Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA312184
`ESTTA Tracking number:
`10/19/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91182087
`Defendant
`B & J Enterprises, Ltd
`LOUIS FIREISON
`LOUIS FIREISON & ASSOCIATES, P.A.
`4550 MONTGOMERY AVE STE 910n
`BETHESDA, MD 20814-3304
`UNITED STATES
`lfireison1@verizon.net
`Opposition/Response to Motion
`Vincent T. Lyon
`vlyon@law.gwu.edu
`/Vincent T. Lyon/
`10/19/2009
`D.SJ.Opp.pdf ( 8 pages )(4694748 bytes )
`Exhibit E.pdf ( 4 pages )(100254 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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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Albrecht Entertainment Services, Inc.
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`Opposer
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`v,
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`Opposition No.: 91182087
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`\/\/\/&/\/g/\./x/\/§
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`B & J Enterprises, LTD.
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`Applicant
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`OPPOSITION TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`Applicant, B&J Enterprises, LTD, by and through its attorneys, Louis Fireison &
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`Associates, P.A., Louis Fireison, Esquire, and Vincent T. Lyon, Esquire, hereby
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`respectfully replies to Opposer’s Motion for Summary Judgment, and in support states:
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`I. FACTS
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`Applicant has operated that business under the name Washington Talent Agency
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`since 1967.
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`In January 2005, Opposer registered “washingtontalentagency.com” as a
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`domain name. Approximately one year later, Applicant learned of the identically named
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`website. Applicant contacted Opposer to request transfer of the domain name.
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`Opposer refused and Applicant sued for trademark infringement and filed an application
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`to register the name with the Trademark Office.
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`The United States District Court for the District of Maryland considered the
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`question of whether at the time Opposer registered the domain name, it was infringing
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`upon Applicant’s trademark. Discovery was extensive, though limited, to actions prior to
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`2005, the date of registration. Ultimately, the Court ruled in Opposer’s favor, concluding
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`that as of January 2005, Applicant’s mark was not distinctive and its use by Opposer at
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`that time was not an infringement. The question remains before this Board of whether,
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`at present, Applicant’s mark has acquired secondary meaning and whether it may be
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`granted trademark registration.
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`ll. STANDING
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`Opposer has not demonstrated any damage it may face as a result of the
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`registration of the mark that would give it standing to oppose the registration. Opposer
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`has alleged that its interest is greater than that of the general public because it has
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`registered the mark as a domain name. Registration of a domain name cannot be
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`sufficient interest to create standing.
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`For Opposer to have a proprietary interest in the mark greater than that of the
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`general public, the mark must be such that its registration would cause “direct injury to
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`its own established trade identity." Jewelers Vigilance Committee, Inc. v. Ullenberg
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`Corp., 823 F.2d 490, 493 (Fed. Cir., 1987). Opposer has failed to show that the mark in
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`question has any impact on Opposer’s trade identity.
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`In fact, every step of the way in
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`the civil case, Opposer denied that the mark was of any use to him at all. As seen in
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`Exhibits C and D of Applicant's Motion for Summary Judgment 1 Opposer testified he
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`never used the mark. Opposer even claimed to have insufficient dealings in the area to
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`be subject to local jurisdiction.
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`(Exhibit E, attached) Even in the present motion,
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`Opposer stated that registration may inhibit Opposer “or any others who may use the
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`word”, acknowledging that it is not part of Opposer’s trade identity, insisting it is open to
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`anyone’s use.
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`1 Applicants Motion for Summary Judgment as filed on November 29, 2008, and exhibits attached
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`thereto, are adopted and incorporated herein by reference in support of the Applicant's argument
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`Opposer “believes” he would be injured by registration of the mark. However, he
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`has failed to give any reasonable basis for this belief. The principle that injury may be
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`inferred when a mark is descriptive of goods or services is based on the goal of
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`preventing confusion or deception. The cases Opposer relies on all cite as grounds for
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`their reasoning, Broderick v. L. Mitchell & Co., 289 F. 618 (C.A.D.C 1923), which states
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`that even one who has no exclusive claim to a mark “has the right to resist the
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`applicant's attempt to appropriate to himself its exclusive use where, as here, the use of
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`the two marks would probably deceive.” (emphasis added) The parties’ marks would
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`not deceive. Applicant has been operating under the name Washington Talent Agency
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`for over 40 years. Opposer operates under the names Albrecht Entertainment Services,
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`Inc. and USA Talent Agency. Registration by the Applicant would not deceive anyone
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`into thinking it was actually the Opposer.
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`In light of Opposer’s continuous vehement denial of using the name in
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`commerce, any presumption of injury is refuted. The mark in question is not in any way
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`part of Opposer’s trade identity. Based on Opposer’s sworn statements, Opposer
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`should be estopped from now alleging injury and therefore lacks standing to bring the
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`present Opposition.
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`Ill. CLAIM PRECLUSION
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`Claim preclusion, or res judicata, ensures thatjudgments are final. However, it is
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`an affirmative claim, and Opposer must prove all of the elements in order to assert
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`preclusion. Taylor v. Sturgell, 128 S.Ct. 2161, 2180 (2008). Opposer has failed to
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`prove all of the elements and its motion should be denied.
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`“[T]he preclusive effect of a judgment rendered in state court is determined by
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`the law of the state in which the judgment was rendered.” Hall v. St. Mary's Seminary &
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`University, 608 F.Supp.2d 679, 684 (D.Md.,2009), quoting: Laurel Sand & Gravel, Inc. v.
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`Wilson, 519 F.3d 156, 161-62 (4th Cir.2008).
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`In Maryland, A party asserting claim
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`preclusion “must demonstrate the following three elements: (1) the parties in the present
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`litigation are the same or in privity with the parties to the earlier litigation; (2) the claim
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`presented in the current action is identical to that determined or that which could have
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`been raised and determined in the prior litigation; and (3) there was a final judgment on
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`the merits in the earlier suit.”
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`The first element is not in dispute. Applicant and Opposer were both parties to
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`the suit in the United States District Court for the District of Maryland (though there was
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`one other Defendant in that case).
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`The third element, likewise, is not disputed. The prior suit which Opposer is
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`alleging to have preclusive effect did reach a final judgment on the merits, in so far as
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`that term includes decisions based on procedure.
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`The dispute is whether or not the claim presented in the current action is identical
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`to that in the prior litigation.
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`In the District Court, the Applicant alleged that when
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`Opposer registered its domain name in January of 2005, that action was an
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`infringement of Applicant’s common law and Lanham Act trademark rights and was a
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`violation of the federal anti-cybersquatting statute. The Court ruled that registration of
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`the domain name was not an infringement and was not cybersquatting. The Court
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`came to that conclusion by ruling the Applicant had failed to provide a sufficient
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`quantum of admissible evidence to prove the mark had acquired secondary meaning.
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`It is easy to understand how Opposer has misconstrued the situation.
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`In a case
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`involving registration under a different section, a finding of lack of distinctiveness could
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`be a bar to a later action. However, this application was filed claiming acquired
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`distinctiveness to a descriptive term. Acquired distinctiveness is in essence a moving
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`target. What is not distinct today may become distinct tomorrow. Many times the
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`USPTO has revisited questions of acquired distinctiveness after a ruling had previously
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`issued denying distinctiveness. See Texas Pig Stands, Inc. v. Hard Rock Cafe /ntern.,
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`lnc., 951 F.2d 684 (5”‘ Cir.,1992); Continental Motors Corp. v. Continental Aviation
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`Corp., 375 F.2d 857 (5”‘ Cir. 1967); Test Masters Educational Services, Inc. v. Singh,
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`428 F.3d 559 (5”‘ Cir, 2005); Flowers Industries Inc. v. Interstate Brands Corp., 5
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`U.S.P.Q.2d 1580 (1987); In re Honeywell, Inc, 8 U.S.P.Q.2s 1600 (T.T.A.B.1988).
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`There is no minimum amount of time that must pass before the issue can be addressed
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`again. Testmasters at 574.
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`In the present case, nearly 5 years have passed since the
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`date looked at by the District Court.
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`What is hard to understand is how Opposer can continue to ignore or
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`misrepresent the evidence before it. Opposer has alleged in its motion that there is
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`even less evidence for the Board than there was for the Court. Opposer then admits
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`that everything before the Court is available for the Board because all discovery in the
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`District Court that was stipulated to have been served here. What the Opposer failed to
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`mention was that since discovery is always ongoing, Applicant has supplemented
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`discovery responses in this case as more things have developed. (Exhibits E and F) 2
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`There is a good deal more now than there was in the District Court and evidence from
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`the past five years supports the Application.
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`Regardless of the quantum of evidence and Opposer’s failure to acknowledge it,
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`2 Opposer on the other hand has not produced any further discovery so it can be presumed it has still not
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`made any business use of its domain name.
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`the burden still lies on Opposer to prove the claims are identical. Given the nature of a
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`claim of acquired distinctiveness, this is a difficult task and Opposer has failed at it.
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`IV.
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`ISSUE PRECLUSION
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`Issue preclusion, or collateral estoppel, prevents two parties from litigating an
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`issue that has been definitively determined in a prior proceeding between the two
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`parties. “[O]nce a court has decided an issue of fact or law necessary to its judgment,
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`that decision may preclude relitigation of the issue in a suit on a different cause of action
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`involving a party to the first case.” Allen v. McCuriy, 449 U.S. 90, 101 S.Ct. 411 (1980).
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`Opposer properly identifies the four elements of collateral estoppelz “(1) identity
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`of the issues in a prior proceeding; (2) the issues were actually litigated; (3) the
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`determination of the issues was necessary to the resulting judgment; and, (4) the party
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`defending against preclusion had a full and fair opportunity to litigate the issues.” Jet,
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`Inc. v. Sewage Aeration Systems, 223 F.3d 1360 (Fed. Cir. ,2000).
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`in the case before the Board, Opposer fails on all four counts. The issue is not
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`identical. The issue before the board was not litigated in the earlier action. The
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`determination of the issue before the Board was not necessary for the resulting
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`judgment because the issue before the Board was not before the Court, and Applicant
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`has not had an opportunity to litigate the issue, because it is not the same issue.
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`Issue preclusion “treats as final only those questions actually and necessarily
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`decided in a prior suit.” Brown v. Fe/sen, 442 U.S. 127, 99 S.Ct. 2205 (1979).
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`Therefore, the Board must determine what was actually and necessarily decided in the
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`prior suit. As stated above, the prior suit was a claim of infringement based on an
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`action taken in January of 2005. The Court limited evidence to only information up to
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`January 2005. What the Court actually decided was that the evidence was not sufficient
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`to show that as of January 2005, Applicant’s mark had acquired secondary meaning.
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`More evidence has piled up in the ensuing five years, and because the Board is not
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`concerned with whether or not an action five years ago was an infringement, it is not
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`limited to that date and any information after that date is open for consideration.
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`The case is not barred by issue preclusion. The Board is not asked to decide a
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`claim of trademark infringement five years ago. The Board is asked to decide whether
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`today, there is sufficient evidence of secondary meaning to permit Applicant’s trade
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`name to be registered. There is, and Opposer has failed to show standing and has
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`failed to prove its alleged grounds for summary judgment. Therefore, Opposer’s Motion
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`for Summary Judgment should be denied.
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`V.
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`CONCLUSION
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`The Board should deny Opposer’s Motion for Summary Judgment. Opposer
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`failed to show how its interest is any more significant than that of the general public,
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`(including denying under oath that it even uses the mark) and has not challenged any of
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`Applicant’s evidence. Opposer has failed to meet its burden to prove the issues are
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`identical, and has not properly stated the extent of the evidence. The issue before the
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`Board is different from that previously decided and the motion should be denied.
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`Respectfully submitted,
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`LOUIS FIREISON & ASSOCIATES, P.A.
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`/LF/
`By:
`Louis Fireison
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`By: NL/
`Vincent T. Lyon
`4550 Montgomery Avenue
`Suite 910 N
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`Bethesda, Maryland 20814-3344
`Attorneys for Applicant
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No.: 91182087
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`Albrecht Entertainment Services, Inc.
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`Opposer
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`v.
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`B & J Enterprises, LTD.
`
`Applicant
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on this 19th day of October, 2009, by agreement
`of counsel, a copy of the foregoing was delivered electronically to:
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`William D. Day
`Gill Sippel & Gallagher
`98 Church Street
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`Rockville, MD 20850
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`Nincent T. Lyonl
`Vincent T. Lyon
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`

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`Case 8:06-cv-01235-MJG Document 5-2 Filed 06/07/2006 Page 1 of 4
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND, SOUTHERN DIVISION
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`Civil No. 8:06-cv-01235-MJG
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`: :
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`:
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`:
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`:
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`B&J ENTERPRISES, LTD.
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`Plaintiff
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`v.
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`KEN GIORDANO, ET AL
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`Defendant
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`POINTS AND AUTHORITIES IN SUPPORT OF DEFENDANTS’ MOTION TO
`DISMISS FOR LACK OF PERSONAL JURISDICTION
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`INTRODUCTION
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`On May 15, 2006 a Complaint was filed with this court alleging Cyberpiracy and
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`Trademark infringement against a nonresident of the forum state and against a company not
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`registered to do business in the forum state.
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`ARGUMENT
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`THIS COURT LACKS PERSONAL JURISDICTION OVER DEFENDANTS
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`For a federal court, sitting in diversity jurisdiction to exercise personal jurisdiction over a
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`non-resident defendant an applicable state long-arm statute must confer jurisdiction and the
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`assertion of that jurisdiction must be consistent with constitutional due process. See Estate of
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`Stephen Bank v. Swiss Valley Farms, Co., 286 F. Supp. 2d 514, 516-517 (D. Md. 2003).
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`Due process requires that a non-resident defendant have sufficient minimum contacts
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`"such that the maintenance of the suit does not offend traditional notions of fair play or
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`Case 8:06-cv-01235-MJG Document 5-2 Filed 06/07/2006 Page 2 of 4
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`substantial justice." International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S. Ct. 154, 158,
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`90 L. Ed. 95 (1945).
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`Section 6-103(b)(4) of Maryland's long arm statute provides for jurisdiction over persons
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`who:
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`“cause tortious injury in the State or outside of the State by an act or omission outside the
`State if he regularly does or solicits business, engages in any other persistent course of
`conduct in the State or derives substantial revenue from goods, food, services, or
`manufactured products used or consumed in the State.” Md. Code Ann., Cts. & Jud. Proc.
`§ 6-103(b)(4).
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`Plaintiff B & J Enterprises’ Complaint makes no attempt to ever allege minimum
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`contacts with Maryland on the part of the Defendant. The Complaint at ¶4 acknowledges
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`correctly that Defendant Ken Giordano is a citizen and resident of the State of Colorado and thus
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`a nonresident of the forum state. The Complaint at ¶18 correctly acknowledges that Defendant’s
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`are not registered to conduct business in Maryland. Defendant has no place of business, offices,
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`warehouses, branches, dealers or franchisees in the forum state. (See Exhibit A, Affidavit of Ken
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`Giordano) In addition, the Defendant has no resident agent, maintains no employees and is not
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`registered to do business in the forum state. (See Exhibit A)
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`While Plaintiffs claim that Defendants’ use of the website,
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`www.washingtontalentagency.com has “diverted legitimate business from the Plaintiff”
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`(Complaint at ¶ 23), they offer no other evidence suggesting that Defendants have any contact
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`with the forum state sufficient to establish this court’s jurisdiction over Defendants. See
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`Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414, 104 S. Ct. 1868, 1872, 80 L.
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`Ed. 2d 404 (1984).
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`In addition, Plaintiff has no basis for general jurisdiction over Defendant. Plaintiff
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`nowhere alleges that Defendant has “continuous and systematic” contacts with Maryland.
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`2
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`Case 8:06-cv-01235-MJG Document 5-2 Filed 06/07/2006 Page 3 of 4
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`Plaintiff nowhere alleges any sales to Maryland residents, only conclusory1 suggestions that such
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`sales may have occurred because of the website www.washingtontalentagency.com.
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`Helicopteros, 466 U.S. at 415, 104 S. Ct. at 1872.
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`This court has recognized that with regard to non-residents, general jurisdiction is
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`ordinarily reserved for those defendants who have such substantial contacts with the forum state
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`that they may be considered "essentially domiciled" within that state. Atlantech Distribution, Inc.
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`v. Credit Gen. Ins. Co., 30 F. Supp.2d 534 (D.Md. 1998). The only basis in the Complaint for
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`personal jurisdiction over Defendants is their use and registration of the website
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`www.washingtontalentagency.com. The Fourth Circuit has explicitly rejected the idea that
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`general personal jurisdiction may be founded on the basis of Internet presence alone; “something
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`more” would have to be demonstrated. See ALS Scan, Inc. v. Digital Serv. Consultants, Inc., 293
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`F.3d 707, 711 (4th Cir. 2002). See also Estate of Stephen Bank, 286 F. Supp. 2d at 517-519.
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`While the Fourth Circuit in ALS Scan did not articulate the "something more" required in
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`addition to Internet presence for the exercise of general jurisdiction, several recent cases suggest
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`that even evidence of actual sales to residents of the forum state may not satisfy the "something
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`more" requirement. See Robbins v. Yutopian Enterprises, Inc., 202 F. Supp.2d 426, 429 (D.Md.
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`2002) (forty-six transactions with Maryland residents over a 10 1/2 month period, made through a
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`website and a toll-free number, deemed insufficient for the exercise of general personal
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`jurisdiction) See also Ratliff v. Cooper Labs, Inc., 444 F.2d 745, 748 (4th Cir. 1971) (limited
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`advertising and solicitation" by a non-resident defendant in the forum state do not provide a
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`sufficient basis for general jurisdiction).
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`1 Both Maryland and Federal procedures require “fact pleading” and unsubstantiated conclusory allegations do not
`suffice. Simpson v. Welch, 900 F.2d 33 (4th Cir. 1990); Kandel v. Smoker, 783 F.Supp. 948, 950 (D. Md. 1991)
`citing Smith v. Gray Concrete Pipe Co., Inc., 267 Md. 149, 297 A.2d 721, 732 (1972).
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`3
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`

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`Case 8:06-cv-01235-MJG Document 5-2 Filed 06/07/2006 Page 4 of 4
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`Plaintiffs in this case have failed to show anything more than Albrecht Entertainment’s
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`Internet presence. Plaintiff allegations at ¶ 23 and 31 of the Complaint that Defendant Albrecht
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`Entertainment may have made sales to Maryland residents is insufficient to form a basis for
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`personal jurisdiction.
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`Absent a clear showing by Plaintiff that Defendants have “continuous and systematic”
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`contact with the forum state other than the use of a website, this complaint must be dismissed for
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`lack of personal jurisdiction.
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`CONCLUSION
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`WHEREFORE, Defendants respectfully submit that the Complaint in this matter should be
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`dismissed.
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`Respectfully submitted,
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` /s/ William D. Day
`WILLIAM D. DAY. (Bar #16710)
`GILL SIPPEL & GALLAGHER
`98 Church Street
`Rockville, MD 20850
`(301) 251-9200
`
`Counsel for Defendants
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`4