Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA693082
`ESTTA Tracking number:
`09/01/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061640
`Plaintiff
`SeeLite, LLC
`KEVIN LEMLEY
`KEVIN LEMLEY PA
`824 COLONIAL DRIVE
`BRYANT, AR 72022
`UNITED STATES
`kevin@lemley-law.com
`Motion to Dismiss - Rule 12(b)
`Kevin Lemley
`kevin@lemley-law.com
`/kevin lemley/
`09/01/2015
`response.motion.dismiss.pdf(424352 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`
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`SEELITE, LLC
`
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`Petitioner
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`and
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`CEELITE TECHNOLOGIES, LLC
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`Registrant
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`In the matter of Registration No.
`3,825,621
`
`For the mark CEELITE
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`Registered on July 27, 2010
`
`Cancellation No. 92061640
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`RESPONSE TO MOTION TO DISMISS
`
`
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`SeeLite, LLC, for its response to CeeLite Technologies, LLC’s motion to dismiss, states
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`as follows.
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`Petitioner Is An Existing Arkansas Limited Liability Company And Has Standing
`To Bring This Action.
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`Petitioner is an existing legal entity created under Arkansas law. Registrant
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`I.
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`
`
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`mischaracterizes Arkansas law, which controls Petitioner’s status as a legal entity. In Arkansas,
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`corporations and limited liability companies must pay an annual franchise tax. See Ark. Code
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`Ann. §§ 26-54-101, et seq. The Arkansas Secretary of State applies these statutes to both
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`corporations and limited liability companies. See Exhibit 1; see also Ark. Code Ann. § 25-54-
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`102. The franchise tax is due on May 1 of the reporting year. See Ark. Code Ann. § 26-54-
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`105(c)(2)(B). If the company fails to pay the franchise tax, the corporate charter is not revoked
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`until January 31 of the following year. See Ark. Code Ann. § 26-54-11.
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`
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`An Arkansas limited liability company does not lose its status as a valid legal entity until
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`its charter has been revoked by the Secretary of State. For illustration, a sample record from the
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`Arkansas Secretary of State is attached as Exhibit 2. When a corporate entity no longer exists,
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`1
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`

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`its status is “revoked,” “dissolved,” or “withdrawn.” See id. For example, A.C. Smith &
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`Company, LLC, is no longer an existing entity because it has been revoked. Id.
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`
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`For nearly a century, Arkansas law has consistently maintained that a corporate entity
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`retains its legal status until its corporate charter is revoked, even if it has not timely paid the
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`franchise tax. See Jones v. Bank of Commerce of Fort Smith, 131 Ark. 362, 199 S.W. 103, 104
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`(1917). In that case, the plaintiff filed a lawsuit and proceeded all the way to a jury verdict while
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`being delinquent on its franchise taxes. Id. The Arkansas Supreme Court held it was a valid
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`corporate entity entitled to maintain the lawsuit because no action had ever been taken to revoke
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`its corporate status. Id.
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`
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`Also under Arkansas law, even when a corporate charter has been revoked, the
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`subsequent reinstatement of the charter is retroactive to the date of revocation. Van Cleve v. City
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`of North Little Rock, 2012 Ark. App. 694 at 2; see also Ark. Code Ann. § 25-54-112. An
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`Arkansas corporate entity that has had its charter revoked can still file and maintain a lawsuit,
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`provided that it later reinstates its corporate status. Id.
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`Petitioner has not been revoked by the Arkansas Secretary of State. Its status is “not
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`current,” which only means the 2015 franchise tax was not timely paid by May 1, 2015. See
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`Exhibit 3. Moreover, Petitioner paid its franchise tax on September 1, 2015. Petitioner has at all
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`times, and currently remains, an existing business entity under Arkansas law.
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`Petitioner Has Alleged Sufficient Facts To Meet The “Who, What, When, Where,
`and How” Requirements of Rule 9(b).
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`The pleading requirements of Rule 9(b) require Petitioner to identify the “who, what,
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`II.
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`
`
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`when, where, and how of the acts constituting the fraud.” Slep-Tone Entertainment Corp. v.
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`Kalamata, Inc., 75 F.Supp.2d 898, 906 (N.D. Ill. 2014). When evaluating a motion to dismiss, it
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`is appropriate to consider public records of the USPTO. Id. at 904. The “who” and “what”
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`2
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`

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`requirements are met by identifying the material misrepresentations made to the USPTO. Id. at
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`906. The “how” requirement is met by alleging the nature of the misrepresentation made to the
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`USPTO. Id. The “where” and “when” requirements” are met by alleging the date of the
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`misrepresentations made to the USPTO. Id.
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`
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`Petitioner has met all the requirements to state a claim that the Registration was procured
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`by fraud. On July 2, 2008, the examining attorney for the Registration sent an office action. See
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`Exhibit 5. The office action stated that if Registrant’s goods were in fact lighting fixtures, they
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`were properly filed in Class 11. Id. However, if the goods were in fact display panels, they
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`needed to be filed in Class 9. Id. On January 2, 2009, Registrant responded that the goods were
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`light fixtures in Class 11. Id.
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`
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`The “who, what, when, where, and how of the acts constituting the fraud” are properly
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`alleged in paragraphs 35 – 44 of the petition. The “who” is Registrant. Id. The “what” is
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`Registrant claimed a date of first use in commerce that pre-dated its own intent-to-use
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`application by five years. Id. Registrant did so by taking the date of first use for display panels
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`and claiming that date of first use for lighting fixtures. Id. Additionally, Registrant submitted a
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`specimen of a display panel as the specimen for lighting fixtures. Id. The “when,” “where,” and
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`“how,” is Registrant’s submission of the Statement of Use to the USPTO containing this false
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`information. Id. From the USPTO records, this occurred on June 9, 2010. These allegations
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`satisfy the pleading requirements of Rule 9(b). Moreover, there is nothing more that Petitioner
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`could plead to establish the fraud in the procurement.
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`3
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`

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`CONCLUSION
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`Petitioner is an existing legal entity under Arkansas law. Petitioner has properly alleged
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`facts showing the “who, what, when, where, and how” of the fraudulent acts in procuring the
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`Registration. Registrant’s motion to dismiss should be denied.
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`DATED:
`
`September 1, 2015
`
`Kevin M. Lemley, P.A.
`
`By: /s/ Kevin Lemley
`Kevin M. Lemley
`
`824 Colonial Drive
`Bryant, AR 72022
`(501) 773-8550
`
`Attorney for SeeLite, LLC
`
`CERTIFICATE OF SERVICE
`
`I certify that on September 1, 2015, the foregoing is being deposited with the United
`States Postal Service, with sufficient postage, as first class mail in an envelope addressed to the
`Registrant’s authorized representative:
`
`Mr. Scott Scioli
`Pinnacle IP Strategies, LLC
`P.O. Box 2498
`Cinnaminson, NJ 08077
`
`By:
`
`/s/ Kevin M. Lemley
`Kevin M. Lemley
`
`4
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`

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`Exhibit 1
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`

`
`Arkansas Secretary of State: Franchise Tax
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`Page 1 of 2
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`fsgencies; | Onlme Seix/ices | State l.‘,~ir'ectoiy
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`A;
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`| A-
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`| Text] Piints
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`ARKANSAS
`
`S ECRETARY OF STATE
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`Business Entity Fees, Forms and Procedures
`Choose to file online by clicking the ONLINE link and proceed to file electronically which is payable by
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`I
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`0 Filing Fee Schedules
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`. [?0m_eSUC Elfitlltles
`o
`l-oreign Entities
`a General Partnership
`0 MORAA /\Ct Filings
`
`a Cooperative
`
`. lfubhc \_Nat_erAUthm'ty
`a Franchise Tax
`a Miscellaneous Forms
`
`File Franchise Tax
`
`t
`
`a File Franchise Tax Onlinel or
`
`o File with Papei forrnsl
`
`Franchise Tax Report Forms
`
`Name of Official Document
`Form# Online$ Paper$ online PDF PDF PDF PDF
`15
`14
`13
`12
`
`
`Corporation/Bank with Stock
`Corporation/Bank without Stock
`
`Limited Liability Company
`
`Insurance Corporation Legal Reserve
`Mutual, Assets Less Than $100 million
`
`Insurance Corporation Legal Reserve
`Mutual, Assets Greater Than $100 million
`
`Insurance Company Outstanding Capital
`Stock Less Than $500,000
`
`Insurance Company Outstanding Capital
`Stock Greater Than $500,000
`
`N/A
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`$150*
`$300
`
`$150
`
`$300
`
`$150*
`$300
`
`ONLINE PDF
`ONl_INE PDF
`
`$150
`
`$300
`
`ONLINE PDF
`
`ONLINE PDF
`
`PDF
`PDF
`
`PDF
`
`PDF
`
`PDF
`PDF
`
`PDF
`
`PDF
`
`PDF
`PDF
`
`PDF
`
`PDF
`
`$400
`
`$400
`
`ONLINE PDF
`
`PDF
`
`PDF
`
`PDF-
`
`$300
`
`$300
`
`ONLINE PDF
`
`PDF
`
`PDF
`
`PDF
`
`$400
`
`$400
`
`ONLINE PDF
`
`PDF
`
`PDF
`
`PDF
`
`Mortgage Loan Corporation
`
`N/A
`
`$300*
`
`$300‘
`
`ONLINE PDF ‘PDF
`
`ONLINE PDF
`$300
`$300
`Mutual Assessment Insurance Corporation N/A
`* .3% of the outstanding capital stock, minimum amounts noted in chart
`
`PDF
`
`PDF
`
`PDF
`
`PDF
`
`PDF
`
`Note: 26-54-105. Franchise tax reports.
`(d)(1) Every corporation that dissolves shall be required to pay at the time of dissolution the franchise tax
`for the prior calendar year and pay at the time of dissolution the minimum franchise tax for the year in
`which dissolved or withdrawn.
`
`http://www.s0s.arkansas. gov/BCS/Pages/FranchiseTaxforms.aspx
`
`8/29/2015
`
`

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`Exhibit 2
`
`

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`Arkansas Secretary of State
`
`Page 1 of 7
`
`Rm mm
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`ARKA N SAS
`
`SIiCRl~«1’I‘A RY ()I’ S'iI‘A'I‘Ii
`
`Search Incorporations, (3()()pc2i'c1tives, Banks and IIisiiraiice Companies
`mr1t_e;.F;r_i§:,tI§|L\/_e_r_si<J_n
`For service of process contact the Secretaiy of State's office.
`
`Please click on the name for detailed information
`
`2344 records found
`
`Name
`
`i§..M|_I,fl.S_..TIN§
`
`4SM|THS INC.
`
`A SQACQMMUNICATIOSF FORT SMITH, |NC_
`
`A & D FORT SMITH LLC
`
`A AND_B SMITH FARMS‘ LLC
`
`A_>L?_t_J_}_<_O_F_,__I:‘g(_ZV)§|"!uT#SgIyI_m-I_L_I_i;I_Q_,
`
`Aw SUPPL_Y OF FORT sLH_.LLc_
`
`A:.I. E.J..!§_C..9..,I..J_I‘4__I,;t_Q._Q.t<_..,‘o.‘...II/I T..I_-I, LLQ
`A--1 PROFESSIONAL. LOCKSMITH LLC
`
`A_M§VC_/_‘_S_IAl_‘[IjI__|[~I,_CR
`A. B SM TH REAL ESTATE. INC
`
`A_.___(;.__QIf_ .E_Qfi,T*_S_I\_A4|_fl,j\_Ig
`
`LC. SM TH & COMPANY LLC
`
`_/1._E_.__S__I\W/iIT_Ij_§._1\_S_£>‘_Q§flT_IE_S_1_|_I“\I_E;._
`
`A._O__sM TH CORPORATION
`
`LQ.4S_I\fl‘_I”_I-HI_[‘__@§_F_§&_I@/I_E_S_:,‘I’I‘\I_()_._
`A. F’, SM TH OIL COMPANjQQI_(;
`LRIC__H_AR,D__§MIT_Iig_Q;_mg=
`AAA LOCKSMITH. LLO
`
`A_B_ILITIEs UNLIMITED QF FQRTSMITH, IN<_:_._
`&JeF§X_§eR_EH!\.B_LLII,ALII,0,N,QfiQfiI_§MIItIL
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`AMCM~E__I_ELE__C:T_RICAL_SYS_T§iII/I§_,QF F__OR_T__SM|TI~|. IE2;
`
`fl_TI_()&Q%§II4LT,HL,L_I&
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`fi\_(;LS____t3_C)~/:R_[§_ Qf:,I_f__,O4[3_'_[__S_I\[I_[Ij;|_N_C_w.
`ADCOCK 8. SMITH ENTERPRISES LLC
`
`City
`
`WEINER
`
`RUDY
`HOT SPRINGS
`
`HASTY
`
`FORT SMITH
`
`LITTLE ROCK
`
`LITTLE ROCK
`WEST MEMPHIS
`
`FORT SMITH
`
`LITTLE ROCK
`
`LITTLE ROCK
`
`LITTLE ROCK
`
`STAMPS
`CAMDEN
`MAUMELLE
`FORT SMITH
`
`FORT SMITH
`LITTLE ROCK
`
`FORT SMITH
`
`PINE BLUFF
`
`FORT SMITH
`TEXARKANA
`
`[*.Q_K,|!§I..S.?I\/ICEL|;._%4_LT.Ii .<5?,«.J5.§§_Q_C_|/_’\l_E§;_|_Ii_C_.
`
`LITTLE ROCK
`
`FT, SMITH. INC.
`_ADM|RAL MOVING SERVICES
`A.D_R|§NNE.-3;§_K|=YESTER_S_M1IH F/\|\!lJ.I-_‘£f_,0LLt\_I_|2a€\_T|,(M
`
`FAYETTEVILLE
`LITTLE ROCK
`
`N_E3>@]_>:
`
`State Status
`
`AR
`AR
`
`AR
`AR
`
`AR
`
`AR
`
`AR
`
`AR
`AR
`
`AR
`AR
`
`AR
`
`AR
`
`AR
`
`AR
`
`AR
`AR
`AR
`AR
`
`AR
`AR
`
`AR
`
`AR
`
`AR
`AR
`
`AR
`
`AR
`AR
`
`Used
`Dissolved
`
`Revoked
`Dissolved
`
`Good standing
`
`Revoked
`
`Not Current
`
`Expired
`Expired
`
`Revoked
`Revoked
`
`Revoked
`
`Revoked
`
`Revoked
`
`Good Standing
`
`Good Standing
`vimhdrawn
`Good Standing
`Revoked
`
`Good Standing
`Revoked
`
`Dissolved
`
`Dissolved
`
`Good Standing
`Good Standing
`
`Good Standing
`
`Revoked
`Good Standing
`
`http://www.sos.arkansas.goV/corps/search_corps.php
`
`8/29/2015
`
`

`
`Exhibit 3
`
`

`
`Arkansas Secretary of State
`
`Page 1 of 1
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`7/éuk. mm
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`ARKAN SA S
`
`SliiCRlji'l‘/\RY ()1-‘ S'l‘A”l‘li
`
`Search Incorporations, (;‘ooperc1tives, Banks and Insurance Companies
`mgr Friendly Version
`
`LLC Member information is now confidential per Act 865 of 2007
`
`Use your browser's back button to return to the Search Results
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`Begin New Search
`For service of process contact the ggretary of State's ofrice.
`
`Corporation Name
`Fictitious Names
`
`Filing #
`
`Filing Type
`Filed under Act
`Status
`
`Principal Address
`
`Reg. Agent
`
`Agent Address
`
`Date Filed
`
`Officers
`
`Foreign Name
`
`Foreign Address
`
`State of Origin
`
`SEELITE LLC
`
`811015224
`
`Limited Liability Company
`Domestic LLC; 1003 of 1993
`Not Current
`
`JOSHUA BRADLEY
`
`2290 SR 333
`
`RUSSELLVILLE, AR 72802
`
`05/01/2012
`
`JOSHUA BRADLEY , lncorporator/Organizer
`DEBORA BROWN , Tax Preparer
`
`N/A
`
`N/A
`
`fly Franchise Tax for this
`corgoration
`
`http://www.sos.arkansas. gov/corps/search_c0rps.php?DETAIL=3 86256&corp_type_id=&. ..
`
`8/30/2015
`
`

`
`From: ArkansasGovPay@ark.org
`Date: September 1, 2015 at 5:50:51 PM CDT
`To: Gasket98@hotmail.com
`Subject: Arkansas GovPay Receipt
`
`Thank you. Your payment is complete.
`Your account will be charged by Arkansas GovPay - Arkansas Government Services.
`
`Please click here to download a printable copy of your filing forms.
`811015224
` 2015 Corporation Franchise Tax Report
` Late Fee
`
`Total Tax Payment Due
`
`$ 150.00
`$ 30.89
`
`$ 180.89
`
`Payment Summary
`
`Amount Paid:
`Arkansas.gov Total:
`Payment Status:
`Order Date/Time:
`Confirmation Number (Order
`Id):
`Name on card:
`Email Address:
`Phone Number:
`
`Billing Address:
`
`$180.89
`$185.89
`Complete
`09/01/2015 05:49 PM
`
`20150901174906940
`
`Josh Bradley
`Gasket98@hotmail.com
`4797470552
`1502 Bailey loop road Russellville, AR 72802, UNITED
`STATES