UPDATE at TTAB in Virginia (Petition to Cancel by Denver Urban Homesteading/Bertini)

TTAB has just resumed its proceedings, de-consolidating the two cases and  suspending Mr. Bertini’s case until after the W&S case is decided (due to the fact that he has delayed the case moving forward by his failure to consult with the lead attorney). In addition, it granted,in part, DI’s motion to dismiss fraud charges.
http://ttabvue.uspto.gov/ttabvue/v?pno=92053837&pty=CAN&eno=77
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James Bertini’s co-petitioners do not support his legal position on the Petition to the Director

Denver’s co-petitioner, Winston Strawn, attorney  for Erik Knutzen and Kelly Coyne, filed its responses today at TTAB regarding Bertini’s Petition to the Director. Winston Strawn does not agree with James Bertini’s legal position regarding the Petition to the Director and a single hearing for a mark on the supplemental register. They disagree with it just as the DI attorneys don’t agree with it.

In addition, Winston Strawn  states it will file a separate motion for summary judgment should Denver not agree to submit one brief as the Board has stated should be done in a consolidated proceeding. Both James Bertini and Winston Strawn are trying to cancel the DI trademarks.

Not even James Bertini/Denver Urban Homesteading’s  co-petitioners support Denver’s legal premises.
Read it here:

http://ttabvue.uspto.gov/ttabvue/v?pno=92053837&pty=CAN&eno=75

DERVAES INSTITUTE Did NOT Trademark a Movement!

Many people have accused Dervaes Institute of trademarking the movement or the idea behind Urban Homesteading. That is false info on the net. Here is the truth. Also, note that Rodale trademarked the term “Organic Gardening” during the height of the organic gardening movement. He attached the term to his Magazine (goods or service). The DI have attached the term to class 41 (website, blogs, educational services, etc.)

Q. Can you trademark an idea?

I didn’t think you could but people are saying OWS trademarked an idea and a movement. Is it possible to trademark an idea or a movement?

A. (4 attorneys basically said the same thing–NO. Here are two excerpts)

1.You cannot trademark or copyright an idea. If you put a name on an idea and attach that name to a product or service, names on products or services can be trademarked (or obtain a service mark.)

2. It depends on how you define “idea,” but generally speaking, trademark protection is not available for abstract concepts that are not connected with the sale of goods or services. That is because trademarks are used in commerce as source-identifiers. That is, trademarks are words, phrases, symbols, designs, or combinations thereof, which identify and distinguish the source of the goods or services of one seller from those of others. In other words, trademarks help consumers identify where (i.e. from what company or merchant) the product or service is coming from.

Thus, the people attempting to register the phrase “Occupy Wall Street” cannot simply register the “idea” of Occupy Wall Street. Rather they are required to provide the U.S. Patent and Trademark Office with an identification of goods. That is, they have to tell the folks at the PTO which products and/or services they are offering or intend to offer under the mark “Occupy Wall Street.”

http://www.avvo.com/legal-answers/can-you-trademark-an-idea–764621.html

James Bertini’s Motion to Compel Dervaes Institute’s Deposition Transcripts from TTAB DENIED

This is from the judge at the second lawsuit Bertini filed against DI in Denver Federal Court. The first one he filed is at the TTAB in Virginia and it is still ongoing.Read the entire Order by the Denver Federal Court Judge here.

The following are a few excerpts from the order:

Plaintiff, represented by attorney James Bertini who is also the owner of Plaintiff Denver Urban Homesteading, LLC, is also a party to the proceedings before the TTAB. Neither party herein disputes that Mr. Bertini had the opportunity to attend each of the questioned depositions in person during the TTAB proceedings and to obtain transcripts of the depositions.1 (Resp at 6.) Mr. Bertini chose not to attend the depositions “of my own volition” (Mot. at 5) because he would not agree to the stipulations for confidentiality governing the taking of the depositions entered into by lead counsel for the consolidated cases before the TTAB. 

Now Mr. Bertini is attempting to gain access to the transcripts of the eschewed depositions, which have been marked both confidential and highly confidential in the TTAB matter, without the concomitant obligation to abide by the confidentiality provisions to which the parties involved in taking the depositions stipulated in the TTAB matter. Such an end-run is not only improper; it would also violate the confidentiality provisions in the TTAB case. 

Further, Plaintiff is free to take his own depositions of each of the Defendants, including a Rule 30(b)(6) deposition of the corporate Defendant, in this case without the confidentiality stipulations agreed to by other counsel in the TTAB matter. Plaintiff argues that “[i]t would truly be a hardship and completely unnecessary for Plaintiff to reproduce these transcripts as it would mean closing our business for a week, flying to Los Angeles and hiring a stenographer, not to mention the burden it would create on Defendants themselves.” (Mot at 7) The court wholly disagrees. This is precisely the path which Plaintiff and its counsel have chosen to take. Rather than participate in depositions of the defendants and members of their household when they were available in the TTAB matter, albeit subject to stipulations with which Mr. Bertini disagreed, Plaintiff has elected to not attend the depositions during the TTAB matter and to instead take the depositions in this case unhampered by the stipulations of lead counsel in the TTAB matter. This court will honor that voluntary election.

Bertini’s Motion to Compel Answers in the ongoing TTAB (Trademark Trial and Appeal  Board) cancellation proceeding in Virginia was denied last year. See below.

Dervaes Institute Opposes Denver Urban Homesteading’s Petition to the Director

Dervaes Institute files MEMORANDUM IN OPPOSITION TO PETITIONER DENVER
URBAN HOMESTEADING’S PETITION TO THE DIRECTOR OF THE USPTO

DI states: “This latest filing, the instant Petition to the Director, is one of many papers filed by Petitioner Denver in an attempt to ‘throw anything against the wall to see what sticks.’”

DI argues 3 points:
1. Bertini lacks standing to do a Petition to the Director
2. DI also states that Bertini’s request to allow his Motion for Summary Judgment to go forward is now MOOT due to his 2 attempts to amend his cancellation proceeding.
3. There has NOT been a procedural error or abuse of discretion by the Interlocutory Attorney with regards to its consolidation order and its denial of Bertini’s Motion for Summary Judgment.

DI’s attorney also states:”Petitioner [Bertini] disingenuously argues that the Director should grant its Petition and cancel Registration No. 3,633,366, due, in part, to the injury of “struggling with [Registrant’s] multiple law firms” to cancel the instant registration. Petitioner, however, is the root cause of the protracted litigation of this matter, not only before the Board but in federal court. See Civil Action No. 1:13-cv-00917-REB-KMT, filed by Petitioner[Bertini] on April 10, 2103, United States District Court, District of Colorado. The Petitioner {Bertini] has had to “struggle” with Registrant’s [DI] multiple law firms only because it filed a federal lawsuit, forcing Registrant to retain additional counsel to represent itself before the U.S. District Court in Colorado. Registrant is now forced to litigate this issue on two fronts, expending resources it does not have, since Petitioner chose to file a federal lawsuit seeking the same relief as it is seeking before the Board.

Petitioner [Bertini] now seeks yet another forum to argue its Petition to Cancel. As the instant Petition to the Director is untimely, moot and not based on issues proper for review by the Director, and the Petitioner lacks standing, the instant Petition to Director should be denied.”

There is a lot of legalese in this paper, and you can read it for yourself here http://ttabvue.uspto.gov/ttabvue/v?pno=92053837&pty=CAN&eno=67

. DI concludes with this statement:”III. CONCLUSION
Given, the addition of numerous new allegations of fraud in its latest Amended Petition to Cancel, filed August 31, 2013, Registrant [DI] should have the opportunity to substantively argue its case before the Board and not have the matter adjudicated by the Director, as Petitioner[Bertini] requests. Because the subject matter of the instant Petition is not appropriate for review by the Director, the Petitioner[Bertini] lacks standing, the Petition itself is untimely and moot, and there was no error or abuse of discretion by the Board, the instant Petition should be denied.”

Disclaimer:  This site is for educational purposes only.  It is not meant to substitute for professional legal advice.  Always seek the advice of an attorney when in doubt about your particular situation.  This site does not represent Dervaes Institute or the Dervaes family nor does it make any official statements on the Institute’s or the family’s behalf.

Attorney James Bertini alleges fraud based on a typo and his misunderstanding of trademark law.

DERVAES INSTITUTE FILES MOTION TO DISMISS DUH’s AMENDED PLEADING for failure to state a claim.  This is at the Trademark proceeding dated September 25, 2013. All other references can be found there under respective number found here.  DI also filed Motion to Dismiss at the Colorado Federal court a few months ago against Bertini’s lawsuit in that court which has yet to be decided. Basically, a Motion to Dismiss means there is nothing to go to court over because the one bringing the suit has not and cannot prove its case and the lawsuit should be thrown out.

Bertini originally stated to the Board that it wanted to amend his fraud pleading by stating that  DI  “knew”it committed fraud  as required by law.  However, DI attorney states in its Motion :
“Petitioner [DUH] filed the instant Amended Petition to Cancel on August 31, 2013. Despite, the
Board granting its Motion to Amend, in part, due to Petitioner’s assertion that it was not adding
new allegations to its Petition to Cancel, Petitioner has refashioned its fraud claims to assert over 80 numbered paragraphs of entirely new allegations. See Petition to Cancel, August 31, 2013,… “
That’s EIGHTY paragraphs of  NEW allegations!   Considering that no new evidence has come forward (as discovery has long been closed) and that the Board told Bertini  again that all his allegations for fraud were useless and not material, this seems like a fishing expedition to me to see if this will somehow work now for fraud. Bertini has changed his position on what the alleged fraud is, i.e., in part from the well-known “domain history” at one time posted on his website to these “new” allegations.However, the DI Motion to Dismiss shows that these new allegations are useless, too, as Bertini “misconceives” the record regarding use of specimens and date of first use, bases his fraud claim on a “typo”in a boiler-plate form used by former attorney Pelton while Bertini’s other new allegations do not support a fraud claim under the law either.I noticed that Bertini has dropped all references o the “domain history” of urbanhomesteading.com which was used to show fraud to the Board and which the community believed was so “factual” and, indeed, fraud when it wasn’t!  The “domain history” has since been removed from a prominent place on his website.

Also filed at the same time as the  DI Motion to Dismiss were Answers from DI to each of the new allegations in  DUH’s Amended petition.  The last part of this Answer states:
DEFENSE
“Despite its new allegations, Petitioner [known throughout as DUH] has not made out a legally sufficient claim of fraud. Although Petitioner alleges third party use of the term “urban homesteading”, it has not alleged that there was any trademark use of “Urban Homesteading” superior to Registrant’s [known throughout as DI]. The pleaded facts, even when construed in a light most favorable to Petitioner, do not support a key element of Petitioner’s claim, i.e., that Registrant knew when it filed its application that others had a right to use the mark in the United States. Mere awareness of others use of the wording “urban homesteading” does not constitute fraud. Moreover, Petitioner fails to allege facts that alleged misrepresentations were actually false and in some cases, material to Registrant’s application. Thus, the pleaded facts do not support Petitioner’s claims of fraud and those claims must be dismissed.”

Also, here are excerpts from Dervaes Institute’s  Motion to Dismiss
1. Regarding DUH’s fraud allegation based on a “typo”:”To address the most implausible allegation first – the typo or omission, clearly inadvertently
made by Registrant’s [DI] former counsel in the Allegation of Use, cannot support an allegation offraud. Petitioner is correct in alleging that no Notice of Allowance was entered into the record inApplication Serial No. 77326565, but the failure to delete the reference to a Notice of Allowance from a boilerplate Allegation of Use by Registrant’s former counsel does not raise this
“misstatement” into a knowingly made false misrepresentation intended to deceive the USPTO.
Since the USPTO issues the Notice of Allowance, it is hard to see how it would be deceived in
this regard. Also, Petitioner has failed to state how this misstatement materially affected
Registrant’s Application Serial No. 77326565. Petitioner only states that without an Allegation of Use, registration would not follow, but that does not allege how the alleged misrepresentation, the “typo”, itself was material to the granting of the registration. Just saying this misstatement is material (See Amended Petition, ¶ 83) does not make it so. “While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations.” Iqbal, 129 S. Ct.
1937, 1950 (2009).”

2.  Regarding  the statement DI had at one time on its website a statement about it knowing  others were using the mark:

“Moreover, even if construed as true and that these statements were made by Jules Dervaes,himself, or were written as official statements by the Dervaes Institute, these statements do not demonstrate knowledge of superior rights by third parties to use the mark rendering Registrant’s Declaration a false misrepresentation. The statements attributed to Registrant from the third party website, include in relevant part, that ‘We filed our trademarks for the purpose of maintaining standards and for the protection of the term and concept ….We began to see the terms ‘Urban Homestead’ and ‘Urban Homesteading’ used as ‘green-washed bandwagon’ terms solely for profit – even mentioned in an glossy magazine advertisement of a car …. In addition, more and more people began to use the term for profit….So, as the popularity of…Urban Homesteading increased and began to label everything from television productions to big
agriculture products, we couldn’t shake the warning bells in our minds. The establishment of…Urban Homesteading needed to be protected….’ See Amended Petition, Exhibit J. Contrary to evidencing knowledge of superior rights by others to use the mark at issue, these statements show that Registrant believed that it had prior rights in the mark that it needed to register and that others using the mark were using the mark subsequent to its established use. Moreover, the statements are vague and do not state the specific use to which the mark is being attached. The only specific and definite statements of use assert the mark is being used to advertise a “car”, for “television productions” and “big agriculture products”. None of these uses pertain to the class of goods and services for which Registrant applied for its mark, specifically educational services.
Even accepting these statements as representations by Dervaes, as long as the declarant
reasonably believed and was claiming in his declaration that Registrant had superior trademark rights to the wording URBAN HOMESTEADING to that of other parties who might have used or might be using that wording, Registrant’s mere awareness of other uses of wording does not constitute fraud. See Stocker v. General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385 (TTAB 1996).”

3. Regarding the allegedly false specimens DI submitted to the USPTO as (fraudulent) proof of use in commerce:

” Petitioner[DUH]  misconceivesthe requirements for a specimen in a trademark application. The specimen is not cited to show first use, but use in commerce. Thus, the specimen must show use in commerce at the time theAllegation of Use is filed, as is the case with the specimen at issue – a fact Petitioner does not challenge. Therefore, Petitioner’s claim of fraud on these allegations must also fail.”

More later…

Disclaimer:  This site is for educational purposes only.  It is not meant to substitute for professional legal advice.  Always seek the advice of an attorney when in doubt about your particular situation.  This site does not represent Dervaes Institute or the Dervaes family nor does it make any official statements on the Institute’s or the family’s behalf.