Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA504827
`ESTTA Tracking number:
`11/09/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051662
`Defendant
`Dora Maria Diaz
`MARSHALL A LERNER
`KLEINBERG & LERNER LLP
`1875 CENTURY PARK EAST, SUITE 1150
`LOS ANGELES, CA 90067
`UNITED STATES
`mlerner@kleinberglerner.com
`Other Motions/Papers
`Marshall A. Lerner
`mlerner@kleinberglerner.com, rpak@kleinberglerner.com,
`trademarks@kleinberglerner.com
`/Marshall A. Lerner/
`11/09/2012
`Request for Dismissal of Cancellation No. 92051662.pdf ( 25 pages )(4614236
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Marlene Prada Bautista,
`
`Cancellation No.: 92051662
`
`Petitioner,
`V.
`
`Dora Maria Diaz,
`Registrant
`
`Serial No.: 78746735
`
`Mark: FAJATE
`
`REGISTRANT'S REQUEST FOR DISMISSAL WITH PREJUDICE
`
`Registrant Dora Maria Diaz ("Registrant") requests that this currently-
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`suspended Cancellation be dismissed with prejudice pursuant to F.R.Civ.P.
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`4l(b) on the following grounds.
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`Petitioner Marlene Prada Bautista ("Petitioner") filed the instant
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`Cancellation based on her allegation that she has priority based on her use of
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`her FAJATE mark in the United States and in Colombia. Petition to Cancel,
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`'1] 2, Docket no. 1.
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`The instant Cancellation was suspended after Registrant filed a civil
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`action against Petitioner in United States District Court, Central District of
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`California, Case No. 10cv4690, on June 24, 2010 to resolve the issues of
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`priority that were raised in the instant Cancellation. The jury in that action
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`rendered a verdict finding that as between Registrant and Petitioner,
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`Registrant had priority in the United States. Following a post—trial motion
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`regarding Petitioner's use in Colombia, the Court ruled that Registrant has
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`priority in the U.S. even when considering Petitioner's use in Colombia. Ex.
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`1. Thereafter, the Court entered judgment in favor of Registrant as to
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`1
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`Cancellation No.: 92051662
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`Serial No.: 78746735
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`Registrant's Request for Dismissal With Prejudice
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`

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`priority in the United States. Ex. 2. The judgment relies on and quotes from
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`the Special Verdict Form in stating that: "As between plaintiff Dora Diaz
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`("Diaz")[Registrant] and defendant Marlene Prada Bautista
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`("Prada")[Petiti0ner], Diaz [Registrant] was the first to use her mark in
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`commerce in the United States." Id.
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`Following post—judgment motions, the Court affirmed the judgment,
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`Ex. 2, in its entirety in an Order entered on November 8, 2012. Ex. 3.
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`In light of the foregoing determinations by the Court and jury as to
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`Registrant's priority, Registrant requests that the instant Cancellation be
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`dismissed with prejudice.
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`Respectfully submitted,
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`KLEINBERG & LERNER, LLP
`
`November 9, 2012
`
`By: /S/ Marshall A. Lerner
`Marshall A. Lerner
`
`Ryan Pak
`Attorneys for Registrant Dora Diaz
`
`Cancellation No.: 92051662
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`Serial No.: 78746735
`
`Registrant's Request for Dismissal With Prejudice
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Marlene Prada Bautista,
`Petitioner,
`v.
`
`Dora Maria Diaz,
`
`Registrant
`
`Cancellation No.: 92051662
`Serial No.: 78746735
`
`Mark: FAJATE
`
`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing:
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`REGlSTRANT‘S REQUEST FOR DISMISSAL WIT]-I PREJUDICE
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`has been served on Petitioner's counsel by mailing said copy on November
`9, 2012 via First Class Mail, postage prepaid to:
`
`John M Murphy
`Arochi Marroquin & Linder SC
`5802 Bob Bullock Loop 20 , Building Cl-56YI
`Laredo, TX 78041
`
`United States
`
`
`
`
`
`Cancellation No.: 92051662
`
`Serial No.: 78746735
`
`Registrant's Request for Dismissal With Prejudice
`
`

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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 1 of 13 Page ID #:4804
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 2 of 13 Page ID #:4805
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 3 of 13 Page ID #:4806
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 4 of 13 Page ID #:4807
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 5 of 13 Page ID #:4808
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 6 of 13 Page ID #:4809
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 7 of 13 Page ID #:4810
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 8 of 13 Page ID #:4811
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 9 of 13 Page ID #:4812
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`Exhibit
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 10 of 13 Page ID
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`Exhibit
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`1
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 11 of 13 Page ID
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`Exhibit
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`1
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 12 of 13 Page ID
` #:4815
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`Exhibit
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`1
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`Case 2:10-cv-04690-JHN-JC Document 280 Filed 06/29/12 Page 13 of 13 Page ID
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`Exhibit
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`1
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`Case 2:10-cv-04690-JHN-JC Document 292 Filed 08/24/12 Page 1 of 3 Page ID #:5027
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`2
`Exhibit
`Page 17
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`Case 2:10-cv-04690-JHN-JC Document 292 Filed 08/24/12 Page 2 of 3 Page ID #:5028
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`2
`Exhibit
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`Case 2:10-cv-04690-JHN-JC Document 292 Filed 08/24/12 Page 3 of 3 Page ID #:5029
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`2
`Exhibit
`Page 19
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`

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`Case 2:10-cv-04690-MWF-JC Document 317 Filed 11/07/12 Page 1 of 6 Page ID #:5667
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`Date: November 7, 2012
`Case No. CV-10-04690-MWF (JCx)
`Title:
`Dora M. Diaz v. Marlene Prada Bautista et al.
`
`Present: The Honorable MICHAEL W. FITZGERALD , U.S. DISTRICT JUDGE
`
`
`
`
`
`
`
` Rita Sanchez
`Deputy Clerk
`
`
`
` Not Reported
`Court Reporter/Recorder
`
`
`
` N/A
` Tape No.
`
`Attorneys Present for Plaintiff:
`Not Present
`
`Attorneys Present for Defendant:
`Not Present
`
`Proceedings (In Chambers): ORDER DENYING DEFENDANT’S MOTION
`FOR A NEW TRIAL OR REMITTITUR [298]
`AND GRANTING IN PART AND DENYING IN
`PART DEFENDANT’S MOTION TO ALTER,
`AMEND, OR CORRECT THE PERMANENT
`INJUNCTION AND TO STAY ENFORCEMENT
`OF PARAGRAPH (E)(1) [299]
`
`This matter is before the Court on Defendant and Counterclaimant Marlene
`
`Prada Bautista’s (“Prada”) Motion for a New Trial or Remittitur (Docket No. 298)
`and Motion to Alter, Amend, or Correct the Permanent Injunction and to Stay
`Enforcement of Paragraph (e)(1). (Docket No. 299). Having considered the parties’
`submissions and arguments at the November 5, 2012 hearing, the Court DENIES the
`Motion for a New Trial or Remittitur and GRANTS IN PART AND DENIES IN
`PART the Motion to Alter, Amend, or Correct the Permanent Injunction and to Stay
`Enforcement of Paragraph (e)(1). An Amended Permanent Injunction is being issued
`concurrently with this Order.
`
`
`I.
`
`MOTION FOR A NEW TRIAL OR REMITTITUR
`
`The parties are well aware of the extensive procedural posture and factual
`background of this case, so the Court will not repeat those details here except to the
`extent that they bear on this ruling.
`
`This Motion follows a jury trial that resulted in a verdict adverse to Prada and
`an award of damages against her in the amount of $1,000,000.00 for trademark
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 1
`
`3
`Exhibit
`Page 20
`
`

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`Case 2:10-cv-04690-MWF-JC Document 317 Filed 11/07/12 Page 2 of 6 Page ID #:5668
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`Date: November 7, 2012
`Case No. CV-10-04690-MWF (JCx)
`Title:
`Dora M. Diaz v. Marlene Prada Bautista et al.
`infringement. (Docket No. 245). After the verdict, the parties engaged in post-trial
`briefing on Prada’s counterclaims, which essentially sought a judgment overriding
`the jury’s finding of priority trademark use in favor of Plaintiff Dora M. Diaz
`(“Diaz”). (Docket Nos. 253, 254). The Court (the Honorable Jacqueline H. Nguyen,
`United States Circuit Judge, sitting by designation) dismissed Prada’s counterclaims
`and affirmative defenses, emphasizing the Court’s acceptance of the jury’s factual
`determinations. (Docket No. 280). The Court also issued a permanent injunction
`(the “Injunction”) in favor of Diaz, enjoining defendants (including Prada) from
`various activities related to the infringing marks and entered judgment consistent
`with the jury verdict and the Court’s post-trial orders. (Docket Nos. 291, 292).
`
`Prada now seeks a new trial pursuant to Federal Rule of Civil Procedure 59 on
`the basis that the jury verdict was contrary to the clear weight of evidence. In the
`alternative, Prada seeks remittitur of the $1,000,000.00 statutory damages award by
`arguing that the award is excessive and unsupported. Neither argument is availing.
`
`A jury’s verdict is contrary to the clear weight of the evidence if the judge,
`after weighing the entirety of the evidence, “is left with the definite and firm
`conviction that a mistake has been committed by the jury.” Landes Const. Co., Inc.
`v. Royal Bank of Canada, 833 F.2d 1365, 1371-72 (9th Cir. 1987). The Court (Judge
`Nguyen) presided over the trial and made clear in post-trial orders that, while this
`was a close case, there was “ample evidence” to support a finding in Diaz’s favor and
`no evidence beyond speculation to undermine the credibility of Diaz’s witnesses.
`(Docket No. 276 at 4; Docket No. 280 at 3-4). Prada presented the Court with
`multiple opportunities to bypass or disregard the jury’s verdict as to priority or
`willfulness, and the Court declined to do so each time. (Docket Nos. 236, 280, 291,
`292). In fact, Prada’s arguments in the post-trial motions are nearly identical to those
`in this Motion, which means this Motion is tantamount to an ill-favored motion for
`reconsideration.
`
`Having reviewed the docket, weighed the evidence presented at trial, and
`considered the parties’ arguments at the November 5, 2012 hearing, the Court now
`sees no reason to depart from the reasoned conclusions in the earlier post-trial orders.
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 2
`
`3
`Exhibit
`Page 21
`
`

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`Case 2:10-cv-04690-MWF-JC Document 317 Filed 11/07/12 Page 3 of 6 Page ID #:5669
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`Date: November 7, 2012
`Case No. CV-10-04690-MWF (JCx)
`Title:
`Dora M. Diaz v. Marlene Prada Bautista et al.
`The jury’s verdict was not contrary to the clear weight of the evidence as to
`priority. As the Court remarked:
`
`Although Prada argues that the evidence presented by Diaz was
`not credible, the jury implicitly accepted it when it determined
`that Diaz was the first to use her mark in commerce in the United
`States. The Court recognizes that it may reach a difference
`conclusion here, but the Court sees no reason to do so. While
`Prada is correct that very little documentary evidence supports
`Diaz’s claims, the witnesses corroborated each other. Prada, on
`the other hand, presented no evidence to contradict the witnesses’
`testimony, instead relying on the argument that the witnesses
`could not be believed. The jury rejected Prada’s arguments. The
`Court, likewise, finds that Prada has failed to sustain her burden
`of showing priority of use.
`
`(Docket No. 280 at 4). The Court now agrees that this analysis similarly applies to
`the Rule 59 Motion.
`
`Nor is Prada entitled to a new trial on the issue of laches. The issue of laches
`was not decided by the jury, but rather by the Court in a post-trial order. (Docket No.
`280 at 4-6). The Court ruled that Prada’s defense of laches did not apply in this case.
`(Id.). This portion of the Motion is not merely tantamount to a motion for
`reconsideration, it plainly is a motion for reconsideration (although not labeled as
`such).
`
`Motions for reconsideration may only be brought on the grounds of “(a) a
`material difference in fact or law from that presented to the Court before such
`decision that in the exercise of reasonable diligence could not have been known to the
`party moving for reconsideration at the time of such decision, or (b) the emergence of
`new material facts or a change of law occurring after the time of such decision, or (c)
`a manifest showing of a failure to consider material facts presented to the Court
`before such decision.” Local Rule 7-18. Prada fails to show any of these factors.
`She does not point to any material facts not considered by the Court. Instead, she
`asks the Court to now re-weigh the facts considered by Judge Nguyen. The Court
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 3
`
`3
`Exhibit
`Page 22
`
`

`
`Case 2:10-cv-04690-MWF-JC Document 317 Filed 11/07/12 Page 4 of 6 Page ID #:5670
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`Date: November 7, 2012
`Case No. CV-10-04690-MWF (JCx)
`Title:
`Dora M. Diaz v. Marlene Prada Bautista et al.
`respects Judge Nguyen’s thorough evaluation of the facts presented at and after trial
`and will not revisit her reasoned conclusion that “Defendants have failed to satisfy
`the requirements for asserting the defense of laches.” (Docket No. 280 at 6).
`
`Finally, Prada argues that the award of statutory damages against her in the
`amount of $1,000,000.00 was “grossly excessive” because it was based on an
`erroneous finding of willfulness. (Mot. at 11). Prada seeks a new trial as to damages
`or a reduction in the amount awarded.
`
`The jury’s finding of willfulness was not against the clear weight of the
`
`evidence. Prada’s main argument to the contrary is based on a post-trial order that
`Prada flatly misconstrues. The Court did not rule that it disagreed with the jury’s
`finding of willfulness, nor is this a plausible reading of the Court’s order. (Docket
`No. 276). Rather, the Court explained that a finding of willfulness for the purpose of
`trademark infringement does not automatically render a case “exceptional” for the
`purposes of awarding attorneys’ fees under the 15 U.S.C. § 1117(a). (Docket No.
`276 at 2). This legal conclusion is compelled by binding Ninth Circuit authority.
`Watec Co., Ltd. v. Liu, 403 F.3d 645, 656 (9th Cir. 2005) (“the jury’s finding that
`[defendant] ‘intentionally infringed’ does not necessarily equate with the malicious,
`fraudulent, deliberate or willful conduct that we usually require before deeming a
`case exceptional.”). In other words, the standards for assessing “willfulness” in the
`contexts of statutory damages and attorneys’ fees are different. The prior order
`clearly explained this difference and did not disrupt or call into question the jury’s
`conclusion.
`
`The award is properly within the parameters of authorized statutory damages
`based on willfully infringing conduct. Moreover, contrary to Prada’s argument in her
`papers and at the hearing, there is evidence to support a finding that the statutory
`damages awarded do in fact bear “some relation” to actual damages suffered. The
`$1,000,000.00 award is plausibly related to Diaz’s damages in the form of lost
`profits, damage to the value of the mark, and loss of good will; it also reflects the
`jury’s finding of bad faith conduct and serves as a deterrent. See, e.g., Coach, Inc. v.
`O’Brien, 2012 U.S. Dist. LEXIS 52565, at *5 (S.D.N.Y. April 13, 2012) (courts
`typically rely on these factors, which are used to assess statutory damages under the
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 4
`
`3
`Exhibit
`Page 23
`
`

`
`Case 2:10-cv-04690-MWF-JC Document 317 Filed 11/07/12 Page 5 of 6 Page ID #:5671
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`Date: November 7, 2012
`Case No. CV-10-04690-MWF (JCx)
`Title:
`Dora M. Diaz v. Marlene Prada Bautista et al.
`Copyright Act, 17 U.S.C. §504(c)). There is simply no basis for the Court to order a
`remittitur or a new trial as to damages.
`
`Accordingly, Prada’s Motion for a New Trial or Remittitur is DENIED.
`Although the Court is sensitive to the concerns that led Diaz to request Prada be
`treated as a vexatious litigant, the Court does not agree that the filing of this Motion
`constitutes sanctionable conduct. However, any future motions for reconsideration
`that are not consistent with the Local Rules will result in sanctions.
`
`II. MOTION TO ALTER, AMEND, OR CORRECT THE PERMANENT
`INJUNCTION AND STAY ENFORCEMENT OF PARAGRAPH (E)(1)
`
`The Court issued the Injunction on August 24, 2012. (Docket No. 291). Prada
`now seeks to strike Paragraph (e)(1) of the Injunction pursuant to Federal Rule of
`Civil Procedure 59(e).
`
`The Court agrees with Prada to the extent that Paragraph (e)(1) appears to
`mistakenly apply to all searches conducted by any Internet user, regardless of
`territorial boundaries. The original Proposed Injunction included a territorial
`limitation by applying Paragraph (e)(1)’s proscriptions only to those “using any
`electronic device based in the U.S. or its territories” (Docket No. 284). Following
`Prada’s objections to the original Proposed Injunction, Diaz submitted a Second
`Proposed Injunction that made many responsive changes but also excluded this
`restriction. (Docket No. 288-1). Diaz’s Reply, filed concurrently with the Second
`Proposed Injunction, did not explain the removal of the territorial restriction – Diaz
`instead described Paragraph (e)(1) as having the effect of “[r]emoving Prada’s
`FÁJATE trademark from U.S. search engine results.” (Docket No. 287 at 7).
`
`As proposed and as issued, however, Paragraph (e)(1) appears to remove
`Prada’s trademark from search results even where the search is conducted on
`electronic devices outside of the United States. The Court previously held that the
`Injunction’s reach should not extend beyond the borders of the United States and its
`territories. (Docket No. 290 at 9). Because the search engines are not themselves
`used only within the Unites States and its territories, the Injunction is currently
`broader than the scope ordered by the Court.
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 5
`
`3
`Exhibit
`Page 24
`
`

`
`Case 2:10-cv-04690-MWF-JC Document 317 Filed 11/07/12 Page 6 of 6 Page ID #:5672
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES—GENERAL
`
`Date: November 7, 2012
`Case No. CV-10-04690-MWF (JCx)
`Title:
`Dora M. Diaz v. Marlene Prada Bautista et al.
`The Court concludes that this territorial omission was an error, and that
`Paragraph (e)(1) should read as follows: “Prada shall upload and/or transmit, or
`cause to be uploaded and/or transmitted, to www.google.com, www.bing.com and
`any other search engine websites a copy of this injunction along with instructions
`informing Google, Bing, and any other search engine operators that for any search
`using any electronic device based in the U.S. or its territories on their respective
`search engines that includes the term “fajate” or “fájate,” they are required to prevent
`the search results from displaying, or providing any link to, www.fajate.com and
`www.fajasus.com and from displaying any images associated with those two
`websites.” (Emphasis added to note change only). At the hearing, counsel for Diaz
`stated no objection to the addition of this language.
`
`With regard to Prada’s second argument, the Court does not take issue with the
`
`phrase “images associated with those two websites.” It is clear that the Injunction
`prohibits search engines, relying on whatever algorithms or technical processes they
`use to cull images from the Internet and associate them with search terms, from
`displaying to U.S. searchers any images that those search engines relate to
`www.fajate.com and www.fajasus.com. This restriction should not be limited to just
`images appearing on www.fajate.com and www.fajasus.com because a photograph of
`an infringing product purchased from one of the websites would also be problematic.
`The Injunction therefore appropriately reflects the Court’s previous decisions and is
`sufficiently clear pursuant to Federal Rule of Civil Procedure 65. Whether specific
`images are subject to the Injunction is not before the Court at this time, and the Court
`declines to comment on the parties’ discussions regarding these specific marks.
`
`Accordingly, the Motion is GRANTED IN PART AND DENIED IN PART,
`and the Injunction shall be amended to reflect the added language indicated above.
`Prada’s request to stay enforcement of Paragraph (e)(1) is DENIED AS MOOT.
`
`IT IS SO ORDERED.
`
`___: N/A
`Initials of Preparer RS
`
`______________________________________________________________________________
` CIVIL MINUTES—GENERAL 6
`
`3
`Exhibit
`Page 25