Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA721375
`ESTTA Tracking number:
`01/19/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210148
`Defendant
`Xoom Energy, LLC
`J MARK WILSON
`MOORE & VAN ALLEN PLLC
`100 N TYRON ST, STE 4700
`CHARLOTTE, NC 28202-4003
`UNITED STATES
`katecole@mvalaw.com, markwilson@mvalaw.com, jeffreygianelli@mvalaw.com,
`minarkim@mvalaw.com
`Reply in Support of Motion
`Kathryn G. Cole
`katecole@mvalaw.com, minniekim@mvalaw.com, jeffreygianelli@mvalaw.com
`/Kathryn G. Cole/
`01/19/2016
`1-19-16 Xoom Energy Reply ISO SJ.pdf(835020 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
`
`APPLICANT XOOM ENERGY, LLC’S
`REPLY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT
`
`) ) ) ) ) ) ) ) )
`
`XOOM CORPORATION,
`
`Opposer,
`
`v.
`
`XOOM ENERGY, LLC,
`
`Applicant.
`
`INTRODUCTION
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`In response to Applicant’s Motion for Summary Judgment, Opposer filed a 29-page opposition
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`brief on December 28, 2015, its opposition deadline. Opposer’s brief, exceeding the page limit set forth
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`in TBMP § 502.02(b), is procedurally improper and should be stricken without consideration by the
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`Board. Opposer subsequently filed an “ERRATA” on January 7, 2015, admitting that its brief was not in
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`accordance with TBMP § 502.02(b). While Opposer’s timely opposition brief is subject to being stricken
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`without consideration by the Board, Opposer’s attempt to file an untimely brief under the guise of an
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`ERRATA to remove an “inadvertent error and clerical mistake” is both disingenuous and in complete
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`disregard of established rules of Board procedure. Opposer did not request leave to resubmit a different
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`brief, nor is Opposer shielded from the repercussions of its failure to comply. Consequently, Opposer’s
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`opposition brief should be stricken and receive no consideration from the Board.
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`Leaving aside Opposer’s failure to comply with TBMP § 502.02(b), its opposition brief further
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`highlights the inappropriate nature of this over-reaching opposition proceeding: Opposer admits that it is
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`claiming trademark rights in all goods and services for which a consumer could pay using Opposer’s
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`money transfer services to submit payment. Opposer apparently believes that it can block the registration
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`of any XOOM-formative mark, regardless of the goods and services recited therein. The law does not
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`permit Opposer to claim such trademark rights in gross. Opposer cannot show a genuine dispute of
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`material fact regarding a likelihood of confusion in this case, given the vast dissimilarities between
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`Applicant’s energy and natural gas goods and services, on the one hand, and Opposer’s money transfer
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`

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`goods and services, on the other hand. Accordingly, Applicant’s Motion for Summary Judgment should
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`be granted, and this opposition proceeding should be dismissed in its entirety.
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`ARGUMENT
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`I.
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`Opposer’s Opposition Brief and “ERRATA” are Procedurally Improper and Should Be
`Stricken Without Consideration by the Board.
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`In an effort “to curb an increasingly aggressive approach to litigation before the Board and to
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`stem perceived abuses of the rules,” Trademark Rule 2.127(a) sets forth a “page limitation for all motions
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`filed with the Board.” Estate of Tupac Shakur v. Thug Life Clothing, Co., 57 U.S.P.Q.2d (BNA) 1095
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`(T.T.A.B. Oct. 12, 2000). Pursuant to Rule 2.127(a), a brief in response to a motion for summary
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`judgment shall not “exceed twenty-five pages in length in its entirety, including table of contents [and]
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`index of cases.” 37 CFR § 2.127(a) (emphasis added); see also TBMP § 502.02(b). It is undisputed that
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`Opposer’s reply brief filed on the opposition deadline of December 28, 2015, is “procedurally improper”
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`at 29 pages. Realnetworks, Inc. v. Real Telephony, Inc., 2002 T.T.A.B. LEXIS 124, at *5-6 (Jan. 30,
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`2002). Furthermore, Opposer’s subsequent attempt to file an untimely amended brief using an ERRATA
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`is not supported by any rules or legal authority, nor does Opposer cite to any support.
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`As established by numerous Board decisions, a brief exceeding the page limit should be stricken
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`and receive no consideration. Indeed, in a nearly identical case, the Board in Realnetworks found that the
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`“opposer’s brief in opposition to applicant’s motion for summary judgment,” which consisted of twenty-
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`four pages of argument and four additional pages (containing a table of contents and index of cases)
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`numbered with Roman numerals, “exceed[ed] the twenty-five page limit.” 2002 T.T.A.B. LEXIS 124 at
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`*4-5. Noting that the opposer failed to file a motion for leave to exceed the page limit prior to filing its
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`overlength response brief, the Board stated:
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`Accordingly, we find that opposer’s brief in response is procedurally improper and that opposer’s
`use of Roman numerals in the page numbers of its briefs is an impermissible attempt to
`circumvent Board rules regarding page limitations of briefs. Accordingly, opposer’s brief in
`opposition to applicant’s motion for summary judgment is hereby stricken and will receive no
`consideration. Furthermore, opposer is not granted leave to file a substitute brief.
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`2
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`

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`Id. at *5-6 (citations omitted); Pure Entm't, LLC v. Butter Licensing, LLC, 2010 T.T.A.B. LEXIS 301, at
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`*5-6 (Feb. 25, 2010) (granting motion to strike overlength brief in response to a motion for summary
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`judgment while “giving no consideration” to the response brief); Nutramax Labs., Inc. v. Usana, Inc.,
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`2001 T.T.A.B. LEXIS 146, at *4-5 (Mar. 9, 2001) (striking “procedurally improper” overlength briefs in
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`support of motion for summary judgment which “will receive no consideration”); Am. Computer Assocs.
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`v. Model Am. Computer Corp., 2000 T.T.A.B. LEXIS 706, at *7 (Sept. 29, 2000) (granting motion to
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`strike). The proper avenue for filing a brief exceeding the page limit is by obtaining “prior leave” through
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`a motion for leave to exceed page limit, which are “disfavored by the Board and rarely granted.” TBMP
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`§ 537. “If a party files a brief that exceeds the page limit, but does not file a timely motion for leave to
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`file such a brief, the brief will be stricken in its entirety, without leave to file a substitute brief that meets
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`the limit.” Id. Opposer did not file a motion for leave—neither prior to nor contemporaneous with its
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`filing—and Opposer did not subsequently file a motion for leave to file a substitute brief when it
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`submitted its “ERRATA.” Id.; Nutramax, 2001 T.T.A.B. LEXIS 146, at *4 (citing United Foods Inc. v.
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`United Air Lines Inc., 33 U.S.P.Q.2d 1542 (T.T.A.B. 1994) (“overlength brief on case will not be
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`considered if filed without accompanying motion for leave to exceed page limit”) (emphasis added); Am.
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`Computer, 2000 T.T.A.B. LEXIS 706, at *7 (granting motion to strike and denying “motion for leave to
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`refile a reply brief”) Both of Opposer’s briefs should be stricken and receive no consideration.
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`II.
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`Opposer’s Numerous Misstatements of Law Should Be Stricken.
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`Even if Opposer’s brief was proper and eligible for consideration, Opposer presents arguments
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`contrary to rules of evidence and well-established law. As set forth in more detail below, Opposer’s
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`evidentiary objections, summary judgment standard, and likelihood of confusion analysis simply do not
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`comport with Board rules or precedent. Accordingly, any argument or portion of Opposer’s brief
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`operating on these misstatements should be stricken without consideration from the Board.
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`A.
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`Opposer’s Objections to Applicant’s Evidence are Without Merit.
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`In an effort to undermine the arguments and evidence set forth in Applicant’s Motion for
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`Summary Judgment, Opposer resorts to raising baseless evidentiary objections. While Opposer cites to
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`3
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`various sections of TBMP § 528.05 as the bases of its objections, which range from claiming that
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`Applicant’s exhibits are “unauthenticated” to “lacking in foundation,” there is no support for Opposer’s
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`argument in any portion of TBMP § 528.05. Xoom Corp.’s Opp. to Applicant’s Mot. Summ. J. (“Opp.”),
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`pp. 2-3. Applicant has only submitted interrogatories, interrogatory answers, and documents produced in
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`response to a request for production as exhibits,1 and pursuant to the very rule Opposer itself cites,
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`Applicant’s exhibits are precisely “[t]he types of evidence that may be submitted in support of . . . a
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`motion for summary judgment.” TBMP § 528.05(a)(1). Moreover, contrary to Opposer’s argument that
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`evidence must be admitted through an affidavit, evidence “may be submitted as attachments or exhibits to
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`a party’s brief.” Id.
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`Opposer also objects to the use of its own verified interrogatory answers, which are,
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`unsurprisingly, adverse to its position, because the answers were “subject to [ ] objections” and were not
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`“under oath.” Opposer proceeds to cite inexplicably to TBMP § 528.05(c) for support, which expressly
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`permits the use of, “[f]or purposes of summary judgment . . . an interrogatory and answer thereto,” as well
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`as “requests for discovery [and] responses thereto . . . in support of or in response to a motion for
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`summary judgment.” Opposer’s self-contradictory authority aside, the evidentiary record controverts
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`Opposer’s arguments. First, Opposer’s interrogatory answers were indeed under oath, as attested by the
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`Verification signed by Julian King declaring “that the responses are true and correct . . . under penalty of
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`perjury under the laws of the United States.”2 It is an egregious misrepresentation for Opposer to now
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`claim that its answers were not under oath.
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`Opposer also argues that because its answer to Applicant’s Interrogatory No. 1 is “subject to its
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`objections,” the answer itself “is an objection.” Opp., p. 3. While Opposer’s answer to Applicant’s
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`Interrogatory No. 1 begins with objections, it is followed by: “In all events, the information requested is
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`1 See Affidavit of K. Cole, attached hereto as Exhibit A.
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`2 Verification, attached hereto as Exhibit B.
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`4
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`reflected in the registrations Opposer attached to the Complaint.”3 Based on both plain language and
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`broadly understood meaning of the phrase “in all events”—defined as “regardless; in any case; no matter
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`what”4—it is clear that Opposer’s response was intended as an answer to the interrogatory
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`notwithstanding its objections. Furthermore, there is no evidence on the record inconsistent with
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`Opposer’s answer, and, as such, it would be highly prejudicial to Applicant if Opposer now, at this stage
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`of summary judgment, is permitted to renounce its discovery responses. In light of the foregoing,
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`Applicant respectfully submits that it has refuted all of Opposer’s evidentiary objections. Accordingly,
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`the entirety of Section II of Opposer’s opposition brief, as well as Opposer’s subsequent arguments based
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`upon its invalid evidentiary objections, should be stricken without consideration by the Board.5
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`B.
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`Opposer Has Advanced an Improper Summary Judgment Standard.
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`Opposer states that Applicant has failed to meet its burden on summary judgment because
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`Applicant “offers no evidence demonstrating that its Application is not likely to cause confusion.” Opp.,
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`p. 12. Opposer’s argument that Applicant must prove a negative is simply not the proper legal standard.
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`Rather, an applicant moving for summary judgment on a likelihood of confusion claim meets its burden
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`by “show[ing] an absence of evidence supporting opposer’s claim that confusion as to the source of
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`applicant’s services in view of opposer’s pleaded marks is likely.” Big O Tires, Inc. v. 67 & Latham,
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`LLC, 2008 T.T.A.B. LEXIS 501, at *11 (Nov. 18, 2008) (emphasis added); Black Entm't TV v. Delany,
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`2000 T.T.A.B. LEXIS 302, at *21 (May 16, 2000) (granting applicant’s motion for summary judgment on
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`likelihood of confusion where “[i]nasmuch as opposer failed to introduce any evidence to support its
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`alleged claims of similarities . . . there is no evidentiary basis on which to ground opposer’s claim”).
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`Pursuant to the correct legal standard, Opposer “bears the burden of establishing a likelihood of
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`3 Exhibit E to Applicant’s Motion for Summary Judgment (emphasis added).
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`4 COLLINS DICTIONARY, www.collinsdictionary.com/dictionary/english-thesaurus/in-any-event-or-at-all-events (2015).
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`5 See, e.g., Opp., p. 11 (“These documents, however, are in fact not properly of record or supported by the supposed
`evidence that is not of record or admissible. Revealingly, Xoom Energy did not submit any declaration establishing
`any facts, let alone authenticating the documents on which it supposedly grounds its Motion.”); id. at 13 (“The
`objection in the interrogatory is not an answer or a response under oath that is controlling.”).
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`5
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`confusion by a preponderance of the evidence.” DivX, LLC v. Chance-i United States Corp., 2012
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`T.T.A.B. LEXIS 298, at *15 (Aug. 1, 2012). The discovery period in this proceeding closed on April 27,
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`2015, and Opposer has failed to introduce evidence that is sufficient to meet its burden. Applicant met its
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`burden of establishing that no genuine dispute of material fact exists by demonstrating that Opposer’s
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`evidence, or lack thereof, cannot support a likelihood of confusion claim. For the reasons set forth in
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`Applicant’s brief in support of its motion for summary judgment, as well as the reasons below, Applicant
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`respectfully submits that it has met its burden on summary judgment.
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`C.
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`Opposer Has Advanced an Improper Likelihood of Confusion Analysis.
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`The likelihood of confusion analysis requires a comparison between the goods and services “as
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`they are described in the application and the registration.” M2 Software, Inc. v. M2 Communs., Inc.,
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`2005 T.T.A.B. LEXIS 314, at *8 (July 21, 2005), aff’d, 78 U.S.P.Q.2d (BNA) 1944 (Fed. Cir. 2006).
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`Despite this basic tenet of trademark law, Opposer attempts to establish that Applicant offers
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`purported goods and services beyond those recited in Applicant’s Application (the “Application”),
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`for purposes of Opposer’s likelihood of confusion analysis. Opp., pp. 15-16. Indeed, Opposer
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`attached Declaration of Sharon R. Smith (“Smith Decl.”) to its brief—along with 77 pages of exhibits
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`consisting of printouts from Applicant’s website—to improperly manufacture a semblance of overlap
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`in the parties’ respective goods and services.6 For example, despite no mention of payment services
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`or portals anywhere in the Application, Opposer claims that it “has demonstrated that [Applicant]
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`offers overlapping payment services through multiple methods including a ‘payment portal’ . . .
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`which alone establishes a direct relationship between the goods and services covered by the opposed
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`application and the goods and services offered by [Opposer]. Id. at 16. While it is clear that this is
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`Opposer’s attempt to bridge the vast gap between the parties’ respective goods and services, it is
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`unclear how Opposer justifies using an improper comparison for its arguments, let alone how a good
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`6 Applicant notes that Smith Decl., ¶¶ 11-12 (and corresponding Exhibits J-K) are printouts from third-party
`websites, and are addressed, infra.
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`6
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`or service that is not covered by or recited in the Application “establishes a direct relationship”
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`between said Application and Opposer’s goods and services.
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`Further highlighting Opposer’s overreach in this opposition, Opposer argues an overlap in the
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`parties’ goods and services based on the notion that “the purpose of [Opposer’s] so-called money
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`transfer service is not limited to any particular field.” Id. at 13. Opposer essentially proceeds to
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`argue that its registrations therefore encompass any good or service for which a consumer could pay
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`by using Opposer’s services. Id. (“Thus, the registrations could (and do) encompass money transfers
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`for the purpose of utility or ‘energy’ bills.”); see also id. at 16 (“[Opposer’s] registrations for money
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`transfer, remittance and payment services on its face is not limited to any specific type of money
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`transfer, remittance or payment. Thus, the financial services [Opposer] offers could include use for
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`utility services.”). Opposer’s own arguments make clear that Opposer is improperly advancing
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`likelihood of confusion analysis beyond “the goods and services of the two parties,” and, even worse,
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`“impermissibly assert[ing] trademark rights in gross.” Cent. Mfg. Co. v. Bd. of Regents, 2005
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`T.T.A.B. LEXIS 444, at *20 (Sept. 30, 2005). Any argument grounded in a comparison of goods and
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`services beyond those recited in the Application or Opposer’s registrations should be rejected.
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`III.
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`There are No Genuine Disputes of Material Fact Regarding any Likelihood of Confusion.
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`Leaving aside Opposer’s invalid evidentiary objections and misstatements of law, Opposer
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`otherwise attempts to show a likelihood of confusion through arguments regarding its alleged common
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`law rights, third-party registrations, and purported “evidence” of actual confusion. As discussed below,
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`none of these arguments show any genuine dispute of material fact.
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`A.
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`Opposer has not established common law rights for goods and services beyond those
`recited in its registrations.
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`To the extent that Opposer makes cursory references to its common law rights, Opposer has failed
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`to develop any evidence to establish use of its XOOM mark that could give rise to common law rights.
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`Opposer attempts to expand the scope of services offered under its XOOM mark by claiming it has
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`7
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`common law rights in connection with the provision of informational blog posts, a loyalty program, and
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`social media. Opp., pp. 13, 17. However, to be eligible for trademark rights, common law or otherwise,
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`“a service must be (1) a real activity; (2) performed to the order of, or for the benefit of, someone other
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`than the applicant or registrant; and (3) the activity performed must be qualitatively different from
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`anything necessarily done in connection with the sale of the” applicant or registrant’s goods or services.
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`Omega S.A. v. Nat'l Mentoring P'ship, 2015 T.T.A.B. LEXIS 159, at *28 (May 29, 2015); In re Canadian
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`Pacific Ltd., 754 F.2d 992, 224 U.S.P.Q. 971 (Fed. Cir. 1985); TMEP § 1301.01(a). Moreover, a
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`“company’s promotional activities are not services to others under the [Lanham] Act,” and trademark
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`rights therein are precluded. In re Dr Pepper Co., 836 F.2d 508, 510, 5 U.S.P.Q.2d (BNA) 1207, 1208
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`(Fed. Cir. 1987); Omega, 2015 T.T.A.B. LEXIS 159, at *30-31 (“An activity that primarily benefits
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`Applicant is not a registrable service even if others derive an incidental benefit.”). The evidence
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`produced by Opposer establishes that the additional services in which Opposer claims common law rights
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`are not eligible for trademark rights.
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`B.
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`The cited third-party registrations fail to show that money transfer goods and
`services and energy and natural gas goods and services emanate from a common
`source.
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`Opposer argues that “third-party registrations covering both the services of [Opposer] and the
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`goods and services included in the opposed application provide additional compelling evidence of an
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`overlap in services.” Opp., p. 20. However, “[i]t is well settled that third-party registrations are not
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`evidence of use of the marks shown therein, or that consumers have been exposed to them,” and, as such,
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`have “limited probative value.” Sports Authority Michigan, Inc. v. PC Authority, 63 U.S.P.Q.2d (BNA)
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`1782, 1798 (T.T.A.B. Apr. 16, 2002). Notwithstanding their marginal probative value, the specific third-
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`party registrations that Opposer attached do not show both money transfer goods and services and energy
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`and natural gas goods and services. The third-party registrations show, at best, goods and services related
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`to internal bill management services. For example, the third-party registrations for “OG&E” which recite
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`goods and services related to utilities and bill payment services for utility customers to pay utility bills . . .
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`8
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`through utility companies.7 Digital money transfer services are not the same as payment services set up
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`by a company exclusively for its customers, to exclusively pay for that company’s services. Indeed, even
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`if the cited third-party registrations had probative value, the goods and services recited therein do not
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`support the notion that consumers would be confused into believing that Applicant’s goods and services
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`and Opposer’s goods and services emanate from a common source.
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`C.
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`Opposer’s “evidence” of purported actual confusion is inadmissible hearsay and
`does not show actual confusion as contemplated by the Lanham Act.
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`Finally, Opposer offers purported evidence of actual confusion, in the form of documents
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`allegedly showing “hundreds of calls and inquires to Xoom about Xoom Energy,” contending that these
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`calls establish “that consumers wrongly associate Xoom Energy with Xoom.” Opp., p. 8. Opposer
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`further points to an inquiry from a “government official,” and a “third party Internet web page posting”
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`that used an incorrect logo. Id. at 23. Applicant hereby objects to these documents and submits that they
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`should be stricken from the summary judgment record, as the documents and the statements of alleged
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`confusion contained therein constitute two levels of inadmissible hearsay. They are out of court
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`statements offered for the truth of the matter asserted, Fed. R. E. 801, 802, and for which Opposer has
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`offered no applicable exception or exclusion from the hearsay rules.8 See Coach, 110 U.S.P.Q.2d (BNA)
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`7 Exhibits 4-5 to Declaration of Rochelle D. Alpert.
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`8 To the extent Opposer has suggested in this proceeding that its confusion evidence falls within the hearsay
`exceptions for “business records” or “present sense impressions.” The caller’s alleged statements documented in
`Opposer’s call logs—which Opposer offers for their truth, to show that these callers were supposedly confused—are
`not admissible as a business record, because the caller statements are in no way “records of regularly conducted
`activity.” Fed. R. E. 803(6). This hearsay exception is also inapplicable because “the method and circumstances of
`preparation [of the call logs] indicate a lack of trustworthiness.” See id. While Mr. King states that “[t]he specific
`database logs attached hereto…were created in the ordinary course of business,” it is clear that the submitted logs
`are not logs created in the ordinary course of business. Rather, Opposer created the submitted logs specifically for
`purposes of this litigation, using undisclosed criteria, making redactions despite the Board’s standard protective
`order (without any showing that the redacted customer identities constitute Opposer’s commercially sensitive or
`confidential information), and unilaterally deciding what to include in the log.
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`Nor do the calls logs, or the statements contained therein, fall within the hearsay exception for “present sense
`impressions.” Leaving aside the fact that “present sense impressions” are covered by Fed. R. Evid. 803(1), while
`Opposer cites only Fed. R. Evid. 803(3), Opposer has made no showing that any of the callers’ statements
`“describ[ed] or explain[ed] an event or condition, made while or immediately after the [caller] perceived it.” Fed. R.
`Evid. 803(1). Opposer has offered no applicable exception for either of the two levels of hearsay contained in the
`call logs (the call operators’ statements documenting the alleged calls, and the callers’ actual statements themselves),
`and this evidence should therefore be excluded. Nor do the cases relied upon by Opposer support its position: in
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`9
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`at 1480 (declining to admit “hearsay within hearsay” testimony regarding what a call center representative
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`reported to be the statements of a caller).
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`Even if Opposer’s hearsay evidence of actual confusion was admissible, it does not show
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`confusion in the trademark sense. Opposer has failed to show that any of its evidence of alleged
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`confusion reflects a potential diversion of sales, damage to goodwill, or loss of control over reputation.
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`To consider Opposer’s proffered evidence of misdirected correspondence as evidence of actual confusion
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`would be a conflation of confusion, as relevant to a Section 2(d) analysis, and the plain-language meaning
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`of confusion. Coach/Braunsdorf, 110 U.S.P.Q.2d (BNA) at 1480-81 (“[T]he relevant confusion is that
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`which affects the purchasing and selling of the goods or services in question . . . and not against confusion
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`generally.”) (emphasis added). Individuals (who have not been shown to be actual or potential consumers
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`of Opposer) calling the wrong number or mistakenly emailing the wrong company is not confusion as
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`contemplated by the Lanham Act.
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`CONCLUSION
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`For the foregoing reasons, Applicant respectfully requests that the Board grant Applicant’s
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`Motion for Summary Judgment on Opposer’s claim for likelihood of confusion and dismiss this
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`opposition proceeding in its entirety.
`
`Dated: January 19, 2016
`
`/Kathryn G. Cole/
`J. Mark Wilson
`Kathryn G. Cole
`Moore & Van Allen PLLC
`Suite 4700
`100 North Tryon Street
`Charlotte, NC 28202-4003
`Telephone (704) 331-1000
`Facsimile (704) 339-5981
`
`Attorneys for Applicant Xoom Energy, LLC
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`National Rural, the evidence was a direct email containing the sender’s “state of mind” statements on its face; in
`Armco, the “state of mind” statements were offered by the witness who perceived them firsthand, as the call
`recipient; in Fun-Damental, the “state of mind” evidence was also based on the witness’s firsthand interaction with
`the declarant.
`
`10
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`CERTIFICATE OF SERVICE
`
`I certify that the foregoing APPLICANT XOOM ENERGY, LLC'S REPLY IN SUPPORT OF
`MOTION FOR SUMMARY JUDGMENT was served on Opposer on January 19, 2016, by mailing a copy
`of same by U.S. first class mail, postage prepaid, addressed as follows:
`
`Rochelle D. Alpert
`Morgan Lewis & Bockius LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105
`
`Attorneys for Opposer Xoom Corporation
`
`Date: January 19, 2016
`
`/Kathryn G. Cole/
`Kathryn G. Cole
`
`

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`Exhibit A
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`Exhibit AExhibit A
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`
`
`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91210148
`
`) ) ) ) ) ) ) ) )
`
`XOOM CORPORATION,
`
`Opposer,
`
`v.
`
`XOOM ENERGY, LLC,
`
`Applicant.
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`DECLARATION OF KATHRYN G. COLE IN
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`SUPPORT OF APPLICANT’S MOTION FOR SUMMARY JUDGMENT
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`I, Kathryn G. Cole, declares:
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`1.
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`I am a licensed attorney in the States of North Carolina and California, and a member of
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`the law firm, Moore & Van Allen PLLC. I am counsel of record for XOOM Energy, LLC (“Applicant”)
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`in this proceeding, Opposition No. 91210148. I have personal knowledge of the facts set forth below, and
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`make this declaration in support of Applicant’s Motion for Summary Judgment.
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`2.
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`Attached as Exhibit B to Applicant’s Reply in Support of Motion for Summary Judgment
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`is the Verification signed by Mr. Julian King, attesting that Opposer’s responses to Applicant’s First Set
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`of Interrogatories are true and correct, under penalty of perjury under the laws of the United States.
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`3.
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`Pursuant to TBMP § 528.05(a)(1), attached to Applicant’s Memorandum in Support of
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`Motion for Summary Judgment (“Memorandum”) as Exhibit A was a true and correct copy of documents
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`produced by Applicant on June 26, 2015, in response to a request for production by Opposer. The
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`document, bearing Bates number APP010928, reflects a printout of the “Support” section from
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`Applicant’s website.
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`4.
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`Pursuant to TBMP § 528.05(a)(1), attached to Applicant’s Memorandum as Exhibit B
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`was a true and correct copy of documents produced by Applicant on June 26, 2015, in response to a
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`request for production by Opposer. The document, bearing Bates number APP010922, reflects a printout
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`of the “About Us” section from Applicant’s website.
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`5.
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`Pursuant to TBMP § 528.05(a)(1), attached to Applicant’s Memorandum as Exhibit C
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`was a true and correct copy of Applicant’s First Set of Interrogatories, served on Opposer’s counsel
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`Rochelle D. Alpert on March 2, 2015.
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`6.
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`Pursuant to TBMP § 528.05(a)(1), attached to Applicant’s Memorandum as Exhibit D
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`was a true and correct copy of Applicant’s First Set of Requests for Production of Documents and Things,
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`served on Opposer’s counsel Rochelle D. Alpert on March 2, 2015.
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`7.
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`Pursuant to TBMP § 528.05(a)(1), attached to Applicant’s Memorandum as Exhibit E
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`was a true and correct copy of Opposer’s Objections and Responses to Applicant’s First Set of
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`Interrogatories, served on Applicant on April 6, 2015.
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`8.
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`Pursuant to TBMP § 528.05(a)(1), attached to Applicant’s Memorandum as Exhibit F
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`was a true and correct copy of documents produced by Opposer on April 24, 2015, in response to a
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`request for production by Applicant. The documents, bearing Bates numbers OPP000023-OPP000024,
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`reflect printouts from Opposer’s website.
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`Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the foregoing is true and
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`correct.
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`Date: January 19, 2016
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`/Kathryn G. Cole/
`J. Mark Wilson
`Kathryn G. Cole
`Moore & Van Allen PLLC
`Suite 4700
`100 North Tryon Street
`Charlotte, NC 28202-4003
`Telephone (704) 331-1000
`Facsimile (704) 339-5981
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`2
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`

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`Exhibit B
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`Exhibit BExhibit B
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`I, Julian King, declare:
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`VERIFICATION
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`1.
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`I am Senior Vice President of Marketing and Corporate Development for Xoom
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`Corporation (“Xoom”).
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`I am authorized to make this Verification on behalf of Xoom.
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`2.
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`I have read OPPOSER XOOM CORPORATION’S RESPONSES TO APPLICANT’S
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`FIRST SET OF INTERROGATORIES. As to those matters therein, I am informed and
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`to the best of my knowledge believe that the responses are true and correct
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`I declare under penalty of perjury under the laws of the United States that the foregoing is true
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`and correct.
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`Executed this
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`U
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`day of May, 2015 at San Francisco, California
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` JULIAN KING
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`Exhibit C
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`Exhibit CExhibit C
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`2000 TTAB LEXIS 302
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`Trademark Trial and Appeal Board
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`May 16, 2000, Decided
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`Opposition No. 107,326
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`Reporter
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`2000 TTAB LEXIS 302
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`Black Entertainment Television, Inc. v. Nancy Delany
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`Core Terms
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`registration, goods and services, channel, consumer, acronym, genuine issue of material fact, summary judgment, bet, set
`forth, third-party, summary judgment motion, cable television, dissimilarity, genuine, television, pronounce, broadcast,
`likelihood of confusion, card game, identification, notice, brain, factual dispute, pronunciate, housemark, inasmuch
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`Panel: Before Simms, Quinn, and Hairston, Administrative Trademark Judges.
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`Opinion
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`THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
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`By the Board.
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`Nancy Delany filed an intent-to-use application seeking registration of BET YOUR BRAINS (in typed form) for goods
`identified as ″equipment sold as a unit for playing a card game involving intellectual skill″ in class 28. 1 Black
`Entertainment Television, Inc. filed a notice of opposition, alleging, inter alia, that registration of applicant’s mark is barred
`under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). As grounds for the opposition, opposer claims ownership and prior
`use of the mark BET in typed form, U.S. Registration No. 1,511,259, for ″cable television broadcasting services″ in class
`38 and ″production and shows for cable television″ in class 41. 2
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`Applicant filed an answer in this case, by which she denies the allegations essential [*2] to opposer’s § 2(d) claim and sets
`forth several affirmative defenses.
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`This case now comes up for consideration of the following matters: 3
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`(1) applicant’s February 17, 1998 motion for summary judgment on opposer’s section 2(d) ground of opposition; and,
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`(2) opposer’s March 9, 1998 motion to strike the affirmative defenses set forth by applicant in her answer.
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`1 Application Serial No. 75/121,276, filed June 11, 1996.
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`2 We observe that opposer has not submitted a status and title copy or otherwise submitted testimony establishing both title and status
`of its pleaded registration, U.S. Reg. No. 1,511,259.
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`3 Additionally, we acknowledge applicant’s March 9, 1998 consented motion to file a late answer (styled as applicant’s notice of
`consent to file late answer) and applicant’s March 13, 1998 motion to stay discovery, both of which are moot, inasmuch as applicant’s
`late answer was accepted and proceedings were suspended in the Board’s March 13, 1998 order.
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`

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`2000 TTAB LEXIS 302, *4
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`Page 2 of 8
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`We consider first applicant’s motion for summary judgment, which has been fully briefed by the parties. The Board has
`considered the arguments and submissions of both sides in reaching