Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1016617
`11/19/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91230220
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`B&B Hardware, Inc.
`
`LARRY JOSEPH BOGATZ
`B&B HARDWARE INC
`3905 STATE ST #7258
`SANTA BARBARA, CA 93105-3138
`UNITED STATES
`larry@sealtighttechnology.com
`800-969-4634
`
`Other Motions/Papers
`
`LARRY JOSEPH BOGATZ
`
`larry@sealtighttechnology.com
`
`/LARRY JOSEPH BOGATZ/
`
`11/19/2019
`
`RESPONSE TO OPPOSERS MOTION FOR JUDGMENT AND APPLICANTS
`CROSS MOTION FOR JUDGMENT.pdf(2964850 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Hargis Industries, LP.,
`
` Opposer,
`
` vs.
`
`B&B Hardware, Inc.,
`
` Applicant.
`
`
`OPPOSITION NO. 91230220
`SERIAL NO. 86/927,791
`
`
`APPLICANT B & B HARDWARE,
`INC’S RESPONSE TO OPPOSER’S
`MOTION FOR JUDGMENT AND
`APPLICANTS CROSS MOTION FOR
`JUDGMENT.
`
`
`RESPONSE TO OPPOSER’S MOTION FOR JUDGMENT,
`AND APPLICANT’S CROSS MOTION FOR JUDGMENT.
`
`
`
`
`
` Applicant B&B Hardware, Inc., ("Applicant" or "B&B"), by and through its
`
`undersigned designated representative, hereby submits this response to Opposer’s Hargis
`
`Industries, LP (“Opposer” or “Hargis”) Motion for Judgment, and Applicant’s Cross
`
`Motion for Judgment.
`
`Hargis submits to the Board that because the B&B Hardware, Inc. v. Hargis
`
`Industries, Inc., Civil Action No. 4:06-CV-01654 BSM (B&B v. Hargis III) is now final,
`
`that this decision sufficiently provides Hargis with standing in the current opposition. It
`
`does not. The Eighth Circuit Appellate Court (“Eighth Circuit”) affirmed the district court’s
`
`decision in B&B v. Hargis III applying a fraud standard which directly conflicts with the
`
`standard of this Board and the Federal Circuit.
`
`This decision vacated B&B’s Trademark Infringement victory and wrongly applied
`
`issue preclusion to the B&B Hardware, Inc. v. Hargis Industries, Inc., May 18, 2000 Civil
`
`Action No. 4:98CV00372 JWC (“B&B v. Hargis I” or “2000 decision”) However, the
`
`opposer cannot rely upon the 2000 decision in this opposition proceeding because opposer
`
`
`
`1
`
`

`

`is barred by the preclusive effect of The Boards June 13, 2003, and August 28, 2007 Orders
`
`from relying upon the 2000 decision, and is also barred from raising a descriptiveness claim
`
`against B&B’s application for the (re)registration of the Sealtight trademark because the
`
`time for raising a descriptiveness claim had already tolled prior to it being raised by Hargis
`
`the first time. Even if this were not the case Opposer has no grounds to bring this opposition
`
`because it has abandoned use of the Sealtite mark.
`
`There are no disputed facts to be resolved, and therefore B&B respectfully requests
`
`that this opposition be dismissed, that judgment be entered in its favor, pursuant to FED.
`
`R. CIV. P. 56, TBMP §§528, and 37 C.F.R. § 2.217., and that this Board grant
`
`(re)registration of the "SEALTIGHT" trademark to the principal register.
`
`Background and Procedural History
`
`A. Civil Litigation
`
`1.
`
`
`
`Borrowing from the procedural summary in the Supreme Court’s decision, “The
`
`twists and turns in the SEALTIGHT versus SEALTITE controversy are labyrinthine,” with
`
`the issues between the parties “bounc[ing] around within the PTO for about two decades,”
`
`related “infringement litigation hav[ing] been before the Eighth Circuit three times; and
`
`two separate juries hav[ing] been empaneled and return[ing] verdicts. The full story could
`
`fill a long, unhappy book.” B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293,
`
`1301-02, 191 L. Ed. 2d 222 (2015).
`
`The Saga continues, following the Supreme Court’s instructions, the Eighth Circuit
`
`applied preclusion to the TTAB’s August 28, 2007 decision, and remanded for further
`
`proceedings. On remand from the Eighth Circuit a third trial was held. The District Court
`
`summarizing its June 24, 2016 decision states,
`
`
`
`2
`
`

`

`“Although the jury found for B&B on its trademark infringement, unfair
`competition, and false advertising claims, the fraud finding against B&B
`mandates a judgment in favor of Hargis. Even if the fraud finding does not
`survive appeal, there is no justification to award B&B any of Hargis’s
`profits.”
`
`
`
`B&B argued in its JNOV that Hargis didn’t meet its burden of proof for fraud on
`
`the USPTO. The district court denied B&B’s JNOV motion on February 16, 2017. B&B
`
`appealed to the Eighth Circuit on August 15, 2017. On August 25, 2018 the parties were
`
`notified of oral arguments and that the previously dissenting Judge Steven Colloton was
`
`replaced on the panel by Judge Duane Benton. On December 21, 2018 the Eighth Circuit
`
`affirmed the District Court’s decision.
`
`B&B filed a Petition for Rehearing on January 4, 2019 stating that the Eighth
`
`Circuit applied the incorrect standard of review for a Rule 59 motion, and also applied an
`
`incorrect standard of law for trademark fraud. The Eighth Circuit denied the Petition for
`
`Rehearing on February 6, 2019.
`
`B&B Filed Petition for Writ of Certiorari with the United States Supreme Court on
`
`July 3, 2019 stating the obvious circuit split between the Eighth Circuit and the Federal
`
`Circuit standard to prove fraud on the USPTO.
`
`The United States Supreme Court denied B&B’s Petition on October 7, 2019. The
`
`Eighth Circuit acknowledged it on October 11, 2019. B&B notified the TTAB in the
`
`current proceedings of this change of status on October 30, 2019. Hargis also filed a Notice
`
`of Status of Civil Action and Motion for Judgment on October 31, 2019.
`
`B. TTAB Cancellation Proceedings
`
`After the Eighth Circuit appeal of the 2000 Decision, Hargis reopened its 1997
`
`cancellation proceeding in the TTAB. In its order dated December 6, 2001 the Board
`
`
`
`3
`
`

`

`resumed proceedings at Hargis’s request. The Board at that time informed Hargis that it
`
`was required to file an amended pleading that sets forth a claim of descriptiveness in order
`
`for the 2000 Decision to be preclusive to the cancellation proceeding.
`
`On December 19, 2001 Hargis (under the name “Sealtite Building Fasteners” or
`
`“SBF”) filed its second amended complaint claiming that the district court’s 2000 Decision
`
`was “res judicata between petitioner and registrant”
`
`On January 3, 2002 B&B filed a Communication in Response to TTAB Notice
`
`providing a complete and accurate history of the case to that point.
`
`On January 11, 2002 Petitioner (Hargis-SBF) filed a response again claiming res
`
`judicata. On July 1, 2002 the Board allowed Hargis to amend its petition to cancel to
`
`include a ground of descriptiveness and granted Hargis motion for summary judgment
`
`(“MSJ”) on the ground that the 2000 Decision of descriptiveness was preclusive.
`
`In August 2002 B&B filed a request for reconsideration of the TTAB decision.
`
`Arguing that Hargis’ descriptiveness claim was untimely because the tolling of the five-
`
`year anniversary of the issuance of B&B’s trademark SEALTIGHT had already passed
`
`prior to Hargis raising the issue for the first time, and also that Hargis didn’t meet the
`
`required conditions that would justify a delay in raising a descriptiveness claim.
`
`The June 13, 2003 Board Order granted B&B’s motion for reconsideration, and
`
`ordered the reinstatement of B&B’s Sealtight trademark to the PTO principal register.
`
`C. TTAB Opposition Proceedings
`
`The July 1, 2002 Board order in the cancellation proceeding which temporarily
`
`cancelled B&B’s SEALTIGHT trademark allowed Hargis’s SEALTITE application
`
`proceed to publication.
`
`
`
`4
`
`

`

`On February 28, 2003 B&B filed an opposition to the registration of Hargis’s
`
`SEALTITE mark.
`
`On April 22, 2003 Hargis filed an answer to B&B’s opposition and asked the board
`
`to dismiss opposition No. 91155687 based upon lack of standing and again proffering a
`
`claim of res judicata. On May 22, 2003 Hargis filed a MSJ in the opposition proceeding
`
`proffering again its claim of res judicata. On June 10, 2003 B&B filed an Amended Notice
`
`of Opposition and responded to Hargis’s MSJ. On August 23, 2004, the Board denied
`
`Hargis’s MSJ, and rejected Hargis’s claims of res judicata that were based upon the 2000
`
`district court decision.
`
`On June 20, 2006 B&B filed a notice of reliance upon the Board’s June 2003 Order
`
`because Hargis was again claiming the 2000 decision had res judicata or collateral estoppel
`
`effect in the opposition proceedings. The same argument the Board considered and rejected
`
`in its June 2003 Order. In June 2006, B&B filed a Declaration of Incontestability of its
`
`SEALTIGHT trademark.
`
`On August 28, 2007, the Board granted B&B’s opposition to Hargis’s Sealtite
`
`registration. Hargis did not appeal the June 12, 2003 or August 28, 2007 Board Order’s to
`
`either the Federal Circuit or a district court.
`
`2.
`
`Argument
`
`A. Hargis has abandoned use of the Sealtite mark and has no basis for this
`Opposition.
`
`On March 3, 2017 Hargis announced its name change from “Sealtite Building
`
`Fasteners” to “ST Fastening Systems” on the website DesignandBuildWithMetal.com. See
`
`Exhibit 1 Declaration of Larry Joseph Bogatz (“LJB”) Exhibit (“EX”) A.
`
`
`
`5
`
`

`

`On November 8, 2017, Hargis sold ST Fastening Systems to the Hillman Group.
`
`As a part of the sale Hargis acknowledges they no longer use and can never again use the
`
`Sealtite mark. The SEC 8K filing states, “Except as disclosed on Schedule 5.11(h), to the
`
`Knowledge of Seller, Seller does not currently use the Sealtite Intellectual Property in the
`
`operation of the Business.” See LJB, Ex B, page 32. And, “Seller covenants and agrees not
`
`to sell, license or use the Sealtite Intellectual Property after the Closing Date in connection
`
`with any business or venture of any kind.” See LJB, Ex B, Schedule 7.04 (a) page 45.
`
`On November 9, 2017 the sale of ST Fastening Systems to the Hillman Group is
`
`officially announced on the ST Fastening Systems website. See LJB, Ex, C.
`
`Based upon the aforesaid, Opposer cannot show the requisite injury necessary to
`
`maintain this opposition proceeding as Hargis has abandoned the Sealtite mark, and is
`
`bound by law from ever using it again, and as the district court has already relieved Hargis
`
`of any liability for infringement there is no possibility for Opposer to be damaged in any
`
`way by B&B’s (re)registration of its Sealtight trademark.
`
`B. The District Court, and Eighth Circuit’s misdirected Fraud determination
`conflicts with the Fraud Requirement of the Federal Circuit and the Board.
`
`In B&B v. Hargis III the district court reasoned that the jury found the incontestable
`
`status of the Sealtight trademark was fraudulently obtained because B&B didn’t notify the
`
`PTO of the 2000 Decision when filing its Section 15 declaration for incontestability.
`
`No evidence in the record supports a finding that B&B made any material
`
`misrepresentation in obtaining the registration of its Sealtight trademark. The materiality
`
`of the alleged fraud must go to the registration itself not the obtainment of incontestability
`
`secured by a Section 15 declaration.
`
`
`
`6
`
`

`

` “To invoke cancellation of a registration, the alleged misrepresentation
`must go to the registration itself. A later Section 15 declaration is not an act
`in obtaining a registration. 15 U.S.C. § 1064(3) (2012). The statute therefore
`allows cancellation only if the registration itself, and not the incontestable
`evidentiary presumptions secured by a Section 15 declaration, is obtained
`fraudulently. See Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189,
`195 (1985).”
`
`Regardless, there can be no doubt that the PTO knew of the 2000 Decision long
`
`before B&B filed its declaration of incontestability, yet still decided that the Sealtight
`
`trademark deserved federal registration. The June 13, 2003 Order dismissed Hargis’s
`
`cancellation petition because B&B’s SEALTIGHT registration was more than five years
`
`old before Hargis raised the descriptiveness issue and therefore it could no longer be
`
`attacked on grounds of descriptiveness.
`
`The test for fraud required by the Board was solidified by Federal Circuit In re Bose
`
`Corp., 580 F.3d 1240 (Fed. Cir. 2009) .... passim(“Bose”) and Therasense, Inc. v. Becton,
`
`Dickenson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (“Therasense”). Both the District Court
`
`and Eighth Circuit in B&B v. Hargis III completely ignored the “prove to the Hilt”
`
`requirement of Bose, and the “but-for” requirement of Therasense.
`
`The factual basis for the Hargis affirmative defense was B&B’s alleged failure to
`
`disclose to the PTO when it filed its Section 15 declaration that there was an adverse
`
`judgment against B&B in the 2000 Decision. Whether that judgment was a “final decision
`
`adverse” to B&B’s ownership of the mark might be disputed. However, applying the Bose
`
`and Therasense tests to the evidence makes it perfectly clear that such a dispute does not,
`
`as a matter of law, meet the high burden to prove fraud on the PTO.
`
`The standard applied by the Eighth Circuit made no inquiry into why the
`
`information was withheld. Indeed, the testimony was uncontradicted. The information (a
`
`
`
`7
`
`

`

`prior jury verdict involving the Sealtight mark) was not disclosed to the PTO (on the advice
`
`of counsel ) that the information was not a “final adverse determination.” That advice could
`
`have been right or wrong, which might have given rise to an inference of an honest
`
`misunderstanding, negligence, or even gross negligence, but it was not clear and
`
`convincing evidence of a willful intent to deceive as required by the standard announced
`
`in Bose.
`
`The Jury and the District Court had insignificant evidence to make a fraud
`
`determination. Therefore, the fraud ruling of the District Court shouldn’t be considered
`
`here because it was based upon a jury determination that was structurally unsound and at
`
`odds with the facts.
`
`
`
`C. B&B’s Sealtight trademark must be considered inherently distinctive due
`to its long and continuous use.
`
`B&B has continuously used the trademark "SEALTIGHT" in commerce since May
`
`2, 1990. More than 29 years B&B has continuously used the Sealtight trademark in
`
`commerce, and owned the registration of the mark "SEALTIGHT" for over 20 years with
`
`much of that time as a Section 15 incontestable trademark on the principal register. The
`
`Sealtight trademark has become synonymous with the highest quality self-sealing fasteners
`
`in the world, and as an identifier of B&B as the source for those products. B&B is a quality
`
`approved vendor for Cessna, Textron Aerospace, L-3 Communications, Lockheed Martin,
`
`Boeing, Raytheon, General Dynamics, Northrop Grumman, China Lake Systems, Defense
`
`Logistics Agency, NASA, Medtronics,.. B&B's fasteners are used in all the Mars Rovers,
`
`the Alvin and Jason submersibles, the Hubble and Kepler Space Telescopes.... at a
`
`minimum the inherent distinctiveness of the Sealtight trademark must be assumed.
`
`
`
`8
`
`

`

`that have not been successfully
`those
`trademarks--
`"incontestable
`challenged within five years of registration, see 15 U.S.C. § 1065--are
`presumed to be strong marks" (emphasis added) AutoZone, Inc. v. Tandy
`Corp., 373 F.3d 786 (6th Cir. 2004).15 U.S.C.§1052(f) States: "The
`Director may accept as prima facie evidence that the mark has become
`distinctive, as used on or in connection with the applicant’s goods in
`commerce, proof of substantially exclusive and continuous use thereof as a
`mark by the applicant in commerce for the five years before the date on
`which the claim of distinctiveness is made."
`
`
`
`15 U.S.C. §1052(f) States: "The Director may accept as prima facie
`evidence that the mark has become distinctive, as used on or in connection
`with the applicant’s goods in commerce, proof of substantially exclusive
`and continuous use thereof as a mark by the applicant in commerce for the
`five years before the date on which the claim of distinctiveness is made."
`"With regard to inherent distinctiveness, the District Court was correct to
`conclude that Plaintiff's marks are entitled to a presumption of inherent
`distinctiveness by virtue of their incontestability." See Sporty's Farm, 202
`F.3d at 497; Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 545
`(1st Cir.1995). Savin Corp. v. Savin Group, 391F. 3d 439 - Court of
`Appeals, 2nd Circuit 2004.
`
`D. Hargis is Barred by Issue Preclusion from proffering The 2000 Decision as
`a Bar to B&B’s Right to (Re)Register its Sealtight Trademark.
`
`
`Under the doctrine of issue preclusion, issues which are actually and necessarily
`
`determined by a court of competent jurisdiction are normally conclusive in a subsequent
`
`suit involving the parties to the prior litigation. See Mother's Restaurant, Inc. v. Mama's
`
`Pizza, Inc., 723 F.2d 1566, 221 USPQ 394 (Fed. Cir. 1983) and International Order of Job's
`
`Daughters v. Lindeburg & Co., 727 F.2d 1097, 220 USPQ 1017 (Fed. Cir. 1984). Unless
`
`the party against whom issue preclusion is invoked did not have a full and fair opportunity
`
`to litigate the issue in the prior proceeding, or unless it is otherwise unfair to permit the use
`
`of the doctrine, issue preclusion, formerly called collateral estoppel, is properly invoked.
`
`See Perma Cream Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d 1134 (TTAB
`
`1992).
`
`
`
`9
`
`

`

`Opposer has many times proffered the 2000 decision to this Board as grounds for
`
`both claim and issue preclusion upon B&B’s right to register the SEALTIGHT trademark
`
`or keep the same on the register, and has each time been denied for the same reason. The
`
`tolling of the 5 year timeframe to raise a descriptiveness claim had passed prior to Hargis
`
`raising the descriptiveness issue for the first time. The June 13, 2003, and the August 28,
`
`2007 Board Orders preclude Hargis from raising a descriptiveness claim against B&B’s
`
`Sealtight registration, and also bar Hargis from using the 2000 Decision for that purpose.
`
`The June 13, 2003 Board Order states,
`
`"Defendant (B&B) has demonstrated that plaintiff's counsel in fact did have
`sound basis for pleading descriptiveness when the original petition was
`filed. Thus, plaintiff would not meet either of the two conditions we set out
`that would effect a tolling of the five-year bar to raising a descriptiveness
`claim."……"In any event, we find the showing by defendant convincing
`that plaintiff actually knew the basis for bringing a descriptiveness claim
`when it filed the original petition but likely chose not to do so.”
`
`The Board further states,
`
` “The request for reconsideration is granted. Our previous order is set aside,
`plaintiff’s attempt to assert descriptiveness claim is disallowed, and the
`petition for cancellation is dismissed. Lest plaintiff argue that we have, by
`this decision, failed to accord due consideration to the federal district court’s
`determination that defendant’s mark is descriptive and without acquired
`distinctiveness, we note that plaintiff, as defendant in the civil action, did
`not press a counterclaim against our defendant’s registration, and the court
`did not, pursuant to Section 37 of the Lanham Act, order the registration
`cancelled. Without a Section 37 order from the court to the Commissioner
`directing cancellation of the registration, and in the absence of any ability
`by the plaintiff to pursue a descriptiveness claim in this case, application of
`issue preclusion will not allow the plaintiff to obtain what the court did not
`itself order. Again, the petition for cancellation is dismissed.”
`
`In the Board’s 2007 Order states,
`
`" In its June 12, 2003 Order, the Board denied applicant's (Hargis') motion
`to amend the petition for cancellation because opposer's registration was
`more than five years old, and dismissed the petition for cancellation. The
`Board noted that applicant, in the civil action, did not pursue a counterclaim
`
`10
`
`
`
`
`
`

`

`to cancel opposer's registration and that the district court did not order the
`registration cancelled."
`
`
`
`The 2007 Board Order further states,
`
`“In an order dated August 23, 2004, the Board denied applicant’s motion
`for summary judgment based on the dismissal of opposer’s civil action. The
`Board held that applicant was barred from bringing a counterclaim to cancel
`opposer’s pleaded registration on the ground that the mark is merely
`descriptive because opposer’s pleaded registration remains in effect despite
`the previous civil action and cancellation proceeding, and because the
`registration is more than five years old. 10 The Board held that the civil
`action did not have preclusive effect.”
`
`Footnote 10
`“Under Section 14 of the Trademark Act of 1946, a registration that is more
`than five years old may not be canceled on the ground that it is merely
`descriptive. Where, as here, opposer’s mark has been registered for five
`years, it is protected from cancellation except on the grounds stated in
`Sections 14(3) of the Trademark Act of 1946, 15 U.S.C. §§1064(3), such
`as, “if the registered mark becomes the generic name for the goods or
`services, . . . has been abandoned, . . . or its registration was obtained
`fraudulently.” Otherwise, a mark that has been registered for more than five
`years cannot be challenged, for example, for mere descriptiveness, or on the
`basis that the mark lacks secondary meaning. See Park ‘N Fly v. Dollar
`Park and Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331-332 (1985); Sunrise
`Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322, 50 USPQ2d
`1532 (Fed. Cir. 1999).”
`
`As the parties and issues are clearly the same in the current opposition before the
`
`Board. and as Hargis cannot restart the tolling of the time to raise a descriptiveness claim,
`
`Hargis is still barred by the preclusive effect of these prior Board decisions from again
`
`proffering the same repackaged preclusion argument based on 2000 decision.
`
`The two grounds pleaded by Opposer are (1) Applicant’s mark, when used on or in
`
`connection with the identified goods, is merely descriptive of those goods and has not
`
`acquired distinctiveness, and (2) registration is barred under the doctrine of issue preclusion
`
`because a jury verdict and judgment in a prior civil action determined that Applicant’s
`
`mark is merely descriptive and has not acquired distinctiveness.
`
`
`
`11
`
`

`

`As the only grounds pleaded by Opposer rely upon the 2000 Decision of the District
`
`Court, and as Hargis is precluded from relying upon the 2000 decision to support its only
`
`grounds for opposition Hargis has therefore failed to state a claim upon which relief could
`
`be granted as is required by 37 C.F.R. §2.104(a); TBMP §309.03(a)(2). "
`
`
`
`Based upon the aforesaid the Opposer has failed to state a claim upon which relief
`
`could be granted and there are no disputed facts left to resolve in this proceeding.
`
`Therefore, Applicant respectfully requests and prays that this Board preclude Hargis from
`
`again proffering the 2000 Decision based upon the preclusive effect of the June 13, 2003,
`
`and August 28, 2007 Board Orders, dismiss this opposition for failure to state grounds upon
`
`which relief can be granted, approve B&B Hardware, Inc's application to (re)register the
`
`"SEALTIGHT" trademark to the principal register, and grant Applicant all other
`
`appropriate relief.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DATED: November 19, 2019
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` By: /LARRY JOSEPH BOGATZ/
`
`
`LARRY JOSEPH BOGATZ
`
`
`B&B HARDWARE, INC.
`
`
`3905 State Street, #7258
`
`
`Santa Barbara, CA 93105
`larry@sealtightfastener.com
`
`
`
`
`larry@sealtighttechnology.com
`
`
`Telephone:
`(805) 683-6700
`
`
`Facsimile:
`(805) 683-6708
`
`
`
`Representing Applicant
`B&B Hardware, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that a true copy of the foregoing RESPONSE TO OPPOSER’S MOTION FOR
`JUDGMENT, AND APPLICANT’S CROSS MOTION FOR JUDGMENT, was served on
`Opposer November, 19th 2019, by email, to the Attorneys for Opposer at the addresses listed
`below.
`
`
`
`ALEXANDRA H BISTLINE
`PIRKEY BARBER PLLC
`1801 East 6th Street, Suite 300
`AUSTIN, TX 78702
`tmcentral@pirkeybarber.com,
`lpirkey@pirkeybarber.com,
`svale@pirkeybarber.com,
`abistline@pirkeybarber.com,
`drausa@pirkeybarber.com
`Telephone: 512-322-5200
`
`
`
`
`
`DATED: November 19, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` By: /LARRY JOSEPH BOGATZ/
`
`
`LARRY JOSEPH BOGATZ
`
`
`B&B HARDWARE, INC.
`
`
`3905 State Street, #7258
`
`
`Santa Barbara, CA 93105
`larry@sealtightfastener.com
`
`
`
`
`larry@sealtighttechnology.com
`
`
`Telephone:
`(805) 683-6700
`
`
`Facsimile:
`(805) 683-6708
`
`
`
`
`
`
`
`
`
`
`
`Representing Applicant
`B&B Hardware, Inc.
`
`

`

`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`OPPOSITION NO. 91230220
`SERIAL NO. 86/927,791
`
`
`Hargis Industries, LP.,
`
` Opposer,
`
` vs.
`
`B&B Hardware, Inc.,
`
` Applicant.
`
`
`
`
`
`
`DECLARATION OF LARRY JOSEPH BOGATZ.
`
` I
`
` Larry Joseph Bogatz make the following declaration:
`
`1. I represent the Applicant B&B Hardware, Inc. in this opposition proceeding.
`
`2. Attached as Exhibit A is a true and accurate copy of the 3/3/2017 DesignAndBuildWith
`
`Metal.com article “Sealtite Changes Name to ST Fastening Systems”.
`
`3. Attached as Exhibit B is a true and accurate copy of the Form 8K filed on November 8,
`
`2017 with the United States Securities and Exchange Commission for the purchase of ST
`
`Fastening Systems by the Hillman Group.
`
`4. Attached as Exhibit C is a true and accurate copy of the press release titled “ST
`
`FASTENING SYSTEMS ACQUIRED BY THE HILLMAN GROUP” posted to the ST
`
`Fastenings website at http://stfasteningsystems.com/?page_id=8055 on 11-9-2017.
`
`I declare under penalty of perjury that the foregoing is true and correct. Executed
`
`on November 19, 2019 in Santa Barbara, CA.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` By: /LARRY JOSEPH BOGATZ/
`
`
`LARRY JOSEPH BOGATZ
`
`
`B&B HARDWARE, INC.
`
`
`
`
`
`1
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`MARKET SPOTLI GHT
`
` Search
`
`Supplier Directory
`
`Project Type Gallery
`
`Design Solutions
`
`Product Showcase
`
`Green Products
`
`Featured Projects
`
`I ndustry News
`
`Columnists
`
`Technical Articles
`
`Advantages Of Metal
`
`Associations
`
`Links & Tools
`
`Continuing Education
`
`Social Media Guide
`
`Calendar
`
`Featured Articles
`
`Metal Roofing
`
`Metal Walls
`
`Metal Buildings
`
`Residential
`
`Sustainability
`
`
`
`
`
`
`
`
`
`
`
`
`
`Read Our Weekly
`
`NEWSLETTERS
`
`Click To Join Our
`
`MAILING LIST
`
`Browse Our Monthly
`
`EZI NES
`
`MONTHLY EZI NES
`
`December 2017
`I nstitutional Projects Edition
`
`I NDUSTRY NEWS
`
`NEWS HOME
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Like 3
`
`NEWS ARCHI VES
`
`Sealtite Changes Name To ST Fastening
`Systems
`
`Tyler, TX - Marking 25 years of operation, Joe Hargis, CEO and founder of Sealtite Building Fasteners,
`
`announces that his company has changed its name to ST Fastening Systems. The company continues to
`use its “flying” ST as the focal point of its identity.
`
`“This change reflects how Sealtite Building Fasteners has evolved as a company," Hargis said. "In 25
`
`years, we have become much more than a distributor of self-drilling screws. The ST product line has
`
`grown to include a comprehensive array of construction products. Our proprietary fasteners cover all
`
`application requirements for metal and post frame buildings, whether it be speed, strength, or
`
`durability. I n addition, our expansive line of components now includes the very highest quality venting,
`
`sealing, flashing, and closure products. This combination of fasteners and components has come
`
`together to form a complete system of application solutions for the steel frame, post frame, and
`residential construction markets, hence the name change to ST Fastening Systems.”
`
`About ST Fastening Systems
`
`November 2017
`Architect Edition
`
`ST Fastening Systems supplies fastening, venting, sealing, flashing and
`
`closure products. For more information, visit http:/ / stfasteningsystems.com.
`
`October 2017
`Contractor Edition
`
`Ezine Archives
`
`288 DAYS UNTI L SHOWTI ME
`
`Manufacturers &
`Suppliers Directory
`
`1,425 listings
`153 product cat egories
`
` Search
`
`cat egory search
`
`CLI CK TO VI EW THE ENTI RE DI RECTORY
`
`Meet The Supplier
`
`

`

`^ Back To Top
`
`Supplier Directory Project Type Gallery Design Solutions Product Show case Green Product s Feat ured Proj ect s I ndust ry News Columnists Technical Articles Advant ages Of Met al
`Associations Links & Tools Continuing Education Social Media Guide Calendar Featured Articles
`
`Newslet t er/ Ezine Sign-Up Download Supplier Directory Listing Form Advertising Opportunities Cont act Us
`
`© Copyright Unlimited Reach Media Inc. 2007 - 2017. All rights reserved.
`
`Design And Build With Metal has information on metal roofing (standing seam and batten seam, shake, tile, shingle, corrugated and screw-down roofs); metal wall cladding products (ribbed, smooth faced, insulated metal panels, aluminum
`
`composite panels, and curtain walls); metal buildings (pre engineered steel, wood post frame, hangars and self storage); insulation; doors; paint coatings; and many related products (including roof accessories like snow guards, screws and
`
`vents). The site covers metal construction products using all types of substrates: steel, copper, aluminum, zinc, stainless steel, Corten, Terne, Galvalume, Zincalume, galvanized, tin and more. Environmental (green) issues, such as sustainability
`
`and cool initiatives, are also covered. Project, news and product submissions are welcomed...see information in About Us section
`
`

`

`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`

`

`UNITED STATES
`SECURITIES AND EXCHANGE COMMISSION
`WASHINGTON, D.C. 20549
`__________________________
`
`FORM 8-K
`
`CURRENT REPORT
`Pursuant to Section 13 or 15(d) of
`the Securities Exchange Act of 1934
`
`Date of Report (Date of earliest event reported): November 8, 2017
`
`The Hillman Companies, Inc.
`(Exact name of registrant as specified in its charter)
`
`Delaware
`
`(State or other jurisdiction
`
`of incorporation)
`
`
`
`
`
`
`
`
`
`001-13293
`
`(Commission File No.)
`
`
`
`
`
`
`
`23-2874736
`
`(I.R.S. Employer
`
`Identification No.)
`
`
`
`
`
`
`
`
`
`10590 Hamilton Avenue
`Cincinnati, Ohio 45231
`(Address of principal executive offices)
`Registrant’s telephone number, including area code: (513) 851-4900
`
`Not Applicable
`(Former name or former address,
`if changed since last report.)
`
`Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the
`registrant under any of the following provisions (see General Instruction A.2. below):
`
`
`
`
`
`
`
`
` Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425)
`
` Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12)
`
` Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b))
`
` Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c))
`
`Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of
`1933 (§?230.405 of this chapter) or Rule 12b-2 of the Securities Exchange Act of 1934 (§?240.12b-2 of this chapter).
`
`Emerging growth company?
`
`If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period
`for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act.?
`
`
`

`

`Item 1.01
`
`Entry into a Material Definitive Agreement.
`
`
`On November 8, 2017, The Hillman Group, Inc. (“Hillman”), a su