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`Banksmmer(sm)—:VirhmlCash(sm)
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`giVirtualCash, Inc.
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`..P.O. Box;_6l1
`” ‘ ‘ “Bensalem, PA 19020
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`o1 04-2002
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`Trademark Trial and Appeal Board
`2900 Crystal Drive
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`South Tower Building
`Arlington, VA 22202
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`215361-4302
`Direct Line
`banksmarter@virtualcash.org
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`IN THE UNITEDSTATES 1>Ai§TENT. AND TRADEMARK OFFICE BEFORE —
`THE TRADEMARK TRIAL AND APPEAL BOARD
`RE: NOTICE OF OPPOSITIONTO TRIAL AND APPEAL BOARD RE UES5l5_.
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`FOR EXTENSION OF TIME,
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`VirtualCash, Inc. Mark: Banksmarter
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`VirtualCash, Inc. First Use: July 7', 1999
`Virtua1Cash,'Inc. First Use
`Commerce: August 25, 1999,:
`Applicant: Bellco Credit Union
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`Serial Number: 76/193023 _:
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`Applicants Alleged First Use: December 1 1, 2000
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`Applicants Alleged First Use in Commerce: December 18, 2000
`Filing Date: January 12, 2001
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`Published for Opposition: December 25, 2001
`Today’s Date: December 31; 2001
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`Per Anne H. Chasser’s letter dated October 4, 2001 we intend to pursue this riiatter
`further, we are seeking the advice of an attorney who specializes in. trademark and 5
`administrative law as it relates to the: procedural and substantive issues raisedsin this
`matter.
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`We are sending a petition to Todd Dickinson, the Assistant Secretary of Commerce 8;
`Commissioner of Patents and Trademarks. Attached please find a copy of that petition.
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`Therefore, based on the above we respectfully request and extra 60‘:day_s to file our brief
`with the Trademark Trial and Appeal Board. We understand that no fee is due at this
`time as we are requesting an extension of time. We await a response from the Assistant
`Secretary of Commerce Office and currently are in the process of arranging for our legal
`representation.
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`itchell E. Chadrow, President
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`I Banksmarter(sm)—VirtualCash(sm)
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`VirtualCash, Inc.
`P.O. Boxll
`Bensalerri, PA 19020
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`215-361-4302
`Direct Line
`banksma1ter@virtualcash.org
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`Todd Dickinson
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`Assistant Secretary of Commerce &
`Commissioner of Patents and Trademarks
`United States Patent and Trademark Ofiice
`Washington, DC 20231
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`NOTICE OF PETITION TO ASSISTANT SECRETARY OF COMMERCE &
`COMMISSIONER OF PATENTS AND TRADEMARKS
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`RE:
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`LETTER OF PROTEST sent to (Anne H. Chasser/Sharon Marsh)
`VirtualCash, Inc. Mark: Banksmarter
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`VirtualCash, Inc. First Use: July 7, 1999
`VirtualCash, Inc. First Use in Commerce: August 25, 1999
`Applicant: Bellco Credit Union
`Serial Number: 76/193023 :
`Applicants Alleged First Use: December 11, 2000
`Applicants Alleged First Use in Commerce: December 18, 2000
`Filing Date: January 12, 2001
`Published for Opposition: December 25, 2001
`Today’s Date: December 31, 2001
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`Notice of Opposition was sent to the Trial and Appeal Board and a Request for Extension
`of Time (60 days) regarding the above referenced matter. Attached please find our
`Petition to your office. A copy of same is being sent to the Trial and Appeal Board.
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`The Assistant Assistant Secretary of Commerce should decide the matter or remand the
`file back to the Commissioner’s ofiice to respond to the Letter of Protest filed on June 16,
`2001. The Letter of Protest is best to be resolved by that office and not the Trial and
`Appeal Board. The Bank Smarter application should not have been published for
`opposition and we formally request a preliminary injunction until your office resolves
`this matter.
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`TWO MAIN ISSUES
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`PRIOR USE
`VirtualCash, Inc. has established common—law rights to the mark banksmartegr starting in
`July of 1999. Therefore, VirtualCash, Inc. has superior rights to the mark banksmarter.
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`1s U.S.C SECTION 1001
`Applicant knew or had reason to know of prior use in violation of 18 U.S.C. Section
`1001.
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`BACKGROUND
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`1
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`The Administrator for Classification Practice sent a non-responsive answer to our Letter
`of Protest. Anne H. Chasser, Commissioner for Trademarks sites a eprotester‘should
`carefiilly present all relevant arguments and evidence in the initial letter. In re BPJ
`Enterprises Ltd. 7 USPQ2d 1375 (Comr Pats 1988). However, relevant information and
`evidence can also be obtained in discussions with Trademark personnel. There were
`conversations with Sharon Marsh in February of 2001 faxed correspondencefin March of
`2001 and other materials sent by email prior to our letter of Protest in June.
`iThis
`information was part of our Letter of Protest and was not considered by the
`Administrator. Ms. Chaser indicates that she has supervisory authority 37
`Section2.146(a)(3) and decided not to address the substantive or procedural issues that
`arise when 18 U.S.C. Section 1001 is violated nor were the issues ofprior use addressed.
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`On October 1, 2001 we sent another letter to Sharon Marsh (VIA FAX: 703-872-9282).
`This letter was sent within two months from the time the Administrator sent _her non-
`responsive letter on August 17, 2001. It would be inappropriate for the Commissioner
`not to address a possible fraud upon the PTO:
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`LAW
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`"[W]henever any person shall_deern himselfinjured by the registration of a tiade—mark in
`the Patent Office he may at any time apply to the Commissioner of Patents to cancel the
`registration." Section 13 of the Trademark Act of 1905, 15 U.S.C. § 93.
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`may, ... befiled asfollows; by
`“A petition to cancel a reg1‘stration‘ofa mark,
`any person who believes that he is or will be damaged .
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`. by the registration! of a
`mark on the principal register established by this chapter .
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`. (3) At any timeg . ..
`[it] its registration was obtainedfiaudulently or contrary to the provisions of
`section 1054 of this title or of subsection (a), (b), or (c) of section 1052 ofthis
`title for a registration under this chapter.” Lanham Act § 14, 15 U.S.C. § 1064
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`A petition to the Patent and Trademarks Oflice should be the primary means of securing
`a cancellation.
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`Section 14 was enacted not just to protect [VirtualCash, Inc.] but to protect the integrity
`of the federal register and [the Commissioners office] should not operate to frustrate that
`interest. See Hario v. Pro Football, Inc., 1994 TTAB. LEXIS 9, 30 U.S.P.Q.2D g§NA1
`1828, 1831 (T.T.A.B. 1994) a ‘public policy’ interest--in addition to a private {interest in
`removing from the register those registrations procured or maintained by frau:d.
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`The United States Supreme Court has recognized that the predecessor ofthe current
`Section 14(3) "allows cancellation of an incontestable mark at any time .
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`. it was
`obtainedfraudulently. " Park ’n F1);, Inc. v. Dollar Park and Fly, Inc., 469
`189, 195,
`83 L. Ed. 2d 582, 105 S. Ct. 658 ( 1985 1.
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`”Any person who shall procure registration in the Patent and Trademark Office of a mark
`by a false or fraudulent declaration or representation, oral or in writing, or byfany false
`means, shall be liable in a civil action by any person injured thereby for any damages
`sustained in consequence thereof.” Section 38 of the Lanham Act, 15 U.S.C. ;§ 1120.
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`Section 43(a) ofthe Lanham Act, 15 U.S.C. § 1125 (1) our mark is valid and [legally
`protectable (2) VirtualCash, Inc. has: owned the mark since 1999; (3) Bellco’sF use of the
`mark to identify goods or services would likely create confusion concerning the origin of
`the goods or services. Fisons Horticulture Inc. v. W oro Indus.
`Inc. 30 F.3d 466 472
`(3d Cir. 1994).
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`To reintegrate we have filed Notice of Opposition with the Trial and Appeals Board with
`an extension of time. This ofiice and not that board should address the issue of the Letter
`ofProtest.
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`Respectfully submitted,
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`M tchell E. Chadrow, President
`VirtualCash, Inc.