Double Coin Holdings, Ltd.v.Tru Development

Trademark Trial and Appeal Board

Dec 11, 2019

92063808re (T.T.A.B. Dec. 11, 2019)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: December 11, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Double Coin Holdings Ltd. v. Tru Development _____ Cancellation No. 92063808 _____ Joseph E. Mueth of Joseph E. Mueth Law Corporation for Double Coin Holdings Ltd. Rishi Nair and Kevin J. Keener of Keener & Associates, P.C. for Tru Development. _____ Before Peter, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, and Larkin and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: Respondent/Counterclaimant, Tru Development (“Tru”), requests reconsideration of, and relief from, the judgment (“Request for Reconsideration”)1 resulting from our 1 75 TTABVUE. References to the pleadings, the evidence of record and the parties’ briefs refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the paragraph or page references, as applicable. Cancellation No. 92063808 2 decision of October 1, 2019 (the “Board’s Decision”),2 granting the petition of Petitioner/Counterclaim-Respondent, Double Coin Holdings Ltd. (“Double Coin”), to cancel Tru’s registration on the Principal Register for the mark ROAD WARRIOR, in standard characters, for “tires” in International Class 12,3 and denying Tru’s counterclaim to cancel Double Coin’s registration for the mark WARRIOR (Stylized) for “casings for pneumatic tires; inner tubes for pneumatic tires; inner tubes for bicycles; tire flaps; vehicle wheel tires; automobile tires; tires for vehicle wheels; cycle tires; solid tires for vehicle wheels” in International Class 12.4 Double Coin filed a response to Tru’s Request for Reconsideration,5 and Tru filed a reply.6 I. The Board’s Decision In the Board’s Decision, we granted the petition to cancel Tru’s ROAD WARRIOR registration based upon Double Coin’s priority and likelihood of confusion with Double Coin’s registered mark WARRIOR (Stylized) in the following format: 2 74 TTABVUE. 3 U.S. Registration No. 4805521, issued on September 1, 2015, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). 4 U.S. Registration No. 3335545, issued on November 13, 2007, under Trademark Act Section 66(a), 15 U.S.C. § 1141f(a). 5 76 TTABVUE. 6 77 TTABVUE Cancellation No. 92063808 3 and based upon Double Coin’s priority and likelihood of confusion with its common law WARRIOR mark for tires.7 We further rejected Tru’s affirmative defense of laches,8 and denied Tru’s cancellation counterclaim asserted against Double Coin’s WARRIOR (Stylized) registration on the bases of express declaration of abandonment and through cessation of use of the mark with an intent not to resume such use.9 Finally, we denied Tru’s cancellation counterclaim against Double Coin’s WARRIOR (Stylized) registration on the grounds, asserted for the first time during final briefing, that, upon re-introduction of WARRIOR tires into the United States (new version shown immediately below right), Double Coin so materially altered the commercial impression of the WARRIOR (Stylized) mark as registered (shown immediately below, left) as to constitute an abandonment of that mark:10 Mark as shown in Reg. No. 3,335,545 See Double Coin’s Notice of Reliance, 41 TTABVUE, Exhs. C, D and N We denied Tru’s cancellation counterclaim asserted on the basis of non-use by material alteration because Tru never raised these allegations in its counterclaim,11 7 74 TTABVUE 9-23, 43. 8 Id. at 23-27. 9 Id. at 27-40, 43. 10 Tru’s Brief, 65 TTABVUE 14-16. 11 See Tru’s First Amended Answer, Affirmative Defenses and Counterclaim, 22 TTABVUE 4-5. Cancellation No. 92063808 4 nor in any amendment thereto during the course of the proceedings. Having not been pled, Tru could not move forward at trial on this counterclaim. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103 n.3 (TTAB 2007) (raising an unpleaded claim for the first time in a party’s brief on the case is manifestly untimely, and thus will not be considered). We further found that Tru’s non-use by material alteration claim was not tried by express or implied consent of the parties. Fed. R. Civ. P. 15(b); see, e.g., Hornby v. TJX Cos. Inc., 87 USPQ2d 1411, 1415 (TTAB 2008).12 II. The Parties’ Arguments on Tru’s Request for Reconsideration In its Request for Reconsideration, Tru asserts: (i) evidence of changes in Double Coin’s registered mark came to light only during trial; (ii) Double Coin was not prejudiced in defending itself against its own alleged material alteration of its registered mark; (iii) there was no undue delay on Tru’s part, and no prejudice to Double Coin, because Tru’s counterclaim sufficiently put Double Coin on notice of the non-use by material alteration claim; (iv) Tru’s “amendment” to its counterclaim was not futile; and (v) public policy favors cancelling registrations for unused marks.13 In response to Tru’s Request for Reconsideration, Double Coin contends: (i) Tru’s “defense” of material alteration was waived;14 (ii) as a result of its own Google® 12 74 TTABVUE 41-43. 13 75 TTABVUE 3-8. 14 Double Coin’s references to Tru’s assertion of non-use by material alteration as a “defense” is incorrect. An “affirmative defense” is “new matter which, assuming the complaint to be Cancellation No. 92063808 5 images search conducted early in the proceedings, Tru was aware of Double Coin’s “modernization” of its mark long prior to trial; (iii) Tru did not timely raise its claim of material alteration; and (iv) Tru’s request is futile.15 In reply, Tru argues: (i) its Google® images search did not provide Tru with any notice that it had a claim for abandonment by material alteration; (ii) Double Coin concealed evidence of the shift to the new stylization of its mark by failing to supplement its discovery responses; and (iii) Double Coin’s evidence of its “modernized” mark was only tendered during trial (and, in this third argument, repeating that from Tru’s original Request for Reconsideration).16 III. Applicable Law A request for rehearing, reconsideration, or modification of a Board decision issued after final hearing is governed by Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c): true, constitutes a defense to it,” while a “counterclaim” is “[a] claim presented by a defendant in opposition to or deduction from the claim of the plaintiff. … If established, such will defeat or diminish the plaintiff’s claim.” BLACK’S LAW DICTIONARY, 55, 315 (5th ed. 1979). See also Fed. R. Civ. P. 8(c) and 13(c). While the difference between the two may appear subtle, in practice before the Board the difference is significant. This is because “[a]n attack on the validity of a registration pleaded by a petitioner for cancellation will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.” Trademark Rule 2.114(b)(3)(ii), 37 C.F.R. § 2.114(b)(3)(ii); Gillette Co. v. “42” Prods. Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104 (CCPA 1968) (“[I]n the absence of a counterclaim for cancellation, it is not open to [the defendant] … to prove abandonment of a registered mark.…”) 15 76 TTABVUE 3-6. 16 77 TTABVUE 2-4. Cancellation No. 92063808 6 Generally, the premise underlying a request for rehearing, reconsideration, or modification under [Trademark Rule 2.129(c)] … is that, based on the evidence of record and the prevailing authorities, the Board erred in reaching the decision it issued. The request may not be used to introduce additional evidence, nor should it be devoted simply to a reargument of the points presented in the requesting party’s brief on the case. Rather, the request normally should be limited to a demonstration that, based on the evidence properly of record and the applicable law, the Board’s ruling is in error and requires appropriate change. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 543 (June 2019). Fed. R. Civ. P. 60(b), made applicable to Board proceedings by Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a), provides: (b) GROUNDS FOR RELIEF FROM A FINAL JUDGMENT, ORDER, OR PROCEEDING. On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for the following reasons: (1) mistake, inadvertence, surprise, or excusable neglect; (2) newly discovered evidence that, with reasonable diligence, could not have been discovered in time to move for a new trial under Rule 59(b); (3) fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party; (4) the judgment is void; (5) the judgment has been satisfied, released, or discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it prospectively is no longer equitable; or (6) any other reason that justifies relief. Taken together, and construed in the most liberal and generous way possible, Tru’s original Request for Reconsideration and reply appear to rely on Fed. R. Civ. P. Cancellation No. 92063808 7 60(b)(2), (3) and (6) as the reasons why it should be relieved from the Board’s judgment. With respect to subsection (b)(2) of Rule 60, “[c]ases construing ‘newly discovered evidence’ uniformly hold that the new evidence must be of facts in existence at the time of the trial, but only discovered later, to entitle a party to relief.” Pramil S.R.L. v. Farah, 93 USPQ2d 1093, 1095 (TTAB 2009). A motion under Fed. R. Civ. P. 60(b)(2) “still may be denied if the evidence is merely cumulative or not of a type that would change the result.” Id. at 1096. “[T]he party seeking relief under Rule 60(b)(3) must prove by clear and convincing evidence ‘(1) that the adverse party engaged in fraud or other misconduct, and (2) that this misconduct prevented the moving party from fully and fairly presenting his case.’” CEATS, Inc. v. Cont’l Airlines, Inc., 755 F.3d 1356, 111 USPQ2d 1479, 1482 (Fed. Cir. 2014) (applying 5th Circuit law), cert. denied, 135 S. Ct. 1549 (2015). Where “there is nothing in the record that shows [the moving party] … was [denied] a full and fair opportunity to present its case[,]” the motion justifiably may be denied. Id. Relief from judgment under Fed. R. Civ. P. 60(b)(6) is an extraordinary remedy, to be granted in the Board’s discretion only in exceptional circumstances. See Liljeberg v. Health Servs. Acquisition Corp., 486 U.S. 847, 864, 108 S. Ct. 2194, 2204 (1988); Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1615 (TTAB 1991). Considerations as to whether a judgment should be vacated under Rule 60(b)(6) include: (1) the risk of injustice to the parties in the particular case, (2) the risk that the denial of relief Cancellation No. 92063808 8 will produce injustice in other cases, and (3) the risk of undermining the public’s confidence in the judicial process. Liljeberg, 486 U.S. at 864, 108 S. Ct. at 2205. Additionally, relief under Rule 60(b)(6) is mutually exclusive of the other subsections of Rule 60(b), such that a movant seeking relief from judgment based the grounds for relief enumerated in subsections (b)(1) through (b)(5) cannot also obtain relief under subsection (b)(6). Liljeberg, 486 U.S. at 863, 108 S. Ct. at 2204. IV. Tru’s Claim that the Modification of Double Coin’s WARRIOR (Stylized) Mark was Newly Discovered Evidence To begin, as pointed out by Double Coin in its response,17 Tru had in its possession, and produced to Double Coin in discovery, the results of its own Google® images search dated October 27, 2016, months before trial and while the period for discovery was still open, showing the “modernized” version of Double Coin’s WARRIOR (Stylized) mark on the sidewall of one of its tires.18 Tru is hard-pressed to argue that this is “newly discovered” evidence when Tru already had the evidence in its possession months before trial. Moreover, Tru concedes that “images of [Double Coin’s] … unchanged website,” showing the “modernized” version of the WARRIOR (Stylized) mark, also were in Tru’s possession during trial;19 and Tru makes no claim that it only discovered these 17 76 TTABVUE 4. 18 Double Coin’s Notice of Reliance, 41 TTABVUE Exh. L; Tru’s Notice of Reliance, Exh. 11. 19 Request for Reconsideration, 75 TTABVUE 4. Cancellation No. 92063808 9 images for the first time after trial. The images to which Tru refers in its Request for Reconsideration were identified (with the URL of the website in question) in Double Coin’s Trial Declaration of Aaron Murphy,20 provided as Exhibit N to Double Coin’s Notice of Reliance,21 and confirmed in Double Coin’s Rebuttal Trial Declaration of Timothy Phillips as not having been changed in content at all times relevant to these proceedings.22 Additionally, Double Coin introduced at trial multiple other examples of the “modernized” version of the WARRIOR (Stylized) mark, such as in marketing materials, owner’s manuals and on the sidewalls of Double Coin’s tires.23 In sum, we find there was no “newly discovered evidence” that would qualify under Fed. R. Civ. P. 60(b)(2), and therefore Tru’s Request for Reconsideration pursuant to Rule 60(b)(2) is without merit. V. Tru’s Claim of Fraud, Misrepresentation, or Misconduct by Double Coin Claiming that Double Coin engaged in discovery “gamesmanship,” Tru asserts that Double Coin “failed to comply with its obligations during discovery and failed to 20 Murphy Declaration, 36 TTABVUE ¶ 11. 21 Double Coin’s Notice of Reliance, 41 TTABVUE Exh. N. 22 Phillips Rebuttal Declaration, 59 TTABVUE ¶¶ 3-4. 23 Yang Declaration, 34 TTABVUE Exhs. 1-3, 5; Phillips Declaration, 35 TTABVUE Exh. 1; Murphy Declaration, 36 TTABVUE Exh. 2, 4-7; and Double Coin’s Notice of Reliance, 41 TTABVUE Exh. C. Cancellation No. 92063808 10 supplement [its] … discovery responses to reflect [a] … shift from Petitioner’s registered design version of [its] … Asserted Mark and otherwise concealed the true nature of these changes.”24 In support of this argument, Tru submitted with its reply papers a copy of Double Coin’s responses to Tru’s first set of interrogatories. In each of Double Coin’s answers to Tru’s Interrogatories Nos. 9-12, 15, 16, 20 and 26,25 it identified the declarations and exhibits of Dean Jin and Zhi-Ming (“Mike”) Yang that were filed in support of Double Coin’s motion for summary judgment.26 Identified at ¶¶ 1-2 of, and attached as Exhs. 1-2 to, Mr. Yang’s declaration, were numerous marketing flyers and a printed capture of Double Coin’s website showing the “modernized” version of the WARRIOR (Stylized) mark. At a minimum, the documents identified in Double Coin’s interrogatory responses (and attached to Mr. Yang’s summary judgment declaration) put Tru on notice that Double Coin had modified the stylization of its mark from that shown in Double Coin’s registration, such that Tru had the opportunity to investigate further, take 24 Reply in further support of Request for Reconsideration, 77 TTABVUE 3, 25 These interrogatories requested information and the identification of documents that would support Double Coin’s intent to use its mark, claim of likelihood of confusion, assertion that its mark was not abandoned, contention that it was known in the industry or marketplace, use of its mark in commerce, use of its mark on the internet, use of its mark since the date of registration, and efforts to market its products in the United States. 26 10 TTABVUE and 11 TTABVUE. Cancellation No. 92063808 11 discovery,27 amend its counterclaims, and bring the claim of abandonment by material alteration to the forefront during trial. These circumstances are a far cry from proof by clear and convincing evidence that Double Coin engaged in fraud or other misconduct, and that this misconduct prevented Tru from fully and fairly presenting its case. CEATS v. Cont’l Airlines, 111 USPQ2d at 1482. Therefore, Tru’s request for reconsideration and relief from the judgment pursuant to Fed. R. Civ. P. 60(b)(3) is not well taken and is without merit. VI. Tru’s Catch-All Assertion that “Any Other Reason” Justifies Relief As discussed above, because Tru seeks relief from the Board’s judgment based on the grounds enumerated in Rule 60(b)(2) and 60(b)(3), it cannot also seek relief under Rule 60(b)(6). Liljeberg, 486 U.S. at 863. For completeness, we consider here the three factors discussed in Liljeberg, 486 U.S. at 864, as to whether relief under this rule is justified, mindful that relief from judgment under Rule 60(b)(6) is an extraordinary remedy that is granted in the Board’s discretion only in exceptional circumstances. Id. To begin, there is no risk of injustice to Tru by denying its Request for Reconsideration. Tru was on notice of the facts that might have supported a timely counterclaim of non-use by material alteration (the merits of which we do not here 27 See the Board’s Orders extending time for discovery following the denial of Double Coin’s motion for summary judgment. 21 TTABVUE and 24 TTABVUE (granting the motion to extend the close of discovery at 23 TTABVUE). Cancellation No. 92063808 12 discuss); yet, Tru did nothing to preserve an opportunity to assert this counterclaim at trial. In contrast, it would be manifestly unfair for us to have considered a counterclaim on which Double Coin was not put on proper notice that would have enabled it to properly defend itself at trial and during briefing. Having not been pled properly and timely, Tru could not move forward at trial on this counterclaim. See Kohler v. Baldwin Hardware, 82 USPQ2d at 1103 n.3 (unpleaded allegations will not be heard). Denying Tru’s Request for Reconsideration does not risk injustice in other cases or undermining the public’s confidence in our proceedings. The Board’s policy is clear and well-documented that a party cannot proceed to trial and rely upon a claim (or counterclaim) it never asserted. See TBMP § 314 (and cases cited therein). Matters before the Board should not be litigated as “trial by ambush.” Were we to grant Tru’s Request for Reconsideration, the Board would be encouraging such a practice. Therefore, we decline to exercise our discretion to grant Tru’s Request for relief from the judgment under the catch-all provision of Rule 60(b)(6). VII. Conclusion Based on the evidence of record and the prevailing authorities, we find the Board did not err in reaching its decision issued in this case on October 1, 2019. Tru also has not demonstrated that any of the reasons specified in Rule 60(b)(2), (3) or (6) are present to justify relief from the Board’s judgment. For these reasons, Tru’s Request for Reconsideration of and relief from the judgment is denied.