LAW OFFICES OF MARK E. WIEMELT, P. C.
`
`TEN SOUTH LASALLE STREET
`SUITE 3300
`CHICAGO, IL 60603
`(312) 372-7664
`FAX: (312) 372-6568
`E—MAIL: mark wiemeltlaw.com
`
`INTERNET: www.wiemeltlaw.c0m
`
`MARK E. WIEMELT*
`
`* REGISTERED PATENT ATTORNEY
`
`PATENT, TRADEMARK, COPYRIGHT,
`TRADE SECRETS, UNFAIR COMPETITION,
`INTERNET/E-COMMERCE LAW AND
`RELATED CONTRACT, LICENSING
`AND LITIGATION MATTERS
`
`PRIVILEGED AND CONFIDENTIAL
`
`The following is a privileged attorney-client communication made in response to
`a request by the addressee for legal advice.
`It includes and reflects confidential
`communications from the addressee, and is intended solely for the use of the
`addressee and the addressee ’s duly authorized agents concerned with the
`decisions in the matter.
`
`Friday, September 24, 2004
`
`VIA FEDERAL EXPRESS
`
`TTAB
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Attn: Helen Johnson
`
`Re: BUDDHA BAR - U.S. Trademark Opposition No. 91124298
`Federal Circuit Appeal
`
`Dear Ms. Johnson:
`
`Per your request and in connection with your efforts to reconstruct the file for the appeal
`to the Federal Circuit, please find enclosed herewith a copy of the record in the above-
`referenced matter between the dates of October 5, 2001 and May 4, 2002.
`
`The on-line records of the United States Trademark Trial and Appeal Board contain no
`indication that Opposer’s enclosed Response brief and App1icant’s enclosed Reply brief
`were filed. Applicant’s counsel obviously received OppOser’s Response brief and
`Opposer received Applicant’s Reply brief. Therefore, it appears that the Trademark
`Office may have lost, mishandled or misplaced part of the file. This is apparently the
`reason the Motion for Summary Judgment was granted as having been conceded.
`
`Please feel free to contact me if anything further is desired.
`
`M
`
`09-27-2004
`
`u.s. Patent 6 TMOfcITM Mail nap! 01- #22
`
`

`
`
`
`Page 2 of2
`
`Sincerely,
`
` xj
`
`/
`Mark E. Wienuelt
`
`‘
`
`MW
`
`Enclosures
`
`Cc:
`
`Jean-Jacques Murray
`c/0 George V Restauration, S.A.
`4, Avenue de 1’Opera
`75001 Paris, France
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application No. 76/020027
`
`BUDDHA BAR, INC.
`
`Opposer,
`
`v.
`
`GEORGE v. RESTAURANT (S.A.)
`CORPORATION
`
`Applicant.
` _J
`
`9/¥/\/\&\2&/{Q/\./Q/A
`
`Hllllllllllllllllllllllllllllllllllllllllllllllll
`
`1 0-05-2001
`U.S. Patent & TMOfc/TM Mall Rep! Dt. #34
`
`OppositionNo.2 5
`
`Assistant Commissioner for Trademarks
`
`BOX TTAB
`
`FEB
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`NOTICE OF OPPOSITION
`
`Buddha Bar, Inc., an Illinois corporation, having a place of business at 728 W.
`
`Grand Ave., Chicago, IL, believes that it will be damaged by registration of the mark
`
`shown in the above—referenced application, and hereby opposes the same.
`
`As grounds thereof it is alleged as follows:
`
`COUNT I
`
`Likelihood of confusion
`
`l.
`
`The Applicant has filed an application to register the mark LITTLE
`
`BUDDHA CAFE in connection with restaurant services, namely providing food and
`
`beverages (International Class 42), Serial No. 76/020027, filed April 6, 2000, in
`
`accordance with section l(b) of the Lanham Act, as amended.
`
`,2
`
`09-27-2004
`U.$. Pawnt & TMOTCITM Mail Rcpt Dt. #22
`
`

`
`The mark LITTLE BUDDHA CAFE was published for opposition in the
`2.
`Official Gazette on September 18, 2001.
`3.‘
`Opposer uses the service mark FUNKY BUDDHA LOUNGE in
`
`connection with bar and nightclub services. An example of the mark as used is attached
`hereto as Exhibit A.
`
`Opposer first adopted and used the mark on or before 05-28-96, and has
`4.
`used the mark continuously in interstate commerce since.
`‘
`
`6.
`
`Opposer has used the mark FUNKY BUDDHA LOUNGE in the United
`
`States long prior to any use, if at all, by the Applicant of LITTLE BUDDHA CAFE.
`
`7.
`
`Opposer has spent substantial sums in the advertising and promotion of
`
`bar and nightclub services under its FUNKY BUDDHA LOUNGE service mark
`
`throughout the United States.
`
`8.
`
`Opposer’s services have met with great commercial success and
`
`widespread customer recognition. Opposer’s mark has become a symbol of its quality
`
`services and recognized goodwill.
`
`9.
`
`Applicant’s mark so resembles Opposer’s mark that the use and
`
`registration by Applicant is likely to cause confusion, mistake and/or deception as to the
`
`source or origin of the services to which that mark is applied or used and will injure
`
`Opposer and the goodwill Opposer now enjoys. '
`
`10.
`
`The trade, the purchasing public, customers and potential customers of
`
`Opposer, upon learning of Applicant’s services marketed under the mark of Applicant’s
`
`application, are likely to be confused and misled as to the source of origin, sponsorship,
`
`or approval of the services and commercial activities of Applicant, or to be confiised or
`
`misled as to some association, connection, or affiliation between Applicant and Opposer,
`
`whereby Opposer will be damaged.
`
`.
`
`1 1.
`
`Opposer has filed application serial No. 76/081314 seeking registration of
`
`its service mark FUNKY BUDDHA LOUNGE for bar and nightclub services.
`
`12.
`
`The United States Patent and Trademark Office has cited a potential
`
`likelihood of confusion with Serial No. 76/020027. A copy of the United States Patent
`
`and Trademark Office action dated 01-08-01 is attached hereto as Exhibit B.
`
`13.
`
`Applicant’s mark, namely LITTLE BUDDHA CAFE, is a substantial
`
`duplicate of Opposer's service mark FUNKY BUDDHA LOUNGE, and is used in
`
`connection with services closely related to those sold under the service mark FUNKY
`
`BUDDHA LOUNGE by Opposer. The Applicant’s mark is sufficiently similar to the
`
`Opp0ser’s mark so that if the Applicant expanded its services into geographical areas
`
`

`
`where Opposer was first to use its mark FUNKY BUDDHA LOUNGE, confusion and
`
`deception as to the origin of Applicant’s services bearing the Applicant’s mark would
`
`occur, all to the damage and detriment of the Opposer. Confusion in trade resulting in
`damage and injury to the Opposer would be caused or would result by reason of the
`
`similarity between the Applicant’s mark and the Opposer's mark. Many persons familiar
`
`with Opposer’s mark would be likely to buy Applicant’s services as and for a services
`
`provided by, or associated with the Opposer. Moreover, even if persons should notice
`any difference whatever between the Opposer’s mark and the Applicant’s mark they
`
`would nevertheless be likely to believe and would be justified in so believing that the
`
`Applicant’s mark and the Opposer’s mark are, in fact companion marks used by the same
`
`provider of services or related services. Any such confusion in trade might result in loss
`
`of sales to the Opposer. Furthermore, any defect, objection or fault found with
`
`Applicant’s services marketed under its mark would necessarily reflect upon and
`
`seriously injure the reputation which the Opposer has established for its services
`
`marketed under its mark.
`
`14.
`
`Unless Applicant’s application for the mark LITTLE BUDDHA CAFE is
`
`refused by the Trademark Trial and Appeal Board, Opposer will suffer irreparable harm.
`
`Wherefore, Opposer requests that Registration No. Serial No. 76/020027 be
`
`refused and this opposition be sustained in favor of Opposer.
`
`COUNT II
`
`Fraudulently filed application registration
`
`15-28. Opposer adopts the allegations of Paragraphs l-14 as if fully alleged
`
`herein and further alleges as follows:
`
`29.
`
`Upon information and belief, Serial No. 76/020027 was filed fraudulently
`
`in that the formal application papers filed by Applicant, under notice of Section 1001 of
`
`Title 18 of the Untied States Code, stated that no other person, firm, corporation, or
`
`association has the right to use the mark in commerce, either in the identical form thereto
`
`or in such near resemblance thereto as to be 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 Upon information and belief, such statement was false in that Applicant knew of
`Opposer’s use of its trademark FUNKY BUDDHA LOUNGE in connection with the bar
`and nightclub services and/or Applicant knew of third parties’ uses of marks confusingly
`similar to Applicant’s mark. Upon information and belief, said false statement was made
`
`with the intent to induce authorized agents of the U.S. Patent and Trademark Office to
`
`

`
`
`
`grant said registration, and, reasonably relying upon the truth of said false statements, the
`
`U.S. Patent and Trademark Office did, in fact, grant said registration.
`
`Wherefore, Opposer requests that Serial No. 76/020027 be refused and this
`
`opposition be sustained in favor of Opposer.
`
`A duplicate copy of this Petition and the fee required in § 2.6(a)(16) is enclosed.
`
`POWER OF ATTORNEY
`
`Opposer hereby appoints Mark E. Wiemelt, Esq., a member in good standing of
`
`the Bar of the Sate of Illinois and whose postal address is c/o Law Offices of Mark E.
`
`Wiemelt, P.C., Ten South LaSalle Street, Suite 3500, Chicago, Illinois 60603, its duly
`
`authorized agent and attorney in the matter of the cancellation, and to transact all business
`
`in the Patent & Trademark Office in connection therewith, to sign all papers which may
`
`hereinafter be filed in connection therewith, and to receive all communications relating to
`
`the same.
`
`Respectfully submitted,
`
`BUDDHA BAR, INC.
`
`
`
`One of Its Attorneys
`
`Mark E. Wiemelt, Esq.
`Law Offices of Mark E. Wiemelt, P.C.
`3500 Chemical Plaza
`
`Ten South LaSalle Street
`
`Chicago, IL 60603
`(312) 372-7664
`
`

`
`VERIFICATION AND ACKNOWLEDGEMENT
`
`STATE or ILLINOIS
`
`-
`
`)
`
`ss
`
`COUNTY or Cool:
`
`)
`
`, being duly sworn, deposes and states that he is
`/770%/K /(/321 9/\
`of the Opposer, Buddha Bar, Inc. and that he has read and signed
`P735F0{€/\:l"
`the foregoing Petition, that he knows the contents thereof and that the same are true to his
`
`knowledge, except as to those matters therein stated to be alleged upon information and
`
`belief, and that to these matters he believes the sameto be true.
`
`.
`
`',___M_"__,. Z N“ ""._m_.. _
`
`Subscribed to and sworn before
`
`me this 2_o_day of , 2001
`
`tary Public
`
`

`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States
`
`Postal Service as first class mail in an envelope addressed to: Assistant Commissioner
`
`for Trademarks, BOX TTAB, FEB, 2900 Crystal Drive, Arlington, VA 22202-3513 on-
`OQ ‘Q £2091.
`
`3 O0". Mark E.
`
`Dated:
`
`3
`
`.
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`
`Service as first class mail in an envelope addressed to the following on
`(£3: ,Q,;QOQ[:
`
`Maurice B. Pilsof
`
`Novian & Novian, LLP
`1801 Century Park East, Suite 1201
`Los Angeles, CA 90067
`
`Dated:
`
`(5711
`
`3/ D 5')
`
`Mark E. Wiemelt
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`PAT. 8. TM. OFFWE
`
`Mark E. Wiemelt
`
`Law Offices of Mark E. Wiemelt, P.C.
`3500 Chemical Plaza
`Ten South Lasalle Street
`
`Chicago,
`
`IL
`
`60603
`
`Maurice B. Pilosof
`
`Novian & Novian, LLP
`1801 Century Park E, Suite 1201
`Los Angeles, CA
`90067
`
`Paper No.
`
`2
`
`Opposition No 124,298
`
`Serial No. 76/020,027
`
`Buddha Bar,
`
`Inc.
`
`V.
`
`George V. Restauration, S.A.
`
`A notice of opposition to the registration sought in the above-
`identified application has been filed.
`A copy of the notice is
`attached.
`
`(See Patent
`ANSWER IS DUE FORTY DAYS after the mailing date hereof.
`and Trademark Rule 1.7 for expiration date falling on Saturday, Sunday
`or a holiday).
`
`Proceedings will be conducted in accordance with the Trademark Rules of
`Practice, set forth in Title 37, part 2, of the Code of Federal
`Regulations.
`The parties are reminded of the recent amendments to the
`Trademark Rules that became effective October 9, 1998.
`See Notice of
`Final Rulemaking published in the Official Gazette on September 29,
`1998 at 1214 TMOG 145. Slight corrections to the rules, resulting in a
`correction notice, were published in the Official Gazette on October
`20, 1998 at 1215 TMOG 64.
`A copy of the recent amendments to the
`Trademark Rules, as well as the Trademark Trial and Appeal Board Manual
`of Procedure (TBMP),
`is available at http://www.uspto.gov.
`
`Discovery and testimony periods are set as follows:
`
`Discovery period to open:
`
`November 13, 2001
`
`Discovery period to close:
`
`May 12, 2002
`
`30—day testimony period for party
`in position of plaintiff to close:
`
`August 10, 2002
`
`30-day testimony period for party
`in position of defendant to close:
`
`October 9, 2002
`
`15-day rebuttal testimony period
`for plaintiff to close:
`
`November 23, 2002
`
`A party must serve on the adverse party a copy of the transcript of any
`testimony taken during the party's testimony period,
`together with
`
`

`
`
`?
`
`copies of documentary exhibits, within 30 days after completion of the
`taking of such testimony.
`See Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Trademark Rule 2.l28(a) and
`(b).
`An oral hearing will be set only upon request filed as provided
`by Trademark Rule 2.l29.
`
`The Board allows parties to utilize telephone conferences to
`NOTE:
`discuss or resolve many interlocutory matters that arise in inter
`partes cases.
`See the Official Gazette notice titled “Permanent
`Expansion of Telephone Conferencing on Interlocutory Matters in Inter
`Partes Cases Before the Trademark Trial and Appeal Board,” 1235 TMOG 68
`(June 20, 2000).
`A hard copy of the Official Gazette containing this
`notice is available for a fee from the Superintendent of Documents,
`U.S. Government Printing Office, Washington, D.C. 20402 (Telephone
`(202) 512-1800).
`The notice is also available at http://www.uspto.gov.
`Interlocutory matters which the Board agrees to discuss or decide by
`phone conference may be decided adversely to any party which fails to
`participate.
`
`If the parties to this proceeding are also parties to other Board
`proceedings involving related marks or, during the pendency of this
`proceedi g,
`they become parties to such proceedings,
`they should notify
`the B0 rd immediately, so that the Board can consider consolidation of
`proc edings.
`
`
`
`e Tyson
`ssistant,
`Trademark Trial and
`
`Appeal Board
`(703) 308-9300, ext.149
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`BUDDHA BAR, INC.
`
`Opposer
`
`V.
`
`GEORGE V. RESTAURANT (S.A.)
`CORPORATION
`
`Applicant
`
`
`\/\/\/\./\/\x\/\z\/\/\/\/\/
`
`Opposition No. 124298
`
`STIPULATION TO EXTEND TIME
`OR OTHERWISE RESPOND
`
`George V Restauration, a French Societe Anonyme, misidentified as George V.
`
`Restaurant, applicant, and Buddha Bar, Inc. through their respective counsel hereby stipulate to
`
`extend the time for George V Restauration to answer or otherwise plead to the Notice of
`
`Opposition. George V Restauration shall have until January 4, 2002 to answer or otherwise
`
`1
`
`NOVIAN & NOVIAN. LLP
`1801 CENTURY PARK EAST, SUITE I201 - LOS ANGELES. CALIFORNIA 90067
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`09-27-2004
`U.S. Patent & TMOfcITM Mail Rcpt D1. #22
`
`

`
`respond to the Notice of Opposition.
`
`Dated:&Q& ],Luu\
`
`GEORGE V RESTAURATION
`,_
`
`Maurice B. Pilosof
`
`NOVIAN & NOVIAN, LLP
`
`Attorney for Applicant
`
`BUDDHA BAR, INC.
`
` Dated:
`By’
`Maifk E. Wiemelt
`LAW OFFICES OF MARK E. VVIEMELT, PC.
`
`/Q//«" “ O 5
`
`Attorney for Opposer
`
`F:\DOCS\FN l\3239- l \DOCUMENT\stiprel ittlebuddha.wpd
`
`2
`
`NOVIAN & NOVIAN, LLP
`1801 CENTURY PARK EAST, sum: 1201 - LOS ANGELES, CALIFORNIA 90067
`
`

`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States
`Postal Service as first class mail in an envelope addressed to: Assistant Commissioner
`
`for Trademarks, BOX TTAB, NO FEB, 2900 Crystal Drive, Arlington, VA 22202-3513
`
`on /.9 — /0 - 0/
`
`Dated:
`
`‘/53 ‘Ta -’
`
`'5 /
`
`
`
`Mark E. Wiemelt
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`Service as first class mail in an envelope addressed to the following on
`/Q“/0 +0/;
`
`Maurice B. Pilsof
`
`Novian & Novian, LLP
`1801 Century Park East, Suite 1201
`Los Angeles, CA 90067
`
`Dated:
`
`T/0
`
`
`
`Mark E. Wiemelt
`
`

`
`BUTLER/rlg
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Opposition No. 124,298
`
`Buddha Bar, Inc.
`v.
`
`George V. Restaurant
`
`(S.A.) Corporation
`
`In an order dated October 24, 2001,
`
`the Board notified
`
`the applicant that the above—referenced opposition proceeding
`
`had been commenced against application Serial No. 76/020,027
`
`and set the time for answer, discovery periods and testimony
`
`periods in the proceeding.
`
`On December 13, 2001,
`
`the parties’ stipulated motion to
`
`extend the time for applicant to respond to the notice of
`
`opposition until January 4, 2002 was associated with the
`
`proceeding file. This motion is hereby granted.
`
`Applicant's answer,
`
`if filed, has not yet been associated
`
`with the proceeding.
`
`In the event that the applicant has not
`
`yet responded to the notice of opposition, applicant is allowed
`
`until thirty days from the mailing date of this order to file
`
`an answer to the notice of opposition.
`
`

`
`r-.
`
`Opposition.No. 124298
`
`Proceedings are otherwise suspended.
`
`The discovery
`
`periods and testimony periods,
`
`if any,
`
`will be reset upon
`
`resumption of the proceedings.
`
`fiusfiv
`IN;
`tler, Attorney,
`Cneryl
`Trademark Trial and
`
`Appeal Board
`
`

`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`\/éx/xzx/\/\/\/\y\yé
`
`Opposition No. 124298
`
`BUDDHA BAR, INC.
`
`
`
`Opposer,
`
`
`
`v.
`
`GEORGE V. RESTAURANT (S.A.)
`CORPORATION
`
`
`Applicant.
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, GEORGE V RESTAURATION, (S.A.) (“GEORGE V“),
`
`erroneously identified as GEORGE V. RESTAURANT (S.A.) CORPORATION, through
`
`its attorneys, hereby answers the Notice of Opposition (“Opposition”) filed by Buddha
`
`Bar, Inc., by alleging:
`
`1.
`
`2.
`
`3.
`
`GEORGE V admits the allegations in Paragraph I of the Opposition.
`
`GEORGE V admits the allegations in Paragraph 2 of the Opposition.
`
`GEORGE V lacks sufficient information to form a basis to determine the
`
`truth of the allegations of Paragraph 3 of the Opposition, and therefore denies the
`
`same.
`
`4.
`
`GEORGE V lacks sufficient information to form a basis to determine the
`
`truth of the allegations of Paragraph 4 of the Opposition, and therefore denies the
`
`same.
`
`1
`
`IIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIIII
`
`09-27-2004
`
`u.s. Patant G. TMOfcITM Mail RcptD1- #22
`
`

`
`6.
`
`GEORGE V lacks sufficient information to form a basis to determine the
`
`truth of the allegations of Paragraph 6 of the Opposition, and therefore denies the
`
`same.
`
`7. GEORGE V lacks sufficient information to form a basis to determine the truth
`
`of the allegations of Paragraph 7 of the Opposition, and therefore denies the same.
`
`8. GEORGE V lacks sufficient information to form a basis to determine the
`
`truth of the allegations of Paragraph 8 of the Opposition, and therefore denies the
`
`same.
`
`9. GEORGE V denies each and every allegation of Paragraph 9 of the
`
`Opposition.
`
`10. GEORGE V denies each and every allegation of Paragraph 10 of the
`
`Opposition.
`
`11. GEORGE V admits the allegations in Paragraph 11 of the Opposition.
`
`12. GEORGE V admits the allegations in Paragraph 12 of the Opposition.
`
`13. GEORGE V denies each and every allegation of Paragraph 13 of the
`
`Opposition.
`
`14. GEORGE V denies each and every allegation of Paragraph 14 of the
`
`Opposition.
`
`15-28. GEORGE V incorporates its admissions, denials, and averments set forth
`
`in Paragraphs 1-14 above, as though fully set forth herein.
`
`29. GEORGE V denies each and every allegation of Paragraph 29. of the
`
`Opposition.
`
`

`
`AFFIRMATIVE DEFENSES
`
`FIRST AFFIRMATIVE DEFENSE
`
`30. The Notice of Opposition and each and every purported Count therein fails
`
`to state a claim upon which relief can be granted against.
`
`SECOND AFFIRMATIVE DEFENSE
`
`31. Opposer has admitted that its application for FUNKY BUDDHA LOUNGE,
`
`Serial No. 76/020027 is not likely to cause confusion with GEORGE V’s application, and
`
`therefore Opposer is barred by doctrine of estoppel from prosecuting this Opposition.
`
`THIRD AFFIRMATIVE DEFENSE
`
`32. There is no basis upon which Opposer can assert that there is a likelihood of
`
`confusion with Applicant’s mark.
`
`WHEREFORE, GEORGE V prays that BUDDHA BAR, |NC.’s Opposition be
`
`denied; and that GEORGE V be awarded its costs, and other relief deemed appropriate
`
`by the Board.
`
`DATED: February
`
`2002
`
`Respectfully submitted,
`NOVIAN & NOVIAN
`
`/l
`i /
`.‘
`¢“i\\~owI7~Q4 P3!’
`“
`
`MAURICE B. PILOSOF.
`
`Attorneys for Applicant
`GEORGE V. RESTAURATION (S.A.)
`
`

`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United
`States Postal Service as first class mail in an envelope addressed to: Assistant
`Commissioner for Trademarks, BOX Tl'AB, NO FEE, 2900 Crystal Drive, Arlington, VA
`22202-3513 on
`.
`
`Dated: February
`
`2002
`
`Emily Coh n
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United
`States Post
`I Service as first class mail in an envelope addressed to the following on
`
`February
`
`, 2002.
`
`Mark E. Wiemelt, Esq.
`Law Offices of Mark E. Wiemelt, P.C.
`
`3500 Chemical Plaza
`
`Ten South LaSalle Street
`
`Chicago, IL 60603
`(312) 372-7664
`
`Dated: February
`
`2002
`
`W
`
`Emily C hen
`
`

`
`3.
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BUDDHA BAR, INC.
`
`Opposer,
`
`v.
`
`GEORGE V. RESTAURANT (S.A.)
`CORPORATION
`
`Applicant.
`
`Box TTAB NO FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`\y§z~zs/\/\/\/\/\/\./\/
`
`Opposition No. 124298
`
`MOTION FOR SUMMARY JUDGMENT AND FOR
`
`SUSPENSION OF THESE PROCEEDINGS
`
`Applicant, GEORGE V RESTAURATION (S.A.), by its attorneys, hereby
`
`moves the Trademark Trial and Appeal Board pursuant to Rule 56 of the Federal Rules
`
`of Civil Procedure for summary judgment that Opposition No. 124298 be dismissed on
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`the basis that Opposer’s prior inconsistent statement preclude Opposer from
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`maintaining this Opposition.
`
`Opposer also requests that, pursuant to Rule 2.127(d), 37 C.F.R. § 2.127(d), the
`
`Board suspend this proceeding pending determination of its Motion for Summary
`
`Judgment as of the date of submission of this motion.
`
`In the event the Board denies
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`Opposer’s Motion for Summary Judgment, Opposer hereby requests that the discovery
`
`09-27-2004
`U.S. Patent & TMOfclTM Mail Rcpt D1. #22
`
`

`
`I
`
`and testimony periods be reset.
`
`The Facts and Grounds for Applicant's Motion for Summary Judgment, are set
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`forth below.
`
`FACTUAL BACKGROUND
`
`The instant opposition proceeding traces its way back to an unsolicited letter
`
`directed by Opposer’s counsel to counsel for the applicant. The letter, dated Thursday,
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`February 15, 2001 is attached to the declaration of Maurice B. Pilosof as Exhibit 1. The
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`letter in pertinent part states the following;
`
`“On June 29, 2000, my client filed another U.S. Service Mark Application,
`Serial No. 76/081314forthe Mark FUNKY BUDDHA LOUNGE, in connection
`with bar and nightclub services. The application is being refused based on
`your client's Serial No. 75980281, forthe Mark BUDDHA BAR, in connection
`with restaurant nightclub services, namely the providing of food, and
`beverages, which has been allowed’, and your client’s Serial No. 76020027,
`for the Mark LITTLE BUDDHA CAFE, in connection with restaurant services
`namely, providing food, and beverages.
`
`As you know, we can overcome the Examining Attorney's refusal to register
`the FUNKY BUDDHA LOUNGE Mark on the Principal Register if we can
`convince her that the marks BUDDHA BAR, LITTLE BUDDHA CAFE and
`FUNKY BUDDHA LOUNGE as used are not likely to cause confusion, to
`cause mistake, or to deceive. After a preliminary investigation, we believe
`we may be able to overcome the rejection by establishing that the marks
`BUDDHA BAR, LITTLE BUDDHA CAFE and FUNKY BUDDHA LOUNGE as
`used are not likely to cause confusion, to cause mistake, or to deceive.
`However, the Examining Attorney may disagree and continue her refusal to
`register the Mark.
`
`In light of the foregoing, we are asking that you indicate whether your client
`would be willing to sign Consents to, Register agreeing that the marks
`BUDDHA BAR, LITTLE BUDDAH CAFE and FUNKY BUDDHA LOUNGE as
`used are not likely to cause confusion, to cause mistake, orto deceive. This
`should strengthen our argument to the Examining Attorney and reduce the
`expense and aggravation associated with obtaining a federal registration.”
`
`

`
`Opposer’s counsel letter is clear in that Opposer had conducted a preliminary
`
`investigation, and upon such investigation was prepared to argue and would argue to
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`the examining attorney that there is no likelihood of confusion between the marks
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`herein, FUNKY BUDDHA LOUNGE and LITTLE BUDDHA CAFE. The request for
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`Applicant to execute a consent agreement was proffered for strengthening Opposer’s
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`arguments that no likelihood of confusion existed.
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`Applicant was not willing to execute a consent agreement. Opposer, despite
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`having stated that the consent agreement would only strengthen its argument with
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`respect to its statement that no likelihood of confusion with respect to the marks at
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`issue, did not make any arguments in this regard to the Examining Attorney assigned to
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`its case. Opposer’s statement in the Exhibit 1 letter, notwithstanding, filed the instant
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`opposition proceeding, instead. No attempt was made by Opposer to persuade the
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`Examiner assigned to its case of Opposer’s no likelihood of confusion position.
`
`Opposer, despite its prior representations filed the instant opposition. Thus, the
`
`Exhibit 1 Letter and this opposition must be construed as being part and parcel of the
`
`same proceeding.
`
`LEGAL ARGUMENT
`
`Applicant submits that Opposer’s prior inconsistent statements preclude Opposer
`
`from maintaining this opposition. There is no genuine issue of material fact as to the
`
`statements made by Opposer in the Exhibit 1 letter. These statements estop Opposer
`
`from maintaining the opposition. The purpose of a summary judgment motion was
`
`articulated by the Board in Aries Systems Corp. v. World Book, lnc., 23 USPQ 2d 1742,
`
`1744, (TTAB 1992). The Board therein stated:
`
`3
`
`

`
`“As has often been stated, the purpose of summary judgment is one of
`judicial economy, namely, to save the time and expense of a useless trial
`where no genuine issues of material fact remains and more evidence than is
`already available in connection with the motion for summaryjudgment could
`
`not be reasonably expected to change the result. See, e.g., Pure Gold Inc.
`v. Syntex (U.S.A.), lnc., 739 F.2d 624, 222 USPQ 741, 743 (Fed. Cir. 1984)
`and Levi Strauss & Co. v. Genesco, |nc., 742 F.2d 1401, 222 USPQ 939, 941
`(Fed. Cir. 1984). The burden in a motion for summary judgment is on the
`moving party to establish prima facie that there is no genuine issue of material
`fact and that it is entitled to a judgment as a matter of law. Fed. R. Civ. P.
`56(c)."
`
`Summary judgment is warranted herein.
`
`Opposer’s counsel statements in the Exhibit A letter constitute admissions.
`
`These admissions are that Opposer had conducted had conducted a preliminary
`
`investigation, and on the basis of this investigation, had formed the belief that it “may be
`
`able to overcome’ the likelihood of confusion rejection issued by the Examining Attorney
`
`handling Opposer’s application, and that Opposer would present such arguments. This
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`belief was belied by a number of actions undertaken by Opposer. Opposer made no
`
`attempt to convince the Examining Attorney of Opposer’s belief that there was no
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`likelihood of confusion as between Opposer’s mark and Applicant’s mark. Applicant’s
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`decision not to execute a Consent Agreement, according to Opposer’s statements left it
`
`with a less strong case to persuade the Examiner. However, no case was ever
`
`presented. The filing of the Notice of Opposition alleging a likelihood of confusion
`
`between App|icant’s mark and Opposer’s mark was totally inconsistent with Opposer’s
`
`statements as contained in the Exhibit A letter.
`
`The issue of the effect of inconsistent statements was addressed in by the TTAB
`
`in the case'of EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc, 213 USPQ 597, 599
`
`(TTAB 1982). The Board therein stated:
`
`

`
`.’I
`
`“It is well settled that an applicant’s prior inconsistent statements in its
`application for registration or in another proceeding do not give rise to an
`estoppel in subsequent proceedings.
`Institutional Wholesalers v. Saxons
`Shoppes, Inc. 170 USPQ 107 (TTAB 1971); Textron, Inc. v. Gillette Co., 180
`USPQ 152, 154 and cases cited therein (TTAB 1973). However, such
`statements constitute admissions and may be considered as evidence, albeit
`not conclusive evidence, of the truth of the assertion therein. Bakers
`Franchise Corp. v. Royal Crown Cola Co., 160 USPQ 192 (CCPA 1969);
`Maremont Corp. v. Airlift Corp., 174 USPQ 395, 396 (CCPA 1972)."
`
`The inconsistent statements contained in Opposer’s letter must be construed to be
`
`made in this proceeding. The statements are part and parcel of this proceeding.
`
`Therefore, the limitation expressed in the EZ Loader case is not applicable herein.
`
`Opposer is estopped to maintain this opposition by virtue of its prior inconsistent
`
`statements. The opposition must be dismissed.
`
`DATED: March 1, 2002
`
`Respectfully submitted,
`NOVIAN & NOVIAN
`
`J
`MAURICE B. PlEOSO
`Attorneys for Applicant
`GEORGE V. RESTAURATION (S.A.)
`
`

`
`.0’
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United
`
`States Postal Service as first class mail in an envelope addressed to: Assistant
`
`Commissioner for Trademarks, BOX TTAB, NO FEE, 2900 Crystal Drive, Arlington, VA
`
`22202-3513 on Mlfiggm ‘(I Zgtsl
`Dated: March
`2002
`
`4 Q, CZ..\
`
`Emily Cohen
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United
`
`States Postal Service as first class mail in an envelope addressed to the following on
`March
`2002.
`
`Mark E. Vlfiemelt, Esq.
`Law Offices of Mark E. Vlfiemelt, P.C.
`3500 Chemical Plaza
`
`Ten South LaSal|e Street
`
`Chicago, IL 60603
`(312) 372-7664
`
`Dated: March
`
`2002
`
`g (22
`
`

`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BUDDHA BAR, INC.
`
`Opposer,
`
`v.
`
`GEORGE V. RESTAURANT (S.A.)
`CORPORATION
`
`Applicant.
`
`Box TTAB NO FEE
`
`Assistant Commissioner for Trademarks
`
`.
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`\/\/\./\/\/\/\/\./y/\/é
`
`Opposition No. 124298
`
`DECLARATION OF MAURICE B. PILOSOF IN SUPPORT
`OF APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`AND FOR SUSPENSION OF THESE PROCEEDINGS
`
`MAURICE B. PILOSOF, being duly sworn, and having personal knowledge of the
`
`matters set forth herein, deposes and says:
`1.
`I am an attorney at the law firm Novian and Novian, LLP, attorneys for
`
`Applicant George V. Restauration, (S.A.)
`
`2.
`
`I submit this Declaration in Support of Applicant’s Motion for Summary
`
`I Judgment and For Suspension of These Proceedings.
`
`3.
`
`Attached hereto as Exhibit 1 is a true and correct copy of a letter received
`
`by the undersigned from Opposer’s counsel. The date of the letter is
`
`Thursday, February 15, 2001.
`
`

`
`
`
`I declare under penalty of perjury under the laws of the United States of America
`
`that the foregoing is true and correct.
`
`Executed on March
`
`2002, at Los Angeles, California
`
`
`
`

`
`
`
`LAW OFFICES OF MARK E. WIEMELT, P. C.
`
`TEN SOUTH LASALLE STREET
`SUITE 3500
`CHICAGO, IL 60603
`(312) 372-7664
`FAX: (312) 372-6568
`E-MAIL: mwiemelt@[goweruser.com
`PATENT, TRADEMARK, COPYRIGHT,
`TRADE SECRETS, UNFAIR COMPETITION,
`INTERNET/E-COMMERCE LAw AND
`RELATED CONTRACT, LICENSING
`AND LITIGATION MATTERS
`
`MARK E. WIEMELT*
`ROBERT KOBACK
`
`* REGISTERED PATENT ATTORNEY
`
`Thursday, February 15, 2001
`
`Maurice B. Pilsof
`
`Novian & Novian, LLP
`
`1801 Century Park East, Suite 1201
`Los Angeles, CA 90067
`
`Re:Trademarl'</Service Mark — FUNKY BUDDHA LOUNGE
`
`Dear Mr. Pilsof:
`
`I represent the Buddha Bar, Inc. in intellectual property matters.
`
`Buddha Bar, Inc. is the owner of the service mark FUNKY BUDDHA LOUNGE and has
`been using the mark in connection with bar and nightclub services provided in Chicago.
`Illinois, since at least as early as May 28, 1996. Continuously since then, my client has
`used and displayed the FUNKY BUDDHA LOUNGE Mark as its trade name and service
`mark in connection with its bar and nightclub services.
`In doing so, my client has
`expended substantial time and money in the development and promotion of the Mark and
`has used the Mark in all facets of its business, including but not limited to using the Mark
`on its exterior and interior building signage, flyers, brochures, and related advertising and
`marketing efforts.
`
`By virtue of my client’s prior, long and exclu