Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1125551
`04/07/2021
`
`ESTTA Tracking number:
`
`Filing date:
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`Proceeding
`
`Party
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`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92074482
`
`Defendant
`One World, Inc.
`
`ANTONIA URUSKI
`THE URUSKI LAW FIRM PLLC
`5846 S FLAMINGO RD, #114
`FORT LAUDERDALE, FL 33330
`UNITED STATES
`Primary Email: antonia@uruskilaw.com
`Secondary Email(s): thamaragarcia5@gmail.com, shipping@oneworldgina.com,
`eservice@uruskilaw.com, javier@zayasbazanlaw.com
`954-240-6470
`
`Submission
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`Motion for Summary Judgment
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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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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 08/09/2021
`Antonia Uruski
`
`antonia@uruskilaw.com
`
`/Antonia Uruski/
`
`04/07/2021
`
`Cross Motion for Summary Judgment 2.pdf(81234 bytes )
`EXHIBIT 1 COMBINED 2.pdf(72471 bytes )
`EXHIBIT 2 COMBINED 2.pdf(79155 bytes )
`Exhibit 3 Affidavit of Gina Saati 2.pdf(879272 bytes )
`Ex. 3 Affidavit EXHIBIT A COMBINED 2.pdf(5438294 bytes )
`Ex. 3 Affidavit EXHIBIT B 2.pdf(5236496 bytes )
`Ex. 3 Affidavit EXHIBIT C 2.pdf(4860029 bytes )
`Ex. 3 Affidavit EXHIBIT D 2.pdf(1634629 bytes )
`Ex. 3 Affidavit EXHIBIT E 2.pdf(1189864 bytes )
`Ex. 3 Affidavit EXHIBIT F 2.pdf(634483 bytes )
`Ex. 3 Affidavit EXHIBIT G 2.pdf(15280 bytes )
`Ex. 3 Affidavit EXHIBIT H 2.pdf(62279 bytes )
`Ex. 3 Affidavit EXHIBIT I 2.pdf(210234 bytes )
`Ex. 3 Affidavit EXHIBIT J 2.pdf(940900 bytes )
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TransferWise Ltd.,
`
` Petitioner,
`
`v.
`
`One World, Inc.,
`
` Registrant.
`____________________________________/
`
`
`
`Cancellation No. 92074482
`
`
`
`
`
`
`
`
`REGISTRANT’S BRIEF IN RESPONSE TO PETITIONER’S MOTION FOR
`SUMMARY JUDGMENT, CROSS-MOTION FOR SUMMARY JUDGMENT AND
`INCORPORATED MEMORANDUM IN SUPPORT THEREOF
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`One World, Inc. (“Registrant”), hereby responds in opposition to TransferWise Ltd.’s
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`
`
`
`
`
`
`
`
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`(“Petitioner”) Motion for Summary Judgment, and pursuant to Federal Rule of Civil Procedure
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`56(c) and Trademark Trial and Appeal Board Manual of Procedure § 528.01, moves for summary
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`judgment in its favor that it has not abandoned its A BORDERLESS COMPANY FOR A
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`BORDERLESS WORLD mark. This Motion is based on the statement of facts and memorandum
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`of law set forth below, Registrant’s discovery responses, and the Affidavit of Gina Saati (“Saati
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`Aff.”) and the Exhibits attached thereto.
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`I.
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`
`
`INTRODUCTION
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`Petitioner filed this cancellation proceeding seeking cancellation of Registrant’s U.S.
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`Trademark Registration No. 1,974,677 for the mark A BORDERLESS COMPANY FOR A
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`BORDERLESS WORLD (the “Registration”) based on allegations of fraud and abandonment. On
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`October 2, 2020, Registrant filed a motion for judgment on the pleadings and on February 5, 2021,
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`this Board granted the motion as to the fraud claim and dismissed Petitioner’s fraud claim.
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`
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`1
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`

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`Registrant’s motion was denied as to the abandonment claim. Therefore, the sole remaining basis
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`under which Petitioner seeks cancellation of the Registration is the allegation of abandonment.
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`
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`However, the unrefuted evidence shows that Registrant has continuously used the A
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`BORDERLESS COMPANY FOR A BORDERLESS WORLD mark at least since its application
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`for registration in 1996. Moreover, the unrefuted evidence shows that Registrant has used the mark
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`within the past three years and thus, as a matter of fact and law, the Board should deny Petitioner’s
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`motion for summary judgment and grant Registrant’s Cross-Motion for Summary Judgment, and
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`find that the A BORDERLESS COMPANY FOR A BORDERLESS WORLD mark was not
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`abandoned.
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`II.
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`STATEMENT OF UNDISPUTED FACTS
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`
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`Registrant relies on the following undisputed facts in support of this Motion. These
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`undisputed facts are based upon the Affidavit of Gina Saati and the exhibits attached thereto, and
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`Registrant’s responses to Petitioner’s discovery requests. Relying on these forms of evidence in a
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`summary judgment motion is proper pursuant to TBMP § 528.05(a)(1) and § 528.05(c).
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`Registrant’s Response to Request for Admissions is attached hereto as Exhibit “1.” Registrant’s
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`Answers to Interrogatories and Response to Request for Production are attached hereto as
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`Composite Exhibit “2.” The Affidavit of Gina Saati and the exhibits attached thereto are attached
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`as Exhibit “3” to this motion. The undisputed evidence shows that Registrant has continuously
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`used the A BORDERLESS COMPANY FOR A BORDERLESS WORLD mark since at least as
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`early as 1996, and within the past 3 years.
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`Registrant is an Import & Export business that contracts with manufacturers to produce its
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`Private Labels. (Saati Aff. ¶ 4). As a private label contractor, Registrant finances its projects by
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`investing its assets to purchase mass-produced generic commodities in high volume from major
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`2
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`

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`manufacturers. (Saati Aff. ¶ 10). The type of product purchased or developed depends on the
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`specific request from the client for a particular good or on market demand. (Saati Aff. ¶ 9).
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`Registrant develops the packaging for the product and the manufacturer labels and packages the
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`commodities with Registrant’s private label. (Saati Aff. ¶ 10). Registrant then coordinates the
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`logistics for the products which are shipped via container-load for distribution to the client or to
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`various vendors. (Saati Aff. ¶¶ 10, 11). The vendors receive the products from Registrant on
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`consignment and make payments to Registrant after the products are sold to the end consumers.
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`(Saati Aff. ¶ 11).
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`
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`Registrant has been conducting business in the United States and internationally since
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`1981. (Saati Aff. ¶ 4). As such, Registrant has developed long-term relationships with major
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`suppliers, such as Austin Quality Foods/Keebler/Kellogg’s, Nestlé, and others internationally, as
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`well as with its clients, distributors, wholesalers, retailers and local vendors, who sell its various
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`private label products. (Saati Aff. ¶ 7). Registrant does not conduct its business on the internet or
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`via social media, but rather prefers to conduct its business and sales in-person, via telephone and
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`facsimile in its main office in Miami, Florida, and via email in its main office in Miami, Florida.
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`(Saati Aff. ¶ 6-8). Registrant markets its services and products directly to its clients and vendors
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`via product promotions, print advertisements, brochures, billboards, newspapers, magazines,
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`radio, and television. (Saati Aff. ¶ 7). Registrant does not own a website or hold any social media
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`accounts, nor is it required to. (Saati Aff. ¶ 6).
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`
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`In or around 1996, Registrant registered its service mark A BORDERLESS COMPANY
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`FOR A BORDERLESS WORLD, under international class 361, for “commodity trading services
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`for others for consumer goods and sundries.” (Saati Aff. ¶ 21) Said mark was registered on May
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`1 Registrant also has the subject mark registered under international class 35. However, Petitioner’s cancellation
`petition is limited solely to Registrant’s international class 36 registration.
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`
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`3
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`

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`21, 1996, Reg. No. 1,974,677. (Saati Aff. ¶ 21, Saati Aff. Ex. G). Registrant filed its Combined
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`Section 8 & 9 filings to renew its mark registration in 2006, and again in 2016. (Saati Aff. ¶¶ 23-
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`24, Saati Aff. Comp. Ex. I & J). In 2016, Registrant was notified by the USPTO that the specimens
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`it provided were insufficient and substitute specimens were requested. (Saati Aff. ¶ 24, Saati Aff.
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`Comp. Ex. J) Registrant provided the USPTO with the requested documentation and its renewal
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`was accepted and approved on April 27, 2016. (Saati Aff. ¶ 24, Saati Aff. Comp. Ex. J).
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`
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`On or around September 1, 2020, Petitioner served Requests for Admissions, Production,
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`and Interrogatories upon Registrant. On October 1, 2020, Registrant served its Response to
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`Request for Admissions and said Response is attached hereto as Exhibit “1.” In the Requests,
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`Petitioner asks Registrant to admit that it was not using its mark for the services identified in its
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`registration in international class 36 in 2016, to admit that it did not use its mark for the services
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`identified in its registration in international class 36 within the past 3 years, and to admit that it did
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`not have plans to resume use of its mark. In response to these requests, Registrant denied that it
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`did not use its mark in 2016 and within the past 3 years, and denied as phrased that it did not have
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`plans to resume use of the mark because Registrant did not admit that the mark was ever not in use
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`in connection with its services in international class 36. (See Exhibit “1”).
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`With regard to its responses to interrogatories and requests for production, on October 1,
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`2020, counsel for Registrant sent an email to counsel for Petitioner requesting an extension of time
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`to provide responses to the Request for Production and Interrogatories. Counsel for Petitioner
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`denied the request for an extension of time. However, on October 2, 2020, Registrant filed its
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`Motion for Judgment on the Pleadings and on October 6, 2020, these proceedings were suspended
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`pending the Board’s decision on the motion. On Friday, February 5, 2021, these proceedings were
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`resumed and on February 11, 2021, Registrant served its Answers to Interrogatories and Responses
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`4
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`

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`to Requests for Production to Petitioner, along with over 300 production documents (see
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`Composite Exhibit “2” attached hereto), only 4 of which were attached as exhibits to Petitioner’s
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`motion for summary judgment.
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`The documentation provided to the USPTO in 2016, as well as the documentation provided
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`by Registrant to counsel for Petitioner in its discovery responses, and the documentation attached
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`as exhibits to the Affidavit of Gina Saati, all show that Registrant’s mark, A BORDERLESS
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`COMPANY FOR A BORDERLESS WORLD, has been in use in commerce continuously since
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`at least the date of its registration in 1996 up to and including the present date.
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`III. MEMORANDUM OF LAW
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`A.
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`SUMMARY JUDGMENT STANDARD
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`
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`Federal Rule 56 provides that a court “shall grant summary judgment if the movant shows
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`that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). The moving party may support its motion with evidence from
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`the record (including depositions, documents, electronically stored information, affidavits or
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`declarations, admissions, interrogatory answers, or other materials) or by showing that the
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`materials cited to does not establish the presence of a genuine dispute. See id.
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`
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`A fact is genuinely in dispute only if the evidence of record is such that a reasonable fact-
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`finder could return a verdict in favor of the non-moving party. Id. Federal Rule 56(c) requires the
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`nonmoving party to adduce more than a mere scintilla of evidence in its favor, Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 252 (1986), and that party cannot simply reassert factually unsupported
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`allegations contained in its pleadings. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986);
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`see also ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 1278, 1287 (Fed. Cir. 2010).
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`5
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`

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`
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`Because the undisputed facts relied on in support of this Cross-Motion establish that
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`Registrant has not abandoned its A BORDERLESS COMPANY FOR A BORDERLESS WORLD
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`mark, there are no disputed material facts that could affect the outcome of this case. Therefore,
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`summary judgment should be granted in Registrant’s favor.
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`B.
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`THERE ARE NO GENUINE DISPUTES OF MATERIAL FACT REGARDING
`REGISTRANT’S CONTINUED USE OF ITS MARK
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`
`
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`
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`1.
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`The Legal Standard to Prove Abandonment
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`To prove abandonment, Petitioner must show that Registrant (1) has discontinued use of
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`the A BORDERLESS COMPANY FOR A BORDERLESS WORLD mark and (2) has no intent
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`not to resume such use. 15 U.S.C. § 1127; On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d
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`1080, 1087 (Fed. Cir. 2000). “Since service mark registrations are presumed valid, the party
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`seeking cancellation of such registration must rebut this presumption by a preponderance of the
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`evidence.” On-Line Careline, 229 F.3d at 1087; Martahus v. Video Duplication Servs., Inc., 3 F.3d
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`417, 421 (Fed. Cir. 1993). A party seeking to cancel a registration must show proof of non-use for
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`three consecutive years to establish a prima facie case of abandonment. See 15 U.S.C. § 1127.
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`
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`Trademark Act Section 45, 15 U.S.C. § 1127, states as follows:
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`The term ‘use in commerce’ means the bona fide use of a mark in the
`ordinary course of trade, and not made merely to reserve a right in a mark.
`For purposes of this chapter, a mark shall be deemed to be in use in
`commerce— … on services when it is used or displayed in the sale or
`advertising of services and the services are rendered in commerce, or the
`services are rendered in more than on State or in the United States and a
`foreign country and the person rendering the services is engaged in
`commerce in connection with the services.
`
` A
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` mark shall be deemed to be “abandoned” … [w]hen its use has been
`discontinued with intent not to resume such use. Intent not to resume may
`be inferred from circumstances. Nonuse for 3 consecutive years shall be
`prima facie evidence of abandonment. ‘Use’ of a mark means the bona fide
`use of such mark made in the ordinary course of trade, and not made merely
`to reserve a right in a mark.
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`6
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`Even if a petitioner can show a three-year period of non-use, “[t]he burden of persuasion,
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`however, always remains with the petitioner to prove abandonment by a preponderance of the
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`evidence.” On-Line Careline, 229 F.3d at 1087; see also 15 U.S.C. § 1127. The burden to show
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`abandonment rests on the petitioner because the presumption of validity accorded a registration
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`serves an important purpose in protecting marks. “The protection due the registrant is provided by
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`requiring that the inference have an adequate foundation in proven fact. Whenever an inference is
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`based on pure speculation … a prima facie case of abandonment must fail.” Cerveceria
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`Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 1024 (Fed. Cir. 1989), Nirvana,
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`Inc. v. Nirvana For Health Inc, Cancellation No. 92042878 (denying petitioner’s abandonment
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`claim and noting that “the burden is on petitioner to prove non-use of the mark; the burden is not
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`on respondent to prove use of the mark. Petitioner’s argument […] that respondent has failed to
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`present evidence showing use of the mark after the filing of the application, and that therefore ‘it
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`can only be presumed that such evidence was not available,’ misstates the parties’ respective
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`burdens of proof in this case.”).
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`Even a “single instance of use is sufficient against a claim of abandonment of a mark if
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`such use is made in good faith.” Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc., 758 F.3d 1069,
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`1072 (9th Cir. 2014). The Federal Circuit has held that “[g]ood faith nominal or limited commercial
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`sales of trademarked goods are sufficient … to avoid abandonment.” Electro Source, LLC v.
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`Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 939 (9th Cir. 2006). “There is also no rule of law
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`that the owner of a trademark must reach a particular level of success, measured either by the size
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`of the market or by its own level of sales, to avoid abandoning the mark.” Person’s Co. v.
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`Christman, 900 F.2d 1565, 1571 (Fed. Cir. 1990).
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`7
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`Petitioner filed its Cancellation Petition on June 15, 2020. (Dkt. No. 1). In its Petition and
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`in its Motion for Summary Judgment, Petitioner alleges that Respondent did not use its mark in
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`commerce past 2016. Thus, Petitioner can only prevail on its abandonment claim if it can show
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`that Registrant discontinued use of its mark with intent not to resume use at some point between
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`2017 and June 2020, the date that the cancellation action was filed. The undisputed facts show that
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`Registrant has continuously used the mark since at least 1996, during the time period of 2017 to
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`2020, and prior to 2017. Moreover, as Registrant has already produced objective evidence of its
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`continuous use of the A BORDERLESS COMPANY FOR A BORDERLESS WORLD mark,
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`there are no documents or other evidence that Petitioner could come forward with to show a
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`genuine dispute as to any material fact that would be determinative in this proceeding. Summary
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`judgment is therefore appropriate. See Fed. R. Civ. Pro. 56(c); Anderson, 477 U.S. at 252 (1986);
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`Celotex, 477 U.S. at 323-24 (1986); see also ERBE, 629 F.3d at 1287 (Fed. Cir. 2010).
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`2.
`
`The Unrefuted Evidence Shows that Registrant has used the A BORDERLESS
`COMPAY FOR A BORDERLESS WORLD Mark Continuously During the
`Time Period between 2017 and 2020, and Prior
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`Registrant has a multiple-class registration for its mark, A BORDERLESS COMPANY
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`FOR A BORDERLESS WORLD, in international class 35 for “import and export agencies for
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`consumer goods and sundries,” and in international class 36 for “commodity trading services for
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`others for consumer goods and sundries.” (See certificate of registration attached as Exhibit “G”
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`to the Affidavit of Gina Saati). The services that Registrant provides are described in the Affidavit
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`of Gina Saati attached hereto as Exhibit “3.”
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`As discussed above, in addition to import and export services, Registrant provides services
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`as a private label contractor. As such, Registrant finances the high-volume purchase of a high-
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`demand generic product/commodity direct from a major manufacturer either per the request of a
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`8
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`buyer or client or based on their own market research. Registrant creates the packaging and
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`advertising art, obtains FDA or other necessary government approvals, health certificates, legal
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`registrations, and handles logistics for shipping and distribution. This process may take up to 2-3
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`years and once Registrant’s private label product is complete, the product is shipped to the buyer
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`or client, or distributed to vendors, who purchase the products on consignment. Registrant receives
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`payment for its services once the products have been sold to the end consumers.
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`Registrant’s mark, A BORDERLESS COMPANY FOR A BORDERLESS WORLD, in
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`used in connection with every aspect of its provision of its services. As evidenced by the
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`documents attached as Exhibits A, B, C, D and E to the Affidavit of Gina Saati (Exhibit “3” hereto),
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`the mark, A BORDERLESS COMPANY FOR A BORDERLESS WORLD is utilized on all
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`business cards, letterhead, invoices, purchase orders, credit memos, product labels, product
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`packaging, advertisements, and marketing materials. This evidence is sufficient to rebut
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`Petitioner’s allegation of abandonment, and to prove that the mark, A BORDERLESS COMPANY
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`FOR A BORDERLESS WORLD, at all times material hereto, has been used and is currently being
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`used by Registrant in connection with the sale and/or advertising of its services under international
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`class 36.
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`Registrant is a small business and does not have the resources to store voluminous records
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`of invoices and sales going back over 25 years. However, Registrant has produced sample invoices
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`and proof of income from sales during the years 2013 to the present date (Saati Aff. ¶ 11, Ex. F).
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`While Registrant’s sales information and record keeping may not equal that of a multinational
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`corporation, such voluminous evidence is not required in order to prove continued use of a mark
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`(or disprove a claim of abandonment). Person’s Co., 900 F.2d at 1571 (“There is also no rule of
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`9
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`law that the owner of a trademark must reach a particular level of success, measured either by the
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`size of the market or by its own level of sales, to avoid abandoning the mark.”).
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`In view of the foregoing, use of the mark has not been “discontinued with intent not to
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`resume such use” within the meaning of 15 U.S.C. § 1127. See On-Line Careline, Inc. v. Am.
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`Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000); see also Nirvana, Inc. v. Nirvana For Health
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`Inc., Cancellation No. 92042878 (“Because petitioner has failed to prove either that respondent
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`ever discontinued use without the intent to resume use, or that respondent made no use of the mark
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`for three consecutive years, petitioner’s abandonment claim fails.”) (T.T.A.B. 2010) (not
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`precedential). Petitioner has not come forward with any evidence of Registrant’s alleged non-use
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`of the A BORDERLESS COMPANY FOR A BORDERLESS WORLD mark. Accordingly,
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`Petitioner cannot meet its burden to show a prima facie case of abandonment sufficient to survive
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`summary judgment. Therefore, summary judgment in favor of Registrant is appropriate.
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`IV. CONCLUSION
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`
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`Because the evidence shows that Registrant has continuously used its A BORDERLESS
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`COMPANY FOR A BORDERLESS WORLD mark during the relevant time period and because
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`Petitioner cannot come forward with any evidence of non-use, Registrant respectfully requests that
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`the Board deny Petitioner’s Motion for Summary Judgment, and grant Registrant’s Cross-Motion
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`for Summary Judgment that Registrant did not abandon its mark.
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`10
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`Dated: April 7, 2021.
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` /s/Antonia Uruski/
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`Respectfully submitted,
`THE URUSKI LAW FIRM, PLLC
`ZAYAS BAZAN LAW, PLLC
`
`By:
`
`Antonia Uruski, Esq.
`The Uruski Law Firm, PLLC
`5846 S. Flamingo Road, #114
`Fort Lauderdale, FL 33330
`Phone: (954) 240-6470
`Email: antonia@uruskilaw.com
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`eservice@uruskilaw.com
`
`Javier Zayas-Bazan, Esq.
`Zayas Bazan Law, PLLC
`1110 Brickell Avenue, Suite 504
`Miami, FL 33131
`Phone: (786) 310-6565
`Email: javier@zayasbazanlaw.com
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`Attorneys for Registrant
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`CERTIFICATE OF SERVICE
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`On this 7th day of April, 2021, a true and correct copy of the foregoing document was
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`served by e-mailing a copy to Petitioner’s Counsel Jessica Sblendorio and Ben Natter at
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`sblendorio@haugpartners.com, bnatter@haugpartners.com, and docket@haugpartners.com as
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`required by the Trademark Trial and Appeal Board.
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`/s/ Antonia Uruski/
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`Antonia Uruski, Esq.
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`11
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`EXHIBIT “1”
`EXHIBIT “1”
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`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`TransferWise Ltd.,
`
` Petitioner,
`
`v.
`
`One World, Inc.,
`
` Registrant.
`____________________________________/
`
`
`
`Cancellation No. 92074482
`
`
`
`
`
`
`
`
`
`REGISTRANT ONE WORLD, INC.’S RESPONSE TO FIRST SET OF REQUESTS FOR
`ADMISSION FROM PETITIONER TRANSFERWISE LTD.
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`COMES NOW Registrant, ONE WORLD, INC., by and through its undersigned counsel,
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`and hereby serves this Response to Petitioner, TRANSFERWISE LTD.’s First Set of Requests
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`for Admission dated September 1, 2020, and states:
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`REQUEST FOR ADMISSION NO. 1
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`Admit that U.S. Trademark Registration No. 1,974,677 does not contain any limitations
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`on the channels of trade.
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`RESPONSE: Admit.
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`REQUEST FOR ADMISSION NO. 2
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`Admit that Your Mark A BORDERLESS COMPANY FOR A BORDERLESS WORLD
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`encompasses the term “Borderless.”
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`RESPONSE: Admit.
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`REQUEST FOR ADMISSION NO. 3
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`Admit that You were not using the mark A BORDERLESS COMPANY FOR A
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`BORDERLESS WORLD, in the United States, for the services identified in U.S. Trademark
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`Registration No. 1,974,677 in international class 36, in 2016.
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`RESPONSE: Denied.
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`REQUEST FOR ADMISSION NO. 4
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`Admit that You did not use A BORDERLESS COMPANY FOR A BORDERLESS
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`WORLD, in the United States, for the services identified in U.S. Trademark Registration No.
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`1,974,677 in international class 36 within the last three years.
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`RESPONSE: Denied.
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`REQUEST FOR ADMISSION NO. 5
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`Admit that You do not have plans to resume use of the mark A BORDERLESS
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`COMPANY FOR A BORDERLESS WORLD in connection with the services identified in U.S.
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`Trademark Registration No. 1,974,677 in international class 36.
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`RESPONSE: Denied as phrased since One World does not admit that the subject mark was
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`ever not in use in connection with the services identified in U.S. Trademark Registration
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`No. 1,974,677 in international class 36.
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`Page 2 of 3
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`Dated: October 1, 2020.
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` /s/Antonia Uruski/
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`Respectfully submitted,
`THE URUSKI LAW FIRM, PLLC
`ZAYAS BAZAN LAW, PLLC
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`By:
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`Antonia Uruski, Esq.
`The Uruski Law Firm, PLLC
`5846 S. Flamingo Road, #114
`Fort Lauderdale, FL 33330
`Phone: (954) 240-6470
`Email: antonia@uruskilaw.com
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`eservice@uruskilaw.com
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`Javier Zayas-Bazan, Esq.
`Zayas Bazan Law, PLLC
`1110 Brickell Avenue, Suite 504
`Miami, FL 33131
`Phone: (786) 310-6565
`Email: javier@zayasbazanlaw.com
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`Attorneys for Registrant
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`CERTIFICATE OF SERVICE
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`On this 1st day of October, 2020, a true and correct copy of the foregoing document was
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`served by e-mailing a copy to Petitioner’s Counsel Jessica Sblendorio and Ben Natter at
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`sblendorio@haugpartners.com, bnatter@haugpartners.com, and docket@haugpartners.com as
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`required by the Trademark Trial and Appeal Board.
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`/s/ Antonia Uruski/
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`Antonia Uruski, Esq.
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`Page 3 of 3
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`COMPOSITE
`COMPOSITE
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`EXHIBIT “2”
`EXHIBIT “2”
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`TransferWise Ltd.,
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` Petitioner,
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`v.
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`One World, Inc.,
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` Registrant.
`____________________________________/
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`Cancellation No. 92074482
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`REGISTRANT ONE WORLD INC.’S ANSWERS TO FIRST SET OF REQUESTS FOR
`INTERROGATORIES FROM PETITIONER TRANSFERWISE LTD.
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`COMES NOW Registrant, ONE WORLD, INC., by and through the undersigned
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`attorney, and gives notice of serving the Answers to First Set of Requests for Interrogatories
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`propounded by Petitioner, TRANSFERWISE LTD., on September 1, 2020.
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`Dated: February 11, 2021.
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` /s/Antonia Uruski/
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`Respectfully submitted,
`THE URUSKI LAW FIRM, PLLC
`ZAYAS BAZAN LAW, PLLC
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`By:
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`Antonia Uruski, Esq.
`The Uruski Law Firm, PLLC
`5846 S. Flamingo Road, #114
`Fort Lauderdale, FL 33330
`Phone: (954) 240-6470
`Email: antonia@uruskilaw.com
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`eservice@uruskilaw.com
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`Javier Zayas-Bazan, Esq.
`Zayas Bazan Law, PLLC
`1110 Brickell Avenue, Suite 504
`Miami, FL 33131
`Phone: (786) 310-6565
`Email: javier@zayasbazanlaw.com
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`Attorneys for Registrant
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`CERTIFICATE OF SERVICE
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`On this 11 day of February, 2021, a true and correct copy of the foregoing document was
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`served by e-mailing a copy to Petitioner’s Counsel Jessica Sblendorio and Ben Natter at
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`sblendorio@haugpartners.com, bnatter@haugpartners.com, and docket@haugpartners.com as
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`required by the Trademark Trial and Appeal Board.
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`/s/ Antonia Uruski/
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`Antonia Uruski, Esq.
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`REGISTRANT ONE WORLD, INC.’S ANSWERS TO FIRST SET OF
`INTERROGATORIES
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`INTERROGATORY NO. 1
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`Identify and describe Your Services in international class 36 offered in connection with A
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`BORDERLESS COMPANY FOR A BORDERLESS WORLD in the United States.
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`ANSWER: Commodity trading services for others for consumer goods and sundries, which
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`necessarily includes financing the purchase of consumer goods and sundries commodities
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`for trade in the consumer markets.
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`INTERROGATORY NO. 2
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`Describe how A BORDERLESS COMPANY FOR A BORDERLESS WORLD is used
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`in the promotion of Your Services in international class 36 in the United States.
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`ANSWER: Registrant’s mark is displayed on all promotional materials used by Registrant
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`to promote its services, including on the packaging materials of the consumer goods and
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`sundries traded by Registrant.
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`INTERROGATORY NO. 3
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`Describe how A BORDERLESS COMPANY FOR A BORDERLESS WORLD will be
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`used in the promotion of Your Services in international class 36 in the United States.
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`ANSWER: Registrant’s mark has been used in the past, is currently being used, and will
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`continue to be used in the future as indicated in answers to #1 and #2 above.
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`INTERROGATORY NO. 4
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`State the time period that A BORDERLESS COMPANY FOR A BORDERLESS
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`WORLD has been used in connection with Your Services in international class 36, including the
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`date of first use in commerce.
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`ANSWER: One World began using its mark prior to the 1996 registration date and has
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`used said mark continuously without interruption from that time, up to and including the
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`present date.
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`INTERROGATORY NO. 5
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`Describe any changes in Your Services in international class 36 that have occurred at any
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`time since You first provided Your Services in international class 36, including the time period.
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`ANSWER: None.
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`INTERROGATORY NO. 6
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`Describe when and under what circumstances You first learned of TransferWise,
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`including TransferWise’s use of the TRANSFERWISE BORDERLESS (plus design) and
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`MONEY WITHOUT BORDERS (plus design) marks.
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`ANSWER: Upon service of the instant cancellation action.
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`INTERROGATORY NO. 7
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`Identify and describe all promotional activities for Your Services in international class
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`36, including without limitation to attendance at trade shows or seminars, Internet, print, radio or
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`television advertising, or other marketing.
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`ANSWER: One World, Inc. promotes its services through direct marketing, including but
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`not limited to, in person marketing, by telephone at its phone number in Miami, Florida,
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`by email through its internet service provider in Miami, Florida, or at its offices located in
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`Miami, Florida.
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`INTERROGATORY NO. 8
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`Identify the actual and/or projected quarterly sales volume for Your Services in
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`international class 36, for each year, in the United States.
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`ANSWER: Objection; irrelevant, overly broad, burdensome, and not reasonably calculated
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`to lead to the discovery of admissible evidence.
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`INTERROGATORY NO. 9
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`Identify the actual and/or projected quarterly revenues for Your Services in international
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`class 36, for each year, in the United States.
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`ANSWER: Objection; irrelevant, overly broad, burdensome, and not reasonably calculated
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`to lead to the discovery of admissible evidence.
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`INTERROGATORY NO. 10
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`Identify the number of customers for Your Services in international class 36 in the United
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`States for each quarter of the year since 2016.
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`ANSWER: Objection; seeks information which is a trade secret and otherwise confidential.
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`INTERROGATORY NO. 11
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`Describe the facts regarding Your selection and adoption of A BORDERLESS
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`COMPANY FOR A BORDERLESS WORLD, including without limitation the reason the mark
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`was selected to identify Your Services in international class 36 (e.g., the meaning and impression
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`You sought to convey to consumers with A BORDERLESS COMPANY FOR A
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`BORDERLESS WORLD), and the Person(s) involved with the selection and adoption of A
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`BORDERLESS COMPANY FOR A BORDERLESS WORLD.
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`ANSWER: Objection; seeks information which is protected trade secret.
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`INTERROGATORY NO. 12
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`Describe each instance in which any Person has challenged A BORDERLESS
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`COMPANY FOR A BORDERLESS WORLD and/or Your right to use such mark (including, for
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`each, the identity of the Persons or entities involved, the date on which the incident occurred, the
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`manner or forum in which the challenge, objection, or question was raised, how the issue was
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`resolved, and all Persons with knowledge of the incident).
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`ANSWER: None other than the instant cancellation a