Proceeding
`Party
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA85180
`ESTTA Tracking number:
`06/13/2006
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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
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`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/
`06/13/2006
`Response to Motion for Judicial Notice.pdf ( 6 pages )(162093 bytes )
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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:
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`Application Serial No.
`For the Mark:
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`7631481 1
`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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`APPLICANTS RESPONSE TO
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`0PPOSER'S "MOTION FOR
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`JUDICIAL NOTICE" DATED MAY
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`24, 2006 IN CONNECTION WITH
`OPPOSER'S MOTION TO STRIKE
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`RE: APPLICANTS REPLY PAPERS
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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.
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`
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`Commissioner of Trademarks
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`PO. Box 1451
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`. Arlington, Virginia 223 13-1451
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`20056.’! 898399.]
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`

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`Applicant Google lnc. (“Applicant”) respectfully submits this response to Opposer's
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`"Motion for Judicial Notice" dated May 24, 2006. Opposer's "Motion for Judicial Notice" was
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`allegedly filed in support of Opposer's Motion to Strike (the "Opposer's Motion to Strike") the
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`reply papers of Applicant on Applicant's Combined (1) Motion for Protective Order re:
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`Opposer's Service and (2) Preliminary Response to Opposer's Motion to Consolidate
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`(hereinafter, the "Applicant's Motion for Protective Order").l
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`In support thereof, Applicant states
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`as follows.
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`Not content with creating satellite motion practice through its serial motions to strike in_
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`disregard of TMBP § 516, Opposer piecemeals further by filing, as an after-thought, a purported
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`"Motion for Judicial Notice" in alleged support of Opposer's Motion to Strike. The "Motion for
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`Judicial Notice" merely repeats verbatim groundless arguments Opposer previously had made in
`the Motion to Strike and discusses and attaches a copy of a published TTAB decision, In re
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`Zanova, Inc, 59 U.S.P.Q.2d 1300 (T.T.A.B. 2001).
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`Opposer purports to seek "judicial notice" of a published TTAB disposition, which is not
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`remotely necessary.
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`Indeed, this point, along with the fact that the Zanova decision was readily _
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`available to Opposer at the time it filed its Motion to Strike, simply confirms that Opposer's
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`belated '‘motion‘‘ is nothing more than an effort to harass through piecemeal motion practice and
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`to circumvent the normal rules on briefing by filing what essentially is yet another improper sur-
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`reply on Applicant's Motion for Protective Order. Opposer goes on to claim, without cogent
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`explanation, that it "is also submitting the case In Re Zanova, Inc. for the proposition that the
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`! Applicant's 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 _fi'o__m the US. Postal Service, or (b) using US. Postal Service Express Mail.
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`GOOGLE mark is generic and/or has become merely descriptive and hence unregistrable on the
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`Principle Register. Under Section 2(e)(1)." Motion, at 2 (typographical errors in original).
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`What this purported proposition has to do with the Motion to Strike Opposer does not explain,
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`undoubtedly because Opposer knows that it is not relevant to any issue on that motion. More
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`importantly, however, there is no merit to Opposer's blithe assumption that an issue such as the
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`ultimate question of fact regarding the supposed acquired genericism of a mark -- which is the
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`subject of a factually intensive analysis
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`that
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`largely focuses on the public's primary
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`understanding of the term and an issue on which Opposer bears the burden of persuasion2 -— is
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`the proper subject ofjudicial notice on the terms set forth in the Motion for Judicial Notice. Fed.
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`R. Evid. 20I(b) ("A judicially noticed fact must be one not subject to reasonable dispute in that it
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`is either (1) generally known within the territorial jurisdiction of" the trial court or (2) capable of
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`accurate and ready determination by resort to sources whose accuracy cannot reasonably be
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`questioned").
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`Indeed, Zanova says nothing about the GOOGLE mark and certainly contains no
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`"adjudicative facts" bearing on Applicant's GOOGLE mark involved in this proceeding. Fed. R.
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`Evid. 20l(a).
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`Opposer also misstates the legal analysis contained in Zanova. As the Board will recall,
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`Opposer's Motion to Strike rested solely on Trademark Rule 2.l42(d), which Opposer claimed
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`somehow precludes the introduction of evidence in this inter partes proceeding on all reply briefs
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`2 E.g., Zimmerman v. National Association ofRealtors, 70 U.S.P.Q.2d 1425, 1429 (T.T.A.B.
`2004) ("The critical issue (both before and after the 1984 Trademark Clarification Act) in
`genericness cases is whether members of the relevant public primarily use or understand the term
`sought to be registered to refer to the genus or category of goods in question"); see also In re
`Recovery, Inc, 196 U.S.P.Q. 830, 831 (T.T.A.B. 1977) ("whether a word or notationis merely
`descriptive must be determined not in the abstract or ona guesswork basis but in relation to the
`goods or services for which registration is sought, the context in which it is used, and the impact
`that it is likely to make on the average purchaser of such -‘goods o_r services").
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`3 RESPONSE TOMOTION Eon JUDICIAL
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`N0'I‘_ICE_
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`20056113983991
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`under all circumstances. As Applicant pointed out, and Opposer evidently concedes, that Rule --
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`entitled "Time and manner of ex parte appeals" -- has no application to this proceeding because
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`the Rule applies by its term only to ex parte appeals from the "Examiner of Tradernarks.“
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`Zcmova, too, involved an ex parte appeal from an Examining Attorney's refusal to register, not
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`the record on an inter partes proceeding. As that case and the face of Trademark Rule 2.l42(d)
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`reflect, the procedures for the introduction of evidence for the first time on an ex parte appeal are
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`to define the proper scope of the evidentiary record for purposes of appeals and presumably to
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`ensure that the Examining Attorney has had an opportunity to fully consider the evidence before
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`the intervention of the Board. Zanova, 59 U.S.P.Q. 2d at 1302 ("Moreover, creation of the
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`record to be considered in an ex par-re appeal must, at some point, be concluded." (emphasis
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`added));4 see also TBMP § 1207.01 (noting in discussing import of § 2.l42(d) that 'T{a]dditional
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`evidence filed after appeal normally will be given no consideration by the Board"). That
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`rationale with respect to appellate records has no application to the consideration of evidence on
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`Applicant's Motion for Protective Order in this inter partes proceeding. Opposer's belated
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`3 Trademark Rule 2. l42(d) provides: "The record in the application should be complete prior to
`the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider
`additional evidence filed with the Board by the appellant or by the examiner after the appeal is
`filed. After an appeal is filed, if the appellant or the examiner desires to introduce additional
`evidence, the appellant or the examiner may request the Board to suspend the appeal and to
`remand the application for further exarnination."
`4 The other reasons provided by Zanova in declining to remand to the Examining Attorney to
`consider the new evidence raised on appeal also make clear that the case does not assist Opposer
`here.
`In particular, the Board did not consider the evidence to be "probative" or justified in light
`of the fact that the applicant had had an opportunity to present it during examination. Neither
`does that reasoning apply to Applicant's Motion for Protective Order nor was the declaration
`submitted with Applicant's reply anything other than properly responsive to Opposer's' arguments
`in opposing the motion. See, e. g., Applicant's Opposition To Motion to Strike, filed May 20,
`2006, at pages 2-3 (citing authorities).
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`RESPONSE TO MOTION FOR JUDICIAL
`NOTICE
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`20o_se/_ts9a399.i
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`3
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`citation to Zanova thus simpiy proves Applicant's original point that Opposer's legal authorities
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`do not support the Motion to Strike.
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`Dated: June13, 2006
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`By:
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`.'
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`.. ’ ,-.-
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`Respectfully submitted,
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`QUINN EMANUEL URQUHART
`OLIVER & HEDGES, LLP
`Michael T. Zeller
`
`865 South Figueroa Street, 10th Floor
`Los Angeles, California 90017
`Telephone: (213) 443 -3000
`Facsimile: (213) 443-3100
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`Attorneysfor Appliccml
`Google Inc.
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`'2cios5n39s399.1
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`4
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`RESPONSE TO MOTION FOR JUDICIAL
`- NOTICE
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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 lnc.’s
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`Response to Opposer's Motion for Judiciai Notice dated May 24, 2006 in connection with
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`Opposer's Motion to Strike re: AppIication's Reply Papers by mailing said copy on June 13,
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`2006, via First Class Mail, postage prepaid to:
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`Leo Stolier
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`CENTRAL MFG. CO., (INC)
`71 15 W. North Avenue #272
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`Oak Park, Illinois 60302
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`20056I|898_399.I
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`‘RESPONSE TO MOTION FOR JUDICIAL
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`NOTICE