IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Boom Club, Inc.,
`
`Opposer,
`
`V.
`
`Boom-X Enterprise, Ltd.,
`
`Applicant.
`
`%J\/\/%\éé%\2\/
`
`Opposition No. 123, 447
`Serial No. 75/652, 305
`
`TTAB
`
`ANSWER AND AFFIRMATIVE DEFENSES TO NOTICE OF OPPOSITION
`
`Now comes Applicant, Boom-X Enterprise, by and through its attorneys, and hereby files
`the following answer in response to Opposer’s Notice of Opposition:
`
`1. Denied.
`
`2. Applicant admits that various trademark applications and registrations are
`attached to the Notice of Opposition as Exhibits A through E. Applicant denies
`the remaining allegations and statements of paragraph 2.
`Applicant does not have sufficient knowledge or information to admit or deny the
`allegations of paragraph 3 and therefore denies the same.
`Denied.
`
`P’
`
`.\‘f3‘S":‘>
`
`Denied.
`
`Denied.
`
`Denied.
`
`As an affirmative defense to this Notice of Opposition, Applicant states that it is a
`Licensee of all of Opposer’s valid and subsisting trademarks under the License
`Agreement of March 19, 2003 (attached as Exhibit 1) proposed by Opposer to settle this
`Opposition proceeding. This License Agreement was proposed as a settlement to the
`pending Opposition Proceeding by Opposer and agreed to by Applicant on March 19,
`2003 as evident in the signed Trademark License Agreement of Exhibit 1. As evidenced,
`Opposer has no standing to continue this Opposition Proceeding as Applicant is a valid
`and subsisting Licensee under all of Opposer’s valid trademarks. Accordingly, this
`Opposition Proceeding should be dismissed in its entirety.
`
`In the alternative, if this Opposition Proceeding should continue for any reason, which
`Applicant believes it should not, Applicant demands the return of its fully paid up royalty
`payment of $100.00. This royalty payment was made to Opposer on March 19, 2003 as
`evidenced in attached money order dated March 5, 2003 provided to Opposer by
`Applicant and cashed by Opposer on or about March 26, 2003.
`
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`
`1 1-17-2004
`
`US. Patent & TMOfcITM Mail Rcpt m_ #72
`
`
`
`

`
`WI-IEREFORE, Applicant prays that the Notice of Opposition be dismissed in its entirety
`and that Application Serial No. 73/652,305 pass through to issuance without further
`delay.
`
`Dated: November 8, 2004
`
`Respectfully submitted,
`
`Boom-X Enterprise, Ltd.
`
`By:
`
`My
`
`teven M. S ape
`Registration No. 30,802
`
`Steven M. Shape & Associates
`3681 Commercial Avenue
`
`Northbrook, Illinois 60062
`Attorneys for Applicant, Boom-X Enterprise, Ltd.
`
`
`
`

`
`PROOF OF SERVICE
`
`The undersigned hereby certifies that a copy of the above ANSWER AND
`AFFIRMATIVE DEFENSES TO NOTICE OF OPPOSITION has been served on
`Mitchell P. Brook, Baker and McKenzie, 101 West Broadway, 12”‘ Floor, San Diego, CA
`92101 and Sidney Turner, Sidney Turner, P.C, Westchester Financial Center, 11 Martine
`Avenue, White Plains, New York 10606 by United States Mail, postage prepaid, this 8”‘
`day of November, 2004.
`
`
`
`

`
`
`
`STEVEN M. SHAPE & ASSOCIATES
`ATTORNEYS AT LAW
`3681 COMMERCIAL AVENUE
`NORTHBROOK, IL 60062
`
`TELEPHONE: 847-412-9909
`
`FACSIMILE: 847-412-9901
`
`Steven M. Shape
`
`By Facsimile and U. S. Mail
`
`March 19, 2003
`
`Mr. Sidney Turner
`Sidney Turner, P.C.
`Westchester Financial Center
`
`11 Martine Avenue
`
`White Plains, New York 10606
`
`Re: Boom Club v. Boom-X Opposition No. 123,447-Settlement
`
`Dear Mr. Turner:
`
`As we discussed and agreed, enclosed is the Trademark License Agreement which has
`now been executed by my client to settle the referenced Opposition Proceeding. The one
`time royalty fee of $100.00 is also enclosed. Please have your client execute the
`Agreement and return a fully executed copy to me for my files. Please also inform the
`Trademark Trial and Appeal Board of our settlement so that they do not expect our
`answer to be filed in the proceeding.
`
`I will then proceed to abandon pending trademark application serial number 75/652,305
`as agreed and confirm such to you. At that point, I expect that you will formally
`terminate the Opposition Proceeding as agreed.
`
`I apologize for the delay in getting this executed Agreement to you and appreciate your
`understanding and cooperation in resolving this matter.
`
`V
`
`S'ncerely,
`.
`
`I,
`
`I
`
`_
`
`I Steven M. S ape
`
`SMS/mpc
`Enclosure: Trademark License Agreement
`
`cc: Ms. Shirley Hassan, Trademark Trial and Appeal Board
`
`
`
`

`
`
`
`TRADEMARK LICENSE AGREEMENT
`
`THE AGREEMENT by and between Boom Club, lnc., a California corporation, having an
`office at 1407 Broadway, Suite 1410, New York, New York 10018 (“Licensor”), and Boom-X
`Enterprise, Ltd., an Illinois corporation having an office at 7510 North Caldwell Avenue, Niles,
`Illinois 60714 ("Licensee"), is effective as of the date of the last signature below.
`
`WHEREAS:
`
`Licensor uses in commerce and owns various federal registrations and applications
`A.
`for federal registration of the trademark "BOOM" clothing and retail and wholesale, and on-line
`retail store services, as described in Exhibit A hereto; and
`
`Licensee has applied to register the mark BOOM-X for "clothing, namely shirts,
`B.
`jackets and coats", Application Serial No. 75/652,305; and
`
`Licensor has instituted an Opposition Proceeding before the U.S. Trademark Trial
`C.
`and Appeal Board opposing the registration of Licensee's mark, TTAB Opposition No. 123,447;
`and
`
`-
`
`The parties are desirous of settling this matter without resort to litigation or_other
`D.
`inter panfes proceedings; and
`
`Licensee desires to acquire a license, from Licensor to use the mark "BOOM-X"
`E.
`(the "Licensed Mark") for and in connection with the Licensed Products as hereafter defined; and
`
`Licensor desires to grant Licensee an exclusive license to use the Licensed Mark
`F.
`for and in connection with the Licensed Products, subject to the terms and conditions as set forth
`herein.
`
`NOW THEREFORE, in consideration of the promises and the terms, covenants, and
`conditions herein contained, the parties hereby agree:
`
`1 .
`
`Grant of License
`
`Upon terms and conditions hereinafter set forth, Licensor grants to Licensee an exclusive right to
`use the Licensed Mark in connection with clothing, namely shirts, jackets sweaters, pants, hats,
`jogging suits, sweat shirts fleece sets and coats, as described in Exhibit B attached hereto to be
`' sold only direct and at tradeshow booths, (the "Licensed Products"), and for no other products or
`services, and no other channels of trade. Notwithstanding any other term or condition this license
`agreement is for a limited period of one year from the date of execution of this license agreement.
`This agreement may be renewed on such terms as the parties may mutually agree to.
`
`As a condition for this grant of License, Licensee agrees 1) to state in its product literature that
`"BOOM" is a trademark of Licensor which is licensed to Licensee 2) that the license to use
`“BOOM” is not an endorsement of Licensee's products 3) pay one time fully paid royalty fee in the
`amount $100.00.
`~
`A
`
`2 .
`
`Territogj
`
`The license granted hereunder is for the territory of the United States and Puerto Rico (the
`"Territory").
`
`
`
`

`
`
`
`3.
`
`Withdrawal of Trademark Application
`
`Within ten (10) days of execution of this Agreement, Licensee shall expressly abandon
`Application Serial No. 75/652,305 for the mark “BOOM-X” using the form attached hereto as
`Exhibit 3.
`
`4.
`
`Withdrawal of Opposition
`
`Within ten (10) days of execution of this agreement Licensee shall formally abandon its
`application for federal registration. Upon receiving written confirmation with a copy of such
`abandonment documents from Licensee that its application for federal registration has been
`expressly abandoned, Licensor shall terminate the pending Opposition Proceeding.
`
`5 .
`
`Ownership of the Licensed Mark
`
`Licensee agrees that the Licensed Mark, the mark BOOM, together with the
`goodwill of the business symbolized thereby are the sole and exclusive properties of
`Licensor. The use by Licensee of the Licensed Mark shall inure to the benefit of Licensor.
`
`Licensee further agrees that it has not power or right to and shall not during the term
`of this Agreement or thereafter (i) attack the title or any rights of Licensor in or to the
`Licensed Mark or the mark BOOM, (ii) claim any right, title, or interest in or to the Licensed
`Mark or the mark BOOM adverse to Licensor; or, (iii) register or apply for registration of the
`Licensed Mark or the mark BOOM in the Territory or anywhere else in the world.
`
`Except for the usage specified in this agreement, Licensee shall not use any name
`or mark, other than the Licensed Mark, which incorporates or consists of the designation
`“BOOM” for clothing of any kind, or any goods or services related thereto.
`
`6 .
`
`Use of Licensed Mark; Quality Control
`
`Licensee warrants and agrees that the Licensed Products shall be produced and be
`supported in a quality commensurate with initial specimens provided Licensor. At -any time
`at Licensor's request, Licensee shall furnish to Licensor a representative specimen of the
`Licensed Products , packaging, advertising, promotional material, and sales data, so that
`Licensor may verify the continued satisfactory quality of the Licensed Products and
`compliance with this Agreement.
`
`On each package, advertisement, and item of promotional material of the Licensed
`Products on which the Licensed Mark appears, Licensee shall place the following legend:
`
`“BOOM—X" is a trademark of Boom-X Enterprise, Ltd. BOOM® is a
`trademark of Boom Club, Inc. and is used by Boom-X Enterprise, Ltd. under
`license.’’
`
`7 .
`
`Non-Use of the Licensed Mark by Licensor
`
`Licensor shall not use or license to anyone (other than Licensee) the right to use the
`Licensed Mark to identify or designate any product other than the Licensed Products
`herein; however, the parties expressly agree and recognize that Licensor has a right to use
`by itself or through a Licensee the mark BOOM alone and with other elements for or in
`connection with clothing, retail, wholesale and on-line retail store services, and other
`products and services.
`
`
`
`

`
`
`
`b .
`
`c .
`
`a .
`
`b .
`
`Licensor claims no right to the term "X" apart from the Licensed Mark as a whole.
`
`Upon termination of the license hereunder, Licensee shall cease use of the Licensed Mark.
`
`8 .
`
`lndemnig and Hold-Harmless
`
`Licensee shall indemnify and hoId—harmless Licensor, its officers, agents, and
`employees from and against any and all liabilities, claims, actions, suits, damages, losses,
`costs, and expenses, including reasonable attorneys‘ fees, arising out of any claim for any
`injury to persons, deaths to persons, damage to property and loss of, or damage to records
`or data arising directly or indirectly out of or in connection with the sale, use, or distribution
`of the Licensed Products, or arising out of any claim that composite mark "BOOM-X"
`infringes any trademark, service mark, or trade name of any third party.
`
`In addition to the provision under Paragraph 8(a), Licensor is also not liable for any
`economic consequential damages (including lost profits or savings) or incidental damages
`to Licensee or any third party, even if Licensor is informed of their possibility arising directly
`or indirectly out of or in connection with the sale, use, or distribution of the Licensed
`Products, or arising out of any claim that the "X" portion of the Licensed Mark infringes any
`trademark, service mark, or trade name of any third party.
`
`9 .
`
`Bankruptcy
`
`In the event that Licensee files a petition in
`This Agreement is personal to Licensee.
`bankruptcy, or is adjudged bankrupt, or makes an assignment for the benefit of creditors, or files a
`petition, or othen/vise seeks relief under or pursuant to any bankruptcy, insolvency, or
`reorganization statute or proceeding, in accordance with the laws of the applicable jurisdiction, or if
`it discontinues its business, or if a custodian, receiver, or trustee were appointed for it, or a
`substantial portion of its business or assets, neither this Agreement nor the license hereunder shall
`be assignablewithout the written consent of Licensor, which shall not be unreasonable withheld.
`Licensor shall be promptly advised by Licensee of such event by written notice.
`
`10 .
`
`Relationship of Parties
`
`Nothing herein contained shall be construed to place the parties in the relationship of
`partners, joint venturers, or agents, one for the other; and neither party shall have the power to
`obligate or bind the other in any manner whatsoever.
`
`11.
`
`Assignment
`
`This Agreement shall inure to the benefit of and be binding upon each of the parties hereto,
`and the rights granted to licensee hereunder may not be assigned in whole or in part by Licensee
`without the written consent of Licensor.
`
`12 .
`
`Termination
`
`The license granted under this Agreement may be terminated upon written noticeto
`Licensee of Licensor’s election to terminate the same, in the event that:
`
`a .
`
`Licensee has failed to remedy any material breach of any obligation or duty under
`this Agreement, within 60 days after written notice of such breach has been given by
`Licensor to Licensee, or
`
` -.- s,-..IsV'£.;.-‘1i'e‘=o.—,'-;.»..~...v_ .._g z';.-..
`
`

`
`
`
`b .
`
`c .
`
`d .
`
`Licensee is deprived of the control of its own assets for any reason (including, but
`not limited to bankruptcy); or
`
`Licensee shall cease commercial use of the Licensed Mark for the Licensed
`Products for a period of six (6) months or more; or
`
`Licensee, for any reason, is unable or unwilling to or does not manufacture or sell
`Licensed Products of a quality which, in Licensor's sole discretion, is acceptable to
`Licensor. Licensee shall promptly advise Licensor by written notice if any of Events (b) or
`(c) occur. Licensee shall immediately from the date of such termination dispose of labels,
`hang-tags, packaging, and advertising materials in its inventory as of the date of the
`termination associated with the approved Licensed Products, and dispose of or otherwise
`remove all occurrences of the Licensed Mark or the mark BOOM from the Licensed
`Products.
`
`13.
`
`infringement of Licensed Mark
`
`Licensee shall promptly notify Licensor of any claim, demand, or cause of action based
`upon or arising from any attempt by any other person, firm, or corporation to use the Licensed
`Mark, the mark BOOM, or any colorable imitation thereof. Licensee also shall notify Licensor
`promptly of any litigation instituted by any person, firm, corporation, or governmental agency
`against Licensee involving the Licensed Mark or the mark BOOM. Licensor shall have the sole
`right to decidewhether or not proceedings shall be brought against third parties and to control any
`administrative proceeding or litigation involving the Licensed Mark or the mark BOOM. Licensor
`shall have the sole right to defend the Licensed Mark or the mark BOOM, at its expense, against
`imitation, infringement, or any claim of prior use.
`In the event Licensor undertakes the defense or
`prosecution of any litigation relating to the Licensed Mark or the mark BOOM, Licensee shall, at its
`own expense, execute any and all documents and so such acts and things as may, in the opinion
`of counsel for Licensor, be necessary to carry out such defense or prosecution.
`
`14.
`
`Binding Agreement
`
`This Agreement is binding on the parties hereto, their subsidiaries, divisions, and all those
`acting in concert or participation with them or under their direction or control.
`
`15 .
`
`Law of New York
`
`The validity, construction, and performance of this Agreement will be governed by, the
`substantive law of the State of New York as if this Agreement were executed in, and fully
`performed within, the State of New York. Each party hereby waives any right it may have to a jury
`trial in any litigation arising out of, or related to, this Agreement.
`
`16.
`
`Miscellaneous
`
`a .
`
`b .
`
`No failure or delay by either party hereto at any time to enforce any provision of this
`Agreement or exercise any rights or remedies thereunder shall be construed as a waiver or
`relinquishment of any such provision, right or remedy; and the Agreement and all provisions
`thereof shall remain in full force and effect notwithstanding any such failure or delay.
`
`The headings of the several sections are inserted for convenience of reference only,
`and are not intended to be a part of or affect the meaning or interpretation of this
`Agreement.
`
`
`
`

`
`
`
`Except as expressly provided herein nothing contained in this Agreement shall be
`construed as conferring any rights by implication, estoppel, or otherwise to or under any
`Licensor patents, copyrights, trademarks, trade names, mask works, or similar rights in
`connection with any product, promotion, publication without the prior written consent of
`Licensor.
`
`This Agreement will not be binding upon the parties until it has been signed herein
`below by or on behalf of each party, in which event it shall be effective as of the date first
`above written. No amendment or modification hereof shall be valid or binding upon the
`parties unless made in writing and signed as aforesaid. This Agreement embodies the
`entire understanding of the parties with respect to the subject matter hereof and merges all
`prior discussions between them, and neither of the parties shall be bound by any
`conditions, definitions, warranties, understandings, or representations with respect to the
`subject.
`
`IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be duly
`executed on its behalf.
`
`BOOM-X ENTERPRISE, LTD.
`
`BOOM CLUB, INC.
`
`By;
`Title:
`
`Date:
`
`5 £
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`
`
`
`

`
`
`
`BOOM
`
`Reg. No or Ser.
`No.
`757903.364
`
`BOOM
`
`1,885,030
`
`EXHIBIT A
`Licensor’s U.S. Marks
`
`Description
`
`35 - Retail store and wholesale store services and on-line
`
`retail store services offered via the lnternet featuring
`clothing, sportswear, outen/vear, belts, hosiery, pajamas,
`footwear and head wear; and computerized on-line search
`and ordering services in the field of fashion and clothing
`featuring on-line directories, indices and searchable
`databases.
`
`42 - On-line electronic database and computer services in
`the field of fashion and clothing, namely, providing on-line
`information, articles, documents, directories, indices, and
`illustrations in the field of fashion and clothing.
`
`25 —— clothing, sportswear, outerwear, and underwear,
`namely, shirts, tops, tunics, tanktops, T-shirts, blouses,
`camisoles, dresses, jumpers, jumpsuits, rompers, skorts,
`scarves, sashes, shorts, pants, trousers, skirts, split skirts,
`overalls with shorts, overalls, cardigans, body suits, halters,
`leggings, bomber jackets, jacket parkas, blazers, anoraks.
`
`BOOM
`CLUB
`
`BOOM
`CLUB
`MORE
`BOOM
`
`75/903,404
`
`35 - Retail store and wholesale store services and on-line
`
`retail store services offered via the Internet featuring
`clothing, sportswear, outerwear, belts, hosiery, pajamas,
`footwear and head wear; and computerized on-line search
`and ordering services in the field of fashion and clothing
`featuring on-line directories, indices and searchable
`databases.
`
`42 - On-line electronic database and computer services in
`the field of fashion and clothing, namely, providing on-line
`information, articles, documents, directories, indices, and
`illustrations in the field of fashion and clothing.
`
`1,399,603
`
`25 — Women's blouses, skirts, shirts and shorts
`
`1,872,537
`
`25 - clothing, sportswear, outerwear, and underwear,
`namely, shirts, tops, tunics, tanktops, T-shirts, blouses,
`dresses, jumpers, rompers, shorts, skirts, pants, trousers,
`split skirts, overalls with shorts, cardigans, leggings and
`skorts.
`
`
`
`

`
`EXHIBIT B
`Licensed Products
`
`The “Licensed Products” shall consist of clothing, namely shirts, jackets sweaters, pants, hats,
`jogging suits, sweat shirts fleece sets and coats in a style commonly referred to as “streetwear."
`
`The Licensed Products shall be sold solely on a wholesale basis to small, independent clothing
`stores in African-American and Hispanic communities direct and through tradeshow booths.
`
`~
`
`No national advertising shall be undertaken.
`
`

`
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`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this paper (along with any paper referred to as being attached or enclosed) is
`being deposited on the date shown below with the United States Postal Service as first class mail,
`postage prepaid,
`in an envelope addressed to the BOX TTAB Commissioner of Trademarks,
`2900 Crystal Drive, Arlington, VA 22202-3513.
`
`(check and complete appropriate item below):
`
`I
`
`37 CFR 1.8ga)
`with sufficient postage
`as first class mail
`
`or
`
`37 CFR 1.10
`as "Express Mail Post Office
`to Addressee" Mailing Label
`No.
`
`\\Mfl;z
`
`Steven M. Shape
`(Type or print name of person mailing paper)
`
`AL:/A (A%_
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`(Signature of person mailing paper)