throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA845330
`
`Filing date:
`
`09/12/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91230031
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Akeso Health Sciences, LLC
`
`MARLENE J WILLIAMS
`NIXON PEABODY LLP
`P O BOX 26769
`SAN FRANCISCO, CA 94126-6769
`UNITED STATES
`Email: sftrademarks@nixonpeabody.com
`
`Withdrawal of Opposition
`
`Marlene J. Williams
`
`sftrademarks@nixonpeabody.com, mwilliams@nixonpeabody.com, abri-
`an@nixonpeabody.com, kkappler@nixonpeabody.com
`
`/mjw/
`
`09/12/2017
`
`Request for Withdrawal of Opposition Without Prejudice.pdf(10749 bytes )
`Exhibit A to Request for Withdrawal.pdf(66290 bytes )
`Exhibit B to Request for Withdrawal.pdf(55836 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Akeso Health Sciences, LLC,
`
`Opposition No. 91230031
`
`vs.
`
`Quantum, Inc.,
`
`Opposer,
`
`Applicant.
`
` Mark: MIGRELIEF
` Serial No. 86/857160
` Filing Date: December 22, 2015
` Published: May 17, 2016
`
`OPPOSER’S REQUEST FOR WITHDRAWAL
`OF OPPOSITION WITHOUT PREJUDICE
`
`Opposer Akeso Health Sciences, LLC (“Opposer”) hereby requests withdrawal of the
`
`above Opposition.
`
`This Opposition has been suspended pending a final determination in a federal lawsuit
`
`involving Opposer and Applicant Quantum, Inc., United States District Court, District of
`
`Oregon, Portland Division, Civ. No. 3:16-cv-00334-JE (the “Civil Action”). Judgment has been
`
`entered in the Civil Action requiring Applicant Quantum, Inc. (“Quantum”) to assign the
`
`opposed application to Opposer. A copy of the Judgment dated August 8, 2017 is attached
`
`hereto as Exhibit A. This assignment has been completed and recorded with the Assignment
`
`Division at Reel/Frame: 6138/0111. A copy of the Notice of Recordation dated August 28, 2017
`
`is attached hereto as Exhibit B. Given that the opposed application is now owned by Opposer,
`
`the opposition is moot.
`
`4838-2348-2191.1
`
`1
`
`

`

`Because no answer has yet been filed, Opposer respectfully withdraws the opposition
`
`without prejudice pursuant to 37. C.F.R. § 2.106(c).
`
`Dated: September 12, 2017
`
`
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
`/s/ Marlene J. Williams
` By:
`Marlene J. Williams
`Aaron Brian
`One Embarcadero Center, Suite 1800
`San Francisco, CA 94111
`Telephone: (415) 984-8200
`Fax: (415) 984-8300
`E-mail: mwilliams@nixonpeabody.com;
`sftrademarks@nixonpeabody.com
`
`Attorneys for Akeso Health Sciences, LLC
`
`4838-2348-2191.1
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`I, Kerry Kappler, hereby certify that a true and correct copy of OPPOSER’S REQUEST
`
`FOR WITHDRAWAL OF OPPOSITION WITHOUT PREJUDICE has been served on
`
`Applicant at the correspondence address of record:
`
`David P. Petersen
`Klarquist Sparkman, LLP
`121 SW Salmon Street
`One World Trade Center, Suite 1600
`Portland, Oregon 97204
`ptotmdocket@klarquist.com
`
`by e-mail, on this 12th day of September, 2017.
`
`By: /s/
`Kerry Kappler
`
`4838-2348-2191.1
`
`3
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 3:16-cv-00334-JE Document 172 Filed 08/08/17 Page 1 of 2
`
`1N THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF OREGON
`
`QUANTUM, INC., an Oregon corporation
`
`Plaintiff, Counterclaim Defendant,
`
`v.
`
`AKESO HEAL TH SCIENCES, LLC, a
`California corporation,
`
`Defendant, Counter-Claimant.
`
`JUDGMENT
`
`) Civil No.: 3: 16-cv-00334-JE
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`JELDERKS, Magistrate Judge:
`
`Pursuant to the Court's summary judgment Opinion and Order filed June 5, 2017; the
`
`jury's Verdict dated June 12, 2017; and the Comi's Opinion and Order filed August 2, 2017,
`
`IT IS HEREBY ORDERED AND ADJUDGED that:
`
`1) the patties' written agreement dated February 11, 2002, expired in its entirety on
`
`October 31, 2004, and to the extent it was still viable in any respect, any residual rights of the
`
`parties were extinguished by the release executed by the parties on September 27, 2005;
`
`therefore, Plaintiff Quantum is awarded judgment on its Claim 1 and on Defendant Akeso' s
`
`Counterclaims I, 2 and 4.
`
`2) Defendant Akeso is awarded judgment on its implied contract counterclaim regarding
`
`sales channels (Counterclaim 10) in the amount of$504,381.00, reduced to $404,381.00
`
`pursuant to paragraph (3) below;
`
`3) Defendant Akeso is awarded judgment on Counterclaim 9 for implied contract-
`
`specific performance upon payment of$100,000 to Quantum. This payment is satisfied by the
`
`JUDGMENT-I
`
`

`

`Case 3:16-cv-00334-JE Document 172 Filed 08/08/17 Page 2 of 2
`
`reduction to the judgment in paragraph (2) above. No later than 10 business days after the filing
`
`of this Judgment, Quantum shall complete a trademark assignment of United States Trademark
`
`Registration No. 2,002,902 and United States Trademark Application Serial No. 86/857160 in
`
`accordance with Section 10 of the Lanham Act (15 U.S.C. §1060). Furthermore, Quantum is
`
`enjoined from using the MigreLieftrademark as of the date of this Judgment. Quantum shall,
`
`without delay, impound and destroy all packaging currently in its possession that bears the
`
`MigreLief trademark;
`
`4) Defendant Akeso's counterclaims for breach of the 2002 contract - improper sales
`
`channels, promissory estoppel, equitable estoppel, injunctive relief, trademark infringement
`
`based on Quantum's use of the MigreLieftrademark, unfair competition based on Quantum's use
`
`of the MigreLieftrademark, and unfair and deceptive trade practices based on Quantum's use of
`
`the MigreLieftrademark (Counterclaims 3, 5, 6, 11, 12, 13, 14 and 19) are dismissed with
`
`prejudice;
`
`5) each of the parties' remaining claims for cancellation of the trademark registration and
`
`application, trademark infringement, unfair competition, and unfair and deceptive trade practices
`
`(Akeso's Counterclaims 7, 8, 15, 16, 17, 18, and Quantum's Claim Two, including Counts One,
`
`Two and Tlll'ee) are dismissed with prejudice;
`
`6) each pmiy is responsible for its own attorneys' fees and costs; and
`
`7) all other pending motions are denied as moot.
`
`
`
`DATED this day 81h day of August, 2017.
`
`ｊｯｬｭｾｾ＠
`
`U.S. Magistrate Judge
`
`JUDGMENT-2
`
`

`

`EXHIBIT B
`EXHIBIT B
`
`

`

`AUGUST 28, 2017
`
`PTAS
`
`MARLENE J. WILLIAMS
`P.O. BOX 26769
`NIXON PEABODY LLP
`SAN FRANCISCO, CA 94126-6769
`
`900418701
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`NOTICE OF RECORDATION OF ASSIGNMENT DOCUMENT
`
`THE ENCLOSED DOCUMENT HAS BEEN RECORDED BY THE ASSIGNMENT RECORDATION BRANCH
`OF THE U.S. PATENT AND TRADEMARK OFFICE. A COMPLETE COPY IS AVAILABLE AT THE
`ASSIGNMENT SEARCH ROOM ON THE REEL AND FRAME NUMBER REFERENCED BELOW.
`
`PLEASE REVIEW ALL INFORMATION CONTAINED ON THIS NOTICE. THE INFORMATION
`CONTAINED ON THIS RECORDATION NOTICE REFLECTS THE DATA PRESENT IN THE PATENT
`AND TRADEMARK ASSIGNMENT SYSTEM. IF YOU SHOULD FIND ANY ERRORS OR HAVE
`QUESTIONS CONCERNING THIS NOTICE, YOU MAY CONTACT THE ASSIGNMENT RECORDATION
`BRANCH AT 571-272-3350. PLEASE SEND REQUEST FOR CORRECTION TO: U.S. PATENT
`AND TRADEMARK OFFICE, MAIL STOP: ASSIGNMENT RECORDATION BRANCH, P.O. BOX
`1450, ALEXANDRIA, VA 22313.
`
`RECORDATION DATE: 08/24/2017
`
`REEL/FRAME: 6138/0111
`NUMBER OF PAGES: 5
`
`BRIEF: ASSIGNS THE ENTIRE INTEREST
`
`DOCKET NUMBER:
`
`074906-5
`
`ASSIGNOR:
`QUANTUM, INC.
`
`ASSIGNEE:
`AKESO HEALTH SCIENCES, LLC
`
`4607 LAKEVIEW CANYON
`#561
`WESTLAKE VILLAGE, CALIFORNIA 91361
`
`DOC DATE: 08/22/2017
`CITIZENSHIP: OREGON
`ENTITY: CORPORATION
`
`CITIZENSHIP: CALIFORNIA
`ENTITY: LIMITED LIABILITY COMPANY
`
`SERIAL NUMBER: 74730759
`REGISTRATION NUMBER: 2002902
`MARK: MIGRELIEF
`DRAWING TYPE: TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`FILING DATE: 09/18/1995
`REGISTRATION DATE: 09/24/1996
`
`SERIAL NUMBER: 86857160
`REGISTRATION NUMBER:
`MARK: MIGRELIEF
`DRAWING TYPE: STANDARD CHARACTER MARK
`
`FILING DATE: 12/22/2015
`REGISTRATION DATE:
`
`

`

`6138/0111 PAG;LLJ N
`
`6138/0111 PAGE 2
`
`
`
`
`
`
`ASS GNM4'.\11 RfiCORDATION BRANCH
`ASSIGNMENT RECORDATION BRANCH
`
`
`
`
`
`
`
`
`PUBT. C 1*ZCORDS D V S ON
`PUBLIC RECORDS DIVISION
`
`

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