Flash & Partners S.P.A.v.I. E. Mfg. LLC

Trademark Trial and Appeal Board

Jul 14, 2010

No. 91191988 (T.T.A.B. Jul. 14, 2010)

jk Mailed: July 14, 2010

Opposition No. 91191988

Flash & Partners S.P.A.

v.

I. E. Manufacturing LLC

Before Quinn, Kuhlke and Mermelstein,
Administrative Trademark Judges.

By the Board:
I. E. Manufacturing LLC (“applicant”) seeks to register
the mark shown below for “eyewear; sunglasses; goggles for
sports; eyewear cases, namely, cases for sports eyewear” in
International Class 9, and “shirts, T-shirts, sweatshirts,
hats” in International Class 25.1

Flash & Partners S.P.A. (“opposer”) opposes registration on the
grounds of priority and likelihood of confusion, and pleads
ownership of Registration Nos. 3261431, 3395139 and 3427232.
Applicant denied the salient allegations of the opposition, and

1 Application Serial No. 77547346, filed August 14, 2008, based
on an intent to use the mark in commerce under Trademark Act
§1(b).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
This Decision is a
Precedent of the TTAB
Opposition No. 91191988

2
filed a counterclaim for cancellation of pleaded Registration
No. 3261431,2 shown below.

In lieu of filing an answer, opposer moved to dismiss the
counterclaim pursuant to Fed. R. Civ. P. 12(b)(6). The motion
has been fully briefed.
As a preliminary matter, with its response to opposer’s
motion to dismiss, applicant included a cross-motion for leave
to amend its counterclaim, and an amended counterclaim, which
inserts some clarifications and additions to its allegations.
Applicant’s cross-motion for leave to amend its counterclaim is
granted. Fed. R. Civ. P. 15(a)(1)(B). In view thereof, we
have considered opposer’s motion to dismiss based on the
amended pleading. However, the determination of the viability

2 Registered July 10, 2007, from application Serial No. 76495676,
filed February 24, 2003, based on the allegations of a bona fide
intent to use the mark in commerce under Trademark Act §1(b).
Opposer is a successor in interest to the original applicant.
Unless otherwise noted, any reference herein to opposer means
opposer or any predecessor in interest.
Opposition No. 91191988

3
of the counterclaim is the same with respect to both the
original and amended counterclaim.3
To withstand the motion to dismiss, applicant must
demonstrate (1) its standing to challenge the continued
presence on the register of the subject registration, and (2) a
valid ground why the registrant is not entitled under law to
maintain the registration. See Order of Sons of Italy in Am.
v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB
1995). A valid ground for denying registration that must be
alleged, and ultimately proved, must be a statutory ground
which negates the right to the subject registration. See
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 190 (CCPA 1982). Dismissal under Fed. R. Civ. P.
12(b)(6) is appropriate only if “it appears to a certainty that
[applicant] is entitled to no relief under any state of facts
which could be proved in support of the claim.” Stanspec Co.
v. Am. Chain & Cable Co., Inc., 531 F.2d 563, 189 USPQ 420, 422
(CCPA 1976) (emphasis in original).
First, applicant seeks cancellation of Registration No.
3261431, setting forth the following allegations:
20. As originally filed, unsupported by an intent-to-use
declaration, the drawing page of the ‘676 Application
showed the following drawing:

3 We note opposer’s withdrawal of its motion for an extension of
time to file supplemental papers in support of its opposition to
applicant’s cross-motion to amend the counterclaim.
Opposition No. 91191988

4
21. On March 21, 2003, after the filing of the ‘676
Application, and without a supporting declaration, the
drawing page thereof was amended so that the drawing of
the mark appears as follows:

A Declaration supporting the ‘676 Application was not
filed until February 5, 2004.

30. The ‘676 Application (which issued as the ‘431
Registration) was incomplete, because a Declaration was
never submitted to the USPTO supporting the Application
as filed, rendering the ‘676 Application and resulting
‘431 Registration void ab initio.

31. The mark shown in the amended drawing page of the ‘676
Application is materially different from the mark shown
in the original drawing page of the ‘676 Application.

32. Rosaline [Developments Limited, the original
applicant,] did not have on the application filing date
a bona fide intent to use the mark of the ‘676
Application as originally filed, rendering the ‘676
Application and resulting ‘431 Registration void ab
initio.

An application for registration of a trademark must be
supported by “a verified statement, in such form as may be
prescribed by the Director.” Trademark Act §1(b)(1). Under
37 C.F.R. §2.21, the USPTO will grant a filing date to an
application filed under Trademark Act §1 or §44, even if the
application is unsigned. See also TMEP §202 (6th ed. rev.
2009). In such applications, a signed verification is not
required for receipt of an application filing date under 37
Opposition No. 91191988

5
C.F.R. §2.21(a), and if the initial application does not
include a proper verified statement, the examining attorney
must require the applicant to submit one that relates back
to the original filing date. See 37 C.F.R. §2.33; TMEP §804
(6th ed. rev. 2009).
To the extent that applicant seeks to assert a
counterclaim based on the allegations that the underlying
application was incomplete, and thus void ab initio,
opposer’s submission of an unsigned application does not
form a statutory ground for cancellation. Moreover, opposer
complied with the applicable statutory requirement by
providing, in response to the first Office action, a
verified statement that it had a bona fide intent to use the
mark in commerce as of the application filing date, which
statement was noted and accepted in the examining attorney’s
second Office action. The determination of opposer’s
compliance with the signature requirement was an ex parte
examination issue addressed during prosecution. This issue,
as with similar ex parte examination matters, does not form
a basis for cancellation. Cf. Saint-Gobain Abrasives Inc.
v. Unova Indus. Automation Syst. Inc., 66 USPQ2d 1355, 1359
(TTAB 2003) (fairness dictates that the ex parte question of
the sufficiency of the description of the mark not be a
ground for opposition or cancellation); Phonak Holding AG v.
ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (failure to
enforce requirement of filing of foreign registration is
examination error and not a ground for counterclaim for
Opposition No. 91191988

6
cancellation); Marshall Field & Co. v. Mrs. Fields Cookies,
11 USPQ2d 1355, 1358 (TTAB 1989) (the insufficiency of the
specimens, per se, does not constitute grounds for
cancellation); Century 21 Real Estate Corp. v. Century Life
of Am., 10 USPQ2d 2034, 2035 (TTAB 1989) (the adequacy of
specimens is solely a matter of ex parte examination).
To the extent that applicant seeks to assert a
counterclaim based on the allegations that opposer’s
predecessor did not have a bona fide intent to use the mark
as originally filed, or as amended, because such predecessor
submitted a pre-examination amendment to the drawing between
the filing of the original application and the filing of its
declaration attesting to its bona fide intent to use the
mark as of the application filing date, applicant’s claim
lacks a statutory basis. The submission of an amended
drawing during examination is an amendment that need not be
verified by a declaration under 37 C.F.R. §2.20, or
otherwise, and such a submission does not, in itself, raise
the issue of opposer’s previous or continued bona fide
intent to use the mark. Similarly, to the extent that
applicant alleges that opposer lacked a bona fide intent to
use either the original or the amended mark, based on
applicant’s assertion that the amended mark was a material
alteration, such an allegation does not form a statutory
ground for cancellation. An examining attorney’s acceptance
of an amended drawing is an ex parte decision which
necessarily involves a determination of whether the modified
Opposition No. 91191988

7
mark contains what is the essence of the original mark, and
whether it creates essentially the same commercial
impression.4 See 37 C.F.R. §2.72; TMEP §807.14 (6th ed. rev.
2009). In summary, opposer’s filing of an amended drawing
did not invalidate or otherwise affect its statutory
allegation of a bona fide intent to use either the original
or the amended mark as of the application filing date.
Furthermore, had the examining attorney refused the
amendment as a material alteration under 37 C.F.R. §2.72,
opposer would have been entitled to maintain its filing date
with respect to the original drawing, or appeal (or petition
for review) the examining attorney’s refusal to accept the
amendment. At this point, cancellation of the resulting
registration which is based on a finding of material
alteration would, in effect, punish opposer for an alleged
error5 on the part of the examining attorney, without
allowing opposer the remedies it would have had if the issue
had been raised during examination. See Century 21 Real
Estate, 10 USPQ2d at 2035.
We recognize that prosecution of a trademark
application involves numerous regulatory requirements, and

4 The facts in this case are distinct from those in Century 21
Real Estate Corp., 10 USPQ2d at 2035, where the Board held that,
while an examining attorney’s ex parte determination of the
sufficiency of the specimens cannot form the basis of a claim,
“(T)he failure to make service mark use (as opposed to a failure
of the specimens to show such use) is a proper ground for
opposition.” In the case before us, the counterclaim allegations
center on the examining attorney’s ex parte determination of the
acceptability of an amended drawing, and this drawing issue does
not also form an underlying basis for a separate statutory ground
that would have precluded registrability.
Opposition No. 91191988

8
that whether an applicant has satisfied them often entails
some degree of subjective judgment on the part of the
examining attorney. Considerations of due process, as well
as fairness to parties against whom allegations of
examination error are asserted, dictate that such matters be
solely a matter for ex parte determination, and not grounds
for opposition or cancellation. Saint-Gobain Abrasives, 66
USPQ2d at 1359 (“It would be manifestly unfair to penalize
defendant for noncompliance with a requirement that was
never made by the Examining Attorney.”), citing Marshall
Field & Co., 11 USPQ2d 1355.
Accordingly, applicant cannot predicate its asserted
counterclaim on opposer’s failure to submit a signed
declaration with its application on the filing date, the filing
thereafter of a substitute declaration, or the filing of its
amendment to the original drawing. Because Paragraphs 20, 21,
30 and 31 of the amended counterclaim fail to set forth facts
which, if proved, would establish a valid ground for
cancellation of opposer’s Registration No. 3261431, opposer’s
motion to dismiss the counterclaim is granted with respect to
the allegations therein. Paragraphs 20, 21, 30 and 31 of the
amended counterclaim for cancellation are stricken.6

5 To be clear, we do not hold (or imply) that the examining
attorney’s action here was indeed error.
6 Our finding, that the allegations in the amended counterclaim
do not set forth a basis for a claim that opposer lacked a bona
fide intent to use the mark in commerce, does not preclude
applicant from amending its counterclaim, as appropriate and if
warranted by the facts, to include allegations that sufficiently
set forth a claim that opposer lacked a bona fide intent to use
its mark, separate and apart from the declaration and drawing
Opposition No. 91191988

9
Second, applicant seeks cancellation of Registration No.
3261431 on the ground that the underlying Trademark Act §1(b)
application was allegedly twice invalidly assigned under
Trademark Act §10, prior to the filing of the statement of use
under Trademark Act §1051(d). Specifically, applicant alleges
that prior to the filing of its statement of use, opposer
assigned the mark and application (nunc pro tunc) from the
original applicant Rosaline to BBD Design and Patent Management
BV (“BBD”), and then from BBD to Flash & Partners (opposer).
Applicant alleges that these transfers were in violation of §10
because neither Rosaline nor BBD were engaged in or transferred
an ongoing and existing business under the mark on the
execution date or the nunc pro tunc effective date of the
respective assignments.
Under Trademark Act §10, an application filed under §1(b)
may not be assigned before filing an allegation of use (i.e.,
either an amendment to allege use or statement of use), except
to the successor to the applicant’s business, or portion of the
business to which the mark pertains, if that business is
ongoing and existing. 15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16;
Trademark Manual of Examining Procedure (TMEP) §501.01(a) (6th
ed. 2009). The assignment of a §1(b) application to an entity
that is not the successor to the applicant’s business, before
filing an allegation of use, renders the application and any
resulting registration void. See The Clorox Co. v. Chem. Bank,
40 USPQ2d 1098 (TTAB 1996).

issues. See, e.g., Fiat Group Autos. S.p.A. v. ISM Inc., 94
Opposition No. 91191988

10
Paragraphs 22 through 29, and 33 through 40 of applicant’s
amended counterclaim include allegations which sufficiently set
forth a claim that the assignments in question violated the
provisions of Trademark Act §10, and state a valid ground for
cancellation of opposer’s Registration No. 3261431. In view
thereof, opposer’s motion to dismiss the counterclaim is denied
with respect to the allegations therein.
Schedule
Opposer’s time to answer applicant’s amended counterclaim,
and subsequent conferencing, discovery and trial dates, are
reset as follows:
Answer to Counterclaim Due August 27, 2010
Deadline for Discovery Conference September 26, 2010
Discovery Opens September 26, 2010
Initial Disclosures Due October 26, 2010
Expert Disclosures Due February 23, 2011
Discovery Closes March 25, 2011
Plaintiff's Pretrial Disclosures May 9, 2011
30-day testimony period for
plaintiff's testimony to close June 23, 2011
Defendant/Counterclaim Plaintiff's
Pretrial Disclosures July 8, 2011
30-day testimony period for defendant
and plaintiff in the counterclaim to
close August 22, 2011
Counterclaim Defendant's and
Plaintiff's Rebuttal Disclosures Due September 6, 2011
30-day testimony period for defendant
in the counterclaim and rebuttal
testimony for plaintiff to close October 21, 2011
Counterclaim Plaintiff's Rebuttal
Disclosures Due November 5, 2011

USPQ2d 1111, 1115-16 (TTAB 2010).
Opposition No. 91191988

11
15-day rebuttal period for plaintiff
in the counterclaim to close December 5, 2011

Brief for plaintiff due February 3, 2012
Brief for defendant and plaintiff in
the counterclaim due March 4, 2012
Brief for defendant in the
counterclaim and reply brief, if any,
for plaintiff due April 3, 2012
Reply brief, if any, for plaintiff in
the counterclaim due April 18, 2012

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark Rules
2.128(a) and (b). An oral hearing will be set only upon
request filed as provided by Trademark Rule 2.l29.