IN THE UNITED STATES PATENT AND TRADEMARK OFFICE /\
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`I
`
`‘I1.
`
`the Matter of Trademark Application
`In
`Serial No. 75/789,080
`
`Opposition No. 91151893
`
`RMV CELLARS, LLC
`
`Opposer,
`
`-v-
`
`OPPOSER’S REPLY TO
`APPLICANT’S MEMORANDUM IN
`
`OPPOSITION TO OPPOSER’S
`MOTION FOR LEAVE TO AMEND
`
`NOTICE OF OPPOSITION AND TO
`
`\°
`°g "2,
`Z ?9
`Es
`93%;,
`3
`
`CALONA WINES LTD
`
`REOPEN DISCOVERY
`
`PROTECTIVE ORDER
`
`Applicant.
`
`REDACTED PUBLIC VERSION OF
`DOCUMENT FILED PURSUANT TO
`
`The Court should grant Opposer’s motion.‘ Applicant’s argument contradicts
`
`itself, i.e., that (a) the assignment of the business goodwill in the April 2002 constituted
`
`an automatic assignment of the U.S.
`
`intent-to-use trademark application, (b) in any
`
`event, the late filed August 8, L “confirmatory” assignment cured the defect, and (c)
`
`there was no goodwill to assign. How can the assignment of the goodwill in April 2002
`
`constitute an assignment of the U.S. intent-to-use application if there was no goodwill to
`
`- assignl? If the U.S. intent-to-use application was thus not assigned, how can Applicant
`
`argue that it was not abandoned?
`
`Certificate of Mailing
`
`I hereby certify that on the date signed --5"" e original and two copies of the document to which this
`' --
`-: d with the United States Postal Service as first class mail in an
`- = NO FEE, Assistant Commissioner for Trademarks, Trademark Trial and
`A ington, VA 22202-3513.
`
`
`
`
`
`
`
`KII M RVI ANDFP
`
`_
`1
`Opposer seeks to amend its Notice of Opposition to remove the original Second, Fourth, and Fifth
`Grounds, and insert new Second, Fourth, and Fifth Grounds, and add a Sixth Ground. Applicant appears
`to oppose only the additions, not the deletions.
`OPPOSER’S REPLY TO APPLICANT'S MEMORANDUM IN OPPOSITION
`TO OPPOSER’S MOTION FOR LEAVE T0 AMEND NOTICE or
`OPPOSITION AND TO REOPEN DISCOVERY--1
`
`KURT M- RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sum; 206
`VANCOUVER’ WA 98660
`360.750.9931
`
`<‘...
`
`'2‘
`
`Q
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`C’
`C
`
`

`
` 7
`
`7
`
`Applicant contends that assigning the goodwill constituted an automatic,
`
`assignment of the trademark and application. This is a surprising result. Under this
`
`argument, there would be no need to assign a trademark at all,
`
`let alone in writing,
`
`because by assigning a company's general goodwill, an automatic assignment occurred
`
`of all trademarks of the business.
`
`By the very terms of the April 2002’Asset Purchase and Sale Agreement, the
`
`intent-to-use application was not assigned? The Trademark Act
`
`requires any
`
`assignment of an application to be in a writing duly executed. 15 U.S.C. § 1060(a)(3).
`
`If there was no assignment of the application on April 4, 2002, [REDACTED], then from
`
`April 4, 2002 to August 7, 2003 (sixteen months), the application for the mark, and this
`
`Opposition, have not proceeded in the real name in interest, and the company that did
`
`own the mark, admittedly not using it, abandoned that mark and the application for well
`
`over a year, sixteen months.
`
`TIMELINE
`
`March 8, 1999
`
`Calona files Canadian intent-to-use application
`
`August 31, 1999
`
`April 2002
`
`May 2002
`
`May 2002
`July 24, 2003
`
`Calona files U.S. intent-to-use application asserting priority
`[REDALTED]
`
`Calona changes its name to Canrim Packaging, Inc.
`
`390531 Canada, Inc. changes its name to Calona
`
`RMV Cellars files motion to amend notice of opposition, reopen
`discovery
`
`backward in time to April 2002
`
`August 8, 2003
`
`to
`for Calona, executes confirmatory assignment
`Baxter,
`390531 Canada, Inc., stating it will be effective sixteen months
`
`2 [REDACTED]
`OPPOSER'S REPLY TO APPLICANT’S MEMORANDUM IN OPPOSITION
`TO OPPOSER'S MOTION FOR LEAVE TO AMEND NOTICE OF
`OPPOSITION AND TO REOPEN DISCOVERY-2
`
`KURT M. RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, sum: 206
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`Here, there can be no conclusion but that Applicant assigned the entirety of the
`
`company's goodwill, but did not assign the trademarks or applications for trademark,
`
`violating the Anti-Assignment
`
`in Gross-Rule and abandoning the mark. Applicant
`
`comes in sixteen (16) months after-the-fact and tries to make a curative “confirmatory
`
`assignment”, but Applicant is shutting the barn door after the horse has bolted.
`!
`1‘
`Applicant s understanding” is not credible or relevant
`
`Applicant admits that the “Agreement did not specifically include ‘trademarks’ in
`
`the list of assets being transferred’, but states that “it was Old Ca|ona’s “understanding”
`
`that ‘goodwill’ included all of Old Ca|ona’s trademarks." This flies in the face of both the
`
`Agreement, and Applicant’s argument:'The Agreement expressly stated that assets not
`
`listed were not transferred; and Applicant's argument is that the application had no
`
`goodwill associated with it.3
`
`Opposer’s seeks discovery for a limited purpose
`
`Opposer seeks reopening of discovery on a limited basis to explore the following:
`
`specifically, who, if anyone, is using the mark SANDHILL, on what products or services,
`
`to what extent, whether there was any lapse or abandonment of use, and whether a
`
`different entity than that who originally filed the application is the actual user. Who,
`
`how, and when used the mark SANDHILL in the sixteen (16) months between April
`
`2002 and August 8, 2003. Reopening discovery to this limited extent is not prejudicial,
`
`or is prejudicial to only a minimum degree, to Applicant.
`
`3 Curiously, despite fielding a stable of attorneys in the U.S. and Canada, and despite the fact that the
`Asset Purchase and Sale Agreement was undoubtedly prepared by a Canadian attorney, Applicant cites
`not one proposition of Canadian or U.S. law that supports the self-serving, post-hoc, “understanding” that
`an assignment of goodwill automatically assigns the trademarks and application.
`OPPOSER'S REPLY TO APPLlCANT'S MEMORANDUM IN OPPOSITION
`KURT M. RYLANDER TRIAL AND
`TO OPPOSER’s MOTION FOR LEAVE TO AMEND NOTICE OF
`PATENT A"°RNEY AT LAW PC
`1014 FRANKLIN STREET, SUITE 206
`OPPOSITION AND TO REOPEN DISCOVERY-3
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`
`
`There is a clear break in the chain of priority
`
`Applicant assigned in April 2002 its goodwill and distribution rights in the product
`
`upon which Applicant proposes to use its mark. Applicant did not assign the mark, or
`
`the U.S. intent-to-use application. While Applicant makes stretched arguments that the
`
`assignment of goodwill
`
`is an automatic assignment of the application and mark, 15
`
`U.S.C. § 1060(a)(3), however, requires that the assignment of applications for a mark
`
`must be by an instrument in writing, duly executed. Applicant did not make such an
`
`assignment until August 8, 2003, after the instant motion was filed. Thus, there is a
`
`clear break in the priority chain.
`
`WHEREFORE, the Board should grant Opposer’s motion.
`
`DATED THIS August 18, 2003
`
`Respectfully submitted,
`
`I 5
`
`"-I"
`
`\ ~
`
`«I:
`
`.7
`
`
`
`Y AT LAW PC
`
`IAL AND
`
`
`
`
`KURT M. RYLANDER, Reg. No. 43,897
`1014 Franklin Street, Suite 206
`Vancouver, WA 98660
`(360) 750-9931
`Attorney for Opposer
`
`
`
`CERTIFICATE OF SERVICE TO APPLICANT
`
`ope
`inserted a
`I HEREBY CERTIFY that on the date signed below I
`containing the document to which this certificate is attached into the
`.. Mails first
`
`
`'
`- Applicant, Chuck
`‘ d Ave, 1600 ODS
`
`IN OPPOSITION
`0PPOSER’S REPLY TO APPLlCANT’S MEMORAND -
`TO OPPOSER’S MOTION FOR LEAVE T0 AMEND once OF
`OPPOSITION AND TO REOPEN DISCOVERY--4 ’
`
`KURT M. RYLANDER TRIAL AND
`
`PATENT ATTORNEY AT LAW PC
`1°14 FRANKUN STREET S”'“‘- 2°5
`VANCOUVER, WA 98660
`360.750.9931
`
`

`
`~2
`
`R
`
`I
`
`////fl«fi
`
`
`
`'
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`co rt
`
`Q 2
`.5 5
`° 2
`
`°
`
`.
`.
`the Matter of Trademark Application
`In
`Serial No. 75/789,080
`
`RMV CELLARS, LLC
`
`Opposer,
`
`-v-
`
`Opposition No. 91151893
`
`OPPOSER’S REPLY TO
`APPLICANT’S MEMORANDUM IN
`
`OPPOSITION TO OPPOSER’S
`MOTION FOR LEAVE TO AMEND
`NOTICE OF OPPOSITION AND TO
`
`CALONA WINES LTD
`
`REOPEN DISCOVERY
`
`CONFIDENTIAL--FILED UNDER SEAL
`Applicant.
`SUBJECT TO PROTECTIVE ORDER
`
`The Court should grant Opposer’s motion.‘ Applicant's argument contradicts
`
`itself, i.e., that (a) the assignment of the business goodwill in the April 2002 constituted
`
`an automatic assignment of the U.S.
`
`intent-to-use trademark application, (b) in any
`
`event, the late filed August 8, 2003 “confirmatory" assignment cured the defect, and (c)
`
`there was no goodwill to assign. How can the assignment of the goodwill in April 2002
`
`constitute an assignment of the U.S. intent-to-use application if there was no goodwill to
`
`assign!? If the U.S. intent-to-use application was thus not assigned, how can Applicant
`
`argue that it was not abandoned?
`
`
`
`1 Opposer seeks to amend its Notice of Opposition to remove the original Second, Fourth, and Fifth
`Grounds, and insert new Second, Fourth, and Fifth Grounds, and add a Sixth Ground. Applicant appears
`to oppose only the additions, not the deletions.
`
`OPPOSER’S REPLY TO APPLICANT’S MEMORANDUM IN OPPOSITION
`TO OPPOSER’S MOTION FOR LEAVE T0 AMEND NOTICE or
`OPPOSITION AND TO REOPEN DISCOVERY--1
`
`KURT M- RYI-ANDER TRIAL AND
`PATENT ATT°R"EY AT LAW PC
`1014 FRANKLIN STREET, surre 206
`VANCOUVER’ WA 98660
`360.750.9931
`
`

`
`Applicant contends that assigning the goodwill constituted an automatic,
`
`assignment of the trademark and application. This is a surprising result. Under this
`
`argument, there would be no need to assign a trademark at all,
`
`let alone in writing,
`
`because by assigning a company's general goodwill, an automatic assignment occurred
`
`of all trademarks of the business.
`
`By the very terms of the April 2002 Asset Purchase and Sale Agreement, the
`
`intent-to-use application was not assigned? The Trademark Act
`
`requires any
`
`assignment of an application to be in a writing duly executed. 15 U.S.C. § 1060(a)(3).
`
`If there was no assignment of the application on April 4, 2002, when the goodwill was
`
`assigned, then from April 4, 2002 to August 7, 2003 (sixteen months), the application for
`
`the mark, and this Opposition, have not proceeded in the real name in interest, and the
`
`company that did own the mark, admittedly not using it, abandoned that mark and the
`
`application for well over a year, sixteen months.
`
`TIMELINE
`
`March 8, 1999
`
`Calona files Canadian intent-to-use application
`
`August 31, 1999
`
`Calona files U.S. intent-to-use application asserting priority
`
`backward in time to April 2002
`
`April 2002
`
`May 2002
`
`May 2002
`July 24, 2003
`
`August 8, 2003
`
`Calona transfers ‘goodwill and distribution rights" to 390531
`Canada,
`Inc., expressly retaining all assets not expressly
`assigned
`
`Calona changes its name to Canrim Packaging, Inc.
`
`390531 Canada, Inc. changes its name to Calona
`RMV Cellars files motion to amend notice of opposition, reopen
`discovery
`
`to
`for Calona, executes confirmatory assignment
`Baxter,
`390531 Canada, Inc., stating it will be effective sixteen months
`
`2 The company formerly known as Calona assigned that company's goodwill, without limitation, to another
`company. Exhibit “A” to Opposer’s Motion for Leave to Amend at page 2, Asset Sale Agreement 1] 1.1 .
`The assignment made no mention of trademarks or applications therefore. The assignment stated that all
`other assets not expressly assigned, were not assigned.
`Id. at page 3, Asset Sale Agreement 11 1.3 .
`OPPOSER’S REPLY TO APPL|CANT’S MEMORANDUM IN OPPOSITION
`KURT M- RYLANDER TRIAL AND
`TO OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE or
`PATENT ATTORNEY AT LAW PC
`1014 FRANKLIN STREET, SUITE 206
`OPPOSITION AND TO REOPEN DISCOVERY--2
`VANCOUVER] WA 98660
`360.750.9931
`
`

`
`Here, there can be no conclusion but that Applicant assigned the entirety of the
`
`company’s goodwill, but did not assign the trademarks or applications for trademark,
`
`violating the Anti-Assignment
`
`in Gross-Rule and abandoning the mark. Applicant
`
`comes in sixteen (16) months after-the-fact and tries to make a curative “confirmatory
`
`assignment”, but Applicant is shutting the barn door after the horse has bolted.
`
`Applicant s understanding” is not credible or relevant
`
`Applicant admits that the “Agreement did not specifically include ‘trademarks’ in
`
`the list of assets being transferred’, but states that “it was Old Calona’s “understanding”
`
`that ‘goodwill’ included all of Old Calona’s trademarks.” This flies in the face of both the
`
`Agreement, and Applicant's argument: The Agreement expressly stated that assets not
`
`listed were not transferred; and App|icant’s argument is that the application had no
`
`goodwill associated with it.3
`
`Opposer’s seeks discovegg for a limited purpose
`
`Opposer seeks reopening of discovery on a limited basis to explore the following:
`
`specifically, who, if anyone, is using the mark SANDHILL, on what products or services,
`
`to what extent, whether there was any lapse or abandonment of use, and whether a
`
`different entity than that who originally filed the application is the actual user. Who,
`
`how, and when used the mark SANDHILL in the sixteen (16) months between April
`
`2002 and August 8, 2003. Reopening discovery to this limited extent is not prejudicial,
`
`or is prejudicial to only a minimum degree, to Applicant.
`
`3 Curiously, despite fielding a stable of attorneys in the U.S. and Canada, and despite the fact that the
`Asset Purchase and Sale Agreement was undoubtedly prepared by a Canadian attorney, Applicant cites
`not one proposition of Canadian or U.S. law that supports the self-serving, post-hoc, “understanding” that
`an assignment of goodwill automatically assigns the trademarks and application.
`OPPOSER’S REPLY TO APPLICANT’S MEMORANDUM IN OPPOSITION
`KURT M- RYI-ANDER TRIAL AND
`TO OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF
`PATENT ATT°RNEY AT LAW PC
`1014 FRANKLIN STREET, SUITE 206
`VANCOUVER. WA 98660
`360.750.9931
`
`OPPOSITION AND TO REOPEN DlSCOVERY—3
`
`

`
`
`‘I "I.
`.
`-.
`.
`'1‘
`"I-
`
`all
`
`3. Q1;
`'1‘ I‘;
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`'3.’
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`
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`
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`.
`.71’:
`
`There is a clear break in the chain of priority
`
`Applicant assigned in April 2002 its goodwill and distribution rights in the product
`
`upon which Applicant proposes to use its mark. Applicant did not assign the mark, or
`
`the U.S. intent-to-use application. While Applicant makes stretched arguments that the
`
`assignment of goodwill
`
`is an automatic assignment of the application and mark, 15
`
`U.S.C. § 1060(a)(3), however, requires that the assignment of applications for a mark
`
`must be by an instrument in writing, duly executed. Applicant did not make such an
`
`assignment until August 8, 2003, after the instant motion was filed. Thus, there is a
`
`clear break in the priority chain.
`
`WHEREFORE, the Board should grant Opposer’s motion.
`
`DATED THIS August 18, 2003
`
`Respectfully submitted,
`
`RIAL AND
`
`PC
`
`
`
`URT M. RYLAND R, Reg. No. 43,897
`1014 Franklin Stree , Suite 206
`
`Attorney for Opposer
`
`Vancouver, WA 98660
`(360) 750-9931
`
`CERTIFICATE OF SERVICE TO APPLICANT
`
`
`
`I HEREBY CERTIFY that on the date signed below I
`containing the document to which this certificate is attached '
`
`nvelope
`inserted
`
`.
`. Mails
`first
`e Applicant, Chuck
`d Ave, 1600 ODS
`
`
`
`M. RYLANDER
`
`
`
`M IN OPPOSITION
`NOTICE or
`
`KURT M- RYLANDER TRIAL AND
`PATENT ATTORNEY AT LAW PC
`1°14 FRANKUN STREET S”'TE 205
`VANCOUVER, WA 98660
`360.750.9931
`
`DATED August 18, 2003
`
`OPPOSER'S REPLY TO APPLlCANT’S MEMORAN
`TO OPPOSER’S MOTION FOR LEAVE TO AME
`OPPOSITION AND TO REOPEN DISCOVERY
`
`
`
`

`
`it
`
`‘Q3
`
`
`
`Main Office
`l0l4 Franklin Street
`Suite 206
`Vancouver, Washington
`98660
`Tel: 360.750.9931
`Fax: 360.397.0473
`www.rylanderlaw.com
`
`Practice Areas
`Patents, Trademarks, Copyrights
`nfringement & Unfair Competition
`Government Contract Claims
`Federal Tort Claims
`Commercial Litigation
`Personal Injury
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`
`Licensed
`State of Washington
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`
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`U.S. Supreme Court
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`
`Associations
`Am. Intellectual Prop. Law Assn
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`Assn of Trial Lawyers of Am.
`Wash. State Trial Lawyer's Assn
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`Sec. Intellectual Property Law
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`Sec. Intellectual Property
`Sec. Litigation
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`Federal Board of Contract Appeals
`Bar Assn
`
`
`
`KURT M . RYLANDER
`TRIAL & PATENT ATTORNEY AT LAW PC
`
`August 18, 2003
`
`File no. RMV03
`
`Assistant Commissioner for Trademarks
`BOX TTAB NO FEB
`
`2900 Crystal Drive /
`Arlington, VA 22202-3513
`RE: 08 22.203: WW7
`fell’
`Dear Sir or Madam:
`U-9-"""‘UM°
`
`Enclosed please find an original of the following:
`
`1.
`
`2.
`
`Opposer’s Reply to Applicant’s Memorandum in Opposition to
`Opposer’s Motion for Leave to Amend Notice of Opposition and to
`Repoen Discovery SEALED — DOCUMENT FILED PURSUANT TO
`PROTECTIVE ORDER; and
`
`Opposer’s Reply to App1icant’s Memorandum in Opposition to
`Opposer’s Motion for Leave to Amend Notice of Opposition and to
`Repoen
`Discovery
`REDACTED
`PUBLIC
`VERSION
`OF
`DOCUMENT FILED PURSUANT TO PROTECI ER.
`
`Thank you for your courtesies.
`
`
`
`KMR;wf
`Enclosures
`
`Cc:
`
`/all enclosures
`Charles McClung
`Client w/Redac ~ Public Version