Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1096413
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`ESTTA Tracking number:
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`Filing date:
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`11/19/2020
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`Proceeding
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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 email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`92066859
`
`Plaintiff
`Vans, Inc.
`
`CHRISTOPHER B LAY
`IPHORGAN LTD
`195 ARLINGTON HEIGHTS ROAD, SUITE 125
`BUFFALO GROVE, IL 60089
`UNITED STATES
`Primary Email: mail@iphorgan.com
`Secondary Email(s): clay@iphorgan.net, iplaw@iphorgan.com,
`jbathke@iphorgan.com
`847-808-5500
`
`Other Motions/Submissions
`
`Christopher B. Lay
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`clay@iphorgan.com, mail@iphorgan.com
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`/Christopher B. Lay/
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`11/19/2020
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`Petitioner Vans Paper Relating to Registrant Motion to Suspend - as f
`iled.pdf(193191 bytes )
`Motion to Stay - as filed in CD California.pdf(377477 bytes )
`Declaration of Nicholas J. Hoffman - as filed in CD California.pdf(176937 bytes )
`Declaration of Christopher B. Lay - as filed in CD California.pdf(473166 bytes )
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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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`Vans, Inc.
`Petitioner,
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`v.
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`Branded LLC
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`Registrant.
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`)
`)
`) Cancellation No. 92066859 (parent)
`) Cancellation No. 92066871
`) Cancellation No. 92066876
`)
`)
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`PETITIONER VANS, INC.’S PAPER RELATING TO
`REGISTRANT BRANDED LLC’S MOTION TO SUSPEND
`
`Petitioner Vans, Inc., files this paper to inform the Board that on November 16, 2020,
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`
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`Vans filed in the United States District Court for the Central District of California, Case Number
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`8:20-cv-02085-JVS-KES, a Motion to Stay Pending Proceedings in the Trademark Trial and
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`Appeal Board. Attached herein are the Motion and declarations in support of the Motion. That
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`civil action is the subject of Branded LLC’s Motion to Suspend Pending Resolution of Civil
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`Action, 50 TTABVUE.
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`Date: November 19, 2020
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`Respectfully submitted,
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`/Christopher B. Lay/__________
`Christopher B. Lay
`John T. D. Bathke
`IPHORGAN LTD
`195 Arlington Heights Rd.
`Suite 125
`Buffalo Grove, IL 60089
`Telephone: (847) 808-5500
`Fax: (847) 808-7238
`clay@iphorgan.net; jbathke@iphorgan.com
`
`Attorneys for Petitioner,
`Vans, Inc.
`
`
`
`

`

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`The undersigned hereby certifies that a true and correct copy of PETITIONER VANS,
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`INC.’S PAPER RELATING TO REGISTRANT BRANDED LLC’S MOTION TO SUSPEND
`and attached Documents were served this 19th Day of November, 2020, by email on the
`following Attorney of Record for Registrant:
`
`Jeffrey M. Furr
`Furr Law Firm
`2622 Debolt Road
`Utica, OH 43080
`Tel.: (740) 817-2381
`Fax: (740) 892-2118
`jeffmfurr@furrlawfirm.com
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`CERTIFICATE OF SERVICE
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` By: /Christopher B. Lay/__________
`Christopher B. Lay
`IPHORGAN LTD
`195 Arlington Heights Rd.
`Suite 125
`Buffalo Grove, IL 60089
`Telephone: (847) 808-5500
`Fax: (847) 808-7238
`clay@iphorgan.net
`
`Attorney for Petitioner,
`Vans, Inc.
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`2
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 1 of 21 Page ID #:57
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`
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`MCGUIREWOODS LLP
`Tanya L. Greene (State Bar No. 267975)
`tgreene@mcguirewoods.com
`Nicholas J. Hoffman (State Bar No. 284472)
`nhoffman@mcguirewoods.com
`Wells Fargo Center – South Tower
`355 South Grand Ave., Suite 4200
`Los Angeles, CA 90071-3103
`Telephone: (213) 627-2268
`Facsimile: (213) 627-2579
`
`MCGUIREWOODS LLP
`Lucy Jewett Wheatley (Pro Hac Vice Application forthcoming)
`lwheatley@mcguirewoods.com
`Gateway Plaza
`800 East Canal Street
`Richmond, VA 23219-3916
`Telephone: (804) 775-4320
`Facsimile: (804) 698-2017
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`Attorneys for Defendant Vans, Inc.
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`BRANDED LLC,
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`Plaintiff,
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`Defendant.
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`vs.
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`VANS, INC.,
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` Case No. 8:20-cv-02085
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`(Hon. James V. Selna)
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`DEFENDANT VANS, INC.’S
`NOTICE OF MOTION AND
`MOTION TO STAY CASE PENDING
`PROCEEDINGS IN THE
`TRADEMARK TRIAL AND
`APPEAL BOARD; MEMORANDUM
`OF POINTS AND AUTHORITIES
`
`Date: December 14, 2020
`Time: 1:30 p.m.
`Court: 10C
`
`Complaint Filed:
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`
` [Declaration of Nicholas J. Hoffman
`and exhibits thereto, Declaration of
`Christopher B. Lay, and [Proposed]
`Order filed concurrently herewith]
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`10/28/2020
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`
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`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 2 of 21 Page ID #:58
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`TO THE COURT, THE PARTIES, AND THEIR COUNSEL:
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`PLEASE TAKE NOTICE that, on December 14, 2020, at 1:30 p.m., or as soon
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`thereafter as the parties may be heard, before the Honorable James V. Selna, United
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`States District Judge, for the Central District of California, in Courtroom 10c of the
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`United States Courthouse, 411 West 4th Street, Santa Ana, California 92701,
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`Defendant Vans, Inc. (“Defendant” or “Vans”), by and through its undersigned
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`counsel, will and hereby moves this Court to stay this action until after the Trademark
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`Trial and Appeal Board (“TTAB”) renders a final decision in the action styled Vans,
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`Inc. v. Branded LLC, Cancellation No. 92066859 (petition for cancellation filed
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`September 12, 2017). The TTAB proceeding involves the same two parties and the
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`same trademark registrations asserted by Plaintiff Branded LLC (“Branded” or
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`“Plaintiff”) in this action. In addition, the TTAB proceeding has been underway for
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`over three years and the trial period is ongoing, the TTAB recently ordered a partial
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`grant of summary judgment cancelling pertinent portions of the OLD SCHOOL
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`registrations Branded now asserts in this action, and a final determination by the
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`TTAB on Vans’ abandonment claims would likely have preclusive effect on all of
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`Branded’s claims in this action.
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`This Motion is based upon this Notice of Motion, the accompanying
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`Memorandum of Points and Authorities, the Declaration of Nicholas J. Hoffman (and
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`exhibits thereto), the Declaration of Christopher B. Lay, and the [Proposed] Order
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`filed concurrently herewith, as well as all pleadings and papers on file in this action,
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`and any oral argument or documentary matters as may be presented to the Court at or
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`before the hearing on this Motion.
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`This motion is made following the conference of counsel pursuant to Local
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`Rule 7-3, which took place on November 9, 2020. Branded’s counsel declined to
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`consent to Vans’ motion to stay this action.
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`However, Branded’s counsel consented to Vans’ additional request for an order
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`extending Vans’ time to respond to the complaint in this action until 14 days after
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`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 3 of 21 Page ID #:59
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`either (a) the resumption of this action if the motion to stay is granted or (b) the
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`Court’s order denying Vans’ motion to stay this action.
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`DATED: November 16, 2020
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`MCGUIREWOODS LLP
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`By:
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`/s/ Tanya L. Greene
`Tanya L. Greene
`Nicholas J. Hoffman
`Attorneys for Defendant Vans, Inc.
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`-3-
`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 4 of 21 Page ID #:60
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`
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................ 1
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`FACTUAL AND PROCEDURAL BACKGROUND ..................................... 2
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`A.
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`B.
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`C.
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`Branded’s Action in this Court .............................................................. 2
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`The TTAB Proceeding ........................................................................... 3
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`Conference of Counsel Pursuant to Local Rule 7-3 .............................. 5
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`III. LEGAL STANDARD ...................................................................................... 6
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`IV. ARGUMENT ................................................................................................... 7
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`A. A Stay Would Promote the Orderly Course of Justice .......................... 7
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`B.
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`C.
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`D.
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`No Party Would Be Damaged By a Stay ............................................... 9
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`Vans Would Suffer Harm and Inequity if a Stay is Not Granted ........ 12
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`In any Event, Vans Requests an Extension to Respond ...................... 13
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`V.
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`CONCLUSION .............................................................................................. 13
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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 5 of 21 Page ID #:61
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`
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`Federal Cases
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Applied Materials Inc. v. Semiconductor Spares, Inc.,
`1995 WL 261451 (N.D. Cal. April 26, 1995) .................................................... 13
`
`B & B Hardware, Inc. v. Hargis Indus., Inc.,
`575 U.S. 138, 135 S. Ct. 1293 (2015) .............................................................. 5, 8
`
`Citicasters Co. v. Country Club Commc'ns,
`44 U.S.P.Q.2d 1223, 1997 WL 715034 (C.D. Cal. July 21, 1997) .................. 6, 9
`
`CMAX, Inc. v. Hall,
`300 F.2d 265 (9th Cir. 1962) .................................................................. 6, 7, 9, 12
`
`Fujitsu Ltd. v. Nanya Technology Corp.,
`2007 WL 484789 (N.D. Cal. Feb. 9, 2007) ........................................................ 13
`
`General Cigar Co., Inc. v. G.D.M. Inc.,
`988 F. Supp. 647 (S.D.N.Y. 1997) ....................................................................... 8
`
`Karl Storz Endoscopy Am., Inc. v. Surgical Techs., Inc.,
`285 F.3d 848 (9th Cir. 2002) .............................................................................. 11
`
`Landis v. N. Am. Co.,
`299 U.S. 248 (1936) ............................................................................................. 6
`
`Leyva v. Certified Grocers of California, Ltd.,
`593 F.2d 857 (9th Cir. 1979) ................................................................................ 6
`
`Lodestar Anstalt v. Bacardi & Co., No. 16-06411 GHK,
`2016 WL 7635955 (C.D. Cal. Nov. 16, 2016) ................................. 6, 7, 9, 11, 12
`
`Lydo Enters., Inc. v. City of Las Vegas,
`745 F.2d 1211 (9th Cir. 1984) ............................................................................ 11
`
`Nat. Answers, Inc. v. SmithKline Beecham Corp.,
`529 F.3d 1325 (11th Cir. 2008) ............................................................................ 8
`
`Purecircle USA Inc. v. SweeGen, Inc.,
`No. 18-1679, 2019 WL 3220021 (C.D. Cal. June 3, 2019) (J. Selna) ................. 6
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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 6 of 21 Page ID #:62
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`Rivers v. Walt Disney Co.,
`980 F. Supp. 1358 (C.D. Cal. 1997) ..................................................................... 6
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`Shipley v. U.S.,
`608 F.2d 770 (9th Cir. 1979) ................................................................................ 6
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`Specht v. Google Inc.,
`747 F.3d 929 (7th Cir. 2014), cert. denied, 135 S. Ct. 724, 190 L.
`Ed. 2d 442 (2014) ................................................................................................. 8
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`Tigercat Int’l, Inc. v. Caterpillar Inc.,
`127 U.S.P.Q. 2d 1132 (D. Del. May 2, 2018) .............................................. 12, 13
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`V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas LLC,
`No. 14-02961 ........................................................................................................ 6
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`Federal Statutes
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`15 U.S.C. § 1104(1) ................................................................................................... 9
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`U.S. Lanham Act ............................................................................................... 2, 8, 9
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`Rules
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`Local Rule 7-3 ........................................................................................................... 5
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`Local Rule 8-3 ........................................................................................................... 3
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`-6-
`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 7 of 21 Page ID #:63
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
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`INTRODUCTION
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`Defendant Vans, Inc. (“Defendant” or “Vans”), by and through its undersigned
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`counsel, hereby moves this Court to stay this action until after the U.S. Patent and
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`Trademark Office's Trademark Trial and Appeal Board (“TTAB”) renders a final
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`determination on the trial currently underway in the proceeding styled Vans, Inc. v.
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`Branded LLC, Cancellation No. 92066859, which was filed September 12, 2017. (the
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`“TTAB Proceeding”).1
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`Both the TTAB Proceeding and this action involve the same trademark
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`registrations and same dispositive issues. In both actions, Plaintiff Branded LLC
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`(“Branded” or “Plaintiff”) alleges it owns registrations in the mark OLD SCHOOL.
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`Meanwhile, Vans alleges in the TTAB Proceeding (and would allege in this action)
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`that Branded abandoned its asserted marks and therefore Branded’s registrations for
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`the mark OLD SCHOOL should be cancelled.
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`While this action is just beginning, the TTAB Proceeding has been ongoing and
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`actively litigated for over three years. The parties engaged in significant discovery,
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`including depositions taken by both sides. Recently, the TTAB granted partial
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`summary judgment cancelling pertinent portions of the same OLD SCHOOL
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`registrations Branded asserts in this action. Now the TTAB Proceeding is in the
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`middle of the trial period, and the trial concerns the few remaining portions of
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`Branded’s registrations. Following trial, the TTAB will likely cancel Branded’s OLD
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`SCHOOL registrations in whole as a result of abandonment, which would preclude
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`Branded’s trademark infringement claims here.
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`As the TTAB has specialized knowledge in this type of matter, it makes little
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`sense for this Court to expend judicial resources on this action, because the issues may
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`1 The TTAB Proceeding includes Cancellation No. 92066859, which is the parent
`case, as well as Cancellation Nos. 92066871 and 92066876.
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`
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`-1-
`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 8 of 21 Page ID #:64
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`be resolved in the context of the trial already underway in the TTAB Proceeding. The
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`TTAB’s final determination following the trial (along with its recent grant of partial
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`summary judgment) would at the very least be instructive, if not dispositive, on the
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`legal issues before this Court. Therefore, the stay of this action would eliminate
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`duplication of efforts and preserve the resources of the Court and the parties.
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`Vans also requests an order extending Vans’ time to respond to the complaint
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`in this action until 14 days after either (a) the resumption of this action if the motion
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`to stay is granted or (b) the Court’s order denying Vans’ motion to stay this action.
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`Branded has stipulated to the requested extension.
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`II.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`A. Branded’s Action in this Court
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`On October 28, 2020, Branded filed its complaint for trademark infringement,
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`false designation of origin, and unfair competition in violation of the U.S. Lanham
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`Act and California state law (“Complaint”). In the Complaint, Plaintiff alleges it is
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`the owner of the following marks:
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`• U.S. Trademark Registration No. 1387606 for OLD SCHOOL in
`international class 25 for “Men’s and Ladies’ shirts.” [Complaint ¶7.]
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`• U.S. Trademark Registration No. 1915132 for OLD SCHOOL in
`international class 25 for “men’s and ladies’ clothing, namely jackets,
`raincoats, trousers, suits, sport coats, socks, sweaters, jeans, blazers,
`scarves, neckties, pajamas, swimwear, shorts, shoes, belts, and skirts.”
`[Complaint ¶8.]
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`Branded further alleges that Vans’ use of the mark OLD SKOOL in connection
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`with “clothing, shoes and other goods” is likely to result in consumer confusion and
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`therefore constitutes trademark infringement, false designation of origin, and unfair
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`competition. [Complaint ¶¶20, 29, 30.]
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`Branded served Vans with the Summons and Complaint in this action on
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`November 4, 2020. Because there have been no previous extensions of the deadline
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`for Vans to respond to the Complaint, the parties stipulated to a 14-day extension of
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`-2-
`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 9 of 21 Page ID #:65
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`time to answer pursuant to Local Rule 8-3 following either the resumption of this case
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`following the stay or the Court’s denial of Vans’ motion. Accordingly, this action is
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`at the beginning stages and no discovery has been taken.
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`B.
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`The TTAB Proceeding
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`Branded’s claims in this action are premised on Branded’s ownership of viable
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`registrations for the OLD SCHOOL mark and/or a finding that Branded has not lost
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`its common law rights through abandonment. These very issues have been litigated
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`in the TTAB Proceeding for the past three years. On September 12, 2017, Vans
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`commenced the TTAB Proceeding by filing three cancellation actions:
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`• Cancellation No. 92066859, which seeks cancellation of OLD
`SCHOOL, Registration No. 1915132;
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`• Cancellation No. 92066876, seeking cancellation of OLD SCHOOL,
`Registration No. 1387606; and
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`• Cancellation No. 92066871, seeking cancellation of OLD SCHOOL
`CLOTHING CO., Registration No. 1570438.
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`These three cancellation actions were consolidated under the parent case,
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`Cancellation No. 92066859. Vans requested cancellation of Branded’s registrations
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`based on a number of claims, including: Abandonment through non-use and intention
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`not to resume use; Partial abandonment in the alternative as to some, but not all,
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`identified goods; Fraud; Abandonment/Non-ownership owing to invalid assignment
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`in gross; Abandonment/Non-ownership owing to invalid second assignment; and
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`Abandonment through uncontrolled licensing. [Hoffman Decl., Ex. E.]
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`The parties engaged in discovery including interrogatories and document
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`requests served by both parties and multiple depositions taken by each side. [Lay
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`Decl., ¶¶8-12.] Discovery closed two years ago. [Id. at ¶ 13.] During discovery,
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`Branded failed to produce a single document showing actual use of its asserted
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`trademarks at any time between 2008 or 2009 (when it acquired the purported rights)
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`and the present. [Id. at ¶ 9.] In fact, Branded did not produce any documents at all.
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`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 10 of 21 Page ID #:66
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`[Id.] The deposition testimony demonstrated that, to the extent Branded did use the
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`asserted marks to sell a few categories of goods (if it did at all), Branded did so
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`through a naked license to an individual named Scott Kuhlman which would result in
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`an abandonment through naked licensing. [Deposition of Scott Kuhlman (Hoffman
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`Decl., Ex. H) at 105:21-106:23, 108:18-20, 116:14-19, 117:17-19, 123:17-25, 127:6-
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`13, 131:11-21.]
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`Also of note, Branded’s owner Keith Johnston admitted under oath he was
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`aware of Vans’ use of the mark OLD SKOOL since 2008, and believed that through
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`use of this mark Vans was infringing Branded’s OLD SCHOOL marks. Still, Branded
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`never sent Vans a cease and desist letter nor filed any claims against Vans for over a
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`decade. [Deposition of Keith E. Johnston (Hoffman Decl., Ex G) at 88:18-90:5.]
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`Despite knowing about Vans’ use of OLD SKOOL since 2008, the first time Branded
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`alleged likelihood of confusion against Vans was when Branded filed its Complaint
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`in this action, on October 28, 2020.
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`Vans filed two motions for summary judgment in the TTAB Proceeding. As a
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`result of the first motion, which Vans filed on September 4, 2018, the TTAB ruled
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`that OLD SCHOOL CLOTHING CO. was abandoned as a matter of law and granted
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`Vans’ summary judgment motion as to Cancellation No. 92066871. [Hoffman Decl.,
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`Ex. D.] With respect to the second motion, which Vans filed on July 31, 2019, the
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`TTAB granted summary judgment on Vans’ claim of partial nonuse abandonment “as
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`to ladies’ shirts (Reg. No. 1387606) and swimwear, shoes, skirts, and pajamas (Reg.
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`No. 1915132).” [Id. at Ex. F.]
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`After the TTAB’s second summary judgment order, the TTAB Proceeding
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`continued to trial with respect to the remaining goods in Registration Nos. 1387606
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`and 1915132. In the TTAB trial, the parties are litigating Vans’ multiple theories of
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`abandonment and whether Branded LLC has abandoned any remaining purported
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`rights in the OLD SCHOOL marks. Currently, the TTAB Proceeding is in the middle
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`of the trial period—Vans’s trial period ended on October 10, 2020, Branded’s trial
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`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 11 of 21 Page ID #:67
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`period is currently scheduled to end on December 9, 2020, and Vans’ rebuttal period
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`is scheduled to end January 23, 2021. After the trial period, the parties will submit
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`their trial briefs and await a determination from the TTAB.2
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`On November 4, 2020, just a few days after filing the Complaint in this action,
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`Branded moved to suspend the TTAB Proceeding pending disposition of this action.
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`Vans has opposed Branded’s motion to suspend the TTAB Proceeding. [Hoffman
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`Decl., Ex. J.] On November 9, 2020, rather than granting Branded’s motion to
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`suspend the TTAB Proceeding, the TTAB filed an order indicating it is actively
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`working to decide a motion relating to trial evidence. [Id. at Ex. K.]3
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`C. Conference of Counsel Pursuant to Local Rule 7-3
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`This motion is made following the conference of counsel pursuant to Local
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`Rule 7-3, which took place on November 9, 2020. [Hoffman Decl., ¶14.] During the
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`conference, Branded’s counsel declined to consent to Vans’ motion to stay this action.
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`However, Branded’s counsel consented to Vans’ additional request for an order
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`extending Vans’ time to respond to the complaint in this action until 14 days after
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`either (a) the resumption of this action if the motion to stay is granted or (b) the
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`Court’s order denying Vans’ motion to stay this action.
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`2 The Supreme Court has recognized that proceedings before the TTAB are “in many
`ways similar to a civil action in a federal district court.” B & B Hardware, Inc. v.
`Hargis Indus., Inc., 575 U.S. 138, 143, 135 S. Ct. 1293, 1300 (2015). The main
`difference is that the trial is conducted through a written record. Id.
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`3 Even if the TTAB were to suspend the TTAB Proceeding during the pendency of
`this motion, the TTAB’s decision should have no bearing on the merits of this motion
`since the TTAB would restart the proceeding. See TBMP § 510.02(a) (“Suspension
`of a Board proceeding pending the final determination of another proceeding is solely
`within the discretion of the Board . . . However, if, as sometimes happens, the court
`before which a civil action is pending elects to suspend the civil action to await
`determination of the Board proceeding and the Board is so advised, the Board will go
`forward with its proceeding.”).
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`DEFENDANT’S MOTION TO STAY CASE
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`

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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 12 of 21 Page ID #:68
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`III. LEGAL STANDARD
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`Federal courts have the inherent authority to manage their dockets and to stay
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`proceedings before them. Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936); CMAX,
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`Inc. v. Hall, 300 F.2d 265, 268 (9th Cir. 1962) (citing Landis, 299 U.S. at 254-55);
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`Rivers v. Walt Disney Co., 980 F. Supp. 1358, 1360 (C.D. Cal. 1997). A stay pending
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`the outcome of an administrative proceeding that might render the relief sought in
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`district court unnecessary is a proper exercise of the Court’s discretion in controlling
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`the disposition of cases on its docket and avoiding unnecessary duplication of judicial
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`machinery. Shipley v. U.S., 608 F.2d 770, 775 (9th Cir. 1979).
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`Courts in this Circuit have exercised their discretion to stay trademark
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`infringement and unfair competition actions pending the disposition of the same or
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`similar issues in a TTAB proceeding. See, e.g., Lodestar Anstalt v. Bacardi & Co.,
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`No. 16-06411 GHK, 2016 WL 7635955, at *5 (C.D. Cal. Nov. 16, 2016) (granting
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`stay to await TTAB decision); Citicasters Co. v. Country Club Commc'ns, 44
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`U.S.P.Q.2d 1223, 1997 WL 715034, at *2 (C.D. Cal. July 21, 1997) (granting stay
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`“because of the efficiencies generated by the TTAB first addressing the issues
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`involved” in the matter); V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas LLC,
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`No. 14-02961 TLN(CKD), 2016 WL 1268008, at *4-6 (E.D. Cal. Mar. 31, 2016)
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`(granting stay of trademark infringement, dilution, and unfair competition action in
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`favor of the determination in a TTAB proceeding and appeal therefrom).4
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`“A trial court may, with propriety, find it is efficient for its own docket and the
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`fairest course for the parties to enter a stay of an action before it, pending resolution
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`of independent proceedings which bear upon the case.” Lodestar Anstalt, 2016 WL
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`7635955, *2 (quoting Leyva v. Certified Grocers of California, Ltd., 593 F.2d 857,
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`4 See also Purecircle USA Inc. v. SweeGen, Inc., No. 18-1679, 2019 WL 3220021, at
`*1 (C.D. Cal. June 3, 2019) (J. Selna) (granting stay of patent infringement case
`pending final decision from U.S. Patent Trial and Appeal Board (PTAB) on inter
`partes review petition which challenged every claim of the patent-in-suit).
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`DEFENDANT’S MOTION TO STAY CASE
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`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 13 of 21 Page ID #:69
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`863 (9th Cir. 1979). Such discretion is appropriately invoked when the resolution of
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`the other matter will have a direct impact on the issues before the court, substantially
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`simplifying issues presented. Lodestar Anstalt, 2016 WL 7635955, at *3 (finding that
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`TTAB’s potential cancellation of Lodestar’s registrations would render Lodestar
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`“unable to assert a claim for infringement of a registered trademark” and therefore
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`“simplify [the court’s] task and minimize the risk of inconsistent judgments”).
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`In CMAX, the Ninth Circuit set forth the three competing interests that a court
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`must weigh when deciding whether to grant a stay: (1) “the orderly course of justice
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`measured in terms of the simplifying or complicating of issues, proof, and questions
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`of law which could be expected to result from a stay”; (2) “the possible damage which
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`may result from the granting of a stay”; and (3) “the hardship or inequity which a
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`party may suffer in being required to go forward.” CMAX, 300 F.2d at 268; see also
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`Lodestar Anstalt, 2016 WL 7635955, at *2. In the present case, each factor weighs
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`in favor of granting a stay.
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`IV. ARGUMENT
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`A. A Stay Would Promote the Orderly Course of Justice
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`In this case, there can be little question that a stay would promote “the orderly
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`course of justice measured in terms of the simplifying or complicating of issues, proof,
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`and questions of law.” CMAX, 300 F.2d at 268.
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`The TTAB already granted partial summary judgment finding partial nonuse
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`abandonment and cancelling certain goods in Branded’s Registration Nos. 1387606
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`and 1915132. These canceled goods include, for example, shoes, which Branded
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`specifically lists as one of Vans’ allegedly infringing goods in the Complaint.
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`[Complaint ¶20.] Meanwhile, the parties are currently mid-trial on the remaining
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`goods for those same registrations, and the TTAB may cancel the two registrations in
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`whole following the trial.
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`Branded’s ownership of Registration Nos. 1387606 and 1915132 is central to
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`the present case. Branded’s federal trademark infringement claim in this action
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`DEFENDANT’S MOTION TO STAY CASE
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`

`

`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 14 of 21 Page ID #:70
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`(brought under the Lanham Act) are premised on Branded’s ownership of those same
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`registrations, which is a necessary prerequisite before reaching the question of
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`likelihood of confusion. If forced to proceed, Vans would counterclaim in this action
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`using the same claims it is already pursuing in the TTAB Proceeding, including the
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`facts that Branded’s trademark rights were abandoned through nonuse and
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`uncontrolled licensing.
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`Judicial efficiency will be greatly served by allowing the TTAB to issue its
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`final decision. At a minimum, the TTAB has already streamlined the issues in this
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`action by its orders on Vans’ motions for summary judgment, and the TTAB should
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`be provided an opportunity to include those orders in its final determination.
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`Moreover, if Vans prevails in the pending TTAB trial, Branded will be unable to
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`prevail on its claims in this action that are premised upon its two registrations for OLD
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`SCHOOL. As recognized by the U.S. Supreme Court, the TTAB’s determination of
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`trademark rights has a preclusive effect on subsequent trademark infringement claims,
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`such that the TTAB’s determination in favor of Vans would dispose of Branded’s
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`claims related to the two trademark registrations. See B & B Hardware, 575 U.S. at
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`160, 135 S. Ct. at 1310 (noting that the governing standards for trademark registration
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`and infringement are the same, and holding that “when the usages adjudicated by the
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`TTAB are materially the same as those before the district court, issue preclusion
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`should apply.”).5
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`5 The TTAB’s decision as to whether Branded has abandoned its OLD SCHOOL
`marks would likely also preclude Branded’s claims based on common law rights,
`since “a party that is found to have abandoned its mark is deprived of any claim to
`priority in the mark before the date of abandonment.” General Cigar Co., Inc. v.
`G.D.M. Inc., 988 F. Supp. 647, 658 (S.D.N.Y. 1997); Specht v. Google Inc., 747 F.3d
`929, 935 (7th Cir. 2014), cert. denied, 135 S. Ct. 724, 190 L. Ed. 2d 442 (2014)
`(affirming dismissal of unfair competition and common law trademark violations;
`holding that due to prior user’s abandonment, Google could not be liable for use of
`the Android mark). In other words, a TTAB finding of abandonment (which would
`have preclusive effect) would cut off all of Branded’s claims.
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`DEFENDANT’S MOTION TO STAY CASE
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`

`

`Case 8:20-cv-02085-JVS-KES Document 14 Filed 11/16/20 Page 15 of 21 Page ID #:71
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`For this reason, the court in Lodestar Anstalt recognized that staying the federal
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`case was the “most efficient solution” in