TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92046486
`
`Reg. No. 2,608,589
`Serial No. 76000078
`
`) ) ) ) )
`
`In The Matter Of Service Mark No. 2608589
`
`For the Mark: HAMPTONS LOCATIONS
`
`Date Registered: August 20, 2002
`
`DECLARATION OF MARK N. DILLER
`
`CONTAINING AN UPDATE ON THE
`
`)
`)
`) STATUS OF THE FEDERAL COURT
`ACTION THAT OCCASIONED THE
`
`SUSPENSION OF THIS PROCEEDING
`
`) ) ) ) ) )
`
`BARBARA RUBENS,
`2
`
`Petitioner,
`
`V.
`
`HAMPTONS LOCATIONS, INC.,
`
`A
`
`Respondent.
`
`Mark N. Diller, under penalty of perjury pursuant to Rule 2.20, 37 C.F.R. § 2.20
`
`and 28 U.S.C. § 1746, hereby declares the truth of the following.
`
`1.
`
`I am an attorney representing Respondent Hamptons Locations, Inc.
`
`(“HLI”) in this proceeding. HLI was a plaintiff in the prior-filed civil action before the
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`United States District Court for the Eastern District of New York, No. 01-CV-5477
`
`(DRH/WDW) (the “Federal Court Action”).
`
`2.
`
`I respectfully submit this Declaration in response to the notice mailed on
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`April 7, 2014, directing the parties to update the Board on the status of the Federal Court
`
`Action which occasioned the suspension of this proceeding.
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`The Federal Court Action is Concluded, and
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`Mandates the Dismissal of this Proceeding
`
`3.
`
`The last motion before the Court in the Federal Court Action has now
`
`been decided, and the time by which any party may appeal from that decision has
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`recently expired. The Federal Court Action is thus concluded.
`
`Hllflll Illlllll(ll|l5H|_|lll1lllll£l|(l)lll|llllHlllllllIll!
`
`0 5 Patent &TMorc/TM Ma,‘ am or #22
`
`

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`4.
`
`The rulings in the Federal Court Action, and by the United States Court of
`
`Appeals for the Second Circuit in the appeal from the verdict in that Action (the
`
`''Appeal''), dispose of the entirety of the claims in this proceeding and mandate dismissal.
`
`The Petitioner Asserted the Same Claims in the Federal Court Action and
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`Appeal as in This Proceeding
`
`5.
`
`In the Federal Court Action, HLI as plaintiff sought damages for
`
`violations of 15 U.S.C. § 1125 with respect to its registered trademark “Hamptons
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`Locations,” which is the same mark at issue in this proceeding.
`
`6.
`
`In her petition in this proceeding, Petitioner asserts as "the grounds to
`
`cancel" are that HLI's service mark "Hamptons Locations" is either "generic" or
`
`"descriptive" and lacks secondary meaning. For example, the petition claims as a basis to
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`cancel that:
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`Because the service mark Hamptons Locations is so highly descriptive and
`
`generic it cannot be a source indicator nor can it be distinctive or could it of
`
`gained secondary meaning at time of registration.
`
`[sic]
`
`Petition, paragraph 9.
`
`7.
`
`These are precisely the same defenses asserted in the Federal Court Action
`
`and the Appeal. In the Federal Court Action, the pre-trial order identifies as defenses
`
`that:
`
`2.
`
`.
`
`.
`
`.
`
`. The mark in suit is generic and is the common name for the service in
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`connection with which it is used, A generic term is not capable of serving the
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`essential trademark function of distinguishing the products or services of a
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`business from the products or services of other businesses, and therefore cannot
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`be afforded any legal protection .
`
`.
`
`.
`
`.
`
`

`
`3.
`
`.
`
`.
`
`.
`
`. The mark in suit is descriptive and lacks secondary meaning; it is
`
`therefore not distinctive or famous, and cannot be afforded protection under the
`
`Lanham Act .
`
`.
`
`.
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`.
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`Federal Court Action Joint Pre-Trial Order at 3 (dated September 12, 2006). The Joint
`
`Pre-Trial Order was submitted as Exhibit D to the affidavit of Nancy Grigor sworn to
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`November 25, 2006 in this proceeding, and is located in Docket Item 4 at page 58.
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`8.
`
`The Federal Court Action was tried to a jury in January 2007. At the
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`conclusion of the trial, Judge Dennis Hurley charged the jury to determine, among other
`
`things, whether the “Hamptons Locations” mark had acquired secondary meaning and is
`
`protectible.
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`9.
`
`The jury returned its verdict on January 29, 2007. On the special verdict
`
`sheet, the jury answered “yes” to the question “Did plaintiffs Hamptons Locations, Inc.
`
`and Nancy Grigor prove that the service mark ‘Hamptons Locations’ had acquired
`
`‘secondary meaning’ prior to July 8, 1999?”. The jury proceeded to find that HLI and
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`Ms. Grigor had proved the other elements of a violation of Section ll25(d) against one of
`
`the defendants in the Federal Court Action, and awarded damages. The jury's verdict
`
`sheet, dated January 29, 2007, is annexed hereto as Exhibit A.
`
`Petition er ’s Appeal
`
`10.
`
`While the claims against Petitioner had been dismissed at the time of trial,
`
`the Petitioner filed a notice of appeal in the Federal Court Action June 23, 2009, seeking
`
`review of the dismissal of her counterclaims and certain other relief. The Petitioner’s
`
`husband and son also filed notices of appeal from various aspects of the Federal Court
`
`Action.
`
`

`
`1 1.
`
`Petitioner and the other appellants to the Appeal filed a single brief
`
`asserting various grounds for reversal. In Petitioner's brief on Appeal, Petitioner and the
`
`other appellants included in their summary of argument that:
`
`71. The District Court erred when it held that Grigor's [HLl's] mark was not
`
`generic. Both the geographical name Hamptons and the word locations are
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`generic and when put together it becomes a generic term which describes the very
`
`genus of services being offered. Even if the generic term had become identified
`
`with a first user, it cannot be afforded protection since it would grant the owner of
`
`the mark a monopoly, since a competitor could not describe his goods or services
`
`as he should.
`
`72. The Jury verdict that Grigor's [HLl's] mark Hamptons Locations had acquired
`
`secondary meaning as of July 8, 1999, that Darrell had violated § 1125(d) of the
`
`Lanham Act and awarded Grigor [HLI] statutory damages had to be based on a
`
`complete failure of the jury to understand the complexity of trademark law and
`
`the Court's limited jury charge which did not explain the ‘heavy burden of proof
`
`necessary for Grigor [HLI] to prove that her mark was distinctive and had
`
`acquired secondary meaning and therefore, could have only been based on sheer
`
`conjecture and surmise.
`
`Brief for Defendants—Appellants at 19-20. Petitioner's brief is annexed hereto as Exhibit
`
`B.
`
`12.
`
`The United States Court of Appeals for the Second Circuit affirmed the
`
`District Court’s rulings in the Federal Court Action in its summary order dated February
`
`5, 2010. Relevant here, the Second Circuit upheld the jury’s verdict against the
`
`

`
`Petitioner’s son with respect to the claim advanced at trial and on appeal that HLI’s
`37 C6
`
`trademark “Hamptons Locations
`
`should have been held generic as a matter of law. The
`
`district court did not err in rejecting this argument.” Hamptons Locations, Inc. v.
`
`Rubens, 364 Fed. Appx. 685, 686 (2d Cir. Feb. 5, 2010).
`
`13.
`
`The Second Circuit similarly rejected Petitioner’s appeal in the Federal
`
`Court Action, holding that the “district court did not err when it dismissed the Rubens’
`
`counterclaims, as those claims were baseless as a matter of law.” Id
`
`Petitioner Has Had Her Day In Court
`
`14.
`
`Having participated fully in the Appeal from the Federal Court Action,
`
`,
`
`including advancing as co-defendant-appellant the very same claims as are asserted in
`
`this Proceeding that HLI’s mark should be held to be "generic" or "descriptive" and
`
`lacking secondary meaning, Petitioner should not be permitted to re-litigate those claims
`
`all over again in this forum. See Ball v. A.0. Smith Corp, 451 F.3d 66, 69 (2d Cir.
`
`2006).
`
`15.
`
`Indeed, the attempt to re-litigate these issues by Petitioner will exacerbate
`
`the expense, delay and harm already suffered by HLI. HLI expressly reserves all of its
`
`rights to recover attorneys fees and other expenses occasioned by this Proceeding.
`
`Conclusion
`
`16.
`
`For the foregoing reasons, and those set forth in Respondent’s previous
`
`submissions in this proceeding, Respondent respectfully requests that the TTAB either
`
`dismiss this Proceeding in its entirety, or to continue to hold this matter in suspension
`
`pending an agreed-upon schedule to brief a motion for summary judgment based on the
`
`

`
`collateral estoppel effect of the results of the Federal Court Action Verdict and the
`
`Appeal.
`
`Dated: May 7, 2014
`
`Respectfully submitted:
`/ /
`
`ARK . DILLE
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Declaration of Mark N.
`Diller Containing An Update On The Status Of The Federal Court Action That
`Occasioned the Suspension of this Proceeding has been served on Petitioner Barbara
`Rubens by forwarding said copy on May 7, 2014, by Express Mail (Post Office to
`Addressee Service), postage prepaid, to:
`
`( M
`
`ark N. Di er
`
`Attorneyfor Respondents Hamptons
`Locations, Inc. and Nancy Grigor
`
`Barbara Rubens
`
`4439 Douglas Avenue
`Riverdale, NY 10471-3513
`
`Dated: May 7, 2014
`
`CERTIFICATE or MAILING VIA EXPRESS MAIL PROCEDURE
`
`PURSUANT To 37 C.F.R. § 2.198(a)(1)
`
`I hereby certify that, on May 7, 2014, the foregoing Declaration of Mark N. Diller
`Containing An Update On The Status Of The Federal Court Action That Occasioned the
`Suspension of this Proceeding is being deposited with the United States Postal Service
`with sufficient postage as Express Mail — Post Office to Addressee Service in an
`envelope addressed to:
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dated: May 7, 2014.
`
`
`
`Mark N. Dil
`
`r
`
`Attorneyfor Respondents Hamptons
`Locations, Inc. and Nancy Grigor
`
`

`
`

`
`H
`
`~ Case 2:01-cv-05477-DRH-WDW Document 226
`
`I-Tiled 0E53R2,0g/ AWQEOM
`
`HAMBTONS LOCATIONSS
`NANCY GRIGOR,
`
`
`
`PLAINTIFFS,
`-AGAINST-A
`
`
`RICHARD RUBENS,.ANDgDARRELL_wh
`RUBENS, EACH INDIVIDUALLY '"4f
`AND DOING BUSINESS AS HAMPTONS
`LOCATIONS,
`
`DEFENDANTS.
`_____________________________ __X
`/
`
`1i.’
`
`VERDICT SHEET
`01-CV-5477{DRH)(WDW)
`
`THE PURPOSE OF THE Vé§D:6i§5a3BT"Is :0 ASSIST YOU IN REPORTING
`youa VERDICT.
`THE APPLICABLE LAW GOVERNING THIS CASE IS saw
`FORTH IN THE CHARGE.
`
`.........'....'*.(-
`
`'
`
`YOUR VERDICT MUST BE UNANIMOUS, THAT IS, EACH OF YOU MUST AGREE
`AS TO EACH ANSWER ON THE VERDICT SHEET.
`
`1.
`
`
`AS TO PLAINTIFFS’ TWO FESERAL CLAIMS, XAMELY rsosz UNSER
`SECTIONS l25(A) AND 1125(9), PLEASE ANSWER THE FOLLOWING
`A~~\\
`QUESTION:
`\\\
`
`INC. AND NANCY GRIGCR
`DID PLAINTIFFS HAMPTON LOCATIONS,
`PROVE THAT THE SERVICE MARK “HAXPTONS LOCATIONS” HAD
`.ACQUIRED “SECONDARY MEANING” PRIOR TO ICLY 8, L999?
`YES
`
`V/ NO
`
`IF YOU ANSWERED VYESV.TQ THIS QUESTICN;_PLAINTIFFS HAVE
`ESTABLISHED THE “SECONDARY MEANING” ELEMENT OF THE SEVERAL
`ELEMENTS THEY MUST PROVE AS TO THE ALLEGED VIOLATIONS OF SECTION
`ll25(A) AND OF SECTION 1125(0)} ACCORDINGLY, PROCEE3 TO QUESTIONS
`2 AND 3 BELOW.
`‘}
`
`‘ Rubens V Hamptons Locations, Inc., Cancéllation No. 92046486
`- Exhibit A to pgglaratiggi <j)f“_M_ar1_g FPi!}?§f}?TS§ ¥?Y.7: 90.1.“
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`
`Case 2:01—cv—05477—DRH—_\_NDW Document 226
`
`Filed 01/30/2007
`
`Page 2 of 4
`
`
`
`;ADDIT
`
`N L UESTION AS TO FE ERAL S C I N 1 2
`
`A CLAIM
`
`RIF YOU ANSWERED “YES” TO QUESTION 1 PERTAINING TO “SECONDARY
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`
`B.
`
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`
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`
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`ii 25 D) CLAIM
`
`
`IF YOU ANSWERED “YES” TO QUESTION 1 PERTAINING TO “SECONDARY
`MEANING," DID PLAINTIFFS ALSO PROVE THE OTHER, OR REMAINING
`ELEMENTS OF SECTION 1125(0):
`
`-A.
`
`As TO»RICHARDRROBENS?*{
`
`YES ‘
`
`1* :.5g-‘.. 1::
`
`SNQHE-N;.4.
`AS TO DARRELL RUBENS?“
`
`B.
`
`YES '
`
`NO
`
`‘
`._____
`'
`.
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`NEW YORK sTA1E guEg;a‘cgfi§;?:r:oN CLAIM
`
`HAVE PLAINTIFFS“PROVENiTHEfR¥NEW§YCRK“SEATE UNFAIR
`COMPETITION CLAIM:
`.
`A
`
`A.
`
`AS TO RICHARD-RUBENS?
`
`YES
`
`4
`
`NO
`
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`Rubens V. Hamptpyg Locatibns, Ing, CanEelLat_i0n No. 92046486
`Exhibit A to Dec“1aration:“(’>qf'E"‘EI\7I'éirrk?=N:f
`d'a%H4:-May‘ 7, 2014
`5 ‘>di7‘='J§'.
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`Filed 01/30/2007
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`Exhibit A to Deplaratipp 9f Mark N. Di1N1er dated May 7, -2014
`
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`Case 2:01-cv;05477:asgH;wnw;::iagggVqj§gg:22&+'«fined-Ao1/so/2007
`
`Page 4 of 4
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`A
`ARE YOU AWARDING PUNITIVE DAMAGES TO 7
`IN WHAT AMOUNT:
`P“AINTIFFS AND’
`
`IF SO’
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`Rubens V. Hamptons Locations, Inc., Cancellation No. 92046486
`Exhibit A to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`4
`
`H
`
`

`
`07-0486
`
`
`
`flliluitefi
`
`3
`
`IN THE
`
`£125 Cllrrurt of 31.11.1221.123-
`FOR THE SECOND CIRCUIT
`
`I
`HAMPTONS LOCATIONS, INC., and
`NANCY GRIGOR,
`
`Plaintifi"-Appellee
`
`-against-
`
`RICHARD RUBENS, BARBARA RUBENS, and
`DARRELL RUBENS, each individually and doing
`business as HAMPTON LOCATIONS,
`
`Defendants-Appellants,
`
`ON APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NEW YORK
`
`—:.:_
`
`BRIEF FOR DEFENDANTS-APPELLANTS
`__:
`
`RONEMUS & VILLENSKY
`112 MADISON Avenue, 2“ Floor
`New York, New York 10016
`(212) 779-7070
`
`Attorneys for Defendant-Appellant
`
`
`
`Rubens v. Hamptons Locations, Inc., Cancellation No. 92046486
`9
`Exlub1tB to Declaration of Mark N. Diller dated May 7 2014
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ......................................................... ..i
`
`PRELIMINARY STATEMENT .................................................... ..l
`JURISDICTIONAL STATEMENT ...................................................2
`
`STATEMENT OF ISSUES PRESENTED FOR REVIEW ........................2
`
`STATEMENT OF THE CASE ...................................................... ..4
`
`STATEMENT OF FACTS ........................................................... ..9
`
`PROCEDURAL HISTORY......................................................... ..14
`
`SUMMARY OF ARGUMENT .................................................... ..17
`
`ARGUMENTS ....................................................................... ..21
`
`POINT I
`
`THE DISTRICT COURT ERRED WHEN IT DETERMINED THAT
`THE MARK HAMPTONS LOCATIONS WAS DESCRIPTIVE ............. ..22
`
`POINT II
`
`BOTH THE JURY AND THE DISTRICT COURT ERRED IN
`DETERMINING THAT GRIGOR’S MARK ACQUIRED
`SECONDARY MEANING AS OF JULY 8, 1999 ............................... ..29
`
`POINT III
`
`THE JURY ERRED IN FINDING THAT DARRELL VIOLATED
`1125 (D) OF THE LANHAM ACT AND THE DISTRICT COURT
`ERRED IN NOT VACATING THE VERDICT ........................................... ..38
`
`Rubens v. Hamptons Locations, Inc., Cancellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`A. No Evidence Was Presented That Proved That Darrell Was
`The Authorized Licensee Of The Domain Address
`Www.hamptonlocations.com ............................................... . .3 8
`
`B. No Evidence Was Presented That Darrell Acted In Bad Faith
`When He Replied To The Cease And Desist Letter...................... ..40
`
`C. Darrell Had Reasonable Grounds To Believe That Use the
`Alleged Infringing Domain Address Was A ‘Fair Use And
`Lawful’ ......................................................................... ..50
`
`POINT IV
`
`THE DISTRICT COURT ERRED WHEN IT FAILED TO DISMISS
`ALL CLAIMS AGAINST ALL DEFENDANTS ON SUMMARY
`JUDGMENT .......................................................................... ..5l
`
`POINT V
`
`THE DISTRICT COURT ERRED WHEN IT FAILED TO GRANT A
`50A MOTION AND ALLOWED THIS CASE TO GO TO A IURY ........ ..52
`
`POINT VI
`
`THE DISTRICT COURT ABUSED ITSDISCRETION WHEN
`IT DISMISSED BARBARA, RICHARD AND DARRELL RUBENS
`COUNTERCLAIMS ................................................................ ..53
`
`CONCLUSION ......................................................................... ..6o
`
`CERTIFICATE OF COMPLIANCE ..................... .; ....................... ..62
`
`Rubens V. Hamptons Locations, Inc., Cancellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`TABLE OF AUTHORITIES
`
`Diesel v. Town ofLewisboro, 232 F.3d 92, 103, ...................................... ..3
`
`This is Me, Inc. v. Taylor, 157 F.3d 139, 142 ........................................... ..3
`
`Abercrombie & Fitch, 537 F.2d at 9 .................................................... . .23
`
`American Cyanamid Corp. v. Connaught Lab., Inc., 800 F.2d 306 ................ ..25
`
`Thompson Med. Co., Inc., 753 F.2d at 216 ............................................. ..25
`
`Ringling Bros.—Barnum & Bailey Combined Shows, Inc. v. B.E. Windows Corp.,
`937 F. Supp. 204 ........................................................................... ..26
`
`Bristol-Myers Squibb Co. v. McNeil P.P.C., Inc., 973 F.2d 1033, 1040 .......... ..29
`
`Centaur Communications, Ltd. V. A/S/M Communications, Inc.,
`830 F.2d 1217,1221 ...................................................................... ..29
`
`20th Century Wear Inc., v. Sanmark Stardust Inc., 747 F.2d 81, 90
`470 U.S. 1052 .............................................................................. ..29
`
`Ralston Purina Co. v. Thomas J. Lipton. Inc., 341 F. Supp. 129, 134 ............. ..29
`
`Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 ................ ..3O
`
`LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 78 .................................. ..30
`
`RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1059 ......................... ..30
`
`Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 ...................... ..30
`
`Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296,300
`
`CES Publishing Corp., 531 F.2d at 13 .................................................. ..30
`
`Holzapfel’s Compositions Co. v. Rahtjen’s Am. Composition Co
`183 U.S. 1, 9, 22 S.Ct. 6, 8-9, 46 L.Ed. 49 ............................................. ..31
`
`Rubens v. Hamptons Locations, Inc., Cancellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`W.T. Rogers Co. v. Keene, 778 F.2d 334, 339 ........................................ ..31
`
`Kellogg Co. v. National Biscuit Co.,_305 U.S. 111, 59 S. Ct. 109, 83 L.Ed. 73....31
`
`Spang v. Watson, 92 U.S.App.D.C, 266, 205 F. 2d 703,346,
`346 U.S. 938, 74 S.Ct. 378, 98 L.Ed. 426 ............................................. ..31
`
`Blisscraft ofHollywood v. United Plastic Co., 189 F.Supp. 333 , 294 F.2d 694. . .31
`
`McGregor-Doniger, Inc. v. Drizzle, Inc. 599 F. 2d 1126, 1133 ..................... ..31
`
`Sunrise Home Juices, Inc. v. Coca—Cola Co., 220 F. Supp. 558, 559, 561... . .......32
`
`Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855,862,.....'. ........ ..32
`
`Ives Laboratories, Inc. v. Darby Drug Co., 455 F.Supp. 939 (E.D.N.Y.),
`afl'd, 601 F.2d 631 ................................................
`....................... ..35
`
`Streetwise Maps, Inc. v. Vandam. Inc., 159 F.3d 739, 744 ......................... ..35
`
`Ideal World Mktg., Inc., 15 F.Supp.2d at 244, afl’d, 182 F .3d 900 ................. ..35
`
`Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1006 ................... ..37
`Allied Maintenance Corp. v. Allied Mechanical, Inc., 42 N. Y.2d 538, 399
`N.Y.S.2d 628, 369 N.E.2d 1162, 198 U.S.P.Q. 418, 422 ............................ ..37
`
`Exquisite Form Industries, Inc. v. Exquisite Fabrics ofLondon,
`378 F. Supp. 403, 410 ..................................................................... ..37
`Harlequin Enterprises, Ltd. v. Gulf& Western Corp., 644 F.2d 946.............. ..37
`
`R./R Foods, Inc. v. White Rock Corp., 603 F.2d 1058 ............................... ..37
`
`P.F. Cosmetique, S.A. v. Adinnetonka, Inc., 605 F. Supp. 662 ...................... ..37
`
`Cuisinarts, Inc. v. Robot-Coupe Int. Corp., 580 F.Supp. 634, 638 ........................... ..41
`
`TakeCare Corp. v. Takecare of Oklahoma, Inc., 889 F .2d 955, 957 ................ ..41
`
`Dessert Beauty, Inc. v. Fox 568 F.Supp.2d 416 ............................. ..' . . . . . . . . ..41
`
`‘Rubens v. Hamptons Locations, Inc., Canéiellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`Something Old, 1999 WL 1125063, at *7 .............................................. ..41
`
`Wonder Labs, Inc. v. Procter & Gamble Co., 728 F.Supp. 1058, 1064 ........... ..41
`
`Lemme v. NBC., Inc. 472 F.Supp.2d 433 E.D.N.Y, 2007 ............................ ..42
`
`Playtex Pr0ds., Inc., 390 F.3d at 166; cf Lang, 949 F.2d at 584 ................... ..43
`
`Lang, 949 F. 2d at 584 ..................................................................... ..43
`
`www. Pharmaceutical Co., 984 F.2d at 575 ........................................... ..43
`
`KP Permanent Make-Up v. Lasting Impressions, Inc. 15 U.S.C ................... ..47
`
`Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 536 ................. ..50
`
`Lucent Info. Mgmt., Inc. v. Lucent Tech., Inc., 986 F.Supp. 253, 259 ............. ..50
`
`In re Fanelli, 263 B.R. 50, 58 (Bankr.N.D.N.Y.2001) .............................. ..54
`
`Boguslavsky v. Kaplan, 159 F.3d 715, 719 (2d Cir.1998)) .......................... ..54
`
`Traguth v. Zuck, 710 F.2d 90, 95 (2d Cir.1983) ...................................... ..54
`
`Horton v. Trans WorldAirlines CorQ., 169 F.R.D. 11, 16 §E.D.N.Y.19961, ..... ..54
`
`Rubens v. Hamptons Locations, Inc., Canfiéllation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`STATUTES
`
`15 US. C. §I125(a') .............................................. ..1,16,19,20,42,44,46,53
`
`15 U.S.C.A. § 1051 ....................................
`
`.................................. ..,22
`
`15 U.S.C. § 10520? ................................................................... ..,,,,,,29
`
`I5 U.S.C. 111127 ......................
`
`................................................ ..,,,,50
`
`REFERENCE
`
`Restatement (Thim? of Unfair Competition § 14 comment a, at 57 ................ ..23
`
`Ralph H. Folsom & Larry L. Teply, Trademarked Generic Words
`89 Yale L.J 1323, 1328-29 .............................................................. ..31
`
`Google ..................................................................................... ..28
`
`Yahoo .; .................................................................................... ..28
`
`Rubens V. Hamptons Locations, Inc., Candéilation N0. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`HAMPTONS LOCATIONS, INC., and
`NANCY GRIGOR,
`t
`
`Plaintiffs, Appellees
`
`-against-
`
`Docket No 07-0486
`
`RICHARD RUBENS, BARBARA RUBENS, and
`DARRELL RUBENS, each individually and doing business
`As HAMPTON LOCATIONS,
`
`Defendants, Appellants
`___.._______.________________.______
`
`X
`
`PRELIMINARY STATEMENT
`
`Appellant Darrell Rubens appeals from the decision of Judge Hurley which
`
`determined on January 24, 2007 that the mark Hamptons Locations is descriptive
`
`and not generic, and one Jury verdict entered on January 30, 2007 that found that
`Darrell violated §l125(d) of the Lanham Act and awarded Plaintiff $1000.00 in
`
`statutory damages. Darrell also appeals the June 4, 2009 denial of his of his 50B
`
`motion.
`
`Appellants Barbara, Richard and Darrell appeal the decision of Judge Hurley
`
`dated February 17, 2004 which dismissed Rubens’ counterclaims.
`
`Rubens v. Hamptons Locations, Inc., Cancbllation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`JURISDICTIONAL STATEMENT
`
`The District Court had jurisdiction pursuant to the Lanham Act.
`
`Darrell’s appeal is from the January 24, 2007 decision of Judge Hurley, a
`
`Jury Verdict entered on January 30, 2007 and the denial of Darre1l’s 50B Motion
`
`entered on June 23, 2009. A Notice of Appeal was timely filed on February 12,
`
`2007.
`
`Barbara, Richard and Darrell’s appeal from an interlocutory order of Judge
`
`Hurley dated February 17, 2004. A Notice of Appeal was timely filed on March 8,
`
`2004.
`
`Amended Notice of Appeal was filed on June 23, 2009 which merges all of
`
`appeals.
`
`STATEMENT OF ISSUES PRESENTED FOR REVIEW
`
`The District Court determined that the mark Hamptons Locations is not
`
`generic. Appe1lee’s (“Grigor”) mark refers to the general class or category of her
`
`services and this term Hamptons Locations is so useful to businesses offering the
`
`same services that no amount of money poured into promoting customers‘
`
`association of generic terms with a particular source can justify depriving
`
`competing companies of the right to call their services by its name.
`
`Rubens v. Hamptons Locations, Inc., Caneellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`Because the Court classified Hamptons Locations descriptive, the Jury was
`
`given the task to determine if the mark had acquired Secondary Meaning as of July
`
`8, 1999. The Jury finding that it had acquired Secondary Meaning is in complete
`
`disregard of the established requirements set by existing case law which states that
`
`when a mark is deemed descriptive it is considered a ‘weak’ mark and Plaintiff has
`
`a ‘heavy burden’ in producing a preponderance of evidence to show it had acquired
`
`secondary meaning. The scant evidence presented by Grigor failed to meet this
`
`‘heavy burden’ and the Jury finding was not consistent with the lack of evidence
`
`presented at trial. The 2"d Circuit has consistently held that when there is such a
`
`complete absence of evidence supporting the verdict and when the jury's findings
`
`and the result could only be of sheer surmise and conjecture and that reasonable
`
`and fair minded men could not arrive at a Verdict against the moving party, then
`
`the judgment must be vacated. See Diesel v. Town ofLewisboro, 232 F.3d 92, 103,
`
`“A reversal of a judgment from a Jury verdict may be granted if the evidence is
`
`such that, without weighing the credibility of the witnesses or otherwise
`
`considering the weight of the evidence, there can be but one conclusion as to the
`
`verdict that reasonable persons could have reached." This is Me, Inc. v. Taylor, 157
`
`F.3d 139, 142.
`
`The District Court on February 17, 2004, erred on summary judgment when
`
`it dismissed Rubens’ counterclaims stating that Defendants did not plead with the
`
`Rubens v. Hamptons Locations, lnc., Canéellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`necessary particularity to make a prima facie case of abuse of process. Rubens’
`
`were representing themselves and Courts have consistently found that Pro se
`
`litigants should be afforded every reasonable opportunity to demonstrate that they
`
`have a valid claim, and, even when a litigant confuses various legal theories, the
`
`courts will scrutinize the claim to determine whether the facts alleged would
`
`support a different theory.
`
`Did the district court err when it determined that the mark Hamptons
`Locations was not generic?
`
`Did the Jury err in determining that the mark Hamptons Locations acquired
`secondary meaning as of July 8, 1999 and did the District Court err in
`upholding that determination?
`
`Did the Jury err when they determined that Darrell acted in bad faith and
`violated §l125(d) of the Lanham Act and awarded statutory damages of
`$1000.00 and did the District Court err in not vacating the jury’s verdict?
`
`Did the District Court err when it failed to dismiss all claims against all
`Defendants on summary judgment?
`‘
`
`Did the District Court err when it failed to grant Darrell’s 50a motion and
`allowed this case to go to a jury?
`
`Did the District Court err when it dismissed Rubens’ counterclaims?
`
`STATEMENT OF THE CASE
`
`This action by Grigor should have never been brought in Southampton
`
`Justice Court, where it originated, let alone the U.S. District Court. Grigor’s claims
`
`Rubens v. Hamptons Locations, Inc., Cancéllation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`had no basis in fact or law and were malicious and vexatious claims against the
`
`Rubens’ family. The hostility started as a dispute between Grigor and Richard for
`
`overtime due for the June 13, 2000 photo shoot. Grigor paid Richard $2,500.00 for
`
`the use of his Hamptons home but the overtime was never paid. Michael Griffith,
`
`(“Griffith”) husband and attorney for Grigor’s Hamptons Locations got outraged
`
`that Richard was calling his wife for payment of overtime and arguments ensued.
`
`Animosity surrounding this photo shoot gave Grigor the opportunity to twist facts
`
`and abuse the Court system for retaliation against the Rubens’ family.
`
`Richard and Barbara’s son, Darrell and his
`
`friends were exploring a
`
`prospective business venture to offer summer rentals of Hampton homes on the
`
`internet. They searched Network Solutions and found two names, Hampton
`
`Locations and Virtual Hamptons, which were both indicative of their new idea and
`
`on the advice of three of his partners, (who were attorneys), one of Darrell’s
`
`friends
`
`on
`
`July
`
`8,
`
`1999
`
`registered
`
`the
`
`alleged
`
`infringing
`
`domain
`
`wwwhamptonlocationscom under the corporation DSNY. After approximately
`
`one year, and much research, Darrell and his partners abandoned their venture,
`
`(A-194)
`
`Darrell’s parents, Barbara and Richard are in the interior and architectural
`
`design business since 1970 and their corporation (Messardiere) Design Quest, Ltd.
`
`Rubens v. Hamptons Locations, Inc., Cancéllation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`has a web site under the domain name www.dgny.com.1 Design Quest’s web site
`
`has a home page with tabs. The design work is displayed under a portfolio tab,
`
`biographies of Barbara and Richard are under the designer tab and under the
`
`location tab is their Hamptons home which has been offered for location shoots
`
`since 1984,2 (A-202).
`
`In April of 2000, after Darrell and his business partners abandoned their-
`
`venture, Darrell (thinking the domain www.hamptonlocations.com was indicative
`
`of his parents Hampton location), decided to link this domain address to his parents
`
`www.dgny.com website, (A-212). He searched Yahoo for location companies that
`
`listed under Hampton Locations and sent out a few e-mails April 13, 2000, which
`
`stated; “we rent our house out for photo film and commercial shoots, how can we
`
`list with you”, (E—46). As a result of this e—mail Grigor called Richard and booked
`
`the June 13, 2000 photo shoot at his Hamptons location. Richard was paid
`
`$2,500.00 but was never paid the overtime, (A—205).
`
`Grigor claims she wanted to list Richard’s Hamptons home and alleges that
`
`it was not Darrel1’s e—mail that had her call Richard for the photo shoot but instead
`
`she alleges that she left her business card taped to the door of his (summer)
`
`‘ Dqny is not to be mistaken or confused with DSNY
`2 The location page has information and contact numbers for Richard Rubens
`
`Rubens V. Hamptons Locations, Inc., Canéellation No. 92046486
`Exhibit B to Declaration of Mark N. Diller dated May 7, 2014
`
`

`
`she took these photos around May 22, 2000, (E-56), (A-276). Richard testified that
`
`he met Grigor for the first time at the June 13, 2000 photo shoot which she had
`
`arranged at his home, (A-207) The District Court, without any evidence or
`
`testimony from Grigor to support its conclusion, states in its decision of the 50B
`
`motion, (E-172) that;
`
`”the jury could have disbelieved him (Darrell) and inferred his prior
`knowledge based on the fact that his parents met with Grigor about her
`business just days before DSNY registered the offending name suggesting
`that one or both of Darrell’s parents communicated Plaintiffs domain name
`to Darrell. At the Very least the jury could have inferred that Darrell knew of
`plaintiffs domain name in April, 2000 when he sent Grigor the e—mail”.
`
`This far fetched and totally unsupported conclusion of the Court was
`
`certainly not consistent with any evidence