Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA710908
`ESTTA Tracking number:
`11/25/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`H.I.S. JUVENILES, INC.
`Corporation
`35 West 35th Street
`New York, NY 10001
`UNITED STATES
`
`Citizenship
`
`New York
`
`Attorney informa-
`tion
`
`Chester P. Rothstein
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`UNITED STATES
`ptodocket@arelaw.com Phone:(212) 336-8000
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3882229
`GOLD, INC. D/B/A GOLDBUG
`18245 EAST 40TH AVENUE
`AURORA, CO 80011
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`11/30/2010
`
`Class 018. First Use: 2004/12/00 First Use In Commerce: 2004/12/00
`All goods and services in the class are cancelled, namely: CHILD BACKPACK
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Attachments
`
`1. Petition to Cancel US Trademark Reg. for 2-IN-1.pdf(3324497 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Chester P. Rothstein/
`Chester P. Rothstein
`11/25/2015
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of
`Registration No. 3,882,229
`of Gold, Inc. d/b/a GoldBug
`for the mark 2-IN-1
`Registered on November 30,2010
`-------------------x
`H.I.S. JUVENILES, INC.,
`
`Petitioner,
`
`Cancellation No.
`
`v.
`
`PETITION TO CANCEL
`
`GOLD, INC., DBA GOLDBUG,
`
`Registrant.
`-------------------x
`IN THE MATTER OF U.S. Trademark Registration No. 3,882,229 (the "Subject
`
`Registration") registered on the Principal Register on November 30,2010 to Gold, Inc. d/b/a
`
`GoldBug ("Registrant") for the mark 2-IN-1 for "child backpack" in International Class 18.
`
`H.I.S. Juveniles, Inc., a New York corporation with a place of business at 35 West 35th
`
`Street, New York, NY 10001 ("HIS" or "Petitioner"), believes that it is or will be damaged by
`
`the Subject Registration.
`
`THEREFORE, pursuant to Section 14 of the Trademark Act of 1946 as amended, 15
`
`U.S.C. § 1064, HIS hereby petitions to cancel the Subject Registration on the basis of the
`
`following facts and grounds:
`
`1.
`
`HIS has offered for sale and sold children's products which have the dual purpose
`
`of functioning as both a backpack and as a safety harness ("HIS's Products") using the
`
`descriptive term "2-in-1" to describe that the product functions as both a backpack and a harness.
`616589.2
`
`

`

`2.
`
`On or about July 14, 2009, Registrant, through counsel, sent a letter to Petitioner
`
`objecting to Petitioner's use of the term "2-in-l" on HIS's Products. A copy of the July 14, 2009
`
`letter is attached to this Petition as Exhibit A.
`
`3.
`
`On or about July 22,2009, Petitioner, through counsel, responded to the objection
`
`by explaining that the term was "generic or highly descriptive" and put Registrant on notice of
`
`(i) "230 references which are disclosed in an online search in the records of the USPTO for '2-
`
`IN-I '," and (ii) the fact that Petitioner had been using that mark in U.S. commerce for
`
`competitive goods. A copy ofthe July 22, 2009 response is attached to this Petition as Exhibit
`
`B.
`
`4.
`
`In an Office Action issued on December 29, 2009 (the "December 29, 2009
`
`Office Action"), the application for "2-IN-I" which eventually became the Subject Registration
`
`was rejected by the United States Patent and Trademark Office under 15 U.S.C. § 1052(e}(I} on
`
`the ground that the "applied-for mark merely describes a feature and characteristic of applicant's
`
`goods and/or services."
`
`5.
`
`The Examining Attorney in the December 29,2009 Office Action further
`
`provided evidence of the merely descriptive nature of the mark by writing as follows:
`
`Applicant's mark is "2-IN-I" for "child backpacks." "2-in-I" is a common term used to
`describe one good that functions as two goods. See the following internet evidence
`demonstrating the use of this term:
`http://74.125.93.132/search?q=cache:R3gTOJ4RdSoJ:www.amazon.comiPeerless-
`76950-Shower-System-Chrome/dp/BOOOLV9V9Y +2-in-
`1 &cd=5&hl=en&ct=clnk&gl=us; http://74.125.93.132/search?q=cache:LK6Q60CzNtIJ:s
`tore.apple.com/us/product/TN786LLlA+2-in-l&cd=9&hl=en&ct=clnk&gl=us; and its
`phonetic equivalent,
`http://74.125.93.132/search?q=cache:ovMIBrlg9TMJ:www.populannechanics.comihom
`e journallhome improvementI1766661.html+%22two+in+one%22+what+is&cd=2&h1=
`en&ct=c1nk&gl=us; http://74.125.93.132/search?q=cache:SsinOmJUQgAJ:www.amazon
`.coml Amco-8-Inch-Lemon-Juicer-
`Squeezer/dp/BOOOVB6M3W+%22two+in+one%22+what+is&cd=4&hl=en&ct=c1nk&gl
`=us; and http://www.:treepatentsonline.comI7614876.html. In this case, applicant's
`
`616589.2
`
`-2-
`
`

`

`specimen of use states that its goods "functions as both a harness and
`backpack." See applicant's specimen of use. As such, applicant's goods are two goods in
`one good, or 2-in-l. Therefore, the mark "2-in-1" is merely descriptive of a feature and
`characteristic of applicant's goods.
`
`A copy of the December 29,2009 Office Action and the cited evidence is attached to this
`
`Petition as Exhibit C.
`
`6.
`
`The Examining Attorney in the December 29,2009 Office Action further
`
`explained that the then-Applicant could overcome the rejection based on Section 2(e)(1) by
`
`amending its application to seek registration on the Principal Register based on a claim of
`
`acquired distinctiveness by one ofthe following three methods:
`
`(1) submitting actual evidence that the mark has acquired distinctiveness of applicant's
`
`goods and/or services, (2) claiming ownership of a prior U.S. registration for the same
`
`mark and the same or related goods and/or services, or (3) providing the following
`
`verified statement: "The mark has become distinctive of the goods and/or services
`
`through applicant's substantially exclusive and continuous use in commerce for at
`
`least five years immediately before the date of this statement." See 15 U.S.C.
`
`§1052(t); 37 C.F.R. §2.41; TMEP §§1212 et seq.
`
`(Emphasis in original). A copy of the December 29,2009 Office Action is attached to this
`
`Petition as Exhibit C.
`
`7.
`
`To overcome the rejection under Section 2(e)(1), Registrant declared under oath
`
`on June 24, 2010 that its use of the trademark had been "substantially exclusive and continuous"
`
`for at least five years ("Registrant's Statement"). This statement was a deliberate false statement
`
`of material fact. A copy of the June 24, 2010 Office Action Response is attached to this Petition
`
`as Exhibit D.
`
`616589.2
`
`-3-
`
`

`

`8.
`
`Registrant's Statement was executed by Registrant's attorney of record on behalf
`
`of Registrant and then submitted to the United States Patent and Trademark Office. A copy of
`
`the June 24,2010 Office Action Response is attached to this Petition as Exhibit D.
`
`9.
`
`Registrant's Statement under oath was made at least approximately a full year
`
`after Registrant knew: (i) HIS was using the phrase "2-in-1" in significant U.S. commerce; (ii)
`
`HIS had delivered its July 22,2009 response letter stating that HIS would continue to use the
`
`phrase to describe its products; and (iii) HIS's July 22,2009 response had disclosed that 230
`
`references were found in an online search for "2-IN-1" in the records of the USPTO.
`
`10.
`
`11.
`
`Registrant's Statement, which was made under oath, was false.
`
`Registrant's Statement, which was made under oath, was material to the granting
`
`of the Subject Registration.
`
`12.
`
`At the time Registrant submitted Registrant's Statement to the United States
`
`Patent and Trademark Office, Registrant was aware that its competitor HIS had offered for sale,
`
`and sold for many years, children's backpacks in the United States under certain descriptions,
`
`including the term "2-IN-l." Registrant was also then aware that many third parties had used the
`
`mark descriptively for a wide array of goods.
`
`13.
`
`At the time Registrant executed Registrant's Statement, Registrant knew or
`
`should have known that Registrant had not been a substantially exclusive user of the term 2-IN-l
`
`for the five years immediately preceding the execution of Registrant's Statement. Accordingly,
`
`Registrant knew or should have known that Registrant's Statement, which was made under oath,
`
`was false.
`
`14.
`
`At the time Registrant submitted Registrant's Statement to the United States
`
`Patent and Trademark Office, Registrant intended to deceive the United States Patent and
`
`616589.2
`
`-4-
`
`

`

`Trademark Office by making deliberate misstatements of material facts for the purpose of
`
`obtaining registration ofthe descriptive term 2-IN-1.
`
`15.
`
`Relying upon Registrant's Statement, the United States Patent and Trademark
`
`Office issued U.S. Trademark Registration No. 3,882,229.
`
`16.
`
`Registrant's Statement included false representations of material fact upon which
`
`the United States Patent and Trademark Office relied in issuing U.S. Trademark Registration No.
`
`3,882,229.
`
`17.
`
`U.S. Trademark Registration No 3,882,229 was procured by fraud on the United
`
`States Patent and Trademark Office.
`
`18.
`
`The Subject Registration is not incontestable under Section 15 of the Trademark
`
`Act, 15 U.S.C. § 1065.
`
`19.
`
`The Subject Registration is false prima facie evidence of Registrant's right to
`
`exclusively use the subject trademark in connection with the goods listed in the Subject
`
`Registration.
`
`20.
`
`The goods of the Subject Registration are competitive to and closely related to
`
`HIS's Products.
`
`21.
`
`The continued existence of the Subject Registration is causing damage to HIS.
`
`22. WHEREFORE, HIS respectfully requests that Registration No. 3,882,229 be
`
`cancelled in its entirety.
`
`616589.2
`
`-5-
`
`

`

`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`Attorneys for Petitioner
`90 Park Avenue
`New York, New York 10016
`(212) 336-8000
`
`Dated: New York, New York
`November 25,2015
`
`By: ｾ＠ｾＯＩＱｪ＠
`Chester Rothstein
`
`L
`
`616589.2
`
`-6-
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that he is one of the attorneys for Petitioner in the
`
`above-captioned Cancellation proceeding and that on the date which appears below, he caused
`
`copies of the foregoing PETITION TO CANCEL to be served on Registrant and its counsel by
`
`FedEx, postage pre-paid, as follows:
`
`Gold, Inc. d/b/a GoldBug
`C/O Katherine Gold, Registered Agent
`18245 East 40th Avenue
`Aurora, Colorado 80011
`
`R. Parker Semler
`Andrew Oh-Will eke
`SEMLER & ASSOCIATES, P.c.
`1775 Sherman Street, Suite 2015
`Denver, Colorado 80203
`Phone: (303) 839-1680
`Fax: (303) 839-1642
`parker@semlerlaw.com
`andrew@semlerlaw.com
`Attorneys for Plaintiff Gold, Inc. d/b/a GoldBug
`
`Dated: New York, New York
`November 25,2015
`
`616589.2
`
`

`

`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`1
`
`

`

`HOGAN &
`HARTSON
`
`July 14,2009
`
`Hogan & Hartson UP
`Coilimbia Square
`5551hirteemh Street NW
`Washington, DC 20004
`+1 .202.637.5600 Tel
`+1.202.637.5910 Fax
`
`www.hhlaw.com
`
`Celine J. Crowson
`Partner
`+ 1.202.637.5703
`cjcrowson@hhlaw.com
`
`VIA OVERNIGHT COURIER
`H.I.S. GLOBAL INC. SUITE 1109
`131 West 33 rd Street
`New York, New York, 10001
`
`Re: Distribution of Harness and Handstrap Products
`Our Reference No.: 034621-0002
`
`Dear Sir:
`
`We represent Gold Bug, Inc. (" Gold Bug") in connection with intellectual property maners.
`Gold Bug owns patents and patent applications relating to child safety products including for
`example pending patent application 111090,808; US2006/0213943. Gold Bug is also the
`exclusive distributor of the Gold Bug line of fine child harnesses, including the Gold Bug Fun
`Backpack, and the Gold Bug Harness Buddy® (the "Gold Bug Products"). Gold Bug is further
`the exclusive rights holder of various trademarks and trade dress relating to the Gold Bug
`Products, including the overall look and other distinctive aspects of the Gold Bug Products,
`design marks 3,559,223; 3,559,226; 3,559,2 17, and word marks " Gold Bug" (reg. 1, 196,875) and
`" Harness Buddy"(reg. 3,322,188) (collectively the " Gold Bug Trademarks and Trade Dress").
`The Gold Bug Products have been offered in connection with the Gold Bug Trademarks and
`Trade Dress since at least 2005 and since that time, Gold Bug has invested significant resources
`in promoting the Gold Bug Products along with the Gold Bug Trademarks and Trade Dress.
`Through these and related efforts, customers readily recognize the Gold Bug Trademarks and
`Trade Dress and associate such proprietary indicia with the Gold Bug Products.
`
`Gold Bug has become aware of certain child safety harnesses being offered by I-I.I.S. Global, Inc
`(" HIS" ) that interfere with Gold Bug' s intellectual property rights. Attached as Exhibit A are
`photographs of these products (hereinafter the "HIS Harness and Handstrap Products.") First,
`we advise HIS that its continued sale of the HIS Harness and Handstrap Products past the issue
`date of the 111090,808 patent application may constitute wi llful patent infringement under 35
`
`

`

`July 14, 2009
`Page 2
`
`U.S.C. §§ 284-285. Second, HIS's offering for sale, distribution, importation, marketing,
`advertising or promotion of the HIS Harness and Handstrap Products may also constitute, among
`other things, trademark and trade dress infringement as well as unfair competition. For example,
`the product packaging of the products shown in Exhibit A are confusingly similar to the product
`packaging of "Gold Bug 2 in I Harness Buddy" line of designs. Additionally, Jeep's use of"3 in
`1 Backpack Harness" and "2 in 1 Safety Harness" as product names of the third and fourth child
`restraint devices shown in Exhibit A are confusingly similar to Gold Bug's rights in the mark "2
`in 1 Harness Buddy." Moreover, the overall trade dress of the HIS Harness and Handstrap
`Products is confusingly simi lar to Gold Bug's "2 in 1 Harness Buddy" line of products. Such
`acts are likely to damage Gold Bug and subject it to irreparable harm, as well as entitle it to
`receive injunctive and monetary relief.
`
`In view of the foregoing, we urge that you immediately take steps to refrain from any further
`manufacture, importation, sale, distribution, marketing, advertising or promotion of the HIS
`Harness and Handstraps.
`
`We ask for your written assurance, no later than two weeks from the date of this letter, that you
`agree to these requests. In the meantime, our client reserves all of its rights and remedies.
`
`Sincerely,
`
`ｾＧＭＭＭＭＭＭＺｳＺ［ＺＧｯｮＢＧＭＭ
`
`CJCIPARlDLD
`
`Enclosures
`
`AGREED TO BY:
`
`Signature
`
`Name and Title (Print/type)
`
`Date
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`
`
`

`

`ＭＮ［ＮｾＭ - 3 in 1 Backpack Hamess
`
`Ames '3
`
`-
`
`....., .... ,..t, uta
`
`""I
`
`e
`. rtepskeep ｨｩＡＺＱｾｦ･＠ nd
`bl
`• m
`n
`'beti":?p
`ｾ＠ hOF=;..!ng.:;.
`U.
`• Pert(!
`I HdmeS5 nst
`• p nd b
`•
`
`tr; -etlng
`:tCk
`
`)or
`
`.Jeep
`
`

`

`II
`
`S‘— __
`_
`Jeep
`2 in 1 Safety Harness
`211-11 Safety 'Hasmess
`l.J., OI! ｾＬ｡Ｎ［ＬＮＺｉｬ＠,",'00'1
`“fiwzm
`· ＧＭｾＢＧＢ＠
`ｾ＠ ｾＬＮＮＮ＠
`uuuum-fiflm
`- Mane-QM“
`Ｎ ｾＭ ＮｾＮＧ＠
`· ｾ＠""""""'''01 ｾ＠¥'II Ir-.c}
`· ｾＱｉｴＧＢ＠ "'-..lirlw,
`v Who-firs madman-I'd;
`.,..,.
`
`- Mummy-munnumc 1...»
`
`,..
`
`,
`••
`
`

`

`
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`1
`
`

`

`Partners
`Morton Amster
`Jesse Rothstein ~fv3a -zoo3)
`Daniel Ebenstein
`Philip H. Gottkied
`Neil M. Zipkin
`Anthony F. Lo Cicero
`Kenneth P. George
`Abraham Kasdan, Ph.D.
`Ira E. Siifin
`Chester Rothstein
`Craig J. Arnold
`Kenneth M. Bernstein
`
`Joseph M. Casino
`Michael U Solomita
`Cha$es R. Macedo
`
`Of Counsel
`Michael J. Berger
`
`Senior Counsel
`Marion P. Metelski
`Alan D. Miller, Ph.D.
`Marc J. Jason
`Richazd S. Mandam
`
`Assodates
`Patrick Boland"
`Holly Pekotvsky
`Max Vern
`Brian A. Comack
`David Mitnick
`David A. Boag
`Matthieu Hausig
`Jung S. Hahm
`Reiko Kaji
`Norajean McCaffrey
`Benjamin M. Halpern*
`Matthew A. Fox
`
`Michael J. Kasdan
`Rebecca R. Eisenberg
`Stuazt Shapley
`Brett M. Pinkus"
`Benjamin Charkow
`Mark Berkowitz
`Nathan Weber
`Robert D. Burak
`Liel Hollander`
`
`*Not admired in Newyork
`
`Chester Rothstein
`Direct 212 336 8050
`E-mail crothstein@arelaw.com
`
`90 Park Avenue
`Newyork NY 10016
`Main 212 336 8000
`Fax 212 336 8001
`Web www arelaw tom
`
`July 22, 2009
`
`Via E-Mail and FedEx
`
`Celine J. Crowson, Esq.
`Hogan & Hartson LLP
`555 Thirteenth Street, NW
`V~ashington, DC 20004
`cjcrowson@hhlaw.com
`
`Re: H.I.S. Global, Inc.
`Gold Bug, Inc.
`Our File: 41966/19
`
`Dear Ms. Crowson:
`
`We represent H.I.S. Global, Inc. ("H.I.S.") in its intellectual property matters.
`Your letter dated July 14, 2009 has been forwarded to us for review and response. As an initial
`matter, our client respects the legitimate intellectual property rights of others, just as it expects
`that its own rights will be respected. With that in mind and giving your client's allegations the
`serious attention all such claims deserve, we are rather shocked by the utter lack of merit which
`we have found. Rather than represent an effort to enforce legitimate rights, your client's claims
`appear instead to be unfair attempts to thwart legitimate competition.
`
`While we typically decline the invitation to make legal arguments in letters, we
`think that brief responses to your client's allegations of patent, trade dress, and trademark
`infringement may be warranted in this case. We discuss each allegation in turn below.
`U.S. Patent A~lication No. 11/090,808 ("the `808 Application")
`
`In your letter you suggest that H.I.S.'s continued sale of the Lion Backpack
`Harness, Playful Pal Backpack Harness, Three-in-One Backpack Harness and Two-in-One
`Safety Harness (collectively, "the H.I.S. Products") may constitute willful patent infringement if
`and when a patent issues from the `808 Application. We strongly disagree. Indeed, your
`implicit assertion of the `808 Application is particularly troubling in that allowance of this
`application in any form that might provide broad rights does not appear probable since the
`Examiner has rejected your client's claims three times. Nonetheless, even the claims in their
`currently rejected form do not remotely read on any of the H.I.S. Products.
`
`433689.1
`
`

`

`<:
`
`Celine J. Crowson, Esq.
`
`-2-
`
`July 22, 2009
`
`Referring to the claims as set forth in the November 14, 2008 Amendment, it is
`plainly evident that the H.I.S. Products lack a number of required claimed elements. For
`example, Independent Claim 22 requires a "pair of lower limb members extending forwardly
`from a lower end portion of [the character's] torso around a waist portion of a child" as well as
`"a pair of upper limb members extending forwardly from an upper end of said torso over the
`shoulders of the child." The H.I.S. Products have no such limb members that wrap around the
`child. Rather, the animal limbs of the Lion Backpack Harness and Playful Pal Backpack Harness
`face in the opposite direction from the child and do not attach to anything. Of course, the Three-
`in-One Backpack Harness and Two-in-One Safety Harness have no animal limbs at all and are
`not in the shape of an animal character. All pending claims require some type of upper and
`lower animal limb portions that wrap around the user.
`
`By way of further example, Application Claim 26 requires:
`
`a first releasable connecting member extending between said
`leading ends of said lower limb members and said upper limb
`members having a second releasable connecting member extending
`between upper portions of said upper limb members and spaced
`above said first releasable connecting member.
`
`The H.I.S. Products have a single clasp that connects the straps of the backpack or
`harness in the manner of myriad prior art references, including references in the file history of
`the `808 Application, not the leading ends of the limb members, as required by the claim. These
`examples are a small sample of the numerous claim limitations that are not met by the H.I.S.
`Products. Since many of the amendments to the claims were made to overcome prior art, the
`scope of equivalents will be seriously, if not completely, limited.
`
`Accordingly, H.I.S. has a good faith basis for its belief that the H.I.S. Products do
`not infringe the pending claims of the `808 Application. Since the pending claims all stand
`rejected as obvious, it is likely that if any claims are ultimately allowed, they will be even
`narrower than the pending claims. The implication in your letter that the H.I.S. Products will
`infringe the scope of your client's potential patent, and that such infringement will be wi11fu1, is
`not well taken.
`
`Trade Dress Infrin ement
`
`In your letter you further assert that both the product packaging and product
`design of the H.I.S. Products are confusingly similar to your client's alleged trade dress. This
`claim, too, falls flat.
`
`We note that your July 14 letter does not identify with specificity what elements
`comprise its protectable trade dress. However, we note that the features of the Gold Bug 2 in 1
`Harness Buddy line of products (e.g., the animal tail, limb members, and pouch) are functional in
`that they are essential to the use or purpose of the article, and therefore not protectable. Qualitex
`Co. v. Jacobson Prods. Co., 514 U.S. 159, (1995}. The fact that a utility patent application is
`
`433689.1
`
`

`

`€;.
`a
`
`Celine J. Crowson, Esq.
`
`-3-
`
`July 22, 2009
`
`pending for the features of the Gold Bug products is further evidence that the design is functional
`and not eligible for trade dress protection. Traffix Devices v. Mktg. Displays, 532 U.S. 23, 29-30
`(U. S. 2001).
`
`Further, assuming for the sake of discussion that you can show that your client's
`alleged trade dress elements in the products are not functional, you will be put to the substantial
`burden of showing that your client's products have acquired secondary meaning. If you continue
`to press this claim we are sure you, as an attorney, will recognize your obligation to assess that
`evidence before suit is brought. In the meantime, please provide us with any evidence of such
`secondary meaning.
`
`As to the product packaging, we almost have to question whether you have seen
`the packaging of the H.I.S. Products, although we do note that photographs are attached to your
`notice letter. The only arguably common feature between the two sets of packaging is the use of
`a generic open-top cardboard box with a vertical rear wall that supports the product and allows it
`to be hung from a retail display (but even this shape is not the same). This box is functional and
`not protectable trade dress. Even if Gold Bug could somehow show that the box was non-
`functianal, it would have to establish that this style of box has become distinctive of Gold Bug's
`goods. Of course, the public makes no such association between this type of box and your
`client's goods.
`
`The rest of the packaging is distinguishable. For example, the packaging of the
`H.I.S. Products uses a different color scheme, different fonts and a different arrangement of
`different photographs than the Gold Bug packaging.
`
`Trademark Infringement
`
`In response to your claim of trademark infringement, we initially note that your
`letter includes reference to Registrations for GOLD BUG and HARNESS BUDDY. Since none
`of those words (other than HARNESS and it seems hard to believe that you are making a claim
`on the use of that generic word for these goods) appear on our client's products or packaging, we
`assume the references were merely informational as background.
`
`Addressing the `223, `226, and `217 Registrations for portions of animal designs,
`we note first that the Registrations are on the Supplemental Register, which is another indication
`that they are merely descriptive (or in this context, functional}. Again, we would like to see
`evidence that the non-functional features of the alleged marks have acquired secondary meaning.
`In any event, we note that the particular animal designs at issue are not even similar. Further, we
`note that the Registrations all limit the features of the alleged mark to the "portion in solid lines."
`While none of the lines appear to be solid in the on-line versions available at www.uspto.gov
`(and thus the Registration seems to be defective as indefinitej, we note the written description of
`"the shape of the animal including the arms and paws, but excluding the tail and handle at the
`end of the tail." Again, we simply note that we have seen no evidence that the public would
`associate any particular animal shapes with your client. In any event, our client's shapes are
`distinguishable.
`
`433689.1
`
`

`

`s
`
`a
`
`Celine J. Crowson, Esq.
`
`-4-
`
`July 22, 2009
`
`Addressing the claims that our client's use of 3 in 1 Backpack Harness or 2 in 1
`Safety Harness infringes any rights, we simply note that all such terms are generic or highly
`descriptive, and not protectable by any single party, including your client. We would think your
`client would agree. Otherwise, its use of "2-in-1" might infringe some of the 230 references
`which are disclosed in an online search in the records of the USPTO for "2 in 1." Further, a look
`at your client's own packaging shows the descriptive nature of "2-in-1," where your client
`writes: "2-IN-1 HARNESS BUDDY—Functions as both harness and backpack."
`
`As you know, Section 33(b)(4) of the federal Trademark Act is often referred to
`as the "fair-use" defense. That Section, codified at 15 U.S.C. §1115(b)(4) states:
`
`the exclusive right to use the registered mark shall be subject to
`following defenses or defects:...
`
`(4) That the use of the name, term, or device charged to be an
`infringement is a use, otherwise than as a mark, of ... a term or
`device which is descriptive of and used fairly and in good faith
`only to describe the goods or services of such party, or their
`geographic origin.
`
`Even if your client ever obtained a federal registration for its 2-IN-1 HARNESS
`BUDDY mark, it is clear that our client's use of the terms "2 in 1" and "3 in 1" falls squarely
`within that defense as it merely identifies attributes of its product. Your client apparently has
`chosen an extremely descriptive portion which is often used by third parties in relation to goods
`which have two (or three) functions, and thus your client must accept that it may not usurp that
`descriptive use from the public lexicon. Our client's use is fair use under Section 33(b)(4).
`
`It appears that your client's allegations are nothing short of a transparent attempt
`to engage in unfair competition or similar torts by wrongly using intellectual property law to
`seek to prevent fair competition. We demand that you provide us with an immediate written
`retraction of your client's allegations. We further put you and your client on formal notice that
`any public statements or statements to our client's customers or prospective customers that our
`client's products infringe your client's rights will be considered blatant and willful violations of
`rights.
`
`VVe hope to hear from you shortly with the retraction.
`
`433689.1
`
`

`

`Celine J. Crowson, Esq.
`
`-5-
`
`July 22, 2009
`
`Nothing in this letter is intended to be a waiver of any of our client's rights, all of
`which are expressly reserved.
`
`Very truly yours,
`
`AMSTER ROTHSTEIN & EBENSTEIN LLP
`
`hester Rothstein
`
`CPR/bap:sak
`
`cc: David Boag, Esq.
`
`a33~a~. ~
`
`

`

`
`
`
`
`EXHIBIT C
`EXHIBIT C
`
`1
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
` SERIAL NO: 77/831362
`
` MARK: 2-IN-1
`
`
` CORRESPONDENT ADDRESS:
` ELLEN REILLY
` THE REILLY INTELLECTUAL
`PROPERTY LAW FIR
` 1325 E 16TH AVE
` DENVER, CO 80218-1517
`
`
` APPLICANT: Gold Bug, Inc.
`
` CORRESPONDENT’S
`REFERENCE/DOCKET NO:
` 6010-T-7
` CORRESPONDENT E-MAIL ADDRESS:
`
`
`
`
`
`
`
`
`
`
`*77831362*
`
`
`RESPOND TO THIS ACTION:
`http://www.uspto.gov/teas/eTEASpageD.htm
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`
`
`
`
`
`
`OFFICE ACTION
`
`
`TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
`OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
`
`ISSUE/MAILING DATE:
`
`
`The referenced application has been reviewed by the assigned trademark examining attorney. Applicant
`must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a);
`TMEP §§711, 718.03.
`
`
`SEARCH OF OFFICE’S DATABASE OF MARKS
`
`The Office records have been searched and there are no similar registered or pending marks that would bar
`registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
`
`SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
`
`Registration is refused because the applied-for mark merely describes a feature and characteristic of
`applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP
`§§1209.01(b), 1209.03 et seq.
`
` A
`
` mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
`
`

`

`purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com,
`415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3
`USPQ2d 1009, 1010 (Fed. Cir. 1987). Moreover, a mark that identifies a group of users to whom an
`applicant directs its goods and/or services is also merely descriptive. TMEP §1209.03(i); see In re
`Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004). “A mark may be merely descriptive even if it
`does not describe the ‘full scope and extent’ of the applicant’s goods or services.”
` In re Oppedahl &
`Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress
`Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It
`is enough if the term describes only one significant function, attribute or property. In re Oppedahl, 373
`F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b). A term is merely descriptive if it conveys an
`immediate idea of the ingredients, qualities, or characteristics of the identified goods and/or services. See
`In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Dial-A-
`Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
`
`The determination of whether a mark is merely descriptive is considered in relation to the identified
`goods and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218
`(C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc. , 51 USPQ2d 1061 (TTAB 1999)
`(finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by
`applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4
`USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer
`programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of
`a particular type of operating system). “Whether consumers could guess what the product is from
`consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB
`1985).
`
` “2-in-1” is a common term used to describe one
`Applicant’s mark is “2-IN-1” for “child backpacks.”
`good that functions as two goods. See the following internet evidence demonstrating the use of this term:
`http://74.125.93.132/search?q=cache:R3gTOJ4RdSoJ:www.amazon.com/Peerless-76950-Shower-
`System-Chrome/dp/B000LV9V9Y+2-in-1&cd=5&hl=en&ct=clnk&gl=us;
`http://74.125.93.132/search?q=cache:LK6Q6oCzNtIJ:store.apple.com/us/product/TN786LL/A+2-
`in-1&cd=9&hl=en&ct=clnk&gl=us; and its phonetic equivalent,
`http://74.125.93.132/search?q=cache:ovMIBr1g9TMJ:www.popularmechanics.com/home_journal/home_improvement/1766661.html+%22two+in+one%22+what+is&cd=2&hl=en&ct=clnk&gl=us
`; http://74.125.93.132/search?q=cache:SsinOmJUQgAJ:www.amazon.com/Amco-8-Inch-Lemon-Juicer-
`Squeezer/dp/B000VB6M3W+%22two+in+one%22+what+is&cd=4&hl=en&ct=clnk&gl=us; and
`http://www.freepatentsonline.com/7614876.html. In this case, applicant’s specimen of use states that its
`goods “functions as both a harness and backpack.” See applicant’s specimen of use. As such,
`applicant’s goods are two goods in one good, or 2-in-1. Therefore, the mark “2-in-1” is merely
`descriptive of a feature and characteristic of applicant’s goods.
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
`submitting evidence and arguments in support of registration.
`
`
`ACQUIRED DISTINCTIVENESS AND THE SUP