Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA284425
`ESTTA Tracking number:
`05/15/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91164718
`Defendant
`Novosoft Inc.
`DMITRI I. DUBOGRAEV
`INTERNATIONAL LEGAL COUNSELS PC
`901 NORTH PITT STREET, SUITE 325
`ALEXANDRIA, VA 22314
`UNITED STATES
`Other Motions/Papers
`Dmitri Dubograev
`info@legal-counsels.com
`/dd/
`05/15/2009
`Novosoft_Applicant's Opposition_5-15-2009.pdf ( 43 pages )(1058164 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Novosoft, L.L.C.,
`
`Opp0ser/Plaintiff,
`
`v.
`
`Novosoft, Inc.,
`
`ApplicantlDefendant
`
`\_/\—/\..r'\-—r"-.J\.J\&\&\&‘\—/
`
`I
`
`Opposition No. 91164718
`Serial No. 78281736
`
`OPPOSER’S RESPONSE TO APPLlCANT’S MOTION FOR SUMMARY JUDGMENT
`
`APPLICANT’S OPPOSITION TO
`
`Dated: May 15, 2009
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`

`
`Table of Contents
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`I.
`
`11.
`
`Introduction ........................................................................................................... ..3
`
`Material Facts Which Are Not In Genuine Dispute............................................... ..5
`
`III.
`
`Argument ............................................................................................................... ..8
`
`A.
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`B.
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`C.
`
`D.
`
`E.
`
`F.
`
`Standard of review ..................................................................................... ..8
`
`Because the HANDY BACKUP software product was developed and
`supported by Applicant and the HANDY BACKUP Mark was first used
`by Applicant, Applicant owns the product and the Mark.
`........................ ..9
`
`Opposer did not control the Russian Branch of Applicant through
`Mr. Vaschenko or in any other manner. .................................................. ..l l
`
`Mr. Vaschenko’s efforts related to the HANDY BACKUP product
`inured to the benefit of Applicant, not Opposer. ..................................... ..l4
`
`The purported contract between Opposer and Applicant was
`patently illegal self-dealing by Mr. Vaschenko. ...................................... ..l 9
`
`0pposer’s efforts to have this matter resolved based on speculation
`and alleged lack of witness credibility are inconsequential because
`there is no bona fide dispute over the dispositive material facts. ............ ..22
`
`1V.
`
`Conclusion ........................................................................................................... ..23
`
`2
`
`Applicant Novosofi. lnc.‘s Opposition
`Novosofi‘ LLC v. Novosoft, Inc. Opp. No. 9| 164718
`
`

`
`Pursuant to 37 C.F.R. § 2.127, Applicant Novosoft, Inc. hereby files its reply to
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`Opposer’s response to Applicant’s motion for summary judgment and its response to Opposer‘s
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`counter-motion for summary judgment. This submission is supported by the Declaration of
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`Kevin Garden, the exhibits attached thereto, and the prior exhibits submitted in this proceeding.
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`1.
`
`Introduction
`
`In the present matter, Opposer Novosoft L.L.C. has opposed Applicant Novosoft lnc.’s
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`application for registration of the HANDY BACKUP Mark. Opposer acknowledges that
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`Applicant made first use of that Mark in the marketplace.‘ However, Opposer claims that, at the
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`time Applicant was using the Mark, Opposer controlled Applicant with respect to the nature and
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`quality of the product sold under that Mark. Therefore, Opposer argues, Applicant was merely a
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`‘Related Company’ and Applicant’s first use should inure to the benefit of Opposer? However,
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`the supported and undisputed material facts in this case, most of which are taken directly from
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`Opposer’s opposition, definitively show that Applicant was the original owner of the Mark and
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`never relinquished that ownership or any control over the nature and quality of the product at
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`issue.
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`Opposer’s claim that it controlled the nature and quality of the product is based on the
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`alleged individual efforts of 0pposer’s owner, Mr. Vladimir Vaschenko, while working with the
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`Russian Branch of the Applicant. However, Mr. Vaschenl-;o’s work for Applicant’s Russian
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`Branch was made within the scope of his duties to Applicant and he was compensated for those
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`I Opp. at 1 (ll 1)(the HANDY BACKUP product was first sold “using Applicant’s name
`on the website”). The standard test for trademark ownership is priority of use. Allard
`Enterprises. Inc. v. Advanced Programming Rea, Inc. , 146 F.3d 350, 358 (6th Cir. 1998).
`
`2 Opp. at 2 (11 2)(it is “Opposer’s contention that Opposer owns the HANDY BACKUP
`Mark because Applicant was a ‘Related Company’ of Opposer at the time Applicant claims it
`initially used the Mark and through June 2003, such that any use of the Mark by Applicant at that
`time inured to the benefit of Opposer”).
`
`3
`
`Applicant Novosoft. lnc.‘s Opposition
`Novosoft LLC v.
`.-Vovosqfi‘, lnc., Opp. N0. 9] |647l8
`
`

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`efforts.3 As such, those efforts were for the benefit of the Applicant. Accordingly, those efforts
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`did not inure to the benefit of Opposer, nor did they render Applicant as a mere ‘Related
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`Company’ to Opposer.
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`Opposer has now asserted that the contract Mr. Vaschenko had attempted to complete on
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`its behalf to sell the rights to the use of the software program at issue was done simply to
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`“conf1nn" Opposer’s alleged pre-existing rights to use that software program. Opp. at 18.
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`Opposer does not claim that this alleged contract in and of itself created ownership of those use
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`rights, nor did the contract refer to the rights to the Mark itself or any goodwill.
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`Id. As
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`demonstrated herein, because there was no prior ownership of these use rights by Opposer, the
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`alleged contract “confirms” nothing. Moreover, the alleged contract cannot stand on its own
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`because it consisted of patent self-dealing by Mr. Vaschenko.
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`There is no genuine dispute as to these material facts set out above and in more detail
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`below.
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`In addition, the legal implications of these facts cannot be overcome by Opposer, no
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`matter how much it relies on inferences, speculation and unsupported factual assertions. The
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`undisputed facts show that Opp0ser’s claim to own the Mark is not and cannot be true, and that
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`Applicant is the owner of the Mark at issue. For that reason, summary judgment must be issued
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`in Applicant’s favor and Opposer’s request for summary judgment must be denied.
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`3 The only exception is Mr. Vaschenko’s attempt to sell the Applicant‘s rights in the
`HANDY BACKUP software to himself as the sole owner of Opposer. As explained below, Mr.
`Vaschenko’s conduct in this regard was clearly outside the scope of his duties and obligations to
`Applicant and any such purported sale was legally void.
`
`4
`
`Applicant Novosoft. lnc.'s Opposition
`Novosofl LLC v. Novosofl. Inca. Opp. N0. 91 [647] 8
`
`

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`II.
`
`1.
`
`Material Facts Which Are Not In Genuine Dispute.
`
`The two entities involved in this matter are Novosoft, Inc. (Applicant) and Novosofi
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`L.L.C. (Opposer).
`
`2.
`
`Applicant “essentially consisted of two parts,” the United States-based Applicant and its
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`Russian Branch. Opp. at 6 (1l 7)(“Applicant admitted that it essentially consisted of two parts.
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`On[e] part consisting of the small U.S.-based operations [] and the other part being the Russian
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`branch. .
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`. .”); Exh. A-2 (1[ 1)(Applicant Novosoft Inc. authorized Mr. Vaschenko to register
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`Applicant’s Russian Branch in Russia).4
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`3.
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`Mr. Vladimir Vaschenko “was responsible for setting up all aspects of the Russian
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`branch” of Applicant. Opp. at 6 (1l 8); Exh. A-2 (11 l)(Applicant issued a Power of Attorney to
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`Mr. Vaschenko for “the registration of Novosoft Inc. (the ‘Branch’) as a Branch of the
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`Company” in Russia); Declaration of Vladimir Vaschenko In Support Of 0pposer’s Response
`
`To Applicant’s Motion for Summary Judgment at 1] 4 (“I was responsible for setting up the
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`Russian Branch of Applicant").
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`4.
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`The HANDY BACKUP Mark at issue relates to a computer software product which was
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`produced by Applicant at its Russian Branch. Opp. at 6 (ll 7')(the Russian Branch of Applicant
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`“performed all the software programming, product development, support and project
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`management” for the HANDY BACKUP product).
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`5.
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`Applicant made first use of the HANDY BACKUP Mark. Opp. at I (ll l)(the computer
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`software product was first sold “using Applicant’s name on the website. .
`
`. .”).
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`6.
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`Philip Brenan is the 100% owner of all ofthe Applicant. Opp. at 5 (11 6).
`
`4 Exhibits A-1 through A-27 were attached to the Declaration of Albert Carrion In
`Support Of Opposer’s Motion [sic] Response To Applicant’s Motion For Summary Judgment.
`Applicant does not agree that all of these documents have been properly authenticated as proper
`evidence in this proceeding.
`
`5
`
`Applicant Novosofi. lncfs Opposition
`Novosoji LL(‘ v. Novosoft, Inc. Opp. No. 91 l647l8
`
`

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`7.
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`Mr. Vaschenko’s formal relationship to the Applicant and its Russian Branch was, at
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`varying times, as an engineer-programmer, Chief Executive Officer, Vice-Director and Director
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`of Applicant’s Russian Branch. Opp. at 9 (11 l2)(“it is clear [] that Vaschenko was at one point
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`the CEO and a Director of the Russian Branch. .
`
`. ."); Exh. B-1 (attached to Declaration of Kevin
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`Garden)(resolution dated May 5, 2003 to transfer Mr. Vaschenko from the position of engineer-
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`programmer to Vice-Director of the Russian Branch of Applicant).
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`8.
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`In 1999, Mr. Vaschenko was given a Power of Attorney “to act in the name of the
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`Company [Applicant].” Opp. at 6 (11 8)(emphasis added); Exh. A-2. Mr. Vaschenko’s Power of
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`Attorney further stated that he was authorized to take actions for “the protection of the interests
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`of the Company and the Branch in any and all matters involving third parties. .
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`. .” Exh. A-2 (11
`
`3).
`
`9.
`
`The Power of Attorney issued to Mr. Vaschenko was valid for one year, from June 23,
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`1999 to June 22, 2000. Exh. A-2.
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`10.
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`Applicant paid Mr. Vaschenko compensation for his efforts related to the Russian
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`Branch. Opp. at 7 (11 9)(“Vaschenko’s 90% [sent to him by Applicant] went to pay the Russian
`
`staff (including programmers), rent, all other business expenses, and the rest of it he was entitled
`
`to keep”).
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`11.
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`At the same time Mr. Vaschenko held his various positions with Applicant in its Russian
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`Branch, he also was the 100% owner of Opposer. Opp. at 5 (11 6).
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`12.
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`There is no factual evidence supporting any allegation that Mr. Vaschenko ever disclosed
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`to Applicant at this time his simultaneously held position with Opposer, much less that Opposer
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`even had been established as a legal entity.
`
`6
`
`Applicant Novosot‘t_ lnc.'s Opposition
`Novosofi LLCV. Novosofr. Ina, Opp. No. 9! I64”/l8
`
`

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`13.
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`The only reference in the record to Opposer prior to this dispute arising in 2003 is in the
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`paperwork associated with its initial corporate registration in Russia by Mr. Vaschenko. See
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`Exh. A-5.
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`14.
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`Opposer is never mentioned in any other document provided to Applicant prior to this
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`dispute arising in 2003, even though Opposer was created in 1998. Exh. A-5.
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`15.
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`On May 28, 2003, Applicant issued a Power of Attorney to Mr. Anton Zaruev in his
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`individual capacity. Exh. A-13.
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`16.
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`On the very next day, Mr. Vaschenko was appointed as the Acting Director of
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`Applicant’s Russian Branch for the term of May 29, 2003—September 1, 2003, during the
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`Director’s leave of absence. Exh. B-2.
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`17.
`
`On his very first day as Acting Director of Applicant’s Russian Branch, and purporting to
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`act on behalf of Applicant and pursuant to a sub-authorization of the Power of Attorney issued to
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`the Director, Mr. Vaschenko signed a contract dated May 29, 2003 to transfer Applicant’s
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`ownership of the software program sold under the HANDY BACKUP Mark to his own
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`company, Opposer. Exh. A-14: Opp. at 17 (1111 25-26).
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`18.
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`Even though the software program was producing monthly revenue payments in excess
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`of $1 5,000, with some payments as high as $35,8543.40, Mr. Vaschenko set the total price for
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`the ownership of the software program at a one-time payment of only $2,000. Opp. at 16 (11 23);
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`18 at fn. 5.
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`19.
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`The contract attempted to sell the rights to the use of the sofiware program sold under the
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`HANDY BACKUP Mark and made no reference to trademark rights. Exh. A-14.
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`20.
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`Mr. Vaschenko claims that, at the time he sold Applicant’s rights to the HANDY
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`BACKUP software to Opposer, he believed that Opposer already owned the rights to the use of
`
`7
`
`Applicant Novosoll. Incfs Opposition
`Novosoft LLC v. Novosofl. Ina. Opp. No. 91 164718
`
`

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`the software program at issue but he prepared the contract in order to “confinn” the rights he
`
`believed Opposer already held. Opp. at 18 (11 26).
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`Ill.
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`Argument
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`A.
`
`Standard of review
`
`“A court must grant summary judgment ‘if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with affidavits, if any, show that there is no
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`genuine issue as to any material fact.” Carpenteri v. Marini, 2006 WL 2349586 at *1 (D. Conn.
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`2006), quoting Miner v. City ofGlen Falls, 999 F.2d 655, 661 (2d Cir. 1993). “A dispute
`
`regarding a material fact is genuine ‘if the evidence is such that a reasonable jury could return a
`113
`
`verdict for the nonmoving party.
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`Carpenteri, id. at *1, quoting Aldrich v. Randolph Cent. Sch.
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`Dist, 963 F .2d 520, 523 (2d Cir. 1992), cert. denied, 506 U.S. 965 (1992), quoting Anderson v.
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`Liberty Lobby, Inc-., 477 U.S. 242, 248 (1986).
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`If the nonmoving party, after being provided discovery, has failed to make a sufficient
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`showing of specific facts on an essential issue, then summary judgment is appropriate.
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`Carpenteri, id. at *1, quoting Celotex Corp. v. Catrett, 477 US. 317, 323 (1986). Furthermore.
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`the nonmoving party cannot escape summary judgment by raising mere speculation or conjecture
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`and “it may not rely upon conclusory statements or arguments that the affidavits in support of the
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`motion for summary judgment are not credible.” Carpenteri, id. at *2. citing Western World Ins.
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`Co. v. Stack Oil, Inc, 922 F.2d 1 18, 121 (2d Cir. 1990), Ying Jing Gan v. City ofNew York, 996
`
`F.2d 522, 532 (2d Cir. 1993); LeBlanc v. GreatAmerican Insurance C0,, 6 F.3d 836, 842 (Isl
`
`Cir. 1993)(“’summary judgment may be appropriate if the nonmoving party rests merely upon
`
`conclusory allegations, improbable inferences, and unsupported speculation” and “to defeat a
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`properly supported motion for summary judgment, the nonmoving party must establish a trial-
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`8
`
`Applicant Novosofl. lncfs Opposition
`Novosofr LLC v. Novosofi, Inc-.. Opp. No. 9| 164718
`
`

`
`worthy issue by presenting ‘enough competent evidence to enable a finding favorable to the
`1”
`nomnoving party )(citations omitted). Furthermore, “[a] party must bring to the Court’s
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`attention some affirmative indication that his version of relevant events is not fanciful.”
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`Conaway v. Smith, 853 F.3d 789, 793 (10th Cir. 1988)(employee’s allegation that he was given
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`an employee handbook when hired was insufficient to preclude summary judgment where he
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`failed to produce the manual, describe its contents, or allege that it influenced his decision to
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`accept the position). As shown by Crmarway, simply making a factual assertion without
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`underlying factual support cannot be allowed as a tactic to prevent summary judgment.
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`In the present case, there are no genuine issues of material fact related to Applicant’s
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`motion for summary judgment, and Opposer cannot escape summary judgment through its
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`conclusory and unsupported statements which are insufficient to rebut the evidence.
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`B.
`
`Because the HANDY BACKUP software product was developed and
`supported by Applicant and the HANDY BACKUP Mark was first
`used by Applicant, Applicant owns the product and the Mark.
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`As Opposer admits, Applicant made first use of the HANDY BACKUP Mark. Opp. at 1
`
`(the HANDY BACKUP computer sofiware product was first sold “using Applicant's name on
`
`the website. .
`
`. .”). As Opposer also admits, the “other part” of Applicant, its Russian Branch,
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`“performed all the software programming, product development, support and project
`
`management” related to the HANDY BACKUP product. Opp. at 6 (1l 7); see Opp. at 19 (ii 27).
`
`As shown below, these two material undisputed factsjustify summary judgment in favor of
`
`Applicant. Because Applicant was and remains the owner of the Mark, the ‘Related Company’
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`principle does not apply. 15 U.S.C. § 1127 (a ‘Related Company’ is one whose “use of a mark is
`
`controlled by the owner of the mark”)(emphasis added).
`
`9
`
`Applicant Novosofi. lnc.‘s Opposition
`Novosofi LLC' v. Novosojl‘, Irrc.. Opp. No. 91 E64718
`
`

`
`Opposer asserts that it, not Applicant, was the initial owner of the product and Mark and
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`that Applicant was merely a ‘Related Company’ through which Opposer controlled the nature
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`and quality of the product. Because Applicant through its Russian Branch developed the product
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`at issue, supported the product at issue and made first use of the Mark, there is no basis
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`whatsoever for Opposer to claim that it ever was the owner of the product or the Mark. As the
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`above-conceded facts show, Applicant was clearly the owner of the product and the Mark when
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`it was first developed. Because the undisputed evidence shows that Applicant owns the product
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`and the Mark, there is no basis for Opposer to invoke the ‘Related Company’ doctrine.
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`Notwithstanding these undisputed facts, Opposer makes the conclusory and unsupported
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`statement that the software program (not the Mark) was developed “[a]t the initiative of
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`Opposer,” (Opp. at 1)(emphasis added). However, this allegation that Opposer “initiated” the
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`development of the product at issue is irrelevant because ownership of the Mark is determined
`
`not by who invented or initiated a product sold under a Mark, but by who used the Mark or
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`controlled the product. Empresa Cubana del Tabaco v. Culbro Corp, 399 F.3d 462, 468 (2d
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`Cir. 2005)(the standard test for trademark ownership is priority of use); Carpenteri, id. at *5
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`(“[i]nvention itself does not give rise to trademark rights”).
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`Furthermore, the material facts to which Opposer agrees show that Opposer did not
`
`develop the product at issue. As Opposer admits, the Applicant’s Russian Branch was set up by
`
`Mr. Vaschenko not Opposer,5 and that Applicant’s Russian Branch, not Opposer, developed the
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`HANDY BACKUP product. Opp. at 6 (11 7)(the Russian Branch was the “other part” of
`
`Applicant and the Russian Branch of Applicant “performed all the software programming,
`
`product development, support and project management” for the HANDY BACKUP product).
`
`5 Opp. at 6 (‘H 8)(“\/aschenko was responsible for setting up all aspects of the Russian
`branch”).
`
`10
`
`Applicant Novosoft. lnc."s Opposition
`Novosofr LLC v. Novomfi. Ina, Opp. No. 9| I647] 8
`
`

`
`No evidence has been produced by Opposer that it, Opposer, was in any way involved with the
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`setting up of Applicant’s Russian Branch or initiating development of the product.
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`As shown below, even ifthe undisputed facts as to Applicant owning the product and
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`the Mark from the outset do not resolve this matter, Opposer cannot show that it controlled the
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`nature and quality of the product. For this additional reason, Opposer cannot invoke the ‘Related
`
`Company’ doctrine to overcome the admitted fact that Applicant made first use of the Mark.‘
`
`C.
`
`Opposer did not control the Russian Branch of Applicant through Mr.
`Vaschenko or in any other manner.
`
`Opposer asserts numerous times in its memorandum that Opposer (i.e., Novosoft LLC)
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`“controlled” the nature and quality of the HANDY BACKUP product because Opposer
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`“controlled” the Russian Branch of Applicant. See Opp. at 6 (ll 7). However, while Opposer
`
`makes allegations as to Mr. Vaschenko’s involvement with the Applicant, Opposer provides no
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`evidence to support its conclusory statement that Opposer itself was involved with Applicant.
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`There are no contemporaneous contracts, license agreements, documents, emails or declarations
`
`that in any way identify Opposer and support the claim that Opposer itself had any control over
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`the Russian Branch of Applicant. See Great Seats Ltd. v. Great Seats, Inc, 84 U.S.P.Q.2d 1235,
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`1243 (T.T.A.B. 200'/')(“[t]he record is devoid of evidence sufficient to establish that [a
`
`corporation], itself, controlled [another] corporation’s use of the mark with respect to the nature
`
`and quality of services rendered under the mark").
`
`6The ‘Related Company’ theory can only be invoked by a party which agrees first use
`was made by the alleged ‘Related Company.‘ 15 U.S.C. § 1055. As between conflicting
`claimants to the right to use the same Mark, the general rule is that “priority of appropriation
`determines the question.” United Drug Co. v. Theodore Rectanus Ca, 248 U.S. 90, 100, 39 S.Ct.
`48, 51, 63 L.Ed.141(1918).
`
`1 1
`
`Applicant Novosofi. lncfs Opposition
`Novosofl LLC v. Novosofl‘, Inc. Opp. No. 91164718
`
`

`
`In addition, while TMEP § 1201 .03(d) states that formal agreements are not always
`
`needed to show control and that the key is whether sufficient control is shown, Opposer has
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`presented no supported facts that show any control by Opposer whatsoever over Applicant.
`
`While Estate 0fC0ll—M0nge 12. Inner Peace Movement, 524 F.3d 1341, 1348 (D.C. Cir. 2008)
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`also confirmed that formal corporate control was not necessary for purposes of the related
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`companies doctrine, some showing of control is needed.
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`In Estate of Coll—Monge_, the issue was
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`whether an individual had controlled a Mark and the factual evidence submitted in the case
`
`indicated that he had through shutting down the Board of Directors and controlling
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`merchandizing,
`
`Id.
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`In Nestle Co. v. Na.s'h—FinC/1 C0., 4 U.S. P.Q.2d 1085 (T.T.A.B. 1987), the Board noted
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`that no written license existed, but that the party showed control by having training programs,
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`ongoing periodic seminars, providing a training manual and merchandising bulletins, providing
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`over 80% of the raw materials to the other parties and assisting in recommending food suppliers.
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`In stark contract, in the present case Opposer has provided no factual evidence showing that
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`Opposer (as opposed to Mr. Vaschenko) controlled Applicant’s Russian Branch. Thus, Opposer
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`has not shown that it controlled Applicant even in the absence of formal written agreements. An
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`unsupported claim that Opposer controlled Applicant is not sufficient to prevent summary
`
`judgment after Opposer has been given discovery on this issue? As shown by the facts,
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`Opposer’s claim to have controlled Applicant is fanciful. Conaway, 853 F.3d at 793.
`
`7For example, Opposer states in its Opposition that the HANDY BACKUP software
`product (not the Mark) was “developed in Russia by Opposer in the context of the parties
`programming services relationship." Opp. at 7 (11 9). However, the citation which Opposer
`provides in an effort to support this fact is to Opposer’s own statements made in response to an
`interrogatory.
`Id. The bald assertion by Opposer that it actually “developed” the HANDY
`BACKUP product is entirely unsupported by any evidence. As such, this bald assertion cannot
`create a genuine issue of material fact that prevents summary judgment. Carpenteri, id. at *1 (if
`
`12
`
`Applicant Novosolt. lncfs Opposition
`Novosq/t LLC v. Novosofl‘, Ina, Opp. No. 91 I64"/18
`
`

`
`Opposer also alleges that there was a “relationship between Opposer and Applicant
`
`between January 2002 and June 2003,” but provides no specific facts as to any relationship.
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`Opp. at 2; see also Declaration of Vladimir Vaschenko In Support Of Opposer’s Response To
`
`Applicant’s Motion for Summary Judgment at '1] 4 (“Opposer, with my efforts, set up the
`
`relationship with Applicant .
`
`.
`
`. “). Opposer also baldly asserts that Mr. Brenan “agreed to form
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`Opposer” along with Mr. Vaschenko. Opp. at 1
`
`(‘ll 1). No evidence at all is provided to support
`
`this bald assertion. Lacking any actual facts that demonstrate a relationship between Opposer
`
`and Applicant, Opposer resorts to pure conjecture by asserting that the relationship between
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`Philip Brenan, Mr. Vaschenko and TAS in 1998 provides some insight into the alleged
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`relationship between Opposer and Applicant. Opp. at 4-5 (fl 5). However, these are very
`
`different situations involving different entities. Contrary to Opposer’s suggestion, Applicant and
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`Mr. Brenan are not the same entities, nor are Opposer and Mr. Vaschenko. Thus, Opposer"s
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`completely unsupported conjecture that Mr. Brenan’s and Mr. Vaschenko’s earlier relationship
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`was the same as the relationship between Applicant and Opposer is of no consequence because it
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`lacks any factual support.
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`Other than these bald assertions, Opposer provides no factual evidence proving any such
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`alleged “relationship” between these two legal entities existed, much less what the terms of the
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`alleged “relationship” were. Not one single contemporaneous document in the record shows any
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`“relationship” between Applicant and Opposer, much less any control by Opposer over
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`Applicant. While Opposer’s failure to provide sufficient evidence to show a genuine issue of
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`the nonmoving party, after being provided discovery, has failed to make a sufficient showing on
`an essential issue, then summary judgment is appropriate). Moreover, this unsupported assertion
`is directly rebutted by Opposer’s admission that the HANDY BACKUP software was developed
`by Applicant’s Russian Branch. Opp. at 6 (ti 7); see Opp. at 19 (11 27).
`
`13
`
`Applicant Novosoft_ lnc.’s Opposition
`Novosoft LLC v. Novasofi, Inc. Opp. N0. 91 l647|S
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`

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`material fact alone justifies summary judgment, the evidence which is in the record shows that
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`Mr. Brenan never agreed to form Opposer.
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`In fact, none of Applicant’s United States officers
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`even knew of Opposer’s existence until this dispute arose in 2003. Exhs. B-3 (at p. 100); B-4 (at
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`p. 34). While Opposer has argued about the credibility of this testimony, it has not provided any
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`evidence to rebut this testimony. Carpenteri, id. at *2 (the nonmoving party cannot escape
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`summary judgment by relying upon “conclusory statements or arguments that the affidavits in
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`support of the motion for summary judgment are not credible").
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`The fancifulness of Opposer’s claims are also demonstrated by the fact that, as Opposer
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`admits, Applicant established its Russian Branch specifically to develop and support the
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`HANDY BACKUP product. See Opp. at 6 (11 7). As such, there was no need for any other
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`Russian entity to serve in this role. Because of this fact, Opposer has not provided sufficient
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`evidence to support its fanciful claim that it even had a relationship with Applicant, much less
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`that it “controlled” Applicant.
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`D.
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`Mr. Vaschenko’s efforts related to the HANDY BACKUP product
`inured to the benefit of Applicant, not Opposer.
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`All of the efforts related to the HANDY BACKUP product upon which Opposer basis its
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`claim that it “controlled” Applicant were the efforts of Mr. Vaschenko. However, these alleged
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`efforts were undertaken by Mr. Vaschenko in his individual capacity within the scope of his
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`duties to Applicant, for which he was compensated. As such, the results of Mr. Vaschenko’s
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`actions inure to Applicant, not Mr. Vaschenko or Opposeng
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`8While Applicant disputes Opposer’s allegations as to the specific actions taken by Mr.
`Vaschenko while involved with the Russian Branch, as shown herein, those specific actions are
`irrelevant because Mr. Vaschenko’s conduct inured to the benefit of Applicant.
`In the event the
`Board disagrees, Applicant is entitled to and needs to depose Mr. Vaschenko as to this issue.
`
`14
`
`Applicant Novosofi. lncfs Opposition
`Novosofi LLC v. Novosofi‘.
`i’r1C., Opp. N0. 9] 164718
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`

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`Mr. Vaschenko’s relationship to the Applicant and its Russian Branch was as an
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`engineer-programmer, CEO, Acting Director and Director of Applicant’s Russian Branch. Opp.
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`at 9 (ll 12)(“it is clear [] that Vaschenko was at one point the CEO and a Director of the Russian
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`Branch. .
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`. .”); Exhs. B-l, B-2 (attached to Declaration of Kevin Garden).
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`In addition, Applicant
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`paid Mr. Vaschenko compensation for his efforts related to the Russian Branch. Opp. at 7
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`(“Vaschenko’s 90% [sent to him by Applicant] went to pay the Russian staff (including
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`programmers), rent, all other business expenses, and the rest of it he was entitled to keep”).9 The
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`funds which Applicant sent to Mr. Vaschenko were sent to him within the scope of his
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`relationship with Applicant for him to pay Applicant’s staff and costs, and for him to be paid out
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`of the remainder. See Opp. at 7 (ll 9). At one point in 1999, Mr. Vaschenko was even given a
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`Power of Attorney with a one—year duration “to act in the name of the Company [Applicant]” in
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`order to carry out his tasks related to Applicant. Opp. at 6 (ll 8)(emphasis added).
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`Because Applicant engaged individuals, such as Mr. Vaschenko, to carry out activities in
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`Russia that could not be accomplished remotely by officers in the United States, Applicant’s
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`United States office obviously did not need to have extensive knowledge of these activities.
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`However, Applicant’s hiring of managers in Russia to operate Applicant’s Russian Branch in no
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`way shows an abdication of control as asserted by Opposer. Opp. at 7-12 (1111 10-14). To the
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`contrary, it reveals a commonly used sound management strategy. Opposer now asserts that in
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`the course of Mr. Vaschenko’s efforts at Applicant’s Russian Branch, he controlled the nature
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`and quality of the HANDY BACKUP product and that the benefit of his actions should therefore
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`inure to the benefit of Opposer. Opposer is wrong.
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`9No funds were ever sent by Applicant to Opposer. All of the payments identified by
`Opposer were sent to Mr. Vaschenko. See Opp. at 7 (1l 9)(citations to record showing payments
`made to Mr. Vaschenko).
`
`] 5
`
`Applicant Novosoft. lncfs Opposition
`Novosofi‘ LLC v. Novosofi, Ina. Opp. No. 9| I64’/'18
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`

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`Mr. Vaschenko’s alleged efforts as programmer-engineer, CEO, Acting Director and
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`Director of Applicant’s Branch inured to the benefit of Applicant, which was compensating him
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`for those efforts. Smith v. Coahoma Chemical Company. Inc., 264 F.2d 916, 919 (C.C.P.A.
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`1959) involved a similar situation where an individual who was an officer of a company claimed
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`that he was responsible for controlling the quality of a certain product which was sold by the
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`company. The individual then claimed that the company for which he was working was actually
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`a ‘Related Company’ and that the use of the Mark by the company should inure to the benefit of
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`the individual officer.
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`Id. Rejecting that argument, the court in Coahoma Chem. Co. held:
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`Respondent's contention that General Insecticide Co., Inc., a New York
`corporation, and General Insecticide C0,, Inc., a North Carolina corporation, were
`his ‘related companies’ whose use inured to his benefit is without merit.
`Respondent was merely an employee and officer of the New York corporation. So
`far as the record shows, he was not, as an individual, engaged in any business, but
`the record shows that he certainly was not, as an individual, engaged in any
`business in connection with which the mark was used. The goods were neither
`made by him, as an individual, nor for him, as an individual, nor were they sold
`under the mark for his account, as an individual. While he may, as an officer and
`employee of such corporation, have been individually responsible to the
`corporation for maintaining certain standards of product quality, such
`responsibility was to his employer and not to the public. The products
`manufactured and sold were», under the terms of the employment contract, the
`products of the corporation for which the corporation, and not respondent
`individually, was responsible to the purchasing public.
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`264 F.2d at 919; see Daytona Automotive Fiberglass v. Flberfab, Inc., 475 F. Supp. 33, 35-36
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`(W.[). Penn. l979)(party's averrnents as to the extensive involvement of an individual working
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`for a company in developing a product did not support the claim that those efforts inured to the
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`benefit of the individual or a different company); Smith v. Tobacco By—Products and Chemical
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`Corporation, 243 F.2d l88, I91 (C.C.P.A. l957)(“In the absence of evidence showing retention
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`of rights in the individual. it must be held that such use as has been made by the corporation
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`inures to its benefit and not to the benefit of any individual"); 2 MCCARTHY ON TRADEMARKS §
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`]6
`
`Applicant Novosofi_ lnc_'s Opposition
`Novosofl [.I.(,' v. Novosofi. lnc.. Opp. No. 91 I64’/'18
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`

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`16:36 at 16-59 (“If a corporation is using a mark, then a principal officer [] is not the ‘owner’”
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`and “[o]wnership as between an employer and employee will depend on who first used the mark
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`and who the mark identifies”).
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`O