Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA242647
`ESTTA Tracking number:
`10/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048271
`Plaintiff
`Rhino Linings USA, Inc.
`David A., Harlow
`Nelson Mullins Riley & Scarborough LLP
`4140 Parklake AvenueGlenLake One, Suite 200
`Raleigh, NC 27612
`UNITED STATES
`david.harlow@nelsonmullins.com
`Opposition/Response to Motion
`Joseph S. Dowdy
`joe.dowdy@nelsonmullins.com, nancy.childers@nelsonmullins.com,
`david.harlow@nelsonmullins.com
`/Joseph S. Dowdy/
`10/14/2008
`RHINO--Response_in_Opposition_to_Motion_to_Suspend.pdf ( 21 pages
`)(152078 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 1,698,407
`Date of Issue: June 30, 1992
`
`RHINO LININGS USA, INC.,
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`Petitioner,
`
`vs.
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`RAPID RACK INDUSTRIES, INC.,
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`Applicant.
`
`\}\}\}\}\}\}\}%
`
`Cancellation No. 92048271
`
`PETITIONER’S RESPONSE IN OPPOSITION TO MOTION
`
`TO SUSPEND
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`NOW COMES Petitioner Rhino Linings USA, Inc. (“Petitioner”), by and through the
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`undersigned counsel, and respectfully submits this Response in Opposition to the Motion to
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`Suspend (Doc. No. 12) filed by Registrant Rapid Rack Industries, Inc. (“Rapid Rack”).
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`INTRODUCTION
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`This matter is before the Board on a Motion to Suspend (Rapid Rack’s “Motion” or the
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`“Motion to Suspend”) filed by Rapid Rack nearly a year into the litigation of this cancellation
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`action, at the very end of the discovery period, on the eve of Petitioner filing a motion for
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`summary judgment, and when the testimony period has almost begun. Rapid Rack’s Motion
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`also comes at a time when Rapid Rack faces a motion for sanctions for failing to respond
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`properly to written discovery concerning the abandonment of its RHINO RACK Mark of
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`Registration No. 1,698,407. The Motion to Suspend was also filed only two days before a
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`Rule 30(b)(6) deposition for which Rapid Rack refused to appear and testify on all of the
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`noticed topics,
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`resulting in Petitioner
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`filing a
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`second motion for
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`sanctions.
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`These
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`circumstances explain why Rapid Rack seeks a suspension that is especially inappropriate in
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`the context of a cancellation proceeding and that is almost never requested by a party in the
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`position of defendant (as Rapid Rack is in this case).
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`Distilled to its essence, Rapid Rack’s Motion to Suspend is a thinly veiled effort to
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`obtain a lengthy, expensive, and unnecessary redo of the present cancellation action in another
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`forum to avoid the consequences of Rapid Rack’s multiple violations of this Board’s discovery
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`rules and to avoid the consequences of losing this cancellation action because Rapid Rack has
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`no evidence of use in the relevant time period. However, there simply is no good cause to
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`delay the present cancellation and to allow Rapid Rack a “get out of jail free” card for its
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`discovery—related misconduct in this proceeding before the Board.
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`Further, given the state of the evidence, the Board should consider Petitioner’s soon—to—
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`be—filed motion for summary judgment and should enter judgment in favor of Petitioner as a
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`matter of law. As this relief would effectively end both the present cancellation and the
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`litigation Rapid Rack recently filed in California, judicial economy and fairness would be well
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`served by proceeding with the present cancellation.
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`Rapid Rack’s delay—related filings are to be distinguished from routine requests to
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`suspend, which generally are made in the early stages of a proceeding before the Board in an
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`effort to prevent duplicative efforts in separate but closely—related proceedings. Rapid Rack’s
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`Motion has been filed when this cancellation proceeding is nearing its conclusion, and it is
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`motivated only by Rapid Rack’s attempt to evade outcomes that Rapid Rack does not want—
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`sanctions
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`for
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`rules violations
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`and the
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`cancellation of
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`the RHINO RACK Mark—
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`notwithstanding that Rapid Rack has been unwilling or unable in almost a year to produce any
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`evidence that it has not abandoned that Mark during the relevant time period. Rapid Rack’s
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`hopes of evading sanctions for misconduct and avoiding judgment where it is warranted simply
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`do not
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`constitute proper
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`reasons
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`for
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`further delaying this
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`cancellation proceeding.
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`Accordingly, the Board should deny Rapid Rack’s Motion to Suspend.
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`STATEMENT OF PERTINENT FACTS
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`i.
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`This cancellation proceeding has been pending for a year, and even if there is a full-
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`blown trial on the merits, this cancellation will conclude within the next six months.
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`The present cancellation proceeding has been pending since October 15, 2007. This
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`action involves claims that Rapid Rack abandoned the RHINO RACK Mark and committed
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`fraud on the Trademark Office in a declaration of use submitted in 2002.
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`There are seven days remaining in the discovery period.1 The testimony period for
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`Petitioner begins on December 21, 2008. Rapid Rack’s testimony period begins on February
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`19, 2009. The period for rebuttal testimony closes on April 20, 2009. Thus, as of the date of
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`the filing of this response, there are at most six months remaining in this cancellation action.
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`ii.
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`There are already two potentially dispositive motions pending before the Board, and a
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`third is on the way.
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`Moreover,
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`it is quite unlikely that the present cancellation will require six additional
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`months. Petitioner has two potentially dispositive motions pending before the Board. The first
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`is
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`the First Motion for Sanctions
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`(Docs. Nos. 9,
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`12),
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`filed on September 5, 2008,
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`approximately twenty days before the filing of Rapid Rack’s Motion to Suspend. The First
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`Motion for Sanctions seeks judgment as a possible sanction for Rapid Rack’s failure to provide
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`1 In a March 25, 2008 Order, the Board set September 22, 2008 as the close of the discovery period. See Docs.
`Nos. 7-8. On September 15, 2008,
`the Board entered an Order suspending this action while it considered the
`Motion to Compel, Motion to Deem Requests for Admissions Admitted, and Motion for Sanctions (the “First
`Motion for Sanctions”). Unless the Board extends the time to take discovery,
`then there are only seven days
`remaining in the discovery period.
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`

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`accurate responses to written discovery. The second is the Second Motion for Sanctions
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`(Docs. Nos. 17, 18), filed on October 6, 2008, which seeks judgment as a sanction for Rapid
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`Rack’s willful refusal to appear and testify at a Rule 30(b)(6) deposition, in violation of the
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`Board’s Order of September 15, 2008 (Doc. No. 10).
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`A third dispositive motion is on the way. Specifically, Petitioner has almost completed
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`a motion for summary judgment, supporting affidavits, and a brief in support of summary
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`judgment, which it anticipates filing before the end of this week. Given that Rapid Rack has
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`not been able to produce any evidence on the core issue in this case—use of the RHINO RACK
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`Mark during the relevant time period—the Board is likely to grant summary judgment in favor
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`of the Petitioner.
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`iii.
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`Rapid Rack’s eleventh-hour federal filing is merely a defensive tactic, which provides
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`no basis for putting off an adjudication of the present cancellation.
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`a.
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`The timing of Rapid Rack ’s federal filing is suspect.
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`Using extensions of time and, ultimately, muddled responses to written discovery,
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`Rapid Rack sought to avoid disclosure of the fact that it abandoned its RHINO RACK Mark
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`during the relevant time period. Rapid Rack then sought to “play out the clock” by refusing to
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`provide a substantive Written response to the July 11, 2008 letter from counsel for Petitioner
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`addressing Rapid Rack serious discovery violations.
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`It was only after Petitioner forced a
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`response by filing the First Motion for Sanctions that Rapid Rack decided to resort to its
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`suspension strategy.
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`In accordance with Trademark Rule 2.l27(a), Rapid Rack’s response to the First
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`Motion for Sanction was due on or before September 25, 2008. However, rather than
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`preparing and filing a response to the motion, Rapid Rack spent the days just prior to its
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`response implementing a scheme which it hoped would prevent the Board from acting on its
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`refusals to provide discovery in this proceeding, as follows:
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`0
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`On September 23, 2008, Rapid Rack filed a complaint in the Central District of
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`California, parroting as a declaratory judgment claim the same issues that are already
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`present in this cancellation. Essentially, Rapid Rack seeks a “do—over” of the present
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`litigation to avoid the consequences of its discovery violations and to avoid the
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`consequences of losing this cancellation because Rapid Rack has no evidence of use
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`during the relevant time period.
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`0
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`On September 24, 2008, Rapid Rack filed a Motion to Suspend the present
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`cancellation, premised solely on the do—over strategy that motivated Rapid Rack to file
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`its September 23 complaint in federal court.
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`0
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`On September 25, 2008—the deadline for Rapid Rack to Respond to the
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`Combined Motions—Rapid Rack instead filed a motion for extension of time to respond
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`to the Combined Motions.
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`In its filing, Rapid Rack did not even attempt to make the
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`requisite showing of good cause.
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`Instead, Rapid Rack again asserted that its eleventh-
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`hour federal filing should constitute a “get out of jail free card” with respect to all
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`proceedings before the Board.
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`Rapid Rack’s federal filing and its Motion to Suspend also preceded by only three and
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`two days, respectively,
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`its scheduled Rule 30(b)(6) deposition. Rapid Rack’s Motion for an
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`Extension of Time unequivocally indicated that Rapid Rack was seeking to delay that
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`deposition and delay Rapid Rack’s response to the First Motion for Sanctions.
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`

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`b.
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`Rapid Rack’s federal complaint alleges no claims that will not be resolved by
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`the present cancellation.
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`Rapid Rack’s September 23, 2008 federal complaint purports to allege (1) infringement
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`of the RHINO RACK, based on alleged use of a RHINO STORAGE Mark by Rhino Linings
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`Corporation and/or a non—party to this litigation, RSI Home Products Manufacturing, Inc.; (2)
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`state law unfair competition by the same defendants, which is essentially a derivative theory of
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`the purported infringement claim; and (3) a declaratory judgment claim which essentially seeks
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`to allege a legally invalid “reverse cancellation” action.
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`The first two claims must fail as a matter of law if the Board finds that Rapid Rack
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`abandoned its mark, as there can be no infringement of a non—existent trademark, and an
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`abandoned trademark cannot form the basis of an unfair competition claim. The declaratory
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`judgment action is no more than Rapid Rack’s attempt to re—cast this cancellation proceeding as
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`a year—late declaratory judgment action in a forum of Rapid Rack’s selection, which directly
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`contravenes the well—established rule that a plaintiff may choose the forum in which it litigates.
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`c.
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`The District Court has not yet had an opportunity to consider whether to stay
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`the federal action.
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`Rapid Rack served its eleventh—hour complaint on September 25, 2008. The deadline
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`to answer or otherwise respond to that Complaint has not yet expired. Accordingly,
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`the
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`defendants in that action have not yet had an opportunity to test the sufficiency of the federal
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`complaint or to bring to the attention of the District Court the compelling reasons for staying
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`the federal action while the present cancellation proceeds. The Board should at least defer
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`ruling on the Motion to Suspend this prior pending action until after the District Court
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`determines whether to dismiss all or part of the federal action and/or whether to proceed with
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`it if it survives dismissal.
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`iv.
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`Rapid Rack ’s Motion is merely an attempt to avoid sanctions and summary judgment.
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`a.
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`Although Rapid Rack attempted to obscure the evidence, its written discovery
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`responses demonstrate that it abandoned the RHINO RACK Mark.
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`After requesting numerous extensions of time and requesting two stipulated suspensions
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`of the present cancellation, Rapid Rack finally served its putative responses to written
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`discovery on June 24, 2008 (more than seven months after the requests were served). Rapid
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`Rack’s responses consisted mostly of verbal gymnastics by which Rapid Rack sought to avoid
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`answering questions directly and to cover—up its lack of any evidence of use during the relevant
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`time period.
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`For example, Requests for Admissions 4, 9, 14, 19, 24, 29, and 34 sought admissions
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`that Rapid Rack cannot produce a specimen of use of Registrant’s Mark in commerce in each
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`year between 2000 and 2006.
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`In fact, Rapid Rack did not produce any such specimens of use
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`in response to requests for production of documents specifically requesting such specimens of
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`use. However, rather than make the admissions required by Rule 36 of the Federal Rules of
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`Civil Procedure, Rapid Rack answered each such request by stating, “[D]espite a reasonable
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`inquiry,
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`the information known or readily obtainable by Registrant is insufficient to enable
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`[Rapid Rack] to admit or deny the statement and [Rapid Rack] therefore denies the same.” If a
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`reasonable inquiry did not result in Rapid Rack locating such a specimen of use,
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`then the
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`correct response to each such request is “Admitted.”
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`Rapid Rack also tried to create the appearance of use in commerce during the relevant
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`time period by providing interrogatory responses that were flatly contradicted by Rapid Rack’s
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`own evidence. For example, in response to Interrogatory No. 1, Rapid Rack listed a series of
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`products that supposedly were distributed in connection with the RHINO RACK Mark, but its
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`Rule 30(b)(6) designee did not identify the majority of these products as being distributed in
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`connection with the RHINO RACK Mark. With respect to Interrogatories Nos. 6-13, which
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`sought the channels of distribution in which Rapid Rack distributed each of the products
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`identified in response to Interrogatory No.
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`1 and representative outlets through which Rapid
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`Rack sold such products, Rapid Rack provided limited information for only three products:
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`RR4805; GRL-100; and GRL-110. The first product was discontinued in 2002, and Rapid
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`Rack’s Rule 30(b)(6) designee had no knowledge of the third product ever being distributed in
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`connection with the Mark. With respect to the second product, Rapid Rack’s Rule 30(b)(6)
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`designee had no knowledge of GRL-100 being distributed in connection with the RHINO
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`RACK Mark at any time prior to 2007.
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`Rapid Rack was also unable to provide any
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`information related to supposed use of the RHINO RACK Mark in advertising of any kind
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`between 2000 and 2007 in response to Interrogatories Nos. 15-22.
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`In an attempt to avoid the
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`logical conclusion that it had abandoned the RHINO RACK Mark, Rapid Rack stated in its
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`responses to Interrogatories Nos. 6-13 and 15-22 that there may be other evidence that might
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`have been destroyed or rendered inaccessible.
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`In a similar vein, Rapid Rack has produced nearly 600 pieces of paper that do not
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`support its blanket assertion that it used the RHINO RACK Mark during the relevant time
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`period. The first 504 pages are invoices, mostly for Item No. RR4805 (identified in those
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`invoices as the “RINO RACK”), none of which actually show use of the Mark. At best, these
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`invoices demonstrate that sales of RR4805 stopped completely in 2002, with the exception of
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`one isolated sale to a Caribbean and Central American price club and two isolated sales to
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`Rapid Rack employees. There are no invoices for Item Nos. GRL-100 and GRL-110. The
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`remainder of the document production consists mostly of pictures of boxes, computer screen
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`print—offs, or order forms for package inserts that either substantially pre—date or substantially
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`post—date the relevant time period during which Rapid Rack abandoned its RHINO RACK
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`Mark. Rapid Rack’s document production contains no specimens of use from, and no other
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`evidence of use during, the relevant time period. Notwithstanding these gaping holes in its
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`document production, Rapid Rack stated in response to almost every request for production of
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`documents that it had produced “relevant, non—privileged documents,
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`if any, responsive to
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`[the] request [at issue].”
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`As a result of these and numerous other attempts by Rapid Rack to obscure the
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`evidence, Petitioner’s counsel sent a detailed letter on July 11, 2008 requesting that Rapid
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`Rack provide proper responses to correct its numerous discovery violations. Rapid Rack never
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`provided any substantive response to that letter until October 7, 2008, when it filed a response
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`in opposition to Petitioner’s First Motion for Sanctions.
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`It is plainly apparent that Rapid Rack
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`was hoping to avoid having to file any response at all,
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`inasmuch as it moved to extend—
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`indefinitely—the time for it to respond to the First Motion for Sanctions, based solely on the
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`fact that it had decided to file another lawsuit in California.
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`b.
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`Although Rapid Rack failed to appear and testify with respect to a large
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`number of 30(b)(6) deposition topics, its designee nonetheless provided strong
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`evidence of abandonment of the RHINO RACK Mark.
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`It appears that Rapid Rack’s eleventh—hour
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`filings were also intended to impede
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`Petitioner’s ability to take the Rule 30(b)(6) deposition of Rapid Rack. Rapid Rack Waited
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`until after the deposition had already commenced before informing Petitioner’s counsel that it
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`would not produce a designee for all of the topics in the 30(b)(6) deposition notice. This
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`failure to appear and testify resulted in the filing of Petitioner’s Second Motion for Sanctions.
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`Significantly, however, the designee who was present, Randy Taylor, testified that he
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`only had knowledge of the RHINO RACK Mark being used in 2007 and 2008, and then only
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`in connection with two products sold by Rapid Rack, namely item nos. GRL 100 and GRL
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`3012. He thought that the Mark possibly may have been used on item no. RR4805 between
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`1998 and 2003, but had no knowledge of any use of the Mark for 2004, 2005, and 2006. With
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`respect to RR4805, he testified that the only basis for his belief that RR4805 used the RHINO
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`RACK Mark between 1998 and 2003 was his review of certain screenshots from the
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`company’s computer sales system. These screenshots were presented as exhibits during the
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`deposition, but only show that an item no. RR4805 was sold in certain quantities between 1998
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`and 2003 and that it was designated in the computer system as “RINO RACK.” Mr. Taylor
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`testified that between 1998 and 2008 he did not know whether RR4805 actually bore the
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`RHINO RACK Mark, and he was unsure whether RR4805 bore a “RINO RACK” tagline
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`instead of the RHINO RACK Mark.
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`Indeed, according to Mr. Taylor, his belief that RR4805
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`used the RHINO RACK Mark was based solely on the existence of the “RR” designator and
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`the “RINO RACK” label on the computer screenshot. Stated simply, Mr. Taylor testified that
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`he was completely unaware of any non—speculative evidence of actual use of the RHINO
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`RACK Mark in commerce by Rapid Rack for any time period prior to 2007. Mr. Taylor
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`further testified that he was unaware of Rapid Rack advertising its products anywhere other
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`than on Internet websites, and he was not aware of whether the websites owned by Rapid Rack
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`contained the RHINO RACK Mark. This was despite the fact that Mr. Taylor and counsel for
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`Rapid Rack stated that Mr. Taylor was being tendered to testify regarding the following topics
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`listed in the Notice of Deposition:
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`[Rapid Rack]’s use of [the] Mark from January 1, 1998 to
`6.
`present[;]
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`[Rapid Rack]’s use of [the] Mark in commerce from
`7.
`January 1, 1998 to present[; and]
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`Whether [Rapid Rack] possesses a specimen of use which
`8.
`demonstrates use of [the M]ark in commerce in each calendar
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`year from 1998 to present[; and]
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`The products in connection with which [Rapid Rack] uses
`9.
`or has used [the] Mark in commerce from January l, 1998 to
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`present.
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`[Rapid Rack]’s use of [the] Mark in advertising, including
`17.
`any such use in periodicals,
`journals,
`radio and/or television
`advertisements, and Internet websites from January 1, 1998 to the
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`present.
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`v.
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`It would be unfair and prejudicial to Petitioner to suspend the present cancellation
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`based on Rapid Rack ’s improper defense tactics.
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`The “do over” sought by Rapid Rack will result in a significant delay to arrive at the
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`same point. For the United States District Court for the Central District of California,
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`the
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`median time interval from the filing of a complaint to disposition of a case ranges from 7.3
`
`months (for cases disposed of before pre—trial) to 18.4 months (for cases that are tried). See
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`Administrative Office of the United States Courts. 2007 Annual Report of the Director.‘
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`Judicial Business of the United States Courts, at Table C-5 (U.S. Government Printing Office
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`2008). At a minimum, the proceedings in the District Court likely would take longer than a
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`full—blown trial on the merits in the present cancellation.
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`Given the state of the evidence, the significant efforts that Petitioner has already made
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`to conduct discovery of Rapid Rack, and the significant cost to Petitioner of prosecuting this
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`cancellation, a post hoc “do over” at this point would unfairly prejudice Petitioner. Rapid
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`Rack’s desire to delay answering for its discovery failures and confronting the strong evidence
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`of abandonment does not constitute good cause to suspend this action. Rather,
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`the Board
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`11
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`

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`should proceed to rule on the First and Second Motions for Sanctions. Further, in all other
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`respects, this action—which has now been pending for a year and which has almost reached the
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`testimony period—should move forward, as a ruling in favor of Petitioner would resolve all
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`disputes between the parties concerning the abandonment of the RHINO RACK mark and
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`Rapid Rack’s fraud on the United States Patent and Trademark Office.
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`LEGAL ARGUMENT
`
`I.
`
`The Board has broad discretion to reject Rapid Rack’s attempt to procure a
`suspension of this cancellation, which is based solely on the “do over” litigation
`strategy that Rapid Rack hopes to employ.
`
`The Board has broad discretion to deny Rapid Rack’s improper request for suspension.
`
`TBMP § 5l0.02(a) (“Suspension of a Board proceeding pending the final determination of
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`another proceeding is solely within the discretion of the Board. ”) (emphasis added). The
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`Board should exercise that discretion to prevent Rapid Rack from refusing to answer for its
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`rules violations in this proceeding and to prevent Rapid Rack from evading disposition of this
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`cancellation proceeding to the prejudice of Petitioner.
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`Indeed, the Board has declined to allow a discretionary suspension to a respondent who
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`sought to employ the very tactics which Rapid Rack now seeks to pursue. See, e. g., Martin
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`Beverage Co. v. Colita Beverage Corp., 169 U.S.P.Q. 568 (TTAB 1971).
`
`In Martin Beverage
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`C0., the respondent in a cancellation proceeding argued that it should not be sanctioned for
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`discovery violations—including the willful
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`failure to appear and testify at a discovery
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`deposition—because respondent had initiated separate litigation and had sought to suspend the
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`cancellation in order to avoid having to respond to discovery. The Board flatly rejected that
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`argument:
`
`12
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`

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`the Trademark Trial and Appeal Board
`that
`[T]he argument
`automatically suspends proceedings when civil
`litigation is
`pending between the parties
`involved in an inter partes
`proceeding is manifestly incorrect. Suspension under
`such
`circumstances is granted only after both parties have been heard
`on the question and the Board has carefully reviewed the
`pleadings in the civil suit to determine if the outcome thereof will
`have a bearing on the question of the rights of the parties in the
`Patent Office proceeding. Manifestly,
`this does not constitute a
`policy of automatically suspending a Patent Office proceeding
`when civil litigation is pending between the parties. Furthermore,
`a proceeding before the Board may be suspended only by order of
`the Board and neither the parties nor their attorneys have the
`authority to hold a proceeding to be in suspension.
`
`Id. at 570.
`
`In the same opinion, the Board granted petitioner’s pending motion for judgment as
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`a sanction for Respondent’s willful refusal to appear and testify in accordance with the Board’s
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`directions.
`
`Id. at 570-71.
`
`The present petitioner respectfully submits that the Board should follow the precedent
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`established by the Martin Beverage C0. case in all respects. Namely,
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`the Board should
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`exercise its discretion to proceed with the present cancellation, which is already well
`
`underway, and the Board should enter judgment as a sanction for Rapid Rack’s repeated failure
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`to comply with its discovery obligations in the present cancellation (including the willful
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`refusal to appear and testify as to multiple designated topics at a Rule 30(b)(6) discovery
`
`deposition).
`
`II.
`
`The usual preconditions for suspension are not present here: Petitioner has not
`sought
`the suspension, and a ruling in favor of Petitioner
`in the present
`cancellation would obviate the need for any further litigation between the parties.
`
`In the vast majority of cases, the petitioner seeks the suspension of proceedings before
`
`the Board because petitioner has filed separate federal
`
`litigation, but nonetheless seeks to
`
`preserve its right to proceed before the Board by filing before the deadline to file a Board
`
`13
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`

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`proceeding expires. See, e. g., Other Telephone Co. v. Connecticut National Telephone Co.,
`
`181 U.S.P.Q. 861 (TTAB 1974), petition denied, 181 U.S.P.Q. 779 (Comm’r 1974) (granting
`
`petitioner ’s request for suspension of TTAB proceeding where petitioner filed a motion to
`
`suspend proceedings pending the outcome of a civil suit
`
`in federal district court filed by
`
`petitioner against respondent
`
`the previous day); General Motors Corp. v. Cadillac Club
`
`Fashions Inc., 22 U.S.P.Q.2d 1933 (TTAB 1992) (granting petitioner’s request for suspension
`
`of TTAB proceeding where petitioner brought a civil action in federal district court to cancel
`
`respondent’s trademark registrations after
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`initiating a cancellation proceeding before the
`
`TTAB); Whopper—Burger,
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`Inc. v. Burger King Corp., 171 U.S.P.Q. 8095 (TTAB 1971)
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`(granting petitioner ’s motion for suspension after the petitioner filed an action against the
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`respondent in federal district court).
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`That is not the case here.
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`In the present case, Petitioner seeks to proceed before the
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`Board.
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`Indeed, that is the only forum in which Petitioner could have brought its cancellation
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`in the first instance:
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`“ [A] court can hear cancellation claims only if joined with some other
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`independent grounds for declaratory judgment, but if the only claim for declaratory judgment
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`is one that could be heard by the administrative tribunals of the Patent and Trademark Office,
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`the court should defer to the administrative process as the U.S. Supreme Court has required.”
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`THOMAS J. MCCARTHY, 6 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, AT §
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`32:54 (Thomson/Reuters West 2008) (citing Public Service Comm ’n v. Wycofi‘ Co. 344 U.S.
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`237 (1952).
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`Further, Rapid Rack cannot permissibly bring a declaratory judgment action merely to
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`circumvent a lawsuit that is already underway: “‘[W]here the defendant’s [lawsuit] .
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`.
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`. has
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`begun,
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`it serves no sensible end to permit a plaintiff to .
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`.
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`. start the proceedings for an
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`autonomous declaration that he has a good defense to his opponent’s pending .
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`.
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`. action.”’
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`American Auto. Ins. Co. v. Freundt, 103 F.2d 613, 618 (7th Cir. 1939) (quoting Borchard,
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`“Declaratory Judgments,” p. 109.), cited favorably in Brillhart v. Excess Ins. Co., 316 U.S.
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`491, 494 (1942); Wilton v. Seven Falls Co., 515 U.S. 277, 279-84 (1995).
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`Likewise, under the prevailing decisional authority from the Supreme Court of the
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`United States, Rapid Rack cannot cause what
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`is essentially the “removal” of the present
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`cancellation to another forum by bringing a declaratory judgment action which merely asserts
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`Rapid Rack’s belief that it has valid defenses to a cancellation action. See Holmes Group, Inc.
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`v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002) (holding that a plaintiff cannot
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`obtain federal jurisdiction over an action by seeking a declaratory judgment that it has not
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`committed patent
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`infringement merely because doing so would trigger a compulsory
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`counterclaim for patent infringement); Wycofl Co., 344 U.S. at 248 (“Respondent here has
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`sought to ward off possible action of the petitioners by seeking a declaratory judgment to the
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`effect that he will have a good defense when and if that cause of action is asserted. Where the
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`complaint in an action for declaratory judgment seeks in essence to assert a defense to an
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`impending or threatened state court action, it is the character of the threatened action, and not
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`of the defense, which will determine whether there is federal—question jurisdiction in the
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`District Court. ”).
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`Moreover, a suspension pending disposition of another action is only appropriate if the
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`parties in a case pending before the Board “are involved in a civil action which may have a
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`bearing on the Board case.” TBMP § 510.02(a). The rationale for such a suspension is that,
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`if there is a dueling action in federal district court, “the decision of the federal district court is
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`

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`often binding upon the Board, while the decision of the Board is not binding upon the court.”
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`Id. These preconditions simply are not present here.
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`From a timing standpoint alone, Rapid Rack’s California lawsuit has no potential to
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`impact the present cancellation.
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`The present cancellation has been pending since October
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`2007. Unless the Board orders otherwise, then the discovery period is essentially concluded.
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`Even assuming that summary judgment is not entered in favor of Petitioner (which is unlikely
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`given that Rapid Rack has produced no evidence),
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`the entire cancellation proceeding is
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`scheduled to end on April 20, 2009, only six months from now.
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`(See Docs. Nos. 7 and 8).
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`Similarly, with respect to substantive issues,
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`the federal lawsuit will not affect the
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`outcome of the present cancellation action. To the contrary, if the Board cancels the RHINO
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`RACK Mark,
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`then Rapid Rack will have no valid claims for
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`infringement and unfair
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`competition in the Federal action which it recently initiated.
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`III.
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`The present cancellation is the prior pending action, and Rapid Rack’s after-the-
`fact filing of another lawsuit near the conclusion of this cancellation merely to
`avoid sanctions and summary judgment does not justify a suspension.
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`Even assuming, arguendo,
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`that Rapid Rack has stated a valid declaratory judgment
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`claim in its recently—filed federal lawsuit, the present cancellation is the prior pending action
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`and should be heard first. The United States Supreme Court has made clear that an earlier-
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`filed action has priority over a later—filed related action regarding the same subject matter.
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`Kerotest Mfg. Co. v. C—0—Tw0 Fire Equipment Co., 342 U.S. 180 (1952).
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`In Kerotest Mfg. Co., a patent owner first sued a distributor in an Illinois district court
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`for patent infringement. Later,
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`the manufacturer (of whom the distributor was a customer)
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`brought a declaratory judgment action against the patent owner in a Delaware district court to
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`test the validity of the same patents. Noting that the manufacturer had an equal start in the
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`

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`race to the courthouse, the Supreme Court held that the Delaware action had to be stayed to
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`allow the earlier—filed action in Illinois to proceed.
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`Id. at 184; see also, e. g., Veryfine
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`Products, Inc. v. Phlo Corp., 124 F. Supp. 2d 16 (D. Mass. 2000) (the “first—to—file” rule, in
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`effect, allows the winner of a race to the courthouse to select the forum in which the contest
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`will be decided); American Tel. & Tel. Co. v. MCI Communications Corp., 736 F.Supp. 1294
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`(D.N.J. 1990) (if related proceedings are pending in two districts,
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`the proceeding filed first
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`takes precedence); American Horse Protection Asso. v. Lyng, 690 F. Supp. 40 (D.D.C. 1988)
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`(the court entered an injunction restraining the defendant from participating in litigation it had
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`initiated in another district court because the second litigation amounted to forum shopping);
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`Republic Telecom Corp. v. Telemetrics Communications, Inc., 634 F. Supp. 767 (D. Minn.
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`1986) (where a federal action in one district involves a claim that should be a compulsory
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`counterclaim in another federal suit already