Sophia Stewartv.Warner Bros. Entertainment Inc.

Trademark Trial and Appeal Board

Feb 5, 2015

No. 92058387 (T.T.A.B. Feb. 5, 2015)

CME Mailed: February 5, 2015 Cancellation No. 92058387 Sophia Stewart v. Warner Bros. Entertainment Inc. Before Quinn, Mermelstein and Adlin, Administrative Trademark Judges. By the Board: Pro se Petitioner seeks cancellation of Registration No. 3408950 for the mark ENTER THE MATRIX, in typed format, for “Motion picture films featuring drama, action, adventure and animation, audio video discs, and digital versatile discs featuring music, drama, action, adventure, and animation; CD ROM games; all featuring fictional characters and elements from the hit 1999 science fiction motion picture and its sequels, in which a computer hacker learns the true nature of his reality and joins a group of rebels in a war against oppressive controllers in a futuristic world.”1 In her amended petition for cancellation, Petitioner asserts claims of fraud and references various other claims and statutory provisions. 1 Registered on April 8, 2008; based on a claim of first use of May 15, 2003. 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 Cancellation No. 92058387 -2- In lieu of filing an answer, on April 17, 2014 Respondent filed a motion to dismiss Petitioner’s amended petition for cancellation. On August 13, 2014, after Respondent’s motion was fully briefed, the Board issued an order (the “Prior Order”) noting that Respondent’s motion rests, in part, on the doctrine of collateral estoppel based on the decisions of two federal district courts in cases involving the same parties: (1) Stewart v. Wachowski, et al., 574 F. Supp. 2d 1074 (C.D. Cal. 2005) (“Federal Case I”); and (2) Stewart v. Warner Bros. Entm’t Inc. et al., 12-CV-01875-PMP-GWF (D. Nev. 2012) (“Federal Case II”) (collectively the “Federal Cases”). See Prior Order, p. 2. Accordingly, the Board allowed supplemental briefing on the motion in part as one for summary judgment with respect to the issue of collateral estoppel. See id. In accordance with the Prior Order, on September 2, 2014, Petitioner filed a supplemental response brief and evidence, and Respondent filed a timely reply brief to Petitioner’s supplemental response. In deciding this motion, we have considered all of the parties’ original and supplemental briefs on Respondent’s combined motion, with one exception. We have not considered or even reviewed Petitioner’s three (3) surreplies, filed May 23, 2014, September 29, 2014 and September 30, 2014, because Trademark Rule 2.127(a) and (e) prohibits surreplies.2 See Trademark Rule 2 On May 27, 2014 and October 3, 2014, Respondent filed “objection[s]” to Petitioner’s surreplies and on October 7, 2014, Petitioner filed a response to Respondent’s October 3, 2014 “objection.” Because Trademark Rule 2.127(a) and (e) prohibits surreplies, we need not consider Respondent’s “objection[s]” or Petitioner’s response thereto. Respondent is reminded that it is not necessary to file and the Board discourages motions seeking to strike or “object” to surreplies, since surreplies Cancellation No. 92058387 -3- 2.127(a) and (e) (allowing the Board to consider reply briefs, but providing that “[t]he Board will consider no further papers in support of or in opposition to a motion”); see also No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000); TBMP § 502.02(b) (2014). Motion to Dismiss Respondent argues for dismissal of this proceeding on the ground that Petitioner has not adequately pleaded her standing or a claim upon which relief can be granted. Respondent asserts that Petitioner’s allegations of standing are “vague and unclear” and “are not supported by a single factual allegation.” Motion, pp. 8 and 10. As for Petitioner’s alleged grounds for cancellation, Respondent asserts that Petitioner has failed to plead fraud with particularity as required by Fed. R. Civ. P. 9., and that the other claims and statutory provisions referenced in the amended petition are outside of the Board’s jurisdiction, irrelevant or time-barred. See id. at pp. 6-7 and 12- 17. In response, Petitioner argues that Respondent filed the instant motion “to avoid answering the Petition,” but does not respond to the merits of Respondent’s assertions that Petitioner has failed to adequately allege her standing and a valid ground for cancellation. Instead, Petitioner rehashes various issues addressed in the Federal Cases and mentioned in her amended complaint. See TTABVUE # 16, p. 3 and document generally. will not be considered whether or not a motion to strike or an “objection” is filed. TBMP § 517. Cancellation No. 92058387 -4- A motion to dismiss under Fed. R. Civ. P. 12(b)(6) is a test of the sufficiency of the complaint. To survive a motion to dismiss, a claimant need only allege sufficient factual matter as would, if proved, establish that: (1) she has standing to maintain the claims; and (2) a valid ground exists for cancelling the registration. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982). “For purposes of determining the motion, all of [the claimant’s] well-pleaded allegations must be accepted as true, and the [claims] must be construed in the light most favorable to [the claimant]. The pleading must be construed so as to do justice, as required by Fed. R. Civ. P. 8(e).” Petroleos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010). The purpose of the standing requirement is to prevent mere intermeddlers from initiating proceedings. Accordingly, to sufficiently allege standing within the meaning of Section 14 of the Trademark Act, 15 U.S.C. § 1064, a petitioner must plead facts sufficient to show that she has a direct and personal stake in the outcome of the cancellation proceeding and a reasonable basis for her belief that she will be damaged. See Ritchie v. Simpson, 170 F.3d 1092, 1098, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999). The focus must be on whether the petitioner has pleaded a reasonable basis for her belief in damage; there is no requirement that any actual “damage” be pleaded to establish standing or even to prevail in a cancellation proceeding. Cancellation No. 92058387 -5- As for whether a claimant has sufficiently alleged a valid ground for cancellation, the complaint “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In particular, a claimant 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, 678 (citing Twombly, 550 U.S. at 555). With respect to standing, the amended petition for cancellation sets forth the following allegations: (1) “On January 28, 2013, Michael Bentkover, Senior Legal Counsel of Warner Bros. contacted Amazon to restrain me in trade, as he confessed ‘Matrix 4 Evolution: Cracking the Genetic Code’ written by me is a substantially similar body of work to ‘The Matrix.’ There are as a result specific facts showing that there is a genuine issue [sic] cancelling Warner Bros. Trademark.”; Amended Complaint, p. 7; (2) “The registered mark ‘ENTER THE MATRIX’ is a derivative owned by me, because Warner Bros. copied verbatim graphics and other protective [sic] expression from copy written [sic] source work. Warner Bros. [sic] proposed mark is copied verbatim in appearance to the registered mark and incorporates the dominant term MATRIX with the Warner Bros [sic] fraudulently procured mark merely adding the word ENTER.” Id. at p. 9; (3) “Petitioner was injured by the willful fraudulent procurement of the Enter the Matrix Trademark.” Id. at p. 10; (4) “On October 6, 2011, Kate Chilton, S.V.P. of Warner Bros. legal Department sent correspondence to Netflix, and Amazon instructing those companies to stop selling ‘The Third Eye’ book. Cancellation No. 92058387 -6- The arbitrary and capricious acts were designed to injure the petitioner and restrain [Petitioner] in trade.” Id.; (5) “The petitioner, Stewart, has been injured and suffered some damage over $3 billion dollars3 as a result of the fraud.” Id. at p. 11; and (6) “Enter The Matrix trademark use [sic] made is [sic] based on copyrighted work from the Third Eye.” Id. These allegations are not sufficient to plead Petitioner’s standing. While Petitioner alleges that “Warner Bros.[’] proposed mark is copied verbatim in appearance to the registered mark” Petitioner does not identify the purported “registered mark” or the goods or services it covers and has not alleged that she owns the “registered mark.”4 Similarly, Petitioner has not sufficiently pleaded how her purported ownership of a copyright in the ‘Third Eye’ could serve as a basis for standing in this trademark cancellation proceeding. Indeed, Petitioner has not alleged how the involved mark is a “derivative of” or “based on” any of her alleged copyrighted material. 3 To the extent Petitioner seeks damages in this action, she is advised that the Board has no authority to award damages. See General Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011); cf. Central Manuf. Inc. v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) (“[T]he Board does not impose monetary sanctions or award attorneys’ fees or other expenses[.]”) 4 In her supplemental response brief, Petitioner asserts ownership of Application Serial No. 85243232 for the mark THE MATRIX. See Supplemental Response, p. 7. Pleading ownership of this application and alleging, if true, that the application has been refused based on the involved registration, or that Petitioner has a reasonable belief that registration will be refused, would be sufficient to allege Petitioner’s standing. See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Kallamni v. Khan, 101 USPQ2d 1864, 1865 (TTAB 2012); see also TBMP § 309.03. Cancellation No. 92058387 -7- The closest Petitioner comes to adequately pleading standing is the allegation that Respondent “contacted Amazon to restrain me in trade, as he confessed ‘Matrix 4 Evolution: Cracking the Genetic Code’ written by me is a substantially similar body of work to ‘The Matrix.’ Id. at p. 7. “It is not an absolute requirement that a party have proprietary rights in a mark in order to maintain” a cancellation action. Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77 (TTAB 1988). Indeed, the Board has held that a claimant’s non-trademark use of a term, its continued right to use that term, and receipt of a cease and desist letter from the defendant objecting to a claimant’s use of the term is sufficient to demonstrate a claimant’s real interest in the proceeding. See id. While Petitioner has alleged use of a portion of the involved mark in the title of a copyrighted work, she has not specified the basis for Respondent’s purported objection to Amazon. Moreover, Petitioner’s allegations of “a substantially similar body of work,” “derivative” work, “copy written [sic] source work,” and copying “verbatim” suggest that the dispute concerns copyrights. If Respondent objected to the Matrix 4 work only on grounds of copyright infringement, as the allegations imply, it is unclear how such an objection could form the basis for standing to maintain this trademark cancellation action. If, however, Respondent objected to the Matrix 4 work based on rights in the involved mark, such objection coupled with Petitioner’s alleged use of the term “Matrix” in the title of a work might be sufficient to plead Petitioner’s standing. Cancellation No. 92058387 -8- We next consider whether Petitioner has adequately stated a claim upon which relief can be granted. The original petition for cancellation was filed December 13, 2013, which was more than five years after issuance of the involved registration. As such, the available grounds for cancellation are strictly limited to those grounds set forth in 15 U.S.C. § 1064(3). Accordingly, Petitioner’s allegations regarding purported dilution, descriptiveness or that the involved mark is the title of a single creative work are time-barred, and can be given no consideration. Similarly, allegations that Respondent incorrectly sought and received registration for goods in International Class 9 rather than for services in International Class 41 and filed an amendment impermissibly broadening the scope of the goods identified in the underlying application are ex parte examination issues that do not form the basis for a cancellation action against any registration let alone a registration more than five years old, like the one here. See e.g., Flash & Partners S.P.A. v. I.E. Mfg. LLC, 95 USPQ2d 1813, 1816 (TTAB 2010) (explaining that ex parte examination issues do not form a basis for a cancellation action). In addition, as the Board has previously explained, the Board’s jurisdiction is limited to determining only the right to register a trademark. See Board’s order of February 27, 2014, p. 1. Accordingly, allegations in the amended petition concerning purported perjury, “antitrust conspiracy,” “conspiracy against trade,” copyright infringement, trademark infringement, racketeering, RICO violations, wire fraud, and violations of the Economic Espionage Act are Cancellation No. 92058387 -9- outside of the Board’s jurisdiction and cannot be considered. See e.g., McDermott v. San Francisco Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (Board does not have authority to determine whether a party has engaged in criminal or civil wrongdoings), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008); Carano v. Vina Concha y Toro S.A., 67 USPQ2d 1149, 1152 (TTAB 2003) (Board has no jurisdiction to determine a copyright infringement claim that does not concern the involved mark); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1771 n.5 (TTAB 1994) (no jurisdiction over claims of trademark infringement and unfair competition), aff’d mem., 108 F.3d 1392 (Fed. Cir. 1997); Yasutomo & Co. v. Comm. Ball Pen Co., 184 USPQ 60, 61 (TTAB 1974) (no jurisdiction to address anti-trust issues); Am.-Int’l Travel Srvc., Inc. v. AITS, Inc., 174 USPQ 175, 179 (TTAB 1972) (no jurisdiction to determine alleged violations of criminal statute). The amended petition makes passing reference to deceptiveness, and abandonment - two claims that are available against a registration that is more than five years old - but no such claims have been adequately pleaded. To set forth a claim for abandonment, a plaintiff must allege facts that “set forth a prima facie case of abandonment by a pleading of at least three consecutive years of non-use or must set forth facts that show a period of non- use less than three years coupled with an intent not to resume use.” Otto Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (internal Cancellation No. 92058387 -10- citation omitted). To plead a claim that a mark is deceptive, a plaintiff must allege that: (1) the applied for mark consists of or contains a term that misdescribes the character, quality, function, composition or use of the goods; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and (3) the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods. See, e.g. In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006). The amended petition is devoid of sufficient factual allegations to adequately plead abandonment or deceptiveness. The only possible remaining claim in the amended petition is 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., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009); Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010). 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), which is made applicable to Board proceedings by Trademark Rule 2.116(a). See Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478-79 (TTAB 2009) (“[T]he pleadings [must] contain explicit rather than implied expression of the circumstances Cancellation No. 92058387 -11- constituting fraud.”). 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. Petitioner makes numerous allegations regarding purportedly false statements, many of which are not understandable5 or do not provide a viable basis for a claim of fraud.6 The only possible viable basis for a fraud claim that we have been able to discern in the amended complaint is that Respondent was not using the mark in connection with all of the goods identified in the application at the time Respondent filed its allegation of use. With respect to such a claim, Petitioner has alleged that: • Respondent’s attorney “made a fraudulent statement regarding the mark’s use.” Amended Petition, p. 2; 5 For example, the amended complaint includes the following allegations suggesting that Petitioner may have intended to allege fraud on the ground that the involved mark is not, in fact, a mark, but rather is the title of a single creative work: (1) “The trademark office [sic] has stated that it will not register titles of single creative works, DVD class 9 under this legal doctrine….” Amended Petition at p. 3; (2) “Enter The Matrix the video game; a single-work title was approved for publication (and has been published), notwithstanding a statement of record by the register’s [sic] materially false statement on the application that the mark relates to a single motion picture.” Id. at. p. 5; and (3) “Failure to disclose that the mark is the title of a single work constitutes fraud on the Trademark Office because the omission of the fact that the goods are not a service or a movie.” Id. These allegations, however, are not sufficiently clear and are not otherwise sufficient to meet the heightened pleading requirement for a claim of fraud. 6 As explained supra, p. 8, allegations that Respondent incorrectly filed an application for goods in International Class 9 rather than for services in International Class 41 and filed an amendment impermissibly broadening the scope of the goods identified in the underlying application are ex parte examination issues. As such, they cannot form the basis for a claim of fraud. Similarly, Respondent’s purported misappropriation of Petitioner’s copyrighted work ‘The Third Eye’ in creating ‘The Matrix’ trilogy of films is not material to Respondent’s registration of the word mark ENTER THE MATRIX. Cancellation No. 92058387 -12- • “The mark is in use but not on all the goods and services listed in the application…. When [Respondent] filed its statement of intent or use in response to the notice of allowance, the mark was not in use on the movie, film, television, etc.” Id. at p. 3; • “[S]uch a false misrepresentation to the office [sic] material because use is required to get a registration for each good or service listed.” Id.; • “There is no question that the USPTO would not have granted [sic] registration covering goods or service [sic] that the mark is not being used [sic] because of a fraudulent class 09 instead of class 41 [sic].” Id.; • “[Respondent], in failing to disclose these facts to the Trademark Office, intended to procure a registration to which [Respondent] was not entitled.” Id.; and • “Avis Frazier-Thomas, being a former examining attorney knew procedural law and protocol. Signing the declaration was willful intent, in addition, the oath of use includes statements, such as the possibility of imprisonment or fine for false statements that inject ‘ [sic] such solemnity ‘ [sic] to prompt through [sic] investigation before signature and submission to the trademark office [sic]. Thomas, who signed the oath, was ‘clearly in a position to (or to inquire) [sic] as to the truth of the statements therein.” [sic]. Id. These allegations fail to state a claim for fraud upon which relief can be granted because Petitioner has not alleged that Respondent “knew” its allegation of use was false.7 Importantly, Petitioner also has not alleged any facts to support its bald allegation that Respondent filed a false allegation of use. Because Petitioner has failed to adequately allege her standing or a claim upon which relief can be granted, Respondent’s motion to dismiss is GRANTED. Whether Petitioner should be allowed an opportunity to replead 7 As Respondent points out, an allegation that an applicant or registrant “should have known” of the falsity of its statement is not sufficient to plead or prove a claim of fraud. In re Bose Corp., 91 USPQ2d at 1940. Cancellation No. 92058387 -13- turns on whether she is precluded from establishing standing based on the Federal Cases. We address this issue below. Motion for Summary Judgment Respondent argues that Petitioner is collaterally estopped from establishing standing in this proceeding “because [two district] courts already have held that she has no real interest under any cognizable theory.” Motion at pp. 11-12. More specifically, Respondent asserts that in Federal Case II “[t]he Nevada district court found that Petitioner’s use of the term MATRIX postdates any claimed use of the term by [Respondent], and thus, Petitioner could not establish priority…. In addition, the California district court [in Federal Case I] held that [Respondent] and the other defendants had adduced uncontroverted evidence that the creators of The Matrix Movies did not have access to Petitioner’s works and thus Petitioner could not establish copyright infringement.” Id. at p. 11. Petitioner argues that the issues in the Federal Cases “are not identical issues to the grounds in the present case,” Supplemental Response, pp. 1-2; that “no parties were ever summoned (nor [sic] lawsuit ever took [sic] place)” in Federal Case II because she “withdrew the petition and the action was dismissed,” id. at p. 2; that Federal Case I “was dismissed without prejudice; therefore Petitioner is not stopped [sic] from attempting to assert [sic] same counterclaims in [sic] subsequent petition to cancel,” id. at p. 3; that she has submitted a “Report and recommendation from the U.S. District Court of Cancellation No. 92058387 -14- Utah … affirming facts that Petitioner Stewart is the Writer and Owner of the derivative Matrix and Terminator movies,” id.; that “the issue of ownership of the trademark registration, had not been decided or litigated” in Federal Case I, id. at p. 4; that Respondent “was not a party to [Federal Case I]. It was Warner Bros. Studio,” id.; and that Federal Case I “was not decided on [sic] merits because it was never prosecuted, the matter was dismissed for failure to prosecute. No valid final judgment. [sic]” id. at p. 6. Summary judgment is only appropriate 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 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, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). 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. Cancellation No. 92058387 -15- 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 1542. In order for issue preclusion to apply, the following requirements must be met: 1) the issue to be determined must be identical to the issue involved in the prior litigation; 2) the issue must have been raised, litigated and actually adjudged in the prior action; 3) the determination of the issue must have been necessary and essential to the resulting judgment; and 4) the party precluded must have been fully represented in the prior action. See Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1313 (Fed. Cir. 2005). For the reasons discussed below, we find that issue preclusion has not been established with respect to Petitioner’s standing. In Federal Case II, the Nevada district court screened Petitioner’s complaint and amended complaints on its own initiative, pursuant to 28 USC § 1915(e) and: (1) Dismissed Petitioner’s trademark infringement claim with prejudice on the ground that such a claim had not been sufficiently pleaded and the deficiencies could not be cured. See Motion at Exhibit B, p. 3 and Exhibit C, p. 3. In reaching this determination, the district court explained that Petitioner had alleged copyrights in the works ‘Third Cancellation No. 92058387 -16- Eye’ and ‘Matrix 4’ but she had not “allege[d] that she ha[d] registered either title as a trademark”; that Petitioner had not “alleged that [Respondent] created ‘confusion in the marketplace’ by using the title or name ‘Third Eye’ for any of its products”; and that Petitioner’s “copyright for the ‘Matrix 4’ work postdates [Respondent’s] use of the ‘Matrix’ name.” Id. at Exhibit B, p. 3; (2) Dismissed8 Petitioner’s copyright infringement claim as improperly pleaded and determined that the deficiencies could not be cured. The court reasoned that although Petitioner pleaded ownership of copyrights in ‘Third Eye’ and ‘Matrix 4’ she did not allege “that any aspect of the Picture in question [Cloud Atlas] or its advertisements [claiming that the Picture is from the creators of the Matrix Trilogy of films] copie[d] a constituent part of ‘Third Eye’ or ‘Matrix 4.’” Id. at Exhibit C, p. 3; (3) Dismissed, with prejudice Petitioner’s claim for unfair trade practices under Section 5(a) of the Federal Trade Commission Act because the FTC Act does not provide for a private cause of action. See id. at Exhibit B, pp. 4-5 and Exhibit C, p. 3; and (4) Allowed Petitioner time to file an amended complaint setting forth only a properly pleaded Sherman Act claim. See id. at Exhibit C, pp. 4- 5. 8 It is unclear from the exhibits attached to Respondent’s motion whether Petitioner’s copyright claim was dismissed with prejudice. Cancellation No. 92058387 -17- Petitioner filed an amended complaint, but did not limit her allegations to a Sherman Act claim. Before the court could act, Petitioner withdrew her complaint resulting in the district court’s dismissal of Petitioner’s complaint and petition for injunctive relief, with prejudice. See id. at Exhibit E. In Federal Case I, Petitioner alleged that Respondent and others willfully infringed certain of her copyrighted literary works by making and distributing the Matrix trilogy of films.9 See id. at Exhibit A, Stewart v. Wachowski, et al., 574 F.Supp.2d 1074, 1078 (C.D. Cal. 2006). The district court granted Respondent’s motion for summary judgment finding that there was no genuine dispute of material fact that Respondent and its co- defendants did not have access to Petitioner’s protected work and that Respondent’s works were not strikingly similar to Petitioner’s works. Id. at pp. 1098 and 1109. In reaching its decision, the district court did not consider whether Petitioner owned a valid copyright because neither Respondent nor its co-defendants disputed that allegation. Id. at p. 1085. The first element of issue preclusion has not been met because standing to maintain this cancellation action involving registration of the mark ENTER THE MATRIX is separate and distinct from whether Petitioner can maintain trademark and copyright infringement actions against Respondent. That is, simply because the Nevada district court found that Petitioner could not maintain a claim for trademark infringement because it could not allege 9 The district court also dismissed Petitioner’s RICO claim, and in the alternative, granted summary judgment to Respondent on Petitioner’s RICO claim. Id. at pp. 1082 and 1110-11. Cancellation No. 92058387 -18- priority in Matrix 4, and the California district court denied Petitioner’s claim for copyright infringement, does not dictate that Petitioner is precluded from establishing standing here as Petitioner need not allege a prior right or any proprietary right to demonstrate standing in this proceeding.10 See supra, p. 6, n.4 and p. 7. Accordingly, Respondent is DENIED summary judgment on issue preclusion.11 Time to Replead In view of the foregoing, we find it appropriate to allow Petitioner an opportunity to replead. Accordingly, Petitioner is allowed until thirty (30) days from the mailing date of this order in which to file a second amended petition for cancellation which: (1) complies with Trademark Rule 2.112(a); (2) sufficiently alleges Petitioner’s standing and an available ground for 10 This case is distinguishable from Stephen Slesinger Inc. v. Disney Enters. Inc., 98 USPQ2d 1890 (TTAB 2011), aff’d 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012), cert den., 134 S. Ct. 125 (2013). In Slesinger, the Board found that the “key issue” to be decided in the consolidated Board actions was the same as the issue involved in the prior civil action, namely, whether complainant “has an ownership interest in the Pooh works” because “in order to prevail on its substantive claims of likelihood of confusion or dilution, or at least proceed to trial on its claims, [claimant] bears the burden of establishing that it owns ‘a mark or trade name previously used … and not abandoned’ … or that it is ‘the owner of a famous mark.’ …. Likewise, ownership of the Pooh marks is central to [claimant’s] fraud claim and its claim of lack of ownership….” Id. at 1895. Here, Petitioner has not alleged any claims requiring that it establish prior proprietary rights. 11 The parties should note that the evidence submitted in connection with Respondent’s motion for summary judgment is of record only for consideration of that motion. 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 Inst. v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981). Cancellation No. 92058387 -19- cancellation; and (3) omits any irrelevant allegations, including allegations related to matters outside of the Board’s jurisdiction. If Petitioner files a second amended complaint that fails to comply with these requirements, any non-complying claims may be dismissed with prejudice. Respondent is allowed until thirty (30) days from the filing of any second amended complaint to file an answer or otherwise respond. All other dates are reset as follows: Deadline for Discovery Conference 5/4/2015 Discovery Opens 5/4/2015 Initial Disclosures Due 6/3/2015 Expert Disclosures Due 10/1/2015 Discovery Closes 10/31/2015 Plaintiff's Pretrial Disclosures Due 12/15/2015 Plaintiff's 30-day Trial Period Ends 1/29/2016 Defendant's Pretrial Disclosures Due 2/13/2016 Defendant's 30-day Trial Period Ends 3/29/2016 Plaintiff's Rebuttal Disclosures Due 4/13/2016 Plaintiff's 15-day Rebuttal Period Ends 5/13/2016 In each instance, a copy of the transcript of any testimony, together with copies of documentary exhibits, must be served on the adverse party within thirty days after completion of the taking of that testimony. Trademark Rule 2.125. Briefs shall be filed in accordance with Trademark Rule 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129. ***