Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1102862
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`Filing date:
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`12/18/2020
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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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`91265545
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`Party
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`Correspondence
`Address
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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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`Defendant
`YUKBGONE, LLC
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`MATTHEW SAUNDERS
`SAUNDERS & SILVERSTEIN LLP
`14 CEDAR STREET SUITE 224
`AMESBURY, MA 01913
`UNITED STATES
`Primary Email: trademarks@sandsip.com
`Secondary Email(s): msaunders@sandsip.com
`978-463-9100
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`Opposition/Response to Motion
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`Seth A. Walters
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`trademarks@sandsip.com, msaunders@sandsip.com, swalters@sandsip.com
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`/Seth A. Walters/
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`12/18/2020
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`Attachments
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`20201218 YUK WIPES - Response to Motion to Strike.pdf(104748 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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`Opposer
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`YUKBGONE, LLC,
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`Applicant.
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`Opposition No. 91265545
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`Mark: YUK WIPES
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`Serial No. 88/812525
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`Filing Date: February 27, 2020
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`APPLICANT’S RESPONSE AND OPPOSITION TO OPPOSER’S
`MOTION TO STRIKE APPLICANT’S ANSWER, PARAGRAPH 11
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`Applicant YukBGone, LLC (“Applicant” or “YukBGone”), by its counsel, hereby responds
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`to Opposer’s December 7, 2020, Motion to Strike Applicant’s Answer, Paragraph 11, as follows:
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`Background
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`On October 21, 2020, Opposer Padraic McFreen (“Opposer”) filed a Notice of Opposition
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`(the “Notice”) with the Board, formally opposing registration of Applicant’s YUK WIPES trademark
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`(“Applicant’s Mark”) and the Board instituted the present Opposition Proceeding (the “Opposition”).
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`As grounds for and in support of the Opposition, Opposer alleged, inter alia, that “[u]pon information
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`and belief, Applicant’s Application for Applicant’s Mark was filed without a basis of acquired
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`distinctiveness under Section 2(f) and Applicant’s applied-for Mark has not acquired a second
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`meaning,” and that Applicant’s Mark was merely descriptive of Applicant’s applied-for goods under
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`Trademark Act Section 2(e)(1). 1 TTABVUE 4.
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`Applicant filed its Answer on November 24, 2020 (the “Answer”), denying the allegations of
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`descriptiveness contained in Opposer’s Notice. 4 TTABVUE 3. In response to Applicant’s allegation
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`that the Application was filed without a basis of acquired distinctiveness, and that Applicant’s Mark
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`1
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`had not acquired secondary meaning, Applicant responded with the following short and plain
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`statement, admitting that the Application was filed without a §2(f) claim of acquired distinctiveness,
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`and denying that such a claim was necessary to begin with, as Applicant’s Mark does not lack secondary
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`meaning:
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`“11. Applicant admits that the Application does not include a declaration of acquired
`distinctiveness under Section 2(f) of the Lanham Act, but denies both that Applicant’s Mark
`lacks secondary meaning and that a declaration of acquired distinctiveness is necessary to
`permit registration of Applicant’s Mark on the USPTO’s Principal Register.”
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`Id. In response, on December 7, 2020, Opposer filed Opposer’s Motion to Strike Applicant’s Answer,
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`Paragraph 11 (“Opposer’s Motion”), in which Opposer moved to strike Paragraph 11 from
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`Applicant’s Answer because it “fails to provide Opposer with adequate notice of precisely what
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`defenses–if any–Applicant intends to rely upon at trial.” 5 TTABVUE 1–4.
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`Argument
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`“Motions to strike are not favored, and matter usually will not be stricken unless it clearly has
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`no bearing upon the issues in the case. TBMP 506.01. Motions to strike are a drastic and severe remedy
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`and, inasmuch as the primary purpose of pleadings under the Federal Rules of Civil Procedure is to
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`give fair notice of the claims or defenses asserted, see id., the Board may decline to strike even
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`objectionable pleadings if their inclusion will not prejudice the adverse party, but rather will provide
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`fuller notice of the basis for a claim or defense. See, e.g., Order of Sons of Italy in America v. Profumi Fratellia
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`Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (amplification of applicant’s denial of opposer’s
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`claims not stricken).
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`It is unclear from Opposer’s Motion exactly what about this particular paragraph Opposer
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`finds objectionable, or what prejudice Opposer will suffer as a result of its inclusion in Applicant’s
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`pleadings, other than that the unexplained pro forma recitations that Applicant’s Answer “unfairly and
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`prejudicially fails to give Opposer notice of the defenses upon which Applicant intends to rely,” that
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`2
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`“Applicant’s impertinent admission and denial prejudices Opposer,” and that “Applicant’s Answer
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`fails to provide Opposer with adequate notice of precisely what defenses–if any–Applicant intends to
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`rely upon at trial.” 5 TTABVUE 1–3. Taken together, Applicant is forced to conclude that Opposer
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`takes issue with Paragraph 11 of Applicant’s Answer because it includes an admission of one
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`allegation, a denial of another separate allegation, and a short and plain statement explaining these
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`responses. In no way whatsoever does Applicant’s response fail to meet legal standards or prejudice
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`Opposer.
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`Indeed, Applicant has done no more than respond to Opposer’s allegations, as is required of
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`an Answer, see 37 C.F.R. §2.106(b)(2) (“An answer shall state in short and plain terms the applicant’s
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`defenses to each claim asserted and shall admit or deny the averments upon which the opposer
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`relies.”), and to explain that, contrary to Opposer’s explicit and implicit allegations, Applicant’s Mark
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`is not descriptive and therefore never required a Section 2(f) claim of acquired distinctiveness. See also
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`TBMP 311.02(b)(1) (“An answer may also include a short and plain statement of any defenses,
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`including affirmative defenses that the defendant may have to the claim or claims asserted by the
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`plaintiff.”).
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`In the Notice, Paragraph 11, Opposer alleges that:
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`“11. Upon information and belief, Applicant’s Application for Applicant’s Mark was filed
`without a basis of acquired distinctiveness under Section 2(f) and Applicant’s applied-for Mark
`has not acquired a second meaning.”
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`1 TTABVUE 4. As discussed in greater detail supra, Applicant responded with a simple statement
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`admitting that the Application was filed without a Section 2(f) claim, denying that Applicant’s Mark
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`did not have secondary meaning, and explaining that, because Applicant’s Mark does not lack
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`secondary meaning, a 2(f) declaration was unnecessary. 4 TTABVUE 3. Paragraph 11 of Applicant’s
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`Answer was, therefore, simply a short statement admitting and denying the separate averments of
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`Opposer’s Notice, Paragraph 11, along with the clearest possible explanation thereof.
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`3
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`Applicant is frankly at a loss to understand what about this statement Opposer feels is
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`prejudicial, or what harm he will suffered as a result of its inclusion. Opposer has opposed the
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`Application in part on the grounds that Applicant’s Mark is descriptive and has not acquired secondary
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`meaning. Applicant has, in response, denied that its mark lacks secondary meaning, something which
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`it must be allowed to do if it is to respond fairly to Opposer’s claims.
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`As is discussed in greater detail supra, the content of Applicant’s Answer, Paragraph 11 bears
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`directly upon the issues of the case raised by Opposer himself in his Notice, namely, whether or not
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`Applicant’s Mark is descriptive, and, if so, whether or not it has acquired distinctiveness. Opposer has
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`furthermore failed to explain how he has been – or will be – prejudiced if the content of this paragraph
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`is not stricken.
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`Conclusion
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`Accordingly, Applicant respectfully requests that the Board deny Opposer’s Motion in full,
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`and, in the event that the Board determines that Opposer’s Motion should be granted in any part,
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`Applicant requests leave to amend its Answer.
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`Dated: December 18, 2020
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`Respectfully submitted,
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`By:/Matthew Saunders /
`Matthew Saunders
`Seth A. Walters
`Saunders & Silverstein LLP
`14 Cedar Street, Suite 224
`Amesbury, MA 01913
`+1.617.714.1600
`msaunders@sandsip.com
`swalters@sandsip.com
`trademarks@sandsip.com
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`Attorneys for Applicant
`YukBGone, LLC
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`4
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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that a true and complete copy of the foregoing Applicant’s Response and Opposition
`to Opposer’s Motion to Strike Applicant’s Answer, Paragraph 11 has been served on Padraic McFreen
`by forwarding said copy on December 18, 2020, via email to:
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`Padraic McFreen
`13357 Dumbarton St.
`Carmel, IN 46032
`pmcfreen@gmail.com
`padraic.mcfreen@gmail.com
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`/s/ Matthew Saunders
`Matthew Saunders
`Saunders & Silverstein LLP
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