Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA367025
`ESTTA Tracking number:
`09/07/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052626
`Defendant
`Bagatelle Holdings LLC
`Michael R. Gilman
`Kaplan Gilman & Pergament LLP
`1480 Route 9 NorthSuite 204
`Woodbridge, NJ 07095
`UNITED STATES
`mgilman@kgplaw.com, jdoloff@kgplaw.com, jaronson@kgplaw.com
`Opposition/Response to Motion
`Michael R. Gilman
`mgilman@kgplaw.com
`/Michael R. Gilman/
`09/07/2010
`Responsive Brief to Motion for Default.pdf ( 9 pages )(46873 bytes )
`ex a-h.pdf ( 35 pages )(2011859 bytes )
`
`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
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`------------------------------------------------------------- x
`13TH STREET ENTERTAINMENT LLC, :
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`Petitioner,
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`BAGATELLE HOLDINGS LLC,
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`Registrant.
`------------------------------------------------------------- x
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`Cancellation No. 92052626
`Reg. No. 3,595,950
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`v.
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`REGISTRANT’S BRIEF IN RESPONSE TO
`PETITIONER’S MOTION FOR ENTRY OF DEFAULT
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`Registrant, Bagatelle Holdings LLC, by its undersigned attorneys, herein responds to
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`Petitioner’s, 13th Street Entertainment LLC, Motion for Entry of Default (“Default Motion”).
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`BACKGROUND:
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`As is properly recited in the Default Motion, Petitioner filed the subject Petition to Cancel on
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`June 25, 2010 and the Board’s June 28, 2010 trial order provided for Registrant’s Answer to the
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`Petition to Cancel by August 7, 2010. The Default Motion also correctly states that as of its filing
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`date of August 18, 2010, Registrant had not filed its Answer.
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`The Default Motion does not, however, do more than make the above bald allegations. It
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`does not, for example, explain that the parties to this proceeding, and these parties’ principals, had
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`been in heated settlement discussions from at least in and around the filing date of the Petition to
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`Cancel in this proceeding, through and including Registrant’s Answer date of August 7, 2010. In
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`fact, these settlement discussions continued through and then past the August 7, 2010 Answer date,
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`and even through and past the August 18, 2010 filing date of the subject Default Motion by
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`Petitioner. These discussions sought to resolve (and still seek to resolve) all disputes between these
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`parties and their principals concerning the name BAGATELLE, along with related matters, including
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`but not limited to, over the registrations that are the subject of this proceeding and over certain still
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`pending applications for these same BAGATELLE marks.
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`Exhibit A hereto1 is an email dated July 27, 2010 from Petitioner’s counsel herein, Stephen
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`Baker, Esq., to Registrant’s below signed counsel, stating in relevant part, “[t]he failure to execute
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`the same will have an adverse effect on a settlement agreement that is currently being negotiated2.”
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`(emphasis added) Further, as late as August 27, 2010, in response to Registrant’s request made to
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`Petitioner for Petitioner’s consent to allow the late filing of Registrant’s Answer in this proceeding,
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`Petitioner’s counsel again emailed Registrant’s below signed counsel (see, Exhibit B hereto3
`), and
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`stated in such email, “[f]urther, the filing of any motions to vacate the default(s) or to suspend the
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`proceeding(s) shall be deemed a rejection by your client(s) of our client’s settlement offers, and an
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`election by your client(s) to terminate settlement discussions.” (emphasis added) Hence, as late as
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`August 27, 2010 it is clear from Petitioner’s counsel email of Exhibit B that the parties were still in
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`settlement discussions. It is also clear from at least these emails from Petitioner’s counsel, that the
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`parties have been in regular and continuous settlement discussions regarding the disputes of the
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`1
`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
`of the July 27, 2010 email to him from Stephen L. Baker, Esq., counsel for Petitioner.
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` 2
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`It should also be noted that Registrant’s counsel herein, Michael Gilman, Esq., was not, and is not, Registrant’s
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`counsel in the subject settlement discussions between these parties and these parties’ principals, and it is represented
`herein by the undersigned that this was the first time he knew of any dispute or settlement discussions between these
`parties.
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`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
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`of the August 27, 2010 email to him from Stephen L. Baker, Esq., counsel for Petitioner.
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`/2/
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` 3
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`subject proceeding (and other related issues) through most of the time since the filing of the Petition
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`to Cancel. It is represented by Registrant’s below counsel that these discussions have in fact been
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`ongoing since at least mid-June, 2010; which is prior to the filing date of the subject Petition to
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`Cancel.
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`The Default Motion also fails to state any “substantial prejudice”, Rule 55(c), Fed. R. Civ. P.,
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`to Petitioner should default not be entered and instead should the proceeding be allowed to continue
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`forward with only the slight delay from the original August 7, 2010 Answer date to the date of the
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`filing of this brief and the contemporaneous filing by Registrant of its Answer to the Petition to
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`Cancel (assuming the Board denies Petitioner’s Default Motion).
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`LEGAL ARGUMENT:
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`“[T]he showing which has consistently been required by the Board and the courts in order to
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`permit the late filing of an answer is that set forth in Rule 55(c), i.e., good cause, … (citation
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`omitted). This good cause is usually found to have been established if the delay in the filing is not
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`the result of willful conduct or gross neglect on the part of the defendant, if the delay will not result
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`in substantial prejudice to the plaintiff, and if the defendant has a meritorious defense.” Fred
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`Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 21 U.S.P.Q.2d 1556, 1556 (T.T.A.B. 1991);
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`Universal City Studios LLLP v. Brost, 2003 WL 22415603, *1, Opp. No. 91153683 (T.T.A.B.
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`October 15, 2003) (attached hereto as Exhibit C4
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`); Delorme Publishing Company, Inc. v. Eartha’s,
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`Inc., 60 U.S.P.Q.2d 1222, 1222 or 1223 (T.T.A.B. 2000) and Carey v. International Consolidated
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`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
`4
`of Universal City Studios LLLP v. Brost, 2003 WL 22415603, Opp. No. 91153683 (T.T.A.B. October 15, 2003).
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`/3/
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`Companies, Inc., 2009 WL 4891812, *2 (E.D.N.Y December 11, 2009)(attached hereto as Exhibit
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`D5
`).
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`Further, it is well-established that a case is not ripe for default judgment where the parties are
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`engaged in good faith settlement negotiations; i.e., which raises a reasonable excuse for a party’s
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`delay in filing an Answer. In Carey, 2009 WL 4891812, *2 (Exhibit D), the court denied plaintiff’s
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`motion for a default judgment, and excused defendant’s delay in serving its answer, where: (i) there
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`was reasonable and on-going settlement negotiations; (ii) there was no willful failure to defend; and
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`(iii) there was no prejudice to plaintiff. The court also found a “lack of good faith and candor in
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`resorting to the filing of a default motion, without notice to defense counsel, in light of ongoing
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`settlement negotiations.” Id. See also, Malletier v. Barami Enterprises, Inc., 2006 WL 328343, *5
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`(S.D.N.Y. February 14, 2006) (attached as Exhibit E
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`6), accord, State Street and Trust Co. v.
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`Inversiones Errazuriz Limitada, 246 F. Supp.2d 231, 250 (S.D.N.Y. 2002) (citing Gonzalez v. City of
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`New York, 104 F. Supp.2d 193, 196 (S.D.N.Y. 2000)) (denying plaintiff’s motion for default because
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`“a good faith belief that an action will settle constitutes a reasonable basis for failing to interpose an
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`answer”). See also, Joe Hand Promotions, Inc. v. Capomaccio, 2009 WL 3268558, *4 (W.D.N.Y.
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`October 6, 2009) (denying motion for default based on failure to answer where counsel believes in
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`good faith that parties are going to resolve the dispute without “further court intervention”) (attached
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`hereto as Exhibit F7
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`).
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`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
`5
`of Carey v. International Consolidated Companies, Inc., 2009 WL 4891812 (E.D.N.Y December 11, 2009).
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` 6
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`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
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`of Malletier v. Barami Enterprises, Inc., 2006 WL 328343 (S.D.N.Y. February 14, 2006).
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`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
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`/4/
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`The following law is also well established by the federal district courts:
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`‘The dispositions of motions for entries of defaults and default judgments and
`relief from the same under Rule 55(c) are left to the sound discretion of a district
`court,’ Enron Oil Corp. v. Diakuhara, 10 F.3d 90, 95 (2d Cir. 1993), and ‘district
`courts regularly exercise their discretion to deny technically valid motions for
`default.’ Sony Corp. v. Elm State Elecs., Inc., 800 F.2d 317, 319 (2d Cir. 1986). The
`Second Circuit has also ‘expressed on numerous occasions its preference that
`litigation disputes be resolved on the merits, not by default.’ Dunkin’ donuts
`Franchised Restaurants LLC v. Got-A-Lot-A-Dough, Inc., No. 07-cv-2303
`(DRH)(MLO), 2008 WL 4861968, at *2 (E.D.N.Y. Oct. 31, 2008) (quoting Azikiwe
`v. Nigeria Airways Ltd., 2006 WL 2224450 (E.D.N.Y. July 31, 2006).
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`Carey, 2009 WL 4891812, *1 (Exhibit D). And, further:
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`‘[D]efaults are generally disfavored and are reserved for rare occasions [and] when
`doubt exists as to whether a default should be granted or vacated, the doubt should be
`resolved in favor of the defaulting party.’
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`Carey, 2009 WL 4891812, *2 (Exhibit D) (quoting Diakuhara, 10 F.3d at 96).
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`As to the first prong of the Board’s above Fred Hayman Rule 55(c) test, Registrant’s above
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`Background section establishes that settlement discussions had been ongoing between the parties and
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`the parties’ principals since at least in and around the date of the filing of the Petition to Cancel in
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`this proceeding through as late as August 27, 2010. Further, and at least at the time Registrant’s
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`Answer was due in this proceeding, Registrant represents it was under threat from Petitioner not to
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`retain counsel of Registrant’s choosing to defend itself and represent it during settlement discussions,
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`and in any event, believed the parties’ dispute would be forthwith resolved through the settlement
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`discussions and the already circulating draft settlement agreement, thereby rendering moot the need
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`for an Answer.8
` Moreover, Petitioner showed bad faith by filing its Default Motion without
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`of Joe Hand Promotions, Inc. v. Capomaccio, 2009 WL 3268558 (W.D.N.Y. October 6, 2009).
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`Registrant states it recognizes the better practice would have been to either file its Answer or a request for an
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`extension of time to Answer in light of the ongoing settlement discussions, but does not believe, for the reasons and law
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`/5/
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`notifying Registrant’s counsel, despite these ongoing and extensive settlement negotiations.
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`As to the second prong of the above Fred Hayman Rule 55(c) test, as Petitioner’s opening
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`brief to its Default Motion recites to no basis for prejudice to itself, let alone “substantial prejudice”,
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`Registrant should be allowed to Answer. Further, since only one month has passed since the
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`originally ordered August 7, 2010 Answer deadline, Petitioner also cannot establish “substantial
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`prejudice” in support of its Default Motion.
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`While opposer argues that applicant’s delay has been prejudicial, neither its
`motion nor the accompanying affidavit establishes prejudice to the satisfaction of
`the Board. While the waste of six months by applicant is regrettable in the
`extreme, opposer’s only allegation of prejudice is that it filed two more
`applications on the presumption that a default judgment would be entered in this
`proceeding and the subject application abandoned, and that opposer “stepped up
`its advertisement campaign at substantial expense and proceeded with further use
`of the EARTHA family of marks.”
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`... Opposer has not alleged that witnesses or evidence have become unavailable
`due to the passage of time, or that it has suffered any other substantial
`prejudice. (emphasis added)
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`Delorme, 60 U.S.P.Q.2d at *2. See, also, H. J. Heinz Company v. the Taco Maker, Inc., 2001 WL
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`300518, *1, Opp. No. 113,583 (T.T.A.B. March 26, 2001) (seventy-four days lost for failure of
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`applicant to timely answer) (attached hereto as Exhibit G9
`).
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`As to the third and final prong of the Fred Hayman Rule 55(c) test, “by the submission of an
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`answer which is not frivolous, applicant [Registrant in this proceeding] has adequately shown that it
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`has a meritorious defense.” Hayman, 21 U.S.P.Q.2d at 1556. “This prong of the test set out in the
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`of this brief, that default should be entered against it, when it is ready, willing and able to defend itself in this proceeding
`as evidenced by its contemporaneously filed Answer.
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`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct copy
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`of H. J. Heinz Company v. the Taco Maker, Inc., 2001 WL 300518, Opp. No. 113,583 (T.T.A.B. March 26, 2001).
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`/6/
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`Fred Hayman case does not require the Board to evaluate the merits of the opposition. Rather, all
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`that is necessary to establish a “meritorious defense” in this context is a plausible response to the
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`allegations contained in the notice of opposition, which applicant has made [through its filing herein
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`of an Answer].” Delorme, 60 U.S.P.Q.2d at *2. See, also, Universal City Studios, 2003 WL
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`22415603 at *1 (“by filing an answer which denies the fundamental allegations in the notice of
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`opposition, applicant has asserted a meritorious defense to this action.”) (Exhibit C).
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`Finally, Delorme also held at *1, “[i]n analyzing the above [Fred Hayman] factors, we have
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`kept in mind that the law strongly favors determination of cases on their merits. CTRL Systems Inc.
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`v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1301 (TTAB 1999).” Which holding is
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`supported by the Board in Alpine Mortgage Corporation v. The Mortgage Department, Inc., 2006
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`WL 2401271, *1, Opp. No. 91166379 (T.T.A.B. August 14, 2006) (“[t]he Board is mindful of its
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`policy to decide cases on their merits where possible and only reluctantly enters judgment by default
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`for failure to timely answer. See TBMP Section 312.02 (2d ed. rev. 2004)”) (attached hereto as
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`Exhibit H10
`).
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`10
`Which the undersigned counsel for Registrant states herein, under penalty of perjury, is a true and correct
`copy of Alpine Mortgage Corporation v. The Mortgage Department, Inc., 2006 WL 2401271, Opp. No. 91166379
`(T.T.A.B. August 14, 2006).
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`/7/
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`CONCLUSION:
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`For Petitioner’s failure to present any arguments to establish the required prongs of the Fred
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`Hayman 3 prong test to show it is entitled to default in this proceeding for Registrant’s failure to
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`timely file its Answer, and for Registrant’s proofs of good cause, no substantial prejudice and a
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`meritorious defense, the Default Motion should be dismissed and Registrant’s Answer,
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`contemporaneously filed herewith, should be entered into this proceeding and the proceeding be
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`allowed to move forward.
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`Respectfully submitted,
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`KAPLAN GILMAN & PERGAMENT LLP
`Attorneys for Registrant
`1480 Route 9 North, Suite 204
`Woodbridge, New Jersey 07095
`(732) 636-4500
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`Dated: September 7, 2010
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`By:
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`Michael R. Gilman
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`/8/
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`CERTIFICATE OF SERVICE
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`I, Michael R. Gilman, do hereby certify that a true and correct copy of the foregoing
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`document, entitled “REGISTRANT’S BRIEF IN RESPONSE TO PETITIONER’S
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`MOTION FOR ENTRY OF DEFAULT”, was served on this 7th day of September, 2010, by
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`first class mail, postage prepaid, on:
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`Stephen L. Baker, Esq.
`BAKER AND RANNELLS, PA
`Attorneys for Petitioner
`575 route 28, Suite 102
`Raritan, New Jersey 08869
`(908) 722-5640
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`Michael R. Gilman
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`Certificate Of Filing On ESTTA System
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`I hereby certify that this correspondence is being filed using the United States Patent and
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`Trademark Office website ESTTA service, on this 7th day of September, 2010.
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`Michael R. Gilman
`Dated: September 7, 2010
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`EXHIBIT A
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`

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`Michael Gilrnan g_—g.m
`
`From:
`Sent:
`To:
`Subject:
`Attachments:
`
`Stephen L. Baker {s.baker@br-trniaw.com]
`Tuesday, July 27, 2010 11:48 AM
`mgilman@kgplaw.com
`RE: Assignments
`lmage001.lpg
`
`We need_to know if the assignments of the pending application will be signed as prepared or with minor, acceptable
`modifications. The failure to execute the same will have an adverse effect on a settlement agreement that is currently
`being negotiated.
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`Stephen L. Baker
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`B/-\i<tiR RRANNELIS, PA
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`I{’\"l'H I I.lIT||-H §'Rh|'I RT!" -'\‘I' |'Hti.\'1 ‘('5'
`
`Baker and Rannells, PA
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`575 Route 28, Suite £02
`Raritan, NJ 08869
`Telephone: (908) 722-5640
`Facsimile: (908) 7254088
`E-mail: s.baker@b1'-t1nlaw.com
`
`www.tmlawwo1‘ldwide.com
`
`This email is confldentiat and may be legally privileged. If you received it in ct‘1'01' please notify us
`immetiiateiy. If you are not the intended recipient you should not copy it, disclose its contents to others, or use
`it for any purpose.
`
`---"Original Message-----
`From: Michael Gllman [maI|to:mgI|man@kgp|aw.com]
`Sent: Monday, July 26, 2010 8:24 AM
`To: s.baker@br-tmiaw.com
`Subject: RE:
`
`Stephen.
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`What about the logo application that is stilt pending? No transfer of that application?
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`Sincerely,
`
`Mike Giiman
`Kapian Gilman & Pergament LLP
`(732) 636-4500, ext. 111
`Admitted NY & CT Only
`
`

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`EXHIBIT B
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`

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`Michael Giiman
`
`From:
`Sent:
`To:
`Ce:
`Subject:
`Attachments:
`
`Stephen L. Baker {s.baker@br-imlaw.com]
`Friday, August 27, 2010 6:01 PM
`mgi|man@t<gplaw.com
`Sanford B. Kayncr, Jr. Jr.; Neil Friedman; Judith V. Wlndhorst
`RE: vacating defaults
`image00‘i,jpg
`
`Without preiudice — FRCP Rule 408
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`Michael:
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`Our client will not consent to the vacating of the defaults so as to allow your c|Eent(s) to file answer(s) of out time. Further,
`the tiling of any motions to vacate the deiauit(s) or to suspend the proceedlng(s) shall be deemed a rejection by your
`client(s} of our client's settlement offers, and an election by your c|lent(s) to terminate settlement discussions.
`
`Steve
`
`Stephen L. Baker
`8 B/s\l<l':‘R
`‘5"R/\NNl‘3I.LS, PA
`I I.i'I"!'i|-‘ll
`i'[H3I'| S."I"‘u‘
`
`-\'l"I'I)ttY\‘1‘1'.\
`
`IN’! I
`
`I
`
`Baker and Rannelis, PA
`
`575 Route 28, Suite l02
`Raritan, NJ 08869
`Telephone: (908) 722-5640
`Facsimile: (908) 7254088
`Email: s.bake1'@br-t1n1aw.co1n
`
`www.tn1iawwcrldwide.com
`
`This email is confidential and may be legally privileged. If you received it in error please notify us
`immediately. if you are not the intended recipient you should not copy it, disclose 1ts contents to others, or use
`it for any purpose.
`
`-----Original Message-----
`From: Michael Gllman [mallto:mg|lman@kgpiaw.com}
`Sent: Monday, July 26, 2010 8:24 AM
`To: s.bal<er@br-tmlaw.com
`
`Subject: RE:
`
`Stephen.
`
`What about the iogo application that is still pending? No transfer of that application?
`
`Sincerely.
`
`

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`EXHIBIT C
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`

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`Wéstlaw
`2003 WL 22415603 (Trademark Tr. & App. Bd.)
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`Page 1
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`H 2
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`003 WL 22415603 (Trademark Tr. & App. Bd.)
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`Trademark Trial and Appeal Board
`Patent and Trademark Office (P.'F.O.)
`
`*1 UNIVERSAL CITY STUDIOS LLLP, SUBSTITUTED FOR UNIVERSAL CITY STUDIOS, INC.
`v.
`
`VALEN BROST
`
`Opposition No. 91 153683
`
`October 15, 2003
`
`Before Cissel, Hairston and Walters
`Administrative Trademark Judges
`
`By the Board
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`Valen Brost has applied to register the mark UNIVERSAL TOYS for toy rockets.[FN” Universal City Studios LLLP has op-
`posed registration of the mark on the grounds that applicant's mark, when used on the identified goods, is likely to cause con-
`fusion with opposer's previously used and registered UNIVERSAL and UNIVERSAL-inclusive marks for a variety of enter-
`tainment, communication, marketing and development services and products, including the licensing and sale oftoys.[FN2]
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`In his answer, applicant denied the salient allegations of the notice of opposition, and asserted as affirmative defenses laches,
`acquiescence and estoppel.
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`Applicant's Technical Default
`Before we turn to opposer's motion for partial summary judgment on applicant's affirmative defenses, and applicant's cross-
`motion for discovery under Fed. R. Civ. P. 561:), we address two preliminary issues.
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`First, as opposer mentions in a footnote to its partial summaryjudgrnent motion, applicant filed his answer on January 21,
`2003, with a certificate of mailing dated January 17, 2003. However, applicant's answer was due on January ll, 2003.[FN3l
`Although the Board did not issue an order to show cause why default should not be entered against applicant for failure to file
`a timely answer, applicant technically is in default. See Trademark Ruie 2.106(a); Fed. R. Civ. P. 55(a).
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`Whether default judgment should be entered against a party is determined in accordance with Fed. R. Civ. P. 55tc), which
`reads in pertinent part: “for good cause shown the court may set aside an entry of default.” As a general rule, good cause will
`he found where the defendant's delay has not been willful or in bad faith, when prejudice to the plaintiff is lacking, and where
`defendant has a meritorious defense. See Fred Hyman Beverly Hills, Inc. v. Jacques Bernier
`Inc. 21 USPQ2d 1556 t
`TTAB 1991}.
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`In this case, we find that opposer is not prejudiced by applicant's late answer and, by filing an answer which denies the fun-
`damental allegations in the notice of opposition, applicant has asserted a meritorious defense to this action. However, appli-
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`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`

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`2003 WL 224i5603 (Trademark Tr. & App. Bd.}
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`Page 2
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`cant has offered no explanation as to why he failed to timely file his answer. In view of the foregoing, applicant is allowed
`until THIRTY DAYS from the mailing date of this order to explain why his answer was filed late.
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` 0 oser's Motion to Substitute Universal Cit Studios LLLP for Universal Cit Studios Inc.
`The second issue concerns opposer's motion to substitute parties based on several corporate conversions and changes of name
`in May 2002 from Universal City Studios, Inc. to Universal City Studios LLLP. The parties have fully briefed the issue, and
`we have considered opposer's reply. See Trademark Rule 2.t27(a).
`
`*2 The Board instituted this proceeding on December 2, 2002. On November 20, 2002, the USPTO‘s Assignment Services
`Division recorded opposer's eonversionlchange of name for, inter alia, the trademark registrations pleaded in this opposi-
`tior1.lFN4l As the successor-in-interest to Universal City Studios, Inc., Universal City Studios LLLP owns the pleaded trade-
`mark registrations. Inasmuch as the Office recorded the name change eleven days before the Board instituted this proceeding,
`
`and because Universal City Studios, inc. no longer exists, opposer's motion to substitute is granted. See SDT Inc. v. Patter-
`son Dental Co. ,1) USE2d l707,l_7t)9, ng_TTAB 1993) (when an opposer is acquired by another party, “[t]he transferee
`will be substituted if the transfer occurred prior to the commencement of the proceeding”)
`
`Opposer‘s Motion for Partial Summary Judgment on Applicant's Affirmative Defenses; Applicant's Motion for Dis-
`cove: Pursuant to Fed. R. Civ. P. 56
`We now turn to opposer's motion for partial summary judgment on applicant's affirmative defenses, and applicant's cross-
`motion for 56(t) discovery. The parties have fully briefed the motions, and we have considered opposer's reply in support of
`the partial summaryjudgment motion. See Trademark Rule 2.i27(a).
`
`A party that seeks Rule Sfitfl discovery must state, in an affidavit or declaration under 37 CPR. §2.20, the reasons why it is
`unable, without such discovery, to present by affidavit, facts sufficient to show the existence of a genuine issue of material
`fact for trial. See Keebler Co. v. Murray Bakery Pron'uct.g,_866 F.2d 1386, 9 USPQgd 1736 (Fed. Cir. i989).
`
`In his brief, applicant states that partial summary judgment is premature because neither party has conducted discovery, and
`he requires discovery to address some of the issues raised in opposer's motion. In the supporting declaration, applicant's at-
`torney, Kenneth N. Caldwell, states that:
`Applicant intends to seek discovery concerning the marks and related goods claimed by Opposer, the chain—of—title with
`respect to said marks. In addition, Applicant will seek discovery concerning any claimed damages to Opposer as they
`may relate to the marks ‘UNIVERSAL GAMES‘ and ‘UNIVERSAL TOYS,’ respectively.
`Upon information and belief, the discovery obtained may allow Applicant to further identify genuine issues of material
`fact in response to the Motion for Partial Summary Judgment.
`Caldwell Decl., pars. 3 and 4, respectively.
`
`Applicant is reminded that the purpose of 56(f) discovery is to allow the party seeking such discovery to obtain evidence ne-
`cessary to respond to a surnmaryjudgrnent motion, and not to obtain general discovery. Inasmuch as we have granted oppos-
`er's motion to substitute, to the extent applicant seeks 56(1) discovery to establish opposer's alleged lack of standing to op-
`pose, the motion is n1OOi.l-FN5l
`
`*3 Further, applicant does not require 566) discovery from opposer on the affirmative defenses of iaches, acquiescence and
`estoppel; applicant already possesses the information he requires to establish these equitable defenses. See DAK Indus. Inc. v.
`1')a1'z'clu'Kosho Co. Lrd.,_25 USPQ2d 162g 625_(3‘TAB l9‘9_3).
`
`Accordingly, applicant's motion for 56(t) discovery is denied.
`
`We now turn to opposer‘s motion for partial summaryjudgment on applicant's affirmative defenses.
`
`A party is entitled to summary judgment when it has demonstrated that there are no genuine issues as to any material facts,
`
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`and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56tc[. The evidence must be viewed in a light favorable
`to the nonmoving party, and all justifiable inferences are to be drawn in the nonmovant‘s favor. Opryiand USA Inc. v. The
`
`Great A.-nericrm Music Show, Inc, 970 F.2d 847 23 USPQ2d 1471 (Fed. Cir. i992).
`
`Upon careful consideration of the arguments and evidence presented by tl1e parties, and drawing all inferences with respect to
`the motion in favor of applicant as the nonmoving party, we find that there are no genuine issues of material fact which re-
`quire a trial for resolution. We therefore grant opposer's motion for partial suimnaryjudgment on applicant's affirmative de-
`fenses.
`
`Laclies
`
`By his first aftirmative defense, applicant asserts a “prior registration” or “Morehouse” defense, namely, that opposer's
`claims “are barred by Eaches based on another incontestable mark ‘Universal Games’ of which the instant mark is deriva-
`cive."1F“°1 See Morehortse Mfg. Corp. 1:. J. Slricklarzd & C0,, 407 F.2d 881, 160 USPQ 715 {CCPA 1969).
`
`The Morehouse defense only applies when the marks and goods in the prior registration and involved application are “sub-
`stantially identical.” See TBC Corg. v. Grand P.rr'.r Ltd, 12 USPQ2d 1311, 1314 tTTAB 1989}(citations omitted). For pur-
`poses of the Morelronse defense, two marks are “substantially identical” when they are either literally identical or legally
`equivatem.l””1 See 0—MBread1nc.
`1’. United States or m is commmee 65 F.3d 933 35 USP 2d 1041 Fed. Cir. 1995
`(OLYMPIC and OLYMPIC KIDS are neither the same nor legally equivalent). In determining wllether the goods are “sub~
`stantiaily identical,“ the Morehouse defense requires the goods to be “identical, substantially the same, or so related so as to
`
`represent in law a distinction without a difference." La Fara importing Co. v. F. L11’ de Cccco 8 Uflpd 1 I£,_l 347 (fl/AB
`l988t(spaghetti sauce and alimentary pastes not substantially the same); see also TBC Corp, Stlgfft, 12 USPQ2d at £314 (car
`wash services and various automotive parts and products not substantially the same).
`
`
`
`*4 There is no genuine issue of material fact that the marks UNIVERSAL TOYS and UNIVERSAL GAMES, and their asso-
`ciated goods, namely, toy rockets and board games, are not “substantially identical.”
`
`With regard to the marks, we acknowledge that applicant's marks share the term UNIVERSAL. However, the second word in
`each mark differs, and, considering the marks in their entireties, UNIVERSAL GAMES and UNIVERSAL TOYS do not
`
`“create the same, continuing commercial impression.” Van Dime-Crotgy supra 926 F.2d 1156, 17 USPQ2d 1866. Moreover,
`when applicant filed the involved application, he included a cover letter dated July 31, 2001, stating:
`I currently am the registered owner for the tin ‘Universal Games.’ I am starting a toy division under the name ‘Universal
`Toys.’ Please issue the tm Universal Toys. I do not object to the use of the tin ‘Universal Toys‘ as infringing on, or being
`confusingly similar to my tm ‘Universal Games.’
`Thus, applicant recognized that UNIVERSAL TOYS and UNIVERSAL GAMES are different.
`
`With regard to the goods, applicant relies on dictionary definitions to support his argument that the words “toys” and
`“games” are legal equivalents and that “a toy is a specific type of game for children.” However, the cited references define
`“toy" and “game” differe11tly.{F”a] In addition, applicant makes no argument regarding the relationship between the specific
`goods identified in the involved application and his prior registration, namely, toy rockets and board games. Instead, appli-
`cant argues the purported similarities between the general categories of toys and games.
`
`Although opposer concedes that toy rockets and board games are “somewhat similar” in that they are intended for children's
`recreational use, this relationship is too tenuous to support a Morehonse defense. See T1L",_suprz_1_,_l2 USP_Q_2d at 1314 (Mo-
`rehouse defense fails as a matter of law where goods are merely “related to and within the natural zone of expansion” of each
`other.)
`
`Estoppel and Acguiescencc
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`As grounds for applicant's affirmative defenses of estoppel and acquiescence, applicant claims that opposer is “estopped from
`raising the oiaims made in this opposition,” and that opposer “has impliedly acquiesced to Applicant's use of the pubiished
`mark."
`
`it is weii settled that “[a]cquiescence and estoppel require some affirmative act by opposer which led applicant to reasonably
`believe that opposer would not oppose applicant's registration of its mark.” DAK Indus. Ina, snpm, 25 USPQ2d at I625.
`
`Opposer contends that there was no affirmative act, or any reasonable basis for appiicant to believe opposer would not file the
`instant proceeding. Opposer submitted the deciaration of Anne B. Nieisen, opposer‘s Vice President and Senior Trademark
`Counsel in support of the partial slunmaryjudgment motion, and, in particular, to support this contention. in her declaration,
`Ms. Nieisen states that the parties l1ad no contact before the involved appiication was pubiished for op