Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA820401
`05/11/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91228593
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Focus Approach, LLC
`
`ELLEN S SIMPSON
`SIMPSON & SIMPSON PLLC
`5555 MAIN STREET
`WILLIAMSVILLE, NY 14221-5430
`UNITED STATES
`TrademarkEFS@idealawyers.com, esimpson@idealawyers.com
`
`Opposition/Response to Motion
`
`Ellen S. Simpson
`
`esimpson@idealawyers.com, cyaple@idealawyers.com
`
`/Ellen S. Simpson/
`
`05/11/2017
`
`FOCO101US_MOL opposing motion for summary judgment.pdf(423326 bytes )
`FOCO101US_Gormanly Affidavit in Opposition to Motion for Summary Judg-
`ment.pdf(328395 bytes )
`FOCO101US_Attorney Affidavit in Opposition to Motion for Summary Judg-
`ment.pdf(2506856 bytes )
`Exhibit 1 - The Focus Approach Registration.pdf(24884 bytes )
`Exhibit 2 - IRAC Definition - Wikipedia.pdf(51603 bytes )
`Exhibit 3 - Facebook Post 2014-09-04.pdf(89861 bytes )
`Exhibit 4 - Office Action 2015-06-18.pdf(565702 bytes )
`Exhibit 5 - IRAC Methodology Articles.pdf(989974 bytes )
`Exhibit 6 - Cease and Desist Letter 2016-04-13.pdf(88539 bytes )
`Exhibit 7 - IRAC - Supplemental Register.pdf(50709 bytes )
`Exhibit 8 - IRAC Challenge - Supplemental Register.pdf(58540 bytes )
`Exhibit 9 - IRAC ME and design.pdf(66177 bytes )
`Exhibit 10 - Opposers Responses to Applicants Request for Admissions from
`Opposer.pdf(228478 bytes )
`Exhibit 11-1 - Opposers Response to Applicants First Set of Interrogatories from
`Opposer.pdf(4710966 bytes )
`Exhibit 11-2 - Opposers Response to Applicants First Set of Interrogatories from
`Opposer.pdf(3769102 bytes )
`Exhibit 11-3 - Opposers Response to Applicants First Set of Interrogatories from
`Opposer.pdf(5818727 bytes )
`Exhibit 12 - Email from RLP Ventures 2017-02-27.pdf(596048 bytes )
`Exhibit 13 - Applicants Answers to Opposers First Set of Requests for Admis-
`sion.pdf(4102821 bytes )
`Exhibit 14 - Tri-state area - Wikipedia.pdf(428937 bytes )
`Exhibit 15 - College Registrations.pdf(96548 bytes )
`Exhibit 16 - Pace Law FAQ.pdf(1096801 bytes )
`Exhibit 17 - Focus Approach Brochure.pdf(250207 bytes )
`Exhibit 18 - Focus Approach Website.pdf(1598661 bytes )
`
`

`

`ATTORNEY DOCKET NO. FOCO101US
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of U.S. Trademark Application Serial No. 86/554,989
`Published in the Official Gazette on February 23, 2016
`
`
`)
`
`
`
`RLP Ventures, LLC
`)
`
`
`
`
`
`
`)
`Opposer,
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`
`
`
`v.
`
`)
`
`
`
`
`
`
`)
`
`
`Focus Approach, LLC
`)
`
`
`
`
`
`
`)
`Applicant.
`
`
`
`
`___________________________________ )
`
`Commissioner for Trademarks
`ATTN: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`
`
`
`Opposition No. 91228593
`
`APPLICANT’S RESPONSE TO OPPOSER’S MOTIONS FOR LEAVE TO FILE A
`FIRST AMENDED NOTICE OF OPPOSITION AND FOR SUMMARY JUDGMENT ON
`NEWLY-PLEADED GROUNDS FOR OPPOSITION AND APPLICANT’S CROSS-
`MOTION FOR SUMMARY JUDGMENT
`
`Focus Approach, LLC (“Applicant”) hereby opposes the Motion for Leave to File a First
`
`
`
`Amended Notice of Opposition and the Motion for Summary Judgment on Newly-Pleaded
`
`Grounds for Opposition filed by RLP Ventures, LLC (“Opposer”) and hereby submits this
`
`memorandum of law in support of such opposition, and further cross-moves for summary
`
`judgment in favor of Applicant. Also attached is Applicant’s Attorney Affidavit in support of its
`
`opposition to Opposer’s Motion for Leave to File a First Amended Notice of Opposition and for
`
`Summary Judgment and in support of its cross-motion for summary judgment in favor of
`
`

`

`Applicant, and an Affidavit from Applicant Peter D. Gormanly, Esq., Founder and President of
`
`Applicant, attesting to the facts in this matter.
`
`
`
`PRELIMINARY STATEMENT
`
`U.S. Service Mark Application Serial No. 86/554,989 for registration of the mark
`
` was filed on March 5, 2015 asserting a date of first use in interstate commerce of
`
`September 4, 2014. The instant Notice of Opposition was filed on June 22, 2016 claiming that
`
`Opposer had the exclusive right to use and register the acronym IRAC and that, as such,
`
`Applicant’s mark was confusingly similar to Opposer’s marks all of which include the acronym
`
`IRAC. Discovery in the proceeding commenced and ended on February 27, 2017.
`
`On April 12, 2017, six weeks after the close of discovery, and the day prior to Opposer’s
`
`due date to file its Pretrial Disclosures, Opposer filed combination “Motions for (1) Leave to File
`
`a First Amended Notice of Opposition and (2) Summary Judgment on Newly-Pleaded Grounds
`
`for Opposition and Likelihood of Confusion.” Applicant’s Motion for Leave to File a First
`
`Amended Notice of Opposition appears to be based solely on Opposer’s incorrect interpretation
`
`of responses to admission requests which are the subject of an objection as Opposer’s First Set of
`
`Requests for Admissions was untimely filed, and further is based on facts and evidence that were
`
`available to Opposer well prior to the eve of trial. Opposer has not provided any justification for
`
`not including these newly-pleaded claims in its original proceeding or for seeking leave to file an
`
`amended Notice of Opposition well prior to trial. Allowing Opposer to add new claims at this
`
`stage would be highly prejudicial to Applicant in light of the fact that discovery ended six weeks
`
`ago, and in light of the procedural posture of this case, which is on the verge of entering the
`
`
`
`2
`
`

`

`testimony period with a motion for summary judgment pending. Further, Opposer is seeking
`
`summary judgment on its new claims based on evidence which Applicant has objected to and is
`
`further seeking to have the Board rule in its favor without any additional discovery on the issues
`
`raised in the proposed Amended Notice of Opposition. In addition, Opposer is seeking summary
`
`judgment on its claim of likelihood of confusion where the facts, as set forth by Opposer, are
`
`clearly in dispute. In fact, based on the discovery responses from Opposer, and the prosecution
`
`record of Opposer’s registrations, the undisputed facts show that the mark itself and/or the
`
`dominant portion of each of the marks in Opposer’s pleaded registrations is the acronym IRAC
`
`which is merely descriptive of the Opposer’s services as a matter of law, and therefore, Opposer
`
`cannot claim an exclusive right to the acronym.
`
`For the reasons that follow, Applicant asserts that the “new” evidence submitted by
`
`Opposer fails to establish that Applicant’s mark is not used in interstate commerce, and thus the
`
`new claims raised in the proposed amended Notice of Opposition are legally futile. Further,
`
`seeking leave to amend the Notice of Opposition on the eve of trial based on facts that have been
`
`long available to Opposer is highly prejudicial. As such, the Motion for Leave to File an
`
`Amended Notice of Opposition should be denied. Further, the facts as set forth by Opposer on
`
`the issue of likelihood of confusion are clearly disputed by Applicant, and thus the Motion for
`
`Summary Judgment should be denied.
`
`Finally, Applicant submits that the facts in this matter relating to the acronym IRAC are
`
`undisputed and establishes that the acronym IRAC is descriptive when used in association with
`
`Opposer’s services. As the acronym IRAC is the only similarity alleged by Opposer between
`
`any of the marks cited by Opposer, and Opposer does not have the exclusive right to the acronym
`
`IRAC, Applicant respectfully requests that its cross-motion for summary judgment be granted.
`
`
`
`3
`
`

`

`FACTS
`
`1.
`
`Applicant provides educational services, namely, a preparation course for
`
`the Law School Admission Test (LSAT) to prospective law students. Applicant commenced its
`
`business THE FOCUS APPROACH on or about 1996 and, over the past twenty (20) years, has
`
`prepared pre-law students to take the LSAT and to enter law school and the legal profession. See
`
`Affidavit of Peter D. Gormanly, Esq. at Paragraph 3-4 (hereinafter “Gormanly Affidavit”).
`
`
`
`2.
`
`Applicant is the owner of U.S. Service Mark Registration No. 2,125,111,
`
`dated December 30, 1997 and last renewed in 2007, for the mark THE FOCUS APPROACH for
`
`use in association with educational services, namely, conducting classes for law school
`
`preparation tests. See Exhibit 1, Copy of Certificate of Registration No. 2,125,111. Since at
`
`least as early as April 17, 1996, Applicant has been using, and continues to use, the service mark
`
`THE FOCUS APPROACH in interstate commerce in connection with educational services,
`
`namely, conducting classes for law school preparation tests. See Gormanly Affidavit. Para. 3-4.
`
`
`
`3.
`
`Since its inception, Applicant, using its service mark THE FOCUS
`
`APPROACH, has advertised, promoted, and marketed its LSAT preparation course to
`
`prospective students through the mailing of printed brochures, at exhibitions, events, law fairs,
`
`and other conferences attended by prospective students, at universities attended by students from
`
`both New York and other states, through the use of a toll-free telephone number, and, through its
`
`website www.focusapproach.com. See Gormanly Affidavit at Para. 7-14.
`
`
`
`
`
`4
`
`

`

`4.
`
`Applicant’s LSAT review course uses the Issue, Rule, Application, and
`
`Conclusion (IRAC) methodology for legal analysis. The IRAC format is well-known among
`
`lawyers, law students, law school professors and administrators, and prospective law students,
`
`and is mostly used in hypothetical questions in law schools and on bar examinations. See
`
`Gormanly Affidavit at Para. 6; See Exhibit 2, Printout of IRAC Definition from Wikipedia.
`
`
`
`5.
`
`In March, 2013, Applicant began the process of upgrading its website for
`
`the primary reason of using its website for e-commerce as well as updating the look and content
`
`of the website itself. Applicant designed a new logo to be used in association with the new
`
`website which was forwarded to the website developer. After a few revisions, the new logo was
`
`finalized and then used on Applicant’s website and its Facebook page as
`
`. The new
`
`logo incorporated Applicant’s existing mark THE FOCUS APPROACH, along with the acronym
`
`IRAC to indicate that the services associated with the mark incorporated the IRAC methodology,
`
`along with a design meant to depict a law school with the words LAW SCHOOL underneath the
`
`“roof” of the school. See Gormanly Affidavit at Para. 17-18.
`
`
`
`6.
`
`Applicant’s new website was launched on September 4, 2014. The new
`
`website allowed for the registration of new students, the viewing of videos relating to the LSAT,
`
`and on-line classes. Using its new service mark, along with its existing service mark THE
`
`FOCUS APPROACH, Applicant continued its business as it had since at least as early as 1996,
`
`preparing prospective students to take the LSAT, through programs at various locations. See
`
`Gormanly Affidavit at Para. 19-20.
`
`
`
`5
`
`

`

`
`
`7.
`
`Additionally, on the same day as the launch of Applicant’s new website, a
`
`post was made to Applicant’s Facebook page stating “The Focus Approach proudly presents our
`
`NEW website www.focusapproach.com. Watch videos, read testimonials, register for classes—
`
`including the new online course and much more.” Applicant’s new service mark is clearly visible
`
`on the Facebook page. See Gormanly Affidavit at Para. 20 and Exhibit 3, Printout of Facebook
`
`page post, dated September 4, 2014.
`
`
`
`8.
`
`On March 5, 2015, Applicant filed U.S. Service Mark Application Serial
`
`No. 86/554,989 for its new logo
`
` for use in association with “educational services,
`
`namely, conducting classes for law school preparation tests.” During prosecution of the
`
`application, Applicant was required to disclaim the exclusive rights to the words LAW SCHOOL
`
`and the acronym IRAC on the ground that Applicant had, “for a number of years”, advocated for
`
`a method of mastering the LSAT – namely, the same approach used by many law schools,
`
`“IRAC,” and as such, the words were descriptive of the services. See Exhibit 4, U.S. Service
`
`Mark Application Serial No. 86/554,989 Office Action, dated June 18, 2015. Applicant
`
`subsequently entered a disclaimer into its application for the words LAW SCHOOL and IRAC,
`
`and the application was approved for publication on February 23, 2016.
`
`
`
`9.
`
`As previously noted in Paragraph 6, IRAC is a well-known acronym used
`
`by law students, legal writing instructors, law professors, and attorneys, as a method of
`
`answering legal questions. IRAC stands for “Issue, Rule, Application, and Conclusion,” and
`
`
`
`6
`
`

`

`there are numerous articles and examples of the use of IRAC as a legal writing tool available.
`
`See, e.g., Exhibit 5, Articles regarding the IRAC methodology.
`
`
`
`10.
`
`On April 13, 2016, Opposer sent a cease and desist letter to Applicant
`
`claiming that it had the exclusive right to the acronym IRAC, specifically stating that Applicant
`
`should “appreciate that the IRAC name and mark are valuable assets of RLP.” See Exhibit 6,
`
`Copy of Cease and Desist letter.
`
`
`
`11.
`
`Applicant responded to the cease and desist letter on May 23, 2016
`
`asserting that the acronym IRAC was descriptive and, as such, Opposer could not claim
`
`exclusive rights in the “IRAC name.”
`
`
`
`12.
`
`On May 31, 2016, Opposer again demanded that Applicant stop using the
`
`acronym IRAC.
`
`13.
`
`On June 22, 2016, Opposer filed the instant opposition.
`
`
`
`
`
`14.
`
`Opposer pleaded three (3) marks as a basis for the instant opposition,
`
`namely, U.S. Service Mark Registration No. 5,033,571 for the mark IRAC, U.S. Service Mark
`
`Registration No. 5,038,276 for the mark IRAC CHALLENGE; and, U.S. Service Mark
`
`Registration No. 5,082,402 for the mark
`
` .
`
`
`
`15.
`
`U.S. Service Mark Registration No. 5,033,571 for the mark IRAC used in
`
`association with “Education services, namely, providing instruction in the fields of legal writing;
`
`Entertainment in the nature of competitions in the field of legal writing; Providing online non-
`
`
`
`7
`
`

`

`downloadable journals in the field of law” was registered on August 30, 2016 on the
`
`Supplemental Register. See Exhibit 7, Copy of Certificate of Registration.
`
`
`
`16.
`
`U.S. Service Mark Registration No. 5,038,276 for the mark IRAC
`
`CHALLENGE used in association with “Education services, namely, providing instruction in the
`
`field of legal writing; Entertainment in the nature of competitions in the field of legal writing”
`
`was registered on September 6, 2016 on the Supplemental Register. See Exhibit 8, Copy of
`
`Certificate of Registration.
`
`
`
`17.
`
`U.S. Service Mark Registration No. 5,082,402
`
`for
`
`the mark
`
` used in association with “Education services, namely, providing instruction in
`
`the fields of legal writing; Entertainment in the nature of competitions in the field of legal
`
`writing; Providing online non-downloadable journals in the field of law” was registered on
`
`November 15, 2016 on the Principal Register. A disclaimer was entered into the application and
`
`is a part of the registration, namely, “No claim is made to the exclusive right to use the following
`
`apart from the mark as shown: "IRAC"”. See Exhibit 9, Copy of Certificate of Registration.
`
`
`
`18.
`
`In each of the three (3) registrations cited above, Opposer initially filed its
`
`applications to be registered on the Principal Register. The U.S. Patent & Trademark Office
`
`amended U.S. Service Mark Application Serial No. 87/075,978, now U.S. Service Mark
`
`Registration No. 5,033,571, and U.S. Service Mark Application Serial No. 87/076,136, now U.S.
`
`Service Mark Registration No. 5,038,276, to the Supplemental Register. The U.S. Patent &
`
`Trademark Office entered a disclaimer into U.S. Service Mark Application No. 87/077,703, now
`
`U.S. Service Mark Registration No. 5,082,402, disclaiming exclusive rights to the IRAC apart
`
`from the mark as shown. Opposer, in response to Applicant’s First Set of Requests for
`
`
`
`8
`
`

`

`Admission, denied the fact that the U.S. Patent & Trademark Office required these amendments.
`
`See Exhibit 10, Copy of Opposer’s Answers to Applicant’s Requests for Admission Nos. 2, 3, 5,
`
`8, dated January 31, 2017.
`
`
`
`19.
`
`In each of the above three (3) registrations, Opposer has claimed a date of
`
`first use of the mark in interstate commerce of March, 2013. However, in Opposer’s responses
`
`to Applicant’s discovery requests asking for documentation to prove the March, 2013 date of
`
`first use, Opposer did not provide any documentation other than copies of its applications for
`
`registration of its service marks, and related specimens, so there is no actual proof of a date of
`
`first use. See Exhibit 11, Copies of Opposer’s Responses to Applicant’s First Set of
`
`Interrogatories Nos. 8, 9, dated January 31, 2017.
`
`
`
`20.
`
`All of the evidence submitted by Opposer supports Applicant’s position
`
`that the acronym IRAC is descriptive when used in association with the services as identified in
`
`Opposer’s three (3) pleaded registrations, notwithstanding Opposer’s claim that it is not.
`
`
`
`
`21.
`
`On February 27, 2017 at 11:52 p.m., eight (8) minutes before the close of
`
`the discovery period, Opposer served upon Applicant Opposer’s First Set of Requests for
`
`Admission, notwithstanding the fact that such service was a clear violation of Trademark Rule
`
`2.120. No request for an extension of time to complete discovery was ever made by Opposer
`
`either to Applicant or to the Board. See Exhibit 12, Copy of email from RLP Ventures, LLC.
`
`
`
`22.
`
`Applicant timely responded to Opposer’s First Set of Requests for
`
`Admission, clearly preserving its objection to the untimely service of the discovery request, and
`
`
`
`9
`
`

`

`asking that any responses be stricken from the record. See Exhibit 13, Copy of Applicant’s
`
`Answers to Opposer’s First Set of Requests for Admission.
`
`
`
`
`23.
`
`On April 12, 2017, Opposer filed a Motion for Leave to File a First
`
`Amended Notice of Opposition and Summary Judgment on the same, ostensibly based on
`
`Opposer’s interpretation of Applicant’s responses to the untimely served First Set of Requests
`
`for Admission by Opposer.
`
`EVIDENTIARY ISSUES
`
`
`
`Applicant hereby objects to the use of any of the responses to Opposer’s First Set of
`
`Requests for Admission, and requests that the responses be stricken from the record and not be
`
`permitted to be used as evidence in this proceeding. Under Trademark Rule 2.120, all discovery
`
`requests must be served early enough to allow for responses prior to the close of discovery. 37
`
`CFR 2.120(a)(3). In this proceeding, the discovery period opened on August 31, 2016 and
`
`closed on February 27, 2017.
`
`
`
`As set forth in the Statement of Facts, on February 27, 2017, at 11:52 p.m., eight (8)
`
`minutes before the close of the discovery period, Opposer emailed Applicant a “courtesy copy”
`
`of Opposer’s First Set of Requests for Admission, while sending the original by first class mail.
`
`Pursuant to Fed.R.Civ.P. 34 and TBMP 407.03(a), the responses to the Requests for Admission
`
`were not due until March 28, 2017, thirty (30) days after the date of service, and well after the
`
`end of the discovery period. Thus, Opposer’s First Set of Requests for Admission were clearly
`
`untimely. It is undisputed that Opposer did not request or seek an extension of time in which to
`
`complete discovery, and no extension of time was granted. Discovery ended on February 27,
`
`
`
`10
`
`

`

`2017 at midnight. TBMP 407.03(a) clearly states that the response may not be due later than the
`
`close of discovery. 37 CFR 2.120(a)(3).
`
`
`
`Applicant responded to these untimely served Requests for Admission, clearly reserving
`
`its right to raise its objection to the Board, and clearly objecting to the untimeliness of the service
`
`and asserting that the responses to the discovery requests should be stricken from the record. See
`
`Exhibit 13. Applicant hereby objects to any use of the responses to Opposer’s First Set of
`
`Requests for Admission on the basis that the discovery request was untimely under Trademark
`
`Rule 2.120(a)(3) and asks that any references to the responses to Opposer’s First Set of Requests
`
`for Admission be disregarded and stricken from the record.
`
`ARGUMENT
`
`1. OPPOSER’S MOTION FOR LEAVE TO FILE A FIRST AMENDED NOTICE OF
`OPPOSITION SHOULD BE DENIED
`
`
`
`
`
`At 4:08 p.m., on the day before its Pretrial Disclosures were due, Opposer filed this last-
`
`minute Motion for Leave to Amend the Notice of Opposition combined with its Motion for
`
`Summary Judgment. While Applicant objects to the combining of a Motion for Leave to Amend
`
`the Notice of Opposition with a Motion for Summary Judgment, Applicant will respond to this
`
`motion as a part of its response to the summary judgment motion.1
`
`
`
`In its Motion for Leave to Amend the Notice of Opposition, Opposer seeks to add claims
`
`that Applicant was not using its mark in interstate commerce prior to the filing date of its
`
`application for registration, and that, as such, Applicant made a material misrepresentation in its
`
`application and thereby committed fraud on the U.S. Patent & Trademark Office. Opposer’s
`
`argument appears to be that Florida Coastal School of Law (FCSL), where Applicant’s LSAT
`
`
`
`11
`
`

`

`course is now offered, did not appear on Applicant’s website as a class location until at least
`
`September 2015, after the filing date of Applicant’s application for registration, and that, as
`
`Applicant’s classes prior to that time were all presented in locations within New York State,
`
`Applicant was not using its mark in interstate commerce as of the time of the filing of its
`
`application for registration on March 5, 2015. Specifically, Opposer appears to be asserting that
`
`the date when information regarding FCSL and/or the date on which offered Applicant’s classes
`
`were offered on FCSL’s campus is Applicant’s date of first use in commerce. Opposer has
`
`completed disregarded the fact that Applicant has clearly advertised, promoted, marketed, and
`
`offered its LSAT preparation courses to prospective law students in various locations – both
`
`from New York and other states as shown by the Affidavit of Peter Gormanly, Esq. and other
`
`attached evidence - since at least as early as 1996 and continues to this day, and that these
`
`activities constitute Applicant’s date of first use in commerce under the relevant law.
`
`
`
`A request to amend a pleading before the Board is governed by Fed.R.Civ.P. 15(a).
`
`TBMP §507.01. After twenty-one (21) days have passed since the service of the original
`
`pleading, the pleading may only be amended with written consent of the adverse party or by
`
`leave of the Board. TBMP §507.02. The Board will not grant leave to amend a pleading if
`
`allowing the amendment would be prejudicial to the rights of the adverse party, or if the
`
`proposed new claim or defense is legally insufficient or would serve no useful purpose. Id. The
`
`timing of a motion for leave to amend “plays a large role in the Board’s determination of
`
`whether the adverse party would be prejudiced by allowance of the proposed amendment.”
`
`TBMP §507.02 (a). “A motion for leave to amend should be filed as soon as any ground for
`
`
`1 On May 4, 2017, The Board issued an Order clarifying its April 19, 2017 suspension order, providing Applicant
`thirty (30) days from the date of the filing of the Combined Motions to respond in a single brief.
`
`
`
`12
`
`

`

`such amendment … becomes apparent.” Media Online Inc. v. El Clasificado, Inc. 88 USPQ2d
`
`1285, 1286 (TTAB 2008).
`
`A. THE PROPOSED AMENDMENT WOULD BE HIGHLY PREJUDICIAL TO
`APPLICANT
`
`
` Applicant first asserts that the requested amendment would be highly prejudicial to
`
`Applicant in light of the almost ten (10) months that have passed since the filing of the original
`
`Notice of Opposition, and due to the fact that we are on the eve of trial, discovery having ended
`
`six (6) weeks ago. All of the facts relating to Opposer’s claims of alleged non-use of Applicant’s
`
`mark in interstate commerce and related alleged fraud on the U.S. Patent & Trademark Office
`
`were in existence and were well-known or should have been well-known to Opposer at the time
`
`it filed the Notice of Opposition, and Opposer has not provided any reasonable justification for
`
`its failure to include these claims in its original pleading. Further, allowing Opposer to add two
`
`new claims at this late stage of the proceeding – six weeks after the close of discovery and just
`
`prior to the start of the testimony period – would significantly delay the resolution of the case
`
`and would unfairly require Applicant to expend significant time and effort in preparing its
`
`defense to the new claim.
`
`
`
`Opposer was well aware or should have been well aware of the so-called facts
`
`purportedly giving rise to a claim of non-use of Applicant’s mark in interstate commerce and
`
`alleged fraud on the U.S. Patent & Trademark Office at the time Opposer filed the Notice of
`
`Opposition in June, 2016. Applicant has been in business for over twenty (20) years. There has
`
`been no change in Applicant’s business model, other than the fact that Applicant adopted an
`
`additional new service mark and put it on its website, on its Facebook page, and on any new
`
`advertising materials. For over twenty years, Applicant has promoted, marketed, and advertised
`
`
`
`13
`
`

`

`its services in many states both through personal marketing efforts, and through its website.
`
`Applicant has taught many students over the years that have been domiciled in different states.
`
`
`
`From the specific allegation contained in Opposer’s brief regarding information in
`
`relation to FCSL, it appears that Opposer, presumably after the end of the discovery period,
`
`purportedly viewed “mockups” on “Applicant’s demo site”2, and found so-called “new”
`
`information that the FCSL class location was on Applicant’s schedule for classes beginning in
`
`December 2015 and that Applicant’s collaboration with FCSL was announced through a blog
`
`post from September 2015 and on a YouTube video posted in December 2015. As Opposer filed
`
`its Notice of Opposition on June 22, 2016, this information was clearly available to Opposer
`
`months before the filing of the opposition, and certainly all through the pendency of this
`
`proceeding. For Opposer, on the eve of trial, well after the completion of discovery, to assert
`
`that information that was readily available in 2015 could not have been set forth in its initial
`
`pleading, filed in June, 2016, is disingenuous. It appears that Opposer, at the very last minute, is
`
`simply seeking to raise any possible claim in an attempt to prevail.
`
`
`
`Applicant’s application has already been delayed by almost a year, and Applicant has
`
`spent thousands of dollars in defending its mark from Opposer’s claims. Adding meritless
`
`claims at this late date would be highly prejudicial to Applicant, and Applicant respectfully
`
`requests that the Board deny Opposer’s motion on this ground.
`
`B. THE PROPOSED AMENDMENT IS LEGALLY FUTILE
`
` Opposer is seeking to add two (2) claims in its proposed amended complaint. First,
`
`Opposer is claiming that Applicant had not conducted actual classes for law school preparation
`
`
`2 Applicant is not certain what “mockups” or “demo site” Opposer claims to have viewed as information regarding
`the building of Applicant’s website was not the subject of any discovery request.
`
`
`
`14
`
`

`

`tests outside of New York State in association with the mark shown in the application prior to the
`
`filing date of March 5, 2015, and, as such, Applicant’s application was and is void ab initio.
`
`Secondly, Opposer is seeking to add a claim that Applicant’s representation to the U.S. Patent &
`
`Trademark Office in its application that the mark shown therein had been used in interstate
`
`commerce at the time of its filing on March 5, 2015 for the applied-for services was a material
`
`false representation, and thus the mark is unregistrable. Opposer appears to believe that
`
`Applicant’s actual classes must be offered outside of New York State in order for Applicant to be
`
`using its mark in interstate commerce. That is simply not the law.
`
`
`
`In order to meet the use requirement of the Lanham Act, it is not required that the actual
`
`services be rendered in more than one state. Larry Harmon Pictures Corp. v. Williams Rest.
`
`Corp., 929 F.2d 662, 18 USPQ2d 1292, 1295 (Fed. Cir. 1991). See also In re Gastown, Inc. 326
`
`F.2d 780 at 782-84, 140 USPQ 216 at 217-18 (CCPA 1964); In re Smith Oil Corp., 156 USPQ
`
`62, 63 (TTAB 1967); 1 J. McCarthy, Trademarks and Unfair Competition, §19:36 (It is not
`
`required that such services be rendered in more than one state to satisfy the use in commerce
`
`requirement). Rather, it is required that the services associated with the mark impact interstate
`
`commerce. Doctors Associates, Inc v. Janco, LLC, 2016 WL 247200 (TTAB 2016).
`
`
`
`In In re Gastown, the court held that the “use in commerce” requirement set forth in
`
`Section 3 of the Lanham Act was met where the applicant operated a chain of automobile and
`
`truck service stations all located in the State of Ohio. The court found that, although the
`
`applicant’s services were all provided within Ohio, some of the applicant’s customers had legal
`
`residences in other states, and were extended credit and billed in their respective domiciliary
`
`states. The court held that those circumstances established that the services had an impact and a
`
`
`
`15
`
`

`

`direct effect on interstate commerce, and were sufficient to show that the applicant’s mark was
`
`used in interstate commerce within the meaning of the Lanham Act.
`
`
`
`Later, in Larry Harmon Pictures Corp., a single location restaurant located in Tennessee
`
`seeking to register its service mark was found to have satisfied the “use in commerce”
`
`requirement of the Lanham Act by showing that it was located near a major city, namely,
`
`Memphis, Tennessee, whose metropolitan statistical area comprised portions of three states
`
`(Tennessee, Arkansas, and Mississippi), that it had been mentioned in publications originating in
`
`a number of other states, and that it served interstate travelers.
`
`
`
`In this case, the evidence clearly shows that Applicant is located near a major city (New
`
`York, New York) whose metropolitan statistical area comprises portions of New York, New
`
`Jersey, and Connecticut. See Gormanly Affidavit at Paragraph 5; Exhibit 14, Printout of Tri-
`
`State Area from Wikipedia. The evidence further shows that Applicant serves students
`
`domiciled both in New York State and in out-of-state locations. See Gormanly Affidavit at
`
`Paragraph 7, 21. There is clear evidence that Applicant extends credit and bills its services to
`
`persons located outside of New York State. See Gormanly Affidavit at Paragraph 21.
`
`Additionally, there is a myriad of evidence that Applicant visits with and speaks to prospective
`
`students who are located out of state. See Gormanly Affidavit at Paragraph 7, 9-11, 16, 22.
`
`Finally, by virtue of its website and Facebook page, Applicant advertises and promotes its
`
`services nationwide, and, in particular, on its website, allows for customers to register for its
`
`services online, and watch videos relating to Applicant’s services. See Gormanly Affidavit at
`
`Paragraph 19-20. Indeed, approximately fifteen (15%) percent of the credit cards processed
`
`through its website from the time of the website launch on September 4, 2014 through the time
`
`of the filing of Applicant’s application for registration were for credit cards billed to out-of-state
`
`
`
`16
`
`

`

`addresses. See Gormanly Affidavit at Paragraph 21. As such, the evidence is clear that
`
`Applicant has an impact on interstate commerce, notwithstanding Opposer’s claim that there can
`
`be no “use in interstate commerce” if Applicant did not actually hold a class outside of New
`
`York State prior to the filing date of its application.
`
`
`
`Carried to its extreme, Opposer’s asserted claim would mean that any school or learning
`
`institution that offered classes in o