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Sandro andy, S.A v. Light Inc. and Alice Sim

December 27, 2012


The opinion of the court was delivered by: Hon. Harold Baer, Jr., District Judge:


This dispute concerns the use of the trademark SANDRO. Plaintiff and counter-defendant Sandro Andy, S.A., ("Sandro Andy") moves to dismiss pursuant Rule 12(b)(6) of the Federal Rules of Civil Procedure the fifth counterclaim by defendant and counter-claimant Light, Inc., ("Light"). By its fifth counterclaim, Light seeks a declaration that Sandro Andy "lacked a bona fide intent to use the mark in connection with the goods listed in the application" and an order directing the United States Patent and Trademark Office ("USPTO") to cancel Sandro Andy's registration. Answer and First Amended Counterclaims ¶¶ 148--54.


Sandro Andy is a thirty-year-old French company that designs, manufactures, and sells clothing and accessories under the SANDRO trademark in twenty countries throughout Europe, Asia, the Middle East, and North America. The SANDRO trademark, initially registered in France, is registered on the Principal Register of the USPTO and was issued February 23, 2010, pursuant to Section 66(a) of the Lanham Act, 15 U.S.C. § 1141f, which allows for International Registrations to be extended to the United States. The Sandro Registration identifies over 250 items, and it establishes a constructive use date of May 22, 2008, about nine years after Light began using its SANDRO mark. Sandro Andy opened its first store in the United States in New York City on September 7, 2011. Shorty thereafter, Sandro Andy started a U.S. Twitter account under the name "@sandronewyork" and the website Since 1993, Light has designed, manufactured, and sold apparel to a range of nationwide retailers. Starting in 1999, Light developed and commenced use of its SANDRO mark in connection with the apparel. Alice Sim is the current owner of Light. On approximately March 12, 2012, Light launched the website Light also utilizes a Twitter account (@Sandro_ny), a blog (, and a Facebook page to promote sales.


In connection with its fifth counterclaim, Light must have provided "sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). The Court must accept the factual allegations set forth in the complaint as true and draw all reasonable inferences in the non-movant's favor. Roth v. Jennings, 489 F.3d 499, 504 (2d Cir. 2007). "A complaint . . . must contain either direct or inferential allegations respecting all the material elements necessary to sustain recovery under some viable theory." Twombly, 550 U.S. at 562.

I.Section 66 -- The Madrid Protocol

A party may apply for a U.S. registration under Lanham Act §§ 1 or 44, or a party may request an extension of protection to the United States of an International Registration issued by the World Intellectual Property Organization under § 66 (the Madrid Protocol). See 15 U.S.C. §§ 1051, 1126, 1141f. Section 1(a) applications are based on the actual use of the mark, whereas § 1(b) applications are based on the intent to use the mark in commerce. A mark must still be used in commerce for a § 1(b) application to give rise to a valid registration. Where an applicant has recently applied for a foreign registration, that applicant may also apply for a U.S. registration under § 44(d), which simply allows for the benefit of the earlier foreign filing date- a § 44(d) applicant must still state a basis for registration under another provision. A § 44(e) application must be based on an existing trademark registration in a foreign country, and the applicant must declare a bona fide intent to use the mark in commerce. Finally, a request for an extension of protection under § 66(a) allows a holder of an International Registration to extend protection to the United States; the requester must include "a declaration of bona fide intention to use the mark in commerce." 15 U.S.C. § 1141f(a). A registration based on § 44(e) is independent of the foreign registration, but a registration based on § 66(a) depends on the scope and validity of the International Registration. And unlike § 1(a) and (b) applications, an applicant under §§ 44(e) or 66(a) does not need to actually use the mark in commerce in the United States prior to obtaining a domestic registration.*fn1 Importantly, a U.S. registration that was issued based on § 66(a) "is subject to the same grounds for cancellation as those registrations issued under Section 1 or Section 44(e)." Saddlesprings, Inc. v. Mad Croc Brands, Inc., 2012 TTAB LEXIS 378, at *9 (T.T.A.B. Sept. 25, 2012) (denying a motion to dismiss a petition to cancel a registration based on § 66(a) due to abandonment); see also 15 U.S.C. § 1141i(b) ("[S]uch extension of protection shall have the same effect and validity as a registration on the Principal Register [and] the holder of the international registration shall have the same rights and remedies as the owner of a registration on the Principal Register."). The U.S. registration may be subject to cancellation "even if the international registration remains valid and subsisting." Saddlesprings, Inc., 2012 TTAB LEXIS 378, at *12.

II.The Fifth Counterclaim is a Petition to Cancel

The Lanham Act grants federal courts concurrent jurisdiction with the Patent and Trademark Office to conduct cancellation proceedings. See 15 U.S.C. § 1119 ("In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action."); see also Horizon Mills, Corp. v. QVC, Inc., 161 F. Supp. 2d 208, 214 (S.D.N.Y. 2001) ("While formal cancellation proceedings are generally held before the PTO, under 15 U.S.C. § 1119, this Court may also direct the PTO to cancel a mark."); Gear, Inc. v. L.A. Gear Calif., Inc., 670 F. Supp. 508, 512 (S.D.N.Y. 1987) ("[T]he Lanham Act empowers the court to order cancellation of registrations in any civil action in which the validity of the mark is placed in issue."). The Lanham Act allows for cancellation of a Principal Register registration by anyone "who believes that he is or will be damaged . . . by the registration." 15 U.S.C. § 1064; accord Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) ("The party seeking cancellation must prove two elements: (1) that it has standing; and (2) that there are valid grounds for canceling the registration.").

A defendant may petition to cancel the registration in a counterclaim. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 7, 13--14 (2d Cir. 1976) (Friendly, J.); 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION ("MCCARTHY") § 34:5 (4th ed.) ("The validity of the mark and its registration may be collaterally attacked by a defendant charged with infringement: . . . Defendant can counterclaim for cancellation of a registration improperly granted by the [USPTO]."); see also Chere Amie, Inc. v. Windstar Apparel, Corp., 01 CIV. 0040 (WHP), 2002 WL 31108187 (S.D.N.Y. Sept. 23, 2002) (finding that a trademark was void and should be canceled because it failed to meet the "use in commerce" requirement of registration). The Court may order the cancellation of all or only part of a registration. See, e.g., Levi Strauss & Co. v. GTFM, Inc., 196 F. Supp. 2d, 971, 976--77 (N.D. Cal. 2004) (ordering partial cancellation where the use of the mark with respect to some of the listed goods had been abandoned). Finally, "[a]s in cancellation proceedings in the Patent and Trademark Office, a litigant in court who prays for cancellation has the burden of overcoming the evidentiary effect of a federal registration." 5 MCCARTHY § 30:109 (4th ed.).

Sandro Andy states that a "party may petition to cancel a trademark registration on the grounds that the registration was obtained fraudulently", Pl.'s Supp. 7, and then argues that the fifth counterclaim does not meet the pleading requirements for a fraud claim. Sando Andy has constructed the proverbial straw man. Light claims only that Sandro Andy lacked a bona fide intent to use the registered mark on all the goods and services listed in the registration, a statutory requirement for a valid trademark extension under § 66(a). Defs.' Opp'n 5; cf. Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008).

III.Light States a Claim

There are no decisions that I can find that address a petition to cancel a Madrid Protocol registration on the ground of a lack of bona fide intent. Sandro Andy makes much of the fact that the claim here is brought as a petition to cancel, rather than as an opposition to an application, but that distinction is unavailing where, as under a § 66(a) request for an extension, actual use in commerce is not required before the USPTO can grant a registration. With an existing International Registration, a requester can obtain a U.S. registration simply with a request for an extension that includes a declaration of a bona fide intent to use the mark in commerce. A party with standing can oppose the request for extension under § 68, 15 U.S.C. § 1141h, or they can petition to cancel the registration under § 69, 15 U.S.C. § 1141i. There can be a period of time during which a holder of a registration based on § 66(a) has not actually used the mark in commerce but still asserts a bona fide intention to do so. It is in this liminal state that a petition to cancel a registration on the ground of a lack of bona fide intent to use the mark can be ...

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