IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter Oftrademark aPP1i°ati°n Sifiaflflelfilmfifi
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`For the mark“ ”
`Published in the Official Gazette on December 12, 2111!;
`Application filing date: Eebruary 22, 211112
`Applicant: guy , floffmann
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`Immumummmmmmumummml
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`11'12'2°°3
`U‘S’P‘°°”“TM°“’TM M3“R<=ptDt.#22
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`Opposition No. 21_,l_i5L&§
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`MOTION FOR SUMMARY JUDGMENT
`F
`OF
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`(including affidavits and exhibits)
`filed by Joe J. Alfaro, Jr., Opposer
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`CERTIFICATE OF MAILING
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`I hereby certify that this correspondence is being deposited with the United States Postal Service
`as “Express Mail Post Office to Addressee” in an envelope addressed to:
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`Commissioner for Trademarks
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`2900 Crystal Drive
`Arlington, VA 22202-3514
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`on
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`Joe J. Alfaro, Jr., Opposer
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`Si
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`ture
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of trademark application Serial No, 281 IQ344
`Filed on: Eebma_ry 22, 29522
`For the mark“ ” .~—-—~”"’*"\
`Published in the Official Gazette on a2mZ
`ll||||lll|l|||||l|||||ll|||||||ll||l|||l||||||l|||
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`Joe J. Alfaro, Jr.
`V
`Guy A. .Hoffmann
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`Opposition No. 9_1_L5_5_L8_&
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`11-12-2003
`u.s. Patent & TMOtcITM Mail Rep! 01» #2?
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`
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`Joe J. Alfaro, Jr., Owner of the band “The Superfreaks”
`481 W. Blaine Street, Riverside, CA 92507
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`I. Introduction
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`Opposer, Joe J. Alfaro, Jr., has moved for Summary Judgment of this case. Opposer will
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`demonstrate in his motion for Summary Judgment brief that there are no genuine issues as to any
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`material facts, and that he is indeed entitled to judgment as a matter of law.
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`11. Backgfld
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`In August of 1999, Opposer Joe J . Alfaro, Jr., founded and named his band “The Superfreaks”
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`for the purpose of providing live musical performances. Opposer has been using the Service
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`Mark “The Superfreaks” to identify his services exclusively and continuously since August of
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`1999 to present. The Superfreaks first paid gig was on October 15, 1999. Opposer used the
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`name in Interstate Commerce for the first time on December 31, 1999 in Laughlin , Nevada.
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`Opposer has always had sole discretion and control over both the nature and quality of the band’s
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`performances, as well as, the use of the service mark “The Superfreaks” (please see sworn,
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`notarized affidavits from Opposer and band members). Opposer is the owner of a Certificate of
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`Registration from the State of California for the Service Mark “The Superfreaks” (please see
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`copy of certificate for State Reg. No. 056707 for Class: Int’l. 41).
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`In late 2001, Applicant, who used to perform with The Superfreaks, was dismissed and
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`became very disgruntled vowing to get “PAYBACK” from Opposer (please see copy of
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`Applicant’s actual e-mail sent to David Hickam Gulley and sworn, notarized affidavit from
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`David Hickam Gulley, authenticating Applicant’s e-mail).
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`Applicant’s filing of an unauthorized “Intent to Use” application with the USPTO is just one
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`in a series of malevolent actions taken by Applicant in his quest to get “PAYBACK” from
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`Opposer. Only four days after filing his unauthorized application with the USPTO, Applicant
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`filed a Small Claims suit against the Opposer in Superior Court of California, in the County of
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`Riverside, City of MorenoValley, for an alleged “breach of contract” conceming Applicant’s
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`participation in Opposer’s band “The Superfreaks” the same Service Mark that is the subj ect of
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`this Opposition proceeding (please see attached copies of official small claims case documents).
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`In addition, Applicant began to interfere with the Opposer’s livelihood by harassing some of the
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`Opposer’s clients which prompted the Opposer to file a counterclaim on March 15, 2002 in
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`Superior Court of California, in the County of Riverside for “Intentional Interference” against the
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`Applicant (please see copy Opposer’s counterclaim case). Applicant lost his Small Claims case
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`in court on April 10, 2002 (please see copy of official court judgment) and then began to harrass
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`members of the band, and Opposer’s new clients. Applicant also falsely represented himself as
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`the owner of a Federal Registration of the Service Mark “Superfreaks” to Opposer’s clients and
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`warned them not to hire the band because it would be illegal for them to do so (please see sworn,
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`notarized affidavit from The Superfreaks’ client Timmy Daniels).
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`After learning that Applicant had filed an unauthorized application with the USPTO to
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`register Service Mark “Superfreaks Funky Disco Revue”, a mark virtually identical to Opposer’s
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`Service Mark “The Superfreaks” , Opposer’s attorney, Christopher Connolly, mailed a “cease
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`and desist” letter to the Applicant on September 12, 2002 warning Applicant that he was
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`infringing on Opposer’s trademark (please see copy of “cease and desist” letter). Applicant
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`ignored Opposer’s “cease and desist” letter and continued to pursue a Federal Registration of the
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`Opposer’s Service Mark with the USPTO. Applicant has been persistent in his attempts to
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`disrupt, defame, and cause injury to the Opposer’s band because in Applicant’s own words, he
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`wants “PAYBACK” from Opposer for being dismissed from the band.
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`On January 15, 2003, Opposer, Joe J. Alfaro, Jr., filed a Notice of Opposition with the
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`Trademark Trial and Appeal Board against Applicant, Guy A. Hoffmann, for his unauthorized
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`“Intent to Use” application to Federally Register the Mark “Superfreaks Funky Disco Revue”
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`opposing on the basis of a number of pleadings including Prior Use and Ownership of the Mark
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`“The Superfreaks”, Likelihood of Confusion, and Fraud perpetrated by the Applicant in his
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`application filing to Federally Register Opposer’s Service Mark (please see Notice of Opposition
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`for all pleadings filed).
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`III. Statement of Eacts:
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`A) Opposer is the owner of a Certificate of Registration from the State of California for the
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`Service Mark “The Superfreaks”, Reg.#.O56707 for Class No. Int. 041. (please copy of
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`certificate).
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`B) Opposer has been using the Service Mark “The Superfreaks” to identify musical
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`performances since August of 1999 exclusively and continously to present (please see
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`Opposer’s sworn affidavit).
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`C) On February 22, 2002, Applicant filed an unauthorized “Intent to Use” application with the
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`USPTO to Federally Register the Service Mark “Superfreaks Funky Disco Revue.”
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`(application in which Applicant makes sworn declaration in his filing that “ ,
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`, to the best
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`of his knowledge and belief no other person, firm, corporation, or association has the right
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`-3-
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`to use the mark in commerce, .
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`.
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`. etc.”) (please see Trademark Application serial
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`#78110344 dated 2/22/02).
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`D) On February 26, 2002 (only four days after submitting his application with the USPTO
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`which included a sworn declaration that Applicant knew of “no other person who is using
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`the mark”), Applicant filed a Small Claims court case against the Owner of the band “The
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`Superfreaks”, Joe J. Alfaro, Jr. - the Opposer, for an alleged “breach of contract” concerning
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`musical performances with Opposer’s band “The Superfreaks”.
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`E) On September 12, 2002, Opposer’s attorney, Christopher Connolly, mailed a “cease and
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`desist” letter warning the Applicant that he was infringing on Opposer’s Trademark (please
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`see copy of “cease and desist” letter).
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`F) On March 15, 2002, Opposer filed a counterclaim against the Applicant for his
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`“intentional interference” of Opposer’s livelihood due to Applicant’s persistent attempts to
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`disrupt Opposer’s livelihood by harassing Opposer’s clients.
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`G) On April 10, 2002, Applicant lost the Small Claims case he had filed against the Opposer.
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`H) After losing his Small Claims case, Applicant made several phone calls to client’s of the
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`Opposer’s band “The Superfreaks” claiming that it was illegal for them to continue to hire
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`the band because he was the owner of a Federal Registration for the Service Mark
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`“Superfreaks” (please see client Timmy Daniels’ sworn, notarized affidavit).
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`I) Opposer is and has always been solely responsible for all of the band’s expenses. Opposer
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`has always had sole discretion and control over both the nature and quality of the band’s
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`performances, as well as, the use of the Service Mark “The Superfreaks”. In his answer to
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`Opposer’s Notice of Opposition, Applicant himself describes Opposer as being “overly
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`controlling” (please see last paragraph of Applicant’s answer dated 3/26/03).
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`In addition,
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`Applicant during his Small Claims case against Opposer, subpoenaed afl records pertaining
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`to Opposer’s band “The Superfreaks” which were all in possession of the Opposer (please
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`see copy of Applicant’s subpoena). This fact is consistent with Opposer’s assertion that
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`Opposer is in complete control of all aspects regarding Opposer’s band “The Superfreaks.”
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`J) On September 10, 2002, Applicant sent an e-mail to David H. Gulley telling Mr.Gu1ley of
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`his plan to get “Payback” from Plaintiff for dismissing him from the band. This e-mail
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`helps establish motive for all of Applicant’s malicious actions since his dismissal.
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`K) Opposer’s band “The Superfreaks” continues to thrive with a very busy schedule of
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`performances scheduled throughout Southern California and into the year 2004. Attached is
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`a copy of the band’s most recent ad that appeared in the “Reader’s Choice” Supplemental
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`included in the Riverside Press-Enterprise Newspaper on November 9, 2003 and was
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`delivered in the Sunday’s edition of the newspaper to more than 200,000 households
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`throughout the entire County of Riverside. This ad is just one of the ways in which Opposer
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`continuously markets his band “The Superfreaks” in commerce.
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`L) Applicant has provided no credible evidence to support any of his claims.
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`IV. :
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`Applicant’s answer to Opposer’s Notice of Opposition consists of
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`unsubstantiated allegations that are irrelevant to the merits of this case. All of the Opposer’s
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`pleadings in Opposition have been granted in favor of Opposer by virtue of Applicant’s inability
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`to answer the issue at hand and the fact that all of Opposer’s official documents and affidavits in
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`support of Opposer’s case remain uncontested. None of Opposer’s evidence has been challenged
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`because all of the evidence submitted by Opposer is indisputable. Applicant makes libelous
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`comments about Opposer’s reputation, again without any factual evidence to support his claims,
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`in an attempt to cast dispersion and distract from the true issues. Suspiciously the only document
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`that Applicant offers in support of his answer is what appears to be a flyer listing the exact date
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`of Plaintiffs date of first paid gig. Opposer asserts that Applicant fabricated this document in a
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`desperate attempt to discredit the Plaintiffs date for first paid gig (please see Opposer’s sworn
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`affidavit). On October 15, 1999 Opposer was performing with his band “The Superfreaks” at an
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`event held at the Olympic Club in San Francisco, California. Applicant’s purported claims and
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`mere assertions do not reasonably challenge the credibility of Opposer or of any of Opposer’s
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`supporting evidence. The copies of Applicant’s Small Claims case are indisputable official court
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`records and clear and convincing evidence of the fact that Applicant was well aware of the
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`Opposer’s Superior Rights in the Mark at the time that Applicant filed his unauthorized
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`“Intent to Use” application with the USPTO thus Applicant knowingly submitted a false
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`declaration with intent to deceive because he knew that his registration would be disallowed if he
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`had acknowledged the existence of Opposer’s Superior Rights. This brings us to the issue of
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`fraud.
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`Applicant knowingly submitted a false declaration with an intent to deceive. "Fraud in
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`procuring a .
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`.
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`. mark occurs when an applicant knowingly makes false, material representations
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`of fact in connection with an application." Metro lrafiio Control, Ir_1o. y. Shadow Network, lnc,,
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`104 F.3d 336, 340, 41 USPQ2d 1369, 1373 (Fed. Cir. 1997); .s_e_¢_alSrQ 15 U.S.C.A. § 1064(3)
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`(West Supp. 1999). This constitutes fraud because Applicant knew he was making a false oath
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`but showed reckless disregard for the truth by submitting his false oath with his registration
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`filing anyway.
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`Applicant fails to address the specific allegations of fraud raised by the Opposer. Specifically,
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`Applicant does not deny Opposer’s allegation that Applicant filed an application to register a
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`mark which he knew infringed on the Opposer’s Superior Rights in the Mark. In fact, Applicant
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`admits to knowing of Opposer’s prior use of the mark in his answer to Opposer’s Notice of
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`Opposition (please see first paragraph under bona fide offering of Applicant’s answer).
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`Applicant committed fraud upon the office of the USPTO and upon Opposer’s clients by
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`falsely claiming to be the Owner of a Federal Registration of the Service Mark “The
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`-5-
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`Superfreaks” for the purpose of disrupting the Plaintiffs business (please see sworn affidavit by
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`client Timmy Daniels) at a time when his application had merely been assigned to an examining
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`attorney.
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`Applicant’s claims are not credible. Even though Opposer has official undisputable proof that
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`Applicant lost his Small Claims case alleging “breach of contract” from Opposer, Applicant in
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`his answer, still claims that financial restitution has never been made (please see copy of
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`judgment of small claims case in favor of Opposer). Applicant has demonstrated through his
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`false oath and submission of a phony flier that he is not worthy of credibility and that his
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`application has been filed in bad faith.
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`Likelihood of Confusion is inevitable under Section 2(d) of the Lanham Trademark Act. The
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`similarities between Opposer’s mark and Applicant’s proposed mark are identical; same
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`classification of service Int’1. 41, same geographic area (both parties are based in Riverside
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`County) for the purpose of performing Disco and Funk from the ‘70s and ‘80s wearing costumes
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`from the Disco era, and both would appeal to the same class of consumers; casino, nightclubs,
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`private events, birthday parties, etc. This pleading is conceded because Defendant does not even
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`attempt to deny this pleading in his answer which is sufficient cause to grant the Opposition..
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`Applicant is not the Owner of the Mark. Per 15 U.S.C. §; TMEP 1201, application must be
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`declared void. Only the owner of the mark, or the person entitled to use the mark in comerce as
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`of the application filing date, may file an application for it’s registration. An application filed by
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`a person who is not the owner of the mark, or not entitled to use the mark in commerce, will be
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`declared void. Applicant’s application of the mark “Superfreaks Funky Disco Revue” should be
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`declared void because Applicant was not the owner of the mark at the time he applied for
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`registration.
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`V.
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`Summary Judgment “shall be rendered forthwith if the pleadings, depositions, answers to
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`interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
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`genuine issue as to any material fact and that the moving party is entitled to a judgment as a
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`matter of law,” Fed. R. Civ. P. 56(0).
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`VI. Qgnclgsion
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`Opposer has established his priority use and ownership of the Service Mark
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`“The Superfreaks” in connection with a band that has been providing live musical performances
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`since it’s inception in August 1999 exclusively and continously through present by submitting 6
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`affidavits, copies of official Small Claims Case Court documents, and other additional evidence.
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`In addition, Opposer has also proven that Applicant was well aware of Opposer’s Superior Rights
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`in the service mark “The Superfreaks” shown by copies of official court documents and several
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`other supporting documents. Applicant, through his deliberate withholding of information
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`regarding Opposer’s prior and continuous use of the mark has proven himself to be unworthy of
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`credibility. App1icant’s actions throughout the past year and a half have established a pattern of
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`malevolent actions against the Opposer designed to disrupt the Opposer’s livelihood culminating
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`in Applicant’s fraudulent filing of an “Intent to Use” application for registration of Opposer’s
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`Service Mark “The Superfreaks”. Opposer, through all of his supporting documents, has shown
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`the lack of merit in Applicant’s claims, as well as, a lack of evidence and failure of Applicant to
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`support any of his claims. All of Opposer’s supporting documents and affidavits remain
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`uncontested and indisputable. Applicant is nothing more than a disgruntled person who has no
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`basis for filing an “Intent to Use” application because he is not the owner of the mark. For all of
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`the reasons listed in this motion and brief, the Opposer’s motion for Summary Judgment should
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`be granted.
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`VII. eliei Sought
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`Opposer therefore respectfully requests that the Trademark Trial and
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`Appeal Board grant his motion for Summary Judgment and sustain the Opposition against the
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`registration of Applicant’s proposed mark “Superfreaks Funky Disco Revue” based on all of the
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`aforementioned reasons contained in this brief.
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`Respectfiilly submitted,
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`oe J. Alfaro, J ., Opposer
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`Date
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`'
`ewtwmécwz /2/ e? 003
`,g¢,oo9?34a¢5-1/$‘@
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial Q, 78111344
`For the mark“ ”
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`Published in the Official Gazette on Decem.b_erJLAL02
`Application filing date: 2
`Applicant: Qu3LA.J'1QfImam1
`
`Opposition No. 21 !55§8
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`K ‘—‘\_
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`‘~—~‘_
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`’mmW”lllllllllllll/ll/I//IWT“ \
`11-12-2003
`atent & TMOVC/TM Ma" ficpt on #22
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`U.S. P
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`Certificate of Service
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`I hereby certify that a true and complete copy of the foregoing Motion for
`Summary Judgment, accompanying brief, and all supporting documents has been
`served on Guy A. Hoffmann by mailing said copy on November 12, 2003, Via
`Express Mail Post Office to Addressee to:
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`Guy A. Hoffmann
`25563 Pelion Road
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`Menifee, CA 92584
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`
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`481 W. Blaine Street
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`Riverside, CA 92507
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`//~ /;~ 0 3
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`Date