ESTTA Tracking number:
`
`ESTTA1375139
`
`Filing date:
`
`08/05/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91292336
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`KCI Holdings, Inc.
`
`B. BRETT HEAVNER
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`901 NEW YORK AVENUE NW
`WASHINGTON, DC 20001
`UNITED STATES
`Primary email: docketing@finnegan.com
`Secondary email(s): travis.smith@finnegan.com
`202-408-4000
`
`Answer
`
`B. Brett Heavner
`
`docketing@finnegan.com, b.brett.heavner@finnegan.com,
`daniel.mello@finnegan.com, TTAB-Legal-Assistants@finnegan.com
`
`/B. Brett Heavner/
`
`08/05/2024
`
`Attachments
`
`2024-08-05 Answer to Notice of Opposition 91292336 BRYX.pdf(357559 bytes )
`
`
`
`ESTTA1375139
`
`Filing date:
`
`08/05/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91292336
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`KCI Holdings, Inc.
`
`B. BRETT HEAVNER
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`901 NEW YORK AVENUE NW
`WASHINGTON, DC 20001
`UNITED STATES
`Primary email: docketing@finnegan.com
`Secondary email(s): travis.smith@finnegan.com
`202-408-4000
`
`Answer
`
`B. Brett Heavner
`
`docketing@finnegan.com, b.brett.heavner@finnegan.com,
`daniel.mello@finnegan.com, TTAB-Legal-Assistants@finnegan.com
`
`/B. Brett Heavner/
`
`08/05/2024
`
`Attachments
`
`2024-08-05 Answer to Notice of Opposition 91292336 BRYX.pdf(357559 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`BRYX, INC.
`
`
`
`
`v.
`
`
`KCI HOLDINGS, INC.,
`
`
`Opposer,
`
`Applicant.
`
`
`Opposition No. 91292336
`
`Serial No. 97820318
`Mark: BRYX
`Filed: March 2, 2023
`
`
`
`
`
`
`
`
`
`
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
`
`
`
`KCI Holdings, Inc. (“Applicant”) answers the Notice of Opposition filed by Bryx, Inc.
`
`(“Opposer”) as follows:
`
`With respect to the preamble to the Notice of Opposition, Applicant admits that on
`
`March 2, 2023, Applicant filed U.S. Application Serial No. 97820318.
`
`
`
`With respect to the numbered Paragraphs of the Notice of Opposition, Applicant answers
`
`as follows:
`
`1.
`
`Denied. Applicant is without knowledge or information sufficient to form a belief
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`as to the truth or falsity of the allegations in Paragraph 1 and therefore denies them.
`
`2.
`
`3.
`
`Admitted.
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`Denied. Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth or falsity of the allegations in Paragraph 3 and therefore denies them.
`
`4.
`
`Admitted in part and denied in part. Applicant admits that, according to U.S.
`
`Patent and Trademark Office records, Opposer is the owner of record for U.S. Trademark
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`Registration Nos. 5473997 and 6146388. The details of these registrations are in the public
`
`
`
`record, speak for themselves, and require neither an admission nor a denial. All other allegations
`
`in Paragraph 4 are denied.
`
`5.
`
`Denied. Applicant is without knowledge or information sufficient to form a belief
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`as to the truth or falsity of the allegations in Paragraph 5 and therefore denies them.
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`6.
`
`Denied. Applicant is without knowledge or information sufficient to form a belief
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`as to the truth or falsity of the allegations in Paragraph 6 and therefore denies them.
`
`7.
`
`Denied. Applicant is without knowledge or information sufficient to form a belief
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`as to the truth or falsity of the allegations in Paragraph 7 and therefore denies them.
`
`8.
`
`Admitted in part and denied in part. Applicant admits that it filed an intent to use
`
`application (U.S. Trademark Serial No. 97820318) for the mark BRYX on March 2, 2023 (the
`
`“Opposed Application”). Applicant admits that application covers goods and services in Classes
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`9, 35, and 42. The details of this application are in the public record, speak for themselves, and
`
`require neither an admission nor a denial. All other allegations in Paragraph 8 are denied.
`
`9.
`
`10.
`
`Admitted.
`
`Admitted in part and denied in part. Applicant admits that on May 24, 2024,
`
`Opposer filed a ninety-day extension of time to oppose the Opposed Application with the
`
`Trademark Trial and Appeal Board (“TTAB”). Applicant admits that the TTAB granted on the
`
`same day. Applicant admits that the TTAB allowed Opposer until August 28, 2024 to oppose.
`
`All other allegations in Paragraph 10 are denied.
`
`11.
`
`Admitted in part and denied in part. Applicant admits that Opposer filed a Notice
`
`of Opposition to the registration of the Opposed Application on June 26, 2024. All other
`
`allegations in Paragraph 11 are denied.
`
`
`
`2
`
`
`
`12.
`
`Denied. Applicant denies that its applied-for mark is identical to Opposer’s mark
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`BRYX (U.S. Reg. No. 5473997). Additionally, Applicant denies that Opposer’s mark
`
` (U.S. Reg. No. 6146388)—which includes a
`
`stylized logo and the text “Emergency Response, Simplified.”—is confusingly similar to
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`Applicant’s applied-for mark in sight, sound, appearance, and commercial meaning.
`
`13.
`
`Denied. Applicant denies that its goods and services are identical, similar,
`
`related, or complementary to Opposer’s goods and services. The goods and services identified in
`
`Applicant’s Opposed Application consist of “Downloadable computer modelling software for
`
`use in the architecture, engineering and construction industry”; “Provision of an on-line
`
`marketplace for buyers and sellers of computer modelling software and subscription-based
`
`computer modelling software for use in the architecture, engineering and construction industry”;
`
`and “Providing temporary use of online non-downloadable computer modelling software for use
`
`in the architecture, engineering and construction industry.” The goods and services identified in
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`Opposer’s U.S. Reg. No. 5473997 consist of “downloadable mobile application for providing
`
`rescue and emergency response information.” The goods and services identified in Opposer’s
`
`U.S. Reg. No. 6,146,388 consist of “software as a service (SAAS) services featuring software for
`
`providing situational awareness for first responders.” There are no goods or services overlap
`
`between Applicant’s Opposed Application and Opposer’s registrations. The goods and services
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`perform different functions, are marketed to different target consumers, and move in different
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`trade channels. The highly specific and narrow scope of Opposer’s registrations are consistent
`
`with its marketing materials which clearly establish that its products and services are designed
`
`
`
`3
`
`
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`for the niche purpose of conveying specialized emergency response information to first
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`responders. See https://bryx.com/.
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`Moreover, Applicant denies that its goods and services are within the natural scope of
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`expansion of Opposer’s goods, services, and channels of trade. Architectural, engineering and
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`construction modelling software, and online subscription services related thereto are not within
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`the zone of natural expansion for rescue and emergency response software sold to first
`
`responders.
`
`14.
`
`Denied. The reasons discussed in Paragraphs 12-13 are incorporated herein by
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`reference.
`
`15.
`
`Denied.
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`WHEREFORE, Applicant requests that Opposer’s Notice of Opposition be dismissed
`
`with prejudice and Application Serial No. 97820318 proceed to registration.
`
`AFFIRMATIVE DEFENSES
`
`1.
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`There is no likelihood of confusion between Opposer’s marks and Applicant’s
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`applied-for mark. Applicant’s goods and services are different from the goods and services
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`identified by Opposer in its claimed registrations. Applicant’s goods and services are used in
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`different trade channels and sold under different purchasing conditions from Opposer’s goods
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`and services. Upon information and belief, neither Applicant nor Opposer have evidence of
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`actual confusion. Finally, the Trademark Examining Attorney that prosecuted Applicant’s
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`Opposed Application had considered and rejected the Opposer’s likelihood of confusion claim.
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`On July 7, 2023, Opposer submitted a Letter of Protest to the Examining Attorney. In its Letter,
`
`Opposer included nine exhibits, which included registration certificates for Opposer’s claimed
`
`registrations 5473997 and 6146388. Opposer cited as its grounds for submission: “Possible
`
`
`
`4
`
`
`
`likelihood of confusion under Trademark Act Section 2(d) with U.S. Registration Nos. 5473997
`
`and 6146388.” Nevertheless, the Trademark Examining Attorney declined to find the marks
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`confusingly similar.
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`2.
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`Opposer’s claim that there is a likelihood of confusion stemming from
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`Applicant’s goods and services being within the natural scope of expansion of Opposer’s goods,
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`services, and channels of trade is impermissible. Opposer may not “bootstrap its later” and
`
`hypothetical “entry into the [architecture, engineering, and construction industries] in order to
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`interfere with” Applicant’s adoption and use of its mark for unrelated goods and services. See
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`Elec. Data Sys. Corp. v. Edsa Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992).
`
`3.
`
`Opposer’s claims are barred and/or limited by one or more of the equitable
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`doctrines of unclean hands, laches, equitable estoppel, and/or waiver. Opposer seeks an
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`impermissible right in gross to use BRYX in software.
`
`
`
`
`
`
`
`Dated: August 5, 2024
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: / B. Brett Heavner /
`B. Brett Heavner
`Daniel R. Mello, Jr.
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4000
`
`docketing@finnegan.com
`brett.heavner@finnegan.com
`daniel.mello@finnegan.com
`TTAB-Legal-Assistants@finnegan.com
`
`Attorneys for Applicant
`KCI HOLDINGS, INC.
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` certify that a true and accurate copy of the foregoing APPLICANT’S ANSWER TO
`
`NOTICE OF OPPOSITION was served by email on August 5, 2024 on counsel for Opposer at
`
`the following addresses of record:
`
`
`
`
`
`JESSICA N. CLEMENTE
`HARTER SECREST & EMERY LLP
`50 FOUNTAIN PLAZA, SUITE 1000
`BUFFALO, NY 14202
`
`jclemente@hselaw.com
`trademark@hselaw.com
`mberchou@hselaw.com
`
`
`
`
` / Judy Valusek /
` Trademark Legal Assistant
`
`
`
`
`
`
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