[00:00:21] Speaker 03:
Okay, the next darker case is number 15, 1292, New Yorker SHK Jeans, GMVH against Rochka.

[00:00:30] Speaker 03:
Mr. Draniel.

[00:00:33] Speaker 06:
Thank you, Your Honors.

[00:00:35] Speaker 06:
May it please the Court?

[00:00:39] Speaker 06:
It is our contention that the Board has abused its discretion in denying appellants a motion

[00:00:50] Speaker 06:
to amend the pleadings to add a counterclaim based on abandonment.

[00:00:56] Speaker 06:
This case started rather quickly with discovery on both sides issued and then

[00:01:03] Speaker 06:
There were an initial round of documents that were turned over, 30 or so documents.

[00:01:10] Speaker 06:
And we initially complained about the document production because it did not show sufficient use of trademark by Appellee.

[00:01:21] Speaker 06:
So we engaged in communications with council and they indicated that over time they may supplement their production.

[00:01:33] Speaker 06:
What happened was they agreed to turn over additional documents, and they did.

[00:01:37] Speaker 06:
And on that same day that they turned over additional documents, they sort of blindsided us with a motion for summary judgment.

[00:01:44] Speaker 01:
But put aside whether they had the right to file a motion for summary judgment at the same time, I guess I'm trying to understand what you seem to think are the primary differences between what was produced in the last cancellation proceeding and what had been produced all the way back in 2000.

[00:02:02] Speaker 01:
Okay.

[00:02:04] Speaker 06:
Well, what was produced in 2000, and again, I was not a part of that case, but what we can understand and what was before the board were a few invoices

[00:02:14] Speaker 06:
a statement that essentially showed a t-shirt that may or may not have had trademark use on it.

[00:02:21] Speaker 06:
And based on that, that was from 1996 evidence of use.

[00:02:26] Speaker 06:
Our feeling is that you can move for abandonment at any time.

[00:02:31] Speaker 06:
And if you have three years of non-use, then there's a presumption of abandonment.

[00:02:37] Speaker 06:
We have any period of time between 2000 and the year 2013 to show abandonment.

[00:02:42] Speaker 06:
And what we were not given was any evidence of use, consistent, continuous use during that entire period from 2000 to 2013.

[00:02:50] Speaker 01:
But this entire period from 2000 to 2013, there are two or three rounds of efforts to negotiate the purchase of the mark.

[00:03:01] Speaker 01:
And I assume there was an exchange of information in connection with those rounds of negotiations, right?

[00:03:07] Speaker 06:
Those rounds of negotiation are not of record in this case.

[00:03:10] Speaker 06:
There's been no discussion about that below.

[00:03:15] Speaker 06:
There was never any testimony about it.

[00:03:17] Speaker 06:
There's no depositions.

[00:03:18] Speaker 06:
There's no discussion about it.

[00:03:20] Speaker 06:
That was just brought up in these pleadings for the first time.

[00:03:23] Speaker 06:
I don't know what was discussed during those informal communications between the clients.

[00:03:28] Speaker 06:
We have no understanding of what happened during those meetings.

[00:03:33] Speaker 06:
I don't see the relevance of that at all.

[00:03:36] Speaker 06:
We had responses to interrogatories that essentially said, yeah, we used it.

[00:03:42] Speaker 06:
We had just general annual sales of blank.

[00:03:47] Speaker 06:
We went back and requested, okay, we need a breakdown because we're entitled to understand is there a three year period of time where you didn't use the trademark?

[00:03:56] Speaker 06:
We requested obviously right after summary judgment motion came in that we needed additional discovery and we couldn't defend ourselves properly.

[00:04:04] Speaker 06:
without this information.

[00:04:06] Speaker 06:
The board below denied that request for additional discovery.

[00:04:10] Speaker 06:
And again, it was always clear that this was one of the issues that was very important for us to address.

[00:04:16] Speaker 06:
We needed to understand if they were using the mark.

[00:04:19] Speaker 06:
And again, documents from 1996, documents from 2000, are just not relevant.

[00:04:25] Speaker 06:
The board indicated that they were the same types of documents.

[00:04:28] Speaker 06:
They were the same types of documents.

[00:04:30] Speaker 06:
But those documents themselves do not show either use

[00:04:34] Speaker 06:
They needed factual support to back it up.

[00:04:38] Speaker 01:
So your claim of abandonment only relates to the post-2000 period?

[00:04:43] Speaker 06:
Yes.

[00:04:44] Speaker 06:
We believe that between the period of 2000 and 2013, there is likely a three-year period where the mark was abandoned.

[00:04:51] Speaker 01:
Okay, you did not argue that there was a period of abandonment that predated 2000?

[00:04:56] Speaker 06:
We did not, no.

[00:04:58] Speaker 06:
We are not concerned with the pre-2000 period.

[00:05:02] Speaker 06:
We are concerned with the 2000 to 2013 period.

[00:05:06] Speaker 06:
We understand that that case is, you know, the 2000 case is over.

[00:05:11] Speaker 06:
But you can always, you always have a right to bring a claim for abandonment regardless of if the trademark is incontestable or not.

[00:05:19] Speaker 06:
And, you know, we have the right to get that information.

[00:05:22] Speaker 01:
And what is it that was presented in 2013 that you think shows abandonment?

[00:05:28] Speaker 06:
Well, that's the issue.

[00:05:29] Speaker 06:
We don't think anything necessarily was turned over that shows abandonment.

[00:05:34] Speaker 06:
What we think is that they failed to produce enough evidence to show that they were actually using the mark.

[00:05:40] Speaker 06:
So what we did was we waited.

[00:05:42] Speaker 05:
Why couldn't you bring your claim based on their first shot, what they turned over, and you said that doesn't show use.

[00:05:50] Speaker 05:
Therefore, abandon it.

[00:05:51] Speaker 05:
Therefore, we file our counterclaim.

[00:05:54] Speaker 06:
what we actually did.

[00:05:55] Speaker 06:
The board decided that we failed to bring the counterclaim on time, specifically because we did not bring it with... At an earlier point, what precluded you from bringing the abandonment claim early?

[00:06:11] Speaker 05:
earlier that after the answer earlier than when you're filing your motion to amend.

[00:06:16] Speaker 05:
You never filed it.

[00:06:17] Speaker 05:
It's not in there.

[00:06:19] Speaker 05:
You filed one in 2000 and you lost that case.

[00:06:23] Speaker 06:
The only reason we bring an abandonment claim is because they moved to cancel our registration.

[00:06:29] Speaker 05:
I understand that.

[00:06:30] Speaker 05:
And the whole question in this case is whether or not you sought to bring that abandonment counterclaim early enough in the proceedings.

[00:06:38] Speaker 06:
Right.

[00:06:38] Speaker 06:
And the only thing that the board analyzed was

[00:06:41] Speaker 06:
and decided was that you should have brought it with your answer.

[00:06:47] Speaker 06:
We believe that we didn't have enough evidence to do that.

[00:06:50] Speaker 06:
So what we did was we engaged in discovery and as soon as the discovery period was technically over, we made the motion to... Why didn't you have enough evidence at the time you found your answer?

[00:07:01] Speaker 06:
Because we had no evidence.

[00:07:02] Speaker 06:
There was none available to us.

[00:07:04] Speaker 06:
We did not have any prior information on the use.

[00:07:08] Speaker 06:
We didn't do any investigation.

[00:07:10] Speaker 06:
the case just started.

[00:07:11] Speaker 06:
So we initiated and made requests for discovery and we did it again at the time of summary judgment motion and we continued to ask for these types of documents which were needed to support grounds for an abandonment claim.

[00:07:26] Speaker 01:
In 2013 though, to go back to where you and I were discussing before, you didn't just bring an abandonment claim, you also tried to bring a claim predicated on the original application

[00:07:38] Speaker 01:
and what was shown as it relates to you relating to the original application.

[00:07:42] Speaker 01:
Would you concede that as to that claim the board's refusal to allow you to amend was justified given the fact that you had plenty of documents before 2000 to have made that claim?

[00:07:56] Speaker 06:
Yes, we have not appealed that decision.

[00:07:58] Speaker 06:
The void of an SEO claim we have not appealed.

[00:08:02] Speaker 01:
Okay, so you're only arguing that abandonment post 2000.

[00:08:06] Speaker 01:
Correct.

[00:08:06] Speaker 01:
That the board should have allowed you to assert that claim and frankly should have allowed you to conduct further discovery after that.

[00:08:13] Speaker 06:
Correct.

[00:08:16] Speaker 06:
And basically it was an abuse of discretion because the board did not have substantial evidence to decide the way they did.

[00:08:23] Speaker 06:
All they had was an application from 1996 that showed alleged use.

[00:08:28] Speaker 06:
There was a cancellation action in 2000.

[00:08:31] Speaker 06:
that we don't know what documents were turned over during that time.

[00:08:34] Speaker 06:
And based on that, they decided that we had no right to bring an abandonment claim.

[00:08:38] Speaker 01:
So to the extent that the board felt that the information that you received in 2013 was of the same character or nature as the information that you had before, again, you would concede that you couldn't seek an abandonment claim as to that earlier time frame, but you believe that that should not have, that should not stop you from seeking abandonment claim.

[00:09:01] Speaker 06:
No, because you can bring again any three-year period

[00:09:05] Speaker 06:
can cover an abandonment claim.

[00:09:08] Speaker 01:
But to the extent that the information produced later was essentially the same as earlier, if you thought you had an abandonment claim pre-2000, why didn't you just assume that if they had already abandoned it pre-2000, the likelihood that they didn't do anything more in a later period of time was high and just assert your claim?

[00:09:30] Speaker 06:
The claim in 2000 was more focused on the void ab initio claim, whether there was actual trademark use at all, as opposed to an abandonment claim.

[00:09:39] Speaker 06:
This was a different issue that was brought to light during the course of our investigations post-filing in 2013.

[00:09:49] Speaker 06:
So the claim is different.

[00:09:51] Speaker 06:
And again, as you can see, we were blindsided with the summary judgment motion.

[00:09:57] Speaker 06:
And as you'll see, the appellee produced a two-page document of support for their use, initially with the summary judgment motion.

[00:10:08] Speaker 06:
After, and we asked time and again, show us evidence of use.

[00:10:11] Speaker 06:
Show us annual sales.

[00:10:13] Speaker 06:
Show us how the mark is appearing from year to year on the good during connections with the sale of the goods.

[00:10:18] Speaker 06:
We were never turned over to these materials.

[00:10:21] Speaker 06:
Shockingly, at the end of full briefing on our motion for leave to an amend, they turned over a six-page declaration by Appellee that pointed out year by year, this is how it was used, this is our annual sales, so on and so forth.

[00:10:39] Speaker 06:
We had no right to challenge any of that.

[00:10:41] Speaker 06:
There's never been depositions in this case.

[00:10:44] Speaker 06:
We just haven't had the opportunity to challenge it.

[00:10:53] Speaker 03:
Okay, we'll save you a bit of time.

[00:10:56] Speaker 03:
Ms.

[00:10:56] Speaker 03:
Pat.

[00:10:56] Speaker 05:
Thank you.

[00:11:02] Speaker 02:
May I please report?

[00:11:04] Speaker 02:
There is substantial evidence of the record to show that Mr. Raissa has continuously used his mark in connection with clothing items for nearly 20 years, and that New Yorker has known of Mr. Raissa's use since at least 2000.

[00:11:16] Speaker 02:
The issue here is whether or not Mr. Raissa has abandoned his mark at any point in time, which we submit he has not,

[00:11:23] Speaker 02:
But rather, it's New Yorkers' deleterious actions that appear to try to accomplish, through undue delay and increased expense, what they cannot accomplish on the merits of the matter.

[00:11:33] Speaker 02:
And that is... But wait.

[00:11:36] Speaker 01:
First of all, we don't want to have a situation where we encourage people to make claims that they don't have a good safe basis to make.

[00:11:44] Speaker 01:
Right?

[00:11:44] Speaker 01:
Yes.

[00:11:45] Speaker 01:
And it's true that it doesn't matter what they knew before 2000.

[00:11:49] Speaker 01:
If there could have been abandonment as of 2010, right?

[00:11:55] Speaker 02:
There could have been, but not in this case.

[00:11:58] Speaker 01:
But you're talking about the merits of an abandonment claim.

[00:12:01] Speaker 01:
What we're looking at here is whether or not they should have had the right to A, conduct discovery on that, and B, to assert the claim.

[00:12:08] Speaker 01:
And so you're basically saying, because at the end of the day, we think they can't win on this claim, they should never have been allowed to assert it.

[00:12:16] Speaker 01:
That seems to be pretty backwards of the way procedure works.

[00:12:19] Speaker 02:
There are two ways that I can respond to that.

[00:12:21] Speaker 02:
First, in explaining the evidence of the record that shows that Mr. Reza used a SMART, but turning to your request in particular with what New Yorker knew at the time they filed their answer.

[00:12:31] Speaker 02:
First, under Trademark Rule 2.122, the file wrapper of any application or registration that is the subject of an opposition or cancellation is automatically of record through no action of either party.

[00:12:46] Speaker 01:
They're not appealing their ab initio.

[00:12:50] Speaker 01:
Yes.

[00:12:50] Speaker 02:
So that's not relevant.

[00:12:52] Speaker 02:
Well, it is to the extent that their motion to amend was based on their belief that the invoices and photographs that Mr. Race has submitted did not show trademark use.

[00:13:04] Speaker 02:
They had invoices and pictures of Mr. Race's use.

[00:13:08] Speaker 01:
OK.

[00:13:08] Speaker 01:
That claim has not been appealed.

[00:13:10] Speaker 01:
It's not before us.

[00:13:11] Speaker 01:
The only question before us is whether there was abandonment between 2000 and 2013.

[00:13:16] Speaker 01:
Yes.

[00:13:18] Speaker 01:
So let's turn to that.

[00:13:19] Speaker 02:
So at the time.

[00:13:20] Speaker 01:
What evidence did you present

[00:13:22] Speaker 01:
that showed continuous use from 2000 to 2013 in response to their request for information?

[00:13:29] Speaker 02:
In two ways, Your Honor.

[00:13:30] Speaker 02:
First, in the 2013 cancellation, the file wrapper for Mr. Race's application, including all of the maintenance filings that included additional evidence of use in 2003 with the declaration of continued use and incontestability, as well as in 2007 with the renewal.

[00:13:46] Speaker 02:
He submitted evidence of use in each of those periods that automatically became a record.

[00:13:51] Speaker 02:
In addition,

[00:13:53] Speaker 02:
They had information regarding Mr. Race's use and his invoices during the prosecution of the application, the underlying application, the Yorger's application, when the trademark examining attorney had refused registration based on Mr. Race's earlier filed registration.

[00:14:11] Speaker 05:
During what time period would that be?

[00:14:13] Speaker 02:
In 2010.

[00:14:13] Speaker 05:
I think what Judge Amal is trying to get you to do is to focus on what's after 2000 and before 2013.

[00:14:20] Speaker 02:
Yes, what I was trying to suggest is that the entire file wrapper that includes evidence in the 2000 application, the 2003, and the 2000.

[00:14:29] Speaker 05:
You have to look at what's all in there.

[00:14:31] Speaker 05:
I mean, something that's in the, so you have those three periods are only including information that's from 2000 going forward?

[00:14:39] Speaker 02:
In 2003 and 2007.

[00:14:41] Speaker 02:
So yes.

[00:14:42] Speaker 02:
And they are, all trademark registrants are required to supply evidence of use and sign a declaration of continued use

[00:14:48] Speaker 02:
during the fifth and sixth anniversaries and every 10 years.

[00:14:51] Speaker 02:
So that evidence was of record automatically in the 2013 cancellation, turning to the question as to what other evidence shows use.

[00:15:00] Speaker 02:
Under the Landom Act, embarkers seem to be in use when it is used on any manner on the goods, on containers for the goods, on displays associated with the goods, or tags or labels affixed there too.

[00:15:12] Speaker 02:
Any one of those uses would be sufficient to show trademark use.

[00:15:16] Speaker 02:
In this case, Mr. Raysa has used his mark in every one of those defined ways under the Atlanta Act and produced evidence to New Yorker to show each and every use.

[00:15:26] Speaker 05:
During what time period?

[00:15:29] Speaker 02:
I'm sorry.

[00:15:29] Speaker 05:
During what time period?

[00:15:31] Speaker 02:
During the entire time period.

[00:15:33] Speaker 05:
We showed evidence.

[00:15:34] Speaker 05:
How do we know what's dated?

[00:15:36] Speaker 05:
all the pictures we see in the room, how do we know what dates those t-shirts were being used in commerce?

[00:15:43] Speaker 02:
A number of different ways.

[00:15:44] Speaker 02:
There were a few t-shirts that were in fact dated with Mr. Race's, the time at which he created those designs in 2000, 2003.

[00:15:53] Speaker 02:
In addition, all of the invoices show that there were sales of those goods from the beginning of 1996, every year from that point, as well as

[00:16:04] Speaker 02:
pictures that support the initial specimens that were submitted in the underlying application and further corroborate that use, including shipping labels that were attached to the original application were also produced in the 2013 registration that shows there was consistent use in the shipping labels that were affixed to each box of products that were shipped from his store.

[00:16:25] Speaker 02:
any of those uses would be sufficient.

[00:16:27] Speaker 01:
However, you're not arguing that all these Hired to Create designs had anything to do with putting the mark on clothing, right?

[00:16:36] Speaker 01:
They're not mutually exclusive because the t-shirts... But where do they show me that the design that was created was the same design that existed before?

[00:16:47] Speaker 02:
I'm not following your question.

[00:16:48] Speaker 01:
In other words, you've got all these things, Hired to Create, an independent design for somebody.

[00:16:52] Speaker 01:
So I order a t-shirt, you know,

[00:16:55] Speaker 01:
for my husband's birthday, and it's got his name on the front.

[00:16:59] Speaker 01:
That doesn't mean you're using your mark on that good.

[00:17:01] Speaker 02:
No, but the hang tags that are affixed to each of those goods, as well as Kaga's neck labels that show his logo on the t-shirts themselves, they all support use, as well as shipping labels that are affixed to the boxes that are mailed from his store for every custom design.

[00:17:17] Speaker 02:
Any of those uses under the Landmark would be sufficient uses to show use.

[00:17:22] Speaker 03:
One of the appellants' complaints is that they weren't permitted discovery.

[00:17:30] Speaker 03:
The discovery is not available as of right.

[00:17:33] Speaker 03:
Is that right?

[00:17:34] Speaker 02:
At this point, no, Your Honor.

[00:17:36] Speaker 02:
What we would submit is that, contrary to Federal Rule of Appeal Procedure 28A, New Yorker did not specifically and distinctly raise

[00:17:44] Speaker 02:
the propriety of the board's denial of their motion for discovery.

[00:17:49] Speaker 02:
So we would say that that argument is waived.

[00:17:52] Speaker 02:
However, even at the time that they filed their motion to dismiss, they had all of the information they needed to assert a claim

[00:18:00] Speaker 02:
of abandonment at that point in time.

[00:18:02] Speaker 02:
Because all of the evidence that was provided simply corroborated the evidence that was already a record, again, in file records.

[00:18:09] Speaker 01:
But this declaration at the 333 and 336 that you point to as providing all this evidence, this wasn't even submitted until after all the briefing on the motion to amend was completed.

[00:18:21] Speaker 01:
I mean, you didn't submit this in response to the discovery request.

[00:18:25] Speaker 00:
No.

[00:18:25] Speaker 01:
You submitted this in support of your motion for summary judgment.

[00:18:28] Speaker 01:
That's correct.

[00:18:29] Speaker 01:
So you just ignored their discovery request and decided you'd submit it to the court on your own?

[00:18:34] Speaker 02:
That's absolutely not true.

[00:18:36] Speaker 02:
So we provided all of the responses to New Yorker's discovery request at the time that the parties agreed for the exchange, which were legally sufficient and proper according to the trademark trial and kill boards manual procedure.

[00:18:51] Speaker 01:
But you didn't submit?

[00:18:53] Speaker 01:
this evidence in response to the discovery?

[00:18:55] Speaker 02:
Well, at the time Mr. Raisa filed his summary judgment motion, the only issue at bar was whether or not there is a likelihood of confusion.

[00:19:04] Speaker 02:
So Mr. Raisa simply provided the declaration to confirm that he owned the registration, had continued using the mark, and that there is a likelihood of confusion between the parties.

[00:19:14] Speaker 02:
Because Mr. Raisa did not have notice of an abandonment claim,

[00:19:18] Speaker 02:
through New Yorker's answer, we did not therefore have any reason to submit any further information.

[00:19:24] Speaker 01:
But you had notice of the request for an abandonment claim as it related to the motion to amend.

[00:19:30] Speaker 01:
But that was... So you're saying that if you don't assert an abandonment claim in your answer, you can't request discovery.

[00:19:41] Speaker 01:
that would go to the question of whether a claim has been abandoned.

[00:19:45] Speaker 01:
In other words, forget rule 11.

[00:19:46] Speaker 01:
You've got to assert a claim before you ever have a basis for it.

[00:19:51] Speaker 02:
No, that's not our position.

[00:19:53] Speaker 01:
So they don't assert it in their answer, but they seek it in discovery.

[00:19:59] Speaker 01:
You don't have to produce it in discovery because it's not in the answer.

[00:20:02] Speaker 01:
That's what you just said.

[00:20:04] Speaker 02:
Well, no.

[00:20:05] Speaker 02:
What I was trying to suggest was that the first declaration in support of the motion for summary judgment did not speak to abandonment because that wasn't an issue at the time.

[00:20:13] Speaker 02:
So the second declaration that was filed in our reply to the summary judgment motion, which New Yorker is complaining about,

[00:20:20] Speaker 02:
does include additional information that corroborates all of the evidence that was already made of record.

[00:20:25] Speaker 02:
So there's two declarations here, and we're not suggesting that they weren't entitled to request for the discovery, but what the board found was that they had all the information they needed and did not make a requirement for a need for further discovery at that time.

[00:20:49] Speaker 02:
It is Mr. Race's position that New Yorker had all of the information it needed at the time the answer was filed and failed to timely file their motion to amend.

[00:21:01] Speaker 02:
In this case, the parties have a long history.

[00:21:05] Speaker 02:
They have been corresponding for almost 15 years in the 2000 cancellation.

[00:21:12] Speaker 02:
In addition, Mr. Race's registration has been cited as a bar to New Yorker's applications both in 2000 as well as in 2010.

[00:21:21] Speaker 02:
In both cases, council had attempted to overcome the refusal by first in 2000, deleting class 25 goods.

[00:21:30] Speaker 02:
Then when they refiled their application in 29 and were again rejected, they argued that Mr. Race's use of his mark

[00:21:38] Speaker 02:
evidence by specimens that were submitted in the underlying application, as well as pages from the website, show that Mr. Reza was using his mark in a different way, in different channels of trade, and with different customers at that time to argue that there was no likelihood of confusion.

[00:21:58] Speaker 02:
In that way, we suggest that in 2010, in 2012, when they responded to the examiner's request, that they had information regarding Mr. Race's youth and were using it to assert that there was no likelihood of confusion.

[00:22:14] Speaker 02:
In addition, although New Yorker complains that there were no meetings or there was no evidence of meetings between the parties,

[00:22:21] Speaker 02:
There were in fact discussions in 2000 between the parties.

[00:22:25] Speaker 01:
Is that in the record or is this something you're just raising for the first time?

[00:22:29] Speaker 02:
It is in the record in the correspondence between counsel in the underlying board proceedings that suggested that there was a request for suspension based on current discussions of the parties.

[00:22:43] Speaker 01:
The fact that there were ongoing discussions or the fact as to what those discussions were was never presented to the board as a basis to deny the motion for leave to enlist.

[00:22:52] Speaker 02:
Mr. Race had made allegations of the meetings that took place in 2011.

[00:22:56] Speaker 02:
And New York had never refuted the fact that meetings actually took place.

[00:23:01] Speaker 02:
In fact, admitted that meetings took place.

[00:23:03] Speaker 02:
They just didn't admit to the substance of the discussion.

[00:23:06] Speaker 02:
So that information was indeed before the board in the... Information in the form of lawyer argument?

[00:23:12] Speaker 02:
Yes.

[00:23:13] Speaker 01:
But no evidence as to what occurred in the meeting or the fact of the meeting?

[00:23:17] Speaker 01:
No.

[00:23:17] Speaker 01:
It's of no consequence.

[00:23:19] Speaker 05:
The evidence that there were meetings, if there's no evidence as to what happened at the meetings, the fact that the meetings is of no consequence.

[00:23:26] Speaker 05:
Right?

[00:23:27] Speaker 05:
Can't have any bite at all.

[00:23:31] Speaker 02:
Certainly, but as far as the evidence of the record is concerned,

[00:23:35] Speaker 02:
New Yorker has shown through a series of actions that they were well aware of what Mr. Raisa has done in connection with his use, including all of the maintenance filings, including the response to the examining attorney's refusal in their application, in which they submitted evidence that Mr. Raisa had included in his underlying application, which is also an admission that they knew of the evidence that was already of record.

[00:24:00] Speaker 02:
all of the documents that were provided in discovery in the 2013 registration, as the board concluded in A5, were substantially the same and included the same material facts and fully corroborated the evidence that was already of record.

[00:24:18] Speaker 02:
So in that regard, there is sufficient evidence in the record to show that Mr. Reza has continuously used his mark in connection with each and every way in which the Landomac defined the use of a mark, and that he has done so consistently since 1996 to the present.

[00:24:34] Speaker 02:
The invoice is submitted in the underlying application, as well as in the discovery

[00:24:41] Speaker 02:
Clearly show the logo used on the invoices in the upper left corner as well as sales of products.

[00:24:49] Speaker 01:
Show me what was submitted in Discovery.

[00:24:51] Speaker 01:
Point to me in the appendix where you show what was submitted in Discovery as opposed to what was submitted in your later decorations.

[00:24:58] Speaker 02:
A word 145 shows pictures of the t-shirt that are screen printed with Mr. Race's logo as well as... And there are no dates on any of these?

[00:25:10] Speaker 02:
there are different some of them but in addition they are corroborated because they're paying something that you thought was included in the application file wrapper as well as supported by the invoices that evidence sales of this product every year from nineteen ninety-six to the present so where the invoices submitted in the industry yet but where are the invoices

[00:25:38] Speaker 02:
they are a one twenty six one forty three and and both are do you think those are tied to those photograph as in what part of the food it is looking at the entire evidence of record and how do we know that i mean are they described in the invoice specifically in some cases yes in some cases it does make show at them

[00:26:05] Speaker 02:
There is the invoice that requests Telluride.

[00:26:11] Speaker 02:
One moment while I look for that.

[00:26:20] Speaker 03:
I'm looking at page 126, for instance, an invoice for a t-shirt with a logo shown on the invoice.

[00:26:29] Speaker 05:
Doesn't the Telluride picture of the t-shirt have a date on it?

[00:26:33] Speaker 02:
The Telluride picture does not have a date on it.

[00:26:35] Speaker 02:
However, the corresponding invoice does have a date on it.

[00:26:38] Speaker 05:
So how do we know it connects up to that very Telluride t-shirt?

[00:26:42] Speaker 05:
I'm sorry?

[00:26:43] Speaker 05:
How do we know the invoice connects up to that very same Telluride t-shirt?

[00:26:49] Speaker 02:
Mr. Reza did confirm that the pictures that were shown of the Telluride logo on the t-shirt itself, which had the name Telluride on the t-shirt,

[00:27:00] Speaker 02:
was sold in those invoices that were dated, I believe, 2002 and 2006.

[00:27:03] Speaker 05:
Just testimony.

[00:27:05] Speaker 02:
Testimony, if you were unwilling to look at the date on the invoice and the reference to Telluride and the picture that shows Telluride on this t-shirt.

[00:27:17] Speaker 03:
In the record, is there any challenge to the veracity of these invoices?

[00:27:24] Speaker 02:
New Yorker does complain that the invoices by themselves do not show trademark use.

[00:27:29] Speaker 02:
However, invoices along with pictures of how the mark is used, including shipping labels and hang tags, and pictures of the mark on the tagless neck labels, all show use of the trademark.

[00:27:43] Speaker 05:
Do you have shipping labels on the Telluride invoice?

[00:27:46] Speaker 05:
I'm sorry?

[00:27:47] Speaker 05:
Do you have a shipping label on the Telluride invoice?

[00:27:51] Speaker 02:
Well, they would be two different things in the course of regular business, whereas you'd have the invoice

[00:27:55] Speaker 02:
that would be the order of the t-shirts, as well as the box that is sent from Mr. Race's store has shipping labels.

[00:28:03] Speaker 02:
And every box has a shipping label that includes Mr. Race's logo.

[00:28:08] Speaker 02:
And under the Lanham Act, labels affixed to the goods are sufficient trademarks.

[00:28:18] Speaker 05:
We're assuming that labels were attached to the Telluride t-shirts?

[00:28:23] Speaker 05:
that are then described in the invoice, right?

[00:28:27] Speaker 02:
Mr. Race's declaration does say that every box that has shipped from his store includes the shipping label.

[00:28:33] Speaker 02:
And to be sure, the shipping label was included in the underlying application in 1996.

[00:28:39] Speaker 05:
So your argument is based on all this evidence of use from 2000 going forward, right?

[00:28:45] Speaker 05:
Yes.

[00:28:45] Speaker 05:
You're saying there's a lot of evidence of use.

[00:28:47] Speaker 05:
And his problem is he wants to argue no use, right?

[00:28:50] Speaker 05:
That's correct.

[00:28:50] Speaker 05:
And so he keeps saying, I need more discovery to get non-use.

[00:28:54] Speaker 05:
To do what?

[00:28:56] Speaker 05:
To disprove what you've already shown is used?

[00:28:59] Speaker 02:
Exactly.

[00:28:59] Speaker 02:
No more evidence that is already of record would change the result.

[00:29:02] Speaker 02:
That Mr. Resa has continuously used his mark.

[00:29:06] Speaker 05:
So what he's looking for are gaps in time.

[00:29:09] Speaker 05:
That is what he's hoping for.

[00:29:11] Speaker 05:
He has in front of him evidence of use.

[00:29:13] Speaker 05:
So he knows, well I can't very well bring an abandonment claim with all this evidence of use unless I find a three year gap.

[00:29:20] Speaker 02:
Yes.

[00:29:20] Speaker 05:
So he's looking hunting for a gap.

[00:29:23] Speaker 02:
He is hunting for a gap, correct.

[00:29:25] Speaker 02:
So for example, in Cerveteria, there was an eight-year gap where no invoices were provided, and this court had ruled that that was sufficient evidence of abandonment.

[00:29:34] Speaker 02:
In this case, there is no year, and we provided invoices from every year between 1996 and when discovery was recounted upon Mr. Reza that show that his goods were sold every year, evidencing his use of the mark.

[00:29:50] Speaker 02:
So New Yorkers' plan of abandonment here is futile, and they had all of the information they needed at the time they filed their answer and failed to do so.

[00:30:16] Speaker 06:
Thank you, Your Honor.

[00:30:19] Speaker 06:
The bottom line is just all you have to do is look at the appendix pages 126, you know, for the next 36 pages.

[00:30:28] Speaker 06:
It is just, first of all, these documents were not produced until after we filed our answer.

[00:30:34] Speaker 06:
So the Board's decision that we did not properly file at the time of the answer

[00:30:39] Speaker 06:
is not supported by any evidence whatsoever.

[00:30:43] Speaker 06:
With regard to this specific evidence, these invoices do not show use, as Your Honor pointed out.

[00:30:49] Speaker 06:
There is use of fishbone on the top, but that's for a service, not for a trademark.

[00:30:54] Speaker 06:
There is no specific evidence on these invoices that shows that someone asked for the fishbone to be added to a t-shirt, that it was essentially added to a t-shirt.

[00:31:04] Speaker 06:
There is just no connection of the dots from the invoice to the shipping label to the product itself.

[00:31:10] Speaker 01:
Would you concede that even if use of the mark in connection with the service would not qualify, would you concede that if in fact it was established that every single one of these things had a hang tag with the mark on it would show use?

[00:31:28] Speaker 06:
a hand-tag on on product itself would be used but there is no evidence other than a hand-tag with no date on it.

[00:31:38] Speaker 03:
You're telling us that as a matter of law putting your trademark on your invoice is not trademark use?

[00:31:45] Speaker 06:
Correct, Your Honor.

[00:31:47] Speaker 06:
That is evidence of service mark use.

[00:31:50] Speaker 06:
Specifically trademark use is actually use of the mark on a product itself or tag labels or packages.

[00:31:55] Speaker 03:
No, in association.

[00:31:58] Speaker 03:
not attached to.

[00:32:00] Speaker 03:
Supposing you have an elaborate designer garment.

[00:32:06] Speaker 03:
You say you have to put holes in it in order to attach the trademark of the designer.

[00:32:11] Speaker 06:
Pags, labels, or packaging.

[00:32:13] Speaker 06:
So essentially the packaging.

[00:32:14] Speaker 03:
So we've been told that the packaging bears the trademark.

[00:32:18] Speaker 03:
The record is full of invoices bearing the trademark, and you're telling us that there was no use?

[00:32:25] Speaker 03:
Not even prime efficient?

[00:32:27] Speaker 03:
Is there any contrary evidence?

[00:32:29] Speaker 06:
I believe there is not evidence of consecutive use over any period of time.

[00:32:35] Speaker 06:
Again, these invoices do not actually show use of the mark.

[00:32:39] Speaker 06:
I don't see it anywhere.

[00:32:40] Speaker 06:
There's no connection between the sale of this t-shirt and invoice 12104 with any specific t-shirt itself that bore the trademark.

[00:32:47] Speaker 05:
Well, if your client is unaware of any evidence of continuing use in a three-year period, what's to stop you from filing a counterclaim of abandonment?

[00:33:00] Speaker 05:
I mean, your position is that you shouldn't have filed this counterclaim earlier because you didn't know enough, right?

[00:33:08] Speaker 05:
Right.

[00:33:09] Speaker 05:
Well, you look at the record and you see no evidence of use.

[00:33:13] Speaker 05:
You look at all this stuff, the driver turns on the record, and you look at it and say, that doesn't show any use to me.

[00:33:19] Speaker 05:
It just shows a bunch of pictures of t-shirts and a bunch of pictures of labels, and that isn't enough, so I'm going to file a counterclaim of non-use.

[00:33:27] Speaker 06:
Well, that's exactly what we did, Your Honor.

[00:33:29] Speaker 06:
We waited until we actually were handed over documents and discovery.

[00:33:34] Speaker 06:
We followed up with them to say, okay,

[00:33:37] Speaker 06:
Is this everything there is?

[00:33:38] Speaker 06:
Are you supplementing your discovery?

[00:33:41] Speaker 06:
Can you piece together?

[00:33:43] Speaker 05:
As of the time you filed your answer, you had a record in front of you at that point in time.

[00:33:51] Speaker 06:
We did not.

[00:33:52] Speaker 06:
There was no evidence.

[00:33:53] Speaker 05:
Previous proceedings and what not.

[00:33:55] Speaker 06:
What that?

[00:33:56] Speaker 05:
So what you're saying is that by now, at the sort of last minute, throwing everything out in the case except from 2000 going forward, you're going to get the benefit because you didn't get some discovery for that period.

[00:34:09] Speaker 06:
Correct.

[00:34:12] Speaker 06:
The only way to show abandonment is not even through three years of consecutive use.

[00:34:16] Speaker 06:
If you, for a minute of time,

[00:34:18] Speaker 06:
abandon a trademark and don't have an intent to use it, then you abandon your trademark.

[00:34:24] Speaker 06:
I'm entitled to prove that also.

[00:34:25] Speaker 06:
He may have closed his store for a period of time and decided he wasn't going to go ahead.

[00:34:31] Speaker 03:
That's very strange.

[00:34:34] Speaker 03:
Even though two minutes later you use it?

[00:34:37] Speaker 06:
Absolutely.

[00:34:39] Speaker 06:
The claim of abandonment is based on an intent to abandon.

[00:34:43] Speaker 06:
If you have an intent to abandon and actually abandon, then you abandon.

[00:34:48] Speaker 06:
That's the law.

[00:34:49] Speaker 03:
Yes, and actually abandon it.

[00:34:50] Speaker 03:
And if you don't abandon it, then what?

[00:34:53] Speaker 06:
If you don't abandon it, then your rights continue and you have continuous use of a trademark.

[00:34:58] Speaker 06:
But again, what happens is, and why we are prejudiced in this case, is because at any point in time, if Mr. Rochka abandoned his rights, then he can no longer support... But you have no evidence?

[00:35:10] Speaker 03:
You provided no evidence of intent to abandon, an actual abandonment?

[00:35:17] Speaker 06:
Because I'm unaware of it at this point, because we haven't been able to get through the discovery to ask Mr. Rochka about what happened during that entire 13-year period of time.

[00:35:26] Speaker 06:
We don't have any evidence of consistent use other than one invoice per year that, again, we claim is not evidence of trademark use.

[00:35:37] Speaker 06:
So we're entitled to the discovery to determine that.

[00:35:40] Speaker 03:
And based on what we've... As a matter of statute, as a matter of administrative practice,

[00:35:45] Speaker 03:
As a matter of statute, you require permission to take discovery.

[00:35:51] Speaker 03:
Is that correct?

[00:35:52] Speaker 03:
Correct.

[00:35:53] Speaker 03:
And so what sort of showing in your theory do you need to make in order to obtain such permission?

[00:36:03] Speaker 06:
I'm not following.

[00:36:04] Speaker 06:
Sorry.

[00:36:05] Speaker 03:
You had to request permission for discovery.

[00:36:08] Speaker 06:
Right.

[00:36:08] Speaker 06:
We put in our request for discovery.

[00:36:10] Speaker 03:
You say, I'd like discovery, please.

[00:36:12] Speaker 03:
Right.

[00:36:13] Speaker 03:
Very truly yours.

[00:36:15] Speaker 03:
Your theory is that that's adequate?

[00:36:18] Speaker 06:
Well, it's adequate for them to make... We made the request.

[00:36:22] Speaker 06:
As part of our request, we had questions asking about continuous use.

[00:36:27] Speaker 06:
How are you using the mark on the actual goods?

[00:36:31] Speaker 06:
How are you using the mark on the goods?

[00:36:33] Speaker 06:
Are you using it consistently?

[00:36:35] Speaker 06:
So on and so forth.

[00:36:36] Speaker 06:
These questions were not properly answered.

[00:36:38] Speaker 06:
We went back and we asked for supplemental responses.

[00:36:41] Speaker 06:
In some cases we were given them.

[00:36:43] Speaker 06:
In most cases we weren't.

[00:36:45] Speaker 06:
And then as you can see at the end of the process, there's a seven page declaration giving information that we asked for the entire time during discovery.

[00:36:54] Speaker 06:
We were at a disadvantage.

[00:36:56] Speaker 06:
They knew what we wanted.

[00:36:58] Speaker 06:
They knew this was information, and it was probably responsive to the discovery request.

[00:37:03] Speaker 06:
But we didn't get that information during discovery at all.

[00:37:06] Speaker 06:
And based on that, we waited until the end of discovery to say, listen, this is all we're getting.

[00:37:10] Speaker 06:
They haven't shown use based on our request for documents to support the use.

[00:37:16] Speaker 06:
At this point, we have an abandonment claim.

[00:37:19] Speaker 06:
And no one's prejudiced at this point, because there was emotional summary judgment in the case.

[00:37:29] Speaker 06:
So essentially the case was suspended for all intents and purposes.

[00:37:33] Speaker 06:
There were six months left in discovery before, at the time when they filed the summary judgment motion.

[00:37:41] Speaker 06:
And even after the summary judgment motion was denied, was granted for class 25,

[00:37:47] Speaker 06:
The board actually opened up the case again and extended discovery again.

[00:37:51] Speaker 06:
So we would have been entitled to additional discovery at that point anyway, because there were five other classes of goods that were involved in the case.

[00:37:58] Speaker 06:
So there's no prejudice, and it just was an abuse of discretion for the judge to consider evidence from a 1996 invoice alone to deny our motion to amend.

[00:38:17] Speaker 03:
Okay, any more questions?

[00:38:20] Speaker 03:
Any more questions?

[00:38:21] Speaker 03:
Thank you.

[00:38:21] Speaker 03:
Thanks, counsel.

[00:38:23] Speaker 03:
The case is taken under submission.

[00:38:25] Speaker 03:
That concludes the argued cases on the calendar for this morning.

[00:38:32] Speaker 04:
All rise.

[00:38:35] Speaker 04:
The honorable court is adjourned until tomorrow morning at ten o'clock a.m.