Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1082068
`09/15/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91256384
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`United Cerebral Palsy, Inc.
`
`BRIAN J WINTERFELDT
`WINTERFELDT IP GROUP
`1601 K STREET NW
`SUITE 1050
`WASHINGTON, DC 20006
`UNITED STATES
`Primary Email: trademarks@winterfeldt.law
`Secondary Email(s): brian@winterfeldt.law, david@winterfeldt.law, ipdocket-
`ing@winterfeldt.law
`207-759-5833
`
`Submission
`
`Motion for Summary Judgment
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 04/07/2021
`
`Brian J. Winterfeldt
`
`Brian@winterfeldt.law, internet@winterfeldt.law, David@winterfeldt.law
`
`/Brian J. Winterfeldt/
`
`09/15/2020
`
`Memo of Law in Support of Motion for Partial Summary Judgment.pdf(433944
`bytes )
`Statement of Undisputed Facts in Support of Motion for Partial Summar y
`Judgement.pdf(140967 bytes )
`Rome Decl in Support of Motion for Partial Summary Judgment.pdf(103292
`bytes )
`Exhibits A-F.PDF(3465821 bytes )
`Certificate of Service in Support of Motion for Partial Summary Judgm
`ent.pdf(80773 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No.: 91/256,384
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`In the Matter of Application Serial No. 79/214,470
`Published in the Official Gazette on February 11, 2020
`
`United Cerebral Palsy, Inc.,
`
`
`
`
`
`Bernardo Moya,
`
`
`
`
`
`
`Applicant
`
`
`
`SUPPLEMENTAL MEMORANDUM OF LAW IN SUPPORT OF
`OPPOSER’S MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`Opposer United Cerebral Palsy, Inc., respectfully submits this supplemental memorandum
`
`of law in support of its motion for partial summary judgment as to Count III of its Notice of
`
`Opposition pursuant to Rule 56(e) of the Federal Rules of Civil Procedure and Rule 2.116 of the
`
`Trademark Rules of Practice. Fed. R. Civ. P. 56; 38 CFR § 2.116. This memorandum, along with
`
`the supplemental evidence, declaration and briefing submitted herewith, are filed pursuant to the
`
`Board’s Orders dated August 20 and 21, 2020, converting Opposer’s Motion for Judgment on the
`
`Pleadings under Rule 12(c) of the Federal Rules of Civil Procedure. 6 TTABVUE 2; 9 TTABVUE
`
`2. Opposer requests that the Board sustain the Opposition and refuse registration of the mark B
`
`THE BEST YOU LIFE WITHOUT LIMITS (Stylized) (“Applicant’s Opposed Mark”), which is
`
`the subject of Application Serial No. 79/214,470 (the “Application”), in Classes 9, 16 and 41.
`
`PRELIMINARY STATEMENT
`
`As explained in Opposer’s Motion for Judgment on the Pleadings, Opposer respectfully
`
`requests that the Board determine whether two versions of Applicant’s mark make the same,
`
`

`

`continuing commercial impression, in which case the Board may simply sustain the Opposition as
`
`to nearly all of the Classes in the Application. The Applicant previously sought registration
`
`covering slightly broader rights in its mark with respect to a narrower set of goods and services
`
`(the “Abandoned Application”). Opposer timely and successfully opposed the Abandoned
`
`Application in opposition number 91/220,915 (the “Prior Opposition”). The Applicant here seeks
`
`registration covering slightly narrower rights in the same mark with respect to a broader and
`
`overlapping set of goods and services. Consequently, Opposer has been forced to bring the same
`
`claims based on the same underlying facts as in the Prior Opposition. The Applicant has admitted
`
`all of this, except that the marks are the same. The Board is well equipped, however, to make that
`
`determination for itself. Neither the Board nor Opposer should be forced to expend resources on a
`
`dispute that has already been litigated. Applicant is not entitled to a second bite at the apple.
`
`Granting this motion will resolve the majority of the issues in this Opposition. Opposer respectfully
`
`submits that basic principles of law and equity weigh strongly in its favor and requests that the
`
`Board hold that its prior judgment regarding likely confusion and dilution as to Classes 9, 16 and
`
`41 bars re-litigation of the same claims here.
`
`ARGUMENTS
`
`I. OPPOSER IS ENTITLED TO SUMMARY JUDGMENT AS TO RES JUDICATA BY CLAIM
`PRECLUSION
`
`It is appropriate for the Board to grant Opposer’s motion for summary judgment as to
`
`Classes 9, 16 and 41 based on Count III of the Notice of Opposition for res judicata by claim
`
`preclusion. Rule 56(a) of the Federal Rules of Civil Procedure provides that summary judgment
`
`shall be granted if the movant shows that there is no genuine dispute as to any material fact and
`
`the movant is entitled to judgment as a matter of law. See Virgin Islands Port Auth. v. United
`
`States, 922 F.3d 1328, 1333 (Fed. Cir. 2019). A factual assertion is “material” when it is capable
`
`2
`
`

`

`of affecting the substantive outcome of the litigation. Sci. Drilling Int'l, Inc. v. Gyrodata, Inc.,
`
`Opp. Nos. 91/159,448, 91/159,448, 8 TTABVUE 5 (TTAB. 2004). A dispute is “genuine” only if
`
`the supported by sufficiently admissible evidence such that a reasonable trier-of-fact could find
`
`for the nonmoving party. See Morgan v. Federal Home Loan Mortg. Corp., C.A.D.C.2003, 328
`
`F.3d 647 (Fed. Cir. 2003), (“A dispute is “genuine,” for purposes of summary judgment, only if
`
`the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”)
`
`Applicant’s Answer left no genuine dispute of material fact to be resolved regarding the
`
`claim preclusion pled by Opposer and Applicant’s registration constitutes a collateral attack on the
`
`Board’s final judgment in the Prior Opposition. Opposer respectfully submits that it is entitled to
`
`a judgment as a matter of law as to claim preclusion and requests that registration of the
`
`Application be refused as to Classes 9, 16 and 41.
`
`II. REGISTRATION OF THE APPLICATION IS PRECLUDED BY A PRIOR JUDGMENT ON THE
`MERITS IN AN OPPOSITION TO THE SAME MARK UNDER THE SAME CLAIMS BETWEEN THE
`SAME PARTIES, WHICH APPLICANT SEEKS TO ATTACK HERE
`
`Res Judicata by claim preclusion, as pled in Count III of the Notice of Opposition, bars
`
`relitigation of Counts I and II as they apply to Classes 9, 16 and 41, which were previously litigated
`
`to the Board by the same parties to a final judgment. Section 19 of The Lanham Act specifically
`
`states that “[i]n all inter partes proceedings equitable principles . . . may be considered and
`
`applied.” 15 USC § 1069. Res judicata is a judicially created doctrine that the Board has adopted
`
`as governing its proceedings. See Foodland, Inc. v. Foodtown Super Markets, Inc., 138 USPQ 591,
`
`593 (TTAB 1963) (citing Vitaline Corp. v. Gen. Mills, Inc., 891 F.2d 273, 274–75 (Fed. Cir.
`
`1989)). It can flow from an inter partes decision by the Board if there is: (1) an identity of parties;
`
`(2) an earlier final judgment on the merits of a claim; and (3) the second claim is based on the
`
`same set of transactional facts as the first. Standard Int’l Mgmt., LLC, v. One Step Up, LTD, Opp.
`
`No. 91/243,645, 14 TTABVUE 5 (TTAB 2019) (citing Jet, Inc. v. Sewage Aeration Sys., 223 F.3d
`
`3
`
`

`

`1360, 1362 (Fed. Cir. 2000)). Claim preclusion operates against a defendant if its claim or defense
`
`is a collateral attack on a prior judgment Nasalok Coating Corp. v. Nylok Corp., 522 F.3d
`
`1320,1324 (citing Baker v. Gold Seal Liquors, Inc., 417 U.S. 467, 469 (1974)).
`
`A. The Parties in this Opposition and the Prior Opposition are Identical
`
`The parties in this Opposition and the Prior Opposition are identical. See Supplemental
`
`Statement of Undisputed Facts In Support of Opposer’s Motion for Partial Summary Judgment,
`
`submitted herewith, (“SUF”) ¶ 1; compare Supplemental Declaration of David Rome in Support
`
`of Opposer’s Motion for Partial Summary Judgment dated September 15, 2020, submitted
`
`herewith, (“Rome Declaration”), Ex. A with 1 TTABVUE 1. Therefore, there is no genuine dispute
`
`of material fact as to the first element of claim preclusion.
`
`B. Final Judgment on the Merits was Rendered in the Prior Opposition
`
`The Board rendered a final judgment on the merits sustaining the Prior Opposition and
`
`refusing registration of the Abandoned Application. See SUF ¶ 6, Rome Decl., Ex. E. “[W]hether
`
`the judgment in the prior proceeding was the result of a dismissal with prejudice or even default,
`
`for claim preclusion purposes, it is a final judgment on the merits.” The Urock Network, LLC v.
`
`Sulpasso, 9 TTABVUE 6, 115 USPQ2d 1409 (TTAB 2015) (holding that dismissal for failure to
`
`prosecute is a final judgment on the merits for the purposes of claim preclusion); see also Morris
`
`v. Jones, 329 US 545, 550-51 (1947) (holding that “[a] judgment of a court having jurisdiction of
`
`the parties and of the subject matter operates as res judicata, in the absence of fraud or collusion);
`
`Maksimuk v. Connor Sport Court Int’l, LLC, 771 Fed. Appx. 1001, 1004 (Fed. Cir. 2019), cert.
`
`denied, 140 S. Ct. 906, 205 L. Ed. 2d 460 (2020), reg. denied, 140 S. Ct. 2557, 206 L. Ed. 2d 490
`
`(2020) (holding that “[c]laim preclusion can apply against the defendant even if the first judgment
`
`was a default judgment”); La Fara Importing Co. v. F. Lli de Cecco di Filippo Fara S. Martino
`
`S.p.a., 8 USPQ 2d 1143, 1146 (TTAB 1988) (holding that “[i]ssue preclusion operates only as to
`
`4
`
`

`

`issues actually litigated, whereas claim preclusion may operate between the parties simply by
`
`virtue of the final judgment”). The Board entered a default judgment against Applicant in the Prior
`
`Opposition. See SUF ¶ 6, Rome Decl., Ex. E. It is well established that a default judgment is a
`
`judgment on the merits for the purpose of claim preclusion by res judicata and Applicant’s legal
`
`argument to the contrary cannot create an issue of material fact. See 4 TTABVUE 5 ¶¶ 38, 44.
`
`Therefore, no genuine dispute exists as to the second element of claim preclusion.
`
`C. This Opposition is Based on the Same Set of Transactional Facts as the Prior
`Opposition
`
`This Opposition arises from the same set of transactional facts as the Prior Opposition,
`
`because Applicant’s Opposed Mark only differs from the mark in the Abandoned Application
`
`(“Applicant’s Original Mark”) due to minor alterations, Applicant identifies categories of goods
`
`and services in the Application that overlap with those in the Abandoned Application, and Opposer
`
`now raises the same claims based on the same registrations cited in the Prior Opposition. The
`
`Board considers claims to be the same for purposes of the claim preclusion when: (1) the mark
`
`involved in the first proceeding makes the same, continuing commercial impression as the mark
`
`involved in the second proceeding, and (2) the evidence would be identical. See Miller Brewing
`
`Co. v. Coy International Corp., 230 USPQ 675, 679 (TTAB 1986) (citing Restatement (Second)
`
`of Judgments §24(2) (1982)); Rolex Watch U.S.A., Inc. v. Spooks Gmbh, Opp. No. 91/231,389, 27
`
`TTABVUE 6 (TTAB 2019).
`
`1. The Applicant’s marks in the Prior Opposition and this Opposition make
`the same, continuing commercial impression
`
`Applicant’s Original Mark and Applicant’s Opposed Mark make the same, continuing
`
`commercial impression because the Applicant made only mild alterations between them. See SUF
`
`¶ 7. The question of whether two marks create the same, continuing commercial impression, or
`
`otherwise are “legal equivalents,” can be decided by a judge as on a motion for summary judgment.
`
`5
`
`

`

`Hana Financial v. Hana Bank 574 US 418, 423 (2015) (“[i]f the facts warrant it, a judge may
`
`decide a tacking question on a motion for summary judgment or for judgment as a matter of law.”)
`
`This dispute is similar to the one in Miller Brewing Co. v. Coy Int’l Corp., 230 USPQ 675
`
`(TTAB 1986), in which the Board found that two oppositions based on claims of likely confusion
`
`arose from the same transaction or series of transactions for the purposes of claim preclusion, when
`
`the applicant had made minor alterations to its design mark and added a literal element. The
`
`applicant’s marks in Miller are shown below:
`
`
`
`Noting the additional sheaves of grain and the new literal element CASK NO. 32, the Board held
`
`that “minor alterations do not rise to the level of a new mark” and found that “the two marks create
`
`substantially the same commercial impression.” Id. The Board emphasized that it “does not wish
`
`to encourage losing parties to insignificantly modify their marks after an adverse ruling and
`
`thereby avoid the res judicata effect of the prior adjudication.” Id.; see also Aromatique Inc. v.
`
`Lang, 25 USPQ2d 1359 (TTAB 1992).
`
`In precisely the same way here, the changes between Applicant’s Original Mark and
`
`Applicant’s Opposed Mark are no more than minor alterations that do not create a new mark. For
`
`the Board’s convenience, the marks are shown again below:
`
`6
`
`

`

`Applicant’s Original Mark
`
`Applicant’s Opposed Mark
`
`
`
`
`
`Applicant’s Opposed Mark is clearly a composite mark containing the entirety of Applicant’s
`
`Original Mark as a component and differs only in the addition of the distinct and separable
`
`elements of a color claim and the literal elements “THE BEST YOU.” Applicant’s Original Mark,
`
`which was without a color claim, would entitle Applicant to use the mark as it appears in
`
`Applicant’s Opposed Mark. The “THE BEST YOU” element is small and merely adjacent to the
`
`preexisting elements of the mark; it does not relate to them in a meaningful way and it does not
`
`affect their commercial impression. As was the case in Miller, these changes represent little more
`
`than an effort to make insignificant change to the mark to avoid the prior adverse adjudication
`
`between the parties. The Board, thus, need not credit the Applicant’s legal argument that
`
`Applicant’s Original Mark and Applicant’s Opposed Mark are different. See 4 TTABVUE 5 ¶¶
`
`38, 44.
`
`2. The evidence of likelihood of confusion and dilution would be identical in
`the Prior Opposition and this Opposition
`
`The evidence that would need to be adduced in the Prior Opposition would be identical to
`
`the evidence that must be adduced in this Opposition with respect to the claims of likelihood of
`
`confusion and dilution. The only relevant differences between the Abandoned Application and the
`
`Application are the insignificant changes to the mark, as discussed in the previous section, and the
`
`slight changes to the identifications of services. As to Classes 9, 16 and 41, those differences do
`
`not affect the evidence that would need to be adduced for the claims of likelihood and dilution
`
`similarly pled in both oppositions.
`
`7
`
`

`

`The changes from Applicant’s Original Mark to Applicant’s Opposed Mark do not have an
`
`impact on the similarity of those marks to those in Opposer’s Original Registrations. See In re E.I.
`
`Du Pont DeNemours & Co., 177 USPQ 563, 570 (CCPA 1973) (requiring consideration of “the
`
`similarity of the marks” when analyzing likelihood of confusion); see also In re I.AM.Symbolic,
`
`LLC, 866 F.3d 1315, 1323 (Fed. Cir. 2017) (holding that “the Board may focus its analysis on
`
`dispositive factors, such as similarity of the marks and relatedness of the goods.”) (citing Han
`
`Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001); In re Copeland-Smith,
`
`791 F. App’x 898, 901 (Fed. Cir. 2019) (“[T]he ‘similarity or dissimilarity of the marks in their
`
`entireties’ is a predominant inquiry” in the likelihood of confusion analysis.) (citing Herbko Int’l,
`
`Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002)). Applicant owns the registered
`
`mark LIFE WITHOUT LIMITS in standard characters, as well as a number of other composite
`
`marks into which it is incorporated. See SUF ¶¶ 9-10; Rome Decl. Ex. A. Both Applicant’s
`
`Original Mark and Applicant’s Opposed Mark similarly incorporate LIFE WITHOUT LIMITS as
`
`an element of a composite. See SUF ¶ 7. Applicant’s Opposed Mark merely adds “THE BEST
`
`YOU” in a small typeface apart from the other elements of Applicant’s Opposed Mark and the
`
`color claim. See id. It does not significantly impact the way in which the other elements relate to
`
`LIFE WITHOUT LIMITS and it would not impact the analysis of whether Applicant’s Opposed
`
`Mark simply incorporates the entirety of Opposer’s LIFE WITHOUT LIMITS mark. See e.g. In
`
`re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (holding that “likelihood of
`
`confusion is often found were the entirety of one mark is incorporated within another”).
`
`The addition of broader and more inclusive identifications of goods and services does not
`
`have an impact on the similarity of the goods and services in a comparison to those in Opposer’s
`
`Original Registration. Du Pont, 177 USPQ at 570 (requiring consideration of the similarity and
`
`8
`
`

`

`nature of the goods or services as described in an application or registration when analyzing
`
`likelihood of confusion). It is well established that, where any categories of goods and services in
`
`a Class are found to be likely to cause consumer confusion, the prohibitions of Section 2(d) of the
`
`Lanham Act apply to the entire Class, without regard to the degree to which those categories may
`
`or may not be related to one another. See Steiger Tractor Inc. v. Steiner Corp., 3 USPQ2d 1708,
`
`1709 (TTAB 1984); see also The Pep Boys Manny, Moe & Jack of California v. Kent G. Anderson,
`
`Opp. No. 91/184,524, 77 TTABVUE 13 (TTAB 2014). Whether there is dilution by blurring, on
`
`the other hand, is determined entirely without regard to the goods or services in question. See 15,
`
`USC 1125(c)(2)(B) (listing factors applicable to a finding of dilution by blurring). Because claim
`
`preclusion as to either likely confusion or blurring would apply to an entire Class if the issues
`
`would be the same as to any categories identified within that class, the Board need not parse the
`
`goods and services for which preclusion applies. See Pep Boys, Opp. No. 91/184,524, 77
`
`TTABVUE 13 (TTAB 2014). The Abandoned Application and the Application identify
`
`overlapping or identical categories goods and services in Classes 9, 16 and 41 and, therefore, the
`
`evidence as to the similarity of these goods and services would be identical. See SUF ¶ 8; Rome
`
`Decl., Ex. F.
`
`Given that both the Opposed Mark and the Abandoned Mark are legal equivalents of each
`
`other and the evidence to be presented in this Opposition would be identical to the evidence of
`
`likelihood of confusion and dilution that Opposer would have presented in prior proceedings, there
`
`can be no genuine dispute that this Opposition and the Prior Opposition arise from the same set of
`
`transactional facts.
`
`9
`
`

`

`D. The Application can only be seen as an attempt to avoid the preclusive effect of the
`Board’s final judgment in the Prior Opposition.
`
`The Opposer has established that the parties in this Opposition and the Prior Opposition
`
`are identical, that the Board issued a final judgment on the merits in the Prior Opposition and that
`
`both proceedings arise out of the same set of transactional facts. Therefore, the Application can
`
`only be seen as a collateral attack on the Board’s final judgment in the Prior Opposition that seeks
`
`to avoid the final judgment’s preclusive effect. Standard Int’l Mgmt., LLC, Opp. No. 91/243,645,
`
`14 TTABVUE 8, (citing Miller, 230 USPQ at 678); Nasalok, 522 F.3d at 1324 (citing Baker v.
`
`Gold Seal Liquors, Inc., 417 U.S. 467, 469 (1974)).
`
`CONCLUSION
`
`Because allowing the Application to mature to registration would permit the Applicant to
`
`avoid the res judicata effect of the Board’s final judgment in the Prior Opposition, the Opposer
`
`respectfully requests that the Board grant its motion for partial summary judgment and sustain the
`
`Opposition and refuse registration of the mark B THE BEST YOU LIFE WITHOUT LIMITS
`
`(Stylized) (Ser. No. 79/214,470) in Classes 9, 16 and 41.
`
`
`
`Dated: September 15, 2020
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Brian J. Winterfeldt/
`Brian J. Winterfeldt, Esq.
`David Rome, Esq.
`Winterfeldt IP Group PLLC
`1601 K St. NW, Suite 1050
`Washington, DC 20006
`brian@winterfeldt.law
`david@winterfeldt.law
`
`ATTORNEYS FOR OPPOSER
`
`10
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No.: 91/256,384
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`In the Matter of Application Serial No. 79/214,470
`Published in the Official Gazette on February 11, 2020
`
`United Cerebral Palsy, Inc.,
`
`
`
`
`
`Bernardo Moya,
`
`
`
`
`
`
`Applicant
`
`
`
`SUPPLEMENTAL STATEMENT OF UNDISPUTED FACTS IN SUPPORT OF
`OPPOSER’S MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`
`
`Opposer United Cerebral Palsy, Inc., respectfully submits that there is no genuine dispute
`
`as to the following statements of fact:
`
`1. The parties to this Opposition are identical to the parties in opposition number 91/220,915
`
`(the “Prior Opposition”). See 1 TTABVUE 27 ¶ 43; 4 TTABVUE 4 ¶ 43. A true copy of the Notice
`
`of Opposition in the Prior Opposition dated March 4, 2015 is attached as Exhibit A to the
`
`Supplemental Declaration of David Rome in Support of Opposer’s Motion for Partial Summary
`
`Judgment, dated September 15, 2020 (“Rome Declaration”), submitted herewith.
`
`2. Applicant’s counsel in the Prior Opposition moved to withdraw as its attorneys. A true
`
`copy of the Motion to Withdraw submitted by Applicant’s former counsel in the Prior Opposition
`
`is attached as Exhibit B to the Rome Declaration, submitted herewith.
`
`3. In an Order dated February 23, 2016, the Board granted the Motion to Withdraw and
`
`required Applicant to either appoint new counsel or indicate that it would represent itself. A true
`
`

`

`copy of the Board’s Order in the Prior Opposition is attached as Exhibit C to the Rome Declaration,
`
`submitted herewith.
`
`4. In an Order dated April 29, 2016, the Board required that Applicant show cause why a
`
`default judgment should not be entered. A true copy of the Board’s Order in the Prior Opposition
`
`is attached as Exhibit D to the Rome Declaration, submitted herewith.
`
`5. The Board rendered a final decision dated June 9, 2016 sustaining the Prior Opposition and
`
`refusing registration of application Serial Number 85/729,117 (the “Abandoned Application”). See
`
`1 TTABVUE 27 ¶ 44; 4 TTABVUE 4 ¶ 44. A true copy of the Board’s final decision sustaining
`
`the Prior Opposition and refusing registration of the application is attached as Exhibit E to the
`
`Rome Declaration, submitted herewith.
`
`6. Applicant sought to register the mark B THE BEST YOU LIFE WITHOUT LIMITS
`
`(Stylized) (“Applicant’s Opposed Mark”), which is the subject of Application Serial No.
`
`79/214,470 (the “Application”), after the final disposition of the Prior Opposition. See
`
`1 TTABVUE 11-15, 26 ¶¶ 3, 38; 4 TTABVUE 2, 4 ¶¶ 3, 38; Rome Decl., Ex. E.
`
`7. The mark in the Abandoned Application (“Applicant’s Original Mark”) is identical to
`
`Applicant’s Opposed Mark but for the absence of a color claim and the omission of the phrase
`
`“THE BEST YOU.” See 1 TTABVUE 22 ¶ 23; 4 TTABVUE 3 ¶ 23. The stylized forms of
`
`Applicant’s Original Mark and Applicant’s Opposed Mark are as follows:
`
`2
`
`

`

`Applicant’s Original Mark
`
`Applicant’s Opposed Mark
`
`
`
`
`
` true copy of the current title and status information of the Abandoned Application as reflected
`
` A
`
`in the United States Patent and Trademark Office Trademark Status and Document Retrieval
`
`system showing Applicant’s Original Mark is attached as Exhibit F to the Rome Declaration,
`
`submitted herewith.
`
`8. The Abandoned Application and the Application identify overlapping or identical
`
`categories goods and services in Classes 9, 16 and 41. See 1 TTABVUE 26 ¶ 41; 4 TTABVUE 4
`
`¶ 41; Rome Decl., Ex. F.
`
`9. Opposer’s claims in the Prior Opposition as to priority and likelihood of confusion as to
`
`Section 2(d) of the Lanham Act and dilution within the meaning of Section 43(c) of the Lanham
`
`Act were based on registrations for LIFE WITHOUT LIMITS (Reg. No. 3,617,532), LIFE
`
`WITHOUT LIMITS FOR PEOPLE WITH DISABILITIES (Reg. No. 3,105,021) and UCP
`
`UNITED CEREBRAL PALSY LIFE WITHOUT LIMITS FOR PEOPLE WITH DISABILITIES
`
`& Design (Reg. No. 3,105,302) (collectively, “Opposer’s Original Registrations”). See
`
`1 TTABVUE 26-27 ¶ 42; 4 TTABVUE 4 ¶ 42; Rome Decl., Ex. A.
`
`3
`
`

`

`10. Opposer still owns Opposer’s Original Registrations and they are the basis for its current
`
`claims of priority and likelihood of confusion as to Section 2(d) of the Lanham Act and dilution
`
`within the meaning of Section 43(c) of the Lanham Act. See 1 TTABVUE 15-19 ¶ 3;
`
`4 TTABVUE 2 ¶ 3.
`
`11. Opposer relies on Opposer’s Original Registrations for its current claims for priority and
`
`likelihood of confusion as well as dilution. See 1 TTABVUE 26-27 ¶ 42; 4 TTABVUE 4 ¶ 42.
`
`
`
`Dated: September 15, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Brian J. Winterfeldt/
`Brian J. Winterfeldt, Esq.
`David Rome, Esq.
`Winterfeldt IP Group PLLC
`1601 K St. NW, Suite 1050
`Washington, DC 20006
`brian@winterfeldt.law
`david@winterfeldt.law
`
`ATTORNEYS FOR OPPOSER
`
`4
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No.: 91/256,384
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`In the Matter of Application Serial No. 79/214,470
`Published in the Official Gazette on February 11, 2020
`
`United Cerebral Palsy, Inc.,
`
`
`
`
`
`Bernardo Moya,
`
`
`
`
`
`
`Applicant
`
`
`
`
`
`SUPPLEMENTAL DECLARATION OF DAVID ROME IN SUPPORT OF
`
`OPPOSER'S MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`I, David Rome, declare as follows:
`
`1.
`
`I am an Associate Attorney at Winterfeldt IP Group PLLC, attorneys for Opposer
`
`United Cerebral Palsy, Inc. I offer this supplemental declaration in support of Opposer’s motion
`
`for partial summary judgment in this opposition proceeding.
`
`2.
`
`Annexed as Exhibit A is a true copy of the Notice of Opposition in United Cerebral
`
`Palsy, Inc. v. Bernardo Moya, Opposition Number 91/220,915 (the “Prior Opposition”), filed by
`
`Opposer on March 4, 2015 against Applicant’s application for B LIFE WITHOUT LIMITS
`
`(Stylized), Serial Number 85/729,117 (the “Abandoned Application”).
`
`3.
`
`Annexed as Exhibit B is a true copy of the Motion to Withdraw as Counsel of
`
`Record dated February 9, 2016 and submitted by the attorneys for Applicant in the Prior
`
`Opposition.
`
`4.
`
`Annexed as Exhibit C is a true copy of the Board’s Order granting the Motion to
`
`Withdraw and suspending the Prior Opposition dated February 23, 2016.
`
`

`

`5.
`
`Annexed as Exhibit D is a true copy of the Board’s Order April 29, 2016 requiring
`
`Applicant to show cause why a default judgment should not be entered in the Prior Opposition.
`
`6.
`
`Annexed as Exhibit E is a true copy of the Board’s final decision dated June 9, 2016
`
`sustaining the Prior Opposition and refusing registration of the Abandoned Application.
`
`7.
`
`Attached as Exhibit F is a true copy of the current title and status information of the
`
`Abandoned Application as reflected in the United States Patent and Trademark Office Trademark
`
`Status and Document Retrieval system.
`
`***
`
`Pursuant to 28 USC § 1746, I declare under penalty of perjury that the foregoing is true and
`
`correct.
`
`Dated: September 15, 2020
`
`New York, New York
`
`/David W. Rome/
`David W. Rome
`
`
`
`
`
`2
`
`

`

`Exhibit A
`Exhibit A
`
`
`
`
`
`
`
`
`
`
`
`

`

`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA659315
`03/04/2015
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`United Cerebral Palsy, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/04/2015
`
`1825 K Street NW, Suite 600
`Washington, DC 20006
`UNITED STATES
`
`Brian J. Winterfeldt
`Katten Muchin Rosenman LLP
`2900 K Street NW, North Tower, Suite 200
`Washington, DC 20007
`UNITED STATES
`bjwtmteam@kattenlaw.com, brian.winterfeldt@kattenlaw.com,
`peter.riebling@kattenlaw.com, merilee.arevalo@kattenlaw.com
`Phone:202.625.3500
`
`Applicant Information
`
`Application No
`
`85729117
`
`Publication date
`
`11/04/2014
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`03/04/2015
`
`NONE
`
`Bernardo Moya
`33 Newman Street
`London, W1T1PY
`UNITED KINGDOM
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`03/04/2015
`
`NONE
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Compact discs featuring education and
`training in the field of hypnosis, personal development, and motivational speaking; Pre-recorded CDs
`featuring education and training in the field of hypnosis, personal development, and motivational
`speaking; Pre-recorded DVDs featuring education and training in the field of hypnosis, personal de-
`velopment, and motivational speaking; downloadable programs and software for use on computers,
`smart phones and tablets for featuring education and training in the field of hypnosis, personal devel-
`opment, and motivational speaking; electronic publications, journals, magazines, books featuring
`education and training in the field of hypnosis, personal development, and motivational speaking;
`downloadable computer programs featuring education and training in the field of hypnosis, personal
`development, and motivational speaking
`
`Class 016. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Printed materials, namely, paper
`signs,books, manuals, curriculum, newsletters, photographs, informational cards and brochures in
`
`

`

`the fields of hypnosis, personal development, and motivational speaking; Printed instructional, educa-
`tional,and teaching materials in the fields ofhypnosis, personal development, and motivational speak-
`ing; Publications in the form of hand-outs, workbooks, in the fields of hypnosis, personal develop-
`ment, and motivational speaking; newspapers, magazines in the fields of hypnosis, personal develop-
`ment, and motivational speaking
`
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Arranging and conducting educational con-
`ferences; Educational services, namely,conducting seminars, courses, demonstrations, and training
`workshops in the fields of hypnosis, personal development, and motivational speaking; Educational
`services, namely, providing exhibits in the fields of hypnosis, personal development, and motivational
`speaking; Educational services, namely, conducting classes,seminars, conferences, workshops,
`fieldtrips in the fields of hypnosis, personal development, and motivational speaking; Educational and
`entertainment services, namely, providing motivational and educational speakers; Non-downloadable
`electronic publications in the nature of hand-outs, workbooks, in the fields of hypnosis, personal de-
`velopment, and motivational speaking; production of radio and television programs provided online
`via the internet in the fields of hypnosis, personal development, and motivational speaking
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Dilution
`
`Trademark Act section 2(d)
`
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3617532
`
`Registration Date
`
`05/05/2009
`
`Word Mark
`
`Design Mark
`
`LIFE WITHOUT LIMITS
`
`Application Date
`
`03/07/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2004/00/00 First Use In Commerce: 2004/00/00
`Printed brochures, newsletters, bulletins, pamphlets, booklets, printed media in-
`formation, direct mail literature, packets and charts pertaining to cerebral palsy
`and other disabilities and pertaining to charitable, healthcare and fundraising
`activities; greeting cards and illustrated note cards; posters; printed credit cards
`without magnetic coding; pledgecards; printed advertisements, namely, bro-
`chures, magazines, newsletters, paperplacards, and letters featuring information
`
`

`

`about th