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7-5-11 YSL Reply Brief I-s-o Mtd 2nd Cc

7-5-11 YSL Reply Brief I-s-o Mtd 2nd Cc

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Published by: Charles Colman Law, PLLC on Jul 14, 2011
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 Harley I. LewinMcCarter & English, LLP245 Park Avenue, 27
th
FloorNew York, NY 10167Tel: (212) 609-6800Fax: (212) 609-6921hlewin@mccarter.comLee Carl BrombergMcCarter & English, LLP265 Franklin StreetBoston, MA 02110Tel: 617-449-6500Fax: 617-443-6161lbromberg@mccarter.com
 Attorneys for Plaintiffs
UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK
CHRISTIAN LOUBOUTIN S.A.; CHRISTIANLOUBOUTIN, L.L.C.; and CHRISTIANLOUBOUTIN,Plaintiffs/Counterclaim-Defendants,v.YVES SAINT LAURENT AMERICA, INC.;YVES SAINT LAURENT AMERICAHOLDING, INC.; YVES SAINT LAURENTS.A.S.; YVES SAINT LAURENT (anunincorporated association); JOHN AND JANEDOES A-Z (UNIDENTIFIED); and XYZCOMPANIES 1-10 (UNIDENTIFIED),Defendants/Counterclaim-Plaintiffs.X:::::::::::::::XCivil Action No.: 11 Civ. 2381 (VM)ECF Case
REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OFPLAINTIFFS/COUNTERCLAIM-DEFENDANTS’ MOTION TO DISMISS
YSL effectively admits that its initial counterclaim for fraud was deficient by amending it(the “Amended Counterclaim”). However, the Amended Counterclaim is equally deficient. The
Case 1:11-cv-02381-VM Document 31 Filed 07/05/11 Page 1 of 6
 
2essence of YSL’s Amended Counterclaim remains the same, that Mr. Louboutin, in stating thathe had substantially exclusive use of his Red Sole mark on the outsole of women’s luxuryfootwear, in the United States, for the five years preceding his application, was stating anoutright lie, intending to obtain his trademark registration as a result thereof. YSL has droppedthe “should have known” allegation, but fails to plead specific particular facts to support itsremaining conclusory allegations. Even if accepted as true for the purposes of this motion,YSL’s allegations do not support a showing that at the time Mr. Louboutin submitted hisdeclaration dated March 14, 2007
1
to the United States Patent and Trademark Office (“USPTO”)in support of U.S. Application Serial No. 77/141,789
2
(the “March 14 Declaration”), hisrepresentation to the USPTO that he was the substantially exclusive user of red outsoles onwomen’s footwear was false or that Mr. Louboutin made the representation with the intent todeceive the USPTO.Louboutin requests the Court to treat its initial motion as a motion to dismiss the nowAmended Counterclaim. YSL’s Response has relied on the Amended Counterclaim.Louboutin’s Reply herein addresses the Amended Counterclaim and YSL’s position with respectthereto.
ARGUMENTTHE AMENDED COUNTERCLAIM, STILL DOES NOT STATE A CLAIM FORFRAUD ON THE USPTO; DISMISSAL OF THE AMENDED COUNTERCLAIM ISWARRANTED.
Fed. R. Civ. P. 9(b) requires that a claim for fraud be pleaded with particularity.
 In re Bose Corp.
, 580 F.3d 1240, 1243 (Fed. Cir. 2009), requires a showing of a subjective intent to
1
Mr. Louboutin’s declaration was submitted pursuant to section 2(f) of the Lanham Act, 15U.S.C. § 1052(f).
2
U.S. Application Serial No. 77/141,789 issued to registration on January 1, 2008 and has beenassigned Registration No. 3,361,597.
 
Case 1:11-cv-02381-VM Document 31 Filed 07/05/11 Page 2 of 6
 
3deceive. A showing of mistake, negligence, which is demonstrated by allegations that a party“knew or should have known” that a statement was false or misleading, or even gross negligencewill not suffice.
3
 
 Id.
(“Deception must be willful to constitute fraud.”). The party alleging fraudbears a heavy burden to meet these strict standards. YSL has failed to meet its burden; theAmended Counterclaim does not plead the alleged fraud with sufficient particularity to surviveLouboutin’s motion to dismiss, even when read in a light most favorable to YSL.By failing to state particular facts showing that the registrant had an intent to deceive theUSPTO, the Amended Counterclaim lacks the requisite
mens rea
required by
 Bose
and itsprogeny.
 Id.
Even if Mr. Louboutin had made a false statement in the March 14 Declaration, afalse statement by itself will not require the cancellation of his registrations.
See L.D. Kichler Co. v. Davoil, Inc.
, 192 F.3d 1349, 1351 (Fed. Cir. 1999) (“Merely making a false statement isnot sufficient to cancel a mark.”);
 In re Bose
, 580 F.3d at 1243 (stating there is a “material legaldistinction between a ‘false’ representation and a ‘fraudulent one, the latter involving an intent todeceive, whereas the former may be occasioned by a misunderstanding, an inadvertence, a merenegligent omission, or the like) (quoting
Kemin Indus., Inc. v. Watkins Prods., Inc.
, 192 U.S.P.Q.327, 329 (T.T.A.B. 1976)). Because the Amended Counterclaim for fraud is devoid of any factsshowing that Mr. Louboutin willfully intended to deceive the USPTO when he submitted theMarch 14 Declaration, it must be dismissed.The Amended Counterclaim alleges that:[A]s an industry leader who has devoted his entire professional life towomen’s footwear, Mr. Louboutin
no doubt was exposed to some or all
3
YSL also incorrectly contends at page 3 of its Response that the
 Bose
standard is inappropriatein the context of a motion to dismiss.
 But see, e.g.
,
Scooter Store, Inc. v. SpinLife.com, LLC 
, No.2:10-CV-18, 2011 U.S. Dist. LEXIS 32654, at *11 (S.D. Ohio Mar. 28, 2011) (applying
 In re Bose Corp.
);
 Bauer Bros. LLC, v. Nike, Inc.
, 98 U.S.P.Q.2d 1160, 1164 (S.D. Cal. Mar. 8, 2011)(same).
Case 1:11-cv-02381-VM Document 31 Filed 07/05/11 Page 3 of 6

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