In the Matter of Trademark Registration No.
`Filed:
`Mark:
`
`282994
`
`
`January 19“; 2003
`
`COMPUTER NERDS
`
`Issued:
`
`April 61
`
`
`COMPUTER NERDZI. INC.
`
`Petitioners,
`
`ANNETTE RICHESON’S INTELLECTUAL
`
`PROPERTY LLC.
`
`Registrant.
`
`OPPOSITION IN CANCELLATION OF SERVICE MARK
`
`COMPUTER NERDS
`
`In the matter of United States Trademark Registration No. 2829994, filed January
`
`19”" 2003 and issued April 6”‘ 2004, for registration of the mark COMPUTER NERDS
`
`(hereinafter “Registration”) , By Shawn A. Richeson (Applicant), covering the repair and
`
`upgrade of personal and corporate computer systems and networks in international class
`
`37,
`
`the applicant Shawn A. Richeson in his individual capacity and DBA (Annette
`
`Richeson’s Intellectual Property LLC), hereinafter called (Richeson), would humbly
`
`request that this Court not cancel the aforesaid service mark and would respectfully show
`
`this court as follows:
`
`1. Richeson provides his verified pleading and states the he is an individual residing
`
`in Killeen Texas since December of 1988 and has been performing computer
`
`
`Filed:
`Mark:
`
`282994
`
`
`January 19“; 2003
`
`COMPUTER NERDS
`
`Issued:
`
`April 61
`
`
`COMPUTER NERDZI. INC.
`
`Petitioners,
`
`ANNETTE RICHESON’S INTELLECTUAL
`
`PROPERTY LLC.
`
`Registrant.
`
`OPPOSITION IN CANCELLATION OF SERVICE MARK
`
`COMPUTER NERDS
`
`In the matter of United States Trademark Registration No. 2829994, filed January
`
`19”" 2003 and issued April 6”‘ 2004, for registration of the mark COMPUTER NERDS
`
`(hereinafter “Registration”) , By Shawn A. Richeson (Applicant), covering the repair and
`
`upgrade of personal and corporate computer systems and networks in international class
`
`37,
`
`the applicant Shawn A. Richeson in his individual capacity and DBA (Annette
`
`Richeson’s Intellectual Property LLC), hereinafter called (Richeson), would humbly
`
`request that this Court not cancel the aforesaid service mark and would respectfully show
`
`this court as follows:
`
`1. Richeson provides his verified pleading and states the he is an individual residing
`
`in Killeen Texas since December of 1988 and has been performing computer
`
`
`
`repair services as identified under the protected international class 37 continually
`
`since December of 1988 in the Unites States.
`
`Shawn A. Richeson applied for and was awarded Trademark Registration No.
`
`282994 by the United States Patent and Trademark Office on April 6”‘ 2004.
`
`. At no point between December of 1988 and Wednesday February 19”‘ 2009 the
`
`filing of this document has Richeson ceased using his service mark Computer
`
`Nerds or ceased to be operating under international class 37 in the repair of
`
`personal and corporate computer systems and networks in the United States and
`
`Canada.
`
`The service mark Computer Nerds has been published in 13 million phone books
`
`in almost every major city in the United States and Canada and Richeson under
`
`international class 37 has been receiving and responding to service calls generated
`
`from aforesaid advertisement.
`
`The
`
`service mark Computer Nerds has been prominently displayed on
`
`www.ComputerNc1'ds.net and search engine optimization experts have back
`
`linked it into 300K + intemet locations and the key phrase and service mark
`
`Computer Nerds is now ranked in the top 3 search results on Google, Yahoo and
`
`MSN.
`
`
`
`6. The service mark Computer Nerds has acquired secondary meaning in the USA,
`
`Canada and Australian Markets that Richeson has advertised in since December
`
`of 1988.
`
`7. Pursuant to transcribed testimony of the Computer NERDZ trademark owner
`
`given by Lee G. Robin on June 13”‘ 2008 in Bexar County Texas at a TRO
`
`
`hearing, incorporated herein by reference as ROBIN T1;‘S'l‘IMONY l£Xl1lBlT for
`
`all intents and purposes, Mr. Robin stated that service mark Computer NERDZ
`
`has only been used in commerce since June of 1992, some (4) years after
`
`Richeson began using his service mark in commerce Computer Nerds in
`
`December of 1988.
`
`8. Richeson’s common law rights to Computer Nerds substantially predate that of
`
`Lee G. Robin’s common law rights to Computer NERDZ in all areas of the
`
`United States. Richeson offers the sworn affidavit of Mike Leal, a 1989
`
`Computer Nerds customer as exhibit 1 & .
`
`9.
`
`In October 1991, prominent Texas personal Injury Attorney Jerry Scarbrough
`
`purchased computer Repair services from Richeson using the service mark
`
`Computer Nerds. Richeson offers the actual invoice paid by Jerry Scarbrough as
`
`well as his sworn affidavit as exhibits 3 & .
`
`
`
`10. The overlapping markets between the service mark owners are San Antonio
`
`Texas, Austin Texas, Oklahoma City, Tulsa, Kansas City, and St. Louis. Richeson
`
`has proven and established 1“ use and common law rights superior to Lee G.
`
`Robin and Computer NERDZ in each of the overlapping markets.
`
`WHEREFORE, respondent respectfully asks that this tribunal not cancel his
`
`service mark COMPUTER NERDS registration No. 2829994 and for any other relief that
`
`is both equitable and just.
`
`Respectfully Submitte '
`
`Shawn A. Riche on
`[)/B//\ Annette Richeso ‘s
`
`Intellectual Property LI.
`
`/i”@/ K»
`Ri
`esoffl
`Shawn
`2/18/2009 l2:55:PM
`
`Cgificate Q Service
`
`I Shawn A. Richeson, do certi,’tly’that a true and correct copy of this response was
`served upon Danliel E/./Hrusso/of/Cantor Colburn LLP via first class mail at 20 Church
`Street 22'” Floor,
`’
`fr d’Connecticut 06102-3207 as well as by facsimile transmission
`at: (860) 286-29 W is Wednesday the 18”‘ day of February 2009.
`
`‘
`
`X2
`
`L-
`
`/
`/
`
`\
`Shawn A. Richeson
`
`I
`
`/’
`
`GeneraliCiounsel. United States Patent and Trademark Office
`PO Box 15667
`
`Arlington, Virginia 22215
`
`
`
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`“@omputer
`dl/etds
`
`INV#:
`
`COMMERCIAL-00064
`
`RHMIT TO:
`
`Computer Nerds
`S&A Enterprises
`1906 Twilight Drive
`Kil;een, Texas 76543
`
`B I LL TO:
`
`Jerry Scarbrough
`Attorney at Law
`531 North 4th Street
`Killeen, Texas 76541
`
`QTY DESCRIPTION
`
`DATE
`
`1
`1
`
`20MB SG MFM Hard Drive
`Onsite Labor
`(3) Hour
`
`10/14/1991
`10/14/1991
`
`AMOUNT
`
`$320.00
`$ 90.00
`
`JOB TOTAL
`$410.00
`
`Please :r.-zke yap:
`.':v3Ck payable to Ssh. Enzerprzses.
`If you do not pay this
`
`' - Ln f
`'
`30 days,
`:'.‘.e outstanding ba‘.ance will accrue interest at
`
`5
`per .";::nL1: _nL11 Lhe entire amouna.
`is pdgd Ln
`lull.
`he will
`\-Iarranty our
`abs: for 90 da": for defect in x-zorluranship.
`Thank you 1
`
`
`
`
`
`
`AFFIDAVIT OF JERRY SCARBROUGH
`
`§§
`
`§
`
`THE STATE OF TEXAS
`
`coumv OF BELL
`
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`::d1(.'\ FHA’-IN RIO-{FS\’7H, on L!._-_
`SUBSCRIBED AND SWORN 1'0 BEFORE ME I:v L:
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`FROM CURL 8: STAHL (210) 228-4691
`In
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`(WEMDEC 3 2008 12'10/ST 12'04/N 7500000688 P 2
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`9
`
`
`
`
`And how long has the company -— or the family of
`
`Q.
`
`
`
`
`
`
`
`
`
`companies known as Computer NERDZ! been in business?
`
`A.
`
`Q.
`
`I started the first one in San Antonio in 1993.
`
`And when did you begin operating under the
`
`tradenarne Computer NERDZI?
`
`A. Actually, a little prior to '93.
`
`In late '92, I
`
`started doing business as Corrputer NERDZ! and opened a
`
`store in March of
`
`'93, and then filed for the trademark in
`
`'95, I believe is when the trademark was first filed.
`
`Q.
`
`When you say the "trademark" —— I don't want to
`
`get off on trademarks necessarily.
`
`Just by way of
`
`background, has your company had one trademark or multiple
`
`trademarks —~
`
`A.
`
`Computer NERDZ.
`
`The original trademark was
`
`NERDZ!
`
`inside the pocket: protector, and the third
`
`trademark is just NERDZ, N—E—R-D-Z, with the exclamation
`
`point.
`
`Q.
`
`Of course, one of those —— you heard counsel
`
`
`
`
`
`
`represent that one of those trademarks —- federal
`
`
`
`trademark registrations recently lapsed; is that oorrect?
`
`MARIA E."MARY HELEN" VARGAS, CSR, RPR
`CADENA—REEVES JUSTICE CENTER
`300 DOLOROSA, SUITE 4076
`SAN ANTONIO, TEXAS 78205
`(210)335-2584
`
`ROBIN TESTIMONY EXHIBIT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I
`
`1 2
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`3
`
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`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`16
`
`l7
`
`18
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`
`
`15 Computer NERDZ! with the "7." and the exclamation point,
`
`stylized like you see in my shirt. Subsequently, we filed
`
`a. second trademark for what we call the pocket protector
`
`logo, which you may have seen with a little pocket
`
`19 protector and a pencil sticking out, and it has Oomputer
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