Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1292988
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`Filing date:
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`06/22/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92079816
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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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`Plaintiff
`Light Street Ventures LLC
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`LEMA KHORSHID
`FUKSA KHORSHID LLC
`200 W SUPERIOR
`CHICAGO, IL 60654
`UNITED STATES
`Primary email: lema@fklawfirm.com
`Secondary email(s): andrew@fklawfirm.com, william@fklawfirm.com
`No phone number provided
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`Opposition/Response to Motion
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`Lema Khorshid
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`lema@fklawfirm.com, william@fklawfirm.com, vince@fklawfirm.com, con-
`nor@fklawfirm.com, catherine@fklawfirm.com, marguerite@fklawfirm.com
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`/Lema Khorshid/
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`06/22/2023
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`Brief in Opposition of Motion to Suspend TTAB Proceedings.pdf(4398698 bytes
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of LIGHT STREET Reg. No. 5,212,320
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`Light Street Ventures LLC, Light Street Capital
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`Management LLC, and Light Street
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`Investments LLC,
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`Petitioners,
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`Light Street Capital Management, LLC
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`Respondent.
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`__________________________________________)
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`Cancellation No. 92,079,816
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`BRIEF IN OPPOSITION OF RESPONDENT’S MOTION TO SUSPEND
`PROCEEDING PENDING OUTCOME OF CIVIL ACTION
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`Petitioners Light Street Capital Management LLC, Light Street Investments LLC, and
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`Light Street Ventures LLC (“Petitioners” or “Light Street”) respectfully request that the
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`Trademark Trial and Appeal Board (“TTAB”) deny Respondent Light Street Capital Management,
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`LLC’s (“Respondent’s”) Motion to Suspend Proceeding Pending Outcome of Civil Action (the
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`“Resp. Motion”).
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`Far from protecting “judicial economy” or reflecting a “standard procedure” (Resp. Motion
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`p. 2), Respondent filed their Civil Action and now this Motion as pure tactical gamesmanship. On
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`June 2, Petitioners promptly moved to stay the Civil Action in the Northern District of Illinois in
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`favor of these advanced TTAB proceedings, such motion attached hereto as Exhibit A.1
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`Respondent’s subject motion before this Board followed late the same Friday night.
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`Respondent is out to apply leverage and cherry-pick a different forum because it must be
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`displeased with how proceedings before this Board are going. The dispute between the parties has
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`been pending for more than a year before this Board, during which time this Board denied
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`Respondent’s motion to dismiss (by ruling dated October 25, 2022), and then the parties entered
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`settlement negotiations at Respondent’s request. Clearly unsatisfied with whatever prospects or
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`fortunes it may have before the TTAB, Respondent now wants a new umpire and ballpark. Neither
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`the District Court in the Civil Action, nor this Board, should allow such tactics.
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`The TTAB has the inherent power to schedule disposition of the cases on its docket. The
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`Board should exercise its discretion to deny the Respondent’s Motion to suspend these
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`proceedings. Allowing Respondent to switch proceeding following this Board’s determination of
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`a dispositive motion against Respondent, and a year’s pendency before the TTAB, simply would
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`reward tactical gamesmanship. Importantly, this first-filed and long-pending proceeding could
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`well moot most or all of the issues before the District Court. Both judicial economy and fairness
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`strongly argue that this dispute should proceed before the TTAB, a forum already familiar with
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`the facts and issues of this matter, and that has already ruled (against Respondent) in the first
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`critical phase of the dispute.
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`1 The Northern District of Illinois has set a briefing schedule and further status on Petitioners’
`first-filed Motion to Stay. Respondent has a deadline of July 3, 2023 to respond in opposition of
`Petitioners’ Motion to Stay. Petitioners have until July 17, 2023 to reply in support of their
`Motion to Stay. The court has set a next status for August 15.
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`BACKGROUND
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`After operating peacefully for six years, Petitioners first were made aware of Respondent
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`and its associated trademark registration (the “Registration”) in April of 2022. Petitioners, having
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`common law rights to the LIGHT STREET name, diligently and properly identified that their
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`businesses would be harmed by continued registration of the LIGHT STREET name. To protect
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`their interests, Petitioners immediately and appropriately filed this cancellation proceeding in May
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`of 2022, to resolve the problem here, in the proper forum.
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`Respondent (who could have filed an infringement lawsuit long ago, had it been diligent
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`in protecting its supposed rights, which it has not been) instead decided to litigate the current
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`dispute and filed a motion to dismiss this cancellation proceeding on July 1, 2022. (Copy attached
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`hereto as Exhibit B). Briefing of that motion, including Light Street’s Response in Opposition to
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`the Motion to Dismiss (copy attached hereto as Exhibit C) followed. This Board denied
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`Respondent’s Motion to Dismiss in a well-reasoned opinion and set a detailed timeline for
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`litigation of these proceedings. The order denying the motion to dismiss and setting scheduling is
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`attached and incorporated herein as Exhibit D; see page 7, thereof, as to this proceeding’s detailed
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`litigation schedule.
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`Facing defeat of its dispositive motion and litigation before this Board that could lead to
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`cancellation of its alleged trademark, Respondent requested that Petitioners voluntarily agree to
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`temporarily suspend this proceeding in an attempt to settle the matter amicably. They continued to
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`make these requests; to date, Respondent has requested to temporarily suspend proceedings in
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`view of settlement negotiations five (5) times. For months, Petitioners worked in good faith to
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`resolve the controversy, but Respondent apparently did not like how those negotiations were going.
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`Unsatisfied with its fortunes in this proceeding and in settlement negotiations, Respondent
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`filed its civil action before the Northern District of Illinois in a bad faith act of forum selection and
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`tactical gamesmanship. Petitioner promptly filed a motion to stay the proceedings in the civil
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`action in view of these proceedings before the Board. Petitioner’s Motion to Stay the civil action
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`in the Northern District of Illinois is attached hereto as Exhibit A.2
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`ARGUMENT
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`I.
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`PETITIONER PREVIOUSLY FILED A NOW PENDING MOTION TO STAY
`PROCEEDINGS IN THE NORTHERN DISTRICT OF ILLINOIS.
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`Petitioners chose the TTAB as an appropriate forum for this dispute – a choice Respondents
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`left unchallenged for a year – and Respondents have already taken steps in the District Court to
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`ensure that this cancellation proceeding before the Board properly can continue. Any arguments
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`Respondent makes based on the “standard procedures” of the Board (Resp. Motion p. 2), fall apart
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`when viewed in light of Respondent’s gamesmanship. Although the Board may choose to suspend
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`proceedings in more typical circumstances involving civil actions, Respondent’s actions here
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`reinforce that suspension is not always the proper result. See Boyds Collection Ltd. V. Herrington
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`& Co., 65 U.S.P.Q.2d 2017 (“…both the permissive language of Trademark Rule 2.117(a)
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`(‘proceedings… may be suspended…’), and the explicit provisions of Trademark Rule 2.117(b)
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`make clear that suspension is not the necessary result in all cases.”). Indeed, the very rules
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`2 As evidenced by the 4:30pm CDT filing time of Petitioners’ motion to stay the action in the
`Northern District of Illinois and the 9:00pm CDT Friday night filing time of Respondent’s
`motion to suspend this proceeding, it appears that Respondent hastily drafted and filed its motion
`to suspend these proceedings in response to Petitioner’s motion to stay.
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`Respondent cites carve out an exception for “unusual circumstances.” See TBMP § 510.02(a)
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`(“Unless there are unusual circumstances, the Board will suspend proceedings… .”) (emphasis
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`added). The circumstances here are unusual indeed, and Respondent has omitted key information,
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`including failing even to mention, acknowledge, or much less address the reasons why Petitioners
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`filed a motion to stay the civil action. See Exhibit A.
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`The Board should consider all pleadings filed in the civil action prior to making a
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`determination of whether to suspend the current proceeding. See TBMP 510.02(a) (“When a
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`motion to suspend pending the outcome of a civil action is filed, the Board normally will require
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`that a copy of the operative pleadings be submitted, so that the Board can ascertain whether the
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`final determination of the civil action may have a bearing on the issues before the Board”); see
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`also New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
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`Petitioner has filed a motion to stay the proceedings in the Northern District of Illinois pending the
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`determination of the Board. See Exhibit A. In that motion, Petitioner argued that this case should
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`proceed before the Board as a matter of fairness and efficiency.
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`Put simply, Respondent is engaged in tactical gamesmanship and forum shopping to
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`leverage the Federal Court system – and, importantly, to avoid the Board’s jurisdiction. As such,
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`it fails to satisfy the “good cause” standard required for suspension of these proceedings. See
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`National Football League v. DNH Management LLC, 85 USPQ2d 1852, 1855, n.8 (TTAB 2008)
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`(“All motions to suspend, regardless of circumstances, . . . are subject to the ‘good cause’
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`standard.”) (citing Trademark Rule 2.117(c)). Respondent could have lifted the suspension on
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`these proceedings if it wanted to litigate, not settle. Instead, it is trying to cherry pick a different
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`forum.
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`II.
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`RESPONDENT’S ATTEMPT TO SUSPEND THIS LITIGATION IS BAD
`FAITH FORUM SHOPPING.
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`Respondent, having tried and failed to escape this Board’s decision-making power once
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`before, now seeks to exploit the TTAB’s “standard procedures” in a bad faith act of forum
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`shopping. Both Board precedent and federal court precedent condemn such gamesmanship.
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`Jodi Kristopher Inc. v. International Seaway Trading Corp., rejected tactics that are
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`compellingly similar to Respondent’s conduct here. In that case, a petitioner sought suspension
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`of its cancellation proceeding before the TTAB in favor of a just-filed civil action. Jodi Kristopher
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`Inc. v. Int’l Seaway Trading Corp., 91 U.S.P.Q.2d 1957 (2009), 2009 WL 3154232 at *1. It moved
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`to suspend the proceedings after (we can surmise) it did not like how its testimony came across.
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`Id. The respondent in Jodi Kristopher appropriately cried foul, that the motion to suspend was a
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`delay tactic and an attempt to take another bite at the apple in a different forum. Id. The Board
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`agreed, noting that the petitioner lacked good cause for the suspension and that granting the motion
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`would not be a proper exercise of its discretion. Id. at *2. In reaching its conclusion, the Board
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`reasoned that the concurrent filing of the motion to suspend and the civil action was “solely for
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`purposes of delay and not for advancing resolution of its claims.” Id.
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`Here too, Respondent seeks to delay Petitioners’ cancellation proceeding through the filing
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`of a civil action. What is more, unlike in Jodi Kristopher where the petitioner sought to suspend
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`its own cancellation proceeding, Respondent in the current proceeding seeks to suspend
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`Petitioners’ properly filed proceeding after acquiescing in this forum for over a year and after
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`losing a dispositive motion. Jodi Kristopher, 2009 WL at *1. Respondent has had over a year to
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`file a civil action and instead it chose to litigate before this Board, get a determination of a
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`dispositive motion, and then stalled the proceedings for over a year by seeking consent motions to
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`suspend in view of settlement negotiations. Now, less than one month before the cancellation
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`proceeding is set to resume and Respondent will be forced to answer Petitioners’ complaint,
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`Respondent seeks to stall and try a different forum in court. Petitioners have grown tired of waiting
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`and are prepared to litigate this matter before the TTAB, the proper forum for this dispute. Like
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`the Board in Jodi Kristopher, this Board should recognize Respondent’s actions as forum-shopping
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`gamesmanship. Id. at *2.
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`Federal court decisions have also condemned tactics like this. The Board clearly
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`recognizes in its own rules that federal courts will suspend civil actions under appropriate
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`circumstances, and the Board will then move forward in its own proceedings. See TBMP 510.02(a)
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`(“However, if, as sometimes happens, the court before which a civil action is pending elects to
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`suspend the civil action to await determination of the Board proceeding and the Board is so
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`advised, the Board will go forward with its proceeding.”).
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`Tigercat International, Inc. v. Caterpillar Inc., is a federal court decision showing good
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`reason to suspend a civil action in favor of the Board’s decision in a trademark matter. In that
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`case, the defendant moved to stay proceedings in a civil action pending a prior-filed trademark
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`opposition proceeding before the TTAB. Tigercat Int’l, Inc. v. Caterpillar Inc., No. 16-cv-1047-
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`GMS, slip op. at 13 (D. Del. May 2, 2018). The Board had suspended proceedings in view of the
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`civil action but noted that if the district court granted the motion to stay proceedings in the civil
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`action, “the Board should be so notified, and the proceedings [before the TTAB] will resume.” Id.
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`at 4. As in this proceeding, the parties had already engaged in substantive trademark litigation
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`before the TTAB. Id. at 1–2. The district court granted the motion to stay, finding that the TTAB
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`proceeding would simplify the matters before the district court, and that forcing the parties to
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`reengage in new proceedings before the district court would be unfair and inefficient. Id. at 4–5.
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`The court emphasized that the plaintiffs engaged in “tactical gamesmanship” and referred to the
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`plaintiff’s long delay in bringing the civil action while engaged in trademark proceedings before
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`the TTAB as “unacceptable.” Id. at 13.
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`Respondent is engaged in similar tactical gamesmanship. Petitioners properly filed this
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`cancellation proceeding before the TTAB on May 27, 2022. See Exhibit E. After losing its motion
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`to dismiss, Respondent sought to negotiate with Petitioners and (as is apparent in retrospect)
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`tricked Light Street into TTAB delays. Petitioners agreed to temporarily suspend the cancellation
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`proceeding in view of these negotiations. Now, apparently unhappy with its fortunes here (which
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`may well lead to cancellation of its alleged trademark), Respondent would like to start over. Like
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`in Tigercat, where the plaintiff sought to use tactical gamesmanship to bail out of trademark
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`proceedings before the TTAB, Respondent’s actions are gamesmanship that this Board should
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`reject. Tigercat, slip op. at 13. Further, even more compellingly than in Tigercat, where the TTAB
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`proceeding might only simplify the issues before that court, Petitioners’ cancellation proceeding
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`has the potential to moot the later-filed civil action entirely.
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`Other federal courts have granted motions to stay civil actions on similar grounds. In Shaf
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`International, Inc. v. Ultimate Leather Apparel, Inc., defendants moved to stay a trademark
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`infringement action before the district court, pending a prior-filed cancellation proceeding before
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`the TTAB. Shaf Int'l, Inc. v. Ultimate Leather Apparel, Inc., No. CV 20-2569 JMV, 2020 WL
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`7137929 at *1 (D.N.J. Dec. 7, 2020). In Shaf, much like this case, trademark infringement and
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`likelihood of confusion were the main issues to be decided by both the TTAB and the district court.
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`Id. The district court granted the stay, noting that “adjudication of the claims by the TTAB [had]
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`the potential to largely, if not completely, resolve the District Court case.” Shaf, No. CV 20-2569
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`JMV at *3.
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`Such is the case here. Petitioners have peacefully used the LIGHT STREET name in
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`commerce since 2015. Respondent’s federal trademark registration, the registration at issue in this
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`cancellation proceeding, was obtained in 2017. Further, Respondent has not provided any evidence
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`of its use of the LIGHT STREET name in commerce prior to 2016, later than Petitioners’ initial
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`use of the LIGHT STREET name. Respondent’s only evidence of use in commerce submitted to
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`the USPTO is a specimen of use from 2016, attached and incorporated herein as Exhibit F. If
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`Respondent’s trademark were cancelled in this proceeding (an outcome that Respondents seem to
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`be wary of, given their stalling to date and attempt to change forums), Respondent would have no
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`federal registration for the LIGHT STREET name and accordingly would have no grounds to
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`challenge Defendants’ use of the mark. The civil action then goes away entirely.
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`III. THE TTAB IS THE PROPER FORUM FOR THIS DISPUTE BOTH FOR
`EFFICIENCY AND THE BOARD’S EXPERTISE.
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`Rather than rewarding Respondent’s gamesmanship and forum shopping, this Board
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`should allow Petitioner’s properly-filed cancellation proceeding to move forward as a matter of
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`efficiency and because of this Board’s expertise. Respondent could have lifted the suspension
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`before this Board at any time over many months, but now attempts to stall the proceedings even
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`further. But for Respondent’s delay tactics, these proceedings would be well underway, and
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`Petitioners would be that much closer to the remedy they seek.
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`In JVMAX, Inc. v. ESR Performance Corp., a cancellation proceeding before the TTAB, a
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`respondent moved to suspend a cancellation proceeding in view of a civil action it filed on the
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`same day. JVMAX, Inc. v. ESR Performance Corp., 2018 WL 1010721 (2018) at *1. As in the
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`current proceeding, the respondent in JVMAX argued that the board should suspend the proceeding
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`because the disposition of the civil action might have a bearing on the cancellation. Id. The board
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`denied the motion to stay proceedings, agreeing with the petitioner that “unusual circumstances”
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`were present and that the respondent appeared to be forestalling the cancellation proceeding. Id.
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`Such is the case here. Petitioners would be one year further in this proceeding (and one
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`year closer to the remedy they seek) if Respondent had not previously tried to escape the
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`jurisdiction of this Board through its failed motion to dismiss and subsequent stalling. Now, as the
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`resumption of this proceeding approaches, Respondent has filed its civil action to create further
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`delay. Even more telling is that as in JVMAX, where the court noted the unusual nature of the
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`petitioner filing the civil action and the motion to suspend on the same day, it strongly appears that
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`Respondent filed its motion and civil action in close proximity as a similar tactic. JVMAX, 2018
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`WL at 1. As a matter of efficiency and economy, this Board should allow the cancellation
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`proceedings to resume and for the parties to move forward here, in an appropriate forum that has
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`already made a decision on dispositive motion practice.
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`This Board’s history and precedent from the federal court system affirm that the TTAB is
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`the proper forum for this dispute due to the Board’s expertise and specialty in resolving trademark
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`issues. See, e.g., Buti v. Perosa, S.R.L., 139 F.3d 98, 105 (2d Cir. 1998) (decisions of the TTAB
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`are “to be accorded great weight” in the courts); see also Kelly Servs., Inc. v. Creative Harbor,
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`LLC, 846 F.3d 857 n.1 (6th Cir. 2017) (“It appears that our sister Circuits have generally treated
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`TTAB decisions as persuasive authority ‘entitled to respect’ because of the TTAB’s ‘expertise in
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`trademark disputes”) (citations omitted).
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` The Northern District of Illinois, where Petitioners’ motion to stay the civil action is
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`currently pending, has on many occasions noted the persuasive power that the TTAB has due to
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`its expertise and authority in trademark matters. See RGB Plastic, LLC v. First Pack, LLC, 184 F.
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`Supp. 3d 649 n.7 (N.D. Ill. 2016) (“The Seventh Circuit and courts in this district often cite
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`Trademark Trial and Appeal Board decisions as persuasive authority, which makes sense given
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`the Board’s statutory role in deciding adversary proceedings arising from the PTO’s decisions on
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`trademark registration.”); see also DRL Enterprises, Inc. v. N. Atl. Operating Co., Inc., 301 F.
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`Supp. 3d 824, 838 (N.D. Ill. 2018) (citing the TTAB as persuasive authority due to the “analogous
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`circumstances” of the case).
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`Here, given that the determinations this Board will make in Petitioners’ cancellation
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`proceeding have the potential to moot the civil action entirely, the Board’s expertise carries even
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`more weight.
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`CONCLUSION
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`Respondent filed its motion to suspend to avoid the pending cancellation proceeding before
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`this Board, where it lost its initial dispositive motion practice, and must face a litigation schedule
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`and day of reckoning on Petitioners’ well-based case to cancel Respondent’s Registration.
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`Petitioners cry foul on Respondent’s attempt to forum-shop and run up expense when the civil
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`action may well be mooted by the results in this long and prior-pending action. For these and all
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`the foregoing reasons, Petitioners respectfully request that this Board deny Petitioner’s Motion to
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`Suspend Proceeding Pending Outcome of Civil Action and set this matter to proceed.
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`FUKSA KHORSHID, LLC
`Lema Khorshid
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`William E. Meyer, Jr.
`200 W. Superior, Suite 410
`Chicago, IL 60654
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`T: 312.266.2221
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`F: 312.266.2224
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`william@fklawfirm.com
`lema@fklawfirm.com
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`Respectfully Submitted,
`FUKSA KHORSHID, LLC
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`/s/ William E. Meyer, Jr.
`William E. Meyer, Jr.
`Attorney for Respondent
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`Dated: June 22, 2023
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing BRIEF IN OPPOSITION OF
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`RESPONDENT’S MOTION TO SUSPEND PROCEEDING PENDING OUTCOME OF CIVIL
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`ACTION was served upon the counsel for Light Street Capital Management, LLC identified below
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`by email on June 22, 2023:
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`Jessica A. Ekhoff
`Pattishall McAuliffe Newbury Hilliard & Geraldson LLP
`200 South Wacker Drive, Suite 2900
`Chicago, IL 60606
`jae@pattishall.com
`fgt@pattishall.com
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`Lema Khorshid
`William E. Meyer, Jr.
`200 W. Superior, Suite 410
`Chicago, IL 60654
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`T: 312.266.2221
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`F: 312.266.2224
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`william@fklawfirm.com
`lema@fklawfirm.com
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`/s/ William E. Meyer, Jr.
`William E. Meyer, Jr.
`Attorney for Respondent
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
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`Civil Action No. 23-cv-02616
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`Hon. Jorge L. Alonso
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`Demand for Jury Trial
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`LIGHT STREET CAPITAL
`MANAGEMENT, LLC, a Delaware
`limited liability company,
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`Plaintiff,
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`v.
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`LIGHT STREET CAPITAL
`MANAGEMENT LLC, a Nevada limited
`liability company, LIGHT STREET
`INVESTMENTS LLC, a Nevada limited
`liability company, and LIGHT STREET
`VENTURES LLC, an Illinois limited liability
`company,
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`Defendants.
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`_____________________________________
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`DEFENDANT’S MOTION AND MEMORANDUM TO STAY PROCEEDINGS
`AND TO STAY THE DEADLINE TO ANSWER UNTIL THE RESOLUTION OF
`PENDING TTAB CANCELLATION PROCEEDING
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`Defendants Light Street Capital Management LLC, Light Street Investments LLC, and
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`Light Street Ventures LLC (“Defendants” or “Light Street”) move the Court to stay all
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`proceedings, and to stay the deadline to answer the complaint in the above-captioned case, in favor
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`of the prior pending trademark cancellation proceeding Defendants filed and that is currently
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`pending before the United States Patent and Trademark Office, Trademark Trial and Appeal Board
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`(“TTAB”), under Cancellation No. 92079816.
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`Plaintiff Light Street Capital Management, LLC’s (“Plaintiff’s”) filing of this action is pure
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`tactical gamesmanship, cynically done to apply leverage and cherry-pick a different forum because
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`Plaintiff is displeased with how the TTAB proceeding is going for Plaintiff. The dispute between
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`the parties has been pending for more than a year before the TTAB, during which time the TTAB
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`denied Plaintiff’s motion to dismiss (by ruling dated October 25, 2022), and then the parties had
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`settlement negotiations. Apparently unsatisfied with whatever prospects or fortunes it may have
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`before the TTAB as signaled by the TTAB’s denial of Plaintiff’s motion to dismiss (and unhappy
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`with settlement negotiations), Plaintiff comes to this Court seeking a new umpire and ballpark.
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`Federal courts have an inherent power to stay proceedings as an incident to their ability to
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`control their own dockets. The Court should exercise its discretion to stay this case pending the
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`resolution of the cancellation proceeding before the TTAB. Moving forward in this Court
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`following TTAB’s determination of a dispositive motion against Plaintiff, and a year’s pendency
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`before the TTAB, simply would reward Plaintiff’s tactical gamesmanship. Importantly, the first-
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`filed and long-pending TTAB proceeding could well moot most or all of the issues before this
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`Court. It makes sense (not to mention as a matter of fairness) to conserve the scarce resources of
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`this Court in favor of a TTAB forum already familiar with the facts and issues, and that already
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`ruled (against Plaintiff) in the first critical phase of the dispute.
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`Accordingly, Light Street respectfully requests that the Court stay the Plaintiff’s claims
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`until resolution of the TTAB proceedings, stay the deadline to answer or otherwise plead, and grant
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`Light Street all other appropriate relief.
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`I.
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`BACKGROUND
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`DEFENDANTS, HAVING COMMON LAW RIGHTS, APPROPRIATELY
`FILED THE CANCELLATION PROCEEDING BEFORE THE USPTO OVER
`A YEAR AGO IN GOOD FAITH.
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`Defendants are in the financial services business. Beginning as early as 2015, Defendants
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`have conducted a financial and venture capital business initially based in Chicago, Illinois (and
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`expanding to other locales) that covers a wide variety of sectors with a special focus on technology
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`investments. Defendants have been openly and notoriously conducting business using the LIGHT
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`STREET name in interstate commerce since at least 2015 in association with their financial
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`services. As a result of this widespread, continuous, and exclusive use of the LIGHT STREET
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`name to identify their services and Defendants as their source, Defendants own valid and subsisting
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`federal statutory and common law rights to the LIGHT STREET name. 15 U.S.C. § 1125(a) et.
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`seq.; see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (“. . . it is common ground
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`that § 43(a) protects qualifying unregistered trademarks and that the general principles qualifying
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`a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining
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`whether an unregistered mark is entitled to protection under § 43(a).”). For seven years,
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`Defendants have expended substantial time, money, and resources to market, advertise, and
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`promote their services under the LIGHT STREET name.
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`After operating peacefully for six years, Defendants first were made aware of Plaintiff and
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`its associated trademark registration (the “Registration”) in April of 2022. Defendants, having
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`common law rights to the LIGHT STREET name, diligently and properly identified that their
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`businesses would be harmed by continued registration of the LIGHT STREET name. To protect
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`their interests, Defendants immediately and appropriately filed a cancellation proceeding before
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`the TTAB in May of 2022. Once Defendants recognized that harm would come to their businesses
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`due to the Plaintiff’s Registration, they immediately sought to resolve the problem through the
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`proper forum.
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`Plaintiff (who could have filed an infringement lawsuit long ago, had it been diligent in
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`protecting its supposed rights) instead decided to litigate the dispute before the TTAB and filed a
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`motion to dismiss the cancellation proceeding on July 1, 2022. (Copy attached hereto as Exhibit
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`A). Briefing of that motion, including Light Street’s Response in Opposition to the Motion to
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`Dismiss (copy attached hereto as Exhibit B) followed. The TTAB denied Plaintiff’s Motion to
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`Dismiss in a well-reasoned opinion and set a detailed timeline for litigation of the matter. The
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`order denying the motion to dismiss and setting scheduling is attached and incorporated herein as
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`Exhibit C; see page 7, thereof, as to the TTAB’s detailed litigation schedule.
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`Facing defeat of its dispositive motion and litigation that could lead to cancellation of its
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`alleged trademark, Plaintiff requested that Defendants voluntarily agree to temporarily suspend
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`the cancellation proceeding before the TTAB in an attempt to settle the matter amicably. For
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`months, Defendants worked in good faith to resolve the controversy, but Plaintiff apparently did
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`not like how those negotiations were going.
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`II.
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`UNHAPPY WITH ITS FORTUNES IN THE TTAB PROCEEDING (AND
`FOLLOWING ITS REQUESTED DELAYS), PLAINTIFF FILED THIS
`DISTRICT COURT ACTION.
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`Unsatisfied with its fortunes to date in the TTAB proceeding, Plaintiff filed this action in a
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`bad faith act of forum selection and tactical gamesmanship. This comes after, by the way,
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`Plaintiff’s request to temporarily suspend the TTAB action in view of settlement negotiations five
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`(5) times. A screenshot of the Prosecution History in the cancellation proceeding before the TTAB
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`is attached and incorporated herein as Exhibit D.
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`Light Street has had enough of that, and proceedings before the TTAB are set to resume in
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`July of this year and Light Street wishes to proceed in its chosen and first-filed forum where
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`litigation has already advanced. The most recent suspension of proceedings before the TTAB
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`outlining the date for the resumption, then discovery and trial is attached and incorporated herein
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`as Exhibit E. That order of the TTAB sets out a detailed schedule for litigation that would compel
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`Plaintiff to answer on July 23, 2023, close discovery by February 18, 2024, set pretrial disclosures
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`by April 3, 2024, and brief and potentially resolve the matter during 2024. See Consent Motion
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`for Suspension for Settlement, schedule set out on page 3 of 4, attached and incorporated herein
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`as Exhibit F. A TTAB proceeding that will moot or largely moot this District Court action is at
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`issue on the pleadings, scheduled out, and ready to move to discovery – then Plaintiff cynically
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`filed this action.
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`I.
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`ARGUMENT
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`PRINCIPLES OF FAIRNESS SUPPORT A MOTION TO STAY IN FAVOR OF
`ADJUDICATION BEFORE THE TRADEMARK TRIAL AND APPEAL
`BOARD.
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`It is well-settled that federal courts have broad discretion to stay proceedings as an incident
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`to their power to control their own dockets. Clinton v. Jones, 520 U.S. 681, 706 (1997). Courts
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`consider three factors in deciding whether to stay a proceeding: “(i) whether a stay will unduly
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`prejudice or tactically disadvantage the non-moving party, (ii) whether a stay will simplify the
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`issues in question and streamline the trial, and (iii) whether a stay will reduce the burden of
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`litigation on the parties and on the court.” Pfizer Inc. v. Apotex Inc., 640 F. Supp. 2d 1006 (N.D.
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`Ill. 2009) (staying the Illinois suit pending a decision in the United States District Court for the
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`District of Delaware). “‘If there is even a fair possibility that the stay ... will work damage to some
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`one else,’ the party seeking the stay ‘must make out a clear case of hardship or inequity in being
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`required to go forward.”’ Id. (quoti