ell».F F
`
`12-30-2002
`U.S. Patent & TMOtcITM Mail Rcpt Dt. #30
`
`"r"T/ta
`
`Docket No. 1 1186-062;
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`V.
`
`l
`
`Summit Productions, lnc.,
`
`Cancellation No. 92—O4070O
`
`—.
`
`Petitioner,
`
`vs.
`
`Summit Entertainment, L.P.,
`
`Registrant.
`
`Registration Nos. 2,097,423, 2,097,426,
`2,350,426, and 2,350,427
`
`REGlSTRANT’S RESPONSE TO ORDER
`
`TO SHOW CAUSE WHY DEFAULT
`JUDGMENT SHOULD NOT BE
`
`ENTERED; AND MOTION TO SET
`A ASIDE ENTRY OF DEFAULT
`
`Assistant Commissioner for Trademarks
`
`._—Attn: Trademark Trial and Appeal Board
`;‘29OOJ(—_3rystal Drive
`,:<Arling:t§Jn, VA 22202-3513
`
`,_,3‘ Registrant, Summit Entertainment, L.P. (“Registrant:"), by its counsel, hereby
`
`.
`
`respgjnds to the order issued by the Board on November 27, 2002, to show cause why
`gr:
`.
`default judgment should not be entered against it (“Order To Show Cause Re Default
`
`Judgment”), and moves, pursuant to FRCP 55(c) and TBMP 317.02 to set aside the
`
`entry of default. Plainly put, default should not be entered against Registrant because
`
`Registrant never received the petition for cancellation either directly from Petitioner
`
`Summit Productions (“Petitioner”) or from the Board. The first notice that Registrant had
`
`of this proceeding is the receipt of the Board’s Order To Show Cause Re Default
`
`Judgment received by Registrant on December 3, 2002. This is because Registrant’s
`
`address has changed since the issuance of its federal registrations and its records with
`
`
`
`12-30-2002
`U.S. Patent & TMOtcITM Mail Rcpt Dt. #30
`
`"r"T/ta
`
`Docket No. 1 1186-062;
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`V.
`
`l
`
`Summit Productions, lnc.,
`
`Cancellation No. 92—O4070O
`
`—.
`
`Petitioner,
`
`vs.
`
`Summit Entertainment, L.P.,
`
`Registrant.
`
`Registration Nos. 2,097,423, 2,097,426,
`2,350,426, and 2,350,427
`
`REGlSTRANT’S RESPONSE TO ORDER
`
`TO SHOW CAUSE WHY DEFAULT
`JUDGMENT SHOULD NOT BE
`
`ENTERED; AND MOTION TO SET
`A ASIDE ENTRY OF DEFAULT
`
`Assistant Commissioner for Trademarks
`
`._—Attn: Trademark Trial and Appeal Board
`;‘29OOJ(—_3rystal Drive
`,:<Arling:t§Jn, VA 22202-3513
`
`,_,3‘ Registrant, Summit Entertainment, L.P. (“Registrant:"), by its counsel, hereby
`
`.
`
`respgjnds to the order issued by the Board on November 27, 2002, to show cause why
`gr:
`.
`default judgment should not be entered against it (“Order To Show Cause Re Default
`
`Judgment”), and moves, pursuant to FRCP 55(c) and TBMP 317.02 to set aside the
`
`entry of default. Plainly put, default should not be entered against Registrant because
`
`Registrant never received the petition for cancellation either directly from Petitioner
`
`Summit Productions (“Petitioner”) or from the Board. The first notice that Registrant had
`
`of this proceeding is the receipt of the Board’s Order To Show Cause Re Default
`
`Judgment received by Registrant on December 3, 2002. This is because Registrant’s
`
`address has changed since the issuance of its federal registrations and its records with
`
`
`
`
`
`the PTO had not yet been updated‘.
`
`I.
`
`STATEMENT OF RELEVANT FACTS
`
`The parties are not strangers. Prior to the instigation of this proceeding, in 2001,
`
`the parties corresponded regarding a possible co—existence agreement.
`
`In considering
`
`the proposed co-existence agreement, Petitioner asked for promotional materials of
`
`Registrant. On June 14, 2001, Registrant sent Petitioner’s counsel a copy of its current
`
`brochure, which reflected Registrant's current address.
`
`Petitioner claimed to be receptive to a co—existence agreement, and therefore,
`
`Registrant prepared a draft agreement for Petitioner’s review. That agreement, which
`
`also reflected Registrant’s current address, was sent to Petitioner on August 10, 2001.
`
`In September 2001, Registrant and Petitioner communicated regarding a settlement of
`
`this matter. Registrant sent follow up correspondence to Petitioner in November 2001,
`regarding a possible settlement. Finally, on December 12, 2001, Petitioner offered to I
`
`sell its alleged trademark rights for a sum, that in Registrant’s opinion, far exceeded
`
`whatever trademark rights Petitioner clamed to have in the mark SUMMIT
`
`PRODUCTIONS. Accordingly, Registrant did not respond to Petitioner’s offer to sell its
`
`trademark rights.
`
`On April 3, 2002, Petitioner apparently filed the petition for cancellation in this
`
`proceeding, seeking to cancel all of Registrant’s SUMMIT ENTERTAINMENT
`
`l
`
`The regular practice of Registrant's counsel is to update clients’ addresses during the
`time to file Section 8 and Section 15 Affidavits and Applications for Renewal. Since the Section
`8 and Section 15 Affidavits for two of the registrations became due in September 2002,
`Registrant's address was not yet updated.
`
`
`
`
`
`registrations. Petitioner claims to have sent a copy of the petition to Registrant at its old:
`
`address on the same date. Registrant never received the petition for cancellation from 2
`
`Petitioner. Petitioner also now claims to have sent a copy of the petition for cancellation
`
`to Registrant’s counsel on April 29, 2002; however, Registrant’s counsel never received
`
`it. Notably, Petitioner did not provide Registrant’s counsel with a copy of a cover letter
`
`purportedly enclosing the petition for cancellation.
`
`On July 24, 2002, Petitioner filed a change of attorney contact address with the
`
`Board, and claims to have sent copies of the same to Registrant again at its old address
`
`and to Registrant’s counsel. No such change of attorney contact address was received
`
`by either Registrant or its counsel. Also, Petitioner has not produced a copy of a cover '
`
`letter enclosing the change of attorney contact address, as purportedly sent to
`
`Registrant’s counsel.
`
`Registrant’s counsel did not receive any communications after December 12,
`
`2001, from Petitioner’s counsel regarding this matter or any other matter.
`
`On September 27, 2002, the Board apparently entered default against Registrant
`
`and issued an order to show cause why default judgment should not be entered against
`
`Registrant. Registrant never received the September 27th order of the Board, which
`
`was apparently returned to the Board as undeliverable.
`
`The Board then found Registrant’s new address. Therefore, on November 27,
`
`2002, the Board issued the Order To Show Cause Re Default Judgment. Registrant
`
`received the Board’s Order To Show Cause Re Default Judgment on December 3,
`
`2002, and fon/varded the Order immediately to its counsel.
`
`
`
`
`
`As shown below, good cause exists for setting aside the entry of default in this
`
`case. Registrant was only recently notified of the proceeding by the Board and has
`
`promptly responded to the Order To Show Cause Re Default Judgment and moved to
`
`set aside the entry of default.
`
`ll.
`
`STANDARD FOR SETTING ASIDE DEFAULT JUDGMENT
`
`Pursuant to TBMP 317.02, FRCP 55 (c), and case law interpreting the same, the
`
`entry of default may be set aside upon a showing of good cause. “Good cause” is a
`
`mutable and liberal standard, varying from case to case. Coon v. Grenier, 867 F.2d 73,
`
`75 (1st Cir. 1989). Good cause is usually found to exist when the defendant (Registrant
`
`here) shows that (1) the delay in filing an answer was not the result of willful conduct or
`
`gross neglect on the part of the defendant (Registrant), (2) the plaintiff (Petitioner) will
`
`not be substantially prejudiced by the delay, and (3) the defendant (Registrant) has a
`
`meritorious defense to the action. TBMP 317.02; Paolo’s Associates Ltd. Partnership v.
`
`Bodo, 21 USPQ2d 1899, 1902 (TTAB 1990). The trier of fact may also look at other
`
`facts such as the proffered explanation for the default, the good faith of the parties, and;
`
`the timing of the motion to set aside default. Coon, 867 F.2d at 76. Indeed, it may be an
`
`abuse of discretion not to set aside a default when circumstances are such that the
`
`plaintiff would not be prejudiced, the defendant has established a meritorious defense ‘
`
`and the defendant did not engage in willful or bad faith conduct leading to the entry of .
`
`default. Paolo’s, 21 USPQ2d at 1902.
`
`Further, the Board is very reluctant to enter a default judgment for failure to file a
`
`timely answer, and tends to resolve any doubt on the matter in favor of the defendant.
`
`
`
`
`
`TBMP 317.02. This is because the law favors deciding cases on their merits. PaoIo’s,
`
`21 USPQ2d at 1902; Coon, 867 F.2d at 76.
`
`III.
`
`THE DEFAULT SHOULD BE SET ASIDE IN THIS CASE
`
`As shown below, Registrant has made requisite showing of good cause to set
`
`aside the default entered in this case.
`
`A.
`
`The Delay In Not Filing An Answer To The Petition For
`Cancellation Was Not The Result of Willful Conduct Or Gross
`
`Neglect
`
`Registrant did not receive notice of this proceeding until December 3, 2002,
`
`when the Board mailed the Order To Show Cause Re Default Judgment to Registrant's
`
`current address, found by the Board. The petition for cancellation and the previous
`
`orders of the Board regarding this case were sent to Registrant's old address. Even
`
`though Registrant has not yet updated its address with the Office with respect to its
`
`registrations, that does not constitute willful conduct or gross neglect sufficient to defeat-
`
`a motion to set aside entry of default. Coon, 867 F.2d at 76-77.
`
`In Coon, the defendant
`
`failed to update his motor vehicles records to provide his current address. The
`
`defendant never received notice of the summons and complaint in the personal injury
`
`case filed and default was entered against him. The Court reversed the district court’s
`
`failure to set aside the default, and held that the failure to update the defendant’s
`
`address with the motor vehicle department did not constitute willful conduct or gross
`
`neglect. The Court then set aside the entry of default. The same thing should happen ,
`
`in this case.
`
`
`
`
`
`Further, Petitioner had actual knowledge of Registrant’s current address as
`
`evidenced by the receipt of Registrant’s brochure on June 14, 2001, and the draft co-
`
`existence agreement on August 10, 2001. Petitioner was required to provide the
`
`information that it had regarding Registrant’s current address in the petition for
`
`cancellation. TMBP 312.
`
`In addition, a petition to cancel should indicate, to the best of petitioner’s
`knowledge, the name and address of the current owner of the registration.
`Petitioner may comply with this requirement simply by furnishing the Board with
`whatever information it has concerning the name and address of the current
`owner of the registration; a special investigation made solely for purposes of
`complying with the rule is not necessary. The purpose of the reguirement is to
`provide the Board with whatever information petitioner may have concerning the 2
`name and address of the current owner of the registration, so that the Board can
`notify that party of the filing of the petition.
`lf petitioner has no information
`concerning the name and address of the current owner of the registration,
`petitioner may simply use the name and address of registrant stated on the
`registration certificate.
`
`TBMP 312 (citations omitted) (emphasis added).
`
`Here, Petitioner had two sources of the current address of Registrant in its files —
`
`Registrant’s brochure and the draft co-existence agreement.. Yet, Petitioner chose not
`
`to provide Registrant’s address, as listed in both of those documents, to the Board, and
`
`instead merely recited the address of Registrant reflected in the certificates of
`
`registration.
`
`in doing so, Petitioner failed to comply with TBMP 312.
`
`More importantly, if the Board received its September 27”‘ order sent to
`
`Registrant from the U.S. Postal Service, returned as undeliverable, it is safe to assume
`
`that Petitioner likewise received mail purportedly sent to Registrant at its old address,
`
`from the U.S. Postal Service, returned as undeliverable. The receipt of returned mail by
`
`
`
`
`
`Petitioner clearly should have prompted Petitioner to call Registrant’s counsel or review
`
`its file again for Registrant’s current address.
`
`It was not as though there was no contacti
`
`between the parties prior to this proceeding being instigated.
`
`In short, the facts do not suggest any willful conduct or gross neglect on the part
`
`of Registrant. Therefore, this factor weighs in favor of setting aside the entry of default.
`
`_
`
`B.
`
`The Delay In Not Filing An Answer To The Petition For
`Cancellation Has Not Caused Petitioner Any Prejudice
`
`Petitioner will be hard pressed to demonstrate any prejudice as a result of the
`
`delay in Registrant responding to the petition for cancellation. There is no loss of
`
`witnesses, no discovery scheme that has been thwarted, and no evidence that has
`
`been lost. Rather, Petitioner will simply have to litigate this case instead of prevailing by
`
`sending the petition for cancellation to the wrong address. Requiring a party to litigate
`
`the action does not amount to prejudice. Coon, 867 F.2d at 77. Similarly, delayed
`
`satisfaction of Petitioner’s claims and the imposition of additional attorneys’ fees and
`
`costs do not amount to prejudice sufficient to defeat a motion to set aside entry of
`
`default. Pao/o’s, 21 U.S.P.Q.2d at 1904.
`
`C.
`
`Registrant Has A Meritorious Defense To This Case
`
`As shown by Registrant’s answer filed with this response, Registrant has a
`
`meritorious defense. Specifically, Registrant claims that it has priority of use over
`
`Petitioner on a nationwide basis, or at least in the majority of areas throughout the
`
`United States. As such, Registrant has a meritorious defense to this case. Registrant
`
`is not required to prove a likelihood of success on the merits — rather, a party’s
`
`
`
`
`
`averments need only plausibly suggest the existence of facts which, if proven at trial,
`
`would constitute a cognizable defense. Coon, 867 F.2d at 77. Registrant’s answer
`
`meets this low threshold.
`
`D.
`
`Other Factors Support Registrant’s Motion To Set Aside The
`Entry Of Default In This Case
`
`The Board may also look to factors such as Registrant’s explanation, the good
`
`faith of the parties, and the timeliness of this motion. Each of these factors weighs in
`
`Registrant’s favor.
`
`As stated above, Registrant did not receive the petition for cancellation or any of
`
`the Board’s prior orders. The first time that Registrant became aware of this
`
`proceeding was on December 3, 2002, when it received the Order To Show Cause Re
`
`Default that the Board sent to Registrant’s current address. Thus, Registrant has a
`
`good explanation for its failure to file a response to the petition for cancellation.
`
`Registrant has also acted in good faith in this dispute, first trying to settle the
`
`matter with Petitioner by providing information about Registrant’s business (including its
`
`current address) and by drafting a co—existence agreement. Registrant was not
`
`contacted by Petitioner after the petition for cancellation being filed.
`
`Instead, the
`
`purported notice of this proceeding by Petitioner was sent to Registrant’s old address.
`
`Registrant’s good faith is also evidenced by its prompt motion to set aside the
`
`entry of default after having been advised of this proceeding and the Order To Show
`
`Cause Re Default in early December 2002. Registrant has not delayed -- it filed this
`
`
`
`
`
`combined response to the Order To Show Cause Re Default and the instant motion
`
`immediately.
`
`Finally, any doubts regarding the propriety of Registrant's response or motion to '
`
`set aside the entry of default should be resolved in favor of Registrant. Coon, 867 F.2d
`
`at 77; Pao/o’s, 21 U.S.P.Q.2d at 1902.
`
`V.
`
`CONCLUSION
`
`For the above-stated reasons, Registrant respectfully requests that the Board
`
`accept Registrant's response to the Order To Show Cause Re Default Judgment and
`
`grant Registrant's motion to set aside the entry of default in this case.
`
`Date: Decemberaj, 2002
`
`Respectfully submitted,
`
`VQ/C
`
`M I ATT, PHELPS & PHILLIPS, LLP
`113 5 W. Olympic Blvd., 10th Floor
`Los Angeles, California 90064
`(310) 312-4000
`
`Attorneys for Registrant
`Summit Entertainment, L.P.
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United
`States Postal Service as first class mail in an envelope addressed to: Assistant
`Commissioner of Trademarks, Box TTAB — No Fee, 2900 Crystal Drive, Arlington,
`Virginia 22202-3513, on this flth day of December 2002
`Q I k
`
`A uth Quintanilla
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing document has been served upon the attorney
`for Applicant by depositing a copy thereof in an envelope addressed to: Cline White,
`Jackson Walker, 112 East Pecan Street, Suite 2100, San Antonio, Texas 78205, on
`this filth day of December, 2002.
`
`R th Quintanilla
`
`10
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
