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.