JAMES C. CACHERIS, District Judge.
This matter is before the Court on Plaintiff ZAO Odessky's ("Plaintiff" or "Odessky") Motion for Summary Judgment, [Dkt. 155], and Defendant SIA "Baltmark Invest"'s ("Defendant" or "Baltmark") Motion for Summary Judgment, [Dkt. 158]. For the following reasons, the Court will deny Odessky's Motion for Summary Judgment and grant in part and deny in part Baltmark's Motion for Summary Judgment.
This case involves a Trademark Cancellation petition initiated by Odessky seeking cancellation of Trademark Registration No. 2885912, which is currently held by Defendant Baltmark. The cancellation proceeding was consolidated before the Trademark Trial and Appeal Board ("TTAB") with Baltmark's predecessor in interest's opposition to Odessky's Trademark Application Serial No. 78/240612. The TTAB dismissed Odessky's petition to cancel, sustained Baltmark's predecessor in interest's opposition and refused registration to Odessky. Odessky now petitions this Court to consider the application on the merits, and asks this Court to cancel Baltmark's Trademark Registration No. 2885912 and dismiss Baltmark's opposition to Trademark Application Serial No. 78/240612.
A. Factual Background
1. Parties and disputed trademarks
Plaintiff Odessky is a Ukrainian Corporation. (Joint Stipulation of Undisputed Facts ("Joint Facts") ¶ 1.) Defendant Baltmark is a Latvian corporation. (Joint Facts ¶ 2.) Defendants Global Closed Joint Stock Company ("Global CJSC") and ZAO "Gruppa Predpriyatij Ost" ("OST") are both Russian closed joint-stock companies. (Joint Facts ¶¶ 3-4.)
On December 12, 2002, OST filed a trademark application in the Russian Federation, Application No. 2002731063 to register "the printed word SHUSTOV' displayed on a bell-shaped design." (Joint Facts ¶ 6.) On March 21, 2003, the word "SHUSTOV" displayed on a bell-shaped design was registered to OST in the Russian Federation, Certificate No. 240948 for use in connection with "alcoholic beverages; alcoholic beverages comprising fruits; spirits; honey drink; peppermint nastoyka; sake; rice spirit; gin; rum; bitter nastoyka; liqueurs; whiskey; brandy; aperitifs included in class 33; and vodka." (Joint Facts ¶ 7.)
On April 22, 2003, Odessky filed U.S. Application Serial No. 78/240612 to register on the Principal Register "the SHUSTOFF MARK, IN TYPED FORM, for alcoholic beverages (except beers); aperitifs; distilled liquors; spirits; wines; whisky; vodka; gin; cocktails; liqueurs; distilled beverages; bitters (schnapps and liqueurs); rum; liqueurs and spirits (digestives); alcoholic extracts." (Joint Facts ¶ 5.)
On May 23, 2003, OST filed U.S. Application Serial No. 76/519958 pursuant to Section 44(e) of the Lanham Act, 15 U.S.C. § 1126(e), which allows the holder of a duly registered foreign trademark to apply for a U.S. trademark. In its application, OST asserted a priority date of December 11, 2002 - the date of OST's application to register the SHUSTOV mark in the Russian Federation. (Joint Facts ¶ 8; Def. Mem. Ex. A "TTAB Opinion" at 3 [Dkt. 159-1].) OST alleged an intent to use the SHUSTOV mark on or in connection with "alcoholic beverages; alcoholic beverages comprising fruits; spirits; honey drink; peppermint nastoyka; sake; rice spirit; gin; rum; bitter nastoyka; liqueurs; whiskey brandy; aperitifs; and vodka." (Joint Facts ¶ 8.)
On March 19, 2004, OST amended the identification of goods in connection with the SHUSTOV mark to "alcoholic beverages; namely distilled spirits; distilled rice spirits; aperitif wines; alcoholic aperitif bitters; alcoholic honey drink; peppermint schnapps; alcoholic fruit-based beverages; sake; gin; run; liqueurs; whiskey; brand; vodka in International Class 33." (Joint Facts ¶ 13.) On September 21, 2004, the word "SHUSTOV" displayed on a bell-shaped design ( see below) was registered to OST, U.S. Registration No. 2885912 for use in connection with the goods enumerated in OST's amended identification. (Joint Facts ¶ 14.)
2. Proceedings before the TTAB
On July 28, 2004, OST filed its Notice of Opposition, Opposition No. 91161570, to Odessky's U.S. Application Serial No. 78/240612 - the SHUSTOFF mark - "on the grounds of priority and likelihood of confusion" with OST's then-pending SHUSTOV mark and bell-shaped design. (Joint Facts ¶ 16.) On February 22, 2007, Odessky filed a Petition for Cancellation of U.S. Registration No. 2885912. (Joint Facts ¶ 22.) The TTAB consolidated these proceedings on November 9, 2007. (Joint Facts ¶ 23.) On December 18, 2008 the TTAB granted OST's motion to "amend its notice of opposition to assert its issued Registration No. 2885912." (TTAB Opinion at 27.) On February 16, 2010, Odessky filed a motion to "amend its answer/amended answer or counterclaim to allege that OST abandoned U.S. Registration No. 2885912" due to nonuse of the SHUSTOV trademark, specifically nonuse of the trademark on any product other than vodka. (Joint Facts ¶ 26.)
On February 8, 2012, the TTAB issued a decision dismissing Odessky's petition to cancel, sustaining OST's opposition and refusing registration of Odessky's Application Serial No. 78/240612. (TTAB Opinion at 37.)
3. Assignment of the Trademark
While the proceedings before the TTAB were ongoing, on July 30, 2010, OST merged with ZAO "GEOCOM". (Joint Facts ¶ 31.) The resultant entity was registered in the Russian Federation as Global CJSC. (Joint Facts ¶ 31.) On March 15, 2012, OST assigned U.S. Registration No. 2885912 to Global CJSC. (Joint Facts ¶ 37.) The same day, Global CJSC assigned U.S. Registration No. 2885912 to Baltmark. (Joint Facts ¶ 38.)
B. Procedural Background
Plaintiff filed its Amended Complaint against Baltmark, Global CJSC, and OST on September 30, 2013. [Dkt. 146.] Plaintiff's Amended Complaint contains six causes of action: (I) cancellation of registration No. 2885912 based on fraud in obtaining registration; (II) cancellation of registration No. 2885912 based on fraud in Section 8 affidavit to show continued use or excusable nonuse; (III) cancellation of registration No. 2885912 based on abandonment; (IV) dismissal of opposition to application serial No. 78/240612 due to OST's bad faith in appropriating and registering the SHUSTOV trademark; (V) dismissal of opposition to the application serial No. 78/240612 for lack of basis for opposition; (VI) determination that Baltmark has no rights in the SHUSTOV mark because the assignment to Baltmark from CJSC was invalid. [Dkt. 146.]
On October 4, 2013, Baltmark filed a motion to dismiss Counts I and II for failure to state a claim. [Dkt. 148.] The Court held a hearing on Baltmark's motion on November 1, 2013 and took the matter under advisement. [Dkt. 154.] On November 6, 2013, the Court issued a memorandum opinion and order granting ...