Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA393016
`ESTTA Tracking number:
`02/11/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053310
`Plaintiff
`Pusser's (2001) Ltd.
`JAMES M. SLATTERY
`BIRCH STEWART KOLASCH & BIRCH LLP
`PO BOX 747
`FALLS CHURCH, VA 22040-0747
`UNITED STATES
`mailroom@bskb.com
`Opposition/Response to Motion
`James M. Slattery
`jms@bskb.com, johnst@bskb.com, bg@bskb.com, mailroom@bskb.com
`/James M. Slattery/
`02/11/2011
`2011-02-11 Petitioner's Objection and Response to the Motion for Summary
`Judgment.pdf ( 27 pages )(1311864 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`BOX TTAB FEE
`
`TRADEMARK
`3 129-0222L
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In Re: Registration No. 1,449,837
`For the mark: “PUSSER’S OF THE WEST INDIES (Stylized)”
`Registered: July 28, 1987
`
`
`
`
`PUSSER’S (2001) LTD.
`
`Petitioner,
`
`V.
`
`Cancellation No. 92053310
`
`HMX POLAND SP.Z.0.0., LUXEMBOURG
`
`BRANCH; HMX, LLC
`
`Respondent-Registrant.
`
`Trademark Trial And Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 223 13-1451
`
`PETITIONER’S OBJECTION AND RESPONSE TO THE
`
`MOTION FOR SUMMARY JUDGMENT AND
`BRIEF IN SUPPORT THEREOF
`
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`
`JMS/BG/adt
`
`

`
`Response to Motion for Summary Judgment
`
`Table of Authorities and Exhibits
`
`Cancellation No. 92053310
`3129-0222L
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`Table of Authorities Page 1 of 1
`
`Page
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`Cases
`
`Ammon Person v. Narragansset Dairy Co., 262 F. 880 (CCA 1“ Cir. 1919) ............................ .. 12
`
`Celotex Corp. v. Catrett, 477 U.S. 317 (1987) ............................................................................. .. 4
`
`Compagnie Gervais Danone v. Precision Formulations, LLC, 89 USPQ2d 1251
`(TTAB 2009) ............................................................................................................................ .. 2
`
`Continental Illinois National Bank & Trust Co. v. Chicago R.I. P.Ry., 294 U.S. 648
`(1935) ...................................................................................................................................... .. 11
`
`Fiat Group Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111 (TTAB 2010) ............................ .. 8
`
`Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989) ...................................................................... .. 5
`
`HHG Corp. v. Extreme Championship Wrestling, 2006 WL 1288591, to Bank R.
`(S.D.N.Y. May 2, 2006) .......................................................................................................... .. 19
`
`Hough Mfg. Corp. v. Virginia Metal Industries, Inc., 453 F.Supp 496 (E.D. Va. 1978) ........... .. 10
`
`In Re Marr Broadcasting Co., Inc., 79 B.R. 673 (Bank R.S.D.Tex 1987) ................................. .. 18
`
`In Re McCrory Corp., 160 B.R. 502 ........................................................................................... .. 18
`
`In Re Nutri—Systems, Inc., 159 B.R. 725 (E.D. Penn. 1993) ....................................................... .. 18
`
`In Re Pan American School of Travel, Inc., 47 Bankr. 242 (Bankr. S.D.N.Y. 1985) ................ .. 21
`
`Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360 (Fed. Cir. 2000) ........................................ .. 6
`
`Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953 (TTAB 2008) ................................. .. 8
`
`Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024 (CCPA 1982) ............................... .. 7
`
`Luckie Magic Corporation, dba Luckie Manufacturing Co., v. McCall Manufacturing
`Company, Inc., USPQ 487 (TTAB 1962) ............................................................................... .. 11
`
`Midland National Bank v. New Jersey Department ofEnvironmental Protection, 475
`U.S. 1090, 106 S.Ct. 1982 ...................................................................................................... .. 22
`
`Orouba Agrz'foods Processing Co. v. United Food Import, 97 USPQ2d 1310 (TTAB
`Dec. 28, 2010) ........................................................................................................................... .. 6
`
`Reconstruction Finance Corp. v. J.C. Menihan Corp., 28 F.Supp. 920 (W.D.N.Y.
`1939) ....................................................................................................................................... .. 10
`
`Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999) ................................................................. .. 7, 8
`
`Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368 (Fed. Cir. 2006) ............................ .. 5
`
`University Book Store v. University of Wisconsin Board ofRegents, 33 USPQ2d 1385
`(TTAB 1994) ............................................................................................................................. .. 4
`
`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`
`JMS/BG/adt
`
`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Table of Authorities Page 2 of 2
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`Other Authorities
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`47 Bankr. at 244 .......................................................................................................................... .. 21
`
`Trademark Trial and Appeal Board Manual of Procedure, § 528.01 ............................................... .. 4
`
`Rules
`
`Code of Federal Regulations, Title 37 .......................................................................................... .. 1
`
`Federal Rules of Civil Procedure, Rule 8(f) ................................................................................. .. 7
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Page 1
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`Petitioner, PUSSER’S (2001) LTD. (hereinafter “Petitioner”) hereby, through its attorneys,
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`files the present Objection and Response to the Motion for Summary Judgment and Brief in Support
`
`Thereof filed by HMX POLAND SP.Z.0.0., LUXEMBOURG BRANCH (formerly known as
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`EMBU INVESTMENTS SP.Z.0.0. BRANCH IN LUXEMBOURG (“HMX POLAND”) and
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`Hl\/IX, LLC (“HMX”), a subsidiary and/or affiliate of HMX POLAND (collectively referred to
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`hereinafter as the “Respondent”) on January 25, 2011.
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`In the Statement of Facts, Respondent is relying on matters outside the pleadings set forth in
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`the Petition for Cancellation to prevail in the Motion for Summary Judgment. More specifically,
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`Respondent has submitted a Sales Order issued by the United States Bankruptcy Court for the
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`Northern District of Illinois, Eastern Division, dated June 25, 2009, to support Respondent’s claim
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`that Petitioner is barred, as a matter of law, from petitioning to cancel Respondent’s U.S. Trademark
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`Registration No. 1,449,837. Respondent has alleged that the Petition for Cancellation should be
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`dismissed for failure to state a claim upon which relief may be granted.
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`RESPONDENT’S MOTION FOR SUMMARY JUDGMENT
`SHOULD BE DENIED
`
`According to 37 CFR 2.l27(e)(1), a Motion for Summary Judgment may not be filed until
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`the moving party has made its initial disclosures. Respondent filed its Motion for Summary
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`Judgment on January 25, 2011. The deadline for making initial disclosures is March 3, 2011. The
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`Trademark Trial and Appeal Board (TTAB) Order of January 14, 2011 denied the Respondent’s
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`Motion to Dismiss and ordered Respondent to file a Motion for Summary Judgment. However, the
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`Order does not mean that Respondent can file a Motion for Summary Judgment before the initial
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`disclosures are filed. The Respondent’s motion did not contain a statement that Respondent made its
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`required initial disclosures prior to the filing of the motion. Respondent has not asserted a claim or
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
`
`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3 129-0222L
`
`Page 2
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`issue preclusion or lack ofjurisdiction by the TTAB. The motion was filed prior to the answer, prior
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`to the mandatory discovery conference and prior to the March 3, 2011 deadline for initial
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`disclosures. Therefore, the Respondent’s Motion for Summary Judgment is premature and should
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`be denied. See Compagnie Gervais Darzorze v. Precision Formulations, LLC, 89 USPQ2d 1251,
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`1255 at fn.7 (TTAB 2009).
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`If the Board determines that the Respondent’s Motion for Summary Judgment should stand,
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`Petitioner responds as follows:
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`STATEMENT OF FACTS
`
`On November 22, 2010, Petitioner commenced this proceeding by the filing a Petition for
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`Cancellation (“Petition”). Petitioner asserts five grounds for cancellation, namely:
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`(1)
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`non—use prior to 2007 (see paragraphs 10 and 11 in the Petition);
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`. (2)
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`the specimen filed fraudulently was not used on t-shirts or sweaters (see
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`paragraph 12 of the Petition);
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`(3)
`
`(4)
`
`(5)
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`incorrect entity filed renewal application (see paragraphs 13-15 of the Petition);
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`non-use since 2007 (see paragraph 16 of the Petition); and
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`invalid assignment of trademark in gross (see paragraphs 17-20 of the Petition).
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`Instead of filing an answer to the Petition, Respondent filed a Motion to Dismiss on December 20,
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`2010. The Board issued an Order on January 14, 2011, that the Respondent’s Motion to Dismiss
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`should be denied because the Respondent relied on matters beyond the pleadings in support thereof.
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`The Respondent then filed a Motion for Summary Judgment on January 25, 2011. Respondent
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`made no effort to respond to the issues raised by the Petitioner in the Petition for Cancellation but
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Page 3
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`merely focused on the Bankruptcy Court Order to excuse the abandonment and other issues relating
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`to the trademark that is sought to be cancelled in the present cancellation proceeding.
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`INTRODUCTION OF DISPUTED FACTS
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`1.
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`Respondents allege that HMX POLAND SP.Z.0.0., LUXEMBOURG BRANCH
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`(formerly
`
`known
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`as EMBU INVESTMENTS SP.Z.0.0. BRANCH IN
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`LUXEMBOURG (“HMX POLAND”) and HMX, LLC (“HMX”), a subsidiary
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`and/or affiliate of HMX POLAND are the owner of the mark “PUSSER’S OF THE
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`WEST INDIES and Design” as set forth in Registration No. 1,449,837. However,
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`this fact is in dispute. PUSSER’S (2001) LTD., the Petitioner, has established that
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`the Petitioner is the owner of the mark “PUSSER’S OF THE WEST INDIES and
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`Design.”
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`2.
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`Petitioner has alleged that the Respondent has abandoned the trademark “PUSSER’S
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`OF THE WEST INDIES and Design” as set forth in Registration No. 1,449,837.
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`The Respondent has not responded to the issue relating to the abandomnent of the
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`trademark. Thus, this fact is in dispute.
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`3.
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`Petitioner filed the Petition for Cancellation, as a party of interest who would be
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`damaged, based on non-use and abandonment as well as fraud. Respondent reliance
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`on an alleged failure to bring a “claim, encumbrance, lien or other interest in or
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`against the ‘837 registration” prior to the sales order of the Bankruptcy Court
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`decided on June 25, 2009 is an issue in dispute. Respondent did not file an answer
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`to address any of the issues relating to the abandonment and non-use as well as fraud
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`alleged by the Petitioner. Petitioner was not a named party in the bankruptcy
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129—0222L
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`Page 4
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`proceeding. The ability of Respondent to rely on the Bankruptcy Court Order or Sale
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`Order of June 25, 2009 that does not identify the Petitioner as a party to prevail in a
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`Motion for Summary Judgment is an issue in dispute.
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`4.
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`The Sales Order of the Bankruptcy Court did not decide the validity of the trademark
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`as set forth in ‘837 registration particularly, since the validity of this trademark
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`registration was not an issue in the Sales Order. More specifically, the issue of
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`abandonment and non-use of this mark as well as fraud was not raised and
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`determined by the Bankruptcy Court. This is an issue in dispute.
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`5.
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`Respondent claims ownership of the mark “PUSSER’S” due to the assignment of
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`the mark by the Petitioner’s predecessor. However, Respondent abandoned the
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`mark “PUSSER’S” as set forth in Registration No. 1,953,481 since the owner of the
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`mark failed to file an Acceptable Declaration under Section 8 of the Lanham Act. If
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`the Respondent claims common law rights in the mark “PUSSER’S,” no evidence of
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`use of this mark had been found before the Petition for Cancellation was filed. This
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`is an issue in dispute.
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`ARGUMENT
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`Summary judgment is appropriate where there is no genuine issue of material fact such
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`that the moving party is entitled to judgment as a matter of law, Fed. R. Civ. P. 56(c); see also
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`Celotex Corp. v. Catrett, 477 U.S. 317 (1987), and "more evidence than is already available in
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`connection with this motion should not be reasonably expected to change the result
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`herein." University Book Store v. University of Wisconsin Board ofRegents, 33 USPQ2d 1385, 1390-
`
`91 (TTAB 1994). As stated in the Trademark Trial and Appeal Board Manual of Procedure Section
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
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`Page 5
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`528.01:
`
`"The purpose of the motion is judicial economy, that is, to avoid an unnecessary
`trial where there is no genuine issue of material fact and more evidence than is already
`available in connection with the summary judgment motion could not reasonably be
`expected to change the result in the cases.” See also, Pure Gala’, Inc. v. Syntex (U.S.A.),
`Inc. 122 U.S.P.Q. 741, 743 (Fed. Cir).”
`“The non-moving party must be given the benefit of all reasonable doubt as to
`whether genuine issues of material fact exist; and the evidentiary record on summary
`judgment, and all inferences to be drawn from the disputed facts, must be viewed in the
`light most favorable to the non-moving party.” See, Lloyd ’s Food Products Inc. v. Eli ’s
`Inc., 987 F2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).
`
`LEGAL STANDARD
`
`A. Summary Judgment Standard
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`As the Respondent stated, Summary Judgment is a pre-trial device for disposing of cases
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`in which there is no genuine issue as to any material fact and the moving party is entitled to
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`judgment as a matter of law.
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`Flatley v. Trump,
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`11 USPQ2d 1284, 1287 (TTAB 1989).
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`However, it is clear that genuine issues of material fact do exist that are in dispute. Respondent
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`has not filed an answer to address the issues relating to non—use of the mark in connection with
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`the goods set forth in the registration to be cancelled.
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`In View of the various issues that are in
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`dispute, the Motion for Summary Judgment is premature and must be denied.
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`B. Resjudicata Standard
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`Respondent raised the issue of res judicata against Petitioner but the Respondent did not
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`demonstrate that:
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`1.
`
`2.
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`3.
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`There is an identity of parties or those in privity with them;
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`There has been an earlier final judgment on the merits of a claim; and
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`The second claim is based on the same set of transactional facts as the first.
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`Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1378
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129~0222L
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`Page 6
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`(Fed. Cir. 2006); Jet, Inc. v. Sewage Aeration Systems, 223 F.3d l360, 55 USPQ2d 1854
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`(Fed. Cir. 2000); Orouba Agrzfoods Processing Co. v. United Food Import, 97 USPQ2d
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`1310 (TTAB December 28, 2010).
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`Respondent reliance on resjudicata against Petitioner is in dispute based on the failure of
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`the Respondent to establish the requirements as set forth above. In View of the various issues
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`that are in dispute, the Motion for Summary Judgment is premature and must be denied.
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`RESPONSE TO RESPONDENT’S ARGUMENT
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`POINT I
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`Petitioner has standing to petition for cancellation of the ‘837 registration. Respondent
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`alleged that Petitioner does not have standing to bring the instant cancellation proceeding
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`because Petitioner does not have a “real interest in either the ‘837 registration, the cancellation
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`thereof, or the outcome of this proceeding.”
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`The present Petition for Cancellation states a claim upon which relief can be granted
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`based on the legal sufficiency of the petition. The Petitioner needs only to allege such facts as
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`would, if proved, establish that the Petitioner is entitled to the relief sought, that is, that (1) the
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`Petitioner has standing to maintain the proceeding, and (2) a valid ground exists for canceling
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`the subject registration.
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`The issue is one of pleadings and not proof. Therefore, Petitioner need not respond by
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`submitting proofs in support of its pleadings. Petitioner must be provided with an opportunity to
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`submit evidence in support of the positions raised by the Petitioner.
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

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`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129~0222L
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`Page 7
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`It is the duty of the Board to examine the Petition for Cancellation in its entirety, construing
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`the allegations therein liberally, as required by Fed. R. Civ. P. 8(f), to determine whether it contains
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`any allegations, which, ifproved, would entitle the Petitioner to the relief sought.
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`Petitioner submits that there is absolutely no doubt that Petitioner has alleged such facts as,
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`if proved, would demonstrate that it is the owner of the marks “PUSSER’S” and “PUSSER’S OF
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`THE WEST INDIES and Design” and that Petitioner has been damaged by the fraud, non-use and
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`abandonment of the ‘837 Registration by the Respondent and/or its predecessors.
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`Respondent may dispute these facts. However, Petitioner is not required to prove facts at
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`this stage. Respondent has not argued, nor could it, that the Petitioner would be entitled to no relief
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`if Petitioner could prove the facts as pled.
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`To withstand a Motion for Summary Judgment, a Petition for Cancellation only needs to
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`allege such facts that, if proved, would establish that Petitioner is entitled to the relief sought. That
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`is, that (1) Petitioner has standing to maintain the proceeding, and (2) a valid ground exists for
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`canceling the registration. See Lipton Industries, Inc. v. Ralston Purina C0., 670 F.2d 1024, 213
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`USPQ 185 (CCPA 1982).
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`STANDING
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`Petitioner has alleged facts that demonstrate that Petitioner has a real interest, that is, a
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`personal stake in seeking to cancel Respondent’s trademark registration and that Petitioner is being
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`damaged. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). For
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`example, Petitioner alleged that Petitioner’s predecessor-in—interest used the mark since 1980 in
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`connection with various goods and services including clothing. See paragraphs 1-5 of the Petition.
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`These allegations, if proved, would be sufficient to meet the liberal threshold for determining
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

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`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3 129-0222L
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`Page 8
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`standing, namely, whether a plaintiffs claim of damage has a reasonable basis in fact and reflects a
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`real interest in the case. Id.
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`Furthermore, Petitioner is the owner of trademark Application Serial No. 85/032,130.
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`Respondent’s ‘837 Registration was initially cited as a bar to the registration of the Petitioner’s
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`mark. See Fiat Group Automobiles S.p.A. v. ISM Inc., 94 USPQ2d 1111, 1112 (TTAB 2010). The
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`Board held in this case that standing was found where the Office made a provisional refusal of
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`opposer’s application based on prior pending applications. The Board also cited Life Zone Inc. v.
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`Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) in which the Board found standing
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`where the opposed application was cited as a potential bar to opposer’s registration.
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`Because the Petitioner’s ‘130 Application was initially blocked by the ‘837 Registration of
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`the Respondent, Petitioner has standing to cancel the ‘837 Registration.
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`GROUNDS FOR CANCELLATION
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`In the Petition, Petitioner presented five grounds to assert Valid grounds for seeking to
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`cancel the Respondent’s trademark registration. More specifically, in paragraph 10, Petitioner
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`stated the first ground for cancellation, namely the ‘837 Registration was abandoned with no
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`intention to resume use for at least three (3) years prior to 2007 after the mark was assigned to TAG
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`APPAREL, INC.
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`In addition, in paragraph 11, Petitioner stated that Respondent’s predecessor
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`fraudulently filed a renewal of the registration claiming use of the mark in conjunction with the
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`goods set forth in the registration. The filing of the Sections 8 and 9 Declaration renewal
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`application based on use in commerce by HMX SPORTWEAR, INC. was a knowingly fraudulent
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`filing with intent to defraud the U.S. Patent and Trademark Office for the apparent sole purpose of
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`maintaining the trademark registration.
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
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`Page 9
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`Petitioner further claimed in paragraph 12 that “HMX SPORTWEAR, INC. filed a Sections
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`8 and 9 Declaration” with a statement that “the mark is in use in commerce on or in connection with
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`all goods or services listed in the existing registration for this specific class.” However, the
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`specimen filed by HMX SPORTWEAR, INC. with the U.S. Patent and Trademark Office “was a
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`photograph of the label which showed the mark used on a 100% silk shirt made in China. The
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`specimen did not show use of the mark on the goods set forth in the trademark registration, namely,
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`t-shirts and sweaters.” With regard to this fact, Petitioner stated that “this action constitutes
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`intentional fraud on the USPTO by making a material false representation to the USPTO in order to
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`maintain the trademark registration which had already been abandoned.”
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`Moreover, in paragraphs 13-15, Petitioner alleged that the incorrect party filed a response to
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`the Trademark Exa.miner’s Office Action in which the Trademark Examiner inquired as to who was
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`the correct party to file the renewal application. However, HMX SPORTWEAR, INC., through its
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`attorney, filed a change of Power of Attorney without any explanation regarding the Trademark
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`Examiner’s inquiry. The filing of the renewal by HMX SPORTWEAR, INC. in 2007, which was a
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`material false misrepresentation as to the correct owner of the trademark was not only filed falsely
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`by an entity that was not the owner of the mark, but the information filed as to use in commerce was
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`also false.
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`In paragraph 16, Petitioner stated that the ‘ 837 Registration was abandoned from 2007 to the
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`present, i.e., for more than three (3) years, with no intent to resume use.
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`Lastly, in paragraphs 17-20, Petitioner alleged that since the assignee, TAG APPAREL,
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`INC., did not use the mark after the assignment of 1998, the assignment from TAG APPAREL,
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`INC. to HMS SPORTWEAR, INC. was an assignment in gross because no goodwill was assigned
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Page 10
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`at that time.
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`In addition, Petitioner stated that the assignment from HMX SPORTWEAR, INC. to
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`EMBU INVESTMENTS SP.Z.0.0., BRANCH LUXEMBOURG was also an assignment in gross
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`because the ‘837 Registration was assigned without goodwill.
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`Based upon the above allegations, Petitioner asserts Valid grounds for seeking to cancel
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`Respondent’s registration.
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`POINT II
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`BANKRUPTCY COURT ORDER
`
`1. Bankruptcy Order Carmot Automatically Excuse the Abandonment of the Mark
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`It appears that Respondent merely uses the Bankruptcy Court Order of June 25, 2009 to
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`excuse the non-use of the mark set forth in the ‘837 Registration in the United States. The
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`bankruptcy proceeding was filed January 23, 2009 and the Bankruptcy Court issued its Order on
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`June 25, 2009. However, the filing of bankruptcy does not automatically result in or excuse a
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`debtor’s abandonment of his rights in a mark. A trustee or a debtor—in-possession must protect a
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`mark from abandonment or loss of Value by continuing to use the mark in commerce. Petitioner
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`submits that the filing of the bankruptcy by HMX does not excuse the non-use of the mark and does
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`not cure the fact that the mark had been abandoned by the Respondent’s predecessor. See Hough
`
`Mfg. Corp. v. Virginia Metal Industries, Inc., 453 F.Supp 496, 500, 203 USPQ 436 (ED. Va. 1978).
`
`(Where all business operations ceased or the tangible assets were separated from the goodwill of the
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`company, the trade names and trademarks of the business ceased to be protectable); Also see
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`Reconstruction Finance Corp. v. J.C. Menihan Corp., 28 F.Supp. 920 (W.D.N.Y. 1939) 459 U.S.
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`909 (1982).
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
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`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129—0222L
`
`Page 11
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`Petitioner did not raise the issue of non-use and abandonment of the ‘837 Registration in the
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`bankruptcy proceeding by June 25, 2009. Petitioner has raised the issue of abandonment and non-
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`use as well as fraud conducted by the Respondent with regard to the ‘837 registration in the present
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`Petition for Cancellation. Petitioner was not under a duty to raise the issues set forth in the present
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`Petition for Cancellation in the bankruptcy proceeding. The bankruptcy proceeding only addresses
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`issues relating to any claim, encumbrances, lien, or other interest. A party who is damaged by a
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`trademark registration has proper standing to bring a Petition for Cancellation. Respondent should
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`proceed to answer the Petition for Cancellation to introduce evidence that the mark set forth in the
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`‘837 has been used in connection with the goods set forth in the registration in the United States.
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`Such issues are not properly before a Bankruptcy Court.
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`2. The Bankruptcy Order Cannot Entitle Respondent More Rights in the Trademark
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`The Bankruptcy Code cannot enlarge or expand the substantive rights conferred by the
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`Trademark Law. See Continental Illinois National Bank & Trust Co. v. Chicago R.I. P.Ry., 294
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`U.S. 648 (1935).
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`In the Bankruptcy Order of June 25, 2009, on page 13, Transfer of Acquired
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`mtg, in paragraph 8 it is provided that “pursuant to ll USC §363(b) and 363(f), the acquired
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`assets shall be transferred to the purchasers upon consummation of the agreement (the “closing
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`date”) free and clear of all encumbrances of any kind or nature whatsoever with all such
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`encumbrances of any kind or nature whatsoever to attach to the net proceeds of the sale in the order
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`of their priority, with the same Validity, force and effect which they have as against the acguired
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`assets, subject to any claims and defenses the debtors may possess with respect thereto.” See Luckie
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`Magic Corporation, dba Luckie Manufacturing C0,, v. McCall Manufacturing Company, Inc.,
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`USPQ 487, 1962 WL 8524 (TTAB 1962) (failure to sell goodwill at the dissolution sale ended the
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
`
`JMS/BG/adt
`
`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Page 12
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`goodwill and trademark of the company; priority is based on subsequent use by others). Based on
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`the language as set forth hereinabove, any right or property which was transferred was transferred in
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`gross by the Bankruptcy Court. The mark set forth in the ‘837 Registration was only transferred to
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`the new purchaser, HMX POLAND SP.Z.0.0., LUXEMBOURG BRANCH, “with the same
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`validity and force and effect which it ha ” at the time when it was transferred according to the sales
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`order of June 25, 2009. The mark set forth in the ‘837 registration was abandoned based on non-use
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`of the mark by the owner or debtor of the mark at that time, even though it appears that the mark
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`was transferred, the mark was only transferred with the same validity, force and effect which it had
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`at that time.
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`In other words, the Bankruptcy Court Order did not and cannot enlarge the right to
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`reestablish rights in a trademark that was abandoned before the court transferred the mark. “Where
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`the business goes,
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`the trademark goes, whether in life or deat .”
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`See Amman Person v.
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`Narragansset Dairy C0., 262 F. 880, 884 (CCA 1“ Cir. 1919).
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`As alleged by the Petitioner, the mark was abandoned due to non-use for many years, and
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`therefore the mark was invalid for many years prior to the bankruptcy proceeding. Respondent was
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`under a duty to conduct a due diligence study to determine the validity of the ‘837 Registration as
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`set forth in the acquired assets prior to purchasing the assets. The Sale Order of the Bankruptcy
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`Court did not provide anything more than the rights the owner or the debtor of the ‘837 Registration
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`had at the time of the transfer. More specifically, the Bankruptcy Court cannot revive rights in a
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`mark based solely on a debtor or owner of the mark listing the mark as part of the acquired assets.
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`Consequently, the mark was acquired “as is” in a state of abandonment preceded by a fraudulent
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`filing.
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`3. Respondent has a Dug to Disclose the Status or Abandonment of the Mark to the New
`Purchaser
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
`
`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Page 13
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`Upon review of the Sales Order, the debtor should have disclosed information regarding the
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`status of the mark to the new purchaser. On page 3 of the Sales Order of June 25, 2009, under title
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`E, Compliance with Bidding Procedure Order, “The auction was duly noted and conducted in a non-
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`collusive, fair and good faith manner. The debtors and their professionals have actively marketed
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`the acquired assets and conducted the sale process in compliance with the bidding procedures and
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`the bidding procedures order, and have afforded potential purchasers a full and fair opporttmity to
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`make higher and better offers.”
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`On page 6 of the Sales Order, under J. Business Justification, “The court finds that the
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`debtors have articulated good and sufficient business reasons justifying the sale, such business
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`reasons include but are not limited to the following:
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`a. The agreement and the closing thereon will present the best opportunity to
`realize the value of the acquired assets on a going concern basis and avoid
`decline and devaluation of the acquired assets.”
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`Under K. Arms-Length Sale, “The Agreement was negotiated, proposed and entered into by
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`the debtors and the purchasers without collusion, in good faith, and from arms-length bargaining
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`positions. Neither the debtors nor the purchasers have engaged in any conduct that would cause or
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`permit the agreement to be voided under 11 USC §363(n).”
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`On page 9 of the Sales Order, under P. Cure Amounts/Adeguate Assurance, “The debtors
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`have (i) cured, or have provided adequate assurance of cure, of any default existing prior to the date
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`hereof under any of the Assumed Contracts, within the meaning of 11 USC §365(b)(1)(A), and
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`(ii) provided compensation or adequate assurance of compensation to any party for any actual
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`pecuniary loss to such party resulting from a default prior to the date hereof under any of the
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`Assumed Contracts within the meaning of 11 USC §365(b)(l)(B).”
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`BIRCH, STEWART, KOLASCH & BIRCH, LLP
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`JMS/BG/adt
`
`

`
`Response to Motion for Summary Judgment
`
`Cancellation No. 92053310
`3129-0222L
`
`Page 14
`
`On page 10 of the Sales Order, under R. No Fraudulent Transfer, “The Agreement was not
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`entered into for the purpose of hindering, delaying or defrauding creditors under the Bankruptcy
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`Court and under the laws of the United States, any state, territory, or possession thereof, or the
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`District of Columbia.”
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`According to the Court Order, and according to the auction and negotiation procedure,
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`whether Debtor disclosed the fact that the mark in question was not used for many years to the
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`“good faith purchaser,” is a question of fact that is in dispute. Therefore, since facts are in dispute,
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`the Motion for Summary Judgment is premature and must be denied.
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`On page 12, in paragraph 7, “the Debtors are hereby authorized to sell the Acquired Assets
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`to Purchasers and consummate the Sale in accordance with and subject to the terms and conditions
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`of the Agreement, and to transfer and assign all right, title and interest (including common law
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`rights) to all property, licenses and rights to be conveyed in accordance with and subject to the terms
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`and conditions of the Agreement,” and the debtor had a duty to disclose to the new purchaser the
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`fact that the mark was not used and that the mark was abandoned and had been renewed
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`fraudulently, according to the “terms and conditions of the Agreement.” The Respondent was under
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`a duty to conduct a due diligence study to determin