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`ESTTA Tracking number:
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`ESTTA809582
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`Filing date:
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`03/27/2017
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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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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Plaintiff
`Boy Scouts of America
`
`Gary A. Hecht, Esq.
`Fox Rothschild LLP
`P.O. Box 5231
`Princeton, NJ 08543-5231
`UNITED STATES
`ghecht@frof.com, dmcgregor@frof.com, ipdocket@frof.com, colszyk@frof.com
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`Other Motions/Papers
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`Deanna M. McGregor
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`ghecht@frof.com, dmcgregor@frof.com, ipdocket@frof.com, mscott@frof.com
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`/-d-/
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`03/27/2017
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`Attachments
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`Motion to Strike Applicants Answer - 91232896.pdf(136172 bytes )
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`v.
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`Boy Scouts of America,
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`Opposer,
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`CCG Creative, LLC,
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`Applicant.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Opposition No. 91232896
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`Application Serial No. 86/914,322
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`Mark: “RACK SCOUT”
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`OPPOSER’S MOTION TO STRIKE
`APPLICANT’S RESPONSE TO OPPOSER’S NOTICE OF OPPOSITION
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`Opposer, Boy Scouts of America (“Opposer”), by and through its counsel, hereby moves
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`to strike the Response to Opposer’s Notice of Opposition (the “Response”) filed by Applicant,
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`CCG Creative, LLC (“Applicant”), for failure to comply with applicable Trademark Rules, as well
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`as the Federal Rules of Civil Procedure. More specifically, the Board should strike Applicant’s
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`Response, in its entirety, because the Response is both argumentative and fails to properly admit
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`or deny the allegations set forth in the Notice of Opposition. In the event that the Board determines
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`that it should not strike Applicant’s Response in its entirety, the Board should deem admitted those
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`allegations of the Notice of Opposition that Applicant failed to deny.
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`I.
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`RELEVANT FACTUAL AND PROCEDURAL BACKGROUND
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`Opposer is a famous youth organization operating in the United States. Beginning around
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`February 8, 1910, and continuing to the present, Opposer has been engaged in the organization
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`and management of programs for boys and young men. Opposer is the owner of various registered
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`and unregistered trademarks and tradenames incorporating the term “SCOUT.” [Opposer’s marks
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`and trade names incorporating the term “SCOUT,” registered and unregistered, are collectively
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`referred to herein as “Opposer’s Scout Marks” or “Scout Marks.”] Opposer began using certain
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`Scout Marks at least as early as 1910.
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`ACTIVE\44968887.v1-3/27/17
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`On February 15, 2017, Opposer initiated this proceeding by filing a Notice of Opposition
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`(the “Notice”) against U.S. trademark application serial no. 86/914,322, seeking registration of the
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`mark “RACK SCOUT,” in connection with the following services in international class 35 (the
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`“Application”):
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`Retail on-line department stores; on-line retain store services
`featuring a wide variety of consumer goods; online retail store
`services featuring shoes; online retail stores services featuring
`clothing, accessories, footwear, hats, belts, gloves, scarves, bags,
`handbags, packs, purses, luggage, briefcases, watches, jewelry,
`eyewear, home products, housewares, home décor, kitchen and
`cooking products, dishes, glassware, cutlery, bathroom products,
`cosmetics, beauty and personal care products, fragrances, skin and
`hair products, bedding and linens, baby goods, sporting goods, and
`storage and organization products.
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`[See Notice, Dkt. #1, at ¶ 3].
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` The Notice includes thirty-eight (38) separately numbered paragraphs of allegations and
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`sets forth four counts against Applicant. [See generally id.]. Specifically, the Notice asserts counts
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`against Applicant for: (1) violation of Opposer’s exclusive rights under 35 U.S.C. § 30905;
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`(2) likelihood of confusion with Opposer’s Scout Marks under 15 U.S.C. § 1052(d); (3) false
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`association under 15 U.S.C. § 1052(a); and (4) dilution under 15 U.S.C. §1125(c).
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`On March 19, 2017, Applicant filed its Response to Opposer’s Notice (the “Response”).
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`[See generally Response, Dkt. #4]. Applicant did not write its Response in numbered paragraph
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`format to correspond to the numbered paragraphs of Opposer’s Notice as is proper and customary.
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`[Id.]. Moreover, Applicant’s Response does not admit or deny the individual allegations set forth
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`in each of the thirty-eight paragraphs contained in the Notice. [Id.]. To the contrary, after
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`reviewing Applicant’s Response it is clear that, apart from admitting the accuracy of its business
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`address, the recitation of goods for its trademark application, and the date upon which it filed its
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`trademark application, Applicant neither admits nor denies the remaining allegations set forth in
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`Error! Unknown document property name. 2
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`Opposer’s Notice. [Id.].
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`Instead, Applicant spends nearly the entirety of its Response attempting to argue the merits
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`of Opposer’s claims based on alleged evidence that is not part of the record in this case. For
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`example, Applicant spends nearly one-half of its Response discussing the results of a search it
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`allegedly performed of the records of the United States Patent and Trademark Office’s (“USPTO”)
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`Trademark Electronic Search System (“TESS”). [Id., at p. 1]. Applicant spends another quarter
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`of its Response, explaining why it had to amend its application from a use-based application to an
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`intent-to-use application. [Id., at p. 2]. This information is not necessary to admit or deny the
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`allegations set forth in the Notice and, in no way, narrows the issues in this case.
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`For the reasons set forth more fully below, Applicant’s Response is summarily deficient in
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`that it fails to comply with Federal Rule of Civil Procedure 8(b)(1) and 37 C.F.R. § 2.106(b)(2) by
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`(1) attempting to argue the merits of Opposer’s claims, and (2) failing to admit or deny the specific
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`averments set forth in Opposer’s Notice. Thus, the Board should strike Applicant’s Response in
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`its entirety. In the alternative, if the Board determines that it should not strike the Response, the
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`Board should deem admitted all allegations that Applicant failed to deny in the Response.
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`II.
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`ARGUMENT
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`The Federal Rules of Civil Procedure govern all inter partes proceedings before this Board.
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`37 C.F.R. § 2.116(a). Federal Rule of Civil Procedure 8(b)(1) provides that, in responding to a
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`pleading, a party must “state in short and plain terms its defenses to each claim asserted against it”
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`and “admit or deny the allegations asserted against it by an opposing party.” Fed. R. Civ. P.
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`8(b)(1). See also 37 C.F.R. § 2.106(b)(1). The applicant’s answer “should apprise the opponent
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`of those allegations in the [notice of opposition] that stand admitted and will not be in issue at trial
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`and those that are contested and will require proof to be established to enable the [opposer] to
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`prevail.” Wright & Miller, 5 Fed. Prac. & Proc. Civ. § 1261 (3d ed 2017 Update).
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`Error! Unknown document property name. 3
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`The applicant’s answer “should not contain verbose, argumentative, or redundant material
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`or include evidentiary matters.” Id. More specifically, the applicant “should not argue the merits
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`of the allegations in the [notice of opposition] but rather should state, as to each of the allegations
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`contained in the [the notice of opposition], that the allegation is either admitted or denied.” TBMP
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`§ 311.02(a). See also Thrifty Corp. v. Bomax Enter., 228 USPQ 62, 1985 WL 73057, at *2 (TTAB
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`1985) (striking argumentative answer because it failed to comply with Rule 8(b)).
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`If the applicant is without sufficient knowledge or information upon which to form a belief
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`as to the truth of any of the allegations, it should state as much, which will have the effect of a
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`denial. Fed. R. Civ. P. 8(b)(5). If the applicant fails to deny an allegation when a responsive
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`pleading is required, the Board should deem the allegation admitted. Fed. R. Civ. P. 8(b)(6). See
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`also Wright & Miller, 5 Fed. Prac. & Proc. Civ. § 1261; TBMP § 311.02(a).
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`Applicant’s response is deficient in the first instance because it fails to respond directly to
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`the allegations set forth in the Notice of Opposition and, instead, attempts to argue the merits of
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`Opposer’s claims. [See generally Response, Dkt. #4]. Further, the Response also seeks to include
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`evidentiary matters, such as the results of Applicant’s alleged TESS search, to dispute the merits
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`of Opposer’s claims. [Id., at p. 1]. The inclusion of such information is improper and fails to
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`apprise Opposer of which allegations will not be an issue at trial and which allegations Applicant
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`disputes. See Wright & Miller, 5 Fed. Prac. & Proc. Civ. § 1261; TBMP § 311.02(a).
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`Additionally, Applicant’s Response neither admits nor denies, generally or specifically,
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`Opposer’s allegations regarding, among other things, the following:
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`Applicant’s earliest priority date for the mark “RACK SCOUT” [Opposition, Dkt.
`#1, at ¶ 5];
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`The nature of Opposer’s business and operations [id., at ¶ 6];
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`The date upon which Opposer first adopted and began using marks incorporating
`the term “SCOUT” [id., at ¶ 7];
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`Opposer’s operation of various programs for boys and young men under certain
`names and identities, including CUB SCOUTS, BOY SCOUTS, SEA SCOUTS,
`etc. (collectively, “Scout Names and Identities”) [id., at ¶ 8];
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`The fame of Opposer’s Scout Names and Identities [id., at ¶ 8];
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`Opposer’s use of its Scout Names and Identities long before the effective filing date
`of Applicant’s Application to register “RACK SCOUT” [id., at ¶ 8];
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`Opposer’s operation of retail stores, including an online retail store, which sells
`various goods and services in connection with its Scout Marks [id., at ¶ 9];
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`Opposer’s use of its Scout Marks long before the effective filing date of Applicant’s
`Application to register “RACK SCOUT” [id., at ¶ 10];
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`Congress’ enactment of a statute granting Opposer the exclusive right to use its
`various marks [id., at ¶¶ 11-12, 22-25];
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`Opposer’s ownership of valid and subsisting United States trademark registrations
`for various Scout Marks [id., at ¶ 13];
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`Opposer’s common law rights resulting from its ownership and use of its
`unregistered Scout Marks in connection with it various goods and services [id., at
`¶¶ 15-16];
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`Opposer’s Scout Marks as a family of marks that include the term “SCOUT” [id.,
`at ¶ 17];
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`Opposer’s valuable reputation and goodwill in its Scout Marks [id., at ¶ 18];
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`The public’s association of Opposer with the Scout Marks [id., at ¶ 19];
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`Applicant’s mark “RACK SCOUT” being substantially similar to Opposer’s Scout
`Marks [id., at ¶ 20];
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`The similarity and/or relatedness of the services for which Applicant seeks to
`register “RACK SCOUT” to the goods and services for which Opposer uses and/or
`has registered its Scout Marks [id., at ¶ 21]; and
`The fame of Opposer’s Scout Marks [id., at ¶¶ 35-36].
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`[See generally Response, Dkt. #4].
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`10.
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`11.
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`12.
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`13.
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`14.
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`15.
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`16.
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`17.
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`In sum, Applicant’s Response fails to respond to virtually all of the allegations set forth in
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`Opposer’s Response. [Id.]. This failure renders the Response wholly insufficient to serve as a
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`responsive pleading. The Response does not, as Rule 8(b)(1) requires, apprise Opposer what
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`allegations in the Notice Applicant admits and what allegations in the Notice Applicant disputes.
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`Accordingly, the Response fails to serve the purpose of Rule 8(b)(1), which is to narrow down for
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`the parties the facts and issues actually in dispute. For these reasons, Opposer respectfully requests
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`that the Board strike Applicant’s Response in its entirety.
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`In the event that the Board determines that it should not strike Applicant’s Response in its
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`entirety, Opposer respectfully submits that the Board should deem admitted the following
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`paragraphs of the Notice: Paragraphs 5-13, 15-25, and 35-36. Applicant’s Response fails to admit
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`or deny these paragraphs of the Notice. Deeming these paragraphs admitted is consistent with the
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`plain language of Rule 8(b)(6), which expressly states that an allegation is admitted if a responsive
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`pleading is required and the allegation is not denied. Fed. R. Civ. P. 8(b)(6). See also Wright &
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`Miller, 5 Fed. Prac. & Proc. Civ. § 1261; TBMP § 311.02(a).
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`III. CONCLUSION
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`For the foregoing reasons, Opposer respectfully requests that this Honorable Board strike
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`Applicant’s Response to the Notice in its entirety. In the alternative, if the Board determines that
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`it should not strike Applicant’s Response in its entirety, it should deem admitted the allegations
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`set forth in Paragraphs 5-13, 15-25, and 35-36 of Opposer’s Notice of Opposition.
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`Respectfully submitted,
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`/gah/
`Gary A. Hecht
`Melissa E. Scott
`Fox Rothschild LLP
`2000 Market Street, 20th Floor
`Philadelphia, PA 19103
`(215) 299-2416
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`ATTORNEYS FOR OPPOSER
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`Dated: March 27, 2017
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`v.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
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`Opposition No. 91232896
`
`Application Serial No. 86/914,322
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`Mark: “RACK SCOUT”
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`Boy Scouts of America,
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`Opposer,
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`CCG Creative, LLC
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`Applicant.
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`CERTIFICATE OF SERVICE
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`I, Deanna M. McGregor, hereby certify that, on this 27th day of March, 2017, I served a
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`true and correct copy of the foregoing Opposer’s Motion to Strike Applicant’s Response to
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`Opposer’s Notice of Opposition upon Applicant via email at the following address of record:
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`CCG Creative, LLC
`cgatling@ccgcreative.com
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`
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`Dated: 27 March 2017
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`/-d-/
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`Deanna M. McGregor
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`Error! Unknown document property name. 8
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