Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA650504
`ESTTA Tracking number:
`01/16/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060338
`Defendant
`Alban Vineyards, Inc.
`STACEY R HALPERN
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com
`Motion for Summary Judgment
`Stacey Halpern
`efiling@knobbe.com, stacey.halpern@knobbe.com
`/Stacey R. Halpern/
`01/16/2015
`MSJ.pdf(21385 bytes )
`Memo.pdf(34530 bytes )
`alban dec.pdf(411415 bytes )
`Ex 1.pdf(147295 bytes )
`Ex 2.pdf(3130681 bytes )
`Ex 3.pdf(1211338 bytes )
`Ex 4.pdf(215440 bytes )
`Ex 5.pdf(1628551 bytes )
`Ex 6.pdf(368212 bytes )
`Ex 7.pdf(392984 bytes )
`Ibanze.pdf(63093 bytes )
`Kennedy.pdf(281470 bytes )
`michael.pdf(829744 bytes )
`Sanford.pdf(104395 bytes )
`Adam-.pdf(2104304 bytes )
`
`

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`
`
`ALVINE.009N
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`U.S. Cancellation No. 92060338
`
` I
`
` hereby certify that this correspondence and all marked attachments are
`being electronically filed with the Trademark Trial and Appeal Board of
`the U.S. Patent and Trademark Office through their website located at
`http://estta.uspto.gov on:
`
`
`
`
`
`
`
`
`
`
`
`
`
`January 16, 2015
`
`
`
`
`Stacey R. Halpern
`
`)))))))))
`
`
`
`
`Christina Burke
`
`
`Petitioner,
`
`v.
`
`Alban Vineyards, Inc.,
`
`
`
`Respondent.
`
`
`
`
`
`ALBAN VINEYARDS, INC.’S MOTION FOR SUMMARY JUDGMENT
`
`AND MOTION TO SUSPEND PROCEEDING
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Arlington, VA 22313-1451
`
`
`
`Dear Sir:
`
`
`
`Pursuant to Federal Rules of Civil Procedure Rule 56 and T.B.M.P. §528, Respondent, Alban
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`Vineyards, Inc. (“Respondent”), respectfully moves the Trademark Trial and Appeal Board (the “Board”) for
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`summary judgment in the above-referenced Cancellation proceeding. Respondent also respectfully moves
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`the Board to suspend all proceedings for all matters not germane to Respondent’s Motion for Summary
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`Judgment (the “Motion”) pending the Board’s review and determination of this Motion. 1
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`In support of the Motion, a Memorandum in Support of Respondent’s Motion for Summary
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`Judgment and the Declarations of John Alban, Sybil Ajay Sanford, James A. Kennedy, Peter Michel, Andrew
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`Adam and Enrique Ibanez and the Exhibits attached thereto are being filed concurrently herewith.
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`In addition, pursuant to T.B.M.P. §510.03 and §528.03, Respondent requests the Board to suspend
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`all deadlines, including the close of the discovery period, the deadline for serving expert witnesses and pre-
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`1 Respondent’s Initial Disclosures were served on Petitioner on January 16, 2015. Thus, pursuant to T.B.M.P. §
`528.02 this Motion is timely.
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`-1-
`
`

`
`
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`trial disclosures and the commencement of the testimony periods, pending a decision on this Motion.
`
`
`
`The Motion is based upon the following:
`
`(1)
`
`The registration at issue in this Cancellation proceeding is Registration No. 2313550 for the
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`mark PANDORA for WINE in Class 33 (the “Registration”).
`
`(2)
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`Petitioner admits that the Registration issued on February 1, 2000. (Petitioner’s Petition
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`for Cancellation (the “Petition”) at ¶ 1.
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`(3)
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`Petitioner admits that Respondent first used the mark PANDORA in U.S. commerce in
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`connection with wine in 1998 and used the mark in U.S. commerce in connection with wine until 2010.
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`The Petition at ¶ 1.2
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`(4) Respondent has used the mark PANDORA in U.S. commerce in connection wine since well
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`before 2010 and is currently using the PANDORA mark in U.S. commerce in connection with wine.
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`Declaration of John Alban (the “Alban Declaration”) at ¶¶ 6-9; Declarations of Sybil Ajay Sanford
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`(“Sanford Declaration”) at ¶¶5-10; Declaration of Enrique Ibanez (“Ibanez Declaration”) at ¶ ¶5-10; and
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`Declaration of Peter Michel (“Michel Declaration”) at ¶¶5-10.
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`(5) At no time since 2010 has Respondent ceased using the PANDORA mark in U.S. commerce
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`in connection with wine. Alban Declaration at ¶9; Sanford Declaration at ¶10; Ibanez Declaration at ¶10;
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`and Michel Declaration at ¶10.
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`(6) At no time since 2010 has Respondent ceased providing wine in U.S. commerce in connection
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`with the PANDORA mark. Id.
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`(7)
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`At no time since 2010 has Respondent ceased offered wine for sale in U.S. commerce in
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`connection with the PANDORA mark. Id.
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`(8)
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`At no time since 2010 has Respondent ceased selling wine in U.S. commerce in
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`connection with the PANDORA mark. Id.
`
`
`2 Respondent notes that during the telephonic discovery conference, Petitioner admitted to Respondent’s use of the
`PANDORA mark on wine in 2010 and requested that the 2009 date in the Petition be amended 2010 and that this
`amendment was memorialized in the Board’s Order of December 5, 2014.
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`-2-
`
`

`
`
`
`
`
`(6)
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`As Petitioner has continuously used the PANDORA mark in U.S. commerce since 2010 and
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`has continuously produced, provided, offered for sale and sold wine in connection with the mark, it could not
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`have abandoned the mark. Alban Declaration at ¶¶ 8 and 9.
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`
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`As summarized above, Petitioner has admitted that Respondent provided wine in connection with the
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`PANDORA mark for thirteen consecutive years (1998 – 2010). The Petition at ¶ 1. As wine is the only good
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`identified in the Registration, the only issues in this case are: (1) whether Respondent ceased using the mark
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`after 2010; and (2) if Respondent ceased using the mark at any time, it had an intention not to resume such
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`use. As Respondent has continuously used the PANDORA mark in connection with wine since 1998 and is
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`currently using the PANODRA mark in commerce in connection with wine, Respondent submits that there is
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`no genuine dispute as to any material fact which would preclude the Board from granting summary judgment
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`in this proceeding.
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`Accordingly, Respondent respectfully submits that a grant of summary judgment for Respondent in
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`this proceeding is appropriate and requests that the Board enter such judgment in favor of Respondent and
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`dismiss the Cancellation proceeding. Finally, as noted above, pursuant to 37 C.F.R. §2.127(d), T.B.M.P.
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`§528.03, Respondent hereby moves the Board to suspend all matters not germane to this Motion pending the
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`Board’s review and determination of this Motion.
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`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`
`
`
`
`Dated: January 16, 2015
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`(949) 760-0404
`efiling@knobbe.com
`Attorneys for Respondent,
`Alban Vineyards, Inc.
`
`
`
`
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`-3-
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing ALBAN VINEYARDS, INC. MOTION
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`
`
`
`
`
`
`FOR SUMMARY JUDGMENT AND MOTION TO SUSPEND PROCEEDING upon Petitioner by
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`depositing one copy thereof in the United States Mail, first-class postage prepaid, on January 16, 2015
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`addressed as follows:
`
`CHRISTINA M. BURKE
`2608 DEARPORT CT
`HENDERSON, NEVADA 89052-7090
`
`
`
`____________________________
` Stacey R. Halpern
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`19398520
`011215
`
`-4-
`
`

`
`ALVINE.009N
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`U.S. Cancellation No. 92060338
`
` I
`
` hereby certify that this correspondence and all marked attachments are
`being electronically filed with the Trademark Trial and Appeal Board of
`the U.S. Patent and Trademark Office through their website located at
`http://estta.uspto.gov on:
`
`January 16, 2015
`
`
`Stacey R. Halpern
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`))))))))))
`
`
`
`
`Christina Burke
`
`
`Petitioner,
`
`v.
`
`Alban Vineyards, Inc.,
`
`
`Respondent.
`
`
`MEMORANDUM IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
`
`AND MOTION TO SUSPEND PROCEEDING
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Arlington, VA 22313-1451
`
`
`INTRODUCTION
`
`This is a trademark cancellation brought by Petitioner, Christina Burke (“Petitioner”) against
`
`I.
`
`
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`Registration No. 2,313,550 (“the Registration”) for the mark PANDORA for wine. The application that
`
`matured into the Registration was filed by on August 18, 1998, claiming use since 1998 and registered on
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`February 1, 2000.
`
`In the Petition for Cancellation (the “Petition”), Petitioner asserted that (1) Respondent has not
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`harvested or produced crops for its PANDORA mark since 2010; (2) Respondent has not used or advertised the
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`PANDORA mark since 2010; and (3) Respondent is warehousing the PANDORA mark.1
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`There are no genuine issues of material fact regarding Respondent’s use of the PANDORA mark in
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`connection with wine (the only good listed in the Registration). As Petitioner is well aware of Respondent’s
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`current and continuous use of the PANDORA mark in commerce in connection with wine, Respondent can only
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`assume that Petitioner made her allegation because she has a misunderstanding of the wine aging process. In
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`-1-
`
`

`
`other words, the only reasonable basis for Petitioner’s action is that as Respondent’s 2009 vintage
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`PANDORA wine was released in 2013 and its 2010 vintage PANDORA wine released in July 2014,
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`Petitioner must have misunderstood how wines, such as Respondent’s PANDORA vintage wine, are made
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`and sold and because of her misunderstanding, erroneously believed that the date on a bottle’s label was the
`
`release date.
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`However, as is customary in the wine industry for many types of wines, after Respondent grows and
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`harvests its grapes for its PANDORA wine, the wine is produced and thereafter sits in barrels for several
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`years or more. Declaration of John Alban (the “Alban Declaration”) at ¶¶4-5; Declarations of Sybil Ajay
`
`Sanford (“Sanford Declaration”) at ¶¶6-9; Declaration of Enrique Ibanez (“Ibanez Declaration”) at ¶¶6-9;
`
`James A. Kennedy (“Kennedy Declaration”) ¶3; Declaration of Andrew Adam (“Adam Declaration”) at ¶2 and
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`Declaration of Peter Michel (“Michel Declaration”) at ¶¶6-9. Thereafter, the wine is bottled and allowed to
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`age further in the bottle. Id. Because of this aging process, Respondent’s PANDORA wines are released
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`many years after Respondent harvests the grapes used to make the wine, years after the wine is produced and
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`even several years after the wines are bottled. Alban Declaration at ¶¶5-7; Sanford Declaration at ¶¶8-9;
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`Ibanez Declaration at ¶¶8-9; Michel Declaration at ¶10; Adams Declaration at ¶2 and Kennedy Declaration
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`at ¶4.
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` Moreover, as is also customary in the wine industry, the date on label on the bottle refers to the year
`
`the grapes were harvested, not the year the wine was released. Alban Declaration at ¶¶5-6; Sanford
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`Declaration at ¶¶4, 7-9; Ibanez Declaration at ¶¶4, 7-9; Michel Declaration at ¶¶4, 7-9; Adam Declaration at
`
`¶¶4-5 and Kennedy Declaration at ¶5. In other words, Respondent’s 2009 PANDORA wine does not
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`indicate a wine that was sold or even bottled in 2009, but grapes that were harvested in 2009. Alban
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`Declaration at ¶¶5-7; Sanford Declaration at ¶4; Ibanez Declaration at ¶4; Michel Declaration at ¶4, 7-9; and
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`Kennedy Declaration at ¶5. Given Respondent’s current aging processes for the PANDORA wine, the 2009
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`vintage was not released until 2013. Alban Declaration at ¶¶6-7; Sanford Declaration at ¶8; Ibanez
`
`Declaration at ¶8; and Michel Declaration at ¶8. Similarly, Respondent’s 2010 PANDORA wine was
`
`
`1 Respondent notes that during the telephonic discovery conference, Petitioner admitted to Respondent’s use of the
`PANDORA mark on wine in 2010 and requested that the 2009 date in the Petition be amended 2010 and that this
`
`-2-
`
`

`
`released in 2014 and Respondent’s 2011 PANDORA wine is currently aging in bottles and is expected to be
`
`released in 2015. Alban Declaration at ¶¶6-7; Sanford Declaration at ¶8; Ibanez Declaration at ¶8; and
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`Michel Declaration at ¶8.
`
`Respondent submits that the Declarations and evidence attached thereto show that Respondent is
`
`currently making, providing, offering for sale and selling wine in U.S. commerce in connection with the
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`PANDORA mark. Alban Declaration at ¶¶8-9; Sanford Declaration at ¶¶9-10; Ibanez Declaration at ¶¶9-10;
`
`and Michel Declaration at ¶¶9-10. The evidence also shows that at no time has Respondent ceased using
`
`the PANDORA mark in connection with wine or ceased providing wine in connection with the PANDORA
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`mark. Id. As there are no periods of time in which Respondent ceased using the PANDORA mark in
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`connection with wine or cease providing wine in connection with the PANDORA mark, and as the only good
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`listed in the Registration is wine, the Petition must fail and Respondent is therefore entitled to judgment as a
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`matter of law. Id.
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`Accordingly, Petitioner respectfully requests that the Trademark Trial and Appeal Board (the “Board”)
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`grant Respondent’s Motion for Summary Judgment and deny the Petition. Moreover, pursuant to Trademark
`
`Rule 2.127(d), Petitioner requests that the Board suspend all deadlines pending the Board’s decision on this
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`Motion for Summary Judgment.
`
`
`
`II.
`
`STATEMENT OF UNDISPUTED FACTS
`
`(1)
`
`The registration at issue is Registration No. 2313550 for the mark PANDORA for WINE in
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`Class 33 (the “Registration”).
`
`(2)
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`Petitioner admits that the Registration issued on February 1, 2000. (Petitioner’s Petition for
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`Cancellation (the “Petition”) at ¶ 1.
`
`(3)
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`Petitioner admits that Respondent first used the mark PANDORA in U.S. commerce in
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`connection with wine in 1998 and used the mark in U.S. commerce in connection with wine until 2010. The
`
`Petition at ¶ 1.
`
`(4)
`
`Respondent has used the mark PANDORA in U.S. commerce in connection wine since 2010
`
`
`amendment was memorialized in the Board’s Order of December 5, 2014
`-3-
`
`

`
`and is currently using the PANDORA mark in U.S. commerce in connection with wine. Alban Declaration
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`at ¶¶5-9; Sanford Declaration at ¶¶5-10; Ibanez Declaration at ¶¶5-10; Michel Declaration at ¶¶5-10.
`
`(5)
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`Respondent has provided wine in U.S. commerce in connection with the PANDORA mark
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`since 2010 and is currently providing wine in U.S. commerce in connection with the mark. Alban
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`Declaration at ¶¶5-9; Sanford Declaration at ¶¶5-10; Ibanez Declaration at ¶¶5-10; Michel Declaration at
`
`¶¶5-10.
`
`¶9.
`
`(6)
`
`Respondent’s 2006 vintage PANDORA wine was released in 2010.
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`Alban Declaration at ¶6; Sanford Declaration at ¶9; Ibanez Declaration at ¶9; Michel Declaration at
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`(7)
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`Respondent’s 2007 vintage PANDORA wine was released in 2011. Alban Declaration at ¶6;
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`Sanford Declaration at ¶9; Ibanez Declaration at ¶9; Michel Declaration at ¶9.
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` (8)
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`Respondent’s 2008 vintage PANDORA wine was released in 2012. Alban Declaration at
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`¶6; Sanford Declaration at ¶9; Ibanez Declaration at ¶9; Michel Declaration at ¶9.
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`
`
` (9)
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`Respondent’s 2009 vintage PANDORA wine was released in 2013. Alban Declaration at
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`¶¶5-7; Sanford Declaration at ¶8; Ibanez Declaration at ¶8; and Michel Declaration at ¶8.
`
`(10)
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`Respondent’s 2010 vintage PANDORA wine was released in 2014. Alban Declaration at
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`¶¶6-7; Sanford Declaration at ¶8; Ibanez Declaration at ¶¶8-9; and Michel Declaration at ¶8.
`
`(11)
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`Respondent plans on releasing its 2011 vintage PANDORA wine in 2015. Alban
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`Declaration at ¶¶6-7; Sanford Declaration at ¶9; Ibanez Declaration at ¶9; and Michel Declaration at ¶9.
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` (12) At no time has Respondent ceased using the PANDORA mark in U.S. commerce in
`
`connection with wine. Alban Declaration at ¶¶8-9; Sanford Declaration at ¶10; Ibanez Declaration at ¶10;
`
`and Michel Declaration at ¶10.
`
`(13) At no time since 2010, the date of use admitted by Petitioner, has Respondent ceased
`
`providing wine in connection with its PANDORA mark in U.S. commerce. Alban Declaration at ¶¶8-9;
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`Sanford Declaration at ¶10; Ibanez Declaration at ¶10; and Michel Declaration at ¶10.
`
`(14) At no time since 2010, the date of use admitted by Petitioner, has Respondent ceased
`
`-4-
`
`

`
`offering for sale wine in connection with its PANDORA mark in U.S. commerce. Alban Declaration at ¶¶8-
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`9; Sanford Declaration at ¶10; Ibanez Declaration at ¶10; and Michel Declaration at ¶10.
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`(15) At no time since 2010, the date of use admitted by Petitioner, has Respondent ceased selling
`
`wine in connection with its PANDORA mark in U.S. commerce. Alban Declaration at ¶¶8-9; Sanford
`
`Declaration at ¶10; Ibanez Declaration at ¶10; and Michel Declaration at ¶10.
`
`(16) As Respondent has continuously used the PANDORA mark in U.S. commerce since 1998, it
`
`could not have abandoned the mark. Alban Declaration at ¶¶8-9; Sanford Declaration at ¶¶8-10; Ibanez
`
`Declaration at ¶¶8-10; and Michel Declaration at ¶¶8-10.
`
`
`
`(17) As Respondent has continuously provided wine in U.S. commerce in connection with the
`
`PANDORA mark since 2010, the mark could not have been abandoned. Alban Declaration at ¶¶8-9; Sanford
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`Declaration at ¶¶8-10; Ibanez Declaration at ¶¶8-10; and Michel Declaration at ¶¶8-10.
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`(18) As Respondent has continuously offer wine for sale in U.S. commerce in connection with the
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`PANDORA mark since 2010, the mark could not have been abandoned. Alban Declaration at ¶¶8-9; Sanford
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`Declaration at ¶¶8-10; Ibanez Declaration at ¶¶8-10; and Michel Declaration at ¶¶8-10.
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`(19) As Respondent has continuously sold wine in U.S. commerce in connection with the
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`PANDORA mark since 2010 the mark could not have been abandoned. Alban Declaration at ¶¶8-9; Sanford
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`Declaration at ¶¶8-10; Ibanez Declaration at ¶¶8-10; and Michel Declaration at ¶¶8-10.
`
`
`
`III.
`
`FACTUAL BACKGROUND
`
`Respondent is wine vineyards located in the Edna Valley in San Luis Obispo County, California.
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`Respondent produces various styles of varietal wine under various marks. Among the wines produced by
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`Respondent is its PANDORA wine.
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`As with other wines, Respondent grows and harvests the grapes used to make its PANDORA wine.
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`Alban Declaration at ¶¶3-4; Adams Declaration at ¶2; Michel Declaration at ¶6; Sanford Declaration at ¶6.;
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`Ibanez Declaration at ¶6. As with other wines, after the grapes used for the PANDORA wines are harvested,
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`they undergo a fermentation process. Alban Declaration at ¶¶3-4; Adam Declaration at ¶¶2-4; Michel
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`Declaration at ¶¶3 and 6; Sanford Declaration at ¶3 and 6; Ibanez Declaration at ¶¶3 and 6; Kennedy at ¶¶3-
`
`-5-
`
`

`
`4. After the fermentation is completed in connection with Respondent’s PANDORA wine, the wine needs to
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`“settle” for a period of time. Alban Declaration at ¶¶3-5; Adam Declaration at ¶¶2-4; Michel Declaration at
`
`¶¶3 and 6; Sanford Declaration at ¶3 and 6; Ibanez Declaration at ¶¶3 and 6; Kennedy at ¶¶3-4. This general
`
`process of settling or “aging” refers to a group of reactions that tend to improve the taste and flavor of a wine
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`over time. Id., The aging plan followed by a winery is based on the style of wine desired. Id., While some
`
`wines require only a short period to develop and generally do not benefit from prolonged maturation and
`
`aging, other wines, such as Respondent’s PANDORA wine, develop a complex flavor profile during
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`maturation and acquire a pleasant bottle bouquet. Id. This age process can be done in various types of
`
`containers, such as the barrels used by Respondent. Id. Specifically, Respondent’s PANDORA wine sits in
`
`barrels for years. Alban Declaration at ¶¶3-5; Adam Declaration at ¶¶2-4; Michel Declaration at ¶¶3 and 6;
`
`Sanford Declaration at ¶3 and 6; and Ibanez Declaration at ¶¶3 and 6. Moreover, once Respondent’s
`
`PANDORA wine is bottled, the wine is allowed to age further in the bottle. Id.
`
`Because of this aging process, Respondent’s PANDORA wines are released several years after their
`
`production and many years after the harvesting of the grapes used in the wine. Alban Declaration at ¶¶4-7;
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`Adam Declaration at ¶¶2-5; Michel Declaration at ¶6; Sanford Declaration at ¶4-9; and Ibanez Declaration at
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`¶ 6. Moreover, as is customary in the wine industry, the date on a bottle of Respondent’s PANDORA wine
`
`refers to the year the grapes were picked or harvested, not the year the wine is released in commerce. Alban
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`Declaration at ¶¶3-5; Adam Declaration at ¶5; Michel Declaration at ¶¶4 and 7; Sanford Declaration at ¶¶4
`
`and 7; Ibanez Declaration at ¶¶4, 6 and 7 ; Kennedy at ¶5. Thus, Respondent’s 2009 PANDORA wine does
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`not indicate a wine that was sold, offered for sale or even bottled in 2009, but a wine produced with grapes
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`that Respondent grew and thereafter harvested in 2009. Alban Declaration at ¶¶4-7; Michel Declaration at
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`¶8; Sanford Declaration at ¶8; and Ibanez Declaration at ¶8. Given the aging process of Respondent’s
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`PANDORA wine, the 2009 vintage wine PANDORA was not released until 2013. Alban Declaration at ¶¶3-
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`5; Adam Declaration at ¶3; Michel Declaration at ¶8; Sanford Declaration at ¶8; Ibanez Declaration at ¶¶8.
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`Similarly, Respondent’s 2010 PANDORA wine was released in 2014 and Respondent’s 2011 PANDORA
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`wine is currently aging in bottles and is expected to be released in 2015. Alban Declaration at ¶¶3-5; Adam
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`Declaration at ¶3; Michel Declaration at ¶¶8-9; Sanford Declaration at ¶¶8-9; Ibanez Declaration at ¶¶8-9.
`
`-6-
`
`

`
`IV.
`
`SUMMARY JUDGMENT STANDARD AND BURDEN OF PROOF
`
`
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`Summary judgment for Respondent is the proper disposal of a cancellation proceeding where, as here,
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`there is no genuine dispute as to any material fact and where the moving party is entitled to judgment as a
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`matter of law. Fed. R. Civ. P. 56(c); Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23
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`U.S.P.Q.2d 1471 (Fed. Cir. 1992). “The basic purpose of the summary judgment procedure is one of judicial
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`economy -- to save the time and expense of a full trial when it is unnecessary because the essential facts necessary
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`to decision of the issue can be adequately developed by less costly procedures, as contemplated by FRCP rules
`
`here involved, with a net benefit to society”. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 626, 222
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`U.S.P.Q. 741, 743 (Fed. Cir. 1984); and National Football League v. Jasper Alliance Corp., 16 U.S.P.Q.2d 1212,
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`1215 (T.T.A.B. 1990) (“National Football”).
`
`
`
`Respondent as the moving party, has the burden of demonstrating that it is entitled to summary judgment.
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 324-25 (1986). However, where, as here, Respondent has met its burden
`
`of identifying undisputed facts entitling it to relief, Petitioner must submit specific facts showing that there is a
`
`genuine issue for trial. Matsushita Elec. Indus. Co, v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); National
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`Football, supra, at 1215.
`
`
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`In doing so, Petitioner must present specific evidence from which a reasonable trier of fact might return a
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`verdict in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-250 (1986); National Football, supra, at
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`1215. These general principles of summary judgment apply under FRCP 56 to inter-partes proceedings before
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`the Board. See, e.g., Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 U.S.P.Q.2d 1793,
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`1797 (Fed. Cir. 1987). Respondent submits that there is no genuine issue as to any material fact concerning
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`Petitioner’s claim of abandonment and that dismissal of the Petition is warranted.
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`1.
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`V.
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`ARGUMENT
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`SUMMARY JUDGMENT IN FAVOR OF RESPONDENT IS PROPER
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`The Petition includes vague, conclusory allegations of abandonment based on Petitioner’s contention that
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`Respondent has not “harvested” or “produced” crops for the mark PANDORA since 2009, “has not had extensive
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`use and has not advertised for the mark PANDORA since 2009.” While the evidence attached hereto
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`-7-
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`demonstrates that since 2010 (and before) Respondent has in fact harvested and produced crops which are used to
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`make its PANDORA wine, Respondent notes that the Registration is for wine, not grapes or grape or wine
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`harvesting or producing services. Thus, it is irrelevant whether Respondent has “harvested” or “produced” crops.
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`It is also irrelevant whether Respondent “extensively use” or “advertised” the PANDORA mark.
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`Instead, as Respondent has provided wine in connection with the PANDORA mark since 2010 (in fact, since
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`1998), the Petition should be dismissed. Specifically, a mark is only deemed abandoned when its use has
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`been discontinued without intent to resume use. Thus, where, as here, the Declarations and evidence
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`attached thereto establishes continuous use of the PANDORA mark for wine since 2010, there is simply no
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`basis for the Petition and it should be dismissed.
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`At noted above, Petitioner has admitted that Respondent owns the Registration and also admitted that
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`the mark was used from 1998 – 2010. Thus, the only issue in this proceeding is whether Respondent ceased
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`its continuous use of the mark between 2010 and the present or that Respondent ceased its use without an
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`intention to resume use. As the evidence of record demonstrates that Respondent has continuously used the
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`mark since 2010, summary judgment in favor of Respondent is proper.
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`THERE IS NO GENUINE ISSUE OF MATERIAL FACT REGARDING RESPONDENT’S
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`CONTINUOUS USE OF THE PANDORA MARK
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`Granting of the Cancellation proceeding in favor of Respondent is proper, where, as here, the mark
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`2.
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`
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`shown in the Registration is currently in use in connection with all of the goods listed the registration (wine) and
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`has been used continuously in connection with such goods. As such, there are no genuine issues of material
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`fact regarding Respondent’s lack of abandonment of the PANDORA mark. Instead, the undisputed evidence
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`demonstrate that (1) Respondent has provided wine in connection with the PANDORA mark since 1998; (2)
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`Respondent is currently providing wine in connection with the PANDORA mark; and (3) at no time has
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`Respondent ceased using the PANDORA mark in connection with wine. Accordingly, this matter is
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`appropriate for a summary judgment decision.
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`VI.
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`CONCLUSION
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`
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`On the basis of the facts and the law, as demonstrated above, Respondent has clearly shown that it has
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`-8-
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`used the PANDORA mark continuously in U.S. since 2010, the date Petitioner alleges the abandonment
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`occurred. In fact, while Petitioner has admitted to Respondent’s use from 1998 until 2010, the undisputed facts
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`demonstrate that at no time has Respondent ceased using the PANDORA mark in connection with the goods
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`listed in the Registration (wine). Accordingly, Respondent requests that the Board enter such judgment in favor
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`of Respondent and reject the Petition.
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`By:
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`Stacey R. Halpern
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` 2040 Main Street, Fourteenth Floor
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`Irvine, CA 92614
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`(949) 760-0404
` Attorneys for Respondent,
` Alban Vineyards, Inc.
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`
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`Dated: January 16, 2015
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`-9-
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`CERTIFICATE OF SERVICE
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`I hereby certify that I served a copy of the foregoing MEMORANDUM IN SUPPORT OF
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`MOTION FOR SUMMARY JUDGMENT AND MOTION TO SUSPEND upon Petitioner by depositing
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`one copy thereof in the United States Mail, first-class postage prepaid, on January 16, 2015, addressed as
`
`
`CHRISTINA M. BURKE
`2608 DEARPORT CT
`HENDERSON, NEVADA 89052-7090
`
`
`
`
`Stacey R. Halpern
`
`
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`follows:
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`-10-
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`ALVINE.009N
`
`'
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Christina Burke
`,
`,
`Petltloner,
`
`'-
`
`V-
`
`_
`Vineyards, II'lC.,
`Respondent.
`
`) U.S. Cancellation No. 92060338
`)
`I hereby certify that this correspondence and all marked attachments are
`)
`being electronically filed with the Trademark Trial and Appeal Board ofthe
`U.S. Patent and Trademark Office through their website located at
`)
`http://estta.uspto.gov on:
`January 16, 2014
`Ianuary 16, 2014
`)
`)
`)
`-M7
`'
`""
`""
`;
`Stacey R. Halpem
`
`
`
`DECLARATION OF JOHN ALBAN IN SUPPORT OF ALBAN VINEYARDS INC.’ p
`
`MOTION FOR SUMMARY JUDGIVIENT
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`I, John Alban, declare as follows:
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`1.
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`I am the President of Respondent, Alban Vineyards,
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`Inc.
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`(hereinafter
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`“Respondent”), and am authorized to make this declaration on its behalf.
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`I have personal
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`knowledge of the facts set forth below and of the goods offered in connection with the PANDORA
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`mark and the manner in which the mark is used. If called upon and sworn as a witness,- I could and
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`would competently testify as set forth below.
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`2.
`I have a Bachelor’s degree in Biology from Vassar College and a Master’s Degree
`in enology from the University of California, Davis (U.C. Davis).
`I established Alban Vineyards
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`in 1989.
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`I am responsible for all winemaking, grape growing, and marketing efforts by the
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`Respondent. Accordingly, I am aware of the manner in which Respondent uses the PANDORA
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`mark, including, but not limited to, how the grapes are grown and harvested for the PANDORA
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`wines, how the wines are produced, advertised, promoted and sold in connection with the
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`PANDORA mark.
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`

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`4 3.
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`Respondent’s vineyards are located in the Edna Valley in San Luis Obispo
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`County, California. Respondent produces various styles of wine. Among those wines are
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`Respondent’s PANDORA wines. Respondent grows and harvests grapes for its PANDORA
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`wine on its 70 acre vineyard, producing approximately 6,000 cases of wine annually.
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`4.
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`After the grapes used to make Respondent’s PANDORA wines are harvested, a
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`fermentation process is undertaken. As with other wines, after the fennentation is completed in
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`connection with Respondent’s PANDORA wine, the wine needs to “settle” for a period of time.
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`This general process of settling or “aging” refers to a group of reactions that tend to improve the
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`taste and flavor of a wine over time. The aging plan followed by Respondent is based on the
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`style of wine desired. Thus, the aging plan may change for different types of wines. This is
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`because some wines require only a short period to develop and generally do not benefit from
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`prolonged maturation and aging, whereas other wines, such as Respondent’s PANDORA wines,
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`develop a complex flavor profile during maturation and acquire a pleasant bottle bouquet. The
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`wine aging process can be done in various types of containers, such as the barrels used by
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`Respondent. A photograph of some of Respondent’s barrels used to age, Respondent’s
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`PANDORA wines is attached hereto as Exhibit 1. This photograph also shows Respondent’s
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`2010 and 2011 vintage PANDORA wines, which are discussed in more detail below.
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`5.
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`Respondent’s PANDORA wine sits in barrels for years. Moreover, once
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`Respondent’s PANDORA wines are bottled, the wine is allowed to age further in the bottles.
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`Information regarding the vinification or winemaking process is attached hereto as Exhibit 2.
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`Because of the aging process discussed above, wines, such as Respondent’s PANDORA wines,
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`are released years after they are harvested and produced. Moreover, as is the law and custom in
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`the wine industry, the date on a bottle of Respondent’s PANDORA wine refers to the year the
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`

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`grapes were picked or harvested, not the year the wine is released in commerce.
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`§_e_e Exhibit 3
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`hereto, which is information on wine labels and wine vintage dates. Accordingly, Respondent’s
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`2009 PANDORA wine does not indicate a wine that was sold oreven bottled in 2009, but a wine
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`produced with grapes that-Respondent grew and thereafter harvested in 2009.
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`6.
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`Given the aging process of Respondent’s PANDORA wine, Respondent’s
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`PANDORA wines were or will be released as follows:
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`Respondent’s 2005 vintage PANDORA wine was released in 2008.
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`Respondent’s 2006 vintage PANDORA wine was released in 2010.
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`Respondent’s 2007 vintage PANDORA wine was released in 2011.
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`Respondent’s 2008 vintage PANDORA wine was released in 2012.
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`Respondent’s 2009 vintage PANDORA wine was released in 2013.
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`Respondent’s 2010 vintage PANDORA wine was released in 2014.
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`Respondent’s 2011 Vintage PANDORA wine is anticipated to be r