Attorney Docket No.: 225573US-21
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`BOX TTAB NO FEE
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`llllllllllllllllllllllllllllllllllllllllllHIHIII
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`THE, UNITED s-1-Aims pm-ENT AND TRADEMARK on-ICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`07-29-2002
`
`U.S. Patent & TMOfcITM Man Rap: 0:, #70
`
`Robert W. Cabell,
`Petitioner
`
`V.
`
`Zorro Productions, Inc.,
`Registrant
`
`-
`
`~.,~—~—s’————~—.—~a
`
`92040681
`Cancellation No.:
`Registration Nos.: 1,524,207;
`1,731,743; 2,198,032;
`2,198,254; 2,239,219; and
`2,296,302
`Mark: ZORRO
`
`
`
`ANSWER TO PETITION FOR CANCELLATION
`
`Registrant/Respondent, Zorro Productions, Inc., a
`
`corporation under the laws of the State of California,
`
`located at
`
`125 University Avenue; Berkeley, California 94710, answers the
`
`Petition for Cancellation as follows:
`
`1.
`
`Paragraph one of the Petition for Cancellation is immaterial
`
`and irrelevant and fails to state a claim upon which relief may
`be granted. Respondent denies each allegation in the first
`
`sentence of paragraph one of the Petition. Answering the second
`through fourth sentences of paragraph one of the Petition,
`I
`
`Respondent admits that the 1919 Johnston McCulley story “The
`
`624692
`
`
`
`BOX TTAB NO FEE
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`llllllllllllllllllllllllllllllllllllllllllHIHIII
`
`THE, UNITED s-1-Aims pm-ENT AND TRADEMARK on-ICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`07-29-2002
`
`U.S. Patent & TMOfcITM Man Rap: 0:, #70
`
`Robert W. Cabell,
`Petitioner
`
`V.
`
`Zorro Productions, Inc.,
`Registrant
`
`-
`
`~.,~—~—s’————~—.—~a
`
`92040681
`Cancellation No.:
`Registration Nos.: 1,524,207;
`1,731,743; 2,198,032;
`2,198,254; 2,239,219; and
`2,296,302
`Mark: ZORRO
`
`
`
`ANSWER TO PETITION FOR CANCELLATION
`
`Registrant/Respondent, Zorro Productions, Inc., a
`
`corporation under the laws of the State of California,
`
`located at
`
`125 University Avenue; Berkeley, California 94710, answers the
`
`Petition for Cancellation as follows:
`
`1.
`
`Paragraph one of the Petition for Cancellation is immaterial
`
`and irrelevant and fails to state a claim upon which relief may
`be granted. Respondent denies each allegation in the first
`
`sentence of paragraph one of the Petition. Answering the second
`through fourth sentences of paragraph one of the Petition,
`I
`
`Respondent admits that the 1919 Johnston McCulley story “The
`
`624692
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`
`
`
`
`Curse of Capistrano” and the 1920 Douglas Fairbanks film “The
`
`Mark of Zorro” featured a character named “Zorro” who wore a
`costume with particular features and who performed certain
`
`physical feats, and that the U.S.
`
`terms of copyright for said
`
`works have expired. Answering the fifth sentence of paragraph
`
`one of the Petition, Respondent admits that the District Court
`opinion cited by Petitioner says what it says, and alleges that
`
`Petitioner has misinterpreted that case. Except as is so
`
`specifically admitted, denied and alleged, Respondent denies each
`
`remaining allegation in paragraph one of the Petition.
`
`2.
`
`The first through third and sixth sentences of paragraph two
`
`of the Petition for Cancellation are immaterial and irrelevant
`
`and fail to state a claim upon which relief may be granted.
`
`Respondent denies each allegation in the first sentence of
`
`paragraph two of the Petition. Answering the second sentence of
`
`paragraph two of the Petition, Respondent admits that for
`
`purposes of copyright law, after the expiration of the term of
`
`copyright, public domain material can be used without infringing
`
`copyright rights. Respondent denies each allegation in the third
`
`through fifth sentences of paragraph two of the Petition.
`
`Answering the sixth sentence of paragraph two of the Petition,
`
`Respondent admits that the Ninth Circuit opinion cited by
`
`Petitioner says what it says, and alleges that Petitioner has
`
`misinterpreted that case. Except as is so specifically admitted,
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`624692
`
`.
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`‘ 2 -
`
`
`
`
`
`denied and alleged, Respondent denies each remaining allegation
`
`in paragraph two of the Petition.
`
`3.
`
`Respondent denies each allegation in the first through third
`
`sentences of paragraph three of_the Petition for Cancellation.
`
`Answering the fourth and fifth sentences of paragraph three of
`
`the Petition, Respondent admits that Petitioner's Ex.
`
`"A" appears
`
`to be a reproduction of a website page maintained by Registrant
`
`and that said exhibit speaks for itself. Respondent denies each
`
`allegation in the sixth through eighth sentences of paragraph
`
`three of the Petition. Answering the ninth sentence of paragraph
`
`three of the Petition, Respondent admits that its Trademark
`
`Registrations No. 1,524,207, No. 1,731,743, No. 2,198,032, No.
`2,198,254, No. 2,239,219, and No. 2,296,302, for the goods or
`
`services identified in each of these registrations, benefit from
`
`the statutory presumptions of ownership, validity of the marks,
`
`validity of the registrations, and right to the exclusive use of
`the marks for the goods or services identified in the
`
`registrations. Respondent denies each allegation in the tenth
`sentence of paragraph three of the Petition. Except as is so
`
`specifically admitted, denied and alleged, Respondent denies each
`
`remaining allegation in paragraph three of the Petition.
`
`4.
`
`Except as is otherwise specifically admitted, denied or
`
`alleged, Respondent denies each remaining allegation of the
`
`Petition for Cancellation.
`
`624692
`
`'
`
`V;
`
`- 3 -
`
`
`
`
`
`:AFPIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`Petitioner lacks standing to file or prosecute the Petition
`
`for Cancellation.
`
`Second Affirmative Defense
`
`Petitioner is estopped to file or prosecute the Petition for
`
`Cancellation.
`
`Third Affirmative Defense
`
`Petitioner has unclean hands which bars Petitioner from
`
`filing or prosecuting this Petition for Cancellation.
`
`//
`
`//
`
`//
`
`624692
`
`1- 4 -
`
`
`
`
`
`Fourth Affirmative Defense
`
`The Copyright Act, Title 17 U.S.C., does not confer
`
`copyright on the titles of works that are copyrighted.
`
`DATED:
`
`July 26, 2002
`
`Respectfully submitted,
`
`Louis P. Petrich
`David Aronoff
`
`LEOPOLD, PETR CH & SMITH, P.CJ
`
`
`
`By:
`
`
`David Aronoff
`2049 Century Park East, Suite 3110
`Los Angeles, California 90067-3274
`Telephone:
`(310) 277-3333
`Facsimile:
`(310) 277-7444
`
`— and —
`
`David J. Kera
`
`’
`
`OBLON, SPIVAK, MCCLELLAND,
`MAIER & NEUSTADT, P.C.
`1755 Jefferson Davis Highway
`4th Floor
`
`22202
`Arlington, Virginia
`Telephone:
`(703) 413-3000
`Facsimile:
`(703) 413-2220
`
`Attorneys for Registrant
`ZORRO PRODUCTIONS,
`INC.
`
`624692
`
`
`
`
`
`PROCF OF SERVICE BY MAIL
`
`I am employed in the County of Los Angeles, State of
`California.
`I am over the age of 18 years and not a party to the
`within action; my business address is 2049 Century Park East, Los
`Angeles, California
`90067-3274.
`
`I served the foregoing document described
`On July 26, 2002,
`as ANSWER To PETITION FOR CANCELLATION on the interested parties
`in this action by placing a true copy thereof enclosed in a
`sealed envelope addressed as fol1owsE
`
`David P. Cooper, Esq.
`KOLISCH HARTWELL DICKINSON MCCORMACK & HEUSER
`
`520 S.W. Yamhill Street, Suite 200
`Portland, Oregon
`97204
`
`David J. Kera, Esq.
`OBLON, SPIVAK, MCCLEELAND,
`MAIER & NEUSTADT, P.C.
`1755 Jefferson Davis Highway, 4th Floor
`Arlington, Virginia
`22202
`-
`
`I caused such envelope with postage fully prepaid to be
`I
`placed in the United States mail at Los Angeles, California.
`am "readily familiar" with the firm’s practice of collection and
`processing correspondence for mailing.
`It is deposited with the
`U.S. postal service on that same day in the ordinary course of
`business.
`I am aware that on motion of party served, service is
`presumed invalid if postal cancellation date or postage meter
`date is more than one day after date of deposit for mailing in
`affidavit.
`
`Executed on July 26, 2002, at Los Angeles, California.
`
`Kathryn K. Toyama
`Type or Print Name
`
`‘
`
`W/
`
`624692
`
`
`
`
`
`-I
`
`
`
`ll|||lll|l||||ll||||||l|l|||||ll|||l||l|I||||ll|||
`
`07-29-2002
`U.S. Pawn! & TMO1'cITM Mail HOP! D1. #70
`
`July 29, 2002
`
`Trademark Trial and Appeal Board
`Honorable Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re:
`
`Zorro Productions, Inc. c/o Leopold, Petrich & Smith
`Mark: Robert W. Cabell v. Zorro Productions, Inc.
`Cancellation No.: 92040681
`
`Atty Dkt. No.1 225573US-238824-21-SD
`
`Dear Commissioner:
`
`ATTORNEYS AT LAW
`
`DAVID J. KERA
`(703) 412-6456
`DKERA@OBLON.COM
`
`ja-
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`We enclose the following for filing in the Trademark Trial and Appeal Board:
`
`X
`
`Answer to Petition for Cancellation
`
`Sincerely yours,
`
`OBLON, SPIVAK, MCCLELLAND,
`
`MAIER & NEUSTADT, P.C.
`
`
` David J. Ker
`
`DJK: Ojb {I2\atty\DJK\238824-225573US-cov.wpd}
`
`1755 JEFFERSON DAVIS HIGHV1/AY I FOURTH FLOOR I ARLINGTON, VIRGINIA 22202 I U.S.A.
`TELEPHONE: 703-413-3000 I FACSIMILE: 703-413-2220 I V\NVW.OBLON.COM
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