Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1195107
`
`Filing date:
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`03/07/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91274140
`
`Party
`
`Correspondence
`address
`
`Submission
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`Filer's name
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`Filer's email
`
`Signature
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`Date
`
`Defendant
`Mprezas Inc
`
`MPREZAS INC
`470 W. LARCH RD SUITE 10
`TRACY, CA 95304
`UNITED STATES
`Primary email: dingod064@gmail.com
`No phone number provided
`
`Answer
`
`Darren J Quinn
`
`dq@dqlaw.com, staff@dqlaw.com
`
`/Darren J Quinn/
`
`03/07/2022
`
`Attachments
`
`Answer of Applicant Mprezas.final.pdf(92665 bytes )
`
`

`

`Darren J. Quinn (149679)
`LAW OFFICES OF DARREN J. QUINN
`12702 Via Cortina, Suite 105
`Del Mar, CA 92014
`Tel: 858-509-9401
`
`Attorneys for Applicant Mprezas Inc.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`91274140
`
`Serial No.
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`90896029
`
`Mark:
`
`DESINFLAMAX
`
`ANSWER TO NOTICE OF
`OPPOSITION
`
`))))))))))
`
`BELMORA LLC,
`
`
`
`v.
`
`MPREZAS INC.
`
`Opposer,
`
`Applicant.
`
`
`ANSWER TO NOTICE OF OPPOSITION
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`Applicant MPREZAS, INC., erroneously sued MPREZAS INC.,
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`(“Applicant”) and through its undersigned counsel, answers the Notice of
`
`Opposition [TTABVUE 1] (“Opposition”) by BELMORA LLC (“Opposer”) as
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`follows:
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`NATURE OF THE ACTION
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`1.
` Opposer is a Virginia limited liability company, with a principal
`place of business at 2011 Crystal Drive, Suite 400, Arlington, Virginia 22202.
`
`ANSWER:
`
`Applicant lacks sufficient knowledge and information to enable it to admit
`
`or deny the allegations of paragraph 1 of the Opposition and, on that basis, denies
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`those allegations.
`
`2.
`Upon information and belief, Applicant is a California corporation,
`with an address of 470 W. Larch Road, Suite 10, Tracy, California 95304.
`
`ANSWER:
`
`Admit.
`
`3.
`Opposer is the owner of Registration No. 6074745 for the mark
`FLANAX, and Reg No 5768512 for FLANAX MENSTRUAL PAIN RELIEVER (the
`“FLANAX Marks”).
`
`ANSWER:
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`Applicant lacks sufficient knowledge and information to enable it to admit
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`or deny the allegations of paragraph 3 of the Opposition and, on that basis, denies
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`those allegations.
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`4.
`The registrations for the FLANAX Marks are valid and subsisting,
`and Opposer is currently using the FLANAX Marks.
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`ANSWER:
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`Applicant lacks sufficient knowledge and information to enable it to admit
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`or deny the allegations of paragraph 4 of the Opposition and, on that basis, denies
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`those allegations.
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`ANSWER TO NOTICE OF OPPOSITION
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`-- 2 --
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`5.
`Opposer’s use of its FLANAX trademarks dates back to 2004, and
`therefore Opposer is the senior user.
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`ANSWER:
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`Applicant lacks sufficient knowledge and information to enable it to admit
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`or deny the allegations of paragraph 5 of the Opposition and, on that basis, denies
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`those allegations.
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`6.
`Since 2004, Opposer has developed significant common law rights in
`its FLANAX Marks and has also achieved registrations of these marks for
`over-the-counter medications and remedies sold directly to consumers.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant lacks sufficient knowledge and information to enable it to admit or
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`deny any remaining allegations of paragraph 6 of the Opposition and, on that
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`basis, denies those allegations.
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`7.
`Opposer’s FLANAX Marks have been in use in interstate commerce,
`have been extensively advertised and promoted by Opposer for a period of more
`than 15 years, and have developed and represent valuable goodwill which
`benefits Opposer.
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`ANSWER:
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`Applicant lacks sufficient knowledge and information to enable it to admit
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`or deny the allegations of paragraph 7 of the Opposition and, on that basis, denies
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`those allegations.
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`
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`8.
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`Opposer’s FLANAX Marks are famous and well known.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant lacks sufficient knowledge and information to enable it to admit or
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`deny any remaining allegations of paragraph 8 of the Opposition and, on that
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`basis, denies those allegations.
`
`ANSWER TO NOTICE OF OPPOSITION
`
`-- 3 --
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`9.
`Opposer’s FLANAX Marks have trademark significance to
`purchasers and potential purchasers.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant lacks sufficient knowledge and information to enable it to admit or
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`deny any remaining allegations of paragraph 9 of the Opposition and, on that
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`basis, denies those allegations.
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`10.
`Applicant’s mark DESINFLAMAX mark is very similar to Opposer’s
`Registration No. 6074745 and to the distinctive (non-descriptive) elements of
`Opposer’s Registration No. 5768512. In particular, and without limitation, the
`FLAMAX element is the dominant and more distinctive aspect of the
`DESINFLAMAX mark. This element, FLAMAX, is substantially identical to the
`FLANAX Marks..
`
`ANSWER:
`
`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 10 of the Opposition.
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`
`
`11.
`Applicant’s Mark so resembles Opposer’s FLANAX Marks that the
`use and registration of Applicant’s Mark is likely to cause confusion, mistake
`and/or deception as to the source or origin of Applicant’s services in violation of
`Section 2(d) of the Trademark Act, and will injure and damage Opposer and the
`goodwill and reputation symbolized by Opposer’s FLANAX Marks.
`
`ANSWER:
`
`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 11 of the Opposition.
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`12. Confusion is likely due to the longstanding and prominent use of
`Opposer’s FLANAX Marks, the strength of these marks, and the fact that they are
`well known and entitled to a broad scope of protection.
`
`ANSWER:
`
`Opposer’s allegations of law do not require an admission or denial.
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`Applicant lacks sufficient knowledge and information to enable it to admit or
`
`ANSWER TO NOTICE OF OPPOSITION
`
`-- 4 --
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`deny any remaining allegations of paragraph 12 of the Opposition and, on that
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`basis, denies those allegations.
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`13.
`Applicant is not affiliated or connected with or endorsed or
`sponsored by Opposer, nor has Opposer approved any goods or services of the
`Applicant, or granted any license to the Applicant.
`
`ANSWER:
`
`Admit.
`
`14. Confusion is likely due to the fact that the parties’ services are
`distributed and made available to customers in the same ways.
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`ANSWER:
`
`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 14 of the Opposition.
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`15. Opposer’s products are analgesics, antacids; cough lozenges, and
`liniments.
`
`ANSWER:
`
`Applicant admits that Opposer’s registration no. 6074745 for FLANAX
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`lists “Antacids; Cough lozenges; Liniments.”
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`Applicant admits that Opposer’s registration no. 5768512 for FLANAX
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`MENSTRUAL PAIN RELIEVER lists “Orally ingestible tablets of Naproxen
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`Sodium for use as an analgesic.”
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`To the extent not expressly admitted, Applicant denies any remaining
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`allegations of paragraph 15 of the Opposition.
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`16.
`The Applicant’s pending application seeks to register its very
`similar mark for “Anti-inflammatory ointments; Cough syrups; Pain relief
`medication; Topical analgesic creams; Sports cream for relief of pain.”
`
`ANSWER:
`
`Opposer’s allegations of law do not require an admission or denial.
`
`ANSWER TO NOTICE OF OPPOSITION
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`-- 5 --
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`Applicant denies as to “very similar.” Applicant’s admits that its §1(b)
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`application for DESINFLAMAX (SN 90896029) lists “Anti-inflammatory
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`ointments; Cough syrups; Pain relief medication; Topical analgesic creams;
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`Sports cream for relief of pain.”
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`17.
`The products of Applicant and Opposer are so closely related that
`they are likely to be seen by consumers in the same areas of internet and brick
`and mortar shopping outlets. Relevant consumers are likely to be deceived and
`to assume erroneously that Applicant’s goods are offered by the Opposer or that
`the Applicant is in some way connected with, sponsored by, or affiliated with
`Opposer, all causing irreparable harm to Opposer.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant lacks sufficient knowledge and information to enable it to admit or
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`deny any remaining allegations of paragraph 17 of the Opposition and, on that
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`basis, denies those allegations.
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`18.
`Registration of the mark shown in Application Ser. No. 90896029
`will result in damage to Opposer under the provisions of Section 2(d) of the U.S.
`Trademark Act, 15 U.S.C. §1052, as alleged herein.
`
`ANSWER:
`
`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 18 of the Opposition.
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`19.
`Applicant’s Mark is very similar to the Opposer’s registered marks,
`so that Applicant’s Mark is likely to cause deception in violation of Section 2(a)
`of the Trademark Act by misdescribing the origin of the goods in a way that is
`likely to alter a purchaser’s decisions to acquire Applicant’s goods and services.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 19 of the Opposition.
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`20.
`Applicant’s mark so closely resembles Opposer’s FLANAX Marks
`that it falsely suggests a connection with Opposer in violation of Section 2(a) of
`the Trademark Act, because Applicant’s mark will cause purchasers to assume
`
`ANSWER TO NOTICE OF OPPOSITION
`
`-- 6 --
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`that goods or services offered under Applicant’s mark are associated with
`Opposer.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 20 of the Opposition.
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`21.
`For the foregoing reasons, Opposer and the public would be
`damaged by the registration of Applicant’s Mark in U.S. Application Ser. No.
`90896029.
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`ANSWER:
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`Opposer’s allegations of law do not require an admission or denial.
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`Applicant denies any remaining allegations of paragraph 20 of the Opposition.
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`AFFIRMATIVE DEFENSES
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`1.
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`Courts and/or the Trademark Trial and Appeal Board have issued
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`rulings that may limit or eliminate Opposer’s claimed rights.
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`2.
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`3.
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`Hundreds of registered marks in I/C 5 end in “AX.”
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`Pursuant to T.B.M.P §514.03, Applicant asserts that it is at least
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`entitled registration with a particular restriction. To the extent that the TTAB
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`determines that Applicant’s listing of goods will cause a likelihood of confusion,
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`Applicant requests that its application and/or Opposer’s registration(s) be
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`amended to conform to the findings of the TTAB.
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`4.
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`To the extent that any affirmative defense by Applicant merely
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`negates element(s) that Opposer has the burden of proving, the burden of proof
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`for such element(s) remains on Opposer.
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`Dated:
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`March 7, 2022
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`Respectfully submitted by:
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`LAW OFFICES OF DARREN J. QUINN
`DARREN J. QUINN
`
` s/s Darren J. Quinn
`
`Darren J. Quinn
`
`ANSWER TO NOTICE OF OPPOSITION
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`-- 7 --
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`12702 Via Cortina, Suite 105
`Del Mar, California 92014
`Tel: 858-509-9401
`
`
`
`Attorneys for Applicant MPREZAS INC.
`
`ANSWER TO NOTICE OF OPPOSITION
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`-- 8 --
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`Certificate of Service
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`I hereby certify that a true and complete copy of the foregoing has been
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`served on counsel for Applicant on March 7, 2022, by e-mail.
`
`Christopher E. Gatewood
`THRESHOLD COUNSEL, PC
`1905 Huguenot Road, Suite 200
`Richmond, VA 23235
`chris@threshold.cc
`
`Justin M. Laughter
`justin@threshold.cc
`THRESHOLD COUNSEL, PC
`1905 Huguenot Road, Suite 200
`Richmond, VA 23235
`
`Attorneys for Opposer, BELMORA LLC
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` ss/ Darren J. Quinn
`
`ANSWER TO NOTICE OF OPPOSITION
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`-- 9 --
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`