The HoloDeck Trademark Wars (1993-201x)
Summary
The Trademark: HoloDecktm
Definition: One of a sequence of imaginary, fanciful words using the prefix "holo" applied to most objects by a young Babson accountant after venturing outside the cockpit one starlight evening on the deck of the sailing vessel "Starship" in Nantucket Sound in the 1970's - others were holosea, holowaves, holospace and later, "hol' oh flying fish".
Chosen as the trademark for my 1985 invention of a "beam holographic" display technology, filed on August 23, 1993 and granted as the stylized trademark “HoloDeck” by the USPTO on May 30, 2000. A U.S. Army group together with Evans & Sutherland induced USC (University of Southern California) to oppose the stylized "HoloDeck" trademark grant in 2000 on the grounds it was generic unless I agreed to a contract granting USC rights to establish a "secondary meaning". I agreed to USC's use as requested but not to a 'secondary meaning' and represented by their long-standing trademark counsel, Gibson, Dunn & Crutcher (GDC) prosecuted a Opposition Proceeding. Using discovery, GDC compelled the production of 'trade secret documents related to my classified government programs'which the Trademark Trial and Appeals Board (TTAB) granted. I offered the documents to the TTAB in camera but refused to turn them over to GDC as GDC represented my direct competitors and was not entitled to receive the same under the Federal Rules of Discovery. RAther than issue a sanction barring the presentation of said evidence at trial, the TTAB granted GDC a default opposition judgment without trial.
I appealed to the U.S. Distruct Court in DC under 15 USC 1071(b)(1), Emmet G. Sulllivan, judge, who dismissed the case on the grounds that the TTAB was not served. It is now before the U.S. Court of Appeals for the DC Circuit.
15 U.S.C. § 1071(b)(1):
“(b) Civil action; persons entitled to; jurisdiction of court; status of Commissioner; procedure
(1) Whenever a person authorized by subsection (a) of this section to appeal to the United States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the Commissioner or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action…
15 U.S.C. § 1071(b) (2): “The Director [of the TTAB] shall not be made a party to an inter partes proceeding under this subsection, but he shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall have the right to intervene in the action.”
15 U.S.C. § 1071(b) (4): (4) If there be adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the District of Columbia shall have jurisdiction."
DOCUMENTS:
USC Offer to Withdraw Opposition to stylized "HoloDeck" Trademark (pdf)
Solomon v USC et al 07-1811 Order Dismissing the §1071 Action (pdf)
DETAILS:
APPLICATION FOR THE STYLIZED TRADEMARK "HoloDeck"
The Appellant Solomon was the first applicant to file, on August 23, 1993, for the ‘use in commerce’ of the stylized trademark ‘HoloDeck’ in Class 9 – related to displays and visual environments. From the early 1990s, the Appellant promoted, marketed and sold products under the trademark HoloDeck across the country, at major trade shows in the computer, electronic and defense fields, and through the U.S. Mails.
In 1992, the Appellant had presented his technology to a number of uniformed officers of the U.S. Air Force including the Chief of Staff. Subsequently, a series of programs were begun to incorporate said technology in U.S defense systems around the country including the District of Columbia. The success of the technologies posed a serious challenge to existing defense contractors such as Teledyne, Raytheon, Texas Instruments, and Defendant/Appellee Evans & Sutherland, and inter-service funding, especially the U.S. Army simulation program. In 1996, representatives of Halliburton, Inc. and Teledyne, Inc. attempted to gain control of the Appellant’s company. Subsequently, USC ICT was established in 1999 with a multi-year contract from the US Army to build a competitive display environment.
The USPTO granted of the stylized trademark “HoloDeck” to the Appellant Solomon on May 30, 2000.
OPPOSITION BY USC (University of Southern California)
Within the 30 day opposition period, the Defendant/Appellee USC contacted the Appellant and threatened to oppose the trademark grant unless the Appellant agreed to permit USC to continue use the lower case, unstylized term ‘holodeck’ in supporting literature to a $200 million U.S. Army simulation program recently funded at USC. Hidden in the memorandum of agreement present was a clause permitting USC to create of a ‘secondary meaning’.
The Appellant agreed to license the lower case use, but refused to agreed to the ‘secondary meaning’ clause. Thereupon, USC filed an opposition claiming the term generic.
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PDF of GDC Letter: Written by GDC Scott Edelman, sent by GDC Peter Weinberg who withdrew as Counsel.
GIBSON, DUNN & CRUTCHER LLP
March 13, 2001
CONFIDENTIAL COMMUNICATION
FOR SETTLEMENT PURPOSES ONLY
VIA UPS OVERNIGHT
Dennis J. Solomon
P.O. Box 289
Yarmouth Port, MA 02675
Re: HOLODECK
Dear Dennis:
As we've discussed, we believe a settlement agreement may resolve the dispute between
the University of Southern California and yourself in a manner that allows both parties to
achieve their goals with respect to the "holodeck" term, while avoiding potentially costly and
unproductive litigation.
Attached hereto is a draft settlement agreement offered to resolve the dispute. Briefly
summarizing the main points, USC offers to withdraw the opposition so that your application
shall mature into a registration. ,You shall acknowledge that the proposed use of the term
"holodeck" by USC, as specifically defined in the agreement, does not infringe your trademark
rights.
We believe this agreement is reasonable, in light ofthe undisputed fact that the term
"holodeck" was first popularized by the show
Star Trek: The Next Generation to mean a virtualreality chamber, which is precisely the meaning that USC attaches to the term. Further, it cannot
be seriously disputed that the relevant consumers of USC's products already understand the term
"holodeck" to mean such a virtual reality device. See for example the attached article appearing
on CNN.com, where the term "holodeck" is used generically and descriptively by the Army's
chief information officer. The CNN article also includes a "QuickVote" section asking "Do you
think: a Star Trek-like holodeck will exist in your lifetime?" Over 6,000 people responded, with
a majority answering "Yes." It is absolutely clear that the term "holodeck" is being used to
describe virtual reality simulator, and not as an identification of source of a product. In other
words, it is not functioning as a trademark in this context.
If you are unwilling to accept this Agreement, we must coordinate the scheduling of
depositions in this case, as well as other discovery matters. Of course, we are willing to consider
any suggested modifications you may have, but any counter-offer involving payment of money
by USC will not be accepted.
This offer shall expire on its terms on March 27,2001.
AGREEMENT
WHEREAS, Dennis J. Solomon ("Solomon"), an individual having an address of P.O.
Box 289, Yarmouth Port, MA 02675, has filed a trademark application (the "Application"
herein), accorded serial no. 74/428299 for the term "HoloDeck" (in stylized letters) for "3D
display apparatus comprising an optical scanner, a collimating device and a video monitor for
use in a variety of fields including medicine, science and education," alleging a date of first use
in commerce of April, 1993;
WHEREAS, the University of Southern California ("USC"), a California non-profit
corporation having an address of University Park, ADM 352, Los Angeles, CA 90089 is desirous
of using the term "holodeck" to describe simulation systems it intends to supply, including
without limitation by sale, to the United States Military and other parties for training,
educational, and entertainment purposes, and to use the term "holodeck" in connection with
services provided in connection with said simulation systems;
WHEREAS, USC has opposed the Application on the grounds of genericness and
descriptiveness, and has reason to believe that there may be additional grounds upon which to
oppose the Application;
WHEREAS, Solomon disputes that there are valid grounds to oppose the Application;
WHEREAS, Solomon and USC are desirous of resolving their dispute on mutually
acceptable terms, and to take steps to ensure there is no confusion in the marketplace;
NOW, THEREFORE, in consideration of the foregoing recitals and the following
covenants and other good and valuable consideration, Solomon and USC hereby agree as
follows:
1. Withdrawal of Opposition and No Petition to Cancel. Immediately upon
execution ofthis Agreement by both parties, USC agrees to withdraw its opposition to the
Application. USC further agrees not to petition to cancel any registration resulting from the
Application or to challenge the validity of any such registration in any court or other tribunal.
2. No Use by USC in Solomon's Field of Use. USC agrees not to use the term
"holodeck" as a trademark (unless it is referring to Solomon's products) or a descriptive term in
connection with the goods specified in the Application, it being agreed that USC's use as
described in Section 3 of this Agreement shall not be considered to be use in connection with the
goods specified in the Application.
3. Use by USC in Simulation Systems. Solomon agrees that USC's use of the term
"holodeck" in connection with simulation systems, as defined herein, is not and shall not be a
violation of Solomon's rights in the term and that the use of the term "holodeck" by USC
according to this Agreement is not likely to lead to consumer confusion. "Use ofthe term
'holodeck' in connection with simulation systems" herein means use ofthe term "holodeck" by
USC or its affiliates (the word "affiliates" including, without limitation, licensees) to describe
USC's or its affiliates' system(s) to provide, including without limitation by sale, virtual reality
simulation, education, entertainment, and/or training services to the United States Military and/or
other entities, and to describe USC's or its affiliates' services provided in connection with the
foregoing. Solomon agrees that USC may acquire secondary meaning in the term "holodeck" by
virtue of its use ofthe term in connection with simulation systems.
4. Termination. This Agreement shall terminate in the event that Solomon abandons
his rights in the term "holodeck". This Agreement shall terminate in the event that either party is
in material breach of any ofthe terms of this Agreement, and upon such termination for material
breach all of the obligations of such breaching party under this Agreement shall survive.
s. Entire Agreement. This Agreement constitutes the entire agreement between
Solomon and USC with respect to the subject matter of this Agreement. This written Agreement
supercedes any prior agreements, understandings, communications, discussions, negotiations, or
the like.
6. Modification. This Agreement shall not be modified by Solomon or USC by oral
representation made before or after the execution of this Agreement. Any modification must be
in writing and signed by the party against whom such modification is sought to be enforced.
7. Construction. This Agreement, or any portion thereof, shall not be construed
against the party who initially prepared it, but shall be construed as if both the parties jointly
prepared each and every part thereof, and any uncertainty or ambiguity shall not be interpreted to
the detriment of any party on such basis.
8. Binding Effect. This Agreement shall be binding on the successors and assigns of
Solomon and USC.
9. Specific Performance. The parties agree that damages resulting from a breach of
this Agreement will likely be difficult to calculate and lead to irreparable injury to the nonbreaching
party, and accordingly agree that the remedy of specific performance shall be available
as a remedy of any breach of this Agreement."
* * * * *
UNDER CONSTRUCTION
MORE TO FOLLOW
During subsequent opposition discovery, a large majority of the staff at USC testified that they had never heard the term ‘holodeck’ prior to working on the USC project.
USE IN COMMERCE
USC amended the opposition to allege a failure by the Appellant to use the term in interstate commerce. Discovery was re-opened. The Appellant provided a full response to all discovery requests. Appellee’s thereupon demanded ‘classified and confidential’ information useful to terrorists and this Country’s enemies, and an accompanying motion for default. Appellant requested a ‘protective order’ and disclosure to independent counsel as required by the rules, or in camera to the Board.
DEFAULT
JUDGMENT FOR SOLOMON'S FAILURE TO DISCLOSURE PROTECTED U.S. GOVERNMENT SPONSORS
TO GDC ATTORNEYS
The TTAB ruled the response in default and granted the Appellee’s Motion for Sanctions Granting the Opposition.
* * * * * *
THE IMPAIRMENT & CORRUPTION OF THE FEDERAL COURTS
No. 09-5244
IN THE UNITED STATES
COURT OF APPEALS
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Dennis J. Solomon
Plaintiff-Appellant,
v.
University of Southern California, et al,
Defendants-Appellees.
Appeal From The United
States District Court
For The District Of Columbia (D.D.C. No. 99-0065 (JLG))
APPELLANT'S ADDENDUM ON ISSUES OF JUDICIAL ETHICS & PARTIALITY
REHEARING EN BANC
|
|
Dennis J.
Solomon Plaintiff-Appellant pro se |
Regarding the Question and Appearance of Impartiality and Impairment
The Appellate Court, in its decision of January 12, 2010, has accepted the Appellees version of the facts – an error given that this appeal is from a final dismissal on a Rule 12(b) motion. It raises the question of the Court's bias and partiality, and there are substantial, incontrovertible facts which clearly suggest that the obvious appearance of bias and impartiality has impaired their judgment.
Parties:
David C. Evans was a highly regarded, founding partner of Evans & Sutherland, Inc., a leading computer graphics company in his time, a devout Mormon and stake president whose wife Joy Evans was the 2nd highest chosen woman in the Mormon Church. Their son, attorney David F. Evans has been called to the First Quorum of the Seventy, the highest ruling body of the Mormon Church. At Brigham Young University, the David C. Evans Faculty Chair is among the most prestigious in the field of computing.
Judge Thomas B. Griffith is a devout Mormon who regularly leads seminars for Mormon lawyers. He was assistant to the president and general counsel to BYU during the Salt Lake City Olympic years from 2000-2005, and worked closely with G. Franklin Lewis, assistant to the president for strategy and technology, chair of BYU's Olympic Steering and Operating Committees and liaison to the LDS Olympic Committee. Both worked closely with SLOC Chairman Mitt Romney and USOC director and president-nominee[1] Michael A. McManus, Jr.
Judge Donald Ginsberg was nominated by President Reagan in 1986 and had been a Harvard Law professor from 1975 to 1983. From 1983-1986, he served in the Reagan White House with Michael A. McManus, Jr. In 1987, he was nominated for the U.S. Supreme Court but withdrew after NPR Nina Totenberg revealed that Ginsburg had used marijuana "on a few occasions" during his student days in the 1960s and while an Assistant Professor at Harvard in the 1970s. It was Ginsburg's continued use of marijuana after graduation and as a professor that made his indiscretions more serious in the minds of many Senators and members of the public.” Judge Ginsburg source of drugs at Harvard was the Atlantis cartel – the control of which evolved from young Harvard Law lawyers (Ray Riepen) and Ivy League sailors in the 1960s to Michael A. McManus, Jr. in 1976.
Michael A. McManus, Jr. is the vice chairman of the United States Olympic Committee (USOC). He was a young trusted aide and attorney in the Nixon and Ford administration under aide Richard Cheney and Donald Rumsfeld, who after returning to private industry as vice president of Pfizer, Inc., returned to the White House as assistant to President Reagan, working closely with Andrew Card and their young aide, John Roberts. He was implicated in the Iran Contra (1985), the Winter Hill Gang (Bulger brothers 1988), and the murders of Dr. Gerald Bull (1990) and reporter Daniel Casolora (1990) by the late Attorney General Elliot Richardson. Together with his close friend and partner Patrick E. Malloy he conspired and re-incorporated Atlantis Weathergear, Inc. following their 'freeze out' of the Appellant Solomon and other minority shareholders in 1976
Cofer Black is principal security affairs consultant to Mitt Romney, the vice chairman of Blackwater (now “XE”) and Total Intelligence Solutions which have been actively seeking to obtain control of Solomon's technology since 1992. He was a life-long CIA employee, heading the Bin Laden desk since 1993 and the Counter-terrorism center since 1999. He worked closely with Romney, McManus and Griffith during the Salt Lake City Olympics period from 2001-2002.
* * * * *
In support of their argument of 'res judicata', the Appellees has extensively documented “at least fourteen distinct actions in federal or state court” which “relate to Mr. Solomon's claim that he invented a technology” for high performance graphical displays. None of these cases were filed after the final decision of the TTAB. See Appellees' Brief, page 4, Appendix 173. The listed chronology begins with Solomon v Altman, USDC MA 1:90-cv-11251-ADM which addresses a royalty dispute over the assignment of Solomon's 7 issued U.S. and foreign patents related to stadium and stage displays and lighting. The Altman family of Yonkers, NY, with homes in Waitsfield, Vermont and Montauk, NY, were within the social circles surrounding Atlantis Weathergear, an America's Cup equipment supplier founded by Solomon with offices in Waitsfield, VT and Sag Harbor, NY, now in Marblehead, MA and Annapolis, MD. In 1976, the minority shareholders, including Solomon and six of the seven founding investors were “frozen out” in an unlawful transaction which the Trial Court, finding for Solomon, found: “displayed itself as a badge of fraud”. The perpetrators of this fraud were Mark Mordecai, Patrick E. Malloy and his partner Michael A. McManus, Jr., who filed the re-incorporation papers in Delaware. Subsequently, Bain Capital, a firm founded by Mitt Romney, was interested in its acquisition.
In 1986, McManus was implicated in the Iran/Contra and the illegal drug trade in the Bekka Valley of Lebanon. He resigned and together with Patrick Malloy acquired New York Bancorp and Home Federal Savings Bank. In 1999, he assumed the presidency of Misonix, Inc., a medical ultrasound manufacturer whose technology is used to weaponize anthrax and other pathogens. After the WTC and anthrax attacks of 2001, Misonix announced[2] it had received substantial orders for its related products.
From 1999 through 2002, McManus, a director and now vice chairman of the USOC, worked closely with Mitt Romney, Thomas Griffith and other BYU officials, and Cofer Black on security and other issues related to the 2002 Winter Olympics Salt Lake City. Most recently, McManus also serves on the board of directors of Novavax, Inc., a recombinant-DNA, antiviral vaccine laboratory involved in the development of vaccines against the epidemic H1N1 virus.[3]
Thomas Griffith as a Mormon stake president, as a candidate for the First Quorum, as a beneficiary of the substantial tithes, and as a potential candidate for the U.S. Supreme Court under a Romney administration, has a powerful reason to block a critical review of any unlawful activities by Evans & Sutherland. He also has personal knowledge of the issues before the Court.
Donald Ginsburg, whose marijuana use cost him a seat on the United States Supreme Court, has a substantial political bias against the Appellant and personal knowledge of the issues before the Court.
These facts raise a concern regarding the impartiality of the present panel.
One is reminded of the classic eight hundred tale of the Emperor’s New Clothes – somewhat updated.
Many years ago there lived a Judge who loved beautiful new clothes so much that he spent all his money on being finely dressed. His only interest was in going to the theater or in riding about in his carriage where he could show off his new clothes. He had a different costume for every hour of the day. Indeed, where it was said of other kings that they were at court, it could only be said of him that he was in his dressing room!
One day two lawyers came to the Judge's city. They said that they were weavers, claiming that they knew how to make the finest cloth imaginable. Not only were the colors and the patterns extraordinarily beautiful, but in addition, this material had the amazing property that it was to be invisible to anyone who was incompetent or stupid.
"It would be wonderful to have clothes made from that cloth," thought the Judge. "Then I would know which of my men are unfit for their positions, and I'd also be able to tell clever people from stupid ones." So he immediately gave the two lawyers a great sum of money to weave their cloth for him.
They set up their looms and pretended to go to work, although there was nothing at all on the looms. They asked for the finest silk and the purest gold, all of which they hid away, continuing to work on the empty looms, often late into the night.
"I would really like to know how they are coming with the cloth!" thought the Judge, but he was a bit uneasy when he recalled that anyone who was unfit for his position or stupid would not be able to see the material. Of course, he himself had nothing to fear, but still he decided to send someone else to see how the work was progressing.
"I'll send my honest old minister to the weavers," thought the Judge. He's the best one to see how the material is coming. He is very sensible, and no one is more worthy of his position than he.
So the good old minister went into the hall where the two lawyers sat working at their empty looms. "Goodness!" thought the old minister, opening his eyes wide. "I cannot see a thing!" But he did not say so.
The two lawyers invited him to step closer, asking him if it wasn't a beautiful design and if the colors weren't magnificent. They pointed to the empty loom, and the poor old minister opened his eyes wider and wider. He still could see nothing, for nothing was there. "Gracious" he thought. "Is it possible that I am stupid? I have never thought so. Am I unfit for my position? No one must know this. No, it will never do for me to say that I was unable to see the material."
"You aren't saying anything!" said one of the weavers.
"Oh, it is magnificent! The very best!" said the old minister, peering through his glasses. "This pattern and these colors! Yes, I'll tell the Judge that I am very satisfied with it!"
"That makes us happy!" said the two weavers, and they called the colors and the unusual pattern by name. The old minister listened closely so that he would be able say the same things when he reported back to the Judge, and that is exactly what he did.
The lawyers now asked for more money, more silk, and more gold, all of which they hid away. Then they continued to weave away as before on the empty looms.
The Judge sent other officials as well to observe the weavers' progress. They too were startled when they saw nothing, and they too reported back to him how wonderful the material was, advising him to have it made into clothes that he could wear in a grand procession. The entire city was alive in praise of the cloth. "Magnifique! Nysseligt! Excellent!" they said, in all languages. The Judge awarded the lawyers with medals of honor, bestowing on each of them the title Lord Weaver.
The lawyers stayed up the entire night before the procession was to take place, burning more than sixteen candles. Everyone could see that they were in a great rush to finish the Judge's new clothes. They pretended to take the material from the looms. They cut in the air with large scissors. They sewed with needles but without any thread. Finally they announced, "Behold! The clothes are finished!"
The Judge came to them with his most distinguished cavaliers. The two lawyers raised their arms as though they were holding something and said, "Just look at these trousers! Here is the jacket! This is the cloak!" and so forth. "They are as light as spider webs! You might think that you didn't have a thing on, but that is the good thing about them."
"Yes," said the cavaliers, but they couldn't see a thing, for nothing was there.
"Would his imperial majesty, if it please his grace, kindly remove his clothes." said the lawyers. "Then we will fit you with the new ones, here in front of the large mirror."
The Judge took off all his clothes, and the lawyers pretended to dress him, piece by piece, with the new ones that were to be fitted. They took hold of his waist and pretended to tie something about him. It was the train. Then the Judge turned and looked into the mirror.
"Goodness, they suit you well! What a wonderful fit!" they all said. "What a pattern! What colors! Such luxurious clothes!"
"The canopy to be carried above your majesty awaits outside," said the grandmaster of ceremonies.
"Yes, I am ready!" said the Judge. "Don't they fit well?" He turned once again toward the mirror, because it had to appear as though he were admiring himself in all his glory.
The chamberlains who were to carry the train held their hands just above the floor as if they were picking up the train. As they walked they pretended to hold the train high, for they could not let anyone notice that they could see nothing.
The Judge walked beneath the beautiful canopy in the procession, and all the people in the street and in their windows said, "Goodness, the Judge's new clothes are incomparable! What a beautiful train on his jacket. What a perfect fit!" No one wanted it to be noticed that he could see nothing, for then it would be said that he was unfit for his position or that he was stupid. None of the Judge's clothes had ever before received such praise.
"But he doesn't have anything on!" said a small child.
"Good Lord, let us hear the voice of an innocent child!" said the father, and whispered to another what the child had said.
"A small child said that he doesn't have anything on!"
Finally everyone was saying, "He doesn't have anything on!"
The Judge shuddered, for he knew that they were right, but he thought, "The procession must go on!" He carried himself even more proudly, and the chamberlains walked along behind carrying the train that wasn't there.
Dennis J. Solomon
January 26, 2010
[1] McManus favored as USOC President, Denver Post, February 6, 2003
[2] FARMINGDALE, N.Y.--(BW HealthWire)--Nov. 5, 2001( NASDAQ:MSON
[3] ROCKVILLE, MD (December 2, 2009) - /PRNewswire-FirstCall/ – Novavax, Inc. (NASDAQ:NVAX)