A response to Stoller’s motion to amend the petition to cancel has been filed. Not surprisingly, SFSE objects to the proposed amendment.
Some levity, more backstory, a public appeal(?), then the substantive argument…
Let’s dispense with the levity first.
This response to the motion to amend characterizes the proposed amendments as “nothing more than the latest in a string of continued efforts by Petitioner [that's Stoller] to harass Respondent [that's SFSE]” and that “[s]imply put, the proposed amendment is not being made in good faith but as a tactical maneuver to literally drown Respondent in litigation costs.”
(I must interject, I’ve never used the phrase “literally drown” in such a context myself. “Literally” drowning is much more severe than “figuratively” drowning.)
This response also notes that the cancellation proceeding was instituted “on the eve of Christmas”.
Christmas, people. Can’t we all just get along?
To be fair, the cancellation proceeding was instituted by Stoller on November 7, which puts it around the beginning of the shopping season. However, the Trademark Trial and Appeal Board bears the responsibility of transmitting the petition to cancel to the trademark registrant, and the TTAB’s internal procedures meant that this notice was sent out on December 21, which is close enough to Christmas eve. Stoller’s attorney sent a copy of the petition to cancel as a courtesy to SFSE’s attorney in November. Thus, one might think that highlighting that December 21 date is a swipe at the Board responsible for hearing the cancellation proceeding.
The submission also reveals a few more incidents in the Stoller-SFSE saga:
- SFSE’s submission states that once SFSE became aware of Stoller’s trademark applications, in June 2005 SFSE’s attorney wrote to Stoller and “invited Stoller to discuss” her “attempts to use and register the STITCH ‘N BITCH mark”, but received no reply. This letter is provided as an exhibit to the submissions. It was addressed to Stoller’s counsel and warned that SFSE had strong evidence of actual confusion between SFSE and Stoller’s business (likely this statement is referring to SFSE guestbook entries in which the writers had made reference to Stoller’s first SnB book). The letter closed with an indication that SFSE might be amenable to discussing an amicable resolution, but in the meantime demanded that Stoller cease her use of STITCH ‘N BITCH.
- Later attempts by SFSE’s “representatives” (the submission does not specify that it was the attorney who made these attempts) to discuss the matter also proved futile.
- Stoller’s counsel provided a response in November 2005, which is also provided as an exhibit. This response included a copy of the petition to cancel the STITCH & BITCH CAFE mark, and characterizes SFSE’s belief that its trademark rights extended to STITCH ‘N BITCH for chat rooms as “misguided”.The letter also includes a demand that SFSE cease its use of STITCH & BITCH on sewing-related equipment (which use was proferred as a specimen for this) in view of Stoller’s superior (earlier) rights, and indicates that Stoller believes that SFSE’s “rush” to place the STITCH & BITCH mark on products “by superimposing the mark on photographs of goods shown on its website is in bad faith” [coughpicturecough].
The submission also includes content that, on my reading, appears to be an appeal to the (knitting) public at large. I’m certain that SFSE is aware that each step of the TTAB cancellation proceeding is being reported (so far as those steps are easy to research, thanks to the USPTO website), so they have taken the opportunity to reach out:
On information and belief, Stoller and/or other individuals closely associated with Stoller then launched a campaign to portray SFSE in a negative light. A handful of individuals started to regularly post a series of negative and inappropriate comments on SFSE’s web site, began to post negative reviews regarding books written by the principal of SFSE on Amazon.com, sent derogatory letters to SFSE, organized a boycott campaign against SFSE, and generally pursued a strategy of making it appear that SFSE was attempting to usurp rights in the name and mark STITCH & BITCH – all the while ignoring or concealing the fact that Stoller claimed to own the mark STITCH ‘N BITCH, had filed four trademark applications to secure the mark STITCH ‘N BITCH for herself and for her own benefit, had demanded that SFSE cease use of the mark STITCH ‘N BITCH and, in short, has been seeking to destroy SFSE’s senior rights in the STITCH AND BITCH CAFE mark [sic -- that should be an ampersand, actually] so that Stoller could secure her junior rights in the STITCH ‘N BITCH mark for her own benefit.
and in a footnote:
It should also be noted that some of the negative postings have suggested that SFSE’s enforcement actions regarding groups using the name STICH AND BITCH (such as STICH AND BITCH NYC) [sic] was for the purpose of preventing user groups from expressing their views on knitting on [sic] sewing. Such has never been the case. SFSE took actions to protect its rights and to have online groups change their names from STITCH AND BITCH to another name, not to prevent groups from having online venues. SFSE continues to support and welcomes the free exchange of ideas in the fields of sewing and knitting, and has even invited groups that want to use the STITCH AND BITCH mark for their online user groups to do so on forums that could be created on or through SFSE’s web site for free
No evidence of the factual allegations in these excerpts is attached to this response, although perhaps this evidence has been the subject of the discovery process. And I’m not certain that the TTAB cares whether individuals are free to talk about knitting or sewing online — that’s not the point of a cancellation proceeding. These allegations, while they might colour the proceedings as a whole, don’t seem to be tied into the question to be decided on this motion: should the amendment to the original petition be allowed?
And speaking of that question, there is some substantive argument on this point:
The test for allowing an amendment, as enunciated by SFSE in its submissions, is whether granting leave to amend will not be unduly prejudicial to the non-moving party (i.e., SFSE).
SFSE argues that Stoller was well aware of these additional grounds before the cancellation proceeding was commenced. Apparently, because the Wayback Machine was used to provide documentation, and because so many people rallied to Stoller (or at least, against SFSE), she should have known everything at the outset:
Indeed, in postings and communications from individuals supporting Petitioner, it is clear that such archival web pages [from http://www.archive.org/] have been reviewed, commented on and communicated to Petitioner well before the instant Petition to Cancel was filed.
It’s nice to think that someone thinks the opinions of non-parties count. The submissions also suggest that SFSE thinks that Stoller has had plenty of legal counsel helping her out (at least two different sets of attorneys?) and that new grounds, therefore, could not have “suddenly” been discovered.
However the Board might address the question of whether Stoller should have pleaded those grounds at the outset (was it necessary to have discovery in order to determine that those new grounds were available? consider, for example, the new allegations concerning sewing instruction and manuals, or the precise nature of a telecommunications service provided by SFSE, or the nature of the guestbook functionality as evidenced through the WayBack Machine), the submission seems to only suggest that there would be undue prejudice only because of the increased cost of the proceedings.
As a final note, SFSE’s submission also hints at “expert discovery” and “significant third party discovery”. But alas, no hints at free trips to New York for anybody.