ESTTA1080897 09/10/2020 in the UNITED STATES PATENT and TRADEMARK OFFICE BEFORE the TRADEMARK TRIAL and APPEAL BOARD Proceeding

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1080897 Filing date: 09/10/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91246020 Party Defendant Edgework Imports Inc. DBA KnifeKing Correspondence ROBERT M WARD Address 3455 PEACHTREE RD NE 5TH FLOOR ATLANTA, GA 30326 UNITED STATES Primary Email: [email protected] 404-606-6480

Submission Other Motions/Papers Filer's Name Robert M. Ward Filer's email [email protected], [email protected] Signature /Robert M. Ward/ Date 09/10/2020 Attachments final as filed Applicant Reply Brief re Motion to Suspend .pdf(160385 bytes ) Third party Usages Knife King .pdf(3314601 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD

247 Tools, Ltd., ) a UK corporation, ) ) Opposition No. 91246020 Opposer, ) Serial No. 87/812280 ) Mark: KNIFE KING v. ) ) Edgework Imports Inc., ) d/b/a KnifeKing, ) a Georgia corporation, ) ) Applicant. )

APPLICANT'S REPLY BRIEF REGARDING ITS MOTION TO SUSPEND PROCEEDINGS PENDING TERMINATION OF A CIVIL ACTION

Unfortunately, the Opposer has the salient facts chronologically backwards.

The Record shows that it was Opposer who had filed the present motion for sanctions after being warned by Applicant that federal litigation for a Declaratory Judgment of non-infringement -- i.e., to dispose of Opposer’s repeated threats of suit -- was in the offing.

I. Opposer Misstates the Seminal Facts.

Oddly, the Opposer has alleged that: “Applicant’s litigation was brought to escape the Board’s decision on the motion for sanctions.” (emphasis added). But, however, the Board has not, as yet, decided the pending motion for sanctions.

1 Specifically, the Opposer’s Motion for Sanctions was filed on September 4,

2020, and the eminent filing of a Civil Action was disclosed in all good faith to

Opposer more than two-weeks prior, and on August 19th, as follows:

______Mr. Dewitty,

Here is a repeat of my email of the 13th.

Mr. Dewitty,

As we discussed the other day, my analysis is that our clients would be best served by a mutual acknowledgement that neither party would be able to prevent the other from using the contested “Knife King" mark.

Attached hereto are multiple references from a prior third-party (i.e., senior) user of the “Knife King” mark -- as early as 1990 and continuing to this day — all for use on cutlery items. Accordingly, your client has no exclusive rights.

My suggestion continues to be that the parties simply “walk away”.

Best wishes,

Bob

I would prefer not to have to bring the matter to the attention of the federal courts. But however, your client has threatened to bring “legal proceedings” against Edgework, who thus has a perfect right to protect itself.

Please provide a substantive response.

Thank you,

Bob Ward

______

The Opposer’s dilatory “response” was again non-substantive:

“Mr. Ward -- I presented your message to my client, which resulted in no response.

Our previous offer indicated a monetary settlement would be of inter- est to my client. A "walk away" arrangement would likely not be of in- terest, however I am still waiting for a full response.

Thanks. Robert ______

Later on August 19th, the Opposer responded further (but without legal or fac- tual justification, or indeed any explanation whatsoever) that Opposer would continue to attempt to leverage this Board for the purpose of extorting a monetary tribute from Applicant:

______

Mr. Ward, we are not under any obligation1 as this time to explain our reasons for payment requests. If you have a counteroffer, we will consider in due course. ______

II. The Law – Judicial Economy Would Favor Suspension.

The TBMP, § 510.02(a), entitled “Suspension”, states:

1 It is obvious that Magistrate Judge Johnson of the Northern District of Georgia, when sitting as a Mediator, would indeed require that the parties justify their re- spective positions, and especially demands for the payment of monies.

3 A civil action may involve other matters outside Board jurisdiction and may consider broader issues beyond right to registration and, therefore, judicial economy is usually served by suspension.

***

If there is pending, at the time when the question of suspension of proceedings before the Board is raised, a motion that is potentially dispositive of the case, the potentially dispositive motion may be decided before the question of suspension is considered. The purpose of this rule is to prevent a party served with a potentially dispositive motion from escaping the motion by filing a civil action and then moving to suspend before the Board has decided the potentially dispositive motion. However, the Board, in its discretion, may elect to suspend without first deciding the potentially dispositive motion.

(emphasis added).

So it should be here, in all equity.

III. The Controversy Should be Completely Resolved in District Court, and on a Full Record.

The Opposer alleges herein that it supposedly has “superior rights” against the

Applicant. In fact, Opposer does not have “superior rights" against anyone in and to the subject “Knife King” mark. Four-square, and if anything at all, the Opposer is merely a non-consequential Intermediate User.

In good faith, the applicant sent to Opposer's lawyer detailed evidence show- ing that the “Knife King” mark has been in used on the subject goods via the Internet and in Commerce in the United States, since at least as early as 1990. (See Exhibit

A hereof). Accordingly, the interloping Opposer has no substantive rights herein, hence has no standing to oppose in this proceeding, and certainly has no basis for

4 using the Board in its the attempted extraction of monies. Wherefore, it is duly ex- pected that these facts will be yet further ventilated in federal court before the Hon- orable District Judge Amy Totenberg.

Moreover, and finally, Opposer's opposition is based on alleged “priority”, the proof of which (if any) is to be found within its own files.. But, however, Opposer’s discovery requests are directed to the manifest irrelevancy, and resultant abuse, of demanding virtually every scrap of paper regarding the finances of the Applicant2.

Wherefore, for this yet additional reason, the present proceeding should -- in the informed discretion of the Board and to facilitate substantive justice -- be sus- pended pending a full hearing on the merits in District Court, and the same is respectfully urged.

Respectfully submitted this 10th day of September, 2020,

/Robert M. Ward/ Robert M. Ward (Georgia Bar 775401) Reg. No. 26,517 3455 Peachtree Road NE, 5th Floor Atlanta, GA 30326 Telephone: (404) 606-6480 [email protected]

Attorney for Applicant

2 Moreover, and despite Opposer's continual attempts to acquire every scrap of fi- nancial information from its alleged competitor, the Opposer has produced nothing – i.e., in continuing to hide behind a so-called Initial Disclosure condition precedent -- when its own so-called “Initial Disclosures” were grossly non-substantive.

CERTIFICATE OF SERVICE

I do hereby certify that on the date set forth above a true and complete copy of the foregoing document has been served on the opposing party’s counsel of record:

Robert DEWITTY DeWitty and Associates, Chtd. 330 Pennsylvania Avenue, #302 Washington, D.C. 20003 (202)-380-9609 [email protected]

/Robert M. Ward/ Robert M. Ward

Attorney for Applicant

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