Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA44207
`
`Filing date3
`
`09/06/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91165753
`Plaintiff
`QMT Associates, Inc.QMT Associates, Inc.
`
`Party
`
`QMT Associates, Inc.
`§ 8431 Euclid Avenue
`Manassas Park, VA 201 1 1
`UNITED STATES
`Susan M. Kornfield
`Bodrnan LLP
`Correspondence 110 Miller, Suite 300
`Address
`§ Ann Arbor, MI 48104
`UNITED STATES
`skornfie1d@bodn1an1lp. com
`QMT Associates, Inc.'s Brief in Response to Applicant's Motion to
`§ Dismiss Opposition for Lack of Standing and Certificate of Mailing
`
`Submission
`
`Filer's Name
`
`Ffleris email
`
`Susan M. Kornfield
`skornfie1d@bodn1an1lp. com, aharris@bodn1an1lp.con1,
`asujek@bodmanl1p.com
`
`Signature
`
`/susan 11]. kornfieldl
`
`Date
`
`09/06/2005
`
`Attachments
`
`qmtbriefinresponse.pdf ( 57 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 78/213,865
`Filed on February 12, 2003
`For the Mark MISCELLANEOUS DESIGN
`
`Published in the Official Gazette on June 14, 2005
`
`Opposition No. 91 165753
`
`)
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`)
`
`QMT ASSOCIATES, INC,
`
`Opposer,
`
`Va
`
`SARA NEAL ESKEW,
`
`Applicant.
`
`QMT ASSOCIATES, INC.’S BRIEF IN RESPONSE TO APPLICANT’S
`MOTION TO DISMISS OPPOSITION FOR LACK OF STANDING
`
`Opposer QMT Associates, Inc, files this response to Applicant Sara Neal Eskew’s motion
`
`to dismiss this Opposition for “lack of‘ standing ” As set forth in detail below, QMT has more
`
`than met the requirement of standing, and Applicant is seeking to procure her registration by
`
`fraud, in violation of" 15 U.S,.C, § 1120 Applicant seeks trademark registration for a product,
`
`namely wind chimes. Contrary to her written submission to the PTO and the TTAB, no court
`
`has found that her wind chimes are nonfunctional or that they have acquired secondary meaning,
`
`and QMI has never acquiesced in or agreed to the registration ofher wind chimes.
`
`The facts alleged in QMT’s Opposition must be taken as true for purposes ofApplicant’s
`
`motion
`
`Those facts and allegations are based upon the statutory criteria for opposing the
`
`registration of a mark upon the principal register, see the US. Irademark Act, 15 U SC. §§
`
`AnnArbor‘9589?_‘1
`
`

`
`1051, 1063, and are consistent with the form provided by the PTO entitled “Suggested Format
`
`For a Notice of" Opposition.” See http://WWW usptoigov/web/forms/4-l7a.pdf'.
`
`The motion filed by Applicant, in addition to being filed with fraudulent and misleading
`
`statements, is procedurally improper as it alleges matters outside of the pleadings. That motion
`
`should be denied on its face, If the TTAB considers her motion, QMT respectfully requests that
`
`the TTAB deny the motion, grant QMT’s Opposition, refuse Applicant’s application for
`
`registration, and sanction her and her counsel
`
`FACTS AND PROCEDURAL HISTORY
`
`A,
`
`QMT and MOTS Wind Chimes.
`
`QMT has been designing, manufacturing and selling wind chimes since 1991.
`
`It offers
`
`several lines of wind chimes with varying visual and sound characteristics. In 1998, QMT began
`
`manufacturing and selling a line of “hand—tuned” wind chimes and,
`
`in 2001, introduced its
`
`GENTLE SPTRITS® line. As set forth in the table, below,
`
`the elements of the GENTLE
`
`SPIRITS wind chimes (including an open ring suspension, a metallic circular top ring, deburred
`
`tubes, a clapper, and a diarnond—shaped, curved “sail”) reflect considerations of sound quality,
`
`manufacturing processes, safety, modern design, and response to market demand:
`
`
`FUNCTION
`ELEMENTS OF WIND CHIME
`
`
`Improves the quality and duration of the sound created when
`the clapper hits the tube, and reduces cord abrasion Instead of
`
`drilling holes into the side of the tubes and suspending the
`tubes by cord strung through the holes, an open ring
`suspension ties the cord to a pin that runs the diameter of the
`
`tube \
`
`
`
`
`
`
`“Open-ring” suspension system
`
`
`
`“dots” visible
`Two
`outside ofthe tube
`
`
`
`on the
`
`
`
`The dots are not aesthetic “dots” added to the wind chime but
`result from the pin that runs the diameter of the tube (onto
`which the cord is tied to suspend the tube) meeting the tube
`
`
`
`
`There is no silver ring applied to the tube. After the metal
`Silver “ring” at the bottom of
`tube is cut to the desired length, the metal edge is smoothed
`the tube
`
`
`AnnArbor__95897_1
`
`

`
`the clapper to hit the tubes.
`
`“Clapper”
`
`“Sail”
`
`(deburred) to avoid cuts from handling rough metal. The
`“ring” at the bottom ofthe tube is the emergence of the metal
`beneath the paint color that has been applied to the tube.
`
`The clapper hits the suspended tubes and creates the sound.
`
`The sail, attached to the clapper, catches the wind, enabling
`
`Applicant Eskew, d/b/a Music of the Spheres (MOTS), sells a line of hand-tuned wind
`
`chimes also generally consisting of an open-ring suspension system, a metallic circular top ring,
`
`deburred black tubes, a clapper, and a diamond-shaped curved “sail.” Images of the wind chimes
`
`of QMT (under its trade name “Majesty Bells”) and Applicant are set forth in Exhibit A, and
`
`below] :
`
`If the Board converts Applicant’s
`1 QMI includes pictures of the parties’ chimes as a point of reference only.
`motion to dismiss into a motion for summary judgment, these pictures are appropriate evidence of the similarity of
`the parties’ products.
`
`AnnArbor_95697_1
`
`

`
`W3.
`,
`“aw ,
`
`Te Prior ederal gr-iradieW§1'essiW§l_.itig°:tBi.on.%
`
`B.
`
`In April 2001, Applicant sued QMT, alleging that QMT’s Gentle Spirits® wind chimes
`
`infringed her alleged trade dress rights (the “Litigation”).. Discovery revealed fatal flaws in
`
`plaintiffs case, including that the alleged trade dress changed over time, the elements of' the
`
`claimed trade dress were functional, the wind chimes lacked secondary meaning, and that other
`
`companies manufactured wind chimes identical to or substantially similar to those of Applicant.
`
`For example, Applicant’s complaint described the alleged trade dress as the “original and
`
`unique look and tone” consisting of “black-coated chime tubes, the black clapper, the black,
`
`generally actuate diamond-shaped wind catcher, the manner of tube suspension and the use of
`
`black Cordage, [and] the open ring support platform” App1icant’s Amended Complaint, Exhibit
`
`B, W 7-8 (emphasis added),
`
`In her application for trademark registration of the same product
`
`and her recent motion, Applicant offers a different description, claiming “a combination of
`
`features consisting of a metallic silver top ring with a circular cross section, a central tube
`
`An nArbor_95897_1
`
`

`
`suspension system, black tubes with metallic‘ silver exposed ends, z"nrerz"or and side dots, a disk-
`
`shaped clapper, and a black, dja1nond—shaped wind catcher with a curvature about a vertical
`
`axis.” Applicant’s Memorandum at 2 (emphasis added) Her “expert report” submitted to the
`
`Examiner describes the claimed trade dress a third Way.
`
`Before the PIC) and TTAB, Applicant abandons any claim to trade dress rights in the
`
`“tone” and black Cordage and a black clapper, all of which she had vigorously argued to the
`
`federal judge during the Litigation. She adds" the element of a silver top ring, silver exposed
`
`ends and side dots, as well as specifying a black wind—catcher, all elements not previously
`
`claimed Applicant’s own inconsistent descriptions other “trade dress” reveal the flaws in her
`
`claim to any such trade dress
`
`The Litigation revealed the functionality of Applicanfs wind chimes,
`
`including
`
`admissions by Applicant on her web site:
`
`the “[c]entral tube suspension with smoothly polished tube ends prevent cord
`0
`abrasion typical ofother, less labor-extensive suspension techniques.”
`
`the “[h]eav_y gauge polished stainless steel rings provide sturdy support and
`0
`enduring beauty.”
`
`[t]he corrosion protective finish preserves chimes and increases durability in
`0
`hostile environments.”
`
`the “wind catcher, of the same finish and materials as the tubes, is the ideal size,
`0
`weight, and shape for optimal chime performance .
`.
`.”
`
`“[t]he corrosion protective finish provides durability in all kinds oioutdoor
`-
`environments.”
`
`See printout from Applicant’s Web site, attached as Exhibit C These admissions alone are more
`
`than enough to demonstrate the functionality of Applicant’s claimed trade dress See, eg., Valu
`
`Engineering, Inc v Rexnord Corp, 278 F.3d 1268, 1272 (Fed Cir. 2002) (citing an applicant’s
`
`AnnArbor#95897_1
`
`

`
`touting ofthe utilitarian advantages of the design as one ofthe principal factors in a functionality
`
`analysis). Although Applicant submitted an expert report during the Litigation in an attempt to
`
`support her" claim that her wind chimes had acquired secondary meaning, the federal court did
`
`not ultimately rule as to whether that report was deficient in its methodology or met the standard
`
`for reliability and admissibility under Dauberi v. it/[errell Dow Pharmaceuticals", Inc, 509 U S.
`
`579 (1993), and its progeny.
`
`Applicant decided not to have her claim of trade dress tested by the applicable legal
`
`principals and settled the Litigation without any judicial determination as to functionality (an
`
`issue on which Applicant maintained the burden of' proving by a preponderance of the evidence,
`
`see 15 U.S C. ll25(a)(3)) and without any judicial determination as to whether her wind chimes
`
`had acquired secondary meaning Indeed, the Litigation concluded with Applicant agreeing that
`
`QMI could continue selling its wind chimes without any changes at all, except for a couple
`
`trivial modifications to one subset ofone line of its chimes.
`
`C
`
`The Litigation Settlement.
`
`After" two years of litigation, the parties resolved their dispute. Even though App1icant’s
`
`Application was pending at the time of the settlement, the settlement did not include any
`
`recognition by QMT ofany rights (exclusive or otherwise) of Applicant or agree to Applicant’s
`
`attempted rlegistrationz The executed settlement agreement states:
`
`“4.
`
`No Admission.
`
`The parties expressly agree that this Agreement including, but not
`limited to the Stipulated Mutual Final Injunction, does not in any
`
`2 In fact, as reflected in the attached correspondence and draft agreement, QMT expressly rejected Applicant’s
`attempt to extract an agreement to seek registration of its claimed trade dress. Exhibit D.
`
`AnnArbor_95897W1
`
`

`
`liability, fact or the
`way constitute an admission of fault,
`validity or invalidity of the legal assertion.”
`
`Settlement Agreement, Applicant’s Motion to Dismiss, Exhibit 2 (emphasis added). The
`
`Settlement Agreement and related Stipulated Mutual Injunction both are purposefully silent as to
`
`the then pending Application and QMT retained the right to oppose registration in the event
`
`Applicant’s Application survived internal review by the PIO.
`
`In an email between counsel
`
`for QMT (Mr. Harris) and counsel
`
`for QMT (Mr.
`
`Dickinson), Applicant’s intellectual property counsel agreed that QMT could file an opposition
`
`to the registration ofApplicant’s wind chimes as a trademark:
`
`MR HARRIS (counsel for QMT): “We certainly did not, in the
`settlement, agree that the MOTS chimes are not functional or have
`secondary meaning ‘I
`..
`.
`.. You are [now] asking that we allow
`MOTS to obtain a registered mark, a distinct issue that was not a
`part ofthe case .”
`
`MR. DICKINSON (counsel for Applicant): “We are not asking
`you to agree to anything that is not in the Settlement Agreement
`I
`am not asking you to allow MOTS to obtain a registered mark; you
`may oppose the pending application ifyou should choose.”
`
`Exhibit D (emphasis added). The parties agreed that QMT would continue making the exact
`
`same chime it was making at that point in time and that Applicant agreed to refrain from
`3
`expanding into the much broader line of chimes manufactured by QMT, namely colors. There
`
`was Q decision rendered by the Court as to Applicant’s claims of exclusive rights, secondary
`
`meaning, and non—functionality.
`
`3 QMT also agreed to add additional identifying information to its wind chime “hang tags” and clapper
`
`7
`
`Anr1Arbor_95897_1
`
`

`
`D.
`
`The ?TO Refused Registration ofApplicant’s Wind Chimes
`Because They Were “Functional” and Because They Were “Highly Descriptive.”
`
`The PTO refirsed registration of Applicant’s wind chimes on the grounds that
`
`the
`
`“proposed mark appears to be functional” (“Configuration Refusal”) and on the grounds that the
`
`wind chimes were “highly descriptive ” The PTO stated that the allegation of five years use was
`
`insufficient to establish distinctiveness and sought “actual evidence to prove the distinctiveness
`
`of the mark in commerce.” The PTO set forth that the evidence could “include specific dollar
`
`sales under the mark, advertising figures, samples of advertising, consumer or dealer statements
`
`ofrecognition of'the mark and any other evidence that establishes the distinctiveness of the mark
`
`as an indicator of source .”
`
`E.
`
`Applicant Abandons, then Revives, Her Application.
`
`Applicant received an Action Letter from the PTO while the parties were litigating the
`
`very issue as to whether Applicant owned any trademark rights in her wind chimes. After
`
`settling the Litigation, Applicant failed to timely respond to that Action Letter and the
`
`application was abandoned. She then filed a petition to revive, citing an “unintentional” delay in
`
`filing a response to the Office Action and, in support ofthat petition, falsely asserted that a court
`
`had established legal rights in her wind chimes. She also falsely asserted that competitors had
`4
`agreed her chimes were protected by trade dress rights. Based upon her statements, the T’TO
`
`published the application for opposition
`
`4 Applicant relied largely on the Settlement to “prove” her claimed exclusive rights. As for secondary meaning,
`Applicant proved none of the things identified by the Examiner, instead submitting only a five page “Expert Report’
`which is deficient in numerous respects. Most glaring, perhaps, is the lack of" opinion as to when the Applicant
`chimes allegedly acquired secondary meaning. QMT introduced its chimes in 2001. Applicant’s “expert” admits
`
`AnnArbor_95B97w1
`
`

`
`F.
`
`QMI’s Opposition.
`
`QMI timely filed this Opposition on luly 5, 2005. QMI alleged that it manufactures and
`
`sells wind chimes Opposition, 1] 1.. QMT alleged that “[c]reation of QMl’s wind chimes
`
`consists of a metallic circular top ring, black tubes, metallic silver exposed ends on the tubes
`
`created by the ‘deburring’ process of the manufacture ofthe tube, metallic ‘dots’ created by the
`
`inclusion of a pin within the tube onto which the suspension cord is affixed, a ‘clapper’ (the
`
`mechanism for striking the tubes so as to create the sound), a ‘windcatcher’ with a curvature, and
`
`cordage” Opposition, 112. QMT alleged that Applicant is not
`
`the exclusive wind chime
`
`manufacturer using the elements claimed as trade dress, that the claimed mark is functional and
`
`that the mark has not acquired distinctiveness Opposition, 1[1[ 3-5 .. Finally, QMT alleged its
`
`belief that it would be damaged by registration of the mark Id.
`
`ARGUMENT
`
`Applicant’s motion is legally frivolous and relies on knowingly false assertions regarding
`
`the Litigation. One such knowingly false assertion is that QMI “waived” its right to oppose the
`
`attempted registration. Applicant, though her counsel, previously admitted that this contemplated
`
`Opposition is unaffected by the earlier" settlement. Exhibit D To new state that there was a
`
`waiver — a “voluntary relinquishment of a known right” — is purposefully deceitful. Moreover",
`
`Applicant and her counsel’s knowingly false statements are sanctionable and warrant refusal of
`
`the Application and/or entry of judgment for QMT.
`
`
`
`that the “look” at issue was first used by Applicant in 2000. It is virtuaily impossible for Applicant to have obtained
`
`AnnArbor_95897__1
`
`

`
`A.
`
`Standard Governing Standing to Oppose Registration.
`
`The standard ofreview ofa motion to dismiss is Well established The Board accepts as
`
`true all Well pied and material allegations made by QMT. Ritchie 12. Orenthal James Simpson,
`
`170 F.3d 1092, 1097 (Fed. Cir. 1999). All reasonable inferences must be drawn in favor of
`
`QMI. Advanced Cardiovascular Systems, Inc. v. SciMed Life Systems, Inc, 988 F 2d 1157, 26
`
`U.S.P Q 2d 1038 (Fed. Cir. 1993).
`
`Indeed, “[a] party should not be denied his right to be heard
`
`on a notice of opposition unless it is certain beyond any doubt that he cannot prevail under any
`
`circumstances.” No Fear, Inc. v, United States Dept. 0fLab0r', 1997 TTAB LEXIS 43, *2
`
`(TTAB 1997), quoting Stabilisiermngsfonds far Wein v Zimmerman—Graefi"KG, 199 U S.P..Q
`
`488, 489 (TTAB 1978).
`
`The threshold for standing sufficient to bring an opposition is low.. Under Section 13 of
`
`the Lanham Act, there is a wide range of persons who are proper opposers.
`
`Indeed, the statutory
`
`language only requires that a person have a belief‘of"suffering some kind of damage if the mark is
`
`registered.
`
`15 U.S.C.
`
`l063(a). The Federal Circuit has clarified that there are two judicially
`
`created requirements in order to have standing, specifically,
`
`that the opposer have a “real
`
`interest” in the proceeding and a “reasonable” basis for the belief of damage Ritchie v Orenthai
`
`James Simpson, 170 1-7 3d 1092, 1095 (Fed. Cir. 1999). This standard has been liberally
`
`construed Universal Oil Pr'0dnet‘.s Co v. Retxall Drug and Chemical Co, 463 F .2d 1122, 1123
`
`(Ct. of Cust. and Pat. App. 1972).
`
`In Rexall Co., the court specifically recognized that such
`
`liberal construction “is especially justified when the public interest served by a trademark
`
`opposition proceeding is recognized.” Rexall, 463 F. 2d at 1123.
`
`In fact, there is “[n]o absolute
`
`rule [that] can be laid down for what must be proved to establish standing as a petitioner in a
`
`
`
`secondary meaning in as little as one year
`
`10
`
`AnnArbor_9589T_1
`
`

`
`cancellation proceeding or as an opposer in an opposition.”
`
`Selva & Sons,
`
`Inc. v. Nina
`
`Footwear, Inc, 705 F.2d 1316, 1326 (Fed. Cir 1983).
`
`B.
`
`QMT Easily Satisfies the Standing Reguirement.
`
`There is no question that QMT has standing in this matter and that QMT never
`
`acquiesced to Applicant’s sought registration. QMT’s allegations in the Opposition, set forth
`
`above, must be accepted as true. Thus, its belief of damage must be read in the context of its
`
`specific factual allegations. These basic allegations include that it is a manufacturer of wind
`
`chimes (thus, a competitor of Applicant) and that certain of its wind chimes consist of a metallic
`
`circular top ring, black tubes, metallic silver exposed ends, metallic dots on the tube sides, a
`
`clapper, and a curved wind catcher. Opposition, {[1] 2-5. This description intentionally mirrors
`
`the claimed trade dress. See Application.
`
`It must also be accepted as true that Applicant is not
`
`the exclusive wind chime manufacturer using the elements claimed as trade dress. Opposition,
`
`-n 5.
`
`Applicant does not specifically challenge QMTXS allegations or argue their insafi‘iciency..
`
`Instead, Applicant relies entirely on documents not before the Board, specifically the Litigation
`
`Settlement and Stipulated Mutual Injunction, to argue (falsely) that QMT has waived its right to
`
`oppose. While that argument is frivolous, the Board should exclude those materials in deciding a
`
`motion to dismiss.
`
`Internet, Inc V Corporation for Nat ‘l Research Initiatives, 38 U S.P.Q 2d
`
`1435 (TTAB 1996) (excluding materials outside ofthe pleadings and not converting motion to a
`
`motion for sumrnaryjudgment) .5
`
`5 Alternatively, the Board may exercise its discretion and treat Applicanfs motion as a motion for summary
`judgrnent. While QMT reserves the right to file its own motion (after proper discovery), it believes the materials
`submitted would, in that context, warrant entry of summary judgment for QMT at least as to standing, if not as to
`the entire opposition
`
`l 1
`
`AnnArbor_95897_1
`
`

`
`QMI’s allegations suffice to support its reasonably stated beliefof damage.
`
`Indeed, its
`
`allegations are arguably far more than those relied upon in Ritchie, cited by Applicant.
`
`In
`
`Ritchie, an individual with no relationship to OJ Simpson sought to preclude registration of the
`
`marks 0.}. SIMPSON, 0.1., and THE TUICE. Ritchie, 170 P.3d at 1093. The Federal Circuit
`
`reversed the Board’s dismissal for lack of standing. Opposer in Ritchie alleged simply that he
`
`would be damaged by registration of the marks because the marks disparaged his family values.
`
`Ritchie submitted a statement of others sharing his belief’ that the marks sought to be registered
`
`were “scandalous.” These bare allegations alone were sufficient to demonstrate the requisite real
`
`interest in the outcome and alone provided the reasonable basis for his belief of damage. Id at
`
`1099.
`
`Here, QMT has alleged a much more direct interest, namely, that it is a competitor in the
`
`industry which manufactures and sells a product which falls within the precise sphere
`
`encompassed by the sought registration QMT also alleges that Applicant is not the exclusive
`
`source of chimes exhibiting the claimed trade dress. Pursuant to the Settlement, QMT agreed
`
`only not to make the black colored chime made by Applicant. QMT’s chimes, as agreed to by
`35
`LC
`
`Applicant, continue to use a metallic “top ring with a circular cross section,
`
`a central tube
`
`suspension system,” tubes with “metallic silver exposed ends,” “interior and side dots,” “a disc-
`
`shaped clapper,” and a “black diamond-shaped wind catcher with curvature about a vertical
`
`axis,” as described in Applicant’s Application.
`
`Applicant’s concessions in the Settlement actually preclude the registration she seeks, as
`
`she expressly agreed to QMI’s continued rnanufacture and sale of chimes virtually identical to
`
`the Applicant’s chimes. See Settlement at 1. Applicant did not secure from QMT exclusive
`
`rights to use an open—ring suspension system, tubes with metallic silver exposed ends, or the
`
`12
`
`AnnArbor_95897_1
`
`

`
`other elements of her claimed trade dress.
`
`Because of the admitted and negotiated visual
`
`similarities between the QMT and Applicant chimes, QMT would be damaged by Applicant’s
`
`receipt and use of a registration purporting to cover these exact elements.
`
`For example,
`
`ownership of‘ the registration would communicate to consumers that Applicant has exclusive
`
`rights to the chime configuration, which is false, and would allow Applicant, or a successor in
`
`interest, to limit that ability of" QMT, or a successor in interest, from making and selling certain
`
`Wind chimes..
`
`Applicant’s statement
`
`that QMT makes “unsupported” and “conclusory” claims of
`
`damage without explanation is simply false. QMT’s opposition specifically alleges that
`
`Applicant is not the only user in the marketplace of the alleged trade dress, QMT makes Virtually
`
`identical chimes, and QMT believes it would be damaged by registration of" a mark purporting to
`
`cover similar chimes.
`
`C.
`
`Applicanfs Reliance on the Settlement Agreement is Purposefully Misleading.
`
`Applicant’s Application was pending at the time of" the Litigation and at the time the
`
`parties entered into the Settlement Agreement and Stipulated Mutual Injunction. As a resuit, the
`
`parties’ treatment of the registration issue in resolving the earlier Litigation is relevant.
`
`Indeed,
`
`Applicant relied virtually entirely on the claimed “waiver” in her Office Action response and
`
`continues to do so in her motion. Applicant falsely represented to the PTO that “The Court and
`
`competitors acknowledge the exclusive right of Applicant to manufacture black--and-silver wind
`
`chimes with black tubes, diamond shaped wind catcher and metallic silver suspension ring."
`
`Applicant’s Response to Action Letter at 6. Applicant falsely stated that “The defendant and the
`
`Court acknowledge Applicant’s exclusive right to the wind chime trade dress.” Id. at 7
`
`1 3
`
`AnnArbor_95897V1
`
`

`
`Applicant continues this theme in her motion, stating that QMT elected not to prosecute
`
`its defense to its conclusion, “[i]nstead willfully agreeing to the injunction in which these
`
`defenses were denied.” Applicant’s Memorandum at 4 Applicant makes other false statements
`
`regarding the nature of the settlement, including that QMI “agreed to additional marketing
`
`changes to help avoid confusion.” Applicant’s Memorandum at 3. Nowhere does the Settlement
`
`or Stipulated Mutual Injunction discuss the avoidance of confusion or, in fact, any confusion at
`
`all. The Settlement namely reflects a business decision to resolve litigation. Applicant states
`
`that QMT cannot state any real interest in the Opposition or reasonable relief of damage by
`
`virtue ofthe Settlement Agreement and Stipulated Mutual Injunction. Applicant’s Memorandum
`
`at 7. Applicant goes so far as to say that “the clear intentions manifest in the Settlement
`
`Agreement and Injunction are that QMT would assist Applicant
`
`in the enforcement of
`
`Applicant’s trade dress rights.” Applicant’s Memorandum at 8, and that “[t]he federal
`
`registration ofApplicant’s trade dress is consistent with an effort to fulfill her obligations under
`
`the Settlement Agreement.” Id. This is frivolous and ridiculous.
`
`A simple reading of the document — not to mention counsel’s own correspondence prior
`
`to entering into the agreement — repudiates each of these assertions.
`
`Ihe words “exclusive
`
`rights” appear nowhere in the Settlement or Stipulated Mutual Injunction, both of which merely
`
`set forth a mechanism for a distance, admittedly small, between the two companies. No other
`
`competitor was affected or limited in any way by these two parties’ agreement.
`
`The Settlement Agreement expressly states that it is not an admission of any fact or the
`
`validity or invalidity of any legal assertion. Settlement Agreement 1l4.
`
`Ihe issue of QMI’s
`
`defenses (r'.e., the functionality of Applicant’s chimes and lack of secondary meaning) were
`
`specifically not addressed in the Settlement Agreement nor conceded by QMT. Applicant’s
`
`14
`
`Ann/3\rbor_95897_1
`
`

`
`counsel specifically agreed that QMT “may oppose the pending application if you should
`
`choose.” Exhibit D 6 This statement alone, an admission, is sufficient to demonstrate standing
`
`Applicant fails to cite perhaps the most analogous case, Newborn Brothers and Co. v
`
`Dripless, Inc, 2001 TTAB Lexis 267 (March 26, 2001), attached as Exhibit E.
`
`In Dripless,
`
`applicant sought to register its mark for caulking guns, which consisted of the color yellow
`
`applied to the goods. Id.
`
`at *1. Opposer alleged that “it is a manufacturer and distributor of
`
`caulk guns; that since prior to applicant’s use of the color yellow on caulk guns, opposer and
`
`others have offered caulk guns in a variety of single-tone primary colors, including the color
`
`yellow.” Id. Dripless sought summary judgment on standing grounds, arguing that Opposer
`
`lacked standing due to a settlement agreement between the parties which allegedly covered the
`
`color yellow as applied to certain types of caulking guns. Id. at *5—6. The Board stated:
`
`The record is clear that both opposer and applicant manufacture,
`sell, and distribute the same product (in various models)
`.
`. The
`settlement agreement from the civil action clearly indicates that
`opposer
`agreed
`to
`discontinue manufacturing,
`selling,
`or
`distributing non-drip caulk guns in certain Pantone shades of'
`yellow. Thus, the parties are direct competitors Considering the
`limitations
`included in
`the
`settlement
`agreement,
`opposer
`nevertheless has a reasonable basis of a belief in damage from the
`registration of applicant ’s mark for its identified goods .. Id at *7
`(emphasis added)
`
`In Dripless, The Board granted summary judgment on the standing issue for Opposer,
`
`sna sponte.
`
`Id. QMT has alleged that it is a competitor and rnanufacturer of goods that fall
`
`6 Because there is no admission by QMT or consent to registration in the Settlement Agreement, the cases upon
`which Applicant relies do not support her position.
`To the contrary, Vaughn Russell Candy Co. v Cookies In
`Bloom, Inc., 47 US P Q 2d 1635 (1998), supports QMT.
`Id. (sustaining opposition and refizsing registration where
`applicant failed to “acknowledge the conflicting rights of another which were established by the settlement
`agreement”) Similarly, the court in Danskin, Inc v. Dan River, Inc , 498 F.2d 1386, 1387 (1974) found that the
`opposer was barred from challenging applicant’s right
`to register when a pre-existing settlement agreement
`specifically stated "Danskin will not oppose or petition to cancel directly or indirectly any registration by Dan River
`for a “Dan” mark " Id at 1387 (emphasis added).
`
`15
`
`AnnArbor_95897_1
`
`

`
`squarely within the goods covered by the claimed trade dress. The mutual injunction as to a very
`
`narrow configuration of wind chimes does not change these facts or eliminate QMl’s standing
`
`but, in fact, should act as a bar to registration.
`
`D
`
`Applicant and Her Counsel Should Be Sanctioned and Her Application Refused.
`
`Applicant hoped that QMT would not notice that the previously abandoned mark had
`
`been revived and published for opposition.
`
`In her submissions to the PTO, Applicant
`
`rnisrepresented the events on which she revived her application and repeats those falsehoods in
`
`her motion to dismiss. The clear and unambiguous language of the Settlement Agreement and
`
`Stipulated Mutual Injunction, not to mention her counsel’s own correspondence, demonstrate
`
`that these statements were knowingly, purposefully, and deceitfully made in an effort to procure
`
`a registration by false or fraudulent means This behavior cannot be condoned and warrants a
`
`sanction ofrefusal ofthe registration and/orjudgrnent for QMT. See 15 U.S .C. § ll20.
`
`The Board is empowered to sanction improper conduct, up to and including entry of
`
`judgment, through applicability of'Fed. R. Civ. P. 11 and the Board’s inherent authority Central
`
`Mfg., Inc. v. Tlzird Milleni'um Technology, Inc., 61 U SPQ 2d 1210 (TTAB 2001); Carrinr, Inc.
`
`v. Carla Carini S.R.L., 57 U.S.P.Q.2d 1067 (TTAB 2000); see Tradernark Rule 2.ll6(a); TBMP
`
`§ 529.01. Sanctions under this authority are appropriate for filings presented to the Board “for
`
`any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the
`
`cost of litigation ” Fed. R Civ. P. 1l(b)(l). Applicant’s conduct certainly increases the costs to
`
`QMT .
`
`Applicant first made false representations in response to the Oflice Action, including that
`
`a court had made certain findings when no such findings ever‘ were made. Now she seeks to
`
`dismiss an Opposition slze previously acknowledged as permissible through further false
`
`16
`
`AnnArbor_95897_7
`
`

`
`statements in a pleading before this Board, As the Board has recognized, “[a] party is generally
`
`bound by the acts or omissions of its attorney,
`
`including the consequences of sanctions,”
`
`Carrini, 57 U.S.PQ.i2d 1067; see Johnson v, Dept. of Treasury, 721 P.2d 361, 365 (Fed. Cir:
`
`1983) (petitioner cannot avoid consequences of acts or omissions of its freely selected agent),
`
`Refusal of the Application and/or entry of judgment for QMT restores the status quo and
`
`therefore is the appropriate sanction to deter such egregious conduct.
`
`CONCLUSION
`
`For the foregoing reasons, QMT requests the Board deny the motion, grant QMI’s
`
`Opposition, refuse App1icant’s application for registration, and sanction her and her counsel.
`
`BODMAN LLP
`
`<?Mm/v
`By:
`
`
`
`Susan M. Kornfie
`Alan N, Harris
`
`Angela Alvarez Sujek
`Attorneys for Opposer
`110 Miller, Suite 300
`
`Ann Arbor, Michigan 48104
`734-761 -3780
`
`1 7
`
`AnnArbor_95897”1
`
`

`
`Certificate of Mailing
`
`I hereby certify that the enclosed Brief in Response to Applieant’s Motion to Dismiss
`
`Opposition for Lack of Standing (Opposition No
`
`91165753),
`
`regarding the mark
`
`“MISCELLANEOUS DESIGN,” Serial No. 78/213,865, which will be filed electronically with
`
`the Trademark Iiial and Appeal Board as of today’s date, is being sent via US, Mail to:
`
`Daniel Lundeen
`
`1 916 Baldwin
`
`Houston, Texas 77002
`
`Name ofperson certifying mailing: Lori L. I-Iignite
`
`Signature:
`
`Date of Signing: September 6, 2005
`
`1.8
`
`AnnArbor_9589T_1
`
`

`
`

`
`,
`
`swfimw.
`
`MUSH
`
`EOF
`
`"TH E SPH ERES
`
`
`

`
`Hpr
`
`1D U1 11:U7a
`
`our HSSUCIHTES
`32
`
`7oa 3s2'1334
`
`IN THE UNITED STATES DISTRECT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`CIVIL ACTION NO. O1-CV—'1001
`JURY TRIAL DEMAN DED
`
`§ § § § § § § § § §
`
`§
`
`SARA NEAL ESKEW, INDIVIDUALLY
`AND AS REPRESENTATIVE OF THE
`ESTATE OF LAWRENCE GLENN ROARK
`
`d/b/a MUSIC OF THE SPHERES
`Plaintiff
`
`VS,
`
`QMT ASSOCIATES, INC..
`Defendant
`
`AMENDED COMPLAINT
`
`Sara Neal Eskew, individually and as representative