ESTTA977214 Filing Date: 05/30/2019
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA977214 Filing date: 05/30/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91224191 Party Plaintiff Muwafak H. Kaki, Kaki Inc. Correspondence GEORGE R WENTZ JR Address THE DAVILLIER LAW GROUP LLC 935 GRAVIER STREET, SUITE 1702 NEW ORLEANS, LA 70112 UNITED STATES [email protected], [email protected], czim- [email protected] 504-582-6998 Submission Motion to Amend Pleading/Amended Pleading Filer's Name George Wentz, Jr. Filer's email [email protected], [email protected] Signature /George Wentz, Jr./ Date 05/30/2019 Attachments Kaki Motion to Amend Pleadings.pdf(331602 bytes ) Exhibits.pdf(6122661 bytes ) Second Amended Notice of Opposition to Mark - clean.pdf(165352 bytes ) Second Amended Notice of Opposition to Mark - tracked changes.pdf(168213 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD MUWAFAK H. KAKI and KAKI, INC., § § Opposers, § § v. § Opposition No. 91224191 WHOLE FOODS MARKET IP, L.P., § § Applicant. § OPPOSERS’ MOTION FOR LEAVE TO AMEND THE PLEADINGS Pursuant to TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (2018) (“TBMP”) § 507.02 and Federal Rule of Civil Procedure (“FRCP”) § 15(a)(2) Opposers seek leave of the Board to amend the pleadings to allege that “Ideal Market” is merely a descriptive mark under § 2(e)(1) of the Trademark Act, 15 U.S.C § 1052(e)(1) and therefore unregistrable. Opposers have recently discovered that Whole Foods/Amazon’s appropriation of the laudatory descriptor “Ideal,” as applied to the retail grocery industry, will foreclose not only Opposers use but that of a diverse number of groceries and supermarkets in Applicant’s applied for services: retail bakery shops, retail delicatessen services, and/or retail grocery stores.1 Opposers request that they be allowed to amend their pleadings in the interest of justice. Opposers have been unable to identify any prejudice to Applicant as the additional ground asserted applies to the capacity of the mark to be registered and is not directly dependent on the stage of the opposition proceeding. See §807 TBMP, 37 CFR § 2.136. Judicial efficiency also militates for allowing the requested amendment. The facts alleged and the foreign equivalent doctrine are likely to be disclosed at trial (Opposers’ target market is Spanish speaking See Ehibit G, uerals ‐. grocery shoppers and those seeking ethnic specialty delicatessens).2 If warranted by the trial proceedings, Opposers expect to petition the Board to remand the application to the Examining Attorney as allowed by §§ 515 and 805 TBMP, 37 CFR § 2.131. Opposers also urge the Examining Attorney to request that the Board suspend the proceedings and remand the application “for an ex parte determination of the question of registrability”. 37 CFR § 2.130. In the alternative, Opposers request that the current Opposition be suspended, and the application be remanded to the Examining Attorney for further examination to determine descriptiveness of the “Ideal Market” mark under § 2(e)(1) of the Trademark Act, 15 U.S.C § 1052(e)(1) and the foreign equivalent doctrine. This important issue will benefit from the expertise of the Examining Attorneys in the Trademark Office, as the cognate nature of “Ideal” is likely to have obscured the need for descriptiveness analysis under the foreign equivalent doctrine. This option may be preferable to the Board based on the Examining Attorneys’ familiarity with the trademark office’s trends and potential worldwide implications of foreclosing the “Ideal Market” mark.3 As Applied “Ideal Market” is Merely a Descriptive Mark The term “Ideal” as applied to retail bakery shops, retail delicatessen services, and/or retail grocery stores under Class 035 is merely a laudatory term describing the “Market” and rending the mark descriptive within the meaning of § 2(e)(1) as to the quality of the services, distribution channels, and/or goods applied for.4 The word MARKET is a generic term for the identified retail services and channel, that is a MARKET. The word IDEAL merely describes the high quality of the MARKET. IDEAL merely See Ehibit G, at uerals , , ad . 3 See Generally, Industria De Alimentos Zenú S.A.S. v. Latinfood U.S. Corp., No. 16-6576 (KM)(MAH), 2017 U.S. Dist. LEXIS 213338 (D.N.J. Dec. 29, 2017)(Showing example of the sort of international consequences and potential litigation from countries were ideal is a cognate word.); See also, the Madrid Protocol and Amazon.com, Inc. v. Commissioner, 148 T.C. 108, 200 n.49 (2017) (succinct explanation of international consequence of allowing registration of the mark) 4 Merriam Webster Dictionary Online: Market, Exhibit A-1. See also Exhibit G, at numeral 8. describes the character of the services and goods found in a MARKET. IDEAL market is a market that is perfect for the particular goods and services offered.5 Therefore, the wording IDEAL and MARKET merely describe the identified goods and retail services. In support of “Ideal” being a laudatory descriptive of the goods and services applied for the following competent evidence is brought to the attention of the Court: I. Ideal is a Descriptive Cognate Word The analysis of the Board in applying the doctrine of foreign equivalents is instructive.6 It helps the Board compare the meanings of foreign words by translating them into English and it applies when an ordinary American purchaser, which includes those proficient in the foreign language, would stop and translate the word.7 In the case of cognate words, no translation is required as the words carry the same meaning and descend from the same ancestral language, regardless of which population is targeted by the grocers.8 In the case of “IDEAL,” as used in “IDEAL MARKET,” it is a descriptive laudatory term across 5 See Generally, In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986); 1207.01(b)(vi) TBMP 6 See Generally, United States Soo Bahk Do Moo Duk Kwan Fed'n, Inc. v. Tang Soo Karate Sch., Inc., No. 3:12-CV- 00669, 2015 U.S. Dist. LEXIS 107955, at *61 (M.D. Pa. Aug. 17, 2015) (“Because of the diversity of the population of the United States, coupled with temporary visitors, all of whom are part of the United States marketplace, commerce in the United States utilizes innumerable foreign languages.”) 7 See Generally, In re Spirits Int'l, N.V., 563 F.3d 1347, 1351 (Fed. Cir. 2009); Taza Sys., LLC v. Taza 21 Co., LLC, No. 2:11cv073, 2013 U.S. Dist. LEXIS 130974, at *30-31 (W.D. Pa. Sep. 13, 2013) (“Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine whether they are generic or descriptive. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005).”); see also In re Highlights for Children, Inc., 118 USPQ2d 1268, 1271 (TTAB 2016) (noting that the doctrine of foreign equivalents applies even when the foreign wording in the mark will appear with its English equivalent, because ordinary purchasers will still recognize the terms as equivalents due to the provided translation )§§ 1210, 1207.01(b)(vi)(B), 1209.03(g) TBMP. 8 See Exhibit G, at numeral 12 and 13; Contrast with, In re Sarkli, Ltd., 721 F.2d 353, 354-55 (Fed. Cir. 1983) (foreign equivalents doctrine inapplicable where foreign word had multiple translations); See Generally, “INDULAC IDEAL PARA FREIR QUESO DEL PAIS WHITE CHEESE/LATIN” Serial number 85197045, Exhibit B-13 (“Applicant must disclaim the descriptive wording “IDEAL PARA FREIR and QUESO DEL PAIS WHITE CHEESE/LATIN STYLE” apart from the mark as shown because its translation merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods. See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a)… The English translation of non-English wording that is descriptive is an unregistrable component of the mark. TMEP §1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm’r Pats. cultures and linguistic traditions. It’s laudatory meaning will be immediately evident to a myriad of cultures seeking ethnic specialty fares. Ideal is a cognate word in many languages including the English and Spanish languages. It is derived from the Latin ideālis and has been adopted by a multitude of languages.9 In both English and Spanish it carries the same laudatory/descriptive meaning. As a result, when modifying market, it is a descriptive word available to grocers worldwide to describe the quality and completeness of their services and goods. This is true not only to more than 291 Million monolingual English speakers but to over 40 million Spanish, Portuguese, French, German, Romanian, Swedish, and Turkish speakers, plus bilingual and second generation customers in the American market.10 “Ideal” alone or when used as a noun may be considered an abstraction, but when added to a good, service, and/or channel of commerce it is a foundational cognate descriptive word in many languages. “Ideal” is the kind of descriptor that when modifying “market” means of excellent, highest, ultimate, best, preferred, perfect, super, and/or superb, et al, quality and/or offerings. “IDEAL” is too important a descriptive word in the retail marketing of grocery services, bakery goods, retail delicatessen11 (markets, supermarkets, etc.) to diverse nationalities and recent immigrants to be given to Whole Foods/Amazon and foreclosed to the specialty grocers now serving and who in the 1956).