Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA997655
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`Filing date:
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`08/26/2019
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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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`91238589
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`Party
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`Correspondence
`Address
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`Plaintiff
`American Council on Exercise
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`MARK REICHENTHAL
`BRANFMAN MAYFIELD BUSTARDE REICHENTHAL LLP
`462 STEVENS AVE. #303
`SOLANA BEACH, CA 92075
`UNITED STATES
`mark@bmbr.com, rexford@bmbr.com
`858-793-8090
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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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`Opposition/Response to Motion
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`Rexford Brabson
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`rexford@bmbr.com
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`/Rexford Brabson/
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`08/26/2019
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`Attachments
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`2019.08.25-Reply to MSJ.pdf(1466150 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark Application Ser. No. 87064536
`Applicant: Health Care Fitness Integrations, LLC
`Mark:
`MEDICAL EXERCISE TRAINERS
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`
`
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`American Council on Exercise
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`Opposer,
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`vs.
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`Health Care Fitness Integrations, LLC
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`
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`Applicant.
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`)
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`) Opposition No. 91238589
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`_)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`OPPOSER AMERICAN COUNCIL ON EXERCISE’S BRIEF IN RESPONSE TO
`APPLICANT HEALTH CARE FITNESS INTEGRATIONS, LLC’S MOTION FOR
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`SUMMARY JUDGMENT
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`a. Applicant Has Not Met Its Burden of Demonstrating the Absence of Any Genuine
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`Issue of Material Fact.
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`A party moving for summary judgment has the burden of demonstrating the absence of
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`any genuine dispute of material fact, and that it is entitled to judgment as a matter of law. See,
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`e.g., Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298-99 (Fed.
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`Cir. 1991) (moving party’s conclusory statement as to intent insufficient). This burden is
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`greater than the evidentiary burden at trial. See, e.g., Gasser Chair Co. v. Infanti Chair
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`1
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`Manufacturing Corp., 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995). The burden of the
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`moving party may be met by showing "that there is an absence of evidence to support the
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`nonmoving party’s case." Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
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`Here, Opposer asserts that Applicant has not met its burden of demonstrating that there
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`are no genuine disputes of material fact, and therefore has not proven that Applicant is entitled
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`to judgment as a matter of law. Instead, Applicant filed its Motion for Summary Judgment in an
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`attempt to needlessly delay this Opposition proceeding.
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`Applicant’s arguments are mere conclusory allegations that are not based on any factual
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`evidence. For example, in Applicant’s section discussing the descriptiveness issue, Applicant
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`cites the relevant case law, but Applicant’s entire argument consists of the following paragraph:
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`Succinctly, Applicant’s mark, MEDICAL EXERCISE TRAINERS, does not forthwith – or even eventually if
`that were the law – convey an ingredient, quality, characteristic, feature, function, purpose or use about t-
`shirts. Indeed, the trademark examiner did not deem Applicant’s mark under opposition to be merely
`descriptive. Exhibit 1. And the Notice of Opposition conspicuously provides no reasons as to why Applicant’s
`mark under opposition is merely descriptive. As a result, the Board should grant Applicant’s motion for
`summary judgment because there is no genuine dispute as to a material fact regarding the non-descriptiveness
`of Applicant’s mark in relation to t-shirts. See TTABVUE Entry No. 20, Section A, Page 2.
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`Applicant’s first sentence merely concludes that Applicant’s Mark is not descriptive.
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`Applicant’s second sentence claims that the Examiner assigned to Applicant’s Application did
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`not find Applicant’s Mark to be merely descriptive, and notes that an Exhibit is attached.
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`Applicant did not properly make Exhibit 1 part of the record, and does not explain how the
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`Exhibit supports Applicant’s arguments. In fact, Opposer cannot even determine what Exhibit 1
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`consists of, because Applicant’s Exhibits are not labeled. See TTABVUE Entry No. 20, Pages
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`28-149. Moreover, the opinion of the Examiner assigned to Applicant’s Application has minimal
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`persuasive value, and is not determinative of the descriptiveness issue. Applicant’s third sentence
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`asserts that Opposer does not provide any reasons why Applicant’s Mark is descriptive.
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`Opposer’s Notice of Opposition is not required to prove all facts relevant to an Opposition
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`2
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`proceeding – those facts are to be shown and proven during Opposer’s Trial Period. Finally,
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`Applicant’s fourth sentence concludes that the Board should grant the Motion for Summary
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`Judgment.
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`Like Copelands, Applicant is asserting merely conclusory statements as to why the
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`Motion for Summary Judgment should be granted. Like Copelands, the Board must find that
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`Applicant’s conclosury statements do not meet the burden of demonstrating the absence of any
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`genuine dispute of material fact.
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`Opposer does not wish to waste the Board’s time by extensively analyzing each argument
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`asserted in Applicant’s Motion for Summary Judgment (although Opposer does wish to note that
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`Applicant’s argument regarding genericness consists of one (1) conclusory statement with no
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`Exhibit – See TTABVUE Entry No. 20, Pages 7-8 (labeled 3-4)). Each argument made by
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`Applicant is equally conclusory, and do not meet the burden demonstrating the absence of a
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`genuine issue of material fact.
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`b. There are Numerous Material Facts In Dispute.
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`A party moving for summary judgment should specify, in its brief in support of the
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`motion, the material facts that are undisputed. The nonmoving party, in turn, should specify, in
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`its brief in opposition to the motion, the material facts that are in dispute. Fed. R. Civ. P.
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`56(c)(1).
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`A factual dispute is genuine if sufficient evidence is presented such that a reasonable fact
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`finder could decide the question in favor of the nonmoving party. See Opryland USA Inc. v. The
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`Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992)
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`(nonmovant not required to present entire case but just sufficient evidence to show an evidentiary
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`conflict as to the material fact in dispute). A fact is material if it "may affect the decision,
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`3
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`whereby the finding of that fact is relevant and necessary to the proceedings." Opryland USA
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`Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir.
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`1992) (dispute is genuine if evidence could lead reasonable finder of fact to decide question in
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`favor of nonmovant); Institut National Des Appellations d’Origine v. Brown-Forman Corp., 47
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`USPQ2d 1875, 1879 (TTAB 1998) (fact is material when its resolution would affect the outcome
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`of the case).
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`Here, Opposer timely served extensive Discovery Requests on Applicant on July 24,
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`2019 (“Opposer’s Discovery Requests”). Opposer’s Discovery Requests consist of twenty two
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`(22) Requests for Admission, thirty eight (38) Interrogatories, and forty one (41) Requests for
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`Production of Documents. Applicant then served on Opposer Requests for Production of
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`Documents on July 24, 2019, and then amended and supplemental Discovery Requests on July
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`25, 2019 (“Applicant’s Discovery Requests”). Applicant’s Discovery Requests consist of fifty
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`nine (59) Requests for Admission, twenty two Interrogatories (22), and fifty four (54) Requests
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`for Production of Documents. Attached as Exhibit A is the Declaration of Mark Reichenthal
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`attesting to these facts.
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`Clearly, both Parties believe that genuine disputes of material fact exist, because both
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`Parties served extensive Discovery Requests. Both Parties’ Discovery Requests address the
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`issues in the Notice of Opposition, including genericness, descriptiveness, ornamental use of
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`Applicant’s Mark, and likelihood of confusion. Without the facts to be obtained by those
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`Discovery Requests, neither Party can prove their case.
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`In addition to the foregoing arguments, Opposer feels it is necessary to list the material
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`facts at issue for each claim:
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`Descriptiveness and Genericness. Opposer has not been given the opportunity to obtain
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`4
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`from Applicant or assert: 1) The number of other users of each word in Applicant’s
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`Mark; 2) Dictionary definitions for each word in Applicant’s Mark; 3) the relation and
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`context in which Applicant’s Mark is used; 4) how related Applicant’s goods are to the
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`fitness industry; 5) whether consumers view Applicant’s Mark as a trademark; 6) the
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`genus of goods at issue; 7) trade journals, newspaper, or other publications showing the
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`commonality of the terms used in Applicant’s Mark.
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`Ornamental. Opposer has not been given the opportunity to obtain from Applicant or
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`assert: 1) The nature of Applicant’s use of Applicant’s Mark, i.e. whether the Mark is
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`used only as printed on clothing; 2) how consumers would perceive Applicant’s Mark; 3)
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`the size, location, and dominance of Applicant’s Mark on Applicant’s goods; 4) any
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`specimens of use of Applicant’s Mark or screenshots of Applicant’s goods sold on
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`Applicant’s website; 5) Applicant’s correct/incorrect use of the “TM” or “®” symbols.
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`Likelihood of Confusion. Opposer has not been given the opportunity to obtain from
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`Applicant or assert: 1) commercial impression of Applicant’s Mark or Opposer’s Marks,
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`as well as comprehensive analysis of the similarity between each of Opposer’s Marks and
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`Applicant’s Marks; 2) goods/services sold in association with Opposer’s Marks; 3) trade
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`channels of Applicant’s Mark or Opposer’s Marks; 4) purchaser habits, i.e. sophisticated
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`or impulse purchasing; 5) any fame of Opposer’s Marks; 6) number and nature of similar
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`marks; 7) any actual confusion; 8) the variety of goods sold by Opposer under Opposer’s
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`Marks; and 9) other factors probative of use.
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`Other Issues. Finally, Opposer has served numerous Discovery Requests regarding the
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`United States District Court Southern District of Texas case entitled Jones v. American
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`Council on Exercise. Opposer believes that its pending Discovery Requests will produce
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`5
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`information relative to other claims and defenses, including but not limited to the fact that
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`the Jones v. ACE case is subject to a Court Protective Order.
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`Opposer respectfully asserts that each of the above facts is still at issue. Opposer has not
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`been given an opportunity to obtain some of the information from Applicant, or to assert facts
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`that Opposer already has in its possession that support Opposer’s claims. Like Opryland, there
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`are numerous material facts that are missing, and if obtained and/or asserted by Opposer, a
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`reasonable fact finder could decide the question in favor of the nonmoving party (Opposer).
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`c. Nonmoving Party Must Be Given Benefit of All Reasonable Doubt.
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`Finally, Opposer must be given the benefit of all reasonable doubt as to whether genuine
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`disputes of material fact exist. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
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`USPQ2d 2027, 2029-30 (Fed. Cir. 1993) (all inferences to be drawn from the undisputed facts
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`must be viewed in the light most favorable to the nonmoving party).
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`d. Conclusion.
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`Pursuant to the foregoing, Opposer respectfully requests that the Board dismiss
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`Applicant’s Motion for Summary Judgment.
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`Opposer also requests that Responses to Discovery Requests be due twenty seven days
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`after the issuance of the Board Order.
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`Respectfully submitted,
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`Mark Reichenthal, Esq.
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`Mark Reichenthal
`Branfman Mayfield Bustarde Reichenthal LLP
`Attorneys for Opposer American Council on Exercise
`462 Stevens Ave. #303
`Solana Beach, CA 92075
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`6
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that a true copy of the foregoing Opposer American Council On Exercise’s Brief
`In Response To Applicant Health Care Fitness Integrations, LLC’s Motion For Summary Judgment
`is being electronically mailed to Applicant’s attorney at the following address:
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`
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`ERIK OSTERRIEDER
`RAO DEBOER OSTERRIEDER PLLC
`2550 GRAY FALLS DRIVE SUITE 200
`HOUSTON, TX 77077
`UNITED STATES
`erik@rdoip.com, sarah@rdoip.com
`Phone: 281-372-6114
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`/s/ Rexford Brabson
`Rexford Brabson
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`August 26, 2019
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`EXHIBIT A
`EXHIBIT A
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark Application Ser. No. 87064536
`Applicant: Health Care Fitness Integrations, LLC
`Mark:
`MEDICAL EXERCISE TRAINERS
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`
`
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`American Council on Exercise
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`Opposer,
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`vs.
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`Health Care Fitness Integrations, LLC
`
`Applicant.
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`
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`)
`)
`)
`)
`) Opposition No. 91238589
`)
`)
`)
`)
`_)
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
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`DECLARATION OF MARK REICHENTHAL IN SUPPORT OF OPPOSER
`AMERICAN COUNCIL ON EXERCISE’S BRIEF IN RESPONSE TO APPLICANT
`HEALTH CARE FITNESS INTEGRATIONS, LLC’S MOTION FOR SUMMARY
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`JUDGMENT
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`I, Mark Reichenthal, as Attorney of Record for Opposer American Council on Exercise in this
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`Opposition proceeding, declare as follows:
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`1) I am over the age of eighteen (18) and am otherwise competent to make this Declaration.
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`I am Attorney of Record for Opposer American Council on Exercise (“Opposer”). I have
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`intimate knowledge of this Opposition proceeding filed against Applicant Health Care
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`Fitness Integrations, LLC’s (“Applicant”) U.S. trademark application MEDICAL
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`EXERCISE TRAINERS. If called upon and sworn as a witness, I could and would
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`competently testify as set forth below.
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`2) My Associate Rexford Brabson, on behalf of Opposer, timely served extensive Discovery
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`Requests on counsel for Applicant on July 24, 2019 (“Opposer’s Discovery Requests”).
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`Opposer’s Discovery Requests consist of twenty two (22) Requests for Admission, thirty
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`eight (38) Interrogatories, and forty one (41) Requests for Production of Documents.
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`3) Applicant served on me, as Attorney of Record for this Opposition proceeding, Requests
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`for Production of Documents on July 24, 2019, and then amended and supplemental
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`Discovery Requests on July 25, 2019 (“Applicant’s Discovery Requests”). Applicant’s
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`Discovery Requests consist of fifty nine (59) Requests for Admission, twenty two
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`Interrogatories (22), and fifty four (54) Requests for Production of Documents.
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`4) A true and correct copy of Opposer’s Discovery Requests is attached hereto as Exhibit
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`B. A true and correct copy of Applicant’s Discovery Requests is attached hereto as
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`Exhibit C.
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`5) Service of Discovery Requests by both Parties clearly indicates that there are genuine
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`disputes of material fact.
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`6) I am aware that willful false statements are punishable by fine or imprisonment or both,
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`under 18 U.S.C.
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` 1001, and that such statements may jeopardize the outcome of this
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`Opposition proceeding. I declare under penalty of perjury that the foregoing is true and
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`correct.
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`/// Signature Page Follows
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`August 23, 2019
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`Respectfully submitted,
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`Mark Reichenthal, Esq.
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`Mark Reichenthal
`Branfman Mayfield Bustarde Reichenthal LLP
`Attorneys for Opposer American Council on Exercise
`462 Stevens Ave. #303
`Solana Beach, CA 92075
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`EXHIBIT B
`EXHIBIT B
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark Application Ser. No. 87064536
`Applicant: Health Care Fitness Integrations, LLC
`Mark:
`MEDICAL EXERCISE TRAINERS
`
`
`
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`American Council on Exercise
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`Opposer,
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`vs.
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`Health Care Fitness Integrations, LLC
`
`
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`Applicant.
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`)
`)
`)
`)
`) Opposition No. 91238589
`)
`)
`)
`)
`_)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`OPPOSER AMERICAN COUNCIL ON EXERCISE’S FIRST SET OF
`INTERROGATORIES TO APPLICANT
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`Opposer American Council on Exercise (“Opposer”) hereby requests that Applicant Health
`Care Fitness Integrations, LLC (“Applicant”) answer under oath, in accordance with 37 C.F.R.
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`§§ 2.116(a) and 2.120 and Rule 33 of the Federal Rules of Civil Procedure, the Interrogatories
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`propounded herein fully and separately in writing within thirty (30) days of service hereof as
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`provided in said Rules.
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`INSTRUCTIONS
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`1) When answering these Interrogatories, Applicant must furnish all information, including
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`information contained in any document that is known or available to Applicant and all
`information possessed by Applicant's attorneys or other persons acting on Applicant’s
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`behalf or under Applicant's employment or direction.
`2) Applicant must exercise due diligence to make inquiries and secure information
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`necessary to answer these Interrogatories. If Applicant cannot answer an interrogatory
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`fully and completely after exercising due diligence, Applicant must answer that
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`interrogatory to the full extent possible, specify the portion of the interrogatory
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`Applicant claims it is unable to answer fully and completely, state the facts on which it
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`relied to support Applicant's contention that it is unable to answer such interrogatory
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`fully and completely, state what knowledge, information, and/or belief Applicant has
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`concerning the unanswered portion of each interrogatory, and state any persons or
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`entities that may have full and knowledgeable access to such information.
`3) With respect to each document which Applicant contends is privileged or otherwise
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`exempt from discovery, state the basis for the privilege or other grounds for
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`exclusion, the name and address of the author and the addressee, the date, the general
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`subject matter, the name and address of every recipient of the original or any copy of
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`the document, the name and address of each person who now has the original or any
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`copy and the identification and location of the files where the original and each copy
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`are normally kept.
`4) If Applicant objects to any interrogatory on the basis of being burdensome, Applicant
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`shall: (a) provide such information as can be ascertained without undue burden; and
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`(b) state with particularity the basis for each objection, including any descriptions,
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`processes, or methods required to obtain any fact responsive to the interrogatory, and
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`the estimated time and cost required to obtain any fact responsive to the interrogatory.
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`5) If any of these interrogatories ask Applicant to identify a document, state the name and
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`present address of each person who prepared and/or signed the document, the date the
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`document bears, the date upon which each person who signed the document did so, the
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`total number of pages comprising the document (including exhibits or addenda), the
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`name and present address of each custodian of the document or any copy thereof, and
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`the substance of the document.
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`6) If any of these interrogatories ask Applicant to identify an oral communication, or in
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`each case wherein your response to an interrogatory refers to an oral communication,
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`please state with respect to each such oral communication whether it was uttered over
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`the telephone, at a meeting, etc., the name of the person who uttered such oral
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`communication, the name of the person to whom such oral communication was uttered,
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`the name(s) and address(es) of all persons present and able to hear the communication at
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`the time the oral communication was uttered, the nature, subject matter and substance of
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`such oral communication with sufficient particularity to enable the same to be identified,
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`the date on which such oral communication was uttered, the place where the oral
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`communication was made; and whether any written record, note memorandum, or other
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`writing was made regarding the substance of any oral communication, and, if so, please
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`identify such writing.
`7) Applicant has a duty to supplement its responses until the time of the hearing or trial,
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`pursuant to Rule 26(e) of the Federal Rules of Civil Procedure.
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`DEFINITIONS
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`1) "Applicant", "you" and "your" means Applicant Health Care Fitness Integrations, LLC
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`and each of its predecessors, partners, members, directors, officers, employees, agents,
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`attorneys and all other persons acting on or purporting to act on behalf of it.
`2) "Opposer" means Opposer American Council on Exercise.
`3) The term “document” shall have the broadest and most comprehensive meaning
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`permitted by Rule 34 of the Federal Rules of Civil Procedure.
`4) The term "person" means and includes, without limitation, every natural person,
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`association, firm, partnership, corporation, board, committee, agency, commission,
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`legal entity of any form or type, and every other organization or entity, whether public
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`or private.
`5) Any word written in the singular herein shall be construed as plural or vice versa when
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`necessary to facilitate the response to any request.
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`6) “And" as well as "or" shall be construed disjunctively or conjunctively as necessary in
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`order to bring within the scope of the request all responses which otherwise might be
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`construed to be outside its scope.
`7) The terms "all" and "each" shall be construed to include the other.
`8) The words “identify”, “identity”, and “describe” with respect to a person means that a
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`full name and present business address and home address and telephone number or last
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`known address and telephone number of that person and a last known address of the
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`employer of that person should be stated.
`9) The word “fact” or “facts” means and includes without limitation, knowledge or
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`information or pieces of information based on real occurrences.
`10) Reference to "Applicant's Mark" shall mean the U.S. trademark application
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`MEDICAL EXERCISE TRAINERS (Ser. No. 87064536) T-shirts in Class 025.
`11) Reference to “Opposer’s Marks" shall mean the following trademark registrations
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`and all common law or other trademark rights associated therewith:
`a. ACE MEDICAL EXERCISE SPECIALIST (Reg. No. 5588801) for Printed
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`matter, namely, paper signs, books, manuals, curricula, newsletters,
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`informational cards and brochures in the field of health and fitness in Class
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`016;
`b. MEDICAL EXERCISE SPECIALIST as used in association with a wide
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`variety of goods/services;
`c. ACE CERTIFIED MEDICAL EXERCISE SPECIALIST as used in
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`association with a wide variety of goods/services;
`d. PERSONAL TRAINER as used in association with a wide variety of
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`goods/services;
`e. ACE CERTIFIED PERSONAL TRAINER as used in association with a wide
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`variety of goods/services;
`f. ACE PERSONAL TRAINER as used in association with a wide variety of
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`goods/services; and
`g. PEER FITNESS TRAINER as used in association with a wide variety of
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`goods/services.
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`INTERROGATORIES
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`REQUEST NO. 1: If Applicant’s response to Request for Admission No. 1, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 2: If Applicant’s response to Request for Admission No. 2, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 3: If Applicant’s response to Request for Admission No. 3, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 4: If Applicant’s response to Request for Admission No. 4, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 5: If Applicant’s response to Request for Admission No. 5, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 6: If Applicant’s response to Request for Admission No. 6, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 7: If Applicant’s response to Request for Admission No. 7, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 8: If Applicant’s response to Request for Admission No. 8, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 9: If Applicant’s response to Request for Admission No. 9, served concurrently
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`herewith, is anything other than an unqualified admission, identify and describe all facts and
`circumstances supporting Applicant’s response.
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`REQUEST NO. 10: If Applicant’s response to Request for Admission No. 10, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 11: If Applicant’s response to Request for Admission No. 11, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 12: If Applicant’s response to Request for Admission No. 12, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 13: If Applicant’s response to Request for Admission No. 13, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 14: If Applicant’s response to Request for Admission No. 14, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
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`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 15: If Applicant’s response to Request for Admission No. 15, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe
`all facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 16: If Applicant’s response to Request for Admission No. 16, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 17: If Applicant’s response to Request for Admission No. 17, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 18: If Applicant’s response to Request for Admission No. 18, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 19: If Applicant’s response to Request for Admission No. 19, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 20: If Applicant’s response to Request for Admission No. 20, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 21: If Applicant’s response to Request for Admission No. 21, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 22: If Applicant’s response to Request for Admission No. 22, served
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`concurrently herewith, is anything other than an unqualified admission, identify and describe all
`facts and circumstances supporting Applicant’s response.
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`REQUEST NO. 23: Identify all goods and services sold or distributed by Applicant bearing, or
`used in connection with Applicant’s Mark, and the dates and locations when the Applicant first
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`started selling each of such goods and services.
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`REQUEST NO. 24: Identify yearly expenditures, from the date of first use until the present, for
`the advertising or promotion of each good/service bearing Applicant’s Mark, including without
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`limitation, advertisements, promotional materials, sales materials, catalogues, brochures,
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`mailing, and price lists, whether distributed publicly or not.
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`REQUEST NO. 25: Describe, in detail, all actions taken by Applicant to establish and protect
`Applicant’s rights in Applicant’s Mark.
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`REQUEST NO. 26: Describe, in detail, for each good or service distributed by Applicant
`bearing, or used in connection with Applicant’s Mark, the annual amount of actual or projected
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`sales in dollars in the United States on a yearly basis from the date of first use until the present.
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`REQUEST NO. 27: Describe, in detail, any common law trademark use by Applicant of
`Applicant’s Mark.
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`REQUEST NO. 28: Describe, in detail, any alleged use in commerce by Applicant of
`Applicant’s Mark that resulted in goods/services being provided at no cost to any member of
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`the public.
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`REQUEST NO. 29: Identify and describe all facts and circumstances supporting Applicant’s
`first affirmative defense in Applicant’s Answer, specifically that there is no likelihood of
`confusion between Applicant’s Mark and Opposer’s Marks.
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`REQUEST NO. 30: Identify and describe all facts and circumstances supporting
`Applicant’s second affirmative defense in Applicant’s Answer, specifically that
`Applicant began use of Applicant’s Mark prior to Opposer’s use of Opposer’s Marks.
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`REQUEST NO. 31: Identify and describe all facts and circumstances supporting Applicant’s
`third affirmative defense in Applicant’s Answer, specifically that Applicant’s Mark is
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`inherently distinctive or has acquired distinctiveness.
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`REQUEST NO. 32: Identify and describe all facts and circumstances supporting Applicant’s
`fourth affirmative defense in Applicant’s Answer, specifically that Applicant has failed to use
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`ACE MEDICAL EXERCISE SPECIALIST as a trademark.
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`REQUEST NO. 33: Identify and describe all facts and circumstances supporting Applicant’s
`fifth affirmative defense in Applicant’s Answer, specifically that Opposer does not own
`trademark rights in and to Opposer’s MEDICAL EXERCISE SPECIALIST trademark.
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`REQUEST NO. 34: Identify and describe all facts and circumstances supporting Applicant’s
`sixth affirmative defense in Applicant’s Answer, specifically that Opposer’s claims may be
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`barred by estoppel.
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`REQUEST NO. 35: Identify and describe all facts and circumstances supporting Applicant’s
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`claim of estoppel, including but not limited to what type of estoppel is being asserted.
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`REQUEST NO. 36: Identify and describe all facts and circumstances supporting any claim of
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`privity between Michael Jones and Applicant.
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`REQUEST NO. 37: Identify and describe all facts and circumstances involving the
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`relationship between Michael Jones and Applicant.
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`REQUEST NO. 38: Identify and describe all facts and circumstances involving how
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`Applicant came into possession of documents from the case entitled Michael Jones v.
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`American Council on Exercise.
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`Respectfully submitted,
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`Mark Reichenthal, Esq.
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`Mark Reichenthal
`Branfman Mayfield Bustarde Reichenthal LLP
`462 Stevens Ave. #303
`Solana Beach, CA 92075
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing Opposer’s First Set of Interrogatories is being
`electronically mailed to Applicant’s attorney at the following address:
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`ERIK OSTERRIEDER
`RAO DEBOER OSTERRIEDER PLLC
`2550 GRAY FALLS DRIVE SUITE 200
`HOUSTON, TX 77077
`UNITED STATES
`erik@rdoip.com, sarah@rdoip.com
`Phone: 281-372-6114
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`
`/s/ Rexford Brabson
`Rexford Brabson
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`July 24, 2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`T