Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA760541
`
`Filing date:
`
`07/26/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92061215
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Schiedmayer Celesta GMBH
`
`MICHAEL J STRIKER
`STRIKER STRIKER & STENBY
`103 EAST NECK RD
`HUNTINGTON, NY 11743
`UNITED STATES
`striker@strikerlaw.com
`
`Opposition/Response to Motion
`
`Michael J. Striker
`
`striker@strikerlaw.com
`
`/Michael J. Striker/
`
`07/26/2016
`
`Attachments
`
`SKMBT_42116072613280.pdf(415549 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA760541
`
`Filing date:
`
`07/26/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92061215
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Schiedmayer Celesta GMBH
`
`MICHAEL J STRIKER
`STRIKER STRIKER & STENBY
`103 EAST NECK RD
`HUNTINGTON, NY 11743
`UNITED STATES
`striker@strikerlaw.com
`
`Opposition/Response to Motion
`
`Michael J. Striker
`
`striker@strikerlaw.com
`
`/Michael J. Striker/
`
`07/26/2016
`
`Attachments
`
`SKMBT_42116072613280.pdf(415549 bytes )
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE-
`
`BEFORE THE TRADEMARK TRIAL & APPEAL BOARD
`
`Schiedmayer Celesta GmbH,
`
`Petitioner,
`
`v
`
`Piano Factory Group, Inc.,
`
`Respondent.
`
`VVVVVVVVVV
`
`Cancellation No. 92/061,215
`Reg. No. 3,340,759
`Mark: SCHIEDMAYER
`
`Registration Date: 11/20/2007
`
`PETITIONER’S MEMORANDUM IN OPPOSITION TO RESPONDENT’S PETITION TO
`
`DISQUALITY PETITIONER’S COUNSEL MICHAEL J. STRIKER OF STRIKER,
`STRIKER & STENBY
`
`Respondent, Piano Factory Group,
`
`Inc.
`
`(Respondent) has moved to '
`
`disqualify Michael J. Striker (herewith referred to as “Striker” or as the “undersigned”)
`
`from serving as counsel for Petitioner, Schiedmayer Celesta GmbH.
`
`Petitioner herewith responds to the Motion to Disqualify Michael J. Striker
`
`as follows:
`
`PREAMBLE
`
`On July 22, 2016 Petitioner filed a Motion for Summary Judgement based
`
`upon the fact that at all times relevant hereto, Respondent, Piano Factory Group, Inc.
`
`was and is a suspended corporation not entitled to do business of any kind.
`
`
`
`Accordingly, Respondent’s Motion to Disqualify should be given no
`
`consideration, as it is being filed by a suspended entity not entitled to defend itself and
`
`not entitled to do business.
`
`Nevertheless, Petitioner sets forth below the reasons why Respondent’s
`
`Motion to Disqualify is in any event frivolous and without merit:
`
`FACTS
`
`The pertinent facts are the following:
`
`On April 17, 2015, Schiedmayer Celesta GmbH,
`
`the Petitioner herein,
`
`caused to be filed U.S. Trademark Application Serial No. 86/600,864 for the mark
`
`SCHIEDMAYER. The application'was filed in the name of the Applicant, Schiedmayer
`
`Celesta GmbH. Striker was and is the attorney of record. The subject trademark
`
`application alleged a date of first use of 1860.
`
`in an Office Action dated July 14, 2015, the Examiner refused registration
`
`in view of existing registration No. 3,340,759 owned by Piano Factory GroUp, lnc., also
`
`for the mark SCHIEDMAYER. The Examiner then suspended prosecution.
`
`Thereafter, Schiedmayer Celesta GmbH, caused to be filed the subject
`
`Petition for Cancellation, No. 92/061,215, which seeks to cancel
`
`the conflicting
`
`
`
`trademark registration No. 3,340,759.
`
`Striker was and is acting as attorney for
`
`Petitioner.
`
`At all times Striker has acted only as Attorney for Schiedmayer Celesta
`
`GmbH. Striker has no independent knowledge whatsoever of any facts relating to this
`
`proceeding. Any such facts are within the knowledge of Elliane Schiedmayer, President
`
`of the Petitioner.
`
`Respondent now seeks to disqualify Striker as counsel for Schiedmayer
`
`Celesta GmbH with respect to Cancellation'No. 92/061,215.
`
`SUMMARY OF RESPONDENT’S ARGUMENT
`
`It
`
`is
`
`frankly difficult
`
`to clearly comprehend exactly what position
`
`Respondent is taking.
`
`‘ Stripped of its verbiage, Respondent appears to argue as follows:
`
`Striker caused to be filed as attorney for Schiedmayer Celesta GmbH,
`
`Trademark Serial No. 86/600,864. The said trademark application alleges a date of first
`
`use of 1860.
`
`
`
`Ergo, Striker, having filed the subject trademark application as attorney for
`
`Schiedmayer Celesta GmbH, has some knowledge as to the allegation of a first use
`
`date of 1860.
`
`For unexplained reasons, Respondent also refers
`
`to a trademark
`
`application filed by a totally different justice entity, some 32 years ago, claiming a first
`
`use date of 1960. Striker has never had anything whatsoever to do with the application
`
`filed 32 years ago.
`
`As best understood, Respondent appears to argue that Striker, having
`
`signed Trademark Application Serial Number 86/600,864 (which is not even involved in
`
`this Petition for Cancellation), somehow has become a necessary witness, and should
`
`therefore be disqualified.
`
`ARGUMENT
`
`It is believed that Respondent’s Motion is governed by Section 11.307(a)
`
`of the USPTO Rules of Professional Conduct, 37 CFR 11.307(a). This section sets for
`
`the following:
`
`(a) A practitioner shall not act as advocate at a proceeding
`before a Tribunal in which a practitioner is likely to be a
`
`necessary witness unless:
`
`1. Testimony relates to an uncontested issue;
`2. The testimony relates to the nature and value of legal
`services rendered in the case; or
`
`3. Disqualification
`
`of
`
`the
`
`practitioner would work
`
`substantial hardship on the client.
`
`4
`
`
`
`By way of background,
`
`it
`
`is noted that
`
`in determining whether or not
`
`disqualification is required, the first consideration is whether the attorney is a necessary
`
`witness, and second is,
`
`if necessary, does that attorney meet a listed exception. See:
`
`INTS It is Not The Same GmbH v Dis/dual Clothing, LLC, Opposition No. 91212768
`
`(March 28, 2015).
`
`An attorney will be considered a necessary witness where no other person
`
`is available to testify in his place. See: Northbrook Digital, LLC v Vendio Servs., Inc.,
`
`625 F. Supp. 2d 728,765 (D. Minn. 2008).
`
`A necessary witness is one who offers evidence that is not available from
`
`another source. See: Horaist v. Doctors Hosp. of Ope/ousas, 255 F. 3d 261, 267 (,5th
`
`Cir. 2001).
`
`An Attorney May Sign Verifications on Behalf of an Applicant or Registrant
`
`Respondent appears
`
`to be
`
`laboring under
`
`the patently incorrect
`
`assumption that because Striker signed the trademark application alleging a date of first
`
`use of 1860, that for some reason this makes Striker a witness in connection with the
`
`Petition for Cancellation.
`
`An excellent summary on this subject may be found in the decision of
`
`Judge Cheryl Butler, Senior Counsel, Trademark Trial and Appeal Board, at INTS It is
`
`
`
`Not The Same GmbH v Disic’ua/ Clothing, LLC, Opposition No. 91212768 (March 28,
`
`2015)
`
`For convenience, it is paraphrased below:
`
`“The USPTO clearly permits an attorney to sign the
`verification (e.g., a Declaration) in support of an application,
`and other specified filings, on behalf of
`the applicant.
`Indeed,
`it
`is common for attorneys to do so. The mere
`signing of the Declaration does not make an attorney a
`necessary witness...
`
`aforementioned
`signed the
`[Striker]
`While Mr. Egbert
`documents on behalf of his client, he has not created a
`circumstance where he alone would need to testify to the
`contents of
`those documents...Mr. Egbert
`[Striker] was
`merely a permitted signatory...thus, Mr. Egbert [Striker] is
`not a necessary witness.” INTS ,It is Not The Same GmbH v
`' Disidua/ Clothing, LLC, Opposition No. 91212768 (March 28,
`2015).” (Emphasis supplied)
`
`Evidence as to First Use is Readily Available to Respondent
`
`Respondent admits at the bottom of page 5 of itsMotion that Striker is not
`
`a necessary witness:
`
`“This is particularly so since the only person indicated in
`Petitioner’s Response to Interrogatory 38 other than Mr.
`Striker as having personal knowledge of the facts is Ellianne
`Schiedmayer, a national of Germany.
`It Respondent
`is
`permitted under the laws of Germany to depose her at all,
`it
`will only be by written questions under the procedure in
`TBMP Section 404.03(b)...[lf Striker were to testify]...it
`would speed the discovery process, avoid issues caused by
`language barriers, and enable Respondent to adequately
`prepare its defense in this case.”
`— Respondent’s Motion, page 5
`
`
`
`Put another way, and somewhat more bluntly, Respondent is simply too
`
`lazy to utilize the well—known and perfectly adequate provisions of TBMP Section 404
`
`relating to the deposing on written questions Of a foreign national.
`
`Not only is Striker not a necessary witness; Striker is not an appropriate
`
`witness. A witness is easily available to Respondent, namely, Elliane Schiedmayer. it is
`
`4
`
`again emphasizedthat Striker has no independent knowledge whatsoever as to facts
`
`and at all times was merely acting as Attorney for the Applicant/Petitioner.
`
`RESPONDENT’S COUNSEL IS ENGAGING IN ABUSIVE TACTICS
`
`Respondent’s counsel, Adam R. Stephenson,
`
`is engaging in abusive
`
`litigation tactics through the filing of this plainly frivolous, nonsensical and demeaning
`
`Motion to Disqualify.
`
`If an attorney were to be disqualified because s/he signed a new,
`
`trademark application, every attorney ever filing a legal document would be disqualified
`
`from further prosecution. The result is absurd.
`
`Indeed, Stephenson even admits that the person who does have relevant
`
`information, Ellianne Schiedmayer, resides in Germany. Stephenson is simply too lazy
`
`to utilize the, generally accepted discovery procedures relating to written questions in
`
`order to obtain information which Stephenson considers germane.
`
`
`
`To ignore seeking testimony from a witness who does have knowledge
`
`and in the alternative to seek to disqualify counsel who has absolutely no knowledge,
`
`represents nothing less than abusive litigation tactics:
`
`“...as one might expect, Rule 3.7 can encourage abusive
`litigation
`tactics
`where
`opportunistic
`parties
`file
`disqualification motions to interfere with the opposing sides
`choice of counsel.” See eg. Kalmanovitz v. G. Hei/eman
`
`Brewing Co., 610 F. Supp. 1319 (D. Del. 1985) (Motions to
`Disqualify are often disguised attempts to divest opposing
`parties of their counsel of choice)”.
`2
`— Disqualification of Opposing Counsel, American Bar
`Association, Section of Labor and Employment Law
`Committee on Ethics and Professional Responsibility,
`
`2010 Mid—Winter Meeting.
`
`“Restrictions on 3 parties right to select representation by a
`particular attorney should be carefully scrutinized because
`disqualification can be used as a tactic to stall and derail the
`
`proceedings, redounding to the strategic advantage of one
`party over another.”
`
`— Commercial Division Blog, Current Developments
`
`in
`
`Commercial Divisions of New York State Courts, April 11,
`2015.
`
`‘ “Very often, applications to disqualify counsel are merely a
`dilatory tactic. This tactic has been addressed by numerous
`courts who have recognized that disqualification ‘may‘fnot be
`invoked merely to aid as a tool in litigation, sought to gain for
`one party of the other some advantage unrelated to the
`
`merits of the action...a going ploy in the courts is the attempt
`
`to disqualify your legal opponent.”
`— Disqualification of Counsel in New York, Clausen Miller,
`
`September 2003.
`
`“Because disqualification motions have a potential for abuse
`
`' as litigation tactics, disqualification is viewed by Courts as a
`
`
`
`‘drastic measure’
`
`to be imposed only when absolutely
`
`necessary.” (Citing authorities).
`— Lanness K. McKee v. Huntington James, at a/., State of
`
`North Caroline Superior Court Division, 09 CVS 3031,
`
`July 2012.
`
`SUMMARY
`
`Petitioner again refers the Board to its currently pending Motion for
`
`Summary Judgement
`
`filed July 22, 2016.
`
`ln that Motion it
`
`is made clear
`
`that
`
`Respondent
`
`is a suspended Corporation not entitled to defend itself
`
`in a Court
`
`proceeding and not entitledto do business of any kind.
`
`Accordingly, the Respondent’s Motion to Disqualify should be dismissed
`
`on this basis alone.
`
`In any event the Motion to Disqualify is at best frivolous and at worst
`
`interposed for dilatory purposes. It should be forthwith dismissed.
`
`Respectfully submitted,
`
`Attorney for Petitioner
`
`Reg. No.: 27233
`103 East Neck Road
`
`Huntington, New York 11743
`
`
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and complete copy of the attached Memorandum in
`Opposition was served upon counsel for the Respondent:
`
`Adam R. Stephenson, LTD
`
`40 w. Baseline Rd. Ste. 101
`
`Tempe, AZ 85283
`
`Via First Class Mail, this 26th day of July, 2016
`
`Michael J. Striker
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
