Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1115384
`02/18/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`92076425
`
`Defendant
`M&T Bank
`
`M&T BANK
`2003 SOUTH EASTON ROAD
`SUITE 204
`DOYLESTOWN, PA 18901
`UNITED STATES
`Primary Email: trademarkdocketchica@us.dlapiper.com
`No phone number provided.
`
`Motion to Suspend for Civil Action
`
`Michael Geller
`
`michael.geller@dlapiper.com, ch.tm@dlapiper.com
`
`/Michael Geller/
`
`02/18/2021
`
`Attachments
`
`Airofog v BandG - Motion for Suspension 240.pdf(5841726 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Reg. No. 3,210,240
`
`In re:
`Sprayer Design
`Mark:
`April 19, 2005
`Filed:
`Registered: February 20, 2007
`
`AIROFOG USA, LLC,
`
`Petitioner,
`
`
`
` v.
`
`
`
`M&T BANK,
`
`Respondent.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No.: 92076425
`
`MOTION FOR SUSPENSION
`
`Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), B&G Equipment Company
`
`(“B&G”), the owner of Registration No. 3,210,240 (the “Registration”), requests immediate
`
`suspension of the above-captioned proceeding (the “Cancellation”).
`
`A.
`
`The Registration is Owned by B&G Equipment Company.
`
`At the outset, B&G notes that the Petition to Cancel filed by Airofog USA, LLC
`
`(“Petitioner”) was filed against M&T Bank. B&G, not M&T Bank, is the owner of the
`
`Registration.
`
`In 2013, B&G entered into a Loan Agreement (the “Loan Agreement”) with M&T Bank.
`
`As part of the Loan Agreement, the parties intended to record a Security Agreement with the
`
`U.S. Patent and Trademark Office (the “USPTO”). However, counsel for M&T Bank recorded a
`
`Trademark Assignment in error on January 8, 2014. This caused M&T Bank to be listed as the
`
`owner of the Registration in the USPTO “TSDR” database (the “TSDR Database”). Counsel for
`
`M&T Bank thereafter recorded a Corrective Assignment/Security Agreement to correct the error
`1
`
`EAST\114747473. 1
`
`

`

`on September 30, 2014. A copy of the Corrective Assignment/Security Agreement is attached
`
`hereto as Exhibit A. The Corrective Assignment/Security Agreement plainly identifies B&G as
`
`the owner of all rights, title, and interest in and to the Registration.
`
`The TSDR Database did not automatically update the Registration’s ownership
`
`information after the Corrective Assignment/Security Agreement was filed, and B&G, therefore,
`
`filed a Section 7 request to update the TSDR Database. A copy of the Section 7 request filed by
`
`B&G with regard to the Registration is attached as Exhibit B.
`
`B.
`
`Suspension is Proper.
`
`On February 15, 2019, B&G filed a complaint in federal court in the Middle District of
`
`Florida against Petitioner, captioned B&G Equipment Company v. Airofog USA, LLC, Case No.
`
`8:19-cv-00430-CEH-AEP (the “Florida Litigation”). The Florida Litigation alleges claims for,
`
`inter alia, trademark infringement, false designation of origin, unfair competition, violations of
`
`the Florida Deceptive and Unfair Trade Practices Act, and unjust enrichment. B&G’s trademark
`
`infringement and unfair competition claims in the Florida Litigation center around Petitioner’s
`
`unauthorized use of the trademark/trade dress depicted in the Registration. Pursuant to TBMP §
`
`510.02(a), B&G attaches a copy of the file-stamped complaint in the Florida Litigation as
`
`Exhibit C.
`
`On March 19, 2019, Petitioner filed its Answer in the Florida Litigation, claiming that the
`
`Registration is invalid as “functional, generic, not inherently distinctive, ubiquitous, and [] not
`
`[having] acquired secondary meaning.” Answer and Counterclaim, B&G Equipment Company v.
`
`Airofog USA, LLC, Case No. 8:19-cv-00430-CEH-AEP, p. 13-14 (Mar. 19, 2019). A copy of
`
`Petitioner’s Answer and Counterclaim in the Litigation is attached as Exhibit D.
`
`38077400.11
`
`2
`
`

`

`The Trademark Trial and Appeal Board (“TTAB”) may suspend a proceeding when the
`
`parties “are involved in a civil action that may have a bearing on the Board case.” TBMP §
`
`510.02(a). The Board will suspend the proceeding absent “unusual circumstances” if the
`
`proceeding “may have a bearing on the issues before the board.” TBMP § 510.02(a). The Board
`
`policy is to favor suspension, even where the civil action involves matters outside the Board’s
`
`jurisdiction. TBMP § 510.02(a).
`
`The Florida Litigation involves Petitioner and B&G, the owner of the Registration which
`
`Petitioner seeks to cancel. In Florida Litigation, B&G alleges that Petitioner infringed the mark
`
`covered by the Registration, and Petitioner asserted a defense that the Registration is invalid.
`
`Thus, the Florida Litigation and issues in it bear directly and substantially on this cancellation
`
`action against the Registration.
`
`Therefore, B&G requests suspension of this cancellation action until a final determination
`
`of the Florida Litigation, as well as any and all appeals.
`
`Dated: February 18, 2021
`
`
`
`Respectfully submitted,
`
`B&G EQUIPMENT COMPANY
`
`By:_/s/ Michael Geller
`Michael A. Geller
`DLA PIPER LLP (US)
`michael.geller@dlapiper.com
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606-0089
`Telephone:
` 312.368.4000
`Facsimile:
` 312.251.2187
`
`Attorneys for B&G Equipment Co.
`
`38077400.11
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of this MOTION FOR SUSPENSION is being sent via
`courier, addressed to the correspondent of record:
`
`SUSAN J LATHAM
`FELDMAN & LATHAM, LLP D/B/A TRAILBLAZER
`1200 BRICKELL AVENUE, PENTHOUSE 1900
`MIAMI, FL 33131
`UNITED STATES
`slatham@trailblazerlaw.com; jfeldman@trailblazerlaw.com;
`lnguyen@trailblazerlaw.com; icervantes@trailblazerlaw.com; tm@trailblazerlaw.com
`
`/s/ Michael Geller
`Signature
`
`Michael Geller
`Name
`
`February 18, 2021
`Date of Signature
`
`38077400.11
`
`4
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`900302564
`
`09/30/201 4
`
`TRADEMARK ASSIGNMENT COVER SHEET
`
`Electronic Version v1.1
`
`Stylesheet Version v1.2
`
`ETAS ID: TM318407
`
`SUBMISSION TYPE:
`
`CORRECTIVE ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`Corrective Assignment to correct the Nature of the Conveyance from
`ASSIGNMENT OF THE ENTIRE INTEREST to a SECURITY INTEREST
`
`previously recorded on Reel 005189 Frame 0074. Assignor(s) hereby
`confirms the a continuing security interest in all of Assignor's right, title and
`interest in the Acquired Trademarks.
`
`CONVEYING PARTY DATA
`
`B&G Equipment Company
`(f/k/a B&G Acq. Corp.)
`
`RECEIVING PARTY DATA
`
`09/18/2014
`
`CORPORATION: DELAWARE
`
`_
`
`0828504
`
`OP$115.00
`
`PROPERTY NUMBERS Total: 4
`
`—_
`
`———
`
`CORRESPONDENCE DATA
`
`Fax Number:
`
`2156653165
`
`Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent
`using a fax number, if provided; if that is unsuccessful, it will be sent Via US Mail.
`Phone:
`215-665-3217
`
`Email:
`
`joseph.aceto@obermayer.com
`
`Correspondent Name:
`Address Line 1:
`
`Joseph F. Aceto Ph.D., Esq.
`1617 JFK Blvd.
`
`Address Line 2:
`
`19th Floor
`
`Address Line 4:
`
`Philadelphia, PENNSYLVANIA 19103
`
`ATTORNEY DOCKET NUMBER:
`
`OBY 97 M&T CORRECTIVEACT
`
`NAME OF SUBMITTER:
`
`Joseph F. Aceto
`
`_ A I
`
`‘
`
`A _
`
`900302564
`
`REEL: 005371 FRAME: 0079
`
`

`

`SIGNATURE:
`
`/Joseph F. Aceto/
`
`DATE SIGNED:
`
`09/30/2014
`
`Total Attachments: 12
`
`source=assignment-tm-5189-0074#page1.tif
`
`source=assignment-tm-5189-0074#page2.tif
`
`source=assignment-tm-5189-0074#page3.tif
`
`source=assignment-tm-5189-0074#page4.tif
`
`source=assignment-tm-5189-0074#page5.tif
`
`source=assignment-tm-5189-0074#page6.tif
`
`source=CORRECTIVE ASSIGNMENT_20140929090353#page6.tif
`
`source=CORRECTIVE ASSIGNMENT_20140929090353#page1.tif
`
`source=CORRECTIVE ASSIGNMENT_20140929090353#page2.tif
`
`source=CORRECTIVE ASSIGNMENT_20140929090353#page3.tif
`
`source=CORRECTIVE ASSIGNMENT_20140929090353#page4.tif
`
`source=CORRECTIVE ASSIGNMENT_20140929090353#page5.tif
`
`TRADEMARK
`
`REEL: 005371 FRAME: 0080
`
`

`

`900276644
`
`01/08/201 4
`
`TRADEMARK ASSIGNMENT
`
`Electronic Version v1.1
`
`Stylesheet Version v1.1
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL
`
`CONVEYING PARTY DATA
`
`B&G Equ1pment company’ Inc'If/k/a
`B&G Acq. Corp.)
`
`RECEIVING PARTY DATA
`
`12/20/2013
`
`CORPORATION: DELAWARE
`
`
`
`IName:
`I M&T Bank
`Street Address:
`2003 South Easton Road Suite 204
`
`
`
`Doylestown
`
`State/Country:
`
`PENNSYLVANIA
`
`Postal Code:
`
`18901
`
`IEntity Type:
`
`I chartered bank and trust company: NEW YORK
`
`PROPERTY NUMBERS Total: 4
`
`
`
`I
`
`I
`
`I
`
`<1-
`0
`E
`0°a
`3‘_
`
`2;
`n.
`
`0
`
`
`Property Type Word Mark
`I Registration Number:
`EXTEN DA—BAN
`Registration Number:
`B & G
`
`1113449
`
`Registration Number:
`
`3210240
`
`B&G
`
`
`
`Registration Number:
`3239891
`
`
`CORRESPONDENCE DATA
`
`Fax Number:
`
`2156653165
`
`Correspondence wri/ be sent to the e—mali address first; if that Is unsuccessful, it wri/ be sent
`via US Mail.
`
`Phone:
`
`215—665—3076
`
`Email:
`Correspondent Name:
`
`susan.montella@obermayer.com
`Dominic Liberi, Esq.
`
`Address Line 1:
`
`Address Line 4:
`
`1617 JFK Blvd, 19th Floor
`
`Philadelphia, PENNSYLVANIA 19103
`
`NAME OF SUBMITTER:
`
`Susan M. Montella
`
`900276644
`
`TRADEMARK
`
`REEL: 005189 FRAME: 0074
`TRADEMARK
`
`REEL: 005371 FRAME: 0081
`
`

`

`
`
`‘ Signature:
`
`
`
`lsmm/
`
`‘
`
`Date:
`
`01/08/2014
`
`Total Attachments: 4
`
`source=trademrk assign#page1.tif
`source=trademrk assign#page2.tif
`source=trademrk assign#page3.tif
`
`source=trademrk assign#page4.tif
`
`TRADEMARK
`
`REEL: 005189 FRAME: 0075
`TRADEMARK
`
`REEL: 005371 FRAME: 0082
`
`

`

`CORRECTIVE ASSIGNMENT
`
`THIS CORRECTIVE ASSIGNMENT and grant of security interest (this "Collateral
`Assignment” or “Assignment”) is executed and delivered by B&G Equipment Company, Inc.
`(f/k/a B&G Acq. Corp), a Delaware corporation with a mailing address of 135 Region South Drive,
`Jackson, Georgia 30233 ("Assignor"), in favor of M&T Bank, a New York chartered bank and trust
`company with a mailing address of 2003 South Easton Road, Suite 204, Doylestown, Pennsylvania
`18901 (”Assignee"),
`
`WHEREAS, this Assignment is being executed in connection with that certain Loan
`Agreement, dated as of December 20, 2013, entered into by and between Assignor and Assignee (as
`
`it may be supplemented, restated, superseded, amended or replaced from time to time, the "Loan
`Agreement") and a certain Security Agreement executed by and between Assignor and Assignee, as
`of even date therewith (the “Security Agreement”). Capitalized terms used in this Assignment and
`not defined herein shall have the respective meanings ascribed to such terms in the Loan Agreement;
`and
`
`WHEREAS, pursuant to the Loan Agreement and the Security Agreement, the parties
`intended that Assignor would grant to Assignee a first priority lien and security interest in all of the
`assets of Assignor, including, but not limited to, each Trademark set forth on Schedule A attached
`hereto (the "Trademarks"), free and clear of all liens;
`
`WHEREAS, on or about December 20, 2013, Assignor and Assignee executed a document
`entitled “Trademark Assignment” which the parties intended to assign a security interest in the
`Trademarks from Assignor to Assignee (the “Trademark Assignment”);
`
`WHEREAS, the terms of the Trademark Assignment actually purported to transfer to
`Assignee all right, title and interest in and to the Trademarks, a result that neither Assignor nor
`Assignee intended;
`
`WHEREAS, the Trademark Assignment was recorded with the US. Patent and Trademark
`Office (“USPTO”) at Reel 005189 and Frame 0074;
`
`//
`WHEREAS, Assignor and Assignee now wish to execute this Assignment, which the
`Assignor and Assignee intend to supersede, replace and render moot the Trademark Assignment, so
`as to confirm that no outright assignment or other conveyance of the Trademarks from Assignor to
`Assignee has ever occurred, and to grant a security interest in the Trademarks to Assignee, as the
`parties originally intended.
`
`NOW, THEREFORE, in consideration of the premises and other good and valuable
`consideration, the receipt and sufficiency of which are hereby acknowledged, and intending to be
`legally bound, Assignor hereby agree as follows:
`
`Grant of Security Interest. Further to the Loan Agreement and the Security
`1.
`Agreement, Assignor hereby grants to Assignee a first lien and priority security interest in and to the
`Trademarks together with the following additional rights, each of which shall be granted without
`restriction and free and clear of all liens and encumbrances (the “Security lnteres ”)z
`
`4846207v2
`
`TRADEMARK
`
`REEL: 005371 FRAME: 0083
`
`

`

`(a) all registrations of the Trademarks in any State of the United States and any foreign
`countries and localities;
`
`all trade names, trademarks and trademark registrations hereafter adopted or acquired
`(b)
`and used, including, but not limited to, those which are based upon or derived from the Trademarks;
`
`all extensions, renewals and continuations of the Trademarks and the registrations
`(c)
`referred to in clause (b) above;
`
`((1)
`
`all rights to sue for past, present and future infringements of the Trademarks;
`
`all packaging, labeling, trade names, service marks, logos and trade dress including or
`(e)
`containing the Trademarks, or a representation thereof, or any variation thereof;
`
`all licenses and other agreements under which Assignor is licensor, but only to the
`(f)
`extent that the grant of a security interest therein would not be prohibited by or be a breach of terms
`thereof, and all fees, rents, royalties, proceeds or monies thereunder, relating to the Trademarks and
`the use thereof; and
`
`all goodwill of Assignor’s business connected with, symbolized by or in any way
`(g)
`related to the items set forth in clauses (a) through (g) above.
`
`Further Assurances. Assignor hereby covenants and agrees that it will, at the request
`2.
`of Assignee, and without further consideration, execute and deliver, and will cause its Affiliates,
`agents, directors, officers and employees to execute and deliver, such other instruments and take
`such other action, as may reasonably be necessary to more effectively publish and confirm unto
`Assignee, and its successors and assigns, a first lien and priority security interest in the Trademarks
`and to carry out the purpose and intent of this Collateral Assignment, the Loan Agreement and the
`Security Agreement. Assignee represents, warrants and covenants that, to the extent any right, title
`or interest in the Trademarks were assigned to Assignee by the Trademark Assignment, Assignee
`hereby assigns back to Assignor all such right, title and interest in the Trademarks, and agrees to
`take all actions necessary to secure Assignor’s full and undivided ownership of the Trademarks.
`
`
`No Modification of Representations, Warranties, Rights, Remedies, or Obligations.
`3.
`Assignor, by its execution of this Assignment, hereby acknowledges and agrees that neither the
`representations and warranties nor the rights, remedies or obligations of any party under the Loan
`Agreement or the Security Agreement shall be deemed to be enlarged, modified or altered in any
`way by this instrument and Assignor further reaffirms the effectiveness of all of the referenced
`covenants, representations and warranties.
`
`
`Loan AgEement Incorporated by Reference. The terms of the Loan Agreement
`4.
`(including, without limitation, Assignor’s representations, warranties, covenants, agreements and
`indemnities relating to the Trademarks) are incorporated herein by this reference. Assignor
`acknowledges and agrees that the representations, warranties, covenants, agreements and indemnities
`contained in the Loan Agreement shall not be superseded hereby but shall remain in full force and effect
`
`4846207V2
`
`TRADEMARK
`
`REEL: 005371 FRAME: 0084
`
`

`

`to the full extent provided therein. This Assignment is entered into pursuant to, and is subject to the
`terms and conditions of, the Loan Agreement. In the event of any conflict or inconsistency between the
`terms of the Loan Agreement and the terms hereof, the terms of the Loan Agreement shall govern and
`control.
`
`Termination of Security Interest. Upon complete performance by Assignor of all
`5.
`obligations under the Loan Agreement and filll and indefeasible payment of all Indebtedness under the
`Loan Documents, Assignor shall terminate this Assignment of record with the USPTO and release all
`liens in the Trademarks.
`
`Continuing Obligations. Notwithstanding this Collateral Assignment, Assignor shall
`6.
`continue to protect and preserve the validity and effectiveness of the Trademarks at Assignor’s sole cost
`and expense.
`
`Choice of Law. This Assignment shall be governed by, and all disputes, claims or
`7
`controversies relating to, arising out of, or in connection with this Assignment, including any
`question regarding its formation, existence, validity, enforceability, performance, interpretation,
`breach, or termination, shall be resolved in accordance with the laws of the Commonwealth of
`Pennsylvania without regard to its conflict of laws rules. In the event that a dispute, claim or
`controversy relating to, arising out of, or in connection with this Assignment is not the subject of a
`claim for specific performance pursuant to Section 9.2 of the Loan Agreement or is not otherwise
`arbitrable under the Loan Agreement, such dispute, claim or controversy shall be subject to the
`exclusive jurisdiction of the Pennsylvania courts of the United States District Court for the Eastern
`District of Pennsylvania and no others. The parties hereby consent to the jurisdiction of the above
`designated courts and to the service of process by registered mail, return receipt requested, or by any
`other manner provided by the laws of the Commonwealth of Pennsylvania.
`
`Counterparts. This Assignment may be executed in two or more counterparts, each
`8.
`of which shall for all purposes be deemed an original and all of which shall constitute one and the
`same instrument. Any signature page delivered by a facsimile machine shall be binding to the same
`extent as an original signature page with regard to any agreement subject to the terms hereof or any
`amendment thereto. A party that delivers a signature page in this manner agrees to later deliver an
`original counterpart to the other party.
`
`[SIGNA TURE PA GE FOLLO WS]
`
`4846207V2
`
`TRADEMARK
`
`REEL: 005371 FRAME: 0085
`
`

`

`a J7,»
`
`Witness my hand and seal this iii day of September 2014.
`
`
`
`SS
`
`.
`
`COUNTY OF \
`
`43A (“1’
`
`.
`
`STATE OF Caryn? a,
`t‘
`«:i
`On thisL day Offié/J’Wflf—m 2014, before me, a Notary Public in and
`for the State and County aforesaid, personally appeared Cecil B. Patterson, III, who acknowledged
`himself to be President of B&G Equipment Company, Inc. (f/k/a B&G Acq. Corp), a Delaware
`corporation (the “Company”), and that he as such President, being authorized to do so, executed the
`foregoing instrument for the purposes therein contained by signing the name of the Company by
`himself as such President.
`
`IN WITNESS WHEREOF, I have hereunto set my hand and official seal.
`
`
`
`(iii/i”VL/ro<._ ’2 ,{é/aé‘n/
`
`ARY PUBLT’C
`
`Nit
`
`My Commission expires:
`
`tin-5%; 3/" 59% ‘QJJPQ
`
` YVONNE Z CLELAND
`
`
`Notary Public
`Henry County
`
`
`State of Georgia
`My Commission Expires Aug 29. 2015
`
`
`
`
`4846207v2
`
`Signature Page to Corrective Assignment
`
`TRADEMARK
`
`REEL: 005371 FRAME: 0086
`
`

`

`ACCEPTANCE OF ASSIGNMENT
`
`The undersigned officer of Assignee hereby accepts the foregoing Collateral Assignment and agrees
`to be bound by the provisions thereof applicable to Assignee.
`
` mg?
`'
`
`eV1n M, Dcnnelly Banking Officer
`
`SS
`
`9
`STATE OF tacos
`
`.
`, (mum
`
`\
`
`m,
`
`x.
`
`<~
`
`COUNTY OF til/xx xwfimcw
`
`2014, before me, a Notary Public in and
`On this Q 13%
`day of §§L ‘
`for the State and County aforesaid, per onally appeared Kevin M. Donnelly, Who acknowledged
`himself to be a duly authorized officer of M&T Bank, (the “Bank”), and that being so authorized,
`has executed the foregoing instrument for the purposes therein contained by signing the name of the
`Bank.
`
`IN WITNESS WHEREOF, I have hereunto set my hand and official seal.
`
`
`
`4: W";
`
`NO
`
`)1] 0A ’) my?
`
`YPUBLIC _
`
`My Commission expires:
`
`COMMONWEALTH or musvwm
`
`
`NOTARML SEAL
`REGINA M KEMP
`
`
`Notary Public
`CITY OF PHILADEtPHIA. PHILADELPNA ONTY
`My Commission Expires Jun 10. 2018
`
`
`
`
`
`
`
`4846207v2
`
`TRADEMARK
`
`REEL: 005371 FRAME: 0087
`
`

`

`Schedule A to Trademark Assignment
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`TRADEMARKS REGISTERED WITH
`
`MARK
`SERIAL
`FILING REGISTRATION REGISTRATION
`NO.
`DATE
`NO.
`DATE
`
`
`EXTENDA—BAN
`72241418
`03/21/1966
`828504
`05/09/1967
`
`
`B&G
`73113969
`01/28/1977
`1113449
`02/20/1979
`
`
`B&G
`
`78611663
`
`04/19/2005
`
`3210240
`
`02/20/2007
`
`78961769
`
`08/28/2006
`
`3239891
`
`05/08/2007
`
`
`
`
`
`
`
`(DESIGN MARK FOR
`HAND-OPERATED
`
`SPRAYERS FOR
`
`PESTICIDE)
`
`
`4846207v2
`
`RECORDED: 09/30/2014
`
`REEL: 005371 FRAME: 0088
`
`TRADEMARK
`
`

`

`EXHIBIT B
`EXHIBIT B
`
`

`

`PTO- 1597
`
`Approved for use through 10/31/2021. OMB 0651-0055
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Section 7 Request Form
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`REGISTRATION NUMBER
`
`3210240
`
`LAW OFFICE ASSIGNED
`
`SERIAL NUMBER
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`OWNER SECTION (current)
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`LAW OFFICE 108
`
`78611663
`
`https://tmng-al.uspto.gov/resting2/api/img/78611663/large
`
`B&G
`
`NO
`
`NO
`
`M&T BANK
`
`2003 SOUTH EASTON ROAD SUITE 204
`
`DOYLESTOWN
`
`Pennsylvania
`
`18901
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`EMAIL
`
`XXXX
`
`OWNER SECTION (proposed)
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`B&G Equipment Company Inc.
`
`135 Region South Drive
`
`Jackson
`
`Georgia
`
`30233
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`United States
`
`EMAIL
`
`XXXX
`
`LEGAL ENTITY SECTION (current)
`
`TYPE
`
`CHARTERED BANK AND TRUST COMPANY
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY WHERE LEGALLY ORGANIZED
`
`New York
`
`LEGAL ENTITY SECTION (proposed)
`
`TYPE
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY OF INCORPORATION
`
`corporation
`
`Delaware
`
`

`

`EXPLANATION OF FILING
`
`Pursuant to TMEP 1609.10(a) and Section 7(g) of the Lanham Act, Registrant respectfully requests an amendment to Registration No.
`3210240 (the "'240 Registration") to correct a USPTO error. In 2013, the owner of the '240 Registration, B&G Equipment Company Inc.
`("B&G"), entered into a Loan Agreement (the "Loan Agreement") with M&T Bank. As part of the Loan Agreement, the parties intended to
`record a Security Agreement with the US Trademark Office. However, counsel for M&T Bank recorded a Trademark Assignment in error on
`January 8, 2014. This apparently caused M&T Bank to be listed as the owner of the '240 Registration in TSDR. Counsel for M&T Bank
`thereafter recorded a Corrective Assignment/Security Agreement to correct the error on September 30, 2014. The TSDR records for all other
`involved Trademark Registrations were updated to reflect B&G as the owner, but the '240 Registration TSDR record was not updated. M&T
`Bank remains incorrectly listed as the owner of record even though B&G was, and still is, the owner of all right, title and interest in this '240
`Registration.
`
`ATTORNEY INFORMATION (current)
`
`NAME
`
`Michael A. Geller
`
`ATTORNEY BAR MEMBERSHIP NUMBER
`
`YEAR OF ADMISSION
`
`U.S. STATE/ COMMONWEALTH/ TERRITORY
`
`XXX
`
`XXXX
`
`XX
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`PHONE
`
`FAX
`
`EMAIL
`
`DLA Piper LLP (US)
`
`P.O Box 64807
`
`Chicago
`
`Illinois
`
`60664-0807
`
`United States
`
`312.368.4000
`
`312.236.7516
`
`ch.tm@us.dlapiper.com
`
`DOCKET/REFERENCE NUMBER
`
`BGE-05-1091
`
`ATTORNEY INFORMATION (proposed)
`
`NAME
`
`Michael A. Geller
`
`ATTORNEY BAR MEMBERSHIP NUMBER
`
`YEAR OF ADMISSION
`
`U.S. STATE/ COMMONWEALTH/ TERRITORY
`
`XXX
`
`XXXX
`
`XX
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`PHONE
`
`FAX
`
`EMAIL
`
`DLA Piper LLP (US)
`
`P.O Box 64807
`
`Chicago
`
`Illinois
`
`60664-0807
`
`United States
`
`312.368.4000
`
`312.236.7516
`
`ch.tm@us.dlapiper.com
`
`DOCKET/REFERENCE NUMBER
`
`BGE-05-1091
`
`OTHER APPOINTED ATTORNEY
`
`Keith W. Medansky, Hilary H. Remijas, Nicole A. Chaudhari and Eugênia Schöntag
`
`

`

`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`Michael A. Geller
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`ch.tm@us.dlapiper.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
`
`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`Michael A. Geller
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`ch.tm@us.dlapiper.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
`
`sheila.brown@us.dlapiper.com
`
`DOCKET/REFERENCE NUMBER
`
`BGE-05-1091
`
`PAYMENT SECTION
`
`SECTION 7 FEE – Amendment filed is the correction of an
`immaterial error that was the fault of the USPTO
`
`TOTAL FEES DUE
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`SIGNATURE METHOD
`
`REQUEST SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`100
`
`100
`
`/GoCats!65/
`
`Todd E Pawlowski
`
`President
`
`01/22/2021
`
`Sent to third party for signature
`
`/Michael Geller/
`
`Michael Geller
`
`Associate attorney, DLA Piper LLP, Illinois bar member
`
`01/22/2021
`
`ROLE OF AUTHORIZED SIGNATORY
`
`Authorized Canadian Trademark Attorney/Agent
`
`SIGNATURE METHOD
`
`Sent to third party for signature
`
`CONCURRENT § 8, 8 &15, OR 8 &9 FILED
`
`NO
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Fri Jan 22 16:30:55 ET 2021
`
`USPTO/S7R-XXX.XXX.XXX.X-2
`0210122163055455357-32102
`40-7602fa09d5636a7da8cb4b
`8aa624418d6fd2d898a94c306
`942a8bb41d2ebbf9a28-DA-30
`535851-202101211726331782
`51
`
`PTO- 1597
`
`Approved for use through 10/31/2021. OMB 0651-0055
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`

`

`To the Commissioner for Trademarks:
`
`Section 7 Request Form
`
`The registrant requests the following amendment(s) to registration no. 3210240 B&G (Stylized and/or with Design, see https://tmng-
`al.uspto.gov/resting2/api/img/78611663/large) has been amended as follows:
`
`EXPLANATION OF FILING
`Pursuant to TMEP 1609.10(a) and Section 7(g) of the Lanham Act, Registrant respectfully requests an amendment to Registration No. 3210240
`(the "'240 Registration") to correct a USPTO error. In 2013, the owner of the '240 Registration, B&G Equipment Company Inc. ("B&G"), entered
`into a Loan Agreement (the "Loan Agreement") with M&T Bank. As part of the Loan Agreement, the parties intended to record a Security
`Agreement with the US Trademark Office. However, counsel for M&T Bank recorded a Trademark Assignment in error on January 8, 2014. This
`apparently caused M&T Bank to be listed as the owner of the '240 Registration in TSDR. Counsel for M&T Bank thereafter recorded a
`Corrective Assignment/Security Agreement to correct the error on September 30, 2014. The TSDR records for all other involved Trademark
`Registrations were updated to reflect B&G as the owner, but the '240 Registration TSDR record was not updated. M&T Bank remains incorrectly
`listed as the owner of record even though B&G was, and still is, the owner of all right, title and interest in this '240 Registration.
`
`OWNER AND/OR ENTITY INFORMATION
`Registrant proposes to amend the following:
`Current: M&T BANK a(n) CHARTERED BANK AND TRUST COMPANY, legally organized under the laws of New York, having an address
`of
`      2003 SOUTH EASTON ROAD SUITE 204
`      DOYLESTOWN, Pennsylvania 18901
`      United States
`      XXXX
`Proposed: B&G Equipment Company Inc., a corporation of Delaware, having an address of
`
`      135 Region South Drive
`      Jackson, Georgia 30233
`      United States
`      XXXX
`
`The owner's/holder's current attorney information: Michael A. Geller. Michael A. Geller of DLA Piper LLP (US), is a member of the XX bar,
`admitted to the bar in XXXX, bar membership no. XXX, is located at
`
`      P.O Box 64807
`      Chicago, Illinois 60664-0807
`      United States
`The docket/reference number is BGE-05-1091.
`
`The phone number is 312.368.4000.
`
`The fax number is 312.236.7516.
`
`The email address is ch.tm@us.dlapiper.com
`
`The owner's/holder's proposed attorney information: Michael A. Geller. Other appointed attorneys are Keith W. Medansky, Hilary H. Remijas,
`Nicole A. Chaudhari and Eugênia Schöntag. Michael A. Geller of DLA Piper LLP (US), is a member of the XX bar, admitted to the bar in
`XXXX, bar membership no. XXX, and the attorney(s) is located at
`
`      P.O Box 64807
`      Chicago, Illinois 60664-0807
`      United States
`The docket/reference number is BGE-05-1091.
`
`The phone number is 312.368.4000.
`
`The fax number is 312.236.7516.
`
`The email address is ch.tm@us.dlapiper.com
`
`

`

`Michael A. Geller submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court
`of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
`
`Correspondence Information (current):
`      Michael A. Geller
`      PRIMARY EMAIL FOR CORRESPONDENCE: ch.tm@us.dlapiper.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
`
`Correspondence Information (proposed):
`      Michael A. Geller
`      PRIMARY EMAIL FOR CORRESPONDENCE: ch.tm@us.dlapiper.com
`      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sheila.brown@us.dlapiper.com
`
`The docket/reference number is BGE-05-1091.
`
`Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the
`owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic
`Application System (TEAS).
`
`FEE(S)
`Fee(s) in the amount of $100 is being submitted.
`
`SIGNATURE(S)
`Declaration Signature
`The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001,
`and that such willful false statements and the like may jeopardize the validity of this submission, declares that all statements made of his/her own
`knowledge are true and all statements made on information and belief are believed to be true.
`
`Signature: /GoCats!65/      Date: 01/22/2021
`Signatory's Name: Todd E Pawlowski
`Signatory's Position: President
`Signatory's Phone: 7708551048
`Signature method: Sent to third party for signature
`
`Request Signature
`Signature: /Michael Geller/     Date: 01/22/2021
`Signatory's Name: Michael Geller
`Signatory's Position: Associate attorney, DLA Piper LLP, Illinois bar member
`
`Signatory's Phone: 312.368.2152
`
`Signature method: Sent to third party for signature
`The signatory has confirmed that an authorized U.S. licensed attorney has been appointed to represent the owner/holder; that he/she has been
`granted reciprocal recognition under 37 C.F.R. §11.14(c)(1) by the USPTO's Office of Enrollment and Discipline; and, that he/she is an
`authorized signatory based on 37 C.F.R. §11.14(c)(2).
`
`The applicant is NOT filing a Declaration of Use of Mark under Section 8; a Combined Declaration of Use of Mark under Sections 8 & 15; or a
`Combined Declaration of Use of Mark/Application for Renewal of Registration of Mark under Sections 8 & 9 in conjunction with this Section 7
`Request.
`
`Mailing Address:    Michael A. Geller
`   DLA Piper LLP (US)
`   
`   P.O Box 64807
`   Chicago, Illinois 60664-0807
`Mailing Address:    Michael A. Geller
`   DLA Piper LLP (US)
`   P.O Box 64807
`   Chicago, Illinois 60664-0807
`        
`
`

`

`PAYMENT: 3210240
`PAYMENT DATE: 01/22/2021
`        
`Serial Number: 78611663
`Internet Transmission Date: Fri Jan 22 16:30:55 ET 2021
`TEAS Stamp: USPTO/S7R-XXX.XXX.XXX.X-2021012216305545
`5357-3210240-7602fa09d5636a7da8cb4b8aa62
`4418d6fd2d898a94c306942a8bb41d2ebbf9a28-
`DA-30535851-20210121172633178251
` 
`
`

`

`ROUTING SHEET TO POST REGISTRATION (PRU)
`
`Registration Number:
`
`3210240
`
`
`
`Serial Number:
`
`
`
`
`
`
`
`78611663
`
`RAM Sale Number: 3210240
`
`
`
`
`
`
`
`
`
`
`
`RAM Accounting Date: 20210122
`
`Total Fees:
`
`$100
`
`Note: Process in accordance with Post Registration Standard Operating Procedure (SOP)
`
`Transaction
`
`Fee
`Transaction
`
`Code
`Date
`
`Fee per
`
`Class
`
`Total
`Number
`of Classes E
`
`§7 request
`
`20210122
`
`$0
`
`0
`
`0
`
`$100
`
`Physical Location: 900 - NO PHYSICAL FILE
`
`Lost Case Flag: False
`
`In TICRS (AM-FLG—IN-TICRS): True
`
`Transaction Date:
`
`20210122
`
`

`

`EXHIBIT C
`EXHIBIT C
`
`

`

`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 1 of 29 PageID 1
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`B&G EQUIPMENT COMPANY, INC.,
`
`Plainti