IN THE UNITED STATES PATENT AND TIUXDEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/103,455
`Filed on August 7, 2000
`For the Mark REACH THE CHILDREN
`
`Published in the Oflicial Gazette (Trademarks) on April 1, 2003
`
`REACH THE CHILDREN FOUNDATION, INC.,
`A Florida Non-Profit Corporation,
`
`°8'14'2°°3
`u.s. mom a. TMO1cITM Mall Ham 0'» 4“
`
`_VS..
`
`Opposer,
`
`Opposition No. 91156603
`
`REACH THE CHILDREN, lNC.,
`a New York Corporation,
`
`Applicant.
`
`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION
`
`In response to the Notice of Opposition issued by the Board on June 12, 2003 (the
`
`“Notice”), the Applicant, Reach the Children, Inc., a New York not-for-profit corporation,
`
`answers the Notice as follows:
`
`1.
`
`In response to the allegations of paragraphs 1, 2, 3 and 4 of the Notice, the
`
`Applicant denies knowledge or information sufficient to form a belief as to the truth of such
`
`allegations.
`
`2.
`
`In response to the allegations of paragraph 5, the Applicant admits that it is using
`
`the mark, REACH THE CHILDREN, but denies knowledge or information sufficient to form a
`
`belief as to the truth of the other allegations set forth in said paragraph.
`
`616093-Answer to Note of Opposition-8/13/2003
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/103,455
`Filed on August 7, 2000
`For the Mark REACH THE CHILDREN
`
`Published in the Oflicial Gazette (Trademarks) on April 1, 2003
`
`REACH THE CHILDREN FOUNDATION, INC.,
`A Florida Non-Profit Corporation,
`
`°8'14'2°°3
`u.s. mom a. TMO1cITM Mall Ham 0'» 4“
`
`_VS..
`
`Opposer,
`
`Opposition No. 91156603
`
`REACH THE CHILDREN, lNC.,
`a New York Corporation,
`
`Applicant.
`
`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION
`
`In response to the Notice of Opposition issued by the Board on June 12, 2003 (the
`
`“Notice”), the Applicant, Reach the Children, Inc., a New York not-for-profit corporation,
`
`answers the Notice as follows:
`
`1.
`
`In response to the allegations of paragraphs 1, 2, 3 and 4 of the Notice, the
`
`Applicant denies knowledge or information sufficient to form a belief as to the truth of such
`
`allegations.
`
`2.
`
`In response to the allegations of paragraph 5, the Applicant admits that it is using
`
`the mark, REACH THE CHILDREN, but denies knowledge or information sufficient to form a
`
`belief as to the truth of the other allegations set forth in said paragraph.
`
`616093-Answer to Note of Opposition-8/13/2003
`
`
`
`
`
`3.
`
`In response to the allegations of paragraph 6, the Applicant admits that it uses the
`
`''‘t
`
`I
`
`._'_t
`
`mark, REACH THE CHILDREN, to identify educational services (IC041) and medical services
`
`fl. (IC042), but denies knowledge or information sufficient to form a belief as to the truth ofthe
`Ti: 1::
`
`remaining allegations set forth in said paragraph.
`
`4.
`
`5.
`
`The Applicant denies the allegations of paragraph 7.
`
`To the extent that the allegations set forth in the Notice have not been responded
`
`to above, they are denied.
`
`In further answer to the Notice, the Applicant asserts that:
`
`6.
`
`Since 1999, the Applicant has owned and used in both interstate and international
`
`commerce the mark, REACH THE CHILDREN, in connection with educational services,
`
`namely providing courses of instruction and vocational education at the primary and secondary
`
`level to children, and medical services, namely the operation of a medical clinic and the
`
`provision of medical services outside the clinic.
`
`7.
`
`The Applicant’s use of its mark has been widespread, through its display of
`
`Applicant’s mark throughout the world, as evidenced by the following:
`
`a.
`
`Selection by a national airline advertiser for inclusion in an advertisement
`
`placed in the seat backs of several national airlines.
`
`b.
`
`The Placement of two billboards in Salt Lake City, Utah during the 2002
`
`Winter Olympics.
`
`c.
`
`The placement of the Applicant’s mark in the 37 retail outlets from St.
`
`Louis, Missouri to Seattle, Washington in conjunction with the retailer’s campaign on the
`
`Applicant’s behalf to gather school supplies and blankets for African children. The
`
`616093-Answer to Note of Opposition-8/13/2003
`
`
`
`
`
`Applicant’s mark was also featured in the catalog that was mailed nationwide to the
`
`retailer’s mail order customers.
`
`(1.
`
`The presence of chapters of the Applicant in nine states and the District of
`
`E3
`
`Columbia.
`
`e.
`
`The use of the Applicant’s mark in fund raising that has resulted in
`
`contributions from donors in 39 states, including Florida, the District of Columbia and
`
`Canada.
`
`f.
`
`The use of the Applicant’s mark in conjunction with the Uhuru Open
`
`National Golf Tour, which holds fund-raising golf tournaments throughout the United
`
`States.
`
`g.
`
`Numerous references to the Applicant’s mark on Internet web sites,
`
`including the Applicant’s web site: www.reachthechildren.org.
`
`8.
`
`Upon information and belief, the Opposer has had knowledge of the Applicant’s
`
`use of the mark, REACH THE CHILDREN, for a considerable length of time, by reason of the
`
`fact that the Applicant has used its mark in the State of Florida, on more than a token basis,
`
`where the Opposer is located.
`
`9.
`
`Upon information and belief, the Opposer has further been aware of the
`
`Applicant’s use of its mark by reason of the fact that the Applicant has operated its website under
`
`the URL www.reachthechildren.org.
`
`10.
`
`Notwithstanding the Opposer’s knowledge of the Applicant’s use of the mark,
`
`REACH THE CHILDREN, the Opposer made no effort to stop the Applicant from using this
`
`mark until the Applicant filed its application for registration of the mark and the mark was
`
`published for opposition in April 2003.
`
`616093-Answer to Note of Opposition-8/13/2003
`
`
`
`
`
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`11.
`
`The Applicant has expended much effort and money since 1999 in identifying its
`
`services with the mark, REACH THE CHILDREN.
`
`12.
`
`By reason of its laches, the Opposer should not now be allowed to prevent the
`
`Applicant fiom obtaining registration of its mark.
`
`13.
`
`Upon information and belief, the Opposer has abandoned its mark REACH THE
`
`CHILDREN, by reason of the fact that for a period of at least two years prior to the date of the
`
`Notice, the Opposer has failed to make bona fide use of the mark in the ordinary course of the
`
`Opposer’s trade, other than a token use intended merely to reserve a right in the mark.
`
`RELIEF REQUESTED V
`
`14.
`
`By reason of the foregoing, the Applicant asks that this opposition proceeding be
`
`dismissed and that its registration issue forthwith.
`
` Leslie W. Keman, Jr., Esq.
`
`LACY, KATZEN, RYEN & MITT
`Attorneys for the Applicant
`Office and Post Office Address
`
`The Granite Building
`130 East Main Street
`
`Rochester, New York 14604-1686
`
`Telephone: (585) 454-5650
`
`TO:
`
`Jonathan Cohen, Esq.
`SCHUTTS & BOWEN, LLP
`Attorneys for the Opposer
`1500 Miami Center
`
`201 South Biscayne Boulevard
`Miami, Florida 33131
`
`616093-Answer to Note of Opposition~8/13/2003
`
`
`
`
`
`lkernan@lacykatzen.com
`Direct Dial: (585) 324-5702
`
`
`777%
`
`LESLIE W. KERNAN, JR., ESQ.
`Partner
`
`
`
`_< Lacy, Katzen,
`$5 Ryen & Mittleman, LLP
`
`if: it?
`
`August 13, 2003
`
`VIA OVERNIGHT MAIL COURIER
`
`Patent & Trademark Office
`
`P.O. Box TTAB No Fee
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`South Tower, Suite 9B4O
`
`Arlington, Virginia 22202-3513
`
`~/"’"'”‘
`
`Re:
`
`Reach The Children Foundation, Inc. vs. Reach The Children, Inc.
`
`Federal Servicemark Application Serial No. 76/103,000454
`Opposition No. 91156603
`
`Dear Sir or Madam:
`
`in the above-referenced
`the Applicant
`On behalf of our client, Reach the Children, Inc.,
`opposition proceeding, enclosed are the Applicant’s Answer to the Notice of Opposition and an
`Affidavit of Service of the Answer upon the attorneys for the opposer.
`
`Very truly yours,
`
`LACY, KATZEN, RYEN & MITTLEMAN, LLP
`
`</3-<-W‘
`
`Leslie W. Kernan, Jr.
`
`LWK/meb
`
`cc:
`
`Kevin Clawson (w/ enc.)
`
`",3?
`
`~19
`(.0
`|\>
`
`-
`7 '
`3
`
`The Granite Building — 130 East Main Street — Rochester, NY 14604-1686 — Tel. 585-454-5650 — Fax 585-454-6525
`www.lacykatzen.com
`
`Bankruptcy and Debtor Relief 0 Civil and Criminal Litigation 0 Collection & Creditor Services 0 Corporate Banking and B
`Divorce and Family Law 0 Employment Law 0 Estates, Trusts and Elder Law Services 0 Municipal Law
`Personal Injury and Wrongful Death 0 Real Estate Services 0 Wills & Estate Planning
`
`usines
`
`aw
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