`ESTTA299744
`ESTTA Tracking number:
`08/07/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189980
`Defendant
`The Modern Group, Ltd.
`JAN K. SIMPSON
`FULBRIGHT & JAWORSKI LLP
`1301 MCKINNEY ST STE 5100
`HOUSTON, TX 77010-3095
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`DOIPDocket@Fulbright.com, efrazier@fulbright.com, mdelflache@fulbright.com
`Motion to Dismiss - Rule 12(b)
`Erin Frazier
`DOIPDocket@Fulbright.com, efrazier@fulbright.com, mdelflache@fulbright.com
`/Erin Frazier/
`08/07/2009
`Modern's Motion to Dismiss.pdf ( 14 pages )(502050 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NATIONAL OILWELL VARCO, L.P.
`
`Opposer,
`
`v.
`
`THE MODERN GROUP, LTD.
`
`Applicant.
`
`omoooamoooaooaoocoowo
`
`Opposition No. 91189980
`Serial No. 77/462,382
`Mark: CONTINENTAL EMSCO
`
`APPLICANT’S COMBINED MOTION TO DISMISS OPPOSER’S FRAUD
`ALLEGATIONS AND RELATED CLAIM AND MOTION TO STRIKE PARAGRAPHS
`10-13 IN THE NOTICE OF OPPOSITION AND MEMORANDUM IN SUPPORT
`
`Pursuant to Fed. R. Civ. P.
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`l2(b)(6) and 37 C.F.R. § 2.116, The Modern Group, Ltd.
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`(“Applicant”) moves to dismiss National Oilwell Varco, L.P.’s (“Opposer”) fraud allegations and
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`related claim for failure to state a claim. Opposer fails to plead fraud with particularity as
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`required by Fed. R. Civ. P. 9(b).
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`1.
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`PROCEDURAL HISTORY
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`Opposer filed a Notice of Opposition against applicant’s Trademark Application No.
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`77/462,382 for
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`the mark CONTINENTAL EMSCO )
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`(“Opposition”)
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`(Opposition No.
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`91189980). Among other assertions, Opposer alleges that Applicant committed fraud upon the
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`United States Patent and Trademark Office (“USPTO”) (Opposition W 10-13). Opposer accuses
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`Applicant of fraudulent misrepresentation regarding Applicant’s sworn declaration as to
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`ownership of the CONTINENTAL EMSCO mark and as to the rights of others to use the mark.
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`However, Opposer fails to allege sufficient details as to the facts surrounding Applicant’s
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`allegedly fraudulent acts as required by law. Therefore, Applicant moves to dismiss Opposer’s
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`fraud allegations and the related fraud claim and strike Paragraphs 10-13 in the Opposition.
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`806073131
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`— 1 -
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`
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`II.
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`LEGAL A UTHOR]TY
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`Pursuant to 37 C.F.R. § 2.116(a), a pleading that asserts fraud as a ground for opposition
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`of an application must satisfy Fed. R. Civ. P. 9(b). Fed. R. Civ. P. 9(b) requires that “[i]n all
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`averrnents of fraud or mistake, the circumstances constituting fraud or mistake shall be stated
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`with particularity. Fed. R. Civ. P. 9(b). Specifically, pleading fraud with particularity requires
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`the allegations include “the time, place and content of the false representation,
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`the fact
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`misrepresented, and what was obtained or given up as a consequence of the fraud. ” WR. Grace
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`& Co. v. Ariz. Feeds 195 U.S.P.Q. (BNA) 670, 672 (Comm’r Pat. 1977) (emphasis added). The
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`Federal Circuit has similarly acknowledged that pleading fraud requires “identification of the
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`specific who, what, when, where, and how of the material misrepresentation or omission
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`committed before the PTO. Exergen Corp. v. Wal-Mart Stores, Inc. No. 2006-1491, 2007-1180
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`slip. op. at 22 (Fed. Cir. August 4, 2009) (applying requirements of Fed. R. Civ. P. 9(b) to a
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`pleaded allegation of inequitable conduct in a patent infringement case).
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`The Trademark Trial and Appeal Board (“TTAB”) has four requisite elements for
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`pleading fraud: (1) another use of the same or a confusingly similar mark existed at the time the
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`oath was signed; (2) the other user had legal rights in the mark superior to the applicant’s rights;
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`(3) applicant had actual knowledge that the other user had rights in the mark superior to
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`applicant’s and either believed that a likelihood of confusion would result from the ap-plicant’s
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`use of its mark or had no reasonable basis for believing otherwise; and (4) the appllicant,
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`in
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`failing to disclose these facts to the Trademark Office, intended to procure a registration to which
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`the applicant was not entitled.
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`Intellimedia Sports Inc. v. Intellimedia Corp., 43 U.S.P.Q.2d
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`(BNA) 1203, 1207 (T.T.A.B. 1997); See also, Ohio State University v. Ohio University, 51
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`U.S.P.Q.2d (BNA) 1289, 1293 (T.T.A.B. 1999).
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`80607313.]
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`- 2 -
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`
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`At a minimum, Opposer fails to plead the necessary requirements of the third and fourth
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`elements of fraud as mandated by the TTAB
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`III.
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`ARGUMENT
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`A.
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`Opposer Fails to Sufficiently Plead the Third element offraud — Actual Knowledge
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`and Timing
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`In order to sufficiently plead the third element of fraud, Opposer must allege facts that, if
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`proven, demonstrate that the applicant actually knew that a prior user had rights in the mark
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`superior to applicant’s and either believed that a likelihood of confusion would result from the
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`applicant’s use of its mark or had no reasonable basis for believing otherwise.
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`Intellimedia, 43
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`U.S.P.Q.2d at 1207.
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`1.
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`Opposer Fails to Plead the That Applicant Held the Reguisite State of Mind —
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`Actual Knowledge
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`a
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`A licant’s declaration is not a basis to lead fraud
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`Fraud requires that Applicant had actual knowledge of Opposer’s superior rights. The
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`TTAB notes in Intellimedia that it is nearly impossible to prove fraud by relying on applicant's
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`declaration because the assertions of ownership and exclusive use set forth in the declaration are
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`based on the applicant's belief. 43 U.S.P.Q.2d at 1206. (citations omitted).
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`In paragraph 12 of
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`the Opposition, Opposer makes the same flawed argument using Applicant’s statement in its
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`declaration. Specifically, Opposer states that:
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`80607313.]
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`— 3 -
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`
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`[I]n the declaration filed with the ‘382 Application, Applicant stated that, to the
`best of Applicant’s knowledge and belief “no other person has the right to use
`such mark in commerce either in the identical form thereof or in such near
`resemblance thereto as to be likely, when used on or in connection with the goods
`of such other person, to cause confusion or to cause mistake, or to deceive.” This
`statement
`is false, was material
`to examination and publication of the ‘382
`Application, and was made under circumstances in which Applicant knew or
`should have known it was false.
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`(Opposition ll 12). Since the Intellimedia case, the TTAB has spoken again on this very issue in
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`Galleon v. Havana Club Holding, 2004 TTAB Lexis 38, *51 (T.T.A.B. 2004), finding that “it is
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`not fraud to state in the application oath that one ‘believes himself, or the firm, corporation or
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`association in whose behalf he makes the verification, to be the owner of the mark sought to be
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`registered” (citations omitted).
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`Opposer is mistaken in relying on Applicant’s declaration as a basis to support an
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`allegation of fraud.
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`(bl
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`Opposer’s remaining paragraphs also fail to provide any support for actual
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`knowledge
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`A petitioner must allege that the defendant was actually aware of petitioner’s glam
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`Qgfl. Intellimedia, 43 U.S.P.Q.2d at 1207. (emphasis added).
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`In paragraph 10, Opposer merely
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`pleads, by example,
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`that Applicant hired certain persons previously employed by Opposer
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`without drawing any connection to anything. Opposer fails to allege how its former employees
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`acquired §1_<_:tpa_l knowledge as to Opposer’s supposed use of the CONTINENTAL EMSCO mark.
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`Opposer does not provide any basis as to when these former employees learned this information,
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`or whether these employees knew anflhing about Opposer’s use at
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`the time Applicant’s
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`declaration was executed.
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`80607313.]
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`- 4 -
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`Then, in the next paragraph, Oppose pleads on information and belief that Applicant
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`was, at one point in time, aware of Opposer’s prior use of Opposer’s Marks. (Opposition '[[11)
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`However, Opposer fails to plead that Applicant knew Opposer held superior rights in the mark,
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`but prefaces such with an “on information and belief’ qualification.. A well accepted principle
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`of federal pleading is that averments of fraud may not be alleged upon “information and belief’
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`unless the facts are peculiarly within the defendant’s knowledge, in which case the allegations
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`“must be accompanied by a statement of facts upon which the belief is based.” Lasky v.
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`Shearson Lehman Bros. Inc. 139 F.R.D. 597, 598 (S.D.N.Y. 1991) (emphasis added); See also 9
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`Paul Sullivan Tennis Sportswear, Inc. v. Balth. Blickle’s Wwe, 213 U.S.P.Q. (BNA) 390, 393
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`(T.T.A.B. 1982).
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`In paragraph 12, Opposer mistakenly attempts to rely on the declaration having a belief
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`qualification as noted above.
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`Recognizing it has no factual basis to assert the essential actual knowledge prong of
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`element three, Opposer then attempts in paragraph 13 to gloss over the obvious deficiencies by
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`making mere conclusory statements that, at the time the declaration was filed, Applicant was
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`“aware of, or at the very least should have been aware of, Opposer’s prior use of Opposer’s
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`Marks”, that the declaration statement was material and if that statement had not been included
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`the application would have been rejected, and finally that Applicant’s employees “were aware of
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`or, at the very least, should have been aware of, Opposer’s prior use of Opposer’s Marks”
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`(Opposition 1113). Even assuming Applicant knew that Opposer had made use of Opposer’s
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`mark at some point in the past, Applicant’s knowledge of “prior use” by Opposer does not form a
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`basis to conclude that Applicant knew Opposer held superior rights in the Opposer’s Marks.
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`Opposer must allege something more than simply that Applicant knew of Opposer’s prior use.
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`806073131
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`
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`Intellimedia Sports Inc.
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`v. Intellimedia Corp., 43 U.S.P.Q.2d (BNA) 1203, 1207 (T.T.A.B.
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`1997); See also, Galleon v. Havana Club Holding, 2004 TTAB Lexis 38, *55-56 (T.T.A.B.
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`2004). Opposer must specify facts that, if proven, would establish that Applicant believed
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`Opposer had superior rights to the mark and that Applicant's use of mark would create a
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`likelihood of confusion. Intellimedia, 43 U.S.P.Q.2d at 1207.
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`2.
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`Opposer Fails to Plead the Proper Timeframe for Applicant’s Knowledge
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`Opposer must also sufficiently plead facts that demonstrate the applicant held the
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`requisite knowledge at the time the declaration was executed. King Automotive, Inc. v. Speedy
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`Muffler King,
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`Inc. 667 F.2d 1008, 1010-11, 212 U.S.P.Q. (BNA) 801, 803 (C.C.P.A. 1981)
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`(emphasis added).
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`It is not sufficient to plead and prove applicant was aware of the same or
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`similar mark used by a third party prior to the applicant’s priority date; the party asserting fraud
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`must also allege and prove that the applicant was aware of such use at the time the declaration
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`was executed.
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`Id. Opposer merely alleges by example that Applicant hired nine people from
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`Opposer and then somehow, on information and belief, Applicant was not the owner of the mark
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`at issue.
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`(Opposition W10-11). But, all nine people listed have worked for Applicant since at
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`least July 2007, nearly one year prior to the execution of Applicant’s declaration. Regardless of
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`when these employees left Opposer, and what they knew or did not know at that time, Opposer
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`fails to connect this alleged knowledge to Applicant’s knowledge at the time the declaration was
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`executed. Because Opposer fails to connect App1icant’s knowledge to the time when the
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`declaration was executed, Opposer’s pleading necessarily fails to sufficiently plead fraud.
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`At the very minimum, Opposer should have waited to conduct discovery and then move
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`to amend the Notice of Opposition to include factual statements obtained in discovery. This is
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`806073131
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`the normal and proper process if Opposer is without sufficient information to properly allege
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`fraud with the requisite particularity. See Warner-Lambert Co. v. Teva Pharms. USA, Inc., 418
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`F.3d 1326, 1333-34 (Fed. Cir. 2005).
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`3.
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`Opposer Fails to Plead the That Applicant Knew the Proper Information
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`Opposer must also allege something more than Applicant believed Opposer previously
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`used the mark. Irztellimedia, 43 U.S.P.Q.2d at 1207. Opposer must specify facts that, if proven,
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`would establish that Applicant believed Opposer had superior rights to the mark and that
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`Applicant's use of mark would create a likelihood of confusion.
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`Intellimedia, 43 U.S.P.Q.2d at
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`1207. (emphasis added). Opposer fails to allege any facts that would indicate Applicant believed
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`Opposer had superior rights in Opposer’s Marks.
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`In fact, Opposer’s sole registration (No.
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`2,027,364) for EMSCO, which is only a portion of Applicant’s mark CONTINENTAL EMSCO
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`was cancelled in October of 2007 for failure to renew. This cancellation occurred nearly six
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`months before Applicant signed the declaration and filed its application for CONTINENTAL
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`EMSCO.
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`If anything, such information provides the public with reasonable and adequate belief
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`to conclude that Opposer had abandoned its rights to the EMSCO mark. See Exhibit A, a copy
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`of TARR records for Opposer’s expired registration.
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`Nevertheless, Opposer alleges that Applicant’s declaration statement was material
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`because “absent that false statement,
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`the ‘382 Application would have been rejected under
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`U.S.C. § l052(d) based on likelihood of confusion between Applicant’s Mark and Opposer’s
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`Mark.” (Opposition fi[l3). Opposer, however, fails to allege any prior application or enforceable
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`registration for a same or confusingly similar mark which would have caused the Trademark
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`Office to reject
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`the Applicant’s Application. Why would Applicant
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`identify a cancelled
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`registration as an indication of a currently active use with superior rights when the facts indicate
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`80607313.]
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`
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`the very opposite‘? Opposer simply fails to allege any facts that indicate Applicant believed
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`Opposer had superior rights in Opposer’s Marks.
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`B.
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`Opposerfails to sufficiently pleadfourth element offraud —Applicant’s Intent
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`To sufficiently plead the fourth element of fraud, Opposer must also allege that the
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`applicant, in failing to disclose a third party’s superior rights to the Trademark Office, intended
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`to procure a registration to which the applicant was not entitled. A party alleging fraud must
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`provide factual allegations demonstrating that the applicant withheld the relevant information
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`from the Trademark Office with intent to mislead and to obtain a registration to which applicant
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`knew it was not entitled. King Automotive, Inc. v. Speedy Mufller King, Inc. 667 F.2d 1008, 1011
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`n.4, 212 U.S.P.Q. (BNA) 801, 803 (C.C.P.A. 1981). Opposer merely states in conclusory fashion
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`that App1icant’s false statements were made “knowingly,” but provides no other factual
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`allegations as to Applicant’s state of mind. (Opposition 1113.)
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`Opposer fails to plead that Applicant held the requisite intent to obtain a registration to
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`which Applicant was not entitled. A fraudulent statement requires an intent to deceive. Paul
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`Sullivan Tennis Sportswear, 213 U.S.P.Q. at 393 (emphasis added). The TTAB has established
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`that an intent to deceive is something more than a false statement, which “may be occasioned by
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`a misunderstanding or inadvertence, a mere negligent omission, or the like.” Id. (stating that “a
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`fraudulent misrepresentation consequently involves
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`an intent
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`to deceive and must be
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`distinguished from a false representation”) Opposer, referring to Applicant’s declaration,
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`merely asserts that “Applicant knew or should have known it was false” (Opposition 1112). This
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`is wholly inadequate. Even if true, this would not rise to the level of an intent to deceive
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`required for pleading and proving the fourth element of fraud. Opposer fails to allege facts
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`806073131
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`- 8 -
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`sufficient to demonstrate that Applicant held the requisite intent required to prove the fourth
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`element of fraud.
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`IV.
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`CONCLUSION
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`The Notice of Opposition, even if liberally construed, does not provide sufficient
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`allegations to satisfy the heightened pleading requirements regarding allegations of fraud. As
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`such, Applicant requests the dismissal of Opposer’s fraud claims pursuant to Fed. R. Civ. P.
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`l2(b)(6) for failure to state a claim upon which relief can be granted, and that Paragraphs 10-13
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`of the Notice of Opposition be struck.
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`DATED: August 7, 2009
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`Respectfully submitted,
`
`/s/ Marc. L. Delflache
`
`Marc L. Delflache
`
`Email: mdelflache@Fulbright.com
`Erin B. Frazier
`
`Email: efrazier@Fulbright.com
`FULBRIGHT & JAWORSKI, L.L.P.
`2200 Ross Ave.
`
`Suite 2800
`
`Dallas, TX 75201
`
`Telephone: (214) 855-8000
`Fax: (214) 855-8200
`Email: DOlPDocket@Fulbright.com
`
`ATTORNEYS FOR THE MODERN
`
`GROUP, LTD.
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`806073131
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`- 9 -
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`CERTIFICATE OF SERVICE
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`This is to certify that a copy of the foregoing APPLICANT’S COMBINED MOTl[ON TO
`DISMISS OPPOSER’S FRAUD ALLEGATION AND RELATED CLAIM AND MOTION TO
`STRIKE PARAGRAPHS 10-13 IN THE NOTICE OF OPPOSITION AND MEMORANDUM
`IN SUPPORT and Associated Exhibit A were served by First Class Mail, postage prepaid, on
`August 7, 2009, upon Opposer’s Attorney at the address below:
`
`Gregory L. Maag
`Conley Rose, P.C.
`P.O. Box 3267
`
`Houston, TX 77253-3267
`UNITED STATES
`
` ~
`
`Erin B. Frazier
`
`806073131
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`-10-
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`
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`EXHIBIT A
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`
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`Latest Status Info
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`Page 1 0f3
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`Thank you for your request. Here are the latest results from the tL
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`This page was generated by the TARR system on 2009-08-07 13:57:22 ET
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`Serial Number: 74412475 Assignment Information
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`Trademark Document Retrieval
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`Registration Number: 2027364
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`Mark (words only): EMSCO
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`Standard Character claim: No
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`Current Status: Registration canceled under Section 8.
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`Date of Status: 2007-10-06
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`Filing Date: 1993-07-13
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`Transformed into a National Application: No
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`Registration Date: 1996-12-31
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`Register: Principal
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`Law Office Assigned: LAW OFFICE 104
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`If you are the applicant or applicant's attorney and have questions about this file, please contact the
`Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 40S -Scanning On Demand
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`Date In Location: 2006-09-14
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`LAST APPLICANT(S)/OWNER(S) or RECORD
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`1. NATIONAL-OILWELL, L.P.
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`Address:
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`NATIONAL-OILWELL, L.P.
`10000 RICHMOND AVENUE, SUITE 400
`HOUSTON, TX 770424200
`United States
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`Legal Entity Type: Limited Partnership
`State or Country Where Organized: Delaware
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`GOODS AND/OR SERVICES
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`International Class: 007
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`Class Status: Section 8 - Cancelled
`oil and gas processing equipment; namely, positive displacement pumps
`Basis: 1(a)
`First Use Date: 1995-02-14
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`First Use in Commerce Date: 1995-02-14
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`http://tarr.uspto.gov/servlet/tarr?regser=seria1&entry=74412475
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`08/07/2009
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`
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`Latest Status Info
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`Page 2 of 3
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`International Class: 01 1
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`Class Status: Section 8 - Cancelled
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`Basis: 1(a)
`First Use Date: 1994-11-30
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`First Use in Commerce Date: 1994-11-30
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`Prior Registration Number(s):
`370912
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`(NOT AVAILABLE)
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`ADDITIONAL INFORMATION
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`MADRID PROTOCOL INFORMATION
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`PROSECUTION HISTORY
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`NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown
`near the top of this page.
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`2007-10-06 - Canceled Section 8 (10-year)/Expired Section 9
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`2006-09-14 - Case File In TICRS
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`2003-1 1-20 - Partial Section 8 (6-year) accepted & Section 15 acknowledged
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`2003-06-02 - Post Registration action mailed Section 8 & 15
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`2002-12-30 - Section 8 (6-year) and Section 15 Filed
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`2002-12-30 - TEAS Section 8 & 15 Received
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`1996-12-31 - Registered - Principal Register
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`1996-10-16 - Allowed for Registration - Principal Register (SOU accepted)
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`1996-07-26 - Communication received from applicant
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`1996-05-09 - Non-final action mailed
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`1996-04-22 - Assigned To Examiner
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`1996-04-04 - Statement of use processing complete
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`1996-04-04 - Extension 1 granted
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`1996-01-30 - Extension 1 filed
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`1996-01-30 - Amendment to Use filed
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`1995-08-15 - Noa Mailed - SOU Required From Applicant
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`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=74412475
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`08/07/2009
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`Latest Status Info
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`Page 3 Of-3
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`1995-05-23 - Published for opposition
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`1995-04-21 - Notice of publication
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`1995-01-24 - Approved for Pub - Principal Register (Initial exam)
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`1995-01-24 - Amendment to Use - Express withdrawal
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`1994-12-12 - Communication received from applicant
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`1994-06-28 - Non-final action mailed
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`1994-06-27 - Previous allowance count withdrawn
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`1994-06-14 - Approved for Pub - Principal Register (Initial exam)
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`1994-06-13 - Amendment to Use approved
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`1994-04-28 - Communication received from applicant
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`1994-05-20 - Amendment to use processing complete
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`1994-04-28 - Amendment to Use filed
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`1993-1 1-08 - Non-final action mailed
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`1993-10-20 - Assigned To Examiner
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`ATTORNEY/CORRESPONDENT INFORMATION
`
`Attorney of Record
`JONATHAN M. PIERCE
`
`Correspondent
`JONATHAN M. PIERCE
`CONLEY ROSE PC
`P.O. BOX 3267
`
`HOUSTON, TX 77253-3267
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`http://tarr.uspto.gov/servlet/tarr?regser=seria1&entry=74412475
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`08/07/2009