Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA80745
`ESTTA Tracking number:
`05/15/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91170256
`Defendant
`GOOGLE INC.
`GOOGLE INC.
`1600 Amphitheatre Parkway Building 41
`Mountain View, CA 94043
`
`Correspondence
`Address
`
`MICHAEL T. ZELLER
`QUINN EMANUEL URQUHART OLIVER & HEDGES
`865 SOUTH FIGUEROA ST., 10TH FL
`LOS ANGELES, CA 90017
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Other Motions/Papers
`Michael T. Zeller
`michaelzeller@quinnemanuel.com
`/Michael T. Zeller/
`05/15/2006
`Reply iso motion for protective order.pdf ( 14 pages )(394239 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL A-ND APPEAL BOARD
`
`In the Matter of:
`
`Application Serial No.
`For the Mark:
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`7631481 1
`GOOGLE
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`Publication Date:
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`November I, 2005
`
`Opposition No. 91 170256
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`APPLICANT’S REPLY IN FURTHER
`SUPPORT OF ITS COMBINED 11}
`MOTION FOR PROTECTIVE
`ORDER RE OPPOSER'S SERVICE;
`AND (2) PRELIMINARY RESPONSE
`TO OPPOSER'S MOTION TO
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`CONSOLIDATE
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`CENTRAL MFG. CO. (INC),
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`Opposer,
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`V.
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`GOOGLE INC.,
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`' Applicant.
`
`
`Commissioner of Trademarks
`
`P.O. Box 1451
`Ariington, Virginia 223 1 3- 1
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`_
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`_
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`

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`Applicant Google Inc. (“Applicant”) respectfully submits this repiy in further support of
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`its Motion for Protective Order requiring Opposer to file papers via ESTTA and to serve all
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`further papers in this proceeding either by (a) obtaining a postmark from the US. Postal Service,
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`or (b) using U.S. Postal Service Express Mail. In support thereof, Applicant states as follows.
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`I.
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`The Evidence, Including That Ignored By Opposer, Shows That Opposer‘s Mailing
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`And Service Of The Motion To Consolidate Were Deliberately Unlawful.
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`Opposer‘s response fails to dispute, and thus concedes, virtually all of the evidence
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`proving Opposer‘s violation of the law in its service of the Motion to Consolidate and the falsity
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`of Opposer‘s certificates. The following is accordingly uncontested here:
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`°
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`The envelope containing the service copy from Opposer bore no U.S. Postal
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`Service postmark or any other date.
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`Indeed, Opposer‘s postage meter stamp omitted the date
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`entirely} Nowhere does Opposer deny -- let alone explain -- these omissions. Nor does Opposer
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`dispute (a) that Opposer‘s omission of the mailing date from its postage meter stamp, standing
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`2
`alone, violated U.S. Postal Service regulations or (b) that Opposer was on prior notice its
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`omission of the mailing date, standing alone, would constitute bad faith conduct
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`in these
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`proceedings. Central Mfg. Co. v. Premium Prods., Inc. Order of Sept. 29, 2004 Order, at 6-7
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`(advising Opposer here that omitting the mailing date from its postage meter stamp constituted
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`"bad faith" conduct, both because "[t}he Board is hard pressed to think of a more egregious act of
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`1 _S_e§ Exh. 2 to the Declaration of Michael T. Zeller ("Zeller Dec."), dated May 8, 2006 and filed
`with Applicants combined Motion for Protective Order and Preliminary Response to Opposer‘s
`Motion to Consolidate (hereinafter, the "Motion for Protective Order"); see also Declaration of
`Rose Hagan, dated May 13, 2006 and submitted herewith ("Hagan Dec"), 1] 2.
`2
`§e_e_ Applicant's Motion for Protective Order, at 6 & n.9 (quoting U.S. Postal Service
`Domestic Mail Manual, Chapter 604, Reguiation 4.5.1 mandating inclusion of date on postage
`meter stamp).
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`bad faith than flouting the United States Postal Service regulations" and because it prejudiced the
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`judicial process by making "it impossible to verify" the date of mailing).3
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`-
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`The Board apparently did not receive Opposer's Motion to Consolidate until May
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`1, 2006 ~- some two weeks after Opposer allegedly had mailed it on April 18.4 Opposer does not
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`contest this either or offer any explanation for that significant delay between the alleged mailing
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`date and the Board's receipt. S. Indus. Inc. V. La1nb—Weston Inc., 45 U.S.P.Q.2d 1293, 1295
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`(T.T.A.B. 1997) (fact that Board did not receive Stoller's papers until two weeks after the
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`certificates’ date was indicia under the circumstances that the date was "fraudulent.“).
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`Equally undisputed, and unexplained, is Opposer's decision to ignore Applicants
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`faxed May 3, 2006 letter requesting a complete copy of the Motion to Consolidate and all of its
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`attachrnents.5 As Opposer does not contest here, Opposer never provided the requested copy or
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`responded at all to the letter, but instead chose to blanket Applicant's counsel's law firm with
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`emails threatening spurious disciplinary proceedings against attorneys who do not work on this
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`matter.6 The plain inference from that conduct -- an inference which Opposer does not challenge
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`3 It should be noted, but is hopefully already clear from Applicant's papers, that the unpublished
`Stoller-related T.T.A.B. decisions are not being relied upon as legal precedent, but rather as
`evidence that Opposer's misconduct here is not innocent or inadvertent, but willful, because it
`repeats tactics that the Board previously warned Opposer against. & Central Mfg. Inc. V. Third
`Milleniurn Tech. Inc., 61 U.S.P.Q.2d 1210, 1214-15 (T.T.A.B. 2001) (citing an unpublished
`T.T.A.B. disposition for this same purpose and stating "this Board has previously sanctioned
`another corporation headed by Leo Stoller for precisely this type of conduct, i.e., for making
`misrepresentations regarding the existence of settlement negotiations between one of his
`corporations and an applicant. .
`.
`. The Board cannot ignore its past experience with Leo Stoller
`and considers the bad~faith actions taken in this case against that backdrop").
`4 The Board's tracking sticker for 0pposer's Motion to Consolidate is dated "05—0l—2006," and
`the Motion did not appear on TTABVUB until after "May 3. Zeller Dec., fi[ 3 & Exh. 5.
`5 1g_.,1[3 andBxh. 3.
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`]_cL, 11 4 and Exh. 4. 0pposer‘s threats of frivolous disciplinary proceedings are themselves
`unquestionably in violation of the Board‘s Disciplinary Rules. 37 C.F.R. § 10.23; see also
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`~~ is that Opposer was deliberately playing games with service and mailing in an effort to deprive
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`Applicant of as much of its time as possible to respond to Opposer's Motion.
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`Although these concessions by Opposer alone warrant the issuance of a protective order,
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`Opposer additionally makes no effort
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`to meet
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`its burden of establishing the truth of its
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`certificates of service or mailing.
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`In its response, Opposer says that it "attests“ Opposer had filed
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`with the Board and mailed served the Motion to Consolidate on April 18, 2006.
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`In support,
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`however, Opposer relies only on the certificates themselves, which misses the point. There is
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`ample evidence showing that those certificates were incorrect. Even though the burden thus falls
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`on Opposer to prove the certificates‘ accuracy, Opposer submits no evidence to substantiate the
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`dates on the certificates.
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`Indeed, Opposer does not even proffer any explanation for why
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`Opposer's own postage meter stamp lacked any date, why the envelope lacked any other date
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`indicia or why the Board, like Applicant, did not receive Opposer's Motion to Consolidate for
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`some two weeks after it was allegedly mailed. Opposer's failure here to provide any explanation
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`for its conduct, let alone to meet its burden of proof, also justifies the entry of a protective order.
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`S. Indus. Inc. v. Lamb-Weston Inc., 45 U.S.P.Q.2d at 1295 (citing Stoller's failure "to provide
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`any reasonable explanation" for discrepancies in service and mailing as ground "for order barring
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`Stoller from using first class mail and requiring Stoiler to serve papers by Express Mail).
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`TBMP § 115.01 (requiring an authorized representative in proceedings before the Board to
`adhere to Disciplinary Rules set forth in Part 10 of 37 C.F.R.). Nor have Opposer's antics raised
`on this Motion been Opposer's only misconduct in connection with these proceedings. More of
`them are discussed in Applicant's currently pending Motion for Phased Discovery and for
`Protective Order regarding the depositions of Applicant's top—level executives. This includes
`Opposer's separate violation of the Board's Disciplinary Rules set forth in 37 C.F.R. § 10.88 by
`Opposer's baseless threat to seek criminal prosecution .of Applicant's executives.
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`Because Opposer has no explanation for its tactics and no proof to refute the other facts
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`supporting Applicant's Motion for Protective Order, Opposer mostly confines itself to arguing
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`about one such fact -- namely, the sufficiency of Applicant's proof that Applicant did not receive
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`the Motion to Consolidate until on or about May 2, 2006.
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`In this regard, Opposer claims that
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`Applicant's counsel, Mike Zeller, is unable to confirm Applicant's receipt date because Opposer
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`supposedly was, prior to May 3, "mailing and faxing all communications“ to Applicant's in—
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`house Senior Trademark Counsel, Rose Hagan. Opposer's Response at 2 (emphasis added).
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`Opposer also challenges, without citation to authority, the admissibility of this single aspect of
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`the Zeller Declaration concerning Applicant's receipt date by arguing that Applicant's counsel
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`was not "stationed in Google's mailroom." _I_d._, at 3.
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`These contentions are unavailing. First,
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`in choosing to quarrel only with the Zeller
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`Declaration regarding the date of Applicant's actualreceipt of the Motion to Consolidate,
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`Opposer conspicuously concedes all of the other, compelling evidence (discussed above) of
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`Opposefs misconduct
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`in the service and mailing of the Motion.
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`This includes, most
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`dispositively, Opposer's unlawful omission of the date from its postage meter stamp -— a fact that
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`is self-evident from the face of Opposefs envelope and a fact that Opposer notably does not
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`deny. Nor does Opposer explain why the Board did not receive the Motion to Consolidate for
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`two weeks from its alleged mailing either, or any of the other facts indicating Opposer's bad
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`' faith. 0pposer's objection to a single aspect of counsel's declaration which addresses Applicant's
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`receipt date does nothing to refute any of that uncontested proof of Opposer‘s misbehavior.
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`Moreover, Opposer's unsupported claim that prior to March 3, 2006 it had faxed "all"
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`communications in the proceedings to Ms. Hagan is demonstrably false. There is no dispute that
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`Opposer only sent by first class mail a (partial) copy of the Motion to Consolidate and that
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`Opposer never faxed it to Applicant.7 Opposer also does not provide the Board with any alleged
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`fax of the Motion to Consolidate to Applicant, for the simple reason that there is none.
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`Equally incorrect is Opposer's assertion that it communicated prior to May 3 only with
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`Ms. Hagan, and not with Mr. Zeiler. The Opposition itself attaches communications between
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`Opposer and Mr. Zeller beginning in January 2006. Indeed, the only attorney for Applicant who
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`has ever sent communications to Opposer is Mr. Zeller; Ms. Hagan never has.8 For this reason,
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`in addition to being unsupported by law, 'Opposer's suggestion that In the Zeller Declaration could
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`not be competent because of counsel's alleged lack of involvement at the time is factually
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`groundless. And, eliminating any doubt that Opposer's attempt to quibble with Applicant's
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`receipt date is in vain, Ms. Hagan's declaration likewise confirms that the date of Applicant's
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`receipt of the Motion to Consolidate was by U.S. mail on or about May 2, 2006.9 The evidence
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`sufficiently establishes that Applicant did not receive Opposer's Motion to Consolidate until on
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`or about May 2, and 0pposer's unproven suggestions otherwise fail.
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`Because Opposer's use of an undated postage meter stamp for the Motion to Consolidate
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`was indisputably unlawful, and because 0pposer‘s certificates of service and mailing were
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`clearly inaccurate, the Board should grant the requested protective order.
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`_
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`7 E Zeller Dec, Exh. 1; see also Hagan Dec., 112.
`3“ See Hagan Dec, fii 3.
`9
`id.,1|1[ 2-3.
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`II.
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`Opposefls Abandonment Of Its Own Separate Motion To Consolidate Does Not
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`Obviate The Need For A Protective Order O_r Moot Applicant's Motion.
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`Unable to refute the evidence or authority demonstrating Opposer's bad faith in the
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`service and mailing of the Motion to Consolidate, Opposer jettisons its Motion to Consolidate
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`without explanation and proclaims that it is now "moot." Although that may mean the Board
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`need not rule on the substance of Opposer's Motion to Consolidate in this proceeding, Opposer's
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`abandonment of that Motion has no effect on Applicant's separate, and still live, Motion for
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`Protective Order that seeks prospective relief against further repetition of Opposer‘s misconduct
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`in service and mailing. As the Supreme Court has explained:
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`It is well settled that "a defendant's voluntary cessation of a challenged practice
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`does not deprive a federal court of ‘its power to determine the legality» of the
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`practice." "[I]f it did, the courts would be compelled to leave '[t]he defendant
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`free to return to his old ways."' In accordance with this principle, the standard we
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`have announced for determining whether a case has been mooted by the
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`defendant's voluntary conduct
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`is stringent:
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`“A case might become moot if
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`subsequent events made it absolutely clear that the allegedly wrongful behavior
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`could not reasonably be expected to recur.” The “heavy burden of persua[ding]”
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`the court that the challenged conduct cannot reasonably be expected to start up
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`again lies with the party asserting mootness.
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`Friends of the Earth, Inc. v. Laidiaw Environmental Services (TOG). lnc., 528 U.S. 167, I89
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`-
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`(2000) (citations omitted).
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`Applicants Motion for Protective Order is thus in no way mooted by Opposer's hasty
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`withdrawal of its Motion to Consolidate. Nowhere does Opposer attempt to carry its "heavy
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`burden" of establishing that "it is absolutely clear" Opposer will not revert to the improprieties in
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`service and mailing which it engaged in on the Motion to Consolidate. Opposer does not even
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`suggest, let alone promise in a binding way, that it will not again resort to using undated postage
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`meter stamps in violation of law, that it will cease backdating its certificates or that it will file its
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`papers via ESTTA. Opposer's resounding silence on these issues -- coupled with its misguided
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`belief that it can evade a Board ruling on Applicant's Motion to Protective Order by abandoning
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`the Motion to Consolidate -—- simply reveals Oppose-r's hope that it will be allowed "to return to
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`[its] old ways" at a time of its choosing in the future in these proceedings. There is no basis for
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`0pposer‘s implicit plea that it should be left free to yet again violate the law and burden the
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`Board and Applicant with improper actions in mailing and service in this proceeding.
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`Also material to this issue are the prior rulings of the Board which found that Opposer
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`and its principal, Leo Stoller, had engaged in fraudulent, bad faith service tactics of precisely the
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`type displayed in this proceeding. Opposer does not deny that the Board warned Opposer not to
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`omit the date from its postage "meter stamp. Yet, as is equally uncontested, Opposer did it
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`anyway in this proceeding. Opposer's unapologetic recidivism further substantiates that there is
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`a significant threat of repetition of Opposer‘s misconduct in these proceedings.
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`It is pure chutzpah for Opposer to invoke Mr. Stoller's "over 25 years" of experience
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`before the Board and to decry this Motion for Protective Order as supposedly "prejudicing"
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`Opposer at the outset of these proceedings. Mr. Stoller‘s and Opposer‘s disreputable history, as
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`found by both the Board and the Courts, is amply pertinent here. Because it shows Opposer is
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`repeating in these proceedings the same type of misbehavior for which Opposer has been
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`previously sanctioned, that history confirms Opposer's conduct at issue here was not an isolated,
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`honest error, but instead a deliberate effort by Opposer that has burdened Applicant and the
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`Board and carries a significant threat of further repetition which warrants Board action in this
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`proceeding. E Central Mfg. Inc. V. Third Milienium Tech. Inc., 61 U.S.P.Q.2d at 1214-15
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`("[T]his Board has previously sanctioned another corporation headed by Leo Stoller for precisely
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`this type of conduct.
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`.
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`. The Board cannot ignore its past experience with Leo Stoller and
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`considers the bad-faith actions taken in this case against that backdrop"). That same history
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`further demonstrates the frivolousness of Opposer's attempt
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`to rely on Mr. Stolier's past
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`experience in Board proceedings as an ostensible ground for denying the relief sought by this
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`Motion. To say the least, Opposer's efforts here to falsely bolster its good faith or credibility in
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`such a way is woefuliy misplaced. Lg, S Indus, Inc. v. S&W Sign C0,, Inc., Opposition No.
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`91 102907 (Dec. 16, 1999) ("[t]he lack of credibility of Mr. Stolier is a matter of public record“).
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`As for Opposer's lament that it would be unfair to Opposer for this Motion to be granted
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`at the outset of this proceeding,
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`the only ones facing prejudice, unnecessary burden and
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`unfairness from Opposer's misbehavior are the Board and Applicant.
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`Even before this
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`proceeding commenced, Opposer was well on notice of the impropriety of the tactics it used
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`here, having been warned by the Board against them more than once. Opposer nevertheless
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`opted to engage in service and mailing misconduct in this proceeding. Opposer can scarcely now
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`_escape the consequences of its misbehavior by relying on its own decision to employ those
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`wrongful tactics sooner, rather than later, in these proceedings in order to harass Applicant and
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`flout the Board's rules.
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`Conclusion
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`Applicant respectfuily requests that the Board grant its motion for protective order.
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`Dated: May 15, 2006
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`By:
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`f"
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`Respectfully submitted,
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`QUINN EMANUEL URQUHART
`OLIVER & HEDGES, LLP
`Michael T. Zeller
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`865 South Figueroa Street, 10th Floor
`Los Angeles, Caiifornia 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
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`Attorneys for Applicant
`Google Inc.
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`20056/1372349
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`Proof of Service
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`I hereby certify that a true and complete copy of the foregoing Applicant Google Inc.’s
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`Reply In Further Support Of Its Combined (1) Motion for Protective Order re Opposer’s Service;
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`and (2) Preliminary Response to Opposer’s Motion to Consoiidate by mailing said copy on May
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`15, 2006, via First Class Mail, postage prepaid to:
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`Leo Stoller
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`CENTRAL MFG. C0,, (INC)
`71 15 W. North Avenue #272
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`Oak Park, Iliinois 60302
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`pp
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of:
`
`Application Serial No.
`For the Mark:
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`76314811
`GOOGLE
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`Pubiication Date:
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`November 1, 2005
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`Opposition No. 91 170256
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`DECLARATION OF ROSE HAGAN
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`CENTRAL MFG. CO. (INC),
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` * IN SUPPORT-OF APPLICANT-’S
`COMBINED {1} ‘MOTION FOR
`PR0-T_E-CTIVE ORDER RE
`OPPOSER'S SERVICE; AND {2}
`PRELIMINARY RESPONSE TO
`OPPOSER'S MOTION TO
`CONSOLIDATE
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`Opposer,
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`v.
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`GOOGLE INC.,
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`Applicant.
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`
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`Commissioner of Trademarks
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`PO. Box 1451
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`Arlington, Virginia 22313-1451
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`200561] 8305511
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`1, Rose Hagan, do hereby declare and state as foilows:
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`1.
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`I am a member of the State Bar of California and am Senior Trademark Counsel
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`for Google Inc. ("Applicant"). I have persona! knowledge of the facts stated herein and, if sworn
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`as a witness, couid and would testify competentiy thereto.
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`2.
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`Applicant received Opposer‘s Motion to Consolidate by U.S. mail on or about
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`May 2, 2006. Opposer's service copy of the Motion was delivered to Applicant in an envelope
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`that bore no date, either from the U.S. Postal Service or on 0ppos_er‘s postage meter stamp. The
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`copy from Opposer was also incomplete, since all Applicant received in the mail from Opposer
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`with the Motion to Consolidate was the face page of the allegedly attached Petition for
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`Cancellation.
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`I am familiar with the Declaration of Michael T. Zeller, dated May 8, 2006 and
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`submitted previously to the Board. Exhibit 1 to that Declaration is a true and correct copy of the
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`Motion to Consolidate as Applicant received it from Opposer. Exhibit 2 to that Declaration is a
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`true and correct copy of the envelope Applicant received containing Opposer's Motion to
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`Consolidate that shows the postage meter stamp from Opposer lacked any date.
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`3.
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`Opposer's claim that it sent "all" communications prior to May 3, 2006 to me by
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`fax and mail is incorrect. Applicant received the Motion to Consolidate from Opposer only by
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`mail as described above on or about May 2, 2006, and not by fax or any other method. Nor have
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`I or anyone else within Applicant's law department ever sent any communications to Opposer.
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`Executed this 13th day of May, 2006, at Mountain View, California.
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`DECLARATION ISO MOTION FOR
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`Proof of Service
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`I hereby certify that a true and complete copy of the foregoing Declaration of Rose
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`Hagan in support of Applicant Google Inc.’s Combined (1) Motion for Protective Order re
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`Opposefs Service; and (2) Preliminary Response to Opposer’s Motion to Consolidate by mailing
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`said copy on May 15, 2006, via First Class Mail, postage prepaid to:
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`Leo Stoiler
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`CENTRAL MFG. C0,, (INC)
`71 15 W. North Avenue #272
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`Oak Park, Illinois 60302
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`2oos5r1ssosss.1
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`DECLARATION ISO MOTION FOR
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`RESPONSE RE CONSOLIDATION