Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1129356
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`Filing date:
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`04/23/2021
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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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`92074939
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`Party
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`Correspondence
`Address
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`Defendant
`Ithaca Milk, LLC
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`DANIEL P MULLARKEY
`POLSINELLI PC
`1401 I STREET NW STE 800
`WASHINGTON, NY 20005
`UNITED STATES
`Primary Email: dmullarkey@polsinelli.com
`Secondary Email(s): dcdocketing@polsinelli.com, mtodd@polsinelli.com,
`sozlat@polsinelli.com, jwillard@polsinelli.com, uspt@polsinelli.com
`202-626-8305
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Other Motions/Submissions
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`Daniel P. Mullarkey
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`uspt@polsinelli.com, dmullarkey@polsinelli.com, dcdocketing@polsinelli.com,
`mtodd@polsinelli.com, sozlat@polsinelli.com
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`/Daniel P. Mullarkey/
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`04/23/2021
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`Respondents Motion To Dismiss Petitioners Second Amended Consolidated Pe-
`tition For Cancellation.pdf(30399 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`HUMMUS HOLDINGS LLC
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`Petitioner,
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`v.
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`ITHACA MILK, LLC
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`Respondent.
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`)
`)
`)
`)
`) Consolidated Cancellation No. 92074939
`)
`) Registration No. 4971868
`) Registration No. 4971869
`) Registration No. 4971870
`)
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`RESPONDENT’S MOTION TO DISMISS PETITIONER’S SECOND
`AMENDED CONSOLIDATED PETITION FOR CANCELLATION
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`Respondent, Ithaca Milk, LLC (“Respondent”), by its attorneys, moves the Trademark
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`Trial and Appeal Board (“TTAB”) to dismiss the Second Amended Consolidated Petition for
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`Cancellation (“Petition”) filed by Hummus Holdings LLC (“Petitioner”) for failure to state a claim
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`upon which relief can be granted under Federal Rule 12(b)(6).
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`SUMMARY OF ARGUMENT
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`Petitioner has now filed its third Petition for Cancellation. This time Petitioner has asserted
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`priority and likelihood of confusion, dilution, fraud, non-use in U.S. commerce, and partial
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`cancellation. Each cause of action is meritless, but even more important, Petitioner has still failed
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`to properly assert the causes of action on its third attempt. It is clear that Petitioner adopted a mark
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`already used by Respondent and this proceeding should be dismissed with prejudice.
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`The Petition fails on several points: (1) the Petitioner never asserts Respondent was not
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`using the marks to sell its products; (2) there is no statement as to how Respondent’s intrastate
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`activity failed to amount to an effect on U.S. commerce; (3) Petitioner has not claimed that its use
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`predated Respondent’s intrastate use and therefore by failing to properly allege intrastate
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`77760975.1
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`commerce, the priority and likelihood of confusion cause of action must be dismissed; (4) the rest
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`of the claims similarly fail due to the insufficient intrastate pleading and (5) Petitioner continues
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`to fail to sufficiently allege how the proposed restriction avoids a finding of likelihood of
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`confusion. For these reasons, the Board must dismiss the Third Petition for Cancellation.
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`LEGAL STANDARD
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`A motion to dismiss for failure to state a claim upon which relief can be granted is a test of
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`the legal sufficiency of a complaint. See Advanced Cardiovascular Systems Inc. v. SciMed Life
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`Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993) (Rule 12(b)(6) challenges
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`the legal theory of the complaint not the sufficiency of the evidence that might be adduced). To
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`withstand such a motion, a pleading must allege such facts as would, if proved, establish that the
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`Petitioner is entitled to the relief sought, that is, that (1) the Petitioner has standing to maintain the
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`proceeding, and (2) a valid ground exists for canceling the subject registration. See Young v. AGB
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`Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998).
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`In Section 18 restriction proceedings, a Petitioner must go further and show that: (1) entry
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`of the proposed restriction will avoid a finding of likelihood of confusion and, moreover, (2) that
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`the Respondent is not using its mark on those goods or services that will be effectively excluded
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`from the registration. See Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co., 34 USPQ2d
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`1266, 1270-72 (TTAB 1994) (“[T]he Board will not restrict respondent’s registration to certain
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`channels of trade in the absence of a pleading and proof that a finding of likelihood of confusion
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`can be avoided by such a restriction”). It is the Board’s duty to examine the complaint to determine
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`whether it contains any allegations, which, if proved, would entitle the plaintiff to the relief sought.
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`See Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theaters, 56 USPQ2d 1538 (TTAB
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`2000).
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`77760975.1
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`2
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`I.
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`Non-use in Commerce
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`The central theme of the Petition is Respondent’s alleged failure to sell product outside of
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`the state of New York. Petitioner has not asserted prior use or that Respondent abandoned use of
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`its marks intrastate. Petitioner’s asserted claims are all based on Respondent’s sale of products in
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`intrastate commerce. Proving non-use in commerce based on intrastate only use is nearly
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`impossible. See e.g., Christian Faith Fellowship Church v. adidas AG, 120 USPQ2D 1640, 1647
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`(Fed. Cir. 2016) (stating that goods are not required to be directed across state lines for Congress
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`to regulate the activity under the Commerce Clause and there is no such per se condition for
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`satisfying the Lanham Act’s “use in commerce” requirement); Perry v. H. J. Heinz Co. Brands,
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`L.L.C., No. 20-30418, 2021 WL 1342649, at *6 (5th Cir. Apr. 12, 2021) (stating that de minimis
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`intrastate activities count as uses in commerce for purposes of the Lanham Act); Operation N.
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`Pole, Inc. v. Magical Moment Events LLC, No. 217CV02759GMNGWF, 2018 WL 4409374, at *3
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`(D. Nev. Sept. 17, 2018) (stating that intrastate activity satisfies the use-in-commerce requirement
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`as the Lanham Act reaches all commerce that “may lawfully be regulated by Congress.”); Sun
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`Hee Jung v. Magic Snow, LLC, 124 USPQ2d 1041, 1045 (TTAB 2017) (finding that Opposer did
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`not adequately pleaded non-use in commerce when Opposer only included allegations arguing
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`Applicant’s services are limited to intrastate commerce). But if it is going to be alleged, a petitioner
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`is required to assert that the sale of the goods, “in the aggregate, does not have an effect on
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`commerce that is regulable by Congress.” Sun Hee Jung v. Magic Snow, LLC, 124 USPQ2d 1041,
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`1045 (TTAB 2017) (citing Christian Faith Fellowship Church, 120 USPQ2d at 1646-47). In other
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`words, simply stating use was solely intrastate is insufficient to survive a motion to dismiss. In
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`Magic Snow, Opposer alleged that Applicant had but one store, remote from any interstate
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`highways and in-person only sales. Id. Yet the Board in dismissing the claim, found those
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`allegations lacking to survive a motion to dismiss. Similarly, the present Petitioner has only alleged
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`that Respondent’s website fails to indicate sales outside of New York, a third party website
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`similarly does not indicate sales outside of New York, Respondent’s products are not available for
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`purchase online, no foreign state corporate registrations, and a US DOT document that purportedly
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`indicates Respondent transports cargo intrastate only.1 Petitioner failed to state Respondent is not
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`selling product. Petitioner has also failed to state that no purchases are made by out of state
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`residents. These allegations are insufficient to support a non-use in commerce claim.
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`The Lanham Act extends to all commerce that Congress may regulate. Christian Faith
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`Fellowship Church at 1646 (citing Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d
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`662, 18 USPQ2d 1292, 1295 (Fed. Cir. 1991)). It has been established that “one need not direct
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`goods across state lines for Congress to regulate the activity under the Commerce Clause, there is
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`likewise no such per se condition for satisfying the Lanham Act's ‘use in commerce’ requirement.”
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`Id. at 1647.
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`The Board has noted that, “the courts have accorded a wide scope and interpretation of the
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`phrase ‘used in commerce’ in the Trademark Act.” United States Shoe Corp. v. J. Riggs West, Inc.,
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`221 USPQ 1020, 1022 (TTAB 1984). The Board has further recognized that it is not “essential
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`that a service mark be used in connection with services rendered in more than one state to satisfy
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`‘use in commerce’ requirements. Id.
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`Further, in Silenus Wines, the court rejected the argument that an earlier decision, In re
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`Gastown, Inc., 140 USPQ 216 (1964) (“Gastown”), was limited to service marks. Application of
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`Silenus Wines, Inc., 557 F.2d 806, 808 (C.C.P.A. 1977). In Gastown, the court held that services
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`1 Petitioner also alleges Respondent’s product is distributed by FingerLakes Farms, LLC.
`FingerLakes Farms, LLC has a license for interstate cargo transport.
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`77760975.1
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`directly affect interstate commerce when the services are sold intrastate to persons moving in
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`interstate commerce, and the services are of the type necessary for the accomplishment of the
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`interstate commerce. The court then determined that the reasoning of Gastown extends from
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`service marks for services to trademarks on goods. Id. at 809. The court reasoned that the Supreme
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`Court has expressly held that intrastate sales of food, which had formerly traveled in interstate
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`commerce, sufficiently affected that commerce to allow federal regulation of the intrastate sale.
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`Id. (citing Katzenbach v. McClung, 379 U.S. 294, 85 S.Ct. 377, 13 L.Ed.2d 290 (1964)). Further
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`the court stated that “[w]hile that case involved facts different from the present case, its holding
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`on the broad scope of federal regulatory power appears to be of general application.” Id.
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`In order to meet the pleading standards of non-use in U.S. commerce based on intrastate
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`use, Petitioner is required to allege that in the aggregate the activities above amount to non-use in
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`U.S. Commerce despite sales in the state of New York (or elsewhere). Petitioner’s failure to do so
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`is fatal to its Petition. In this regard, the Federal Circuit has found that sales, even if de minimis,
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`to out-of-state residents constitutes use in commerce under the Lanham Act. See Christian Faith
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`Fellowship Church v. Adidas AG, 841 F.3d 986, 992-93 (Fed. Cir. 2016). According to precedent,
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`Petitioner is required to allege that Respondent’s activities or lack thereof, in the aggregate, result
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`in no sales to out of state residents. This allegation is missing from the Petition and therefore the
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`intrastate basis must be dismissed.
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`II.
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`Priority and Likelihood of Confusion, Abandonment, Fraud, and Dilution
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`Petitioner’s fraud, dilution, abandonment, priority, and likelihood of confusion claims all
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`rely on Petitioner’s assertion that Respondent has not used the marks in “commerce” which
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`“Congress may regulate.” See Petition, ¶¶93, 100. The Petition fails to state Petitioner was using
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`its mark in U.S. Commerce before Respondent was using its mark in intrastate commerce or
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`77760975.1
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`otherwise. None of the 142 paragraphs make the statement that Petitioner was using its mark before
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`Respondent. Additionally, with respect to the fraud claim, registering a mark based on intrastate
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`use does not establish a false representation of use-in-commerce. See Operation N. Pole, Inc., 2018
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`WL 4409374, at *4 (“Defendant's assertion that Plaintiff “knowingly misrepresented” its use of
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`the ONP Word Mark in commerce cannot be inferred solely because Plaintiff only offers services
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`in Illinois.”). Because the non-use in commerce claim fails, so to do these causes of action.
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`III.
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`Partial Cancellation Under Section 18
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`The Petition once again fails to provide any factual basis that the proposed restriction
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`would avoid a likelihood of confusion. In the absence of a pleading and proof that a finding of
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`likelihood of confusion can be avoided by such a restriction, the Board will not restrict
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`Respondent’s registration. Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co., 34 U.S.P.Q.2d
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`1266, 1270-72 (TTAB 1994). Petitioner still cannot prevail on its goal of obtaining a registration
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`for the mark if Respondent’s description of the products are restricted to “milk, yogurt, and
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`cheese.”
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`Petitioner has failed for a third time to plead “commercially significant” factual allegations.
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`This time Petitioner did not rely on the Examining Attorney’s finding which was the Board’s
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`reasoning when it granted Respondent’s earlier motion to dismiss. However, Petitioner makes even
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`less of an effort in this Petition. The only stated reasoning is that Respondent’s description is
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`overbroad and “because Respondent has set forth goods in terms that overstate the range of goods
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`or trade channels in which those goods move, such that fairness demands that an appropriate
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`restriction be entered.” See Petition ¶¶ 127, 134, and 141. Under the principles of Euro-Star,
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`simply stating that the goods are overbroad is not a sufficient pleading.
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`Petitioner boasts about its business success and especially the multitude of locations where to
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`buy its products. See Petition ¶¶ 23 and 24. There is no attempt by Petitioner to restrict its own
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`channels of trade. Petitioner does not plead or suggest that Respondent’s sells products in a limited
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`manner or in a restricted channel of trade. The Board has granted motions to dismiss Section 18
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`claims when the proposed restriction of goods plainly fails to avoid a likelihood of confusion. See
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`Tapmaster Inc. v. Perfect Water Techs., Inc., Opp. No. 91199561, 2012 WL 8254589, at *6 (TTAB
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`Dec. 26, 2012) (granting motion to dismiss Section 18 counterclaim where the proposed restriction
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`to the identification of goods did “not on its face appear to...avoid a likelihood of confusion”).
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`Petitioner has not asserted any “commercially factual” allegations that consumers would consider
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`milk, cheese, and yogurt2 unrelated to hummus such that there is no likelihood of confusion. See
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`Rajca v. New Yorker S.H.K. Jeans GmbH & Co., Canc. No. 92056995, 2014 WL 3752425, at *4
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`(TTAB July 22, 2014) (“t-shirts identified in respondent’s registration encompass the more
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`narrowly described t-shirts in petitioner’s pleaded registration, there is no genuine dispute that
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`these goods are related”). To the contrary, the Petition asserts a likelihood of confusion.
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`The Eurostar decision was the Board’s effort to end petitions like the one filed here, where
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`“parties have sought to restrict their opponents’ long-held registrations.” Eurostar Inc., 34
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`USPQ2d at 1270. The Board, distressed by such “tactical ... [rather] than substantive” petitions,
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`announced Eurostar as an effort to “virtually eliminate frivolous or harassing restriction
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`proceedings,” and to discourage “the use of TTAB inter partes proceedings to harass the owners
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`of existing (and, perhaps, long-held) registrations.” Id. Consequently, certain requested restrictions
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`were of doubtful “commercial significance,” leading the Board to conclude they were brought for
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`2 The same argument applies to Petitioner’s attempt to narrow the ITHACA description to only
`“milk.”
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`77760975.1
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`tactical rather than substantive reasons. Id. The lack of commercially factual allegations demands
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`this cause of action be dismissed.
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`CONCLUSION
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`For all of the reasons set forth herein and in the Motion, Respondent respectfully requests
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`that the Board grant Respondent’s Motion and dismiss the Petition in its entirety with prejudice
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`and grant any further relief and this Board deems just and proper.
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`Dated: April 23, 2021
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`Submitted by:
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`/Daniel P. Mullarkey/
`Daniel P. Mullarkey
`Shaleez Ozlat
`Matt Todd
`POLSINELLI PC
`1401 I Street, NW, Suite 800
`Washington, DC 20005
`(202) 626-8305 (office)
`dmullarkey@polsinelli.com
`sozlat@polsinelli.com
`mtodd@polsinelli.com
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`77760975.1
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing Respondent’s Motion To
`Dismiss Petitioner’s Second Amended Consolidated Petition For Cancellation was filed via the
`Electronic System for Trademark Trials and Appeals (ESTTA) and was served on counsel for
`Petitioner by forwarding said copy via email on this 23rd day of April 2021 to:
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`Darren M Geliebter
`dgeliebter@lombardip.com
`mlombard@lombardip.com
`ehuang@lombardip.com,
`ap@lombardip.com
`scohen@lombardip.com
`ipdocket@lombardip.com
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`/Daniel P. Mullarkey/
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`77760975.1
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`9
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