Bank v. Al Johnson's Swedish Restaurant & Butik - Petition For Certiorari
Bank v. Al Johnson's Swedish Restaurant & Butik - Petition For Certiorari
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TODD C. BANK,
Petitioner,
v.
AL JOHNSON’S SWEDISH
RESTAURANT & BUTIK, INC.,
Respondent.
_____________________
TODD C. BANK
TODD C. BANK,
ATTORNEY AT LAW, P.C.
119-40 Union Turnpike
Fourth Floor
Kew Gardens, New York 11415
(718) 520-7125
[email protected]
i
LIST OF PARTIES AND
RULE 29.6 DISCLOSURE
STATEMENT OF DIRECTLY
RELATED PROCEEDINGS
ii
TABLE OF CONTENTS
Page
STATEMENT OF DIRECTLY
RELATED PROCEEDINGS . . . . . . . . . . . . . . . . . . . ii
TABLE OF AUTHORITIES . . . . . . . . . . . . . . . . . . vi
INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
ORDERS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
STATEMENT OF JURISDICTION . . . . . . . . . . . . . 1
iii
Page
Table of Contents (cont’d)
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
APPENDIX
iv
Page
Table of Contents (cont’d)
v
TABLE OF AUTHORITIES
Page
CONSTITUTIONAL PROVISIONS
15 U.S.C. § 1052(a) . . . . . . . . . . . . . . . . . . . . . . . 2, 17
15 U.S.C. § 1062(c) . . . . . . . . . . . . . . . . . . . . . . . . . . 7
15 U.S.C. § 1063 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
15 U.S.C. § 1064 . . . . . . . . . . . . . . . . . . . . . . 5, 6, 7, 8
15 U.S.C. § 1064(1) . . . . . . . . . . . . . . . . . . . . . . . . . . 7
15 U.S.C. § 1064(2) . . . . . . . . . . . . . . . . . . . . . . . . . . 7
15 U.S.C. § 1064(3) . . . . . . . . . . . . . . . . . . . . . . 3, 6, 7
15 U.S.C. § 1064(4) . . . . . . . . . . . . . . . . . . . . . . . . . . 7
15 U.S.C. § 1064(5) . . . . . . . . . . . . . . . . . . . . . . . . . . 7
15 U.S.C. § 1120 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . 2
37 C.F.R. § 2.111 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
vi
Page
Table of Authorities;
Statutes and Rules (cont’d)
CASES
Matal v. Tam,
137 S. Ct. 1744 (2017) . . . . . . . . . . . 4, 9, 17, 18, 19
vii
Page
Table of Authorities; Cases (cont’d)
Ritchie v. Simpson,
170 F.3d 1092
(Fed. Cir. 1999) . . . . . . . . . . . . . . . . . . . 6, 9, 12, 13
Roth v. Green,
466 F.3d 1188 (10th Cir. 2006) . . . . . . . . . . . . . . 15
Warth v. Seldin,
422 U.S. 490 (1975) . . . . . . . . . . . . . . . . . . . . . . . . 4
Whitmore v. Arkansas,
495 U.S. 149 (1990) . . . . . . . . . . . . . . . . . . . . . . . . 4
viii
INTRODUCTION
ORDERS BELOW
STATEMENT OF JURISDICTION
1
On December 20, 2019, Bank filed a Petition for
Rehearing with Suggestion for Rehearing En Banc,
which the Court of Appeals denied on January 31,
2020.
15 U.S.C. § 1052(a)
2
15 U.S.C. § 1064(3)
3
REASONS FOR GRANTING THE PETITION
4
standing based upon disparagement, he alleged, with
respect to the merits, that the challenged trademark,
which “consists of goats on [a] grass roof,” Appx. A, 2a
(additional quotation marks omitted), is functional
because of factors unrelated to disparagement, i.e.,
that, “[t]he primary use of the [m]ark[] is as a form of
entertainment that increases, to customers, the appeal
of [Respondent]’s [restaurant],” Bank’s TTAB Petition,
¶ 5, that, “[t]o whatever extent the [m]ark[] serve[s] as
identification with respect to [Respondent’s restaur-
ant], such service is not the primary effect of the
[m]ark[], and such service pales in comparison to the
provision, by the [m]ark[], of entertainment that
increases, to customers, the appeal of the [restaurant],”
id., ¶ 6, that, “[t]he use of the [m]ark[] as a form of
entertainment that increases, to customers, the appeal
of the [restaurant] is unique[,] . . . functional[,] . . .
[and] superior to other methods.” id., ¶¶ 7, 8, 9, and
that, “[t]he placement of goats on a grass roof negates
or ameliorates, due to the goats’ grazing, the need to
cut the grass, and is thus economically advantageous.”
Id., ¶ 10.
5
be the source of alleged damage, but, rather, that the
mere existence of a mark i.e., its registration, be that
source.
6
that misrepresentation, but, rather, by the existence,
i.e., the registration, of the mark because he wants to
use the mark, but the registration prohibits him from
doing so and he is therefore damaged “by the
registration of [the] mark.” 15 U.S.C. § 1064. The peti-
tioner clearly would have standing even though the
basis of his standing does not correlate to the basis of
the merits of his challenge.
7
894 F.3d 1015 (9th Cir. 2018):
***
8
In contrast to Sections 13 and 14 of the Lanham
Act, Section 38, 15 U.S.C. § 1120, does require a corre-
lation between standing and the merits, as that
provision states: “[a]ny person who shall procure
registration . . . of a mark by a false or fraudulent
declaration or representation . . . or by any false
means, shall be liable in a civil action by any person
injured thereby for any damages sustained in conse-
quence thereof.” 15 U.S.C. § 1120 (emphases added).
Thus, “it is not enough for the plaintiff merely to
establish fraud in the registration of the trademark;
the plaintiff must also show that [it] sustained some
damage in consequence of the fraud.” Virginia Poly-
technic Inst. & State Univ. v. Hokie Real Estate, Inc.,
813 F. Supp. 2d 745, 755 (W.D. Va. 2011) (emphasis
added; citation and quotation marks omitted).
9
B. Petitioner was not Deprived of
Standing Merely Because, Accord-
ing to His Theory of Standing, There
Might be a Large Number of Trade-
marks that he Could Challenge
10
at 9, quoting Appx. B, 20a, all of the marks of which
Bank would have standing to challenge if he had
standing to challenge the mark at issue. First, Bank
quoted the following from the TTAB’s Order:
11
animal that is the subject of such mark,”
[Bank’s TTAB Petition], ¶ 1 [], and that
“[t]he demeaning of animals in the
manner set forth in the previous para-
graph is offensive to Bank and denigrates
the value he places on the respect, dig-
nity, and worth of animals,” id., ¶ 2 [],
might also apply to other marks does not
deprive Bank of standing. In Ritchie, this
Court held that the petitioner had stand-
ing to oppose “the trademarks O.J. SIMP-
SON, O.J., and THE JUICE,” Ritchie,
170 F.3d at 1093, based upon:
12
Id. at 1097 (emphases added). Just as the
petitioner in Ritchie had standing even
though the number of marks that could
have offended him was as limitless as the
imagination, and just as he was concern-
ed solely with the mere existence of the
opposed marks, rather than with their
intended uses, i.e., “with a broad range of
goods, including figurines, trading cards,
sportswear, medallions, coins, and pre-
paid telephone cards,” id. at 1093, Bank,
who is analogously situated, likewise has
standing.
13
for, inter alia, standing. Mr. Bank was
afforded the opportunity to revise his
petition and remedy the standing defect,
which he did not do. Despite the fact that
Mr. Bank was informed by the TTAB that
his disparagement claim was based on an
unconstitutional and stricken section of
the Lanham Act, he raises it again before
this court. Based on these facts and our
analysis, Mr. Bank’s appeal is frivolous.
See Finch v. Hughes Aircraft Co., 926
F.2d 1574, 1583 (Fed. Cir. 1991) . . . .
Accordingly, we grant Swedish Restaur-
ant’s motion for costs and attorney fees,
including the costs and fees incurred in
relation to the parties’ sanctions motions,
and deny Mr. Bank’s motion for sanc-
tions.
14
than the district court,” citing Roth v. Green, 466 F.3d
1179, 1188 (10th Cir. 2006), and In re 60 E. 80th St.
Equities, Inc., 218 F.3d 109, 118, n.4 (2d Cir. 2000)
(emphasis added)).
15
More importantly, however, Bank addressed each of
the bases upon which the TTAB made its ruling and
neither ignored, nor failed to rebut, authority against
his position, the only such authority having been
Doyle, which, again, was not binding on the Court of
Appeals. See Bank Pr. Br. at 12-13. Indeed, Bank
should have prevailed on the appeal.
16
lous appeal and misconduct before us
merit sanctions.
17
the extent that Mr. Bank relies upon
disparagement either as the grounds for
his petition or . . . to establish his stand-
ing, the argument is without merit after
Tam.
18
except bold-only emphases; citations omitted)); id. (“as
acknowledged by Petitioner, the only ground for
cancellation is the claim of functionality” (emphases
added)); id., 19a (“Petitioner may not rely upon allega-
tions that the involved mark is personally offensive
to him to plead his standing to assert a claim that the
involved mark is functional” (emphases added;
footnote omitted)).
CONCLUSION
Respectfully submitted,
TODD C. BANK
TODD C. BANK,
ATTORNEY AT LAW, P.C.
119-40 Union Turnpike
Fourth Floor
Kew Gardens, New York 11415
(718) 520-7125
[email protected]
APRIL, 2019
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