Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1004068
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`Filing date:
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`09/23/2019
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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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`91250202
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`Party
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`Correspondence
`Address
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`Defendant
`Stockdale Investment Group, Inc.
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`CATHRYN A. BERRYMAN
`WINSTEAD, P.C.
`2728 N. HARWOOD STREET, SUITE 500
`DALLAS, TX 75201
`tmdocket@winstead.com, cberryman@winstead.com, ngraham@winstead.com
`no phone number provided
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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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`Motion to Dismiss - Rule 12(b)
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`Cathryn Berryman, Attorney of Record, Texas Bar Member
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`cberryman@winstead.com, tvanarsdel@winstead.com, ngra-
`ham@winstead.com, tmdocket@winstead.com
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`/Cathryn Berryman/
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`09/23/2019
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`FILED_Applicant_Motion_and_Brief_to_Dismiss_Opposer_Stockdale_Capital_N
`otice_of_opposition_of_th.pdf(179213 bytes )
`EXHIBIT_C_-_ttabvue-88006185-EXT-5_TTAB_Order.pdf(65683 bytes )
`EXHIBIT_A_-_FEDERAL_FILING_NOTICE.pdf(148730 bytes )
`EXHIBIT_E__-_Opposer_Answer.pdf(141102 bytes )
`EXHIBIT_F_-_Opposer_Brief.pdf(4050085 bytes )
`EXHIB-
`IT_D__-_Applicant_s_First_Amended_Complaint_and_Application_for_TRO_an
`d_Preliminary_and_Per.pdf(5018943 bytes )
`EXHIBIT_G_-_Expert_Report.pdf(1596768 bytes )
`exhibit_B_ttabvue-88006185-EXT-7.pdf(114482 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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`In the Matter of Serial No. 88/006185
`Mark: STOCKDALE
`Application Filing Date: 06/19/2018
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`Stockdale Capital Partners, LLC
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`Opposer,
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`v.
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`Stockdale Investment Group, Inc.
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`Applicant
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`Box TTAB
`Commission for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`§
`§
`§
`§ Opposition No. 91250202
`§
`§
`§
`§
`§
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`Applicant Stockdale Investment Group, Inc., a Texas corporation, having an address of
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`MOTION AND BRIEF TO DISMISS
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`150 Turtle Creek Boulevard, Suite 209A, Dallas, Texas 75207, (“Applicant”) is the applicant for
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`the above-referenced application Serial No. 88/006185 for the mark STOCKDALE (the
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`“Application”). Opposer Stockdale Capital Partners, LLC, a Delaware corporation having an
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`address of 10850 Wilshire Blvd., Suite 1050, Los Angeles, California 90024 (“Opposer”) has
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`filed a notice of opposition. Applicant believes that there are sufficient grounds for dismissal of
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`this opposition, and respectfully files this motion and brief to dismiss, as follows:
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`I.
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`LACK OF JURISDICTION
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`1.
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`Applicant is dissatisfied with the Board’s granting of a 90-day extension of time
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`to oppose the Application for good cause. The Board denied Applicant’s request for
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`reconsideration based on Opposer’s false statements on settlement discussions, and, as a direct
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`result, Opposer filed its notice of opposition. Pursuant to TBMP Section 211.02, Applicant
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`hereby files this motion to dismiss on grounds that Opposer improperly obtained an extension of
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`the opposition period and therefore the notice of opposition should not be considered timely filed.
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`1
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`

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`2.
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`Applicant is the owner of common law rights in and to the mark STOCKDALE
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`used in interstate commerce on or in connection with real estate services, namely, acquisition and
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`management of commercial real estate; real estate brokerage services; real estate leasing
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`services; real estate investment asset and property management services in Class 036, and real
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`estate development services in the commercial real estate field in Class 037, since as early as
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`1989, and related pending Application.
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`3.
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`On or about August 24, 2018, Applicant filed a trademark infringement lawsuit
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`in the United States District Court for the Southern District of Texas (Houston Division) against
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`Opposer and its affiliates, claiming priority and likelihood of confusion arising from its
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`unauthorized use of the mark STOCKDALE in connection with its own real estate investment
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`asset and property management services and real estate development services. This case is titled
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`Stockdale Investment Group, Inc. d/b/a Stockdale vs. Stockdale Capital Partners, LLC; Stockdale
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`Capital Partners RE Fund I GP, LLC; Stockdale Capital Partners Real Estate Fund, LP:
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`Stockdale Capital RE Investments, LLC; Stockdale Capital RE, LLC; and Stockdale Capital RE,
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`LLC; and Stockdale Capital Services, LLC (Case No. 4:18-cv-02949) (the “Texas Lawsuit”).
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`Proper notice of the Texas Lawsuit and the Application was provided to the Director of the U.S.
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`Patent and Trademark Office in a Report Of The Filing Or Determination Of An Action
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`Regarding A Patent Or Trademark issued by the Clerk of the Court on or about August 27, 2018,
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`a copy of which is attached as Exhibit A.
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`4.
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`Discovery in the Texas Case has been completed. Following the close of
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`discovery, Opposer filed a motion for summary judgement and reply, and Applicant filed a
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`response, all of which are pending before the District Court. While Applicant and Opposer
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`attempted to set up settlement discussions related to the mark STOCKDALE in the Texas
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`Lawsuit, their settlement discussions were limited to a brief telephone conference on or about
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`April 8, 2019, and were concluded without mutual agreement or other resolution.
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`2
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`

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`5.
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`The Application published for opposition on or about April 16, 2019. Opposer
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`waited to file its first 90-Day request for extension of time to oppose for good cause the
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`Application until May 6, 2019 (the “First Extension Request”). Opposer explicitly stated that
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`“good cause is established for this request by: The potential opposer is engaged in settlement
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`discussions with applicant” in the First Extension Request. The Board issued an order granting a
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`90-day extension to Opposer based upon this statement of good cause on or about May 7, 2019
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`(the “Extension Order”) and Applicant received notice of the Extension Order by email.
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`6.
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`According to TBMP Sections 207.01 and 207.02, good cause or consent is
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`required to obtain the first 90-day extension of time to oppose. Circumstances that may support a
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`finding of good cause include the potential opposer’s need to investigate the claim or the potential
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`opposer’s need to confer with or obtain counsel. See TMBP Section 207.02. This ground for good
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`cause does not apply since Opposer retained trademark counsel in the Texas Action in 2018 and it
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`is well aware of Applicant’s claim of priority and likelihood of confusion made in the Texas
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`Action. Other circumstances for good cause include an applicant’s consent to the extension.
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`However, no consent was sought from Applicant prior to Opposer’s filing of the First Extension
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`Request. See TMBP Section 207.02. Circumstances for good cause further include settlement
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`negotiations between the parties, which is the exact basis cited by Opposer in its First Extension
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`Request.
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`7.
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`To be engaged in settlement discussions requires the on-going participation of
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`Applicant. However, contrary to Opposer’s representations to the Board, as of the date of the
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`filing of the First Extension Request, Applicant was not engaged in settlement discussions with
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`Opposer. In fact, Opposer had prior actual knowledge of the cessation of settlement discussions in
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`April, and misrepresented the status of those discussions to the Board in order to obtain a longer
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`extension of time from 30-days to 90-days, which caused unnecessary delay and cost to
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`Applicant. Accordingly, the First Extension Request for 90-days should never have been accepted
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`and the Board should have denied any such request for extension of time.
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`3
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`8.
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` Opposer is well-aware of its misleading statements made in the First Extension
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`Request. In an attempt to cover itself, its trial counsel reintroduced an offer of settlement 8 days
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`after filing the First Extension Request and the Board’s issuance of its order granting the First
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`Extension Request. That offer was rejected by Applicant, and no further settlement discussions
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`were planned or anticipated in lieu of completing discovery and depositions. This post-filing
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`action cannot establish “good cause” for Opposer’s false statements made to the Board to obtain a
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`longer extension of time.
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`9.
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`According to 37 CFR Section 11.18, the party presenting any filing to the Board
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`is certifying that the statements made in such filing are believed to be true, and such party shall be
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`subject to the penalties of perjury for knowingly and willfully making false, fictitious or
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`fraudulent statements or representations, and violations of this section may “jeopardize the
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`probative value of the paper.” Such filing party also is certifying that to the best of his/her
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`knowledge, information and belief, the paper is not being presented for an improper purpose,
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`including harassment or unnecessary delay.
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`10.
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`Opposer repeated its misleading statements as to on-going settlement discussions
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`with Applicant in Opposer’s response dated July 3, 2019, to the Board’s denial of the request for
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`reconsideration. See Exhibit B. Contrary to Opposer’s statements to the Board, the parties’
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`settlement conference on April 8, 2019, ended with Applicant’s rejection of Opposer’s offer of
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`co-existence and a firm statement from Applicant that it would proceed with discovery and
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`depositions in preparation for trial.
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`11.
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`Despite Opposer’s claims made to the Board, the possibility of a future
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`settlement offer being made is not a basis for reasonable belief and grounds for good cause.
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`Opposer stated unequivocally to the Board that “the parties are engaged in settlement
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`discussions.” Engagement requires knowledge and participation of Applicant, and Applicant’s
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`belief was that settlement discussions concluded without resolution on April 8, 2019.
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`4
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`12.
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`Applicant further relied upon the Board’s subsequent order to vacate its order,
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`granting the 90-day extension dated July 8, 2019, and termination of the extension proceeding.
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`See Exhibit C. Applicant is dissatisfied with the Board’s subsequent reinstatement of the
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`extension proceeding after the entry of an order of termination, primarily based upon Opposer’s
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`post-filing settlement offer of May 14, 2019. It is clear from Opponent’s own statements that
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`Applicant rejected that settlement offer for co-existence. This post-filing offer was essentially the
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`same settlement offer presented to and likewise rejected by Applicant during the parties’
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`conference call on April 8, 2019. This post-filing settlement offer was the only evidence
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`considered by the Board, and only Opposer’s unilateral and incorrect belief that settlement
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`discussions were on-going were found by the Board to be the basis for good cause in support of
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`the extension of time to oppose. Opposer knew or should have known that this co-existence
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`settlement offer would likewise be rejected by Applicant before its 90-day extension was filed on
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`May 6, 2019, and its second settlement offer was made post-filing (8 days later) on May 14,
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`2019. These self-serving statements are material misrepresentations made to the Board to support
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`the 90-day extension request, and, as such, cannot support a finding of reasonableness in
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`Opposer’s stated belief.
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`13.
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`Applicant respectfully requests that the Board follow its own precedent to find
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`notice of opposition untimely where the parties were not engaged in bilateral settlement
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`negotiations at the time of filing of the extension request by an opposer, and the open-ended
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`invitations for a party to propose future settlement were insufficient. In Central Mfg. Inc. v. Third
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`Millenium Technology, Inc., 61 U.S.P.Q. 2d (BNA) 1210, this Board ruled that:
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`“[i]nasmuch as applicant has shown that it was not discussing settlement
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`with opposer and did not agree to the proposed extensions, applicant has refuted
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`the representations of fact made by the opposer in its third and fourth requests to
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`extend the opposition period. Thus, it is clear that the two extension requests
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`were based on untruths and were filed in bad faith for the improper purpose of
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`5
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`obtaining a benefit from the Board to which opposer was not entitled.” Id. at
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`1212.
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`For the same reasons stated in Central Manufacturing, Applicant’s statements refuting
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`Opposer’s claims of on-going settlement at the time of its filing of the extension requests
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`should have been given due weight by the Board. Applicant respectfully requests that its
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`refuting statements should be given due and proper consideration by the Board under this
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`motion and brief to dismiss.
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`14.
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`The First Extension Request for the longer 90-day period was filed by
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`Opposer without good cause in an attempt to harass and cause unnecessary delay or
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`needless increase in the cost of the Application. Applicant’s legal rights to obtain and use
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`trademark registration for the mark STOCKDALE are highly likely to be impaired or
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`delayed unnecessarily and additional costs incurred by both parties (including litigating
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`two different actions over the same mark STOCKDALE in two different judicial forums).
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`Opposer has made misleading representations of fact to the Board in order to obtain the
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`benefit of extensions of time to oppose to which Opposer was not entitled at the time of
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`filing. Based on the foregoing, Applicant respectfully claims that Opposer’s current
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`notice of opposition is untimely and should be dismissed.
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`II.
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`LACK OF STANDING
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`15.
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`Applicant further contends that Opposer does not have standing to file an
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`opposition and thus, the filing of this notice of opposition is merely a ruse to delay the
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`prosecution of the Application and is made without merit.
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`16.
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`As previously stated, on or about August 24, 2018, Applicant filed a trademark
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`infringement lawsuit in the United States District Court for the Southern District of Texas
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`(Houston Division) against Opposer and its affiliates, claiming priority and likelihood of
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`confusion arising from its unauthorized use of the mark STOCKDALE in connection with its own
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`real estate investment asset and property management services and real estate development
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`6
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`services. Copies of Applicant’s First Amended Complaint and Application for Temporary
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`Restraining Order and Preliminary and Permanent Injunctive Relief filed December 14, 2018
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`(“Complaint”), and Opposer’s Answer filed December 28, 2018 (“Answer”), Brief in Opposition
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`to Applicant’s Application For Preliminary Injunctive Relief filed January 4, 2019 (“Brief”), and
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`Expert Report of Nevium Intellectual Property Consultants dated July 25, 2019 (“Expert Report”)
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`in the Texas Lawsuit are attached hereto as Exhibits D, E, F and G, respectively.
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`17.
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` Applicant claims a likelihood of confusion between Opposer’s use of the mark
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`STOCKDALE in connection with real estate investment and property management services based
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`on priority of use under Applicant’s common law trademark rights, and damages resulting
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`therefrom. See Complaint Paragraphs 36, 39, 51, 60, and 63. However, Opposer denies any
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`likelihood of confusion or damages. See Answer 36, 39, 51, 60 and 63. Opposer further states in
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`its Brief that “based on the nature of [Applicant’s] business, the sophistication of the parties
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`involved, and the value of the real estate projects at issue, it is virtually impossible for any alleged
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`confusion to every result in harm to [Opposer] or [Applicant].” (emphasis added)
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`18.
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`To have standing to oppose a Federal trademark application, Opposer must show
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`a reasonable basis for its belief that it will suffer damage if the mark is registered and a real
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`interest (or direct and personal stake) in the outcome of the proceeding. TMEP Section 309.03(a)
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`and (c) and 1503.01. A “real interest” can be proven by a claim of a likelihood of confusion that
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`is not wholly without merit, including claims of prior use of a confusingly similar mark. Standing
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`also can be pled if Opposer has asserted a likelihood of confusion in another proceeding
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`involving the same marks, which is not present in this case. TMEP Section 309.03(c). Lastly,
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`standing also can based upon a Section 2(f) refusal of a pending application filed by Opposer
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`citing Applicant’s mark (TMEP Section 309.03(c)), but, to Applicant’s knowledge, there is no
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`such Section 2(f) refusal because there is no pending application for a mark containing
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`STOCKDALE filed in the name of Opposer before the USPTO.
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`7
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`19.
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`Discovery has now been concluded in the Texas Lawsuit. To Applicant’s
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`knowledge, after extensive discovery and expert reports over the last 10 months, Opposer has not
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`changed its resolute position esponsed in its Answer and Brief that there is no likelihood of
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`confusion and there is no harm from Opposer’s use of the mark STOCKDALE. Significantly,
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`Opposer’s own expert witness opined that “the term “STOCKDALE” does not provide a benefit
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`or contribution to [Opposer’s] business or operations” and Opposer relies on its personal
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`customer business relationships in order to solicit and provide property investment services rather
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`the name or mark STOCKDALE. See Expert Report at page 5.
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`20.
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`According to 37 CFR Section 11.18, the party presenting any filing to the Board
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`is certifying that the statements made in such filing are believed to be true, and such party shall be
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`subject to the penalties of perjury for knowingly and willfully making false, fictitious or
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`fraudulent statements or representations, and violations of this section may jeopardize the
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`probative value of the filing. Such filing party also is certifying that to the best of his/her
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`knowledge, information and belief, the paper is not being presented for an improper purpose,
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`including harassment or unnecessary delay.
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`21.
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`Opposer’s pleadings under oath in the Texas Lawsuit unequivocally contradict
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`any reasonable basis for any belief that it will suffer damages and that there is a likelihood of
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`confusion arising from Opposer’s use of the mark STOCKDALE. Opposer’s Expert Report
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`likewise has been submitted in support of its pleadings in the Texas Lawsuit. These pleadings
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`were known to, and made under oath, by Opposer prior to its filing of the first extension of time
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`citing good cause, and its response to Applicant’s request for reconsideration of extension of time
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`to oppose, and this resulting notice of opposition.
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`22.
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`However, in its notice of opposition, Opposer now makes wholly contradictory
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`statements in order to claim a “real” interest and legal standing to oppose the Application and
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`bring this opposition action. Opposer claims, as statutory grounds to oppose, two general
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`statements that Applicant’s demands in the Texas Lawsuit are interfering with Opposer’s use of
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`8
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`and right to use Opposer’s names, causing harm to Opposer, which harm is unspecified and
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`unknown, and that the registration of the mark at issue would further interfere with the Opposer’s
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`current business plans, which plans likewise are unspecified and unknown. See Section 7 of
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`Opposer’s notice of opposition. To prevail, however, Opposer must prove these unknown claims
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`of damages and harm. See TMEP Section 309.03(c)(1).
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`23.
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`TMEP Section 303.03 further specifies that the term “damage” as used in
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`Trademark Act Section 13 and 14, 15 U.S.C. Sections 1063 and 1064, concerns a party’s standing
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`to file an opposition, which standing must be rooted in a “reasonable basis for its belief in
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`damage.” The allegations in support of Opposer’s belief of damage also must have a “reasonable
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`basis in fact.” See TMEP Section 303.03; see also Ritchie v. Simpson, 170 F.3d 1092, 50
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`USPQ2d 1023, 1027 (Fed. Cir. 1999) (citing Universal Oil Products v. Rexall Drug & Chemical
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`Co., 463 F.2d 1122, 174 USPQ 458, 459-60 (CCPA 1972) and stating that the belief of damage
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`alleged by plaintiff must be more than a subjective belief)); McDermott v. San Francisco
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`Women’s Motorcycle Contingent, 81 USPQ2d 1212, 1215 (TTAB 2006), aff’d unpub’d, 240
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`Fed. Appx. 865 (Fed. Cir. July 11, 2007), cert. denied, 552 U.S. 1109 (2008). Otherwise, there is
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`no proper standing for Opposer to file this notice of opposition.
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`24. While Opposer has asserted claims that the mark at issue is primarily merely a
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`surname, is not inherently distinctive, and has not acquired distinctiveness in the Texas Lawsuit
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`and this notice of opposition, Opposer’s notice pleading fails to show in any way how these two
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`grounds alone cause damage or harm to Opposer. Again, there are merely two general assertions
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`of damages in Section 7 of Opposer’s notice of opposition, but there is no correlation in its
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`remaining statements (albeit incomplete and out-of-context representations to the Texas Lawsuit
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`pleadings, orders and discovery to date) to support (or even identify) its claims for damages.
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`Upon information and belief, Applicant believes that Opposer’s “real” interest is not damage or
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`harm, but instead to delay this process by raising facts in disparaging manner and unsupported
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`claims such that a mark registration will not issue before trial in the Texas Lawsuit.
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`9
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`25.
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`Even if Opposer could prove the selective, partial facts set forth in its notice of
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`opposition to show a surname refusal or a lack of inherent or acquired distinctiveness, taking
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`Opposer at its word, then Opposer by its own admissions is neither being harmed or damaged by,
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`nor causing harm or damage to, Applicant’s use of the mark STOCKDALE. Thus, absent such
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`harm or damage, Opposer does not have standing to file this opposition or even the statutorily-
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`required reasonable basis in fact for its belief that it will be damaged by the registration of the
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`Application.
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`26.
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`Opposer further has filed this notice of opposition on grounds of fraud on the
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`USPTO citing In re Bose Corp., 580 F. 3d 1240, 91 USPQ2d (BNA) 1938 (Fed. Cir. 2009) based
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`on unsubstantiated allegations that Applicant’s president and attorney of record have made
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`willfully false statements in filing the Application and other responses, including a Section 2(f)
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`declaration of acquired distinctiveness, with prior knowledge of Opposer. However, Opposer’s
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`allegations are wildly off-base, and are insufficient to support a claim of fraud under In re Bose
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`Corp. and other legal precedent of the Board and Federal courts in trademark appeals and
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`oppositions.
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`27.
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`In the In re Bose Corp. case, the court clearly stated that a party seeking to cancel
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`a trademark registration for fraudulent procurement bears a heavy burden of proof and “indeed
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`the very nature of the charge of fraud requires that it be proven ‘to the hilt’ with clear and
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`convincing evidence – [t]here is no room for speculation, inference, or surmise, and any doubt
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`must be resolved against the charging party.” Id. at 1243; see also San Juan Prods., Inc. v. San
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`Juan Pools of Kan., Inc., 849 F. 2d 468, 472 (10th Cir. 1988) (stating that in determining whether
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`a statement is fraudulent, courts must focus on the declarant’s subjective, honestly held, good
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`faith belief). For Opposer to prevail on its fraud claim under In re Bose Corp, Opposer can only
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`prove that the Application for the mark at issue has been obtain fraudulently if Applicant
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`knowingly makes a false, material representation with the intent to deceive the USPTO, and
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`10
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`“inferences drawn from less than clear and convincing evidence cannot satisfy the deceptive
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`intent requirement.” Id. at 1245.
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`28.
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`Applicant has not misled this Board as to fraud being committed based on its
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`knowledge of Opposer prior to filing the Federal application for the mark at issue and the Section
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`2(f) declaration in the prosecution thereof. As the Federal courts have repeatedly held, a senior
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`user of a mark is entitled to claim exclusive rights and seek a Federal registration even though
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`there may exist and it knows of a junior user of the mark. See Citibank, N.A. v. Citibanc Group,
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`Inc., 724 F.2d 1540 (11th Cir. 1988), citing 4 J. Thomas McCarthy, McCarthy on Trademarks and
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`Unfair Competition § 31.21[3][d][ii] (3rd ed. 1996) ("If an applicant has a good faith belief that it
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`is the senior user, then the oath cannot be fraudulent. Any alleged failure to disclose use by junior
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`users is irrelevant and could not be material to the grant of a federal registration."); see also
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`Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513, 1538 (SD Texas 1996); aff’d as
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`modified, 155 F. 3d 526 (5th Cir. 1998) (finding that a senior user’s knowledge of a junior user’s
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`use of the same mark is irrelevant where the senior user had a good faith belief that it was the
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`senior user of the mark, and the senior user’s registration of the mark without mentioning the
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`junior user’s use of the mark does not constitute fraud on the USPTO.”). As clearly shown in the
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`Texas Lawsuit and other pleadings to date in the extension of time to oppose, Applicant (and any
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`of its declarants and trademark counsel of record) have a reasonable good faith belief that
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`Applicant is a senior trademark user trying to enforce its trademark rights against a junior user.
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`Awareness of Opposer and its alleged defenses prior to filing the Application or any Section 2(f)
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`declaration does not negate such good faith belief.
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`29.
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`Neither does Opposer’s belief that its investment services are “substantially
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`bigger” negate Applicant’s good faith belief in its substantially exclusive use of the mark at issue.
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`Federal courts have held when comparing marks in use that the overriding concern is not only to
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`prevent buyer confusion as to the source of the goods and/or services, but to protect the senior
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`user from adverse commercial impact due to use of a similar mark by a newcomer. See In re
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`11
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`Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any
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`doubt regarding a likelihood of confusion determination is resolved in favor of the senior user.
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`See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003
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`(Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026
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`(Fed. Cir. 1988). The In re Shell Oil court enumerated that bigger size does not matter over
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`priority of time in use, as follows:
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`“Even if the overlap between consumers of registrant's RIGHT-A-WAY services
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`and Shell's RIGHT-A-WAY services were small in relation to the total number of
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`Shell customers, it is not de minimis in relation to the registrant's customers. A
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`newcomer does not gain the right to register a substantially identical mark simply
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`because the number of persons exposed to the registrant's mark may be small in
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`relation to the newcomer's volume of use. The registrant/senior user is
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`safeguarded by the trademark law, as is the consuming public, from likelihood of
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`confusion caused by the entry of a junior user of a confusingly similar mark. Park
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`'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S. Ct. 658, 663-
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`64, 83 L. Ed. 2d 582, 224 USPQ 327, 331 (1985). The trademark law not only
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`protects the consumer from likelihood of confusion as to commercial sources and
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`relationships, but also protects the registrant and senior user from adverse
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`commercial impact due to use of a similar mark by a newcomer. Id. at 1208.
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`Preservation of senior rights and priority in use is exactly the reason why Applicant filed the
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`Application and the 2(f) declaration for the mark at issue in the first place – that is, to protect its
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`senior trademark rights from Opposer’s junior use in the same commercial real estate market.
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`Based on the foregoing, Opposer has not met its high burden of proof for fraud, and thus, its
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`notice of opposition based on such fraud claim should be dismissed.
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`30. While Opposer has made other misleading statements of fact in its petition to
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`oppose, including without limitation, Applicant’s arguments of inherent distinctiveness and/or
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`12
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`acquired distinctiveness made in the alternative during prosecution and the mark at issue being
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`primarily merely a surname and not inherently distinctive and/or acquired distinctiveness,
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`Applicant reserves its right to redress such unsubstantiated claims and assert defenses in its
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`answer, should the Board not grant this motion and brief to dismiss.
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`Based on the foregoing, Applicant hereby prays that the Board grant its motion and brief
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`to dismiss Opposer’s notice of opposition and terminate this proceeding, place the Application in
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`line for registration, and any such other relief as the Board may see fit to award.
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`Dated on September 23, 2019.
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`Respectfully submitted,
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`Stockdale Investment Group, Inc.
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`/S/ Cathryn A. Berryman
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`Cathryn A. Berryman
`Tom Van Arsdel
`Attorneys for Applicant
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`WINSTEAD PC
`2728 N. Harwood Street, Suite 500
`Dallas, Texas 75201
`cberryman@winstead.com
`tvanarsdel@winstead.com
`(214) 745-5172
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`ELECTRONIC MAIL FILING CERTIFICATE
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`I hereby certify that this motion and brief to dismiss is being submitted to the USPTO
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`TTAB by electronic filing in ESTTA on September 23, 2019.
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`Signed: /S/ Cathryn A. Berryman
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`Date: September 23, 2019
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`CERTIFICATE OF SERVICE
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`I certify that a true copy of this motion and brief to dismiss has been served by email to
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`Opposer’s attorney of record on September 23, 2019, at the following email addresses:
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`Collin A. Rose
`Chamberlain, Hrdlicka, White, Williams & Aughtry, P.C.
`1200 Smith St., 14th Floor
`Houston, TX 77002
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`Email: Collin.rose@chamberlainlaw.com
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`trademarks@chamberlainlaw.com
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`/S/ Cathryn A. Berryman
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`EXHIBIT C
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`DELGIZZI
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`July 8, 2019
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`Applicant: Stockdale Investment Group, Inc.
`Serial No.: 88006185
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`By the Trademark Trial and Appeal Board:
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`No response to the Board’s order dated June 17, 2019 having been received, the
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`Board’s order dated May 7, 2019 is vacated and the extension of time process is
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`terminated. The application will be forwarded for issuance of a registration in due
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`course.
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`Please do not hesitate to contact the Trademark Trial and Appeal Board for any
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`questions relating to order.
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`Applicant’s Correspondence Address:
`CATHRYN A BERRYMAN
`WINSTEAD PC
`2728 N HARWOOD STREET, SUITE 500
`DALLAS, TX 75201 UNITED STATES
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`Potential Opposer’s Correspondence Address:
`COLLIN A ROSE
`CHAMBERLAIN HRDLICKA WHITE WILLIAMS & AUGHTRY PC
`1200 SMITH ST, 14TH FLOOR
`HOUSTON, TX 77002 UNITED STATES
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`

`

`EXHIBIT A
`EXHIBIT A
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`7
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`

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`Case 4:18-cv-02949 Document 2 Filed in TXSD on 08/27/18 Page 1of1
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`Ao 120
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`TO:
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`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P .O . Box 1450
`Alexandria, VA 22313- 1450
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`REPORT O N THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT
`OR TRADEMARK
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`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court for the Southern District of Texas on the fo llowing Trademarks or Patents.
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`Docket No.
`4:18- cv- 02949
`
`Date Filed:
`8/24/2018
`
`U.S District Court
`SOUTHERN DISTRICT OF TEXAS
`
`Plaintiff(s)
`Stockdale Investment Grouo, Inc . d/b/a Stockdale
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`PATENT OR
`TRADEMARK NO .
`
`DATE OF PATENT
`OR TRADEMARK
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`I Defendant( s)
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`Stockdale Caoital Partners Re Fund I GP, LLC. et al.
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`HOLDER OF PATENT OR TRADEMARK
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`A conv of the complaint is beinl? mailed with this form.
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`1.
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`2.
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`3.
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`4.
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`5.
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`In the above- entitled case, the following oatent(s)/trademark(s) have been included:
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`DATE INCLUDED
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`INCLUDED BY Amendment Answer Cross Bill Other Pleadin!l
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`PATENTOR
`TRADEMARK NO.
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`DATE OF PATENT
`OR TRADEMARK
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`HOLDER OF PATENT OR TRADEMARK
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`1.
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`2.
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`3.
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`4.
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`5.
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`In the above- entitled case, the following decision has been rendered or judgment issued:
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`DECISION/JUDGMENT
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`Clerk:
`David J. Bradley, Clerk
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`I By Deputy Clerk:
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`CKrus
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`I Date:
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`8/27/2018
`
`

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`Case 4:18-cv-02949 Document 21 Filed in TXS