F7
`
`
`
`TTAB
`
`IN THE UNITED PATENT AND TRADEMARK OFFILJJ
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ERA REPLICA AUTOMOBILES,
`
`PETITIONER,
`
`VS.
`
`OPPOSITION NUMBER: 92040723
`
`CARROLL HALL SHELBY TRUST,
`
`a Texas Revocable Trust, the Trustees
`
`comprising of Carroll Hall Shelby,
`
`REGISTRANT.
`
`SUBMISSION OF THE ORDER OF THE UNITED STATES COURT OF APPEALS
`
`FOR THE FIRST CIRCUIT
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Dear Sir:
`
`Submitted herewith is the Appellate Decision of the United States Court of Appeals,
`dated January 18, 2006, which dismisses the appeal of Carroll Shelby, et al. and leaves intact the
`partial Summary Judgment entered by the United States District Court for the District of
`Massachusetts (Carroll Shelby, et al. v. Superformance International, Inc., Case No. DIV-A.()0-
`12581).
`I have also attached hereto, for your convenience, a copy of the decision of the District
`Court for the District of Massachusetts.
`
`The judgment of the United States Court of Appeals is believed to be final, as the time for
`appeal has lapsed and no notice of appeal has been received.
`
`Therefore, Opposer requests that the proceedings be restored to the active docket, or that
`a decision will be entered in accordance with the findings of the United States District Court for
`the District of Massachusetts, as may be appropriate.
`
`Respectfully submitted,
`
`Dated: Marchl,2006
`
`W. WHEELER SMITH, P. c.
`
`By: 4:) 4; Q Q '__
`W. Wheeler Smith,
`Attorney for Opposer
`3500 Independence Drive
`Birmingham, AL 35209
`205/8790595
`
`IllllllIllllllllllllllIlllllllllllllllllllllllllll
`
`03-14-2006
`U.S. Patent & TMOfcITM Mail Rcpt Dt. #30
`
`
`
`
`
`TTAB
`
`IN THE UNITED PATENT AND TRADEMARK OFFILJJ
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ERA REPLICA AUTOMOBILES,
`
`PETITIONER,
`
`VS.
`
`OPPOSITION NUMBER: 92040723
`
`CARROLL HALL SHELBY TRUST,
`
`a Texas Revocable Trust, the Trustees
`
`comprising of Carroll Hall Shelby,
`
`REGISTRANT.
`
`SUBMISSION OF THE ORDER OF THE UNITED STATES COURT OF APPEALS
`
`FOR THE FIRST CIRCUIT
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Dear Sir:
`
`Submitted herewith is the Appellate Decision of the United States Court of Appeals,
`dated January 18, 2006, which dismisses the appeal of Carroll Shelby, et al. and leaves intact the
`partial Summary Judgment entered by the United States District Court for the District of
`Massachusetts (Carroll Shelby, et al. v. Superformance International, Inc., Case No. DIV-A.()0-
`12581).
`I have also attached hereto, for your convenience, a copy of the decision of the District
`Court for the District of Massachusetts.
`
`The judgment of the United States Court of Appeals is believed to be final, as the time for
`appeal has lapsed and no notice of appeal has been received.
`
`Therefore, Opposer requests that the proceedings be restored to the active docket, or that
`a decision will be entered in accordance with the findings of the United States District Court for
`the District of Massachusetts, as may be appropriate.
`
`Respectfully submitted,
`
`Dated: Marchl,2006
`
`W. WHEELER SMITH, P. c.
`
`By: 4:) 4; Q Q '__
`W. Wheeler Smith,
`Attorney for Opposer
`3500 Independence Drive
`Birmingham, AL 35209
`205/8790595
`
`IllllllIllllllllllllllIlllllllllllllllllllllllllll
`
`03-14-2006
`U.S. Patent & TMOfcITM Mail Rcpt Dt. #30
`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that I mailed a copy of this Submission of the Order of the United
`States Court of Appeals for the First Circuit by United States Postal Service, by express mail,
`with correct postage paid, in an envelope addressed to the Assistant Commissioner for Patent and
`Trademarks, Trademark Trial and Appeal Board, 2900 Crystal Avenue, Arlington, VA 22202-
`3513 on the
`?—/day of March, 2006.
`7
`
`W. Wheeler Smith
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing Submission of the Order of the
`United States Court of Appeals for the First Circuit upon Edward A. Sokoloski, Attorney for
`Applicant, 3868 Carson Street, Suite 105, Torrance, CA 90053 by depositing one copy thereof in
`
`theUnited StatesMail, first-classpostageprepaid, onMmcl§2006.
`
`:
`
`i
`
`-7
`
`W. Wheeler Smith
`
`
`
`
`
`
`
`United States Court of Appeals —
`For the First Circuit
`
`No. 05-1307
`
`CARROLL SHELBY ET AL.,
`
`Plaintiffs, Appellants,
`
`v.
`
`SUPERFORMANCE INTERNATIONAL,
`A
`oeifiéfiagl,‘ Afigeileé”.
`
`INC,,
`
`APPEAL FROM THE UNITED STATES DISTRICT COURT .
`
`FOR THE DISTRICT OF MASSACHUSETTS
`
`'[Hon. Rya W. Zobel, U.S. District Jugge]
`
`1/18/2006
`
`
`
`Page2ofl1
`
`Before
`
`Selya, Lipez and Howard, Circuit Judges.
`
`R. David Hosp, with whom R. Todd Cronan, Mark S. Puzella,
`Goodwin Procter LLP were on brief,
`for appellants.
`Jr., Robert _§;
`Steven E.
`Snow, with whom Randall T. Weeks,
`for Shell Valley
`Taylor, and Partridge Snow & Hahn LLP were on brief,
`Companies,
`Inc.,
`International
`.Automobile Enterprises,
`Inc.,
`B
`&
`B
`Manufacturing,
`Inc., Backdraft Racing,
`Inc.,
`and Unique Motorcars,
`L.L.C., amici curiae.
`'
`
`and
`
`
`
`January 18, 2006
`
`SELYA, Circuit Judge. The appellants, Carroll Shelby, Shelby
`
`American,
`
`Inc.,
`
`and Carroll Shelby Licensing,
`
`Inc.
`
`(collectively,
`
`Shelby), cloak this appeal
`
`in the raiment of
`
`trade-dress law. That
`
`masquerade ignores the central question of nmotness
`
`(an issue that
`
`Shelby attempted to obscure
`
`in its appellate
`
`filings). For
`
`the
`
`reasons
`
`that
`
`follow,
`
`we
`
`conclude
`
`that Shelby's
`
`appeal must
`
`be
`
`dismissed and that Vacation of the decision below is unwarranted.
`
`The predicate
`
`facts
`
`are
`
`straightforward.
`
`In
`
`the
`
`19603,
`
`Shelby manufactured and sold the Shelby Cobra
`
`427 S/C. After
`
`the
`
`1/18/2006
`
`
`
`Page 3 01°11
`
`initial commercial production of the automobile had run its course, a
`
`Cobra
`
`replica
`
`industry emerged. Defendant—appellee
`
`Superformance
`
`International,
`
`Inc.
`
`is
`
`a player
`
`in that
`
`industry.
`
`It markets,
`
`rolling chassis
`427 S/C — a
`and sells the Superformance
`imports,
`identical in design to the Shelby Cobra 427 S/C. 99 Superformance uses
`the same mark (427 S/C) and emblem badges
`(Cobra) on its replicas as
`
`Shelby used on the originals.
`
`In
`
`late 2000,
`
`Shelby
`
`commenced
`
`a civil
`
`action
`
`Massachusetts.
`
`Its
`
`complaint
`
`contained a host of
`
`trademark— and
`
`tradéld£éésI5aséa
`counterfeiting,
`
`theories
`claims “premised hon
`dilution,
`unfair
`competition,
`
`of
`and
`
`infringement,
`the
`like.
`99
`
`Superformance answered the complaint and filed counterclaims. After a
`
`great deal of
`
`skirmishing, not
`
`relevant here,
`
`the district court
`
`-granted Superformance's motion
`
`for partial
`
`summary
`
`judgment
`
`on
`
`Shelby's trade-dress claims
`
`(comprising parts of
`
`five of
`
`the seven
`
`counts
`
`contained in Shelby's
`
`amended
`
`complaint). Carroll
`
`Shelby
`
`Licensing,_Inc. V. Superformance Int'l,
`
`Inc.,
`
`251 F. Supp. 2d 983,
`
`988 (D. Mass. 2002).
`
`The court's decision focused on
`
`the
`
`issue of
`
`secondary
`
`meaning — a showing necessary to Shelby's success on the trade—dress—
`
`related claims. See
`
`id. at
`
`986. Although Shelby submitted survey
`
`evidence
`
`of
`
`secondary meaning,
`
`the district
`
`court
`
`deemed
`
`that
`
`1/18/2006
`
`
`
`Page4of1l
`
`evidence
`
`"insufficient
`
`to support
`
`a
`
`reasonable
`
`jury finding in
`
`Shelby's
`
`favor on the issue." ;d;> Since the court also <ietermined
`
`that
`
`the proffered circumstantial evidence was
`
`"equally unavailing"
`
`to show secondary meaning,
`
`it entered summary judgment
`
`in favor of
`
`Superformance.
`
`Id. at 987. That was not
`
`a
`
`final order, however, as
`
`district
`
`court proceedings
`
`continued on
`
`the
`
`remaining
`
`trademark
`
`claims and on Superformance's counterclaims.
`
`On December 17,
`
`2004, Shelby moved for
`
`final
`
`judgment by
`
`consent,
`
`a permanent
`
`injunction,
`
`and vacation of the partial
`
`summary
`
`ifidgment prder, Shelby informed the district court
`
`that the consent
`
`_judgment was "an integral part of a global settlement of_all matters
`
`in dispute between the parties" and represented_that it had entered
`
`into a
`
`license agreement with Superformance
`
`for
`
`the
`
`trade-dress
`
`rights associated with the Shelby "Cobra
`
`427 S/C.
`
`Importuning the
`
`court
`
`to vacate its earlier decree, Shelby explained that the consent
`
`judgment would "facilitate ea new business relationship between the
`
`parties, which now encompasses the trade dress issues that
`
`[were]
`
`the
`
`subject of the [summary judgment] order."
`
`The district court entered the proffered consent
`
`judgment
`
`and permanent
`
`injunction. At
`
`the same time,
`
`the court denied Shelby's
`
`motion to vacate the summary judgment order. Shelby filed a
`
`timely
`
`appeal "from the final
`
`judgment entered in this action." Its notice
`
`1/18/2006
`
`
`
`Page5of11
`
`of appeal singled out
`
`the summary judgment order, but did not mention
`
`the denial of the motion to vacate.
`
`In its appellate brief, Shelby followed the same path.
`
`It.
`
`frontally challenged the merits
`
`of
`
`the
`
`summary
`
`judgment order,
`
`arguing that
`
`the district
`
`court erred by
`
`(i)
`
`not
`
`conducting an
`
`analysis
`
`of
`
`indirect
`
`evidence
`
`of"
`
`secondary meaning
`
`(which,
`
`if
`
`properly evaluated, would have
`
`raised a ‘genuine issue of material
`
`fact as to secondary meaning)
`
`and (ii)
`
`rejecting the survey evidence
`
`(which,
`
`if properly evaluated, also would have sufficed to raise a
`
`genuine issue of_material fact_as_to:secondary,meaning). Shelby made
`
`a passing reference ‘to the consent_ judgment
`
`in its jurisdictional
`
`statement but did not mention its settlement with Superformance in
`
`either
`
`its statement of "facts or
`
`in the argument
`
`section of
`
`its
`
`«brief.
`
`It made no allusion whatever
`
`to the denial of its motion to
`
`vacate the partial summary judgment order.
`
`Superformance elected not
`
`to file a brief. Fortunately,
`
`however,
`
`several manufacturers and sellers of kit cars sought
`
`leave
`
`to file an amicus brief. We allowed their motion on August 26, 2005,
`
`and subsequently granted them permission to argue orally.
`
`The
`
`amicus brief brought
`
`the parties‘
`
`settlement and the
`
`denial of the motion to Vacate to the forefront
`
`for the first time.
`
`The amici suggested that we
`
`should dismiss the appeal as moot and
`
`1/18/2006
`
`
`
`Page 6 of 11
`
`that,
`
`notwithstanding the dismissal,
`
`the.
`
`summary
`
`judgment
`
`order
`
`should remain intact. Despite the fact
`
`that
`
`the amicus brief’ was
`
`filed well
`
`in advance of oral argument, Shelby eschewed the_filing of
`
`a
`
`reply brief and did not address the issue of nmotness until
`
`the
`
`panel began asking questions about it at oral argument. As we explain
`
`below,
`
`that was too little and too late.
`
`At
`
`the
`
`risk of belaboring
`
`the
`
`obvious,
`
`we
`
`begin our
`
`discussion of
`
`the issues by noting that all of Shelby's arguments
`
`concerning mootness
`
`and its effects
`
`seem to have been waived.
`
`A
`
`fiétise ._.‘?_f.._f3.‘P.PF?§.1_...“?P¥5t._._SP€¢ifY.__the_._Order_.,apl§>ealed
`
`from-.§s_e_ Fed. R.
`
`App. P. 3(c)(l)(B)
`
`(requiring that a notice of appeal "designate the
`
`thereof being appealed"). Here, even though
`judgment, order, or part
`the district court explicitly denied a motion to vacate the partial
`
`summary judgment, Shelby did not
`
`frame its appeal as a challenge,
`
`in
`
`whole or
`
`in part,
`
`to that order. A party's failure to designate a
`
`particular order
`
`for appeal ordinarily defeats ‘a later attempt
`
`to
`
`dispute that order
`
`in the court of appeals. See, §;g;, Smith V.
`
`Barry, 502 U.S. 244, 248 (1992); Lehman v. Revolution_Portfolio, LLC,
`
`166 F.3d 389, 395 (lst Cir. 1999). Shelby offers no plausible reason
`
`why we should not apply that principle here. 99
`
`Even
`
`had
`
`Shelby
`
`forthrightly addressed
`
`the
`
`point,
`
`we
`
`nevertheless would dismiss this appeal as moot and decline to direct
`
`the lower court
`
`to vacate its summary judgment order. We explain
`
`I/18/
`
`
`
`Page7of11
`
`.s_e_e_
`
`§_l_s2 Lewis v- 9_ont'l Bank
`
`Qor L,
`
`494 U.S. 472,
`
`477
`
`(1990); §Mu; v. Egrguharsgg, 252 F.3d 530,
`
`533
`
`(1st Cir.
`
`2001)." "A case generally becomes moot Qhen
`
`the
`
`controversy is no
`
`longer
`
`‘live’ or
`
`the parties
`
`‘lack a
`
`legal[ly]
`
`cognizable interest in the outcome.'" Ortiz—Gonza1ez v. Fonovisa, 277
`
`F.3d 59,
`
`64
`
`(1st Cir. 2002)
`
`(quoting-Murphy v.
`
`flung,
`
`455 U.S. 478,
`
`481.
`
`(198%)r.(pe?ms9UF}aW))<_iIfi,Ni§,
`
`.P0€refQreLW clear _beyond "hope of
`
`contradiction that
`
`a global settlement moots an action between the
`
`settling parties arising out of
`
`the same subject matter. See, g;g;,
`
`Lake Coal Co.
`
`VI. Roberts
`
`& Schaefer Co.,
`
`474 U.S.
`
`120,
`
`120
`
`(1985)
`
`~(per curiam); Horizon Bank & Trust Co. v. Massachusetts, 391 F.3d 48,
`
`53 (1st Cir. 2004).
`
`Shelby contests the applicability of
`
`this abecedarian tenet
`
`on the ground that
`
`its settlement with Superformance addressed only
`
`trademark issues
`
`and,
`
`thus,
`
`left extant
`
`a.
`
`live controversy as
`
`to
`
`trade dress. Shelby's representations to the district court belie
`
`that contention.
`
`In its motion for entry of
`
`judgment
`
`by
`
`consent,
`
`Shelby
`
`described a
`
`"global
`
`settlement
`
`of all matters
`
`in dispute"
`
`and
`
`1/18/2006
`
`
`
`1fige8of11
`
`acknowledged that
`
`it had granted a
`
`license to Superformance that
`
`"include[d]
`
`the
`
`trade dress
`
`rights
`
`in the Shelby Cobra
`
`427 S/C
`
`automobile." Based on these unequivocal statements - the settlement
`
`agreement
`
`itself is not part of
`
`the record —- we have no reason to
`
`doubt that there has been a resolution of all the controverted issues
`
`between the parties. Not only are the parties no longer adversaries
`
`in
`
`this
`
`case,
`
`but
`
`their
`
`interests
`
`are
`
`now
`
`fully
`
`aligned:
`
`Superformance, as the licensee of Shelby's trade—dress rights, has as
`
`much interest
`
`in protecting those rights as does Shelby itself.
`
`It
`
`comes as no surprise,
`
`therefore,
`
`that Superformance_elected not
`
`to
`
`defend the summary judgment order before this court. By any measure,
`this appeal
`is moot. See Aqua Marine Supply v. AIM Machining,
`Inc,,
`247 F.3d 1216,
`l2l9-20 (Fed. Cir. 2001)
`(concluding that
`in a patent
`
`infringement action an appeal is moot when the appellee no longer has
`
`an interest
`
`in defending the judgment of
`
`invalidity that it obtained
`
`below).
`
`That
`
`is not
`
`the end of the matter. Shelby seeks vacation of
`
`the partial
`
`summary judgment order and,
`
`even though we must dismiss
`
`this appeal as moot, we retain jurisdiction to decide the question of
`
`vacatur. U,S. Bancorp Mortg. Co. V. BonpermMall Pjship, 513 U.S. 18,
`
`21 (1994). We turn to that question.
`
`The "principal condition" to which courts look when engaging
`
`j
`
`1/18/20
`
`
`
`Page 9ofl1
`
`the vacatur calculus is "whether
`
`the party seeking relief
`
`from the
`
`judgment below caused the mootness by voluntary action." Id. at 24,
`
`Vacatur
`
`is
`
`ordinarily
`
`appropriate when mootness
`
`results
`
`from
`
`vagarious circumstance or the unilateral act of the prevailing party.
`
`Id.
`
`at
`
`25. When mootness
`
`stems
`
`from a
`
`settlement,
`
`however,
`
`the
`
`presumption is different.
`
`In that situation,
`
`"the losing party has
`
`. surrender[ed its] claim to the equitable remedy of vacatur. The
`
`judgment
`
`is not unreviewable, but
`
`simply unreviewed by
`
`[the losing
`
`party's]
`
`own choice{“ Id. The presumption,
`
`therefore,
`
`is that
`
`the
`
`judgment P..reV_i0}_l__Sl.Y. Qbtained .s,hou_ld rémaian intact- ._S_e_e $1-_
`
`That presumption comes
`
`into play here. By entering a global
`
`settlement with Superformance, Shelby
`
`(the summary judgment
`
`loser)
`
`relinquished any claim to vacatur as of right.
`
`Of course,
`
`the U.S. Banggrp presumptions are not
`
`ironclad,
`
`and exceptional circumstances may justify different results. gee id;
`
`at
`
`29.
`
`In this
`
`instance,
`
`Shelby maintains
`
`that
`
`the presumption
`
`against vacatur is rebutted by the equities.
`
`In elaboration, it first
`
`contends
`
`that allowing the summary judgment
`
`to stand will have an
`
`institutionally detrimental
`
`impact
`
`because
`
`the district court's
`
`holding is in conflict with trade—dress law.
`
`That
`
`is resupinate reasoning.
`
`It
`
`invites us
`
`to reach the
`
`merits of
`
`the order
`
`in question and adopt
`
`the
`
`settling party's
`
` 1/18fl2006
`
`
`
`.Page10of11
`
`unopposed
`
`view of
`
`them.
`
`That
`
`disingenuous
`
`invitation seriously
`
`distorts the U.S. Bancorp standard, and we decline to accept it. See
`
`Agua Marine, 247 F.3d at 1221.
`
`Shelby
`
`also argues
`
`that
`
`the
`
`terms
`
`of
`
`the
`
`settlement
`
`agreement preserve its right
`
`to appeal
`
`from the district
`
`court's”
`
`summary
`
`judgment
`
`order.
`
`Because
`
`Shelby
`
`has
`
`not
`
`produced
`
`the
`
`settlement agreement,
`
`that argument asks us to take on faith a matter
`
`dehors the record.
`
`In all events,
`
`even if Shelby's depiction of
`
`the
`
`settlement is accurate,
`
`the reservation of a right of appeal does not
`
`constitute an exceptional circumstance sufficient to justify vacation
`
`ofj
`
`an underlying
`
`judgment. After fall,
`
`if
`
`the
`
`"fact
`
`that
`
`the
`
`settlement agreement provides
`
`for vacatur" does not constitute an
`
`exceptional circumstance, U.S. Bancorp, 513 U.S. at 29,
`
`the fact that
`
`the
`
`agreement
`
`includes
`
`a
`
`right of
`
`appeal
`
`cannot
`
`conceivably be
`
`entitled to greater deference.
`
`If more were needed - and we are confident
`
`that it is not —
`
`we emphasize that vacatur is an equitable remedy. See, e;g;,
`
`id; at
`
`25.
`
`In constructing that balance, Shelby's actions weigh heavily
`
`against
`
`it. As
`
`recounted above, Shelby omitted any Inention of
`
`its
`
`unsuccessful motion to vacate the
`
`summary
`
`judgment order
`
`in its
`
`appellate filings, effectively obscured the import of
`
`the settlement
`
`agreement
`
`in those filings, and never acknowledged that
`
`the issue of
`
`1/18/2006
`
`
`
`I’agell ofll
`
`not deserve. We will not do so here.
`
`the reasons elucidated above,
`We need go no further. 99 For
`we dismiss this appeal as moot and leave intact
`the district court's
`
`partial summary judgment order.
`
`Dismissed.
`
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