Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA810752
`
`Filing date:
`
`03/31/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91229978
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Wesley W. Osborne
`
`MICHAEL P OLIVERIO
`LYNCH LAW GROUP LLC
`CRANBERRY PROFESSIONAL PARK, 501 SMITH DRIVE, SUITE 3
`CRANBERRY TOWNSHIP, PA 16066
`UNITED STATES
`moliverio@lynchlaw-group.com, cleonard@lynchlaw-group.com
`
`Other Motions/Papers
`
`Michael P. Oliverio
`
`moliverio@lynchlaw-group.com, cleonard@lynchlaw-group.com
`
`/m oliverio/
`
`03/31/2017
`
`Attachments
`
`Executed Amended Opposition.pdf(563694 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA810752
`
`Filing date:
`
`03/31/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91229978
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Wesley W. Osborne
`
`MICHAEL P OLIVERIO
`LYNCH LAW GROUP LLC
`CRANBERRY PROFESSIONAL PARK, 501 SMITH DRIVE, SUITE 3
`CRANBERRY TOWNSHIP, PA 16066
`UNITED STATES
`moliverio@lynchlaw-group.com, cleonard@lynchlaw-group.com
`
`Other Motions/Papers
`
`Michael P. Oliverio
`
`moliverio@lynchlaw-group.com, cleonard@lynchlaw-group.com
`
`/m oliverio/
`
`03/31/2017
`
`Attachments
`
`Executed Amended Opposition.pdf(563694 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Opposition No. 91229978
`
`MARK
`
`)
`
`CRITTER DONE
`
`;
`SERIAL NUMBER
`i
`APPLICANT
`;
`FILING DATE
`PUBLISHED FOR OPPOSITION ;
`OPPOSER
`;
`
`86/924956
`Critter Done Animal Control LLC
`March 1, 2016
`September 6, 2016
`Wesley W. Osborne
`
`To:
`
`Trademark Trial and Appeal Board
`PO. Box 1451
`
`Alexandria, VA 22313—1451
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`OPPOSITION
`
`AND NOW comes Wesley W. Osborne (“Opposer”), by and through his undersigned
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`counsel The Lynch Law Group, LLC, and pursuant to the Trademark Act §13(a), 15 U.S.C.
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`§ 1063(a), files this Amended Opposition to the application for registration on the principal
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`register of the word mark “Critter Done” (the “Proposed Mark”), on the basis of confusing
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`similarity and infringement, ineligible use, and fraud on the Trademark Office, and in support
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`thereof avers as follows:
`
`w
`
`l.
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`Opposer is the owner and registrar of the word mark, “Crit-R-Done,” registered
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`with the US Trademark Office on December 25, 2007, with serial number 77/ 1 56,514 in
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`International class 037 (the “Existing Mark”)
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`
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`2.
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`Opposer operates a multi-state nuisance animal removal services company
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`branded under the Existing Mark.
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`3.
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`A sections 8 and 15 affidavit was filed on March 11, 2013, so that the Existing
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`Mark is now incontestable.
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`4.
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`Applicant, Critter Done Animal Control, LLC (“Applicant”) is, upon information
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`and belief, a limited liability company with its principal and sole place of business located in San
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`Antonio, Texas.
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`5.
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`Upon information and belief, Applicant began doing business under the Proposed
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`Mark some time in 2015.
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`6.
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`Opposer is an individual who would be damaged by the registration of the
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`Proposed Mark upon the principal register.
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`COUNT ONE:
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`THE PROPOSED MARK IS CONFUSINGLY SIMILAR TO THE EXISTING MARK
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`7.
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`Pursuant to the Trademark Act, no mark may be registered on the principal
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`register if it consists of or compromises a mark “which so resembles a mark registered in the
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`Patent and Trademark Office, or a mark or trade name previously used in the United States by
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`another and not abandoned, as to be likely, when used on or in connection with the doods of the
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`application, to cause confusion, or to cause mistake, or to deceive. . ..” 15 U.S.C. § 1502(d).
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`8.
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`Accordingly, any application for registration must be accompanied by a statement
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`verifying that no other person has the right to use the mark for which registration is sought in
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`commerce “in the identical form thereof or in such near resemblance thereto as to be likely,
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`when used on or in connection with the goods of such other person, to cause confiision, or to
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`cause mistake, or to deceive...” 15 U.S.C. § 1051(1)(3)(D).
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`
`
`
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`9.
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`Under well-established precedent, a multi-factor analysis is used to determine
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`whether a proposed mark is too similar to an existing mark such as to infringe the rights of the
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`existing mark and thus be ineligible for registration. & Polaroid Corp. v. Polarad Elecs. Com,
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`287 F.2d 492, 495, 128 U.S.P.Q. 411, 413 (2d Cir. 1961) (citing RESTATEMENT (FIRST) OF
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`TORTS §§ 729—31 (1938))
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`10.
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`Under this analytical framework, called them test, determining the
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`likelihood of confusion between competing marks depends on: (1) the strength of the registered
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`mark, (2) the degree of similarity between the two marks, (3) the market proximity of the
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`products, (4) the likelihood that, sometime in the future, the earlier mark will be used on the
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`services of the later mark, (5) actual confusion of buyers, (6) the applicant’s good faith in
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`adopting its own mark, (7) the quality of applicant’s services, and (8) the sophistication of the
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`buyers.
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`11.
`
`Each of them factors weighs in favor of Opposer in this instance, and thus
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`the Trademark Office should reject Applicant’s application for registration of the Proposed
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`Mark.
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`12.
`
`Regarding factor (1), Opposer’s animal removal business is a multi-generational
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`family business, with a strong reputation in the animal trapping and pest removal industry.
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`13.
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`The strength of Opposer’s Existing Mark is demonstrated by the fact that Opposer
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`currently markets and provides nuisance animal removal services or pest control across the
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`Eastern seaboard and Southeastern United States.
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`14.
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`Finally, Opposer’s Existing Mark is incontestable, and has been successfully used
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`in commerce for over ten years.
`
`
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`15 .
`
`Regarding factor (2), the Proposed Mark is practically indistinguishable from the
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`Existing Mark.
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`16.
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`The Proposed Mark is phonetically identical to the Existing Mark and is nearly
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`identical in writing.
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`17. While only word marks are at issue in this Application, it is relevant that Opposer
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`has used a particular visual logo in connection with the Existing Marks, and that Applicant has
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`adopted an extremely similar logo in connection with the Proposed Mark, utilizing the same
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`colors and the same animal character (a raccoon), heightening the similarity between the two
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`marks and increasing the clear risk of confusion on the part of consumers.
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`18.
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`Regarding factor (3), Opposer operates in a variety of states in close proximity to
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`Texas, where Applicant is located.
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`19.
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`Opposer also has business contacts in Texas, and while not currently operating in
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`Texas, Opposer has received previous business inquiries in Texas.
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`20.
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`Regarding factor (4), the Existing Mark is already used in interstate commerce for
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`the exact services — animal removal — claimed by the Proposed Mark.
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`21.
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`The likelihood of direct geographical overlap and competition between the marks
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`is high, given that the Existing Mark is used in a variety of Southeastern states, and Opposer is
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`likely to do business in Texas in the future, either directly or through a franchise or licensing
`
`agreement.
`
`22.
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`Regarding factor (5), while Opposer has no current evidence of actual confusion
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`by consumers, given the extreme similarity of the marks, evidence of such confusion is likely
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`already in existence and merely must be captured.
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`
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`23.
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`Regarding factor (6), Applicant’s interest in the adoption of its own mark is
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`minimal, and indeed willful infi‘ingement of the Existing Mark appears likely.
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`24.
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`Based on Applicant’s website, Applicant is owned by two former sales
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`professionals with no apparent connections or experience in nuisance animal removal services.
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`25.
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`Upon information and belief, Applicant’s use of the Proposed Mark began with its
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`inception of its business in 2015, and was not the product of any organic branding development
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`or prior use.
`
`26.
`
`The extreme similarity of the Proposed Mark to the fanciful and evocative
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`Existing Mark, for use in the exact same services, alongside an incredibly similar visual logo
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`using the same colors and same animal character, could not have occurred by sheer coincidence.
`
`27.
`
`Regarding factor (7), there is no evidence that Applicant’s services are of any
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`particular specialized quality, and certainly there is no evidence that Applicant’s services are in
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`any way of materially different or superior quality to the services provided by Opposer.
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`28.
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`Finally, regarding factor (8), the market for nuisance animal removal services
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`covers a wide demographic of consumers. There is no evidence that consumers in this market
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`are particularly sophisticated.
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`29.
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`Indeed, given the likelihood that nuisance animal removal services will be most
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`desired in rural areas Where more human-animal interactions occur, the sophistication level of
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`consumers in this instance is likely to be low.
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`30.
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`Accordingly, based on theM test, the Proposed Mark is ineligible for
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`registration on the principal register as it is likely to cause confusion, mistake, or to deceive
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`consumers based on the use of the incontestable Existing Mark.
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`
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`COUNT TWO:
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`THE PROPOSED MARK IS INELLIGIBLE DUE TO LACK OF USE IN COMMERCE
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`31.
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`It is axiomatic that in order to be registerable, a trademark must be used in
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`commerce.
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`32.
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`"Commerce" is defined as “all commerce which may lawfully be regulated by
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`Congress.” 15 U.S.C. § 1127.
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`33.
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`Accordingly, a trademark must be used in either interstate or international
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`commerce to qualify for registration on the federal register. Commerce only within a single state
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`does not qualify.
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`34.
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`Applicant’s website limits its services to Texas, specifically San Antonio, New
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`Braunfels, San Marcos and Austin. These communities are about 200 miles from the Mexican
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`border and 300 miles from the nearest state border. Applicant’s admission, see, e.g.,
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`http://www.critterdoneanimalcontrol.com/, that it offers services only in one state would appear
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`to bar federal registration for lack of use in either interstate or international commerce.
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`35.
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`The application therefore fails to show a commercial use that “may lawfully be
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`regulated by Congress,” and must be rejected for non-use.
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`COUNT THREE:
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`FRAUD ON THE TRADEMARK OFFICE
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`36.
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`A mark which obtains registration on the principal register through a fraudulent
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`oral or written statement in the application for registration is subject to cancellation. See
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`Trademark Act at § 13, 15 U.S.C. § 1064(3).
`
`
`
`
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`37.
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`Indeed, any person who obtains registrations by a false or fraudulent declaration
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`or representation, oral or in writing, shall be liable in a civil action to any person injured thereby.
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`15 U.S.C. § 1120.
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`38.
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`The Application falsely certifies that the Proposed Mark is not already in use, and
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`claims use in commerce no later than March 01, 2015.
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`39.
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`In support of the claim to use in commerce, the Application submits a specimen
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`showing a screen capture of Applicant’s website.
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`40.
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`As discussed above, Applicant’s website admits that Applicant’s service area is
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`limited to a relatively small area of Texas and does not establish any use in commerce.
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`41.
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`Also as discussed herein, upon information and belief, Applicant was aware of the
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`Existing Mark and Opposer’s use of the Existing Mark in commerce, as well as Opposer’s
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`incontestable registration of the Existing Mark, prior to submitting the Application.
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`42.
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`Accordingly, Applicant’s Application is materially false in two respects, and any
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`registration of the Proposed Mark would be obtained by fraud upon the Trademark Office.
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`43.
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`Registration cannot be allowed for a statutorily ineligible mark that was submitted
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`with falsified information.
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`WHEREFORE, Opposer respectfully requests that the Trademark Office uphold this
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`opposition to the Application for Registration of the Proposed Mark “Critter Done,” and reject
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`the Application.
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`
`
`March 31, 2017
`
`Respectfully submitted,
`
`.-
`‘ W
`r 1.1 _
`I
`
`
`/'
`
`1/
`
`r
`
`Michael P. OliVerio, Esquire
`Pa. Id.: 209399
`
`Kathleen A. Kuznicki, Esquire
`PA Id: 260366
`
`USPTO Registration No. 63382
`The Lynch Law Group
`501 Smith Drive, Suite 3
`
`Cranberry Township, PA 16066
`724-776-8000
`
`moliverio@lynchlaw-group.com
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that 1 have this day caused to be served a true and correct copy of the
`
`foregoing AMENDED OPPOSTION upon the person and in the manner indicated below:
`
`VIA ELECTRONIC MAIL
`
`Jerre B. Swann, Jr.
`Fish & Richardson
`
`1180 Peachtree Street, NE
`2151 Floor
`
`Atlanta, GA 30309
`swann@fr.com
`
`CERTIFICATE OF TRANSMITTAL
`
`I certify that a true copy of the attached AMENDED OPPOSITION is being filed
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`electronically with the PTO via ESTTA on March 31, 2017.
`
`i?
`
`it
`
`Date: March 31, 2017
`
`/’
`
`
`
` ichael P. Oliverio, Esquire“
`
`x
`
`,4/ .
`
`/
`
`
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