UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: July 8, 2014
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`Opposition No. 91207982
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`Gface GmbH (by change of Crytek
`Entertainment GmbH)
`v.
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`Baxley
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`Andrew P. Baxley, Interlocutory Attorney:
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`iConnectUS LLC
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`Opposer’s motion (filed May 9, 2014) to change its name to Gface GmbH is
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`granted as conceded.1 See Trademark Rule 2.127(a); Patent and Trademark
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`Rule 3.73(b). The caption of this proceeding has been amended to identify
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`Gface GmbH as the party plaintiff and Opposer herein. The parties’
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`stipulation (filed May 9, 2014) to service by e-mail is noted. See Trademark
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`Rule 2.119(b)(6).
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`In an August 19, 2013 order, the Board granted Opposer’s motion (filed
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`July 3, 2013) to compel discovery and allowed Applicant until September 18,
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`2013 to serve initial disclosures and responses to Opposer’s first set of
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`interrogatories and first set of document requests. Opposer, on September 23,
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`2013, moved for entry of judgment as a sanction under Trademark Rule
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`2.120(g)(1) for Applicant’s alleged failure to comply with the August 19, 2013
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`1 A document allegedly reflecting such name change is recorded with the USPTO’s
`Assignment Branch at Reel 5038, Frame 0471.
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`Opposition No. 91207982
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`order. The motion for default judgment under Rule 2.120(g)(1) has been fully
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`briefed.
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`As an initial matter, the Board notes that, on May 27, 2013, Applicant’s
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`former attorney filed a change of correspondence address in which the former
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`attorney changed Applicant’s correspondence address from his office address
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`to the address for Applicant that is set forth in involved application Serial
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`No. 85626388.2 However, the former attorney did not file a proper request to
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`withdraw as Applicant’s attorney in this case.
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`On July 3, 2013, Opposer filed the motion to compel discovery; such
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`motion included proof of service upon Applicant at Applicant’s address set
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`forth in the involved application and the change of correspondence address.
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`In a July 30, 2013 order, the Board suspended this case pending the Board’s
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`decision on the motion to compel. In that order, the Board “noted and made of
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`record” Applicant’s change of correspondence address. July 30, 2013 order at
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`2, fn. 2.
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`Even if the Board assumes that, as Applicant states in its March 19, 2014
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`motion to reopen time to respond to the motion for default judgment under
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`2 Applicant’s former attorney, on April 11, 2013, also filed a change of
`correspondence address in the USPTO file for involved application Serial No.
`85626388, wherein
`it
`changed Applicant’s
`correspondence address
`to:
`“DICKSTEINSHAPIRO LLP, TWO PARK PLAZA SUITE 900, IRVINE, California,
`United States, 92614.” However, no attorney from DICKSTEINSHAPIRO LLP filed
`any submissions on Applicant’s behalf in this proceeding. See Trademark Rule
`2.17(c); TBMP Section 114.03. See also Trademark Rule 2.193(g) (“Since each file
`must be complete in itself, a separate copy of every document to be filed in
`connection with a trademark application, registration, or inter partes proceeding
`must be furnished for each file to which the document pertains.”).
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`Opposition No. 91207982
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`Rule 2.120(g)(1), Applicant dismissed its former attorney on May 27, 2013,3
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`the former attorney’s filing on that day of a change of correspondence address
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`from his office address to the party’s address was insufficient by itself to
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`effect his withdrawal as Applicant’s attorney in this proceeding. So filing does
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`not comply with the requirements of Trademark Rule 2.19(b) and Patent and
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`Trademark Rule 11.116.4 Under the circumstances, the Board should not
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`3 The Board further notes that Applicant’s copy of the September 24, 2013
`suspension order was returned to the Board as undeliverable, and that Applicant
`contends in the March 21, 2014 motion to reopen that “Applicant did not receive
`notice of Opposer’s previous motions or the Board’s orders, until March 3, 2014.”
` Opposer contends, in its brief in opposition to Applicant’s motion to reopen that it
`served upon Applicant copies of Opposer’s filings by e-mail and did not receive any
`indication that Applicant did not receive those e-mails. The Board notes that other
`submissions in this case were served by e-mail only. However, the record herein is
`not clear as to whether the parties had expressly agreed to service by e-mail prior to
`the filing of the May 9, 2014 stipulation to service by e-mail. See Trademark Rules
`2.119(b)(6) and (c); TBMP Section 113.05; McDonald's Corp. v. Cambrige Overseas
`Development Inc., 106 USPQ2d 1339 (TTAB 2013).
` In addition, the Board notes that in the certificate of service of Applicant’s answer,
`Applicant’s former attorney states that he sent that answer to the Board
`electronically for transmittal of a notice of electronic filing to Opposer’s now-former
`attorney. However, the Electronic System for Trademark Trials and Appeals
`(ESTTA) does not serve papers upon opposing parties or provide notice of their
`filing; parties thenselves must serve submissions upon the other parties to this
`proceeding and must provide proof of such service. See TBMP Section 110.09(d).
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` A request to withdraw as a party must include: (1) a specification of the basis for
`withdrawing as a party’s attorney; (2) a statement that the practitioner has notified
`the client of his or her desire to withdraw from employment, and has allowed time
`for employment of another practitioner; (3) a statement that all documents and
`property that relate to the proceeding and to which the client is entitled have been
`delivered to the client; (4) a statement that the unearned part of any fee paid in
`advance has been refunded if any part of a fee paid in advance has not been earned,
`has been refunded; and (5) proof of service upon all parties and the client. See
`Trademark Rule 2.19(b). Cf. In re Legendary Inc., 26 USPQ2d 1478 (Comm'r 1992).
` The record indicates that the correspondence address for Applicant that Applicant’s
`former attorney included in the May 27, 2013 change of correspondence address may
`not have been current when that change of correspondence address was filed. Had
`Applicant’s former attorney delivered all documents and property that relate to the
`proceeding and to which Applicant is entitled and returned any unearned fee paid in
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`Opposition No. 91207982
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`have allowed Applicant’s former attorney to effectively withdraw as
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`Applicant’s attorney in this proceeding merely by filing a change of
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`correspondence address. Rather, the Board should have required Applicant’s
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`now-former attorney to withdraw from this proceeding in compliance with
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`Trademark Rule 2.19(b) and Patent and Trademark Rule 11.116 prior to the
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`filing and consideration of the motion to compel.5
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`Had Applicant’s former attorney filed a proper request to withdraw as
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`counsel, Applicant would have been allowed time in which to appoint new
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`counsel or state that it was representing itself. If there were any deficiencies
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`in the request to withdraw, Applicant’s former attorney would have been
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`allowed an opportunity to correct them.
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`In view of the foregoing, the August 19, 2013 order is hereby vacated, and
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`Opposer’s motion for entry of default judgment as a discovery sanction under
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`Trademark Rule 2.120(g)(1) is therefore moot. Applicant, whose new attorney
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`entered an appearance herein on March 19, 2014 by way of Applicant’s
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`motion to reopen time to respond to the motion for default judgment, is
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`allowed until fifteen days from the mailing date set forth in this order to file
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`a brief in response to the motion to compel. Opposer’s reply brief in support of
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`advance, as required, Applicant’s former attorney likely would have provided a
`current correspondence address for Applicant in the change of correspondence
`address.
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` The Board regrets not sooner noticing Applicant’s former attorney’s failure to
`withdraw properly from this proceeding.
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`Opposition No. 91207982
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`the motion to compel is due in accordance with Trademark Rules 2.119(c) and
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`2.127(a). Proceedings herein otherwise remain suspended.
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`cc: Mark Morrison
`Morris and Associates
`93 S. Jackson Street, No. 34835
`Seattle, WA 98104
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