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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA745822
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`Filing date:
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`05/11/2016
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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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`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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`Attachments
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`91227198
`
`Plaintiff
`DFBK, LLC
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`John Buckman
`Buckman Group - Corporate Counsel LLC
`11 S. Passaic AvenueSecond Floor
`CHATHAM, NJ 07928
`UNITED STATES
`john@buckman-group.com
`
`Motion to Dismiss - Rule 12(b)
`
`John Buckman
`
`john@buckman-group.com
`
`/John Buckman/
`
`05/11/2016
`
`ReponseInOppositionToMotionToDismiss 5-11-16.pdf(283327 bytes )
`CertificateOfService_OppositionToMotionToDismiss 5-11-16.pdf(77657 bytes )
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`

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`Opposition No. 9122719
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`DFBK, LLC.,
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`Mark: DEFEND NYC
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`Opposer,
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`Application Serial No. 86670087
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`v.
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`Maxima IP Holdings I, LLC.,
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`Applicant.
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`Opposition No. 9122719
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`OPPOSER'S OPPOSITION WITH INCORPORATED BRIEF
`TO APPLICANT'S MOTION TO DISMISS
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`Opposer, DFBK, LLC ("DFBK” or “Opposer”), by and through its attorney,
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`Buckman Group – Corporate Counsel, LLC, hereby opposes Applicant Maxima IP
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`Holdings I, LLC.'s ("MIPH" or “Applicant”) Motion to Dismiss Opposer's Notice of
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`Opposition. Contrary to MIPH's Motion, DFBK's claims are sufficiently pleaded in
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`accordance with Federal Rules of Civil Procedure ("FRCP") and case law from the
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`Trademark Trial and Appeal Board ("TTAB").
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`I.
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`Background
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`Applicant submitted an application to register the mark "Defend NYC"
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`bearing application Serial No. 86670087 as a trademark for use on goods described
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`as "Clothing, namely, shirts, t-shirts, long-sleeved shirts, under shirts, polo shirts,
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`night shirts, rugby shirts, jerseys, scrubs not for medical purposes, smocks, dress
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`shirts, culottes, stretch pants, overalls, coveralls, denim jeans, jumpers, jump suits,
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`stretch tops, tube tops, crop tops, tankinis, halter tops, hooded sweat shirts, wraps,
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`warm-up suits, jogging suits, track suits, snow suits, parkas, capes, ponchos,
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`Opposition No. 9122719
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`cardigans, pants, jean jackets, cargo pants, shorts, boxer shorts, tops, tank tops, sweat
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`shirts, sweat jackets, sweat shorts, sweat pants, blouses, dresses, sweaters, vests,
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`fleece vests, pullovers, jackets, coats, blazers, suits, turtlenecks, reversible jackets,
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`wind-resistant jackets, shell jackets, sports jackets, golf and ski jackets, heavy coats,
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`over coats, top coats, cloth ski bibs, swimwear, beachwear, tennis wear, surf wear, ski
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`wear, infantwear, swim caps, visors, headbands, ear muffs, neckerchiefs, thermal
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`underwear, long underwear, briefs, bras, panties, thongs, G-strings, singlets,
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`underclothes, night gowns, nighties, lingerie, slips, sarongs, leg warmers, leggings,
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`tights, leotards, caps, hats, headwear, scarves, bandanas, belts, neckwear, ties,
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`underwear, socks, loungewear, robes, pajamas, sleepwear, hosiery, gloves, rain
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`slickers, boots, galoshes, rainwear, footwear, shoes and sneakers, sandals, flip-flops,
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`and slippers" in International Class 025 ("Applicant's Mark"). Opposer obtained an
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`extension of time for filing a Notice of Opposition against the Application through
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`March 19, 2016. On March 16, 2016, Opposer filed its Notice of Opposition in this
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`matter (the "Opposition"). On April 26, 2016, Applicant filed its Answer (the
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`"Answer") to the Notice of Opposition. On April 26, Applicant filed a Motion To
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`Dismiss (the "Motion") under Federal Rules of Civil Procedure (FRCP) Rule 12(b)
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`Opposer's Notice of Opposition.
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`II.
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`Arguments
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`1. Standard – Motion to Dismiss
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`To withstand a motion to dismiss for failure to state a claim upon which
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`relief can be granted, a plaintiff need only allege sufficient factual content
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`Opposition No. 9122719
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`that, if proved, would allow the Board to conclude, or to draw a reasonable
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`inference that (1) the plaintiff has standing to maintain the proceeding, and (2)
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`a valid ground exists for opposing or canceling the mark. Doyle v. Al
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`Johnson's Swedish Restaurant & Butik, Inc. 101 USPQ2d 1780 (TTAB 2012),
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`citing Young v. AGB Corp., 47 USPQ2d 1752, 1754 (Fed Cir. 1998); TBMP
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`§503.32.
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`Specifically, a complaint "must contain sufficient factual matter, as
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`accepted as true, to 'state a claim to relief that is plausible on its face,'"
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v.
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`Twombly, 550 U.S. 554, 570 (2007)).
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`However, the plausibility-standard does not require that a plaintiff set
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`forth detailed factual allegations. Totes-Isotoner Corp. v U.S., 594 F.3d 1346,
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`1354 (Fed Cir. 2010). Instead, a plaintiff need only allege "enough factual
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`matter… to suggest that a [claim is plausible]" and "raise a right to relief
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`above the speculative level." Id. (quoting Bell Atlantic Corp. v. Twombly, 550
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`U.S. 544, 555-6 (2007)).
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`It is important to note that "for purposes of evaluation the sufficiency of
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`the pleadings, all disputed issues, and all reasonable inferences are construed
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`in the light most favorable to the pleading party." Nike, Inc. v. Palm Beach
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`Crossfit, Inc., 116 USPQ2d 1025, 1028 (TTAB 2015) (citing Advanced
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`Cardiovascular Sys., Inc. v. SciMed Life Sys. Inc., 26 USPQ2d 1038, 1041
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`(Fed. Cir. 1993)).
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`Opposition No. 9122719
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`Furthermore, Applicant erroneously cites Young v. AGB Corp., 152 F.3d
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`1377, 1378-1379 (Fed. Cir. 1998). The present matter is not analogous to the
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`situation in which the parties found themselves in the Young v. AGB Corp.
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`matter. Young was the Opposer and had no registered trademark with the
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`United States Patent and Trademark Office. Young's argumentation was
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`purely reliant on the economical harm a grant of a United States trademark
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`registration to the AGB Corp would have brought about. In this current
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`matter, DFBK has a United States registered trademark for its marks and it is
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`these trademarks which provides it statutory grounds under the Lanham Act,
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`§13, Oppositions, to oppose the Applicant's application for trademark
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`registration.
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`Applicant also improperly cites Anderson v. Kimberly-Clark Corp., 570
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`Fed. Appx. 927 (Fed. Cir 2014). In Anderson v. Kimberly-Clark Corp., that
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`involved patent infringement, the court was tasked with determining whether
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`an accused product infringes a patented design, in which the court applied the
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`"ordinary observer" test, that is, whether "an ordinary observer, familiar with
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`the prior art designs, would be deceived into believing that the accused
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`product is the same as the patented design." Anderson v. Kimberly-Clark
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`Corp holds no bearing on the current trademark matter at bar.
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`2. DFBK Sufficiently Pleaded Its Claims in its Notice of Opposition
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`DFBK's Notice of Opposition includes ample factual statements to support
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`its claims of Likelihood of Confusion and Dilution. For purposes of the
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`Motion, the germane facts in the Notice of Opposition are as follows:
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`Opposition No. 9122719
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`a. DFBK, by and through its predecessors and related companies, is
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`an established lifestyle, clothing and apparel brand that began in
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`1996 with its “Defend Brooklyn” mark.
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`b. DFBK, through its predecessors and related companies, has used
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`the DEFEND BROOKLYN word mark in commerce in
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`connection with clothing products since at least 1996. Over the
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`past 20 years, DFBK has used the word and design marks
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`DEFEND BROOKLYN, DEFEND DETROIT and other
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`“defend” marks in connection with the marketing and sale of
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`clothing, including tee shirts, shirts, shorts, pants, swim suits,
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`socks, footwear, hats, caps, blouses, sweaters, underwear, vests,
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`tank tops, skirts, sweat shirts and sweat pants.
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`c. Over the years, DEFEND BROOKLYN has become a
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`recognized brand in the New York City area (commonly known
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`to all as NYC), and having been publicly worn by such
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`celebrities Serial No. 86670087 25 as Spike Lee
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`(https://en.wikipedia.org/wiki/Spike_Lee), Snoop Dogg
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`(https://en.wikipedia.org/wiki/Snoop_Dogg), Kobe Bryant
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`(https://en.wikipedia.org/wiki/Kobe_Bryant), Maxwell
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`(https://en.wikipedia.org/wiki/Maxwell_(musician)), Zoey
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`Dollaz (https://en.wikipedia.org/wiki/Zoey_Dollaz), Lil Bibby
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`(https://en.wikipedia.org/wiki/Lil_Bibby), Bryshere Y. Gray
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`(https://en.wikipedia.org/wiki/Bryshere_Y._Gray), Marc John
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`Opposition No. 9122719
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`Jeffries (https://en.wikipedia.org/wiki/Marc_John_Jefferies), and
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`others.
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`d. The “DEFEND” brand has been recognized as DFBK’s company
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`symbol or closely associated with DFBK. In particular,
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`DEFEND BROOKLYN as come to symbolize DFBK and its ties
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`to the New York City culture. Millions of people have been
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`exposed to, and recognize, DFBK’s “Defend” marks, including
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`DEFEND BROOKLYN.
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`e. DFBK has offered and sold the DEFEND BROOKLYN apparel
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`since 1996 and uses the “defend” marks regularly in commerce,
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`on its website (http://www.defendbrooklyn.com/) and elsewhere.
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`DFBK has sponsored a number of well-attended, high-profile
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`New York City events, as depicted on EXHBIT B of Notice of
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`Opposition
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`f. DFBK is the owner of valid and subsisting United States
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`trademark registrations for “defend” marks covering a wide
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`variety of goods and services as outlined in Notice of Opposition
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`g. The DEFEND BROOKLYN marks have received media
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`attention, including mentions in, among other outlets, The
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`Village Voice, OK Magazine, RadarOnline.com, Wired
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`Magazine, Star Magazine, TrendHunter.com, Serial No.
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`86670087 29 PageSix.com, Life & Style Magazine, and
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`StupidDope.com.
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`Opposition No. 9122719
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`h. In February 2016, DFBK open its DEFEND BROOKLYN store
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`in the South Street Seaport of New York City, further expanding
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`and exposing its mark to the New York City community.
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`i. Through its long use of the DEFEND BROOKLYN marks, and
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`substantial advertising, promotion, and public exposure, DFBK
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`has developed valuable goodwill in its distinctive DEFEND
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`BROOKLYN mark and other “defend” marks, and the DEFEND
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`BROOKLYN mark has a long history of use and publicity,
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`especially in the New York City area.
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`j. DFBK has used its DEFEND BROOKLYN and other “defend”
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`marks in commerce before any date of first use that Applicant
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`may establish in connection with Applicant’s “Defend NYC”
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`mark.
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`DFBK is not required to prove its claims to the hilt in its Notice of
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`Opposition. Pleadings necessarily contain fewer facts than during trial as
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`pleadings are alleged based on information gathered prior to conducting
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`discovery. Granting MIPH's Motion would require a party to plead all facts
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`at the start of a proceeding, which would undermine the discover process
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`and subvert trial procedure. There can be no doubt that MIPH is on notice
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`of the claims against it. As demonstrated, DFBK has met the standards set
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`forth by the Board and the FRCP in its Notice of Opposition such that
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`Opposition No. 9122719
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`DFBK's Notice of Opposition provides a statement of claims for which
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`relief can be granted.
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`III. The Opposer's Marks
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`In cases where the Applicant and the Opposer deal in competing products, the
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`Board and the Courts look to the marks themselves. Interspace Corp v. Lapp, Inc.,
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`721 F.2d 460, 462 (citing "… the court will generally examine the registered mark,
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`determine whether it is inherently distinctive or has acquired sufficient secondary
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`meaning to make it distinctive, and compare it against the challenged mark").
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`Applicant erroneously misreads TCPIP Holdings Company, Inc., v HARR
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`Communications Inc, et al., 244 F.3d 88, 96 (2nd Cir. 2001) in stating that the
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`Opposer's "DEFEND BROOKLYN" mark is merely geographically descriptive in
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`quality and as such, is not entitled to claim of its registered trademark protection for
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`its mark. In TCPIP v. HARR, the district court "failed to consider the narrower scope
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`of protection afforded by the Lanham Act to descriptive marks or the lesser likelihood
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`of confusion that arises in the case of descriptive marks." As such, the appeals court
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`instructed the district court on remand to review all of the domain names at issue
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`other than the nine on which the court affirmed the injunction, to determine whether
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`to issue a preliminary injunction based on the principles articulated in the Second
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`Circuit's decision. The Second Circuit rejected defendant’s claim that its actions
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`constituted fair use, i.e., it was using the domain names at issue only in their ordinary
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`descriptive sense to describe defendant’s goods or services as permitted in 15 U.S.C.
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`§ 1115(b)(4). The court explained that the fair-use provision applies only where the
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`name is used descriptively "otherwise than as a mark." Defendant’s use of the
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`Opposition No. 9122719
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`domain name "thechildrensplace.com" as the "address, or name, of its web site" was
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`used “otherwise than as a mark,” and was thus not a descriptive use.
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`On remand, the court granted plaintiff’s motion for summary judgment on its
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`infringement and dilution claims. The court found that plaintiff’s mark was distinctive
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`and famous, defendant’s domain names were identical or confusingly similar to
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`plaintiff’s mark, and defendant had a bad-faith intent to profit from plaintiff's mark.
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`Plaintiff’s trademark registrations created a presumption that the mark THE
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`CHILDREN’S PLACE was inherently distinctive and not merely descriptive, and
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`defendants failed to rebut that presumption. Unlike at the preliminary-injunction
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`stage, plaintiff was able to established fame at trial by submitting extensive evidence
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`of use of the mark and sales revenues and advertising expenditures under the mark.
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`Here, Opposer has provided that information in its Notice of Opposition and again in
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`this Opposition to the Motion to Dismiss as noted above.
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`Analogous to the plaintiff's position in TCPIP v. HAAR Opposer's United States
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`trademark registrations creates a presumption that the Opposer's registered marks are
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`inherently distinctive and not merely descriptive, the Applicant's mark is confusing
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`similar to the Opposer's marks which creates a likelihood of consumer confusion
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`regarding the source of the goods offered by both the Opposer and the Applicant, and
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`Applicant fails to rebut this presumption in its Motion To Dismiss.
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`IV. Mark Sufficiency and Strength
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`In NASDAQ Stock Market, Inc. v. Antartica S.r.l., 69 U.S.P.Q.2d 1718 (TTAB
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`2003) the TTAB held that in an opposition proceeding, a trademark owner "that
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`establishes its ownership of a distinctive and famous mark may prevail upon a
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`Opposition No. 9122719
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`showing of likelihood of dilution." The 1999 amendment to the Lanham Act which
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`allows for dilution claims in Board proceedings specifically refers to §13,
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`Oppositions, and §14, Cancellations as proceedings in which a dilution claim may be
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`raised. The result is that a holder of a famous mark may prevent a person from
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`securing or retaining registration of a mark upon establishing a finding of the
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`likelihood of dilution.
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`DFBK has used its marks in commerce for twenty years. The DFBK marks are
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`well known throughout the New York City area as well as throughout the United
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`States of America. The DFBK brand has received media coverage and has a celebrity
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`client and fan base. Granting a registration to the Applicant for its mark would
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`unjustly enrich the Applicant by providing it with the means to profit from the long
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`standing goodwill and fame of the Opposer's United States registered marks.
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`Opposition No. 9122719
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`V.
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`Conclusion
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`For the reasons stated above, Opposer DFBK, LLC respectfully requests that the
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`Board deny MIPH's Motion and for such other relief as this Honorable Board deems
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`appropriate. In the alternative, should the Board determine that the claim of
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`likelihood of confusion and the claim of dilution are not pleaded with sufficiency,
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`DFBK hereby respectfully requests to leave to amend the Notice of Opposition.
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`

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`Opposition No. 9122719
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`Dated: May 10, 2016
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`Respectfully submitted,
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`/John
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`By:
`Buckman/
`John Buckman,
`Esq.
`DFBK, LLC
`11 S. Passaic Avenue
`Second Floor
`Chatham, NJ 07928
`ATTORNEY FOR OPPOSER
`DFBK, LLC
`
`
`
`

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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a copy of the foregoing notice of Opposer's
`Opposition With Incorporated Brief to Applicant's Motion To Dismiss has been furnished
`by electronic delivery upon Maxima IP Holdings I, LLC and its counsel of record:
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`Thomas McNiff, Esq.
`McNiff Law Group
`9 Underhill Avenue
`Locust Valley NY 11560
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`BUCKMAN GROUP – CORPORATE COUNSEL, LLC
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`Dated: May 11, 2016
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`
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`By: / John Buckman, Esq./
`John Buckman, Esq.
`11 S. Passaic Avenue
`2nd Floor
`Chatham, NJ 07928
`
`ATTORNEY FOR OPPOSER
`DFBK, LLC

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