Trendsettah USA, Inc.v.Hits from the Bong, Inc.

Trademark Trial and Appeal Board

Jun 19, 2017

No. 92063138 (T.T.A.B. Jun. 19, 2017)

BUO
Mailed: June 19, 2017

Cancellation No. 92060645 (Parent)

Hits from the Bong, Inc.

v.

Akrum Alrahib and Trendsettah USA, Inc.

Cancellation No. 92063138

Trendsettah USA, Inc.

v.

Hits from the Bong, Inc.1

Before Lykos, Shaw, and Gorowitz,
Administrative Trademark Judges.

By the Board:
Now before the Board is a motion for summary judgment filed by Hits from the
Bong, Inc. (“HFTB”) in its position as Respondent in Cancellation No. 92063138.
HFTB moves for dismissal of all claims asserted in the petition to cancel filed by
Trendsettah USA, Inc. as untimely compulsory counterclaims that should have been
asserted with the answer in Cancellation No. 92060645. The motion is fully briefed.

1 By Board order, these proceedings were consolidated on November 5, 2016.
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 ORDER IS NOT A
PRECEDENT OF THE
TTAB
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Background
On January 8, 2015, HFTB petitioned to cancel Akrum Alrahib’s Registration No.
4161367 for the mark DR. GREEN THUMB, in standard character format, for
“[c]igars; [and] [t]obacco,” in International Class 34.2
HFTB pleads prior use of the mark DR. GREENTHUMB as the name of an “alter
ego,” and the title of a song, which “has been the subject of numerous remixes.” 1
TTABVUE 3-4, ¶¶ 3 and 5. HFTB also pleads ownership of “U.S. Reg. No. 4,662,290
for ‘musical sound recordings; downloadable musical sound recordings; audiovisual
recordings featuring music and musical performances; downloadable audiovisual
recordings featuring music and musical performances’ in International Class 9 based
on first use in commerce in 1998.”3 Id. at 4, ¶ 7. HFTB also alleges that the subject
mark and HFTB’s DR. GREENTHUMB marks are similar and cover related
products, and therefore, use of the subject mark creates a likelihood of confusion with
HFTB’s pleaded mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). 1
TTABVUE 6, ¶¶ 14-16. Additionally, HFTB alleges that the subject mark “falsely

2 On September 24, 2015, a motion to join Trendsettah USA, Inc. as party-defendant was
filed in light of the assignment of the subject mark to that entity. 11 TTABVUE. The motion
was subsequently granted and Trendsettah joined. 12 TTABVUE.
3 Additionally, HFTB claims ownership of application Serial Nos. 86975292 and 86190265,
both for the mark DR. GREENTHUMB in standard characters. However, pending
applications are evidence only that the applications were filed on a certain date; they are not
evidence of use of the marks. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8
(TTAB 2007); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6
(TTAB 2003).
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suggests a connection with a living person, namely, B-Real,4 in violation of Section
2(a) of the Lanham Act, 15 U.S.C. § 1052(a).” Id., ¶ 17.
An answer to the petition to cancel was filed on Mr. Alrahib’s behalf on February
4, 2015, denying the salient allegations thereof, and asserting the following five
“affirmative defenses”: (1) no likelihood of confusion based on disparity of the goods;
(2) sophisticated consumers and differing channels of trade; (3) no false suggestion of
a connection inasmuch as “Petitioner is attempting to establish exclusivity over the
usage of DR. GREEN THUMB through a song title;” (4) laches; and (5) waiver,
acquiescence and estoppel. 5 TTABVUE 4-5, ¶¶ 19-23.
While the ’645 proceeding was ongoing, newly joined party, Trendsettah filed a
separate petition to cancel HFTB’s pleaded Registration No. 4662290 – Cancellation
No. 92063138. As grounds for that cancellation, Trendsettah asserts, “registration of
DR. GREENTHUMB should be cancelled because its registration violates the single
creative works doctrine and appears, on information and belief, to have been nakedly
licensed to and/or among various parties.” 1 TTABVUE 4, ¶ 2 (92063138).
Trendsettah also alleges, “the mark DR. GREENTHUMB by Respondent was void ab
initio and/or is descriptive or generic for Mr. Freese,” and that due to the naked
licensing of the mark “should be deemed abandoned and/or otherwise unenforceable.”
Id. at 5, ¶¶ 6(i) and (iii).
HFTB filed an answer denying the salient allegations of the petition to cancel, and
asserted two of its own “affirmative defenses”: (1) failure to state a claim upon which

4 “B-Real” is another alias, or stage name, for Mr. Louis Freese, a member of the music group
Cypress Hill.
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relief can be granted; and (2) “Petitioner’s claims were compulsory counterclaims in
Cancellation No. 92060645 and thus Peitioner [sic] has waived them by not asserting
them in conjunction with its answer in Cancellation No. 92060645.” 5 TTABVUE 3,
¶¶ 7-8 (92063138).
Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus allowing resolution as a matter of
law. See Fed. R. Civ. P. 56(c). In deciding motions for summary judgment, the Board
must follow the well-established principles that, in considering the propriety of
summary judgment, all evidence must be viewed in a light favorable to the non-
movant, and all justifiable inferences are to be drawn in the non-movant’s favor. The
Board may not resolve disputes of material fact; it may only ascertain whether such
disputes exist. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d
847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The burden is on the party moving for summary judgment to demonstrate the
absence of any genuine dispute of material fact, and that it is entitled to summary
judgment as a matter of law. Fed. R. Civ. P. 56(c). When a moving party’s motion for
summary judgment is supported by evidence sufficient to indicate that there is no
genuine dispute as to any material fact and that the moving party is entitled to
judgment, the burden shifts to the non-moving party to demonstrate the existence of
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at least one genuine dispute as to a material fact that requires resolution at trial. The
non-moving party may not rest on the mere allegations of its pleadings and
assertions, but must designate specific portions of the record or produce additional
evidence showing the existence of a genuine dispute as to a material fact for trial.
Consequently, factual assertions, without evidentiary support, are insufficient to
defend against a motion for summary judgment. See Hornblower & Weeks Inc. v.
Hornblower & Weeks Inc., 60 USPQ2d 1733, 1739 (TTAB 2001) (“applicant has
produced no evidence, or raised any expectation that at trial it could produce
evidence….”).
HFTB argues that “there can be no dispute that all of Trendsettah’s claims in this
proceeding were compulsory counterclaims in the Prior Cancellation Proceeding, and
thus they were waived when Trendsettah failed to assert them in its answer in the
prior proceeding.” 6 TTABVUE 4 (92063138). Specifically, HFTB asserts:
The first ground—that HFTB’s DR. GREENTHUMB mark
is not used as a trademark because it is a nickname for
Louise [sic] Freese—is based on alleged admissions made
by HFTB in the petition in the Prior Cancellation
Proceeding. Thus, obviously this ground was known when
Trendsettah filed its answer in the Prior Cancellation
Proceeding; it was set forth in HFTB’s pleading. The second
ground—that HFTB’s mark is the title of a single work—
also was known to Trendsettah when it filed its answer in
the Prior Cancellation Proceeding because Trendsettah
asserted this ground as an affirmative defense in its
answer in the prior proceeding. The third ground—that
HFTB has nakedly licensed the mark—is based on
information and belief, not newly discovered evidence, and
thus it was known to Trendsettah when it filed its answer.

Id. at 5.

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Trendsettah counters that it “was not the party that answered the petition for
cancellation in Cancellation No. 92060645,” and “[t]hus, any mandatory counterclaim
required at the time the Petition in Cancellation No. [92060645] was answered cannot
be applied to [Trendsettah].” 7 TTABVUE 3 (92063138). Trendsettah argues further,
“discovery was conducted in Cancellation No. 92060645, which discovery revealed a
number of facts not previously known at the time Akrum Alrahib filed his answer in
that separate proceeding.” Id. at 4.
Counterclaims to cancel pleaded registrations in Board proceedings are governed
by Trademark Rule 2.114(b)(2)(i), which provides as follows:
A defense attacking the validity of any one or more of the
registrations pleaded in the petition shall be a compulsory
counterclaim if grounds for such counterclaim exist at the
time when the answer is filed. If grounds for a counterclaim
are known to respondent when the answer to the petition
is filed, the counterclaim shall be pleaded with or as part
of the answer. If grounds for a counterclaim are learned
during the course of the cancellation proceeding, the
counterclaim shall be pleaded promptly after the grounds
therefor are learned.

37 C.F.R. § 2.114(b)(2)(i) (2016).

Trendsettah’s argument that it should not be held to the compulsory counterclaim
rule because it was joined after the answer was filed in the prior proceeding is
unavailing. In order to foster the fair and effective disposition of its cases, the Board
cannot sanction a procedure that would allow a party to cleanse itself of an obligation
simply by assigning away its interest to an assignee, who then denies responsibility
for the obligation of its assignor. Trendsettah has obligations as a party to this now
consolidated proceeding and duties in its role as assignee of the subject registration.
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Indeed, it is well settled that when a mark which is the subject of a federal application
or registration has been assigned, together with the application or registration, in
accordance with Trademark Act Section 10, 15 U.S.C. § 1060, any action with respect
to the application or registration which may or must be taken by the original
applicant or registrant may or must be taken by the assignee (acting itself, or through
its attorney or other authorized representative). See Trademark Rule 3.71(d)
(Prosecution by assignee), Trademark Rule 3.73(b) (Establishing right of assignee to
take action). That is, the assignee steps into the shoes of the assignor and is thus
responsible for the consequences of the assignor’s conduct. See Medtronic AVE Inc. v.
Advanced Cardiovascular Sys. Inc., 58 USPQ2d 1596, 1606 (3d Cir. 2001) (“‘Insofar
as an assignment touches on the obligations of the other party to the underlying
contract, the assignee simply moves into the shoes of the assignor….’ ‘[A]n
assignment is intended to change only who performs an obligation, not the obligation
to be performed.’”) (quoting Citibank, N.A. v. Tele/Resources, Inc., 724 F.2d 266, 269
(2d Cir. 1983); and Capitan Enter., Inc. v. Jackson, 903 S.W.2d 772, 776 (Tex. Ct. App.
1994)). See also CBS Inc. v. Man’s Day Publ’g Co., Inc., 205 USPQ 470, 477 (TTAB
1980) (assignee “must stand in the shoes of the assignor” and “must accept the
consequences of its assignor’s conduct….”). This necessarily includes application of
the compulsory counterclaim rule.
Further Trendsettah’s arguments appear to confuse the sufficient pleading of a
claim with the obligation of proving that claim. At the pleading stage a plaintiff, or
counterclaimant in this case, is not under a burden to prove its case in its
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counterclaim to cancel. See Enbridge, Inc. v. Excelerate Energy Ltd. P’ship, 92
USPQ2d 1537, 1543 n.10 (TTAB 2009). All that is required is that the plaintiff allege
such facts which, if proved, would establish that it has standing and a valid statutory
ground exists for cancelling the pleaded registration.5 Young v. AGB Corp., 152 F.3d
1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998). Further, Trademark Rule 2.114(b)(2)(i)
requires that a claim be advanced if grounds for the claim exist at the time the answer
is filed, not that the counterclaimant prove the claims by way of its pleading.
Therefore, Trendsettah’s argument that the discovery conducted in the ’645
cancellation “revealed a number of facts not previously known” does not negate the
fact that the grounds for its present claims that the mark is the title of a single work
or the name of a character not only existed, but were also known by Trendsettah’s
predecessor-in-interest at the time the answer was filed in that proceeding. Indeed,
the petition to cancel filed in the ’645 cancellation implicates these claims by alleging:
• Use of the name and trademark DR. GREENTHUMB dates
back to 1998, when Cypress Hill released two versions of DR.
GREENTHUMB on their gold album Cypress Hill IV. The
song tells the story of a character called Dr. Greenthumb, B-
Real’s alter ego, who is a cannabis grower.

1 TTABVUE 3-4, ¶ 3.

Thus, there can be no genuine dispute of material fact that grounds for asserting
the claims that the mark is the title of a single work or the name of a character existed
and were known at the time the answer was filed; and therefore were compulsory

5 The counterclaimant’s standing is inherent in its position as defendant in the main
proceeding. See Carefirst of Md., Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492,
1502 (TTAB 2005).
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counterclaims in the ’645 cancellation. Furthermore, to the extent that Trendsettah
intends to assert a claim of descriptiveness under Trademark Act Section 2(e)(1) by
its statement that “registration of the mark DR. GREENTHUMB by Respondent …
is descriptive or generic for Mr. Freese,” 1 TTABVUE 5, ¶ 6(i) (92063138), this claim
and its underlying facts also existed and were known at the time the answer was
filed. The issue of descriptiveness under Trademark Act Section 2(e)(1) is determined
“on the basis of the factual situation as of the time when registration is sought.”
Remington Prods. v. N. Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1449
(Fed. Cir. 1990). Therefore, any descriptiveness of the term DR. GREENTHUMB
existed at the time the prior cancellation was filed and should have been raised as a
compulsory counterclaim.
It is well established that a defendant that fails to timely plead a compulsory
counterclaim cannot avoid the effect of its failure by thereafter asserting the
counterclaim grounds in a separate petition to cancel. See Vitaline Corp. v. General
Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).
However, HFTB has not established, and the current record does not support a
finding that the claim that HFTB has abandoned its rights in the mark DR.
GREENTHUMB by way of naked licensing was known when the answer was filed in
the ’645 cancellation. Nor does HFTB argue that Trendsettah or its predecessor-in-
interest learned of the underlying facts that support this claim at some time after the
answer was filed, but failed to timely raise the issue. In fact, Trendsettah submitted
with its brief opposing this motion, a copy of HFTB’s responses to its First Set of
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Interrogatories, served January 27, 2016, approximately two weeks prior to the filing
of the present petition to cancel. In those interrogatories is the first mention of
licensing in the record of the proceeding. Therefore, it cannot be concluded on this
record that there is no genuine dispute of material fact that the grounds for this claim
existed or were known at the time the answer was filed.6
Nonetheless, although the claim may not have been compulsory, to be complete,
we also find sua sponte that the claim is insufficiently pleaded. Specifically,
Trendsettah has failed to allege how its claim of “naked licensing” occurred or the
identity of the “licensee(s).” Instead, Trendsettah only alleges in conclusory fashion
that HFTB has nakedly licensed the trademark DR. GREENTHUMB to “various
parties” and “affiliates and third parties….” 1 TTABVUE 4 and 5, ¶¶ 2 and 6(iii). In
addition, the wording “various parties” and “affiliates” creates an ambiguity in that
these phrases appear to reference the use by third parties not licensees, which goes
to failure to police rather than naked licensing. See Tbc Corp. v. Grand Prix Ltd., 12
USPQ2d 1311, 1314 (TTAB 1989); Wallpaper Mfrs., Ltd. v. Crown Wallcovering
Corp., 680 F.2d 755, 214 USPQ 327, 332 and 334 (CCPA 1982). See also J. THOMAS
MCCARTHY, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 18:48 et. seq.
(4th ed. June 2017) (distinguishing uncontrolled or “naked” licensing characterized
as “abandonment,” where loss of trademark rights in a mark is caused by loss of
significance as a mark or indicator of single source, from abandonment resulting from

6 Although the better practice would have been to amend the answer in the ’645 cancellation
to assert a counterclaim, Trademark Rules 2.106(b)(3)(ii) and 2.114(b)(3)(ii) specifically
permit a defense attacking the validity of a plaintiff’s pleaded registration to be raised either
as a counterclaim or as a separate petition to cancel. See Vitaline, 13 USPQ2d at 1174.
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nonuse and intent to abandon). In view thereof, Trendsettah’s counterclaim fails to
state a claim for naked licensing for which relief can be granted, and is sua sponte,
DISMISSED, without prejudice.
Conclusion
In summary, HFTB’s motion for summary judgment is GRANTED, to the extent
that there is no genuine dispute of material fact that Trendsettah’s predecessor-in-
interest, Mr. Alrahib, knew of the basis of the claims that the mark is the title of a
single work or the name of a character, the claims now relied upon to cancel HFTB’s
pleaded registration, at the time he filed his answer in Cancellation No. 92060645.
Based on the undisputed facts, we find no genuine dispute of material fact Mr.
Alrahib knew then of the basis for these two claims Trendsettah now asserts. His
failure to counterclaim, along with the subject registration, is passed to his assignee
who stands in his shoes, and thus now serves as a bar to these claims under
Trademark Rule 2.114(b)(2)(i). Trendsettah has not introduced evidence in opposition
to the motion sufficient to raise a genuine dispute of material fact to be decided at
trial. Accordingly, the petition to cancel is DISMISSED with respect to these claims.
However, it is the Board’s policy to allow amendment of pleadings found to be
insufficient upon challenge under Fed. R. Civ. P. 12(b)(6), particularly where the
challenged pleading is the initial pleading. See Intellimedia Sports Inc. v. Intellimedia
Corp., 43 USPQ2d 1203, 1208 (TTAB 1997). In view thereof, Trendsettah is allowed
until TWENTY DAYS from the mailing date of this order to submit an amended
counterclaim repleading only its naked licensing claim, if possible, justified and
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appropriate.7 HFTB is allowed TWENTY DAYS from the service of any amended
pleading, to file an answer thereto. If Trendsettah fails to file an amended pleading
in the time provided, the naked licensing claim will stand dismissed with prejudice
and will be given no further consideration. In that instance the petition to cancel filed
in Cancellation No. 92063138 will be denied, and the proceeding terminated. This
proceeding will then move forward as to Cancellation No. 92060645 only.
The proceeding is SUSPENDED pending Trendsettah’s response to this order.
The remaining disclosure and trial dates will be reset once the proceeding has been
resumed.

7 Trendsettah should carefully consider the efficacy of maintaining this claim, based upon the
standards for pleading naked licensing, and particularly in light of the discovery response
that it is relying upon to support its claim – Interrogatory No. 11. In that interrogatory,
Trendsettah inquires into all licensees of the mark DR. GREENTHUMB, to which HFTB
responds, after asserting objections, “there are presently no licensees of the mark.” 7
TTABVUE 18.