throbber
TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`5
`0"
`
`RT
`
`\
`
`In the Matter of Trademark Reg.
`N0- 4,3 34,491
`
`Cancellation No. 92057380
`For the Mark: Point Break Live!
`
`I
`
`Registered May 14, 2013
`
`JAIME KEELING
`
`Petitioner,
`
`v,
`
`EVE HARS
`
`Registrant
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MOTION FOR SUSPENSION
`
`Registrant, Eve Hars, submits this motion for suspension of
`
`proceedings of cancellation No.
`
`92057380 pursuant
`
`to C.F.R.
`
`37
`
`132.117.
`
`MEMORANDUM OF LAW
`
`1. STATEMENT OF FACTS
`
`A. As described by petitioner,
`
`Jaime Keeling,
`
`in her petition
`
`for
`
`cancellation
`
`of Registrant,
`
`Eve Hars'
`
`trademark,
`
`Keeling sued Hars
`
`in 2010
`
`for
`
`infringement of Keeling’s
`
`alleged copyright
`
`to a work entitled Point Break LIVE!
`
`in
`
`lll\!'||l\‘1‘:\‘l|1
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`
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`Us am”, 3 Cf. "1'
`3
`
`

`
`the U.S. District Court of
`
`the Southern District of New
`
`York, civil case number 10-9345.
`
`. Hars concedes
`
`that after the conclusion of
`
`a
`
`jury trial
`
`judgment was
`
`entered
`
`in petitioner/plaintiff Keeling's
`
`favor
`
`on
`
`January
`
`10,
`
`2013
`
`but
`
`does
`
`not
`
`concede
`
`to
`
`petitioner's other statements regarding that case.
`
`. Keeling neglected to mention
`
`in her petition that
`
`this
`
`district court
`
`judgment is currently being appealed,
`
`(as of
`
`February 8,
`
`2013,
`
`see Exhibit
`
`.A)
`
`in the U.S. Court of
`
`Appeals for the Second Circuit.
`
`Additionally,
`
`the Second Circuit appellant court expedited
`
`the appeal “nostra sponte” on June 24,
`
`2013
`
`(see Exhibit
`
`B).
`
`.On June 25, 2013,
`
`the appellate court notified the parties
`
`of the expedited briefing schedule (see Exhibit C) stating
`
`that
`
`the appeal would be “heard as early as October 7,
`
`2013.
`
`.Hars submitted her Appellant Brief on July 30 according to
`
`the Court's schedule.
`
`.Soon thereafter on August 7,
`
`the Court of Appeals for the
`
`Second Circuit,
`
`scheduled the case to be heard on October
`
`8, 2013,
`
`thereby calendaring the hearing on practically the
`
`earliest possible date— October 8
`
`(Nb. 75, Exhibit EU.
`
`

`
`I I . ARGUMENT .
`
`A. Appeal being considered.by U.S. Cburt of Appeals for the
`Second Circuit.
`
`According to 37 CFR § 2.117, Suspension of proceedings:
`
`(a)
`
`Whenever it shall come to the attention of the
`Trademark Trial and Appeal Board that a party or parties to
`a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case,
`proceedings before the Board may be suspended until
`termination of the civil action or the other Board
`proceeding.
`
`Keeling’s petition for cancellation relies almost entirely on
`
`the history of and outcome of her lawsuit against Hars in the
`
`district court. Specifically, Keeling uses that history and
`
`verdict of the lawsuit as evidence against Hars in the second,
`
`third and fourth basis of her cancellation claims against Hars.
`
`It would then follow that the verdict of that civil action
`
`has a strong bearing on this present action before the Trademark
`
`Trial and Appeal Board. The fact that the verdict is undergoing
`
`serious review by a higher court and moreover,
`
`the appeal has
`
`been fast—tracked by the court should be cause for suspension of
`
`this cancellation proceeding until the appellate court renders a
`
`decision.
`
`

`
`3. Direct impact of appeal on this cancellation petition.
`
`What would such a reversal mean to Keeling’s petition? The
`
`impact would be immense.
`
`1. Keeling’s second basis for cancellation: fraud.
`
`If the lower court's verdict is overturned, it will mean
`
`that Keeling, and not Hars was the one committing fraud-
`
`because it will mean that Keeling never actually had a Valid
`
`copyright of any work called “Point Break LIVE!” in the first
`
`place. Keeling provided a copy of an agreement which Hars
`
`allegedly breached which supposedly proves that Hars knew of
`
`Keeling’s “senior rights” to the trademark at issue. However
`
`it has been Hars’ contention since signing that contract in
`
`2007 that signing it was a mistake because Hars came to
`
`understand that Keeling’s claim of those rights was
`
`fraudulent: Keeling never owned a copyright and not only that,
`
`according to law, could not possibly own that copyright.
`
`In
`
`the most twisted interpretation of copyright statute ever
`
`proposed in the history of the court system involving the
`
`complicated issues of fair use, a jury decided Keeling’s
`
`copyright was valid. Hars still disagrees and it seems like
`
`the Court of Appeals
`
`for the Second Circuit may very well
`
`agree with Hars. If it does,
`
`then Keeling never had a
`
`

`
`copyright and the support for her fraud claim against Hars
`
`becomes deeply compromised. Therefore it would be appropriate
`
`for the TTAB to suspend proceedings pending a judgment by the
`
`appellate court.
`
`2. Third Basis of Cancellation: Abandonment.
`
`As Keeling accurately states, Hars has not, as of January
`
`10, 2013 used the disputed trademark in commerce as she had been
`
`doing, because of an injunction ordered by the district court as
`
`a result of the verdict. However, if the appellate court
`
`reverses that verdict,
`
`the injunction will no longer be in
`
`effect and Hars will be free to engage in commerce using the
`
`“Point Break LIVE!” trademark as she had been doing since 2007.
`
`In order for a trademark to be cancelled for abandonment the
`
`trademark has to be abandoned for three years. It has only been
`
`eight months that Hars has not used the trademark and she
`
`certainly intends to use it again as soon as her appeal goes
`
`through. Thus another factor of Keeling’s petition relies on the
`
`outcome of the appeal and thus suspension of the cancellation
`
`proceedings pending the decision of the appellate court is again
`
`warranted.
`
`3.Third basis for cancellation: Priority of use and
`likelihood of confusion.
`
`Keeling claims in paragraph 32 of her petition:
`
`

`
`“Since prior to the claimed first use date in Registrant's
`registration, Petitioner has been using the name Point Break
`LIVE!
`in connection with Petitioner's play of the same name.”
`
`However she provides no evidence,
`
`in the form of licensing
`
`agreements,
`
`ticket and merchandise sales, or any financial
`
`documents to prove she had ever used the disputed trademark in
`
`commerce or she used it in any other way then as a title.
`
`Furthermore, Keeling she did not use it for anything from 2003
`
`to May, 2013, other than to engage in a copyright lawsuit
`
`against Hars.
`
`The only evidence that might back Keeling's claim for use in
`
`commerce is the licensing agreement (Petitioner's Exhibit C)
`
`between her and Hars in which Keeling presented herself as “the
`
`owner and sole creator of the project Point Break LIVE!” Yet
`
`again, if the court of appeals reverses the jury verdict on the
`
`validity of Keeling's ownership of a copyright,
`
`that licensing
`
`agreement will have been proved to be fraudulent and Keeling
`
`will have no evidence whatsoever of having used “Point Break
`
`LIVE!” as a mark in commerce before Hars’ application for the
`
`trademark. Here again the outcome of the appeal has bearing on
`
`the petition for trademark cancellation,
`
`indicating again that a
`
`suspension of this cancellation should be imposed pending
`
`outcome of the appeal.
`
`

`
`III. CONCLUSION
`
`With such a large part of Petitioner's claims relying on
`
`the verdict of the jury in district court case 10-9345,
`
`the
`
`distinct possibility of that Verdict being reversed by the Court
`
`of Appeals for the Second Circuit in Hars’ expedited appeal
`
`numbered 13-694, as strong bearing on Keeling’s petition.
`
`Because the appeal is on a fast track it should be only a matter
`
`of a few months that the appeal is decided. Therefore registrant
`
`requests the Trademark Trial and Appeal Board suspend the
`
`proceedings of this cancellation until the appellate court
`
`renders its verdict.
`
`Dated: Groton MA
`
`August 29, 2013
`
`
`
`P.O. BOX 531
`
`Groton, MA
`
`01450
`
`978-877-0799
`
`

`
`EXHIBIT A
`
`

`
`Case: 13-694 Document: 1-1
`
`Pagezl
`
`02/
`
`UNITED STATES DISTRICT COURT,
`SOUTHERN DISTRICT 01-‘ NEW YORK
`
`Jaime Keeling
`
`USDC SDNY _
`
`. DOCUMEI\"I‘
`=;
`,;,c':"&uNiCALLY FILED
`E! v .
`9; 33*. ix, ‘YT.
`_
`' 02:13 F1f§B;F
`
`
`
`
`1I.’1|-H0'392"}!-la-1
`
`10f 20
`
`all We SPOCG UEVC enier i7ie
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`V
`
`mo
`
`ciV_934s
`
`(
`
`)(
`
`)
`
`- against —
`
`NOTICE OF APPEAL
`New Rock Theater Productions, LLC, Eve Hars and Ethan Garber [N A CIVIL CASE
`
`
`
`
`
`77;: the space afive enter the E77 nameis) 07 the 3e7errd7nt(s)7espondent?s7.)
`
`Notice is hereby given that
`
`5V9 H35
`(party)
`
`hereby appeals to the United States Coutt of Appeals for the Second Circuit from the Judgment
`
`against her for copyright infringement which awarded the plaintiff $250,000 in damages.
`
`(describe the judgmen 1)
`
`
`
`
`
`entered in this action on the "W
`(date)
`
`day of ’3""a'V
`(month)
`
`, 20 73
`(year)
`
`.
`
`Signalur
`
`P.0. BOX 531
`
`Address
`
`Groton, MA 01450
`
`
`City. State & Zip Code
`
`1785
`(617
`Telephone Number
`
`_ 5982
`
`DATED; February
`
`7
`
`, 2013
`
`‘
`_’trict ofNew York within thirty
`oran officeroragency ofthe
`,.,:::
`V‘ =
`‘
`"4/'31
`.
`_,’
`
`i
`
`s’ 0."
`
`
`
`.--.2;
`w‘
`i"_:
`.
`\ ,
`;».’—..~.
`NOTE: To take an appeal, this form must be received '?the.Pfo £9 Office 0 -the"South'e‘
`(30) days ofthe dateon which thejudgment was ente
`orsixty (60) days ifthe United
`,
`»
`in
`_.
`_
`$0.‘
`F77?
`8
`
`United States is a party.
`
`Rev. 05/2007
`
`

`
`EXHIBIT B
`
`

`
`Case: 13-694 Document: 52
`
`Page:1
`
`06/24/2013
`
`973553
`
`2
`
`S.D.N.Y.
`I 0-cv-9345
`Griesa, J.
`
`United States Court of Appeals
`FOR THE
`
`SECOND CIRCUIT
`
`At a stated term ofthe United States Court of Appeals for the Second
`Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square,
`in the City of New York, on the 24”‘ day of June, two thousand thirteen.
`
`Present:
`
`Rosemary S. Pooler,
`Debra Ann Livingston,
`Circuit Judges,
`Richard W. Goldberg,’
`Judge, US. Court ofInternational Trade.
`
`JAIME KEELING,
`
`Plaintifl- Counter—Defizndant -
`Appellee,
`
`v.
`
`13-694
`
`‘*3 ROCK THEATER PRODUCTIONS, LLC,
`A NEW YORK LIMITED LIABILITY COMPANY,
`
`Defendant - Counter-Claimant,
`
`EVE HARS,
`
`Defendant — Appellant,
`
`ETHAN GARBER,
`
`Defendant.
`
`
`‘Judge Richard W. Goldberg, of the United States Court of International Trade, sitting by
`designation.
`
`

`
`Case: 13-694 Document: 52
`
`Page:2
`
`06/24/2013
`
`973553
`
`2
`
`Appellant, pro se, moves for a stay pending appeal of the district court’s January 10, 2013 order
`granting Appellee’s motion for a permanent injunction. Upon due consideration, it is hereby
`ORDERED that the motion for a stay is DENIED. See McCue v. City ofNew York (In re World
`Trade Center Disaster Site Litigation). 503 F.3d 167, 170 (2d Cir. 2007). It is further ORDERED
`that the appeal from the January 11. 2013 judgment ofthe district court is expedited nostra sponte.
`A panel is to be chosen in the ordinary course.
`
`FOR THE COURT:
`
`Catherine O’Hagan Wolfe, Clerk
`
`
`
`SAO-WED
`
`2
`
`

`
`EXHIBIT C
`
`

`
`Case: 13-694 Document: 56
`
`Pagezl
`
`06/25/2013
`
`975048
`
`1
`
`UNITED STATES COURT OF APPEALS
`
`FOR THE
`
`SECOND CIRCUIT
`
`At a Stated Term of the United States Court of Appeals for the Second Circuit, held at the
`Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on
`the 25th day of June, two thousand and thirteen.
`
`
`
`Jaime Keeling,
`
`Plaintiff-Counter-Defendant—Appellee,
`
`ORDER
`Docket No. 13-694
`
`v.
`
`Eve Hats,
`
`Defendant-Appellant.
`
`
`On June 24, 2013, a panel of this Court issued an order denying the appellant’s motion
`for a stay pending appeal, and further ordered that the appeal is expedited. The expedited
`briefing schedule is as follows: appellant’s brief and the joint appendix are due July 30, 2013; the
`appellee’s brief is due September 4, 2013; and the appellant’s reply brief is due September 18,
`2013. The appeal shall be heard as early as the week of October 7, 2013, subject to the approval
`of the presiding judge.
`
`For the Court:
`
`Catherine O’Hagan Wolfe,
`Clerk of Court
`
`
`
`

`
`EXHIBIT D
`
`

`
`-
`
`Ifyouviewthe J_73lLD£ck_eL: youwillbedIargadlor2Pages$0.20
`
`
`
`Court of Appeals Docket #: 13-694
`Nature ofsuitc 3820 PROPERTY RIGHTS-Copyright
`Keeling v. New Rock Theater Pmductions,
`Appeal From: SDNY (NEW YORK CITY)
`Foo Status: IFP Granted
`
`IIX
`
`
`
`
`
`District: 0208-1 : 1Q-cv-9345
`Trial Judge: Thomas P. Griesa. U.S. District Judge
`Trial Judge: Gabriel W. Gonenstein. U.S. Magistrate Judge
`Date Filed: 12/15/2010
`Data Orderuudgment:
`01/11/2013
`
`Date NOA Filed:
`
`Jaime Keeling,
`
`
`
`FlLED.[1005379] [1a—
`
`§(_)_ NOTICE OF APPEARANCE AS SUBSTITUTE COUNSEL, on behalf of Appellee Jaime Keeling. FILED. Service
`date 08/01/2013 by CM/ECF. [1005405] [13-694]
`61
`62
`
`ATTORNEY. Steven Paradisqfll], in place of attomey Ethan Jacobs, SUBSTITUTED.[i005428] [13-694]
`CURED DEFECTIVE NOTICE or APPEARANCE[§Q], on behalfofAppelIee Jaime Keeling, FiLED.[1005431] [13-
`694]
`
`__ LEITER. advising the Court of pending motions in the lower court. on behalf of Appeilee Jaine Keeling, RECEIVED.
`Sewioe date 07/31/2013 by email.[10054-10] [13-694]-{Edited 08/05/2013 by JW|
`CERTIFICATE OF SERVICE, for Letter to Clerk of the Court Catherine O'Hagan Wotfe, on behalf of Appellate Jaime
`Keeling. FILED. Service date 07/31/2013 by email.[1005503'] [13-694]
`LETTER. responding to Appellant Hat's letter, on behalf of Appeiiee Jaime Keeling, RECEIVED. Service date
`08/02/2013 by email.[1006679] [13-694]—{Edited 08/05/2013 by JW]
`CERTIFICATE OF SERVICE, for Letter to the 2nd Circuit dated August 2, 2013., on behanomppeuee Jaime
`Keeling, FILED. Senrice date 03/02/2013 by email.[1006682] 1134594]
`_ LETTER. advising the Court ofthe situation in the lower court. dated 08/01/2013. on behalf of Appellant Eve Hars,
`RECENED. Service date 08/01/2013 by US mail.[‘l008357} [13-694]
`75 CASE CALENDARING, for argument on 10/08/2013. SET.[1010662] [13-694]
`
`
`1
`
`
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`
`08/07/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`JAIME KEELING
`
`3
`
`Petitioner,
`v,
`
`EVE HARS
`
`Registrant
`
`In the Matter of Trademark Reg.
`N0- 4,334,491
`Cancellation No. 902057380
`
`For the Mark: Point Break Live!
`
`Registered May 14, 2013
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PROOF OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
`MOTION FOR SUSPENSION was served upon petitioner by forwarding said copy via
`first class mail, postage prepaid to:
`
`Adam Davids
`
`799 Broadway, Suite 527
`New York, New York
`10003
`
`Executed on August 26, 2013

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