Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1038714
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`Filing date:
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`02/27/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91252398
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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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`Defendant
`TAP Worldwide, LLC
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`HEATHER J KLIEBENSTEIN
`MERCHANT & GOULD PC
`PO BOX 2910
`MINNEAPOLIS, MN 55402-0910
`dockmpls@merchantgould.com
`no phone number provided
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`Answer
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`Heather Kliebenstein
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`hkliebenstein@merchantgould.com, akrueger@merchantgould.com, dockm-
`pls@merchantgould.com
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`Signature
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`Date
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`/Heather Kliebenstein/
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`02/27/2020
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`Attachments
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`2020 02 27 Answer.pdf(116507 bytes )
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`
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`ESTTA Tracking number:
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`ESTTA1038714
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`Filing date:
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`02/27/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91252398
`
`Party
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`Correspondence
`Address
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`Submission
`
`Filer's Name
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`Filer's email
`
`Defendant
`TAP Worldwide, LLC
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`HEATHER J KLIEBENSTEIN
`MERCHANT & GOULD PC
`PO BOX 2910
`MINNEAPOLIS, MN 55402-0910
`dockmpls@merchantgould.com
`no phone number provided
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`Answer
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`Heather Kliebenstein
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`hkliebenstein@merchantgould.com, akrueger@merchantgould.com, dockm-
`pls@merchantgould.com
`
`Signature
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`Date
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`/Heather Kliebenstein/
`
`02/27/2020
`
`Attachments
`
`2020 02 27 Answer.pdf(116507 bytes )
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Spyder Active Sports, Inc.,
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`) Opposition No. 91252398
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`) Mark: POISON SPYDER
`Opposer,
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`) Serial No.: 87/812,400
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`v.
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`) Filing Date: February 27, 2018
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`TAP Worldwide, LLC,
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`Applicant.
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`APPLICANT TAP WORLDWIDE, LLC’S ANSWER
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`Applicant, TAP Worldwide, LLC (“Applicant”), by and through the undersigned counsel
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`hereby answers Spyder Active Sports, Inc. (“Opposer”)’s Notice of Opposition in the above-
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`captioned action, as follows:
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`1.
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`Applicant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of Paragraph 1, and therefore denies the same.
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`2.
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`Applicant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of Paragraph 2, and therefore denies the same.
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`3.
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`Applicant states that the registrations speak for themselves, but as to any
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`remaining allegations lacks knowledge or information sufficient to form a belief as to the truth of
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`the remaining allegations of Paragraph 3, and therefore denies the same.
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`4.
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`Applicant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of Paragraph 4, and therefore denies the same.
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`5.
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`Applicant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of Paragraph 5, and therefore denies the same.
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`6.
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`Applicant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of Paragraph 6, and therefore denies the same.
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`7.
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`Applicant admits it filed the Opposed Application on February 27, 2018 and the
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`application speaks for itself; Applicant denies the remaining allegations of Paragraph 7.
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`8.
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`9.
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`Applicant denies the allegation of Paragraph 8.
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`Applicant admits that its trademark POISON SPYDER contains the word
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`SPYDER but denies the remaining allegations in Paragraph 9.
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`10.
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`Applicant denies the allegations in Paragraph 10.
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`11.
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`Applicant denies the allegations in Paragraph 11.
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`12.
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`Applicant denies the allegations in Paragraph 12.
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`13.
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`Applicant denies the allegations in Paragraph 13.
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`14.
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`Applicant denies the allegations in Paragraph 14.
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`FIRST CAUSE OF ACTION
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`15.
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`Applicant incorporates the responses in Paragraph Nos. 1-14.
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`16.
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` Applicant denies the allegations in Paragraph 16.
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`SECOND CAUSE OF ACTION
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`17.
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`Applicant incorporates the responses in Paragraph Nos. 1-16.
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`18.
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`Applicant denies the allegations in Paragraph 18.
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`19.
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`Applicant denies the allegations in Paragraph 19.
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`THIRD CAUSE OF ACTION
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`20.
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`Applicant incorporates the responses in Paragraph Nos. 1-19.
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`21.
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`Applicant denies the allegations in Paragraph 21.
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`22.
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`Applicant denies the allegations in Paragraph 22.
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`FOURTH CAUSE OF ACTION
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`23.
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`Applicant incorporates the responses in Paragraph Nos. 1-22.
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`24.
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`Applicant denies the allegations in Paragraph 24.
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`25.
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`Applicant denies the allegations in Paragraph 25.
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`26.
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`Applicant denies the allegations in Paragraph 26.
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`AFFIRMATIVE AND AMPLIFYING DEFENSES
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`FIRST AFFIRMATIVE DEFENSE
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`Opposer’s Notice of Opposition fails to state a claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`Opposer’s Notice of Opposition is barred due to Opposer’s unclean hands.
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`THIRD AFFIRMATIVE DEFENSE
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`Opposer’s Notice of Opposition is barred due to laches, based on Applicant’s
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`longstanding, open and notorious use of the POISON SPYDER mark on clothing and related
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`items, including those recited in Application Serial No. 87/812,400.
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`FOURTH AFFIRMATIVE DEFENSE
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`Opposer’s Notice of Opposition is barred due to Opposer’s acquiescence based on
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`Applicant’s longstanding, open and notorious use of the POISON SPYDER mark on clothing
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`and related items, including those recited in Application Serial No. 87/812,400.
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`FIFTH AFFIRMATIVE DEFENSE
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`Opposer’s Notice of Opposition is barred due to the Morehouse defense, namely,
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`Applicant already owns substantially similar registered marks for substantially similar goods
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`3
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`and/or services such that Application Serial No. 87/812,400 will cause no added injury to
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`Opposer.
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`SIXTH AMPLIFYING DEFENSE
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`Opposer’s cause of action for dilution fails because Opposer’s SPYDER Trademarks lack
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`sufficient fame to establish dilution.
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`SEVENTH AMPLIFYING DEFENSE
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`Opposer’s cause of action for confusion under §2(d) of the Lanham Act fails because
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`Opposer’s SPYDER Trademarks are weak and diluted and thus no confusion will occur between
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`the parties’ marks.
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`WHEREFORE, Applicant requests that Opposers’ claims be dismissed, with prejudice,
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`and the registration of the mark POISON SPYDER as shown in U.S. Ser. No. 87/812,400 not be
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`refused.
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`Please direct all correspondence to the attention of:
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`Heather J. Kliebenstein
`Merchant & Gould P.C.
`P.O. Box 2910
`Minneapolis, MN 55402
`612-336-4616
`Fax: 612-332-9081
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`Applicant hereby appoints Danielle I. Mattessich; Lindsay M.R. Jones; Gregory C. Golla;
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`Scott W. Johnston; Andrew S. Ehard; Christopher J. Schulte; and Brent Routman as its attorneys
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`with the full power to represent the Applicant in connection with this proceeding.
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`Date: February 27, 2020
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`Respectfully submitted,
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`Tap Worldwide, LLC
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`By its Attorneys,
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`/s/ Heather Kliebenstein
`Heather Kliebenstein
`Lindsay M.R. Jones
`MERCHANT & GOULD P.C.
`P.O. Box 2910
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`Minneapolis, MN 55402
`hkliebenstein@merchantgould.com
`ljones@merchantgould.com
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing APPLICANT TAP
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`WORLDWIDE, LLC’S ANSWER was served upon the following individual by electronic mail,
`this 27th day of February, 2020:
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`Bridgette Fitzpatrick
`Authentic Brands Group
`1411 Broadway, 4th Floor
`New York, New York 10018
`trademark@abg-nyc.com
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`/s/ Abigail Krueger
` Abigail Krueger
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`6
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