Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1105380
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`Filing date:
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`12/31/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91265543
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`Party
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`Correspondence
`Address
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`Plaintiff
`Padraic McFreen
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`PADRAIC MCFREEN
`OWNER
`13357 DUMBARTON ST
`CARMEL, IN 46032
`UNITED STATES
`Primary Email: pmcfreen@gmail.com
`Secondary Email(s): padraic.mcfreen@gmail.com
`281-736-0510
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Other Motions/Submissions
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`Padraic McFreen
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`pmcfreen@gmail.com
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`/Padraic McFreen/
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`12/31/2020
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`McFreen Reply to Applcnt Resp to Opp Mot to Strike Ans Re YUK MOP.912
`65543.filed.pdf(247798 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Padraic McFreen.
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`YukBGone, LLC,
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`Opposer,
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` Opposition No. 91265543
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`Applicant.
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`REPLY TO APPLICANT’S RESPONSE TO OPPOSER’S MOTION TO
`STRIKE APPLICANT’S ANSWER, PARAGRAPH 11
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`Padraic McFreen (“Opposer”) respectfully files the instant Reply to
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`YukkBGone, LLC’s (“Applicant”) Response to Opposer’s Motion To Strike
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`Applicant’s Answer, Paragraph 11 (“Reply”) to Applicant’s Response To Opposer’s
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`Motion To Strike Applicant’s Answer, Paragraph 11 (“Response”),
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`In its Response, Applicant relies principally on TTAB precedent to support its
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`position that Opposer “has failed to explain how he has been—or will be—
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`pejudiced[.]”1 Specifically, Applicant relies on its application of the holding in Order
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`of Sons of Italy in America v. Profumi Fratellia Nostra AG, 36 USPQ2d 1221, 1223
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`(TTAB 1995). The relied upon precedent provides guidance concerning affirmative
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`denfenses.
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`Contrary to Applicant’s interpretation and reliance on this holding, the TTAB
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`in its order did not make a showing of prejudice a prerequisite, nor did it support
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`1 9 TTABVUE 5
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`the mere amplification of Applicant’s denials couched as legally insufficient
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`defenses. Applicant does not state how the precedent helps it survive Opposer’s
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`instant motion. The reliance on this TTAB precedent supports Opposer.
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`A showing of prejudice is not a prerequisite as established by this precedent;
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`however, even if a showing of “prejudice” were required, this very case satisfies this
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`requirement.
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`Specifically, if the TTAB denies Opposer’s instant motion, Opposer will, then,
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`need to expend additional time and resources addressing the merits of applicant’s
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`unfair pleading in discovery and at summary judgment or trial. These are burdens
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`Opposer should not have to bear. See Villa v. Ally Fin., Inc., 2014 WL 800450, at *4
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`(M.D.N.C. Feb. 28, 2014) (“…[claims and] defenses prejudice plaintiffs where they
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`result in increased time and expense of trial, including the possibility of extensive
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`and burdensome discovery.”). Opposer’s instant motion should be granted.
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`If any defenses have been advanced by Applicant, they amount to the
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`conclusory statement “Applicant’s Mark is not descriptive and therefore never
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`required a Section 2(f) claim of acquired distinctiveness.”2 These are not facts that
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`require merit testing.
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`Applicant’s application for its applied-for Mark, contains described goods that
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`are identical to the applied-for Mark. Applicant’s applied-for Mark is textbook
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`“descriptive.”34
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`2 Id at 4.
`3 1 TTABVUE
`4 The instant opposition proceeding is of the type envisioned by the architects of the Trademark
`Modernization Act, signed into law, December 27, 2020. Applicant’s applied-for Mark should not
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`Going further with Order of Sons of Italy in America, there the TTAB indeed
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`did strike two of the applicant’s affirmative defenses that were legally insufficient
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`and redundant. The surviving affirmative defense gave the opposer “more complete
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`notice of applicant’s position” and clear indication of the type of evidence it may
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`seek to introduce at trial. Applicant’s pleading fails the test established by this
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`precedent.
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`Applicant’s relied upon precedent clearly establishes a standard for striking
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`those pleadings that fail to provide full notice of the basis for a claim or defense.
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`Applicant’s pled claim is insufficient.
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`Applicant states by implication that it has given Opposer fair notice in its
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`pleadings, but is still playing hide-the-ball in its very Response. If Applicant has no
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`defenses, then, why not state plainly and clearly this fact?
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`Opposer stands opposed to any attempts made by Applicant by way of its
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`Response to amend its pleading and based upon the aforementioned, respectfully
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`requests the TTAB to grant its Motion to Strike Applicant’s Answer, Paragraph 11.
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`Submitted this 31st Day of December, 2020
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`/s /Padraic McFreen
`Padraic McFreen, Opposer
`13357 Dumbarton Street
`Carmel, IN 46032
`pmcfreen@gmail.com
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`have been allowed to progress this far toward registration. Applicant’s accompanying applied-for
`Mark YUK SPRAY, indeed was halted before getting to the publication phase. The basis for its
`refusal was “mere descriptiveness.” See Application S/N 90045909 with an Office Action date of
`October 21, 2020.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Opposer’s Reply
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`To Applicant’s Response to Opposer’s Motion To Strike Applicant’s Answer,
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`Paragraph 11, has been served on Matthew Saunders, Saunders & Silverstein LLP.,
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`by emailing said copy on this 31st day of December, 2020, to: trademarks@sandsip.com,
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`msaunders@sandsip.com.
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`__________________________
`Padraic McFreen, Opposer
`13357 Dumbarton Street
`Carmel, IN 46032
` pmcfreen@gmail.com
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