Petroliam Nasional Berhad v. GoDaddy.com, Inc.

Filing 191

REPLY (re 189 MOTION for Bill of Costs --Review of Clerk's Action Under Fed. R. Civ. P. 54(d)(1) ) filed byPetroliam Nasional Berhad. (Attachments: # 1 Declaration of Perry Clark)(Clark, Perry) (Filed on 5/2/2012) Modified on 5/3/2012 (vlk, COURT STAFF).

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PERRY R. CLARK, State Bar No. 197101
LAW OFFICES OF PERRY R. CLARK
825 San Antonio Road
Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorney for Plaintiff
PETROLIAM NASIONAL BERHAD (PETRONAS)

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

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PETROLIAM NASIONAL BERHAD
(PETRONAS),
Plaintiff,

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vs.

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GODADDY.COM, INC.,
Defendant.

CASE NO: 09-CV-5939 PJH (MEJ)

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REPLY CLARK DECL.
Case No. 09-CV-5939 PJH (MEJ)

Noticed Hearing Date: May, 16, 2012
Noticed Hearing Time: 9:00 a.m.
DECLARATION OF PERRY R. CLARK IN
SUPPORT OF PLAINTIFF’S REPLY
BRIEF ON ITS MOTION UNDER FED. R.
CIV. P. 54(D)(1) FOR THE COURT TO
REVIEW THE CLERK’S ACTION
TAXING COSTS

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I, Perry Clark, declare:
1. I am an attorney admitted to practice law before this Court and the attorney for

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Plaintiff Petroliam Nasional Berhad (PETRONAS). I have personal knowledge of the

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facts set forth in this declaration.

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2.

Attached hereto as Exhibit 1 is a true and correct copy of an order from the United

States Patent and Trademark Office Trademark Trial and Appeal Board dated June 7, 2011.
I declare under penalty of perjury that the foregoing is true and correct. Executed in Palo
Alto, California on May 2, 2012.

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By:

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REPLY CLARK DECL.
Case No. 09-CV-5939 PJH (MEJ)

/s/ Perry Clark
Perry Clark

Ex. 1
(Order from the United States
Patent and Trademark Office
Trademark Trial and Appeal
Board dated June 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

Mailed:

June 7, 2011

Cancellation No. 92052714
GoDaddy.com, Inc.
v.
Petroliam Nasional Berhad

George C. Pologeorgis,
Interlocutory Attorney:
By order dated May 25, 2011, the Board granted, in
part, and denied, in part, petitioner’s combined motion to
compel discovery and test the sufficiency of responses to
requests for admission filed on March 4, 2011.

By the same

order, the Board required the parties to submit copies of
the pleadings in a civil action between the parties in the
United States District Court for the Northern District of
California, Oakland division.1
On May 26, 2011, petitioner filed copies of the
pleadings in the civil action, as requested by the Board.

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Case 4:09-cv-05939, styled Petroliam Nasional Berhad v.
GoDaddy.com, Inc., filed on or about September 29, 2010.

Cancellation No. 92052714
A review of the pleadings in the civil case indicates
that a decision by the district court could be dispositive
of, or have a bearing on, the issues in this proceeding.2
Specifically, the Board notes that respondent (plaintiff in
the civil action) has pleaded ownership of the subject
registration herein and relies on its registration as a
basis for its asserted claims.

The Board additionally notes

that petitioner (defendant in the civil action) has asserted
an affirmative defense contesting the validity of
respondent’s pleaded registration.

Accordingly, since the

validity of respondent’s subject registration is at issue in
the civil action, a decision by the district court may have
a bearing on the issues in this proceeding.3
Accordingly, these proceedings are suspended pending
final disposition of the civil action between the parties,
including all appeals.

Trademark Rule 2.117(a).

Within twenty days after the final determination of the
civil action, the interested party should notify the Board

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Moreover, to the extent that a civil action in a Federal
district court involves issues in common with those in a Board
proceeding, the district court decision would be binding on the
Board, whereas the Board decision is merely advisory to the
district court. See American Bakeries Co. v. Pan-O-Gold Baking
Co., 2 USPQ2d 1208 (D.C. Minn. 1986). Further, Board decisions
are appealable to the district court. See Section 21 of the
Trademark Act, and Goya Foods, Inc. v. Tropicana Products Inc.,
846 F.2d 848, 6 USPQ2d 1950, at 1953 (2d Cir. 1988).
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The Board further notes that the decision by the district court
may also have a bearing on petitioner’s standing to bring this
action.

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Cancellation No. 92052714
so that this case may be called up for appropriate action.
Upon resumption of these proceedings, if necessary and
appropriate, the Board will set the time in which respondent
must provide responses to the discovery requests compelled
by the Board’s May 25, 2011 order.
During the suspension period the Board should be
notified of any address changes for the parties or their
attorneys.

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