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`Docket No. 455-002
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92/043,899
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`KURT M. MARKVA,
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`Petitioner,
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`V.
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`ENTREPRENEUR MEDIA, INC.,
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`Registrant.
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`7\
`PETITIONER’S OPPOSITION TO
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`ENTREPRENEUR MEDIA’S MOTION TO DISMISS r~’_
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`Pursuant 37 CFR 2. l27(e), Petitioner, Kurt M. Markva (“Markva”), herchfgiilresporids‘ to I
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`oppose Registrant’s motion to dismiss under Fed. R. Civ. P. l2(b), and based oithg follffwing:
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`Markva requests the Board to deny Registrant’s motion to dismiss and to allow the procgeedingsfto
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`continue to completion.
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`Introduction
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`In its motion to dismiss, Registrant alleges that the Petitioner is Scott Smith’s “business
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`associate” with whom Petitioner “teamed up
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`to file a petition to cancel EMI’s” Registration No.
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`2,263,883 for ENTREPRENEUR in Class 35, and the “pair has now taken the next step, by filing
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`this petition to cancel Registrant’s Registration No. 1,453,968 for ENTREPRENEUR in Class 16.
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`Registrant alleges that Petitioner is an intermeddler and recounts Smith’s litigation with Registrant in
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`the U.S. District Court for the Central District of California. Registrant urges the Board to find this
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`Court decision as res judicata against Petitioner in this proceeding. For this to occur, Registrant must
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`prove that Smith is in privity with Petitioner with respect to his ENTREPRENEURPR mark that was
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`WWWWWWMWWW
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`01-19-2005
`U.S. Patent & TMOVCITM Mail Rep! DI. #64
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`Cancellation No. 92/043,899
`Petitioner’s Opposition to Registrant’s Motion to Dismiss
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`Page 2 of 20
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`involved in the court decision. Registrant must prove that Petitioner was involved in Smith’s mark,
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`or that Smith was involved with selection of Petitioner’s proposed ENTREPRENEURGR-IP mark
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`that is involved in the current proceeding. Registrant has failed to prove these things.
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`As shown below, Petitioner became a self-employed entrepreneur in February 2004 after
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`being employed on Capitol Hill in Washington, D.C. for 11 and half years, and working for more
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`than a year with a well-known public relations firm. This experience has prepared him to be the sole
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`principal of a Virginia LLC that handles government resources and intellectual property matters for
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`his entrepreneurial clients. Petitioner is in a position to have a right to use the generic word
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`“entrepreneur” with respect to his business, and to file an intent-to-use application for registration of
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`his proposed trademark. Petitioner has no rights in Smith’s ENTREPRENEURPR mark and Smith
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`has no rights in Petitioner’s ENTREPRENEURGR-IP mark. For no transfer of rights in, nor a
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`license to use, their respective marks have occurred orally or in writing. Therefore, Petitioner is not
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`in privity with Smith with respect to either of their respective marks. So res judicata regarding the
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`Ninth Circuit Court decision does not apply to this proceeding.
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`Petitioner ’s Denials
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`Petitioner denies that his business association with Smith in the dormant Intellectual Property
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`Protection Coalition (IPPC) or that any of Registrant’s Exhibits F-I introduced in Cancellation
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`92/043,579 give any ownership interest or establish a privity relationship with Petitioner regarding
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`the selection of Petitioner’s mark, or that Petitioner is an intermeddler in this proceeding.
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`Petitioner denies that Smith had any participation in the selection of Petitioner’s mark, or that
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`Smith was involved in any way with Petitioner’s first or second petitions to cancel Registrant’s
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`Cancellation No. 92/043,899
`Petitioner’s Opposition to Registrant’s Motion to Dismiss
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`Page 3 of 20
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`registrations so as to have filed the petitions in association with Smith.
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`Petitioner denies that the Ninth Circuit Court’s decision applies to Petitioner because he is
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`not, and was not at any time, in privity with Smith with respect to his ENTREPRENEURGR-IP
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`mark or to Smith’s ENTREPRENEURPR mark. So the Court “holding” regarding genericness
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`therefore applies only to Smith and his mark in which Petitioner has no common interest.
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`Petitioner Is Not In Privitjy With Scott Smith
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`Section 206.02 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP)
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`states:
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`In the field of trademarks, the concept of privity generally includes, inter alia, the
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`relationship of successive ownership of a mark (e.g., assignor, assignee) and the
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`relationship of “related companies” within the meaning of Sections 5 and 45 of the Act,
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`15 U.S.C. §§ 1055 and 1127.
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`Section 512.01 of the TBMP states:
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`When there has been an assignment of a mark that is the subject of, or relied upon, in an
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`inter partes proceeding before the Board the assignee may be joined or substituted, as
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`may be appropriate, upon motion granted by the Board, or upon the Board's own
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`initiative.
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`Section 5 of the Trademark Act, 15 U.S.C. §l055, states, in part, as follows:
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`Where a registered mark or a mark sought to be registered is or may be used legitimately
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`by related companies, such use shall inure to the benefit ofthe registrant or applicant for
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`registration, and such use shall not affect the validity of such mark or of its registration,
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`Cancellation No. 92/043,899
`Petitioner’s Opposition to Registrant’s Motion to Dismiss
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`Page 4 of 20
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`provided such mark is not used in such manner as to deceive the public.
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`Section 45 of the Act, 15 U.S.C. §l127, defines “related company” as follows:
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`The term “related company” means any person whose use of a mark is controlled by the
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`owner of the mark with respect to the nature and quality of the goods or services on or
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`in connection with which the mark is used.
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`Petitioner and Smith Are Not Related Companies
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`Either a natural person or a juristic person may be a related company. 15 U.S.C. §l127. So
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`when a mark’s owner who is a natural person is being used by a related company who is also a
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`natural person, the related natural person’s use inures to the owner’s benefit. The owner of the mark
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`controls the nature and quality of its mark that is being used by the related company. Smith is the
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`sole owner of his ENTREPRENEURPR mark that Petitioner has never used as a “related company,”
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`and Petitioner is the sole owner of his ENTREPRENEURGR-IP mark that Smith has never used as a
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`“related company.” Petitioner is not in privity with Smith. Registrant does not prove otherwise.
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`Although two unrelated entities having similar marks were made defendants in civil actions
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`brought by the owner of the mark in question, and they shared the same objection to registration to
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`the mark, the two unrelated entities were not in privity. In re Cooper, 209 USPQ 670, 671 (Comm'r
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`1980). Petitioner and Smith may be business associates in a dormant business, but any comments in
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`articles or e-mails from the Internet are irrelevant to the issue of privity in these proceedings. For
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`their business association does not make them successors-in-interests to their respective marks, nor
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`related companies that use the respective marks to enure to the benefit of the respective owners
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`within the meaning of Sections 5 and 45 of the Act.
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`Cancellation No. 92/043,899
`Petitioner’s Opposition to Registrant’s Motion to Dismiss
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`Page 5 of 20
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`For the foregoing reasons, Petitioner and Smith are not in privity for res judicata to apply.
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`Petitioner and Smith Do Not Hold Successive Rights in ENTREPRENEURPR Mark
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`In the decision ofInternational Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55
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`USPQ2d 1492, 1495 (Fed. Cir. 2000), the Court states:
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`Application of res judicata requires a prior final judgment on the merits by a court or
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`other tribunal ofcompetentjurisdiction; identity ofthe parties or those in privity with the
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`parties; and a subsequent action based on the same claims that were raised, or could have
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`been raised, in the prior action. See Amgen, Inc. v. Genetics Inst., 98 F.3d 1328, 1331,
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`40 USPQ2d 1524, 1526 (Fed. Cir. 1996); McCandless v. Merit Sys. Protection Bd., 996
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`F.2d 1193, 1197-98 (Fed. Cir. 1993)....
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`A variety of relationships between two parties can give rise to the conclusion that a
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`nonparty to an action is “in privity” with a party to the action for purposes of the law of
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`judgments, which is simply a shorthand way of saying that the nonparty will be bound
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`by the judgment in that action. See 18 Charles Alan Wright et al., Federal Practice and
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`Procedure §§ 4448-62 (1981). One situation in which parties have frequently been held
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`to be in privity is when they hold successive interests in the same property. See, e.g.,
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`Litchfield v. Crane, 123 U.S. 549, 551 (1887) (defining privity to include a “mutual or
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`successive relationship to the same rights ofproperty”). Thus, a judgment with respect
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`to a particular property interest may be binding on a third party based on a transfer ofthe
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`property in issue to the third party after judgment. See Restatement (Second) of
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`Judgments § 43 (1982) (“A judgment in an action that determines interests in real or
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`Cancellation No. 92/043,899
`Petitioner’s Opposition to Registrant’s Motion to Dismiss
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`Page 6 of 20
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`personal property. .
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`. [h]as preclusive effects upon a person who succeeds to the interest
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`of a party to the same extent as upon the party himself.”). A corollary of that principle,
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`however, is that when one party is a successor in interest to another with respect to
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`particular property, the parties are in privity only with respect to an adjudication ofxights
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`in the property that was transferred; they are not in privity for other purposes, such as
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`an adjudication of rights in other property that was never transferred between the two.
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`See 18 Wright et al., supra, § 4462. Put another way, the transfer of a particular piece
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`of property does not have the effect of limiting rights of the transferee that are unrelated
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`to the transferred property. See Munoz v. County ofImperial, 667 F.2d 81 1, 816 (9th Cir.
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`1982) (concluding that non-parties were not in privity with a party to litigation because
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`“[t]he right which the [third parties] seek to litigate is not one which they obtained
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`through contractual relations with [a party to the previous litigation]. It is a completely
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`independent right[.]”).
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`Smith did not assign or license any rights in his ENTREPRENEURPR mark to Petitioner, nor
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`did Petitioner assign or license any rights in his ENTREPRENEURGR-IP mark to Smith. Therefore,
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`Smith carmot be joined or substituted as a party to this proceeding under Section 512.01 of the
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`TMBP nor was Petitioner joined, nor could he have been joined, as a party to the Ninth Circuit Court
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`decision as a matter of law. Privity between the parties of Petitioner and Smith does not exist in the
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`respective proceedings. The right which the Petitioner and Registrant seek to resolve in this
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`proceeding is not one that Petitioner obtained through contractual relations with Smith in his
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`litigation with Registrant. It is a completely independent right.
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Opposition to Registrant’s Motion to Dismiss
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`Page 7 of 20
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`In determining whether to grant a motion to dismiss under Federal Rule l2(b)(6), the Board
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`primarily considers the allegations in the petition to cancel, matters of public record, orders, items
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`appearing in the record of the case, and exhibits attached to the petition. Hal Roach Studios v.
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`Richard Feiner & Co., 896 F.2d 1542, 1555 n. 19 (9th Cir. 1990); Emrich v. Touche Ross & Co., 846
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`F.2d 1190, 1198 (9th Cir. 1987); Mack v. South Bay Beer Distributors, Inc., 798 F.2d 1279, 1282
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`(9th Cir. 1986). The petition should be construed in the light most favorable to Petitioner, and its
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`allegations are taken as true. Scheuer, 416 U.S. at 237.
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`For Registrant to prevail on a motion to dismiss under Federal Rule of Civil Procedure
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`12(b)(6), it must appear beyond doubt that Petitioner can prove no set of facts in support of his claim
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`which would entitle him to relief. Conley v. Gibson, 355 U.S. 41, 45-46 (1957); Cervantes v. City of
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`San Diego, 5 F.3d 1273, 1274 (9th Cir. 1993). The purpose of a motion under Federal Rule 12(b)(6)
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`is to test the formal sufficiency of the statement of the claim for relief in the petition to cancel.
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`Rutman Wine Co. v. E. & J. Gallo Winery, 829 F.2d 729, 738 (9th Cir. 1987). It is not a procedure
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`for resolving a contest about the facts or the merits of the case. In reviewing the sufficiency of the
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`petition to cancel, the issue is not whether Petitioner will ultimately prevail but whether Petitioner is
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`entitled to offer evidence to support the claims asserted. Scheuer v. Rhodes, 416 U.S. 232, 236, 94
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`S.Ct. 1683, 40 L.Ed.2d 90 (1974).
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`In detennining whether or not a litigant before the Board has stated a claim upon which relief
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`can be granted, the facts alleged in the petition are assumed to be true. Stanspec Co. v. American
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`Chain & Cable Co. , 531 F.2d 563, 566, 189 USPQ 420, 422 (CCPA 1976) (petition for cancellation
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 8 of 20
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`of a registered mark). Dismissal is appropriate “if it is clear that no relief could be granted under any
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`set of facts that could be proved consistent with the allegations.” Abbott Labs. v. Brennan , 952 F.2d
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`1346, 1353, 21 USPQ2d 1192, 1198 (Fed. Cir. 1991) (citations and internal quotations omitted).
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`Requirements for Petition to Cancel
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`Section 14 of the Lanham Act, which provides for cancellation to the registration of a mark,
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`provides in relevant part as follows:
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`A petition to cancel registration of a mark, stating the grounds relied upon, may. .
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`. be
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`filed .
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`.
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`. by any person who believes that he is or will be damaged by the registration of
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`a mark on the principal register .
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`.
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`15 U.S.C. § 1064 (1994)
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`Section 14 has been interpreted as requiring Petitioner “to show (1) that it possesses standing
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`to challenge the continued presence on the register of the subject registration and (2) that there is a
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`valid ground why the registrant is not entitled under law to maintain the registration.” Lipton Indus.,
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`Inc. v. Ralston Purina C0. , 670 F.2d 1024, 1026, 213 USPQ 185, 187 (CCPA 1982). The standing
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`requirement is based on the statutory requirement that a cancellation petitioner must believe that “he
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`is or will be damaged by the registration” and cases defining the scope of this language. See id. at
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`1028-29, 213 USPQ at 189; cf Jewelers Vigilance Comm. , 823 F.2d at 492, 2 USPQ2d at 2023
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`(noting that “an opposer’s right-or standing-to bring an opposition proceeding flows from” Section
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`13's requirement that such a party believes that he would be damaged by the registration). An
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`opposer’s allegation of damage to his business was sufficient to establish standing. Young v. AGB, 47
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`USPQ.2d 1752 (Fed. Cir. 1998).
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 9 of 20
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`The “valid ground” that must be alleged and ultimately proved by a cancellation petitioner
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`must be a “statutory ground which negates the appellant’s right to the subject registration." Lipton ,
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`670 F.2d at 1030, 213 USPQ at 190 (emphasis added). Although cancellation is most often premised
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`on the grounds listed in Section 2 of the Lanham Act, see 15 U.S.C. § 1052 (1994), other grounds
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`which negate entitlement to maintain a registration also exist in the Lanham Act. See, e.g. , Lipton ,
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`670 F.2d at 1031, 213 USPQ at 191 (entertaining a cancellation petition premised on when the
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`registered mark becomes the generic name for the goods or services under Section 14(3), 15 U.S.C.
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`§ 1064(3) (1994)).
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`Genericness Pleaded
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`Petitioner pleads that Registrant’s mark ENTREPRENEUR should be cancelled on the valid
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`ground that it is generic when applied to its sale of publications to the same target group of
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`entrepreneurs for both parties. Petitioner also pleads that he has the equal right to use “entrepreneur”
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`in his mark because Registrant’s mark has become generic as applied to its goods so that he will be
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`irreparably damaged in his business and goodwill (Petition to Cancel, paras. 3-5, and 8).
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`Despite Petitioner’s pleading of genericness of its single word mark, Registrant bases its
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`motion on the alleged Ninth Circuit Court holding that Registrant’s mark is not generic, and that
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`“Markva lacks standing to bring this cancellation petition because he is prevented by court order
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`from using his mark.” Registrant states that “[j]ust as Smith is enjoined from using
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`ENTREPRENEURPR, Markva, in active concert with Smith, is enjoined from using
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`ENTREPRENEURGR-IP. Without the legal ability to use his mark, Markva lacks a real commercial
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`interest in his own mark or a reasonable basis for his belief that he would be damaged by the
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 10 of 20
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`existence of EMI’s registration.” Registrant presents no evidence that Petitioner is or ever has been
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`“in active concert with Smith” with respect to Petitioner’s selection of his ENTREPRENEURGR-IP
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`mark, or with respect to Smith’s litigation with Registrant involving his ENTREPRENEURPR mark.
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`Petitioner ’s Damage
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`The treatise, McCarthy on Trademarks, Section 20.50 states:
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`For a petitioner who alleges that the registered term is descriptive, “damage” is presumed
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`or inferred if petitioner is one who has a sufficient interest in using the descriptive term
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`in its business. To obtain standing to cancel on the ground that the registered mark is
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`descriptive or generic, petitioner must plead and prove that the registration is inconsistent
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`with petitioner’s equal right to use the term on similar goods as a descriptive or generic
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`designation. However, it is not necessary that petitioner actually use the term in order
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`to challenge on the basis of descriptiveness or genericness. All that is necessary is that
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`petitioner be in a position to have a right to use that term. (Case citations omitted.)
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`The “Real Interest” Test
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`An opposer is required to show that he has a “real interest” in the outcome of a proceeding in
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`order to have standing. See, e.g., Universal Oil Prod. Co. v. Rexall Drug & Chem. Co., 463 F.2d
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`1122, 1123, 174 USPQ 458, 459 (CCPA 1972) (“Standing, within the meaning of § 13, is found
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`when the opposer establishes a real interest in the proceeding.” (internal citation omitted)); Tanners’
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`Council 0fAm., Inc. v. Gary Indus. Inc., 440 F.2d 1404, 1406, 169 USPQ 608, 609 (CCPA 1971)
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`(“[A]n opposition may be filed by anyone having a real interest.”) This ‘‘real interest” requirement
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`stems from a policy of preventing ‘mere intermeddlers’ who do not raise a real controversy from
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 11 of 20
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`bringing oppositions or cancellation proceedings in the PTO. See Lipton Indus, Inc. v. Ralston
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`Purina C0,, 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982); see also Tanners’ Council, 440
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`F.2d at 1406, 169 USPQ at 609; Singer Mfg. Co. v. Bz'rginal~Bigsby Corp., 319 F.2d 273, 276-77,
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`138 USPQ 63, 66 (CCPA 1963) (An opposer who was not an interrneddler was permitted to oppose
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`a mark.).
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`In Richie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) the
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`Court states:
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`In no case has this court ever held that one must have a specific commercial interest, not
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`shared by the general public, in order to have standing as an opposer. Nor have we ever
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`held that being a member ofa group with many members is itself disqualifying. The crux
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`of the matter is not how many others share one's belief that one will be damaged by the
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`registration, but whether that belief is reasonable and reflects a real interest in the issue.
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`See 15 U.S.C. § 1063.
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`Petitioner ’s Real Personal Interest
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`Regarding Petitioner’s real personal interest in using the generic term in his business, Markva
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`pleads that he “is a self-employed entrepreneur who is the sole principal in a Virginia organized
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`entity engaged in the business of consulting and lobbying on behalf of small entrepreneurial clients.”
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`(Petition to Cancel, para. 6).
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`In his declaration filed in opposition to Registrant’s motion to dismiss
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`in Cancellation No. 92/043,579 (a copy attached hereto), Petitioner proves his background for
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`providing such consulting and lobbying business services after becoming a self-employed
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`entrepreneur including his work as Chief of Staff for a U.S. Congressman; his employment as Senior
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 12 of 20
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`Vice President for Government Affairs for a large, well-known public relations firm; the expertise he
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`gained through his experience; and the organizing and management of his own Virginia business
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`entity (Kurt M. Markva Decl. paras. 3-15).
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`In 1991, he began to serve on Capitol Hill in Washington D.C. for more than 11 and a half
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`years under two different Members of Congress. For the 107th Congress, he served as Chief of Staff
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`to U.S. Representative Donald A. Manzullo, who is Chairman of the U.S. House Committee on
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`Small Business, Chairman of the U.S.-China Inter-Parliamentary Exchange, and Co-Chairman of the
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`Congressional Manufacturing Caucus (Petitioner Exhibit BB).
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`He spearheaded a Variety of issues both for Chairman Manzullo’s personal and committee
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`offices, making numerous contacts throughout Congress and in the lobbying world. His
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`congressional focus included appropriations, agriculture, energy, environment, product liability,
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`constitutional questions, immigration, intellectual property, telecommunications, technology,
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`transportation and infrastructure. He worked closely on matters of personal importance to Chairman
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`Manzullo including issues that were and continue to be of specific concern to his constituency such
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`as job creation in the congressman’s 16"‘ Congressional District in northern Illinois.
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`After a Brazilian trade trip with the Brazil -U.S. Business Council, Markva kept in contact
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`with key business representatives to encourage businesses to move to, or do business in the 16"‘
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`Congressional District. He managed a variety of issues where several resulted directly in changes to
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`federal law including the Clean Air Act, the Public Safety Officers’ Benefit Act, and the
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`Telecommunications Act of 1996, among others. Markva was Chairman Manzullo’s top fund raiser
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`— raising well over a $1 million in the 107th Congress for the member’s individual campaign, the
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 13 of 20
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`National Republican Congressional Committee, and the Illinois Republican Party. He helped
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`procure funds in the annual appropriations process handling and securing funds for wastewater
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`treatment facilities, airports, water projects, a federal courthouse, highways and bypasses,
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`environmental studies, and other infrastructure needs. Finally, Markva played a pivotal role in 1994
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`in obtaining the necessary commitments to open a Drug Enforcement Administration field office in
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`Rockford, Illinois within the 16"‘ Congressional District.
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`In December 2002, Markva left his public sector role and worked in a similar capacity as
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`Senior Vice President of Government Affairs for Golin/Harris International, Inc., a large public
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`relations organization, with whom he had an employment agreement with a non-competition clause
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`(Petitioner Exhibit CC). For the year 2003, he successfully secured federal appropriations for his
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`clients in a variety of issue areas including law enforcement, economic development, environment,
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`and education. Aside from his expertise in those federal appropriation areas, he managed
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`government affairs matters for a spectrum of small businessmen and entrepreneurs with interests in
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`the following policy arenas: homeland security, trade, financial services, agriculture, small business,
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`Brownfield redevelopment, community development, and environmental remediation, among others
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`(Petitioner Exhibit DD).
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`On February 10, 2004, he resigned as Senior Vice President of Golin/Harris International,
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`Inc. (Petitioner Exhibit EE). He first interviewed with another public relations firm, but after much
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`thought, he decided to become an entrepreneur and form his own consulting and lobbying business.
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`He is now self-employed and the sole principal in Government Resources Group, LLC organized in
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`the Commonwealth of Virginia on March 17, 2004 (Petitioner Exhibit FF). According to the non-
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`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
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`Page 14 of 20
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`competition clause, he was precluded from engaging in any “Competitive Activity” until August 10,
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`2004 (Petitioner Exhibit CC).
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`Through his employment experience, Petitioner acquired his expertise for congressional
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`outreach, federal marketing, public relations, community outreach, and providing general strategic
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`advice for small business and entrepreneurial clients needing to navigate through the legislative and
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`regulatory process in Washington, D.C. on an assortment of federal governmental issues. Petitioner
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`therefore conducts certain business and advertising services informing his target group of
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`entrepreneurs of his government resource and intellectual property information services with a fiiture
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`publication of newsletters and articles to his target group of purchasers.
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`As principal of Government Resources Group, LLC, he lobbies key congressional members
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`of Congress and committees in both the U.S. House and U.S. Senate, and in many departments and
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`agencies of the Executive Branch on behalf of small businessmen and entrepreneurs. In the online
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`Office of Public Records for the U.S. Senate for 2004, he is registered to lobby for Chi1dSafeNet,
`
`Inc. of Fairfax Station, Virginia and MCJ, Inc. of Rockford, Illinois (Petitioner Exhibit GG).
`
`Petitioner consults with entrepreneurs to provide general strategic advice concerning federal
`
`government financing and marketing of their goods and services, and advises them concerning
`
`intellectual property. For example, John P. Dal Santo is (a) inventor of the Pupilometer, which is the
`
`subject of U.S. Patent 6,022,109, and (b) an entrepreneurial principal in MCJ, Inc. identified in the
`
`four (4) web pages from the website www.mcjeyecheck.com. (Petitioner Exhibit HH).
`
`In the future, Petitioner will continue to promote the goods and services of entrepreneurs, and
`
`proposes to provide business information including intellectual property information for the use of
`
`

`
`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
`
`Page 15 of 20
`
`entrepreneurs who are starting and operating small businesses by way of the world-wide Web. And
`
`he proposes to perform web advertising services including an electronic newsletter for entrepreneurs
`
`to inform them how Capitol Hill operates to provide information and resources in developing their
`
`entrepreneurial ideas, products, and services, and to provide active links to the web sites of others
`
`who have information for entrepreneurial activities.
`
`Finally, Petitioner expects to use ENTREPRENEURGR-IP as a service mark for offering the
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`entrepreneurial field of entrepreneurs (for which no other term than “entrepreneur” is available to
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`address them) and to identify him and/or Government Resources Group, LLC as the source for such
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`proposed advertising and business services as set forth in his intent—to-use application for registration
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`of his proposed mark (Kurt M. Markva Decl. paras. 16-18).
`
`In view of the foregoing, Petitioner has standing and a valid ground to file this petition to
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`cancel Registrant’s single word mark ENTREPRENEUR as applied to publications in Class 16.
`
`Res Judicata: Ninth Circuit’s Findings ofFact and Conclusions ofLaw
`
`Registrant raises the issue of res judicata as a bar to Petitioner’s right to use the generic word
`
`“entrepreneur,” and his right to cancel its registrations for the mark ENTREPRENEUR based on
`
`genericness. In U.S. District Court, Central District of California opinion of Entrepreneur Media,
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`Inc. v. Scott Smith attached to Registrant’s motion to dismiss, the Findings of Fact and the
`
`Conclusions of Law show that the issue of genericness was neither tried, found, nor concluded.
`
`Dictum by the judge in a footnote with no consideration of evidence of genericness is not binding on
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`any third party. A finding of genericness will override a showing of acquired distinctiveness of
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`ENTREPRENUER in Class 16, and the incontestability of Registrant’s Registration 1,543,968.
`
`

`
`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
`
`Page 16 of 20
`
`In any event, the term “res judicata” is a generic term for merger and bar or “claim
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`preclusion” and collateral estoppel or “issue preclusion.” See McCarthy on Trademarks, § 32:79.
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`Under the rule of issue preclusion, once a factual issue has been conclusively determined in a
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`previous lawsuit, it is settled between the parties to the suit in all later suits. Petitioner was not a
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`party to the lawsuit in question. So even if the factual issue of genericness were determined against
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`Scott Smith, it is elemental that a person cannot be estopped from litigating a fact determined in a
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`prior proceeding where that person was not a party, or in privity with a party, to the prior
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`determination. Parklane Hosiery Co. v. Shore, 439 U.S. 322, n.7, 58 L.Ed.2d 552, 99 S.Ct. 645
`
`(1979); Gunter v. Howard D. Johnson Co., 161 U.S.P.Q. 233, 1969 WL 9036 (T.T.A.B. 1969).
`
`Petitioner was not a party to the Scott Smith litigation in 1998. For Petitioner was a
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`government employee working for a U.S. Congressman. He was no entrepreneur as he is now, and
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`did not have an ongoing business directed to entrepreneurs as he now does.
`
`Privity may exist if a third party to the previous litigation controlled the presentation in the
`
`prior litigation. Marshak v. Treadwell, 240 F.3d 184, 57 U.S.P.Q.2d 1764 (3d Cir. 2001) (defendant
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`did not present evidence that the third party exercised any control over the prior litigation and thus
`
`collateral estoppel could not bar the third party). Far Out Productions, Inc. v. Oskar, 247 F.3d 986,
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`58 U.S.P.Q.2d 1702 (9“‘ Cir. 2001) (the previous judgment did not involve the same parties “and
`
`therefore should not collaterally estop the [present party] from relitigating whether they legitimately
`
`own the trademark”).
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`Registrant has not proven that privity exists with respect to Petitioner who worked on Capitol
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`Hill when Registrant’s suit was filed against Smith. Registrant presents no evidence that Petitioner
`
`

`
`
`
`Petitioner’s Opposition to Motion to Dismiss
`Cancellation No. 92/043,899
`
`Page 17 of 20
`
`had any control whatsoever over the presentation of Smith’s case or evidence in the prior litigation.
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`Therefore, what happened in the Entrepreneur Media, Inc. v. Smith decision does not apply to this
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`cancellation proceeding.
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`Ninth Circuit’s Footnote That Registrant’s Mark Not Generic
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`Registrant argues that the “Ninth Circuit has ruled as a matter of law that ENTREPRENEUR
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`is not generic,” and says that “the Board in not permitted to disregard circuit precedent” citing In re
`
`Sang Su Lee, 277 F.3d 1338, 1334 (Fed. Cir. 2002 ) to support its position. Sang-Su Lee appealed a
`decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark
`
`Office (the Patent Board), rejecting all of the claims of Lee's patent application. The Court vacated
`
`the Patent Board's decision for failure to meet the adjudicative standardsfor review under the
`
`Administrative Procedure Act, and remanded for further proceedings. The Court stated that in “its
`
`decision on Lee's patent application, the [Patent] Board rejected the need for ‘any specific hint or
`
`suggestion in a particular reference’ to support the combination of [prior art] references. Omission of
`
`a relevant factor required by precedent is both legal error and arbitrary agency action.” The Court
`
`went on to say “an agency rule would be arbitrary and capricious if the agency .
`
`.
`
`. entirely failed to
`
`consider an important aspect of the problem;” that it “is well established that agencies have a duty to
`
`provide reviewing courts with a sufficient explanation for their decisions so that those decisions may
`
`be judged against the relevant statutory standards, and that failure to provide such an explanation is
`
`grounds for striking down the action;” and that “an agency is ‘not free to refuse to follow circuit
`359
`
`precedent
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`to meet the adjudicative standards for review (case citations omitted).
`
`The Sang Su Lee decision pertains t

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