Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA708083 Filing date: 11/11/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92055368 Party Defendant World Chess Museum, Inc dba World Chess Hall of Fame Correspondence MATTHEW G MINDER Address BRYAN CAVE LLP ONE METROPOLITAN SQUARE, 211 NORTH BROADWAY SUITE 3600 ST LOUIS, MO 63102 UNITED STATES [email protected], [email protected], [email protected] Submission Motion for Summary Judgment Filer's Name Matthew G. Minder, Esq. Filer's e-mail [email protected],[email protected] Signature /Matthew G. Minder/ Date 11/11/2015 Attachments TTAB-Notice_of_Disposition_and_Motion_for_Judgment.pdf(75190 bytes ) Ex A - D Nev Doc 91 - Order on Judgment by Default.pdf(173191 bytes ) Ex B - D Nev Doc 32-1 - WCHOF First Amended Complaint.pdf(476298 bytes ) Ex C - Compressed D Nev Doc 15 - WCF Answer and Counter- claims.pdf(2849591 bytes ) Ex D - WCF Sec 15 - 10-09-2015.pdf(1933612 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
World Chess Federation, Inc., ) ) Petitioner/Counterclaim ) Defendant, ) ) Cancellation No. 92,055,368 v. ) Registration No. 2,551,246 ) World Chess Museum, Inc. d/b/a ) World Chess Hall of Fame, ) ) Registrant/Counterclaimant. )
COMBINED NOTIFICATION OF DISPOSITION OF THE DISTRICT OF NEVADA CIVIL ACTION AND MOTION FOR SUMMARY JUDGMENT OR DISMISSAL
Registrant/Counterclaimant World Chess Museum, Inc. d/b/a World Chess Hall of Fame
(“WCHOF”) submits this Combined Notification of Disposition of the District of Nevada Civil
Action and Motion for Summary Judgment or Dismissal. In support of this filing, WCHOF states as follows:
I. NOTIFICATION OF DISPOSITION OF DISTRICT OF NEVADA CIVIL ACTION
1. On September 9, 2013, the Trademark Trial and Appeal Board (“Board”)
suspended this proceeding pending final disposition of the federal civil action in the District of
Nevada, World Chess Museum, Inc. d/b/a World Chess Hall of Fame v. World Chess Federation,
Inc. and Stan Vaughan, Case No. 2:13-cv-00345-RCJ-GWF, United States District Court,
District of Nevada (“Civil Action”). [Doc. 44]. 2. On September 24, 2015, the District of Nevada entered an order granting
judgment by default1 against World Chess Federation, Inc., the Petitioner and Counterclaim
Defendant in this proceeding (“WCF”). A copy of the District Court’s order is attached hereto as
Exhibit A (the “Judgment”) and incorporated by reference herein.
3. The deadline for WCF to appeal the Judgment was October 26, 2015, and no
appeal having been filed, the Judgment became final as of that date. Fed. R. App. P. 4; TBMP
§ 510.02(b).
4. Accordingly, WCHOF hereby notifies the Board that the Civil Action has been
finally determined, and requests further appropriate action be taken in this proceeding, as set
forth below.
II. MOTION FOR SUMMARY JUDGMENT OR DISMISSAL
Registrant/Counterclaimant WCHOF respectfully moves the Board for summary
judgment, or in the alternative, for dismissal of WCF’s claims with prejudice. First, Petitioner
WCF’s claims for cancellation were resolved, and are now barred, by the Judgment in the Civil
Action under the doctrine of res judicata or claim preclusion. Second, WCF’s claims for
Likelihood of Confusion/Reverse Confusion and for Dilution should be stricken or dismissed
because WCF added those claims without the Board’s leave or WCHOF’s consent. Finally,
WCF’s claims for Misrepresentation of Source should be dismissed for failure to state a claim on
which relief may be granted.
A. BACKGROUND
Registrant WCHOF is the owner of all right, title and interest in, to, and under the
WORLD CHESS HALL OF FAME® mark, including U.S. Reg. No. 2,551,246, which
1 WCF’s default in the Civil Action was based on its failure to retain new counsel to pursue the action, as directed by the Court after withdrawal of WCF’s prior counsel.
2 Plaintiff’s predecessor in interest first began using at least as early as April 2001. Registrant
WCHOF uses the WORLD CHESS HALL OF FAME® mark on and in connection with a variety of non-profit services and goods, including, but not limited to, exhibition services, retail services, and promotional merchandise such as home goods and glassware. Exhibit A at 1-2
The dispute at the center of this action began when Petitioner WCF announced, on July 8, 2011, that “the World Chess Federation Hall of Fame is now open in Las Vegas,” and Registrant
WCHOF demanded that WCF cease its infringement of the WORLD CHESS HALL OF
FAME® mark.
WCF filed its initial Petition to Cancel on March 14, 2012. [Doc. 1]. That petition was dismissed with leave to amend on June 1, 2012. [Doc. 9]. WCF then filed the First Amended
Petition on January 31, 2013, adding certain claims, as permitted by the Board pursuant to Fed.
R. Civ. P. 15(a)(2). [Doc. 9]. On February 20, 2013, the Board entered an Order sua sponte disposing of certain claims of the First Amended Petition as follows: (1) dismissing the claim for False Suggestion of a Connection, with leave to replead; (2) dismissing the claim for
Geographical Indication, with prejudice; (3) finding the Fraud claim to be sufficiently pleaded;
(4) dismissing the claim for Collective and Certification Marks, with prejudice; and (5) dismissing the claim for Misrepresentation of Source, with leave to replead. [Doc. 23].
WCF then timely filed the Second Amended Petition. However, without seeking leave of the Board or consent of WCHOF, WCF included additional claims directed to “Likelihood of
Confusion/Reverse Confusion” and “Dilution by Blurring or Tarnishment.” Registrant moved to dismiss these new claims based on the absence of leave or consent, which motion the Board denied without prejudice in light of the suspension of proceedings pending the Civil Action.
[Doc. 44].
3 As understood by Registrant WCHOF, Petitioner WCF’s currently pending claims in this
proceeding are for: (1) Fraudulent Registration; (2) Likelihood of Confusion/Reverse Confusion
with “World Chess Federation Hall of Fame” and/or “World Chess Federation”; (3)
Misrepresentation of Source; and (4) Dilution of “World Chess Federation Hall of Fame.” [Doc.
27].
Registrant WCHOF’s counterclaim for cancellation of U.S. Reg. No. 3,695,083 for
WORLD CHESS FEDERATION, filed April 19, 2013, states claims for: (1) Mere
Descriptiveness Without Acquired Distinctiveness; (2) Likelihood of Confusion with WCHOF’s
WORLD CHESS HALL OF FAME® mark; (3) Lack of Ownership; (4) Fraudulent Registration; and (5) Lack of Use in Commerce. [Doc. 30].
Registrant WCHOF’s First Amended Complaint in the Civil Action stated claims for: (1)
Trademark Infringement of WCHOF’s WORLD CHESS HALL OF FAME® mark; (2) Unfair
Competition and False Designation of Origin related to WCHOF’s WORLD CHESS HALL OF
FAME® mark; (3) Statutory and Common Law Trademark Infringement and Unfair
Competition related to WCHOF’s WORLD CHESS HALL OF FAME® mark; (4) Statutory and
Common Law Dilution related to WCHOF’s WORLD CHESS HALL OF FAME® mark; (5)
Declaratory Judgment that WCHOF’s WORLD CHESS HALL OF FAME® mark is valid and enforceable, is senior to WCF’s rights, and does not infringe WCF’s rights; (6) Cancellation of
WCF’s U.S. Registration No. 3695083 for WORLD CHESS FEDERATION; (7) Civil Liability for False or Fraudulent Registration; (8) Cancellation of WCF’s Nevada State Registration No.
E0215832012-6 for WORLD CHESS FEDERATION HALL OF FAME; and (9) False
Advertising. See Exhibit B.
4 Petitioner WCF’s Counterclaim in the Civil Action asserted claims for: (1) Trademark
Infringement of WCF’s alleged “World Chess Federation” and/or “World Chess Federation Hall
of Fame” marks; (2) Unfair Competition and False Designation of Origin related to WCF’s
alleged “World Chess Federation” mark; (3) Statutory and Common Law Trademark
Infringement and Unfair Competition related to WCF’s alleged “World Chess Federation” mark;
and (4) Punitive Damages. See Exhibit C.
The District of Nevada entered the Judgment in the Civil Action on September 24, 2015,
which Judgment became final on October 26, 2015. The Judgment held in favor of Registrant
WCHOF and against Petitioner WCF on WCHOF’s claims as to: (1) Trademark Infringement of
WCHOF’s WORLD CHESS HALL OF FAME® mark; (2) Unfair Competition and False
Designation of Origin related to WCHOF’s WORLD CHESS HALL OF FAME® mark; (3)
State Statutory and Common Law Trademark Infringement and Unfair Competition related to
WCHOF’s WORLD CHESS HALL OF FAME® mark; (4) State Statutory and Common Law
Dilution related to WCHOF’s WORLD CHESS HALL OF FAME® mark; (5) Declaratory
Judgment that WCHOF’s WORLD CHESS HALL OF FAME® mark is valid and enforceable, is senior to WCF’s rights, and does not infringe WCF’s rights; (6) Cancellation of WCF’s U.S.
Registration No. 3695083 for WORLD CHESS FEDERATION; (7) Cancellation of WCF’s
Nevada State Registration No. E0215832012-6 for WORLD CHESS FEDERATION HALL OF
FAME; and (8) False Advertising. See Exhibit A. WCHOF did not seek default judgment on its
claim for Civil Liability for False or Fraudulent Registration.
5 B. ARGUMENT
1. Summary Judgment Should be Granted Based on Res Judicata / Claim Preclusion as to All Claims
Summary judgment is proper where there is no genuine dispute as to any material fact
and the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a); Zoba Int’l Corp.
v. DVD Format/LOGO Licensing Corp., 98 USPQ 2d 1106, 1108-09 (TTAB 2011). Where the doctrine of res judicata, or claim preclusion, bars an action, there is no genuine issue of material fact and summary judgment should be granted. Zoba Int’l Corp., 98 USPQ 2d at 1108. A motion for summary judgment based on claim preclusion is timely even if filed before initial disclosures are made. Trademark Rule 2.127(e)(1).
“Under the doctrine of res judicata, the entry of a final judgment ‘on the merits’ of a
claim in a proceeding serves to preclude the relitigation of the same claim, cause of action, or
defense, in a subsequent proceeding that involves the same parties or their privies, even when the
prior judgment resulted from default, consent of the parties, or dismissal with prejudice.” Zoba
Int’l Corp., 98 USPQ 2d at 1109 (TTAB 2011) (citing Lawlor v. Nat’l Screen Service Corp., 349
U.S. 322, 326 (1955); Chromalloy American Corp. v. Kenneth Gordon, Ltd., 222 USPQ 187, 189
(Fed. Cir. 1984); Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ 2d 1582 (TTAB
1987)). “The ‘claim extinguished includes all rights of the plaintiff to remedies against the defendant with respect to all or any part of the transaction, or series of connected transactions, out of which the action arose,’ and also includes those claims or defenses that could have been raised in the prior action, as long as they arise from the same series of transactional facts as those in the original claims.” Id. (citing Vitaline Corp. v. General Mills Inc., 13 USPQ 2d 1172, 1173)
(Fed. Cir. 1989); Acumed LLC v. Stryker Corp., 86 USPQ 2d 1950 (Fed. Cir. 2008); Int’l
Nutrition Co. v. Horphaq Research Ltd., 55 USPQ 2d 1492, 1694 (Fed. Cir. 2000)).
6 Where the petitioner in the cancellation proceeding was the defendant in the prior district
court case, as is the case here, the rules of “defendant preclusion” apply. Nasalok Coating Corp.
v. Nylok Corp., 86 USPQ 2d 1369, 1372 (Fed. Cir. 2008). A former defendant’s claims are precluded if: (1) the claim or defense asserted in the second action was a compulsory
counterclaim that the defendant failed to assert in the first action; or (2) the claim or defense
represents what is essentially a collateral attack on the first judgment. Id.
In Nasalok Coating Corp., the registrant had obtained default judgment of infringement against the petitioner in district court, including a permanent injunction prohibiting the petitioner from continuing to use the registered mark. Id. at 1371. The petitioner subsequently filed a cancellation proceeding with the TTAB seeking to cancel the subject registration on grounds of, inter alia, fraud in the procurement of the registration. Id. The Federal Circuit held that the
petitioner’s cancellation action was a collateral attack on the first judgment, because allowing the
cancellation action to proceed would “undoubtedly impair” the registrant’s rights as established
in the infringement action, in particular its rights under the injunction. Id at 1376.
a) WCF’s Fraudulent Registration Claim is Barred by Claim Preclusion
WCF’s claim of fraudulent registration is barred by claim preclusion. Like the registrant
in Nasalok Coating Corp., Registrant WCHOF obtained a permanent injunction by default
prohibiting Petitioner WCF from “using the WORLD CHESS HALL OF FAME® mark and/or
any confusingly similar variations thereof (including but not limited to ‘WORLD CHESS
FEDERATION HALL OF FAME’)…” Exhibit A at 8; Nasalok Coating Corp., 86 USPQ 2d at
1371. The petitioner in Nasalok Coating Corp. sought to cancel the registration on the ground of
fraud in its procurement, as does Petitioner WCF here. Second Amended Petition, ¶ 1 [Doc. 27];
Nasalok Coating Corp., 86 USPQ 2d at 1371. The Federal Circuit held in Nasalok Coating
7 Corp. that the claim for fraudulent registration was barred by claim preclusion, because success in the cancellation proceeding would require modification of the injunction to permit use of the registered mark. Nasalok Coating Cor., 86 USPQ 2d at 1376. Inasmuch as cancellation of
Registrant’s mark would “require modification of the injunction to permit the use of” WORLD
CHESS HALL OF FAME® or confusingly similar variations thereof by Petitioner WCF, it is a
collateral attack on the Judgment, and is barred by claim preclusion. See id.
Moreover, WCF’s fraudulent registration claim is based on allegations that the signatory
of Registrant’s application for WORLD CHESS HALL OF FAME® knew of Petitioner’s
alleged prior rights in, and knew that Registrant’s mark would infringe, Petitioner’s purported
“World Chess Federation Hall of Fame” mark. See Resubmitted Petition to Cancel or in the
Alternative, Amended Petition to Cancel (“First Amended Petition”), ¶¶ 6-8 (Doc. 21)
(purportedly incorporated by reference in Second Amended Petition, ¶ 1 (Doc. 27)). The
Judgment, however, held in favor of Registrant WCHOF on its claim for declaratory judgment, stating that “WCHOF and its predecessor in interest are the senior users of the WORLD CHESS
HALL OF FAME® mark, and have long and established priority over any rights that WCF may allege in or to [WCHOF’s] WORLD CHESS HALL OF FAME® mark.” Exhibit A at 3, 9-10.
The Judgment further provides, in ruling on Registrant WCHOF’s declaratory judgment claim,
that “[WCHOF’s] predecessor’s earlier use of the WORLD CHESS HALL OF FAME® mark
establishes that [WCHOF] has priority over [Petitioner] WCF’s later alleged use of the mark
WORLD CHESS FEDERATION HALL OF FAME…” Id. at 10. Petitioner WCF’s fraudulent
registration claim, based on its alleged prior rights and Registrant’s purported knowledge thereof,
is a collateral attack on the Judgment to the contrary, and would “undoubtedly impair” Registrant
8 WCHOF’s rights as established in the declaratory judgment action. Nasalok Coating Corp, 86
USPQ.2d at 1376.
Indeed, inasmuch as the Judgment represents a ruling against Petitioner WCF and in
favor of Registrant WCHOF on the latter’s declaratory judgment claim that its WORLD CHESS
HALL OF FAME® mark is valid and enforceable, Petitioner’s claims to the contrary have been
directly resolved by the District of Nevada.
For each of these independent reasons, WCF’s claim of fraudulent registration is barred
by claim preclusion.
b) WCF’s Claims for Likelihood of Confusion/Reverse Confusion, Dilution, and Misrepresentation of Source are Barred by Claim Preclusion
WCF’s remaining claims for likelihood of confusion/reverse confusion, dilution, and
misrepresentation of source are likewise barred by claim preclusion. The likelihood of confusion
claim is based on allegations that Petitioner WCF owns prior rights in the purported marks
“World Chess Federation Hall of Fame” and “World Chess Federation,” and that Registrant’s
“junior use of” WORLD CHESS HALL OF FAME® is likely to cause confusion with one or
both of Petitioner’s purported marks. Second Amended Petition, ¶¶ 2, 8 (Doc. 27). Similarly,
the dilution claim is based on allegations that Petitioner’s purported “World Chess Federation
Hall of Fame” mark was used and became famous prior to Registrant’s application, and that
Registrant “has committed numerous other specific acts that dilute, blurring and tarnishment
[sic] such as its most recent induction….” Id., ¶¶ 29-31. Finally, Petitioner also bases its misrepresentation of source claim on allegations that Petitioner has prior rights in “World Chess
Federation Hall of Fame” and/or “World Chess Federation,” and that Registrant engaged in various purportedly wrongful acts. Id., ¶¶ 22-28.
9 The Judgment, however, held in favor of Registrant WCHOF on its claim for declaratory judgment, stating that “WCHOF and its predecessor in interest are the senior users of the
WORLD CHESS HALL OF FAME® mark, and have long and established priority over any rights that WCF may allege in or to [WCHOF’s] WORLD CHESS HALL OF FAME® mark.”
Exhibit A at 3, 9-10. The Judgment further provides, in ruling on Registrant WCHOF’s
declaratory judgment claim, that “[WCHOF’s] predecessor’s earlier use of the WORLD CHESS
HALL OF FAME® mark establishes that [WCHOF] has priority over [Petitioner] WCF’s later
alleged use of the mark WORLD CHESS FEDERATION HALL OF FAME…” Id. at 10.
Petitioner WCF’s likelihood of confusion claim, dilution claim, and misrepresentation of source
claim, which each require that WCF have priority in its claimed mark(s), are collateral attacks on
the Judgment to the contrary, and would “undoubtedly impair” Registrant WCHOF’s rights as
established in the declaratory judgment action. Each such claim is therefore barred by claim
preclusion.
Further, inasmuch as the Judgment ruled against Petitioner WCF and in favor of
Registrant WCHOF on its declaratory judgment claim that its WORLD CHESS HALL OF
FAME® mark is valid and enforceable, Petitioner’s claims to the contrary, arising out of the very
set of transactional facts as the Civil Action, have been directly resolved by the District of
Nevada.
2. Dismissal as to Likelihood of Confusion/Reverse Confusion and Dilution
In addition to being barred by claim preclusion, Petitioner WCF’s likelihood of
confusion/reverse confusion and dilution claims are procedurally barred. Federal Rule of Civil
Procedure 15(a) is generally applicable to these proceedings. TBMP § 507. Subsection (a)(2) of
that rule requires “the opposing party’s written consent or the court’s leave” to amend a pleading,
10 other than as provided in Subsection 15(a)(1), which permits a single amendment of a pleading,
under certain circumstances. Here, WCF’s deadline to amend its pleading once as a matter of
course expired twenty-one (21) days after the May 1, 2012 filing of WCHOF’s Motion to
Dismiss or, in the Alternative, to Suspend Proceeding. [Doc. 4]. In its Second Amended
Petition, WCF seeks, in addition to repleading the claims that were dismissed with leave to
replead, to add two new claims. WCHOF has not consented and does not consent to the addition
of new claims, particularly given the history of this case (spanning four years and at least five
separate proceedings). The Board has not been asked to grant leave for the same, nor should it
permit these additions if requested by WCF.
If an amendment to a pleading cannot be made as of right, and court leave or opposing
party consent has not been obtained pursuant to Fed. R. Civ. P. 15(a)(2), such amendment is
without legal effect, and any supplemental matter contained in it will not be considered by the tribunal. 6 Wright, Miller & Kane, Federal Practice & Procedure § 1484 at 685 (2010). See
also, Hoover v. Blue Cross & Blue Shield of Alabama, 855 F.2d 1538, 1544 (11th Cir. 1988)
(holding that the lower court correctly treated supplemental pleading, filed without leave of the court, as a nullity); Murray v. Archambo, 132 F. 3d 609. 612 (10th Cir. 1998) (holding that amended complaint filed without leave of the court had “no legal effect and did not supersede
[plaintiff’s] original complaint”).
The vehicles of Rule 12(f) and 12(b) motions are appropriate for removing the wrongly added material from the case. Oy Tilgmann, AB v. Sport Publishing Int'l, Inc., 110 F.R.D. 68
(E.D. Pa. 1986) (court struck new allegations and defenses filed without leave of court under
Rule 12(f)); see also Amerisourcebergen Drug Corp. v. American Associated Druggists, Inc.,
2007 WL 1463062 (E.D. Pa. May 18, 2007) (granting motion to strike second amended
11 complaint filed without leave in violation of Fed. R. Civ. P. 15(a)(2)); White v. SKF Aerospace,
Inc., 768 F. Supp. 498, 501 (E.D. Pa. 1991) (dismissal warranted for failure to comply with Fed.
R. Civ. P. 15(a)); Primerica Life Ins. Co. v. Davila, 2011 WL 643395 (E.D. Cal. Feb. 17, 2011);
Brown v. U.S. Bancorp, 2012 WL 665900 at *7 (C.D. Cal. Feb. 27, 2012) (“As an initial matter, in its [Order], the Court did not grant plaintiffs leave to add claims not pled in the [First
Amended Complaint]. The absence of such leave provides an independent basis for dismissal of plaintiffs' claims….”) (citing Fed. R. Civ. P. 15(a)(2)) (emphasis added).
The Board’s Order of February 20, 2013 granted WCF the opportunity to replead two claims: the Section 2(a) false suggestion of a connection claim, and a Section 14 misrepresentation of source claim. WCF has exceeded the leave granted, jamming in new claims and various other language in an attempt to generally support its cancellation position. This triggers the discretion of the Board to bring order to the ever-changing nature of this proceeding. E.g., TBMP § 503.03 (Even where leave to amend might otherwise be given, “in appropriate cases, that is, where justice does not require that leave to amend be given, the Board, in its discretion, may refuse to allow an opportunity, or a further opportunity, for amendment.”). WCHOF moves that the newly added claims for Likelihood of
Confusion/Reverse Confusion and Dilution be stricken or dismissed with prejudice.
3. Dismissal as to Misrepresentation of Source Claim
In addition to being barred by claim preclusion, Petitioner WCF’s misrepresentation of source claim fails to state a claim upon which relief can be granted. To withstand a motion to dismiss for failure to state a claim upon which relief can be granted, a pleading must allege facts that, if proven, would establish that the petitioner is entitled to the relief sought. Montecash LLC v. Anzar Enters. Inc., 95 USPQ 2d 1060, 1062 (TTAB 2010); FRCP 12(b)(6); TBMP § 503. A claim for misrepresentation of source must be supported by allegations of respondent’s blatant
12 misuse of the mark to be cancelled in a manner calculated to trade on the goodwill and reputation
of petitioner. McDonnell Douglas Corp. v. Nat’l Data Corp., 228 USPQ 45, 47 (TTAB 1985).
The majority of Petitioner WCF’s allegations relate to WCF’s purported priority and likelihood of confusion, which do not support a claim for misrepresentation of source. Id.; see Second
Amended Compl., ¶¶ 5, 11, 14, 22-28 [Doc. 27]. To the extent Petitioner WCF relies on “a statement at the website that World Chess Federation Inc. nominates inductees to the ‘so-called
“World Chess Hall of Fame” (sic).’,” the Board has already held that allegation insufficient to state a claim for misrepresentation of source. Order at 5 [Doc. 23]2; see Second Amended
Compl., ¶¶ 25-26 [Doc. 27]. Finally, Petitioner WCF’s allegations related to the founding, opening, or renaming of WCHOF’s services (Second Amended Compl., ¶ 15), and those related to WCHOF’s displaying memorabilia related to Bobby Fischer (Second Amended Compl., ¶ 22), fail to support a claim that Registrant WCHOF misused its registered mark in a manner calculated to trade on the goodwill and reputation of WCF.
Petitioner WCF therefore yet again fails to state a claim for Misrepresentation of Source.
Given the chances Petitioner WCF has had to file a sufficient pleading in this proceeding, the claim should be dismissed with prejudice.
B. CANCELLATION OF PETITIONER WCF’S REGISTRATION
The Judgment in the Civil Action ordered cancellation of Petitioner WCF’s U.S.
Registration No. 3695083 for WORLD CHESS FEDERATION. A decision by the district court as to a right to obtain or retain a registration is binding on the Board. See, e.g., Whopper-Burger,
2 As noted above, such a claim is also barred by claim preclusion as a collateral attack on the Judgment. The Judgment held that WCHOF is entitled to use the mark WORLD CHESS FEDERATION in reference to Registrant’s WORLD CHESS HALL OF FAME® services and the activities of FIDE, the true owner of the WORLD CHESS FEDERATION mark, in connection with WCHOF’s services. Exhibit A at 3-4.
13 Inc. v. Burger King Corp., 171 USPQ 805, 807 (TTAB 1971) (“a decision by the United States
District Court would be binding on the Patent Office”).
In this case, the Board suspended proceedings pending resolution of the Civil Action.
The District of Nevada entered judgment cancelling Petitioner WCF’s registration, which is the subject of WCHOF’s counterclaim. Exhibit A at 6. Registrant/Counterclaimant WCHOF respectfully requests entry of summary judgment cancelling Petitioner’s registration based on the
Judgment in the Civil Action, or other appropriate implementation of the Judgment.
WCHOF also notes that, on October 9, 2015, Stan Vaughan filed on behalf of WCF a
Section 15 declaration as to WCF’s U.S. Registration No. 3695083 for WORLD CHESS
FEDERATION. The declaration stated:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18. U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his own knowledge are true; and all statements made on information and belief are believed to be true. The certificate of registration is 3695083 dated 10/13/2009 The goods or services stated in the registration on or in connection with which the mark has been in continuous use in commerce for a period of five years after the date of registration or date of publication under section 12 (c) of the Act, and is still in use in commerce. I specify that there has been no final decision adverse to registrant's claim of ownership of such goods or services, or to the registrant's right to register the name or to keep the same on this register; I specify that there is no proceeding involving such rights pending in the Patent and Trademark Office or in a court not finally disposed of. That this declaration filed under section 15 of the act is combined with an application for renewal of registration under section 8 of the Act, if the requirements of both sections 9 and 15 are met. I hereby sign this declaration /stanvaughan/ date 10/09/2015
Exhibit D (emphasis added). At the time Mr. Vaughan signed the declaration, the September 24,
2015 Judgment in the Civil Action had been entered, rendering a final decision adverse to
WCF’s right to register the name or keep the same on the register. To the extent the Judgment had not yet become final in light of the time for appeal, the Civil Action involving such rights
14 was still pending. Further, the instant proceeding involving such rights was pending before the
Board.
Inasmuch as this new independent ground for cancellation is not before the Board,
Registrant WCHOF respectfully reserves any claims and/or causes of action it may have arising
therefrom.
III. CONCLUSION
Registrant/Counterclaimant World Chess Museum, Inc. d/b/a World Chess Hall of Fame respectfully requests that the Board enter summary judgment in its favor on all of Petitioner’s claims and Registrant/Counterclaimant’s counterclaims in this proceeding.
Registrant/Counterclaimant further requests, to the extent not resolved by summary judgment,
that Petitioner’s claims for Likelihood of Confusion/Reverse Confusion, Dilution, and
Misrepresentation of Source be dismissed and/or stricken, and for any further relief that the
Board deems just and proper.
15 Dated this 11th day of November, 2015.
Respectfully submitted,
BRYAN CAVE LLP
By: /Matthew G. Minder/ J. Bennett Clark [email protected] Matthew G. Minder [email protected] BRYAN CAVE LLP One Metropolitan Square 211 North Broadway, Suite 3600 St. Louis, Missouri 63102 Telephone: (314) 259-2000 Facsimile: (314) 259-2020
ATTORNEYS FOR REGISTRANT WORLD CHESS MUSEUM, INC. D/B/A WORLD CHESS HALL OF FAME
CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing has been served on Petitioner by mailing said copy on November 11, 2015, via First Class Mail, postage prepaid to:
Stan Vaughan World Chess Federation, Inc. 2533 East Palmera Drive Las Vegas, NV 89121-4021
/Matthew G. Minder/
16 EXHIBIT A
CaseCase 2:13-cv-00345-RCJ-GWF 2:13-cv-00345-RCJ-GWF Document Document 86-1 91 Filed Filed 09/24/15 08/07/15 Page Page 1 1 of of 11 11
UNITED STATES DISTRICT COURT DISTRICT OF NEVADA
WORLD CHESS MUSEUM, INC. d/b/a ) WORLD CHESS HALL OF FAME ) ) Plaintiff, ) ) vs. ) Case No. 2:13-CV-00345-RCJ-GWF ) WORLD CHESS FEDERATION, INC., ) ) and ) ) STAN VAUGHAN, Individually ) ) Defendants. )
JUDGMENT BY DEFAULT
The Court, following entry of default by the Clerk of Court in light of the Court’s Order
(Doc. 84) granting Plaintiff’s Motion for Entry of Default (Doc. 82), and upon consideration of
Plaintiff’s Motion for Entry of Default Judgment, enters the following judgment by default in favor
of Plaintiff World Chess Museum d/b/a World Chess Hall of Fame (“WCHOF”), and against
Defendant World Chess Federation, Inc. (“WCF”):
A. The Court finds the following well-pleaded facts established on account of WCF’s default:
1. WCHOF is the owner of all right, title and interest in, to, and under the WORLD
CHESS HALL OF FAME® mark, which Plaintiff’s predecessor in interest first began
using at least as early as April 2001. Plaintiff uses the WORLD CHESS HALL OF
FAME® mark on and in connection with a variety of non-profit services and goods,
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including, but not limited to, exhibition services, retail services, and promotional
merchandise such as home goods and glassware.
2. U.S. Chess Trust, Plaintiff’s predecessor in interest, filed with the U.S. Patent and
Trademark Office an application for the WORLD CHESS HALL OF FAME® mark on
August 13, 1999, and the WORLD CHESS HALL OF FAME® mark was registered on
March 19, 2002 (U.S. Registration No. 2,551,246). Plaintiff World Chess Hall of Fame is
the record owner of that mark and the attendant registration. Plaintiff World Chess Hall
of Fame also owns a registration for the U.S. CHESS HALL OF FAME AND
MUSEUM® mark (U.S. Registration No. 2,472,756).
3. Plaintiff and its predecessor in interest have continuously used the WORLD CHESS
HALL OF FAME® mark and registration in interstate commerce on and in connection
with the provision of exhibition services and related services for over ten years, since at
least as early as April 2001.
4. The WORLD CHESS HALL OF FAME® mark has been used, and continues to be
used, by World Chess Hall of Fame among the relevant consuming public and consumers,
to identify the source or origin of World Chess Hall of Fame’s high-quality non-profit
services and, further, to distinguish such high-quality non-profit services from products
and services offered by its competitors and others.
5. WCHOF has expended, and continues to expend, a substantial amount of resources,
money, time and effort promoting, marketing, advertising and building consumer
recognition and goodwill in its valuable non-profit services and operations under and in
connection with its valuable and well-known service marks, including, but not limited to,
its WORLD CHESS HALL OF FAME® mark. As a result, the WORLD CHESS HALL
OF FAME® mark has become well-known, associated with Plaintiff’s services and those
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of its predecessor in interest, and has acquired substantial distinctiveness, goodwill, and
secondary meaning among the relevant consuming public and consumers.
6. WCHOF and its predecessor in interest are the senior users of the WORLD CHESS
HALL OF FAME® mark, and have long and established priority over any rights that
WCF may allege in or to Plaintiff’s WORLD CHESS HALL OF FAME® mark.
WCHOF’s continued use of the long-established WORLD CHESS HALL OF FAME®
mark does not infringe any of the actual or imagined rights of WCF, including as to the
“World Chess Federation” and “World Chess Federation Hall of Fame” phrases/marks
and “all goodwill appurtenant thereto,” as alleged in WCF’s counterclaim.
7. Despite bare assertions of prior rights, and demonstrably false
representations, WCF has failed to provide any evidence showing trademark rights in
WORLD CHESS FEDERATION HALL OF FAME that may be superior to Plaintiff’s
rights in its WORLD CHESS HALL OF FAME® mark.
8. Consumers, potential customers, and the relevant public are likely to be confused,
and likely have already been actually confused, between Plaintiff’s WORLD CHESS
HALL OF FAME® mark and WCF’s use of WORLD CHESS FEDERATION HALL
OF FAME, and are also confused as to the existing rights of WCHOF in view of false
and misleading statements of Defendants referenced in the Amended Complaint.
9. These wrongful acts have been knowing and willful.
10. WCF’s course of conduct with respect to the trademarks at issue constitute, at least,
trademark infringement, unfair competition, and false advertising.
11. Cancellation of the registration for “World Chess Federation”, Reg. No. 3695083,
registration date October 13, 2009, owned by “World Chess Federation, Inc.” as shown in
the records of the U.S. Patent and Trademark Office (“WCF Registration”/ “the WCF
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Registered Mark”) which WCF has asserted against WCHOF, is warranted on the grounds
that: the WCF Registered Mark is likely to cause confusion with WORLD CHESS
FEDERATION, previously used extensively in this country, which has acquired
distinctiveness as a source indicator for FIDE, and which mark WCHOF is entitled to use
in reference to its WORLD CHESS HALL OF FAME® services and FIDE’s activities in
connection with those services; (b) the WCF Registered Mark is merely descriptive and
has not acquired distinctiveness as a source indicator for WCF; (c) the WCF Registered
Mark has not been used in rendering services in interstate commerce; and (d) upon
information and belief, the applicant well knew of the prior use by FIDE of WORLD
CHESS FEDERATION, but nonetheless falsely and fraudulently claimed to be the
owner of the WORLD CHESS FEDERATION mark, to have the right to use the mark
in commerce, and that no other entity had the right to use the mark of any confusingly
similar variation thereof in commerce.
12. The signatory of the declaration in support of the WCF Registration (Stan Vaughan)
has stated that he was himself a member of the United States Chess Federation as of
December 15, 1997, and therefore could not have been ignorant of that entity’s
membership in FIDE and FIDE’s use of WORLD CHESS FEDERATION long prior to
WCF’s purported adoption of the mark in 1992 and WCF’s application to register it in
December 2008.
13. That the signatory of the declaration in support of the WCF Registration knew of
FIDE’s rights in WORLD CHESS FEDERATION at the time of seeking registration is
further established by Defendants’ statement showing that WCF was created to compete
with FIDE.
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14. Cancellation of the Nevada State Registration for “World Chess Federation Hall of
Fame,” Nevada No. E0215832012-6, filed on April 12, 2012 and registered on April 25,
2012 (the “Nevada Registration”/the “Nevada Registered Mark”) , which is asserted in
WCF’s counterclaim to be owned by it, is warranted on the grounds that (a) the Nevada
Registered Mark is likely to cause confusion with WORLD CHESS HALL OF FAME®,
previously used in commerce and registered with the U.S. Patent and Trademark Office
and which has acquired distinctiveness as a source indicator for WCHOF; (b) the Nevada
Registered Mark is likely to cause confusion with WORLD CHESS FEDERATION,
previously used extensively in this country and which has acquired distinctiveness as a
source indicator for FIDE, and which mark WCHOF is entitled to use in reference to its
WORLD CHESS HALL OF FAME® services and FIDE’s activities in connection with
those services; (c) the Nevada Registered Mark has been abandoned; (d) the Nevada
Registered Mark was granted improperly; and (e) the Nevada Registration was obtained
fraudulently.
B. The established facts constitute:
a. Trademark infringement by WCF under Section 32 of the Lanham Act
(Count I of the Complaint);
b. Unfair competition and false designation of origin by WCF under Section
43(a) of the Lanham Act (Count II of the Complaint);
c. State statutory and common law trademark infringement and unfair
competition by WCF (Count III of the Complaint);
d. State statutory and common law trademark dilution by WCF (Count IV of
the Complaint);
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e. Grounds for cancellation of the federal registration for “World Chess
Federation,” as set forth above;
f. Grounds for cancellation of the Nevada registration for “World Chess
Federation Hall of Fame,” as set forth above;
g. False advertising by WCF under the Lanham Act (Count IX of the
Complaint); and
g. Grounds for entry of declaratory relief.
C. There exists between the WCHOF and WCF an actual case or controversy of sufficient immediacy and reality to warrant declaratory relief.
D. Entry of a default judgment is committed to the sound discretion of the district court.
Madsen v. Bumb, 419 F.2d 4, 6 (9th Cir. 1969). The case law provides seven factors for a court to consider in exercising its discretion to enter default judgment: (a) the possibility of prejudice to the plaintiff, (b) the merits of the plaintiff’s substantive claim, (c) the sufficiency of the complaint, (d) the sum of money at stake in the action, (e) the possibility of dispute concerning material facts, (f) whether the default was due to excusable neglect, and (g) the strong policy underlying the Federal
Rules of Procedure favoring decisions on the merits. Eitel v. McCool, 782 F.2d 1470, 1471 (9th Cir.
1986). The court takes the well-pleaded factual allegations in the non-defaulting party’s complaint as true, except as to the amount of damages. Televideo Sys., Inc. v. Heidenthal, 862 F.2d 915, 917-18 (9th
Cir. 1987).
a. Possibility of Prejudice to the Plaintiff
The first factor favors default judgment where the plaintiff will suffer prejudice if default judgment is not entered. Carpet Cops, Inc. v. The Carpet Cops, LLC, Case No. 3:11-cv-561-RCJ-VPC,
2012 WL 3929783, at *2 (D. Nev. Sept. 6, 2012). A plaintiff will suffer prejudice if its ability to pursue its claim will be hindered. Id.; Falk v. Allen, 739 F.2d 461, 462 (9th Cir. 1984). Here, WCF
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has not retained counsel as ordered by the Court (and it has failed to timely respond to the
Amended Complaint). WCHOF therefore cannot pursue its claims unless default judgment is entered.
b. Merits of the Claims and Sufficiency of the Complaint
The second and third factors favor default judgment if the complaint alleges sufficient facts
to state a claim upon which relief may be granted, in accordance with Fed. R. Civ. P. 8(a). Carpet
Cops, Inc., 2012 WL 3929783, at *3. The complaint need only plead sufficient facts to state a claim to
relief that is plausible on its face. Id. (and cases cited therein). The facts set forth above, established
on account of WCF’s default, establish that WCHOF is entitled to the relief sought.
c. Sum of Money at Stake
The fourth factor weighs against default judgment when there is a substantial amount of
money involved. Eitel, 782 F.2d at 1471. Here, WCHOF does not seek monetary damages by its
motion for default judgment. Inasmuch as there is no money at stake, this factor favors default
judgment.
d. Possibility of a Dispute Concerning Material Facts
As shown above, WCHOF has alleged sufficient facts to establish its claims. Well-pleaded allegations are admitted by WCF’s failure to respond to the Amended Complaint, and its failure to retain counsel to continue to defend this matter. Lagos v. Monster Painting, Inc., Case No. 2:11-cv-331-
LRH-GWF, 2013 WL 5937661, at *4 (D. Nev. Nov. 5, 2013). Defendant WCF has had ample
opportunity to contest the facts alleged in the Amended Complaint, and has failed to do so. See id.
e. Excusable Neglect
The sixth factor favors default judgment where the nonresponsive party’s default was not
due to excusable neglect. Carpet Cops, Inc., 2012 WL 3929783, at *6. Here, Defendant WCF was
served with the Amended Complaint on October 21, 2013, and with the Order granting leave to
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amend on December 17, 2013. Furthermore, on May 20, 2015, Defendant WCF was served with the Court’s order directing it to retain new counsel by June 22, 2015 or face default. WCF failed to retain counsel by that date, and the Clerk entered default against it on July 29, 2015. Defendant
WCF has still not retained new counsel to appear in this case, and has still not responded to the
Amended Complaint. This factor favors granting default judgment. See id.
f. Policy Favoring Decision on the Merits
Cases should be decided on the merits when reasonably possible. Id. “However, the mere existence of Fed. R. Civ. P. 55(b) indicates that this preference, standing alone, is not dispositive.”
Pepsico, Inc. v. California Security Cans, 238 F. Supp. 2d 1172, 1177 (C.D. Cal. 2002) (internal quotations omitted). Moreover, a defendant’s failure to answer a complaint or to otherwise defend the action
“makes a decision on the merits impractical, if not impossible.” Id. “Under Fed. R. Civ. P. 55(a), termination of a case before hearing the merits is allowed whenever a defendant fails to defend an action.” Id. Accordingly, default judgment will be entered against Defendant WCF.
E. The Court does hereby:
1. Enter a permanent injunction restraining Defendant WCF and its employees,
partners, officers, directors, agents, representatives, attorneys, successors, and assigns, and all
persons in active concert or participation with any of them, from using the WORLD
CHESS HALL OF FAME® mark and/or any confusingly similar variations thereof
(including but not limited to “WORLD CHESS FEDERATION HALL OF FAME”), in
any manner or form, or any other reproduction, counterfeit, copy or colorable imitation of
such mark, either alone or in combination with any other designation, on or in connection
with any advertising, marketing, promotion, business, manufacture, distribution, offer for
sale, sale, and provision of Defendant WCF’s services or goods, including filing applications
with the U.S. Patent and Trademark Office or other governmental entities to register such
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marks and/or registering domain names incorporating such marks; from otherwise
infringing and/or diluting the distinctive nature of Plaintiff’s WORLD CHESS HALL OF
FAME® mark; and from otherwise competing unfairly with WCHOF.
2. Order Defendant WCF to destroy and/or obliterate from any and all labels, signs,
brochures, advertisements, stationery, leaflets, and other items in its possession, or under its
control, upon which appear or reflect the WORLD CHESS HALL OF FAME® mark,
and/or any confusingly similar variations thereof (including but not limited to “WORLD
CHESS FEDERATION HALL OF FAME”), in any manner or form, or any other
reproduction, counterfeit, copy, or colorable imitation of Plaintiff’s WORLD CHESS HALL
OF FAME® mark, either alone or in combination with any designation, and all plates,
molds, matrices and other means of making the same;
3. Adjudge that Defendant WCF has infringed and willfully infringed Plaintiff’s
WORLD CHESS HALL OF FAME® mark;
4. Adjudge that Defendant WCF has committed unfair competition and false
designation of origin by using Plaintiff’s WORLD CHESS HALL OF FAME® mark, and
that such acts are willful;
5. Adjudge that Defendant WCF has diluted and willfully diluted Plaintiff’s
WORLD CHESS HALL OF FAME® mark;
6. Order Defendant WCF to cease further diluting and infringing the WORLD
CHESS HALL OF FAME® mark and damaging Plaintiff’s goodwill;
7. Declare that WCHOF’s use of the WORLD CHESS HALL OF FAME® mark
does not infringe the purported rights of WCF including as to the “World Chess Federation”
and “World Chess Federation Hall of Fame” phrases/marks and “all goodwill appurtenant
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thereto” and does not constitute trademark infringement, false designation of origin, false
advertising, or unfair competition, or otherwise violate 15 U.S.C. §§ 1114 or 1125;
8. Declare that, because Plaintiff’s predecessor’s earlier use of the WORLD CHESS
HALL OF FAME® mark establishes that Plaintiff has priority over Defendant WCF’s later
alleged use of the mark WORLD CHESS FEDERATION HALL OF FAME, Defendant
WCF is violating and infringing Plaintiff’s rights in, to, and under its WORLD CHESS
HALL OF FAME® mark;
9. Declare that World Chess Hall of Fame has the right to continue use of its
WORLD CHESS HALL OF FAME® mark in connection with exhibition services, retail
services, promotional merchandise, and any zones of natural expansion for related goods
and/or services, throughout the United States;
10. Cancel the registration for “World Chess Federation”, Reg. No. 3695083,
registration date October 13, 2009;
11. Cancel the Nevada State Registration for “World Chess Federation Hall of
Fame,” Nevada No. E0215832012-6, filed on April 12, 2012 and registered on April 25,
2012;
12. Dismiss all claims against Defendant Stan Vaughan, without prejudice,
pursuant to Fed. R. Civ. P. 41(a)(2);
13. Find that there is no just reason to delay in entering this judgment as to fewer
than all defendants, as instant relief is directed to WCF, largely as to allegations made also by
it in its counterclaim; and no monetary relief is requested by WCHOF, or awarded through
this judgment; and
14. Retain jurisdiction over this cause as pertains to WCF for the purpose of
enforcing the terms of this Judgment, if and as necessary.
10 4610010.1 CaseCase 2:13-cv-00345-RCJ-GWF 2:13-cv-00345-RCJ-GWF Document Document 86-1 91 Filed Filed 09/24/15 08/07/15 Page Page 11 11 of of 11 11
SO ORDERED: ______
United States District Judge
DATE: ______September 24, 2015
11 4610010.1 EXHIBIT B
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PTO Form 1583 (Rev 5/2006) OMB No. 0651-0055 (Exp 07/31/2018) Combined Declaration of Use and Incontestability under Sections 8 & 15
The table below presents the data as entered.
Input Field Entered REGISTRATION 3695083 NUMBER REGISTRATION 10/13/2009 DATE SERIAL 77633493 NUMBER MARK SECTION MARK WORLD CHESS FEDERATION CORRESPONDENCE SECTION (current) NAME WORLD CHESS FEDERATION INC. FIRM NAME WORLD CHESS FEDERATION INC. STREET 2533 EAST PALMERA DRIVE CITY LAS VEGAS STATE Nevada POSTAL CODE 89121-4021 COUNTRY United States PHONE 702-418-4687 EMAIL [email protected] CORRESPONDENCE SECTION (proposed) NAME WORLD CHESS FEDERATION INC.
INTERNAL ADDRESS 2533 PALMERA DR
STREET 2533 PALMERA DR CITY LAS VEGAS STATE Nevada POSTAL CODE 89121 COUNTRY United States PHONE 702-418-4687 EMAIL [email protected]
AUTHORIZED TO COMMUNICATE Yes VIA E-MAIL GOODS AND/OR SERVICES SECTION
INTERNATIONAL CLASS 041
GOODS OR SERVICES Chess Competitions
SPECIMEN FILE NAME(S)
ORIGINAL PDF SPN0-98160152155- FILE 20151009145106325977_._WCF__R_TM_use_incommerce.pdf
CONVERTED PDF FILE(S) \\TICRS\EXPORT16\IMAGEOUT16\776\334\77633493\xml3\8150002.JPG (1 page)
SPECIMEN advertisement showing use of registered trademark in commerce for chess DESCRIPTION competition The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18. U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his own knowledge are true; and all statements made on information and belief are believed to be true. The certificate of registration is 3695083 dated 10/13/2009 The goods or services stated in the registration on or in connection with which the mark has been in continuous use in commerce for a period of five years after the date of registration or MISCELLANEOUS STATEMENT date of publication under section 12 (c) of the Act, and is still in use in commerce. I specify that there has been no final decision adverse to registrant's claim of ownership of such goods or services, or to the registrant's right to register the name or to keep the same on this register; I specify that there is no proceeding involving such rights pending in the Patent and Trademark Office or in a court not finally disposed of. That this declaration filed under section 15 of the act is combined with an application for renewal of registration under section 8 of the Act, if the requirements of both sections 9 and 15 are met. I hereby sign this declaration /stanvaughan/ date 10/09/2015 OWNER SECTION (current) NAME World Chess Federation Inc. INTERNAL ADDRESS 2533 PALMERA DR
STREET 2533 PALMERA DR CITY LAS VEGAS STATE Nevada ZIP/POSTAL CODE 89121 COUNTRY United States PHONE 702-418-4687 FAX 702-433-6144 EMAIL [email protected] OWNER SECTION (proposed) NAME World Chess Federation Inc.
INTERNAL ADDRESS 2533 PALMERA DR
STREET 2533 PALMERA DR CITY LAS VEGAS STATE Nevada ZIP/POSTAL CODE 89121 COUNTRY United States PHONE 702-418-4687 FAX EMAIL [email protected]
AUTHORIZED TO COMMUNICATE Yes VIA E-MAIL LEGAL ENTITY SECTION (current) TYPE corporation
STATE/COUNTRY OF Nevada INCORPORATION PAYMENT SECTION
NUMBER OF CLASSES 1
NUMBER OF CLASSES PAID 1 SUBTOTAL AMOUNT 300
TOTAL FEE PAID 300 SIGNATURE SECTION SIGNATURE /stanvaughan/
SIGNATORY'S NAME Stan Vaughan
SIGNATORY'S POSITION "Treasurer"
DATE SIGNED 10/09/2015
SIGNATORY'S PHONE NUMBER 7024184687
PAYMENT METHOD CC FILING INFORMATION SUBMIT DATE Fri Oct 09 15:19:21 EDT 2015 USPTO/S08N15-98.160.152.1 55-20151009151921741027-3 695083-540c19541763c168ca TEAS STAMP 2e11e866fa709129892b877b8 544af142e6be90bb396c2d-CC -1592-2015100914510632597 7 PTO Form 1583 (Rev 5/2006) OMB No. 0651-0055 (Exp 07/31/2018)
Combined Declaration of Use and Incontestability under Sections 8 & 15 To the Commissioner for Trademarks:
REGISTRATION NUMBER: 3695083 REGISTRATION DATE: 10/13/2009
MARK: WORLD CHESS FEDERATION
The owner, World Chess Federation Inc., a corporation of Nevada, having an address of 2533 PALMERA DR 2533 PALMERA DR LAS VEGAS, Nevada 89121 United States is filing a Combined Declaration of Use and Incontestability under Sections 8 & 15.
For International Class 041, the mark is in use in commerce on or in connection with all of the goods/all of the services, or to indicate membership in the collective membership organization, listed in the existing registration for this specific class: Chess Competitions; and the mark has been continuously used in commerce for five (5) consecutive years after the date of registration, or the date of publication under Section 12(c), and is still in use in commerce on or in connection with all goods/all services, or to indicate membership in the collective membership organization, listed in the existing registration for this class. Also, no final decision adverse to the owner's claim of ownership of such mark for those goods/services, or to indicate membership in the collective membership organization, exists, or to the owner's right to register the same or to keep the same on the register; and, no proceeding involving said rights pending and not disposed of in either the U.S. Patent and Trademark Office or the courts exists.
The owner is submitting one(or more) specimen(s) for this class showing the mark as used in commerce on or in connection with any item in this class, consisting of a(n) advertisement showing use of registered trademark in commerce for chess competition.
Original PDF file: SPN0-98160152155-20151009145106325977_._WCF__R_TM_use_incommerce.pdf Converted PDF file(s) (1 page) Specimen File1
MISCELLANEOUS STATEMENTS The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18. U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his own knowledge are true; and all statements made on information and belief are believed to be true. The certificate of registration is 3695083 dated 10/13/2009 The goods or services stated in the registration on or in connection with which the mark has been in continuous use in commerce for a period of five years after the date of registration or date of publication under section 12 (c) of the Act, and is still in use in commerce. I specify that there has been no final decision adverse to registrant's claim of ownership of such goods or services, or to the registrant's right to register the name or to keep the same on this register; I specify that there is no proceeding involving such rights pending in the Patent and Trademark Office or in a court not finally disposed of. That this declaration filed under section 15 of the act is combined with an application for renewal of registration under section 8 of the Act, if the requirements of both sections 9 and 15 are met. I hereby sign this declaration /stanvaughan/ date 10/09/2015
The registrant's current Correspondence Information: WORLD CHESS FEDERATION INC. of WORLD CHESS FEDERATION INC. 2533 EAST PALMERA DRIVE LAS VEGAS, Nevada (NV) 89121-4021 United States
The registrant's proposed Correspondence Information: WORLD CHESS FEDERATION INC. 2533 PALMERA DR 2533 PALMERA DR LAS VEGAS, Nevada (NV) 89121 United States
The phone number is 702-418-4687.
The email address is [email protected].
A fee payment in the amount of $300 will be submitted with the form, representing payment for 1 class(es), plus any additional grace period fee, if necessary.
Declaration
The mark is in use in commerce on or in connection with the goods/services, or to indicate membership in the collective membership organization, identified above, as evidenced by the attached specimen(s) showing the mark as used in commerce. The mark has been in continuous use in commerce for five consecutive years after the date of registration, or the date of publication under 15 U.S.C. § 1062(c), and is still in use in commerce on or in connection with all goods/services, or to indicate membership in the collective membership organization, listed in the existing registration. There has been no final decision adverse to the owner's claim of ownership of such mark for such goods/services, or to indicate membership in the collective membership organization, or to the owner's right to register the same or to keep the same on the register; and there is no proceeding involving said rights pending and not disposed of either in the United States Patent and Trademark Office or in a court.
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
Signature: /stanvaughan/ Date: 10/09/2015 Signatory's Name: Stan Vaughan Signatory's Position: "Treasurer" Signatory's Phone Number: 7024184687
Serial Number: 77633493 Internet Transmission Date: Fri Oct 09 15:19:21 EDT 2015 TEAS Stamp: USPTO/S08N15-98.160.152.155-201510091519 21741027-3695083-540c19541763c168ca2e11e 866fa709129892b877b8544af142e6be90bb396c 2d-CC-1592-20151009145106325977