ESTTA Tracking number:
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`ESTTA1315700
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`Filing date:
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`10/12/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91285059
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`Party
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`Correspondence
`address
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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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`Plaintiff
`Steven L. Lynch
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`RACHEL NICHOLAS
`LEWIS ROCA ROTHGERBER CHRISTIE LLP
`3993 HOWARD HUGHES PARKWAY, SUITE 600
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary email: pto@lewisroca.com
`Secondary email(s): ekohli@lewisroca.com, rnicholas@lewisroca.com, ebax-
`ter@lewisroca.com
`702-949-8200
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`Opposition/Response to Motion
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`Karen Wildman
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`pto@lewisroca.com, ekohli@lewisroca.com, rnicholas@lewisroca.com, ebax-
`ter@lewisroca.com, kwildman@lewisroca.com, adjohnson@lewisroca.com
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`/KAREN WILDMAN/
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`10/12/2023
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`2023.10.12 Opposition to Applicant's Motion for Relief from Default J udgment-
`AUTOGRAPH TTAB#91285059.pdf(158330 bytes )
`2023.10.12 Declaration of Eric Kohli (AUTOGRAPH
`TTAB#91285059).pdf(466811 bytes )
`2023.10.12 Declaration of Steven L. Lynch (AUTOGRAPH TTAB#91285059).p
`df(130511 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Steven L. Lynch,
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`Opposer,
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`v.
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`Daniel Simoni & Marc Wieland,
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`Applicants.
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`Opposition No.: 91,285,059
`Mark: AUTOGRAPH
`Class: 41
`App. Serial No. 97,425,455
`App. Date: May 24, 2022
`Pub. Date: April 18, 2023
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`OPPOSER’S RESPONSE TO APPLICANTS’ MOTION
`FOR RELIEF FROM DEFAULT JUDGMENT
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`Opposer Steven L. Lynch (“Opposer”) hereby submits this opposition to Applicants Daniel
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`Simoni & Marc Wieland’s Motion for Relief from Default Judgment (the “Motion”). Pursuant to
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`Rule 60(b) and TBMP § 544, the Board should deny Applicants’ Motion, as the sole excuse
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`Applicants give for why they did not respond to multiple notices from the Board is a claim that
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`neither they nor their experienced trademark counsel knew they had to respond. But this excuse
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`is insufficient and therefore the Motion should be denied, as the Board has repeatedly held that
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`granting a motion under Rule 60 (b) is only done “in exceptional circumstances,” and only when
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`such circumstances are “persuasively shown” by evidence.
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`Here, the declarations supporting this claim are insufficient to meet that high standard of
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`Rule 60(b), as there is no evidence as to when Applicants knew about the deadlines, when
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`Applicants discussed the deadlines with their counsel, and when Applicants made the decision not
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`to respond to the deadlines. There is also no reason given as to why their experienced trademark
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`counsel, who has been working with Applicants since well before this Opposition was filed, who
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`describes himself as having “litigated extensively . . . in all areas of intellectual property,” and who
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`is now spearheading the Motion, could not have told Applicants, or at least recognized himself,
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`that they needed to file a response to at least one of the multiple deadlines. Finally, Applicants
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`also do not have a meritorious defense to this opposition.
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`Upon information and belief, Applicants were well aware of their application and the status
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`of their application, and had discussed that application in the course of being represented by their
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`experienced trademark counsel. Declaration of Eric Kohli (“Kohli Decl.”), ¶ 3. Allowing a party
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`represented by experienced counsel, where there is evidence that they discussed the opposition
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`with that counsel, to simply throw out a final judgment due to months of missed deadlines would
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`give parties and counsel an incentive to ignore the Board’s notices and orders. Sophisticated
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`trademark owners would know they can increase the cost and burden to challengers, and drag out
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`the length of any proceeding, by ignoring notices with the confidence they will be able to throw
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`out any judgment issued against them.
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`The Board should not allow such excuses to support overturning a final judgment. As in
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`Fischer v. Anderson, the Board should hold that even when a motion to overturn a final judgment
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`is filed within a reasonable time, such motions are denied where the sole basis for the motion is a
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`claim to have not known they needed to respond to a Board notices, as all parties have a duty to
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`adhere to deadlines. Opposition No. 91161452 (TTAB Aug. 3, 2006), aff’d Fischer v. Anderson,
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`250 F. App’x 359 (Fed. Cir. 2007).
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`I.
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`Factual Background
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`While Applicants’ Motion contained a great deal of irrelevant background information
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`regarding the parties, Opposer here will focus only on the facts that are relevant to the current
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`Motion, most of which are undisputed.
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`Opposer and his band began performing under the AUTOGRAPH name and associated
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`trademarks (“AUTOGRAPH Marks”) at least as early as 1984, and at the same time an agreement
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`was made between the original five band members (“Original Autograph Members”) on how use
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`of the AUTOGRAPH Marks would be approved. Declaration of Steven L. Lynch (“Lynch Decl.”),
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`¶ 4. Musical performances and goods from those Original Autograph Members have been sold
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`continuously to consumers in the United States under the AUTOGRAPH Marks ever since, and
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`continue to be sold today. Id., ¶ 5.
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`While control of the AUTOGRAPH Marks was originally held by all five of the Original
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`Autograph Members, Opposer and Steve Plunkett (“Plunkett”) are the only remaining living
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`members. Id., ¶ 6. Pursuant to a private confidential agreement between Plunkett and Opposer,
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`Opposer is the owner of all right, title, and interest in the trademark rights in the AUTOGRAPH
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`Marks for the purposes of enforcing and licensing the trademarks. Id., ¶ 7. Over the years, despite
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`the Original Autograph Members and Opposer continuously selling their own goods and services
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`under the AUTOGRAPH Marks, they have allowed a limited few other musicians to assist them
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`with performing under the AUTOGRAPH Marks. Id., ¶ 8.
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`Applicants were such musicians, hired to temporarily assist one or more of the Original
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`Autograph Members perform Autograph’s music, including Original Autograph Members Randy
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`Rand Schuchart (“Rand”) and Opposer. Id., ¶ 9. Applicants first assisted with performing under
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`the AUTOGRAPH Marks in 2013, with permission from the owners of the AUTOGRAPH Marks,
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`and with one or more of the Original Autograph Members playing in the band. Id., ¶ 10.
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`Applicants continued to perform as part of various lineups approved by one or more of the Original
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`Autograph Members, and as Applicants acknowledge in the Motion, they had the permission of
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`first Rand, and then Opposer. Id., ¶ 11.
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`On or about April 28, 2022, Opposer—as the sole rightful owner of the AUTOGRAPH
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`Marks—informed Applicants that they could no longer use the AUTOGRAPH Marks. Id., ¶ 12.
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`One month later, on May 24, 2022, without requesting permission or any notice to Opposer,
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`Applicants filed the trademark application that is the subject of this proceeding, Application Serial
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`No. 97,425,455 for AUTOGRAPH in Class 41. Id., ¶ 13. Opposer responded by sending a cease
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`and desist letter to Applicants on June 2, 2022. Id., ¶ 14. Applicants did not cease use or withdraw
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`the Application, and on July 5, 2023, filed a lawsuit against Opposer in the Los Angeles County
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`Superior Court (case number 22STCV21696). Id., ¶ 15.
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`Once the subject Application was published, Opposer filed this Opposition on May 17,
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`2023. Kohli Decl., ¶ 4. Prior to the filing of the Opposition, Applicants had already hired their
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`experienced current trademark counsel, A. Eric Bjorgum. Id., ¶ 9. After Opposer filed the
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`Opposition, Applicants and their attorneys received a number of communications from the Board
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`describing upcoming deadlines:
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`• On May 17, 2023, they were alerted to the opposition and all upcoming deadlines.
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`• On May 24, 2023, when Applicants’ prosecution counsel withdrew from the proceeding,
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`whereby that counsel asserted that “said withdrawal can be accomplished without material
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`adverse effect on Applicant’s interests” and that Applicants had received “papers and
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`property that relate to the proceeding and to which Applicant is entitled.”
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`• On May 25, 2023, the Board send a notice directly to the Applicants, stating that they had
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`30 days “to appoint new counsel, or to file a paper stating that Applicant chooses to
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`represent itself.”
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`• On July 5, 2023, having not received any filing from Applicants, the Board informed
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`Applicants directly that they had 30 days to show cause as to why default judgment should
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`not be entered.
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`• And on August 14, 2023, having not received any filing from Applicants, the Board issued
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`a final judgment.
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`Kohli Decl., ¶ 5.
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`Until Applicants’ Motion on September 24, 2023, they had never responded to any of those
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`deadlines. Id., ¶ 6.
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`Despite the above facts and dates being clear, Applicants’ declarations are silent on, and
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`therefore the facts are unclear on, what Applicants did when they received the notices from the
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`Board and the substance of Applicants’ conversations with their experienced trademark counsel
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`about this Opposition and the several notices from the Board. Such information is crucial to ruling
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`on this motion, because without such evidence the Board cannot possibly determine whether the
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`Applicants have “persuasively shown” there are “exception circumstances” that justify what the
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`Board has previously called an “an extraordinary remedy” of overturning a final judgment. See
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`TMBP § 544 and Double Coin Holdings Ltd. v. Tru Development, 2019 WL 7596213, at *4 (Dec.
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`11, 2019).
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`II.
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`Applicable Law
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`Pursuant to TBMP § 544, after the Board has issued a final judgement, the judgment may
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`only be set aside “for one of the reasons specified in Fed. R. Civ. P. 60(b).” Relief from a final
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`judgment is an extraordinary remedy to be granted “only in exceptional circumstances.” Double
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`Coin Holdings Ltd. v. Tru Development, 2019 WL 7596213, at *4 (Dec. 11, 2019) (emphasis
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`added). Moreover, “where a motion for relief from judgment is made without the consent of the
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`adverse party or parties, it must persuasively show (preferably by affidavits, declarations,
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`documentary evidence, etc., as may be appropriate) that the relief requested is warranted for one
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`or more of the reasons specified in Fed. R. Civ. P. 60(b).” TBMP § 544 (emphasis added).
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`Federal Rule of Civil Procedure 60(b) states that “the court may relieve a party or its legal
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`representative from a final judgment, order, or proceeding for the following reasons: (1) mistake,
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`inadvertence, surprise, or excusable neglect; (2) newly discovered evidence that, with reasonable
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`diligence, could not have been discovered in time to move for a new trial under Rule 59(b); (3)
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`fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an
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`opposing party; (4) the judgment is void; (5) the judgment has been satisfied, released, or
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`discharged; it is based on an earlier judgment that has been reversed or vacated; or applying it
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`prospectively is no longer equitable; or (6) any other reason that justifies relief.” However, “[Rule]
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`60(b)(6) and the clauses that precede it are mutually exclusive; a court cannot grant relief under
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`Rule 60(b)(6) for any reason which could be considered under Rule 60(b)(1)-(5).” Conserval
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`SARL v. Anhing Corporation, 2004 WL 49827 (Jan. 7, 2004). Here, Applicants are relying solely
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`on the first reason, namely “mistake, inadvertence, surprise, or excusable neglect.”
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`The factors to be considered in determining whether the “exceptional circumstances” exist
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`for a default judgment to be overturned include: (1) whether the plaintiff will be prejudiced by the
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`Board's decision to vacate judgment; (2) whether the default was willful; and (3) whether the
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`defendant has a meritorious defense to the action. Djeredjian v. Kashi Co., 21 USPQ 2d 1613,
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`1615 (TTAB 1991).
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`Most relevant to the Applicants’ claims of an excusable mistake, the Board has held that
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`parties before the TTAB have a “duty to adhere to the deadlines in [the] proceeding.” Anonymous
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`Alerts, LLC v. Report IT LLC, 2021 WL 322025, at *2 (Jan. 27, 2021). And relevant to Applicants’
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`claim of having a meritorious defense, the Board has held that to establish that a party has a
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`meritorious defense, the party seeking relief from judgment must show that there is some
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`possibility that the outcome after a full trial would be different from the result achieved by the
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`dismissal. Gen. Motors Corp. v. Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933 (T.T.A.B.
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`1992).
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`III. Applicants’ Motion for Relief from Final Judgement Should be Denied Because
`Applicants’ Excuses for Not Responding to the Multiple Notices Do Not Meet the High
`Bar of Rule 60(b), and Applicants Do Not Have a Meritorious Defense
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`A.
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`Applicants have not shown that their mistake was not willful
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`In support of their Motion, Applicants offer only three declarations, from themselves and
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`Applicants’ counsel (“Bjorgum Declaration”). First, the Bjorgum Declaration is untrustworthy.
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`For example, it includes claims about events that occurred 30 years ago for which the declarant
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`does not have personal knowledge. Second, none of the declarations mention when Applicants
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`became aware of the Opposition, when Applicants became aware of the various orders from the
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`Board, nor when and with what substance Applicants discussed those orders with their counsel.
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`Based on this lack of facts, Applicants cannot claim that their default was not willful, and therefore
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`this excuse fails to reach the high bar set by Rule 60(b) for several reasons.
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`Applicants’ evidence does not reach the level required for evidence supporting a non-
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`consented motion for relief from a final judgment. As stated in TBMP § 544, where a motion for
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`relief from a final judgment is made without consent, the movant must “persuasively show” that
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`the evidence supports the extraordinary remedy of overturning a final judgement. Applicants’
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`supporting declarations do not get close to this standard. The declarations do not mention when
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`Applicants first learned about the answer deadline, when Applicant’s first learned about the
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`deadline to substitute counsel, when Applicant’s first learned about the deadline to show cause, or
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`when and to what extent Applicants discussed those deadlines with their counsel. Kohli Decl., ¶
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`7. Upon information and belief, Applicants admitted to receiving the Board’s notices during their
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`depositions in the parties’ civil lawsuit in the Superior Court of California (Los Angeles County).
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`Id., ¶ 8. And during the entire time this Opposition has existed, Applicants have retained the
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`experienced trademark counsel who filed their current Motion, and who worked extensively with
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`them on filing briefs and conducting discovery in the civil lawsuit over their claims of use and
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`ownership of the identical AUTOGRAPH Marks. Id., ¶ 9. That attorney advertises himself as
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`having “litigated extensively . . . in all areas of intellectual property,” with “over 20 years of
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`experience working in intellectual property . . . disputes.” Id., ¶ 10. It is therefore inconceivable
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`that Applicants’ counsel was unaware of the Opposition and unaware that in a proceeding before
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`the Board the Applicants had a duty to respond to deadlines. All of the declarations submitted by
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`Applicants are silent on those facts. These facts are crucial to determining willfulness, and
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`therefore Applicants are unable to “persuasively show” that their default was not willful. TBMP §
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`544.
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`Second, even if there was a supporting declaration, even if the evidence was “persuasive[],”
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`and even if Applicants did not have a duty to adhere to deadlines in a proceeding, Applicants’
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`motion still does not reach the high bar set by Rule 60(b) because a failure of Applicants and their
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`experienced trademark counsel (whether former counsel or current counsel) to respond to notices
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`properly sent by the Board does not qualify as “excusable neglect” under Fed.R.Civ.P. 60(b)(1).
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`See Fischer v. Anderson, 250 F. App'x 359, 362 (Fed. Cir. 2007) (Court affirmed Board’s decision
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`denying applicant relief under Fed. R. Civ. P. 60(b), noting that the orders at issue were mailed to
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`applicant’s prior counsel at his correct address and therefore were presumed to have been
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`received).
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`The facts in Fischer are very similar to the facts at hand. In Fischer, the applicant’s counsel
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`claimed that “he was not served” with the relevant motion, and that his lack of a response was an
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`excusable mistake because he “did not receive the Board's order to show cause” because of a
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`change in counsel. Id. at 362. But the Board rejected that claim: “The Board noted that the orders
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`at issue were mailed to [counsel of record] at his correct address and therefore were presumed to
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`have been received,” and the Federal Circuit upheld the Board’s ruling. Id. The Board also
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`rejected applicant’s claim that there was an excusable mistake because “[applicant’s] prior counsel
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`was negligent.” This argument was rejected because it relied on “[applicant’s] attorney's inaction
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`as the reason for her failure to respond to the motion for judgment on the pleadings and the show
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`cause order, and, as a matter of law, [applicant] is bound by the conduct of her prior counsel.” Id.
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`In Fisher, the Board rejected the Applicant’s motion to overturn the final judgment on the
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`basis that Applicant was unaware of the need to respond to a deadline set by the Board as a result
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`of a change in counsel. The Board held that “Applicant has failed to show that her inaction in this
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`case was the result of unavoidable events or circumstances which could not have been prevented
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`by reasonable diligence, nor has applicant persuaded the Board that the ‘catchall’ provision of Fed.
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`R. Civ. P. 60(b)(6) applies.” Fischer v. Anderson, Opposition No. 91161452 at p. 5 (TTAB Aug.
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`3, 2006).
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`Just as in Fischer, here Applicants claim (without any details in a supporting declaration
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`or other evidence) that they only learned about the duty to respond to the Board’s multiple
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`deadlines after the final judgment had been issued. This is despite Applicants having multiple
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`trademark counsel and discussing the parties’ various trademark applications with counsel in the
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`civil lawsuit. Kohli Decl., ¶¶ 8-9. Notices of Board deadlines are “presumed to have been
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`received” by the Board, and parties have a “duty to adhere to the deadlines in [the] proceeding.”
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`Fischer, 250 F. App'x at 362. As a result, any negligence on the part of Applicants and their
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`counsel or failure to properly respond to the notices and orders is not a “mistake” or “excusable
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`neglect” under Rule 60(b), as Applicants are “bound by the conduct” of their counsel. Id.
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`That Applicants admitted to receiving the Board’s notices during their depositions in the
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`parties’ civil lawsuit in the Superior Court of California, combined with the fact that none of the
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`notices to Applicants or their counsel were returned as undeliverable, and the lack of any details
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`on the timing and how Applicants discussed the notices with their counsel, suggests that Applicants
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`and their experienced counsel did know about the deadlines, but merely ignored the notices or
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`thought letting this proceeding proceed to default while fighting the civil lawsuit was a more cost-
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`effective strategy – neither of which constitute an extraordinary circumstance nor excusable
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`neglect sufficient to overturn a final judgment. See Ctrl Sys. Inc. v. Ultraphonics of N. America,
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`52 U.S.P.Q. 2d 1300 (TTAB 1999) (denying rule 60(b) motion where party contends it was never
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`notified of any deadlines, of the order to show cause, or of the order dismissing the opposition)
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`and Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 U.S.P.Q. 2d 1950, 1952 (TTAB 1997)
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`(motion based on alleged failure to receive correspondence from the Board denied given
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`presumption of receipt of correspondence, passage of 12 years and resulting hardship to third
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`parties). Therefore, the Applicants’ Motion should be denied.
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`B.
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`Applicants do not have a meritorious defense because they admit Opposer has
`prior rights to the AUTOGRAPH Marks
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`Even if Applicants’ neglect was excusable (which it wasn’t), the Motion should still be
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`denied because Applicants do not have a meritorious defense. See Djeredjian v. Kashi Co., 21
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`U.S.P.Q.2d 1613 (T.T.A.B. 1991) (denying a motion for relief from a final judgment if a
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`meritorious defense cannot be shown). In order to prevail in their Opposition, Applicants must
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`show that they have earlier rights to the AUTOGRAPH trademark than Opposer. See., e.g.,
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`Herbko Int'l Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed Cir. 2002) (to establish proprietary
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`rights, a party must allege and show prior use). As the Applicants’ own Motion admits, Opposer’s
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`rights to the AUTOGRAPH Marks originate from the Opposer being one of the Original
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`Autograph Members. Motion, p. 2. And due to the death of some of the other members, and an
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`agreement with the remaining living member, Opposer is the sole owner of all rights in and to the
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`AUTOGRAPH Marks. Lynch Decl., ¶ 7. The 1984 Autograph band has performed and/or sold
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`music under the AUTOGRAPH Marks continuously since at least as early as 1984. Lynch Decl.,
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`¶ 4. Albums and singles continue to be sold under the AUTOGRAPH Marks through licenses from
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`Opposer, and Opposer continues to license the 1984 Autograph songs for video games and other
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`commercial uses, all under the AUTOGRAPH Marks. Id., ¶ 5.
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`As Applicants’ Motion admits, their rights in the AUTOGRAPH Marks date to no earlier
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`than 2013. Motion, p. 3. And Applicants admit that when they used the AUTOGRAPH Marks, it
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`was after Opposer granted permission based on Opposer’s rights in the mark. Motion, p. 3;
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`Bjorgum Declaration, ¶ 11. Without the ability to show any rights in the AUTOGRAPH Marks
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`before 2013, let alone anywhere close to 1984, Applicants will be unable to defeat this Opposition.
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`If reinstated, the Opposition is likely to be decided on a Motion for Summary Judgement in
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`Opposer’s favor—wasting the parties’ and the Board’s time.
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`IV. Conclusion
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`Applicants’ sole excuse for their failure to respond to the Answer deadline set by the Board
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`for four months is merely that they “did not realize” they needed to do so. But such an excuse is
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`insufficient to meet the high bar under Rule 60(b), as every party has a duty to adhere to deadlines,
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`and there is a presumption of receipt where the correspondence addresses are correct.
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`The fact that Applicants and their experienced trademark counsel ignored the sent notices,
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`or were inattentive to mail from the Board, does not constitute extraordinary circumstances nor
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`excusable neglect sufficient to overturn a final judgment.
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`And without any facts that show Applicants have rights in the AUTOGRAPH Marks prior
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`to 1984, Applicants also have no meritorious defense.
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`Therefore, Opposer Steven L. Lynch requests that the ‘504 Registration remain cancelled
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`and that Applicants’ Motion for Relief be denied.
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`Dated October 12, 2023
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`LEWIS ROCA ROTHGERBER CHRISTIE LLP
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`/S/ Eric N. Kohli
`Eric N. Kohli
`Rachel Nicholas
`3993 Howard Hughes Parkway, Suite 600
`Las Vegas, Nevada 89169
`EKohli@LewisRoca.com
`RNicholas@LewisRoca.com
`(702) 949-8200 (phone)
`(702) 949-8363 (fax)
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`Attorneys for Opposer
`Steven L. Lynch
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on this 12th day of October 2023, a true and complete copy of
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`the foregoing OPPOSER’S RESPONSE TO APPLICANTS’ MOTION FOR RELIEF
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`FROM DEFAULT JUDGMENT was served by email, on the following attorney of record
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`for Applicants:
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`A. Eric Bjorgum
`eric.bjorgum@kb-ip.com
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`Daniel Simoni & Marc Wieland
`dsimoni1@earthlink.net
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`/s/ Karen Wildman
`An employee of
`Lewis Roca Rothgerber Christie LLP
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`DECLARATION OF
`DECLARATION OF
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`ERIC KOHLI
`ERIC KOHLI
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Steven L. Lynch,
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`Opposer,
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`v.
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`Daniel Simoni & Marc Wieland,
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`Applicants.
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`Opposition No.: 91,285,059
`Mark: AUTOGRAPH
`Class: 41
`App. Serial No. 97,425,455
`App. Date: May 24, 2022
`Pub. Date: April 18, 2023
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`I, Eric Kohli, affirm under penalty of perjury all of the facts stated below.
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`DECLARATION OF ERIC KOHLI
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`1.
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`I am of counsel at the law firm of Lewis Roca Rothgerber Christie LLP, counsel
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`for Applicant in this proceeding.
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`2.
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`I have personal knowledge as to the statements that follow, and would be
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`competent to testify on all matters stated herein.
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`3.
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`Upon information and belief, Applicants were well aware of their application and
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`the status of their application, and had discussed that application in the course of being
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`represented by their experienced trademark counsel.
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`4.
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`Once the subject Application was published, Opposer filed this Opposition on or
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`about May 17, 2023.
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`5.
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`After Opposer filed the Opposition, Applicants and their attorneys received a
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`number of communications from the Board describing upcoming deadlines:
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`a. On May 17, 2023, they were alerted to the opposition and all upcoming deadlines.
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`b. On May 24, 2023, when Applicants’ prosecution counsel withdrew from the
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`proceeding, whereby that counsel asserted that “said withdrawal can be
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`122672412.2
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`Page 1 of 3
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`accomplished without material adverse effect on Applicant’s interests” and that
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`Applicants had received “papers and property that relate to the proceeding and to
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`which Applicant is entitled.”
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`c. On May 25, 2023, the Board send a notice directly to the Applicants, stating that
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`they had 30 days “to appoint new counsel, or to file a paper stating that Applicant
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`chooses to represent itself.”
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`d. On July 5, 2023, having not received any filing from Applicants, the Board
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`informed Applicants directly that they had 30 days to show cause as to why default
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`judgment should not be entered.
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`e. And on August 14, 2023, having not received any filing from Applicants, the Board
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`issued a final judgment.
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`6.
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`Until Applicants’ Motion on September 24, 2023, they had never responded to
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`any of those deadlines.
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`7.
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`Applicants’ declarations do not mention when Applicants first learned about the
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`answer deadline, when Applicant’s first learned about the deadline to substitute counsel, when
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`Applicant’s first learned about the deadline to show cause, and when and to what extent
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`Applicants discussed those deadlines with their counsel.
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`8.
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`Applicants admitted to receiving the Board’s notices during their depositions in
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`the parties’ civil lawsuit in the Superior Court of California (Los Angeles County).
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`9.
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`During the entire time this Opposition has existed, Applicants have retained the
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`experienced trademark counsel who filed their Motion, and who worked extensively with them
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`on filing briefs and conducting discovery in the civil lawsuit over their claimed use and
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`ownership of the identical AUTOGRAPH Marks.
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`122672412.2
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`Page 2 of 3
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`10.
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`The Applicants’ attorney advertises himself as having “litigated extensively . . . in
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`all areas of intellectual property,” with “over 20 years of experience working in intellectual
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`property . . . disputes.” See Exhibit A for a screenshot of Applicants’ attorney’s website stating
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`that he has “litigated extensively . . . in all areas of intellectual property,” with “over 20 years of
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`experience working in intellectual property . . . disputes.”
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`11.
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`The undersigned being warned that willful false statements and the like are
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`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false
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`statements and the like may jeopardize the validity of the application or document or any
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`registration resulting therefrom, declares that all statements made of his/her own knowledge are
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`true; and all statements made on information and belief are believed to be true.
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`12.
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`I declare under penalty of perjury under the laws of the United States of America
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`that the foregoing is true and correct.
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`Executed this 12th day of October, 2023
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`__/s/ Eric Kohli______________________
`Eric Kohli
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`122672412.2
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`Exhibit A
`Exhibit A
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`KARISH & BJORGUM
`INTELLECTUAL PROPERTY LAW
`
`About Karish & Bjorgum
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`Articles
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`News & Victories
`
`Contact
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`Q
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`A. Eric Bjorgum
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`%
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`Education
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`Boston College Law School, |.D., cum laude
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`University of California, Berkeley, B.A., Philosophy and Literature
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`Experience
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`A. Eric Bjorgum has over 20 years of experience working in intellectual property law and commercial disputes, including a two year term working closely with a
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`federal judge as a law clerk. He has litigated extensively in both state and federal court, primarily in business litigation and in all areas of intellectual property. He
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`has also counseled clients in obtaining copyrights, patents, trademarks and trade secrets in order to secure their rights, avoid litigation and develop streams of
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`revenue.
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`Eric began his legal career in 1996, working for Hon. David W. Hagen of the United States District Court in Reno, Nevada.
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`Eric then moved to Los Angeles and began working at the litigation boutique Quinn Emanuel Urquhart Oliver & Hedges, LLP. During Eric's years there, the firm
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`grew from a well-respected trial firm of approximately 50 attorneys to a powerhouse of over 250 lawyers spread through six offices.
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`Quinn Emanuel's dynamic environment allowed Eric to gain litigation experience diverse areas such as patents, trademarks, copyrights, qui tam and RICO. In
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`both federal and state courts, he represented clients of all types, including large organizations such as Mattel, Directv, The Academy of Motion Picture Arts and
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`Sciences and The Recording Academy. He is also very familiar with litigation privilege and the (cid:8220)anti-SLAPP(cid:8221) statutes passed by dozens of states.
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`Eric moved on to the Pasadena intellectual property boutique Sheldon Mak Rose & Anderson PC. There, he honed his IP transactional skills, worked on several
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`patent lawsuits, was co-lead trial counsel on a trademark case with top plaintiffs attorney Brian Panish, and began to develop a specialty in public art cases
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`involving the Visual Artists Rights Act.
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`It was at Sheldon Mak that Eric met Marc Karish, and they decided to start Karish & Bjorgum. Since starting Karish & Bjorgum, the firm has enjoyed several
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`victories for its clients. Mr. Bjorgum lives in Sierra Madre, California with his wife and two children. He has a personal interest in music and multimedia
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`technology and has a small recording studio in his home. Eric is a member of the Pasadena Tournament of Roses Association (serving on the Music Committee
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`for 2014 - 2015) and a Member of Pasadena Optimist Club. He is also on the Board of Directors for the Mural Conservancy of Los Angeles.
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`Eric was also named
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`a Southern California Super Lawyer in the field of Intellectual Property Litigation by the publishers of Law & Politics Magazine.
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`Notable Matters
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`Document title: A. Eric Bjorgum - KB-IP Law Firm
`Capture URL: https://www.kb-ip.com/a-eric-bjorgum/
`Capture timestamp (UTC): Thu, 12 Oct 2023 03:30:34 GMT
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`Page 1 of 2
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`KARISH & BJORGUM..
`INTELLECTUAL PROPERTY LAW
`
`About Karish & Bjorgum
`
`Articles
`
`News & Victories
`
`Contact
`
`Q
`
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`technology and has a small recording studio in his home. Eric is a member of the Pasadena Tournament of Roses Association (serving on the Music Committee
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`for 2014 - 2015) and a Member of Pasadena Optimist Club. He is also on the Board of Directors for the Mural Conservancy of Los Angeles.
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`Eric was also named
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`a Southern California Supe