MIAMI, FL 33129
`UNITED STATES
`jcmalloy@malloylaw.com, oruiz@malloylaw.com, jnmcdonald@malloylaw.com,
`litigation@malloylaw.com
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`Reply in Support of Motion
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`Oliver Alan Ruiz
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`oruiz@malloylaw.com, jcmalloy@malloylaw.com, jnmcdonald@malloylaw.com,
`litigation@malloylaw.com
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`Signature
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`Date
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`/Oliver Alan Ruiz/
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`05/23/2017
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`Attachments
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`2017 05 23 Reply re Motion to Strike Affirmative Defenses.pdf(296418 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92065406
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`In the matter of Registration No. 4,581,604
`For the mark “KOFAL”
`____________________________________
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`PLAZA IZALCO, INC., )
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`Registrant.
`____________________________________)
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`Petitioner,
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`vs.
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`PHARMADEL, LLC
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`REPLY IN SUPPORT OF MOTION TO STRIKE
`REGISTRANT’S AFFIRMATIVE DEFENSES
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`Petitioner Plaza Izalco, Inc. (“Petitioner”), by and through its undersigned counsel, hereby
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`replies to Registrant’s Response in Opposition to Petitioner’s Motion to Strike Registrant’s
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`Affirmative Defenses, and states as follows:
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`I.
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`INTRODUCTION
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`Petitioner moved the Board to strike the Registrant’s affirmative defenses. In its response,
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`Registrant makes several incorrect statements and asserts unsupported arguments to suggest that
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`its defenses are proper. For the reasons set forth in the Petitioner’s Motion, and in this Reply, the
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`Board should grant Petitioner’s Motion to Strike Registrant’s Affirmative Defenses.
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`II.
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`ARGUMENT
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`A.
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`Registrant’s First and Second Affirmative Defense (Failure to State a Claim
`and Lack of Standing) Should be Stricken
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`Registrant claims that these “defenses” are “amplification[s] of the Fourth Affirmative
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`Defense,” thereby acknowledging that these “defenses” are redundant and impertinent. See
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`1
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`Registrant Response TTABVUE #12, pp. 1, 3-5. Further, as to the First Affirmative Defense
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`(failure to state a claim), Registrant did not rebut the precedential case citations for decisions that
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`have stricken this “defense” with prejudice because it is not a proper affirmative defense. See
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`Blackhorse v. Pro Football, Inc., 98 U.S.P.Q.2D 1633, 1637 (TTAB 2011)]; Hornblower &
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`Weeks Inc. v. Hornblower & Weeks Inc., 60 U.S.P.Q.2d 1733, 1738 n.7 (TTAB 2001).
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`Accordingly, the Board should do the same here, and strike the alleged defense.
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`As to the Second Affirmative Defense (lack of standing), Registrant asks the Board to not
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`consider the “defense” by itself, but rather in conjunction with another defense. Besides being an
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`admission that the defense is insufficient, the argument is unsupported as to both fact and law.
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`Here, the Petitioner pled facts to show it has a real interest and reasonable basis for being damaged,
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`including that the challenged “KOFAL” registration was cited in a refusal to register the
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`Petitioner’s mark. This “defense” should be therefore be stricken.
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`B.
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`Registrant’s Third Affirmative Defense (Registrant’s Marks “KOFAL” and
`“KOFAL-T” Began Use Prior to Petitioner Applying For Registration)
`Should be Stricken
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`The Registrant did not disagree with the Applicant’s argument that the third affirmative
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`“defense” is not a recognized affirmative defense. Based on that alone, it should be stricken.
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`Beyond that, the Registrant’s “defense” appears to raise a concurrent use situation improperly,
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`while the Registrant’s response in opposition argues priority (which is factually inaccurate,
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`because the Petitioner’s date of first use in commerce predates the Registrant’s claimed dates of
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`first use). Putting aside the Registrant’s attempt to conflate these concepts, the defense should be
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`stricken because it is a conclusory statement without any supporting facts. See Southwest Specialty
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`Food Inc. v. Crazy Uncle Jester’s Inferno World, LLC, 2016 TTAB LEXIS 284, *8 (TTAB June
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`24, 2016) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) and Bell Atl. Corp. v. Twombly,
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`2
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`550 U.S. 544, 570 (2007)) (“A party must allege sufficient facts beyond a tender of ‘naked
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`assertion[s]’ devoid of ‘further factual enhancement,’ to support its claims or defenses.”).
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`C.
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`Registrant’s Fourth Affirmative Defense (Morehouse Defense) Should be
`Stricken With Prejudice
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`Registrant’s allegation (that it owns a similar mark on similar goods) does not set forth the
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`proper elements of the Morehouse defense, and the defense is thereby legally insufficient. See
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`Morehouse Manufacturing Corp. v. J. Strickland and Co., 160 U.S.P.Q. 715, 717 (C.C.P.A. 1969)
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`and TBMP § 311.02(b). Nor is the inquiry one of “relatedness,” as the Registrant claims. Because
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`the Registrant cannot plausibly allege a Morehouse defense, it should be stricken with prejudice.
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`Registrant tries to assert there are distinctions as to the legal standard of the Morehouse
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`defense, by stating that “this Board has articulated the verbiage of the Morehouse standard in
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`different forms.” See Registrant Response TTABVUE #12, pp. 7. While Petitioner acknowledges
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`this different verbiage may include “the same mark” or “substantially similar” or “substantially
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`identical,” the case law is clear that merely being “similar” on “similar” goods, as Registrant
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`attempts to plead in its affirmative defense, does not afford the ability to maintain a Morehouse
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`Defense1. Registrant’s arguments are littered with claims that the marks and goods are “similar”
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`or “related”, which, just as its affirmative defense, do not sufficiently state the elements of its
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`defense and should be stricken.
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`1 See O-M Bread, Inc. v. U.S. Olympic Comm., 36 U.S.P.Q.2d 1041, 1045-46 (Fed. Cir. 1995)
`(“[B]oth the Morehouse defense and § 110(a) require that the prior and proposed marks be
`essentially the same.”); Mag Instrument Inc. v. Brinkmann Corp., 96 U.S.P.Q.2d 1701, 1711
`(TTAB 2010) ("For purposes of the Morehouse defense, the two marks must be 'substantially
`identical,' meaning that they are either literally identical or legally equivalent."); Tea Board of
`India v. Republic of Tea Inc., 80 U.S.P.Q.2d 1881, 1884 n.6 (TTAB 2006) (Morehouse defense
`does not apply where marks in the two registrations being compared are not the same); Teledyne
`Technologies Inc. v. Western Skyways Inc., 78 U.S.P.Q.2d 1203, 1209 (TTAB 2006) (Morehouse
`defense fails where goods in the involved registration are clearly different from those in prior
`registrations).
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`3
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`Despite Registrant’s bald and baseless assertions, neither the prior registration nor the
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`goods identified in it can plausibly be characterized as the “same” or “substantially the same”
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`when compared to the registration at issue in this proceeding. See Citadel Federal Credit Union
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`v. KCG IP Holdings LLC, 2013 TTAB LEXIS 380, *5-8 (TTAB July 10, 2013) (the Board was
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`“not persuaded by respondent’s arguments that the design element of the earlier mark [did] not
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`change the appearance or commercial impression of the later standard character mark.” Id. at *7.
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`The Board further stated that the Morehouse standard requires “the marks in their entireties [be]
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`essentially the same.” Id. (citing O-M Bread, 36 U.S.P.Q.2d at 1045).
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`Further, there are no “red herrings,” as Registrant argues. In reply, Petitioner states the
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`obvious - that the registration that is the subject of this cancellation proceeding has multiple
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`different goods in two separate classes, whereas the prior registration it seeks to rely upon contains
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`just one product (“analgesic balm”). Yet, the Registrant claims this is a “red herring,” arguing that
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`Petitioner’s “COFAL” application does not include goods in Class 10. See Registrant Response
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`TTABVUE #12, pp. 12. This argument fails for two reasons. First, goods in both classes are at
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`issue in this proceeding. Second, the Class 5 goods in the registration sought to be canceled go
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`well beyond the one product that is identified in the prior registration. See Haggar Co. v. Hugger
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`Corp., 172 U.S.P.Q. 253, 254 (TTAB 1971). As noted in Haggar:
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`The rationale for refusing to apply this doctrine in situations where the goods in
`particular may be different is that the owner of a trademark registration, usually a
`subsequent user, should not be permitted by normal expansion of its operations to
`extend the use or registration of its mark to goods not covered by its registration
`where the result could be a conflict with the prior use and/or registration by another
`of the same or similar mark for the same or similar goods.
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`Id. For the reasons noted in Haggar, the Respondent should not be able to rely on its prior
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`registration for “KOFAL-T” for use in connection with “analgesic balm,” as part of a Morehouse
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`defense to extend it to the multitude of different goods that are shown in the chart below:
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`4
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`MARK
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`CLASS(ES)
`GOODS
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`Prior Registration:
`“KOFAL-T”
`U.S. Reg. No. 3,540,972
`5
`IC 5: Analgesic balm.
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`Challenged Registration:
`“KOFAL”
`U.S. Reg. No. 4,581,604
`5, 10
`IC 5: Adhesive bandages; Adhesive
`bands for medical purposes; Analgesic
`and muscle relaxant pharmaceutical
`preparations; Analgesic balm; Anti-
`inflammatory gels; Anti-inflammatory
`salves; Anti-inflammatory sprays; Balms
`for medical purposes; Balms for
`pharmaceutical purposes; Curare for use
`as a muscle relaxant; Herbal topical
`creams, gels, salves, sprays, powder,
`balms, liniment and ointments for the
`relief of aches and pain; Medicaments
`for promoting recovery from tendon and
`muscle injuries and disorders and sports
`related injuries; Multipurpose medicated
`antibiotic cream, analgesic balm and
`mentholated salve; Muscle relaxants;
`Sports cream for relief of pain;
`Therapeutic spray to sooth and relax the
`muscles.
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`IC 10: Drug delivery patches sold
`without medication; Elastic bandages.
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`The rationale in Haggar is of particular significance here, because there are numerous goods in
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`the challenged “KOFAL” registration that were not identified in the prior registration, and that
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`overlap with the goods identified in the Petitioner’s application to register “COFAL,” as shown
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`below:
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`MARK
`CLASS(ES)
`GOODS
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`“COFAL”
`5
`IC 5: Analgesic and muscle relaxant pharmaceutical preparations; Analgesic
`balm; Analgesic preparations; Curare for use as a muscle relaxant; Medicaments
`for promoting recovery from tendon and muscle injuries and disorders and
`sports related injuries; Multipurpose medicated antibiotic cream, analgesic
`balm and mentholated salve; Muscle relaxants.
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`Given the above, the Registrant cannot plausibly allege a Morehouse defense in this case,
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`and the affirmative defense should be stricken with prejudice.
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`5
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`D. Registrant’s Fifth Affirmative Defense (Primarily Merely a Surname) Should be
`Stricken
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`To fend off the argument that that this bare-boned affirmative defense fails, Registrant
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`provides a quote from the TBMP that states the “elements of a defense should be stated,” (TBMP
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`§ 311.02(b) (emphasis added)) but did not do so when it asserted this affirmative defense. Without
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`stating the elements or facts to support such, the affirmative defense is insufficient.
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`The elements that are required to allege that a mark is primarily merely a surname include
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`the following: as the Federal Circuit has instructed, the test is “the primary significance of the mark
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`as a whole to the purchasing public.” In re Hutchinson Tech. Inc., 7 U.S.P.Q.2d 1490, 1492 (Fed.
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`Cir. 1988). Further, the Board typically considers four factors (Benthin factors): “(1) whether the
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`surname is rare; (2) whether anyone connected with applicant has the involved term as a surname;
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`(3) whether the term has any other recognized meaning; and (4) whether the term has the ‘look
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`and feel’ of a surname.” Simmons Browder Gianaris Angelides & Barnerd, LLC v. Simmons Firm,
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`ALC, 2013 TTAB LEXIS 91, *10-11 (TTAB Feb. 21, 2013) (citing In re Binion, 93 U.S.P.Q.2d
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`1531, 1537 (TTAB 2009); In re United Distillers plc, 56 U.S.P.Q.2d 1220 (TTAB 2000)).
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`Registrant’s affirmative defense is void of any recitation of elements or facts to support such.
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`E. Registrant’s Sixth and Seventh Affirmative Defenses (Estoppel and Waiver)
`Should Be Stricken
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`Neither did the Registrant recite the elements or supporting facts necessary to plausibly
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`allege estoppel and waiver. The elements of equitable estoppel are: (1) misleading conduct which
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`leads another to reasonably infer that rights will not be asserted against it; (2) reliance upon this
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`conduct; and (3) due to this reliance, material prejudice if the delayed assertion of such rights is
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`permitted. See Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 23 U.S.P.Q.2d 1701, 1703
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`(Fed. Cir. 1992) (citing A.C. Aukerman Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 22
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`U.S.P.Q.2d 1321 (Fed. Cir. 1992)). With respect to the seventh affirmative defense, waiver is "the
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`intentional relinquishment or abandonment of a known right." Bd. of Trs. v. Houndstooth Mafia
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`Enters. LLC, 163 F. Supp. 3d 1150, 1165 (N.D. Ala. Feb. 23, 2016). Here, there are no facts to
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`support such an implausible defense.
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`Moreover, it appears that Registrant is hitching these defenses on the back of its Morehouse
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`defense, which is improper. For these reasons, and the reasons cited above for the Fourth
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`Affirmative Defense (Morehouse defense), these should be stricken.
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`F. Registrant’s Reservation of Future and Unknown Affirmative Defenses Should
`Be Stricken
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`Registrant seems to agree this is not an affirmative defense, and accordingly, Petitioner
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`maintains that this affirmative defense should be stricken.
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board enter an order
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`Respectfully submitted,
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`/Oliver Alan Ruiz/
`John Cyril Malloy, III
`Florida Bar No. 964,220
`jcmalloy@malloylaw.com
`Oliver A. Ruiz
`Florida Bar No. 524,786
`oruiz@malloylaw.com
`Jessica Neer McDonald
`Florida Bar No. 125,559
`jnmcdonald@malloylaw.com
`MALLOY & MALLOY, P.L.
`2800 S.W. Third Avenue
`Miami, Florida 33129
`(305) 858-8000
`Attorneys for Petitioner
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`striking Registrant’s Affirmative Defenses.
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`Dated: May 23, 2017
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`CERTIFICATE OF FILING
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` HEREBY CERTIFY that the foregoing Reply in Support of Motion To Strike Registrant’s
`Affirmative Defenses was filed electronically via the ESTTA, at the United States Patent and
`Trademark Office, Trademark Trial and Appeal Board’s ESTTA electronic filing system, on May
`23, 2017.
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`/Oliver A. Ruiz/
`Oliver A. Ruiz
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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 Strike
`Registrant’s Affirmative Defenses has been served on Pharmadel LLC by forwarding said copy
`on May 23, 2017, via email to its counsel identified below:
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`Jorge Espinosa, Esq.
`Robert R. Jimenez, Esq.
`ESPINOSA TRUEBA MARTINEZ PL
`1428 BRICKELL AVE SUITE 100
`MIAMI, FL 33131
`UNITED STATES
`jespinosa@etlaw.com
`rjimenez@etlaw.com
`lmansen@etlaw.com
`zsanchez@etlaw.com
`trademarks@etlaw.com
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`/Oliver A. Ruiz/
`Oliver A. Ruiz
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`8
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