67
`
`IN THE UNITED PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`UNIQUE MOTORCARS,
`
`OPPOSER,
`
`VS.
`
`_
`
`OPPOSITION NUMBER:92041950
`
`CARROLL HALL SHELBY TRUST,
`
`a Texas Revocable Trust, the Trustees
`
`comprising of Carroll Hall Shelby,
`
`APPLICANT.
`
`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.00-
`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: March 1, 2006
`
`
`W. WH SMITH, P. C.
`
`By:
`
`s
`W. Wheeler Smith,
`
`Attorney for Opposer
`3500 Independence Drive
`Birmingham, AL 35209
`205/879-9595
`
`1lllllllllllllllllllllllllllllllllllllllll
`
`03-14-2006
`US. Patent 8: TMOfclTM Mail Rcpt Dt. if 0
`
`
`
`IN THE UNITED PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`UNIQUE MOTORCARS,
`
`OPPOSER,
`
`VS.
`
`_
`
`OPPOSITION NUMBER:92041950
`
`CARROLL HALL SHELBY TRUST,
`
`a Texas Revocable Trust, the Trustees
`
`comprising of Carroll Hall Shelby,
`
`APPLICANT.
`
`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.00-
`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: March 1, 2006
`
`
`W. WH SMITH, P. C.
`
`By:
`
`s
`W. Wheeler Smith,
`
`Attorney for Opposer
`3500 Independence Drive
`Birmingham, AL 35209
`205/879-9595
`
`1lllllllllllllllllllllllllllllllllllllllll
`
`03-14-2006
`US. Patent 8: TMOfclTM Mail Rcpt Dt. if 0
`
`
`
`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 it day of March, 2006.
`
`'‘
`
`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
`
`the United States Mail, first-classpostage prepaid, on March 3/, 2006. )
`4,},
`
`W. Wheeler Smith
`
`
`
`
`
`United States Court of Appeals
`For the First Circuit
`
`No. 05-1307
`
`CARROLL SHELBY ET AL.,
`
`Plaintiffs, Appellants,
`
`V.
`
`SUPERFORMANCE INTERNATIONAL,
`
`INC.,
`
`Defénaafifi,‘ Agggeilee.
`
`APPEAL FROM THE UNITED STATES DISTRICT COURT .
`
`FOR THE DISTRICT OF MASSACHUSETTS
`
`'[Hon. Rya W. Zobel, U.SL District Judggj
`
`1/18/2006
`
`
`
`Page2ofI1
`
`R. David Hosp, with whom R. Todd Cronan, Mark S. Puzella,
`and
`Goodwin Procter LLP were on brief, for appellants.
`Steven E.
`Snow, with whom Randall T. WeeksL_ Jr., Robert K.
`Taylor, and Partridge Show & Hahn LLP were on brief,
`for Shell Valley
`Companies,
`Inc.,
`International
`.Automobile Enterprises,
`Inc.,
`B
`&
`B
`Manufacturing,
`Inc., Backdraft Racing,
`Inc.,
`and Unique Motorcars,
`L.L.C., amici curiae.
`‘
`
`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
`
`an issue that
`
`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
`1960s,
`Shelby manufactured and sold the Shelby Cobra
`427 S/C. After
`the
`
`1/IR/7006
`
`
`
`Page 3 ofll
`
`It markets,
`industry.
`in that
`a player
`is
`Inc.
`International,
`imports,
`and sells the Superformance
`427 S/C _—
`a
`rolling chassis
`identical in design to the Shelby Cobra 427 S/C. 93 Superformance uses
`the same mark (427 S/C) and emblem badges
`(Cobra) on its replicas as
`Shelby used on the originals.
`
`’pgéa:s¢a Iéfi (theories
`tradeedresslbasedf claims
`counterfeiting,
`dilution} unfair
`competition,
`
`of
`and
`
`infringement,
`the
`like.
`59
`
`of
`
`trademark— and
`
`skirmishing, not
`great deal of
`-granted Superformance's motion
`
`relevant here,
`for partial
`
`the district court
`summary
`
`Shelby's trade—dress claims
`
`(comprising parts of
`
`five of
`
`the seven
`
`counts
`contained in Shelby's
`amended
`
`complaint). Carr ll Sh
`Licensing,
`Inc. v. Superformance Int'lL Inc.,
`251 F. Supp. 2d 983,
`988 (D. Mass. 2002).
`
`
`
`secondary
`issue of
`the
`The court's decision focused on
`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
`
`1/1 R/'>nnA
`
`
`
`evidence
`
`"insufficient
`
`to
`
`support
`
`a
`
`reasonable
`
`jury finding in
`
`Page4 ofll
`
`a final order,
`lg; at 987. That was not
`Superformance.
`district
`court proceedings
`continued on
`the
`
`remaining
`
`trademark
`
`claims and on Superformance's counterclaims.
`
`judgment by
`final
`for
`2004, Shelby rnoved
`On December 17,
`a permanent
`injunction, and vacation of the partial
`summary
`consent,
`judgment order. Shelby informed the district court
`that
`the.consent
`Ajudgment 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
`
`1/1 O/finnc
`
`
`
`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
`
`either
`
`its statement of ’facts or
`
`in the argument
`
`section of
`
`its
`
`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
`
`1/1 R/7006
`
`
`
`Page 6 ofll
`
`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 mootness 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
`
`notice of appeal must specify_the order_appealed from._§§e Fed. R.
`
`App. P. 3(c)(l)(B)
`
`(requiring that a notice of appeal "designate the
`
`judgment, order, or part
`thereof being appealed"). Here, even though
`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, e.g., Smith v.
`
`Barry, 502 U.S. 244, 248
`
`(1992); Lehman V. Revolution PortfolioL_LLC,
`
`166 F.3d 389, 395 (1st Cir. 1999). Shelby offers no plausible reason
`
`why we should not apply that principle here. 93
`
`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/1R/7006
`
`
`
`Page7of11
`
`briefly,
`
`A
`
`federal
`
`court's
`
`jurisdiction
`
`is
`
`constitutionally
`
`restricted to the resolution <3f actual cases or controversies. See
`
`U.S. Const. art.
`
`III,
`
`§ 2, cl.
`
`1;
`
`see also Lewis V. Cont'l Bank
`
`§Q£Q;,
`
`494 U.S. 472,
`
`477
`
`(1990); Cruz v. Earguharson,
`
`252 F.3d 530,
`
`533
`
`(1st Cir.
`
`2001).
`
`"A case generally becomes moot when
`
`the
`
`controversy is no
`
`longer
`
`‘live’ or
`
`the parties
`
`‘lack a
`
`legal[ly]
`
`cognizable interest
`
`in the outcome.'" Ortiz:Gonzalez v. Fonovisa, 277
`
`F.3d 59,
`64
`(1st Cir; 2002)
`(quotir1g~Murphy v.
`455 u.s. 478,
`48l__(l9§2) “(per _curiam)).g It“ is,
`therefore,“ clear .beyond hope of
`
`contradiction that.
`
`a global settlement Hmots
`
`an action between the
`
`the same subject matter. §e§, §;g_-
`settling parties arising out of
`Lake Coal Co. v. Roberts
`& Schaefer_Co.,
`474 U.S.
`120,
`120
`(1985)
`
`I
`
`»(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
`
`
`
`
`
`Page 8 of 11
`
`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,
`
`much interest
`
`in protecting those rights as does Shelby itself.
`
`comes as no surprise,
`
`therefore(
`
`that Superformance elected not
`
`It
`
`to
`
`defend the summary judgment order before this court. By any measure,
`
`Inc,,
`is moot. See Aqua Marine Supply v. AIM Machining;
`this appeal
`247 F.3d 1216, 1219-20 (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 Mortq; Co. v. Bonner Mall P'ship, 513 U.S. 18,
`
`21 (1994). We turn to that question.
`
`The "principal condition" to which courts look when engaging
`
`1/18/2006
`
`
`
`Page9of11
`
`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.
`
`IQLT 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 previously obtained should remain intact. §§§ id;
`
`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
`
`
`
`
`
`Page 10of11
`
`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
`
`of‘ an underlying
`
`judgment. After all,
`
`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, §;g;,
`
`id. at
`
`25.
`
`In constructing that balance, Shelby's actions weigh heavily
`
`against
`
`it. As
`
`recounted above, Shelby omitted any mentimi 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
`
`
`
`
`
`mootness_hovered like a dark cloud over this appeal. Courts ought not
`
`to reward a party's evasiveness by granting it relief that
`
`it does
`
`not deserve. We will not do so here.
`
`I’age11 ofll
`
`partial summary judgment order.
`
`Dismissed.
`
`This e—mail message contains confidential and/or legally privileged in
`belonging to the sender and intended only for the review and use of th
`recipient.
`If.you are not the-intended recipient, any disclosure, dis
`distribution, copying,
`review, or use of the information contained in
`e—mail message or any attachment is strictly prohibited.
`
`If you think you have received this e—mail message in error, please no
`Partridge Snow & Hahn LLP at
`(401) 861-8200, and purge this e—mail mes
`your computer system immediately.
`Thank you.
`
`I/1 Q/")nl’\£
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