Renato response

Case 0:10-cv-61446-JEM Document 16

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA CASE NO.: 0:10-CV-61446-JEM

MANUFACTURE DES MONTRES VULCAIN, S.A.., f/k/a PMH PRODUCTION ET MARKETING HOROLOGER S.A.,

vs.

Plaintiff,

RENATO WATCHES, INC.,

Defendant. ___________________________________/ ANSWER, AFFIRMATIVE DEFENSES & COUNTERCLAIMS COMES NOW, RENATO WATCHES, INC. (“RENATO”), and files its Answer, Affirmative Defenses, and Counterclaims as follows: 1. Renato admits that this appears to be an action under the causes of actions as alleged by Plaintiff, but denies that Renato has violated any statute or any common law rights of the Plaintiff.

2. Renato admits that Plaintiff seeks equitable and legal remedies, but denies that Plaintiff is entitled to any such relief.

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JURISDICTION AND VENUE 3. Renato admits that this Court has subject matter jurisdiction.

4. Renato admits that this Court is the proper Venue for this matter.

THE PARTIES 5. Renato is without sufficient information to admit or deny the allegations of paragraph 5 and therefore denies same.

6. Renato admits the allegations of paragraph 6.

7. Renato is without sufficient information to admit or deny the allegations of paragraph 7 and therefore denies same.

PHMʼs ALLEGATION OF TRADEMARK RIGHTS 8. Renato is without sufficient information to admit or deny the allegations of paragraph 8 and therefore denies same.

9. Renato is without sufficient information to admit or deny the allegations of paragraph 9 and therefore denies same. Upon information and belief, any such “rights” relied upon by Plaintiff from their “predecessors-in-interest” are without any legal import in so much as Plaintiff does not have appropriate chain of title to any such “rights,” or otherwise no rights were ever tacked on because of trademark abandonment.

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10. Renato is without sufficient information to admit or deny the allegations of paragraph 10 and therefore denies same.

11. Renato admits that on April 18, 1950 (60 years ago) that a company known Ditisheim & Cie Fabriques Vulcain Et Volta registered VULCAIN as a trademark. However, that registration has been dead since 1991. Since then, another company, Gruen Precision, Inc., registered “VULCAIN” for watches, Registration No. 1,703,133. That registration was cancelled in 1999. In any event, Renato denies that: (1) the original registrant of the trademark is in fact a “predecessor-in-interest” of Plaintiff; and (2) any implication that any trademark rights exist from that original registration.

12. Renato is without sufficient information to admit or deny the allegations of paragraph 12 since Plaintiff MANUFACTURE DES MONTRES VULCAIN, S.A. is not listed as the Registrant of Registration No. 2,814,431, nor is that entity listed as an assignee of same. Therefore, Renato denies the allegations of paragraph 12.

13. Renato denies the allegations of paragraph 13.

14. Renato is without sufficient information to admit or deny the allegation of paragraph 14 and therefore denies same.

15. Renato is without sufficient information to admit or deny the allegation of paragraph 15 and therefore denies same.

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16. Renato is without sufficient information to admit or deny the allegation of paragraph 16 and therefore denies same.

17. Renato is without sufficient information to admit or deny the allegation of paragraph 17 and therefore denies same.

18. Renato denies the allegations that the terms are “foreign language equivalents.” Renato has no comment on the recitation of legal doctrine.

ALLEGATIONS RELATING TO RENATO 19. Renato admits that it manufactures and distributes wristwatches and watch parts.

Renato denies that Plaintiff is a competitor (whether well-known or

otherwise) in so much as Renato has no information relating to Plaintiffʼs alleged commercial activities in the United States watch industry.

20. Renato is without information sufficient to admit or deny the allegations that it “competes” with Plaintiff. Renato denies that it first introduced its “VULCAN” wristwatch in 2009. Rather, Renato filed its trademark application with the United States Patent and Trademark Office as early as November 2007 and commercialized the brand shortly thereafter.

21. Renato admits the allegations in paragraph 21 but denies the allegation that Renatoʼs trademark is an “offending mark.”

22. Renato denies the allegations of paragraph 22.

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23. Renato denies the allegations that any confusion occurred, is likely to occur, or that Plaintiffʼs owns a “famous” brand.

24. Paragraph 24 contains merely lawyerʼs argument which does not require an admission or denial. However, to the extent necessary Renato denies the allegations of paragraph 24.

25. Renato denies the allegations of paragraph 25.

26. Renato denies the allegations of paragraph 26.

27. Renato admits the allegations of paragraph 27 but denies any implication that the issuance of any demands are based on law or fact.

28. Renato denies the allegations of paragraph 28.

29. Renato denies the allegations of paragraph 29.

30. Renato denies the allegations of any wrongdoing or intentional acts. Renato denies any implication that the issuance of any demands are based on law or fact.

31. Paragraph 31 requires no admission or denial by Renato. To the extent that it does, Renato denies same and incorporates all of the foregoing responses into the following paragraphs.

COUNT I 32. Renato denies the allegations of paragraph 32.

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33. Renato denies the allegations of paragraph 33.

34. Renato denies the allegations of paragraph 34.

35. Renato denies the allegations of paragraph 35.

36. Renato denies the allegations of paragraph 36.

COUNT II 37. Renato admits the allegations of paragraph 37, but denies the existence of same supports Plaintiff始s Count II. 38. Renato admits the allegations of paragraph 38, but denies any implication that the filing of same was based in law or fact.

39. Renato admits the allegations of paragraph 39. It is for that reason, that Renato puts forth the affirmative defenses of laches, estoppel, and other equitable defenses. Namely, Plaintiff failed to present testimony at the Trademark Trial and Appeal Board and was facing immediate dismissal of its Opposition Proceeding for failure to do same. It was only after Renato filed a Motion for Judgment for Failure to Present Testimony (see attached) that Plaintiff decided to file this case in the United States District Court for the Southern District of Florida.

40. Renato admits the recitation of the law, but denies any implication that Renato始s trademark application is not suited for registration.

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41. Renato denies the allegations of paragraph 41.

COUNT III 42. Renato denies the allegations of paragraph 42.

43. Renato denies the allegations of paragraph 43.

44. Renato denies the allegations of paragraph 44.

45. Renato denies the allegations of paragraph 45.

COUNT IV 46. Renato denies the allegations of paragraph 46.

47. Renato denies the allegations of paragraph 47.

48. Renato denies the allegations of paragraph 48.

Renato denies that Plaintiff is entitled to any of the relief sought in paragraphs 18 of its Wherefore clause.

AFFIRMATIVE DEFENSES First The Complaint fails to state a claim for relief.

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Second The Complaint is barred by the doctrine of Unclean Hands in so much as Plaintiff is attempting to enforce a trademark for which it does not own all right and title.

Plaintiff has no appropriate chain of title to the subject trademark in United States commerce. Plaintiff is aware that it has rights junior to Renato and is attempting to enforce a federal registration maliciously, willfully, and without appropriate right and title.

Third To the extent that Plaintiff has garnered any trademark rights in VULCAIN from any alleged predecessors-in-interest such rights were abandoned.

Fourth Any such trademark rights that Plaintiff seeks to rely upon based upon the famous marks doctrine are of no import since Plaintiff始s mark is not famous.

Fifth Plaintiff has no appropriate chain of title in the subject trademark because any such assignment of rights from predecessors-in-interest were assignments in gross, and therefore invalid.

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Sixth Plaintiffʼs claim is barred by fraud in so much as it has made material mispresentations to the United States Patent and Trademark Office which resulted in the registration and maintenance of the subject trademark. But for Plaintiffʼs mispresentations the USPTO would not have registered or otherwise maintained the subject trademark registration.

Seventh Plaintiffʼs claim is barred by the doctrine of trademark misuse.

Eighth Plaintiff has not, and can not, suffer any damages.

Ninth Plaintiff lacks standing to bring this action.

Tenth Plaintiffʼs alleged mark “VULCAIN” has a considerably different commercial impression in the minds of the relevant United States consumers than Renatoʼs VULCAN trademark.

Case 0:10-cv-61446-JEM Document 16

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COUNTERCLAIMS Background of Dispute 1. Renato filed United States Trademark Application Serial No. 77/227,753 on July 12, 2007.

2. Renato filed said trademark application after it conducted a trademark search and obtained the opinion of counsel regarding same.

3. After examination of the application by the United States Patent and Trademark Office始s trademark examiner, the application was published for opposition on November 20, 2007.

4. During the examination process of that trademark application, the Trademark Examiner assigned to the application did not cite to any prior-filed trademark applications or federal registrations as posing a conflict with Renato始s trademark application.

5. On March 30, 2000 PHM Production et Marketing Horloger, S.A. filed trademark application Serial No. 76/013,066 for VULCAIN and design. That application was based upon Section 1(b) and 44(E) of the Lanham Act. 6. On February 17, 2004 the Plaintiff始s trademark application became a registration.

7. From March 30, 2000-February 17, 2004 Plaintiff never commenced sufficient and bona fide trademark usage of the mark in United States commerce.

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8. On February 5, 2010 Plaintiff submitted a Section 8 and 15 affidavit to the United States Patent and Trademark Office. In doing so, Plaintiff committed fraud on the United States Patent and Trademark Office when it declared that it was continuously using the mark in United States commerce for five (5) consecutive years after the date of regisration. In fact, the specific language of the declaration as filed is as follows: Declaration The mark is in use in commerce on or in connection with the goods and/or services identified above, as evidenced by the attached specimen(s) showing the mark as used in commerce. The mark has been in continuous use in commerce for five (5) consecutive years after the date of registration, or the date of publication under Section 12(c), and is still in use in commerce. There has been no final decision adverse to the owner's claim of ownership of such mark, or to the owner's right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.

The undersigned being hereby warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of this document, declares that he/she is properly authorized to execute this document on behalf of the Owner; and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.

Signature: /anthony scardino/ Date: 02/05/2010 Signatory's Name: Anthony Scardino Signatory's Position: Attorney 9. Plaintiff filed the Section 8 and 15 affidavits/declarations during the pendency of the Opposition Proceeding between the parties.

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10. On January 18, 2008, Plaintiff filed an Opposition against Renatoʼs trademark application at the United States Patent and Trademark Office.

11. The parties fully litigated the Opposition Proceeding until the “Testimony Period.”

12. Plaintiff failed to take any testimony or to present any testimony to the TTAB. 13. On July 6, 2010, Renato filed a Motion to Dismiss the action for Plaintiffʼs failure to prosecute, i.e., present any testimony.

14. The Opposition Proceeding was suspended. Recognizing that its failure to take and present testimony was fatal to its opposition proceeding, Plaintiff then decided to file this instant action.

15. The Opposition Proceeding has been suspended pending the outcome of this civil action.

16. All of Plaintiffʼs actions at the TTAB and herein were brought in bad faith and without any legal or factual support.

17. Renato has been prejudiced by Plaintiffʼs litigation tactics.

18. For all of the foregoing reasons, Plaintiffʼs Trademark Registration No. 2,814,431 should be cancelled.

19. For all of the foregoing reasons, this Court should declare that Plaintiff has no common law rights in VULCAIN in the United States.

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COUNT I CANCELLATION OF REGISTRATION NO. 2,814,431 FRAUD ON USPTO 20. Pursuant to 15 U.S.C. Section 1064(3) Renato seeks cancellation of Plaintiffʼs Federal Trademark Registration No. 2,814,431 because the trademark registration was either (1) abandoned; (2) obtained fraudulently; or (3) otherwise obtained or maintained by improper means.

21. Plaintiff fraudulently obtained Federal Trademark Registration No. 2,814,431.

22. To the extent Plaintiff ever had bona fide use of the mark in United States commerce, such rights have been abandoned.

23. Plaintiff does not have appropriate chain of title to the federal registration and any rights appurtenant thereto. As such, the registration was obtained under the wrong legal entity, or otherwise maintained by the wrong legal entity.

24. Renato has been damaged by Plaintiffʼs wrongful registration of the trademark.

25. The public has been and will continue to be damaged by Plaintiffʼs wrongful registration of the mark.

26. Renato is entitled to attorneysʼ fees and damages based upon Plaintiffʼs wrongful registration, maintenance, and enforcement of the mark.

Case 0:10-cv-61446-JEM Document 16

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Dated: September 21, 2010

BY: /s/ Frank Herrera FRANK HERRERA

H NEW MEDIA IP + INTERNET LAW 1749 N.E. Miami Court Suite 308 Miami, Florida 33132 305.965.5148 fherrera@hnewmedia.com

CERTIFICATE OF FILING AND SERVICE

WE HEREBY CERTIFY that a true copy hereof has been filed by CM-ECF this 21 day of September, 2010, and served on: Ira Cohen, Esq., Silver, Garvett & Henkel, P.A., Counsel for Plaintiff, 18001 Old Cutler Road, #600, Miami, FL 33157.

H NEW MEDIA IP + INTERNET LAW 1749 N.E. Miami Court Suite 308 Miami, Florida 33132 305.965.5148 fherrera@hnewmedia.com

BY: /s/ Frank Herrera FRANK HERRERA

Case 0:10-cv-61446-JEM Document 16-1

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date:

Proceeding

ESTTA356373 07/06/2010

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91181983

Party

Defendant Renato Watches, Inc.

Correspondence Address

Submission

Frank Herrera Quintairos, Prieto, Wood & Boyer, PA 9300 S. Dadeland Blvd., Fourth Floor Miami, FL 33156 UNITED STATES fherrea@gpwblaw.com Other Motions/Papers

Filer's Name

Frank Herrera

Filer's e-mail

fherrera@qpwblaw.com

Signature

/FH/

Date

07/06/2010

Attachments

Mot for Judgment for Ps failure to prove case FINAL.pdf ( 3 pages )(22946 bytes )

Case 0:10-cv-61446-JEM Document 16-1

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Trademark Application No. 77/227,753 __________________________________________ ) PMH Production et Marketing Horologer S.A., ) ) Opposer, ) Opposition No. 9118183 ) - against ) ) RENATO WATCHES, INC. ) ) Applicant. ) __________________________________________) APPLICANT’S MOTION FOR JUDGMENT FOR OPPOSER’S FAILURE TO PROVE CASE COMES NOW Applicant, Renato Watches, Inc. and pursuant to TBMP §§534.01-02 hereby moves for judgment for Opposer’s failure to prove case.

Pursuant to the Board’s Order of January 8, 2010, Opposer’s 30-Day Trial Period was from May 26-June 26, 2010. During that time, and as of the writing of this motion, Opposer failed to take any testimony, or offer any other evidence to prove its case as alleged in its Notice of Opposition. Since it has failed to take part in the testimony period, or otherwise offer any evidence to support its case, Applicant is entitled to judgment and the expedient issuance of a registration for its trademark “VULCAN”. Applicant is timely filing this motion prior to the opening of Applicant’s 30-Day Trial Period.

MEMORANDUM OF LAW Pursuant to the TBMP §534.01 and 37 C.F.R. §2.132, the Board may enter an involuntary dismissal for a party’s failure to take testimony. 37 C.F.R. §2.132 sets forth: (a) If the time for taking testimony by any party in the position of plaintiff has expired and that party has not taken testimony or offered any other evidence, any party in the position of defendant may, without waiving the right to offer evidence in

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the event the motion is denied, move for dismissal on the ground of the failure of the plaintiff to prosecute. The party in the position of plaintiff shall have fifteen days from the date of service of the motion to show cause why judgment should not be rendered against him. In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff. If the motion is denied, testimony periods will be reset for the party in the position of defendant and for rebuttal. (b) If no evidence other than a copy or copies of Patent and Trademark Office records is offered by any party in the position of plaintiff, any party in the position of defendant may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground that upon the law and the facts the party in the position of plaintiff has shown no right to relief. The party in the position of plaintiff shall have fifteen days from the date of service of the motion to file a brief in response to the motion. The Trademark Trial and Appeal Board may render judgment against the party in the position of plaintiff, or the Board may decline to render judgment until all of the evidence is in the record. If judgment is not rendered, testimony periods will be reset for the party in the position of defendant and for rebuttal. (c) A motion filed under paragraph (a) or (b) of this section must be filed before the opening of the testimony period of the moving party, except that the Trademark Trial and Appeal Board may in its discretion grant a motion under paragraph (a) even if the motion was filed after the opening of the testimony period of the moving party.

The Trademark Rules of Practice permit the filing of a motion for judgment directed to the sufficiency of a plaintiff's trial evidence in two particular situations, described in 37 CFR §§ 2.132(a) and 2.132(b). Only in these two situations will the Board entertain such a motion. Applicant believes that the first reason is sufficient as set forth in 37 CFR §§ 2.132(a).

In this first situation in which a defendant may appropriately file a motion for judgment directed to the sufficiency of a plaintiff's trial evidence, judgment is appropriate when the plaintiff's testimony period has passed and the plaintiff has not taken testimony or offered any other evidence.

This is the situation presently before the Board. In such a situation, the defendant may, without waiving its right to offer evidence in the event the motion is denied, move for dismissal for failure of the plaintiff to prosecute. A motion for judgment under 37 CFR § 2.132(a) should be filed before the opening of the moving party’s testimony period, but the Board may, in its discretion, grant the motion even if it was filed thereafter.

2

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The purpose of the motion under 37 CFR § 2.132(a) is to save the defendant the expense and delay of continuing with the trial in those cases where plaintiff has failed to offer any evidence during its testimony period. Thus, Applicant wishes to avoid the expense and delay of continuing with the trial since Opposer has failed to offer any evidence during its testimony period.

WHEREFORE, Applicant respectfully requests that the Board enter an Order granted Applicant’s Motion for Judgment for Opposer’s Failure to Prove Its Case.

Dated: July 6, 2010 Respectfully submitted, Applicant _s/FRANK HERRERA___ Frank Herrera Florida Bar No. 494801 Email: fherrera@qpwblaw.com QUINTAIROS, PRIETO, WOOD & BOYER, P.A. 9300 S. Dadeland Blvd., Fourth Floor, Miami, Florida 33156 Telephone: (305) 670-1101 Facsimile: (305) 670-1161 Counsel for Applicant CERTIFICATE OF SERVICE I HEREBY CERTIFY that a true and correct copy of the foregoing was served on Opposer’s new trial counsel: Mario Kranjac, Esq. Kranjac Manuali & Viskovic LLP 12th Floor 30 Wall Street New York NY 10005 Phone Number: 646-216-2400

By U.S. Mail this 6th day of July, 2010. _s/FRANK HERRERA Frank Herrera

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