estta tracking number: estta1034282 02/06/2020pursuant to 37 c.f.r. 2.107, 2.106(b)(2)(i), and rule...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1034282

Filing date: 02/06/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92071303

Party DefendantThe Humble Co. AB

CorrespondenceAddress

RHETT V BARNEYLEE & HAYES PC601 W RIVERSIDE AVENUE, SUITE 1400SPOKANE, WA 99201UNITED [email protected], [email protected], [email protected]

Submission Motion to Amend/Amended Answer or Counterclaim

Filer's Name Rhett V. Barney

Filer's email [email protected], [email protected], [email protected], [email protected]

Signature /Rhett V. Barney/

Date 02/06/2020

Attachments Motion for Leave to Amend Answer FINAL.pdf(381856 bytes )

http://estta.uspto.gov

1



HUMBLE BRANDS, INC., )

)

Petitioner, ) Cancellation No. 92071303

)

v. ) Registration No. 5274707

)

THE HUMBLE CO. AB., )

Registrant. )

____________________________________

REGISTRANT’S MOTION FOR LEAVE TO FILE AN AMENDED ANSWER

I. INTRODUCTION

Pursuant to 37 C.F.R. §§ 2.107, 2.106(b)(2)(i), and Rule 15(a) of the Federal Rules of Civil

Procedure, Registrant The Humble Co. AB (“Registrant”) respectfully requests leave to amend its

Answer. A copy of Registrant’s proposed First Amended Answer is attached as Exhibit A, and a

redline detailing changes between Registrant’s original Answer and its proposed Amended Answer

is attached as Exhibit B. The proposed amendment adds affirmative defenses that have been

uncovered during discovery, and it revises two of Registrant’s answers to Petitioner’s allegations.

It is the general policy of the Trademark Trial and Appeal Board (the “Board”) to “liberally

grant[] leave to amend pleadings at any stage of a proceeding when justice so requires.” Prosper

Bus. Dev. Corp. v. Int’l Bus. Machines, Corp., 113 U.S.P.Q.2d 1148, 1152 (TTAB 2014) (citing

Fed. R. Civ. P. 15(a); TBMP § 507.02 “and all cases cited therein”). “In general, the courts and

the Board give leave to amend unless there has been undue delay that would prejudice the

nonmoving party, the moving party has acted in bad faith, or the amendment would be futile.”

2

Jive Software, Inc. v. Jive Commc’ns, Inc., 125 U.S.P.Q.2d 1175, 1178-79 (TTAB 2017) (internal

citations omitted).

Registrant has not engaged in undue delay and amendment of its Answer would not

prejudice the Petitioner. Registrant is acting in good faith and without dilatory motive. The

proposed amended Answer is not futile, as it raises new issues that may be dispositive. Notably,

Registrant has not previously amended its Answer. For all these reasons, Registrant’s request for

leave should be granted.

II. BACKGROUND

On January 14, 2020, Registrant and Petitioner conferenced to discuss discovery issues.

Specifically, Registrant’s investigation into Petitioner’s business uncovered evidence that suggests

Petitioner has used cannabidiol (“CBD”) in its deodorant, a claimed good, and has marketed the

health benefits of the use of CBD to its consumers. Registrant sought discovery related to this

evidence. Petitioner’s position in response to the discovery requests, during the conference, and

in ongoing correspondence was that Petitioner did not concede relevance of the use of CBD in its

deodorants and “comfort bars.” Because Registrant believes the issue to be relevant and has

conferred with Petitioner’s counsel concerning the same, Registrant now promptly seeks leave to

amend its Answer to include the related defense.

Additionally, Registrant now believes, based on that January 14, 2020 conference, that

Petitioner has neither sold nor offered for sale a substantial portion of its claimed goods.

Specifically, Registrant’s counsel discussed Petitioner’s sales of body lotion, lip balm, bar soap,

and sunscreen preparations with Petitioner’s counsel, and Petitioner’s counsel understood that

Petitioner has not sold, nor offered for sale, body lotion, lip balm, bar soap, or sunscreen

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preparations. Because Registrant believes that the scope of Petitioner’s use is relevant to these

proceedings, Registrant promptly seeks leave to amend its Answer to include the related defenses.

Finally, the discovery process has revealed that Registrant and its affiliates have used the

HUMBLE mark on a variety of goods and services beyond those claimed in the registration such

that Registrant has developed common law rights in the United States to the house mark

HUMBLE. Registrant shared this finding and theory of the case with Petitioner’s counsel on

December 30, 2019. Registrant seeks leave to amend its Answer to include this defense.

III. ARGUMENT

A. There is no undue delay that would prejudice Petitioner.

This request for leave is timely. Registrant seeks to promptly amend its Answer based on

newly discovered and investigated defenses. Moreover, on January 14, 2020, Registrant and

Petitioner consented to extending the discovery period for 90 days. 6 TTABVUE. The extension

was granted. 7 TTABVUE. Allowing Registrant to amend its Answer will not prejudice

Petitioner, as under the new scheduling order, Petitioner is “afforded time in which to take

discovery on the newly asserted defense[s] if it chooses to do so.” See Am. Express Mktg. & Dev.

Corp. v. Gilad Dev. Corp., 94 U.S.P.Q.2d 1294, 1297 (TTAB 2010).

B. Registrant is acting in good faith.

Registrant has discussed its desire to amend its pleadings with Petitioner following a meet

and confer conference between Registrant’s counsel and Petitioner’s counsel concerning the

subjects of the proposed amended Answer. Registrant submitted a draft of its proposed amended

Answer to Petitioner with the request that Petitioner consent to its filing. Petitioner did not consent

to the filing and Registrant expects Petitioner to oppose this motion on the grounds that the

amendment is futile.

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C. The proposed amended Answer is not futile.

Registrant’s legal theories advanced in the proposed amended Answer, if proved, would

not be futile in advancing Registrant’s rights and the proper outcome of this proceeding.

1. Petitioner’s unlawful use would deprive it of standing.

Petitioner’s standing is based on its application for and the United States Patent and

Trademark Office’s recognition of its rights in the word mark HUMBLE BRANDS and the design

mark HUMBLE SIMPLE AND TRUE. 1 TTABVUE 2; 1 TTABVUE 5-6. But “use of a mark

in connection with unlawful shipments in interstate commerce is not use of a mark in commerce

which the [USPTO] may recognize.’” Coahoma Chem. Co., Inc. v. Smith, 113 U.S.P.Q. 413, 418

(Com’r Pat. & Trademarks 1957). Moreover, the Lanham Act does not protect goodwill garnered

from unlawful use. See In re Stellar Int’l, Inc., 159 U.S.P.Q. 48, 51 (TTAB 1968) (“no trademark

rights can accrue” from “‘unlawful shipments’ in commerce”). A finding that Petitioner has

engaged in unlawful use in commerce or intended to engage in unlawful use in commerce would

deprive it of the benefits of registration and a real interest in this proceeding. See TBMP 303.03;

see also TMEP 907.

2. Narrowing the scope of Petitioner’s application would be beneficial to

understanding Petitioner’s claims.

Petitioner appears to plead a cause of action relating to likelihood of confusion. 1

TTABVUE 4-5. Certainly, Petitioner has alleged that “Registrant’s goods would be directed to

the same customer segment of the consuming public as [Petitioner’s] goods.” 1 TTABVUE 5.

Registrant’s understanding of Petitioner’s goods at issue is therefore helpful in consideration of

Petitioner’s allegations. Notably, the Board has previously granted amendment to identification

of goods and services because it serves to “narrow the issues at trial.” See Saint-Gobain Corp. v.

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3M Company, 90 U.S.P.Q.2d 1425, 1428 (TTAB 2007). Moreover, when deciding likelihood of

confusion, the Board will evaluate the “similarity or dissimilarity and nature of the goods or

services as described in an application or registration or in connection with which a prior mark is

in use.” In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Showing

Petitioner is claiming trademark rights to goods it does not use in commerce would narrow the

scope of the likelihood of confusion analysis and simplify the issues for trial. Moreover, if

Petitioner does not have trademark rights in some or all of its claimed goods and services, it would

serve an injustice to allow Petitioner to use these illusory rights in pursuit of cancellation.

3. Proving common law rights in the house mark HUMBLE would affect priority.

In this proceeding, in order to prevail, Petitioner is required to prove priority. See TBMP

309.03(c)(2)(A). But priority may be based on an unregistered trademark if the party claiming

priority possesses common law rights. See Benjamin J. Giersch v. Scripps Networks, Inc., 90

U.S.P.Q.2d 1020 (TTAB 2009) (where a party “has not pleaded ownership of any registered

trademark, [it] must rely on [its] common-law use” in order “to prove priority”). These rights may

function in conjunction with the rights associated with registered marks. See Bell’s Brewery, Inc.

v. Innovation Brewing, 125 U.S.P.Q.2d 1340, 1344 (TTAB 2017) (wherein the Board determined

common law priority associated with BOTTLING INNOVATION SINCE 1985 despite the

claiming party having later applied to register INNOVATION BREWING). If Registrant proves

priority in its common law HUMBLE house mark, this cancellation would be dismissed.

IV. CONCLUSION

Registrant respectfully asks this Court to grant Registrant’s motion for leave to amend its

answer and affirmative defenses.

/ / /

6

Respectfully submitted February 6, 2020.

/Rhett Barney/

RHETT V. BARNEY

Lee & Hayes, P.C.

601 W. Riverside Avenue, Suite 1400

Spokane, WA 99201

Telephone: (509) 944-4642

Fax: (509) 323-8979

Attorney for Registrant The Humble Co. AB

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CERTIFICATE OF SERVICE

I hereby certify that on this 6th day of February, 2020, the foregoing Registrant’s Motion

for Leave to File an Amended Answer was served upon Petitioner’s attorney of record by emailing

the same as follows:

KRISTA WEBER POWELL

TRASKBRITT PC

230 SOUTH 500 EAST, SUITE 300

SALT LAKE CITY, UT 84102

UNITED STATES

[email protected], [email protected], [email protected],

[email protected]

/Rhett Barney/

RHETT V. BARNEY

Lee & Hayes, P.C.


Spokane, WA 99201

Telephone: (509) 944-4642

Fax: (509) 323-8979


EXHIBIT A

1




)


)


)


Registrant. )

____________________________________

REGISTRANT’S FIRST AMENDED ANSWER TO PETITIONER’S

PETITION TO CANCEL

Registrant The Humble Co. AB (“Registrant” or “The Humble Co.”) submits its amended

answer to Petitioner Humble Brands, Inc. (“Petitioner”) Petition for Cancellation against

Registrant’s Trademark Registration No. 5,274,707 for the mark THE HUMBLE CO. Registrant

specifically admits, denies, and alleges as follows:

ABANDONMENT1

1. Registrant acknowledges that The Humble Co. is listed as the owner of record of

US Trademark Registration No. 5,274,707, and that Registration No. 5,274,707 contains the items

listed in Petitioner’s Petition to Cancel.

2. Registrant acknowledges that Petitioner is the listed owner of Trademark

Application Serial Nos. 88175304 and 88175299, but Registrant lacks sufficient knowledge or

1 Registrant has included Petitioner’s section headings solely for ease of reference. Registrant

does not admit the correctness of any of the headings.

2

information to form a belief as to the truth or falsity of the remaining statements and allegations

made in Paragraph 2, and therefore denies it.

3. Registrant lacks sufficient knowledge or information to form a belief as to the truth

or falsity of Paragraph 3 of the Petition and, therefore, denies it.

4. Registrant denies the statements and allegations made in Paragraph 4.

5. Registrant admits it does not currently produce or sell each specific type of goods

described in the ‘707 Registration.



8. Registrant denies the statements and allegations made in Paragraph 8 that are not

legal conclusions, and to the extent that the statements made in Paragraph 8 contain legal

conclusions, no admission or denial is required.

FRAUD

9. Registrant acknowledges that it filed an application on November 2, 2016, and that

the application resulted in a registration. Respondent acknowledges further that Exhibit A

referenced in Paragraph 9 speaks for itself.






3




PRIORITY AND LIKLIHOOD OF CONFUSIONS












22. Registrant acknowledges that Exhibits D and E referenced in Paragraph 22 speak

for themselves.

23. Registrant lacks sufficient knowledge or information regarding Petitioner’s goods

or consumers to form a belief as to the truth or falsity of Paragraph 23 of the Petition and, therefore,

denies it.



4

REGISTRANT’S AFFIRMATIVE DEFENSES

By way of further Answer, Registrant alleges and asserts the following defenses in

response to the allegations contained in the Petition. In this regard, Registrant undertakes the

burden of proof only as to those defenses that are deemed affirmative defenses by law, regardless

of how such defenses are denominated in the instant Answer. Registrant reserves the right to

assert other affirmative defenses as this Cancellation proceeds based on further discovery, legal

research, or analysis that may supply additional facts or lend new meaning or clarification to

Petitioner’s claims that are not apparent on the face of the Petition.

1. The petition and each count thereof fail to state a claim upon which relief can be

granted.

2. Petitioner lacks standing, and Petitioner’s claims are barred, in whole or in part,

because Petitioner has not and will not suffer any injury or damage from the continuing validity

and existence of the THE HUMBLE CO. registration as it currently exists.

3. Petitioner lacks standing and prior rights in its claimed marks and/or has failed to

adequately use or use continuously in U.S. Commerce.

4. Petitioner lacks standing and prior rights in its claimed marks and/or has used its

marks unlawfully in U.S. Commerce.

5. Petitioner lacks standing and prior rights in some or all of its claimed marks

and/or has failed to actually use some or all of its claimed marks in U.S. Commerce.

6. The statutory presumption of abandonment for non-use of the THE HUMBLE CO

mark based upon three consecutive years of non-use is not available to Petitioner because

Registrant had no obligation to demonstrate use of its THE HUMBLE CO. mark prior to

issuance of its respective registration since the registration was based upon Section 44(e) of the

5

Lanham Act, and THE HUMBLE CO. mark issued as a registration less than three years ago on

August 29, 2017.

7. Petitioner cannot demonstrate that Registrant lacked a bona fide intent to use its

THE HUMBLE CO. mark, nor can it demonstrate that Registrant never intended to use the THE

HUMBLE CO. mark in the US because Registrant has always intended to use the THE

HUMBLE CO. mark as claimed in US Commerce; Registrant has continually exerted efforts to

implement that intent and has maintained a bona fide intent to use its THE HUMBLE CO. mark

as evidenced by its use, usage efforts, and registration of the THE HUMBLE CO. mark outside

of the US, as well as Registrant’s specific efforts and successes to use THE HUMBLE CO. in the

US.

8. Since Registrant has used and has been using the THE HUMBLE CO. trademark

in US Commerce for at least some, if not all, of the goods listed in the THE HUMBLE CO

registration, it cannot be the subject of a total cancellation.

9. Any alleged non-use of THE HUMBLE CO. trademark by Registrant constitutes

“excusable non-use”, beyond the control of Registrant.

10. Registrant has common law rights in the house mark HUMBLE, has consistently

and continually used this house mark, and these rights predate any alleged use by Petitioner

incorporating “humble” into its own marks.

11. Registrant reserves the right to assert any and all additional affirmative defenses

or counterclaims of which Registrant becomes aware during the pendency of this matter.

WHEREFORE, Registrant requests Petitioner’s Petition to Cancel be dismissed, and that

Registration No. 5274707 continue as a registered mark as it exists today.

/ / /

6

Respectfully submitted this 6th day of February, 2020.

/Rhett Barney/

RHETT V. BARNEY

Lee & Hayes, P.C.


Spokane, WA 99201

Telephone: (509) 944-4642

Fax: (509) 323-8979


7


I hereby certify that on this 6th day of February, 2020, the foregoing Registrant’s First

Amended Answer to Petitioner’s Petition to Cancel was served upon Petitioner’s attorney of record

by emailing the same as follows:

KRISTA WEBER POWELL

TRASKBRITT PC



UNITED STATES


[email protected]

/Rhett Barney/

RHETT V. BARNEY

Lee & Hayes, P.C.


Spokane, WA 99201

Telephone: (509) 944-4642

Fax: (509) 323-8979


EXHIBIT B

1




)


)


)


Registrant. )

____________________________________

REGISTRANT’S FIRST AMENDED ANSWER TO PETITIONER’S

PETITION TO CANCEL

Registrant The Humble Co. AB (“Registrant” or “The Humble Co.”) submits its amended

answer to Petitioner Humble Brands, Inc. (“Petitioner”) Petition for Cancellation against

Registrant’s Trademark Registration No. 5,274,707 for the mark THE HUMBLE CO. Registrant

specifically admits, denies, and alleges as follows:

ABANDONMENT1

1. Registrant acknowledges that The Humble Co. is listed as the owner of record of

US Trademark Registration No. 5,274,707, and that Registration No. 5,274,707 contains the items

listed in Petitioner’s Petition to Cancel.

2. Registrant acknowledges that Petitioner is the listed owner of Trademark

Application Serial Nos. 88175304 and 88175299, but Registrant lacks sufficient knowledge or

1 Registrant has included Petitioner’s section headings solely for ease of reference. Registrant

does not admit the correctness of any of the headings.

2

information to form a belief as to the truth or falsity of the remaining statements and allegations

made in Paragraph 2, and therefore denies it.




5. Registrant denies the statements and allegations made in Paragraph 5 admits it does

not currently produce or sell each specific type of goods described in the ‘707 Registration.






FRAUD

9. Registrant acknowledges that it filed an application on November 2, 2016, and that

the application resulted in a registration. Respondent acknowledges further that Exhibit A

referenced in Paragraph 9 speaks for itself.






3




PRIORITY AND LIKLIHOOD OF CONFUSIONS












22. Registrant acknowledges that that Exhibits D and E referenced in Paragraph 22

speaks for themselves.

23. Registrant lacks sufficient knowledge or information regarding Petitioner’s goods

or consumers to form a belief as to the truth or falsity of Paragraph 23 of the Petition and, therefore,

denies it.



4

REGISTRANT’S AFFIRMATIVE DEFENSES

By way of further Answer, Registrant alleges and asserts the following defenses in

response to the allegations contained in the Petition. In this regard, Registrant undertakes the

burden of proof only as to those defenses that are deemed affirmative defenses by law, regardless

of how such defenses are denominated in the instant Answer. Registrant reserves the right to

assert other affirmative defenses as this Cancellation proceeds based on further discovery, legal

research, or analysis that may supply additional facts or lend new meaning or clarification to

Petitioner’s claims that are not apparent on the face of the Petition.

1. The petition and each count thereof fails to state a claim upon which relief can be

granted.

2. Petitioner lacks standing, and Petitioner’s claims are barred, in whole or in part,

because Petitioner has not and will not suffer any injury or damage from the cContinuing validity

and existence of the THE HUMBLE CO. registration as it currently exists.

3. Petitioner lacks standing and prior rights in its claimed marks and/or has failed to

adequately use or use continuously in U.S. Commerce.

4. Petitioner lacks standing and prior rights in its claimed marks and/or has used its

marks unlawfully in U.S. Commerce.

3.5. Petitioner lacks standing and prior rights in some or all of its claimed marks

and/or has failed to actually use some or all of its claimed marks in U.S. Commerce.

4.6. The statutory presumption of abandonment for non-use of the THE HUMBLE CO

mark based upon three consecutive years of non-use is not available to Petitioner because

Registrant had no obligation to demonstrate use of it’s THE HUMBLE CO. mark prior to

issuance of its respective registration since the registration was based upon Section 44(e) of the

5

Lanham Act, and THE HUMBLE CO. mark issued as a registration less than three years ago on

August 29, 2017.

5.7. Petitioner cannot demonstrate that Registrant lacked a bona fide intent to use it’s

THE HUMBLE CO. mark, nor can it demonstrate that Registrant never intended to use the THE

HUMBLE CO. mark in the US because Registrant has always intended to use the THE

HUMBLE CO. mark as claimed in US Commerce; Registrant has continually exerted efforts to

implement that intent and has maintained a bona fide intent to use it’s THE HUMBLE CO. mark

as evidenced by its use, usage efforts, and registration of the THE HUMBLE CO. mark outside

of the US, as well as Registrant’s specific efforts and successes to use THE HUMBLE CO. in the

US.

6.8. Since Registrant has used and has been using the THE HUMBLE CO. trademark

in US Commerce for at least some, if not all, of the goods listed in the THE HUMBLE CO

registration, it cannot be the subject of a total cancellation.

9. Any alleged non-use of THE HUMBLE CO. trademark by Registrant constitutes

“excusable non-use”, beyond the control of Registrant.

10. Registrant has common law rights in the house mark HUMBLE, has consistently

and continually used this house mark, and these rights predate any alleged use by Petitioner

incorporating “humble” into its own marks.

7.11. Registrant reserves the right to assert any and all additional affirmative defenses

or counterclaims of which Registrant becomes aware during the pendency of this matter.

WHEREFORE, Registrant requests Petitioner’s Petition to Cancel be dismissed, and that

Registration No. 5274707 continue as a registered mark as it exists today.

6

Respectfully submitted this 624th day of JuneFebruary, 201920.

/Rhett Barney/

RHETT V. BARNEY

Lee & Hayes, P.C.


Spokane, WA 99201

Telephone: (509) 944-4642

Fax: (509) 323-8979


7


I hereby certify that on this 24th 6th day of JuneFebruary, 202019, the foregoing

Registrant’s First Amended Answer to Petitioner’s Petition to Cancellation was served upon

Petitioner’s attorney of record by emailing the same as follows:

KRISTA WEBER POWELL

TRASKBRITT PC



UNITED STATES


[email protected]

/Rhett Barney/

RHETT V. BARNEY

Lee & Hayes, P.C.


Spokane, WA 99201

Telephone: (509) 944-4642

Fax: (509) 323-8979


estta tracking number: estta1034282 02/06/2020pursuant to 37 c.f.r. 2.107, 2.106(b)(2)(i), and rule...

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