Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA798193
`01/30/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91226647
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Food Dudes Delivery, LLC
`
`NORMAN M ABRAMSON
`GRAY PLANT MOOTY MOOTY & BENNETT PA
`500 IDS CENTER, 80 SOUTH EIGHTH STREET
`MINNEAPOLIS, MN 55402-3796
`UNITED STATES
`trademark@gpmlaw.com, cynthia.hefferan@gpmlaw.com, nor-
`man.abramson@gpmlaw.com, jennifer.veldhuizen@gpmlaw.com,
`Lori.Wiese-Parks@gpmlaw.com
`
`Reply in Support of Motion
`
`Norman M. Abramson
`
`amy.milbradt@gpmlaw.com
`
`/Norman M. Abramson/
`
`01/30/2017
`
`Food Dudes - Reply Brief in Support of its Motion to Amend Answer.pdf(33333
`bytes )
`Food Dudes - Declaration of M Littman in support of Reply Brief with exs
`1-14.pdf(5615717 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Dude IP, LLC,
`
`Opposition No.: 91226647
`
`Opposer,
`
`Application No.: 86/577,684
`Mark: FOOD DUDES
`
`v.
`
`Food Dudes Delivery, LLC,
`
`Applicant.
`
`APPLICANT’S REPLY BRIEF IN SUPPORT OF ITS MOTION
`TO AMEND ANSWER AND ASSERT COUNTERCLAIM
`
`Applicant Food Dude Delivery, LLC, hereby submits its reply brief in support of its
`
`motion to amend its answer and assert a counterclaim, in accordance with TBMP §§ 502.02(b).
`
`Consistent with the Board’s prior decisions, Applicant has shown that it should be granted leave
`
`to amend its answer and assert counterclaims of fraud and abandonment on the grounds that
`
`Applicant was not aware of the facts giving rise to its proposed counterclaims prior to December
`
`2016. Because Applicant timely moved for leave to amend its answer after discovering the new
`
`information, and because the information lays sufficient grounds for counterclaims of fraud and
`
`abandonment, Applicant’s motion should be granted.
`
`ARGUMENT
`
`The Board “liberally grants leave to amend pleadings at any stage of a proceeding . . .
`
`unless entry of the proposed amendment would violate settled law or be prejudicial to the rights
`
`of the adverse party.” TBMP § 507.01. When a proposed amendment will neither violate settled
`
`law nor prejudice the Opposer, the Board will “freely grant leave,” as justice so requires. Fed. R.
`
`Civ. P. § 15(a); TBMP § 315. Applicant seeks leave to amend its answer to add counterclaims of
`
`fraud and abandonment based on information Applicant discovered in late-December 2016: that
`
`1
`
`

`

`while Opposer claims a first use date of October 7, 2005 based on an assignment from Marc
`
`Veneziano in 2012 (the “2012 assignment”), neither Opposer nor its assignor used the mark in
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`connection with restaurant delivery services until 2009. Applicant also learned that Veneziano
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`applied for and received Reg. No. 4101367, ( the “’367 Reg.”), despite failing to use the mark for
`
`at least three consecutive years. Shortly after discovering this information Applicant filed this
`
`motion for leave to amend. As such, Applicant’s motion should be granted.
`
`I.
`
`Applicant’s motion is timely.
`
`Applicant filed this motion for leave to amend its answer only two weeks after learning
`
`the information that gave rise to its proposed counterclaims. This is well within the time frame
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`that the Board generally recognizes as timely. See TBMP §507.02(b) (“If, during the proceeding,
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`the defendant learns of grounds for a counterclaim to cancel a registration pleaded by the
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`plaintiff, the counterclaim should be pleaded promptly after the grounds therefor are learned.”);
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`Cal. Board Sports, Inc. v. Topo Athletic, LLC, 2014 WL 11032973, at *4 (TTAB Jan. 31, 2014)
`
`(finding motion timely when filed within one month of learning information). Applicant learned
`
`in late-December that Opposer was unwilling (or unable) to produce information of use prior to
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`2009. In its response to Interrogatory No. 1, Opposer listed August 1, 2009 and October 7, 2009
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`as its dates of first use, contrary to its previously claimed first use date of October 7, 2005.
`
`(Declaration of Molly R. Littman (“Littman Decl.”), Ex. 1.) In response to Applicant’s
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`Document Request No. 25, Opposer also refused to produce documents concerning the 2012
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`assignment, on the grounds that it “no longer has certain documents, particularly emails,
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`exchanged with [Delivery Dudes, LLC and/or Marc Veneziano] . . . .” (Littman Decl., Ex. 2.)
`
`Applicant proposed a meet-and-confer conference, and the parties’ counsel held a telephonic
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`2
`
`

`

`conference on December 22, 2016 where the issue was addressed. (Littman Decl., Ex. 3.)
`
`Opposer has still not produced the requested discovery. (Littman Decl. ¶ 4.)
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`Opponent contends that regardless of its failure to comply with its discovery obligations,
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`Applicant’s motion is not timely because these documents were “available to” Applicant at the
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`time Applicant’s answer was filed. (11 TTABVUE 15.) However, the mere fact that archives of a
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`defunct website are publically available does not render a motion to amend untimely, particularly
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`where the party knowing of the relevant information failed to disclose it. See e.g., Intel Corp. v.
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`Bevintel, LLC, 2013 WL 4111810, at *2 (N.D. Cal. Aug. 12, 2013) (granting motion for leave to
`
`amend where list of franchisees was public information but the non-movant failed to “direct [the
`
`plaintiff] to this information until last month . . . .”); Centerforce Techns., Inc. v. Austin
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`Logistics, Inc., 2000 WL 652943, at *5 (D. Del. Mar. 10, 2000) (finding no undue delay where
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`information about patent infringement was publicly available, but where nonmovant refused
`
`movant’s request for additional information).
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`Beyond the Internet archive of www.asudeliverydudes.com, proof of Opposer’s sworn
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`use of DELIVERY DUDES since 2005 is not publically available. Opposer has repeatedly
`
`asserted that its date of first use is October 7, 2005 in its Notice of Opposition, (1 TTABVUE 1),
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`its trademark applications, (Littman Decl., Exs. 4-5), and in other USPTO filings, such as
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`Opposer’s Section 7 filing, (Littman Decl., Ex. 6). Thus, at the time Applicant filed its answer, it
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`did know Opposer could provide no evidence of use on restaurant delivery services since
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`October 7, 2005. It was not until Applicant received discovery responses that it became clear that
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`Opposer’s alleged first-use date was false. Applicant did not have this information at the time of
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`its original answer. Further, after Applicant filed its answer, the parties stayed the opposition
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`proceedings twice to discuss settlement, once before discovery even opened. (5 TTABVUE 1, 7
`
`3
`
`

`

`TTABVUE 1.) Thus, while Opposer alleges that it took eight months for Applicant to file this
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`motion, it ignores that the matter was stayed for most of that time and that the parties did not
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`start discovery until settlement talks broke down in mid-November 2016. (Littman Decl. ¶ 15;
`
`Ex. 3.)
`
`Opposer also blankly asserts that Applicant’s alleged untimeliness is prejudicial to
`
`Opposer. (11 TTABVUE 15.) The Board routinely finds that a party is not prejudiced when it is
`
`in possession of the information needed to try the added claim. See e.g., Saddlesprings, Inc. v.
`
`Mad Croc Brands, Inc., 2014 WL 1649335, at *6 (TTAB Mar. 31, 2014) (finding no prejudice
`
`where the evidence regarding petitioner’s fraud claim was in respondent’s possession); PB
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`Brands, LLC v. KRBL Ltd., 2013 WL 11247071, at * 3 (TTAB Dec. 5, 2013). Because Opposer
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`holds all of the relevant information pertaining to its claimed use prior to 2009 and the 2012
`
`assignment—which it still has not produced—it is not prejudiced by the addition of Applicant’s
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`proposed counterclaims. Applicant’s motion is timely and should be granted.
`
`II.
`
`Applicant is not required to prove its counterclaims.
`
`Opposer spends at least half of its brief asserting that Applicant’s motion should be
`
`denied because Applicant has not proven its counterclaims “to the hilt.” (11 TTABVUE 6.) 1
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`However, in a motion for leave to amend, the movant need not “actually prove the allegation
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`sought to be added to a pleading.” TBMP §507.01. Any determination on the merits of the
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`counterclaim is reserved for “after the introduction of evidence at trial or in connection with a
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`proper motion for summary judgment.” Id. In fact, the Board has cautioned non-movants from
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`arguing against granting leave to amend “merely because the nonmoving party believes the
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`1 The “prove to the hilt” argument is wholly inconsistent with Opposer’s untimeliness argument,
`(supra) as only two weeks before filing the motion that Applicant learned Opposer that has no
`evidence to support its multiple sworn statements to the Office and in pleadings of use of the
`mark DELIVERY DUDES for restaurant delivery services dating back to October 7, 2005.
`
`4
`
`

`

`moving party will not be able to prove the additional claim or allegations at trial.” Id. While
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`Opposer asserts Applicant must prove its claims “to the hilt” it does not attempt to refute
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`Applicant’s evidence that its sworn statements were in fact false. Opposer misstates the law with
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`regard to what evidence Applicant must show to amend its answer and assert a counterclaim.
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`III.
`
`Applicant’s abandonment counterclaim is legally sufficient.
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`Disregarding the fact that Applicant is not required to prove its allegations at this time,
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`Applicant’s proposed counterclaim for abandonment is legally sufficient and not futile as
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`Opposer contends. A trademark is abandoned “when its use has been discontinued with intent
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`not to resume such use.” 15 U.S.C. §1127. “Evidence of nonuse of a mark in commerce for three
`
`consecutive years constitutes a prima facie showing of abandonment.” Pristine Nutraceuticals,
`
`LLC v. Tuong Van Nguyen, 2016 WL 3015160 (TTAB May 17, 2016). On its own, Applicant
`
`has been able to uncover the following despite Opposer’s attempts to block discovery:
`
`1. Marc Veneziano used the DELIVERY DUDES, LLC trademark until about mid-
`April 2007. (Littman Decl., Ex. 7, Website Archives.)
`
`2. Marc Veneziano has not used the DELIVERY DUDES, LLC trademark since
`about mid-April 2007. (Littman Decl., Ex. 8, Post-April 2007 Website Archives.)
`
`3. Marc Veneziano applied for and received a trademark registration for
`DELIVERY DUDES, LLC on February 21, 2012. (Littman Decl., Ex. 9,
`Veneziano Application.)
`
`4. On September 17, 2012, Marc Veneziano “assigned” the trademark to Opposer
`for $10.00. (Littman Decl., Ex. 10, Assignment.)
`
`As the exhibits listed above show, Marc Veneziano used the trademark DELIVERY DUDES,
`
`LLC until about mid-April 2007, at which time a search of Internet archives shows that
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`Veneziano’s website, www.asudeliverydudes.com, was taken down. (Littman Decl., Exs. 7-8.)
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`Such evidence, coupled with Opposer’s failure to provide any evidence of use of the
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`DELIVERY DUDES, LLC mark after 2007, leads Applicant to credibly assert that Veneziano
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`5
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`

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`failed to use the mark for a period of at least three years and, therefore, abandoned the trademark
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`sometime in 2010.
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`Nonetheless, Veneziano filed a use-based application and received a trademark
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`registration for DELIVERY DUDES, LLC in 2012 (the ‘367 Reg.). (Littman Decl., Ex. 9.)
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`However, because Veneziano abandoned the trademark by 2010, his procurement of the
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`trademark registration was at least improper, if not fraudulent. “Trademark rights are acquired
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`and retained only through actual use of the mark.” S.C. Johnson & Son, Inc. v. Nutraceutical
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`Corp., 2014 WL 131114 (E.D. Wis. Jan. 14, 2014). Thus, “the owner of a mark will lose his
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`exclusive rights if he fails actually to use it.” Sands, Taylor & Wood Co. v. Quaker Oats Co., 978
`
`F.2d 947, 954-55 (7th Cir. 1992). “An application filed under Trademark Act Section 1(a)
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`includes a declaration that the mark is in use at the time of filing; therefore, an applicant filing
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`under this provision is required to have used its mark in commerce prior to the filing of its
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`application. By logical extension, a registration issued from an underlying application not
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`meeting this requirement is void ab initio.” East West Bank CO. v. The Plubell Firm, LLC¸2016
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`WL 521924, at *20 (TTAB Sept. 8, 2016).
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`In his application, filed on March 17, 2011, Veneziano stated the following:
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`In International Class 035, the mark was first used at least as early as 10/07/2005,
`and first used in commerce at least as early as 10/07/2005, and is now in use in
`such commerce. The applicant is submitting one specimen(s) showing the mark as
`used in commerce on or in connection with any item in the class of listed goods
`and/or services, consisting of a(n) this is the logo developed exclusively for
`Delivery Dudes,
`LLC and
`advertised
`on
`our
`previous website
`www.asudeliverydudes.com, and is still preserved on our facebook page under the
`Arizona State University Network. It is the same logo on business cards.
`
`(Littman Decl., Ex. 9) (emphasis added). Veneziano therefore confirms that at the time he filed
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`the ‘367 Reg., the website hosted at www.asudeliverydudes.com was no longer active,
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`essentially confirming here had been no use since 2007. (Id.) Veneziano also states that for
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`6
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`

`

`“informational purposes only” his current website is www.deliverydudes.com. The Internet
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`archives for www.deliverydudes.com also show no activity since 2007, let alone on March 17,
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`2011—the date of Veneziano’s application. (Id. at Exs. 11-13, Screenshots of Website
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`Archives.) Additionally, Veneziano’s accepted use specimen was from 2006, over four years
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`before the application was filed. (Id. at Ex. 14 at 2.) Despite this, Veneziano swore that the 2006
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`“specimen(s) was/were in use in commerce at least as early as the filing date of the application”.
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`(Id. at 1.) Because Veneziano was not providing services under the mark at the time the
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`application for the ‘367 Reg. was filed, his statements to the USPTO that the mark “is now in use
`
`in such commerce” was fraudulent, and warrants cancellation of the registration. See DC Comics
`
`v. Gotham City Networking, Inc., 2008 WL 4674611 (TTAB Sept. 24, 2011) (“[T]he law is clear
`
`that an applicant may not claim a Section 1(a) filing basis unless the mark was in use in
`
`commerce on or in connection with all the goods or services covered by the Section 1(a) basis as
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`of the application filing date.”). Because the DELIVERY DUDES, LLC trademark had not been
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`used in commerce for three consecutive years at the time Veneziano filed the use-based
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`application, the ‘367 Reg. is invalid and should be cancelled. Nowhere in its brief does Opposer
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`address or contest any of these facts.
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`Lastly, because DELIVERY DUDES, LLC was abandoned sometime in 2010 (more than
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`three years after its last use), Veneziano could not have assigned the ‘367 Reg. to Opposer in
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`2012. See Auburn Farms Inc. v. McKee Foods Corp., 51 U.S.P.Q.2d 1439 (TTAB 1999) (an
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`abandoned trademark cannot be assigned); McCarthy on Trademarks § 17:14 (a defunct
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`company no longer has any goodwill to convey). Thus, any benefit that Opposer contends it
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`received from the assignment, including an October 7, 2005 first-use date, is unsupported. The
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`assignment was improper and as such Opposer does not have rights in the trademark dating back
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`7
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`

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`to 2005. See interstate Net Bank v. NetB@nk, Inc., 348 F. Supp. 2d 340, 351 (D. N.J. 2004)
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`(granting summary judgment and directing cancellation of the NETBANK registration because
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`the defendant had obtained the registration through an invalid assignment in gross, and the
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`assignor had abandoned the mark for failure to use for three consecutive years). Applicant’s
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`proposed abandonment counterclaim is therefore neither legally insufficient nor futile.
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`IV.
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`Applicant’s fraud counterclaim is legally sufficient.
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`On the same token, because Opposer did not receive any rights in DELIVERY DUDES,
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`LLC due to the invalid assignment, its repeated claim that it has used the mark in commerce
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`since October 7, 2005 is fraudulent. “Fraud in procuring a trademark registration occurs when an
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`applicant knowingly makes false, material representations of fact in connection with its
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`application with intent to deceive the USPTO.” Nationstar Mortg. LLC v. Mujahid Ahmad, 112
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`U.S.P.Q.2d 1361, at *3 (TTAB 2014). In the trademark context, a fact is material if the
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`registration would not have issued had the truth been known to the examiner. See CTF
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`Development, Inc. v. Penta Hospitality, LLC, 2009 WL 3517617, at *3 (N.D. Cal. 2009); see
`
`also Bauer Bros, LLC v. Nike, Inc., 2011 WL 843971, at *6 (S.D. Cal. Mar. 8, 2011)
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`(“Statements regarding the use of the mark on the identified goods are certainly material to the
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`issuance of a registration.”). Based on the evidence that Applicant has been able to uncover thus
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`far, Applicant contends that had the trademark examiner known that the DELIVERY DUDES,
`
`LLC trademark was abandoned, Opposer’s Section 7 affidavit and assignment, as well as its
`
`subsequent trademark applications claiming use back to 2005 would have been rejected.
`
`Applicant also contends that Opposer intended to deceive the USPTO when it claimed
`
`first use on October 7, 2005 because Opposer knew that Veneziano had not used the mark in
`
`commerce for at least three years. As of March 2013, Veneziano’s prior domain,
`
`8
`
`

`

`www.deliverydudes.com, had resolved to Opposer’s current website, meaning that when
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`Opposer filed its Section 7 declaration on April 23, 2013 it knew that Veneziano’s website had
`
`not been active since at least 2007. Despite this, Opposer filed a Section 7 declaration, and
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`several later documents, with the USPTO on the grounds that the mark had been continuously
`
`used in commerce since October 7, 2005. Such statements are clearly fraudulent. See Zodiac
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`Spirits, Inc. v. Anil Mezini, 2008 WL 885884, at *7 (TTAB Feb. 14, 2008) (cancelling
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`registration where assignor had fraudulently claimed use on goods that it had not used the mark
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`in connection with, and assignees procured and maintained the registration fraudulently.)
`
`From a public policy standpoint, Applicant requests that the Board find that Applicant’s
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`fraud counterclaim is not futile because Opposer has continuously claimed a first use date of
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`October 7, 2005 for no other purpose than to have priority over trademarks it deems confusingly
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`similar. McCarthy on Trademarks §16:1 (“The basic rule of trademark ownership in the United
`
`States is priority of use.”). Opposer has repeatedly claimed October 7, 2005 as its date of first use
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`because if the Board were to find the Parties’ marks confusingly similar, (though Applicant, and
`
`the Office, contend they are not), Applicant may have priority over Opposer. This is a knowingly
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`false extension of Opposer’s claimed first use on restaurant delivery services by over four years.
`
`Applicant began soliciting restaurants under its mark in 2008 and had its first use in commerce in
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`November 2009. (4 TTABVUE 1.) Opposer claims a first use and first use in commerce on
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`August 1, 2009, but has provided no evidence of a sale on that date. (Littman Decl. Ex. 1.)
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`Therefore, to allow Opposer to use an earlier first-use date could stifle Applicant’s rights to use
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`FOOD DUDES, even though Applicant may have been “first in time.” For these reasons,
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`Applicant’s fraud counterclaim is legally sufficient and not futile as Opposer contends. The
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`Board should grant Applicant’s motion for leave to amend.
`
`9
`
`

`

`V.
`
`If Applicant is not allowed to amend at this time, the denial should be without
`prejudice.
`
`Should the Board deny Applicant’s motion, it should do so without prejudice. Courts
`
`have denied motions for leave to amend without prejudice when the movants’ amended
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`pleadings are procedurally deficient under Fed. R. Civ. P. 9(b). See e.g., Boardwalk Apartments,
`
`L.C. v. State Auto Property & Cas. Ins. Co., 2012 WL 3024712, at *4 (D. Kan. July 24, 2012)
`
`(denying motion without prejudice and allowing movant to file subsequent motion and amended
`
`answer). Thus, if the Board agrees with Opposer that Applicant’s amended answer is
`
`procedurally deficient, Applicant requests that the Board deny the motion without prejudice and
`
`allow Applicant time to cure the deficiencies. Further, Opposer has still not fully responded to
`
`Applicant’s discovery requests, and given the lack of evidence Opposer has to support is
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`registrations and sworn statements, Applicant should be able to seek amendments based on
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`newly revealed discovery.
`
`CONCLUSION
`
`Applicant respectfully requests that the Board grant its motion for leave to amend its
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`answer and add its proposed counterclaims.
`
`Dated: January 30, 2017.
`
`Respectfully submitted,
`
`GRAY, PLANT, MOOTY, MOOTY &
`BENNETT, P.A.
`
`By:
`
`/Norman M. Abramson/
`Norman M. Abramson
`Email: Norman.Abramson@gpmlaw.com
`Molly R. Littman
`Email: Molly.Littman@gpmlaw.com
`500 IDS Center
`80 South Eighth Street
`Minneapolis, Minnesota 55402-3796
`Telephone: (612) 632-3000
`Fax: (612) 632-4444
`ATTORNEYS FOR FOOD DUDES
`DELIVERY, LLC
`
`10
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that this REPLY BRIEF IN SUPPORT OF APPLICANT’S MOTION
`
`TO AMEND is being emailed to the below counsel for Opposer pursuant to TBMP 502.02(a):
`
`Heidi Tandy
`Price Benowitz
`1691 Michigan Ave., Suite 360
`Miami, FL 33139
`Heidi@heidi8.com
`
`Dated: January 30, 2017
`
`/Norman M. Abramson/
`Norman M. Abramson
`
`Subscribed and sworn to before me
`this 30th day of January, 2017
`
`/Amy K. Milbradt/
`Notary Public
`My Commission Expires: 01/31/2018
`
`11
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Dude IP, LLC,
`
`Opposition No.: 91226647
`
`Opposer,
`
`Application No.: 86/577,684
`Mark: FOOD DUDES
`
`v.
`
`Food Dudes Delivery, LLC,
`
`Applicant.
`
`DECLARATION OF MOLLY R. LITTMAN IN SUPPORT OF REPLY BRIEF IN
`
`SUPPORT OF APPLICANT’S MOTION FOR LEAVE TO AMEND ITS ANSWER
`________________________________________________________________________
`
`I, MOLLY R. LITTMAN, declare as follows:
`
`1.
`
`I am an Attorney with the law firm of Gray, Plant, Mooty, Mooty & Bennett,
`
`P.A., which is counsel for Applicant in this matter.
`
`2.
`
`Attached as Exhibit 1 is a true and correct copy of excerpts from Opposer’s
`
`Responses to Applicant’s First Set of Interrogatories, dated December 15, 2016.
`
`3.
`
`Attached as Exhibit 2 is a true and correct copy of excerpts from Opposer’s
`
`Responses to Applicant’s First Set of Document Requests, dated December 15, 2016.
`
`4.
`
`Attached as Exhibit 3 is a true and correct copy of Applicant’s Meet and Confer
`
`Letter to Opposer, dated December 20, 2016. To date Opposer has not provided Applicant with
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`any further information or documents pertaining to the use of the mark DELIVERY DUDES by
`
`Mark Veneziano, communications with the Mr. Veneziano or the assignment of the U.S. Reg.
`
`No. 4101367.
`
`1
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`

`

`5.
`
`Attached as Exhibit 4 is a true and correct copy of excepts from Opposer’s
`
`trademark application, Serial No. 86731725, dated August 20, 2015.
`
`6.
`
`Attached as Exhibit 5 is a true and correct copy of excerpts from Opposer’s
`
`trademark application, Serial No. 86297424, dated June 2, 2014.
`
`7.
`
`Attached as Exhibit 6 is a true and correct copy of excerpts from Opposer’s
`
`Section 7 Declaration, Reg. No. 4101367, dated April 23, 2013.
`
`8.
`
`Attached as Exhibit 7 is a true and correct copy of a screenshot of the archived
`
`webpage www.asudeliverydudes.com, dated April 8, 2007.
`
`9.
`
`Attached as Exhibit 8 is a true and correct copy of a screenshot of the archived
`
`webpage www.asudeliverydudes.com, dated June 12, 2007.
`
`10.
`
`Attached as Exhibit 9 is a true and correct copy of excerpts from Veneziano’s
`
`trademark application for DELIVERY DUDES, LLC, Reg. No. 4101367, dated March 17, 2011.
`
`11.
`
`Attached as Exhibit 10 is a true and correct copy of excerpts from the assignment
`
`submitted to the USPTO, dated September 17, 2012.
`
`12.
`
`Attached as Exhibit 11 is a true and correct copy of a screenshot of the archived
`
`webpage www.deliverydudes.com, dated September 14, 2008.
`
`13.
`
`Attached as Exhibit 12 is a true and correct copy of a screenshot of the archived
`
`webpage www.deliverydudes.com, dated September 23, 2010
`
`14.
`
`Attached as Exhibit 13 is a true and correct copy of a screenshot of the archived
`
`webpage www.deliverydudes.com, dated March 17, 2011.
`
`15.
`
`Attached as Exhibit 14 is a true and correct copy of Veneziano’s response to
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`office action and amended specimen of use, dated September 22, 2011.
`
`2
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`

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`16.
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`From on or about April 28, 2016 to November 10, 2016, Applicant made
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`settlement offers to Opposer with little or no response from Opposer. Opposer’s counsel finally
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`provided a firm proposal on Thursday, November 10, 2016, which Opposer recanted the
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`following Tuesday, November 15, 2016. After that, Applicant served written discovery, shortly
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`followed by Opposer.
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`I declare under penalty of perjury of the laws of the United States that the foregoing is
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`true and correct.
`
`Dated: January 30, 2017
`
`/Molly R. Littman/
`Molly R. Littman
`
`3
`
`

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`Opposition No. 91226647
`Opposition No. 91226647
`
`EXHIBIT 1
`EXHIBIT 1
`
`3
`
`

`

`
`
`V.
`
`
`Dude IP, LLC,
`Opposer,
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91226647
`Application No.: 86/577,684
`Mark: FOOD DUDES
`
`Food Dudes Delivery, LLC,
`Applicant.
`_____________________________________________________________________
`
`
`
`OPPOSER’S RESPONSES TO APPLICANT’S FIRST SET OF INTERROGATORIES
`
`
`Pursuant to the rules of the Trademark Trial and Appeal Board and the Federal Rules of Civil
`Procedure, Opposer submits the following objections and responses to App1icant’s first set of
`interrogatories.
`
`
`
`GENERAL OBJECTIONS
`
`Opposer objects to each of the Definitions, Instructions and Interrogatories to the extent
`1.
`they seek to impose on Opposer any obligations or responsibilities other than those mandated by
`the Federal Rules of Civil Procedure and/or the Trademark Trial and Appeal Board ("TTAB")
`Rules.
`
`Opposer objects to each of the Definitions, Instructions and Interrogatories insufar as
`2.
`they seek information that is not in Opposer's possession or control.
`
`Opposer objects to each of the Definitions, Instructions and Interrogatories insofar as
`3.
`they seek information that is irrelevant and/or unlikely to lead to the discovery of admissible
`evidence.
`
`Opposer objects to each of the Definitions, Instructions and Interrogatories insofar as
`4.
`they seek information that is protected under attorney-client privilege or pursuant to the work
`product doctrine, or is in any other way a trade secret of Opposer, or is in any other way an
`applicable privilege.
`
`Opposer objects to each of the Definitions, Instructions and Interrogatories to the extent
`5.
`that it uses language incorporating or calling for a legal conclusion or making an erroneous
`statement of law. Opposer’s responses herein shall be as to matters of fact only, and shall not be
`construed as stating or implying any conclusions of law concerning the matters referenced in any
`interrogatory.
`
`

`

`
`Opposer objects to the Interrogatories to the extent they require any information or
`6.
`documents beyond what is presently available to Opposer based upon a reasonable search of its
`own files and a reasonable inquiry of present employees. Opposer responses herein are based on
`facts presently known to it and represent a diligent and good faith effort to comply with the
`Interrogatories. Opposer’s discovery and investigation into the matters specified is continuing.
`Opposer reserves all right to supplement or modify these responses with any pertinent
`information that may hereafter become known, or as may be informed by the opinions of any
`experts retained by the parties to testify in the trial of this matter.
`
`Opposer objects to the Interrogatories to the extent that more than 75 interrogatories
`7.
`including subparts, have been set forth by Applicant, in violation of Trademark Rule 2.120(d)(1).
`Nonetheless, Opposer is answering all the Interrogatories set forth herein.
`
`INTERROGATORY NO. 1: Identify each of Opposer's Services that Opposer has sold or
`offered for sale in the United States under each of Opposer's Marks, and for each identify:
`
`
`a. The date of first sale or offer for sale of each of the identified Opposer's Services
`within the United States, including but not limited to, restaurant take-out and delivery
`service;
`
`b. The date on which Opposer first sold each of the identified Opposer's Services in
`interstate commerce;
`
`c. The time period or periods during which Opposer sold each of the identified Opposer's
`Services under each of Opposer's Marks.
`
`d. The dollar amount of Opposer's Services sold under each of Opposer's Marks in the
`United States;
`
`e. The states in which Opposer has sold each of the identified Opposer's Services under
`each of Opposer's Marks;
`
`f. The bars, restaurants, or other prepared food retail outlets from which members of the
`general public ordered take-out delivery services through Opposer;
`
`g. The advertising or marketing expenditures for each of the identified Opposer's
`Services; and
`
`h. The person or persons with the most first-hand knowledge of the answers identified in
`Interrogatory No. 1 and its subparts.
`
`Objection; vague, ambiguous and unduly burdensome. Opposer further objects to “f” on grounds
`of overbreadth and lack of likelihood to lead to the discovery of admissible evidence. Without
`waiving these objections, Opposer states that it has performed the below-listed services in the
`
`

`

`United States in connection with its DELIVERY DUDES, DD and DD DELIVERY DUDES
`marks, as well as hex color #C02131; Opposer notes that ​it does not have a definitive date of first
`use or first use in interstate commerce for all the below-listed services and thus provides below a
`date by which each such mark was in use in commerce by Opposer or its predecessor in interest,
`with the stipulation that such marks may have been in use in commerce at an earlier date.
`Opposer further notes that it does not divide its marketing and/or advertising expenditures for
`each of its services, nor for each of its marks, and thus all advertising and marketing
`expenditures are for the promotion of all of its marks in connection with all of its services, and
`objects to such interrogatory as is unduly burdensome for Applicant to ask Opposer to so do.
`Opposer further does not differentiate its sales figures in a manner that would enable it to
`respond to Interrogatory “e” and objects to such interrogatory as it is unduly burdensome for
`Applicant to ask Opposer to so do.
`
`
`Retail and on-line grocery store services featuring home delivery service
`Delivery services to businesses
`Delivery services of goods ordered online and from local retail stores
`Delivery services of food
`Delivery services of beverages
`Delivery services of legal documents
`Delivery services of groceries
`Delivery services of general merchandise from local retail stores
`Delivery services of beer
`Delivery services of wine
`Delivery services of liquor
`Delivery services of cigarettes
`Delivery services of prescription drugs
`
`
`Retail and on-line grocery store services featuring home delivery service
`A While Opposer's predecessor in interest had its own date of first use, Opposer's Date of First
`Use of the DELIVERY DUDES mark is August 1, 2009
`B. Opposer or their predecessor in interest offered these services in interstate commerce at least
`as early as August 1, 2009
`C.Opposer’s advertising and promotion of these services has been consistent since the date of
`first use.
`D. Objection; Opposer does not separate out its revenue in such a manner.
`E. Opposer has advertised and promoted this service in Florida, Colorado, Oregon, Pennsylvania
`and Tennessee
`F. Objection as stated above.
`G. Objection as stated above.
`H. ​Ryan Sturgis
`
`Delivery services of goods ordered online and from local retail stores
`A While Opposer's predecessor in interest had its own date of first use, Opposer's Date of First
`Use of the DELIVERY DUDES mark is August 1, 2009
`
`

`

`B. Opposer or their predecessor in interest offered these services in interstate commerce at least
`as early as August 1, 2009
`C. Opposer’s advertising and promotion of these services has been consistent since the date of
`first use.
`D. Objection; Opposer does not separate out its revenue in such a manner.
`E. Opposer has advertised and promoted this service in Florida, Colorado, Oregon, Pennsylvania
`and Tennessee
`F. Objection as stated above.
`G. Objection as stated above.
`H. ​Ryan Sturgis
`
`Delivery servi