Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA401184
`ESTTA Tracking number:
`04/01/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91199060
`Defendant
`Pure Entertainment, LLC
`ANNE L TURNER
`PHELPS DUNBAR LLP
`111 E CAPITOL STREET, SUITE 600
`JACKSON, MS 39201-2124
`UNITED STATES
`anne.turner@phelps.com
`Motion to Suspend for Civil Action
`Anne L. Turner
`turnera@phelps.com
`/ANNE L. TURNER/
`04/01/2011
`Applicant's Motion to Suspend Opposition Proceeding.pdf ( 29 pages )(1775800
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`ANNE L. TURNER (100606)
`DEBRA M. BROWN (10629)
`PHELPS DUNBAR LLP
`4270 I-55 North
`
`Jackson, Mississippi 39211-6391
`Telephone:
`(601) 352-2300
`Facsimile:
`(601) 360-9777
`
`Attorneys for Applicant,
`PURE ENTERTAINMENT, LLC
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BUTTER LICENSING, LLC,
`
`Opposition No. 91 199060
`
`Opposer,
`
`Mark: BUTTER LICENSING, LLC
`
`V.
`
`Serial No. 77/361106
`
`PURE ENTERTAINMENT, LLC,
`
`Filed: December 28, 2007
`
`Applicant.
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`Published for Opposition: November 16, 2010
`
`APPLICANT'S MOTION TO SUSPEND OPPOSITION
`PROCEEDING
`
`Pursuant to 37 C.F.R. §2.117(a), Applicant, Pure Entertainment, LLC (“Pure”), requests that
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`the Trademark Trial and Appeal Board (the “Board”) suspend the above-captioned Opposition
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`proceeding pending the resolution of the federal civil action, Butter Licensing, LLC vs. Pure
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`Entertainment, LLC, 10-CV-01711—JL (the “Federal Action”). A copy of the complaint from the
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`Federal Action is attached hereto as Exhibit A.
`
`On April 21, 2010, Butter Licensing, LLC ("Licensing") filed the Federal Action in the
`United States District Court for the Northern District of California - San Francisco Division.
`
`Licensing's complaint in the Federal Action states an appeal from a final decision of the Board
`
`sustaining Pure's opposition to Licensing's application for registration of the trademark BUTTER
`
`PD.490S22l .1
`
`-1-
`
`

`
`1
`
`LOUNGE and Pure's petition to cancel Licensing's trademark registration for BUTTER
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`RESTAURANT on the grounds of Priority of Use, Likelihood of Confusion and Fraud (although the
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`Board did not find it necessary to reach the fraud allegations in granting Pure's motion for summary
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`judgment). The matter on appeal to the District Court in the Federal Action and the Opposition
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`involve common issues of fact and law such that the resolution of the Federal Action will likely be
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`binding upon the Board in deciding the instant Opposition.
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`Pursuant to 37 C.F.R. §2.117(a), the Board will suspend an inter-partes proceeding when it
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`comes to the Board’s attention that the parties to the proceeding are involved in a civil action that
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`may have a bearing on the inter-partes proceeding. See Anheuser—Busch, Inc. v. The Florists
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`Association Of Greater Cleveland, Inc., 29 U.S.P.Q.2d 1146 (1993); Other Telephone Co. v.
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`Connecticut National Telephone Co., 181 USPQ 125 (TTAB 1974); Tokaido V. Honda Associates
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`Inc., 179 USPQ 861, passim (TTAB 1973); Whopper-Burger, Inc. V. Burger King Corp., 171 USPQ
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`805, 807 (TTAB 1971). In this instance, both the Federal Action and the Opposition proceedings
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`involve the same parties, the same trademarks and will address the same legal issues, namely, the
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`priority of use of the relevant trademarks, the likelihood of confusion with Pure's BUTTER mark
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`caused by Licensing's use of a confusingly similar BUTTER mark, and fraud on the Trademark
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`Office. In fact, many of the issues raised in the Opposition may be barred by the doctrine of res
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`judicata upon a favorable outcome for Pure in the Federal Action.
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`The Opposition proceeding was filed on March 16, 2011, and the time for Pure to answer or
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`otherwise respond to the Opposition has not yet expired (Pure's response is currently due on or
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`before April 27, 2011, according to the Board's web site). Pure notes that, as of the date of this
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`Motion, effective service has not been made on Pure or its attorney of record in this proceeding. No
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`dispositive motions are pending such that the suspension of the Opposition proceeding will prolong
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`the resolution of this matter.
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`For these reasons, Pure respectfully requests that the Board suspend the above-captioned
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`Opposition proceeding including the time to answer and all other dates currently listed in the
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`schedules of dates set by the Board. Pure hereby reserves any and all objections and defenses Pure
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`may have to the Opposition and makes an appearance in this Opposition solely for purposes of
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`PD.4905221.1
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`-2-
`
`

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`requesting this suspension.
`
`DATED: April 1, 2011.
`
`Respectfully,
`
`PHELPS DUNBAR LLP
`
`By:
`
`ANNE L. T RNER
`
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`PD.4905221 .1
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`

`
`PROOF OF SERVICE BY MAIL
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`I am employed in the City of Jackson, County of Hinds, State of Mississippi.
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`1 am over the
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`age of eighteen (18) years and not a party to the within action; my business address is 4270 I-55
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`North, Jackson, Mississippi 3921 1-6391.
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`I am readily familiar with the practice for collection and processing of documents for mailing
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`with the United States Postal Service of Phelps Dunbar LLP, and that practice is that the documents
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`are deposited with the United States Postal Service with postage fully prepaid the same day as the
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`day of collection in the ordinary course of business.
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`On April 1, 2011, I served the following document(s) described as OPPOSER’S MOTION
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`TO SUSPEND OPPOSITION PROCEEDING on the persons listed below by placing the
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`document(s) for deposit in the United States Postal Service through the regular mail collection
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`process at the law offices of Phelps Dunbar LLP, located at 4270 I-55 North, Jackson, Mississippi
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`39211-6391, to be served by mail addressed as follows:
`
`Keith Sklar
`
`McCue, Sussmane & Zapfel, P.C.
`521 Fifth Avenue, 28“‘ Floor
`New York, NY 10175
`
`I declare under penalty of perjury under the laws of the State of Mississippi that the foregoing
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`is true and correct. Executed at Jackson, Mississippi on April 1, 2011.
`
` /fil([i/2
`
`(Q/*(
`
`Natalie Keller
`
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`PD.490522l.l
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`PROOF OF SERVICE
`
`

`
`Case3:10—cv-01711-JL Documenti
`
`FiledO4/21/10 Page1of24
`
`Va‘
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`~37
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`William S. Weisberg (Cal. Bar No. 146284)
`Craig s. Miller (Cal. Bar No. 139682)
`1
`2 WEISBERG & MILLER
`654 Sacramento Street, 3rd Floor
`
`San Francisco, CA 94111
`3
`415-296-7070
`4
`415-296-7060 (fax)
`5 Attorneys for Plaintiff
`
`6 Kenneth Sussmane
`MCCUE SUSSMANE & ZAPFEL, P.C.
`521 Fifth Avenue
`
`7
`
`8 New York, New York 10175
`Telephone: (212) 931 5500
`Facsimile: (212 931 5500
`Attorneys for Plaintiff
`Pro Hac Vice - Application Pending
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`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA - SAN FRANCISCO DIVISION
`
`15 BUTTER LICENSING, LLC,
`
`«AS190
`
`1 7 I
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`16
`17
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`18
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`19
`20
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`21
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`22
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`23
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`24
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`25
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`25
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`Plaintiff,
`
`vs.
`
`PURE ENTERTAINMENT, LLC,
`
`Defendant.
`
`)
`)
`)
`
`)
`)
`)
`)
`
`COMPLAINT
`
`JURY DEMAND
`
`Q "
`
`Plaintiff alleges:
`
`A
`
`THE PARTIES
`
`1.
`
`Plaintiff Butter Licensing LLC is a Delaware limited liability company with a
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`principal place of business located at 415 Lafayette Street, New York New York 10003.
`
`2.
`
`Defendant Pure Entertainment LLC is a California limited liability company with
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`27
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`a principal place of business at 354 11th Street, San Francisco, California 94103.
`
`
`
`
`
`Page 1 of 8
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`23
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`Butter Licensing, LLC. v. Pure Entertainment. LLC
`U.S. Dist. Court (N.D. Cal. - San Francisco Division) Case No.
`PLAlNTIFF’S COMPLAINT
`
`EXHIBIT
`
`rabble‘:
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`Case3:10-cv-O1711—JL Documentt
`U
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`Fi|edO4/21/10 Page2 of 24
`'U
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`NATURE OF THE ACTION
`
`3.
`
`This is an appeal from a final decision of the Trademark Trial and Appeal Board
`
`(“TTAB”) of the United States Patent and Trademark Ofiice (“USPTO”), a copy of which is
`
`attached hereto as Exhibit A. The decision sustained Defendant's opposition to Plaintiffs
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`application for registration of the trademark BUTTER LOUNGE (the “Opposition”) and
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`Defendant's petition to cancel Plaintiffs registered trademark BUTTER RESTAURANT (the
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`“Petition”).
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`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the Trademark Laws ofthe United States, 15 U.S.C. §
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`1051, et seq., pursuant to an appeal, in accordance with 15 U.S.C. § 107l(b)(l) from a final
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`decision of the TTAB. This Court also has subject matter jurisdiction pursuant to 28 U.S.C. §§
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`1331 and 1338(a) and 15 U.S.C. § 1121.
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`5.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 139l(b) because a
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`substantial portion of the events at issue have arisen and/or will arise in this judicial district.
`
`Butter Restaurant
`
`FACTS
`
`6.
`
`Since April 2002, Defendant and its affiliate and licensee, Varrick Group LLC,
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`have operated an elegant restaurant at 415 Lafayette Street, New’York, New York using the
`
`service mark BUTTER RESTAURANT. The two members of Varrick Group LLC are the two
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`members of Plaintiff.
`
`7.
`
`Plaintiffs mark BUTTER RESTAURANT, Reg. Num. 3,380,349, was registered
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`on February 12, 2008 on the principal register for restaurant and bar services in Class 43, and
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`nightclub services in Class 41 (the “Registration”). The mark consists of standard characters
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`without claim to any particular font, style, size or color. No claim was made to the exclusive
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`right to use the word restaurant apart from the mark as shown.
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` Page 2 of 8
`
`
`
`Butter Licensing, LLC. v. Pure Entertainmen;LLLC
`US. Dist. Court (N .D. Cal. — San Francisco Division) Case No.
`PLAINTlFF’S COMPLAINT
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`8.
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`On December 26, 2006, Plaintiff filed under Trademark Act Section l(b) an
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`application for registration of the mark BUTTER LOUNGE (the “Application”) in Class 41 and
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`43 for hospitality services, namely nightclub services and bar, lounge and restaurant services.
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`9.
`
`Butter Restaurant has 4,500 square feet of space capable of accommodating 300
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`guests. Butter Restaurant features a constantly changing menu designed and prepared by
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`executive chef, Alex Guamaschelli, who was trained in French culinary schools and highly-
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`regarded restaurants. Chef Guarnaschelli is a featured chef on the Food Network, a cable
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`television channel, and frequently appears in television and print media as a culinary expert.
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`10.
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`Butter Restaurant’s menu features local and seasonal ingredients, sourced from
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`various farmers, paired with a Wine Spectator award winning wine list. The food is French in
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`style and technique and all-American in ingredients.
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`1 1.
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`Butter Restaurant markets its services to a specific class of discerning restaurant
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`patrons. Plaintiffs venue and services have also been retained for private events for celebrities,
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`fashion designers, recording artists and corporations. Monday nights in the lounge are renowned
`and highly publicized in the national media, with paparazzi camped in front ofthe venue.
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`12.
`
`Butter Restaurant’s services and venue are in high demand, and as such have
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`become a staple of the New York social scene evidenced by multiple features or mentions and
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`appearances in top rated network television programming.
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`13.
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`Butter Restaurant extensively markets and advertises its brand, including
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`employing a renowned public relations firm to generate press placement, including hundreds of
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`articles in national newspapers, websites and magazine.
`
`Defendant’s Bar
`
`14.
`
`Defendant operates a small local bar at 354 11”‘ Street in San Francisco which
`
`bills itself as “white trash bistro” featuring “two turntables and a microwave.”
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`l5.
`
`16.
`
`Defendant does not operate a restaurant or a nightclub.
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`Defendant is situated between a crepes stand operating in an empty lot and an aut
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`body shop. Defendant operates in a small rectangular space dominated by a large rectangular bar
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` Page 3 of 8
`
`Butter Licensing, LLC. v. Pure Entertainmeng LLC.
`U.S. Dist. Court (N.D. Cal. — San Francisco Division) Case No.
`PLAINTI.FF’S COMPLAINT
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`Other than stools surrounding the bar, there is limited seating at a few small high-topped tables
`
`and couches. There is no dining area. The menu lists bar food such as corn-dogs, SpaghettiO’s
`
`and deep—fried Twinkies, plus drinks with names like the “Shotgun Wedding.” Consistent with
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`such theme, a side of a “trailer” was installed inside the premises Butter S.F., through the
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`window of which snacks are served to the.bar’s customers. A small room of approximately 60
`
`square feet is located behind the trailer front and is equipped with a refrigerator, microwave oven
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`and a deep fryer. There is no other kitchen area. An employee heats or deep fries the snacks and
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`serves them to customers through the window of the trailer, on paper plates using plastic utensils.
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`Preparation requires no skill or culinary training. The menu features desserts consisting of pre-
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`packaged baked goods normally found in a convenience store. Defendant serves specialty
`alcoholic beverages featuring Sunny Delight, grape and strawberry Soda and Tang. Defendant
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`had a total of 12 employees from 1999 through September 29, 2008.
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`17.
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`Defendant’s major form of marketing is through local disc jockeys appearing at
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`Butter S.F., who prepare and hand out flyers. Defendant does no marketing outside of San
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`Francisco.
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`18.
`
`Defendant took no steps to expand beyond its current San Francisco location in
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`nine years.
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`l9.
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`On October 17, 2000, Defendant received a registration on the Principal Register
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`for restaurant and bar services featuring the provision of food and drink in, both alcoholic and
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`non-alcoholic, in International Class 42 (now Class 43) for: BUTTER AND DESIGN:
`
`L
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`(“Defendant’s Mark”). It depicted a stick of butter (rectangular shape with curved edges) into
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`which the word “butter” was carved. Defendant disclaimed the exclusive right to use BUTTER
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`apart from the mark as shown.
`
`I»)\l
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` Page 4 of 8
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`Butter Licensi_ng, LLC. v. Pure Entertainment. LLC.
`U.S. Dist. Court (N.D. Cal. — San Francisco Division) Case No.
`PLAlNTl'FF’S COMPLAINT
`
`
`
`
`
`PHONE415-296-7070FAX415029607060
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`Case3:10—cv—01711—JL Document1
`is
`’
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`Filed04/21/10 Page5 of 24
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`20.
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`Defendant failed to file the required Section 8 Affidavit of Continued Use on
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`October 17, 2006. Defendant’s S.F. Mark was cancelled on July 21, 2007.
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`21.
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`The Petition and Opposition claimed that Defendant holds a common law
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`trademark to the Butter S.F. Mark, stating , “At all times from and after May 20, 1999, Defendan
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`has used Defendant’s Mark [Butter & Design] in interstate commerce to designate its bar,
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`restaurant and entertainment services.” The Petition and Opposition did not claim a trademark to
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`the word butter separate from Defendant’s Mark.
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`22.
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`On or about December 22, 2003 the ownership of Defendant changed hands and
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`Defendant’s Mark was abandoned. Defendant ceased using the Butter Mark in its premises or
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`marketing materials, or on its website. Defendant adopted a new mark which consists of a
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`melting pat of butter underneath the word “butter” (the “Defendant’s New Mark”).
`Protection of the Marks
`0
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`23.
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`Plaintiff has vigorously defended its trademark against third parties who have
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`attempted to use Plaintiffs trademark to confuse actual and potential customers into the belief
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`that their services are originated with, sponsored by or associated or approved by Plaintiff.
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`Plaintiff took action against an infringing restaurant in Chicago, Illinois (establishment has now
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`closed), a restaurant and lounge in Los Angeles, California (opened under a different name), and
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`a restaurant and lounge being constructed in Wilmington, North Carolina (ceased use of name).
`
`Registration of BUTTER RESTAURANT Mark
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`24.
`
`Defendant’s deadline to file a Section 8 Affidavit for Defendant’s Mark expired
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`on October 17, 2006.
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`25.
`
`Plaintiff filed an “intent to use” application for the trademark BUTTER LOUNGE
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`for “nightclub, bar, lounge and restaurant services” on December 26, 2006.
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`26.
`
`On January 15, 2007, Plaintiff filed an original use-based application for the
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`trademark BUTTER RESTAURANT for “nightclub, bar and restaurant services.”
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`27.
`
`On July 17, 2007, the United States Patent and Trademark Office (“PTO”)
`
`
`
`Butter Licensing, LLC. v. Pure Entertainment, LLC
`U.S. Dist. Court (N.D. Cal. — San Francisco Division) Cme No.
`PLAINrn=F’s COMPLAINT
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`Page 5 of 8
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`officially canceled Defendant’s Mark.
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`28.
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`29.
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`The BUTTER RESTAURANT trademark was registered on February 18, 2008.
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`Butter Restaurant was opened to great publicity in April 2002. Its services and use
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`of its trademark have not changed substantially since April 2002.
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`30.
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`Defendant did not contact Plaintiff from March 2002 until it instituted these
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`proceedings in April 2008; two years after the four—year California statute of limitations on
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`infringement had expired. This instant action arose only because of the actions of Plaintiff in
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`September 2007 to prevent an infringer firom opening a Butter restaurant and lounge in Los
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`Angeles. A representative of the infringer contacted Defendant to inquire about acquisition of
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`Defendant’s Mark to enable him to misappropriate Plaintiffs goodwill and confuse Plaintiffs
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`customers into believing that he was opening a branch of the New York Butter Restaurant in Los
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`Angeles. Such person advised Defendant that Defendant’s Mark had been canceled. Only then
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`did Defendant attempt a new registration and file the Petition and Opposition. Defendant has no
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`plans to expand, cannot cite a single instance of actual confusion, and has never taken any action
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`to police its mark. The only purpose of the Petition and. Opposition was to prevent Plaintiff from
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`protecting its mark.
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`COUNT I
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`REQUEST FOR JUDICIAL REVIEW OF TRADEMARK TRIAL AND APPEAL
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`BOARD DECISION (5 U.S.C. §§701 et. seq. and 5 U.S.C. §§1063, 1071(b)
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`31.
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`Plaintiff incorporates by reference all allegations contained in paragraphs 1
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`through 29 of this Compliant as if set forth fully herein.
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`32.
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`The TTAB has issued a final decision sustaining Defendant's opposition to
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`Plaintiffs application for registration of the trademark BUTTER LOUNGE and Defendant's
`petition to cancel Plaintiffs registered trademark BUTTER RESTAURANT. The decision is a
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`final decision subj ect to judicial review.
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`33.
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`Plaintiff respectfully requests de novo judicial review of the decision under the
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`Administrative Procedures Act and the Lanham Act.
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`N\I
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`//
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`I9 %
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` Page 6 of 8
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`Butter Licensing, LLC. v. Pure Entertainment. LLC.
`U.S. Dist. Court (N.D. Cal. — San Francisco Division) Case No.
`PLAINTIFF’S COMPLAINT
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`WEISBERG&MILLER«
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`LAWOFFICESor
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`Case3:10—cv-01711-JL Documentt
`U
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`FiledO4/21/10 Page? of 24
`0
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`34.
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`Plaintiff asserts that the TTAB erred in granting Defendant’s motion for summary
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`judgment, and denying its cross—motion for summary judgment, and seeks review of the TTAB’s
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`decision pursuant to 15 U.S.C. § l70l(b).
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`35.
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`36.
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`Plaintiff is dissatisfied with the TTAB’s decision.
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`The TTAB erred in ruling that Defendant established priority and likelihood of
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`confusion as a matter of law, which errors included the following:
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`EL
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`The TTAB erred in finding Defendant claimed that Defendant owned the mark
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`BUTTER. Defendant claimed in the Opposition and Petition to own only the
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`mark BUTTER AND DESIGN. Ex A. at page 10
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`The TTAB erred in finding that Defendant’ s evidence established continuous use
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`of its marks because Defendant failed to present evidence of the continued use of
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`the Defendant’s Mark (BUTTER AND DESIGN) after 2003. Ex. A at page 10.
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`The TTAB erred in finding that there was no genuine issue of fact regarding the
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`similarity of services of Plaintiff and Defendant, including the issue of whether
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`Defendant offered restaurant services. Ex. A at page 12.
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`The TTAB erred in presuming the services of Plaintiff and Defendant to be
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`identical, failing to consider that Defendant did not own a registered mark. Ex. A
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`at page 12.
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`The TTAB erred in finding that there was no genuine issue of fact regarding the
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`channels of trade the parties’ services, failing to consider any evidence presented
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`with respect to the differing channels of trade. Ex. A at page 12.
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`The TTAB erred in finding that there was no genuine issue of fact regarding the
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`confusing similarity of the marks. Ex. A at pages 13-14.
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`g. The TTAB erred by failing to consider evidence introduced by Plaintiff.
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`The TTAB erred in finding that Plaintiffs evidence failed to support the
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`affirmative defense of laches.
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`1 2 3
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`4 5 6 7 8 9
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`10
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`11
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`12
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`27
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`//
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`28
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`Page 7 of 8
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`Butter Licensing, LLC. v. Pure Entertainment, LLC.
`US, Dist. Court (N.D. Cal. — San Francisco Division) Cme No.
`PLAINTIFF’S COMPLAINT
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`
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`LAWOmensor
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`WEISBERG&MILLER654SACRAMENTOSTREET-ri-mu)noon-SANFRANCISCO-CA94111
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`mom»:415-296-7070FAX415o296o7060
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`Case3:10—c‘v-01711-JL Document1
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`Fi|edO4/21/10 Page8 of24
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`37.
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`Plaintiff has superior equitable claims to register its mark in the United States,
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`based on factors including the facts that Defendant has never used its mark outside of San
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`Francisco, taken no steps to expand outside of San Francisco, and taken no steps to stop
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`infringers, whereas, Plaintiffhas long standing use ofits marks in multiple states and has activelyi
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`protected its mark from infringers.
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`38.
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`Plaintiff has additional evidence to submit to this Court that was not presented to
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`the TTAB, which supports its claims and right to Plaintiff’ 5 marks.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully requests that the Court:
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`A.
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`Reversal of the TTAB’s February 25, 2010 decision to cancel Plaintiffs BUTTE
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`RESTAURANT mark, Reg. No. 3,380,349.
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`B.
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`An order directing the TTAB to allow registration of Plaintiffs BUTTER
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`LOUNGE mark, Ser. No. 77/071279
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`C.
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`Grant Plaintiff such additional, other or further relief as the Court deems just and
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`15
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`proper.
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`WEISBERG & MILLER
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`DATED: April 1L, 2010
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`JURY DEMAND
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`Plaintiff demands trial by jury.
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`WEISBERG & MILLER
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`for P intiff
`Attorneys
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`
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`DATED: April 2010
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`By:
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`V
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`~ beg,
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`V
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`Butler Licensing_LLC. v. Pure Entertainment LLC
`US. Dist. Court (ND. Cal. — San Francisco Division) Czse No.
`PLAINTIFF’S COMPLAINT
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`Page 8 of 8
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`Case3:10—c\{—O1711—JL Document‘!
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`FiledO4/21/10 Page9 of24
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`EXHIBIT A
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`

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`Case3:10—cv-01711—JL Document‘|
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`Fi|ed04/21/10 Page10of24
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`UNWEDSTATESPATENTANDTRADEMARKOFHCE
`Trademark Trial and Appeal Board
`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`THIS OPINION IS NOT A
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`PRECEDENT OF THE T.T.A.B.
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`MBA
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`Mailed: February 25, 2010
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`91183799
`Opposition No.
`Cancellation No. 92049767
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`Pure Entertainment, LLC
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`v.
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`Butter Licensing, LLC
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`Before Bucher, Zervas and Bergsman, Administrative Trademark
`Judges
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`By the Board:
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`These consolidated cases now come up for consideration
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`of:
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`(1) opposer/petitioner Pure Entertainment LLC’s
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`(“opposer”) motion for summary judgment, filed April 29,
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`2009;
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`(2) applicant/respondent Butter Licensing, LLC’s
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`(“applicant”) cross—motion for summary judgment, filed
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`October 16, 2009;
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`(3) opposer’s motion, filed November 5,
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`2009,
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`to strike applicant's combined response to opposer’s
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`motion for summary judgment and cross—motion for exceeding
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`the page limit; and (4) applicant's cross—motion, filed
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`November 24, 2009, for “leave to re—submit” a revised
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`response and cross—motion not exceeding the page limit.
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`Each motion is fully—briefed. Both parties seek summary
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`

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`Case3:10-cv_—01711-JL Document1
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`Filed04/21/10 Page11of2-4
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`Opposition No. 91183799 and Cancellation No. 92049767
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`judgment on opposer’s claims of priority and likelihood of
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`confusion and fraud.
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`Background
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`Applicant owns a registration of the mark BUTTER
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`RESTAURANT1 and a pending application to register buflnr
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`l0unge,2 both for restaurant, nightclub and bar services.
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`In its pleadings, opposer alleges prior use of BUTTER and
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`the mark shown below
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`uliisfié
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`(“BUTTER & Design”)
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`for bar, restaurant and nightclub
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`services. Opposer further alleges that it previously owned
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`a registration of its BUTTER & Design mark,3 and that after
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`that registration was cancelled under Section 8, opposer
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`the subject of Cancellation No.
`Registration No. 3380349,
`1
`92049767,
`issued February 12, 2008 from an application filed
`January 15, 2007, with the exclusive right
`to use the word
`RESTAURANT disclaimed, based on a date of first use in commerce
`of April 1, 2002 for “services, namely nightclub“ and “services
`namely restaurant and bar."
`the subject of Opposition
`2
`Application Serial No. 77071279,
`No. 91183799, filed December 26, 2006 with the exclusive right to
`use the word LOUNGE disclaimed, based on an intent to use the
`mark for “Nightclub Services” and “bar,
`lounge and restaurant
`services.”
`
`issued October 17, 2000 from an
`Registration No. 2395741,
`3
`application filed October 28, 1999, and based on a date of first
`use in commerce of May 20, 1999, with the exclusive right to use
`the word BUTTER disclaimed, for “Restaurant and bar services
`featuring the provision of food and drink, both alcoholic and
`non-alcoholic.”
`
`

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`Case3:10—cv-O1711—.JL Document1
`‘EV
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`Fi|edO4/21/‘IO Page12of24
`\-i
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`Opposition No. 91183799 and Cancellation No. 92049767
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`filed, and currently owns, a pending application to register
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`the same mark.4 As grounds for opposition and cancellation,
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`opposer alleges that use of applicant's marks is likely to
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`cause confusion with, and dilute, opposer’s marks, and that
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`applicant committed fraud because at the time it filed its
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`applications, applicant “knew or should have known” of
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`opposer’s prior use of its marks, but “failed to disclose"
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`this fact to the Office.
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`In its answers, applicant denies
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`the salient allegations in opposer’s pleadings and asserts
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`several affirmative defenses,
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`including that opposer
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`abandoned its BUTTER & Design mark and that applicant has
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`priority.
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`The Parties’ Motions
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`Opposer relies primarily on the Declarations of Carlton
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`Solle (“Solle Dec."), its former owner and member, and
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`Oliver Paine (“Paine Dec."),
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`its current owner and member.
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`These witnesses testify that opposer has used BUTTER “as a
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`fictitious business and trade name," and BUTTER & Design as
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`a mark,
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`for restaurant and bar services “continuously and
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`without interruption" since May 20, 1999. Solle Dec.
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`flfl 6,
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`10-12; Paine Dec.
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`‘M 5-7, 11-12; Paine Dec. Ex. 1, 2, 10
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`
`
`Application Serial No. 77361106, filed December 28, 2007
`4
`based on a claimed date of first use in commerce of May 20, 1999
`for “Entertainment services, namely, providing disc jockey
`services and accompanying mixed musical, video, film and light
`shows, nightclub services" and “Restaurant and bar services.”
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`

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`Case3:10-cv-01711-JL Document1
`‘hi
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`FiIedO4/21/10 Page13of24
`\.I
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`Opposition No. 91183799 and Cancellation No. 92049767
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`(advertisements and promotional items); see also,
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`Declaration of Vlad Cood (“Cood Dec."), one of opposer’s
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`current members and owners in support of opposer’s Response
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`to Applicant’s Cross—Motion Ex.
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`1 (exterior signage);
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`Supplemental Declaration of Oliver Paine (“Paine Supp.
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`Dec.”)
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`in Support of opposer’s Response to Applicant's
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`Cross—Motion Ex. 17
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`(promotional materials).
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`5 opposer
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`further claims that the parties’ marks are “virtually
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`identical” in overall commercial
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`impression, are used for
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`identical services and travel in similar or identical
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`channels of trade.
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`with respect to its fraud claim, opposer introduced
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`evidence that in 2001, after becoming aware of applicant's
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`intention to use BUTTER for a restaurant, it sent a cease
`
`and desist letter to applicant informing it of opposer’s
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`alleged prior rights. Solle Dec.
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`flfl 13-18 and Ex. 2-7.
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`Based on this evidence, subsequent communications between
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`the parties, id;, and opposer’s now—cancelled registration,
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`opposer argues that applicant had “actual knowledge of
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`Opposer's senior use over a long period of time.” According
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`to opposer, applicant therefore committed fraud on the
`
`Office when it submitted declarations in connection with its
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`some
`while opposer’s evidence indicates that opposer at
`5
`point adopted a modified mark comprising BUTTER and a design
`resembling a melting stick of butter, it nevertheless reveals
`continuous use of the original BUTTER & Design mark.
`
`

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`Case3:10—cv—O1711—JL Document1
`V-I
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`Fi|edO4/21/10 Page14 01°24
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`Opposition No. 91183799 and Cancellation No. 92049767
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`applications stating that to the best of its knowledge,
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`“no
`
`other person,
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`firm, corporation or association has the right
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`to use the mark in commerce, either in the identical form
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`thereof or in such near resemblance thereto as to be likely,
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`when used on or in connection with the goods/services of
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`such other person,
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`to cause confusion W." Opposer further
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`argues that applicant had an “objective intent” to commit
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`fraud, and/or had a “reckless disregard for the truth.”
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`Applicant's original response to opposer’s motion for
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`summary judgment and cross—motion,
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`including the tables
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`submitted therewith, exceeds the page limit set forth in
`6
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`Trademark Rule 2.l27(a).
`
`This page limit “cannot be waived
`
`by action,
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`inaction or consent of the parties." Saint-
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`Gobain Corp. v. Minnesota Mining and Manufacturing C0,, 66
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`USPQ2d 1220, 1222 (TTAB 2003).
`
`Furthermore, although
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`applicant's filing consists of a response to opposer’s
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`motion and a cross—motion, this is of no consequence because
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`both the response and cross—motion address the same issues
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`raised in opposer’s motion. Cooper Technologies Co. v.
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`Denier Electric C0,, 89 USPQ2d 1478, 1479 (TTAB 2008).
`
`Accordingly, opposer’s motion to strike the response and
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`5 Trademark Rule 2.127(a) states in relevant part: “Neither the
`brief in support of a motion nor the brief in response to a
`motion shall exceed twenty~five pages in length in its entirety,
`including table of contents,
`index of cases, description of the
`record, statement of the issues, recitation of the facts,
`argument, and summary.”
`
`

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`Case3:10-Cy-O1711—JL Documenfi
`‘mi
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`FiIedO4/21/10 Page15of24
`\.’
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`Opposition No. 91183799 and Cancellation No. 92049767
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`cross—motion is hereby GRANTED, and applicant's cross—motion
`
`for leave to re—submit a compliant brief is hereby DENIEN as
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`the proposed amended brief is untimely.
`
`We have gi