Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA935130 Filing date: 11/14/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91239795 Party Defendant Eymun Talasazan Correspondence KIRK EDWARD SCHENCK Address KULIK GOTTESMAN SIEGEL & WARE LLP 15303 VENTURA BOULEVARD 14TH FLOOR LOS ANGELES, CA 91403 UNITED STATES [email protected], [email protected] 310-600-3800 Submission Motion to Suspend for Civil Action Filer's Name Kirk Edward Schenck Filer's email [email protected] Signature /Kirk Edward Schenck/ Date 11/14/2018 Attachments Starboy Talasazan Motion to Suspend Opp No. 91239795FinalFiled.pdf(465465 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD XO TRADEMARKS, LLC Opposition No: 91239795 Opposer, Application No: 87383555 Mark: STARBOY vs. Published in the Official Gazette January 30, 2018 EYMUN TALASAZAN, App. Filing Date: March 23, 2017 Applicant. APPLICANT/RESPONDENT EYMUN TALASAZAN’S MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT COURT ACTION TO: Peter E. Nussbaum Chiesa, Shahinian & Giantomasi, PC One Boland Drive West Orange, New Jersey 07052 Attys for Opposing Party -! -1 PLEASE TAKE NOTICE that Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Applicant/Respondent (“Respondent”) Eymun Talasazan, through its counsel, Kirk Edward Schenck, hereby submits the following motion and hereby does move to suspend the above-referenced proceedings (the “TTAB Proceedings”) pending final disposition of federal district court case Respondent filed on November 14, 2018 in the matter of Eymun Talasazan vs. XO Trademarks, LLC, et al. (CASE NO: 2:18-cv-09611) in federal district court for the Central District of California (the “District Court Action”). Copies of the complaint and civil cover sheet in the District Court Action are attached as Exhibit 1. The District Court Action complaint seeks a judgment that Petitioner XO Trademarks, LLC (“Petitioner”) is engaged in trademark infringement and false endorsement, in violation of Section 43(a) of the Lanham Act, based on its use of the trademark (Serial Number 87/649,533) that is at issue in this TTAB Proceeding. When the parties are involved in civil court proceedings concerning the same marks and issues, the “standard procedure” of the Board is to suspend its administrative proceedings pending outcome of the civil litigation. New Orleans -! -2 Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (quoting 6 McCarthy on Trademarks and Unfair Competition §32:47 (5th ed. updated September 2017)). The District Court Action need not even be dispositive of the Board proceeding to warrant suspension. Rather, it is sufficient that the District Court Action have bearing on the issues before the Board to justify a suspension. Id. Here, the District Court Action involves the same parties, the same marks, and the same services and activities as those at issue in the TTAB Proceedings. Respondent filed the District Court Action against the Petitioner in this TTAB Proceedings. Respondent contends he legitimately and exclusively owns and controls the trademarks upon which Petitioners’ claims in the TTAB Proceedings are based and the marks Petitioner contends are infringing upon its rights in the District Court Action. Respondent contends in the District Court Action that Petitioner, in violation of Respondent’s rights, uses Respondent’s trademark (Serial Number 87/649,533). This is the very mark that Petitioner is opposing in the TTAB Proceedings. Petitioner. The parties and marks in the TTAB Proceedings and the District Court Action are the same or sufficiently related, such that the District -! -3 Court Action will be dispositive of, or at least have a meaningful bearing upon, the issues before this Board. In addition, the issues before this Board are also at issue in the District Court Action. Respondent’s infringement claims involve the same issues the Board will be deciding in these TTAB Proceedings. But, the District Court Action will also involve other matters and broader issues, such as Petitioners’ unauthorized use of other elements of Respondent’s intellectual property without permission. In the District Court Action, Respondent is seeking, among other remedies, damages and injunctive relief, which are not available to either party in the TTAB Proceedings. Because the parties, marks, and issues in the District Court Action are the same and because the outcome will be dispositive or at least impact the claims before the Board, suspension of the TTAB Proceedings pending the outcome of the District Court Action between the parties is warranted. Moreover, judicial economy is served by immediately suspending all activity in the TTAB Proceedings including, without, all pending discovery and motions to compel discovery. See Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125 (1974). The parties are currently engaged in -! -4 discovery with outstanding discovery requests and depositions scheduled on both sides. The discovery period is not scheduled to close until November 3, 2017. Because the District Court Action involves not only the issues currently before the Board, but also issues of false endorsement and unfair competition, discovery in the District Court Action will involve documents, depositions, and other information that is not being and will not be gathered or produced in the TTAB Proceedings. Thus, suspending the TTAB Proceedings as to all outstanding requests would avoid wasted time and expenses for both parties and the Board. See, e.g, Softbelly’s Inc v. Ty, Inc., 2002 WL 1844210, *3 (citing Other Telephone, 181 USPQ 126-27) (“It would be a waste of the Board’s and the parties’ time and resources to proceed to litigate this case at the Board when the same issues” are pending in court.) Given the foregoing, an immediate suspension of the proceedings, including all outstanding and pending discovery, is appropriate. Finally, the Board has reached this conclusion in similar circumstances. In Other Telephone, the Board stated that “it is clear” that a District Court Action alleging infringement would “directly affect the resolution” of a proceeding -! -5 before it involving the same trademark claims, which is the very defense Respondent has offered in its responsive pleadings in this TTAB Proceedings. In that proceeding, the moving party filed a motion to suspend with only 8 days left in its testimony period. Because suspension is standard practice when a District Court Action is pending, it did not take any testimony on reliance upon the Board’s eventual suspension of the proceeding. In granting the motion, over objection, the Board reasoned that judicial economy was served by avoiding the time and expense of testimony in a Board proceeding when a pending District Court Action would impact, or even be dispositive of, the issues before the Board. Id. Moreover, the Board did not fault the moving party for not taking testimony while awaiting the Board’s suspension of the proceedings. Rather, it held that if the proceedings were resumed, the moving party would not be in default, but would have additional time for the taking of testimony. Id. The same reasoning applies here. // // // -! -6 For these reasons, Respondent submits that an order from the Board immediately suspending all activity related to the TTAB Proceedings, including all outstanding discovery requests and scheduled depositions, is warranted. The same is respectfully requested. Dated: November 14, 2018 Law Offices of Kirk Edward Schenck, PC 15303 Ventura Boulevard, 14th Floor Los Angeles, CA 91403 By: __________________________________ Kirk Edward Schenck (Calif. SBN: 173963) [email protected] Direct: 310.600.3800 -! -7 CERTIFICATE OF SERVICE I, Kirk Edward Schenck, hereby certify that on November 14, 2018, I served a true and correct copy of the foregoing APPLICANT/RESPONDENT EYMUN TALASAZAN’S MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT COURT ACTION by electronic mail upon: PETER NUSSBAUM Chiesa, Shahinian & Giantomasi, PC One Boland Drive West Orange, New Jersey 07052 [email protected] Dated: November 14, 2018 Law Offices of Kirk Edward Schenck, PC 15303 Ventura Boulevard, 14th Floor Los Angeles, CA 91403 By: __________________________________ Kirk Edward Schenck (Calif. SBN: 173963) [email protected] Direct: 310.600.3800 -! -8 Exhibit 1 1 Kirk Edward Schenck, Esq. (SB# 173963) LAW OFFICES OF KIRK EDWARD SCHENCK, PC 2 15303 Ventura Boulevard, 14th Floor Los Angeles, California 91403 3 t: 310-600-3800 e: [email protected] 4 Attorneys for Plaintiff: 5 EYMUN TALASAZAN 6 7 UNITED STATES DISTRICT COURT 8 FOR THE CENTRAL DISTRICT OF CALIFORNIA 9 10 EYMUN TALASAZAN, an Individual, CASE NO: 2:18-cv-09611 11 COMPLAINT FOR: 12 Plaintiff, 13 (1) FEDERAL TRADEMARK INFRINGEMENT [15 U.S.C. 14 vs. §1114/LANHAM ACT §43(a)] (Serial Number 87/383,555) 15 XO TRADEMARKS, LLC, a Delaware 16 Limited Liability Company; ABEL MAKKONEN TESFAYE, professionally (2) FEDERAL TRADEMARK 17 known as “THE WEEKND,” an Individual; INFRINGEMENT [15 U.S.C. and DOES 1-10, Inclusive, §1114/LANHAM ACT §43(a)] 18 (Serial Number 87/649,533) 19 Defendant DEMAND FOR JURY TRIAL 20 21 22 23 24 25 26 27 28 -1! - COMPLAINT FOR DAMAGES 1 2 COMES NOW, Plaintiff EYMUN TALASAZAN, who files this Complaint 3 against Defendants XO TRADEMARKS, LLC, a Delaware Limited Liability Company 4 (“XO”); ABEL MAKKONEN TESFAYE, professionally known as “The Weeknd” (the 5 “Weeknd”), an Individual; and DOES 1-10 (collectively, “Defendants”). 6 JURISDICTIONAL ALLEGATIONS 7 1. This Court has subject matter jurisdiction under §39 of the Lanham Act 15 U.S.C. 8 §1121, under 28 U.S.C. §§ 1331 and 1338(a) and (b), and under 15 U.S.C. §1051 et seq., 9 in that the case arises out of §43(a) of the Lanham Act for trademark infringement. 10 2. Venue is proper, inter alia, under 28 U.S.C.