Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA133519
`ESTTA Tracking number:
`04/03/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168402
`Defendant
`Inofin
`Inofin
`55 Accord Park Drive
`Rockland, MA 02370
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`mleccese@ip-lawoffices.com
`Thomas P. O'Connell, Esq.
`O'Connell Law Ofice
`1026A Massachusetts Avenue
`Arlington, MA 02476
`UNITED STATES
`tpo@oconnellusa.com
`Answer and Counterclaim
`Thomas P. O'Connell
`tpo@oconnellusa.com
`/Thomas P. O'Connell/
`04/03/2007
`DriveUSA_Answer_Amended_Notice.pdf ( 11 pages )(45553 bytes )
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`Registrations Subject to Cancellation
`
`Registration No
`Registrant
`
`Goods/Services
`Subject to
`Cancellation
`Registration No
`Registrant
`
`Goods/Services
`Subject to
`Cancellation
`
`04/18/2006
`
`Registration date
`3081262
`DRIVE TRADEMARK HOLDINGS LP
`8585 NORTH CENTRAL EXPRESSWAY, SUITE 1100, NORTH
`DALLAS, TX 75247
`UNITED STATES
`Class 036. First Use: 1999/08/03 , First Use In Commerce: 1999/08/03
`Goods/Services: Financial services, namely, originating loans, purchasing loans
`and servicing auto loans
`Registration date
`3081414
`DRIVE TRADEMARK HOLDINGS LP
`8585 NORTH CENTRAL EXPRESSWAY SUITE 1100, NORTH
`DALLAS, TX 75247
`UNITED STATES
`Class 036. First Use: 1999/08/03 , First Use In Commerce: 1999/08/03
`Goods/Services: Financial services, namely, originating loans, purchasing loans
`and servicing auto loans
`
`04/18/2006
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No.:
`App Serial No.:
`Application Date:
`Applicant:
`Mark:
`
`91 168402
`78/445,657
`07/27/2004
`Mark Walsh (By Assignment from Inofin, Inc.)
`DriVeUSA
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`International Class: 036
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`DRIVE TRADEMARK HOLDINGS, LP
`Substituted for
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`DRIVE FINANCIAL SERVICES, LP,
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`Opposer,
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`V.
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`MARK WALSH / INOFIN, INC.,
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`Applicant.
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`»_.,_r»_.,_z»_.,_r»_.,_z»_.,_r»_.,_z»_.,_r»_.,_z»_.,a»_.,_z»_.,a
`
`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIM TO OPPOSER’S FIRST
`AMENDED NOTICE OF OPPOSITION
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`COMES NOW the Applicant, Mark Walsh, and for his Answer to the First Amended Notice
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`of Opposition of the Opposer, Drive Trademark Holdings, LP, to the aboVe—identified application
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`for registration of the mark DriVeUSA hereby pleads and avers as follows:
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`Applicant denies each and every allegation and aVerment of the First Amended Notice of
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`Opposition, except as expressly admitted or otherwise denied as set forth hereinbelow; and
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`regarding the preamble paragraph of the Notice, Applicant denies that Opposer is and will continue
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`to be damaged by registration of Applicant’s mark of U.S. Trademark Application No. 78/445,657.
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`1.
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`Applicant denies the allegations of Paragraph 1 of the First Amended Notice of
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`Opposition.
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`2.
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`Applicant admits that Opposer is listed by the United States Patent and Trademark
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`Office as the owner of record of the registrations listed in Paragraph 2 of the First Amended Notice
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`of Opposition. However, Applicant denies the allegations of Paragraph 2 of the First Amended
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`Notice of Opposition in all other respects.
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`3.
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`Applicant is without sufficient knowledge or information at this time to form a belief
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`as to the allegations of Paragraph 3 of the First Amended Notice of Opposition and, therefore,
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`denies and calls on Opposer to prove the same.
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`4.
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`Applicant denies the allegations of Paragraph 4 of the First Amended Notice
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`Opposition.
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`5.
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`Applicant denies the allegations of Paragraph 5 of the First Amended Notice
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`Opposition.
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`6.
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`Applicant denies the allegations of Paragraph 6 of the First Amended Notice
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`Opposition since, inter alia, Paragraph 6 includes multiple errors in the dates referenced therein.
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`7.
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`Applicant denies the allegations of Paragraph 7 of the First Amended Notice
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`Opposition.
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`8.
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`Applicant denies the allegations of Paragraph 8 of the First Amended Notice
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`Opposition.
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`9.
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`Applicant denies the allegations of Paragraph 9 of the First Amended Notice
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`Opposition.
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`10.
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`Applicant denies the allegations of Paragraph 10 of the First Amended Notice
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`Opposition.
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`of
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`of
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`of
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`of
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`of
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`of
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`of
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`AFFIRMATIVE DEFENSES
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`First Affirmative Defense
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`Opposer has failed to state a claim upon which relief may be granted.
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`Second Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because Applicant’s DriveUSA mark as employed relative to the listed services is not confusingly
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`similar to any mark asserted by Opposer and because use of Applicant’s mark in commerce would
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`not result in a likelihood of confusion, mistake, or deception between Opposer’s asserted marks and
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`Applicant’s mark since the marks are dissimilar, Opposer’s marks are weak and not famous,
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`Applicant’s listed services are distinctly different from Opposer’s services, and numerous third
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`parties have made and continue to make proper use of marks similar to Opposer’s in commerce
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`such that Opposer does not have exclusive rights to, among other things, the term DRIVE.
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`Third Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part by the
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`doctrine of acquiescence.
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`Foarth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part by the
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`doctrines of laches, waiver, and / or estoppel.
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`Fifth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part by the
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`doctrines of res judicata and collateral estoppel.
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`Sixth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part by the
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`doctrine of unclean hands.
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`Seventh Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because the Applicant may have prior and superior rights as against Opposer.
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`Eighth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because Opposer would not be damaged by the registration of Applicant’s mark.
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`Ninth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because Opposer sought and obtained one or more of its registrations fraudulently and with full
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`knowledge of the prior use by others of, among other things, the term DRIVE.
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`Tenth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because Opposer sought and obtained one or more of its registrations fraudulently and with full
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`knowledge that its services description was deceptive and inaccurate.
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`Eleventh Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because Opposer’s marks are at best merely descriptive, are weak, and are not entitled to
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`registration on the Principal Register.
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`Twelfth Affirmative Defense
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`The claims of the First Amended Notice of Opposition are barred in whole or in part
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`because, in the alternative, confusion could be prevented through the placement of lin1itations on
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`Applicant’s description of services.
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`Thirteenth Affirmative Defense
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`Applicant incorporates by reference the Affirmative Defenses raised in Applicant’s Answer
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`to the original Notice of Opposition and reserves the right to rely on such other and further
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`affirmative defenses as may be supported by the facts to be determined through such further
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`discovery as may be undertaken and to amend its Answer to assert such affirmative defenses.
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`WHEREFORE, Applicant submits that Opposer’s First Amended Notice of Opposition is
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`without proper foundation in fact or law. Accordingly, Applicant respectfully requests that the
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`Opposition be dismissed with prejudice and that Applicant’s mark DriveUSA of Application No.
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`78/445,657 be permitted to proceed to registration.
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`COUNTERCLAIM
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`Petition for Cancellation of 0pposer’s Registration Nos. 3, 081,262 and 3,081,414
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`for DRIVE and DRIVE FINANCIAL SERVICES
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`Applicant Mark Walsh, having an address
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`at 890 Pleasant Street, Bridgewater,
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`Massachusetts 02324, believes that he will be damaged by Registration No. 3,081,262, issued April
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`18, 2006, for the mark DRIVE and by Registration No. 3,081,414, issued April 18, 2006, for the
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`mark DRIVE FINANCIAL SERVICES, both owned by Opposer Drive Trademark Holdings, LP
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`and both first asserted in Opposer’s First Amended Notice of Opposition. Wherefore, Applicant
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`respectfully petitions pursuant to 15 U.S.C. § 1064 that Opposer’s Registration Nos. 3,081,414 and
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`3,081,262 be cancelled. Applicant’s grounds for cancellation are as follows:
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`1.
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`On information and belief, Opposer Drive Trademark Holdings, LP is a Delaware
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`Limited Partnership with an address at 8585 North Central Expressway, Suite 1100, North Dallas,
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`Texas 75247.
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`2.
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`Opposer is the owner of record of United States Trademark Registration No.
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`3,081,262, filed August 26, 2004 and issued April 18, 2006, for the standard character mark DRIVE
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`and United States Trademark Registration No. 3,081,414, filed March 10, 2005 and issued April 18,
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`2006, for the mark DRIVE FINANCIAL SERVICES.
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`3.
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`In Registration Nos. 3,081,414 and 3,081,262, Opposer specifies the following
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`services, “financial services, namely, originating loans, purchasing loans and servicing auto loans”
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`in International Class 036.
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`4.
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`In filing the applications that led to Registrations Nos. 3,081,414 and 3,081,262,
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`Opposer made the following declaration:
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`The undersigned being hereby warned that wilful false statements and the like so made are
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`punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such wilful false
`statements may jeopardize the validity of the application or any resulting registrations,
`declares that he/she is authorized to execute this application on behalf of the applicant;
`he/she believes the applicant to be the owner of the trademark sought to be registered, or if
`the application is being filed under 15 U.S.C. 105 l(b), he/she believes applicant to be
`entitled to such mark in commerce; to the best of his/her knowledge and belief no other
`person, firm or corporation or association has the right to use the above-identified mark in
`commerce, either in identical form thereof or in such near resemblance thereto as to be
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`likely, when used on or in connection with goods of such other person, to cause confusion,
`or to cause mistake, or to deceive; and all statements made of his/her own knowledge are
`true and all statements made on information and belief are believed to be true.
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`(Emphasis supplied.)
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`5.
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`At the time Opposer filed the applications that led to Registrations Nos. 3,081,414
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`and 3,081,262, multiple other persons, firms, corporations, or associations had the right to use the
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`term DRIVE in commerce, including in relation to automobile financial services.
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`6.
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`Opposer knew or should have known of the rightful use in commerce by others of
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`the term DRIVE, including the use of the term DRIVE in relation to automobile financial services.
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`7.
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`Multiple other parties continue to have rightful use of the term DRIVE in commerce,
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`including in relation to automobile financial services.
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`8.
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`On information and belief, therefor, Opposer’s assertion that “to the best of his/her
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`knowledge and belief no other person, firm or corporation or association has the right to use [DRIVE] in
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`commerce, either in identical form thereof or in such near resemblance thereto as to be likely, when used on
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`or in connection with goods of such other person, to cause confusion, or to cause mistake, or to deceive” was
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`a knowingly false and material representation.
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`9.
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`On information and belief, contrary to its assertion through its services descriptions,
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`Opposer does not originate auto loans.
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`10.
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`On information and belief, Opposer’s assertion that it originates auto loans was a
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`knowingly false and material representation.
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`11.
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`15 U.S.C. § 1120 provides that “Any person who shall procure registration in the
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`Patent and Trademark Office of a mark by a false or fraudulent declaration or representation, oral or
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`in writing, or by any false means, shall be liable in a civil action by any person injured thereby for
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`any damages sustained in consequence thereof.”
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`12.
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`Opposer has initiated this and other proceedings seeking unfairly and illegally to
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`expand whatever rights it might have in its marks with full knowledge of rightful and prior uses of
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`the term DRIVE by others in relation to automobile financial services thereby unfairly harming
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`Applicant and each other party subjected to Opposer’s litigious activities.
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`13.
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`By asserting a right to prevent others from using the term DRIVE while having
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`knowledge of prior and other rightful users of the term in relation to automobile financial services,
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`Opposer’s own activities and arguments in this and other actions demonstrate that Opposer’s marks
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`are not distinctive when applied to Opposer’s services.
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`14.
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`Applicant’s application directed to the mark DriveUSA was filed on July 2, 2004,
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`prior to the filing date of the applications that led to Registration Nos. 3,081,414 and 3,081,262.
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`15.
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`In an Office Action dated March 29, 2005 relative to Opposer’s DRIVE mark of
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`Application Serial No. 76/609,239 and now Registration No. 3,081,262, the Patent and Trademark
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`Office cited Applicant’s Application Serial No. 78/445,657, which is the subject of the present
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`Opposition, and indicated, “there may be a likelihood of confusion under Section 2(d) of the Act
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`between applicant’s mark and the mark in the above noted application. The filing date of the
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`referenced application precedes applicant’s filing date.
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`If the earlier—filed application registers,
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`registration may be refused under Section 2(d).”
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`16.
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`On information and belief according to the written record of Opposer’s Application
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`Serial No. 76/609,239 directed to the mark DRIVE, Opposer’s DRIVE mark was allowed to
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`proceed to registration without explanation or argument
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`regarding the potential
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`refusal of
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`registration based on Applicant’s pending application.
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`17.
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`In an Office Action dated March 29, 2005 relative to Opposer’s DRIVE
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`FINANCIAL SERVICES mark of Application Serial No. 76/632,969 and now Registration No.
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`3,081,414, the Patent and Trademark Office cited Applicant’s Application Serial No. 78/445,657,
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`which is the subject of the present Opposition, and indicated, “there may be a likelihood of
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`confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted
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`application. The filing date of the referenced application precedes applicant’s filing date.
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`If the
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`earlier—filed application registers, registration may be refused under Section 2(d).”
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`18.
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`On information and belief according to the written record of Opposer’s Application
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`Serial No. 76/632,969 directed to the mark DRIVE FINANCIAL SERVICES, Opposer’s mark was
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`allowed to proceed to registration without explanation or argument regarding the potential refusal of
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`registration based on Applicant’s pending application.
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`19. When used in conjunction with automobile financial services by Opposer, the term
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`DRIVE is at best descriptive.
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`20.
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`Registration No. 3,081,414 expressly disclaims exclusive rights to the descriptive
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`phrase “FINANCIAL SERVICES” apart from the mark as shown.
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`21.
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`Opposer’s use of the term DRIVE has not acquired distinctiveness as used in
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`commerce relative to Opposer’s services.
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`22.
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`In light of the multiple other users of the same term in the same industry as Opposer
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`prior to and contemporaneously with Opposer, Opposer’s use of the term DRIVE cannot legally
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`acquire distinctiveness as used in commerce relative to Opposer’s services.
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`23.
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`Applicant has been and will continue to be damaged by Opposer’s Registration Nos.
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`3,081,262 and 3,081,414 since those registrations establish at least the prima facie exclusive rights
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`of Opposer to the subject marks.
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`WHEREFORE, Applicant prays that Opposer’s Registration No. 3,081,262 for the mark
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`DRIVE and Opposer’s Registration No. 3,081,414 for the mark DRIVE FINANCIAL SERVICES
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`be cancelled since, inter alia, the registrations were obtained through fraud; the subject marks so
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`resemble one or more previous marks as to cause confusion, mistake, or deception; and the subject
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`marks are merely descriptive. Submitted herewith are the required fees for seeking cancellation of
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`each registration.
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`Dated: April 3, 2007
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`Respectfully submitted,
`Applicant, by its
`Attorney,
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`/Thomas P. O’Connell/
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`Thomas P. O’Connell, Esq.
`O’Connell Law Office
`
`t _ 0 @ oconnellusa.eom
`
`1026A Massachusetts Avenue
`
`Arlington, MA 02476
`Telephone: 781.643.1845
`Facsimile: 781.643.1846
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`Certificate of Transmission
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`Certificate of Service
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`I hereby certify that the foregoing ANSWER,
`AFFIRMATIVE
`DEFENSES,
`AND
`COUNTERCLAIM TO OPPOSER’S FIRST
`AMENDED NOTICE OF OPPOSITION was
`
`filed with the Trademark Trial and Appeal
`Board
`using
`the Electronic System for
`Trademark Trials and Appeals (ESTTA) on
`April 3, 2007.
`
`/Thomas P. O'ConneII/
`
`Thomas P. O'Connell, Esq.
`
`April 3, 2007
`Date
`
`I hereby certify that a true and complete copy of the
`foregoing ANSWER, AFFIRMATIVE DEFENSES,
`AND COUNTERCLAIM TO OPPOSER’S FIRST
`AMENDED NOTICE OF OPPOSITION has been
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`served on Opposer by mailing said copy on April 3,
`2007, via First Class U.S. Mail, postage prepaid to:
`
`Nhut Tan Tran, Esq.
`Godwin, Pappas, Langley, Ronquillo
`1201 Elm Street, Suite 1700
`Dallas, TX 75270-2041.
`
`/Thomas P. O'ConneII/
`
`Thomas P. O'Connell, Esq.
`
`April 3, 2007
`Date
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`11