TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`FORT JAMES OPERATING
`COMPANY and GEORGIA-PACIFIC
`CORPORATION,
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`Opposers,
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`v.
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`S
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`1 L ' P 1,
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`W" °“‘S 3“
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`Applicant.
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`)
`)
`)
`)
`)
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`)
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`§
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`)
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`Serial No. 78/301,863
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`Mark: BRAWNY
`
`Opposition No. 91 165601
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`OPPOSITION TO APPLICANT’S
`MOTION TO SUSPEND PROCEEDINGS
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`mmmummmuumumumummum
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`08-24-2005
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`“-5- "“°"*& TM°'c/TM Man Rcntot. #57
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`For the reasons set forth below, the Board should deny Samuel Louis Pau1’s (“Pau1”)
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`Motion to Suspend this opposition proceeding.
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`Argument & Citation of Authorities
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`Applicant Paul has moved to suspend the instant opposition proceeding (the “Instant
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`Opposition”), based on the actions of non-Qarties in other matters, namely:
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`(1) a declaratory
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`judgment action filed in the United States District Court for the District of Nevada, and brought
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`by non-party NexTep, Inc. (“NexTep”); and, (2) opposition and cancellation proceedings brought
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`against non-party Brawny Plastics, Inc. in two Board proceedings ordered suspended on July 19,
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`2005 (hereinafter, the foregoing proceedings are collectively referred to as the “Non-Party
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`Proceedings”). See Motion to Suspend at 1. Opposers Fort James Operating Company and
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`Georgia-Pacific Corporation (“Georgia-Pacific”) hereby oppose the requested suspension
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`because not only is Mr. Paul not a party to the Non-Party Proceedings, but the claims asserted
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`and the nature of the goods at issue in those proceedings are also different. For these reasons, the
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`ATLLBOI 2083384.]
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`I
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`Non-Party Proceedings are not likely to have an impact on the Instant Opposition, and the Board
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`should allow the Instant Opposition to proceed.
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`A.
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`Applicant Paul is not the Party at Issue in the Non-Party Proceedings
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`On January 19, 2005, Georgia-Pacific filed Notice of Opposition (No. 91/164,081) in the
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`TTAB against Applicant Brawny Plastics Inc. (“Brawny Plastics”) in connection with Brawny
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`Plastics’
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`intent-to-use trademark application Serial No. 78/268,015. On March 24, 2005,
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`Georgia-Pacific (there, as Petitioners) filed a Petition for Cancellation (No. 92/044,396) in the
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`TTAB against Registrant Brawny Plastics’ use Registration No. 940,243. There is no dispute
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`that Georgia-Pacific’s actions were the first-filed proceedings here, nor that Brawny Plastics is a
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`non-party in the Instant Opposition. See generally Motion to Suspend. On April 14, 2005,
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`nearly three months after Georgia-Pacific’s Opposition No. 91/164,081 and nearly a month after
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`its Cancellation No. 92/044,396, NexTep filed a declaratory judgment action in the United States
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`District Court for the District of Nevada (NexTep, Inc. v. Fort James Operating Company and
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`Georgia-Pacific Corporation, Civ. No. CV-N-05-0227-ECR-RAM) (“the Nevada Action”).
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`Again, there is no dispute that NexTep is a non-party to the Instant Opposition.
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`The Board should not be swayed by Paul’s attempt,
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`in the Motion to Suspend, to
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`overlook the real distinctions between Paul and the non-parties Brawny Plastics and NexTep.
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`Applicant Paul casually refers to those three entities as related, yet completely foregoes any
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`mention of the fact that it is that very tortuous and still unproven chain-of-title that is at issue in
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`Cancellation No. 92/044,396 and the Nevada Action.
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`See,
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`e. g., Petitioners’ Motion
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`for
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`Reconsideration of July 19, 2005 Order Suspending Cancellation Proceeding, at 2-3 (“Motion for
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`Reconsideration”) (attached hereto as Exhibit A).
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`In short, Applicant Paul filed the instant
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`ATLLIBOI 2083384. I
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`:
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`trademark application Serial No. 78/301,863 (the “ ‘863 Application”) at the time of his own
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`choosing and of his own free will — Applicant Paul remains the “Last Applicant/Owner of
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`Record” of the ‘863 Application and is still listed as Applicant in the instant proceeding.
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`(See
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`printed copy of Trademark Applications and Registrations Retrieval database page for the ‘863
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`Application attached here as Exhibit B.) Applicant Paul has not sought assignment or change in
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`the chain-of-title for the instant application. Therefore, taking NexTep’s or Brawny Plastics’
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`statements in unrelated proceedings at face value in determining the instant Motion to Suspend
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`defeats proper Patent and Trademark Office (“PTO”) procedure for determining ownership. See
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`Trademark Manual of Examining Procedure at 502.01 (requiring prior notice of assignment or
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`chain-of-title when a party other than the owner of record attempts to take action with respect to
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`an application or registration). The Instant Opposition should not be suspended based on the
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`actions of the Board (or any other judicial body) in any proceeding not involving Applicant Paul
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`as the named party.
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`B.
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`The Issues Litigated in the Non-Party Proceedings are Different
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`The Non-Party Proceedings are not likely to impact the Instant Opposition because they
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`involve different issues.
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`First, the declaratory judgment procedure (at issue in the Nevada Action) “should not be
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`used to pre-empt and prejudge issues that are committed for initial decision by an administrative
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`body or special tribuna .”
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`National Marketing Consultants v. Blue Cross and Blue Shield
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`Association, No. 87 C 7161, 1987 WL 20138, *2
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`(granting motion to stay district court
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`proceedings pending the outcome of the Trademark Trial and Appeal Board’s determination of
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`likelihood of confusion) (unpublished) (copy attached hereto as Exhibit C), citing Public Service
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`ATLLIB01 20833841
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`Commission of Utah v. Wycoff Co., 344 U.S. 237, 246-247 (1952). A stay in this action would
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`deprive Petitioners of the expertise of this body and allow preemption of the Board’s considered
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`judgment on the propriety of registration, an issue expressly committed to its authority. Further,
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`Georgia-Pacific has filed a Motion to Dismiss the Nevada Action because it is premature and
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`does not present a justiciable controversy, such that NexTep cannot meet the jurisdictional
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`threshold for a declaratory judgment.
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`(See Motion and Brief attached hereto as Exhibit D). A
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`stay of the Instant Opposition would,
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`in effect, assist in attempts to preempt this Board’s
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`decision-making authority. More importantly,
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`the Nevada Action does not address the
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`application that is the subject of the Instant Opposition, but only addresses Brawny Plastics’
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`existing Registration for plastic bags and application for trash cans and whether NexTep has
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`superior rights to Georgia-Pacific with respect to those goods. The Nevada Action will not
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`address, and therefore carmot inform the Board, whether Mr. Paul’s registration of BRAWNY
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`for plastic storage bins and shelves will harm Georgia-Pacific’s rights in its BRAWNY
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`registrations.
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`Second, the issue presented to the Board by Cancellation proceeding No. 92/044,396 is
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`the ownership and validity of U.S. Registration No. 940,243 (“the Registration”). Specifically,
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`the Cancellation addresses whether Registrant Brawny Plastics committed fraud on the PTO by
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`submitting false and fraudulent statements regarding its use of the mark, thereby rendering the
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`Registration void, E The Toro Co. v. Grassmasters Inc., 2003 WL 255744, *9 (T.T.A.B. 2003)
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`(fraudulent statement
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`in renewal application constitutes fraud on the PTO sufficient
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`for
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`cancellation of registration); c_f. Stardust Inc. v. Birdsboro Knitting Mills, Inc., 119 U.S.P.Q. 270,
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`n. 5, 271 (T.T.A.B. 1958), and whether the purported assigmnent of the Registration by Brawny
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`ATLLIB01 2083384. I
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`Plastics to NexTep was ineffective.
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`§_e_e_ Auburn Farms, Inc. v. McKee Foods Corp, 1999 WL
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`588247, *6, 51 U.S.P.Q.2d 1439 (T.T.A.B. 1998) (granting petition to cancel registration; noting
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`that assignment of registration was an assignment in gross because prior cessation of use of the
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`mark resulted in an absence of goodwill).
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`Simply because the Board chose to stay the Cancellation proceeding respecting a mark
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`owned by another entity for entirely different goods, does not mean the Board should stay the
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`Instant Opposition. First, Georgia-Pacific has filed a request for reconsideration of the stay of
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`the Cancellation, as shown in Exhibit A. Second, while the Cancellation proceeding and the
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`goods covered by the Registration are at least mentioned in the Nevada Action Complaint, in
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`stark contrast, neither the instant application nor Mr. Paul’s use of the mark in connection with
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`the goods at issue here is an issue in that case.
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`In short, the Board’s analysis of why it may wish
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`to stay the Cancellation is inapplicable to the Instant Opposition.
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`Finally, as set forth i, the Instant Opposition bears scant resemblance to suspended
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`Opposition No. 91/164,081 against Applicant Brawny Plastics Inc. There, Brawny Plastics’
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`application seeks protection of the relevant mark for use in connection with trash receptacles. In
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`the Instant Opposition, the goods for which registration is sought are plastic storage bins and
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`shelves. Thus, the ultimate determination of likelihood of confusion between Georgia-Pacif1c’s
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`BRAWNY mark, on the one hand, and Brawny Plastics’ use of that mark in connection with
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`trash receptacles or Applicant Paul’s use in connection with plastic storage bins and shelves, on
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`the other, will necessarily be made by separate analysis of the relatedness of services, trade
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`charmels, potential customers, advertising media, etc.
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`ATLLIBOI 2083384. I
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`Thus, as the Non-Party Proceedings involve separate issues from the Instant Opposition
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`and are not likely to impact this proceeding, the Board should not suspend the Instant Opposition
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`on the basis of either the pending Nevada Action or the Board’s actions in other proceedings
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`before it.
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`The Goods at Issue in the Non-Party Proceedings are Different From the
`C.
`Goods Applied For in the ‘863 Application, and Unlikely to Have an Impact
`In The Instant Opposition
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`As just described, the goods at issue here and in the Non-Party Proceedings are markedly
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`different. The goods listed in the Description of Goods for Applicant Paul’s ‘863 intent-to-use
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`application are limited to: Plastic storage bins and shelves in Class 20. This description of
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`goods is at odds with the description of goods contained in Brawny Plastic, Inc.’s Registration,
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`which consists solely of “polyethylene bags” in Class 2, and which has been represented to
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`Opposers in discussions between the parties and documents produced thus far as plastic garbage
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`bags. Not only is the classification different for the goods in the ‘863 Application, but so is the
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`underlying purpose and use of the Registration’s “bags.” The goods listed in connection with the
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`‘863 Application are destined for use in connection with storage bins and shelves, while the
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`polyethylene bags goods listed in the Registration (which seem closer to the metal trash
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`receptacles identified in connection with Brawny Plastics’ ITU Serial No. 78/268,015) are end
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`use receptacles for garbage.
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`In short, the goods at issue in the Instant Opposition are designed
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`for keeping, while the goods at issue in the Non-Party Proceedings are destined for throwing
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`away. Therefore, it is highly unlikely that any adjudication relating to the trash bags used in
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`connection with goods identified in the Registration, whether in the Nevada Action or the TTAB
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`cancellation proceeding, would have any effect on the goods sought
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`for registration in
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`1 ATLLIBOI 2083384. I
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`connection with the ‘863 Application. Neither NexTep nor Brawny Plastics seek to enforce any
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`claimed rights in the ‘863 Application’s plastic storage bins and shelves (nor, based on their
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`intent-to-use status, could they).
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`In the Nevada Action particularly, NexTep seeks a declaratory
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`adjudication that any rights it may have derived from Brawny Plastics from the trash bags
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`described in the Registration are superior to those of Georgia-Pacif1c’s for trash bags and
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`receptacles. Thus, the determinations respecting the goods at issue there are unlikely to have any
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`effect on determination respecting the goods at issue in the Instant Opposition.
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`Conclusion
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`The stay of a Board proceeding pending the final determination of another proceeding is
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`solely within the discretion of the Board. E T.B.M.P. Rule 510.02(a) (emphasis added). As
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`such, and for the reasons set forth herein, Opposers request that the Board deny Applicant Paul’s
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`Motion to Suspend.
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`Respectfully Submitted,
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`Judith A. Powell
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`James H. Sullivan
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`Carrie A. Johnson
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`KILPATRICK STOCKTON LLP
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`1100 Peachtree Street
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`Atlanta, Georgia 30309
`(404) 815-6500
`Attorneys for Opposers
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`ATLLIBOI 2083384,!
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Serial No. 78/301,863
`
`Mark: BRAWNY
`
`Opposition No. 91165601
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`FORT JAMES OPERATING
`COMPANY and GEORGIA-PACIFIC
`CORPORATION,
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`Opposers.
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`v.
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`SAMUEL LOUIS PAUL,
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`Applicant.
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`CERTIFICATE OF SERVICE
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`This is to certify that I have this day served a true and correct copy of the foregoing
`OPPOSITION TO APPLICANT’S MOTION TO SUSPEND PROCEEDINGS by U.S. Mail to:
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`Michael D. Rounds
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`Matthew D. Francis
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`WATSON ROUNDS
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`5371 Kietzke Lane
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`Reno, NV 89511
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`This 24th day of August, 2005.
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`/ 1’t/W‘/\
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`Carrie A. Johnson
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`CERTIFICATE OF MAILING
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`I hereby certify that this correspondence is being deposited with the United States Postal
`Service by Express Mail Post Office to Addressee, no. EV 607733832 US,
`to: Commissioner
`of Trademarks, Attn: TTAB, P.O. Box 1451 Alexandria, VA 22313-1451 on August 24, 2005.
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`CarrieA. Johnson (‘S
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`ATLLIBOI 2083384.1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Reg. No. 940,243
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`Mark: BRAWNY
`
`Consolidated Cases:
`Cancellation No. 92044396
`Opposition No. 91164081
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`FORT JAMES OPERATING
`COMPANY and GEORGIA-PACIFIC
`CORPORATION,
`Petitioners,
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`v.
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`BRAWNY PLASTICS, INC.,
`Registrant,
`&
`NEXTEP, INC.,
`Party in Interest
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`PETITIONERS’ MOTION FOR RECONSIDERATION OF
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`JULY 19, 2005 ORDER SUSPENDING CANCELLATION PROCEEDING
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`Pursuant to 37 C.F.R. § 2.l27(b) and T.B.M.P. § 518, Fort James Operating Company
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`and Georgia—Pacific Corporation (“Petitioners”) move the Trademark Trial and Appeal
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`Board (“the Board”) to reconsider that portion of the July 19, 2005 Order (the “Order”) that
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`suspends Cancellation Proceeding No. 92044396 filed by Petitioners against Brawny
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`Plastics, Inc. (“the Cancellation Proceeding”).' Petitioners respectfully submit that the Board
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`erred2 in suspending the Cancellation Proceeding to await the outcome ofNextep, Inc. v.
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`Georgia-Pacific Corporation & Fort James Operating Company, CV-N-05-0227-ECR-RAM,
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`a declaratory judgment action filed in the United States District Court for the District of Nevada
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`The Board, of its own motion, consolidated the Cancellation Proceeding with Opposition 91164081 (the
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`“Opposition”). Order at 6-7. If the Board concludes that a postponement of any portion of a consolidated
`proceeding requires a stay of the "entire consolidated proceedings, then Petitioners request the Board to reconsider
`and reverse its order of consolidation as well.
`2
`Reconsideration or modification of an order is appropriate where it appears that, based upon the facts
`before it and the applicable law, the Board’s decision or order was erroneous. T.B.M.P. § 518.
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`ATLLIBOI 20721501
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`(“the Nextep DJ Action”), because the Nextep DJ Action is not likely to have a bearing on the
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`Cancellation Proceeding.
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`Argument
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`The Board suspended this matter on the grounds that disposition by the district court
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`“will have a direct bearing on the issues raised in this consolidated proceeding.” Order at 8.
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`While Petitioners are not seeking reconsideration of this conclusion as to the issues in the
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`Opposition, there is no basis for this conclusion respecting the issue in the Cancellation
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`Proceeding.
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`This matter does not presenta typical suspension scenario, in which both the Board
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`and a district court are examining likelihood of confusion. Rather, the Cancellation
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`Proceeding does not at all involve, and is in no way impacted by, any determination on
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`likelihood of confusion.
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`The Cancellation Proceeding is based upon two grounds that address Brawny
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`Plastics’ actions: (1) Brawny Plastics committed fraud on the United States Patent and
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`Trademark Office (“USPTO”) by making false statements regarding its use of the mark that
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`is the subject of U.S. Registration No. 0940243 (“the ‘940 Registration”); and (2) Brawny
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`Plastics’ conveyance of the ‘940 Registration to Nextep was a sham transaction, devoid of
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`any goodwill in the business connected to the mark.
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`In stark contrast, likelihood of confirsion is the primary issue in the Nextep DJ Action,
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`in which Nextep seeks declarations that: a) there is no likelihood of confusion between its
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`BRAWNY mark and Petitioners’ BRAWNY mark; and b) Nextep’s rights are superior to
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`ATLLIBOI 20721501
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`.
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`those of Petitioners. §_e§ DJ Action Complaint Prayer for Relief. Brawny Plastics is not a
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`party to the Nextep DJ Action.
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`Since whether there is a likelihood of confusion is irrelevant to cancellation of the
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`‘940 Registration due to Brawny Plastics’ fi'aud or abandonment, the District Court’s
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`declaration on the first issue cannot possibly have a bearing on the Cancellation Proceeding.
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`The District Court’s declaration on the second issue is also not likely to have any bearing
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`here, as there are two possible outcomes in the District Court that would not at all inform the
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`Board’s deliberations.
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`First, the District Court could find in favor of Nextep that: a) there is no likelihood of
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`confusion as the marks are used and b) Nextep’s rights are superior to Georgia-Pacific’s
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`because Nextep’s use of BRAWNY for polyethylene bags predates any use Georgia-Pacific
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`may have made on polyethylene bags. These findings, having to do only with use of the
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`mark, would neither relate to nor have any bearing on the validity of the BRAWNY
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`registration.
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`Second, the District Court could find against Nextep, determining that a) there is a
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`likelihood of confusion as the marks are used; and b) Nextep improperly acquired an invalid
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`registration and therefore cannot claim any superior rights. It might appear that this finding
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`would assist the Board in addressing the Cancellation Proceeding. It will not, however,
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`because Brawny Plastics, which is a proper party in the Cancellation, is not a party to
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`the Nextep DJ Action and will likely claim it is not bound by the Nevada District Court
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`findings.
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`ATLLBOI 20721502
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`Accordingly, if the Cancellation Proceeding remains suspended, Petitioners will be
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`wrongfully delayed in obtaining a ruling from the Board, and the Board will await a decision
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`that likely will not assist it. On the other hand, a Board decision on the cancellation issues
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`could have a profound impact on the likelihood of confusion issue, Q if Brawny Plastics did
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`not have a valid registration to assign to Nextep, then that registration cannot give Nextep
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`any basis for believing it could use a BRAWNY mark on consumer goods without causing
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`confusion. Because the issue presented to the Board involves the actions of Brawny Plastics
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`that predate the alleged assignment to Nextep, the Board’s determination on the propriety of
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`Brawny Plastics’ actions before Nextep was ever involved will assist the District Court,
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`rather than the District Court’s decision on infringement by Nextep informing the Board.
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`However, without a ruling from the Board, Petitioners will be required to expend substantial
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`resources unnecessarily to litigate in the DJ Action issues that never ripen if Nextep did not
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`properly acquire a valid registration.
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`Conclusion
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`The Board has the authority to “determine and decide the respective rights of
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`registration,” 15 U.S.C. § 1067, and has far more experience than the Nevada Court in
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`addressing the validity of an existing registration, fraud on the USPTO, and naked licensing
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`and assignment of trademarks. The Nevada’s Court’s determination on likelihood of
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`confusion would have no bearing on the Board’s determination of these issues squarely
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`within its expertise.
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`ATLLIBOI 20721502
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`Thus,
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`for
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`the foregoing reasons,
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`the Board should not stay the Cancellation
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`Proceeding to await decisions in an action involving an entity that may not have any right in
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`the ‘940 Registration. For the reasons set forth herein, Petitioners respectfully request that
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`the Board reconsider the July 19, 2005 Order and reverse the stay of the Cancellation
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`Proceeding}
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`Augustl8,2005
`
`.
`
`Judith A. Powell
`
`James H. Sullivan
`Carrie A. Johnson
`
`H ,,
`
`KILPATRICK STOCKTON LLP
`1100 Peachtree Street
`
`Atlanta, Georgia 30309
`(404) 815-6500
`Attorneysfor Petitioners
`
`3 As noted above, fn.1 supra, to the extent reversal of the s_1g sponte consolidation is necessary to allow the
`cancellation issues to proceed, Petitioners also request that the Board reconsider its order of consolidation and
`reinstate separate proceedings.
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`ATLLIBOI 20721501
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Reg. No. 940,243
`
`Mark: BRAWNY
`
`Consolidated Cases:
`Cancellation No. 92044396
`Opposition No. 91 164081
`
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`FORT JAMES OPERATING
`COMPANY and GEORGIA-PACIFIC
`CORPORATION,
`Petitioners,
`
`v.
`
`BRAWNY PLASTICS, INC.,
`Registrant,
`&
`NEXTEP, INC.,
`Party in Interest
`
`CERTIFICATE OF SERVICE
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`This is to certify that I have this day served a true and correct copy of the foregoing
`
`“PETITIONERS’ MOTION FOR RECONSIDERATION OF JULY 19, 2005 ORDER
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`SUSPENDING CANCELLATION PROCEEDING” by depositing same in the United States
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`mail, properly addressed with sufficient postage affixed thereto to ensure delivery to:
`
`Michael D. Rounds
`
`Matthew D. Francis
`
`WATSON ROUNDS
`
`5371 Kietzke Lane
`
`Reno, NV 8951 1
`
`This 18 day of August, 2005.
`
`CarrieA. Joflon
`
`ATLLIBOI 2072] 50.2
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`Latest Status Info
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`Page 1 of 3
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`Tliank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2005-08-24 10:55:29 ET
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`Serial Number: 78301863
`
`Registration Number: (NOT AVAILABLE)
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`Mark (words only): BRAWNY
`
`Standard Character claim: No
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`Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
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`Date of Status: 2005-06-21
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`Filing Date: 2003-09-17
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`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 116
`
`Attorney Assigned:
`KING LINDA M Employee Location
`
`Current Location: 650 -Publication And Issue Section
`
`Date In Location: 2004-12-27
`
`....,.«_.__..__.___... ..__._.._...._.__............a..~..e..,..:.m..
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1.. Paul, Samuel Louis
`
`Anddressz
`
`Paul, Samuel Louis
`PO. Box 11188
`
`Reno, NV 89510
`United States
`
`Legal Entity Type: Individual
`Oountry of Citizenship: United States
`Phone Number: 775 586 9500
`
`.-2.. .»»~,...w.—«....u........ .._._.wuM~w_mMuMwMM,-W,
`
`GOODS AND/OR SERVICES
`
`Illlternational Class: 020
`
`hflpz//tarr.uspto.gov/servlet/tarr?regser=serial&entry=78301863
`
`8/24/2005
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`Liest Status Info
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`Page 2 of3
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`Plastic storage bins and shelves
`Fiirst Use Date: (DATE NOT AVAILABLE)
`Fifst Use in Commerce Date: (DATE NOT AVAILABLE)
`
`Basis: l(b)
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`*w«
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`(NOT AVAILABLE)
`..¢...M
`
`ADDITIONAL INFORMATION
`
`»-
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`MADRID PROTOCOL INFORMATION
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`(NOT AVAILABLE)
`Pr
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`PROSECUTION HISTORY
`
`2005-08-10 - FAX RECEIVED
`
`2005-06-21 - Opposition instituted for Proceeding
`
`2005-03-17 - Extension Of Time To Oppose Received
`
`2005-02-08 - Published for opposition
`
`2005-01-19 - Notice of publication
`
`2004-12-03 - Law Office Publication Review Completed
`
`2004-12-03 - Assigned To LIE
`
`2004-11-16 - Approved for Pub - Principal Register (Initial exam)
`
`2004-10-28 - Amendment From Applicant Entered
`
`1
`
`2004-10-14 - Communication received from applicant
`
`2004-10-14 - PAPER RECEIVED
`
`2004-04-09 - Non-final action mailed
`
`2004-03-25 - Case file assigned to examining attorney
`,.
`
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`CORRESPONDENCE INFORMATION
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`
`Correspondent
`Andrew Gathy (Attorney of record)
`
`MATTHEW D FRANCIS
`
`httru://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78301863
`
`l
`
`8/24/2005
`
`

`
`
`La’lest Status Info
`Page 3 of 3
`
`WATSON ROUNDS
`53 1 KIETZKE LANE
`
`NO, NV 89511
`
`Pflone Number: 775-586-9500
`Fax Number: 775-586-9550
`
`hflpz//tarr.uspto.gov/servlet/tarr?regser=seria1&entry=78301863
`
`1
`
`8/24/2005
`
`

`
`

`
`‘
`
`Westlaw.
`
`3 1987 WL 20138
`
`1987 WL 20138 (N.D.Il1.)
`(Cite as: 1987 WL 20138 (N.D.Ill.))
`
`l>
`
`Only the Westlaw citation is currently available.
`
`United States District Court, N.D. Illinois, Eastern
`Division.
`
`NATIONAL MARKETING CONSULTANTS,
`INC., Plaintiff and Counterdefendant,
`v.
`
`BLUE CROSS AND BLUE SHIELD
`
`ASSOCIATION, Defendant and Counterclaimant.
`No. 87 C 7161.
`
`Nov. 19, 1987.
`
`Memorandum Opinion
`Motion to Stay Proceedings
`Background
`
`Page 1
`
`use its service mark without interference from Blue
`
`Cross. Subsequently, National filed with the TTAB a
`motion to suspend the Opposition proceedings
`pending the Colorado action.
`The TTAB granted
`National's motion to stay the Opposition proceedings.
`Blue Cross moved to dismiss the Colorado action.
`
`the
`dismissed
`voluntarily
`Thereafter, National
`Colorado action and refiled a virtually identical
`complaint in the Northern District of Illinois. Blue
`Cross responded to the Illinois action with a five
`count
`counterclaim seeking
`preliminary
`and
`permanent injunctions, treble damages, an accounting
`for profits and the destruction of the allegedly
`infringing materials. Thereafter, Blue Cross filed this
`motion to stay this case pending the outcome of the
`TTAB. Lastly, on October 7, 1987 the TTAB in a
`two page, summary order stayed its Opposition
`proceeding pending the outcome of this litigation
`without specifying any reasons for its decision.
`
`MAROVITZ, Senior District Judge.
`
`Parties Contentions
`
`*1 At issue is whether to grant Defendant's motion to
`stay the current proceedings pending the outcome of
`the Trademark Trial and Appeal Board's ("TTAB")
`Opposition proceeding.
`That proceeding will
`determine whether
`the similarity of the parties’
`respective shield designs is likely to cause confusion.
`Plaintiff,
`National
`Marketing
`Consultants
`("National"), is engaged in the business of marketing
`and brokering legal services plans under a service
`mark consisting of the "National Legal Shield"
`utilizing a shield design. Defendant, Blue Cross and
`Blue Shield Association ("Blue Cross"),
`is in the
`business of providing health and disability insurance
`under a service mark utilizing a blue colored shield
`design.
`
`National filed for a federal registration of its shield.
`The Patent and Trademark office
`subsequently
`published National's service mark. Blue Cross filed
`an Opposition proceeding before the TTAB to decide
`the sole issue of whether there is a likelihood of
`confusion between Blue Cross's
`and National's
`
`respective shield marks.
`
`initiation of the TTAB
`Following Blue Cross's
`Opposition proceedings, National filed an action in
`the United States District Court for the District of
`
`Colorado requesting a declaratory judgment that its
`service mark did not infringe on defendant's service
`mark and, further, that it has the right to continue to
`
`Blue Cross's motion to stay is premised on the
`doctrine of primary jurisdiction. Defendant contends
`that
`the issue of whether there is a likelihood of
`
`respective service
`confusion between the parties’
`mark is a matter within the special competence of the
`TTAB and thus should be decided by that body.
`Additionally, Blue Cross argues that deference to the
`TTAB is likely to promote a speedier disposition of
`the entire action because the TTAB will decide the
`
`Further, Blue
`core issue of both parties’ claims.
`cross argues that
`this court
`is not bound by the
`TTAB's decision to stay its proceeding pending the
`outcome of this litigation and thus should stay this
`action until
`the TTAB determines the issue of
`
`confusion
`of
`likelihood
`respective trademarks.
`
`between
`
`the
`
`parties’
`
`the doctrine of primary
`*2 National argues that
`jurisdiction should not be
`applied to ordinary
`trademark infringement litigation because the issue of
`likelihood of confiision does not require the special
`expertise and experience of the TTAB. Furthermore,
`National
`claims
`that
`considerations of judicial
`economy weigh heavily against application of the
`doctrine of primary jurisdiction because the TTAB
`determination will
`not materially
`aid
`in
`the
`disposition of this action and will cause needless
`delay and expense. Finally, National argues that this
`court is required to proceed with this action due to
`the TTAB's decision to stay its action pending the
`
`© 2005 Thomson/West. No Claim to Orig. U.S. Govt. Works.
`
`

`
`
`
`1987 WL 20138
`
`1987 WL 20138 (N.D.Ill.)
`(Cite as: 1987 WL 20138 (N.D.Ill.))
`
`outcome of this litigation.
`
`Discussion
`
`applies where a claim is
`"Primary jurisdiction
`originally cognizable in the courts, and comes into
`play whenever enforcement of the claim requires the
`resolution of
`issues which, under a regulatory
`scheme,
`have been placed within the
`special
`competence of an administrative body;
`in such a case
`the judicial process is suspended pending referral of
`such issues to the administrative body for its views."
`US. v. Western Pacific Railroad Co., 352 U.S. 59,
`63-64 (19561.
`
`"No fixed formula exists for applying the doctrine of
`primary jurisdiction.
`In every case the question is
`whether the reasons for the existence of the doctrine
`
`are present and whether the purposes it serves will be
`aided by its application in the particular litigation."
`Id. at 64.
`Primary jurisdiction is based on the
`precept "that in cases raising issues of fact not within
`the conventional experience of judges, or in cases
`requiring the exercise of administrative discretion,
`agencies created by Congress for
`regulating the
`subject matter should not be passed over." Id. The
`exercise of the court's discretion is guided in this
`situation by the need for initial consideration from a
`body possessing special expertise
`in the
`issue
`presented. Id. at 64-65.
`
`In the present case, National petitioned the court for
`a declaration stating that its service mark is not likely
`to be confused with defendant's design. The issue of
`likelihood of confusion is precisely the issue to be
`resolved by the TTAB and is the core issue of the
`litigation between the parties pending before this
`court. Although the issue of likelihood of confusion
`between the two marks is not the sole issue presented
`before this court, the TTAB's determination will be a
`material aid in ultimately deciding the remaining
`issues
`in this case.
`It
`is
`sufficient
`that an
`
`administrative agency's decision will ultimately be a
`material aid in resolving the pending litigation to
`invoke the doctrine of primary jurisdiction. Ricci v.
`Chicago Mercantile Exchange, 409 U.S. 289, 305
`(1973).
`Further, although it is within the power of
`this court
`to make such trademark infringement
`determinations, it is wise and proper practice to defer
`to the TTAB's expertise in such matters since they
`routinely make such determinations.
`
`National erroneously cites Johnson & Johnson v.
`Walker A. Erickson & Co., 627 F.2d 57 (7th
`Cir.l980)
`for
`the
`proposition
`that
`trademark
`‘infringement cases such as the one at bar are not
`
`Page 2
`
`suitable for the application of the primary jurisdiction
`doctrine.
`The Johnson & Johnson case
`is
`
`distinguishable in the following two respects. First,
`the issue in Johnson v. Johnson was not whether the
`
`primary jurisdiction doctrine should be applied in
`deferring to a pending administrative hearing, but
`rather whether the district court had the power to
`compel the patentee to submit its patent to the Patent
`and Trademark Office and apply for a reissue patent
`prior to the adjudication of the infringement action.
`Id. at 61.
`Secondly, the Seventh Circuit found that
`Johnson & Johnson was a question of law.
`The
`present case concerns the issue of the likelihood of
`confusion between trademarks which is a question of
`
`fact. Watkins Products Inc. v. Sunwave Products
`Inc., 3l 1 F.2d 496, 499 (7th Cir.l962 1.
`
`*3 Moreover, "the declaratory judgment procedure
`will not be used to pre-empt and prejudge issues that
`are committed for initial decision to an administrative
`
`[...]. Responsibility for
`tribunal
`body or special
`effective functioning of the administrative process
`cannot be thus transferred from the bodies in which
`
`congress has placed it to the courts." Public Service
`Commission of Utah v. Wycofl Co., 344 U.S. 237,
`246-247 (1952 1.
`In the instant