Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA284560
`ESTTA Tracking number:
`05/18/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050777
`Defendant
`Falls Media LLC
`Falls Media LLC
`Apt. 11E, 565 Park Avenue
`New York, NY 10021
`UNITED STATES
`Other Motions/Papers
`Bobby A. Ghajar
`ghajarb@howrey.com
`/s/ Bobby A. Ghajar
`05/18/2009
`Notice of Motion and Motion to Suspend.pdf ( 88 pages )(4187913 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ZOBMONDO ENTERTAINMENT, LLC,
`
`Petitioner/Opposer,
`
`V.
`
`FALLS MEDIA, LLC,
`
`Registrant/Applicant.
`
`) NOTICE OF MOTION AND MOTION TO
`) SUSPEND PURSUANT TO 37 CFR § 2117(a)
`) and TBMP § 510.02(a)
`3 Cancellation No: 92050777
`) Serial No.: 78979939
`) Registration Date: June 17, 2008
`) Classes: 9, 16
`; Opposition No.: 91189805
`) Serial No.: 77616271
`) Published: March 24, 2009
`) Classes: 9, 38
`g OppositionNo.: 91189785
`) Serial No.: 77504513
`) Published: March 17, 2009
`) Class: 25
`) Opposed/Applicant Mark: WOULD YOU
`3
`RATHER. . .7
`
`TO: ZOBMONDO ENTERTAINMENT, LLC.
`
`PLEASE TAKE NOTICE that Registrant/Applicant Falls Media, LLC hereby moves the
`
`Trademark Trial and Appeal Board to suspend the above proceedings.
`
`This motion will be based on this Notice of Motion and Motion, the Memorandum of
`
`Points and Authorities, and the Declaration of Bobby A. Ghajar and Exhibits A—D, filed herewith
`
`and all evidence presented.
`
`Date:
`
`May 18, 2009
`
`DM__US:22 12021 7_l
`
`
`
`550 S. Hope Street, Suite 1100
`Los Angeles, CA 90071
`Telephone: (213) 892-1800
`
`Attorneys for Registrant/Applicant
`FALLS MEDIA, LLC
`
`

`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the foregoing “Notice of Motion and Motion to Suspend
`Pursuant to 37 CFR § 2117(a) and TBMP § 510.02(a)” was mailed by First Class Mail, postage
`prepaid to Lawrence Y. Iser, Kinsella Weitzman Iser Kump and Aldisert, LLP, 808 Wilshire
`
`Blvd., Suite 300, Santa Monica, CA 90401, on this 18th day of May, 2009.
`
`DM_US:221202l 7_1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`7S(E)S:lEiN.lPB£}JlB§SgiA61\g(:)O 37 CFR§
`
`)
`
`)
`
`) g
`
`Cancellation No: 92050777
`) Serial No.: 78979939
`) Registration Date: June 17, 2008
`Classes: 9, 16
`
`) ;
`
`Opposition No.: 91189805
`) Serial No.: 77616271
`) Published: March 24, 2009
`) Classes: 9, 38
`3 Opposition No.: 91189785
`) Serial No.: 77504513
`Published: March 17, 2009
`3 Class: 25
`3 Opposed/Applicant Mark: WOULD YOU
`)
`RATHER. . .?
`
`Petitioner/Opposer,
`
`V.
`
`FALLS MEDIA, LLC,
`
`Registrant/Applicant.
`
`Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), Registrant/Applicant Falls Media,
`
`LLC (“Falls Media”) hereby requests that the Trademark Trial and Appeal Board (“TTAB” or ~
`
`“Board”) suspend Cancellation No. 92050777, and Opposition Nos. 91189805 and 77504513
`
`until the final determination of the related appeal currently pending before the U.S. Court of
`
`Appeals for the Ninth Circuit.
`
`Factual Background
`
`Falls Media was formed by Justin Heimberg and David Gomberg (“Justin & Dave”) in
`
`2004 after Justin and Dave had worked together for several years. In 1997, Justin and Dave
`
`published a book called “Would You Rather .
`
`.
`
`. ? Over 200 Absolutely Absurd Dilemmas to
`
`Ponder.” The same year, Justin and Dave sought trademark protection for WOULD YOU
`
`RATHER. . .? in Classes 16 and 28 (books and comic strips; and card games and board games,
`
`respectively). Zobmondo Entertainment, LLC (“Zobmondo”) filed an opposition against the
`
`D1v1_us:2212o219_3
`
`

`
`application, which was later dismissed with prejudice. Falls Media timely filed extensions of
`
`time to file its Statement of Use, and perfected the application in Fall 2004. The USPTO
`
`awarded Falls Media U.S. Trademark Registration No. 2,970,830 on July 19, 2005 for the
`
`WOULD YOU RATHER. . .? mark in Classes 16 and 28.
`
`About a year after the USPTO issued to Falls Media the ‘830 registration, Falls Media
`
`sued Zobmondo for trademark infringement in the United States District Court, Southern District
`
`of New York. Falls Media, LLC et al. v. Zobmondoll Entertainment, LLC, et al. , S.D.N.Y. Case
`
`No. 06v428l (JSR). Zobmondo counterclaimed for cancellation of the 2,970,830 trademark on
`
`the basis that the mark is descriptive and lacks secondary meaning. Zobmondo also asserted a
`
`Section 1120 claim for damages by fraudulent procurement of the ‘830 registration. Falls
`
`Media’s New York case was consolidated with a case filed by Zobmondo in the Central District
`
`of California, which claimed trade dress and copyright infringement of a “Would You
`
`Rather. . .?” branded board game that Zobmondo created after Justin & Dave’s WOULD YOU
`
`RATHER. . .? books were published. Zobmondo Entertainment, LLC v. Falls Media, et al., C.D.
`
`Cal. Case No. CV06-3459 (JTLX). Zobmondo also counterclaimed for trademark infringement
`
`and unfair competition.
`
`In the consolidated action, both parties moved for summary judgment. Zobmondo
`
`Entertainment, LLC v. Falls Media, et al., C.D. Cal. Case No. CV07-0571 ABC (JTLX). The
`
`court granted summary judgment in favor of Falls Media, finding that Zobmondo’s trade dress
`
`and copyrights were not infringed. See Declaration of Bobby A. Ghajar (“Ghajar Decl.”),
`
`Exhibits A and D. The court also granted summary judgment to Zobmondo on Falls Media’s
`
`trademark infringement and unfair competition claims, and similarly ruled that Zobmondo’s
`
`trademark infringement and unfair competition claims against Falls Media should be dismissed.
`
`Id. The court further ordered Falls Media’s Trademark Registration No. 2,970,830 cancelled on
`
`2
`
`DM_US:22l202l9_3
`
`

`
`the basis of its finding that it is descriptive and lacked secondary meaning as of Zobmondo’s
`
`2002 release of a competitive “Would You Rather. . .?” board game (despite the pendency of
`
`Falls Media’s Class 28 application). Id. at 10. In a ruling on a later-filed summary judgment
`
`motion, the Court also dismissed Zobmondo’s Section 1120 Fraudulent Procurement claim. See
`
`Ghajar Declaration, Exhibit D.
`
`On November 6, 2008, Falls Media filed a Notice of Appeal to the U.S. Court of Appeals
`
`for The Ninth Circuit, appealing the district court’s ruling regarding its 2,970,830 trademark.
`
`Specifically, Falls Media appealed the court’s granting of Zobmondo’s motion for summary
`
`judgment on Falls Media’s claims of trademark infringement and Zobmondo’s counterclaim for
`
`cancellation of Falls Media’s WOULD YOU RATHER. . .? mark. See Ghajar Declaration,
`
`Exhibit A at page 2 (Notice of Appeal). The appeal is currently pending before the Ninth Circuit
`
`and has been assigned case No. 08-56831. See Id. , Exhibit B (Time Schedule Order and Order).
`
`At the request of Falls Media, the USPTO suspended the district court’s order regarding
`
`the cancellation of the ‘83O registration pending the Ninth Circuit Court of Appeals’ ruling on
`
`Falls Media’s appeal. See Motion to Suspend, Exhibit C (Letter from USPTO stating that no
`
`action will be taken until “any appeals have been concluded and any remands decided”).
`
`On June 17, 2008, a second trademark was issued to Falls Media, U.S. Trademark
`
`Registration No. 3,451,486, for the WOULD YOU RATHER. . .? mark in Classes 9 and 16
`
`(computer and television DVD games; and books, comic strips, and calendars, respectively).
`
`Falls Media also owns two other applications‘ pending before the USPTO for the WOULD YOU
`
`RATHER. . .? trademark: (1) an intent-to-use application covering “clothing, namely hats, caps,
`
`1 The second application (Serial No. 78/979,939), in Class 38, was filed by Imagination Holdings
`Pty, Ltd. Corp., who purchased Falls Media and its relevant IP rights in 2008. For ease of
`reference, the Registrant/Applicant will be referred to simply as “Falls Media” throughout this
`Motion to Suspend.
`
`3
`
`DM_US:22l202l9_3
`
`

`
`headwear and t—shirts” (Class 25); and (2) an intent-to-use application covering
`
`“telecommunication and mobile telecommunication devices” (Class 38). These filings are the
`
`subject of Zobmondo’s latest proceedings at issue in this motion.
`
`The Actions Should Be Suspended Pending Falls Media’s Appeal
`
`In its Petition to Cancel (“Petition”), Zobmondo asserts that Falls Media’s WOULD
`
`YOU RATHER. . .? mark, U.S. Trademark Registration No. 3,451,486, should be canceled
`
`because it is “merely descriptive in that the mark is an apt and common term used to describe
`
`goods the primary purpose of which is to present, communicate and/or pose ‘would you rather’
`
`questions.” Petition at 1] 16. Zobmondo makes the same arguments in its oppositions against
`
`Falls Media’s intent-to-use applications for the WOULD YOU RATHER. . .? mark covering
`
`clothing and telecommunication and mobile telecommunication devices.2 See Opposition No.
`
`9189805 at 11 16 and Opposition No. 91189785 at 1] 15 (the Petition and two oppositions are
`
`hereinafter collectively referred to as the “Actions”).
`
`In the Actions, Zobmondo attempts to bootstrap the district court’s order to cancel one
`
`WOULD YOU RATHER. . .? trademark as the basis for cancelling or opposing others. This is
`
`improper for at least two reasons: 1) the district court’s order does not determine the issue of
`
`descriptiveness or secondary meaning as to the goods and services or the filing dates of the
`
`newly challenged registration and applications; and 2) the district court’s order finding the
`
`WOULD YOU RATHER ...? mark (the ‘830 Registration) descriptive of board games and
`
`books, and ordering its cancellation, is currently on appeal. Significantly, the USPTO has
`
`suspended action on that very registration pending the Ninth Circuit’s ruling on Falls Media’s
`
`appeal. See Motion to Suspend, Exhibit C (Letter from USPTO stating that no action will be
`
`2 Separately, Falls Media reserves its right to challenge Zobmondo’s standing to oppose the two
`intent-to-use applications in Classes 25 and 38.
`
`4
`
`DM_US:22l20219_3
`
`

`
`taken until “any appeals have been concluded and any remands decided”). It follows that if Falls
`
`Media succeeds in its appeal, (proving that the USPTO properly concluded that the WOULD
`
`YOU RATHER. . .? mark is not descriptive, of books or board games and/or that Falls Media
`
`acquired secondary meaning in the mark) Zobmondo’s position that WOULD YOU
`
`RATHER. . .? registration and application is descriptive will necessarily fail. Like it did with
`
`Falls Media’s ‘830 registration, the USPTO should suspend the instant proceedings.
`
`The Determination of Falls Media’s Appeal Will Have A Direct Bearing on The
`Issues Before The Board
`
`When a party to a case pending before the Board is also involved in a civil action that
`
`may have bearing on the TTAB matter, the Board may suspend the proceeding until the final
`
`determination of the civil action. 37 CFR § 2.1l7(a); TBMP § 510.02(a). This is because “a
`
`decision by the United States District Court would be binding on the Patent Office whereas a
`
`determination by the Patent Office as to respondent’s right to retain its registration would not be
`
`binding or res judicata in respect to the proceeding before the federal district court.” Whopper-
`
`Burger, Inc. v, Burger King Corp_., 171 U.S.P.Q., 805, 807 (T.T.A.B. 1971).
`
`Falls Media and Zobmondo are both parties to the pending Ninth Circuit appeal, which
`
`involves the same mark at issue in the instant proceedings. In the appeal, the Ninth Circuit will
`
`determine whether the district court erred in its decision regarding Falls Media’s trademark
`
`rights with respect to the mark WOULD YOU RATHER. . .? for goods in Classes 16 and 28. If
`
`the Ninth Circuit reverses the district court’s order cancelling Registration No. 2,970,830,
`
`Zobmondo’s argument that Registration No. 3,451,486 should be canceled for reasons parallel to
`
`the district court’s order would be moot. Similarly, Zobmondo’s argument that the applications
`
`now the subject of Opposition Nos. 91189805 and 91189785 should be cancelled based on the
`
`DM__US:22 l 202 l 9__3
`
`

`
`district court’s holding would also become moot because Zobmondo’s arguments in the present
`
`Actions rely on the district court order.
`
`While the inverse is not true,3 it is clear that the Ninth Circuit’s determination will
`
`substantially affect the resolution of the issues before the Board. Thus, the present Actions
`
`should be suspended pending the outcome of the appeal. See The Other Tel. Co. v. Conn. Nat ’l
`
`Tel. Co., Inc., 181 U.S.P.Q. 125, 126-27 (T.T.A.B. 1974), petition denied, 181 U.S.P.Q. 779
`
`(Comm'r 1974). This would also be consistent with the USPTO suspension of action on the ‘830
`
`registration.
`
`For the foregoing reasons, pursuant to 37 CFR § 2117(a) and TBMP § 51 0.02(a),
`
`Registrant/Applicant Falls Media requests that the Board suspend the proceedings in
`
`Cancellation No. 92050777, and Opposition Nos. 91189805 and 91189785.
`
`Date:
`
`May 18, 2009
`
`Respectfully submitted,
`
`
`
`550 S. Hope Street, Suite 1100
`Los Angeles, CA 90071
`
`Attorneys for Registrant/Applicant
`FALLS MEDIA, LLC
`
`3 While a ruling in Falls Media’s favor would effectively moot Zobmondo’s arguments in the
`Actions, even if the Ninth Circuit Court of Appeals upholds the district court’s cancellation
`order, such a holding relating to the goods in the ‘830 registration would not simply carry over to
`the marks subj ect to the Actions.
`
`6
`
`DM_US :22 1 202 1 9_3
`
`

`
`CERTIFICATE OF SERVICE
`
`This is to certify that a copy of the foregoing “Notice of Motion and Motion to Suspend
`Pursuant to 37 CFR § 2117(a) and TBMP § 510.02(a)” was mailed by First Class Mail, postage
`prepaid to Lawrence Y. Iser, Kinsella Weitzman Iser Kump and Aldisert, LLP, 808 Wilshire
`
`
`
`BlVd.,Suite300,SantaMonica,CA90401,onthis 18thdayofMay,2009. K
`
`DM_US:22l20219_3
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ZOBMONDO ENTERTAINMENT, LLC,
`
`Petitioner/Opposer,
`V‘
`FALLS MEDIA’ LLC’
`Registrant/Applicant.
`
`Serial No.: 78979939
`
`) DECLARATION OF BOBBY A. GHAJAR IN
`) SUPPORT OF MOTION TO SUSPEND
`PURSUANT TO 37 CFR § 2117(a) and TBMP §
`) 510 02(a)
`)
`.
`3 Cancellation No: 92050777
`g Registration Date: June 17, 2008
`) Classes: 9’ 16
`g Opposition No.: 91189805
`) Serial No.: 77616271
`) Published: March 24, 2009
`) Classes: 9, 38
`3 Opposition No.: 91189785
`) Serial No.: 77504513
`Published: March 17, 2009
`3 Class: 25
`) Opposed/Applicant Mark: WOULD YOU
`3
`RATHER. . .?
`
`1, Bobby A. Ghajar, declare and state as follows:
`
`1.
`
`I am an attorney at law admitted to practice before this Court.
`
`I am an attorney at
`
`the law finn of Howrey LLP, counsel of record for Registrant/Applicant Falls Media, LLC.
`
`I
`
`have personal knowledge of the matters stated herein, and if called to testify, would testify
`
`competently thereto.
`
`I make this declaration in support of Registrant/Applicant Falls Media,
`
`LLC’s Motion to Suspend.
`
`2.
`
`Attached as Exhibit A is a true and correct copy of a Notice of Appeal to the
`
`United States Court of Appeals for the Ninth Circuit filed on November 6, 2008 in Case No.
`
`CV-06 03459 ABC (JTLX) Consolidated with Case No. CV07-0571 ABC(JTLx) in the matter of
`
`Zobmondo Entertainment LLC v. Falls Media LLC, Justin Heimberg, and David Gomberg, along
`
`with a copy of the U.S. District Court’s decision on the parties’ cross-motions for summary
`
`judgment.
`
`DM_US:22l34050_1
`
`

`
`3.
`
`Attached as Exhibit B is a true and correct copy of a Time Schedule Order issued
`
`by the United States Court of Appeals for the Ninth Circuit on November 7, 2008, Case No. 08-
`
`56831, in the matter of Falls Media, LLC, Justin Heimberg, and David Gomberg, Appellants, vs.
`
`Zobmoncio Entertainment, LLC, Appellee.
`
`4.
`
`Attached as Exhibit C is a true and correct copy of a letter dated December 10,
`
`2008 from the United States Patent and Trademark Office addressed to Alan S. Cooper, Esq. of
`
`Howrey, LLP stating that the USPTO will take no action in light of the pending appeal.
`
`5.
`
`Attached as Exhibit D is a true and correct copy of the Final Judgment entered on
`
`October 7, 2009 by Judge Collins.
`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true
`
`correct.
`
`Executed on ‘this 18th day of May, 2009, at Los Angeles, California.
`
`
`
`DM_US:22l34050_l
`
`

`
`EXHIBIT A
`
`

`
`Case 2:06-CV-03459-ABC-JTL
`
`Document 168
`
`Filed 11/06/2008
`
`Page 1 of4
`
`)—|
`
`*-‘@\O00\]O\LII-l>UJl\J
`
`-PU-)l\J
`
`r—Io—-t
`>—a>--r—A
`
`aar
`.
`o
`B bbyA Ghj
`SBN 198719
`E81 §3rIaI\:ic)n SBN 248050
`550 South Ho e Street, Suite 1100
`Los Angeles,
`alifornia 90071
`Telephone: 213) 892-1800
`Facsimile:
`(_ 13) 892-2300
`E-mail: gha]arb@hoWrey.com
`
`Alan M. Grimaldi (Admitted Pro Hac Vice)
`HOWREY LLP _
`1299 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`Telephone: 202) 783-0800
`Facsimile:
`( 02) 383-6610
`
`Attorneys _for Defendants/Counter-Claimants
`Falls Media LLC, Justin Heimberg, and
`David Gomberg,
`
`UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`ZOBMONDQ ENTERTAINMENT LLC
`a California 11m1ted liabili
`comgany and
`
`RANDALL HORN, an in ividua,
`
`Case No. CV-06 03459 ABC (JTLx)
`Consolidated with
`CASE NO. CV07-0571 ABC(JTLx)
`
`NOTICE OF APPEAL TO THE
`UNITED STATES COURT OF
`APPEALS FOR THE NINTH
`CIRCUIT
`
`P1aintiff/Counter-Defendants,
`
`V.
`
`FALLS MEDIA LLC, a New York
`limited liability compan , JUSTIN
`HEIMBERG, an ll’1dlVl ual; and DAVID
`GOMBERG, an individual;
`
`Defendants/Counter-Claimants.
`
`AND RELATED COUNTERCLAIMS
`
`AND CONSOLIDATED ACTION.
`
`DM_WUS:2l4027l8_l
`
`

`
`Case 2:06-cv-03459-ABC-JTL Document 168
`
`Filed 11/06/2008
`
`Page 2 of 4
`
`Falls Media LLC, Justin Heimberg, and David Gomberg, Defendants and
`
`Counter-Claimants herein, appeal to the United States Court of Appeals for the Ninth
`
`Circuit from the June 11, 2008 Order on Motion for Summary Judgment granting
`
`Zobmondo and Randall Horn’s motion for summary adjudication on Falls Media’s
`
`claims of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, trademark
`
`infringement under 15 U.S.C. § 1125(a), and common law trademark infringement and
`
`Zobmondo’s counter-claim for cancellation of Falls Media’s registration of the mark
`
`WOULD YOU RATHER. .
`
`. ?. Final judgment was entered in this action on August 11,
`
`2008.
`
`A Representation Statement is attached to this Notice, in compliance with Federal
`
`Rule of Appellate Procedure 12(b) and Ninth Circuit Rule 3-2(b).
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`ll
`
`>-I [\)
`
`Dated: November 6, 2008
`
`/s/ Bobby A. Ghajar
`Bobby A. Ghajar, Esq.
`Kelly W. Craven, Esq.
`HOWREY LLP
`
`550 South Hope Street, Suite 1400
`Los Angeles, CA 90071-2627
`(213) 892-1800
`(213) 892-2300 (fax)
`
`Alan M. Grimaldi, Esq. (admitted pro hac vice)
`HOWREY LLP
`
`1299 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 783-0800
`(202) 383-6610 (fax)
`
`Attorneys for Defendants/Counter-
`Claimants/Appellants
`
`DM__us;214o271s_1
`
`

`
`Case 2:06~Cv-03459-ABC-JTL Document 168
`
`Filed 11/06/2008
`
`Page 3 of 4
`
`REPRESENTATION STATEMENT
`
`The undersigned represents Falls Media LLC, Justin Heimberg, and David
`
`Gomberg, Defendants/Counter-Claimants and Appellants in this case. A service list
`
`identifying Plaintiffs’ and Appellees’ counsel of record is attached.
`
`Dated: November 6, 2008
`
`/s/ Bobby A. Ghajar
`Bobby A. Ghajar, Esq.
`Kelly W. Craven, Esq.
`HOWREY LLP
`
`550 South Hope Street, Suite 1400
`Los Angeles, CA 90071-2627
`(213) 892-1800
`(213) 892-2300 (fax)
`
`Alan M. Grimaldi, Esq. (admitted pro hac vice)
`HOWREY LLP
`
`1299 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 783-0800
`(202) 383-6610 (fax)
`
`Attorneys for Defendants/Counter-
`Claimants/Appellants
`
`'—‘®\OOO\lO\UI-|>L»Jl\JP-‘
`
`>-a»—a
`
`r-—-r—Ar-—I)—AUl-l>UJI\J
`
`—- ON
`
`DM~US;2 1 40271 8_l
`
`

`
`Case 2:O6—cv-03459-ABC—JTL Document168
`
`Fi|ed11/O6/2008
`
`Page-4 of 4
`
`SERVICE LIST
`
`U1-l>UJ[\.)v—*
`
`6
`
`Gregory Philip Korn, Esq.
`Lawrence Y. Iser, Esq.
`KINSELLA WEITZMAN ISER
`
`KUMP AND ALDISERT
`
`808 Wilshire Boulevard, Third Floor
`Santa Monica, CA 90401
`
`DM_US:21402718_l
`
`

`
`Case 2:06-cv-03459-ABC—JTL Document 168-2
`
`Filed 11/06/2008
`
`Page 1 of 60
`
`ATTACHMENT 1
`
`

`
`A'11('°V-7<’%l§e 2:06-cv—O3459—ABC—JTL Document 168-2
`
`Filed 11/06/2008 Pae 2 of 60 Page 1 of 3
`
`4}
`
`‘
`
`USCA DOCIGET # (IF KNOWN)
`
`
`
`’‘--5x.cfl'¢':
`P
`\\»»~.,.....«=- '
`
`UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
`CIVIL APPEALS DOCKETING STATEMENT
`
`PLEASE ATTACH ADDITIONAL PAGES IF NECESSARY.
`
`DISTRICT: Central
`
`JUDGE: Audrey B. Collins
`
`DISTRICT COURT NUMBER: CVO6—3ft59 ABC(JTLx) and CV07-571 ABC(JTLx)
`(Consolidated)
`DATE NOTICE OF APPEAL
`FILED: 11/5 /03
`
`IS THIS A CROSS-APPEAL?
`
`I
`
`I
`
`YES
`
`
`
`
`
`
`
`Zobmondo Entertainment, LLC
`
`TITLE IN FULU
`
`Falls Media LLC, Justin Heimberg and David
`Gomberg
` vs.
`Defendants/Counter—Claimants/Appellants
`
`
`
`IF THIS MATTER HAS BEEN BEFORE THIS COURT PREVIOUSLY,
`Plaintiff/Counter—Defendant/Appellee
`PLEASE PROVIDE THE DOCKET NUMBER AND CITATION (IF ANY):
`and Randall Horn
`
`Counter-DefendanflA o - ellee.
`BRIEF DESCRIPTION OF NATURE OF ACTION AND RESULT BELOW:
`
`
`
`
`
`Defendants/Counter—Claimants/Appellants ("FM") are the authors and developers of a popular line of WOULD YOU RATHER. ..?
`branded products, including books, games, and DVD games. On July 31, 1997, FM filed an “intent-to-use” (ITU) federal application to
`register the mark WOULD YOU RATHER. ..? for books and board games; -after complying with statutory requirements, FM was awarded
`Registration No. 2,970,830 in July 2005. From 1997 to 2008, FM marketed and sold hundreds of thousands of WOULD YOU
`RATHER...? products and licensed content and options for additional products. Aware of FM‘s prior use and trademark rights,
`Plaintiff/Counter-Defendants ("Zobmondo") developed board games under the identical mark WOULD YOU RATHER. ..? while FM's
`trademark application was pending. Zobmondo took FM’s trademark even after its own two “WOULD YOU RATHER” trademark
`applications were rejected by the Trademark Office because of FM’s prior rights and after losing its opposition to FM's application. In
`2006, FM filed a trademark suit against Zobmondo in the S.D.N.Y.; a day earlier, Zobmondo filed suit in the C.D. Cal. for copyright and
`trade dress infringement relating to its game. Both parties filed counterclaims, and the cases were consolidated in the C.D. Cal. On June
`ll, 2008, the district court dismissed Zobmondo’s copyright and trade dress claims on summary judgment, dismissed FM's trademark
`infringement claims (discussed below), and ordered cancellation of FM’s registration. On August 1 1, 2008, the district court dismissed
`Zobmondo’s counterclaim for fraudulent procurement (15 U.S.C. § 1120). Final Judgment was entered on October 7, 2008.
`
`
`
`
`
`
`
`
`
`
`
`
`PRINCIPAL ISSUES PROPOSED TO BE RAISED ON APPEAL:
`Appellants appeal the order granting in part Zobmondo’s motion for summary adjudication dismissing Appellants’ common law and
`
`federal claims of trademark infringement and cancelling its WOULD YOU RATHER...? trademark registration. More specifically,
`Appellants appeal the district court’s finding that its registered WOULD YOU RATI-IER...‘? trademark is descriptive (in spite of the U.S.
`
`Patent & Trademark Office’s findings to the contrary); that as a matter of law, the mark lacked secondary meaning; that the appropriate
`time to measure secondary meaning was in 2002 — before Appellants were legally and statutorily required to prove use, and not after its
`
`
`
`re istration issued . A o ellants also a - - al the order directin the U.S. Patent and Trademark Office to cancel FM’s reistration.
`
`
`PLEASE IDENTIFY ANY OTHER LEGAL PROCEEDING THAT MAY HAVE A BEARING ON THIS CASE (INCLUDE
`PENDING DISTRICT COURT POST JUDGMENT MOTIONS):
`
`Pending motion for attomeys' fees under the Copyright Act, brought by Defendants/Counter-Claimants/Appellants
`
`Pending motion for attomeys' fees under the Lanham Act, brought by Plaintiffs/Counter-Defendants/Appellees
`
`
`
`DOES THIS APPEAL INVOLVE ANY OF THE FOLLOWING:
`
`
`
`
`El Possibility of settlement
`__:l_ Likelihood that intervening precedent will control outcome of appeal
`
`
`
`E Likelihood of a motion to expedite or to stay the appeal or other procedural matters (Specify)
`
`
` E] Any other information relevant to the inclusion of this case in the Mediation Program
`
`VNlW.UCl|.¢0fll
`
`.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`Page 3 of 60 Page?-°f 3
`Filed 11/06/2008
`A-11(r°V-7¢9c9ée 2:06-cv-03459—ABC-JTL Document 168-2
`
`
` El
`
`
`
`
`
`Possibility parties would stipulate to binding award by Appellate Commissioner in lieu of submission to judges
`
`LOWER COURT INFORMATION
`
`_
`
`Amotican Logamal. Inc.
`www.USCounForIm.com
`
`

`
`Case 2:06—Cv—O3459-ABC-JTL Document 1682
`
`Filed 11/06/2008
`
`Page 4 of 60 Page?‘ °f3
`
`
`
`JURISDICTION
`
`
`
`DISTRICT COURT DISPOSITION
`
`FEDERAL
`
`APPELLATE
`
`TYPE OF JUDGMENT/ORDER APPEALED
`
`RELIEF
`
`K4
`
`FEDERAL
`
`QUESTION
`
`
`
`
`
`DEFAULT JUDGMENT
`
`DAMAGES:
`
`SOUGHT 3
`AWARDED $
`
`DISMISSAL/MERITS
`
`INJUNCTIONS:
`
` E
`_Q FINAL DECISION OF
`
`
`
`DISTRICT COURT
`
`
`
`
`DISMISSAL/JURISDICTION
`
`
`INTERLOCUTORY
`DECISION APPEALABLE
` SUMMARY JUDGMENT
`AS OF RIGHT
`PRELIMINARY
`
`
`_El_ DIVERSITY _E_I
`
`_[_'l_ OTHER
`(SPECIFY):
`
`
`
`_[1 INTERLOCUTORY
`ORDER CERTIFIED BY
`DISTRICT JUDGE
`
`(SPECIFY):
`
`
`
`
`IDIDIDIDIDIEIDIDID
`
`JUDGMENT/COURT DECISION
`A
`_
`JUDGMENTI JURY VERDICT
`
`DECLARATORY JUDGMENT
`
`bbbbb
`
`
`
`
`PERMANENT
`
`GRANTED
`
`DENIED
`
`
`
` JUDGMENT AS A MATTER OF LAW
`
`D ATTORNEY FEES:
`
`OTHER (SPECIFY):
`SOUGHT $
`
`AWARDED
`
`
`
`
`
`
`
`In PENDING
`
`Cl COSTS: s
`
`
`
`CERTIFICATION OF COUNSEL
`
`I CERTIFY THAT:
`I. COPIES OF ORDER/JUDGMENT APPEALED FROM ARE ATTACHED.
`
`
`
`
`
`
`
`I 2. A CURRENT sERvIcE LIST OR REPRESENTATION STATEMENT WITH TELEPHONE AND FAX NUMBERS IS ATTACHED (SEE 9TH
`CIR. RULE 3-2).
`
`A COPY OF THIS CIVIL APPEALS DOCKETING STATEMENT WAS SERVED IN COMPLIANCE WITH FRAP 25.
`
`4.
`
`
`
`SE FILING REQUIREMENTS MAY RESULT IN SANCTIONS,
`
`
`I UNDERSTAND THAT FAILURE TO COMPLY
`INCLUDING DISMISSAL OF THIS APPE
`
`__[_:|__ OTHER
`(SPECIFY):
`
`
`
`
`COUNSEL WHO ‘COMPLETED THIS FORM
`
`NAME:Bobby A. Ghajar
`
`
`
`FIRM: Howrey LLP
`
`ADDRESS: 550 South Hope Street, Suite 1100, Los Angeles, CA 90071
`
`E-MAIL:ghajarb@howrey.com
`
`TELEPHONE: (213) 392-1300
`
`FAX:(2I3) 392-2300
`
`
`
`*THIS DOCUMENT SHOULD BE FILED IN THE DISTRICT COURT WITH THE NOTICE OF APPEAL* '
`*IF FILED LATE, IT SHOULD BE FILED DIRECTLY WITH THE U.S. COURT OF APPEALS*
`
`
`
`
`American Logalmt. Inc.
`www.USCourtFonns.com
`
`

`
` ».:£ TEL flW2 F|H'£§e|d)611C1ND088 F1@e1fi28O
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`ZOBMONDO ENTERTAINMENT, LLC,
`RANDALL HORN,
`
`CASE NOS.: cv 06-3459 ABC (JTLX);
`cv 07-571 ABC (JTLX)
`
`Plaintiffs/Counter-Defendants,
`
`V.
`
`JUSTIN
`LLC,
`FALLS MEDIA,
`DAVID GOMBERG
`HEIMBERG,
`
`Defendants/Counter-Plaintiffs.
`
`ORDER RE: CROSS-MOTIONS FOR
`SUMARY JUDGMENT
`
`Pending before the Court are two motions in two separate,
`
`consolidated copyright and trademark infringement cases arising from
`
`the same factual scenario.
`
`In one case, Falls Media, LLC, et al. v.
`
`Zobmgndg Entertainment, LLC, et al., CV 07-571 ABC (JTLX), Plaintiffs
`
`Falls Media, LLC, Justin Heimberg, and David Gomberg (collectively
`
`“Falls Media") have brought trademark infringement and unfair
`
`competition claims and Defendants Zobmondo Entertainment, LLC and
`
`Randall Horn (collectively “Zobmondo") filed a motion on January 10,
`
`2008 for summary adjudication trademark infringement claims and
`
`Zobmondo's own counterclaim for trademark cancellation.
`
`In the other
`
`case,
`
`Zobmondo Entertainment, LLC, at al. V. Falls Media, LLC, et
`
`

`
` 51:! Ill DboumIeeJhf|fi822
`
`FlHédd)611C!@U88 Qm
`
`al., CV 06-3459 ABC (JTLX), Zobmondo has alleged trade dress,
`
`copyright and unfair competition claims and Falls Media filed a motion
`
`on April 7, 2008 for summary judgment.
`
`The Court heard arguments from
`
`the parties on Tuesday, June 10, 2008. After considering the
`
`extensive briefs of the parties,
`
`the evidence submitted, and the
`
`arguments presented,
`
`the Court GRANTS Zobmondo's motion for summary
`
`judgment and Zobmondo's cancellation counter—claim in CV 07-571 ABC
`
`(JTLx), and GRANTS Falls Media's motion for summary judgment in CV 06-
`
`3459 ABC (JTLX).
`
`I.
`
`INTRODUCTION AND FACTUAL BACKGROUND
`
`These cases represent the diligent efforts of competing
`
`entrepreneurs to create successful board games based on the
`
`conversation-starter of “Would you rather .
`
`.?", wherein
`
`participants are asked to choose between one of two, sometimes
`
`unsavory, alternatives.
`
`(Trademark Statement of Undisputed Facts
`
`(“Trademark UF") No. 1.)‘ Although the “Would you rather .
`
`.
`
`.?"
`
`concept of dilemmas existed prior to either party's use of the
`
`concept,
`
`in February 1998, Zobmondo issued the first bgarg game
`
`embodying the concept, which was called Zobmondoll That Crazy “Would
`
`You Rather" Game.
`
`(Trademark UF No. 9.)
`
`Since 1998, Zobmondo has
`
`released several other versions of this game,
`
`including:
`
`(1)
`
`Zobmondo!l Would You Rather .
`
`.
`
`.? the twisted, sick, and wrong
`
`version in late 2002;
`
`(2) Zobmondoll Would You Rather .
`
`.
`
`.? the game
`
`
`
`‘The Court will cite to Zobmondo's “Trademark” statement of
`
`undisputed facts (“Trademark UF") and Falls Media's genuine issues
`(“Trademark GI") and Falls Media's “Copyright” statement of undisputed
`facts (“Copyright UF") and Zobmondo's genuine issues (“Copyright GI")
`for ease of citation.
`The Court has considered all objections and
`responses filed by the parties, and will note where evidence is
`excluded.
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
` Ill D})o0nmaIh1.'H5822
`
`FlH'£k=:|cD611Cl6'2D088
`
`F1%@§e370rf)f280
`
`of wacky & mind—boggling ggestions in 2003;
`
`(3) §gQmQngQlL_X2u_§2£L§
`
`Be Kidding, The Qrazy Game of “Would You Rather .
`
`.
`
`.?";
`
`(4)
`
`Zobmondolg Would You Rather .
`
`.
`
`,? the game Qf bizarre Q mind-bgggling
`
`questions Pocket Version; and (5)
`
`
`
`Zobmondoll Would You Rather . .? .
`
`
`
`twisted, sick and wrong Late Night.
`
`(Id, No. 10.)
`
`From 2000 through
`
`November 2002,
`
`the toy company Hasbro sold Zobmondo's game under the
`
`name Zgbmondoli The Outragegug Game of Bizarre Choices, and without
`
`reference to the phrase “Would You Rather.”
`
`(Trademark GI Nos. 10.
`
`57.)
`
`In 1997, Heimberg and Gomberg,
`
`the two individuals who eventually
`
`formed Falls Media’, published a book entitled Would You Rather .
`.
`.?
`
`Over 200 Absolutely Absurd Dilemmas to Ponder.
`
`(Id. No. 11.) That
`
`book garnered the following sales figures between 1997 and 2002:
`
`1997:
`
`15,445 units, $9,373.29 in_net sales
`
`1998:
`
`24,649 units, $14,055.70 in net sales
`
`1999:
`
`15,300 units, $9,205.20 in net sales
`
`2000:
`
`12,693 units, $9,079.36 in net sales
`
`2001:
`
`4,044 units, $4,273.29 in net sales
`
`2002:
`
`4,179 units, $3,026.49 in net sales
`
`(Declaration of Gregory Korn (“Korn Decl.”), Ex. Q at 1048-50.) Over
`
`the course of these five years, Falls Media sold 76,310 copies for net
`
`sales of $49,013.33. Heimberg and Gomberg published a sequel to this
`
`book called Would You Rather 2, Electric Boogaloo in 1999, which
`
`garnered the following sales between 1999 and 2002:
`
`13,068 units, $9,205.20 in net sales
`1999:
`
`
`’Although Heimberg and Gomberg did not form Falls Media until
`October 2004, for ease of reference,
`the Court will use the name
`“Falls Media" as short—hand for either Heimberg and Gomberg or Falls
`Media.
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`24
`
`25
`
`26
`
`27
`
`

`
` TEL flM2 FlH'eie|d)611C|62E088 Qm
`
`2000:
`
`1,257 units, $9,079.36 in net sales
`
`2001:
`
`723 units, $4,273.29 in net sales
`
`2002:
`
`0 units
`
`(Id. at 1050-52.)’ Over the course of three years, Falls Media sold
`
`15,048 copies for net sales of $22,557.85.‘
`
`In 1997, Dutton Plume,
`
`Falls Media's publisher of its first book, spent $18,000 on nationwide
`
`promotion of this book, and each year between 1997 and 2002, Falls
`
`Media spent $155 on advertising.
`
`(Trademark UF No. 30.)
`
`On July 31, 1997, Heimberg and Gomberg filed an intent-to—use
`
`application with the United States Patent and Trademark office (“PTO”)
`
`for the phrase “Would you rather .
`
`.
`
`.?" in Class 16 (books) and Class
`
`28 (board games).
`
`(Id. No. 13.)
`
`The PTO issued a Notice of Allowance
`
`on January 8, 2002 for this application. Before that time, Falls
`
`Media had not introduced a board game into the market under the “Would
`
`you rather .
`
`.?" mark.
`
`(Id. Nos. 17, 18.) After issuance of the
`
`Notice of Allowance, Heimberg and Gomberg requested and received five
`
`extensions from the PTO to file a Statement of Use demonstrating that
`
`they had introduced a “Would you rather .
`
`.
`
`.?" board game into the
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`3Falls Media now disputes thes