Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA734766
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`Filing date:
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`03/21/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92062824
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Defendant
`Cristy's Pizza Inc.
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`JONATHAN M SHIRLEY
`DEVINE MILLIMET & BRANCH
`111 AMHERST ST
`MANCHESTER, NH 03101
`UNITED STATES
`sgrill@devinemillimet.com, jshirley@devinemillimet.com
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`Reply in Support of Motion
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`Jonathan M. Shirley
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`jshirley@devinemillimet.com, kschmidt@devinemillimet.com
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`/Jonathan M. Shirley/
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`03/21/2016
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`Attachments
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`Reply BEACH PIZZA (M3121256x9DD8D).pdf(141481 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`4,503,226
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`BEACH PIZZA
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`March 25, 2014
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` Cancellation No. 92062824
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`In re Registration No.:
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`For the Mark:
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`Registered on:
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`NH BEACH PIZZA, LLC
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`Petitioner,
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`v.
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`CRISTY’S PIZZA INC.
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`Registrant.
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`REPLY TO BRIEF IN OPPOSITION TO
`CRISTY’S MOTION FOR SUMMARY JUDGMENT
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`Registrant Cristy’s Pizza Inc. (“Cristy’s”), by and through its attorneys, Devine Millimet
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`& Branch, Professional Association, respectfully replies to Petitioner’s Brief in Opposition to
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`Cristy’s Motion for Summary Judgment as follows:
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`The Board dismissed Petitioner’s original cancellation proceeding because Petitioner did
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`not establish standing to cancel Cristy’s BEACH PIZZA trademark registration. Petitioner failed
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`to introduce evidence at trial that it is a competitor to Cristy’s or that it has an interest in the
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`BEACH PIZZA mark. The Board’s decision, which Petitioner elected not to appeal, is final and
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`it precludes Petitioner from attempting to litigate for a second time whether it has standing to
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`seek cancellation of the BEACH PIZZA trademark registration.
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`For its part, Petitioner argues that the Board’s dismissal was without prejudice and that
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`Petitioner should be allowed to pursue its claims in this proceeding because the Board did not
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`adjudicate the merits of Petitioner’s claims in the original proceeding. The standing cases
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`Petitioner cites in support of its position, however, arise in the context of patent infringement
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`claims where a standing defect existed either because the wrong party filed the action or because
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`a necessary party was missing from the action.
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`In Univ. of Pittsburgh v. Varian Med. Sys., Inc. 569 F.3d 1328, 1331 (Fed. Cir. 2009), for
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`example, the district court dismissed the patent infringement case because the plaintiff failed to
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`name the patent co-owner in the action, a necessary party. On appeal, the Federal Circuit held
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`that the district court’s dismissal should have been without prejudice to allow the plaintiff an
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`opportunity to cure the standing defect through the joinder of the proper party or an assignment
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`of the necessary patent rights. Id. at 1333. Similarly, in Fieldturf, Inc. v. Sw. Recreational
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`Indus., Inc. 357 F.3d 1266, 1269 (Fed. Cir. 2004), the Federal Circuit held that the plaintiff, a
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`patent licensee, lacked standing to bring the patent infringement claim because it did not
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`possesses all substantial rights in the patent. The Court instructed the trial court to decide
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`whether the dismissal should be with prejudice or without, noting that dismissal with prejudice
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`would be appropriate if it was plain that plaintiff was unable to cure the standing problem. Id.
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`Taken together, Univ. of Pittsburg and Fieldturf stand for the narrow proposition that
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`where the wrong party files a claim, a dismissal of the claim for lack of standing does not bar the
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`correct party from pursing the claim later. That rule has no application to the circumstance here.
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`Petitioner does not suggest that it was the wrong party to file the original cancellation proceeding
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`against Cristy’s or that it cured a technical defect that now vests it with standing that it did not
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`previously have. Rather, Petitioner simply wants a second chance to prove its standing to
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`challenge the BEACH PIZZA trademark registration despite having already been given a full
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`and fair opportunity to do so in the original proceeding. None of the cases relied upon by
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`Petitioner suggests that it is entitled to such a right. To the contrary, “[s]tanding ranks amongst
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`those questions of jurisdiction and justiciability not involving an adjudication on the merits,
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`whose disposition will not bar relitigation of the cause of action originally asserted, but may
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`preclude, or collaterally estop, relitigation of the precise issues of jurisdiction adjudicated.”
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`Cutler v. Hayes, 818 F.2d 879, 888 (D.C. Cir. 1987). Petitioner wants to relitigate the precise
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`issue of the standing it claimed to have in the original proceeding and that the Board already
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`fully examined and rejected. The law does not provide Petitioner such a right.
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`For these reasons, and for all the reasons set forth in its opening motion, Cristy’s
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`respectfully requests the dismissal of this proceeding.
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`Date: March 21, 2016
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`Respectfully submitted,
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`CRISTY’S PIZZA INC.
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`By its attorneys,
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`DEVINE, MILLIMET & BRANCH
`PROFESSIONAL ASSOCIATION
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`/Jonathan M. Shirley/
`Steven E. Grill, Esq.
`Jonathan M. Shirley, Esq.
`111 Amherst Street
`Manchester, NH 03101
`Telephone: (603) 669-1000
`Facsimile: (603) 669-8547
`sgrill@devinemillimet.com
`jshirley@devinemillimet.com
`ATTORNEYS FOR REGISTRANT
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a copy of the foregoing was served upon Petitioner’s counsel
`on March 21, 2016, via electronic mail and first class mail, at the following address:
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`Patrick D. Archibald, Esq.
`172 Washington Street, Suite 1
`Marblehead, MA 01945
`AttnyArchibald@gmail.com
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`/Jonathan M. Shirley/
`Jonathan M. Shirley, Esquire
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`Dated: March 21, 2016
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