estta tracking number: estta1060562 06/08/2020
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1060562
Filing date: 06/08/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 92073185
Party DefendantGB Green Gastronome, LLC
CorrespondenceAddress
GE LIKEVIN KERVENG TUNG PCQUEENS CROSSING BUSINESS CENTER, 136 20 38TH AVENUE, STE 3DFLUSHING, NY 11354UNITED [email protected], [email protected], [email protected]
Submission Other Motions/Papers
Filer's Name Ge Li
Filer's email [email protected]
Signature /Ge Li/
Date 06/08/2020
Attachments 20.06.08 reply and opposition.pdf(247883 bytes )Exhibit D-E.pdf(1068763 bytes )
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In The Matter Of Registration No.: 5925053
For Mark:
Registered: December 03, 2019
---------------------------------------------------------------------X
Bingyang Yao,
Petitioner,
-against-
GB Green Gastronome, LLC,
Registrant.
Cancellation No.: 92073185
---------------------------------------------------------------------X
REGISTRANT’S REPLY BRIEF IN FUTHER SUPPORT ITS
MOTION TO DISMISS PETITIONER’S FIRST AMENDED PETITION
FOR CANCELLATION AND REGISTRANT’S OPPOSITION
TO PETITIONER’S MOTION TO AMEND PLEADING
Registrant GB Green Gastronome, LLC. (“Registrant”) respectfully submits this Reply
Brief in further support its Motion to Dismiss petitioner Bingyang Yao (“Petitioner”)’s First
Amended Petition (“FAP”), and this Brief also serves as an opposition to Petitioner’s Motion to
Amend Pleading.
I. INTRODUCTION
For the purpose of this motion, the operative pleading is Petitioner’s First Amended
Petition (“FAP”).
First, Petitioner’s motion to amend FAP should be denied. Fed. R. Civ. P. 15(a)(1) only
allow a party to amend its pleading once as a matter of course. Any subsequent amendment
requires consent from opposing parties or the approval of the Board. Petitioner’s Petition for
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Cancellation has been amended once and this second request to amend the FAP is without
Registrant’s consent and in its motion to amend pleading Petitioner does not seek the Board’s
leave for amendment (Petitioner simply submits the proposed version of the amended Petition
without a red-lined copy in its motion). See 12 TTABVUE.
Second, Petitioner’s Response Brief (13 TTABVUE.) in opposition to Registrant’s
Motion to Dismiss fails to explain or cure the defects in FAP:
1. Petitioner failed to plead a prima facie case for its priority and likelihood of
confusion claim because the pleadings in FAP did not demonstrate Petitioner’s mark (Serial
Number: 88645034, the “Petitioner’s Mark”) had priority over Registrant’s mark. In fact, the
first-use-in-commerce date of the Petitioner Mark disclosed by Petitioner itself in the application
was later than the one for Registrant’s mark.
2. As to the non-use/unlawful use claim, Petitioner alleged that Registrant did not
use the Registrant’s mark on the rice noodle product depicted in the specimen submitted to the
USPTO during the application process, because the sale of rice noodle products requires FDA,
USDA special approval and “[u]pon information and belief, Registrant does not have FDA
approved rice noodle production facility in the United States.” This pleading in the FAP was
patently false and contradicted by the information from the FDA and USDA websites, suggesting
that rice noodle products do not need special permit or approval.
3. Petitioner’s fraud claim did not meet the particularity requirements under the
Federal Rules of Civil Procedure Rule 9(b) and Petitioner’s stubborn insistence to use the alleged
misrepresentation of the first-use-in-commerce date as one of the basis for fraud is against the
TTAB case law in Hiraga v. Arena, 90 U.S.P.Q.2d 1102, 1107 (TTAB 2009).
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Therefore, as fully discussed below and in Registrant’s Opening Brief, the FAP should be
dismissed in its entirety, with prejudice.
II. STATEMENT OF FACTS AND PROCEDURAL HISTORY
Registrant is the owner of the (“Registrant’s Mark”) in classes 30 and 46
which was registered with the United States Patent and Trademark Office on December 3, 2019.
Petitioner is a Chinese individual, who “believes he would be damaged by the continued
registration of” the Registrant’s Mark. Petitioner filed his Petition for Cancellation on January 13,
2020 to cancel Registrant’s Mark. See 1 TTABVUE. Registrant moved to dismiss the Petition
for Cancellation on February 20, 2020. See 4 TTABVUE. In response, Petitioner moved to
amend his Petition and proposed the First Amended Petition for Cancellation (“FAP”), which
was granted by the Board and the FAP became the operative pleading of the case. See 6
TTABVUE.; 9 TTABVUE.
In this motion, Registrant moved to dismiss the FAP. See 10 TTABVUE. On May 21,
2020, Petitioner responded to Registrant’s motion to dismiss (13 TTABVUE) and filed its
second motion to amend pleading. See 12 TTABVUE.
III. ARGUMENT
A. Legal Standard for Motion to Amend Pleading
Pursuant to Fed. R. Civ. P. 15(a)(1), made applicable to Board proceedings by Trademark
Rule 2.116(a), a party may amend its pleading once as a matter of course within 21 days after
serving it, or if the pleading is one to which a responsive pleading is required, 21 days after
service of a responsive pleading or 21 days after service of a motion under Fed. R. Civ. P. 12(b),
(e) or (f), whichever is earlier. See Trademark Rule 2.107/2.115; TBMP § 507.01. (emphasis
added).
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Thereafter, a party may amend its pleading only by written consent of every adverse
party or by leave of the Board. See Fed. R. Civ. P. 15(a)(2); TBMP § 507.02.
B. Petitioner’s Motion to Amend Pleading Was Not Filed As a Matter of Course
and It was Made Without the Consent of Registrant or Leave of the Board,
therefore, Should be Denied
Here, it is Petitioner’s second time to request amendment of the pleading and the motion
is without Registrant’s consent and it is not accompanied by a motion for leave to amend
(Petitioner simply submitted the proposed version). See 12 TTABVUE. Without the motion for
leave to amend, the Board lacks information to determine whether the second request for
amendment should be granted as the justice requires or whether the proposed amendment would
violate settled law or be prejudicial to the rights of the adverse party or parties. See TBMP §
507.02. In fact, the proposed amendment causes prejudice to Registrant’s right to the extent that
it will further delay the proceeding and if it is allowed, Registrant might need to file another
motion to dismiss, which will further increase the legal costs.
Further, Petitioner failed to submit a red-lined copy showing the proposed changes along
with a clean copy of the proposed amended pleading, without which, the Board and the
Registrant did not know what the proposed changes are.
For the reasons stated above, Petitioner’s motion to amend pleading should be denied and
the FAP should remain as the operative pleading.
C. Priority and Likelihood of Confusion Claim Should be Dismissed
In its Response to Registrant’s motion to dismiss, Petitioner claims that its mark has
priority over Registrant’s Mark, despite the fact that Petitioner provided a later first-use-in-
commerce date (2017/07/25) in its trademark application. Petitioner points to several invoices
attached to FAP as support of its argument. 13 TTABVUE 3.
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As fully explained in Registrant’s Opening Brief, these invoices have no probative values.
They were all issued by a company called Sinosharp Imp&Exp Co., Ltd. (“Sinosharp”), not by
Petitioner or his alleged company Guangxi Luobawang Food Co., Ltd. (6 TTABVUE 2 at ¶1).
And upon further investigation, even assuming the rice noodle products had been sold in
commerce by Sinosharp back in August, 2016, as suggested by the invoices in Exhibit C to FAP,
these products probably were counterfeit products or products entering the U.S. illegally. The
reason is in preparation for the importation of the rice noodle products, Guangxi Luobawang
Food Co., Ltd. applied to FDA for special registration with regard to the bamboo shoots and
green beans ingredients in the rice noodle products (seasoning packet). FDA approved
registrations for these ingredients in December, 2017 and January, 2018 respectively. See copies
of the certificates attached as Exhibit D. See photos of Petitioner’s products with bamboo shoots
and green beans ingredients attached as Exhibit E. It is impossible for Sinosharp or Guangxi
Luobawang Food Co., Ltd. to sell the rice noodle products bearing Petitioner’s mark legally in
August, 2016, while the ingredients of the products had not been registered with or approved by
FDA. Either the products in Sinosharp’s invoices were not Petitioner’s products or these
products were imported and distributed illegally in U.S. commerce without FDA’s approval.
D. The Claim for Void Ab Initio for Non-Use and/or Unlawful Use Should be
Dismissed
In the Response Brief, Petitioner is repeating its allegations in the FAP that since
Registrant submitted a specimen with an expiration date of 2016/12/30 during the process of
application, the specimen must be fake because the designated first use in commerce date was
2016/12/31. Petitioner’s such argument is against the prevailing law because for non-use claims,
the court or the TTAB determines whether the defendant was using its mark in commerce as of
the date the application was filed, not any earlier first-use date asserted in the application. See Co.
6
v. Salazar, 108 U.S.P.Q.2d 1083, 1086 (TTAB 2013); see also Karma Athletics, Ltd. v. Kallmann,
2014 WL 2159249, at *2 (TTAB May 5, 2014) (non-precedential) (striking non-use claim
asserting mark not in use as of registrant’s stated first use dates). The application date for
Registrant’s Mark is 2019/4/15, and the specimen at issue proved that the mark was used before
such date. That is all the Court or TTAB needs to evaluate the non-use claim. Petitioner’s
allegation fails to allege a prima facie case for the non-use claim.
In the FAP, Petitioner also alleged that the rice noodle product depicted in the specimen
required special permits from FDA, USDA and US Customs and Petitioner did not find any
approvals granted to Registrant’s rice noodle products. 6 TTABVUE 6 at ¶22. After Registrant
cited authorities from FDA and USDA websites stating that the rice noodle was not in the
categories of products that require special permit, Petitioner completely changed subject in its
Response Brief, arguing that the products listed in Registrant’s Mark’s application and
registration “contain flavorings and ingredients that include animal products.” 13 TTABVUE 4.
Petitioner’s such argument is without any factual basis. To be clear, the products listed under
Registrant’s Mark are:
Flour; Flour for food; Noodle-based prepared meals; Noodles; Noodles and sauce
mixes combined in unitary packages; Noodles and seasoning mixes combined in
unitary packages; Noodles, sauce, and processed vegetables combined in unitary
packages; Noodles, sauce, and seasoning toppings combined in unitary packages;
Noodles, sauce, and topping combined in unitary packages; Noodles, seasonings,
edible oil, and dehydrated vegetables combined in unitary packages; Noodles,
seasonings, edible oil, and flavorings combined in unitary packages; Asian
noodles; Barley flour; Bean-starch noodles (harusame, uncooked); Buckwheat
flour; Buckwheat flour; Chinese noodles; Chinese rice noodles (bifun, uncooked);
Chow mein noodles; Coconut flour; Coixseed flour; Corn flour; Corn flour; Corn
starch flour; Edible flour; Fried noodles; Instant noodles; Instant chinese noodles;
Instant udon noodles; Maize flour; Meal kits consisting primarily of noodles; Pad
thai (Thai stir-fried noodles); Pasta and noodles; Potato flour; Pulse flour for food;
Ramen (Japanese noodle-based dish); Ramen noodles; Rice flour; Rice noodles;
Rice starch flour; Rice, pasta and noodles; Rye flour; Somen noodles; Soya flour;
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Starch noodles; Stir-fried noodles with vegetables (Japchae); Tapioca flour; Teff
flour; Udon noodles; Udon noodles; Wheat flour; Wheat flour; Wheat starch flour
Most of them are flour products and none of them contain any animal products. Since
Petitioner’s such argument was not raised in the FAP and the FAP is the operative pleading,
Petitioner’s argument that the listed products under Registrant’s Mark contain animal products
should be ignored by the Board.
E. Petitioner’s Claim for Fraud Should be Dismissed
Petitioner’s fraud claim is also without merits. Petitioner’s Response Brief does not
explain that how the fraud claim in the FAP satisfied with the particularity requirements under
Rule 9(b) of the Federal Rules of Civil Procedure; that how the repeated use of “upon
information and belief” could possibly provide any factual basis to Petitioner’s fraud claim or
they were just Petitioner’s speculations or the “threadbare recitals” of the elements of fraud; or
that how the alleged misrepresentation of the first-use-in-commerce-date is a basis for the fraud
claim when the case law clearly says it is not. Hiraga v. Arena, 90 U.S.P.Q.2d 1102, 1107
(TTAB 2009). The full argument has been set forth in Registrant’s Opening Brief in section II.
D., the same will not be repeated here.
IV. CONCLUSION
For the foregoing reasons, Registrant’s motion to dismiss should be granted in its entirety
and Petitioner’s motion to amend pleading should be denied.
Dated: Queens, New York
June 8, 2020
Respectfully submitted,
KEVIN KERVENG TUNG, P.C.
Attorneys for Registrant
GB Green Gastronome, LLC
8
/s/Ge Li
By: Ge Li, Esq.
Queens Crossing Business Center
136-20 38th Avenue, Suite 3D
Flushing, NY 11354
Tel: (718)939-4633
9
CERTIFICATE OF SERVICE
The undersigned certifies that on the date set forth below a copy of the foregoing
document entitled REGISTRANT’S REPLY BRIEF IN FUTHER SUPPORT ITS MOTION TO
DISMISS PETITIONER’S FIRST AMENDED PETITION FOR CANCELLATION AND
REGISTRANT’S OPPOSITION TO PETITIONER’S MOTION TO AMEND PLEADING was
served on the following by email:
Yue (Robert) Xu
Counsel for Petitioner
BingYang Yao
Dated: June 8, 2020
/s/Ge Li
Ge Li
FCE SIDCertificate Certificate
.. Certificate Expires: May 31' 2018
This certifies that Registrm' Corp, an infupendent compliance set'vice, has verified the following U.S. Food Canning Establishment (FCE) registration
andfiling of process information (SID) with the U.S. Food and Drug Administration pursuant to Title 2l, Code of Federal Regulations, sections i,08,
ll0 andsection ll3 or ll4 as of the date hereof anddesignatedbelow:
CompanyName
Facility Address
U.S. FDA FCE Registration (AofC: FCE)
U.S. FDA Process Filing (AofC: SID)
FDA Food Facility Registration No.
Product Description
Container Description
Container Dimensions
Guangxi Luobawang tr'ood Co., Ltd
Floor 4, Building 6, No. L2 Fuxin Road
Liuzhou, Guangxi 545007, China
28517
20171201001
12626872696
Bamboo Shoots
Flexible Pouch
L:3\2, W: 515, H: 8
Registrar Corp makes no other representations or warranties, nor does this certificate make any representations or
other than the named certificate holder, for whose sble benefit it is issued. FDA may request additional
date hereof (21 CFR 105.25(c)(3)(ii)). Registrar Corpwill confirmthat suchfilingremains ffictive upon
until May 3 I , 2018, unless such filing has been deactivated or invalidated after issuance of this certificate.
person or entity in connection with the foregoing. The U.S. Food and Drug Administration does not issue
process filings. Registrar Corp is not ffiliatedwilh the U.S. Food and Drug Administration
persory,of entiQ
after the
certificate
liability lo any
ofregistration or of
'r€ *Flegistrar Gorp '144 Research Drive, Hampton; Virginia, 23666,U5A
Telephone: +L-7 57 -224-0177 Fax: +l-7 57 -224-017 9
Iman
Director
Corp
02005-2018 Registrar Corp
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