15 U.S.C. § 1065(2). Thus, as a matter of law, LS&Co. s affidavits that testified to the supposed non-existence of a court proceeding involving its rights to the trademark are unquestionably material under 15 U.S.C. § 1065(2). See Orient Express Trading Co., 842 F.2d at 653 (statement of continuous use required for Section 8 and 15 affidavit, which registrant made falsely, constituted material misstatement of fact).

Without providing that statement, a trademark registrant would be ineligible to obtain an “incontestable” trademark. Thus, as a matter of law, LS&Co.’s affidavits that testified to the supposed “non-existence” of a court proceeding involving its rights to the trademark are unquestionably “material” under 15 U.S.C. § 1065(2) because those statements go to the heart of whether LS&Co. would have been entitled to an incontestable trademark at the time it filed its affidavits. See Orient Express Trading Co., 842 F.2d at 653 (statement of continuous use required for Section 8 and 15 affidavit, which registrant made falsely, constituted material misstatement of fact).

15 U.S.C. § 1065(2). Thus, as a matter of law, LS&Co.’s affidavits that testified to the supposed “non- existence” of a court proceeding involving its rights to the trademark are unquestionably “material” under 15 U.S.C. § 1065(2) because those statements go to the heart of whether LS&Co. would have been entitled to an incontestable trademark at the time it filed its affidavits. See Orient Express Trading Co., 842 F.2d at 653 (statement of continuous use required for Section 8 and 15 affidavit, which registrant made falsely, constituted material misstatement of fact).

Mohawk’s claim—that 3 This is yet more proof that §§ 1115 and 1065 cannot be used to affirmatively destroy a defendants’ incontestable trademark and impose infringement liability. Case 1:16-cv-02763-TCB Document 15-1 Filed 09/22/16 Page 15 of 79 16 OMNI LOC, with which Mohawk’s WELDLOK has coexisted since 2008, creates a likelihood of confusion—is entirely implausible on its face.4 In a trademark infringement case, if the conflicting marks are overwhelmingly dissimilar, a dismissal of the infringement claim is proper even if all of the other factors tip in favor of the plaintiff.

SF ¶178. The Promises Trademark is valid, subsisting, and incontestable pursuant to 15 U.S.C. § 1065. SF ¶179 Lahoti v. Case 2:14-cv-08760-JAK-RZ Document 185-1

Park ‘N Fly, Inc. v. Park & Fly, Inc., 489 F. Supp. 422, 424 (D.Mass. 1979) (finding that a generic mark may never retain statutory protection regardless of its incontestable status; “[§ 1065] complements § 1064, which provides for cancellation of a registration ‘at any time if the registered mark becomes the common descriptive name [(i.e., generic)] of an article or substance’”) (citations omitted). Similarly, Quiksilver’s Fourteenth Affirmative Defense (Nordstrom’s Twelfth Affirmative Defense) for geographic misdescriptiveness falls within the exception found at Section 33(b)(4) which allows defending against an incontestable mark when the mark has been used to misrepresent the quality or source of origin for the goods.

Section 15 merely sets forth the procedural mechanism by which a registrant first files a claim for incontestability. See generally 15 U.S.C. § 1065 (setting forth the criteria that, if satisfied, will lead the Patent and Trademark Office to declare a mark to be incontestable). Further, plaintiffs may not rely on Russian court decisions to show that the affidavits of incontestability contained false information.

Until there is a likelihood of confusion between the registrant’s and junior user’s uses of the mark triggered by 13 Incontestability of LEAC’s registrations could not have been attained until at least five years after they were registered. 15 U.S.C. § 1065. 14 Decisions of the former Fifth Circuit handed down prior to close of business on September 30, 1981, are binding in this Circuit.

Thus, Choose Energy has the exclusive right to use the CHOOSEENERGY mark in commerce in connection with the goods or services specified in its registration, and Choose Energy has a nationwide right of priority to use the mark on such goods or services as of the filing date, July 14, 1999. Furthermore, the mark is now incontestable under 15 U.S.C. § 1065, and its distinctiveness, therefore, cannot be challenged. Park N’ Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985) (“We conclude that the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive.”)

However, the Lanham Act grants federally registered marks the right to exclusive use of the mark online insofar as they do not conflict with any pre-existing rights acquired under state law. 15 U.S.C. § 1065. In other words, “[t]he territorial rights of a holder of a federally registered trademark are always subject to any superior common law rights acquired by another party through actual use prior to the registrant’s constructive use.”