Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA813620
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`Filing date:
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`04/14/2017
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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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`Motion to Strike Pleading/Affirmative Defense
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`/Oliver A. Ruiz/
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`jcmalloy@malloylaw.com, oruiz@malloylaw.com, jnmcdonald@malloylaw.com,
`litigation@malloylaw.com
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`Signature
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`Date
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`/Oliver A. Ruiz/
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`04/14/2017
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`Attachments
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`2017 04 14 Motion to Strike Affirmative Defenses.pdf(334064 bytes )
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`In the matter of Registration No. 4,581,604
`For the mark “KOFAL”
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`____________________________________
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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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`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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`MOTION TO STRIKE REGISTRANT’S AFFIRMATIVE DEFENSES
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`Petitioner Plaza Izalco, Inc. (“Petitioner”), by and through its undersigned counsel, and
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`pursuant to Section 506.01 of the TBMP and Rule 12(f) of the Federal Rules of Civil Procedure,
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`hereby moves for an Order striking the Registrant’s Affirmative Defenses, and in support thereof,
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`Petitioner states as follows:
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`I.
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`INTRODUCTION
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`On March 24, 2017, Registrant filed its Answer and Affirmative Defenses. As detailed
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`below, the Registrant’s seven Affirmative Defenses are deficient because they recite conclusory,
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`one sentence allegations with no factual or legal support, lack relevancy to the proceeding, and/or
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`do not state a valid affirmative defense. Based on the following arguments and legal authorities,
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`Registrant’s Affirmative Defenses should be stricken with prejudice.
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`II.
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`ARGUMENT
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`Section 506.01 of the TBMP provides that the Board may “order stricken from a pleading
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`any insufficient defense or any redundant, immaterial, impertinent, or scandalous matter.” See
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`1
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`also Fed. R. Civ. P. 12(f). While an affirmative defense “does not need detailed factual allegations,
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`[it] requires more than labels and conclusions, and a formulaic recitation of the elements of a cause
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`of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Affirmative defenses
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`“are subject to the general pleading requirements of Rule 8(a) and will be stricken if they fail to
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`recite more than bare-bones conclusory allegations.” Home Mgmt. Solutions, Inc. v. Prescient,
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`Inc., No. 07-20608-CIV, 2007 U.S. Dist. LEXIS 61608, at *4-5 (S.D. Fla. Aug. 21, 2007).
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`Registrant failed to state the elements or give enough detail of its defenses and the alleged defenses
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`are conclusory and boilerplate in nature. See TBMP § 311.02(b). In failing to provide any factual
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`basis for its defenses, lack of even formulaic recitations of the elements, and/or valid affirmative
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`defenses, Petitioner does not have fair notice and all affirmative defenses should be stricken.
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`A.
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`Registrant’s First Affirmative Defense (Failure to State a Claim) Should be
`Stricken Because It Is Not An Affirmative Defense
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`The asserted “defense” of failure “to state a claim upon which relief may be granted”
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`should be stricken because it relates to insufficiency of the pleading rather than a state of defense
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`to a properly pleaded claim. This is an alleged defect in the pleading, not an affirmative defense.
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`See Aachi Spices & Foods v. Kalidoss Raju, Cancellation No. 92058629, p. 4 (September 13, 2016)
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`[not precedential]; Blackhorse v. Pro Football, Inc., 98 U.S.P.Q.2D 1633, 1637 (TTAB 2011)
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`[precedential]. Accordingly, this asserted “defense” should be stricken. See id.; 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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`[precedential]. Furthermore, this defense should be stricken with prejudice, since it is clear that
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`Petitioner has standing to bring the proceeding, and has plead valid grounds for cancelling the
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`registration at issue. See Petition to Cancel ¶¶ 1-10; TBMP § 503.02. Therefore, particularly at
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`this stage of the litigation, the Petition to Cancel is legally sufficient.
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`2
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`B. Registrant’s Second Affirmative Defense (Lack of Standing) Should be Stricken
`Because It Is Not An Affirmative Defense
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`This asserted “defense” is deficient because it is also not an affirmative defense. Similar
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`to the arguments above, standing is an element of Petitioner’s claim and an alleged defect in the
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`pleading is not an affirmative defense. See Blackhorse, 98 U.S.P.Q.2D at 1637.
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`This defense should likewise be stricken with prejudice, because Petitioner alleged facts to
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`show it has a “real interest” in the proceeding and a “reasonable basis” for being damaged by the
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`registration of “KOFAL”. See Petition to Cancel ¶¶ 4, 5, 6, 7. More specifically, Petitioner stated
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`in its Petition to Cancel that its application to register the mark “COFAL” received a Section 2(d)
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`refusal prefaced in part on the mark at issue in this proceeding. Petitioner has also alleged priority.
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`See id.; TBMP § 309.03(b). Therefore, Petitioner has established standing.
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`C. Registrant’s Third Affirmative Defense (Registrant’s Marks “KOFAL” and
`“KOFAL-T” Began Use Prior to Petitioner Applying For Registration) Should
`be Stricken Because It Is Not An Affirmative Defense and Irrelevant
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`Registrant’s third affirmative defense is not a recognized affirmative defense and asserts
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`rights based on another registration that is not at issue in the current proceeding. Registrant claims
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`rights based on the registration of “KOFAL-T”, which are not relevant to the cancellation of the
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`“KOFAL” mark. Furthermore, even if the registration was somehow relevant, this is not an
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`affirmative defense under TBMP § 311.02(b), and therefore, should be stricken.
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`D. Registrant’s Fourth Affirmative Defense (Morehouse Defense) Should be
`Stricken Because the Allegations are Improper, Insufficient, and Not Applicable
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`This asserted defense should be stricken for two primary reasons. First, Registrant
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`misrepresents the Morehouse defense by alleging that Registrant owns an unchallenged
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`registration for “the same or similar mark (KOFAL-T) on the same or similar goods,” (emphasis
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`added) which is a lower standard than that set out in Morehouse Manufacturing Corp. v. J.
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`3
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`Strickland and Co., 160 U.S.P.Q. 715, 717 (C.C.P.A. 1969) and TBMP § 311.02(b) n.2. Instead,
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`the Morehouse standard requires that Registrant to show that it “owns a prior registration for
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`essentially the same mark registered in connection with essentially the same services that are the
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`subject of the involved registration”. Id. (emphasis added).
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`Here, even if the proper standard was pled, neither the prior registration nor the goods
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`identified in it can plausibly be characterized as “essentially the same” or “substantially the same”
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`(as noted in other cases), when compared to the registration at issue in this proceeding. This is
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`evident from a review of the two registrations, as set forth in the chart below:
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`“KOFAL-T”
`5
`IC 5: Analgesic balm.
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`“KOFAL”
`MARK
`CLASS(ES) 5, 10
`IC 5: Adhesive bandages; Adhesive
`GOODS
`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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`As shown in the chart above, in addition to the additional and dissimilar elements in the
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`“KOFAL-T” mark as compared to the alleged “KOFAL” mark, the goods are indisputably not
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`4
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`“essentially the same”. By way of just a few examples, the “KOFAL-T” Registration’s “analgesic
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`balm” is not essentially the same as the “adhesive bandages” or “drug delivery patches sold without
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`medication” identified in the “KOFAL” registration that is at issue in this proceeding.
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`Furthermore, in a previous proceeding involving the same parties (Opposition No.
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`91214315), Registrant acknowledged the higher standard in a Motion for Judgment on the
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`Pleadings (“substantially the same mark and for substantially the same goods”). TTABVUE 5. In
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`that proceeding, Registrant attempted to rely on the Morehouse affirmative defense with respect
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`to the same “KOFAL-T” registration for its then-active application for “COFAL,” which included
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`various goods listed in International Class 5; however, Registrant’s motion was denied, and
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`Registrant subsequently withdrew its “COFAL” application, resulting in a judgment in the
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`Petitioner’s favor. Therefore, Registrant’s reliance or reference to the “KOFAL-T” registration as
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`part of an alleged Morehouse defense is misguided and should be stricken with prejudice.
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`E. Registrant’s Fifth Affirmative Defense (Primarily Merely a Surname) Should be
`Stricken Because the Allegations are Conclusory and It Does Not Provide
`Petitioner With The Proper Notice
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`Petitioner will assume that Registrant meant to allege that Petitioner’s mark “COFAL” is
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`“primarily merely a surname and cannot register as a matter of law,” instead of Registrant
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`admitting that its own mark, “KOFAL” is primarily merely a surname. Regardless, this asserted
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`defense should be stricken because it does not provide any specific facts to support this conclusory
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`allegation. See e.g., Veles Int’l Inc. v. Ringing Cedars Press LLC, Consolidated Opp. Nos.
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`91182303 and 91182304, *4-5 (TTAB June 2, 2008). Moreover, an affirmative defense should be
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`stricken where it does “not set forth the elements of the defense.” Id. Therefore, this defense
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`should be stricken.
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`5
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`F. Registrant’s Sixth and Seventh Affirmative Defenses (Estoppel and Waiver)
`Should Be Stricken Because the Allegations are Conclusory, Do Not Provide
`Petitioner With The Proper Notice, and Not Applicable
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`These affirmative defenses are deficient because Registrant failed to set forth any specific
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`allegations that would, if proven, present a bar to recovery by the Petitioner. See Veles Int’l Inc.,
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`Consolidated Opp. Nos. 91182303 and 91182304, *4-5 (TTAB June 2, 2008) (striking affirmative
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`defenses of waiver and estoppel as legally insufficient where the applicant provided no specific
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`allegations of conduct) (citing Lincoln Logs Ltd. v. Lincoln Precut Log Homes, Inc., 23 U.S.P.Q.2d
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`1701 (Fed. Cir. 1992)). Additionally, Registrant’s mere reference to the doctrine of estoppel,
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`without more, does not constitute “fair notice” to the Petitioner. “A reference to a doctrine, like a
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`reference to statutory provisions, is insufficient notice.” Qarbon.com Inc., 315 F. Supp. 2d at 1049
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`(striking the defendant’s affirmative defense of estoppel). Accordingly, these defenses should be
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`stricken.
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`G. Registrant’s Reservation of Future and Unknown Affirmative Defenses Should
`Be Stricken Because It Does Not Provide Petitioner With The Proper Notice and
`Is Not a Viable Defense
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`Petitioner objects to Registrant’s reservation that “Registrant reserves the right to raise such
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`other and further affirmative defenses as may be supported by facts discovered during the course
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`of this proceeding.” As stated under TBMP § 311.02(c), “an unpleaded defense cannot be relied
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`upon by the defendant unless the defendant’s pleading is amended (or deemed amended),” aside
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`from exceptions under Fed. R. Civ. P. 12(b) and 12(h)(2). See also H.D. Lee Co. v. Maidenform
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`Inc., 87 U.S.P.Q.2d 1715, 1720 (TTAB 2008) (“The reason for requiring an affirmative defense to
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`be pleaded is to give the plaintiff notice of the defense and an opportunity to respond.”).
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`Registrant’s exceedingly broad catch-all does not give Petitioner adequate notice of any other
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`possible defense, and consequently, should be stricken. See Gonzalez v. Spears Holdings, Inc.,
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`2009 U.S. Dist. LEXIS 72734, *11-12 (S.D. Fla. July 31, 2009).
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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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`striking Registrant’s Affirmative Defenses.
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`Dated: April 14, 2017
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`Respectfully submitted,
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`/Oliver A. 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
`Telephone: (305) 858-8000
`Attorneys for Petitioner
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`CERTIFICATE OF FILING
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` I
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` HEREBY CERTIFY that the foregoing 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 April 14, 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 April 14, 2017, via email to rjimenez@etlaw.com, jespinosa@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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