Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1051075
`
`Filing date:
`
`04/24/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`94002720
`
`Party
`
`Correspondence
`Address
`
`Applicant
`Hanscomb Consulting, Inc.
`
`H JAY SPIEGEL
`H JAY SPIEGEL & ASSOCIATES
`PO BOX 11
`MOUNT VERNON, VA 22121
`UNITED STATES
`jayspiegel@aol.com
`703-619-0101
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`H. Jay Spiegel
`
`jayspiegel@aol.com
`
`/H. Jay Spiegel/
`
`04/24/2020
`
`HanscombConsultingNoticeToUSPTO042420.pdf(117023 bytes )
`HanscombConsultingCivilCoverSheetAsFiled042420.pdf(357861 bytes )
`HanscombConsultingComplaintAsFiled042420.pdf(1142015 bytes )
`HanscombConsultingExhibit1ToComplaintAsFiled042420.pdf(2202677 bytes )
`
`

`

`LAW OFFICES OF
`
`H. JAY SPIEGEL & ASSOCIATES
`
`GENERAL CAUSES &
`
`D.C. BAR
`VIRGINIA BAR
`PATENT BAR
`PHONE: (703) 619-0101
`FAX: (703) 619-0110
`WIRELESS: HJS@SPIEGELAW.COM
`WWW.SPIEGELAW.COM
`E-MAIL: JAYSPIEGEL@AOL.COM
`
`PATENT, TRADEMARK & COPYRIGHT CAUSES
`—_—____—__
`SPIEGEL’S LANDING
`8778 THOMAS J. STOCKTON PARKWAY
`ALEXANDRIA, VIRGINIA 22308
`—————__—_—
`MAIL ADDRESS: P.O. BOX 11
`MOUNT VERNON, VIRGINIA 22121-0011
`
`PARIS CORRESPONDENT
`LANGER-NETTER-ADLER
`53 AVENUE DE BRETEUIL
`PARIS 75007 FRANCE
`PHONE: 45 67 01 23
`FACSIMILE: 45 67 33 86
`
`April 24, 2020
`
`Filed Through ESTTA
`
`Ms. Denise M. DelGizzi
`Chief Clerk of the Board
`U.S. Patent & Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Re:—Concurrent Use Proceeding No. 94002720
`Hanscomb Consulting, Inc. v. Hanscomb, Limited
`
`Dear Ms. DelGizzi:
`
`In compliance with 37 C.F.R. § 2.145(c)(3), I am writing the Board to provide noticethat
`todayI filed a civil action, appealing the decision of the Board dated February 26, 2020, in the
`referenced concurrent use proceeding, in the United States District Court for the Eastern District
`of Virginia, Alexandria Division. Thecivil action has been assigned docket number1:20-cv-
`00457 and is styled Hanscomb Consulting, Inc. v. Hanscomb, Limited.
`
`I have attached the civil cover sheet, complaint, and Exhibit 1 thereto. Today, I sent
`Thomas O’Rourke, Esquire, Counsel to Hanscomb, Limited courtesy copies of the papers filed in
`Court today.
`I will also serve him this coverletter todayafter filing it. Please let me know if you
`have any questions.
`
`Very truly yours,
`
` HJS:tg
`
`H. JAY SPIEGEL & ASSOCIATES
`
`Enclosures
`
`H.Jay Spiegel
`Counsel to Hanscomb Consulting, Inc.
`
`

`

`
`
`JS 44 (Rev. 09/19)
`
`Case 1:20-cv-00457 Doewvert COVERHEE? Page 1 of 1 PagelD# 31
`Case 1:20-cv-00457 Document 1-2 Filed 04/24/20 Page 1 of 1 PageID# 31
`The JS 44 civil cover sheet and the information contained herein neither replace nor su
`ppement the filing and service ofpleadings or other papers as required by law, except as
`ie
`nit
`provided by local rules of court. This form, approved by the Judicial Conference of th
`ed States in September 1974, is required for the use of the Clerk of Court for the
`purpose ofinitiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`Hanscomb Consulting, Inc.
`
`DEFENDANTS
`
`Hanscomb, Lid.
`
`(b) County of Residenceof First Listed Plaintiff Alexandria
`(EXCEPTIN U.S. PLAINTIFF CASES)
`
`__
`
`County of ResidenceofFirst Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATIONCASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`H. Jay Spiegel, H. Jay Spiegel & Associates, P.O. Box 11, Mount
`Vernon, Virginia 22121, 703-619-0101
`
`Attomeys (ifKnown)
`
`ThomasA. O'Rourke, Bodner & O'Rourke, 425 Broadhollow Road,
`Suite 120, Melville, New York 11530, 631-249-7500
`
`Il. BASIS OF JURISDICTION (Place an “X”in One Box Only)
`O 1 US. Government
`Plaintiff
`
`Federal Question
`(U.S. Government Not a Party)
`
`2% 3°
`
`Il. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X”in One Boxfor Plaintiff
`(For Diversity Cases Only)
`and One Boxfor Defendant)
`PTF
`DEF
`PTF
`DEF
`a1
`© 1
`go4 o4
`
`Citizen of This State
`
`Incorporated or Principal Place
`of Business In This State
`
`04=Diversity
`O 2 U.S. Government
`Citizen of AnotherState
`O 2
`© 2
`Incorporated and Principal Place
`os
`05
`Defendant
`of Business In Another State
`(Indicate Citizenship ofParties in Item III)
`
`O03
`
`© 3.
`
`Foreign Nation
`
`O6 O6
`
`
`
`O90Og0000
`49000a
`
`© 210 Land Condemnation
`220 Foreclosure
`CF 230 Rent Lease & Ejectment
`O 240 Torts to Land
`© 245 Tort Product Liability
`@ 290 All Other Real Property.
`
`
`
`© 440 Other Civil Rights
`C441 Voting
`© 442 Employment
`0 443 Housing/
`Accommodations
`C1 445 Amer. w/Disabilities -
`Employment
`O 446 Amer. w/Disabilities -
`Other
`© 448 Education
`
`Habeas Corpus:
`@ 463 Alien Detainee
`C 510 Motions to Vacate
`Sentence
`530 General
`1 535 Death Penalty
`Other:
`& 540 Mandamus & Other
`0 550 Civil Rights
`© 555 Prison Condition
`© 560 Civil Detainee -
`Conditions of
`Confinement
`
`V. ORIGIN (Place an “X”in One Box Only}
`1. Original
`(72 Removed from
`Proceeding
`State Court
`
`O 3
`
` Remanded from
`Appellate Court
`
`0 4 Reinstated or
`Reopened
`
`VI. CAUSE OF ACTION
`
`O 6 Multidistrict
`Litigation -
`Transfer
`
`O 8 Multidistrict
`Litigation -
`Direct File
`
`CHECK YESonlyif demanded in complaint:
`JURY DEMAND:
`O Yes
`XNo
`
`O 5 Transferred from
`Another District
`(specifv)
`Gite the U.S.Civil Statute under which you are filing (Do notcitejurisdictional statutes unless diversity):
`5 USC 1071(b)(1)
`Brief description of cause:
`De Novo Appeal of U.S. Patent & Trademark Office TTAB Decision
`DEMAND$
`VU. REQUESTEDIN ( CHECKIF THIS iS A CLASS ACTION
`COMPLAINT:
`UNDERRULE23, F.R.Cv.P.
`Vi. RELATED CASE(S)
`s
`instructions):
`IF ANY
`(See instructions)
`DATE
`
`
`04/24/2020
`FOR OFFICE USE ONLY
`
`
`
`
`GE
`SIGNATURE OF ATTORNEY OF RECORD :
`
`_ DOCKET NUMBER
`
`
`
`
`
`
`RECEIPT #
`
`AMOUNT
`
`APPLYINGIFP
`
`MAG. JUDGE
`
`Citizen or Subject of a
`Foreign Count
`IV. NATURE OF SUIT (Place an Xx"i
`Clic tions
`110 Insurance
`PERSONAL INJURY
`PERSONAL INJURY
`
`120 Marine
`G 310 Airplane
`() 365 PersonalInjury -
`130 Miller Act
`0 315 Airplane Product
`Product Liability
`© 367 Health Care/
`140 Negotiable Instrument
`Liability
`Pharmaceutical
`150 Recovery of Overpayment
`G 320 Assault, Libel &
`Slander
`& Enforcement of Judgment
`Personal Injury
`151 Medicare Act
`0 330 Federal Employers’
`Product Liability
`C1 368 Asbestos Personal
`152 Recovery of Defaulted
`Liability
`Student Loans
`© 340 Marine
`Injury Product
`© 345. Marine Product
`(Excludes Veterans)
`Liability
`PERSONAL PROPERTY}
`153 Recovery of Overpayment
`Liability
`of Veteran’s Benefits
`350 Motor Vehicle
`370 Other Fraud
`160 Stockholders’ Suits
`G 355 Motor Vehicle
`C371 Truth in Lending
`190 Other Contract
`© 380 Other Personal
`ProduetLiability
`OF 360 Other Personal
`195 Contract Product Liability
`Property Damage
`196 Franchise
`Injury
`O 385 Property Damage
`( 362 PersonalInjury -
`Product Liability
`Medical Malpractice
`
`
`
`
`(7 625 Drug Related Seizure
`of Property 21 USC 881
`© 690 Other
`
`0 422 Appeal 28 USC 158
`© 423 Withdrawal
`28 USC 157
`
`
`
`C} 820 Copyrights
`830 Patent
`(835 Patent - Abbreviated
`New Drug Application
`3 840 Trademark
`©
`
`SOCIAL
`861 HIA (1395ff)
`862 Black Lung (923)
`O 863 DIWC/DIWW (405(g))
`864 SSID Title XVI
`0 865 RSI (405(g))
`
`O 870 Taxes (U.S. Plaintiff
`or Defendant)
`0 871 IRS—Third Party
`26 USC 7609
`
`ABC
`1 710 Fair Labor Standards
`Act
`0) 720 Labor/Management
`Relations
`740 Railway Labor Act
`© 751 Family and Medical
`Leave Act
`© 790 Other LaborLitigation
`C1 791 Employee Retirement
`Income Security Act
`
`0 462 Naturalization Application
`O 465 Other Immigration
`Actions
`
`C) 375 False Claims Act
`& 376 Qui Tam (31 USC
`3729(a))
`CI 400 State Reapportionment
`=] 07 410 Antitrust
`© 430 Banks and Banking
`& 450 Commerce
`O 460 Deportation
`0 470 Racketeer Influenced and
`Corrupt Organizations
`480 Consumer Credit
`(15 USC 1681 or 1692)
`© 485 Telephone Consumer
`Protection Act
`490 Cable/Sat TV
`(J 850 Securities/Commodities/
`Exchange
`890 Other Statutory Actions
`( 891 Agricultural Acts
`893 Environmental Matters
`O 895 Freedom of Information
`Act
`0 896 Arbitration
`& 899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`© 950 Constitutionality of
`State Statutes
`
`€
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 1 of 11 PagelD# 1
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 1 of 11 PageID# 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`HANSCOMB CONSULTING,INC.
`225 Reinekers Lane, Suite 200
`Alexandria, VA 22314
`Virginia Corporation
`
`Plaintiff,
`
`Vv.
`
`HANSCOMB, LIMITED
`900-40 Holly Street
`Toronto CANADA
`Canadian Corporation
`
`Defendant.
`
`NeeeeeeeeeeoeaeoeaeaeaeSe
`
`Civil Action No.:
`
`COMPLAINT FOR APPEAL AND DE NOVO REVIEW OF DECISION OF
`TRADEMARK TRIAL AND APPEAL BOARD
`
`The Plaintiff HANSCOMB CONSULTING,INC.(Plaintiff or HCI) for its Complaint
`
`against Defendant HANSCOMB,LIMITED (Defendantor HL), alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is an action seeking de novo judicial review ofa final decision ofthe
`
`Trademark Trial and Appeal Board (TTABor the Board), an administrative agency of the United
`
`States Patent and Trademark Office (USPTO),in concurrent use proceeding no. 94002720 (the
`
`concurrent use proceeding) under 15 U.S.C. § 1071(b)(1). A copy ofthe final decision is attached
`
`as Exhibit1.
`
`2.
`
`On February 26, 2020, in the concurrent use proceeding, a TTAB paneldissolved the
`
`proceedingandruled Plaintiff's application Serial No. 87/100,385 was accordingly abandoned.
`
`1
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 2 of 11 PagelD# 2
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 2 of 11 PageID# 2
`
`3.
`
`Indissolving the concurrent use proceeding, the TTAB foundthat Plaintiff had
`
`complied with the jurisdictional requirement of 15 U.S.C. § 1052(d) in that the TTAB found
`
`Plaintiff had made lawful useof its mark in commerce before Defendantfiled its application for
`
`registration, Serial No. 86/644,350.
`
`4,
`
`In inducing the concurrent use proceeding,Plaintiff alleged, based upon the
`
`information known toit at the time, that it was entitled to exclusive rights to use the service mark
`
`"HANSCOMB CONSULTING"anddesign (Plaintiff's mark) throughout the United States with
`
`the exception of two zip codes, 60521 (in Hinsdale, IL) and 90071 (in Los Angeles, CA).
`
`However, the TTAB foundthat there wassignificant overlap interritories of use of Plaintiff's
`
`mark and Defendant's mark "HANSCOMB"(Defendant's mark). Onthat basis, rather than
`
`determiningtheterritories to which each party was entitled, the TTAB dissolved the proceeding
`
`and ordered the abandonmentofPlaintiff's application.
`
`THE PARTIES
`
`5.
`
`Plaintiff is a corporation of Virginia having the following address: 225 Reinekers
`
`Lane, Suite 200, Alexandria, VA 22314.
`
`6. On informationandbelief, Defendant is a corporation of Canada having the
`
`following address: 900-40 Holly Street, Toronto, CANADA.
`
`JURISDICTION AND VENUE
`
`7.
`
`Thisis an action for judicial review ofa final decision of the TTAB under Section
`
`21(b)(1) of the Lanham Act, 15 U.S.C. § 1071(b)(1).
`
`8. This Court hasoriginal jurisdiction over this matter pursuantto 28 U.S.C. §§ 1331
`
`and 1338 asit involves claims presenting federal questions under 15 U.S.C. § 1071(b)(1) and
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 3 of 11 PagelD# 3
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 3 of 11 PageID# 3
`
`1121(a). These statutory sections provide that a party to a concurrent use proceeding may have
`
`remedy byacivil action, and in this action, they provide that the court may adjudge that Plaintiff
`
`is entitled to receive a concurrentregistration maturing from Plaintiff's application at issue in the
`
`concurrent use proceeding. Since Defendantis a foreign entity, jurisdiction is mandatory in this
`
`Court pursuant to 15 U.S.C. §1071(b)(4).
`
`9. Venueis properin this district pursuant to 28 U.S.C. § 1391(c)(3) in that Defendant
`
`is not a resident in the United States and thus maybe sued in any judicial district. Given the
`
`jurisdictional requirement of 15 U.S.C. §1071(b)(4) set forth in paragraph 8 above, venuein this
`
`Court is also mandatory.
`
`FACTUAL BACKGROUND
`
`10. Plaintiff provides business consultation servicesin the fields of estimating contract
`
`work, business and economic feasibility studies and data analysis/dissemination, cost analyses,
`
`project risk management, negotiation and settlement of commercialtransactions for third parties,
`
`scheduling services, cost assessmentservices, project managementservicesfor others for
`
`business purposesin the fields of architecture, engineering interior design and urban planning
`
`design(Plaintiff's services).
`
`11. Plaintiff began using Plaintiffs mark on May 21, 2013, in association with some of
`
`the services stated above and by July 11, 2013, wasusing its mark in association with all the
`
`services set forth above. Since July 11, 2013, Plaintiff has used its mark continuously in
`
`interstate commercein association with the serviceslisted in its published application.
`
`12. Defendant filed an application in the USPTO on May28, 2015 seekingto register
`
`Defendant's mark for the sameservicesPlaintiff asserts in paragraph 10 above. Defendant claims
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 4 of 11 PagelD# 4
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 4 of 11 PageID# 4
`
`a date offirst use in interstate commerce in the United States at least as early as January 1, 2000.
`
`Defendantis physically located in Canada and the evidence in the record before the TTAB
`
`establishes that Defendant has not had a physical presence in the United States in over 20 years.
`
`13. At the inception of the concurrent use proceeding, based upon information known to
`
`Plaintiff, Plaintiff asserted that it was entitled to a concurrentuse registration covering the entire
`
`United States except for in the geographical areas defined by twozip codes, 60521 in Hinsdale,
`
`IL and 90071 in Los Angeles, CA.
`
`14.
`
`In response, Defendant claimed that Plaintiff has no right to use its mark anywhere
`
`and that Defendantis entitled to a nationwide unrestricted registration for Defendant's mark.
`
`15. Before the TTAB,trials are conducted as mandated in 37 C.F.R. § 2.121. That
`
`section prescribesthata trial is conducted sequentially electronically, not in any physical
`
`courtroom. The TTABschedulesa trial period within whicha Plaintiff presents its evidence.
`
`Thereafter, the Defendant presents its evidence duringitstrial period. Thereafter, the Plaintiffis
`
`provided a rebuttal period within which to present evidencein rebuttal of Defendant's case.
`
`Then,thepartiesfile trial briefs, may have oral argument, and the TTABrendersits decision.
`/
`
`This procedure was followed in the proceeding before the TTAB.
`
`16.
`
`In another aspect of TTAB procedureprescribed in 37 C.F.R. § 2.123,trial
`
`testimony maybe presented in the form ofan affidavit or declaration pursuant to 37 C.F.R. §
`
`2.20 insteadof via live testimony, and in such instance the adverse party may cross examine a
`
`witnesstestifying by affidavit or declaration.
`
`17. During the proceeding before the TTAB, Plaintiff conducted its trial period by
`
`taking live oral testimonyofall of the witnesses it included in its case. Defendant's Counsel
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 5 of 11 PagelD# 5
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 5 of 11 PageID# 5
`
`cross examined each witness. By contrast, during Defendant's testimony period, Defendant
`
`presented the testimony of 12 witnesses,all residing in Canada, through submission of
`
`declarations near the end of Defendant's testimony period. Plaintiff was provided an opportunity
`
`to cross examine those witnessesduringits rebuttal period, and availeditself of that opportunity.
`
`18. Evidence developed during Plaintiff's rebuttal testimony period demonstrated that
`
`the 12 testimony declarations submitted into evidence by Defendant wereall prepared for the
`
`witnesses by Defendant's Counsel, Thomas O'Rourke. Cross examination of Defendant's
`
`witnesses revealed that in some instances those witnesses had signed declarationsthat included
`
`opinion testimonynecessitating legal training in order to provide such testimony. However, each
`
`of those witnessestestified under cross examination that they had no legal training. Other issues
`
`of credibility were uncovered during the course of cross examinations of the witnesses whichcall
`
`into question the process that was undertaken to prepare the declarations,the veracity of the
`
`declarationsand, thus, the credibility of Defendant's allegations before the TTAB.
`
`19. Plaintiff's trial brief was accompanied by a 30 page Appendix in which Plaintiff
`
`raised numerous objectionsto the evidence presented by Defendant during the course of
`
`discovery and accompanied those objections with motionsto strike the objectionable evidence.
`
`Eachand every one of the numerousobjections wasfully justified under the Federal Rules of
`
`Evidence which are applicable to TTAB proceedings. However, instead of granting Plaintiff's
`
`motionstostrike the evidenceset forth therein, the TTAB denied all of those motions, stating the
`
`following:
`
`"We find no reasonorneedto exclude any ofthe objected-to testimony and materials
`
`outright, but make note ofourability to weigh, assuming any weightis given,all of the evidence
`
`appropriately. The Board ultimately is 'capable of weighing the relevance and strength or
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 6 of 11 PagelD# 6
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 6 of 11 PageID# 6
`
`
`
`weaknessof the objected-to testimony and evidence, including any inherentlimitations, andthis
`
`precludesthe need to strike the testimony and evidence." Decision at 5-6. Objections not
`
`granted by the TTABincludedthose alleging hearsay, opinion testimony by fact witnesses,
`
`irrelevancy and immateriality, and many others. Had the TTABgrantedPlaintiffs motionsto
`
`strike, which Plaintiff asserts should have been done,Plaintiff submits such action would have
`
`materially affected the TTAB's decision, in fact, would haveresulted in a decision favorableto
`
`Plaintiff. '
`
`20. An important issue in the TTAB proceeding centered around the factthat the
`
`evidence showed Defendant's use ofits mark to have been sporadic, a project here and a project
`
`there but with little or no evidence of use in more than a handfulofterritories in the United
`
`States on anybasis that could be described as continuous. Virtually all of Defendant's uses of
`Defendant's mark occurred wellover three years prior to the date of submission ofthe proceeding
`
`to the three administrative judge panel for decision. Under 15 U.S.C. § 1127, a mark "shall be
`
`deemedto be ‘abandonedif... its use has been discontinued with intent not to resumesuchuse.
`
`Intent not to resumeuse may be inferred from circumstances. Nonusefor three consecutive years
`
`shall be prima facie evidence of abandonment.
`
`‘Use’ of a mark meansthe bona fide use of such
`
`mark made in the ordinary course oftrade, and not made merely to reserve a right in a mark."
`
`During the course of the proceedings before the TTAB, Defendant's Chief Financial Officer
`
`Edward Flaxman wasquestioned underoath concerning whether Defendant could provide any
`
`reasonable excuse for Defendant's non-use ofits mark in numerousterritories throughout the
`
`United States. Mr. Flaxman wasaskedeight questions any of which if answeredin the
`
`
`
`' It is noteworthy that in Defendant's trial brief, Defendantdid notraise any objections to
`Plaintiffs evidence. Not one.
`
`6
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 7 of 11 PagelD# 7
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 7 of 11 PageID# 7
`
`affirmative would provide a basis to assert excusable non-use of a mark. Mr. Flaxman answered
`
`each of these questions in the negative leading to the conclusion that Defendant had no excuse
`
`for failure to continue using its mark in numerousterritories throughout the United States. In its
`
`decision, the TTABfailed to address the issues of abandonment and excusable non-use under 15
`
`U.S.C. § 1127. In fact, this issue was not even addressed in the TTAB decision. Instead, the
`
`TTABcredited Defendant with use in numerousterritories throughout the United States based
`
`upon the self-serving testimonyofits President Arthur Maw whichwasvirtually completely
`
`uncorroborated by any documentary evidence.
`
`21.
`
`Increditing Defendant with use of its mark in numerousterritories where
`
`documentary evidence wasnot provided, the TTAB noted Plaintiff's strong objection to crediting
`
`Defendantwith such use based uponsucha thin record, stating the following:
`
`"While HCIis
`
`correct that Maw's declaration lacks somespecificity as to the particular dates of use and services
`
`rendered for each location identified, the numberof locations identified is extensive, covering
`
`many years and the work locations are roughly grouped into decades(the 1980s, 1990s, 2000-
`
`2011, and 2012-present),." Decision at 17. If a party to a TTAB proceeding can prevail by
`
`relying uponself-serving testimony uncorroborated by documents, the legal process for
`
`determining priority of use of trademarks and service markswill be thrown into disarray.
`
`22. As explained above,in inducing a proceeding before the TTAB,based uponthe
`
`information known toit at the time, Plaintiff asserted the right to exclusive use ofits mark
`
`throughout the United States with the exception of geographical areas defined by two zip codes,
`
`one near Chicago, IL and the other in Los Angeles, CA. Instead of carefully considering the
`
`evidence presented before the TTAB and making a determination as to in whichterritories each
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 8 of 11 PagelD# 8
`Case 1:20-cv-00457 Document 1 Filed 04/24/20 Page 8 of 11 PageID# 8
`
`party is entitled to exclusive rights, the TTAB decided that since it found Defendant wasentitled
`
`to exclusive rights in someterritories within the region of the United States besides the two zip
`
`codes that Plaintiff had asserted, this was sufficient basis to rule against Plaintiff, grant judgment
`
`to Defendant, and orderPlaintiff's application abandoned. Plaintiff believes the TTAB had the
`
`duty to consider the evidenceofrecord and determine whichterritories each party is entitled to
`
`and rule on that basis. The TTABfailed to doso.
`
`23.
`
`In fact, in its decision, the TTAB actually agreed with Plaintiff stating the
`
`following:
`
`“Accordingly, in deciding if the proposed geographicrestrictions set forth in HCI's
`
`concurrent use application are warranted, we must determine the extent of HL's use of its mark
`
`prior to HCl's established use dates and whether HCIhascarried its burden of proving that it is
`
`entitled to geographically restrict HL's use of its mark." Decision at 10. However, after so
`
`agreeing with Plaintiff, the TTAB failed to do whatit stated wasits obligation, namely, to
`
`"determine the extent of HL's useof its mark prior to HCI's established use dates ...". Id. Such
`
`an inquiry necessarily requires consideration ofthe status ofterritories where use had occurred by
`
`HL more than three years previous to the date on which the proceeding was forwarded to the
`
`three administrative judge panel for decision, without intention to resumeuse,as required by 15
`
`U.S.C. § 1127,andto refrain from crediting commonlawrights within such territories. The
`
`TTABdid not perform this analysis.
`
`24. In its decision, the TTAB ruled that HCI’s abandonmentofits earlier service mark
`
`application serial no. 85/968,143 during the pendency of Opposition Proceeding no. 91216132,
`
`whichresulted in a judgment in favor of HL, was determinative of the issue of likelihood of
`
`confusion. HCI disagrees. In Opposition Proceeding No. 91216132, a Commissioner’s Decision
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 9 of 11 PagelD# 9
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`wasrendered on June 29, 2016 concerning a purely procedural and non-statutory matter. That
`
`decision gave HCI norecourse but to abandonits application,file a new application andinstitute
`
`a concurrent use proceeding if it wanted to continue toassert its rights. In Opposition Proceeding
`
`no. 91216132, no evidence wasever presented to the TTAB,notrial was conducted and there
`
`wasno adjudication on the merits. As such, HCIrespectfully disagrees that abandonmentofits
`
`earlier application serial no. 85/968,143 foreclosed its ability to assert the there is no likelihood
`
`of confusion between the respective marks ofthe parties.
`
`25. Accordingly, Plaintiff seeks de novo review of the TTAB decision under Section 21
`
`of the Lanham Act, 15 U.S.C. § 1071(b)(1).
`
`CAUSES OF ACTION
`
`REQUEST FOR REVERSAL OF TTAB DECISION IN
`CONCURRENT USE PROCEEDING NO. 94002720
`
`26. Plaintiff alleges and incorporates by reference each and every allegation contained
`in paragraphs 1-25,
`
`27. Plaintiff is dissatisfied with the decision of the TTABthat Plaintiff has no right to
`
`use Plaintiff's mark anywherein the United States and that Defendantis entitled to a nationwide
`
`registration of its mark. The evidence ofrecord before the TTAB demonstrates that Defendant's
`use ofits mark has been rare and sporadic andthat most ofthe common law rights HL may have
`
`acquired in its mark in various locations were subsequently abandonedwith nointent to resume
`
`use, thereby leading to the conclusion that such abandonedrightsfail to establish cognizable
`
`rights at this juncture.
`
`28. Plaintiff believes the TTAB should havefulfilled its obligation as quoted from its
`
`decision in paragraph 23 above to determine the extent of HL's use ofits mark prior to HCI's
`
`9
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 10 of 11 PagelD# 10
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`established use dates and, in keeping with that obligation, make a determinationofthe territories
`
`to which eachparty is entitled. The TTABfailed to do so.
`
`29. Accordingly, the decision of the TTAB dated February 26, 2020 should be reversed
`
`and an Order shouldbe issued directing the USPTOtoregister Plaintiff's and Defendant's
`
`respective marksin territories as determined by this Court in consideration of the evidence
`
`presented before the TTAB andadditional evidence to be presented during this proceeding.
`
`WHEREFORE,Plaintiff praysfor relief as follows:
`
`PRAYER FOR RELIEF
`
`1. That the Court vacate the decision of the TTAB dated February 26, 2020 in Concurrent
`
`Use Proceeding No. 94002720in the matter of Hanscomb Consulting, Inc. v.
`
`Hanscomb Ltd., pursuant to 15 U.S.C. § 1071(b).
`
`2.
`
`That the Court order the USPTOtoregister Plaintiff's and Defendant's respective
`
`marks in mutually exclusive territories to be determined by this Court in
`
`consideration of the evidenceof record before the TTAB andany additional evidence
`
`presented before this Court.
`
`3.
`
`That the Court grant such otherrelief as it deems appropriate.
`
`10
`
`

`

`Case 1:20-cv-00457 Document1 Filed 04/24/20 Page 11 of 11 PagelD# 11
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`Date:
`
`Respectfully submitted,
`
`HANSCOMBCONSULTING,INC.
`
`
`
`By H. Jay Spiegel
`Attorney for Plaintiff
`Virginia Bar No. 20647
`
`H. JAY SPIEGEL & ASSOCIATES
`P.O. Box 11
`Mount Vernon, VA 22121
`(703) 619-0101 - Phone
`(703) 619-0110 - Facsimile
`jayspiegel@aol.com - e-mail
`
`

`

`Case 1:20-cv-00457 Document 1-1 Filed 04/24/20 Page 1 of 19 PagelD# 12
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`
`EXHIBIT 1
`
`

`

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`
`This Opinion is a
`Precedent of the TTAB
`
`Oral Hearing Held On: July 9, 2019
`
`Mailed: February 26, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`Hanscomb Consulting, Inc.
`Vv.
`
`Hanscomb Limited
`
`Concurrent Use No. 94002720
`
`H. Jay Spiegel of H. Jay Spiegel & Associates, for
`Hanscomb Consulting, Inc.
`
`Thomas A. O’Rourke of Bodner & O’Rourke, LLP, for
`Hanscomb Limited.
`
`Before Wellington, Heasley, and Pologeorgis,
`Administrative Trademark Judges.
`
`Opinion by Wellington, Administrative Trademark Judge:
`
`Hanscomb Consulting, Inc. (“HCI”), in the position of plaintiff in this proceeding,
`
`seeks
`
`a
`
`concurrent
`
`use
`
`registration
`
`of
`
`the
`
`composite
`
`mark
`
` (CONSULTINGdisclaimed) on the Principal Register
`
`for
`
`“business consultation, particularly in the fields of estimating contract
`work,
`business
`and
`economic
`feasibility
`studies
`and
`data
`
`

`

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`
`
`
`risk management,
`project
`analyses,
`cost
`analysis/dissemination,
`negotiation and settlement of commercial transactions for third parties,
`scheduling services, cost assessment
`services; project management
`services for others for business purposes in the fields of architecture,
`engineering interior design and urban planning design”
`
`in International Class 35.1 HCIfiled its application on July 12, 2016 and claimsfirst
`
`use of the mark anywhere and in commerce as of July 11, 2013. HCI seeks
`registration of its mark for‘the services “throughout the United States of America
`
`with the exception of the following geographical areas: 1) Within zip code 60521 in
`
`Hinsdale, IL; and 2) Within zip code 90071 in Los Angeles, CA.”
`
`HCI concedesin its application that its use of HANSCOMBis notexclusive; that
`
`Hanscomb Limited (“HL”) is the ownerof an application (Serial No. 86644350,filed
`
`May 28, 2015) to register the mark HANSCOMBinstandard characters for identical
`
`_ services;? and that HL “may have established common lawrights in [the geographic
`
`areas defined by Illinois and California zip codes] for its use of the service mark
`
`HANSCOMBinassociation with services similar to those of [HC]].” However, HCI
`
`contendsin its application that HL “has no rights to the mark HANSCOMBbeyond
`
`those limited geographical areas.”
`
`HLfiled its application prior to HCl’s filing date and claims use dates earlier than
`
`those claimed by HCI. While HL’s earlier filing date might have led to HL’s
`
`application being noted as a prior pending application and potential bar to
`
`! Application Serial No. 87100385.
`2 Application Serial No. 86644350 is based on a claim offirst use of the mark anywhere and
`in commerce as of January 1, 2000, and a claim that the mark has acquired distinctiveness
`pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). On October 4, 2016, the
`application was published for opposition. No opposition wasfiled.
`
`

`

`Case 1:20-cv-00457 Document 1-1 Filed 04/24/20 Page 4 of 19 PagelD# 15
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`
`
`
`registration for HCI during prosecution, HCI’s acknowledgmentin its application
`that HL was an exception to HCI’s rights and its allegation of first use before HL’s
`
`filing date meant the USPTO could approve HCI’s concurrent use application for
`
`publication for opposition. See TRADEMARK MANUAL OF EXAMINING PROCEDURE
`
`(TMEP) § 1207.04(c) (October 2018). When the Office did so, HL filed a notice of
`
`opposition (No. 91232560 (the “560 Opposition”)) against HCI’s application.
`
`The Boardinstituted this concurrent use proceeding and allowed HL timetofile
`
`an answer pursuant to Trademark Rule 2.99(d)(2), 37 C.F.R. § 2.99(d)(2).3 In the
`
`institution order,
`
`the Board dismissed the ’560 Opposition proceeding without
`
`prejudice in favor of this concurrent use proceeding, thus leaving the question of
`
`HCTl’s entitlement, if any, to a concurrent registration to be decided in this concurrent
`
`use proceeding. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
`
`(TBMP) § 1113.01 (2019) (‘When an opposition to a concurrent use applicationis filed
`
`by a party specified in the application as an exception to applicant’s claim of exclusive
`use, the opposition may be dismissed without prejudice in favor of a concurrent use
`
`proceeding. This action may be taken by the Board uponits owninitiative, or upon
`
`motion. .
`
`.”) (footnote omitted).
`
`In its answerto the notice instituting this proceeding, HL claimed ownership of
`
`the application Serial No.
`
`86644350 seeking a
`
`eeographically-unrestricted
`
`registration of the mark HANSCOMBin standard characters on the Principal
`
`31 TTABVUE.
`
`

`

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`
`
`
`Register in connection with services identical to those recited in HCI’s application.
`
`HL also alleges in its answerthatit “offers a wide variety