Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1197394
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`Filing date:
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`03/18/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91269708
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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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`Attachments
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`Defendant
`PDX Aromatics LLC
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`ANDREW D. PRICE
`VENNABLE LLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-9998
`UNITED STATES
`Primary email: trademarkdocket@venable.com
`Secondary email(s): adprice@venable.com, pehopkins@venable.com,
`pjwyles@venable.com, amweinstein@venable.com
`202-344-8156
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`Answer and Counterclaim
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`Paula E. Hopkins
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`trademarkdocket@venable.com, adprice@venable.com, pehop-
`kins@venable.com, pjwyes@venable.com
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`/Paula E. Hopkins/
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`03/18/2022
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`PDX Aromatics Answer Affirmative Defenses and Counterclaims.pdf(185764
`bytes )
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`Registration subject to the submission
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`Registration no.
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`4355033
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`Registration date
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`06/18/2013
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`Register
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`Registrant
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`Principal
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`Proximo Spirits, Inc.
`333 WASHINGTON STREET
`JERSEY CITY, NJ 07302
`UNITED STATES
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`Goods/services subject to the submission
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`Class 032. First Use: Nov 1, 2012 First Use In Commerce: Nov 1, 2012
`Requested goods and services in the class: Non-alcoholic cocktail mix; non-alcoholic malt beverages
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`Grounds for cancellation
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`Abandonment
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`Mark never used in commerce
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`Trademark Act Section 14(3)
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`Trademark Act Section 14(6)
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`Proximo Spirits, Inc.
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`Opposer,
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`____________________________________
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`Opposition No. 91269708
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`PDX Aromatics LLC
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`Applicant.
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`____________________________________
`Attorney’s Reference: 546454
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`Marks:
`Appl. Serial No. 90/109,987; 90/110,336
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`ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS
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`Answer
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`Applicant, PDX Aromatics LLC, by its attorneys, hereby answers the allegations set forth
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`in the Notice of Opposition filed by Proximo Spirits, Inc. (“Opposer”). Applicant denies each
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`and every allegation of the Notice of Opposition unless otherwise admitted or responded to as
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`follows:
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`1. Applicant avers that the file wrappers for Applicant’s applications speak for themselves
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`as to the contents thereof.
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`2. Admitted to the extent that this is the information shown in the Trademark Electronic
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`Search System (“TESS”).
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`3. Applicant is without sufficient knowledge or information as to the truth of the allegations
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`set forth in Paragraph 3 of the Opposition, and therefore denies said allegations.
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`4. Admitted to the extent this is the information shown in TESS, though Applicant is
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`without sufficient knowledge or information to form a belief as to the truth of the
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`allegations therein, and therefore denies the same.
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`5. Admitted, except to the extent that the statement implies any likelihood of confusion and
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`subject to Applicant’s affirmative defenses and counterclaims.
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`6. Applicant denies that Applicant’s marks contain a design element that is similar to the
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`design element included in some of Opposer’s marks.
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`7. Denied.
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`8. Applicant avers that the file wrappers for Applicant’s applications speak for themselves
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`as to the contents thereof. Applicant is without sufficient knowledge or information to
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`form a belief as to the truth of the allegations made with respect to Opposer’s use of its
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`marks, and therefore denies the same. Applicant denies that the Parties’ respective goods
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`are commercially related and source confusion is likely.
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`9. Denied.
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`10. Denied.
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`11. Applicant is without sufficient knowledge or information to admit or deny the
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`allegations of Paragraph 11 of the Notice of Opposition, and on that basis denies those
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`allegations.
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`12. Denied.
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`Affirmative Defenses
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`The following affirmative defenses are based on the facts and information currently known to
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`Applicant. Applicant hereby reserves its right to assert additional affirmative defenses and any
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`other defenses or counterclaims at law or in equity that may now exist or in the future become
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`known through the process of discovery or otherwise in this proceeding.
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`13. Opposer fails to state a claim upon which relief may be granted.
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`14. Opposer’s marks and Applicant’s marks are not confusingly similar.
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`15. The Opposition is barred by the Morehouse doctrine, by virtue of the fact that Opposer
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`has not been damaged because Applicant owns existing registrations for substantially
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`identical marks for the same or substantially identical goods or services, namely US Reg.
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`Nos. 4,926,559 and 6,466,889 for KRAKEN KRATOM and
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`(“Applicant’s Existing Registrations”).
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`16. Applicant’s marks and Opposer’s marks have coexisted in the marketplace for almost
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`eight years with no evidence of actual confusion with respect to Opposer’s goods/services
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`being found in Opposer’s registrations. Granting registration to Applicant will have no
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`impact on the use of Opposer’s marks in commerce and will not cause any damage to
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`Opposer.
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`17. The Opposition is barred by the doctrine of laches, by virtue of the Parties’ nearly eight
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`years of coexistence with no evidence of actual confusion and Applicant’s Existing
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`Registrations for substantially identical marks for the same or substantially identical
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`goods or services.
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`Counterclaims
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`Abandonment
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`18. Opposer is the owner of U.S. Trademark Registration No. 4,355,033 for the mark
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`KRAKEN covering “Non-alcoholic cocktail mix; beer; non-alcoholic malt beverages;
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`flavored brewed malt beverages; alcoholic malt beverages,” in International Class 32.
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`19. Opposer filed the subject Opposition against Applicant’s applications for
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`confusion pertaining to the marks featured in Applicant’s applications.
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` and
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` on the basis of priority and likelihood of
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`20. Upon information and belief, Opposer is not currently using the KRAKEN mark featured
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`in its registration in connection with any of the goods covered in the registration, based
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`on Applicant’s review of Opposer’s website, namely, https://www.krakenrum.com/.
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`21. Upon information and belief, Opposer has not used the KRAKEN mark featured in its
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`registration in connection with non-alcoholic cocktail mix and non-alcoholic malt
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`beverages for a period of more than three consecutive years, and has an intent not to
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`resume use which results in prima facie evidence of abandonment.
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`22. Upon information and belief, Opposer has never used the KRAKEN mark featured in its
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`registration in connection with non-alcoholic cocktail mix and non-alcoholic malt
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`beverages.
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`Lack of Bona Fide Use
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`23. Applicant repeats and reasserts each and every allegation set forth in Paragraphs 18
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`through 22.
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`24. Upon information and belief, there was no bona fide use of the KRAKEN mark by
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`Opposer in connection with non-alcoholic cocktail mix and non-alcoholic malt beverages
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`within the expiration of the time for filing a Statement of Use.
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`25. By reason of the foregoing, Applicant will be damaged by the continued registration of
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`Opposer’s KRAKEN mark inasmuch as Opposer is relying on its KRAKEN registration
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`to oppose Applicant’s Applications, and Opposer’s registration should be canceled.
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`WHEREFORE, Applicant prays that the Notice of Opposition be denied, that this action be
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`dismissed with prejudice, that Opposer’s KRAKEN registration be cancelled, and that
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`Application Serial Nos. 90/109,987 and 90/110,336 be forwarded for issuance of a Notice of
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`Allowance.
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`The Counterclaims to cancel Reg. No. 4,355,033 are submitted together with the statutory
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`filing fee of $600.
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`//
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`Respectfully submitted,
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`Date: March 18, 2022
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`_________________
`Andrew D. Price
`Paula E. Hopkins
`Venable LLP
`P.O. Box 34385
`Washington, D.C. 20043-4385
`Telephone: 202-344-8156
`Facsimile: 202-344-8300
`Attorneys for Applicant
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`The undersigned, attorney for Applicant, hereby certifies that she served, by email, a copy of
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`CERTIFICATE OF SERVICE
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`the ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS upon:
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`ERICA R. HALSTEAD
`ABELMAN, FRAYNE & SCHWAB
`666 THIRD AVE., 10TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`ehalstead@lawabel.com, DOCKET@LAWABEL.COM
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`this 18th day of March, 2022.
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`Paula E. Hopkins
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