Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1246095
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`Filing date:
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`11/04/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92079541
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Overland Sheepskin Co.
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`JASON R. SYTSMA
`SHUTTLEWORTH & INGERSOLL, PLC
`115 3RD STREET SE
`SUITE 500
`CEDAR RAPIDS, IA 52401
`UNITED STATES
`Primary email: uspto@shuttleworthlaw.com
`Secondary email(s): jrs@shuttleworthlaw.com, kjc@shuttleworthlaw.com
`319-365-9461
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`Other Motions/Submissions
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`Jason R. Sytsma
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`jrs@shuttleworthlaw.com, deanna@shuttleworthlaw.com
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`/Jason R. Sytsma/
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`11/04/2022
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`02153971.PDF(27653 bytes )
`02153941.PDF(232599 bytes )
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`
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`ESTTA Tracking number:
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`ESTTA1246095
`
`Filing date:
`
`11/04/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92079541
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Overland Sheepskin Co.
`
`JASON R. SYTSMA
`SHUTTLEWORTH & INGERSOLL, PLC
`115 3RD STREET SE
`SUITE 500
`CEDAR RAPIDS, IA 52401
`UNITED STATES
`Primary email: uspto@shuttleworthlaw.com
`Secondary email(s): jrs@shuttleworthlaw.com, kjc@shuttleworthlaw.com
`319-365-9461
`
`Other Motions/Submissions
`
`Jason R. Sytsma
`
`jrs@shuttleworthlaw.com, deanna@shuttleworthlaw.com
`
`/Jason R. Sytsma/
`
`11/04/2022
`
`02153971.PDF(27653 bytes )
`02153941.PDF(232599 bytes )
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`OVERLAND SHEEPSKIN CO., INC.
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`Petitioner,
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`v.
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`HILINE PRODUCTIONS, LLC
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`Registrant.
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`Cancellation No. 92079541
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`Registration Nos. 5651690; 5671576;
`5746792; 6053655; 6064856; and 6142313
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`OVERLAND SHEEPSKIN CO., INC.’S
`WITHDRAWAL OF SECOND CONSENTED, MOTION
`FOR LEAVE TO FILE FIRST AMENDED PETITION FOR CANCELLATION
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`Overland Sheepskin Co., Inc., for their withdrawal states the following:
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`1.
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`In filing the second motion to amend (ESTTA 1243703), counsel for Overland
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`reasonably believed that we had obtained the consent of the opposing counsel prior to filing.
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`However, opposing counsel, in filing an opposition to the second motion to amend (ESTTA
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`1244120) have denied that they consented. Whether Hiline consented in the first place is not
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`really dispositive of any claim before the Board.
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`2.
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`To clean up the problem, Overland hereby withdraws the second motion to amend
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`(ESTTA 1243703). This withdrawal renders moot the arguments in ESTTA 1244120 about
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`whether or not it was reasonable for Overland’s counsel to believe that it had obtained the
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`consent of HiLine’s counsel for the second motion amend.
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`3.
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`Overland plans to file a third motion for leave to amend which will allow HiLine
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`to more cleanly state their objections to the proposed amendment on substantive grounds.
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`4.
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`This withdrawal is by no means an admission of wrongdoing. Counsel for
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`Overland reasonably believed if had consent because Hiline consented on the first motion to
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`amend (ESTTA 1243042, filed Friday October 21), and the only change that made in the second
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`motion to amend (ESTTA 1243703, filed Tuesday October 25) was the correction of an error.
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`Overland is attaching to this filing the professional statement of counsel Jason Sytsma explaining
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`his good-faith belief that Overland had obtained consent. However, this dispute about consent
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`does not need to be resolved in order to proceed as suggested.
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`WHEREFORE, Overland requests that the Board enter an order to the effect that
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`opposition to the second motion to amend has been rendered moot by the withdrawal of that
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`/s/Jason R. Sytsma
`Jason R. Sytsma
`Kevin J. Caster
`SHUTTLEWORTH & INGERSOLL, PLC
`P.O. Box 2107
`Cedar Rapids, IA 52406
`Tel.: (319) 365-9461
`Fax: (319) 365-8443
`jrs@shuttleworthlaw.com
`kjc@shuttleworthlaw.com
`Attorneys for Overland Sheepskin Co., Inc.
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`CERTIFICATE OF SERVICE
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`motion.
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`Copies to:
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`Toni Tease
`Leif Johnson
`PO Box 1902
`Billings, MT 59103
`toni@teaselaw.com
`leifjohnsonlaw@gmail.com
`Attorneys for Hiline Productions, LLC
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`2
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` The undersigned hereby certifies that a copy of
`this document was served upon counsel of record
`for each party to the action on November 4, 2022,
`by: email to toni@teaselaw.com and
`leifjohnson@gmail.com
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`
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`
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`/s/Deanna Rodman
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`OVERLAND SHEEPSKIN CO., INC.
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`Petitioner,
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`v.
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`HILINE PRODUCTIONS, LLC
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`Registrant.
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`)
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`Cancellation No. 92079541
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`Registration Nos. 5651690; 5671576;
`5746792; 6053655; 6064856; and 6142313
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`PROFESSIONAL STATEMENT OF COUNSEL JASON SYTSMA REGARDING
`OVERLAND SHEEPSKIN CO., INC.’S SECOND MOTION TO AMEND
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`Jason Sytsma, as counsel for Petitioner Overland Sheepskin Co., Inc. (“Overland”),
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`submits the following professional statement about Overland’s motions to Amend the Petition:
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`I am a Registered Patent Attorney and Senior Vice President at Shuttleworth & Ingersoll
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`in Iowa. I have practiced continuously at Shuttleworth since 2008, after I received a J.D. from
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`University of New Hampshire School of Law.
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`I represent Petitioner, Overland Sheepskin Co., Inc., in this and other Cancellation
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`actions. I would like to explain why I genuinely believed that I had the consent from opposing
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`counsel to file a second Motion to Amend the Petition in the present matter. Since I was wrong
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`about opposing counsel’s consent, I have withdrawn the motion the filing to which this statement
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`is attached. These are the facts in chronological order:
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`On April 24, 2022, Overland filed a Petition of Cancellation in this matter naming certain
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`trademark Registrations held by Hiline.
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`On Monday October 17, 2022, Overland filed a second Petition of Cancellation naming
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`different Registrations held by Hiline. Overland alleged, inter alia, that the Hiline marks were
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`“merely descriptive.” Hiline refers to itself as “Expedition Overland” or “X Overland.” One of
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`the allegations is meant to be that the letter “X” in the trademark “X Overland” is a substitute for
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`the word “Expedition,” both of which are merely descriptive of Hiline’s goods and services.
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`Unfortunately, I mistakenly and repeatedly typed the word “exhibition” when I meant to type the
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`word “expedition.” I just confused the two words.
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`Also on Monday October 17, 2022 I explained to opposing counsel that Overland’s goal
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`was to consolidate the two actions, and I asked for consent to amend the Petition in the first
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`action to match the allegations of mere descriptiveness in the second action. I then sent opposing
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`counsel an advance copy of the proposed amendment to the Petition (in the first matter) along
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`with the motion to consolidate. For the proposed amendment, I copied the “merely descriptive”
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`allegations from the Petition in the second matter, including the mistaken use of the word
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`“exhibition.” Opposing counsel consented to both motions.
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`On Thursday October 20, 2022, the Board filed the Notice of Institution in the second
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`action.
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`Also on Thursday October 20, 2022, Hiline filed a Motion to Dismiss part of the Petition
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`in the second action. That motion quoted the phrase “Exhibition Overland” from the Petition in
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`the second action. While opposing counsel had the right to file the motion to dismiss on the same
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`day the proceeding was instituted, I think it is fair to characterize that timing as aggressive.
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`On Friday October 21, 2022 I filed the (first) motion to amend the Petition in this, the
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`first action, together with a motion to consolidate the two cases. At that point I was still unaware
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`of my mistake because I had not yet reviewed Hiline’s Motion to Dismiss.
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`2
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`Also on Friday October 21, 2022, the Board entered an Order suspending proceedings not
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`germane to the motion to dismiss in the second matter.
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`On Sunday October 23, 2022, I read the Hiline Motion to Dismiss and I saw my error.
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`On Monday, October 24, 2022, I wrote opposing counsel in an email: “My 2nd Petition
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`to cancel and the 1st amended petition both contain an embarrassing typos that caught your
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`attention. Obviously, this was a typographical error given that I even misspelled your client’s
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`own trademarks.” I asked whether the Registrant would be willing to withdraw its Motion to
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`Dismiss in the second case while preserving its right to refile so that we could correct the error.
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`Opposing counsel declined to withdraw the Motion.
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`On Tuesday October 25, 2022 we filed an amended Petition in the second action as
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`permitted under the rule for amendments within 21 days. The amendment only corrected the
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`word “expedition.” We also filed a notice that the amended Petition was germane to the motion
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`to dismiss.1
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`Also on October 25, 2022, we filed the second motion to amend the Petition the first
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`action. In the second Motion to Amend, I stated that we had the consent of the opposing counsel
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`to file the amendment to the Petition.
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`On October 26, 2022, Hiline filed and Opposition to the second Motion to Amend. In
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`their Opposition, opposing counsel denied having consented to the second Motion to Amend and
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`accused us of a “lack of candor.”
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`I believed that I had opposing counsel’s consent to file the Motion to Amend based on the
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`October 17 conversation detailed above. It simply did not occur to me that their consent had been
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`1 We are also fling a Resistance to the Motion to Dismiss in the first action.
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`3
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`revoked, or would be withheld or denied simply because I corrected the error that I had informed
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`them of on Monday October 24.
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`The only difference between those amendments was that I changed “exhibition” to
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`“expedition” in nine places. Otherwise, both versions of the amendment contained the same
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`additional “Count II: The Hiline Registrations are Merely Descriptive” supported by the same
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`paragraphs 24-42, and the same prayer for relief. Literally the only word that the opposing
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`counsel does not now consent to is the word “expedition.”2
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`I genuinely and reasonably believed that opposing counsel consented to the amendment.
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`Indeed, the opposition to the correcting the error is objectively unreasonable. I did not foresee
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`the unpredictable opposition to correcting a mistake. Instead, I reasonably expected that
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`opposing counsel would respond to the new claim on a substantive level by filing a responsive
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`pleading kind of like they had already done in the other action.
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`I apologize to the Board and to counsel for making a mistake in confusing two different
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`words. As I said to counsel in my October 24 email it is “embarrassing.” However, I am reluctant
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`to apologize for representing that the opposing counsel consented to the amendment. Their
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`withdrawal of that consent is within their right, but having already consented to everything
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`except the correction of the word “expedition.” I see no point in asking the board to determine
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`which lawyer is being genuine, so I simply withdraw the motion.
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`2 In Overland’s Resistance to Hiline’s Motion to Dismiss, we set forth the allegations that Hiline uses the phrase
`“Expedition Overland” centrally and repeatedly to describe its source, customers, and goods and service.
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`4
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`/s/Jason R. Sytsma
`Jason R. Sytsma
`Kevin J. Caster
`SHUTTLEWORTH & INGERSOLL, PLC
`P.O. Box 2107
`Cedar Rapids, IA 52406
`Tel.: (319) 365-9461
`Fax: (319) 365-8443
`jrs@shuttleworthlaw.com
`kjc@shuttleworthlaw.com
`Attorneys for Overland Sheepskin Co., Inc.
`
`CERTIFICATE OF SERVICE
`
`
` The undersigned hereby certifies that a copy of
`this document was served upon counsel of record
`for each party to the action on November 4, 2022,
`by: email to toni@teaselaw.com and
`leifjohnson@gmail.com
`
`
`
`
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`
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`/s/Deanna Rodman
`
`
`
`
`
`
`
`
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`
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`Copies to:
`
`Toni Tease
`Leif Johnson
`PO Box 1902
`Billings, MT 59103
`toni@teaselaw.com
`leifjohnsonlaw@gmail.com
`Attorneys for Hiline Productions, LLC
`
`
`
`5
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`
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