Elements federal trademark registrations for “Elements Behavioral Health” on the Principal Register of the United States Patent and Trademark Office (U.S. Reg. No. 3,825,889 and U.S. Reg. No. 3,825,890) (the “Elements Trademarks”) 2 are likewise prima facie evidence of the validity of the Elements Trademarks, and of Element’s exclusive right to use the marks. SF ¶175; 15 U.S.C. § 1057(b); Applied Info., 511 F.3d at 970. Elements has provided undisputed proof of its trademark registration, together with evidence of its extensive and continuous use of the mark in commerce.

Since the ―Situation‖ Mark is in the category of marks considered ―most distinctive‖ it deserves protection under the Lanham Act. Case 1:11-cv-24110-JAL Document 75 Entered on FLSD Docket 07/05/2012 Page 12 of 27 7 enjoys a strong presumption of validity‖); 15 U.S.C. §§ 1052(e), 1057(b). Defendants‘ unsupported allegation that the Mark ―The Situation‖ is merely Michael Sorrentino‘s ―nickname‖, as opposed to his protectable mark is insufficient, as a matter of law, to overcome the presumption in Plaintiffs‘ favor.

See Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1024 (Fed. Cir. 1989) (citing 15 U.S.C. § 1057(b) for the proposition that a trademark “registrant benefits from a presumption of validity”); see also Bausch & Lomb, Inc. v. Alcon Laboratories, Inc., 79 F.Supp.2d 252, 255-56 (W.D.N.Y. 2000) (“generalized testimony about ‘problems’ in the PTO is not admissible”). In sum, courts routinely preclude experts from opining on workload, pressures, and/or potential sources of error in the PTO.

By its terms, Section 7(c) of the Lanham Act provides that constructive priority conferred by the filing of a federal trademark registration does not confer a right of priority over a person who used the mark prior to such application. 15 U.S.C. § 1057(c). Thus, Plaintiff’s claim to ownership of the JOHN C. FLOOD name and mark must rest on some basis other than “constructive use” priority.

Unlike the pleading in Milo & Gabby, however, the FAC pleads specific facts describing Fujifilm’s use of the counterfeit mark at issue (FAC ¶¶ 7, 39-40, 42, 49-54), and specific factual bases supporting the intent and knowledge element of counterfeiting remedies under 15 U.S.C. § 1117 (FAC ¶¶ 7-10, 38-39, 42, 48, 51-54). Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 15 of 25 11 registration certificates.” Cartier Int’l. B.V., 2008 WL 64005, at *11 (citing 15 U.S.C. § 1057(b)). See also Diesel S.P.A. v. Does, No. 14-CV-4592 (KMW), 2016 WL 96171, at *3 (S.D.N.Y. Jan. 8, 2016) (“Registration is prima facie evidence of a trademark’s validity”); Johnson & Johnson Consumer Cos., Inc. v. Aini, 540 F. Supp. 2d 374, 388–89 (E.D.N.Y. 2008) (“once a mark is recorded with the USPTO, the registration requirements are assumed to be met, and the mark is entitled to protection”)

As such, there is no presumption of validity. See 15 U.S.C. §§ 1057(b), 1115(a); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). To establish validity, Mr. Lasoff bears the burden of establishing both ownership and protectability.

Accordingly, he cannot prevail on any of his claims. b. Plaintiff cannot establish registration The Lanham Act, 15 U.S.C. § 1057(b) and 15 U.S.C. § 1115(a), presumes the holder of a federal registration owns the mark for the Classes identified within the registration. Plaintiff’s trademark registrations are for the HBDC phrase, only, and do not include greeting cards.

Case 1:04-cv-00519-EGS Document 129 Filed 07/01/16 Page 46 of 51 39 In 1989, Congress added Section 7(c) to the Lanham Act, which creates “constructive use” for priority purposes dating to the filing of the application for registration. 15 U.S.C. § 1057(c); see McCarthy § 16:17 (describing constructive use as “a new concept to U.S. law”). “However, the constructive use benefits of § 7(c) are only available to those registrations that resulted from applications filed after the effective date of the Trademark Law Revision Act: November 16, 1989.”

54 Brosnan Decl. ¶¶ 5-13; Complaint Ex. B. 55 See 15 U.S.C. § 1057(b). Case 1:14-cv-05665-RJS Document 13 Filed 08/28/14 Page 20 of 33 13 DWT 24487769v6 0096356-000009

Since a trademark registration constitutes prima facie evidence of the validity of the registered mark, the burden shifts to the accused infringer to rebut the presumption. Brookfield Commc'ns, 174 F.3d at 1047 (citing 15 U.S.C. §§ 1057(b), 1115(a)). Accordingly, lack of distinctiveness is a proper affirmative defense, not merely a denial of an element of the plaintiff's prima facie case.