Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA807292 Filing date: 03/15/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92065219 Party Plaintiff Highline United, LLC Correspondence LEONARD N BUDOW Address FOX ROTHSCHILD LLP 997 LENOX DRIVE BLDG 3 LAWRENCEVILLE, NJ 08648-2311 UNITED STATES [email protected], [email protected] Submission Motion to Suspend for Civil Action Filer's Name Michael Leonard Filer's e-mail [email protected] Signature /michael leonard/ Date 03/15/2017 Attachments Highline_s Motion to Suspend _482 Reg. proceeding.pdf(214864 bytes ) EXHIBIT 1 - Highline_s Petition for Cancellation of 112 Registra- tion.pdf(2606792 bytes ) Segment 001 of EXHIBIT 2 - Converse_s ITC Complaint.pdf(5226274 bytes ) Segment 002 of EXHIBIT 2 - Converse_s ITC Complaint.pdf(3794581 bytes ) EXHIBIT 3 - Converse Petition for Review CAFC.PDF(49845 bytes ) EXHIBIT 4 - Order granting HU Liquidation_s Motion for Leave to Inter- ven.pdf(80734 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In The Matter Of Registration No. 4,065,482 For The Design Mark: Registered: December 6, 2011 HIGHLINE UNITED, LLC, Cancellation No. 92065219 Petitioner, v. CONVERSE, INC., Registrant. PETITIONER HIGHLINE UNITED, LLC’S MOTION TO SUSPEND THE PROCEEDING PENDING A FEDERAL CIRCUIT APPEAL I. INTRODUCTION Pursuant to TBMP § 510.02(a), Highline United, LLC (“Highline” or “Petitioner”) hereby moves to suspend this proceeding. HU Liquidation, LLC (f/k/a Highline United, LLC (“Highline United”)) and Registrant Converse, Inc. (“Converse” or “Registrant”) are presently litigating an appeal in the United States Court of Appeals for the Federal Circuit on a mark that is very similar to the mark at issue here. Because the Federal Circuit’s decision in that appeal is likely to have significant bearing on the issues in this proceeding, a suspension of this proceeding pending the disposition of the Federal Circuit appeal is warranted. II. GOOD FAITH ATTEMPT TO MEET AND CONFER On 13 March 2017, counsel for Highline United, LLC sought Converse’s position as to whether Converse would be opposing the instant motion, as Converse refused to provide its consent to Highline’s prior request to suspend related Cancellation proceeding no. 92064906 involving Registration No. 4,062,112 (the “‘112 Registration”). Later that same day, counsel for Converse confirmed that Converse expects to take the same position with respect to the instant cancellation proceeding. Therefore, Highline is bringing this motion because Converse has declined to consent to the suspension of the instant proceeding. III. BACKGROUND A. The ‘482 And ‘753 Registrations Are Very Similar Converse is the owner of Registration No. 4,065,482 (the “‘482 Registration”), which is at issue in this proceeding. Converse is also the owner of Registration No. 4,398,753 (the “‘753 Registration”), which was invalidated by the International Trade Commission (the “ITC” or the “Commission”) in a case involving both Highline United and Converse. Both the ‘753 Registration and the ‘482 Registration purport to claim trademark rights in certain design elements of the Chuck Taylor All-Star sneaker sold by Converse (and as discussed in the Petition to Cancel, numerous other shoe companies for the past eighty years). Notably, the ‘482 Registration shares several important common elements - 2 - with the ‘753 Registration, as can be seen at a glance from a comparison of the marks shown in the following table: Drawing from ‘482 Registration Drawing from ‘753 Registration These common elements include a toe cap (which the ‘482 Registration refers to as a “raised” and “protruding” “convex rubber toe cap”); a multi-layered toe bumper featuring diamonds and line patterns (which the ‘482 Registration refers to as a “multi-patterned rubber toe strip” with “four layers of bands featuring intricate and distinct patterns of three- dimensional diamonds and lines”); and two midsole stripes (which the ‘482 Registration refers to as “double rand stripes” comprising “two parallel horizontal lines run along the rubber outsole of the shoe . “) (collectively, the “Toe Cap, Toe Bumper, and Midsole Stripe Combination”).1 The ‘482 Registration also features five additional elements not claimed in the ‘753 Registration: (1) an “ankle patch…with a star in the center”; (2) “two round brushed steel 1 In its application that resulted in the ‘753 Registration, Converse affirmatively claimed the prior ‘482 Registration, as required by 37 C.F.R. § 2.36 (“Prior registrations of the same or similar marks owned by the applicant should be identified in the application.”). - 3 - grommets . in a horizontal line above the inside medial arch of the shoe”; (3) “brushed metal eyestay grommets”; (4) “double stitching and box-like stitch along the upper”; and (5) “top line collar throat shape” (collectively, the “Additional Elements”). B. The ITC Determined That The ‘753 Registration Is Invalid As set forth in detail in the Petition to Cancel, Converse sued Highline United on the ‘753 Registration in the ITC. See Ex. 1 (Pet. to Cancel), at 15-16, ¶¶ 16-17. After exhaustive discovery, a lengthy trial, as well as extensive post-trial briefing, the Commission concluded that, among other things, “the ‘753 trademark is invalid.” Id. at Ex. 1 (Pet. to Cancel, Ex. A: Commission Opinion, USITC Inv. No. 337-TA-936), at 19. Notably, Converse did not assert the ‘482 Registration in the ITC proceeding. Instead, Converse asserted only the ‘753 Registration, arguing that it had a “near century of substantially exclusive use” of the Toe Cap, Toe Bumper, and Midsole Stripe Combination. Ex. 2 (Converse Inc.’s Complaint, USITC Inv. No. 337-TA-936), at 40, ¶ 101. As set forth in detail in the Petition to Cancel, however, the Commission determined that the Toe Cap, Toe Bumper, and Midsole Stripe Combination lacks secondary meaning and had been in “extensive use by multiple third parties” for eight decades. Ex. 1 (Pet. to Cancel, Ex. A: Commission Opinion, USITC Inv. No. 337-TA-936), at 26. C. The ITC Decision Invalidating The ‘753 Registration Is On Appeal Converse appealed the Commission’s decision invalidating the ‘753 Registration to the United States Court of Appeals for the Federal Circuit. Converse Inc. v. International Trade Commission, No. 16-2497 (Fed. Cir., filed 16 Aug. 2016). See Ex. 3 (Converse’s Pet. for Review, Converse Inc. v. International Trade Commission, No. 16-2497, Dkt. No. 1). HU Liquidation, LLC has intervened in the appeal, which is currently pending. See Ex. 4 - 4 - (Order Granting HU Liquidation, LLC’s Unopposed Motion for Leave to Intervene, Converse Inc. v. International Trade Commission, No. 16-2497, Dkt. No. 33). Of particular relevance to this proceeding, Converse is appealing the ITC’s finding that the Toe Cap, Toe Bumper, and Midsole Stripe Combination lacks secondary meaning based on survey evidence. See Ex. 3 (Converse’s Pet. for Review, Converse Inc. v. International Trade Commission, No. 16-2497, Dkt. No. 1). In addition, Converse is appealing the ITC’s finding that: “[b]ased on the foregoing evidence of extensive use by multiple third parties of the [design recited in the ‘753 Registration] for the last eighty years, the Commission finds that the average consumer prior to the first alleged infringement in 2003 was likely aware of this third-party use, which would lead them to associate the [design recited in the ‘753 Registration] with multiple sources, and therefore substantially diminishes any secondary meaning in Converse’s mark. [T]he record evidence here does not just show random, irrelevant third-party use, but third party use of the same mark to promote the same goods to the same consumer class.” Ex. 1 (Pet. to Cancel, Ex. A: Commission Opinion, USITC Inv. No. 337-TA-936), at 26. IV. ARGUMENT TBMP § 510.02(a) provides: “Whenever it comes to the attention of the Board that a party or parties to a case pending before it are involved in a civil action which may have a bearing on the Board case, proceedings before the Board may be suspended until final determination of the civil action.” The 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.” New Orleans Louisiana Saints LLC and NFL Properties v. Who Dat?, Inc., 99 U.S.P.Q. 2d 1550 (T.T.A.B. 2011). - 5 - The appeal before the Federal Circuit and the instant Cancellation proceeding involve common factual and legal issues. On appeal, the Federal Circuit will decide the question of whether the ‘753 Registration, which comprises the Toe Cap, Toe Bumper, and Midsole Stripe Combination, is invalid. Given the fact that the Toe Cap, Toe Bumper, and Midsole Stripe Combination are central elements of the mark claimed in the ‘482 Registration, the Federal Circuit’s decision will have a significant bearing on the Board’s analysis of whether to cancel the ‘482 Registration in whole or in part. For example: Confirmation by the Federal Circuit that the Commission appropriately relied upon “evidence of extensive use by multiple third parties of the [Toe Cap, Toe Bumper, and Midsole Stripe Combination] for the last eighty years” in finding no secondary meaning would have a significant bearing here. Most of these instances of third party use also apply to the ‘482 Registration. A finding that the ‘753 Registration (and therefore the Toe Cap, Toe Bumper, and Midsole Stripe Combination) is invalid would have a significant bearing on the secondary meaning of all or most of the Additional Elements of the ‘482 Registration. Finally, if the Federal Circuit were to reverse the Commission opinion and find that the Toe Cap, Toe Bumper, and Midsole Stripe Combination of the ‘753 Registration has secondary meaning (which would be contrary to the evidence and the law), such a decision would necessarily have a significant bearing on the validity of the ‘482 Registration, which includes the Toe Cap, Toe Bumper, and Midsole Stripe Combination.