Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA25450
`
`Filing date3
`
`02/09/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`i92044014
`Plaintiff
`§NAOSSRL
`
`Proceeding
`
`Party
`
`7 M
`
`1 Z
`
`ARC A. BERGSMAN
`Correspondence DICKINSON WRIGHT PLLC
`Address
`3 1901 L STREET, N.W., SUITE 800
`WASHINGTON, DC 20036-3506
`
`Submission
`Filer's Name
`
`Opposition to Registrant's Motion To Suspend
`Marc A. Bergsman
`
`]Date
`Attachments
`
`loz/09/2005
`opposition barcelona chair.pdf ( 55 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NAOS Srl,
`
`Petitioner,
`
`v.
`
`KNOLL, |NC.,
`
`Registrant.
`
`\/\/\./\/\/\.a\a\y\y\y\/
`
`Cancellation No. 92044014
`
`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—styled petition for cancellation and thereby cancel a
`
`registration that should never have been issued but for a clear Trademark Office
`
`mistake. Both the quality and quantity of evidence filed during the prosecution of the
`
`Knoll application was woefully insufficient
`
`to establish secondary meaning.
`
`Knoll,
`
`armed with its improperly issued registration, has subsequently embarked on a program
`
`of harassing competitors and using its wrongfully obtained registration to unfairly
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044014
`
`compete in the market for classic furniture.1 Furniture retailers, furniture manufacturers,
`
`and the furniture buying public benefit if the Board uses its expertise and specialized
`
`knowledge to review Knoll's scant evidence of purported secondary meaning in
`
`connection with the product configuration at issue in this proceeding. 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.
`
`I.
`
`FACTS
`
`On October 22, 2003, Knoll filed an application to register the configuration of the
`
`Barcelona chair. The Barcelona chair was designed by Ludwig Mies van der Rohe for
`
`the German Pavilion at
`
`the 1929 Barcelona International Exposition?
`
`To claim
`
`secondary meaning, Knoll
`
`filed the Declarations of Carl G. Magnusson, Knoll's
`
`Executive Vice President and Director of Design, and Terence Riley, the Philip Johnson
`
`Chief Curator of Architecture and Design of The Museum of Modern Art (hereinafter
`
`"MoMa"), and accompanying exhibits.3 Despite the fact that there is a heavy evidentiary
`
`legitimate competition by filing meritless
`is using its registration to chill
`Knoll
`1
`lawsuits and threatening competitors. Gottlieb Declaration, Exhibits B, E, and F
`(Exhibit 2).
`
`2
`
`the Magnusson Declaration is part of the prosecution
`Magnusson Dec., 114.
`history of Registration No. 2,893,025.
`
`MoMa receives a royalty for every one of the Barcelona chairs sold by
`3
`(Riley Dec., Exhibit C, "Chair of Chairs", New York Newsday, February 20,
`Knoll.
`1986, p. 2, column 2, second full paragraph).
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044014
`
`burden for establishing secondary meaning for product configurations,4 the application
`
`was inexplicably approved for publication (and subsequently registered).
`
`A review of the Magnusson and Riley Declarations demonstrates that
`
`the
`
`evidence of secondary meaning was clearly insufficient to properly warrant registration
`
`of the product configuration at issue under Section 2(f) of the Lanham Act, 15 U.S.C.
`
`§2(f)-
`
`A.
`
`The Magnusson Declaration
`
`At the outset, it should be noted that since Carl G. Magnusson is the Executive
`
`Vice President and Director of Knoll, Inc. his bias is evident and that the opinions in his
`
`Declaration should be discounted accordingly.
`
`See, In re Ennco Display Systems, Inc., 56 U.S.P.Q.2d 1279, 1283-84 (T.T.A.B.
`4
`2000), citing,
`In re Sandburg & Sikorski Diamond Corp., 42 U.S.P.Q.2d 1544. 1548
`(T.T.A.B. 1996) (''In view of the ordinary nature of these designs and the common use of
`gems in descending order of size on rings, applicant has a heavy burden to establish
`that its product configuration designs have acquired distinctiveness and would not be
`regarded as an ordinary arrangement of gems."); and Yamaha International Corp. v.
`Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 32 U.S.P.Q.2d 1001, 1008 (Fed.Cir.
`1998) (evidence required to show acquired distinctiveness is directly proportional to the
`degree of nondistinctiveness of the mark at issue). The Supreme Court noted that
`product designs invariably serve purposes other than source identification and that
`consumers are aware that even the most unusual product design is not intended to
`identify source, but to render the product itself more useful. Wal-Mart Stores, Inc. v.
`Samara Brothers,
`Inc., 529 U.S. 205, 213-214, 54 U.S.P.Q.2d 1065, 1069 (2000).
`Since the mark at issue is a chair design, Knoll had a heavy evidentiary burden in
`seeking registration of that design under Section 2(f) of the Lanham Act.
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`NAOS Srl v. Knoll, Inc. ; Cancellation No. 92044014
`
`4
`
`5
`
`"The public has come to
`refer to this chair as the
`
`'Barcelona Chair'."
`
`"By an agreement dated
`November 1, 1965, Mies
`van der Rohe assigned all
`rights, title and interest in
`and to the design of the
`Barcelona chair to Knoll
`
`Associates, lnc."
`
`The public reference to the Barcelona
`chair is derived from the fact that the
`
`1929
`the
`chair was designed for
`Barcelona International Exposition. It is
`not a reference to source.
`
`Even Magnusson admits the public
`refers to the chair as the Barcelona
`
`chair, not the "Knoll chair".
`
`The purported agreement was not
`available for review because it was not
`
`attached to the Declaration.
`
`Because there were no patents or
`copyrights
`on
`the
`design
`of
`the
`Barcelona chair, Mies van der Rohe
`did not
`transfer any rights Knoll
`Associates, Inc. 5 This explains why
`Knoll did not include the Agreement the
`Magnusson Declaration.
`
`5
`
`"The design of the Barcelona Chair is not subject to any patent protection or
`application." (Magnusson Dec., 1117). Likewise, since the Barcelona chair is a "useful
`article",
`it was never the subject of copyright protection. The Copyright Act excludes
`from copyright protection any "useful article", defining such an article as "having an
`intrinsic utilitarian function that is not merely to portray the appearance of the article to
`convey information." 17 U.S.C. §101. Superior Form Builders, Inc. v. Chase Taxidermy
`Supply C0,, 74 F.3d 488, 493 (4”‘ Cir. 1996) ("Thus, the industrial design of a unique,
`aesthetically pleasing chair cannot be separated from the chair's utilitarian function and,
`therefore is not subject
`to copyright protection."); Magnussen Furniture Inc.
`v.
`Collezione Europa USA Inc., 43 U.S.P.Q.2d 1218 (4"‘ Cir. 1997) (iron tables denied
`copyright protection because they are "useful articles").
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`6
`
`"Knoll and its predecessors Magnusson did not say that Knoll had
`in interest as to the rights
`made substantially exclusive use of the
`involved herein have been
`Barcelona Chair.
`
`continuously manufacturing,
`Magnusson knew that Knoll had not
`displaying, promoting and
`selling the Barcelona Chair made substantially exclusive use of the
`since at least as early as
`Barcelona chair.
`in a protest
`letter
`January 1, 1954."
`dated May
`18,
`2000,
`to
`Sergio
`Palazzetti, one of the parties recently
`sued by Knoll, Patrick Milberger, Vice
`President, General Counsel,
`and
`Secretary of Knoll, only objected to
`Palazzetti's use of the BARCELONA
`
`word mark even though the protest
`letter included a copy of a Palazzetti
`advertisement displaying the Barcelona
`chair and couch. Knoll did not object to
`Palazzetti's importing, sale, offering for
`sale,
`advertising
`or
`distribution
`of
`reproductions of the Barcelona chair
`and couch.5 Thus, at the time Knoll
`filed its application, it knew that its use
`of the Barcelona chair design was not
`substantially exclusive.
`
`7
`Exhibits A-C
`
`Knoll catalogs from 1965,
`1979, and 2003
`
`The catalogs do not show that Knoll
`made substantially exclusive use of the
`Barcelona chair.
`
`The catalogs do not demonstrate how
`consumers
`perceive
`the Barcelona
`chair
`(i.e.,
`pleasing
`design
`or
`trademark).
`
`See Gottlieb Dec., Exhibit E, Paragraph Nos. 107 and 108 and Exhibits 2 and 3
`6
`thereto. See also, Riley Dec., Exhibit C, "Chair of Chairs", New York Newsday,
`February 20, 1986 ("[t]he Mies and other modern furniture now entering mainstream
`homes tends to be what he [Jeffery Osborne, Knoll's Vice President for Design]
`characterizes as knock—offs." Knoll knew about other manufacturers and retailers who
`were reaching market segments in which Knoll had no interest. Thus, from at least as
`early as 1986, Knoll permitted a market to develop in reproductions of the Barcelona
`chair before making an attempt to stop it eighteen (18) years later.
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`8
`Exhibit D
`
`Five "representative"
`advertisements
`
`Five advertisements are insufficient to
`demonstrate secondary meaning. Of
`the five advertisements, one is
`in
`German,
`not English,
`and one
`is
`illegible.
`
`is no information
`There
`advertising expenditures.
`
`regarding
`
`regarding
`is no information
`There
`the
`advertisements were
`where
`distributed.
`
`There is no information regarding how
`long
`the
`advertisements
`were
`distributed.
`
`There is no information regarding how
`many people saw the advertisements.7
`
`Knoll did not submit enough advertising to satisfy the requirements of the
`7
`Trademark Office for secondary meaning: "Large scale expenditures in promoting and
`advertising goods and services under a particular mark are significant to indicate the
`extent to which a mark has been used. However, proof of an expensive and successful
`advertising campaign is not in itself enough to prove secondary meaning .
`.
`. The
`ultimate test
`in determining whether a designation has acquired distinctiveness is
`applicant's success, rather than its efforts,
`in educating the public to associate the
`proposed mark with a single source." Trademark Manual of Examining Procedure
`§1212.06(b). According to Professor McCarthy, the more advertising, the greater the
`exposure of buyers to the symbol; the greater the exposure, the greater the likelihood
`that the buyers will associate the symbol with one seller. 2 McCarthy On Trademarks
`and Unfair Competition §15.51 (4”‘ ed. 2004).
`Under any standard,
`five
`(5)
`advertisements (four (4) in English and without information of advertising expenditures)
`were not sufficient to permit the Examining Attorney to properly draw an inference of
`secondary meaning.
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`9
`
`10
`
`Knoll sold an average of 560 chairs per
`year, a de minis number.
`
`"From 1998 through June
`2003, Knoll, Inc. sold in
`excess or 2,800 units of the
`the
`reproduction of
`sold its
`Barcelona Chair, resulting in Knoll
`sales in excess of $8.5
`Barcelona chair at an average cost of
`million."
`$3,036. At $3,036 per chair, Knoll
`is
`marketing to a niche market.8
`
`Knoll failed to provide any information
`about market share.
`Knoll may not
`even be the largest
`retailer of
`the
`Barcelona
`chair.
`Thus,
`if buyers
`associate the design of the chair with a
`single source, it may not be with Knoll.
`
`The information regarding sales was
`provided in a vacuum and should have
`been given no consideration.9
`
`is a museum
`"The Barcelona Chair is part The Barcelona chair
`of the collection of
`exhibit because it
`is a classic design.
`numerous museums around Knoll itself states that the design came
`the world, and has been
`"to epitomize Modern Architecture".1°
`featured in a number of
`
`museum exhibitions."
`
`say that Knoll
`Magnusson did not
`products are museum pieces. He said
`the Barcelona chair is a museum piece.
`
`"Knoll's customers tend to be corporations, restaurants, hotels and the very rich —
`8
`people with money to pay the $4,648 list price for a Barcelona chair."
`(Riley Dec.,
`Exhibit C, "Chair of Chairs", New York Newsday, February 20, 1986). According to
`Magnusson, the Barcelona chairs retail for $7,000-$8,000. Magnusson Dec., 1116.
`
`According to Professor McCarthy, the greater a company's sales, the greater the
`9
`number of people who have been exposed to the symbol and the greater the number of
`people who may associate the symbol with a single source. However, where, as here,
`sales are minimal,
`it
`is not possible to achieve secondary meaning in a descriptive
`symbol. 2 McCarthy On Trademarks and Unfair Competition §15.49 (4”‘ ed. 2004).
`
`1°
`
`Magnusson Dec., Ex. D, the Knoll Studio advertisement.
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044014
`
`Knoll has agreed to pay MoMa a
`royalty for every Barcelona chair
`it
`sells. 1 MoMa has a vested interest in
`
`promoting its licensee.
`
`The museums exhibited '_'the work of
`Mies van der Rohe", not Knoll.
`
`12
`
`"The Museum of Modern Art
`
`13
`
`always identifies Mies van
`der Rohe as the designer of
`the Barcelona Chair and
`
`Knoll, Inc. as the source
`and manufacturer of the
`
`Barcelona Chair."
`
`"ln 2001, the Museum of
`Modern Art and the Whitney
`Museum of American Art
`
`hosted concurrent
`
`exhibitions showcasing the
`work of Mies van der Rohe.
`
`The Barcelona Chair was
`
`featured in the Museum of
`
`Modern Art's exhibition."
`
`14
`
`Exhibit E
`
`The Dictionary of 20"‘
`Century Design -- "The
`Barcelona chair has
`
`become known as a modern
`
`The Barcelona chair is identified as a
`
`classic which is manufactured by Knoll,
`but not exclusively manufactured or
`sold by Knoll.
`
`CLASSIC, maintained in
`production by KNOLL
`|NTERNATlONAL".
`
`The Barcelona chair is identified as a
`
`classic, not Knoll.
`
`14
`
`Exhibit F
`
`Architectural Graphic
`Standards
`
`There is no reference to the
`Barcelona chair in the
`
`application file
`
`Riley Dec., Exhibit C, "Chair of Chairs", New York Newsday, February 20, 1986,
`11
`p. 2, column 2, second full paragraph. The author of the article questioned MoMa's
`objectivity under these circumstances:
`''It is unusual for a museum to receive royalties
`on work it can promote through exhibitions."
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`14
`
`Exhibit G
`
`C20th Furniture
`
`references Knoll as a
`The excerpt
`manufacturer, but not
`the exclusive
`. Mies modified thejoints manufacturer, of the Barcelona chair.
`.
`when Knoll started to
`
`produce its stainless steel
`(remainder is illegib|e)."
`
`14
`
`Exhibit H
`
`A Century of Design
`
`The article associates the Barcelona
`
`chair with Mies van der Rohe, not Knoll
`("His famous 'Barcelona' chair").
`
`A legend by a photograph:
`"The interior of the German
`
`Pavilion (below) designed
`by Mies and built for the
`1929 Barcelona
`
`International Exhibition. His
`
`famous "Barcelona" chair
`
`first gained international
`recognition at this event."
`
`A legend by another
`photograph: "Like many of
`Mies's chair designs, it is
`now manufactured by Knoll
`Associates."
`
`14
`
`Exhibit I
`
`Chairs
`
`The article associates the Barcelona
`
`chair with Mies van der Rohe.
`
`is merely credited with having
`Knoll
`manufactured the chair displayed in the
`photograph.
`
`"Mies van der Rohe's
`
`'Barce|ona' chair is named
`
`after the International
`
`Exposition held in that city
`in 1929, where his pavilion
`for the German government
`instantly gained world
`recognition as one of the
`great achievements of
`modern architecture."
`
`There is a photograph of a
`Barcelona chair. The article
`
`notes that the chair in the
`
`photograph was
`manufactured by Knoll.
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`14
`
`Exhibit J
`
`The Modern Chair
`
`The excerpt is entitled:
`"Barcelona chair
`
`Mies van der Rohe
`
`Germany, 1929"
`
`14
`
`Exhibit K
`
`An unidentified list of
`
`products and
`manufacturers.
`
`14
`
`Exhibit L
`
`Modern Furnishings For
`The Home
`
`There is a photograph of a
`Barcelona chair. Knoll
`
`Associates is credited with
`
`being the manufacturer of
`that particular chair.
`
`14
`
`The Chair
`
`Exhibit M
`
`There is an excerpt about
`Mies van der Rohe. The
`
`article discusses how Mies
`
`van der Rohe designed the
`Barcelona chair. There is a
`
`photograph of the chair.
`Knoll is credited with
`
`manufacturing that
`particular chair.
`
`The excerpt associates the Barcelona
`chair with Mies van der Rohe, not
`Knoll.
`
`There is no reference to Knoll
`
`in this
`
`excerpt.
`
`in which any
`There is no context
`conclusions can be drawn.
`
`Knoll
`
`is identified as a manufacturer of
`
`but
`chair,
`the Barcelona
`exclusive
`manufacturer
`
`not
`of
`
`the
`the
`
`Barcelona chair.
`
`The excerpt associates the Barcelona
`chair with Mies van der Rohe.
`It
`
`credits Knoll with
`merely
`manufactured
`the
`particular
`featured in the excerpt.
`
`having
`chair
`
`-10-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`14
`
`A Kenwood stereo
`
`The
`
`advertisement
`
`associates
`
`the
`
`design of the Barcelona chair with Mies
`van der Rohe.
`
`There is nothing in the article which
`touts the design of the Barcelona chair
`as a trademark.
`
`Exhibit N
`
`advertisement featuring
`photographs of a Tizio
`lamp, a Steinway Grand
`Piano, a Concorde jet, a
`Barcelona chair, a
`Montblanc pen, and the
`Sidney Opera House.
`
`The legend underthe
`photograph of the
`Barcelona chair (although
`illegible) appears to read as
`follows: "Mies van der Rohe
`
`.
`
`.
`
`.
`
`.
`
`.
`
`. lnternational."
`
`14
`
`An article from the October
`
`Exhibit 0
`
`16, 1964 issue of the New
`York Herald Tribune
`
`introducing four new
`designs by Mies van der
`Rohe for Knoll's collection.
`
`The headline reads as
`
`follows:
`
`"Four ‘New’ Mies Classics".
`
`The article states the
`
`following:
`"A collection of classic
`
`furniture by architect and
`craftsman Mies van der
`Rohe".
`
`-11-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`14
`
`Exhibit P
`
`An article from the October
`
`16, 1964 New York Times
`
`announcing Kno|l's
`exhibition of Mies van der
`
`The article associates the design of the
`Barcelona chair with Mies van der
`
`Rohe.
`
`Rohe designs at Macy's.
`
`It also referenced Knoll as the ''sole
`
`authorized manufacturer"
`
`of Mies
`
`furniture, not the sole manufacturer.
`
`The headline reads as
`follows:
`
`"Macy's Offers Mies
`Designs for 13‘ Time."
`
`There is a photograph of the
`Barcelona chair with the
`
`following legend: "Mies van
`der Rohe's best known
`
`furniture design is the
`elegant leather and steel
`Barcelona chair made for
`the 1929 exhibition."
`
`The article states that Knoll
`
`is "sole authorized
`
`manufacturer of Mies
`
`furniture in the United
`
`States."
`
`-12-
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`15
`
`"Given the number of works
`
`featuring or referring to the
`Barcelona Chair, it is
`evident and it is my opinion
`that the Barcelona Chair is
`
`well known to the public
`interested in furniture of
`
`modern design and that
`such public continues to
`recognize the Barcelona
`Chair as designed by Mies
`van der Rohe and
`
`manufactured by Knoll, Inc.
`In other words, such public
`has come to identify Knoll,
`Inc. and its predecessors in
`interest as to the rights
`involved herein as the
`
`source of the Barcelona
`
`Chair."
`
`The first problem with Paragraph 15 is
`the Magnusson's obvious bias. He is
`Knoll's Executive Vice President and
`
`he
`
`has
`
`a
`
`vested
`
`interested
`
`in
`
`competition
`eliminating
`Barcelona chair.
`
`for
`
`the
`
`The second problem Paragraph 15 is
`that the works featuring or referring to
`the Barcelona
`chair associate
`the
`
`design with Mies van der Rohe, not
`Knoll.
`
`the
`in
`nothing
`is
`there
`Finally,
`Magnusson Declaration which supports
`the fact that buyers of modern furniture
`recognize the design of the Barcelona
`chair as a trademark.”
`
`B.
`
`The Riley Declaration
`
`Like Magnusson, Terrence Riley is not an objective witness. Riley is the Phillip
`
`Johnson Chief Curator of Architecture and Design of MoMa.” MoMa receives a royalty
`
`for each Barcelona chair sold by knoll.” Thus, Riley ls not an impartial witness.
`
`12
`
`The goal of assessing the evidence of secondary meaning is to ascertain
`whether the consuming public has come to associate the product design at
`issue
`primarily with the producer.
`''In a case of exact reproductions of historical designs, we
`think that such an association presents a high hurdle to a Lanham Act plaintiff." L. &
`J. G. Stickley, Inc. v. Canal Dover Furniture Co., Inc., 79 F.3d 258, 265 (2“° Cir. 1996).
`The evidence in the record sub judice presents a product design that
`is primarily
`recognized as an classic design of Modern Art, not a trademark.
`
`*3
`
`Riley Dec.,1]1.
`
`Riley Dec., Exhibit C, "Chair of Chairs", New York Newsday, February 20, 1986,
`14
`p. 2, column 2, second full paragraph.
`
`-13-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`5
`
`"When the Museum
`exhibits, publishes or
`otherwise refers to the
`Barcelona Chair in its
`
`Knoll pays MoMa a royalty for each
`Barcelona stool
`it sells. MoMa has a
`vested
`interest
`in
`promoting
`its
`licensee.
`
`collection, it identifies Mies
`van der Rohe as the Chair's
`
`designer and Knoll as its
`source and manufacturer."
`
`6
`Exhibit A
`
`One Hundred Great Product The chair is described as the highest
`Designs
`achievement
`in
`craftsmanship
`and
`design (i.e.
`"a status symbol
`in the
`modern idiom" and "pure sculpture).
`in
`other words, an aesthetic symbol, not
`a trademark.
`
`This is an article about the
`Barcelona chair (not the
`Knoll chair) and its design.
`Knoll is credited as being a
`manufacturer of the chair.
`
`"But the chair is what Mies
`
`set out to make it, a status
`symbol in the modern idiom.
`The chair's ingenious visual
`design operates as pure
`sculpture. .
`. It is possible
`though that the Barcelona
`chair is, like much of Mies’
`work the final word in chair
`
`design for this century."
`
`-14-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`The catalog illustrates that there have
`been multiple manufacturers of
`the
`Barcelona chair.
`
`A MoMa catalog is obviously going to
`identify
`its
`licensee
`as
`the
`manufacturer of a product.
`
`6
`Exhibit B
`
`Ludwig Mies van der Rohe:
`Furniture and Furniture
`Drawings for the Design
`Collection of the Mies van
`
`der Rohe Archive
`
`This is a MoMa catalog
`which identifies three
`
`manufacturers for the
`
`Barcelona chair:
`
`1. Berliner Metallgewerbe
`Joseph Muller (1929-
`1930x
`
`2. Bamberg
`Metallwerkstatten
`
`(1931); and,
`
`3. Knoll (1948 to the
`present)
`
`-15-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`6
`Exhibit C
`
`Chair of Chairs", New York
`Newsday, February 20,
`1986.
`
`The association between Mies van der
`Rohe and Knoll
`is legally irrelevant to
`the issue of secondary meaning. An
`association between Mies van der
`
`The subheadline reads as
`
`Rohe and Knoll
`
`is not an association
`
`follows: "Mies van der
`Rohe's Barcelona chair is
`
`between the design of the Barcelona
`chair and Knoll.”
`
`one of the many on display
`at MOMA's retrospective of
`his influential furniture".
`
`Riley points out that the
`article states the following:
`"'[W]hen it comes to
`furniture, Mies has become
`
`synonymous with both
`MoMa and what became
`
`Knoll International, a
`furniture manufacturer."
`
`6
`Exhibit D
`
`MoMa Highlights
`
`This is an excerpt about the
`Barcelona chair. Knoll is
`
`There is nothing in the article which
`touts the design of the Barcelona chair
`as a trademark.
`
`credited with being a
`manufacturer of the
`
`Barcelona chair.
`
`A MoMa publication is obviously going
`to
`identify
`its
`licensee
`as
`the
`manufacturer.
`
`This issue was specifically addressed by the Sixth Circuit in Herman Miller, Inc.
`15
`v. Palazzetti Imports & Exports,
`Inc., 270 F.3d 298 (6"‘ Cir. 2001).
`Knoll must
`demonstrate that when the buying public recognizes the Barcelona chair as a Mies van
`der Rohe design,
`it recognizes that the Barcelona chair comes from one source.
`Evidence associating the Barcelona chair with Mies van der Rohe, and not Knoll, fails to
`indicate that in the mind of the consuming public the furniture is connected with a single
`source.
`Id at 316 n. 7.
`
`-16-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`6
`Exhibit E
`
`Making Choices: A Cycle of There is nothing in the article which
`Twenty-Four Exhibitions At
`touts the design of the Barcelona chair
`The Museum of Modern Art
`as a trademark.
`
`New York (a 2000 MoMa
`catalog).
`
`Displays the Barcelona
`chair and lists Knoll as the
`
`manufacturer.
`
`A MoMa catalog is obviously going to
`identify
`its
`licensee
`as
`the
`manufacturer.
`
`C.
`
`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
`
`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 Knol|.'”6
`
`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.
`
`Knoll's Memorandum Of Law In Support Of its Motion To Dismiss The Complaint
`16
`For Lack Of Subject Matter Jurisdiction, pp. 13-14, attached hereto as Exhibit 1.
`
`-17-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`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."
`
`ll.
`
`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
`
`on its own docket. Landis v. North American C0,, 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):
`
`"Casprini is also apparently unhappy that Knoll has decided to pursue the U.S.
`17
`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 Italian manufacturer from challenging the validity of Knoll's registrations.
`
`-18-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`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
`(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 manufacture and sell the Barcelona table, it does not have the
`
`right to register that product design as a trademark because the design has been in the
`
`public domain and "used" by many others for many decades.
`
`Indeed, since the
`
`Barcelona table is manufactured and sold by numerous other companies, and has been
`
`for many decades, Knoll has not made "substantially exclusive use" of the Barcelona
`
`table design, a fact well—known to both Knoll and the furniture trade.
`
`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 product design from
`to prevent
`inhibiting competition; and,
`
`to maintain the public's freedom to use public domain
`designs free from harassing infringements suits such
`as the ones filed by Knoll.
`
`-19-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`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 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
`
`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 estoppe|".
`
`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."19
`
`The Supreme Court noted that "[t]he
`
`circumstances under which judicial estoppel may appropriately be invoked are probably
`
`New Hampshire v. Maine, 532 U.S. 742, 749 (2001); 18 Moore's Federal Practice
`18
`E §133.3o (3'‘’ ed. 2004).
`
`Data General Corporation v. GSA, 78 F.3d 1556, 1565 (Fed. Cir. 1996); Boston
`19
`Chicken Inc. v. Boston Pizza International
`|nc., 53 U.S.P.Q.2d 1053, 1055 (T.T.A.B.
`1999).
`
`-20-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044014
`
`not reducible to any general formulation of principle."2° 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."22
`
`Ill.
`
`CONCLUSION
`
`Adopting inconsistent positions before the Board and the district court now
`
`seems characteristic of Kno||'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 and secondary meaning. 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 a