Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA449562
`ESTTA Tracking number:
`01/05/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054966
`Defendant
`Cook Collection Attorneys, P.L.C.
`
`COOK COLLECTION ATTORNEYS PLC
`165 FELL STREET
`SAN FRANCISCO, CA 94102
`UNITED STATES
`Other Motions/Papers
`David J. Cook (SBN # 060859)
`cook@squeezebloodfromturnip.com, mbaron@cookcollectionattorneys.com
`/djc/
`01/05/2012
`Smith 12b6 motion Supp.pdf ( 12 pages )(827435 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`3
`
`SCOTT R. SMITH, an individual,
`
`Petitioner,
`
`5
`
`vs.
`
`6 COOK COLLECTION ATTORNEYS,
`P.L.C., a California corporation,
`
`Respondent.
`
`Cancellation No. 92054966
`Registration No. 3257604
`
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`COOK COLLECTION ATTORNEYS, P.L.C.’S SUPPLEMENTAL MEMORANDUM IN
`SUPPORT OF MOTION TO DISMISS PETITION TO CANCEL, AND MOVE FOR
`ENTRY OF PREFILING ORDER AND OTHER RELIEF
`
`I. INTRODUCTION.
`
`=_A. SUBSEQUENT EVENTS.
`
`Petitioner filed a Complaint with GoDaddy.com. In response, GoDaddy has taken action,
`
`pursuant to its email of January 4, 2012, in which the email states as follows:
`
`1 “Dear David J. Cook,
`
`We are in receipt of your online complaint regarding the domain
`COOKLEGALSERVICES.INFO. Although that domain name is registered
`through Go Daddy, at the time of our review there was only a parked page (and no
`' live website) associated with the domain. In response to your complaint, we have
`. instituted a change that will remove all advertisements appearing on the parked
`page. Please allow 48 hours for propagation, at which time the parked page will
`appear with a generic "page not available" message.
`
`If you have a complaint about the issue of ownership or wording of the domain
`name itself (as opposed to the content hosted on the associated website), that matter
`will need to be taken up with the domain name owner directly, or should be filed in
`a UDRP or court proceeding. Our internal policies, as well as ICANN regulations,
`prevent us from acting as the arbiter of domain name disputes; we are only able to
`assist with complaints about trademark infringement that may occur in the viewable
`content of a hosted website (as opposed to the wording of the domain name
`registered).
`
`At Go Daddy, we are committed to assisting intellectual property owners in taking
`action against IP infringement. Please let us know if you have any other questions.
`
`Thank you,
`Ryan S.
`Domain Services
`
`GoDaddy.com, LLC”
`(Attached hereto marked Exhibit “A. ”)
`
`

`
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`II. WHAT THIS MEANS.
`
`GoDaddy provides two types of services: "domain registration" and "web hosting."
`
`Registration is like when the phone company assigns you a phone number. Hosting is like when
`
`you rent storage space.
`
`WEB HOSTING
`
`GoDaddy has deleted any and all data connected to "cooklegalservices.info" - including its
`
`own ads. Basically, Smith had rented a storage locker from GoDaddy and GoDaddy has padlocked
`
`it shut and taken all markings off the locker - even its own "Choose GoDaddy" ad.
`
`The current site shows the following results, attached hereto marked Exhibit “B. ”
`
`III. NO STANDING.
`
`Petitioner has filed a separate Petition to Cancel the trademark of COOK for Cook
`
`Collection Attorneys, on the basis that Petitioner seeks to register
`
`COOKLEGALSERVICES.COM without fear of a lawsuit for cybersquatting. This alleged fear or
`
`supposed injury allegedly creates standing. GoDaddy now refuses to proceed with the posting of
`
`this website, and moreover, will remove all advertising appearing on the parked page. In short,
`
`COOKLEGALSERVICES.COM cannot be used, in light of the Complaint filed by Cook
`
`Collection Attomeys.
`
`Petitioner has no standing, given the end of COOKLEGALSERVICES.COM as an
`
`effective website. As previously argued, standing is a requisite to any Petition to Cancel, all of
`
`which is set more particularly in the prior filed motions. Therefore, the Petition to Cancel the
`
`COOK Trademark would necessarily be denied.
`
`Petitioner has not withdrawn either Petition to Cancel, in light of the obvious lack of
`
`standing. Both Petitions are now prosecuted without probable cause and brought maliciously.
`
`Given that GoDaddy declines to host COOKLEGALSERVICES.COM, the continued prosecution
`
`of that_Petition is necessarily in bad faith, and moreover, represents another element of malicious
`
`prosecution.
`
`The California courts now make it clear that the continued prosecution of a meritless action
`
`is independently actionable, despite the alleged probable cause at the initiation of the action. In
`
`-2-
`
`

`
`1 Zamos‘ v. Stroud (2004) 32 Cal.4th 958, 969-70 [12 Cal.Rptr.3d 54, 63, 87 P.3d 802, 809-10], the
`
`court stated as follows:
`
`. Continuing an action one discovers to be baseless hanns the defendant and
`“. .
`burdens the court system just as much as initiating an action known to be baseless
`from the outset. (See 1 Harper et al., The Law of Torts (3d ed.1996) § 4.3, p. 4:13
`[“*Clearly, it is as much a wrong against the victim and as socially or morally
`unjustifiable to take an active part in a prosecution after knowledge that there is no
`factual foundation for it, as to instigate such a proceeding in the first place”*].) As
`the Court of Appeal in this case observed, “*It makes little sense to hold attorneys
`accountable for their knowledge when they file a lawsuit, but not for their
`knowledge the next day.”*
`
`Moreover, as the Court of Appeal went on to point out, “*Holding attorneys liable
`for the damages a party incurs as a result of the attorneys prosecuting civil claims
`afier they learn the claims have no merit also will encourage voluntary dismissals of
`meritless **8l0 claims at the earliest stage possible. Because *970 an attorney will
`,. be liable only for the damages incurred from the time the attorney reasonably
`should have caused the dismissal of the lawsuit afler learning it has no merit, an
`.~_.§ attorney can avoid liability by promptly causing the dismissal of, or withdrawing as
`attorney in, the lawsuit.”
`
`Petitioner has not withdrawn either Petition, and seeks to continue the same. This court
`
`should construe Petitioner’s campaign of continuing damage and injury as strong evidence of his
`
`malevolence directed against Respondent. The court may conclude that the sole purpose of these
`
`two Petitions is to vex and injure the Respondent in an attempt to compel him to leave the
`
`engagement with Entrepreneur Media, Inc., less Respondent suffers more expense and effort.
`
`Petitioner has somewhat succeeded in running up an expense, given these expenses as set
`
`forth below:
`
`' $275 Registration of Cook Legal Services TM
`', $275 Registration of Squeeze Blood From Turnip TM
`’ $4.95 Service of Motion to Dismiss under Rule l2(b)(6) in connection with Smith Petition
`to Cancel SqueezeBloodFromTumip.comTM
`$4.95 Service of Motion to Dismiss under Rule 12(b)(6) in connection with Smith Petition
`to Cancel CookTM
`
`tra e
`
`$2310 Signage reading Cook Legal Services for front and back of office to show usage in
`$59 Fje to Pitney Bowes to change printer readout to "Cook Legal Services" to show usage
`
`in tra e
`
`Total $848.90
`
`IV. CONCLUSION.
`
`Petitioner registered a website with GoDaddy probably at a marginal or no cost. Based
`
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`upon that marginal filing, he has now launched an attack on the trademark of COOK for Cook
`
`-3-
`
`

`
`Collection Attorneys. He has also launched a Petition to Cancel SqueezeB1oodFromTumip as a
`
`trademark for T-shirts. Petitioner has not the slightest standing for—eithér"one oft - ~ r
`
`“ etitions.
`
`January 4, 2012
`
` DATED:
`
`F:\USERS\DJCNEW\cook tradernarksupp mpal
`
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`il
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`

`
`CERTIFICATE OF SERVICE
`
`SCOTT R. SMITH
`
`5714 Folsom Blvd., Suite 140
`Sacramento, CA 95819
`
`I declare:
`
`I am employed in the County of San Francisco, California. I am over the age of eighteen
`(18) years and not a party to the within cause. My business address is 165 Fell Street, San
`Francisco, CA 94102. On the date set forth below, I served the attached:
`
`COOK COLLECTION ATTORNEYS, P.L.C.’S SUPPLEMENTAL
`MEMORANDUM IN SUPPORT OF MOTION TO DISMISS PETITION TO
`CANCEL, AND MOVE FOR ENTRY OF PREFILING ORDER AND OTHER
`RELIEF
`
`DECLARATION OF DAVID J. COOK, ESQ. IN SUPPORT OF SUPPLEMENTAL
`MEMORANDUM IN SUPPORT OF MOTION TO DISMISS PETITION TO
`CANCEL, AND MOVE FOR ENTRY OF PREFILING ORDER AND OTHER
`RELIEF
`
`on the above-named person(s) by:
`
`XXX (BY MAIL) Placing a true copy thereof, enclosed in a sealed envelope with postage
`thereon fully prepaid, in the United States mail at San Francisco, California, addressed to the
`person(s) served above.
`
`declare under penalty of perjury that the foreg'ng' s ’eand correct.
`
`Executed on January 5, 2012 at San Francis
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SCOTT R. SMITH, an individual,
`
`Petitioner,
`
`VS.
`
`COOK COLLECTION ATTORNEYS,
`P.L.C., a California corporation,
`
`Respondent.
`
`\Jé%/\/%§/%%/\/%\/
`
`Cancellation No. 92054966
`Registration No. 3257604
`
`DECLARATION OF DAVID J. COOK, ESQ. IN SUPPORT OF SUPPLEMENTAL
`MEMORANDUM IN SUPPORT OF MOTION TO DISMISS PETITION TO CANCEL,
`AND MOVE FOR ENTRY OF PREFILING ORDER AND OTHER RELIEF
`
`1, DAVID J. COOK, hereby declare and state as follows:
`
`1.
`
`I am the Respondent in the above-entitled action, am duly authorized to practice before
`
`all courts in the State of California, and am familiar with the facts and circumstances in this action.
`
`2. Petitioner filed a Complaint with GoDaddy.com. In response, GoDaddy has taken
`
`action, pursuant to its email of January 4, 2012, in which the email states as follows:
`
`“Dear David J. Cook,
`
`We are in receipt of your online complaint regarding the domain
`COOKLEGALSERVICES.INFO. Although that domain name is registered through
`Go Daddy, at the time of our review there was only a parked page (and no live
`website) associated with the domain. In response to your complaint, we have
`instituted a change that will remove all advertisements appearing on the parked
`page. Please allow 48 hours for propagation, at which time the parked page will
`appear with a generic "page not available" message.
`
`If you have a complaint about the issue of ownership or wording of the domain
`name itself (as opposed to the content hosted on the associated website), that matter
`will need to be taken up with the domain name owner directly, or should be filed in
`a UDRP or court proceeding. Our internal policies, as well as ICANN regulations,
`prevent us from acting as the arbiter of domain name disputes; we are only able to
`assist with complaints about trademark infringement that may occur in the viewable
`content of a hosted website (as opposed to the wording of the domain name
`registered).
`
`At Go Daddy, we are committed to assisting intellectual property owners in taking
`action against IP infringement. Please let us know if you have any other questions.
`Tharflc you,
`Ryan S.
`Domain Services
`
`
`
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`
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`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`GoDaddy.com, LLC”
`
`Attached hereto marked Exhibit “A” is a true and correct copy of that email.
`
`3. GoDaddy provides two types of services: "domain registration" and "web hosting."
`
`Registration is like when the phone company assigns you a phone number. Hosting is like when
`
`you rent storage space.
`
`WEB HOSTING
`
`GoDaddy has deleted any and all data connected to "cooklegalservices.info" - including its
`
`own ads. Basically, Smith had rented a storage locker from GoDaddy and GoDaddy has padlocked
`
`it shut and taken all markings off the locker - even its own "Choose GoDaddy" ad.
`
`The current site shows the following results, a true and correct copy w '
`vf//’/
`
`marked Exhibit “B. ”
`
`,4
`of the State of California th
`
`foregoing is true and correct.
`Executed on January 4, 2012 at San Francisco, Ca1iforr_1_‘i_a...v-"“
`
`F:\USERS\DJCNEW\cook trademarksupp mpal
`
` I declare under penalty ofperjury under the
`
`

`
`EXHIBIT “A”
`
`

`
`Matthew Baron
`
`Page 1 of 1
`
`From:
`Date:
`To:
`Subject:
`
`"David J. Cook" <davidcook@cookco||ectionattorneys.com>
`Wednesday, January 04, 2012 8:37 AM
`“Matthew Baron"' <mbaron@cookcol|ectionattorneys.com>
`FW: COOKLEGALSERVlCES.lNFO
`
`From: trademarkclaims@godaddy.com [maiIto:trademarkclaims@godaddy.com]
`Sent: Wednesday, January 04, 2012 6:39 AM
`To: Cook@SqueezeB|oodFromTurnip.com
`Subject: CO0KLEGALSERVICES.INFO
`
`Dear David J. Cook,
`
`We are in receipt of your online complaint regarding the domain COOKLEGALSERVlCES.lNFO.
`
`Although that domain name is registered through Go Daddy, at the time of our review there
`was only a parked page (and no live website) associated with the domain.
`In response to your
`complaint, we have instituted a change that will remove all advertisements appearing on the
`parked page. Please allow 48 hours for propagation, at which time the parked page will appear
`with a generic "page not available" message.
`
`If you have a complaint about the issue of ownership or wording of the domain name itself (as
`opposed to the content hosted on the associated website), that matter will need to be taken up
`with the domain name owner directly, or should be filed in a UDRP or court proceeding. Our
`internal policies, as well as ICANN regulations, prevent us from acting as the arbiter of domain
`name disputes; we are only able to assist with complaints about trademark infringement that
`may occur in the viewable content of a hosted website (as opposed to the wording of the
`domain name registered).
`
`At Go Daddy, we are committed to assisting intellectual property owners in taking action
`against IP infringement. Please let us know if you have any other questions.
`
`Thank you,
`
`Ryan 5.
`Domain Services
`
`GoDaddy.com, LLC
`
`1/4/2012
`
`

`
`

`
`nll.p.IlUUUluvbw.—
`
`infl
`
`1/4/2012 5:34 PI
`
`

`
`CERTIFICATE OF SERVICE
`
`SCOTT R. SMITH
`
`5714 Folsom Blvd., Suite 140
`Sacramento, CA 95819
`
`I declare:
`
`I am employed in the County of San Francisco, California. I am over the age of eighteen
`(18) years and not a party to the within cause. My business address is 165 Fell Street, San
`Francisco, CA 94102. On the date set forth below, I served the attached:
`
`COOK COLLECTION ATTORNEYS, P.L.C.’S SUPPLEMENTAL
`MEMORANDUM IN SUPPORT OF MOTION TO DISMISS PETITION TO
`CANCEL, AND MOVE FOR ENTRY OF PREFILING ORDER AND OTHER
`RELIEF
`
`DECLARATION OF DAVID J. COOK, ESQ. IN SUPPORT OF SUPPLEMENTAL
`MEMORANDUM IN SUPPORT OF MOTION TO DISMISS PETITION TO
`CANCEL, AND MOVE FOR ENTRY OF PREFILING ORDER AND OTHER
`RELIEF
`
`on the above-named person(s) by:
`
`i){:___ (BY MAIL) Placing a true copy thereof, enclosed in a sealed envelope with postage
`thereon fully prepaid, in the United States mail at San Francisco, California, addressed to the
`person(s) served above.
`
`“I declare under penalty of perjury that the foregoing i
`
`true and correct.
`
`Executed on January 5, 2012 at San Franciso
`
`\