BULKY DOCUMENTS
`(Exceeds 300 pages)
`
`Proceeding] Serial No: 9204922 1
`
`Filed: 8-10-O9
`
`Title: PLAID INC. V. PLAID, INC.
`
`Part 1 of 2
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`
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`Processed by Curtis Puryear
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`
`(Exceeds 300 pages)
`
`Proceeding] Serial No: 9204922 1
`
`Filed: 8-10-O9
`
`Title: PLAID INC. V. PLAID, INC.
`
`Part 1 of 2
`
`
`
`Processed by Curtis Puryear
`
`
`
`CHIPMAN, MAZZUCCO,
`LAND & PENNAROLA, LLC
`ATTORNEYS AT LAW
`
`RICHARD 5. LAND
`WARD .J. MAZZUCCO
`FRANCIS G. PENNAROLA
`
`EDWARD M. BARRON
`CATHERINE A. CUGGINO
`
`DAVID R. CH I PMAN
`retired
`
`30 MAIN STREET. SUITE 204
`DANBURY, CT O68IO-3043
`
`TEL (203)744-1929
`
`GENERAL FAX (203) 790-5954
`REAL ESTATE FAX (203) 744-537I
`DAN BU RYLAW.COM
`
`August 7, 2009
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`PLAID INC. V. PLAID, INC.
`Cancellation No.: 92049221
`
`«7/;
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`//
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`3 /,'}S“
`’
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`/
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`Enclosed for filing is the Respondent's Memorandum of Law in Position to Motion for
`Summary Judgment, along with the Affidavit of Francis G. Pennarola and Darryl Ohrt.
`
`If you have any questions, please call.
`
`Very truly;yours,
`1/‘
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`‘
`
`Francis G. Pennarola
`
`/cp
`Enclosures
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`mmmmmmmmmm
`08-10-2009
`I4‘:/7” Vail Rcpl. Cl.
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`'5 Patent
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`933
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`TTAB
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`IN THE UNITED STATES PATENT AND TRADEI\/Lr\1\1\ uFr‘1\,l1
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark Registration No.: 3,412,392
`Mark: PLAID
`
`Date Registered: April 15, 2008
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`PLAID INC.
`
`Petitioner,
`
`<
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`PLAID, INC.
`
`Respondent.
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`\./\./%/\/\/\/%\/\/3
`
`Cancellation No.: 92049221
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`RESPONDENT'S MEMORANDUM OF LAW
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`IN OPPOSITION TO MOTION FOR SUMMARY JUDGMENT
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`Respondent PLAID, INC. ("Respondent") respectfully submits this Memorandum of
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`Law in opposition to Petitioner's Motion for Summary Judgment dated July 3, 2009.
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`PRELIMINARY STATEMENT
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`In Petitioner's Preliminary Statement, it attempts to make the case that both Petitioner
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`and Respondent's businesses use the exact same mark, in the same business, the goods and
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`services are identical, both parties market to the same audience, the way both parties describe
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`their respective services is identical, and Petitioner used the mark "Plaid" first. If Petitioner's
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`alleged "facts" were true and supported by the evidence and testimony, a decision to cancel the
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`Mark of Respondent would be a simple matter of law. The fact is that Petitioner has not made
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`its case nor met any reasonable burden of proof to warrant the cancellation of Respondent's
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`Mark, nor even the eligibility of Petitioner's mark to become a US Federal Trademark.
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`In its Preliminary Statement, Petitioner follows with "Faced with this daunting set of
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`facts, Respondent has resorted to arguing that its purportedly greater use of the internet and
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`social media in connection with its business makes confusion between Petitioner and
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`Respondent unlikely. But this makes no sense."
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`Petitioner's statement is false. Respondent did not resort to greater use of the Internet,
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`Respondent planned all along to build its business in connection with its mark using the
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`Internet.
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`A literal interpretation of Respondent's custom-crafted description of goods and
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`services reveals what Petitioner has failed to see. Respondent's reasons for rebranding
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`Respondent's company, and adopting and using the name PLAID as a service mark were
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`entirely in connection with the Internet and intended to be through the Internet. Virtually
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`every specimen, document, and thing Respondent has produced reveal Respondent's mark in
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`connection with the Internet, which is the only "on-line medium" in the world, and Respondent
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`has produced hundreds of documents in support of its extensive use of on-line medium.
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`The key word in Respondent's custom—crafted description is the word "through".
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`Respondent's Mark PLAID is for "Advertising and marketing services; design of
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`advertising materials for others; Advertising services, namely promoting the goods, services,
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`and brand identity of third parties through print, audio, video, digital and on-line medium."
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`Respo:ndent's and Respondent's Attorney's choice of words was extraordinarily
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`significant, and truthful, and specific.
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`In custom-crafting Respondent's description of goods
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`and services, there exists a panoply of other choices of wording Respondent could have used as
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`an alternate to "through" including "via", "using", "with", "by way of", "employing",
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`2
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`"utilizing While there were many alternate ways to craft the description, Respondent and
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`Respondent's Attorney chose the exact wording, followed by the term "through".
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`Respondent set out to do and Respondent accomplished exactly what Respondent
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`described in Respondent's Registration, "namely promoting the goods, services, and brand
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`identity of third parties, through print, media, audio, video, digital and on-line medium".
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`As the evidence reveals, Respondent was highly interested in and quickly became
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`prominent and well known in social media (on-line medium) since the day Respondent filed the
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`application that matured to the Registration Petitioner seeks to cancel. Respondent made a
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`conscientious decision to rebrand Respondent's company, rename it PLAID, and change the
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`focus of Respondent's business to on-line medium.
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`Petitioner goes on to state "Whether or not Respondent uses one tool more than another
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`in connection with the provision of the same types of services offered by Petitioner makes no
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`difference". Respondent disagrees, and to the contrary, a preponderance of Respondent's
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`evidence reveals this makes all the difference in the accuracy of the respective parties‘ stated
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`descriptions of goods and services.
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`Petitioner's argument is fatally flawed. The Internet and social media are the primary
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`tools of Respondent, used by Respondent to an extreme degree approaching that of broadcast
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`television as evidenced by Respondent's PLAID NATION TV Tour broadcast in high
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`definition "live" as well as "on demand" and available for replay anytime years after, via
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`Internet (the on-line medium), worldwide (Ohrt Affidavit, paragraphs 17 and 18, Exhibit C).
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`An annual tour across the United States, now in its third year, this year Respondent's PLAID
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`NATION TV Tour was sponsored by FORD, SPRINT, SUBWAY, Q HOTEL & SPA and
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`3
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`SONY. Petitioner's mark PLAID and the marks of other "third parties", namely sponsors,
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`clients and other parties unaffiliated with Respondent, appear alongside each other on the very
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`same pages. Trademarks, brand mentions, and ads of third parties surround the embedded
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`video produced by Respondent in these pages on Respondent's websites related to Plaid TV.
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`Respondent quite literally did as Respondent's description states to an extreme degree, "namely
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`promoting the goods, services, and brand identity of third parties, through print, media, audio,
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`video, digital and on—line medium." Respondent agrees its use of print is minimal though
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`existent, yet its use of media, audio, video, digital and on-line medium was and remains
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`extensive, significant, and prolific. (Ohrt Affidavit, Paragraphs 17,18, Exhibits C, T (pages
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`1 15- 160).
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`To the contrary, Petitioner's use of its mark in connection with "promoting the goods,
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`services, and brand identity of third parties, through print, media, audio, video, digital and on-
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`line medium", with the exception of "print", is de minimus. Furthermore, other than in use as
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`a "portfolio piece" or "sample" of Petitioner's work resulting from Petitioner's services,
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`Respondent has never seen any finished product of Petitioner where the mark of Petitioner and
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`the mark of any other party unassociated with Petitioner, appear on the same page as is typical
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`in much of the evidence Respondent has provided.
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`Petitioner copied Respondent's description of goods and services nearly verbatim,
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`including the word "through".
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`While the meaning of the description applies to Respondent, it does not apply to
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`Petitioner in the evidence Petitioner presented. There remains a question as to if Petitioner has
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`or could have provided all — or any - of the goods and services as described in Petitioner's
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`4
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`identical trademark application as of the dates of first use Petitioner claims. Since Petitioner
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`petitioned to cancel all of Respondent's Mark, and not just a part, Petitioner's claims must be
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`viewed in relation to the exact description of goods and services stated in Petitioner's
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`Application and in Petitioner's Notice of Cancellation.
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`Petitioner states "Second, the evidence demonstrates that Petitioner, like Respondent,
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`makes significant use of the internet and social media." This statement is misleading as
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`Respondent's use has been extensive since its inception while Petitioner's use is minimal.
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`Petitioner further states "Third, the evidence also shows that Respondent, like
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`Petitioner, does not limit its branding, advertising and marketing services to the use of the
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`internet and social media, but also provides extensive traditional deliverables to its clients."
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`This statement is also untrue in that Respondent does not provide "extensive" traditional
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`deliverables, and the evidence reveals the vast majority of deliverables of Respondent after
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`Respondent's adoption of Respondent's mark PLAID are indeed not traditional. Petitioner
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`Y seems to be confusing Respondent's former business as VIA with Respondent's significantly
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`changed business once Respondent rebranded and adopted Respondent's now Registered
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`Trademark PLAID.
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`Respondent agrees both Respondent and Petitioner use the name Plaid lnc., even
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`though Petitioner also refers to itself as "Plaid Creative". Both parties are involved, to one
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`degree or another, in providing branding, advertising, marketing, and design services of some
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`sort. Customers, potential customers, and intended customers of both parties are highly
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`sophisticated purchasers who must make a highly sophisticated purchasing decision and
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`therefore always can and will distinguish the dissimilarities between the nature of the services
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`of Petitioner and the services of Respondent as discussed further below.
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`Petitioner premises its opposition in part on the Trademark Application it filed on
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`April 18, 2008. That application bears scrutiny, as it utilizes the identical, customized
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`description of services, prepared by the Respondent. The specimens filed in support of
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`Applicant's claim of use and first use of an identical mark filed years after such alleged use
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`also bear scrutiny.
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`There are material issues of fact and the Petitioner is not entitled to summary judgment
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`as a matter of law. The Motion for Summary Judgment should be denied.
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`ARGUMENT
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`I.
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`STANDARD FOR SUMMARY JUDGMENT:
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`Summary Judgment is proper when no genuine issue of material fact is in dispute and
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`the moving party is entitled to judgment as a matter of law. Scott Fetzer Company v. Gehring,
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`288 F.Supp. 2d 696, Fed. R. Civ. P. 56 (c); Celotex Co_r_p. v. Catrell, 477 U.S. 317, lO6
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`S.Ct. 2540, 91 L.Ed.2d 265 (1986).
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`"Material fact is one that is necessary to establish an
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`element under the substantive law governing a claim (citations omitted). A fact is "genuine" if
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`it such that a reasonable jury could return a verdict for the non-moving party." Fetzer p. 701.
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`In considering summary judgment, the Board must accept the facts in the light most favorable
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`to the non-moving party. Where there are genuine issues of material fact, the motion for
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`summary judgment must be denied.
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`Further, to prevail on its motion, the Petitioner must establish that it is entitled to
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`judgment as a matter of law. Considering all appropriate facts and the application of the law to
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`those facts, Petitioner has not established that it is entitled to judgment as a matter of law.
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`11.
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`LIKELIHOOD OF CONFUSION:
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`A key inquiry in these proceedings is whether there is a likelihood of confusion
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`between the Petitioner's alleged mark "Plaid" and Respondent's Registered Mark "Plaid", and
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`the actual uses thereof, as well as the actual dates of use. Petitioner alleges in Petitioner's
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`Notice of Cancellation Allegation No. 9 that Petitioner's later-filed trademark application "will
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`be refused because of Respondent's Registration of the identical mark. . . ". On the surface and
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`on face value this may well be true, as Petitioner copied Respondent's description of goods and
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`services from Respondent's US trademark Registration custom crafted by Respondent and
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`Respondent's Attorney. The second reason Petitioner's later-filed application for an identical
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`mark may be refused registration is due to deficiencies and potentially fatal flaws in
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`Petitioner's application and the specimens Petitioner hastily assembled as evidenced by the
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`Bellataire presentation Petitioner relies on in both its application and its Petition to Cancel the
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`Mark of Respondent.
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`In deposition, when asked about the Bellataire presentation and what it
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`represented, Carol Costello's response was: "Looks like it's the same presentation, but
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`somehow the -— it looks like some sort of font failure in the printing. It should be the same
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`presentation. It's weird. " (Transcript of the Deposition of Carol Costello ("Costello Tr. ") at
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`pages 12 and 20) and "This [the Bellataire presentation] looks like its had some sort of font
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`failure and some of the language has fallen off the bottom of some of the pages...I don't know
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`why they're different." (Costello Tr. Page 20) Legally, the Bellataire specimen not only
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`7
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`"should be the same presentation", it must be. Petitioner has attempted to build Petitioner's
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`case relying upon it. Yet clearly the Bellataire presentation is "different", truncated as
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`Petitioner admitted, does not resemble nor function as a "true and identical copy" and, inter
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`alia, this "error" or "omission" has misled Respondent, Respondent's Attorney, the USPTO
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`and the TTAB since the time Petitioner brought the Petition to Cancel against Respondent's
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`Registered trademark. According to United States Trademark Law Rules of Practice and
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`Federal Statutes, USPTO, January 16, 2009, at least one of the specimens provided in
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`connection with Petitioner's identical trademark application filed basis 1(a) was not
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`" legitimate". §2.56 Specimens: (a) An application under section 1(a) of the Act, an amendment
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`to allege use under §2.76, and a statement of use under §2.88 must each include one specimen
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`showing the mark as used on or in connection with the goods, or in the sale or advertising of
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`the services in commerce and (2) A service mark specimen must show the mark as actually
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`used in the sale or advertising of the services. Furthermore the Bellataire presentation does not
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`evidence use in interstate commerce as Petitioner, located in New York City, admitted the
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`Bellataire presentation was presented in New York City. Since the matter is in part about
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`whether or not Petitioner's application for an identical mark is "valid", in deposition of
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`Petitioner Carol Costello, Attorney for Respondent asked Petitioner "...just focusing on the
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`company Plaid Inc., as of October 4, 2005, how many of these companies had Plaid Inc. done
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`work for [under the mark PLAID]?" (Costello Tr. 24) Petitioner's response was as
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`Respondent suspected and as many who have worked for others do when they leave their
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`former employer and strike out on their own: "I've worked with PricewaterhouseCoopers for
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`ten years at various companies. Was I doing something under the Plaid name at that point? I
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`8
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`honestly don't know." (Costello Tr. 25) Respondent acknowledges that prior to its adoption
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`of the Service Mark "Plaid", Petitioner was incorporated in the State of New York with that
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`name. Both parties are involved in marketing, advertising and branding; nevertheless, there is
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`a genuine issue of material fact as to whether Petitioner's use of its corporate name functions
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`as a Service Mark and stands for the services it provides, or whether it is simply the name of
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`the company. Not every company name functions as a Service Mark. Trademark Manual of
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`Examining Procedure, Fifth Edition, § 1202.01: Refusal of Matter Used Solely as a Trade
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`Name.
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`In the most broad and general definition which does not seem to apply, both parties
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`develop and create the advertising and promotion of others for others. However, as a rule and
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`historically, the clients of advertising agencies and design firms desire only their own brand
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`name or trademark to appear on the finished goods that result from the service without any
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`mention of the advertising agency or design firm. Contrary to the rule, and contrary to any
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`evidence Petitioner has provided, Respondent is a unique exception as Respondent's Mark
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`appears next to and often on the same page as that of the Marks of Respondent's clients and
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`others (Ohrt Affidavit, paragraphs 16 and 18, Exhibit C, Exhibit V, p 2). The Mark of
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`Respondent and marks of various third party brands Respondent promotes are cleverly woven
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`and integrated into a single page. Respondent integrates brand-specific video content, a
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`Twitter social media text sidebar with brand mentions, product placement in the video, and
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`various brand-specific ads and logos of other third-party brands surrounding the video on the
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`same page, and has developed an innovative, entertaining, and powerful way to promote the
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`brands of third parties "through media" exactly as described in Respondent's description. The
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`9
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`USTREAM broadcast tool, Respondent's choice this year, and similar to third party Internet
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`broadcast services Respondent used in prior years, features the USTREAM mark. The
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`USTREAM video screen control bars have hyperlinks to additional third parties not affiliated
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`with Respondent. Respondent's promotion of third parties "through on—1ine medium" is greater
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`I
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`in number of third party brands that appear on a single page, and to a degree greater than most
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`broadcast network television websites, while indisputably and overwhelmingly greater than any
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`evidence Petitioner has offered to contradict this statement.
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`In considering the question of likelihood of confusion, the Board should be cognizant of
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`how dissimilar the services of the two parties are and the diverse and dissimilar universe in
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`which the two parties named Plaid function and whether Petitioner's mark indeed serves as a
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`Service Mark rather than a name. Respondent makes extensive use of the Internet and social
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`media, both for its clients and on its own behalf (Ohrt Affidavit, paragraphs 15, 16, l7, l8 and
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`19, plaidnation.com, Exhibit C to Ohrt Affidavit). A review of the materials attached to the
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`Affidavit of Carol Costello, president of the Petitioner, reveals that most are print based or
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`constitute work for PricewaterhouseCoopers, a longstanding client of Carol Costello, a
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`relationship which existed long before the incorporation of Plaid-NY (Costello Tr. , page 25).
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`Respondent has used its PLAID Service Mark as a service mark in a manner that is in
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`full compliance with all the rules and regulations set forth to be eligible for and to maintain a
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`USPTO Service Mark while Petitioner's claims fail to meet this threshold.
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`An important distinction between the parties’ offerings is that Respondent quite literally
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`does provide the services set forth in its Registration. Respondent accomplishes all of the
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`above by cleverly integrating Respondent's Mark with the marks of Respondent's clients via its
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`10
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`websites, and as in the description above, does so "through print, audio, video, digital and on—
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`line medium." (Ohrt Affidavit, paragraph 18) Of the 1,600 or so pages of alleged evidence
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`provided by Petitioner in support of its claims, Petitioner does not appear to promote the goods
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`and services of third parties "through" any of its own media, nor in any unusual way, as
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`Respondent has always been well known for doing. This important aspect and dissimilarity,
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`among others, may be why no actual confusion Respondent is aware of exists.
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`This remains true even though Respondent has become significantly famous with a
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`significant following, a verifiable audience, consumer and trade awareness and good will.
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`The lack of the likelihood of confusion is demonstrated by the paucity of actual
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`confusion in the two years in which the Petitioner and the Respondent have co—existed. A
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`review of the only competent evidence submitted by Petitioner (Respondent objects to the
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`hearsay attributed to Marty Orzio in paragraph 32 of the Costello Affidavit), the Affidavit of
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`Jamie Scalera is telling.
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`In it Ms. Scalera states:
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`In searching for information on the Internet, I came upon a number of
`pieces of information about a branding advertising agency known as
`‘Plaid’. At the time, I did not realize that there were two agencies that
`used ‘Plaid’. Thus I believed the information I was viewing related to
`Plaid-NY.
`I did not learn, until some time later, that the information at
`issue related to another company, Plaid-CT.
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`It should be noted that Carol Costello and Jamie Scalera are "Friends" on Facebook
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`(Pennarola Affidavit, Exhibit 6).
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`In a trademark case involving a dispute between a senior
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`mark and ajunior use, Walters v. Mattel Inc., 210 F.3d 1108, 54 U.S.P.Q.2d 1501 (2000),
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`the Court noted that allegations from persons in close association and intimate contact with the
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`senior user do not reflect the views of the purchasing public, and that it was proper for the
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`11
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`District Court to find evidence of actual confusion from acquaintances, friends and family
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`insufficient. Q at 1111.
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`The TTAB has long recognized the concept of "Internet Time".
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`In the case of In re:
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`Styleclick.com, Inc., 57 U.S.P.Q.2d 1145, 2001 W.L. 15915 (Trademark Trial GR and App.
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`Bd., 2000), the Bd. noted:
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`While by most standards, one to three years in the past would be viewed
`as ‘recent’, a year or two is an ‘eternity in Internet time‘, given the rapid
`advancement of the Internet in every facet of daily life (most especially, e-
`mail).
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`The Board's early recognition of the role of the Internet, and the impact it would have
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`on time was prophetic in the year 2000. Given the Internet's rapid proliferation into the
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`mainstream today, while two years was an eternity in Internet time about ten years ago, six
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`months is an eternity today. That only one instance of alleged confusion has been offered by
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`the Petitioner is telling. There is no likelihood of confusion.
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`The Petitioner is all but invisible on the Internet. According to alexa.com, the Internet
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`website ranking service, Respondent's websites, plaidnation.com and thinkp1aid.com, rank far
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`higher in popularity than that of the Petitioner (Pennarola Affidavit). alexa.com has been cited
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`in a trademark case, Vista India v. Raaga, LLC, 501 F.Supp.2d 605(U.S.D.C.DNJ, 2007), as
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`well as numerous law review articles as a credible source.
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`Further, there are multiple marketing, branding and market research agencies which
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`incorporate the word "Plaid" in their names.
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`(Ohrt Affidavit, paragraph 24, Exhibits F to Q)
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`They include some whose presence on the Internet and in the real world predate both the
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`Petitioner and the Respondent and some who follow. Evidence of third party marks raise
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`12
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`issues of fact for summary judgment purposes, Lloyds Food Products, Inc. v. Eli's Inc., 987
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`F.2d 766, 25 U.S.P.Q.2d 2027 (1993).
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`III.
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`THE DU PONT FACTORS:
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`The Court, in the Application of E. I. du Pont de Nemours & Company (476 F.2d
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`1357, 177 U.S.P.Q. 563 (CCPA 1973) sets forth 13 factors, which, when of record, must be
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`considered. As noted in the decision in the du Pont case, the evidentiary elements are not
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`listed in order of merit. Each may, from case to case, play a dominant role. On the surface
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`and on face value, with identical descriptions of goods and services for identical Marks as
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`Petitioner copied the earlier-filed description of Respondent, it appears that most of the DuPont
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`Factors would weigh in favor of Petitioner IF Petitioner stated a claim upon which relief can
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`be granted.
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`It does not.
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`The 13 factors are discussed as follows:
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`I.
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`The similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression.
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`The Petitioner's corporate name is identical to the Respondent's registered Mark in
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`appearance and sound. The mark PLAID is arbitrary when used in connection with the
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`services of either party and therefore the Mark alone has no connotation or commercial
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`impression in the minds of consumers or the trade other than that resulting from use. Based
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`on a preponderance of evidence in support of Respondent and little in support of Petitioner, it
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`appears indisputable that Respondent has used its Mark far more extensively, to a much
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`greater degree, and with a far larger audience than Petitioner could ever claim in direct
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`connection with Respondent's custom-crafted description of goods and services associated
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`13
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`with the Mark. Respondent is developing and has developed secondary meaning in
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`Respondent's Mark PLAID in the minds of consumers and the trade in connection with all the
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`goods and services while the evidence reveals that Petitioner has not.
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`II.
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`The similarity or dissimilarity and nature of the goods or services as
`described in an application of registration or in connection with which a
`prior mark is in use.
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`As Petitioner virtually copied Respondent's customized description verbatim in
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`Petitioner's Application, the goods and services listed by both parties are the same. Note,
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`Respondent's application filing date of February 22, 2007, is some 14 months before the
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`Petitioner's filing date of April 18, 2008; and no party, including Petitioner, ever opposed
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`Respondent's application. The Petitioner appears to use the word Plaid as its name and not as
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`a service mark. A review of Exhibit A to the Costello deposition (entitled "A Branding
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`Presentation for Bellataire") indicates on each page that the presentation is copyright, Plaid
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`Inc. While Petitioner's copyright notice appears on this "presentation", Petitioner has shown
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`no evidentiary materials, no evidence, and provided no unequivocal testimony that reveals
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`Petitioner used all the goods and services in its description of goods and services in its
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`application as of the dates claimed. No determination has ever been made as to if Petitioner's
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`pleaded Mark could ever proceed to registration based upon the specimens filed.
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`Further, the Petitioner's apparent bad faith in copying the Respondent's description
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`warrants consideration as the Board weighs this factor. This factor is neutral at best for
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`Petitioner.
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`III.
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`The similarity or dissimilarity of established, likely to continue trade
`channels.
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`14
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`The 'Charmels of Trade’ Factor concerns how and to whom the
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`respective products are sold and distributed... This factor is very
`significant in illuminating what actually happens in the marketplace and,
`where other factors are not particularly probative, is of a special
`importance... [citing Homeowners Group, Inc. v. Home Marketing
`Specialists, Inc., 931 F.2d 1100, 1110, 18 U.S.P.Q.2d 1587, 1595 (6‘“
`Cir. 1991)]. The threshold significance of trade channels is where they
`lead and whether, at the end, the same classes of persons are exposed to
`the marks and issue under circumstances likely to result in confusion.
`
`The Likelihood of Confusion in Trademark Law, Richard L. Kilpatrick, Practicing Law
`
`Institute, New York City, May 2009, § 5—12.l.
`
`As a threshold matter, the Board should decline to consider the Petitioner's evidence
`
`and argument concerning this factor as it objected to the Respondent's Interrogatory No. 3
`
`seeking information about the channels of trade which Petitioner utilized and provided no
`
`evidence.
`
`Interrogatory No. 3 is as follows (Pennarola Affidavit, Exhibit H):
`
`Interrogatory No. 3: Describe the channels of trade or distribution used by
`Petitioner to date, and describe the channels of trade or distribution intended
`
`to be used in the future by Petitioner in providing the services or goods
`identified in the answer to Interrogatory No. 1 under the mark "Plaid".
`
`Response: Petitioner objects to this Interrogatory on the grounds that
`the phrase "[d]escribes (sic) the channels of trade or distribution" is
`vague and ambiguous. Petitioner further objects to this Interrogatory
`on the grounds that it is unduly burdensome.
`
`Petitioner offered no evidence during the discovery phase on this
`factor.
`
`If it was going to offer evidence on this du Pont factor, Petitioner had a duty to
`
`supplement its answer to discovery.
`
`It cannot rely on evidence it did not provide in discovery.
`
`Given Petitioner's stonewalling, Petitioner is not entitled to any presumptions about "normal"
`
`trade channels, or any channels of trade.
`
`15
`
`
`
`This alone warrants finding this factor in favor of the Respondent.
`
`The Respondent makes heavy use of the Internet to market its services and reach
`
`potential clients.
`
`Its websites include thirikp1aid.com, p1aidnation.com, houseofplaid.com and
`
`brandflakesforbreakfast.com. The sites are updated constantly and generate significant traffic.
`
`(Ohrt Affidavit, paragraphs 16 and 20, Exhibits C, D, T, W and X). The site maintained by
`
`I the Petitioner, plaid-creative.com, is frozen in time.
`
`It has not changed since January 2008 (at
`
`least as of this writing) and generates little traffic (Ohrt Affidavit, paragraphs 27 and 28,
`
`Pennarola Affidavit, Exhibit F).
`
`Respondent acknowledges that it has not limited its channels of trade in its registration.
`
`Given, however, that the Petitioner has only now just identified its alleged four channels of
`
`trade (e-mail, word of mouth, direct mail and its website), (Costello Affidavit, paragraph 28),
`
`those bear scrutiny. The first two, e—mail and word of mouth, are both highly personal and
`
`specifically targeted. Direct mail would specifically identify Petitioner and not result in
`
`confusion with Respondent. Finally, its claimed use of the Internet as a channel of trade has to
`
`be examined in light of its static website and limited traffic. Petitioner has alleged that it is
`
`well known to its clients and prospective clients (Costello Affidavit, paragraph 30). This claim
`
`alone belies the claim of likelihood of confusion. Certainly, at best, this factor is neutral.
`
`IV.
`
`The conditions under which and buyers to whom sales are made; i.e.,
`impulse versus careful, sophisticated purchasing.
`
`This factor favors the Respondent. As the purchasing decision of any client of
`
`Petitioner or Respondent significantly affects the businesses of the clients of each of the
`
`parties, purchasers of either of the party's services thoughtful and highly motivated. The
`
`16
`
`
`
`evidence offered by Respondent, which shows fee quotes and billings, ranging from the tens to
`
`the hundreds of thousands of dollars (Costello Affidavit, paragraph 6, Exhibit D), is strong
`
`evidence that purchasing decisions in this business are carefully, and not casually, made by
`
`sophisticated purchasers. The parties, while both engaged in creating advertising for others,
`
`operate in and attract clients from two different ends of the advertising spectrum, with the term
`
`"advertising" used here in its broadest sense. Providers of highly customized creative services
`
`such as those offered by the parties are inherently unique and distinctive. Purchasers of
`
`creative services are therefore attracted to either of the Parties by the distinctive nature of the
`
`offerings of the Providers, as well as the experience and style and approach of the providers.
`
`The purchasing decision is unlike that of products like milk, where the nature of the goods is
`
`highly similar. Furthermore, multiple companies in the same field as Petitioner and
`
`Respondent, a number offering services more closely related to that of Petitioner than that of
`
`Respondent, in the same geographic area, use the word "Plaid" as part of their names.
`
`In
`
`addition, very few traditional advertising agencies such as Petitioner appears to be ever apply
`
`for or become eligible for a US Federal Trademark primarily because the finished goods do
`
`not bear the Mark of the advertising agency and instead bear the mark of the client of the
`
`advertising agency. Respondent is neither a traditional nor a typical advertising agency.
`
`Because of Respondent's atypical and uncommonly broad use of Respondent's Mark alongside
`
`and on the same pages as the Marks of Respondent's clients, a significant and far greater
`
`number of the finished goods of Respondent do bear the Mark of Respondent. The buyers for
`
`both companies‘ services are sophisticated purchasers, not impulse buyers, given the
`
`Petitioner's pricing structure (note the $250,000 proposal referenced at Costello's Affidavit,
`
`l7
`
`
`
`paragraph 6, Exhibit D) and Petitioner's hourly rates (Ohrt Affidavit, paragraph 29, Exhibits R
`
`and S).
`
`Both Petitioner and Respondent have enj
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