Chris W. Taylor Jr.v.Three Frog, LLC

Trademark Trial and Appeal Board

Feb 28, 2022

91255161 (T.T.A.B. Feb. 28, 2022)

JK February 28, 2022 Opposition No. 91255161 Chris W. Taylor Jr. v. Three Frog, LLC Before Zervas, Lynch and Dunn, Administrative Trademark Judges. By the Board: This proceeding is before the Board for consideration of Applicant’s July 28, 2021 motion for summary judgment pursuant to Fed. R. Civ. P. 56(a), and motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6), as well as Opposer’s cross-motions for summary judgment pursuant to Fed. R. Civ. P. 56(a). The motions are fully briefed. Relevant Background On September 20, 2018, applicant filed Serial No. 88125640 based on Trademark Act Section 1(a), use of the applied-for mark in commerce, to register the following trademark 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 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Opposition No. 91255161 2 . The application identifies the following International Class 28 goods: dice boxes, namely, boxes specially adapted for storing dice; wooden boxes specially adapted for storing board game components or dice; board game and tabletop game accessories, namely, accessories in the nature of boxes specially adapted for storing board game components or dice; and includes the following description of the applied-for mark: The mark consists of a three-dimensional configuration of the interior of a hex shaped box with a honeycomb configuration of seven interior hexagonal indentations on the bottom of the box and the design of a six point star, having flat points, on the top of the box. The broken lines depicting circular magnets indicate placement of the mark on the goods and are not part of the mark. The applied-for mark was refused registration as a non-distinctive product design under Trademark Act Sections 1, 2, and 45. Applicant filed a response asserting a Trademark Act Section 2(f) claim of acquired distinctiveness based on evidence submitted therewith. The examining attorney issued a final refusal, in response to which Applicant submitted additional evidence. The application was approved with the Section 2(f) claim. This opposition followed. Opposition No. 91255161 3 Opposer’s operative pleading is the second amended notice of opposition filed by leave of the Board on March 14, 2021 (16 TTABVUE),1 wherein he sets forth the following claims: 1) Count One - the applied-for mark is functional2; 2) Count Two - non-distinctive trade dress lacking acquired distinctiveness; and 3) Count Three - no bona fide use of the applied-for mark in commerce as of the application filing date. In its answer to the second amended notice of opposition, Applicant denied the salient allegations. 17 TTABVUE. Applicant moved for summary judgment pursuant to Fed. R. Civ. P. 56(a) with respect to 1) Opposer’s entitlement to a statutory cause of action (18 TTABVUE 9);3 and 2) Count Three (non-use), arguing that it (Applicant) was using the applied-for mark in commerce as of the September 20, 2018 filing date (18 TTABVUE 16). Within its summary judgment motion, Applicant included a motion to dismiss Count One (functionality) in the second amended notice of opposition for failure to 1 On October 14, 2000 Opposer filed his first amended notice of opposition. 8 TTABVUE 7. On February 13, 2021, the Board granted leave to file a second amended notice of opposition so as to replead Count One. 15 TTABVUE 13. However, Opposer captioned this filing as “OPPOSER’S FIRST AMENDED NOTICE OF OPPOSITION.” 16 TTABVUE 2. 2 Below, the Board discusses its construction of certain allegations under this claim. 3 The parties discuss this issue in terms of both standing and entitlement. Board discusses this issue as entitlement. Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, prior decisions of the Board and the Federal Circuit which interpret Section 13 and 14 remain applicable. Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Opposition No. 91255161 4 state a claim upon which relief can be granted pursuant to Fed. R. Civ. P. 12(b)(6).4 18 TTABVUE 14. In response, Opposer partially captioned his brief as a “cross-motion for summary judgment,” which, because Opposer did not address Applicant’s arguments regarding Count Three (non-use), would be limited to and thus appears to be directed to Applicant’s argument that Opposer lacks entitlement. Furthermore, inasmuch as Opposer set forth the Fed. R. Civ. P. 56(a) summary judgment standard (20 TTABVUE 9), then later argued that “the registration should be denied for lack of secondary meaning” (20 TTABVUE 18), Opposer appears to have also included a cross-motion for summary judgment on Count Two (non-distinctive trade dress lacking acquired distinctiveness). In sum, applying this construction of Opposer’s brief, Opposer 1) included a cross- motion for summary judgment with respect to entitlement; 2) included a cross-motion for summary judgment on Count Two (non-distinctive trade dress lacking acquired distinctiveness), 3) did not contest summary judgment on Count Three (non-use), and 4) contested the motion to dismiss Count One (functionality). Thus, on this record the following are presented for consideration: 1) Cross-motions for summary judgment on Opposer’s entitlement to bring or maintain a statutory cause of action; 4 In this order the Board adjudicates Applicant’s motion to dismiss. Nonetheless, Applicant should have filed a separate motion. Cf. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 n.2 (TTAB 2007) (“Although there is no prohibition on incorporating a motion into a brief in response to a motion, the better practice is either to file such motion as a separate submission or, at a minimum, to caption separately any such motion.”). Opposition No. 91255161 5 2) Opposer’s cross-motion for summary judgment on Count Two (non-distinctive trade dress lacking acquired distinctiveness); 3) Applicant’s motion for summary judgment on Count Three (non-use); and 4) Applicant’s motion to dismiss Count One (functionality) in the second amended pleading for failure to state a claim upon which relief can be granted. Summary Judgment Standard Summary judgment is appropriate only where the movant demonstrates that there is no genuine dispute as to any material fact, and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party. Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). A party asserting that a fact cannot be true or is genuinely disputed must support its assertion by either: 1) citing to materials in the record, or 2) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). Evidence on summary judgment must be viewed in the light most favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve genuine disputes as to material facts; it may only ascertain whether genuine disputes as to material facts exist. Lloyd’s Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, Opposition No. 91255161 6 22 USPQ2d at 1544. See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 528.01 (2021). Here, with respect to the issue of Opposer’s entitlement, the mere fact that cross- motions for summary judgment were filed on the same issue does not necessarily mean that there is no genuine dispute of material fact or that a trial is unnecessary. See, e.g., Drive Trademark Holdings, 83 USPQ2d at 1437; Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994). The Board applies the proper analysis to each motion separately and ascertains whether the movant has shown on the record the requisite lack of a genuine dispute of material fact. Cross-Motions for Summary Judgment - Opposer’s Entitlement To prevail on summary judgment, Applicant must demonstrate that there is no genuine dispute of material fact that Opposer is not entitled to bring a statutory cause of action. Trademark Act §§ 13 and 14, 15 U.S.C. §§ 1063 and 1064. To prevail on its cross-motion, Opposer must demonstrate the inverse - that there is no genuine dispute of material fact that he is entitled to bring a statutory cause of action. The U.S. Supreme Court in Lexmark Int’l., Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061 (2014) established two requirements for determining whether a party has an entitlement; consistent therewith, Applicant must demonstrate that there is no genuine dispute that Opposer cannot establish (i) an interest falling within the zone of interests protected by the statute, and (ii) damage that is proximately caused by the prospective registration of the mark. Demonstrating a real interest in opposing registration satisfies the zone-of-interests Opposition No. 91255161 7 requirement. Demonstrating a reasonable belief in damage by the prospective registration satisfies the second requirement. Spanishtown Enters., Inc. v. Transcend Res., Inc., 2020 USPQ2d at *2 (citing Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *7 (Fed. Cir. 2020)). A plaintiff does not have to prove its claims or demonstrate actual damage to establish entitlement. Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009). Relevant to his entitlement, Opposer alleges: Applicant’s registration of a functional product design harms both Opposer and the consuming public at large because it would confer an unfair monopoly upon Applicant to which it is not entitled under law. (16 TTABVUE 2) Opposer designs and sells dice boxes. Opposer sells his products through various online channels, including on social media and e-commerce sites like Thingaverse5. … Opposer’s designs are popular with players of the decades-old, multi-player roleplaying game, Dungeons and Dragons (known affectionately by its players as “D&D”). D&D is a fantasy role- playing game played with a set of seven dice and a series of player cards. (16 TTABVUE 3) Opposer’s dice box includes exactly seven spaces for each of the dice in a D&D set, and each space is in the shape of a hexagon in order to accommodate the D20 die, regardless of which space the player places the die. The configuration of the hexagonal tessellation, such as that depicted in Opposer’s dice box, is the most efficient way to arrange the seven dice slots within a singular container. (16 TTABVUE 4) Opposer has been designing and fashioning these types of hexagon tessellation-shaped dice boxes for literally decades. Opposer began crafting his hexagonal tessellation-shaped boxes back in the mid-1990’s after seeing a similar box used as a model in a woodworking class. (This third-party box which Opposer used as his model was, in turn, made several years prior to the time Opposer began crafting his own boxes.) 5 Opposer appears to misspell this website name. The correct name for the referenced website for sharing files of designs of things that can be physically created by 3D printers, and other technologies, is “Thingiverse.” Opposition No. 91255161 8 Opposer then began selling his boxes casually to customers upon request, for which he charged a modest sum to compensate Opposer for his time and materials. Originally, Opposer crafted his boxes from wood. Over time, Opposer began crafting boxes from wood-filled PLA, a composite of plastic and wood fibers, due to the material’s popularity with customers. Later still, Opposer began developing his boxes using 3D printing. (16 TTABVUE 5) Knowing that the functional aspects of his boxes are common within the D&D universe, Opposer has never sought trademark or copyright protection for the general shape and configuration of his boxes, and was not aware of any other maker or seller seeking such a monopoly, prior to being notified of Applicant’s filing. (16 TTABVUE 6) On August 23, 2018, Applicant applied to register a copyright in the Hex Chest box with the U.S. Copyright Office. … According to the Copyright Office file history for the Hex Chest Copyright Application, the application was refused registration on October 24, 2018 on the basis that the applied-for design was “a useful article that does not contain any copyrightable authorship needed to sustain a claim to copyright. … On June 22, 2020, the U.S. Copyright Office issued a final ruling, upholding its refusal to register a copyright in the Hex Chest box.” (16 TTABVUE 8-9) On January 16, 2019 Opposer received a notification from Thingaverse that his listings had been removed in response to a complaint filed by Applicant under the Digital Millennium Copyright Act (DMCA). This complaint was filed on behalf of Quentin Weir and alleged that Opposer’s Thingaverse listing “infringe[s] on our sculptural copyright of our Hex Chest dice boxes.” Applicant’s complaint asserted both trademark and copyright ownership of the hexagonal tessellation depicted in both Opposer’s boxes and its own, despite the fact that Applicant had no issued trademark registration and no issued copyright registration. (16 TTABVUE 9) Opposer filed a “counter-notice” under the DMCA on January 17, 2019, pointing out that Applicant did not, in fact, possess rights in trademark or copyright, and that his listings were removed in error. Thingaverse immediately reinstated Opposer’s product listings. … Opposer received notice from Thingaverse that his listings were again being suspended, this time based on a complaint brought by Applicant under Thingaverse’s “Other IP Rights Violation” policy. … Once again, Applicant asserted proprietary rights to the hexagonal configuration of Opposer’s dice boxes based on its filing of the ‘640 Application, which Opposition No. 91255161 9 Opposer (sic) falsely characterized as “granted.” … Opposer submitted another counter-notice to Thingaverse, again stating that Applicant did not possess statutory rights in either copyright or trademark.” (16 TTABVUE 10) Thingaverse again reinstated Opposer’s sales listing on their platform. … Opposer learned of Applicant’s trademark filing and Applicant’s further attempts to gain an unfair monopoly on hexagonal tessellation- shaped dice boxes. Opposer also learned from his review of industry comments that Opposer (sic) was targeting other sellers of similar box designs with its bogus claims of exclusive ownership of the hexagon tessellation box design. Fearing that he and others would continue to be targeted by Opposer’s (sic) anticompetitive bullying, Opposer filed this Notice of Opposition. (16 TTABVUE 11) Regarding Opposer’s real interest in opposing registration, Applicant argues, inter alia, that Opposer has no commercial interest in preventing Applicant’s registration; is not in the business of selling dice boxes; has not applied to register a trademark; and did not create the 3D print file for a hexagonal dice box that was the original basis for Applicant’s copyright complaint to Thingiverse. Applicant argues that Opposer is an intermeddler who “appointed himself to police the trademark Register, trying to prevent Applicant from registering its trade dress because Opposer did not believe the Application was legally registrable.” 18 TTABVUE 11. Regarding Opposer’s reasonable belief in damage, Applicant adds that Opposer does not sell products that are similar to Applicant’s dice boxes; that the only dice boxes Opposer has distributed were those he gave away for free at festivals; that Opposer’s posting to and removal from Thingiverse was a digital file with a copyright claim, not an actual dice box; that Opposer posted the file because he has “an axe to grind;” and that removal of the 3D print file for the dice box had no impact on Opposition No. 91255161 10 Opposer’s income. In support, Applicant points to Opposer’s deposition. 18 TTABVUE 14. Contesting the motion and in support of his cross-motion, regarding the zone of interest, Opposer argues that he makes videos about 3D printing and uploads various CAD files to the Thingiverse website which individuals download to enable them to print various objects using 3D printers, and that his files include ones for making a hexagonal box to hold objects including dice. 20 TTABVUE 6. He submitted his declaration stating that he has designed and printed hexagonal boxes, wants to distribute files that others can use to 3D print these boxes, and wants to distribute and sell the boxes he prints. 20 TTABVUE 29. Opposer argues he came within the zone of interest when Applicant sent its DMCA notice to take down files for the dice box, and that Applicant’s notice both falsely alleged that it had copyright and trade dress protection and “expressly referred to this trademark application.” 20 TTABVUE 12. Regarding proximate damage, Opposer argues that he incurred injury by way of the DMCA takedown request. He submitted a copy of Applicant’s January 14, 2019 DMCA takedown request (and ensuing correspondence) that Applicant’s principal, Quentin Weir, sent; the notice states that Opposer’s dice box files posted on Thingiverse violate Applicant’s rights in the trade dress of the dice box. 20 TTABVUE 321. We find that neither party has met the high burden to establish that there is no genuine dispute of material fact with respect to Opposer’s entitlement to bring a statutory cause of action. At a minimum, regarding Opposer’s real interest in Opposition No. 91255161 11 opposing registration, Opposer has offered testimony in his declaration that on summary judgment is sufficient to show that he has a commercial interest in preventing Applicant’s registration inasmuch as it would preclude Opposer from uploading design files that include, feature or are arguably similar to the applied-for mark depicting the applied-for box, the exclusive right to which would be granted to Applicant if it were issued the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943 , 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (“A belief in likely damage can be shown by establishing a direct commercial interest.”). Cf. Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (a plaintiff engaged in the manufacture or sale of the same or related goods or has a present or prospective right to use the term descriptively in its business meets standing test; test also applies to standing to assert claim that mark comprises matter that, as a whole, is functional). Regarding Opposer’s reasonable belief in damage, we find that he has come forward with evidence and a declaration based on first-hand knowledge that lead us to find a genuine dispute as to a potential injury to Opposer’s interests in distributing to consumers his files of information on how to make hexagonal dice boxes, and in selling the boxes that he makes, in the event that Applicant were to secure a registration for the hexagonal dice box product design. Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007) (standing to oppose registration of mark for single color for coated abrasives established by opposer’s evidence of use of various colors on coated abrasives). Opposition No. 91255161 12 Thus, the issue of whether Opposer can prove his entitlement remains an issue for resolution at trial. In view of these findings, Applicant’s motion for summary judgment, and Opposer’s cross-motion for summary judgment, are denied. Opposer’s Motion for Summary Judgment - Count Two (non-distinctive trade dress lacking acquired distinctiveness) To prevail on summary judgment, Opposer must demonstrate that there is no genuine dispute of material fact that, under the requirements of Section 2(f), Applicant has not established in its application that its non-distinctive trade dress has acquired distinctiveness in the minds of the purchasing public such that its applied-for mark distinguishes its goods from those of others. Opposer maintains, inter alia, that the evidence before the examining attorney consisted of several pro forma declarations that contained the same typographical errors, included no evidence that the declarants were consumers of the boxes, did not provide specifics as to how many people visited Applicant’s convention booths or purchased the goods, did not include evidence of how Applicant’s goods were presented to consumers, and did not include any consumer perceptions such as in surveys. 20 TTABVUE 19-20. Applicant argues, inter alia, that its supporting declarations are from persons with knowledge of the dice box and tabletop gaming industry. It also points to its assertions and evidence in its application regarding volume of sales, length of use, its Kickstarter campaigns which led to sales, its advertising, and coverage of its goods in media. 22 TTABVUE 16-19. Opposition No. 91255161 13 Upon viewing the record in the light most favorable to Applicant as the non- movant, and drawing all justifiable inferences in Applicant’s favor, we find that Opposer has not met its burden to demonstrate that there is no genuine dispute of material fact. On the issue of acquired distinctiveness, no single evidentiary factor is determinative; the value of each type of evidence, and the amount that is necessary, varies and depends on the nature of the mark and the circumstances surrounding use. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988); Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960); In re Capital Formation Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983). Here, at a minimum the record shows that there are genuine disputes regarding the material fact of whether the amount and type of Applicant’s evidence is sufficient to establish that Applicant’s dice box applied-for mark has acquired distinctiveness in the minds of the purchasing public. The parties dispute the weight and probative value to be afforded to portions of the application record evidence, including, for example, the declarations on which Applicant relied in examination. In view of these findings, Opposer’s motion for summary judgment on Count Two (non-distinctive trade dress lacking acquired distinctiveness) is denied.6 6 The fact that we have identified material facts that are in genuine dispute should not be construed as a finding that these are necessarily the only issues that remain for trial. Also, evidence submitted in support of or in opposition to a motion for summary judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced during the appropriate trial period. See, e.g., Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1465 n.2 (TTAB 1993); TBMP § 528.05(a). Opposition No. 91255161 14 Applicant’s Motion for Summary Judgment - Count Three (non-use) To prevail on summary judgment, Applicant must demonstrate that there is no genuine dispute of material fact that it was using the opposed applied-for mark in commerce as of its September 20, 2018 filing date. Applicant maintains that it has sold its dice boxes embodying the applied-for mark (Applicant terms this “Hex Chest Trade Dress”) continuously since 2014. Through the deposition7 of its co-founder, Quentin Weir, Applicant testified that through its October, 2014 Kickstarter campaign it received over $60,000 and distributed over 1,000 boxes to customers, and submitted pages from Kickstarter, several with images of its boxes (18 TTABVUE 16, 24-28, 65); and testified to sales figures from 2015 through 2018, and sales records dated October 2014 showing sales of its boxes to customers residing in various states (18 TTABVUE 16, 30, 35-40, 120). Also, through the declaration of its counsel, Stephen McArthur, Applicant submitted copies of its posts of its Hex Chest design box on Imgur and Reddit websites from in or about September, 2014 (18 TTABVUE 151, 154); pages from its second Kickstarter campaign of August, 2017 through 2018, which resulted in over 3000 sales of its boxes (18 TTABVUE 17, 151, 199); and pages from media articles and blog reviews, several with images of its boxes, to show that it sold its boxes prior to and as of September 2018 (18 TTABVUE 151, 223). 7 The Board directs the parties’ attention to Trademark Rule 2.123(g), which states that a deposition transcript must be submitted in full-sized format (one page per sheet), not in condensed format (multiple pages per sheet). TBMP §§ 703.01(h) and (i). The Board expects that the parties will adhere to this Rule in all future Board filings. Opposition No. 91255161 15 As Applicant notes, Opposer did not set forth any arguments or evidence contesting the motion for summary judgment on this claim. On this evidentiary record, and because it is uncontested, Applicant’s motion for summary judgment with respect to Count Three (non-use) is granted. Trademark Rules 2.127(a) (“When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded.”) and Fed. R. Civ. P. 56.8 Applicant’s Motion to Dismiss Count One (functionality) On February 13, 2021 the Board allowed Opposer leave to amend Count One in its first amended notice of opposition. 15 TTABVUE. In the second amended notice of opposition, the Count One allegations (16 TTABVUE 11) are the same as in the first amended notice of opposition (8 TTABVUE 35) which the Board found to be insufficiently pleaded under Fed. R. Civ. P. 12(b)(6). Based on this, Applicant moved to dismiss Count One. In his brief, Opposer requested leave to amend to sufficiently plead the claim, but did not submit a proposed amended claim. 20 TTABVUE 14. Upon further review of Claim One, we find that Opposer sufficiently pleads a claim that the applied-for mark is functional pursuant to Trademark Act Section 2(e)(5). Specifically, Opposer alleges in ¶ 31: The product design depicted in the ‘640 Application contains several key features which are merely functional or aesthetically functional, including a) the use of exactly seven (7) slots to hold the seven (7) dice used for D&D play, b) hexagonal-shaped slots to accommodate the D20 and other polygonal dice used in D&D play, and c) an overall 8 Accordingly, the parties will not brief this claim at trial. Opposition No. 91255161 16 configuration of seven (7) hexagonal-shaped slots that form a hexagonal tessellation. 16 TTABVUE 11. Notwithstanding that Opposer’s heading (“Failure to Function as a Mark”) and statutory citations (“Trademark Act Sections 14(1) and 1, 2, and 45”) are inapposite, Opposer alleges with adequate clarity that the applied-for mark - the three-dimensional configuration of a hex shaped box - includes elements that are essential to the use or purpose of the product - boxes specially adapted for storing board game components or dice. In ¶ 31, Opposer provides fair notice of the claim that the applied-for mark is a functional design for the identified International Class 28 goods pursuant to Trademark Act Section 2(e)(5). TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (“A feature is functional as a matter of law if it is ‘essential to the use or purpose of the [product]’ or ‘it affects the cost or quality of the [product].’”). TBMP § 506.01. Opposer provides fair notice of the alleged factual basis for a functionality claim. ChaCha Search Inc. v. Grape Tech. Grp. Inc., 105 USPQ2d 1298, 1301 (TTAB 2012) (a defendant should not be required to guess the claims against which it is defending; proposed alleged failure to function as a mark is a new ground, not an amplification of the existing ground that the mark is merely descriptive). In view of the finding that Opposer sufficiently pleads a claim of functionality, Applicant’s motion to dismiss Count One for failure to state a claim upon which relief can be granted pursuant to Fed. R. Civ. P. 12(b)(6) is denied. Consequently, this proceeding includes in Count One a claim that the applied-for mark is functional pursuant to Section 2(e)(5). Opposition No. 91255161 17 Summary of Claims In summary, at the appropriate time to be determined and set forth by the Board in a future order, this opposition shall proceed with respect to Opposer’s entitlement to bring a statutory cause of action, Count One (functionality), and Count Two (non- distinctive trade dress lacking acquired distinctiveness). In the event that the Board resumes proceedings, the Board may reset dates, as appropriate, so as to provide Applicant an opportunity to file its answer to, and take discovery on, Count One (functionality). Civil Action Pursuant to Trademark Rule 2.117(a): Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action or another Board proceeding which may have a bearing on the case, proceedings before the Board may be suspended until termination of the civil action or the other Board proceeding. TBMP § 510. In its brief, Opposer included a copy of the complaint filed in Case 4:20-cv-11789- SDD-DRG, which is captioned Three Frog, LLC d.b.a Elderwood Academy, a Michigan Limited Liability Company v. Metallic Dice Games, LLC, an Indiana Limited Liability Company, and Adam Hackett, an individual, and which Applicant filed against the third party on July 1, 2020 in the United States District Court for the Eastern District of Michigan (“civil action”). 20 TTABVUE 329. The Board must ascertain whether suspension of this opposition proceeding is appropriate in view of this civil action. To that end, Applicant is allowed until twenty Opposition No. 91255161 18 days from the date of this order to file a submission informing the Board of 1) whether any claims or counterclaims in this civil action involve Applicant’s applied-for mark in Serial No. 88125640, and 2) if so, a) a copy of the pleadings that set forth the claim(s) and/or defense(s) that involve said applied-for mark, b) the status of the case, and c) if the case has been finally determined, a copy of the final order, if any, issued by the District Court.9 Proceedings Remain Suspended Proceedings remain suspended pending the submission of the required information regarding the civil action. It is the responsibility of each party to ensure that the Board has the party’s current correspondence address, including an email address. TBMP § 117.07. The Board must be promptly notified of any address or email address changes for the parties or their attorneys. 9 The parties are to refrain from briefing the issue of whether suspension under Trademark Rule 2.117(a) is appropriate. This determination is solely within the Board’s discretion. TBMP § 510.02(a).