Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1085266
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`Filing date:
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`09/29/2020
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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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`92075035
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`Party
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`Correspondence
`Address
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`Defendant
`Elefterakis, Elefterakis And Panek, P.C.
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`ELEFTERAKIS, ELEFTERAKIS AND PANEK, P.C.
`80 PINE ST
`NEW YORK, NY 10005
`UNITED STATES
`No email provided.
`No phone number provided.
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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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`Answer
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`Stephanie Nott
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`nott@abramslaw.com
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`/Stephanie Nott/
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`09/29/2020
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`Attachments
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`EEP Answer and Affirmative Defenses.pdf(69054 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 Registration No. 5,419,394
`For the Mark: NYC-HURT
`Date of Registration: November 19, 2019
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`CHOPRA & NOCERINO, LLP,
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`Petitioner,
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`ELEFTERAKIS, ELEFTERAKIS, AND
`PANEK, P.C.,
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`Respondent.
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`Cancellation No. 92075035
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`RESPONDENT’S ANSWER & AFFIRMATIVE DEFENSES
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`Respondent ELEFTERAKIS, ELEFTERAKIS, AND PANEK, P.C., (“EEP” or
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`“Respondent”) hereby sets forth its Answer and Affirmative Defenses to the Petition for
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`Cancellation filed by Petitioner CHOPRA & NOCERINO, LLP (“Petitioner” or “C&N”).
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`The numbering of the paragraphs below refers to the number’s used in Petitioner’s Petition.
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`Respondent reserves the right to supplement.
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`RESPONDENT’S ANSWER TO PETITION FOR CANCELLATION
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`At the outset, EEP is without knowledge or information sufficient to form a belief as to the
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`truth of the prefatory allegations that Petitioner set forth on page 1 of the Petition for Cancellation
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`regarding Petitioner’s legal status and principal places of business, and therefore denies the same.
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`Please take note that the specific format of paragraph numbering used in this answer is
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`used for the purpose of staying consistent with the numbering format used in Petitioner’s petition.
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`Respondent EEP answers the enumerated paragraphs of Petitioner’s Petition for Cancellation as
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`follows:
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`1
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`I(a). Since its inception in 20l0, Petitioner, a law firm, provides legal services focused
`primarily on the area of personal injury law.
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`ANSWER: EEP lacks knowledge and information sufficient to form a belief as to the
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`allegations in Paragraph I(a), which are therefore denied.
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`I(b). Petitioner represents clients who have incurred injuries through motor vehicle
`accidents, motorcycle accidents, car accidents, truck accidents, bicycle accidents, construction
`accidents, premises accidents, slip-and-falls, false arrests, wrongful deaths, burning accidents,
`medical malpractice, and police brutality.
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`ANSWER: EEP lacks knowledge and information sufficient to form a belief as to the
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`allegations in Paragraph I(b), which are therefore denied.
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`I(c). Petitioner has developed a reputation for professionalism among personal injury
`law firms.
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`ANSWER: With respect to the allegations of Paragraph I(c), EEP neither admits nor denies
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`the allegations that assert legal conclusions to which no response is required. EEP lacks sufficient
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`knowledge or information to form a belief as to the remaining allegations, which are therefore
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`denied.
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`I(d). Petitioner’s and their Principals’ reputation and professionalism have won and/or
`have contributed towards many verdicts and settlements for their clients, including but not limited
`to: [subparagraphs I(d)(i)-(xxiv) are incorporated by reference as if fully set forth herein].
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`ANSWER: With respect to the allegations of Paragraph I(d) inclusive of subparagraphs
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`I(d)(i)-(xxiv), EEP neither admits nor denies the allegations that assert legal conclusions to which
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`no response is required. EEP lacks sufficient knowledge or information to form a belief as to the
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`remaining allegations, which are therefore denied.
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`I(e). Petitioner provides its legal services under various service marks and service names
`including but not limited to CHOPRA & NOCERINO, [CN logo image], 855-NYC-HURT and
`NYC-HURT.
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`2
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`ANSWER: With respect to the allegations in Paragraph I(e), EEP neither admits nor denies
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`the allegations to the extent they assert legal conclusions to which no response is required. EEP
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`lacks sufficient knowledge or information to form a belief as to the remaining allegations, which
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`are therefore denied.
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`855-NYC-HURT and NYC-HURT are phonewords that Petitioner has adopted as
`I(f).
`service marks to symbolize its CHOPRA & NOCERINO legal services brand.
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`ANSWER: With respect to the allegations in Paragraph I(f), EEP neither admits nor denies
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`the allegations to the extent they assert legal conclusions to which no response is required. EEP
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`lacks sufficient knowledge or information to form a belief as to the remaining allegations, which
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`are therefore denied.
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`I(g). Since at least as early as 2010 in commerce, and as early as 2011 in interstate
`commerce, Petitioner has used 855-NYC-HURT and NYC-HURT extensively to identify its legal
`services, its offices, and its website. Among other uses, Petitioner has used 855-NYC-HURT and
`NYC-HURT as a service mark on its website www.chopranocerino.com, radio advertisements,
`newspaper advertisements, internet advertisements, journal advertisements and giveaways.
`Examples of such uses are shown below: [example images 1-3 are incorporated by reference as if
`fully set forth herein].
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`ANSWER: With respect to the allegations in Paragraph I(g), EEP neither admits nor denies
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`the allegations to the extent they assert legal conclusions to which no response is required. EEP
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`lacks sufficient knowledge or information to form a belief as to the remaining allegations, which
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`are therefore denied.
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`I(h). Petitioner has invested a lot in its promotion of the services offered in connection
`with 855-NYC-HURT and NYC-HURT. As a result of the Petitioner’s use and promotion, the
`servicemarks 855-NYC-HURT and NYC-HURT have come to embody substantial goodwill
`associated with Petitioner, and consumers immediately identify the 855-NYC-HURT and NYC-
`HURT marks with Petitioner.
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`3
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`ANSWER: With respect to the allegations in Paragraph I(h), EEP neither admits nor denies
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`the allegations to the extent they assert legal conclusions to which no response is required. EEP
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`lacks sufficient knowledge or information to form a belief as to the remaining allegations, which
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`are therefore denied.
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`In addition to the common law rights Petitioner has developed through extensive
`I(i).
`use of the 855-NYC-HURT and NYC-HURT marks, Petitioner is the owner of all rights, title, and
`interest in U.S. Trademark Application Serial No. 90/114,964 for the mark 855-NYC-HURT (the
`"Trademark") for LEGAL SERVICES, use in International Class 045; and U.S. Trademark
`Application Serial No. 90/115,010 for the Trademark NYC-HURT (the "Trademark") for LEGAL
`SERVICES, use in International Class 045.
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`ANSWER: With respect to the allegations in Paragraph I(i), EEP neither admits nor denies
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`the allegations to the extent they assert legal conclusions to which no response is required and
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`denies all remaining allegations.
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`II(a). Notwithstanding Petitioner's prior rights in the 855-NYC-HURT and NYC-HURT,
`on November 19, 2019, ELEFTERAKIS, ELEFTERAKIS AND PANEK, P.C., with an address
`at 80 Pine St New York, NY 10005 (“Registrant”) secured U.S. Registration No. 5,914,394 for the
`mark NYC-HURT in connection with legal services in International Class 045.
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`ANSWER: EEP admits the existence of the USPTO records referenced in Paragraph II(a),
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`the contents of which are shown on the face of the documents and speak for themselves. EEP
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`admits the allegations in Paragraph II(a) pertaining to its address. EEP neither admits nor denies
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`the allegations to the extent they assert legal conclusions to which no response is required. EEP
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`lacks sufficient knowledge or information to form a belief as to the remaining allegations, which
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`are therefore denied.
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`II(b). Petitioner began using its 855-NYC-HURT and NYC-HURT marks in interstate
`commerce at least as early as 2011, well before Registrant's claimed first use date of July 17, 2017,
`and the May 7, 2019, filing date of the Registrant's Application.
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`4
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`ANSWER: EEP admits the existence of the USPTO records referenced in Paragraph II(b),
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`the contents of which are shown on the face of the documents and speak for themselves. EEP
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`neither admits nor denies the allegations to the extent they assert legal conclusions to which no
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`response is required. EEP lacks sufficient knowledge or information to form a belief as to the
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`remaining allegations, which are therefore denied.
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`II(c). Petitioner has prior rights to the service marks 855-NYC-HURT and NYC-HURT;
`rights that precede Registrant's rights to its NYC-HURT mark, as embodied by U.S. Registration
`5,914,394.
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`ANSWER: EEP admits the existence of the USPTO records referenced in Paragraph II(c),
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`the contents of which are shown on the face of the documents and speak for themselves. EEP
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`neither admits nor denies the allegations to the extent they assert legal conclusions to which no
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`response is required and denies all remaining allegations.
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`II(d). Registrant's NYC-HURT mark is confusingly similar in sight, sound, and
`commercial impression to Petitioner's service marks 855-NYC-HURT and NYC- HURT.
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`ANSWER: With respect to the allegations in Paragraph II(d), EEP neither admits nor
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`denies the allegations to the extent they assert legal conclusions to which no response is required
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`and denies all remaining allegations.
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`II(e). The goods identified in the Registration are legal services. They are identical to,
`overlap with, or are highly related to the services on which Petitioner has used and continues to
`use its service marks 855-NYC-HURT and NYC-HURT.
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`ANSWER: EEP admits the existence of the USPTO records referenced in Paragraph II(e),
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`the contents of which are shown on the face of the documents and speak for themselves. With
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`respect to the allegations in Paragraph II(e), EEP neither admits nor denies the allegations to the
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`5
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`extent they assert legal conclusions to which no response is required and denies all remaining
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`allegations.
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`II(f). Registrant's mark NYC-HURT, when used in connection with Registrant's services
`as identified in its Registration, so resembles Petitioner's previously used 855-NYC-HURT and
`NYC-HURT service marks as to be likely to cause confusion, to cause mistake, and/or to deceive
`members of the public concerning a sponsorship, or endorsement of, or an affiliation, connection,
`or association with, the source of goods and services sold under the 855-NYC-HURT and NYC-
`HURT marks, in violation of Section 2(d) of the Lanham Act, 15 U .S.C. § 1052(d), with
`consequent injury to Petitioner, the public, and the trade.
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`ANSWER: With respect to the allegations in Paragraph II(f), EEP neither admits nor
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`denies the allegations to the extent they assert legal conclusions to which no response is required
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`and denies all remaining allegations.
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`II(g). Pursuant to Section 14 of the Lanham Act, 15 U.S.C. § 1064, Petitioner believes it
`is being damaged by the Registration, in that members of the purchasing public and/or the trade
`are likely to be confused or mistaken that Registrant's services offered under Registrant's Mark
`originate from Petitioner, or from the same source as the services sold under Petitioner's previously
`used 855-NYC-HURT and NYC-HURT servicemarks, or that such services of Registrant are
`sponsored by, endorsed by, or affiliated with the source of services provided under Petitioner's
`previously used 855-NYC-HURT and NYC-HURT servicemarks. Such likelihood of confusion
`results in damage to the goodwill among purchasers and the trade that Petitioner's 855-NYC-
`HURT and NYC-HURT servicemarks symbolize.
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`ANSWER: With respect to the allegations in Paragraph II(g), EEP neither admits nor
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`denies the allegations to the extent they assert legal conclusions to which no response is required
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`and denies all remaining allegations.
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`II(h). The Registration is a source of damage and injury to Petitioner.
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`ANSWER: EEP denies the allegations in Paragraph II(h).
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`II(i). The continued Registration of Registrant's Mark will support and assist the
`Registrant in the confusing and misleading use of Registrant's Mark, and, also, will give color and
`exclusive statutory rights to Registrant in violation and derogation of Petitioner's prior and superior
`rights.
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`6
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`ANSWER: With respect to the allegations in Paragraph II(i), EEP neither admits nor
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`denies the allegations to the extent they assert legal conclusions to which no response is required
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`and denies all remaining allegations.
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`II(j). If Respondent's U.S. Registration No. 5,914,394 is not canceled, Respondent shall
`obtain prima facie exclusive right to use Respondent's mark. Such continued registration will be a
`source of damage and injury to Petitioner.
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`ANSWER: With respect to the allegations in Paragraph II(j), EEP neither admits nor
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`denies the allegations to the extent they assert legal conclusions to which no response is required
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`and denies all remaining allegations.
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`ANY ALLEGATIONS NOT SPECIFICALLY ADMITTED ARE DENIED.
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`AFFIRMATIVE DEFENSES
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`Respondent asserts the following affirmative defenses to Petitioner’s Petition for
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`Cancellation:
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`FIRST AFFIRMATIVE DEFENSE
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`The Petition for Cancellation fails to state any claim upon which relief may be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`Petitioner has not been and will not be damaged by the continuation of registration of
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`Respondent’s mark.
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`THIRD AFFIRMATIVE DEFENSE
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`Petitioner lacks standing to bring this Cancellation Petition.
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`7
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`FOURTH AFFIRMATIVE DEFENSE
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`Petitioner does not own any valid, enforceable rights in the asserted servicemarks 855-
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`NYC-HURT and NYC-HURT.
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`FIFTH AFFIRMATIVE DEFENSE
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`Respondent is the senior user of the NYC-HURT servicemark.
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`SIXTH AFFIRMATIVE DEFENSE
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`Petitioner’s claims are barred in whole or in part by the doctrine of laches.
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`SEVENTH AFFIRMATIVE DEFENSE
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`Petitioner’s claims are barred in whole or in part by the doctrine of acquiescence.
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`EIGHTH AFFIRMATIVE DEFENSE
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`Petitioner’s claims are barred in whole or in part by the doctrine of unclean hands.
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`NINTH AFFIRMATIVE DEFENSE
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`Petitioner’s claims are barred in whole or in part by the doctrines of equitable estoppel,
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`consent, and waiver.
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`TENTH AFFIRMATIVE DEFENSE
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`Petitioner’s claims are barred in whole or in part by the acts or omissions of Petitioner and
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`its own negligence and/or lack of due diligence.
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`ELEVENTH AFFIRMATIVE DEFENSE
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`Petitioner’s alleged common law marks are not distinctive of its services and have not
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`acquired secondary meaning or trade identity.
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`8
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`TWELFTH AFFIRMATIVE DEFENSE
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`Petitioner’s alleged common law and applied-for marks are not a famous servicemarks, as
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`they are not distinctive, whether inherently or through their use. Therefore, Respondent’s actions
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`and registration could not and will not cause dilution of Petitioner’s servicemarks by blurring,
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`tarnishment or otherwise.
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`Respondent reserves the right to assert additional affirmative defenses and/or assert any
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`available counterclaims in the future based on information obtained by Respondent through
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`discovery in this proceeding or otherwise.
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`WHEREFORE, Respondent respectfully requests judgement dismissing Petitioner’s
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`Petition for Cancellation and this proceeding in its entirety, with prejudice.
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`Dated: September 29, 2020
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`Respectfully submitted,
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`ABRAMS FENSTERMAN, FENSTERMAN,
`EISMAN, FORMATO, FERRARA, WOLF
`& CARONE, LLP
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`/Stephanie Nott/
`By:
`Stephanie Nott, Esq.
`Attorneys for Respondent
`160 Linden Oaks, Suite E
`Rochester, New York 14625
`Telephone: (585) 218-9999
`Email: nott@abramslaw.com
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`9
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing RESPONDENT’S
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`ANSWER AND AFFIRMATIVE DEFENSES has been served on counsel for Petitioner,
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`PANAGIOTA BETTY TUFARIELLO, Esq., at INTELLECTULAW, LAW OFFICES OF P.B.
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`TUFARIELLO, P.C., by forwarding said copy on September 29, 2020, via email to:
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`Pbtufariello@intellectulaw.com and aorban@intellectulaw.com.
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`Date: September 29, 2020
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`Signature: /Stephanie Nott/
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` Stephanie Nott, Esq.
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