Hangingout, Inc. v. Google, Inc.

Filing 36

REPLY to Response to Motion re 12 MOTION for Preliminary Injunction filed by Hanginout, Inc. (Attachments: # 1 Declaration of Ben L. Wagner In Support of Preliminary Injunction, # 2 Appendix of Exhibits to Declaration of Ben Wagner, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18)(Skale, Andrew) (cge).

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1 2 3 4 5 6 Andrew D. Skale (SBN 211096) askale@mintz.com Justin S. Nahama (SBN 281087) jsnahama@mintz.com MINTZ LEVIN COHN FERRIS GLOVSKY AND POPEO P.C. 3580 Carmel Mountain Road, Suite 300 San Diego, CA 92130 Telephone: (858) 314-1500 Facsimile: (858) 314-1501 Attorneys for Plaintiff HANGINOUT, INC. 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 HANGINOUT, INC., a Delaware corporation, 13 Plaintiff, 14 15 16 17 vs. GOOGLE, INC., a Delaware corporation, Defendant. 18 19 20 Case No. 3:13-cv-02811-AJB-NLS DECLARATION OF BEN WAGNER IN SUPPORT OF REPLY MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF PLAINTIFF HANGINOUT, INC.’ S MOTION FOR PRELIMINARY INJUNCTION Date: April 25, 2014 Time: 2:00pm Dept: 3B The Honorable Anthony J. Battaglia 21 I, BEN WAGNER, DECLARE AS FOLLOWS: 22 1. I am an attorney at law duly licensed to practice before all courts of the 23 State of California and the Southern District of California, and am an associate of the 24 law firm Mintz Levin Cohn Ferris Glovsky and Popeo, PC, attorneys of record for 25 Plaintiffs HANGINOUT, INC. (“Hanginout” or “Plaintiff”). I am readily familiar 26 with the facts in this matter and if called as a witness to testify, could competently do 27 so. 28 1 CASE NO. 3:13-cv-02811- AJB -NLS 1 2. Attached as Exhibit 1 is a true and correct copy of Wayback Machine 2 screen captures retrieved from archive.org on April 4, 2014, depicting Google’s use 3 of “Google + Hangouts” on April 7, 2012, August 19, 2012, and January 31, 2013. 4 “Archive.org” alleges to provide a method of viewing content on a domain page’s 5 webpage as it existed at various points in the past. On information and belief, the 6 website is run by the Internet Archive, a 501(c)(3) non-profit that was founded in 7 1996 to build an Internet library, with the purpose of offerings permanent access to 8 historical collections that exist in digital format. 9 3. Attached as Exhibit 2 is a true and correct copy of printouts of search 10 results from Trademark Electronic Search System (“TESS”), the U.S. Patent and 11 Trademark Office’s (“USPTO”) public online search portal, including status reports 12 for U.S. Ser. Nos. 85704369, 85916384, and 85916316. 13 4. Attached as Exhibit 3 is a true and correct copy of a printout of a 14 Response to Office Action for the “Google+ Hangouts” application (Ser. No. 15 85704369) from tsdr.uspto.gov, the USPTO’s online database for Trademark Trial 16 and Appeal Board (“TTAB”) proceedings. 17 5. Attached as Exhibit 4 is a true and correct copy of a printout of a Notice 18 of Allowance for the “Google+ Hangouts” application (Ser. No. 85704369) from 19 tsdr.uspto.gov, the USPTO’s online database for TTAB proceedings. 20 6. Attached as Exhibit 5 is a true and correct copy of a printout of the 21 Wikipedia.org entry for “Google Hangouts,” retrieved April 4, 2014. Wikipedia is an 22 online encyclopedia. 23 24 25 7. Attached as Exhibit 6 is a true and correct copy of U.S. Reg. No. 3,857,338 for HANGOUT. 8. Attached as Exhibit 7 is a true and correct copy of a December 3, 2012 26 Petition for Cancelation on U.S. Reg. No. 3,857,338 (HANGOUT), retrieved from 27 the USPTO’s online portal for TTAB, ttabvue.uspto.gov. 28 2 CASE NO. 3:13-cv-02811- AJB -NLS 1 9. Attached as Exhibit 8 is a true and correct copy of a Service by 2 Publication in the cancellation proceedings for U.S. Reg. No. 3,857,338, dated March 3 5, 2013, requiring appearance by registrant within 30 days, retrieved from the 4 USPTO’s online portal for TTAB, ttabvue.uspto.gov. 5 10. Attached as Exhibit 9 is a true and correct copy of an April 26, 2013 6 Order by TTAB granting the Petition to Cancel U.S. Reg. No. 3,857,338, retrieved 7 from the USPTO’s online portal for TTAB, ttabvue.uspto.gov. 8 9 10 11 11. Attached as Exhibit 10 is a true and correct copy of a Wayback Machine printout retrieved from archive.org on April 4, 2014, depicting Google’s trademark list as of July 20, 2012. 12. Attached as Exhibit 11 is a true and correct copy of a Wayback Machine 12 printout retrieved from archive.org on April 4, 2014, depicting Google’s trademark 13 list as of April 11, 2013. 14 13. Attached as Exhibit 12 is a true and correct copy of a Wayback Machine 15 printout retrieved from archive.org on April 4, 2014, depicting Google’s trademark 16 list as of April 23, 2013. 17 14. Attached as Exhibit 13 is a true and correct copy of a printout of the 18 Application for U.S. Ser. No. 85674801 from tsdr.uspto.gov, the USPTO’s online 19 database for TTAB proceedings. 20 15. Attached as Exhibit 14 is a true and correct copy of a printout of the 21 Application for U.S. Ser. No. 85674799 from tsdr.uspto.gov, the USPTO’s online 22 database for TTAB proceedings. 23 24 25 16. Attached as Exhibit 15 is a true and correct copy of a printout of App Review, retrieved from developer.apple.com on April 4, 2014. 17. Attached as Exhibit 16 is a true and correct copy of a printout of 26 Apple’s App Store Review Guidelines for review of apps, retrieved from 27 appleinsider.com on April 4, 2014. 28 3 CASE NO. 3:13-cv-02811- AJB -NLS 1 18. Attached as Exhibit 17 is a true and correct copy of a printout of the 2 iTunes Store application profile for Google’s Hangouts, followed by true and correct 3 archive.org printouts for the same page showing 8 previous versions of the app. 4 19. Attached as Exhibit 18 is a true and correct copy of the LegalMetric 5 Nationwide Report on Preliminary Injunctions in Trademark Cases from January 6 1990 through October 2013. 7 8 9 I declare under penalty of perjury under the laws of the United States of America, that the foregoing is true and correct. Executed this 4th day of April, 2014, at San Diego, California. 10 11 12 /s/Ben Wagner BEN WAGNER 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 CASE NO. 3:13-cv-02811- AJB -NLS 1 CERTIFICATE OF SERVICE 2 I, the undersigned, certify and declare that I am over the age of 18 years, 3 employed in the County of San Diego, State of California, and am not a party to the 4 above-entitled action. 5 On April 4, 2014, I filed a copy of the following document: 6 DECLARATION OF BEN WAGNER IN SUPPORT OF REPLY MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF PLAINTIFF HANGINOUT, INC.’ MOTION FOR PRELIMINARY S INJUNCTION 7 8 9 10 by electronically filing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following: Andrew D. Skale askale@mintz.com, adskale@mintz.com, bwagner@mintz.com, Docketing@mintz.com, kasteinbrenner@mintz.com, kjenckes@mintz.com Benjamin L. Wagner bwagner@mintz.com, Docketing@mintz.com, kjenckes@mintz.com Margaret M. Caruso 11 mmc@quinnemanuel.com, calendar@quinnemanuel.com, cherylgalvin@quinnemanuel.com, sherrinvanetta@quinnemanuel.com 12 13 14 15 16 17 Executed on April 4, 2014, at San Diego, California. I hereby certify that I am 18 employed in the office of a member of the Bar of this Court at whose direction the 19 service was made. 20 21 /s/Andrew D. Skale Andrew D. Skale, Esq. 22 23 24 25 26 27 28 27665741v.1 1 CASE NO. 3:13-cv-02811- AJB -NLS

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