Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA928706
`10/15/2018
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`ESTTA Tracking number:
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`Filing date:
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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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`91236668
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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 email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Coreology Inc.
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`HENRY POGORZELSKI
`CONLEY ROSE PC
`P O BOX 3267
`HOUSTON, TX 77253-3267
`UNITED STATES
`tmhou@conleyrose.com
`713-238-8000
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`Opposition/Response to Motion
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`Henry Pogorzelski
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`hpogorzelski@conleyrose.com
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`/Henry Pogorzelski/
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`10/15/2018
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`Response to Motion for Leave - Final for Filing.pdf(106087 bytes )
`Ex. A - Martz Delclaration.pdf(475936 bytes )
`Ex. A1-A7 - Redacted Coreology Exhibits.pdf(3630900 bytes )
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`PUBLIC VERSION: REDACTIONS TO
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`EXHIBITS A2-A5 BY APPLICANT
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`Attorney Docket Number 7278-00300
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matters of U.S. Trademark Applications Serial Nos. 87/160,134 for alleged mark
`SCRAMBLED EGGS; 87/975,341 for alleged mark WHEELBARROW; and 87/507,864 for
`alleged mark SPIDER LUNGE, assigned to Lagree Technologies, Inc.
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`COREOLOGY INC.
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`Opposer,
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`v.
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`LAGREE TECHNOLOGIES, INC.
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`Applicant.
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`Consolidated
`Opposition No. 91236668 (parent)
`Opposition No. 91236942
`Opposition No. 91238139
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`§
`§
`§
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`§
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`§
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`OPPOSER’S RESPONSE IN OPPOSITION TO APPLICANT’S
`MOTION FOR LEAVE TO AMEND ITS ANSWERS
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`Opposer Coreology, Inc. (“Coreology”) opposes Applicant Lagree Technologies, Inc.
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`(“Lagree”)’s Motion for Leave to Amend Its Answers (32 TTABVUE; Opp’n 91236942,
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`20 TTABVUE; Opp’n 91238139, 16 TTABVUE) (“Motion”).
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`I.
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`SUMMARY OF THE ARGUMENT
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`In its Motion, Lagree seeks leave to assert the doctrine of “licensee estoppel” as a new
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`alleged defense. Lagree’s Motion should be denied because such a defense would be futile. It
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`would be futile because Coreology has never been a licensee of Lagree with respect to any of the
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`alleged marks at issue.
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`The closest thing to a “license agreement” transpired in June 2010 when Ms. Sarah
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`Martz personally entered an agreement with a company called SPX Fitness, Inc. The agreement
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`Opposer’s Response to Motion for Leave
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`Page 1 of 14
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`allowed Ms. Martz “to operate” in certain zip codes and, arguably, to use the terms “SPX
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`Fitness” and “Megaformer.”
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`Lagree’s proposed defense is futile for three reasons. First, the agreement with Ms.
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`Martz does not purport to license any of the three alleged marks at issue in this opposition.
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`Second, even if the agreement had mentioned the three marks at issue, the law forbids the
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`application of “licensee estoppel” based on a license granted to a third party like Sarah Martz,
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`even when the third party is closely related to the real party in interest. Lastly, there was also no
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`implied license. In January 2017 (nine months before this opposition), Lagree sent Coreology a
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`cease and desist letter asserting that any use of the alleged marks “constitutes trademark
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`infringement.” This is the antithesis of a license. Lagree’s defense is thus futile, and its Motion
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`seeking leave to add this defense should be denied.
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`II.
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`BACKGROUND
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`A.
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`Procedural Background
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`Coreology filed the present opposition on September 13, 2017. (1 TTABVUE.) Lagree
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`filed its original Answer on February 21, 2018. (14 TTABVUE.) This opposition was later
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`consolidated with two others and now includes three of Lagree’s trademark applications:
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`x SCRAMBLED EGGS (Appl. Ser. No. 87/160134 filed Sept. 2, 2016 — Opp’n No.
`91236668 filed Sept. 13, 2017);
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`x WHEELBARROW (Appl. Ser. No. 87/975341 filed Sept. 2, 2016 — Opp’n No.
`91236942 filed Sept. 28, 2017); and
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`x SPIDER LUNGE (Appl. Set. No. 87/507864 filed June 27, 2017 — Opp’n No. 91238139
`filed Dec. 2, 2017).
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`Opposer’s Response to Motion for Leave
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`Page 2 of 14
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`(hereinafter, the “alleged marks at issue”) (29 TTABVUE.) In relevant part, each of the
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`foregoing applications identifies the associated goods and services as “[p]roviding fitness
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`classes, workouts, training, and exercise routine” in International Class 41.
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`In the present Motion, Applicant Lagree seeks leave to assert the doctrine of “licensee
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`estoppel” as a new affirmative defense. (Mot. at 2.) Lagree’s Motion includes a copy of its
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`proposed amended Answer, which seeks to plead as follows:
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`The First Amended Notice of Opposition is barred, in whole or in part, by the
`equitable defense of licensee estoppel. At the time of filing the Notice of
`Opposition, Opposer was a licensee of Applicant.
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`(Id., Ex. A at 6 (emphasis added).) Lagree’s proposed answer does not give any further detail
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`about this alleged “license.”1 Notably, Lagree fails to allege that Opposer was a licensee of
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`Applicant under any of the alleged marks at issue. As explained below, that distinction is both
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`critical and fatal to Lagree’s proposed defense.
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`B.
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`Factual Background
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`Opposer Coreology operates an exercise studio in Palos Verdes, California which
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`provides exercise classes, including Pilates and cardio workouts. (Ex. A, S. Martz Decl. at ¶ 1.)
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`Coreology was first formed on August 16, 2010 by Ms. Sarah Martz. (Id. at ¶ 7.)
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`On May 31, 2010, over two months prior to forming Coreology, Ms. Martz inquired of
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`SPX Fitness, Inc. (“SPX Fitness”) about potentially buying its exercise machines for use at an
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`exercise studio that Ms. Martz was planning. (Id. at ¶ 2; Ex. A1.) SPX Fitness responded with a
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`proposed partnership license agreement, a sales agreement for certain “Megaformer” exercise
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`1
`Lagree’s original Answer did not assert licensee estoppel (id., Ex. B at 6), nor did it
`otherwise allege that Coreology was a licensee (see generally id.).
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`Opposer’s Response to Motion for Leave
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`Page 3 of 14
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`machines, and a list of frequently asked questions about the proposed partnership license
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`agreement. (Ex. A at ¶ 2; Exs. A2, A3, A4.) The only document of these three that referred to
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`any potential trademarks was the list of frequently asked questions (hereinafter the “FAQs”).
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`(Ex. A at ¶ 3.)
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`The FAQs made these four points about potential trademarks:
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`x Pilates Plus is not a trademark. We strongly recommend against using Pilates Plus as
`a business name.
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`x Systeme Dynamique is no longer in use and cannot be used as part of your legal
`business name
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`x SPX Fitness and the Proformer/Megaformers are the trademark that should be
`referred to.
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`x SPX, SPX Fitness, the Proformer and the Megaformer cannot be used as part of your
`legal business name (Franchise Law).
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`(Ex. A4 at 2 (emphasis added).)
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`On June 10, 2010, two months prior to forming Coreology, Ms. Martz personally entered
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`a “LIMITED PARTNERSHIP LICENSE AGREEMENT” with SPX Fitness (the “SPX Fitness
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`Agreement”). (Ex. A at ¶ 5; Ex. A5 at 1.) The actual granting clause of the SPX Fitness
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`Agreement only gave Ms. Martz a license “to operate” an exercise studio in California zip codes
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`90274 and 90275. (Ex. A5 at 1.) The SPX Fitness Agreement itself does not expressly refer to
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`any alleged trademark rights whatsoever. At most, it implicitly refers to two potential
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`trademarks that are not at issue in this opposition.
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`The SPX Fitness Agreement first noted that “Sebastian Lagree has developed an
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`innovative and unique exercise regime called SPX Fitness[.]” (Ex. A5 at 1 (emphasis added).)
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`The agreement also noted that Mr. Lagree was then selling an exercise machine called a
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`Opposer’s Response to Motion for Leave
`Page 4 of 14
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`“Megaformer.” (Id. (emphasis added).) The SPX Fitness Agreement was itself entirely silent
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`about potential trademarks, but the earlier FAQs stated that “SPX Fitness and the
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`Proformer/Megaformers are the trademark [sic] that should be referred to.” (Ex. A4 at 2
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`(emphasis added).) Thus, at most, a license may arguably be inferred for the use of two potential
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`trademarks, “SPX Fitness” and “Megaformer.” (Ex. A at ¶¶ 5, 6.)
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`Other than “SPX Fitness” and “Megaformer,” the SPX Fitness Agreement does not refer
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`to any other names or identifiers that could even be considered a potential trademark or service
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`mark. Most importantly, the SPX Fitness Agreement does not mention or refer to any of the
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`alleged marks now at issue. In fact, none of the documents provided to Ms. Martz mentioned
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`any of the three alleged marks at issue in this opposition. (Exs. A2-A5.)
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`Not once during the next six years did SPX Fitness or Lagree ever ask Ms. Martz or
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`Coreology to enter any other agreement, including any type of explicit or implied trademark
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`license agreement. (Ex. A at ¶ 8.) For example, during this period, neither SPX Fitness nor
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`Lagree ever asked Ms. Martz or Coreology to use any particular terminology for exercise moves,
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`including but not limited to any of the alleged marks at issue. (Id.) SPX Fitness and Lagree also
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`never attempted to control or supervise Ms. Martz or Coreology’s use of any exercise
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`terminology, including but not limited to any of the alleged marks now at issue. (Id.) Likewise,
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`SPX Fitness and Lagree also never provided Ms. Martz or Coreology any suggested advertising
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`materials that were based on any of the alleged marks at issue. (Id.) In short, throughout this
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`period, SPX Fitness and Lagree never did anything or said anything to suggest that any particular
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`exercise terms might be considered alleged trademarks or service marks, or that Ms. Martz or
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`Coreology must agree to use — either at all, or in any particular way — any of these alleged
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`marks. (Id.)
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`Opposer’s Response to Motion for Leave
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`Page 5 of 14
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`On January 10, 2017, Lagree wrote to Ms. Martz and Coreology to complain about
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`allegedly infringing exercise machines. (Ex. A6.) This letter alleged that these exercise
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`machines infringed several of Lagree’s patents and violated Lagree’s alleged trade dress rights.
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`(Id. at 1-3, 4-5.) The letter also alleged trademark infringement by associating “classes, training,
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`and the infringing machines with the Megaformer trademark.” (Id. at 2.) Lastly, Lagree alleged
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`that “it owns trademarks to the names of a number of exercise techniques, including Donkey
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`Kick, Catfish, French Twist, Elevator Lunge, Express Lunge, Escalator Lunge, Super Lunge,
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`Icebreaker, and Bear, to name a few. Any extent to which your Teachers Manual/Handbook
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`employs any of these marks, such use constitutes trademark infringement.” (Id. at 5 (emphasis
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`added).)
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`On April 25, 2017 (five months before the first opposition was filed), Lagree wrote again
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`to complain about Coreology’s exercise manual. This time, Lagree alleged that “we found at
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`least the following unauthorized usage of Lagree trademarks: . . . Scrambled Eggs [and] . . .
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`Spider Lunge[.]” (Ex. A7.) Clearly, Lagree itself viewed Coreology as an infringer, and not as
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`a licensee.
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`III. ARGUMENT AND AUTHORITIES IN SUPPORT
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`A.
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`Standards Governing Leave to Amend
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`Trademark Rule 2.116(a) provides that “leave [to amend a pleading] shall be freely given
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`when justice so requires.” 37 C.F.R. § 2.116(a). However, at the TTAB and in the courts, leave
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`to amend may also be denied if there has been undue delay that would prejudice the nonmoving
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`party, the moving party has acted in bad faith, or the amendment would be futile. Foman v.
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`Davis, 371 U.S. 178, 182 (1962); Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de
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`Opposer’s Response to Motion for Leave
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`Page 6 of 14
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`C.V., 464 F.3d 1339, 1353 (Fed. Cir. 2006) (citing, e.g., Wilson v. Am. Trans Air, Inc., 874 F.2d
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`386, 392 (7th Cir.1989) (“An amendment is a ‘futile gesture’ if the amended pleading could not
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`survive a motion for summary judgment”)); see also 37 C.F.R. § 2.107(a) (noting that the TTAB
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`applies the same standards for amending pleadings as are applied in the courts).
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`An amendment will be considered futile if it fails to state a valid legal theory, is
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`frivolous, or could not withstand a motion to dismiss. 3 MOORE’S FEDERAL PRACTICE — CIVIL
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`§ 15.15 (2018 3rd Ed.) (citing, e.g., Rife v. One W. Bank, F.S.B., 873 F.3d 17, 21 (1st Cir. 2017)
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`(finding futility when proposed amendment would be barred by limitations); Whitley v. Hanna,
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`726 F.3d 631, 648 (5th Cir. 2013) (finding futility when “new causes of action are meritless”);
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`Winget v. JP Morgan Chase Bank, N.A., 537 F.3d 565, 573 (6th Cir. 2008) (finding futility when
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`new claims are premature or would be barred by res judicata); Bower v. Jones, 978 F.2d 1004,
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`1010-11 (7th Cir. 1992) (denying leave to amend for factually unsupported equitable estoppel
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`claim)).
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`Likewise, at the TTAB, amendments have been denied as futile when they present
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`factually unsupported, implausible, or legally deficient claims or defenses. E.g., Embarcadero
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`Techs., Inc. v. Delphix Corp., 117 U.S.P.Q.2d 1518, 1523-1524 (TTAB January 21, 2016)
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`(finding futility because claim for “false suggestion of a connection” was factually unsupported
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`and claim for false representation was legally inadequate); BE Sport, Inc. v. Al-Jazeera Satellite
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`Channel, 115 USPQ2d 1765, 1769 (TTAB 2015) (finding applicant’s proposed defense of res
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`judicata to be futile); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929 n.10 (TTAB
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`2014) (denying leave when fraud claim lacked plausibility); Institut National des Appellations
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`d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1896 (TTAB 1998) (finding amendment
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`futile when opposer could not prevail as a matter of law).
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`Opposer’s Response to Motion for Leave
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`Page 7 of 14
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`B.
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`The Licensee Estoppel Doctrine
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`Under the doctrine of licensee estoppel, a licensee may be estopped to challenge a
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`licensor’s rights in the licensed mark during the time that the license is in force. Freeman v.
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`Nat’l Ass’n of Realtors, 64 USPQ2d 1700, 1703 (TTAB 2002). The rule is intended to prevent
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`an attack by a licensee on the validity of the same mark that was licensed. Id. “By entering into
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`the license agreement, the licensee recognizes the licensor's ownership of the mark and, by
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`implication, covenants not to challenge the licensor's rights.” Lawn Managers, Inc. v.
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`Progressive Lawn Managers, Inc., No. 4:16-CV-144-DDN, 2017 U.S. Dist. LEXIS 117690, at
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`*20 (E.D. Mo. July 27, 2017) (internal quotation omitted). In other words, a “‘licensee is
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`estopped from claiming any rights against the licensor which are inconsistent with the terms of
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`the license.’” Creative Gifts, Inc. v. UFO, 235 F.3d 540, 548 (10th Cir. 2000) (quoting 3
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`RUDOLF CALLMANN, UNFAIR COMPETITION, TRADEMARK & MONOPOLIES § 19.48, at 434 (Louis
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`Altman 4th ed. 1998 and 2000 cum. supp.)).
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`As an equitable doctrine, a court remains free to consider the particular circumstances of
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`the case, including the nature of the licensee’s claim and the terms of the license.”
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`RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 33 cmt. d (1995). The effect of licensee
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`estoppel is to bar only a challenge to the validity of the licensed mark that is based on facts
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`arising during the license term. Freeman, 64 USPQ2d at 1703 (citing, e.g., WCVB-TV v. Boston
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`Athletic Association, 926 F.2d 42 (1st Cir. 1991)).
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`Opposer’s Response to Motion for Leave
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`Page 8 of 14
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`C.
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`The Board Should Deny Leave as Futile
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`1.
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`Leave Is Futile Because Lagree Has Not Pled a License Under the
`Alleged Marks at Issue
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`In the present case, Lagree’s proposed defense of licensee estoppel is futile, firstly
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`because Lagree’s only supporting allegation is inadequate. Here, affirmative defenses, like any
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`other claims, must be supported by sufficient factual background and detail to place the opposer
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`on notice of the basis for the defenses. IdeasOne Inc. v. Nationwide Better Health Inc., 89
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`USPQ2d 1952, 1953 (TTAB 2009). Thus, an applicant must allege sufficient facts that go
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`beyond a naked assertion devoid of factual enhancement. Ashcroft v. Iqbal, 556 U.S. 662, 678
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`(2009). See also Heller Finance, Inc. v. Midwhey Powder Co., 883 F.2d 1286, 1294 (7th
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`Cir. 1989) (affirming rejection of bare bones and conclusory affirmative defenses).
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`In its proposed amended answer, Lagree alleges only that “[a]t the time of filing the
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`Notice of Opposition, Opposer was a licensee of Applicant.” However, Lagree has failed to
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`plead that the Opposer was a licensee under any of the alleged marks at issue in this opposition.
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`This omission is fatal. A licensee’s opposition of unlicensed trademarks would not be
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`“inconsistent with the terms of the license” and would not give rise to licensee estoppel.
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`Creative Gifts, 235 F.3d at 548. Here, the SPX Fitness Agreement fails to mention any of
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`alleged marks at issue. Setting aside the fact that this was not an agreement with Coreology, the
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`SPX Fitness Agreement still only referred to “SPX Fitness” and “Megaformer”—two terms that
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`are not at issue in this opposition. Thus, it was critical for Lagree to identify how any agreement
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`could be considered a license under the three alleged marks at issue.
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`Opposer’s Response to Motion for Leave
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`Page 9 of 14
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`2.
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`Licensee Estoppel Does Not Apply to Third Parties Like Coreology
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`Even if a license to Ms. Martz involved one or more of the marks at issue, such a
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`hypothetical license to Ms. Martz could not serve as the basis for licensee estoppel against
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`Coreology. “‘The licensee estoppel rule precludes only licensees from a challenge: other parties,
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`even those closely affiliated with the licensee, are not foreclosed.’” Fair Isaac Corp. v. Experian
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`Information Solutions, Inc., 650 F.3d 1139, 1150 (8th Cir. 2011) (emphasis added) (quoting 3
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`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 18.63 (4th ed. 2011)). In Fair Isaac,
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`the Eighth Circuit rejected licensee estoppel against the corporation VantageScore based on
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`licenses that were entered into by two of its three shareholders, Experian and TransUnion. Id. In
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`the present case, the only facts that could be argued to support some type of license is Ms.
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`Martz’s 2010 SPX Fitness Agreement that, at best, only gave her rights in “SPX Fitness” and
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`“Megaformer.” Even if Lagree were to argue that this license to Ms. Martz somehow also
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`included one or more of the marks at issue, it was still only a license to Ms. Martz and not to
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`Coreology. Thus, licensee estoppel would be foreclosed. Fair Isaac, 650 F.3d at 1150.
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`3.
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`Lagree Has Not Pled an “Implied” License Under the Alleged Marks at
`Issue Because Such an Allegation Would Be Meritless
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`Lagree’s purported licensee estoppel defense also fails to identify any underlying facts
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`that could support an “implied” license under the alleged marks at issue. Under other
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`circumstances, an “implied license can arise from conduct of the parties from which the
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`existence of an agreement could reasonably be inferred.” Novell, Inc. v. Network Trade Center,
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`Inc., 25 F. Supp.2d 1218, 1224 (D. Utah 1997); see also Dumdei v. Certified Financial Planner
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`Board of Standards, Inc., 1999 U.S. Dist. LEXIS 15624 (N.D. Tex. 1999) (same). However, in
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`the present case, there is no pleading or other suggestion based on the conduct of the parties that
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`Opposer’s Response to Motion for Leave
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`Page 10 of 14
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`Coreology impliedly licensed any of the three alleged marks now at issue. From 2010 until this
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`opposition, SPX Fitness and Lagree never did anything or said anything to suggest that any of
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`the alleged marks might be considered alleged trademarks or service marks, or that Ms. Martz or
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`Coreology must agree to use — either at all, or in any particular way — any of these terms. (Ex.
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`A at ¶ 8.) Rather, Coreology and Lagree appear to have acted as strangers with respect to these
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`alleged marks.
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`For example, none of the alleged marks appear anywhere in any of the documents that
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`were provided to induce the SPX Fitness Agreement. (Exs. A2-A5.) There is also no indication
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`or even an allegation that Lagree exercised any level of quality control over Coreology’s use of
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`the alleged marks at issue pursuant to some type of implied license. Such a lack of quality
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`control also militates against finding any implied license. State. Dept. of Parks & Rec. v. Bazaar
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`Del Mundo, Inc., 448 F.3d 1118, 1131-33 (9th Cir. 2006) (noting, e.g., that there must be some
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`indication that the allegedly licensed uses “reflect[] the goodwill and quality standards” of the
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`implied licensor).
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`Perhaps the most probative evidence that there was no license for any of the three alleged
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`marks, whether express or implied, is the fact that Lagree has unequivocally stated that
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`Coreology’s use of two of the three marks at issue was in fact “unauthorized.” This is strong, if
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`not conclusive, evidence that no such a license existed. Novell, 25 F. Supp.2d at 1224-25
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`(rejecting implied license based in part on plaintiff’s letter demanding that the defendant cease
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`using the plaintiff’s marks).
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`Opposer’s Response to Motion for Leave
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`Page 11 of 14
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`D.
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`In the Alternative, the Board Should Extend the Discovery Period If Lagree
`Is Granted Leave to Assert Licensee Estoppel
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`In the Alternative, if the Board grants Lagree leave to assert licensee estoppel as a new
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`affirmative defense, Coreology would respectfully request an extension of the discovery period
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`to allow for at least 60 additional days of discovery on matters related to this new defense.
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`The consolidated opposition proceedings are currently suspended pending resolution of
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`the present Motion and another of Lagree’s motions. (34 TTABVUE.) However, under the
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`presently existing schedule, discovery is set to close on November 16, 2018. (26 TTABVUE at
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`9.) Thus, even if the suspension were lifted quickly, the current schedule would not allow
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`sufficient time for taking any additional discovery. Additional discovery would be particularly
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`important because, as discussed above, Lagree has not previously asserted that Coreology was a
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`licensee under any of the three marks at issue. Such additional discovery would also be
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`important to resolve the timing of any alleged license under the alleged marks at issues. While
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`Lagree has vaguely alleged that Coreology was a “licensee” at the time that the opposition was
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`filed, we know that this is not true in light of Lagree’s previous unequivocal assertion that
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`Coreology’s use of these marks was “unauthorized.” The timing of any alleged license is
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`important because it would dramatically affect the range of available defenses and permissible
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`supporting evidence. Freeman, 64 USPQ2d at 1703.
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`IV. CONCLUSION
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`For all these reasons, Opposer Coreology respectfully requests that the Board deny
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`Lagree’s Motion for Leave. In the alternative, Coreology respectfully requests an extension of
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`the discovery period to take additional discovery on Lagree’s new affirmative defense.
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`Opposer’s Response to Motion for Leave
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`Page 12 of 14
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` Respectfully Submitted,
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`/s/ Henry M. Pogorzelski
`Henry M. Pogorzelski
`Texas Bar No. 24007852
`CONLEY ROSE, P.C.
`P.O. Box 3267
`Houston, TX 77253-3267
`Telephone (713) 238-8000
`Facsimile (713) 238-8008
`E-mail: hpogorzelski@conleyrose.com
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`tmhou@conleyrose.com
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`Counsel for Opposer Coreology, Inc.
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`Opposer’s Response to Motion for Leave
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`Page 13 of 14
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`CERTIFICATE OF SERVICE UNDER TBMP 113
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`I HEREBY CERTIFY that on Wednesday, October 10, 2018, a true and correct copy of
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`the foregoing instrument, Opposers Response in Opposition to Applicant’s Motion for Leave, in
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`Consolidated Opposition Nos. 91236668 (parent), 91236942 and 91238139 was sent via
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`electronic mail, to counsel for Applicant, Lagree Technologies, Inc., as follows:
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`Jason L. Gilbert
`Michael S. Neustel
`Chad E Ziegler
`NEUSTEL LAW OFFICES, LTD
`2534 South University Drive, Suite 4
`Fargo, ND 58103
`UNITED STATES
`Email: jason@neustel.com
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`michael@neustel.com
`chad@neustel.com
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`/s/ Henry M. Pogorzelski
`Henry M. Pogorzelski
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`Opposer’s Response to Motion for Leave
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`Page 14 of 14
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`COREOLOGY INC.
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`Opposer,
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`v.
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`LAGREE TECHNOLOGIES, INC.
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`Applicant.
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`§
`§
`§
`§
`§
`§
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`§
`§
`§
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`Consolidated
`Opposition No. 91236668 (parent)
`Opposition No. 91236942
`Opposition No. 91238139
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`DECLARATION OF SARAH MARTZ
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`Pursuant to 28 U.S.C. § 1746, Sarah Martz declares as follows:
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`1.
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`I am the president of Coreology, Inc. (“Coreology”). Coreology operates an
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`exercise studio in Palos Verdes, California which provides exercise classes, including Pilates and
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`cardio workouts.
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`2.
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`In May of 2010, I contacted a company called SPX Fitness, Inc. by email to
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`inquire about purchasing “Megaformer” exercise machines for an exercise studio that I was then
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`contemplating near my home. A true and correct copy of the response email from SPX Fitness
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`dated June 1, 2010 is attached hereto as Exhibit A1. The attachments to that email are attached
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`hereto as Exhibits A2, A3, and A4.
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`3.
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`Only one of the documents that were provided to me by SPX Fitness referred to
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`any trademarks. The documents titled “LIMITED PARTNERSHIP LICENSE AGREEMENT”
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`(Ex. A2) and the document titled “Megaformer Sales Agreement 02/02/2010” (Ex. A3) do not
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`refer to any trademarks. The untitled document that appears to be a list of questions and answers
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`(the “FAQs”) refers generally to potential trademarks in the following four bullet points:
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`1
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`

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`• Pilates Plus is not a trademark. We strongly recommend against using Pilates Plus as
`a business name.
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`• Systeme Dynamique is no longer in use and cannot be used as part of your legal
`business name
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`• SPX Fitness and the Proformer/Megaformers are the trademark that should be
`referred to.
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`• SPX, SPX Fitness, the Proformer and the Megaformer cannot be used as part of your
`legal business name (Franchise Law).
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`(Ex. A4 at 2.)
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`
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`4.
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`The other items discussed in the FAQs were not related to trademarks. I later
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`learned that the “branded materials” that were mentioned on page 1 referred to stock pictures and
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`a logo like the one at the top of the page. The “Use of ‘The Protocol’ program” referred to the
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`workout itself. The “Use of the Press” referred to third party magazine articles and some
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`television clips that studios could re-print and/or display to make the workout seem more
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`popular. Lastly, the “Use of Sebastien.tv” referred to a website with streaming video that Lagree
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`ran for a short time. None of these involved the alleged marks SCRAMBLED EGGS,
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`WHEELBARROW, or SPIDER LUNGE.
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`5.
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`On or about June 10, 2010, I executed an agreement with a company called “SPX
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`Fitness, Inc.” to operate an exercise studio in two particular zip codes in California (“SPX
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`Fitness Agreement”). A true and correct copy of the SPX Fitness Agreement is attached as
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`Exhibit A5. At the time, I believed that the SPX Fitness Agreement gave me an exclusive
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`territory in the zip codes 90274 and 90275.
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`6.
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`The SPX Fitness Agreement does not refer to any trademarks, and it does not
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`explicitly state that SPX Fitness was licensing me to use any trademarks. This agreement did
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`give me an “SPX License” that allowed me “to operate” in the two particular zip codes. These
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`2
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`statements, and
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`the note
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`in
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`the FAQs document
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`that “SPX Fitness and
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`the [sic]
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`Proformer/Megaformers are the trademark[s] that should be referred to,” led me to believe that I
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`was authorized to advertise that my studio used “SPX Fitness” machines and “Megaformer”
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`machines. However, I have never viewed this agreement as giving me any rights to use any
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`other trademarks, including but not limited to any of the alleged marks SCRAMBLED EGGS,
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`WHEELBARROW, or SPIDER LUNGE.
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`7.
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`I formed Coreology, Inc. as a California corporation on or around August 16,
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`2010. I did not transfer my agreement with SPX Fitness to Coreology, Inc.
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`8.
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`From June 10, 2010 until present, neither SPX Fitness nor Lagree ever asked me
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`or anyone else at my company to enter into any other agreement, including any type of explicit
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`or implied trademark license agreement. For example, during this period, neither SPX Fitness
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`nor Lagree ever asked us to use any particular terminology for exercises, including but not
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`limited to any of the three alleged marks at issue. SPX Fitness and Lagree also never attempted
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`to control or supervise my or Coreology’s use of any exercise terminology, including but not
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`limited to any use of the alleged marks now at issue. SPX Fitness and Lagree did not ever
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`provide Coreology or me with any suggested advertising materials that were based on any of the
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`alleged marks at issue. Throughout this period, SPX Fitness and Lagree never did anything or
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`said anything to suggest that any particular exercise terms might be considered alleged
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`trademarks or service marks. Throughout this period, SPX Fitness and Lagree never did
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`anything or said anything to suggest that either or I or Coreology should agree to use any of these
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`terms.
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`9.
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`In summary, as of September 2017, I do not believe that Coreology had ever
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`licensed any of the three alleged marks now at issue.
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`3
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`10.
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`On January 10, 2017, Lagree wrote to me and Coreology to complain about some
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`allegedly infringing exercise machines. A true and correct copy of this letter is attached as
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`Exhibit A6.
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`11.
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`On April 25, 2017 Lagree wrote again, this time to complain about Coreology’s
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`exercise manual. A true and correct copy of this letter is attached as Exhibit A7.
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`I declare under penalty of perjury that the foregoing is true and correct. Executed in
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`California on be
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`, 2018.
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`h Martz
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`EXHIBIT A1
`EXHIBIT A1
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`sarah0785@gmail.com
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`From:
`Sent:
`To:
`Subject:
`Attachments:
`
`Sebastien Lagree <sebspxfitness@gmail.com>
`Tuesday, June 01, 2010 2:04 PM
`Sarah Martz
`Re: Questions..please call me
`LimitedPartnershipAgreement.doc; PartnershipINFO.doc; Megaformer Sales Agreement.doc
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`Here is the Partnership agreement; partnership FAQ; and Megaformer Sales Agreement. 
`Thanks, 
`S 
`
`On Mon, May 31, 2010 at 10:29 PM, Sarah Martz <sarah0785@gmail.com> wrote: 
`Hi Sebastien, 
` 
` I need to talk to you today please (Tuesday). If you could please call me at your earliest convenience. I would like to 
`discuss some business options with you ‐ in confidentiality please. I would also like to schedule a meeting at your 
`earliest convenience. I know you are a busy man ‐ but if you could fit me in that would be great :) 
` 
`Thank you Sebastien! 
` 
`Sarah Martz 
`310‐702‐7075 
` 
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` 
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`1
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`EXHIBIT A2
`EXHIBIT A2
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`LIMITED PARTNERSHIP LICENSE AGREEMENT
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`. 2010. by and between SPX Fitness.
`This Agreement (“Agreement“) is made as of this _th day of
`Inc. (“SPX“). a corporation organized under the laws of the State of California whose principal place of business and
`executive offices are located at 8500 Melrose Avenue. Suite 104. West Hollywood. California 90069. and
`an individual/company.
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`WHEREAS. Sebastien Lagee has developed an innovative and unique exercise regime called SPX Fitness.
`which draws on the principles of pilates. bodybuilding. and physiotherapy to strengthen. tighten and tone the body
`using a sequence of creative movements: and
`WHEREAS. Sebastien Lagree has an exclusive arrangement with a manufacturer to produce and sell the
`Megaformer. which is an exercise machine specifically designed by Sebastian Lagree (founder of SPX) for the SPX
`Fitness exercise regime: and
`is interested in purchasing a license from SPX Fitness. Inc. that would grant
`WHEREAS.
`specific rights (“SPX Fitness License“).
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`NOW, THEREFORE. in consideration of the mutual promises. obligations. and agreements contained
`herei