Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA517869
`ESTTA Tracking number:
`01/24/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207982
`Defendant
`iConnectUS LLC
`EHAB M. SAMUEL
`DICKSTEIN SHAPIRO LLP
`2049 CENTURY PARK E STE 700
`LOS ANGELES, CA 90067-3109
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`mfetyko@iconnectus.com
`Answer
`Mark Morrison
`mark@mpaclassaction.com
`/Mark Morrison/
`01/24/2013
`GameFace-OppositionResponse_FINAL MM 2-24-13.pdf ( 5 pages )(76159
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`Proceeding
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of application Serial No. 85/626,388
`Published in the Official Gazette of October 16, 2012
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`Crytek Entertainment, GmbH,
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`Opposer,
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`iConnectUS LLC,
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`Applicant.
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`Opposition No. 91207982
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`ANSWER TO NOTICE OF OPPOSITION
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`For its Answer to the Notice of Opposition (“Notice”) filed by Crytek Entertainment,
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`GmbH, (“Opposer”), iConnectUS LLC, (“Applicant”) denies that Opposer will be
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`damaged in any way by registration of the Applicant’s Trademark Serial Number
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`85/626,388 (“Application”), and responds to the allegations contained in Opposer’s
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`Notice as follows:
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`1. Applicant admits the allegations contained in paragraph 1.
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`2. The USPTO TARR system indicates that U.S. Trademark Registration No.
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`3,976,279 has a description of goods as contained in paragraph 2. Applicant denies the
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`allegations that the Opposer is the owner of a trademark for the goods described in
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`paragraph 2.
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`3. The USPTO TARR system indicates that U.S. Trademark Registration No.
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`3,849,364 has a description of goods as contained in paragraph 3. Applicant denies the
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`allegations that the Opposer is the owner of a trademark for the goods described in
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`paragraph 3.
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`4. The USPTO TARR system indicates that U.S. Trademark Registration No.
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`3,756,885 has a description of goods as contained in paragraph 4. Applicant denies the
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`allegations that the Opposer is the owner of a trademark for the goods described in
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`paragraph 4.
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`5. Applicant lacks sufficient knowledge and information to form a belief as to the
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`truth of the allegations contained in paragraph 5, and therefore denies them.
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`6. Applicant lacks sufficient knowledge and information to form a belief as to the
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`truth of the allegations contained in paragraph 6, and therefore denies them.
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`7. Applicant denies as fact the allegations contained in paragraph 7.
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`8. Applicant denies as fact the allegations contained in paragraph 8.
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`9. Applicant denies as fact the allegations contained in paragraph 9.
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`10. Applicant denies as fact the allegations contained in paragraph 10.
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`AFFIRMATIVE DEFFENSES
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`8. For answering the Notice, Applicant avers that there is no likelihood of
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`confusion between Opposer’s trademarks and Applicant’s trademark. The goods of the
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`Opposer and the goods of the Applicant are non-competitive and unrelated.
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` 9. Further answering the Notice, Applicant avers that there is no likelihood of
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`confusion, mistake or deception between the respective marks of Opposer and Applicant
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`because, inter alia, the respective marks in connection with their respective goods and
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`services are not confusingly similar.
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`10. Further answering the Notice, Applicant avers that there is no likelihood of
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`confusion mistake, or deception between the respective marks of Opposer and Applicant
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`because, inter alia, the respective goods and services with which the marks are used are
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`divergent, distinct and are sold or offered through different channels of trade.
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`11. Further answering the Notice, Applicant avers that Opposer’s marks and
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`Applicant’s mark can coexist because of the large number of other GAMEFACE marks.
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`For example, other marks include GAMEFACE in connection with Chewing Gum (U.S.
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`Trademark Registration No. 3,160,465) and GAME FACE in connection with clothing,
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`namely, T-shirts, polo shirts, tank tops, sweat shirts, sweat pants, shorts, socks, caps, hats,
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`and jackets (U.S. Trademark Registration No. 3,351,973) and GAMEFACE TICKETS in
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`connection with procurement, namely, purchasing tickets for entertainment events for
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`others and Entertainment ticket agency services (U.S. Trademark Registration No.
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`4,178,606) and GAMEFACE ..BRING IT! in connection with Collectable toy figures
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`featuring a life-size photo quality headshot in caricature form (U.S. Trademark
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`Registration No. 4,084,281) and FEED YOUR GAME FACE in connection with
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`restaurant services (U.S. Trademark Registration No. 3,177,932).
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`12. Further answering the Notice, Applicant avers that Opposer is barred by
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`laches, estoppel and/or acquiescence based on the failure of Opposer to previously object
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`to the coexistence and prominent use of other GAMEFACE marks, for example
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`GAMEFACE in connection with Chewing Gum (U.S. Trademark Registration No.
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`3,160,465) and GAME FACE in connection with clothing, namely, T-shirts, polo shirts,
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`tank tops, sweat shirts, sweat pants, shorts, socks, caps, hats, and jackets (U.S. Trademark
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`Registration No. 3,351,973) and GAMEFACE TICKETS in connection with procurement,
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`namely, purchasing tickets for entertainment events for others and Entertainment ticket
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`agency services (U.S. Trademark Registration No. 4,178,606) and
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`GAMEFACE ..BRING IT! in connection with Collectable toy figures featuring a life-size
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`photo quality headshot in caricature form (U.S. Trademark Registration No. 4,084,281)
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`and FEED YOUR GAME FACE in connection with restaurant services (U.S. Trademark
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`Registration No. 3,177,932).
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`13. Further answering the Notice, Applicant avers that Opposer’s mark is not
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`famous.
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`WHEREFORE, Applicant prays that this Opposition be dismissed and that the
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`trademark Application Serial No. 85/626,388 be passed through to allowance on the
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`Principle Register.
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`Dated: January 24, 2013
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`Respectfully submitted,
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`Morrison and Associates
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`By: /s/Mark Morrison
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` MARK MORRISON
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`Mark Morrison, CA Bar No. 152561
`Morrison and Associates
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`93 S Jackson Street No. 34835
`Seattle WA 98104
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`Tel. 206-317-3315
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`Attorneys for Applicant
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`CERTIFICATE OF MAILING
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`I hereby certify that on January 24, 2013 I electronically transmitted the attached
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`Documents to the Trademark Office using the USPTO System for filing and transmittal
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`of a Notice of Electronic Filing to the following registrants: Thomas W. Adams.
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`Dated: January 24, 2013
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`By: /s/Mark Morrison
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` MARK MORRISON
