Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA342540
`ESTTA Tracking number:
`04/15/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91166639
`Plaintiff
`Kidsart, Inc.
`David G. Bayles
`Arent Fox, LLP
`445 S. Figueroa Street, Suite 3750
`Los Angeles, CA 90071
`UNITED STATES
`bayles.david@arentfox.com
`Response to Board Order/Inquiry
`Michael A. Grow
`henrye@arentfox.com, bayles.david@arentfox.com, TMDocket@arentfox.com
`/Michael A. Grow/
`04/15/2010
`kidsart.pdf ( 8 pages )(384394 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`KIDSART, INC.
`
`Opposer
`
`v.
`
`KIDZART TEXAS, LLC
`
`Applicant
`
`:
`
`:
`
`Opposition No. 91 166639
`
`Cancellation No. 920451 14
`
`RESPONSE TO BOARD ORDER
`
`In response to the Board's order of April 9, 2010, attached is a certified copy of the
`
`consent judgment entered in Kidsart, Inc. v. Kidzart Texas, LLC, Civil Action No. CV08-185, in
`
`the United States District Court for the Central District of California.
`
`In view of the foregoing, Registration No. 2491627 should be cancelled, and the
`
`applications at issue should be restricted in accordance with the court's order.
`
`KIDSART, INC.
`
`
`B, ///3
`
`Michael A. Grow
`
`Arent Fox LLP
`
`1050 Connecticut Avenue, NW
`Washington, DC 20036
`(202) 857 6389
`
`David Bayles
`Arent Fox LLP
`
`555 West Fifth Street
`
`Los Angeles, California 90013
`(213) 629 7400
`
`April 15, 2010
`
`Attorneys for Opposer
`
`TECH/839534.1
`
`

`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a copy of the foregoing is being served on Applicant's counsel
`Maria Crimi Speth at Jaburg & Wilk, PC, Suite 2000, 3200 North Central Avenue, Phoenix,
`Arizona 85012 by first class mail, postage prepaid on April 15, 2010.
`
`/betttt
`
`TECH/8395341
`
`

`
`Case 2:08-cv-06185-PA-SS Document 19
`
`Filed 11/17/09 Page 1 of5
`
`ROBERT C. O'BRIEN State Bar No. 154372
`DAVID G. BAYLES State Bar No. 208112
`Bayles.David@arentfox.com
`ARENT FOX LLP
`
`555 West Fifth Street, 48th Floor
`Los Angeles, CA 90013
`Telephone: 213 629-7400
`Facsimile:
`213 629-7401
`
`MICHAEL A. GROW, Admitted Pro Hac Vice
`ARENT FOX LLP
`1050 Connecticut Avenue, NW
`Washington, DC 20036-5339
`Telephone: 202 857-6000
`Facsimile:
`202 857-6395
`
`Attorne s for Plaintiff
`KIDSA T, INC.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`WESTERN DIVISION
`
`KIDSART, INC.
`a California Corporation,
`
`Plaintiff,
`
`V.
`
`KIDZART TEXAS, LLC, a
`Nevada Corporation,
`
`Defendant.
`
`Case No. C\/08-6185 PA (SSX)
`
`CONSENT JUDGMENT
`
`NOTE: CHANGES MADE BY THE
`COURT
`
`28
`ARBNT Fox LLP
`1\‘FT<1RN)-ZYS A 1‘ LAW
`Los A N<;:-:u—:S
`
`LA/206044. l
`
`I0485-I/MCS/MCS/765428_vI
`
`

`
`Case 2:08-cv-=O6185»PA~SS Document 19
`
`Filed 11/17/09 Page 2 of5
`
`The parties, having (i) entered into a settlement agreement resolving this
`
`dispute and (ii) jointly moved for entry of this Consent Judgment terminating this
`
`proceeding, and for good cause shown, it is hereby ORDERED, ADJUDGED,
`
`AND DECREED that:
`
`1.
`
`This Court has jurisdiction over the subject matter of this action
`
`under § 39 ofthe Trademark Act, 15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331,
`
`1332,1338 and 1367.
`
`2.
`
`Plaintiff KidsArt, Inc. (“KidsArt”) is a corporation organized
`
`and existing under the laws of California with a place of business in La Crescenta,
`
`California and with a trade area that includes the following 10 counties in Southern
`
`California: San Luis Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los
`
`Angeles, Orange, Riverside, San Diego and Imperial (the "KidsArt Trade Area").
`
`3.
`
`Defendant KidzArt Texas, LLC (“KidzArt”) is a corporation
`
`organized and existing under the laws of the State of Nevada with a place of
`
`business in New Braunfels, Texas 78130 and with a trade area that includes all of
`
`the United States except for the 10 counties in Southern California: San Luis
`
`Obispo, Kern, San Bernardino, Santa Barbara, Ventura, Los Angeles, Orange,
`
`Riverside, San Diego and Imperial. (the KidzArt Trade Area).
`
`4.
`
`Pursuant to 15 U.S.C. § 1119, this Court hereby declares that
`
`KidsArt is the owner of all right, title, and interest in and to the trademark or
`
`service mark KIDSART in connection with its goods and services including
`
`educational services in the nature of art schools and conducting classes and
`
`workshops in the field of art; and the KIDSART mark is valid and has acquired
`
`secondary meaning through many years of substantially exclusive and continuous
`
`use in the KidsArt Trade Area.
`
`/ / /
`
`/ / /
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`ARENT Fox LLP
`AT'mI:NP.v:»‘ AT LAW
`Los AN<;I-:I.I~::~'
`
`LA/206044.l
`
`l0485-1/MCS/MCS/765428_vl
`
`

`
`Case 2:08-cv-—O6185-PA-SS Document 19
`
`Filed 11/17/09 Page 3 of 5
`
`5.
`
`Pursuant to 15 U.S.C. § 1119, this Court hereby declares that
`
`KidzArt has used KIDZART as a trademark or service mark in connection with
`
`franchise services, namely, offering technical assistance in the establishment and/or
`
`operation of educational programs and after—school enrichment programs; and
`
`educational services, namely, conducting classes in the field of art and distributing
`
`materials in connection therewith; and the KIDZART mark is valid and has
`
`acquired secondary meaning through many years of substantially exclusive and
`
`continuous use in the KidzArt Trade Area.
`
`6.
`
`KidsArt and each of its officers, agents, servants, employees,
`
`and all others acting on KidsArt's behalf or in concert or privity with KidsArt, shall
`
`have the exclusive right to use and register the name and mark KID SART within
`
`and for the KidsArt Trade Area.
`
`7.
`
`KidzArt and each of its officers, agents, servants, employees,
`
`and all others acting on KidzArt's behalf or in concert or privity with KidzArt shall
`
`have the exclusive right to use and register the name and mark KIDZART within
`
`and for the KidzArt Trade Area.
`
`8.
`
`KidsArt shall have one year to change the name and mark under
`
`which any existing studios or programs operate outside the KidsArt Trade Area,
`
`provided, however, that KidsArt shall not be required to change any corporate
`
`names of any existing companies that contain the word "KidsArt" so long as any
`
`such name is not used as a trademark, service mark or trade name on any signs,
`
`advertisements or other materials disseminated to actual or potential customers in
`
`the KidzArt Trade Area.
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`ARENT Fox LLP
`/-\TTORNI-ZY9 AT LAW
`L08 AN<;F,I.I-'5.
`
`LA/2060441
`
`10485-l/MCS/MCS/765428_vl
`
`

`
`Case 2:08~cv-06185-wP‘A—88 Document 19
`
`Filed 11/17/09 Page 4 of 5
`
`9.
`KidzArt shall have one year to change the name and mark under
`which any existing studios or programs operate outside the KidzArt Trade Area,
`
`provided, however, that KidzArt shall not be required to change any corporate
`
`names of any existing companies that contain the word "KidzArt" so long as any
`
`such name is not used as a trademark, service mark or trade name on any signs,
`
`advertisements or other materials disseminated to actual or potential customers in
`
`the KidsArt Trade Area.
`
`10.
`
`Pursuant to 15 U.S.C. 1119 and 1052(d) the court declares that
`
`no likelihood. of confusion, mistake or deception is likely to occur if the parties use
`
`their respective marks in their respective trade areas and the Patent and Trademark
`
`Office is hereby directed to:
`
`Grant to KidzArt a concurrent use registration for the mark
`(a)
`KIDZART for "educational services, namely, conducting classes in the field
`of art and distributing materials in connection therewith" for a registration
`limited to the area comprising the United States, its territories or possessions,
`except for the counties of San Luis Obispo, Kern, San Bernardino, Santa
`Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego, and Imperial
`in the state of California;
`
`Grant to KidsArt a concurrent use registration for the mark
`(b)
`KIDSART for “educational services in the nature of Art Schools and
`
`conducting classes and workshops in the field of Art” a registration limited to
`the area comprising the counties of San Luis Obispo, Kern, San Bernardino,
`Santa Barbara, Ventura, Los Angeles, Orange, Riverside, San Diego, and
`Imperial in the state of California; and,
`
`(c)
`
`1 1.
`
`Cancel Supplemental Registration No. 2491627.
`
`Upon issuance of the aforesaid registrations, and except as
`
`otherwise provided herein, all claims filed by the parties to this proceeding shall be
`
`dismissed with prejudice and each party shall bear its own costs and attorneys’ fees
`
`it has incurred in connection with this matter without recourse to any other party.
`
`
`
`LA/2060441
`
`10485-1/MCS/MCS/765428_vl
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`ARENT Fox LLP
`ATTURNE-IVS AT LAW
`L09 /\N<;I-:I,I—.s
`
`

`
`Case 2:O8—cv-O6185~PA~SS Document 19
`
`Filed 11/17/09 Page 5 of 5
`
`The action is hereby placed on Inactive Status pending the issuance of the above-
`
`referenced registrations. KidsArt shall file a request for dismissal within 30 days
`
`after the issuance of the registrations.
`
`
`
`IT IS SO ORDERED.
`
` 10 November 17, 2009
`
`Dated
`
`UNITED S ATES DISTRICT JUDGE
`;
`
`Respectfully submitted and consented to:
`
`KidsArt, Inc.:
`
`KidzArt Texas, LLC:
`
`By:______________________
`Sher Warren
`
`lts: Vice President
`
`By:
`
`Sue Bartman
`
`Its: CEO
`
`18
`
`20
`
`2l
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27 28
`
`AREN'T FOX LLI’
`
`L05 A N<:I—:z.i»:.~
`ATTORNEYS ATL/Aw
`
`I 0485-1/MCSXMCS/765428_vl
`
`

`
`'3 [0
`" on
`Iherehyafiestgnd
`thatth going ocumantisa
`!£,true
`and rreccopy oft eoréginaio mm
`.: oflsce, anal my seat custo .
`’ CL KU.S.
`rsmcr um‘
`- LDIST co \ FOFINIA \
`DE?
`
`*1», ,,'