STEALTH INDUSTRIES, INC.
CASTLE BRAND PRODUCTS & SERVICES SINCE 1981
7115 W. North Avenue #272
Oak Park. IL. 60302
VOICE 773/589-0340
FAX 773/589-0915
June 21 , 2006
BENJAMIN Z. RICE
LAW OFFICES OF BENJAMIN Z. RICE
PO BOX 1206
Pleasanton, CA 94566
RE: FOR SETTLEMENT PURPOSES ONLY-NOT DISCOVERABLE
Trademark-: CASTLECOPS
Application SN: 78-449,845
Dear Benjamin:
We are serving notice on you that we have filed a Request for an Extension of Time with the
United States Patent and Trademark Office to oppose your client's pending trademark
application serial number: 78-449,845 for the Trademark CASTLECOPS.
The potential opposer holds common law rights and have been using the mark CASTLE for
many years, prior to your client's use of the said mark as a Trademark, service mark and/or
tradename. We engage in an active and aggressive trademark licensing program promoting the
said mark, and thus invite your client to become a trademark licensee of ours.
STANDING
We have standing pursuant to 37 C.F.R. §2.101(b) to oppose your client's said trademark
application and to conduct extensive discovery into your client's books and records, including
depositions under oath of your client's executive officers.
"It is to be noted that the instant proceeding is an opposition and that accordingly the issue is not
whether (the opposer) owns the mark in issue or is entitled to register it, but whether it is likely
that he would be damaged if a registration of the mark were granted to apellant.
Wilson v.
Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957). Opposer is identified with the
STEALTH mark and opposer is involved with licensing the mark." See
Leo Stoller d/b/a Central
Mfg. v. York International Corporation, Opposition No. 121,420, decision dated June 4, 2003.
TRADENAME USE
The potential opposer has used the said mark as a trademark. Nothing more that trade name use
is required to bar the registration
Martahus, 3 F.3d at 421. 27 USPO2d at 185). [FN 10]. "trade
name" is ''any name used by a person for his or her business or vocation."
15 U.S.C. §1127:
National Cable Television. 937 F.2d at 1576, 1427. To establish trade name use, an "organization
need only to have used a name.... in a manner that identifies the company by that name... to the
public... no particular formality of adoption is necessary to identify trade name identification.
The potential opposer not only can establish standing, but can establish priority of use through
trade name use.
THE USPTO TRADEMARK TRIAL & APPEAL BOARD PROVIDES A PERIOD OF
TIME FOR PARTIES TO SETTLE
The Board encourages parties to settle registerability issues prior to filing a Notice of Opposition.
District Courts throughout the land encourage parties to settle complex trademark litigation
without getting into the actual merits of the claims, on the grounds that parties will never settle a
controversy outside of court decision if the parties insist that their claims have to be settled on
the merits. In the case at bar, the projected cost to a party to litigate a matter through the Federal
Circuit is in excess of
$150,000 (One Hundred and Fifty Thousand Dollars) in fees and costs,
including a period of up to five years of litigation, without any party receiving a guaranteed
positive result, notwithstanding the merits of either party's claims. In view of the above, the
Board strongly encourages parties to settle registerability issues between themselves, rather that
through a decision by the TTAB. This is why the potential opposer is attempting to reach out to
the applicant during the extension period allowed by the Board to achieve an amicable settlement
between the parties.
It should be noted for the record that the potential opposer in this case has engaged in more
oppositions and petitions to cancel over the last
30 years than any other entity currently
practicing before the TTAB. As well known to the applicant, an opposer in any opposition
proceeding has the clear and distinct procedural advantage in trademark disputes, in the there is
an automatic ''cloud'' placed over the applicant's title to its mark, which will not evaporate until
the final court, the Federal Circuit, speaks. After four to five years of litigation before the Board,
most applicants will simply lose interest, go out of business, or find new management which
loses interest in the said application. In addition, the applicant will normally not choose to invest
much of its time and funds promoting a mark which carries a dark "cloud" . Consequently, an
applicant would be well advised to merely tile an express abandonment of an application rather
than continue to invest in a trademark application that may never be registered. This is what we
encourage the applicant to do in this case. No money has to exchange hands if the applicant
chooses to file an express abandonment with prejudice of the said application at issue within ten
days.
This is an easy-case to settle today.
Prior to filing our Notice of Opposition, the potential opposer is placing three reasonable
settlement proposals on the table which would amicably resolve this controversy when accepted
by your client. The first is an express abandonment, attached hereto, in which your client agrees
to abandon its trademark application. The second is a 2% royalty-based Trademark license
Agreement which will allow your client to use the said trademark under License. If your client
would like to receive a draft of the said trademark license agreement, we will be happy to
provide it. The third agreement is a consent to register, attached hereto. Your client is invited to
make a reasonable monetary settlement offer as consideration for the said consent to register
agreement.
Any of these said settlement agreements will avoid the need of a long and costly opposition
proceeding and will allow the parties to resolve the said controversy amicably.
lt should be noted that the potential opposer will
not require the applicant, nor should the
applicant require same of the potential opposer, to engage in any pretrial discovery whatsoever,
as this has never been proven to be beneficial in resolving a registerability issue outside of a
TI'AB decision. The potential opposer will not participate in any pretrial discovery. If the
applicant is interested in settling this matter prior to the filing of a Notice of Opposition, the
opposer has given the applicant three very easy methods upon which this case can be quickly
resolved. These settlement offers are valid until July 15, 2006.
Under the circumstances, we do not believe that you would have any objection to an additional
90 day extension of time to oppose. We are requesting your consent to such a request. If we do
not hear from you to the contrary within 15 days, we will assume that we have your consent to
the 90 day additional extension of time and we will file the said stipulated 90 day additional
extension with the Board. Please contact us immediately if you have any objection to are request
for an additional 90 day extension with the Board to file our Notice of Opposition.
Most cordially,
Leo Stoller
7115 w. North Avenue
Oak Park, I.L. 60302
Tel: (773) 589-0340
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