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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA802187
Filing date: 02/17/2017
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 92065143
Party DefendantEngineered Tax Services, Inc.
CorrespondenceAddress
DAWN MARIE ALBAENGINEERED TAX SERVICES INC303 EVERNIA STREET, STE 300WEST PALM BEACH, FL 33401UNITED [email protected], [email protected]
Submission Other Motions/Papers
Filer's Name Dawn Alba
Filer's e-mail [email protected], [email protected]
Signature /Dawn Alba/
Date 02/17/2017
Attachments motion to suspend.pdf(386093 bytes )exhibit a.pdf(2901730 bytes )exhibit b.pdf(728264 bytes )composite exhibit c.pdf(1402728 bytes )
Scarpello Consulting, Inc. v. Engineered Tax Services, Inc. - TTAB
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Cancellation No. 92065143
Registration No. 4977182
SCARPELLO CONSULTING, INC. )
Petitioner, )
v. )
ENGINEERED TAX SERVICES, INC. )
Respondent. )
Commissioner for Trademarks
Box TTAB, FEE
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
RESPONDENT’S MOTION TO SUSPEND PROCEEDINGS
PENDING CIVIL LITIGATION
Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), Respondent in the above-captioned
proceeding, ENGINEERED TAX SERVICES [hereinafter, “Registrant”], by and through undersigned
counsel, hereby requests that the Trademark Trial and Appeal Board [the “TTAB” or the “Board”] suspend
Scarpello Consulting, Inc.’s [hereinafter “Petitioner’s] Cancellation Proceeding pending the final
determination of ENGINEERED TAX SERVICES, INC. v. SCARPELLO CONSULTING, INC. 9:16-
cv-81795-KAM, a civil action before the United States District Court in the Southern District of Florida
[“Civil Action”], on the grounds that the Civil Action will have a direct bearing on the instant proceeding.
Scarpello Consulting, Inc. v. Engineered Tax Services, Inc. - TTAB
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FACTUAL BACKGROUND
On October 26, 2016, Registrant initiated the above-mentioned Civil Action in the United States
District Court for the Southern District of Florida against Petitioner. Registrant asserts, inter alia that
Petitioner had infringed Registrant’s mark in violation of the Lanham Act. In support of this motion,
Registrant submits herewith a copy of the complaint attached hereto as Exhibit “A.”
Petitioner’s Answer to the complaint in the Civil Action specifically asserts the same defenses as
asserted in its Petition for Cancellation. Petitioner admits to using the mark in commerce; that both parties
provide the same or similar services; but that Petitioner believes that Registrant is not entitled to exclusive
use of their mark; that Plaintiff is not entitled to a trademark registration of its mark; and that Registrant’s
asserted trademark rights are invalid. [Petitioner’s Answer to Registrant’s Civil Action is attached hereto
as Exhibit “B.”]
The pending Civil Action accordingly involves all issues which are involved in this current
cancellation proceeding, namely whether Registrant has exclusive rights to its mark in commerce or
whether Petitioner provides a legitimate basis to support a finding of non-infringement. The determination
of these issues by the district court will likely be dispositive of said proceedings. Additionally, Registrant
has filed two motions which may be dispositive in the Civil Action. [Registrant’s Motion for Judgment on
the Pleadings and Application for Default Judgment attached hereto as Composite Exhibit “C.”]
ARGUMENT
The determination in ENGINEERED TAX SERVICES, INC. v. SCARPELLO
CONSULTING, INC. 9:16-cv-81795 KAM will have a direct bearing on the issues before the Board.
Justice Alito delivered the opinion of the Court in B & B Hardware in 2015.
“Sometimes two different tribunals are asked to decide the same issue.
When that happens, the decision of the first tribunal usually must be
followed by the second, at least if the issue is really the same. Allowing
the same issue to be decided more than once wastes litigants’ resources
Scarpello Consulting, Inc. v. Engineered Tax Services, Inc. - TTAB
Page 3 of 6
and adjudicators’ time, and it encourages parties who lose before one
tribunal to shop around for another.”
B&B Hardware, Inc. v. Hargis Industries, Inc. 575 US __ (2015)
Whenever it shall come to the attention of the TTAB that a party or parties to a pending case are
engaged in a civil action . . . which may have bearing on the case, proceedings before the Board may be
suspended until termination of the civil action . . . 37 CFR § 2.117; TBMP § 510.02(a). “When a district
court, as part of its judgment, decides an issue that overlaps with part of the TTAB’s analysis, the TTAB
gives preclusive effect to the court’s judgment.” B&B Hardware, 135 S. Ct. 1294, 113 USPQ2d, 2045,
2053 (2015). “So long as the other ordinary elements of issue preclusion are met, when the usages
adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should
apply.” Id. at 2056. (2056)); Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950,
1954 (2d Cir. 1988) (doctrine of primary jurisdiction might be applicable if a district court action involved
only the issue of registrability, but would not be applicable where court action concerns infringement where
the interest in prompt adjudication far outweighs the value of having the views of the USPTO). “A decision
by the United States District Court would be binding on the TTAB whereas a determination of the TTAB
as to the respondent’s right to retain its registration might not be binding nor would res judicata
automatically attach based on a determination by the USPTO with respect to a subsequent or
contemporaneous proceeding before the federal district court.” Whopper-Burger, Inc. v. Burger King
Corp., 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971).
Petitioner and Registrant are both parties to a Civil Action, the only known parties named, with the
Petitioner in this action in the position of Defendant and Respondent in this action in the position of
Plaintiff. The Civil Action is a live and on-going litigation which is currently pending before the United
States District Court for Southern District of Florida. At the time of the submission of this present motion
to suspend these proceedings, the Registrant of the mark at issue has filed two possibly dispositive motions
that are pending before the district court.
Scarpello Consulting, Inc. v. Engineered Tax Services, Inc. - TTAB
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Generally speaking, a final determination by a district court in a trademark infringement litigation
can take a matter of months and in some cases, a matter of years. Both the present proceeding and the
matter before the district court are exhaustive of state and federal monetary resources as well as the man-
hours of government employees involved in both proceedings. In order to minimize the time, money and
resources expended by both parties as well as the overseeing governmental agencies, the most effective
course of action for the Board at this time would be to suspend the present proceeding until such a time that
the district court renders a final judgment or sends instructions to the Board to proceed in the present matter.
With respect to similarities between and the overlapping nature of the present Cancellation
Proceeding and the trademark infringement suit currently before the district court, it is clear from an
examination of the relevant documentation submitted by the parties, that the issues involved before the
district court and the Board are identical. As the cause of action presently before the district court is for
inter alia trademark infringement, the cause of action alleged by the Plaintiff in the Civil Action involves
identical rules of law, allegations, and will be adjudicated based on a formal examination of the same
Federal Trademark Law as would be relied on by the Board on the same or even more expansive set of
relevant facts to render final judgment. As a sharp contrast to the TTAB, the district court has jurisdiction
to grant relief in the form of damages and/or attorney’s fees.
As such, and considering the binding effect of any determination made by the district court in the
Civil Action, it is the position of the Registrant that it is in the best interest of the parties for the judicial
efficiency to allow for the Civil Action to proceed while the present proceeding is suspended pending the
outcome of the Civil Action. Once there is a final ruling or a final resolution in some other form is reached,
the parties of the Court itself will inform the Board of the district court’s decision and then the Board can
decide what is the appropriate manner with which to proceed. See The Other Tel. Co. v. Conn. Nat’l Tel.
Co., Inc., 181 U.S.P.Q. 125, 126-7 (T.T.A.B. 1974). Here, the district court’s findings in the pending matter
shall dispose of the claim before the Board.
Scarpello Consulting, Inc. v. Engineered Tax Services, Inc. - TTAB
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Finally, Petitioner will suffer no prejudice from a suspension of this proceeding. Petitioner will
have full opportunity to litigate its case on all factual issues relevant to this proceeding in the Civil Action.
SUSPENSION IS WITHIN THE BOARD’S DISCRETION
The Board’s general practice is to suspend its inter parties proceedings under Trademark Rule
2.117(a) whenever the Board is made aware that any party to a pending Board proceeding is involved in a
civil action which may have a bearing on the Board case. The Board can exercise its inherent authority to
control the scheduling of cases on its docket.
CONCLUSION
For the foregoing reasons, Registrant respectfully requests that the TTAB exercise its inherent
authority to control the scheduling of cases on its docket and suspend the above-captioned proceeding
pursuant to 37 CFR § 2.117. If the Board does not suspend the proceeding, Registrant respectfully requests
that the Board allow Registrant adequate time after issuance of the Board’s Order for Registrant to prepare
and file its Answer to the Petition.
I HEREBY CERTIFY that a true and complete copy of the foregoing Motion to Suspend
Proceedings has been served on [email protected] by electronic transmission through
ESTTA (Electronic System for trademark Trial and Appeals) and via First Class Mail, postage
prepaid to: Daniel J. Fischer, Koley Jessen PC LLO, 1125 South 103rd Street, Suite 800, Omaha,
Nebraska 68124 on this 17th day of February, 2017.
Respectfully Submitted,
_/s/ Dawn M. Alba
Dawn M. Alba, Esq.
F.B.N.: 112814
Attorney for Plaintiff, Engineered Tax Services, Inc.
303 Evernia Street, Suite 300
Scarpello Consulting, Inc. v. Engineered Tax Services, Inc. - TTAB
Page 6 of 6
West Palm Beach, Florida 33401
561-253-6638
SERVICE LIST
Daniel J. Fischer
Koley, Jessen, P.C., L.L.O.
One Pacific Place
1125 South 103rd Street
Suite 800
Omaha, NE 68124
402-390-9500
Dawn M. Alba, Esq.
F.B.N.: 112814
Attorney for Plaintiff, Engineered Tax Services, Inc.
303 Evernia Street, Suite 300
West Palm Beach, Florida 33401
561-253-6638
