Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1106299
`01/07/2021
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`ESTTA Tracking number:
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`Filing date:
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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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`91243801
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`Party
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`Correspondence
`Address
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`Defendant
`Chicago Mercantile Exchange Inc.
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`MATTHEW D WITSMAN
`NORVELL IP LLC
`PO BOX 2461
`CHICAGO, IL 60690
`UNITED STATES
`Primary Email: officeactions@norvellip.com
`Secondary Email(s): mwitsman@norvellip.com
`773-966-2513
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Other Motions/Submissions
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`Matthew D. Witsman
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`officeactions@norvellip.com, mwitsman@norvellip.com
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`/Matthew D. Witsman/
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`01/07/2021
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`210107 - CMEs Response and Opposition to Opposer and Petitioners Requ est
`for Reconsideration.pdf(1286215 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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`INTERCONTINENTAL
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`EXCHANGE, INC.
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`Opposer/Petitioner
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`v.
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`CHICAGO MERCANTILE
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`EXCHANGE INC.
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`Applicant/Registrant
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`Opposition Nos.
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`91243801 (parent)
`91245132
`91245133
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`Cancellation Nos. 92070427
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`92070429
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`92070457
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`92070458
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`CME’S RESPONSE AND OPPOSITION TO OPPOSER/PETITIONER’S REQUEST
`FOR RECONSIDERATION
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`Pursuant to 37 C.F.R. § 2.127(b) and TBMP § 518, Applicant/Registrant Chicago
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`Mercantile Exchange Inc. (“CME”) hereby submits its response and opposition to
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`Opposer/Petitioner’s Request for Reconsideration of the Board’s November 20, 2020
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`order (the “November 20 Order”) denying Intercontinental Exchange, Inc.’s (“ICE”) motion
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`to resume this proceeding (the “Proceeding”).
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`The Board did not err in denying ICE’s motion, and it applied the proper standard
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`in justifying the suspension. Indeed, the district court litigation pending between the
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`parties “may have a bearing” on the issues in this Proceeding, as claims in the litigation
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`bear directly on ICE’s allegations in this Proceeding. Specifically, ICE is currently
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`asserting in the litigation that CME allowed the SPAN mark to become generic by failing
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`to police use of the SPAN trademark, a claim that is directly relevant to the validity of
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`CME’s applications and registrations in this Proceeding. Further, ICE has failed to show
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`1
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`

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`that suspension is improper or that any significant prejudice will occur to ICE if the
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`Proceeding remains suspended until the litigation is concluded. For these reasons, CME
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`asks that Opposer/Petitioner’s Request for Reconsideration be denied.
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`I.
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`BACKGROUND
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`On February 23, 2018, CME filed a complaint in the United States District Court
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`for the Northern District of Illinois (the “Court”) alleging that ICE and its subsidiaries
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`engaged in trademark infringement, among other claims, by impermissibly using the
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`SPAN trademark and thereby infringing CME’s long-standing trademark rights. That
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`litigation was captioned Chicago Mercantile Exchange, Inc. v. ICE Clear US, Inc. et al.,
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`Case No. 18-cv-01376 (the “Litigation”). ICE and its subsidiaries, ICE Clear U.S., Inc. and
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`ICE Clear Europe Ltd., asserted counterclaims to cancel CME’s U.S. registrations for PC-
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`SPAN, SPAN, and SPAN RISK MANAGER (Reg. Nos. 1,689,882; 1,689,883; 2,386,878;
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`and 2,828,376). However, the ICE subsidiaries ultimately withdrew their cancellation
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`counterclaims after CME moved to dismiss on the basis that the doctrine of licensee
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`estoppel prohibits licensees from challenging the validity of a trademark. See, e.g.,
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`Chrysler Motors Corp. v. Alloy Auto Co. Inc., 661 F. Supp. 191 (N.D. Ill. 1987) (finding
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`that a former licensee was estopped from challenging the validity of its former licensor’s
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`trademark based on facts arising during the course of the license). Later, in advance of
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`trial, CME filed a Motion to Dismiss its claims against ICE, to which ICE responded with
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`extensive argument that the Litigation and the Proceeding were so intertwined that the
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`2
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`Litigation should be stayed pending resolution of the Proceeding. Exhibit A at 13; see also
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`Docket Entry No. 10 (at Exhibit A).
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`The Court granted CME’s Motion to Dismiss on July 31, 2020, and also denied
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`ICE’s request to stay the Litigation pending the outcome of the Proceeding. Now, ICE
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`requests reconsideration of the November 20 Order and argues that the Proceeding
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`should not be suspended in light of the Litigation. ICE claims that maintaining the
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`suspension instituted by the November 20 Order “harms, and does not serve, the interest
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`of judicial economy and would substantially prejudice ICE if it is left with no vehicle to
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`challenge the SPAN Marks.” Exhibit B at 5.
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`As explained below, the Board’s November 20 Order is not a ruling that CME’s
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`marks are valid; it is a procedural decision to defer to the Court during the pending
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`Litigation. Moreover, because ICE was originally a party to the Litigation, and it still
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`controls the current defendants, numerous issues relating to ICE and its subsidiaries are
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`being addressed or have been addressed in the Litigation that could be appealed,
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`including some relating to ICE’s invalidity claims. Therefore, there remain a number of
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`issues in the Litigation that may have a bearing on those in the Board Proceeding. Thus,
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`suspension is justified under the Board’s broad discretion to suspend proceedings.
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`II.
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`ARGUMENT
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`Opposer/Petitioner’s Request to Reconsider should be denied because the Board
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`used the proper legal standard, and there was no clear error or abuse of discretion.
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`Despite ICE’s arguments, the issue of validity in this Proceeding overlaps with several
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`pending issues in the Litigation, a fact that ICE has publicly acknowledged. Furthermore,
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`CME seeks an injunction in the Litigation to prevent ICE’s subsidiaries from using the
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`3
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`SPAN mark, and, if successful, ICE will have no standing in the Proceeding. Finally, ICE
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`cannot point to any real prejudicial effect, especially as ICE still has avenues of appeal
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`available after the Litigation concludes. Accordingly, Opposer/Petitioner’s Request for
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`Reconsideration should be denied.
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`A.
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`A Request for Reconsideration is Improper Here.
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`As an initial matter, pursuant to 37 C.F.R. § 2.127(b) and TBMP § 518, a request
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`for reconsideration should not be used to reargue issues presented in the original briefing
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`or to introduce additional evidence. Instead, a request for reconsideration should be used
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`only when the Board clearly erred in deciding an issue based on the facts before it and
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`prevailing authorities. 37 C.F.R. § 2.127(b). In this case, as explained below, the Board
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`applied the proper standard in analyzing the facts at hand, and it did not err in reaching
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`its decision. Therefore, the Request for Reconsideration should be denied.
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`B.
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`The Board Used the Proper Standard in Maintaining the Suspension.
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`The Board has broad discretion to suspend TTAB proceedings whenever it shall
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`come to the attention of the Board that a party or parties to a pending case are engaged
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`in a civil action “which may have a bearing on the case.” 37 C.F.R. § 2.117(a). The
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`purpose behind a suspension is one of judicial economy and “[u]nless there are unusual
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`circumstances, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding may have a bearing on the issues before the
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`Board.” TBMP § 510.02(a). In fact, the Board’s policy is “to suspend in favor of civil
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`action.” Id.; see also MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:47 (4th
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`ed.) (“It is standard procedure for the Trademark Board to stay … proceedings pending
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`the outcome of court litigation between the same parties involving related issues.”).
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`4
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`In addition, the case law is clear that the prompt adjudication of a district court claim of
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`infringement far outweighs the value of reinstituting proceedings at the USPTO. See, e.g.,
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`Goya Foods, Inc. v. Tropicana Products, Inc., 846 F.2d 848, 854, 6 USPQ.2d 1950
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`(2d Cir. 1988) (“But where, as in the pending case, a district court suit concerns
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`infringement, the interest in prompt adjudication far outweighs the value of having the
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`views of the PTO.”). ICE has presented no “unusual circumstances” to deviate from the
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`Board’s regular practice. See Jvmax, Inc. v. ESR Performance Corp., Cancellation No.
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`92063873, 2018 WL 1010721, at *1 (TTAB Feb. 15, 2018) (denying respondent’s motion
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`to suspend because unusual circumstances were present, when the Board found that the
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`Federal case, which had been filed in the final stage of the Board proceeding, suggested
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`an attempt to forestall the final outcome of the cancellation action). Instead, the facts
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`indicate that the civil litigation has a bearing on this Proceeding such that the standard
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`suspension should be followed.
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`In the November 20 Order, the Board said it was suspending the Proceeding
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`because there are still issues remaining for the Court that involve the pleaded marks in
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`the Proceeding. Docket Entry No. 14 at 3. This decision was proper because the
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`Litigation, in fact, may have a bearing on the Proceeding. For example, ICE may appeal
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`its dismissal from the Litigation, and, if the appeal is granted and the case remanded, ICE
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`would be asserting the same invalidity claims in both the Litigation and the Proceeding.
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`In addition, the ICE subsidiaries have asserted breach of contract counterclaims
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`against CME in the Litigation. These counterclaims include claims that CME has failed to
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`exercise any control over the nature of its licensees’ goods or services under the SPAN
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`marks and has allowed the unlicensed use of the SPAN marks by third parties without
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`5
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`adequate policing and enforcement. These claims all relate to the issue of validity and
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`may have a bearing on the validity challenges that ICE has raised in the Proceeding.
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`Finally, CME has sought injunctive relief against ICE’s subsidiaries in the Litigation. If
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`CME is successful, then ICE will have no standing in this Proceeding. It is simply
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`indisputable that there are pending issues in the Litigation that may have a bearing on
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`the Proceeding.
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`C.
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`Even ICE Publicly Acknowledged that Evidence Relating to its
`Invalidity Claims Overlaps with Issues in the Pending Litigation.
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`ICE claims in the Request for Reconsideration that, because the validity of the
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`SPAN marks is no longer directly at issue in the Litigation, the Court’s decision will have
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`no bearing on the Board’s validity determination. Exhibit B at 3. However, issues before
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`the TTAB and a federal court may still overlap and thus invoke issue preclusion in the
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`absence of identical claims. See, e.g., B & B Hardware, Inc. v. Hargis Industries, Inc., 575
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`U.S. 138 (2015) (stating “when a district court, as part of its judgment, decides an issue
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`that overlaps with part of the TTAB’s analysis, the TTAB gives preclusive effect to the
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`court’s judgment”). Therefore, despite the fact that additional and different claims may be
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`before the TTAB and the Federal Court, a prior determination on an issue will preclude a
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`subsequent dispute of the same issue.
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`ICE has openly and publicly argued that invalidity evidence is overlapping and
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`relevant in both this Proceeding and the Litigation. Just before the trial began in the
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`Litigation, CME moved in limine to exclude certain evidence related to invalidity on the
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`basis that ICE and its validity claims had been dismissed and because ICE’s subsidiaries
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`were barred from bringing any such claim by the doctrine of licensee estoppel. ICE and
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`its subsidiaries opposed that motion, arguing that evidence bearing on validity was also
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`6
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`admissible for other claims that remained in the Litigation. Specifically, ICE’s subsidiaries
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`sought to introduce evidence showing that various third parties were using the SPAN
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`trademark without attribution, in an attempt to support its claims that CME failed its
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`contractual obligation to control the nature and quality of goods and services with which
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`the SPAN mark is used. Exhibit C. Thus, the Court’s pending decision in the Litigation
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`regarding ICE’s breach of contract claim may very well have a bearing on ICE’s validity
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`claims in the Proceeding. In fact, ICE includes this failure to police argument in each of
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`its Petitions to Cancel, using the following language:
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`Upon information and belief, Registrant has not actually exercised
`8.
`any control over the nature and quality of its licensees’ licensed goods or
`services under the SPAN Marks.
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`Upon Information and belief, Registrant has knowingly allowed
`9.
`unlicensed use of the SPAN Marks to unlicensed third-parties without
`adequate policing and enforcement.
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`Exhibit D.
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`The Court’s decision on ICE’s pending breach of contract claims, addressing CME’s
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`alleged failure to control the nature and quality of goods and services, is identical to the
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`claims ICE raised in each of its Petitions to Cancel. Moreover, ICE has never moved to
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`amend any of its Petitions to Cancel. Therefore, ICE’s argument that the Litigation has no
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`bearing on the Proceedings is simply incorrect.
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`When ICE anticipated being dismissed from the Litigation, it requested that the
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`Litigation be stayed pending resolution of this Proceeding on the basis that a stay of the
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`Litigation would lessen the burden on the parties and the Court and streamline the
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`eventual trial. Exhibit A at 13. This argument is inconsistent with ICE’s current request to
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`resume this Proceeding. Back then, ICE argued that there was a connection between the
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`7
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`Litigation and the Proceeding, such that the outcome of one was dependent on the other.
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`Now, ICE argues that no such connection exists, and that the Proceeding should be
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`resumed, ignoring the pending Litigation. While convenient, this change of position is not
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`supported by the facts. Nor is it consistent with the Board’s discretion to stay proceedings.
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`C.
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`The Decision to Suspend the Proceeding is Not a Final Judgment.
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`ICE claims that maintaining the suspension instituted by the November 20 Order
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`“harms, and does not serve, the interest of judicial economy and would substantially
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`prejudice ICE if it is left with no vehicle to challenge the SPAN Marks.” Exhibit B at 5.
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`Again, these statements are more than gross exaggerations, they are factually incorrect.
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`ICE will still have avenues of appeal left relating to issues decided in the Litigation.
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`As the PTO aptly noted in the November 20 Order, the time to appeal in the Litigation has
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`not passed and there has been no order or ruling that ends the Litigation. Docket Entry
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`No. 14 at 4. ICE conveniently fails to notify the Board that the bench trial in the Litigation
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`has concluded and that the parties are simply waiting for a final decision from the Court.
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`Therefore, any appeal that might be filed in the Litigation will be filed within the coming
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`months. If ICE appeals its dismissal from the Litigation and the appeal is granted, ICE will
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`undoubtedly reassert its invalidity claims against the SPAN mark, which are the same
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`facts and claims that ICE used to originally suspend this Proceeding. Therefore, the
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`Litigation undoubtedly has a bearing on the issues before the Board.
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`D.
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`The Litigation May Actually Determine ICE’s Standing in the
`Proceeding.
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`ICE also states that it has standing in the Proceeding simply because any damage
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`to its subsidiaries will lead to the damage of ICE. Exhibit B at 4. However, ICE has
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`previously stated in the Litigation that it has no customers and has never used the SPAN
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`8
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`trademark, and, as explained above, CME’s request for relief in the Litigation includes an
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`injunction against ICE’s subsidiaries and all those “acting in active concert or participation
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`with them.” Exhibit E at 28–29. If the injunction is granted, ICE’s subsidiaries would have
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`no right to use the SPAN mark, which CME argues would eliminate ICE’s standing in this
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`Proceeding. If the ICE subsidiaries have no right to use the SPAN mark, there can be no
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`damage to the ICE subsidiaries from the use of the SPAN mark and, therefore, ICE would
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`have no standing in this Proceeding. Thus, for this reason as well, the final decision on
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`injunctive relief in the Litigation may also have a bearing on the issues before the Board
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`in this Proceeding.
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`III.
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`CONCLUSION
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`The Board properly maintained the suspension as the issues in the Litigation “may
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`have a bearing” on the Proceeding. Despite ICE’s contentions, the absence of a direct
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`claim for invalidity in the Litigation does not mean that issues in the Litigation will not have
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`a bearing on the Proceeding. Instead, as explained above, there are a number of issues
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`in the Litigation that are related to those in the Proceeding such that suspension of the
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`Proceeding promotes judicial economy and efficiency. For example, ICE asserted
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`claims—in both the Litigation and the Proceeding—regarding CME’s failure to control the
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`nature and quality of its licensees’ goods and services and failure to police use of the
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`SPAN Mark. Finally, suspension promotes judicial economy at this time because the trial
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`in the Litigation has ended, and any appeals would be filed in the near future.
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`For the reasons explained above, ICE’s Petition to overturn the suspension should
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`be denied.
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`9
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`Respectfully submitted,
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`By: /s/ Matthew D. Witsman
`Joseph V. Norvell (Reg. No. 6225747)
`James M. McCarthy (Reg. No. 6225583)
`Tom M. Monagan (Reg. No. 6278060)
`Matthew D. Witsman (Reg. No. 6327790)
`Andrea J. Calvert (Reg. No. 6329507)
`NORVELL IP LLC
`PO Box 2461
`Chicago, IL 60690
`Telephone:
`(888) 315-0732
`Facsimile:
`(312) 268-5063
`officeactions@norvellip.com
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`Dated: January 7, 2021
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`10
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of CME’S RESPONSE TO
`OPPOSER/PETITIONER’S REQUEST FOR RECONSIDERATION was electronically
`filed on January 7, 2021 with the Trademark Trial and Appeal Board, and served upon
`Opposer via electronic mail to:
`
`Gina L. Durham
`Michael Geller
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, IL 60606-0089
`gina.durham@dlapiper.com
`Michael.geller@dlapiper.com
`
`Marc E Miller
`DLA Piper, LLP US
`1251 Avenue of the Americas
`24th Floor
`New York, New York 10020
`Marc.Miller@dlapiper.com
`
`Paul A. Taufer
`Michael Burns IV
`DLA Piper, LLP US
`One Liberty Place, 1650 Market Street
`Suite 4900
`Philadelphia, PA 19103
`paul.taufer@dlapiper.com
`michael.burns@dlapiper.com
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`Dated: January 7, 2021
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`By:
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`/s/ Matthew D. Witsman
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`11
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`EXHIBIT A
`EXHIBIT A
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`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 1 of 22 PageID #:15187
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Chicago Mercantile Exchange, Inc.,
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`
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`Plaintiff and
`Counterclaim-
`Defendant
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`Case No. 18-cv-1376
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`Judge Matthew F. Kennelly
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`Magistrate David Weisman
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`v.
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`ICE Clear US, Inc., ICE Clear Europe Limited,
`Intercontinental Exchange, Inc.,
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`Defendants and
`Counterclaim-
`Plaintiffs.
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`DEFENDANTS’ OPPOSITION TO PLAINTIFF’S RULE 41(A) MOTION TO DISMISS
`INTERCONTINENTAL EXCHANGE, INC. AND TO MOTION TO DISMISS
`INTERCONTINENTAL EXCHANGE, INC.’S COUNTERCLAIM
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`OR, IN THE ALTERNATIVE, IF THE COURT GRANTS CME’S MOTION,
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`DEFENDANTS’ MOTION TO STAY PENDING DISPOSITION OF TRADEMARK
`VALIDITY BY THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 2 of 22 PageID #:15188
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ...........................................................................................................1
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`RELEVANT FACTS .......................................................................................................3
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`III.
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`LEGAL STANDARD .....................................................................................................4
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`IV.
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`ARGUMENT ..................................................................................................................5
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`A.
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`The Court should Deny CME’s Motion Entirely ..................................................5
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`1.
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`2.
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`The Court Has Subject Matter Jurisdiction Over the SPAN Marks’
`Validity ....................................................................................................5
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`Alternatively, CME’s Voluntary Dismissal is Barred if ICE, Inc.’s
`Counterclaim Cannot Remain Pending For Independent
`Adjudication .............................................................................................8
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`3.
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`CME’s Voluntary Dismissal Would Prejudice All Defendants ..................8
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`a.
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`b.
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`c.
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`d.
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`e.
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`f.
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`CME’s Explanation for its Voluntary Dismissal is Plainly
`Pretextual ......................................................................................9
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`CME’s Excessive Delay in Voluntarily Dismissing Favors
`Denying the Motion ......................................................................9
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`ICE, Inc.’s Extensive Efforts in Preparing for Trial Favors
`Denying the Motion .................................................................... 10
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`Judicial Efficiencies Favor Denying the Motion .......................... 10
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`The Absence of a Covenant Not to Sue Favors Denying the
`Motion ........................................................................................ 11
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`Legal Prejudice to ICE US and ICE Europe Favors
`Denying the Motion .................................................................... 12
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`B.
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`If The Court Grants CME’s Motion, Dismissal Should Be Subject to the
`Following Conditions ......................................................................................... 12
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`1.
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`2.
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`Any Dismissal of ICE, Inc.’s Counterclaim Should Be Without
`Prejudice ................................................................................................ 12
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`This Action Should be Stayed Pending Resolution of the TTAB
`Proceedings ............................................................................................ 13
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`ii
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`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 3 of 22 PageID #:15189
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`3.
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`CME Should Be Required to Pay ICE Inc.’s Attorneys’ Fees and
`Costs ...................................................................................................... 14
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`V.
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`CONCLUSION ............................................................................................................. 15
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`iii
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`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 4 of 22 PageID #:15190
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`ABRO Indus., Inc. v. 1 New Trade, Inc.,
`2017 WL 468437 (N.D. Ind. Feb. 2, 2017) .......................................................................... 14
`
`Agretti v. ANR Freight Sys., Inc.,
`982 F.2d 242 (7th Cir. 1992) ........................................................................................... 5, 12
`
`Already, LLC v. Nike, Inc.,
`133 S. Ct. 721 (2013) .................................................................................................. 5, 7, 13
`
`Amerimax Real Estate Partner, Inc. v. Re/Max Int’l, Inc.,
`600 F. Supp. 2d 1003 (N.D. Ill. 2009) ................................................................................ 5, 6
`
`Big Dipper, Inc. v. Wells’ Dairy, Inc.,
`2006 WL 2711843 (N.D. Ill. Sept. 20, 2006) ....................................................................... 10
`
`British–American Tobacco Co. v. Philip Morris Inc.,
`55 U.S.P.Q.2d 1585 (T.T.A.B. 2000) ................................................................................... 11
`
`Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Hum. Res.,
`532 U.S. 598 (2001) ............................................................................................................ 15
`
`Cent. Mfg., Inc. v. Brett,
`492 F.3d 876 (7th Cir. 2007) ................................................................................................. 7
`
`Chung v. Vaporous Technologies, LLC,
`2018 WL 2754506 (C.D. Cal. June 4, 2018) .......................................................................... 8
`
`CIBER, Inc. v. CIBER Consulting, Inc.,
`2004 WL 2174992 (N.D. Ill. June 10, 2004) .......................................................................... 6
`
`CIBER, Inc. v. CIBER Consulting, Inc.,
`326 F. Supp. 2d 888 (N.D. Ill. 2004).............................................................................. 5, 6, 8
`
`Cnty. of Santa Fe, N.M. v. Pub. Serv. Co. of New Mexico,
`311 F.3d 1031 (10th Cir. 2002)............................................................................................ 12
`
`Cottrell v. Vill. of Wilmette,
`1994 WL 63018 (N.D. Ill. Feb. 11, 1994) .............................................................................. 8
`
`Dalton v. Honda Motor Co.,
`425 F. App’x 886 (Fed. Cir. 2011) ....................................................................................... 11
`
`
`
`ii
`
`

`

`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 5 of 22 PageID #:15191
`
`
`
`Diaz v. Ameriquest Mortg. Co.,
`2014 WL 26265 (N.D. Ill. Jan. 2, 2014) ................................................................................. 9
`
`Distefano v. Kinder Morgan, Inc.,
`2011 WL 245583 (S.D. Ill. Jan 26, 2011) .............................................................................. 9
`
`Marlow v. Winston & Strawn,
`19 F.3d 300 (7th Cir.1994) .................................................................................................... 4
`
`Microchip Tech., Inc. v. Motorola, Inc.,
`2002 WL 32332753 (D. Del. May 28, 2002)........................................................................ 14
`
`National Mktg. Consultants, Inc. v. Blue Cross & Blue Shield Ass’n,
`1987 WL20138 (N.D. Ill. Nov. 19, 1987) ............................................................................ 14
`
`Nike, Inc. v. Already, LLC,
`2011 WL 310321 (S.D.N.Y. Jan. 20, 2011), aff’d, 663 F.3d 89 (2d Cir. 2011),
`aff’d, 568 U.S. 85 (2013) ................................................................................................. 7, 13
`
`Obrzut v. LVNV Funding, LLC,
`2020 WL 3055958 (N.D. Ill. June 8, 2020) .......................................................................... 13
`
`Pace v. S. Express Co.,
`409 F.2d 331 (7th Cir. 1969) ........................................................................................... 9, 10
`
`Pfizer Inc. v. Apotex Inc.,
`640 F. Supp. 2d 1006 (N.D. Ill. 2009) .................................................................................. 13
`
`Render by Render v. Consol. Rail Co.,
`1984 WL 950 (N.D. Ill. Sept. 10, 1984) ................................................................................. 4
`
`Riddell, Inc. v. Kranos Corp.,
`2017 WL 959019 (N.D. Ill. Mar. 12, 2017) ......................................................................... 14
`
`Ritchie v. Simpson,
`170 F.3d 1092 (Fed. Cir. 1999) ............................................................................................ 10
`
`Riviera Distrib., Inc. v. Jones,
`517 F.3d 926 (7th Cir. 2008) ............................................................................................... 15
`
`Tyco Labs., Inc. v. Koppers Co., Inc.,
`627 F.2d 54 (7th Cir. 1980) ................................................................................................... 9
`
`Wentworth v. Hedson,
`248 F.R.D. 121 (E.D.N.Y. 2008) ........................................................................................... 8
`
`Statutes
`
`15 U.S.C. § 1063(a) .................................................................................................................. 11
`
`
`
`iii
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`

`

`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 6 of 22 PageID #:15192
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`
`
`15 U.S.C. § 1117(a) .................................................................................................................. 15
`
`28 U.S.C. § 2201. ........................................................................................................................ 7
`
`Other Authorities
`
`9 FED. PRAC. & PROC. CIV. § 2365 (3d ed.) ................................................................................. 8
`
`Fed. R. Civ. P. 54(b) ................................................................................................................. 15
`
`8 MOORE’S FED. PRAC. CIV. § 41.40 (2020) ................................................................................. 8
`
`
`
`
`
`iv
`
`

`

`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 7 of 22 PageID #:15193
`
`
`
`Defendants ICE Clear US, Inc. (“ICUS”), ICE Clear Europe Limited (“ICEU”), and
`
`Intercontinental Exchange, Inc. (“ICE, Inc.”) (collectively “ICE”) respectfully submit this
`
`Opposition to Plaintiff Chicago Mercantile Exchange Inc.’s (“CME”) Rule 41(a) Motion to
`
`Dismiss ICE, Inc. and to Dismiss ICE, Inc.’s Counterclaims (the “Motion”). (ECF No. 279).
`
`I.
`
`INTRODUCTION
`
`To prevail on its claim for trademark infringement, CME must prove: (1) the SPAN mark
`
`is valid and protectable; and (2) ICE’s alleged use was likely to cause confusion. Here, the Court
`
`found that, “[a]ssuming CME can prove at trial that its mark was protectable,” ICE’s use of the
`
`SPAN mark was infringing. (ECF No. 233 at 37-43 (emphasis added).)
`
`In its latest desperate procedural maneuver, CME seeks to avoid adjudication of the
`
`threshold trademark validity issues that underlie each and every claim it has asserted against each
`
`and every Defendant. CME’s attempts this through a half-baked motion to voluntarily dismiss
`
`ICE, Inc. along with ICE, Inc.’s invalidity counterclaims—conditioned remarkably on CME
`
`having no responsibility for the fees and costs it caused ICE, Inc. to incur for the past 29 months.
`
`CME’s pretext for this motion is that such dismissals would streamline the case for trial.
`
`Nothing could be further from the truth. As the Court already held, invalidity should be determined
`
`as a threshold issue, conditioning its infringement finding on the SPAN mark being protectable.
`
`If the Court decides that it cannot or does not want to have ICE, Inc.’s counterclaims in the case
`
`based on CME’s motion, then this case should be stayed pending disposition of the parallel validity
`
`proceedings that are stayed as a matter of course, but can and would be resumed, at the Trademark
`
`Trial & Appeal Board (“TTAB”). A stay would be prudent before expending taxpayer and judicial
`
`resources unnecessarily trying a case that could be avoided entirely (or, if tried, reversed) if the
`
`asserted SPAN marks are not valid. Even if the trial scheduled in this matter went forward without
`
`
`
`1
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`

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`Case: 1:18-cv-01376 Document #: 293 Filed: 07/22/20 Page 8 of 22 PageID #:15194
`
`
`
`ICE, Inc. and its counterclaims, the number of witnesses and the nature of the evidentiary
`
`submissions would not be reduced because the contract counterclaims maintained by ICUS and
`
`ICEU rely on a nucleus of facts common to ICE, Inc.’s invalidity claims. CME well knows this,
`
`and so its purported benevolent basis for “streamlining” the case before trial is mere subterfuge,
`
`aimed at avoiding the important and inevitable determination as to whether its marks are valid.
`
`CME fails to properly consider the case or controversy circumstances that are specific to
`
`this case—citing only to authority that is distinguishable on the facts—as to whether the Court
`
`retains subject matter jurisdiction regardless of whether CME’s infringement claims against ICE,
`
`Inc. remain. CME also pays lip service to a covenant not to sue that does not exist, has not been
`
`offered, and the terms of which would be fundamental to the analysis of whether a dismissal would
`
`extinguish ICE Inc.’s apprehension of further suit. Additionally, CME ignores the plain language
`
`of Rule 41(a)(2), which bars voluntary dismissal if dismissal would deprive the court of subject
`
`matter jurisdiction over ICE, Inc.’s counterclaims. Moreover, granting the Motion would severely
`
`prejudice all Defendants. Thus, the Court should not grant it absent certain conditions set forth
`
`below.
`
`Finally, CME cannot assert that a dismissa