Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA774345
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`Filing date:
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`10/03/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91228881
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`Party
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`Correspondence
`Address
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`Defendant
`Hillstone Management, LLC
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`JERRY C HARRIS JR
`WICK PHILLIPS GOULD & MARTIN LLP
`3131 MCKINNEY AVENUE, SUITE 100
`DALLAS, TX 75204
`UNITED STATES
`jerry.harris@wickphillips.com, trademarks@wickphillips.com
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Other Motions/Papers
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`Jerry C. Harris, Jr.
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`jerry.harris@wickphillips.com, trademarks@wickphillips.com
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`/Jerry C. Harris, Jr./
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`10/03/2016
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`2016-10-03 Applicants Response to Motion to Suspend Opposition Proceed-
`ing.pdf(181118 bytes )
`Exhibit A - Opposers civil complaint.pdf(556449 bytes )
`Exhibit B - Notice of Opposition.pdf(106084 bytes )
`Exhibit C - First Extension.pdf(32723 bytes )
`Exhibit D - Second Extension.pdf(32542 bytes )
`Exhibit E - Answer to Notice Opposition.pdf(137759 bytes )
`Exhibit F - Hillstone Management LLCs Opposed Motion to Stay with Brief in
`Support.pdf(2745386 bytes )
`Exhibit G - Motion to Suspend.pdf(839150 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`OPPOSER,
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`In the Matter of U.S. Application Serial No. 86/730,033 for the mark HILLSTONE owned by
`Hillstone Management, LLC.
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`HILLSTONE RESTAURANT GROUP, INC. §
`OPPOSITION NO. 91228881
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`§
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`§
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`§
`SERIAL NO. 86/730,033
`§
`§ MARK: HILLSTONE
`§
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`§
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`§
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`v.
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`HILLSTONE MANAGEMENT, LLC
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`APPLICANT.
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`APPLICANT’S RESPONSE TO MOTION TO SUSPEND OPPOSITION PROCEEDING
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`In response to Opposer’s Motion to Suspend Opposition Proceeding (the “Motion to
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`Suspend”), Applicant hereby opposes the Motion to Suspend and hereby submits its Response to
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`Motion to Suspend Opposition Proceeding.
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`Applicant’s Response to Motion to Suspend Opposition Proceeding
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`Page 1 of 18
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT ......................................................................................3
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`I.
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`II.
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`FACTUAL BACKGROUND ............................................................................................5
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`III. ARGUMENTS AND AUTHORITIES .............................................................................8
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`A.
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`The Board Should Not Suspend This Proceeding ...............................................8
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`1.
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`2.
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`3.
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`The Decision of the Board will be Binding on the
`District Court .............................................................................................9
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`These are Unusual Circumstances .........................................................12
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`Applicant has Requested the District Court Stay its
`Action in view of the Opposition Proceeding ........................................15
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`IV. CONCLUSION ................................................................................................................16
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`I.
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`PRELIMINARY STATEMENT
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`Gamesmanship, abuse of process, and lack of diligence – Opposer should not be
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`rewarded for these behaviors or the unusual circumstances which precipitated, both, its initiation
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`of the Opposition Proceeding and its pending Motion to Suspend. Opposer should be subject to
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`the binding decision of the Board and not be allowed to simply walk away from its first choice of
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`forum.
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`Since at least February 9, 2016, Opposer (the owner of a federal registration for the word
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`“Hillstone” when used for “restaurant services”) purportedly investigated Applicant’s claims of
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`use of the Hillstone mark for its real estate management and rental services (uses which date
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`back to early 2012).
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`Finally, on July 11, 2016, one hundred and eighty-one days after the publication of
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`Applicant’s trademark application for the use of Hillstone in the real estate management and
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`rental services context, Opposer filed the subject Notice of Opposition asserting “priority and
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`likelihood of confusion” as a ground for opposition and also, interestingly, asserting “dilution by
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`blurring” under 15 U.S.C. § 1125(c) as a ground for dilution.
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`Applicant filed its Answer to the Notice of Opposition on August 8, 2016 (almost two
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`weeks before its due date of August 20). On September 13, 2016, over a month after Applicant
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`filed its Answer, Opposer filed a United States District Court Action in the Northern District of
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`Texas asserting Applicant’s use of Applicant’s Hillstone mark for real estate management and
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`rental services is “likely to cause confusion” with Opposer’s registered mark for “restaurant
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`services,” but did not assert a claim for “dilution by blurring” under 15 U.S.C. § 1125(c).
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`Instead, Opposer asserted that Applicant’s use of its Hillstone mark for real estate management
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`and rental services would likely “blur the distinctive quality” of Opposer’s federal registered
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`Hillstone mark for “restaurant services” under Texas state law. There can be only one
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`explanation for Opposer’s surreptitious filing strategy, dilatory gamesmanship.
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`Opposer could have filed its District Court action anytime between February 9, 2016 and
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`July 11, 2016 when Opposer had conducted its investigation regarding Applicant’s use of
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`Hillstone for property management and rental services. It didn’t. Even though the District Court
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`could have addressed all the issues presently raised in the District Court Action at any time from
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`February 9, 2016 to July 11, 2016, and could have canceled Applicant’s would-be registration
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`for its Hillstone mark, Opposer didn’t file its District Court Action. The reason is that Opposer
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`had to first prevent the registration of Applicant’s Hillstone mark to preserve its best, if not only,
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`opportunity to affect Applicant’s continued use of its Hillstone mark for real estate management
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`and rental services – Opposer’s Texas state law claim for dilution.
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`Opposer basically concedes that its Hillstone mark for “restaurant services” isn’t famous
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`under the rigorous provisions of 15 U.S.C. § 1125(c) by omitting any such claim in its District
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`Court complaint. However, Texas’ state dilution law’s provisions are not nearly as rigorous as
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`its federal counterpart. For example, Texas’ state dilution law allows a party alleging dilution to
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`define the scope of geographic boundary for fame – in the Opposer’s District Court Complaint
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`that scope could be as small as the Dallas area.
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`While the Texas’s dilution law’s standard for fame is certainly not as rigorous as that of
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`15 U.S.C. § 1125(c), 15 U.S.C. § 1125(c) certainly affects the Texas law. Specifically, 15
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`U.S.C. § 1125(c)(6) would bar Opposer’s Texas law dilution claim if Applicant’s use of
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`Hillstone in the real estate management and rental services were federally registered.
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`15 U.S.C. § 1125(c)(6) is the only reason Opposer initiated the Opposition Proceeding.
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`Now that Opposer has wasted this Board’s time and resources to preserve a right to bring
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`a state law claim it could have brought at any time over the past four years, and has caused
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`Applicant to expend significant time and resources in responding to the Opposition Proceeding,
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`Opposer wants to walk away from the Opposition Proceeding and start anew in another forum.
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`Opposer’s actions should not be rewarded. The Board should use its innate discretion to: 1)
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`reject Opposer’s gamesmanship, abuse of process, and lack of diligence; and 2) hold Opposer to
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`its first choice of forum for its challenge of Applicant’s use of its Hillstone mark for real estate
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`management and rental services. The Board should require Opposer to proceed with the
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`Opposition Proceeding.
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`II.
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`FACTUAL BACKGROUND
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`Applicant provides real estate property management services and has done so since 2011.
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`For example, Applicant manages apartment complexes in Texas, e.g., Hillstone at Prue Road
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`(San Antonio), Hillstone Ranch (San Antonio), Hillstone on Center (Arlington), Hillstone Trinity
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`Oaks (Benbrook), and Hillstone on the Trail (Benbrook).1
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`Applicant does not operate restaurants or provide restaurant services.
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`On August 19, 2015, Applicant filed U.S. Trademark App. Ser. No. 86/730,033 (the
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`“Real Estate Services Application”). Specifically, the Real Estate Service Application identifies
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`a single International Class of goods and services, Cl. 36, for registration.2 The Real Estate
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`Services Application describes the Cl. 36 services as “real estate management services; real
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`1 Opposer’s civil complaint, assigned Civil Action No. 3:16-cv-02624-D at ¶ 19 (the “District
`Court Complaint”), a file-stamped copy of which is attached hereto as Exhibit A.
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`2 U.S. Trademark App. Ser. No. 86/730,033.
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`estate management consultation; real estate services, namely, property management services for
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`apartment buildings; leasing of apartments; management of apartments; real estate services,
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`namely, rental, leasing, and management of commercial property, offices, and office space.”3
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`In 2008, Opposer was granted U.S. Trademark Reg. No. 3549950 (the “Restaurant
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`Services Registration”) for its Hillstone mark, for Cl. 43 with the description “restaurant
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`services.”4 The USPTO specifically states that Cl. 43 “does not include, in particular: rental
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`services of real estate such as houses, flats, etc., for permanent use (Cl. 36).”5
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`In 2010, Opposer began branding certain of its restaurants as Hillstone.6
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`There are only ten Hillstone-branded restaurants in the United States.7
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`On January 12, 2016, Applicant’s Real Estate Services Application published. 8
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`On February 9, 2016, Opposer filed a request for a 90 day extension of time to oppose the
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`Real Estate Service Application.9
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`On May 9, 2016, Opposer filed a request for a 60 day extension of time to oppose the
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`Real Estate Service Application.10
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`3 Id.
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`4 U.S. Trademark Reg. No. 3549950.
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`5 OFFICIAL GAZETTE of the UNITED STATES PATENT AND TRADEMARK OFFICE,
`1421 CNOG 3010 (Dec. 29, 2015) available at http://patentsgazette.uspto.gov/week52/OG/TOC
`CN/item-411.htm.
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`6 The District Court Complaint at ¶ 11.
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`7 Notice of Opposition at ¶ 2, attached hereto as Ex. B.
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`8 TRADEMARK OFFICIAL GAZETTE, January 12, 2016 at 6619 available at
`http://www.uspto.gov/web/trademarks/tmog/20160112_OG.pdf.
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`9 First 90 Day Request for Extension of Time to Oppose for Good Cause dated February 9, 2016
`(the “First Extension”), attached hereto as Ex. C.
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`10 60 Day Request for Extension of Time to Oppose Upon Consent dated May 9, 2016 (the
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`On July 11, 2016, Opposer filed its formal Notice of Opposition to the Real Estate
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`Services Application to initiate this proceeding (the “Opposition Proceeding”).11
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`On August 8, 2016, Applicant filed its Answer to the Notice of Opposition.12
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`On September 13, 2016, Opposer filed a civil action (the “District Court Action”) against
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`Applicant in the United States District Court for the Northern District of Texas (the “District
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`Court”) alleging federal trademark infringement, federal false designation of origin and unfair
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`competition, and state law trademark dilution and unfair competition.13
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`On September 19, 2016, the parties participated in the Opposition Proceeding’s required
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`discovery conference.
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`On September 19, 2016, Applicant filed a motion to stay the District Court Action (the
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`“Motion to Stay”).14
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`On September 19, 2016, Opposer filed its Motion to Suspend Opposition Proceeding.15
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`On September 27, 2016, in the Opposition Proceeding, Applicant served its Initial
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`Disclosures, First Set of Interrogatories, First Set of Requests for Production of Documents, and
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`First Set of Requests for Admission on Opposer.
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`To date, Opposer has not filed any response to the Motion to Stay filed by Applicant in
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`the District Court Action.
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`“Second Extension”), attached hereto as Ex. D.
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`11 Notice of Opposition.
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`12 Answer to Notice Opposition, attached hereto as Ex. E.
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`13 The District Court Complaint at ¶¶ 26-48.
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`14 Hillstone Management, LLC’s Opposed Motion to Stay with Brief in Support, a file-stamped
`copy of which is attached hereto as Exhibit F.
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`15 Motion to Suspend, attached hereto as Exhibit G.
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`Applicant’s responsive pleading to Opposer’s complaint in the District Court Action is
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`not due until October 4, 2016.
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`III.
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` ARGUMENTS AND AUTHORITIES
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`“Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action or another Board proceeding
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`which may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action or the other Board proceeding.”16
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`“Whether to suspend a Board proceeding pending the final determination of another
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`proceeding is within the discretion of the Board.”17
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`A. The Board Should Not Suspend This Proceeding
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`Applicant acknowledges that the Trademark Trial and Appeal Board Manual of
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`Procedure (the “TBMP”) provides:
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`To the extent that a civil action in a federal district court involves
`issues in common with those in a proceeding before the Board, the
`decision of the federal district court is often binding upon the
`Board, while the decision of the Board may not be binding upon
`the court.18
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`Applicant also acknowledges that TBMP § 510.02(a) provides:
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`Unless there are unusual circumstances, the Board will suspend
`proceedings in the case before it if the final determination of the
`other proceeding may have a bearing on the issues before the
`Board.19
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`16 37 C.F.R. § 2.117(a) (emphasis added).
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`17 Cmty. Trust Bancorp, Inc. v. Cmty. Trust Bank, Opposition No. 91194948, 2012 WL
`12517285, at *2 (Feb. 7, 2012).
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`18 Id. (emphasis added).
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`19 TBMP § 510.02(a) (emphasis added).
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`Applicant contends that the decision of the Board on the pending “likelihood of
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`confusion” ground would be binding on the District Court and that the facts underlying/causing
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`Opposer’s behaviors (coupled with said behaviors) in the Opposition Proceeding are the exact
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`“unusual circumstances” contemplated by the TBMP. As will be shown, for these reasons, the
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`Board should not suspend the Opposition Proceeding.
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`1. The Decision of the Board will be Binding on the District Court
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`As the United States Supreme Court recently opined:
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`The importance of registration is undoubtedly why Congress
`provided for de novo review of TTAB decisions in district court. It
`is incredible to think that a district court’s adjudication of
`particular usages would not have preclusive effect in another
`district court. Why would unchallenged TTAB decisions be
`different? Congress’ creation of this elaborate registration
`scheme, with so many important rights attached and backed up by
`plenary review, confirms that registration decisions can be
`weighty enough to ground issue preclusion.20
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`The Supreme Court ultimately held, “[s]o long as the other ordinary elements of issue
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`preclusion are met, when the usages adjudicated by the TTAB are materially the same as those
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`before the district court, issue preclusion should apply.”21, 22
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`Issue preclusion will apply to the Board’s decision in the Opposition Proceeding and be
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`binding on the District Court23 because the same parties, issues, and facts before the Board in the
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`20 B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1310 (2015) (emphasis added).
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`21 Id.
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`22 The only cases cited by Opposer in support of its Motion to Suspend are Arcadia Group
`Brands Ltd. v. Studio Moderna SA, 99 U.S.P.Q.2d 1134 (T.T.A.B. 2011) and The Toro Co. v.
`Hardigg Indus., Inc., 187 U.S.P.Q. 689 (T.T.A.B. 1975), see Motion to Suspend at 2, both of
`which pre-date the recent Supreme Court decision in B & B Hardware, Inc.
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`23 Taylor v. Sturgell, 128 S. Ct. 2161, 2171 (2008) (“Issue preclusion . . . bars ‘successive
`litigation of an issue of fact or law actually litigated and resolved in a valid court determination
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`Opposition Proceeding are present and at issue in the District Court Action; thus, “the usages
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`adjudicated by the TTAB are materially the same as those before the district court.”24
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`First, the parties are the same. Opposer initiated the Opposition Proceeding and is the
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`plaintiff in the District Court Action while Applicant is the defendant in the District Court
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`Action.25, 26
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`Second, the issues are the same. The Opposition Proceeding will adjudicate Applicant’s
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`registration of the Real Estate Services Application which requires the determination of the
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`likelihood of confusion that could result from Applicant’s use of the Hillstone mark for its
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`described real estate services in view of Opposer’s use its registered Hillstone mark for
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`“restaurant services.”27, 28
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`Third, the facts are the same. The determination of the likelihood of confusion for
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`essential to the prior judgment,’ even if the issue recurs in the context of a different claim.”
`citing New Hampshire v. Maine, 121 S.Ct. 1808 (2001)).
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`24 B & B Hardware, Inc., 135 S. Ct. at 1303 (“The general rule is that ‘[w]hen an issue of fact or
`law is actually litigated and determined by a valid and final judgment, and the determination is
`essential to the judgment, the determination is conclusive in a subsequent action between the
`parties, whether on the same or a different claim.’” (citing Restatement (Second) of Judgments §
`27, p. 250 (1980).
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`25 Notice of Opposition at 1.
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`26 District Court Complaint at ¶ 3.
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`27 The Opposition Proceeding will also require that Board determine whether Applicant’s use of
`its Hillstone mark dilutes Opposer’s registered Hillstone mark under 15 U.S.C. § 1125(c). See
`Notice of Opposition at ¶ 12. However, this issue is not before the District Court because
`Opposer did not assert a claim for dilution under 15 U.S.C. § 1125(c), so the District Court will
`not be tasked with determining whether Opposer’s mark meets the high bar of § 1125(c) fame.
`See District Court Complaint.
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`28 Instead of asserting a claim under 15 U.S.C. § 1125(c), in the District Court Action Opposer
`asserts a Texas state law dilution claim. See District Court Complaint at ¶ 40. Notwithstanding,
`the Board’s determination that Applicant’s Hillstone mark should federally register would
`completely bar the District Court’s Texas state law dilution claim. See 15 U.S.C. § 1125(c)(6).
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`purposes of registration is the same standard as likelihood of confusion for purposes of
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`determining infringement in the District Court Action.29 Thus, the same facts, Applicant’s use of
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`its Hillstone mark for real estate services and Opposer’s registered Hillstone mark for “restaurant
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`services,” will be used to determine the likelihood of confusion in both forums. In fact, the core
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`determination of the likelihood of confusion underlies and is determinative of Opposer’s District
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`Court Action claims for federal trademark infringement, federal false designation, and federal
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`and common law unfair competition -- which are all the claims at issue in the District Court
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`Action (except for the Texas state law dilution claim).30
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`Thus, if the Board determines that Applicant’s Real Estate Services Application should
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`register, Opposer would be precluded from arguing that the described services infringe
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`Opposer’s Hillstone mark.31 Conversely, if the Board rejects the registration of Applicant’s Real
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`Estate Services Application based on likelihood of confusion, Applicant would be precluded
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`from arguing that the described services do not infringe the Opposer’s Hillstone mark in the
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`29 B & B Hardware, Inc., 135 S. Ct. at 1307 (“The real question, therefore, is whether likelihood
`of confusion for purposes of registration is the same standard as likelihood of confusion for
`purposes of infringement. We conclude it is.”).
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`30 District Court Complaint, Exhibit A; see also US Risk Ins. Group, Inc. v. U.S. Risk Mgmt.,
`LLC, 3:11-CV-2843-M-BN, 2013 WL 4504754, at *19 (N.D. Tex. Aug. 20, 2013) (“Plaintiffs
`claims of false designation of origin, federal and common law unfair competition, and common
`law trademark infringement are all governed by the same likelihood of confusion inquiry used to
`determine whether trademark infringement has occurred. That is, if a likelihood of confusion
`exists, then the causes of action are sustainable, and, if there is no likelihood of confusion, the
`causes of action fail.”) (citing Scott Fetzer Co., 381 F.3d at 483–84 (holding that federal and
`Texas unfair competition and Texas trademark infringement are all governed by the same
`likelihood of confusion standard governing federal trademark infringement); Philip Morris USA
`Inc. v. Lee, 547 F.Supp.2d 667, 674 (W.D. Tex.2008) (“The elements of trademark infringement
`and false designation of origin are identical, and the same evidence will establish both claims.”)).
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`31 B & B Hardware, Inc., 135 S. Ct. at 1310 (“So long as the other ordinary elements of issue
`preclusion are met, when the usages adjudicated by the TTAB are materially the same as those
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`resumed District Court Action.32
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`Accordingly, because the parties will be precluded from arguing the Board’s
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`determination of likelihood of confusion issues in the District Court, the decision of the Board in
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`the Opposition Proceeding will be binding on the District Court.33
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`2. These are Unusual Circumstances
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`As indicated above:
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`Unless there are unusual circumstances, the Board will suspend
`proceedings in the case before it if the final determination of the
`other proceeding may have a bearing on the issues before the
`Board.34
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`The unusual circumstances surrounding the dispute between Opposer and Applicant
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`regarding Applicant’s use of its Hillstone mark for real estate services are: 1) after investigating
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`Applicant’s use of the Hillstone mark for real estate services for more than five months, Opposer
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`decided to initiate the Opposition Proceeding on July 11, 2016 and then, about two months later,
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`file the District Court Action; 2) Applicant had been using its Hillstone mark for real estate
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`services for more than four years before Opposer decided to file its District Court Action; 3)
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`there is only one claim asserted in the District Court Action that would not be subject to binding
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`issue preclusion based on the Board’s determination of likelihood of confusion -- a Texas state
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`law dilution claim; and 4) the Texas state law dilution claim would be completely barred by 15
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`before the district court, issue preclusion should apply.”).
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`32 Id.
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`33 Taylor v. Sturgell, 128 S. Ct. 2161, 2171 (2008) (“Issue preclusion . . . bars ‘successive
`litigation of an issue of fact or law actually litigated and resolved in a valid court determination
`essential to the prior judgment,’ even if the issue recurs in the context of a different claim.”
`citing New Hampshire v. Maine, 121 S.Ct. 1808 (2001)).
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`34 TBMP § 510.02(a) (emphasis added).
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`U.S.C. § 1125(c)(6) upon the Board’s determination that Applicant’s Real Estate Services
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`Application should register.
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`First, not only did Opposer wait until September 13, 2016 to file the District Court
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`Action, Opposer purposely waited until after it had initiated the Opposition Proceeding (after
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`having been allowed at least six months to investigate Applicant’s use of its applied-for and
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`published mark),35, 36, 37 to file the District Court Action. First filing an action in one forum;
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`second filing the action in another forum; then moving to stay the first filed action -- such
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`gamesmanship and abuse of process is an unusual circumstance.
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`Second, Applicant has been conspicuously using its Hillstone mark for real estate
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`services since at least February 24, 2012.38 As admitted by Opposer, Applicant has been using
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`its Hillstone mark for real estate services only six miles from Opposer’s Dallas-based Hillstone
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`restaurant.39 Yet, Opposer waited until September 13, 2016 (four and a half years after
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`Applicant’s first indicated use) to assert any type of infringement claim.40 Such a lack of
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`diligence on the part of an owner of a federally registered trademark is an unusual circumstance.
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`Third, except for the Texas state law dilution claim, all the claims asserted by Opposer in
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`the District Court Action, i.e., the federal trademark infringement claim, the federal false
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`designation claim, and the federal and common law unfair competition claims, are predicated on
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`35 The First Extension.
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`36 The Second Extension.
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`37 Notice of Opposition.
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`38 U.S. Trademark App. Ser. No. 86/730,033.
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`39 Notice of Opposition at ¶ 9.
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`40 District Court Complaint at ¶¶ 26-32.
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`Applicant’s Response to Motion to Suspend Opposition Proceeding
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`Page 13 of 18
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`a determination of “likelihood of confusion.”41 That the Board’s determination of likelihood of
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`confusion in the Opposition Proceeding can effectively address all the Lanham Act claims and
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`state common law unfair competition claims in the District Court Action is an unusual
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`circumstance.
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`Fourth, Opposer’s Texas state law dilution claim, while not predicated on a determination
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`of “likelihood of confusion,” would, however, be barred by 15 U.S.C. § 1125(c)(6) if the
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`Applicant’s Real Estate Services Application proceeded to registration.42 That the Texas state
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`law dilution claim, the only claim in the District Court Action with a standard that the Board
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`cannot decide in the Opposition Proceeding, would be barred by the Board’s decision to allow
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`Applicant’s Real Estate Services Application to register is an unusual circumstance.
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`Taken together, these “unusual circumstances” weigh heavily in favor of the Board
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`exercising its discretion to deny Opposer’s request to suspend the Opposition Proceeding.
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`41 District Court Complaint; see also US Risk Ins. Group, Inc. v. U.S. Risk Mgmt., LLC, 3:11-
`CV-2843-M-BN, 2013 WL 4504754, at *19 (N.D. Tex. Aug. 20, 2013) (“Plaintiffs claims of
`false designation of origin, federal and common law unfair competition, and common law
`trademark infringement are all governed by the same likelihood of confusion inquiry used to
`determine whether trademark infringement has occurred. That is, if a likelihood of confusion
`exists, then the causes of action are sustainable, and, if there is no likelihood of confusion, the
`causes of action fail.”) (citing Scott Fetzer Co., 381 F.3d at 483–84 (holding that federal and
`Texas unfair competition and Texas trademark infringement are all governed by the same
`likelihood of confusion standard governing federal trademark infringement); Philip Morris USA
`Inc. v. Lee, 547 F.Supp.2d 667, 674 (W.D.Tex.2008) (“The elements of trademark infringement
`and false designation of origin are identical, and the same evidence will establish both claims.”)).
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`42 15 U.S.C. § 1125(c)(6)(“The ownership by a person of a valid registration . . . shall be a
`complete bar to any action against the person, with respect to that mark, that—is brought by
`another person under the common law or statute of a State; and seeks to prevent dilution.”).
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`Applicant’s Response to Motion to Suspend Opposition Proceeding
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`Page 14 of 18
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`3. Applicant has Requested the District Court Stay its Action in view of the
`Opposition Proceeding
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`On September 19, 2016, Applicant filed its Motion to Stay the District Court Action.43 A
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`complete, time-stamped copy of the Motion to Stay is attached hereto as Exhibit F. In summary,
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`Applicant argued that the Opposition Proceeding will eliminate the need to try the infringement
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`issues raised in the District Court Action; thus, a stay until there is a final Board ruling should be
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`granted for at least four reasons. First, the ordinary elements of issue preclusion will be met by
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`the Board’s ruling.44 Second, staying the District Court Action will not unduly prejudice
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`Opposer.45 Third, the District Court Action is at a nascent stage.46 And fourth, the Board’s
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`ruling will result in simplification of the issues before District Court.47
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`The District Court Action was not served on Applicant until September 15, 2016.
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`Applicant has yet to file its responsive pleading (if a Rule 12 motion is filed the District Court
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`Action could be delayed by months). Opposer’s response to Applicant’s Motion to Stay the
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`District Court Action is not due to be filed until October 10, 2016 and Applicant’s reply would
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`43 Motion to Stay.
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`44 B & B Hardware, Inc., 135 S. Ct. at 1310 (“So long as the other ordinary elements of issue
`preclusion are met, when the usages adjudicated by the TTAB are materially the same as those
`before the district court, issue preclusion should apply.”).
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`45 Id.; NFC Tech. LLC v. HTC Am., Inc., 2:13-CV-1058-WCB, 2015 WL 1069111, at *2 (E.D.
`Tex. Mar. 11, 2015) (District courts typically consider three factors when determining whether to
`grant a stay pending inter partes review: “(1) whether the stay will unduly prejudice the
`nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
`including whether discovery is complete and a trial date has been set, and (3) whether the stay
`will likely result in simplifying the case before the court.”).
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`46 Id.
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`47 Id.
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`Applicant’s Response to Motion to Suspend Opposition Proceeding
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`Page 15 of 18
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`not be due until October 24, 2016.48
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`Conversely, the Opposition Proceeding is well underway. Applicant has: 1) filed its
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`Answer; 2) served its Initial Disclosures; 3) served its First Set of Interrogatories; 4) served its
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`First Set of Requests for Production of Documents; and 5) served its First Set of Requests for
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`Admissions.
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`In the interest of judicial efficiency and the desire for an expeditious resolution of
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`Applicant’s rights in its long-used Hillstone mark, Applicant requests that the Board maintain the
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`Opposition Proceeding so that at this very time next year the Board can decide the instant issues.
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`IV. CONCLUSION
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`Applicant has been conspicuously using its Hillstone mark for real estate services for
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`more than four years.
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`Applicant has spent significant time and resources on defendin