`ESTTA551944
`ESTTA Tracking number:
`08/02/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057267
`Plaintiff
`Minitube of America, Inc.
`MELINDA S GIFTOS
`WHYTE HIRSCHBOECK DUDEK SC
`PO BOX 1379
`MADISON, WI 53701-1379
`UNITED STATES
`ptomailbox@whdlaw.com, mgiftos@whdlaw.com
`Opposition/Response to Motion
`Melinda S. Giftos
`mgiftos@whdlaw.com, ptomailbox@whdlaw.com
`/Melinda S. Giftos/
`08/02/2013
`Opposition to Motion to Suspend.pdf(9749 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MINITUBE OF AMERICA, INC.
`
`v.
`
`MINITUB GMBH
`
`Petitioner,
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`Registrant.
`
`PETITION TO CANCEL
`Mark: ANDROSTAR
`U.S. Reg. No. 2,493,812
`Reg. Date: October 2, 2001
`
`OPPOSITION TO REGISTRANT’S MOTION TO SUSPEND
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`On July 29, 2013, Registrant Minitüb GmbH filed a Motion to Suspend the Proceedings
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`in light of the civil action currently proceeding between the parties. Petitioner, Minitube of
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`America, Inc., opposes the Motion to Suspend the Proceedings on the grounds that the claims in
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`the civil action are different from those presented in this Cancellation proceeding and on the
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`grounds that Registrant’s motion will only cause undue delay.
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`Suspension of a Board proceeding pending the final determination of another proceeding
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`is solely within the discretion of the Board. TBMP § 510.02(a). Ordinarily, the Board will
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`suspend proceedings in the case before it if the final determination of the other proceeding may
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`have a bearing on the issues before the Board. Id.
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`In this case, however, the issues in the civil litigation and the Cancellation proceeding at
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`hand are distinguishable. In its Petition to Cancel, Petitioner has alleged that Registrant obtained
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`its registration for the ANDROSTAR mark by fraud and that it has never used the
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`ANDROSTAR trademark in the United States.
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`In the civil action, Petitioner alleges that Registrant has engaged in patent infringement,
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`false patent marking, trademark infringement, false advertising, fraudulent representations and
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`WHD/9683151.1
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`
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`unfair competition in the United States relating to a variety of products and trademarks.
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`However, there are no specific allegations that Registrant infringed upon Petitioner’s
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`ANDROSTAR mark. Instead, Petitioner informed the Court that this action is pending to
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`provide background for Registrant’s activities. Petitioner notified the Court that Registrant had
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`obtained the registration for the ANDROSTAR mark based on fraud by filing false affidavits
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`regarding their use of the mark.
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`The issues of non-use and fraud are not before the Court for determination of a specific
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`claim regarding the validity of the ANDROSTAR mark. Further, the issues of non-use and fraud
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`are distinguishable from the patent and trademark infringement claims that are alleged in the
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`lawsuit in the District Court. The district court is therefore unlikely to resolve the issues
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`currently before the Board in this Cancellation proceeding. Accordingly, Petitioner respectfully
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`requests that the Board deny Registrant’s Motion to Suspend the Proceedings.
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`Dated August 2, 2013.
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`Respectfully submitted,
`
`s/Melinda S. Giftos
`Melinda S. Giftos
`Wisconsin State Bar No. 1056609
`mgiftos@whdlaw.com
`WHYTE HIRSCHBOECK DUDEK S.C.
`PO Box 1379
`Madison, WI 53701
`(608) 234-6076 (telephone)
`(608) 258-7138 (facsimile)
`Attorney for Petitioner
`MINITUBE OF AMERICA, INC.
`
`WHD/9683151.1
`
`2
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