Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA748796
`
`Filing date:
`
`05/26/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063149
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Silent Events, Inc.
`
`SILENT EVENTS INC
`52 SOUTH ALICIA DRIVE
`MEMPHIS, TN 38112
`UNITED STATES
`
`Motion for Relief from entry of Default Judgment
`
`Patrick G. Walker
`
`pwalker@farris-law.com
`
`/Patrick G. Walker/
`
`05/26/2016
`
`Motion to Set Aside Default Judgment.pdf(736843 bytes )
`Exhibit A - Affidavit of Ryan Dowd.pdf(52251 bytes )
`Exhibit B - Affidavit of William S Parks.pdf(46679 bytes )
`Exhibit C - Letter of October 27 2015.pdf(268420 bytes )
`Exhibit D - E-mail from Bill Parks_Redacted.pdf(135804 bytes )
`Exhibit E - Letter of February 2 2016_Redacted.pdf(79638 bytes )
`Exhibit F - Draft Petition.pdf(190158 bytes )
`Exhibit G - Complaint for Trademark InfringmentDraft Petition.pdf(2458437 bytes
`
`) E
`
`xhibit H - Affidavit of Service.pdf(73531 bytes )
`Exhibit I - E-mail from Phil Mischke.pdf(51754 bytes )
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`

`

`
`
`IN THE UNITED STATES PATENT ND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92063149
`
`In the matter of Trademark Registration
`
`No. 4,141,745
`
`For the Mark: SILENT EVENTS
`
`Registered on: May 15, 2012
`
`) l l l
`
`) l ) l )
`
`QUIET EVENTS, INC.
`
`Petitioner,
`
`v
`
`SILENT EVENTS, INC.,
`
`Registrant.
`
`MOTION AND BRIEF TO SET ASIDE DEFAULT JUDGMENT
`
`Respondent, Silent Events, Inc., hereby moves pursuant to Trademark Trial and Appeal
`
`Board Rule 544 and Fed. R. of Civ. P. 60(b) to vacate and set aside the judgment made and
`
`entered in this action on May 4, 2016, on grounds of mistake, inadvertence, or excusable
`
`neglect; on grounds of misconduct by an opposing counsel; and alternatively to assign a new
`
`filing date and schedule consistent with the date of service. The Respondent respectfully states
`
`as follows:
`
`INTRODUCTION
`
`Neither the Respondent nor its attorney of record received actual notice of the Petition
`
`for Cancellation (”Petition”) or any subsequent document filed by the Petitioner or issued by
`
`the Trademark Trial and Appeal Board (”Board”) in this proceeding before Registration No.
`
`4,141,745 (’745 Mark) was cancelled on May 6, 2016. Affidavit of Ryan Dowd 1i 4 (May 23,
`
`2016), which is attached hereto and incorporated herein by reference as Exhibit ” ”; and
`
`Affidavit of William 5. Parks 1] 4 (May 26, 2016), which is attached hereto and incorporated
`
`

`

`
`
`herein by reference as Exhibit ”B.” The Respondent is the owner of the '745 Mark. The attorney
`
`of record for the '745 Mark is William ”Bill” S. Parks. The Respondent and its attorney were part
`
`of ongoing communications with Petitioner immediately before the Petition was filed, but
`
`rather than give notice of the Petition to the Respondent or its attorney, Petitioner elected to
`
`send notice and serve the Petition using outdated addresses while having full knowledge of the
`
`Respondent’s and Bill Park’s correct address. As a result of Petitioner’s actions, the Respondent
`
`had no knowledge of the Petition, which ultimately resulted in default judgment being entered
`
`and cancellation of the ’745 Mark.
`
`RESPONDENT’S HISTORY OF PROTECTING ITS INTELLECTUAL PROPERTY
`
`Respondent was formed in July of 2008 and soon after began protecting its intellectual
`
`property soon after. Respondent applied for the registration of ”Silent Events” in August of
`
`2011, which the USPTO granted in May of 2012. In November of 2011, Respondent filed a
`
`patent application related to the technology utilized in its business and was granted a patent in
`
`September of 2015. With ownership of its intellectual property secured, Respondent began
`
`regularly defending the ’745 Mark against businesses it believed to be infringing, including the
`
`Petitioner. The history of Respondent’s efforts to protect its intellectual property is important
`
`because those efforts are inconsistent with Petitioner’s perceived inactivity with respect to the
`
`Petition and support Respondent’s position that it did not have knowledge of the Petition
`
`before the '745 Mark was cancelled.
`
`STATEMENT OF FACTS
`
`On or about October 27, 2015, Respondent mailed a cease and desist letter to Petitioner
`
`8
`alle ing, among other things, that Petitioner’s business activities infringed upon Respondent’s
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 2 OF 16
`
`

`

`
`
`intellectual property rights (”Cease and Desist Letter”). See Ltr. from William S. Parks to Will
`
`Petz, Re: ”QUIET EVENTS” Trademark Issue and related Unfair Competition Concerns (October
`
`27, 2015), a copy of which is attached hereto and incorporated herein by reference as Exhibit
`
`”C.” It is important to note that this letter originated from Bill Parks and the law firm Hulsey
`
`Hunt & Parks P.C. located at 5100 Poplar Avenue, Suite 2412, Memphis, TN 38137. The Cease
`
`and Desist Letter further states "Silent Events inc. has retained our law firm to handle its legal
`
`interests in terms of intellectual property and related business matters.” Exhibit ”C.” After
`
`October 27, 2015, the Respondent and Petitioner exchanged approximately twenty seven (27)
`
`pieces of written correspondence through February 10, 2016, in an effort to reach an amicable
`
`resolution of the issues that were the subject of the Cease and Desist Letter. Of these written
`
`communications, approximately eleven (11) e-mails were sent from Petitioner or its attorneys
`
`to Bill Parks at the e-mail address bill@hulseyiplaw.com. Additional communications were had
`
`over the phone between Petitioner or its attorneys and Bill Parks.
`
`During the course of these communications, the Petitioner raised the possibility of filing
`
`a petition for cancellation of the '745 Mark on grounds that it was generic.
`
`In response to
`
`Petitioner’s threats of filing a cancellation proceeding and other allegations, Bill Parks authored
`
`a three page e-mail asserting Respondent’s defenses. See E-mail from William S. Parks to Aaron
`
`Riedel, Silent Events (November 20, 2015), a copy of which is attached hereto and incorporated
`
`herein by reference as Exhibit ”D.”1 The parties continued to seek an amicable resolution
`
`through December of 2015 and January of 2016. Then on February 2, 2016, Petitioner’s
`
`‘ The contents of this e-mail are being shared with the Board to demonstrate that Respondent has a
`meritorious defense to Petitioners grounds for cancellation and Petitioner was aware of those defenses
`
`prior to filing the Petition. Portions of this e-mail and other correspondence attached hereto as exhibits
`have been redacted to prevent disclosure of confidential settlement negotiations.
`
`MOTION AND BRIEF To SET ASlDE DEFAULTJUDGMENT
`
`PAGE 3 or 16
`
`

`

`attorney, Aaron Riedel, mailed a letter to Bill Parks addressed to Hulsey Hunt and Parks, P.C.,
`
`5100 Poplar Ave., Suite 2412, Memphis TN 38137 ("Riedel Letter”). See Ltr. from Aaron Riedel
`
`to Bill Parks, Re: Cease and Desist Letter to Quiet Events Dated October 27, 2015 (February 2,
`
`2016), a copy of which is attached hereto without exhibits and incorporated herein by
`
`reference as Exhibit ”E.” The Riedel Letter, with attachments, numbered eighty-two (82) pages.
`
`One of the attachments to the letter was a draft petition for cancellation that, purportedly, had
`
`been prepared by William R. Samuels ("Draft Petition”). See Draft Petition for Cancellation,
`
`which is attached hereto without exhibits and incorporated herein by reference as Exhibit ”F.”
`
`The Draft Petition contained a certificate of service addressed to Bill Parks, Esq., Hulsey, Hunt
`
`& Parks P.C., 5100 Poplar Avenue, Suite 2412, Memphis TN 38137. See Exhibit ”F.” Petitioner
`
`sent
`
`its
`
`last correspondence to Bill Parks on February 10, 2016,
`
`again using the
`
`bill@hulseyiplaw.com e-mail address. At this point, settlement negotiations between Petitioner
`
`and Respondent ended, and Respondent began preparing a complaint against Petitioner to be
`
`filed in the U.S. District Court for the Middle District of Tennessee.
`
`On February 11, 2016, Petitioner filed the Petition that is the subject of this action and,
`
`according to its certificate of service, mailed the petition to William 5. Parks at the following
`
`address: William S. Parks, Wyatt, Tarrant & Combs, LLP, 1715 Aaron Brenner Dr., Ste 800,
`
`Memphis, Tennessee 38120-1445. Mr. Parks was a partner at Wyatt, Tarrant 8: Combs when
`
`the ’745 Mark’s application was filed. See Affidavit of William 5. Parks 1] 2 (May 26, 2016).
`
`However, Mr. Parks left Wyatt, Tarrant & Combs L.L.P. in June of 2015 and joined the firm of
`
`Hulsey, Hunt & Parks P.C.
`
`in July of 2015. See Affidavit of William S. Parks 1] 2 & 3 (May 26,
`
`2016). The U.S. Patent and Trademark Office’s directory of patent attorneys lists Mr. Parks’
`
`MOTlON AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 4 OF 15
`
`

`

`
`
`address as Hulsey, Hunt & Parks P.C., 5100 Poplar Avenue, Suite 2412, Memphis TN 38137.
`
`Nevertheless, the Petitioner and its attorney William R. Samuels, who was copied on the Riedel
`
`Letter, ignored the address used to communicate with Bill Parks only nine days before filing the
`
`Petition and the e-mail addresses used by the Respondent and its attorney during the
`
`preceding five months. Petitioner, instead, sent the Petition to an address that had not been
`
`used during that time without sending a copy to an address known to be valid or alerting the
`
`Board to a new address. As a result, Respondent did not receive the Petition, despite
`
`Petitioner’s assertion in the certificate of service to the Board that it had delivered a copy to
`
`Mr. Parks. See Affidavit of William S. Parks 1] 4 (May 26, 2016).
`
`On February 16, 2016, the Board, noting that Petitioner had mailed the petition to an
`
`attorney, issued an order instructing the Petitioner to mail an additional copy of the Petition to
`
`the owner of the ’745 Mark. The Board’s instructions also included an explanation of
`
`Petitioner’s obligations if service is ineffective, stating in substantive part ”[w]hile petitioner is
`
`under no obligation to search for current correspondence address information for, or
`
`investigate the whereabouts of, any respondent petitioner is unable to serve,
`
`if petitioner
`
`knows of any new address information for the respondent, petitioner must report the
`
`address to the Board.” (emphasis supplied). The Respondent, however, did not receive a copy
`
`7 of the petition or a copy of any other document related to this action after the Board’s order
`
`because of Petitioner’s following actions. See Affidavit of Ryan Dowd 1] 4 (May 23, 2016).
`
`The Petitioner waited forty-nine (49) days before mailing a second copy of the Petition,
`
`and when a copy was mailed, Petitioner mailed it to an address that Petitioner knew or should
`
`have known was outdated. The Petitioner mailed the second copy of the Petition on April 5,
`
`MOTION AND BRIEF To SET ASlDE DEFAULTJUDGMENT
`
`PAGE 5 OF 16
`
`

`

`
`
`2016 and that copy was addressed to Silent Events, Inc., 52 South Alicia Drive, Memphis,
`
`Tennessee 38112 (”Memphis Address”). Although this address is listed on the ’745 Mark’s
`
`certificate of registration, it had not been used by Respondent since January 2014, and it was
`
`not an address that Petitioner used to contact Respondent during the earlier negotiations. See
`
`Affidavit of Ryan Dowd 1] 2 (May 23, 2016)
`
`On April 5, 2016, Petitioner also filed a Motion for Default Judgment and mailed it to the
`
`Memphis Address. The timing of Petitioner’s actions should be noted. First, Petitioner mailed
`
`the petition to Respondent on the same day it filed a motion for default judgment. Second, it
`
`did not wait for the Board to issue a notice of default, but rather, took action to initiate the
`
`default proceedings. While neither of these actions is prohibited by the Board, Respondent
`
`asserts they are telling of Petitioner’s goal to obtain a default judgment, especially in light of
`
`Petitioners actions after filing its motion for default judgment.
`
`On April 7, 2016, Respondent filed its Complaint for Trademark Infringement against
`
`Petitioner in the United States District Court for the Middle District of Tennessee (”Complaint”).
`
`See Complaint for Trademark Infringement (April 7, 2016), a copy of which is attached hereto
`
`and incorporated herein by reference as Exhibit ”G.” On April 15, 2016, the Complaint was
`
`served on William Petz who is designated by law to accept service of process on behalf of
`
`Petitioner. See Affidavit of Service (April 15, 2016), a copy of which is attached hereto and
`
`incorporated herein by reference as Exhibit “H.” The first paragraph of the Complaint states
`
`"Plaintiff Silent Events is a corporation duly organized and incorporated under the laws of the
`
`State of Georgia, with its principal place of business located at 4004 Sussex Dr., Nashville, TN
`
`11105.” Exhibit ”G." Thus, Petitioner knew, within ten days of mailing the Petition and motion
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 6 OF 16
`
`

`

`
`
`for default judgment, that it had been using an address that was not Respondent’s principal
`
`place of business.
`
`Coincidentally, the deadline for Respondent’s response to the motion for default
`
`judgment, May 5, was only one day before the deadline for Petitioner’s response to the
`
`Complaint, May 6. The Petitioner's deadline for responding to the Complaint is of particular
`
`importance because Petitioner’s response would likely include this cancellation proceeding as a
`
`defense. Thus, Petitioner’s response would have given Respondent actual notice of this
`
`proceeding only one day after Respondent’s deadline to respond to the motion for default
`
`judgment and perhaps even before an order of cancellation was entered.
`
`On or about April 27, 2016, Matthew Moisan, Petitioner’s attorney working with Aaron
`
`Riedel, contacted Phillip Mischke, an attorney representing Respondent in the ligation against
`
`Petitioner, to request a two week extension of Petitioner’s deadline to respond to the
`
`Complaint. E-mail from Phil Mischke to Mattheew Moisan, Re: Silent Events, Inc., v. Quiet
`
`Events, Inc. (April 27, 2016), which is attached hereto and incorporated herein by reference as
`
`Exhibit ”I.” Out of courtesy to the Petitioner, Respondent granted the extension. See Exhibit ”l.”
`
`With knowledge of the impending deadline for Respondent to respond to the motion for
`
`default judgment and knowledge that the petition and motion had been sent to an address that
`
`Respondent did not use as its principal address, Petitioner did not mention the cancellation
`
`proceeding to undersigned counsel.
`
`On May 5, 2016, the Board granted Petitioner’s motion for default judgment, and on
`
`May 6, 2016, the Board entered its order cancelling Registration No. 4141745. On May 18,
`
`2016, Petitioner sought a second extension of the deadline to respond to the Complaint, and
`
`MOTION AND BRIEF To SET ASIDE DEFAULTJUDGMENT
`
`PAGE 7 OF 16
`
`

`

`
`
`Respondent granted a one week extension. Later on May 18, 2016, undersigned counsel
`
`discovered this proceeding while reviewing the U.S. Patent and Trademark Office’s TSDR
`
`database while preparing documents necessary in the litigation against Petitioner. immediately
`
`thereafter, Respondent began preparing this motion and its supporting documents.
`
`ARGUMENT SUPPORTING MOTION
`
`I.
`
`The Board should set aside the default judgment entered against Respondent on
`
`grounds of mistake, inadvertence, surprise, or excusable neglect.
`
`The Trademark Trial and Appeal Board’s Manual of Procedure (”TBMP”) provides that
`
`"(mlotions to set aside or vacate a final judgment rendered by the Board are governed by Fed.
`
`R. Civ. P. 60(b)," which states:
`
`legal
`its
`the court may relieve a party or
`terms,
`On motion and just
`representative from a final judgment, order, or proceeding for the following
`reasons:
`
`(1) mistake, inadvertence, surprise, or excusable neglect;
`(2)
`newly discovered evidence that, with reasonable diligence, could not have
`been discovered in time to move for a new trial under Rule 59(b);
`fraud (whether previously called intrinsic or extrinsic), misrepresentation,
`or misconduct by an opposing party;
`the judgment is void;
`the judgment has been satisfied, released, or discharged; it is based on an
`earlier judgment
`that has been reversed or vacated; or applying it
`prospectively is no longer equitable; or
`any other reason that justifies relief.
`
`(3)
`
`(4)
`(5)
`
`(6)
`
`TBMP § 544. Further, Fed. R. Civ. P. 60(c), states ”[a] motion under Rule 60(b) must be made
`
`within a reasonable time —- and for reasons (1), (2), and (3) no more than a year after the entry
`
`of the judgment or order of the date of proceeding.” Other factors to be considered when relief
`
`is sought from default judgment include ”(1) whether the plaintiff will be prejudiced, (2)
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 8 OF 16
`
`

`

`
`
`whether the default was willful, and (3) whether the defendant has a meritorious defense to
`
`the action.” TBMP § 544; See Dierediian v. Kashi, 21 U.S.P.Q.2d 1613 (1991).
`
`A.
`
`Respondent inadvertently failed to respond to the Petition.
`
`Here, Respondent seeks relief from the order of default judgment on grounds that it
`
`was the result of mistake, inadvertence, surprise, or excusable neglect, and asserts that it is
`
`seeking relief within a reasonable time. Respondent had numerous communications with
`
`Petitioner before the Petition was filed, and believed that it would receive a copy of any
`
`cancellation proceeding ~ which the parties had discussed - at its current address or the
`
`current address of its attorney of record. The basis for Respondent’s mistaken belief that it
`
`would receive a copy in this manner is evidenced by Petitioner’s Draft Petition, identifying
`
`Respondent’s attorney, at his current address, of record in the Certificate of Service. See Exhibit
`
`”F.” The Respondent, however, did not receive a copy of the petition or have actual notice of
`
`these proceedings before the Board’s default judgment for the reasons set forth above.
`
`B.
`
`The Board should vacate the Default Judgment against Respondent because of
`
`Petitioner's misconduct.
`
`Respondent asserts that the Board’s default judgment should be vacated due to
`
`Petitioner’s misconduct. While technically complying with the Board’s rules, the Petitioner did
`
`not do so in an effort to allow Respondent to present a defense to the Petition. Instead, the
`
`Petitioner exploited the Boards’ rules and the Respondent’s own good faith to obtain a default
`
`judgment without having to meet its burden of proof. Petitioner had numerous opportunities
`
`to inform Respondent of the cancellation proceeding but chose not to do so. Petitioner could
`
`have sent a copy of the Petition to Bill Parks at his Hulsey, Hunt 8: Parks, used by Petitionerjust
`
`MOTION AND BRIEF TO SET ASIDE DEFAULT JUDGMENT
`
`PAGE 9 OF 16
`
`

`

`
`
`nine days earlier. Petitioner could have contacted Respondent by e-mail, as it had done
`
`numerous times, to propose service by electronic transmission as described by TBMP §
`
`309.02(c)(2). Petitioner, upon learning of Respondent’s primary business address in the
`
`Complaint, could have mailed a copy of the Petition or motion for default judgment to that
`
`address. Petitioner’s attorney could have alerted Respondent’s litigation counsel of the Petition
`
`and/or the pending motion for default judgment during their telephone conversation during
`
`which Petitioner asked Respondent to voluntarily extend the Complaint’s response deadline.
`
`Rather than inform Respondent of this proceeding, Petitioner mailed the second copy of
`
`the Petition forty-nine (49) days after the Board ordered it to do so; filed a motion for default
`
`judgment
`
`to hasten the default deadline;
`
`ignored all of Respondent’s known contact
`
`information and was silent about the impending default judgment when seeking an extension
`
`of the Complaint’s response deadline, and thereby delaying a response that might inform
`
`Respondent of this proceeding before the Board entered an order cancelling the '745 Mark.
`
`These overt actions and intentional omissions reveal that the Petitioner’s intent was not to
`
`adjudicate this proceeding on the merits but rather to obtain an advantage in pending litigation
`
`through default judgment.
`
`C.
`
`Respondent seeks relief from default judgment within a reasonable time.
`
`Respondent asserts that it seeks relief from the Board’s default judgment within a
`
`reasonable time. This motion is being filed within twenty-one (21) days of the entry of default
`
`and eight days of discovering the default. The Board has considered motions filed within a
`
`similar period of time to be reasonable. See Djeredjian v. Kashi, 21 U.S.P.Q.2d 1613
`
`MOTION AND BRIEF TO SET ASIDE DEFAULT JUDGMENT
`
`PAGE 10 OF 16
`
`

`

`
`
`(1991)(”[T]he motion was filed fifteen days after the Board entered default judgment against
`
`respondent. Clearly the motion was filed within a reasonable time.”)
`
`D.
`
`Petitioner will not be Qreiudiced if default judgment is vacated.
`
`Respondent asserts that Petitioner will not be prejudiced by an order setting aside the
`
`default judgment. Upon information and belief, the basis of the Petition was to create a
`
`defense to Respondent’s allegations of trademark infringement on grounds that the ’745 Mark
`
`was generic and/or descriptive. These defenses will still be available to Petitioner if the Board
`
`vacates its default judgment against Respondent. Petitioner can assert its defenses in the civil
`
`litigation pending in the U.S. District Court for the Middle District of Tennessee as well as this
`
`proceeding, should it continue.
`
`E.
`
`Respondent did not willfully allow default iudgment to be entered.
`
`Respondent’s failure to answer the Petition was not willful. Respondent has expended
`
`great effort to protect its intellectual property, acquiring a trademark and a patent. Further
`
`Respondent has regularly contacted parties, like Petitioner, believed to be infringing upon its
`
`intellectual property and spent considerable time attempting to negotiate resolutions of
`
`potential infringement. Here, Respondent spent five months negotiating with Petitioner and
`
`specifically argued that the '745 Mark was not generic. Had Respondent known of the petition,
`
`it would have presented its defenses to the Board.
`
`F.
`
`Respondent has a meritorious defense to Petitioner’s allegations.
`
`Respondent has a meritorious defense to Petitioner’s allegation that the ’745 Mark is
`
`generic and/or merely descriptive. There is a strong presumption that, by obtaining
`
`registration, the ’745 Mark is not generic. Thus, Petitioner bears the burden to prove through
`
`MOTION AND BRIEF TO SET ASlDE DEFAULTJUDGMENT
`
`PAGE 11 OF 15
`
`

`

`
`
`clear evidence that the ’745 Mark has become generic among a majority of the buyer group. To
`
`support its allegation, Petitioner cites to a Wikipedia page for a ”common description of silent
`
`events.” The Wikipedia article, however, does not mention the words ”silent” and ”event”
`
`consecutively and does not identify any activity as a ”silent event.”
`
`As to the examples of genericness, Petitioner offers websites from South Africa,
`
`Australia, United Kingdom, France, and Spain that use the words ”silent event;” and two articles
`
`that appear to use the words ”silent event,” collectively, five times. The Silent Storm Sound
`
`System website offered by Petitioner does not use ”silent event” to describe its parties but
`
`rather uses ”silent disco” approximately seventy (70) times, suggesting that ”silent disco” is the
`
`generic term for the industry not "silent event.” These few examples do not represent the
`
`majority of the buyer group, and if given the opportunity, Respondent will present evidence
`
`that the ’745 Mark is recognized as identifying Respondent’s business and services, not the
`
`industry in general.
`
`Judge Posner warned,
`
`To determine that a trademark is generic and thus pitch it into the public domain
`is a fateful step. It penalizes the trademark‘s owner for his success in making the
`trademark a household name and forces him to scramble to find a new
`
`trademark.
`
`The fateful step ordinarily is not taken until the trademark has
`
`gone so far toward becoming the exclusive descriptor of the product that sellers
`of competing brands cannot compete effectively without using the name to
`designate the product they are selling.
`
`Ty, inc. v. Sofbelly’s lnc., 353 F.3d 528, 531 (7th Cir. 2003). Petitioner’s evidence is not sufficient
`
`to carry its burden of proving by clear evidence that the ’745 Mark has become generic.
`
`Respondent further disputes Petitioner’s allegation that the ’745 Mark is descriptive,
`
`and if given the opportunity would assert a meritorious defense to this allegation. For a mark to
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 12 OF 16
`
`

`

`
`
`be considered merely descriptive, the term must describe goods or services with particularity.
`
`In re TMS Corp. of the Americas, 200 U.S.P.Q. 57, 59 (TTAB 1978) (Emphasis added). The
`
`primary test for determining whether a mark is descriptive is whether it immediately conveys to
`
`consumers a feature, characteristic or the nature of the applicant’s goods or services or
`
`whether consumers must use ”’imagination, thought or perception” to draw that conclusion.”
`
`J.S. Paluch Co. v. Irwin, 215 U.S.P.Q. 533, 536 (TTAB 1982). ”If one must exercise mature
`
`thought or follow a multi-stage reasoning process in order to determine what product or
`
`service characteristics the term indicates,
`
`the terms is suggestive rather than merely
`
`descriptive.” In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (TTAB 1978).
`
`A second defense to Petitioner’s allegation that the ’745 Mark is highly descriptive is
`
`whether it has acquired distinctiveness or secondary meaning. See Two Pesos, Inc. v. Taco
`
`Cabana, Inc., 505 U.S. 763 (1992). Whether the '745 Mark has acquired distinctiveness is a
`
`question of fact proved though direct or circumstantial evidence such as customer surveys,
`
`input by the Respondent, evidence of sales volume, length of time the ’745 mark has been
`
`used, and quantity of advertising and promotion to consumers. See G.H. Mumm & Cie. V.
`
`
`Desones & Geddes Ltd. 16 U.S.P.Q.2d 1635 (Fed. Cir. 1990).
`
`If provided the opportunity, Respondent will present evidence that the '745 Mark is not
`
`descriptive and because it does not immediately convey to consumers meaningful or coherent
`
`information about the services offered by Respondent. Respondent will also present direct
`
`and/or circumstantial evidence that the ’745 Mark has acquired distinctiveness in defense of
`
`Petitioner’s allegations. Respondent
`
`respectfully requests that
`
`the Board not
`
`reward
`
`Petitioner’s actions and that it vacate the default judgment.
`
`MOTION AND BRlEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 13 OF 16
`
`

`

`
`
`ll.
`
`Alternatively, Default Judgment should be vacated and a new filing date assigned
`
`based on Petitioner’s failure to serve Respondent until April 5. 2016.
`
`Amended Trademark Rule 2.111(a) provides that a petitioner must include ”proof of
`
`service on the owner of record for the registration, or the owner’s domestic representative of
`
`record, at the correspondence address of record.” The Board informed Petitioner of this
`
`requirement in its order of February 16, 2016. Accordingly, the Board instructed Petitioner as
`
`part of its order to ”forward an additional copy of [the] petition to the owner of record for the
`
`registration, at its address of record.” Petitioner did not forward a copy of the petition to
`
`Respondent until April 5, 2016, the same day that it mailed its Motion for Default Judgment.
`
`Thus, Petitioner did not comply with Amended Trademark Rule 2.111(3) until April 5, 2016.
`
`The Board has previously held that similar errors in serving a respondent afforded the
`
`petition a new filing date consistent with the actual date of service. See The Eguine Touch
`
`Foundation, Inc. v. Eguinology, Inc., 91 U.S.P.Q.2d 1943 (2009). In the Eguinology, lnc. matter,
`
`petitioner acknowledged insufficient service and forwarded a copy of the petition to
`
`respondent’s attorney. ld_. After petitioner promptly corrected the mistake by amending the
`
`petition, the Board assigned a new filing date commensurate with the date of the petitioner’s
`
`amendment. id; The Board also modified subsequent deadlines to be consistent with the
`
`revised filing date. fl:
`
`Here, Petitioner did not acknowledge improper service, call Respondent’s attorney
`
`regarding the error, or promptly correct the error by amending the petition. Petitioner merely
`
`waited until the initial forty (40) day response period was over and served a copy of the petition
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 14 OF 15
`
`

`

`
`
`on the same day it served the motion for default judgment. Respondent again asserts that
`
`Petitioner should not benefit from its actions.
`
`In the event that the Board does not grant this Motion for the reasons stated in the
`
`section above, Respondent respectfully requests that the Board vacate the judgment based on
`
`Petitioner’s failure to serve Respondent, assign a filing date of May 5, 2016, and calculate a new
`
`schedule for this proceeding based upon the new filing date. Such a ruling would set a
`
`minimum deadline of June 14, 2016 before a default judgment could be entered. This would
`
`provide Respondent sufficient time, following proper service, to answer the petition.
`
`WHEREFORE, Respondent respectfully requests that the Order of Default Judgment
`
`entered by the Board on May 4, 2016, and the Cancellation of Registration No. 4141745
`
`entered on May 5, 2016, be set aside so that this proceeding may continue on its merits.
`
`Dated: May 26, 2016
`
`Respectfully submitted,
`
`Patrick G. Walker
`
`BPR No. 26931
`
`FARRIS BOBANGO BRANAN PLc
`
`999 S. Shady Grove Rd., Suite 500
`
`Memphis, Tennessee 38120
`
`(901) 259—7100
`
`Counsel for Silent Events, Inc.
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 15 OF 16
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that I have this day served upon opposing counsel a true and correct
`copy of the foregoing document via US. Mail with adequate postage affixed thereon and
`addressed as follows:
`
`Aaron Riedel
`
`Moisan Legal P.C.
`
`45—18 Court Square, Suite 400
`
`Long island City, New York 11101
`
`William R. Samuels
`
`W.R. Samuels Law PLLC
`
`280 Madison Avenue, Suite 600
`
`New York, New York 10016
`
`Todd Hambidge
`Waller Lansden Dortch & Davis LLP
`
`511 Union Street, Suite 2700
`
`Nashville, TN 37219
`
`This 26th day of May, 2016.
`
`MOTION AND BRIEF TO SET ASIDE DEFAULTJUDGMENT
`
`PAGE 15 0F 15
`
`

`

`
`
`IN THE UNITED STATES PATENT ND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Cancellation No. 92063149
`
`In the matter of Trademark Registration
`No. 4,141,745
`
`) )
`
`) )
`
`'
`
`QUIET EVENTS, INC.
`
`Petitioner,
`
`v.
`
`)
`)
`)
`)
`Registrant.
`)
`Registered on: May 15, 2012
`
`
`SILENT EVENTS, INC,
`
`For the Mark: SILENT EVENTS
`
`
`
`AFFIDAVIT OF RYAN DOWD
`
`STATE OF TENNESSEE
`
`COUNTY CEM)
`
`) >
`
`Ryan Dowd, being first duly sworn, states as follows:
`
`1.
`
`2.
`
`I am the owner of Silent Events, Inc. and authorized to act on its behalf.
`
`Silent Events, Inc. has not conducted business at 52 south Alicia Drive, Memphis,
`
`Tennessee 38112 since «TARA/u Av}! 20 Ii
`
`3.
`
`Silent Events,
`
`Inc. has conducted business at 4004 Sussex Dr., Nashville,
`
`Tennessee 37207 since St Qi‘c Mb €Y‘80i kl
`
`4.
`
`Silent Events, Inc. did not receive actual notice of the petition for cancellation,
`
`motion for default judgment, or any document related to this action prior to the cancellation of
`
`Registration No. 4141745.
`
`FURTHER AFFIANT SAYETH NOT.
`
`
`4
`
`EXHIBIT
`
`'
`
`
`
`

`

`
`
`SWORN TO AND SUBSCRIBED BEFORE ME, the undersigned Notary Public, this the
`(13¢ day ofMay, 2016.
`
`My Commission Expires:
`
`Jaw; (if. 30:20
`
`
`
`W A
`
`FFIDAVIT OF RYAN DOWD
`
`Page 2 of 2
`
`

`

`
`
`IN THE UNITED STATES PATENT ND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`QUIET EVENTS, INC.
`
`Petitioner,
`
`V.
`
`SILENT EVENTS, INC.,
`
`Cancellation No. 92063149
`
`In the matter of Trademark Registration
`No. 4,141,745
`
`For the Mark: SILENT EVENTS
`
`VVVVVVVVV
`
`Registered on: May 15, 2012
`Registrant.
`
`
`
`
`AFFIDAVIT OF WILLIAM S. PARKS
`
`STATE OF TENNESSEE
`
`COUNTY OF Shelby
`
`)
`
`;
`
`William S. Parks, being first duly sworn, states as follows:
`
`1.
`
`2.
`
`I am the attorney of record for Registration No. 4141745.
`
`I have ceased working with the firm of Wyatt Tarrant & Combs, LLP located at 1715
`
`Aaron Brenner Dr., Suite 800, Memphis, Tennessee 38120 in June of 201 5.
`
`3.
`
`I began working with the firm of Hulsey Hunt & Parks P.C. located at 5100 Poplar
`
`Avenue, Suite 2412, Memphis, Tennessee 38137 in July of 2015.
`
`4.
`
`I did not receive actual noti