Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA384150Filing date: 12/16/2010

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92052963

Party PlaintiffVertigo Holdings, LLC

CorrespondenceAddress

JOSEPH A LOPEZNOVIAN & NOVIAN LLP1801 CENTURY PARK EAST, SUITE 1201LOS ANGELES, CA 90067UNITED STATESm.riedel@conklelaw.com, trademark@conklelaw.com, joseph@novianlaw.com

Submission Motion to Suspend for Civil Action

Filer's Name Joseph A. Lopez

Filer's e-mail joseph@novianlaw.com

Signature /Joseph A. Lopez/

Date 12/16/2010

Attachments Amended Motion to Suspend.pdf ( 24 pages )(1071021 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

VERTIGO HOLDINGS, LLC Petitioner, v. BERTIGO, INC. Registrant.

Proceeding No. 92052963 Registration No. 3487580 AMENDED MOTION TO SUSPEND

AMENDED MOTION TO SUSPEND THE PROCEEDING

Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), Petitioner VERTIGO

HOLDINGS, LLC (“Petitioner”) hereby requests that the Trademark Trial and Appeal

Board (the "Board") suspend this proceeding until the final determination of Vertigo

Holdings, LLC v. Bertigo, Inc. currently pending before the United States District Court,

Central District of California bearing case number CV10 9500 GAF (AGRx) (“Civil

Action”), because the Civil Action will have a direct bearing on the instant proceeding.

In response to the Board’s order dated December 16, 2010, Petitioner hereby

includes a conformed copy of the complaint filed in the Civil Action as “Exhibit A.”

FACTUAL BACKGROUND

Petitioner is the owner of the exclusive rights to the family of Vertigo Marks

represented by several registered and pending Vertigo marks and applications in the

United States including, without limitation: (1) Registration No. 1937397 in class 25 for

“jackets, pants, skirts, coats, underwear, shorts, bras, swimsuit,” issued by the USPTO on

November 21, 1995, with a date of first use in November 1984, which mark includes a

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Section 15 affidavit for incontestability; (2) Registration No. 2809622 in class 9 for

“eyeglasses, sunglasses, and parts thereof,” class 14 for, “jewelry, earrings, necklaces,

bracelets, rings,” class 18 for “handbags, wallets, briefcases”, and class 25 for “hats,

shoes, leather clothing, namely, leather jackets, leather coats, leather pants, leather skirts,

belts, scarves, furs, namely, fur coats, fur jackets fake fur coats and jackets and trimmings

made of fur and fake fur for various items of clothing” issued by the USPTO on February

3, 2004, which mark includes a Section 15 affidavit for incontestability; (3) Registration

No. 2987946, in class 3 for “Perfumes, toilet water, lotions for the skin, face, hands and

body; bath gels” issued by the USPTO on August 23, 2005, with a date of first use of

December 7, 2004; (4) Registration No. 2456962 in class 18 for “Handbags, tote bags,

garment bags, shopping bags, cosmetic bags sold empty, pouches, travel cases, train

cases” issued by the USPTO on June 5, 2001, with a date of first use in September 14,

1995, which mark includes a Section 15 affidavit for incontestability; (5) Registration

No. 2102606 in class 25 for “men's and women's sportswear, namely, shirts, blouses and

trousers; jackets, pants, skirts, coats, underwear, shorts, bras, swimsuits, shoes, belts,

scarves, furs, namely, fur jackets, fur coats and fur trimmings for clothing and fake furs,”

issued by the USPTO on October 7, 1997, with a date of first use in November 1984,

which mark includes a Section 15 affidavit for incontestability; and (6) Registration No.

2064529 in class 41 for, “retail store services featuring clothing, handbags and

accessories,” issued on May 27, 1997, with a date of first use in December, 1984, which

mark includes a Section 15 affidavit for incontestability.

Registrant Bertigo, Inc. (“Registrant”) is the owner of Registration No. 347580 in

class 25 for “clothing, namely, shirts, trousers, pants, shorts, shirts, sweaters, tops, t-

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shirts, jackets, blazers, suits, ties, belts, underwear, swimwear, caps, boxers, dresses,

skirts, joggings suits, blouses,” claiming a date of first use of October 1, 2006.

In or around mid-2010, Petitioner first learned of Registrant’s infringing Bertigo

Mark by being informed of it from several outside sources. Petitioner thereafter filed a

Petition for Cancellation against Registrant’s Bertigo Mark before the Board bearing

Cancellation No. 92052963 citing priority and likelihood of confusion under Trademark

Act section 2(d) (the “Proceeding”).

Petitioner and Registrant have engaged in settlement negotiations and entered into

two stipulations to extend Registrant’s time to answer before the Board. Petitioner

thereafter found itself greatly dissatisfied with both the contents of Registrant’s

settlement communications and the proposals contained therein. Petitioner has therefore

filed the Civil Action which prays for, among other relief, a declaration from the court as

to the superiority of Petitioner’s Vertigo Marks and the rights therein relative to

Registrant’s Bertigo Mark, and an order canceling Registrant’s Bertigo Mark.

ARGUMENT

Where a party to a case pending before the Board is also involved in a civil action

that may have a bearing on the Board proceeding, the Board may suspend the proceeding

until the final determination of the civil action. 37 CFR § 2.117(a); TBMP § 510.02(a).

This is because “a decision by the United States District Court would be binding on the

Patent Office whereas a determination by the Patent Office as to respondent's right to

retain its registration would not be binding or res judicata in respect to the 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). A court's decision regarding the right to registration

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is binding on the Trademark Trial and Appeal Board. The Seven-Up Co. v. Bubble Up

Co., 136 U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re Alfred Dunhill Ltd., 224

U.S.P.Q. 501, 503 (T.T.A.B. 1984).

Petitioner and Registrant are both parties to the Civil Action, which is currently

pending before the United States District Court, Central District of California, involving

the very trademarks that are at issue in the Proceeding. In the Civil Action, the District

Court will determine the rights of Petitioner and Registrant with regards to their

respective marks. This type of determination will directly affect the resolution of the

issues before the Board. See The Other Tel. Co. v. Conn. Nat '1 Tel. Co., Inc., 181

U.S.P.Q. 125, 126-7 (T.T.A.B. 1974).

CONCLUSION

WHEREFORE, Petitioner respectfully requests that the Board stay this

Proceeding pending the final determination of the Civil Action.

Dated: December 16, 2010

/Joseph A. Lopez/ JOSEPH A. LOPEZ Attorney for Petitioner Novian & Novian, LLP 1801 Century Park East Suite 1201 Los Angeles, CA 90067 Phone: (310) 553-1222 Fax: (310) 553-0222 joseph@novianlaw.com

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EXHIBIT A

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CERTIFICATE OF SERVICE

This is to certify that a copy of the foregoing AMENDED MOTION TO SUSPEND was served on Registrant on December 16, 2010 as follows: BY U.S. MAIL Bertigo, Inc. 5875 Blvd. Cavendish, Apt 209 Montreal H4W2X9 Canada /Claire Paterson / CLAIRE PATERSON Paralegal