Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA60687
`ESTTA Tracking number:
`01/06/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044438
`Defendant
`AARP
`AARP
`601 E STREET, N.W.
`WASHINGTON, DC 20049
`
`Correspondence
`Address
`
`JOHN J. DABNEY
`MCDERMOTT WILL & EMERY LLP
`600 THIRTEENTH STREET, NW
`WASHINGTON, DC 20005
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`John J. Dabney
`jdabney@mwe.com, sabrown@mwe.com, tdevitis@mwe.com,
`Washington_IP_Docket@mwe.com
`/JJD/
`01/06/2006
`Motion to Suspend.pdf ( 16 pages )
`
`
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA60687
`ESTTA Tracking number:
`01/06/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044438
`Defendant
`AARP
`AARP
`601 E STREET, N.W.
`WASHINGTON, DC 20049
`
`Correspondence
`Address
`
`JOHN J. DABNEY
`MCDERMOTT WILL & EMERY LLP
`600 THIRTEENTH STREET, NW
`WASHINGTON, DC 20005
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`John J. Dabney
`jdabney@mwe.com, sabrown@mwe.com, tdevitis@mwe.com,
`Washington_IP_Docket@mwe.com
`/JJD/
`01/06/2006
`Motion to Suspend.pdf ( 16 pages )
`
`
`
`ATTORNEY DOCKET NO: 034247-0320
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92044438
`
`Registration No. 737,930
`
`)
`
`) )
`
`) )
`
`)
`
`)
`)
`
`) )
`
`200 Kelsey Associates, LLC,
`
`V.
`
`AARP
`
`Petitioner,
`
`Registrant.
`
`MOTION TO SUSPEND PROCEEDINGS
`
`Registrant AARP hereby moves to suspend this cancellation proceeding, pursuant to 37
`
`CFR § 2.1 17 and Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 5 l0.02(a),
`
`pending resolution of the action (the “Federal Court Action”) filed by AARP against Petitioner
`
`200 Kelsey Associates, LLC (“Petitioner”) and Michael Reich in the Federal District Court for
`
`the Southern District of New York on January 5, 2006 (No 06—cV—008l, attached hereto as
`
`Exhibit A).
`
`I.
`
`BACKGROUND
`
`AARP has owned the federal trademark registration for MODERN MATURITY that is
`
`the subject of this cancellation proceeding since 1962 and has built up considerable goodwill in
`
`that mark though continuous use since 1962 and substantial advertising and promotion of the
`
`mark. AARP has recently learned that Petitioner is infringing the MODERN MATURITY mark.
`
`AARP has thus filed the Federal Court Action to protect the Mark and AARP’s reputation,
`
`
`
`alleging trademark infringement, false designation of origin, trademark dilution and unfair trade
`
`practices under federal and New York law.
`
`AARP’s complaint in the Federal Court Action seeks a permanent injunction, damages,
`
`and attomey’s fees. AARP also seeks an order requiring Petitioner to withdraw this cancellation
`
`proceeding and its trademark application to register MODERN MATURITY for magazines, Ser.
`
`No. 78/448,077.
`
`II.
`
`ARGUMENT
`
`Resolution of the Federal Court Action will necessarily resolve all of the issues before the
`
`Board in this proceeding, including the continuing validity of AARP’s registration for MODERN
`
`MATURITY. See TBMP § 5 l0.02(a). The federal court adjudicating the Federal Court Action
`
`would effectively have the “last word” regarding whether AARP’s registration for MODERN
`
`MATURITY is still valid. Therefore, adjudication of the Federal Court Action would
`
`necessarily render this cancellation proceeding moot. In addition, if the court orders Petitioner to
`
`withdraw its cancellation petition in this matter, as AARP has requested, any further action in
`
`this proceeding would essentially be wasted effort for the Board and for the parties. See
`
`Wh0pper—Burger, Inc. v. Burger King C0rp., l7l U.S.P.Q. (BNA) 805 (TTAB l97l) (granting a
`
`motion to suspend when movant had filed an action in federal district court that would “have a
`
`direct bearing on the question of the rights of the parties herein and may in fact completely
`
`resolve all the issues” and noting that “a decision by the United States District Court would be
`
`binding on the Patent Office whereas a determination by the Patent Office as to respondent’s
`
`right
`
`would not be binding or res judicata in respect to the proceeding pending before the
`
`federal district court.”).
`
`
`
`Further, AARP’s allegation that Petitioner has infringed AARP’s MODERN
`
`MATURITY mark can only be decided by a federal court, and only the federal court can issue
`
`the injunction that is sought here and grant the monetary relief that is sought. AARP has also
`
`raised state law claims that are not within the jurisdiction of the TTAB. As a result, federal court
`
`is the only venue in which all issues between the parties can be resolved. It would be more
`
`efficient to allow the Federal Court Action to proceed to its conclusion before resuming this
`
`proceeding if necessary. See Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848 (2d Cir.
`
`1988) (holding that when court action concerns trademark infringement, the interest in prompt
`
`adjudication outweighs the value of having the views of the PTO); American Bakeries Co. v.
`
`Pan—0—Gold Baking Co., 650 F. Supp. 563 (D. Minn. 1986) (TTAB should not be given primary
`
`jurisdiction when the district court action includes claims which cannot be raised before the
`
`Board). The TTAB routinely grants a motion to stay in favor of a federal court action. See
`
`TBMP § 510.02(a) (“Ordinarily, the Board will suspend proceedings in the case before it if the
`
`final determination of the other proceeding will have a bearing on the issues before the Board.”);
`
`see also General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ 2d 1933 (TTAB 1992)
`
`(granting petitioner’s motion to stay the proceeding when petitioner had filed a case in federal
`
`district court that would be dispositive of the issues before the Board); The Other Telephone Co.
`
`v. Connecticut Nat’l. Telephone Co., 181 USPQ 125 (TTAB 1974) (noting that once a civil
`
`action between the parties is filed in federal court, “[t]he only question for determination
`
`is
`
`whether the outcome of the civil action will have a bearing on the issues involved in the
`
`proceeding”).
`
`
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, AARP requests that its motion be granted.
`
`Dated: January 6, 2006
`
`By:
`
`Respectfully submitted,
`
`AARP
`
`s/John J. Dabney
`John J. Dabney
`MCDERMOTT WILL & EMERY LLP
`
`600 Thirteenth Street, N.W.
`
`Washington, D.C. 20005
`Telephone: 202.756.8000
`Facsimile: 202.756.8087
`
`
`
`
`
`EXHIBIT AEXHIBIT A
`
`
`
`
`
`UNITED STATES DISTRICT CC
`FOR THE SOUTHERN DISTRICT OF I
`
`Plaintiff,
`
`AARP
`
`vs.
`
`200 Kelsey Associates, LLC, and
`Michael Reich
`
`Defendants
`
`Plaintiff AARP sues defendants 200 Kelsey Associates,
`
`(collectively “Defendants”), and alleges:
`
`The Parties
`
`1.
`
`AARP is a corporation organized and existing u
`
`Columbia, having its principal place of business at 601 E St., I‘
`
`2.
`
`Upon information and belief, Defendant 200 Kc
`
`liability company organized and existing under the laws of the
`
`principal place of business at One Ramada Plaza, Suite 100, N
`
`3.
`
`Michael Reich is the principal shareholder and
`
`Associates, LLC and directed the illegal conduct alleged herei:
`
`Nature of the Action
`
`4.
`
`This is a civil action for claims arising under th
`
`the United States, 15 U.S.C. §§ 1051, et seq., (the “Lanham A
`
`WDC99 H7721]-2.034247.0320
`
`
`
`
`
`laws of New York. AARP has established enormous goodwill ii
`
`MATURITY for a magazine targeted to mature Americans. Thi
`
`Defendants’ substantial efforts and intent to use the identical ma
`
`order to trade off of the goodwill of AARP’s mark.
`
`5.
`
`AARP seeks (1) to enjoin Defendants from regist
`
`trademark MODERN MATURITY and to enjoin Defendants fr(
`
`proceeding against AARP’s registration for MODERN MATUF
`
`Defendants have caused AARP by their acts of infringement, fal
`
`and unfair trade practices; and (3) to recover AARP’s attorney’:
`
`result of Defendants’ willful trademark infringement.
`
`Jurisdiction and Venue
`
`6.
`
`Jurisdiction is conferred on this Court by 15 U.1
`
`28 U.S.C. § 1332 ; 28 U.S.C. § 1338(a)-(b) and 28 U.S.C. § l3(
`
`7.
`
`Venue is proper under 28 U.S.C. § 1391 because
`
`business is in this District and some of the illegal conduct that i
`
`occurred in this district.
`
`AARP and Its Mark MODERN MA’
`
`8.
`
`AARP is a nonprofit organization dedicated to a
`
`who are 50 years of age and older. It is the largest membership
`
`for these persons.
`
`9.
`
`With more than 35 million members, AARP is t
`
`organization of its kind in the United States. AARP maintains
`
`States and U.S. territories and has approximately 3,500 local cl
`
`WDC99 1 I 7721 l~2.034247.032O
`
`
`
`
`
`10.
`
`For nearly half a century, AARP has provided its
`
`the mark MODERN MATURITY.
`
`l 1.
`
`To the millions of Americans who have received
`
`five decades, MODERN MATURITY has come to mean and cc
`
`magazine for older Americans published by AARP.
`
`12.
`
`AARP owns a registration in the U.S. Patent and
`
`for the mark MODERN MATURITY, Reg. No. 737,930, for ma
`
`common law, i.e., Lmregistered, MODERN MATURITY mark 1
`
`13.
`
`AARP has invested hundreds of millions of doll:
`
`magazines under the mark MODERN MATURITY.
`
`14.
`
`AARP continues to use its MODERN MATURI
`
`15.
`
`As a result of AARP’s long, continuous and wid
`
`MATURITY for magazines, that mark has become famous and
`
`and wide-spread public recognition.
`
`Defendants’ Unlawful Condu
`
`16.
`
`On July 8, 2004, Defendants filed an intent-to-u:
`
`78,338,077, for the mark “Modern Maturity” for use on a “Mag
`
`the identical goods for which AARP has registered MODERN l
`
`examiner refused to register Defendants’ mark on the grounds 1
`
`AARP’s registration for MODERN MATURITY.
`
`17.
`
`Thereafier, Defendants filed a petition with the '.
`
`Board (“TTAB”) to cancel AARP’s Registration No. 737,930, <
`
`WDC99 l 1772] 1-2.03/-l247.0320
`
`
`
`
`
`l8.
`
`Defendants are well aware that MODERN MATI
`
`AARP’s magazine for mature Americans. In fact, in response tc
`
`part of the cancellation proceeding, Michael Reich admitted that
`
`because of its “prior renown as a trademark used in connection i
`
`19.
`
`Defendants have taken concrete steps to use “Mo
`
`commerce on a magazine. Defendants have undertaken extensii
`
`efforts in connection with their use of the mark MODERN MA?
`
`actively seeking to license a third party to publish a magazine fr
`
`name “Modern Maturity.” They have conducted extensive anal
`
`connection with their use of the mark MODERN MATURITY.
`
`concrete steps related to their use of the mark MODERN MAT!
`
`20.
`
`Defendants’ use of AARP’s MODERN MATUF
`
`magazine for older Americans is likely to cause confusion in th»
`
`AARP’s mark MODERN MATURITY. Consumers have corn:
`
`MATURITY with the name of a magazine for older Americans
`
`another magazine called “Modern Maturity,” they are likely to
`
`published by AARP.
`
`21.
`
`Defendants’ actions are knowing, willful and de
`
`14.1
`
`Trademark Infringement in Violation of the Lanha
`
`22.
`
`AARP repeats and incorporates by reference the
`
`paragraphs 1-21 of the Complaint as though fully set forth here
`
`WDC99 11772] l-2.034247.0320
`
`
`
`
`
`23.
`
`Defendants’ conduct, as described above, constitu
`
`federally registered MODERN MATURITY mark in violation 01
`
`15 U.S.C. § 1114.
`
`24.
`
`AARP’s federally registered MODERN MATUR
`
`enforceable and was so long before Defendants engaged in the Lt
`
`25.
`
`Defendants’ unauthorized use of the mark MODE
`
`cause confusion, mistake and deception as to the source, origin, :
`
`endorsement or affiliation of Defendants’ products and services.
`
`26.
`
`Defendants’ wrongful conduct has deprived AAR
`
`right to control the reputation and goodwill associated with its IV
`
`27.
`
`Unless Defendants are enjoined from engaging in
`
`will suffer further irreparable injury and harm, for which it has r
`
`Count II
`
`Unfair Competition and False Designation of Or
`The Lanham Act, 15 U.S.C. § 112
`
`28.
`
`AARP repeats and incorporates by reference the
`
`paragraphs 1-27 of the Complaint as though fully set forth herei
`
`29.
`
`Defendants’ conduct, as described above, constit
`
`designation of origin in violation of Section 43(a) of the Lanhar
`
`30.
`
`AARP owns a valid and enforceable common la‘
`
`for magazines, and this mark was Valid and enforceable long be
`
`unlawful conduct alleged herein.
`
`WDC99 l I772] l-2.034247.0320
`
`
`
`
`
`31.
`
`Defendants’ unauthorized use of the mark MODE
`
`cause confusion, mistake and deception as to the affiliation, conr
`
`Defendants’ products and services.
`
`32.
`
`Defendants’ wrongful conduct has deprived AAI
`
`right to control the reputation and goodwill associated with its N
`
`33.
`
`Unless Defendants are enjoined from engaging in
`
`will suffer further irreparable injury and harm for which it has nr
`
`Count III
`
`Dilution In Violation of the Lanham Act, 15 l
`
`34.
`
`AARP repeats and incorporates by reference the :
`
`paragraphs 1-33 of the Complaint as though fully set forth hereii
`
`35.
`
`AARP’s mark MODERN MATURITY is distinc
`
`and protected under the Lanham Act long before Defendants’ u:
`
`36.
`
`Defendants’ unlawful use of MODERN MATUF
`
`distinctive qualities of AARP’s famous mark MODERN MATL
`
`capacity of that mark to identify and distinguish products and se
`
`AARP.
`
`37.
`
`Defendants’ wrongful conduct has deprived AA]
`
`right to control the reputation and goodwill associated with its 1‘
`
`to maintain its distinctiveness.
`
`38.
`
`Unless Defendants are enjoined from engaging i:
`
`will suffer fiirther irreparable injury and harm for which it has r
`
`WDC99 l I 772! l-Z034-247.0320
`
`
`
`
`
`COUNT IV
`
`Trademark Infringement, Unfair Busines
`and Unfair Competition in Violation of Ne
`
`39.
`
`AARP repeats and incorporates by reference the 5
`
`paragraphs 1-38 of the Complaint as though fully set forth hereir
`
`40.
`
`Defendants’ conduct, described above, constitute:
`
`competition, and deceptive business practices in violation of the
`
`State of New York, including New York General Business Law
`
`41.
`
`AARP’s mark MODERN MATURITY is protect
`
`New York and was so long before Defendants’ unlawful conduc
`
`42.
`
`Defendants’ unauthorized use of AARP’s mark I\
`
`to cause confusion, mistake, and deception as to the affiliation,<
`
`Defendants’ products and services.
`
`43.
`
`As a result of Defendants’ wrongful conduct, AA
`
`things, the right to control the reputation and good will associatt
`
`MATURITY mark.
`
`44.
`
`Defendants’ wrongful acts of infringement in Vic
`
`malicious, willful and deliberate.
`
`45.
`
`Unless Defendants are restrained by the Court, A
`
`irreparable injury and harm, for which it has no adequate remed
`
`COUNT V
`
`Trademark Dilution in Violation of Nev
`
`46.
`
`AARP repeats and incorporates by reference the
`
`paragraphs 1-45 of the Complaint as though fully set forth here‘
`
`WDC99 l I 772] l—2.034247.032O
`
`_ 7 -
`
`
`
`
`
`47.
`
`Defendants’ conduct constitutes trademark dilutio
`
`General Business Laws § 360.
`
`48.
`
`AARP’s mark MODERN MATURITY is famous
`
`so long before Defendants’ conduct alleged herein.
`
`49.
`
`Defendants’ unauthorized use of MODERN MA"!
`
`AARP’s reputation and to dilute the distinctive duality ofAARP
`
`mark, thereby lessening the capacity of that mark to identify and
`
`services provided or authorized by AARP.
`
`50.
`
`As a result of Defendants’ wrongful conduct, AA
`
`things, the right to control the reputation and goodwill associate<
`
`its distinctive quality.
`
`51.
`
`Unless Defendants are restrained by the Court, A
`
`injury and harm for which it has no adequate remedy at law.
`
`WI-IEREFORE, AARP requests that this Court grant th
`
`(1)
`
`A preliminary and permanent injunction enjoinin
`
`agents, officers, directors, attorneys, representatives, successors
`
`licensees, and assigns, and all those in active concert or particip
`
`following acts:
`
`(a)
`
`using or attempting to use on or in conne4
`
`service, or the sale, offering for sale, distribution, advertising, p
`
`of any services or any goods, or from using for any purpose why
`
`MODERN MATURITY, or any other name, mark or designatic
`
`confusingly similar to said name or mark, alone or in combinati
`
`WDC99 1 17721 l-2.034247.0320
`
`
`
`
`
`designation(s), word(s), terrn(s) and/or design(s); (2) any false d<
`
`any other thing calculated or likely to cause confusion or mistak:
`
`deceive the public into the belief that Defendants or their produc
`
`AARP or that Defendants’ products and services come from or 2
`
`AARP; and (3) any name or mark which is likely to injure the b1
`cause dilution of the distinctive quality of AARPis mark MODE
`
`combination with any other mark(s), designation(s), word(s), ter
`
`(b)
`
`otherwise engaging in acts, either directly
`
`infringement, dilution, unfair competition, false designation of c
`
`practices;
`
`(2)
`
`An Order requiring Defendants to withdraw their
`
`against AARP‘s Reg. No. 737,930 before the TTAB.
`
`(3)
`
`An Order requiring Defendants to withdraw theil
`
`78/448,077 before the USPTO.
`
`(3)
`
`An Order requiring Defendants to file with the C
`
`within thirty (30) days after the entry of such order or judgment
`
`oath setting forth in detail the manner and form in which they h
`
`(4)
`
`A declaration that Defendants’ acts of trademark
`
`of origim dilution, and unfair competition were knowing, willft
`
`meaning of 15 U.S.C.§ 1117;
`
`(5)
`
`An Order awarding to AARP actual damages an
`
`profits, including any statutory enhancements, or enhancement:
`
`of Defendants’ acts;
`
`WDC99 1177211-2.034247.032O
`
`
`
`
`
`(6)
`
`(7)
`
`An Order awarding to AARP prejudgment and po
`
`An award of AARP’s costs and expenses,
`
`reasonable attorneys’ fees;
`
`(8)
`
`An Order awarding to AARP punitive damages 0
`
`violations of New York law.
`
`(9)
`
`All other reliefl in law or in equity, to which AAI
`
`Court deems just and proper.
`
`Plaintiff respectfully requests a jury trial of all issues so 1
`
`Dated: January 5, 2006
`
`MCDERMC
`
`Chryssa V.
`50 Rockefe
`New York,
`Telephone:
`Facsimile: 1
`
`Of counsel:
`
`John J. Dal
`McDERM(
`D.C. BarN
`60013"‘ SH
`Washingtoi
`Tel: 202-7
`Fax: 202-7
`
`Attorneys 1
`
`WDC99 1 17721 1-20342470320
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that one copy of the foregoing REGISTRANT’S
`
`MOTION TO SUSPEND PROCEEDINGS was served upon counsel for Petitioner by
`
`FedEx and facsimile, this 6 day of January, 2006, addressed as follows:
`
`Edmund J. Ferdinand, III, Esq.
`GRIMES & BATTERSBY, LLP
`
`488 Main Avenue, Third Floor
`
`Norwalk, Connecticut 06851
`
`WDC99 1l81543—1.034247.0320
`
`s/John J. Dabney
`Attorney for Registrant
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