Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA729624
`
`Filing date:
`
`02/25/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91208485
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Seminole Tribe of Florida
`
`MIRIAM RICHTER
`MIRIAM RICHTER ATTORNEY AT LAW PL
`2312 WILTON DR
`WILTON MANORS, FL 33305
`UNITED STATES
`mrichter@RichterTrademarks.com, jbuchbinder@RichterTrademarks.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Other Motions/Papers
`
`Miriam Richter
`
`mrichter@RichterTrademarks.com
`
`/Miriam Richter/
`
`02/25/2016
`
`Attachments
`
`Ntc of Appeal with ex.pdf(1676598 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91208485
`
`In the matter of:
`
`Application Serial No.: 85-711,441
`Mark: BLUE PLATE & design
`Filed on August 23, 2012
`
`Published in the Official Gazette
`on October 16, 2012
`
`§ § § § § § § § § § § § § § §
`
`BLUE PLATE CATERING, LTD.
`
`Opposer
`
`v.
`
`
`SEMINOLE TRIBE OF FLORIDA,
`a Federally-recognized Indian Tribe
`
`Applicant
`
`NOTICE OF OPPOSER'S APPEAL PURSUANT TO 15 USC § 1071(b)
`
`Applicant SEMINOLE TRIBE OF FLORIDA hereby files this Notice of Opposer’s
`
`Appeal of this Board’s October 29, 2015 decision dismissing this Opposition. The appeal has
`
`been made to the United States District Court for the Eastern District of Virginia, and was filed
`
`on December 23, 2015. Attached as Exhibit A, is a copy of the complaint.
`
`Respectfully submitted,
`
`MIRIAM RICHTER, ATTORNEY AT LAW, P.L.
`ATTORNEY FOR APPLICANT
`2312 WILTON DRIVE, SUITE 9
`WILTON MANORS, FLORIDA 33305
`TELEPHONE: 954-977-4711
`FACSIMILE:
`954-977-4717
`EMAIL: MRICHTER@RICHTERTRADEMARKS.COM
`
` /s/ Miriam Richter, Esq.
`MIRIAM RICHTER
`FLORIDA BAR NO. 44831
`
`DATED: February 25, 2016
`
`

`
`Certificate of Service
`
`I hereby certify that a true and complete copy of this Notice of Appeal has been sent on
`
`nd
`February 25, 2016 to: Thomas D. Carroll, Esq., Fuksa Khorshid, LLC, 70 West Erie, 2 Floor,
`
`Chicago, Illinois, 60654, and to Daniel D. Mauler, Esq., Redmon, Peyton & Baswell, LLP, 510
`
`King Street, Suite 301, Alexandria, Virginia 22314, by e-mailing via Rpost registered email to
`
`tom@FKLawFirm.com and dmauler@rpb-law.com.
`
`DATED: February 25, 2016
`
` /s/ Miriam Richter, Esq.
`MIRIAM RICHTER
`FLORIDA BAR NO. 44831
`
`2
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 1 of 9 PageID# 1
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`2015 OEC 23 P 4: UQ
`
`FILED
`
`BLUE PLATE CATERING, LTD,
`
`Plaintiff,
`
`V.
`
`SEMINOLE TRIBE OF FLORIDA,
`
`Defendant.
`
`clerk us DISTRICT COURT
`ALEXANDRIA, VIRGINIA
`
`Civil Action No
`
`COMPLAINT FOR DE NOVO REVIEW OF DECISION OF
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`COMES NOW the Plaintiff, BLUE PLATE CATERING, LTD, a corporation organized
`
`and existing under the laws of the State of Illinois, and for its Complaint for De Novo Review of
`
`a Decision of the Trademark Trial and Appeal Board dismissing Plaintiffs Opposition to
`
`Registration in favor of Defendant, SEMINOLE TRIBE OF FLORIDA, a federally-recognized
`
`Indian tribe based in Florida, and in support of its complaint states as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is an action seeking judicial review of a final decision of the Trademark Trial and
`
`Appeal Board ("TTAB"), and administrative agency of the United States Patent and
`
`Trademark Office ("USPTO"), under 15 U.S.C. § 1071(b)(1) pertaining to Plaintiffs
`
`Opposition to Registration of Defendant's purported mark "BLUE PLATE" in
`
`International Class 043.
`
`2.
`
`On October 29,2015, a TTAB panel dismissed Plaintiffs Opposition to Registration of
`
`Defendant's mark "BLUE PLATE" in international class 043 pertaining to restaurant
`
`services based on Defendant's U.S. Trademark Application No. 85711441. In dismissing
`
`1
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 2 of 9 PageID# 2
`
`Plaintiffs opposition, the TTAB found that Plaintiff had not demonstrated the priority of
`
`its own "BLUE PLATE" mark based on prior use in commerce and common law rights
`
`in the trademark and was therefore unable to demonstrate a likelihood of consumer
`
`confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
`
`3.
`
`Blue Plate Catering, Ltd. is an Illinois corporation, located at 1061 W. Van Buren,
`
`PARTIES
`
`Chicago, IL 60607. Blue Plate Catering, Ltd. is a catering company that does business
`
`throughout the Chicago area and Illinois, and in various other states and jurisdictions,
`
`including, without limitation, Illinois, Wisconsin, Indiana, New York, California and
`
`Michigan. Blue Plate Catering, Ltd. advertises its services throughout the country and has
`
`done business with entities headquartered throughout the United States, including
`
`companies headquartered in New York, California, Illinois, Wisconsin, Indiana and
`
`Michigan.
`
`4.
`
`On information and belief. Defendant Seminole Tribe of Florida is a federally-recognized
`
`Indian tribe located at 6300 Stirling Road, Hollywood, Florida 33024. Seminole Tribe of
`
`Florida owns and operates casinos in the State of Florida, as well as associated food-
`
`service and entertainment venues situated on its casino premises.
`
`JURISDICTION & VENUE
`
`5.
`
`This is an action for judicial review of a final decision of the TTAB under Section
`
`21(b)(1) oftheLanham Act, 15 U.S.C. 1071(b)(1).
`
`6.
`
`This Court has original jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338 as it involves
`
`claims presenting federal questions under 15 U.S.C. 1071(b). This section provides that a
`
`party to an opposition proceeding may have remedy by a civil action, and a court may
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 3 of 9 PageID# 3
`
`adjudge that the application involved be rejected or may order such other relief as the
`
`issues in the proceeding require.
`
`7.
`
`Venue in this district is proper pursuant to 28 U.S.C. § 1391(b) and (c) in that Defendant
`
`resides in this district by virtue of being subject to personal jurisdiction, based on its
`
`advertisement to and acceptance of reservations and other accommodations from citizens
`
`of the state of Virginia, and all 50 states, for its primary venue, the Hard Rock Hotel and
`
`Casino in Tampa, Florida, U.S.A. Venue is also proper because the USPTO is located in
`
`the Alexandria Division of this District, and Defendant has sought to avail itself of the
`
`powers and protections of the USPTO in relation to the use of its trademarks.
`
`FACTUAL BACKGROUND
`
`8.
`
`Defendant seeks to register a mark which consists of the term "BLUE PLATE" for use in
`
`connection with "restaurant services" in International Class 043 (hereinafter, the
`
`"Defendant's Mark").
`
`9.
`
`Defendant's Mark was published for opposition on October 16, 2012.
`
`10.
`
`Plaintiff owns a state registration for "BLUE PLATE" with the State of Illinois,
`
`specifically Registration No. 0968972 for "Catering Services, Restaurant Services, Food
`
`Preparation Services" in Illinois Class 043 (hereinafter, the "Illinois Trademark").
`
`11.
`
`The Illinois Trademark was registered on December 29,2006 with its first use designated
`
`as September 30, 1987. The Illinois Trademark registration is valid, subsisting, and in ftill
`
`force and effect. A copy of the State of Illinois Trademark/Service Mark Detail Report is
`
`attached hereto as Exhibit A.
`
`12.
`
`Plaintiff also owns common law rights in the mark and name "BLUE PLATE" based on
`
`its common-law use of "BLUE PLATE" in interstate commerce for restaurant and
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 4 of 9 PageID# 4
`
`catering services since 1983. Specifically, plaintiff has operated a restaurant/delicatessen
`
`using the mark "BLUE PLATE" and currently operates a catering company named Blue
`
`Plate Catering, Ltd. that utilizes the channels of trade and does business in multiple states
`
`and jurisdictions beyond Illinois, including, without limitation, Indiana, Wisconsin,
`
`Michigan, New York and California.
`
`13.
`
`Since 1983, and long before the Defendant's activities complained of herein. Plaintiff has
`
`continuously used the name "BLUE PLATE" as a trademark and service mark as a food
`
`service provider.
`
`14.
`
`On January 13, 1994, Plaintiff incorporated its business under the name "BLUE PLATE
`
`Catering, Ltd."
`
`15.
`
`Plaintiff has established itself as a premier food service provider in the City of Chicago,
`
`and Plaintiff has provided catering and food services in multiple states, nationwide
`
`including, without limitation, Illinois, Indiana, Wisconsin and Michigan. Plaintiff has
`
`developed, at great effort and expense, exceedingly valuable goodwill with respect to the
`
`mark listed above.
`
`16.
`
`By virtue of Plaintiff's long use, as well its extensive sales, advertising, and promotional
`
`efforts, the BLUE PLATE name and mark have become distinctive and famous. The
`
`BLUE PLATE name and mark achieved that fame and distinction long prior to
`
`Defendant's activities complained of herein.
`
`17.
`
`Plaintiff has attained a significant amount of consumer recognition by virtue of its
`
`superior food service. The BLUE PLATE name and mark has appeared in numerous
`
`publications. It has advertised and provided its services across state lines in interstate
`
`commerce, and has been the subject of nationwide media publications, including several
`
`4
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 5 of 9 PageID# 5
`
`nationally-distributed industry trade magazines, consumer and business publications, and
`
`newspapers of general circulation such as the Chicago Tribune and the Washington Post.
`
`18.
`
`Plaintiff advertises in national restaurant and catering trade publications such as BizBash,
`
`Catering Magazine, Catersource and Special Events Magazine, as well as national
`
`wedding-related publications such as The Knot. These publications and advertisements
`
`are distributed in all 50 states. Plaintiff devotes approximately 10% of its overall
`
`advertising budget to national advertising outside the state of Illinois.
`
`19.
`
`Approximately 20% of Plaintiffs annual revenues are derived from contracts and
`
`partnerships with entities outside of the Midwest for the provision of catering services.
`
`20.
`
`Plaintiff engages in significant promotional efforts on a national level beyond simple
`
`advertising, including participations in catering and special event trade shows such as the
`
`Professional Convention Management Association show, the Incentives and Meetings
`
`Executives show in Las Vegas, NV, and the American Association of Executives show in
`
`Washington, D.C., devoting approximately $20,000 of its operating budget to such
`
`national advertising efforts per year.
`
`21.
`
`Due to the advertising and promotional efforts described above, Plaintiff has established
`
`a "famous mark" as that term is used in the context of analyzing trademark rights.
`
`22.
`
`On August 23, 2012, Defendant Seminole Tribe of Florida filed a federal trademark
`
`application for BLUE PLATE + design for "restaurant services".
`
`23.
`
`Defendant's application specified a first use date and a first use in commerce date of May
`
`11,2004.
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 6 of 9 PageID# 6
`
`24.
`
`On June 30,2014, Plaintiff filed a federal trademark application for BLUE PLATE
`
`CATERING for "catering services". Plaintiff's application alleged a first use date and a
`
`first use in commerce date of December 1983.
`
`25.
`
`Plaintiffs application was published for opposition on April 21,2015. Neither Defendant
`
`nor any other third party filed any kind of opposition or extension of time to oppose
`
`against Plaintiffs application.
`
`26.
`
`Plaintiff's application is subject to concurrent use proceedings, and Plaintiff claims initial
`
`and exclusive use in (at least) the territories covered by Illinois, Indiana, Michigan and
`
`Wisconsin. Plaintiffs application also disclaims the term CATERING, leaving only
`
`BLUE PLATE as the distinctive portion of both Plaintiff's and Defendant's marks.
`
`27.
`
`Both Plaintiffs and Defendant's marks similarly represent services in the same
`
`International Class 043, and both were submitted on the basis of § 1(a) use in conmierce.
`
`28.
`
`Despite Plaintiffs long-standing prior rights in the BLUE PLATE name and mark.
`
`Defendant filed its application to register the Defendant's Mark.
`
`29.
`
`The Plaintiffs mark and the Defendant's Mark are similar in sound, connotation,
`
`appearance and commercial impression because they contain the exact same phrase and
`
`sound exactly the same.
`
`30.
`
`The Plaintiffs mark and the Defendant's Mark are similar as to the nature of the goods or
`
`services described as both the Plaintiff and the Defendant are food service providers. In
`
`fact, "restaurant services" are listed under both the Defendant's Mark and the Plaintiff's
`
`Illinois Mark.
`
`31.
`
`If registration is issued to the Defendant's Mark, the confusion with the Plaintiffs Mark
`
`would result in damage and injury to the Plaintiff and the public.
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 7 of 9 PageID# 7
`
`32.
`
`Registration of the Defendant's Mark would give Defendant an unqualified right to
`
`wrongfully appropriate Plaintiffs valuable goodwill and reputation associated with
`
`PlaintifPs mark and allow it to benefit from the likely confosion among purchasers led to
`
`believe that the Defendant's services are related in some fashion to the Plaintiffs
`
`services.
`
`33.
`
`The Plaintiff believes that it will be damaged by registration of the Defendant's applied-
`
`for mark, and opposes the same.
`
`34.
`
`On August 23,2012, Plaintiff filed its opposition to registration of the Defendant's mark
`
`on the basis that such use by Defendant would be confusingly-similar to its own use of
`
`the substantially-similar "BLUE PLATE" mark in international class 043 for catering and
`
`restaurant services. The opposition was designated as TTAB Opposition No. 91208485.
`
`35.
`
`The parties engaged in discovery and each party submitted testimony, exhibits, and trial
`
`briefs to the TTAB. The TTAB declined to entertain oral argument.
`
`36.
`
`On October 29,2015, the TTAB issued a non-precedential decision dismissing the
`
`opposition. A copy of the TTAB's decision is attached as Exhibit B. Plaintiff believes
`
`that the decision is erroneous and appeals to this Court for de novo review of the matters
`
`considered by the TTAB.
`
`37.
`
`The TTAB's decision dismissing the opposition is erroneous because Plaintiff can
`
`establish prior use of its own "BLUE PLATE" mark in commerce on a date well before
`
`Defendant's stated first use in commerce date of its own mark in 2004, and because
`
`granting Defendant's application would result in a substantial likelihood of consumer
`
`confusion given the precise similarity of the respective marks and the overlapping
`
`channels of trade to which each party's services are directed.
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 8 of 9 PageID# 8
`
`38.
`
`Plaintiff seeks de novo review of the TTAB decision under Section 21 of the Lanham
`
`Act, 15U.S.C. § 1071.
`
`CAUSES OF ACTION
`
`COUNT I
`
`REQUEST FOR REVERSAL OF TTAB DECISION AND REFUSAL OF DEFENDANT'S
`
`U.S. TRADEMARK APPLICATION NO. 85711441 FOR THE MARK "BLUE PLATE"
`
`IN INTERNATIONAL CLASS 043
`
`39.
`
`Plaintiff alleges and incorporates by reference the allegations of paragraphs 1-38 into this
`
`paragraph 39.
`
`40.
`
`Plaintiff is dissatisfied with the decision of the Trademark Trial and Appeal Board and its
`
`erroneous conclusion that Defendant's applied-for "BLUE PLATE" mark is not likely to
`
`cause consumer confusion with Plaintiffs "BLUE PLATE" mark based on what it held is
`
`Plaintiffs failure to establish prior use of the mark in commerce.
`
`41.
`
`The TTAB's decision of October 29, 2015, should be reversed and vacated, and an order
`
`should be entered directing the USPTO to reverse its decision and sustain Plaintiffs
`
`trademark opposition against registration of Defendant's federal trademark application
`
`for the "BLUE PLATE" mark and thereby refuse registration of Defendant's U.S.
`
`Trademark Application No. 85711441.
`
`COUNT II
`
`TRADEMARK DILUTION UNDER 15 U.S.C. § 1125(c)
`
`42.
`
`Plaintiff alleges and incorporates by reference the allegations of paragraphs 1-41 into this
`
`paragraph 42.
`
`43.
`
`Defendant's actions in using the BLUE PLATE mark constitute a likelihood of dilution
`
`of Plaintiffs lawful use of its BLUE PLATE mark under 15 U.S.C. § 1125(c),
`
`8
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1 Filed 12/23/15 Page 9 of 9 PageID# 9
`
`WHEREFORE, Plaintiff requests that the Court:
`
`a.
`
`reverse the TTAB's decision dismissing Plaintiffs opposition to registration of
`
`Apphcation Serial No. 85711441;
`
`Award money damages to Plaintiff in an amount to be proven at trial;
`
`order that Defendant's BLUE PLATE mark be refused registration;
`
`order the Defendant to pay all damages resulting from dilution of the Plaintiffs
`
`BLUE PLATE mark caused by the continued use of its own mark;
`
`order that Defendant pay all of Plaintiff costs and reasonable attorney's fees; and
`
`for such further relief as the Court deems just.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f
`
`Respectfiilly submitted,
`IE PLATE CATERING, LTD.
`
`//
`
`190)
`Daniel D. Mauler
`Redmon, Peyton & Braswell, LLP
`510 King Street, Suite 301
`Alexandria, VA 22314
`(703) 684-2000 (Telephone)
`(703) 684-5109 (Fax)
`dmauler@rpb-law.com
`Counselfor Defendant
`
`/s/ Thomas D. Carroll
`Thomas D. Carroll
`FUKSA KHORSHID, LLC
`70 W. Erie, 2nd Floor
`Chicago, IL 60654
`T: (312)266-2221
`F: (312) 266-2224
`tom@fklawfirm.com
`Attorneyfor the Plaintiff
`Blue Plate Catering, Ltd.
`(Application Pending for
`Admission pro hac vice)
`
`Date: December 23, 2015
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1-1 Filed 12/23/15 Page 1 of 2 PageID# 10
`
`Plaintiffs Complaint
`
`Exhibit A
`
`(State of Illinois Trademark/Service Mark Detail Report)
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1-1 Filed 12/23/15 Page 2 of 2 PageID# 11
`Page 1 of 1
`
`IL Business Services Trademark Searches
`
`EiOR/X.'^-I/LUNCD/S. COM
`
`"
`
`. (cid:127) i
`
`Jesse
`SECRBTARV OF yiW'I'E
`
`Trademark / Service Mai*k Detail Report
`
`BLUE PLATE
`
`SERVICE
`
`[Class
`
`IRegistration Number
`
`j 096972
`
`I 043
`
`I 12/29/2016
`
`03/30/1987
`
`r !
`
`1 12AZ9/2006
`
`Expiration Date
`
`First Use In Illinois
`
`! Name of the Mark
`
`I p
`
`rypa ofMark
`IDate of Registration
`
`IFirst Use Any Where
`
`Description of
`Goods/Services
`
`CATERING SERVICES, RESTAURANT SERVICES. FOODPREPARATION SERVICES
`
`Name of Registrant
`
`BLUE PLATE CATERING, LTD.
`
`Registrant Address
`
`1\ 1061 WVAN BUREN ST
`CHICAGO, IL 60607
`
`Registrant IV pe
`
`CORPORATION
`
`j! Registrant State
`
`IL
`
`Return to the Search Screen
`
`BACK TO CYBERDRlVEiLLINOIS.COM HOME PAGE
`
`http://www.ilsos.gov/trademarksearch/TradeMarkSearchServlet
`
`EXHIBIT
`
`A
`
`12/6/2012
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 1 of 17 PageID# 12
`
`Plaintiffs Complaint
`
`Exhibit B
`
`(Decision of Trademarl< Trial and Appeal Board)
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 2 of 17 PageID# 13
`
`This Opinion Is Not a
`Precedent of the TTAB
`
`United States Patent and Trademark Office
`
`Mailed: October 29, 2015
`
`Trademark Trial and Appeal Board
`
`Blue Plate Catering, Ltd.
`
`V.
`
`Seniinole Tribe of Florida
`
`Opposition No. 91208485
`to application Serial No. 85711441
`filed August 23, 2012
`
`Lema A. Khorshid and Periy Gattegno of Fuksa Khorshid, LLC
`for Blue Plate Catering, Ltd.
`
`Miriam Richter of Miriam Richter, P.L.
`for Seminole Tribe of Florida.
`
`Before Seeherman, Bergsman and Masiello,
`Administrative Trademark Judges.
`
`Opinion by Seeherman, Administrative Trademark Judge:
`
`Blue Plate Catering, Ltd.
`
`(Opposer) has opposed, on the ground of
`
`likelihood of confusion,
`
`the registration of the mark BLUE PLATE and
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 3 of 17 PageID# 14
`
`Opposition No. 91208485
`
`design, shown below, for restaurant services,
`
`filed by Seminole Tribe of
`
`Florida (Applicant).'
`
`;b-l u E p. I A-fi:
`
`In the notice of opposition, Opposer has alleged that it owns a registration
`
`issued on December 29, 2006 by the State of Illinois for BLUE PLATE for
`
`catering services, restaurant services and food preparation services;
`
`that
`
`Opposer owns common law rights in the mark and name BLUE PLATE; that
`
`since 1987 Opposer has continuously used BLUE PLATE as a trademark and
`
`service mark as a food service provider; that on January 13, 1994 Opposer
`
`incorporated its business under the name "BLUE PLATE Catering, Ltd.";
`
`that Opposer has estabUshed itself as a food service provider in the City of
`
`Chicago, and Opposer has provided catering and food services in multiple
`
`states; that the BLUE PLATE name and mark have become distinctive and
`
`famous; that Applicant's mark is similar to Opposer's mark, and the services
`
`are similar in that the parties are food service providers, and both Applicant's
`
`application and Opposer's Illinois state registration list "restaurant services";
`
`and that Opposer will be damaged by registration of Applicant's mark.
`
`Applicant has denied the salient allegations in its answer.
`
`1 Application Serial No. 85711441, filed August 23, 2012, and asserting first use and
`first use in commerce on May II, 2004.
`
`

`
`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 4 of 17 PageID# 15
`
`Opposition No. 91208485
`
`Objections
`
`On May 25, 2015, during its rebuttal testimony period, Opposer filed what
`
`was captioned "Unopposed Motion to Entry of Evidence into the Record"
`
`(Unopposed Motion),
`
`along with
`
`amended
`
`answers
`
`to Apphcant's
`
`interrogatories. The original responses were filed by Applicant during its
`
`testimony period under a notice of reUance.^ There is only one change in the
`
`amended responses to the set of six interrogatories. In the original response
`
`to interrogatory 1, which asks for a list of all states in which Opposer has
`
`done business under the mark BLUE PLATE, and the specific dates of
`
`service, Opposer listed the states of Indiana, Wisconsin and Michigan, and
`
`gave dates in 2012 and 2013. The amended answer to interrogatory 1 also
`
`lists the state of Illinois, and lists as dates, "December 1983-present."
`
`Because at
`
`the time the Unopposed Motion was
`
`filed it was called
`
`"Unopposed," and begins, "By agreement of the Parties," on June 18, 2015 the
`
`Board granted the Unopposed Motion, referring to it as a "consented motion."
`
`On August 25, 2015, along with its trial brief. Applicant filed a motion to
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`strike these amended answers.^ As background for how the Unopposed
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`Motion came to be filed, Applicant explains that during Opposer's rebuttal
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`2 Opposer also submitted these responses with its own notice of reliance but, as
`Applicant points out, absent an exception which is not applicable here, a party
`cannot make its own responses to interrogatories of record by notice of reliance See
`Trademark Rule 2.120(j)(5) ("...an answer to an interrogatory...may be submitted
`and made part of the record only by the ... inquiring party").
`3 Applicant has styled its objection as a "motion to quash." The Board treats this
`paper as a motion to strike the answers. See September 4, 2015 Board order
`("Consideration of Applicant's motion (filed August 25, 2015) to strike Opposer's
`amended responses to Applicant's interrogatories").
`
`

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`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 5 of 17 PageID# 16
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`Opposition No. 91208485
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`testimony period Opposer attempted to notice the deposition of Calvin Gin to
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`testify "as to the facts alleged in the Opposer's opposition and Applicant's
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`Notices of Reliance,
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`including use and ownership of the Opposer's mark;
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`Opposer's business operations and activities; and Opposer's goods and
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`services." Notice to Take Deposition, submitted as Exhibit C to Applicant's
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`motion to strike. 29 TTABVUE 17. Because Applicant believed that such
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`testimony should have been part of Opposer's case-in-chief, and therefore was
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`improper rebuttal
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`testimony,
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`it made an informal objection directed to
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`Opposer. According to Applicant, Opposer agreed to withdraw its notice of
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`deposition if its responses to interrogatories could be amended. Applicant
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`agreed, Opposer drafted the Unopposed Motion that was subsequently filed
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`on May 22, 2015, and "Applicant informed Opposer that it was unopposed
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`and the proposed amended answers were acceptable."
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`Opposer
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`then filed the Unopposed Motion, along with the amended
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`interrogatory answers, under the docket entry "Stipulated Facts." Applicant,
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`in its motion to strike, asserts that it never stipulated to any facts or agreed
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`to the entry of any evidence in the record. It claims that the only thing it
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`stipulated to was what was stated in the actual document (as opposed to the
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`ESTTA cover sheet with the "Stipulated Facts" title): Opposer was allowed to
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`amend its answers
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`to interrogatories and the deposition notice was
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`withdrawn.
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`

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`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 6 of 17 PageID# 17
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`Opposition No. 91208485
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`Opposer responded to the Applicant's motion to strike on September 9,
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`2015, at the same time it filed its reply trial brief, asserting that it "relied on
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`Applicant's agreement to the entiy of the evidence to its detriment, foregoing
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`the opportunity to enter rebuttal evidence in exchange for Applicant's
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`agreement." Opposer contends
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`that Applicant agreed to entry of
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`the
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`Unopposed Motion "knowing that Opposer was filing it in lieu of direct
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`rebuttal testimony." 34 TTABVUE 3. Opposer also asserts that Applicant's
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`objection to the Unopposed Motion is "untimely and disingenuous," noting
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`that Applicant did not object to the Unopposed Motion within 15 days of the
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`filing of that motion, and indeed waited until
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`three months to file its
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`objection, well after Opposer prepared its trial brief which relied on the
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`amended answers in that brief. Opposer argues that, as shown by the parties'
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`exchanges prior to the filing of the Unopposed Motion, "Applicant had every
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`opportunity to voice its cm'rent objections and chose to reserve those
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`objections until it felt it would be strategically advantageous." Id. at 4.
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`After reviewing the motion papers,
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`including the emails between the
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`parties that
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`led to the filing of the Unopposed Motion which Opposer
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`submitted with its opposition to Applicant's motion, it is clear that Opposer
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`believed that the Unopposed Motion was designed to make certain evidence
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`of record. During the email exchange, Opposer referred to the motion as a
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`"stipulated motion for the entry of evidence into record." See May 19, 2015
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`6:17 pm email from Perry Gattegno to Miriam Richter. 33 TTABVUE 23. The
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`

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`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 7 of 17 PageID# 18
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`Opposition No. 91208485
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`draft motion attached to the emails was captioned as a "Stipulated Motion to
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`Entry of Evidence into the Record." Id. at 26. Ultimately, the title of the
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`motion was changed, apparently because of Applicant's May 22, 2015 email to
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`Opposer to file the motion as "unopposed." 33 TTABVUE 31. However, the
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`title still refers to the entry of evidence into the record: "Unopposed Motion to
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`Entry of Evidence into the Record."
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`Whether or not there were some strategic machinations occurring, or
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`merely misunderstandings, we must look at the language of the actual paper
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`filed on May 22, 2015. Although the paper was styled as a "Stipulation of
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`Facts" in the ESTTA cover sheet, there is nothing in the paper itself that
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`shows
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`that Applicant was stipulating that
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`the amended interrogatory
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`responses were indeed "facts." We do not consider Applicant's failure to object
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`to the TTABVUE docket title, or the caption in the ESTTA cover sheet, as
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`changing the Unopposed Motion into a Stipulation of Facts. However, the
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`Unopposed Motion was very clearly entitled "Unopposed Motion to Entry of
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`Evidence into the Record" (emphasis added). Whether or not Opposer
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`might have otherwise been precluded from making its amended interrogatory
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`answers of record during its rebuttal testimony period since, as noted below,
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`a responding party cannot normally make its answers of record under a
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`notice of reliance, or because the information itself may not have been proper
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`rebuttal, certainly the answers could have been made of record by agreement
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`of the parties, and that is what we have here. Applicant agreed that the
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`

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`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 8 of 17 PageID# 19
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`Opposition No. 91208485
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`amended answers could be entered into evidence. Applicant can claim no
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`surprise that it was agreeing to the entry of this evidence in view of the
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`emails and the consistent reference in the titles of the draft motions to "entry
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`of evidence into the record."
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`Accordingly, we treat Opposer's amended interrogatory responses, filed on
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`May 22, 2015, as of record.
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`Applicant has also objected to Opposer's notice of opposition to the
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`registration of a third party's mark, submitted with Opposer's notice of
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`reliance. The pleading itself, as an official record,
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`is appropriate subject
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`matter for a notice of reliance, and has been considered. Trademark Rule
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`2.122(e). The allegations made in that pleading, however, are only that—
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`allegations—and are not evidence that the allegations are true. Accordingly,
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`we have considered the notice of opposition only for the fact that it was filed.
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`As for the printed publications submitted by Opposer under notice of reliance,
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`they are properly of record under Trademark Rule 2.122(e). We will discuss
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`their probative value infra as it relates to our analysis of the issues. In its
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`trial brief Opposer
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`lists, as evidence of record, a pending trademark
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`application. We agree with Applicant that Opposer has not made of record
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`any application that it may own, and we therefore have given any statements
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`regarding such an application no consideration. Applicant has also objected to
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`the Recitation of Facts in Opposer's trial brief that were never offered into
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`evidence. We have given no consideration to the "facts" asserted by Opposer
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`

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`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 9 of 17 PageID# 20
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`Opposition No. 91208485
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`in its briefs that are not established by the evidence in the record, including
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`the statements in the first and third paragraphs of its recitation of facts
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`(regarding when Opposer began operations, what the services were, when it
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`organized itself as a business entity, and information about
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`its own
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`application) (28 TTABVUE 8).
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`The Record
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`By operation of the rules, the record includes the pleadings and the file of
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`the opposed application. The parties have submitted their evidence solely
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`through notices of reliance. Opposer made of record a copy of the notice of
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`opposition it filed against the application, Serial No. 85258741, of a third
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`party to register the mark BLEU PLATE for bar and restaurant services, and
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`articles fi-om publications and excerpts from websites. 14 TTABVUE.^
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`Applicant submitted a copy of its registration No. 4295833 for BLUE PLATE
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`in standard characters for restaurant services, showing status and title, 5 23
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`TTABVUE, and Opposer's responses to Applicant's first set of interrogatories,
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`consisting of six interrogatories. 24 TTABVUE.^ As noted above, we treat
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`Opposer also lists as an item in its notice of reliance, "a copy of Opposer's Notice of
`Opposition to the applicant for the infringing mark BLEU PLATE, dated March 20,
`2012." Opposer did not submit a copy of such a document, and there is no indication
`that Applicant filed an application for the mark BLEU PLATE. If Opposer meant to
`identify its notice of opposition in the current proceeding,
`that pleading is, as
`indicated, of record by operation of the rules.
`^ This registration was not the subject of the notice of opposition referenced in
`footnote 4. Aside from the mark being BLUE PLATE (not BLEU PLATE),
`the
`application that resulted in this registration was not filed until October 17, 2012,
`which was after the March 20, 2012 date that Opposer indicates as the filing date of
`its notice of opposition.
`®These are the same interrogatories and responses that Opposer sought to introduce
`through its own notice of reliance, and which were later amended.
`
`8
`
`

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`Case 1:15-cv-01692-LO-JFA Document 1-2 Filed 12/23/15 Page 10 of 17 PageID# 21
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`Opposition No. 91208485
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`Opposer s amended answers to Applicant's interrogatories to be of record by
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`consent of the parties.
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`Standing
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`Opposer has stated, in its answer to Applicant's interrogatory 1, that it
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`has done business under the mark BLUE PLATE in certain states. Although
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`this response does not provide information as to the nature of Opposer's
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`business, given the liber