Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA25452
`
`Filing date3
`
`02/09/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`i92044025
`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
`
`Submission
`Filer's Name
`
`Opposition to Registrant's Motion to Suspend
`Marc A. Bergsman
`
`]Date
`Attachments
`
`loz/09/2005
`opposition barcelona stoo1.pdf ( 52 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NAOS Srl,
`
`Petitioner,
`
`v.
`
`KNOLL, |NC.,
`
`Registrant.
`
`\./\/\J&/\./\a\;\/\/‘Is;
`
`Cancellation No. 92044025
`
`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. 92044025
`
`compete in the market for classic furniture.‘ 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 stool. The Barcelona stool 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, Knol|'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
`(Exhibit2).
`
`Magnusson Dec., 114. The Magnusson Declaration is part of the prosecution
`2
`history of Registration No. 2,894,977.
`
`MoMa receives a royalty for every one of the Barcelona stools sold by
`3
`(Riley Dec., Exhibit B, "Chair of Chairs", New York Newsday, February 20, 1986,
`Knoll.
`p.2, column 2, second full paragraph).
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`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,
`lnc., 529 U.S. 205, 213-214, 54 U.S.P.Q.2d 1065, 1069 (2000).
`Since the mark at issue is a stool 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. 92044025
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`4
`
`5
`
`"The public has come to
`refer to this stool as the
`
`The public reference to the Barcelona
`stool
`is derived from the fact that the
`
`‘Barcelona Stool."
`
`"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 Stool to Knoll
`Associates, lnc."
`
`1929
`the
`stool was designed for
`Barcelona International Exposition.
`It is
`not a reference to source.
`
`the public
`Even Magnusson admits
`refers to the stool as the Barcelona
`
`stool, not the "Knoll stool".
`
`not
`The purported agreement was
`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
`
`transfer any rights Knoll
`did not
`Associates, Inc. 5 This explains why
`Knoll did not include the Agreement the
`Magnusson Declaration.
`
`is not subject to any patent protection or
`"The design of the Barcelona Stool
`5
`application." (Magnusson Dec., 1116). Likewise, since the Barcelona stool 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 Co., 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.
`Col/ezione Europa USA /nc., 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. 92044025
`
`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 stool.
`continuously manufacturing,
`displaying, promoting and
`selling the Barcelona Stool
`since at least as early as
`January 1, 1954."
`
`Magnusson knew that Knoll had not
`made substantially exclusive use of the
`Barcelona stool.
`In a protest
`letter
`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,
`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 Barcelona stool design was not
`substantially exclusive.
`
`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 Barcelona
`stool before making an attempt to stop it 18 years later.
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`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 stool.
`
`The catalogs do not demonstrate how
`consumers
`perceive
`the Barcelona
`stool
`(i.e.,
`pleasing
`design
`or
`trademark).
`
`9
`
`"From 1998 through June
`2003, Knoll, Inc. sold in
`excess or 800 units of the
`
`Knoll sold an average of 160 stools per
`year, a de minis number.
`
`the
`reproduction of
`its
`sold
`Barcelona Chair, resulting in Knoll
`sales in excess of $1.5
`Barcelona stool at an average price of
`million."
`$1,875. At $1,875 for a stool, Knoll
`is
`marketing to a niche market.7
`
`Knoll failed to provide any information
`about market share.
`Knoll may not
`even be the largest
`retailer of
`the
`Barcelona
`stool.
`Thus,
`if buyers
`associate the design of the stool 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.8
`
`"Knoll's customers tend to be corporations, restaurants, hotels and the very rich —
`7
`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 for a Barcelona stool is $4,000. Magnusson Dec., 1115.
`
`According to Professor McCarthy, the greater a company's sales, the greater the
`8
`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).
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044025
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`10
`
`"The Barcelona Stool is part
`of the collection of
`
`numerous museums around
`
`The Barcelona stool
`
`is
`
`a museum
`
`exhibit because it
`classic design.9
`
`is considered a
`
`the world, and has been
`featured in a number of
`
`museum exhibitions."
`
`12
`
`"When the Museum of
`
`Modern Art exhibits or
`
`refers to the Barcelona
`
`Stool, it always identifies
`Mies van der Rohe as the
`
`designer of the Barcelona
`Stool and Knoll, Inc. as the
`source and manufacturer of
`
`the Barcelona Stool."
`
`say that Knoll
`Magnusson did not
`products are museum pieces. He said
`the Barcelona stool is a museum piece.
`
`Knoll has agreed to pay MoMa a
`royalt
`for every Barcelona stool
`it
`0
`sells. MoMa has a vested interest in
`
`promoting its licensee.
`
`13
`Exhibit D
`
`An article from the October
`
`The article associates the furniture
`
`16, 1964 issue of the New
`York Herald Tribune
`
`designs with Mies van der Rohe, not
`Knoll.
`
`introducing four new
`designs by Mies van der
`Rohe for Kno||'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".
`
`There is no mention of the Barcelona
`
`stool in the article.
`
`Magnusson's misleads that Trademark
`Office
`by
`saying that
`there
`is
`a
`photograph of the Barcelona stool
`in
`the article. There is no photograph.
`
`"Given its significance as an important contribution to modern furniture design,
`9
`the Barcelona Stool has been part of The Museum of Modern Art's collection in New
`York City since 1976 and it has been displayed there many times." (Riley Dec. 114).
`
`Riley Dec., Exhibit B, "Chair of Chairs", New York Newsday, February 20, 1986,
`10
`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."
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`13
`
`Exhibit E
`
`An article from the October
`
`The article associates the furniture
`
`designs with Mies van der Rohe.
`
`With the exception of a photograph
`with the Barcelona chair, the Barcelona
`
`stool is not mentioned in the article, not
`even in the legend accompanying the
`photograph.
`
`16, 1964 New York Times
`announcing Knoll's
`exhibition of Mies van der
`
`Rohe designs at Macy's.
`
`The headline reads as
`
`follows:
`
`"Mac ‘s offers Mies Designs
`For1 ‘Time."
`
`The legend above the
`photograph of the
`Barcelona chair and stool
`
`reads as follows: "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."
`
`13
`
`Mies van der Rohe:
`
`The article discusses how Mies van der
`
`Exhibit F
`
`Architecture and Design in
`Stuttgart, Barcelona, Brno.
`
`Rohe designed the Barcelona stool.
`
`Knoll
`
`is not identified as the exclusive
`
`The title of the article is
`
`manufacturer.
`
`"Barcelona stool".
`
`Knoll is identified as the
`manufacturer of the stool in
`
`the photograph.
`
`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. 92044025
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`The article associates the Barcelona
`stool with Mies van der Rohe.
`
`is
`The article does not say that Knoll
`the exclusive source for the Barcelona
`stool.
`
`This is an article printed from the Lexis
`database. The Barcelona stool must
`have
`appeared
`in
`a
`photograph
`accompanying
`the
`article.
`The
`reference to the Barcelona stool was
`from the legend for the photograph.”
`
`13
`Exhibit H
`
`13
`Exhibitl
`
`''In a Spaced—Starved City,
`the Lowly Ottoman Stands
`Tall", New York Times,
`December 25, 1977.
`
`This is an article about
`ottomans.
`
`The relevant reference
`
`reads as follows: "Mies van
`
`der Rohe's 1929 Barcelona
`stool. .
`. "
`
`The article notes that the
`
`Barcelona stool is available
`at Knoll.
`
`"Outside Influence; Melding
`Setting and Structure to
`Aesthetic and Practical
`Advantage", Chicago
`Tribune, October 31, 1997
`
`The article is about the
`
`International and Modernist
`
`Styles of architecture and
`the influence of Mies van
`
`der Rohe.
`
`There is an oblique
`reference to "Barcelona
`
`Stools by Mies van der
`Rohe-Knoll".
`
`Knoll did a Lexis database search for "Barcelona stool" as evidenced by the
`1‘
`highlighted words "Barcelona stool" in Magnusson Exhibits 13H and I. Knoll found two
`articles referencing the Barcelona stool during the fifty (50) years that it claims to have
`used the design as a trademark. Two references in fifty (50) years hardly demonstrates
`that the design of the Barcelona stool points uniquely and exclusively to Knoll.
`
`

`
`PARAGRAPH
`
`STATEMENT
`
`FACT
`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`14
`
`"Given the number of works
`
`featuring or referring to the
`Barcelona Stool, it is
`evident and it is my opinion
`that the Barcelona Stool is
`
`well known to the public
`interested in contemporary
`furniture and that such
`
`public continues to
`recognize the Barcelona
`Stool as designed by Mies
`van der Rohe and
`
`manufactured by Knoll, lnc.
`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
`
`Stool."
`
`The first problem with Paragraph 14 is
`the Magnusson's obvious bias. He is
`Knoll's Executive Vice President and
`
`he
`
`has
`
`a
`
`vested
`
`interested
`
`in
`
`competition
`eliminating
`Barcelona stool.
`
`for
`
`the
`
`The second problem with Paragraph 14
`is that the works featuring or referring
`to the Barcelona chair associate the
`
`design with Mies van der Rohe, not
`Knoll.
`
`The third problem with Paragraph 14 is
`that the number of works featuring or
`referring to the Barcelona stool
`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 Barcelona
`stool as a trademark. 12
`
`Knoll did not submit any advertisements featuring the Barcelona stool, nor did it
`
`submit any evidence of advertising expenditures.
`
`"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 goal of assessing the evidence of secondary meaning is to ascertain
`12
`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. Stick/ey, Inc. v. Canal Dover Furniture Co., /nc., 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.
`
`-10-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`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). By the same token, no advertising, the
`
`less the exposure of buyers to the symbol; the less the exposure, the less the likelihood
`
`that buyers will associate the symbol with one seller.
`
`In this case, Knoll was not
`
`promoting the Barcelona stool as a source indicator.
`
`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
`
`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."
`
`Knoll pays MoMa a royalty for each
`Barcelona stool
`it sells. MoMa has a
`vested
`interest
`in
`promoting
`its
`licensee.
`
`*3
`
`Riley Dec.,1I1.
`
`Riley Dec., Exhibit C, "Chair of Chairs", New York Newsday, February 20, 1986,
`14
`p. 2, column 2, second full paragraph.
`
`-11-
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044025
`
`PARAGRAPH
`
`STATEMENT
`
`FAcT
`
`6
`Exhibit A
`
`Ludwig Mies van der Rohe:
`Furniture and Furniture
`Drawings for the Design
`Collection of the Mies van
`
`The catalog illustrates that there have
`been multiple manufacturers of
`the
`Barcelona stool.
`
`der Rohe Archive
`
`A MoMa catalog is obviously going to
`identify MoMa's
`licensee
`as
`the
`The catalog identifies three manufacturer of the Barcelona stool.
`manufacturers for the
`Barcelona stool:
`
`1. Berliner Metallgewerbe
`Joseph Muller (1929-
`1930);
`
`2. Bamberg
`Metallwerkstatten
`
`(1931); and,
`
`3. Knoll (1948 to the
`present)
`
`-12-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`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
`
`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 Kno|l.15
`
`one of the many on display
`at MOMA's retrospective of With the exception of the photograph,
`his influential furniture".
`the Barcelona stool is not referenced in
`
`the article, not even in the legend
`accompanying the photograph.
`
`Riley points out that the
`article states the following:
`'"[VV]hen it comes to
`furniture, Mies has become
`
`synonymous with both
`MoMa and what became
`
`Knoll International, a
`furniture manufacturer."
`
`The Barcelona stool is one
`
`of many products featured
`in a photograph.
`It is not
`mentioned in the legend
`accompanying the
`photograph.
`
`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 stool as a Mies van
`der Rohe design,
`it recognizes that the Barcelona stool comes from one source.
`Evidence associating the Barcelona stool 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.
`
`-13-
`
`

`
`NAOS Srl V. Knoll, Inc.; Cancellation No. 92044025
`
`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 Knoll."16
`
`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.”
`
`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.
`
`"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.
`
`-14-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`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 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., lnc., 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.
`
`-15-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`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.
`
`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.
`
`-16-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`B.
`
`Inconsistent
`Knoll Has Adopted
`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 Knoll's registrations). Knoll'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."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 princip|e."2° Therefore, there is no inflexible
`
`list of prerequisites or formula for determining the applicability of judicial estoppel.”
`
`New Hampshire v. Maine, 532 U.S. 742, 749 (2001); 18 Moore's Federal Practice
`18
`gg §133.30 (3“‘ ed. 2004).
`
`Data General Corporation v. GSA, 78 F.3d 1556, 1565 (Fed. Cir. 1996); Boston
`19
`Chicken Inc. v. Boston Pizza International Inc., 53 U.S.P.Q.2d 1053, 1055 (T.T.A.B.
`
`1999).
`
`2°
`
`2‘
`
`New Hampshire v. Maine, 532 us. 742, 750 (2001 ).
`
`New Hampshire v. Maine, 532 u.s. 742, 751 (2001).
`
`-17-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`"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
`
`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 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.
`
`18B Wright, Miller & Cooper, Federal Practice and Procedure 2d §4477, p. 553
`22
`(2““ ed. 2004).
`
`-13-
`
`

`
`NAOS Srl v. Knoll, Inc.; Cancellation No. 92044025
`
`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. Bergsman/
`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|CKlNSONWRlGHT.COM
`
`Attorneys for Petitioner
`
`-19-
`
`

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

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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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`. 4
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`THE RELEVANT ALLEGATIONS OF THE
`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 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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`BASE