Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA828825
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`Filing date:
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`06/22/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92065525
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`24K Real Estate Group, Inc.
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`JEFFREY L SQUIRES
`PEACOCK MYERS PC
`201 THIRD STREET NW, SUITE 1340
`ALBUQUERQUE, NM 87102
`UNITED STATES
`Email: docketing@peacocklaw.com, jsquires@peacocklaw.com, fy-
`obino@peacocklaw.com, dpeacock@peacocklaw.com
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`Opposition/Response to Motion
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`Jeffrey L. Squires
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`jsquires@peacocklaw.com, tjones@peacocklaw.com
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`/JLS/
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`06/22/2017
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`Petitioner Response in Opposition to Registrant Motion to Dismiss Azbill Decl
`Exhibits.pdf(4866107 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of:
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`Registration No. 4,691,674
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`Mark: 24K Real Estate
`Registered: February 24, 2015
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`24K REAL ESTATE GROUP, INC.,
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`Petitioner,
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`v.
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`DAVID KUPERNIK
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`Registrant.
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`) Cancellation No. 92065525
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`PETITIONER’S RESPONSE IN OPPOSITION
`TO REGISTRANT’S MOTION TO DISMISS
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`Petitioner 24K Real Estate Group, Inc., by its undersigned counsel, submits its response
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`in opposition to the motion of Registrant David Kupernik to dismiss Petitioner’s Amended
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`Petition1 to cancel Registrant’s registration of 24 K Real Estate for real estate brokerage services.
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`Petitioner is submitting herewith evidence relating to the use of the mark 24K Real Estate by
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`Registrant and others that is in response to assertions made by Registrant in his motion to
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`dismiss, and if the Board takes this evidence into consideration, Registrant’s motion should be
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`considered one for summary judgment under Rule 56, F.R.C.P., in accord with Rule 12(d),
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`F.R.C.P.
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`I.
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`INTRODUCTION
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`As shown below Petitioner, having alleged that Registrant demanded it cease using the
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`mark 24K Real Estate in New Mexico, has standing to seek cancellation of Registrant’s
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`1 Throughout this Response, the Amended Petition will be referred to as the Petition.
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`registration and has alleged facts providing more than a plausible basis for cancellation of
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`Registrant’s registration of the subject mark (the “Mark” or the “Registered Mark”). The facts
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`alleged by Petitioner in support of its Petition are stated with substantial specificity, in
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`compliance with the pleading requirements of Rule 9(b), F.R.C.P. Petitioner is not engaged in a
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`“fishing expedition,” as Registrant repeatedly alleges (Motion to Dismiss, pages 5 and 6).
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`Rather, Petitioner has alleged facts concerning knowingly false representations made by
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`Registrant that allowed him to secure registration for a mark he was not using, in commerce or
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`otherwise, as of the date of first use stated in his application, which was in widespread use by
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`others throughout the country, and Petitioner is entitled to prove its claims.
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`In hopes of avoiding a fair inquiry into facts alleged by Petitioner, Registrant seeks
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`dismissal of the Petition in the face of clearly asserted fact allegations that satisfy the elements of
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`Petitioner’s claim that Registrant’s application to register the subject mark contained material
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`misrepresentations, and that had the trademark examiner known the true facts, the USPTO would
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`not have registered the Mark based on the application submitted. Petitioner alleged that
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`Registrant made these misrepresentations knowingly and with the intention to deceive in order to
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`obtain registration of his mark. These allegations are sufficient to preclude dismissal of
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`Petitioner’s claims at the threshold pleading stage of this proceeding.
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`II.
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` FACTS
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`A.
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`Allegations of the Petition.
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`In support of its Petition, Petitioner alleged that it uses the Mark in connection with real
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`estate brokerage services in New Mexico (Petition, ¶ 1) and that Registrant has demanded that it
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`cease and desist using that Mark, based on Registrant’s ownership and registration of the Mark
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`(Id., ¶10). Petitioner is seeking cancellation of Registrant’s registration based on the following
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`2
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`allegations: that Registrant resides in Parker, Colorado [a Denver suburb] and operates a real
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`estate brokerage business under the name 24K Real Estate in the area surrounding Denver,
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`Colorado (Id., ¶ 2); that Registrant applied to register the Mark in June 2014, in which
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`application he represented that he had used the mark in commerce since at least January 1, 2012
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`(Id., ¶ 3); that Registrant claimed not to know or believe that anyone else had the right to use the
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`Mark in commerce with goods or services that would be likely to cause confusion with the Mark
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`he was applying to register (Id.); and that Registrant knowingly made material false
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`representations with the intention of misleading the USPTO concerning the date of his first use
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`of the Mark, his use of the mark in commerce, and his statement that he knew of no other person
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`who had the right to use the mark in commerce in a way likely to cause confusion (Id., ¶¶ 4, 8).
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`Petitioner did not merely rest on these general allegations. It specifically alleged that
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`when Registrant claimed to have first used the Mark on or before January 1, 2012, he was
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`employed by another real estate brokerage firm--not 24K Real Estate Inc., which he had not yet
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`formed but later identified as the owner of the mark--and accordingly had falsely asserted use of
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`the mark for his business on or before January 1, 2012 (Id., ¶ 5). Petitioner further alleged that
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`Registrant was licensed to provide real estate brokerage services only in Colorado, and that his
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`company 24K Real Estate Inc. was only authorized to do business in Colorado, and that
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`Petitioner was not using the Mark in [interstate or foreign] commerce (Id., ¶ 6). Petitioner
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`further alleged that at the time Registrant applied to register his Mark numerous other persons
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`were using 24K or a substantially similar mark in connection with real estate services, including
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`a business in Denver and businesses located in states adjacent to Colorado, and that on
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`information and belief Registrant was aware of one or more of those other users, and had falsely
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`denied knowing of such other users when he applied to register the Mark (Id., ¶ 7). Petitioner
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`3
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`then alleged it had adopted the Mark 24K for use in its business in New Mexico, without
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`knowledge of Registrant’s ownership of the Registered Mark (Id., ¶¶ 8 and 9); and that
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`Registrant’s threats about stopping Petitioner’s use of the mark 24K caused it injury (Id.,
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`concluding paragraph).
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`B. Additional Relevant Facts.
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`While Petitioner submits that the allegations of its Petition satisfy the pleading
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`requirements to state grounds for cancellation of the subject registration, it is offering the
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`following additional facts to further demonstrate that it has grounds for cancellation of the
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`subject registration.2
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`1.
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`Registrant was a real estate broker employed with Prudential Preferred Real
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`Estate, where he was licensed to sell real estate in Colorado, until August 2012. He could not
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`have begun to use 24K Real Estate as a mark for his newly-formed company 24K Real Estate
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`Inc. until he formed that company (on March 28, 2012) and began operating that company in
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`September 2012. See Declaration of Kay Azbill submitted herewith, ¶ 6, and Exhibit 1.
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`2.
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`The website operated by the business 24K Real Estate Inc. in Colorado
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`(www.24Krealestate.net) identifies Registrant as the “broker owner,” and shows that the business
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`is a residential real estate broker that promotes itself as “your local REALTOR.” All listings
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`shown on the website are for residential properties located in the area around Denver. Petitioner
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`is there identified as a “Parker [Colorado] Realtor.” Azbill Decl., ¶ 7, and Exhibit 2. Registrant
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`was recently described in 5280 Magazine, the Denver, Colorado city magazine, as the owner of
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`2 The information is here offered with a Declaration of Petitioner’s president Kay Azbill to provide
`the source of these supplemental facts. As discussed in the initial paragraph of this Response, the
`Board’s consideration of these facts in ruling on Registrant’s motion to dismiss would have the effect
`of converting Registrant’s motion to one for summary judgment.
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`24K Real Estate who “provides Real Estate Services throughout the entire Metro Denver area.”
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`Azbill Decl., Exhibit 3.
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`3.
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`The following real estate entities have been identified through a combination of
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`internet and trademark searches, and are shown by their websites or are believed to have been
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`operating at or before the time Registrant applied to register the mark: Hersh 24K Luxury
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`Properties, Scottsdale, Arizona; 24 Karat Realty, Las Vegas, Nevada; 24 Karat Real Estate,
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`Powell, Ohio; 24K International Realty, San Diego, California; 24K Realty Investments,
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`Englewood, Colorado; 24K Homes, Traveler’s Rest, South Carolina; and 24K Realty in Fort
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`Myers, Florida. Azbill Decl., Exhibit 3. While there is no way Petitioner could now know, with
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`certainty, that Registrant had knowledge of the use of any of these marks at the time he filed his
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`application, given the state of modern communications on which brokers in the real estate
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`business rely, it is highly likely that was the case, and this information would be uniquely in the
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`control of Registrant. Azbill Decl., ¶ 5.
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`III. ARGUMENT
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`Petitioner’s burden at this threshold stage of the proceeding is to allege facts sufficient to
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`show it has standing to maintain the proceeding, and then to satisfy the elements of its claim that
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`Registrant knowingly made material misrepresentations to the USPTO in applying to register the
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`Mark. See Corporacion Habanos, S.A. and Empresa Cubana del Tabaco v. Rodriguez, 2011
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`TTAB LEXIS 258, *2, 99 U.S.P.Q. 2d (BNA) 1873, 1874 (Aug. 1, 2011). In keeping with
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`conventional pleading principles, the well-pleaded allegations in its Petition must be accepted as
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`true, and its Petition must be construed in the light most favorable to Petitioner. See Ashcroft v.
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`Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1949 (2009) and Bell Atlantic Corp. v. Twombly, 550 U.S.
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`544, 570, 125 S.Ct. 1953 (2007). See also, Petroleos Mexicanos v. Intermix, S.A., 2010 TTAB
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`LEXIS 442, 97 U.S.P.Q. 2d (BNA) 1403 (Dec. 28, 2010); Nike, Inc. v. Palm Beach Crossfit,
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`Inc., 2015 TTAB LEXIS 314, *6, 116 U.S.P.Q. 2d (BNA) 1027, 1028-29 (Sept. 11, 2009). Only
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`if, after such an analysis, it could be conclusively determined that the pleader does not have
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`standing or has not asserted any facts that could support a plausible claim for relief, should a
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`complaint or petition be subject to dismissal before the claimant has a chance to discover and
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`present evidence in effort to prove his claim. See Corporacion Habanos, supra ¶ 5. Here
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`Petitioner has made allegations that satisfy the applicable pleading standards to state a claim for
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`cancellation of Registrant’s registration. While Petitioner is required to comply with the
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`heightened pleading standards applicable to its claim for misrepresentation under Rule 9(b),
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`F.R.C.P., that itself does not change or shift the burden Registrant must satisfy to obtain
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`dismissal of the Petition at the pleading stage. See Petroleos Mexicanos, supra, 97 U.S.P.Q. 2d
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`at 1404-05, 1408.
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`Registrant does not question that Petitioner has standing to bring its claims in this
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`proceeding, or that there is a valid statutory basis for cancelling Registrant’s registration.
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`Petitioner’s use of the mark 24K in connection with its business of offering real estate brokerage
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`services in New Mexico led to Registrant’s threat of legal action against Petitioner; and Section
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`14(3) of the Lanham Act, 15 U.S.C. § 1064(3), provides a basis for cancellation on the grounds
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`Petitioner has asserted. See Corporacion Habanos, supra, at *3, 99 U.S.P.Q. 2d at 1874.
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`Cases and argument relied upon by Registrant do not justify dismissal of Petitioner’s
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`claims for failure to state a claim of misrepresentation. While the Federal Circuit did reverse a
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`Board order for cancellation in In re Bose Corp, 580 F.3d 1240 (Fed. Cir. 2009), that was not for
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`any pleading deficiency. The Bose court ruled only that the registrant’s action in alleging use of
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`the mark in a combined Section 8 and Section 9 affidavit was not proven to have been
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`accompanied by the necessary intention to mislead. The ruling was based on a full evidentiary
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`record established before the Board. The basis for finding fraud stated by the Bose court, i.e.,
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`that “fraud in procuring a trademark registration or renewal occurs when an applicant knowingly
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`makes false, material representations of fact in connection with the application,” Id. at 1242, is
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`unquestionably correct. The court in Bose went on to confirm that “because direct evidence of
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`deceptive intent is rarely available, such intent can be inferred from indirect and circumstantial
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`evidence.” Id. at 1245, citing and quoting from Star Scientific, Inc. v. R.J. Reynolds Tobacco
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`Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). Applying that standard, Petitioner has adequately
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`alleged the elements of a claim of misrepresentation, including that Registrant had the requisite
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`intent that could be proven by circumstantial evidence.
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`Nor do other cases cited by Registrant justify dismissal of Petitioner’s claims. In King
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`Automotive, Inc. v. Speedy Muffler King, Inc., 667 F. 2d 1008 (C.C.P.A. LEXIS 149, 212
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`U.S.P.Q. (BNA) 801 (Dec. 17, 1981)), the court affirmed the Board’s grant of a motion to
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`dismiss a cancellation proceeding, but only because it found that merely alleging an applicant’s
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`knowledge of another’s right to use the mark at the time of application, without some fact basis
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`being alleged, was insufficient. The petitioner in that case did not present any factual support for
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`its contention. Id. at 1010.
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`In contrast, Petitioner in the instant case alleged that a number of other entities were
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`using the Mark at the time of Registrant’s application about which--on information and belief--
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`Registrant had knowledge, and has now supplemented that allegation with even more specific
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`facts identifying a large number of such users by name and location. Indeed, in King
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`Automotive, the Court of Customs and Patent Appeals expressly acknowledged that “[w]hile
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`Rule 9(b) does not require the pleading of detailed evidentiary matters, we agree with the Board
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`that appellant has not stated with sufficient specificity the factual basis for its allegations of
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`appellee’s fraudulent misrepresentation to the PTO.” Id. Here Petitioner has shown with
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`considerable specificity the factual bases for its claims. See Azbill Decl., ¶ 5. And in another
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`case cited by Registrant, Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir.
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`2009), the Federal Circuit court recognized that a claim based on information and belief could be
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`sufficient under Rule 9(b), if based on facts set forth in support of the petition, 1330, but there
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`found that the defendants in a patent infringement case were properly denied leave to amend to
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`add allegations of inequitable conduct, because they failed entirely to allege specific facts that
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`could support such a claim. Id. at 1329-30. That decision has no bearing on the Petition in the
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`instant case, in which Petitioner has alleged specific facts sufficient to survive a preliminary
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`motion to dismiss.
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`Original Rex, L.L.X. v. Beautiful Brands International, LLC, 792 F. Supp. 2d 1242 (N.D.
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`Okla. 2011), was a trademark infringement action in which defendant sought summary judgment
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`on the ground, inter alia, that plaintiff had abandoned use of the mark “Rex’s Chicken.” The
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`court there noted that in the absence of a valid license from a trademark owner to a company he
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`controlled, the owner could be held to have abandoned rights in the mark. That decision does
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`not support Registrant’s motion to dismiss. Registrant cites this case as a basis to justify the use
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`of his Mark by his own company based on Registrant’s relationship as owner of the Company,
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`but the holding in Original Rex suggests another reason that would justify cancellation of
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`Registrant’s registration.3
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`3 The absence of a sufficient license from Registrant to his company 24K Real Estate, Inc. could
`provide a separate basis for cancellation of the registration, but proof of such a basis would
`necessarily await discovery, as it would be premature for Petitioner to now allege such a basis, even
`on information and belief.
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`Petitioner has alleged three different bases for the cancellation of Registrant’s
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`registration, and has alleged facts in support of each of those three bases that satisfy the pleading
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`requirements for the claims, including that Registrant made misrepresentations knowingly and
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`intending to deceive the USPTO. Only in connection with one of those bases, i.e., that
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`Registrant falsely asserted in his application that he had no knowledge of any other users of the
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`same or similar mark in commerce, were any of the supporting facts alleged on the basis of
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`information and belief, and Petitioner has alleged facts--and here provides additional facts--that
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`support this allegation, though it concededly must ultimately prove Registrant’s knowledge,
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`which at present is uniquely within his control. As discussed above and further shown below,
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`Registrant has not shown that Petitioner’s claims are facially deficient at this pleading stage.
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`A.
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`intentionally misled the USPTO about his use of the Mark.
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`Petitioner has plainly alleged facts sufficient to state its claim that Registrant made
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`knowing misrepresentations to the USPTO concerning the date he first used--or allowed to be
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`used by the company he formed at the end of March 2012--the mark 24K Real Estate (Petition, ¶
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`5). Registrant has submitted no facts or argument to contradict these allegations. Accordingly, it
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`is at this stage of the proceeding undisputed that Registrant represented to the State of Colorado
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`on August 30, 2012 that the company he formed on March 28, 2012, 24K Real Estate, Inc., was
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`the owner of the subject mark; and that at that time he asserted the mark was first used in
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`commerce (at least as early as January 1, 2012), Registrant was employed with another,
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`unrelated real estate brokerage company in Colorado. That alone is sufficient to show that
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`Registrant knew, when he applied to register the mark, that it was not being used as early as
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`January 1, 2012. Additional facts here provided in the attached Declaration of Petitioner’s
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`president show that Registrant was employed with Prudential Preferred Real Estate until the end
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`of August 2012--at which time the Mark was registered as a tradename in Colorado showing
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`Registrant’s company as the owner--and that he did not begin working for his new entity until
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`September 2012 (Azbill Decl., ¶ 6 and Exhibit 1).
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`Registrant clearly was attempting to steal a march on capturing exclusive rights in the
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`Mark, before he began to use it, or allowed his company to claim ownership and use it beginning
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`in September 2012. Numerous decisions of courts and the Board have sustained objections to
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`registrations of marks secured by knowingly misrepresenting earlier dates of first use in
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`commerce than were sustainable. See, e.g., Old Monastery Wine Co., Inc. v. St. Julian Wine
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`Company, Incorporated, 1956 COMMR. PAT. LEXIS 149, 110 U.S.P.Q. (BNA) 241 (July 13,
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`1956), in which the Assistant Commissioner of Patents and Trademarks found that an allegation
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`under oath of a date of first use by an applicant at a time the applicant could not have legally
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`been selling the wine to which the trademark pertained, was a basis for refusal of the registration.
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`Id. at *7, 110 U.S.P.Q. at 243. See also Orient Express Trading Company v. Federated
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`Department Stores, Inc., 842 F. 2d 650, 653 (2d Cir. 1987) (affirming dismissal of Plaintiff’s
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`claim for trademark infringement, and denying validity of the subject trademarks on the grounds
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`that the dates of first use Plaintiff had stated on 17 trademark applications were not borne out by
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`the evidence).
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`Other cases have reached the same result, for the same or similar reason. See Bad Boys
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`Bail Bonds, Inc. v. Yowell, 2015 TTAB LEXIS 262, 115 U.S.P.Q. 2d (BNA) 1925 (Aug. 21,
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`2015) (granting motion for summary judgment denying applicant’s effort to obtain concurrent
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`use registration, because of a demonstration that applicant had not been using the mark for which
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`it claimed concurrent use on the date stated in the application). And although in Alcatraz Media,
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`Inc., v. Chesapeak Marine Tours, Inc., 2013 TTAB LEXIS 347, *61-68, 107 U.S.P.Q. 2d (BNA)
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`1750, 1766-1770 (July 2, 2013), the Board did not find sufficient facts to grant a petition for
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`cancellation on the grounds of fraud based on the contention that Registrant had not been using
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`the mark on the date of first use asserted in its application--after a full evidentiary record had
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`been developed and an oral hearing had been held before the Board--the Board there recognized
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`that a claim for fraud based on an applicant’s knowingly predating the date of first use claimed in
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`its application would give rise to cancellation of a registration, if record evidence supported the
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`claim. Id. False statements about the date of first use of a mark were also found sufficient to
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`form the basis of a fraud claim in an opposition to registration of a mark applied for based on a
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`knowingly incorrect and premature date of first use in Nationstar Mortage, LLC v. Ahmad, 2014
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`TTAB LEXIS 350, 112 U.S.P.Q. 2d (BNA) 1361 (Aug. 22, 2012). There, after testimony had
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`been taken and a full record presented, the Board found that misrepresentations about the date of
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`first use of a mark were sufficient to preclude registration of the mark, on the grounds of fraud.
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`Id. at *42, 112 U.S.P.Q. 2d at 1374.
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`At this pleading stage Registrant has not even alleged--much less offered and proven
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`facts--to justify its having provided a date of first use in his application that is placed in grave
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`doubt by the fact allegations of Petitioner’s claims; and Registrant’s claimed date of first use is
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`further undermined by the even more specific facts provided in the Declaration of Petitioner’s
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`president. Nor has Registrant cited any authority that would justify denying Petitioner’s claim as
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`a matter of law and dismissing its Petition.
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`B.
`Petitioner has alleged facts supporting its contention that Registrant was not
`using the Mark in commerce when he so stated in his application.
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`Petitioner has alleged facts sufficient to support its claim that Registrant knowingly
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`asserted in his application that he was conducting business in [interstate] commerce, with the
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`intention of misleading the USPTO in order to register the subject mark (Petition, ¶¶ 3, 6). No
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`more specific facts are needed to allege such a claim in order to comply with the requirements
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`for pleading fraud or misrepresentation. And if any further support for the fact that Registrant
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`was not conducting business in interstate commerce were necessary, Petitioner has shown in the
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`Declaration of its President that there is ample evidence to show that Registrant was a local real
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`estate broker, who described himself as such. Azbill Decl., ¶ 7, Exhibits 2 and 3.
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`The Board has recognized, under appropriate facts, that the real estate business is a local
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`business and that real estate services are localized and do not necessarily implicate interstate
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`commerce. See In re U.S. Home Corporation of Texas, 1978 TTAB LEXIS 145, *6, 10, 201
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`U.S.P.Q. (BNA) 602, 603-04 (Aug. 18, 1978) (affirming a prior decision that the sale of real
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`estate and home sites did not constitute services rendered in commerce). In the instant case
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`Petitioner has properly and persuasively alleged and shown that Registrant is engaged in
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`providing local real estate brokerage services, and that his claim to use of the subject mark “in
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`commerce”--even were it not clear that he was not using that Mark as of the date of first use
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`stated in his application--was knowingly false. Such allegations can form the basis for a fraud
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`claim such as that Petitioner is here asserting. See Nationstar Mortgage, supra at *43, 112
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`U.S.P.Q. 2d at 1374.
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`C.
`Petitioner has alleged facts sufficient to state a claim that Registrant
`knowingly misrepresented that there were no other users of the same or similar mark that
`would likely cause confusion.
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`Petitioner has alleged facts, including one statement asserted on information and belief, to
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`support its claim that when Registrant filed his application, he had knowledge of then-existing
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`substantially similar trademarks in use that could likely cause confusion with Registrant’s Mark.
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`That he was aware of one or more of such other uses seems highly likely, given the large number
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`of such uses throughout the country evident on the web, and the widespread use of the internet
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`on which Registrant evidently relies in his business.4 “Pleading on ‘information and belief’ is
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`permitted under Rule 9(b) where essential information lies uniquely within another party’s
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`control, but only if the pleading sets forth specific facts upon which the belief is reasonably
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`based.” Ergen Corp. v. WalMart Stores, Inc., 575 F.3d 1312, 1330 (Fed. Cir. 2009). 5
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`As Registrant seems to recognize (Motion to Dismiss, page 3), facts alleged on
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`information and belief are sufficient to support a claim when, as here, the claimant refers to the
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`facts it asserts would support its claim. Here the only facts so alleged concern Registrant’s
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`knowledge that there was existing use of his Mark by others in the real estate business when he
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`filed his application. Petitioner has previously alleged that there were numerous persons using
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`the 24K mark, or a substantially similar mark (24 Karat) in connection with real estate services,
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`including one in the Denver metropolitan area and others located in Arizona and Nevada, in
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`support of its claim (Petition, ¶ 7). And if this were not sufficiently specific, Petitioner has here
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`supplemented those allegations with the identities of eight such other businesses, in alleging on
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`information and belief that Registrant had prior knowledge of one or more of these uses, and
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`4 A Google search of the web for the term 24K for real estate brings up many such entities, with
`little effort, which is the means by which Ms. Azbill, the president of Petitioner, located much of the
`information set forth in her accompanying Declaration.
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` 5
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` “Pleading upon information and belief is only actionable where the facts supporting the fraud are
`known by the pleading party, or where evidence supports the factual basis of the claim will “likely”
`be obtained after a reasonable opportunity for discovery or investigation.” Ergen Corp., citing Asian
`and Western Classics B.V. v. Selkow, 2009 TTAB LEXIS 642, *3, 92 U.S.P.Q. 2d (BNA) 1478. In
`Selkow the Board also recognized that allegations on information and belief could be supported for
`pleading purposes by a statement of facts on which the belief is based, and on allegation that the facts
`are uniquely within the control of the defendant. Id., *4. Here Petitioner has alleged such facts and
`is supplementing those facts with even more specific information in the accompanying Declaration of
`its president, which is discussed hereinabove. It is obvious that facts concerning Registrant’s
`knowledge would not be available to Petitioner without it having the opportunity to take discovery,
`but to articulate the obvious, Petitioner’s president has so stated in her accompanying Declaration.
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`13
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`

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`now in support of its claim has noted that Registrant’s knowledge of any such uses is uniquely in
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`Registrant’s control.
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`CONCLUSION
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`As shown above, Petitioner has alleged facts sufficient to support each of the three bases
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`it has asserted for the cancellation of the registration of the Mark 24K Real Estate; and has
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`supplemented its Petition with additional facts provided in the Declaration of its President Kay
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`Azbill, should there be any doubt as to the sufficiency of facts alleged in its Petition. Should the
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`Board consider those additional facts in ruling on Registrant’s motion to Dismiss it can treat this
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`as a summary judgment proceeding; or in the alternative Petitioner asks that it be given leave to
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`amend its Petition to incorporate these facts as allegations. In any case, whether or not it takes
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`the additional facts into consideration, the Board should deny Registrant’s motion.
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`Date: June 22, 2017
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`
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`
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`Respectfully submitted,
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`PEACOCK MYERS, P.C.
`
`By: /s/ Jeffrey L. Squires
` Jeffrey L. Squires
` NM Bar No.: 143015
` 201 Third Street NW
` Suite 1340
` Albuquerque, NM 87102
` Tel: (505) 998-6116 Fax: (505) 243-2542
` Email: jsquires@peacocklaw.com
` Attorneys for Petitioner
`
`
`G:\A-Clients\24K REAL ESTATE\Cancellation Proceeding No. 92065525\Petitioner's Response in Opposition to Registrant's Motion to
`Dismiss.docx
`
`
`
`14
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`

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`In the matter of:
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`Registration No. 4,691,674
`Mark: 24K Real Estate
`Registered: February 24, 2015
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`24K REAL ESTATE GROUP, INC.,
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`v.
`
`DAVID KUPERNIK
`
`Petitioner,
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`Registrant.
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`.,.,‘,,,‘rH”‘,
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`Cancellation No. 92065525
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`DECLARATION OF KAY AZBILL
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`1, Kay Azbill,,do declare and state as follows:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`suggesting the quality of services we .pmposed to offer to the public. At that time, I knew of no
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`’1.
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`,I am anadult resident of Albuquerque, New Mexico. I am president of 24K Real
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`Estate Group, Inc, the Petitioner in the above-captioned matter. I makethis Declaration of my
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`personalknowledge, unless otherwise indicated.
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`2.
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`I, along with a-nurnber of other licensed Realtors in New Mexico, organiZed 24K
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`Real Estate Group, Inc. in New Mexico in .2016. Petitioner is engaged in the brokerage of
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`residential real estate in New Mexico. I am-the Qualifying Broker, licensed assuch in
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`accordance With statutes and regulations goVeming the realty brokerage business in New
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`Mexico.
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`‘3.
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`When we formed Petitioner, myself and a numberof the associatebrok‘ers
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`conferred and Selected 24K as the name of our new company, for the obvious reason of
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`

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`other businesses engaged in residential real estate brokerage in New Mexico who were using the
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`phrase 24K, in any similar phrase, to identify their business.
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`4.
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`In late January 2017 I received afletter from attorneys asserting that they
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`represented David Kupemik, Registrant in this matter. His attorneys advised that he Was
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`demanding that our New Mexico business immediately cease and desist use ofthe trademark
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`24K Real Estate,,whioh he had assertedly registered With the US, Patent and Trademark Office.
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`Asa result of my receipt of that letter, I engaged a law finnon behalf of our business, and sought
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`advice on the validity of'Mr. Kupem‘ik’s contention that he owned a registered trademark and
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`thatour company was Violating his rights in‘that trademark,
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`5.
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`Acting independently and with assistance ofmy attorneys, I' did, my own internet
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`search, using Google, to search forreal es'tatetcompanies' using the name 24K. By entering that
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`searchterm I identified the following businesses using the name 24K or 24 Karat: Hersh'24K
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`current'business entity, Mr. Kupemik had been a real estate agent With Prudential Preferred Real
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`Luxury Properties in Scottsdale, Arizona; 24 Karat Realty in Las Vegas, Nevada; 24 Karat Real
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`Estate, in Pewell, Ohio; 24K International Realty in San Diego, Galimeia; 24K REaIty
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`Investments in'E