Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA687949
`ESTTA Tracking number:
`08/05/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91219363
`Defendant
`Alrahib, Akrum
`TATUM HILMOE
`TATUM HILMOE PC
`515 S FLOWER ST FL 36
`LOS ANGELES, CA 90071-2221
`UNITED STATES
`thilmoe@hilmoelaw.com, aaron@cohnlawpa.com
`Other Motions/Papers
`Aaron M. Cohn
`aaron@cohnlawpa.com, thilmoe@hilmoelaw.com
`/Aaron M. Cohn/
`08/05/2015
`Response to SWI Motion to Join 08 0515.pdf(317902 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Serial Number: 86/237,505
`Filed on: November 17, 2014
`For the Mark: Molly
`Published in the Official Gazette July 29, 2014
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`___________________________________
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`Drew Estate Holding Company, LLC,
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`Applicant.
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`___________________________________ )
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`Opposer,
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`Akrum Alrahib,
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`Opposition No. 91219363
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`RESPONSE OF APPLICANT IN OPPOSITION TO
`SWI-DE, LLC’S MOTION TO JOIN AND RE-CAPTION PROCEEDINGS
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`Applicant AKRUM ALRAHIB (“Mr. Alrahib”), by and through undersigned counsel,
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`hereby files this Response in Opposition to SWI-DE, LLC’s (“SWI”) Motion for Leave to Join
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`and Re-Caption Proceedings, which motion was filed on July 30, 2015.
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`Opposer in this action, Drew Estate Holding Company, LLC (“Drew”), filed this
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`Opposition Proceeding on November 17, 2014 based on its purported right to the mark FAT
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`MOLLY, which Drew claimed is confusingly similar to Applicant’s mark “Molly” for different
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`goods. SWI now seeks to join this proceeding – as a named opposer – based on Drew’s
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`assignment of the FAT MOLLY mark to SWI four-days after Drew filed this Proceeding.
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`For the following reasons, the Board should deny the motion and continue the proceeding
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`in the name of the assignor, Drew Estate Holding Company, LLC, as authorized by the
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`1
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`Trademark Board Manual of Procedure and applicable law. Any decision in this proceeding
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`will, as a matter of law, bind SWI-DE, LLC as the assignee of the FAT MOLLY mark. No
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`prejudice will result.
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`FACTUAL BACKGROUND
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`Opposer Drew and its apparent affiliate, Drew Estate LLC, sold their respective assets to
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`SWI pursuant to a Purchase and Sale Agreement (“Sale Agreement”) entered into on October 17,
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`2014. (See Recitals in Exhibit A to SWI’s Motion). 30-days after entering into that Sale
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`Agreement, Drew – not SWI – filed this Opposition Proceeding.
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`The nature and timing of the sale, including the terms of the Sale Agreement and related
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`transfer documents, bear directly on whether Drew sold and assigned the rights to the mark FAT
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`MOLLY prior to instituting this proceeding, and, thus, whether Drew had standing to institute
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`this proceeding in the first instance. It is possible, if not likely, that the sale of assets (including
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`the mark FAT MOLLY and associated good will) to SWI occurred before this proceeding was
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`instituted, thereby implicating Drew’s standing in this case.
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`For that reason, among others, Applicant sought discovery related to the sale of assets of
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`Drew and Drew Estate, LLC to SWI. However, Drew has thus far has denied Applicant any
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`substantive discovery responses or documents related to the sale. Drew has refused to produce
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`the Sale Agreement, among other things, and has not produced any other documents to date –
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`even though they were due about two weeks ago. Further, Drew’s Interrogatory responses were
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`cursory or simply non-responsive with respect to information regarding the sale to SWI. These
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`discovery issues are the subject of an ongoing dispute between the parties.
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`The implication from the denial of this discovery, however, is that Drew sold its
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`trademarks, including the FAT MOLLY mark, and associated good will, prior to instituting this
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`action. If that is, in fact, the case, Drew never had standing to bring this proceeding
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`(notwithstanding the fact that Drew filed its assignment with the USPTO after instituting this
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`proceeding).
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`Counsel for Applicant first raised the issue of standing as part of the parties’ discovery
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`dispute by e-mail dated July 24, 2015. (See Tab A, attached hereto (e-mail correspondence from
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`Applicant’s Counsel dated July 24, 2015 regarding disputed discovery issues)). Evidently in
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`response to that e-mail, SWI now seeks to join this action – after the close of discovery –
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`apparently in order to “fix” the issue related to Drew’s standing. That, Applicant contends, is not
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`permitted under applicable law.
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`The Board should maintain this action in the name of the original opposer, Drew, as it is
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`entitled to do under TBMP and applicable law, and any decision will be binding on Drew’s
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`assignee of the mark FAT MOLLY (SWI). Given that Drew and SWI have the same counsel, no
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`prejudice will result from denying the motion.
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`LEGAL ANALYSIS
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`The issue here involves Drew’s standing to bring this action in the first instance and,
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`thus, whether an assignee of Drew can be joined in this proceeding. The law is clear that if the
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`party instituting the proceeding lacks standing, no party may be joined.
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`With respect to general standing requirements, “a party may establish its standing to
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`oppose or petition to cancel by showing that it has a ‘real interest’ in the case, that is, a legitimate
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`personal interest in the outcome of the proceeding and a reasonable for its belief in damage.”
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`TBMP §303.03; see also, 15 U.S.C. §1063 (establishing the basis for bringing an opposition
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`proceeding, which includes the belief that a party will be damaged); Fed. R. Civ. P., Rule 17 (the
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`“real party in interest” must bring suit). Generally, a party that has assigned a mark prior to
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`3
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`instituting an action does not have standing. See also, Gaia Technologies, Inc. v. Reconversion
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`Technologies, Inc., 93 F.3d 774 (Fed. Cir. 1996) (reversing judgment, in part, because plaintiff
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`failed to prove ownership of the trademark at the time it initiated the lawsuit and therefore lacked
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`standing), amended on rehearing in part, 104 F.3d 1298 (Fed. Cir. 1996); see also, Jim Arnold
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`Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572, 42 USPQ2d 1119, 1123 (Fed.Cir.1997)
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`(holding that an assignor of patent lacked standing, because it had not succeeded in rescinding or
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`canceling its assignment in state court at the time it filed its complaint in federal court).
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`Further, as a matter of law, a party is not permitted to substitute in another party in order
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`to establish standing that did not exist at the outset. See Paradise Creations, Inc. v. UV Sales,
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`Inc., 315 F.3d 1304, 1309 (Fed. Cir. 2003) (holding, among other things, that standing is
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`determined at the commencement of a proceeding); Pressroom Unions–Printers League Income
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`Sec. Fund v. Continental Assur. Co., 700 F.2d 889, 893 (2d Cir.), cert. denied, 464 U.S. 845, 104
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`S.Ct. 148, 78 L.Ed.2d 138 (1983) (“if jurisdiction is lacking at the commencement of the suit, it
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`cannot be aided by the intervention of a plaintiff with a sufficient claim.”); Almeida v. Google,
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`Inc., No. C–08–02088 RMW, 2009 WL 3809808 at *2 (N.D.Cal. Nov.13, 2009) (“[W]here the
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`original named plaintiff lacks standing, a new plaintiff with standing cannot step in to save the
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`lawsuit from dismissal.”); Evenchik v. Avis Rent A Car Sys., LLC, No. 12-CV-00061 BEN DHB,
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`2013 WL 2301224, at *2 (S.D. Cal. May 24, 2013); Lans v. Gateway 2000, Inc., 84 F.Supp.2d
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`112, 115 (D.D.C.1999) (denying motion to amend to substitute party with standing to bring a
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`patent infringement claim to replace plaintiff who lacked standing), aff ‘d, 252 F.3d 1320
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`(Fed.Cir.2001) (citations and internal quotations omitted); Vianix Del. LLC v. Nuance Commc'ns,
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`Inc., 2009 WL 1364346 at *2 (D. Del. May 12, 2009) (denying plaintiff's motion for leave to
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`amend to substitute a party with standing where plaintiff lacked standing at the inception of the
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`case); In re Flash Memory Antitrust Litig., No. C 07-0086 SBA, 2010 WL 2465329, at *3 (N.D.
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`Cal. June 10, 2010) (same holding).
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`By seeking to join this proceeding, apparently in response to Applicant’s argument that
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`Drew may not have had standing to bring this action, SWI ostensibly seeks leave to amend to
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`substitute or join itself in this proceeding in order to establish standing where none may have
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`existed previously. That, quite simply, is not permissible. See case citations, supra.
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`Further, the fact that Drew was the registered owner of the trademark on the date it
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`commenced this proceeding, even though it assigned the mark to SWI four-days later, does not
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`conclusively establish ownership of the mark FAT MOLLY at the time this proceeding was
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`commenced. See 15 U.S.C. § 1057(b). A mark's registered status is only an evidentiary tool,
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`and the fact of registration does not affect the plaintiff's ultimate burden of proof. See Freedom
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`Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1182 n. 4 (11th Cir.), cert. denied, 474 U.S. 845
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`(1985). Any presumption in Drew’s favor should be considered rebutted at this time because
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`Drew entered a Sale Agreement, which sold all of its assets, on October 17, 2014, a month
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`before instituting this proceeding, and, meanwhile, Drew has denied Applicant all meaningful
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`discovery related to that sale of its assets to SWI.
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`Also, while the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
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`suggests an assignee may be joined in an inter partes proceeding, the TBMP does not make
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`joinder mandatory, and, indeed, it specifically contemplates that an action may be maintained
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`exclusively by the assignor even after an assignment. Specifically, TBMP §512.01 states in
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`relevant part:
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`Alternatively, if there has been an assignment of a mark that is the subject of, or is
`relied upon in, a proceeding before the Board, and the Board does not order that
`the assignee be joined or substituted in the proceeding, the proceeding may be
`continued in the name of the assignor.
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`See also, TBMP 124 (“any action with respect to the application or registration which
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`may or must be taken by the applicant or registrant may be taken by the assignee . . . .) (emphasis
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`added).
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`Further, the TBMP permits an assignee of a mark to join in a proceeding only “as may be
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`appropriate.” TBMP §512.01 (emphasis added). Joinder is inappropriate here, as it is
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`manifestly sought to avoid the issue of standing. As the case law cited above makes abundantly
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`clear, a party may not be joined to establish standing where none existed previously.
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`In addition, with regard to the cases cited by SWI in support of its motion to join and re-
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`caption, those cases are inapposite. They simply do not address the issue of standing. For
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`instance, in Drive Trademark Holding LP v. Inofin, 83 U.S.P.Q.2d 1433, 1434, n.2 (TTAB
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`2007), the Board simply acknowledged the substitution in the caption. Likewise, in Tonka Corp.
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`v. Tonka Tools, Inc., 229 U.S.P.Q.2d 857 n.1 (TTAB 1986), joinder was not indicated by the
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`Court to be a contested issue. And, in Western Worldwide Enterprises Group Inc. v. Qinqdao
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`Brewery, 17 U.S.P.Q.2d 1137, 1138 n.4 (TTAB 1990), there was substitution before the answer
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`was filed, which is permitted as a matter of right and has no bearing on the circumstances here.
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`Finally, SWI’s motion to join, and Drew’s notice of appearance of counsel filed on July
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`10, 2015, are from the same law firm, so there will be no prejudice to SWI by denying the
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`motion. Counsel for SWI and Drew are the same.
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`In light of the foregoing, the motion should be denied at this time while discovery is
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`pending on issues related to Drew’s standing to commence this proceeding.
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`6
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`WHEREFORE, for the forgoing reasons, SWI-DE, LLC’s motion to join and re-caption
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`Respectfully submitted,
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`COHN LAW P.A.
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`/Aaron M. Cohn/
`Aaron M. Cohn, Esq.
`Fla. Bar No. 95552
`Attorney for Applicant
`2699 S. Bayshore Dr., 7th Flr
`Miami, FL 33133
`Telephone: (786) 600-4655
`aaron@cohnlawpa.com
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`the pleading should be denied.
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`Dated: August 5, 2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing RESPONSE OF APPLICANT IN
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`OPPOSITION TO SWI-DE, LLC’S MOTION TO JOIN AND RE-CAPTION PROCEEDINGS
`was served on counsel for the Opposer and SWI-DE, LLC by e-mailing said copy, as agreed by
`the parties, on August 5, 2015 to the following e-mail addresses:
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`/Aaron M. Cohn/
`Aaron M. Cohn
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`pjphillips@lmiplaw.com
`dcl@lmiplaw.com
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`Dated: August 5, 2015
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`CERTIFICATE OF ELECTRONIC FILING
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`I hereby certify that the forgoing was filed electronically via the TTAB’s ESTTA online filing
`system on August 5, 2015.
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`/Aaron M. Cohn/
`Aaron M. Cohn
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`7
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`TAB A
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`TAB ATAB A
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`Cohn Law P.A. Mail - Re: FW: SWI-DE, LLC by Assignment (Drew Estate Holding) v. Akrum Alrahib
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`8/5/15, 4:57 PM
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`Aaron Cohn <aaron@cohnlawpa.com>
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`Re: FW: SWI-DE, LLC by Assignment (Drew Estate Holding) v. Akrum Alrahib
`1 message
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`Aaron Cohn <aaron@cohnlawpa.com>
`To: "Peter J. Phillips" <pjphillips@lmiplaw.com>
`Cc: "Donald C. Lucas" <dcl@lmiplaw.com>, "Jenny L. Stewart" <jstewart@lmiplaw.com>
`Bcc: Tate Hilmoe <thilmoe@hilmoelaw.com>, Aaron Cohn <aaron@cohnlawpa.com>
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`Fri, Jul 24, 2015 at 2:56 PM
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`Peter,
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`I left a message for you about issues with these discovery responses. Below is a summary of my message. If we are
`unable to reach an agreement on these issues by COB Tuesday, I will file to compel better responses and for
`production of the purchase and sale agreement, among other things. Please give me a call at your convenience this
`afternoon.
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`Here are the specific issues:
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`Document responses to RFP #1 and #3: These document requests are directly relevant to whether your client had
`standing to bring this opposition proceeding, among other things, as the agreement may establish that the underlying
`assets associated with the mark FAT MOLLY were sold prior to instituting this proceeding.
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`Interrogatory response #3: The response fails to identify the assets of the holding company that were sold to SWI-DE.
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`Interrogatory response #8: The response fails to explain why the mark was first transferred to Drew Estate LLC prior
`to transferring the mark to SWI-DE.
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`Interrogatory response ## 11, 12: These responses fail to identify the factual support for Opposer's own allegations.
`Opposer is not entitled to rely on documents to respond to these questions, and the Interrogatories are not
`"premature" -- they address the very basis for Opposer's position in this proceeding.
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`Regards,
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`Aaron
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`On Thu, Jul 23, 2015 at 10:37 PM, Aaron Cohn <aaron@cohnlawpa.com> wrote:
`Peter,
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`What is your availability for a call tomorrow? I would like to speak with you about some of these responses.
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`Regards,
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`Aaron
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`On Thu, Jul 23, 2015 at 7:04 PM, Peter J. Phillips <pjphillips@lmiplaw.com> wrote:
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`Dear Aaron,
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`Attached please find our responses to your discovery requests and our discovery requests to you.
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`Please note that the response to your interrogatories has been designated Commercially Sensitive in
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`https://mail.google.com/mail/u/1/?ui=2&ik=fb083f0bf6&view=pt&q=standing&qs=true&search=query&th=14ec16c6592dfbae&siml=14ec16c6592dfbae
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`Page 1 of 3
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`Cohn Law P.A. Mail - Re: FW: SWI-DE, LLC by Assignment (Drew Estate Holding) v. Akrum Alrahib
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`8/5/15, 4:57 PM
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`accordance with the TTAB’s form Protective Order, and is being furnished on the condition that such
`information will be limited to outside counsel only and retained experts. If you do not agree, or have
`any questions regarding such treatment, please contact me as soon as possible and do not distribute
`any further.
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`We are working on collecting the requested documents.
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`Best regards,
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`Peter J. Phillips
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`Lucas & Mercanti, LLP
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`30 Broad Street, 21st Floor
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`New York, NY 10004
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`Tel.: 212-661-8000 x122
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`Fax.: 212-661-8002
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`pjphillips@lmiplaw.com
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`
`
`This e-mail message and any documents accompanying it contain information that belongs to Lucas
`& Mercanti, LLP, and which might be confidential and/or legally privileged. The information is
`intended for the use of the individual(s) or entity(ies) named above. If you are not the intended
`recipient, you are hereby notified that any disclosure, copying, distribution or the taking of any action
`in reliance on the contents of this message and/or accompanying documents is strictly prohibited. If
`you have received this e-mail message in error, immediately notify us via return email or by
`telephone in the United States at 212 661-8000.
`
`--
`Cohn Law P.A.
`2699 S Bayshore Dr, 7th Flr
`Miami, FL 33133
`(786) 600-4655 (office)
`(415) 200-7667 (cell)
`www.cohnlawpa.com
`
`NOTE: This e-mail is from a law firm, Cohn Law P.A. (“Cohn Law”), and is intended solely for the use of the individual(s) to whom it is addressed. If you
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`believe you received this e-mail in error, please notify the sender immediately, delete the e-mail from your computer, and do not copy or disclose the
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`email to anyone else. If you are not an existing client of Cohn Law, do not construe anything in this e-mail as making you a client of Cohn Law unless
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`https://mail.google.com/mail/u/1/?ui=2&ik=fb083f0bf6&view=pt&q=standing&qs=true&search=query&th=14ec16c6592dfbae&siml=14ec16c6592dfbae
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`Page 2 of 3
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`

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`Cohn Law P.A. Mail - Re: FW: SWI-DE, LLC by Assignment (Drew Estate Holding) v. Akrum Alrahib
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`8/5/15, 4:57 PM
`
`--
`Cohn Law P.A.
`2699 S Bayshore Dr, 7th Flr
`Miami, FL 33133
`(786) 600-4655 (office)
`(415) 200-7667 (cell)
`www.cohnlawpa.com
`
`NOTE: This e-mail is from a law firm, Cohn Law P.A. (“Cohn Law”), and is intended solely for the use of the individual(s) to whom it is addressed. If you
`
`believe you received this e-mail in error, please notify the sender immediately, delete the e-mail from your computer, and do not copy or disclose the email
`
`to anyone else. If you are not an existing client of Cohn Law, do not construe anything in this e-mail as making you a client of Cohn Law unless the email
`
`contains a specific statement to that effect and do not disclose anything to Cohn Law in reply that you expect Cohn Law to hold in confidence. If you
`
`properly received this e-mail as a client, co-counsel, or retained expert of Cohn Law, you should maintain the contents of this email in confidence in order
`
`to preserve the attorney-client or work product privilege that may be available to protect confidentiality.
`
`https://mail.google.com/mail/u/1/?ui=2&ik=fb083f0bf6&view=pt&q=standing&qs=true&search=query&th=14ec16c6592dfbae&siml=14ec16c6592dfbae
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`Page 3 of 3