Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA974010
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`Filing date:
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`05/15/2019
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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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`91243895
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`Party
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`Correspondence
`Address
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`Defendant
`Coachillin' Holdings,, LLC
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`KAREN KREIDER GAUNT
`DINSMORE & SHOHL LLP
`255 EAST FIFTH STREET SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`karen.gaunt@dinsmore.com, trademarks@dinsmore.com,
`kethya.teuk@dinsmore.com
`513-977-8503
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`Submission
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`Filer's Name
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`Filer's email
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`Opposition/Response to Motion
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`Ashley J. Earle
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`ashley.earle@dinsmore.com, karen.gaunt@dinsmore.com,
`govinda.davis@dinsmore.com
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`Signature
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`Date
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`/Ashley J. Earle/
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`05/15/2019
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`Attachments
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`CoachillinHoldings Opposition to Motion to Consolidate.pdf(679355 bytes )
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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`COACHELLA MUSIC FESTIVAL, LLC
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`Petitioner/Opposer
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`vs.
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`COACHILLIN’ HOLDINGS, LLC,
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`Respondent/Applicant
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`Opposition No. 91243895
`Cancellation No. 92070434
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`Registration No. 4,597,127
`Registration No. 5,170,824
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`Application Serial No. 87/422,327
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`Mark: COACHILLIN
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` OPPOSITION TO MOTION TO CONSOLIDATE
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`Respondent and Applicant, Coachillin’ Holdings, LLC (hereinafter “Coachillin’
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`Holdings” or “Respondent”), by and through its counsel, files this Opposition to Petitioner’s
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`Motion to Consolidate Cancellation No. 91243895 (the “Cancellation”) with Opposition
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`Proceeding No. 91243895 (the “Opposition”).1 Petitioner and Opposer Coachella Music Festival
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`LLC’s (“Coachella”) Motion should be denied because the two proceedings present neither a
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`common question of fact nor a common question of law as required by Federal Rule of Civil
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`Procedure 42 and TBMP § 511. Furthermore, even if the two proceedings were deemed to
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`present a “common question,” consolidation is not mandatory and should not be ordered where,
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`as here, consolidation would unfairly prejudice the non-moving party and such clear prejudice
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`1While Coachillin’ Holdings recognizes the Board has ruled on Coachella’s Motion, this Opposition to the Motion to
`Consolidate is timely under 37 C.F.R. § 2.127(a) “…a brief in response to a motion shall be filed within twenty days
`from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board.”
`Id. See also TBMP § 502.02. Coachillin’ Holdings asks the Board’s order to be set aside and Coachella’s Motion be
`denied for the reasons set forth herein.
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`outweighs any benefits of consolidation. As such, Coachella’s Motion to Consolidate should be
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`denied.
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`A.
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`Introduction:
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`The Cancellation proceeding, which already encompasses two trademark registrations,
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`should not be combined with the Opposition, as: (1) the proceedings do not involve common
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`issues of law and fact; and (2) consolidation is discretionary and should not be required when it
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`would be prejudicial to the parties, as is the case in the instant proceeding. These vast factual and
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`legal differences between the Cancellation and the Opposition are such that if the proceedings
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`were to be combined, it would create confusion, unfairness, and would prejudice Coachillin’
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`Holdings.
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`While the Motion to Consolidate submitted by Coachella states that “Coachella has
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`asserted the same registrations for the same Coachella Marks,” this is not true. Coachella has
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`asserted three additional marks in the Cancellation proceeding that were not asserted in the
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`Opposition. Furthermore, Coachella asserted three additional causes of action in the
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`Cancellation that were not raised in the Opposition. In its Motion to Consolidate, Coachella
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`represented to the Board that these proceedings are “nearly substantively identical” with
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`“substantive issues in the proceedings [that] are nearly identical” and “[t]here exists almost
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`complete commonality between the proceedings” and “[a]lmost every aspect of these two
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`proceedings overlap.” See Motion to Consolidate, Dkt. 8 at pp. 2 and 5. These statements are
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`inaccurate and misleading. The two proceedings have differing factual and legal issues that, if
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`combined, would undoubtedly prejudice Coachillin’ Holdings.
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`B.
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`Procedural Background:
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`2
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`Coachella first filed the Opposition in September 2018 against Coachillin’ Holding’s
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`trademark application for COACHILLIN (U.S. Serial No. 87/422,327) in Class 41 on the basis
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`of priority and likelihood of confusion under Section 2(d), false association under Section 2(a),
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`and dilution under 15 U.S.C. § 1125(c). See Notice of Opposition, Dkt. 1 in the Opposition. The
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`Opposition was filed based on Coachella’s COACHELLA registration
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`in Class 41,
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`COACHELLA VALLEY MUSIC AND ARTS FESTIVAL registration
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`in Class 41,
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`COACHELLA (Stylized) registration in Class 41, and ancillary registrations in Classes 16, 18,
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`21, and 25. Id. In the Opposition, the Parties have exchanged initial disclosures, sent and
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`received discovery (including Interrogatories, Requests for Admissions and Requests for
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`Production), and have had numerous “meet and confer” discussions and unsuccessful settlement
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`attempts.
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`Four months later, Coachella later filed the Cancellation in January 2019 against
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`COACHILLIN in Class 25 (U.S. Reg. No. 4,597,127) and COACHILLIN in Class 35 (U.S. Reg.
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`No. 5,170,824). (See Petition for Cancellation, Dkt. 1 in the Cancellation). In this proceeding,
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`Coachella alleged numerous grounds for the cancellation, including fraud on the USPTO,
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`violation of law against assignments in gross, nonuse of the mark in commerce, priority and
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`likelihood of confusion, dilution by blurring, and false association. Id. The Cancellation is based
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`on the marks asserted in the Opposition, as well as three additional marks – COACHELLA in
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`Class 14, COACHELLA in Class 43, and COACHELLA (Stylized) in Class 43. Id. In the
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`Cancellation, the two registrations at issue, U.S. Reg. No. 4,597,127 for COACHILLIN in Class
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`25 and U.S. Reg. No. 5,170,824 for COACHILLIN in Class 35, were initially filed and owned
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`by Jeremy Joseph, a third-party who assigned the trademarks to Coachillin’ Holdings in 2016.
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`3
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`Further, in the Cancellation, the parties have only just exchange initial disclosures and have not
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`yet exchanged discovery requests.
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`The parties have engaged in numerous discussions regarding settlement negotiations and
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`discovery issues over the last few months. In one such teleconference call to discuss Coachella’s
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`proposal to consolidate the proceedings, Coachillin’ Holdings expressed the concerns outlined
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`herein in great detail and indicated that Coachillin’ Holdings would not consent to a motion to
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`consolidate, but would be willing to align discovery dates and discovery proceedings to conserve
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`resources. This call and the understanding regarding discovery is acknowledged by Coachella in
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`its motion. See Motion to Consolidate, Dkt. 8 at p. 2. Yet despite explicit knowledge of the
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`prejudice to Coachillin’ Holdings, Coachella proceeded to file its Motion, stating that, “[y]et
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`surprisingly, Coachillin will not agree to consolidate the proceedings” and “Coachillin’s counsel
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`surprisingly declined.” Id. at pp. 2 and 4. These representations to the Board are again
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`misleading given the extensive discussions between the parties and the concerns expressed to
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`Coachella regarding Coachillin Holding’s reasons not to consolidate.
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`C.
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`The Proceedings Do Not Involve Common Issues of Fact and Law:
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`As mentioned, Coachella represented to the Board in its Motion to Consolidate that these
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`proceedings are “nearly substantively identical” with “substantive issues in the proceedings
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`[that] are nearly identical.” See Motion to Consolidate, Dkt. 8 at p. 2. This is blatantly false.
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`Coachella has asserted three additional trademarks and three additional causes of action in the
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`Cancellation proceeding that were not asserted in the Opposition. In Coachella’s own motion, it
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`acknowledges that different trademarks asserted in different proceedings could be prejudicial and
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`is grounds for denying a motion to consolidate. See Motion to Consolidate Dkt. 8 and p. 6 (citing
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`Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 726 (TTAB 1981) (“consolidation denied as
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`4
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`possibly prejudicial to defendant where defendant’s involved marks were not all the same”)
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`(emphasis added)). The same is true here -- the two proceedings involve marks that are not all
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`the same and have differing factual and legal issues that, if combined, would obfuscate the issues
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`at hand and prejudice Coachillin’ Holdings.
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`While Federal Rule of Civil Procedure 42(a) affords the tribunal the discretion to
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`consolidate cases involving common questions of law or fact, “[t]he underlying objective [of
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`consolidation] is to administer the court’s business with expedition and economy while providing
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`justice to the parties.” Advey v. Celotex, Corp., 962 F.2d 1177, 1181 (6th Cir. 1992);
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`Fed.R.Civ.P. 42(a); Cantrell v. GAF Corp., 999 F.2d 1007, 1010-11 (6th Cir. 1993); Mitchell v.
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`Dutton, 865 F.2d 1268, 1989 WL 933, at *2 (6th Cir. 1989) (internal quotation marks and
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`citation omitted). In Cantrell, the Sixth Circuit Court of Appeals advised that “the decision to
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`consolidate is one that must be made thoughtfully…Care must be taken that consolidation does
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`not result in unavoidable prejudice or unfair advantage.” 999 F.2d at 1011.
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`Rule 42 does not define “common question of law or fact,” however, courts have held
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`that “the plain meaning of this phrase indicates that a common question is one that must be
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`answered identically in each case in which it is presented.” Van Patten v. Wright, 2009 U.S. Dist.
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`LEXIS 60763, *3-4 (E.D. Wis. 2009) (emphasis added). The proceedings at issue here do not
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`have common question of law or fact. Indeed, the proceedings have numerous factual and legal
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`differences.
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`For instance, as discussed supra, the proceedings differ at least in having: (1) different
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`legal standards (one being the opposition of an application and one being cancellation
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`proceedings of two registrations); (2) different marks asserted by Coachella; (3) different causes
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`of action asserted by Coachella, as well as different defense raised by Coachillin’ Holdings; (4)
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`5
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`different factual backgrounds, as the registrations were initially owned by a third-party and
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`assigned to Coachillin’ Holdings, the assignment of which is being challenged by Coachella; and
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`(5) the proceedings are at different stages in the discovery process. Indeed, the only overlap
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`between the proceedings is the parties at issue and the mark being challenged -- COACHILLIN.
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`However, one commonality is not sufficient to mandate consolidation. Confusion in the
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`proceedings is almost guaranteed to result if the Cancellation and Opposition are combined,
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`given the numerous different issues present in both cases.
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`C.
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`Consolidation
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`is Discretionary and Should Not be Ordered When
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`Prejudicial:
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`As noted above, “the decision
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`to consolidate
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`is one
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`that must be made
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`thoughtfully…Care must be taken that consolidation does not result in unavoidable prejudice or
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`unfair advantage.” 999 F.2d at 1011. If the conservation of judicial resources achieved through
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`consolidation “are slight, the risk of prejudice to a party must be viewed with even greater
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`scrutiny.” Id. The Cantrell Court further instructed that a court should consider “whether the
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`specific risks of prejudice and possible confusion [are] overborne by the risk of inconsistent
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`adjudications of common factual and legal issues, the burden on parties, witnesses and available
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`judicial resources posed by multiple lawsuits, the length of time required to conclude multiple
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`suits as against a single one, and the relative expense to all concerned of the single-trial,
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`multiple-trial alternatives.” Id. (quoting Hendrix v. Raybestos-Manhattan, Inc., 776 F.2d 1492,
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`1495 (11th Cir. 1985) (citations omitted)).
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`However, even in cases sharing common questions of fact and law, if “all of the parties
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`have already cooperated to align the protective orders in place in both cases, and have privately
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`agreed that any discovery conducted in either case may be used in the other…the existence of
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`6
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`these overlapping counterclaims does not weigh heavily in favor of consolidation.” LSP Techs.,
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`Inc. v. Metal Improvement Co., LLC, No. 2:10-cv-00526, 2010 U.S. Dist. LEXIS 89193 at *7
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`(S.D. Ohio 2010). The Court in LSP Techs denied the motion for consolidation, stating that
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`“[b]ecause both cases are pending in the same court and before the same United States District
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`Judge…preparation for Case 10-526’s Markman hearing would not be nearly as onerous as for
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`Case 08-38’s hearing, which again, is already scheduled. For this same reason, the risk of
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`inconsistent claim constructions is minimal.” Id. at *9. See also Beverlly Jewerlly Co., Ltd. v.
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`Tacori Enters., No. 1:06-cv-1967, 2006 U.S. Dist. LEXIS 85359, 2006 WL 3304218, at *6 (N.D.
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`Ohio 2006) (“[T]o the extent that [the parties] will be engaging in the same discovery for their
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`respective cases, those discovery efforts can be coordinated by the parties whether or not those
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`actions are formally consolidated.”); Roxane Labs., Inc. v. Abbott Labs., No. 2:12-cv-312, 2013
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`U.S. Dist. LEXIS 132784, at *12 (S.D. Ohio Sep. 16, 2013) (while denying consolidation in a
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`patent infringement case, the court stated that “The Court can therefore coordinate discovery
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`and minimize the risk and burden of duplicative discovery even without consolidation.”)
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`Here, like Beverlly Jewerlly and Roxane Labs, the parties have agreed to coordinate
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`discovery efforts to minimize the risk and burden of duplicative discovery. Supra; see also
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`Motion to Consolidate, Dkt. 8 at 2. Moreover, like LSP Techs, the existence of overlapping
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`claims does not weigh heavily in favor of consolidation, and like in that case, both proceedings
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`are pending before the same entity, here the TTAB. Roxane Labs., Inc., 2010 U.S. Dist. LEXIS
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`89193 at *7. As such, preparation for separate proceedings is not onerous and the risk of
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`inconsistent results is less likely since both the Opposition and the Cancellation are pending
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`before the Board. See id.
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`7
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`Notwithstanding the foregoing, even if a common question of law and fact existed (which
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`Coachillin’ Holdings does not concede), Coachella’s Motion should be denied, as Coachillin’
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`Holdings would be prejudiced by consolidation. The Board should weigh “the interests of
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`judicial economy against the potential for new delays, expense, confusion or prejudice.” Consol.
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`Parlodel Lit., 182 F.R.D. at 444. In balancing these factors, “considerations of convenience and
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`economy must yield to a paramount concern for a fair and impartial trial.” Schneck v. IBM Corp.,
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`No. 92-4370, 1996 U.S. Dist. LEXIS 10126, at*4 (D. N.J. June 21, 1996) (quoting Debruyne v.
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`Nat’l Semiconductor Corp., 11 F.3d 368, 373 (2d Cir. 1993)). “Indeed, consolidation where
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`prejudice results to a defendant amounts to an abuse of discretion.” Id.
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`As previously noted, Coachella has asserted three additional marks and three additional
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`grounds in the Cancellation proceeding than in the Opposition. It would be unfair and prejudicial
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`to impute those assertions to the Opposition by consolidating these proceedings. Furthermore, in
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`the Cancellation, Coachella has asserted an astounding six grounds for cancellation and asserted
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`ten trademark registrations in total. Confusion in the proceedings is almost guaranteed to result if
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`the Cancellation and Opposition are combined, given the numerous different issues present in
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`both cases. Any convenience and savings to judicial economy alleged by Coachella was obviated
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`by the parties’ agreement to harmonize discovery efforts and synchronize the discovery
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`schedule. Moreover, here, as in Schneck, the paramount concern must be for a fair and impartial
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`decision, which can only be attained by not consolidating the proceedings here. 1996 U.S. Dist.
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`LEXIS 10126, at *4. Because consolidation would be prejudicial to Coachillin’ Holdings, the
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`proceedings should not be consolidated and Coachella’s Motion to Consolidate should be denied.
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`8
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`D.
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`Conclusion:
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`Coachella has the burden of proof on a motion for consolidation. Consol. Parlodel Lit.,
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`182 F.R.D. at 444. However, Coachella has not met this burden. Instead, Coachella has set forth
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`inaccurate facts that broadly generalize that the two are alike and should be consolidated. The
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`proceedings do not share common issues of fact or law. Furthermore, even if the proceedings did
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`share a common question of law or fact, (which they do not), because Coachillin’ Holdings
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`would be unfairly prejudiced, the Board should deny Coachella’s Motion for Consolidation. The
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`potential for prejudice, unfairness, burden and confusion are such that the Opposition and
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`Cancellation proceedings should not be combined. Therefore, for the reasons set forth above, the
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`Board should deny Coachella’s Motion to Consolidate.
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`Dated: May 15, 2019
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` s/Ashley J. Earle/
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` Karen Kreider Gaunt
`Ashley J. Earle
`Govinda M. Davis
`DINSMORE & SHOHL LLP
`255 East Fifth Street, Suite 1900
`Cincinnati, OH 45202
`(513) 977-8503-direct
`(513) 977-8141-fax
`karen.gaunt@dinsmore.com
`ashley.earle@dinsmore.com
`govinda.davis@dinsmore.com
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`Attorneys for Coachillin’ Holdings, LLC
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`9
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a copy of the foregoing Response was served on counsel for
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`Petitioner via email on May 15, 2019 to:
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`Steven E. Lauridsen
`Tucker Ellis LLP
`515 South Flower Street, 42nd Floor
`Los Angeles, CA 90071
`trademarks@tuckerellis.com,
`david.steele@tuckerellis.com,
`steven.lauridsen@tuckerellis.com
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` Ashley J. Earle
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`s/Ashley J. Earle/
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`10
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