Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA832573 Filing date: 07/11/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92063829 Party Defendant Pamela Weintraub Correspondence JOSHUA R BRESSLER Address BRESSLER LAW PLLC 3 WEST 35TH ST 9TH FL NEW YORK, NY 10001 UNITED STATES Email: [email protected], [email protected] Submission Motion to Suspend for Civil Action Filer's Name Joshua R. Bressler Filer's email [email protected], [email protected] Signature /Joshua R Bressler/ Date 07/11/2017 Attachments MOTION TO SUBSTITUTE ASSIGNEE AND SUSPEND PROCEEDING JRB 11 July 2017 for TTAB.pdf(3403396 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD JERRICK VENTURES, LLC, Petitioner, vs. Cancellation No. 92063829 PAMELA WEINTRAUB, Reg. No. 4932689 Respondent. MOTION TO SUBSTITUTE ASSIGNEE AS RESPONDENT AND TO SUSPEND THIS PROCEEDING Pursuant to assignments duly recorded with the U.S. Patent and Trademark Office (“USPTO”) Assignments Division on July 3, 2017 (effective June 30, 2017) (collectively, the “Assignments”), Penthouse Media Group, Inc. (“Penthouse”) is the successor in interest to all of Respondent Pamela Weintraub’s (“Weintraub”) rights and goodwill in and to the mark and registration that is the subject of this Cancellation proceeding (Reg. No. 4,932,689; the “Registration”). Copies of the Assignments and their USPTO electronic filing receipts are attached hereto as Exhibit A. I. Motion To Substitute Assignee As Respondent Pursuant to Trademark Trial and Appeal Board Manual of Procedure §512.01, Weintraub hereby moves to substitute Penthouse for Weintraub as Respondent in this Proceeding. Through its counsel of record concurrently entering its Notice of Appearance on Penthouse’s behalf for this Proceeding, Penthouse joins Weintraub in this motion. Alternatively, should the Board decline to substitute Penthouse for Weintraub in this Proceeding, Weintraub and Penthouse move the Board to join Penthouse as Respondent in this Proceeding. II. Motion To Suspend This Proceeding Pending Resolution of Related Federal District Court Litigation On July 6, 2017, Penthouse instituted against Petitioner and other persons and entities that certain Federal district court litigation captioned Penthouse Media Group, Inc .and General Media Communications, Inc. v. Guccione Collection, LLC, Jeremy Frommer, Rick Schwartz, Jerrick Media Holdings, Inc., Jerrick Ventures, Inc., Jerrick Ventures LLC, Filthy Gorgeous Media, LLC, Paradox LLC, Jared Leto and Does 1-100, 17 CV 4980 (PA-FFM) (C.D. Cal. 2017) for trademark infringement and related claims concerning the mark and Registration that is the subject of this Proceeding (the “Federal Court Action”), including a claim for a judicial declaration that Weintraub's filing of an intent to use application on June 6, 2012, conferred a priority of right superior to any rights of Jerrick Ventures LLC and that the present Cancellation should be dismissed with prejudice. A true and complete copy of the Complaint is attached to this Motion as Exhibit B. Pursuant to TBMP § 510 and 37 CFR §2.117 (a),1 in the interests of judicial economy and the avoidance of inconsistent results, Penthouse respectfully requests that the Board immediately suspend this Proceeding pending resolution of the Federal Court Action. * * * 1 37 CFR § 2.117(a) provides: “Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action or another Board proceeding which may have a bearing on the case, proceedings before the Board may be suspended until termination of the civil action or the other Board proceeding.” 2 WHEREFORE, Respondent Weintraub and Assignee/Proposed Respondent Penthouse respectfully request that the Board grant all relief sought herein. Dated: July 11, 2017 BRESSLER LAW PLLC s/ Joshua R. Bressler Joshua R. Bressler 3 West 35th Street, 9th Floor New York, NY 10001 Tel: (917) 969-4343 Fax: (917) 591-7111 e-mail: [email protected] Attorney for Respondent Pamela Weintraub Dated: July 11, 2017 SEDGWICK LLP s/ Caroline H. Mankey Caroline H. Mankey Anurita S. Varma 801 South Figueroa Street, 19th Floor Los Angeles, CA 90017-5556 Attorney for Assignee/Proposed Respondent Penthouse Media Group, Inc. 3 CERTIFICATE OF SERVICE I, Joshua R. Bressler, hereby certify that today a true and complete copy of the foregoing MOTION TO SUBSTITUTE ASSIGNEE AS RESPONDENT AND TO SUSPEND THIS PROCEEDING has been served on counsel of record for Petitioner and for Assignee/Proposed Respondent Penthouse Media Group, Inc., respectively, in the above-captioned proceeding by depositing same with the U.S. Postal Service as U.S. first class mail with postage-prepaid in an envelope addressed as follows: Petitioner: Kenneth Rubinstein Cohen Tauber Spievack & Wagner P.C. 420 Lexington Avenue, Suite 2400 New York, NY 10170 UNITED STATES Assignee/Proposed Respondent: Caroline H. Mankey Anurita S. Varma SEDGWICK LLP 801 South Figueroa Street, 19th Floor Los Angeles, CA 90017-5556 An electronic copy also was served on the following email addresses: For Petitioner (via ESTTA email addresses of record): [email protected], [email protected], [email protected] For Assignee/Proposed Respondent (via email): [email protected]; [email protected] Date: July 11, 2017 BRESSLER LAW PLLC s/ Joshua R. Bressler Joshua R. Bressler 3 West 35th Street, 9th Floor New York, NY 10001 Tel: (917) 969-4343 Fax: (917) 591-7111 e-mail: [email protected] Attorney for Respondent Pamela Weintraub 4 EXHIBIT A See attached. United States Patent and Trademark Office Home | Site Index | Search | Guides | Contacts | eBusiness | eBiz alerts | News | Help Electronic Trademark Assignment System Confirmation Receipt Your assignment has been received by the USPTO. The coversheet of the assignment is displayed below: TRADEMARK ASSIGNMENT COVER SHEET Electronic Version v1.1 Stylesheet Version v1.2 SUBMISSION TYPE: NEW ASSIGNMENT NATURE OF ASSIGNMENT OF THE ENTIRE INTEREST AND CONVEYANCE: THE GOODWILL SEQUENCE: 1 CONVEYING PARTY DATA Execution Name Formerly Date Entity Type MS PAMELA INDIVIDUAL: UNITED WEINTRAUB 07/03/2017 STATES RECEIVING PARTY DATA Name: ALPHA CYGNI, INC. Street 95 Claxton Ave. Address: City: Watertown State/Country: CONNECTICUT Postal Code: 06795 Entity Type: Corporation: WYOMING PROPERTY NUMBERS Total: 3 Property Type Number Word Mark Serial Number: 86002052 OMNI Registration 4964743 OMNI Number: Registration 4932689 OMNI Number: CORRESPONDENCE DATA Fax Number: 9175917111 Phone: 9179694343 Email: [email protected] Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent using a fax number, if provided; if that is unsuccessful, it will be sent via US Mail. Correspondent Name: JOSHUA R BRESSLER Address Line 1: 3 WEST 35TH ST, 9 FL Address Line 2: BRESSLER LAW PLLC Address Line 4: NEW YORK, NEW YORK 10001 ATTORNEY DOCKET Weintraub amt NUMBER: NAME OF SUBMITTER: Joshua R. Bressler Signature: /Joshua R Bressler/ Date: 07/03/2017 Total Attachments: 4 source=USPTO Assignment to ACG for recordation#page1.tif source=USPTO Assignment to ACG for recordation#page2.tif source=USPTO Assignment to ACG for recordation#page3.tif source=USPTO Assignment to ACG for recordation#page4.tif RECEIPT INFORMATION ETAS ID: TM433685 Receipt Date: 07/03/2017 Fee Amount: $90 Return to ETAS home page | .HOME | INDEX| SEARCH | eBUSINESS | CONTACT US | PRIVACY STATEMENT TRADEMARK ASSIGNMENT AGREEMENT This Trademark Assignment Agreement (“Agreement”) is made by and between: Pamela Weintraub, an individual having an address at 1535 East 14th St., Apartment 6J, Brooklyn, NY 11230 (the "Assignor") of the one part; AND Alpha Cygni, Inc. a corporation organized and existing under the laws of Wyoming, located at 95 Claxton Avenue, Watertown, CT 06795 (the "Assignee") of the other part. The Assignor and the Assignee are hereinafter referred to, individually, as “Party” and collectively, as “Parties”. WHEREAS, the Assignor is the proprietor and beneficial owner of the trademark(s) and application(s) and registrations therefor, including, without limitation Federal trademark registrations and foreign/international trademarks and registrations, listed on Exhibit “A” (all collectively, the “Trademark(s)”) in the countries so denoted thereto (the “Territory”); WHEREAS, the Assignee desires to acquire from the Assignor the Assignor’s rights in the Trademark(s) in accordance with the terms and conditions of this Agreement. NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor hereby sells, assigns and transfers to Assignee all right, title and interest in and to the Trademark(s), together with the goodwill of the business symbolized by the Trademark(s), and the right to bring action for past infringement of the Trademark(s) as follows: 1. For and in consideration of the amount paid to Assignor, the Assignor does hereby assign to the Assignee all of the Assignor’s rights, title and interests derived from and in connection with the Trademark(s) in the Territory. Assignor hereby conveys, transfers, assigns, delivers, and contributes to Assignee all of Assignor’s right, title, and interest of whatever kind in and to the Trademark(s), together with (1) the goodwill related to any products or services in respect upon which the Trademark(s) are used and for which they are registered or filed (and as concerns the U.S. intent to use application, that portion of the business to which the mark pertains): (2) all damages hereafter due or payable to Assignor with respect to the Trademark(s), including without limitation, damages, and payments for past or future infringements and misappropriations of the Trademark(s): and (3) all rights to sue for past, present and future infringements or misappropriations of the Trademarks. 2. This Agreement shall come into effect as of June 30, 2017. The Parties hereto agree that this Agreement shall be submitted to the aforesaid authority in each country in the Territory for its registrations.