estta-server@uspto.gov
`
`To mwilkes@j oncsdayxcom
`CC
`
`09/15/2006 02:58 PM
`
`bee
`
`Subject ESTTA. Other Motions/Papers confirmation receipt ID:
`ESTTA99524
`
`Opposition No.: 91171230
`
`Tracking No: ESTTA99524
`
`ELECTRONIC SYSTEM FOR TRADEMARK TRIALS AND APPEALS Filing Receipt
`
`We have received your Opposition No.: 91171230 submitted through
`the Trademark Trial and Appeal Board's ESTTA electronic filing
`system. This is the only receipt which will be sent for this
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`
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`
`Printable version of your request is attached to this e-mail
`
`ESTTA server at http://esttauspto. gov
`
`ESTTA Tracking number: ESTTA99524
`Filing date: 09/15/2006
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`

`
`Proceeding: 91171230
`Party: Defendant
`Raser Technologies, Inc.
`Raser Technologies, Inc.
`5152 North Edgewood Drive, Suite 375
`Provo, UT 84604
`
`Correspondence Address: Meredith M. Wilkes, Esq.
`JONES DAY
`North Point901 Lakeside Avenue
`Cleveland, OH 44114
`UNITED STATES
`
`mwi1kes@jonesday.com Phone:
`
`Submission: Other Motions/Papers
`
`Fi1er's Name: Meredith M. Wilkes
`Filer’s e-mail: mwilkes@jonesday.com
`Signature: /s/ Meredith M. Wilkes
`Date: 09/15/2006
`
`Attachments: DOC006.PDF ( 7 pages )
`
`

`
`USPTO. ESTTA. Receipt
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`ESTTA Tracking number: ESTTA99524
`
`Filing date:
`
`09/15/2006
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`. Party
`
`
`
`Submission
`
`Cleveland, OH 44114
`UNITED STATES
`
`
`
`mwilkes@jonesday.com
`
`Other Motions/Papers
`
`
`
`
`
`Filer's Name
`
`Meredith M. Wilkes
`
`
`
`
`
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`I
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`
`
`
`
`
`Filer's e-mail
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`mwilkes@jonesday.com
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`Signature
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`/s/ Meredith M. Wilkes
`
`Date
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`09/ 15/2006
`
`Attachments
`
`
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`DOCO06.PDF ( 7 pages )(141657 bytes )
`
`Return to ESTTA l_i9_me__page Star_t__gnQt1ieLESTTA filing
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`9/15/2006
`
`91111230
`
`Defendant
`
`
`
`Raser Technologies, Inc.
`Raser Technologies, Inc.
`5152 North Edgewood Drive, Suite 375
`Provo, UT 84604
`
`JONES DAY
`
`North Point90l Lakeside Avenue
`
`
`
`
` Meredith M. Wilkes, Esq.
`
`
`
`
`
`
`
`Correspondence
`Address
`
`
`
`
`

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`USPTO. ESTTA. Receipt 0
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`h’ pr//estta.uspto .gov/com/receipt.j sp?iname=KVMN6DR3UPAB- 1 927
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`9/ 1 5/2006
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`

`
`IN THE UNITED STATES PATENT AND
`TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`RAZOR USA LLC,
`
`.
`
`Opposer,
`
`v.
`
`RASER TECHNOLOGIES, INC.,
`
`Applicant.
`
`%/%/%%/\/\n/\/\-’%
`
`Opposition No. 91171230
`
`Application Serial No. 78/339,071
`
`Published in the Official
`
`Gazette on December 6, 2005
`
`APPLICANT RASER TECHNOLOGIES, INC.’S MOTION FOR LEAVE. TO FILE A
`REPLY MEMORANDUM IN SUPPORT OF ITS MOTION TO
`
`DISMISS FOR FAILURE TO JOIN AN INDISPENSABLE PARTY,
`MOTION TO DISMISS FOR FAILURE TO
`STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED AND MOTION FOR
`MORE DEFINITE STATEMENT
`'
`
`Applicant, Raser Technologies, Inc. (“Applicant”) hereby moves the Trademark Trial and
`
`Appeal Board for an Order granting it leave to file a Reply Memorandum in support of its
`
`Motion to dismiss Opposer Razor USA LLC’s Notice of Opposition for failure to join an
`
`indispensable party pursuant to Federal Rule of Civil Procedure’l9; Motion to Dismiss for failure
`
`to state a claim upon which relief can be granted and motion for more definite staetment.
`
`Good cause exists for this Motion. In an opposition filed on August 28, 2006, Opposer
`
`raised new matter which, when viewed against the appropriate legal standard, is germane to the
`
`proper resolution of Applicant’s Motion. A proposed Reply Memoradum is attached hereto as
`
`Exhibit A and by reference is herein incorporated.
`
`WHEREFORE Applicant prays for an Order granting it leave to file the Reply
`
`Memorandum attached hereto as Exhibit A.
`
`CLI-M48371 VI
`
`

`
`Dated: September 15, 2006
`
`Respectfully submitted,
`
`=86/UVL(
`
`Robert P. Ducatman (0003571)
`Meredith M. Wilkes (0073092)
`JONES DAY
`North Point
`
`901 Lakeside Avenue
`
`Cleveland, OH 44114-1190
`Telephone: (216) 586-3939
`Facsimile:
`(216) 579-0212
`rducatman@jonesday;com
`mwi1kes@jonesday.com
`
`Attorney for Applicant
`RASER TECHNOLOGIES, INC.
`
`Of Counsel
`
`James W. Peterson, Esq.
`JONES DAY
`
`2882 Sand Hill Road, Suite 240
`Menlo Park, CA 94025-7064
`
`CLI-l44837lvl
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Motion for Leave to File Reply 1/
`Memorandum and Exhibits attached thereto was sent via U.S. mail, postage prepaid, on this I §
`day of September, 2006 to:
`
`Stacey R. Halpem, Esq.
`Knobbe Martens Olson & Bear LLP
`2040 Main Street
`Fourteenth Floor
`
`Irvine, California 92614
`
`Attorneys for Opposer
`
`CLI-I44837lvl
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND
`TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91171230
`
`Application Serial No. 78/339,071
`
`Published in the Official
`Gazette on December 6, 2005
`
`)
`)
`)
`)
`)
`)
`
`) )
`
`)
`
`RAZOR USA LLC,
`
`Opposer,
`A
`
`v.
`
`RASER TECHNOLOGIES, INC.,
`
`Applicant.
`
`APPLICANT RASER TECHNOLOGIES, INC.’S REPLY MEMORANDUM IN
`SUPPORT OF ITS MOTION TO
`
`DISMISS FOR FAILURE TO JOIN AN INDISPENSABLE PARTY,
`MOTION TO DISMISS FOR FAILURE TO
`
`STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED AND MOTION FOR
`MORE DEFINITE STATEMENT
`
`INTRODUCTION
`
`On August 14, 2006, Applicant, Raser Technologies, Inc., (“Applicant”) filed a Motion to
`
`Dismiss the Notice of Opposition filed by Raser USA LLC (“Opposer”) on the grounds that: (1)
`
`Opposer failed to join an indispensable party, namely, the owner of three of the Federal
`
`Registrations which form the basis for the Notice of Opposition; and (2) Opposer fails to state a
`
`claim upon which relief can be granted for dilution. Opposer filed an opposition to App1icant’s
`
`Motion on August 28, 2006 asserting that App1icant’s Motion is moot in light of purported
`
`assignments of the Federal Registrations which took place after the Notice of Opposition was
`
`filed. A review of Opposer’s submission against the proper legal standard reveals that
`
`Applicant’s Motion to Dismiss should be granted in its entirety.
`
`CLI-14481 34vl
`
`

`
`ARGUMENT
`
`A.
`
`The Facts As Alleged in the Notice of Opposition Dictate Dismissal.
`
`It is a basic tenet of the Federal Rules of Civil Procedure that the legal sufficiency of the
`
`Notice of Opposition is detennined by a review of the facts as pled in the Notice. Although
`
`Opposer is entitled to reasonable factual inferences, it is not entitled to judicial notice of legal
`
`conclusions, nor is it entitled to judicial notice of a claim when one does not exist. Yet, that is
`
`precisely what Opposer seeks. The facts, as pled in the Notice, reveal that the owner of the
`
`Federal Registrations pled in the Notice has not been joined as a party. As such, the plenary case
`
`law set forth in Applicant’s initial Memorandum dictates that dismissal is warranted.
`
`In an attempt to circumvent the doom certain to befall its claims, Opposer cavalierly
`
`asserts that it is now the “owner” of the three federal registrations alleged in the Notice to be
`
`owned by another entity, J.D. Components Co. Ltd. (“JD Components”) Notably, Opposer does
`
`not supply any evidentiary support for this assertion, no affidavit is filed in support of the claim,
`
`the assignment documents have not been provided, nor does Opposer even point to a reel and
`
`frame number evidencing these purported assignments. Indeed Opposer simply asserts, without
`any support, that JD Components no longer owns the Federal Registrations pled in the Notice
`
`and that as a result of such an assignment, JD Components is not a necessary and indispensable
`
`party. Even if counsel’s argument is true, it belies the allegations in the Notice. (See ‘[[1] s 1-2, 4-
`
`7 of the Notice of Opposition). As such, on the basis of the facts as pled, dismissal is warranted.
`
`Even if the Board were inclined to look beyond the face of the Notice, which it should
`
`not, the purported assignment does not defeat dismissal. Only a complete assignment of the
`
`owner’s rights in a trademark, including the right to sue infringers, renders the owner dispensable
`
`from a suit involving that mark.
`
`_S_e_e Switzer Bros., Inc. v. Byge, 242 F.2d 909, 913 (6th Cir.
`
`CLl—l448l34vl
`
`

`
`1957) (affrnning the dismissal of a licensee’s claim for failureto join all owners of the patent
`
`despite a subsequent assignment of the rights to the licensee.); see Leo Procter & Gamble Co. v.
`
`Paragon Trade Brands, Inc., 917 F. Supp. 305, 312 (D. Del. 1995) (holding that the assignor was
`
`not a necessary party because the complete post-complaint assignment of all the patent rights
`
`removed any stake the assignor had in the litigation); Procter & Gamble v. Kimberly-Clark Corp,
`
`684 F. Supp. 1403,1407 (N.D. Dist. 1987) (holding that a party which assigns all of its rights and
`
`interests under a patent is not necessary to the litigation because it no longer has a sufficient
`
`stake in the outcome). Moreover, merely labeling a transfer of rights as an assignment does not
`make it so. The legal effect ofthe provisions determine whether the transfer is
`assignment or
`a license. Procter & Gamble v. Kimberly-Clark Corp. at 1404; see gill Sunrise Med. HHG v.
`
`Airsep Corp, 95 F. Supp. 2d 348, 437 (D. Pa. 2000) (holding that “the mere fact that Sunrise
`recorded what purports to be an assignment document does not mean, without more, that the
`
`assignment was valid or transferred title to the patent”)
`
`The Board has not been presented with any evidence whatsoever that an assignment took
`
`place or that the alleged assignment removes all interest J.D. Components has in the marks and
`
`registrations at issue. First, there is no evidence that J.D. Components surrendered any rights to
`
`the Federal Registrations. Opposer has not provided an affidavit demonstrating that the Federal
`
`Registrations have been assigned. Opposer has not provided an affidavit from J .D. Components
`
`demonstrating that it does not have any rights to the marks covered by the Federal Registrations.
`
`Opposer has not provided an affidavit which demonstrates that J.D. Components is no longer
`
`using the marks covered by the Federal Registrations. The Notice of Opposition alleges use by
`
`JD. Components, and nothing in Opposer’s response indicates that J .D. Components has ceased
`
`to use the marks covered by the Federal Registrations. In short, counsel for Opposer’s mere
`
`CLI-l448l34vl
`
`

`
`assertion that an assignment took place is not sufficient to establish that JD. Components no
`
`longer has a stake in the Opposition and is no longer an indispensable party. Based upon the
`
`facts alleged in the Notice of Opposition, it is plain that J.D. Components is an indispensable
`
`party to the Opposition. As such, the Opposition should be dismissed.
`
`B.
`
`0pposer’s Dilution Claim Fails As A Matter of Law.
`The purported assignment of the Federal Registrations has no effect on the viability of
`
`Opposer’s dilution claim. As a matter of law, it still fails. A subsequent assignment of a claim
`
`cannot cure the standing defect that existed at the time the Notice was filed. Procter Gamble
`
`Co. v. Paragon Trade Brands, lnc., 917 F. Supp. 305, 310 (D. Del. 1995) (holding that “allowing
`
`a subsequent assignment to automatically cure a standing defect would unjustifiably expand the
`
`number of people who arevstatutorily authorized to sue.” ; Afros S.P.A. v. Krauss-Maffei Corp,
`
`671 F. Supp. 1402, 1446 (D. Del. 1987) (holding that “subsequent acts cannot alter the status of
`
`an assignment in order to confer standing on a party that otherwise could not bring an
`
`infringement claim under United States patent law.”). If a party does not have standing at the
`
`inception of the claim, the suit should _be dismissed. Sicom Sys. Ltd. v. Agilent Technologies,
`Lng, 427 F.3d 971, 978-80 (affirming the dismissal with prejudice of a patent infringement suit
`
`for lack of standing where plaintiff was assigned fewer than all the substantial rights to a patent
`
`at the time the complaint was filed). At the time the Notice of Opposition was filed, Opposer
`
`was not the owner of the Federal Registrations. Thus, Opposer lacked standing to bring a
`
`dilution claim. Opposer cannot now revive a deficient claim by taking an assignment. As such,
`
`the dilution claim should be dismissed with prejudice.
`
`CLI-l448l34vl
`
`

`
`CONCLUSION
`
`For the foregoing reasons, Applicant prays for an Order dismissing this Opposition in its
`
`i
`
`entirety.
`
`Dated: September _, 2006
`
`Respectfully submitted,
`
`Robert P. Ducatman (0003571)
`Meredith M. Wilkes (0073092)
`JONES DAY
`North Point
`901 Lakeside Avenue
`
`Cleveland, OH 44114-1190
`Telephone: (216) 586-3939
`Facsimile:
`(216) 579-0212
`rducatman@jonesday.com
`mwilkes@jonesday.com
`
`Attorney for Applicant
`RASER TECHNOLOGIES, INC.
`
`Of Counsel
`
`James W. Peterson, Esq.
`I ONES DAY
`
`2882 Sand Hill Road, Suite 240
`Menlo Park, CA 94025-7064
`
`CLl-l<t48l34vl
`
`

`
`4
`
`.
`
`’
`
`‘W(o‘7L:&«’7"‘740/;
`
`Trademark Trial and Appeal Board Electronic Filing System. mmQgm
`
`ESTTA Tracking number:
`Filing date:
`
`ESTTA96587
`08/28/2006
`
`{
`
`,
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`.
`
`
`
`Party
`
`
`
`91171230
`Plaintiff
`RAZOR USA LLC
`
`
`
`
`
`signature
`
`
`
`
`
`
`
`
`
`
`
`Correspondence
`Address
`
`
`Stacey R. Halpern
`Knobbe, Martens, Olson &amp; Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`
`shalpem@kmob.com
`Other Motions/Papers
`
`

`
`RAZOR. 1 20M
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Razor USA LLC,
`
`Opposer
`
`’
`
`' V.
`
`Raser Technologies, Inc.
`
`Applicant.
`
`Opposition No.: 91,171,230
`
`Ihereby certify that this correspondence and all marked attachments are
`being electronically filed with the Trademark Trial and Appeal Board
`through their web site located at mtg://esttg,gspto.gov on
`
`August 28 2006
`
`453 (l.Uv~94“~
`
`Stacey R. Halpem
`
`%/%%\./\-/\J\/%N.J\J
`
`
`
`RAZOR USA LLC’S OPPOSITION TO RASER TECHNOLOGIES INC.’S MOTION
`
`TO DIMISS FOR FAILURE TO JOIN AN INDISPENSABLE PARTY
`
`MOTION TO DISMISS FOR FAILURE TO STATE A CLAIIVI
`
`UPON WHICH RELIEF CAN BE GRANTED, AND
`
`MOTION FOR A MORE DEFINITE STATEMENT
`
`Raser Technologies, Inc.’s (“Applicant”) Motion to Dismiss for Failure to Join an
`
`Indispensable Party, Motion to Dismiss for Failure to State a Claim Upon Which Relief Can be
`
`Granted, and Motion for a More Definite Statement (“Applicant’s Motion”) incorrectly argues
`
`that because Opposer, Razor USA LLC (“Razor”) was the exclusive licensee of J.D.
`
`Components C0,, Ltd.’s (“J,D.”) rights in the RAZOR mark (in addition to Razor’s own rights in
`
`the RAZOR name and mark), the Notice of Opposition should be dismissed since ID. is not a
`
`party to the Opposition proceeding.
`
`As a preliminary matter, Razor notes that under the terms of the license with J.D., as the
`
`exclusive licensee, it had the authority to enforce the RAZOR mark and had the authority to
`
`bring this action. Thus, J.D. was not an indispensable party. Avia Group International Inc. V.
`
`

`
`Faraut, 25 US. P.Q. 2d 1625 (T.T.A.B. 1993) (“an exclusive licensee may be the plaintiff in an
`
`opposition or cancellation proceeding before the Board. There is no requirement that the
`
`
`licensor also be joined as a party plaintiff’); and J.L. Prescott Co. v. Blue Cross Laboratories
`
`11;, 216 U.S.P.Q. 1127 (T.T.A.B. 1982) (exclusive licensee has standing to oppose).
`
`_S_ee_ also
`
`
`William & Scott Co. substituted for Scott Griffiths Associates v. Earl’s Restaurants Ltd., 30
`
`U.S.P.Q.2d 1870 (T.T.AB. 1994); Universal Oil Products Co. v. Rexall Drug and Chemical C0,,
`
`463 F.2d 1122, 174 U.S.P.Q. 458 (C.C.P.A. 1972); BRT Holdings Inc. V. Homeway Inc., 4
`
`
`U.S.P.Q.2d 1952 (T.T.A.B 1987); and Yasutomo & Co. v. Commercial Ball. Pen Co. Inc., 184
`
`U.S.P.Q. 60 (TTAB 1974).
`
`More importantly, as is shown by the PTO’s records, J.D. has assigned Registration Nos.
`
`2,577,387, 2,753,478 and 2,716,150 to Razor and this assignment has been recorded with the
`
`PTO. 1 Accordingly, Applicant’s Motion should be dismissed.
`
`Likewise, the only basis for Applicant’s Motion for a More Definite Statement was that
`
`Applicant was not clear about whether Razor was alleging that the Opposition proceeding was
`
`based on Razor’s rights, J.D.’s rights, or both. As Razor is now the owner of all the rights
`
`alleged in the Notice of Opposition, App1icant’s Motion for a More Definite Statement is also
`
`moot.
`
`Finally, with regard to Applicant’s Motion to Dismiss for Failure to State a Claim Upon
`
`Which Relief Can be Granted, Razor is not obligated to tmajve dilution in its Notice of
`
`Opposition. Instead, Razor must only plead the grounds for dilution. Razor notes that in the
`
`Notice of Opposition, Razor has alleged that it is the owner of the famous RAZOR mark, due to
`
`its use and registration of the RAZOR name and mark on certain goods and services. Moreover,
`
`1 Razor notes that Registration No. 2,311,177 was already owned by Razor.
`
`/A;t,{l.11J4“~
`
`

`
`as Razor is the owner of all of the registrations alleged in the Notice of Opposition, as well as the
`
`common law rights alleged in the Notice of Opposition, Applicant’s Motion to Dismiss for
`
`Failure to State a Claim Upon Which Relief Can be Granted should be dismissed.
`
`In light of the foregoing, Razor respectfully requests that Applicant’s Motion be
`
`dismissed in its entirety.
`
`Dated: August 28, 2006
`
`By:
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`£22 (L M/r*~
`
`Stacey R. Halpern
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`(949) 760-0404
`efiling@kmob.com
`Attorneys for Opposer,
`Razor USA LLC
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that
`
`I
`
`served a copy of the foregoing RAZOR USA LLC’S
`
`OPPOSITION TO RASER TECHNOLOGIES,
`
`INC.’S MOTION TO DIMJSS FOR
`
`FAILURE TO JOIN AN INDISPENSABLE PARTY, MOTION TO DISMISS FOR
`
`FAILURE TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED, AND
`
`MOTION FOR A MORE DEFINITE STATEMENT upon Applicant/Counter-Claim
`
`Petitioner’s counsel by depositing one copy thereof in the United States Mail, first—class postage
`
`prepaid, on August 28, 2006 addressed as follows:
`
`Robert P. Ducatman
`Meredith M. Wilkes
`JONES DAY
`North Point 90] Lakeside Avenue.
`
`Cleveland, OH 44114
`
`/J,Qa(L4J=»°*F"‘*
`
`Stacey R Halpern
`
`2840452:sg
`082806