Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA330890
`ESTTA Tracking number:
`02/05/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91187118
`Plaintiff
`Amazon Technologies, Inc.
`Susan M. Natland
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`efiling@kmob.com, docket@amazon.com
`Other Motions/Papers
`Susan M. Natland
`efiling@kmob.com, docket@amazon.com, amber.yordy@kmob.com
`/susan m. natland/
`02/05/2010
`Redacted Version of Opposer's Motion Filed November 25 2009.pdf ( 36 pages
`)(2796022 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`1.pdf ( 49 pages )(4988702 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`2.pdf ( 51 pages )(5346812 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`3.pdf ( 49 pages )(4879489 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`4.pdf ( 51 pages )(3783824 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`5.pdf ( 49 pages )(3311105 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`6.pdf ( 51 pages )(3499018 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`7.pdf ( 49 pages )(3737341 bytes )
`Redacted Version of Opposer's Motion Filed November 25 2009 Exhibits Part
`8.pdf ( 49 pages )(3809178 bytes )
`
`

`
`AMAZONT.008M
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`AMAZON TECHNOLOGIES, INC.,
`
`V.
`
`JEFFREY S. WAX,
`
`O oser
`pp
`
`’
`
`Applicant.
`
`Opposition No.: 91187118
`Mark: AMAZON VENTURES
`
`I hereby 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 htm://estta.uspto.gov on
`
`5 2010
`Febru
`
`
`F
`
`-
`
`(Date)
`_SusanM.Natland
`
`L/\/€\/\J€\)\J
`
`REDACTED VERSION OF OPPOSER’S MOTION FOR LEAVE TO AMEND NOTICE OF
`OPPOSITION‘ MOTION FOR SUMMARY JUDGMENT‘. MOTION TO SUSPEND PROCEEDINGS
`PENDING THE DISPOSITION OF OPPOSER’S MOTIONS‘ AND MEMORANDUM IN SUPPORT
`
`
`
`THEREOF FILED ON NOVEMBER 25, 2009
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Sir or Madam:
`
`Amazon Technologies, Inc. (“Opposer”) hereby moves the Trademark Trial and Appeal Board (the
`
`“Board”) for leave to amend its Notice of Opposition under Federal Rule of Civil Procedure (“FRCP”) 15(a) to
`
`add causes of action (i) that Application Serial No. 78/001,126 (“Applicants’ Application”) is void due to
`Applicants’ failure to have a continuing valid basis for registration and (ii) that Applicants’ Application is void
`
`due to an assignment of Applicants’ ITU Application in violation of Section 10 of the Lanham Act.
`
`Moreover, pursuant to FRCP 56(0) and Trademark Trial and Appeal Board Manual of Procedure
`
`(“TBMP”) §528, Opposer hereby moves the Board for summary judgment on the ground (i) that Applicants’
`
`Application is void due to Applicants’ failure to have a continuing valid basis for registration and/or (ii) that
`
`Applicants’ Application is void due to the assignment of Applicants’ Application in violation of Section 10 of the
`
`Lanham Act. Opposer’s Motion to Amend and Motion for Summary Judgment are based on the following pertinent
`
`facts.
`
`1.
`
`Applicants’ Application was filed by j_Qin_t applicants, Steven M. Freeland (“Freeland”) and
`
`Jeffrey S. Wax (“Wax”) based solely on Applicants’ bona fide intention to use (“ITU”) the mark AMAZON
`
`VENTURES (“Applicants’ Mark”) in U.S. commerce under Section l(b) of the Lanham Act. Applicants have not
`
`

`
`filed an Amendment to Allege Use or a Statement of Use for Applicants’ Application with the U.S. Patent and
`
`Trademark Office (“PTO”).
`
`2.
`
`Subsequent to the filing of Opposer’s Notice of Opposition, in Response to Opposer’s Requests
`
`for Production of Documents and Things
`
`(“Applicants’ Responses to Opposer’s Document Requests”),
`
`Applicants produced an assignment of Applicants’ Application with an effective date of October 20, 2008 (the
`
`“Assignment”), which had not previously been recorded with the PTO. A true and correct copy of the
`
`Assignment and the Recordation coversheet are attached as Exhibit A to the Declaration of Susan M. Natland
`
`(“Natland Decl.”).
`
`3.
`
`On June 17, 2009, well after Opposer filed its Notice of Opposition and well after Applicants
`
`answered the Notice of Opposition on behalf of 3% Applicants Wax and Freeland, Wax recorded the
`
`Assignment of Applicants’ ITU Application with the Assignment Division at the PTO.
`
`4.
`
`The Assignment at issue states, in pertinent part, “I, Steven M. Freeland, co~applicant
`
`.
`
`.
`
`. do
`
`hereby, assign and transfer unto Jeffrey S. Wax, the entire rights, title and interest in and to said mark, together
`
`with any goodwill symbolized by the mark.” At
`
`the October 20, 2008 effective date of the Assignment,
`
`Applicants’ Application was based solely on Section l(b) of the Lanham Act.
`
`5.
`
`The sole document Applicants produced in Applicants’ Responses to Opposer’s Document
`
`Request Nos. 78, 79, 80 and 97, which requested all documents evidencing, concerning or supporting the
`
`assignment of Freeland’s interest in Applicants’ Application to Wax, was the Assignment.
`
`6.
`
`Section 10 of the Lanham Act prohibits the assignment of an ITU application based on Section
`
`l(b) of the Lanham Act before the applicant files a verified amendment to allege use or statement of use, unless
`
`an ongoing and existing business connected with the mark is transferred along with the ITU application.
`
`7.
`
`The Assignment in the instant case does not indicate transfer of an ongoing business pertaining to
`
`Applicants’ Mark.
`
`8.
`
`Indeed, as of October 20, 2008 (the date of the Assignment), there was no ongoing business
`
`pertaining to Applicants’ Mark, let alone a j@ ongoing business of Applicants pertaining to Applicants’ Mark,
`
`to transfer with Applicants’ ITU Application as required under Section 10 of the Lanham Act.
`
`

`
`9.
`
`In fact, during Discovery, Wax
`
`REDACTED
`
`10.
`
`Further, during Discovery, joint Applicant Freeland
`
`REDACTED
`
`l l.
`
`The Assignment of Applicants’ ITU Application violates Section 10 of the Lanham Act, due to the
`
`fact that an ongoing existing joint business related to Applicants’ Mark was not assigned with Applicants’ ITU
`
`Application and could not have been assigned, because an ongoing existing business of joint Applicants related to
`
`Applicants’ Mark did not exist at the time of the Assignment.
`
`l2.
`
`Moreover, as the Assignment of Applicants’ ITU Application was assigned apart from the goodwill
`
`in Applicants’ Mark, Applicants’ Application is also void on that basis as an attempted assignment—in—gr0ss.
`
`13.
`
`Further, Applicants did not have a continuing valid basis throughout the registration process, and
`
`thus, registration of Applicants’ Application must be refused.
`
`l4.
`
`Specifically, Applicants did not have a j0_i11_t continuing bona fide intention to use Applicants’
`
`Mark in US. commerce in association with any goods or services, let alone the services listed in Applicants’
`
`Application, throughout the registration process.
`
`U}
`
`

`
`15.
`
`Indeed,
`
`in his Deposition, joint Applicant Freeland
`
`REDACTED
`
`16.
`
`Moreover, joint Applicant Freeland
`
`REDACTED
`
`17.
`
`Thus, joint Applicant Freeland did not have a continuing bona fide intent to use Applicants’ Mark
`
`throughout the registration process, much less a continuing bona fide intent to jointly with Wax use Applicants’
`
`Mark throughout the registration process.
`
`18.
`
`Accordingly, due to j@ Applicants’ failure to have a continuing valid basis throughout the
`
`registration process, Applicants’ Application is void.
`
`Further, pursuant to TBMP §528.03, Opposer hereby moves the Board to suspend the Opposition proceeding
`
`pending a decision on the subject Motion to Amend, Motion for Surmnary Judgment and Motion to Suspend the
`
`Opposition Proceeding (“Opposer’s Motions”), which are supported by the Natland Decl. attached hereto and the
`
`exhibits attached to the Natland Decl. Additionally, a First Amended Notice of Opposition is being submitted
`
`concurrently herewith.
`
`MEMORANDUM IN SUPPORT OF OPPOSER’S
`MOTION FOR LEAVE TO AMEND NOTICE OF OPPOSITION
`
`Pursuant to FRCP l5(a), 37 C.F.R. §2.107(a), and TBMP §507, Opposer hereby requests that the Board grant
`
`Opposer’s Motion to Amend its Notice of Opposition. As indicated above, the sole basis of Applicants’ Application
`
`is Applicants’ bona fide intention to use Applicants’ Mark in U.S commerce. As is summarized above and
`
`discussed in more detail below, facts concerning Applicants’ failure to have an ongoing bona fide intention to use
`
`Applicants’ Mark in US. commerce throughout the registration process have only recently come to light in
`
`Applicants’ Responses to Opposer’s Document Requests, Applicants’ Responses to Opposer’s Requests for
`
`Admissions and Applicants’ Responses to Opposer’s lnterrogatories (collectively “Applicants’ Responses to
`
`4
`
`

`
`Opposer’s Discovery Requests”), as well as during the depositions of Freeland and Wax taken on July 20, 2009
`
`and July 22, 2009, respectively. Accordingly, Opposer seeks leave to amend its Notice of Opposition to add a
`
`cause of action that Applicants’ Application is void due to joint Applicants’ failure to have a continuing jg
`
`bona fide intention to use Applicants’ Mark throughout the registration process.
`
`Moreover, as is summarized above, facts concerning Applicants’ assignment of Applicants’ Application
`
`in violation of Section 10 of the Lanham Act have also only recently come to light in Applicants’ Responses to
`
`Opposer’s Discovery Requests and the testimony provided during the Freeland and Wax depositions.
`
`Accordingly, Opposer also seeks leave to amend its Notice of Opposition to add a cause of action that Applicants’
`
`Application is void due to Applicants’ violation of Section 10 of the Lanham Act.
`
`TBMP §507.02 states that once the answer to the pleading has been filed, a party may amend its pleading
`
`only by written consent of every adverse party or by leave of the Board; leave must be freely given when justice
`
`so requires if it will not unduly prejudice the adverse party. Opposer respectfillly submits that acceptance of the
`
`First Amended Notice of Opposition does not prejudice Applicants. All evidence relevant to the additional claims
`
`that may benefit Applicants is already in the Applicants’ 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 these additional causes of
`
`action.
`
`MEMORANDUM IN SUPPORT OF OPPOSER’S MOTION FOR SUMMARY
`JUDGMENT AND MOTION TO SUSPEND
`
`I.
`
`INTRODUCTION
`
`This is an opposition proceeding brought by Opposer against Applicants’ Application. In the Notice of
`
`Opposition, Opposer asserted that it is or will be damaged by Applicants’ Application.
`
`As set forth more fully in the memorandum herein and shown in the Natland Decl. and the exhibits
`
`attached thereto, this motion is based on the ground that the joint Applicants have not had a continuing bona fide
`
`intention to use Applicants’ Mark in U.S. commerce in association with any goods or services, let alone the
`
`services listed in Applicants’ Application, throughout the registration process. As the sole basis for Applicants’
`
`Application is a bona fide intention to use Applicants’ Mark in U.S commerce (Section l(b)), and, as Applicants
`
`must have a valid basis throughout
`
`the registration process for the services covered under Applicants’
`
`

`
`Application, Applicants’ Application is void. Moreover, as Freeland assigned his rights in Applicants’
`
`Application to Wax in violation of Section 10 of the Lanham Act, Applicants’ Application is void.
`
`The dispositive issues in this case are whether Applicants’ Application, which is based solely on Section
`
`1(b) of the Lanham Act, is void due to joint Applicants’ lack of a jog bona fide intention to use Applicants’
`
`Mark in U.S. commerce in association with the services listed in Applicants’ Application throughout
`
`the
`
`registration process and/or due to the assignment of Applicants’ Application in violation of Section 10 of the
`
`Lanham Act.
`
`The undisputed facts demonstrate (1) that Applicants did not have a joint bona fide intention to use
`
`Applicants’ Mark in association with the services listed in Applicants’ Application throughout the registration
`
`process, and (2) that the Assignment of Applicants’ Application from Freeland to Wax was in violation of Section
`
`10 of the Lanham Act as there was no ongoing business, let alone a joint ongoing business, to transfer along with
`
`Applicants’ ITU Application at the time of the Assignment. Accordingly, Opposer requests that the Board deny
`
`registration of Applicants’ Application on the ground that Applicants’ Application is void.
`
`11.
`
`UNDISPUTED FACTS
`
`The undisputed facts in this matter are as follows.
`
`1.
`
`Applicants’ Application was filed on March 27, 2000 for the mark AMAZON VENTURES for
`
`“financial management, capital
`
`raising,
`
`investment consultation and investment
`
`services” in Class 36
`
`(“Applicants’ Services”). E file history for Applicants’ Application.
`
`2.
`
`3.
`
`4.
`
`Wax and Freeland are listed as joint Applicants in Applicants’ Application. 1;
`
`Wax and Freeland are both listed as “President” in Applicants’ Application.
`
`l_d.
`
`Applicants’ Q basis as ofthe filing date of Applicants’ Application to the present is Applicants’
`
`bona fide intention to use Applicants’ Mark in U.S. commerce on or in connection with Applicants’ Services.
`
`1gl_.
`
`5.
`
`Applicants have not filed an Amendment to Allege Use or Statement of Use with the PTO in
`
`connection with Applicants’ Application. Li.
`
`6.
`
`Only Applicant Wax signed and filed the Office Action Response with the PTO on March 5,
`
`2001 in connection with Applicants’ Application. l_d.
`
`

`
`7.
`
`Only Applicant Wax signed and filed the Change of Correspondence Address with the PTO on
`
`August 19, 2008 in connection with Applicants’ Application. l_d.
`
`8.
`
`9.
`
`On October 22, 2008, Opposer filed a Notice of Opposition against Applicants’ Application.
`
`On December 2, 2008, Applicants jointly answered the Notice of Opposition.
`
`10.
`
`On or about June 17, 2009, Wax recorded the Assignment of Applicants’ Application with the
`
`PTO’s Assignment Division. lg
`
`11.
`
`The Assignment assigned Applicants’ ITU Application from being owned jointly by Wax and
`
`Freeland to being solely own by Wax. The Assignment is effective October 20, 2008. Li; See Exhibit A to the
`
`Natland Decl.
`
`12.
`
`During the Deposition of Freeland, the following question was posed:
`
`REDACTED
`
`(emphasis added). See Deposition Transcript of Steven Freeland attached as Exhibit H to the
`
`Natland Decl. (“Freeland Depo. Transcript”) at p. 76, lines 18-24.
`
`13.
`
`Further, when asked,
`
`REDACTED
`
`(emphasis added).
`
`l_c_l_. at p. 81, lines 22-24, p. 82, line 5.
`
`14.
`
`Similarly, in response to the inquiry,
`
`REDACTED
`
`l_c_l_. at p. 72, lines l8—20.
`
`l5.
`
`Freeland also stated during his Deposition that
`
`REDACTED
`
`(emphasis added). Id. at p.25, lines 3-4.
`
`16.
`
`Further, during the Freeland Depo., when asked
`
`REDACTED
`
`Q at p. 66, lines 1924.
`
`17.
`
`During the Deposition of Wax (“Wax Depo.”), in response to the question
`
`REDAC TED
`
`

`
`REDACTED
`
`(emphasis added). & Deposition Transcript of Jeffrey Wax attached as Exhibit G
`
`to the Natland Decl. (“Wax Depo. Transcript”) at p. 133, lines 22-25.
`
`18.
`
`Further, during the Wax Depo., in response to the question
`
`REDACTED
`
`I_d. at p. 13, lines 2-25, p. 14, lines 1-3, p. 138, lines 20-23.
`
`19.
`
`Further, in response to the question
`
`REDACTED
`
`Li. at p. 138, lines 24-25, p. 139, lines 1-2.
`
`20. An email from Wax to Freeland dated June 10, 2008 confirms the above and states in pertinent part:
`
`REDACTED
`
`(emphasis added). fige Applicants’ Produced Documents attached as Exhibit B to the Natland Dec].
`
`21.
`
`During the Freeland Depo., Freeland
`
`REDACTED
`
`(emphasis added). S_ee Freeland Depo. Transcript at p. 79, lines 14-23.
`
`22.
`
`On June 12, 2008, Freeland sent a response to Wax’s June 10, 2008 email that stated in pertinent
`
`part;
`
`REDACTED
`
`g Exhibit B to the
`
`Natland Decl.; Freeland Depo. Transcript at p. 84, lines 1-3.
`
`23.
`
`Further, Freeland
`
`REDACTED
`
`24.
`
`Further, Wax
`
`REDACTED
`
`(emphasis added). 1c_l_. at p. 84, lines 7-12.
`
`lines 1-24.
`
`(emphasis added). E Wax Depo. Transcript at p. 155,
`
`

`
`25.
`
`Freeland admitted in his Deposition that
`
`REDACTED
`
`fi Freeland Depo. Transcript at p. 95, lines 5-7.
`
`26.
`
`Freeland further stated during his Deposition that
`
`REDACTED
`
`added). Li. at p. 111, lines 15-20.
`
`27.
`
`Regarding any purported intent to use Applicants’ Mark at the time Applicants’ Application was
`
`(emphasis
`
`filed in 2000, Freeland
`
`REDACTED
`
`(emphasis added). kl; at p. 46, lines 24-25, p. 47, lines 2-5.
`
`In response to the inquiry
`
`REDACTED
`
`1d, at p. 47, lines 11-13.
`
`28.
`
`Applicants affirmed the above statement in Applicants’ Supplemental Response to Opposer’s
`
`Interrogatory No. 4 by stating:
`
`law, knowledge of other
`18 years of legal experience, knowledge of patent
`Applicants’
`intellectual property law, including legal opinions as to strengths/weakness of patent claims and
`limiting language from the patent prosecution history, licensing, assignment and enforcement
`options,
`is applied to Applicants’ use of Applicants’
`recited services. More particularly,
`Applicants provide services to either buyers or sellers of patent applications or patents, including
`listing and describing patents and patent applications that are available for license or assignment.
`
`E Opposer’s Meet and Confer letter dated May 4, 2009, and Applicants’ Responses to Opposer’s May 4, 2009
`
`Letter attached as Exhibits E and F to the Natland Decl.
`
`29.
`
`Applicants produced the following sixteen (16) documents in response to Opposer’s Document
`
`Requests, which included requests for: (i) all documents and things which support or tend to support any business
`
`that Wax and Freeland were jointly engaged in at the time of filing Applicants’ Application or were jointly
`
`engaged or employed by at any point in the past; (ii) all documents and things indicating the steps Steven M.
`
`- Freeland and Jeffrey S.-Wax took to establish-a business to use the AMAZON VENTURES mark in connection
`
`9
`
`

`
`with providing Applicants’ Services; and (iii) all documents and things which support or tend to support tlr1_e
`
`existence of an ongoing business concerning the mark AMAZON VENTURES at the time of the assignment of
`
`Freeland’s interest in Applicants’ Application to Wax.
`
`Exhibits to Applicants’ Responses to Opposer’s First Set of Document Reguests
`
`Exhibit 1A:
`
`Whois.net public listings of domain registration, for <amazonventures.com> listing “WAX”
`
`as the owner of the domain name;
`
`Exhibit1B:
`
`Amazonventures.com website page
`
`Exhibit 1C:
`
`Amazonventures.com website page
`
`Exhibit 1D:
`
`Trademark application for AMAZON VENTURES, Serial No. 78/001,126
`
`Exhibit 1E:
`
`Amazon Ventures letterhead showing an address of 30 N. Michigan Avenue, Suite 1623,
`
`Chicago IL 60602, and a telephone number of (31 2) 346~0707
`
`Exhibit IF:
`
`August 6, 2008 letter signed by Susan M. Natland, representing Amazon.com, Inc. and
`
`Amazon Technologies, Inc., to Wax and Freeland
`
`Exhibits to Applicants’ Responses to Opposer’s Second Set of Document Reguests
`
`Exhibit 2A:
`
`Assignment
`
`Exhibit 2B:
`
`Screenshot of <waxlawgroup.com/1552/14701 .html>
`
`Exhibit 2C:
`
`Screenshot of <waxlawgroup.com/19901.html>
`
`Exhibit 2D:
`
`Resume of Steven M. Freeland
`
`Exhibits to Applicants’ Responses to Opposer’s Third Set of Document Reguests
`
`Exhibit 3A:
`
`An AT&T April 20-May 19, 2009 phone statement in the name of Arnold H. Wax (which
`
`is a dentist’s office), on which Wax wrote that the (312) 346-0707 telephone number listed on the bill was
`
`used by Amazon Ventures
`
`Exhibits to Freeland Responses to Opposer’s Document Reguests
`
`SF0000O02—3: Email from Wax to Freeland dated June 10, 2008 and responsive email from Freeland to
`
`Wax dated June 12, 2008
`
`SF0000004-5: Email from Wax to Freeland dated August 7, 2008 and responsive email from Freeland
`
`to Wax dated August 7, 2008
`
`10
`
`

`
`SF0000006:
`
`Email from Freeland to Wax dated August 26, 2008
`
`SF0000007-8: Email from Wax to Freeland dated June 17, 2009 at 10:55 a.m
`
`SF0000009—11:Email from Wax to Graves with cc: to Freeland dated June 17, 2009 at 3:01 p.m.
`
`The foregoing are individually and collectively referred to herein as “Applicants’ Produced Documents” or
`
`“Produced Documents.” True and correct copies of Applicants’ Produced Documents are attached as Exhibit B to
`
`the Natland Decl.
`
`30.
`
`Applicants Llely reference these Applicants’ Produced Documents in response to Opposer’s
`
`Document Request Nos. 86, 88, 89, 90, 93, 94, l 10, 111, 112 which requested:
`
`(i) all documents and things which support or tend to support any business that Wax and Freeland were
`
`jointly engaged in at the time of filing Applicants’ Application or were jointly engaged or employed by 1
`
`point in the past;
`
`(ii) all documents and things indicating the steps Steven M. Freeland and Jeffrey S. Wax tom
`
`establish a business to use the AMAZON VENTURES mark in connection with providing investment
`
`management, raising venture capital for others, investment consultation, and capital investment consultation;
`
`(iii) all documents and things which support or tend to support the existence of an ongoing business
`
`concerning the mark AMAZON VENTURES at the time of the assignment of Steven M. Freeland’s interest in
`
`Applicants’ Application to Jeffrey S. Wax;
`
`(iv) all documents and things concerning the _u§_e_0_f, bona fide intention to use, or application for, the
`
`mark AMAZON VENTURES; and
`
`(v) all business records, including but not limited to minutes or organization meetings, employee listings,
`
`tax identification numbers and information, or filings with any government agency, that were drafted for, or on
`
`behalf of, any organization formed for the purpose of providing Applicants’ Services under Applicants’ Mark.
`
`E Applicants’ Responses to Opposer’s Document Requests attached as Exhibit C, as well as Opposer’s
`
`Discovery Requests attached as Exhibit D to the Natland Decl.
`
`31.
`
`Moreover, in response to Opposer’s May 4, 2009 Meet and Confer Letter, Applicants confirmed
`
`that all responsive documents had been produced, and admitted that “there are no purchase orders, sales
`
`11
`
`

`
`reports, shipping orders, or inventory reports related to Applicant’s services.” kg: Exhibit F to the Natland
`
`Decl.
`
`32.
`
`Because both Wax and Freeland signed Applicants’ Application as “President,” Opposer’s
`
`Document Requests No. 92 requested “[a]ll documents and things identifying the business to which Jeffrey S.
`
`Wax and Steven M. Freeland were both or separately ‘President’ of at the time of filing Applicants’ Application.”
`
`In response to this Document Request, Applicants again solely referenced Applicants’ Produced Documents.
`
`_I_(_1_.
`
`33.
`
`Further, when asked in his Deposition
`
`REDACTED
`
`(emphasis added). S_ee Wax Depo. Transcript at p. 116, lines 9-10, p. 117, lines 9-18.
`
`Similarly in Freeland’s Deposition,
`
`in response to the same question, Freeland
`
`REDACTED
`
`(emphasis added). _S_ge_ Freeland Depo. Transcript at p. 53, lines 22-25, p. 54, line 1.
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`34.
`
`In the Freeland Depo., when asked
`
`REDACTED
`
`Li. at p. 64, lines 20-25, p. 65, lines 1-8.
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`35.
`
`During Freeland’s Depo., Freeland was asked
`
`REDAC TED
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`Id at p. 65, lines 15-18. Wax
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`REDACTED
`
`_
`
`S_e:e Wax Depo. Transcript at p. 38,
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`lines 11-13. Moreover,
`
`in response to
`
`Opposer’s Document Request No. 1 17, Applicants admitted there were no such documents. E Exhibit C to the
`
`Natland Dec].
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`36.
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`Further, Applicants responded “None” to Opposer’s Document Request Nos. 16, 20, 21 and 69,
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`which asked for all documents and things, concerning the total amount spent on promoting and advertising
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`Applicants’ Mark; the projected total amount that will be spent on promoting and advertising Applicants’ Mark;
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`all financial, accounting and corporate records concerning total income and projected income from the sale or
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`12
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`

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`license of goods and/or services sold by Applicants under Applicants’ Mark; and the types of media or
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`publications through which Applicants’ advertise Applicants’ Mark.
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`I_d.
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`37.
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`Applicants also responded “None” to Opposer’s Document Request Nos. 8, 22 and 24, which
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`asked for representative samples of all documents and things relating to, referring to or showing market research,
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`business plans, marketing plans, advertising plans or business forecasts pertaining to Applicants’ Mark. I_d.
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`38.
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`Further, in Applicants’ Response to Document Request Nos. 30, 31, 33, 37 and 39, Applicants
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`acknowledged that they do not promote Applicants’ Mark through any trade or professional associations, that they
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`do not attend any trade shows, and that there are no press releases, magazines, newspaper articles or other printed
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`publications advertising Applicants’ Mark.
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`Id.
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`39.
`
`During his Deposition, when asked
`
`REDACTED
`
`lndeed, the signage on the door of the 30 N. Michigan Avenue, Suite 1623 address rather indicates
`
`See
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`Wax Depo. Transcript at p. 108, lines 14-21; see also Exhibit 1 to Natland Decl. which is a photograph of the
`
`signage on the door of the 30 N. Michigan Avenue, Suite 1623 address.
`
`40.
`
`Further during the Freeland Depo., Freeland stated that he
`
`REDACTED
`
`(emphasis added). E Freeland Depo. Transcript at p. 68, lines 10-
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`25, page 69, line 1, page 95, lines 1-4.
`
`41.
`
`Moreover, during his Deposition, Wax stated that
`
`REDACTED
`
`42.
`
`During his Deposition, Wax was also asked
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`_S__ee Wax Depo. Transcript at p. 109, lines 8-9.
`
`18-20.
`
`REDACTED
`
`id. at p. 111, lines
`
`13
`
`

`
`43.
`
`During his Deposition, Wax also
`
`REDACTED
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`Li. at p. 120,1ines 6-15.
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`44.
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`Wax was asked in his Deposition
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`Li; at p. 82, lines 20-21.
`
`REDACTED
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`2-4, 17-21.
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`45.
`
`Wax also
`
`REDACTED
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`_I_d_. at p. 72, lines 22-25, p. 73, lines 1-3. Wax further
`
`REDACTED
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`(emphasis added). Q at p. 70, lines 22-23.
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`46.
`
`During his Deposition, Wax also
`
`REDACTED
`
`(emphasis added) Q at 69, lines 9-12.
`
`47.
`
`During his Deposition, Wax further
`
`REDACTED
`
`(emphasis added). Q at p. 83, lines
`
`(emphasis added).
`
`admission in writing in response to Amazon’s May 4, 2009 Meet and Confer Letter, when he stated “Applicants
`
`(emphasis added) LCL at p. 156, lines 12-16. Moreover, Wax made this same
`
`do not advertise.” gee Exhibit F to the Natland Dec].
`
`48.
`
`During his Deposition, Wax
`
`REDACTED
`
`(emphasis added). E Wax Depo. Transcript at p. 16, lines 8-24.
`
`49.
`
`During his Deposition, Wax
`
`REDACTED
`
`I_d. at p. 183, lines 13-19; Exhibit B
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`to the Natland Decl.
`
`50.
`
`During his Deposition, Wax
`
`REDACTED
`
`(emphasis added). fig Wax Depo. Transcript at p. 185, lines 17-24.
`
`14
`
`

`
`51.
`
`During his Disposition, Wax
`
`REDACTED
`
`(emphasis added). lg at p. 192, lines 20-25.
`
`52.
`
`When Wax was asked during his Deposition
`
`REDAC TED
`
`(emphasis added). I_d. at p. 57, lines 24-25,
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`p. 58, lines 21-23, p. 60, lines 3-7.
`
`53.
`
`Freeland also
`
`REDAC TED
`
`E Freeland Depo. Transcript at p. 14, lines 17-21, p. 15, lines 9-16, p. 41, lines 24-25,
`
`p. 42, lines 1-4.
`
`54.
`
`Wax
`
`REDACTED
`
`E Wax Depo. Transcript at p. 155, line 25, p. 156, lines 1-9.
`
`55.
`
`During his Deposition, Freeland
`
`REDACTED
`
`lines 9-16, p.17, lines 9-13, p. 18, lines 9-12.
`
`56.
`
`Wax
`
`REDACTED
`
`at p. 48, lines 13-18.
`
`E Freeland Depo. Transcript at p. 14, lines 17-21, p. 15,
`
`_S_e_e Wax Depo. Transcript
`
`

`
`57.
`
`During the Freeland Depo., in responding to the question,
`
`REDAC TED
`
`which is the email from Wax to Freeland dated June 10, 2008 seen in Exhibit B to
`
`the Natland Decl. Q. at p. 23, lines 20-25, p. 24, lines 1-13.
`
`58.
`
`In his Deposition, Freeland also
`
`REDACTED
`
`E Freeland Depo. Transcript at p. 102, lines 23-25, p., lines
`
`103, 1-9.
`
`59.
`
`When asked
`
`REDACTED
`
`Q at p. 94, lines 10-22; _S_§_e Exhibit B to the Natland Decl.
`
`60.
`
`Further, during his Deposition, Freeland
`
`61.
`
`Freeland
`
`REDACTED
`
`107, lines 22-25 and p. 108, lines 1-6.
`
`62.
`
`Wax also
`
`REDACTED
`
`gag Freeland Depo. Transcript at p. 105, lines 12-14.
`
`(emphasis added). E. at p. 107, lines 13-20 and p.
`
`_S_§_e Wax Depo. Transcript at p. 161, lines 18-19.
`
`(emphasis added). Q at p. 161, lines 21-25,
`
`p. 162, lines 1-14.
`
`REDACTED
`
`l_d.
`
`63.
`
`During his Deposition, Wax
`
`REDACTED
`
`Id. at p. 1_88,_lines 1-8.
`
`16
`
`

`
`64.
`
`Moreover,
`
`the only document Applicants produced in Applicants’ Responses to Amazon’s
`
`Document Requests Nos. 78, 79, 80 and 97, which requested “all documents evidencing the negotiations
`
`concerning the assignment,” “all documents evidencing the assignment” and “all documents concerning the
`
`assignment” transferring Steven M. Freeland’s interest in Applicants’ Application to Jeffrey S. Wax, was the
`
`Assignment. E Exhibits A and B to the Natland Decl.
`
`65.
`
`Moreover, during his Deposition, Wax
`
`REDACTED
`
`10-25. Applicants confirmed this statement in writing in response to Opposer’s lnterrogatory No. 18 and Opposer’s
`
`E Wax Depo. Transcript at p. 189, lines
`
`Document Request Nos. 79 and 80. E Exhibit C to the Natland Decl.
`
`Ill.
`
`ARGUMENT
`
`A.
`
`SUMMARY JUDGMENT STANDARD AND BURDEN OF _PROOF
`
`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 56(c). 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 (T.T.A.B. 2003); Sweats Fashions, Inc. v. Pannill Knitting $29.,
`
`833 F.2d 1560, 4 U.S.P.Q.2d 1793, 1797 (Fed. Cir. 1987). Moreover, 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. Bet Lock £2939. 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 Com. v. Catrett, 477 U.S. 317, 324-25 (1986). By meeting its burden of identifying undisputed facts,
`
`Opposer is entitled to relief. Applicants cannot respond merely by pointing to allegations or denials in the pleadings.
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Com., 475 U.S. 574, 586 (1986). Accordingly, Applicants cannot rely
`
`upon denials contained in their pleadings to support their response to the subject motion for summary judgment;
`
`such denials alone are insufficient to raise a genuine issue of material fact. Moreover, mere denials or conclusory
`
`17
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`

`
`
`statements are insufficient. Collins. Inc. v. N. Telecomm. Ltd. 216 F.3d 1042, 1046, 55 U.S.P.Q.2d I143,
`
`l 146 (Fed. Cir. 2000). As a result, Applicants cannot rely upon legally—conclusory declarations or mere denials to
`
`create a genuine issue of material fact.
`
`Instead, Applicants must submit §p_e_cifi_c_ facts showing that there is a genuine issue for trial. Zenith Radio
`
`11;, 475 U.S. 574, 587 (1986).
`
`In doing so, Applicants must present objective evidence from which a reasonable
`
`trier of fact might return a verdict in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-250 (1986). If
`
`Applicants fails to set out “specific facts showing a genuine issue for trial
`
`.
`
`.
`
`. summary judgment should, if
`
`appropriate, be entered against that party.” FRCP Rule 56(e)(2).
`
`B.
`
`THERE IS NO GENUINE ISSUE OF MATERIAL FACT THAT JOINT APPLICANTS
`DID NOT HAVE A CONTINUING BONA FIDE INTENTION TO USE APPLICANTS’
`MARK IN U.S. COMMERCE
`
`i.
`
`A};-Qlicants Did Not JOINTLY Have :1 Continuing Bona Fide Intention to Offer the
`Services Identified in Applicants’ Agglication Throughout the Registration Process
`
`T.M.E.P. §llOl states that “Section l(b) of the Lanham Act, 15 U.S.C. §lO5l(b), provides that an
`
`applicant may file an application based on a bonafide intention to use a mark in commerce “under circumstances
`
`showing the good faith of such person.” In the proposal that became the Trademark Revision Act of 1988, the
`
`Trademark Review Commission shed light on the meaning of a “bonafide” intention by stating: “[b]y ‘bonafide,’
`
`we