Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA363999
`ESTTA Tracking number:
`08/19/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195633
`Defendant
`Affinity Labs Inc.
`ANDREW BAUM
`FOLEY & LARDNER LLP
`90 PARK AVE
`NEW YORK, NY 10016-1301
`
`ptomailnewyork@foley.com
`Answer
`Andrew Baum
`ptomailnewyork@foley.com, abaum@foley.com, emarmo@foley.com
`/Andrew Baum/
`08/19/2010
`ANSWER TO CONSOLIDATED NOTICE OF OPPOSITION - APPLE V.
`AFFINITY LABS.pdf ( 5 pages )(2262978 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`APPLE INC. ,
`
`Opposer,
`
`v.
`
`AFFINITY LABS, INC.,
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`Applicant.
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`\/%%\./é\./\)%/\./%/
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`OPPOSITION NO. 91195633
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`Serial Nos.: 77779673, 77779664
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`ANSWER TO CONSOLIDATED NOTICE OF OPPOSITION
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`As and for
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`its Answer
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`in this proceeding, Applicant Affinity Labs,
`
`Inc.
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`(“Applicant”) alleges as follows:
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`1.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 1, and therefore denies the same.
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`2.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 2, and therefore denies the same.
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`3.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 3, and therefore denies the same.
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`4.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 4, and therefore denies the same.
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`NYC_864461 .1
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`
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`5.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 5, and therefore denies the same.
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`6.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 6, and therefore denies the same.
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`7.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 7, and therefore denies the same.
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`8.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 8, and therefore denies the same.
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`9.
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`Applicant
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`is without knowledge or
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`information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 9, and therefore denies the same.
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`10.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 10, and therefore denies the same.
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`11.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 11, and therefore denies the same.
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`12.
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`Applicant
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`is without knowledge or information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 12, and therefore denies the same.
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`13.
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`Applicant admits the allegations of paragraph 13.
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`14.
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`Applicant
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`is without knowledge or
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`information sufficient
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`to form a
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`belief as to the truth of the allegations in paragraph 14, and therefore denies the same.
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`15.
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`Applicant denies
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`that
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`it
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`filed
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`its
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`applications
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`“notwithstanding”
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`Opposer’s prior rights, but otherwise admits each and every allegation of paragraph 15.
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`16.
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`Applicant admits the allegations of paragraph 16.
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`NYC_864461 .1
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`17.
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`Applicant denies each and every allegation of paragraph 17.
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`18.
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`Applicant denies each and every allegation of paragraph 18.
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`19.
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`Applicant denies each and every allegation of paragraph 19.
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`20.
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`Applicant denies each and every allegation of paragraph 20.
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`21.
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`Applicant denies each and every allegation of paragraph 21.
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`22. With respect to paragraph 22, Applicant states that the actual date of
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`first use of Applicant’s Marks was July 23, 2007, not June 30, 2002 as alleged in each of the
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`applications.
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`Applicant
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`further admits that Opposer began using Opposer’s Marks
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`in
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`commerce prior to the first use of Applicant’s Marks and that there is no issue in this case as
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`to priority.
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`23. With respect
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`to paragraph 23, Applicant admits that
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`issuance of the
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`registrations applied for would create a prima facie exclusive right to use Applicant’s Marks
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`in connection with the Opposed Services. Applicant denies the remaining allegations.
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`FIRST AFFIRMATIVE DEFENSE
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`24.
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`Applicant has openly used Applicant’s Marks continuously for more
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`than three years and concurrently with the marks of Opposer. Applicant has continuously
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`advertised and promoted its services provided under Applicant’s Marks during that
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`time.
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`Opposer has never objected to Applicant’s use of any of Applicant’s Marks. Applicant has
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`reasonably and justifiably relied to its detriment upon Opposer’s prolonged period of inaction
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`and acquiescence in the use of Applicant’s Marks. Accordingly, Opposer is barred from
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`maintaining its claims or obtaining the relief sought in this proceeding due to laches.
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`NYC_864461 .1
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`
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`WHEREFORE, Applicant
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`requests that
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`these consolidated oppositions be
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`dismissed and that
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`its applications Serial Nos. 77/779,673 and 77/779,664 be granted
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`registration.
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`Dated: August 11, 2010
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`Respectfully submitted,
`
`
`
`
`
`Adrew Baum
`
`Britton Payne
`FOLEY & LARDNER LLP
`
`90 Park Avenue
`
`New York, New York 10016-1314
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`Telephone: 212-338-3531
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`Attorneys for Applicant
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`NYC_864461.1
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`
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`CERTIFICATE OF SERVICE
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`It
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`is hereby
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`certified that
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`a
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`copy of
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`the
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`foregoing ANSWER TO
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`CONSOLIDATED NOTICE OF OPPOSITION was served by first class mail, postage
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`prepaid to:
`
`Joseph Petersen
`31 West 52nd Street, 14th Floor
`
`New York, New York 10019
`
`Alicia Grahn Jones
`
`Allison M. Scott
`
`1100 Peachtree Street
`Suite 2800
`
`Atlanta, Georgia 30309
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`attorneys for Opposer, this / 9'7’/{day of August, 2010.
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`
`
`NYC_864461.1
