Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA600952
`ESTTA Tracking number:
`04/28/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91215293
`Plaintiff
`MonosijDutta-Roy
`MonosijDutta-Roy
`923 Peachtree St., Unit 829
`Atlanta, GA 30309
`UNITED STATES
`monosij@gmail.com, monosij.accounts@gmail.com
`Other Motions/Papers
`Monosij Dutta-Roy
`monosij@gmail.com, monosij.accounts@gmail.com
`/Monosij Dutta-Roy/
`04/28/2014
`MDR.USPTO.Plaintiff.Reply.Defendant.Motion.ToDismiss.pdf(294376 bytes )
`Ex-01.MDR.Appellant.Initial-Brief.pdf(577119 bytes )
`Ex-02.DN-05.MDR.Answer.Counter-Claims.pdf(201013 bytes )
`Ex-03.DN-64.MDR.Opposition.Partial-Summary-Judgment.pdf(183947 bytes )
`Ex-04.DN-65.MDR.Opposition.Summary-Judgment.pdf(130957 bytes )
`Ex-05.DN-76.MDR.NoticeOfAppeal.Summary-Judgment.pdf(607949 bytes )
`Ex-
`06.DN-108.MDR.Response.ShowCause.Contempt.Non-Compliance.pdf(207775
`bytes )
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Mr. MONOSIJ DUTTA-ROY
`
`Opposition Number: 91215293
`
`923 Peachtree St., Unit 829, Atlanta, GA 30309.
`
`Plaintiff / Petitioner Dutta-Roy.
`
`US Application Serial No.: 85684016
`
`Word Mark:
`
` WWW.BYDESIGNFURNITURE.COM
`
`Monday, April 28, 2014.
`
`vs.
`
`JYSK BED'N LINEN, d/b/a By Design,
`
`as successor to
`
`Quick Ship Holding, Inc., d/b/a By Design.
`
`Defendant / Applicant Jysk.
`
`PLAINTIFF / PETITIONER DUTTA-ROY'S REPLY
`
`TO Defendant/Applicant JYSK BED'N LINEN'S
`
`MOTION TO DISMISS OPPOSITION PETITION
`
`
`
`IN EITHER: CANCELLATION
`
`
`
` OR
`
` SUSPENSION
`
`
`
`
`
` OF PROCEEDINGS
`
`
`
`In the matter of pending trademark application Serial No. 85350874, Opposition Number:
`
`91215293 for the Word Mark ‘www.bydesignfurniture.com’ for the domain
`
`'www.bydesignfurniture.com,’ filed by Jysk Bed n’ Linen, d/b/a By Design (hereinafter
`
`‘Defendant/Applicant Jysk’), with a business address with its principal place of business at 6564
`
`Warren Drive, Norcross, Georgia 30093 -- the application is opposed by Monosij Dutta-Roy,
`
`(‘Plaintiff/Petitioner Dutta-Roy’ and not 'Roy' as Defendant/Applicant has cited) with address
`
`at 923 Peachtree St., Unit 829, Atlanta, GA 30309 believes that he will be severely damaged by
`
`the illegal registration of Defendant/Applicant's Mark for the domain identified in the
`
`Application, and filed Notice of Opposition on MARCH 05, 2014.
`
`1 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`1. Plaintiff/Petitioner Dutta-Roy wants the USPTO Trademark and Appeal Board (TTAB) to
`
`note that the case is currently in Appeal at United States Appellate Court, Eleventh
`
`Circuit, Case Number 13-15309-AA – and therefore the Trademark application should be
`
`canceled, if not suspended, until the Appeal process and any subsequent processes are
`
`adjudicated upon.
`
`2. The TTAB is requested to note that Plaintiff/Petitioner's request to proceed in Appeal
`
`had been granted along with his request to proceed in forma pauperis for Court
`
`Orders that Defendant/Applicant has attached as exhibits A, B, C - in their motion in
`
`Summary Judgment, Exhibit – A (DN 69), the Order in Show Cause, Exhibit – B (DN-
`
`98) and Court hearing in Contempt of Court Exhibit – C (DN-111).
`
`3. Plaintiff/Petitioner Dutta-Roy's Appellant's Initial Brief to the Appellate Court, 11th Cir.,
`
`submitted on APRIL 24, 2014 is attached as Exhibit–1, with this submission to show that
`
`several issues of material fact existed (Summary Of The Arguments – page 25) in case for
`
`the Dist. Court to grant Summary Judgment in DN-69. The main Arguments begin on
`
`page 29.
`
`4. Plaintiff/Petitioner Dutta-Roy filed the Appeal pursuant to FRCvP Rule 60 (a) and Rules
`
`60 (b) (1)/(3)/(6) as Dutta-Roy has shown by way or arguments cited (Statement Of The
`
`Case – page 7) that causes of mistakes, oversight, omissions, neglect, fraud exists in this
`
`case that the District Court has overlooked.
`
`5. Plaintiff/Petitioner Dutta-Roy attaches the following comprehensive list of documents,
`
`Exhibits 1 – 6, with this Reply in the documents submitted in District Court and
`
`Appellate Court by Plaintiff/Petitioner Dutta-Roy, for review by the TTAB:
`
`A) Appellant's Initial Brief to the Appellate Court, 11th Cir., submitted on APRIL 24,
`
`
`
`2014 is attached as Exhibit–1. Filename: Ex-01. MDR.Appellant.Initial-Brief.pdf.
`
`
`
`B) Answer and Counter-Claims submitted to District Court on OCTOBER 10, 2012,
`
`
`
`DN-05 as Exhibit–2. Filename: Ex-02.DN-05.M DR.Answer.Counter-Claims.pdf.
`
`
`
`2 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`C) Opposition to Partial Summary Judgment, DN-64, filed in Dist. Court on MAY 03,
`
`2013, as Exhibit–3; Filename: Ex-03.DN-64.MDR.Opposition.Partial-Summary-
`
`Judgment.pdf.
`
`D) Opposition to Summary Judgment, DN-65, filed in Dist. Court on MAY 03, 2013,
`
`as Exhibit–4; Filename: Ex-04.DN-65.MDR.Opposition.Summary-Judgment.pdf.
`
`E) Defendant's Notice of Appeal submitted to District Court, DN-76 filed on
`
`NOVEMBER 19, 2013, as Exhibit–5; Filename: Ex-05.DN-
`
`76.MDR.NoticeOfAppeal.Summary-Judgment.pdf.
`
`F) Response to Court Order Show Cause Contempt of Court submitted to District
`
`Court, DN-76 filed on MARCH 27, 2014, as Exhibit–6; Filename: Ex-06.DN-
`
`108.MDR.Response.ShowCause.Contempt.Non-Compliance.pdf.
`
`6. Plaintiff/Petitioner also requests the TTAB to note that in filing for trademark for
`
`Plaintiff/Petitioner's domain and word mark 'www.bydesignfurniture.com,'
`
`Defendant/Applicant is in violation of USPTO's 37 C.F.R. Rule 2.38 (a) wherein
`
`Defendant/Applicant has not notified of initial and continual use by Defendant/Applicant
`
`Dutta-Roy since APRIL 09, 1999.
`
`7. And Plaintiff/Petitioner has omitted the fact that Dutta-Roy had transferred the
`
`hosting, not the ownership, of the domain to Genesis Computers in AUGUST 23, 2003
`
`for use by Defendant/Applicant's then owner Quick Ship Holding DBA By Design for
`
`email and hosting.
`
`8. Defendant/Applicant is also in violation of Rule 2.41 in its application as
`
`Defendant/Applicant has falsely cited distinctiveness of Plaintiff/Petitioner's domain and
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`mark 'www.bydesignfurniture.com,' when Plaintiff/Petitioner has shown that
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`Defendant/Applicant has registered the DBA name of 'By Design' and NOT 'By Design
`
`3 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`Furniture' as Plaintiff/Petitioner has show in his initial Objection filed on MARCH 05,
`
`2014.
`
`9. Plaintiff/Petitioner Dutta-Roy would like to again draw the TTAB's notice to the Exhibits
`
`A - F, filed with the Opposition on MARCH 05, 2014 listed again below that
`
`Defendant/Applicant's Trademark Application for Plaintiff/Petitioner's domain and word
`
`mark 'www.bydesignfurniture.com,' should be considered void, if not held until all
`
`District Court and Appellate Court proceedings have been finalized. The Exhibits from
`
`Plaintiff/Petitioner's Objection on MARCH 05, 2014, that show the violations of the
`
`Defendant/Applicant's Trademark Application are:
`
` :
`
`
`These exhibits submitted with initial Opposition Petition filed MARCH 05, 2014
`
`Exhibit: FileName
`
`Exhibit: ID and Description
`
`A.MDR.Domain.Reg.pdf
`
`Exhibit-A: WhoIS Registration Information for Dutta-Roy’s domain
`registration on APR.09.1999.
`
`B.ByDesign.DBA.pdf
`
`Exhibit-B: Quick Ship DBA Filing as By Design and not By Design
`Furniture on SEP.27.1989.
`
`C.1.BD.Flyer.2013.AJC.pdf
`
`Exhibit-C.1: 2013 By Design Flyer in Atlanta Journal & Constitution
`insert.
`
`C.2.BD.Flyers.pdf
`
`Exhibit-C.2: By Design Flyers in various inserts.
`
`D.1.ByDesign-
`InternationalFurniture.AngiesList.pdf
`
`Exhibit-D.1: Search results for By Design as By Design International
`Furniture on Angie’s List.
`
`D.2.ByDesign-
`InternationalFurniture.Facebook.pdf
`
`Exhibit-D.2: Search results for By Design as By Design International
`Furniture on Facebook.
`
`D.3.ByDesign-
`InternationalFurniture.FindTheComp
`any.pdf
`
`Exhibit-D.3: Search results for By Design as By Design International
`Furniture on FindTheCompany.
`
`D.4.ByDesign-
`InternationalFurniture.Manta.pdf
`
`Exhibit-D.4: Search results for: By Design as By Design International
`Furniture on Manta.
`
`D.5.ByDesign-
`InternationalFurniture.Mapquest.pdf
`
`Exhibit-D.5: Search results for By Design as By Design International
`Furniture on Mapquest.
`
`D.6.ByDesign-
`InternationalFurniture.Yelp.pdf
`
`Exhibit-D.6: Search results for: By Design as By Design International
`Furniture on Yelp.
`
`E.Dutta-
`Roy.memorandum.OfSupport.pdf
`
`Exhibit-E: Plaintiff/Petitioner Dutta-Roy’s Memorandum of Support
`detailing the facts of US District Case:1:12-cv-03198-TWT, filed against
`Dutta-Roy by Defendant/Applicant Jysk and currently in Appeal.
`
`4 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`F.BW.BD.Partnership.Agreement.pdf
`
`Exhibit-F: The development Partnership Agreement / Contract signed
`with Quick Ship Holding DBA By Design, copy of unsigned Partnership
`Agreement provided.
`
`G.1.Emails.MDR.KjellBratengen.pdf
`
`Exhibit-G.1: Emails between Dutta-Roy and Defendant/Applicant's then
`owner Bratengen noting contract, restart of e-commerce website and
`requesting transfer of domain 'www.bydesignfurniture.com' to hosting
`provider Genesis - 2002, 2003, 2004, 2005.
`
`G.2.Domain.Hosting.Transfer.Genesis
`.pdf
`
`Exhibit-G.2: Domain Hosting record transfer of 'bydesignfurniture.com'
`to Genesis Computers: Transferred: October 14, 2003.
`
`H.1.BackUp.6-CDs.Development.pdf
`
`Exhibit-H.1: 6 CDs of the backup of the e-commerce development is
`described but not included, Opponent Dutta-Roy will make it available
`in person if the Board needs to review it.
`
`H2.MDR.Development.Hardware.pdf
`,
`H2.MDR.Development.Hardware.xls
`
`Exhibit-H.2: Opponent Dutta-Roy's Development Hardware: 2000 –
`2006.
`
`10. Defendant/Applicant Jysk DOES NOT have a trademark, fictitious name, registered to
`
`do business as (DBA) ‘By Design Furniture.’ Defendant/Applicant is registered with
`
`Superior Court, Gwinnett County with trade name (or DBA name) as ‘By Design.’
`
`Plaintiff/Petitioner submits Defendant/Applicant’s registration with the Superior Court,
`
`Gwinnett County from 1989.
`
`11. It is a fact that Defendant/Applicant Jysk owns the mark ‘By Design’ by way of use for
`
`23 years and by way of Defendant/Applicant Jysk’s then Quick Ship Holding registration
`
`of the mark ‘By Design’ (and NOT ‘By Design Furniture’) with the Superior Court,
`
`Gwinnett County. The Appeal Board is also requested to review Appellee Jysk’s logo by
`
`which they currently sell their goods and services at their ‘By Design’ stores.
`
`By Design . affordable . accessible . always available.
`
`It is NOT ‘By Design Furniture’ or 'www.bydesignfurniture.com.’
`
`This is the same logo at website and stores:
`
`12. The Appeal Board is also requested to review the flyers that By Design has printed and
`
`distributed over the years in advertisements and inserts in newspapers and magazines
`
`5 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`listing itself as ‘By Design’ and not ‘By Design Furniture.’ and search results submitted
`
`in initial Opposition.
`
`13. The ownership of Defendant/Applicant’s mark and domain
`
`‘www.bydesignfurniture.com’ was contested by Jysk in a lawsuit brought against
`
`Opponent Dutta-Roy in US District Court Northern District of Georgia, Case:1:12-cv-
`
`03198-TWT, filed on September 12, 2012. This case is a blatant case of reverse-
`
`cybersquatting against Opponent Dutta-Roy and the case is now in appeal.
`
`14. Plaintiff/Petitioner Dutta-Roy had a signed contract to develop the e-commerce website
`
`(page 1, Exhibit: G.1) and has allowed the use of mark 'www.bydesignfurniture.com’
`
`by way of gracious licensing per request of Defendant/Applicant’s then owner Bratengen
`
`(pages 10/11, Exhibit: G.1) , that Defendant/Applicant Jysk is now claiming as its own
`
`by reverse domain name hijacking. The gracious use is evidenced by way of
`
`communications between Plaintiff/Petitioner Dutta-Roy and Defendant/Applicant’s
`
`Bratengen in Addendum-A, Addendum-A1.
`
`15. At the request of Defendant/Applicant’s Bratengen, in August 2003, Plaintiff/Petitioner
`
`transferred the hosting of the domain 'www.bydesignfurniture.com,’ to
`
`Defendant/Applicant so that Defendant/Applicant could use it for email, advertisements,
`
`and website hosting. Plaintiff/Petitioner Dutta-Roy did not, transfer the ownership of the
`
`domain 'www.bydesignfurniture.com,’ to Defendant/Applicant, only the hosting was
`
`transferred to Genesis Computers.
`
`16. Plaintiff/Petitioner Dutta-Roy does not offer goods or services under the marks ‘By
`
`Design’ or 'www.bydesignfurniture.com,’ but has leased the use of his mark
`
`'www.bydesignfurniture.com,’ by way of a Partnership Agreement with Appellant’s
`
`Bratengen in 2000 to develop an e-commerce website to be hosted on
`
`'www.bydesignfurniture.com.’ Also, the Appeal Board is requested to kindly note Initial
`
`Disclosures in US District Court Northern District of Georgia, Case:1:12-cv-03198-
`
`TWT: Attachments C & D filed November 21, 2012, available in case docket.
`
`6 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`Defendant/Applicant can make these available to Appeal Board if Appeal Board needs
`
`them and is unable to access them.
`
`17. Opponent Dutta-Roy restates that, Defendant/Applicant Jysk has illegally filed a lawsuit
`
`against Plaintiff/Petitioner Dutta-Roy by way of reverse-cybersquatting (reverse domain
`
`name hijacking) under the Anti-Cybersquatting Consumer Protection Act (15 USC §
`
`1125). The Civil Action File: 1:12-cv-03198-TWT, is currently being defended by
`
`Plaintiff/Petitioner Dutta-Roy and is currently in Appeal.
`
`18. Plaintiff/Petitioner Dutta-Roy had registered the domain name
`
`'www.bydesignfurniture.com,’ on April 09, 1999 to develop an e-commerce site with
`
`Defendant/Applicant’s then owner Mr. Kjell Bratengen. After development in over 4000
`
`hours of work and 4 years, Defendant/Applicant’s Bratengen cancelled the deployment of
`
`the e-commerce site, even after servers were purchased by then manager Mr. Scott Bell of
`
`Quick Ship DBA By Design. The details of the work can be provided to this Trademark
`
`Trial and Appeal Board if the Board requires it.
`
`19. Defendant/Applicant’s Bratengen had sold his Quick Ship Holding DBA By Design to
`
`Defendant/Applicant Jysk Bed n’ Linen fraudulently claiming ownership of the domain
`
`'www.bydesignfurniture.com,’, in the process leading Jysk Bed n’ Linen to believe it
`
`has ownership of domain’ ‘www.bydesignfurniture.com.’ Plaintiff/Petitioner Dutta-Roy
`
`has spoken with Defendant/Applicant’s managers based out of Denmark (where
`
`Defendant/Applicant Jysk is headquartered) and he was told that ‘they believed the
`
`domain was part of the sale.’
`
`20. Defendant/Applicant Jysk is engaged in reverse-cybersquatting violating the Lanham Act
`
`and Anti-cybersquatting Consumer Protection Act, by choosing to promote its brand ‘By
`
`Design’ through the domain 'www.bydesignfurniture.com’ and registering
`
`Plaintiff/Petitioner’s other surrounding domains and Marks 'www.bydesign-
`
`furniture.com,’ bydesignfurniture.co,’ 'www.bydesignfurniture.net,’
`
`'www.bydesignfurniture.biz,’ 'www.bydesign-furniture.net’ and 'www.bydesign-
`
`furniture.biz.’
`
`7 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`21. Defendant/Applicant Jysk currently has these domains in its possession through this
`
`illegal effort to grab the Mark 'www.bydesignfurniture’ through claiming ownership of
`
`the domain 'www.bydesignfurniture.com’ because of continued leased usage, allowed
`
`by Opponent Dutta-Roy in good-faith to recover expenses for work done for
`
`Defendant/Applicant Jysk in development of the e-commerce website.
`
`REQUEST FOR RELIEF
`
`22. By way of claims 1 – 21 and reasons cited in Appellant's Initial Brief (Exhibit – 1) and
`
`Defendant's Notice of Appeal (Exhibit – 6) above Plaintiff/Petitioner wants the TTAB to
`
`note that it is Defendant/Applicant who is making a mockery of the Lanham Act by filing
`
`this trademark and therefore Defendant/Applicant Jysk's trademark application should be
`
`canceled.
`
`23. The TTAB is requested to note that Dutta-Roy will be much damaged if this trademark
`
`application is allowed to go forward, as Dutta-Roy has shown he owns the domain and
`
`mark 'www.bydesignfurniture.com' by common law since APRIL 09, 1999 and only
`
`transferred its hosting and usage to Genesis Computers in AUGUST 2004 after 4 years of
`
`use – in anticipation of going live with the e-commerce site for By Design's stores.
`
`24. Dutta-Roy's interest in the cancellation proceedings is immensely is tied to the fact that
`
`he owns the domain and mark 'www.bydesignfurniture.com' and has leased its use to
`
`Jysk in anticipation of getting paid for the years of work performed.
`
`25. Dutta-Roy is bewildered how Defendant/Applicant Jysk can even state that Dutta-
`
`Roy is not stating a claim when he has clearly shown through evidence that he owns the
`
`domain and mark an has leased its use to them since AUGUST 2003 and he owns the
`
`domain and mark. This filing by Defendant/Applicant is merely to confuse the issue that
`
`Defendant/Applicant is in flagrant violation of the Lanham Act, 15 U.S.C. § 1051, et.
`
`seq., for dilution under the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c),
`
`8 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`violations of the Anti-cybersquatting Consumer Protection Act, 15 U.S.C. § 1115(d),
`
`and for Unfair Competition, 15 U.S.C. § 1125(a), Cyber Squatting, 15 U.S.C. § 1125(d),
`
`Trademark Dilution, 15 U.S.C. § 1125(c), Common Law Unfair Competition, Common
`
`Law Conversion , and Conversion under the Common Law. These are the very laws
`
`Defendant/Applicant cites that Plaintiff/Petitioner violated when in fact it is
`
`Defendant/Applicant that violates them – Plaintiff/Petitioner has pointed them out in his
`
`Appeal in detail as to why.
`
`26. Defendant/Applicant also violates the laws under Official Code of Georgia Annotated
`
`(OCGA), in 6 years: Breach of Written Contract, O.C.G.A. § 9-3-24, 4 years: Breach
`
`of Oral Contract, O.C.G.A. § 9-3-26 and 4 years: Actions on Open Account, O.C.G.A.
`
`§ 9-3-25; 1 or 4 years depending on circumstances: Fraudulent Transfers, O.C.G.A. §
`
`18-2-79; Scope of Equity Jurisdiction over Matters of Account, O.C.G.A. § 23-2-70 – as
`
`Plaintiff/Petitioner has claimed in his counter-claims (Exhibit-2) in the District Court
`
`case and also in Appeal (Exhibit-1).
`
`27. If the TTAB will not cancel Application proceedings, the TTAB is requested to at least
`
`suspend proceedings for this Trademark Application No. 85684016, Opposition
`
`Number: 91215293, for word mark 'www.bydesignfurniture.com', until final decisions
`
`have been rendered by at United States Appellate Court, Eleventh Circuit, Case Number
`
`13-15309-AA and any final decisions by the US District Court Northern District of
`
`Georgia, Case:1:12-cv-03198-TWT.
`
`9 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`Respectfully submitted,
`
`This Monday, April 28, 2014.
`
`By: Plaintiff/Petitioner
`
`Monosij Dutta-Roy
`
`923 Peachtree St., Unit 829
`
`Atlanta, GA 30309
`
`Mobile: +1 (404) 664-3605
`
`Email: monosij@gmail.com
`
`10 / 11
`
`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
`
`APR. 28, 2014
`
`

`
`Opp. Number: 91215293: Serial No.: 85350874: Word Mark: www.bydesignfurniture.com
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Mr. MONOSIJ DUTTA-ROY
`
`923 Peachtree St., Unit 829, Atlanta, GA 30309.
`
`Plaintiff/Petitioner Dutta-Roy..
`
`vs.
`
`JYSK BED'N LINEN, d/b/a By Design,
`
`as successor to
`
`Quick Ship Holding, Inc., d/b/a By Design.
`
`Defendant/Applicant Jysk.
`
`US Application Serial No.: 85684016
`
`Word Mark:
`
` WWW.BYDESIGNFURNITURE.COM
`
`Monday, April 28, 2014.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused a copy of ‘Plaintiff/Petitioner DUTTA-ROY’s REPLY TO
`
`Defendant/Applicant'S MOTION FOR DISMISSAL OF OPPOSITION IN CANCELLATION
`
`/ SUSPENSION OF PROCEEDINGS’ to Defendant/Applicant to be served upon
`
`Defendant/Applicant by copies of the same to be sent to Defendant's counsel of record and other
`
`parties herein named, by depositing a copy of same either by email OR in an envelope, postage
`
`pre-paid, and forwarding through the United States Postal Service addressed as follows:
`
`Jonathan H. Fain, Esq.
`
`Ashutosh Joshi, Esq.
`
`Jonathan H. Fain & Associates, PC
`
`The Joshi Law Firm
`
`66 Lenox Pointe, NE, Atlanta, Georgia 30324
`
`66 Lenox Road, Atlanta, Georgia 30324
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`Email: jhf@jhfpc.us
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`Email: joshilawfirm@msn.com
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`11 / 11
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`PLAINTIFF'S REPLY TO: DEFENDANT'S MOTION to DISMISS
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`APR. 28, 2014
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`

`
`IN THE UNITED STATES COURT OF APPEALS
`
`FOR THE ELEVENTH CIRCUIT
`
` Appeal No.: 13-15309-AA
`
`Monosij Dutta-Roy (pro se)
`
`APPELLANT
`
`v.
`
`Jysk Bed'n Linen DBA By Design (counsels Fain and Joshi)
`
`APPELLEE
`
`Appeal is from:
`
`Jysk Bed'n Linen (Plaintif / Counter-Defendant)
`
`v.
`
`Monosij Dutta-Roy (Defendant / Counter-Claimant)
`
`
`
` District Court Case No.: 1:12-cv-03198-TWT
`
` APPELLANT'S INITIAL BRIEF
`
`APRIL 24, 2014
`
`

`
`This page intentionally left blank for notes.
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`

`
`Jysk v. Dutta-Roy United States Appellate Court Eleventh Circuit:
`
`United States District Court, Northern District Of Georgia, Docket Number:
`
`1:12-cv-03198-TWT
`
`13-15309-AA
`
`CERTIFICATE OF INTERESTED PERSONS
`
`The people of interest are highlighted in bold and listed below as:
`
`1. The Honorable Thomas W. Thrash Jr.: US District Court Judge presiding
`
`case.
`
`2. Mr. Monosij Dutta-Roy, pro se1, Defendant/Counter-Claimant/Appellant:
`
`3. Jysk Bed'n Linen, based out of Denmark,
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`Plaintiff/Counter-Defendant/Appellee; M ovant on Summary Judgment,
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`is represented as follows:
`
`4. Mr. Kjell B. Bratengen, Employee of Appellee Jysk, original owner of
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`Quick Ship Holding DBA By Design, sold to Jysk Bed'n Linen in 2006.
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`5. Mr. Jonathan Fain, Counsel for Appellee Jysk.
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`6. Mr. Ashutosh Joshi: Counsel for Appellee Jysk.
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`7. Ms. Shashi Sonnad: Employee of Appellee Jysk.
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`8. Mr. Peder Sorensen: Employee of Appellee Jysk.
`
`1 Convention used: DN indicates Docket Number; Aff. indicates Affidavit; pg. indicates Page Number; li.
`Indicates Line Number; para. indicates Paragraph; Ex. indicates Exhibit Number; Ad indicates Addendum,
`Exhibits / Addendums used interchangeably; if case number omitted, then entries refer to docket entries in
`Dist. Court case: 1:12-cv-03198-TWT. When indicating two DNs separated by / as is DN 69 / 72 the first
`number is a Motion and second Response from Court.
`
`i / 90
`
`

`
`
`
`STATEMENT: ON
`
`
`
` ORAL ARGUMENTS AND
`
`
`
`
`
` DISCOVERY
`
`Appellant Dutta-Roy respectfully submits that if oral arguments are
`
`necessary and the Court needs to see the (1) tax records of BazaarWorks, LLC
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`and (2) backup of the development in the 6 CDs, described in this brief as part of
`
`the 4000 hours of work cited, they will be made available in person to Appellate
`
`Court.
`
`The Appellate Court is requested to note that Appellant submitted timely
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`Discovery to Appellee Jysk in (a) Request for Admissions, (b) Request for
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`Production of Documents, (c) Request for Continuing Interrogatories. However
`
`Appellant was denied the Discovery of the same from Appellee as he
`
`misinterpreted the response deadline on the filing. Appellant had filed for Compel2
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`Discovery (DN 54) of Appellee which was denied by Court (DN 67).
`
`The Discovery documents from Appellee, in the email communication of
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`Appellee Jysk's Bratengen, Sonnad, Sorensen, Scott Bell, other By Design
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`managers on the e-commerce development, between By Design, BazaarWorks
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`members, in the time period 1999 - 2005 – will show that a contract existed to
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`develop the e-commerce site for By Design by Appellant's BazaarWorks, LLC.
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`2
`
`In Jysk v. Dutta-Roy 1:12-cv-03198-TWT, Appellant Dutta-Roy was denied Motion to Join BazaarWorks, LLC
`DN 07, Mediation DN 37, Compel Discovery DN 54.
`
`ii / 90
`
`

`
`
`
`STATEMENT: ON
`
`
`
` REQUEST FOR COUNSEL
`
`Appellant Dutta-Roy respectfully submits that pursuant to Federal Rules of
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`Appellate Procedure (FRAP) 31-6 et. al. with regard to Appointment of Counsel
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`for pro se litigants, he submitted Motion for Appointment of Counsel from
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`Appellate Court on JANUARY 02, 2014, and again on MARCH 27, 2014.
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`However, Appellant has not been appointed counsel yet.
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`While Appellant is moving forward with his brief with the utmost
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`consideration for the FRAP Rules, Appellate Court is requested to give
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`consideration to Appellant's filing pro se, in any omissions or neglect in
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`formatting, design, structure in the content of this document.
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`Although Appellant has withdrawn his Motion for Appointment of Counsel,
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`Appellant continues to urge consideration for appointment of counsel to Appellant
`
`by Court as it best deems necessary given complexity of case. This is only if Court
`
`believes he will need to be better represented for further submissions for
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`Responses, Oral Arguments, any Discovery filings and / or Mediation, that may
`
`become incumbent upon Appellant.
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`iii / 90
`
`

`
`
`
`Table Of Authorities: Relevant Case Citations
`
`
`
`Jysk Bed'n Linen DBA By Design v. Monosij Dutta-Roy, Civil Action File No.:
`
`1:12-cv-03198-TWT.................................................................................................1
`
`Schmidheiny v. Weber, 164 F.Supp.2d 484, 487 (E.D. Pa. 2001)...........................11
`
`Ron Paul vs. RonPaul.org (2013)...........................................................................40
`
`Webpass, Inc. v. Paul Breitenbach (2010)..............................................................40
`
`Urban Logic, Inc. v. Urban Logic..........................................................................40
`
`Peter Holland (2009)..............................................................................................40
`
`David Robinson v. Brendan (2008)........................................................................40
`
`Decal v. Gregory Ricks (2008)...............................................................................40
`
`Hero v. The Heroic Sandwich (2008).....................................................................40
`
`Poker Host Inc. v. Russ “Dutch” Boyd (2008).......................................................40
`
`FCC Fomento de Construcciones y Contratas v “FCC.COM” (2007).................40
`
`Liquid Nutrition v. liquidnutrition.com (2007).......................................................40
`
`Rohl, LLC v. ROHL SA (2006)...............................................................................40
`
`Her Majesty the Queen (Elizabeth II) v. Virtual Countries, Inc.............................40
`
`Deutsche Welle v. DiamondWare (2000)................................................................41
`
`Sallen v. Corinthians Licenciamentos LTDA, 01-1197 (1st Cir. Dec. 5, 2001)......63
`
`MTV Networks v. Adam Curry................................................................................67
`
`Donald J. Trump v. J. Taikwok Yung No. 1:2011-cv-01413....................................69
`
`iv / 90
`
`

`
`
`
`Table of Authorities: Appeal Citations
`
`
`
`Centurion Air Cargo, Inc. v. United Parcel Service. Co........................................24
`
`Celotex Corp . v. Catrett.........................................................................................24
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp.................................................24
`
`Allen v. Tyson Foods, Inc........................................................................................25
`
`Rice Lamar v. City of Fort Lauderdale...................................................................25
`
`v / 90
`
`

`
`Laws of the United States of America
`
`28 U.S.C. § 1291....................................................................................................15
`
`Lanham Act, 15 U.S.C. § 1051, et. Seq..........................................................8,10,65
`
`Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1115(d).........1,8,10,65
`
`ACPA................................................................................1,2,5,11,26,29,31,33,35,39
`
`Cyber Squatting, 15 U.S.C. § 1125(d).......................................................9.10,39,65
`
`Federal Trademark Dilution Act, 15 U.S.C. § 1125(c)..................................8,10,65
`
`Trademark Dilution, 15 U.S.C. § 1125(c)..................................................9,11,39,65
`
`Unfair Competition, 15 U.S.C. § 1125(a)....................................1,2,8,9,10,11,39,65
`
`Unfair Competition.......................................................................................10,39,65
`
`Common Law Unfair Competition..........................................................1,9,11,39,65
`
`Conversion under the Common Law........................................................................8
`
`Common Law Conversion..........................................................................9,11,39,65
`
`vi / 90
`
`

`
`Laws of the State of Georgia
`
`Official Code of Georgia Annotated.........................................................................4
`
`OCGA.......................................................................................................................4
`
`Breach of Written Contract, O.C.G.A. § 9-3-24........................................9,44,57,65
`
`Actions on Open Account, O.C.G.A. § 9-3-25...........................................9,45,57,66
`
`Breach of Oral Contract, O.C.G.A. § 9-3-26............................................9,45,57,66
`
`Fraudulent Transfers, O.C.G.A. § 18-2-79...............................................9,45,57,66
`
`Scope of Equity Jurisdiction over Matters of Account, O.C.G.A. § 23-2-70
`
`...................................................................................................................9,45,57,66
`
`vii / 90
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`

`
`Table of Contents
`
`CERTIFICATE OF INTERESTED PERSONS.........................i
`
`STATEMENT: ON ORAL ARGUMENTS AND DISCOVERY...............ii
`STATEMENT: ON REQUEST FOR COUNSEL.......................iii
`
`Table Of Authorities: Relevant Case Citations............iv
`Table of Authorities: Appeal Citations....................v
`Laws of the United States of America.....................vi
`Laws of the State of Georgia............................vii
`
`STATEMENT: ON JURISDICTION..............................xii
`
`STATEMENT OF THE ISSUES...............................1
`
`I. On the issues of Claims by Appellee Jysk in: Unfair Competition, Cyber
`
`Squatting, Trademark Dilution, Common Law Unfair Competition....................1
`
`II. On the issues of Counter-Claims by Appellant Dutta-Roy in: Breach of
`
`Contract, Unjust Enrichment, Quantum Meruit, Breach of Fiduciary Duty and
`
`Accounting, Equitable Accounting, Claim for Attorneys Fees and Reverse-
`
`Cybersquatting.....................................................................................................3
`
`III. On the issues of justice and adjudication in denying Discovery to Appellant,
`
`in finding against Appellant solely on Appellee's affidavits, without any
`
`supporting evidence, in not enforcing the purchase agreement for submission in
`
`Court, in turning over of domain 'bydesignfurniture.com' to Appellee................6
`
`viii / 90
`
`

`
`STATEMENT OF THE CASE.................................7
`
`A. The Course of Proceedings and Disposition in Jysk v. Dutta-Roy District
`
`Court Case: 1:12-cv-03198-TWT, SEPTEMBER 12, 2012..................................8
`
`B. The Initial History of the Circumstances and the Facts of the Matter...........14
`
`C. The Subsequent History of the Circumstances and the Facts of the Matter.. 22
`
`D. Standard of Review.................