Thursday, July 27, 2006

Google Fires Back: Bases Dismissal Motions on TTAB Stoller Sanction Order

The shock waves from the Board's July 14th Order sanctioning Leo Stoller are reverberating throughout TTAB-land. (See TTABlog here). Just put the word "Stoller" in the "Correspondent" box at TTABVUE, and you may peruse the hundreds of Stoller extension requests that have been denied or vacated. Likewise, oppositions that sprung from these Stoller extensions of time are being dismissed, pursuant to the Board order. [For example, see Opposition No. 91170951, entitled Central Mfg., Inc. d/b/a Central Mfg. Co v. Two Guys Publications, Inc., dismissed on July 24, 2006 (Order here).]

Google, Inc. has taken a proactive approach. Rather than wait for the Board to dismiss Stoller's Opposition No. 91170256, Google filed its own motion for dismissal on July 24th. (see motion paper here). As reported at the TTABlog here , Stoller, through a company dubbed Central Mfg. Co. (Inc.), filed a half-baked opposition to Google's application to register the mark GOOGLE for "toys and sporting equipment, namely plastic exercise balls." Google's application was published for opposition on November 1, 2005. On November 27th Stoller obtained a 90-day extension of time to oppose, and he filed the notice of opposition on March 1, 2006. By the time Google filed its motion to dismiss based upon the Board's sanction order, 40 pleadings and other papers had been filed by the parties in that proceeding. [That proliferation of paperwork is surely a Stoller trademark!]

But Google didn't stop there. On July 24th it also moved to dismiss Stoller's quixotic petition to cancel the GOOGLE service mark registration. Since the filing of the petition on May 1, 2006, some 26 pleadings and other filings have been generated, the latest being Google's "Motion to Dismiss Based Upon Preclusive Effect Of The Board's July 14, 2006 Sanctions Order."

Google argues that the cancellation proceeding should be dismissed "under the doctrine of collateral estoppel (or issue preclusion)," based upon the Board's finding that the claims of Stoller and his companies to "proprietary rights in the marks that they asserted in connection with [the 1800] extension requests were 'baseless' and unsupported by any evidence."

"One of Stoller's extensions of time that was the subject of the Board's Sanctions Order was to oppose an application for registration filed by Registrant for the GOOGLE mark. Petitioner subsequently filed a Notice of Opposition against that application. As Petitioner itself has claimed, Petitioner relies in this proceeding on the same alleged common law rights to 'Google' that it asserts in the Opposition proceeding. The Board's finding that Petitioner has no colorable claim for a belief of damage and has no basis for claiming any proprietary rights accordingly apply to -- and defeat -- Petitioner's alleged standing here as well. This proceeding should be dismissed as a result."

The res judicata effect of the Board's July 14, 2006 Order is fertile ground for further discussion. Google, Inc., as explained above, is in a particularly good position to seek to extend the effect of the Order beyond the realm of the "Stoller 1800."

TTABlog comment: Why do these developments remind me of the Wayne Rooney red card episode in the England v. Portugal World Cup quarter-final? Stoller was red-carded? Stoller is being kicked while he's down? Rooney looks like a young Stoller? All of the above?

Text Copyright John L. Welch 2006.


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