TimesLines, Inc v. Facebook, Inc.

Filing 172

MEMORANDUM by TimesLines, Inc in support of motion in limine 171 No. 9 (Attachments: # 1 Exhibit A)(Van Baren, Bruce)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TIMELINES, INC.
Plaintiff/Counter-Defendant
v.
FACEBOOK, INC.
Defendant/Counter-Plaintiff.

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Civil Action No.: 11 CV 6867
HONORABLE JOHN W. DARRAH
Jury Trial Demanded

TIMELINES’ MEMORANDUM IN SUPPORT OF EMERGENCY MOTION IN LIMINE
NO. 9 TO EXCLUDE EVIDENCE OF TIMELINES’ OTHER TRADEMARK
APPLICATION
Plaintiff Timelines, Inc. (“Timelines”), through its attorneys, Reed Smith LLP, moves
this Court in limine, under Federal Rules of Evidence 401, 402, and 403, to exclude from trial
evidence, testimony, and argument related to Timelines’ other trademark applications. In support
of its Emergency Motion in limine No. 9, Timelines states as follows:
INTRODUCTION
While negotiating the short statement of the case, it became clear to Timelines’ counsel
that Facebook intends to try to introduce evidence at trial (and perhaps in its opening statement)
that Timelines was denied a fourth trademark application. A copy of the USPTO’s September
26, 2011 letter is attached hereto as Exhibit A. Facebook hopes to persuade the jury that because
Timelines was denied one trademark application, Timeline’s three other trademarks—the ones
actually at issue — must also be rejected. In light of Facebook’s arguments that this trial should
not be mini-trials concerning other trademarks, this argument is really an effort to backdoor in
the opinion of an USPTO examiner on the validity of the trademarks. But, the USPTO examiner
did not opine on the three marks at issue, and commentary from the rejected mark would
hopelessly confuse matters. Additionally, this evidence is not relevant for several reasons.

First, the USPTO opinion is not timely, as it is 10 months old and, as the USPTO
examiner explained in Ex. A, trademarks in the computer and electronic fields change rapidly.
Given the amount of time that has passed, there is simply no guarantee that the USPTO’s
decision is still meaningful (or if he would say the same today). That renders Ex. A speculative.
Second, the USPTO examiner included a section in Ex. A entitled “Identification of
Services,” in which he stated that the identification offered was indefinite. This means that the
examiner offered multiple reasons for the rejection. Allowing this evidence at trial would result
in a mini-trial about the reasons for the examiner’s action—again, on a mark that is not at issue.
Third, and related to the previous point, the USPTO suggested possible ways in which
Timelines could amend the application. Because Timelines was within its rights to do so, but did
not, the USPTO opinion lacks finality and certainty.
Relevance aside, evidence of a USPTO denial is unfairly prejudicial under Rule 403 for
several reasons, ranging from creating biases to confusing and misleading the jury. As explained
more fully below, Facebook should be barred at trial from mentioning, introducing, or referring
to any evidence related to Timelines’ fourth trademark application.
ARGUMENT
A.

Facebook Cannot Use the USPTO as an Expert.
Facebook’s request to use evidence of Timelines’ denied trademark is an effort to offer

expert testimony to the jury about the marks at issue, from a person who is not subject to further
examination—the USPTO examiner. Facebook will argue that because he rejected another
application, he would do so now, here.

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B.

Timelines’ Fourth Trademark Application is not Relevant Under Rule 401, and
Therefore, not Admissible at Trial.
The only trademarks that are at issue in this case are the three federally registered

trademarks that the USPTO—upon finding the marks suggestive—granted to Timelines.
Because the application at issue in this motion was abandoned, it is of no moment. More
important, these are the three trademarks that Timelines claims Facebook infringed and these are
the three trademarks that Facebook must prove are generic. Facebook, nonetheless, seeks to
introduce evidence of Timelines’ rejected trademark to convince the jury that all of Timelines’
trademarks are invalid. But evidence of a trademark application, which is not the subject of this
suit, is not admissible under Rule 401 because it has no bearing on any issue that is before the
jury. See United States v. Klebig, 600 F.3d 700, 710 (7th Cir. 2009) (“[A]ll relevant evidence is
admissible, and evidence which is not relevant is not admissible.” (citing FED. R. EVID. 402)).
Under Fed. R. Evid. 401, evidence is relevant when it has “any tendency to make the existence
of any fact that is of consequence to the determination of the action more probable or less
probable than it would be without the evidence.” Thompson v. City of Chicago, 472 F.3d 444,
453-54 (7th Cir. 2006) (citing FED. R. EVID. 401). Besides having nothing to do with the
trademarks actually at issue, there are several fundamental reasons why evidence that the
USPTO rejected one of Timelines trademarks is not relevant.
1.

The USPTO Opinion is Not Timely.

The USPTO opinion was rendered too long ago to have any relevance in this case. It its
opinion, the USPTO explained that “trademark rights are not static and eligibility for registration
must be determined on the basis of the facts in the record at the time registrations is sought.”
(USPTO Opinion, p.3 (citing In re Chippendales USA Inc., 622 F.3d 1346, 1354, (Fed. Cir.
2010). The USPTO further explained that this is particularly true in the field of electronics and

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computers, which is “changing rapidly. . .” (Id. citing In re Sun Microsystems, Inc., 59 USPQ2d
1084, 1088 (TTAB 2001). Here, the USPTO decision was rendered 10 months ago, which is a
significant amount of time given how quickly the computer and electronics field changes. (See
id. citing In re Styleclick.com Inc., 57 USPQ2d 1145, 1448 (TTAB 2000)(noting “a year or two
is an eternity in internet time. . . .” ). Because so much time has gone by there is no certainty that
the USPTO would reach the same conclusion today, thus reducing even further any waning
relevance the USPTO opinion might have had in the first place.
2.

The USPTO Denied the Application, in part, Because of an Indefinite
Description of Services.

The relevance of the USPTO opinion is even further reduced by the fact that the USPTO
examiner noted flaws in the application that were unrelated to the distinctiveness of the mark.
One of the flaws with Timelines’ fourth trademark application was that it failed to identify the
mark’s services with the requisite level of clarity. (See id.) Of course this has no bearing on the
issue of whether the trademarks at issue in this case are valid.
3.

The USPTO Opinion Lacks Finality.

One of the most prominent problems with allowing the USPTO opinion in as evidence is
that it lacks finality.

Timelines could have, but did not, respond to the Office Action by

amending its application. Timelines, for instance, never addressed or attempted to narrow the
specific language that the USPTO took issue with. (See id. at 2.) Likewise, the USPTO
suggested language that Timelines again, could have, adopted to address the identification of
services. (See id. at 3.) And on top of this, the USPTO never determined that the mark was so
generic that it could not be added to the supplemental register or could eventually be registered
on the principal register. (See id.)

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This leaves open the question of whether the trademark as described in the rejected
application is really merely descriptive. And to the extent that this is still an open question,
Facebook should not introduce this evidence to the jury as definitive on the issue of validity with
respect to even the fourth trademark, much less the trademarks actually at issue here.
C.

Evidence of Timelines Fourth Trademark Application is Not Admissible Under
Rule 403.
Even if evidence of Timelines’ fourth trademark application is somehow relevant, it is

still not admissible because the probative value of that evidence is outweighed by the dangers
expressed in Rule 403. Rule 403 permits a district court to “exclude relevant evidence if its
probative value is substantially outweighed by a danger of . . . unfair prejudice, confusing the
issues, misleading the jury, undue delay, wasting of time, or needlessly presenting cumulative
evidence.” United States v. Boros, 668 F.3d 901, 909 (7th Cir. 2012) (citing FED. R. EVID. 403).
As set forth above, evidence that the USPTO rejected Timelines’ application for a
trademark not at issue has no probative value. Its only purpose, therefore, if admitted, would be
to unfairly prejudice Timelines. The jury may incorrectly think that because Timelines was
denied a trademark application for the term “Timelines” on one occasion, Timelines’ other,
earlier trademarks, are also unenforceable. The result is a jury decision on the issue of validity
based not on the strength of the trademarks actually at issue, but on the strength of an irrelevant
trademark application.
On top of being unfairly prejudicial, this evidence also confuses the issues. As the Court
is well aware, it is not uncommon for juries to struggle with complicated issues of fact and law
that counsel and the parties have been living with throughout the case. In an effort to keep the
trial of this matter focused on the issues of the case, the jury should not be asked to consider

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irrelevant evidence about why the USPTO did or did not do something and what may have
happened had Timelines amended its application.
CONCLUSION
Stripped down to its essence, the USPTO’s opinion is for a different trademark
application, with a different description, more than 10 months old,

denied in part on an

irrelevant basis, and that is not absolutely final. It simply has no bearing on the trademarks at
issue here. Its only purpose would be to prejudice Timelines and confuse the jury’s assessment
of the claims and damages actually at issue in this case. For these reasons and the reasons set
forth above, Federal Rules of Evidence 401, 402, and 403 require that this evidence be excluded
at trial. Accordingly, the Court should grant Timelines’ Emergency Motion In Limine 9.
DATED: April 18, 2013

Respectfully submitted,
TIMELINES, INC.,
Plaintiff/Counter-Defendant
By: /s/ Douglas A. Albritton
James T. Hultquist (SBN 6204320)
Douglas A. Albritton (SBN 6228734)
Michael L. DeMarino (SBN 6298337)
Bruce R. Van Baren (SBN 6310375)
REED SMITH LLP
10 South Wacker Drive
Chicago, IL 60606-7507
Telephone: [phone]
Counsel for Plaintiff/Counter-Defendant
Timelines, Inc.

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CERTIFICATE OF SERVICE
I, the undersigned attorney, certify that I electronically filed the attached document.
Pursuant to Rule 5(b)(3) of the Federal Rules of Civil Procedure and Local Rule 5.9, I have
thereby electronically served all Filing Users.
DATED: April 18, 2013

Respectfully submitted,
TIMELINES, INC.,
Plaintiff/Counter-Defendant

By: /s/ Douglas A. Albritton
James T. Hultquist (SBN 6204320)
Douglas A. Albritton (SBN 6228734)
Michael L. DeMarino (SBN 6298337)
Bruce R. Van Baren (SBN 6310375)
REED SMITH LLP
10 South Wacker Drive
Chicago, IL 60606-7507
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff/Counter-Defendant
Timelines, Inc.

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