Who is National Sportswear?
National Sportswear Incorporated (that is us) is a fully registered corporation with the United States Federal Government, as well as a registered corporation in four States of the United States of America.
Through the “Freedom of Information Act” we are entitled to share information with you “the public.”
National Sportswear Incorporated, being of sound mind and a “registered corporation” (as stated above) also pays its taxes to the Federal Government and the four states in which it is a registered, along with its annual reports as requested by the individual state governments. By doing so, the Federal Government and the Government of these four states recognize “National Sportswear” as our “IDENTITY” and furthermore as the “ONLY” National Sportswear Incorporated in the USA.
Several years ago we sent ” a letter of seize and desist” to a company that came online “five years after us” using our name. This other company ignored our request to seize using our name “National Sportswear” and continued using it online. Realizing that our first request failed, we sent them a “second letter of seize and desist,” which they ignored for the second time. We had no alternative choice but to file for a judgment to have this other company stop using our name.
In that request, we simply asked for them to refrain from using our name “National Sportswear” and of course the legal fees that it had to cost us for taking this add and unnecessary action. The Federal Judge sent this other company a notice of his opinion (which is standard procedure) and again, this other company ignored the Judge. Therefore a Default judgement was entered requesting this other company to immediately stop using our name “National Sportswear” and pay the legal costs for the judgment.
After the default judgement was entered and “ONLY after it was entered” did this other company decide to contact us. They did so by filling a lawsuit of $150,000 requesting our (2) Federal Trademarks ” National Sportswear” which at the time were NON-Contestable, they requested our corporation “National Sportswear Incorporated” which is incorporated with the Federal Government, New Jersey Government, Florida Government and Massachusetts Government all as “C corporations and S corporations. As evidence, this other company provided 1- an altered photograph from it’s original state, 2- an unsigned document of incorporation which they claimed was themselves but was owned by another party whom have no affiliation to them and long being de seized (we have the original copy of certified and stamped document by the issuing government stating this is NOT them), and 3- a copy of DBA registration in their county which was “ONLY registered AFTER” the Federal Judge sent his opinion on the results of Default Judgement should they fail to appear, which makes this act a “fraudulent” one. Because the particular county where this other company registered their DBA for the “first time in history within that county, claims (and so does the State Government) that no one shall register a DBA “knowing another company exists with the same name, especially a registered corporation.”
National Sportswear Incorporated, not knowing at the time of this counter lawsuit, that the evidence provided was altered, entered into a “Settlement Agreement” on good faith with this other company. Even after their law firm (not mentioned) presented “fraudulent material as evidence” to support their case against us.
By state law, NO DBA HAS LEGAL PROTECTION AGAINST A CORPORATION OF THAT IDENTITY. After all, it is the “legal” IDENTITY of the corporation who is legally registered in that name.
I lieu of the facts and fraudulent evidence provided to the court, National Sportswear Incorporated has continuously honored the “Settlement Agreement” even knowing all the facts and carrying all the supported documentation by the individual Governments that issued them.
After entering the “Settlement Agreement” the other company or one of it’s associates emailed our CEO some “Blackmail Threats” demanding National Sportswear Incorporated sell them its portion of the rest of that particular state which was clearly documented in the “Settlement Agreement” as “National Sportswear Incorporated Territory” along with the entire rest of “the United States” or the gloves would come off and they would revisit legal action against us and as they put it “let the lawyers work it out.” With complete disregard for the law and the contracted “Settlement Agreement” signed by both parties and all the law firms representing the case.
National Sportswear Incorporated did what any normal corporation would do and presented these emails and documents to our law firm. Who had in turn reminded us that both parties have a legal binding agreement called the “Settlement Agreement” which was documented with the courts, and all parties agreed to information that was contained within it.
So “don’t worry.” We were told.
A few months later, “with no notification whatsoever to National Sportswear Incorporated or its law firm (as clearly outlined in the Settlement Agreement)” this other company hired a different law firm than the one representing them in the “Settlement Agreement” and “filed a cancellation on BOTH Federal Trademarks belonging to National Sportswear Incorporated (us)” which they admittedly claimed belonged to National Sportswear Incorporated in the signed Settlement Agreement.
By filling this cancellation on National Sportswear Incorporation’s United States Federal Trademarks, this other company and it’s law firm brought a costly and “unnecessary” FRIVOLOUS LITIGATION against National Sportswear Incorporated. One that could have easily cost 1-2 million dollars to defend. Perhaps what they had hoped for.
What Happened Next?…
Some lawyers believe they know more than the rest of us. So they would have you assume. As our Law firm put it in our defense, they are merely like the man behind the curtain in the wizard of Oz.
The law firm who represented the other company in the “Settlement Agreement” claimed in his cancellation to the Federal TTAB that National Sportswear Incorporated was somehow in breach of the “Settlement Agreement” by having a place of business in his client’s territory which was outlined in the “Settlement Agreement,” likewise, this attorney used the “Settlement Agreement” as evidence to support his case and argument.
The Federal TTAB Judges pointed out, 1- The location National Sportswear Incorporated was using, was in fact in it’s own territory outlined in the “Settlement Agreement,” furthermore, if there was any breach of this Settlement Agreement, it was to be brought back to the courts in the State where it was signed and issued. And as the Judges made more clear, the United States Federal Trademark court is not a court where Settlement Agreements are to be decide, but rather a court that decides on ownership and legitimacy of “Federal Trademarks.” The Federal Trademark Judges also pointed out that bringing cancellation on National Sportswear Incorporation’s two Federal Trademarks were “fatally time barred by FIVE YEARS.” As these were non-contestable Federal Trademarks and this cancellation was initiated more then five years afterwards and had already been litigated (by the evidence provided, the “SETTLEMENT AGREEMENT.”
Another argument brought forward by the other company’s law firm was that National Sportswear Incorporation’s Federal Trademarks “National Sportswear” were causing consumer confusion (interesting). This is a good place for me to jump in and remind “everyone” that a DBA stands for Doing Business As (FICTITIOUS), (Thank you Mr. Frank Baum.)
The Federal TTAB Judges pointed out in response that there could not be consumer confusion as these two Federal Trademarks “National Sportswear” are in fact “IDENTICAL” to the name and identity of the corporation who owns them, National Sportswear Incorporated. And thus, there is absolutely no confusion. (Thank you Judges).
The cancellation brought on National Sportswear Incorporated of its two United States Federal Trademarks are “DISMISSED WITH PREJUDICE.“
The evidence that the party presented to the TTAB court in cancellation of National Sportswear Incorporation’s Federal Trademarks was the very “Settlement Agreement” for which they had entered into.
This Settlement Agreement (like all Settlement Agreements) had some very specific clauses within it.
One of which was a “Confidentiality Agreement” which clearly states that none of this Settlement Agreement could be shared publicly (with the exception of one paragraph that outlined the territories of each party).
By presenting this Settlement Agreement as evidence to cancel the Trademarks of National Sportswear Incorporated, which this other law firm would have understood clearly, was making the entire Settlement Agreement readily and publicly available to all to read and bringing cause of “defamation” of the good character of National Sportswear Incorporated. This would be BREACH Number ONE.
The cancellation of National Sportswear Federal Trademarks was not only unexpected, it was a surprise that left National Sportswear Incorporated with little to no time to prepare a defense of such magnitude.
The Settlement Agreement (as mentioned above) has many clauses (as it should) one was if any Breach had occurred by either party, the other party with its counsel must upon being made aware of such breach should contact the other party “and its counsel” and allow them 5 days to cure such breach or respond with evidence of no breach occurrences. A filling notice of cancellation of ones Federal Trademarks is NOT a notification of breach with opportunity to cure, but rather an attack of another courts decision. Clearly Breach Number Two
And there were many more….
When is a LAWYER above the LAW?…
The answer is never.
All lawyers must act within the confines of ethical conduct. It is for the benefit of all. There are specific ethical conducts every lawyer must follow if he or she are to “represent the people” and represent the institution that our laws were founded on. Or else there would be absolute chaos.
When a lawyer is asked to represent your case, they do not and should not go into it full charge with eyes closed. They must study your case and look at all the evidence and facts you present them with to determine the viability and legitimacy of your case. In other words, blind folds and curtains don’t qualify.
To proceed in a case knowingly that it is frivolous (remember the Settlement Agreement, what court, and the fatally time barred?), is in fact against the very moral and ethical behavior any lawyer should entertain. If a lawyer chooses that dark path, we must all step forward and let the associated body know.
This is exactly what National Sportswear Incorporated did. National Sportswear Incorporated filed an Ethics Complaint with the Ethics Committee of the County and State where this law firm is registered and practices law.
In searching for this Law Firms information to present it properly and accordingly to the Ethics Committee in his/her County and State, National Sportswear Incorporated stumbled across a form by the Ethics Bar Association itself claiming that this Attorney was on their
“Ineligible To Practice Law” list. It was signed by the acting Judge of that specific territory. And clearly said “you are not legible to practice law.”
This attorney has been put under investigation on the allegations brought forth by National Sportswear Incorporated and that investigation has 1- ended and 2- resulted in a hearing.
The Ethics Committee (or Bar Association) has brought allegations on this lawyer for his acts and misconduct against National Sportswear Incorporated while knowing his client had already entered into a Settlement Agreement with National Sportswear Incorporated. While doing so, brought a frivolous lawsuit against National Sportswear Incorporated and numerous other breaches of the very Settlement Agreement. Made no offer of restitution. And no argument to change law.
This hearing has already taken place.
In the last moments, no, last seconds, just prior to entering the hearing, this attorney and his acting defense plea bargained for lesser punishment.
Plea Bargaining on Ethical Conduct?…
The United States of America has one of the most fascinating legal systems in the world. So much so, that many countries watch us, follow us, and even use us as a model and guide to improve their own legal systems. (I love America!)
We are praised around the world for having a legal system that is the best, the most fair and one that changes with the times. A legal system in place to uphold our laws and protect the innocent, while allowing the guilty the benefit of the doubt. “Just in case there is error.” Now that is fair!
However, sometimes we go just a little too far. Plea Bargains are one of them.
National Sportswear Incorporated and it’s founder looks at it from a more common sense approach. And we do this for the benefit of all who are innocent.
We ask this simple questions and let you “our readers” decide the “ethical fairness and moral conduct of Plea Bargains.”
The questions are simple ones. The short analogy…
A man sees a cliff in front of him where several other people are standing. He knows that if he pushes them off the cliff, they will die. Or be hurt badly. So badly, they may never be able to earn a living again, or earn less than they had before. Because they were “injured.”
This is called cause and affect.
Cliff, push, fall, hurt, never the same (and possibly dead).
The man walking up to the cliff is hired by someone else. The other person hands this man a map and shows him exactly where the cliff is and what will happen to the people by the cliff, should he push them off. He even hands this man a notice that clearly points out a hazardous sign by the cliff.
So, this man simply chooses to push them off the cliff, even when there is a sign in plain view stating DO NOT PUSH OFF CLIFF ( AKA – The Settlement Agreement) and now he is faced with prosecution for doing so.
The RESULT OF A “FRIVOLOUS LAW SUIT” AND ‘BREACH OF SETTLEMENT”
Who is National Sportswear?
Let these Federal Judges tell you.
Baxley Mailed: March 23, 2017
Cancellation No. 92064690
Red Diamond, Co. dba National Sportswear1
National Sportswear Incorporated
Before Kuhlke, Ritchie, and Hightower,
Administrative Trademark Judges.
By the Board:
National Sportswear Incorporated (“Respondent”) owns registrations for the mark
NATIONAL SPORTSWEAR in standard characters for various types of shirts in
1 The ESTTA cover form for the petition to cancel identifies Marc Tartaglia (“Tartaglia”) as
the plaintiff. However, the text of the petition to cancel identifies Petitioner as the plaintiff,
sets forth Petitioner’s allegations of standing, and includes no mention of Tartaglia. In
exhibits to the petition to cancel, Tartaglia is mentioned only as a person who signed a
settlement agreement between the parties on behalf of Petitioner. Moreover, the petition to
cancel is accompanied by a filing fee sufficient to pay for one plaintiff to seek cancellation of
two single-class registrations. See Trademark Rule 2.111(d). Accordingly, we have treated
this proceeding as having been filed by Petitioner as the sole plaintiff herein. See id.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This opinion is not a
precedent of the Trademark
Trial and Appeal Board.
Cancellation No. 92064690
International Class 252 and services “in the field of sportswear and apparel” in
International Class 40.3
Red Diamond, Co. d/b/a National Sportswear (“Petitioner”) filed a petition to
cancel Respondent’s registrations. Petitioner indicated in the ESTTA cover form for
the petition to cancel that it intended to allege (1) deceptiveness under Trademark
Act Section 2(a), 15 U.S.C. § 1052(a), and (2) misrepresentation of source under
Trademark Act Section 14(3), 15 U.S.C. § 1064(3), as grounds for cancellation.4
However, in the text of the petition to cancel, Petitioner pleaded instead different
claims, namely, (1) false suggestion of a connection with Petitioner under Trademark
Act Section 2(a), 15 U.S.C. § 1052(a), (2) likelihood of confusion under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), and (3) dilution under Trademark Act Section 43(c),
15 U.S.C. § 1125(c). In lieu of an answer, Respondent, on December 6, 2016, filed a
motion to dismiss the petition to cancel on the grounds of (1) lack of subject matter
jurisdiction; (2) res judicata based on an April 6, 2015 agreement that settled an
infringement action that Respondent brought on February 20, 2014 against
Registration No. 3222274, issued March 27, 2007, for “Dress shirts; Golf shirts; Knit shirts;
Night shirts; Open-necked shirts; Piquet shirts; Polo shirts; Shirts; Shirts for suits; Shortsleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Sport shirts; Sports shirts;
Sports shirts with short sleeves; Sweat shirts; T-shirts; Wind shirts” in International Class
25, Section 8 affidavit accepted, Section 15 affidavit acknowledged.
Registration No. 3073167, issued March 28, 2006, for “silkscreen-printing, embroidery,
custom imprinting with decorative designs, all in the field of sportswear and apparel” in
International Class 40, renewed.
The mere mention of a claim in the ESTTA cover form for a complaint is insufficient to plead
that claim. See Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825, 1827 n.2 (TTAB
Cancellation No. 92064690
Petitioner in a case styled National Sportswear, Inc. v. Red Diamond Co., d/b/a
National Sportswear, Case No. 2:14-cv-01117-WHW-CLW, filed in the United States
District Court for the District of New Jersey;5 and (3) failure to state a claim under
Fed. R. Civ. P. 12(b)(6). In a December 16, 2016 order, the Board determined that: (1)
it has subject matter jurisdiction to determine the registrability of marks in
cancellation proceedings under Trademark Act Section 14, 15 U.S.C. § 1064; (2) the
likelihood of confusion and dilution claims are time-barred under Trademark Act
Section 14(3) because the petition to cancel was filed more than five years after the
issuance of Respondent’s registrations; and (3) the false suggestion of a connection
claim is legally insufficient.6 The Board then suspended proceedings pending further
briefing and decision on the motion for summary judgment on the res judicata issue.
Res judicata can encompass both claim preclusion and issue preclusion. See Sharp
Kabushiki Kaisha v. ThinkSharp Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1378 (Fed.
Cir. 2006). Because the claims in the civil action were not actually litigated, the
Pursuant to a joint motion by the parties and pursuant to a settlement agreement between
them, the District Court dismissed the civil action with prejudice in an April 16, 2015 order.
4 TTABVUE 27-28.
The false suggestion claim is based on Respondent’s alleged failure to abide by the parties’
settlement agreement in their civil action. See 1 TTABVUE 5 and 12. In the December 16,
2016 order, the Board stated as follows:
[T]o the extent that Petitioner alleges breach of contract, the Board is
empowered only to determine the registrability of marks. See TBMP § 102.01
(2016). The Board may not decide a cause of action for breach of contract, but
may consider a contract, its construction, or its validity if necessary to decide
the issues properly before the Board in an inter partes proceeding, including
the issue of estoppel. See Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d
1316, 217 USPQ 641, 647 (Fed. Cir. 1983); M-5 Steel Mfg. Inc. v. O’Hagin’s Inc.,
61 USPQ2d 1086, 1094-95 (TTAB 2001).
6 TTABVUE 4-5.
Cancellation No. 92064690
doctrine of issue preclusion is inapplicable herein. See Jet Inc. v. Sewage Aeration
Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1859 (Fed. Cir. 2000).
Regarding the doctrine of claim preclusion, such doctrine protects against
relitigation of a previously adjudicated claim between the same parties or their
privies. Under that doctrine, “a judgment on the merits in a prior suit bars a second
suit involving the same parties or their privies based on the same cause of action.”
Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979). “[A] second suit will be
barred by claim preclusion if: (1) there is identity of parties (or their privies); (2) there
has been an earlier final judgment on the merits of a claim; and (3) the second claim
is based on the same set of transactional facts as the first.” Jet Inc., 55 USPQ2d at
1856. We note that Petitioner and Respondent were both parties to the civil action
and that the District Court’s April 16, 2015 dismissal with prejudice operates as a
judgment on the merits of whatever claims were raised therein. See Pactiv Corp. v.
Dow Chemical Co., 449 F.3d 1227, 78 USPQ2d 1939, 1941 (Fed. Cir. 2006); U.S.
Olympic Comm. v. Bata Shoe Co., Inc., 225 USPQ 340 (TTAB 1984). Because neither
party submitted a copy of the pleadings in the civil action, we cannot precisely
determine the nature of the claim therein.7
Nonetheless, the doctrine of claim preclusion is also available where a claim could
have been raised in the prior action. See Pactiv Corp., 78 USPQ2d at 1941; Urock
Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1412 (TTAB 2015) (claim preclusion
Our primary reviewing court has held that civil actions involving infringement and Board
cancellation proceedings do not involve the same transactional facts. See Jet Inc., 55 USPQ2d
Cancellation No. 92064690
“extends to relitigation of ‘claims that were raised or could have been raised’ in an
earlier action” (quoting Allen v. McCurry, 449 US 90, 94 (1980) (emphasis added));
Bacardi & Co. Ltd. v. Ron Castillo, S.A., 178 USPQ 242, 244 (TTAB 1973); see also
Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1173-74 (Fed.
Courts and the Board have concurrent authority to cancel registrations. See
Trademark Act Section 37, 15 U.S.C. § 1119; Ditri v. Coldwell Banker Residential
Affiliates, Inc., 954 F.2d 869, 21 USPQ2d 1530, 1533-34 (3d Cir. 1992); Informix
Software, Inc. v. Oracle Corp., 927 F. Supp. 1283, 40 USPQ2d 1153, 1155 (N.D. Cal.
1996) (Section 37 “provides for concurrent jurisdiction in this Court and the
Trademark Trial and Appeal Board over the cancellation of trademark”
registrations); W & G Tennessee Imports, Inc. v. Esselte Pendaflex Corp., 769 F. Supp.
264, 266 (M.D. Tenn. 1991); 5 J. Thomas McCarthy, McCarthy on Trademarks &
Unfair Competition § 30:109 (4th ed. March 2017 update) (“McCarthy”). “Although a
petition to the [Board] is the primary means of securing a cancellation, the district
court has concurrent power to order cancellation as well for the obvious reason that
an entire controversy may thus be expediently resolved in one forum.” Ditri, 21
USPQ2d at 1534. Because a registration may be collaterally attacked in any civil
action where validity of the mark is in issue, a defendant charged with infringement
of a registered mark may counterclaim for cancellation of that registration. See Holley
Performance Products, Inc. v. Quick Fuel Technology, Inc., 624 F. Supp. 2d 610, 89
USPQ2d 1788, 1791 (W.D. Ky. 2008); Patsy’s Italian Restaurant, Inc. v. Banas, 575
Cancellation No. 92064690
F. Supp. 2d 427, 464 (E.D.N.Y. 2008); 5 McCarthy § 30:109. Our primary reviewing
court held that a defendant who fails to file counterclaim for cancellation of plaintiff’s
registration cannot thereafter petition the Board for cancellation of that registration
where the Board proceeding would effectively constitute a collateral attack on the
judgment in the first case. See Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320,
86 USPQ2d 1369, 1375-76 (Fed. Cir. 2008).
The settlement agreement states that the parties each
release and forever discharge each other and irrevocably waive all
causes of action … in law or equity that [each party] had, now have, or
may have against each other for any cause matter or thing whatsoever,
whether known or unknown, liquidated or unliquidated, absolute or
contingent, enforceable under any local, state or federal statute,
regulation or ordinance, or under the common law of the United States,
or of any of the states, which has occurred up until the time of execution
of this agreement.
1 TTABVUE 15. The parties further agreed that Respondent “has and retains federal
trademark [R]egistration [N]os. 3073167 and 3222274 in the ‘National Sportswear’
word mark, and all rights attendant thereto, which provide senior rights to those of”
Petitioner in Respondent’s territory, which consists of the entire United States other
than Petitioner’s territory, which is composed of eleven counties in New Jersey.8 1
The counties at issue are “Bergen, Essex, Hunterdon, Hudson, Middlesex, Morris, Passaic,
Somerset, Sussex, Union and Warren.” 1 TTABVUE 14.
In the petition to cancel, Petitioner relies upon Respondent’s maintenance of a Neptune,
New Jersey mailing address in support of its assertion that Respondent has breached the
settlement agreement. 1 TTABVUE 5 and 12. Petitioner further asserts in its brief in
response to Respondent’s motion that it is seeking to preserve its rights as the senior user of
the mark NATIONAL SPORTSWEAR “in New Jersey.” 7 TTABVUE 3. However, Petitioner’s
territory as set forth in the settlement agreement does not consist of the entire State of New
Jersey, but rather is limited to the aforementioned eleven counties. Further, Neptune, New
Jersey is in Monmouth County, which is located in Respondent’s territory. 4 TTABVUE 30-
Cancellation No. 92064690
TTABVUE 14 and 16. The parties further agreed that Respondent’s use of its involved
registered mark in its territory “and/or in accordance with the terms of its
registrations and this Agreement does not constitute trademark infringement of”
Petitioner’s “name and mark” NATIONAL SPORTSWEAR under either the
Trademark Act or any state law and that, as long as Respondent uses its mark in
accordance with their agreement, Petitioner “shall not file suit against” Respondent
based on its use of the mark NATIONAL SPORTSWEAR. 1 TTABVUE 16-17.
Restatement (Second) of Judgments § 18(2) makes clear that a defense that could
have been interposed cannot later be used to attack the judgment of the first action.
When a former defendant attempts to undermine a previous judgment by asserting
in a subsequent action a claim or defense that was or could have been asserted in the
earlier case, the rules of defendant preclusion will apply. See Nasalok Coating Corp.,
86 USPQ2d at 1375.
Both of the involved registrations were issued more than six years prior to the
February 20, 2014 commencement of the civil action and are incontestable. See
Trademark Act Section 15, 15 U.S.C. § 1065. As noted, the likelihood of confusion and
dilution claims are time-barred under Trademark Act Section 14(3). However, the
fact that a registration has become incontestable does not preclude cancellation of
that registration under claims that may be brought at any time under Trademark Act
Section 14(3), 15 U.S.C. § 1064(3). See Trademark Act Section 15.
We turn now to the non-time barred claims to which Petitioner refers in the
petition to cancel. As noted in the December 16, 2016 order, Petitioner’s false
Cancellation No. 92064690
suggestion of a connection claim is legally insufficient because it is based on the
similarity of the parties’ marks and not on an assertion that Respondent’s mark is
the same as or a close approximation of Petitioner’s name or identity. 6 TTBAVUE 4.
To properly plead a Section 2(a) claim of false suggestion of a connection, Petitioner
must allege facts which, if proven, would establish that (1) Respondent’s mark is the
same or a close approximation of its name or identity; (2) Respondent’s mark would
be recognized as such by purchasers, in that the mark points uniquely and
unmistakably to Petitioner; (3) Petitioner is not connected with the goods sold or
activities performed by Respondent under the mark; and (4) Petitioner’s name or
identity is of sufficient fame or reputation that when Respondent’s mark is used in
connection with its goods or services, a connection with Petitioner would be
presumed. See Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025, 1031 (TTAB
2015); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). The foregoing
criteria indicates that the facts that give rise to a claim of false suggestion of a
connection are generally of a nature that they would be largely, if not entirely, within
the possession of a plaintiff alleging such claim. Moreover, Petitioner alleges in its
brief in response to Respondent’s motion that it has been known under the name
NATIONAL SPORTSWEAR since eight years prior to Respondent’s first use of the
same mark. 7 TTABVUE 3. As such, the factual basis for a counterclaim for
cancellation of Respondent’s registrations on the ground of false suggestion of a
connection under Section 2(a) was within Petitioner’s knowledge prior to the
dismissal of the civil action. Because that counterclaim could have been raised in the
Cancellation No. 92064690
civil action, Petitioner is barred by the rule of defendant preclusion from relying on
it in its petition to cancel.
The term misrepresentation of source, as used in Trademark Act Section 14(3),
refers to situations where it is deliberately misrepresented by or with the consent of
the registrant that goods and/or services originate from a manufacturer or other
entity when in fact those goods and/or services originate from another party. See Otto
Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007). A pleading of
misrepresentation of source “must be supported by allegations of blatant misuse of
the mark by respondent in a manner calculated to trade on the goodwill and
reputation of petitioner.”9 McDonnell Douglas Corp. v. Nat’l Data Corp., 228 USPQ
45, 47 (TTAB 1985).
In the petition to cancel, Petitioner asserts that Respondent failed to abide by the
parties’ settlement agreement and cites as an example Respondent’s alleged
continuing to list a New Jersey mailing address. 1 TTABVUE 5. However, the
settlement agreement on its face does not prohibit Respondent from using the mark
NATIONAL SPORTSWEAR in the entire State of New Jersey, and instead merely
To the extent that Petitioner seeks to allege that Respondent’s mark is deceptive under
Section 2(a), a Section 2(a) deceptiveness claim is not an alternative means of raising Section
2(d) issues. Rather, a mark is deceptive under Section 2(a) where it consists of or comprises
matter that (1) misdescribes the character, quality, function, composition or use of the goods
or services; (2) prospective purchasers are likely to believe describes the goods; and (3) is
likely to affect a significant portion of the relevant consumers’ decision to purchase. See In re
Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009); In re Budge Mfg. Co.,
857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). Because Petitioner’s grounds for
cancellation are based on the alleged similarity of its mark and trade name to Respondent’s
mark and trade name as opposed to any misdescriptive character of Respondent’s mark, there
would appear to be no basis for a Section 2(a) deceptiveness claim herein.
Cancellation No. 92064690
prohibits Respondent from using that mark in Petitioner’s territory, i.e., eleven
counties in New Jersey. 1 TTABVUE 14, 16 and 17.
Exhibit D of the petition to cancel, upon which Petitioner relies in support of its
assertion that Respondent has failed to abide by the settlement agreement, refers to
an address for Respondent in “Neptune,” New Jersey “07753.” 1 TTABVUE 12. We
take judicial notice that Neptune City and Township of Neptune, New Jersey are
located in Monmouth County. 4 TTABVUE 30-33. We also take judicial notice from
the United States Postal Service database that 07753 is a zip code for Neptune, New
Jersey and Neptune City, New Jersey.
https://tools.usps.com/go/ZipLookupAction_input. See In re Morinaga Nyugyo
Kabushiki Kaisha, 120 USPQ2d 1738, 1744 n.4 (TTAB 2016) (judicial notice of the
locations of Puyallup, Washington and Mount Rainier); Pinocchio’s Pizza Inc. v.
Sandra Inc., 11 USPQ2d 1227, 1229 n. 6 (TTAB 1989) (judicial notice of the location
of Catonsville, Maryland). Cf. In re Aquamar, Inc., 115 USPQ 1122, 1127 n.6 (TTAB
2015) (Board may take judicial notice of census data). Neptune, New Jersey is not
located in the eleven counties which comprise Petitioner’s territory and is instead
located in Respondent’s territory under the settlement agreement. Therefore, we find
that Petitioner has failed to set forth a plausible basis for a misrepresentation of
In view of Petitioner’s failure to file a counterclaim in the civil action and the
parties’ settlement agreement in that civil action, we find that the purported claims
in this proceeding are barred by the doctrine of claim preclusion because they are
Cancellation No. 92064690
based on activities prior to the dismissal with prejudice of the civil action.
Accordingly, Respondent’s motion for summary judgment is hereby granted.
The Board’s general practice is to allow a plaintiff leave to file an amended
complaint after granting a motion to dismiss under Fed. R. Civ. P. 12(b)(6). See TBMP
§ 503.03 (Jan. 2017). However, we note that the doctrine of claim preclusion bars
Petitioner from pursuing any claims that could have been brought as a counterclaim
in the civil action and that Petitioner’s misrepresentation of source claim is
apparently based on a mistaken belief that the settlement agreement in the civil
action gives Petitioner senior rights in the mark NATIONAL SPORTSWEAR in the
entire State of New Jersey, as opposed to the eleven counties identified therein. We
therefore find that granting such leave would be futile in this case. See Embarcadero
Techs., Inc. v. Dephix Corp., 117 USPQ2d 1518, 1523 (TTAB 2016) (motion for leave
to amend denied where proposed claims are untimely and futile). Based on the
foregoing, the petition to cancel is therefore dismissed with prejudice.
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National Sportswear ®
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From the very day National Sportswear ® was founded,
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Who is National Sportswear?… Why not ask the United States Department of Defense?
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