Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA496226
`ESTTA Tracking number:
`09/24/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206543
`Defendant
`Walters, Marvin J.
`MARVIN J. WALTERS
`11025 30TH AVE N
`TEXAS CITY, TX 77591-2180
`
`waltersmarvin64@yahoo.com;aliciat@royce
`Motion to Dismiss - Rule 12(b)
`Marvin J. Walters
`wisehorse@aol.com
`/Marvin J. Walters/
`09/24/2012
`FINAL_FINAL Walters_MTD_Case No. 91206543Sept_23_201.pdf ( 15 pages
`)(170377 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the matter of Application Serial No. 85/531665
`Filed on February 2, 2012
`For the Mark BLACK STUNTMEN’S ASSOCIATION HOLLYWOOD BSA (and design)
`Published in the Official Gazette on July 10, 2012
`
`
`
`BLACK STUNTMEN’S ASSOCIATION, a
`Nevada non-profit corporation,
`
`
`
`
`
`
`vs.
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`Case No. 91206543
`
`
`
`
`
`
`MARVIN J. WALTERS, an individual
`
`
`
`Applicant.
`
`
`APPLICANT MARVIN J. WALTER’S MOTION TO DISMISS OPPOSER’S
`
`OPPOSITION TO APPLICATION SERIAL NO. 85/531665 DUE TO LACK OF
`
`SUBJECT MATTER JURISDICTION DUE TO OPPOSER'S LACK OF STANDING
`
`
`
`
`
`
`
`
`
`
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`I. SUMMARY OF THE ARGUMENT
`
`This case derives from the February 2, 2012 Trademark Application filed by Marvin Walters
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`(Applicant) to register the “Black Stuntmen’s Association Hollywood aka BSA” Name and Mark
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`shown in Application Serial No. 85/531665. Opposer filed an opposition on August 3, 2012
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`claiming its ownership in same.
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`
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`Opposer has never owned the “Black Stuntmen’s Association aka BSA” Name and Mark as shown
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`in Application Serial No. 85/531665. The true owner of the said Name and Mark has always been
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`Applicant Marvin J. Walters.
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`
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`Opposer’s President Willie Harris formally acknowledged same on July 31, 2008 when he
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`executed a nonexclusive, noncommercial License Agreement with Applicant to use the “Black
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`Stuntmen’s Association aka BSA” Name and Logo for the limited purposes defined in the License
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`Agreement (“Agreement”). Opposer acknowledged Applicant as the creator and owner of the
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`Name and Mark; and agreed not to challenge or interfere with Applicant’s ownership rights,
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`including Applicant’s right to register the “Black Stuntmen’s Association aka BSA” Name and Mark
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`with the USPTO. (EXHIBIT “A” – License Agreement)
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`
`
`Opposer’s claim that on September 8, 2008 it filed Articles of Incorporation for the “Black
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`Stuntmen’s Association Nevada non-profit corporation” is wholly untrue. Instead the Nevada
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`Secretary of State records indicate that Opposer was “formed” by of Certificate of Correction to
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`change its name to “The Black Stuntmen’s Association.” The Certificate of Correction was filed by
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`its President Willie Harris (licensee) on July 12, 2012, days before it filed the Notice of Opposition.
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`(EXHIBIT “B” - Certificate Of Correction).
`
`
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`Opposer’s unsupported allegation that its President Willie Harris revived the “Black Stuntmen’s
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`Association aka BSA” Name and Mark in 2006 is not persuasive and fails to establish ownership
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`here. First Applicant never abandoned the “Black Stuntmen’s Association aka BSA” Name and
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`Mark and second, Willie Harris ultimately signed the License Agreement with Applicant.
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`
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`As a licensee, Opposer is not the owner of “Black Stuntmen’s Association aka BSA” Name and
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`Mark; it has no real interest in the proceedings and no reasonable basis in fact to believe it would
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`suffer any damages upon Applicant’s registration of the Black Stuntmen’s Association Name and
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`Mark, particularly since Opposer acknowledged Applicant’s right to do so in the License
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`Agreement.
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`
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`This motion will also show that Opposer’s complaint before the TTAB and the actions by its
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`President Willie Harris, evidence a malicious, fraudulent and deliberate campaign of trademark
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`infringement designed to distort Applicant’s personal record of achievement and completely strip
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`Applicant of his rights in the “Black Stuntmen’s Association aka BSA” Name and Mark. Opposer’s
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`actions also illustrate a wanton disregard for the truth, a willful disrespect for the law and the
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`processes afforded by the Nevada Secretary of State and the USPTO; and, a basic lack human
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`decency. Therefore, Applicant prays that the Board dismisses the Opposition in its entirety with
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`prejudice and awards Applicant reasonable attorney’s fees.
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`
`
`II. FACTS
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`Mr. Walters co-founded the “Black Stuntmen’s Association” also known as the “BSA” in 1967. Mr.
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`Walters created the name “Black Stuntmen’s Association aka BSA” and singularly designed its
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`logo. Mr. Walters has possession of his original hand drawings of both the “Black Stuntmen’s
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`Association aka BSA” logo and its predecessor the “Negro Stuntmen’s Association” also known as
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`the “NSA.” The documents bear Mr. Walters’ signature and are dated in 1967 and 1968. Mr.
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`Walters granted the “Black Stuntmen’s Association aka BSA” a nonexclusive, nontransferable
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`limited license to use the “Black Stuntmen’s Association aka BSA” Name and Mark for as long as
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`the organization existed in due form and pursued its original mission of advancing diversity,
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`equality, and the interests of stunt performers in the entertainment industry. The license and all
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`rights granted to the “Black Stuntmen’s Association aka BSA” thereby immediately terminated and
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`reverted to Mr. Walters once the organization became defunct.
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`
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`In 1973, Applicant founded the “Coalition of Black Stuntmen and Women” (“Coalition”) to unite
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`African American stunt performers in various Hollywood guilds. Applicant, like all Coalition
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`members, maintained dual memberships in the “Black Stuntmen’s Association aka BSA” and other
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`unions. However, Applicant strategically used the Coalition to launch several historic federal
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`lawsuits against the motion picture industry on behalf of the BSA since some members feared
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`reprisal from the studios. Applicant courageously filed the federal suits under the caption: “Marvin
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`Walters on behalf of the Coalition and others similarly situated.” (Exhibit “C” Federal Pleadings ).
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`
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`By doing so, Applicant singularly placed himself in grave danger. He was blacklisted and the
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`target of a malicious firebombing and other threats. (Exhibit “D” Daily Variety Oct. 1976” Civil
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`Rights Witness Threatened”). However, upon settlement of the litigation, each member of the
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`BSA, including Opposer’s President, Willie Harris, received a monetary payout in addition to
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`improved working conditions and opportunities for advancement in the entertainment Industry.
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`(Exhibit “E” Settlement Agreement signed by Willie Harris; Class included All members of Black
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`Stuntmen’s Association) Applicant’s strategy was noble and singularly courageous. It created
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`racial and gender equality for stunt performers, model diversity training programs at the major
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`studios, the Stunt Safety Division of the Screen Actors Guild, and numerous beneficial changes for
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`all people regardless of race throughout the industry. Many studios employ these programs and
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`policies still exist today. Opposer’s deliberate mischaracterization of these events is unfortunate.
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`
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`License Agreement
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`In July 2008, Willie Harris, President of Opposer organization, executed a License Agreement
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`wherein Applicant granted him the limited right to use the “Black Stuntmen’s Association aka BSA”
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`Name and Mark. While the License Agreement was formally executed in July 2008, the parties
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`discussed the matter as early as January or February 2008 in anticipation of a November 6, 2008
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`reunion. The event was organized by Willie Harris to honor BSA members.
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`
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`In special recognition of Applicant’s achievements and as an enticement for Applicant to attend as
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`the surviving co-founder of the Black Stuntmen’s Association, Willie Harris purchased a plane
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`ticket on September 23, 2008 and secured accommodations at the Fitzgerald Hotel (the site of the
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`reunion) for the Applicant. (Exhibit “F” Southwest Airlines Payment Record) The reunion was not
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`for, and did not separately recognize the Coalition of Black Stuntmen and Women (“the Coalition”).
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`Applicant was given the identical personalized “BSA” trophy award that all other members
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`received. It is Applicant’s understanding and belief that Willie Harris, who is retired, unemployed
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`and on a fixed income, did not secure a plane ticket for any of the many other stunt performers
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`who attended; nor did he purchase or arrange for a ticket for the many indigent stunt performers
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`who would have attended but for the travel costs.
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`
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`In 2005, as part of Applicant’s ongoing work with the “Black Stuntmen’s Association aka BSA”,
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`Applicant began Executive Producing a media project about the Black Stuntmen’s Association.
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`Applicant had been discussing the project with Willie Harris in anticipation of the reunion since this
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`was the first time they would be gathered in one place. Applicant hired a production crew, paid for
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`travel from New York, rented production equipment and shot extensive raw footage of the 2-day
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`event and individual interviews of members of the original Black Stuntmen’s Association
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`organization, including Willie Harris. Each member of the original Black Stuntmen’s Association
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`organization signed a Production Release acknowledging Applicant Marvin Walter’s as the
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`Executive Producer of the BSA project. The production release gave all rights to the project to
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`Applicant. (Exhibit “G” Production Release) In 2009, Applicant also filmed an event in
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`Washington D.C. in which the Black Stuntmen’s Association was honored by the U.S. House of
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`Representatives, the U.S. Senate and the Congressional Black Caucus.
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`
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`This was not a “Naked License,” all of Willie Harris’ activities on behalf of the BSA per the License
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`were organized with the full knowledge, consent and participation of Applicant. Applicant actively
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`provided oversight, input, contacts, production equipment and financial resources to produce and
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`promote the events, ensure quality control and maintain the goodwill of the “Black Stuntmen’s
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`Association aka BSA’s” Name and Mark. Applicant and Ms. Tilque, an attorney and producer who
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`has worked with Applicant to advance the mission of the “Black Stuntmen’s Association aka BSA”
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`since 2005, created and supplied all of the work product (research, files, treatments,
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`correspondences, promotional materials, historical documents); participated on conference calls
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`with and, provided ongoing logistical support to Willie Harris, various congresspersons, their staff,
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`and key decision makers in the request for, preparation and execution of the events hosted by both
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`Houses of Congress, the Congressional Black Caucus, the California State Assembly and
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`Governor Schwarzenegger, the Smithsonian Institute, the NAACP and the NAACP Image awards.
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`With the exception of one engagement, Applicant has personally attended every event honoring
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`the “Black Stuntmen’s Association aka BSA” during the term of the Licensing Agreement.
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`
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`History of Opposer’s Nevada Entities
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`Contrary to Opposer’s claim, no entity named the Black Stuntmen’s Association was ever
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`registered in the state of Nevada or elsewhere in September 2008. Instead, the current Opposer
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`Nevada organization resulted from a Certificate of Correction that Willie Harris filed on July 12,
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`2012, days before Opposer brought this action.
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`
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`Entity 1: BlackStuntmens Association, LLC - July 23, 2008
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`The Nevada Secretary of State’s records indicate that on or about July 23, 2008, Willie Harris filed
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`an application to reserve the business name “BlackStuntmens Association, LLC” (Entity Number:
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` E0466142008-0). “BlackStuntmens” is recorded as one word. There is no apostrophe in
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`“stuntmens” to indicate the possessive form of the word. The application, which was abandoned,
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`was filed on or about the time Willie Harris executed the License Agreement with Applicant.
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`(Exhibit “H”)
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`
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`Entity 2: Black Stuntman’s Association Sept. 8, 2008 (Note original signatures July 24, 2008)
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`Willie Harris filed a second application with the Nevada Secretary of State on or about September
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`8, 2008 for the “Black Stuntman’s Association” (underline added) (Business ID: NV20081522826;
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`Entity Number E0573882008-8). The word “Stuntman” is singular and possessive. (Exhibit “I”)
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`
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`Neither Applicant’s Name and Mark as shown in Application Serial No.: 85/531665 nor the original
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`1960’s stunt organization “Black Stuntmen’s Association aka BSA” has ever been spelled, known
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`as, done business as, or been referred to as the “Black Stuntman’s (singular possessive)
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`Association” or the “BlackStuntmens (one word, no apostrophe) Association.”
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`On July 12, 2012, almost four years after creating the Black Stuntman’s Association, Willie Harris
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`filed a Certificate of Correction with the Nevada Secretary of State changing the word Stuntman’s
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`to Stuntmen’s.
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`
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`Willie Harris filed the Name Reservation, the Articles of Incorporation and the Certificate of
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`Correction with full knowledge of Applicant’s ownership and use of “Black Stuntmen’s Association
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`aka BSA” Name and Mark. However, Willie Harris never registered the name “Black Stuntmen’s
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`Association” for which he now claims ownership. Moreover, neither Willie Harris nor any of the
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`officers of Opposer organization, amended the incorrect name in their annual filings or otherwise in
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`the four years since the organization was established.
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`
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`While many members of the original Black Stuntmen’s Association, including co-founder Eddie
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`Smith retired, died or otherwise left the group, Applicant had a vested interest in BSA. He
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`singularly maintained a bona fide use of the Name and Mark to promote the mission of the
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`organization. Applicant has several Federal tax documents filed with the IRS in the 1990s
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`indicating use of the “Black Stuntmen’s Association aka BSA” Name and Mark in commerce. His
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`use includes merchandising, writing and publishing a history of the “Black Stuntmen’s Association
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`aka BSA” and building a multi-media platform, which includes a documentary, a feature film, an
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`online presence, archiving footage and documents honoring BSA members and providing
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`resources for current stunt performers. Moreover, Applicant’s continued civil rights work has
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`resulted in substantial goodwill inuring to the Name and Mark as evidenced by the current interest
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`in, and numerous honors and awards recently bestowed upon, the “Black Stuntmen’s Association
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`aka BSA.”
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`
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`Opposer Willie Harris has initiated a campaign of harassment, intimidation and cyber bullying
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`against Applicant Walters since Opposer applied for Trademark protection. Opposer Willie Harris
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`has made several statements against interest that “he knows Applicant owns the Mark but that will
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`“destroy Marvin’s ass” and ”hit him hard with a lawsuit.” Opposer initiated this frivolous and
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`meritless action on or about March 2012 and Applicant was served with a “cease and desist letter.”
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`This was Applicant’s first notice that Opposer existed as a Nevada entity helmed by Licensee
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`Willie Harris or that Willie Harris had breached the License Agreement. While Applicant was
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`preparing to secure counsel, his daughter was tragically killed by a drunk driver on March 31, 2012
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`and Applicant was forced to focus his time and resources on family matters. Opposer’s attorney
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`was notified in writing of the death. Applicant is informed and believes that Willie Harris along with
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`other members of the original Black Stuntmen’s Association were informed of her death as well.
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`
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`On or about April 1, 2012, Applicant’s “Official Black Stuntmen’s Association aka BSA” web and
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`social media sites including its Facebook, Twitter and g-mail were repeatedly hacked. On or
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`about April 10, 2012 Applicant’s Facebook page, which had several hundred “likes” and friends;
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`and, was an active and growing forum for the stunt community was completely removed. The
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`Facebook account was linked to Applicant’s “Official Black Stuntmen’s Association aka BSA” g-
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`mail account, which was also hacked. Applicant Walters and Ms. Tilque were the sole
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`administrators of the social media and g-mail accounts, which were both password protected. On
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`or about August 7, 2012, the Google security team recovered the g-mail account. While most of
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`the content (sent items, folders, in-box) had been compromised, there was an email dated April 16,
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`2012 to Willie Harris, an outspoken Veteran, from Veronica Puryear regarding rights for Nevada
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`Veterans (Exhibit “J” – Emali and Internet Protocol printout).
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`
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`Willie Harris was not an administrator and had no access or authorization to use, send or receive
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`emails on this private, password protected email account. Applicant is working with security from
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`Google and Facebook to investigate the source of the IP addresses and the hackers in the event
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`criminal charges are brought. As a result of the hacking, it now appears that the website and the
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`Facebook page never existed. Again, the e-mail to Willie Harris is telling evidence and consistent
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`with his bad faith actions in this case. Moreover, the timing indicates that hacking was done
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`around the time and with full knowledge of the tragic death. However Applicant is waiting until the
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`full investigation is completed. The Official Black Stuntmen’s Association Twitter account is still
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`active and there are several links within its historical chain to the former Facebook page.
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`
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`III. LEGAL Standard
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`A. Standing Requirement in Federal Court Cases
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`Standing is a "threshold question in every federal case, determining the power of the court to
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`entertain the suit." Warth v. Seldin, 422 U.S. 490, 498, 45 L. Ed. 2d 343, 95 S. Ct. 2197 (1975). A
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`motion to dismiss based on lack of standing must be brought under Federal Rule of Civil
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`Procedure 12(b)(1) because standing is jurisdictional. Ballentine v. United States, 486 F.3d 806,
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`810 (3d Cir. 2007) and may be brought at any time to either (1) “attack the complaint on its face” or
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`(2) “attack the existence of subject matter jurisdiction in fact, quite apart from any pleadings.”
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`Mortensen v. First Fed. Sav. and Loan Ass'n, 549 F.2d 884, 891 (3d Cir. 1977). In the second type
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`of 12(b)(1) motion, the court does not presume that the allegations in the plaintiff’s complaint are
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`true, and “the trial court is free to weigh the evidence and satisfy itself as to the existence of its
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`power to hear the case.” Id. Furthermore, the plaintiff has the burden of proving that the court has
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`subject matter jurisdiction. Id.
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`
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`
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`B. Standing in Trademark Cases.
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`Standing is also a threshold question in matters before the TTAB. An opposer must show that is
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`has standing to sue and that there is a valid statutory ground negating the applicant’s right to
`registration.1 “If proof of lack of standing emerges at any stage of a proceeding before it, the TTAB
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`is obligated to dismiss the proceeding.” Melwani v. Allegiance Corp., 97 USPQ2d 1537 (TTAB
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`2010); Demon Int. LC v. Lynch, 86 USPQ2d 1058 (TTAB 2008). Moreover, “where the TTAB found
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`a failure to prove standing and also a failure to prove the opposer’s case on the merits, the
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`opposition was dismissed with prejudice.” Id.
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`
`
`1. Lanham Act Section 43
`Section 43 of the Lanham Act (15 U.S.C 1125a) provides in part that any person2 who believes it
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`would be damaged by the registration of a mark upon the principal register may file an opposition
`upon establishing that it has a “real interest” in the proceedings and a “reasonable basis”3 in fact
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`for its belief that it would suffer some kind of damage if the mark is registered. Universal Oil Prod.
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`Co. v. Rexall Drug & Chem. Co., 463 F.2d at 1124, 174 USPQ at 459-60. Ritchie v. Simpson, 170
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`F.3d 1092 (Fed. Cir. 1999).
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`
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`2. The Doctrine of Licensee Estoppel
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`Licensee Estoppel has traditionally been applied to bar a licensee from challenging or contesting in
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`any way the validity of the licensed mark, its registration or its ownership by licensor. The well-
`
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`1 Young v. AGB Corp., 152 F.3d 1377, 47 U.S.P.Q.2d (Fed. Cir. 1998); Lipton Indust., Inc. v. Ralston Purina
`Co., 670 F.2d 1024, 213 U.S.P.Q. 185 (C.C.P.A. 1982).
`2 The Act defines “person” broadly to include a juristic person, such as a firm, corporation union, or
`association as well as a natural person. 15 U.S.C. § 1127; TBMP § 303.02.
`3 A subjective belief of likelihood of injury, without more, is insufficient for a non- registrant or non-owner of
`a mark to maintain an action under Section 43(a)(1). Rosenfeld v. W.B. Saunders, 728 F. Supp. 236, 241-
`42 (S.D.N.Y. 1990), aff’d, 923 F.2d 845 (2d Cir. 1990). See also Coyne’s & Co., Inc. v. Enesco, LLC, 565 F.
`Supp. 2d 1027, 1043 (D. Minn. 2008) (plaintiff must have a “reasonable interest to be protected” such as “a
`commercial interest in the product wrongfully identified with another’s mark” or “a commercial interest in the
`misused mark”) (citing Stanfield v. Osborne Indus., Inc., 52 F.3d 867, 873 (10th Cir. 1995)).
`
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`settled policy underlying the licensee estoppel doctrine is that of unfair competition. By definition,
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`a licensee is not the owner and, whether by an express or implied no contest convenant, should
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`not be permitted to enjoy the benefits afforded by the license agreement while simultaneously
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`challenging the Licensor’s rights or urging that the trademark, which forms the basis of the
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`agreement, is void. John C. Flood of Va., Inc. v. John C. Flood, Inc. 642 F.3d 1105, 1111 99
`U.S.P.Q. 2d 1047 (D.C. Cir. 2011).4
`
`
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`3. The Restatement (3rd) Unfair Competition § 33
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`Under the Restatement, courts view licensee estoppel as an equitable doctrine that should not be
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`applied rigidly and in all situations. Courts must nevertheless consider the circumstances of each
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`case, including the nature of the licensee’s claim and the terms of the license. Restatement Third,
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`Unfair Competition § 33, comment d (1995). Martha Graham School and Dance Foundation, Inc.
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`v. Martha Graham Center of Contemporary Dance, Inc., 153 F. Supp. 2d 512, 420 (S.D.N.Y.
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`2001). However, courts and the T.T.A.B. have consistently found that even where a licensee is
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`granted standing to sue a licensor and the issue turns on ownership, as opposed to infringement
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`upon the licensee by either the licensor or a third party of licensor, a plaintiff must show “proof of
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`ownership of a proprietary right’ or that it has ‘a reasonable interest to protect,’ which some courts
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`have characterized as a commercial interest." Gruen Mktg. Corp. v. Benrus Watch Co., 955 F.
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`Supp. 979, 983 (N.D. Ill. 1997) Charles E. McKenney and George F. Long III, Federal Unfair
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`Competition Lanham Act § 43(a), § 9.03[1] at 11-12. See also, Stephen Slesinger, Inc. v. Disney
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`Enterprises, Inc., 98 USPQ2d 1890 fn17 (TTAB 2011):
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`(In) actions brought under Trademark act § 2(d), a plaintiff must establish its priority, which it
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`cannot do without providing its ownership of some prior right with which Disney’s mark might
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`cause confusion. (emphasis added) .
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`
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`IV. ANAYLSIS
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`In the present case, Opposer has asserted rights which are not based on its own federal
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`registrations thus Opposer’s ownership of rights (or lack thereof) in the “Black Stuntmen’s
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`Association aka BSA” Name and Mark is the pivotal issue in these proceedings. Opposer may not
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`rely on a presumption of validity of its trademark rights, and in order to prevail on its substantive
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`claims of abandonment and likelihood of confusion, or at least proceed to trial on its claims,
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`Opposer bears the burden of establishing that it owns “a mark or trade name previously used ...
`
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`4 Association of Co-operative Members, Inc. v. Farmland Ind., Oc., 684
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`and not abandoned,” Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), or that it is “the
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`owner of a famous mark ...,” Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). Stephen
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`Slesinger, Inc. v. Disney Enterprises, Inc., 98 USPQ2d 1890. Likewise, ownership of the Black
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`Stuntmen’s Association Name and Mark is central to Opposer’s fraud claim and to its claim of lack
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`of ownership under Section 1 of the Trademark Act, 15 U.S.C. 1051(a). Thus under both law and
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`the Restatement, Oppose must establish ownership to have standing to proceed.
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`
`
`The License Agreement is abundantly clear. Paragraph 2 (Ownership of Mark), Paragraph 3 (Use
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`of Name and Mark) and Paragraph 4 (Rights Reserved / Relationship) provide in part that
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`“Licensor acknowledges that Owner is the sole creator and owner of the Licensed Name and Mark
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`with exclusive right, title and interest therein.” (emphasis added) Opposer also acknowledged
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`Applicant’s right to protect his interest in the “Black Stuntmen’s Association aka BSA” Name and
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`Mark including registration upon with the USPTO. Opposer agreed not to challenge, infringe upon
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`or otherwise contest Applicant’s ownership rights. Furthermore, this was not a naked,
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`uncontrolled or exclusive license.
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`By entering into the License Agreement, Opposer agreed that Applicant created and still owns all
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`right, title and interest in the “Black Stuntmen’s Association aka BSA” Name and Mark. Opposer’s
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`only offering of ownership is its purported revival of the organization followed by several spurious
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`filings with the Nevada Secretary of State. None of these filings convey any ownership interest in
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`the Name and Mark to Opposer.
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`First, Applicant Walters’ never abandoned the Black Stuntmen’s Association aka BSA” Name and
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`Mark. Second, even if Applicant had abandoned the Name and Mark, none of the Nevada entities
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`bore Black Stuntmen’s Association name, thus it is unclear what Opposer “revived.” It defies
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`human reason to believe that Opposer President Willie Harris and its board “revived the name,
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`invested time, money and other resources to establish its good will for more than six years” yet
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`never registered the correct name in any of its numerous filings with the Nevada secretary of State.
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`By its own hand, Opposer’s President Willie Harris personally executed the July 31, 2012 License
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`Agreement with Applicant. By its own hand, Opposer’s President Willie Harris is on record for
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`infringing Applicant’s ownership rights by filing entity names with the Nevada Secretary since 2008
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`that are clearly meant to confuse and mislead the marketplace. Finally, by its own hand, Opposer
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`President Willie Harris filed the Certificate of Correction with Nevada Secretary of State on July 12,
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`Case No. 91206543 - Applicant Walter’s Motion to Dismiss -
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`2012. Opposer cannot come now, nunc pro tunc, to cure years of deliberate malfeasance by filing
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`a Certificate of Correction. Consistent with its filings in Nevada, Opposer has clearly presented
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`inaccurate, false and misleading information to the USPTO and the TTAB.
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`Opposer has no “real interest” in the proceedings. Opposer has no basis in law or fact to believe
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`that it has any legitimate interest in the “Black Stuntmen’s Association aka BSA” Name and Mark.
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`Instead it is a nothing more than a mere intermeddler here. Accordingly, it cannot suffer any
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`damages, economic or otherwise, upon Applicant’s registration of the Black Stuntmen’s
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`Association Name and Mark as anticipated and acknowledged in the License Agreement.
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`Opposer should be denied standing to use this agency and all other legal resources in its
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`continued attempts to wrest ownership from the Applicant.
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`V. Dismissal With Prejudice.
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`A dismissal with prejudice is appropriate, especially where it is plainly unlikely that theplaintiff will
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`be able to cure the standing problem. See Textile Prods. v. Mead Corp., 134 F.3d 1481, 1485
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`(Fed. Cir. 1998). In Textile, the Federal Circuit upheld the district court's dismissal of plaintiff's
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`claim for patent infringement with prejudice holding that plaintiff "had its chance to show standing
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`and failed." Id. Plaintiffs' lack of standing cannot be cured retroactively by a nunc pro tunc
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`assignment. Techs. v. Reconversion Techs., 93 F.3d 774 (Fed. Cir. 1996), see also Stephen
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`Slesinger, Inc. v. Disney Enterprises, Inc., 98 USPQ2d 1890.
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`By definition, Opposer, as a licensee is not the trademark owner. Having executed the License
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`Agreement acknowledging Applicant’s rights in the “Black Stuntmen’s Association aka BSA” Name
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`and Mark, Opposer cannot prevail on its claims ownership, likelihood of confusion, abandonment
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`or fraud. Thus Applicant urges the T.T.A.B. to dismiss the Opposition in its entirety with prejudice.
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`VI. Attorneys' Fees
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`A. Legal Standard Under 15 U.S.C. § 1117(a),
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`"The court in exceptional cases may award reasonable attorneys' fees to the prevailing party".
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`While the Lanham Act does not define what constitutes an "exceptional case," the legislative
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`history evinces Congress' intent to include cases in which the "acts of infringement can be
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`Case No. 91206543 - Applicant Walter’s Motion to Dismiss -
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`characterized as 'malicious' 'fraudulent' 'deliberate' or 'willful.'" S. Rep. No. 93 1400 (1974), as
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`Reprinted in 1974 U.S. C.C.A.N.7 1 3 2 . Attorneys’ fees may be awarded to a defendant that
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`prevails “[w]hen a plaintiff’s case is groundless, unreasonable, vexatious, or pursued in bad faith.”
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`Stephen W. Boney 127 F.3d at 827; see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th
`Cir. 2002); Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 881 (9th Cir. 1991). Rolex Watch
`USA, Inc. v. Meece, 158 F.3d 816, 823 (5th Cir. 1998) Taylor Made Golf Co. Inc., v. MJT
`Consulting Group, LLC, 265 F. Supp. 2d 732 (ND Tex 2003).5
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`B. Sufficiency of Showing of Exceptionality
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`1. Litigation Motives and Tactics
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`Opposer filed this Opposition with seemingly no exploration of the possibility of Applicant’s rights,
`and with no regard for whether the Nevada Secretary of State information was accurate.6 The
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`Opposition is replete with “facts” that a modicum of basic research by Opposer’s counsel would
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`have indicated were false and brought Opposer’s claim into question. A simple check of the
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`5 A case is exceptional within the meaning of 15 U.S.C. § 1117(a) where the infringement is willful,
`deliberate, knowing or malicious. See Comm. for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814,
`825 (9th Cir.1996) (attorney's fees awarded on appeal where defendant knowingly and
`intentionally infringed in order to cause confusion and interfere with plaintiff's environmental
`agenda); Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1027 (9th Cir.1985)
`(affirming award of attorney's fees where plaintiff was successful in prevailing over defendant on
`most claims and record contained substantial evidence of deliberate infringement, including
`continued infringement in violation of injunction); Sealy, Inc. v. Easy Living, Inc., 743 F.2d 1378,
`1384 (9th Cir.1984) (affirming entitlement to attorney's fees where record contained evidence of
`intent to deceive consumers);
`6 In addition, courts have found that misconduct litigation may render a case "exceptional" within
`the meaning of § 1117, including where a plaintiff brings a lawsuit for an improper purpose, where
`bad faith litigation tactics are evident, or where a plaintiff's c