Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1060341
`
`Filing date:
`
`06/06/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91255565
`
`Party
`
`Correspondence
`Address
`
`Defendant
`MSC, WS LLC
`
`DARREN B. COHEN
`REED SMITH LLP
`599 LEXINGTON AVENUE
`NEW YORK, NY 10022
`UNITED STATES
`dcohen@reedsmith.com, nycipdocketing@reedsmith.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Answer
`
`Darren B. Cohen
`
`dcohen@reedsmith.com, nycipdocketing@reedsmith.com,
`MCooke@manatt.com, JWood@manatt.com, IPDocket@manatt.com
`
`/Darren B. Cohen/
`
`06/06/2020
`
`WS NEW YORK Logo - ANSWER TO NOTICE OF OPPOSITION.pdf(84662
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91255565
`
`In the Matter of Application Serial No. 88/574,143
`Published in the Official Gazette on December 11, 2019
`Mark: WS NEW YORK and Design
`--------------------------------------------------------X
`EUROSTAR, INC.,
`
`
`
`:
`Opposer,
`
`:
`-against-
`
`
`:
`MSC, WS LLC,
`
`
`
`:
`Applicant.
`
`:
`--------------------------------------------------------X
`Box TTAB - NO FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, MSC, WS LLC, for its Answer to the Notice of Opposition filed by Eurostar,
`Inc., against the application for registration of Applicant’s mark WS NEW YORK and Design,
`Serial No. 88/574,143, published in the Official Gazette on December 31, 2019, pleads and
`answers as follows:
`1.
`Answering Paragraph 1 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`2.
`Answering Paragraph 2 of the Notice of Opposition, Applicant admits to the
`allegations thereof.
`3.
`Answering Paragraph 3 of the Notice of Opposition, Applicant admits to the
`allegations thereof.
`4.
`Answering Paragraph 4 of the Notice of Opposition, Applicant admits to the
`allegations thereof.
`5.
`Answering Paragraph 5 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`
`
`
`
`
`

`

`Answering Paragraph 6 of the Notice of Opposition, Applicant does not have
`6.
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`7.
`Answering Paragraph 7 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`8.
`Answering Paragraph 8 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`9.
`Answering Paragraph 9 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`10.
`Answering Paragraph 10 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`11.
`Answering Paragraph 11 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`12.
`Answering Paragraph 12 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`13.
`Answering Paragraph 13 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`14.
`Answering Paragraph 14 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`15.
`Answering Paragraph 15 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`16.
`Answering Paragraph 16 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`17.
`Answering Paragraph 17 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`
`2
`
`

`

`Answering Paragraph 18 of the Notice of Opposition, Applicant admits the
`18.
`allegations contained therein.
`19.
`Answering Paragraph 19 of the Notice of Opposition, Applicant admits that it
`filed the subject application in August 2019. As to the remaining allegations in Paragraph 19,
`Applicant denies the allegations thereof.
`20.
`Answering Paragraph 20 of the Notice of Opposition, Applicant does not have
`sufficient knowledge or information to form a belief as to the allegations contained therein and
`accordingly denies the allegations thereof.
`21.
`Answering Paragraph 21 of the Notice of Opposition, Applicant denies the
`allegations thereof.
`22.
`Answering Paragraph 22 of the Notice of Opposition, Applicant admits the
`allegations contained therein.
`23.
`Answering Paragraph 23 of the Notice of Opposition, Applicant repeats and
`realleges the answers in preceding paragraphs 1 through 22 as if fully set forth herein.
`24.
`Answering Paragraph 24 of the Notice of Opposition, Applicant denies the
`allegations thereof.
`25.
`Answering Paragraph 25 of the Notice of Opposition, Applicant denies the
`allegations thereof.
`26.
`Answering Paragraph 26 of the Notice of Opposition, Applicant repeats and
`realleges the answers in preceding paragraphs 1 through 25 as if fully set forth herein.
`27.
`Answering Paragraph 27 of the Notice of Opposition, Applicant denies the
`allegations thereof.
`28.
`Answering Paragraph 28 of the Notice of Opposition, Applicant denies the
`allegations thereof.
`
`
`AFFIRMATIVE DEFENSES
`
`Applicant affirmatively alleges that the U.S. Patent and Trademark Office
`29.
`
`(“PTO”), upon review of the subject Application, did not cite Opposer’s marks as a bar to
`registration. If there were any reason to believe that the average or relevant consumer would be
`confused as to the sources of the respective goods of the subject marks, the PTO would have
`certainly withheld approval of the subject applications.
`
`30.
`Applicant affirmatively alleges that the U.S. Trademark Register contains
`numerous WS composite and formative marks peacefully co-existing in use and registration,
`marks actually closer in commercial meaning to that of Applicant, in the relevant fields of
`
`3
`
`

`

`activity. If those registered marks can peacefully co-exist with those of Opposer, Applicant’s
`mark should be similarly allowed to co-exist.
`
`In view of the foregoing, Applicant contends that this Opposition is groundless and
`
`baseless in that Opposer has not shown wherein it will be, or is likely to be, damaged by the
`registration of or has a rightful claim to Applicant’s trademark.
`
`Dated: New York, New York
`
`June 6, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`REED SMITH LLP
`
`
`
`By_________________________________
`
`Darren B. Cohen
`
`Attorney for Applicant
`
`599 Lexington Avenue
`
`New York, New York 10022
`
`212-549-0346
`
`4
`
`

`

`Certificate of Service
`
`I hereby certify that a copy of the foregoing Applicant’s Answer to Notice of Opposition
`was sent via email to counsel for Opposer, Manatt, Phelps & Phillips, LLP, at
`MCooke@manatt.com, JWood@manatt.com, IPDocket@manatt.com, on this 6th day of June
`2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By_________________________________
`
`Darren B. Cohen
`
`Attorney for Applicant
`
`
`
`5
`
`