Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA216582
`ESTTA Tracking number:
`06/09/2008
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168402
`Defendant
`Inofin
`Thomas P. O'Connell, Esq.
`O'Connell Law Ofice
`1026A Massachusetts Avenue
`Arlington, MA 02476
`UNITED STATES
`tpo@oconnellusa.com
`Motion to Suspend for Civil Action
`Thomas P. O'Connell
`tpo@oconnellusa.com
`/Thomas P. O'Connell/
`06/09/2008
`Opposition_Motion_to_Suspend.pdf ( 8 pages )(29751 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91168402
`Opposition No.:
`78/445,657
`App. Serial No.
`07/02/2004
`Filed:
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`Mark Walsh (Assignee from Inofin)
`Applicant:
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`DriveUSA
`Mark:
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`International Class: 036
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`___________________________________
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`DRIVE FINANCIAL SERVICES, LLP,
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`Opposer,
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`v.
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`MARK WALSH,
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`Applicant.
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`___________________________________ }
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`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION TO SUSPEND
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`For the reasons set forth herein, Opposer’s Motion to Suspend should be denied. While
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`the Trademark Trial and Appeal Board has the discretion to suspend proceedings before it when
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`parties are engaged in a civil action, suspension should be denied where, as in the case at hand,
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`the motion to suspend is untimely and based on a civil action devoid of viability.
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`Almost three years after filing its first request for an extension of time to oppose
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`Applicant’s registration and on the day its trial brief was due, Opposer Drive Financial Services,
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`LP’s moved to suspend this proceeding based on a civil action filed that same day. While
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`Opposer itself had chosen this forum, it apparently became discontent with the direction in which
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`the case has headed and now seeks to deprive the Board of the ability to decide the issues raised
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`with a motion filed on the very day of trial and after years of litigation. The civil action on
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`which Opposer’s motion is based is without personal jurisdiction, is in an improper venue, is
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`barred by laches, and is founded on knowingly false statements designed, among other things, to
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`support personal jurisdiction and otherwise to bolster Opposer’s case.
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`Pursuant to 37 CFR § 2.117(a), the Trademark Trial and Appeal Board (the TTAB) has
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`the discretion, but not the obligation, to suspend proceedings where the parties are engaged in a
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`civil action. However, a motion to suspend may be denied where it is untimely. See, e.g., Boyds
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`Collection Ltd. v. Herrington & Company, 65 USPQ2d 2017 (TTAB 2003); E.I. du Pont de
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`Nemours and Company v. G.C. Murphy Company, 199 USPQ 807 (TTAB 1978); Ortho
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`Pharmaceutical Corporation v. Hudson Pharmaceutical Corporation, 178 USPQ 429 (TTAB
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`1973). Indeed, Rule 2.117(b) expressly provides that, where both a motion to suspend and a
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`potentially dispositive motion are pending, the Board may decide the potentially dispositive
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`motion before even considering the question of suspension “regardless of the order in which the
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`motions were filed.”
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`In Ortho Pharmeceutical, the Board wrote in denying the motion to suspend that the
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`party opposing the same “is entitled to a decision on the record before us.” 178 USPQ at 430. In
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`E.I. du Pont de Nemours and Company, the Board noted the time the opposition was pending
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`and the status of the proceeding and concluded that an expeditious resolution of the TTAB case
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`without suspension was warranted. 199 USPQ at 808, n. 3. In Boyds Collection Ltd., despite
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`refusing to consider the respondent’s opposition to the motion to suspend, the Board observed
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`that “the explicit provisions of Trademark Rule 2.117(b) make clear that suspension is not
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`necessarily the result in all cases” and found that “suspension is neither necessary nor
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`appropriate.” 65 USPQ2d 2017.
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`Here, the Opposer’s motion to suspend comes on the day of trial and by the party that
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`chose the TTAB as the forum of adjudication nearly three years ago. It is respectfully submitted
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`that Opposer should not be permitted to deprive the Applicant and the Board of the right to a
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`decision on the merits, particularly since the Board proceeding is nearly completed and since the
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`parties have already developed an extensive record with cross-motions for summary judgment,
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`notices of reliance, and otherwise. Mere dissatisfaction with what may have been perceived as a
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`negative direction before the Board should not serve as the basis for vitiating years of effort by
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`the litigants and the Board.
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`Even beyond the foregoing, an essential predicate for suspending a TTAB proceeding
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`based on a pending civil action is that the civil action is in fact viable. As Applicant’s
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`memorandum in support of his motion for summary judgment, which is incorporated herein by
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`reference for efficiency, expounded upon, a finding of a likelihood of confusion is prevented by
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`the descriptive or at best suggestive nature of the common element DRIVE as applied to
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`automobile services, the differences in the marks, and the many other users of marks with the
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`same common element. However, one may forego resolving the issue of confusion. The civil
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`action in the U.S. District Court for the Northern District of Texas was knowingly filed without
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`personal jurisdiction, in an improper venue, and by a party demonstrating egregious laches
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`barring any legitimate claims against the Applicant.
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`In Opposer’s complaint, which was submitted as Exhibit 1 to their motion to suspend,
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`personal jurisdiction purports to be founded on the allegation that “upon information and belief,
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`[Applicant] engage[s] in continuous and systematic activities within the State of Texas.”
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`Complaint, ¶ 6. Opposer further alleges that Applicant “intentionally directed tortious activities
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`toward the State of Texas by, among other acts, registering, using and maintaining the interactive
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`website, driveusa.com, over which the infringing goods or services were promoted, advertised,
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`and/or sold.” Ibid. Still further, Opposer asserts that “because, by choosing a name that might be
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`found to be confusingly similar to that of Drive’s service marks, Defendants assumed the risk of
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`injuring valuable property located in Texas. Ibid.
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`However, the record in this proceeding and the law belie Opposer’s assertions. The
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`deposition of Applicant Mark Walsh, submitted by Opposer in conjunction with its second
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`Notice of Reliance, demonstrates Opposer’s knowledge that Applicant has locations only in
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`Massachusetts and Rhode Island. Walsh Deposition, p. 7, lines 14-18. Applicant has no
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`locations in Texas, and its closest dealership to Texas is almost 2,000 miles away. Ibid.
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`Furthermore, Opposer is well aware that Applicant does not sell cars over the Internet but, in
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`Opposer’s counsel’s own words, “primarily sell them through the locations”. Opposer’s
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`assertion in support of personal jurisdiction that Applicant engages in continuous and systematic
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`activities within the State of Texas is knowingly untrue.
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`Furthermore, contrary to Opposer’s assertion, merely establishing a website does not
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`comprise intentionally directing one’s activities toward the State of Texas. Likewise, merely
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`choosing a trademark does not ipso facto cause one to “assume the risk of injuring valuable
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`property located in Texas.” Instead, to justify the exercise of personal jurisdiction, it must be
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`shown that the defendant has minimum contacts with the state and that the exercise of
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`jurisdiction will not offend traditional notions of fair play and substantial justice. See, e.g.,
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`Novamerican Steel, Inc. and Noval Tube and Steel, Inc. v. Delta Brands, Inc., 231 S.W.3d 499
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`(Tex. App. 2007) (citing Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). To establish
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`minimum contacts, the defendant must have purposefully availed itself of the privilege of
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`conducting activities in the relevant jurisdiction and enjoyed the benefits and protections of its
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`laws. Ibid.
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`Here, Opposer is well aware that Applicant does not have minimum contacts with Texas,
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`that Applicant has not purposefully availed itself of the privilege of doing business there, and has
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`not enjoyed the benefits and protections of its laws. Opposer’s sole logical basis is a knowing
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`falsity. The mere establishment of a website or adoption of a trademark cannot under any
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`reasonable analysis provide a basis for personal jurisdiction in a faraway state. If it did,
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`substantially every modern business, however small, would be subject to suit in every state of the
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`union. Indeed, in Novamerican Steel, Inc., it was held that personal jurisdiction was not
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`established by a mere internet presence where the party “does not advertise in Texas, has no
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`physical presence in Texas, performs all of its business services outside Texas”. 23 S.W.3d 499.
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`There is simply no basis for compelling Applicant to appear before the courts in Texas.
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`Still further, despite its self-proclaimed gargantuan budge, Opposer delayed in initiating
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`the civil action for approximately three years after it first demonstrated its express knowledge of
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`Applicant’s trademark usage. Since then, ownership of the DriveUSA mark has been assigned,
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`and Applicant has changed position substantially. Even assuming Opposer once had a valid
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`cause of action, which it did not, its right to assert the same would be barred by laches.
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`With its 1992 decision in A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020
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`(FED. CIR. 1992), the Court of Appeals for the Federal Circuit sought to provide clear and
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`coherent guidance for the determination of when the equitable defense of laches may intervene to
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`prevent the determination of patent infringement claims based on a delay of a patentee in
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`asserting the same. The court noted that laches “invokes the discretionary power of the district
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`court to limit the defendant's liability for infringement by reason of the equities between the
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`particular parties.” Id. at 1030. (Emphasis in original.) (Citations omitted.) Laches is found
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`where “1. the plaintiff delayed filing suit for an unreasonable and inexcusable length of time
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`from the time the plaintiff knew or reasonably should have known of its claim against the
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`defendant, and 2. the delay operated to the prejudice of the defendant.” Id. (Citations omitted.)
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`“Material prejudice to adverse parties resulting from the plaintiff's delay is essential to
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`the laches defense.” Aukermen at 1033. The prejudice can be economic or evidentiary. Id.
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`“Evidentiary, or ‘defense’ prejudice, may arise by reason of a defendant's inability to present a
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`full and fair defense on the merits due to the loss of records, the death of a witness, or the
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`unreliability of memories of long past events, thereby undermining the court's ability to judge the
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`facts.” Id. (Citations omitted.). “Economic prejudice may arise where a defendant and possibly
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`others will suffer the loss of monetary investments or incur damages which likely would have
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`been prevented by earlier suit.” Id. (Citations omitted.) A “change in the economic position of
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`the alleged infringer during the period of delay” justifies a finding of laches. Id. (Citations
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`omitted.); See, also, Trustees of Columbia University in City of New York v. Roche Diagnostics
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`GmbH, 272 F.Supp.2d 90 (D.Mass. 2002).
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`In the instant case, Opposer has delayed for an unreasonable and inexcusable amount of
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`time while having express knowledge of Applicant’s conduct, and the delay has operated to the
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`severe prejudice of the Applicant. During the three or more years that the Opposer has delayed,
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`the Applicant has purchased the mark in reliance on Opposer’s inaction, made plans for further
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`business locations within its operating area, and has otherwise increased its attachment to the
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`DriveUSA mark just now found by Opposer to justify court action. Opposer’s action is barred.
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`Because Opposer’s motion to suspend is untimely and is based on a civil action without
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`viability based on, inter alia, a lack of personal jurisdiction, laches, improper venue, and, most
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`fundamentally, a lack of confusion between the common DRIVE component of the marks,
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`Opposer’s motion to suspend should be denied and the action should be decided on its merits.
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`Respectfully submitted,
`Applicant Mark Walsh by his
`Attorney,
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`/Thomas P. O’Connell/
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`Thomas P. O’Connell, Esq.
`O’Connell Law Office
`tpo@oconnellusa.com
`1026A Massachusetts Avenue
`Arlington, MA 02476
`Telephone: 781.643.1845
`Facsimile: 781.643.1846
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`Dated: June 9, 2008
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`Certificate of Service
`I hereby certify that a true and complete copy of the
`foregoing Opposition to Opposer’s Motion to
`Suspend has been served on Opposer by mailing
`said copy on June 9, 2008, via First Class U.S. Mail,
`postage prepaid, to:
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`Nhut Tan Tran, Esq.
`Hermes Sargent & Bates, L.L.P.
`901 Main Street, Suite 5200
`Dallas, Texas 75202
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`/Thomas P. O'Connell/
`Thomas P. O'Connell, Esq.
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`June 9, 2008
`Date
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`Certificate of Transmission
`I hereby
`certify
`that
`the
`foregoing
`Opposition
`to Opposer’s Motion
`to
`Suspend was filed with the Trademark Trial
`and Appeal Board using
`the Electronic
`System for Trademark Trials and Appeals
`(ESTTA) on June 9, 2008.
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`/Thomas P. O'Connell/
`Thomas P. O'Connell, Esq.
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`June 9, 2008
`Date
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`8