Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1068433
`07/15/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91255847
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Forever, Inc.
`
`ROCHELLE D. ALPERT
`MORGAN, LEWIS & BOCKIUS LLP
`ONE MARKET, SPEAR ST. TOWER, 5TH FL.
`SAN FRANCISCO, CA 94105
`UNITED STATES
`Primary Email: rochelle.alpert@morganlewis.com
`Secondary Email(s): sftrademarks@morganlewis.com,
`nina.dutta@morganlewis.com, sharon.smith@morganlewis.com,
`yelena.lolua@morganlewis.com
`415 442-1326
`
`Other Motions/Papers
`
`Rochelle D. Alpert
`
`rochelle.alpert@morganlewis.com, sharon.smith@morganlewis.com,
`nina.dutta@morganlewis.com, sftrademarks@morganlewis.com,
`yelena.lolua@morganlewis.com
`
`/RDA/
`
`07/15/2020
`
`Motion to Suspend and Motion to Strike Applicant Affirmative Defenses and Ex-
`hibits A-B.pdf(2353919 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 88/619,740
`Filed September 17, 2019
`For the mark FOREVERNOTE
`Published in the OFFICIAL GAZETTE on January 21, 2020
`
`Forever, Inc.,
`
`
`
`
`
`Opposer,
`
`
`v.
`
`Forevernote Inc.,
`
`
`
`
`Applicant
`
`
`
`
`
`
`Opposition No. 91255847
`
`
`
`MOTION TO SUSPEND AND MOTION TO STRIKE
`APPLICANT’S AFFIRMATIVE DEFENSES
`
`Pursuant to TBMP § 510.02(a), Forever, Inc. (“Forever” or “Opposer”) hereby moves to
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`suspend this opposition proceeding pending resolution of the opposition and litigation between
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`Forevernote, Inc. (“Applicant”) and Evernote Corporation (“Evernote”) on two separate grounds:
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`(a) the prior pending opposition and litigation involving the mark EVERNOTE; and (b) this
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`Motion to Strike.
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`Additionally, pursuant to Federal Rule of Civil Procedure 12(f) and TMBP § 506.01,
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`Forever moves to strike affirmative defenses that Applicant stated in its Answer filed on June 24,
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`2020. To the extent the Board does not suspend pending the prior filed opposition/litigation
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`proceeding, as resolution of this Motion to Strike should nonetheless narrow the issues in this
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`proceeding in terms of both discovery and trial in this opposition, Forever alternatively requests
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` DB2/ 39272069.1
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`
`

`

`
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`that the Board suspend this proceeding pending ruling on the motion to strike the affirmative
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`defenses, pursuant to TBMP § 510.03(a).
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`I. Factual Background
`
`As alleged in the Notice of Opposition Forever owns and uses valid and existing federal
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`trademark registrations for the word mark FOREVER® (U.S. Reg. No. 5,456,075) and the mark
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`FOREVER® and design (U.S. Reg. No. 4,598,177) both for “downloadable computer software
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`that allows for the storage, organization and sharing of electronic data and media by others” in
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`International Class 09, “storage services for archiving documents, media and other electronic
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`data” in International Class 39, and “providing temporary use of online non-downloadable
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`computer software for use in electronic storage of data and media; conversion of data or
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`documents from physical to electronic media” in International Class 42. In this regard, the
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`FOREVER and design mark has become incontestable. Forever also owns and uses and alleged
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`the mark FOREVER STORAGE® (U.S. Reg. No. 5,137,771) for “storage services for archiving
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`electronic data” in International Class 39. In addition, beyond its federal registrations, Forever
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`alleged in its Notice of Opposition common law rights arising from its Forever trade name and
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`its Forever.com domain name, and the other related uses of its FOREVER marks, registered and
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`unregistered, that are prior in time to any rights of Applicant.
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`On September 17, 2019, years after Forever began use of its FOREVER marks and
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`names, Applicant filed an intent-to-use application for FOREVERNOTE, Serial No. 88/619,740,
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`for “[d]ownloadable mobile application for ordering custom print and digital memory books,
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`scrapbooks, personal archives, family archives, wedding albums, diaries, vacation albums,
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`family albums, family histories, photograph albums, birthday albums, and special event albums
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`for others and for delivery thereof” in International Class 9, and “[p]reparation of custom print
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`DB2/ 39272069.1
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`
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`2
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`and digital memory books, scrapbooks, personal archives, family archives, wedding albums,
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`diaries, vacation albums, family albums, family histories, photograph albums, birthday albums,
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`and special event albums for others” in International Class 45 (the “Application”).
`
`On January 28, 2020, the third party, Evernote, timely opposed the Application in TTAB
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`Proceeding No. 91/253,702 based on its EVERNOTE marks. On May 22, 2020, Forevernote
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`filed suit against Evernote in the United States District Court for the Southern District of
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`California for declaratory judgment. Forevernote, Inc. v. Evernote Corp., Docket No. 3:20-cv-
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`00970 (S.D. Cal. June 26, 2020). A copy of the complaint filed by Applicant against Evernote in
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`that matter is attached as Exhibit A. In that proceeding, Evernote subsequently filed
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`counterclaims against Forevernote for federal and common law trademark infringement and
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`unfair competition regarding the EVERNOTE marks. A copy of the answer with counterclaims
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`filed by Evernote against Applicant is attached as Exhibit B.
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`Based on the pending litigation, Evernote and Forevernote jointly filed a motion to
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`suspend their Trademark Trial and Appeal Board (“TTAB” or “Board”) proceeding pending
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`resolution of Forevernote, Inc. v. Evernote Corp., Docket No. 3:20-cv-00970 (S.D. Cal. June 26,
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`2020). The TTAB granted this motion on June 2, 2020, stating that “proceedings are suspended
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`pending final disposition of the civil action.”
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`After properly filing an extension of time to oppose, Forever timely opposed
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`Forevernote’s same intent-to-use Application on May 15, 2020. Applicant filed its Answer on
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`June 24, 2020, asserting certain affirmative defenses and then more broadly stating that
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`“Applicant reserves its right to raise any and all affirmative defenses based on information it
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`learns, through discovery or otherwise, which would serve as the basis for an additional defense
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`up to the time including after trial.” Answer, p. 5.
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`DB2/ 39272069.1
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`3
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`The so-called affirmative defenses do not state a valid defense since they do not reflect a
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`cognizable affirmative defense under the standard of law in the TTAB. Similar marks to provide
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`any defense must be for similar services. That is not the case with the allegations alleged in the
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`affirmative defenses.
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`
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`Similarly, in yet another defense, Applicant claims that Registrant is attempting to
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`monopolize the use of the FOREVER mark. Id. at 4. That is not a supportable claim as a matter
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`of law either. Enforcing trademark rights does not create any monopoly.
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`Finally, Applicant states that Registrant has not suffered any harm based on its
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`Application. Id. at 5. That is not a sustainable affirmative defense where Registrant has shown
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`its standing to bring this Opposition through pleading common law rights as well as federal
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`trademark rights. Harm is not a required element for an opposition.
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`II. Proceedings Should Be Suspended Until a Final Determination in the Evernote
`Opposition
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`When a party to a pending TTAB case is involved in another proceeding “that may have
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`a bearing” on the TTAB case, the Board may suspend proceedings until a final determination in
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`the external matter. TBMP § 510.02(a). Judicial economy is generally served by a grant of
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`suspension where civil proceedings bear on the application or a mark, even if the issues in the
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`civil proceeding are not dispositive of those in the Board proceeding. Id.; see also New Orleans
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`Louisiana Saints LLC v. Who Dat? Inc., 99 U.S.P.Q.2d 1550, 1552 (T.T.A.B. 2011) (“[T]he civil
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`action does not have to be dispositive of the Board proceeding to warrant suspension, it need
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`only have a bearing on the issues before the Board.”). Moreover, any decision in the prior
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`pending opposition filed by Evernote also qualifies as a type of proceeding that warrants
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`suspension here.
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`DB2/ 39272069.1
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`4
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`The Evernote Opposition and the federal litigation that resulted clearly bear on the
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`outcome of Forever’s Opposition. If the claims in the litigation or opposition are decided against
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`Applicant, there will be no need for this opposition filed by Forever based on its FOREVER
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`marks and names. The same application that is at issue in this proceeding is at issue in the
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`Evernote Opposition and Federal litigation.
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`If judgment in the litigation goes against the application, a finding of infringement would
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`render this entire proceeding moot, as the Board would be bound by such a decision and would
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`necessarily deny registration to Forevernote. Id.; Toro Co. v. Hardigg Indus., Inc., 187 U.S.P.Q.
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`689, 692 (T.T.A.B. 1975) (federal district court decisions are binding upon the USPTO); see also
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`Other Telephone Co. v. Connecticut National Telephone Co., 181 U.S.P.Q. 125, 126-27
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`(T.T.A.B. 1974) (decision in civil action for infringement and unfair competition would have
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`bearing on outcome of Trademark Act § 2(d) claim regarding the same mark before the Board).
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`Similarly, a separate determination in the Notice of Opposition brought by Evernote based on its
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`trademarks rights could also dispense with this Opposition proceeding brought by Forever if
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`Evernote prevails.
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`Accordingly, in the interest of judicial economy, this proceeding should be suspended
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`pending a final determination in the Evernote litigation and opposition against the same
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`Applicant for the same mark as in this proceeding.
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`III. The Board Should Strike Applicant’s So-Called Affirmative Defenses
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`To the extent that this proceeding is not suspended pending the final determination in the
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`Evernote opposition, then the Board should address Applicant’s so-called Affirmative Defenses
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`but suspend the proceeding during that determination. It is well-established that on a motion, the
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`Trademark Trial and Appeal Board (“TTAB” or “Board”) may strike “any insufficient defense or
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`any redundant, immaterial, impertinent, or scandalous matter” from a pleading document.
`5
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`DB2/ 39272069.1
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`TBMP § 506.01; Fed. R. Civ. P. 12(f). The Board may strike from the pleadings any
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`“impermissible or insufficient claim or portion of a claim.” Id.
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`Here, the Board should strike Applicant’s statement that it may amend its answer to add
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`further defenses at any time as contrary to law and impertinent, and it should strike Applicant’s
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`defenses regarding Forever’s federal trademark registration rights presenting a monopoly and
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`references to third party marks as completely immaterial to the applicable standards governing
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`opposition proceedings. Further, the lack of damage affirmative defense should be stricken since
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`it is plain from the Notice of Opposition that Forever has properly pled standing in this
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`proceeding.
`
`A. Applicant’s Assertion That It May Raise Any New Defense at a Later Date Is
`Contrary to Law
`
`Applicant asserted in its Answer that it may assert any additional defenses via
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`amendment, without limitation. Answer, p. 5. Amendments to pleadings may be made within
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`21 days of service as a matter of course. Fed. R. Civ. P. 15(a)(1); TBMP § 507.02 (stating that
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`amendments are governed by Fed. R. Civ. P. 15(a)). However, “[i]n all other cases, a party may
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`amend its pleading only with the opposing party’s written consent or the court’s leave.” Fed. R.
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`Civ. P. 15(a)(2) (emphasis added). Thus, when a defendant has filed an answer in an opposition
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`proceeding but later learns information that would serve as the basis for a new defense, it
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`“should move promptly to amend its pleading to assert the additional matter. . . .” TBMP § 314.
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`Motions to amend pleadings are not granted in every circumstance, but rather only when
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`justice requires. See Embarcadero Techs., Inc. v. Delphix Corp., 117 U.S.P.Q.2d 1518, 1523
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`(T.T.A.B. 2016). In deciding on a motion to amend, the Board considers, among other factors,
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`“undue delay, prejudice to the opposing party, bad faith or dilatory motive, futility of the
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`amendment, and whether the party has previously amended its pleadings.” Id. (finding amended
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`DB2/ 39272069.1
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`
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`6
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`claims were untimely and would be futile); Black & Decker Corp. v. Emerson Electric Co., 84
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`U.S.P.Q.2d 1482, 1486 (T.T.A.B. 2007) (finding prejudice where amendment would limit the
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`record); Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 U.S.P.Q.2d
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`1413, 1414-15 (T.T.A.B. 2016) (denying amendment where plaintiff waited months in moving to
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`amend).
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`Accordingly, Applicant’s assertion that it “reserves its right to raise any and all
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`affirmative defenses based on information it learns, through discovery or otherwise, which would
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`serve as the basis for an additional defense up to the time including after trial,” without
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`limitation, is contrary to law. Applicants in an opposition proceeding such as this only have a
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`limited right to amend as set out in the Federal Rules of Civil Procedure and the Trademark Trial
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`and Appeal Board Manual of Procedure. That right may not be “reserved” or expanded by bare
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`assertions in the pleadings.
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`To the extent that Applicant’s statement seeks to expand its right to amend, this statement
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`is impermissible and impertinent, and Forever asks that it be stricken from the pleadings.
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`B. Applicant’s Cited Marks That Purportedly Limit Forever’s Federal Trademark
`Registration Rights Are Immaterial to the Proceeding.
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`Applicant asserts in its Answer that Forever’s “rights in its marks are limited based on the
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`substantial number of third party uses of marks which are similar to those of Opposer.”
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`Applicant identified these “similar” marks as any mark using the word “forever” for goods
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`and/or services in International Classes 9, 36, 39, and 42, irrespective of whether the mark is
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`being used for goods and/or services that relate to the goods and services Forever offers and
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`provides, and has offered and provided for years prior to the application of Forevernote. It is
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`well-established that use of third-party registrations as evidence of a weak mark involves a
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`showing that “the consuming public is exposed to third-party use of similar marks on similar
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`DB2/ 39272069.1
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`goods.” TMEP 1207.01(d)(iii) (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
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`Fondee en 1772, 396 F.3d 1369, 1373-74 (Fed. Cir. 2005)) (emphasis added). That has not been
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`alleged or shown in the affirmative defenses Applicant asserted on their face.
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`Tellingly, none of the marks cited by Opposer on their face can be found as a matter of
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`law to be “relevant,” let alone “similar” to the goods and services at issue in the Application or in
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`any of Forever’s registrations. See, e.g., FOREVER DONUTS, Registration No. 5/308,000
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`(“downloadable mobile game software applications”); 4EVERTEXT, Registration No. 5/350,564
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`(“software for managing, organizing, and storing text messages”); FOREVERCAM, Registration
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`No. 5/449,540 (camera bags, photographic equipment cases, and other physical photography
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`goods); FOREVER PAINLESS, Registration No. 5/451,029 (physical fitness instruction
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`programming and downloadable content); 4EVERCARD, Registration No. 4/976,288 (“software
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`to digitally create, update, and synchronize business cards”); FOREVER, Registration No.
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`5/649,238 and FOREVER WEBSITE, Registration No. 5/638,059 (“[w]ebsite design and
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`development”).1 None of these referenced marks are germane to this proceeding on their face
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`since the goods and services are not related on their face to those at issue in this proceeding.
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`Applicant has failed to allege that any of the marks meets the proper legal standard, rendering the
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`affirmative defenses immaterial.
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`Similarly, Applicant’s defense of monopolization has no place in this proceeding.
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`Forever, has properly alleged its trademark rights in this proceeding whether based on common
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`law or federal registration. Under well-accepted trademark law, it is not necessary to be directly
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`competitive, so long as the Registrant offers related services. Here, Forever has and uses the
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`mark FOREVER for “software that allows for the storage, organization and sharing of electronic
`
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`1 See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1383, (Fed. Cir. 2006) (finding that software-
`related goods may not be presumed to be related merely because the goods are delivered in the same media format;
`rather, the appropriate analysis is based on subject matter).
`8
`DB2/ 39272069.1
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`data and media by others” on the face of its registration. This sharing can be digital and/or
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`through user-created photo albums or other physical items. Thus, this so-called affirmative
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`defense of monopoly fails as a matter of law.
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`Accordingly, Paragraphs 1, 2 and 3 of the Affirmative Defenses should be stricken due to
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`immateriality. The defenses misstate well-established governing law.
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`C. Forever Has Established Its Standing to Oppose
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`Applicant also alleges that Forever has not been damaged as an Affirmative Defense.
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`Affirmative Defense, Paragraph 4. This defense also fails as a matter of law and should be
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`stricken as immaterial. Simply stated, actual harm is not the governing standard for a successful
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`opposition.
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`It has long been held that there is no requirement that actual damage be pleaded and
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`proved in order to establish standing or to prevail in an opposition proceeding. See International
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`Order of Job's Daughters v. Lindeburg & Co., 727 Fed.2d 1087, 220 U.S.P.Q. 1017 (Fed. Cir.
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`1984); Blackhorse v. Pro-Football, Inc., 98 U.S.P.Q.2d 1633, 1638 (TTAB 2011).
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`Through its allegations in the Notice of Opposition including the prior federal
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`registrations for FOREVER formative marks for the same if not related goods and services, the
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`required standard has been met on the face of the Notice of Opposition. Forever properly alleges
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`both its federal registrations all including the FOREVER element, along with its common law
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`rights in other marks and its tradename and domain name “forever.”
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`Accordingly, the affirmative defense of no actual harm is simply immaterial as a matter
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`of law. Thus, the allegations of each of the Affirmative Defense simply have no place in this
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`proceeding.
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`DB2/ 39272069.1
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`9
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`IV. Conclusion
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`In the interest of judicial economy, this Opposition should be suspended pending the
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`outcome of the prior pending litigation and opposition involving Forevernote and Evernote.
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`Alternatively, the opposition should be suspended pending the resolution of this Motion to Strike
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`the Affirmative Defenses. Simply put, Applicant’s so-called affirmative defenses have no place
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`in this proceeding as a matter of law. Accordingly, each of the so-called affirmative defenses
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`should be stricken from Applicant’s Answer as immaterial and impertinent.
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`
`Dated: July 15, 2020
`
`Respectfully submitted,
`MORGAN, LEWIS & BOCKIUS, LLP
`
`
`
`
`
`
`By: /s/ RDA
`Rochelle D. Alpert
`
`Rochelle D. Alpert
`Sharon R. Smith
`Nina R. Dutta
`Morgan, Lewis & Bockius, LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105
`Tel.: (415) 442-1326; Facsimile: (415) 442-1001
`Email: Rochelle.Alpert@morganlewis.com
`
`Sharon.Smith@morganlewis.com
`Nina.Dutta@morganlewis.com
`
`Attorneys for Opposer
`Forever, Inc.
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`DB2/ 39272069.1
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`CERTIFICATE OF SERVICE
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` do hereby certify that on July 15, 2020, I caused a true and complete copy of the foregoing:
`
` MOTION TO SUSPEND AND MOTION TO STRIKE APPLICANT’S
`AFFIRMATIVE DEFENSES (Exhibits A-B)
`
`
`
` I
`
`
`
`to be served via email upon the following:
`
`Lindsay J. Hulley
`RUTAN & TUCKER LLP
`611 Anton Blvd. 14th Floor
`Costa Mesa, CA 92626
`
`trademarks@rutan.com
`
`
`
` /s/ RDA
`Rochelle D. Alpert
`
`
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`DB2/ 39272069.1
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`11
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`

`EXHIBIT A
`EXHIBIT A
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`

`

`Case 3:20-cv-00970-CAB-JLB Document 1 Filed 05/22/20 PageID.1 Page 1 of 11
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`
`
`Michael D. Adams (State Bar No. 185835)
`madams@rutan.com
`Meredith L. Williams (State Bar No. 292888)
`mwilliams@rutan.com
`Sarah E. Gilmartin (State Bar No. 324665)
`sgilmartin@rutan.com
`RUTAN & TUCKER, LLP
`611 Anton Boulevard, Suite 1400
`Costa Mesa, California 92626-1931
`Telephone: 714-641-5100
`Facsimile: 714-546-9035
`
`Attorneys for Plaintiff
`FOREVERNOTE, INC., a Delaware corporation
`
`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
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`
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`FOREVERNOTE, INC., a Delaware
`corporation,
`
`
`Plaintiff,
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`14
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`vs.
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`'20CV0970
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`CAB
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`JLB
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`Case No.
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`COMPLAINT FOR:
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`(1) DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT OF
`TRADEMARK
`
`
`(2) DECLARATORY JUDGMENT
`OF NO UNFAIR
`COMPETITION
`
`
`JURY TRIAL DEMANDED
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`Date Action Filed: May 22, 2020
`Trial Date:
`TBD
`
`
`
`EVERNOTE CORPORATION, a
`Delaware corporation,
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`Defendant.
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`Plaintiff Forevernote, Inc., (“Plaintiff” or “Forevernote”) alleges as follows
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`for their Complaint against Defendant Evernote Corporation (“Defendant” or
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`24
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`“Evernote”).
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`26
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`28
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`NATURE OF ACTION
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`1.
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`This is an action seeking a declaratory judgment under 28 U.S.C.
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`§§ 2201 and 2202 that Plaintiff’s use of the mark FOREVERNOTE for customized
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`keepsake bookmaking services does not constitute trademark infringement of
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`Rutan & Tucker, LLP
`
`attorneys at law
`
`2835/035742-0003
`15072050.2 a05/22/20
`
`
`-1-
`COMPLAINT
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`
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`

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`Case 3:20-cv-00970-CAB-JLB Document 1 Filed 05/22/20 PageID.2 Page 2 of 11
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`Evernote Corporation’s EVERNOTE mark for a note-taking software application
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`under 15 U.S.C § 1114, nor false designation of origin or unfair competition under
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`15 U.S.C § 1125 and/or Business and Professions Code §§ 17200 et seq.
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`JURISDICTION AND VENUE
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`2.
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`This Court has original jurisdiction over the subject matter of this
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`action. Original jurisdiction for any civil action arising under the Lanham Act, 15
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`U.S.C. §§ 1051 et seq., is conferred on this Court pursuant to 15 U.S.C. § 1121(a)
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`and 28 U.S.C. § 1338(a).
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`3.
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`Further, a case of actual controversy within the Court’s jurisdiction
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`exists between the parties concerning their respective trademark rights. The Court is
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`authorized to declare the rights of the parties in this case pursuant to the Federal
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`12
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`Declaratory Judgments Act, 28 U.S.C. §§ 2201-2202.
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`13
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`4.
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`This Court has supplemental jurisdiction over the state law claims
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`under 28 U.S. Code § 1367 (a).
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`5.
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`This Court has personal jurisdiction over Evernote Corporation because
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`Evernote Corporation is, on information and belief, a Delaware corporation, with a
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`place of business in San Diego, California, and has engaged in substantial business
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`activities in the State of California and, specifically, in this judicial district.
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`6.
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`Venue is proper in this judicial district, pursuant to 28 U.S.C. § 1391(b)
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`and § 1391(c), because Defendant is located in this district, and because a
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`substantial part of the events giving rise to the claims alleged herein occurred in this
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`judicial district.
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`THE PARTIES
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`7.
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`Forevernote, Inc., is a Delaware corporation, with its principal place of
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`business located at 2800 28th Street, Suite 302, Santa Monica, California 90405.
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`8.
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`Upon information and belief, Evernote Corporation is a Delaware
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`corporation with a place of business located at 12651 High Bluff Drive, Suite 300,
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`San Diego, California 92130.
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`Rutan & Tucker, LLP
`
`attorneys at law
`
`2835/035742-0003
`15072050.2 a05/22/20
`
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`-2-
`COMPLAINT
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`
`
`

`

`Case 3:20-cv-00970-CAB-JLB Document 1 Filed 05/22/20 PageID.3 Page 3 of 11
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`FACTUAL ALLEGATIONS
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`9.
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`Plaintiff Forevernote was founded in 2019 to create a way for people to
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`turn personal memories into custom keepsake books to be shared and cherished.
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`10. Forevernote’s team of professionals provide a highly personalized
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`service, setting up a fun and convenient phone interview with the customer and/or
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`their loved ones. Based on these interviews and photos provided by the client,
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`Forevernote’s editors and designers turn the stories and images shared into beautiful,
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`high quality print and/or digital keepsake books.
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`11. The entire process is designed around client service, connecting each
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`customer to a real person trained to elicit and recollect personal stories. Plaintiff’s
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`services even include an optional add-on of certified translation to capture memories
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`and stories from non-English speakers. Those stories and the customer’s pictures
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`are then expertly crafted by Plaintiff’s editing and graphics team into a book for the
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`user to treasure and share for a lifetime and even across generations.
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`12. While Forevernote’s services are convenient and affordable compared
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`to competing services (which can charge upwards of $2,000 and/or require more
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`work on the client’s part), the service is a meaningful investment given the level of
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`professional service involved. Specifically, Plaintiff’s packages start with the
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`“Moments” package—available for $199.00—which includes the personal 30-40
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`minute phone interview, an audio recording of that interview, professional
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`transcription and book design, the addition of up to 10 personal photos, and a
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`downloadable digital eBook that is typically 15-20 pages capturing 1-3 short stories.
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`Plaintiff’s highest level package is the “Stories” package—available for $999.00—
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`which includes five 30-40 minutes personal phone interviews (individual or with a
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`loved one), audio recordings of the interviews, professional transcription and book
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`design, the addition of up to 50 personal photos, and a downloadable digital eBook
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`that is typically 60-100 pages capturing 7-10 short stories. As such, consumers
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`carefully consider purchasing Plaintiff’s services.
`
`Rutan & Tucker, LLP
`
`attorneys at law
`
`2835/035742-0003
`15072050.2 a05/22/20
`
`
`-3-
`COMPLAINT
`
`
`
`

`

`Case 3:20-cv-00970-CAB-JLB Document 1 Filed 05/22/20 PageID.4 Page 4 of 11
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`13. On September 17, 2019, Forevernote filed trademark application serial
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`number 88/619,740 based on an intent to use the mark “FOREVERNOTE” (the
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`“FOREVERNOTE Mark”) in connection with these services, i.e. preparing custom
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`print and digital memory books, as well as a downloadable mobile application for
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`clients to use in connection with these highly specialized and customized services.
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`While Plaintiff has since begun using its FOREVERNOTE Mark for its services
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`creating custom print and digital memory book, it has not yet created a mobile app
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`to put clients in touch with its professional interview and book design team.
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`14. On December 12, 2019, Defendant Evernote sent Plaintiff a letter
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`asserting Evernote’s “concern about potential consumer confusion between its
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`software products, including the Evernote App” and the services offered by
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`Forevernote per its application, requesting that Plaintiff abandon its application for
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`the FOREVERNOTE Mark and “[c]ease all current use of” that mark.
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`15. On January 10, 2020, Plaintiff responded to Evernote’s cease and desist
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`request with a letter thoroughly explaining Forevernote’s services and laying out
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`how, in view of the parties’ distinct services, marks, marketing channels, and other
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`relevant factors, there is no likelihood of confusion between the parties’ marks.
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`16. Among other things, Forevernote’s letter pointed out that reasonable
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`consumers will and do readily grasp the difference between Evernote’s note-taking
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`app (designed to help customers keep themselves organized) (the “Evernote App”)
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`and Forevernote’s highly customized and service-driven customer experience,
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`which is designed to craft, preserve, and share life stories. Consumer confusion is
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`thus unlikely in part because of the parties having fundamentally different services.
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`17. Furthermore, Forevernote’s letter responding to Evernote’s stated
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`concern pointed out that consumers will readily ascertain the differences between
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`the parties marks in view of the crowded field of “note”-formative marks for note-
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`taking applications. While the distinctions between Forevernote’s services and the
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`Evernote App would be enough of their own to dispel potential consumer confusion,
`
`Rutan & Tucker, LLP
`
`attorneys at law
`
`2835/035742-0003
`15072050.2 a05/22/20
`
`
`-4-
`COMPLAINT
`
`
`
`

`

`Case 3:20-cv-00970-CAB-JLB Document 1 Filed 05/22/20 PageID.5 Page 5 of 11
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`Forevernote’s letter highlighted over 20 registered trademarks and over 20 notes
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`currently in use for note-taking applications. This crowded field of note-formative
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`marks in use for computer software and apps—which are all far more similar to the
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`Evernote App than are Forevernote’s keepsake book-making services—renders
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`confusion even more unlikely between the parties’ distinct services.
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`18. Forevernote’s letter also pointed out that the parties use their marks in
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`different ways that create highly distinct commercial impressions, providing the
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`following illustration pulled from both parties’ actual use:
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`forevernote
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`.19 Evernote
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`19. Since sending its response letter, Forevernote has further discovered
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`that Evernote, in fact, has a brand style guide that requires using the Evernote in a
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`very particular manner, including capitalizing “Evernote” (whereas both of the “e”s
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`in Plaintiff’s mark are lower-cased), using the “Mads the Elephant” logo mark, and
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`using a particular primary color palette (of green/black) and secondary color palette
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`(of light green/white/gray). A true and correct copy of Defendant’s brand style
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`guide, collected from the Evernote website, is attached hereto as Exhibit A.
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`20. Forevernote does not use a capital “E” in the FOREVERNOTE Mark,
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`does not use the “Mads the Elephant” logo or any confusingly similar design mark,
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`and does not use Evernote’s color palette. Instead, Plaintiff typically uses a soft
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`blue and/or warm red color palette, as shown in the image above and in following
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`logo used by Plaintiff on all of its social media pages (Facebook, Instagram,
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`Linkedin, and Twitter):
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`forevernote·,·
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`Rutan & Tucker, LLP
`
`attorneys at law
`
`2835/035742-0003
`15072050.2 a05/22/20
`
`
`-5-
`COMPLAINT
`
`
`
`

`

`Case 3:20-cv-00970-CAB-JLB Document 1 Filed 05/22/20 PageID.6 Page 6 of 11
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`21. Plaintiff’s trademark application was approved and published by the
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`United States Patent and Trademark Office (“USPTO”) on January 21, 2020. This
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`approval and publication means that the USPTO examining attorney reviewed the
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`existing federal trademark registrations and found no likelihood of confusion
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`between those registrations and Plaintiff’s FOREVERNOTE Mark.
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`22. On January 28, 2020, Evernote filed an opposition to Plaintiff’s
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`application before the USPTO Trademark Trial and Appeal Board (the “TTAB”)
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`based on Defendant’s registrations for the mark EVERNOTE (the “EVERNOTE
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`Mark”) for Defendant’s note-taking software application.
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`23. Defendant’s opposition before the TTAB asserts that Plaintiff’s
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`applied-for FOREVERNOTE Mark used for creating customized keepsake books
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`creates a likelihood of confusion with Defendant’s EVERNOTE mark used for the
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`Evernote App (the “EVERNOTE Mark”). Forevernote answered on March 9, 2020,
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`noting, inter alia, many of the same facts recited in its January 10, 2020 letter
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`showing that consumer confusion