Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA552774Filing date: 08/07/2013

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92057343

Party PlaintiffNora Elizabeth Pineda Saca and Vanessa Faggiolly

CorrespondenceAddress

TAMARA L HARPER4333 PARK TERRACE DRIVE , SUITE 120WESTLAKE VILLAGE, CA 91361UNITED STATEStamara@tamaraharper.com

Submission Motion to Dismiss - Rule 12(b)

Filer's Name Tamara L. Harper

Filer's e-mail tamara@tamaraharper.com

Signature /Tamara L. Harper/

Date 08/07/2013

Attachments Opposition to MTD and MSJ.pdf(75116 bytes )Declaration of Vanessa Faggiolly to MSJ.pdf(475285 bytes )Declaration of Nora Pineda Saca to MSJ.pdf(475595 bytes )Opp to MSJ Ex 1_Elfy Gomez Application.pdf(414875 bytes )Opp to MSJ Ex 2_PERLA BANDERA DE EL SALVADOR REGCERT.pdf(495265 bytes )Opp to MSJ Ex 3_Registrants Answer to Elfy Gomez Opposition.pdf(26616bytes )Opp to MSJ Ex 4_ Board suspension 10_19_09.pdf(12965 bytes )

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

In the matter of: Registration No.’s: 3931480 For the marks: LA PERLA DE ORIENTE Date registered: March 15, 2011 NORA ELIZABETH PINEDA SACA and VANESSA FAGGIOLLY, PETITIONER, v. QUESOS LA RICURA, LTD., RESPONDENT. ____________________________________

) ) ) ) ) ) ) ) ) ) ) )

Cancellation No. 92057343

PETITIONERS NORA ELIZABETH PINEDA SACA AND VANESSA FAGGIOLLY’S

OPPOSITION TO REGISTRANT QUESOS LA RICURA LTD.’S MOTION TO

DISMISS OR, IN THE ALTERNATIVE MOTION FOR SUMMARY JUDGMENT

I. INTRODUCTION

Quesos La Ricura, Ltd. (“Registrant”) asks the Board to dismiss this Cancellation

proceeding pursuant to Federal Rules of Civil Procedure, Rule 12(b)(6) claiming that Elfy

Gomez’s, the former owner, applicant and registrant of the trademark, prior opposition bars

Petitioner’s current claims under the doctrine of res judicata. In the alternative to Registrant’s

Motion to Dismiss, Registrant seeks a Motion for Summary Judgment (hereinafter “Motion.”)

Petitioners dispute that their claim is barred by res judicata on the grounds that they are different

parties and there is no privity of contract; the proceedings are not the same and there is no

identity of the cause at suit; there is no prior judgment on the merits; and there has been no full

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and fair opportunity to be heard on the issue.

II. FACTUAL AND PROCEDURAL BACKGROUND

Registrant filed its application Ser. No. 77558192 for the mark LA PERLA DE

ORIENTE on August 28, 2008, with the USPTO, which is subject to this Cancellation

proceeding. The LA PERLA DE ORIENTE mark registered March 15, 2011, with Reg. No.

3,931,480. (Mot. Exhibit “A.”) Applicant, Elfy E. Gomez, DBA GSUS Empire, filed her

application Ser. No. 77556311, with the USPTO on August 26, 2008, for the mark PERLA

BANDERA DE EL SALVADOR. (Exhibit “1.”) The PERLA BANDERA DE EL SALVADOR

mark registered September 1, 2009, with Reg. No. 3,675,468. (Exhibit “2.”)

The USPTO records reflect that Elfy E. Gomez, (“Gomez”) in pro per, filed a Notice of

Opposition on September 5, 2009, against Registrant alleging “the mark is a lot similar to the

mark I registered” and “the mark will be use[d] in the same market, dairy products, as mine.”

(Mot. Exhibit “B.”) Registrant Answered the Notice of Opposition and concurrently filed a

Motion to Dismiss the Opposition. (Exhibit “3” and Mot. Exhibit “C.”) The Board suspended

the proceedings pending disposition of the motion to dismiss on October 19, 2009, and when

Gomez failed to file an Opposition to the Motion to Dismiss, the Board granted the Motion as

conceded and dismissed the opposition with prejudice based on this procedural defect. (Exhibit

“4” and Mot. Exhibit “D.”)

The USPTO records reflect that the PERLA BANDERA DE EL SALVADOR Mark has

gone through a series of assignments since its registration on September 1, 2009. Elfy E. Gomez

assigned the PERLA BANDERA DE EL SALVADOR Mark to GSUS Empire, Inc. on April 19,

2010. (Mot. Exhibit “F.”) GSUS Empire, Inc. assigned the PERLA BANDERA DE EL

SALVADOR Mark to Amerisal LLC on October 9, 2010. (Mot. Exhibit “G.”) Amerisal LLC

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assigned the PERLA BANDERA DE EL SALVADOR Mark to Petitioner’s on December 31,

2012. (Mot. Exhibit “H.”)

III. A SUCCESSIVE RELATIONSHIP CREATED BY AN ASSIGNMENT OF

TRADEMARK DOES NOT RAISE ISSUE OR CLAIM PRECLUSION/

PETITIONER’S HAVE STANDING

Res Judicata, or claim preclusion, is meant to preclude continued litigation of cases

between the same parties and disallows for a matter to be raised again, either in the same court or

a different court. The concept is to prevent injustice to the parties of a case that is finished and to

avoid wasting the court system time and resources. It prevents contradictory judgments issuing

and prevents litigants from multiplying judgments so a prevailing party cannot recover damages

twice for the same injury. “Application of res judicata requires a prior final judgment on the

merits by a court or other tribunal of competent jurisdiction; identity of the parties or those in

privity with the parties; and a subsequent action based on the same claims that were raised, or

could have been raised, in the prior action.” International Nutrition Company v. Horphag

Research, Ltd. (2000) 220 F.3d 1325, 55 U.S.P.Q.2d 1492 referencing Amgen, Inc. v. Genetics

Inst., 98 F.3d 1328, 1331, 40 U.S.P.Q.2d 1524, 1526 (Fed.Cir.1996); McCandless v. Merit Sys.

Protection Bd., 996 F.2d 1193, 1197–98 (Fed.Cir.1993).

Claim preclusion bars the suit from being brought again on an event which was the

subject of a previous legal cause of action that has already been finally decided between the

parties or those in privity with a party. The prior proceeding was an opposition proceeding in

which the issues and proof as well as evidence is much different than that of the current

proceeding – the cancellation proceeding. (See below argument.) The legal action has not been

finally decided between the same parties. The parties are different and the history of the

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assignments does not create privity automatically without further evidence.

Petitioners could not have filed the current petition for cancellation at the time Elfy

Gomez filed her Notice of Opposition on September 5, 2009, since Registrant’s mark had not

matured to registration until March 5, 2011. (Motion Exhibit’s A, B.) There are different parties

and different issues e.g. damages from continued registration and different facts during an

entirely different time period (post 2009.) Petitioners’ company (Amerisal, LLC) did not receive

the assignment of the trademark until October 14, 2010. (Motion Exhibit G.)

There is no evidence of privity between the parties, as Registrant’s alleges. To the

contrary Petitioner’s, nor their company, Amerisal Foods, Inc. is not closely aligned in interest

with either Elfy Gomez or GSUS Empire, Inc. (Vanessa Faggiolly Declaration ¶¶ 1, 2; Nora

Pineda Saca Declaration ¶¶ 1, 2.) There is no affiliation between Amerisal Foods, Inc. or

Petitioner’s on one hand and Elfy Gomez or GSUS Empire, Inc. on the other hand. (Vanessa

Faggiolly Declaration ¶¶ 3, 4, 5, 6; Nora Pineda Saca Declaration ¶¶ 3, 4, 5, 6.) There is no

shared Board of Directors or even a subsidiary relationship between Amerisal Foods, Inc. and

GSUS Empire, Inc. (Vanessa Faggiolly Declaration ¶ 7; Nora Pineda Saca Declaration ¶ 7.)

There is no licensing or licensor/licensee relationship between Amerisal Foods, Inc. and Elfy

Gomez or GSUS Empire, Inc. or between Petitioners and Elfy Gomez and GSUS Empire, Inc.

(Vanessa Faggiolly Declaration ¶¶ 9, 10, 11, 12; Nora Pineda Saca Declaration ¶¶ 9, 10, 11, 12.)

Finally, there is no legal relationship between Amerisal Foods, Inc. or the Petitioner’s on one

hand and Elfy Gomez and GSUS Empire, Inc. on the other hand. (Vanessa Faggiolly Declaration

¶¶ 15, 16, 17, 18; Nora Pineda Saca Declaration ¶¶ 15, 16, 17, 18.)

A party cannot be bound by claim preclusion unless it is the same party as the one

involved in the prior case or is in privity with that party. Privity is a sufficiently close

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relationship between parties that one is bound by result of a case involving the other. (Verbrand

der Zuechte5r des Oldenburger Pferdes e.V. v. International Sporthouse Registry Inc. 55

U.S.P.Q.2d 1550, 1999 WL 33109652 (N.D. Ill. 1999) (third party licensor found to be in privity

with a licensee who was a party to previous lawsuit.)) Elfy Gomez DBA GSUS Empire was the

prior party and filed Opposition proceedings against Registrant. Neither Petitioners nor Amerisal

Foods, Inc. is or was at any time in a license agreement with Elfy Gomez or GSUS Empire, Inc.

(Vanessa Faggiolly Declaration ¶¶ 9, 10, 11, 12; Nora Pineda Saca Declaration ¶¶ 9, 10, 11, 12.)

There is no privity between Elfy Gomez DBA GSUS Empire and Petitioners or Amerisal Foods,

Inc.

The cases Registrant cites in its Motion find privity based on a licensee/licensor

agreement, are the exact same parties from prior litigation to subsequent litigation or have a

shared board of directors and subsidiary relationship. Registrant further supports its argument

with a three layer deep chain of assignments, e.g. 1st - Elfy Gomez to GSUS Empire, Inc.; 2nd –

GSUS Empire, Inc. to Amerisal LLC; 3rd – Amerisal LLC to Petitioners. (Motion Exhibit “E.”)

There is no direct case authority on point to support a finding of privity based on a tracking of

assignments back three parties to support res judicata.

IV. THE PRIOR CANCELLATION PROCEEDING RAISES DIFFERENT ISSUES

FROM OPPOSITION PROCEEDING

It is important to note that the prior proceedings by a prior owner, namely, the opposition

proceedings were dismissed with prejudice, based on the procedural defect of the failure to

oppose.

There is no claim preclusion as against a suit founded on new facts that arose later

because it constitutes a new claim. (Storey v. Cello Holdings, L.L.C. 347 F.3d 370, 68

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U.S.P.Q.2d 1641 (2d Cir. 2003).

A registration opposition proceeding does not present the same cause of action as a

cancellation proceeding. A registration proceeding presents questions of whether applicant is

entitled to register its trademark. (Tonka Corp. v. Rose Art Indus. 836 F. Supp. 200, 29

U.S.P.Q.2d 1801 (D.N.J. 1993.) A Petition to Cancel is based on a claim of damage from

registration. Post registration claims are fundamentally different. (Treadwell’s Drifters, Inc. v.

Marshak 18 U.S.P.Q.2d 1318, 1990 WL 354600 (T.T.A.B. 1990.)

Elfy Gomez’s grounds in her Opposition were that Registrant’s mark “[was] a lot similar

to the mark [she] registered” and “the mark will be use[d] in the same market, dairy products, as

[hers].) (Mot. Exhibit “B” p.3.) Petitioner’s plead a different set of transactional facts in their

Petition for Cancellation (hereinafter “Petition.”) Damages are pled. (Pet. Paragraphs 12, 13.)

Additionally, Petitioner’s current grounds include priority and exclusive use and rights. (Pet. ¶¶

3, 4, 9, 10.) If new issues arise in a second proceeding, there can be no summary judgment on

the grounds of res judicata as to those issues. (Los Angeles Bonaventure Co. v. Bonaventure

Associates 4 U.S.P.Q.2d 1882, 1987 WL 123854 1987 (T.T.A.B. 1987).

In an opposition proceeding all the Opposer must do is set forth a short statement

showing how he or she would be damaged by registration of the trademark and state the grounds.

Litigation before the TTAB in opposition proceedings is limited to whether one has right to

register mark. (Light Sources, Inc. v. Cosmedico Light, Inc. 360 F.Supp.2d 432.) “[R]egistration

proceedings present the question of whether the application is entitled to register its trademark.”

Light Sources, Inc. v. Cosmedico Light, Inc. 360 F.Supp.2d 432 citing Tonka Corp., 836 F.Supp.

at 213 (emphasis added); see also 15 U.S.C. § 1063(a) (“Any person who believes that he would

be damaged by the registration of a mark upon the principal register ... may, upon payment of the

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prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds

therefor.”) (emphasis added). Litigation before the TTAB in opposition proceedings is, therefore,

limited to whether one has the right to register a mark, and not whether one has the right to

exclusive use of the mark in practice. See, e.g., Application of Marriott Corp., 517 F.2d 1364,

1367 (Cust. & Pat.App.1975) (“[T]he issue in an opposition is the applicant's right to register and

not opposer's right to exclusive use.”). (Light Sources, Inc. v. Cosmedico Light, Inc. 360

F.Supp.2d 432.)

However, by contrast in a cancellation proceeding, the issue in determining standing is

not necessarily whether the petitioner is entitled to registration or owns the mark, but rather

whether the presumptions flowing from the registration are damaging to the Petitioner. “The set

of facts which underlie a petition for cancellation include in relevant part: (1) the existence of a

registered mark held by the respondent; (2) the petitioner’s belief of damage by the mark; (3)

filing within five years of the registration or publication of the mark; (4) grounds upon which the

mark should not have been registered; and (5) no possibility of concurrent use and registration.”

(Jet, Inc. v. Sewage Aeration Systems 223 F.3d 1360, 55 U.S.P.Q.2d 1854.) Cancellation does

not require plaintiff to have valid registered mark; cancellation requires the respondent to hold a

federally registered mark; cancellation requires inquiry into the registrability of the respondent’s

mark. The array of differences in the transactional facts conclusively demonstrates that claim

preclusion cannot serve to bar Petitioner’s petition for cancellation based upon an earlier

opposition preceeding.

Registrant argues the claims in the previous Opposition and the current Cancellation are

identical, namely, likelihood of confusion. (Mot. p. 3.) However, this is not an argument for

claim preclusion or res judicata. The transactional facts are distinct to allow claim preclusion

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from an opposition proceeding to bear on a subsequent cancellation claim. “The only common

ground between the two causes of action appears to be that, in some cases at least, both

infringement and cancellation will involve a “likelihood of confusion” analysis. But even this

superficial similarity provides no support for the operation of claim preclusion. In the

cancellation context, the “likelihood of confusion” is between the respondent’s registered mark

and a prior-registered trademark (which need not be held by the petitioner) or prior use by the

petitioner of an unregistered mark (such as in advertising or as a trade name) that has resulted in

establishing a trade identity.” Emphasis added. (Jet, Inc. v. Sewage Aeration Systems 223 F.3d

1360, 55 U.S.P.Q.2d 1854 citing Towers v. Advent Software, Inc., 913 F.2d 942, 945–46

(Fed.Cir.1990).)

Registrant’s argument of issue preclusion, or collateral estoppel, fails since the issues of

likelihood of confusion and priority were not actually litigated; the issues were not determined as

necessary to a resulting judgment; there was no judgment, but only a dismissal with prejudice for

failure to respond; and Petitioners, Nora Pineda Saca and Vanessa Faggiolly have not had a full

and fair opportunity to litigate the issues. (Mot. p. 6; Declaration of Vanessa Faggiolly ¶ 14;

Declaration of Nora Pineda Saca ¶ 14.) Jet, Inc. v. Sewage Aeration Systems 223 F.3d 1360, 55

U.S.P.Q.2d 1854 citing See Montana v. United States, 440 U.S. 147, 153–55, 99 S.Ct. 970, 59

L.Ed.2d 210 (1979); Blonder–Tongue Lab., Inc. v. University of Ill. Found., 402 U.S. 313, 332–

33, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971); Commissioner v. Sunnen, 333 U.S. 591, 599–601, 68

S.Ct. 715, 92 L.Ed. 898 (1948); Cromwell v. County of Sac, 94 U.S. (4 Otto) 351, 353, 24 L.Ed.

195 (1876); see also Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1537, 33

USPQ2d 1929, 1931 (Fed.Cir.1995); Rice v. Department of Treasury, 998 F.2d 997, 999

(Fed.Cir.1993); Mother’s Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1569, 221

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USPQ 394, 397 (Fed.Cir.1983); Restatement (Second) of Judgments §§ 27, 39 (1980).

Therefore, while Petitioner’s claims that directly concern Regitrant’s right to register

their mark are barred by res judicata, Petitioner’s claims that directly concern or are derived from

Registrant’s use of the trademark at issue in the marketplace are not barred by res judicata.

There is no claim preclusion as against a suit founded on new facts that arose later

because it constitutes a new claim (Storey v. Cello Holdings, L.L.C. 347 F.3d 370, 68 U.S.P.Q.2d

1641 (2d Circuit 2003.)) The Petitioners were not closely aligned in interest or in privity with

Elfy Gomez or GSUS Empire when they acquired the mark nor did they have the ability to

litigate during said prior cancellation proceedings. (Declaration of Vanessa Faggiolly ¶¶ 1

through 18; Declaration of Nora Pineda Saca ¶¶ 1 through 18.) Additionally, Petitioner’s

cancellation proceeding is based on new facts that have risen at a later time with alleged recent

specific instances of confusion as against the PERLA BANDERA DE EL SALVADOR mark.

(Pet. Paragraph 13.)

V. ISSUE PRECLUSION CANNOT FLOW FROM A DEFAULT JUDGMENT

While claim preclusion may flow from a default judgment, issue preclusion cannot, for in

a default, no issues are actually litigated. (United States Olympic Committee v. Bata Shoe Co.

225 U.S.P.Q. 340, 1984 WL 63015 (T.T.A.B. 1984.)) Default judgment cannot give rise to res

judicata by claim preclusion. (International Nutrition Co. v. Horphag Research Ltd. 220 F.3d

1325, 55 U.S.P.Q.2d 1492 (Fed. Cir 2000.))

Issue preclusion requires four elements to be met: (1) was the issue decided in the prior

adjudication identical with the one presented in the action in question; (2) was there a final

judgment on the merits; (3) was the party against whom the plea is asserted a party or in privity

with a party to the prior adjudication; (4) did the party against whom the plea is asserted have a

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full and fair opportunity to litigate the issues in the prior adjudication? (McCarthy on

Trademarks and Unfair Competition, Fourth Ed. v. 5 § 32:84.)

Registrant alleges identical claims are made e.g. likelihood of confusion and priority,

however, in order for issue preclusion to serve as a defense, the issue must have been decided in

the prior adjudication. (Levy v. Kosher Overseers Ass’n of Am. 104 F.3d 38, 41 U.S.P.Q.2d 1456

(2d Cir. 1997). The issues of likelihood of confusion and priority were not adjudicated. A

default judgment was entered in the Gomez prior opposition proceedings due to her failure to

respond. Collateral estoppel should not apply from a prior dismissal on purely procedural

grounds. (Stephan v. American Home Builders 21 Cal.App.3d 402, 98 Cal.Rptr. 354 (2d Dist.

1971.)

Registrant cites Orouba Agrifoods Processing Company v. United Food Import,

U.S.P.Q.2d 1310, 2010 WL 5574283 to support its position that a dismissal with prejudice may

operate as a final judgment on the merits. Orouba is not identical to the current proceedings

herein and is distinguished from the present set of facts presented. In the Orouba case the parties

in the two proceedings were identical and petitioner had the opportunity to be heard on the merits

in the opposition and simply allowed judgment to be entered against it by failing to respond to

the Board’s Order to Show Cause hearing why petitioner’s failure to file a brief should not be

treated as a concession of the case. The Court was clear in its reasoning for its holding based on

the above findings. The Court found the petitioner had an opportunity to be heard on the merits

in the opposition and simply allowed judgment to be entered against it after receiving the Order

to Show Cause when not filing its brief and the petitioner also had an opportunity to be heard in

a civil action and was given opportunity to inform the Board of such outcome and it did not do

such.

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This case is very different. Petitioners, Nora Pineda Saca and Vanessa Faggiolly are not

the same party as Elfy Gomez or GSUS Empire. The proceedings are not identical. Gomez filed

an Opposition prior to registration. Petitioner filed a Cancellation after registration.

Additionally, there has been no opportunity to be heard previously nor was there an underlying

civil case between either Gomez and Registrant or Petitioner’s and Registrant. No justice was

achieved through a trial on the merits. No judgment was entered based upon essential facts of

the case but rather the prior dismissal of the Gomez Opposition was based upon a technical rule

of practice e.g. Gomez’s failure to oppose Registrant’s Motion to Dismiss the Opposition.

The transfer of the rights in a trademark does not render the present party in privity with

the party to the previous case (Elfy Gomez and/or Quesos La Ricura Ltd.) for purposes of the

Opposition and Cancellation Proceedings at issue in this case. (International Nutrition Co. v.

Horphag Research Ltd. 220 F.3d 1325, 55 U.S.P.Q.2d 1492 (Fed. Cir 2000.))

Collateral estoppel should not apply from a prior dismissal on purely procedural grounds

(Stephan v. American Home Builders 21 Cal. App. 3d 402, 98 Cal. Reporter 354 (2d 1971.)) A

person cannot be collaterally estopped from litigating a fact determined in a prior proceeding

where that person was not a party or in privity with a party to the prior determination. (Parklane

Hosiery Co. v. Shore 439 U.S. 322, n.7, 58 L. Ed. 2d 552, 99 S. Ct. 645 (1979); Gunter v.

Howard D. Johnson Co. 161 U.S.P.Q. 233, 1969 WL 9036 (T.T.A.B. 1969.)) Collateral estoppel

cannot bar a party who was neither a party in the previous case nor controlled a party in the

previous case. (Far Out Productions, Inc. v. Oskar 247 F.3d 986, 58 U.S.P.Q.2d 1702 (9th Cir.

2001). Since Petitioners were not a party in the previous case nor controlled Gomez, Petitioners

are not barred by collateral estoppel.

Finally, the fourth test cannot be met, as neither Petitioner had a full and fair opportunity

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to litigate the issues in the prior adjudication. (Allen v. McCurry 449 U.S. 90, 66 L.Ed.2d 308,

101 S. Ct. 411 (1980).) It would be a denial of due process of law to foreclose Petitioner’s from

litigating issues they never before had a chance to litigate.

VI. CONCLUSION

Registrant has not presented evidence that Petitioners are closely aligned in interest, or an

affiliation exists between them and Gomez. There is no evidence of shared Board of Directors or

subsidiary relationship. There is no licensing or licensor /licensee relationship. There is no

evidence of any legal relationship in order to support an argument that Petition is a privy of

Gomez. Registrant has not presented evidence that Petitioners exercised control over the prior

litigation or and thus collateral estoppel cannot bar Petitioners. The authority of cases requires

these factual showings to support privity.

For the reasons set forth above, Petitioners Nora Elizabeth Pineda Saca and Vanessa

Faggiolly respectfully urge the Board to deny Registrant Quesos La Ricura, Ltd.’s motion to

dismiss or in the alternative, motion for summary judgment.

Respectfully submitted,

Dated: August 7, 2013 By: ___________________________________

Tamara L. Harper TAMARA L. HARPER, ESQUIRE 4333 Park Terrace Drive, Suite 120 Westlake Village, CA 91361 Telephone: 805-409-0530 Facsimile: 805-880-1566 Email: tamara@tamaraharper.com

Attorneys for Petitioners, Nora Elizabeth Pineda Saca and Vanessa Faggiolly

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the foregoing “PETITIONERS

NORA ELIZABETH PINEDA SACA AND VANESSA FAGGIOLLY’S OPPOSITION TO

REGISTRANT QUESOS LA RICURA LTD.’S MOTION TO DISMISS, OR, IN THE

ALTERNATIVE MOTION FOR SUMMARY JUDGMENT” was served on August 7, 2013

by first-class mail, postage prepaid, to Registrant’s counsel of record addressed as follows:

Fox Rothschild, LLP Alan M. Sack Matthew J. Schenker 100 Park Avenue, 15th Floor New York, NY 10017

Dated: August 7, 2013 ____________________ Tamara L. Harper

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2008)

Trademark/Service Mark Application, Principal Register

Serial Number: 77556311Filing Date: 08/26/2008

The table below presents the data as entered.

Input Field Entered

SERIAL NUMBER 77556311

MARK INFORMATION

*MARK\\TICRS\EXPORT3\IMAGEOUT3\775\563\77556311\xml1\AP P0002.JPG

SPECIAL FORM YES

USPTO-GENERATED IMAGE NO

LITERAL ELEMENT Perla Bandera de El Salvador

COLOR MARK YES

COLOR(S) CLAIMED(If applicable)

The color(s) brown, light green, black, andorange is/are claimed as a feature of the mark.

*DESCRIPTION OF THE MARK(and Color Location, if applicable)

The mark consists of the word Perla in browncolor with light green outline. The leter a inPerla ends with a long tail where at the endthere is a drawing of a cow jumping over aindustrial plant with a wording at the rightside of the drawing that reads "Bandera de ElSalvador" .

PIXEL COUNT ACCEPTABLE YES

PIXEL COUNT 792 x 471

REGISTER Principal

APPLICANT INFORMATION

*OWNER OF MARK Elfy E. Gomez

DBA/AKA/TA/Formerly DBA GSUS Empire

*STREET 7400 Gaynor Ave

*CITY Van Nuys

*STATE

(Required for U.S. applicants) California

*COUNTRY United States

*ZIP/POSTAL CODE(Required for U.S. applicants only) 91406

PHONE 8185104651

EMAIL ADDRESS mil_rosas@live.com

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

LEGAL ENTITY INFORMATION

TYPE individual

COUNTRY OF CITIZENSHIP United States

GOODS AND/OR SERVICES AND BASIS INFORMATION

*INTERNATIONAL CLASS  

*IDENTIFICATION Sour Cream and Cheese

FILING BASIS SECTION 1(a)

       FIRST USE ANYWHERE DATE At least as early as 06/15/2005

       FIRST USE IN COMMERCE DATE At least as early as 06/15/2005

       SPECIMEN       FILE NAME(S)

\\TICRS\EXPORT3\IMAGEOUT3\775\563\77556311\xml1\AP P0003.JPG

       SPECIMEN DESCRIPTION bottled/baged sour cream and baged cheese

CORRESPONDENCE INFORMATION

NAME Elfy E. Gomez

STREET 7400 Gaynor Ave

CITY Van Nuys

STATE California

COUNTRY United States

ZIP/POSTAL CODE 91406

PHONE 8185104651

EMAIL ADDRESS mil_rosas@live.com

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

FEE INFORMATION

NUMBER OF CLASSES 1

FEE PER CLASS 325

*TOTAL FEE DUE 325

*TOTAL FEE PAID 325

SIGNATURE INFORMATION

SIGNATURE /Elfy Gomez/

SIGNATORY'S NAME Elfy E. Gomez

SIGNATORY'S POSITION Owner

DATE SIGNED 08/26/2008

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2008)

Trademark/Service Mark Application, Principal Register

Serial Number: 77556311Filing Date: 08/26/2008

To the Commissioner for Trademarks:

MARK: Perla Bandera de El Salvador (stylized and/or with design, see mark)

The literal element of the mark consists of Perla Bandera de El Salvador.The color(s) brown, light green, black, and orange is/are claimed as a feature of the mark. The markconsists of the word Perla in brown color with light green outline. The leter a in Perla ends with a long tailwhere at the end there is a drawing of a cow jumping over a industrial plant with a wording at the rightside of the drawing that reads "Bandera de El Salvador" .The applicant, Elfy E. Gomez, DBA GSUS Empire, a citizen of United States, having an address of      7400 Gaynor Ave      Van Nuys, California 91406      United Statesrequests registration of the trademark/service mark identified above in the United States Patent andTrademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051et seq.), as amended.

       International Class _______: Sour Cream and Cheese

Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company orlicensee is using the mark in commerce, or the applicant's predecessor in interest used the mark incommerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), asamended.

In International Class _______, the mark was first used at least as early as 06/15/2005, and first used incommerce at least as early as 06/15/2005, and is now in use in such commerce. The applicant issubmitting one specimen(s) showing the mark as used in commerce on or in connection with any item inthe class of listed goods and/or services, consisting of a(n) bottled/baged sour cream and baged cheese.Specimen File1

Correspondence Information: Elfy E. Gomez

7400 Gaynor Ave

Van Nuys, California 91406

8185104651(phone)

mil_rosas@live.com (authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1

class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable byfine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, andthe like, may jeopardize the validity of the application or any resulting registration, declares that he/she isproperly authorized to execute this application on behalf of the applicant; he/she believes the applicant tobe the owner of the trademark/service mark sought to be registered, or, if the application is being filedunder 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;to the best of his/her knowledge and belief no other person, firm, corporation, or association has the rightto use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as tobe likely, when used on or in connection with the goods/services of such other person, to cause confusion,or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; andthat all statements made on information and belief are believed to be true.

Signature: /Elfy Gomez/   Date Signed: 08/26/2008Signatory's Name: Elfy E. GomezSignatory's Position: Owner

RAM Sale Number: 3443RAM Accounting Date: 08/27/2008

Serial Number: 77556311Internet Transmission Date: Tue Aug 26 19:00:30 EDT 2008TEAS Stamp: USPTO/BAS-66.74.92.84-20080826190030748268-77556311-40059dc5c3aca4c1ee4c935fe095fa8b19-CC-3443-20080826180854656349

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA311170Filing date: 10/13/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91191817

Party DefendantQuesos La Ricura, Ltd.

CorrespondenceAddress

Alan M. SackLocke Lord Bissell & Liddell & LLP3 World Financial CenterNew York, NY 10281-2101UNITED STATESptotmcommunication@lockelord.com

Submission Answer

Filer's Name Jason Nardiello

Filer's e-mail asack@lockelord.com, jnardiello@lockelord.com

Signature /Jason Nardiello/

Date 10/13/2009

Attachments Answer to Notice of Opposition.pdf ( 3 pages )(19687 bytes )

1� NY:1004396/024OP:611685v1

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

In the Matter of Application No. 77/558,192 For the mark: LA PERLA DE ORIENTE Filed: August 28, 2008 ------------------------------------------------------x Elfy E. Gomez : : Opposer, : Opposition No. 91191817 : v. : : Quesos La Ricura, Ltd. : : Applicant : ------------------------------------------------------x Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451

ANSWER TO NOTICE OF OPPOSITION S I R : Applicant, Quesos La Ricura, Ltd., through its undersigned counsel, responds to

the allegations set for in the Notice of Opposition filed by Opposer, Elfy E. Gomez, as follows:

1. Applicant denies the allegations contained in the sole paragraph of the Notice of

Opposition, to the extent such allegations are understood.

AFFIRMATIVE DEFENSES

1. The Opposer lacks standing as no harm or potential harm is alleged.

2. The Notice of Opposition fails to state a claim upon which relief can be granted.

3. Opposer’s claims, in whole or in part, are barred by the doctrine of waiver.

4. Opposer’s claims, in whole or in part, are barred by the doctrine of estoppel.

5. Opposer’s claims, in whole or in part, are barred by the doctrine of laches.

2� NY:1004396/024OP:611685v1

6. There is no likelihood of confusion between Opposer’s mark and Applicant’s

mark.

7. Opposer’s claims are insufficient to state a claim upon which relief can be granted

and accordingly the opposition should be dismissed. Applicant has filed a Motion to Dismiss

together with this Answer.

WHEREFORE, Respondent requests that Petitioner’s Petition For Cancellation against

the subject registration be dismissed with prejudice.

Respectfully submitted,

Locke Lord Bissell & Liddell LLP

Dated: October 13, 2009 By: /Alan M. Sack/ Alan M. Sack Jason Nardiello Locke Lord Bissell & Liddell LLP 3 World Financial Center New York, NY 10281-2101 Telephone: (212) 415-8600 Facsimile: (212) 303-2754 Attorneys for Applicant

NY:1004396/024OP:611685v1

CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true copy of the attached ANSWER TO NOTICE

OF OPPOSITION was served by first class mail, postage prepaid, on this 13th day of October

2009 upon the pro se Opposer at the following address:

Elfy E. Gomez

President/Owner GSUS Empire, Inc. 7400 Gaynor Ave

Van Nuys, CA 91406-3020

/Jason Nardiello/ Jason Nardiello

jh/gcp Mailed: October 19, 2009

Opposition No. 91191817 Elfy E. Gomez

v. Quesos La Ricura, Ltd.

George C. Pologeorgis, Interlocutory Attorney:

Proceedings herein are suspended pending disposition of

applicant’s motion to dismiss (filed October 13, 2009). Any

paper filed during the pendency of this motion which is not

relevant thereto will be given no consideration. See

Trademark Rule 2.127(d).

UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451