Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA338545
`ESTTA Tracking number:
`03/22/2010
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048998
`Plaintiff
`JonathanM.Kelly
`Duy Thai
`351 California Street, Suite 550
`San Francisco, CA 94104
`UNITED STATES
`duy@duythai.com
`Other Motions/Papers
`Duy Thai
`duy@duythai.com
`/duy thai/
`03/22/2010
`Kelly_CityStay Cancellation-PLED20100322Kelly's ACR reply brief.PDF ( 5
`pages )(31713 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
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92048998
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`Petitioner,
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`PETITIONER JONATHAN M.
`KELLY’S ACCELERATED CASE
`RESOLUTION (ACR) REPLY BRIEF
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`Registration No. 3,388,869
`Issued: February 26, 2008
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`JONATHAN M. KELLY,
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`v.
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`CITYSTAY HOTELS, LLC,
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`Registrant.
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`Registrant CityStay Hotels, LLC’s Accelerated Case Resolution (“ACR”)
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`brief makes it clear that its Registration No. 3,388,869 for CITYSTAY HOTELS must be
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`cancelled. CityStay Hotels, LLC (“CSH”) fails to refute the fact that it has never used the
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`mark on any hotel lodging, the service designated in the registration. Indeed, CSH’s brief
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`fails to indicate any goods or services the mark is being used with. Without use in
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`commerce, the registration is simply not valid and cannot remain on the Register.
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`CSH’s brief betrays profound confusion about three separate things:
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`constitutional interstate commerce, international classification, and goods and services
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`designation.
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`Interstate commerce provides the constitutional basis for Congress to
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`authorize the United States Patent and Trademark Office to regulate the national
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`registration of trademarks. Thus its broad interpretation, e.g., “all commerce that the
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`Congress may regulate.” However, a trademark registration cannot be maintained merely
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`through use in commerce – any commerce – that Congress may regulate. The use must be
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`made on the goods or services actually designated in the trademark registration.
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`PETITIONER JONATHAN M. KELLY’S ACCELERATED CASE RESOLUTION (ACR)
`REPLY BRIEF - Cancellation No. 92048998
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`The international classification of goods and services organizes the
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`universe of goods and services for administrative and ministerial purposes but does not
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`confer any substantive rights and does not affect the interpretation of the goods or
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`services actually designated by an applicant. Here, there is no dispute that CSH’s
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`designated service, hotel lodging, falls under International Class 43. The international
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`classification system therefore has no bearing on the issues in this cancellation
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`proceeding.
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`To the extent CSH’s confusing argument could be understood, it seems to
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`be saying that because “hotel lodging” does not exist in the Acceptable Identification of
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`Goods and Services Manual (the “ID Manual”), CSH’s registration somehow gets to
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`subsume the entire breadth of International Class 43. This reasoning is completely wrong:
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`The listing is not exhaustive, but is intended to serve as a guide to both
`examining attorneys in acting on applications and to filers in preparing
`applications. Using language directly from the ID Manual helps avoid
`objections by examining attorneys concerning “indefinite” identifications
`of goods or services; however, applicants must assert actual use in
`commerce or a bona fide intent to use the mark in commerce for the goods
`or services specified. Therefore, even with definite identification,
`examining attorneys may inquire as to whether the identification chosen
`accurately identifies the applicant’s goods or services.
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`http://www.uspto.gov/trademarks/resources/index.jsp (emphasis added). Thus the ID
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`Manual does not preclude a designation for “hotel lodging.” CSH cannot flee its “hotel
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`lodging” designation and fumble around the ID Manual to find some other as yet
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`indefinite, unspecified services on which to claim use in commerce.
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`The goods and services designation actually applied for and examined by
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`the Trademark Office is the only thing that matters. CSH admits that it voluntarily used
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`the word “lodging” in its designation to “further define the activity scope/range of the
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`hotel services that CSH was conducting.” Registrant’s ACR Brief, p. 4. It never indicated
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`that this was an inaccurate description of its services. That being the designation under
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`which its application was examined, CSH is bound to it. The Examining Attorney did
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`PETITIONER JONATHAN M. KELLY’S ACCELERATED CASE RESOLUTION (ACR)
`REPLY BRIEF - Cancellation No. 92048998
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`nothing to suggest that CSH’s registration covered some indefinite range of “hotel
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`service(s)” conceivably spanning the entirety of International Class 43. Nor would he
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`have been permitted to do so under United States trademark law or the Trademark
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`Manual of Examining Procedures.
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`Once the fog of CSH’s confusion is dispelled, the Board is left with the
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`simple phrase “hotel lodging.” CSH has effectively conceded that it has never used the
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`mark in commerce for “hotel lodging.” Indeed, CSH has not explained how it has used
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`the mark in commerce on any services whatsoever that CSH sold. On that basis alone,
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`Mr. Kelly’s petition for cancellation must be granted and nothing more need be said.
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`But CSH has gone further to cast reckless aspersions on Mr. Kelly and to
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`make a veiled threat to bombard the Board with future meritless proceedings. Though the
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`irrelevance and impropriety of such comments should be transparent, petitioner Kelly
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`must clarify the record. First, his standing is unchallenged. The Trademark Office has
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`suspended his application, citing CSH’s registration, and that is the only standing Mr.
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`Kelly needs to seek cancellation. The statements referenced in Joint Stipulated Facts 15
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`through 17 were made through Mr. Kelly’s previous counsel and not under penalty of
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`perjury.1 And of course, they are entirely irrelevant to the standing issues in this
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`cancellation proceeding: The Examining Attorney apparently rejected them, forcing Mr.
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`Kelly to petition for cancellation.2
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`More disturbing is CSH’s threat of “weighing down the TTAB with more
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`oppositions and cancellations toward Mr. Kelly, should he be awarded cancellation in this
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`proceeding.” Though it was not necessary for Mr. Kelly to argue fraud in this ACR
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`1 Moreover, at the time Mr. Kelly’s previous attorney submitted those statements, CSH’s
`application was for CITISTAY. It amended the mark to CITYSTAY HOTELS on
`September 27, 2007.
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` 2
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` There is also nothing wrong in Mr. Kelly’s use of the “tm” designation on his website
`and nothing to prevent a 1(b) applicant like himself to claim harm and standing in a
`cancellation proceeding. Registrant’s ACR Brief, p. 6.
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`PETITIONER JONATHAN M. KELLY’S ACCELERATED CASE RESOLUTION (ACR)
`REPLY BRIEF - Cancellation No. 92048998
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`procedure, he may be forced to prove fraud in a future civil lawsuit if CSH continues to
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`use its false application – which was filed with legal advice (Joint Stipulated Fact No. 10)
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`– and invalidly maintained registration to cause harm to Mr. Kelly. “Any person who
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`shall procure registration in the Patent and Trademark Office of a mark by a false or
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`fraudulent declaration or representation, oral or in writing, or by any false means, shall be
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`liable in a civil action by any person injured thereby for any damages sustained in
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`consequence thereof.” 15 U.S.C. § 1120. While this would compensate Mr. Kelly for the
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`harm done by CSH, it would unfortunately not compensate the Board for wasted effort in
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`future frivolous filings by CSH. Mr. Kelly therefore sincerely hopes that CSH would not
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`pursue this foolish course.
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`Nevertheless, CSH’s threat is not a basis for denying Mr. Kelly the
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`cancellation that the facts and law mandate. Petitioner respectfully requests that
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`Registration No. 3,388,869 be immediately cancelled.
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`Respectfully submitted,
`/duy thai/
`Duy Thai
`351 California Street, Suite 550
`San Francisco, California 94104
`Tel: 415 296-9927
`Fax: 415 230-5779
`duy@duythai.com
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`Attorney for Petitioner
`Jonathan M. Kelly
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`DATED: March 22, 2010
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`PETITIONER JONATHAN M. KELLY’S ACCELERATED CASE RESOLUTION (ACR)
`REPLY BRIEF - Cancellation No. 92048998
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`PROOF OF SERVICE
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`I declare that I am employed in the City and County of San Francisco,
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`California. My address is 351 California Street, Suite 550, San Francisco, California
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`94104. I am over the age of eighteen years and am not a party to the within-entitled cause
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`of action or proceeding.
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`Today, I served the attached document:
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`PETITIONER JONATHAN M. KELLY’S ACCELERATED CASE
`RESOLUTION (ACR) REPLY BRIEF
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`by causing a true and correct copy of the above to be placed, pursuant to 37 C.F.R.
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`§ 2.119, in the United States Postal Service by first-class mail, at San Francisco,
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`California, in a sealed envelope with sufficient first-class postage prepaid, addressed as
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`follows:
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`Gregory J. Tubeck
`CityStay Hotels, LLC
`P.O. Box 4668 #18985
`New York, New York 10163-4668
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`I declare under penalty of perjury under the laws of the United States that
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`the foregoing is true and correct and that this declaration was executed on March 22,
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`/duy thai/
`Duy Thai
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`2010.
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`PETITIONER JONATHAN M. KELLY’S ACCELERATED CASE RESOLUTION (ACR)
`REPLY BRIEF - Cancellation No. 92048998