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Estta290711 06/18/2009 in the United States Patent And Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA290711 Filing date: 06/18/2009 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92050366 Party Plaintiff Live Gold Inc., Larry Marshak, and The Five Platters, Inc. Correspondence Michael Machat Address MACHAT & ASSOCIATES, P.C. 9107 Wilshire Blvd., Suite 425 Beverly Hills, CA 90210 UNITED STATES [email protected], [email protected] Submission Opposition/Response to Motion Filer's Name Michael Machat Filer's e-mail [email protected] Signature /MM/ Date 06/18/2009 Attachments LiveGold'sOppositiontoMotionforS.PDF ( 30 pages )(1307073 bytes ) MehlichDeclarationFinalwEPart1.PDF ( 45 pages )(3486996 bytes ) MehlichDeclarationFinalwEPart2.PDF ( 31 pages )(1819678 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matterof trademarkRegistration No. 2796412 For the mark HERB REED AND THE PLATTERS Dateregistered December 23.2003 LARRY MARSHAK, LIVE GOLD INC., THE FIVE PLATTERS,INC., Plaintiffs, CANCELLATION NO. 92050366 V. HERBREED ENTERPRISES, INC. Defendant. PLAINTIFFS' OPPOSITION TO DEFENDANT'S MOTION FOR SUMMARY JUDGMENT I. Introduction This proceedingbegins another round of litigation betweenHerb Reedand his associates,on the one hand, and Larry Marshak,and his associates,on the other hand. Onceagain, Reed through thosein privity with him, puts forth a StandingArgument to a requestthat a trademarkregistration of his be canceled. Sevenyears ago, JudgeGershon found of the US District Court for the EasternDistrict of New York disagreedwith Reed, the Plattersbe that plaintiffs had standing,and orderedhis trademarkregistration for Reed,229F.supp canceled.Marshakv. Reed,200l wL 7gg57l(E.D.N.Y.); Marshakv. Marshakv' 2d l7g(E.D.N.Y. 2002. The Second Circuit Court of Appealsaffirmed' haschanged over Reed87Fed. Appx 208,2004wL 249580(C.A.2 (N.Y.)) Not much theseven year period, and the rulings from beforeshould remain. There are three separatePlaintiffs in this case,and this Oppositionshall examine eachplaintiff s basisfor standingseparately. Contraryto defendant'sargument, the Plaintiffs are not inextricably linked so that if one lacks standing,so do the others. Both Live Gold, Inc. and Lany Marshakhave standingirrespective of whetheror not the corporatestatus of Five Platters,Inc. hasbeen suspended. After establishingtheir standing,we shall then discussthe ramificationsof Five Platters'Inc corporatestatus. Sincedefendant's motion for summaryjudgment only discussesthe issueof standingand not the otherelementl that Plaintiffs must prove to prevailin this Cancellationproceeding, Plaintiff-s need only discussthe standingissue as well. Plaintiffs Live Gold, Inc. and Larry Marshaklook forward to filing their own motion for SummaryJudgment at a later date in which they will discussand prove up this second element. II. Liberal Standing Rules As in oppositionproceedings, a Petitionerfor Cancellationneed not proveactual damage.Traditionally, all a petitionerneed show is the likelihoodof damagefrom the continuingregistration of the mark. GoldenGate Salami Co. v. Gulf StatesPaper Corp., 332F .Zd.184, 188 (C.C.P.A . 1964)The issuein determiningstanding is not necessarily whetherpetitioner is entitled to registrationor owns the mark, but ratherwhether the presumptionsflowing from the registrationare damagingto petitioner'slegal and 1962); continuoususe of that term. Koplin v. Phitlips,133 U.S.P.Q. 622 (T.T.A'B' (1) it hasstanding; and (2) h,*r.-k-- .u.celr,t* mustprove two elements: that v' Laser Golf that thereare valid groundsfbr cancelingthe registration' C.unningham of the two elementsand Corporation,Z22 y .Sag$, gqS. Stinding ii the more liberal likely to be damagedby requiresonly that the party seekingcancellation believe that it is the registration.Id. -2- D'Albrerv. Henkel-KhasanaG.m.b.h.., 185 U.S.P.Q. 317 (T.T.A.B. 1975) (exclusrve U.S.importer who is non-ownerof mark hasstanding.) The purposeof standingis simplyto weedout "intermeddlers"from thosewith "a personalinterest in the outcomebeyond that of the generalpublic." Golden GateSalctmi "a Co,supro 332 F.2d 188. A petitionerneed only pleadand prove real commercial interestin its own marks and a reasonablebasis for its belief that it would be damaged." The requirementsfor standingcan on someoccasions be relatively easyfor anyoneto "In meet. Ritchiev. OrenthalJames Simpson 170 F.3d 1092. mostsettings, a direct "real commercialinterest satisfies the interest"test. Herbko International,Inc. v. Kappa Books,Inc. 308F.3d 1156, I l6l. A petitionermay asserta likely rejectionof an applicationby the Examiner becauseof the respondent'sregistration which is challengedin the petitionto cancel.In CerveceriaModelo, s.A. v. R.B.Marco & Sons,Inc.,55 U.S.P.Q.2d 1298,2000 WL 827785(Trademark Trial & App. Bd. 2000)the PTO ex partecitation of a registrationas a bar was held to be sufficient to grantto the applicantstanding to file a petition to cancel that registration. ,,We regardthe desirefor a registrationwith its attendantstatutory advantages as that one is a legitimatecommercial interest. To establisha reasonablebasis for a belief a likelihood of damagedby the registrationsought to be cancelled,a petition may assert here, a rejection of an confusionwhich is not wholly without merit (as in Norac) or, as applicationduring Prosecution' that appelleeprove Thus, to have standing in this case,it would be sufficient becauseof appellant's that it filed an application and that a reiectionwas made -3- registration.These facts do not provide a statutory ground for cancellation,but no more is necessaryfor standing." Lipton Industries,Inc. v. RalstonPurina Co.,670 F2d 1024,213U.S.P.Q.185 (C.C.P.A. 1982) (emphasis added) III. Live Gold,Inc's Standing The PTO's citation of a registrationas a bar to registrationof a trademark applicant'sproposed mark is sufficientto grantto the applicantstanding to file a petition to cancelthat registration. CervecceriaModelo, S.A. De C.V. v. R.B. Marco & Sons, Inc., 55 USPO2d 1298,2000WL 827785(Trademark Trial & App. Bd. 2000) The PTO did in fact site DefendantHerb ReedEnterprises , Inc.'s Registration No. 2796412 as a bar to resistrationof PlaintiffLive Gold's trademarkapplication for "The Platters." A copy of the Office Action is attachedto the declarationof Michael Machatas Exhibit O. This fact.in andof itself is sufficientto establishstanding for Plaintiff Live Gold, lnc. Lipton Incluslries,supra at 1029;(lervecceria Modelo, supra. IV. Larry Marshak's Standing The Complaint aversthat Larry Marshakobtains income from Live Gold, Inc.. As the declarationof Charlie Mehlich makesclear, Larry Marshakis very actively involvedwith Live Gold, Inc.'s exploitationof The Plattersmark. Thus,the as presumptionsthat flow from Defendant'sregistration are harmful to Larry Marshak well asto Live Gold, Inc' Marshakand Sincethere has beenextensive litigation that hastranspired between doesnot concedethe Reedover the years,it is odd that defendantin all faimesssimply mark. Therehave point that Larry Marshakhas a commercialinterest in The Platters -4- beenat least8 separatejudicial opinionswritten tn Marshakv.Reed. All eightare attachedto this Opposition. The prior casehistory betweenMarshak and Reedamply demonstratesthat Larry Marshakdoes have a direct commercialinterest in this matter. As the Declarationof Charlie Mehlich makesclear, Larry Marshakcontinues to be involvedin the productionand saleof PLATTERS' shows. A petitioner'sproduction and saleof merchandisebearing the registeredmark is sufficientto demonstratestanding. Cunninghamv. LaserGolJ'Corporation,222 F .3d 943,945.Thus, both Live Gold, Inc. and Larry Marshakhave standing. V. The Federal Courts have already determinedthat Larry Marshak (and hencehis assignees)have standing. Defendantis collaterallyestopped from relitigatingthe mattersit raisesin its motion for summaryjudgment. The 2ndCircuit upheldthe determinationof the United StatesDistrict Court of the EasternDistrict of the New York that Lany Marshakhas Reed, rightsin andto the Platters'mark. Marshakv.Reed,2001 WL 92225;Marshakv' 2002)' 2001wL 7gg57l(E.D.N.Y.); Marshakv. Reed,229 F.Supp 2d 179(E.D.N.Y. Appx 208' The SecondCircuit Court of Appealsaffirmed' Marshakv' Reed87 Fed' 2004wL 249s80(C.A.2 (N.Y.)) purpose .,Collateralestoppel, like the relateddoctrine of resjudicata, has the dual issuewith the same of protectinglitigants from the burdenof relitigatingan identical needlesslitigation'" party or his privy and of promotingjudicial economyby preventing (1979).Under the doctrineof ParklaneHosiery co. v. shore,439 U.S. 322,326 "once determinedby a court of collateralestoppel, an issueis actuallyand necessarily in subsequentsuits based on a competentjurisdiction, that determinationis conclusive -5- differentcause of action involving a partyto the prior litigation." Montana v. United States,440U.S. 147,153 (1979). To determinewhether collateral estoppel applies, the "(1) courtmust determine if: the issuenecessarily decided in the previoussuit is identical to the issuesought to be relitigated;(2) therewas a finaljudgment on the meritsof the previoussuit; and (3) the party againstwhom the estoppelis assertedwas a party. or in privity with a party,to the previoussuit." 1r re Joshua,39Cal.App.4th 984, 993 (1995) (citationomitted). 1. IclenlicalIssues With respectto the issuespresented, the SupremeCourt hasheld that the court "first, must determine whetherthe
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