Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA480391
`ESTTA Tracking number:
`06/27/2012
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055406
`Defendant
`Reginald C. Barrett
`REGINALD C BARRETT
`20 LAUREL HILL LANE, PO BOX 914
`AMAGANSETT, NY 11930
`UNITED STATES
`Answer
`Todd Wengrovsky
`contact@twlegal.com
`/Todd Wengrovsky/
`06/27/2012
`Barrett TTAB Answer 06272012 Filing.pdf ( 6 pages )(21589 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`ESTTA480391
`ESTTA Tracking number:
`06/27/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055406
`Defendant
`Reginald C. Barrett
`REGINALD C BARRETT
`20 LAUREL HILL LANE, PO BOX 914
`AMAGANSETT, NY 11930
`UNITED STATES
`Answer
`Todd Wengrovsky
`contact@twlegal.com
`/Todd Wengrovsky/
`06/27/2012
`Barrett TTAB Answer 06272012 Filing.pdf ( 6 pages )(21589 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding Number: 92055406
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`Registration No.: 3,883,715
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`Mark:
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` (Logo in International Class 034)
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`BOX TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`DEFENDANT’S ANSWER TO
`PLAINTIFF’S PETITION TO CANCEL
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`Defendant /Registrant Reginald Barrett, by his attorney Todd Wengrovsky, hereby responds
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`to the petition letter filed by Plaintiff (the “Petition”), as follows:
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`1. Defendant denies the allegation identified as “(1)” in the Petition that “the design
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`descriptively suggests the applicant is a Native American, and that the products are Native
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`American made products.”
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`2. Defendant denies the allegation identified as “(2)” in the Petition that “the design falsely
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`suggests a connection with Native America.”
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`3. Defendant denies the allegation identified as “(3)” in the Petition that “the design
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`application was a fraud upon the Patent and Trademark Office.”
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`4. Furthermore, Defendant denies the unnumbered allegation on Page 2 of the Petition that
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`“Mr. Barrett went into competition against petitioner.”
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`5. Defendant also denies the unnumbered allegation on Page 2 of the Petition that “Petitioner
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`has recently learned of Registration Number 3883715” (emphasis added).
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`6. Finally, Defendant denies the unnumbered allegation on Page 2 of the Petition that the
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`registration is petitioner’s earlier filed design “with slight modification.”
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`Defendant further states the following:
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`The parties to the present proceeding met in 2006 due to business unrelated to the present
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`action. Petitioner happened to own a smoke shop at the time, and Defendant, originally from South
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`Carolina, had contacts in the tobacco industry. Defendant therefore suggested a joint venture
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`between the parties to develop a new cigarette brand. Defendant suggested several cigarette
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`manufacturers and a graphic designer for the joint venture. Petitioner originally desired a foreign
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`manufacturer for cost-cutting reasons, but Defendant selected a domestic manufacturer to insure the
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`highest quality product.
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`The parties then together developed a logo for a “SHINNECOCK BRAND” of cigarettes
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`(hereinafter referred to as the “first logo”). Although Petitioner had some input in the contents of the
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`first logo, Defendant later found out that Petitioner’s alleged contribution was taken directly from
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`the Shinnecock Nation’s actual seal. In addition, the phrase “Made Under Sovereign Authority”
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`was added by Petitioner, but was never wanted by Defendant. Petitioner represented that he had
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`authority to use this language, but the usage of such language was later found to be inappropriate
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`and indeed inaccurate.
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`Defendant’s contributions to the first logo were many, and included: (1) a unique large tan
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`pipe with red and purple feathers in the foreground of the logo at issue; (2) a unique yellow and
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`orange sunrise with a pink and white sky in the background of the image; and (3) a tobacco plant in
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`the middle of the image.
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`Despite Defendant’s designing of the key components of the logo, Petitioner filed a
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`trademark application including the first logo without Defendant’s knowledge and without
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`Defendant being listed as a co-applicant. Consistent with such behavior, Petitioner also
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`communicated directly with Defendant’s industry contacts without Defendant’s knowledge.
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`Following a falling out between the parties (largely due to the above-noted
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`misrepresentations and behavior by Petitioner), Defendant left to develop his own product. At this
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`time, Petitioner was not a manufacturer of cigarettes, and only owned the aforementioned retail
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`location. Defendant then designed his own logo (hereinafter referred to as the “new logo”). The
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`new logo used only the generic male native from the first logo and nothing else significant, but for
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`the elements that had been designed by Defendant. With the new logo, and in his new business,
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`Defendant was acting privately and wholly independent from the Petitioner, the Shinnecock Nation,
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`and any other entity.
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`As is well established in the record, Defendant then applied for and was granted Trademark
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`Registration Number 3,883,715 for the new logo. It should be noted that Petitioner did not oppose
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`the Registration, and did not protest Defendant’s application publicly or privately in any way. In
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`fact, Defendant’s application was filed on May 27, 2009, nearly two years prior to the current
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`Petition. Upon information and belief, Petitioner was well aware of Defendant’s application long
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`before the filing date of the present Petition and, without explanation, significantly delayed filing
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`same.
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`Defendant also applied for and was granted a South Carolina state trademark for the new
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`logo. In addition, Defendant applied for and was granted a New York state trademark for the new
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`logo. Moreover, Defendant even applied for and was granted a Copyright Registration for the new
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`logo, further solidifying his rights to the mark.
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`As for the commercialization of Defendant’s product, Defendant uses a licensed and
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`respected manufacturer for his SHINNEOCK BRAND. Furthermore, Defendant, in an abundance
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`of caution, even uses a disclaimer on his packaging to the effect that his product is not in any way
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`affiliated with or distributed by the Shinnecock Nation. Importantly, upon information and belief,
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`the Shinnecock Nation was and is completely aware of Defendant’s new logo and product. The
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`Shinnecock Nation has filed nothing to challenge Defendant’s Registration and has not objected to
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`Defendant’s logo or product in any way.
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`Due to all of the foregoing, it is disingenuous for Petitioner to assert that “the design
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`descriptively suggests the applicant is a Native American, and that the products are Native
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`American made products.” Likewise, Petitioner’s argument that “the design falsely suggests a
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`connection with Native America” is a mere conclusory statement that is completely without merit.
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`In fact, dozens of businesses in Suffolk County, New York (the county of Defendant’s residence)
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`utilize the term “Shinnecock” within their business names, in part because Shinnecock is an actual
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`geographic region of Suffolk County, New York.
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` In sum, due to the circumstances outlined above, it can not be stated that “the design
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`application was a fraud upon the Patent and Trademark Office,” as asserted by Petitioner. Far from
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`fraudulent activity, Defendant designed his own logo and has repeatedly gone through all of the
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`proper channels to confirm his absolute rights in and to the mark. Accordingly, Defendant’s
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`Registration should not be cancelled and the Petition should be dismissed in its entirety.
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`WHEREFORE, Registrant / Defendant requests that the Petition to Cancel be dismissed in
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`its entirety with prejudice.
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`Dated: Calverton, New York.
` June 27, 2012
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`/s/ Todd Wengrovsky
`Todd Wengrovsky
`Law Offices of
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`Todd Wengrovsky, PLLC.
`285 Southfield Road, Box 585
`Calverton, NY 11933
`Tel (631) 727-3400
` Attorney for Defendant
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`CERTIFICATE OF SERVICE
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` hereby certify that on June 27, 2012, a copy of the foregoing Defendant’s Answer to
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` I
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`Plaintiff’s Petition to Cancel was electronically filed with the United States Patent and Trademark
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`Office and that a copy was deposited with the United States Postal Service as First Class Mail,
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`postage paid, in an envelope addressed to Plaintiff’s attorney of record:
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`/s/ Todd Wengrovsky
`Todd Wengrovsky
`Law Offices of
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`Todd Wengrovsky, PLLC.
`285 Southfield Road, Box 585
`Calverton, NY 11933
`Tel (631) 727-3400
` Attorney for Defendant
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`6
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`Scott Michael Moore, Esq.
`Moore International Law PLLC
`45 Rockefeller Plaza, Suite 2000
`New York, NY 10111
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