Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1070635
`07/25/2020
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`Filing date:
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's email
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91256359
`Defendant
`Jeanne M. Gregori
`JEANNE M. GREGORI
`295 BENTLEY COURT
`PACHECO, CA 94553
`UNITED STATES
`Primary Email: contact@solvaysafe.com
`Secondary Email(s): projectsolvay@gmail.com
`No phone number provided.
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`Answer
`JEANNE GREGORI
`jgregori.jeannie@gmail.com
`/JEANNE GREGORI/
`07/25/2020
`ANSWER__ON.91256359_NOTICE OF OPPOSITON _GREGORI.pdf(578350
`bytes )
`Motion for Judgement on the Pleadings_no91256359_GREGORI.pdf(158282
`bytes )
`ANSWER_To Notice of Cancellation and Motion to Dismiss_92074480_JEANN
`E GREGORI_25 July 2020.pdf(540675 bytes )
`Motion for Judgement on the Pleadings_no92074480_GREGORI.pdf(87356
`bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`SOLVAY SA
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`Opposer,
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`JEANNE M GREGORI
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`Applicant.
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`July 24, 2020
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`Opposition No. 91256359
`Application Serial No. 88353802
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`ANSWER
`Notice of Opposition
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`ANSWER
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`In the matter for the Application for Registration of the Trademark phrase, SOLVAY SAFE™, as
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`shown in the trademark Application Serial No. 88353802 filed by Ms. Jeanne M. Gregori,
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`(“APPLICANT”), with an address at 295 Bentley Court, Pacheco, California, United States on
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`March 24, 2019, the Application for the trademark phrase published in the Official Gazette on
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`February 2, 2019. Solvay SA (“OPPOSER”) a Belgian corporation with an address at Rue de
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`Ransbeek 310, B-1120 Brussels, Belgium has filed a Notice of Opposition (“NOTICE”).
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`Serial Application Registration No. 88353802 is an Application for a trademark phrase validly
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`filed with the USPTO, March 24, 2019, and which officially published in the Official Gazette on
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`February 18, 2020. OPPOSER (SOLVAY SA), a multi-billion-dollar global company, during the
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`open period for opposition, requested two (2) different generous time extensions stemming from
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`the open opposition period which have been granted, including the first time extension
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`requested by OPPOSER on March 12, 2020 granting an extension until April 18, 2020, and then
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`OPPOSER’S second request for an even more generous 60-day time extension which was
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`granted, leading to the filing of OPPOSER’S NOTICE on 15 June 2020. None withstanding the
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`generous time extensions granted, OPPOSER has failed to state any claim(s) upon which relief
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`can be granted in its NOTICE OF OPPOSITION.
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`However, APPLICANT(GREGORI) is responding to these pleadings and specifically responds
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`this ANSWER to admit or deny all allegations and/or by states there are not enough facts to
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`admit or deny OPPOSER’s allegations contained in the NOTICE. Further, APPLICANT’S
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`ANSWER includes defenses to the allegations, affirmative defenses based on equity relief, and
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`also including the defense that OPPOSER wholly fails to state any claim(s) upon which relief
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`can be granted. Accordingly, APPLICANT files concurrently with the ANSWER, a 12(c) Motion
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`for Judgement on the Pleadings.
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`The following is APPLICANT’S response:
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`1. OPPOSER filed a Notice of Opposition of a validity filed federal trademark application based
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`on the trademark phrase, SOLVAY SAFE™. APPLICANT, JEANNE M GREGORI, responds by
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`this ANSWER, against the Notice of Opposition (“NOTICE”). OPPOSER, in its own NOTICE,
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`admits that it is a Belgian based international company, and by its own website posted facts,
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`showing operations around the world, including in the United States. SOLVAY SA is the goliath
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`in this matter based on its billion-dollar global sales and holds a dominate position in the market,
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`while having great resources, including a large named legal team of 5 between in-house legal
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`counsel and an outside counsel law firm assigned to this file.
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`2. OPPOSER concurrently filed a PETITION FOR CANCELLATION (Cancellation No.
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`92074480) on one of GREGORI’S validly federally registered marks, PROJECT SOLVAY®
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`(Registration No. 5725016) which registered more than one-year ago on April 16, 2019. During
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`the opposition time period on this mark, SOLVAY SA did not file any opposition. Then suddenly
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`more than one year later, filed a PETITION concurrently with the NOTICE of Opposition on the
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`application for a new mark phrase, SOLVAY SAFE™ (contained in Application Serial No.
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`88353802). SOLVAY SA’S lack of diligence and failure to file any opposition to the first in time
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`registered trademark phrase, PROJECT SOLVAY® has caused GREGORI’S reliance on her
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`federally issued trademark, PROJECT SOLVAY®, upon which she relies in furthering her work,
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`services and goods and all actions and business activities, business reputation and goodwill,
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`among other actions, and which caused her to make her filing for the trademark phrase,
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`SOLVAY SAFE™.
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`3. APPLICANT invokes the Doctrine of Laches based on OPPOSER’s lack of diligence and
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`activity in making its opposition known to GREGORI. Indeed, in its filing of its NOTICE of
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`Opposition on the trademark phrase, SOLVAY SAFE™, OPPOSER even dallied on any alleged
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`enforcement of its rights and kept asking for generous time extensions, even though OPPOSER
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`is a billion-dollar goliath and boasts a legal team of 5 named lawyers on this file, with an outside
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`counsel law firm named in its entirety as ‘one’ of the lawyer resources on this file. Coupled with
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`OPPOSER’S complete lack of action and sleeping on its rights in not having filed any opposition
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`on the PROJECT SOLVAY® trademark phrase caused APPLICANT to rely on the validity of her
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`registered trade mark phrase (Registration No. 5725016), which led her to file her current
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`application which OPPOSER, through its dilly-dallying has further caused it to be pending and
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`faced with a Notice of Opposition. Due to APPLICANT’S reliance on her registered mark,
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`(Registration No. 5725016) the current Application Serial No. 88353802 are so closely related
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`as to be intertwined in working together in tandem in growing business, and providing goods
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`and services, including having established solid goodwill and reputation. OPPOSER’s lack of
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`action is an (1) unreasonable delay in the assertion of OPPOSER’s rights against another; and
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`(2) causes material prejudice to APPLICANT attributable to that delay and which was relied
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`upon by APPLICANT.
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`4. APPLICANT further asserts against OPPOSER the affirmative defense of Estoppel By
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`Acquiescence. On 18 May 2020, APPLICANT received an email from SOLVAY SA, who self-
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`identified as the Company Lawyer, Intellectual Assets Management, Head Trademarks and EU
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`Admin Support, directing APPLICANT to “turn over” her PROJECT SOLVAY®, domain name.
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`These communications took place during the opposition period for PROJECT SOLVAY®, which
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`occurred first in time and before APPLICANT filed her present Application Serial No. 88353802,
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`which is the matter concerning the NOTICE on OPPOSITION. GREGORI discussed with the
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`Company Lawyer that PROJECT SOLVAY®, is a humanitarian, international pro-bono start-up
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`to prevent human trafficking and intends to continue with its work, and stated that there was no
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`legal conflict or issue involved necessitating a domain name transfer, when the trademark had
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`published in the register. Later GREGORI even sent an email beyond having initiated the call
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`and discussion concerning the filed and published trademark.
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`5. Clearly if there were opposition and not acquiescence, a reasonable person would have filed
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`an opposition during the open time intended for filing a trademark opposition. GREGORI relied
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`on the fact of SOLVAY SA’s acquiescence. There is no excuse for non-action, during the
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`appropriate time when action should have been taken, as we certainly know by OPPOSER’s
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`behavior by the facts that it requested not one, but two extensions to file its NOTICE, showing
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`that OPPOSER, well knows how to request and be granted generous time extensions if it had
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`intended to file any opposition to, PROJECT SOLVAY®, and did not act. Stemming from that
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`failure of not acting, APPLICANT filed for its trademark phrase, SOLVAY SAFE™, and is is
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`continuing to build business reputation, good will, and working and collaborating with
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`government officials, dignitaries, along diplomatic channels and to grow commercially.
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`6. While OPPOSER's mark “SOLVAY” is senior in time, OPPOSER cannot monopolize the
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`International Classes to new entrants. SOLVAY SAFE™, Application Serial Number 88353802
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`is narrowly and specifically defined and filed as, “Providing temporary use of online non-
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`downloadable computer software accessible to authorized users through a web-based portal for
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`reporting human trafficking information and data and featuring a software template to input the
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`information and data for dedicated program reporting purposes; Providing an online non-
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`downloadable Internet based system application featuring technology enabling users to report
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`on human trafficking by inputting text and data which can be collected, stored and maintained in
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`the system application.”
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`7. Whereas, the ‘SOLVAY’ mark, clearly states it provides, “Scientific and technological services
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`and research and design relating thereto, namely, scientific research, analysis, testing, industrial
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`research, chemical research, biological research, cosmetic research, environmental protection
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`research, technical research, industrial design, and packaging design services in the fields of
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`chemistry, energy, engineering, recycling and environmental sciences; industrial analysis and
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`research services in the field of chemistry, energy, engineering, recycling and environmental
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`sciences; technical project studies, namely, conducting of feasibility studies in the fields of
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`chemistry, energy, engineering, recycling and environmental sciences; surveying being
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`engineering work; testing of materials; design and development of computers and software;
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`engineering services in environmental engineering; technical measurements and research with
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`a view to establishing technical reports and installation condition reports in the field of chemistry,
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`energy, engineering, recycling and environmental science and quality control services
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`consisting of technical reports on facilities, measurements and status reports for others.”
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`8. On its face and from the plain language of both trademarks, and classes in which they filed,
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`APPLICANT’S services and goods provided are not the same and are not even remotely similar
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`to the scientifically-based goods and services that OPPOSER, a chemical company is provides.
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`Indeed, no conflict or confusion can be alleged based on the plain English language of
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`APPLICANT’S filing application. There is clearly a tremendous difference in the goods and
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`services being provided. OPPOSER, though it holds a senior mark, again, cannot abuse its
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`dominate market position, to exclude new entrants from the market as represented through the
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`international classes. Such actions, would be acting against competition norms, and would be
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`attributable to OPPOSER action’s to if its NOTICE is sustained.
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`9. APPLICANT denies OPPOSER’s allegation in NOTICE no. 11 that both marks are
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`‘identical.” First and foremost, the marks are clearly different from each other. APPLICANT has
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`a different mark from OPPOSER, but OPPOSER intentionally referred to APPLICANT’S mark
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`as “SOLVAY’ in the NOTICE. This is misleading and incorrect. That is not APPLICANT’S mark.
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`The marks are different and on their face are not even ‘identical.’ (See NOTICE n.11)
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`OPPOSER clearly and in plain English has a one-word trademark, with the combination of letter
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`as, “SOLVAY.” APPLICANT’S Serial Application for its trademark, is a trademark phrase,
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`consisting of two words, “SOLVAY SAFE™.” The two marks are different and distinct
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`trademarks. Further, each has its own website, domain and such other indices of doing
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`business, as to show they are different. In particular, OPPOSER has its own unique logo and
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`colors, associated with its one-word mark. While visually, even on first sight, the one-word
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`trademark and mark phrase look different and not the same.
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`10. APPLICANT denies OPPOSER allegations contained in NOTICE numbers 15 & 16 alleging
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`that OPPOSER “became famous” and “dilution by blurring”. These allegations are attempting to
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`hint at a claim based on Dilution. To be clear, there is no Dilution by blurring, Trademark Act
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`Sections 14(1) and 43(c). (See NOTICE n. 15) However, OPPOSER fails to allege a claim on
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`which any relief may be granted. OPPOSER fails to show it has standing to even assert a claim
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`of Dilution by blurring under the relevant Trademark Act Section. (See NOTICE no. 16)
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`OPPOSER wholly fails to state or establish that its mark is “famous” to the degree required to
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`have standing to assert Dilution. In order to have standing to even assert the broader protection
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`given to a mark-holder under Dilution by blurring, the mark-holder must establish that its mark
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`is “famous.” Under the Trademark Dilution Revision Act (TDRA), for a mark to be considered
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`famous, it must have achieved extensive public recognition, which generally means that the
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`mark is instantly recognizable and is a household name. For instance, marks such as Pepsi,
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`Ferrari, Coca-Cola, IKEA, Sony, and Nike are instantly recognizable and are described as being
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`household names in the global community, and would, therefore quality as famous marks
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`meeting the threshold for standing under the TDRA. In the United States, a mark must be widely
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`recognized by the general consuming public to be considered famous. Given that fame is not
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`static, an owner must prove that a trademark is famous at the moment a dilution claim is made,
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`which OPPOSER has wholly failed to do.
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`11. The TDRA provides four factors that courts are to consider in determining a mark’s fame: (1)
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`the duration, extent, and geographic reach of advertising and publicity of the mark, whether
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`advertised or publicized by the owner or third parties; (2) the amount, volume, and geographic
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`extent of sales of goods or services offered under the mark; (3) the extent of actual recognition
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`of the mark; and (4) whether the mark was registered. Importantly, the TDRA has effectively
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`shrunk the class of marks that can be considered “famous.” This is because “regional or niche
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`fame” ( . . .) does not qualify under the TDRA. OPPOSER has not spoken to any of these
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`factors to show a basis for standing to assert Dilution by blurring protection.
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`12. OPPOSER simply states in its NOTICE that it has “multinational operations in 62 countries,
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`including throughout the United States.” … but fails to say what fame it may enjoy in the United
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`States specifically in communities where its mark is allegedly “famous,” such as even through a
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`showing of sales, or market share in relevant markets where it is claiming there is allegedly
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`‘dilution’ in relation to any of its products or services under its mark. Perhaps OPPOSER may
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`have ‘niche fame’ as it says it, “employs its scientific, technical and commercial expertise to
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`responsibly provide innovative products and services related to chemistry and human health,” in
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`its NOTICE, but that is not enough to establish that it is famous under the TDRA requirements.
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`The NOTICE states, “OPPOSER is well known as being among the world leaders in several
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`commodity chemicals, including soda ash, hydrogen peroxide, persalts, barium and strontium
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`carbonate, and caustic soda, as well as such specialty chemicals as fluorochemicals.” None
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`withstanding, none of these generic terms even raise to the level of fame and at best generically
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`describe a bunch of different products that do not speak for themselves as famous household
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`names globally known.
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`13. For all the foregoing grounds just stated in response nos. 10-12 stated above, APPLICANT
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`denies OPPOSER’s assertion that “As a result of its distinctiveness and widespread use and
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`promotion throughout the United States, OPPOSER's SOLVAY name and mark is a famous
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`trademark within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), and it
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`became famous.” OPPOSER has failed to establish it is household famous and has wholly
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`failed to establish the grounds on which it has standing to even assert a claim of dilution, which
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`requires for standing the showing of ‘famous’ and ‘distinctiveness’. And certainly, one cannot
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`simply say in its pleading, “it became famous” as the basis for establishing it is famous. Indeed,
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`if one says the household name, Coca Cola, it has household consumer fame, as does the
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`FERRARI mark. OPPOSER’s has not shown that it has this same level of household consumer
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`fame required to have standing to assert a Dilution claim. SOLVAY is certainly no Coca Cola.
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`14. However, arguably assuming OPPOSER did state the grounds on which it has standing to
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`assert dilution by blurring, which it does not, but assuming arguendo, dilution by blurring further
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`requires the mark-holder to prove its mark has distinctiveness, as dilution by blurring weakens
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`the distinctiveness of a famous mark, such as of a third-party’s use of the Rolls-Royce mark for
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`toothpaste. (See INTA 19 May 2020 Fact sheet: Protecting a Trademark). OPPOSER has failed
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`to show its trademark has distinctiveness, and further, has diluted its own trademark SOLVAY.
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`Indeed, OPPOSER has water-downed its own mark including by its own multiple separate live
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`trademarks filed on “S SOLVAY” (Serial nos. 79138123; 76135354), on the trademark,
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`“SOLVAY Dental 360” Serial no. 79202628, and multiple live trademark filings for its “SOLVAY”
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`mark, Serial nos. 76135353; 79134531, giving it over 24 separate simultaneous and different
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`International Classes to SOLVAY and with over 4,200 words describing SOLVAY goods and
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`services. (See generally SOLVAY and SOLVAY SA filings in the UPSTO, TESS Database).
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`While not one word in its NOTICE stating on what grounds “SOLVAY” is famous and not one
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`word on what grounds it is basing the distinctiveness of its mark. Very much unlike when one
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`hears the household famous marks and one says, hey there’s a Ferrari, or asks for a Coca-
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`Cola, one knows instantly the household fame and distinctness of the mark. Not so when
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`someone says the word, SOLVAY.
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`15. The “SOLVAY” mark does not enjoy exclusivity, or ownership over other usages of the letter
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`combination, SOLVAY, as further seen through a basic internet search. Moreover, the internet
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`shows clear dilution and non-distinctiveness of the combination of letters, “SOLVAY”, including
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`when SOLVAY SA sold their product to Abbot labs, watering down the SOLVAY name by
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`attaching it to other ventures, as Abbot labs retains the name, SOLVAY. Other world usages are
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`not owned by SOLVAY SA and include use of the set of letters, SOLVAY in reference to a
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`SOLVAY town, to people including published author(s) musician(s) and designer(s), musical
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`albums, hotel, fire department, other businesses to streets in the United States named
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`SOLVAY.
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`16. There are bunches of users using the letter combination “SOLVAY”, as this is a very popular
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`name, including as Solvay Albums, Solvay Books, Solvay NY, Solvay Fire Department Inc.,
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`Carole Solvay: to Move Without Noise (English and French Edition); “Solvay by Nocrows”;
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`Solvay Library; Solvay Library – Edificio; Solvay Public School; Solvay Firefighter;
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`Solvay Pharmaceuticals (a division SOLVAY sold to Abbot labs that carries the term, Solvay);
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`Village of Solvay; 1100 Woods Rd Solvay, NY 13209; “Solvay Society” which is a beer
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`brewery; a street name in California: 1002 Solvay Aisle, Irvine, CA; HOTEL SOLVAY;
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`Solvay Bank; designer, Tabouret Solvay; a famous tenor singer: Piccola Solvay; a genre of
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`exploitation horror movies by director Paul Solvay; La Théorie Du Rayonnement Et Les Quanta:
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`Rapports Et Discussions de la Réunion Tenue À Bruxelles, Du 30 Octobre Au 3 Novembre
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`1911, Sous Les Auspices de M.E. Solvay (French Edition) and “Solvay Conferences” which are
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`science, the word is not generic to the physics councils, and is not a term for chemical
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`companies, The French term, Conseil Solvay, is usually translated into English
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`as Solvay Conference or Congress. (See Annex 1, Non-exclusive use of SOLVAY and
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`including domain/website links using the word, SOLVAY)
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`17. OPPOSER sates, “that it engages in forms of corporate philanthropy that is principally
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`directed to educational, scientific and humanitarian endeavors in the United States and around
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`the globe.” (See NOTICE n.5) APPLICANT cannot deny or agree with this assertion as
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`OPPOSER fails to state with specificity examples and/or relevance of this general assertion to
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`the NOTICE, while admitting further watering-down of its mark and lack of distinctiveness and/or
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`exclusivity to allegedly cover these 3 named sectors while it has never filed its mark for
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`‘humanitarian endeavors’.
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`18. OPPOSER, states in the NOTICE, “at the corporate level, concentrates its philanthropic or
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`funding efforts in numerous areas, including support to humanitarian initiatives in reaction to
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`certain disasters and/or where its products or services are of particular value.” (See NOTICE
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`no.6) APPLICANT cannot agree or disagree with this assertion as OPPOSER fails to state with
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`specificity details or examples and/or relevance of this assertion to the NOTICE. Instead,
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`OPPOSER’s assertion further shows its own further dilution of its SOLVAY mark by asserting
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`SOLVAY extends to other sectors in which it has never filed its mark, “SOLVAY”.
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`19. OPPOSER states, “Beyond OPPOSER's philanthropy at the corporate level, each Solvay
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`site, including those in the United States, engages in projects supporting the communities in
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`which it operates.” (See NOTICE n.7) APPLICANT cannot agree or disagree with this assertion
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`as OPPOSER fails to state with specificity relevance of this to the NOTICE and fails to provide
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`specific detail or to even name which communities and/or projects it purports to support.
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`Instead, this further assertion by OPPOSER water downs and continues to dilute its mark and
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`any distinctiveness and/or exclusivity by its assertion that the SOLVAY mark extends as well to
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`other sectors in which it has never filed its mark, “SOLVAY”.
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`20. APPLICANT denies OPPOSER’s allegation in allegations contained in nos. 12-14 that
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`APPLICANT’S “use and registration” of the alleged mark SOLVAY SAFE™ “is likely to
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`…confuse consumers” … of the source of where services “emanate” from/and or “affiliation” and
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`may “deceive consumers and the public.” (See NOTICE nos. 12-14). APPLICANT’S trademark
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`does not suggest a false connection to someone or something famous, Section 2(a) of the
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`Trademark Act. First, OPPOSER fails completely to state the grounds required in order to have
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`standing to assert the claim, “False Connection”, and simply lists this claim by flagrantly tossing
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`it into its laundry list of claims under its NOTICE. Moreover, the trademark phrase, SOLVAY
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`SAFE™, is different than OPPOSER’s mark and provides different services than those affiliated
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`with, and emanating from, the SOLVAY chemical company.
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`21. However, assuming for arguments sake, that OPPOSER has standing to allege a Claim
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`based on ‘false suggestion,’ which it does not, OPPOSER has failed to plead any showing of
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`the needed factors, to show any alleged false connection.
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`22. For asserting a claim based on false connection, OPPOSER first has failed to even assert
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`facts on knowing who is the “famous” person and the false connection therefrom. Though
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`Trademark law is to prevent a likelihood of consumer confusion between products’ brand names
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`(Trademark Act Sec. 2(d), 15 U.S.C. § 1052(d)), on the face of NOTICE, ‘SOLVAY’ has not
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`been shown to have exclusivity, and/or a famous distinctiveness (See also ANSWER Reponses
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`nos. 10-16). The trademark phrase, SOLVAY SAFE™, does not make a false suggestion as it is
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`not misusing a person’s name or invading any privacy issue. Just like as found in the University
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`of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372 (Fed. Cir. 1983), the
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`use of the term, ‘Notre Dame’ and design of cheese did not falsely suggest a connection with
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`the University of Notre Dame, as the term, ‘Notre Dame’ is not a name solely associated with
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`the University. The case went on to find, that it cannot be said that the “only person” which the
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`name possibly identifies is the University and that mere use of ‘Notre Dame’ by another
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`appropriates its identify.
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`23. Just as the word, ‘SOLVAY’ is not a name associated solely with any one person,
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`particularly as APPLICANT has clearly shown that the word, SOLVAY, is a very popular name
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`and refers to many different things, including: people, businesses, albums, books, a street, beer
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`brewery, a hotel, schools, library, among others, as well as to: Solvay Dental 360, S. Solvay,
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`Solvay American Inc., and all these bunches of usages clearly do not refer solely to one “only
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`person.” (See APPLICANT’S ANSWER nos.15-16, non-exclusivity of the popular name,
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`“SOLVAY”). Moreover, SOLVAY in its trademark for SOLVAY, has filed over 4,200 words
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`describing what is SOLVAY, and filings in over 24 international classes. Indeed, not one of the
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`4,200 words or 24 classes, relate specifically to identify ‘solely one person’. Thereby, if any false
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`suggestion is created, it is by OPPOSER’S own usage and/or through trademark filings on the
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`mark, SOLVAY.
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`
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`24. APPLICANT denies OPPOSER’s allegations made generally through numbers 12-14 on
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`the allegation that APPLICANT’S use and registration of the registered trademark, SOLVAY
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`SAFE™ “may causes confusion” (See NOTICE generally nos.12-14). APPLICANT’S use of its
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`registered trademark phrase does not cause confusion or deceive consumers and/or the public
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`about the affiliation or association of SOLVAY SAFE™ with the OPPOSER, and its mark, and
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`therefore does not violate Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). There is no
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`likelihood of confusion. Further, OPPOSER again wholly fails to show any of the grounds on
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`which to base any claim(s) of confusion which as the moving party, it has the burden to show.
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`While OPPOSER may have shown it has priority and is the owner of the registered mark,
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`SOLVAY, in addition to standing and priority, under Section 2(d) of the Trademark Act, in order
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`to prevail on a “likelihood of confusion” claim, OPPOSER must establish the likelihood of
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`confusion factors that are then analyzed by the U.S. Trademark Trial and Appeal Board to
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`weigh. OPPOSER has not provided the grounds on which to support even one of the relevant
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`factors. Factors include a comparison of the parties' marks in relation to the:
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`• Similarity of the marks
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`• Similarity of the goods or services
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`• Similarity of the trade channels
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`• Evidence of actual confusion, if any
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`• Fame of the prior mark
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`• Number of similar marks in use on similar goods
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`• Conditions under which purchases are made
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`And may include other relevant factors relied upon by the Board.
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`
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`25. Consumers are not likely to be confused that APPLICANT’S services and goods offered
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`under name phrase, SOLVAY SAFE™, are just what they purport to be, goods and services
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`being offered by SOLVAY SAFE™. Further, by OPPOSER’S own assertions, it describes
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`specifically goods which SOLVAY provides, which are not at all the same goods and services
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`provided by SOLVAY SAFE™, and moreover, are not even mentioned or included as part of
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`APPLICANT’S Serial Application No. 88353802. Whereas, SOLVAY’S leading main filing class
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`is always as Chemicals used in industry, science, and OPPOSER’S clearly admits in its
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`NOTICE and states, “OPPOSER is well known as being among the world leaders in several
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`commodity chemicals, including soda ash, hydrogen peroxide, persalts, barium and strontium
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`carbonate, and caustic soda, as well as such specialty chemicals as fluorochemicals.” (See
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`NOTICE n.3,)
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`
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`26. APPLICANT reiterates that though SOLVAY SA is a billion-dollar admitted goliath, on the
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`basis and in the spirit of general competition law, it cannot abuse its dominant position in the
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`market to prevent and/or exclude new and other entrants from being in the same markets,
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`represented through the international class filings, and certainly, it cannot attempt to monopolize
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`all the International Classes which represent various market sectors claiming exclusivity in all
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`sectors, resulting in the exclusion of new entrants, which is exactly how it would be acting, and a
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`direct result of OPPOSER’S NOTICE, if the SOLVAY SAFE™ trademark phrase is not allowed
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`to officially issue and register as a trademark, as put forward in APPLICANT’S Application Serial
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`No. 88353802.
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`27. Indeed, Consumers are sophisticated, though OPPOSER seems to be implying that they
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`may be “dumbfounded,” when OPPOSER alleges consumers “will likely be confused” without
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`proving or even showing any alleged confusion. (See NOTICE n.13, Notice) Further, both marks
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`have completely separate websites, domain names, About Us sections and a simple reading of
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`the plain English such as on the SOLVAY SAFE™ website, under ABOUT US, section states, it
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`is an “independent technology start-up,” lists it Executive Director and address, which are
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`clearly different and not the same and distinguished from SOLVAY, as is its About Us section.
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`Clearly, not dumbfounding, and certainly no cause for confusion. (See Annexes 3 & 4, Pages
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`28; 29). And certainly we have seen just how popular the word, ‘SOLVAY’ is and with all the
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`uses by others—using it to refer to books, businesses, people, albums, places and in
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`addresses, and so on, as well as the non-exclusive use of the SOLVAY name seen through a
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`broad range of various websites, and website addresses, and such non-exclusive use is no
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`different than the use by SOLVAY SAFE™.
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`
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`28. APPLICANT denies OPPOSER’s allegation NOTICE no. 14 that there would be “resulting
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`damage and injury” to OPPOSER, should the SOLVAY SAFE™ register. First, OPPOSER has
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`failed to state any grounds on which a claim for relief can be granted with the assertion on a
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`claim of the likelihood of confusion. However, if we arguably presume, there is ‘confusion’, as
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`alleged by OPPOSER, and further as alleged, assumed then “confusion” among consumers
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`“resulting in damage and injury” to OPPOSER, (See NOTICE n.14) still OPPOSER utterly
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`fails to state what this alleged damage and injury is, or would be. Moreover, HOTEL SOLVAY,
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`and S SOLVAY, and SOLVAY DENTAL 360, all use the term, SOLVAY, if someone accidentally
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`mis-took SOLVAY as an organization with humanitarian motives as part of its services and/or
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`goods, what harm could such good humanitarian acts possibly cause to hurt their reputation.
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`Indeed, how would doing humanitarian focused work or services “hurt” SOLVAY’S reputation.
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`Indeed, for arguments sake, we could say it’s quite the opposite, SOLVAY SAFE™ through its
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`core services and work, even if it were to be accidentally mistaken with a chemical company, is
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`contributing positively on humanitarian issues. None withstanding, OPPOSER has wholly failed
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`to show any grounds on which to base any alleged claim of confusion and to show any proven
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`basis for its sweeping allegation claiming “damage and injury” would result.
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`
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`29. APPLICANT asserts in defense that OPPOSER’S NOTICE fails to state any claims upon
`which relief can be granted. (Fed. R. Civ. P. 12(b)(6)). APPLICANT’S ANSWER shows this
`and that OPPOSER has failed to state any claim(s) upon which relief can be granted in its
`NOTICE for Opposition. As OPPOSER, in its NOTICE for Opposition, fails to state any claim
`upon whi