Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA844778
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`Filing date:
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`09/09/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91232896
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`Party
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`Correspondence
`Address
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`Defendant
`CCG Creative, LLC
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`CHARLES GATLING
`CCG CREATIVE LLC
`1235 RING BILL LOOP
`UPPER MARLBORO, MD 20774
`UNITED STATES
`Email: cgatling@ccgcreative.com
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Answer
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`Charles Gatling
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`cgatling@ccgcreative.com
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`/Charles Gatling/
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`09/09/2017
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`Attachments
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`CCGC-Response-To-Notice-Of-Opposition-BSoA.pdf(3463725 bytes )
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`CCG Creative, LLC
`1235 Ring Bill Loop
`Upper Marlboro, MD 20774
`TEL: 301-246-2242
`FAX: 301-298-5176
`cgatling@ccgcreative.com
`In Pro Per
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`THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Serial No.: 86/914322
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`APPLICANT’S RESPONSE TO OPPOSER’S
`NOTICE OF OPPOSITION
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`Dated this 13th day of July, 2017
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`Boy Scouts of America,
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`vs.
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`Opposer,
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`CCG Creative, LLC,
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 1
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`CCG Creative, LLC (“CCG Creative”, herein referred to as “Applicant”), having an address at
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`1235 Ring Bill Loop, Upper Marlboro, MD. 20774 believes that no damage will be done to Boy Scouts
`of America (hereinafter “Boy Scouts” or “Opposer”) with regard to its request to register the mark
`RACK SCOUT as shown in U.S. Trademark Application Serial No. 86/914322 (“the ’322 Application”)
`which was filed February 20, 2016 in International Class 35 for “Retail on-line department stores; on-
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`line retail store services featuring a wide variety of consumer goods; online retail store services featuring
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`shoes; online retail store services featuring clothing, accessories, footwear, hats, belts, gloves, scarves,
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`bags, handbags, packs, purses, luggage, briefcases, watches, jewelry, eyewear, home products,
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`housewares, home décor, kitchen and cooking products, dishes, glassware, cutlery, bathroom products,
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`cosmetics, beauty and personal care products, fragrances, skin and hair products, bedding and linens,
`baby goods, sporting goods, and storage and organization products.”
`Applicant would like to submit the following response to the Opposer’s allegations against its
`RACK SCOUT mark contained in the Opposer’s Notice of Opposition filed February 15, 2017;
`1. For the Opposer’s allegation that “Opposer, Boy Scouts of America, (hereinafter “Boy Scouts”
`or “Opposer”), is a federally chartered corporation organized under laws of the United States of
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`America with a business address of 1325 West Walnut Hill Lane, P.O. Box 152079, Irving, TX
`75015-2079.“, (Paragraph #1 from the Opposer’s Notice of Opposition), Applicant lacks
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`knowledge or information sufficient to form a belief about the truth of this allegation. The
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`Applicant has insufficient knowledge pertaining to the business structure of the Opposer.
`2. For the Opposer’s allegation that “Applicant, CCG Creative, LLC, (hereinafter “CCG” or
`“Applicant”) is a limited liability company of Maryland having an address of 1235 Ring Bill
`Loop, Upper Marlboro, MD 20774. “, (Paragraph #2 from the Opposer’s Notice of Opposition),
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`Applicant admits this allegation.
`3. For the Opposer’s allegation that “Applicant filed U.S. Trademark Application Serial No.
`86914322 (the “Application”) seeking to register the mark “RACK SCOUT”, (the “Applicant’s
`Mark”) for the following services: “Retail on-line department stores; on-line retail store services
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 2
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`featuring a wide variety of consumer goods; online retail store services featuring shoes; online
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`retail store services featuring clothing, accessories, footwear, hats, belts, gloves, scarves, bags,
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`handbags, packs, purses, luggage, briefcases, watches, jewelry, eyewear, home products,
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`housewares, home décor, kitchen and cooking products, dishes, glassware, cutlery, bathroom
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`products, cosmetics, beauty and personal care products, fragrances, skin and hair products,
`bedding and linens, baby goods, sporting goods, and storage and organization products”, in
`international class 35. “, (Paragraph #3 from the Opposer’s Notice of Opposition), Applicant
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`admits this allegation.
`4. For the Opposer’s allegation that “The Application was filed on February 20, 2016, on the basis
`of “in use” and alleging a date of first use of June 30, 2013, and was later amended to the basis
`of “intent to use” which is the current basis for the Application.“, (Paragraph #4 from the
`Opposer’s Notice of Opposition), Applicant admits this allegation. Prior to filing the registration
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`application, the Applicant used the name in acquisition of the website domain
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`www.rackscout.com (dated Sunday, June 30, 2013 as seen in the email confirmation attached
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`hereto as Exhibit B.) where the name RACK SCOUT and a to-be-registered stylized mark of the
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`name appears on the website, as well as in a prototype mobile application that had been created
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`by the Applicant. The website was made publicly available and acts as the introductory or
`“Coming Soon” message for visitors that will visit the website from random Internet searches or
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`from any information shared with the public pertaining to RACK SCOUT for the purposes of
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`advertising and marketing. The prototype mobile application had been discussed with another
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`software developer working with the Applicant as well as associates of the Applicant. Upon
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`filing the registration application, the Applicant believed that this prior use of RACK SCOUT
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`constituted use of the mark in commerce. After filing the application and it later being examined
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`by the Trademark Examining Attorney, the attorney concluded that those instances did not
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`constitute use of the mark in commerce prior to the filing and the application basis had to be
`amended to “intent to use” which is the current basis for the Application.
`5. For the Opposer’s allegation that “Applicant’s earliest priority date is February 20, 2016. “,
`(Paragraph #5 from the Opposer’s Notice of Opposition), Applicant denies this allegation. The
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 3
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`Applicant believes it has very strong rights to have an earlier priority date based on the use of the
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`mark, as the Applicant cited previously, with using the name in acquisition of the website
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`domain www.rackscout.com (dated Sunday, June 30, 2013 as seen in the email confirmation
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`attached hereto as Exhibit B.).
`6. For the Opposer’s allegation that “Opposer is a famous youth organization in the United States.
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`Beginning around February 8, 1910, and continuing to the present, Opposer has been engaged in
`the organization and management of programs for young people. “, (Paragraph #6 from the
`Opposer’s Notice of Opposition), the Applicant lacks knowledge or information sufficient to
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`form a belief about the truth of this allegation. The Applicant has insufficient knowledge of the
`extent of the organization’s fame on a national level, or for what activities the Opposer has been
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`engaged in over any specified amount of time.
`7. For the Opposer’s allegation that “Opposer adopted and began using marks incorporating the
`term “SCOUT” since as early as 1910 (Opposer’s marks and trade names incorporating
`“SCOUT”, registered and unregistered, are collectively referred to herein as “Opposer’s Scout
`Marks” or “Scout Marks”).“, (Paragraph #7 from the Opposer’s Notice of Opposition), Applicant
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`lacks knowledge or information sufficient to form a belief about the truth of this allegation. The
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`Applicant has insufficient knowledge of when the Opposer began using marks incorporating the
`term “SCOUT”.
`8. For the Opposer’s allegation that “Opposer operates various programs for boys and young men,
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`which programs include CUB SCOUTS, BOY SCOUTS, SEA SCOUTS and EAGLE SCOUTS
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`and which, in addition to the name Boys Scouts of America, SCOUTS, SCOUT, and
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`SCOUTING, are well known and famous names and identities of Opposer (the names and
`identities identified in this paragraph are collectively referred to herein as Opposer’s “Scout
`Names And Identities”). Opposer has used and/or been known by its Scout Names And Identities
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`prior to the filing date of the Application, and before any date of actual first or constructive use
`which may be claimed by the Applicant. “, (Paragraph #8 from the Opposer’s Notice of
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`Opposition), Applicant lacks knowledge or information sufficient to form a belief about the truth
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`of this allegation. The Applicant has insufficient knowledge pertaining to referencing the terms
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 4
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`SCOUTS, SCOUT, and SCOUTING and them being synonymous as well known and famous
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`names and identities of Opposer. Applicant believes the Opposer referencing those terms as the
`its “Scout Names And Identities” would indicate exclusive use, of which the Opposer has failed
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`to illustrate.
`9. For the Opposer’s allegation that “In addition to its various programs, BSA operates retail stores,
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`including an online retail store at scoutstuff.org, which sells various goods and services in
`connection with its marks that contain the term “Scout”. These goods and services, including
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`clothing, apparel, bags, cutlery, hats, drinkware, sleeping bags, personal care products, and
`watches among other goods, are offered to the general public “, (Paragraph #9 from the
`Opposer’s Notice of Opposition), Applicant lacks knowledge or information sufficient to form a
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`belief about the truth of this allegation. The Applicant has insufficient knowledge of the
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`programs, retail or online retail businesses operated by the Opposer.
`10. For the Opposer’s allegation that “Opposer has used its Scout Marks in the United States long
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`prior to the filing date of the Application, and long before the date of actual first use claimed by
`the Applicant. “, (Paragraph #10 from the Opposer’s Notice of Opposition), Applicant lacks
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`knowledge or information sufficient to form a belief about the truth of this allegation. The
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`Applicant has insufficient knowledge of when the Opposer initiated use of any marks associated
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`with the Opposer.
`11. For the Opposer’s allegation that “The United States Congress recognized the importance of
`protecting BSA’s marks from unauthorized use and granted the BSA the exclusive right to use its
`various marks with 36 U.S.C. § 30905, a federal statute, which provides that BSA “has the
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`exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases
`the corporation [BSA] adopts”.“, (Paragraph #11 from the Opposer’s Notice of Opposition),
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of this
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`allegation. The Applicant has insufficient knowledge of what emblems, badges, descriptive or
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`designating marks, and words or phrases the Opposer has exclusive rights to use.
`12. For the Opposer’s allegation that “As an example of the protection provided by 36 U.S.C.
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`§30905 in regard to Opposer's ownership of the mark BOY SCOUTS OF AMERICA, the United
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 5
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`States Patent and Trademark Office (“PTO”) created U.S. Application Serial Nos. 89/000,095
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`and 89/001,573, special records within the PTO indicating that this mark is protected for all
`classes of goods and services pursuant to the federal statute.“, (Paragraph #12 from the
`Opposer’s Notice of Opposition), Applicant lacks knowledge or information sufficient to form a
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`belief about the truth of this allegation. The Applicant has insufficient knowledge of what the
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`United States Patent and Trademark Office has granted the Opposer for any marks associated
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`with the Opposer.
`13. For the Opposer’s allegation that “Opposer is also the owner of, and will also rely on herein, the
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`following valid and subsisting United States trademark registrations which include trademarks,
`service marks, and collective marks (collectively, “Opposer’s Registered Scout Marks”):
`{followed by listing of aforementioned trademark registrations}“, (Paragraph #13 from the
`Opposer’s Notice of Opposition), Applicant lacks knowledge or information sufficient to form a
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`belief about the truth of this allegation. The Applicant has insufficient knowledge of all of the
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`trademark registrations managed by the Opposer.
`14. For the Opposer’s allegation that “In view of Opposer’s Registered Scout Marks, Opposer has
`priority in this Opposition. “, (Paragraph #14 from the Opposer’s Notice of Opposition),
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`Applicant denies this allegation. Applicant believes that the Opposer attempts to claim priority
`with regard to using the term “SCOUT” of which the Opposer illustrates no right to have
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`exclusivity of use as well as right to have priority with regard to this Opposition.
`15. For the Opposer’s allegation that “Opposer also has and will assert its common-law rights
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`resulting from its ownership and use of its unregistered Scout Marks in connection with its
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`various goods and services. Such marks include various trademarks, service marks, collective
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`membership marks, and trade name uses, which uses have not been abandoned, are distinctive or
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`have obtained secondary meaning, and which have been valid and continuous since a date prior
`to the filing date of the Application, prior to the claimed priority date, and prior to Applicant’s
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`first use of its marks. Such common law Scout Marks include the following: (1) VARSITY
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`SCOUT as used with clothing; (2) BOY SCOUTS OF AMERICA as used with clothing; (3)
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`BOY SCOUT as used with clothing, personal care products, cutlery, drinkware, and watches (4)
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 6
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`EAGLE SCOUT as used with clothing, drinkware, jewelry and cutlery; (5) CUB SCOUT as used
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`with clothing, watches, cutlery, drinkware, and personal care products; and (6)
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`SCOUTSTUFF.ORG as used in connection with retail services for clothing, bags, back packs,
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`watches, hats, accessories, sporting goods, camping goods (including cooking stoves and
`utensils), drinkware, personal care items, and the like.“, (Paragraph #15 from the Opposer’s
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`Notice of Opposition), the Applicant lacks knowledge or information sufficient to form a belief
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`about the truth of this allegation. The Applicant has insufficient knowledge of what unregistered
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`marks the Opposer can assert common-law rights upon. Applicant submits that it interprets this
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`allegation to mean that the Opposer is attempting to assert its common-law rights over the term
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`SCOUT, which the Opposer may attempt to use as support for opposing the registration of the
`Applicant’s RACK SCOUT mark. Applicant submits that the Opposer fails to illustrate proof
`that it has exclusive right to use the term “SCOUT”. Furthermore, the term “SCOUT” in the
`Applicant’s RACK SCOUT mark does not identify any member of the Opposer’s organization or
`the Opposer’s goods and services. Proof that the Opposer has no exclusive right to use the term
`“SCOUT” can be seen from the information the Applicant retrieved from the Trademark
`Electronic Search System (“TESS”) maintained by the United States Patent and Trademark
`Office (“USPTO”). The Applicant performed a search for all LIVE trademarks currently
`cataloged within the TESS of marks that contain the word “SCOUT” or “SCOUTS” in the mark,
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`and 643 records of approved trademarks were returned. From those 643 records, Applicant
`selected 57 trademarks as a sampling of marks where the word “SCOUT” or “SCOUTS” in the
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`mark is used as the second term in the mark (similar to how the Opposer displays SCOUT in
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`some of their Scout marks) or is used as a singular mark itself (as seen in Exhibit A). The
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`Applicant believes that these approvals for registration illustrate that the Opposer does not and
`should not have any exclusive right to use the term “SCOUT” in a mark and cause the opposition
`of another party’s ability to use it in a mark. With that information, the Applicant believes that
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`its RACK SCOUT mark is not, in any way, in direct contravention and derogation of the rights
`granted to Opposer by Congress and does not pose any threat of infringement to the Opposer’s
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 7
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`Scout marks to any greater degree than those found in the listing of approved marks containing
`the word “SCOUT” or “SCOUTS” as returned from the TESS search results.
`16. For the Opposer’s allegation that “Opposer also will assert its common law rights in its Scout
`Marks that it and/or the public have adopted, the use of which inures to Opposer’s benefit
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`regardless of whether such marks are used by Opposer. Such marks include various trademarks,
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`service marks, collective membership marks, and trade name uses, which uses have not been
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`abandoned, are distinctive or have obtained secondary meaning, and which have been valid and
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`continuous since a date prior to the filing date of the Application, prior to the claimed priority
`date, and prior to Applicant’s first use of its marks. Such common law Scout Marks include the
`following: (1) SCOUT as used to identify a member of Opposer’s organization and Opposer’s
`goods and services; (2) SCOUTS as used to identify membership in Opposer’s organization,
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`troops and units of Opposer, and goods and services of Opposer; (3) SCOUTING as used in
`association with Opposer’s organization, participation in Opposer’s programs and activities, and
`goods and services of Opposer; and (4) BOY SCOUTS as used in association with Opposer’s
`organization, and goods and services of Opposer.“, (Paragraph #16 from the Opposer’s Notice of
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`Opposition), the Applicant lacks knowledge or information sufficient to form a belief about the
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`truth of this allegation. The Applicant has insufficient knowledge of what marks that it and/or
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`the public have adopted and which, if any, of these marks the Opposer can assert common-law
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`rights upon. Applicant submits that it interprets this allegation to mean that the Opposer is
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`attempting to assert its common-law rights over the term SCOUT, which the Opposer may
`attempt to use as support for opposing the registration of the Applicant’s RACK SCOUT mark.
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`Applicant submits that the Opposer fails to illustrate proof that it has exclusive right to use the
`term “SCOUT”. Furthermore, the term “SCOUT” in the Applicant’s RACK SCOUT mark does
`not identify any member of the Opposer’s organization or the Opposer’s goods and services.
`Applicant cites the listing of 643 records of approved trademarks containing the term “SCOUT”
`or “SCOUTS” that have been granted by the USPTO as support that Opposer does not illustrate
`it has exclusivity for use of the term “SCOUT” or “SCOUTS”.
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 8
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`17. For the Opposer’s allegation that “Opposer’s Scout Marks constitute a family of marks that
`include the term “SCOUT”“, (Paragraph #17 from the Opposer’s Notice of Opposition), the
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of this
`allegation. The Applicant has insufficient knowledge of what the Opposer considers a “family of
`marks”. Applicant submits that it interprets this allegation to mean that the Opposer is
`attempting to state that since it has multiple marks that incorporate the term “SCOUT” that it
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`may constitute it having priority to use the term and bar the Applicant from using the term in
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`registration of its RACK SCOUT mark. Applicant furthermore submits that the Opposer fails to
`illustrate proof that it has exclusive right to use the term “SCOUT”. Applicant reiterates that the
`term “SCOUT” in the its RACK SCOUT mark does not identify any member of the Opposer’s
`organization or the Opposer’s goods and services. Applicant cites the listing of 643 records of
`approved trademarks containing the term “SCOUT” or “SCOUTS” that have been granted by the
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`USPTO as support that Opposer does not illustrate it has exclusivity for use of the term
`“SCOUT” or “SCOUTS”.
`18. For the Opposer’s allegation that “Opposer has established a valuable reputation and goodwill in
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`its Scout Marks by reason of its long continuous use, extensive promotion, and sale of goods and
`rendering services utilized in association with its Scout Marks.“, (Paragraph #18 from the
`Opposer’s Notice of Opposition), the Applicant lacks knowledge or information sufficient to
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`form a belief about the truth of this allegation. The Applicant has insufficient knowledge of any
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`reputation and goodwill of the Opposer with regard to any marks associated with the Opposer.
`19. For the Opposer’s allegation “As a result of Opposer’s long continuous use and extensive
`marketing efforts, Opposer’s Scout Marks are well known, and the public has come to associate
`Opposer with said Scout Marks.“, (Paragraph #19 from the Opposer’s Notice of Opposition), the
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of this
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`allegation. The Applicant has insufficient knowledge of utilization and marketing with regard to
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`any marks associated with the Opposer and how that has affected the public notoriety of and
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`association with the Opposer.
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 9
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`20. For the Opposer’s allegation that “Applicant’s Mark as proposed for registration is substantially
`similar to Opposer’s Scout Marks.” (Paragraph #20 from the Opposer’s Notice of Opposition),
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`Applicant denies this allegation. The Applicant believes this allegation is based on the notion
`that the Opposer is referencing use of the term “SCOUT” in the Applicant’s RACK SCOUT
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`mark. Applicant submits that the Opposer fails to illustrate proof that it has exclusive right to
`use the term “SCOUT”. Furthermore, the term “SCOUT” in the Applicant’s RACK SCOUT
`mark does not identify any member of the Opposer’s organization or the Opposer’s goods and
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`services. Applicant cites the listing of 643 records of approved trademarks containing the term
`“SCOUT” or “SCOUTS” that have been granted by the USPTO as support that Opposer does not
`illustrate it has exclusivity for use of the term “SCOUT” or “SCOUTS”.
`21. For the allegation “The services for which Applicant seek to register Applicant’s Mark are
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`similar or related to the goods and services for which Opposer uses and/or has registered its
`Scout Marks.” (Paragraph #21 from the Opposer’s Notice of Opposition), Applicant admits this
`allegation. The USPTO explicitly states that the “Failure to identify your goods and/or services
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`correctly may result in major delays in the prosecution of your application. In some cases, an
`incorrect identification may prevent registration of your mark.” With that guidance, the
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`Applicant is attempting to be as clear as possible when describing the services to be represented
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`by the mark within the International Class 035 where it is to be registered. Applicant also
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`submits that the services to be covered by the RACK SCOUT mark are within the same business
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`space (retail on-line department stores) but will be considerably different from that of the
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`Opposer (of which the company confidential details are not disclosed in this forum). The
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`Applicant highlights that its description of its services is similar to the Opposer, but noticeably
`more extensive for its RACK SCOUT mark than the Opposer’s Scout Mark,
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`SCOUTSTUFF.ORG, in International Class 035. The Applicant also highlights that the
`Opposer’s Scout mark in question, SCOUTSTUFF.ORG, clearly references a website domain
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`name, which the Applicant believes holds no similarity in name or use to the registration of its
`RACK SCOUT mark. Furthermore, the Opposer’s mark refers to a .ORG web domain which
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`has historically been intended for non-profit entities, and is commonly used by schools, open-
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 10
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`source projects, and communities. This is completely opposite to the commercial nature of the
`Applicant’s RACK SCOUT mark. The Applicant believes that the Opposer presents no further
`burden of proof that the Applicant’s RACK SCOUT mark is substantially similar to its Scout
`marks, and this allegation should not be grounds to oppose the registration of the Applicant’s
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`RACK SCOUT mark.
`22. For the Opposer’s allegation that “Opposer repeats and realleges each and every allegation set
`forth in paragraphs 1 through 21 herein.” (Paragraph #22 from the Opposer’s Notice of
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`Opposition), Applicant refers to each admittance, denial, or lack of sufficient knowledge or
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`information statement and the corresponding verbiage listed in response to each allegation set
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`forth in paragraphs 1 through 21 herein.
`23. For the Opposer’s allegation that “Congress, in 36 U.S.C. §30905, granted Opposer “the
`exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases”
`that it adopts.“, (Paragraph #23 from the Opposer’s Notice of Opposition), Applicant lacks
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`knowledge or information sufficient to form a belief about the truth of this allegation. The
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`Applicant has insufficient knowledge of what emblems, badges, descriptive or designating
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`marks, and words or phrases the Opposer has exclusive rights to use.
`24. For the Opposer’s allegation that “The rights granted under 36 U.S.C. §30905 to Opposer
`include the exclusive right to Opposer’s Scout Marks as used in the United States.“, (Paragraph
`#24 from the Opposer’s Notice of Opposition), the Applicant lacks knowledge or information
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`sufficient to form a belief about the truth of this allegation. The Applicant has insufficient
`knowledge of what will be considered to constitute the Opposer’s Scout Marks and what
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`exclusive rights those marks will be provided.
`25. For the Opposer’s allegation that the “Applicant’s use and/or registration of Applicant’s Mark is
`in direct contravention and derogation of the rights granted to Opposer by Congress.” (Paragraph
`#25 from the Opposer’s Notice of Opposition), Applicant denies this allegation. Per 36 U.S.C.
`§30905, Opposer “has the exclusive right to use emblems, badges, descriptive or designating
`marks, and words or phrases the corporation adopts.” Opposer fails to illustrate proof that it has
`adopted use of “Rack Scout” and, as a result, has no exclusive right to use it. The Applicant
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 11
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`submits that if any common law rights can be claimed for use of “RACK SCOUT”, they would
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`be granted to the Applicant for first use of this mark in acquisition of the website domain
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`www.rackscout.com (dated Sunday, June 30, 2013 as seen in Exhibit B) where the name RACK
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`SCOUT and a to-be-registered stylized mark of the name appears on the website, as well as in a
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`prototype mobile application that has been created. Applicant also submits that if the Opposer is
`referencing 36 U.S.C. §30905 with regard to use of the term “SCOUT”, Opposer fails to
`illustrate proof that it has exclusive right to use the term “SCOUT”. Furthermore, the term
`“SCOUT” in the Applicant’s RACK SCOUT mark does not identify any member of the
`Opposer’s organization or the Opposer’s goods and services. Applicant cites the listing of 643
`records of approved trademarks containing the term “SCOUT” or “SCOUTS” that have been
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`granted by the USPTO as support that Opposer does not illustrate it has exclusivity for use of the
`term “SCOUT” or “SCOUTS”. With that information, the Applicant believes that its RACK
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`SCOUT mark is not, in any way, in direct contravention and derogation of the rights granted to
`Opposer by Congress and does not pose any threat of infringement to the Opposer’s Scout marks
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`to any greater degree than those found in the listing of approved marks containing the word
`“SCOUT” or “SCOUTS” as returned from the TESS search results.
`26. For the Opposer’s allegation that “Opposer repeats and realleges each and every allegation set
`forth in paragraphs 1 through 25 herein.” (Paragraph #26 from the Opposer’s Notice of
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`Opposition), Applicant refers to each admittance, denial, or lack of sufficient knowledge or
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`information statement and the corresponding verbiage listed in response to each allegation set
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`forth in paragraphs 1 through 25 herein.
`27. For the Opposer’s allegation that “Relevant persons, including those persons for whom BSA’s
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`collective membership marks are displayed, are likely to believe that the services for which
`Applicant seek to register Applicant’s Mark emanate from, are endorsed by, or are in some way
`associated with BSA’s organization.” (Paragraph #27 from the Opposer’s Notice of Opposition),
`Applicant denies this allegation. The Applicant highlights that the Opposer states it “is a famous
`youth organization in the United States” and “has been engaged in the organization and
`management of programs for young people” (Paragraph #6 from the Opposer’s Notice of
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`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION - 12
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`Opposition). The Applicant’s RACK SCOUT mark will exist and operate in a complete
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`different business space (commercial retail and on-line shopping) and will be considerably
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`different from that of the Opposer (of which the company confidential details are not disclosed in
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`this forum). The Applicant would also submit that from other marks containing the term
`“SCOUT” or “SCOUTS” that have been granted by the USPTO, the Applicant believes that
`these approvals for registration illustrate that the Opposer’s statement is unfounded and holds no
`additional merit with regard to the Applicant’s mark nor should it be grounds to oppose the
`registration of the Applicant’s RACK SCOUT mark.
`28. For the Opposer’s allegation that “Applicant’s Mark so resembles Opposer’s Scout Marks, when
`used on or in connection with Applicant’s services, as to be likely to cause confusion, or to cause
`mistake, or to deceive.” (Paragraph #28 from the Opposer’s Notice of Opposition), Applicant
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`denies this allegation. The Applicant believes this allegation is based on the notion that the
`Opposer is referencing use of the term “SCOUT” in the Applicant’s RACK SCOUT mark.
`Applicant cites the listing of 643 records of approved trademarks containing the term “SCOUT”
`or “SCOUTS” that have been granted by the USPTO. The Applicant believes that its RACK
`SCOUT mark does not pose any threat of infringement to the Opposer’s S

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