Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA387382
`ESTTA Tracking number:
`01/07/2011
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168789
`Plaintiff
`Take-Two Interactive Software, Inc.
`KARIN G. PAGNANELLI
`MITCHELL SILBERBERG & KNUPP LLP
`11377 W OLYMPIC BLVD.
`LOS ANGELES, CA 90064-1683
`UNITED STATES
`kgp@msk.com, ejg@msk.com, all@msk.com, kls@msk.com, sgd@msk.com
`Reply in Support of Motion
`Alexa L. Lewis
`all@msk.com, kls@msk.com
`/s/ Alexa L. Lewis
`01/07/2011
`91168789-REPLY IN SUPPORT OF OPPOSER'S MOTION FOR LEAVE TO
`AMEND (3456347).PDF ( 7 pages )(20647 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
`Signature
`Date
`Attachments
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`ESTTA387382
`ESTTA Tracking number:
`01/07/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168789
`Plaintiff
`Take-Two Interactive Software, Inc.
`KARIN G. PAGNANELLI
`MITCHELL SILBERBERG & KNUPP LLP
`11377 W OLYMPIC BLVD.
`LOS ANGELES, CA 90064-1683
`UNITED STATES
`kgp@msk.com, ejg@msk.com, all@msk.com, kls@msk.com, sgd@msk.com
`Reply in Support of Motion
`Alexa L. Lewis
`all@msk.com, kls@msk.com
`/s/ Alexa L. Lewis
`01/07/2011
`91168789-REPLY IN SUPPORT OF OPPOSER'S MOTION FOR LEAVE TO
`AMEND (3456347).PDF ( 7 pages )(20647 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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`Opposition No.: 91168789
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark
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`Application Serial No.: 78/492,687
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`Filing Date: September 30, 2004
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`Mark: ROCKSTAR
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`Publication Date: September 13, 2005
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`Int’l Class: 41
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`______________________________________________)
`TAKE-TWO INTERACTIVE
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`SOFTWARE, INC.,
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`Opposer,
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`RUSSELL G. WEINER,
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`Applicant.
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`In the Matter of Trademark
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`Application Serial No.: 78/725,675
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`Filing Date: October 3, 2005
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`Mark: ROCKSTAR
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`Publication Date: September 26, 2006
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`Int’l Class: 30
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`______________________________________________)
`TAKE-TWO INTERACTIVE
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`SOFTWARE, INC.,
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`Opposer,
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`RUSSELL G. WEINER,
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`Applicant.
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`Opposition No.: 91175317
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`REPLY IN SUPPORT OF OPPOSER’S MOTION FOR LEAVE TO AMEND
`NOTICE OF OPPOSITION
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`On November 30, 2010, Opposer filed a Motion for Leave to Amend its Notice of
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`Opposition to add the additional ground that Applicant Russell G. Weiner (“Applicant”) had no
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`bona fide intent to use the ROCKSTAR mark in Class 41 for “entertainment in the nature of
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`football, baseball, basketball and hockey games; organization of sporting events in the field of
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`football, baseball, basketball and hockey.” As outlined in Opposer’s motion, the discovery
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`response underlying this additional ground was only served by Applicant two weeks prior to
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`Opposer filing its motion. In amending its Notice of Opposition, Opposer also took the
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`opportunity to (i) modify the Notice to consolidate the two underlying Notices, (ii) update the
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`registration status of its trademarks, and (iii) formally delete its dilution claim.
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`Weiner’s Opposition to the Motion to Amend misstates both fact and law in an odd
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`attempt to force Opposer to pursue a dilution claim it is not required to pursue and which was
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`filed before a significant change in dilution law.1 Opposer Take-Two Interactive Software, Inc.
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`(“Opposer”) files this brief reply to correct the misstatements by Applicant.
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`Opposer’s Motion is Timely. Applicant falsely states that Opposer waited “almost five
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`years” to move to amend. This is simply not true: Applicant’s Motion for Leave to Amend is
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`related to discovery served less than 30 days prior to the filing of the Motion.
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`As Applicant is well aware, Opposer filed the motion almost immediately after
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`Applicant’s service of his November 15, 2010 supplemental response to Opposer’s Document
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`Request No. 15, which forms the basis of the motion. That November 15, 2010 supplemental
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`1
`The Notice of Opposition in Class 41 was filed prior to the implementation of the
`Trademark Dilution Revision Act or TDRA.
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`response (which was required by the Board’s November 3, 2010 Order on Opposer’s Motion to
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`Compel), revised a previous response, which made clear to Opposer for the first time that
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`Applicant had no documents to support his purported bona fide intended use of the mark
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`ROCKSTAR for the applied-for services. See Declaration of Alexa L. Lewis (“Lewis Decl.”),
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`Ex. 3. Opposer filed the present motion just fifteen days later, on November 30, 2010. Even the
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`caselaw cited in Weiner’s Opposition – which concerns delay of eight months to two years –
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`supports the timeliness of Opposer’s motion (filed within fifteen days). See also Karsten Mfg.
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`Corp. v. Editoy AG, 79 U.S.P.Q.2d 1783 (T.T.A.B. 2006) (no delay in filing a motion to amend
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`more than two months after obtaining information during a discovery deposition); Turbo
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`Sportswear Inc. v. Marmot Mt. Ltd., 77 U.S.P.Q.2d 1152 (T.T.A.B. 2005) (no delay in filing a
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`motion to amend more than one month after obtaining information that led to new
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`counterclaims); Cashflow Techs, Inc. v. NetDecide, 2002 WL 192410 (T.T.A.B. 2002) (no
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`delay in filing motion to amend one month after close of discovery where motion was based on
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`information obtained during discovery).
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`Moreover, in compliance with the Board’s November 3, 2010 Order, Opposer filed the
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`motion just after the testimony period opened. (Opposer first met and conferred with Applicant
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`regarding the Motion, and previously gave Applicant notice that Opposer would file the motion.)
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`Lewis Decl., ¶ 7. Opposer also spoke to the Interlocutory Attorney, who confirmed that Opposer
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`had followed the correct procedure by filing the Motion after the testimony period had opened.
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`Filed only two weeks after disclosure of the facts giving rise to the motion, and filed very close
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`to the earliest day the Motion could have been filed, the Motion is unquestionably timely.
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`Applicant Will Not Be Prejudiced if Opposer’s Motion is Granted. Contrary to the
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`statements in the Opposition, Applicant will not be prejudiced if Opposer’s motion is granted.
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`Prejudice is not possible under these circumstances, where the evidence relevant to Applicant’s
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`bona fide intention to use is entirely within his own control and the lack of such evidence only
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`became apparent two weeks before Opposer’s Motion was filed.
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`Applicant asserts that Opposer prejudiced Applicant by intentionally withholding the
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`Motion so as to “attempt[] an end-run around bringing the claim during the discovery period.”
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`Opp. at 5. There is absolutely no support for Applicant’s argument and his assertion is
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`demonstrably false. The original discovery period in Opposition No. 91168789 closed on
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`October 16, 2006. Applicant served supplemental discovery responses on November 15, 2010,
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`two weeks prior to the motion being filed. Opposer could not have filed the Motion until after
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`service of those responses. Moreover, Opposer filed the Motion long before the opening of
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`Applicant’s testimony period (although Applicant had notice of the Motion even before then),
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`and almost three months before the close of Applicant’s testimony period. November 3, 2010
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`Order at 9. Accordingly, no prejudice will occur.
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`Applicant also argues that he will be prejudiced because “Opposer … has deprived
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`Applicant of the ability to recover evidence which was not preserved because it was thought not
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`to be at issue in this proceeding.” Opp’n. at 2. Without resorting to hyperbole, this argument is
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`bizarre: Evidence of Applicant’s intent to use ROCKSTAR in connection with “entertainment in
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`the nature of football, baseball, basketball and hockey games; organization of sporting events in
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`the field of football, baseball, basketball and hockey” is clearly relevant to this Opposition and
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`was the subject of repeated discovery requests by Opposer. Indeed, such evidence was first
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`requested by Opposer on March 30, 2006, providing more than four year’s notice to Applicant
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`that this material should be preserved. Any alleged failure by Applicant to preserve any such
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`evidence is not the fault of Opposer and certainly not related to the Motion at hand.
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` Opposer May Appropriately Withdraw Its Dilution Claim. Contrary to Applicant’s
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`wholly unsupported argument to the contrary, Opposer may withdraw its dilution claim without
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`having judgment entered against it. Opposer knows of no case law to suggest otherwise and
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`Applicant has cited no case law in support of his novel proposition.
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`The law is clear that parties need not obtain Board permission prior to dropping a claim,
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`even at the trial stage. For example, in Nano-Proprietary, Inc. v. Canon, Inc., 537 F.3d 394 (5th
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`Cir. 2008), the plaintiff voluntarily dismissed its fraud claim during trial without filing a motion
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`to amend, and proceeded with its contract claim. Likewise, in Ruiz v. A.B. Chance Co., 234
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`F.3d 654, 57 U.S.P.Q.2d 1161 (Fed. Cir. 2000), the counterclaim plaintiff did not file a motion to
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`amend, but rather simply voluntarily dismissed certain of its patent infringement claims during
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`trial while proceeding with other of its patent infringement claims. In McGuire v. Warner, 2009
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`WL 3011623 (E. D. Mich. 2009), the plaintiff voluntarily dismissed one of his four tort claims
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`during trial, without moving to amend. There are many other cases that may be cited as
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`examples to support the Opposer’s position, while Opposer found no cases in its research that
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`supported the position of the Applicant.
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`Allowing a party to dismiss claims without the need to file a motion to amend is also
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`consistent with local district court practice. For example, pursuant to the Local Rules of the
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`Central District of California, if a party decides to abandon a claim prior to trial, the party need
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`only “identify any pleaded claims or affirmative defenses which have been abandoned,” in their
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`memorandum of law. C.D. Cal. R. 16-4.6; see also C.D. Cal. R. 16-2.8 (in the pretrial
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`conference report, “Each party shall disclose to every other party which of the party’s pleaded
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`claims and defenses the party plans to pursue”). Applicant has not cited a single case or other
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`source of authority in support of the notion that Opposer needs permission to drop its dilution
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`claim or that it may be prevented from doing so for any reason.
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` For the reasons discussed above and in Opposer's moving papers, Opposer respectfully
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`requests that the Board enter an order allowing the amendment of Opposer’s Notice of
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`Opposition, pursuant to either Rule 15(a) or (b).
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`Dated: January 7, 2011
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`MITCHELL SILBERBERG & KNUPP LLP
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`By:
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`/s/ Alexa L. Lewis
`Karin G. Pagnanelli
`Eric J. German
`Alexa L. Lewis
`11377 West Olympic Blvd.
`Los Angeles, CA 90064-1683
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`Attorneys for Opposer
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`5
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`CERTIFICATE OF ELECTRONIC TRANSMISSION
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`I hereby certify that this correspondence is being transmitted electronically through
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`ESTTA pursuant to 37 C.F.R. §2.195(a) on January 7, 2011.
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`/s/ Kimberly Stewart
`Kimberly Stewart
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`CERTIFICATE OF SERVICE
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`This is to certify that on January 7, 2011, I caused a true and correct copy of the
`foregoing REPLY IN SUPPORT OF OPPOSER’S MOTION FOR LEAVE TO AMEND
`NOTICE OF OPPOSITION to be delivered via e-mail and first-class mail to:
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`Ian K. Boyd, Esq.
`Naomi Jane Gray, Esq.
`Harvey Siskind LLP
`Four Embarcadero Center, 39th Floor
`San Francisco, CA 94111-4115
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`Executed this 7th day of January, 2011, in Los Angeles, California.
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`/s/ Kimberly Stewart
`Kimberly Stewart
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`6
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