California Federal Judge Reprimands Bertini for Forum Shopping

Dervaes filed a response (docket entry 103) to the  CA Judge’s Order to inform the Trademark Trial and Appeal Board (“TTAB”) in Virginia  that the  CA judge wants TTAB to proceed while the California lawsuit filed by Bertini is stayed. Of interest is the fact that Dervaes filed the CA Judge’s ruling regarding Rubio’s victory in her Motion for Summary Judgment (see post  below). Here is an excerpt:

More importantly, the Court concludes that Plaintiff’s [Bertini’s] conduct has not been reasonable or in good faith.
Plaintiff is merely forum shopping after receiving unfavorable rulings from the Trademark Trial and
Appeal Board and the United States District Court for the District of Colorado. See Mitchell v.
Frank R. Howard Memorial Hospital, 6 Cal. App. 4th 1396, 1407-1408 (1992) (“[Equitable tolling] is
certainly not available to a plaintiff who engages in the procedural tactic of moving the case from
one forum to another in the hopes of obtaining more favorable rulings.”“).

My note: Apparently, Judges do not like multiple filings in different courts. Also, to date, the Dervaes have NOT sued anyone!  The lawsuits mentioned above have been filed by Bertini.…

Mignon Rubio’s Motion for Summary Judgment is GRANTED

Mignon Rubio’s Motion for Summary Judgment is GRANTED.  Bertini filed a lawsuit in California District Court in December 2014 against Dervaes Institute, Jules Dervaes and Mignon Rubio.  Rubio has no attorney representing her and is acting as her own attorney (“pro se”). After it was granted by the judge who, by doing so, dismissed several of Bertini’s claims, the Judge “stayed the proceedings” as he wanted to have the TTAB case proceed so the rest of the claims remaining on Bertini’s complaint with respect to the trademark can be decided. Here is a copy and paste of several recent docket entries.

last updated: Friday Jul 17, 2015 12:05 AM PDT
Thursday, July 16, 2015
43 CERTIFICATE OF SERVICE BY MAIL re MOTION for Summary Judgment32 filed by Plaintiff Denver Urban Homesteading, LLC. (Bertini, James)
42 PLAINTIFF RESPONSE TO ORDER TO SHOW CAUSE re MOTION for Summary Judgment32 filed by Plaintiff Denver Urban Homesteading, LLC.(Bertini, James)
Att: 1 Declaration James Bertini Declaration
Wednesday, July 15, 2015
44 RESPONSE to Order to Show Cause re Motion for Summary Judgment; Declaration of Mignon Rubio in Support filed by Defendant Mignon Rubio Dervaes.(jloz)
Att: 1 Proposed Order,
Att: 2 Proof of Service
41 MINUTE IN CHAMBERS ORDER TO SHOW CAUSE Why This Action Should Not Be Stayed Pending Outcome of the Trademark Trial and Appeal Board Proceedings by Judge John F. Walter: In light of those proceedings, and the fact that the TTAB has already expended substantial resources during the last four years in connection with Plaintiff’s Petition to Cancel, the parties are ordered to show case in writing by 8/3/2015 why the Court should not stay this action pending the outcome of the TTAB proceedings. In addition, the Court orders the parties to provide a copy of this Order to the TTAB on or before 7/20/2015. The Court invites the TTAB to provide its views on this matter on or before 8/3/2015. Failure to respond to the Order to Show Cause will result in the stay of this action. (jp)
40 MINUTES (IN CHAMBERS) ORDER GRANTING in part, DENYING in part Defendant Mignon Rubio’s Motion for Summary Judgment Pursuant to FRCP 5632 by Judge John F. Walter: Rubios Motion for Summary Judgment Pursuant to FRCP 56 is GRANTED in part, DENIED in part. Plaintiff’s Third, Sixth and Seventh Claims against Rubio are DISMISSED with prejudice. (jp)
Tuesday, July 14, 2015
39 Text Entry Order: The Court has reviewed Defendant Mignon Rubios Motion for Summary Judgment (Motion), filed June 11, 2015 (Docket No.32 ) and finds that the Defendant and Plaintiff have failed to file the proposed Statement of Decision required by paragraph 4(e) of the Courts Scheduling and Case Management Order filed February 17, 2015 (Docket No.31 ). Defendant is ordered to show cause in writing by July 16, 2015 why the Motion (Docket. No.32 ) should not be stricken. In addition, Plaintiff and Defendant are ordered to show cause why they should not be sanctioned the amount of $500.00 for violating the Courts Scheduling and Case Management Order. No oral argument on this matter will be heard unless otherwise ordered by the Court. See Fed. R. Civ. P. 78; Local Rule 7-15. The Order to Show Cause will stand submitted upon the filing of the response to the Order to Show Cause. Failure to respond to the Order to Show Cause will result in the imposition of sanctions and striking of the Motion. THERE IS NO PDF DOCUMENT ASSOCIATED WITH THIS ENTRY. (sr)

Dervaes Trademark Background with James Bertini Regarding the Facebook Take Down

New Docket Entry #101 at TTAB This entry shows the papers submitted at the new California lawsuit against Dervaes and Rubio by James Bertini. Of special interest is the Declaration of Mignon Rubio beginning around page 90, parts of which are excerpted below. Rubio and Dervaes  (see emails in docket above)  tried to restore Bertini’s Facebook page but Bertini failed to respond–see numbers 5, 6, 7, 8 below.

1.The action Defendant took on February 13, 2011, regarding the Plaintiffs
Facebook page was on her own initiative, using her own computer in her room by
herself. When she saw an injustice, she felt strongly compelled to notify Facebook
about Plaintiffs violation of Dervaes Institute’s Mark “Urban Homesteading.”
2.Defendant acted alone as a mother who wanted to do something to defend
against the repeated infringement by others of the Mark that her adult children
have worked for over ten years to establish. Defendant sought no permission to
fight for her children’s livelihood.
3.Defendant’s children have helped their father, Jules Dervaes, build up
Dervaes Institute whose registered trademark was being stolen by Plaintiff on
Facebook. Defendant acted impulsively to report that crime because she wanted to
stop the damage being done to their work by an infringing rival on Facebook.
4.The Facebook page that Defendant reported as being in violation of a
trademark was created by Plaintiff in February 2010 (Complaint page 3, paragraph11)
5.As a result of Defendant notifying Facebook, the company —recognizing the
infringing use by Plaintiff, —took down the page on or about February 14, 2011.
The policy of Facebook was to give the violator an advance notice before
removing the page so that the owner could take action to save the page information and/or create a new page by changing the violating name. Plaintiff did not avail itself of this opportunity to alter the outcome.
6.A few days later, Dervaes Institute got an email from James Bertini, owner
of Plaintiff, regarding the Facebook take down request. Since Defendant was
personally responsible for submitting the fact of the Plaintiff’s violation to
Facebook, Jules Dervaes had Defendant write a note of apology to James Bertini,
and state that Defendant would request to have Plaintiff’s page restored if it complied with trademark law by changing its infringing Facebook name. (See Exhibit A)

7.Several unsuccessful attempts were made by Defendant to have the page restored. However, Defendant never received confirmation from James Bertini that he would abide by the terms, as noted in Defendant’s initial letter to him.

8.During the Trademark Trial and Appeal Board (TTAB) cancellation proceeding instituted by Plaintiff in April 11, 2011 (Complaint page 8, paragraph 36), in the discovery process, Plaintiff submitted a letter that it had sent to Facebook asking if Facebook would restore Plaintiff’s page if it changed the name However, this communication was never conveyed to Defendant or to Jules Dervaes during the time when Defendant was trying to help Plaintiff save its page by changing its infringing name to be in accordance with the policy of Facebook.

9.Plaintiff never pursued the above inquiry to conclusion in order to resolve the legal matter on its own; but, instead, in April 2011, it filed a lawsuit against Dervaes Institute for cancellation of the Mark. In the same month, Plaintiff created a new, replacement Facebook page with a new name (DUH) for its business, which has remained online-for almost four years. […]

“URBAN HOMESTEADER” now an application for registered MARK on the Supplemental Register but it was not registered by Dervaes. There are TWO new registrations. Here is one.

Note that this registration also applies to the Internet use.  As a  Mark on the Supplemental Register, in order to acquire distinctiveness to be put on the Principal Register, the owner  must police its MARK (it’s the law) just  like the Dervaes Institute did for “Urban Homesteading” and contrary to what others have stated falsely on the internet about the Supplemental Register.  However, this trademark application was recently suspended Will there be a community  protest against this last available term to prevent this registration from being finalized?

Goods and Services IC 041. US 100 101 107. G & S: Entertainment services, namely, the production of television programs and multimedia production services, about how to adapt homesteading techniques into urban environments, distributed as a live-action television series, and over cable, satellite, audio, interactive and video media, Internet, mobile handsets, and by means of a global communications network. FIRST USE: 20140505. FIRST USE IN COMMERCE: 20140505
Standard Characters Claimed
Serial Number 86062019
Filing Date September 11, 2013
Current Basis 1B
Original Filing Basis 1B
Date Amended to Current Register May 20, 2014
Owner (APPLICANT) Glista, Jeannine M DBA Indigo Moon Media INDIVIDUAL UNITED STATES 12282 Red Dog Road Nevada City CALIFORNIA 95959
Attorney of Record Wendy Peterson
Live/Dead Indicator LIVE

Court Filings of Colorado Federal Case against Dervaes Institute, et al, by James Bertini

See Docket entry #98 at TTAB

Many of the court filings (about 500 pages)  filed by parties, Dervaes Institute, Mignon Rubio, Jules Dervaes and Denver Urban Homesteading LLC can be read online, including the Final Judgment Court Decision in favor of Dervaes Institute, Jules Dervaes and Mignon Rubio .


What this decision does not mean:  this decision does not, however, require the Washington D.C. professional football team to change its name or stop using the trademarks at issue in this case

Losing the federal registration of a trademark does not necessarily mean that the owner loses all  legal rights in the mark. This is because trademark rights in the United States come from use of a  mark on or in conjunction with goods or services, not merely from the additional, optional step of federal registration.
The TTAB determines only whether a mark can be registered with the federal government (and thus gain the additional legal benefits thereof), not whether it can be used

The mark owner may still have rights in the mark based on use, known as “common law” rights and those rights continue to exist even if the  federal registration  is cancelled.

James Bertini’s Second Petition to the Director DENIED!

James Bertini’s most recent Petition to the Director (the second Petition) was DENIED by TTAB (the Board). It is a very detailed response by the Board which explained that just about everything Bertini is alleging against Dervaes and the Board (the “single hearing” issue) is wrong. Bertini doesn’t understand the law. His first Petition was also denied and his case remains suspended. Here is the recent decision.…