Proceeding
`Party
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA82185
`ESTTA Tracking number:
`05/24/2006
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`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
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Opposition/Response to Motion
`Michael T. Zeller
`michaelzeller@quinnemanuel.com
`/Michael T. Zeller/
`05/24/2006
`Response.pdf ( 6 pages )(162516 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of:
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`Application Serial No.
`For the Mark:
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`76314811
`GOOGLE
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`Publication Date:
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`November 1, 2005
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`Opposition No. 91170256
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`CENTRAL MFG‘ CO (INC),
`OPPOSER'S MOTION TO STRIKE
`FILED ON MAY 29, 2006 RE:
`APPLICANTS REPLY PAPERS
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`0 am
`PP
`’
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`V.
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`GOOGLE INC.,
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`Applicant.
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`
`
`Commissioner of Trademarks
`P.O. Box 1451
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`Arlington, Virginia 22313-1451
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`

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`Applicant Google Inc. (“Applicant”) respectfully ‘submits this response to Opposer's
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`Motion to Strike. The Motion to Strike was filed by Opposer on May 20, 2006, in connection
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`with Applicant's reply papers in further support of Applicant's Combined (1) Motion for
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`Protective Order re: Opposer's Service and (2) Preliminary Response to Opposer‘s Motion to
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`Consolidate (hereinafter, the "Motion for Protective Order").1
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`In support thereof, Applicant
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`states as follows.
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`Opposer's Motion to Strike argues that Applicant's filing of the Declaration of Rose
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`Hagan with the reply on Applicant's Motion for Protective Order somehow ran afoul of
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`Trademark Rule 2.l42(d). That Rule, entitled "Time and rnanrler of ex parte appeals," by its
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`terms only applies to appeals from the "Examiner of Trademarks.“ This proceeding is not an
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`appeal, let alone such an ex parte one.‘ The sole authority relied upon by Opposer accordingly
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`shows on its face that it has no application here, and the Motion to Strike is groundless for this
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`reason alone.
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`Opposer's Motion to Strike also ignores that Applicant's reply and the Hagan Declaration
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`did precisely, and quite properly, what reply papers are supposed to do:
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`they replied to
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`Opposer's arguments. While ignoring the bulk of the evidence showing that Opposer had
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`engaged in "bad faith" conduct under the Board's prior decisions in Opposer's service and
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`mailing of its Motion to Consolidate, Opp0ser's response principally devoted itself to claiming
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`Without supporting evidence that one of Applicant's counsel, Mike Zeller, was unable to confirm
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`Applicant's receipt date of the Motion to Consolidate. This was, Opposer claimed in its response
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`1 Applicants Motion for Protective Order seeks an order from the Board requiring Opposer to
`file papers via ESTTA and to serve all further papers in this proceeding either by (a) obtaining a
`postmark from the U.S. Postal Service, or (b) using U.S. Postal Service Express Mail.
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`200S6:'l872349
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`_
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`1
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`OPPOSITION T0 MOTION TO STRIKE
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`

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`for the first time, because Opposer supposedly was "mailing and faxing all communications" to
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`(Applicant's in-house Senior Trademark Counsel, Rose Hagan, prior to May 3, 2006, and Mr.
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`Zeiler allegedly had no actual involvement in the matter before that time. Opposer‘s Response at
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`2 (emphasis added). Applicant's reply, and in particular the Hagan Declaration, demonstrated the
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`falsity of Opposer's contentions, including in particular Opposer's wholly unsubstantiated claim
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`to have faxed the Motion to Consolidate to any of Applicant's counsel.
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`Indeed, as also pointed
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`out by Applicant's reply,
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`the Opposition itself attached letters that showed the falsity of
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`Opposer‘s claim. Contrary to Opposer's surmise on the Motion to Strike, Applicant can scarcely
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`respond to Opposer's contentions about such matters before Opposer had made them.
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`Also contrary to Opp0Ser'S unsupported argument in its Motion to Strike, courts have
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`held that it is entirely appropriate on a reply to submit additional evidence further establishing a
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`point that was made on an original motion so as to respond to arguments made in an opposition
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`briefi particularly when the opposition raised challenges to the admissibility of the evidence
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`submitted on the original motion.
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`E_.g_., Jones v. R.R. Donneliey & Sons Co., 1999 WL
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`33257839, at *3 (N.D. ill. 1999) (denying motion to strike where evidence submitted on reply
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`"lends further support
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`to" grounds raised on motion in response to contentions made in
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`opposition); Mills v. First Federal Sav. & Loan 'Ass'n, 1995 WL 155036, at *1 (ND. Ill. 1995)
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`(denying motion to strike and noting affidavit was properly submitted on reply in response to
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`adversary's admissibility objections to evidence that had been presented on original motion); 173;;
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`L00 v. Braun, 940 F. Supp. 1390, 1395 n.l (ED. Wis. 1996) (denying motion to strike where
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`additional evidence further supported contentions made in original summary judgment motion).
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`This was the situation with the Hagan Declaratiorfs further confirmation that Applicant —— like
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`20055/1872349
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`_
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`i
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`2
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`.
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`OPPOSITION _To MOTION TO STRIKE
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`the Board -- did not receive Opposer's Motion to Consolidate for some two weeks after Opposer
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`swore that they were allegedly mailed. As is beyond dispute, that issue was squarely raised in
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`Applicant's Motion for Protective Order. Having chosen to merely quibble about
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`the
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`admissibility of one piece of the evidence submitted on Applicant's Motion for Protective Order,
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`Opposer cannot now complain that the reply provided additional evidence to establish the same
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`point made on the original Motion for Protective Order as part of its refutation of Opposer's
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`arguments.
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`Opposer's conclusory allegations of "prejudice“ are without merit. Not only were
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`Applicant's reply and the Hagan Declaration properly submitted as just shown, but Opposer fails
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`to come to grips here with the law applicable to Applicant's Motion for Protective Order.
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`Applicant's Motion for Protective Order provided evidence showing that (1) Opposer had
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`unlawfully omitted the date from its postage meter stamp in connection with the service of
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`Opposer's Motion to Consolidate, despite prior Board warnings against precisely that “bad faith"
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`misbehavior; and (2) Opposer's certificates of service and mailing were false, including through
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`the uncontested fact that the Board did not receive Opposer's Motion to Consolidate for almost
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`two weeks after Opposer supposedly mailed it.
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`S.
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`Indus.
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`Inc. v. Lamb-Weston Inc., 45
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`U.S.P.Q.2d 1293, 1295 (T.T.A.B. 1997) (fact that Board did not receive Stoiler's papers until two
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`weeks after the certificates‘ date was indicia under the circumstances that the date was
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`"fraudulent.").
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`At that point, it was Opposer‘s burden to prove the actual mailing and service date of the
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`Motion to Consolidate.
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`I_d. (stating rule and citing Stoller's failure “to provide any reasonable
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`explanation" for discrepancies in service and mailing as ground for order barring Stoller from
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`20056/1872349
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`_
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`'
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`3
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`OPPOSITION TO MOTION TO STRIKE
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`using first class mail and requiring Stoiler to serve papers by Express Mail). Yet, as is beyond
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`dispute, Opposer's response to Applicant's Motion for Protective Order did not meet that burden.
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`Opposer did not even attempt to do so. Thus, far from being prejudiced by Applicants repiy on
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`the Motion for Protective Order, Opposer's arguments in the Motion to Strike are irrelevant to
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`the substantive issues presented by Applicant's Motion and, indeed, are simply a red herring to
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`deflect attention from Opposer's wholesale failure to meet its required burden and its decision to
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`ignore virtuaily all of Applicant's evidence on the Motion for Protective Order.2
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`Opposer's motion to strike illustrates that there is no motion too frivolous for Oppose:
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`and its alleged principal, Leo Stoller, to pursue in their iong-standing efforts to harass parties to
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`Board proceedings. The Motion to Strike should be denied. Furthermore, regardless of how the
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`Board chooses to exercise its discretion to consider Applicant's reply papers, Applicant's Motion
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`for Protective Order should be granted.
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`Dated: May 24,2006
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`: By:
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`/s/ Michael T. Zelier
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`Respectfuily submitted,
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`QUINN EMANUEL URQUHART
`OLIVER & HEDGES, LLP
`Michael T. Zeller
`
`'
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`365 South Figueroa Street, 10th Floor
`Los Angeies, Caiifomia 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
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`Attorneys for Applicant
`Google Inc.
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`2 For similar reasons, Opposer's requested relief on the Motion to Strike is equally baseless. It
`summarily demands that the entirety of the reply and the entirety of the Hagan Declaration be
`stricken because Opposer‘s objects here to one Single aspect of those papers. Opposer provides
`neither authority nor reasoned explanation for its overreaching demand, and there is none.
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`20056/1372349
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`4
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`OPPOSITION TO_ MOTION TO STRIKE
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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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`Response to Opposer's Motion to Strike File on May 20, 2006 re: Applicant's Reply Papers by
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`mailing said copy on May 24, 2006, via First Class Mail, postage prepaid to:
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`Leo Stoller
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`CENTRAL MFG. C0,, (INC)
`7115 W. North Avenue #272
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`Oak Park, Illinois 60302
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`20056/1872349
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`5
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`OPPOSITION T0 MOTION TO STRIKE