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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: November 3, 2017
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`Cancellation No. 92060579
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`adidas America, Inc.
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`v.
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`Geoffrey M. McNutt, Interlocutory Attorney:
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`Robert M. Lyden
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`This case is before the Board for consideration of the parties’ respective
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`submissions in response to the Board’s July 17, 2017, order requiring them to inform
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`the Board of the status of the civil action which occasioned the suspension of this
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`proceeding. Respondent filed its initial response on August 15, 2017, and Petitioner
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`filed its initial response on August 16, 2017. On August 16, 2017, Respondent filed
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`two supplemental status reports, and on August 21, 2017, Petitioner filed a
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`supplemental status report and a motion for entry of judgment based on the outcome
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`of the civil action. In short, Respondent states that the civil action has not been finally
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`determined, and thus further suspension of this Board proceeding is warranted.
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`Petitioner, on the other hand, contends that the adjudication of the trademark claims
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`in the civil action is final, and therefore this proceeding should be resumed for
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`purposes of cancelling Respondent’s involved registrations in accordance with the
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`determination of the Court in the civil action.
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`Cancellation No. 92060579
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`1. Background
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`Respondent owns supplemental register Registration Nos. 3629011 and 3633365
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`for the marks shown below for “footwear” in International Class 25.
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`On December 22, 2014, Petitioner petitioned to cancel the involved registrations
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`on the grounds of nonuse, fraud, and abandonment. Respondent, in its answer, denied
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`the salient allegations in the petition for cancellation.
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`On May 7, 2015, the Board suspended this cancellation proceeding pending the
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`final determination of the federal court action between the parties in the United
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`States District Court for the District of Oregon, styled Robert Lyden v. adidas
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`America, Inc. et al., Case No. 3:14-cv-01586-MO. See 6 TTABVUE. The Board
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`subsequently continued the suspension by order dated July 16, 2016. See 10
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`TTABVUE.
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`2. The Civil Action
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`The parties are in reverse positons in the civil action. As plaintiff in the civil
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`action, Respondent,
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`in
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`its amended complaint for trademark and patent
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`infringement, asserted claims of federal trademark infringement, federal unfair
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`competition, unfair and deceptive trade practices and common law trademark
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`infringement and unfair competition, based on the marks in Registration Nos.
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`2
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`Cancellation No. 92060579
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`3629011 and 3633365 See 5 TTABVUE 55–56 and 173–183. In addition to the
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`trademark infringement and related unfair competition claims, Respondent also
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`asserted four claims of patent infringement (claims 7–10). Id. at 64–78. Petitioner
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`answered by denying the salient allegations in the amended complaint and asserting
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`two counterclaims relating to Respondent’s trademark and unfair competition claims,
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`including a counterclaim for cancellation of Respondent’s pleaded Registration Nos.
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`3629011 and 3633365 on grounds including that the marks in the supplemental
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`registrations are functional. Id. at 129.
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`Petitioner subsequently moved for summary
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`judgment on Respondent’s
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`trademark and related unfair competition claims and for partial summary judgment
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`on Respondent’s patent claims. See 12 TTABVUE 15.
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`On April 18, 2016, the District Court for the District of Oregon granted summary
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`judgment to Petitioner on its counterclaim that Respondent’s marks are functional
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`as a matter of law. See 12 TTABVUE 19. The Court further granted Petitioner’s
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`motion for partial summary judgment on Respondent’s claims of patent infringement
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`of Respondent’s U.S. Patent Nos. 6449878; 8959797; and D507094 (claims 7 and 9–
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`10). See 12 TTABVUE 20 and 26. The Court thus dismissed with prejudice all four of
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`Respondent’s trademark and unfair competition claims (claims 1–4) and three of the
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`four patent claims (claims 7 and 9–10). Id. at 26. However, the Court’s summary
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`judgment order did not address Respondent’s eighth claim in the amended complaint,
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`namely, Respondent’s allegations of infringement of Patent No. 8209883. See
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`Amended Complaint ¶¶ 208–221 (5 TTABVUE 68–70).
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`3
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`Cancellation No. 92060579
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`In a May 4, 2016, “Order Clarifying the Record,” the Court further ordered and
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`adjudged that:
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`1. The Court’s Summary Judgment Order ... found
`[Respondent’s] purported “Springblade” trademarks, as
`reflected in Supplemental Trademark Registration Nos.
`3,629,011 and 3,633,365, to be functional as a matter of
`law.
`2. Therefore, pursuant to 15 U.S.C. § 1119, Supplemental
`Trademark Registration Nos. 3,629,011 and 3,633,365
`are hereby cancelled.
`3. For the reasons set forth in the SJ Order, summary
`judgment is granted in favor of [Petitioner] on their Second
`Counterclaim, and [Petitioner’s] First Counterclaim is
`dismissed as moot.
`12 TTABVUE 28 (emphasis added).
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`In an order dated June 30, 2016, the Court denied Respondent’s motion for
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`reconsideration of the Court’s previous orders. See 14 TTABVUE 23.
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`Based on the forgoing Court orders, Petitioner asks the Board to resume
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`proceedings and give effect to the Court’s orders by cancelling involved Registration
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`Nos. 3629011 and 3633365.
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`3. Analysis and Determination
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`Upon review of the Court’s order, the Board cannot, without more information,
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`cancel the involved registrations at this time.
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`As noted above, the Court’s summary judgment order did not address
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`Respondent’s eighth claim, namely, Respondent’s allegations of infringement of
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`Patent No. 8209883.
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`With respect to judgment in an action involving multiple claims, Fed. R. Civ. P.
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`4
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`Cancellation No. 92060579
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`54(b) provides:
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`When an action presents more than one claim for relief …
`the court may direct entry of a final judgment as to one or
`more, but fewer than all, claims or parties only if the court
`expressly determines that there is no just reason for delay.
`Otherwise, any order or other decision, however
`designated, that adjudicates fewer than all the claims or
`the rights and liabilities of fewer than all the parties does
`not end the action as to any of the claims or parties and
`may be revised at any time before the entry of a judgment
`adjudicating all the claims and all the parties’ rights and
`liabilities.
`Absent Rule 54(b) certification or special circumstances, orders granting partial
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`summary judgment are not appealable final orders because they do not dispose of all
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`claims and do not end the litigation on the merits.1 Service Employees Int’l Union,
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`Local 102 v. County of San Diego, 60 F.3d 1346, 1349 (9th Cir.1994) (“Partial
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`summary judgment is not an inherently final order.”); Cheng v. Comm’r Internal
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`Revenue Service, 878 F.2d 306, 309 (9th Cir.1989) (“It is axiomatic that orders
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`granting partial summary judgment, because they do not dispose of all claims, are
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`not final appealable orders under [28 U.S.C. 1291].”). Here, the Court’s summary
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`judgment constitutes such an order. See, e.g., Chacon v. Babcock, 640 F.2d 221, 222
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`(9th Cir. 1981) (“Without a Rule 54(b) certification, orders granting partial summary
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`judgment are non-final.”); United States v. Desert Gold Min. Co., 433 F.2d 713, 715
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`(9th Cir. 1970); Wynn v. Reconstr. Fin. Corp., 212 F.2d 953, 956 (9th Cir. 1954).
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`1 Indeed, it is well-settled that a final judgment supersedes any prior orders that may be
`inconsistent with it. See, e.g., Southern California Darts Ass’n v. Zaffina, 762 F.3d 921, 925
`n.2 (9th Cir. 2014); Glens Falls Ins. Co. v. Satree, 320 F.2d 92, 95 (9th Cir. 1963).
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`5
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`Cancellation No. 92060579
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`In this instance, it appears that the civil action remains pending with respect to
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`Respondent’s claim of infringement of Patent No. 8209883. Moreover, the Board has
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`not been provided with any evidence that the Court directed entry of final judgment
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`under Rule 54(b) as to the trademark claims decided on summary judgement. Absent
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`Rule 54(b) certification, the Court’s adjudication of fewer than all of the claims was
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`not final. Fed. R. Civ. P. 54; Chacon, 640 F.2d at 222. Further, there is no evidence
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`that the Court has provided the U.S. Patent and Trademark Office with notice of
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`entry of final judgment pursuant to 15 U.S.C. § 1116(c).2
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`It is not the Board’s place to speculate whether the Court intended for its summary
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`judgment order to be entered as a final judgment. Because there is no indication that
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`all claims presented in the civil action have been decided, or, alternatively, that the
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`Court certified its decision on summary judgment as a final judgment with respect to
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`the functionality counterclaim, the Court’s order granting summary judgment on
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`fewer than all the claims in the civil action does not authorize the USPTO to cancel
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`Respondent’s registrations.
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`Additionally, Petitioner is advised that court decrees ordering the cancellation of
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`registrations must be “certified by the court to the Director.” Trademark Act Section
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`37, 15 U.S.C. § 1119 (emphasis added); see also Trademark Manual of Examining
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`Procedure (“TMEP”) § 1610 (Oct. 2017) (“Any [court] order affecting a registration
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`must be certified to the USPTO … [a]n uncertified copy of the court order is
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`unacceptable.”). Where the registration affected by the order is the subject of an inter
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`2 Such notice is provided to the Director by means of a Form AO 120 “Report on the Filing or
`Determination of an Action Regarding a Patent or Trademark.”
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`6
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`Cancellation No. 92060579
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`partes proceeding at the Board, that fact should be noted in a cover letter to the Office
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`of the Solicitor. See TMEP § 1610. The certified copy of the order also should be filed
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`with the Board, to expedite appropriate action.
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`Accordingly, Petitioner’s motion for cancellation of the involved registrations
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`based on the Court’s summary judgment order is denied. Proceedings herein remain
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`suspended pending the final determination of the civil action, or, alternatively,
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`entry of the Court’s summary judgment order and order cancelling the involved
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`registrations as a final judgment under Fed. R. Civ. P. 54(b).3
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`During the suspension period, the parties must notify the Board of any address
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`changes for the parties or their attorneys.4
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`3 Petitioner is reminded to submit certified copies of the relevant Court orders, and only after
`the time for appeal has expired and either no appeal has been filed, or all appeals filed have
`been decided and the time for any further review has expired.
`4 Respondent’s change of correspondence address, filed on August 15, 2017, is noted, and the
`Board has updated its records accordingly.
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`7
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