`
`ESTTA Tracking number: ESTTA25427
`
`Filing date3
`
`02/09/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`i92044012
`Plaintiff
`§NAOSSR1
`
`Proceeding
`
`Party
`
`7 M
`
`1 Z
`
`ARC A. BERGSMAN
`Correspondence DICKINSON WRIGHT PLLC
`3 1901 STREET, N.W., SUITE 800
`Address
`WASHINGTON, DC 20036
`
`Submission
`Filer's Name
`
`Opposition to Registrant's Motion To Suspend
`Marc A. Bergsman
`
`]Date
`Attachments
`
`loz/09/2005
`opposition barcelona word n1ark.pdf( 44 pages )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NAOS Srl,
`
`Petitioner,
`
`v.
`KNOLL, |NC.,
`Registrant.
`
`5
`I
`I
`I
`g
`
`Cancellation No. 92044012
`
`PETITIONER'S OPPOSITION TO
`
`REGISTRANT'S MOTION TO SUSPEND
`
`Petitioner Naos Srl
`
`("Naos"),
`
`through its undersigned attorneys,
`
`files
`
`this
`
`opposition to Registrant's ("Knoll") motion to suspend proceedings. The Trademark
`
`Trial and Appeal Board ("the Board") should exercise its discretion to continue the
`
`prosecution of
`
`the above—sty|ed petition for cancellation and thereby cancel a
`
`registration that was never valid because "Barcelona" is the generic term for the
`
`furniture designed by Ludwig Mies van der Rohe.1 Knoll, armed with its improperly
`
`issued registration, has embarked on a program of harassing competitors and using its
`
`wrongfully obtained and maintained registration to unfairly compete in the market for
`
`the registration would never have been issued but for misleading
`Moreover,
`1
`statements made by Kno||'s predecessor-in—interest during the prosecution of the
`registration. This issue is discussed more fully in Section I infra.
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`classic furniture.2 Furniture retailers, furniture manufacturers, and the furniture buying
`
`public benefit if the Board uses its expertise and specialized knowledge to review Knoll's
`
`registration to determine the validity of the registration.
`
`This is a role that
`
`is
`
`fundamentally best ascribed to the Board, rather than a federal court that is far removed
`
`from the registration process.3
`
`I.
`
`FACTS
`
`Ludwig Mies van der Rohe was a world-famous architect and one of the most
`
`influential architects of the twentieth century.4 Between 1928 through 1930, Ludwig
`
`Mies van der Rohe designed a chair, couch, stool, and table which the furniture trade
`
`and public has come to refer to as the Barcelona chair, Barcelona couch, Barcelona
`
`stool, and Barcelona table.5 The name was derived from the fact that Mies van der
`
`Rohe designed the Barcelona chair for the German Pavilion at the 1929 Barcelona
`
`International Exhibition.6
`
`legitimate competition by filing meritless
`is using its registration to chill
`Knoll
`2
`lawsuits and threatening competitors. Gottlieb Declaration, Exhibits B, E, and F
`(Exhibit 2).
`
`Courts have held that the Board's finding regarding the classification of a mark on
`3
`the spectrum of distinctiveness should be given deference notwithstanding pending
`infringement and unfair competition claims in district court litigation. Murphy Door Bed
`Co. v. Interior Sleep Systems, 874 F.2d 95, 101 (2”d Cir. 1989); American Heritage Life
`Insurance Co. v. Heritage Life Insurance C0,, 494 F.2d 3 (5"‘ Cir. 1974); American
`Angus Association v. Sysco Corporation, 829 F.Supp. 807 (W.D.N.C. 1983).
`
`4
`
`5
`
`5
`
`Gottlieb Dec., Exhibits B and D, 1110.
`
`Gottlieb DeC., Exhibits B and D, 1113-19.
`
`Gottlieb Dec., Exhibits B and D, 1113.
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`On September 18, 1963, Drexel Enterprises, Inc. filed an application to register
`
`the word "Barcelona" for furniture. Registration was refused on the ground that the
`
`word "Barcelona" was merely descriptive.
`
`7 Despite the fact that the furniture trade and
`
`the public describes the furniture designed by Mies van der Rohe as "Barcelona",
`
`Drexel responded to the refusal to register stating that the term "Barce|ona' has no
`
`significance whatever in describing any feature of the furniture."
`
`(Emphasis in the
`
`original).8 By misleading the Trademark Examiner, Drexel was able to persuade the
`
`Trademark Office
`
`to approve the application for publication (and subsequent
`
`registration).
`
`In a letter dated May 18, 2000, Patrick Milberger, Vice President, General
`
`Counsel, and Secretary of Knoll, sent a written objection to Sergio Palazzetti concerning
`
`the use of the "Barcelona" trademark.9 Palazzetti responded to Kno|l's protest letter
`
`explaining that he had been making "fair use" of the term "Barcelona" to refer to the
`
`particular chair design by Mies van der Rohe and that the relevant trade and public
`
`associated the term "Barcelona" with the chair design, not its source.” Knoll never
`
`responded to Pa|azzetti's response thereby conceding the merits of Pa|azzetti's
`
`response.“
`
`7
`
`9
`
`‘O
`
`1‘
`
`The January 10, 1964 official Trademark Office Action.
`
`Drexel's January 20, 1964 response to the official Trademark Office Action.
`
`Gottlieb Dec., Exhibit E, 11107 and Exhibit 2.
`
`Gottlieb Dec., Exhibit E, 11108 and Exhibit 2.
`
`Gottlieb Dec., Exhibit E, 11109.
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`In its motion to suspend this cancellation proceeding, Knoll asserted that Naos is
`
`"controlled subsidiary" of Casprini,
`
`the plaintiff
`
`in a Declaratory Judgment Action
`
`challenging the validity of Kno||'s trade dress claim in the design of the Barcelona
`
`furniture collection.
`
`(Kno||'s Memorandum, p. 7). Knoll argued that because Casprini
`
`controls Naos, the cancellation proceeding should be suspended pending the Casprini
`
`Declaratory Judgment Action. On the other hand, Knoll filed a motion to dismiss the
`
`Casprini Declaratory Judgment on the ground that parent corporations and their
`
`subsidiaries are separate entities under the law, therefore, "Casprini has no objectively
`
`reasonable apprehension of
`
`liability sufficient
`
`for
`
`it
`
`to commence its declaratory
`
`judgment action against Knol
`
`I H12
`
`In the federal court action, Knoll argued that the
`
`Casprini Declaratory Judgment Action should be dismissed because Casprini and Naos
`
`are separate legal entities. Knoll has adopted inconsistent positions to mislead both the
`
`Board and the Court and to gain an unfair advantage.”
`
`Kno||'s Memorandum Of Law In Support Of Its Motion To Dismiss The Complaint
`12
`For Lack Of Subject Matter Jurisdiction, pp. 13 — 14, attached hereto as Exhibit 1.
`
`"Casprini is also apparently unhappy that Knoll has decided to pursue the U.S.
`13
`based retailers of infringing furniture rather than the Italian manufacturers of such
`furniture. Gottlieb Dec., Exhibit E at 13-14. Which infringers Knoll acts against, and
`in what order it acts against them, however,
`is a matter of Kno|l's discretion."
`(Emphasis added). However, based on its Motion to Dismiss the Declaratory Judgment
`Action and its Motion to Suspend the petitions for cancellation, Knoll
`is attempting to
`preclude any Italian manufacturer from challenging the validity of Kno||'s registrations.
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`II.
`
`ARGUMENT
`
`A.
`
`The Board Should Exercise Its
`
`Discretion And Deny Knoll's Motion
`To Suspend Proceedings.
`
`Suspension of a proceeding pending the final determination of another
`
`proceeding is completely within the discretion of the Board. Trademark Trial and
`
`Appeal Board Manual of Procedure §510.02 (2"°' ed. 2003). The power to stay
`
`proceedings flows from the power inherent in the Board to schedule disposition of cases
`
`of its own docket. Landis v. North American Co., 299 U.S. 248 254 (1936). Where, as
`
`here, the applicant mislead the Examiner and has conceded that the term at issue does
`
`not function as a trademark, the Board should embrace the opportunity to correct the
`
`register and cancel a registration which should not have been issued.
`
`The primary rationale in the Board's suspension policy is
`
`that
`
`the court
`
`proceeding is broader than that of the Trademark office. This was explained by
`
`Commissioner Leeds in Squirrel Brand Co. v. Barnard Nut C0,, Inc., 101 U.S.P.Q. 340,
`
`341 (Com'r Pats. 1954):
`
`their use. Use is a
`in trademarks grow out of
`Rights
`prerequisite to ownership, and use in commerce by the
`owner is a prerequisite to registration. Although the ultimate
`findings of the tribunals of the Patent Office in proceedings
`such as these is
`the right of an applicant
`to register,
`nevertheless there must be a finding of the right to use in
`commerce before that ultimate finding can be made. The
`Court
`in the civil action will necessarily determine this
`preliminary question
`of
`the
`right
`to use,
`and
`that
`determination will form the basis of the ultimate finding of the
`Office.
`
`if the Court concludes that this defendant
`Simply stated,
`(applicant) has the right to use its mark in commerce, it has
`a right to register; if the Court concludes that the defendant
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`(applicant) has no right to use its mark,
`register.
`
`it has no right to
`
`In this case, the right to register does not follow the right to use. While Knoll has
`
`the right to use the word "Barcelona" to describe the furniture designed by Mies van der
`
`Rohe, it does not have the right to register "Barcelona" as a trademark. "Barcelona" is
`
`the generic term used to describe the furniture designed by Mies van der Rohe. Two
`
`primary reasons for not registering generic terms and other descriptive terms without a
`
`showing of secondary meaning are:
`
`(1)
`
`the owner of a product design from
`to prevent
`inhibiting competition; and,
`
`(2)
`
`c
`
`to maintain the public's freedom to use public domain
`designs free from harassing infringements suits such
`as the ones filed by Knoll.
`
`In re Abcor Development Corp., 588 F.2d 811, 813, 200 U.S.P.Q. 215, 217 (C.C.P.A.
`
`1978). Thus, it is incumbent upon the Board to permit this case to go forward so that it
`
`may correct the trademark register.
`
`B.
`
`Knoll's Inconsistent Positions In Its
`Motion To Dismiss Casprini's
`Declaratory Judgment Action And Its
`Motion To Suspend Proceedings.
`
`in its motion to suspend this cancellation proceeding, Knoll asserted that Naos is
`
`"controlled subsidiary" of Casprini,
`
`the plaintiff
`
`in a Declaratory Judgment Action
`
`challenging the validity of Knoll's trade dress claim in the design of the Barcelona
`
`
`
`NAOS, Srl V. Knoll, Inc.; Cancellation No. 92044012
`
`furniture collection.
`
`(Knoll's Memorandum, p. 7).” Knoll argued that because Casprini
`
`controls Naos, this cancellation proceeding should be suspended pending the Casprini
`
`Declaratory Judgment Action.
`
`Taking a contrary position with the federal court,
`
`however, Knoll filed a motion to dismiss the Casprini Declaratory Judgment on the
`
`ground that a parent corporation and its subsidiaries are separate entities under the law
`
`and,
`
`therefore:
`
`"Casprini has no objectively reasonable apprehension of
`
`liability
`
`sufficient for it to commence its declaratory judgment action against Knoll."15
`
`In the
`
`federal court action, Knoll specifically argued that the Casprini Declaratory Judgment
`
`Action should be dismissed because Casprini and Naos are separate legal entities.
`
`Accordingly, Knoll has adopted inconsistent positions designed to mislead both the
`
`Board and the federal court in hoping to gain an unfair advantage in both forums.”
`
`Casprini did not challenge the validity of the "Barcelona" word mark registration
`14
`at issue sub judice.
`
`Knoll's Memorandum Of Law In Support Of its Motion To Dismiss The Complaint
`15
`For Lack Of Subject Matter Jurisdiction, pp. 13 — 14, attached hereto as Exhibit 1.
`
`"Casprini is also apparently unhappy that Knoll has decided to pursue the U.S.
`15
`based retailers of infringing furniture rather than the Italian manufacturers of such
`furniture. Gottlieb Dec., Exhibit E at 13-14. Which infringers Knoll acts against, and
`in what order it acts against them, however, is a matter of Knoll's discretion."
`(Emphasis added). However, based on its Motion to Dismiss the Declaratory Judgment
`Action and its Motion to Suspend the petitions for cancellation, Knoll
`is attempting to
`preclude any ltalian manufacturer from challenging the validity of Knoll's registrations.
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`ll.
`
`ARGUMENT
`
`A.
`
`The Board Should Exercise Its
`
`Discretion And Deny Knol|'s Motion
`To Suspend Proceedings.
`
`Suspension of a proceeding pending the final determination of another
`
`proceeding is completely within the discretion of the Board. Trademark Trial and
`
`Appeal Board Manual of Procedure §510.02 (2”‘’ ed. 2003).
`
`The power to stay
`
`proceedings flows from the power inherent in the Board to schedule disposition of cases
`
`on its own docket. Landis V. North American Co., 299 U.S. 248 254 (1936). Where, as
`
`here, there was ''clear error" committed by the Examiner during the prosecution of the
`
`application that resulted in the federal registration at issue, the Board should embrace
`
`the opportunity to review the Examiner's decision, correct the register and cancel a
`
`registration that should never have been issued.
`
`The primary rationale for the Board's suspension policy is that a court proceeding
`
`is usually broader than that of the Trademark office. This was explained long ago by
`
`Commissioner Leeds in Squirrel Brand Co. v. Barnard Nut Co., /nc., 101 U.S.P.Q. 340,
`
`341 (Com'r Pats. 1954):
`
`their use. Use is a
`in trademarks grow out of
`Rights
`prerequisite to ownership, and use in commerce by the
`owner is a prerequisite to registration. Although the ultimate
`findings of the tribunals of the Patent Office in proceedings
`such as these is
`the right of an applicant
`to register,
`nevertheless there must be a finding of the right to use in
`commerce before that ultimate finding can be made. The
`Court
`in the civil action will necessarily determine this
`preliminary question
`of
`the
`right
`to use,
`and
`that
`determination will form the basis of the ultimate finding of the
`Office.
`
`if the Court concludes that this defendant
`Simply stated,
`(applicant) has the right to use its mark in commerce, it has
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`a right to register; if the Court concludes that the defendant
`(applicant) has no right to use its mark,
`it has no right to
`register.
`
`In this case, the right to register does not follow the right to use. While Knoll
`
`certainly has the right to use the word "Barcelona" to describe furniture designed by
`
`Mies van der Rohe,
`
`it does not have the right to register that product design as a
`
`trademark. "Barcelona" is the generic term used to describe furniture designed by Mies
`
`van der Rohe.
`
`Indeed,
`
`the word "Barcelona" has been used by numerous other
`
`companies, and has been for many decades, to describe such furniture.
`
`Two primary reasons for not registering product designs and other descriptive
`
`terms without a showing of secondary meaning are:
`
`(1)
`
`(2)
`
`the owner of a mark from inhibiting
`to prevent
`competition; and,
`
`to maintain the public's freedom to use descriptive
`words free from harassing infringements suits such as
`the ones filed by Knoll.
`
`In re Abcor Development Corp., 588 F.2d 811, 813, 200 U.S.P.Q. 215, 217 (C.C.P.A.
`
`1978). Thus, it is incumbent upon the Board to permit this case to go fon/vard so that it
`
`may correct a clear Trademark Office error.
`
`B.
`
`Knoll Has Adopted Inconsistent
`Positions To Mislead The Board And
`
`The Federal District Court.
`
`By adopting inconsistent positions on the same set of facts (i.e., the cancellation
`
`proceedings should be suspended because Naos is controlled by Casprini and the
`
`Declaratory Judgment Action should be dismissed because Casprini and Naos are
`
`separate legal entities), Knoll arguably seeks to mislead both tribunals to gain an unfair
`
`
`
`NAOS, Srl v. Knoll, Inc.; Cancellation No. 92044012
`
`litigation result (i.e., suspend the cancellation proceedings and dismiss the Declaratory
`
`Judgment Action, thereby effectively preventing Naos and Casprini from challenging the
`
`validity of Kno||'s registrations). Kno|l's actions create the problems that are sometimes
`
`resolved under the doctrine of "judicial estoppel".
`
`Judicial estoppel prevents a party from asserting a claim in legal proceeding that
`
`is inconsistent with a claim taken by it in a previous proceeding." The policy underlying
`
`judicial estoppel is protection of the integrity of the judicial process against litigants who
`
`"play fast and loose with the courts.'”8
`
`The Supreme Court noted that "[t]he
`
`circumstances under which judicial estoppel may appropriately be invoked are probably
`
`not reducible to any general formulation of princip|e."19 Therefore, there is no inflexible
`
`list of prerequisites or formula for determining the applicability of judicial estoppel.”
`
`"Absent any good explanation, a party should not be allowed to gain an advantage by
`
`litigation on one theory, and then seek an inconsistent advantage by pursuing an
`
`incompatible theory."21
`
`New Hampshire v. Maine, 532 u.s. 742, 749 (2001); 18 Moore's Federal Practice ‘
`‘7
`gg §133.30 (3"’ ed. 2004).
`
`Data General Corporation v. GSA, 78 F.3d 1556, 1565 (Fed. Cir. 1996); Boston
`18
`Chicken Inc. v. Boston Pizza International lnc., 53 U.S.P.Q.2d 1053, 1055 (T.T.A.B.
`1999).
`
`‘9
`
`2°
`
`New Hampshire v. Maine, 532 u.s. 742, 750 (2001).
`
`New Hampshire v. Maine, 532 u.s. 742, 751 (2001).
`
`18B Wright, Miller & Cooper, Federal Practice and Procedure 2d §4477, p. 553
`21
`(2”‘‘ ed. 2004).
`
`-10-
`
`
`
`NAOS, Srl v. Knoll, lnc.; Cancellation No. 92044012
`
`Ill.
`
`CONCLUSION
`
`Adopting inconsistent positions before the Board and the district court now
`
`seems characteristic of Knoll's lack of candor with the Trademark Office. See Section I
`
`supra. By adopting a tactic of adversarial inconsistency, Knoll victimizes the Board by
`
`persuading it to suspend the cancellation proceeding and victimizes the district court by
`
`persuading it to dismiss the Declaratory Judgment Action.
`
`Knoll seeks to use its improperly obtained federal registration to "whipsaw" both
`
`the Board and a federal court. Knoll argues to the court that the federal registration
`
`issued by the Trademark Office should carry its burden of proof in the federal court on
`
`the issue of trademark validity. Knoll then argues to the Trademark Office that the latter
`
`should "stay" its registration review because the federal court has the registration before
`
`it in an infringement case. Kno||'s imaginative approach freezes, in practical effect, the
`
`actions of both judicial bodies. Such a strategy should not be allowed to succeed.
`
`For the preceding reasons, Naos respectfully requests that Kno||'s motion to
`
`suspend proceedings be denied.
`
`Date: February 8, 2005
`
`By:
`
`NAOS, S.R.L.
`
`/Marc A. Bergsmanl
`Samuel D. Littlepage, Esquire
`Marc A. Bergsman, Esquire
`Nicole M. Meyer, Esquire
`DICKINSON WRIGHT PLLC
`
`1901 "L" Street, N.W., Suite 800
`Washington, D.C. 20036-3506
`Tel:
`(202) 659-6944
`Fax:
`(202) 659-1559
`Email: MBERGSMAN@D|CK|NSONWRlGHT.COM
`
`Attorneys for Petitioner
`
`-11-
`
`
`
`CERTIFICATE OF SERVICE
`
`I, HEREBY CERTIFY that on this
`
`9th
`
`day of February, 2005, a true and
`
`correct copy of the foregoing Petitioner's Opposition To Registrant's Motion To
`
`Suspend was served via U.S. first-class mail, postage prepaid mail upon:
`
`George Gottlieb, Esquire
`GOTTLIEB, RACKMAN, AND REISMAN, P.C.
`270 Madison Avenue
`
`New York, New York 10016-0601
`
`/Marc A. Bergsmanl
`
`DC 71310-1 99907
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF NEW YORK
`
`Plaintiff,
`
`CASPRINI GRUPPO INDUSTRIAL
`S.P.A.,
`'
`
`KNOLL, INC., Defendant.
`
`Civil Action No. 04 CV 9787 (DLC)
`ECF CASE
`
`DEFENDANT’S MEMORANDUM OF LAW IN SUPPORT OF ITS MOTION TO
`DISMISS THE COMPLAINT FOR LACK OF SUBJECT MATTER JURISDICTION
`
`GOTTLIEB, RACKMAN & REISMAN, P.C.
`George Gottlieb
`Barry A. Cooper
`Marc P. Misthal
`
`270 Madison Avenue
`
`New York, New York 10016
`(212) 684-3900
`
`
`
`
`
`INTRODUCTION .
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`TABLE OF CONTENTS
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`1
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`1
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`THE PARTIES .
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`. 2
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`THE POSTURE OF THE LITIGATION .
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`THE RELEVANT ALLEGATIONS OF THE
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`. 4
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`DECLARATORY JUDGMENT COMPLAINT .
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`. 7
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`ARGUMENT .
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`I.
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`THE STANDARD FOR ESTABLISHING
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`SUBJECT MATTER JURISDICTION .
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`II.
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`THERE IS NO “ACTUAL CASE OR CONTROVERSY” .
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`A.
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`Casprini Does Not Have A Real And
`Reasonable Apprehension Of Liability .
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`B.
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`Casprini Has Not Undertaken Activities Which
`Bring It Into Conflict With KnoII’s U.S. Trademark
`Rights .
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`. 14
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`III.
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`KNOLL WOULD BE UNABLE TO ASSERT CLAIMS
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`BASED ON CASPRINI’S ITALIAN ACTIVITIES .
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`The Lanhan Act Does Not Apply To
`Casprini’s Extraterritorial Acts .
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`1.
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`Casprini’s Conduct Does Not Have A
`Substantial Effect on United States
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`Commerce .
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`. 19
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`Casprini Is Not A United States Citizen .
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`Casprini Has Failed To Demonstrate
`That There Is No Conflict With Italian Law .
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`. 19
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`2.
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`. 20
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`Balancing Of The Vanity Fair Factors Weighs
`Against Extraterritorial Application Of The
`Lanham Act
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`IV.
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`AS A MATTER OF DISCRETION, THE COMPLAINT
`SHOULD BE DISMISSED .
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`CONCLUSION .
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`. 25
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`
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`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Aerogroup International, Inc. v. Marlboro Footworks, Ltd.,
`955 F. Supp. 220 (S.D.N.Y. 1997) ......................................... .. 15, 16, 17, 19, 20, 21, 22
`
`American Pioneer Tours, Inc. v. Suntrek Tours, Ltd.,
`46 U.S.P.Q. 2d 1779 (S.D.N.Y. 1998) ......................................................... .. 7, 8, 12, 15
`
`Apotex, Inc. v. Pfizer, inc., 2004 U.S. Dist. LEXIS 26232
`(S.D.N.Y. Dec. 30, 2004) ............................................................................................. .. 7
`
`Atlantic Richfield Co. v. Arco Globus International Co., inc.,
`150 F.3d 189 (2d Cir. 1998)
`.................................................................... ..16,17,18,19
`
`Bausch & Lomb Inc. v Ciba Corp., 39 F. Supp. 2d 271
`(W.D.N.Y. 1999) .................................................................................................... .. 9, 22
`
`Buti v. lmpressa Perosa, S.r.l., 139 F.3d 98 (2d Cir. 1998) ....................................... .. 15
`
`Cargiil, Inc. v. Sears Petroleum & Transport Corp., 2002 U.S. Dist.
`LEXIS 20714 (S.D.N.Y. Oct. 25, 2002) ...................................................................... .. 11
`
`Carte Blanche (Singapore) Pte., Ltd. v. Diners Club International, inc.,
`2 F.3d 24 (2d Cir. 1993) ............................................................................................. .. 13
`
`Giro v. Banco Espanol de Credito, S.A., 1999 U.S. Dist. LEXIS 9673
`(S.D.N.Y. June 25, 1999) ........................................................................................... .. 18
`
`Kos Pharmaceutical, Inc. v. Barr Laboratories, inc., 242 F. Supp. 2d 311
`(S.D.N.Y. 2003) ................................................................................................... .. 10, 11
`
`Lex Computer & Management Corp. v. CBS inc., 684 F. Supp. 811
`(S.D.N.Y. 1988) ......................................................................................................... .. 13
`
`Liberty Mutual Fire Insurance Co. v. Travelers Indemnity Co.,
`2004 U.S. Dist. LEXIS 19920 (W.D.N.Y. Sept. 26, 2004) ........................................ .. 7, 8
`
`Mastercard International Inc. v. Lexcel Solutions, inc.,
`2004 U.S. Dist. LEXIS 10906 (S.D.N.Y. June 18,2004) ........................................ .. 9, 10
`
`Minds-Eye-View, Inc. v. Interactive Pictures Corp.,
`58 F. Supp. 2d 5 (N.D.N.Y. 1999) .............................................................................. .. 11
`
`Mobil Oil Corp. v. Advanced Environmental
`Recycling Technology, inc., 26 U.S.P.Q. 2d 1238 (D.Del. 1992) ............................... .. 11
`
`
`
`Multistate Legal Studies, Inc. v. Marino, 41 U.S.P.Q. 2d 1886
`(C.D. Cal. 1996) ......................................................................................................... .. 23
`
`_
`National Union Fire Insurance Co. v. Hicks, Muse, Tate & Furst, lnc.,
`2002 U.S. Dist. LEXIS 10672 (S.D.N.Y. June 14, 2002) ............................................ .. 13
`
`North South Finance Corp. v. A|—Turki, 100 F.3d 1046 (2d Cir. 1996) ....................... .. 18
`
`O Zon Inc. v. Charles, 272 F. Supp. 2d 307 (S.D.N.Y. 2003)
`
`............................... .. 8, 15
`
`Inc. v. GPAC, Inc.,
`Performance Abatement Services,
`17 U.S.P.Q. 2d 1561 (W.D.N.C. 1990) ........................................................................ .. 9
`
`Progressive Apparel Group, Inc. v. Anheuser-Bush, |nc.,
`38 U.S.P.Q. 2d 1057 (S.D.N.Y. 1996) ................................................................... .. 7, 12
`
`Space Imaging Eur., Ltd. v. Space Imaging, L.P.,
`1999 U.S. Dist. LEXIS 10898 (S.D.N.Y. July 15, 1999) ................................... .. 7, 18, 19
`
`Starter Corp., Inc. v. Converse, Inc., 84 F.3d 592 (2d Cir. 1996) ..................... .. 8, 14, 22
`
`Steele v. Bulova Watch Co., 344 U.S. 280, 97 L. Ed. 319,
`S. Ct. 252 (1952) ................................................................................................. .. 16,17
`
`Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733 (2d Cir. 1994) .......................... .. 16, 20, 21
`
`TorPharm, Inc. v. Pfizer, |nc., 2004 U.S. Dist. LEXIS 11930
`(D. Del. June 28, 2004) .................................................................................. .. 11, 12, 24
`
`Total Plan Corp. v. Colborne, 14 F.3d 824 (2d Cir. 1994) .......................................... .. 21
`
`Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633 (2d Cir.),
`cert. denied, 352 U.S. 871, 1 L.Ed.2d 76, 77 S. Ct. 96 (1956) ................. .. 16, 17, 20,21
`
`Volkswagen of America, Inc. v. Engelhard Minerals & Chemical Corp.,
`401 F. Supp. 1210 (S.D.N.Y. 1975) ........................................................................... .. 14
`
`Volkswagenwerk Aktiengesellschaft v. Beech Aircraft Corp.,
`751 F.2d 117 (2d Cir. 1984) ....................................................................................... .. 13
`
`Windsurfing International Inc. v. AMF lnc., 828 F.2d 755 (Fed. Cir. 1987) ................ .. 14
`
`FEDERAL STATUTES
`
`15 U.S.C.§1127 ...................................................................................................... .. 15
`
`
`
`19 C.F.R. §§ 133.21, 133.43, 171.11 and 171.52 ...................................................... .. 12
`
`Fed. R. Civ. P. 12 (b)(1) ............................................................................................... .. 1
`
`
`
`Introduction
`
`Defendant Knoll, Inc. (“Kno|l") respectfully submits this Memorandum in support
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`of its Motion to Dismiss the Declaratory Judgment Complaint filed by Plaintiff Casprini
`
`Gruppo lndustriale S.p.a. (“Casprini") for lack of subject matterjurisdiction, pursuant to
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`Fed. R. Civ. P. 12 (b)(1). The Declaration of George Gottlieb is also submitted in
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`support of this Motion to Dismiss.
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`The Declaratory Judgment Complaint should be dismissed since there is no
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`justiciable case or controversy between Casprini and Knoll. Casprini’s activities take
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`place solely in Italy. Kno||’s assertion of its U.S. trademark rights in furniture designs
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`has been directed exclusively against companies located here, not abroad. Not only is
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`Italy the situs of Casprini’s activities, but the manufacture of the complete infringing
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`furniture productis not being carried out by Casprini (who only makes frames); rather it
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`is being carried out by Italian companies allegedly related to Casprini. Because of the
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`remote and attenuated nature of Casprini’s involvement in the issues at hand, Casprini
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`does not have an objectively reasonable apprehension of suit sufficient for it to seek
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`declaratory relief.
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`The Parties
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`Knoll, a Delaware corporation, is a designer and manufacturer of branded
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`furniture. Since its founding in 1938, Knoll has been recognized as a design leader in
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`the areas of furniture and related products. Kno||'s products are widely known and
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`promoted, and have been exhibited in major art museums.
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`For many years, Knoll has marketed furniture designed by the renowned
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`architect Ludwig Mies van der Rohe, including the Barcelona Chair, Barcelona Stool,
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`1
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`
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`Barcelona Couch, Barcelona Table and Flat Brno Chair (collectively the “Barcelona
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`Collection”). Knoll has obtained trademark registrations for these furniture designs from
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`the U.S. Patent and Trademark Office, namely Reg. Nos. 2,893,025; 2,894,977;
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`2,894,980; 2,894,979; and 2,894,978, and also owns a trademark registration for the
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`term BARCELONA, Reg. No. 772,313. Gottlieb Dec., Exhibit A.
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`Plaintiff Casprini claims it is a “societa per aziona” organized under the laws of
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`Italy and located in Cavriglia (Aresso), Italy. Complaint, 1] 2.‘ Among the allegations in
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`Casprini’s Declaratory Judgment Complaint is the allegation that “through its controlled
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`subsidiaries” it has sold modern furniture, including the Barcelona Chair, Barcelona
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`Stool, Barcelona Couch, Barcelona Table and Flat Brno Chair. Complaint, 1) 10.
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`The Posture Of The Litigation
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`This multi-party dispute started on October 25, 2004, when Knoll sent notice
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`letters to Palazzetti Express, Inc. (“Pa|azzetti Express”), an entity located in
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`Connecticut, and to Arthur Gordon Associates (“Gordon”), a New York company,
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`demanding that both pf these entities stop selling infringing copies of the Barcelona
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`Collection. Gottlieb Dec., 11 4.
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`Rather than respond to the letter addressed to it, Palazzetti Express and Sergio
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`Palazzetti (apparently an owner of Palazzetti Express) instead filed a declaratory
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`judgment action against Knoll in the District of Connecticut, Civil Action No. 04 CV
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`1862.2 Counsel for Palazzetti Express and Sergio Palazzetti forwarded a “courtesy”
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`‘As used herein, “Complaint" refers to the Declaratory Judgment Complaint filed by Casprini on
`December 13, 2004.
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`2Knoll has moved to dismiss the Connecticut action on the grounds that it was an anticipatory
`filing. Kno||’s motion is sub judice. Gottlieb Dec., 1] 8.
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`2
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`
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`copy of the Complaint in the Connecticut. action to Knol|'s counsel, along with a letter
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`advising that they also represented Gordon and asking if Knoll would consent to
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`Gordon's intervention in the Connecticut action. Gottlieb Dec., 11 5.
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`Knoll then filed its own coercive actions in the Southern District of New York
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`against Palazzetti Express and against Gordon (Civil Action Nos. 04 CV 8801 and 04
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`CV 8800, respectively, both of which are currently before this Court). Both of these
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`actions raise trademark infringement and related claims under the Lanham Act and New
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`York State Law, which all relate to activities of Palazzetti Express and Gordon that
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`infringe Kno|l’s registered trademarks for its Barcelona Collection? Gottlieb Dec., 11 6.
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`In further correspondence, counsel for Palazzetti Express and Gordon asked
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`Knoll to consent to Casprini’s intervention in the Palazzetti Express and Gordon cases
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`in New York. Knoll declined to agree. This was the first time that Knoll learned of
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`Casprini’s alleged involvement in the dispute, namely that Casprini’s subsidiaries were
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`involved in supplying Palazzetti Express and Gordon with the infringing products.
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`In
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`declining the “offer” of Casprini’s intervention, Knoll simply refused to consent to
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`Casprini’s intervention and did not threaten or in any way assert rights against Casprini.
`
`Gottlieb Dec., 11
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