Fromageries Bel v. Emmi Roth - Motion To Dismiss Counterclaim

Case: 1:18-cv-07217 Document #: 24 Filed: 12/12/18 Page 1 of 12 PageID #:128
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
FROMAGERIES BEL S.A. and

BEL BRANDS USA, INC.,
Plaintiffs/Counter-Defendants, Civil Action No.: 18-cv-7217
v. Judge: Hon. Robert W. Gettleman
EMMI ROTH USA, INC.,
Defendant/Counter-Plaintiff.
PLAINTIFFS’ MEMORANDUM OF LAW IN SUPPORT OF THEIR MOTION TO

DISMISS DEFENDANT’S COUNTERCLAIMS
Plaintiffs/Counter-Defendants, Fromageries Bel S.A. and Bel Brands USA, Inc.
(“Plaintiffs”), by their attorneys, pursuant to Fed. R. Civ. P. 12(b)(6), move to dismiss in part
Defendant/Counter-Plaintiff Emmi Roth USA, Inc.’s (“Defendant”) Second and Third
Counterclaims for Cancellation of U.S. Registration No. 4,247,808 (the “‘808 Registration”) and
U.S. Registration No. 4,335,143 (the “‘143 Registration”).
I. INTRODUCTION
Defendant’s Second Counterclaim seeks to cancel the ‘808 Registration on the basis that
the description of the mark in the ‘808 Registration exceeds the scope of the underlying
International Registration No. 1028701. This claim fails as a matter of law. The ‘808
Registration has been registered for more than five years and is “incontestable” as defined under
Section 15 of the Lanham Act. Defendant’s challenge falls outside of the specifically articulated
bases permitting cancellation of a U.S. Trademark Registration that is more than five years old
under 15 U.S.C. 1064, and for an incontestable mark under 15 U.S.C. § 1115. 1
Even if Defendant’s challenge was lodged before the ‘808 Registration’s fifth
anniversary and before it became incontestable, Defendant’s claim would still be barred because
challenges based on the description of a registered mark cannot be asserted in an adversarial
proceeding, but rather are only the subject of ex parte examination between the owner of the
mark and the assigned Examiner of the United States Patent and Trademark Office (“USPTO”).
Defendant’s Third Counterclaim for Cancellation of the ‘143 Registration is similarly
legally deficient. The ‘143 Registration also has been registered for more than five years and is
incontestable. This Counterclaim seeks to cancel the ‘143 Registration on the basis that the
specimen of use submitted by Plaintiffs in maintaining the ‘143 Registration does not match the
mark in the original application and therefore Plaintiffs have abandoned the registered mark.
Again, Defendant’s challenge falls outside of the specifically articulated bases permitting
cancellation of a U.S. Trademark Registration of a registration more than five years old under 15
U.S.C. 1064, and for an incontestable mark under 15 U.S.C. § 1115.
As with their challenge to the ‘808 Registration discussed above, a challenge to the
USPTO Examiner’s decision to accept a specimen cannot be raised in an adversarial proceeding,
but rather is adjudicated through the ex parte examination of the registration at the USPTO.
II. DISCUSSION
To survive a motion to dismiss under Rule 12(b)(6), Defendant’s counterclaim “must
contain enough facts to state a claim for relief that is plausible on its face.” Citadel Group Ltd. v.
1
Regardless of the unavailability of this claim to the Defendant, USPTO rules expressly state that an
application must comply with United States requirements regarding descriptions of the mark, which
applies to all applications, regardless of whether they originate from the Madrid system. See 37 C.F.R. §
7.25(a) and37 CFR 2.37. Therefore, differences in the description of a mark would not affect validity.
2
Washington Reg'l Med. Ctr., 692 F.3d 580, 591 (7th Cir. 2012). “A claim has facial plausibility
when the [pleading party] pleads factual content that allows the court to draw the reasonable
inference that the [non-pleading party] is liable for the misconduct alleged.” McReynolds v.
Merrill Lynch & Co., Inc., 694 F.3d 873, 885 (7th Cir. 2012). Allegations in the form of legal
conclusions are insufficient to survive a Rule 12(b)(6) motion. Accordingly, ‘[t]hreadbare
recitals of the elements of the cause of action, supported by mere conclusory statements, do not
suffice.’” Id. A party must allege sufficient factual matter to nudge its claims across the line from
conceivable to plausible. See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955,
1974, 167 L. Ed. 2d 929 (2007).
A. The ‘808 Registration
1. The ‘808 Registration is More Than Five Years Old and is Incontestable and
Cannot Be Challenged Based on the Description of the Mark
Defendant’s Second Counterclaim seeks to cancel U.S. Registration No. 4,247,808, or, in
the alternative, issue an Order limiting the scope of the ‘808 Registration, on the basis that: (1)
the mark is wholly functional, and (2) that the scope of the ‘808 Registration exceeds the scope
of the underlying International Registration No. 1028701. Defendant’s second basis for
dismissing the ‘808 Registration, namely that the scope of the ‘808 Registration should be
limited by the purported limitations of International Registration No. 1028701, fails as a matter
of law.
Section 15 of the Lanham Act, 15 U.S.C. 1065, provides that a mark which has been
registered for at least five years is eligible for the status of incontestability, provided that the use
has been continuous and uninterrupted. The ‘808 Registration is incontestable, as it was
registered with the United States Patent and Trademark Office on November 27, 2012 – more
than six (6) years before Defendant filed its Counterclaim – and combined §71 and §15
3
declarations were filed by Plaintiffs on February 9, 2018, and were accepted by the Trademark
Office on February 28, 2018 (See Exhibit A).
Section 14 and 15(b) of the Lanham Act, 15 U.S.C. §§ 1064 and 1115(b) enumerate the
specific, limited, grounds by which an incontestable registration may be cancelled. 2 Defendant’s
challenge here, an allegation that the scope of the ‘808 Registration exceeds the scope of the
underlying International Registration No. 1028701, is not permitted under Section 14 or 15(b).
The U.S. Supreme Court has interpreted this statutory list of grounds as a strict limitation on the
available challenges to an incontestable mark. See Park 'n Fly v. Dollar Park & Fly, 469 U.S.
189, 195-96 (1985). In Park 'n Fly, the Supreme Court held that the Defendant was not
permitted to seek cancellation of the Plaintiff’s incontestable trademark registration based on an
allegation that the mark of said registration was merely descriptive, because descriptiveness was
not one of the limited grounds enumerated in §§ 14 or 15(b) of the Lanham Act.
Defendant seeks to cancel Plaintiffs’ incontestable ‘808 Registration because of an
alleged discrepancy between the “information concerning colors” claimed in the underlying
International Registration and the “description of the mark,” as issued by the USPTO.
Defendant’s grounds for seeking to cancel the ‘808 Registration clearly falls outside the
enumerated grounds found in §§ 14 and 15(b) of the Lanham Act, and are thus not legally viable
under Park 'n Fly.
This strict interpretation of the available grounds for challenging an incontestable mark
are consistent with Congress’ intent in passing the statute – which was to “provide a means for
the registrant to quiet title in the ownership of his mark” and to “encourage producers to cultivate
the goodwill associated with a particular mark.” See Park 'n Fly, 469 U.S. at 198. See also
2
These specifically enumerated grounds are genericness, functionality, abandonment, fraud, or if the
registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source
of the goods or services on or in connection with which the mark is used.
4
Deflecta-Shield Corp. v. Kar-Rite Corp., 1986 U.S. Dist. LEXIS 20332, at *5 (N.D. Ill. Sep. 16,
1986).
The “power of the courts to cancel registrations and to otherwise rectify the register,
must be subject to the specific provisions concerning incontestability.” Park 'n Fly, 469 U.S. at
203 (internal quotations omitted). Once a mark has been used for five years following
registration, “it becomes incontestable … and [i]ncontestability is conclusive evidence of the
validity of the registered mark and … the registrant's exclusive right' to use the mark in
commerce.” Purepecha Enters. v. El Matador Spices & Dry Chiles, 2012 U.S. Dist. LEXIS
120499, at *34-35 (N.D. Ill. Aug. 24, 2012) citing Eco Mfg. LLC v. Honeywell Int'l, Inc., 357
F.3d 649, 651 (7th Cir. 2003) (internal quotations omitted).
Defendant’s counterclaim, insomuch that it is based on a claim that the scope of the ‘808
Registration purportedly exceeds the scope of the underlying International Registration No.
1028701, is not a statutorily permitted challenge to the incontestable ‘808 Registration.
Defendant’s claim to cancel the ‘808 Registration on this basis is legally flawed, and must be
dismissed.
2. Even if the ‘808 Registration were not Incontestable, Defendant’s Claim Would Still
Fail.
An application filed under the Madrid Protocol is first filed with the World Intellectual
Property Organization (“WIPO”). Once the applicant elects to extend protection of an
international registration to the United States, the USPTO examines the application according the
U.S. regulations to ensure the application complies with all of the requirements under U.S. law.
Defendant’s counterclaim points to an alleged discrepancy between the “description of
the mark” of the ‘808 Registration and the statement of “information concerning colors claimed”
that is included in the International Registration No. 1028701.
5
Defendant’s challenge cannot be raised in this Court. Issues of ex parte formalities are to
be raised by the USPTO. The application was already reviewed by the USPTO and the applicant
complied with all requirements regarding description of the mark. Any challenge to the
sufficiency of the description of a mark could only have been raised by the USPTO, and only
during ex parte examination of the application. See, Saint-Gobain Abrasives Inc. v. Unova Indus.
Automation Syst. Inc., 66 U.S.P.Q.2d (BNA) 1355, 2003 WL 880554, at *4 (TTAB 2003)
(Holding that disputes over the sufficiency of Plaintiff’s description of goods in its registration
was an “ex parte question of the sufficiency of the description of the mark” and “not a valid
ground for opposition or cancellation” (internal quotations omitted)). See also Flash & Partners
S.P.A. v. I. E. Manu. LLC, 95 U.S.P.Q.2d (BNA) 1813, 2010 WL 2946842, at *3 (TTAB 2010)
("[E]x parte examination matters . . . do[] not form a basis for cancellation.").
This is consistent with the USPTO’s policy on other formalities typically raised during
the application process, such as examination of specimens of use, submission of foreign
registration certificates, and signature requirements. See Century 21 Real Estate Corp. v. Century
Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (adequacy of the specimens is solely a
matter of ex parte examination); Phonak Holding AG, 2000 TTAB LEXIS 309, *3-4 (TTAB
2000) (failing to enforce the requirement of an applicant to submit a foreign registration
certificate is an examination error, and not a proper grounds for opposition or cancellation);
Flash & Partners S.P.A. v. I. E. Mfg. LLC, 2010 TTAB LEXIS 306, *5-6, 95 U.S.P.Q.2D (BNA)
1813, 1815-1816 (TTAB 2010) (“The determination of opposer's compliance with the signature
requirement was an ex parte examination issue addressed during prosecution. This issue, as with
similar ex parte examination matters, does not form a basis for cancellation.”) Trademark
application formalities are treated as ex parte matters, and do not form a valid statutory basis for
6
cancellation, in Federal District Court litigation. See Ferring B.V. v. Fera Pharm., LLC, 2015
U.S. Dist. LEXIS 2048, at *23-25 (E.D.N.Y. Jan. 8, 2015).
It is consistently held that “[f]airness dictates that the ex parte question of the sufficiency
of the description of the mark not be a ground for opposition or cancellation.” Saint-Gobain
Abrasives, Inc., 66 U.S.P.Q.2D (BNA) at 1359. The Board properly reasoned that, had an
Examining Attorney before the U.S. Patent and Trademark Office objected to the description
during examination, the trademark owner would have had an opportunity to submit an acceptable
description of the mark. Id. (relying on a similar result obtained in a case involving the
MARSHALL FIELDS trademark) citing Marshall Field & Co. v. Mrs. Fields Cookies, 11
USPQ2d 1355 (TTAB 1989). It would be “manifestly unfair” to penalize a party for failure to
comply with the requirement that was never made by the Examining Attorney. Id. See also
Marshall Field & Co., 11 USPQ2d at 1358 (“[I]t would be unfair to penalize registrant for not
submitting substitute specimens when that requirement was never made by the Examining
Attorney.”).
So, even assuming, arguendo, there were a legally relevant distinction between the
“description of the mark” of the ‘808 Registration and the “information concerning colors
claimed” of International Registration No. 1028701, this type of issue may only be appropriately
addressed during ex parte examination, and not through the present proceeding. Defendant’s
claim for cancellation cannot be brought before this Court based on an alleged examination error
by the USPTO. Therefore, as a matter of law, this must be dismissed.
7
B. The ‘143 Registration
1. Defendant’s Third Counterclaim Fails to Allege a Permitted Ground for

Challenging the ‘143 Registration.
Defendant’s Third Counterclaim seeks to petition the Court to cancel the ‘143
Registration on the basis that (1) the mark is wholly functional, and (2) the specimen of use
submitted by Plaintiffs in their combined §8 and §15 Declarations of Use and Incontestability
does not depict the mark of the ‘143 Registration, and therefore Plaintiffs’ have abandoned use
of the mark of the ‘143 Registration. Defendant’s second basis for cancelling the ‘143
Registration, namely that the specimen submitted in connection with the §71 and §15
Declarations does not depict the mark of the ‘143 Registration, fails as a matter of law.
The ‘143 Registration is incontestable, as it was registered with the United States Patent
and Trademark Office on November May 14, 2013 – more than five (5) years before Defendant
filed its Counterclaim – and combined §8 and §15 declarations were filed by Plaintiffs on
October 23, 2018, and were accepted by the Trademark Office on November 9, 2018 (See
Exhibit B).
As stated above, the available grounds for petitioning to cancel a registration that is more
than five years old, and incontestable, are limited. See supra pg. 4-5. Defendant’s grounds for
cancelling the ‘143 Registration, that the specimen submitted by Plaintiffs in their combined §8
and §15 Declarations of Use and Incontestability “does not reflect use of the mark claimed in”
the ‘143 Registration, is not one of these specifically permitted statutory grounds.
While abandonment is a recognized challenge of an incontestable registration, the
abandonment claim cannot be based on whether the USPTO properly exercised its authority to
accept a specimen that had some differences from the mark that appeared in the original
application.
8
2. Even if the ‘808 Registration were not Incontestable, Defendant’s Claim Would Still
Fail.
Defendant’s third counterclaim, insomuch that it is based on a claim that the specimen
submitted by Plaintiff in its combined §8 and §15 Declarations of Use and Incontestability “does
not reflect use of the mark claimed in” the ‘143 Registration, does not plead a statutorily
permitted challenge to the incontestable ‘143 Registration. See, e.g., Century 21 Real Estate
Corp., 10 USPQ2d at 2035; Marshall Field & Co. 11 USPQ2d at 1358; Granny's Submarine
Sandwiches v. Granny's Kitchen Inc., 199 USPQ564, 567 (TTAB 1978); Hyde Park Footwear
Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 642 (TTAB 1977). The USPTO held that
it would be unfair to penalize registrant for not submitting substitute specimens when that
requirement was never made by the Examining Attorney. Marshall Field & Co., 11 USPQ2d at
1358.
During this ex parte examination of a post-registration declaration, the USPTO must
determine if the specimen submitted reflects a material alteration of the subject trademark.
TMEP 1604.13. Absolute identity is not required, but rather, “[t]he controlling question is
always whether the old and new forms of the mark create essentially the same commercial
impression.” Id. citing Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 1370 (Fed. Cir. 2015). The USPTO accepted
Plaintiff’s combined §8 and §15 Declarations of Use and Incontestability for the ‘143
Registration, and thus found that this specimen did not reflect a “material alteration” of the
subject trademark, creating “essentially the same commercial impression.” This Court does not
have jurisdiction to challenge that finding, and to reopen examination of an incontestable
registration.
9
Even assuming, arguendo, that the specimen submitted with Plaintiff’s combined §8 and
§15 Declarations of Use and Incontestability reflected a “material alteration” to the subject
trademark, this type of issue may only be appropriately addressed during ex parte examination,
and not through the present proceeding.
Defendant’s petition to the Court to cancel the ‘143 Registration on this basis must be
dismissed.
III. CONCLUSION
Defendant’s counterclaims, as addressed herein, do not raise viable bases for challenging
the incontestable ‘808 and ‘143 Registrations, as they do not state a viable claim for relief under
Sections 14 and 15(b) of the Lanham Act, and accordingly must be dismissed. Even had the
registrations not already secured incontestable status, Defendant’s counterclaims would still need
to be dismissed as they seek relief which could only be properly addressed during ex parte
prosecution before the US Trademark Office.
Dated: December 12, 2018 Respectfully submitted,
By: /s/ Steven L. Baron
Steven L. Baron (ARDC #6200868)

George V. Desh (ARDC #6305733)
Mandell Menkes LLC
1 North Franklin Street, Suite 3600
Chicago, IL 60606
Tel.: (312) 251-1000
sbaron@mandellmenkes.com
gdesh@mandellmenkes.com
and
Jess M. Collen
Jeffrey A. Lindenbaum
Michael Nesheiwat
10
COLLEN IP
The Holyoke-Manhattan Building
80 South Highland Avenue
Ossining, New York 10562
Tel.: (914) 941 5668
Fax: (914) 941-6091
jcollen@collenip.com
jlindenbaum@collenip.com
mnesheiwat@collenip.com
Counsel for Plaintiffs/Counter-Defendants
11
CERTIFICATE OF SERVICE
The undersigned, an attorney, hereby certifies that a true and correct copy of the
foregoing has been served on December 12, 2018 via the Court’s CM/ECF system on all counsel
of record who have consented to electronic service.
/s/ Steven L. Baron
12
Case: 1:18-cv-07217 Document #: 24-1 Filed: 12/12/18 Page 1 of 21 PageID #:140
EXHIBIT A
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1683 (Rev 11/2012)
OMB No. 0651-0055 (Exp 12/31/2018)
Combined Declaration of Continued Use/Excusable Nonuse and Incontestability Under

Sections 71 and 15
The table below presents the data as entered.
Input Field Entered

REGISTRATION
4247808
NUMBER
REGISTRATION DATE 11/27/2012
SERIAL NUMBER 79078868
MARK SECTION
MINI BABYBEL (stylized and/or with design, see https://tmng-
MARK
al.uspto.gov/resting2/api/img/79078868/large)
ATTORNEY SECTION (current)
NAME Jess M. Collen
FIRM NAME Collen IP Intellectual Property Law
INTERNAL ADDRESS THE HOLYOKE-MANHATTAN BUILDING
STREET 80 South Highland Avenue
CITY Ossining
STATE New York
POSTAL CODE 10562
COUNTRY United States
PHONE 9149415668
EMAIL docket@collenip.com
AUTHORIZED TO
COMMUNICATE VIA E-MAIL
Yes
DOCKET/REFERENCE
NUMBER
K648
ATTORNEY SECTION (proposed)

NAME Jess M. Collen
CITY Ossining
STATE New York
POSTAL CODE 10562
PHONE 9149415668
EMAIL trademark@collenip.com
AUTHORIZED TO
Yes
DOCKET/REFERENCE
NUMBER
K648
OTHER APPOINTED
Jane F. Collen
ATTORNEY
CORRESPONDENCE SECTION (current)

NAME Jess M. Collen
CITY Ossining
STATE New York
POSTAL CODE 10562
PHONE 9149415668
EMAIL docket@collenip.com
AUTHORIZED TO
Yes
DOCKET/REFERENCE
NUMBER
K648
CORRESPONDENCE SECTION (proposed)

NAME Jess M. Collen
CITY Ossining
STATE New York
POSTAL CODE 10562
PHONE 9149415668
AUTHORIZED TO
Yes
DOCKET/REFERENCE
NUMBER
K648
DOMESTIC REPRESENTATIVE SECTION (new)

NAME Jess M. Collen
CITY Ossining
STATE New York
POSTAL CODE 10562
PHONE 9149415668
AUTHORIZED TO
Yes
DOCKET/REFERENCE
K648
NUMBER
GOODS AND/OR SERVICES SECTION

INTERNATIONAL CLASS 029
Eggs, milk and dairy products excluding ice creams, ice milk and frozen yoghurts; lactic
beverages consisting primarily of milk and lactic proteins for use as a food additive, whey,
GOODS OR SERVICES TO BE
DELETED
edible oils and fats, cheese spreads, cheese food, cheese and cracker combinations, cheese
substitutes, cream cheese, granulated cottage cheese, food packaged combinations consisting
primarily of cheese
GOODS OR SERVICES IN USE
IN COMMERCE
cheeses and specialty cheese products, namely, cheese
SPECIMEN FILE NAME(S) \\TICRS\EXPORT17\IMAGEOUT 17\790\788\79078868\xml2\ S750002.JPG

\\TICRS\EXPORT17\IMAGEOUT 17\790\788\79078868\xml2\ S750003.JPG

SPECIMEN DESCRIPTION Photographs of the goods bearing the mark
OWNER/HOLDER SECTION (current)
NAME FROMAGERIES BEL
INTERNAL ADDRESS 2 allée de Longchamp
STREET F-92150 Suresnes
COUNTRY France
OWNER SECTION (proposed)
STREET 2 allée de Longchamp
CITY Suresnes
ZIP/POSTAL CODE F-92150
COUNTRY France
LEGAL ENTITY SECTION (current)
TYPE Société anonyme
STATE/COUNTRY WHERE
LEGALLY ORGANIZED
France
PAYMENT SECTION
NUMBER OF CLASSES 1
NUMBER OF CLASSES PAID 1

COMBINED §§ 71 & 15 FILING
FEE
325
TOTAL FEE PAID 325

SIGNATURE SECTION
ORIGINAL PDF FILE hw_711254634-151619564_._K648_executed_Secctions_71_and_15_Declaration_180123.PDF
CONVERTED PDF FILE(S)
(3 pages)
\\TICRS\EXPORT17\IMAGEOUT17\790\788\79078868\xml2\S750006.JPG
SIGNATORY'S NAME Muriel Zevaco
SIGNATORY'S POSITION Director business Law and IP
PAYMENT METHOD CC
FILING INFORMATION
SUBMIT DATE Fri Feb 09 15:25:16 EST 2018
USPTO/S71N15-XX.XXX.XX.XX
-20180209152516762604-424
7808-510bd17599a7df5e22e1
TEAS STAMP 13ccab839aac62ffba252d3d6
a0def567a39b788d1b2969-CC
-1870-2018020915161956474
0
PTO Form 1683 (Rev 11/2012)
OMB No. 0651-0055 (Exp 12/31/2018)
Combined Declaration of Continued Use/Excusable Nonuse and Incontestability Under Sections 71 and 15
To the Commissioner for Trademarks:
REGISTRATION NUMBER: 4247808
REGISTRATION DATE: 11/27/2012
MARK: (Stylized and/or with Design, MINI BABYBEL (see, mark))
The owner/holder, FROMAGERIES BEL, Société anonyme legally organized under the laws of France, having an address of
2 allée de Longchamp
Suresnes, F-92150
France
is filing a Combined Declaration of Continued Use/Excusable Nonuse and Incontestability Under Sections 71 and 15.
For International Class 029, this filing does NOT cover the following goods or services for this specific class listed in the registered extension of
protection, and these goods or services are to be permanently deleted from the from the registered extension of protection: Eggs, milk and dairy
products excluding ice creams, ice milk and frozen yoghurts; lactic beverages consisting primarily of milk and lactic proteins for use as a food
additive, whey, edible oils and fats, cheese spreads, cheese food, cheese and cracker combinations, cheese substitutes, cream cheese, granulated
cottage cheese, food packaged combinations consisting primarily of cheese
The mark is in use in commerce on or in connection with the following goods or services listed in the existing registered extension of protection
for this specific class; and the mark has been continuously used in commerce for five (5) consecutive years after the date of registration, and is
still in use in commerce on or in connection with these goods or services. Also, no final decision adverse to the owner's claim of ownership of
such mark for these goods or services exists, or to the owner's right to register the same or to keep the same on the register; and, no proceeding
involving said rights pending and not disposed of in either the U.S. Patent and Trademark Office or the courts exists: cheeses and specialty
cheese products, namely, cheese
The owner is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in this class,
consisting of a(n) Photographs of the goods bearing the mark.
Specimen File1
Specimen File2
Specimen File3
Specimen File4
The registrant's current Attorney Information: Jess M. Collen of Collen IP Intellectual Property Law
THE HOLYOKE-MANHATTAN BUILDING
United States
The phone number is 9149415668.
The email address is docket@collenip.com. (authorized)
The docket/reference number is K648.
The registrant's proposed Attorney Information: Jess M. Collen of Collen IP Intellectual Property Law
United States The docket/reference number is K648.
The Other Appointed Attorney(s): Jane F. Collen.

The email address is trademark@collenip.com. (authorized)
The registrant's current Correspondence Information: Jess M. Collen of Collen IP Intellectual Property Law
United States
The email address is docket@collenip.com. (authorized)
The docket/reference number is K648.
The registrant's proposed Correspondence Information: Jess M. Collen of Collen IP Intellectual Property Law
United States The docket/reference number is K648.

The registrant hereby appoints Jess M. Collen of Collen IP Intellectual Property Law, THE HOLYOKE-MANHATTAN BUILDING, 80 South
Highland Avenue, Ossining, New York United States 10562 as registrant's representative upon whom notice or process in the proceedings
affecting the mark may be served.
The email address is trademark@collenip.com.
A fee payment in the amount of $325 will be submitted with the form, representing payment for 1 class(es), plus any additional grace period fee,
if necessary.
Declaration
Original PDF file:

hw_711254634-151619564_._K648_executed_Secctions_71_and_15_Declaration_180123.PDF
Converted PDF file(s) (3 pages)
Signature File1
Signature File2
Signature File3
Signatory's Name: Muriel Zevaco
Signatory's Position: Director business Law and IP
Mailing Address (current):

Collen IP Intellectual Property Law
Mailing Address (proposed):

Collen IP Intellectual Property Law
Serial Number: 79078868

Internet Transmission Date: Fri Feb 09 15:25:16 EST 2018
TEAS Stamp: USPTO/S71N15-XX.XXX.XX.XX-20180209152516
762604-4247808-510bd17599a7df5e22e113cca
b839aac62ffba252d3d6a0def567a39b788d1b29
69-CC-1870-20180209151619564740
From: TMOfficialNotices@USPTO.GOV
Sent: Wednesday, February 28, 2018 11:02 PM
To: trademark@collenip.com
Subject: Official USPTO Notice of Acceptance/Acknowledgement Sections 71 and 15: U.S. Trademark RN 4247808: MINI BABYBEL (Stylized/Design):
Docket/Reference No. K648
U.S. Registration Number: 4247808 U.S. Serial Number: 79078868

U.S. Registration Date: Nov 27, 2012 International Reg. No.: 1028701
Mark: MINI BABYBEL (Stylized/Design)
U.S. Registration Holder/Owner: FROMAGERIES BEL
Feb 28, 2018
NOTICE OF ACCEPTANCE UNDER SECTION 71

The declaration of use or excusable nonuse filed for the above-identified registration meets the requirements of Section 71 of the Trademark Act, 15 U.S.C. §1141k. The
Section 71 declaration is accepted.
NOTICE OF ACKNOWLEDGEMENT UNDER SECTION 15

The declaration of incontestability filed for the above-identified registration meets the requirements of Section 15 of the Trademark Act, 15 U.S.C. §1065. The Section 15
declaration is acknowledged.
The U.S. registration will remain in force for the term of the international registration upon which it is based for the following class(es), as long as the requirements
for maintaining the registration are fulfilled as they become due.
Class(es):
029
TRADEMARK SPECIALIST
POST-REGISTRATION DIVISION
571-272-9500
ADDITIONAL REQUIREMENTS FOR MAINTAINING A U.S. TRADEMARK REGISTRATION

EXTENDING PROTECTION OF AN INTERNATIONAL REGISTRATION
WARNING: In addition to filing renewals of your international registration with the International Bureau of the World Intellectual Property Organization (WIPO) as
required under the Madrid Protocol, your registered extension of protection will be canceled if you do not file the documents below during the specified statutory
time periods.
I) SECTION 71 DECLARATION OF USE
Requirements in the First Ten Years
What and When to File: You must file a declaration of use (or excusable nonuse) between the 9th and 10th years after the date of issuance of the U.S. registration extending
protection. 15 U.S.C. §1141k(a)(2).
Requirements in Successive Ten-Year Periods
What and When to File: You must file a declaration of use (or excusable nonuse) between every 9th and 10th-year period, calculated from the date of issuance of the U.S.
registration extending protection. 15 U.S.C. §1141k(a)(2).
Grace Period Filings
The above documents will be considered as timely if filed within six months after the deadlines listed above with the payment of an additional fee. 15 U.S.C. §1141k(a)(3).
Failure to file the Section 71 declaration will result in the cancellation of the U.S. registration and invalidation of the protection of the international registration in the
United States.
II) RENEWAL OF INTERNATIONAL REGISTRATION
The international registration remains in force for 10 years, with the possibility of renewal. Madrid Protocol, Article 6(1). Failure to renew the international registration with
the International Bureau of WIPO will result in the expiration of the U.S. registration even if the Section 71 declaration of use has been accepted.
Any international registration may be renewed for a period of ten years from the expiry of the preceding period, by the mere payment of the required fee to the International
Bureau. Madrid Protocol, Article 7(1). The deadlines for renewing the international registration are calculated from the international registration date. If the international
registration is not renewed, the corresponding U.S. registration will cease to be valid as of the date of the expiration of the international registration. 15 U.S.C. §1141j(b).
Renewal applications must be filed with the International Bureau in accordance with Article 7 of the Madrid Protocol, 37 C.F.R. §7.41(a). The USPTO will not process or
forward any requests to renew an international registration or extension of protection to the United States if mistakenly submitted to the USPTO. 37 C.F.R. §7.41(b).
*** THE USPTO IS NOT REQUIRED TO SEND ANY FURTHER NOTICE OR REMINDER OF THESE REQUIREMENTS. THE HOLDER/OWNER SHOULD CONTACT THE
USPTO ONE YEAR BEFORE THE EXPIRATION OF THE TIME PERIODS SHOWN ABOVE TO DETERMINE APPROPRIATE REQUIREMENTS AND FEES.***
To check the status of this registration, go to

https://tsdr.uspto.gov/#caseNumber=79078868&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch or contact the Trademark Assistance
Center at 1-800-786-9199.
To view this notice and other documents for this registration on-line, go to
https://tsdr.uspto.gov/#caseNumber=79078868&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=documentSearch NOTE: This notice will only be
available on-line the next business day after receipt of this e-mail.
* For further information, including information on filing and maintenance requirements for U.S. trademark applications and registrations and required fees,
please consult the USPTO website at https://www.uspto.gov/trademark/ or contact the Trademark Assistance Center at 1-800-786-9199.
EXHIBIT B
PTO Form 1583 (Rev 05/2006)
OMB No. 0651-0055 (Exp 10/31/2021)
Combined Declaration of Use and Incontestability under Sections 8 & 15
The table below presents the data as entered.
Input Field Entered

REGISTRATION NUMBER 4335143
REGISTRATION DATE 05/14/2013
SERIAL NUMBER 77894906
MARK SECTION
MINI BABYBEL THE LAUGHING COW (stylized and/or with design, see https://tmng-
MARK
al.uspto.gov/resting2/api/img/77894906/large)
ATTORNEY SECTION (current)
NAME Jess M. Collen
FIRM NAME COLLEN IP INTELLECTUAL PROPERTY LAW PC
INTERNAL ADDRESS TOWN OF OSSINING
STREET 80 S HIGHLAND AVENUE
CITY WESTCHESTER COUNTY
STATE New York
POSTAL CODE 10562-5615
PHONE (914) 941-5668
FAX (914) 941-6091
DOCKET/REFERENCE NUMBER J1357
ATTORNEY SECTION (proposed)
NAME Jess M. Collen
CITY Ossining
STATE New York
PHONE (914) 941-5668
FAX (914) 941-6091
AUTHORIZED TO
Yes

OTHER APPOINTED ATTORNEY Jane F. Collen
CORRESPONDENCE SECTION (current)
NAME JESS M COLLEN
INTERNAL ADDRESS TOWN OF OSSINING
STREET 80 S HIGHLAND AVENUE
CITY WESTCHESTER COUNTY
STATE New York
PHONE (914) 941-5668
FAX (914) 941-6091
CORRESPONDENCE SECTION (proposed)
NAME Jess M. Collen
CITY Ossining
STATE New York
PHONE (914) 941-5668
FAX (914) 941-6091
AUTHORIZED TO
Yes

DOMESTIC REPRESENTATIVE SECTION (new)
NAME Jess M. Collen
CITY Ossining
STATE New York
PHONE (914) 941-5668

FAX (914) 941-6091
AUTHORIZED TO
Yes

GOODS AND/OR SERVICES SECTION
INTERNATIONAL CLASS 029
GOODS OR SERVICES Cheeses and specialty cheese products, namely, cheese
SPECIMEN FILE NAME(S) \\TICRS\EXPORT17\IMAGEOUT 17\778\949\77894906\xml1\ 8150002.JPG
\\TICRS\EXPORT17\IMAGEOUT 17\778\949\77894906\xml1\ 8150003.JPG
\\TICRS\EXPORT17\IMAGEOUT 17\778\949\77894906\xml1\ 8150004.JPG
SPECIMEN DESCRIPTION Photographs of the mark as used with the goods
OWNER SECTION (current)
STREET 16 boulevard Malesherbes
CITY 75008 Paris
COUNTRY France
OWNER SECTION (proposed)
STREET 2 allée de Longchamp
CITY Suresnes
ZIP/POSTAL CODE 92150
COUNTRY France
LEGAL ENTITY SECTION (current)
TYPE corporation
STATE/COUNTRY OF
INCORPORATION
France
PAYMENT SECTION
NUMBER OF CLASSES 1
NUMBER OF CLASSES PAID 1
COMBINED §§ 8 & 15 FILING FEE
PER CLASS
325
TOTAL FEE PAID 325

SIGNATURE SECTION
ORIGINAL PDF FILE hw_711254634-143308773_._J1357_executed_Section_8_and_15_Declaration_181023.PDF
CONVERTED PDF FILE(S)
(2 pages)
\\TICRS\EXPORT17\IMAGEOUT17\778\949\77894906\xml1\8150005.JPG
\\TICRS\EXPORT17\IMAGEOUT17\778\949\77894906\xml1\8150006.JPG
SIGNATORY'S NAME Muriel Zevaco
SIGNATORY'S POSITION Director Business Law and Intellectual Property

PAYMENT METHOD CC
FILING INFORMATION
SUBMIT DATE Tue Oct 23 18:22:09 EDT 2018
USPTO/S08N15-XX.XXX.XX.XX
-20181023182209282000-433
5143-61072f523ee6a84eb207
TEAS STAMP
a62d85adc6e93ae1bf8d3664e
4777bba1775d525a24984-CC-
5154-20181023181636366760
PTO Form 1583 (Rev 05/2006)
OMB No. 0651-0055 (Exp 10/31/2021)
Combined Declaration of Use and Incontestability under Sections 8 & 15

To the Commissioner for Trademarks:
REGISTRATION NUMBER: 4335143
REGISTRATION DATE: 05/14/2013
MARK: (Stylized and/or with Design, MINI BABYBEL THE LAUGHING COW (see, mark))
The owner, FROMAGERIES BEL, a corporation of France, having an address of

2 allée de Longchamp
Suresnes, 92150
France
is filing a Combined Declaration of Use and Incontestability under Sections 8 & 15.
For International Class 029, the mark is in use in commerce on or in connection with all of the goods/all of the services, or to indicate
membership in the collective membership organization, listed in the existing registration for this specific class: Cheeses and specialty cheese
products, namely, cheese; and the mark has been continuously used 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 on or in connection with all goods/all services, or to indicate
membership in the collective membership organization, listed in the existing registration for this class. Also, no final decision adverse to the
owner's claim of ownership of such mark for those goods/services, or to indicate membership in the collective membership organization, exists,
or to the owner's right to register the same or to keep the same on the register; and, no proceeding involving said rights pending and not disposed
of in either the U.S. Patent and Trademark Office or the courts exists.
The owner is submitting one(or more) specimen(s) for this class showing the mark as used in commerce on or in connection with any item in this
class, consisting of a(n) Photographs of the mark as used with the goods.
Specimen File1
Specimen File2
Specimen File3
The registrant's current Attorney Information: Jess M. Collen of COLLEN IP INTELLECTUAL PROPERTY LAW PC
TOWN OF OSSINING
80 S HIGHLAND AVENUE
WESTCHESTER COUNTY, New York 10562-5615
United States
The phone number is (914) 941-5668.
The fax number is (914) 941-6091. (not authorized)
The docket/reference number is J1357.
The registrant's proposed Attorney Information: Jess M. Collen of COLLEN IP INTELLECTUAL PROPERTY LAW PC
Ossining, New York 10562-5615
United States The docket/reference number is J1357.
The Other Appointed Attorney(s): Jane F. Collen.

The fax number is (914) 941-6091.
The registrant's current Correspondence Information: JESS M COLLEN of COLLEN IP INTELLECTUAL PROPERTY LAW PC
TOWN OF OSSINING
United States
The fax number is (914) 941-6091. (not authorized)
The docket/reference number is J1357.
The registrant's proposed Correspondence Information: Jess M. Collen of COLLEN IP INTELLECTUAL PROPERTY LAW PC
United States The docket/reference number is J1357.

The registrant hereby appoints Jess M. Collen of COLLEN IP INTELLECTUAL PROPERTY LAW PC, THE HOLYOKE-MANHATTAN
BUILDING, 80 South Highland Avenue, Ossining, New York United States 10562-5615 as registrant's representative upon whom notice or
process in the proceedings affecting the mark may be served.
The email address is trademark@collenip.com.
A fee payment in the amount of $325 will be submitted with the form, representing payment for 1 class(es), plus any additional grace period fee,
if necessary.
Declaration
Original PDF file:

hw_711254634-143308773_._J1357_executed_Section_8_and_15_Declaration_181023.PDF
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Muriel Zevaco
Signatory's Position: Director Business Law and Intellectual Property
Mailing Address (current):

COLLEN IP INTELLECTUAL PROPERTY LAW PC
Mailing Address (proposed):

COLLEN IP INTELLECTUAL PROPERTY LAW PC
Serial Number: 77894906

Internet Transmission Date: Tue Oct 23 18:22:09 EDT 2018
TEAS Stamp: USPTO/S08N15-XX.XXX.XX.XX-20181023182209
282000-4335143-61072f523ee6a84eb207a62d8
5adc6e93ae1bf8d3664e4777bba1775d525a2498
4-CC-5154-20181023181636366760
From: TMOfficialNotices@USPTO.GOV
Sent: Friday, November 9, 2018 11:00 PM
To: trademark@collenip.com
Subject: Official USPTO Notice of Acceptance/Acknowledgement Sections 8 and 15: U.S. Trademark RN 4335143: MINI BABYBEL THE LAUGHING COW
(Stylized/Design): Docket/Reference No. J1357
U.S. Serial Number: 77894906

U.S. Registration Number: 4335143
U.S. Registration Date: May 14, 2013
Mark: MINI BABYBEL THE LAUGHING COW (Stylized/Design)
Owner: FROMAGERIES BEL
Nov 9, 2018
NOTICE OF ACCEPTANCE UNDER SECTION 8

The declaration of use or excusable nonuse filed for the above-identified registration meets the requirements of Section 8 of the Trademark Act, 15 U.S.C. §1058. The Section
8 declaration is accepted.
NOTICE OF ACKNOWLEDGEMENT UNDER SECTION 15

The declaration of incontestability filed for the above-identified registration meets the requirements of Section 15 of the Trademark Act, 15 U.S.C. §1065. The Section 15
declaration is acknowledged.
The registration will remain in force for the class(es) listed below, unless canceled by an order of the Commissioner for Trademarks or a Federal Court, as long as
the requirements for maintaining the registration are fulfilled as they become due.
Class(es):
029
TRADEMARK SPECIALIST
POST-REGISTRATION DIVISION
571-272-9500
REQUIREMENTS FOR MAINTAINING REGISTRATION
WARNING: Your registration will be canceled if you do not file the documents below during the specified statutory time periods.
Requirements in the First Ten Years
What and When to File: You must file a declaration of use (or excusable nonuse) and an application for renewal between the 9th and 10th years after the registration date.
See 15 U.S.C. §§1058, 1059.
Requirements in Successive Ten-Year Periods
What and When to File: You must file a declaration of use (or excusable nonuse) and an application for renewal between every 9th and 10th-year period, calculated from the
registration date. See 15 U.S.C. §§1058, 1059.
Grace Period Filings
The above documents will be considered as timely if filed within six months after the deadlines listed above with the payment of an additional fee.
***THE USPTO IS NOT REQUIRED TO SEND ANY FURTHER NOTICE OR REMINDER OF THESE REQUIREMENTS. THE OWNER SHOULD CONTACT THE USPTO
ONE YEAR BEFORE THE EXPIRATION OF THE TIME PERIODS SHOWN ABOVE TO DETERMINE APPROPRIATE REQUIREMENTS AND FEES.***
To check the status of this registration, go to

https://tsdr.uspto.gov/#caseNumber=77894906&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch or contact the Trademark Assistance
Center at 1-800-786-9199.
To view this notice and other documents for this registration on-line, go to
https://tsdr.uspto.gov/#caseNumber=77894906&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=documentSearch NOTE: This notice will only be
available on-line the next business day after receipt of this e-mail.
* For further information, including information on filing and maintenance requirements for U.S. trademark applications and registrations and required fees,
please consult the USPTO website at https://www.uspto.gov/trademark/ or contact the Trademark Assistance Center at 1-800-786-9199.

Fromageries Bel v. Emmi Roth - Motion To Dismiss Counterclaim

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Fromageries Bel v. Emmi Roth - Motion To Dismiss Counterclaim

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Case: 1:18-cv-07217 Document #: 24 Filed: 12/12/18 Page 1 of 12 PageID #:128

IN THE UNITED STATES DISTRICT COURT

FROMAGERIES BEL S.A. and

Plaintiffs/Counter-Defendants, Civil Action No.: 18-cv-7217

v. Judge: Hon. Robert W. Gettleman

EMMI ROTH USA, INC.,

PLAINTIFFS’ MEMORANDUM OF LAW IN SUPPORT OF THEIR MOTION TO

Plaintiffs/Counter-Defendants, Fromageries Bel S.A. and Bel Brands USA, Inc.

Defendant/Counter-Plaintiff Emmi Roth USA, Inc.’s (“Defendant”) Second and Third

U.S. Registration No. 4,335,143 (the “‘143 Registration”).

challenges based on the description of a registered mark cannot be asserted in an adversarial

Defendant’s Third Counterclaim for Cancellation of the ‘143 Registration is similarly

U.S.C. 1064, and for an incontestable mark under 15 U.S.C. § 1115.

USPTO Examiner’s decision to accept a specimen cannot be raised in an adversarial proceeding,

To survive a motion to dismiss under Rule 12(b)(6), Defendant’s counterclaim “must

conclusions are insufficient to survive a Rule 12(b)(6) motion. Accordingly, ‘[t]hreadbare

1974, 167 L. Ed. 2d 929 (2007).

A. The ‘808 Registration

Office on February 28, 2018 (See Exhibit A).

specific, limited, grounds by which an incontestable registration may be cancelled. 2 Defendant’s

permitted to seek cancellation of the Plaintiff’s incontestable trademark registration based on an

Defendant seeks to cancel Plaintiffs’ incontestable ‘808 Registration because of an

under Park 'n Fly.

registration, “it becomes incontestable … and [i]ncontestability is conclusive evidence of the

F.3d 649, 651 (7th Cir. 2003) (internal quotations omitted).

1028701, is not a statutorily permitted challenge to the incontestable ‘808 Registration.

Property Organization (“WIPO”). Once the applicant elects to extend protection of an

Defendant’s counterclaim points to an alleged discrepancy between the “description of

that is included in the International Registration No. 1028701.

the application process, such as examination of specimens of use, submission of foreign

2000) (failing to enforce the requirement of an applicant to submit a foreign registration

U.S. Dist. LEXIS 2048, at *23-25 (E.D.N.Y. Jan. 8, 2015).

by the USPTO. Therefore, as a matter of law, this must be dismissed.

B. The ‘143 Registration

1. Defendant’s Third Counterclaim Fails to Allege a Permitted Ground for

While abandonment is a recognized challenge of an incontestable registration, the

During this ex parte examination of a post-registration declaration, the USPTO must

have jurisdiction to challenge that finding, and to reopen examination of an incontestable

and not through the present proceeding.

prosecution before the US Trademark Office.

Dated: December 12, 2018 Respectfully submitted,

By: /s/ Steven L. Baron

Steven L. Baron (ARDC #6200868)

Counsel for Plaintiffs/Counter-Defendants

of record who have consented to electronic service.

/s/ Steven L. Baron

Combined Declaration of Continued Use/Excusable Nonuse and Incontestability Under

The table below presents the data as entered.

Input Field Entered

ATTORNEY SECTION (proposed)

CORRESPONDENCE SECTION (current)

CORRESPONDENCE SECTION (proposed)

DOMESTIC REPRESENTATIVE SECTION (new)

GOODS AND/OR SERVICES SECTION

SPECIMEN FILE NAME(S) \\TICRS\EXPORT17\IMAGEOUT 17\790\788\79078868\xml2\ S750002.JPG

\\TICRS\EXPORT17\IMAGEOUT 17\790\788\79078868\xml2\ S750004.JPG

NUMBER OF CLASSES PAID 1

TOTAL FEE PAID 325

MARK: (Stylized and/or with Design, MINI BABYBEL (see, mark))

The phone number is 9149415668.

The phone number is 9149415668.

The phone number is 9149415668.

The email address is trademark@collenip.com.