Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1266902
`
`Filing date:
`
`02/17/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91268332
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Plaintiff
`Simple Design Ltd.
`
`NAZLY AILEEN BAYRAMOGLU
`BAYRAMOGLU LAW OFFICES LLC
`1540 WEST WARM SPRINGS RD STE 100
`HENDERSON, NV 89014
`UNITED STATES
`Primary email: tm@bayramoglu-legal.com
`Secondary email(s): nazly@bayramoglu-legal.com, den-
`iz@bayramoglu-legal.com, david@bayramoglu-legal.com
`702-462-5973
`
`Request for Reconsideration of Final Board Decision
`
`David Silver
`
`tm@bayramoglu-legal.com, nazly@bayramoglu-legal.com, den-
`iz@bayramoglu-legal.com, david@bayramoglu-legal.com,
`gokalp@bayramoglu-legal.com
`
`Signature
`
`Date
`
`/David Silver/
`
`02/17/2023
`
`Attachments
`
`20230217 Motion for Reconsideration of 91268332.pdf(199630 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Simple Design Ltd.,
`
`
`Opposer,
`
`
`vs.
`
`Cucufish Tech Co., Limited,
`
`
`Applicant.
`
`
`
`Opposition Proceeding No.: 91268332
`
`Application No.: 90126696
`
`OPPOSER’S MOTION FOR RECONSIDERATION OF FINAL JUDGMENT
`
`COMES NOW Opposer, Simple Design Ltd. (“Opposer” or “Simple Design”), by and
`
`through its counsel Bayramoglu Law Offices LLC, hereby submits its Motion for Reconsideration
`
`of the Board’s final decision (ECF No. 11) pursuant to 37 C.F.R. § 2.129(c) and TBMP §§ 518,
`
`543.
`
`PROCEDURAL HISTORY
`
`
`
`Opposer initiated the present Opposition proceeding (the “Opposition”) on March 23,
`
`2021. See 1 TTABVUE. Applicant Cucufish Tech Co., Limited (“Applicant” or “Cucufish”) filed
`
`an answer on May 1, 2021. See 4 TTABVUE. Opposer submitted its trial testimony on February
`
`25, 2022. See 5-6 TTABVUE. Applicant submitted its trial testimony on April 27, 2022. See 7
`
`TTABVUE. Opposer submitted rebuttal testimony on June 9, 2022. See 8 TTABVUE. Opposer
`
`submitted its trial brief on August 8, 2022. See 9 TTABVUE. Applicant did not submit an opposing
`
`trial brief and thus there was no rebuttal brief. Opposer’s trial brief was the only trial brief on
`
`record. The Board issued a ruling dismissing the Opposition on January 20, 2023. See 11
`
`
`
`1
`
`

`

`TTABVUE. For the reasons stated herein, Opposer is requesting the Board reconsider its final
`
`decision based on Opposer’s belief that applicable law was not properly applied in this case and
`
`prevented a full decision on the merits.
`
`LEGAL STANDARD
`
`
`
`“The filing of a request for rehearing, reconsideration, or modification of a decision issued
`
`after final hearing is governed by 37 C.F.R. § 2.129(c).” TBMP § 543. “Any request for rehearing
`
`or reconsideration or modification of a decision issued after final hearing must be filed within one
`
`month from the date of the decision.” 37 C.F.R. § 2.129(c); TBMP §§ 518, 543. As the final
`
`decision was January 20, 2023, the filing of the present Motion for Reconsideration falls within
`
`the one month time period and is therefore timely.
`
`
`
`“If a request for rehearing, reconsideration, or modification of a decision after final hearing
`
`is timely filed, the time for filing an appeal, or for commencing a civil action for review of the
`
`Board’s decision, will expire sixty-three (63) days after action on the request.” TBMP § 543;
`
`TBMP §§ 902.02, 903.04. Therefore, Opposer requests the Board suspend the time for the filing
`
`of an appeal or civil action until after decision on the present motion.
`
`
`
`A motion for reconsideration is generally based on the evidence of record and applicable
`
`law and may not be used to introduce additional evidence nor should it simply reargue the points
`
`in the moving party’s trial brief. See TBMP § 543. The request “should be limited to a
`
`demonstration that, based on the evidence properly of record and the applicable law, the Board’s
`
`ruling is in error and requires appropriate change.” TBMP § 543. As explained herein, Opposer
`
`contends the Board failed to probably join or substitute Hangzhou InShot Tech Co., Ltd. (“InShot”)
`
`as a plaintiff in this matter and misapplied the definition of the term “and/or” and thus did not give
`
`
`
`2
`
`

`

`Opposer’s testimony the weight it deserved. Opposer believes these errors led to an incomplete
`
`and erroneous decision that Opposer is requesting the Board now reconsider.
`
`ARGUMENT
`
`a. Joinder or Substitution of Hangzhou InShot Tech Co., Ltd. as Party-Plaintiff
`
`In making its final decision, the Board ruled that while Opposer had entitlement to a
`
`statutory cause of action to bring the Opposition, Opposer could not rely on the priority dates in
`
`the trademark registrations cited by Opposer as the trademarks were previously assigned to InShot.
`
`The Board cited to the cases Illyrian Imp., Inc. v. ADOL Sh.p.k., 2022 USPQ2d 292 (TTAB
`
`2022) and Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028 (TTAB 2017) regarding a
`
`licensee’s inability to use the priority dates of the owner of the mark. 11 TTABVUE 10-11.
`
`However, the Board also ruled that Opposer had entitlement to a statutory cause of action due to
`
`Opposer’s prior ownership of two of the pleaded marks, license to use the marks, and authorization
`
`to enforce the marks demonstrated a real interest in this proceeding and a reasonable belief in being
`
`damaged by the registration of Application No. 90126696 (“Applicant’s Mark”). 11 TTABVUE
`
`9-10.
`
`Due to Simple Design’s prior ownership rights and the direct authorization to enforce the
`
`marks on behalf of InShot, Simple Design filed the original extension of time to oppose
`
`Applicant’s Mark. As Simple Design was the party that filed the original extension of time to
`
`oppose Applicant’s Mark, Simple Design is the plaintiff in the Opposition. Regardless of the
`
`plaintiff identification, the interests of Simple Design and InShot are directly aligned in this matter
`
`and the underlying registrations and facts would not change if the plaintiff was InShot in addition
`
`to or instead of Simple Design. By acknowledging Simple Design’s prior ownership, current
`
`license, and right to enforce from InShot, but refusing to make a final ruling on the merits for a
`
`
`
`3
`
`

`

`likelihood of confusion analysis, the Board has essentially deferred deciding the real issue at hand,
`
`which remains undetermined.
`
`InShot would need to initiate its own cancellation proceeding, using the same cited marks
`
`against the same party-defendant under the same set of facts. This would only create unnecessary
`
`costs for both InShot and Cucufish while also wasting the Board’s time and resources, as a final
`
`determination for a likelihood of confusion based on the same marks and the same facts can be
`
`presently made. Not only would joining or substituting InShot benefit both parties and the Board
`
`in costs and judicial economy, but there is precedent for InShot’s joinder or substitution that the
`
`Board did not seem to consider in making its final decision.
`
`i.
`
`Permissive Joinder
`
`Permissive joinder allows a plaintiff to be joined if there is a right to relief arising from the
`
`same occurrence or series of occurrences and with common questions of law or fact for all
`
`plaintiffs. Fed. R. Civ. P. Rule 20(a)(1). Here, InShot would have a right to relief from the
`
`likelihood of confusion with the cited marks based on the same occurrence of the filing of
`
`Applicant’s Mark and has the same questions of law and fact as Simple Design as the allegations
`
`would be identical and based on identical marks with the same defendant. Therefore, permissive
`
`joinder would be appropriate.
`
`Alternatively, the Board could grant a substitution of InShot for Simple Design as the party-
`
`plaintiff in this matter as the true owner of the cited registrations. “If an interest is transferred, the
`
`action may be continued by or against the original party unless the court, on motion, orders the
`
`transferee to be substituted in the action or joined with the original party.” Fed. R. Civ. P. Rule
`
`25(c). “Under the provisions of the Federal Rules, amendment should be freely granted to reflect
`
`the true circumstances and the present proper party in interest as reflected by the record.” Arbrook,
`
`
`
`4
`
`

`

`Inc. v. La Citrique Belge, Naamloze Vennootschap, 184 U.S.P.Q. 505 at *1 (TTAB 1974)
`
`(approving substitution of party-opposer after deferring the motion until final hearing). In this case,
`
`it would not make sense for the Board to refuse the joinder or substitution of InShot, as InShot’s
`
`inclusion as a party-plaintiff would only help have a decision on the merits for the likelihood of
`
`confusion issue. There would be no prejudice to Applicant, as Applicant would also be subjected
`
`to another full proceeding brought by InShot rather than getting a determination on the merits here
`
`and now.
`
`Even though Simple Design did not file a prior motion to join or substitute InShot, such a
`
`motion is not required for the Board to join or substitute a party as necessary for judicial efficiency.
`
`“When there has been an assignment of a mark that is the subject of, or relied upon in, an inter
`
`partes proceeding before the Board, the assignee may be joined or substituted, as may be
`
`appropriate, upon motion granted by the Board, or upon the Board’s own initiative.” TBMP §
`
`512.01. The Board has the ability, on its own initiative, to join or substitute an assignee. In fact, in
`
`another proceeding between these same parties (Opposition Proceeding No. 91268333, 14
`
`TTABVUE 8-10), this Board joined Astral IP Enterpreise Ltd. as a party-plaintiff due to an
`
`assignment of a trademark. Simple Design contends that InShot should have also been joined or
`
`substituted considering the acknowledgement of InShot’s current ownership of the marks and
`
`authorization for Simple Design to enforce the marks.
`
`The timing of the assignment being prior to the initiation of the Opposition is also not a bar
`
`to the Board joining or substituting a party. “When a party acquires an opposer, or the opposer’s
`
`pleaded mark and the goodwill associated therewith, the acquiring party may be substituted if the
`
`assignment occurred prior to commencement of the proceeding, or if the discovery and trial periods
`
`have closed, or if the parties so stipulate.” William & Scott Co. v. Earl's Restaurants Ltd., 30
`
`
`
`5
`
`

`

`U.S.P.Q.2d 1870 at *2 (TTAB 1994) (emphasis added). The Board has specifically approved the
`
`substitution of a new opposer when the assignment of the pleaded registrations occurred prior to
`
`the filing of the notice of opposition. See Cf. Drive Trademark Holdings LP v. Inofin, 83 USPQ2d
`
`1433, 1434 n.1 (TTAB 2007). The federal rules also allow a party to be added by the Court at any
`
`time. See Fed. R. Civ. P. Rule 21. Therefore, the Board has the authority to join or substitute InShot
`
`in this matter on its own initiative even without a prior motion and the assignments of the pleaded
`
`marks being prior to the filing of the Opposition.
`
`ii.
`
`Required Joinder
`
`Even if the Board does not wish to exercise its discretion in including InShot as a party-
`
`plaintiff in this proceeding, existing law supports the requirement for the Board to add InShot as a
`
`party-plaintiff and provide a full and complete decision on the merits. The Supreme Court in
`
`Independent Wireless Telegraph Co. v. Radio Corporation of America, 269 U.S. 459, 466–68
`
`(1926) outlined a required joinder rule that was incorporated into Fed. R. Civ. P. Rule 19. This
`
`rule requires joinder of a person that is subject to service of process and will not deprive the court
`
`of subject matter jurisdiction if “(A) in that person’s absence, the court cannot accord complete
`
`relief among existing parties; or (B) that person claims an interest relating to the subject of the
`
`action and is so situated that disposing of the action in the person’s absence may: (i) as a practical
`
`matter impair or impede the person’s ability to protect the interest; or (ii) leave an existing party
`
`subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations
`
`because of the interest.” Fed. R. Civ. P. Rule 19(a)(1).
`
`Here, InShot can be joined, just as Astral IP Enterprises Ltd. was joined in Opposition
`
`Proceeding No. 91268333, without prejudice to any party or any issue as to subject matter
`
`jurisdiction. Furthermore, the Board cannot afford complete relief among the existing parties as
`
`
`
`6
`
`

`

`there was no final ruling as to the merits of the likelihood of confusion issue. Simple Design, as
`
`the existing party, has an entitlement to a statutory cause of action regarding the likelihood of
`
`confusion, but is unable to be provided complete relief without the joinder of InShot. InShot also
`
`has a direct interest in stopping the registration of Applicant’s Mark, which will be significantly
`
`impaired or impeded without InShot’s joinder as InShot would not be allowed to timely bring its
`
`own separate challenge to Applicant’s Mark prior to the registration. Applicant would also be left
`
`subject to multiple litigations regarding the same marks and same facts that would be otherwise
`
`unnecessary if InShot were properly joined. The statute creates a compulsory rule for Courts, in
`
`that the court “must order” the joinder of a party that has not been properly joined. Fed. R. Civ. P.
`
`19(a)(2).
`
`The federal circuit has interpreted Fed. R. Civ. P. Rule 19 and Independent Wireless as
`
`“directing courts to join patentees along with licensees who otherwise have standing.” Lone Star
`
`Silicon Innovations LLC v. Nanya Technology Corporation, 925 F.3d 1225, 1237 (Fed. Cir. 2019).
`
`In the Lone Star case, the licensee was determined to have standing, but not all substantial rights
`
`in the asserted patents required to bring a patent infringement action. However, the Court in Lone
`
`Star held that the Court was required to consider whether it was feasible to join the patent owner
`
`for the purposes of required joinder. While the Lone Star case involved patent rights, the
`
`underlying facts are similar to the present trademark proceeding. The licensee, being Simple
`
`Design, is asserting rights where the Board has confirmed entitlement to a statutory cause of action
`
`but denied that substantial ownership rights for Simple Design existed to proceed with the
`
`likelihood of confusion analysis. Therefore, in line with the reasoning in Lone Star, InShot needed
`
`to be considered under a required joinder as the trademark owner.
`
`
`
`7
`
`

`

`It is clear that joining InShot is certainly feasible in this matter. The marks involved were
`
`assigned to and currently owned by InShot. InShot has a direct stake in the outcome and would be
`
`unable to protect its interests in preventing the registration of Applicant’s Mark without being
`
`joined. There is no procedural prevention such as claimed immunity that would prevent InShot
`
`from being joined. Lastly, it is clearly feasible to join InShot if the Board was able to join Astral
`
`IP Enterprise Ltd. in Opposition Proceeding No. 91268333. The federal circuit in Lone Star held
`
`that it was erroneous for the Court to dismiss the case and not consider the required joinder of the
`
`patent owner. Here, it was erroneous to dismiss the Opposition without considering the required
`
`joinder of InShot.
`
`By not previously joining or substituting InShot, the Board failed to provide a decision on
`
`the merits for the likelihood of confusion, ruling solely that Simple Design did not have priority.
`
`This only creates a situation where InShot would bring its own separate cancellation proceeding
`
`against the same defendant asserting the same marks on the same facts. There is no need for either
`
`InShot or Applicant to have to go through another entire proceeding when the Board has the
`
`authority and ability to issue a final ruling on the merits in the present case. Therefore, in light of
`
`the Board’s original determination, Opposer contends that InShot should have been joined or
`
`substituted as the party-plaintiff in order to have the matters fully and finally resolved on the
`
`merits.
`
`b. The Term “and/or” is Not Ambiguous, Contradictory, or Inconsistent
`
`The Board reasoned that the testimony from Opposer’s witness Zeng Li was ambiguous
`
`simply because of the use of the phrase “and/or” in the testimony declaration. 11 TTABVUE 11-
`
`12. The Board takes judicial notice of a dictionary definition from Merriam-Webster Dictionary,
`
`but Opposer contends that this was an incorrect application of the definition for the term “and/or”,
`
`
`
`8
`
`

`

`which has long had a consistent and static definition in the legal field. See “AND/OR” AND THE
`
`PROPER USE OF LEGAL LANGUAGE, Ira P. Robbins, 77 Md. L. Rev. 311 (2018). The term
`
`“and/or” has a definite meaning of “A or B, or both.” Id. at 315. Many Supreme Court justices,
`
`including justices that dislike the phrase “and/or” have authored opinions using the very term. Id.
`
`(see internal citations). “Courts have held that and/or sufficiently conveys the overall intent of the
`
`party using it and that the phrase and/or has a definite meaning, thus often refusing to label it as
`
`ambiguous.” Id. at 328. Legislatures also commonly use the phrase “and/or” when drafting
`
`statutes, in which the statutes are generally interpreted based on the statute’s overall objective. Id.
`
`at 330. While Courts may dislike the use of the phrase “and/or,” Courts will erroneously hold that
`
`the phrase “and/or” is ambiguous without correctly taking into account the phrase’s plain meaning.
`
`Id. at 333. Here, the Board determined the definition to be “A and B” and “A or B”, but that is not
`
`the correct definition as has been long used in the legal field by even the Supreme Court justices.
`
`While the Board may not necessarily like or approve of the use of the phrase “and/or” in Zeng Li’s
`
`testimony declaration, the use of the phrase does not create ambiguity.
`
`The Board seems to take issue with the statements in Paragraphs 11, 12, and 17 of Zeng
`
`Li’s testimony (11 TTABVUE 11) for using the phrase “and/or” and how the testimony mentions
`
`the evidence of Simple Design’s first use for Exhibits SD8 and SD9 (11 TTABVUE 13). However,
`
`these paragraphs are not ambiguous, inconsistent, or contradictory when taking Zeng Li’s
`
`testimony as a whole, specifically taking into account the immediately preceding Paragraphs 9 and
`
`10 of Zeng Li’s testimony regarding Simple Design’s original ownership and assignment of
`
`multiple registrations. See 6 TTABVUE 3, ¶¶ 9, 10.
`
`Zeng Li testifies, and the Board notes in its decision, that Simple Design was the original
`
`owner of Registration Nos. 6066895 and 6193926 and that these registrations were later assigned
`
`
`
`9
`
`

`

`to InShot. As is well established, use by a related company inures to the benefit of the owner of
`
`the trademark. TMEP §§ 1201.01, 1201.03. The term “related company” simply refers to any
`
`person or entity using a mark that is controlled by the owner with respect to the nature of quality
`
`of the goods for which the mark is used. TMEP § 1201.03; 15 U.S.C. §1127. This includes uses
`
`through controlled licensees even if the sole use of the mark was by the controlled licensee. TMEP
`
`§ 1201.03(e). There was no controversy or argument in Applicant’s brief challenging whether
`
`Simple Design had prior ownership and priority rights. Applicant solely argued against the
`
`likelihood of confusion and non-use allegations. Therefore, Simple Design’s prior ownership is
`
`not at issue.
`
`Zeng Li’s testimony is not ambiguous when taking into consideration Simple Design’s
`
`prior ownership of Registration Nos. 6066895 and 6193926 and later assignment of the
`
`registrations to InShot. Use inured to the benefit of Simple Design prior to the assignments,
`
`regardless of whether InShot was the party effectuating the use at the time. Therefore, Simple
`
`Design had use that inured to its benefit, or InShot had use through the actual use in commerce, or
`
`both had use through InShot’s actual use and Simple Design’s inured benefit. Therefore, the phrase
`
`“and/or” meaning “A or B, or both” is entirely accurate.
`
`Following the assignments, InShot took full control of the marks and the use no longer
`
`inured to the benefit of Simple Design, but Simple Design was provided a license to continue to
`
`use and enforce the marks. Therefore, it would not have been accurate for Zeng Li to testify solely
`
`using the terms “or” or “and” separately. Because of the nuances of use of a controlled licensee
`
`inuring to the benefit of the owner of the mark and the later assignments and licenses, the phrase
`
`“and/or” accurately portrays the relationship of use where the individual terms “or” and “and”
`
`would fall short.
`
`
`
`10
`
`

`

`Ultimately, the statements that Simple Design or InShot, or both of them, used the marks
`
`since March 16, 2018 and prior to Cucufish Tech. Co., Limited’s first use date claimed in
`
`Application Serial No. 90126696 are accurate under the circumstances and not ambiguous when
`
`taking the testimony as a whole. Furthermore, Exhibits SD8 and SD9 refer to Simple Design’s first
`
`use because Simple Design was the owner of the mark at the time where the use inured to Simple
`
`Design’s benefit. It is not inaccurate to state that the exhibits show Simple Design’s first use as
`
`that was prior to the assignments where InShot’s use also counted as use for Simple Design’s
`
`ownership of the marks. Therefore, Zeng Li’s testimony should be given proper weight, as an
`
`accurate definition of the phrase “and/or” does not create ambiguity, inconsistencies, or
`
`contradictions in Zeng Li’s testimony.
`
`Simple Design’s prior ownership and InShot’s use inuring to the benefit of Simple Design
`
`prior to the assignments gives Simple Design priority rights in the marks over Applicant’s Mark.
`
`Together with InShot’s license back to Simple Design allowing the use and enforcement of the
`
`marks, Simple Design established priority through the prior rights it accumulated for itself prior to
`
`the assignments that InShot authorized Simple Design to enforce. If the Board maintains its ruling
`
`that Simple Design cannot benefit from the use that inured to its benefit prior to the assignments,
`
`then the Board should be even more compelled to join or substitute InShot as a party in order to
`
`provide a full and complete likelihood of confusion analysis and ruling on the merits.
`
`CONCLUSION
`
`When taking Zeng Li’s testimony as a whole, the statements are not ambiguous,
`
`inconsistent, or contradictory. Simple Design had its own priority rights through its prior
`
`ownership and use inuring to its benefit that are prior to Applicant’s Mark. If the Board maintains
`
`
`
`11
`
`

`

`that Simple Design cannot benefit from this earlier use, then the Board should have joined or
`
`substituted InShot in order to provide a full and complete ruling on the merits.
`
`The Board has the authority and ability to join or substitute InShot in this matter, and by
`
`not doing so failed to provide a full and complete ruling on the merits. Currently, there is no ruling
`
`on the merits as to the likelihood of confusion issues, as the ruling only dismissed Simple Design’s
`
`claims based on a lack of priority and omitted a full analysis of the marks. By refusing to join or
`
`substitute InShot in this proceeding, the Board would essentially be requiring InShot to bring a
`
`separate cancellation action after Applicant’s mark registers. This would deprive InShot of its
`
`interests to stop the registration of Applicant’s Mark that is being pursued by Simple Design with
`
`InShot’s authorization. A separate action initiated by InShot would also be based on the same cited
`
`registrations and involving the same facts. This creates unnecessary expenses on InShot as well as
`
`Applicant and wastes the Board’s resources when a final ruling can be presently provided.
`
`Therefore, based on the arguments above, Opposer is requesting the Board reconsider its
`
`final decision based on Opposer’s belief that applicable law regarding the joinder or substitution
`
`of InShot was not properly applied in this case and prevented a full decision on the merits.
`
`
`
`
`
`Dated: February 17, 2023
`
`
`
`Respectfully Submitted,
` By: /s/ David Silver
`DAVID SILVER
`david@bayramoglu-legal.com
`1540 West Warm Springs Road, Suite 100
`Henderson, NV 89014
`Attorney for Opposer
`
`12
`
`

`

`CERTIFICATE OF SERVICE
`
`I, David Silver, hereby certified that a true correct copy of the foregoing OPPOSER’S
`
`MOTION FOR RECONSIDERATION OF FINAL JUDGMENT was served upon Applicant
`
`by email on this day of February 17, 2023 at the following address:
`
`JIE (LISA) LI
`GREENBERG TRAURIG LLP
`4 EMBARCADERO CENTER SUITE 3000
`SAN FRANCISCO, CA 94111
`lil@gtlaw.com, gtipmail@gtlaw.com, lanej@gtlaw.com,
`zuluetai@gtlaw.com
`
`
`
`By: /s/ David Silver
`DAVID SILVER
`david@bayramoglu-legal.com
`1540 West Warm Springs Road, Suite 100
`Henderson, NV 89014
`Attorney for Opposer
`
`
`13
`
`
`
`
`
`
`
`
`