Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1203726
`
`Filing date:
`
`04/18/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91274969
`
`Party
`
`Correspondence
`address
`
`Defendant
`Vitadreams Inc.
`
`VITADREAMS INC.
`130 LEE AVENUE, UNIT 315
`BROOKLYN, NY 11211
`UNITED STATES
`Primary email: eswtrading@gmail.com
`Secondary email(s): jmf@sochrim.com
`No phone number provided
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer and Counterclaim
`
`Howard Eichenblatt
`
`h@eichenblattlaw.com
`
`/Howard Eichenblatt/
`
`04/18/2022
`
`Attachments
`
`Answer to Notice of Opposition and Counterclaims.pdf(142774 bytes )
`
`Registration subject to the submission
`
`Registration no.
`
`6247110
`
`Registration date
`
`01/12/2021
`
`Register
`
`Registrant
`
`Principal
`
`Welly Health PBC
`8733 LIVINGSTON LANE
`EDEN PRAIRIE, MN 55347
`UNITED STATES
`Email: hello@getwelly.com
`
`Goods/services subject to the submission
`
`Class 005. First Use: Apr 5, 2020 First Use In Commerce: Apr 5, 2020
`All goods and services in the class are requested, namely: Pain relief medication; Analgesic Prepara-
`tion, anti-pyretic and anti-inflammatory preparations; Allergy and sinus medication; Analgesic sleep-
`ing aid; Sleep-aidpreparations; All preparations containing acetaminophen; Pharmaceutical prepara-
`tions, namely, allergy preparations, antihistamines; Pharmaceutical preparations, namely, anti-
`histaminic and decongestant agents; Antiflatulent; Preparations for prevention and treatment of mo-
`tion sickness, nausea and vomiting; Pharmaceutical anti-diarrheal preparations; Pharmaceutical pre-
`parations for the treatment ofgastro-intestinal disorders; Pharmaceutical preparations to support
`gastro-intestinal health
`
`Grounds for cancellation
`
`The mark is merely descriptive
`
`Trademark Act Sections 14(1) and 2(e)(1)
`
`The mark is not inherently distinctive and has not
`acquired distinctiveness
`
`Trademark Act Sections 14(1) and 1,2 and 45;
`and Section 2(f)
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`In the Matter of Application Serial No. 90/568,202
`Filed: March 9, 2021
`Mark: WELLYEAH
`
`
`
`Welly Health PBC
`
`Opposer
`
`v.
`
`Vitadreams Inc.
`
`Applicant.
`
`
`
`
`
`Opposition No. 91274969
`
`Mark: WELLYEAH
`
`Filing Date: March 9, 2021
`
`Published: November 9, 2021
`
`
`
`ANSWER TO NOTICE OF OPPOSITION AND COUNTERCLAIMS
`
`
`
`ANSWER
`
`Applicant Vitadreams Inc., (“Applicant”) by and through its undersigned attorneys, hereby responds
`based on its own knowledge and actions, to the Notice of Opposition (“Opposition”), filed by the Opposer
`Welly Health PBC (“Opposer”), as follows, addressing the numbered grounds for opposition seriatim.
`
`1. Applicant admits the allegations in Paragraph 1.
`
`2. Applicant lacks knowledge and information sufficient to know whether or not the allegations in
`
`Paragraph 2 are true, and upon that basis, denies the allegations contained therein.
`
`3. Applicant states that the applications and registrations referenced in Paragraph 3 speak for
`
`themselves, and denies the allegations of Paragraph 3 to the extent they are inconsistent with
`
`them.
`
`4. Applicant lacks knowledge and information sufficient to know whether or not the allegations in
`
`Paragraph 4 are true, and upon that basis, denies the allegations contained therein.
`
`
`
`1
`
`

`

`5. Applicant lacks knowledge and information sufficient to know whether or not the allegations in
`
`Paragraph 5 are true, and upon that basis, denies the allegations contained therein.
`
`6. Applicant denies that its applied for mark WELLYEAH and Opposer’s WELLY mark are similar
`in sight, sound, and overall commercial impression, although admits that the Opposer’s mark is
`contained within Applicant’s mark in its entirety.
`
`7. Applicant admits that the goods listed in its Application include “vitamin supplements; vitamin
`and mineral supplements” in class 5, but denies that these goods are highly related to the goods
`offered by Opposer under Opposer’s WELLY registrations because the goods described therein
`
`do not pertain to vitamins. Applicant similarly denies that these goods are highly related to the
`goods offered by Opposer under Opposer’s 88732470 application because the goods described
`
`therein do not pertain to vitamins. Applicant admits that these goods are related to the goods
`offered by Opposer under Opposer’s 90359693 application only to the extent that they include
`“vitamin and mineral supplements”.
`
`8. Applicant lacks knowledge and information sufficient to know whether or not the allegations in
`
`Paragraph 8 are true, and upon that basis, denies the allegations contained therein.
`
`9. Applicant lacks knowledge and information sufficient to know whether or not the allegations in
`
`Paragraph 9 are true, and upon that basis, denies the allegations contained therein.
`
`10. Applicant denies the allegations in Paragraph 10.
`
`11. Applicant denies the allegations in Paragraph 11.
`
`12. Applicant admits the allegations in Paragraph 12.
`
`13. Applicant admits the allegations of Paragraph 13 to the extent that WELLY marks were filed
`prior to Applicant’s mark, but denies the allegations of Paragraph 13 alleging that the Opposer is
`entitled to any priority over the Applicant to Applicant’s WELLYEAH mark.
`
`14. Applicant denies the allegations of Paragraph 14.
`
`
`
`
`
`
`
`
`
`
`
`2
`
`

`

`AFFIRMATIVE DEFENSES
`
`Lack of Damages
`
`
`
`Opposer has not been damaged, and cannot be damaged by the eventual registration of the
`
`WELLYEAH mark. Opposer has no reasonable belief in damages resulting from the pendency and
`
`eventual registration of the WELLYEAH mark. Accordingly, Opposer has no standing to oppose.
`
`
`
`
`
`No Likelihood of Confusion
`
`Opposer lacks rights in any mark which is likely to be confused with Applicant’s mark. First,
`
`Opposer has no registered mark for which the goods of vitamin and mineral supplements are claimed as
`they are claimed in Applicant’s mark.
`
`Opposer states that Opposer’s mark is contained within Applicant’s mark in its entirety, but this
`alone in no manner evinces a likelihood of confusion, particularly since the letters that form “WELLY” is
`divided between two separate words in the Applicant’s mark – namely, “WELL” and “YEAH”, which in
`the lease eviscerates the inclusion of the mark in half. The Applicant’s mark and the Opposer’s marks
`
`should each be compared as a whole rather than apply an unnatural emphasis on one word and merely the
`
`first letter of a second word. That the commercial impressions made by the marks are different is
`
`immediately apparent since the marks have different meanings, connotations, and sounds. Indeed, the
`
`Examining Attorney at the United States Patent and Trademark Office responsible for handling the
`Applicant’s application cited no prior pending trademark registrations or applications which would bar
`registration of the application – a fact which merits weight in this proceeding.
`
`Setting aside the immediate interpretation that “Welly” is a modification of “well”, which is
`
`clearly merely descriptive as applied to the various wellness products identified in their class descriptions
`and therefore not entitled to trademark rights, a second interpretation is that “Welly” is the common, well-
`known nickname for “Wellington”. In converse, “Well Yeah” is a typical playful rejoinder to what are
`
`perceived as overly obvious statements, although it could also be interpreted as an affirmation based on
`its rhyming with “Hell Yeah”. Regardless of the interpretations, the meanings of the marks are grossly
`
`different.
`
`
`
`
`
`
`
`
`
`3
`
`

`

`Opposer’s Marks are Invalid
`
`“Welly” is a modification of “well”, which is merely descriptive as applied to the various
`wellness products identified in Opposer’s class descriptions and therefore are not entitled to trademark
`rights. Unlike Applicant’s mark, “Welly” distinctly lacks any trademarkable content beyond this meager
`modification of “well”, which is insufficient for trademark protection.
`
`Further “well” is weak as a source indicator. Opposer is not the first or the only entity to use the
`word “well” on or in connection with wellness goods and therefore consumers are unlikely to recall the
`WELLY marks when they see the word “well” on wellness products. As a sampling of the vast but
`
`unsurprising ubiquity of the word:
`
`1.
`
` PREGWELL, Reg. 6661514, for IC005. Vitamins; Vitamin supplements.
`
`2. MULTIWELL, Reg. 6661513, for IC005. Vitamins; Vitamin supplements; Multi-vitamin
`
`preparations.
`
`3. EYEWELL, Reg. 6661398, for IC005. Vitamin preparations; vitamin supplements; mixed
`
`vitamin preparations; multi-vitamin preparations.
`
`4. JOINTWELL. Reg. 6661397, for IC005. Vitamins, Vitamin supplements.
`5. TREEWELL. Reg. 6663380, for IC032. …vitamins…
`6. LOVE YOURSELF WELL. Reg. 6642736, for IC005. Vitamin supplements; dietary
`
`supplements; nutritional supplements.
`7. VICWELL. Reg. 6529072, for IC005. … Vitamins and vitamin preparations.
`8. NAILWELL, Reg. 6604158, for IC005. Vitamins.
`
`9. BONEWELL, Reg. 6604157, for IC005. Vitamins, Vitamin Supplements; Vitamin tablets.
`
`10. PAINWELL, Reg. 6604153, for IC005. Vitamins; Vitamin supplements; Vitamins and
`
`vitamin preparations; Multi-vitamin preparations.
`
`11. BITEWELL, Reg. 6579591, for IC005. On-line retail store services featuring subscription
`
`boxes containing foods and beverages, vitamins and supplements, and other consumable
`wellness products…
`12. BRAINWELL, Reg. 6557029, for IC005. Vitamins; Vitamin supplements; Vitamins and
`
`vitamin preparations.
`13. FEELING WELL, Reg. 6461592, for IC005. … Vitamin and mineral supplements.
`
`14. JOINWELL, Reg. 6448456, for IC005. Disinfectants; Adhesive bands for medical
`purposes…. Vitamin supplement patches; Vitamin preparations; Vitamin supplements.
`15. WELLWEE, Reg. 6287308, for IC005. Dietary and nutritional supplements; vitamin
`
`supplements.
`
`
`
`4
`
`

`

`Notably, unlike the WELLY marks, the above-referenced marks add substantially greater mark
`content than the meager “y”.
`
`As the WELLY marks were not used in commerce more than five years ago, they are not entitled
`to registration based on acquired distinctiveness. Accordingly, WELLY’s registered marks and applied-
`
`for marks are invalid and should be cancelled and refused, respectively.
`
`
`
`Defenses Reserved
`
`Applicant reserves the right to assert defenses as may be warranted by discovery in this matter.
`
`Applicant does not knowingly or intentionally waive any applicable defense.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`COUNTERCLAIMS FOR CANCELATION
`
`OF REGISTRATION NOS. 5,789,505, 5,891,235, 6,247,110
`
`Applicant believes that it will continue to be damaged by, and as evidenced by the Opposer’s Notice
`of Opposition, harassed because of the continued registration of Opposer’s Registration Nos. 5,789,505,
`
`5,891,235, 6,247,110, and if allowed to register, App. Nos. 88732470, 90359693. Pursuant to 37 C.F.R.
`
`Section 2.106(b)(2) and Section 313 of the Trademark Trial and Appeal Board Manual of Procedure,
`
`Applicant hereby asserts the invalidity of these mark registrations and applications based on their being
`
`merely descriptive. As grounds therefor, Applicant alleges as follows:
`
`1. WELLY, per Reg. 5,789,505, was first used on Apr. 07, 2019.
`
`2. WELLY, per Reg. 5,891,235, was first used on Apr. 07, 2019.
`
`3. WELLY, per Reg. 6,247,119, was first used on Apr. 05, 2020.
`
`4. WELLY, per App. No. 88732470, has as of the date of this ANSWER TO NOTICE OF
`
`OPPOSITION AND COUNTERCLAIMS, not been used in commerce, nor has a Statement of
`
`Use been filed.
`
`5. WELLY, per App. No. 90359693, has as of the date of this ANSWER TO NOTICE OF
`
`OPPOSITION AND COUNTERCLAIMS, not been used in commerce, nor has a Statement of
`
`Use been filed.
`6. The Opposer uses the domain name “getwelly.com” in order to sell products using its WELLY
`
`mark.
`7. “Getwelly”, as used in Opposer’s domain name, would primarily be understood by consumers to
`comprise the two separate words of “get” and “welly”.
`8. “Get well soon” is a common expression in regular English discourse.
`9. All of the letters of the word “well” appear in Opposer’s WELLY marks.
`10. The word “well” means “in good health”.
`11. Words in English are frequently transformed into adjectives by adding the letter “y” to the end.
`12. The Opposer does not, as of the date of this ANSWER TO NOTICE OF OPPOSITION AND
`
`COUNTERCLAIMS, have available for sale vitamin products on its getwelly.com website.
`
`13. The Opposer does not, as of the date of this ANSWER TO NOTICE OF OPPOSITION AND
`
`COUNTERCLAIMS, have available for sale nutritional supplement products on its getwelly.com
`
`website.
`
`14. The Opposer does not, as of the date of this ANSWER TO NOTICE OF OPPOSITION AND
`
`COUNTERCLAIMS, have available for sale vitamin products via its Amazon storefront.
`
`
`
`6
`
`

`

`15. The Opposer does not, as of the date of this ANSWER TO NOTICE OF OPPOSITION AND
`
`COUNTERCLAIMS, have available for sale nutritional supplement products via its Amazon
`
`storefront.
`
`16. The Opposer sells wellness products under its WELLY marks.
`
`17. Adhesive bandages, bandages for dressing, gauze pads, antibiotic ointments, anti-itch ointments,
`
`first aid tools, preparations for treatment of burn, blister treatments, gauze, and medical adhesive
`
`tape, are all wellness products.
`
`18. All of the goods referenced in Paragraph 18 of these COUNTERCLAIMS are included amongst
`the goods described in Opposer’s 5,789,505 and 5,891,235 registrations.
`
`19. Pain relief medication, analgesic preparation, anti-pyretic and anti-inflammatory preparations,
`
`allergy and sinus medication, analgesic sleeping aids, sleep-aid preparations, preparations
`
`containing acetaminophen, pharmaceutical preparations, anti-flatulent, preparations for
`
`prevention and treatment of motion sickness, nausea and vomiting, and pharmaceutical
`
`preparations to support gastro-intestinal health are all wellness products.
`
`20. The goods references in Paragraph 20 of these COUNTERCLAIMS are included amongst the
`goods described in Opposer’s 6,247,110 mark.
`21. Pain treatment patches, pain treatment creams, sleep aid patches, pharmaceuticals, cold and sinus
`
`relief medicines, pharmaceutical preparations, cough drops, throat lozenges, and antacids are all
`
`wellness products.
`
`22. The goods references in Paragraph 22 of these COUNTERCLAIMS are included amongst the
`goods described in Opposer’s 88732470 application.
`23. Vitamin and mineral supplements, vitamins, gummy vitamins, herbal supplements, nutritional
`
`supplements, herbal supplements for boosting energy, nutritional supplements for boosting
`
`energy, natural sleep aid preparations, herbal supplements for sleeping problems, prebiotic
`
`supplements, and heartburn relief medications are all wellness products.
`
`24. The goods references in Paragraph 24 of these COUNTERCLAIMS are included amongst the
`goods described in Opposer’s 90359693 application.
`25. Applicant has standing to counterclaim for cancellation and opposition to Opposer’s Registration
`
`Nos. 5,789,505, 5,891,235, 6,247,110, and App. Nos. 88732470, 90359693 at least because
`Applicant’s App. No. 90568202 has been opposed by Opposer relying on the 5,789,505,
`5,891,235, 6,247,110 registrations and 88732470, 90359693 applications, the Opposer’s herein
`
`referenced registrations and applications impede Applicant from obtaining a registration for the
`Applicant’s 90568202 application, and Applicant is harmed by this continued impediment.
`26. Applicant’s applied-for WELLYEAH mark contains the words “well” and “yeah”.
`
`
`
`7
`
`

`

`27. “Eah” is not a word.
`28. Consumers are unlikely to recognize “Eah” as a word.
`29. There are at least fifteen registered marks which include the word “well” for goods which include
`“vitamins”.
`30. WELLY, per Reg. 5,789,505, has not be used in commerce for more than five years and therefore
`
`has not acquired distinctiveness.
`
`31. WELLY, per Reg. 5,789,505, is invalid for being merely descriptive and must be cancelled.
`
`32. WELLY, per Reg. 5,891,235, has not be used in commerce for more than five years and therefore
`
`has not acquired distinctiveness.
`
`33. WELLY, per Reg. 5,891,235, is invalid for being merely descriptive and must be cancelled.
`
`34. WELLY, per Reg. 6,247,119, has not be used in commerce for more than five years and therefore
`
`has not acquired distinctiveness.
`
`35. WELLY, per Reg. 6,247,119, is invalid for being merely descriptive and must be cancelled.
`
`WHEREFORE, Applicant requests that the Opposition proceeding be dismissed, with prejudice,
`and that Applicant’s application be allowed to mature to registration. Service has been made on
`Opposer’s counsel, as shown in the appended Certificate of Service.
`
`
`
`Dated April 18, 2022
`
`Respectfully submitted,
`
`Vitadreams Inc.
`By its attorney,
`
`/Howard Eichenblatt/ .
`
`Howard Eichenblatt
`New York Bar No. 5273966
`Law Offices of Howard Eichenblatt
`7420 Ridge Blvd. 4P
`Brooklyn, NY 11209
`(732) 379-8128
`h@eichenblattlaw.com
`Attorney for Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`

`

`I hereby certify that on April 18, 2022, I electronically filed a true and correct copy of this document
`
`with the TTAB via ESTTA.
`
`CERTIFICATE OF FILING
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Howard Eichenblatt/ .
`
`Howard Eichenblatt
`
`
`9
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on March April 18, 2022, I served a copy of this document on counsel of record
`
`for Opposer by email to the following addresses:
`
`
`
`dyan.house@bakermckenzie.com
`
`karen.hays@bakermckenzie.com
`
`dallastrademarks@bakermckenzie.com
`
`ipsu.officesupportsnow@bakermckenzie.com
`
`ipsusnow@bakermckenzie.com
`
`
`
`
`
`/Howard Eichenblatt/ .
`
`Howard Eichenblatt
`
`
`
`10
`
`