Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1040757
`03/09/2020
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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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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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91250202
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`Defendant
`Stockdale Investment Group, Inc.
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`CATHRYN A BERRYMAN
`WINSTEAD PC
`2728 N HARWOOD STREET, SUITE 500
`DALLAS, TX 75201
`UNITED STATES
`tmdocket@winstead.com, cberryman@winstead.com, ngraham@winstead.com
`214-745-5172
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`Answer
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`Cathryn A. Berryman, Attorney of Record, Texas Bar Member
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`cberryman@winstead.com, tvanarsdel@winstead.com, ngra-
`ham@winstead.com
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`/Cathryn A. Berryman/
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`03/09/2020
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`Applicant Answer and Affirmative Defenses - STOCKDALE - FINAL
`3-9-2020.pdf(234249 bytes )
`Opp. Ans. EXHIBIT 1 - Opposer Answer.pdf(136936 bytes )
`OPP. ANS. EXHIBIT 2 - Expert Report.pdf(883770 bytes )
`Opp. Ans. EXHIBIT 3 - MSJOrder 10-15-2019.pdf(180927 bytes )
`Opp. Ans. EXHIBIT 4 - 2019-08-23 F-S Stockdale Capital's MSJ part
`1.pdf(4521707 bytes )
`Opp. Ans. EXHIBIT 4 - 2019-08-23 F-S Stockdale Capital's MSJ part
`2.pdf(5035622 bytes )
`Opp. Ans. EXHIBIT 4 - 2019-08-23 F-S Stockdale Capital's MSJ part
`4.pdf(5617990 bytes )
`Opp. Ans. EXHIBIT 4 - 2019-08-23 F-S Stockdale Capital's MSJ part 3 Reduced
`Size (1).pdf(2752177 bytes )
`Opp. Ans. EXHIBIT 4 - 2019-08-23 F-S Stockdale Capital's MSJ part 3 Reduced
`Size (2).pdf(3662361 bytes )
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`

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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 Matter of Serial No. 88/006185
`Mark: STOCKDALE
`Application Filing Date: 06/19/2018
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`Stockdale Capital Partners, LLC
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`Opposer,
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`v.
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`Stockdale Investment Group, Inc.
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`Applicant
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`Box TTAB
`Commission for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`§
`§
`§
`§ Opposition No. 91250202
`§
`§
`§
`§
`§
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`ANSWER AND AFFIRMATIVE DEFENSES
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`Applicant Stockdale Investment Group, Inc. (“Applicant”) hereby answers the opposition
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`of Opposer Stockdale Capital Partners, LLC (“Opposer”) filed in the above-referenced opposition
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`proceeding for the mark STOCKDALE. Applicant responds to the recital and numbered
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`paragraphs in Opposer’s Notice of Opposition (the “Notice of Opposition”) and, for ease of
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`reference in this Answer, Applicant uses the same terms defined in the Notice of Opposition and
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`references the same documents submitted as Exhibits A-K to the Notice of Opposition, as
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`follows:
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`FIRST RECTIAL PARAGRAPH: Applicant admits that, upon information and belief,
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`Opposer is a limited liability company organized and existing under the laws of the State of
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`Delaware with a principal place of business at 10850 Wilshire Boulevard, Suite #1050, Los
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`Angeles, California 90024, but otherwise denies the allegations of damages and claims set forth
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`in this paragraph of the Notice of Opposition.
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`1
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`1.
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`Applicant admits that, on information and belief, Opposer offers real estate
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`investment and development services under the names and marks STOCKDALE and
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`STOCKDALE CAPITAL PARTNERS. Applicant admits that the Original Complaint states that
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`Opposer is a series of companies operating as one collective unit that also holds itself out as a real
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`estate services group, and while two of the Stockdale Capital entities were formed in 2013
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`operating in California, the balance of the Stockdale Capital entities were formed in 2015 and
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`2016. 1 Applicant denies the remaining allegations made in this paragraph.
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`2.
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`Applicant admits that on June 19, 2018, it filed the application at issue to register
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`the standard character mark STOCKDALE for “real estate services, namely acquisition,
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`development and management of commercial real estate; real estate brokerage services; real
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`estate leasing services; real estate asset and property management services” in International Clas s
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`036, 2 and that subsequently in the Response to the Office Action, it amended the application at
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`issue to include the description of services for “real estate development services in the
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`commercial real estate field” in International Class 037. 3 Applicant admits that it filed the
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`application at issue based on its use of the mark STOCKDALE in commerce for the above-
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`referenced services in International Class 036 under Section 1(a) of the Lanham Ac t, 15 U. S. C.
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`§1051(a). Applicant admits that it is incorporated and doing business as Stockdale Investment
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`Group, Inc. Applicant denies the remaining allegations made in this paragraph.
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`3.
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`Applicant admits that on or about June 19, 2018, its President Pratt signed the
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`application at issue, including the declaration required under 37 CFR § 2.20 and the statement of
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`use required under Section 1(a) of the Lanham Act, 15, U.S.C. §1051(a), that the STOCKDALE
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`mark was first used by Applicant or Applicant’s related company or licensee or predecessor in
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`interest at least as early as December 31, 1989, and first used in commerce at least as early as
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`1 See the Original Complaint, Exhibit C, pg. 7-8 (Section B, ¶17-18).
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`2 See the Challenged Application, Exhibit A, pg. 1
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`3 See the Response to Office Action, Exhibit I, pg. 1-3.
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`2
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`December 31, 1989 and was then in use in commerce. 4 Applicant denies the remaining
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`allegations made in this paragraph.
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`4.
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`5.
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`6.
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`Admitted.
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`Admitted.
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`Applicant admits that it filed the Original Complaint on or about August 24,
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`2018. Applicant admits that the Original Complaint states that Opposer is a series of companies
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`operating as one collective unit that also holds itself out as a real estate services group, and while
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`two of the Stockdale Capital entities were formed in 2013 operating in California, the balanc e of
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`the Stockdale Capital entities were formed in 2015 and 2016, 5 and , on information and belief,
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`according to Opposer’s website, Opposer is associated with properties in California, Arizona and
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`more recently, Texas. 6 Applicant admits that it moved for a Temporary Restraining Order and
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`Preliminary Injunction in Section VI of the Original Complaint. 7 Applicant admits that the
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`request for temporary restraining order and preliminary injunction was denied by the U.S. District
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`Court judge on or about January 10, 2019. 8 Applicant denies the remaining allegations made in
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`this paragraph.
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`7.
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`Applicant denies that its initial demands in the Letter and the Civil Action are
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`interfering with Opposer’s use of and right to use the Opposer’s names, causing harm to the
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`Opposer because Opposer denied any likelihood of confusion or damages arising from its us e of
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`the mark STOCKDALE in connection with real estate investment and property management
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`services in its own answer to the Original Complaint, a copy of which is attached as Exhibit 1 to
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`4 See the Challenged Application, Exhibit A, pg. 1
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`5 See the Original Complaint, Exhibit C, pg. 7-8 (Section B, ¶¶17-18).
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`6 See Attachment A to the Letter, Exhibit B.
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`7 See the Original Complaint, Exhibit C, pg. 24-26 (Section IV)
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`8 See Exhibit H, pg. 64, line 19-20
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`3
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`this Answer (“Opposer’s Answer”) and its Response to the TRO 9 Applicant admits that Opposer
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`further states, in its Brief for the Response to the TRO, that “based on the nature of [Applicant’ s ]
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`business, the sophistication of the parties involved, and the value of the real estate projects at
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`issue, it is virtually impossible for any alleged confusion to every result in harm to [Oppos er ] or
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`[Applicant].” (emphasis added). 10 Applicant is without knowledge or information sufficient to
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`form a belief as to the truth of the allegations of the application at issue interfering with
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`Opposer’s current business plans since Opposer did not produce any marketing or business plans
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`pertaining to Opposer’s use or intended use in commerce of any of its names and marks
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`containing STOCKDALE in response to Applicant’s discovery requests made in the Civil Action,
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`and such business plans are unspecified and unknown and therefore Applicant denies those
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`allegations. Applicant admits that, on information and belief, Opposer produced real estate
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`investor prospectuses disclosing property deals during discovery in the Civil Action. Applicant
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`admits that Opposer’s pleadings under oath in the Civil Action unequivocally contradict any
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`reasonable basis for any belief that Opposer will suffer damages and these pleadings were known
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`to, and made under oath, by Opposer prior to its filing of the first extension of time citing good
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`cause, and all related responses, and the Notice of Opposition. Applicant admits that Oppos er ’ s
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`own expert witness opined that “the term “STOCKDALE” does not provide a benefit or
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`contribution to [Opposer’s] business or operations” and Opposer relies on its personal c us tomer
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`business relationships to solicit and provide property investment services rather the name or mark
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`STOCKDALE. See Expert Report of Nevium Intellectual Property Consultants dated July 25,
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`2019, at page 5, a true and correct copy of which is attached as Exhibit 2 to this Answer.
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` Applicant denies the remaining allegations made in this paragraph.
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`9 See the Response to TRO, Exhibit D, pg. 4, ¶10; see Opposer’s Answer, Exhibit 1, pg. 3, 4, 5, 6-7 a n d 9,
`¶¶ 19, 20, 21, 33, 36, 39, 48, 49, 57, 60, 61 and 62
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`10 See the Response to TRO, Exhibit D, pg. 4 ¶ 10.
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`4
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`8.
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`Applicant admits that Opposer filed the Response to the TRO on or about
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`September 7, 2018, and Exhibit D is a true and correct copy of that response. Applicant admits
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`that the Response to the TRO included the Declaration of Steven Yari and Exhibit F is a tr ue and
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`correct copy of that declaration. Applicant admits that the Response to the TRO was served on
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`Applicant’s representative in the Civil Action on or about September 7, 2018; 11 however, , at the
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`time of service of the Response to the TRO, Applicant was without knowledge or information
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`sufficient to form a belief as to the truth of the allegations and statements of fact as to Opposer ’ s
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`continuous involvement in real estate investment and development since February 26, 2013,
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`employing 60 people for approximately $500 million dollar in real estate investment and
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`development deals, made by Opposer in the Response. Applicant admits that, in the Respons e to
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`the TRO, Opposer made allegations and statements of fact as to its association with properties in
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`California, Arizona, Texas, Oregon and Tennessee,12 but, at the time of service of the Res pons e
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`to the TRO, Applicant was without knowledge or information sufficient to form a belief as to the
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`truth of the allegations and statements of fact as to properties in Oregon and Tennessee and the
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`monetary value of real estate investment and development deals in any of these alleged
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`statements by Opposer. Applicant denies the remaining allegations made in this paragraph.
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`9.
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`Applicant admits that, on or about October 7, 2018, the examining attorney in the
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`application at issue issued a first office action and Exhibit F to the Opposition is a true and correct
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`copy of that first office action. Applicant admits that, in the Office Action, the examining attorney
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`searched the USPTO database of registered and pending marks and found no conflicting marks
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`that would bar registration under Trademark Act Section 2(d), 13 and, while the examining
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`attorney initially refused the registration because the applied for mark was primarily merely a
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`surname citing with supporting documentation only a Lexis database search on 6,013 surname
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`11 See The Response to TRO, Exhibit D, pg. 21
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`12 Id. at pg. 3, ¶ 8
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`13 See Office Action, Exhibit F, pg.1
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`5
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`entries, among other factors, the examining attorney offered Applicant the option to overcome
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`this initial refusal by asserting a claim of acquired distinctiveness under Trademark Act Section
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`2(f) in its response to this First Office Action. 14 Applicant denies the remaining allegations made
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`in this paragraph.
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`10.
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`Admitted.
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`11.
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`Applicant admits that, on or about January 10, 2019, the judge in the Civil Action
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`held an evidentiary hearing on Applicant’s request for a temporary restraining order and
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`preliminary injunction under Section VI of the Original Complaint and Exhibit H to the
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`Opposition is a true and correct copy of the transcript of that hearing (“TRO Hearing
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`Transcript”). Applicant admits that, as of January 10, 2019, only limited pre-hearing discovery
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`had been undertaken and thus discovery was incomplete. Applicant admits that Pratt answered
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`leading questions on cross examination by Opposer’s legal counsel on the witness stand as to ( i)
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`Pratt’s singular short phone conversation with broker Tom Short of Arch Investment Group ( not
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`Opposer) and Pratt’s vague awareness (in hindsight) of Opposer’s operating in the real estate
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`industry under the mark STOCKDALE on or around February 2017, 15 (ii) Pratt’s lack of
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`knowledge as to all of the affiliates of Opposer using names or marks containing STOCKDALE
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`prior to filing the Original Complaint, 16 (iii) his lack of awareness of Opposer’s operation and
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`marketing nationwide other than California (i.e., the West Coast) 17, and (iv) his awareness of
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`Stockdale Property Management only when such entity was raised by Opposer’s legal counsel on
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`cross examination. 18 Applicant admits that Pratt testified as to his belief that Stockdale Pr oper ty
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`Management was not a competitor of Applicant nor had it ever been confused with Applic ant, 19
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`14 Id. at pg. 2-3.
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`15 See TRO Hearing Transcript, Exhibit H, pg. 49, lines 3-6 and 17-22
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`16 Id. at pg. 44, lines 17-25, and pg. 45, lines 1-12
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`17 Id. at pg. 50, lines 19-21
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`18 Id. at pg. 50, lines 22-23
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`19 Id. at pg. 51, lines 16-25, pg. 52, lines 24-25, and pg. 53, lines 1-4, and 11-18
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`6
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`and (vi) his awareness of Applicant’s formation by Pratt’s father and his partners in 1989, naming
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`Applicant’s company Stockdale Investment Group after the old Tabis Ranch neighborhood where
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`his father and grandfather grew up in Bakersfield, California. 20 Applicant denies the remaining
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`allegations made in this paragraph.
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`12.
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`Admitted in part and denied in part. Applicant admits that, at the preliminary
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`injunction evidentiary hearing, the Civil Action judge found that there was a prospect of s uccess
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`on the merits and he could not presume that a jury would reject Applicant’s arguments, and it was
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`not absolutely clear that the companies operate in different markets and there was actual
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`confusion. 21 Applicant denies the remaining allegations made in this paragraph.
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`13.
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`Applicant admits that its Response to Office Action was filed on or about
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`February 14, 2019, 22 after the preliminary injunction hearing on January 10, 2019. Applicant
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`admits that its Response to Office Action was filed after the Original Complaint, the Opposer’s
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`Response to the TRO, Pratt’s deposition and the evidentiary hearing, but, as of February 14,
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`2019, discovery in the Civil Action was incomplete. Applicant denies that Pratt was w ell aw ar e
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`of the scope and significance of Opposer’s business, beyond what was alleged in the Original
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`Complaint, and disclosed nominally and negligibly in pre-hearing discovery. Applicant denies
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`that its Response to the Office Action was not made in the alternative because such response
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`clearly shows that alternative arguments were made to the examining attorney as to acquired
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`distinctiveness and the mark STOCKDALE being not primarily merely a surname with
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`supporting evidence23 in addition to the Section 2(f) declaration made by Pratt. Applicant admits
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`that the declaration in support of Section 2(f) claim of acquired distinctiveness contains
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`declarations, in accordance with applicable trademark law, rules and regulations, as to the
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`20 Id. at pg. 7, lines 13-21 and pg. 53, lines 5-7,
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`21 Id. at pg. 64, lines 19-25 and pg. 66, lines 17-24
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`22 See the Response to Office Action, Exhibit I, pg. 5 (Submit Date)
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`23 Id. at pg. 1-2 (alternative argument titled “Merely a Surname Refusal”) and pg.10-40 (supporting
`evidence)
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`7
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`warning on willful false statements, the ownership of the service mark sought to be registered by
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`Applicant, the service mark STOCKDALE having become distinctive of Applicant’s servic es by
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`reason of substantially exclusive and continuous use in commerce by Applicant for at least five
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`years preceding the date of the statement and the mark being in used in interstate commer c e and
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`has been in use at least as early as December 31, 1989, and all such statements being made of his
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`own knowledge and belief as to being true. 24 Applicant denies the remaining allegations made in
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`this paragraph.
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`14.
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`Applicant denies that the mark STOCKDALE, as used by Applicant, is primar ily
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`merely a surname and therefore not registerable as a United States trademark under Section
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`2(e)(4) of the Lanham Act. 25 Applicant is without knowledge or information sufficient to f or m a
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`belief as to the truth of the statements or evidence from www.surnamedb.com or 2010 U.S.
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`Census data submitted by Opposer, and therefore denies those allegations. Applicant is w ithout
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`knowledge or information sufficient to form a belief as to the truth of Opposer’s statements as to
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`James Bond Stockdale, the Stockdale Country Club and Sir Edmond Stockdale, and therefore
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`denies this allegation. Applicant admits that, on information and belief based on due diligence
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`recently conducted in preparing this response to Opposer’s Notice of Opposition, the USPTO
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`official records show that there were applications for the mark STOCKDALE MEDICAL and
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`THE STOCKDALE CENTER of record in which the respective examining attorney found
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`STOCKDALE to be primarily merely a surname; however, neither of these marks were cited in
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`the Office Action by the examining attorney as a Section 2(d) basis of priority and likelihood of
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`confusion for rejecting the application at issue, 26 and Applicant is without knowledge or
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`information sufficient to form a belief as to the prosecution of those applications and w hy thos e
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`24 Id. at pg. 41
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`25 Id. at pg. 2
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`26 See Office Action, pg. 1 finding that “the trademark examining attorney has searched the Office’s
`database of registered and pending marks and has found no conflicting marks that would bar
`registration under Trademark Action Section 2(d).”
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`8
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`respective applicants did not make arguments in response to such findings by the examining
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`attorneys. Applicant states that no response is required to the remaining allegations made in this
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`paragraph as it states only legal conclusions and arguments of Opposer.
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`15.
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`Applicant admits that, while the examining attorney initially refused the
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`registration because the applied for mark was primarily merely a surname citing with suppor ting
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`documentation only a Lexis database search on 6,013 surname entries, among other f actor s, the
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`examining attorney offered Applicant the option to overcome this initial refusal by asserting a
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`claim of acquired distinctiveness under Trademark Act Section 2(f) in its response to this First
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`Office Action. 27 Applicant denies the remaining allegations made in this paragraph.
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`16.
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`Applicant denies that the mark STOCKDALE, as used by Applicant, is primar ily
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`merely a surname and therefore not registerable as a United States trademark under Section
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`2(e)(4) of the Lanham Act. 28. Applicant denies that its Response to the Office Action was not
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`made in the alternative because alternative arguments were made to the examining attorney as to
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`acquired distinctiveness and the mark STOCKDALE being not primarily merely a surname with
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`supporting evidence29 in addition to the Section 2(f) declaration made by Pratt. Applicant states
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`that no response is required to the remaining allegations made in this paragraph as it states only
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`legal conclusions and arguments of Opposer.
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`17.
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`Admitted in part and denied in part. Applicant admits that, at the preliminary
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`injunction evidentiary hearing, the Civil Action judge found that there was a prospect of s uccess
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`on the merits and he could not presume that a jury would reject Applicant’s arguments, and it was
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`not absolutely clear that the companies operate in different markets and there was actual
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`confusion. 30 Applicant denies the remaining allegations made in this paragraph.
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`27 Id. at pg. 1-3
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`28 See the Response to Office Action, Exhibit I, pg. 2-3
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`29 Id. at 1-2 (alternative argument titled “Merely a Surname Refusal”) and pg.10-40 (supporting evidence)
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`30 See TRO Hearing Transcript, Exhibit H, at pg. 64, lines 19-25 and pg. 66, lines 17-24
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`9
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`18.
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`Applicant states that no response is required to the allegations made in this
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`paragraph as it states only legal conclusions and arguments of Opposer.
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`19.
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`Applicant denies that the mark STOCKDALE, as used by Applicant, is primar ily
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`merely a surname and therefore not registerable as a United States trademark under Section
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`2(e)(4) of the Lanham Act 31 and that such mark is not a source identifier for Applicant’s services.
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`Applicant admits that the mark STOCKDALE is registerable on the Principal Register upon proof
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`of acquired distinctiveness. 32 Applicant states that no response is required to the remaining
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`allegations made in this paragraph as it states only legal conclusions and arguments of Opposer.
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`20.
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`Admitted in part and denied in part. Applicant admits that, at the preliminary
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`injunction evidentiary hearing, on or about January 12, 2019, the Civil Action judge found that
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`there was a prospect of success on the merits and he could not presume that a jur y w ould r ejec t
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`Applicant’s arguments, and it was not absolutely clear that the companies operate in different
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`markets and there was actual confusion 33. Applicant denies the remaining allegations in this
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`paragraph.
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`21.
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`Denied in part and admitted in part. Applicant admits that its Response to Of f ic e
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`Action was filed after the Original Complaint, the Opposer’s Response to the TRO, Pratt’s
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`deposition and the preliminary injunction evidentiary hearing, but, as of February 14, 2019,
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`discovery in the Civil Action was incomplete. Applicant denies that, as of February 14, 2019,
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`Pratt and Applicant’s Attorney of Record was well aware of the scope and significance of
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`Opposer’s business beyond what was alleged in the Original Complaint and learned in limited
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`pre-hearing discovery. Applicant admits that, as of February 14, 2019, Pratt believed that the
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`mark STOCKDALE had been substantially exclusive used for the prior five years by Applicant in
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`part because Applicant as a senior user of the mark STOCKDALE is entitled to claim exclusive
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`31 See the Response to Office Action, Exhibit I, pg. 2-3
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`32 Id.
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`33 See TRO Hearing Transcript, Exhibit H, at pg. 64, lines 19-25 and pg. 66, lines 17-24
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`10
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`rights and seek a Federal registration even though there may exist and it knows of a junior user of
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`the mark. 34 Applicant admits that the Civil Action judge affirmed Pratt’s belief in its ruling to
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`deny Opposer’s Memorandum and Order dated October 15, 2019, a true and correct copy of
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`which is attached to this Answer as Exhibit 3 (the “MSJ Order”) because the judge determined
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`that there were genuine issues of fact as to trademark infringement and the mark ST OCKDALE,
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`as used by Applicant, being primarily merely a surname and not protectable as a trademark or
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`otherwise protectable as a trademark as a suggestive mark or upon proof of acquired
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`distinctiveness, best determined by a jury. 35 Applicant admits that, as clearly shown in the Civil
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`Action and other pleadings attached as Exhibits A-K to the Notice of Opposition and affirmed by
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`the Civil Action judge’s merit and fact rulings in his MSJ Order, Applicant (and any of its
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`declarants and trademark counsel of record) had a reasonable good faith belief that: ( i) the mar k
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`STOCKDALE could be registerable as a merely descriptive mark based upon acquired secondary
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`meaning; and (ii) Applicant was a senior trademark user trying to enforce its trademark rights
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`against a junior user, and awareness of Opposer and its alleged defenses prior to Applicant’s
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`filing the application at issue or any Section 2(f) declaration did not negate such good faith belief .
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`Applicant admits that Opposer denied any likelihood of confusion or damages in Opposer’s
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`Answer to the Original Complaint in part because Opposer believed (and argued before the Civil
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`Action judge at the preliminary injunction evidentiary hearing), that it was not using the mark
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`STOCKDALE in commerce and its real estate services were in different sector and market of the
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`34 See the Response to Office Action at pg. 1-3 and 40 (the Representation); see also Citibank, N.A. v.
`Citibanc Group, Inc., 724 F.2d 1540 (11th Cir. 1988), citing 4 J. Thomas McCarthy, McCarthy on
`Trademarks and Unfair Competition § 31.21[3][d][ii] (3rd ed. 1996) ("If an applicant has a good fa it h
`belief that it is the senior user, then the oath cannot be fraudulent. Any alleged failure to dis clo se u se
`by junior users is irrelevant and could not be material to the grant of a federal registration."); s ee a ls o
`Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 1513, 1538 (SD Texas 1996); aff’d as modified, 155
`F. 3d 526 (5th Cir. 1998) (finding that a senior user’s knowledge of a junior user’s use of the same
`mark is irrelevant where the senior user had a good faith belief that it was the senior user of th e ma rk,
`and the senior user’s registration of the mark without mentioning the junior user’s use of the mark does
`not constitute fraud on the USPTO.”).
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`35 See MSJ Order at pg. 8 and 12 ruling that “[a]s with secondary meaning, the question o f like lih o o d o f
`confusion is a heavily fact-bound inquiry that, in this case, is best reserved for a jury.”
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`real estate industry from that of Applicant 36 and that the Civil Action judge found, at the
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`preliminary injunction evidentiary hearing, that there was a prospect of success on the merits and
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`he could not presume that a jury would reject Applicant’s arguments, and it was not absolutely
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`clear that the companies operate in different markets and there was actual confusion. 37 Applicant
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`admits that the Civil Action judge ruled in its MSJ Order to deny Opposer’s motion for summar y
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`judgment based in part on these same alleged facts denoted in the Pratt deposition (Exhibit G),
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`including without limitation, the facts that Applicant had undisputedly used the mark
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`STOCKDALE for 30 years, had sizeable real estate market value, engaged in widespread
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`advertising and promotional efforts, expending approximately $75 million in real estate
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`acquisitions since 2013, and its then current value of real estate holdings being in excess of $150
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`million. 38 Applicant admits that the Civil Action judge further found in the MSJ Order that
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`Applicant had established genuine fact issues as to whether its mark STOCKDALE had acquir ed
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`secondary meaning as of October 15, 2019, and whether there is a likelihood of confusion bas ed
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`on the similarity of the marks and the fact that both parties are engaged in the real estate industry,
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`despite the sophistication and diligence of potential real estate customers.39 Applicant admits that
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`Opposer’s Names include the term STOCKDALE. Applicant admits that Applicant considers the
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`addition of CAPITAL and PARTNERS
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`to be insufficient to distinguish Applicant’s
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`STOCKDALE mark from Opposer’s Names. 40 Applicant admits that, in the Civil Action at the
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`preliminary injunction evidentiary hearing, Pratt answered leading questions on cross
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`examination by Opposer’s legal counsel on the witness stand as to his awareness of Stockdale
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`Property Management only when such entity was raised by Opposer and his belief that Stockdale
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`36 See the Response to TRO, Exhibit D, pg. 4, ¶10; see Opposer’s Answer, Exhibit 2, pg. 3, 4, 5, 6-7 an d 9,
`¶¶ 19, 20, 21, 33, 36, 39, 48, 49, 57, 60, 61 and 62
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`37 See TRO Hearing Transcript, Exhibit H, pg. 64, lines 19-25 and pg. 66, lines 17-24
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`38 See MSJ Order, Exhibit 3, pg. 7-8
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`39 Id. at pg. 12
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`40 See the Letter, Exhibit B, pg. 2
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`Property Management was not a competitor of Applicant nor had it ever been confused with
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`Applicant. 41 Applicant denies that, as of February 14, 2019, Applicant and its Attorney of Record
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`Berryman knew the scope of Opponent’s real estate business since discovery in the Civil Ac tion
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`was incomplete. Applicant admits that Applicant and its Attorney of Record Berryman knew that,
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`at the preliminary injunction evidentiary hearing on or about January 10, 2019, the Civil Action
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`judge found that there was a prospect of success on the merits and he could not pr es ume that a
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`jury would reject Applicant’s arguments, and it was not absolutely clear that the companies
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`operate in different markets and there was actual confusion. 42 Applicant admits that, as of
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`February 14, 2019, Applicant, Pratt and its Attorney of Record Berryman were without
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`knowledge or information sufficient to form a belief as to the truth of the number of deals closed,
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`the largest deal, the size of the deals, and the number of employees stated by Opposer in this
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`paragraph of the Notice of Opposition. Applicant denies that the Representation was f als e w hen
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`executed by Pratt and therefore insufficient to establish that the mark STOCKDALE had acquired
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`distinctiveness. Applicant denies the remaining allegations in this paragraph.
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`22.
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`Applicant denies that the Representation made by Pratt in the Declaration and the
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`arguments filed by Applicant’s Attorney of Record Berryman relying on the Representation wer e
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`fraudulent. Applicant denies that the application at issue should be denied in its entirety.
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`Applicant states that no response is required to the last sentence of this paragraph as it states only
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`legal conclusions and arguments based on a single cited case.
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`23.
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`Applicant denies the allegations made in this paragraph in part because the five
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`year of use in commerce does not have to be exclusive, but must be substantially exclusive, which
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`makes allowance for use by others that may be inconsequential or infringing, and such
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`inconsequential or infringing uses do not necessarily invalidate the applicant’s claims of
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`41 See TRO Hearing Transcript, Exhibit H, pg. 51, lines 21-25
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`42 See MSJ Order, Exhibit 3, pg. 7-8
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`substantially exclusive use. 43 Applicant admits that neither does Opposer’s belief that its
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`investment services are “substantially bigger” negate Applicant’s good faith belief in its
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`substantially exclusive use of the mark at issue, in part, because the Federal court has held w hen
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`comparing marks in use that the overriding concern is not only to prevent buyer conf us ion as to
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`the source of the goods and/or services, but to protect the senior user from adver se c ommer cial
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`impact due to use of a similar mark by a newcomer 44, and therefore, any doubt regarding a
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`likelihood of confusion determination is resolved in favor of the senior user. 45 Applicant further
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`admits that the Federal court has enumerated that bigger size does not matter over priority of time
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`in use. 46 , . Applicant further admits that the trademark law not only protects the consumer f rom
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`likelihood of confusion as to commercial sources and relationships, but also protects the registrant
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`and senior user from adverse commercial impact due to use of a similar mark by a
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`newcomer 47and preservation of senior rights and priority in use is exactly the reaso