Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA25462
`
`Filing date3
`
`02/09/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`i92044024
`Plaintiff
`§NAOSSRL
`
`Proceeding
`
`Party
`
`7 M
`
`1 Z
`
`ARC. A BERGSMAN
`Correspondence DICKINSON WRITHT PLLC
`Address
`3 1901 L STREET, N.W. SUITE 800
`WASHINGTON, DC 20036
`
`Submission
`Filer's Name
`
`Opposition to Registrant's Motion to Suspend
`Marc A. Bergsman
`
`]Date
`Attachments
`
`loz/09/2005
`opposition brno chair.pdf ( 50 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`NAOS Srl,
`
`Petitioner,
`
`Cancellation No. 92044024
`
`\y\zs_/as/\/s2\/\y\;\.4
`
`v.
`
`KNOLL, lNC.,
`
`Registrant.
`
`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. 92044024
`
`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
`
`Brno chair.
`
`In 1928, Ludwig Mies van der Rohe designed the Brno chair for the home of
`
`Grete and Fritz Tugendhat.2 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 burden for establishing secondary meaning for
`
`legitimate competition by filing meritless
`is using its registration to chill
`Knoll
`1
`lawsuits and threatening competitors. Gottlieb Declaration, Exhibits B, E, and F
`(Exhibit2).
`
`Magnusson Dec., 114. The Magnusson Declaration is part of the prosecution
`2
`history of Registration No. 2,894,978.
`
`MoMa receives a royalty for every one of the Brno chairs sold by Knoll.
`3
`(Riley Dec., Exhibit B, "Chair of Chairs", New York Newsday, February 20, 1986, p.2,
`column 2, second full paragraph).
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`product configurations,‘‘ 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.
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`4
`
`"The public has come to
`refer to this chair as the "Flat
`Brno Chair'."
`
`Even Magnusson admits the public
`refers to the chair as the Brno chair,
`not the "Knoll chair".
`
`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)("|n 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.
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`5
`
`The purported agreement was not
`available for review because it was n_ot
`attached to the Declaration.
`
`"By an agreement dated
`November 1, 1965, Mies
`van der Rohe assigned all
`rights, title and interest in
`and to the design of the Flat Because there were no patents or
`Brno Chairto Knoll
`copyrights on the design of the Brno
`Associates, lnc."
`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.
`
`to any patent protection or
`"The design of the Brno Chair is not subject
`5
`application."
`(Magnusson Dec., 1116).
`Likewise, since the Brno 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.
`Co//ezione 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. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`6
`
`"Knoll and its predecessors Magnusson knew that Knoll had not
`in interest as to the rights
`made substantially exclusive use of the
`involved herein have been
`Brno chair.
`In a protest
`letter dated
`continuously manufacturing, May 18, 2000, to Sergio Palazzetti, one
`displaying, promoting and
`of the parties recently sued by Knoll,
`selling the Flat Brno Chair
`Patrick Milberger, Vice
`President,
`since at least as early as
`General Counsel, and Secretary of
`January 1, 1954."
`Knoll, only objected to Palazzetti's use
`of the BARCELONA word mark even
`
`included a
`letter
`though the protest
`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,
`couch, or any other pieces designed by
`Mies van der Rohe. At the time Knoll
`
`filed its application, it knew that its use
`of
`the Brno 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
`Brno chair.
`
`The catalogs do not demonstrate how
`consumers perceive the Brno 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 B, "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 Brno chair
`before making an attempt to stop it eighteen (18) years later.
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`8
`Exhibit D
`
`Knoll advertisement
`
`is not displayed or
`The Brno chair
`promoted as a trademark.7
`
`Knoll did n_ot 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,
`1 advertisement,
`over fifty years, without any information regarding advertising expenditures,
`is not
`sufficient to permit the Examining Attorney to properly draw an inference of secondary
`meaning.
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`9
`
`10
`
`"From 1998 through June
`2003, Knoll, Inc. sold in
`excess or 4,400 units of the
`Flat Brno Chair, resulting in
`sales in excess of $4.6
`million."
`
`Knoll sold an average of 880 Brno
`chairs per year, a de minis number.
`
`reproduction of the Brno
`Knoll sold its
`chair at an average price of $1,045. At
`$1,045 for a dining 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 tables.
`Thus,
`if buyers
`associate the design of the table 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
`
`The Brno chair is a museum exhibit
`"The Flat Brno Chair is part
`because it
`is considered a classic
`of the collection of
`numerous museums around design.”
`the world, and has been
`featured in a number of
`museum exhibitions."
`
`say that Knoll
`Magnusson did not
`products are museum pieces. He said
`the Brno chair is a museum piece.
`
`"Kno||'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 retail price of the Brno chair is $1,600 — $3,600. Magnusson Dec.,1]15.
`
`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).
`
`"Given its significance as an important contribution to modern furniture design,
`1°
`the Flat Brno Chair has been part of MoMa's collection in New York City since 1976 and
`it has been displayed there many times." (Riley Dec. 114).
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`12
`
`"When the Museum of
`Modern Art exhibits or
`refers to the Flat Brno
`Chair, it always identifies
`Mies van der Rohe as the
`
`designer of the Barcelona
`Table and Knoll, Inc. as the
`source and manufacturer of
`
`the Flat Brno Chair."
`
`Knoll has agreed to pay MoMa a
`royalty for every Brno chair it sells.“
`MoMa
`has
`a
`vested
`interest
`in
`promoting its licensee.
`
`13
`Exhibit E
`
`An article from the October
`16, 1964 issue of the New
`York Herald Tribune
`
`The article associates the furniture
`designs with Mies van der Rohe, not
`Knoll.
`
`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".
`
`Riley Dec., Exhibit B, "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. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`The article associates the furniture
`designs with Mies van der Rohe.
`
`13
`Exhibit F
`
`An article from the October
`16, 1964 New York Times
`announcing Knoll's
`exhibition of Mies van der
`
`Rohe designs at Macy's.
`
`The headline reads as
`
`follows:
`"Macgs offers Mies Designs
`For 1 ‘Time."
`
`The article states that Knoll
`is "so|e authorized
`
`manufacturer of Mies
`
`furniture in the United
`States."
`
`13
`Exhibit G
`
`Mies van der Rohe:
`Architecture and Design in
`Stuttgart, Barcelona, Brno.
`
`The article discusses how Mies van der
`Rohe designed the Barcelona stool.
`
`Knoll
`
`is not identified as the exclusive
`
`The title of the article is
`"Brno chair".
`
`manufacturer.
`
`13
`
`Knoll Furniture
`
`A book
`
`about Knoll
`
`furniture
`
`is
`
`Exhibit G
`
`This is a book about Knoll
`furniture.
`
`obviously going to identify Knoll as the
`source the stool. However, the book
`did not
`identify Knoll as
`the sole
`manufacturer.
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`14
`
`"Given the number of works The first problem with Paragraph 14 is
`featuring or referring to the
`the Magnusson's obvious bias. He is
`Flat Brno Chair, it is evident Kno||'s Executive Vice President and
`and it is my opinion that the
`he
`has
`a
`vested
`interested
`in
`Flat Brno Chair is well
`eliminating
`competition
`for
`the
`known to the public
`Barcelona table.
`interested in contemporary
`furniture and that such
`public continues to
`recognize the Flat Brno
`Chair as designed by Mies
`van der Rohe and
`
`The second problem with Paragraph 14
`is that the works featuring or referring
`to the Brno table associate the design
`with Mies van der Rohe, not Knoll.
`
`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 Flat Brno
`Chair."
`
`The third problem with Paragraph 14 is
`that the number of works featuring or
`referring
`to
`the
`Brno
`chair
`is
`exceedingly small.
`
`the
`in
`nothing
`is
`there
`Finally,
`Magnusson Declaration which supports
`the fact that buyers of modern furniture
`recognize the design of the Brno chair
`as a trademark.”
`
`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., /nc., 79 F.3d 258, 265 (2"d 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.
`
`-10-
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044024
`
`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.13 MoMa receives a royalty
`
`for each Barcelona chair sold by Knoll.” Thus, Riley is not an impartial witness.
`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`Knoll pays MoMa a royalty on every
`Barcelona stool
`it sells. MoMa has a
`
`vested
`Hcensee.
`
`interest
`
`in
`
`promoting
`
`its
`
`The catalog illustrates that there have
`been multiple manufacturers of
`the
`Barcelona table.
`
`A MoMa catalog is obviously going to
`identify
`its
`licensee
`as
`the
`manufacturer of the Brno chair.
`
`5
`
`"When the Museum
`
`exhibits, publishes or
`otherwise refers to the
`
`Barcelona Stool in its
`
`collection, it identifies Mies
`van der Rohe as the
`
`designer of the Barcelona
`Stool and Knoll as its
`
`source and manufacturer."
`
`6
`Exhibit A
`
`Ludwig Mies van der Rohe:
`Furniture and Furniture
`
`Drawings for the Design
`Collection of the Mies van
`der Rohe Archive.
`
`The catalog identifies three
`manufacturers for the
`
`Barcelona table:
`
`1. Berliner Metallgewerbe
`Joseph Muller (1929 -
`1930);
`
`2. Bamberg
`Metallwerkstatten (1931);
`and,
`
`3. Knoll (1960 to the
`present)
`
`13
`
`14
`
`Riley Dec., 111.
`
`Riley Dec., Exhibit C, "Chair of Chairs", New York Newsday, February 20, 1986,
`p.2, column 2, second full paragraph.
`
`-11-
`
`

`
`NAOS Srl v. Knoll, Inc. ; Cancellation No. 92044024
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`6
`Exhibit B
`
`"Chair of Chairs", New York The association between Mies van der
`Newsday, February 20,
`Rohe and Knoll
`is legally irrelevant to
`1986.
`the issue of secondary meaning. An
`association between Mies van der
`Rohe and Knoll
`is not an association
`between the design of the Brno chair
`and Kno||.‘5
`
`The subheadline reads as
`follows: "Mies van der
`Rohe's Barcelona chair is
`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."
`
`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
`
`This issue was specifically addressed by the Sixth Circuit in Herman Miller, Inc.
`15
`v. Pa/azzetti Imports & Exports,
`lnc., 270 F.3d 298 (6”‘ Cir. 2001).
`Knoll must
`demonstrate that when the buying public recognizes the Brno chair as a Mies van der
`Rohe design,
`it recognizes that the Brno chair comes from one source. Evidence
`associating the Brno 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.
`
`-12-
`
`

`
`NAOS Srl v. Knoll, lnc.; Cancellation No. 92044024
`
`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 Kno|l."‘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.
`
`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."
`
`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”d 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
`
`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.
`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.
`
`-13-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`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., 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
`(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
`
`-14-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`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.
`
`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 canceuation
`
`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 Knoll's registrations). Knoll's actions create the problems that are sometimes
`
`resolved under the doctrine of "judicial estoppe|".
`
`-15-
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044024
`
`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
`
`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 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
`
`New Hampshire v. Maine, 532 U.S. 742, 749 (2001); 18 Moore's Federal Practice
`18
`gg §133.3o (3"’ ed. 2004).
`
`Data General Corporation v. GSA, 78 F.3d 1555, 1565 (Fed. Cir. 1995); Boston
`*9
`Chicken Inc. v. Boston Pizza International lnc., 53 U.S.P.Q.2d 1053, 1055 (T.T.A.B.
`1999).
`
`2°
`
`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
`22
`(2"‘’ ed. 2004).
`
`-16-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044024
`
`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
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`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.
`
`Knoll'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 Knoll's motion to
`
`suspend proceedings be denied.
`
`Date: February 9, 2005
`
`By:
`
`NAOS Srl
`
`/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@DlCKlNSONWR|GHT.COM
`
`Attorneys For Petitioner
`
`-17-
`
`

`
`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF NEW YORK
`
`Plaintiff,
`
`CASPRINI GRUPPO INDUSTRIAL
`S.P.A.,
`'
`
`KNOLL, INC.,
`
`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
`
`
`
`

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`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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`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 Kno||’s U.S. Trademark
`Rights .
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`III.
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`KNOLL WOULD BE UNABLE TO ASSERT CLAIMS
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`BASED ON CASPRIN|’S ITALIAN ACTIVITIES .
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`. 16
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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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`2.
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`3.
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`4.
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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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`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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`. 22
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`

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`CONCLUSION
`
`ii
`
`

`
`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
`
`A
`Apotex, Inc. v. Pfizer, Inc., 2004 U.S. Dist. LEXIS 26232
`(S.D.N.Y. Dec. 30, 2004) ............................................................................................. .. 7
`
`Atlantic Richfieid 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.|., 139 F.3d 98 (2d Cir. 1998) ....................................... .. 15
`
`Cargill, 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) ...................................................