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
`ESTTA649486
`ESTTA Tracking number:
`01/12/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91219307
`Defendant
`CALEB R. SUTTON
`WILLIAM D KIESEL
`ROY KIESEL FORD DOODY & THURMON APLC
`9100 BLUEBONNET CENTRE BLVD STE 100
`BATON ROUGE, LA 70809-2985
`
`wdk@roykiesel.com;blg@roykiesel.com
`Opposition/Response to Motion
`Russel O. Primeaux
`russel.primeaux@keanmiller.com, pamela.baxter@keanmiller.com,
`tracey.langston@keanmiller.com, ipmailbox@keanmiller.com
`/RusselOPrimeaux/
`01/12/2015
`2015_01_12 Opposition to Opposer_s Motion to Suspend For Civil Ac-
`tion.PDF(297016 bytes )
`ExhibitA.pdf(47981 bytes )
`ExhibitB.pdf(134319 bytes )
`ExhibitC.pdf(80442 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DUCKS UNLIMITED, INC.,
`
`Opposer,
`
`V-
`
`Opposition No.: 91219307
`
`CALEB R SUTTON»
`
`Serial No.: 86299132
`
`Applicant.
`
`OPPOSITION TO OPPOSER’S MOTION TO SUSPEND FOR CIVIL ACTION
`
`COMES NOW, Applicant, Caleb R. Sutton (hereinafter, “Sutton”), who opposes the
`
`Motion to Suspend for Civil Action, filed by Opposer, Ducks Unlimited, Inc. (hereinafter,
`
`“Ducks Unlimited”) on December 29, 2014 and served by first—c1ass mail on December 30,
`
`2014, and who respectfully requests that this honorable Board deny Ducks Unlimited’s Motion
`
`for the reasons included herein. As Opposer served its motion via first-class mail, the time period
`
`for Sutton to respond to the motion is 20 days from the date of service.1 Therefore, Sutton has
`
`until January 19, 2015 to respond to Opposer’s motion.
`
`LAW AND ARGUMENT
`
`Ducks Unlimited alleges that the civil action pending before the United States District
`
`Court for the Western District of Tennessee2 (hereinafter, the “Civil Action”), which Ducks
`
`Unlimited initiated the same day as it filed this opposition proceeding, contains essentially the
`
`I TBMP § 502.02 and 37 CFR § 2.l27(a) provide that a response brief be filed within 15
`days from the date of service of a motion. TBMP § 5 02.02(a) and 37 CFR § 2.119(b) and (c)
`further provides that “[i]f service is made by first class mail, ‘express mail’ or overnight courier,
`additional time (5 days) is provided to take action.”
`
`2 The Civil Action is Exhibit A to Ducks Unlimited’s Motion to Suspend for Civil Action.
`
`5265148_l
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`

`
`same allegations asserted in this opposition. However, Ducks Unlimited fails to consider that the
`
`Civil Action contains an additional party, Boondux, LLC. Further, in this opposition, Ducks
`
`Unlimited alleges that there is a likelihood of confusion as to “at least one” of Ducks Unlimited’s
`
`registered marks and further states that Ducks Unlimited has marks in Classes 16 and 25.3 The
`
`Civil Action does not include any allegations as to Ducks Unlimited’s marks in Classes 16 and
`
`25.
`
`The Trademark Trial and Appeal Board (hereinafter, the “TTAB”) has held that “the
`
`permissive language of Trademark Rule 2.117(a) (‘proceedings
`
`may be suspended
`
`‘)
`
`makes clear that suspension is not the necessary result in all cases.” Boyds Collection, LTD v.
`
`Herrington & Company, 65 U.S.P.Q.2d 2017 at *2 (TTAB 1/16/2013), 2013 WL 152427. In
`
`Boyds Collection, while the TTAB noted that the civil action may have a bearing on the case
`
`because it involves the same parties and the same marks and it is “generally the Board’s policy to
`
`suspend when the parties are engaged in such a civil action,” the TTAB declined to suspend the
`
`opposition. Id. at *2. Further, in American Airlines, Inc. v. American Road Warriors, LLC DBA
`
`RoadWarriorUSA.com4, which is attached hereto as Exhibit A,
`
`the TTAB stated that
`
`“[s]uspension of a Board proceeding is solely within the discretion of the Board.” 2013 WL
`
`5407295 at *1 (TTAB 2013). The TTAB also held that “[a]11 motions to suspend, regardless of
`
`circumstances
`
`are subject to the ‘good cause’ standard.” Id. at *1, quoting, National Football
`
`League v. DNHManagemenI LLC, 85 U.S.P.Q.2d 1852, 1855, n.8 (TTAB 2008). Here, there are
`
`3 See, Notice of Opposition, Introductory Paragraph and paragraph 8. By including a
`reference to Ducks Unlimited’s marks in Classes 16 and 25, Applicant does not concede that
`such marks are properly before the Board.
`
`4 See, TTAB § 101.03, which provides that decisions of the TTAB that are not listed as
`being “citable as precedent,” “precedent of the Board,” or “for publication in full” are not
`binding on the Board, but may be cited for whatever persuasive weight to which they may be
`entitled.
`
`5265148_1
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`

`
`additional parties present in the Civil Action and it is unclear whether Ducks Unlimited may be
`
`attempting to allege claims as to their marks in Classes 16 and 25 in this opposition, which
`
`claims are not present in the Civil Action. As there are different parties in the Civil Action other
`
`than those in this opposition and because different marks may be at issue in this opposition,
`
`Ducks Unlimited has failed to meet their burden of showing good cause for the granting of their
`
`Motion to Suspend for Civil Action. Therefore the TTAB should deny Ducks Unlimited’s
`
`Motion to Suspend for Civil Action.
`
`The cases cited by Ducks Unlimited also do not require that this opposition be suspended.
`
`In Whopper-Burger,
`
`Inc. v. Burger King Corporation, the TTAB had to decide whether to
`
`suspend a cancellation proceeding for a civil action pending in a federal district court. 171
`
`U.S.P.Q. 805 (TTAB 1971), 1971 WL 16554. The TTAB suspended the cancellation proceeding
`
`because the federal complaint also sought cancellation of the mark. Id. at *2. The TTAB noted,
`
`that because both the cancellation proceeding and the federal complaint sought cancellation of
`
`the mark at issue, “[t]here can be no doubt therefore that the outcome of the civil action will have
`
`a direct bearing on the question of the rights of the parties herein and may in fact completely
`
`resolve all issues.” Id. at *2. Unlike in Whopper-Burger, Ducks Unlimited has not sought to have
`
`Sutton’s application denied registration with the United States Patent and Trademark Office.
`
`Therefore, the resolution of the Civil Action will not resolve all issues and will not necessarily
`
`have a direct bearing on the question of the rights of the parties in this opposition.
`
`Ducks Unlimited also cites New Orleans Louisiana Saints LLC and NFL Properties LLC
`
`v. Who Daz‘?, Inc., 99 U.S.P.Q.2d 1550 (TTAB 2011), 2011 WL 3381380, as supporting its
`
`Motion to Suspend for Civil Action. However, as with Whopper-Burger, the Who Dar? case can
`
`be factually distinguished and does not mandate that the instant motion be granted. In Who Dar?
`
`526514s_1
`
`3
`
`

`
`there were cross—motions to suspend the opposition which were filed by both the opposer and the
`
`applicant. Id. at *1. The TTAB noted that both the opposer and the applicant sought to suspend
`
`the opposition based on the civil action. Id. at *3, n. 5. Therefore, both parties in Who Dat?
`
`requested suspension of the opposition. Here, Sutton does not wish that this opposition be
`
`suspended. Sutton desires this opposition to proceed because a trial schedule has already been
`
`issued, whereas, as of 12:00 pm Central Time on January 12, 2015, Sutton has yet to be served in
`
`the Civil Action.
`
`Additionally, any decision in the Civil Action likely would not have a preclusive effect
`
`on this opposition proceeding. In Empresa Cubana Del Tabaco v. Culbro Corporation, which is
`
`attached hereto as Exhibit B, the District Court for the Southern District of New York noted that
`
`the Federal Circuit, which reviews decisions made by the TTAB, “cautioned against applying a
`
`preclusive effect to federal court decisions in relation to trademark cancellation and opposition
`
`proceedings.” 478 F.Supp.2d 513, 522 (S.D.N.Y. 3/14/2007), citing, Mayer/Berkshire Corp. v.
`
`Berkshire Fashions, Inc., 424 F.3d 1229 (Fed.Cir. 2005); Jet, Inc. v. Sewage Aeration Sys., 223
`
`F.3d 1360 (Fed.Cir. 2000); Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1372
`
`(Fed.Cir. 2006) (citing 18B Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal
`
`Practice and Procedure § 4475, at 473-74 (2d ed. 2002)). The court in Empresa noted that the
`
`Federal Circuit “held that a claim for trademark infringement in federal court is based on a
`
`different set of facts than a cancellation petition before the TTAB and therefore cannot have a
`
`preclusive effect.” Id. at 522, citing, Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1363
`
`(Fed.Cir. 2000). The Empresa court further noted that “[i]n addition to involving different factual
`
`allegations, these different causes of action may also involve different proofs, burdens, and
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`5265148_1
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`

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`public policies.” Id. at 522, citing, Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d
`
`1229, 1232 (Fed.Cir. 2005).
`
`In Mayer/Berkshire, attached hereto as Exhibit C,
`
`the Federal Circuit stated that a
`
`trademark infringement action before a court does not automatically have preclusive effect on an
`
`opposition proceeding because the infringement action may not be based on the same
`
`transactional facts or “the facts relevant to infringement may not be sufficiently applicable to
`
`trademark registration to warrant preclusion.” 424 F.3d 1229, 1232 (Fed.Cir. 2005). The Federal
`
`Circuit further stated that “[t]hese different causes of action may involve different sets of
`
`transactional
`
`facts, different proofs, different burdens,
`
`and different public policies.
`
`Registrability is not at issue in infringement litigation, and although the likelihood of confusion
`
`analysis presents a ‘superficial similarity,’ differences in transactional facts will generally avoid
`
`preclusion.” Id. at 1233, citing, Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1364-65
`
`(Fed.Cir. 2000). The Federal Circuit also noted that the TTAB has explained that “in an
`
`opposition proceeding ‘a claim of infringement before the court and a claim of priority and
`
`likelihood of confusion before this Board are different claims.’” Id. at 1232, quoting, American
`
`Hygienic Labs, Inc. v. Tiflany & Co., 228 U.S.P.Q. 855, 857 (TTAB 1986); see also, In re
`
`Infinity Broadcasting Corp. ofDaZZas, 60 U.S.P.Q.2d 1214, 1218 (TTAB 2001); J.T. McCarthy,
`
`McCarthy on Trademark and Unfair Competition, § 32:82 at 32:143 (4th ed. 2004) (“A claim for
`
`infringement is not the same as an inter partes claim for opposition or cancellation against
`
`another’s registration of a mark”). As the Civil Action will likely have no preclusive effect on
`
`this opposition under the cases and TTAB decisions cited above, this honorable Board should
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`deny Ducks Unlimited’s Motion to Suspend for Civil Action.
`
`5265148_1
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`

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`CONCLUSION
`
`Applicant Caleb R. Sutton, for the reasons cited herein, respectfully prays that the
`
`Motion to Suspend for Civil Action, filed by Ducks Unlimited, be denied.
`
`Dated: January 12, 2015
`
`Respectfully submitted,
`
`fl/in
`
`Russel O. Primeaux, (#21989)
`William L. Caughman, III, (#22298)
`Tara M. Madison, (#29354)
`Pamela A. Baxter, (#31035)
`KEAN MILLER LLP
`
`400 Convention Street, Suite 700
`P. O. Box 3513 (7082l—3513)
`Baton Rouge, LA 70802
`Telephone: (225) 387-0999
`Facsimile: (225) 388-9133
`Email:
`
`russel.primeaux@keanmiller.com
`bill.caughman@keanmiller.com
`tara.madison@keanmiller.com
`pamela.baxter@keanmiller.corn
`
`Attorneysfor Applicant, Caleb R. Sutton
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and complete copy of the Opposition to
`Opposer’s Motion to Suspend for Civil Action has been served upon:
`
`Ekundayo Seton
`Wyatt, Tarrant & Combs, LLP
`500 West Jefferson Street, Suite 2800
`
`Louisville, KY 40202
`United States
`
`via U.S. Mail, postage prepaid, this 12th day of January, 2015
`
`M64
`
`Attorney for Applicant, Caleb R. Sutton
`
`6
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`5265148_1
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`

`
`AMERICAN AIRLINES, INC. v. AMERICAN ROAD..., 2013 WL 5407295...
`
`EXHIBIT A
`
`2013 WL 5407295 (Trademark Tr. & App. Bd.)
`
`THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
`
`Trademark Trial and Appeal Board
`
`Patent and Trademark Office (P.T.O.)
`
`AMERICAN AIRLINES, INC.
`v.
`AMERICAN ROAD WARRIORS, LLC DBA ROADWARRIORUSA.COM
`
`Opposition No. 91203536
`June 14, 2013
`
`*1 Before Seeherman, Lykos, and Adlin
`Administrative Trademark Judges
`
`By the Board:
`
`This case comes up on opposer's motion for summary judgment on its Section 2(d) claims of priority and likelihood of confusion,
`and applicant's motion to suspend the Board's decision on the motion for summary judgment until applicant obtains counsel.
`Both motions are contested.
`
`American Road Warriors, LLC DBA roadwarriorusa.com (hereafter ARW) seeks registration, pursuant to Trademark Act Sec.
`1(b), of the mark ROADWARRIORUSA.COM for:
`computer services, namely, creating an on-line community for registered users to participate in discussions,
`get feedback from their peers, form virtual communities, and engage in social networking featuring content,
`goods and services useful to business travelers; computer services, namely, creating an on-line community
`for registered users to network with other business travelers and to have access to content, goods and
`services for business travelers
`
`On January 25, 2012, American Airlines, Inc. (hereafter, American) filed a notice of opposition on the ground of likelihood
`of confusion, alleging that it has used the mark ROAD WARRIO since 2001 in connection with a contest which promotes
`travel and travel tips, and that it owns Registration No. 3614349 for the mark ROAD WARRIOR for “arranging and conducting
`contests and sweepstakes to promote travel incentive award programs.” On April 5, 2012, applicant, acting pro se, filed an
`answer denying the salient allegations of the notice of opposition.
`
`On October 31, 2012, the last day of the discovery period, opposer filed a motion for summary judgment and applicant filed
`a motion to compel. On December 28, 2012, the Board denied applicant's motion to compel for failure to comply with the
`Board's rules; recommended that applicant seek counsel; and suspended proceedings pending the disposition of opposer's motion
`for summary judgment, already fully briefed. On January 16, 2013, applicant filed a motion to suspend the Board's deciding
`opposer's motion for summary judgment.
`
`MOTION TO SUSPEND IS DENIED
`
`Suspension of a Board proceeding is solely within the discretion of the Board. The Other Telephone Company v. Connecticut
`National Telephone Company, Inc., 181 USPQ 779, 782 (Comm'r Pat. 1974). “All motions to suspend, regardless of
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`

`
`AMERICAN AIRLINES, INC. v. AMERICAN ROAD..., 2013 WL 5407295...
`
`circumstances . . . are subject to the ‘good cause’ standard.” National Football League v. DNH Management LLC, 85 USPQ2d
`1852, 1855, n. 8 (TTAB 2008) citing Trademark Rule 2.117(c). In support of its motion to suspend, applicant contends that its
`interests may not be served without legal representation, and suspension is appropriate while applicant reconfigures its corporate
`structure and business plan, accumulates funds to pay for legal representation, and searches for legal representation, though
`applicant “is not able at this time to predict a meaningful completion date for that search... .” Opposer points out that applicant's
`reasons for seeking suspension are irrelevant to the fully briefed summary judgment, and argues that applicant has not provided
`good cause for any suspension, let alone a suspension of indefinite length.
`
`*2 Because obtaining representation would not alter the fact that the motion for summary judgment has been fully briefed,
`the Board agrees that applicant has not presented good cause to suspend decision on the motion. Applicant is mistaken in any
`assumption that obtaining representation would ensure that applicant could file a substitute, and presumably more persuasive,
`response to the summary judgment motion. The motion for summary judgment had been pending for almost three months at
`the time applicant filed its motion to suspend, and in the more than four months intervening since applicant filed its motion
`to suspend, applicant has not supplemented its motion with any indication that its efforts to obtain counsel have begun.
`Accordingly, applicant's motion to suspend decision on the motion for summary judgment is denied.
`
`MOTION FOR SUMMARY JUDGMENT IS DENIED
`
`Summary judgment is an appropriate method of disposing of cases that present no genuine disputes of material fact, thus leaving
`the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(a). The evidence must be viewed in a light favorable to the
`nonmoving party, and all justifiable inferences are to be drawn in the nonmovant's favor. Lloyd's Food Products, Inc. v. Eli's,
`Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v. The Great American Music Show, Inc., 970
`F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
`
`in applicant's mark
`incorporated
`its mark ROAD WARRIOR has been wholly
`that
`Here, opposer contends
`ROADWARRIORUSA.COM; that the additional top level domain name .COM has no trademark significance; that the addition
`of the geographically descriptive term USA to another's mark is insufficient to differentiate the marks; that opposer's and
`applicant's services both center on information for travelers, are offered to the identical consumers, and travel in the identical
`channels of commerce, and thus that there is a likelihood of confusion. Opposer has submitted the declaration of its attorney
`Andrew Avsec, accompanied by a status and title copy of opposer's pleaded registration, and applicant's discovery responses
`stating that applicant is a general service travel agency. Opposer also relies on the declaration of Paul Schaefer, its Director of
`Print and Digital Projects, with averments and voluminous exhibits regarding the promotion of opposer's ROAD WARRIOR
`contest for sharing business travel tips, held every year since 2001 and promoted through opposer's inflight magazine, website
`and social media.
`
`Applicant contends that the term ROAD WARRIOR is weak, as shown by the use of the term as a trademark for various
`travel-related goods and services; that the differences between ROAD WARRIOR and ROADWARRIORUSA.COM ensure
`that consumers would not assume any connection between the parties; that opposer is primarily a travel agency and does
`not complete with applicant's commercial airline services; and that inasmuch as opposer's evidence shows declining ROAD
`WARRIOR contest entries, opposer's use and promotion has not strengthened consumer recognition of the ROAD WARRIOR
`mark. Applicant submits no evidence in support of its arguments.
`
`*3 In view of opposer's ownership and submission into evidence of a valid and subsisting registration for its pleaded mark,
`there is no issue with respect to opposer's standing and priority. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55
`USPQ2d 1842, 1844 (Fed. Cir. 2000) (party's ownership of pleaded registration establishes standing); King Candy Co., Inc. v.
`Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) (priority not at issue where opposer pleads registration
`the validity of which is unchallenged).
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`

`
`AMERICAN AIRLINES, INC. v. AMERICAN ROAD..., 2013 WL 5407295...
`
`Notwithstanding applicant's failure to present any evidence in support of its arguments regarding likelihood of confusion, 1 we
`are constrained in considering a motion for summary judgment to view the evidence in a light favorable to applicant as the
`non-moving party, and to draw all justifiable inferences in applicant's favor. Under this standard, we find that opposer has not
`sustained its burden of establishing the absence of a genuine dispute of material fact. There are, at a minimum, genuine disputes
`remaining for trial relating to the similarities between the parties' services and the strength of opposer's mark.
`
`Opposer's motion for summary judgment is granted in part as to standing and priority based solely on the registration and the
`services recited in the registration, and is denied as to the claim of likelihood of confusion. 2
`
`Proceedings herein are resumed, 3 and dates are reset as follows:
`
`CLOSED
`Discovery
`
`
`7/20/2013
`Plaintiff's Pretrial Disclosures
`
`
`9/3/2013
`Plaintiff's 30-day Trial Period Ends
`
`
`9/18/2013
`Defendant's Pretrial Disclosures
`
`
`11/2/2013
`Defendant's 30-day Trial Period Ends
`
`
`11/17/2013
`Plaintiff's Rebuttal Disclosures
`
`
`12/17/2013
`Plaintiff's 15-day Rebuttal Period Ends
`
`
`In each instance, a copy of the transcript of testimony, together with copies of documentary exhibits, must be served on the
`adverse party within thirty days after completion of the taking of testimony. Trademark Rule 2.125.
`
`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only upon request filed
`as provided by Trademark Rule 2.129.for summary judgment on the issue of likelihood of confusion are denied.
`
`2
`
`Footnotes
`1
`Applicant is encouraged to seek legal representation to ensure that evidence supporting its position is submitted (in proper form)
`at trial.
`Although we have only mentioned a few genuine disputes of material fact in this decision, this is not to say that these are all the only
`disputes that would necessarily be at issue for trial. If opposer wants to rely on its common law rights for services outside those listed
`in the registration, it would have to prove prior use of the mark for those services. The parties should note that evidence submitted in
`support of or in opposition to a motion for summary judgment is of record only for consideration of that motion. Any such evidence
`to be considered at final hearing must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co.
`v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
`In view of the limited disputes remaining, the parties should consider agreeing to resolve this case via the Board's Accelerated Case
`Resolution (“ACR”) procedure, which provides a flexible, inexpensive and simplified means of resolving Board cases. Applicant,
`currently pro se, may benefit from the more informal procedures for introducing evidence which apply to most ACR cases. The
`parties are encouraged to jointly contact the interlocutory attorney assigned to this case [Richard Kim at 571-272-7326] to discuss
`the possibility of ACR.
`
`3
`
`2013 WL 5407295 (Trademark Tr. & App. Bd.)
`
`End of Document
`
`© 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`

`
`Empresa Cubana Del Tabaco v. Culbro Corp., 478 F.Supp.2d 513 (2007)
`
`EXHIBIT B
`
`Yellow Flag - Negative Treatment
`Motion for Relief from Judgment Granted by
`Empresa Cubana del
`Tabaco v. Culbro Corp.,
`S.D.N.Y., November 19, 2008
`
`
`
`[6] issue of whether Court of Appeals's order in trademark
`KeyCite
`infringement action had preclusive effect in cancellation
`action before the TTAB was for PTO to decide.
`
`478 F.Supp.2d 513
`United States District Court,
`S.D. New York.
`
`EMPRESA CUBANA DEL TABACO
`d.b.a. Cubatabaco, Plaintiff,
`v.
`CULBRO CORPORATION and
`General Cigar Co., Inc., Defendants.
`
`No. 97 Civ. 8399(RWS).
`
` | March 14, 2007.
`
`Synopsis
`Background:
`Instrumentality of Cuban government,
`responsible for cigar sales, brought trademark infringement
`action against United States cigar maker using same
`trademark. Alleged infringer moved to amend earlier order
`to direct Patent and Trademark Office's (PTO) Trademark
`Trial and Appeal Board (TTAB) to dismiss manufacturer's
`pending petition for cancellation of alleged infringer's
`registrations of “COHIBA” and to dismiss manufacturer's
`pending application before the PTO for registration of
`“COHIBA,” or, in the alternative, to enter final judgment
`granting such relief under the Lanham Act.
`
`Holdings: The District Court, Sweet, J., held that:
`
`[1] alleged infringer's motion to amend earlier order was not
`timely;
`
`[2] District Court lacked ancillary jurisdiction to issue an
`order under the Lanham Act;
`
`[3] Court of Appeals's order precluded alleged infringer from
`raising new counterclaims on remand;
`
`[4] alleged infringer's motion for relief under the Lanham Act
`was not properly before the court;
`
`[5] issue of whether Cuban embargo barred manufacturer's
`registration application, and its petition for cancellation of
`alleged infringer's registrations, was for PTO to decide; and
`
`Motion denied.
`
`West Headnotes (13)
`
`[1]
`
`Federal Courts
`
`Rendition
`
`and entry of judgment as directed
`
`Order implementing the Court of Appeals's
`mandate, which remanded case to the District
`Court for entry of an order dismissing all
`remaining claims in Cuban cigar manufacturer's
`trademark infringement action against United
`States cigar maker, automatically became
`judgment of the District Court when entered in
`the District Court, for purposes of rule governing
`motions to alter or amend judgment, where the
`order did not require further proceedings, and
`it satisfied the separate document requirement
`for entry of judgment. Fed.Rules Civ.Proc.Rules
`58(a)(1), 59(e), 28 U.S.C.A.; U.S.Dist.Ct.Rules
`S.D.N.Y., Rule 58.1.
`
`Cases that cite this headnote
`
`[2]
`
`Federal Civil Procedure
`
`Time
`
`for instituting proceedings
`
`Alleged infringer's motion to amend order
`implementing the Court of Appeals's mandate,
`which remanded case to the District Court
`for entry of an order dismissing all remaining
`claims in Cuban cigar manufacturer's trademark
`infringement action, was not filed within 10 days
`after entry of the judgment, which occurred when
`order was entered in the District Court, and, thus,
`motion was not timely. Fed.Rules Civ.Proc.Rule
`59(e), 28 U.S.C.A.
`
`2 Cases that cite this headnote
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` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`

`
`Empresa Cubana Del Tabaco v. Culbro Corp., 478 F.Supp.2d 513 (2007)
`
`[3]
`
`Federal Civil Procedure
`
`Ancillary
`
`complaint or bill
`
`A postjudgment motion requesting alteration or
`amendment of the judgment but denominated a
`motion under a rule other than rule governing
`motions to alter or amend judgment is generally
`treated as having been made under rule
`governing motions to alter or amend judgment.
`Fed.Rules Civ.Proc.Rule 59(e), 28 U.S.C.A.
`
`Cases that cite this headnote
`
`[4]
`
`Federal Courts
`
`Motions or Proceedings
`
`jurisdiction
`lacked ancillary
`District Court
`to issue an order under the Lanham Act,
`directing Patent and Trademark Office's (PTO)
`Trademark Trial and Appeal Board (TTAB)
`to dismiss Cuban cigar manufacturer's pending
`petition for cancellation of alleged infringer's
`registrations of “COHIBA” and to dismiss
`manufacturer's pending application before the
`PTO for registration of “COHIBA,” where
`judgment had already been entered in the
`infringement action. Lanham Act, § 37, 15
`U.S.C.A. § 1119.
`
`Cases that cite this headnote
`
`[5]
`
`Federal Courts
`
`and incidental jurisdiction in general
`
`There are only two reasons for ancillary
`jurisdiction: (1) to permit disposition by a single
`court of claims that are, in varying respects
`and degrees, factually interdependent, and (2) to
`enable a court to function successfully, that is, to
`manage its proceedings, vindicate its authority,
`and effectuate its decrees.
`
`Cases that cite this headnote
`
`[6]
`
`Federal Courts
`
`Motion,
`
`and incidental jurisdiction in general
`
`Ancillary jurisdiction does not apply when the
`claims over which the court originally had
`jurisdiction have been resolved or dismissed.
`
`Cases that cite this headnote
`
`[7]
`
`Federal Courts
`
`and enforcement of judgment
`
`jurisdiction known
`type of ancillary
`The
`as “enforcement jurisdiction” is a creature
`of necessity applied only in extraordinary
`circumstances
`to enforce a valid
`federal
`judgment.
`
`Cases that cite this headnote
`
`Particular
`
`[8]
`
`Federal Courts
`
`as to pleading and parties
`
`Court of Appeals's order, which remanded case
`to the District Court for entry of an order
`dismissing all remaining claims in Cuban cigar
`manufacturer's trademark infringement action,
`precluded alleged infringer from raising new
`counterclaims on remand.
`
`Cases that cite this headnote
`
`Remedies
`
`Amendments
`
`[9]
`
`Trademarks
`
`Ancillary
`
`Multiple
`
`remedies or proceedings
`
`Alleged infringer's motion for relief under the
`Lanham Act directing Patent and Trademark
`Office's (PTO) Trademark Trial and Appeal
`Board
`(TTAB)
`to dismiss Cuban cigar
`manufacturer's pending petition for cancellation
`of alleged infringer's registrations of “COHIBA”
`trademark and to dismiss manufacturer's pending
`application before the PTO for registration of
`the same trademark was not properly before
`the District Court, in manufacturer's trademark
`infringement action against alleged infringer,
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`

`
`Empresa Cubana Del Tabaco v. Culbro Corp., 478 F.Supp.2d 513 (2007)
`
`where alleged infringer filed its motion after
`underlying claims had already been dismissed.
`Lanham Act, § 37, 15 U.S.C.A. § 1119.
`
`Cases that cite this headnote
`
`[10] Trademarks
`
`Alphabetical
`
`listing
`
`COHIBA.
`
`Cases that cite this headnote
`
`and Form of Remedy; Jurisdiction and
`Authority of Courts
`
`Relief under Lanham Act section governing
`power of court over registration is generally
`asserted as a counterclaim in federal court
`litigation. Lanham Act, § 37, 15 U.S.C.A. §
`1119.
`
`Cases that cite this headnote
`
`Nature
`Attorneys and Law Firms
`
`*515 Rabinowitz, Boudin, Standard, Krinsky & Lieberman,
`P.C., New York, NY, By: Michael Krinsky, David B.
`Goldstein, Christopher J. Klatell, for Plaintiff.
`
`Dla Piper Rudnick Gray Cary U.S. LLP, New York,
`NY, By: Andrew L. Deutsch, Joshua S. Sohn, Morgan &
`Finnegan, L.L.P., New York, NY, By: Harry C. Marcus, Scott
`Greenberg, for Defendants.
`
`[11] Trademarks
`
`remedies or proceedings
`
`Issue of whether Cuban embargo barred Cuban
`cigar manufacturer's application for registration
`of “COHIBA” trademark, and its pending
`petition before the Patent and Trademark Office's
`(PTO) Trademark Trial and Appeal Board
`(TTAB) for cancellation of alleged infringer's
`registrations of same trademark, was for PTO to
`decide. 31 C.F.R. § 515.527.
`
`Cases that cite this headnote
`
`[12] Trademarks
`
`remedies or proceedings
`
`Issue of whether Court of Appeals's order in
`trademark infringement action had preclusive
`effect in Cuban cigar manufacturer's action
`before the Patent and Trademark Office's (PTO)
`Trademark Trial and Appeal Board (TTAB) for
`cancellation of alleged infringer's registrations of
`same trademark was for PTO to decide.
`
`Cases that cite this headnote
`
`[13] Trademarks
`
`Multiple
`
`SWEET, District Judge.
`
`OPINION
`
`Defendants General Cigar Co., Inc. and General Cigar
`Holdings, Inc. (collectively “General Cigar”) have moved
`under 15 U.S.C. § 1119 and the Court's ancillary jurisdiction
`to amend the order of May 15, 2006 (the “May 15 Order”) to
`direct the Patent and Trademark Office's Trademark *516
`Trial and Appeal Board (the “PTO's” and “TTAB”) to
`dismiss the pending petition of plaintiff Empresa Cubana
`del Tabaco (“Cubatabaco”) for cancellation of General
`Cigar's registrations of COHIBA and to dismiss Cubatabaco's
`pending application before the PTO for registration of
`COHIBA; or, in the alternative, to enter final judgment
`granting such relief.
`Multiple
`For the reasons set forth below, the motion is denied.
`
`The Parties
`Cubatabaco is a company organized under the laws of Cuba
`with its principal place of business in Havana, Cuba. Directly,
`and through its licensee, Habanos, S.A., Cubatabaco exports
`tobacco products from Cuba throughout the world, excluding
`the United States because of the current trade embargo. It
`was established by the Cuban government as an independent
`entity with its own assets and administration and is subject to
`the jurisdiction of a Cuban ministry.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
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`

`
`Empresa Cubana Del Tabaco v. Culbro Corp., 478 F.Supp.2d 513 (2007)
`
`Culbro has been merged into and is survived by General Cigar
`Holdings, Inc. General Cigar Holdings, Inc. is a Delaware
`corporation with its principal place of business in the county
`of New York. General Cigar Holdings, Inc. functions as a
`holding company for General Cigar Co., Inc.
`
`del Tabaco v. Culbro Corp., 399 F.3d 462, 471 (2d Cir.2005).
`The Court of Appeals did not, however, *517 reach the
`merits of this Court's decision. Cubatabaco's petition for
`rehearing and for rehearing en banc was denied on June 1,
`2005.
`
`General Cigar Co., Inc. is a Delaware corporation with
`its principal plac