Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1032770
`
`Filing date:
`
`01/31/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91252460
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Plaintiff
`Valley Boyz, LLC
`
`JESSICA A WILSON
`KERCSMAR AND FELTUS
`7150 E CAMELBACK ROAD SUITE 285
`SCOTTSDALE, AZ 85251
`UNITED STATES
`jwilson@kflawaz.com, mlg@kflawaz.com
`480-776-3438
`
`Other Motions/Papers
`
`Jessica A. Wilson
`
`jwilson@kflawaz.com, mlg@kflawaz.com
`
`/Jessica A. Wilson/
`
`01/31/2020
`
`Attachments
`
`00192976.PDF(942049 bytes )
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`VALLEY BOYZ, LLC
`
`
`
` Opposer,
`
`v.
`
`Kelly Oubre, Jr.,
`
`
`
`Applicant.
`
`
`
`Opposition No. 91252460
`Serial Nos. 88/374,358 and 88/374,356
`Mark: VALLEY BOYZ
`Filing Date: April 6, 2019
`Publication Date: July 23, 2019
`
`VALLEY BOYZ, LLC’S CORRECTED RESPONSE TO MOTION TO DISMISS
`Pursuant to 37 C.F.R. § 2.127(a), Opposer Valley Boyz, LLC (“Valley Boyz”)
`hereby files its Response to Applicant Kelly Oubre Jr.’s (“Applicant”) Motion to Dismiss
`
`for lack of standing. As set forth below, Valley Boyz pleaded facts, which have not been
`disputed by Applicant, sufficient to establish standing to oppose Applicant’s Applications
`Serial Nos. 88/374,358 and 88/374,356 (“ITU Applications”) for the mark VALLEY
`BOYZ (“Mark”). As alleged, Valley Boyz is the senior user of the Mark. Nothing in
`Applicant’s motion contests that fact. Instead, Applicant attempts to improperly argue
`the merits of the case to contest standing. Applicant’s arguments fail to establish prior
`
`use of the Mark in commerce. With Valley Boyz uncontested factual allegations properly
`considered, Applicant’s motion to dismiss should be denied, so that the matter can
`
`proceed to a decision on the merits.
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`
`I.
`
`INTRODUCTION
`
`What this case boils down to is a term that was mentioned in public with no
`
`intention for that term to be used to designate a source of goods and services. That is
`
`until Opposer Valley Boyz began offering clothing and accessories for sale in March
`
`2019 under the Mark. While certain National Basketball Association Phoenix Suns
`
`
`
`1
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`players may have coined the term, VALLEY BOYZ, Opposer Valley Boyz was the first
`
`to actually use the Mark in commerce as a source designator for goods, thus establishing
`
`senior user common law rights over the Mark. People associate purchasing t-shirts with
`
`the VALLEY BOYZ mark with Opposer Valley Boyz at https://valleyboyz.com/. At
`bottom, with Opposer Valley Boyz’s undisputed allegations properly considered here, it
`
`has established sufficient interest and shown a concrete belief it will be damaged if
`in Applicant’s Motion contests
`this.
`Applicant
`registers
`the Mark. Nothing
`Consequently, Applicant’s motion to dismiss should be denied.
`
`II.
`
`RELEVANT FACTS
`When reviewing standing, “the legitimacy of the petitioner’s activity from which
`its interest arises will be presumed in the absence of evidence to the contrary.” Lipton
`
`Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029 (C.C.P.A. 1982). And since this
`is a motion to dismiss, Valley Boyz’s facts as alleged are to be presumed true and all
`
`reasonable inferences from the Notice of Opposition shall be resolved in its favor. Fed. R.
`
`Civ. P. Rule 12(b)(6); Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013).1
`Here Opposer Valley Boyz’s uncontested allegations in the Notice of Opposition
`
`allege as follows. Since March of 2019, Valley Boyz has continuously engaged in and is
`
`presently engaged in selling clothing and related goods in connection with the Mark.
`
`(Notice of Opposition ¶¶ 3 and 4, and Ex. A.)2 Specifically, Valley Boyz engages in the
`
`manufacture, distribution, sale, advertising, and promotion in commerce of clothing and
`
`related accessories, including t-shirts, sweatshirts, zip-up sweatshirts, hats, stickers,
`
`
`
`1 37 C.F.R. § 2.116(a) adopts the Federal Rules of Civil Procedure.
`2 On April 2, 2019, Valley Boyz acquired the rights to the VALLEY BOYZ Mark from
`its previous owner Robert Ferguson. By virtue of this sale, Valley Boyz acquired the
`date of first use for the Mark, and also including all claims and rights to all intellectual
`property (including the trade name, trademarks, patents, web address, email address,
`designs and patterns related to “Valley Boyz”). To the extent the Board has any concern
`with respect to this issue, Valley Boyz attaches a true and correct copy of Bill of Sale and
`Purchase Agreement as Exhibit 1.
`
`
`
`2
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`socks, mugs, technology cases, dog-tag necklaces, bags, towels and related products. (Id.
`
`at ¶ 3.) Valley Boyz began offering these goods for sale in March 2019 and indeed made
`
`sales of goods. (Id. at ¶ 5.) Valley Boyz has made substantial investments by extensively
`
`advertising, promoting, and offering goods bearing the VALLEY BOYZ Mark. (Id. at ¶
`
`6.) Valley Boyz has promoted this brand to the public through various channels of trade
`
`in commerce, with the result that Valley Boyz customers and the public in general have
`come to know and recognize Valley Boyz’s VALLEY BOYZ Mark and associate the
`
`same with its goods. (Id.)
`
` As a result, Valley Boyz has developed goodwill and
`
`distinctiveness as it relates to the goods it offered prior to Applicant even the filing his
`ITU Applications, and certainly before Applicant’s intended use of the applied-for-mark.
`
`(Id. at ¶ 8.)
`
`In early March 2019, Valley Boyz reached out to Applicant and proposed a
`
`business relationship for Applicant to become a part of Valley Boyz and help promote the
`
`VALLEY BOYZ brand.3 (Id. at ¶ 9.) Applicant rejected the proposed business offer.
`(Id.) Despite Valley Boyz’s rights to the Mark, Applicant filed an intent-to-use based
`
`applications for the exact goods Valley Boyz sells on its website and for the exact word
`mark, VALLEY BOYZ. (Id. at ¶¶ 10-15.) Indeed, the applied for goods in Applicant’s
`
`ITU Applications and the goods of Valley Boyz are closely related, in that they are the
`
`exact same types of goods covering clothing and related accessories in International
`
`Classes 25 and 14. (Id. at ¶¶ 10-15.) The wordmark in the ITU Applications is the exact
`same as Valley Boyz’s VALLEY BOYZ Mark. (Id. at ¶ 16.) Thus, customers and the
`
`general public are likely to be confused, or mistaken, or deceived as to the origin and
`
`
`
`3 Applicant’s Exhibit F is an email from Valley Boyz where it (via its owner Gil Negrete)
`proposed a business venture with Mr. Oubre regarding the Valley Boyz business. Indeed,
`this occurred; however the initial offer was made on March 7, 2019, not May 6. Valley
`Boyz provides the full email communication attached hereto as Exhibit 2. Thus, prior to
`Applicant filing for its ITU Applications, Valley Boyz provided details as to its intentions
`for the business. (Id.)
`
`
`
`3
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`sponsorship of Applicant’s proposed goods in the ITU Applications and that of Valley
`
`Boyz. (Id.)
`
`Because of the foregoing, Valley Boyz has an interest in protecting its intellectual
`
`property and priority date of the use for the Mark.
`
`III. ARGUMENT
`
`Applicant puts forth two flawed arguments to claim Valley Boyz lacks standing to
`oppose Applicant’s ITU Applications. First, Applicant contends that Valley Boyz does
`
`not own rights to the Mark because it did not own the business when it first began selling
`
`clothing. That is incorrect. Valley Boyz acquired the rights via a purchase of assets on
`
`April 1, 2019 from Mr. Ferguson. Therefore, Valley Boyz acquired the right to protect
`
`any and all intellectual property, including the first use date of the Mark. Second,
`
`Applicant attempts to argue that it has superior rights in the Mark by virtue of hand-
`
`picked, self-serving social media and blog posts that describe Applicant as coining the
`
`phrase Valley Boyz. Applicant would like to believe that the first use of a mark in the
`
`world for any purpose means that Applicant is the only one that can use the phrase for all
`
`time; but this is not the law. Applicant has never used the Mark in commerce, let alone
`
`before Valley Boyz in March 2019. Notably, most of this so-called evidence of prior use
`(notably not “use in commerce”) occurred after Opposer first used VALLEY BOYZ in
`
`commerce. Applicant also contends that Valley Boyz, when used by Applicant, has
`
`acquired secondary meaning in the Mark or that somehow Valley Boyz (which is plural)
`
`is somehow a nickname for Applicant Kelly Oubre (a single person). This ludicrous
`
`argument is inappropriate for a motion to dismiss and, regardless, it falls flat as there is
`
`no evidence of established secondary meaning here.
`
`A. Valley Boyz Has Standing to Oppose the Applications.
`Applicant’s argument that Valley Boyz lacks standing because it does not own the
`
`Mark fails right out of the gates. And indeed, the requirements for standing to oppose a
`trademark is “[a]ny person who believes that he would be damaged by the registration of
`
`
`
`4
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`a mark” may file an opposition. Lanham Act § 13, 15 U.S.C.A. § 1063; 3 J. Thomas
`
`McCarthy, McCarthy on Trademarks and Unfair Competition § 20:7 (5th ed.)
`(“McCarthy”). Moreover, one’s proprietary interest in the mark is not required to
`
`establish standing, but rather is an element to establish the grounds for its opposition.
`
`See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185
`
`(C.C.P.A. 1982) (no proprietary interest in the mark need be proven in order to
`
`establish standing); McCarthy § 20:7. Nevertheless, Valley Boyz certainly has a
`
`proprietary interest in the Mark but need only prove ownership over the mark as grounds
`
`for the opposition, not standing. Id. As Applicant points out, Valley Boyz need only be
`
`something more than a gratuitous interloper, intermeddler, or a vicarious avenger of
`someone else’s rights. McCarthy at § 20:7. When reviewing standing, “the legitimacy of
`the petitioner’s activity from which its interest arises will be presumed in the absence of
`evidence to the contrary.” Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029
`
`(C.C.P.A. 1982).
`
`Here, as pleaded in Valley Boyz Notice of Opposition, Valley Boyz has used and
`
`continuously used the VALLEY BOYZ Mark in commerce since March 2019.
`
`Specifically, it was the first to use the Mark in commerce to sell clothing and related
`
`accessories in March 2019, or Classes 25 and 14. (Notice of Opposition ¶¶ 3-8.) Nothing
`in Applicant’s motion disproves the assertions made in paragraphs 3 through 8 of the
`
`Opposition. As explained above, in late March 2019, Valley Boyz entered negotiations
`
`with Mr. Ferguson after becoming aware of his senior user rights to the Mark. Valley
`
`Boyz purchased all assets and intellectual property rights to the VALLEY BOYZ Mark,
`
`including but not limited to the web addresses, email address, design and patterns. (See
`
`Ex. 1, Asset Purchase Agreement.) The sale was executed on April 1, 2019, several days
`
`before Applicant even filed its ITU Applications for the Mark. (Id.) Thus, Valley Boyz
`
`did not subsequently acquire rights to the VALLEY BOYZ after filing this Opposition
`
`
`
`5
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`but acquired such rights well before this filing and before Applicant even filed its ITU
`
`Applications.
`
`Indeed, along with the asset purchase, Valley Boyz acquired rights to enforce its
`
`senior user status against infringers to protect the trademark VALLEY BOYZ, including
`against Applicant. It is well established that “[a] valid assignment forges a link in a chain
`of priority of use of the mark.” McCarthy at § 18:15; Tillamook County Creamery Ass’n
`v. Tillamook Cheese and Dairy Ass’n, 345 F.2d 158, 161–162, 145 U.S.P.Q. 244 (9th Cir.
`
`1965)(party enjoyed the priority of its predecessors); Ludden v. Metro Weekly, 8 F. Supp.
`2d 7, 15, 47 U.S.P.Q.2d 1087 (D.D.C. 1998) (“It has long been the rule, codified by the
`Lanham Act, that after a valid assignment the assignee [] inherits the assignor’s[] date of
`first use.”). Applicant’s argument that Valley Boyz did not own the mark when it was
`
`first used is immaterial, and indeed contrary to established trademark law. It is entirely
`
`irrelevant whether Valley Boyz operated the valleyboyz.com website during the first few
`months of the business’s life as it acquired the first-use date established by Ferguson’s
`
`use in March 2019.
`
`Because of this acquisition and its subsequent continuation of using the Mark in
`
`commerce for goods in Classes 25 and 14, Valley Boyz has even established a
`proprietary interest in the Mark, and thus established it would be damaged by Applicant’s
`
`registration of its Mark including but not limited to Classes 25 and 14. Accordingly,
`Valley Boyz undoubtedly has standing to oppose Applicant’s ITU Application since it is
`
`the senior user of the Mark.
`
`B. Valley Boyz is the Senior User of the VALLEY BOYZ Mark.
`Applicant’s other flawed rationale for why Valley Boyz lacks standing is that
`
`Applicant has superior common law rights to the Mark. It would be nonsensical if an
`
`opposer had to prove its case (i.e. priority as grounds for an opposition based on Section
`
`2(d)) before establishing it has standing to bring the case.) This argument is circular and
`certainly not required by the TTAB’s standing which requires only that a “party can
`
`
`
`6
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`demonstrate a real interest in the proceeding.” Universal Oil Products Co. v. Rexall Drug
`
`and Chemical Co., 59 CCPA 1120, 463 F.2d 1122, 174 USPQ 458 (1972). Valley Boyz
`
`has certainly done this. Nevertheless, Valley Boyz has indeed pleaded sufficient facts to
`
`establish its priority to the Mark and with this Response, has further provided details as to
`its senior user status. Nothing in Applicant’s Motion disproves this fact because
`
`Applicant never alleges that it used the Mark in commerce prior to March 2019 coining a
`
`term is insufficient trademark use and VALLEY BOYZ is not a nickname for Applicant.
`
`i. Applicant did not use the Mark in commerce before Valley
`Boyz, and he does not even claim this.
`Notably absent from Applicant’s Motion is any contention of use in commerce.
`While it is unclear the point of Applicant’s argument regarding the merits (because it is
`
`not proper basis to find lack of standing), Valley Boyz was the first to use the Mark in
`
`commerce and that is the crux of trademark law. Applicant still has not even alleged it
`
`used the mark to sell any product to date. (See Ex. 2, ITU Applications.) This fact is
`shown in Applicant’s Exhibit C where Applicant (or presumably a representative) is
`
`telling a potential Valley Boyz customer that there is no website yet. (Motion at Ex. C.)
`
`So as of December 2019, Applicant is still not selling goods associated with the Mark.
`
`Because of this, Applicant relies solely on the assertion that it was the first to invent the
`
`word. This is not patent law. Coining a term without anything else is insufficient for
`trademark use. “[T]o achieve priority, the use must be as a trademark—to identify and
`distinguish source, not a used for purely generic or descriptive purposes.” McCarthy at §
`
`16:1; see Meth Lab Cleanup, LLC v. Bio Clean, Inc., 205 F. Supp. 3d 1243, 1254 (W.D.
`Wash. 2016) (“Generic or descriptive use of a phrase does not create priority.”)
`Moreover, the Applicant’s “evidence” is hardly sufficient to carry the weight even if this
`
`was a valid assertion of coining a term. More importantly, self-serving Reddit blogger
`
`posts and a handful of local articles simply saying Applicant coined the Mark is not
`
`evidence of trademark use. Trademark law at its most basic principles requires that a
`
`
`
`7
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`trademark identify and distinguish the source of goods and services of a person or
`
`company. Lanham Act, 15 U.S.C.A. § 1127.
`
`ii. Valley Boyz is not a nickname for Applicant.
`
`Next, Applicant argues that even if Valley Boyz provides sufficient facts (which it
`
`can and has done) that it has prior common law rights that it does not matter because the
`Mark is “associated” with Applicant. (See Motion at 11, Section B.) While this may be
`Applicant’s defense to Valley Boyz’s opposition, it certainly is not proper grounds to
`
`claim that Valley Boyz lack standing, particularly when Valley Boyz has established
`
`prima facie evidence to the contrary. No case law is cited for this proposition.
`
`Nevertheless, it appears Applicant is attempting to argue that he has developed secondary
`
`meaning in the Mark in that it is a nickname and therefore has superior rights to the Mark
`irrespective of Valley Boyz’s first use. This claim is a flimsy one at best.
`
`In support of this argument, Applicant brazenly analogizes this situation to that of
`
`the marks LINSANITY (associated with Jeremy Lin) and BO (associated with Bo
`Jackson). (Applicant’s Motion at p. 12-13.) The most critical difference from these cases
`is that the marks actually contain part of the famous athlete’s name which is why it is
`
`unmistakably associated with that athlete. This is clearly not the case here. VALLEY
`
`BOYZ does not equal Kelly Oubre; at the very least, the Board cannot reach this
`
`conclusion on a motion to dismiss.
`
`In In Re Sauer when reviewing whether a mark was associated to the famous Bo
`
`Jackson [potentially the greatest athlete to ever live], the Board described the standard as
`“the person’s name or identity must be of sufficient fame that when it is used as part or
`all of the mark on applicant’s goods, a connection with that person is likely to be made
`by someone considering purchasing the goods.” 27 U.S.P.Q.2d 1073 (Trademark Tr. &
`App. Bd. 1993), aff’d, 26 F.3d 140 (Fed. Cir. 1994) (citing Buffett v. Chi-Chi’s, Inc., 226
`
`USPQ 428 (TTAB 1985)). There is no evidence on record, in the public, or even
`presented in Applicant’s Motion that comes close to satisfying this standard. Even
`
`
`
`8
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`Applicant’s own evidence supports the contrary, namely that “Oubre even coined a
`nickname for himself and his fellow teammates.” (Applicant’s Motion at p. 4.) The Mark
`has never been used solely to identify Applicant or his “passionate and infectious style of
`play” (which is nowhere to be found in any article or blog post cited as evidence of such
`association). Even if so, Applicant’s alleged “use” is not as a designation as to the source
`
`of goods or services but rather to a person. See, e.g., Peaceable Planet, Inc. v. TY, Inc.,
`
`362 F.3d 986, 70 U.S.P.Q.2d 1386 (7th Cir. 2004), cert. denied, 543 U.S. 869, 125 S. Ct.
`
`275, 160 L. Ed. 2d 116 (2004) (personal names are not protected as trademarks until they
`
`acquire secondary meaning); Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680
`F.2d 755, 762 (C.C.P.A. 1982) (“Clearly, de facto identification with a mark does not, in
`itself, establish any rights in a junior user.”)
`And regardless this goes to the merits of the case not Valley Boyz’s standing, even
`assuming Applicant proves that the Mark is its nickname or is “unmistakably associated”
`with his identity only. Applicant fails to meaningfully challenge Valley Boyz’s priority
`
`to the Mark sufficient to strip it of standing to oppose its ITU Applications.
`
`C. Valley Boyz is entitled to protection of Related Goods.
`Lastly, Valley Boyz addresses Applicant’s assertion that it must amend its Notice
`
`of Opposition because some of the goods listed in the Notice were not sold on the website
`as of April 6, 2019. To start, this is false. Applicant’s own Exhibit I of Valley Boyz’s
`
`website actually shows as of April 6, 2019 it was offering for sale mugs, t-shirts, hoodies,
`
`tanks, bags, stickers, phone cases, towels, and socks (i.e. clothing and related accessories
`
`within Class 25 and 14.) (Motion at Ex. I.) Moreover, there is no requirement that
`
`Valley Boyz have a brick and mortar store. (See Motion at p. 14 claiming no allegation
`
`that Valley Boyz offered for sale through any other manner than the website).
`
`Paragraphs 3 through 8 provide sufficient detail as to the goods and related goods that
`
`Valley Boyz seeks protection.
`
`
`
`9
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`Moreover, “[t]he modern rule of law gives the trademark owner protection against
`
`use of its mark on any product or service which would reasonably be thought by the
`
`buying public to come from the same source, or thought to be affiliated with, connected
`with, or sponsored by, the trademark owner. This is often referred to as the ‘related goods
`or services’ rule.” McCarthy at § 24:6. This rule is based on the likelihood of confusion
`
`test under § 2(d) of the Lanham Act. The Trademark Board has observed that in applying
`§ 2(d), “two key considerations are the similarities between the marks and the similarities
`between the goods.” In re SL&E Training Stable, Inc., 88 U.S.P.Q.2d 1216, 2008 WL
`4107225 (T.T.A.B. 2008). “If priority and likelihood of confusion are proven as to any of
`
`the goods or services identified in the opposed class of goods or services, the opposition
`will be sustained as to all of the goods or services identified in that class.” McCarthy at §
`
`20:17; see Lanham Act § 2(d); see, e.g., The B.V.D. Licensing Corp. v. Rodriguez, 83
`U.S.P.Q.2d 1500, 2007 WL 616036 (T.T.A.B. 2007) (“If we find there is a likelihood of
`confusion as to those goods, then applicant’s application must be refused as to the entire
`class of goods.”). Thus, irrespective of when Valley Boyz actually sold all of the related
`items, the relevant issue is whether Applicant’s registration of the Mark in Classes 25 and
`14 is likely to be confused with that of Valley Boyz’s merchandise. (See Opposition at ¶¶
`
`15 and 16.) By virtue of its senior user status, not only is Valley Boyz provided
`
`protection over the goods actually sold but related products in Classes 14 and 25.
`Therefore, in light of basic trademark law, Valley Boyz’s Notice of Opposition
`
`provide sufficient facts to identify the two classes within which it seeks protection of the
`
`Mark.
`
`* * *
`
`Because Applicant fails to meaningfully challenge Valley Boyz’s interest in the
`Mark and its belief that it will be damaged by Applicant’s registration, the Motion to
`
`Dismiss for lack of standing should be denied.
`
`
`
`10
`
`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`Date: January 31, 2020
`
`
`
`
`
`Respectfully Submitted,
`
`
`KERCSMAR & FELTUS PLLC
`
`
`By: /s/ Jessica A. Wilson
` Gregory B. Collins
` Jessica A. Wilson
` gbc@kflawaz.com
` jwilson@kflawaz.com
` 7150 East Camelback Road, Suite 285
` Scottsdale, Arizona 85251
`
`
`
`
`
`
`
`
`
`Attorneys of Record for Valley Boyz, LLC
`
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`11
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`
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`

`

`VALLEY BOYZ’S CORRECTED RESPONSE TO MOTION TO DISMISS
`(88/374,358 and 88/374,356)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`VALLEY BOYZ, LLC
`
`
`
` Opposer,
`
`v.
`
`Kelly Oubre, Jr.,
`
`
`
`Applicant.
`
`
`
`Opposition No. 91252460
`Serial Nos. 88/374,358 and 88/374,356
`Mark: VALLEY BOYZ
`Filing Date: April 6, 2019
`Publication Date: July 23, 2019
`
`CERTIFICATE OF SERVICE
`I hereby certify that a true and complete copy of Valley Boyz, LLC’s Corrected
`
`Response to Motion to Dismiss has been served on the following Attorney of Record and
`
`Correspondent for Kelly Oubre, Jr. as listed on the TSDR website of the United States
`
`Patent and Trademark Office by emailing said copy on January 31, 2020, to:
`
`Ryan S. Hilbert
`Holley & Menker, P.A.
`PO Box 331937
`Atlantic Beach, Florida 32233
`rhilbert@holleymenker.com
`eastdocket@holleymenker.com
`
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`By: /s/ Jessica A. Wilson
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`EXHIBIT 1
`EXHIBIT 1
`W KERCSMAR
`
`“ELTUS
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`

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`
`BILL OF SALE
`
`AND
`
`PURCHASE AGREEMENT
`
`by and between
`
`
`
`
`Valley Boyz, LLC,
`an Arizona limited liability company
`(C‘BuyeIJO)
`
`Robert Ferguson
`
`(“Seller”)
`
`&
`
`Dated as of April 2, 2019
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`
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`

`

`BILL OF SALE AND
`
`PURCHASE AGREEMENT
`
`THIS BILL OF SALE AND PURCHASE AGREEMENT (this “Agreement”) is
`made and entered into as of April 2nd, 2019, by and between Robert Ferguson (“Seller”) and
`Valley Boyz, LLC, an Arizona limited liability company (“Buyer”).
`
`RECITALS
`
`Seller operates a business that designs, manufactures, distributes and sells
`A.
`apparel, clothing, under the name “Valley Boyz” aka “Valley-BoyzCom”.
`
`Seller desires to sell to Buyer, and Buyer desires to purchase from Seller,
`B.
`certain of Seller’s assets used in the Business, except as specified below for the consideration and
`upon the terms and conditions set forth in this Agreement.
`
`AGREEMENT
`
`NOW, THEREFORE, in consideration of the foregoing recitals and the mutual
`covenants set forth below, the parties hereby agree as follows:
`
`1. Purchase and Sale of Asset_s. Seller hereby agrees to sell, assign, transfer,
`convey and deliver to Buyer, and Buyer hereby agrees to purchase from Seller, the Seller’s assets
`set forth below. Notwithstanding anything to the contrary contained herein, title and all rights in
`and to the Purchased Assets will remain in Seller until the Closing Date.
`
`(a) Merchandise. Any and all merchandise; This includes all content
`saved on vector files, PDF files, and other documents.
`
`(b) Website & Domain. The domain: http:// https://valley-boyz.com/
`
`(c) Accounts Receivables. Any and all pending and outstanding accounts
`receivable owed to Seller.
`
`((1) Telephone and Facsimile Numbers. All telephone and facsimile
`numbers used by Seller and all advertisements and listing using said telephone and facsimile
`numbers, subject to any existing restrictions on the transfer of such advertisements and listings.
`
`including the trade
`(e) Claims and Rights. All Intellectual property,
`name, trademarks, patents, web address, email addresses, designs and patterns related to “Valley
`Boyz”.
`
`(1) Except as set forth herein, all of Seller’s claims and rights associated
`in any way with the Purchased Assets.
`
`

`

`The foregoing assets and properties to be transferred to the Buyer hereunder are
`collectively referred to as the “Purchased Assets.” Except as specifically set forth herein, Seller
`makes no representations or warranties with regard to the Purchased Assets, including but not
`limited to representations or warranties regarding the working condition, fitness for any specified
`purpose, marketability, merchantability, value or status of the Purchased Assets.
`
`2. Purchase Price & Manner of Payment. The total purchase price for the
`Purchased Assets shall be $1,000.00. Such purchase price shall be paid as follows:
`
`to Buyer
`Seller agrees to deliver
`3. Close of Business- Closing! Date.
`possession of the Purchased Assets on April 2, 2019 (the “Closing Date”). Until the Closing
`Date, Seller agrees to continue to operate its business in a manner consistent with its ordinary
`course of business. On the Closing Date, Seller shall give to Buyer possession of the Purchased
`Assets and on the Closing Date.
`
`follows:
`
`4. Representations and Warranties of Buyer. Buyer represents to Seller as
`
`This Agreement has been duly
`(a) Enforccability and Authorigg.
`executed and delivered by Buyer and constitute legal, valid and binding obligations of Buyer,
`enforceable against Buyer in accordance with its terms, except as such enforcement may be
`limited by general equitable principles or by applicable bankruptcy, insolvency, moratorium, or
`similar laws and judicial decisions in effect which affect creditor’s rights generally. Buyer has
`the fill power and authority to execute and deliver this Agreement and to perform its obligations
`hereunder. All required approvals of the members of Buyer have been duly and properly
`obtained.
`
`(b) Canneration. Buyer agrees to cooperate with Seller for purposes of
`Specifically, Buyer agrees to provide receipts and any all other
`tax filings.
`Seller‘s
`documentation needed for purposes of reporting on Seller's tax returns. Buyer also agrees to
`notify Seller immediately of any address change to assist Seller in obtaining the information set
`forth in this Section 4 (0). Buyer also agrees to list the items sold under this Agreement on IRS
`Form 8594.
`
`5. Representations and Warranties of Seller. Seller represents and warrants to
`Buyer as follows:
`
`This Agreement has been duly
`(a) Enforccabilig and Authority.
`executed and delivered by the Seller, and constitutes a legal, valid and binding obligation of
`Seller, enforceable against Seller in accordance with its terms, except as such enforcement may
`be limited by general equitable principles or by applicable bankruptcy, insolvency, moratorium,
`or similar laws and judicial decisions from time to time in effect which affect creditor’s rights
`generally. Seller has the full power and authority to execute and deliver this Agreement and to
`perform its obligations hereunder. All required approvals of the Board of Directors of Seller and
`the shareholders of Seller have been duly and properly obtained.
`
`

`

`
`(b) Title. Seller has good title to the Purchased Assets, free and clear of
`any and all liens, claims, charges, liabilities, encumbrances and security interests of every kind
`and nature.
`
`(c) Cessation of the Business. Seller will cease all operations comprising
`the Business on the Closing Date.
`
`6. Survival. The representations, warranties and covenants set forth herein shall
`survive the execution and delivery of this Agreement for a period of one year from the Closing
`Date. The representations, warranties and covenants contained herein shall not be affected by
`any investigation, verification, approval or subsequent notice made by or on behalf of any party
`hereto. No specific representation or warranty shall limit the generality or applicability of a
`more general representation or warranty.
`
`7. Bill of Sale. This Agreement is intended to also operate as a bill of sale
`effective as of the Closing Date and shall be evidence of the transfer of the Purchased Assets as
`provided for herein and such transfer is made based in substantial part on the representations and
`warranties and obligations provided for herein.
`
`8.
`
`"Expenses; Brokers.
`
`(a) Each of the parties hereto shall pay its own legal, accounting and other
`expenses incurred in connection herewith and the transactions contemplated hereby.
`
`(b) Each of the parties hereto represents and warrants that no finder,
`broker or other person is entitled to any commission, fee or other compensation in connection
`with any of the transactions contemplated by this Agreement.
`
`9. Severable Provisions; Enforeeability. Each provision of this Agreement is
`intended to be severable. If any provision hereof shall be declared by a court of competent
`jurisdiction to be illegal, unenforceable or invalid for any reason whatsoever, such illegality,
`unenforceability or invalidity will not affect the validity of the remainder of this Agreement or
`the applicable provision. The parties also agree that if any provision of this Agreement shall be
`declared by a court of competent jurisdiction to be unenforceable for any reason whatsoever, the
`court may appropriately limit or modify such provision, and such provision shall be given effect
`to the maximum extent permitted by applicable law.
`
`In the event of a breach or threatened breach by Seller of any representation,
`warranty or covenant herein, Buyer shall be entitled to obtain, without the necessity of posting any
`bond therefor, an order for specific performance requiring Seller to fully, promptly and completely
`perform any of its obligation