Exhibit B
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Cataldo
`
`um: Fn
`
`OCT 1 1 2002
`
`PAT. 8. ‘EM. OFFICE
`
`Opposition No. 91-115,085
`
`Surestream,
`
`Inc.
`
`V.
`
`Realnetworks,
`
`Inc.
`
`Peter Cataldo, Interlocutory Attorney
`
`On October 8, 2002, counsel for applicant contacted the
`
`Board regarding the possibility of holding a telephone
`
`conference for this case. Counsel stated that the parties
`
`were at odds regarding the suspension of this proceeding
`
`pending the disposition of a civil action between the
`
`parties herein.
`
`On that date and at the Board's request, counsel for
`
`applicant submitted to the Board a copy of its motion to
`
`suspend by facsimile.1 See Patent and Trademark Rule
`
`1.6(d)(8).
`
`See also TEMP §l07 and the authorities cited
`
`therein.
`
`On October 9, 2002,
`
`the Board contacted counsel
`
`for opposer regarding the time for holding a phone
`
`conference and the agenda-
`
`The parties agreed to hold a conference at 2 p.m. EST
`
` .—
`‘ Applicant served a copy of same on opposer via certificate of
`Express Mail dated October 8, 2002.
`
`

`
`
`
`Opposition No. 115385
`
`on Thursday, October 10, 2002.
`
`The Board determined that
`
`additional briefing of the issue under consideration would
`
`be unnecessary.
`
`The conference was held as scheduled among Jeffrey J.
`
`Look, as counsel for opposer, Rachel E. Matteo-Boehm, as
`
`counsel for applicant, and the above signed, as the Board
`
`attorney responsible for resolving interlocutory disputes in
`
`this case.
`
`applicant's October 8, 2002 motion to suspend action on the
`instant proceeding pending the disposition of CIV 02-1308 M,
`
`styled Surestream, Inc. Va Realnetworks, Inc. filed on
`September 18, 2002 in the United States District Court for
`
`the Western District of Oklahoma.
`The Board carefully considered the arguments raised by
`
`counsels for both parties with regard to the above matter.
`However, an exhaustive review of those arguments would only
`
`serve to delay the Board's disposition thereof.
`the Trademark Rules
`
`Turning now to applicant's motion,
`of Practice and other relevant authorities provide that
`ention of the Board that the
`
`parties to a case pendin
`action, proceedings before the Board may be suspended until
`final determination of the civil action.
`See Trademark Rule
`
`

`
`
`
`Opposition No . 115,085
`
`2.ll7(a); and General Motors Corp. v. Cadillac Club Fashions
`
`Inc., 22 USPQ2d 1933 (TTAB 1992).
`
`Suspension of a Board
`
`case is appropriate even if the civil case may not be
`
`dispositive of the Board case, so long as the ruling will
`
`have a bearing on the rights of the parties in the Board
`
`case.
`
`See Martin Beverage Co. Inc. v. Colita Beverage
`
`Company., 159 USPQ 568, 57b (TTAB 1971). USPQ 861 (TTAB
`
`1973).
`
`In this case,
`
`the parties to the instant opposition and
`
`Civil Action 02-1308 M are the same. Further,
`
`the mark at
`
`issue in this proceeding, namely,
`
`“SURESTREAM,” is at issue
`
`in the civil action. Because the complaint contains
`
`allegations of false designation of origin in violation of
`the Lanham Act with regard to applicant's “SURESTREAM” mark,
`
`the decision in the civil case may include a determination
`
`of applicant's rights to that asserted mark. Any such
`determination of applicant's rights to its “SURESTREAM” mark
`
`in the civil action will be dispositive of, or at least have
`a bearing on,
`the issues before the Board. Moreover,
`to the
`
`that a civil action in a Federal district court
`
`involves issues in common with those in a proceeding before
`
`the decision of the Federal district court is
`the Board,
`binding upon the Board, while the decision of the Board is
`not binding upon the court.
`See, for example, Goya Foods
`
`Inc. V. Tropicana Products Inc., 846 F.2d 848,
`
`6 USPQ2d 1950
`
`

`
`
`
`Opposition No. 115fl85
`
`(2d Cir.19BB); American Bakeries Co. v. Pan—O-Gold Baking
`
`C0,, 650 F Supp 563,
`2 USPQ2d 1208 (D.Minn. 1986).
`Opposer has advanced as arguments in opposition to the
`motion to suspend that the instant opposition proceeding is
`
`currently in a more advanced stage, i.e., the trial stage,
`than the civil action;
`that applicant has been afforded the
`
`advantage of being served with opposer’s testimony and
`evidence in this case;
`that the opposition has been pending
`
`decided.
`
`for approximately three years; and that the opposition
`presents comparatively simple issues that are easily
`Opposer’s arguments and concerns are noted.
`the interests of judicial economy coupled with the
`However,
`possibility of the Board and the District Court reaching
`inconsistent results mitigate against the prosecution of
`
`this proceeding during the pendency the District Court
`
`action.
`
`In view of the foregoing, and in the interest of
`
`consistent with the Board's inherent
`
`judicial economy and
`authority to regulate its own proceedings to avoid
`duplicating the effort of the court and the possibility of
`reaching an inconsistent conclusion, proceedings herein are
`suspended pending final disposition of the civil action
`
`between the parties.
`Within twenty days after the final determination of the
`civil action,
`the interested party should notify the Board
`
`

`
`
`_._..':—e-?—- T T-a—aA.s..——%— -~—_..
`~
`
`Opposition No. 115385
`
`so that this case may be called up for appropriate action.2
`
`During the suspension period the Board should be notified of
`
`any address changes for the parties or their attorneys.
`
`The Board thanks counsel for the parties for requesting
`
`and agreeing to participate in the phone conference. Copies
`
`of this order have been faxed to both attorneys on the date
`
`stamped hereon.
`
`,
`
`______.___._______._
`
`pension action on the instant
`3 Applicant's request for sus
`n of its underlying motion to
`proceeding pending dispositio
`t that proceeding
`suspend for civil action is granted to the exten
`herein are considered to have been so suspended.
`
`

`
`
`
`EXHIBIT C
`
`

`
`
`
`Attorney Reference No. 73925—12l
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SURESTREAM, INC.,
`
`Opposition No. 115,085 -
`
`Opposer
`
`V-
`
`REALNETWORKS’ INC»
`
`OPPOSITION OF APPLICANT
`REALNETWORKS, INC. TO OPPOSER
`
`SURESTREAM, INC.’S MOTION TO
`RESUME OPPOSITION PROCEEDING
`AND RESET TESTIMONY PERIODS
`
`.
`A”"'°”“"
`
`.
`
`AND MOTION TO DISMISS
`OPPOSITION PROCEEDING
`
`
`
`Pursuant to 37 C.F.R. § 2.117(a) and § 510 of the Trademark Trial and Appeal
`
`Board Manual of Procedure (“TBMP”), Applicant RealNetworks, Inc. (“RealNetworks”), by its
`
`attorneys, hereby opposes the motion of Surestream, Inc. (“Opposer”) to resume the above-
`
`captioned opposition proceeding and reset testimony periods on the grounds that Opposer, an
`
`Oklahoma corporation, has been suspended by the Oklahoma Secretary of State and is without
`legal authority to oppose RealNetworks’ Application. In addition, Opposer’s November 1, 2002
`
`dismissal of its district court action without prejudice -- which only occurred after RealNetworks
`
`infonned the federal court of Opposer’s suspended corporate status -- does not constitute a “final
`
`determination” of the district court action, and even if it did, it would be premature and a
`
`potential waste of Board resources to resume this opposition proceeding without an inquiry as to
`
`whether Opposer intends to revive its corporate status and resume its civil suit against
`
`RealNetworks during the pendency of this opposition proceeding.
`
`Because Opposer’s suspended corporate status deprives it of any legal authority to
`
`oppose RealNetworks’ Application, RealNetworks also moves pursuant to 37 C.F.R. § 2.127 to
`
`dismiss this opposition proceeding. This motion is based on RealNetworks’ motion to dismiss,
`- 1 -
`
`

`
`
`
`on the brief that follows, on the Declaration of Rachel Matteo-Boehm and Exhibit A thereto
`
`submittediherewith, and on all the pleadings, records and files in this case.
`
`INTRODUCTION AND FACTUAL BACKGROUND
`
`In August 1998, RealNetworks filed an intent to use application for registration of
`
`the mark SURESTREAM. Opposer initiated this opposition proceeding in August 1999.
`
`Opposer’s testimony period closed on September 16, 2002.
`
`On September 19, three days after the closing of its testimony period, Opposer
`
`filed a complaint against RealNetworks in the United States District Court for the Western
`
`District of Oklahoma, Case No. CIV-O2-1308M, alleging claims for federal unfair competition in
`
`violation of the Lanham Act, federal common law unfair competition, state common law unfair
`
`competition, and violation of the Oklahoma Deceptive Trade Practices Act based on
`
`RealNetworks’ use of the mark SURESTREAM. On October 8, RealNetworks moved to
`
`suspend the opposition proceeding, and on October 1 1, the Board granted RealNetworks’ motion
`
`to suspend the opposition proceeding pending “final disposition” of the district court litigation.
`
`Oct.» 11 Order, at 4.
`
`On or _about October 17, RealNetworks filed a motion to dismiss Opposer’s
`
`federal district court complaint on the grounds that, inter alia, Opposer lacked the authority to
`
`bring the federal lawsuit because Opposer, an Oklahoma corporation,‘had been suspended by the
`
`Oklahoma Secretary of State more than two years earlier -— on June 9, 2000 -- for failure to pay
`
`Oklahoma franchise taxes. Aicertified copy of a Certificate of Suspension attesting to Opposer’s
`
`suspended status is attached as Exhibit A to the Declaration of Rachel Matteo-Boehm (“Matteo-
`
`Boehm Decl.”).
`
`On October 30, Opposer filed a notice of dismissal without prejudice of its federal
`
`court action. The district court dismissed the action without prejudice on November 1, 2002, and
`
`Opposer subsequently filed the instant motion to resume the above-captioned opposition
`
`proceeding.
`
`

`
`
`
`ARGUMENT
`
`- .
`
`I.
`
`Opposer’s Suspended Corporate Status Requires Dismissal Of This Opposition
`Proceeding; However, Should The Board Determine Dismissal Is Not Mandated,
`It Should At Least Require Opposer To Revive Its Corporate Status Before
`Resuming The Instant Opposition Proceeding
`
`The Federal Rules of Civil Procedure state that “[t]he capacity of a corporation to
`
`sue or be sued shall be determined by the law under which it was organized.” Fed. R. Civ. Proc.
`
`§ 17(b).' Opposer was organized under the laws of the state of Oklahoma and was suspended by
`
`the Oklahoma Secretary of State more than two years ago for failure to comply with the
`
`Oklahoma Tax Act. Matteo-Boehm Decl., Exh. A. Oklahoma law specifies that any corporation
`
`whose right to do business is forfeited for failure to file the appropriate reports and pay taxes
`
`loses the right “to sue or defend in any court of this state.” 68 Oklahoma Statutes § 12l2(c); see
`
`also Century Inv. Group, Inc. v. Bake Rite Foods, Inc., 7 P.3d 510 (Okla. Civ. App. 2000)
`
`(denying corporation’s motion to vacate and motion for new trial where corporation had been
`
`suspended); Aviation Data Service, Inc. v. A.C.E. Copier Service, Inc., 832 P.2d 31, 32 (Okla.
`
`A Civ. App. 1992) (refusing to consider corporation’s brief because suspended status prevented it
`
`from defending appeal).
`
`RealNetworks is aware ofjust one prior reported Trademark Trial and Appeal
`
`Board decision and one previous reported Federal Circuit decision concerning the effect of a
`
`party’s corporate suspension on the ability of that party to maintain an inter partes proceeding,
`
`and each are distinguishable from this case, since both cases involved corporate parties whose
`status had been revived or would have been revived but for the conduct of the opposing party. In
`
`WMA Group, Inc. v. Western Int ’l Media Corp., 29 U.S.P.Q.2d 1478 (TTAB 1993), the Board
`
`considered a motion to dismiss and motion for summary judgment brought by the applicant in an
`
`opposition proceeding based on the fact that at the time the opposer filed the notice of
`
`opposition, it was a suspended corporation under the laws of the state of California and therefore
`
`' See 37 C.F.R. § 2.1 16 (“Except as otherwise provided, and wherever applicable and appropriate, procedure and
`practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.").
`
`-3-
`
`

`
`
`
`lacked the capacity to initiate the proceedings.
`
`In denying applicant’s motion, the Board
`
`specifically noted that but for the applicant’s tactic of incorporating a new entity using opposer’s
`
`corporate name during the period of suspension -- which ultimately required opposer to adopt a
`
`new corporate name -— opposer “would have been in the position of a revived corporation”
`
`maintaining the opposition proceeding under its original name.
`
`Id. at 1479 (emph. added).
`
`Similarly, in Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576 (Fed. Cir. 1994), the
`
`Federal Circuit concluded that the petitioner’s temporary dissolution did not affect its ability to
`
`prosecute a cancellation proceeding, since the petitioner’s corporate status had since been
`
`revived and under the law of the state of Massachusetts, the state of petitioner’s incorporation, a
`
`corporation could maintain a legal action after revival. Id. at 1580.
`
`In contrast, where, as here, Opposer has been suspended for more than two years,
`
`has never been prevented from reviving its corporate status, and has not done so, Federal Rule of
`
`Civil Procedure 17(b) and 37 C.F.R. § 2.116 bar it from maintaining this opposition proceeding,
`
`and the opposition proceeding should be dismissed.
`
`However, to the extent the Board detennines that Opposer’s suspended corporate
`
`status does not require dismissal, at the very least, the Board should require Opposer to revive its
`
`status as a corporation in good standing before resuming this opposition proceeding.
`
`II.
`
`The Federal Court's Dismissal Of Opposer’s Action Without Prejudice Does Not
`Constitute A “Final Determination” Of The Civil Litigation, And Even If It Did,
`The Board Should Not Resume This Opposition Proceeding Without First
`Inguiring As To Whether Opposer Intends To Re-File Its District Court Action
`
`Even if the Board determines that Opposer’s suspended corporate status does not
`
`require dismissal and is not a bar to resuming this opposition proceeding, this proceeding should
`
`remain suspended for the separate and independent reason that the district court’s dismissal
`
`without prejudice of Opposer’s lawsuit against RealNetworks does not appear to constitute a
`
`“final determination” of that suit as that term is defined in the TBMP.
`
`The Board’s October 1 1 order directed that the instant opposition proceeding be
`
`suspended “pending final disposition of the civil action between the parties,” and be resumed
`
`-4-
`
`

`
`
`
`“after the final determination of the civil action.” Oct.
`
`l 1 Order, at 4. The TBMP explains that
`
`“[a] proceeding is considered to have been finally determined when a decision on the merits of
`
`the case (i. e., a dispositive ruling that ends litigation on the merits) has been rendered, and no
`
`appeal has been filed therefrom, or all appeals have been decided.” TBMP § 5 l 0.02(b). Since
`
`the district court’s dismissal of Opposer’s action without prejudice did not end the litigation “on
`
`the merits,” nor was that order of dismissal an appealable order, it does not appear that there has
`
`been a “final determination” of Opposer’s civil action against RealNetworks.
`
`Moreover, even if a dismissal without prejudice somehow constituted a “final
`
`determination” of the civil litigation, it would not be in the interest ofjudicial economy to .
`
`resume this opposition proceeding only to have Opposer revive its corporate status and re-file its
`
`action in district court, which would in turn require RealNetworks to move the Board to once
`
`again suspend this opposition proceeding. To prevent the waste of time and resources such a
`
`turn of events would entail, RealNetworks suggests that to the extent the Board determines there
`
`has been a final determination of the district court action, the Board first inquire of Opposer
`
`whether it intends to revive its corporate status in the state of Oklahoma and resume its civil
`
`litigation against RealNetworks in federal court while this opposition proceeding is pending. If,
`
`in response to such inquiry, Opposer indicates that a resumption of its civil action is possible,
`
`RealNetworks respectfully requests that the opposition proceeding remain suspended.2
`
`CONCLUSION
`
`For the foregoing reasons, Applicant RealNetworks respectfully requests that this
`
`opposition proceeding be dismissed on the ground that Opposer’s suspended corporate status
`
`deprives it of the legal authority to maintain this action. However, if the Board should find that
`
`dismissal is not proper, Opposer’s motion to resume the opposition proceeding should
`
`nevertheless be denied on the grounds that Opposer is a suspended corporation and its dismissal
`
`In the event the Board should reject all of RealNetworks’ arguments herein and determine that the instant
`2
`opposition proceeding should be resumed and testimony periods reset, RealNetworks respectfully requests that the
`opening date of its testimony period be set no earlier than January 20, 2003 to accommodate holiday vacation
`schedules and the existing case docket of counsel for RealNetworks.
`-5-
`
`

`
`
`
`of the federal district court action without prejudice does not constitute a “final determination” of
`
`the civil proceeding.
`
`In the alternative, should the Board decide that neither of these grounds
`
`pose a bar to the resumption of this opposition proceeding, RealNetworks respectfully requests
`
`that before resuming this opposition proceeding, the Board inquire of Opposer as to whether it
`
`intends to revive its corporate status and re-file its civil action during the pendency of this
`
`opposition proceeding.
`
`DATED: November 25, 2002
`
`STEINHART & FALCONER LLP
`KATHERINE C. SPELMAN
`
`RACHEL E. MATTEO-BOEHM
`
`KATHERINE A. KEATING
`
`By: { Q fl/Wotllawyl
`
`atteo-Boehm
`
`Rachel
`
`.
`
`Steinhart & Falconer LLP
`
`333 Market Street, Suite 3200
`
`San Francisco, CA 94105-2150
`Telephone: 415-777-3999
`
`Attorneys for Applicant
`REALNETWORKS, INC.
`
`.
`
`l39880vl
`
`

`
`
`
`Attorney Reference No. 73925-l2L .
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SURESTREAM, INC.
`
`.
`
`Opposition No. 115,085
`
`Opposcr
`
`V-
`
`REALNETWORKS, INC.,
`
`Applicant.
`
`DECLARATION OF RACHEL E.
`
`MATTEO-BOEHM
`
`
`
`1, Rachel E. Matteo—Boehm, declare as follows:
`
`1.
`
`I am an attorney in the law firm of Steinhart & Falconer, counsel of record
`
`for Applicant RealNetworks, Inc. (“RealNetworks”).
`
`I have personal knowledge of the
`
`following facts, and could testify competently thereto.
`
`2.
`
`A certified copy of an October 28, 2002 Certificate of Suspension of
`
`Surestream, Inc. is attached hereto as Exhibit A. Our firm has been informed by the Oklahoma
`
`Secretary of State’s office that as of this date, Surestream, Inc. remains a suspended corporation.
`
`I declare under penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct.
`
`Executed on November 25, 2002 in San Francisco, California.
`
`57%/z4%/ff
`Rachel E. Matteo—Boehm
`
`
`I399-l7vl
`
`

`
` 1 %
`
`EXHIBIT A
`
`

`
`CERTIFICATE OF SUSPENSION
`
`Domestic
`
`I THE UNDERSIGNED, Secretary of State of the State of Oklahoma, do
`hereby certijy that I am, by the laws of said state, the custodian of the records of
`the state of Oklahoma relating to the right of corporations to transact business in
`the state and am the proper ofiicer to execute this certificate.
`
`I FURTHER CERTIFY that S URESTREAM INC. is a corporation duly
`organized and existing under and by virtue of the laws of the state of Oklahoma.
`
`I FURTHER CERTIFY that said corporation was suspended by the
`Secretary of State on the 06/09/2000 upon order of the Oklahoma Tax Commission
`for failure to comply with the requirements of the Oklahoma Tax Act and is not a
`corporation in good standing according to the records of this oflicel
`
`IN TESTIMONY WHEREOF, I have hereunto set my
`
`hand and caused to be afiixed the Great Seal of the
`
`State of Oklahoma at the City of Oklahoma City this
`
`28th day of
`
`October , 2002
`
`ecretary of Stat
`
`

`
`
`
`CERTIFICATE OF EXPRESS MAILING
`
`' Attorney Docket No.: 73925-121
`
`1, Nancy K. Burnett, do hereby certify that the enclosed OPPOSITION OF
`
`APPLICANT REALNETWORKS, INC. TO OPPOSER SURESTREAM, INC.’S
`
`MOTION TO RESUME OPPOSITION PROCEEDING AND RESET TESTIMONY
`
`PERIODS AND MOTION TO DISMISS OPPOSITION PROCEEDING and
`
`DECLARATION OF RACHEL E. MATTEO-BOEHM is being deposited with the United
`
`States Postal Service as Express Mail, postage prepaid, in an envelope addressed to the Assistant
`
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on this date
`
`of November 25, 2002.
`
`By:
`
`(Name): Nancy K. Burnett
`
`,
`
`Express Mail No.
`
`EV085010425US
`
`
`Date of Deposit November 25 2002
`
`

`
`
`
`Attorney Docket No.:
`
`73 925-121
`
`CERTIFICATE OF SERVICE
`
`The undersigned attorney for Applicant hereby certifies that one copy of the
`
`foregoing OPPOSITION OF APPLICANT REALNETWORKS, INC. TO OPPOSER
`
`SURESTREAM, INC.’S MOTION TO RESUME OPPOSITION PROCEEDING AND
`
`RESET TESTIMONY PERIODS AND MOTION TO DISMISS OPPOSITION
`
`PROCEEDING AND DECLARATION OF RACHEL E. MATTEO-BOEHM was served
`
`on Opposer’s attorney by depositing the same in the United States mail, First Class Mail, postage
`
`prepaid, addressed to:
`
`Jeffrey J. Look
`Look Law Firm
`
`P.O. Box 864823
`
`1708 Cloister Way
`Plano, TX 75086
`Ph: 469-371-3082
`
`Fx: 972-398-3794
`
`this 25th day of November, 2002
`
` . Matteo-Boehm
`
`
`
`

`
`
`
`Exhibit D
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 115,085
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`)
`
`SURESTREAM, INC.,
`
`Opposer,
`
`V.
`
`REALNETWORKS, INC.,
`
`Applicant.
`
`
`OPPOSER SURESTREAM INC.’S REPLY TO APPLICANT’S RESPONSE IN
`OPPOSITION TO OPPOSERS MOTION TO RESUME OPPOSITION PROCEEDING
`ANDRESET TESTIMONY PERIODS AND RESPONSE TO APPLICANT’S MOTION
`'
`TO DISMISS.
`
`TO THE TRADEMARK TRIAL
`
`APPEAL BOARD:
`
`Pursuant to Trademark Rule 2.127, 37 C.F.R. Section 2.127 Opposer Su_reStream, Inc.,
`
`files this Reply To Applicant’s Response In Opposition To Opposer’s Motion To Resume
`Opposition Proceeding And Reset Testimony Pen'odsHAnd Response To Applicant’s Motion to
`Dismiss.
`A
`
`I.
`
`Factual Background
`
`On October 11, 2002, the Board suspended prosecution of this Opposition Proceeding on
`
`the grounds that Opposer, SureStrea_m, Inc., had filed a civil lawsuit in the United States District _
`
`Court for the Western District of Oklahoma on September 19, 2002, Cause No. CIV-02-1308-M.
`
`Opposer, who was the Plaintifi‘ in that action, has since dismissed the lawsuit without prejudice.
`
`Part of the reason why Plaintiff voluntarily dismissed the _lawsuit was that it was brought to its
`
`attention through Real Networks response to the Complaint that SureStream’s corporate status
`
`had been suspended for failure to pay corporate franchise taxes. A few days after receiving the
`
`said notice, Applicant paid the taxes and filed a Notice of Dismissal pursuant to Rule 41(a) of the
`
`Federal Rules of Civil Procedure. The court entered the order on November 1, 2002. A copy of
`
`

`
`
`
`the Order of Dismissal signed by the judge
`
`that case has been submitted to the Board and was
`
`attached as Exhibit 1 to Opposer’s Motion to Resume.
`
`Applicant filed a Response in Opposition to Opposer’s Motion to Resume the Opposition
`
`on the grounds that Opposer’s corporate status had been suspended and that the Opposition
`
`Proceeding should be dismissed because Opposer has not paid its franchise taxes and, therefore,
`
`is still under suspended status. Applicant submitted a declaration from its attorney, Rachel
`
`Boehm,
`
`indicating that as of November 25, 2002, Opposer was not restored to good standing.
`
`However, Opposer paid its back franchise taxes on October 30, 2002 and has since been fiilly
`
`reinstated. See the Declaration of Floyd Bums attached as Exhibit 1 hereto and the Certificate of
`
`Good Standing from the Oklahoma Secretary of State Attached as Exhibit C to the Burns
`
`Declaration. See also the letter from the Oklahoma Tax Commission, the official collector of
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`franchise taxes in Oklahoma, acknowledging receipt ofthe tax payments from SureStream, Inc
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`attached as Exhibit B to the Burns Declaration.
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`Afier receipt of Applicant’s response to Opposer’s Motion to Resume, Opposer was
`informed by the Oklahoma Secretary of State that it had not received a report from the Oklahoma»
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`Tax Commission acknowledging payment of the franchise taxes. Opposer was informed by the
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`Oklahoma Tax Commission that it currently has about a three-month backlog in reporting tax
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`payments to the Oklahoma Secretary of State. Due to the importance of resolving this matter of
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`resuming the Opposition Proceeding, Opposer was given a letter from the Oklahoma Tax
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`Commission to hand carry to the Oklahoma Secretary of State’s Office who then issued the
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`Certificate of Good Standing. See the declaration from Floyd Burns, vice president of
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`SureStream, Inc., attached hereto as Exhibit 1.
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`ARGUMENT
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`II. Dismissal of Opposition Proceeding is Unwarranted.
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`Applicant alleges that 68 O.S. Section 12l2(c) specifies that any corporation whose right
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`to do business has been suspended for failure to file the appropriate reports and pay taxes loses
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`the right to sue or defend in any court of this state. However, that quoted portion in Applicant’s
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`brief is but one small snippet of the entire statute. That same statute also says that “no affirmative
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`relief shall be granted to such corporation unless its right to do business in this state shall be
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`reinstated as provided herein ” 68 O.S. Section 12 12(c) (Emphasis added). Earlier this year, the
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`Oklahoma Supreme Court in interpreting this statute held that this latter quoted portion of the
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`statue provides a “relation bac ” component and that oncea corporation pays its taxes it is fully
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`reinstated to maintain causes of action. Corman v. H-30 Drilling, Inc. 2001 OK 92, 40 P3rd
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`1051 (Okla. 2002). The court fiirther held that “Failure to pay franchise taxes is an issue between
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`the corporation and the state because franchise tax statutes are solely for revenue raising
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`I purposes. . . Section 12 12(c)’s purpose is to encourage taxpayers to pay their franchise taxes, not to
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`trap them into losing their rights to defend lawsuits. “ Id. at 1054
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`In the Corman case, litigation had ensued for several years. When the judgment of the
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`court was about to be rendered, the Plaintifl‘brought to the court’s attention that the Defendant,
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`H—30 Drilling, had failed to pay its franchise taxes and had about a three year delinquency. The
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`court entered a $197,000 judgment against the Defendant without considering any of Defendant’s
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`defenses or arguments and Defendant’s counterclaim and its motion for a brief continuance to pay
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`its back taxes, totaling $170, were denied. In reversing the lower courts, The Oklahoma
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`Supreme Court said:
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`It is a fimdamental precept of the law that no citizen may be
`deprived of life liberty, or property without due process of law and that a
`reasonable notice of an action that would so deprive it is its due under the
`constitution. We have held that when significant property interests are
`adversely affected or likely to be affected, notice is one’s constitutional
`due.
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`Corman v. H-30 Drilling at 40 P3d 1054.
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`In the case at hand, Opposer was clearly in good standing when it filed this Opposition in
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`August 1999. The parties have engaged in a contested Opposition Proceeding wherein
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`discovery was conducted and Opposer’s testimony period has been conducted and concluded.
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`Opposer has since paid its back franchise taxes and has been reinstated to good standing. Under
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`Oklahoma law, as interpreted by the Oklahoma Supreme Court, payment of back franchise taxes
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`restores a corporation’s ability to prosecute or defend legal actions the same as if it had never
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`been suspended in the first place.
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`The cases covering opposition and cancellation proceedings are in accord with this rule.
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`In Stock Pot Restaurant, Inc. v Stockpot, Inc., 737 F2d 1576 (Fed. Cir. 1994) this Board’s
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`reviewing court held that a cancellation petitioner’s temporary dissolution did not affect its ability
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`to prosecute a cancellation proceeding, since the petitioner’s corporate status had been revived
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`under the laws of the state where it was incorporated, Massachusetts, and Massachusetts law
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`allowed the corporation to maintain legal proceedings after revival. 737 F2d at 1580. Like
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`Massachusetts, the Oklahoma statute in question has a relation back component, as ruled on by
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`the Oklahoma Supreme Court in the Corman case. Once the back taxes are paid, SureStream,
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`Inc. was fully reinstated. This Board has also at least recognized that revival of a corporation’s
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`status to good standing would allow it to maintain an opposition proceeding.
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`IWVIA Group, Inc. v.
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`-
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`Western International Media, 29 U.S.P.Q2d 1478 (TTAB 1993).
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`Furthermore, dismissal of this action would be a violation of Opposer’s due process
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`rights under the Constitution not to mention a huge waste of Opposer’s, this Board’s and
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`Applicant’s time and resources over the past three years especially when one considers that this
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`Opposition is nearing the home stretch with only Applicant’s testimony period and Opposer’s
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`rebuttal period remaining before arguments are due for submission and a decision to be rendered
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`by the Board. For these reasons, App1icant’s Motion to Dismiss should be denied.
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`III. Termination of Civil Lawsuit Does Not Necessarily
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`Mean Final Decision on Merits
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`It is interesting to note that Rule 2.1 l7(a), 37 C.F.R. Section 2.1 17(a), which gives this
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`Board the authority and discretion to suspend an opposition proceeding whenever litigation
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`between the parties involving the same legal issues is filed, never says on its face that a ‘ffinal
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`determination” of the litigation must occur before resumption of the opposition proceeding is
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`possible. The rule states:
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`Whenever it shall come to the attention of the Trademark Trial
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`and Appeal Board that a party or parties to a pending case are engaged in
`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.
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`Trademark Rule 2.1 17(a), emphasis added.
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`The rule states that the Opposition Proceeding may be suspended “until termination” of
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`the civil action. It does not use the wording “final determination.” A termination ofthe civil
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`action can occur in any number of ways including, as was in this case, by filing a voluntary
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`Notice of Dismissal of the complaint pursuant to Rule 4l(a) ofthe Federal Rules of Civil
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`Procedure. When the Notice of Dismissal was granted by the United States District Court for the
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`Western District of Oklahoma where this civil action was pending, the civil action was
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`immediately terminated. There ceased to exist any civil action between the parties that involved
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`any common issues of law or fact and thus the whole premise of the Board in suspending the
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`Opposition Proceeding to keep from wasting resources, promoting judicial economy, and nmning
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`into the possibility of inconsistent results between the Court and the Board, immediately ceased
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`to exist. As of this time, there is no civil proceeding pending between the parties that involve
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`issues of law or fact that are substantially similar to what was alleged in dismissed lawsuit.
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`While Opposer notes that the Board’s order suspending the Opposition Proceeding
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`herein indicated that resumption is possible upon a “final determination” of the civil action was
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`surely not intended to require more than is required by the plain and express temis of Rule 2.117
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`which is merely that it be terminated The rule does not require the temiination to be on the
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`merits of any substantive issue or that a judgment on the substantive issues be rendered. Opposer
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`contends that the dismissal without prejudice as entered by the district court is final termination
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`in the sense that it immediately ended the litigation and neither side had any right to appeal
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`therefrom. While it is true that the Trademark Board Manual of Procedure (TBMP) states that a
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`proceeding is considered to have been finally determined when a decision on the merits of the
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`case (i.e., a dispositive ruling that ends litigation on the merits) has been rendered, and no appeal
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`has been filed therefrom, or all appeals filed have been decided, Opposer contends that such a
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`requirement exceeds the scope of Rule 2.117 which merely requires termination of the civil
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`proceeding. While clearly a final judgment on the merits terminates a litigation proceeding, it is
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`not the only means to temiinate a litigation matter.
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`In