Petroliam Nasional Berhad v. GoDaddy.com, Inc.
Filing
95
Declaration of John L. Slafsky in Support of 94 MOTION to Amend/Correct 89 Answer to Amended Complaint -- DEFENDANT'S MOTION FOR LEAVE TO AMEND ANSWER TO ADD COUNTERCLAIM AND ADDITIONAL AFFIRMATIVE DEFENSE -- MOTION to Amend/Correct 89 Answer to Amended Complaint -- DEFENDANT'S MOTION FOR LEAVE TO AMEND ANSWER TO ADD COUNTERCLAIM AND ADDITIONAL AFFIRMATIVE DEFENSE -- -- DECLARATION OF JOHN L. SLAFSKY IN SUPPORT OF DEFENDANT'S MOTION FOR LEAVE TO AMEND ANSWER TO ADD COUNTERCLAIM AND ADDITIONAL AFFIRMATIVE DEFENSE -- filed byGoDaddy.com, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D)(Related document(s) 94 ) (Slafsky, John) (Filed on 6/30/2011)
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.
1
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
2
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).
3
The Board further notes that the decision by the district court
may also have a bearing on petitioner’s standing to bring this
action.
2
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.
3
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