Martin E. Wendelkenv.The Runningman UK Ltd

Trademark Trial and Appeal Board

Sep 26, 2018

No. 91237021 (T.T.A.B. Sep. 26, 2018)

cedent of the TTAB
SJH
September 26, 2018

Opposition No. 91237021

Martin E. Wendelken

v.
The Runningman UK Ltd

Before Shaw, Hightower, and Goodman,
Administrative Trademark Judges.

By the Board:

This case is before the Board for consideration of Applicant’s May 29, 2018 motion
to dismiss the notice of opposition for failure to state a claim on which relief can be
granted. 14 TTABVUE.
A. Background
Applicant The Runningman UK Ltd is the owner of application Serial
No. 79196647, which it filed seeking extension of protection pursuant to Trademark
Act 66(a), 15 U.S.C. § 1141f (Madrid Protocol), for the mark PICTAR (in standard
characters) for goods in International Class 9 listed infra.1

1 Application filed September 2, 2016, based on International Registration No. 1320014.
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
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91237021

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Opposer Martin E. Wendelken timely filed a Notice of Opposition on October 2,
2017. On February 5, 2018, the Board granted Applicant’s first motion to dismiss for
failure to state a claim pursuant to FED. R. CIV. P. 12(b)(6) and allowed Opposer thirty
days to file an amended pleading consistent with that order, “failing which the
opposition will be dismissed with prejudice.” 9 TTABVUE. Opposer timely filed an
“Amended Trademark Statement of Opposition” on March 5, 10 TTABVUE, which
the Board accepted as Opposer’s operative pleading and which we construe as an
amended notice of opposition. 13 TTABVUE 2.
On March 16, 2018, Applicant moved to amend the identification of goods in the
subject application. 12 TTABVUE. Opposer neither consented to the amendment nor
filed a brief in opposition. In accordance with ordinary practice, the Board deferred
consideration of Applicant’s unconsented proposed amendment until final hearing or
decision on summary judgment. See 13 TTABVUE 1; see also Wis. Cheese Grp., LLC
v. Comercializadora de Lacteos y Derivados S.A. de C.V., 118 USPQ2d 1262, 1265
(TTAB 2016).
In lieu of an answer to the amended notice of opposition, on May 29, 2018
Applicant timely filed a second motion to dismiss for failure to state a claim pursuant
to FED. R. CIV. P. 12(b)(6). 14 TTABVUE. Opposer filed a brief in opposition to the
motion, 15 TTABVUE, and Applicant filed a reply in support, 17 TTABVUE.
B. Motion to Amend Application
We begin with Applicant’s motion to amend the identification of goods. Trademark
Rule 2.133(a), 37 C.F.R. § 2.133(a), provides that “[a]n application subject to an
opposition may not be amended in substance nor may a registration subject to a
Opposition No. 91237021

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cancellation be amended or disclaimed in part, except with the consent of the other
party or parties and the approval of the Trademark Trial and Appeal Board, or upon
motion granted by the Board.” The conditions for entry of an unconsented amendment
to the identification of goods prior to trial are as follows:
1) the proposed amendment must serve to limit the
broader identification of goods or services;2
2) the applicant must consent to the entry of judgment on
the grounds for opposition with respect to the broader
identification of goods or services present at
publication;
3) if the applicant wishes to avoid the possibility of a res
judicata effect by the entry of judgment on the original
identification, it must make a prima facie showing that
the proposed amendment serves to change the nature
and character of the goods or services or restrict their
channels of trade and customers so as to introduce a
substantially different issue for trial; and
4) where required to support the basis of the subject
application, any specimens of record must support the
goods or services as amended; and the applicant must
then introduce evidence during its testimony period to
prove use of its mark with the remaining goods or
services prior to the relevant date as determined by the
application’s filing basis.
Johnson & Johnson v. Stryker, 109 USPQ2d 1077, 1078-79 (TTAB 2013); see also,
e.g., Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007).
Applicant proposes to amend its identification of goods to the following:
Photographic apparatus and instruments, namely, holders
specifically adapted for use with mobile phones, in which
the combination of holder and mobile phone functions as a
camera; computer application software for mobile phones,

2 Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), restricts amendments to the identification of
goods or services as follows: “The applicant may amend the application to clarify or limit, but
not to broaden, the identification of goods and/or services . . . .” This rule applies to all
applications, including those that are the subject of an opposition proceeding.
Opposition No. 91237021

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namely, software for use for connecting holders specifically
adapted for use with a mobile phone to said mobile phone,
in which the combination of holder and mobile phone
functions as a camera.
12 TTABVUE 2. The ID currently reads:3
Photographic apparatus and instruments, namely, holders
specifically adapted for use with mobile phones; mounting
devices for photographic equipment; but not including any
such goods being photographic equipment for use with
mobile phones or holders adapted for mobile phones, in
which the combination of holder and mobile phone
functions as a camera or a photographic apparatus;
photographic cameras; digital cameras; photographic
equipment for use with mobile phones, namely, holders
specially adapted for use with phone cameras;
photographic flash apparatus, namely, flash bulbs.
As compared to the existing ID, in the following description the matter Applicant
seeks to delete is in strikethrough text while new matter is in bold:
Photographic apparatus and instruments, namely, holders
specifically adapted for use with mobile phones; mounting
devices for photographic equipment; but not including any
such goods being photographic equipment for use with
mobile phones or holders adapted for mobile phones, in
which the combination of holder and mobile phone
functions as a camera or a photographic apparatus;
photographic cameras; digital cameras; photographic
equipment for use with mobile phones, namely, holders
specially adapted for use with phone cameras;
photographic flash apparatus, namely, flash bulbs
computer application software for mobile phones,
namely, software for use for connecting holders
specifically adapted for use with a mobile phone to
said mobile phone, in which the combination of
holder and mobile phone functions as a camera.

3 On February 28, 2018, while this proceeding was pending, the USPTO processed a
restriction notice from the World Intellectual Property Organization International Bureau
amending the identified goods.
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Although Applicant argues that the proposed amendment “is clearly limiting in
nature,” we do not agree. First, the current description specifically excludes goods “in
which the combination of holder and mobile phone functions as a camera,” while these
goods are included in the amended ID. Second, the amendment would add computer
application software. Both are plainly beyond the scope of the current identification.
Therefore, the proposed unconsented amendment is unacceptable because it does not
meet the first requirement for such amendments, that is, it does not limit the
identified goods. We therefore deny the motion to amend.
C. Motion to Dismiss
We turn now to Applicant’s motion to dismiss. As explained in the Board’s
February 5, 2018 order, a motion to dismiss under FED. R. CIV. P. 12(b)(6) is a test of
the legal sufficiency of a complaint. See Advanced Cardiovascular Sys. Inc. v. SciMed
Life Sys. Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); NSM Res. Corp.
v. Microsoft Corp., 113 USPQ2d 1029, 1032 (TTAB 2014). To survive such a motion,
a plaintiff need only allege sufficient factual matter as would, if proved, establish that
(1) the plaintiff has standing to maintain the proceeding, and (2) a valid ground exists
for opposing or cancelling the registration of the mark. Lipton Indus., 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, 678 (2009)
(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In the context
of an opposition proceeding before the Board, a claim has facial plausibility when a
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plaintiff pleads factual content that allows the Board to draw a reasonable inference
that the party has standing and that a valid ground for refusing registration
exists. See Twombly, 550 U.S. at 570.
1. Amended Pleading
In its February 5, 2018 order, the Board found that Dr. Wendelken did not
adequately plead a real interest in this proceeding or a reasonable basis for his belief
of damage. 9 TTABVUE 3. The amended notice of opposition states, inter alia:
Opposer is firstly amending its pleadings to state that the
Opposer is BioVisual Technologies LLC, the record owner
of the trademark PICTZAR Reg. No. 3063331 registered
February 28, 2006. Dr. Martin E. Wendelken is the
President of BioVisual Technologies LLC and owns all of
the shares of the LLC which is, in effect, his alter ego.
10 TTABVUE 2. Opposer further alleges that:
1. Opposer has standing.
2. Opposer has a reasonable basis for its belief of damage.
3. Opposer owns the Registration No. 3063331 for PICTZAR.
4. The mark PICTZAR is valid and distinctive.
5. Opposer has priority of use starting about twelve (12) years ago.
Id. at 4. The only ground for opposition identified in the amended notice is priority
and likelihood of confusion with the mark in Registration No. 3063331 under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d).
2. Parties’ Arguments
Applicant argues in the pending motion to dismiss that, in the amended notice of
opposition, Opposer again failed to plead his standing:
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5. BioVisual Technologies LLC is a different legal person
or entity than the person who filed the opposition. Because
no motion to allow the substitution of parties has been
filed, the opposer in this proceeding remains Martin
Wendelken. As the Board found in its February 5 order,
Mr. Wendelken does not have standing to maintain this
cancellation.
6. The Board gave Mr. Wendelken thirty days to file an
amended pleading consistent with its order, or the Board
would dismiss the opposition with prejudice. 9 TTABVUE
5. Because Mr. Wendelken has not done so, and BioVisual
Technologies LLC is not a recognized party, the Board
should dismiss the “Amended Trademark Statement of
Opposition.” Either Mr. Wendelken or BioVisual
Technologies could then challenge Applicant’s registration
once it issues if they retain an interest in Applicant’s mark.
14 TTABVUE 3. Applicant also points out in its reply that Opposer has not filed a
transfer of the pleaded registration from BioVisual Technologies LLC to
Dr. Wendelken. 17 TTABVUE 2-3. In response, Opposer accuses Applicant of
gamesmanship and contends that the motion should be denied, arguing in part that:
3. The original opposition against PICTAR was filed pro-
se in the name of Dr. Martin E. Wendelken, the President
and sole owner of BioVisual Technologies, LLC.
4. The record owner of the PICTZAR Registration No.:
306,331 [sic] registered February 28, 2006 is BioVisual
Technologies, LLC.
5. BioVisual Technologies, LLC by its sole shareholder
Martin E. Wendelken transfers the interest in PICTZAR to
Martin E. Wendelken. Situation solved!
6. Martin E. Wendelken has the authority to transfer the
ownership in the PICTZAR [sic] as he so determines.
15 TTABVUE 2-3.4

4 Opposer also made arguments concerning examination of the subject application, which we
do not find relevant to determination of the motion to dismiss.
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3. Analysis
As noted supra, the subject application was filed under the Madrid Protocol
pursuant to Section 66(a) of the Trademark Act. Madrid Protocol applications are
treated differently from other applications in many key respects. Distileria Serralles,
Inc. v. Kabushiki Kaisha Donq, 125 USPQ2d 1463, 1465 (TTAB 2017). In particular,
the Electronic System for Trademark Trials and Appeals (ESTTA) cover sheet
performs an integral function in cataloging and reporting to the WIPO International
Bureau information on oppositions filed against Madrid applications. Id. As the
Board explained in CSC Holdings, LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960
(TTAB 2011):
In the case of oppositions against 66(a) applications, the
ESTTA electronic form plays an additional, vital role. As
discussed below, when an opposition is instituted, the
USPTO must so notify the International Bureau (“IB”) of
the World Intellectual Property Organization, informing it
of certain information required under U.S. law
implementing the Madrid Protocol. This notice must be
sent within strict time limits, and any USPTO failure to
fully and timely notify the IB may result in the opposition
being limited by the information sent or dismissed in its
entirety. In order to avoid any deficiency in the IB
notification and to ensure that it is timely sent, the ESTTA
electronic form collects all necessary information and
automatically sends the required notice to the IB.
See also Trademark Manual of Examining Procedure (TMEP) § 1904.04 (Oct. 2017).
When a notice of opposition is uploaded for filing against a Section 66(a)
application, after confirming that the application is ripe for opposition, ESTTA allows
the opposer to identify the grounds for opposition, as well as the registrations of which
it claims ownership and on which it relies as a basis for its opposition.
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Distileria Serralles, 125 USPQ2d at 1465. ESTTA also permits an opposer to identify
common-law rights in a mark as a basis for its asserted claims. Id.
Trademark Rule 2.107(b), 37 C.F.R. § 2.107(b), provides as follows:
(b) Pleadings in an opposition proceeding against an
application filed under section 66(a) of the Act may be
amended in the same manner and to the same extent as in
a civil action in a United States district court, except that,
once filed, the opposition may not be amended to add
grounds for opposition or goods or services beyond those
identified in the notice of opposition, or to add a joint
opposer. The grounds for opposition, the goods or services
opposed, and the named opposers are limited to those
identified in the ESTTA cover sheet regardless of what is
contained in any attached statement.
See also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 507.01
(2018).
In this proceeding, the ESTTA cover sheet lists Martin E. Wendelken as the sole
opposer, and Registration No. 3063331 as the only mark cited by Opposer as the basis
for the opposition. No common-law marks are pleaded.
The owner of the pleaded registration is BioVisual Technologies, L.L.C., not
named opposer Dr. Wendelken.5 Opposer relies on FED. R. CIV. P. 25(c), which
provides in part that: “If an interest is transferred, the action may be continued by or
against the original party . . . .” As stated supra, Opposer first attempted to amend
his pleading to name BioVisual Technologies LLC as the opposer, then instead
purportedly transferred the pleaded registration from BioVisual Technologies LLC to

5 See December 16, 2016 Office Action at TSDR 2 in the file of the involved application, which
is automatically of record in this proceeding. Trademark Rule 2.122(b)(1), 37 C.F.R.
§ 2.122(b)(1).
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Dr. Wendelken by way of his response to the pending motion to dismiss. This course
of action does not satisfy the Board’s February 5, 2018 order because Dr. Wendelken
did not own the pleaded registration when he filed the notice of opposition and
therefore lacked standing to bring an opposition based on that registration. The
timeliness requirements of Trademark Act 13(a), 15 U.S.C. § 1063(a), for the filing of
an opposition are statutory and cannot be waived by the Board. Once a timely notice
of opposition has been filed, and the time for opposing has expired, the right to pursue
the filed case is a right individual to a timely filer, and the issue concerned is what
rights that opposer has in the pleaded mark vis-à-vis the applicant.
Nor would Trademark Rule 2.107(b) permit amendment of the notice to rely on
any common-law rights Dr. Wendelken may have been able to plead. As explained
supra, the ESTTA filing system permits an opposer opposing an application under
Section 66(a) to identify all marks on which it intends to rely at trial as a basis for its
asserted claims, including unregistered marks used for particular goods or services
and in which the opposer believes it has acquired common-law rights. Because the
information provided to the IB is limited to that which the opposer specifically selects
or sets forth on the ESTTA cover sheet, Opposer’s failure to identify any common-law
rights in the PICTZAR mark on the ESTTA cover sheet would preclude Opposer from
now relying on common-law rights as a basis for its asserted claim. See Trademark
Rule 2.104(c), 37 C.F.R. 2.104(c); Distileria Serralles, 125 USPQ2d at 1467-68 (stating
that opposer would impermissibly expand scope or basis of Section 2(d) claim by
adding common-law rights not previously identified on ESTTA cover sheet).
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Accordingly, Opposer’s proposal to correct its pleading error through transfer of
the pleaded registration would be futile with respect to this application, and
Applicant’s motion to dismiss the amended notice of opposition pursuant to FED. R.
CIV. P. 12(b)(6) is granted. See Compagnie Gervais Danone v. Precision Formulations
LLC, 89 USPQ2d 1251, 1256 n.9 (TTAB 2009).
D. Conclusion
Applicant’s motion to amend its application is DENIED and this proceeding is
DISMISSED with prejudice pursuant to FED. R. CIV. P. 12(b)(6).6

6 As noted by Applicant, where a party does not commence an opposition proceeding, its
remedy may lie in filing a petition for cancellation pursuant to Section 14 of the Trademark
Act, 15 U.S.C. § 1064, if and when the subject application matures into a registration.