Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA918400
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`Filing date:
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`08/27/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91242427
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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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`Defendant
`Apple Growth Partners, Inc.
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`TERRENCE H. LINK II
`ROETZEL & ANDRESS
`222 S. MAIN ST.
`AKRON, OH 44308
`TLink@ralaw.com
`no phone number provided
`
`Answer
`
`Terrence H. Link II
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`tlink@ralaw.com, leverett@ralaw.com
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`/thl/
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`08/27/2018
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`APPLE GROWTH PARTNERS Answer to Notice of Opposition - Opposition No.
`91242427 - 08.27.18(12950861_1).PDF(184861 bytes )
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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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`Apple, Inc.,
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`v.
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`Opposer,
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`Apple Growth Partners, Inc.,
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`Applicant.
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`
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`Opposition No.: 91242427
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`Application Serial No.: 87/354,932
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`Mark: APPLE GROWTH PARTNERS
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`APPLICANT’S ANSWER AND
`AFFIRMATIVE DEFENSES
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`_____________________________________________________________________________
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`APPLICANT’S ANSWER AND AFFIRMATIVE DEFENSES IN RESPONSE TO
`OPPOSER’S NOTICE OF OPPOSITION
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`ANSWER
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`Applicant, Apple Growth Partners, Inc. (hereinafter “Applicant”), by and through its
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`
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`undersigned counsel, hereby answers Apple, Inc.’s (hereinafter “Opposer”) Notice of Opposition
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`against Applicant’s U.S. Trademark Application Serial No. 87/354,932 for APPLE GROWTH
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`PARTNERS (the “Applied-For Mark”), and states as follows:
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`1.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 1 of the Notice of Opposition and therefore denies
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`all such allegations.
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`2.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 2 of the Notice of Opposition and therefore denies
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`all such allegations.
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`3.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 3 of the Notice of Opposition and therefore denies
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`all such allegations.
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`12950063 _2
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`4.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 4 of the Notice of Opposition and therefore denies
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`all such allegations.
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`5.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 5 of the Notice of Opposition and therefore denies
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`all such allegations.
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`6.
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`Applicant admits that Exhibit 1 to the Notice of Opposition shows a website
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`operated by Forbes magazine, which shows a list titled “The World’s Most Valuable Brands” for
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`2017 and 2018, as well as various other Forbes articles discussing valuable brands. Applicant
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`further admits that the 2018 “The World’s Most Valuable Brands” listing ranks the APPLE
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`brand at number 1 and estimates that the APPLE brand is worth $182.8 billion, while the 2017
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`“The World’s Most Valuable Brands” listing estimates that the APPLE brand is worth $170
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`billion. Applicant is without knowledge or information sufficient to form a belief as to the truth
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`of the remainder of the allegations contained in Paragraph 6 of the Notice of Opposition and
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`therefore denies all such allegations.
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`7.
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`Applicant admits that Exhibit 2 to the Notice of Opposition shows a 2018 Harris
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`Interactive EquiTrend Ranking - The Harris Poll (the “EquiTrend Ranking”), which lists and
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`ranks brands according to their applicable category. Applicant further admits that the EquiTrend
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`Ranking shows that the APPLE brand, used in connection with the “
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`” image (the
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`“APPLE (logo)”) is the highest ranking brand in the smartphone category, and that the IPAD (&
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`APPLE (logo)) brand is the highest ranking brand in the tablet computer category. Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the remainder of
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`the allegations contained in Paragraph 7 of the Notice of Opposition and therefore denies all such
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`allegations.
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`8.
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` Applicant admits that Exhibit 3 to the Notice of Opposition shows a listing
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`created by Interbrand, titled “Best Global Brands” for each year from 2010 to 2017. Applicant
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`further admits that the APPLE (logo) is listed as number 1 in the 2013-2017 Interbrand listings,
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`number 2 in the 2012 Interbrand listing, number 8 in the 2011 Interbrand listing, and number 17
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`in the 2010 Interbrand listing. Applicant is without knowledge or information sufficient to form a
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`belief as to the truth of the remainder of the allegations contained in Paragraph 8 of the Notice of
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`Opposition and therefore denies all such allegations.
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`9.
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`Applicant admits that Exhibit 4 to the Notice of Opposition shows the Millward
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`Brown Optimor BrandZ listings titled “Top 100 Most Valuable Global Brands” (the “BrandZ
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`list” or “BrandZ lists”) for the years 2008 to 2018. Applicant admits that the 2018 BrandZ list
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`shows the APPLE (logo) as the 2nd most valuable global brand, with an estimated brand value of
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`$300,595,000. Applicant admits that the 2017 BrandZ list shows the APPLE (logo) as the 2nd
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`most valuable global brand, with an estimated brand value of $534,671,000. Applicant admits
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`that the 2016 BrandZ list shows the APPLE (logo) as the 2nd most valuable global brand, with
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`an estimated brand value of $228,460,000. Applicant admits that the 2011, 2012, 2013, and 2015
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`BrandZ lists show the APPLE (logo) as the most valuable global brand. Applicant admits that the
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`BrandZ lists show the APPLE (logo) as the 2nd most valuable brand in 2014, the 3rd most
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`valuable brand in 2010, the 6th most valuable brand in 2009, and the 7th most valuable brand in
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`2008. Applicant is without knowledge or information sufficient to form a belief as to the truth of
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`the remainder of the allegations contained in Paragraph 9 of the Notice of Opposition and
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`therefore denies all such allegations.
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`10.
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`Applicant admits that Exhibit 5 to the Notice of Opposition shows articles from
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`Fortune Magazine titled “World’s Most Admired Companies” or “America’s Most Admired
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`Companies,” from 2008 to 2018 (collectively, the “Fortune Listings”). Applicant further admits
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`that Opposer is listed as number 1 in the Fortune Listings as the top ranked most admired
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`company. Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the remainder of the allegations contained in Paragraph 10 of the Notice of Opposition
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`and therefore denies all such allegations.
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`11.
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`Applicant admits that Exhibit 6 to the Notice of Opposition shows information
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`regarding a workshop in St. Louis, Missouri titled “How To: Grow Your Business.” Applicant
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`further admits that the information on Exhibit 6 tends to show that the workshop offers
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`information regarding modernizing businesses with the use of iPads. Applicant is without
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`knowledge or information sufficient to form a belief as to the truth of the remainder of the
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`allegations contained in Paragraph 11 of the Notice of Opposition and therefore denies all such
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`allegations.
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`12.
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`Applicant admits that Exhibit 7 to the Notice of Opposition shows information
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`regarding a workshop in New York, New York titled “How To: Run a Connected Business.”
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`Applicant further admits that the information on Exhibit 7 tends to show that the workshop
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`offers information regarding modernizing businesses with the use of the iPhone. Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the remainder of
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`the allegations contained in Paragraph 12 of the Notice of Opposition and therefore denies all
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`such allegations.
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`13.
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`Applicant admits that https://www.apple.com/today/ provides a listing of
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`upcoming workshops run by Opposer in separate locations, which workshops offer information
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`regarding the use of Opposer’s products such as iPads and iPhones, within specific fields such as
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`music, art and design, and coding. Applicant is without knowledge or information sufficient to
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`form a belief as to the truth of the remainder of the allegations contained in Paragraph 13 of the
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`Notice of Opposition and therefore denies all such allegations.
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`14.
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`Applicant admits that https://www.apple.com/business,
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`https://www.apple.com/business/partners, https://www.apple.com/business/resources, and
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`https://www.apple.com/business/products-platform are websites that provide additional
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`information regarding iPhone, iPad, and Mac products and programs, which the websites
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`indicate would be useful in running a business. Applicant admits that Exhibits 8-11 are true and
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`accurate printouts of each of the https://www.apple.com/business,
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`https://www.apple.com/business/partners, https://www.apple.com/business/resources, and
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`https://www.apple.com/business/products-platform websites. Applicant is without knowledge or
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`information sufficient to form a belief as to the truth of the remainder of the allegations
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`contained in Paragraph 14 of the Notice of Opposition and therefore denies all such allegations.
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`15.
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`Applicant admits that Exhibit 12 provides additional information regarding the
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`platform and application designs that facilitate a working business in conjunction with iPhones,
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`iPads, and Macs. Applicant is without knowledge or information sufficient to form a belief as to
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`the truth of the remainder of the allegations contained in Paragraph 15 of the Notice of
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`Opposition and therefore denies all such allegations.
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`16.
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`Applicant admits that Exhibit 13 provides information regarding lease options
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`and purchasing options for potential purchasers of Opposer’s products. Applicant is without
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`knowledge or information sufficient to form a belief as to the truth of the remainder of the
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`allegations contained in Paragraph 16 of the Notice of Opposition and therefore denies all such
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`allegations.
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`17.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations contained in Paragraph 17 of the Notice of Opposition and therefore
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`denies all such allegations.
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`18.
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`Applicant admits that the USPTO database shows that Opposer’s registrations
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`alleged in Paragraph 18 of the Notice of Opposition were registered and applied-for on the
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`Principal Register on the listed dates alleged in Paragraph 18. Applicant is without knowledge or
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`information sufficient to form a belief as to the truth of the remainder of the allegations
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`contained in Paragraph 18 of the Notice of Opposition and therefore denies all such allegations.
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`19.
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`Applicant admits that the USPTO database shows that Opposer’s registrations
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`alleged in Paragraph 18 of the Notice of Opposition are valid and in full force and effect.
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`Applicant further admits that the USPTO database shows that Opposer has filed Section 8 and 15
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`affidavits for Registration Nos. 2,926,853, 2,820,066, 3,928,818, 3,226,289, 2,657,931,
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`3,298,028, 3,679,056, 2,715,578, and 2,870,477. Applicant denies the remainder of the
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`allegations contained in Paragraph 19 of the Notice of Opposition.
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`20.
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`Applicant admits that it filed U.S. Trademark Application Serial No. 87/354,932
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`for the Applied-For Mark on March 1, 2017, for use in connection with the services indicated
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`below (together, the “Applied-For Services”). Applicant is without knowledge or information
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`sufficient to form a belief as to the truth of the remainder of the allegations contained in
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`Paragraph 20 of the Notice of Opposition and therefore denies all such allegations.
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` “Business assistance, advisory services, consultancy and information with
`regard to business development, business strategic planning, business
`analysis, business management, business organization, tax planning,
`information assurance, tax advisory services, business valuation, business
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`structure choice, auditing, mergers and acquisitions, business reorganizations,
`and business divestitures; Business consultation with respect to business
`assets, namely, acquisitions, divestitures, management, and appraisal,” in class
`35;
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` “Providing financial information and advice to others regarding the
`establishment and operation of businesses; Financial and fiscal consulting
`services in connection with business services, namely, the reorganization,
`restructuring, liquidation, business succession planning, retirement planning,
`wealth management, tax planning, tax preparation, business valuation,
`mergers and acquisition of companies, forensic accounting, and fraud
`analysis; Financial consultation with respect to business assets, namely,
`acquisitions, divestitures, management, financing, and appraisal; Advisory
`services, consultancy, and information in the field of estate planning,
`accounting,” in class 36; and
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` “Expert witness services for legal matters in the fields of antenuptial
`agreement appreciation analysis, asset tracing analysis, business valuation,
`contract disputes, economic damages, entity and income equalization, forensic
`accounting, generally accepted accounting principles, gift and estate tax
`consequences, income tax consequences, intellectual property valuations,
`marital dissolution, patent infringement, professional malpractice defense,
`stockholder disputes, tax fraud, and trade secret infringement,” in class 45.
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`21. Applicant admits that Opposer timely filed the Notice of Opposition.
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`22.
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`Applicant denies the allegation contained in Paragraph 22 of the Notice of
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`Opposition stating that there is no issue as to priority. Applicant is without knowledge or
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`information sufficient to form a belief as to the truth of the remainder of the allegations
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`contained in Paragraph 22 of the Notice of Opposition and therefore denies all such allegations.
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`23. Applicant admits that the words “GROWTH PARTNERS” have been disclaimed
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`in the Applied-For Mark. Applicant denies the remainder of the allegations contained in
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`Paragraph 23 of the Notice of Opposition.
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`24.
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`Applicant admits that the USPTO database shows that Reg. No. 2,926,853 makes
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`reference to “providing information in the fields of business and commerce over computer
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`networks and global communication networks; business services, namely, providing computer
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`databases regarding the purchase and sale of a wide variety of products and services of others,”
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`within its larger description of services in class 35. Applicant further admits that the USPTO
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`database shows that Reg. No. 2,820,066 makes reference to “providing information in the fields
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`of investment and finance over computer networks and global communication networks;
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`financial services, namely, installment loans, lease-purchase financing and loans, and loan
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`financing,” within its larger description of services in class 36. Applicant is without knowledge
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`or information sufficient to form a belief as to the truth of the remainder of the allegations
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`contained in Paragraph 24 of the Notice of Opposition and therefore denies all such allegations.
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`25.
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`Applicant denies all of the allegations contained in Paragraph 25 of the Notice of
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`Opposition.
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`26.
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`Applicant denies all of the allegations contained in Paragraph 26 of the Notice of
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`Opposition.
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`27.
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`Applicant denies all of the allegations contained in Paragraph 27 of the Notice of
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`Opposition.
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`28.
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`Applicant denies all of the allegations contained in Paragraph 28 of the Notice of
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`Opposition.
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`29.
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`Applicant denies all of the allegations contained in Paragraph 29 of the Notice of
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`Opposition.
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`30.
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`Applicant denies all of the allegations contained in Paragraph 30 of the Notice of
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`Opposition. Applicant further denies all of the allegations contained in subparagraphs 30(a) and
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`30(d) of the Notice of Opposition. Applicant is without knowledge or information sufficient to
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`form a belief as to the truth of the allegations contained in Subparagraphs 30(b) and 30(c) of the
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`Notice of Opposition and therefore denies all such allegations.
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`31.
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`Applicant admits that if Applicant is granted the registration of the Applied-For
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`Mark, Applicant would obtain a prima facie exclusive right to use the Applied-For Mark in
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`connection with the Applicant’s Applied-For Services. Applicant denies all of the remaining
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`allegations contained in Paragraph 31 of the Notice of Opposition.
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`WHEREFORE, Applicant hereby respectfully requests that the Trademark Trial and
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`Appeal Board enter judgment in its favor on all counts and deny all relief requested by
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`Opposer’s Notice of Opposition No. 91242427.
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`AFFIRMATIVE DEFENSES
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`FIRST AFFIRMATIVE DEFENSE
`FAILURE TO STATE A CLAIM
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`Opposer’s Notice of Opposition fails to state a claim upon which relief can be
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`SECOND AFFIRMATIVE DEFENSE
`NO LIKELIHOOD OF CONFUSION
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`There is no likelihood of confusion between Opposer’s Registered marks alleged
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`32.
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`granted.
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`33.
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`in the Notice of Opposition and Applicant’s Applied-For-Mark.
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`THIRD AFFIRMATIVE DEFENSE
`LACHES AND WAIVER
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`Opposer’s claims are barred by the doctrines of Laches and/or Waiver.
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`34.
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`FOURTH AFFIRMATIVE DEFENSE
`ESTOPPEL AND ACQUIESCENCE
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`35.
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`Opposer’s claims are barred by the doctrines of Estoppel and/or Acquiescence.
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`FIFTH AFFIRMATIVE DEFENSE
`RESERVATION OF RIGHTS
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`36.
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`Applicant reserves the right to raise such additional defenses, affirmative
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`defenses, and/or counterclaims as may be required, or as may become known, throughout
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`discovery in this matter.
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`WHEREFORE, Applicant, Apple Growth Partners, Inc., hereby respectfully requests that
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`the Trademark Trial and Appeal Board enter judgment in its favor on all counts and deny all
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`relief requested by Opposer’s Notice of Opposition, No. 91242427.
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`Respectfully submitted,
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`__/ Lindsie A. Everett /___________
`Lindsie A. Everett (Ohio Bar Reg. No. 0095848)
`Terrence H. Link, II (Ohio Bar Reg. 0071421)
`Roetzel & Andress
`222 South Main Street
`Akron, Ohio 44308
`Telephone: 330.376.2700
`Facsimile: 330.376.4577
`tlink@ralaw.com,
`leverett@ralaw.com
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`Attorneys for Applicant,
`Apple Growth Partners, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that the above-captioned Notice of Opposition was transmitted to
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`Applicant’s attorneys, via e-mail delivery or similar delivery service, on August 27, 2018, at the
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`following addresses:
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`Joseph Petersen
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`JPetersen@kilpatricktownsend.com
`smanes@kilpatricktownsend.com
`Agarcia@kilpatricktownsend.com
`tmadmin@kilpatricktownsend.com
`RWeeks@kilpatricktownsend.com
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`_/ Lindsie A. Everett /
`Attorney for Applicant
`Apple Growth Partners, Inc.
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