Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA978297
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`Filing date:
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`06/04/2019
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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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`Plaintiff
`Coachella Music Festival, LLC
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`DAVID J STEELE
`TUCKER ELLIS LLP
`515 SOUTH FLOWER STREET 42ND FLOOR
`LOS ANGELES, CA 90071
`UNITED STATES
`trademarks@tuckerellis.com, david.steele@tuckerellis.com,
`steven.lauridsen@tuckerellis.com
`213-430-3400
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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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`Reply in Support of Motion
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`Steven E. Lauridsen
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`trademarks@tuckerellis.com, steven.lauridsen@tuckerellis.com, dav-
`id.steele@tuckerellis.com
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`/Steven E Lauridsen/
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`06/04/2019
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`2019-06-04 - FINAL - Coachella Reply ISO Motion to Conslidate Coachillin Pro-
`ceedings.pdf(408571 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`COACHELLA MUSIC FESTIVAL, LLC,
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`v.
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`Opposer/Petitioner,
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`COACHILLIN’ HOLDINGS, LLC,
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`Opposition No. 91243895 (Parent Case)
`Cancellation No. 92070434
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`Serial No. 87/422,327
`Registration Nos. 4,597,127 and 5,170,824
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`Applicant/Respondent.
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`OPPOSER’S/PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO CONSOLIDATE
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`On April 25, 2019, Opposer and Petitioner Coachella Music Festival, LLC (“Coachella”) filed a
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`PROCEEDINGS
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`motion to consolidate Opposition No. 91243895 and Cancellation No. 92070434. The Board then exercised
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`its discretion, granting the motion and ordering the two proceedings to be consolidated. Notwithstanding the
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`Board’s Order, the day after the Board ruled, Applicant and Respondent Coachillin’ Holdings, LLC
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`(“Coachillin”) filed an opposition to the already granted motion. Out of an abundance of caution, Coachella
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`files this reply in support of consolidation.
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`I.
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`INTRODUCTION
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`Coachillin has failed to rebut Coachella’s showing that these proceedings should be consolidated.
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`Coachillin relies on non-binding and factually inapposite authority to argue against consolidation based on
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`the premise that the proceedings purportedly do not contain common issues of law and fact. Each point
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`raised by Coachillin was, however, already addressed in Coachella’s moving papers, and each of
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`Coachella’s positions were supported with binding TTAB authority. Further, Coachillin failed to identify
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`any cognizable prejudice that would disfavor consolidation. Instead, Coachillin appears to assert that,
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`because the two proceedings are not one-hundred percent identical in every way, the Board will conflate the
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`issues in the two proceedings and become confused. Under this standard, no TTAB proceeding would ever
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`be consolidated. Coachillin has failed to rebut Coachella’s showing that these proceedings should be
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`consolidated, and the Board’s order consolidating the proceedings should stand.
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`II.
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`COACHILLIN HAS FAILED TO REBUT COACHELLA’S SHOWING THAT
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`CONSOLIDATION IS WARRANTED.
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`“When cases involving common questions of law or fact are pending before the Board, the Board
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`may order the consolidation of the cases.” TBMP § 511; see also Fed. R. Civ. P. 42(a); Wise F&I, LLC v.
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`Allstate Ins. Co., 120 USPQ2d 1103, 1105 (TTAB 2016). In determining whether to consolidate
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`proceedings, the Board will weigh the savings in time, effort, and expense that may be gained from the
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`consolidation against any prejudice or inconvenience that may be caused. See, e.g., Dating DNA LLC v.
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`Imagini Holdings Ltd., 94 USPQ2d 1889, 1893 (TTAB 2010) (motion to consolidate granted); World
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`Hockey Assoc. v. Tudor Metal Prods. Corp., 185 USPQ 246, 248 (TTAB 1975) (consolidation ordered
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`where issues were substantially the same and consolidation would be advantageous to both parties).
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`In its moving papers, Coachella showed that this standard had been met, and the Board agreed.
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`Dkt. 9. Coachillin’s after the fact opposition has not rebutted this showing.
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`A.
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`The proceedings involve common issues of fact and law.
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`Relying on a district court case, Coachillin asserts that, for common questions of fact and law to
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`exist, the common question at issue “must be answered identically in each case in which it is presented.”
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`Opp. at 5 (quoting Van Patten v. Wright, 2009 U.S. Dist. LEXIS 60763, *3-4 (E.D. Wis. 2009)) (emphasis
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`supplied by Coachillin). Coachillin then identifies five purported reasons that these proceedings are not
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`“identical.” This is not, however, the standard before the Board, and Coachella has already addressed in its
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`moving papers each of these points and supported its positions with binding TTAB authority.
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`First, Coachillin asserts that the proceedings have different legal standards because one is an
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`opposition proceeding and one is a cancellation proceeding. As Coachella already explained, consolidation
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`of an opposition proceeding with a cancellation proceedings remains appropriate especially where, as here,
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`most of the underlying issues—likelihood of confusion, dilution, and false association—remain the same.
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`See Regatta Sport Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154, 1156 (TTAB 1991) (opposition and
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`cancellation consolidated); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1384 n.3 (TTAB 1991)
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`(opposition and cancellation consolidated). In fact, the TBMP specifically contemplates that a plaintiff will
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`file separate opposition and cancellation proceedings and then have them consolidated. TBMP § 305.02
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`(explaining inability to file consolidated cancellation and opposition proceedings based on technological
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`limitations of ESTTA filing system and stating remedy is to file separate proceedings and seek
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`consolidation). These facts do not weigh against consolidation.
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`Second, Coachillin asserts that there are different marks asserted by Coachella and cites Envirotech
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`Corp. v. Solaron Corp., 211 USPQ 724, 726 (TTAB 1981) for the proposition that proceedings involving
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`different marks should not be consolidated. This case is inapposite to the facts here and was cited by
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`Coachella in its moving papers to contrast the issues presented in that case and this one. In Envirotech, the
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`Board denied consolidation because the proceedings involved completely different marks. Id. Such is not
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`the case here where Coachella has asserted the same COACHELLA family of marks against the same
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`COACHILLIN marks. And while one proceeding involves three additional registrations being asserted,
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`Coachillin has cited no authority stating that this would be bar to consolidation. To the contrary, the Board
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`frequently consolidates proceedings involving variations on the same marks and different goods. See, e.g.,
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`M.C.I. Foods Inc. v. Bunte, 86 USPQ2d 1044, 1046 (TTAB 2008) (proceeding involved identical parties,
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`identical registrations, and related issues); Ritchie v. Simpson, 41 USPQ2d 1859, 1860 (TTAB 1996) (cases
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`consolidated despite variations in marks and goods), rev’d on other grounds, 170 F.3d 1092, 50 USPQ2d
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`1023 (Fed. Cir. 1999); see also TBMP § 305.01.
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`Third, Coachillin argues that the proceedings involve different causes of actions and different
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`defenses. Coachillin is referring to the additional but interrelated fraud claims in the cancellation
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`proceeding. Again, Coachella already addressed this issue in its moving papers. The Board has previously
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`found that a claim for priority and likelihood of confusion (such as in the opposition) presents sufficiently
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`related issues as a claim for fraud such that consolidation is warranted. See, e.g., M.C.I. Foods, 86 USPQ2d
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`at 1046. Thus, the additional fraud claims and related defenses do not weigh against consolidation.
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`Fourth, Coachillin argues that different factual backgrounds are involved because the registrations in
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`the cancellation proceeding were originally owned by a third party and were later assigned to Coachillin.
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`Coachillin cites no authority explaining why this would mitigate against consolidation. To the contrary,
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`Coachillin is the current listed owner of the registrations, so the parties to both proceedings are identical.
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`Moreover, Coachella’s fraud claims are based on actions taken during prosecution by this prior owner of the
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`COACHILLIN marks. Coachillin is bound by the actions during prosecutions of its predecessor-in-interest
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`as if those actions were taken by Coachillin itself. See, e.g., Kay Corp. v. Weisfield’s, Inc., 190 U.S.P.Q. 565,
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`569 (TTAB 1976) (“the position of opposer’s predecessor during prosecution of the application to register
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`[its mark] . . . [h]owever gratuitous or inartfully worded . . . was a statement made by opposer’s predecessor,
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`by which opposer is bound.”). Further, the Board has explained an assignee should be aware that it must
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`accept the consequences of its assignor’s conduct. See, e.g., In re Consolidated Cigar Corp., 13 USPQ
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`1481, 1484 (TTAB 1989); CBS Inc. v. Man’s Day Publ’g Co., Inc., 205 USPQ 470, 476-77 (TTAB 1980);
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`Vantage Mercantile v. New Trends, Inc., 183 USPQ 304, 308-09 (TTAB 1974). That the registrations were
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`assigned to Coachillin by a third party has no bearing on consolidation as Coachillin has stepped into the
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`shoes of its predecessor.
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`Fifth, Coachillin argues that the proceedings are at different stages of the discovery process. This is
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`untrue. The parties filed a consent motion to align the discovery dates in these proceedings. Opp. Dkts. 6-7.
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`That the parties have taken discovery on some issues and not others does not weigh against consolidation,
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`nor has Coachillin explained why it should. And again, Coachillin has cited no binding or on-point authority
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`to support its position.
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`Coachillin has not rebutted Coachella’s showing that these proceedings involve common issues of
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`law and fact, and the order consolidating the proceedings should stand.
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`B.
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`There is no risk of prejudice or inconvenience.
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`In arguing prejudice, Coachillin relies on non-binding and factually inapposite cases from district
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`courts and other Circuits. Coachillin seems to argue that coordinating discovery weighs against
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`consolidation. This is not true, and the cases cited by Coachillin do not stand for this proposition. In each of
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`those cases, a number of factors weighed against consolidation, so the courts discussed coordinating
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`discovery as a way to increase efficiency for cases that were not appropriate for consolidation.
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`For instance, in Beverlly Jewerlly Co., Ltd. v. Tacori Enters., No. 06-cv-1967, 2006 WL 3304218
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`(N.D. Ohio Jul. 10, 2007), Beverlly sought to consolidate its action against Tacori with a separate action
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`Tacori had brought against a company named Rego. Id. at *1-2. The court denied the motion for
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`consolidation, stating “the overlapping issues between the two cases are relatively minor and that the scope
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`of the Beverlly Litigation goes well beyond the issued raised by Rego.” Id. at *2. The court cited as an
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`example the fact that the Rego litigation involved a limited number of infringing products purchased by
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`Rego, one of Beverlly’s customers, whereas the Beverlly litigation involved not only all purchasers of
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`Beverlly’s rings in the U.S. and Beverlly’s nationwide marketing efforts, but also all sales of Tacori’s rings
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`to its U.S. purchasers, which did not include Rego. Id. at *2. The court therefore ruled that consolidation
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`would cause the Rego litigation to be “subsumed by a much broader ambit of discovery and issues without
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`any substantial benefit to the efficient progression of those cases.” Id. Such is not the case here where the
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`parties are identical as are the marks and most claims at issue.
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`In Roxane Labs., Inc. v. Abbott Labs., No. 2:12-cv-312, 2013 U.S. Dist. LEXIS 132784, at *12 (S.D.
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`Ohio Sep. 16, 2013), the court denied consolidation because one case was filed fifteen months prior to the
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`other, and the parties had engaged in extensive discovery in the first case. Id. The court also noted that the
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`deadlines in the first case had already been extended by a year, and consolidation would require them to be
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`extended even further. Id. However, the court did state that it would reconsider consolidation if the schedule
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`in the cases changed such that they were more aligned. Id. Here, the schedules in these proceedings were
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`identical before consolidation, and this case therefore does not support a reversal of the Board’s order
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`consolidating proceedings.
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`Coachillin’s final citation, LSP Techs., Inc. v. Metal Improvement Co., LLC, No. 2:10-cv-00526,
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`2010 WL 3447834 (S.D. Ohio 2010), fares no better. In that case, the court denied the motion to consolidate
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`“due to the unavoidable delay and prejudice consolidation would cause.” Id. at *2. The court further noted
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`that “the overlap between the cases is not as significant as [the movant] suggests” because the cases
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`involved different defendants and different devices accused of patent infringement. Id. at *3. The court also
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`noted that one of the cases was filed two-and-one-half years before the other and “had proceeded markedly
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`further” than the other case. Id. For instance, the Markman hearing in the first case was a month away while
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`the Markman hearing was not anticipated in the second case for nearly a year. Id. Consolidation would
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`therefore cause delay in the first case, which would prejudice the defendant both because of added legal
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`expenses caused by the delay and the continued uncertainty as to whether that defendant’s products
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`infringed the asserted patents. Id. Again, the schedules in these consolidated proceedings were already
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`aligned, and consolidation remains appropriate.
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`After extensively discussing these cases, Coachillin’s actual claim of prejudice surfaces on page 8 of
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`its opposition, where it states that “[c]onfusion in the proceedings is almost guaranteed to result if the
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`Cancellation and Opposition are combined, given the numerous different issues presented in both cases.”
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`Opp. at 8 (emphasis in original). Other than repeating its refrain that the cancellation proceeding contains
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`additional fraud claims, Coachillin provides no explanation as to why the Board would be confused if these
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`proceedings are consolidated. To the contrary, the cases cited by Coachella above and in its moving papers
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`demonstrate that it is appropriate to consolidate cases where one case contains additional claims not
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`presented in the other, including fraud claims. See, e.g., M.C.I. Foods, 86 USPQ2d at 1046. Concern that the
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`Board will be confused and cannot keep track of the issues in the consolidated cases does not constitute
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`cognizable prejudice, and Coachillin has cited no authority to support such a contention.
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`Coachillin simply has not carried its burden to show any prejudice, let alone prejudice that would
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`mitigate against consolidation, and the Board’s order consolidating these proceedings should therefore
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`stand.
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`III. CONCLUSION
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`The facts and issues in these two proceedings are so intertwined that consolidation is appropriate, as
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`the Board has already found. Moreover, Coachillin has not shown any cognizable prejudice that would
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`result from consolidation. The Board’s order consolidating these proceedings should therefore stand.
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`Respectfully submitted,
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`TUCKER ELLIS, LLP
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`Date: June 4, 2019
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`By: /s/Steven E. Lauridsen
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`David J., Steele
`Steven E. Lauridsen
`TUCKER ELLIS LLP
`515 South Flower Street
`42nd Floor
`Los Angeles, California 90071
`Email:
`david.steele@tuckerellis.com
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`steven.lauridsen@tuckerellis.com
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`trademarks@tuckerellis.com
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`Attorneys for Opposer/Petitioner
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`-8-
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of OPPOSER’S/PETITIONER’S REPLYU IN
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`SUPPORT OF ITS MOTION TO CONSOLIDATE PROCEEDINGS was served on counsel for
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`Applicant’s attorney at the following email address, this 4th day of June, 2019:
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`KAREN KREIDER GAUNT
`ASHLEY J. EARLE
`DINSMORE & SHOHL LLP
`255 EAST FIFTH STREET, SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`karen.gaunt@dinsmore.com
`ashley.earle@dinsmore.com
`trademarks@dinsmore.com
`kethya.teuk@dinsmore.com
`Phone: 513-977-8503
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`By: /s/Steven E. Lauridsen
`Steven E. Lauridsen
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`-9-
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