Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1141143
`
`Filing date:
`
`06/18/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91269315
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Wattel & York, LLC
`
`FARLEY I. WEISS
`WEISS & MOY, P.C.
`4455 E. CAMELBACK ROAD, SUITE E261
`PHOENIX, AZ 85018
`UNITED STATES
`Primary Email: fweiss@weissiplaw.com
`Secondary Email(s): mweiss@weissiplaw.com, kmotolenich-
`salas@weissiplaw.com
`480-994-8888
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Kenneth Motolenich-Salas
`
`fweiss@weissiplaw.com, mweiss@weissiplaw.com, kmotolenich-
`salas@weissiplaw.com
`
`/Kenneth Motolenich-Salas/
`
`06/18/2021
`
`Attachments
`
`answer to the not of opp with exs.pdf(1358533 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Dismuke Law, PLLC,
`
`
`
`v.
`
`Opposer,
`
`Wattel & York, LLC,
`
`
`
`Applicant.
`
`Opposition No. 91/269,315
`
`Mark: CALL DAVE AND MIKE (90/100,572)
`
`Filing Date: August 7, 2020
`
`Published: January 12, 2021
`
`VIA ESTTA General Filings
`
`
`
`
`
`Applicant Wattel & York, LLC’s Answer to Opposer Dismuke Law, PLLC’s Notice of
`
`Opposition
`
`Pursuant to TMBP § 311, Applicant Wattel & York, LLC (“Applicant”), the owner of
`
`record of Ser. No. 90/100,572 filed August 7, 2020 and published January 12, 2021 for CALL
`
`DAVE AND MIKE™ (“the Mark”) in class 045 for “Legal services; Providing legal services
`
`in the field of personal injury” (“Applicant’s Services”), hereby respectfully submits its
`
`Answer to Opposer Dismuke Law, PLLC’s (“Opposer”) Notice of Opposition to the
`
`application to register the Mark (“Application”). In short, Applicant (i) denies that Opposer
`
`will be damaged by Applicant’s registration of the Mark, (ii) denies all allegations in the Notice
`
`of Opposition not expressly admitted herein, and (iii) responds to the Notice of Opposition as
`
`follows:
`
`1.
`
`2.
`
`Admitted.
`
`Admitted.
`
`Opposer’s Federal Registration, Alleged Priority of Use, and Ostensible Standing
`
`3.
`
`Denied.
`
`1
`
`

`

`4.
`
`Applicant admits that it is the owner of record listed in Trademark Office
`
`records of “Ask Dave” (Reg. No. 5,170,604) (“the ’604 Mark”) and “1-800-Ask-Dave” (Reg.
`
`No. 5,170,603) (“the ’603 Mark”, together with the ’604 Mark referred to herein as “the
`
`Opposer’s Marks”), with the services identified in each of the Opposer’s Mark’s registration
`
`certificates as “Legal services” (hereinafter, “Opposer’s Services”), but is without knowledge
`
`or information sufficient to form a belief about the truth of the remaining allegations of
`
`Paragraph 4, and therefore denies the same.
`
`5.
`
`6.
`
`Admitted.
`
`Applicant is without knowledge or information sufficient to form a belief about
`
`the truth of the allegations of Paragraph 6, and therefore denies the same.
`
`7.
`
`Applicant is without knowledge or information sufficient to form a belief about
`
`the truth of the allegations of Paragraph 7, and therefore denies the same.
`
`8.
`
`Applicant is without knowledge or information sufficient to form a belief about
`
`the truth of the allegations of Paragraph 8, and therefore denies the same.
`
`9.
`
`Denied.
`
`10.
`
`Denied.
`
`11.
`
`Admitted.
`
`Applicant’s Mark
`
`12.
`
`Applicant admits that no statement of use has been filed for the Mark but that
`
`the Mark is in use in commerce by Applicant in that Applicant has used and displayed the
`
`Mark in the sale or advertising of Applicant’s Services and Applicant’s Services are rendered
`
`in commerce, but that no statement of use can be filed at this time since the Application is in
`
`a Trademark Office blackout period which prevents Applicant from filing a statement of use
`
`for the Application. See Exhibit 1, which is a true and correct copy of Applicant’s attempt to
`
`file through TEAS a Statement of Use for the Mark, accessed on June 9, 2021 at
`
`2
`
`

`

`https://teas.uspto.gov/aou/teas.service;jsessionid=EHAjAvH0IPVlbh8hYPGz1Qjkw76SninB
`
`bOD1hzkh.teas-q419-ui-eap-0?, and Exhibit 2, which are true and correct copies of
`
`exemplars of Applicant’s use of the Mark.
`
`13.
`
`Applicant admits that it filed the Application after Opposer’s registration of
`
`Opposer’s Marks, but denies the remaining allegations of Paragraph 13.
`
`14.
`
`Applicant is without knowledge or information sufficient to form a belief about
`
`the truth of the allegations of Paragraph 14, and therefore denies the same.
`
`15.
`
`Denied.
`
`Opposer’s Contention of Likelihood of Confusion
`
`16.
`
`Denied.
`
`17.
`
`Denied.
`
`18.
`
`Denied.
`
`19.
`
`Denied.
`
`Affirmative Defenses
`
`20.
`
`Applicant incorporates by reference its responses contained in the previous
`
`paragraphs of this Answer as though fully set forth herein.
`
`21.
`
`Pursuant to Fed. R. Civ. P. 12(b)(6)/TBMP § 503 and/or Fed. R. Civ. P.
`
`12(c)/TBMP § 504, the Notice of Opposition fails to state a claim upon which relief can be
`
`granted.
`
`22.
`
`There is no likelihood of confusion, mistake, or deception between either of the
`
`Opposer’s Marks used by Opposer in connection with Opposer’s Services and the Mark used
`
`by Applicant when applied to Applicant’s Services in that:
`
`a.
`
`the Mark in its entirety is substantially dissimilar and not confusingly
`
`similar to either of Opposer’s Marks in their respective entireties as to appearance, sound,
`
`connotation, and commercial impression, including but not limited to (i) differences stemming
`
`3
`
`

`

`from the Mark’s use of “Call” which is visually, aurally, denotatively, and connotatively
`
`distinct from “Ask” which is a part of each of Opposer’s Marks, (ii) the differences in the
`
`number of words between the Mark (four) and each of Opposer’s Marks (two), (iii) the Mark’s
`
`use of “Call” as the initial word of the Mark, and thus the first and most lasting impression on
`
`a consumer, in contrast to the Opposer’s use of “Ask” (the ’604 Mark) or a number (“1-800”
`
`[the ’603 Mark]) as the prefatory portions of those respective marks, (iv) the lack of any
`
`numbers or punctuation in the Mark which stands in stark visual, aural, denotative, and
`
`connotative contrast with the ’603 Mark’s usage of “1-800-”, a combination of numbers joined
`
`by two punctuation marks; and (v) the Mark’s use of “and Mike” (viz., Call Dave and Mike™)
`
`which provides for a fundamentally different overall commercial impression with each of
`
`Opposer’s Marks, none of which have either “and” or “Mike” therein;
`
`b.
`
`the channels of trade and classes of purchasers for Applicant’s Services
`
`differ materially from those of Opposer’s Services, with Opposer offering its legal services
`
`under Opposer’s Marks in the state of Florida only (viz., within one State only [Florida] with
`
`practice therein focused in the central part of such State) and Applicant using in commerce the
`
`Mark in the sale and advertising of Applicant’s Services which are rendered in commerce,
`
`primarily in Arizona;
`
`c.
`
`there is a notable dissimilarity of established, likely-to-be-continued,
`
`and intended future trade channels between Applicant and its offering of Applicant’s Services
`
`under the Mark and Opposer and its offering of Opposer’s Services under either of the
`
`Opposer’s Marks in that Applicant’s Services under the Mark currently are offered, are likely
`
`to be continued to be offered, and are intended to be offered in the future primarily to consumers
`
`in the western states of, inter alia, Arizona, California, and Washington, whereas Opposer’s
`
`Services offered by Opposer under either of Opposer’s Marks currently are offered, are likely
`
`4
`
`

`

`to be continued to be offered, and are intended to be offered in the future solely to consumers
`
`in the State of Florida in general and Central Florida in particular;
`
`d.
`
`Applicant’s Services offered under the Mark differ substantially from
`
`those offered by Opposer under either of Opposer’s Marks in that Applicant’s Services focus
`
`primarily on the providing of legal services in the field of personal injury and other torts to
`
`consumers primarily located in the States of Washington, Arizona, and California, whereas
`
`Opposer’s Services are rendered to consumers seeking legal services within the State of Florida
`
`in general and Central Florida in particular;
`
`e.
`
`upon information and belief, the large number and comparable nature of
`
`marks similar to Opposer’s Marks used in connection with services similar, complementary,
`
`or identical to Opposer’s Services that exist the marketplace render Opposer’s Marks extremely
`
`weak;
`
`f.
`
`the conditions under which and purchasers to whom Applicant’s
`
`Services offered under the Mark are made differ materially from the conditions under which
`
`and purchasers to whom Opposer’s Services offered under Opposer’s Marks such that any
`
`confusion, deception, or mistake between Opposer, Opposer’s Services, and Opposer’s Marks,
`
`on the one hand, and Applicant, Applicant’s Services, and the Mark, on the other hand, is non-
`
`existent or, at most, unlikely;
`
`g.
`
`h.
`
`each of Opposer’s Mark is not famous;
`
`since Applicant’s first use in commerce of the Mark in connection with
`
`Applicant’s Services, there has been no episode of any actual confusion between Applicant,
`
`Applicant’s Services, and the Mark, on the one hand, and Opposer, Opposer’s Services, and
`
`either of Opposer’s Marks, on the other hand, thereby militating against a likelihood of
`
`confusion; and
`
`5
`
`

`

`i.
`
`the extent of potential confusion is de minimis with either no or only a
`
`limited number of overlapping potential purchasers of Applicant’s Services and Opposer’s
`
`Services in that Applicant offers Applicant’s Services under the Mark primarily to consumers
`
`in the States of Arizona, Washington, and California, while Opposer only offers Opposer’s
`
`Services under Opposer’s Marks to consumers in the State of Florida in general and Central
`
`Florida in particular.
`
`23.
`
`On information and belief, the Notice of Opposition is barred by the doctrine of
`
`unclean hands.
`
`24.
`
`On information and belief, the Notice of Opposition is barred by the doctrine of
`
`estoppel.
`
`25.
`
`On information and belief, the Notice of Opposition is barred by the doctrine of
`
`acquiescence.
`
`26.
`
`On information and belief, third parties’ prior use of similar marks for similar
`
`services in commerce are innumerable and thus the Opposer’s Marks are weak and entitled to
`
`a narrow scope of protection that does not allow for the prevention of registration of the Mark
`
`on the Principal Register.
`
`27.
`
`On information and belief, the Notice of Opposition is barred by the doctrine of
`
`abandonment in that Opposer has discontinued use of one or both of Opposer’s Marks with
`
`intent not to resume such use.
`
`28.
`
`On information and belief, the Notice of Opposition is barred due to Opposer’s
`
`misuse of one or more of Opposer’s Marks.
`
`29.
`
`Applicant reserves the right to amend the Answer and assert additional defenses
`
`and/or supplement, alter, or change the Answer and defenses upon the discovery of additional
`
`facts and upon the completion of discovery and a continuing investigation.
`
`6
`
`

`

`30.
`
`Applicant reserves the right to assert during the course of this proceeding
`
`counterclaims seeking cancellation of one or more of the registrations for Opposer’s Marks if
`
`grounds for a counterclaim, including but not limited to no use in commerce (viz., Opposer’s
`
`use of Opposer’s Marks solely within one State [FL] is not of a type that would, taken in the
`
`aggregate, have a direct or substantial effect on interstate commerce and/or Congress cannot
`
`regulate Opposer’s intrastate activity, thus rendering their registrations invalid and subject to
`
`cancellation), are discovered, in which case any such counterclaim shall be pleaded promptly
`
`after the grounds therefor are learned by Applicant.
`
`31.
`
`Applicant reserves the right to initiate a concurrent use registration proceeding
`
`if, during the course of this opposition proceeding and as a result of the discovery of additional
`
`facts adduced during the discovery period in this matter, grounds for such a proceeding are
`
`discovered by Applicant, including but not limited to facts demonstrating by a preponderance
`
`of the evidence that confusion, mistake, or deception is not likely to result between the Mark
`
`used in connection with Applicant’s Services and Opposer’s Marks used in connection with
`
`Opposer’s Services from the continued use by Applicant of the Mark under conditions and
`
`limitations as to the mode or place of use of the Mark or the services on or in connection with
`
`which such Mark is used, including but not limited to no confusion, mistake, or deception in
`
`light of the apparent geographically distinct locations of actual use of the marks by the parties.
`
`Prayer for Relief
`
`WHEREFORE, Applicant, having fully answered Opposer’s Notice of Opposition,
`
`respectfully prays that (i) the Notice of Opposition be dismissed in its entirety with prejudice,
`
`(ii) judgment granted in Applicant’s favor or against Opposer and that the Mark proceed to
`
`allowance and, after submission of an acceptable specimen of use, registration on the Principal
`
`Register, and (iii) the TTAB order such other and further relief as it deems proper and just.
`
`7
`
`

`

`Dated: June 18, 2021
`
`Respectfully submitted,
`
`Weiss and Moy, P.C.
`
`/ //
`
`/
`
`Kenneth M. Motolenich-Salas
`kmotolenichsalas@weissiplaw.com
`Mark H. Weiss
`mweiss@weissiplaw.com
`Farley I. Weiss
`fweiss@weissiplaw.com
`Weiss and Moy, P.C.
`4455 E. Camelback Road, Ste. E-261
`Phoenix, AZ 85018
`
`7100 West Camino Real, Suite 302-20
`Boca Raton, FL 33433
`Tel.: 888-689-1862; Tel.: 480-994-8888
`Counsel for Applicant Wattel & York, LLC
`
`8
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on June 18, 2021, I filed the foregoing via ESTTA with the
`
`Trademark Office Trademark Trial and Appeal Board and that a true and complete copy of the
`
`foregoing has been served on counsel for Opposer Dismuke Law, PLLC by forwarding said
`
`copy on June 18, 2021 via email to:
`
`Erica DiAngelo
`1112 Channelside Drive, Suite 3
`Tampa, FL 33602
`Phone: 813-551-2484
`erica@diangelolaw.com
`
`
`/
`
`/
`
`Kenneth M. Motolenich-Salas
`
`9
`
`

`

`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
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`6/9/2021
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`Allegation of Use
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