Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1009490 Filing date: 10/17/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91249965 Party Defendant Beata Music LLC Correspondence ERIC BJORGUM Address KARISH & BJORGUM PC 119 E UNION STREET, SUITE B PASADENA, CA 91103 UNITED STATES [email protected], [email protected], [email protected] 213-785-8070 Submission Motion to Suspend for Civil Action Filer's Name A. Eric Bjorgum Filer's email [email protected], [email protected], [email protected] Signature /A. Eric Bjorgum/ Date 10/17/2019 Attachments 20191017 Applicants Motion to Suspend.pdf(38743 bytes ) Exh A -- D.N. 9 -- BEATA -- Amended Complaint.pdf(184964 bytes ) Exh B -- D.N. 23-1 -- COURT -- Order Granting Motion to Transfer.pdf(50763 bytes ) Exh C -- D.N. 30 -- DEFENDANTS -- Answer with Counterclaims.pdf(245248 bytes ) UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD In The Matter Of Trademark Application No. 87/803,534 Filed on February 20, 2018; Published: February 5, 2019 Mark: THE RASCALS ) Dino Danelli and Edward Brigati, ) ) Opposition No. 91249965 Opposer, ) ) v. ) ) ) Beata Music LLC, ) ) Applicant. ) ) APPLICANT’S MOTION TO SUSPEND PROCEEDINGS PENDING OUTCOME OF PENDING CIVIL ACTION Applicant, Beata Music LLC (“Beata”), hereby moves the Trademark Trial and Appeals Board (“Board”) to suspend proceedings pending the outcome of a pending civil action. Specifically, on March 30, 2018, Beata Music LLC filed its first Amended Complaint in Case No. 2:18-cv-01536-R-SK, titled Beata Music, LLC v. Dino Danelli and Eddie Brigati, in the United States District Court for the Central District of California (“the Civil Action”). A copy of the First Amended Complaint is attached as Exhibit A. The Complaint alleges that Applicant Beata Music, LLC has the right to use the name THE RASCALS in connection with live performances and merchandise sold at such live performances. 1 Upon the motion of Dino Danelli and Eddie Brigati, the Court transferred the case to the Southern District of New York. A copy of the Court’s Order transferring the case is attached as Exhibit B. Opposers Dino Danelli and Eddie Brigati filed counterclaims arguing that Beata has no rights to register or use the name THE RASCALS. A copy of the Answer and Counterclaims are attached as Exhibit C. The counterclaims seek remedies including injunctive relief prohibiting Beata from attempting to register THE RASCALS Mark and from using, printing, distributing, selling, offering for sale, possessing, advertising, performing under, promoting or displaying in any way the THE RASCALS Mark without the express permission of either Danelli or Brigati. (Exhibit C, pp. 21-22.) Where a party to a case pending before the Board is also involved in a civil action that may have a bearing on the T.T.A.B. matter, the Board may suspend the proceeding until the final determination of the civil action. 37 CFR § 2.117(a); TBMP § 510.02(a). This is because “a decision by the United States District Court would be binding on the United States Patent and Trademark Office whereas a determination by the Patent Office as to the respondent’s right to retain its registration would not be binding nor would res judicata automatically attach based on a determination by the USPTO with respect to a subsequent or contemporaneous proceeding before the federal district court.” Whopper-Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971). A court’s decision regarding the right to registration is binding on the T.T.A.B. The Seven- Up Cp. V. Bubble Up Co., 136 U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re Alfred Dunhill Ltd., 224 U.S.P.Q. 501, 503 (T.T.A.B. 1984); J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 32:94 (4th ed. 2006) (hereinafter “McCarthy”). 2 Opposers Dino Danelli and Edward Brigati and Applicant Beata Music LLC are both parties to the Civil Action, with Beata Music LLC as Plaintiff and Counter-defendant, and with Dino Danelli Edward Brigati as Defendants and Counter-claimants. The Civil Action is a live and ongoing controversy currently pending before the U.S. District Court for the Southern District of New York. Generally speaking, a final determination by a District Court in trademark infringement litigation can take a matter of months and, in some cases, a matter of years. Both the present proceeding and the matter before the District Court exhaust state and federal monetary resources, not to mention the man-hours of government employees involved in both proceedings. To minimize the time, money and resources expended by both parties as well as the overseeing governmental agencies, the Board may find it expedient to suspend the present proceeding until the District Court renders a final judgment or sends instructions for the Board to proceed in the present matter. The Opposition and the Civil Action share the same ultimate issue, i.e. which party has valid and superior trademark rights in THE RASCALS mark. The posture of the parties is the same in both disputes. As the civil trademark infringement allegations necessitate a determination of ownership rights, the Opposition and Civil Action involve identical and nearly identical allegations and rules of law. The allegations will be adjudicated based on a formal examination of the same or an even more expansive set of relevant facts. Further, the same federal trademark law will be relied on by the District Court and by the Board, as both assess the claims and evidence in order to arrive at a final judgment. If the District Court were to rule in favor of either party, the Board would be bound to reflect such a ruling when moving to issue a final judgment in the present Opposition proceeding. 3 As the Plaintiff and Defendants have alleged a variety of causes and requested, among other things, relief in the form of injunctive relief, damages, and attorney’s fees, it is not possible for the issues now present in the Civil Action to be adjudicated by the Board. Further, it is clear that any continued involvement by the parties in the present Opposition would be redundant and would also be wasteful of the limited resources currently afforded to the USPTO for opposition and cancellation proceedings. As such, and considering the binding effect of any determination made by the District Court in the Civil Action, judicial efficiency would be best served by allowing the Civil Action to proceed while the present proceeding is suspended pending the outcome of the Civil Action. Once there is a final ruling or a final resolution in some other form is reached, the parties or the Court itself will inform the Board of the District Court’s decision, and the Board can then decide what is the appropriate manner with which to proceed at that time. See The Other Tel. Co. v. Conn. Nat’l Tel. Co., Inc., 181 U.S.P.Q. 125, 126-7 (T.T.A.B. 1974). 4 CONCLUSION Based on the foregoing, Beata respectfully requests that this action be suspended pending the final outcome of the District Court litigation, which will occur when a decision on the merits of the case (i.e., a dispositive ruling that ends litigation on the merits) has been rendered, and no appeal has been filed therefrom, or all appeals filed have been decided. See TBMP § 510.02(b). Date: October 17, 2019 By: /Eric Bjorgum/ [electronic signature] Eric Bjorgum Attorney for Applicant Beata Music LLC Karish & Bjorgum, PC 119 E. Union St., Suite B Pasadena, CA 91103 (213) 785-8070 [email protected] 5 CERTIFICATE OF SERVICE The undersigned hereby certifies that an image of this paper is being served electronically upon all parties to this proceeding at the addresses recorded in the following manner on this day, October 17, 2019. By Email To: MICHAEL B. KRAMER & ASSOCIATES 488 MADISON AVENUE, STE 1120 NEW YORK, NY 10022 UNITED STATES [email protected], [email protected] Phone: 212-319-0304 /Eric Bjorgum/ Eric Bjorgum Attorney for Applicant Beata Music LLC 1 Case 2:18-cv-01536-R-SK Document 9 Filed 03/30/18 Page 1 of 17 Page ID #:31 1 A. Eric Bjorgum (State Bar No. 198392) Marc A. Karish (State Bar No. 205440) 2 KARISH & BJORGUM, PC 3 119 E. Union St., Suite B 4 Pasadena, California 91103 Telephone: (213) 785-8070 5 Facsimile: (213) 995-5010 6 E-Mail: [email protected] 7 BEATA MUSIC, LLC, Plaintiff, 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 WESTERN DIVISION 11 BEATA MUISC, LLC Case No. 2:18-cv-01536 R (SKx) 12 Plaintiffs 13 FIRST AMENDED COMPLAINT vs. FOR: 14 1. DECLARATORY JUDGMENT RE 15 DINO DANELLI, EDDIE BRIGATI and DOES 2-10, inclusive PLAINTIFFS’ OWNERSHIP OF 16 TRADEMARK Defendants. 17 2. DECLARATORY JUDGMENT RE DEFENDANTS’ OWNERSHIP OF 18 TRADEMARK 19 3. DECLARATORY JUDGMENT RE NON-INFRINGEMENT OF 20 SERVICE MARK 21 4. DECLARATORY JUDGMENT RE FALSE DESIGNATION OF ORIGIN 22 5. TRADEMARK DILUTION 23 24 REQUEST FOR JURY TRIAL 25 26 27 28 1 FIRST AMENDED COMPLAINT OF BEATA MUSIC LLC Case 2:18-cv-01536-R-SK Document 9 Filed 03/30/18 Page 2 of 17 Page ID #:32 1 Plaintiff BEATA MUSIC, LLC, (“Plaintiff” or “BEATA MUSIC”), by its 2 attorneys, Karish & Bjorgum, PC, respectfully submit this Complaint and aver as 3 follows: 4 5 JURISDICTION AND VENUE 6 1.