FreecycleSunnyvale v. The Freecycle Network

Filing 49

Request for Judicial Notice re 48 MOTION to Dismiss COUNTERCLAIMS filed byFreecycleSunnyvale. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G)(Related document(s) 48 ) (Corgill, Dennis) (Filed on 8/28/2006) Modified on 8/29/2006 (cp, COURT STAFF).

FreecycleSunnyvale v. The Freecycle Network

Doc. 49

Case 4:06-cv-00324-CW

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Filed 08/28/2006

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MAYER, BROWN, ROWE & MAW LLP Ian N. Feinberg (SBN 88324) [e-mail] Dennis S. Corgill (SBN 103429) [e-mail] Eric B. Evans (SBN 232476) [e-mail] Two Palo Alto Square, Suite 300 3000 El Camino Real Palo Alto, CA 94306-2112 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff FREECYCLESUNNYVALE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OAKLAND DIVISION FREECYCLESUNNYVALE, a California unincorporated association, Plaintiff, v. THE FREECYCLE NETWORK, an Arizona corporation, Defendant. Case No. C06-00324 CW REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF COUNTERDEFENDANT FREECYCLESUNNYVALE'S MOTION TO DISMISS COUNTERCLAIMS UNDER FED.R.CIV.P. 12(b)(6); MOTION TO STRIKE STATE-LAW COUNTERCLAIM UNDER CAL. CIV. PROC. § 425.16; AND MOTION TO STRIKE IMMATERIAL ALLEGATIONS UNDER FED.R.CIV.P. 12(f) Date: Time: Before: Location: October 6, 2006 10:00 a.m.. Hon. Claudia Wilken Courtroom 2, 4th Floor

THE FREECYCLE NETWORK, INC., an Arizona Corporation, Counterclaimant, v. FREECYCLESUNNYVALE, a California unincorporated association, Counterdefendant.

REQUEST FOR JUDICIAL NOTICE ISO MOTION TO DISMISS/STRIKE CASE NO. C06-00324 CW
Dockets.Justia.com

Case 4:06-cv-00324-CW

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INTRODUCTION Plaintiff and Counterdefendant FreecycleSunnyvale respectfully requests this Court to take judicial notice of court records from the United States Patent and Trademark Office under FED.R.EVID. 201. In its amended counterclaims, Defendant and Counterclaimant The Freecycle Network, Inc., ("TFN") made allegations regarding the status of its trademark registration application. The Freecycle Network, Inc.'s Answer to Plaintiff;s Amended Complaint and Amended Counterclaims ¶¶ 68, 84 (filed Aug. 8, 2006; Document 46). TFN filed its trademark registration application on August 27, 2004, seeking registration of a logo presenting a stylized version of "freecycle." Trademark/Service Mark Application, Principal Register, Serial No. 78/475,113 (administrative file available at http://www.uspto.gov). This Court should take judicial notice of USPTO records in order to have the benefit of the administrative records to which TFN referred in its amended counterclaims. This Court may take judicial notice of USPTO records pertaining to these applications under FED.R.EVID. 201(b), which permits judicial notice of facts that are not subject to reasonable dispute because those facts are "generally known" or "capable of accurate and ready determination." The public record in the USPTO pertaining to TFN's trademark registration application is not reasonably subject to dispute. In addition, the Ninth Circuit has specifically held that courts "may take judicial notice of records and reports of administrative bodies." Interstate Natural Gas Co. v. southern California Gas Co., 209 F.2d 380, 385 (9th Cir. 1953). See also Transmission Agency of Northern California v. Sierra Pacific Power Co., 295 F.3d 918, 924 n.3 (9th Cir. 2002) (taking judicial notice of FERC decision still subject to administrative and judicial review). Cf. Hoganas AB v. Dresser Industries, 9 F.3d 948, 954 n.27 (Fed. Cir. 1994) (taking judicial notice of patent not in appeal record but referenced at argument); Standard Havens Products, Inc. v. Gencor Industries, Inc., 897 F.2d 511, 514 n.3 (Fed. Cir. 1990) (taking judicial notice of first office action in patent reexamination). REQUEST FOR JUDICIAL NOTICE Appellants respectfully request that this court take judicial notice of the following USPTO administrative records concerning TFN's trademark registration application and
REQUEST FOR JUDICIAL NOTICE ISO MOTION TO DISMISS/STRIKE CASE NO. C06-00324 CW

Case 4:06-cv-00324-CW

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opposition proceeding: (1) TARR Status (equivalent of docket sheet; downloaded on August 28, 2006) (attached to this Request as Exhibit A). (2) TFN's trademark registration application, including specimen and drawing, dated August 27, 2004 (attached to this Request as Exhibit B). (3) Examiner's Amendment of Description of Goods/Services, dated November 22, 2005 (attached to this Request as Exhibit C). (4) Notice of Publication, dated December 28, 2005 (attached to this Request as Exhibit D). (5) TFN's motion to suspend opposition pending disposition of civil action, dated April 28, 2006 (attached to this Request as Exhibit E). (6) FreecycleSunnyvale's statement of no opposition to TFN's motion to suspend, dated May 5, 2006 (attached to this Request as Exhibit F). (7) Notice suspending opposition pending disposition of civil action, dated May 25, 2006 (attached to this Request as Exhibit G).

Dated: August 28, 2006

MAYER, BROWN, ROWE & MAW LLP Ian N. Feinberg Dennis S. Corgill Eric B. Evans

/s/ Dennis Corgill Attorneys for Plaintiff FREECYCLESUNNYVALE By:

44029446.1

-2NOTICE OF MOTION AND MOTION TO DISMISS COUNTERCLAIMS CASE NO. C06-00324 CW