Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1032274
`
`Filing date:
`
`01/29/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91253119
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Vivid Robotics, Inc
`
`PRIYA SINHA CLOUTIER
`CLOUTIER ARNOLD JACOBOWITZ
`2701 1ST AVE, SUITE 200
`SEATTLE, WA 98121
`UNITED STATES
`becky@cajlawyers.com, priya@cajlaywers.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Priya Sinha Cloutier
`
`priya@cajlawyers.com, lesley@cajlawyers.com
`
`/Priya Sinha Cloutier/
`
`01/29/2020
`
`Attachments
`
`Answer01292020_Filed_compressed.pdf(777287 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA1032274
`
`Filing date:
`
`01/29/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91253119
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Vivid Robotics, Inc
`
`PRIYA SINHA CLOUTIER
`CLOUTIER ARNOLD JACOBOWITZ
`2701 1ST AVE, SUITE 200
`SEATTLE, WA 98121
`UNITED STATES
`becky@cajlawyers.com, priya@cajlaywers.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Priya Sinha Cloutier
`
`priya@cajlawyers.com, lesley@cajlawyers.com
`
`/Priya Sinha Cloutier/
`
`01/29/2020
`
`Attachments
`
`Answer01292020_Filed_compressed.pdf(777287 bytes )
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`PICKNIK, LLC
`
`Opposition No. 91253119
`
`Opposer and Counterclaimant,
`
`vs.
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`VIVID ROBOTICS, INC.
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` Applicant and Counter-Defendant
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`
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`ANSWER AND COUNTERCLAIM:
`
`APPLICATION SERIAL NO. 88493424
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`MARK: PICNIC
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
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`
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`Applicant, Vivid Robotics, Inc., for its answer to the Notice of Opposition filed by PickNiK,
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`LLC against application for registration of the trademark Picnic, Serial No. 88493424, filed June
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`28, 2019, and published in the Official Gazette on October 29, 2019, by and through its
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`undersigned counsel, hereby pleads and avers as follows:
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`
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`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 1
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`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
`
`
`
`
`
`
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`1. Answering paragraph 1 of the Notice of Opposition, Applicant admits the allegations
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`contained therein.
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`2. Answering paragraph 2 of the Notice of Opposition, Applicant admits the allegation
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`contained therein.
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`3. Answering paragraph 3 of the Notice of Opposition, Applicant denies the allegation
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`contained therein.
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`4. Answering paragraph 4 of the Notice of Opposition, Applicant admits the allegation
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`“PickNik is the owner of pending U.S. Trademark Application Serial No.
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`88/706,056 for PICKNIK for “Design and development of computer software for
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`robots; Design, development, and consulting services related thereto in the field of
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`robotics; Product design and development in the field of robotics; Technical support
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`services, namely, troubleshooting of computer software problems” in International
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`Class 42 (the “PICKNIK Application”), which was filed as a use-based application
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`under Section 1(a) of the Lanham Act.” Applicant denies the remainder of the
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`allegation contained therein.
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`5. Answering paragraph 5 of the Notice of Opposition, Applicant does not have
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`sufficient knowledge or information to form a belief as to the allegations contained
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`therein and accordingly denies the allegations.
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`6. Answering paragraph 6 of the Notice of Opposition, Applicant does not have
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`sufficient knowledge or information to form a belief as to the allegations contained
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`therein and accordingly denies the allegations.
`
`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 2
`
`
`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
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`7. Answering paragraph 7 of the Notice of Opposition, Applicant does not have
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`sufficient knowledge or information to form a belief as to the allegations contained
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`therein and accordingly denies the allegations.
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`8. Answering paragraph 8 of the Notice of Opposition, Applicant does not have
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`sufficient knowledge or information to form a belief as to the allegations contained
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`therein and accordingly denies the allegations.
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`9. Answering paragraph 9 of the Notice of Opposition, Applicant does not have
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`sufficient knowledge or information to form a belief as to the allegations contained
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`therein and accordingly denies the allegations.
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`10. Answering paragraph 10 of the Notice of Opposition, Applicant denies the allegation
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`contained therein.
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`11. Answering paragraph 11 of the Notice of Opposition, Applicant denies the allegation
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`contained therein.
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`12. Answering paragraph 12 of the Notice of Opposition, Applicant denies the allegation
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`contained therein.
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`13. Answering paragraph 13 of the Notice of Opposition, Applicant denies the allegation
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`denies contained therein.
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`14. Answering paragraph 14 of the Notice of Opposition, Applicant denies the allegation
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`contained therein.
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`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 3
`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
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`APPLICANT’S AFFIRMATIVE DEFENSES
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`FIRST AFFIRMATIVE DEFENSE
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`The complaint fails, in whole or part, because the trademark asserted against Applicant in
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`the Opposition is invalid and/or unenforceable.
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`APPLICANT’S COUNTERCLAIMS
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`Applicant and Counterclaimant, Vivid Robotics, Inc., by and through its undersigned
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`counsel, and for its counterclaim against the Opposer and Counter-Defendant PickNik, LLC
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`(“Counter-Defendant”), alleges and states as follows:
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`1. On information and belief, Counter-Defendant is a limited liability corporation
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`organized and existing under the laws of Delaware.
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`2. Counterclaimant Vivid Robotics, Inc., is a corporation organized and existing under
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`the laws of Delaware.
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`3. Counter-Defendant, filed US trademark Application, Serial No. 88/706,056, on
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`November 25, 2019, for “PickNik” (the “PickNik trademark”) in connection with the
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`following services:
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`IC 042.: Design and development of computer software for robots;
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`Design, development, and consulting services related thereto in the
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`field of robotics; Product design and development in the field of
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`robotics; Technical support services, namely, troubleshooting of
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`computer software problems.
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`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 4
`
`
`
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`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
`
`
`
`
`
`
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`4. Prior to November 25, 2019, the Counter-Defendant did not take any action
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`to put others on notice of the PickNik trademark. Counter-Defendant failed
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`to file any state trademark applications. And, to this day, Counter-
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`Defendant even fails to us the common law ™ in conjunction with the
`
`PickNik trademark.
`
`5. Counter-Defendant certified to the USPTO that it first used the PickNik trademark in
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`March 2015; and its first use in commerce was in October 2015.
`
`6. On or about September 18, 2019, Counter-Defendant published a blog post, attached
`
`hereto as Exhibit A, stating “PickNik turns 2”.
`
`7. Counter-Defendants certified to the USPTO that the PickNik trademark has been used
`
`for a broad range of services.
`
`8. In its September 18, 2019 “PickNik Turns 2” blog, Counter-Defendant states that it is
`
`a “lead developer and maintainer of MoveIt, a key part of ROS (Robotics Operating
`
`System).” Further, “PickNik supports and collaborates with the worldwide open
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`source robotics movement.”
`
`9. On its LinkedIn Page, attached hereto as Exhibit B, Counter-Defendant claims to
`
`provide consulting services working with open source software.
`
`10. Counter-Defendants have provided no specimen of use for its broad US trademark
`
`application except its own website; proper specimens listed in the TMEP have not
`
`been submitted in support of the PickNik trademark application.
`
`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 5
`
`
`
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`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
`
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`11. The Counter-Defendant has provided no specimen showing that it has manufactured or
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`sold industrial robots for food assembling, industrial robots for food assembling and
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`cooking.
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`12. The Counter-Defendant has provided no specimen showing that it has provided
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`downloadable software for managing an industrial food dispensing robot;
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`downloadable software for managing an industrial food cooking robot.
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`13. The Counter-Defendant has provided no specimen showing that it has provided online
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`non-downloadable software for managing industrial robots for food
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`assembly; provided online non-downloadable software for managing an industrial
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`food dispensing robot; provided online non-downloadable software for managing
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`an industrial food cooking robot.
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`14. In fact, the Counter-Defendant cannot sell, license, or otherwise commercialize the
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`open-source software they consult on.
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`15. Any rights Counter-Defendants have in the PickNik trademark must be limited to
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`actual use of the mark for the sale of consulting services in the field of open-source
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`software.
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`
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`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 6
`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
`
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`DATED: 29 January 2020.
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`Respectfully submitted,
`
`Cloutier Arnold Jacobowitz PLLC
`
`
`By: /Priya Sinha Cloutier/
`Priya Sinha Cloutier, WSBA #37407
`Email: priya@cajlawyers.com
`2701 1st Ave., Ste 200
`Seattle, WA 98121
`
`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 7
`
`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
`
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`EXHIBIT A
`
`“PickNik Turns 2”
`
`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 8
`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
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`1/27/2020
`
`PickNik Turns 2 | PickNik
`
`PickNik Turns 2
`
`When Dr. Dave Coleman entered the Amazon Picking Challenge in 2015 on behalf
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`of the University of Colorado at Boulder, he had no idea it would lead to him
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`starting a successful robotics company.
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`“We didn’t win [the Amazon Picking Challenge], but Google o(cid:123)ered me a job as a
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`contractor to work on MoveIt, which required I create an LLC, and then things
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`started moving…”
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`As he started having too many MoveIt projects, Dave realized there was an
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`opportunity in the growing robotics market for open source software. He brought
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`on 3 co-founders to spearhead the robotics software startup.
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`“I realized that in order to have the impact I wanted to on MoveIt, I would need to
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`have a bigger team. I couldn’t take a job at traditional companies that would
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`prevent me from still contributing to open source. Starting a company made a lot
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`of sense”
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`https://picknik.ai/moveit/ros/2019/09/18/picknik-turn-2.html
`
`1/4
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`SEPTEMBER 18, 2019
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`
`
`1/27/2020
`
`PickNik Turns 2 | PickNik
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`PickNik’s humble beginnings started in Dave’s basement, and now employs over a
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`dozen PhD roboticists and robotics software engineers all over the world with its
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`headquarters in Boulder, Colorado.
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`Dave’s passion for the open source software model has helped PickNik Robotics
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`become lead developer and maintainer of MoveIt, a key part of ROS (Robotics
`
`Operating System). MoveIt is used heavily by industry, startups, academics, and
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`graduate students alike to enable robotic arms to interact with objects and move
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`them to new locations. MoveIt is now used worldwide in hundreds of robots,
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`including projects by NASA and many others.
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`As the robotics industry continues to grow, PickNik continues to focus on world
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`class robotics consulting and providing powerful robotics software.
`
`Accelerate Your Robotics Development | About PickNik: Robots are complex
`
`systems that require a wide breadth of expert knowledge spanning multiple
`
`disciplines, making robotics development extremely di(cid:124)cult and costly. Since 2015,
`
`PickNik’s mission has been to address this technical challenge while dramatically
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`reducing development time for advanced robotic applications. To achieve this,
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`PickNik supports and collaborates with the worldwide open source robotics
`
`movement, providing companies with cutting edge research and barrier-free open
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`source software.
`
`https://picknik.ai/moveit/ros/2019/09/18/picknik-turn-2.html
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`2/4
`
`
`
`1/27/2020
`
`PickNik Turns 2 | PickNik
`
`PickNik is rooted with a strong background in robotics theory combined with
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`applied software experience to provide unique solutions. Robotics companies
`
`including Google, Amazon, Kindred, and many others are partnering with PickNik to
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`develop robotic applications to address the toughest issues through software
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`consulting, custom development, and other initiatives. By working together, we
`
`can accomplish far more than by working alone.
`
`If you would like more information please contact Rob Coleman at
`
`projects@picknik.ai
`
`Previous Post
`Easy Robot Software
`
`Next Post
`MoveIt Workshop 2019 Macau
`
`Latest Posts
`
`PickNik and Rapyuta
`Team Up to Release
`MoveIt G...
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`MoveIt Style
`
`Meet PickNik at
`ROSCon 2019
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`https://picknik.ai/moveit/ros/2019/09/18/picknik-turn-2.html
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`3/4
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`DECEMBER 20, 2019
`
`NOVEMBER 15, 2019
`
`OCTOBER 18, 2019
`
`Services
`
`Products
`
`Blog
`
`Team
`
`Jobs
`
`Connect
`
`PickNik is committed to open source and ensures that
`all relevant projects contribute a portion back to
`
`improving MoveIt and ROS.
`
`
`
`1/27/2020
`
`PickNik Turns 2 | PickNik
`
`https://picknik.ai/moveit/ros/2019/09/18/picknik-turn-2.html
`
`4/4
`
`Connect
`
`Copyright © 2020 PickNik Inc, located in
`Boulder, Colorado, USA. All rights reserved.
`
`
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`EXHIBIT B
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`PickNik LinkedIn Page
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`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 9
`
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
`
`
`
`
`
`1/21/2020
`
`Search
`
`(1) PickNik Robotics: About | LinkedIn
`
`1
`
`
`PI Attorney Needed - 18 new personal injury law clients seeking a lawyer. View their cases now! Ad
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`
`
`See all 19 employees on Linked
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`
`Featured groups
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`Robot Operating System
`4,833 members
`
`PickNik Robotics
`Industrial Automation · Boulder, CO · 420 followers
`Accelerate Your Robotics Development
`
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`Visit website
`
`Overview
`We are robotic software experts, available to create, integrate, patch, or provide
`training for your robotic applications. We have particular expertise in the Robotic
`Operating System (ROS) including:
`
` -
`
` The MoveIt! Motion Planning Library
`- ROS Control and Realtime Systems
`- The Open Motion Planning Library (OMPL)
`- Gazebo Simulation
`- ROS Navigation Stack
`
`Website
`
`Phone
`
`Industry
`
`Company size
`
`Headquarters
`
`Type
`
`Founded
`
`Specialties
`
`http://picknik.ai/
`
`+1 -(720)- 513-2221
`
`Industrial Automation
`
`11-50 employees
`19 on LinkedIn
`
`Boulder, CO
`
`Privately Held
`
`2015
`
`ROS, MoveIt!, Motion Planning, Robotic Consulting,
`Project Management, Robotic Simulation, Inverse
`Kinematics, C++, MoveIt, Robotics Development, and
`Robotics Consulting
`
`Locations (1)
`Primary
`PickNik Consulting
`1942 Broadway, Suite 314 , Boulder, CO 80302, US
`Get directions
`
`Home
`
`About
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`https://www.linkedin.com/company/picknik/about/
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`Messaging
`
`1/2
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`
`
`1/21/2020
`
`Search
`
`(1) PickNik Robotics: About | LinkedIn
`
`1
`
`https://www.linkedin.com/company/picknik/about/
`
`Messaging
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on 29 January 2020, the foregoing was filed electronically
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`with the TTAB, and delivered via email to:
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`CAROLYN JUAREZ
`NEUGEBOREN O'DOWD PC
`1227 SPRUCE ST., STE. 200
`BOULDER, CO 80302
`UNITED STATES
`carolyn@nodiplaw.com, seneca@nodiplaw.com
`
`
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`By: /Priya Sinha Cloutier/
`Priya Sinha Cloutier, WSBA #37407
`Email: priya@cajlawyers.com
`2701 1st Ave., Ste 200
`Seattle, WA 98121
`
`ANSWER AND COUNTERCLAIM: APPLICATION SERIAL NO. 88493424 MARK: PICNIC - 10
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`CLOUTIER ARNOLD JACOBOWITZ PLLC
`2701 1ST AVE., STE 200
`SEATTLE, WASHINGTON 98121
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