Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA966895
`
`Filing date:
`
`04/15/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91239462
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`CFA Institute
`
`JOHN M NADING
`DLA PIPER LLP US
`500 8TH STREET NW
`WASHINGTON, DC 20004
`UNITED STATES
`dctrademarks@dlapiper.com, ann.ford@dlapiper.com,
`john.nading@dlapiper.com, ryan.compton@dlapiper.com, ash-
`ley.joyce@dlapiper.com
`202-799-4000
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Other Motions/Papers
`
`John M. Nading
`
`john.nading@dlapiper.com, devika.persaud@dlapiper.com, dctrade-
`marks@dlapiper.com
`
`Signature
`
`Date
`
`/John M. Nading/
`
`04/15/2019
`
`Attachments
`
`Opposers Reply ISO Motion to Suspend TTAB Opposition.pdf(213231 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Service Mark
`Application Serial No. 87103390
`Mark: NAPA CPFA CERTIFIED PLAN FIDICUARY ADVISER & Design
`Filing Date: July 14, 2016
`Published for Opposition: August 15, 2017
`
`Opposition No. 91239462
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`CFA INSTITUTE,
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` Opposer/Counterclaim Respondent,
`
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`v.
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`AMERICAN SOCIETY OF PENSION
`PROFESSIONALS & ACTUARIES,
`
` Applicant/Counterclaim Petitioner.
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`
`
`OPPOSER/COUNTERCLAIM RESPONDENT’S REPLY IN SUPPORT OF MOTION
`TO SUSPEND PROCEEDING PENDING DISPOSITION OF FEDERAL LITIGATION
`
`Opposer/Counterclaim Respondent CFA Institute (“Opposer” or “CFA Institute”), files
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`this Reply in Support of Motion to Suspend Proceeding Pending Disposition of Federal
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`Litigation (“Motion” or “Motion to Suspend”) (18 TTABVUE). For all of the reasons set forth
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`herein and in its Motion, Opposer respectfully requests that the U.S. Trademark Trial and Appeal
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`Board (“Board”) suspend this Opposition Proceeding in its entirety pending the outcome of
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`pending litigation in federal district court, CFA Institute v. American Society of Pension
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`Professionals & Actuaries, et al., Case No. 3:19-cv-00012-NKM, W.D. Va. (“Federal Court
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`Action”).
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`ARGUMENT
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`Applicant/Counterclaim Petitioner American Society of Pension Professionals &
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`Actuaries’ (“Applicant”) Opposition to Opposer’s Motion (“Response”) (19 TTABVUE),
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`proposes unwarranted, groundless, and convoluted “in the alternative” scenarios for when
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`Applicant believes a stay of the Opposition Proceeding should be implemented. Applicant
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`would have the Board delay ruling on Opposer’s Motion to Suspend until after (1) the Board first
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`rules on Opposer’s Motion to Dismiss Applicant’s Amended Counterclaim (“Motion to
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`Dismiss”) (14 TTABVUE), and then (2) the United States District Court for the Western District
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`of Virginia rules on Defendants’ (Applicant, together with two of its “doing business as” names)
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`Motion to Stay the Federal Court Action pending this Opposition Proceeding (“Motion to Stay”)
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`(See 19 TTABVUE 7-27 (omitting Exhs. 1 & 2)). Opposer has opposed Defendants’ Motion to
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`Stay the Federal Court Action (a true and correct copy of Plaintiff’s Response in Opposition to
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`Defendants’ Motion to Stay is attached hereto as Exhibit A).
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`Whether the Board stays this Opposition Proceeding before or after a ruling on Opposer’s
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`Motion to Dismiss has no bearing on whether this Proceeding should be stayed pending
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`resolution of the Federal Court Action. The Federal Court Action involves far broader claims
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`and issues beyond the right to registration of one service mark application, Serial No. 87103390
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`(“Application”), for the following composite mark at issue in this Opposition Proceeding:
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`
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`Applicant is misleading with its assertion that “CFA Institute has admitted that the TTAB and
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`district court actions involve ‘the same Application, claims, and issues.’” (See 19 TTABVUE 4.)
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`As Opposer has clearly argued, the final determination of the Federal Court Action will have a
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`bearing on the issues before the Board because the Opposition Proceeding involves the same
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`claims and issues as related to the Application, while the Federal Court Action also involves
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`broader claims and issues far beyond the right to registration of this one Application, namely,
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`2
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`injunctive relief relating to use and registration of the infringing mark CPFA in any manner or
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`form, and damages. (See, e.g., 18 TTABVUE 5.)
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`The Board in its discretion can stay its proceeding at any stage of the case, and as such,
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`any delay in entering a stay in this Opposition Proceeding is without basis. TBMP § 510.02(a);
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`see also id. (citing Opticians Ass’n of Am. v. Indep. Opticians of Am. Inc., 734 F. Supp. 1171, 14
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`USPQ2d 2021 (D.N.J. 1990) (suspension of a Board proceeding pending the final determination
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`of another proceeding is solely within the discretion of the Board), rev’d on other grounds, 920
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`F.2d 187, 17 USPQ2d 1117 (3d Cir. 1990)). Nor does Applicant cite any case law to the
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`contrary as to why this Proceeding should not be suspended at this time. (Cf. 18 TTABVUE 4
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`(“[T]he Board’s policy to suspend in favor of a civil action has not changed [since the U.S.
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`Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 U.S. 1293, 135 S.
`
`Ct. 1293, 113 USPQ2d 2045 (2015)].” TBMP § 510.02(a). “A civil action may involve other
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`matters outside Board jurisdiction and may consider broader issues beyond right to registration
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`and, therefore, judicial economy is usually served by suspension.” Id. “The only question for
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`determination . . . is whether the outcome of the civil action will have a bearing on the issues
`
`involved in the opposition proceeding.” Other Tel. Co. v. Conn. Nat’l Tel. Co., Inc., 181 USPQ
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`125, 126 (TTAB 1974), petition denied, 181 USPQ 779 (Comm’r 1974).).)
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`As stated in its Motion to Suspend, this Opposition Proceeding is still in the early stages
`
`as the claims have not even been joined. Applicant has not stated a counterclaim to which
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`Opposer has had to answer; indeed, the Board has suspended any further proceedings pending
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`resolution of the Motion to Dismiss, which Opposer filed after successfully dismissing
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`Applicant’s
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`initial counterclaim.
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` Moreover, under the Board’s scheduling order (12
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`3
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`TTABVUE), the Discovery period has not opened in this Opposition Proceeding and thus the
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`parties have not exchanged Initial Disclosures nor any discovery requests.
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`Eleven days after Opposer filed the Motion to Suspend this Opposition Proceeding,
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`Applicant (Defendants) appeared in the Federal Court Action on March 18, 2019 by filing a
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`Motion to Stay. Pursuant to the Court’s March 18, 2019 Pretrial Order, counsel for the parties
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`held their Fed. R. Civ. P. 26(f) Conference on March 27, 2019, and submitted a Joint Motion to
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`Amend Pretrial Order on March 28, 2019. As such, discovery formally opened in the Federal
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`Court Action following the parties’ Rule 26(f) Conference.
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`Nevertheless, Applicant would have the Board delay ruling on Opposer’s Motion to
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`Suspend (which if granted would stay this entire Opposition Proceeding while these same issues
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`and much more are decided in the Federal Court Action), until after the Board first issues a
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`decision as to whether Applicant has even stated claim in its Amended Counterclaim, and then to
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`delay further until after the federal court rules on Defendants’ Motion to Stay the Federal Court
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`Action (which was filed almost two weeks after Opposer’s Motion to Suspend in this
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`Proceeding). Applicant’s proposed course of action is without merit or any basis, and should not
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`be countenanced.
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`As is evident from Applicant’s procedural posturing, Applicant’s real aim is to increase
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`the parties’ expense and waste judicial issues by delaying an inevitable decision that could,
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`would, and should be decided once and for all in the Federal Court Action. Further, a decision
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`by the Board may be “appealed” to district court anyway where it would be subject to de novo
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`review. 15 U.S.C. § 1071(b). The Federal Court Action encompasses all claims in the
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`Opposition Proceeding (the Application and claims and issues relating to the Application), but
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`the Opposition will not resolve all claims in the Federal Court Action. Applicant is contradictory
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`4
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`in its position, suggesting that a Board decision denying the Motion to Dismiss “is more likely to
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`be accorded preclusive effect,” while a Board decision granting the Motion to Dismiss without
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`leave to amend somehow would not be. (See 19 TTABVUE 3.) (See also id. at 26 (“On the
`
`other hand, if the Board grants Plaintiff’s motion and dismisses ARA’s counterclaim with
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`prejudice, it is questionable whether the Board’s would be accorded preclusive effect.”).) The
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`Board’s decision on the Motion to Dismiss does not impact the analysis as to whether the Board
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`should stay the Opposition Proceeding pending disposition of the Federal Court Action.
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`And contrary to Applicant’s assertion at the outset of its Response, this Motion is not
`
`“moot” (cf. 19 TTABVUE 2). Further, it is “germane” to Opposer’s Motion to Dismiss as the
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`final determination of the Federal Court Action will have a bearing on the issues before the
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`Board. (See also 18 TTABVUE 2 n.1 & 5.)
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`
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`As set out herein and in the Motion, the final resolution of the Federal Court Action will
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`be dispositive of the claims and issues in this Opposition Proceeding. To proceed further in this
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`forum would waste the resources of this Agency while the Court is considering broader claims
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`and issues beyond the right to registration.
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`CONCLUSION
`
`For all of the reasons set forth herein and in Opposer’s Motion, Opposer respectfully
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`requests that the Board grant its Motion and suspend this Opposition Proceeding in its entirety
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`pending disposition of the federal litigation.
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`5
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`Dated: April 15, 2019
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`
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`Respectfully submitted,
`
`DLA PIPER LLP (US)
`
`By: /s/ John M. Nading
`Ann K. Ford
`John M. Nading
`Ashley H. Joyce
`500 8th Street, N.W.
`Washington, D.C. 20004
`Tel. 202-799-4000
`Fax 202-799-5000
`Attorneys for Opposer/Counterclaim
`Respondent CFA Institute
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`6
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`EXHIBIT A
`EXHIBIT A
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`

`

`
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF VIRGINIA
`Charlottesville Division
`
`
`
`CIVIL ACTION NO.
`3:19-cv-00012-NKM-JCH
`
`
`§
`CFA INSTITUTE, a Virginia Non-Stock
`§
`Corporation,
`§
`
`
`§
`
`Plaintiff,
`§
`
`
`§
`v.
`
`§
`
`
`§
`AMERICAN SOCIETY OF PENSION
`§
`PROFESSIONALS & ACTUARIES,
`a Texas Corporation; AMERICAN SOCIETY §
`OF PENSION PROFESSIONALS &
`§
`ACTUARIES, a Texas Corporation, D/B/A
`§
`NATIONAL ASSOCIATION OF PLAN
`§
`ADVISORS; and AMERICAN SOCIETY OF §
`PENSION PROFESSIONALS &
`§
`ACTUARIES, a Texas Corporation, D/B/A
`§
`AMERICAN RETIREMENT
`§
`ASSOCIATION,
`§
`
`
`§
`
`Defendants.
`§
`
`
`
`
`PLAINTIFF’S RESPONSE IN OPPOSITION TO DEFENDANTS’ MOTION TO STAY
`
`
`
`
`
`
`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 1 of 21 Pageid#: 254
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`BACKGROUND ............................................................................................................ 1
`
`A.
`
`B.
`
`Claims and Relief in Federal Case Are Significantly Different ........................ 1
`
`Opposition Proceeding Already Suspended and Issues Not Even Joined ........ 4
`
`II.
`
`ARGUMENT ................................................................................................................. 4
`
`A.
`
`B.
`
`C.
`
`Stage of Litigation .............................................................................................. 5
`
`Simplification of the Matters at Issue ................................................................ 6
`
`Prejudice to Plaintiff ........................................................................................ 14
`
`III. CONCLUSION ............................................................................................................ 15
`
`
`
`
`
`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 2 of 21 Pageid#: 255
`
`- i -
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`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,
`237 F.3d 198 (3d Cir. 2000) ................................................................................................ 11
`
`American Bakeries Co. v. Pan-O-Gold Baking Co.,
`650 F. Supp. 563, 2 USPQ2d 1208 (D. Minn. 1986) .............................................................. 7
`
`ASCII Corp. v. STD Entm’t USA, Inc.,
`844 F. Supp. 1378 (N.D. Cal. 1994) .................................................................................... 14
`
`B&B Hardware, Inc. v. Hargis Indus., Inc.,
`135 S.Ct. 1293 (2015) ..................................................................................................... 9, 10
`
`Biogaia AB v. Nature’s Way Prod., Inc.,
`No. 5:10-CV-449-FL, 2011 WL 3664350 (E.D.N.C. Aug. 18, 2011) ................................... 14
`
`Bonutti Skeletal Innovations, L.L.C. v. Zimmer Holdings, Inc.,
`No. 12-cv-1107-GMS, 2014 U.S. Dist. LEXIS 47430 (D. Del. Apr. 7, 2014) ...................... 13
`
`C–Cure Chemical Co. v. Secure Adhesives Corp.,
`571 F. Supp. 808 (W.D.N.Y. 1983) ..................................................................................... 11
`
`Canatelo LLC v. AXIS Commc’ns AB,
`No. 13-1227-GMS, 2014 U.S. Dist. LEXIS 161801
`(D. Del. May 14, 2014) ....................................................................................................... 13
`
`Cellectis S.A. v. Precision Biosciences, Inc.,
`No. 5:08-CV-00119-H, 2010 WL 3430854 (E.D.N.C. Aug. 31, 2010) ................................. 14
`
`Celorio v. On Demand Books LLC,
`No. 12-821-GMS, 2013 U.S. Dist. LEXIS 121449
`(D. Del. Aug. 21, 2013) ....................................................................................................... 14
`
`Citicasters Co. v. Country Club Commc’ns,
`No. 97-0678-RJK, 1997 WL 715034 (C.D. Cal. July 21, 1997) ........................................... 12
`
`Cornerstone BioPharma, Inc. v. Vision Pharma, LLC,
`No. 5:07-CV-00389-F, 2008 U.S. Dist. LEXIS 76374
`(E.D.N.C. Feb. 15, 2008) ..................................................................................................... 13
`
`Driving Force, Inc. v. Manpower, Inc.,
`498 F. Supp. 21 (E.D. Pa. 1980) .................................................................................... 10, 11
`
`
`
`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 3 of 21 Pageid#: 256
`
`- ii -
`
`
`
`

`

`
`
`Duke Univ. v. Universal Prod. Inc.,
`2014 WL 1795708 (M.D.N.C. May 6, 2014) ................................................................ passim
`
`E. & J. Gallo Winery v. F. & P. S.p.A.,
`899 F. Supp. 465 (E.D. Cal. 1994) ..................................................................................... 7, 8
`
`Ever Win Int’l Corp. v. RadioShack Corp.,
`902 F. Supp. 2d 503 (D. Del. 2012) ..................................................................................... 13
`
`General Mills Inc. v. Fage Dairy Processing Indus. SA,
`100 USPQ2d 1584 (TTAB 2011) .......................................................................................... 6
`
`Goya Foods, Inc. v. Tropicana Prod., Inc.,
`846 F.2d 848 (2d Cir. 1988) ......................................................................................... passim
`
`MercExchange, L.L.C. v. eBay, Inc.,
`500 F. Supp. 2d 556 (E.D. Va. 2007) ................................................................................... 13
`
`Microchip Tech., Inc. v. Motorola, Inc.,
`No. 01-264-JJF, 2002 WL 32332753 (D. Del. May 28, 2002) .............................................. 12
`
`Mkt.-Alerts Pty. Ltd. v. Bloomberg Fin. L.P.,
`922 F. Supp. 2d 486 (D. Del. 2013) ..................................................................................... 14
`
`Mushroom Makers, Inc. v. R.G. Barry Corp.,
`580 F.2d 44 (2d Cir. 1978), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022 (1979) ...................... 8
`
`Nat’l Mktg. Consultants, Inc. v. Blue Cross Blue Shield Ass’n,
`No. 87 C 7161, 1987 WL 20138 (N.D. Ill. Nov. 19, 1987) ................................................... 12
`
`Neste Oil OYJ v. Dynamic Fuels, LLC,
`No. 12-1744-GMS, 2013 U.S. Dist. LEXIS 92416 (D. Del. July 2, 2013) ............................ 13
`
`New Orleans La. Saints LLC v. Who Dat? Inc.,
`99 USPQ2d 1550 (TTAB 2011) .......................................................................................... 10
`
`Nexans Inc. v. Belden Inc.,
`No. 12-1491-SLF-SRF, 2014 U.S. Dist. LEXIS 20116 (D. Del. Feb. 19, 2014) ................... 13
`
`NSM Res. Corp. v. Microsoft Corp.,
`113 USPQ2d 1029 (TTAB 2014) .......................................................................................... 6
`
`NTP, Inc. v. Palm, Inc.,
`No. 3:06-CV-836, 2007 U.S. Dist. LEXIS 97141 (E.D. Va. Mar. 22, 2007) ......................... 13
`
`Other Tel. Co. v. Conn. Nat’l Tel. Co., Inc.,
`181 USPQ 125 (TTAB 1974), petition denied, 181 USPQ 779 (Comm’r 1974) ................... 10
`
`
`
`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 4 of 21 Pageid#: 257
`
`- iii -
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`
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`

`

`
`
`PHC, Inc. v. Pioneer Healthcare, Inc.,
`75 F.3d 75 (1st Cir. 1996) ................................................................................................ 7, 15
`
`Rhoades v. Avon Prod., Inc.,
`504 F.3d 1151 (9th Cir. 2007) ............................................................................................... 7
`
`Rothschild Mobile Imaging Innovations, LLC v. Mitek Sys., Inc.,
`No. CV 14-1142-GMS, 2015 WL 4624164 (D. Del. July 31, 2015) ..................................... 14
`
`SafeRack, LLC v. Bullard Co.,
`No. 2:17-CV-1613-RMG, 2018 WL 3696557 (D.S.C. Aug. 3, 2018) ............................ passim
`
`Spring Air Co. v. Englander Licensing Liab. Co.,
`No. 01 C 7140, 2001 WL 1543510, at *2 (N.D. Ill. Nov. 29, 2001) ..................................... 12
`
`Sun Drop Sales Corp. of Am. v. Seminole Flavor Co.,
`159 F. Supp. 828 (E.D. Tenn. 1958) .................................................................................... 12
`
`Univ. of Va. Patent Found. v. Hamilton Co.,
`No. 3:13-cv-00033, 2014 U.S. Dist. LEXIS 135202 ............................................................ 13
`
`Statutes & Rules
`
`15 U.S.C. § 1052(d) .................................................................................................................... 8
`
`15 U.S.C. § 1071(b) .................................................................................................................... 3
`
`Fed. R. Civ. P. 12(b) ................................................................................................................... 1
`
`Fed. R. Civ. P. 26(f) .................................................................................................................... 5
`
`Other Authorities
`
`37 C.F.R. § 2.120(h)(1) ............................................................................................................... 6
`
`37 C.F.R. § 2.127(f) .................................................................................................................... 6
`
`
`
`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 5 of 21 Pageid#: 258
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`- iv -
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`

`
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`Plaintiff CFA Institute (“CFA Institute” or “Plaintiff”), by and through the undersigned
`
`counsel, files this Response in Opposition to Defendants American Society of Pension
`
`Professionals & Actuaries (“ASPPA”), ASPPA d/b/a National Association of Plan Advisors
`
`(“NAPA”), and ASPPA d/b/a American Retirement Association’s (“ARA”) (ASPPA, NAPA,
`
`and ARA, collectively, “Defendants”) Motion to Stay (Dkt. No. 16) (“Motion to Stay” or
`
`“Motion”). For all of the reasons set forth herein, Defendants’ Motion is without merit and must
`
`be denied.
`
`On February 21, 2019, Plaintiff filed a five-count Complaint for federal and state
`
`trademark infringement and unfair competition arising out of Defendants’ use of the infringing
`
`mark CPFA in connection with a certification program for professionals in the field of financial
`
`planning and retirement, and related educational and administrative services (“Complaint”) (Dkt.
`
`No. 1). On the deadline to respond to the Complaint (March 18, 2019), Defendants instead filed
`
`the Motion to Stay, without raising any of the grounds in Fed. R. Civ. P. 12(b) for responding in
`
`the alternative to a Complaint. For this reason, Defendants have not filed a responsive pleading
`
`to the Complaint and have waived their right to assert any of the Rule 12(b) defenses.
`
`I.
`
`BACKGROUND
`
`A.
`
`Claims and Relief in Federal Case Are Significantly Different
`
`Defendants’ Motion is misleading as it glosses over the significant differences in the
`
`claims and relief sought by Plaintiff in its Complaint in this federal case as compared to a
`
`pending Opposition Proceeding before the United States Trademark Trial and Appeal Board
`
`(“Board” or “TTAB”), No. 91239462 (“Opposition Proceeding” or “TTAB Opposition”).
`
`Contrary to Defendants’ characterization of the two actions, the only issue in the Opposition
`
`
`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 6 of 21 Pageid#: 259
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`

`

`
`
`Proceeding – the right to registrability of an applied-for mark for the applied-for services – is a
`
`mere subset of the federal case.
`
`Specifically, the TTAB Opposition concerns one U.S. service mark application, Serial
`
`No. 87103390, for the mark NAPA CPFA CERTIFIED PLAN FIDUCIARY ADVISER &
`
`Design (“Application”) (depicted in the Motion (Mot. at 2), and reproduced here), filed by one of
`
`the Defendants, ASPPA:1
`
`
`
`The outcome of the TTAB Opposition will have no impact on Defendants’ ability to use the
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`composite mark depicted in the Application;2 it will only impact the registration thereof for the
`
`specific applied-for services. Importantly, too, the outcome of the TTAB Opposition will have
`
`no impact on Defendants’ ability to use the infringing mark CPFA by itself or in any other
`
`variation.
`
`By comparison, in the federal case, Plaintiff seeks an injunction as to use and registration
`
`of Defendants’ infringing mark CPFA, Plaintiff’s CFA Marks, or any mark confusingly similar
`
`to the CFA Marks, and related damages. In other words, Plaintiff’s claims for relief in the
`
`federal case are not limited to the specific manner in which “CPFA” appears in the Application,
`
`and a ruling by the Board as to the validity of the Application alone would have no bearing on
`
`Defendants’ ability to use the infringing mark CPFA in any and all forms, including with or
`
`
`1 Defendants mislead again in their Motion by stating that: “In the instant action [(federal case)],
`all of Plaintiff’s claims revolve around the central allegation that the NAPA CPFA Trademark
`[(which is defined as the composite mark depicted in the Application)] is likely to cause
`confusion with Plaintiff’s CFA mark.” (Mot. at 5.) A simple read of the Complaint shows that
`this is incorrect.
`2 Indeed, as stated in the Complaint, Defendants’ are inconsistent in the spelling of “ADVISER”
`and “ADVISOR,” appearing to use it both ways. (Compl. at 11 ¶ 39; 13, ¶ 47.)
`
`
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`Case 3:19-cv-00012-NKM-JCH Document 23 Filed 04/01/19 Page 7 of 21 Pageid#: 260
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`- 2 -
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`without other words, designs, or stylization. Moreover, any decision of the Board would not
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`simplify the issues in question in this case as it would not have a preclusive effect on this Court’s
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`consideration of the claims for trademark infringement and unfair competition arising out of
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`Defendants’ use of the infringing mark CPFA.3
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`Further, a decision of the Board is not final as it may be “appealed” to district court
`
`where it would be subject to de novo review. 15 U.S.C. § 1071(b). See, e.g., Duke Univ. v.
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`Universal Prod. Inc., 2014 WL 1795708, at *3 (M.D.N.C. May 6, 2014) (acknowledging “the
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`availability of a de novo proceeding in the district court, as well as the availability of suits in
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`federal court without any prior resort to the TTAB”) (internal citations omitted).
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`For at least these reasons then, the Board’s determination would not have a preclusive
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`effect or materially aid or streamline the Court’s disposition of this case. Fairness and judicial
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`efficiency dictate that the federal case must continue for the injunctive relief Plaintiff seeks
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`relating to any and all use and registration of the infringing mark CPFA by all Defendants and
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`the damages resulting therefrom. To do otherwise would seriously prejudice Plaintiff because a
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`Board decision can be re-litigated in court while Plaintiff suffers harm and prejudice from the
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`delay. Accordingly, on March 7, 2019, prior to Defendants’ filing of the instant Motion, Plaintiff
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`moved to suspend the TTAB Opposition pending the outcome of this federal case (“Motion to
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`Suspend Opposition”) (Dkt. No. 16-1 (Exh. A (Compl.), omitted)), because the federal case
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`encompasses all claims in the TTAB Opposition (the Application and claims and issues relating
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`to the Application), but the TTAB Opposition will not resolve all claims in this case.
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`3 In fact, Defendants conclude their Motion with the assertion that “if the Board grants Plaintiff’s
`motion and dismisses ARA’s counterclaim with prejudice, it is questionable whether the Board’s
`[sic] would be accorded preclusive effect.” (Mot. at 15.) Defendants are clearly trying to have it
`both ways.
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`B.
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`Opposition Proceeding Already Suspended and Issues Not Even Joined
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`Defendants’ Motion is also misleading in the characterization of the procedural posture of
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`the TTAB Opposition. Plaintiff initiated the TTAB Opposition on February 12, 2018, when it
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`filed the Notice of Opposition as to the Application (Dkt. No. 16-2), and the TTAB Opposition is
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`still in the early stages as the claims have not even been joined. ASPPA has not stated a
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`counterclaim to which Plaintiff has had to answer; indeed, the Board has suspended any further
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`proceedings pending resolution of Plaintiff’s Motion
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`to Dismiss ASPPA’s Amended
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`Counterclaim, which Plaintiff filed after successfully dismissing ASPPA’s initial counterclaim.
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`As alleged in the Complaint, Plaintiff filed this action to stop Defendants’ expansion of a
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`business under the infringing mark CPFA by enjoining any and all use of “CPFA.” (Compl. at
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`12, ¶ 43.) At the time Plaintiff filed the TTAB Opposition a year earlier, Plaintiff was aware of
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`the Application, but the extent and manner of Defendants’ actual use of “CPFA” was not clear;
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`in fact, the identity of Defendants was also unclear. (See, e.g., Compl. at 2, ¶¶ 2-4; 11, ¶ 39; 12,
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`¶¶ 41-42.)4 As it became apparent Defendants were in fact determined to move forward with
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`rolling out a business under “CPFA,” Plaintiff promptly filed this federal case for injunctive
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`relief and damages given the urgency and harm to Plaintiff caused by Defendants’ use of the
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`infringing mark CPFA.
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`II.
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`ARGUMENT
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`“A court’s power to stay proceedings is incidental to the power inherent in every court to
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`control the disposition of the causes on its docket with economy of time and effort for itself, for
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`counsel, and for litigants. When considering a motion to stay, the court should consider:
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`4 For one thing, some of the Defendants appear to “offer” at least nine different credentials,
`including the credentials/designations PFC and QPFC, which may or may not have been phased-
`out following the recent adoption of the infringing mark CPFA. (See, e.g., Compl. at 11, ¶ 37;
`12, ¶¶ 41-42.)
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`(1) whether discovery is complete and a trial date is scheduled; (2) whether a stay would simplify
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`the matters at issue; and (3) whether a stay would unduly prejudice or clearly disadvantage the
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`non-moving party. Regardless, to issue a stay, a court must be satisfied that a pressing need
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`exists, and that need outweighs any possible harm to the interests of the non-moving party.”
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`SafeRack, LLC v. Bullard Co., No. 2:17-CV-1613-RMG, 2018 WL 3696557, at *1 (D.S.C. Aug.
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`3, 2018) (internal citations and quotation marks omitted). Here, none of these factors favor a
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`stay of this case. Indeed, to do so would be an abuse of discretion under these circumstances.
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`A.
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`Stage of Litigation
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`The procedural posture of the two matters does not favor a stay, because this case will
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`proceed more quickly than the TTAB Opposition and will resolve all contested issues between
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`the parties. Plaintiff filed its Complaint on February 21, 2019. In lieu of answering, Defendants
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`filed their Motion on March 18, 2019. Pursuant to the Court’s March 18, 2019 Pretrial Order
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`(Dkt. No. 15), counsel for the parties held their Fed. R. Civ. P. 26(f) Conference on March 27,
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`2019, and submitted a Joint Motion to Amend Pretrial Order on March 28, 2019. (Dkt. No. 18.)
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`As such, discovery formally opened following the parties’ Rule 26(f) Conference.
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`By comparison, though the TTAB Opposition was filed a year earlier in February 2018,
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`the TTAB Opposition is still in the very early stages as the claims have not even been joined. In
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`fact, the TTAB Opposition is currently suspended pending resolution of Plaintiff’s Motion to
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`Dismiss ASPPA’s Amended Counterclaim. Moreover, under the Board’s scheduling order, the
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`Discovery period has not opened in the TTAB Opposition and thus the parties have not
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`exchanged Initial Disclosures nor any discovery requests.
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`As such, this factor favors denying the Motion to Stay and proceeding in the federal case.
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`B.
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`Simplification of the Matters at Issue
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`The TTAB Opposition will not simplify matters in the federal case, while the federal case
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`will be entirely dispositive of and binding on the Board proceeding. An opposition proceeding is
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`unlike adversarial proceedings in federal court for several reasons. Foremost, the Board is an
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`administrative tribunal with limited subject matter jurisdiction. The rules of procedure for the
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`TTAB state that: the “Board is empowered to determine only the right to register . . . . The
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`Board is not authorized to determine the right to use, nor may it decide broader questions of
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`infringement or unfair competition. Similarly, the Board, being an administrative tribunal, has
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`no authority to declare any portion of the Act of 1946 [(the Lanham Act)], or any other act of
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`Congress, unconstitutional.” Trademark Trial and Appeal Board Manual of Procedure
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`(“TBMP”) § 102.01.
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`In addition, the Board cannot award monetary damages or injunctive relief, such as to
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`stop trademark use (see TBMP § 102.01), and the Board has only a limited ability to sanction.
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`See NSM Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1035 n.10 (TTAB 2014) (stating
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`Board cannot assess monetary damage awards); General Mills Inc. v. Fage Dairy Processing
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`Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (stating Board has no authority to determine
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`the right to use, or the broader questions of infringement, unfair competition, damages or
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`injunctive relief); see, e.g., TBMP §§ 502.05 & 527.01(a); 37 C.F.R. §§ 2.127(f) (“Board will
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`not hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any
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`party”) & 2.120(h)(1). As such, because “[t]he Board is empowered to determine only the right
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`to register” (TBMP § 102.01), the only issue in the TTAB Opposition is the registrability of the
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`Application.
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`Recognizing the differences in relief available between the TTAB and federal court,
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`district courts in the Fourth Circuit and other Courts of Appeals have declined to grant a stay of a
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`federal case pending a TTAB decision.5 See, e.g., Rhoades v. Avon Prod., Inc., 504 F.3d 1151,
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`1165 (9th Cir. 2007) (“On the other hand, if, as here, a potential infringement claim ‘requires th