Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA731419
`
`Filing date:
`
`03/04/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91213483
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Plaintiff
`Energy Heating LLC
`
`F ROSS BOUNDY
`DAVIS WRIGHT TREMAINE LLP
`1201 THIRD AVENUE SUITE 2200
`SEATTLE, WA 98109
`UNITED STATES
`rossboundy@dwt.com, mmoersfelder@dwt.com, ronrutherford@dwt.com, seat-
`tletrademarkdocket@dwt.com, seatm@dwt.com
`
`Response to Board Order/Inquiry
`
`Matthew E Moersfelder
`
`rossboundy@dwt.com, mmoersfelder@dwt.com, ronrutherford@dwt.com,
`seatm@dwt.com
`
`Signature
`
`Date
`
`/MEM/
`
`03/04/2016
`
`Attachments
`
`March 4, 2016 Response to Status Inquiry.pdf(33301 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Opposition No. 91213483
`
`Application Serial No. 85/797,416
`
`
`
`
`ENERGY HEATING LLC, an Idaho limited
`liability company,
`
`
`
`
`
`v.
`
`Opposer,
`
`HEAT ON-THE-FLY, LLC, a Louisiana limited
`liability company,
`
`
`
`
`
`
`Applicant.
`
`OPPOSER’S RESPONSE TO INQUIRY INTO STATUS OF CIVIL ACTION
`
`Opposer Energy Heating LLC (“Opposer”), through its undersigned counsel,
`
`Davis Wright Tremaine LLP, hereby responds to the Board’s status inquiry of February 4, 2016.
`
`The trial portion of Case No. 4:13-cv-10 has concluded, with the jury finding that the phrase
`
`“Heat On-The-Fly” is generic. A copy of the Amended Judgment In A Civil Case is attached as
`
`Annex A. The parties are currently involved in post-trial briefing before the United States
`
`District Court of the District of North Dakota. Opposer therefore respectfully requests that this
`
`Opposition remain suspended pending final determination of the civil action.
`
`DATED this 4th day of March, 2016.
`
`Respectfully submitted,
`
`
`
`
`
`s/Matthew E. Moersfelder
`
`By: F. Ross Boundy
`
`Matthew E. Moersfelder
`
`Attorneys for Applicant
`
`DAVIS WRIGHT TREMAINE LLP
`
`1201 Third Ave, Suite 2200
`
`Seattle, Washington 98109
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DWT 25575120v1 0095141-000006
`
`

`

`
`
`CERTIFICATE OF FILING
`
` I
`
` hereby certify that OPPOSER’S RESPONSE TO INQUIRY INTO STATUS OF CIVIL
`ACTION is being filed with the Trademark Trial and Appeal Board using the ESTTA filing
`system of the U.S. Patent and Trademark Office on the below date.
`
` March 4, 2016
`
`
`
` s/Matthew E. Moersfelder
`
`
`
`
`
`Date:
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that OPPOSER’S RESPONSE TO INQUIRY INTO STATUS OF CIVIL
`ACTION is being duly served upon on Applicant’s counsel by mailing copies thereof via the
`U.S. Postal Service in sealed envelopes as first-class mail with postage thereupon fully prepaid
`and addressed to the following address:
`
`Seth M Nehrbass, Esq.
`Garvey, Smith Nehrbass & North, LLC
`3838 N Causeway Blvd Ste 3290
`Metairie, Louisiana 70002
`
`
`
`Date:
`
` March 4, 2016
`
`
`
` s/Matthew E. Moersfelder
`
`
`
`
`
`
`DWT 25575120v1 0095141-000006
`
`2
`
`

`

`
`
`ANNEX A
`ANNEX A
`
`
`DWT 25575120v1 0095141-000006
`DWT 25575120v1 0095141-000006
`
`3
`
`

`

`Case 4:13-cv-00010-RRE-ARS Document 620 Filed 01/20/16 Page 1 of 1
`
`Local AO 450 (rev. 5/10)
`
`United States District Court
`District of North Dakota
`
`Energy Heating, LLC, an Idaho limited liability company; Rocky
`Mountain Oilfield Services, LLC, an Idaho limited liability company,
`Plaintiff/Counterclaim Defendants,
`
`vs.
`
`Heat On-The-Fly, LLC, a Louisiana limited liability company, and Super
`Heaters North Dakota, a North Dakota limited liability company,
`Defendants,
`
`and
`
`Heat On-The-Fly, LLC, a Louisiana limited liability company,
`Counterclaimant.
`
`Heat On-The-Fly, LLC, a Louisiana limited liability company,
`Third-Party Plaintiff/Counterclaim Defendant,
`
`vs.
`
`Marathon Oil Corporation,
`
`Third-Party Defendants/Counterclaimant.
`
`AMENDED
`JUDGMENT IN A CIVIL CASE
`
`Case No.
`
`4:13-cv-10
`
`Jury Verdict. This action came before the Court for a trial by jury. The issues have been tried and the jury has rendered its
`verdict.
`
`Decision by Court. This action came to trial or hearing before the Court. The issues have been tried or heard and a decision has
`been rendered.
`
`Decision on Motion. This action came before the Court on motion. The issues have been considered and a decision rendered.
`
`✔ ✔
`
`Stipulation. This action came before the court on motion of the parties. The issues have been resolved.
`
`Dismissal. This action was voluntarily dismissed by Plaintiff pursuant to Fed. R. Civ. P. 41(a)(1)(ii).
`
`IT IS ORDERED AND ADJUDGED:
`
`Pursuant to the Order filed at Docket # 616:
`
`1. The trademark for “Heat On-The-Fly” is INVALID and unenforceable as it is a generic term.
`2. The claim for the tort of Deceit is DISMISSED WITH PREJUDICE.
`3. DAMAGES in the amount of $750,000 are AWARDED for the intentional tortious conduct of HOTF.
`4. The court DECLINES to order prejudgment interest.
`
`Pursuant to the Order filed at Docket # 619:
`
`HOTF’s inequitable conduct renders the ‘993 Patent unenforceable. Energy Heating and Marathon’s claims for
`Declaratory Judgment on the issue of Inequitable Conduct are GRANTED.
`
`January 20, 2016
`Date: __________________ ROBERT J. ANSLEY, CLERK OF COURT
`
`/s/ Ashley Sanders, Deputy Clerk
`by:________________________________
`
`