Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA807055
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`Filing date:
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`03/13/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91225884
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Defendant
`Kentucky Mist Moonshine Inc.
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`JAMES M FRANCIS
`FRANCIS LAW FIRM
`2333 ALEXANDRIA DRIVE
`LEXINGTON, KY 40504
`UNITED STATES
`jim@francis-law.com
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`Opposition/Response to Motion
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`James M. Francis
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`jim@francis-law.com
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`/jim francis/
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`03/13/2017
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`Attachments
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`91225884 KMM Response to Motion to Strike.pdf(257970 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`UNIVERSITY OF KENTUCKY
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`Opposer,
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`- against -
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`KENTUCKY MIST MOONSHINE INC.
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`Applicant.
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`Opposition No.: 91225884
`Serial No.: 86577855
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`APPLICANT’S RESPONSE TO OPPOSER’S
`MOTION TO STRIKE AFFIRMATIVE DEFENSES
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`Applicant, Kentucky Mist Moonshine Inc. (“Kentucky Mist Moonshine” or “Applicant”),
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`herein submits its Response to the Opposer’s Motion to Strike Affirmative Defenses.
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`ARGUMENT
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`An affirmative defense is an "assertion of facts and arguments that, if true, will defeat the
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`plaintiff's . . . claim, even if all the allegations in the complaint are true." Black's Law Dictionary
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`(9th ed. 2009). Both the Applicant nor the Opposer agree that the University’s Motion to Strike is
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`not favored and should be denied unless the Opposer can demonstrate that these affirmative
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`defenses have no bearing on the issues in this case. However, Opposer’s argument seems to forcus
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`on the lack of “boilerplate” affirmative defenses rather than their applicability. Given that the
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`Opposer may not have understood some of the affirmative defenses, the Applicant has moved the
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`Board for leave to file an amended answer.
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`OPPOSER’S ATTACK ON APPLICANT’S ESTOPPEL DEFENSE FAILS TO
`I.
`ADDRESS THAT THE DEFENSE RELATES TO EQUITABLE ESTOPPEL AND NOT
`ACQUIESCENE
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`Opposer attacks the Applicant’s affirmative defense of estoppel with arguments addressing
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`only acquiescence and ignores equitable estoppel in its entirety. Applicant’s argument will address
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`only the affirmative defense it raised, equitable estoppel, and not the affirmative defense of
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`acquiescence raised by the Opposer.
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`While estoppel by acquiescence and equitable estoppel are similar, and easily confused,
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`they are two separate and distinct defenses that are available to defendants. Emmpresa Cubana
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`Del Tabaco v. Culbro Corp., 213 F. Supp. 2d 247, 276 (S.D.N.Y. 2002).
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`Equitable estoppel is applied in trademark actions to prevent a party from taking a position
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`factually inconsistent with his prior position to the detriment of another. Holly Hill Citrus Growers
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`v. Holly Hill Fruit Prods, 75 F2d 12, 17 (5th Cir 1935); Shapiro, Lifschitz & Schram, P.C. v. R.E.
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`Hazard, Jr. Ltd. P'ship, 90 F. Supp. 2d 15, 21 (D.D.C. 2000). The theory of equitable estoppel is
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`that the opposer/plaintiff “should not be able to speak or act to obtain a benefit at one time, and
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`then reverse himself, when it appears to his advantage to do so.” Id. An applicant/defendant is
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`only required to prove three elements to succeed on the defense of equitable estoppel:
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`1) misleading conduct that leads the defendant to believe that the
`plaintiff will not bring an infringement suit; 2) reliance on the
`misleading conduct by the defendant; and, 3) material prejudice
`suffered by the defendant as a result of the defendant's reliance.
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`Scholle Corp. v. Blackhawk Molding Co. Inc., 133 F.3d 1469, 1471 (Fed. Cir. 1998) (in the context
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`of patent infringement but applied to a trademark case). This is precisely what the Applicant plead
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`as an affirmative defense. The Opposer’s utter silence in the face of widespread use of the term
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`“Kentucky” in international class 25 and related classes, and also in numerous trademark
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`registrations using the term “Kentucky” in international class 25 and related classes is a type of
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`misconduct that invokes the defense of equitable estoppel. It is widely held that “silence may
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`constitute cause for equitable estoppel if a duty to speak exists. Emmpresa Cubana Del Tabaco at
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`2
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`277; Whetstone Candy Co. v. Kraft Foods, Inc., 351 F.3d 1067, 1076 (11th Cir. 2003); General
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`Elec. Capital Corp. v. Eva Armadora, S.A., 37 F.3d 41, 45 (2d Cir. 1994).
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`Applicant’s affirmative defense of equitable estoppel addresses the conduct of the Opposer
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`and its impact on Applicant’s decision to both use and register the pending mark.
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`II.
`OPPOSER APPEARS TO BE MAKING THE NOVEL ARGUMENT THAT THE
`SLEEKCRAFT ANALYSIS IS NO LONGER AVAILABLE
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`Admittedly, Applicant’s counsel probably should have raised boilerplate defenses that
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`would be easier for the Opposer to understand. However, the Applicant did raise facts and
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`arguments that addressed issues relevant to the registration of Applicant’s mark and therefore
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`believes that the stated affirmative defenses place the Opposer on notice as to the defenses that
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`may be raised. Applicant’s facts and arguments address the likelihood of confusion and examines
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`several of the Sleekcraft factors. The Opposer is a sophisticated entity being represented by a well-
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`respected intellectual property law firm. The Applicant does not believe that the Opposer was
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`unfairly prejudiced by Applicant’s lack of boilerplate defenses.
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`Opposer argues that its mark may not be challenged simply because it is descriptive.
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`However, the Applicant has not raised that argument. The argument made by the Applicant is that
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`there is no likelihood of confusion and states several facts and makes several arguments to make
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`that point. Applicant primarily argues that there is no likelihood of confusion because the
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`Opposer’s geographic mark is inherently weak. The Applicant also argues that the marks have a
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`different commercial impression, not just because of the fact that the Applicant has additional
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`verbiage and design elements, but because the marks in class 25 are only being used to promote
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`the goods and services associated with the true “business” of the Opposer and the Applicant and
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`thus are in entirely different marketing channels. The Applicant also argues that the degree of care
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`exercised by the consumer is heightened for geographic marks.
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`3
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`Courts have held that even though a weak geographic mark can develop secondary meaning
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`so as to become a strong mark, the scope of protection afforded that mark is limited to those goods
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`and services for which it served as a secondary source indicator. National Shoe Stores Co. v.
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`National Shoes of New York, Inc., 213 Md. 328, 131 A.2d 909, 113 U.S.P.Q. 380 (1957). The
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`Opposer’s reliance on Bd. Of Regents, Univ. of Tex. Sys. is misplaced because the goods and
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`services for which the marks served as secondary source indicators were identical or highly similar
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`whereas that is not the case between the Applicant and the Opposer. See Bd. Of Regents, Univ. of
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`Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182 (TTAB 2014).
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`The Opposer also misrepresents the holding in In re Peregrina, Ltd. when it states that it
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`applies to the Applicant asking the Board to consider the limited scope of protection afforded the
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`Opposer’s mark and thus the greatly diminished likelihood of confusion. In re Peregrina, Ltd.
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`only relates to an applicant’s attempt to restrict the scope of its own registration by offering
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`extrinsic argument or evidence. In re Peregrina, Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).
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`In a nutshell, Opposer’s only argument as to likelihood of confusion is that both parties use
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`the name of the state in which they are located. Opposer ignores or misunderstands the Sleekcraft
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`analysis in their entirety. While a more simplistic defense may have been easier for the Opposer
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`to understand, the lack of boilerplate clauses does not require the Board to strike a defense.
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`III. OPPOSER POSSESSES SUFFICIENT KNOWLEDGE OF THE BASIS OF THE
`AFFIRMATIVE DEFENSE OF FRAUD SUCH THAT IT WILL NOT BE PREJUDICED
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`Opposer statement that Applicant failed to plead fraud with sufficient particularity is self-
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`serving opinion that ignores that the Applicant stated that the Applicant a false claim of acquired
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`distinctiveness in claiming 56 years of substantially exclusive use of the work Kentucky for the
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`recited goods in the KENTUCKY registration raised against the Applicant the preceding. The
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`Applicant allegation of fraud should not take the Opposer by surprise since it was raised in the
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`4
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`parties recent civil action and since it knows full well of extensive third-party use of the word
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`Kentucky on similar if not identical goods and services.
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`Noting that the fraud is visited upon a third-party, the strict requirements of Fed. R. Civ. P.
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`9(b) have been held to be relaxed:
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`Strict requirements of Rule 9(b) are addressed primarily to situation
`where plaintiff has been defrauded directly by defendant; where
`plaintiff is claiming instead to have been injured as result of fraud
`perpetrated on third party, circumstances surrounding transaction
`are peculiarly within defendant’s knowledge; therefore, requirement
`of particularity will be relaxed and plaintiff is entitled to rely on
`information and belief in support of allegation.
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`Dominicus Americana Bohio v Gulf & Western Industries, Inc. 473 F Supp 680 (1979, SD NY).
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`The Applicant believes that the Opposer has sufficient knowledge as to the basis of the allegation
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`of fraud as an affirmative defense. However, the Applicant believes that proposed First Amended
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`Answer would add clarity and that the amendment should be granted.
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`CONCLUSION
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`The Opposer has objected to the lack of boilerplate affirmative defenses and its arguments
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`seem to demonstrate that the affirmative defenses were clearly not understood. The error seems
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`to have been, in part, the Applicant’s failure to use boilerplate affirmative defenses. However, the
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`Opposer’s misrepresentations of the arguments and the law have undoubtedly added to the
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`confusion. The Applicant does not object to the Board striking the affirmative defense which
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`reserves to raise right to raise additional affirmative defenses as they become available since the
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`right to amend will always be available when justice so requires and at the discretion of the Board.
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`The Applicant requests that the Board deny the Motion to Strike and grant the co-pending Motion
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`to Amend the Answer.
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`5
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`

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`Dated: March 13, 2017.
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`Respectfully submitted,
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`/ James M. Francis /
`James M. Francis
`FOWLER BELL PLLC
`300 W. Vine St., Ste. 600
`Lexington, KY 40507
`Phone: (859) 252-6700
`Fax: (859) 255-3735
`jfrancis@fowlerlaw.com
`COUNSEL FOR THE PLAINTIFF
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`
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`CERTIFICATE OF SERVICE
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`A true and accurate copy of the foregoing was filed and served via ESTTA on this 13th
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`day of March 2017 to the following counsel of record.
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`/James M. Francis/
`COUNSEL FOR THE APPLICANT
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`6
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`Michael Hargis
`Trevor Graves
`King & Schickli PLLC
`247 N Broadway
`Lexington, KY 40507
`Michael@iplaw1.net
`trevor@iplaw1.net
`COUNSEL FOR THE OPPOSER
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