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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA563779 Filing date: 10/08/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92057318 Party Defendant Federated Retail Holdings, Inc. Correspondence ANTHONY F LO CICERO Address AMSTER ROTHSTEIN & EBENSTEIN LLP 90 PARK AVENUE NEW YORK, NY 10016 UNITED STATES Submission Motion to Suspend for Civil Action Filer's Name Anthony F. Lo Cicero Filer's e-mail [email protected] Signature /Anthony F. Lo Cicero/ Date 10/08/2013 Attachments Motion Kaufmann's.pdf(2678893 bytes ) In the Matter of: 33765/1212 Registration No.: 1,994,579 Registered: August 20, 1996 Service Mark: KAUFMANN'S International Class: 42 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD --------------------- -x Strategic Marks, LLC, Petitioner, Cancellation No. 92057318 v. MOTION TO SUSPEND Macy's Retail Holdings, Inc., Registrant. --------------------- -x Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. § 510.02(a), registrant Macy's Retail Holdings, Inc. ("Macy's") hereby moves to suspend Cancellation No. 92057318 until final resolution of a civil action currently pending in San Francisco in the U.S. District Court for the Northern District of California among Petitioner, Macy's parent company Macy's, Inc., and Macys.com, Inc. ("the Civil Action").! The Civil Action, entitled Macy 's, Inc. and Macys. com, Inc. v. Strategic Marks, LLC, No. 11-6198 SC, is expected to have a bearing on this proceeding. Background This proceeding between Macy's and petitioner Strategic Marks, LLC ("Strategic Marks") is one piece of a wide-ranging dispute contesting ownership and use of more than twenty (20) well-known department store marks that Macy's, its related companies, and its 1 The plaintiffs in the Civil Action, Macy's, Inc. and Macys.com, Inc., are related companies to registrant Macy's. Registrant Macy's and Macys.com, Inc. are both wholly-owned subsidiaries ofMacy's, Inc. under Sections 5 and 45 of the Trademark Act, 15 U.S.C. §§ 1055, 1127. 1 556765.1 predecessors-in-interest have used for decades, and indeed, many for well over a century. The dispute began when Strategic Marks filed eight federal trademark applications for certain department store brands, all of which are the subject of proceedings before this Board, and all of which are in suspension pending the outcome of the Civil Action. This proceeding relates to one of twelve (12) additional department store brands that Strategic Marks filed for after issue in the Civil Action was joined, and so is not directly included in the Civil Action. The Civil Action The Civil Action involves eight of the disputed marks: ABRAHAM & STRAUS, A&S, THE BROADWAY, JORDAN MARSH, BULLOCK'S, ROBINSONS-MA Y, FILENE'S, and THE BON MARCHE, Macy's brought the Civil Action against Strategic Marks in December 2011 as a result of Strategic Marks' attempted misappropriation of those eight (8) well-known retail store marks, attempted misappropriation of the goodwill associated with those marks, and false advertising as to Strategic Marks' connection with those venerable stores. Activities complained of by Macy's include the wrongful filing of intent-to-use applications by Strategic Marks, filing of false statements of use, and creation of a website at www.retrodepartmentstores.com where Strategic Marks misappropriates the names, logos and histories of the famous stores-even misappropriating vintage television commercials and the fonts and logos the brands were known for-all in violation of Macy' s rights. Strategic Marks countered that Macy's had abandoned the marks, that Strategic Marks now owns all of the marks by virtue of its applications, and that Macy's is infringing its rights in those of the marks in which it has obtained registrations. Copies of Macy' s Complaint and 2 556765.1 Strategic Marks' First Amended Answer and Counterclaims are annexed hereto as Exhibits A and B respectively. The Civil Action will resolve key issues of use and ownership of the marks, and those determinations will have a bearing on this proceeding. In particular, the Civil Action includes an assessment of the parties' respective uses of the marks and a determination of whether Macy's activities constitute abandonment of the marks. Although the KAUFMANN'S mark is not at issue in the Civil Action, the very same determinations of use and abandonment of the marks in the Civil Action will be directly relevant to whether Strategic Marks or Macy's has rights in and to the KAUFMANN'S mark at issue in this proceeding. The Civil Action is currently in its final stages; discovery is complete, and trial is scheduled to begin on January 6,2014. A copy of the case docket is annexed hereto as Exhibit C. Additional Proceedings Numerous Trademark Trial and Appeal Board proceedings relating to the marks at issue in the Civil Action already have been suspended. These proceedings include cancellation proceedings relating to existing registrations for FILENE'S (T.T.A.B. No. 92053634), THE BROADWAY (T.T.A.B. No. 92055739), THE BON MARCHE (TT.A.B. No. 92055742), and ROBINSON'S (T.T.A.B. No. 92056018), and opposition proceedings relating to pending applications for JORDAN MARSH (T.T.A.B. No. 91200637), MAY COMPANY eTTA.B. No. 91200638), and BULLOCK'S DEPARTMENT STORE eTTA.B. No. 91200640). In mid-May 2013, after the Civil Action had been pending for approximately one-and­ one-half (1 Yz) years, Strategic Marks filed applications to register an additional twelve Macy's marks (among them KAUFMANN'S) despite knowledge ofMacy's pre-existing rights 3 556765.1 (including product sales and pending federal trademark applications). Shortly thereafter, Strategic Marks filed numerous additional petitions to cancel Macy's registrations not directly at issue in the Civil Action. In addition to filing this cancellation proceeding, Strategic Marks has filed petitions to cancel Macy's registrations for: HECHT'S (T.T.A.B. No. 92057277); BURDINE'S (T.T.A.B. No. 92057283); MARSHALL FIELD'S (T.T.A.B. Nos. 92057315 and 92057773); MEIER & FRANK (T.T.A.B. No. 92057278); 1. MAGNIN (T.T.A.B. No. 92057364); GOLDSMITH'S (T.T.A.B. No. 92057473); and FOLEY'S (T.T.A.B. No. 92057474). Issues of ownership, use and abandonment of the marks are common to each of these cases, and simultaneously with this motion, Macy's is filing similar motions to suspend each of these proceedings pending final disposition of the Civil Action. Legal Argument Pursuant to the rules governing practice in trademark cases before the T.T.A.B., the Board has authority to suspend this proceeding in view of the pending Civil Action. Rule 2.117(a) provides: Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action or another Board proceeding which may have a bearing on the case, proceedings before the Board may be suspended until termination of the civil action or the other Board proceeding. 37 C.F.R. § 2.117(a) (emphasis added); see also T.B.M.P. § 510.02(a); 6 McCarthy on Trademarks and Unfair Competition § 32:47 (4th ed. updated June 2011) ("It is standard procedure for the Trademark Board to stay administrative proceedings pending the outcome of court litigation between the same parties involving related issues."); New Orleans Louisiana Saints LLC v. Who Dat?, Inc., 2011 TTAB LEXIS 208, at *6-8 (T.T.A.B. July 22, 2011) ("[T]he 4 556765.1 civil action does not have to be dispositive of the Board proceeding to warrant suspension, it need only have a bearing on the issues before the Board."). In this instance, key issues in the Civil Action will likely have a bearing on this cancellation proceeding. The determination of which party owns the marks and associated goodwill, and whether Macy's abandoned the marks, will all be relevant to ownership of the KAUFMANN'S mark as many of the operative facts are similar or the same, including the facts surrounding Macy's development of its Macy's "Heritage Shops" on the macys.com website (at which Macy's sells t-shirts and tote bags bearing all of the marks, including KAUFMANN'S), and Strategic Marks' creation of its www.retrodepartmentstores.com website. During the initial conference regarding discovery issues in this cancellation proceeding, the parties reached a tentative agreement regarding use of discovery from the Civil Action because much of it is expected to be duplicative. Finally, suspension of this cancellation proceeding would not be prejudicial since it is now in a very preliminary stage. The discovery period has recently opened, but no discovery has been served or noticed by either party. The Civil Action, on the other hand, is nearing conclusion, with trial scheduled to begin on January 6, 2014. Thus, suspension pending disposition of the Civil Action will not cause undue delay or prejudice. During the Rule 26(f) conference in this proceeding, counsel for Macy's sought agreement to suspend this proceeding. Counsel for Strategic Marks refused. / / / / 5 556765.1 Conclusion For the foregoing reasons, it is respectfully requested that this motion be granted and that this cancellation proceeding be suspended pending final disposition of the Civil Action. Respectfully submitted, AMSTER, ROTHSTEIN & EBENSTEIN LLP Attorneys for Macy's Retail Holdings, Inc. 90 Park A venue New York, New York 10016 (212) 336-8000 Dated: New York, New York By: ......... """--h~-'--_________ October 8, 2013 Chester Rothstein David P.
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