Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA250388
`ESTTA Tracking number:
`11/20/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180271
`Plaintiff
`Broadcom Corporation
`Susan M. Natland
`Knobbe, Martens, Olson & Bear LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`efiling@kmob.com
`Motion for Summary Judgment
`Susan M. Natland
`efiling@kmob.com
`/Susan M. Natland/
`11/20/2008
`Motion for Summary Judgment.pdf ( 40 pages )(1759790 bytes )
`Exhibit A.pdf ( 52 pages )(2243153 bytes )
`Exhibit B Part 1.pdf ( 11 pages )(274499 bytes )
`Exhibit B Part 2.pdf ( 230 pages )(7172044 bytes )
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`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`BROC.676M
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Broadcom Corporation,
`
`2
`
`Opposer’
`
`V
`
`'
`
`Broadphone LLC,
`
`_
`Applicant.
`
`Application No.: 78/921,796
`Opposition No.: 91,180,271
`and all marked
`I hereby certify that
`this
`correspondence
`attachments are being deposited with the United States Patent and
`Trademark Office, Trademark Trial
`and Appeal Board via
`electronic
`filing
`through
`their
`website
`located
`at
`http://estta.uspto.gov/ on:
`
`November 20, 2008
`(Date)
`
`
`
`
`
`OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
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`MOTION FOR SUMMARY JUDGMENT AND MOTION TO SUSPEND
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`PROCEEDINGS PENDING THE DISPOSITION OF OPPOSER’S MOTION FOR
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`SUMMARY JUDGMENT AND MEMORANDUM IN SUPPORT OF OPPOSER’S
`
`
`MOTION FOR LEAVE TO AMEND MOTION FOR SUMMARY JUDGMENT AND
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`MOTION TO SUSPEND THE OPPOSITION PROCEEDING
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`Commissioner for Trademarks
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`P.O. Box 1451
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`Alexandria, VA 22313-1451
`
`Dear Sir:
`
`Pursuant to Federal Rules of Civil Procedure (“FRCP”) 15(a), C.F.R. §2.l07(a) and
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`T.B.M.P. § 507, Broadcom Corporation (“Opposer”) hereby moves the Trademark Trial and
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`Appeal Board (the “Board”) for leave to amend its Notice of Opposition under FRCP 15(a) to
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`add a cause of action for fraud. The First Amended Notice of Opposition is necessary to add a
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`cause of action for fraud, which has recently been revealed in Broadphone LLC’s (“Applicant”)
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`1
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`

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`responses to Opposer’s First Set of Requests for Admission Nos. 1-81, (“Opposer’s Requests for
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`Admissions”), Opposer’s First Set of Interrogatories Nos. 1-35 (“Opposer’s Interrogatories”) and
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`Opposer’s First Requests for Production of Documents and Things Nos. 1-70 (“Opposer’s
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`Document Requests”) (collectively “Opposer’s First Set of Discovery Requests”).
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`Moreover, ‘Opposer moves the Board for summary judgment under FRCP 56(0), granting
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`its opposition to U.S. Trademark Application No. 78/921,796.
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`Furthermore, Opposer hereby requests that the Board suspend the proceeding pending a
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`decision on its motions.
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`Opposer’s Motions are supported by the Declaration of Susan M. Natland attached hereto
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`(“Natland Decl.”) and the Exhibits attached to the Natland Decl. Additionally, a First Amended
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`Notice of Opposition is being submitted concurrently herewith.
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`MEMORANDUM IN SUPPORT OF OPPOSER’S
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`MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
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`The application at issue in this proceeding, U.S. Trademark Application Serial No.
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`78/921,796, filed on July 3, 2006 (“Applicant’s Application”) for the mark BROADPHONE
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`(“Applicant’s Mar ”) identifies the following goods and services: telecommunications software
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`for connecting telephone users, computer network users, and global computer networks;
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`telecommunications and data networking hardware, namely devices for
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`transporting and
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`aggregating voice, data, and Video communications across multiple network infrastructures and
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`communications protocols in Class 9 and cable Internet, voice-over-intemet-protocol, wireless
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`fidelity, mobile and landline communications services; streaming of audio and visual material,
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`namely by fixed mobile convergence; electronic data transmission of personal phone numbers
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`and personal phone book content in Class 38. Applicant’s amended basis for registration of these
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`goods in Class 9 is Applicant’s bona-fide intent to use the mark in U.S. commerce under Section
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`l(b) of the Trademark Act. Applicant’s sci basis for registration for the services in Class 38 is
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`Applicant’s actual use of the mark in U.S. commerce under Section 1(a) of the Trademark Act.1
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`' On May 16, 2008, Applicant mailed Defendant’s Answers to Requests for Admission
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`(“Applicant’s Responses to Opposer’s Requests for Admissions”)? On October 31, 2008,
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`Applicant mailed Defendant’s Responses to Plaintiffs lnterrogatories Nos. 1-31 (“Applicant’s
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`Responses to Opposer’s lnterrogatories”) and Defendant’s Responses to Plaintiffs Requests for
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`Product of Documents and Things Nos. 1-70 (“Applicant’s Responses to Opposer’s Document
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`Requests”) (collectively “Applicant’s Responses to Opposer’s Discovery Requests”).
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`As discussed in more detail below, in Applicant’s Responses to Opposer’s Discovery
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`Requests, Applicant admits that, at the time of filing Applicant’s Application and at the time
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`Applicant’s Application published for opposition, it had not used the mark BROADPHONE in
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`association with all (and in fact, any) of the services listed in Applicant’s Application within the
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`meaning of Section 1(a) of the Trademark Act, despite the fact that the sole basis for the
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`Applicant’s Application as filed was Section 1(a) of the Trademark Act.
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`In fact, in Applicant’s
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`Responses to Opposer’s Discovery Requests, Applicant admits that it has never used Applicant’s
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`Mark in U.S. commerce in association with all (and in fact, any) of the services listed in
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`Applicant’s Application within the meaning of Section 1(a) of the Trademark, despite the fact
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`1 Opposer notes that Applicant’s Application as filed based both the goods and services solely on actual use
`of the mark in commerce.
`
`2 Opposer notes that while Opposer’s First Set of Discovery Requests were personally served on
`Applicant’s counsel on February 21, 2008. On March 17, 2008, Applicant filed a Motion for Summary Judgment
`and the Board suspended the Opposition proceeding. On April 17, 2008,, Opposer filed a Rule 56(1) Motion. On
`May 16, 2008, Applicant provided responses to Opposer’s Requests for Admissions. On September 18, 2008, the
`Board issued an Order denying Applicant’s Motion for Summary Judgment. On October 1, 2008, the Board issued
`an Order providing Applicant with thirty (30) days to respond to Opposer’s Interrogatories and Document Requests.
`Thus, Applicant did not mail responses to Opposer’s Interrogatories and Document Requests until October 31, 2008.
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`3
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`

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`that the sole basis for the Applicant’s Application for services in Class 38 was and is Section 1(a)
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`of the Trademark Act.
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`These are material misrepresentations of fact that Applicant knew or should have known
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`were false or misleading. As the sole basis for Applicant’s Application for services in Class 38 is
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`Applicant’s actual use of Applicant’s Mark in U.S. commerce under Section 1(a) of the
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`Trademark Act, Applicant has committed fraud on the U.S. Patent and Trademark Office
`(.“PTO”). As a result ofthis fraud, Applicant’s Applicant is void ab initio.
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`Applicant submits that as the facts concerning Applicant’s fraud in filing and prosecuting
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`Applicant’s Application have only recently come to light in Applicant’s Responses to Opposer’s
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`Discovery Requests, Opposer seeks leave to amend its Notice of Opposition to add a cause of
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`action for fraud.
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`OPPOSER’S MOTION TO AMEND SHOULD BE GRANTED
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`T.B.M.P. Section § 507.02 and FRCP l5(a) states that once an answer has been filed, a
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`party may amend its pleading by leave of the Board and that leave must be freely given when
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`justice so requires as long as it does not unduly prejudice the adverse party. Moreover, the Board
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`has held that amendments to pleadings should “be allowed with great liberality .
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`.
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`. “ Commodre
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`Elec. Ltd. V . CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1505 (T.T.A.B. 1993).
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`As this proceeding is still in its early stages, Applicant will not be prejudiced by
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`Opposer’s filing of its First Amended Notice of Opposition. Moreover, as Opposer only
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`recently received response to its discovery requests, there has been no undue delay. Thus, the
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`claim being added by the First Amended Notice of Opposition is a fraud claim based on
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`information obtained from Applicant’s responses to Opposer’s First Set of Discovery Requests.
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`

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`Opposer respectfully submits that acceptance of the First Amended Notice of Opposition
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`does not prejudice Applicant. Moreover, all evidence relevant to the claim of fraud that may
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`benefit Applicant is already in the Applicant’s possession and control.
`In light of the foregoing,
`justice requires the Board to grant leave to Opposer to amend its Notice of Opposition to plead
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`this cause of action.
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`Accordingly, Opposer respectfully requests leave to amend its Notice of Opposition to
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`properly reflcct the charge of fraud based on this evidence obtained during discovery. Sg
`
`Turbo Sportswear,
`
`Inc. v. Marmot Mountain Ltd., 77’ U.S.P.Q.2d 1152 (T.T.A.B. 2005)
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`(“Turbo”) (the Board granted a Motion to Amend where a claim of fraud based on the exclusion
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`of goods not being offered at the time the application was filed in a use-based application was
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`revealed during the testimony deposition).
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`MEMORANDUM IN SUPPORT OF 0PPOSER’S MOTION FOR SUMMARY
`
`JUDGMENT AND MOTION TO SUSPEND
`
`I.
`
`INTRODUCTION
`
`As Opposer believes that it will be damaged by Applicant’s Application, Opposer has
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`brought the subject opposition proceeding against Applicant’s Application. As set forth more
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`fully in the memorandum herein and shown in the attached Natland Decl. and exhibits attached
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`thereto, this motion is made on the grounds that Applicant has committed fraud in attempting to
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`procure a registration for Applicant’s Mark. As Applicant has committed fraud, Applicant’s
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`Application is void ab initio.
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`Specifically, at the time of filing Applicant’s Application, during the prosecution of
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`Applicant’s Application, and at the time Applicant’s Application published for opposition,
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`

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`Applicant made material misrepresentations of fact that Applicant knew or should have known
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`were false and/or misleading.
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`The dispositive issue in this case is whether Applicant’s Application, which is based
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`solely on Section 1(a) of the Trademark Act for the Class 38 services, is void due to Applicant’s
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`fraudulent assertion that it had used Applicant’s Mark in U.S. commerce in association with all
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`of the services listed in Class 38 of the application. As the undisputed facts demonstrate,
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`Applicant has not used the mark in association with all of the Class 38 services listed in
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`. Applicant’s Application within the meaning of Section 1(a) of the Trademark Act. Based
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`thereon, Opposer requests that the Board deny registration of Applicant’s Application in light of
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`the fraud committed by Applicant in filing and prosecuting the application.
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`II.
`
`UNDISPUTED FACTS
`
`The undisputed facts in this matter are as follows:
`
`1.
`
`Opposer is the owner of the following U.S. trademark registrations (“Opposer’s
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`Marks”),
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`including Registration No. 2,595,174, which issued July 16, 2002, for the mark
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`BROADCOM (the ‘"174 Registration”) for “design of computer hardware, integrated circuits,
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`communications hardware and software, and computer networks for others.”
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`2.
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`Opposer is the owner of Registration No. 2,392,925, which issued October 10,
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`2000, for the mark BROADCOM (the “’925 Registration”) for “[c]omputer hardware; integrated
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`circuits; and software for controlling and using integrated circuits.”
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`3.
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`Opposer is the owner of Registration No. 2,132,930, which issued January 27,
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`1998, for the mark BROADCOM (the “’930 Registration”) for “computer hardware and software
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`for digitally operating upon signals in a network system to recover the infonnation represented by
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`

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`such signals and for recovering and decoding video and audio information from signals
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`transmitted by a direct broadcast satellite.”
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`4.
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`Opposer is the owner of Registration No. 2,625,799, which issued September 24,
`
`ll
`2002 for the mark -931‘05% (the “’799 Registration”) for “design of computer hardware,
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`integrated circuits, communications hardware and software, and computer networks for others.”
`
`5.
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`Opposer is the owner of Registration No. 2,326,387, which issued March 7, 2000
`
`A
`for the mark -5"3M€9'*"-
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`(the “’387 Registration”) for “[c]omputer hardware; integrated circuits;
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`and software for controlling and using integrated circuits.”
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`6.
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`On July 3, 2006, Applicant electronically filed Applicant’s Application seeking
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`registration in the United States for Applicant’s Mark based solely on Section 1(a) of the
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`Trademark Act in connection with the following goods and services:
`
`Telecommunications software and hardware; cable Internet, voice-oVer—internet-protocol
`(VOIP), wireless fidelity (WIFI), mobile, and landline telecommunications services;
`fixed mobile convergence, personal phone numbers and personal phone book,content on
`mobile and fixed line telecomunications [sic].
`
`7.
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`Since Applicant’s Application was based on Section 1(a) of the Trademark Act, it
`
`included the following statement:
`
`is using the mark in
`The applicant, or the applicant's related company or licensee,
`commerce, and lists below the dates of use by the applicant, or the applicant's related
`company, licensee, or predecessor in interest, of the mark on or in connection with the
`identified goods and/or services. 15 U.S.C. Section l051(a), as amended.
`
`International Class
`
`: Telecommunications
`
`software and hardware; cable
`
`Internet, V0ice-over-intemet-protocol (VOIP), wireless fidelity (WIFI), mobile, and
`landline telecommunications services;
`fixed mobile convergence, personal phone
`numbers and personal phone book,content on mobile and fixed line telecommunications
`[sic].
`
`, the mark was first used at least as early as 11/09/2004,
`In International Class
`and first used in commerce at least as early as 11/09/2004, and is now in use in such
`commerce.
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`

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`8.
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`In addition, Applicant’s counsel signed Applicant’s Application under penalty of
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`“fine or imprisonment, or both,
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`.
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`.
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`. and [knowing] that
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`.
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`.
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`. willful false statements may
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`jeopardize the validity of the application or any resulting registration .
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`.
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`.
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`.” E file history for
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`Applicant’s Application.
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`9.
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`In the first Office Action, dated December 6, 2006, the Examining Attorney
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`indicated that the identification of goods and services in the application was unacceptable and
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`required Applicant to amend the identification. §e_§ file history for Applicant’s Application.
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`10.
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`On February 27, 2007, Applicant’s counsel responded to the first Office Action,
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`by amending the identification of goods and services in App1icant’s Application and adding an
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`additional class to the application. As a result, the amended identification included the following
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`services in Class 38:
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`fidelity, mobile and landline
`Cable Internet, Voice-over-intemet-protocol, wireless
`communications services‘, streaming of audio and visual material, ‘namely by fixed mobile
`convergence; personal phone numbers and personal phone book services in connection
`with said communications services.
`
`11. While Applicant amended the basis for the Class 9 goods to be based on its bona-
`
`fide intention to use the mark in U.S. commerce, the s_ol_e_ basis for the Class 38 services remained
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`Section 1(a) of the Trademark Act, with an alleged date of first use of at least as early as
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`November 9, 2004. As to the services in Class 38 and pursuant to Section 1(a) of the Trademark
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`Act, the Applicant declared the following again:
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`The mark was in use in commerce on or in connection with the goods or services listed in
`the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(l)(i). The
`undersigned, being hereby warned that willful false statements and the like so made are
`punishable by fine or imprisonment, or both, under 18 U.S.C. §l00l, and that such
`willful false statements may jeopardize the Validity of the application or any resulting
`registration.
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`$5; file history for Applicant’s Application.
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`8
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`

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`12.
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`On April 18, 2007, the Examining Attorney issued an EXaminer’s Amendment,
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`amending the identification of services in Class 38 to be consistent with the following:
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`International Class 38: Cable Internet, voice-over-intemet-protocol, wireless fidelity,
`mobile and landline communications services; streaming of audio and visual material,
`namely by fixed mobile convergence; electronic data transmission of personal phone
`numbers and personal phone book content.
`
`_S_e_e file history for Applicant’s Application.
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`13.
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`On June 6, 2007, Applicant’s Application published for opposition purposes, with
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`the sole basis of registration under Section 1(a) for the services in Class 38.
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`14.
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`On October 24, 2007, Opposer filed the subject Opposition against Applicant’s
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`Application and the Opposition proceeding was assigned Opposition No. 91180271.
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`A 15.
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`On or about February 21, 2008, Opposer personally served on Applicant’s counsel
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`Opposer’s First Set of Discovery Requests. Natland Decl. at 112.
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`16.
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`On or about May 16, 2008, Applicant mailed to counsel for Opposer, Applicant’s
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`Responses to Opposer’s Requests for Admissions. Natland Decl. at 113.
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`17.
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`On or about October 31, 2008, Applicant mailed to counsel for Opposer,
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`Applicant’s Responses to Opposer’s Interrogatories and Document Requests. Natland Decl. at
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`113.
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`18.
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`Opposer’s Request for Admission No. 63 asks Applicant
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`to: “[a]dmit
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`that
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`Applicant has never licensed a third party to use Applicant’s Mark.”
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`Applicant’s Response: “Admitted.” Natland Decl. at 113.
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`19.
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`Request for Admission No. 79 asks Applicant to: “[a]dmit that Applicant’s Goods
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`and Services are provided to consumers in the telecommunications industry.”
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`Applicant’s Response: “Denied.” Natland Decl. at 113.
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`

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`20.
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`Interrogatory No. 5 requested that Applicant: “[i]dentify and describe Applicant’s
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`first use of Applicant’s Mark, including, but not limited to, the date Applicant’s mark was first
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`used in the U.S. by Applicant, and the date Applicant’s Mark was first used in commerce by
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`Applicant, and identify all persons with knowledge thereof and all documents relating thereto.”
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`Applicant’s Response:
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`“The mark was first used in U.S. commerce on 11/9/04, in an
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`offer and accompanying presentation package .
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`. .”
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`21. Interrogatory No. 8 requested that Applicant: “[w]ith respect to each of the goods
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`and/or services identified .
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`.
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`. state the total number of annual sales, in units, subscriptions, users
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`and dollars, for each calendar year from the first use of such good and/or service in connection
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`with Applicant’s Mark to the presen .”
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`Applicant’s Response: “No sales to date.” Natland Decl. at 113.
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`22.
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`Interrogatory No. 10 requested that Applicant: “[d]escribe and identify all
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`channels of trade, including, but not limited to, the name and location of all wholesale and/or
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`retail stores and all websites, through which the goods and/or services identified .
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`.
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`. are provided
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`under Applicant’s Mark, and identify all persons with knowledge thereof and all documents
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`related thereto.”
`
`Applicant’s Response: “Services offered via discussions on licensing the technology or
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`providing the services to cable operators, telecom companies and VoIP companies. Also via
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`Broadphone’s website: WWw.broadphone.com.” (emphasis added). Natland Decl. at 113.
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`23.
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`Interrogatory No. 12 requested that Applicant: “[s]tate the lowest, highest and
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`average retail price for each good and/or service identified .
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`.
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`. by, for example, unit or
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`subscription, or estimated retail price if such good and/or service has not been sold or provided,
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`for every year from the year that each good or service was first sold or offered under Applicant’s
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`Mark in the U.S. to the present.”
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`10
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`

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`App1icant’s Response: “No sales.” Natland Decl. at 113.
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`24.
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`Interrogatory No. 21 requested that Applican : “[d]escribe in detail all agreements
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`and parties thereto which Applicant has entered or is contemplating to enter relating to the sale or
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`offering of goods and/or services in connection with Applicant’s Mark, or any Variation thereof,
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`including, but not limited to, all license agreements, and identify all persons with knowledge
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`thereof and all documents related thereto.”
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`Applicant’s Response: “No agreements or draft agreements.” Natland Decl. at 113.
`
`Interrogatory No. 22 requested that: “[i]f Applicant claims or is claiming the
`25.
`benefit of any use of Applica.nt’s Mark, or any Variation thereof, by any predecessor in title or
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`licensee, identify the predecessor in title or licensee and describe in detail the nature and extent
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`of the predecessor’s or licensee’s use of Applicant’s Mark or any variation thereof.”
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`Applicant’s Response: “The joint venture between Aubrey Balkind and Roy. Shkedi .
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`.
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`.
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`is a predecessor-in-interest to Applicant, and used the Broadphone mark in offering services to
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`telecom companies, including Verizon .
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`. .” Natland Decl. at 113.
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`26.
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`Interrogatory No. 32 requested that Applicant: “[i]dentify each class of person,
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`including, but not limited to, gender, age and ethnicity, who purchase, use or utilize goods and/or
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`services provided under Applicant’s Mar .”
`
`Applicant’s Response:
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`“No one has yet purchased or used Applicant’s products.
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`Applicant has Q£fC1'_6(l its services to various cable, telecom and VoIP companies under the
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`Broadphone mark.” Natland Decl. at 113.
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`..27.
`
`Request for Production No. 15 requested that Applicant produce: “[a]ll documents
`
`and things,
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`including financial, accounting and corporate records concerning: (a) your total
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`income from the sale or license of goods and/or services sold under Applicant’s Mark annually
`
`by goods or services per calendar year, from first use of Applicant’s Mark for each such good or
`1 l
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`

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`service to the present; and (b) your projected income from the sale or license of goods and/or
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`services sold under Applicant’s Mark armually by goods or services per calendar year.”
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`Applicant’s Response: “No such documents are presently believed to exist.” Natland
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`Decl. at 113.
`
`28.
`
`Request for Production No. 45 requested that Applicant produce: “[a]ll documents
`
`sufficient to identify the approximate annual sales in both units and dollars of all goods and/or
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`services offered in connection with Applicant’s Mark, or any variation thereof, by year on an
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`annual basis, from Applicant’s first use of Applicant’s Mark until presen .”
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`Applicant’s Response: “No such documents are presently believed to exist.” Natland
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`Decl. at 113.
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`29.
`
`Request for Production No. 49 requested that Applicant produce: “[a]ll documents
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`and things evidencing, referring or relating to third—party use of Applicant’s Mark, or any
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`variation thereof,
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`including, but not
`
`limited to, authorizations, assignments,
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`licenses [sic]
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`agreements, including but not limited to, manufacturing agreements, whether in draft form or
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`executed.”
`
`Applicant’s Response:
`
`“No such documents are presently believed to exist.” Natland
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`Decl. at 1[3.
`
`30.
`
`Request for Production No. 50 requested that Applicant produce: “[a] ll documents
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`and things evidencing, referring or relating to the sale of each and every good and/or service in
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`connection with Applicant’s Mark by Applicant, or a related company or licensee.”
`
`Applicant’s Response:
`
`“No such documents are presently believed to exist.” Natland
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`Decl. at 113.
`
`31.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant
`
`admits that it has merely “offered its services” to others, but that no one has engaged or
`
`I
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`12
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`

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`purchased Applicant’s services and that Applicant has not at any time rendered all of the services
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`identified in Applicant’s Application in U.S. commerce. Applicant’s Responses to Opposer’s
`
`Request
`
`for Admission No. 63, Opposer’s Request
`
`for Admission No. 79, Opposer’s
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`Interrogatory No. 8, Opposer’s Interrogatory No. 12, Opposer’s Interrogatory No. 21, Opposer’s
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`Interrogatory No. 32, Opposer’s Request for Production No. 15, Opposer’s Request
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`for
`
`Production No. 45, Opposer’s Request for Production No. 49, and Opposer’s Request for
`
`Production No. 50; Natland Decl. at 1[3.
`
`32.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant
`
`admits that its claim to have used its mark in connection with all of the services identified in
`
`Applicant’s Application is based on a mere “offer and accompanying presentation package” and
`
`that no actual sales of any of the services listed in Applicant’s Application have resulted from
`
`Applicant’s or any other presentation or offer. Applicant’s Responses to Opposer’s Interrogatory
`
`No. 5, Opposer’s Interrogatory No. 8, and Opposer’s Interrogatory No. 12; Natland Decl. at 113.
`
`33.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant
`
`admits that
`
`it had not rendered the services identified in Applicant’s Application in U.S.
`
`commerce in ‘accordance with Section 1(a), as of the July 3, 2006 filing date of the application or
`
`the publication of the application. Applicant’s Responses to Opposer’s Request for Admission
`
`No. 63, Opposer’s Request for Admission No. 79, Opposer’s Interrogatory No. 8, Opposer’s
`
`Interrogatory No. 12, Opposer’s Interrogatory No. 21, Opposer’s Interrogatory No. 32, Opposer’s
`
`Request for Production No. 15, Opposer’s Request for Production No. 45, Opposer’s Request for
`
`Production No. 49, and Opposer’s Request for Production No. 50; Natland Decl. at 113.
`
`34.
`
`In Applicant’s Responses to Opposer’s First Set of Discovery Requests, Applicant
`
`has not made service mark “use in commerce” of Applicant’s Mark in connection with all (and in
`
`fact, any) of the services identified in Application’s Application in accordance with the
`
`13
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`

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`requirements of Section 1(a) of the Trademark Act, despite the fact that the sole basis for Class
`
`38 is Section 1(a) of the Trademark Act. Applicant’s Responses to Opposer’s Request for
`
`Admission No. 63, Opposer’s Request for Admission No. 79, Opposer’.s Interrogatory No. 8,
`
`Opposer’s Interrogatory No. 12, Opposer’s Interrogatory No. 21, Opposer’s Interrogatory No. 32,
`
`Opposer’s Request for Production No. 15, Opposer’s Request for Production No. 45, Opposer’s
`
`Request for Production No. 49, and Opposer’s Request for Production No. 50; Natland Decl. at
`
`113.
`
`III.
`
`ARGUMENT
`
`A.
`
`SUMMARY JUDGMENT STANDARD AND BURDEN OF PROOF
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`Summary judgment should be granted where, as here, it is shown that there is no genuine
`
`issue of material fact, and the moving party is entitled to judgment as a matter of law. FRCP Rule
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`56(0). FRCP 56(c), in pertinent part, states that a summary judgment should be granted where, as
`
`here, “the pleadings,
`
`.
`
`.
`
`. answers to interrogatories, and admissions on file, together with the
`
`affidavits
`
`.
`
`.
`
`. show that there is no genuine issue as to any material fact and that the moving
`
`party is entitled to a judgment as a matter of law.” These general principles of summary judgment
`
`apply under FRCP 56 to inter-parties proceedings before the Board. E, §g,, Medinol Ltd. V.
`
`
`Neuro VASX Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003) (“Medinol”); Sweats Fashions Inc. V.
`
`Pannill Knitting Co., 833 F.2d 1560, 4 U.S.P.Q.2d 1793, 1797 O7ed. Cir. 1987). Thus, summary
`
`judgment is an appropriate method of disposing of an opposition in which there is no genuine issue
`
`of material fact on the question of likelihood of confusion. Kellogg Co. v. Pack’Em Enter, Inc., 14
`
`U.S.P.Q.2d 1545 (T.T.A.B. 1990).
`
`As the Federal Circuit stated in Pure Gold, Inc. V. Syntex §[J.S.A.), Inc., 222 U.S.P.Q. 741,
`
`743 (Fed. Cir. 1984):
`
`14
`
`

`
`The basic purpose of summary judgment procedure is one ofjudicial economy -- to
`save the time and expense of a full trial when it is unnecessary because the essential
`facts necessary to decision of the issue can be adequately developed by less costly
`procedures, as contemplated the FRCP rules here involved, with a net benefit to
`society.
`
`Likewise, summary judgment in an opposition proceeding is designed to save the time and
`
`expense of a full opposition proceeding where there is no genuine issue as to any material fact. E
`
`Lock Corp. v. Schlage Lock Co., 413 F.2d 1195 (C.C.P.A. 1969).
`
`Opposer as the moving party, has the burden of demonstrating that it is entitled to summary
`
`judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986).
`
`"By meeting its burden of
`
`identifying undisputed facts, Opposer is entitled to relief. Applicant cannot respond merely by
`
`pointing to allegations or denials in the pleadings. Matsushita Elec. Indus. Co. V. Zenith Radio
`
`Corp, 475 U.S. 574, 586 (1986).
`
`Instead, Applicant must submit specific facts showing that there
`
`is a genuine issue for trial. Li. at 587. In doing so, Applicant must present evidence from which a
`
`reasonable trier of fact might return a verdict in its favor. Anderson v. Libeny Lobby, Inc., 477
`
`U.S. 242, 249-250 (1986).
`
`B.
`
`THERE IS NO GENUINE ISSUE OF MATERIAL FACT ON THE
`
`QUESTION OF FRAUD
`
`In the instant case, Opposer contends that Applicant, at the time it filed Applicant’s
`
`Application and at the time Applicant’s Application published for opposition purposes, was not
`
`using Applicant’s Mark in commerce in association with all ofthe services identified in App1icant’s
`
`Application. Thus, Applicant’s Application is invalid, because Applicant falsely signed and filed
`
`the original application oath for the application (which was based solely on Section 1(a) of the
`
`Trademark Act), when Applicant knew, or should have known, that it was not using Applicant’s
`
`15
`
`

`
`Mark within the meaning of the Trademark Act, on or in connection with all of the services
`
`identified in Applicant’s Application in U.S. commerce.
`
`To support aiservice mark application under Section 1(a) of the Trademark Act, the
`
`Applicant must verify that the mark has been used in commerce in connection with the goods or
`
`services identified in the application. 15 U.S.C. §l05l(a). “Use in commerce” means “the bona
`
`fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark.”
`
`15 U.S.C. § 1127. For the purpose of service marks, a mark shall be deemed to be in use in
`
`commerce when it is “used or displayed in the sale or advertising of services and the services are
`
`rendered in commerce, or the services are rendered in more than one State or in the United”
`
`States and a foreign country and the person rendering the services is engaged in commerce in
`
`connection with the services.” 15 U.S.C. § 1127 (emphasis added).
`
`Indeed, in addition to any
`
`advertising or other offers to provide a service, the services must actually be rendered in
`
`commerce to support an application under Section 1(a) of the Trademark Act.
`
`_S_C_€_ I3
`
`Greyhound Corporation, Et Al. V. Armour Life Insurance Company, 214 U.S.P.Q. 473, (T.T.A.B.
`
`1982); TMEP §90l.0l(2). As is shown by Applicant’s Responses to Opposer’s First Set of
`
`Discovery Requests, Applicant did not comply with this requirement.
`
`The sole basis under which Applicant sought registration for the Class 38 services was
`
`and is Applicant’s actual use in commerce under Section 1(a). As is shown in the file history,
`
`upon filing App1icant’s Application, Applicant made the following state “the applicant declares
`
`that it is using the mark in commerce, or the applicant's related company or licensee is using the
`
`mark in commerce, on or in connection with the identified goods and/or services.” As is also
`
`shown by the file history, upon publication of Applicant’s Application, the sole basis of the
`
`application was Section 1(a) of the Trademark Act.
`
`16
`
`

`
`In its responses to Opposer’s discovery requests, Applicant has indicated that it has not
`
`made any sales for its services identified in Class 38, that it has not licensed its mark for the
`
`services in Class 38, that it has not entered into any agreements concerning its services in Class
`
`38, that it has no records of any payments related to its services, and that it has not provided its
`
`services in Class 38 to consumers in the telecommunications industry — arguably its target
`
`consumers. Indeed, Applicant has admitted that While it has discussed and given presentations
`
`regarding its services Applicant has never actually rendered any of the services identified in Class
`
`38 of its Application.
`
`In light of Applicant’s responses to discovery mentioned above, Applicant has admitted
`
`that it has not used Applicant’s Mark in U.S. commerce in connection with all of the services
`
`identified in Applic