throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1009868
`10/18/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91250853
`
`Filing Party
`
`Other Party
`
`Defendant
`REALLY GOOD STUFF, LLC
`
`Plaintiff
`Creative Kids Far East Inc.
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`Amended Answer and Counterclaims SDNY 19cv2218.pdf(908841 bytes )
`Amended Order SDNY 19 cv 2218.pdf(439185 bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, REALLY
`GOOD STUFF, LLC hereby requests suspension of this proceeding pending a final determination of the civil
`action. Trademark Rule 2.117.
`REALLY GOOD STUFF, LLC has secured the express consent of all other parties to this proceeding for the
`suspension requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of
`record by Email on this date.
`Respectfully submitted,
`/Jonathan M. Purow/
`Jonathan M. Purow
`jpurow@grr.com, lbrown@grr.com
`10/18/2019
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 1 of 64
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`Case No. 1:19-cv-02218
`
`DEFENDANTS’ ANSWER,
`AFFIRMATIVE DEFENSES, AND
`FIRST AMENDED
`COUNTERCLAIMS TO
`PLAINTIFF’S FIRST AMENDED
`COMPLAINT
`
`JURY TRIAL DEMANDED
`
`x :
`
`----------------------------------------------------------------
`REALLY GOOD STUFF, LLC,
`
`Plaintiff,
`
`vs.
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`---------------------------------------------------------------- x
`
`BAP INVESTORS, L.C. and CREATIVE KIDS
`FAR EAST INC.,
`
`Defendants.
`
`: :
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`BAP INVESTORS, L.C.,
`
`Counterclaim-Plaintiff,
`
`vs.
`
`REALLY GOOD STUFF, LLC,
`
`Counterclaim-Defendant.
`
`---------------------------------------------------------------- x
`
`Defendants BAP Investors, L.C. (“BAP”) and Creative Kids Far East Inc. (“CK”)
`
`(collectively “Defendants”), by and through its counsel, hereby answers the First Amended
`
`Complaint of plaintiff Really Good Stuff, LLC (“RGS” or “Plaintiff”) as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`Defendants admit that this dispute concerns, among other things, Defendants’
`
`infringement of valuable intellectual property (“IP”) relating to science-based educational toys
`
`and products. Defendants deny any liability and all other allegations or implications of
`
`Paragraph 1 of the First Amended Complaint (“FAC”).
`
`4822-2754-4984v.4
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 2 of 64
`
`2.
`
`Denied.
`
`PARTIES
`
`3.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Admitted.
`
`Admitted.
`
`Admitted.
`
`JURISDICTION AND VENUE
`
`Defendants admit that this Court has personal jurisdiction over BAP. Defendants
`
`deny all other allegations or implications of Paragraph 7 of the FAC.
`
`8.
`
`Defendants admit that this Court has personal jurisdiction over CK. Defendants
`
`deny all other allegations or implications of Paragraph 8 of the FAC.
`
`9.
`
`Defendants admit that venue is proper in this Judicial district. Defendants deny
`
`all other allegations or implications of Paragraph 9 of the FAC.
`
`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`
`10.
`
`Denied.
`
`11.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 11.
`
`12.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 12.
`
`13.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 13.
`
`4822-2754-4984v.4
`
`2
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 3 of 64
`
`14.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 14.
`
`15.
`
`Denied.
`
`16.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 16.
`
`17.
`
`Denied.
`
`18.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 18.
`
`19.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 19.
`
`20.
`
`Defendants admit that SSI owned trademark rights in the word mark for INSTA-
`
`SNOW. Defendants deny all other allegations or implications of Paragraph 20 of the FAC.
`
`21.
`
`Defendants admit that a design mark for INSTA-SNOW is depicted in Paragraph
`
`21, but deny that SSI or RGS owns any rights to such design mark.
`
`22.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 22.
`
`23.
`
`Admitted.
`
`24.
`
`Admitted.
`
`25.
`
`Admitted.
`
`26.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 26.
`
`27.
`
`Admitted.
`
`28.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 28.
`
`4822-2754-4984v.4
`
`3
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 4 of 64
`
`29.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 29.
`
`30.
`
`Defendants admit that the Steve Spangler Science word and design marks are the
`
`subjects of several pending applications for trademark registration at the USPTO. Defendants
`
`deny all other allegations or implications of Paragraph 30 of the FAC.
`
`31.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 31.
`
`32.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 32.
`
`33.
`
`Admitted.
`
`34.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 34.
`
`35.
`
`Defendants admit that a design mark for Steve Spangler’s Super Slime is depicted
`
`in Paragraph 35, but deny that SSI or RGS owns any rights to such design mark. Defendants
`
`deny all other allegations or implications of Paragraph 35 of the FAC.
`
`36.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 36.
`
`37.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 37.
`
`38.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 38.
`
`39.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 39.
`
`4822-2754-4984v.4
`
`4
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 5 of 64
`
`40.
`
`Defendants admit that a design mark for SICK SCIENCE is depicted in Paragraph
`
`40. Defendants deny all other allegations or implications of Paragraph 40 of the FAC.
`
`41.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 41.
`
`42.
`
`Admitted.
`
`43.
`
`Admitted.
`
`44.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 44.
`
`45.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 45.
`
`46.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 46.
`
`47.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 47.
`
`48.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 48.
`
`49.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 49.
`
`50.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 50.
`
`51.
`
`Defendants admit that the GEYSER TUBE word mark is the subjects of a
`
`pending application for trademark registration at the USPTO. Defendants deny all other
`
`allegations or implications of Paragraph 51 of the FAC.
`
`4822-2754-4984v.4
`
`5
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 6 of 64
`
`52.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 52.
`
`53.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 53.
`
`54.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 54.
`
`55.
`
` Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 55.
`
`56.
`
`Denied.
`
`57.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 57.
`
`58.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 58.
`
`59.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 59.
`
`60.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 60.
`
`61.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 61.
`
`62.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 62.
`
`63.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 63.
`
`4822-2754-4984v.4
`
`6
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 7 of 64
`
`64.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 64.
`
`65.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 65.
`
`66.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 66.
`
`67.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 67.
`
`68.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 68.
`
`69.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 69.
`
`70.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 70.
`
`71.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 71.
`
`72.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 72.
`
`73.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 73.
`
`74.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 74.
`
`75.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 75.
`
`4822-2754-4984v.4
`
`7
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 8 of 64
`
`76.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 76.
`
`77.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 77.
`
`78.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 78.
`
`79.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 79.
`
`80.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 80.
`
`81.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 81.
`
`82.
`
`Admitted.
`
`83.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 83
`
`84.
`
`Admitted.
`
`85.
`
`Defendants admit that an asset acquired in the Be Amazing Transaction was a
`
`license agreement through which BAP was given the exclusive license to use the SSI IP and sell
`
`the SSI Products. Defendants deny all other allegations or implications of Paragraph 85 of the
`
`FAC.
`
`86.
`
`Defendants admit that the License Agreement has since been amended.
`
`Defendants deny all other allegations or implications of Paragraph 86 of the FAC.
`
`87.
`
`Denied.
`
`88.
`
`Denied
`
`4822-2754-4984v.4
`
`8
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 9 of 64
`
`89.
`
`Defendants admit that BAP asked for SSI’s consent to assign the License
`
`Agreement to Defendant CK. Defendants deny all other allegations or implications of Paragraph
`
`89 of the FAC.
`
`90.
`
`Admitted.
`
`91.
`
`Denied.
`
`92.
`
`Denied.
`
`93.
`
`Denied.
`
`94.
`
` Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 94.
`
`95.
`
`Defendants admit that CK purchased a controlling ownership interest in BAP.
`
`Defendants deny all other allegations or implications of Paragraph 95 of the FAC.
`
`96.
`
`Denied.
`
`97.
`
`Denied.
`
`98.
`
`Denied.
`
`99.
`
`Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 99.
`
`100. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 100.
`
`101. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 101.
`
`102. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 102.
`
`103. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 103.
`
`4822-2754-4984v.4
`
`9
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 10 of 64
`
`104. Denied.
`
`105.
`
` Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 105.
`
`106. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 106.
`
`107. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 107.
`
`108. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 108.
`
`109. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 109.
`
`110. Admitted.
`
`111. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 111.
`
`112. Defendants admit that BAP ultimately consented to the assignment in writing via
`
`the Consent Letter. Defendants deny all other allegations or implications of Paragraph 112 of the
`
`FAC.
`
`113. Admitted.
`
`114. Denied.
`
`115. Denied.
`
`116. Denied.
`
`117. Denied.
`
`118.
`
` Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 81.
`
`4822-2754-4984v.4
`
`10
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 11 of 64
`
`119. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 119.
`
`120. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 120.
`
`121. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 121.
`
`122. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 122.
`
`123. Denied.
`
`124. Denied.
`
`125. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 125.
`
`126. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 126.
`
`127. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 127.
`
`128. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 128.
`
`129. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 129.
`
`130. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 130.
`
`131. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 131.
`
`4822-2754-4984v.4
`
`11
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 12 of 64
`
`132. Denied.
`
`133. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 133.
`
`134. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 134.
`
`135. Denied.
`
`136. Denied.
`
`137. Denied.
`
`138. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 138.
`
`139. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 139.
`
`140. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 140.
`
`141. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 141.
`
`142. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 142.
`
`143. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 143.
`
`144. Denied.
`
`145. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 145.
`
`146. Denied.
`
`4822-2754-4984v.4
`
`12
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 13 of 64
`
`147. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 147.
`
`148. Denied.
`
`149. Denied.
`
`150. Denied.
`
`151. Denied.
`
`152. Denied.
`
`153. Denied.
`
`154. Denied.
`
`155. Denied.
`
`156. Denied.
`
`157. Denied.
`
`158. Defendants admit that under the License Agreement, RGS is entitled first and
`
`prior right to purchase from BAP all the remaining copies of SSI Products that BAP has in its
`
`inventory at expiration of the License Agreement. Defendants deny all other allegations or
`
`implications of Paragraph 158 of the FAC.
`
`159. Denied.
`
`160. Denied.
`
`161. Denied.
`
`162. Denied.
`
`163. Denied.
`
`164. Denied.
`
`165. Nothing in the language of the License Agreement suggests a conferral of
`
`discretionary authority to BAP, and on that basis, Defendants deny Paragraph 165.
`
`4822-2754-4984v.4
`
`13
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 14 of 64
`
`166. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 166.
`
`167. Denied.
`
`168. Denied.
`
`169. Denied.
`
`170. Denied.
`
`171.
`
`Paragraph 171 does not identify the specific letter to which it is referring, and on
`
`this basis, Defendants lack knowledge or information sufficient to form a belief as to the truth of
`
`the statements in Paragraph 171.
`
`172.
`
`Paragraph 172 appears to be referring to a letter, but does not identify the specific
`
`letter to which it is referring. On this basis, Defendants lack knowledge or information sufficient
`
`to form a belief as to the truth of the statements in Paragraph 172.
`
`173. Denied.
`
`174. Denied.
`
`175. Denied.
`
`176. Defendants admit that pursuant to the License Agreement, BAP is authorized to
`
`sell and has sold the remaining copies of certain products remaining in its inventory after
`
`expiration of the License Agreement. Defendants deny all other allegations or implications of
`
`Paragraph 176 of the FAC.
`
`177. Denied.
`
`178. Denied.
`
`179. Nothing in the language of the License Agreement suggests a conferral of
`
`discretionary authority to BAP, and on that basis, Defendants deny Paragraph 179.
`
`180. Denied.
`
`4822-2754-4984v.4
`
`14
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 15 of 64
`
`181. Denied.
`
`182. Denied.
`
`183. Denied.
`
`184. Denied.
`
`185. Denied.
`
`186. Denied.
`
`187. Admitted.
`
`188. Denied.
`
`189. Denied.
`
`190. Denied.
`
`191. Denied.
`
`192. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 192.
`
`193. Denied.
`
`194. Denied.
`
`195. Denied.
`
`196. Admitted.
`
`197. Denied.
`
`198. Denied.
`
`199. Denied.
`
`200. Denied.
`
`201. Denied.
`
`202. Admitted.
`
`203. Denied.
`
`4822-2754-4984v.4
`
`15
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 16 of 64
`
`204. Denied.
`
`205. Denied.
`
`206. Denied.
`
`207. Defendants admit that BAP is using in interstate commerce INSTANT
`
`AMAZING SNOW word and design marks in connection with a product that competes directly
`
`with RGS’s INSTA-SNOW products. Defendants deny all other allegations or implications of
`
`Paragraph 207 of the FAC.
`
`208. Denied.
`
`209. Denied.
`
`210. Defendants admit that the products shown in Paragraph 210 look so much alike.
`
`Defendants deny all other allegations or implications of Paragraph 210 of the FAC.
`
`211. Denied.
`
`212. Denied.
`
`213.
`
` Defendants admit that BAP’s SUPER SLIME word and design marks and RGS’s
`
`SUPER SLIME and STEVE SPANGLER SUPER SLIME packaging are confusingly similar.
`
`Defendants deny all other allegations or implications of Paragraph 213 of the FAC.
`
`214. Denied.
`
`215. Defendants admit that BAP’s SUPER SLIME word and design marks and that the
`
`packaging for STEVE SPANGLER’S SUPER SLIME packaging are depicted in Paragraph 215.
`
`Defendants deny all other allegations or implications of Paragraph 215 of the FAC.
`
`216. Defendants admit that BAP is advertising and selling its SUPER SLIME products
`
`as stand-alone items, and also as part of kits sold with other non-SSI products. Defendants deny
`
`all other allegations or implications of Paragraph 216 of the FAC.
`
`217. Denied
`
`4822-2754-4984v.4
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`16
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 17 of 64
`
`218. Defendants admit that BAP accuses RGS of infringing BAP’s INSTANT
`
`AMAZING SNOW and SUPER SLIME marks. Defendants deny all other allegations or
`
`implications of Paragraph 218 of the FAC.
`
`219. Admitted.
`
`220. Admitted.
`
`221. Denied.
`
`222. Denied.
`
`223.
`
`Paragraph 223 omits language from the quoted passage in the Consent
`
`Agreement, and on at least this basis, Defendants deny all allegations or implications of
`
`Paragraph 223 of the FAC.
`
`224. Denied.
`
`225. Denied.
`
`226.
`
`Paragraph 226 does not identify any products, and on at least this basis,
`
`Defendants deny all other allegations or implications of Paragraph 226 of the FAC.
`
`227. Denied.
`
`228. Denied.
`
`229. Denied.
`
`230. Denied.
`
`FIRST CAUSE OF ACTION
`FEDERAL TRADEMARK INFRINGEMENT BY BAP & CK
`
`231.
`
` Paragraph 231 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 231 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`232. Denied.
`
`233. Denied.
`
`4822-2754-4984v.4
`
`17
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 18 of 64
`
`234. Denied.
`
`235. Denied.
`
`SECOND CAUSE OF ACTION
`FEDERAL UNFAIR COMPETITION BY BAP & CK
`
`236.
`
` Paragraph 236 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 236 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`237. Denied.
`
`238. Denied.
`
`239. Denied.
`
`240. Denied.
`
`THIRD CAUSE OF ACTION
`COMMON LAW TRADEMARK INFRINGEMENT
`& UNFAIR COMPETITION BY BAP & CK
`
`241.
`
` Paragraph 241 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 241 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`242. Denied.
`
`243. Denied.
`
`244. Denied.
`
`245. Denied.
`
`FOURTH AND FIFTH CAUSES OF ACTION
`CONTRIBUTORY & VICARIOUS TRADEMARK INFRINGEMENT BY CK
`
`246.
`
` Paragraph 246 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 246 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`4822-2754-4984v.4
`
`18
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 19 of 64
`
`247. Denied.
`
`248. Denied.
`
`249. Denied.
`
`250. Denied.
`
`251. Denied.
`
`252. Denied.
`
`253. Denied.
`
`254. Denied.
`
`SIXTH CAUSE OF ACTION
`PATENT INFRINGEMENT OF U.S. PATENT NO. 8,550,379 BY BAP AND CK
`
`255.
`
` Paragraph 255 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 255 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`256. Denied.
`
`257. Denied.
`
`258. Denied.
`
`259. Denied.
`
`260. Denied.
`
`261. Denied.
`
`262. Denied.
`
`263. Denied.
`
`264. Denied.
`
`265. Denied.
`
`4822-2754-4984v.4
`
`19
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 20 of 64
`
`SEVENTH CAUSE OF ACTION
`INDUCED PATENT INFRINGEMENT OF U.S. PATENT NO. 8,550,379 BY CK
`
`266.
`
` Paragraph 266 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 266 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`267. Denied.
`
`268. Denied.
`
`269. Denied.
`
`270. Denied.
`
`271. Denied.
`
`272. Denied.
`
`273. Denied.
`
`274. Denied.
`
`275. Denied.
`
`EIGHTH CAUSE OF ACTION
`BREACH OF CONTRACT BY BAP
`
`276.
`
` Paragraph 276 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 276 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`277. Admitted.
`
`278. Admitted.
`
`279. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 279.
`
`280. Admitted.
`
`281. Denied.
`
`4822-2754-4984v.4
`
`20
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 21 of 64
`
`282. Denied.
`
`283. Denied.
`
`284. Denied.
`
`285. Denied.
`
`286. Denied.
`
`287. Denied.
`
`NINTH CAUSE OF ACTION
`BREACH OF IMPLIED COVENANT OF GOOD FAITH AND FAIR DEALING BY BAP
`
`288.
`
` Paragraph 288 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 288 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`289. Admitted.
`
`290. Admitted.
`
`291. Defendants lack knowledge or information sufficient to form a belief as to the
`
`truth of the statements in Paragraph 291.
`
`292. Admitted.
`
`293. Admitted.
`
`294. Denied.
`
`295. Denied.
`
`296. Denied.
`
`297. Denied.
`
`4822-2754-4984v.4
`
`21
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 22 of 64
`
`TENTH CAUSE OF ACTION
`TORTIOUS INTERFERENCE WITH CONTRACT BY BAP AND CK
`
`298.
`
` Paragraph 298 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 298 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`299. Admitted.
`
`300. Admitted.
`
`301. Admitted.
`
`302. Denied.
`
`303. Denied.
`
`304. Denied.
`
`305. Denied.
`
`306. Denied.
`
`307. Denied.
`
`308. Denied.
`
`ELEVENTH CAUSE OF ACTION
`TORTIOUS INTERFERENCE WITH BUSINESS RELATIONSHIP BY BAP AND CK
`
`309.
`
` Paragraph 309 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 309 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`310. Denied.
`
`311. Denied.
`
`312. Denied.
`
`313. Denied.
`
`4822-2754-4984v.4
`
`22
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 23 of 64
`
`TWELFTH CAUSE OF ACTION
`UNFAIR AND DECEPTIVE TRADE PRACTICES BY BAP AND CK
`
`314.
`
` Paragraph 314 contains no factual allegations to which a response is required. To
`
`the extent Paragraph 314 incorporates any other factual allegations of the FAC, Defendants
`
`incorporate their response to same.
`
`315. Denied.
`
`316. Denied.
`
`317. Denied.
`
`* * *
`
`Defendants deny every allegation not expressly admitted herein. Defendants further deny
`
`that Plaintiff is entitled to any of the relief requested, or to any relief whatsoever.
`
`PRAYER FOR RELIEF
`
`Defendants deny that Plaintiff is entitled to any and all of the relief requested by Plaintiff.
`
`To the extent that any statement in the prayer for relief is deemed factual, it is denied.
`
`FIRST AFFIRMATIVE DEFENSE - FAILURE TO STATE A CLAIM
`
`318.
`
`Each of the Plaintiff’s Causes of Action fails to allege facts sufficient to constitute
`
`a claim against Defendants on which relief can be granted.
`
`SECOND AFFIRMATIVE DEFENSE - NO LIKELIHOOD OF CONFUSION
`
`319.
`
`Plaintiff’s First, Second, Third, Fourth, and Fifth Causes of Action fail because
`
`there is no likelihood of confusion created by Defendants’ alleged acts of infringement.
`
`THIRD AFFIRMATIVE DEFENSE - INVALIDITY AND UNENFOECEABILITY OF
`TRADEMARK REIGISTRATION
`
`320. On information and belief, U.S. Trademark Registration Nos. 2,928,946 and
`
`4,398,849; U.S. Trademark Application Serial Nos. 88/271,200 and 88/077,500 and 88/077,512
`
`and 88,077,531 and88/071,949 and 88/079,483; and all alleged common law trademarks are
`
`4822-2754-4984v.4
`
`23
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 24 of 64
`
`invalid and/or unenforceable. Plaintiff does not possess valid trademark rights for the products
`
`at issue.
`
`FOURTH AFFIRMATIVE DEFENSE - NON-INFRINGEMENT OF THE PATENT
`
`321.
`
`Plaintiff’s Sixth and Seventh Causes of Action are barred because the Defendant
`
`has not infringed, and does not presently infringe, U.S. Patent No. 8,550,379.
`
`FIFTH AFFIRMATIVE DEFENSE - INVALIDITY OF THE PATENT
`
`322.
`
`Plaintiff’s Sixth and Seventh Causes of Action are barred because, upon
`
`information and belief, U.S. Patent No. 8,550,379 is invalid for failure to satisfy at least one or
`
`more of the conditions of patentability set forth in 35 U.S.C. §§ 102, and/or 103, and/or 112.
`
`SIXTH AFFIRMATIVE DEFENSE - FAILURE TO MITIGATE DAMAGES
`
`323.
`
`Each of the Plaintiff’s claims are barred because Plaintiff has failed to mitigate
`
`damages.
`
`SEVENTH AFFIRMATIVE DEFENSE - UNCLEAN HANDS
`
`324.
`
`Each of the Plaintiff’s claims is barred by the doctrine of unclean hands.
`
`EIGHTH AFFIRMATIVE DEFENSE - RESERVATION OF DEFENSES
`
`325. Defendants reserve the right to allege additional Affirmative Defenses as they
`
`become known, and accordingly to amend this Answer.
`
`WHEREFORE, the Defendant prays for judgment as follows:
`
`1.
`
`2.
`
`That Plaintiff takes nothing by way of its First Amended Complaint;
`
`That all claims asserted against Defendants in the First Amended Complaint be
`
`dismissed with prejudice;
`
`3.
`
`4.
`
`That Defendants be awarded their costs and attorneys’ fees incurred herein; and
`
`For such other and further relief as the Court deems just and proper.
`
`4822-2754-4984v.4
`
`24
`
`

`

`Case 1:19-cv-02218-LLS Document 58 Filed 05/31/19 Page 25 of 64
`
`AMENDED COUNTERCLAIMS
`
`Counterclaim Plaintiff BAP Investors, L.C., (“BAP” or “Counterclaim Plaintiff”), by and
`
`through its counsel, hereby for its Counterclaims against Counterclaim Defendant Really Good
`
`Stuff, LLC (“RGS” or “Counterclaim Defendant”), alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action at law and in equity to remedy acts of, inter alia, (1) unfair
`
`competition and trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); (2) unfair
`
`competition under the common law of New York; (3) deceptive trade pract

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