5.
`
`TT48
`
`TUCKER & MILLER, L.L.L.P.
`
`_
`
`;
`1
`;
`‘
`
`0
`
`ATTORNEYS AT LAW
`Kenneth L. Tucker*
`Daniel Pu]. Miller
`Kevin J. Tucker**
`
`Illlfllllllfllfllllfllllllllllllllllllllllflllllll
`__
`_
`I7ii‘lo§:d7L3oo,
`53 {.33 Ht
`U.s. Paunt&TMOfcITM Mull ncpzm. m
`
`PHOENIX
`1741 EAST MORTEN AVENUE
`SUITE B
`
`PHOENIX, ARIZONA 85020
`TELEPHONE: (602) 870-5511
`FACSIMILE: (602) 870-5255
`
`CAREFREE
`P.O. BOX 2800-320
`ONE CAREFREE PLACE
`
`36800 SIDEWINDER, SUITE B-12
`CAREFREE, ARIZONA 85377
`TELEPHONE: (480) 575-6500
`FACSIMILE: (480) 575-1187
`
`REPLY TO PHOENIX OFFICE
`
`August 7, 2001
`
`BOX TTAB
`NOFEE
`
`Assistant Commissioner for Trademarks
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Re:
`
`James E. Tessier V. General Instrument Corp.
`Cancellation No.: 31,395
`
`Registration No.: 2,234,682
`Mark: SURFVIEW
`
`Dear Assistant Commissioner for Trademarks:
`
`Please file the enclosed PETITIONER’S RESPONSE TO RESPONDENT’S MOTION FOR
`
`PARTIAL DISMISSAL WITH PREJUDICE for the above referenced matter.
`
`If you have any further questions, please do not hesitate to contact us.
`
`Respectfully submitted,
`
`Q)»///7/v/\
`
`Daniel P. J. Miller, Esq.
`Attorney for the Opposer
`Tucker & Miller, LLLP
`
`Enclosure
`
`*Certified Specialist Personal Injury and Wrongful Death
`“Admitted to Practice - Arizona & Washington, D.C.
`
`
`
`

`
`“
`
`i
`
`IllllfllllllllfllllllllllllHlllllfllllllmllllll
`
`O8-07-2001
`
`U.S. Dawn! 8: TMOYCITM MIII RG9! D1. #77
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`
`THE TRADEMARK TRIAL AND APPEAL BOARD
`
`.
`Cancellation No.: 31,393
`Registration No. 2,234,682
`Mark: SURFVIEW
`
`§
`
`2
`§
`§
`§
`
`§ § §
`
`' James E Tessier
`'
`
`V
`General Instrument
`Respondent.
`
`Petitioner
`
`’
`
`PETITIONER’S RESPONSE TO RESPONDENT’S MOTION FOR PARTIAL
`DISMISSAL WITH PREJUDICE
`
`Respondent’s Partial Motion to Dismiss is without merit and should be denied. Pursuant to
`
`_ TBMP §503.02, In order to withstand a motion to dismiss for failure to state a claim, a pleading
`
`need only allege such facts as would, if proved, establish that the plaintiff is entitled to the relief
`
`sought, that is, that (l) the plaintiff has standing to maintain the proceeding, and (2) a valid
`
`ground exists for denying the registration sought (in the case of an opposition), or for cancelling
`
`the subject registration (in the case of a cancellation proceeding). See Lipton Industries, Inc. v.
`
`Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
`
`In determining a motion to
`
`dismiss, the allegations of plaintiffs complaint must be taken as true. Lipton Industries, Inc. v.
`
`Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). In addition, the allegations of
`
`plaintiff’ s complaint must be liberally construed and every inference must be granted in favor of
`
`A plaintiff and against the movant. Miller Brewing Company v. Anheuser Busch, Inc., 27 USPQ2d
`
`1711 (TTAB 1993); National Semiconductor Cogp v. Varian Associates, 184 USPQ 62 (TTABV
`
`1974). Thus, the motion to dismiss must be denied if the liberally construed allegations of
`
`plaintiff’s complaint, if proved, would entitle plaintiff to the relief sought. Lipton Industries Inc.
`
`V. Ralston Purina Inc., supra; Delta Tire Cogp. v. Sports Car Club of America Inc., 186 USPQ 431
`
`

`
`(TTAB 1975). Respondent's motion for partial dismissal relies on the argument that its filing
`
`date is earlier than Petitioner's earliest usage date in commerce and then attempts to connect this
`
`with a no-likelihood-of-confusion argument. However, Petitioner has alleged facts for all claims
`
`that establish he is entitled to relief and that (1) Petitioner has standing to maintain the
`
`. proceeding, and (2) that valid grounds exist for cancelling the subject registration. More
`
`specifically Petitioner has alleged facts which will make Respondent’s filing date unusable.
`
`While the Respondent would like the Board to try the case before the discovery and
`
`testimony periods begin, Petitioner submits that the evidence will show that an undeserved
`
`registration was awarded based on improperly gained and fraudulently created statement of use.
`
`Serious problems exist with Respondent’s allegation of date of first use along with the type of
`
`commerce indicated in its statement of use, as well as its supplied specimen. That these are part
`
`of a registered trademark provides no basis for a partial dismissal.
`
`Pursuant to 37 CFR
`
`2.l22(b)(2) "The allegation in an application for registration, or in a registration, of a date of
`
`4 use is not evidence on behalf of the applicant or registrant; a date of use of a mark must be
`
`established by competent evidence. Specimens in the file of an application for registration, or in
`
`thefile ofa registration, are not evidence on behalfofan applicant or registrant unless identified
`
`and introduced in evidence as exhibits during the periodfor taking testimony. "
`
`Filers of Intent to Use applications, once given a Notice of Allowance are given 6 months
`
`to file a Statement of Use. After which, in order to gain any benefit by the earlier filing date,
`
`applicant must supply the statement of alleged use or file one within four 6-month extensions.
`
`Pursuant to 15 U.S.C. Section 105 l(d)(l) "Subsequent six—month extensions will be granted, for a
`
`. period not to exceed twenty-four months, ifgood cause is shown." Respondent made no effort to
`
`provide a statement indicative of "good cause“ and thus failed to comply with § 1051(d)(1). The
`
`Lanham Act allows for an Intent to Use application to be followed in the "not-too-distant future"
`
`by an Allegation of Use. The Respondent filed the latter more than two years after their Intent to
`
`Use application filing, which at minimum violated the spirit of the Lanham Act, since
`
`

`
`Respondent's claim of first use anywhere (11/13/97) was more than a year later than Petitioner's
`
`(10/17/96) provable first use in commerce.
`
`As forthcoming evidence will prove, had the Respondent waited until they had actually
`
`used their mark in interstate commerce (and not just in their own San Diego R&D lab), their four
`
`extensions would have been exhausted, and twenty-four months would have elapsed from their
`
`Notice of Allowance, eliminating any value to its earlier filing date. The Respondent, knowing
`
`about Petitioner's use of the mark since November of 1996, when an article appeared in a San
`
`Diego-based computer magazine and also from an early 1997 CNN television news story, became
`
`alarmed and subsequently filed extensions and later a fraudulent statement of use in hopes of
`
`preserving the mark for the new and unrelated set-top box application, for which a separate
`
`opposition petition has been filed by the Petitioner. If Respondent's use of the mark ever existed
`
`for the application described in the registration, it was probably for a brief period of time in an
`
`R&D lab in San Diego, staying intrastate at best, and never sold due to the obsolescence of non-
`
`. DOCSIS modems and their related SB7lO0 headend equipment. It was an experiment that failed
`
`with no customers and no impression in any channel that Congress can govern. Now the
`
`Respondent is attempting to transfer its ill-gotten registration to a new and different application,
`
`all based on its claim of first constructive use for a product that if it ever lived, died more than
`
`three years ago. Confusion will increase in the minds of Petitioner's clients on the Internet as they
`
`become more aware of Respondent's transferred usage of their ill-gotten mark on the new
`
`unrelated product (which is hardware not software).
`
`It is undisputed that Petitioner has an earlier first use date than the Respondent. Once the
`
`evidence and testimony is in, the Board can decide whether there is any value in the Respondent's
`
`4 earlier filing date. Petitioner submits that if the Board allows all of the claims to be presented and
`
`proved with evidence and testimony that Respondent's filing date will be irrelevant, it having
`
`procured a fraudulent and faulty application, for which cancellation will be necessary.
`
`In short,
`
`

`
`Respondent’s filing date will be deemed void and unusable based on these factual allegations
`
`which must be taken as true for purposes of the partial motion to dismiss.
`
`Even if Respondent is allowed to use its application filing date, in the case of Eredisar
`
`Ltd. v. Virgin Enterprises, 33 USPQ 2”” series, p. 2020 ( SD.N.Y. 1995), at least one court has
`
`held that the actual prior user (not the filer, such as the case with the Respondent) of a similar
`
`- mark on dissimilar goods and services can claim priority. With this authority and evidence to be
`
`presented, the Board may find in favor of the Petitioner at the close of the trial, precluding
`
`Respondent's request for partial dismissal.
`
`Respondent also incorrectly asserts that
`
`the Petitioner's use of the phrase "now
`
`Motorola", when referring to the Respondent "is irrelevant." Petitioner submits that the phrase is
`
`highly relevant. EXHIBIT 1, from General Instruments‘ History Chart shows that General
`
`Instrument had been acquired by Motorola in early 2000. EXHIBIT 2 shows a page from the
`
`early 2000 Motorola 10-Q form filed with the SEC that indicates the two have merged into one
`
`entity known as Motorola. EXHIBIT 3 is the Network Solutions domain name status for
`
`Suriboard.com, the website for the old-General Instrument division that handled the Respondent's
`
`long defunct SURFview application. The website directs all traffic to Motorola Broadband
`
`Communications Sector. Motorola Broadband Communications Sector
`
`is where most of
`
`Respondent's knowledgeable General Instrument employees are. For this reason, Petitioner will
`
`depose employees from Motorola. The fact that General Instrument is "now Motorola" will
`
`remain relevant through the remainder of this cancellation proceeding. Moreover, the USPTO
`
`has regulations that require the Respondent to update their related USPTO application and
`
`registration records now that the legal entity of record has been acquired and no longer legally
`
`. exists.
`
`(General Instrument stopped filing with the SEC in early 2000.) A new change recordal
`
`should be forwarded to the Assignment Branch of the USPTO for recordal against the subject
`
`registration.
`
`

`
`In Petitioner's recent MOTION TO EXTEND TIME, Petitioner based the new to-be-
`
`' tabulated closing date of discovery on the Respondent's eventual Answer date. The Respondent’s
`
`Answer that accompanied their motion has established that date as July 19, 2001. FRCP 6(b) and
`
`TBMP §400.1O provide as follows: "Therefore, the Board will, at the request of the propounding
`
`party, extend the discovery period (at least for the propounding party), so as to restore that
`
`amount of time which would have remained in the discovery period had the responses been made
`
`in a timely fashion."
`
`The Respondent’s answer was due on January 26, 2001. The time
`
`difference fiom that date to the actual filing date (July 19, 2001) is 173 days. Adding 173 days to
`
`the prior closing discovery date, July 5, 2001 results in December 28, 2001.
`
`For the reasons stated above, Petitioner respectfully requests that the USPTO TTAB
`
`deny Respondent's MOTION FOR PARTIAL DISMISSAL WITH PREJUDICE, accept
`
`Respondent's request for partial dismissal as a denial for that specific claim, and finally, accept
`
`the remainder of Respondent's Answer, allowing the discovery period to begin with a new closing
`
`of discovery, reset to no earlier than December 28, 2001.
`
`Date: August 7, 2001
`
`Respectfully submitted,
`
` Daniel P. J. Miller, Esq.
`
`Attorney for the Petitioner
`Tucker & Miller, LLLP
`1741 East Morten Ave., Ste. B
`Phoenix, AZ 85020
`Phone: (602) 870-551 1
`
`

`
`
`
`Certificate of Mailing
`I hereby certify that this correspondence is being deposited with the United States Postal Service with
`sufficient postage as Express Mail in an envelope addressed to:
`BOX TTAB
`NOFEE
`Assistant Commissioner for Trademarks
`
`
`
`
`
`
`
`Express Mail Number
`Signature
`Date
`' Daniel R}. Miller, Esq., Tucker & Miller, LLLP, 1741 E. Morten Ave., Ste. B, Phoenix, AZ 85020
`
`
`
`
`
`
`
`
`
`
`
`
`On WM!
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlingto , Virginia 22202-3513
`
`fizz; 5 _§
`
`ET535843045US
`
`Certificate of Service
`
`I hereby certify that I served the foregoing PETI'IIONER’S RESPONSE TO RESPONDENT’S
`MOTION FOR PARTIAL DISMISSAL WITH PREJUDICE by causing a true and correct copy
`thereof to be sent by first class mail, postage prepaid to:
`
`Daniel R]. Miller, Esq., Tucker & Miller, LLLP, 1741 E. Morten Ave., Ste. B, Phoenix, AZ 85020
`
`Michael D. Fishman
`Rader, Fishman & Grauer, PLLC.
`39533 N. Woodward Avenue, Suite 140
`Bloomfield Hills, Michigan 48304
`
`Signature
`
`

`
`EXHIBIT 1
`
`

`
`~ Motorola - Broadband Communications Sector
`
`Page 1 of2
`
`N».
`
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`
`
`8/1/01
`
`

`
`
`
`- Motorola - Broadband Communications Sector
`
`Page 2 of 2
`
`
`
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`

`
`EXHIBIT 2
`
`

`
`<SEC-DOCUMENT>OO00068505-00-000016-index.html
`
`: 20000517
`
`: 20000517
`<SEC~HEADER>0000O68505-00-000016.hdr.sgml
`ACCESSION NUMBER:
`0O00068505—00—000016
`
`CONFORMED SUBMISSION TYPE:
`PUBLIC DOCUMENT COUNT:
`CONFORMED PERIOD OF REPORT:
`FILED AS OF DATE:
`
`10-Q
`4
`20000401
`20000516
`
`FILER:
`
`COMPANY DATA:
`COMPANY CONFORMED NAME:
`CENTRAL INDEX KEY:
`STANDARD INDUSTRIAL CLASSIFICATION:
`
`BROADCASTING & COMMUNICATIONS EQUIPMENT [3663]
`IRS NUMBER:
`STATE OF INCORPORATION:
`FISCAL YEAR END:
`
`MOTOROLA INC
`0000068505
`RADIO & TV
`
`361115800
`DE
`1231
`
`FILING VALUES:
`
`FORM TYPE:
`SEC ACT:
`SEC FILE NUMBER:
`FILM NUMBER:
`
`10-Q
`
`001-07221
`637465
`
`BUSINESS ADDRESS:
`
`STREET 1:
`CITY:
`STATE:
`ZIP:
`BUSINESS PHONE:
`
`RD
`
`1303 E ALGONQUIN
`SCHAUMBURG
`IL
`60196
`8475765000
`
`MAIL ADDRESS:
`
`STREET 1:
`CITY:
`STATE:
`ZIP:
`
`UIN ROAD
`
`1303 EAST ALGONQ
`SCHAUMBURG
`IL
`60196
`
`FORMER COMPANY:
`FORMER CONFORMED NAME: MOTOROLA DELAWARE INC
`DATE OF NAME CHANGE:
`19760414
`
`</SEC—HEADER>
`<DOCUMENT>
`
`<TYPE>10—Q
`<SEQUENCE>1
`<TEXT>
`
`UNITED STATES
`
`SECURITIES AND EXCHANGE COMMISSION
`
`Washington, D.C. 20549
`
`FORM 10-Q
`
`

`
`(Mark One)
`
`[X]
`
`Quarterly Report Pursuant to Section 13 or l5(d) of the Securities
`Exchange Act of 1934
`
`For the period ending
`
`April 1, 2000
`
`or
`
`[
`
`]
`
`Transition Report Pursuant to Section 13 or 15(d) of the Securities
`Exchange Act of 1934
`
`For the transition period from
`
`Commission file number:
`
`to
`
`1-7221
`
`INC.
`MOTOROLA,
`(Exact name of registrant as specified in its charter)
`
`Delaware
`
`36—1ll5800
`
`(State of Incorporation)
`
`(I.R.S. Employer Identification No.)
`
`60196
`1303 E. Algonquin Road, Schaumburg, Illinois
`(Address of principal executive offices)
`(Zip Code)
`
`Registrant's telephone number,
`
`including area code:
`
`(847) 576-5000
`
`Inc. and Subsidiaries
`Motorola,
`Notes to Condensed Consolidated Financial Statements
`
`(Unaudited)
`
`1. Basis of Presentation
`
`("Motorola") completed its previously
`Inc.
`On January 5, 2000, Motorola,
`announced merger with General Instrument Corporation ("General Instrument")
`by exchanging 100.6 million shares of its common stock for all of the
`common stock of General Instrument.
`Each share of General Instrument was
`
`exchanged for 0.575 shares of Motorola's common stock. Motorola has
`accounted for the merger as a pooling—of-interests and accordingly, all
`prior period consolidated financial statements of Motorola have been
`restated to include the results of operations, financial position and cash
`flows of General Instrument.
`The effects of conforming General
`Instrument’s accounting policies to those of Motorola were not material.
`
`For the quarter ended April 3, 1999, net sales for Motorola and General
`Instrument were $7.2 billion and $519 million, respectively. Net earnings
`for Motorola and General Instrument were $171 million and $28 million,
`respectively. Results of operations for the quarter ended April 1, 2000,
`already reflect the pooling of interests.
`From this point onward, all
`references to Motorola,
`Inc. or the Company reflect the pooling of
`interests.
`
`

`
`EXHIBIT 3
`
`

`
`or
`
`
`u
`
`' NSI - WHOIS Search Results
`
`Page 1 of 2
`
`
`
`o;‘:¢.:mV ~“?§
`_ gr.” 8
`
`‘~a
`\‘_
`
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`-
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`
`Search Resum
`
`M_e1gg_§u_§your sltelsllstedlnbp search endres.
`
`Registrant:
`(SURFBOARD3-DOM)
`General Instrument
`6450 Sequence Drive
`San Diego, CA 92121
`
`Domain Name: SURFBOARD.CoM
`
`Administrative Contact, Billing Contact:
`DiBenedetto, Rich
`(RD3333)
`rich@SURFBOARD.COM
`Motorola Broadband Communications Sector
`6450 Sequence Drive
`San Diego, CA 92121
`858-404-2660 (FAX) 858-404-2915
`Technical Contact:
`kbell@GI.COM
`Bell, Keith
`(KBl269)
`Motorola Broadband Communications Sector
`6450 Sequence Drive
`San Diego, CA 92121
`858-404-3763 (FAX) 858-404-2943
`
`Record last updated on 25-Jul-2000.
`Record expires on 02-Nov-2002.
`Record created on 01-Nov-1996.
`Database last updated on 31-Jul-2001 21:00:00 EDT.
`
`Domain servers in listed order:
`
`NS1 . SURFBOARD . COM
`NS2 . SURFBOARD . COM
`
`206.19.86.10
`206.19.86.9
`
`
`
`r domain name using WHOIS:
`Look up anothe
`
`
`%
`To look up a NIC handle. host name. or registrant, use the keywords below:
`
`To search by we handle (or gag, typo ‘handle WA3509'
`To starch by 53%. typo ‘name lastnama. firstnamo"
`To search by comfly narna, typa ‘mm: The sampla Corporation’
`To starch by domain nama. typo "axamph.com"
`To search by IP address. typo ‘host 121.232.?‘
`8/1/01
`http://wwwnetworksolutions.com/cgi-bin/whois/whois?STRlNG=surtboard.com&STRING=Search