IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`73925-121
`
`SURESTREAM, INC.,
`
`Opposition No. 115,085
`
`Opposer
`
`V-
`
`DECLARATION OF RACHEL E.
`MATTEO-BOEHM IN SUPPORT OF
`
`MOTION TO SUSPEND
`
`mL
`
`73
`
`5.?‘
`
`REALNETWORKS, INC.,
`
`Applicant.
`
`
`
`' 1, Rachel E. Matteo-Boehm, declare as follows:
`
`1.
`
`I am an attorney in the law firm of Steinhart & Falconer LLP, counseTof
`
`record for Applicant RealNetworks, Inc. (“RealNetworks”).
`
`I have personal knowledge of each
`
`of the facts set forth in this Declaration, and could testify competently thereto.
`
`2.
`
`On or about September 19, 2002, Opposer Surestream, Inc. (“Opposer”)
`
`filed a complaint against RealNetworks in the United States District Court for the Western
`
`District of Oklahoma, 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, all based on RealNetworks’ use of the mark
`
`SURESTREAM. A true and correct copy of that complaint is attached hereto as Exhibit A.
`
`3.
`
`In light of Opposer’s filing of its federal district court complaint, on
`
`October 8, 2002, RealNetworks filed a motion to suspend the opposition proceeding, which was
`
`granted by the Trademark Trial and Appeal Board by order dated October 1 1, 2002. A true and
`
`correct copy of the Board’s October 11, 2002 Order is attached hereto as Exhibit B
`
`-1-
`
`

`
`
`
`4.
`
`On November 1, 2002, Opposer dismissed its federal district court action
`
`without prejudice and moved to resume this opposition proceeding. A true and correct copy of
`
`RealNetworks’ opposition to Opposer’s motion to resume is attached hereto as Exhibit C. A true
`
`and correct copy of Opposer’s reply in support of its motion to resume is attached hereto as
`
`Exhibit D. A true and correct copy of the Board’s April 9, 2003 Order granting Opposer’s
`
`motion to resume and resetting the dates for RealNetworks’ testimony period and the rebuttal
`
`testimony period is attached hereto as Exhibit E.
`
`5.
`
`On October 28, 2003 a trademark infringement complaint was filed in the
`
`Western District of Oklahoma against RealNetWorks, alleging claims for unfair competition in
`
`violation of the Lanham Act, state common law unfair competition, and violation of the
`
`Oklahoma Deceptive Trade Practices Act, all based on RealNetworks’ use of the mark
`
`SURESTREAM. The named plaintiffs in that action are George Cole, president of Surestream,
`
`Inc., and Floyd Burns, vice president of Surestream, Inc. Except for the substitution of plaintiffs
`
`and the elimination of the federal common law cause of action, the October 28, 2003 complaint
`
`is identical to the September 2002 complaint referred to in paragraph 2 above. A true and correct
`
`copy of the October 28, 2003 complaint, together with Mr. Burns’ and Mr. Cole’s request for
`
`waiver of service of summons, and a copy of the waiver of service of summons signed by
`
`Rea1Networks on November 26, 2003, is attached hereto as Exhibit F.
`
`6.
`
`On December 17, 2003, I contacted Jeff Look, counsel for Opposer, to
`
`determine whether Opposer would stipulate to a suspension of the opposition proceeding
`
`pending final disposition of the new civil action, and infonned Mr. Look that in the event
`
`Opposer declined to so stipulate, Rea1Networks would be filing a motion to suspend the
`
`

`
`
`
`opposition proceeding.
`
`I received a Voice mail message from Mr. Look later that same day
`
`informing me that Opposer would not agree to suspend the opposition proceeding.
`
`I declare under penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct.
`
`Executed on December 19, 2003 in San Francisco, California.
`
` Rachel E. Matteo-Boehm
`
`l69532v1
`
`

`
`
`
`Exhibit A
`
`

`
`
`
` - I-N THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF OKLAHOMA
`
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`Plaintiff,‘
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`lainmf Sureetream, Inc, is an Oldahorna corporation with a principal
`
`huoinesa ad
`
`s of P.O.-Box 9356, Oklahoma Cify. Oklahoma. 73157-
`
`2:
`yvasfilndton’
`
`endant RealNetworks, Inc. Is, upon Information and beflef, 9
`.
`'on having a principal office or place of business at 1111 Third
`
`‘
`
`Avenué, Ste. 906, soatue, Washington 98101.
`
`this cz$un_by 5
`
`§ 1 121. 28 u.s.c._§§ 1331 and 1336. and (he aoc1rIne' cf
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`SURAES
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`.NET or SURE'5TREAM.COM «fr mm
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`
`SEF’-25-2882
`
`18327
`
`415 442 @856
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`
`rough SureStrvam': promotions! efforts, the SURESTREAM mark has
`
`of value to Plaintiff and has oome to be recognized as a daalgnolion
`
`.is a streaming media software product that facilitates the transmission
`a computerfiles to consumers via the lnlemet. Based on Information
`is offered in comedian Mm Defendant’: "RealPlayof and
`rvlces wmch as made available to millions of computer users vaa the
`de and mcludlng computer user: wulhvn the district or this Court
`
`.
`
`of_tftg~amlng
`an?! beiiéf, the
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`Iniampt Worl
`
`12.
`
`streaming media software and services via the Internet. Defendant
`
`flnaridal roporua lo its slod<holdors that ‘Reamotworks must attract
`
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`
`sum<_:lont com orcial trqffio to its Web sites by offering high qualify. competitively
`
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`fqlly§etfoI1h herein.
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`4 rficult of Dofondanfs use of the SURESTREAM mark in its
`
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`Git; in aé to'cause consumers to believe. falwy. that P|eintIfi’s
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`by, endorsedDY. affiliated with or offered by
`3 classic example of the doctrine of 'neverse confusion.‘ The
`ad: Defendant have. been done wiih knowledge and the imam la
`
`Fc, in v1oluIlon of Section 43(a)(1) of tho Lanham Act, 15 U.S.C. 5
`
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`mislead ‘the
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`yuroaaon of Defendant’: acts, Plaihfifis have suffered and will continue
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`to suffef dam e ant}! injury to lheir business, reputation and goodwill, and have and
`
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`
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`all to the immecflete and
`of Pleintifi. Plaintiff has no adequate remedy at law for Defendant‘:
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`22. M E result of Defendant’: usoln advertising, marketing, and labeling of
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`its products and servlco: faleo designations of origin and false and
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`9n19llOl1d Offad. whim am NR9‘)! to cause confusion, or cause
`'Dl5'93di"9 “.9
`.el.ve ma publlc, mlsleadlno prospecllve purchaser: and lntemel
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`‘users, es lo lh emliauon, oonnocfion, or associallon of Defendant wltn Plalnllff, or as
`to the orIg_ln..a onaorahlp, or approval of Dofondanrs goods or services, thus falsely
`jnducirg the P ljchese of Defendant‘: goods or servloos and obtaining for itself the
`. reputation land beneltllof the Plefnlllfs goody/Ill under its SURESTREAM mark all to
`the immodiale ndjrroparable damage of Plaintilf.
`
`_
`
`latod to, cponcorad by. endorsed by, affiliatad with or offered by
`. services an;
`a_ classic oxarnple ol‘ the doctrine of ‘revense confusion.‘
`Defendant
`
`Suoh ad: by, Defendant conslllulas unfair competition in violation of the
`.24.
`7comtnon law the State of Oklahorna.
`25. _
`_
`B5/I reason of Defendant’: ads as above alleged. Plalmlfl has suffered
`' and VlI_m
`.
`‘uo to sufl‘er damage and inlurylo its business, repulallon and goodwill,
`
`and have .
`
`will conllnuo to sustain serious locs of revenues and profits-
`
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`of 33l§lnliff. Plaintiff has no ad<;quate remedy at law for Defendant‘;
`. Rgvmngful acts.
`
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`kumou oz-:c;_sr=TIv§ mags PQACTICES A91’, 73 o.s. 5 53
`as 'four_th ground for roxief. Plaintiff repeats and naaneqes Péragrapha 1
`
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`sutistahiialty
`,n’oornpc('ition.
`730.
`erendanrs use of the mark SURESTREAM has violated and conunues to
`_vio.late thp'o ahdma Deceptive mac Pradioon Act, 73 0.9. 5 53 Plaintiff ls enuuea
`under 79 o.
`5 64 to lnjunchve relief and damages.
`
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`affiliares or agents bearing the sUR5s1'R5qM mark
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`5W dcfiqihlion F.’-9P¢':°6entation in violation 0!the Lanhem Ad 15 U S C § 1501
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`‘"9 Such Olhor and fudhor relief as the Court may deem juct and
`
`Respedfully submitted,
`
`‘LOOK LAW FIRM
`P. O. Box 864823
`1708 Cloister Way
`Plano, TX 75086
`Ph: 469-371 -3082
`F:)C 972-398-3794
`
`
`
`Is
`J.
`To as Bar’ o.12549o1o
`
`_ ATTORNEY FOR SURESTREAM. mo.
`
`11-
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`
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`
`P. 12
`
`

`
`
`
`Attorney Docket No.: 73925-121
`
`CERTIFICATE OF SERVICE
`
`The undersigned attorney for Applicant hereby certifies that one copy ofthe foregoing
`
`APPLICANT REALNETWORKS,
`
`INC.’S MOTION TO SUSPEND OPPOSITION
`
`PROCEEDING PENDING DISPOSITION OF CIVIL ACTION AND MOTION TO
`
`SUSPEND REALNETWORKS’ TESTIMONY PERIOD PENDING THE BOARD’S
`
`DETERMINATION OF REALNETWORKS’ MOTION TO SUSPEND PROCEEDINGS was
`
`served on Opposer’s attorney by facsimile transmission and 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 8th day of October, 2002
`
` chel E. Matteo-Boehm
`
`

`
`
`
`Attorney Docket No.: 73925- 1 2]
`
`CERTIFICATE OF EXPRESS MAILING
`
`1, Nancy K. Burnett, do hereby certify that the enclosed APPLICANT
`
`REALNETWORKS, INC.’S MOTION TO SUSPEND OPPOSITION PROCEEDING
`
`PENDING DISPOSITION OF CIVIL ACTION AND MOTION TO SUSPEND
`
`REALNETWORKS’ TESTIMONY PERIOD PENDING THE BOARD’S
`
`DETERMINATION OF REALNETWORKS’ MOTION TO SUSPEND PROCEEDINGS
`
`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 October 8, 2002.
`
`By:
`
`(Name): Nancy K. Burnett
`
`Express Mail No.
`
`EV0850l0655US
`
`
`Date of Deposit October 8 2002
`
`

`
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`El Recordation form cover sheet
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`Cl Request for Extension of Time to l-"rle Opposition
`D Assignment
`[1 Notice of Opposition
`[3 Power of Attorney
`Cl Petition for
`[3 Statement of Use & Specimen
`D ITU Trademark Application
`C] Request for Extension of Time to File Statement
`E] Trademark Appln. & Specimen
`of Use
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`[3 Fiesponsa
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`
`
`Exhibit B
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Cataldo
`
`"‘4A|lFh
`
`OCT 1 1 2002
`
`PAT. &T.M. 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 §lO7 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 . 11 5.085
`
`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.
`
`Under consideration in the phone conference was
`
`applicant's October 8, 2002 motion to suspend action on the
`instant proceeding pending the disposition of CIV 02-1308 M,
`
`styled Surestream, Inc. V. 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.
`
`Turning now to applicant's motion,
`
`the Trademark Rules
`
`of Practice and other relevant authorities provide that
`
`whenever it comes to the attention of the Board that the
`parties to a case pending before it are involved in a civil
`action, proceedings before the Board may be suspended until
`
`final determination of the civil action.
`
`See Trademark Rule
`
`

`
`
`
`Opposition No . 115,085
`
`2.1l7(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., 169 USPQ see, 576 (TTAB 1971). USPQ 351 (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
`
`extent that a civil action in a Federal district court
`
`involves issues in common with those in a proceeding before
`
`the Board,
`
`the decision of the Federal district court is
`
`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. 115385
`
`(2d Cir.1988); American Bakeries Co. v. Pan-O-Gold Baking
`
`Co., 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
`
`for approximately three years; and that the opposition
`
`presents comparatively simple issues that are easily
`
`decided. Opposer’s arguments and concerns are noted.
`
`However,
`
`the interests of judicial economy coupled with the
`
`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
`
`judicial economy and consistent with the Board's inherent
`
`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
`
`

`
`
`
`Opposition No. 115.085
`
`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.
`
`_______._____________
`
`3 Applicant's request for suspension action on the instant
`proceeding pending disposition of its underlying motion to
`suspend for civil action is granted to the extent that proceeding
`herein are considered to have been so suspended.
`
`

`
`
`
`EXHIBIT C
`
`

`
`
`
`Attorney Reference No. 73925-121
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SURESTREAM, INC.,
`
`Opposition No. 115,085 -
`
`Opposer
`
`OPPOSITION OF APPLICANT
`
`V-
`
`REALNETWORKS» INC»
`
`REALNETWORKS, INC. TO OPPOSER
`SURESTREAM, INC.’S MOTION TO
`RESUME OPPOSITION PROCEEDING
`AND RESET TESTIMONY PERIODS
`
`t
`A I.
`PP '°““ '
`
`.
`
`AND MOTION TO DISMISS
`OPPOSITION PROCEEDING
`
`
`
`Pursuant to 37 C.F.R. § 2.1 l7(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
`
`informed 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
`
`submitted herewith, 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 l6, 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-02-1308M, 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 11, 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 § l2l2(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.
`I Civ. App. 1992) (refusing to consider corporation’s brief because suspended status prevented it
`from defending appeal).
`
`RealNetworks is aware ofj ust 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 l6 (“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 determines 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 § 5l0.02(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 detennine that the instant
`2
`opposition proceeding should be resumed and testimony periods reset, RealNetworks respectfully requests that the
`opening date ofits testimony period he 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—f1le 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
`
`Rachel
`
`.
`
`atteo-Boehm
`
`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
`
`Opposer
`
`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.
`
`a
`
`E7%/,4/é//“‘C
`
`Rachel E. Matteo-Boehm
`
`l39‘)47vI
`
`

`
` 3
`
`EXHIBIT A
`
`

`
`CERTIFICATE OF SUSPENSION
`
`Domestic
`
`I THE UNDERSIGNED,