Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA316716
`ESTTA Tracking number:
`11/13/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051588
`Defendant
`Knoll, Inc.
`Knoll, Inc.
`1235 Water Street
`East Greenville, PA 18041
`UNITED STATES
`Motion to Suspend for Civil Action
`Marc P. Misthal
`mmisthal@grr.com
`/Marc P. Misthal/
`11/13/2009
`92051588.pdf ( 199 pages )(3018241 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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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`........................................................................x
`
`ALPHAVILLE DESIGN, INC.,
`
`Petitioner
`
`v.
`
`KNOLL, INC.,
`
`.
`Respondent.
`__________________________________________________________________....x
`
`Cancellation No. 92051588
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`NOTICE OF MOTION TO SUSPEND
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`PLEASE TAKE NOTICE that, upon the accompanying Memorandum of Law
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`dated November 12, 2009 and the Declaration of Marc P. Misthal dated
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`November 12, 2009, Respondent Knoll, Inc. hereby moves the Trademark Trial
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`and Appeal Board for an Order suspending the above-captioned Cancellation
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`proceeding pursuant to 37 C.F.R. § 2.117 (a) in view of a civil action that “may
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`have a bearing” on the present Cancellation proceeding.
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`Dated: November 12, 2009
`New York, N.Y.
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`GOTTLIEB, RACKMAN & REISMAN, P.C.
`Attorneys for Respondent
`George Gottlieb
`Barry A. Cooper
`Marc P. Misthal
`270 Madison Avenue, 8”" Floor
`New York, New York 1016
`
`By
`
`
`I I
`.
`I
`George Gottlieb (G — 5761)
`Barry A. Cooper (BC — 9298)
`Marc P. Misthal (MM — 6636)
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`__________________________________________________________________....x
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`ALPHAVILLE DESIGN, lNC.,
`
`Petitioner
`
`v.
`
`KNOLL, lNC.,
`
`.
`Respondent.
`..................................................................--x
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`Cancellation No. 92051588
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`RESPONDENT’S MOTION TO SUSPEND
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`Respondent Knoll, lnc. (“Knoll”) respectfully requests that the Board issue
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`an order, pursuant to 37 C.F.R. § 2.117 (a), suspending the above—identified
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`Cancellation filed by Petitioner Alphaville Design, inc. (“Alphaville”) in view of a
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`civil actions brought by Alphaville against Knoll that is pending in the federal
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`district court for the Northern District of California and in which the registration
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`that is the subject of this proceeding has been asserted and/or challenged.
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`Because disposition of this civil action “may have a bearing” on the present
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`Cancellation proceeding, the present Cancellation proceeding should be stayed.
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`Pending a decision on the motion to suspend, Knoll also requests that its time to
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`answer the Petition for Cancellation be extended until disposition of this motion.
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`The declaration of Marc P. Misthal (“Misthal Dec.”) is also submitted by Knoll in
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`support of its motion to suspend.
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`

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`AIphaville’s Petition to Cancel
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`This is one of six Petitions to Cancel filed by Alphaville in the PTO.‘ The
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`petitions to cancel, all filed the same day, seek to cancel registrations obtained
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`by Knoll for Knoll’s Barcelona Chair (Reg. No. 2,893,025), Barcelona Stool (Reg.
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`No. 2,894,025), Barcelona Couch (Reg. No. 2,894,980), Barcelona Table (Reg.
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`No. 2,894,979) and Flat Brno Chair (Reg. No. 2,894,980) and for the trademark
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`BARCELONA (Reg. No. 772,313).
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`The Civil Action
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`Knoll has been involved in litigation against Alphaville in the Northern
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`District of California, Alphaville Design, Inc. v. Knoll, lnc., Case No. 07 CV 05569
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`(MHP) (N.D.Cal. filed November 1, 2007) (hereinafter the “California Action”) for
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`two years. Copies of the relevant pleadings from the California Action are
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`attached to the Misthal Declaration.
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`The California Action is a declaratory judgment action against Knoll. The
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`declaratory judgment complaint includes a count alleging invalidity of Knoll’s
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`Barcelona Chair registration (Reg. No. 2,893,025), Barcelona Stool registration
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`(Reg. No. 2,894,025), Barcelona Couch registration (Reg. No. 2,894,980),
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`Barcelona Table registration (Reg. No. 2,894,979); Flat Brno Chair registration
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`(Reg. No. 2,894,980) and BARCELONA mark registration (Reg. No. 772,313).
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`Cancellation of each of these registrations is sought. See Misthal Dec., Ex. 1.
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`In connection with the California Action, the parties have taken discovery,
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`including depositions, interrogatories and the exchange of documents.
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`1 Knoll has filed substantially identical motions to suspend in each of the Cancellation
`proceedings.
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`

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`Subpoenas have been served on third parties. Moreover, in November 2008
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`Alphaville made a motion for summary judgment on the question of the validity of
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`Knoll’s trademark registrations which raised issues virtually identical to the issues
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`raised in the Petition for Cancellation. The court issued an order denying
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`Alphaville’s motion on June 5, 2009. A copy of the court’s order is attached to
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`the Misthal Declaration as Exhibit 7.
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`In the California Action Alphaville is represented by the firm of Coblentz,
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`Patch, Duffy & Bass LLC.2 This is the same firm that is representing Alphaville in
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`each of the Cancellation proceedings now pending before the Board.
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`It is therefore apparent that the California Action encompasses the same
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`issues (validity and cancellation) of the very same registrations which Alphaville
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`seeks to cancel in this, and in the companion, cancellation proceedings.
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`Accordingly, the Cancellation proceedings should be stayed.
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`ARGUMENT
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`THE CANCELLATION PROCEEDINGS SHOULD BE SUSPENDED
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`37 C.F.R. § 2.117 (a) provides, as follows:
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`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that a party or parties are engaged in a civil action or
`another Board proceeding which may have a bearing on the case,
`proceedings before the Board may be suspended until termination
`of the civil action or the other Board proceeding.
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`The most common situation involving a request for suspension pending
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`the outcome of another proceeding arises where there is a civil action pending
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`which may be dispositive of the issues before the Board. That is because “the
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`2 The Coblentz firm was retained by Alphaville in July, 2009, and is working with cocounsel,
`Philip Green, Esq. of The Law Offices of Green & Green. Prior to July, 2009, Alphaville was
`represented by Mr. Green and the law firm of Sheppard Mullin.
`
`4
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`

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`decision of the Federal district court is often binding before the Board, while the
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`decision of the Board is not binding upon the court.” T.B.M.P. 11 § 510.02 (a).
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`Thus, the general rule is that the Board will suspend proceedings pending the
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`outcome of the related civil action.
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`_S__ee_ General Motors Corp., v. Cadillac Club
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`Fashions, Inc, 22 U.S. P.Q. 2d 1933 (TTAB 1992); Other Telephone Co. v.
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`Connecticut Nat’l Telephone Co., 181 U.S. P.Q. 125 (TTAB 1974).
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`Suspension is appropriate even if the civil case may not be dispositive of
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`the Board case, so long as the ruling will have a bearing on the rights of the
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`parties in the Board case. T.B.M.P. § 510.02 (a). Typically, suspension is in the
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`interest of judicial economy, since it avoids duplicating the efforts of the court and
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`eliminates the possibility of inconsistent conclusions.
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`As stated in Other Telephone Co. v. Connecticut Nat’l Telephone Co.,
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`[i]n this regard, the copy of the complaint in the civil action which opposer
`has furnished the Board shows that opposer, as plaintiff therein, is
`requesting that the Court determine the respective rights of the parties to
`use in commerce the designation “THE OTHER TELEPHONE COMPANY
`or any mark confusingly similar thereto.
`It is further noted that opposer is
`seeking, inter alia, to enjoin applicant from using the stated designation or
`any word or words confusingly similar thereto in connection with its
`telephonic communications services.
`it is clear therefore that the final
`determination of the civil action will directly affect the resolution of the
`issue of likelihood of confusion which is involved in the proceeding before
`the Trademark Trial and Appeal Board. Accordingly, and as provided by
`Rule 2.117 of the Trademark Rules of Practice opposer’s motion is
`granted and proceedings herein are suspended until final disposition of
`the civil suit in which the parties are involved.
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`Other Telephone Co. v. Connecticut National Telephone Co., 181 U.S. P.Q. at
`126-127.
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`Knoll’s registrations which Alphaville seeks to cancel in this and the other
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`five petitions to cancel are the same registrations which are at issue in the
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`

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`California Action filed by Alphaville. Thus, as part of the relief sought by
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`Alphavilled in its declaratory judgment action against Knoll, Alphaville has
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`already requested that the federal courts cancel these same registrations.
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`Moreover, the Northern District of California has already issued a summary
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`judgment opinion touching on all three of the grounds raised by Alphaville as
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`bases for the cancellation of Knoll’s trademark registrations.
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`in view of the
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`foregoing, it is apparent that the decision or decisions in the California Action will
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`have a bearing on the instant Cancellation proceeding.
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`it should be noted that this is ggt the usual situation where there is a
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`Board proceeding followed by a subsequently filed civil action. To the contrary,
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`Alphaville filed its petitions to cancel on October 9, 2009, nearly two years after
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`Alphaville filed its declaratoryjudgment action against Knoll.
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`It would appear that
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`this was done for some type of tactical reason unbeknownst to Knoll.‘°’ But
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`whatever the reason (tactical or otherwise), the Board should suspend this
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`Petition to Cancel, and the five other companion Petitions to Cancel filed by
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`Alphaville, pending ultimate disposition of the civil actions involving Knoll.
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`II. KNOLL’S TIME TO ANSWER SHOULD BE EXTENDED PENDING
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`DISPOSITION OF THIS MOTION
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`While the Board considers the present motion to suspend, Knoll also
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`requests that the time for it to answer the Petition to Cancel be extended.
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`if the
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`motion is granted, there will be no need for Knoll to answer.
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`In the event that
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`Knoll’s motion to suspend is denied, then Knoll should have thirty (30) days from
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`the date of the decision to file its answer.
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`3 in view of the fact that litigation has been ongoing for two years, it is curious that Alphaville
`failed to mention that fact in any of its six Petitions for Cancellation.
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`

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`CONCLUSION
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`For the reasons advance herein, Kno|l’s motion to suspend should be
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`granted and Kno||’s time to answer should be reset, pending disposition of that
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`motion.
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`GOTTLIEB, RACKMAN & REISMAN, PC
`Attorneys for Respondent
`George Gottlieb
`Barry A. Cooper
`Marc P. Misthal
`270 Madison Avenue, 8"‘ Floor
`New York, New York 10016
`(212 684-3900
`
`
` George
`ottlieb (GG — 5761)
`Barry A. Cooper (BC —— 9298)
`Marc P. Misthal (MM — 6636)
`
`Dated:
`
`November 12, 2009
`New York, New York
`
`

`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`....................................................................-x
`
`ALPHAVILLE DESIGN, INC.,
`
`Petitioner
`
`v.
`
`KNOLL, INC.,
`
`:
`:
`:
`:
`
`Cancellation Nos. 92051578;
`92051583; 92051585;
`92051588; 92051590;
`92051592
`
`Respondent.
`———————————————————————————————————————————————————————————————————-X
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`DECLARATION OF MARC P. MISTHAL
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`MARCIP. MISTHAL declares as follows:
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`1.
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`I am an attorney at law and a shareholder in the firm of Gottlieb,
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`Rackman & Reisman, P.C., counsel for Knoll, Inc. (“Knoll”) in the present
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`controversy and in the declaratory judgment action filed against Knoll by
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`Alphaville Design, Inc. (“Alphaville”), Alphaville Design, Inc. v. Knoll, lnc., Case
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`No. 07 CV 05569 (MHP) (N.D.Cal. filed November 1, 2007).
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`I submit this
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`declaration in support of Knoll’s motion to stay all six Cancellation proceedings
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`filed by Alphaville in favor of the pending civil action.
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`2.
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`I make this declaration from personal knowledge and I could and
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`would competently testify to its contents.
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`In making this declaration, it is not my
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`intention, nor the intention of Knoll, to waive the attorney—client privilege, the
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`attorney—work product immunity, or any other applicable privilege.
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`3.
`On November 1, 2007, Alphaville filed a declaratoryjudgment
`action against Knoll in the Northern District of California (the “California Action).
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`A copy of the complaint filed by Alphaville is attached as Exhibit 1. The
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`California Action was assigned civil action no. 07 CV 05569, and is currently
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`

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`pending before the Honorable Marilyn H. Patel. A copy of the docket sheet for
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`this action is attached as Exhibit 2.
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`4.
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`in its complaint, Alphaville seeks cancellation of Trademark
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`Registration Nos. 2,893,025; 2,894,025; 2,894,980; 2,894,979; 2,894,980; and
`772,313. To support its claim for cancellation, Alphaville alleges that the
`registrations were obtained by fraud and that the marks are generic, functional
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`and lacking in secondary meaning.
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`5.
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`Knoll filed an answer and counterclaim on January 15, 2008 (copy
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`attached as Exhibit 3), and Alphaville replied to the counterclaim on February 22,
`2008 (copy attached as Exhibit 4).
`in its reply to the counterclaims, Alphaville
`again sought a declaration canceling Knoll’s trademark registrations.
`in replying
`to Knoll’s counterclaims, Alphaville repeated its allegations that Knoll’s
`registrations were obtained by fraud and that the marks are generic, functional
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`and lacking in secondary meaning.
`6.
`The parties have engaged in discovery. Alphaville has served, and
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`Knoll has responded to, approximately 217 document requests and
`approximately thirty-nine interrogatories. Alphaville has also deposed a current
`employee of Knoll and a former Knoll employee; moreover, Alphaville is
`scheduled to take the deposition of another Knoll employee on December 7 and
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`the deposition of another former Knoll employee on December 11, 2009.
`7.
`For its part, Knoll has served, and Alphaville has responded to,
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`document requests, interrogatories and requests for admission. Knoll has
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`deposed Alphaville’s president and its accounting manager, and has served
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`subpoenas on several third parties.
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`8.
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`On November 4, 2008, Alphaville filed a motion for summary
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`judgment seeking, in relevant part, cancellation of Knoll’s trademark registrations
`based on Alphaville’s claims that Knoll’s marks lack secondary meaning; that
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`

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`Knolls registrations were obtained by fraud; that Knoll’s marks are functional;
`and that Knoll’s BARCELONA mark is generic. A copy of Alphaville’s brief in
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`support of its motion is attached as Exhibit 5. Knoll opposed Alphaville’s motion
`(Knoll’s opposition brief is attached as Exhibit 6), and, after oral argument, the
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`court recognized that there were issues of material fact precluding the granting of
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`summary judgment. Accordingly, the court denied Alphaville’s motion. A copy of
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`the court’s order with respect to the summary judgment motion, which issued on
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`June 5, 2009, is attached as Exhibit 7.
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`l 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 in New
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`York, New York.
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`Dated: November12, 2009
`
`MARC P. MISTHAL
`
`
`
`

`
`
`
`EXHIBIT 1
`EXHIBIT 1
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`

`
`(415 457-83
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`iplegal
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`
`ey for
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`tiff Alphaville Design, Inc. -
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`UNITE—3ISTRICT COURT FOR THE
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`NORTHERN DISTRICT OF CALIFORNIA
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`Ilaintiff alleges:
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`inva 1
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`1 y a
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`ngement pursuant to 2‘. §§ 2201 and 2202 .
`declaratory judgment of
`ark and trade dress
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`Jurisdiction
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`2.
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`This claim
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`d on 28 U.S.C.§§1331,1338.
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`ederal Question under the Lanham Act, 15
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`§1051 et S. and diversity of citizenship under 28 U.S.C. 1332.
`3. _is Judicial district pursuant to 28 U.S.C. § 1
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`24
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`25
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`Elec. ReliefActiOn Comp.it — 1
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`
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`Ph
`Law
`100
`San
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`en SBN 092389)
`ices
`een
`th Str
`fael,
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`901
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`I
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`The Parties
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`4. Plaintiff, Alphaville Design, Inc, (hereinafter as Alphaville) is a corporation
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`organized and existing under the laws of the State of Delaware and
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`authorized to do business in the State of California with its principal place of
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`business in this District at Fremont and Berkeley, California.
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`5. Defendant Knoll, Inc. ("Knoll") is on information and belief, a corporation
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`organized and existing under the laws of the State of Delaware, maintaining
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`a place of business at New York, New York and showrooms in San
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`Francisco, California and which does substantial business in this District and
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`in California.
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`FACTS
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`6. An actual controversy has arisen and now exists between the parties relating
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`to the extent, if any, that Knoll’s alleged trademark and trade dress claims
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`might create any obligation of Alphaville to stop manufacturing furniture of
`the middle 20th century genre, that has not been patented, that there is not
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`copyright available for that is functional and that is not identified by the
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`public with Knoll.
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`7. Knoll alleges as set forth below that it has the exclusive rights to make
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`certain lines of designer furniture and to exclude Plaintiff from making
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`similar appearing furniture. Alphaville makes all types of furniture
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`including but not limited to leather and steel, tables with glass tops
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`supported by metal cross members, couches with metal frames supporting
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`leather cushions and asserts it has a right, absent patent protection, to make
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`such items and to distribute and sell them worldwide.
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`Dec. Relief Action Complaint - 2
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`8. Alphaville seeks a determination of the legal rights and duties of Plaintiff
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`and Defendant for which Plaintiff desires a declaration of its right to
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`continue to make, sell and distribute the modern styles of furniture that have
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`been in existence for many decades under many manufacturers and brands.
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`9. Knoll alleges that it has trademarks that amount to trade dress.
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`1
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`0. Knoll’s alleged marks are highly descriptive of products, consisting only of
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`drawings of basic furniture designs and registered on the Principal Register.
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`1
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`1. Knoll’s registrations of drawing of product plans without any specifications
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`or claim to word mark are not valid to protect the product design, shape,
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`methods of manufacture, look, feel or materials. Knoll alleges it has trade
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`dress in basic furniture designs such as including, but not limited to, “a
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`couch with a metal frame supporting a leather cushion,” none of which can
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`be protected, because among other reasons, the designs are not inherently
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`distinctive and Defendant has no secondary meaning.
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`12. The Knoll registered marks are mere drawings of basic furniture. Knoll
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`now claims these are trade dress and is using them to attempt to prevent all
`competition in furniture designs of the early and middle 20th Century modern
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`era.
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`13. As a result of the acts set forth below, an actual justiciable controversy
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`exists between Defendant and Plaintiff with respect to the validity of
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`Defendant's trademark and trade dress claims and Plaintiff's alleged
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`infringement of them.
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`Dec. Relief Action Complaint - 3
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`COUNT 1
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`(For Declaratory Relief)
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`14. Plaintiff hereby incorporates Paragraphs 1 through 13 as though alleged in
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`full herein.
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`1
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`5. A declaratory judgment is necessary in that Plaintiff contends and
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`Defendants deny the following allegations made by Defendant:
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`a. This dispute began when Knoll wrote a letter to Alphaville in August,
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`2007 that alleged that Knoll had registered in the U.S. Patent and
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`Trademark Office certain trademarks as trade dress for Knoll’s line of
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`furniture called, “Barcelona.” The letter alleged that Alphaville was
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`making and distributing furniture similar to that made by Knoll, that
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`the furniture manufactured by Alphaville infringes on the Defendant’s
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`registrations and demanded that Alphaville cease selling and making
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`such furniture.
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`b. The alleged trademarks are registered as mere drawings of designs for
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`furniture. Knoll is attempting to assert that these designs, though not
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`covered by any patents or copyrights, are trade dress.
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`c. Alphaville asserts that there are no patents on the designs of Knoll’s
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`furniture and the allegations of Defendant accusing Plaintiff of
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`violating the alleged trademarks do not amount to any design or trade
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`dress that would constitute any violation of any of Knoll’s alleged
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`rights and not likely to cause confusion, deception or mistake.
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`d. Alphaville asserts that the trademark registrations claimed to be
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`owned by Knoll are invalid attempts to circumvent the Patent laws.
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`Dec. Relief Action Complaint - 4
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`e. The “Barcelona” designs are generic and have been produced by
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`many makers over decades so that the designs, consisting of a “tuck &
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`roll” appearance leather, square glass tabletop and chrome or steel
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`looking support members, are not protectable, have come into the
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`public domain and that Knoll’s trademarks were and are invalid and
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`should be cancelled.
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`f. Knoll asserts it has a license from the designer, Mies van der Rohe,
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`who designed an original set of furniture in the 1930s and on
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`information and belief, the designer and Defendant failed to obtain
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`any patent or copyright protection thereon. Since then and long
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`before any attempts to register the designs as trade dress, many
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`manufacturers have used the same very basic furniture designs to
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`produce a variety of sizes, shapes, colors and versions of the original
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`decades-old designs.
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`g. Alphaville and the many other makers of these generic designs would
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`experience grave prejudice if they were ordered to cease selling them.
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`The Alphaville furniture is not being advertised as original Knoll
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`furniture; Alphaville is not using the name “Barcelona” as an
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`advertising element to attract buyers, and does not tell its retailers how
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`to advertise these designer furnishings.
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`h. Alphaville is a manufacturer and wholesaler only. It makes,
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`distributes and sells many dozens of types of furniture, made
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`worldwide.
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`i. Knoll is a manufacturer and wholesaler of many lines of office and
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`home furniture that advertises its lines as Knoll brand furniture.
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`Dec. Relief Action Complaint - 5
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`Alphaville does not use the name Knoll in any of its catalogs or
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`advertising, and is careful to distinguish its lines of furniture from any
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`others.
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`6. On August 15, 2007, Defendant’s attorney wrote a letter to Alphaville
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`directly. The Cease & Desist Letter, in relevant part, demanded that:
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`a. “we call upon your company to forthwith cease and desist from any
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`act of trademark infringement and making misleading statements.
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`Specifically, we demand that your company: 1) Immediately stop all
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`use, promotion, display, distribution, offering for sale, sale and/or
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`manufacture of any version of the Barcelona Chair, Barcelona Stool,
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`Barcelona Couch, Barcelona Table and Flat Brno Chair; and 2)
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`immediately stop making use of the BARCELONA mark 3)
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`Immediately take steps to recall the infringing products; and 4)
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`Forward to us documentation reflecting the manufacture and
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`importation of the infringing items,…”
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`b. Of great concern, Knoll also wrote to Alphaville that Knoll threatens
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`to stop Alphaville’s imports, “Knoll, … expect[s] your assurances, or
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`that of your counsel, …, that the demands set forth … will be met.
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`Please be advised that unless we receive such assurances, Knoll will
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`take such steps as appropriate to protect its valuable trademark and
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`trade dress rights. This Includes, without limitation, notifying U.S.
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`Customs Enforcement of your unauthorized conduct and request that
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`U.S. Customs seize all unauthorized products upon their entry into the
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`country…”
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`Dec. Relief Action Complaint - 6
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`7. Plaintiff’s attorney sent a reply letter dated August 28, 2007. This letter
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`cited several cases and Gilson on Trademarks for the proposition that “…the
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`Lanham Act will only prevent the copying of nonfunctional product
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`designs…that have acquired secondary meaning…for the manufacturer…”
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`8. Knoll has sent other such Cease & Desist letters to customers of Plaintiff
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`Alphaville, and has even sued customers of Alphaville, which actions have
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`caused actual losses and contractual issues, including, but not limited to,
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`claims for indemnity that have caused business and other losses for
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`Alphaville.
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`19. On information and belief, Knoll has had a license to produce a Barcelona
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`line of goods since 1965, and that prior thereto many manufacturers were
`and still are making, selling and distribution 20th Century design furniture,
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`similar to that of Alphaville and that the designs are functional.
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`20. Knoll waited forty years until 2004, to bother to register their alleged claims
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`and to confront the entire modern furniture genre industry with them.
`21. Manufacture, sales and distribution of 20th Century designer furniture by
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`many others than Knoll has occurred with such frequency and volume that
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`that Knoll does not have the secondary meaning in this furniture.
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`22. The history of the Knoll trademark registrations available from the US PTO
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`online shows that declarations of Knoll personnel that enabled the
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`registrations of the various trademarks mention the fact that there were many
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`prior makers of such furniture.
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`23. Knoll versions of these items are advertised by Defendant as “Knoll
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`Barcelona” while other makes of the designer furniture do not say “Knoll”,
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`“Barcelona” or use any other Knoll trademark.
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`Dec. Relief Action Complaint - 7
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`4. The name Barcelona is generic for this genre and line of furniture, based on
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`the place, Barcelona Spain, where the design was first displayed.
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`5. On information and belief, this mark is also geographically misdescriptive.
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`6. Plaintiff's position has consistently been that its designer furniture lines do
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`not infringe any valid claim of rights by Defendant. That this is a generic
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`line as are many others such as Marcel Breuer, Mart Stam, Harry Bertoia,
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`Cesca and other such basic designs of furniture.
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`2
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`7. Since August 28, 2007, attorneys for Plaintiff and Defendant have had
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`conversations asserting Plaintiff’s position that the claims to the trademarks
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`have no right to stop any other maker of designer furniture from producing
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`similar items to those depicted in the Knoll registrations.
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`28. Defendant has and continues to assert that the registrations themselves are
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`valid but Plaintiff alleges that such trademarks and trade dress are not valid.
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`29. Plaintiff asserts that Knoll seeks to stop an entire market in such furniture
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`by preventing any copying, normally the realm of Copyright but here there is
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`no copyright and there cannot be on these functional items which were sold
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`for so long in the past.
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`30. Plaintiff asserts that Knoll seeks to stop the industry by a design of
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`manufacture, normally the realm of Patents, but there are no patents, in these
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`highly generic and functional items.
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`31. By virtue of the exchange of telephone calls and letters outlined above,
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`there is a substantial and continuing justiciable controversy between Plaintiff
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`and Defendant as to Defendant's claims of a right to a virtual monopoly
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`covering Plaintiff's designer furniture and as to the validity and scope of the
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`Dec. Relief Action Complaint - 8
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`alleged trademarks, and as to Plaintiff's continuing right to make, inventory,
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`ship, sell, and warranty its designer furniture lines.
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`3
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`2. Plaintiff has a clear and present apprehension of suit and interference with
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`its business, customs seizures, importation and sale of its furniture by
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`Defendant.
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`3. Alphaville contends that Knoll has no secondary meaning to its lines of
`furniture including, but not limited to, the Barcelona line, as 20th century
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`designer lines have become generic by common use over many years by
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`many different manufacturers. The items may be known by their common
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`names such as the city where the genre originated, “Barcelona” and not
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`under the Knoll name.
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`34. Alphaville contends that the Defendant cannot have perpetual protection of
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`designs and that the claims for the trademarks-in-suit and trade dress are not
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`infringed by Plaintiff by the making, using, or selling of any product.
`Plaintiff has never believed otherwise and manufacturing and selling 20th
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`Century designer furniture is a large business that has been a very common
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`practice among many furniture manufacturers, which is threatened by the
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`threats and allegations of Defendant and its attorneys.
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`COUNT 2
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`(Invalidity of Trade Dress and Trademarks)
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`35. Plaintiff hereby incorporates Paragraphs 1 through 34 as though alleged
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`fully herein.
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`36. On information and belief, Defendant is the owner of and applications in,
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`United States Trademark Nos. 2,893,025; 2,894,977; 2,894,980, 2,894,979,
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`Dec. Relief Action Complaint - 9
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`2,894,978 and 772,313. The trademark registrations for the designs were
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`issued in October, 2004 and are not incontestable. The registration for the
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`mark Barcelona was issued in 1965, at about the time of Knoll’s asserted
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`license from Mr. van der Rohe. This latter mark is extremely weak as it is
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`descriptive of the origin of the mark in this line of goods and Knoll does not
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`have a secondary meaning in the mark.
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`3
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`7. Knoll has no copyright in the designs of its alleged lines of proprietary
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`furniture since among other things, the trademarks claimed as trade dress are
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`for useful items, are functional and not legally entitled to copyright
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`protection.
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`38. Knoll has no patents, design or otherwise, of their alleged lines of furniture
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`based on the declarations Knoll filed with PTO when it applied for its
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`alleged trademarks.
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`39. Knoll’s use of such designs do not provide Knoll with any secondary
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`meaning among the public. Defendant is advertising its Knoll name to the
`public as Knoll, while it has not acquired secondary meaning for 20th
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`Century modern furniture as being identified with Knoll. It has a limited
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`knowledgeable market who know the designs by a name not Knoll,
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`including, but not limited to, its designer, van der Rohe and the name
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`“Barcelona,” but not Knoll.
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`40. Plaintiff contends that the claims for the trademarks-in-suit are invalid,
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`unenforceable, extremely thin, if valid at all, and are void and should be
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`cancelled for many reasons including, without limitation, the reasons that:
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`Dec. Relief Action Complaint - 10
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`a. The right to make van der Rohe furniture was being used by many
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`makers long before Knoll obtained a license from van der Rohe, since
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`on information and belief, at least 1954.
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`b. On information and belief, the designs have never been the subject of
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`any patent applied for or issued, including, but not limited to, any
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`design patent.
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`c. The designs have never been registered as copyrights and cannot be
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`under the doctrine of Sears-Compco and cases that follow them.
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`d. On information and belief, for decades Knoll has allowed many other
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`makes of designer furniture to produce, manufacture, distribute and
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`sell Barcelona look-alike furniture. Without any warnings, notices or
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`other activity other than, in 2004, to register its alleged claims to the
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`trade dress, yet it asserts it has had an alleged license for 40 years
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`prior thereto.
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`e. Knoll h