Estta944875 01/02/2019 in the United States Patent And
Total Page：16
File Type：pdf, Size：1020Kb
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA944875 Filing date: 01/02/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92070059 Party Defendant Nema Food Distribution Inc. Correspondence NEMA FOOD DISTRIBUTION INC Address 18 COMMERCE RD SUITE D FAIRFIELD, NJ 07004 UNITED STATES no email provided no phone number provided Submission Motion to Dismiss - Rule 12(b) Filer's Name Bradley S. Rothschild, Esq. Filer's email [email protected] Signature /Bradley S. Rothschild/ Date 01/02/2019 Attachments NEMA MOTION TO DISMISS - FINAL.pdf(2338414 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Gaziantepli Habes Seyidoglu Baklavalari ) Uluslararasi Nakliyat ve San. Tic. Ltd. Sti. ) Cancellation No. 92070059 ) Petitioner, ) Registration No. 3,878,739 ) vs. ) ) Registration Date: November 23, 2010 NEMA FOOD DISTRIBUTION INC. ) ) Registrant/Respondent ) Trademark: SEYIDOGLU REGISTRANT/RESPONDENT NEMA FOOD DISTRIBUTION INC.’S MOTION TO DISMISS Introduction Registrant/Respondent NEMA FOOD DISTRIBUTION INC. ("Registrant" or "NEMA"), through its undersigned attorneys, respectfully submits this Motion to the Dismiss Petition to Cancel filed by Gaziantepli Habes Seyidoglu Baklavalari Uluslararasi Nakliyat ve San. Tic. Ltd. Sti. (“Petitioner”), pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. Petitioner’s Petition to Cancel simply fails to state a claim upon which relief can be granted. NEMA has been continuously and exclusively providing and selling food products in interstate commerce under the SEYIDOGLU mark (Reg. No. 3,878,739) (the “Registration”) since at least March 1, 2008, and continues to do so to this day. See, Certification of Galip Kiyakli at ¶3, attached hereto as Exhibit A. Based on NEMA’s continuous use in commerce, the Registration should be treated as incontestable. 1 Petitioner’s Petition to Cancel does not present a coherent legal or factual basis for the cancellation of NEMA’s Registration. Petitioner’s Petition to Cancel is merely intended to harass NEMA, and NEMA would be severely and irreparably damaged by the cancellation of Registration. See, Id. at ¶6. Therefore, NEMA respectfully requests that the Trademark Trial and Appeal Board dismiss Petitioner’s Petition to Cancel for failure to state a claim upon which relief can be granted. Relevant Facts On November 19, 2018 Petitioner filed a Petition to Cancel NEMA’s Registration, purportedly based on: (1) False suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; and, (2) deceptiveness. Beyond these bare allegations, Petitioner’s Petition to Cancel does not present a cogent or coherent argument, legal or factual basis for the cancellation of NEMA’s Registration See Exhibit B, Petition to Cancel (generally, as paragraphs have not been numbered by Petitioner). NEMA was founded in 2002, and is the proud provider of high quality food products in North America, including meats, pastry and desserts. See Exhibit A at ¶2. NEMA was granted the Registration on November 23, 2010, and NEMA’s Section 8 declaration was accepted on February 7, 2017. See, TARR Report, attached hereto as Exhibit C. NEMA has been continuously and exclusively providing and selling food products in interstate commerce under the SEYIDOGLU mark (Reg. No. 3,878,739) (the “Registration”) since at least March 1, 2008, and continues to do so to this day. See Exhibit A at ¶3. Based on NEMA’s continuous use in commerce, the Registration should be treated as incontestable. 2 NEMA’s goods bearing the SEYIDOGLU mark are of the highest quality, and in no way create a false suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. Further, NEMA’s goods bearing the SEYIDOGLU mark do not deceive consumers in any manner. See Id. at ¶5. In response to the Petition to Cancel, NEMA has filed the instant Motion to Dismiss in lieu of an Answer. Argument PETITIONER HAS FAILED TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED In a cancellation proceeding, the Federal Rules of Civil Procedure apply. See 37 C.F.R. § 2.116(a). A motion to dismiss under Rule 12(b)(6) tests the legal sufficiency of the claim stated in the complaint. Ileto v. Glock Inc., 349 F.3d 1191, 1199–1200 (9th Cir.2003); see also Fed.R.Civ.P. 12(b)(6). “Dismissal can be based on the lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal theory.” Hana Financial, Inc. v. Hana Bank, 500 F. Supp. 2d 1228, 1232 (C.D. Cal. 2007) (quoting Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th Cir.1988)). Furthermore, the Board must dismiss a petition to cancel under Rule 12(b)(6) if it fails to state a claim that is “plausible on its face.” T.B.M.P. § 503.02 citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); see also Advanced Cardiovascular Sys. Inc. v. SciMed Life Sys. Inc., 26 U.S.P.Q.2d 1038, 1041 (Fed. Cir. 1993). The primary function of Fed. R. Civ. P. 12(b)(6) “is to allow the court to eliminate actions that are fatally flawed in their legal premise and destined to fail, and thus to spare litigants the burdens of unnecessary pretrial and trial activity.” Advanced Cardiovascular Sys., 26 U.S.P.Q.2d at 1041. When considering a motion to dismiss, the Board must 3 accept the factual allegations pleaded in the complaint as true, but “conclusory allegations of law and unwarranted inferences of fact do not suffice to support a claim. Bradley v. Chiron Corp., 45 U.S.P.Q.2d 1819, 1822 (Fed. Cir. 1998). Moreover, to withstand a motion to dismiss for failure to state a claim upon which relief can be granted, a plaintiff needs to allege sufficient factual content that, if proved, would allow the Board to conclude, or to draw a reasonable inference, that (1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists for opposing or cancelling the mark. Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780 (TTAB 2012), citing Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); and TBMP Section 503.02 (3d ed. rev. 2012). Specifically, a complaint “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949- 50 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Here, Petitioner filed a Petition to Cancel NEMA’s Registration, purportedly based on: (1) false suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; and, (2) deceptiveness. Beyond these bare allegations, Petitioner’s Petition to Cancel does not present a coherent legal or factual basis for the cancellation of NEMA’s Registration. See Exhibit B, Petition to Cancel (generally, as paragraphs have not been numbered by Petitioner). No allegations presented by the Petitioner, if true, would lead to a conclusion that the Registration should be cancelled. Id. Petitioner’s Petition to Cancel is merely intended to harass NEMA, and NEMA would be severely and irreparably damaged by the cancellation of Registration. See, Exhibit A at ¶6. 4 NEMA was granted the Registration on November 23, 2010, and NEMA’s Section 8 declaration was accepted on February 7, 2017. See, generally, Exhibit C. NEMA has been continuously and exclusively providing and selling food products in interstate commerce under the SEYIDOGLU mark (Reg. No. 3,878,739) (the “Registration”) since at least March 1, 2008, and continues to do so to this day. See, Exhibit A at ¶3. Based on NEMA’s continuous use in commerce, the Registration should be treated as incontestable. NEMA is well known amongst consumers as the source of SEYIDOGLU goods in the United States of America. See, Id. at ¶4. NEMA’s goods bearing the SEYIDOGLU mark are of the highest quality, and in no way create a false suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. Further, NEMA’s goods bearing the SEYIDOGLU mark do not deceive consumers in any manner. See, Id. at ¶5. Conclusion Based on the foregoing, Respondent/Registrant NEMA respectfully requests that Petitioner’s Petition to Cancel be dismissed for failure to state a claim upon which relief can be granted. Petitioner’s Petition to Cancel is merely intended to harass NEMA, and NEMA would be severely and irreparably damaged by the cancellation of Registration. 5 Dated: January 2, 2019 Respectfully submitted, The Law Offices of Bradley S. Rothschild, LLC, Attorneys for Registrant/Respondent NEMA FOOD DISTRIBUTION INC. By: ___/s /Bradley S. Rothschild/___ Bradley S. Rothschild, Esq. The Law Offices of Bradley S. Rothschild, LLC. The Nyack Express Building 38 High Avenue Nyack, NY 10960 (845) 287-0011 Email: [email protected] 6 CERTIFICATE OF SERVICE Pursuant to Trademark Rule 2.119, I hereby certify that on January 2, 2019 a true and complete copy of the foregoing MOTION TO DISMISS has been served on Petitioner by delivering a true and correct copy thereof to Petitioner by electronic mail and depositing same with the United States Postal Service, addressed to: Gaziantepli Habes Seyidoglu Baklavalari Uluslararasi Nakliyat ve San. Tic. Ltd. Sti. ISMET A DINCER 22 JACKSON RD BELMONT, MA 02478-3550 By Email to: [email protected], [email protected], [email protected] Dated: January 2, 2019 By: ___/s /Bradley S.