Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1132781
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`Filing date:
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`05/10/2021
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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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`92076572
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`Party
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`Correspondence
`Address
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`Plaintiff
`BSA Sales LLC
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`MOSHE D LAPIN
`LAPIN LAW FIRM
`295 MADISON AVE
`12TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`Primary Email: moshe@lapinlegal.com
`212-858-0363
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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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`Opposition/Response to Motion
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`Moshe D. Lapin
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`moshe@lapinlegal.com
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`/MDL/
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`05/10/2021
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`Attachments
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`Dr. Joel's - Response to Motion to Dismiss .pdf(114612 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Registration No. 6094421
`Date of Issuance: July 7, 2020
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`___________________________________
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` BSA Sales LLC
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`Petitioner,
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`Vs.
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`Jewel Farazi
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`Registrant.
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`__________________________________ )
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`Cancellation No.: 92076572
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`RESPONSE OF PETITIONER IN OPPOSITION TO
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`REGISTRANT’S MOTION TO DISMISS
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`BSA Sales LLC (“Petitioner”), through its undersigned counsel, hereby responds to Jewel
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`Farazi’s (“Registrant”) Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(6).
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`1. Registrant argues that Petitioner lacks standing. Both the opposition statute and the
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`cancellation statute speak in terms of “belief” in “damage” by the Opposer or Petitioner. Lanham
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`Act §§ 13, 14, 15 U.S.C.A. §§ 1063, 1064. Standing to cancel is based on the same general
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`criteria as standing to oppose. As in opposition proceedings, a petitioner asking for cancellation
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`need not plead or prove actual damage. Traditionally, all petitioner need plead are facts
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`supporting a reasonable belief that there is a likelihood of damage caused by the continuing
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`registration of the mark. Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 U.S.P.Q.
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`Page 1 of 6
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`641 (Fed. Cir. 1983) (“[P]leading and proof of damage or belief in damage are not necessary to
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`establish standing [in either an Opposition or Cancellation].”); T.B.M.P. § 309.03(b) (“At the
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`pleading stage, all that is required is that a plaintiff allege facts sufficient to show a ‘real interest’
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`in the proceeding, and a ‘reasonable basis for its belief of damage.’”).
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`The purpose of the standing requirement in opposition and cancellation proceedings is to
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`prevent a “mere intermeddler” from initiating such a proceeding. Ritchie v. Simpson, 170 F.3d
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`1092, 1095, 50 U.S.P.Q.2d 1023 (Fed. Cir. 1999). This means that to establish standing to
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`petition to cancel, the petitioner need only be something more than a gratuitous interloper or a
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`vicarious enforcer of someone else's rights. “Since ‘mere intermeddlers’ only rarely bring such
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`challenges, few proceedings are ever dismissed for lack of standing and a challenge to standing
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`is usually just a futile procedural gesture.” 3 McCarthy on Trademarks and Unfair Competition
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`§ 20:46 (5th ed.).
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`Contrary to Registrant’s assertions, “to have standing to petition to cancel registration of
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`a mark as being deceptive . . . , petitioner need not have a pending application for the mark, does
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`not have to be using the designation as a mark or even use the designation at all. For example,
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`the Cuban government's cigar exporter had standing to cancel a registration for PINAR DEL
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`RIO (name of a Cuban Province) for non-Cuban cigars as being either deceptive or primarily
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`geographically deceptively mis-descriptive even though Cuban cigars could not be sold in the
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`U.S.” To have standing to petition to cancel registration of a mark as being either deceptive or
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`primarily geographically deceptively mis-descriptive, petitioner need not have a pending
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`application for the mark, does not have to be using the designation as a mark or even use the
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`designation at all. For example, the Cuban government's cigar exporter had standing to cancel a
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`registration for PINAR DEL RIO (name of a Cuban Province) for non-Cuban cigars as being
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`either deceptive or primarily geographically deceptively mis-descriptive even though Cuban
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`cigars could not be sold in the U.S.” 2 McCarthy on Trademarks and Unfair Competition § 14:30
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`(5th ed.) citing Corporacion Habanos, S.A. and Empresa Cubana del Tabaco, d.b.a. Cubatabaco
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`v. Juan E. Rodriguez, 2011 WL 3871952 (T.T.A.B. 2011).
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`In any event, as Petitioner has alleged in its Cancellation Petition, Registrant has misused
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`(and continues to misuse) its registration against Petitioner on third party Online platforms in a
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`manner that causes direct injury to Petitioner. Petitioner certainly has a “real interest” in the
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`outcome of the proceeding and more than a mere “reasonable basis” for its belief that it will
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`suffer damage by the continued registration. Petitioner need not “believe” that it will suffer
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`damage; it has already experienced it, and it has so alleged.
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`2. Registrant argues that its mark is not deceptive and is not misdescriptive, though
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`admittedly Petitioner doesn’t quite follow Registrant’s logic. The Federal Circuit and the
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`Trademark Board use a three-part test of deceptiveness under Lanham Act § 2(a), 15 U.S.C.A. §
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`1052(a):
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`(1) Is the term misdescriptive of the character, quality, function, composition or
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`use of the goods?
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`(2) If so, are prospective purchasers likely to believe that the misdescription
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`actually describes the goods or their quality, character or feature?
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`(3) If so, is the misdescription “material” in the sense it would be likely to affect
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`the decision to purchase?
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`Applying this test, the Federal Circuit held that the mark LOVEE LAMB for auto seat
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`covers made of synthetic fiber was deceptive and unregistrable as falsely implying that the
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`product was made from natural lamb or sheep skins. In re Budge Mfg. Co., Inc., 857 F.2d 773,
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`776, 8 U.S.P.Q.2d 1259 (Fed. Cir. 1988). Similarly, applying the three-part test, the Trademark
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`Board found that SUPER SILK for shirts not made from silk was deceptive under § 2(a). The
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`term SUPER was found to connote a superior grade of silk and SUPER SILK was material to
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`purchasing decisions given the desirable attributes of silk for garments. In re Phillips-Van
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`Heusen Corp., 63 U.S.P.Q.2d 1047, 2002 WL 523343 (T.T.A.B. 2002).
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`Applying the three-part test to Dr. Joel’s, Petitioner alleges that (1) the term “Dr.”
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`included in the registration is misdescriptive, in that no doctor is in any way associated with
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`Registrant’s product; (2) because the product is a pain relief and health product, consumers are
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`likely to believe that the misdescription (“Doctor”) actually describes a quality, character or
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`feature or the goods; and (3) the misdescription is “material” in the sense that it would be likely
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`to affect the decision to purchase a pain relief product. Certainly one would be more inclined to
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`purchase such a product if he believed that the product was developed by a doctor rather than a
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`lay person having no expertise in medicine or health.
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`For the reasons above, Petitioner respectfully requests that the Board deny Registrant’s
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`Motion to Dismiss.
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`Respectfully submitted,
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`_______________________
`Moshe D. Lapin, Esq
`LAPIN LAW FIRM
`295 Madison Ave., 12th Floor
`New York, NY 10017
`Moshe@LapinLegal.com
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`Date: May 10, 2021
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`Page 4 of 6
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`CERTIFICATE OF ELECTRONIC MAILING
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`I hereby certify that the foregoing is being submitted electronically through the
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`Trademark Trial and Appeal Board’s ESTTA System on this 10th day of May 2021.
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`_____________________
`Moshe D. Lapin, Esq
`LAPIN LAW FIRM
`295 Madison Ave., 12th Floor
`New York, NY 10017
`Moshe@LapinLegal.com
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`Page 5 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing has been served on
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`Registrant by emailing said copy on Registrant’s attorneys at the following email addresses on
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`May 10, 2021: becky@dunnerlaw.com, ldunner@dunnerlaw.com
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`Moshe D. Lapin, Esq
`LAPIN LAW FIRM
`295 Madison Ave., 12th Floor
`New York, NY 10017
`Moshe@LapinLegal.com
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`Page 6 of 6
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