`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA694466
`ESTTA Tracking number:
`09/08/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056548
`Defendant
`Multi-Media Technology Ventures, Ltd.
`ANNA M VRADENBURGH
`APOGEE LAW GROUP
`2020 MAIN STREET, SUITE 600
`IRVINE, CA 92614
`UNITED STATES
`TMDocketing@eclipsegrp.com, amv@eclipsegrp.com, pnt@eclipsegrp.com,
`ptauger@apogeelawgroup.com
`Opposition/Response to Motion
`Paul N. Tauger
`ptauger@apogeelawgroup.com
`/Paul N. Tauger/
`09/08/2015
`Opposition to Motion for Summary Judgment 4.pdf(214734 bytes )
`Exhibit A_Part1.pdf(3565361 bytes )
`Exhibit A_Part2.pdf(4520658 bytes )
`Exhibit B.pdf(3679255 bytes )
`Exhibit C_Part1.pdf(5767504 bytes )
`Exhibit C_Part2.pdf(5742457 bytes )
`Exhibit C_Part3.pdf(5655066 bytes )
`Exhibit C_Part4.pdf(5745067 bytes )
`Exhibit C_Part5.pdf(5719859 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Mark: GIDGET
`
`Registration Nos. 3740628,
`2093572, 4077428 and 3197189
`
`Cancellation No. 92056548
`
`
`
`Yazhong Investing Limited,
`
`
`Petitioner,
`
` v.
`
`
`Multi-Media Technology Ventures, Ltd.,
`
`
`Respondent.
`
`
`RESPONDENTS OPPOSITION TO PETITIONER’S MOTION FOR SUMMARY
`
`JUDGMENT
`
`
`
`1
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`
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`
`
`
`
`
`
`
`
`Table of Authorities
`
`Cases
`
`Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88 (6th Cir.1959) .................................. 5
`
`Cerveceria Centroamericana v. Cerveceria India, Inc., 892 F.2d 1021 (Fed. Cir. 1989) ............... 9
`
`Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc., 304 F.3d 1167 (11th Cir. 2002) ........... 6, 7
`
`Defiance Button Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053 (2nd Cir.1985). ............ 6
`
`Emergency One, Inc. v. Am. FireEagle Ltd., 228 F.3d 531, 535 (4th Cir.2000) ...................... 6, 8, 9
`
`Ileto v. Glock, Inc., 565 F.3d 1126, 1155 (9th Cir.2009) .................................................................. 5
`
`Imperial Tobacco, 899 F.2d 1571 (Fed. Cir. 1990) ...................................................................... 8, 9
`
`In re Bose Corporation, 580 F.3d 1240 (Fed Cir. 2009) .............................................................. 4, 5
`
`Medinol v. Neuro Vasx, Inc, 67 USPQ 2d 1205 (TTAB 2003) ....................................................... 4
`
`Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325 (11th Cir. 2008). .................. 6
`
`Oklahoma Beverage Co. v. Dr. Pepper Love Bottling Co.(of Muskogee), 565 F.2d 629 (10th Cir.
`1977) ............................................................................................................................................. 8
`
`
`Prudential Ins. v. Gibraltar Financial Corp., 694 F.2d 1150 (9th Cir. 1983) ................................... 9
`
`Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998) ........................................................................... 8
`
`San Juan Prods. v. San Juan Pools of Kansas, 840 F.2d 468 (19th Cir. 1988) ................................. 5
`
`Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037 (2d Cir.1980) .............................................. 7
`
`Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (T.T.A.B.1981). .......................................... 4
`
`Societe de Developments et D'Innovations des Marches Agricoles et Alimentaires-SODIMA-
`Union de Cooperatives Agricoles v. Int'l Yogurt Co., 662 F. Supp. 839 (D. Or. 1987) ............... 8
`
`
`Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393 (9th Cir. 1985) ................................ 7, 8
`
`Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847 (2d Cir.1992) ................................................. 6
`
`Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed.Cir.1986) ...................................................... 4
`
`Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d 273 (Fed.Cir.1989) ...................................................... 7
`2
`
`
`
`
`
`
`W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 54 C.C.P.A. 1442, 377 F.2d 1001, 1004 (1967).
`....................................................................................................................................................... 4
`Statutes
`
`15 U.S.C. § 1064(3). ......................................................................................................................... 4
`
`15 USC § 1127 .............................................................................................................................. 6, 7
`Treatises
`
`McCarthy on Trademarks and Unfair Competition, § 17:12 (4th Ed.) ............................................. 9
`
`Prudential Ins., 694 F.2d at 1156 ..................................................................................................... 9
`
`
`
`
`
`3
`
`
`
`I.
`
`Introduction
`
`Petitioner seeks summary judgment on three grounds: (1) fraud on the US Patent and
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`Trademark Office, (2) abandonment of the marks at issue, and (3) purported non-use of the
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`marks. However, Petitioner misstates the legal standards for all three bases and offer no
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`evidence to support the correct ones.
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`Specifically, as discussed infra, fraud on the USPTO requires unequivocal proof (and, in
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`the context of a summary judgment motion, undisputed proof) that materially false statements
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`were knowingly made. See, In re Bose Corporation, 580 F.3d 1240 (Fed Cir. 2009). Not
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`only does Petitioner fail to any facts that establish the “knowingly made” requirement, the
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`evidence introduce by Petitioner establishes just the opposite, i.e. that which Petitioner alleges
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`as “materially false statements” were not knowingly made.
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`With regard to abandonment, Petitioner ignores the second factor of the two-factor test:
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`non-use for three years AND an intent not to resume use. No evidence of intent not to resume
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`has been proffered, and Respondent has produced specific, competent evidence to the
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`contrary.
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`Finally, Petitioner alleges, generally, non-use in commerce of the marks in question.
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`Respondent has produced hundreds of documents establishing such use, and attaches here as
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`an exhibit an extensive sampling.
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`As Petitioner has failed to state undisputed facts supporting any of its grounds for
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`cancellation, Respondent respectfully requests that the Board deny its Motion for Summary
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`Judgment.
`
`
`
`
`
`4
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`
`
`II.
`
`Petitioner has Failed to Demonstrate Undisputed Facts Establishing Fraud on the
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`Patent and Trademark Office
`
`
`
`Petitioner misstates the nature of fraud on the Patent and Trade Mark Office. The correct
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`standard is stated in a case cited, but apparently ignored, by Petitioner, In re Bose Corporation,
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`580 F.3d 1240 (Fed Cir. 2009). The Bose court, which reviewed a cancellation by the Board of a
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`trademark registration began by outlining the applicable law:
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`A third party may petition to cancel a registered trademark on the ground that the
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`“registration was obtained fraudulently.” 15 U.S.C. § 1064(3). “Fraud in procuring
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`a trademark registration or renewal occurs when an applicant knowingly makes
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`false, material representations of fact in connection with his application.” Torres v.
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`Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed.Cir.1986). A party seeking
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`cancellation of a trademark registration for fraudulent procurement bears a heavy
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`burden of proof. W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 54 C.C.P.A.
`
`1442, 377 F.2d 1001, 1004 (1967). Indeed, “the very nature of the charge of fraud
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`requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is
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`no room for speculation, inference or surmise and, obviously, any doubt must be
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`resolved against the charging party.” Smith Int'l, Inc. v. Olin Corp., 209 USPQ
`
`1033, 1044 (T.T.A.B.1981).
`
`Id. at 1243.
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`The standard applied in this context is knowing fraud, not “should have known,” or
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`
`
`
`
`negligent fraud: “The [Trademark Trial and Appeal] Board stated in Medinol v. Neuro Vasx, Inc.
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`that to determine whether a trademark registration was obtained fraudulently, ‘[t]he appropriate
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`inquiry is ... not into the registrant’s subjective intent, but rather into the objective manifestations
`
`
`
`5
`
`
`
`of that intent’,” quoting 67 USPQ2d 1205, 1209 (T.T.A.B.2003). The In re Bose Court went on
`
`to explain that, “By equating ‘should have known’ of the falsity with a subjective intent, the
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`Board erroneously lowered the fraud standard to a simple negligence standard. See Ileto v. Glock,
`
`Inc., 565 F.3d 1126, 1155 (9th Cir.2009).” The In re Bose Court concluded:
`
`The principle that the standard for finding intent to deceive is stricter than the
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`standard for negligence or gross negligence, even though announced in patent
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`inequitable conduct cases, applies with equal force to trademark fraud cases. After
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`all, an allegation of fraud in a trademark case, as in any other case, should not be
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`taken lightly. San Juan Prods., 849 F.2d at 474 (quoting Anheuser-Busch, Inc. v.
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`Bavarian Brewing Co., 264 F.2d 88, 92 (6th Cir.1959)). Thus, we hold that a
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`trademark is obtained fraudulently under the Lanham Act only if the applicant or
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`registrant knowingly makes a false, material representation with the intent to
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`deceive the PTO.
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`Id. at 1244-45.
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`
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`As with any fraud allegation, the burden of proof is in the party asserting asserting fraud.
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`Petitioner has shown no intent to deceive on the part of the original registrants. Quite the
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`contrary, the exhibits placed in evidence by Petitioner – the declarations of the original registrants
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`– establish conclusively that, in their statements submitted to the USPTO, registrants were
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`completely unaware that any of their statements were incorrect. These declarations are attached
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`as Exhibit A hereto. Accordingly, Petitioner’s contention that the trademarks at issue were
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`fraudulently obtained and maintained is simply incorrect – there was no fraud as Petitioners have
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`demonstrated no intent to deceive and, in any event, any attempt to do so is clearly a disputed fact
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`
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`6
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`
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`based on the evidence before the Board. As such, summary judgment cannot be granted on this
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`ground.
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`III.
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`Petitioner has Failed to Demonstrate Undisputed Facts Establishing
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`Abandonment
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`
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`Petitioner misunderstands the both the meaning and application of the element of intent in
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`the context of 15 USC § 1127. “Under the Lanham Act, a protectable mark or name is
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`considered abandoned if ‘its use has been discontinued with intent not to resume such use.’ 15
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`U.S.C. § 1127.” Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc., 304 F.3d 1167, 1173
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`(11th Cir. 2002). (“[A] party claiming that a mark has been abandoned must show ‘non-use of the
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`name by the legal owner and no intent by that person or entity to resume use in the reasonably
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`foreseeable future.’ ” Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 535 (4th
`
`Cir.2000), quoting Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847, 850 (2d Cir.1992).1
`
`
`
`Intent to abandon means, “intent not to resume immediate use.” Natural Answers, Inc. v.
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`SmithKline Beecham Corp., 529 F.3d 1325, 1329 (11th Cir. 2008). “Such an intent cannot be far-
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`flung or indefinite; rather there must be an intent “to resume use within the reasonably foreseeable
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`future.” Id. However, “what is meant by the “reasonably foreseeable future” will vary depending
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`on the industry and the particular circumstances of the case.” Emergency One, Inc. v. Am.
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`FireEagle, Ltd., 228 F.3d 531, 537 (4th Cir. 2000), citing, Defiance Button Mach. Co. v. C & C
`
`Metal Prods. Corp., 759 F.2d 1053, 1060–61 (2d Cir.1985).
`
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`1 It should be noted that, “If a mark holder stops using a mark with an intent not to resume its use, the mark is deemed
`abandoned and falls into the public domain and is free for all to use.” Cumulus Media, Inc. v. Clear Channel
`Commc'ns, Inc., 304 F.3d 1167, 1173 (11th Cir. 2002), citing, Thomas McCarthy, McCarthy on Trademarks and
`Unfair Competition § 17:1 (4th ed.2001) and, indeed, abandonment is most commonly raised in the context of an
`affirmative defense to a trademark infringement suit. Here, however, Petitioner alleges abandonment because
`Petitioner, itself, has pending intent-to-use applications for the identical marks. It claims, not that the marks are “in
`the public domain and . . . free for all to use,” but that it should be given proprietary rights in the marks at issues.
`7
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`
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`It is here, however, that Petitioner misconstrues abandonment analysis. As explained by
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`the Cumulus Media Court:
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`Because proving the subjective intent of a trademark holder may prove
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`burdensome for a defendant, see Saratoga Vichy Spring Co. v. Lehman, 625 F.2d
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`1037, 1044 (2d Cir.1980) (“intent is always a subjective matter of inference”), the
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`Lanham Act provides two aids for demonstrating intent. First, it provides that
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`“[i]ntent not to resume may be inferred from circumstances.” 15 U.S.C. § 1127;
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`see also Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d 273, 275 (Fed.Cir.1989)
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`(“Although abandonment requires both non-use and intent not to resume use of the
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`mark, the element of intent can be established inferentially by the same facts that
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`establish non-use.”). Second, it allows a showing of three years of consecutive
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`nonuse to create a rebuttable presumption of intent not to resume use: “[n]onuse
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`for 3 consecutive years shall be prima facie evidence of abandonment.” 15 U.S.C.
`
`§ 1127.8
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`
`
`
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`Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc., 304 F.3d at 1174
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`Accordingly, both non-use of a trademark by its owner AND intent by the owner not to
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`resume use are critical to the determination of the question of intent to abandon.
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`
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`Non-use for three consecutive years gives rise to a presumption of abandonment, but it has
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`long been that law that, “this is a presumption that may be rebutted by showing valid reasons for
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`nonuse or by proving lack of intent to abandon.” Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769
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`F.2d 1393, 1396 (9th Cir. 1985). Nonetheless, this factor is not dispositive of intent to abandon;
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`intent to not resume use, which rebuts the presumption, may be inferred from the surrounding
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`circumstances. Oklahoma Beverage Co. v. Dr. Pepper Love Bottling Co.(of Muskogee), 565 F.2d
`
`
`
`8
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`
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`629, 632 (10th Cir. 1977), citing, Drexel Enterprises, Inc. v. Richardson, 312 F.2d 525 (10th
`
`Cir.). The presumption is adequately rebutted by showing “valid reasons for nonuse.”
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`Emergency One, Inc. v. Am. FireEagle Ltd., 228 F.3d 531, 535–37 (4th Cir.2000) ; Star–Kist
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`Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396 (9th Cir.1985).
`
`
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`As Petitioner readily admits, the trademarks at issue have been the subject of protracted
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`litigation and, now, are the subject of this lengthy cancellation proceeding. The cloud on, first,
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`the ownership, and, then, the validity of these marks constitutes an objectively reasonable and
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`legally-sufficient explanation for non-use, as well as evidence sufficient to rebut the presumption.
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`Emergency One, Inc., supra. (“If the party alleging abandonment establishes a three-year period
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`of non-use, then the burden shifts to the other party to rebut the presumption by presenting
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`evidence of actual use, intent to resume use ‘in the reasonably foreseeable future,’” or valid
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`reasons for nonuse.”); accord, Societe de Developments et D'Innovations des Marches Agricoles
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`et Alimentaires-SODIMA-Union de Cooperatives Agricoles v. Int'l Yogurt Co., 662 F. Supp. 839,
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`845 (D. Or. 1987), citing, Star-Kist Foods, Inc. v. P.J. Rhodes & Co.(“ The court decided that in
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`the context of summary judgment, prima facie abandonment means no more than a rebuttable
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`presumption of abandonment. . . ‘but this is a presumption that may be rebutted by showing valid
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`reasons for nonuse or by proving lack of intent to abandon.’”).
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`
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`Respondent readily concedes that rebutting the presumption requires more than,
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`“[Respondent’s] denial of an intent to abandon.” Rivard v. Linville, 133 F.3d 1446, 1449 (Fed.
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`Cir. 1998), citing, Imperial Tobacco, 899 F.2d at 1581, 14 USPQ2d at 1394 (“(“[O]ne must ...
`
`proffer more than conclusory testimony or affidavits.”). However, under the specific factual
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`circumstances surrounding, Respondent’s failure to resume use is readily understandable and
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`constitutes legal justification for that failure.
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`
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`9
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`
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`“To prove excusable nonuse, the registrant must produce evidence showing that, under his
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`particular circumstances, his activities are those that a reasonable businessman, who had a bona
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`fide intent to use the mark in United States commerce, would have undertaken.” Id. Here,
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`Respondent has assembled a marketing team that is poised to begin commercial exploitation,
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`including use and licensing, of the marks at issue as soon as the instant proceeding is resolved.
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`See [letter and marketing brochure]. Respondent’s inability to move forward in these endeavors
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`are, clearly, those of a “reasonable businessman.” See, e.g., Emergency One, Inc. v. Am.
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`FireEagle, Ltd., 228 F.3d 531, 537-38 (4th Cir. 2000) (“[D]elay in reintroducing the mark was
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`attributable to its skittishness after an embarrassing experience introducing another brand.”). In
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`Emergency One, the Court found that evidence that the trademark owner “had paid a substantial
`
`sum of money for the [trademark at issue] only a few years earlier,” sufficient evidence to rebut
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`the presumption of intent to abandon, deny summary judgment and defer that question to the trier
`
`of fact. Id. Similarly, in Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d
`
`1021 (Fed. Cir. 1989), the Court found, “The earliest evidence of intent to resume use in the
`
`record before us is Castillo's testimony that when Centroamericana's U.S. subsidiary was formed
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`in 1982 the company intended ultimately to use the subsidiary to market the MEDALLA DE
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`ORO brand.” Id. at 1027. As in Cerveceria Centroamericana, the record establishes that
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`Respondent’s acquisition of the marks at issue was for value (accepted a settlement of claims in
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`which Respondent was plaintiff), and the evidence of record demonstrates that Respondent’s
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`intent in doing so was the immediate resumption of use of the marks in commerce. Indeed, but
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`for the fact of the instant petition, Respondent would have already have done so.
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`The standard for abandonment must be “strictly proved.” . McCarthy on Trademarks and
`
`Unfair Competition, § 17:12 (4th Ed.); Prudential Ins., 694 F.2d at 1156. Petitioner has failed to
`
`
`
`10
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`
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`do so. The undisputed facts establish that (1) Respondent has and had a demonstrated a legally-
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`sufficient intent to resume use of the marks, as established by Respondent’s acquisition of the
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`marks at issue, and its development and execution of a business plan and formation of a
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`development team to use said marks, (2) a clear and objectively reasonable reason for its alleged
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`non-use of the marks. Attached as Exhibit B to this Opposition are documents establishing
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`Respondent’s intent to resume use of the marks at issue.
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`IV. Contrary to Petitioner’s Allegations, Respondent has Produced Evidence of Use
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`
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`Attached as Exhibit C to this opposition are the documents evidencing extensive use of the
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`Gidget marks up to the litigation between the original registrants and Respondent. Attached as
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`Exhibit C are documents evidencing such use, all of which were produced to Petitioner.
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`V.
`
`Conclusion
`
`Petitioner’s Motion for Summary Judgment is predicated upon three grounds: fraud on the
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`USPTO, Abandonment and Non-Use. As shown, Petitioner has misstated the legal standards for
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`the first two grounds, and ignores a plethora of evidence of record for the third. At minimum, a
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`triable issue of fact exists with respect to Petitioner’s fraud allegations, as Petitioner must show
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`that the statements to the USPTO in question were known to be false at the time they were made.
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`Petitioner has introduced no evidence whatsoever supporting this requirement. Indeed,
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`Petitioner’s own exhibits, the declarations of the original registrants (Exhibit A, hereto) establish
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`the contrary.
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`With respect to abandonment, Petitioner has failed to introduce any evidence that Respondent
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`has no intent to resume use of the marks, a required element of proof of abandonment.
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`Respondent, on the other hand, as introduced evidence (Exhibit B hereto) that establishes the
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`contrary.
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`11
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`Finallly, Responddent has introoduced volumminous eviddence of use
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`
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`of the markss in commerrce,
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`
`
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`rebuttingg Petitioner’ss contention of non-use.
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`Respondent thereefore respecttfully requessts that the BBoard deny PPetitioner’s MMotion for
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`Respectfullyy submitted,,
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`
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`Multi-Mediia Technologgy Ventures,, Ltd.
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`
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`
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`Apogee Laww Group LLLP
`
`
`
`
`Anna M. Vrradenburgh
`
`Paul N. Tauuger
`
`
`2020 Main
`Street
`Suite 600
`5
`
`Irvine, Califfornia 9261
`
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`(949) 862-88480 Telephoone
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`(949) 519-22644 Facsimmile
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`
`Attorneys fofor Respondeent
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`12
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`Summaryy Judgment.
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`2015
`Dated: Seeptember 8,
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`Exhibit A
`
`Exhibit AExhibit A
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`
`
`1
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`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No: 92056543
`
`Yazhong Investing Limited,’
`
`Petitioner,
`
`V.
`
`Multi Media Technology Ven'tU1'€S, Ltd-3
`
`Respondent.
`
`x.___,.-x._.z\_/~._/*-._.I*....-"~...-'~...v"-_/‘-.a’
`
`DECLARATION OF DON J. CARNEGIE
`
`l, Don .l. Carnegie, declare as follows:
`
`1 am an attorney practicing in the field of intellectual property, having offices at 20503 Main
`I.
`Street, Suite 1211), Irvine, California 92614. During the relevant times mentioned below, T fcpfcscfitetl
`Gidget M.arks, LLC, the predecessor in interest of the GIDGET trademark that is th.e subject of tlils
`cancellation a.ction.
`l have personal knowledge of th.e facts set :forth below. if called upon and sworn as
`a. witness, i could and would competently testify as set forth below.
`
`U.S. Registration Number 3,740,628-—Class 9
`
`On or about October 28, 2008 my client was assigned the interest in the U.S. Serial
`2.
`l‘~lum.be1‘ 7’if434,027 ("the '02? Application") for the mark GIDGET for the folllowiing goods in Class 9:
`
`Eyewear, namely, optical frames and optical lenses, sunglass frames, sunglass lenses, cases for
`eycwear, cases for sunglasses, and. structural parts and fittings for eyewear and sunglasses;
`cellular telephones; cellular telephone apparatuses, namely, cellular telephone face plates,
`cellular telephone cases, belt clips a.nd holders specially adapted for cellular telephones, cellular
`telephone keypads, cellular telephone lenses in the nature of titted plastic films known as skins
`for covering and providing a scratch proof barrier or protection for cellular telephones, and
`cellular telephone antennas; computer games on C.D~ROMs, DVDs, HD DVDs, MP3 discs,
`videotapes, and optical an.d niagneto-opti.ca.[ discs; pre-recorded CD-.ROMs, DVDs, HD DVDs,
`MP3 discs, videotapes, oplzical and magneto-optical discs, audio cornpact disks and cassettes all
`featuring music and spoken word in the fields oifsuriing, skateboarding, snowboarding and active
`lifestyles; audio compact disk players; handheld digital electronic devices for recording,
`organizing, transmitting, manipulating, and reviewing text, data, audio and video files featuring
`surfing, skateboarding, snowboarding and active lifestyles; audio cassette players; MP3 players;
`DVD players; HD DVD players; CD—ROM players; optical and magneto-optical disc players;
`radios; portable multifunction stereo systems featuring stereo receivers, stereo tuners and stereo
`amplifiers; prerecorded video DVDs, HD DVDs, MP3 discs, CD ROMs, videotapes, optical and
`magneto-optical discs, cassettes and co1n.puter interactive game programs all in the fields of
`surfing, skateboarding, snowboarding and active liifestyles.
`
`-1-
`
`
`
`On or a.bout December 2, 2009 I filed and signed a Statement of Use pursuant to 15 U.S.C.
`3.
`s lO:il(d) for the Class 9 goods listed in the '02?‘ Application. A true and correct copy at the saved
`Statement of Use is attached hereto as Exhibit 1.
`
`Before filing the Statement of Use, I asked my clien.t whether the G.l.DC--E‘T mark was in
`4.
`use on or in connection with all of the Class 9 goods listed in the ‘G27 Application. Kevin Powell, CFC)
`of Gidget M.ar|<;s LLC and/or Victor Valles, the President of Gidget Marks LLC, confirmed that the lnark
`was in use on or in connection with the goods listed in the '02"! Application and Instructed me to file the
`Statement of Use.
`
`Based on the information an.d representations provided. by Mr. Powell and/or Mr. Valles, I
`5.
`signed and filed. the Statement of Use on beltalf of Gidget Marks .Ll..C.
`
`6.
`
`At no point in time did I possess an intent to deceive the Trademark Office.
`
`On or about January 19, 2010 the '02’? Application matured into registration and was
`7,
`assigned LLS. Registration Number 3,740,623.
`
`US. Reg. No. 4,l]‘7'i',428—Class 41
`
`On or about February ll, 2012, at the direction of Mr. Powell andlor Mr. Valles, l filed an
`8.
`intent-to—use trademark applicati.on bearing Serial Number 77/669,57]. on behalf of Gidgct Marks for the
`mark GIDGET in Class 41. After a series of amendments with the U13. Patent and Trademark Office to
`
`clarifiy the listed services, the final list of services for Class 4], was as follows:
`
`in the nature of
`live performances by musical bands, entertainment
`E.nte1tai,nrnent, namely,
`theater and musical prod.u.ction; educational seminars in tl'.I.e field. of surfing, skateboarding,
`skiiing, snowboarding, soccer,
`field hockey,
`tennis, soflball, golfing,
`sports competitions
`involving the -foregoing sports, fashion design beauty pageants and topics of interest to women
`and girls; entertainment in the nature of on—go.ing television programs in the field of surfing,
`skateboarding, skiing, snowboarding, soccer,
`field hockey,
`tennis, softball, golfing, sports
`competitio.ns involving the foregoing sports, fashion design, beauty pageants and topics of
`i.nterest
`to girls, boys, women and men; Eduealzion, namely, providing classes, seminars,
`workshops, an.d colloquiums in the field of sports training, sports training courses, fashion design
`and entertainment pertaining to sports; training i.n the field of sports, sporting competitions and.
`fashion design; entertainment, namely,
`live petfonnances by a musical band; organizing
`community sporting and cultural activities;
`teaclnng in the ‘field of sports and sporting
`competitions and fashion design; publica.tion of books and magazines; book lending in the nature
`of libraries; education and en.terta.inment whatever the medium and especially via radio,
`television,
`teletext, computer and the Internet, namely, providing motivational
`speakers,
`providing continuing business education courses in the field of fashion shows, television show
`production, providing a continuing sports show broadcast over television, satellite, audio an
`video media; entertainment
`in th.e nature of sporting,
`fashion design a.nd beauty pageant
`competitions; organization of games via interactive audiovisual media or not; organization of
`sporti.ng events, fashion design and beauty pageant competitions; rental of equipment for various
`sports with the exception of vehicles, namely, rental of golf equipment, tennis equipment, base
`ball equipment, roller skates, in—line roller skates, soccer equipment, surfboards. body hoards,
`sail boards, kite boards, ski and snow board equipment; direction or presentation of plays and
`live shows, production of studio audio and video recordings, on the Internet; video tape editing;
`editing of radio a.nd television programs; publication of texts, electronic and digital publications,
`
`-3,
`
`
`
`fa.shi.cn
`namel.y, magazines, -newsletters and journals in the fields of sports, sports science,
`design, knowledge management, event management and fi.tness recreation, illustrated books.
`reviews, newspapers, periodical.s and other printed. matter other than advertising or pu.blicity;
`electronic publication of text and graphic works of others on CDs and CD—RDMs featuring sports
`and sporting competitions; teaching and education in the nature of‘ classes, seminars, workshops
`at beginner and ad.vanced level in all sports and general -interest disciplines, namely, sports and
`sporting competitions and fashion design; desktop publishing for others; arranging and
`conducting of educational colloquiums, seminars, and conferences; production, organiaa1:i,on and
`presentation of shows, namely, fashion s'hows, beauty pageants, dogs shows, a.ir shows, and
`sporting shows; sponsorship for cultural activities by mea.ns of computer networks, namely,
`sponsoring, development and carrying out international student exchange programs; granting of
`rewards and prizes, namely, providing recognition and incentives by the way of awards to
`clemon.strate excellence in the field of spo.rts, sportin.g competitions, fashion design and beauty
`pageants; entertainment, namely, film, video, video tape, and cartoon animation editing for third
`parties; entertainment services, namel.y, providing television programs in the field of cartoon
`animation, comedy, music, documentary, and science fiction, providing television miniseries in
`the field of cartoon, animation, comedy, music, documentary and science 'fiction, providing
`television sitcom variety shows, via a global computer network, satellite and audio and video
`media; publication of magazines and books in the field of education and entertainment; non-
`downloadable publications provided online, namely, magazines, newsletters and journals in the
`fields of sports, sports science, fashion design, knowledge management, event rnanagement and
`fitness recreation (the ‘S71 Application}.
`9.
`On or about April 24, 2D] I.
`I filed and signed a Statement of Use pursuant to 15 U.S.C. §
`ll)5l(d) for the Class 41 services listed i.n the ‘S71 Application. A true and correct copy oi" the signed
`Statement of Use is attached hereto as Exhibit 2.
`
`ll). Before filing the Statement of Use, I asked my client whether the G.l[DGET mark was in
`use on or in connection with all of the Class 41 services listed in the ‘S71 Application. Mr. Powell andfor
`Mr. valles confirmed that the mark was in use on or in connection with the services listed in the ‘ii7'l.
`Application and instructed me to file the Statement of Use.
`
`Based on the information and representations provided by Mr. Powell and/or Mr. Valles, I
`1 1.
`signed and filed the Statement of Use on behalf of Gidget Marks LLC.
`
`12. At no point in time did I possess an intent to deceive the Trademark Office.
`
`13. On or about December 27, 2011, the '57]. Application matured into registration and was
`assigned U.S. Registration Number 4,077,423.
`
`I declare that all sta.tements made herein of my own knowledge are true and all statements made o.n
`information and belief are believed to be true; and fitrther that these statemen.ts are made with the
`knowledge that willful, false statements and the like so made are punishable by fine or imprisonment, or
`both., under Section l.00l of Title l3 of the United States Code and that such. wi'llfu'l_, ‘False statements
`may jeopardize the validity of the application or document or any registration resulting therefro-m.
`
`Dated: (__:7)
`
`E 6220774
`
`
`
`MMTV.001CN
`
`TTAB
`
`IN THE UNITED STATES PATENT_AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Yazhong Investing Limited,
`
`Petitioner-,
`
`V.
`
`Multi-Media Technology Ventures, Ltd.,
`
`Registrant.
`
`\&\)$/Q/§/Q/\2\./g/Q
`
`DECLARATION OF KEVIN POWELL
`
`1, Kevin Powell, declare as follows:
`
`1. From the dates October 2008 to the time that Gidget Marks claimed that I was removed in early
`2012 I was Chief Financial Officer, Secretary and Treasurer of Gidget Marks, LLC ("Gidget Marks"),
`which was the previous owner of the GIDGET trademark and the GIDGET U.S. trademark registrations
`that are the subject of this cancellation action as well as the Chief Financial Officer, Secretary and
`Treasurer of Gidget Worldwide, Inc. ("Gidget Worldwide") which was a previous licensee of the
`GIDGET trademark. The facts stated herein are personally known to me and I could and would
`competently testify th