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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`
`
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`
`
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`Mailed: May 12, 2015
`
`Opposition No. 91207982
`
`Gface GmbH
`
`v.
`
`iConnectUS LLC
`
`
`
`
`
`
`
`Jennifer Krisp, Interlocutory Attorney:
`
`This proceeding is before the Board for consideration of the two
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`February 23, 2015 submissions filed by Andrew H. Do, counsel for applicant,
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`which are captioned, respectively, “Applicant’s Substitution of Attorney” and
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`“Notice of Withdrawal of Attorney.” The Board considers the filings at this
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`time. Opposer filed a brief in opposition.
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`With respect to the substitution of attorney, authority to represent a
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`party in a proceeding before the Board may be revoked at any stage of the
`proceeding, by filing a written revocation with the Board. TBMP §116.01
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`(2014). Trademark Rule 2.19(a)(1) provides as follows, in pertinent part:
`
`(a) Revocation. (1) Authority to represent an applicant, registrant or party
`to a proceeding before the Office may be revoked at any stage in the
`proceedings of a trademark case, upon written notification signed by
`the applicant, registrant, or party to the proceeding, or by someone
`with legal authority to bind the applicant, registrant, or party (e.g., a
`corporate officer or general partner of a partnership). (emphasis
`added)
`
`
`

`
`Opposition No. 91207982
`
`
`The record is unclear as to whether it is applicant’s intent to terminate its
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`legal representation by Mr. Do in this proceeding. Notwithstanding that the
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`filing states that “[T]he party making this substitution is Applicant,” and then
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`identifies Michael Fetyko as an individual on behalf of applicant, the filing
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`includes no signature of or on behalf of applicant.1 In view of these facts which
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`indicate deficiencies in the substitution of attorney, the Board will give no effect
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`to the filing. Mr. Do remains counsel of record on behalf of applicant in this
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`proceeding.
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`With respect to the motion to withdrawal as attorney, withdrawal from
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`employment as the attorney or other authorized representative of a party to a
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`Board proceeding is permissive under the circumstances specified in Patent and
`Trademark Rule 11.116(b). TBMP §116.04 (2014). A practitioner who wishes to
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`withdraw from employment as the attorney or other authorized representative of
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`a party to a proceeding before the Board must file a written request with the
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`Board for permission to do so. The request to withdraw must be based upon one
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`of the grounds for mandatory or permissive withdrawal listed in Patent and
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`Trademark Rule 11.116(a) and 11.116(b). The practitioner must comply with the
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`1 Furthermore, the Certificate of Service on the filing is unsigned and undated.
` Inasmuch as opposer’s response regarding nonreceipt suggests problems with
`serving filings by regular mail, and inasmuch as the certificates of service already
`indicate transmission of some filings “via email” to the adverse party, the parties are
`strongly urged to consider stipulating to service by electronic mail. Various
`manners of service are provided for in Trademark Rule 2.119, and the parties may
`enter into a written agreement to use electronic transmission (e.g., facsimile or e-
`mail) to meet their service obligations. The parties should reduce such stipulation to
`writing, and should also inform the Board.
`
`
`
`2
`
`

`
`Opposition No. 91207982
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`requirements of Patent and Trademark Rules 11.116(c) and (d), and 2.19(b).
`TBMP §116.05 (2014).
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`Applicant’s counsel’s motion to withdraw does not include the following
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`requirements:
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`(1) a statement or specification of the basis for the request;
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`(2) a statement that the practitioner has notified the client of his or her
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`desire to withdraw from employment, and has allowed time for
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`employment of another practitioner;
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`(3) a statement that all documents and property that relate to the
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`proceeding and to which the client is entitled have been delivered to the
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`client;
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`(4) a statement that the client has been notified of any responses that
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`may be due and of the deadline for the response; and
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`(5) if any part of a fee paid in advance has not been earned, a statement
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`that the unearned part has been refunded.
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`See Trademark Rule 2.19(b). Cf. SFW Licensing Corp. v. Di Pardo Packing Ltd.,
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`60 USPQ2d 1372, 1374 (TTAB 2001); In re Legendary Inc., 26 USPQ2d 1478
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`(Comm'r 1992). Accordingly, the motion fails to comply with the requirements of
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`Trademark Rules 2.19(b) and Patent and Trademark Rule 11.116, the motion is
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`denied without prejudice. In view of these facts which indicate deficiencies in
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`the motion to withdraw as counsel, Mr. Do remains counsel of record on behalf of
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`applicant in this proceeding.
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`
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`3
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`

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`Opposition No. 91207982
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`Status of proceeding
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`Applicant’s counsel filed the motions just prior to the time allowed to
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`applicant to file a brief in response to opposer’s February 6, 2015 motion to take
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`deposition of applicant by video conferencing. To maintain order in this case,
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`proceedings are deemed suspended as of February 23, 2015, and remain
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`suspended pending the filing of a response to the instant order.
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` Mr. Do is allowed until thirty days from the mailing date of this order to
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`submit a motion which complies with Trademark Rules 2.19(b), Patent and
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`Trademark Rule 11.116, and all other applicable authorities, as indicated above.
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`In the alternative, applicant may, during the same thirty days from the mailing
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`date of this order, file a revocation of power of attorney in compliance with the
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`applicable authorities.
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` Proceedings are otherwise suspended pending response to this order. The
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`parties will be notified by the Board when proceedings are resumed, as
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`appropriate. Upon resumption, the Board will set applicant’s time to file a brief
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`in response to opposer’s February 6, 2015 motion to take deposition of applicant
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`by video conferencing.2
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`A copy of this order has been sent to all persons listed below.
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`cc:
`
`ANDREW H DO
`OSWALD AND YAP APC
`16148 SAND CANYON AVENUE
`IRVINE, CA 92618
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`2 Opposer is directed to inform the Board in the event that its motion is no longer
`viable.
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`
`
`4
`
`

`
`Opposition No. 91207982
`
`
`NED W BRANTHOVER
`ABELMAN FRAYNE & SCHWAB
`666 THIRD AVENUE, TENTH FLOOR
`NEW YORK, NY 10017
`
`MICHAEL FETYKO
`1278 GLENNEYRE STREET, SUITE 444
`LAGUNA BEACH, CA 92651
`
`
`
`
`
`5

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