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 STATESgli@kktlawfirm.com, hsong@kktlawfirm.com, ktung@kktlawfirm.com718-939-4633

Submission Other Motions/Papers

Filer's Name Ge Li

Filer's email gli@kktlawfirm.com

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).

3

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;

7

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

trademark@apex-attorneys.com

Dated: June 8, 2020

/s/Ge Li

Ge Li

Exhibit “D”

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

info@registrarcorp.com . www.registrarcorp.com

Exhibit “E”