Great Adirondack Steak & Seafood Cafe, Inc.v.Adirondack Pub & Brewery, Inc.

Trademark Trial and Appeal Board

Mar 30, 2015

No. 91219162 (T.T.A.B. Mar. 30, 2015)

CME
Mailed: March 30, 2015

Opposition No. 91219162 (parent)

Great Adirondack Steak & Seafood
Cafe, Inc.

v.

Adirondack Pub & Brewery, Inc.

Cancellation No. 92058318

Adirondack Pub & Brewery, Inc.

v.

Great Adirondack Steak & Seafood
Cafe, Inc.

Before Quinn, Lykos and Masiello,
Administrative Trademark Judges.

By the Board:

It has come to the Board’s attention that prior to the filing of Opposition
No. 91219612, Adirondack Pub & Brewery, Inc. filed Cancellation No.
92058318 petitioning to cancel the registration that Great Adirondack Steak
& Seafood Cafe, Inc. has pleaded in Opposition No. 91219162. When cases
involving common questions of law and fact are pending before the Board, the
Board may order consolidation of the cases. See Fed. R. Civ. P. 42(a); TBMP §
United States Patent and Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91219162
Cancellation No. 92058318

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511 (2014) (consolidation is discretionary with the Board, and may be ordered
upon the Board’s own initiative); see also Regatta Sport Ltd. v. Telux-Pioneer
Inc., 20 USPQ2d 1154 (TTAB 1991). Inasmuch as the parties to Opposition
No. 91219162 and Cancellation No. 92058318 are the same and the
proceedings involve common questions of law and fact, the proceedings are
consolidated and may be presented on the same record and briefs.
Cancellation No. 92058318 will be treated as a counterclaim in Opposition
No. 91219162, and in this order, we will refer to Great Adirondack Steak &
Seafood Cafe, Inc. as “Opposer/Counterclaim-Defendant” and Adirondack Pub
& Brewery, Inc. as “Applicant/Counterclaim-Plaintiff.”
The record will be maintained in Opposition No. 91219162 as the “parent”
case. The parties should no longer file separate papers or submissions in
connection with each proceeding, but instead should file only a single copy of
each submission in the parent case. Each submission filed should bear the
case caption as set forth above and the parent case should be designated as
the parent case by following it with: “(parent),” as in the case caption set
forth above.
Consolidated cases do not lose their separate identity because of
consolidation. Each proceeding retains its separate character and requires
entry of a separate judgment. The single decision on the consolidated cases
shall take into account any differences in the issues raised by the respective
pleadings and a copy of the final decision shall be placed in each proceeding
Opposition No. 91219162
Cancellation No. 92058318

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file. See Dating DNA LLC v. Imagini Holdings Ltd., 94 USPQ2d 1889, 1893
(TTAB 2010).
These consolidated cases now come up on: (1) the parties’ stipulated
motion to amend the Board’s standard protective agreement in Opposition
No. 91219162; (2) Opposer/Counterclaim-Defendant’s motion to strike, filed
December 29, 2014 in Opposition No. 91219162; (3) Applicant/Counterclaim-
Plaintiff’s motion for summary judgment, filed November 7, 2014 in
Cancellation No. 92058318; and (4) Opposer/Counterclaim-Defendant’s cross-
motion, filed November 10, 2014 in Cancellation No. 92058318, which we
construe as a combined cross-motion for judgment on the pleadings regarding
whether the claim of fraud has been adequately pleaded, and a cross-motion
for summary judgment on the claim that Opposer/Counterclaim-Defendant’s
mark was not in use in commerce in connection with the involved goods as of
the filing date of the underlying use-based application.1 Opposer/-
Counterclaim-Defendant’s motion to strike and the parties’ cross-motions for
summary judgment are fully briefed. Applicant/Counterclaim-Plaintiff did
not respond to the merits of Opposer/Counterclaim-Defendant’s motion for

1 On December 7, 2014, the Board issued an order suspending Cancellation No.
92058318 pending disposition of the parties’ cross-motions for summary judgment.
We deem the proceedings suspended as of November 7, 2015 – the date
Applicant/Counterclaim-Plaintiff filed its motion for summary judgment.
Accordingly, Opposer/Counterclaim-Defendant’s cross-motion, filed November 10,
2014, is timely.

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Cancellation No. 92058318

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judgment on the pleadings,2 but rather than grant the motion as conceded,
we exercise our discretion to consider the cross-motion on its merits.
1. Stipulated Motion to Amend the Standard Protective Agreement
in Opposition No. 91219162

The parties’ stipulated motion to amend the Board’s standard protective
agreement in Opposition No. 91219162 is GRANTED and use of the
protective agreement attached to the parties’ motion is approved.3 See
Trademark Rule 2.116(g). The parties are referred, as appropriate, to TBMP
§§ 412.04 (Filing of Confidential Materials with the Board) and 412.05
(Handling of Confidential Materials by the Board).
The parties are advised that only confidential or trade secret information
should be filed pursuant to a stipulated protective agreement. Such an
agreement may not be used as a means of circumventing Trademark Rules
2.27(d) and (e), which provide that the file of a published application or
issued registration, and all proceedings relating thereto, should otherwise be
available for public inspection.
2. Motion to Strike in Opposition No. 91219162
Applicant/Counterclaim-Plaintiff seeks registration of the mark
ADIRONDACK BREWERY for “beer.”4 In its notice of opposition,

2 Applicant/Counterclaim-Plaintiff has argued only the merits of its fraud claim.

3 On April 2, 2014, the Board issued an order approving use of an identical
protective agreement in Cancellation No. 92058318.

4 Application Serial No. 86027053, filed August 2, 2013, based on an allegation of
first use of April 28, 1999 and first use in commerce of September 11, 1999; claiming
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Cancellation No. 92058318

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Opposer/Counterclaim-Defendant alleges: (1) prior use and registration of the
mark GREAT ADIRONDACK BREWING COMPANY, in standard
characters, for ales and beers;5 (2) that use of Applicant/Counterclaim-
Plaintiff’s mark is likely to cause confusion with Opposer/Counterclaim-
Defendant’s mark; and (3) that the involved mark is merely descriptive of
beer. Applicant/Counterclaim-Plaintiff filed an answer on December 11, 2014
denying the salient allegations in the notice of opposition and asserting seven
affirmative defenses.
Opposer/Counterclaim-Defendant filed a timely motion to strike six of the
seven affirmative defenses on the ground that the affirmative defenses are
“bald and conclusory assertions that do not provide [Opposer/Counterclaim-
Defendant] with fair notice of the basis for the claimed defenses, and do not
plead the elements necessary to establish the Affirmative Defenses.” Motion
to Strike, pp. 1-2. In response, Applicant/Counterclaim-Plaintiff argues that
it “should not have any burden or responsibility to specifically outline each of
its defenses when they are factually of the same substance as [the claims
pleaded] in [Cancellation No. 92058318],” see Response to Motion to Strike,
pp. 1-2; that it has pleaded its affirmative defenses “in a simple and concise

acquired distinctiveness pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. §
1052(f); “brewery” disclaimed.

5 Registration No. 4425098; filed March 8, 2013; issued October 29, 2013; based on a
claim of first use and first use in commerce of December 30, 1997; claiming acquired
distinctiveness pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f);
“brewing company” disclaimed.
Opposition No. 91219162
Cancellation No. 92058318

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manner” in compliance with Trademark Rule 2.106(b)(1),6 id.; and that
although the defense of laches in an opposition proceeding “is very limited,”
Opposer/Counterclaim-Defendant “has been aware of the [involved
application] since December 4, 2013, as a result of [Cancellation No.
92058318].” Id. at p. 2.
The Board may strike from a pleading any insufficient defense, or any
redundant, immaterial, impertinent or scandalous matter. See Fed. R. Civ. P.
12(f); Am. Vitamin Prods. Inc. v. DowBrands Inc., 22 USPQ2d 1313, 1314
(TTAB 1992); TBMP § 506.01. Motions to strike are not favored, and as such,
a defense will not be stricken as insufficient if the insufficiency is not clearly
apparent, or if it raises factual issues that should be determined on the
merits. See TBMP § 506.01. Moreover, the primary purpose of the pleadings
is to give fair notice of the claims or defenses asserted. See id; see also TBMP
§§ 309.03 and 311.02. Thus, the Board, in its discretion, may decline to strike
even objectionable pleadings where their inclusion will not prejudice the
adverse party, but rather will provide fuller notice of the basis for a claim or
defense. See Harsco Corp. v. Elec. Sciences Inc., 9 USPQ2d 1570 (TTAB
1988).
As an initial matter, Applicant/Counterclaim-Plaintiff’s assertion that its
claims in Cancellation No. 92058318 have placed Opposer/Counterclaim-

6 Applicant/Counterclaim-Plaintiff also argues that Opposer/Counterclaim-
Defendant’s affirmative defenses in Cancellation No. 92058318 are similarly short
and concise. We address the sufficiency of Opposer/Counterclaim-Defendant’s
affirmative defenses in Section 4 below.
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Defendant on sufficient notice of its affirmative defenses in Opposition No.
91219162 is without merit. Although the cases are consolidated, Opposition
No. 91219162 and Cancellation No. 92058318 are separate proceedings and
the sufficiency of the pleadings in each case must stand on their own. With
this in mind, the Board addresses each of Applicant/Counterclaim-Plaintiff’s
affirmative defenses in turn below.
Applicant/Counterclaim-Plaintiff’s Affirmative Defenses 1 and 2

1. “[Opposer/Counterclaim-Defendant] fails to state a claim upon
which relief may be granted.”

2. “[Opposer/Counterclaim-Defendant] fails to plead its claim with
adequate particularity.”

Affirmative Defense 2 is an amplification of Affirmative Defense 1, and
therefore, we address these affirmative defenses together. An assertion that a
pleading fails to state a claim upon which relief can be granted is not a true
affirmative defense because it relates to an assertion of the insufficiency of
the pleading rather than a statement of a defense to a properly pleaded
claim. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d
1733, 1738 n.7 (TTAB 2001). Nonetheless, we have reviewed the sufficiency of
the notice of opposition.
To state a claim upon which relief can be granted, a plaintiff need only
allege such facts as would, if proved, establish that: 1) it has standing to
maintain the proceeding, and 2) a valid ground exists for opposing the
registration sought or cancelling the issued registration. See Lipton Indus.,
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Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982).
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 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544,
570 (2007)). In particular, a 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. Iqbal, 556 U.S. 662 (citing Twombly, 550 U.S. at 555). Further, 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,
e.g., Advanced Cardiovascular Sys. Inc. v. SciMed Life Sys. Inc., 988 F.2d
1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); Fair Indigo LLC v. Style
Conscience, 85 USPQ2d 1536, 1537 (TTAB 2007).
Opposer/Counterclaim-Defendant has sufficiently alleged both its
standing and a valid ground for opposition by pleading its prior use and
registration of the mark GREAT ADIRONDACK BREWING COMPANY and
a plausible claim of likelihood of confusion. See Notice of Opposition, ¶¶ 2-9;
see also Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1285 (TTAB
2007); TBMP § 309.03(b) and cases cited in footnote 7 therein. Opposer also
has adequately pleaded that Applicant/Counterclaim-Plaintiff’s mark is
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merely descriptive.7 See Notice of Opposition, ¶ 10; see also M. Polaner, Inc. v.
J.M. Smucker Co., 24 USPQ2d 1059, 1060 (TTAB 1992) (construing
descriptiveness claim to include an implicit assertion of lack of acquired
distinctiveness).
In view of these findings, Opposer/Counterclaim-Defendant’s motion is
GRANTED with respect to Affirmative Defenses 1 and 2, which are
STRICKEN.
Applicant/Counterclaim-Plaintiff’s Affirmative Defenses 3 and 4
3. “[Opposer/Counterclaim-Defendant’s] claims are barred by the
doctrine of estoppel.”

4. “[Opposer/Counterclaim-Defendant’s] claims are barred by the
doctrines of waiver, laches and/or acquiescence.”

Affirmative defenses, like claims in a notice of opposition or petition for
cancellation, must be supported by enough factual background and detail to
fairly place the claimant on notice of the basis for the defenses. See IdeasOne
Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009);
Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1292 (TTAB 1999) (noting
that the primary purpose of pleadings “is to give fair notice of the claims or
defenses asserted”); see also TBMP § 311.02(b) and the cases cited in footnote
15 therein. Here, Applicant/Counterclaim-Plaintiff’s defenses of estoppel,

7 We note that Opposer/Counterclaim-Defendant has not asserted a claim that the
involved mark is primarily geographically descriptive of the involved goods. To
assert such a claim, a plaintiff must plead that: (1) the primary significance of the
mark is as the name of a place that is generally known; and (2) the relevant
purchasers would associate defendant’s goods with the place named, i.e., that the
public would believe that the goods come from the place named. Grand Canyon West
Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1505 (TTAB 2008).
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laches, acquiescence and waiver are bald, conclusory allegations that are not
supported by any facts.
Moreover, although Trademark Rule 2.106(b)(1) in principle allows a
defendant to plead the defenses of estoppel, laches, and acquiescence, such
defenses generally are not available in opposition proceedings. See Barbara’s
Bakery, 82 USPQ at 1292 n.14 (noting that amendment of applicant’s answer
to assert defenses of laches, acquiescence or estoppel would be futile as such
defenses generally are not available opposition proceedings); see also Lincoln
Logs Ltd. v. Lincoln Pre-Cut Logs Homes Inc., 971 F.2d 732, 23 USPQ2d
1701, 1703 (Fed. Cir. 1992); Nat’l Cable Television Assoc. v. Am. Cinema
Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). In
addition, such equitable defenses cannot be asserted against a claim of
descriptiveness, which has been pleaded here. See Callaway Vineyard &
Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919, 1923 (TTAB 2002).
In view of the foregoing, Opposer/Counterclaim-Defendant’s motion to
strike is GRANTED with respect to affirmative defenses 3 and 4, which are
STRICKEN.
Applicant/Counterclaim-Plaintiff’s Affirmative Defenses 5 and 7
5. “[Opposer/Counterclaim-Defendant’s] claims are barred by the
doctrine of unclean hands.”

7. “[Opposer/Counterclaim-Defendant] obtained its registration by
fraud.”

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Applicant/Counterclaim-Plaintiff has not adequately pleaded an
affirmative defense of unclean hands or fraud as it has not alleged any
specific misconduct on the part of Opposer/Counterclaim-Defendant.8 See
Midwest Plastic Fabricators Inc. v. Underwriters Labs. Inc., 5 USPQ2d 1067,
1069 (TTAB 1987) (“[R]espondent’s fourth affirmative defense does not
include allegations that state a defense of unclean hands. There are no
specific allegations of conduct by petitioner that, if proved, would prevent
petitioner from prevailing on its claim; instead, the allegations of the fourth
affirmative defense are either unclear, non-specific, irrelevant to a pleading
of unclean hands, or merely conclusory in nature.”). Moreover, an affirmative
defense of fraud needs to be alleged with a heightened degree of particularity
in compliance with Fed. R. Civ. P. 9(b), and that has not been done here. See
In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009).
Accordingly, Opposer/Counterclaim-Defendant’s motion is GRANTED with
respect to affirmative defenses 5 and 7, which are STRICKEN.

8 Under the equitable defense of unclean hands, a plaintiff may be estopped from
relying on a pleaded registration because the registration was obtained or
maintained on the basis of a false statement. See Duffy-Mott Co., Inc. v. Cumberland
Packing Co., 424 F.2d 1095, 165 USPQ 422, 424-25 (CCPA 1970); Lever Bros. Co. v.
Shaklee Corp., 214 USPQ 654, 659 (TTAB 1982) (“While ordinarily, in a proceeding
before this Board, a Principal Register registrant is entitled to rely upon the
presumptions of validity, ownership and exclusive right to use accorded under the
provisions of the Trademark Act, we have determined that such presumptions are
effectively rebutted where there is clear and unmistakable evidence in the record
that the registered mark is invalid due to its having been abandoned, obtained on
the basis of a false statement or subject to some other material defect. Where such
unmistakable evidence exists, the registration is not accorded any evidentiary value
in regard to the issues in a proceeding before us.”).
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Cancellation No. 92058318

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Applicant/Counterclaim-Plaintiff’s Affirmative Defense 6
6. “[Opposer/Counterclaim-Defendant’s] Mark is not in use in
commerce.”

Opposer/Counterclaim-Defendant has not objected to Affirmative Defense
6, but to be complete, we address the sufficiency of this defense. See Fed. R.
Civ. P. 12(f) (Board may strike an insufficient defense on its own initiative);
Am. Vitamin Prods., Inc., 22 USPQ2d at 1314. The allegation that
Opposer/Counterclaim-Defendant’s pleaded mark is not in use in commerce is
not a proper affirmative defense, but rather, in the context of Opposition No.
91219162, is an impermissible collateral attack against the pleaded
registration. See Trademark Rule 2.106(b)(2)(ii); Textron, Inc. v. The Gillette
Co., 180 USPQ 152, 153 (TTAB 1973) (defense attacking validity of pleaded
registration must be raised by way of petition for cancellation); see also
TBMP §§ 313.01 and 313.02. Moreover, we note that this affirmative defense
is effectively superseded by Applicant’s claim of non-use in Cancellation No.
92058318.9 Accordingly, Affirmative Defense 6 is STRICKEN.
3. Motion for Judgment on the Pleadings in Cancellation No.
92058318

Opposer/Counterclaim-Defendant argues that Applicant/Counterclaim-
Plaintiff has failed to adequately plead a claim of fraud because: (1) the
allegations in the petition for cancellation are made solely on information and

9 In Cancellation No. 92058318, Applicant/Counterclaim-Plaintiff has adequately
pleaded a claim that Opposer/Counterclaim-Defendant’s Registration No. 4425098 is
void ab initio on the ground that the involved mark was not in use in commerce in
connection with the identified goods as of the filing date of the underlying use-based
application. See infra, p. 17.
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belief, see Opposer/Counterclaim-Defendant’s Cross-Motion, p. 13-14; (2)
Applicant/Counterclaim-Plaintiff has failed to allege intent, see id. at p. 14;
and (3) none of the alleged false statements would have been material to the
issuance of the involved registration. See id. at p. 15.10
If, as is the case here, a defendant files a motion for judgment on the
pleadings under Fed. R. Civ. P. 12(c) that is based on the assertion that the
complaint fails to state a claim upon which relief can be granted, the
standard for adjudicating the motion is the same as that of a motion filed
pursuant to Fed. R. Civ. P. 12(b)(6). See Western Worldwide Enters. Group
Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990). Accordingly,
we consider whether Applicant/Counterclaim-Plaintiff has alleged such facts
as would, if proven at trial or on summary judgment, establish that
Applicant/Counterclaim-Plaintiff has standing to petition for the cancellation
of the registered mark and that a statutory ground exists for canceling such
registration. See supra, pp. 7-8.
Applicant/Counterclaim-Plaintiff’s allegation that it is using and has filed
a federal trademark application for the mark ADIRONDACK BREWERY for
beer, if proven, would be sufficient to show that it is not a mere intermeddler,
but has a real interest in petitioning to cancel the mark GREAT
ADIRONDACK BREWING COMPANY for ales and beer. Cf. Anosh Toufigh

10 Opposer/Counterclaim-Defendant also argues the merits of Applicant/-
Counterclaim-Plaintiff’s fraud claim. See Opposer/Counterclaim-Defendant Cross-
Motion, pp. 15-23.

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v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (standing
established based solely on testimony that petitioner filed an application for
an identical mark for goods similar to those in respondent’s registration).
Moreover, Applicant/Counterclaim-Plaintiff’s standing is inherent in its
position as defendant in Opposition No. 91219162. See TBMP § 309.03(b) and
cases cited in footnote 14 therein.
We now turn to whether Applicant/Counterclaim-Plaintiff has adequately
pleaded a claim of fraud. Fraud in procuring a trademark registration occurs
when an applicant for registration knowingly makes a specific false, material
representation of fact in connection with an application to register, with the
intent of obtaining a registration to which it is otherwise not entitled. See In
re Bose Corp., 91 USPQ2d at 1939; Qualcomm Inc. v. FLO Corp., 93 USPQ2d
1768, 1770 (TTAB 2010). As previously stated, a claim of fraud must set forth
all elements of the claim with a heightened degree of particularity in
compliance with Fed. R. Civ. P. 9(b). See Asian and Western Classics B.V. v.
Selkow, 92 USPQ2d 1478, 1478-79 (TTAB 2009). As such, “allegations made
‘on information and belief’ must be accompanied by a statement of facts upon
which the belief is founded.” Id. at 1479. In addition, intent to deceive the
USPTO is a specific element of a fraud claim, and must be sufficiently
pleaded. In re Bose, 91 USPQ2d at 1939-1940; Asian and Western Classics, 92
USPQ2d at 1479.
Applicant/Counterclaim-Plaintiff’s allegations of fraud are as follows:
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4. “Upon information and belief, [Opposer/Counterclaim-Defendant]
has not used the mark GREAT ADIRONDACK BREWING
COMPANY in commerce on beer and/or ale since December 30,
1997, as declared in its application.”

5. “Upon information and belief, [Opposer/Counterclaim-Defendant’s]
specimen of use submitted to obtain the registration is a
photograph of a ‘growler’ or empty container and not a label
showing the mark as affixed to a container of beer or ale and not a
label approved by alcoholic beverage regulators for a container of
beer or ale.”

6. “Upon information and belief, while [Opposer/Counterclaim-
Defendant] has obtained from state and federal licensing
authorities various Certificates of Label Approval for beer and ale,
until about 2011, none of these certificates show or provide for use
of the trademark use of [sic] GREAT ADIRONDACK BREWING
COMPANY making the use of GREAT ADIRONDACK BREWING
COMPANY without approved use, unlawful under state and federal
laws regulating alcoholic beverages.”

7. “Upon information and belief, [Opposer/Counterclaim-Defendant’s]
products have never been sold in interstate commerce, as declared
in its application for the registration, but have sold been [sic] only
out of its restaurant premises in upstate New York, primarily
within the county in which the restaurant is situated, and only
within the limits of New York State.”

These allegations fail to sufficiently set forth a claim of fraud for a number
of reasons. First, intent is an indispensable element of a fraud claim and
intent has not been pleaded here. Second, Applicant/Counterclaim-Plaintiff
has not supported its allegations made “on information and belief” with any
specific factual allegations. Third, a date of first use is not material to the
Office’s decision to issue a registration. As such, even if the first use date
claimed in Opposer/Counterclaim-Defendant’s underlying application were
incorrect, this would not constitute fraud. See Hiraga v. Arena, 90 USPQ2d
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1102, 1107 (TTAB 2009) (recognizing that the critical issue is whether the
mark was in use in commerce in connection with the identified goods as of the
filing date of the use-based application). Fourth, to the extent Applicant/-
Counterclaim-Plaintiff is attempting to assert a claim of fraud based on the
insufficiency of Opposer/Counterclaim-Defendant’s specimen, that is an ex
parte examination issue and not a proper basis for a claim of fraud.11 Cf., e.g.,
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1273 n. 6 (TTAB
1992); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358
(TTAB 1989). Lastly, while a claim of fraud may be based on allegations of
unlawful use, it is the Board’s practice to find use of a mark unlawful only
where: (1) non-compliance has been previously determined by a court or
agency with competent jurisdiction under the involved statute; or (2) there
has been a per se violation of a statute regulating the sale of the defendant’s
goods. See Kellogg Co. v. New Generation Foods, Inc., 6 USPQ2d 2045, 2047
(TTAB 1988); see also General Mills, 24 USPQ2d at 1273-74; Santinine
Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981). Here,
Applicant/Counterclaim-Plaintiff has not alleged that any court or agency has
determined that Opposer/Counterclaim-Defendant’s use of the involved mark
for the involved goods has violated a statute. Nor has Applicant/-
Counterclaim-Plaintiff alleged any specific per se violation of a statute.

11 In contrast, a claim of fraud may be based on an assertion that the defendant
submitted a fabricated specimen, but Applicant/Counterclaim-Plaintiff has not made
any such allegation.

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In view of the foregoing, Opposer/Counterclaim-Defendant’s cross-motion
for judgment on the pleadings is GRANTED. However, if the facts so
warrant, Applicant/Counterclaim-Plaintiff is allowed until April 18, 2015 to
file an amended petition for cancellation which includes a properly pleaded
claim of fraud, failing which Applicant/Counterclaim-Plaintiff’s allegations of
fraud will be given no further consideration.12 In the event
Applicant/Counterclaim-Plaintiff files an amended petition for cancellation,
Opposer/Counterclaim-Defendant is allowed until May 8, 2015 to file an
answer or otherwise respond to the amended complaint.
Notwithstanding Applicant/Counterclaim-Plaintiff’s failure to adequately
plead a claim of fraud, we find that the petition for cancellation states a claim
of non-use as of the filing date of the underlying use-based application.
Specifically, we construe paragraph 7 of the complaint as alleging that
Opposer/Counterclaim-Defendant’s mark was not in use in commerce
regulated by Congress as of the filing date of the application because use of
the involved mark for the involved goods has been limited to purely
intrastate use.13

12 Any amended counterclaim or answer to the counterclaim should be filed only in
the child case, Cancellation No. 92058318.

13 To be clear, a mark registered pursuant to Trademark Act Section 1(a) need not
have been used in interstate commerce as of the filing date of the allegation of use. A
mark may be registered pursuant to Section 1(a) of the Trademark Act if it is used in
commerce that may be regulated by Congress, which includes intrastate use of a
mark that directly affects a type of commerce that Congress may regulate. 15 U.S.C.
§§ 1051(a) and 1127; see also In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261
(CCPA 1977); TMEP § 901.03 (Jan. 2015).
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4. Sufficiency of Opposer/Counterclaim-Defendant’s Affirmative
Defenses in Cancellation No. 92058318

Applicant/Counterclaim-Plaintiff has not moved to strike Opposer/-
Counterclaim-Defendant’s affirmative defenses in Cancellation No.
92058313, but the affirmative defenses that Opposer/Counterclaim-
Defendant has asserted are identical to Applicant/Counterclaim-Plaintiff’s
affirmative defenses in Opposition No. 91219162, which we have found
insufficient. Specifically, Opposer/Counterclaim-Defendant has pleaded that:
1. “[Applicant/Counterclaim-Plaintiff] fails to state a
claim upon which relief may be granted.”

2. “[Applicant/Counterclaim-Plaintiff] fails to plead its
claim with adequate particularity.”

3. “[Applicant/Counterclaim-Plaintiff’s] claims are barred
by the doctrine of equitable estoppel.”

4. “[Applicant/Counterclaim-Plaintiff’s] claims are barred
by the doctrines of waiver, laches and/or
acquiescence.”; and

5. “[Applicant/Counterclaim-Plaintiff’s] claims are barred
by the doctrine of unclean hands.”

As explained in Section 2 above, failure to state a claim is not a true
affirmative defense, and in any event, we have addressed the sufficiency of
Applicant/Counterclaim-Plaintiff’s counterclaim in Section 3 above. In
addition, the affirmative defenses of equitable estoppel, waiver, laches,
acquiescence and unclean hands have not been pleaded with particularity.14

14 These equitable defenses also are “severely limited” in cancellation actions. TBMP
§ 311.02(b). In addition, to the extent Applicant/Counterclaim-Plaintiff adequately
Opposition No. 91219162
Cancellation No. 92058318

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Accordingly, the affirmative defenses in Cancellation No. 92058318 are
STRICKEN.
5. Parties’ Cross-Motions for Summary Judgment in Cancellation
No. 92058318

Because Applicant/Counterclaim-Plaintiff has moved for summary
judgment solely on “the ground that the specimen of use submitted with the
application was fraudulent,” and a claim of fraud has not been adequately
pleaded, we give no consideration to Applicant/Counterclaim-Plaintiff’s
motion for summary judgment.15 See Fed. R. Civ. P. 56(a); see also TBMP
528.07(a) (“A party may not obtain summary judgment on an issue that has
not been pleaded.”).
Opposer/Counterclaim-Defendant has moved for summary judgment on
the ground that, at the time it filed its underlying-use based application, it
was using the involved mark in connection with the involved goods in
commerce regulated by Congress. Summary judgment is appropriate only
where there are no genuine disputes as to any material facts, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The party

pleads a claim of fraud, these equitable defenses would not be available. See id. and
cases cited in footnote 7 therein.

15 Applicant/Counterclaim-Plaintiff is advised that the factual question of intent,
which is an element of a fraud claim, “is particularly unsuited to disposition on
summary judgment.” Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20
USPQ2d 1295, 1299 (Fed. Cir. 1991) (emphasis added); see also Asian and Western
Classics, 92 USPQ2d at 1480. Moreover, “[a] party making a fraud claim is under a
heavy burden because fraud must be proven to the hilt by clear and convincing
evidence, leaving nothing to speculation, conjecture, or surmise….” Asian and
Western Classics, 92 USPQ2d at 1480.
Opposition No. 91219162
Cancellation No. 92058318

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seeking summary judgment bears the burden of demonstrating the absence of
any genuine dispute of material fact, and that it is entitled to a judgment
under the applicable law. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986); Sweats Fashions, 4 USPQ2d at 1796. This burden is greater than the
evidentiary burden at trial. See TBMP § 528.01 and cases cited therein. A
factual dispute is genuine if, on the evidence of record, a reasonable fact
finder could resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d
200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment
must be viewed in a light most favorable to the non-movant, and all
justifiable inferences are to be drawn in the non-movant’s favor. Lloyd’s Food
Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve
genuine disputes as to material facts; it may only ascertain whether genuine
disputes as to material facts exist. See Lloyd’s Food Prods., 25 USPQ2d at
2029; Olde Tyme Foods, 22 USPQ2d at 1544.
Upon careful consideration of the parties’ arguments and evidence, and
drawing all inferences with respect to the motion in favor of
Applicant/Counterclaim-Plaintiff as the non-movant, we find that there are
genuine disputes of material fact regarding whether, as of the filing date of
the underlying use-based application, Opposer/Counterclaim-Defendant was:
Opposition No. 91219162
Cancellation No. 92058318

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(1) using the involved mark in connection with the involved goods in
intrastate commerce in a manner directly affecting a type of commerce that
Congress may regulate; or (2) making a bona fide use of the mark in
interstate commerce.
More specifically, the declarations of Opposer/Counterclaim-Defendant’s
owner/president and brewery manager show that as of the filing date of the
underlying application, Opposer/Counterclaim-Defendant was selling beer
and ale in connection with the involved mark in five restaurants in New York
state. See Declaration of Edward Kane, ¶ 15 and Declaration of Robert
Chandler Kane, ¶ 5. There is, however, a genuine dispute of material fact
regarding whether such intrastate use of the mark directly affected
commerce that Congress may regulate.16 Opposer/Counterclaim-Defendant’s
president/owner, manager, and brewery manager also each attested that

16 Opposer/Counterclaim-Defendant submitted printouts from the Internet
consisting of customer reviews for its restaurants, and in some cases, the reviewer
identified its purported state of residency. See Declaration of Rachel Pearlman,
Exhibit G. Notwithstanding that the Internet documents were properly
authenticated, they are hearsay to the extent Opposer/Counterclaim-Defendant is
attempting to use them to establish that its New York state restaurants, where it
sells its beer and ale, are frequented by out-of-state customers. In addition, in
connection with its reply brief, Opposer/Counterclaim-Defendant submitted a second
declaration from its brewery manager, Robert Chandler Kane, authenticating: (1)
Exhibit A as “true and accurate receipts for purchase of [Opposer/Counterclaim-
Defendant’s] kegs by various retailers to whom [Opposer/Counterclaim-Defendant]
supplies kegs of its products for retail”; and (2) Exhibit B as “a true and accurate
copy of a report that correctly reflects of [sic] [Opposer/Counterclaim-Defendant’s]
sales to various retail locations since 2000.” The receipts attached as Exhibit A are
all dated after the filing date of the underlying application, and also either do not
list an address for the purchaser or list a New York state address. Similarly, there is
no evidence that the sales reflected in Exhibit B were made in connection with the
involved mark or that any of the purchasers were from outside the state of New
York.

Opposition No. 91219162
Cancellation No. 92058318

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since prior to the filing date of the underlying application,
Opposer/Counterclaim-Defendant has “regular[ly]” sold, from its restaurant
in Lake Placid, New York, growlers and kegs of ale and beer (including root
beer) bearing the involved mark “to customers from out of state, who buy the
products to take home.” Declaration of Edward Kane, ¶¶ 2 and 5, Declaration
of Robert Charles Kane, ¶¶ 2 and 3, and Declaration of Robert Chandler
Kane, ¶¶ 2 and 5. But there is no definitive evidence regarding the identity
and state of residence of these purchasers, and therefore, there is a genuine
dispute of material fact regarding whether such sales constituted a use in
commerce.17 In addition, Opposer/Counterclaim-Defendant’s president/owner,
manager, and brewery manager each stated that (1) every year since 2006,
Opposer/Counterclaim-Defendant “has shipped its beer and/or ale in
containers bearing the [involved mark] to Colorado in order to participate in
the Great American Beer Festival”; (2) that every two years since 2008,
Opposer/Counterclaim-Defendant “has shipped its beer and/or ale in
containers bearing the [involved mark] to Boulder, Colorado to participate in
the World Beer Cup”; and (3) the involved mark was displayed on signage
and pamphlets at the Great American Beer Festival. Declaration of Edward
Kane, ¶¶ 17 and 19, Declaration of Robert Charles Kane, ¶¶ 11 and 13, and

17 Opposer/Counterclaim-Defendant’s brewery manager authenticated “sales records
for February and March of 2013,” which he attests “include the sale of growlers of
root beer,” but the declaration and sales records are ambiguous as to whether these
sales were made in connection with the involved mark as well as to out-of-state
customers. Reply Brief, Second Declaration of Robert Chandler Kane, ¶ 3 and
Exhibit A thereto.
Opposition No. 91219162
Cancellation No. 92058318

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Declaration of Robert Chandler Kane, ¶¶ 6 and 8. There are, however,
genuine disputes of material fact regarding the manner in which the mark
was applied to the goods shipped to these events and the manner in which
the mark was displayed on point of sale materials at the Great American
Beer Festival, such that Opposer/Counterclaim-Defendant has not proven
beyond dispute that customers would have perceived the use of the involved
mark as a proper trademark for the goods.
In view of the foregoing, Opposer/Counterclaim-Defendant’s motion for
summary judgment is DENIED.18
6. Procedural Issue
In view of the number of unconsented motions that have been filed in
these consolidated proceedings, the parties’ are required to seek the Board’s
written approval prior to filing any further unconsented pre-trial motions.19
7. Dates Reset
Proceedings are resumed and dates are reset as follows:

18 The fact that we have identified genuine disputes of material fact as a sufficient
basis for denying Opposer/Counterclaim-Defendant’s motion for summary judgment
should not be construed as a finding that these are necessarily the only issues which
remain for trial. In addition, the parties should note that the evidence submitted in
connection with the cross-motions for summary judgment is of record only for
consideration of those motions. To be considered at final hearing, any such evidence
must be properly introduced in evidence during the appropriate trial period. See Levi
Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc.
v. Bassetti, 219 USPQ 911 (TTAB 1983); Am. Meat Institute v. Horace W. Longacre,
Inc., 211 USPQ 712 (TTAB 1981).

19 A party seeking permission to file an unconsented motion should contact both
opposing counsel and the assigned interlocutory attorney to schedule a mutually
agreeable time for the parties and the Board to participate in a telephone conference
to discuss the basis for any proposed motion.
Opposition No. 91219162
Cancellation No. 92058318

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Discovery OPEN

Deadline for Discovery Conference in Opposition
No. 9121916220 April 18, 2015

Initial Disclosures in Opposition No. 91219162
Due May 18, 2015

Expert Disclosures Due September 15, 2015

Discovery Closes October 15, 2015

Plaintiff's Pretrial Disclosures November 29, 2015

30-day testimony period for plaintiff's testimony
to close January 13, 2016

Defendant/Counterclaim Plaintiff's Pretrial
Disclosures January 28, 2016
30-day testimony period for defendant and
plaintiff in the counterclaim to close March 13, 2016

Counterclaim Defendant's and Plaintiff's
Rebuttal Disclosures Due March 28, 2016
30-day testimony period for defendant in the
counterclaim and rebuttal testimony for plaintiff
to close May 12, 2016

Counterclaim Plaintiff's Rebuttal Disclosures
Due May 27, 2016

15-day rebuttal period for plaintiff in the
counterclaim to close June 26, 2016

Brief for plaintiff due August 25, 2016

20 If the discovery conference conducted and initial disclosures served previously in
Cancellation No. 92058318 adequately address the claims in Opposition No.
91219162, the parties need not hold another discovery conference or serve another
set of initial disclosures.
Opposition No. 91219162
Cancellation No. 92058318

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Brief for defendant and plaintiff in the
counterclaim due September 24, 2016
Brief for defendant in the counterclaim and reply
brief, if any, for plaintiff due October 24, 2016

Reply brief, if any, for plaintiff in the
counterclaim due November 8, 2016

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
2.125.
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 2.129.
***