Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA606531
`ESTTA Tracking number:
`05/27/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215064
`Plaintiff
`Intellectual Reserve, Inc.
`DALE E HULSE
`KIRTON MCCONKIE
`1800 WORLD TRADE CENTER AT CITY CREEK, 60 EAST SOUTH TEMPLE
`SALT LAKE CITY, UT 84111
`UNITED STATES
`dhulse@kmclaw.com
`Reply in Support of Motion
`Douglas R. Bush
`bush.douglas@arentfox.com, grow.michael@arentfox.com,
`henry.eileen@arentfox.com
`/Douglas R. Bush/
`05/27/2014
`Reply Brief re Motion to Amend Notice of Opp
`140527194126_0001.pdf(2216255 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`ESTTA606531
`ESTTA Tracking number:
`05/27/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215064
`Plaintiff
`Intellectual Reserve, Inc.
`DALE E HULSE
`KIRTON MCCONKIE
`1800 WORLD TRADE CENTER AT CITY CREEK, 60 EAST SOUTH TEMPLE
`SALT LAKE CITY, UT 84111
`UNITED STATES
`dhulse@kmclaw.com
`Reply in Support of Motion
`Douglas R. Bush
`bush.douglas@arentfox.com, grow.michael@arentfox.com,
`henry.eileen@arentfox.com
`/Douglas R. Bush/
`05/27/2014
`Reply Brief re Motion to Amend Notice of Opp
`140527194126_0001.pdf(2216255 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`INTELLECTUAL RESERVE, INC.,
`
`Opposer,
`
`V.
`
`JONATHAN ELLER,
`
`Applicant.
`
`V
`
`Opposition No. 91215064
`
`OPPOSER’S REPLY TO APPLICANT’S OPPOSITION TO OPPOSER’S MOTIONS TO
`
`AMEND THE NOTICE OF OPPOSITION AND EXTEND ITS TIME TO RESPOND TO
`THE MOTION TO DISMISS
`
`Opposer Intellectual Reserve, Inc. (“IRI”) files this reply brief in response to Applicant
`
`Jonathan Eller’s (“Eller”) opposition to IRI’s Motions to Amend its Notice of Opposition and
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`extend its time for responding to Eller’s Motion to Dismiss.
`
`Amendment here is essential. Eller has admitted in a statement made on May 1, 2014
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`that he was not the owner of the trademark he seeks to register (See May 1, 2014 Affidavit of
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`Jonathan Eller attached as Exhibit A). Eller tries to back-pedal on that admission and defeat the
`
`Motion to Amend by (1) claiming the amendment would be “futile” because MORMON is
`
`allegedly descriptive as used by Eller, and (2) asserting that IRI lacks standing. Neither of these
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`grounds is a valid basis for objecting to the Motion to Amend. Rather they are designed to
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`obscure the fatal flaw in Eller’s application———namely, his admitted lack of ownership of the mark
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`he seeks to register. This flaw renders the application Void ab initio regardless of whether Eller’s
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`use of MORMON is descriptive as he alleges. Further IRI owns numerous registrations
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`containing the mark MORMON, and has asserted a likelihood of confusion and harm in its
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`Notice of Opposition, which is sufficient for establishing standing.
`
`
`
`IRI also has sought an extension of time to respond to Eller’s Motion to Dismiss the
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`opposition. Eller’s admission that he is not the owner of the mark is so fundamental to this
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`application that a determination as to whether that issue can be added as a basis for opposition is
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`essential before IRI can respond to the motion to dismiss and may in fact lead to Eller filing a
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`different responsive pleading.
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`For all of the reasons stated herein, the Board should grant IRI’s Motion to Amend the
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`Notice of Opposition and its request for an extension of time to respond to Eller’s Motion to
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`Dismiss.
`
`PROCEDURAL HISTORY AND STATEMENT OF FACTS
`
`On April 7, 2014 Eller filed suit against IRI in the US District Court for the Southern
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`District of Texas seeking a temporary restraining order, declaratory judgment and injunctive
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`relief concerning his use of the mark MORMON MATCH. The suit was filed in the name of
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`“Jonathan Eller, as partner of the de facto partnership, Mormon Match” (Exhibit B). The parties
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`suspended action in the civil proceeding and extended IRI’s time for responding to the motion to
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`dismiss in this Board proceeding while they explored settlement. At the end of that “stand still”
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`period, Eller sought to amend the Texas proceedings by removing Eller as a party and
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`substituting in the newly formed Mormon Match LLC.
`
`In Eller’s Memorandum of Law in Support of Plaintiffs Motion to Amend Case Caption
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`(Exhibit C), it states
`
`Jonathan Eller and his business partners have been promoting the
`partnership Mormon Match for over two years.
`On June 3, 2013, Eller applied to trademark the logo that he and his business
`partners were using to promote their business. .
`.
`. Eller was not represented by
`counsel at that time and applied for the mark as an individual. .
`.
`. However, Eller
`was acting in his capacity as a partner of Mormon Match, intending to procure a
`mark for the business.
`
`
`
`Exhibit C, p. 2. In support of these statements, Eller’s sworn declaration (Exhibit A) was
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`attached to the memorandum. In his declaration Eller states “Around June of last year, I applied
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`for a trademark in the logo myself and my partners had designed to advertise and promote our
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`business.” Exhibit A, p.l no. 5. He goes on to state “When I applied for the trademark, I
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`intended and still intend that the trademark be the property of Mormon Match, the business.”
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`Exhibit A, p. 2 no. 7. Further Eller argued in the Texas case that certain claims filed by IRI “had
`
`nothing to do with Jonathan owning a trademark, which he did not and still does not own.”
`
`Exhibit C, p. 3.
`
`In ruling on the various motions before him, the judge in the Texas denied El1er’s motion
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`for a temporary restraining order finding that Eller was not likely to succeed on the merits and
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`had not established irreparable harm. He also allowed Mormon Match LLC to be added as a
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`party while retaining Eller as a plaintiff and counter-defendant. He gave the parties leave to
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`amend their pleadings. IRI filed an amended answer and counterclaims and included a request to
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`find that E11er’s application was void ab initio. A copy of IRI’s amended answer, affirmative
`
`defenses and counterclaims in the Texas proceeding are attached hereto as Exhibit D.
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`Upon reviewing these admissions in the Texas proceeding, IRI better understood why
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`Eller had captioned his motions in this Board proceeding using the phrase “Jonathan Eller, as
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`partner of the de facto partnership, Mormon Match”.
`
`It also became clear that Eller did not own
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`the trademark he sought to register and that his application was not valid. Upon learning these
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`facts, IRI promptly filed its Motion to Amend its Notice of Opposition and requested that the
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`Board extend its time for responding to the motion to dismiss until after the issue of amending
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`the Notice of Opposition was resolved.
`
`
`
`ARGUMENT
`
`A.
`
`The Board Should Allow Amendment of IRI’s Claims Due to Eller’s Recent
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`Admission That He Did Not Own The Mark At The Time The Application Was Filed
`
`An applicant for a mark must be the owner at the time an application is filed. This was
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`the intent of Congress upon enactment of the Trade—Mark Act. Kelly Liquor Co. v. National
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`Brokerage C0,, 102 F.2d 857, 862 (1939). When the wrong party is identified as the applicant on
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`the application filing date the application is void ab initio as the applicant did not have a bona
`
`fide intent to use the mark in commerce as an individual at the time the application was filed.
`
`TMEP § l201.02(b); Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999).
`
`Eller now tries to back pedal on his earlier statements in his reply brief and suggest that
`
`there was some transition taking place in the business at the time he filed his application and that
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`it was OK for him to file in his name alone. However, this is a total contradiction of the clear
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`statement made in the Texas proceedings that he was “acting in his capacity as a partner of
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`Mormon Matc ” when he filed the trademark application. Exhibit C. p. 2. At the very least, the
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`Texas assertions raise a significant issue, which if proven true would void the application and
`
`require judgment in IRl’s favor. Eller cannot prevent the introduction of this significant issue in
`
`this opposition merely by trying to tell a different story now and asserting groundless arguments
`
`in opposition to the Motion to Amend.
`
`IRI’s Motion to Amend is not “Futile” and is Legally Sufficient to Warrant
`B.
`Inclusion in this Case.
`
`Eller asserts that the Motion to Amend is futile and contrary to settled law. However,
`
`Eller does not try to contend that the amendment challenging his lack of ownership of the mark
`
`is futile or legally insufficient. Rather, he tries to confuse the issue by rehashing an element in
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`
`
`his motion to dismiss——namely, whether MORMON is descriptive of online dating services.
`
`This issue has nothing to do with whether Eller is the owner of the mark and whether his
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`application should be deemed void ab initio‘. Eller raises the issue with the hope of diverting
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`attention from the clear admission that he is not the owner. As noted above the case law is very
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`settled that if the applicant is not the owner at the time the application is filed, the application is
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`void. See also, Huang v. Tsu Wei Chen Food Co. Lid., 849 F.2d 1458 (Fed. Cir. 1988); In re
`
`Tong Yang Cement Corporation, 19 USPQ2d 1689 (TTAB 1991) (application void ab initio
`
`because applicant never owned the mark). The Huang case also is instructive because the
`
`Federal Circuit vacated rulings by the Board on other grounds in the case because the holding on
`
`the ownership issue was dispositive. Thus, there would be no need to even address issues such
`
`as descriptiveness in this case because the application should be deemed void ab initio. Adding
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`this claim would be far from futile and is highly likely to be dispositive of the entire case.
`
`C.
`
`IRI OWNS A FAMILY OF REGISTERED MORMON MARKS AND HAS
`
`STANDING TO PROSECUTE AN OPPOSITION
`
`Section 13 of the Lanham Act “only requires that a person have a belief that he would
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`suffer some kind of damage if the mark is registered.” Ritchie v. Simpson, 170 F.3d 1092, 1095
`
`(Fed. Cir. 1999) (referencing 15 U.S.C. § 1063(a)) When an opposer owns registrations that are
`
`of record and has asserted a likelihood of confusion with the applied for mark, then the opposer
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`has a real interest in the proceeding and a reasonable basis for believing it will be damaged.
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`Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012) (citing
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`Coach Services Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600, 1604 (T.T.A.B. 2010));
`
`(referencing Cunningham v. Laser GolfCorp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1844 (Fed.
`
`
`
`Cir. 2000); Lipton Industries, Inc. v. Ralstorz Purina C0,, 670 F.2d 1024, 213 U.S.P.Q. 185, 189
`
`(CCPA 1982)).
`
`IRI owns an incontestable registration for the mark MORMON alone and has registered a
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`family of other marks containing MORMON (“Mormon Marks”). These registrations are
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`“conclusive evidence of the validity of the registered mark .
`
`. ., of the registrant’s ownership of
`
`the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” l5
`
`U.S.C. lll5(b). IRI has pled ownership of these registrations in the opposition. Further, it has
`
`asserted there is a likelihood of confusion and that the mark in Eller’s application falsely
`
`suggestions a connection with an institution and a belief. Thus, IRI has established ownership
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`and has asserted a reasonable basis for believing that it will be damaged. Accordingly, there is
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`no question that IRI has standing to bring this opposition.
`
`Even if registration of the Mormon Marks was not sufficient to establish standing, IRI
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`has a “real interest” in the proceedings because it has a “personal stake in the outcome of the
`
`proceeding and is more than a mere intermeddler.” Ritchie, 170 F.3d at 1097.
`
`IRI has a real
`
`interest in how and when any mark using MORMON is used. It has been using the Mormon
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`Marks for well over one hundred years and providing and selling an array of goods and services
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`under those marks. There is no question that MORMON is directly connected to IRI and its
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`related entities.
`
`Eller contends that IRI is not able to allege any damage from registration of the mark in
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`Eller’s application because there is alleged third party use of MORMON in connection with
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`other dating sites. Eller fails to cite any relevant case law suggesting that the mere allegation of
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`third party use is enough to deny standing to the opposing party. Instead, the cases cited by Eller
`
`stand for the proposition that if party has made no use at all of the mark in question then there
`
`
`
`may not be standing. For example, in Nobellecom LLC v. Quest Communications Int ’Z, Inc., 66
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`USPQ2d 1300 (TTAB 2003) the Board found a petitioner lacked standing because his business
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`was nothing more than an idea “which may or may not ever be brought to market.” Id. at 1304.
`
`The only relevant holding of Nobelle to this case is that the threshold for determining standing is
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`quite low, and IRI has clearly far surpassed it.
`
`The other case Eller relies upon for his standing argument is Compuclean Marketing and
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`Design v. Berkshire Products Inc., 1 USPQ2d 1324 (TTAB 1986). The Board found a lack of
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`standing because all of the evidence in the opposition dealt with use of the relevant mark by
`
`other companies and nothing in the record showed the Opposer’s relationship to any of these
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`entities. Thus, like Nobelle, there was no showing of any use or ownership of any relevant mark
`
`by the Opposer. In contrast, IRI owns incontestable registrations that are conclusive proof of its
`
`ownership and it has asserted extensive use of the Mormon Marks.
`
`Even if third party use was relevant to the issue of standing, it should be noted that IRI
`
`has in fact objected to other dating service related websites and domain names that use the mark
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`MORMON, including those listed in Eller’s brief in opposition to the Motion to Amend.
`
`D.
`
`Motions For Leave To Amend Should Be Freely Granted.
`
`The Federal Rules of Civil Procedure 15(a) states that leave to amend should be freely
`
`granted when justice requires. Courts have routinely followed this rule and even held that such
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`amendments area appropriate in the early stages of an opposition proceeding before the
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`Trademark Trial and Appeal Board. Test Masters Educational Services, Inc. v. Robin Singh
`
`Educational Services, Inc., 2013 WL 1404816 (S.D. Texas 2013).
`
`IRI filed its request for leave
`
`to amend immediately after Eller admitted that he did not own the mark. Accordingly IRl’s
`
`amendment should be allowed. IRI is not filing the amendment as a delay tactic as asserted by
`
`
`
`Eller but rather in an effort to ensure that a fundamental and dispositive issue is included in the
`
`case. This is highly appropriate particularly when the information giving rise to the grounds for
`
`opposition were just recently discovered.
`
`IRI Timely Filed 21 Motion for Extension of Time to File a Response to Eller’s
`E.
`Motion to Dismiss, so The Motion to Dismiss Should Not be Decided as Unopposed
`
`Eller contends incorrectly that IRI failed to respond to Eller’s Motion to Dismiss. Eller
`
`cites Trademark Board Procedure Manual 502.02(b) in support of this contention. However,
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`Eller deceptively leaves out the relevant portion of that rule which states that the time for
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`responding to a motion may be extended by the Board on motion for good cause. Based on that
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`rule IRI filed a motion for an extension of time to respond to the Motion to Dismiss asserting that
`if its Motion to Amend was granted this would impact on its answer to the Motion to Dismiss. .
`
`Indeed, if the Motion to Amend is granted, the Board may consider vacating the Motion to
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`Dismiss because Eller will need to file either an answer or other responsive pleading to the
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`Amended Notice of Opposition. Thus, IRI’s requested extension is not causing Eller any
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`prejudice, and Eller has stated no valid basis for denying IRI’s request. Accordingly, the Motion
`
`to Extend should be granted.
`
`CONCLUSION
`
`For the reasons set forth above lRl’s Motion for Leave to Amend should be granted, and
`
`if the Motion to Dismiss is not vacated, IRI should be given additional time within which to
`
`respond to the Motion to Dismiss.
`
`
`
`Respectfully submitted,
`
` 1
`
`Michael A. Grow
`
`Douglas R. Bush
`Arent Fox LLP
`
`1717 K Street, NW
`
`Washington, DC 20036
`(202) 857-6000
`Attorney for Opposer
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that the attached reply brief has been served upon Siddartha Rao, Esq.,
`counsel for Applicant, by e-mail at srao@dateamormon.com on May 27, 2014.
`
`
`
`
`
`Exhibit A
`
`
`
`Case 4'14-cv-00914 Document 29-2 Filed in TXSD on 05/01/14 Page 1 of 2
`
`CIVIL ACTION NO.: 14.—CV‘-.00.9‘14‘
`
`TN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`A
`
`I I I
`
`-I
`
`§
`
`f I :
`
`JONATHAN ELLER, as par-met of
`the de facto partnership, Mo.rm<__3r'1 Match,
`
`Pleéintiffl
`
`v.
`
`INTELLECTUAL IRESERVE, INC},
`a Utah C;oz_pora'ti'on, holding intellectual
`‘p'ro'perty~‘ for The C7hurch:A of Jesus Christ
`of Latter-day Saints,
`
`D.efend,arLt.
`
`.
`
`I
`
`AFFIDAVIT 01? J(_).NA‘IHAN.ELLER IN ‘SUPPORT
`MOTION T03 AMEND CASE CAPTION
`
`JONATHAN ;,E'LL-ER, Being duly swam, deposes:
`
`1..
`I submit this affidavit in support of a motion‘ to ainend the case
`caption in the above captioned action.
`7
`S
`
`2.
`
`I
`
`a Morznon; and over two years ago I embarked on a project to
`
`build a better dating website for Mormons.
`
`3.
`
`For "over two years I havefpromoted this business under the name.
`
`“Mormon Match.”
`
`4-.
`
`With‘ my ‘business partners, we have advertised as a compafly
`
`founded by M_or‘mons to operate anonline dating website for Mormons.
`
`5.
`
`Around June of last year, I applied for a tradenxask in the logo
`
`myself and my panners had designed to advertise and promote our business.
`
`6.
`
`I was not ‘represented by a lawyer at that time.
`
`
`
`
`
`
`
`Case 4:14-cv-D0914 Document 29-2 Filed in TXSD on 05/01/14 Page 2 of 2
`
`V7.
`
`Whén I applied fo1“the trademark, I intended and still intend that
`
`the trademark be «the property of Mormon Match, the business.
`
`,8}
`
`Long before any .1-it‘igatio1:1' began, I had .conversations with my
`
`bu'siness= partners aboutfmaking M’Qnnon‘Match» :a'1imife,d71iabi1ity c“ompany.,
`
`9,
`
`This company’ formation
`
`de-1'ayed'by"the. litigatipn that began
`
`‘when I received ‘notice that Intellefcfual Re_sei1ve,, Inc. ‘-was dopposing the registration of
`
`1\/£orxnonfI&4at¢h’»s‘.Iog_0~.,
`
`
`
`OF} H.c>m-’~'5
`
`
`STATE-QF:
`
`M
`
`
`
`
` A W ‘ '1‘; §3‘l3b}3‘:.ti:53l
`Before me, ?z1;ii?1“()f
`
`‘
`V
`~a1:"'
`Itruc»; upon affi‘ant’s= own
`,
`_
`Statedi}1,at:.
`*
`‘
`’t'o:_be,- -true».
`.knjové1_e.dge,2iinforc'r1;aitEfe:r:, orfiat
`
`
`
`
`Exhibit B
`
`
`
`Case 4:14-cv-00914 Document 1 Filed in TXSD on 04/07/14 Page 1 of 18
`
`CIVIL ACTION NO.:
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`I 1 l l l
`
`1
`I
`1
`
`1 1
`
`] l
`
`JONATHAN ELLER, as partner of
`the de facto partnership, Mormon Match,
`
`Plaintiff,
`
`V.
`
`INTELLECTUAL RESERVE, INC,
`a Utah Corporation, holding intellectual
`property of the Church of Jesus Christ
`of Latter—day Saints,
`
`Defendant.
`
`VERIFIED COMPLAINT SEEKING DECLARATORY
`JUDGMENT AND PRELIMINARY INJUNCTION
`
`Pursuant to Rule 65 of the Federal Rules of Civil Procedure, Plaintiff
`
`JONATHAN ELLBR, as partner of the de facto partnership Mormon Match seeks
`
`injunctive relief against Defendant INTELLECTUAL RESERVE, INC. from taking any
`
`action to shut down or interfere with Ionatharfs website Www.dateamonnon.com,
`
`pending this Court’s decision on the his claim for declaratory judgment on the following
`
`grounds:
`
`PARTIES
`
`1.
`
`Jonathan Eller is a citizen of Texas residing at 18630 Minden Oaks
`
`Drive, Spring, Texas 77388.‘
`
`2.
`
`Upon information and belief, Intellectual Reserve, Inc. (“IRI”) is a
`
`nonprofit Utah Corporation holding intellectual property used by The Church of Jesus
`
`Christ of Latter—day Saints (the ‘‘Church’’).
`
`‘ This is also the corporate address of Mormon Match.
`
`
`
`Exhibit C
`
`
`
`Case 4:14-cv-00914 Document 29-3 Filed in TXSD on 05/01/14 Page 1 of 7
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE, SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`
`
`CIVIL ACTION NO; 14~CV-00914
`
`I K I I %
`
`.1
`
`I 1 1 I 1
`
`JONATHAN ELEER, as partner of °
`the de facto partnership, Mormon Match,
`
`Plaintiff,
`
`V.
`
`INTELLECTUAL RESERVE, INC.,
`a Utah Corporation, holding intellectual
`property for The Church of Jesus Christ
`of Latter-day Saints,
`
`
`
`Defendant.
`.._
`..................
`
`MEMORANDUNI OF LAW IN SUPPORT OF
`._
`PLAINTIE ’S MOTION TO AMEND CASE CAPTION
`
`
`
`Case 4:14-Cv-00914 Document 29-3 Filed in TXSD on 05/01/14 Page 2 of 7
`
`Plaintiff files this memorandum in support of this motion to amend the
`
`case caption. The caption should be amended because it no longer reflects the accurate
`
`name of the parties in interest. Accordingly, Plaintiff respectfully asks that the Court
`
`amend the caption with the following accurate identification of the parties:
`
`CIVIL ACTION NO.: 14—CV—009‘l4
`
`
`Motrnon Match, LLC, f/lc/a‘Monnon“Matcii,3‘
`
`Plaintiff,
`
`V.
`
`INTELLECTUAL RESERVE, INC.,
`9. Utah Corporation, holding intellectual
`property for The Church of Jesus Christ
`of Latter-day Saints,
`
`Defendant.
`
`i I I l I l I I I i
`
`Alternately, Plaintiff seeks leave to move for substitution of the proper party in interest,
`
`Mormon Match, LLC.
`
`Plaintiff sought consent for
`
`this ministerial motion from
`
`defendant Intellectual Reserve, Inc. (“LRI”).
`
`lRI’s counsel stated it would notconsent.
`
`See Declaration of Siddartha Rao, dated May 1, 2014 (“Rao Decl.”) at 1] 9:
`Plaintiff commenced this action on behalf of the de facto paitnership
`
`Mormon Match, as founder and promoter of the partnership. Eller sought emergency‘
`
`relief to prevent ir1‘epa1'able harm bcfalling Monnon Match. On April 21, Mormon
`
`Match foimalized its status as a limited liability company under the laws of the State of
`
`Texas, as it long intended to do. See Exhibit in to R210 Decl. At that time this action was
`
`stayed by the parties’ request for an abatement pending settlement discussions [Dkt 20].
`
`Now that
`
`the abatement has ended,
`
`this motion follows to correct the caption and
`
`accurately reflect the patty in interest.
`
`
`
`Case 4:14—cv-00914 Document 29-3 Filed in TXSD on 05/01/14 Page 3 of 7
`
`
`STATEMENT QEISSUE
`
`Pursuant to the Judge’s Individual Practices, Plaintiff provides a short
`
`statement of the issue to be ruled upon by the court and a short statement, supported by
`
`authority, of thelegal standard with respect to that issue.
`
`Issue:
`
`Standard:
`
`Should the Court grant amendment of the case caption to reflect the proper
`party in interest following a change ofPlaintiffs corporate form?
`
`“An action must be prosecuted in the name of the real party in interest.”
`Fed. R. Civ. P. 17(a)(1). Moreover, to the extent this motion is read as
`seeking substitution under Rule 25(c) due to a transfer of interest, such
`permissive transfer is appropriate here to clarify the parties in interest.
`Reyna v. FZashtax, Inc., 162 F.R,D. 530 (SD. Tex. 1995).
`
`STATEMENT OF FACTS '
`
`Plaintiff commenced this matter to seek ex parte emergency relief to
`
`protect Mormon Match. Jonathan Eller and his business partners have been promoting the
`
`partnership Mormon Match for over two years.
`
`On June 3, 2013, Eller applied to trademark the logo that he and his
`
`(See accompanying’ affidavit of
`business partners were using to promote their business.
`Jonathan Eller, sworn to on May 1, 2014 (“Ellcr Afff‘) at fil 5). Ellcr was not represented
`
`by counsel at that time and applied for the mark as an individual.
`
`(Eller Aft‘. at ‘ll 6).
`
`However, Eller was acting in his capacity as a partner of Mormon Match, intending to
`
`procure a mark for the business. (Eller Aff. 1} 7-8).
`
`‘
`
`At the end of February, Eller received opposition papers from R1". in the
`
`trademark proceeding.
`
`Upon consulting counsel, Mormon Match immediately
`
`accommodated IRI by placing a disclaimer on its website that it is not commercially
`
`affiliated with The Church of Jesus Christ of Lstter~day Saints.
`
`It then attempted to
`
`
`
`Case 4:14-cv-00914 Document 29-3 Filed in TXSD on 05/01/14 Page 4 of 7
`
`communicate with counsel for IRI over the next two weeks on six separate occasions to
`
`reach a settlement by sending letters, einailsand a voice mail message.
`
`IRI’s counsel refused to acknowledge any communication or open any
`
`dialogue, preferring to force a responsive pleading. Moreover,
`
`the day before that
`
`pleading was due, IRI wrote a letter to Mormon Matcl1’s data hosting company accusing
`
`Mormon Match of infringement and unfair competition and insisting that the company’s
`
`Website and server be shutdown.
`
`At that time Mormon Match’s logo had not registered as a trademark,
`
`because registration was delayed by lRl’s opposition proceeding. Accordingly, lRI’s
`accusations of infringement and unfair competition had nothing to do with Jonathan
`
`owning a trademarlc, which he did not and still does not own. Rather, it was simply that
`
`IRI wanted to control Mormon Match’s use of the word “Mormon” and its display of a
`
`photograph that IRI does not own.
`
`This proceeding is therefore not about the trademark registration issues,
`
`which are properly before the Trademark Board. This proceeding is about protecting
`
`Mormon Match’s business fi'om IRI’s attempts to control uses of “Mormon” and displays
`
`of photographs that it does not own. The real party in interest is the business Mormon
`Match, LLC, which seeks to operate under a brand it has promoted for two years.
`
`Since commencing the case, Mormon Match, LLC has become a_limited
`
`liability company organized under the laws of the State of Texas, as it had long intended.
`
`(Rao Decl. Ex. 1; Eller Aff. ii 9-4 0). It is no longer accurate to refer to this proceeding as
`
`Eller v. Intellectual Reserve, lnc., and the motion seeks to substitute the real party in
`
`interest, Mormon Match, LLC.
`
`
`
`Case 4:14-cv-00914 Document 29-3 Filed in TXSD on 05/01/14 Page 5 of 7
`
`A.13£LUsM.E,,N.I£'.
`
`“An action must be prosecuted in the name of the real party in intei'est,”
`
`and Plaintiff seeks to amend the caption to comply with this rule. Fed. R. Civ. P.
`
`17(a)(l). Here the prior caption named the proper plaintiff incompletely, by naming
`
`Jonathan Eller acting for the de facto partnership Mormon Match. Because Mormon
`
`Match, LLC is now the real party in interest, the case caption should be amended to
`
`accurately reflect this.
`
`A.
`
`IRI had Notice of Mormun Matclfs Interest in this Action
`
`The party description in the prior caption was not the result of any bad
`
`faith, was not intended to confuse or prejudice IRI in any way, and is not confusing or
`
`prejudicial to IRI.
`
`Indeed,
`
`the caption referenced Mormon Match, and the Verified
`
`Complaint plainly explains Mormon Match’s interest in the case. Further, the disclosure
`
`of interested parties {Dkt 17] provided to IRI very clearly explains Mormon Match’s
`
`interest in the case. It describes the Plaintiff as:
`
`Plaintiff Jonathan Eller is general partner of Mormon ‘
`Match. Mormon Match is a defacro Texas partnership, the
`principal place of business of which is 18630 Minden Oaks
`D11, Spring, TX 77388.
`
`Accordingly, the motion should be granted.
`
`B.
`
`IRI will Suffer no Prejudice from the Proposed Caption Amendment‘
`
`The case of Reyna v. Flczshtax, Inc., 162 F.R.D. 530 (SD. Tex. 1995) is
`
`instructive. There,
`
`the court granted plaintiffs motion to correct a misnomer by
`
`changing the named plaintiff from a corporation to an individual, to reflect the proper
`
`party.
`
`Id. at 532. The court then denied dcfenciant’s motion for reconsideration, finding
`
`that the mere fact that the change allowed plaintiff a greater damages claim did not make
`
`
`
`Case 4:l4—cv-00914 Document 29-3 Filed in TXSD on 05/01/14 Page 6 of 7
`
`the change a substitution and was not prejudicial because plaintiff gave defendant notice
`of the relevant facts.
`Id. Similarly, here there is no prejudice because the prior caption
`
`referenced the Mormon Match partnership, the pleadings fully explained the relationship
`
`of Mormon Match to the case, and the change is proper to reflect the real party in interest.
`
`See, Jones v. Stale ofLouisiana, 764 F.2d 1183, 11 85-86 (5th Cir. 1985) (reversing
`district court and holding where individual was “identified by name in the caption
`
`although its name appeared in tandem” with party, it was proper to allow amendment to
`
`name individual as paity).
`
`C.
`
`At a i‘«Iinimum, the Court Should Grant Leave to Substitute
`
`Even if the proposed caption amendment somehow constitutes
`
`a
`
`substitution of a different party, the Court should nonetheless grant leave to amend under
`
`Fed. R. Clv. P. 25(c). Because further proceedings appear likely, the change will
`
`eliminate later confusion. Although substitution under Rule 25(c)
`
`is permissive,
`
`substitution should be permitted in this instance to clarify the parties and comply with
`
`Rule 17 by naming the real party in interest as Plaintiff.
`
`
`
`Case 4:14—ov-00914 Document 29-3 Fiied in TXSD on 05/01/14 Page 7 of 7
`
`‘CONCLUSION
`
`For each and every one of the reasons stated herein, Mormon Match, LLC
`
`respectfully requests that the caption be amended as described herein to name it as
`
`Plaintiff in this matter.
`
`Respectfully submitted,
`
`__‘_/Siddaflha Raol
`Siddartha Rao, Esq.
`Counselfor Plain nfl
`121 E. 12“* St. Apt. LG
`New York, New York 10003
`(646) 221 1846
`
`Kiernan McA1pine, Esq.
`Local counseifor Plaintiff’
`(Admitted in the Southern
`District of Texas)
`3310 Louisiana St Ste 2413
`
`Houston, TX 77006
`(832)314-1383
`Fax: (832) 201-7814
`
`
`
`Case 4:14—cv-00914 Document 29-4 Filed in TXSD on 05/01/14 Page 1 of 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`AJONATI-IAN
`as partner of .
`II
`the de facto partnership, Mormon Match,
`
`Plaintiff,
`
`v.
`
`I
`
`CIVIL ACTION NO.: l4—CV-00914
`
`INTELLECTUAL RESERVE, INC.,
`a Utah Corporation, holding intellectual
`property for The Church of Jesus Christ
`of Latter-day Saints,
`
`Defendant.
`
`[PROPOSED] ORDER GRANTING P.LAINTIFF’S
`.Mo'1j1o.;st_.;:_o.AMEND CASE CAPTION
`
`For the reasons set forth in Plaintiffs Motion to Amend Case Caption,
`
`supporting Memorandum of Law, Affidavit of Jonathan Eller sworn to on May 1, 2014,
`
`Declaration of Siddartha Rao dated May 1, 2014 and exhibit thereto, it is hereby ordered
`
`that the caption in this matter be replaced with the following:
`
`'
`CIVIL ACTION NO.: 14-CV—OO9l4
`
`United states .DistrlctJudgie I
`
`Mormon Match, LLC, If/k/a Mormon Match,_[
`
`l I l
`
`.|
`_l
`I
`l
`
`I l
`
`Plaintiff,
`
`V.
`
`INTELLECTUAL RESERVE, INC,
`a Utah Corporation, holding intellectual
`property for The Church of Jesus Christ
`of Latter-day Saints,
`
`Defendant.
`
`Dated this _ day of .
`
`, 2014
`
`
`
`Case 4:14-cv—OO914 Document 29-5 Filed in TXSD on 05/01/14 Page 1 of 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`
`JONATHAN ELLER, as partner of
`the de facto partnership, Mormon Match,
`
`Plaintiff,
`
`v..
`
`CIVIL ACTION NO.: 14—CV-00914
`
`INTELLECTUAL RESERVE, INC,
`a Utah Corporation, holding intellectual
`property for The Church of Jesus Christ
`of Latter—day Saints,
`
`Defendant.
`
`_____.___._..__..__._.______J
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 1st of May 2014, I electronically filed the
`foregoing Motion to Amend Case Caption, Affidavit of Jonathan Eller sworn to May 1,
`2014, Declaration of Siddartha Rao dated May 1, 2014 and exhibit thereto, Memorandum
`of Law in support, and Proposed Order Granting Motion to Amend Case Caption with the
`Clerk of the Court using the CM/ECF system, which will send a notice of electronic
`filing to persons electronically noticed.
`
`[Kiernan McAlpine/
`Kiernan McAlpine, Esq.
`Local counselfor Plaintiff
`(Admitted in the Southern
`District of Texas)
`3310 Louisiana St Ste 2413
`
`Houston, TX 77006
`
`(832)314-1383
`Fax: (832)201-7814
`
`
`
`Exhibit D
`
`
`
`Case 4:14—cv—0O914 Document 33 Filed in TXSD on 05/12/14 Page 1 of 32
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`JONATHAN ELLER
`MORMON MATCH LLC
`
`Plaintiffs
`
`V.
`
`Civ. Action 4:14—cv-00914
`
`INTELLECTUAL RESERVE, INC.
`
`Defendant/Counterclaim Plaintiff
`
`JONATHAN ELLER
`MORMON MATCH LLC
`JOHN DOES l-5
`Counterclaim Defendants
`
`AMENDED ANSWER, AFFIRMATIVE DEFENSES
`AND COUNTERCLAIMS
`
`Defendant Intellectual Reserve, Inc. hereby answers the Complaint as follows.
`
`PARTIES
`
`1.
`
`Defendant is without sufficient knowledge to form a belief as to the allegations
`
`contained in Paragraph 1 and, therefore, denies said allegations.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Defendant admits the allegations contained in Paragraph 2.
`
`Defendant admits the allegations contained in Paragraph 3.
`
`Defendant admits the allegations contained in Paragraph 4.
`
`Defendant admits the allegations contained in Paragraph 5.
`
`
`
`Case 4:14-cv—OO914 Document 33 Filed in TXSD on 05/12/14 Page 2 of 32
`
`NATURE OF THE CASE
`
`6.
`
`Paragraph 6 contains a description of Plaintiffs’ alleged cause of action to which
`
`no response is required.
`
`7.
`
`8.
`
`Defendant denies the allegations contained in Paragraph 7.
`
`Defendant is without sufficient knowledge to form a belief as to the allegations
`
`contained in Paragraph 8 and, therefore, denies said allegations.
`
`9.
`
`Defendant is without sufficie
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