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Estta1068478 07/15/2020 in the United States Patent And Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1068478 Filing date: 07/15/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91256209 Party Plaintiff Wargaming.net Limited Liability Company Correspondence JILL M PIETRINI Address SHEPPARD MULLIN RICHTER & HAMPTON LLP 1901 AVENUE OF THE STARS SUITE 1600 LOS ANGELES, CA 90067 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], MDan- [email protected], [email protected], [email protected], [email protected] 310-228-3700 Submission Motion to Suspend for Civil Action Filer's Name Paul A. Bost Filer's email [email protected] Signature /Paul A. Bost/ Date 07/15/2020 Attachments Motion to Suspend Combined Notice of Opposition - BLITZ TEAM-1.pdf(178316 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM-2.pdf(395815 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM- 3a.pdf(6011927 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM- 3b.pdf(1740097 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM- 3c.pdf(2510919 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM- 4a.pdf(4244523 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM- 4b.pdf(2866183 bytes ) Motion to Suspend Combined Notice of Opposition - BLITZ TEAM- 4c.pdf(3371734 bytes ) Docket No. 64MV-310566 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Matter of Application Nos. 79/261,988 and 79/262,236 for the mark BLITZ TEAM (Stylized) and BLITZ TEAM in Class 42 Opposition No. 91-256209 OPPOSER’S MOTION TO SUSPEND Wargaming.net Limited Liability Company, COMBINED NOTICE OF OPPOSITION Opposer, vs. Limited Liability Company “BlitzTeam,” Applicant. Pursuant to 37 C.F.R. § 2.177(a) and TBMP §510, Opposer Wargaming.net Limited Liability Company (“Opposer”), by and through its counsel, hereby moves to suspend the above proceedings on the grounds that Opposer, on the one hand, and Applicant Limited Liability Company “BlitzTeam” (“Applicant”), on the other, are engaged in a civil case that will be dispositive of these proceedings. I. Factual Background On March 25, 2020, Opposer filed a complaint against Applicant for infringement of Opposer’s intellectual property. Among other things, the complaint requests cancellation of Applicant’s trademark applications at issue in these proceedings, namely, Serial Nos. 79/261,988 and 79/262,236 to register the marks BLITZ TEAM (Stylized) and BLITZ TEAM, respectively (the “Applications”). The case is pending in the United States District Court for the Central District of California (the “Civil Action”). The Civil Action is designated as Case No. 2:20-cv- -1- 28763. A true and correct copy of the complaint in the Civil Action is attached hereto as Exhibit A. Opposer has served the complaint on Applicant by means of the Hague Convention. After the filing of the Civil Action, the Applications were published for opposition. In order to preserve its rights and based on the allegations pleaded in the combined notice of opposition, Opposer initiated these proceedings opposing registration of the Applications. 1 TTABVUE. Specifically, the proceedings are based upon Opposer’s prior rights in BLITZ- formative marks and opposes registration of the Applications based on said rights. Id. II. THE MOTION TO SUSPEND SHOULD BE GRANTED Under 37 C.F.R. § 2.117(a), “[w]henever it shall come to the attention of the Board that parties to a pending case are engaged in a civil action which may be dispositive of the case, proceedings before the Board may be suspended until termination of the civil action.” See also TBMP §510.02(a) (“Unless there are unusual circumstances, the Board will suspend proceedings in the case before it if the final determination of the other proceeding may have a bearing on the issues before the Board.”) (emphasis added). The Civil Action will be dispositive of the proceedings, as the issues to be determined by the Board here are identical (or substantially similar) to those that the United States District Court will decide in the Civil Action. In addition, certain remedies Opposer seeks in the Civil Action – namely, that the Court (1) find that Applicant’s use of BLITZ TEAM infringes Opposer’s prior rights and (2) cancel the Applications – encompass and supersede the remedies Opposer seeks in the proceedings. Therefore, the issues in the consolidated proceedings are virtually identical to those to be litigated in the Civil Action. See Other Telephone Co. v. Connecticut Nat’l Telephone Co., 181 U.S.P.Q. 125, 126-27 (TTAB 1974): -2- [T]he copy of the complaint in the civil action which opposer has furnished the Board shows that opposer, as plaintiff therein, is requesting that the Court determine the respective rights of the parties to use in commerce the designation ‘THE OTHER TELEPHONE COMPANY’ or any mark confusingly similar thereto. It is further noted that opposer is seeking, inter alia, to enjoin applicant from using the stated designation or any word or words confusingly similar thereto in connection with its telephonic communication services. It is clear therefore that the final determination of the civil suit will directly affect the resolution of the issue of likelihood of confusion which is involved in the proceeding before the Trademark Trial and Appeal Board. Applicant will presumably deny the controversial allegations in Opposer’s complaint. That said, the issue need not be joined in the Civil Action for Petitioner’s motion to be granted: The fact that the defendant in the action has not yet served its answer does not serve to vitiate the effectiveness of the complaint. That is to say, the civil suit is pending and will be considered until the Board is informed that it has either been dismissed or been finally ruled upon. The only question for determination, therefore, is whether the outcome of the civil action will have a bearing on the issues involved in the opposition proceeding. Id. at 126. While the Board is just as capable of deciding whether there is a likelihood of confusion between Opposer’s and Applicant’s respective marks as the United States District Court deciding the Civil Action, it should not do so for the three reasons outlined below. First, if the Board suspends the proceedings and allows the United States District Court to rule first, the United States District Court’s decision would be binding on the Board under the doctrines of res judicata and collateral estoppel. See Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1569-73 (Fed. Cir. 1983) (collateral estoppel); Midland Cooperatives, Inc. v. Midland International Corp., 421 F.2d 754, 758-59 (C.C.P.A. 1970) (res judicata). By contrast, if the Board decides these proceedings before the United States District Court adjudicates the Civil Action, its findings are not necessarily binding upon the United States District Court. Notably, the Board may only decide issues relating to the registration of -3- trademarks. 15 U.S.C. § 1119; PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75, 79 (1st Cir. 1996). Therefore, in the interest of judicial economy, the Board should suspend the proceedings. See TBMP § 510.02(a) (“Although the Supreme Court held that issue preclusion can be based on a decision by the Board in a case in which the ordinary elements of issue preclusion are met, the Board’s policy to suspend in favor of a civil action has not changed. 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.”). Second, allowing these matters to be resolved by the Civil Action promotes judicial efficiency and encourages the parties themselves to resolve this dispute in the most efficient matter possible. The fundamental issues in these consolidated proceedings are essentially identical to – and encompassed within – certain of the issues in the Civil Action, as described above. Indeed, the Civil Action need only have a bearing on the Board’s decisions with respect to the proceedings to justify a suspension. See supra, TBMP § 510.02(a). If the proceedings are suspended pending the disposition of the Civil Action, the parties will avoid unnecessarily expending resources fighting the proverbial “battle” on two “fronts” instead of just one. Thus, suspending the proceedings will not prejudice either party, as it will allow the parties to resolve their entire dispute while expending the least amount of resources. Similarly, and as addressed above, the United States District Court in the Civil Action will ultimately determine not only Applicant’s rights to registration of the Applications, but use of Applicant’s BLITZ TEAM marks and other issues not before the Board. The United States District Court Action will resolve all issues before the Board and then some, whereas the converse is not true. -4- Third, the proceedings should be suspended to avoid inconsistent rulings between the Board and the United States District Court, especially since the United States District Court’s decision will ultimately be binding on the Board. III. CONCLUSION For the reasons stated herein, the Board should suspend the proceedings pending the outcome of the Civil Action. Respectfully submitted, Dated: July 15, 2020 /Paul A. Bost/ Jill M. Pietrini Paul A. Bost SHEPPARD MULLIN RICHTER & HAMPTON LLP 1901 Avenue of the Stars, Suite 1600 Los Angeles, California 90067-6017 (310) 228-3700 Attorneys for Opposer Wargaming.net Limited CERTIFICATE OF E-FILING I hereby certify that this OPPOSER’S MOTION TO SUSPEND COMBINED NOTICE OF OPPOSITION is being transmitted electronically to Commissioner of Trademarks, Attn: Trademark Trial and Appeal Board through ESTTA pursuant to 37 C.F.R.
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