"T"TERlE>
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`05-19-2004
`US. Patent E: TMOTCITM Mail Flcpl D1. #22
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`Opposition No. 91159108
`Application Serial No. 76/ 186,690
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`Rapport Technologies, Inc.
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`Opposer’
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`v.
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`Rappore Technologies, Inc.
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`Applicant.
`_“
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`REPLY TO OPPOSER’S CROSS MOTION AND RESPONSE TO APPLICANT’S
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`MOTION TO SHOW GOOD CAUSE WHY DEFAULT JUDGMENT SHOULD NOT BE
`ENTERED
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`Applicant respectfully submits this Reply to certain facts and arguments contained in
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`Opposer’s Cross Motion for Entry of Default Judgment Against Applicant and Response to
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`App1icant’s Motion to Show Good Cause Why Default Judgment Should Not Be Entered
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`(“Cross Motion and Response”) filed with the TTAB on May 11, 2004. Opposer’s Cross Motion
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`and Response contains little more than unfounded accusations that are devoid of any support in
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`fact or law. Therefore, Opposer’s Cross Motion should be denied. For the reasons stated herein,
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`Applicant submits good cause exists to prevent the entry of default judgment because the delay
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`in filing the answer is not the result of willful or gross negligence; Opposer will not be
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`substantially prejudiced; and Applicant has a meritorious defense in this matter.
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`1.
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`Request to Strike Certain Portions of 0pposer’s Cross Motion and Response.
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`In its Cross Motion and Response, Opposer, Rapport Technologies, Inc. misrepresents to
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`this Board as fact, unsupported suppositions that are nothing more than hearsay within hearsay.
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`These suppositions are self-serving, highly unreliable and certainly do not constitute credible
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`“facts” upon which the Board can make sound decisions. Therefore these assertions should be
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`stricken from Opposer’s Cross Motion and Response.
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`Specifically, Opposer’s counsel refers to a purported voice message of December 22,
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`2003 from Mr. Gordon Miller of Senforce Technologies (formerly Rappore Technologies, Inc.)
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`to former counsel, Ms. Patricia Cotton for Opposer (“Former Counsel”). Presumably Former
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`Counsel passed on this information to Opposer’s current counsel of record. What is clear fiom
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`the record is that Opposer’s current counsel never spoke with Mr. Mella or received such a voice
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`message from Mr. Mella. Nonetheless this does not stop her fi'om misrepresenting this hearsay
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`as fact to the Board. Nor did Opposer’s current counsel make any effort to obtain or submit to
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`the TTAB an affidavit or declaration from Former Counsel or Mr. Mella in attempt to provide
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`some indicia of reliability for this purported voice message, or the claims that Applicant was
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`“aware” of this proceeding. Further, Opposer’s current counsel represents that this hearsay
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`within hearsay is “factual evidence” that is suppose to prove Applicant had knowledge that an
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`Opposition proceeding was to be initiated before the TTAB. Clearly such self-serving, double
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`hearsay is neither credible, reliable nor evidence upon which the Board can rely.
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`Accordingly, Applicant respectfully requests that the Board strike paragraph 2 on page 2
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`in Section I entitled “C” of the Cross Motion and Response in its entirety as well as all
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`unsupported conclusions throughout Opposer’s Cross Motion and Response referring to
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`App1icant’s purported knowledge of the initiation of this proceeding. For example, on page 3,
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`Opposer asserts that “pursuant
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`to the voice message from Gordon Mella of Senforce
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`Technologies to Former Counsel, it is obvious that Applicant was aware of the potential filing of
`99
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`the Opposition proceeding...
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`Applicant respectfully requests that
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`the Board strike this
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`unsupported supposition on page 3 of the Cross Motion and Response as well because it has no
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`basis in fact or law.
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`Opposer has chosen to provide this Board with unreliable hearsay misrepresented as fact
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`in an attempt to gain a procedural advantage and avoid a proceeding on the merits.
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`11.
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`Good Cause Exists Why Default Judgment Should Not Be Entered Against
`Applicant
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`Good cause exists why default judgment should not be entered against Applicant. There
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`is no credible evidence of record establishing that Applicant’s failure to answer was the result of
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`willful or gross negligence or that Applicant had knowledge of the initiation of this Opposition
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`Proceeding. Applicant was not provided with fair notice that this opposition proceeding had
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`been initiated due to inadvertence and mistake. Furthermore, the only relief that the undersigned
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`is requesting is that Applicant be put in the position it would have been had the USPTO timely
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`acted on the Request for Pennission to Withdraw submitted by the undersigned on October 6,
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`2004; that is for the Board to re-serve Applicant directly with the Notice of Opposition and
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`permit a limited time for Applicant to answer the Notice of Opposition.
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`Significantly, Opposer in its Cross Motion and Response conveniently excludes any
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`reference to the applicable provisions of the TTAB Rules of Practice or case law on what
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`constitutes “good cause” so that the Board may fully consider the facts and apply the law.
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`Rather, Opposer’s Cross Motion and Response is chock full of unsupported conclusions that
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`Applicant has not shown “good cause”. This is so because the law does not support Opposer’s
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`position, which is a thinly veiled attempt to gain a procedural advantage by insisting that the
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`Board deny a party fair notice and a proceeding on the merits, despite the fact that both Opposer
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`and the USPTO had previously been provided with recent Contact information for Applicant.
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`Opposer deliberated omitted any reference as to the legal definition or standard of good
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`cause because it knows the facts in this case support a finding of good cause as set forth below.
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`“Good cause why default judgment should not be entered against a defendant, for failure to file a
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`timely answer to the Complaint is usually found where the Defendant shows that:
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`(1) the delay in filing an answer was not the result of willful conduct or
`gross neglect on the part of defendant;
`(2) the Plaintiff will not be substantially prejudiced by the delay; and
`(3) the Defendant has a meritorious defense to the action.
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`The showing of a meritorious defense does not require an evaluation of the
`merits of the case. All that is required is a plausible response to the
`allegations in the Complaint.
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`The determination of whether default judgment should be entered against
`a party lies within the sound discretion of the Board.
`In exercising that
`discretion, the Board must be mindful of the fact that it is the policy of the
`law to decide cases on their merits. Accordingly the Board is very
`reluctant to enter a default judgment for failure to file a timely answer,
`and tends to resolve any doubt on the matter in favor of the defendant.”
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`Trademark Trial and Appeal Board Manual ofProcedure (TBMP), Section 312.02 Setting Aside
`Notice of Default, (2nd Ed. June 2003). (Emphasis added.);1 see also Fred Hayman Beverly
`Hills, Inc. v. Jacques Bernier, Inc., 21 USPQ2d. 1556 (November 1991) (“[G]ood cause is
`usually found to have been established if the delay in the filing is not the results of willful
`conduct or gross neglect on the part of the defendant, if the delay will not result in substantial
`prejudice to the plaintiff, and if the defendant has a meritorious defense.” The Board found that
`the failure to timely file the answer was clearly due to an inadvertence on the part of applicant’s
`counsel and not the result of any willful or gross neglect”).
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`' See also Advanced Communications Design, Inc. v. Premier Retail Networks, 46 Fed. Appx. 964 (Fed Cir. Sept.
`2002)( The Court of Appeals for the Federal Circuit found that the lower court abused is discretion in refusing to set
`aside default judgment where delay in filing an answer in a patent infringement case involved unintentional
`wrongdoing. The alleged infringer’s 37 day delay in filing the answer was the result of a miscommunication
`between outgoing CEO and management. While the elements are essentially the same for a finding of good cause
`and excusable neglect, excusable neglect requires a stronger showing for relief than a mere default order.);
`Information Systems and Networks corporation, v. United States, 994 F. 2d 792 (Fed. Cir. 1993) (The Court of
`Appeals for the Federal Circuit found that in view of the lack of prejudice, the presence of a meritorious defense, as
`well as the lack of culpability, the lower court abused is discretion in refusing to grant relief from default judgment
`for excusable neglect which requires a stronger showing for relief than a mere default order where party mistakenly
`assumed that it was not required to file an answer to counterclaim).
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`In all of Opposer’s vitriolic accusations against AppIicant’s counsel and Applicant, never
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`once does it argue that the delay in filing an answer was the “result of willful conduct or gross
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`negligence” on the part of Applicant. This is so because none of the undisputed facts of record
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`give rise to a finding of “willful conduct or gross negligence” in this matter.
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`It
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`is undisputed that Applicant’s counsel submitted a Request For Permission to
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`Withdraw As Attorney of Record with the USPTO on October 6, 2004, two months prior to the
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`filing of the Notice of Opposition by Former Counsel for Opposer and threes months prior to the
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`mailing date of the Board’s Notice of Opposition on January 17, 2004. This Request for
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`Permission to Withdraw included Applicant’s current contact information.
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`It is undisputed that
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`that the request was received by the USPTO and can be found on TICKRS internal database.
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`It
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`is also undisputed that Opposer’s Former Counsel was informed in a letter dated December 18,
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`2003 that the undersigned no long represented Applicant and that letter contained all information
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`necessary to contact Senforce Technologies, App1icant’s successor-in-interest. See Exhibit A to
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`App1icant’s Motion of April 22, 2004. As stated in the Request for Permission to Withdraw, at
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`the express request of Applicant, all
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`trademark files and records were sent
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`to Senforce
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`Technologies, Inc.
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`Accordingly, App1icant’s files were closed in the firrn’s internal docket system. Due to
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`inadvertent docketing error resulting from the closed file, the undersigned failed to ensure that
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`Applicant received a copy of the Notice of Opposition and the Board’s Institution Order. As
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`soon as the undersigned discovered this, she immediately telephoned the interlocutory attorney at
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`the Board, telephoned Former Counsel for Opposer, and current counsel of record to inform
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`them that Applicant had not received timely Notice of the initiation of this proceeding and that
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`the undersigned had previously filed a Request to Withdraw. At best the facts in this case give
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`rise to inadvertence or mistake. Particularly in a situation such as here where the undersigned
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`took action before a notice to show cause or a default judgment had been issued by the Board.
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`In a case with facts analogous to those here, Paolo ’s Associates Ltd. partnership v. Bodo,
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`21 USPQ2d 1899 (September 24, 1990), counsel explained that the failure to file an answer in
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`timely fashion was inadvertent and the result of docketing errors, the Board found good cause
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`pursuant to Fed.R.Civ. P. 55(c) sufficient not to enter judgment by default. The Board noted that
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`the “courts and the Board are reluctant to grant judgments by default and tend to resolve doubt in
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`favor of setting aside default, since the law favors deciding cases on their merits.” The Board
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`also noted that “where it is the attorney rather than the party itself that is responsible for the
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`failure to properly defend an action, as is true of the instant case, courts are likely to vacate a
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`default”); see also Fred Hayman Beverly Hills,
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`Inc.
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`v. Jacques Bernier,
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`Inc., at 1556
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`(Applicant’s answer was accepted after the due date where Applicant’s counsel failed to file the
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`answer prior to taking a vacation.); Djereryian K Kashl Co., 21 USPQ2d 1613 (October 1991)
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`(The failure to act was the result of inadvertence or mistake and not willful, where respondents
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`confused a settlement and withdrawal in one case as resolving a second cancellation proceeding
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`before the Board. The Board granted respondent's motion for relief from judgment under Fed R
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`Civ. P 60(b), a more stringent standard than the good cause standard under Fed R.Civ P. 55 (c)).
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`Perhaps more importantly, Opposer can not show that it will be substantially prejudiced
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`at this early point in the proceeding. There can be no substantial prejudice to Opposer where all
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`the undersigned is requesting is that the Board re-serve App1icant’s directly so that fair notice of
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`the initiation of this proceeding is provided to Applicant. Moreover, had the USPTO timely
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`acted on the Request for Permission To Withdraw As Attorney Of Record, most likely the Board
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`would have served the Applicant directly with the Notice of Opposition. The undersigned is
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`simply requesting that Applicant be put in the position it would have been had the undersigned
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`timely forwarded the Notice directly to Applicant or had the USPTO timely taken action on the
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`Request for Permission to Withdraw.
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`At most Opposer may have to endure a brief delay while Applicant is provided fair
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`notice, which is consistent with the Board’s policy to decide cases on their merits. See Regatta
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`Sport Ltd.
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`v. Telux—Pz'oneer Inc., 20USPQ2d 1154 (April 199l)(The Board found that
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`“[c]oncededly, some delay will result if respondent’s motion is granted, yet delay alone is not a
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`sufficient basis for establishing prejudice. Respondent successfully demonstrated that its failure
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`to file an answer was the result of excusable neglect, where Respondent “demonstrated that its
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`default was not willful and that it has a meritorious defense and petitioner has failed to show that
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`it would be prejudiced...” ).
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`Should the Board grant Applicant’s motion, and re-serve the Notice of Opposition on
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`Applicant directly, Opposer will be in exactly the same position it was when it filed the Notice
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`Of Opposition.
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`That
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`is to say Opposer will not have incurred any additional costs or
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`expenditures of resources in discovery or in preparing and briefing its case.
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`In balancing the harms to the parties, the harm to Applicant of being denied valuable
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`trademark rights due to inadvertence and mistake, far outweighs any perceived harm to Opposer.
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`Simply put Opposer will not be “substantially prejudiced.”
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`Furthermore, Applicant has a meritorious defense in this proceeding. Thus, the facts in
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`this matter satisfy the third element for a finding of good cause. Applicant’s defense will show
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`that the goods are unrelated, move in different channels of trade, are sold to separate classes of
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`purchasers and perform entirely different fimctions. Additionally, Applicant’s goods are sold to
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`sophisticated end-users. See Applicant’s Response submitted to USPTO on October 22, 2001,
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`pages 4-6. App1icant’s software is specifically used to enable wireless short range radio
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`connectivity.
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`Id.
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`It is sold to highly-skilled software developers that use Bluetoothm protocol
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`for wireless communications that develop wireless devices. Id.
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`On the other hand, Opposer’s software is a program that is used by IT support personnel
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`help manage intelligent computing devices, such as kiosks, bar code readers, point-of-sale
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`machines, set
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`top boxes, etc. Opposer’s software enters commerce far downstream from
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`Applicant’s product. The fact that Applicant has a meritorious defense is fiirther buttressed by
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`the fact
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`that Opposer’s registration was not cited by the Examining Attorney during the
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`examination phase of review.
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`Id. Other registrations were cited, but clearly the Examining
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`Attorney did not find a likelihood of confusion existed between App1icant’s mark and Opposer’s
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`registration.
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`Additionally, the Board has found that filing an answer is sufficient to show a meritorious
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`defense. Here the undersigned is requesting that the Board re-serve Applicant directly and allow
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`it a limited time to file an answer. See Identicon Corporation v. Williams, 195 USPQ 447
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`(March 1977)( Applicant’s answer filed in response to Notice of Default accepted as sufficient.)
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`Furthermore,
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`the Board’s stated practice is to be “very reluctant” to enter default
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`judgment and “tends to resolve any doubt on the matter in favor of the defendant." The facts and
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`the law in this matter warrant a find of good cause sufficient so that default judgment should not
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`be entered against Applicant.
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`Applicant submits that certain of Opposer’s arguments could possible make some sense
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`had Applicant’s counsel not previously notified both Opposer and the USPTO that
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`the
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`undersigned had submitted a Request
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`to Withdraw and provided all necessary contact
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`information for Applicant; and if the facts on record did not support a finding of inadvertence or
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`mistake. The fact remain, Opposer has not and can not show willfulness or substantial prejudice.
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`Furthermore, Applicant has a meritorious defense. Therefore, to grant Opposer’s Cross Motion
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`would be contrary to Board precedent and the law, which favors a decision on the merits.
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`Nonetheless, Opposer needlessly refers to Applicant’s Motion of April 22, 2004 as “frivilous.”
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`See pages 6 and 7 of Cross Motion and Response. Opposer is merely trying to redirect the
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`Board’s attention from the fact that it can not establish any of the elements set forth above, and
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`therefore, blithely tosses out harsh accusations, hearsay misrepresented as fact, speculation and
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`unsupported conclusions. Clearly the facts in this case support a finding of good cause.
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`III.
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`Conclusion
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`The undersigned respectfully requests that the Board re-serve Applicant directly with the
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`Notice of Opposition and permit Applicant a limited time to answer the Notice of Opposition.
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`Applicant should not be prejudice by inadvertence or mistake.
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`Date:
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`1’-r"l 0%
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`Respectfully submitted,
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`Karen
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`. McGee
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`BARNES & THORNBURG
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`750 17th Street, N.W., 9th Floor
`Washington, D.C. 20006
`(202) 289-1313
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`CERTIFICATE OF MAILING
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`I hereby certify that a copy of this Reply To Opposer’s Cross Motion And Response
`To Applicant’s Motion To Show Good Cause Why Default Judgment Should Not Be
`Entered being deposited with the United States Postal Service, as first-class mail, postage
`prepaid, in an envelope addressed to Commissioner for Trademarks, Box TTAB-NO FEE, 2900
`Crystal Drive, Arlington, Virginia 22202-3514 on this 17"‘ day of May, 2004.
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`fia/and tong
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`Karen A. McGee
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing Reply To Opposer’s Cross Motion And
`Response To Applicant’s Motion To Show Good Cause Why Default Judgment Should Not
`Be Entered was served on:
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`Patricia L. Cotton, Esq.
`Pillsbury Winthrop
`2475 Hanover Street
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`Palo Alto, CA 94304-1114
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`Mark J. Itri, Esq.
`McDermott, Will & Emery
`18191 Von Karman Avenue, Suite 400
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`Irvine, CA 92612-7107
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`Mr. Allan Thompson
`Chief Executive Officer
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`Senforce Technology, Inc.
`266 West Center Street
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`Orem, UT 84057
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`on this 17th day of May 2004, by first class mail, postage prepaid.
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` _
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`Karen A. McGee
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`DCDSOI KXM 79672v]
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`11