Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA362674
`ESTTA Tracking number:
`08/11/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91194728
`Defendant
`Tesco Stores Ltd.
`FRANK S. BENJAMIN
`MCKENNA LONG & ALDRIDGE LLP
`303 PEACHTREE ST STE 5300
`ATLANTA, GA 30308-3265
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`mlaip@mckennalong.com
`Answer
`Frank S. Benjamin, Esq.
`fbenjamin@mckennalong.com, tsouthard@mckennalong.com,
`mlaip@mckennalong.com, jbetts@mckennalong.com
`/fsb/
`08/11/2010
`Tesco Answer.pdf ( 8 pages )(179245 bytes )
`
`
`ESTTA362674
`ESTTA Tracking number:
`08/11/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91194728
`Defendant
`Tesco Stores Ltd.
`FRANK S. BENJAMIN
`MCKENNA LONG & ALDRIDGE LLP
`303 PEACHTREE ST STE 5300
`ATLANTA, GA 30308-3265
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`mlaip@mckennalong.com
`Answer
`Frank S. Benjamin, Esq.
`fbenjamin@mckennalong.com, tsouthard@mckennalong.com,
`mlaip@mckennalong.com, jbetts@mckennalong.com
`/fsb/
`08/11/2010
`Tesco Answer.pdf ( 8 pages )(179245 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91194728
`
`In the matter of Application Serial No. 77/079913
`
`Published in the Official Gazette on November 3, 2009
`
`) )
`
`) )
`
`) )
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`) )
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`Apple Inc.
`
`Opposer,
`
`v.
`
`Tesco Stores Ltd.,
`
`)
`Applicant.
`_R_______.___.)
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, Tesco Stores Ltd (“Applicant”), by and through undersigned counsel, pursuant
`
`to 37 C.F.R. §2.106, hereby answers the Notice of Opposition filed by Opposer Apple Inc.
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`(“Opposer”) as follows:
`
`GENERAL DENIAL
`
`Unless specifically admitted below, Applicant denies each and every allegation contained
`
`in the Notice of Opposition, including Opposer’s prayer for relief.
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`RESPONSE TO SPECIFIC ALLEGATIONS
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`The following numbered responses correspond to the numbered paragraphs set
`
`forth in Opposer’s Notice of Opposition:
`
`1.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph one (1) of the Notice of
`
`Opposition and therefore denies the same.
`
`
`
`In re: Opposition No. 91194728
`
`2.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth or accuracy of the allegations contained in numbered paragraph two (2) of the Notice of
`
`Opposition and therefore denies the same.
`
`3.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph three (3) of the Notice of
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`Opposition and therefore denies the same.
`
`4.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph four (4) of the Notice of
`
`Opposition and therefore denies the same.
`
`5.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph five (5) of the Notice of
`
`Opposition and therefore denies the same.
`
`6.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth or accuracy of the allegations contained in numbered paragraph six (6) of the Notice of
`
`Opposition and therefore denies the same.
`
`7.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph seven (7) of the Notice of
`
`Opposition and therefore denies the same.
`
`
`
`In re: Opposition No. 91194728
`
`8.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`- truth or accuracy of the allegations contained in numbered paragraph eight (8) of the Notice of
`
`Opposition and therefore denies the same.
`
`9.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph nine (9) of the Notice of
`
`Opposition and therefore denies the same.
`
`10.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph ten (10) of the Notice of
`
`Opposition and therefore denies the same.
`
`1 1.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth or accuracy of the allegations contained in numbered paragraph eleven (1 1) of the Notice of
`
`Opposition and therefore denies the same.
`
`12.
`
`Applicant filed U.S. Trademark Application Serial No. 77/079,913 and this
`
`application speaks for itself. The remaining allegations in numbered paragraph twelve (12) of
`
`the Notice of Opposition contain arguments and/or legal conclusions to which no response is
`
`required. To the extent a response is required, Applicant is without knowledge or information
`
`sufficient to form a belief as to the truth or accuracy of Opposer’s allegations concerning
`
`Opposer’s “prior rights” and therefore denies the same.
`
`
`
`In re: Opposition No. 91194728
`
`13.
`
`Numbered paragraph thirteen (13) of the Notice of Opposition contains arguments
`
`and/or legal conclusions to which no response is required. Paragraph 13 otherwise speaks for
`
`itself.
`
`14.
`
`Numbered paragraph fourteen (14) of the Notice of Opposition contains
`
`arguments and/or legal conclusions to which no response is required. To the extent a response is
`
`required, Applicant is without knowledge or information sufficient to form a belief as to the truth
`
`or accuracy of Opposer’s allegations and therefore denies the same.
`
`15.
`
`Applicant denies the allegations contained in numbered paragraph fifteen (15) of
`
`the Notice of Opposition.
`
`16.
`
`Applicant denies the allegations contained in numbered paragraph sixteen (16) of
`
`the Notice of Opposition.
`
`17.
`
`Applicant denies the allegations contained in numbered paragraph seventeen (17)
`
`of the Notice of Opposition.
`
`18.
`
`Applicant denies the allegations contained in numbered paragraph eighteen (18)
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`of the Notice of Opposition.
`
`19.
`
`Numbered paragraph nineteen (19) of the Notice of Opposition contains
`
`arguments and/or legal conclusions to which no response is required. To the extent a response is
`
`required, Applicant is without knowledge or information sufficient to form a belief as to the truth
`
`or accuracy of Opposer’s allegations and therefore denies the same.
`
`
`
`In re: Opposition No. 91194728
`
`20.
`
`Numbered paragraph twenty (20) of the Notice of Opposition contains arguments
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`and/or legal conclusions to which no response is required. To the extent a response is required,
`
`Applicant denies that any registration issued to Applicant would be a “source of damage and
`
`injury to Opposer.”
`
`71:77:11:
`
`The remaining allegations in the Notice of Opposition contain arguments and legal
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`conclusions and do not set forth a “short and plain statement of the claim showing that the
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`pleader is entitled to relief,” as required by Fed. R. Civ. P. 8(a), and thus no response is required.
`
`AFFIRMATIVE DEFENSES
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`Applicant, without affecting the appropriate burden of proof and otherwise without
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`waiver, limitation, prejudice or right to amend, herby asserts its affirmative defenses against
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`Opposer.
`
`Applicant
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`reserves the right
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`to raise additional affirmative defenses or add
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`counterclaims (including under Section 18 of the Lanham Act) based upon further discovery and
`
`investigation.
`
`FIRST AFFIRMATIVE DEFENSE
`
`21.
`
`The Notice of Opposition, and each paragraph thereof,
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`taken individually or
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`collectively, fails to state claims upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`22.
`
`Opposer is barred from maintaining its claims or obtaining the relief sought in this
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`proceeding due to a lack of standing.
`
`
`
`In re: Opposition No. 91 194728
`
`THIRD AFFIRMATIVE DEFENSE
`
`23.
`
`Upon information and belief, Applicant and Opposer have been operating their
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`respective businesses and peacefully co-existing for at least three years without a single known
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`instance of actual marketplace confusion over the concurrent use of their respective marks for
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`their respective goods and services,
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`including the goods and services opposed herein, and
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`Opposer never objected to Applicant’s use of its mark during this time. Applicant has
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`reasonably and justifiably relied to its detriment, on Opposer’s prolonged period of inaction and
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`acquiescence in the use of Applicant’s mark. Accordingly, Opposer is barred from maintaining
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`its claims or obtaining the relief sought in this proceeding due to laches and/or acquiescence.
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`FOURTH AFFIRMATIVE DEFENSE
`
`24.
`
`Opposer is barred from maintaining its claims and/or obtaining the relief sought in
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`this proceeding due to waiver.
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`FIFTH AFFIRMATIVE DEFENSE
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`25.
`
`Upon information and belief, Opposer is estopped from maintaining its claims or
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`obtaining the relief sought in this proceeding.
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`SIXTH AFFITMATIVE DEFENSE
`
`26.
`
`Applicant’s mark as used on or in connection with Applicant’s goods is not likely
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`to cause confusion or to cause mistake or deceive under Section 2(d) of the Lanham Act.
`
`
`
`In re: Opposition No. 91194728
`
`WHEREFORE, Applicant prays that judgment be entered against Opposer on all claims,
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`that the Notice of Opposition be dismissed with prejudice in its entirety, and that Applicant be
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`awarded such other and further relief as the Board deems just and equitable.
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`Dated: August 11, 2010
`
`Respectfully submitted,
`
`4
`
`/ .
`
`'
`0
`Frank S. Benjamin
`MCKENNA LONG & ALDRIDGE LLP
`
`303 Peachtree St., NE
`Suite 5300
`
`Atlanta, Georgia 30308
`(404) 527-4986
`(404) 527-4198 fax
`fbenjamin@mckennalong.com
`
`Attorneys for Applicant
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing ANSWER & AFFIRMATIVE DEFENSES to Opposer’s Notice of
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`Opposition was served Via first class mail (postage prepaid) and e-mail this date on the
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`following:
`
`Joseph Petersen, Esq.
`Kilpatrick Stockton LLP
`31 West 52nd Street, 14th Floor
`
`New York, NY 10019
`
`This 11th day of August, 2010.
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