Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1089160
`10/16/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061240
`
`Plaintiff
`GLOCK, Inc.
`
`MICHAEL R PATRICK
`RENZULLI LAW FIRM LLP
`ONE NORTH BROADWAY, SUITE 1005
`WHITE PLAINS, NY 10601
`UNITED STATES
`Primary Email: mpatrick@renzullilaw.com
`Secondary Email(s): gstrube@renzullilaw.com
`914-285-0700
`
`Motion to Amend Pleading/Amended Pleading
`
`Joshua Paul
`
`jpaul@renzullilaw.com, gstrube@renzullilaw.com, jrenzulli@renzullilaw.com
`
`/JPaul/
`
`10/16/2020
`
`Motion to Resume Proceedings and for Leave to File Amended Petition.p
`df(148921 bytes )
`Ex. A - Proposed Amended Petition to Cancel.pdf(2469393 bytes )
`Ex. B - Docket Sheet from Glock, Inc v. The Wuster Inc.pdf(2365218 bytes )
`
`
`ESTTA1089160
`10/16/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061240
`
`Plaintiff
`GLOCK, Inc.
`
`MICHAEL R PATRICK
`RENZULLI LAW FIRM LLP
`ONE NORTH BROADWAY, SUITE 1005
`WHITE PLAINS, NY 10601
`UNITED STATES
`Primary Email: mpatrick@renzullilaw.com
`Secondary Email(s): gstrube@renzullilaw.com
`914-285-0700
`
`Motion to Amend Pleading/Amended Pleading
`
`Joshua Paul
`
`jpaul@renzullilaw.com, gstrube@renzullilaw.com, jrenzulli@renzullilaw.com
`
`/JPaul/
`
`10/16/2020
`
`Motion to Resume Proceedings and for Leave to File Amended Petition.p
`df(148921 bytes )
`Ex. A - Proposed Amended Petition to Cancel.pdf(2469393 bytes )
`Ex. B - Docket Sheet from Glock, Inc v. The Wuster Inc.pdf(2365218 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`GLOCK, INC.,
`
`
`
`
`Petitioner,
`
`v.
`
`
`DA WUSTER CORP.,
`
`
`
`
`
`
`
`Registrant.
`
`
`
`
`
`
`Cancellation No: 92061240
`
`Mark: G19
`Reg. No. 3828065
`Reg. Date: August 3, 2010
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR ORDERS
`(1) RESUMING PROCEEDINGS AND (2) GRANTING
`PETITIONER LEAVE TO FILE ANDMENDED PETITION TO CANCEL
`
`
`
`
`MOTION
`
`Petitioner Glock, Inc. (“Petitioner”) moves pursuant to 37 C.F.R. § 2.117 and TBMP §
`
`510.02(b) for an order resuming these proceedings. As grounds for the motion, Petitioner states
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`that, on November 28, 2015, the Board suspended these proceedings “pending final determination
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`of” a civil action then pending in the U.S. District Court for the Northern District of Georgia. The
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`district court entered final judgment in the civil action on September 15, 2020 and all rights of
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`appeal from the court’s final judgment have been exhausted.
`
`Petitioner also moves pursuant to Fed. R. Civ. P. 15(a)(2) and 37 C.F.R. § 2.155 for leave
`
`to file an Amended Petition to Cancel. As grounds for this motion, Petitioner states that it has
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`acted promptly in seeking leave to amend; that the requested amendments are permitted by law;
`
`
`
`and that Registrant can show no prejudice that would result from permitting Petitioner to amend
`
`its pleading. Petitioner’s proposed Amended Petition to Cancel is attached as Exhibit A (“Am.
`
`Pet. Cancel”) to the accompanying Memorandum in Support of Petitioner’s Motions.
`
`RELEVANT PROCEDURAL HISTORY
`
`A.
`
`Prior Proceedings
`
`Petitioner manufacturers, distributes, and promotes GLOCK semi-automatic pistols and
`
`related goods. Petitioner commenced this cancellation proceeding on April 9, 2015. The Petition
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`seeks to cancel Registration No. 3828065 for the trademark G19 for use with “Paintball guns; Toy
`
`guns.” 1 TTABVUE (Petition to Cancel). Registrant filed an Answer on June 3, 2015. 6
`
`TTABVUE (Answer).
`
`The parties held a discovery conference on June 26, 2015. The Board participated in the
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`conference through the Interlocutory Attorney. Because the Petition to Cancel referred on its face
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`to Petitioner’s then-pending civil action against Registrant and others (Glock, Inc. v. Kent De-Hui
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`Wu a/k/a Kent Wu et al., Civil Action No. 1:14-cv-00568, U.S. District Court, N.D. Ga. (the “Civil
`
`Action”)), the Interlocutory Attorney directed that these proceedings be suspended pending the
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`Board’s review of the underlying pleadings from the Civil Action. 10 TTABVUE 2.
`
`The parties eventually stipulated to suspend these proceedings. See 12 TTABVUE 3. The
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`Board then entered an order on November 28, 2015 suspending these proceedings “pending final
`
`determination of the” Civil Action. 13 TTABVUE 1.1
`
`
`1 In March 2019, Petitioner asked the Board to resume proceedings even though the Civil Action remained
`pending and unresolved. See 24 TTABVUE. The Board denied Petitioner’s request, noting that the “[t]he
`2
`
`
`
`
`
`These proceedings have been suspended since the parties’ discovery conference of June
`
`26, 2015. No discovery has been taken by either party.
`
`B.
`
`The Civil Action
`
`Petitioner’s complaint in the Civil Action alleged claims of trademark infringement and
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`trade dress infringement (among others) against Registrant Da Wuster Corp., The Wuster Inc., and
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`others arising from defendants’ alleged misuse of Petitioner’s registered and common law
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`trademarks and registered trade dress. Am. Pet. Cancel, Ex. 9 (copy of complaint filed in the Civil
`
`Action). The parties agreed to discontinue Petitioner’s claims against all defendants (for
`
`jurisdictional reasons) except for The Wuster Inc., and then engaged in extensive pretrial discovery
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`and motion practice. See 12 TTABVUE 1.
`
`In December 2019, the attorneys representing The Wuster Inc. sought and received leave
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`of the court to withdraw from the case. Petitioner then moved for entry of a default judgment.
`
`After holding an evidentiary hearing on July 1, 2020, the district court granted Petitioner’s motion
`
`in a 33-page decision and order issued September 15, 2020. Am Pet. Cancel, Ex. 3 (copy of
`
`September 3, 2020 Opinion and Order). The court found, among other things, that “[t]he manner
`
`in which The Wuster marketed, advertised and sold the Glock replicas was intended to, and did,
`
`create actual market confusion in the minds of consumers as to whether they were genuine or
`
`licensed Glock products. . . .” Id., Ex. 3 at pp. 10 - 11.
`
`The clerk of the U.S District Court for the Northern District of Georgia entered final
`
`judgment in favor of Petitioner on September 15, 2020. Id., Ex. 4 (copy of judgment). The final
`
`
`civil action at issue continues to have a bearing upon the above-captioned proceeding, including, at a
`minimum, Petitioner’s alleged rights to the mark at issue.” 28 TTABVUE 2.
`
`
`
`3
`
`
`
`judgment permanently enjoins The Wuster Inc., “its officers, directors, or affiliate companies and
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`persons acting on behalf from selling GLOCK replica pistols in the future or taking any other
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`action that would infringe on GLOCK’s name and trade dress and trademarks.” Id. The Judgment
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`also directs that Petitioner recover from The Wuster Inc. monetary relief in excess of $2.25 million.
`
`Id.
`
`MEMORANDUM IN SUPPORT OF PETITIONER’S MOTIONS
`
`I.
`
`The Board Should Enter an Order Resuming These Proceedings
`
`The Board’s November 28, 2015 Order directs that these proceedings remain suspended
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`“pending final determination of the” Civil Action. 13 TTABVUE 1. Pursuant to long-established
`
`Board policy, “[a] proceeding is considered to have been finally determined when an order or
`
`ruling that ends the litigation has been rendered, and no appeal has been filed, or all appeals filed
`
`have been decided and the time for any further review has expired.” TBMP § 510.02(b).
`
`Under Rule 4 of the Federal Rules of Appellate Procedure, to appeal from the final
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`judgment The Wuster Inc. was required to file a notice of appeal with the district court “within 30
`
`days after entry of the judgment . . . appealed from.” Fed. R. App. P. 4(a)(1)(A). The time limits
`
`established by Rule 4 are mandatory and cannot be extended. See Griggs v. Provident Consumer
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`Discount Co., 459 U.S. 56, 61, 103 S.Ct. 400, 74 L.Ed.2d 225 (1982) (“It is well settled that the
`
`requirement of a timely notice of appeal is ‘mandatory and jurisdictional.’” (citation omitted).
`
`Because the district court entered final judgment against The Wuster Inc. on September 15,
`
`2020, The Wuster Inc. was required to file its notice of appeal by no later than October 15, 2020.
`
`Exhibit B attached to this Memorandum in Support is a true and accurate copy of the district court’s
`
`docket sheet in the Civil Action, printed on October 16, 2020. The docket sheet confirms that The
`
`
`
`4
`
`
`
`Wuster Inc. has not filed a notice of appeal within the required 30-day period and that its time to
`
`appeal has expired. Because the Civil Action has now been “finally determined,” TBMP §
`
`510.02(b), the Board should enter an order directing that these proceedings be resumed.
`
`II.
`
`The Board Should Grant Petitioner Leave to File an Amended Petition to Cancel
`
`The pleadings in a cancellation proceeding “may be amended in the same manner and to
`
`the same extent as in a civil action in a United States district court.” 37 C.F.R. § 2.115.
`
`Rule 15 of the Federal Rules of Civil Procedure instructs that courts “should freely give
`
`leave” to amend “when justice so requires.” Fed. R. Civ. P. 15(a)(2). The Board’s long-standing
`
`approach to motions to amend pleadings is of course consistent with this directive. “Fed. R. Civ.
`
`P. 15(a) encourages[s] the Board to look favorably on motions to amend pleadings, stating that
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`‘leave shall be freely given when justice so requires.’" Embarcadero Technologies, Inc. v. Delphix
`
`Corp., 117 U.S.P.Q.2d 1518, 1523 (T.T.A.B. 2016).
`
`The Board generally grants parties permission to amend the pleadings “at any stage of a
`
`proceeding . . . unless entry of the proposed amendment would be prejudicial to the rights of the
`
`adverse party or would violate settled law.” Prosper Business Development Corp. v. International
`
`Business Machines, Corporation, Opp. No. 91212472 (23 TTAVBUE) 2 at 9 - 10 (T.T.A.B. Dec.
`
`19, 2014) (granting motion to amend where case was still in pleading stage, no discovery had been
`
`taken by either party, and where party opposing amendment had “pointed to no specific prejudice
`
`that would result from amendment”); Microsoft Corp. v. Qantel Business Systems, Inc., 16
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`U.S.P.Q.2d 1732, 1733 – 34 (T.T.A.B. 1990) (granting leave to amend where proceeding was still
`
`in the discovery stage and opposing party had shown no undue prejudice).
`
`
`2 https://ttabvue.uspto.gov/ttabvue/v?pno=91212472&pty=OPP&eno=23.
`
`
`
`5
`
`
`
`In March 2019, Petitioner notified Registrant and the Board that Petitioner would seek
`
`leave to amend its pleading “upon resumption of the proceedings.” 24 TTABVUE 2. With the
`
`expiration on October 15, 2020 of The Wuster Inc.’s right to appeal from the final judgment in the
`
`Civil Action, Petitioner now has clear, unquestionable grounds to ask the Board to resume these
`
`proceedings. Petitioner filed the instant motion on October 16 – which is the very first day
`
`following The Wuster Inc.’s forfeiture of its appeal rights. Thus, Petitioner has requested leave to
`
`amend at the very first opportunity. Cf. TBMP § 507.02 (a “long and unexplained delay in filing
`
`a motion to amend a pleading . . . may render the amendment untimely”).
`
`Moreover, no discovery has been taken or noticed in this proceeding, and Registrant cannot
`
`demonstrate that it is or will be prejudiced in any way by permitting Petitioner to amend its
`
`pleading.
`
`Petitioner’s proposed Amended Petition to Cancel asserts five different grounds for
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`cancellation (Am. Pet. Cancel, ¶¶ 28 – 81), which are preceded by an extended factual background
`
`section (id., ¶¶ 1 – 27) that explains the genesis and outcome of the Civil Action. The chart below
`
`compares Petitioner’s original pleading against Petitioner’s proposed amended pleading:
`
`
`
`
`
`
`
`6
`
`
`
`Statutory Basis for Cancellation
`
`
`
`Fraudulent procurement of registration, in
`violation Lanham Act § 14(3)
`
`Fraudulent maintenance of registration, in
`violation of Lanham Act § 14(3)
`
`Likelihood of Confusion, in violation of
`Lanham Act § 14(1)
`
`Dilution of a famous mark by blurring, in
`violation of Lanham Act § 14(1)
`
`“Bad Faith”
`
`trademark
`registered
`Abandonment of
`based on non-use of the mark with no intent
`to resume use, in violation of Lanham Act §
`14(3)
`
`
`
`
`Original
`Pleading 3
`
`
`
`
`¶¶ 15 – 21
`
`Proposed Amended
`Pleading
`
`
`¶¶ 28 – 41
`
` Not Alleged
`
`¶¶ 42 - 50
`
`
`
`
`
`
`
`¶¶ 22 - 30
`
`¶¶ 51 - 61
`
`¶¶ 31 - 35
`
`¶¶ 62 - 67
`
`¶¶ 36 - 43
`
`Deleted
`
` Not Alleged
`
`¶¶ 68 – 81
`
`
`Three of the grounds for cancellation alleged in Petitioner’s proposed amended pleading
`
`are also alleged in Petitioner’s original Petition – that is, claims based on (i) Registrant’s alleged
`
`fraudulent procurement of its registration for the G19 trademark; (ii) likelihood of confusion
`
`between Petitioner’s registered trademark G19 and Petitioner’s identical common law trademark;4
`
`and (iii) and likelihood that the registered mark G19 will dilute the distinctive value of Petitioner’s
`
`famous identical common law mark.5 The amended pleading streamlines and clarifies the
`
`3 1 TTABVUE.
`
`
`
`4 As alleged in the Amended Petition (at ¶¶ 61, 67), Petitioner filed this proceeding on April 9, 2015,
`which is within five years of the date (August 3, 2010) on which the PTO issued the Registration to
`Respondent.
`
`5 See note 4, supra.
`
`
`
`7
`
`
`
`underlying allegations, and also addresses the Board’s comments raised in its July 7, 2015 Order.
`
`See 10 TTABVUE 3 – 5.
`
`Petitioner’s proposed amended pleading adds two grounds for cancellation that do not
`
`appear the originally filed pleading.
`
`First, in ¶¶ 42 – 50 of the amended pleading (“Fraudulent Maintenance of Registration”),
`
`Petitioner alleges that Registrant committed fraud on the PTO in maintaining the Registration.
`
`Petitioner’s allegations center on representations Registrant made to the PTO in the combined
`
`declaration of use and incontestability Registrant filed with the PTO on November 23, 2015 – in
`
`particular, Registrant’s representation under oath that there was no pending proceeding involving
`
`Respondent’s “claim of ownership of” or “right to register” the G19 trademark. Petitioner alleges
`
`in its amended pleading that this statement was false; that Registrant knew it was false at the time
`
`Registrant filed the combined declaration; and that Registrant made the false statement intending
`
`to cause the PTO to improperly maintain the Registration.
`
`Second, Petitioner’s allegations in ¶¶ 68 – 81 of the amended pleading (“Abandonment of
`
`Registered Trademark”) are based on documents and testimony that Petitioner obtained during
`
`discovery in the Civil Action. Specifically, Petitioner alleges that on March 15, 2016, The Wuster
`
`Inc. sold all of its assets to two unrelated parties and agreed not to compete with the purchasers for
`
`a period of three years. Petitioner further alleges that Registrant is now a defunct corporation; that
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`neither Registrant nor anyone claiming rights under Registrant has used the G19 trademark since
`
`March 15, 2016; and that neither Respondent nor anyone claiming rights under Respondent intends
`
`to resume use of the mark.
`
`Petitioner has timely asserted these additional grounds of cancellation. The asserted
`
`grounds – fraud and abandonment – can be brought at any time (not just within five years of
`
`
`
`8
`
`
`
`registration). 15 U.S.C. § 1064(3) (petition to cancel registered mark can be brought “[a]t any
`
`time if the registered mark . . . has been abandoned, or its registration was obtained fraudulently. .
`
`. .”). In any case, as a matter of law, the amendments “relate back” to Petitioner’s filing of the
`
`original Petition to Cancel on April 9, 2015 – which was within five years of the registration’s
`
`issuance on August 3, 2010. See Fed. R. Civ. P. 15(c) (relation-back of amendments).
`
`Conclusion
`
`For the foregoing reasons, Petitioner respectfully requests that the Board enter an order (1)
`
`resuming these proceedings and (2) granting Petitioner leave to file an Amended Petition to
`
`Cancel.
`
`Dated: White Plains, New York
`
`October 16, 2020
`
`
`Respectfully submitted,
`
`RENZULLI LAW FIRM, LLP
`Attorneys for Petitioner, Glock, Inc.
`
`By: ___________________________
`Joshua Paul (jpaul@renzullilaw.com)
`
`
`John F. Renzulli (jrenzulli@renzullilaw.com)
`Joshua Paul (jpaul@renzullilaw.com)
`Gavin M. Strube (gstrube@renzullilaw.com)
`One North Broadway, Suite 1005
`White Plains, N.Y. 10601
`Tel. (914) 285-0700
`
`
`
`
`
`
`
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Petitioner’s Motions for
`Order (1) Resuming Proceedings and (2) Granting Petitioner Leave to File Amended Petition to
`Cancel has been served on Registrant’s attorney of record, Paul S. Marks, Esq., Neufeld Marks,
`315 West 9th Street, Suite 501, Los Angeles, CA 90015 by forwarding said copy to Mr. Marks on
`October 16, 2020 by email addressed to pmarks@neufeldmarks.com.
`
`Dated: White Plains, New York
`
`October 16, 2020
`
`
`________________
`
` Joshua Paul
`
`
`
`
`
`
`
`Exhibit A
`[Proposed] Amended Petition to Cancel
`(with exhibits)
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`GLOCK, INC.,
`
`
`
`
`Petitioner,
`
`v.
`
`
`DA WUSTER CORP.,
`
`
`
`
`
`
`
`Registrant.
`
`
`
`
`
`
`Cancellation No: 92061240
`
`Mark: G19
`Reg. No. 3828065
`Registrant: Da Wuster Corp.
`Reg. Date: August 3, 2010
`
`
`[PROPOSED] AMENDED PETITION TO CANCEL
`
`
`
`
`
`
`Petitioner Glock, Inc. (“Petitioner”), by and through its attorneys, Renzulli Law Firm, LLP,
`
`as and for its Amended Petition to Cancel Registration No. 3828065, alleges as follows:
`
`BACKGROUND FACTS
`
`A.
`
`The GLOCK Pistol
`
`1.
`
`In 1982, the Austrian engineer Gaston Glock revolutionized the firearms industry
`
`by developing and commercializing a semi-automatic pistol whose frame was made entirely from
`
`polymer. Gaston Glock gave the pistol a blocky, squared-off look that differed markedly from the
`
`way handguns had looked for nearly a century.
`
`2.
`
`3.
`
`Gaston Glock called the new pistol the GLOCK 17, or G17 for short.
`
`Mr. Glock eventually developed an entire family of GLOCK pistol models. The
`
`name of each model consists of the letter “G” (for “Glock”) followed by the model number.
`
`Current GLOCK pistol models include the original G17, as well as the G18, G19, G20, G21, G22,
`
`
`
`G23, G24, G25, G26, G29, G30, G31, G32, G33, G34, G35, G37, G38, G39, G40, G41, G42, G43,
`
`G44, G45, G47, and G48.
`
`4.
`
`Like the original G17 pistol, all models of GLOCK pistol are built with frames
`
`made from polymer and all have the same distinctive blocky, squared-off shape.
`
`B.
`
`Petitioner’s Successful Commercialization of the GLOCK Pistol in the U.S.
`
`5.
`
`Petitioner, a Georgia corporation, was established in 1985 to market GLOCK
`
`pistols in the United States.
`
`6.
`
`Petitioner began selling the G17 pistol in the United Sates in 1986 and launched the
`
`next model – the G19 pistol – two years later.
`
`7.
`
`The G19 pistol was an overnight commercial and critical success. Today, the G19
`
`pistol is considered by many to be the world’s most popular handgun. As the bi-monthly
`
`international affairs magazine The National Interest noted in its January 20, 2020 issue (Exhibit
`
`1),
`
`The Glock 19 took the firearms world by storm when it was first
`introduced for law enforcement markets in 1988, revolutionizing the
`compact 9 mm handgun category with its winning blend of
`concealability, handling, and magazine capacity. But that was over
`three decades ago; and yet, the Glock 19 remains one of the most
`popular handguns in the world despite recurrent attempts to
`dethrone it.
`
`8.
`
`GLOCK pistols are especially popular within the United States law enforcement
`
`and military markets. Today, over 65% of federal, state, and local agencies in the United States
`
`have been issued GLOCK pistols.
`
`9.
`
`Petitioner has invested substantially in promoting the GLOCK pistol’s different
`
`models to gun enthusiasts and other consumers in the United States by, for example, placing ads
`
`
`
`
`2
`
`
`
`in newspapers and magazines and participating in trade shows and other events throughout the
`
`country.
`
`10.
`
`GLOCK pistols have been featured in popular TV and cable programs (The
`
`Sopranos, 24, X-Files, NYPD Blue, CSI, Justified, and Law & Order) and in movies (Inception,
`
`The Town, The Fugitive, Die Hard II, Bad Boys II, and True Lies).
`
`11.
`
`Today, GLOCK is considered by many industry observers to be the preeminent
`
`pistol brand in the United States. As Gun Digest magazine noted in a May 2019 article (Exhibit
`
`2), “Unless you have only recently given up a near half-century of monastic life, you’ve heard of
`
`Glock. . . . The [GLOCK] pistol is here, there, everywhere.”
`
`C.
`
`Petitioner’s Registered Trademarks
`
`12.
`
`Petitioner has used and continues to use numerous trademarks and other indicators
`
`of source in advertising, promoting, and selling GLOCK pistols in the United States.
`
`13.
`
`Petitioner’s trademarks include the mark GLOCK, in both word and stylized logo
`
`formats. Petitioner owns numerous Principal Register registrations in the United States for these
`
`trademarks – specifically, Registration Nos. 1691390, 4739067, 4925475, 4859670, 4859667,
`
`2729287, 1691390, 3043658, and 4038821 for the word mark, and Registration Nos. 1381064,
`
`1755206, 2694347, 3037263, 2856646, and 4038822 for the logo mark.
`
`14.
`
`Petitioner’s marks also include a product configuration trade dress comprised of the
`
`distinctive, non-functional aspects of the GLOCK pistol’s design, as reflected in, among other
`
`features, the pistol’s blocky, squared-off shape. Petitioner owns two Principal Register
`
`registrations for this trade dress, Registration Nos. 2807745 and 2807747.
`
`
`
`
`3
`
`
`
`15.
`
`Petitioner also uses various product trademarks to designate the origin of pistols
`
`within each of GLOCK’s model groups. Petitioner owns the following Principal Register
`
`registrations in the United States for its product trademarks:
`
`Mark
`
`G17
`G18
`G20
`G21
`G22
`G23
`G24
`G25
`G26
`G29
`G30
`G31
`G32
`G33
`G34
`G35
`G37
`G38
`G39
`G40
`G41
`G42
`G43
`G44
`G45
`G47
`G48
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Reg. No.
`
`4798343
`4798348
`4976232
`4976233
`4980933
`4980937
`5294071
`5150967
`4980939
`4986490
`4980940
`4980941
`4859658
`5294072
`4859661
`4877157
`2993223
`3042540
`4859663
`5299451
`4877158
`4873475
`4873476
`6102185
`6100895
`6100917
`6100910
`4
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`16.
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`Notably absent from the above listing of registered trademarks is Petitioner’s
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`product trademark G19. This is because (as is alleged in detail infra. ¶¶ 29 – 41) in August 2010
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`Respondent Da Wuster Corp. fraudulently caused the U.S. Patent and Trademark Office (“PTO”)
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`to issue a registration for the mark G19 as part of a scheme to defraud the consuming public and
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`enable Respondent, and those claiming rights under Respondent, to benefit unfairly from the
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`goodwill Petitioner has established in that mark.
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`D.
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`Petitioner’s 2014 Trademark Infringement Lawsuit in the U.S. District Court for the
`Northern District of Georgia
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`17.
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`An “airsoft” gun is a type of low-power air gun that is designed to shoot non-
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`metallic, non-lethal projectiles. Airsoft guns are used for many purposes, including as training
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`weapons for police and military personnel, for competitive shooting, and various recreational
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`activities such as “paint ball.”
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`18.
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`In or about 2001, Kent Wu (“Wu”), acting through a California corporation known
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`as “The Wuster” (“The Wuster,” California Entity # C2852722), established a website called
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`Airsplat.com to sell airsoft guns to consumers.
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`19.
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`At all relevant times, Wu owned 100% of The Wuster’s stock and was the
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`company’s President.
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`20.
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`Airsplat.com carried numerous models of what it claimed were “Glock” airsoft
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`guns. Wu caused many of these products to be manufactured abroad under the house marks
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`“KWA” or “KSC” and then imported the pistols into the United States.
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`21.
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`The “Glock” airsoft pistols sold by Airsplat.com bore various of Petitioner’s
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`trademarks and closely copied the registered trade dress of the GLOCK pistol’s blocky, squared-
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`off design.
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`5
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`22.
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`However, the “Glock” airsoft pistols sold by Airsplat.com were fake. They were
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`not manufactured by Petitioner or under license from Petitioner.
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`23.
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`In February 2014 Petitioner filed a lawsuit for trademark infringement, trade dress
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`infringement, trademark dilution, and related claims in the United States District Court for the
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`Northern District of Georgia against Wu, The Wuster, and other persons and entities related to the
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`Airsplat.com business, Glock, Inc. v. The Wuster et al., Civil Action No. 1:14-cv-00568 (the “Civil
`
`Action”).
`
`24.
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`The parties to the Civil Action engaged in extensive discovery over a period 30
`
`months and eventually filed cross-motions for summary judgment. Thereafter, in December 2019,
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`the attorneys for The Wuster (the sole defendant remaining in the case at the time) sought and
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`received leave of the court to withdraw from the case because The Wuster had stopped paying
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`their legal fees.
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`25.
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`The district court held an evidentiary hearing on July 1, 2020 in connection with
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`Petitioner’s motion for entry of a default judgment seeking a permanent injunction and damages
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`against The Wuster.
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`26.
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`The district court granted Petitioner’s motion in a 33-page Order issued on
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`September 15, 2020 (Exhibit 3) and entered final judgment against The Wuster that afternoon.
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`The judgment (Exhibit 4) awarded damages to Petitioner of $ 2,253,078.28 and permanently
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`enjoined The Wuster,
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`its officers, directors, or affiliate companies and persons acting on
`their behalf from selling GLOCK replica pistols in the future or
`taking any other action that would infringe on [Glock, Inc.’s] . . .
`name and trade dress and trademarks.
`
`
`
`
`6
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`
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`27.
`
`The district court made numerous findings of fact in its September 15, 2020 Order
`
`that are relevant to Petitioner’s claim against Respondent in this Cancellation Proceeding,
`
`including the following:
`
`(a)
`
`The “Glock” airsoft pistols “sold by The Wuster use the corresponding
`
`name of the specific model of GLOCK pistol that they copy . . . .” (Ex. 3 at 10).
`
`(b)
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`The Wuster’s “Glock” airsoft guns were “nearly identical in their exterior
`
`design and appearance to GLOCK pistols as embodied in . . . [Glock, Inc.’s] registered trade dress,
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`and use the exact same trademarks registered by” Glock, Inc. (id. at 16).
`
`(c)
`
` “The Wuster sold numerous models of airsoft guns that are unlicensed and
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`unauthorized copies of Glock pistols” (id. at 10).
`
`(d)
`
`“The manner in which The Wuster marketed, advertised and sold the Glock
`
`replicas was intended to, and did, create actual market confusion in the minds of consumers as to
`
`whether they were genuine or licensed Glock products. . . .” (id. at 10 - 11).
`
`(e) Wu was “the Chief Executive Officer, President, and Founder of The
`
`Wuster” (id. at 11) and was a “moving, active and conscious force behind the unlawful advertising
`
`and sales activities by The Wuster related to the Glock Replicas” (id. at 12).
`
`GROUNDS FOR CANCELLATION
`
`I.
`
`FRAUDULENT PROCUREMENT OF TRADEMARK REGISTRATION
`
`28.
`
`29.
`
`Petitioner repeats and realleges each and every allegation set forth above.
`
`Respondent was a Nevada corporation established on April 18, 2009. Respondent
`
`is now defunct.
`
`
`
`
`7
`
`
`
`30. Wu owned 100% of Respondent and was Respondent’s President.
`
`31. Wu stated under oath in the Civil Action that Respondent “merely holds the
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`intellectual property of Airsplat” and had “no involvement with the importation, storage, shipment,
`
`advertising/marketing, and/or sale/transfer of airsoft guns.”
`
`32.
`
`On December 30, 2009 Wu caused Respondent to file an application with the PTO
`
`to register the trademark G19 for use with “Paintball guns; Toy guns.”
`
`33.
`
`The application, Serial No. 77/903408 (the “Application”), was filed under Section
`
`1(a) of the Trademark Act and claimed use of G19 in commerce since November 1, 2001.
`
`34. Wu signed the Application on behalf of Respondent.
`
`35.
`
`In signing the Application and in causing the Application to be filed with the PTO,
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`Wu represented to the PTO that “to the best of his [viz., Wu’s] knowledge and belief no other
`
`person, firm, corporation, or association has the right to use” the trademark G19 and that Wu
`
`believed Respondent “to be the owner of the trademark.”
`
`36.
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`These representations were false and were known by Wu to be false at the time he
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`made them to the PTO on December 30, 2009.
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`37.
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`As is apparent from the facts alleged in ¶¶ 37(a) – (b) below, on December 30,
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`2009, Wu – and, through him, Respondent – knew that Petitioner was freely and openly using G19
`
`as the name of a specific model of GLOCK pistol and knew that Petitioner had clearly superior
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`rights to the mark G19.
`
`(a)
`
`On February 17, 2009 – some 10 months before Wu signed the Application
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`– the Airsplat.com website featured a review of an airsoft gun manufactured on behalf of Wu, the
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`“KWA G19” airsoft gun. The review (Exhibit 5) explicitly linked the “KWA G19” airsoft gun to
`8
`
`
`
`
`
`
`Petitioner’s G19 pistol by referring to the former as the “KWA Glock G19 CBB” (emphasis
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`added). That same product review also noted that “Glock has just announced the introduction of a
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`new compact version [of the original G17 pistol] called the Model 19 . . . .”
`
`(b)
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`In filing the Application with the PTO on December 30, 2009, Wu tried to
`
`conceal the connection between the applied for trademark (G19) and Petitioner by digitally altering
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`the specimen of use that accompanied the Application. As the district court found in the Civil
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`Action, the airsoft guns sold through Airsplat.com infringed Petitioner’s registered trade dress in
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`the GLOCK pistol’s design by copying aspects of the pistol’s block, squared-off shape. The
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`specimen of use submitted by Respondent (Exhibit 6) purported to be a photograph of the
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`packaging of a “G19” airsoft gun sold through the Airsplat.com website. However, the picture of
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`the gun that appears on the packaging looks nothing like the GLOCK G19 pistol or any airsoft gun
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`ever sold through the Airsplat.com website (and, in fact, was produced by a competitor of
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`Petitioner’s, Heckler & Koch). Wu fabricated this specimen of “use” because he knew that the
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`design of the guns Airsoft.com sold under the G19 name were near exact replicas of Petitioner’s
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`famous pistol GLOCK design and because he believed (misguidedly) that he would prevent the
`
`PTO from recognizing the G19 trademark as belonging to Petitioner by creating a false specimen
`
`of use that featured a pistol that looked nothing the GLOCK pistol.
`
`38.
`
` Moreover, although Wu’s consumer-facing communications
`
`through
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`the
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`Airsplat.com website all emphasized a purported connection between Airsplat.com’s “G19” airsoft
`
`guns and Petitioner’s products, trademarks, and trade dress, at all relevant times Wu sought to
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`conceal this purported connection from the United States Customs and Border Protection Service.
`
`
`
`
`9
`
`
`
`(a)
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`Specifically, in shipping finished “G19” airsoft guns from their place of
`
`manufacture abroad into the United States, Wu caused each gun to be packaged in what appeared
`
`to be a plain, unmarked box that bore no trademarks.
`
`(b)
`
`The boxes, however, were reversible (Exhibit 7). When turned inside out,
`
`the boxes bore the full panoply of Petitioner’s brand indicia – the GLOCK word trademark and
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`logo, the G19 product mark, and other related trademarks owned by Petitioner. Once a given
`
`package cleared Customs, Wu had the product repackaged by turning each box inside out and then
`
`replacing the product within the inverted box.
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`(c) Moreover, in a further effort to conceal the connection between
`
`“G19” and Petitioner, in importing finished product from abroad Wu caused black tape to be placed
`
`on the portions of the guns that bore the GLOCK logo and GLOCK pistol number (Exhibit 8).
`
`39.
`
`On August 3, 2010, the PTO granted Respondent a Principal Register registration
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`for the trademark G19, Reg. No. 3828065 (the “Registration”).
`
`40.
`
`But for Respondent’s false representation in the Application (namely, that “to the
`
`best of . . . [Wu’s] knowledge and belief no other person, firm, corporation, or association has the
`
`right to use” the trademark G19, and that Wu believed Respondent “to be the owner of the
`
`trademark”) as hereinabove alleged, the PTO would never have granted the Registration to
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`Respondent.
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`41.
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`By reason of the foregoing, the Board should cancel the Registration on the ground
`
`that Respondent procured the Registration through fraud, in violation of 15 U.S.C. § 1064(3).
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`10
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`II.
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`FRAUDULENT MAINTENANCE OF REGISTRATI
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