Proceeding
`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
`ESTTA654655
`ESTTA Tracking number:
`02/08/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060579
`Defendant
`Robert M. Lyden
`ROBERT M LYDEN
`18261 SW FALLATIN LOOP
`ALOHA, OR 97007
`UNITED STATES
`robertlyden@comcast.net
`Answer
`Robert M. Lyden
`robertlyden@comcast.net
`/Robert M. Lyden/
`02/08/2015
`REGISTRANT'S ANSWER TO THE PETITION FOR CANCELLA-
`TION.pdf(2259809 bytes )
`DECLARATION OF ROBERT M. LYDEN IN SUPPORT OF REGISTRANT'S
`ANSWE.pdf(687581 bytes )
`Exhibit 1, Sur Reply and Supporting Declaration, January 18, 20.pdf(1058597
`bytes )
`Exhibit 2, Supplemental Declaration, January 23, 2015.pdf(637217 bytes )
`Exhibit 3, Second Supplemental Declaration, January 28, 2015.pdf(267472
`bytes )
`Exhibit 4, E-mail From Lyden to Feldman and Cornwell, August 27.pdf(91120
`bytes )
`Exhibit 5, RESPONSE IN OPPOSITION TO MOTION FOR PROTECTIVE OR-
`DER.pdf(1609068 bytes )
`Exhibit 6, Plaintiff's Response in Opposition.pdf(1760069 bytes )
`
`

`
`IN THE UNITED STATES
`PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`adidas America, Inc.,
`
`Cancellation No.: 92060579zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Petitioner,
`
`v.
`
`Robert M. Lyden,
`
`Respondent.
`
`In the Matter of Registration Nos.
`3,629,011 and 3,633,365
`
`REGISTRANT'S ANSWER
`TO THE PETITION FOR CANCELLATION
`
`Robert M. Lyden ("Respondent")
`
`registrant
`
`in this case, represents himself, and
`
`respectfully files this answer to the "Combined Petition for Cancellation"
`
`filed by the
`
`Petitioner on December 22,2014.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Admits.
`
`Admits.
`
`Admits.
`
`Admits.
`
`Admits.
`
`Admits.
`
`Admits.
`
`Admits.
`
`Admits.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`1
`
`

`
`10.
`
`11.
`
`12.
`
`Denied.
`
`Denied.
`
`The Petitioner has failed to correctly plead separate facts and related arguments.
`
`The first sentence here contains two different statements separated by the word "or."
`
`Accordingly,
`
`I will separate the sentence into two parts and answer each part. The
`
`Petitioner stated: "Moreover, even if Respondent ever used in commerce the Designs, he
`
`never has made more than token use, ..." On information and belief, denied. The
`
`question of what constitutes "token use" and whether the Respondent's use of the
`
`trademarks at issue has constituted "token use" calls for a legal finding, determination
`
`and ruling that will have to take into consideration the facts, issues, and unusual
`
`circumstances associated with this Petition for Cancellation and the co-pending
`
`Complaint styled "Robert M. Lyden v. adidas America, Inc. et al., Civil Action No. 3:14-
`
`cv-1586 MO in the United States Court for the District of Oregon. Second, the Petitioner
`
`has also stated: "or he has discontinued such use with no concrete plans of resuming use
`
`of the Designs," and the Respondent's
`
`answer to this statement of the Petitioner is:
`
`Denied. As concerns the second sentence here: Denied.
`
`13.
`
`14.
`
`15.
`
`Denied.
`
`Denied.
`
`Admits regarding the first three sentences. Denied regarding the fourth sentence
`
`because one can not speak of a willful
`
`infringer of the trademarks such as the Petitioner
`
`adidas, America, Inc. as being "damaged."
`
`16.
`
`Not Applicable.
`
`2
`
`

`
`First Affirmative DefensezyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`17.
`
`The petition for cancellation and the relief sought is barred in whole or in part, by
`
`the doctrine of unclean hands.
`
`In March, 2002, Respondent entered into an "Intellectual
`
`Property and Prototype Agreement" with the largest footwear company in the United
`
`States, Nike, Inc. This agreement was in force and effect until December, 2002, and the
`
`last payment due under the terms of the agreement was made in January, 2003.
`
`It was
`
`during this period that the Respondent
`
`filed for a similar earlier trademark Serial No.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`76/459,378 on October 15, 2002 which was granted and remained in force until it was
`
`later abandoned by the Respondent on June 9, 2007. Between March, 2002 and January,
`
`2003, the Respondent made and effectively sold about a dozen shoes bearing the
`
`trademark to Nike, Inc. Some of these articles of footwear were lab tested and provided
`
`better results for cushioning and mechanical efficiency than the product offerings of
`
`Nike, Inc. The Respondent and his business partners were paid the sum of $300,000.
`
`dollars therefore. Accordingly,
`
`the Respondent's
`
`filing for this earlier trademark Serial
`
`No. 76/459,378 constituted use and the Respondent's
`
`"intent
`
`to use" was genuine. After
`
`Nike, Inc. declined to purchase or license the Respondent's
`
`intellectual property,
`
`the
`
`Respondent subsequently engaged in continuous business activity and commerce with
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`other footwear companies,
`
`retailers, and potential
`
`investors regarding his intellectual
`
`property and including the trademarks at issue.
`
`In 2004, the Petitioner infringed upon one of the Respondent's utility patents for
`
`athletic shorts and settled the matter, and the Respondent
`
`then offered his patents and the
`
`aforementioned trademark for sale or licensing to the Petitioner, but the Petitioner
`
`indicated that it had no interest therein. However the Petitioned turned right around and
`
`3
`
`

`
`launched the adidas "Tunit" soccer shoe in 2005 which infringed upon several of the
`
`Respondent's utility patents between 2005-2011. The Petitioner also filed several patents
`
`for like subject matter without making the Respondent's prior art patents which were
`
`known to the Petitioner of record during the prosecution of the latter "knock-off'
`
`patents.
`
`The Respondent attempted to address the Petitioner's
`
`improper activity by filing three
`
`protests with the USPTO, but given the option to do so the Petitioner failed to make some
`
`of these of record. During this period, the Respondent offered his intellectual property
`
`
`
`including this earlier trademark Serial No.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA76/459,378 to the Petitioner for sale or
`
`licensing on November 23,2005,
`
`and numerous other times.
`
`On January 17,2007,
`
`the Respondent entered into a "Patent License Agreement"
`
`with DashAmerica,
`
`Inc. dba Pearl Izumi, and the Respondent and his business partners
`
`were paid $150,000.
`
`to option and license some of their intellectual property relating to
`
`footwear, but the company went up for sale and the license agreement which included
`
`guaranteed royalties of 1.45 million dollars over five years, and a buy-out option of 7
`
`million dollars was terminated on July 16, 2007. During this period, the Respondent
`
`let
`
`his earlier trademark Serial No. 76/459,378 go abandoned on June 9, 2007.
`
`Instead, the
`
`Respondent changed the visual image of the trademark, and then filed for two trademarks
`
`on October 23,2007 which were later allowed as the trademarks at issue Registration
`
`Nos. 3,629,011 on May 26, 2009, and 3,633,365 on June 2, 2009. On December 13,
`
`2007, the Respondent offered the pending Trademark Applications Nos. 77/310,958 and
`
`77/310,939 associated with the trademarks at issue for sale or licensing to the Petitioner,
`
`and the Respondent has subsequently and repeatedly done so regarding his otherzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`4
`
`

`
`intellectual property relating to the footwear industry and including the allowed
`
`trademarks at issue 2007 - Present.
`
`The Petitioner's adidas "Tunit" shoe had infringed upon the Respondent's patents
`
`beginning in 2005 and after the Petitioner became completely unresponsive to good faith
`
`efforts to negotiate and settle the dispute, the Respondent brought a legal action having
`
`four claims of patent infringement against the Petitioner in the case styledzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Robert M
`
`Lyden v. adidas America,
`
`Inc. et al., Case No. 3:1O-CV-1249-BR in October, 2010,
`
`which was settled out of court in October, 2011.
`
`In the Spring and Summer of2012,
`
`the Respondent offered his patents and
`
`trademarks at issue for sale or licensing to the Petitioner which was then following the
`
`launch of the Nike, Inc. "Flyknit" shoe with the adidas "Primeknit" because the
`
`Respondent had been granted u.S. 8,209,883 for knitted upper shoe structures on July 3,
`
`2013, and both of these shoes are infringing when sold in the United States. The
`
`Petitioner responded by filing an inter partes Reexamination 95/002,094 on August 21,
`
`2012 that is still pending in the USPTO. On information and belief, the Petitioner made
`
`misrepresentations of fact and also hid relevant evidence from the Examiner in the
`
`reexamination that Petitioner had provided in a second co-pending reexamination of
`
`Nike, Inc.'s U.S. 7,347,011 by Dua et al. which was also directed to knitted shoe uppers,
`
`identified as IPR 2013-00067,
`
`filed on November 29,2012 (as shown in the
`
`Respondent's Complaint
`
`in the case styled Robert M Lyden v. adidas America,
`
`Inc. et al.
`
`Case No. 3:14-CV-1586 MO, Exhibit 27.)
`
`On August 27, 2013, the Respondent contacted the Petitioner because adidas also
`
`began to commercialize the adidas Springblade shoe which was infringing upon two of
`
`5
`
`

`
`the Respondents' utility patents, a design patent, and at least one of the trademarks at
`
`issue, and then offered to sell or license the patents and trademarks at issue, and then put
`
`the Petitioner on notice.
`
`In July or August, 2014, the Petitioner also began to sell the
`
`adizero "Prime Boost" shoe which infringed upon another of the Respondent's utility
`
`patents. During this time period, the Respondent attempted to negotiate and settle these
`
`disputes, but the Petitioner became completely non-responsive,
`
`and so on October 8,
`
`2014, the Respondent
`
`filed the present Complaint
`
`
`
`in the case styledzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBARobert M Lyden v.
`
`adidas America,
`
`Inc. et al. Case No. 3:14-CV-1586 MO.
`
`The Petitioner then responded by filing a Motion to Dismiss Claims 1-6
`
`(Trademark Claims), and then simultaneously filed the present Petition for Cancellation
`
`in the USPTO on December 22,2014.
`
`The Petitioner did so without first posing
`
`interrogatory questions or engaging in other discovery, or otherwise inquiring into the
`
`facts about the trademarks at issue with the Respondent, and in particular,
`
`information
`
`relating to the image of a sample shoe that was provided in Respondent's
`
`application for
`
`the two trademarks at issue showing a blue colored Nike, Inc. SHOX R4 running shoe
`
`upper including not only the Nike "Swoosh" trademark, but also the distinctive
`
`trademarks at issue. Again, the shoe sample in question had been made and shown along
`
`with many other "Springshoes"
`
`to Nike, Inc. in connection with the aforementioned
`
`option and "Intellectual Property and Prototype Agreement" before December 31, 2002
`
`as claimed by the Respondent
`
`in the applications for the trademarks at issue. Moreover,
`
`it was also later used in sales pitches to other footwear companies and retail accounts
`
`such as Foot Locker and Fleet Feet, and like samples were then given to several
`
`individuals for promotional purposes.
`
`6
`
`

`
`Faced with Claims 1-6 for willful
`
`infringement of the trademarks at issue and also
`
`Claims 7-9 for two utility and a design patent in the present
`
`the case styledzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Robert M
`
`Lyden v. adidas America,
`
`Inc. et al. Case No. 3:14-CV-1586 MO filed October 8, 2014
`
`(which trademarks the Petitioner had known about for over seven years, and had also
`
`been specifically put on notice about regarding the Petitioner's adidas Springblade
`
`product's
`
`infringement of trademark 3,633,365 on August 27,2013),
`
`the Petitioner filed
`
`for the present Petition of Cancellation, but without conducting due diligence as a
`
`litigation tactic.
`
`The Petitioner adidas America, Inc. has been infringing upon one or more of
`
`Respondent's patents and/or trademarks substantially continuously from 2004-Present,
`
`and in particular, a total of six utility patents, one design patent, and the two trademarks
`
`at issue. As a result, the Respondents'
`
`efforts to sell or license his patents and
`
`trademarks, or alternatively,
`
`to obtain investment
`
`for his start-up company has been
`
`harmed, and tainted as ifby poison, by the Petitioner's
`
`repeated infringing and other
`
`harmful actions. The Petitioner
`
`is now infringing upon three patents and the two
`
`trademarks at issue, and seeks to have the trademarks at issue cancelled by asserting that
`
`the Respondent's use has been "token" which begs attention to the facts, issues, and
`
`unusual circumstances
`
`that have been associated with the Petitioner's
`
`repeated and
`
`wrongful predatory actions. After repeatedly infringing and "mugging" the Respondent
`
`more or less continuously over the past decade, the Petitioner now wishes to point and
`
`say of the victim: "Look he can't hardly stand up," and also sell the USPTO on the
`
`proposition that "we should be able to not only infringe upon his patents, but also take
`
`away his trademarks too."
`
`7
`
`

`
`Accordingly,
`
`the Respondent believes and holds that the Petitioner's present
`
`Petition for Cancellation of the two trademarks at issue should be dismissed because of
`
`the doctrine of unclean hands. "He who comes into Equity must come with clean hands."
`
`It would be fundamentally wrong and a miscarriage of justice for a wrongdoer
`
`to enjoy
`
`the fruits of his transgression. After a decade of misconduct,
`
`the Petitioner should not be
`
`provided with the relief now being requested in the Petition for Cancellation on the basis
`
`of adidas America, Inc. 's unfair business practices and the harm which has and continues
`
`to be caused to the Respondent, his business efforts, and family.
`
`In support, the Respondent
`
`respectfully directs the Trademark Trial and Appeal
`
`Board to the Complaint styled "Robert M. Lyden v. adidas America, Inc. et aI., Civil
`
`Action No.3: 14-cv-1586 MO in the United States Court for the District of Oregon, and
`
`its attached supporting Declaration and Exhibits 1-27, and in particular, Exhibits 1, 7, 11,
`
`18, 20, 21, 22, but also the following documents submitted during the prosecution of the
`
`case and including their attached declarations and exhibits:
`
`1. "Plaintiffs
`
`Sur Reply To Defendants' Reply In Support of Motion To Dismiss
`
`Claims 1-6," and supporting Declaration, Exhibits 1-7, filed on January 18, 2014.
`
`2. "Supplemental Declaration of Robert M. Lyden, in Support of Plaintiffs Sur
`
`Reply To Defendants' Reply In Support of Motion To Dismiss Claims 1-6," and Exhibits
`
`1-10, filed on January 23, 2014.
`
`3. "Second Supplemental Declaration of Robert M. Lyden, in Support of
`
`Plaintiff's Sur Reply To Defendants' Reply In Support of Motion To Dismiss Claims 1-
`
`6," and Exhibits 1-6, filed on January 28, 2014.
`
`8
`
`

`
`4. In "Plaintiffs Sur Reply To Defendants' Reply In Support of Motion To
`
`Dismiss Claims 1-6," and supporting Declaration, Exhibits 1-7, filed on January 18,
`
`2014, Exhibit 3, which is my e-mail sent on August 27,2013 to (now) opposing counsel
`
`
`Robert M Lyden v. adidas America,
`
`Stephen Feldman in the case styledzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAInc. et al. Case
`
`No. 3:14-CV-1586 MO, filed October 8, 2014, in which notice was given regarding my
`
`Trademark Registration No. 3,633,365.
`
`5. My "Response In Opposition To Defendants' Motion For Protective Order
`
`And To Strike Unauthorized Filings and Supporting Memorandum,"
`
`and in particular
`
`pages 6-10, and also the supporting Declaration, Exhibits 1-11, filed on February 3, 2015.
`
`6. "Plaintiffs Response in Opposition To Defendants' Motion To Dismiss Claims
`
`1-6 (Trademark Claims)" filed December 29,2014,
`
`and in the supporting Declaration,
`
`Exhibits 1-22.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Wherefore, Respondent
`
`respectfully requests that Cancellation No. 92060579
`
`regarding Trademark Registration Nos. 3,629,011 and 3,633,365 be dismissed with
`
`prejudice.
`
`In the alternate,
`
`the Responded respectfully requests that the Board grant him
`
`such other relief as it deems just and proper.
`
`I declare under penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct. Executed in Aloha, Oregon on February 8, 2015.
`
`Respectfully Submitted,
`
`By:
`
`~~~<~
`
`Robert M. Lyden, pro s/
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`robertl vden@comcast.net
`(971) 219-1200
`
`9
`
`

`
`CERTIFICATE OF TRANSMITTALzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`I hereby certify that a true copy of the foregoing REGISTRANT'S ANSWER
`
`TO THE PETITION FOR CANCELLATION is being filed electronically with the
`
`TTAB via ESTTA on this day, February 8, 2015.
`
`Respectfully Submitted,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`By:zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`~~~~.~
`Lyden,pro~
`Robert M.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`robertlyden@comcast.net
`(971) 219-1200
`
`1 0
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing REGISTRANT'S
`
`ANSWER TO THE PETITION FOR CANCELLATION has been served on the
`
`Petitioner bye-mailing
`
`a true and correct copy to the opposing counsel for the Petitioner,
`
`adidas America, Inc., Charles H. Hooker, III at chooker@kilpatricktownsend.com,
`
`but
`
`also Stephen Feldman sfeldman@perkinscoie.com,
`
`and by mailing a true and correct
`
`copy by First Class U.S. Mail, postage prepaid, and addressed as follows:
`
`Charles H. Hooker III
`1100 Peachtree Street, NE, Suite 2800
`Atlanta, Georgia 30309
`Telephone:
`(404) 815-6500
`chooker@kilpatricktownsend.com
`
`Stephen Feldman, OSB No. 932674
`Perkins Coie LLP
`1120 N.W. Couch Street, Tenth Floor
`Portland, OR 97209-4128
`Telephone:
`(503) 727-2000
`SFeldman@perkinscoie.com
`
`Dated: February 8, 2015
`
`A~~/?/.
`~~
`ByzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Robert M. Lyden, Pro Se
`~
`-
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`robertlyden@comcast.net
`(971) 219-1200zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`11
`
`

`
`IN THE UNITED STATES
`PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Inc.,
`adidas America,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Cancellation No.: 92060579
`
`Petitioner,
`
`v.
`
`Robert M. Lyden,
`
`Respondent.
`
`In the Matter of Registration Nos.
`3,629,011 and 3,633,365zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`DECLARATION OF ROBERT M. LYDEN IN SUPPORT
`OF REGISTRANT'S ANSWER TO THE PETITION FOR CANCELLATION
`
`I am the Registrant Robert M. Lyden (also "Respondent")
`
`and am over the age of
`
`21, and declare as follows:
`
`1. Attached as Exhibit 1, is a true and correct copy ofthe "Plaintiff's Sur Reply
`
`To Defendants' Reply In Support of Motion To Dismiss Claims 1-6," and supporting
`
`
`
`Declaration of Robert M. LydenzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAsans Exhibits 1-7, filed on January 18,2014.
`
`2. Attached as Exhibit 2, is a true and correct copy of the "Supplemental
`
`Declaration of Robert M. Lyden, in Support of Plaintiffs Sur Reply To Defendants'
`
`Reply In Support of Motion To Dismiss Claims 1-6," sans Exhibits 1-10, filed on January
`
`23,2014.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`1
`
`

`
`
`
`3. Attached aszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAExhibit 3, is a true and correct copy of the "Second Supplemental
`
`Declaration of Robert M. Lyden, in Support of Plaintiff's Sur Reply To Defendants'
`
`
`
`Reply In Support of Motion To Dismiss Claims 1-6,"zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAsans Exhibits 1-6, filed on January
`
`28,2014.
`
`4. Attached as Exhibit 4, is a true and correct copy of my e-mail to (now)
`
`opposing counsel Stephen Feldman in the case styled Robert M Lyden v. adidas
`
`America,
`
`Inc. et al. Case No. 3:14-CV-1586 MO filed October 8,2014, on August 27,
`
`2013 in which notice was given regarding my Trademark Registration No. 3,633,365.
`
`5. Attached as Exhibit 5, is a true and correct copy of my "Response In
`
`Opposition To Defendants' Motion For Protective Order And To Strike Unauthorized
`
`Filings and Supporting Memorandum,"
`
`and supporting Declaration sans Exhibits 1-11,
`
`filed on February 3, 2015.
`
`6. Attached as Exhibit 6, is true and correct copy of "Plaintiff's Response in
`
`Opposition To Defendants' Motion To Dismiss Claims 1-6 (Trademark Claims)" filed
`
`December 29,2014,
`
`and supporting Declaration sans Exhibits 1-22.
`
`I declare under penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct.
`
`Executed in Aloha, Oregon on February 8, 2015.
`
`Respectfully Submitted,
`
`~ ?'~ ,4;J.
`~
`By:zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Robert M. Lyden, pro Ie
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`robertlyden@comcast.net
`(971) 219-1200zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`2
`
`

`
`CERTIFICATE OF TRANSMITTALzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`I hereby certify that a true copy ofthe foregoing DECLARATION OF
`
`ROBERT M. LYDEN IN SUPPORT OF REGISTRANT'S ANSWER TO THE
`
`PETITION FOR CANCELLATION is being filed electronically with the TTAB via
`
`ESTTA on this day, February 8,2015.
`
`Respectfully Submitted,
`
`By:
`
`Lyden,pro s
`Robert M.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`robertl vden@comcast.net
`(971) 219-1200zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`3
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`

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`CERTIFICATE
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`OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing DECLARATION
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`OF ROBERT M. LYDEN IN SUPPORT OF REGISTRANT'S
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`ANSWER TO THE
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`PETITION FOR CANCELLATION
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`has been served on the Petitioner bye-mailing
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`a
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`true and correct copy to the opposing counsel for the Petitioner, adidas America, Inc.,
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`Charles H. Hooker, III at chooker@kilpatricktownsend.com , but also Stephen Feldman
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`sfeldman@perkinscoie.com,
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`and by mailing a true and correct copy by First Class U.S.
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`Mail, postage prepaid, and addressed as follows:
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`Charles H. Hooker III
`1100 Peachtree Street, NE, Suite 2800
`Atlanta, Georgia 30309
`Telephone:
`(404) 815-6500
`chooker@kilpatricktownsend.com
`
`Stephen Feldman, OSB No. 932674
`Perkins Coie LLP
`1120 N.W. Couch Street, Tenth Floor
`Portland, OR 97209-4128
`Telephone:
`(503) 727-2000
`SFeldman@perkinscoie.com
`
`Dated: February 8, 2015
`
`~~/P:?~
`ByzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Robert M. Lyden, Pro Se
`7
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`robertlyden@comcast.net
`(971) 219-1200
`
`4
`
`

`
`Robert M. LydenzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`ProSe
`18261 S.W. Fallatin Loop
`Aloha, OR 97007
`E-mail: robertlyden@comcast.net
`Phone: (971) 219-1200
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF OREGON
`
`Portland Division
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`Robert M. Lyden,
`an individual,
`Plaintiff,
`
`v.
`
`No. 3:14-CV-1586 MO
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`PLAINTIFF'S SUR-REPLY
`TO DEFENDANTS' REPLY IN
`SUPPORT OF MOTION TO
`DISMISS CLAIMS 1-6zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`adidas America, Inc.,
`a Delaware corporation,
`adidas AG, a German entity,
`adidas International Marketing B.V.,
`a Dutch entity,
`The Finish Line, Inc.,
`an Indiana corporation,
`Foot Locker, Inc.,
`a New York corporation, and,
`Dick's Sporting Goods, Inc.,
`a Delaware corporation,
`Defendants.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`Plaintiff's Sur-Reply to Defendants' Reply
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`1
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`

`
`THE DEFENDANTS' REPLYzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`I believe the Court has available for its consideration and review my previous
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`Response in Opposition,
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`filed December 29,2014. The more recent Defendants' Reply
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`in Support of Motion To Dismiss Claims 1-6 (Trademark Claims) (hereinafter "Reply")
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`filed January 15,2015 contains new statements, case law, and also raises issues which
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`merit some discussion, and so I wish to address the Defendants' arguments in the Reply
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`for the benefit of the Court.
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`The main part of the Defendants'
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`legal arguments in the Reply are found in
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`Sections A-E, and so that will also be the main focus of my Sur-Reply. However,
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`in
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`order to be fully responsive,
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`I will also very briefly address the Introduction and
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`Argument sections of the Defendants' Reply.
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`I. Introduction
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`Page 2, Lines 6-9:
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`I deny the statements made here and/or disagree with the
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`Defendants' arguments.
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`Page 2, Lines 12-14: Denied.
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`I believe this is untrue.
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`Page 2, Line 18 through page 3, Line 4: I disagree with the Defendants'
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`arguments.
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`Page 2, Footnote 1: I have filed a Motion on Service and Jurisdiction in order to
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`resolve the efforts of adidas AG and adidas International Marketing, B.V. to dodge
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`service and responsibility for their actions relating to this case.
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`Page 3, Footnote 2: I disagree with the Defendants'
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`argument and position.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`Plaintiff's Sur-Reply to Defendants' Reply
`
`2
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`

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`Page 3, Lines 6-9, the agreement with DashAmerica,
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`Inc. dba Pearl Izumi was
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`from 2007. My business efforts have been continuous and are also current as discussed
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`below in Section C.
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`Page 3, Lines 13-15: Misleading. Registrations on the Supplemental Register can
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`acquire trademark rights and be used in litigation.
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`Page 3, Lines 16-17:
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`Incorrect or at the very least, misleading because what a
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`business person does with prototypes or salesman samples and business plans with
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`potential or actual customers can demonstrate and constitute use in commerce.
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`Page 3, Lines 18-24:
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`I will discuss the Defendants'
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`remarks and the inherent
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`contradiction of the TDRA in some detail in Section D below.
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`Page 4, Lines 1-3: I disagree with the Defendants'
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`argument and position.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`II. Argument
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`Page 4, Lines 5-15: I understand my burden in this matter. One of the points
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`which I made in the Response in Opposition is that the Defendants went off and started
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`yet another lawsuit in the USPTO without conducting due diligence, such as simply
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`asking me about the photo in question or waiting to receive my Response in Opposition
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`or engaging in any discovery.
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`Page 4, Lines 16-24: How kind and contrite ofthe Defendants. My suggestion to
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`the Defendants would be go to confession and afterwards say at least ten "Hail Marys,"
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`and three "Our Fathers." As the opposing counsel Stephen Feldman has provided line
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`numbering for me to use in making this Sur Reply, he is forgiven.
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`Pages 4-5, Footnote 3: All evidence to the contrary. The opposing counsel had a
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`21 day extension to the normal time period for making an answer to the Complain on topzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`Plaintiff's Sur-Reply to Defendants' Reply
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`3
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`

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`of over 30 days which I provided, and the end product was the Defendants' Motion for
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`Dismissal, and the Petition for Cancellation of my trademarks at issue in the USPTO.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`SectionzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`A
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`The Defendants have attempted to make five points in this section which I will
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`address and rebut here:
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`1. As concerns the Defendants' Reply, on pages 5-6, I believe that the photo
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`which was provided to the USPTO when prosecuting the trademarks at issue, and also
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`those included in the Complaint, Exhibit 20 and 21, and my Response in Opposition,
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`Exhibits 2, 3, 5, and 8, demonstrate and support the fact that I have made Springshoes.
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`The Complaint, Exhibits 20 and 21, show ads, point of purchase displays, and a business
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`plan that were made and distributed by me. When soliciting and providing samples for
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`promotional purposes with prospective investors or customers ...it would not be proper to
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`invoice them and ask for a receipt.
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`In particular, you certainly don't do that to someone
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`who is essentially a Prince in their own kingdom whether it be H.H. Sheikh Tahnoun, or
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`Giorgio Arrnani.
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`
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`It would be bad manners, and constitutezyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA«faux pas. Further, I did not
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`snap "selfies" of myself in the company of business persons and potential customers with
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`whom I have interacted over the years, but did provide in my Response in Opposition,
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`Exhibit 7, a couple images from the 160K race in the UAE including one of me watering
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`a very tired horse.
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`I have provided in the attached supporting Declaration, Exhibit 1,
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`which is a photo of a vacuum bagged carbon fiber spring part being made by me in the
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`Therrnadore brand oven in the kitchen of our horne. Mrs. Lyden was not trilled about it.
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`I believe sufficient evidence has been provided to show that I made or caused to be made
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`Springshoes, and also that I did engage in the described business efforts and agreements.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`Plaintiff's Sur-Reply
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`to Defendants' Reply
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`4
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`

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`As will be described in greater detail below, the normal practice of most footwear
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`manufacturers
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`is to make a small number of salesman samples, but sometimes even these
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`are not available for pitching future shoe products to retail accounts.
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`In that case, the
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`retail accounts may be shown proto-types, models, design boards, or other artistic
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`renderings. Sometimes there is only one model or artistic rendering to show. Other
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`times there are 10-20 salesman samples available to marketing and sales personnel.
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`It is
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`not usually the case that a company first makes a large number of shoes and then goes
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`looking for orders, but rather it is the other way around.
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`I have tried to keep some of the
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`original or representative proto-types and things in order to provide evidence of my
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`inventive work, and also for possible use when pitching my Springshoe and intellectual
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`property to potential
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`investors, members of the footwear industry, and retailers.
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`In this
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`regard, I don't have everything that I made or caused to be made because there has been
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`some attrition and I have given some of the samples away to prospective or actual
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`customers for promotional purposes. However, I still have pretty good collection of
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`things for use relating to the Springshoe contained in several banker boxes stored in one
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`of my closets.
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`I don't know exactly how many shoe samples for sale, promotional use,
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`prototypes, and testing purposes I made or caused to be made because there was no
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`apparent need for me to keep track of this information, but it was certainly over two
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`dozen pairs.
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`In the footwear industry,
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`this is a relatively large number compared to what
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`many established footwear companies have on hand when making their own pitches to
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`large retail accounts which constitute their primary customers, as will be discussed
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`below. For example, I caused to be shipped four banker boxes of shoes and related thingszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
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`Plaintiff's Sur-Reply to Defendants' Reply
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`5
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`

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`for my presentation to the footwear company Deckers Outdoor Corp. in March, 2014, as
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`
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`discussed below on page 13 and shown inzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAExhibit 4.
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`2. As concerns the Defendants' Reply on page 6, and Fila, S.p.A., I have
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`provided in the attached supporting Declaration, Exhibit 2, which is the "alleged" initial
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`option agreement with Fila in 2001. Accordingly,
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`it can be readily understood that the
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`business relationship did in fact exist.
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`Unlike the case law cited in the Defendant' Reply on page 6, lines 15-16, my
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`business actions were not "internal," but rather with other public individuals and
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`corporations which associated the pending or granted trademarks at issue with me.
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`3. As concerns the Defendants' Reply on page 7, and Nike, Inc,
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`I made about a
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`dozen shoes that were kept by Nike, Inc. as shown in the photos provided in my
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`Response in Opposition, Declaration, Exhibit 3, but what they then did with them I don't
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`know. They did not provide me with that information. All I can say is that Nike ...didn't
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`make them. What the adidas Defendants either do not understand or wish to ignore is
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`that in the case of an inventor who is interested in selling his custom made shoes and
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`related intellectual property including the trademarks at issue: The customer base for that
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`kind of transaction and business agreement
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`is not found in the Washington Square Mall,
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`but rather with potential
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`investors, existing companies in the footwear industry, and retail
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`accounts. Likewise,
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`the primary customer base for Intel is not composed of individuals
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`walking around at Washington Square Mall, whom the company then approaches with a
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`plastic bag and tries to sell individual computer