Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA986068 Filing date: 07/08/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92070514 Party Defendant JHO Intellectual Property Holdings, LLC Correspondence MARC J KESTEN Address 1600 NORTH PARK DRIVE WESTON, FL 33326 UNITED STATES [email protected], [email protected], [email protected] 954-641-0570 EXT 293 Submission Motion to Dismiss - Rule 12(b) Filer's Name Erica W. Stump Filer's email [email protected], [email protected], [email protected] Signature /ews/ Date 07/08/2019 Attachments JHO Motion to Dismiss SUPER CREATINE 7-8-19.pdf(3116559 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD MONSTER ENERGY COMPANY, Petitioner, Cancellation No.: 92070514 v. Registration No.: 5,252,855 JHO INTELLECTUAL PROPERTY HOLDINGS, LLC., Trademark: SUPER CREATINE Registrant. Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 REGISTRANT’S CORRECTED MOTION TO DISMISS UNDER RULE 12(b)(1) and 12(b)(6) AND MEMORANDUM IN SUPPORT THEREOF Registrant, JHO INTELLECTUAL PROPERTY HOLDINGS, LLC (“Registrant” or “JHO”), moves the Trademark Trial and Appeal Board (the “Board” or “TTAB”) for an order dismissing the Petition for Cancellation (“Petition”) filed by Monster Energy Company (“Monster”) pursuant to Rule 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure on the following grounds: (1) Monster lacks standing to make this Petition and (2) all claims against Registrant fail to plausibly allege a cause of action upon which relief may be granted. In support of its motion, Registrant submits the following: BACKGROUND On February 5, 2019, Monster filed a Petition for Cancellation against Registrant JHO seeking to cancel JHO’s U.S. trademark registration for the mark, SUPER CREATINE, U.S. Reg. No. 5,252,855 for “Dietary and nutritional supplements containing creatine; Dietary supplements 1 containing creatine; Nutritional supplements containing creatine; Nutritional drinks containing creatine” (hereinafter “Subject Registration”). As grounds for cancellation, Monster alleges that: (1) the Subject Registration is generic; (2) JHO and its affiliates knowingly used the federal registration symbol before the mark was registered; (3) JHO and its affiliate’s use of the mark in the BANG products is deceptive; (4) JHO did not have sufficient legal and exclusive use of the mark at the time it filed its application; and (5) JHO and its affiliates knowingly made fraudulent representations to the USPTO to obtain the Subject Registration. While denying the material allegations made by Monster as being baseless, without any merit, and most of all, fabricated and misleading, JHO hereby moves to dismiss the Petition on the grounds that Monster has no standing to bring this cancellation proceeding1. LEGAL STANDARD FOR MOTION TO DISMISS A motion to dismiss under Rule 12(b)(6) is a test of the sufficiency of the complaint. Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1697 (TTAB 2014). For purposes of determining a motion to dismiss, all of the plaintiff’s well-pleaded allegations must be accepted as true, and the complaint must be construed in the light most favorable to the plaintiff. See Advanced Cardiovascular Systems Inc., 26 USPQ2d at 1041; Petroleos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010). Furthermore, “[u]nder the simplified notice pleading of the Federal Rules of Civil Procedure, the allegations of a complaint should be construed liberally so as to do substantial justice.” Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). 1 This is not Monster’s first trademark action before the Board. The Board’s website lists well over 200 actions in which Monster is involved – all since 2018. 2 To survive a motion to dismiss, a plaintiff need only 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 denying the registration sought or for cancelling the involved registration. See Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1782 (TTAB 2012) (citing Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998)); see also Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982). Further, 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, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In particular, the plaintiff must allege well-pleaded factual matter and more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements,” to state a claim plausible on its face. Id. (citing Twombly, 550 U.S. at 555). A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw a reasonable inference that the defendant is liable for the misconduct alleged. See Twombly, 550 U.S. at 556-57. However, the plausibility standard does not require that a plaintiff set forth detailed factual allegations. Id. Rather, a plaintiff need only allege “enough factual matter … to suggest that [a claim is plausible]” and “raise a right to relief above the speculative level.” Totes-Isotoner Corp. v. U.S., 594 F.3d 1346, 1354 (Fed. Cir. 2010). MONSTER LACKS STANDING Standing is a threshold issue that must be proved in every inter partes case. Lipton, 213 USPQ at 189. In order to meet the standing requirement, a plaintiff need only show that it has a real interest; i.e., a personal stake, in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and Jewelers Vigilance Committee, Inc. v. 3 Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed. Cir. 1987). The purpose of the standing requirement, which is directed solely to the interest of the plaintiff, is to prevent litigation when there is no real controversy between the parties. In the case of a cancellation proceeding, the standing requirement has its basis in Section 14 of the Trademark Act, which provides, in relevant part, that “[a]ny person who believes that he is or will be damaged … by the registration of a mark upon the principal register” may file upon payment of the prescribed fee, a petition to cancel stating the grounds therefor. 15 U.S.C. § 1064. The U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for determining standing, namely that a plaintiff must demonstrate that he possesses a “real interest” in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief of damage.” See Ritchie v. Simpson, 50 USPQ2d at 1025-26. A “real interest” is a “direct and personal stake” in the outcome of the proceeding. Id. at 1026. “The facts regarding standing … are part of a petitioner’s case and must be affirmatively proved. Accordingly, [petitioner] is not entitled to standing solely because of the allegations in its petition.” Lipton, 213 USPQ at 189. See also Ritchie, 50 USPQ2d at 1027. In its Petition, the extent of Monster’s damages allegations is “Petitioner Monster Energy (“Monster”) is being damaged and will continued to be damaged by the continued registration in the United States Patent and Trademark Office (“USPTO”) of the mark “SUPER CREATINE” . .” (See the first paragraph of the first page of the Petition) and “For the reasons expressed herein, Monster is being damaged, and will continue to be damaged, by the Subject Registration.” (See ¶ 12 of the Petition). However, the Petition does not contain any other allegations pertaining to whether Monster has a personal stake in the outcome or how it will be damaged by the continued 4 registration of the Subject Registration2. For example, the Petition fails to allege that Monster has a pending U.S. trademark application that is being refused registration under Section 2(d) as a result of the Subject Registration. Tri-Star Marketing, LLC v. Nino Franco, Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007). The Petition also fails to allege whether Monster is using or intends to SUPER CREATINE (Creatyl-L-Leucine) or any other creatine ingredient in its energy drink products. The are no such allegations because Monster has never used, nor does it intend to use any form of creatine in any of its so-called “energy drink” products. See Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009). Moreover, Monster does not allege in its Petition any interest in the mark SUPER CREATINE, now or in the future. In fact, the chemical composition of SUPER CREATINE is presently covered by U.S. Patent No. 8,445,466. Thus, even if Monster wanted to use SUPER CREATINE, it couldn’t as it would violate U.S. Patent NO. 8,445,466 and JHO has no intention of licensing its U.S. patent covering SUPER CREATINE or its registered trademark to Monster. Further, Monster fails to allege in the Petition that it owns common law rights in the mark SUPER CREATINE. Benjamin J. Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009). Monster merely alleges that VPX’s use of the “SUPER CREATINE” mark with the federal registration symbol has “directly damaged, and will continue to damage Monster,” without any factual basis.