Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA679521
`ESTTA Tracking number:
`06/22/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91221908
`Defendant
`Greg Ranstrom
`DONN K. HARMS
`AMERICAN PATENT AND TRADEMARK LAW CENTER
`12702 VIA CORTINA STE 100
`DEL MAR, CA 92014-3769
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`karen@patentpending.com
`Answer
`Donn K. Harms
`karen@patentpending.com, tm@patentpending.com
`/donn harms/
`06/22/2015
`RANSTROM WEWORK COMPANIES WE INC NOTICE OF OPPOSITION AN-
`SWER.pdf(12409 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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`Attorney Docket No.: 5745-OPP
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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.: 91221908
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`))))))))))
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`IN THE MATTER OF:
`Serial No.:
`86/361965
`Mark:
`WE, INC.
`Int’l. Classes:
`035
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`WEWORK COMPANIES INC.
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`Opposer,
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`v.
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`GREG RANSTROM
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`Applicant.
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`ANSWER
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`The following is the Answer of Applicant Greg Ranstrom, owner/applicant of the
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`trademark contained in U.S. Trademark Application Serial No. 86/361965 (“Application”) for
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`the trademark,WE, INC. (“Applicant’s Mark”), by and through counsel, American Patent and
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`Trademark Law Center, Inc., to the Notice of Opposition (“Notice”) by Opposer WeWork
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`Companies Inc. (“Opposer”).
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`1. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 1 of the Notice. On that basis, Applicant denies the
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`allegations.
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`2. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 2 of the Notice. On that basis, Applicant denies the
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`allegations.
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`3. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 3 of the Notice. On that basis, Applicant denies the
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`allegations.
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`4. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 4 of the Notice. On that basis, Applicant denies the
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`allegations.
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`5. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 5 of the Notice. On that basis, Applicant denies the
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`allegations.
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`6. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 6 of the Notice relating to the alleged common law rights of
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`Opposer. On that basis, Applicant denies the allegations of paragraph 6 which relate to
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`Opposer’s alleged common law rights. The remaining allegations of paragraph 6 of the Notice
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`set forth Opposer's characterization of Opposer’s U.S. Trademark Registrations. The
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`Registrations, and application file histories therefor, speak for themselves and thus no response
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`is required.
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`7. Applicant admits the allegations contained in paragraph 7 of the Notice.
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`8. The allegations contained in paragraph 8 of the Notice set forth Opposer’s
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`characterization of the Application and Application file history therefor. The Application and
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`Application file history therefor, speaks for itself and thus no response is required. Applicant
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`respectfully refers the Board to Applicant’s Application for a full and accurate statement of its
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`contents.
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`9. Applicant admits it is not connected to Opposer in anyway and admits that Opposer
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`has not authorized Applicant to use the WE, INC. mark, but Applicant denies any further
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`allegations contained in paragraph 9 of the Notice, including but not limited to any allegation
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`contained therein that the authorization of Opposer to use Applicant’s mark was required or is
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`required by Applicant.
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`10. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 10 of the Notice. On that basis, Applicant denies the
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`allegations.
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`11. Denied.
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`12. Applicant is without knowledge sufficient to form a belief as to the truth of the
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`allegations contained in paragraph 12 of the Notice. On that basis, Applicant denies the
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`allegations.
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`13. Denied.
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`14. Denied.
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`AFFIRMATIVE DEFENSES
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`15. The Notice of Opposition fails to state a claim upon which relief may be granted.
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`16. Opposer lacks standing upon which to oppose the registration.
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`17. Opposer’s claims are barred by the doctrine of unclean hands.
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`18. Opposer’s claims are barred by the doctrine of laches.
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`19. Opposer’s claims are barred by the doctrine of acquiescence.
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`20. Opposer’s claims are barred by the doctrine of estoppel.
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`21. Opposer’s claims are barred by the doctrine of waiver.
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`22. Opposer has abandoned any rights it may have had in its alleged marks through non
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`use and/or through acts which cause the mark to lose its significance as an indication of origin
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`and/or through failure to use the mark in connection with all of the goods set forth in Opposer’s
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`registrations and Applications for registration.
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`23. Opposer’s alleged marks are not inherently distinctive, have not become distinctive,
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`have attained no secondary meaning, and/or are diluted/part of a crowded field.
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`24. There is no likelihood of confusion, mistake, deception or potential damages as
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`alleged by Opposer because, inter alia, Opposer’s alleged marks and Applicant’s mark are
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`different in sound, appearance, and connotation and for other reasons are not confusingly similar.
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`25. There is no likelihood of confusion, mistake, deception or potential damages as
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`alleged by Opposer because, inter alia, Opposer’s alleged marks and Applicant’s mark are used
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`or will be used on dissimilar goods, in dissimilar and remote markets, in dissimilar and remote
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`channels of trade, and are otherwise marketed to different consumers and for these reasons and
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`for other reasons are not confusingly similar.
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`26. Applicant reserves the right to add additional affirmative defenses as they may
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`become known during the course of this proceeding.
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`Date: June 22, 2015
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`Respectfully submitted,
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`/donn harms/
`Donn K. Harms
`AMERICAN PATENT & TRADEMARK
`LAW CENTER, P.C.
`12702 Via Cortina, Suite 100
`Del Mar, CA 92014
`(858)509-1400
`Counsel for Applicant
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing ANSWER was served upon Opposer,
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`WeWork Companies Inc. by mailing the same, first-class mail, to:
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`James Weinberger
`Laura Popp-Rosenberg
`Leo Kittay
`Fross Zelnick Lehrman & Zissu, P.C.
`866 United Nations Plaza
`New York, New York 10017
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`this 22nd day of June, 2015.
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`/karen convery/
`Karen Convery
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`5
