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`.
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`I
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`01-09-‘2o03.
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`OfclTM Mail Rcptot. #’
`US. Patent & TM
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`'
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Oak Brook Bank, Petitioner
`
`v.
`
`Cancellation No. 32,058
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`OakBrook Investments, Respondent
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`:4
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`To: Trademark Trial and Appeal Board
`By Express Mail # EU55 9774 548US
`
`Re: Registration No. 2,277,600 for OakBrook Investments and Design
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`RESPONDENT’S BRIEF IN RESPONSE TO
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`MOTION TO SET ASIDE DISMISSAL
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`Introduction. By its order of October 7, 2002, the Board dismissed this proceeding with
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`prejudice, by granting Respondent’s Motion for Summary Judgment as having been
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`conceded.
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`Petitioner has filed a Motion seeking to set aside the Board’s dismissal order.
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`While Petitioner’s Motion to Set Aside contains a Certificate of Service, reciting that
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`service was made on Respondent’s counsel, Respondent did not receive any such Motion
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`from Petitioner. Upon receipt of a letter from Petitioner’s counsel in late December,
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`which referred to such a Motion, Respondent’s counsel requested a copy of such Motion
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`to Set Aside fiom Petitioner’s counsel. This request was sent by email and facsimile, and
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`.
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`I
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`01-09-‘2o03.
`'
`OfclTM Mail Rcptot. #’
`US. Patent & TM
`
`'
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Oak Brook Bank, Petitioner
`
`v.
`
`Cancellation No. 32,058
`
`OakBrook Investments, Respondent
`
`:4
`
`To: Trademark Trial and Appeal Board
`By Express Mail # EU55 9774 548US
`
`Re: Registration No. 2,277,600 for OakBrook Investments and Design
`
`RESPONDENT’S BRIEF IN RESPONSE TO
`
`MOTION TO SET ASIDE DISMISSAL
`
`Introduction. By its order of October 7, 2002, the Board dismissed this proceeding with
`
`prejudice, by granting Respondent’s Motion for Summary Judgment as having been
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`conceded.
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`Petitioner has filed a Motion seeking to set aside the Board’s dismissal order.
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`While Petitioner’s Motion to Set Aside contains a Certificate of Service, reciting that
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`service was made on Respondent’s counsel, Respondent did not receive any such Motion
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`from Petitioner. Upon receipt of a letter from Petitioner’s counsel in late December,
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`which referred to such a Motion, Respondent’s counsel requested a copy of such Motion
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`to Set Aside fiom Petitioner’s counsel. This request was sent by email and facsimile, and
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`was attached to a “Preliminary Response” that Respondent filed with the Board on
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`December 31, 2002.
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`Petitioner’s counsel has never responded to suchna request for a copy of the Motion to Set
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`Aside. Respondent’s counsel, through CCH Corsearch, has now independently obtained a
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`copy of the Motion to Set Aside, which was delivered by FedEx to Respondent’s counsel
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`on January 8, 2003.
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`On January 8, Respondent’s counsel notified the Interlocutory Attorney assigned to this
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`case of this situation and was advised to file this response, reciting the non-delivery of the
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`Motion to Set Aside.
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`Respondent is hereby filing this response to the Motion to Set Aside. A previous
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`“Preliminary” response was filed December 31, 2002, before Respondent’s counsel had a
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`1
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`copy of the Motion to Set Aside, and an objection was raised therein to the timing of the
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`Motion’s filing.
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`Respondent now wishes to submit this Brief in Response to all issues raised by the
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`Motion to Set Aside. In summary, Respondent hereby shows that the Motion to Set Aside
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`was not filed within the time allowed by the Board under its Rules; and that, in any event,
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`the Motion is not meritorious.
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`This Brief in Response is supported by a Declaration of Respondent’s counsel, properly
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`verified and suitable as evidence under Trademark Office Rules.
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`The Motion to Set Aside is Not Timely Filed. The Motion to Set Aside should be
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`denied, on the ground that in any event it is untimely under the Trademark Rules of
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`Practice (Sixth Edition, June 2002), Rule 2. 127(b). This Rule clearly states that when the
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`Board has issued an order pursuant to a motion that has been filed, then “Any request for
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`reconsideration or modification of an order or decision issued on a motion must be filed
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`within one month from the date thereof.” (Emphasis added). The word “must” as
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`included within this Rule indicates that the Rule is mandatory and that a failure to comply
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`with this deadline entails that such an out—of-time Motion must be dismissed.
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`The Motion to Set Aside is subject to and within the scope of the aforesaid rule, and it
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`has not been filed within the time allowed, which time expired November 7, 2002 (i.e.
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`one month after the Board’s order). Therefore, the Motion to Set Aside the Board’s
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`October 7 order is untimely and should be dismissed summarily by the Board.
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`The Motion to Set Aside does not offer any explanation or excuse as to why it should be
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`accepted or considered, after the one-month deadline set by the above-cited Trademark
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`Rule. In no way does it contend that the period allotted by the Rules — until November 7,
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`2002 — is inadequate or unfair, nor does it give any reason or argument as to why the rule
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`should not bar the Motion in this case. The Declaration accompanying the Motion
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`confirms that Petitioner had actual notice of the Board’s October 7 order, and that action
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`was taken by Petitioner on or about October 25 regarding this matter. Clearly, ample time
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`existed in which a response to the Board’s order could have been filed, within the time
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`allotted by Rule 2. 127(b), and Petitioner was not prejudiced by the time constraints of the
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`Rule, having received actual notice from the Board and having at least two weeks from
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`the time Petitioner’s counsel called to the Board, on or about October 25, in which to file
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`a proper Motion.
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`While the above-stated procedural ground is sufficient for the decision on this matter,
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`Respondent also offers the reasons below for its position that the Motion to set aside
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`should be denied, and that the Board’s decision on October 7 should be confirmed.
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`The Motion is Not Meritorious. The Motion appears to claim that Respondent’s counsel
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`allegedly consented to Petitioner’s having an infinite (or at least, indefinite) amount of
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`time in which to respond to the Respondent’s Motion for Summary Judgment, and that
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`based on this alleged consent, the Board’s decision on this Motion should be set aside.
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`Respondent’s counsel has never consented to an infinite or indeterminate amount of time
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`in which Petitioner could respond to the Motion for Summary Judgment.
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`Indeed, the documents and evidence submitted by Petitioner demonstrate that, by letter of
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`May 30, 2002 (Exhibit 2 to the Motion to Set Aside), Respondent’s counsel specifically
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`stated that “we will agree to stipulate that your client will have u.ntil July 15, 2002, in
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`which to file a response to the Motion for Summary Judgment. .
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`.
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`. We will also agree to
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`join in a motion .
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`.
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`. that the Board should give no further consideration to the Motion [for
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`Summary Judgment], until after July 15.” (Emphasis in original).
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`Clearly, on its face, this letter from Respondent’s counsel only consented to a limited
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`extension for a limited time. In no case did Respondent’s counsel ever consent to the
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`apparently open-ended time for a Brief in Response that is apparently being claimed.
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`The Motion to Set Aside does not even allege that Respondent’s counsel consented to
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`any extensions of time past July 15, 2002. While Petitioner apparently makes an attempt
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`to read the letter (Exhibit 2) otherwise, it is clear that this letter only intends a specific
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`and limited consent for a limited period of time.
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`Petitioner claims that the parties “exchanged drafts” of a proposed agreement to resolve
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`this matter. In fact, Respondent prepared a draft, which was substantially rewritten by
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`Petitioner after a substantial delay of many weeks. This rewrite included additional terms
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`(such as the requirement for Respondent to include a disclaimer in its advertising) that
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`were not acceptable to Respondent.
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`Petitioner’s claim, in effect, is that the parties’ actions in “exchanging drafis,” (although
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`Petitioner only made one rewrite of the proposed document) in and of itself‘, is sufficient
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`to stay the Board’s consideration of Respondent’s Motion for Summary Judgment. This
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`was never Respondent’s intent, and any such contention is directly in conflict with the
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`Rules of the Trademark Office.
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`Indeed, Respondent only was agreeable to limited extensions of time for a response to its
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`Summary Judgment Motion, in the hope that the time limits on extensions would give
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`Petitioner an incentive to make a timely review of the proposed agreement. However,
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`these reviews by Petitioner were not forthcoming.
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`It is entirely possible and appropriate for the parties to negotiate terms, while the
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`proceeding is pending and even though it is not suspended. It is submitted that, in fact,
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`such negotiations take place all the time, without any impact on the times set for the
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`official proceeding. In no way does the existence of a negotiation situation — even an
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`active one, which did certainly not exist in this — operate to automatically suspend the
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`Board’s proceedings or to automatically stay the period for a party to respond to a
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`pending motion.
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`The Trademark Office Rules, at 2.117(c), clearly state that any suspensions are to be
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`granted by the Board. This Rule states that “Proceedings may also be suspended, for
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`good cause, upon motion or a stipulation of the parties approved by the Board.”
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`Therefore, at best, the letters of Respondent’s counsel consenting to specific amounts of
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`time, did no more than to give Petitioner a license to request the Board for a deferral of
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`time in which Petitioner could respond to the Motion for Summary Judgment. These
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`letters could have served as the factual basis for “a stipulation of the parties approved by
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`the Board” within the meaning of Rule 2.1l7(c). However, no such stipulation was ever
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`prepared by Petitioner, and indeed the time that was allowed by Respondent’s letter (until
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`July 15, 2002, per Exhibit 2 to the Motion to Set Aside) passed without Petitioner ever
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`responding to the draft agreement prepared by Respondent, and without Petitioner’s
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`preparation of any stipulation to be submitted to the Board.
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`Even if a stipulation had been prepared and approved, based on Respondent’s letter, it is
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`clear than a deferral until July 15, 2002 would not have made any difference to the
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`outcome. Petitioner did not file any Brief in Response to the Summary Judgment Motion
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`by July 15, and in fact has never filed any such Brief in Response.
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`Because of situations like these, the Board has established specific rules that govern its
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`procedures. No party is entitled to an indeterminate amount of time in which to respond
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`to a matter in a Board proceeding, simply because the parties may be considering a
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`settlement or because one of the parties believes that such an indeterminate extension
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`would be useful. It is important that the times and schedules set by the Board be clear and
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`definite, and the Rules serve this purpose.
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`Petitioner had more than ample opportunity to respond to the initiatives of Respondent,
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`and to file appropriate papers with the Board so as to avoid the dismissal which has now
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`been issued. The Board has clear and public rules about the procedures that apply in these
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`circumstances, and they allow a party ample time in which to take the correct action.
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`Petitioner is not entitled to the relief requested by its Motion, and i.ts Motion should be
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`denied.
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`Respectfiilly submitted,
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`2%/fl W7
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`Edmund B. Burke
`
`Edmund B. Burke, LLC — Attorneys at Law
`Seven Piedmont Center, Suite 300
`404-816-8155 (voice)
`888-700-7631 (fax)
`pburke@,burkefirm.com
`
`Filed this 9th Day of January, 2003
`Attached: Declaration of Edmund B. Burke
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`
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Oak Brook Bank, Petitioner
`
`v.
`
`Cancellation No. 32,058
`
`OakBrook Investments, Respondent
`
`Re: Registration No. 2,277,600 for OakBrook Investments and Design
`
`DECLARATION AND VERIFICATION OF EDMUND B. BURKE
`UNDER 37 C.F.R. 2.20
`
`In support of the accompanying Brief in Response to Petitioner’s Motion to Set Aside,
`
`Edmund B. Burke hereby declares as follows:
`
`1.
`
`I am the attorney for Respondent OakBrook Investments, LLC and have personal
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`knowledge of the facts recited herein.
`
`2.
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`The Board granted Respondent’s Motion for Summary Judgment in the above-
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`noted cancellation action by order of October 7, 2002. Since my receipt of notice of that
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`Board decision, I have been carefillly attending to all incoming mail, to determine
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`whether the Petitioner in this matter has filed any kind of motion or request to set aside or
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`otherwise contest the Board’s October 7 order.
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`
`
`
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`3.
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`I have never received any copy of any such motion to set aside from Petitioner or
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`its counsel.
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`4.
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`I was out of the country for Christmas holidays from December 21 until the
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`evening of Monday, December 30. After my return to the office fifom Christmas holidays
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`on December 31, I received a letter from Petitioner’s counsel, dated December 23, which
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`made reference to a motion to set aside the Board’s October 7 order. I immediately sent a
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`letter, both by email and facsimile, to Petitioner’s counsel, requesting a copy of any such
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`motion. I have never received a response to these inquiries. I also filed a “Preliminary
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`Response” with the Board, by Express Mail sent on December 3 l , 2002 (which Response
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`has already been received by the Trademark Office), which I filed as a matter of prudence
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`in case such a motion to set aside had in fact been filed.
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`5.
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`In this “Preliminary” Response, I noted that any such Motion filed by Petitioner
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`would have been untimely under the Trademark Office Rules, and reserved the right to
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`make any substantive responses if in fact a Motion had been filed. On December 31, I
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`also called my trademark service company, CCH Corsearch, and requested that it conduct
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`a search of the records of the Trademark Office in an attempt to find any such Motion to
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`Set Aside.
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`6.
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`I did receive, from CCH Corsearch, a copy of the Motion to Set Aside, which was
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`delivered to me fiom CCH Corsearch by FedEx on January 8, 2003. I am filing a
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`response to the Motion, accompanying this Declaration, promptly after receiving an
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`actual copy of this Motion.
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`7.
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`As to the allegations of Petitioner as set out in the Motion, neither Respondent nor
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`its counsel has ever consented to an indefinite or indeterminate amount of time for
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`Petitioner to respond to Respondent’s Motion for Summary Judgment. To the contrary, as
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`evidenced by the copy of my letter which is attached to the Motion to Set Aside as
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`Exhibit 2, I always was careful to define a set period of time to which Respondent
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`would be willing to consent, regarding any response of Petitioner to the Motion for
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`Summary Judgment.
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`8.
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`My May 30 letter represented that Respondent would promptly send a draft
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`agreement for settlement, by June 6, to Petitioner’s counsel. I in fact sent such a draft,
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`within the time promised (June 6, 2002), and did agree that Respondent would raise no
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`objection to the late filing of a Response to its Motion for Summary Judgment so long as
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`a Response from Petitioner was filed by July 15, 2002. This allowed, in my opinion,
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`ample time for Petitioner to review and respond, and to file the necessary papers with the
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`Board.
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`9.
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`In my May 30 letter, in the last paragraph of page 1, I specifically noted that it
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`would be necessary for Petitioner to file a Motion with the Board regarding the
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`suspension of proceedings and allowed that Respondent would consent, up to and
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`including the date of July 15, for a response. However, Petitioner took no action in
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`
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`response to this initiative and did not file any Response to the Motion for Summary
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`Judgment, nor any other pleading with the Board in order to try to suspend the
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`proceedings.
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`10.
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`In no way has Respondent or its counsel ever prevented Petitioner from filing a
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`. response to Respondent’s Motion for Summary Judgment. Respondent and its counsel
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`believed at the time of filing of the Motion for Summary Judgment, and they continue to
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`believe, that the Motion for Summary Judgment was meritorious, because of Petitioner’s
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`admission that the marks are not confusing. In fact, since the filing of the Motion for
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`Summary Judgment, both parties to the Cancellation Petition have relied on the belief
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`that the parties’ marks are not confiising, in reviewing drafis of a settlement agreement.
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`11.
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`I have never made any oral agreement with Petitioner or its counsel regarding any
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`extensions oftime and have been carefial to exchange all such communications in
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`writing. I have read the Declaration of Petitioner’s counsel and in my opinion it does not
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`even contain any allegation that I have made any oral agreements as to an extension. I am
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`unable to understand myself, from the Motion filed, as to why my specific consent to an
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`extension, through July 15, should have any bearing on this matter, when no response of
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`any kind was filed by Petitioner prior to the Board’s October 7 order.
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`12.
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`At all times I have been diligent to ensure that Respondent only agreed to specific
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`and set periods of time with regard to its objections to any late filings by Petitioner. I
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` l1
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`./
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`l l l
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`would never agree to an indefinite period of time for any such extension, and have not
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`done so in this case.
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`The undersigned, being warned that false statements and the like so made are punishable
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`by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false
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`statements and the like may jeopardize the validity of the application or document or any
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`registration resulting therefrom, declares that the facts set forth above in this Declaration
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`are true, that all statements made of his own knowledge are true, and that all statements
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`made on information and belief are believed to be true.
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`Respectfillly submitted,
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`2%//éflafle
`
`Edmund B. Burke
`
`Edmund B. Burke, LLC — Attorneys at Law
`Seven Piedmont Center, Suite 300
`404-816-8155 (voice)
`888-700-7631 (fax)
`burke burkefirmcom
`
`Dated this 9th Day of January, 2003
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that I have this day served counsel for Petitioner Oak Brook Bank in this
`matter, by sending a copy of this paper entitled “RESPONDENT’S BRIEF IN
`RESPONSE TO MOTION TO SET ASIDE DISMISSAL” by Express Mail #EU55
`9774 534US, this 9th day of January 2003, addressed as follows:
`
`Law Offices of Jerry A. Schulman, Terrace Executive Center, Court C, 1 South 376
`Summit Avenue, Oakbrook Terrace, Illinois 60181.
`
`
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`Edmund B. urke, counsel for Respondent ‘OakBrook Investments
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