Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1299391
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`Filing date:
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`07/24/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92082613
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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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`Defendant
`Catalpa Lane Farm, LLC
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`CATALPA LANE FARM, LLC
`425 CATALPA LANE
`CHERRY TREE, PA 15824
`UNITED STATES
`Primary email: trademark@dinsmore.com
`No phone number provided
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`Answer
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`Michael G. Frey
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`michael.frey@dinsmore.com, april.besl@dinsmore.com,
`cindy.blackburn@dinsmore.com, trademarks@dinsmore.com
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`/michael.g.frey/
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`07/24/2023
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`Attachments
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`wagyulicious answer.pdf(180269 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. 7,026,898
`Issued April 11, 2023
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`Cancellation No. 92082613
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`Mark: WAGYULICIOUS
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`WAGYULICIOUS,
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`Petitioner,
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`v.
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`CATALPA LANE FARM, LLC,
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`Registrant.
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`ANSWER TO PETITION FOR CANCELLATION
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`Registrant, Catalpa Lane Farm, LLC (“Registrant”) is a limited liability company
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`organized under the laws of the State of Pennsylvania, with its principal place of business
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`at 425 Catalpa Lane, Cherry Tree, Pennsylvania 15824. Registrant owns U.S. Trademark
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`Registration No. 7,026,898 (the “Registration”), and through its counsel, hereby answers
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`the Petition for Cancellation filed against the Registration by Petitioner Wagyulicious
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`(“Petitioner”). Registrant denies each and every allegation contained in the Petition for
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`Cancellation unless otherwise expressly admitted or responded to herein.
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`1.
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`Registrant states that the U.S. Trademark Office records speak for
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`themselves. With that understanding, Registrant admits that those records indicate that
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`Application Serial No. 97/070,135 was filed by an entity called Wagyulicious [sic] and
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`that it seeks registration of WAGYULICIOUS in connection with “providing of food and
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`drink via a mobile truck; restaurant services featuring hamburgers.” To the extent Paragraph
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`1 contains any other allegations, Registrant is without sufficient knowledge or
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`information to determine the truth or falsity of those additional allegations, and therefore
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`denies same.
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`2.
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`Registrant states that the U.S. Trademark Office records speak for
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`themselves. With that understanding, Registrant admits that those records indicate that
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`Application Serial No. 98/056,600 was filed by an entity called Wagyulicious LLC [sic]
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`and that it seeks registration of WAGYULICIOUS in connection with “animal semen,
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`namely, Wagyu cattle semen;” and “Wagyu beef and Wagyu beef products, namely, beef cuts
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`produced from Wagyu cattle,” and “animal embryos, namely, Wagyu cattle embryos.” To the
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`extent Paragraph 2 contains any other allegations, Registrant is without sufficient
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`knowledge or information to determine the truth or falsity of those additional allegations,
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`and therefore denies same.
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`3.
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`Registrant denies the allegations of Paragraph 3. According to Trademark
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`Office records, the mark in Application Serial No. 97/070,135 has not yet been refused
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`registration, whether on the basis of a likelihood of confusion with a prior registered mark
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`or otherwise.
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`4.
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`5.
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`Registrant admits the allegations of Paragraph 4.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 5, and therefore denies same.
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`6.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 6, and therefore denies same.
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`7.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 7, and therefore denies same.
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`8.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 8, and therefore denies same.
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`9.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 9, and therefore denies same.
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`10.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 10, and therefore denies same.
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`11.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 11, and therefore denies same.
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`12.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 12, and therefore denies same.
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`13.
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`Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of the allegations in Paragraph 13, and therefore denies same.
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`14.
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`Registrant admits the allegations of Paragraph 14, except that Registrant
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`notes that Application Serial No. 90/754,493 initially sought registration of the
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`WAGYULICIOUS mark in connection with “livestock, namely, beef cattle and cattle
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`embryos,” and was later amended to seek registration in connection with “livestock, namely,
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`Wagyu beef cattle and Wagyu cattle embryos.” Similarly, Application Serial No. 90/754,496
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`initially sought registration of the mark WAGYULICIOUS in connection with “Wagyu
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`beef and Wagyu beef products, namely, beef steaks, ribeye steaks, t-bone steaks, sirloin steaks, filet
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`mignon steaks, tri-tip steaks, beef chuck roast, beef short ribs, ground beef, and beef brisket; organic
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`grass feed beef and products, namely, beef steaks, ribeye steaks, t-bone steaks, sirloin steaks, filet
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`mignon steaks, tri-tip steaks, beef chuck roast, beef short ribs, ground beef, and beef brisket; dried
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`meat; processed meat; prepared meat; steaks in the nature of steaks of meat; beef steaks; beef slices;
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`beef; beef patties; beef burgers in the nature of beef burger patties; ground burger in the nature of
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`ground burger patties; bones in the nature of bones for making soup; organic beef bones; bone
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`marrow for food; organic bone marrow for food,” and was later amended to seek registration
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`in connection with “Wagyu beef and Wagyu beef products, namely, beef steaks, ribeye steaks, t-
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`bone steaks, sirloin steaks, filet mignon steaks, tri-tip steaks, beef chuck roast, beef short ribs,
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`ground beef, and beef brisket; organic grass feed beef and products, namely, beef steaks, ribeye
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`steaks, t-bone steaks, sirloin steaks, filet mignon steaks, tri-tip steaks, beef chuck roast, beef short
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`ribs, ground beef, and beef brisket; dried meat; processed meat; prepared meat; steaks in the nature
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`of steaks of meat; beef steaks; beef slices; beef; beef patties; beef burgers in the nature of beef burger
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`patties; ground burger in the nature of ground burger patties; bones in the nature of bones for
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`making soup; organic beef bones; bone marrow for food; organic bone marrow for food; all of the
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`foregoing produced from Wagyu cattle.”
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`15. Again, Registrant states that the U.S. Trademark Office records speak for
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`themselves. With that understanding, Registrant admits that those records indicate that
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`Application Serial No. 97/070,135 was filed by an entity called Wagyulicious [sic] and
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`that it seeks registration of WAGYULICIOUS in connection with “providing of food and
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`drink via a mobile truck; restaurant services featuring hamburgers” in Class 43. To the extent
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`Paragraph 15 contains any other allegations, Registrant is without sufficient knowledge
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`or information to determine the truth or falsity of those additional allegations, and
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`therefore denies same.
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`16.
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`Registrant specifically denies that Application Serial No. 90/754,496 was
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`published for opposition on March 30, 2022. To the extent Paragraph 16 contains any
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`other allegations, Registrant is without sufficient knowledge or information to determine
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`the truth or falsity of those additional allegations, and therefore denies same.
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`17.
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`Registrant admits that Application Serial No. 90/754,493 was published for
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`opposition on April 19, 2022. To the extent Paragraph 17 contains any other allegations,
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`Registrant is without sufficient knowledge or information to determine the truth or falsity
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`of those additional allegations, and therefore denies same.
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`18.
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`Registrant admits that Notices of Allowance were issued for Application
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`Serial Nos. 90/754,493 and 90/754,496 on June 14, 2022. To the extent Paragraph 18
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`contains any other allegations, Registrant is without sufficient knowledge or information
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`to determine the truth or falsity of those additional allegations, and therefore denies
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`same.
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`19.
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`Registrant states that the U.S. Trademark Office records speak for
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`themselves. With that understanding, Registrant admits that a Suspension Letter was
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`issued for Application Serial No. 97/070,135 on July 26, 2022, and that the Suspension
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`Letter indicated a potential for likelihood of confusion between the mark in that
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`application and the marks in Application Serial Nos. 90/754,493 and 90/754,496. To the
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`extent Paragraph 18 contains any other allegations, Registrant is without sufficient
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`knowledge or information to determine the truth or falsity of those additional allegations,
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`and therefore denies same.
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`20.
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`21.
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`Registrant admits the allegations of Paragraph 20.
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`Registrant states that the letter attached to the Petition for Cancellation as
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`Exhibit A speaks for itself. With that understanding, Registrant admits that the letter
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`contends that Application Serial Nos. 90/754,493 and 90/754,496 were filed prior to the
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`filing of Application Serial No. 97/070,135 and prior to Petitioner’s first use of the
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`WAGYULICIOUS name in connection with the operation of a food truck business.
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`Registrant further admits that the letter contends that there exists “a real potential for
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`confusion or mistake” between Registrant’s marks and the Petitioner’s name.
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`22.
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`Registrant admits that U.S. Application Serial No. 90/754,493 matured into
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`Registration No. 7,026,898 on April 11, 2023.
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`23.
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`Registrant admits that the Trademark Office issued a Notice of Acceptance
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`of a Statement of Use for U.S. Application Serial No. 90/754,496 on June 17, 2023, which
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`indicated that the mark will register and a registration certificate will issue in due course.
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`24. Again, Registrant states that the U.S. Trademark Office records speak for
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`themselves. With that understanding, Registrant admits that those records indicate that
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`Application Serial No. 98/056,600 was filed by an entity called Wagyulicious LLC [sic]
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`and that it seeks registration of WAGYULICIOUS in connection with “animal semen,
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`namely, Wagyu cattle semen” (with a claimed date of first use of June 16, 2018); and “Wagyu
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`beef and Wagyu beef products, namely, beef cuts produced from Wagyu cattle” (with a claimed
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`date of first use of November 5, 2018), and “animal embryos, namely, Wagyu cattle embryos”
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`(with a claimed date of first use of November 11, 2018). To the extent Paragraph 24
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`contains any other allegations, Registrant is without sufficient knowledge or information
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`to determine the truth or falsity of those additional allegations, and therefore denies
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`same.
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`25.
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`26.
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`Registrant admits the allegations of Paragraph 25.
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`Registrant admits that the goods and services recited in the Registration
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`and Application Serial No. 90/754,496 are highly similar to, if not overlapping with, the
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`goods and services recited in U.S. Application Serial No. 97/056,600. Registrant further
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`admits that it does not use its WAGYULICIOUS marks for food truck services or
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`restaurant services. To the extent Paragraph 26 contains any other allegations —
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`including without limitation, that Petitioner uses the WAGYULICIOUS mark in
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`connection with any goods recited in either the Registration or Application Serial No.
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`90/754,496 — Registrant is without sufficient knowledge or information to determine the
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`truth or falsity of those additional allegations, and therefore denies same.
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`27.
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`Registrant admits that Petitioner’s use of the WAGYULICIOUS name in
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`connection with a food truck and restaurant featuring hamburgers is likely to cause
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`confusion among consumers with respect to Registrant’s prior-filed WAGYULICIOUS
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`marks. To the extent Paragraph 27 contains any other allegations — including without
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`limitation, that Petitioner uses the WAGYULICIOUS mark in connection with any goods
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`recited in either the Registration or Application Serial No. 90/754,496 — Registrant is
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`without sufficient knowledge or information to determine the truth or falsity of those
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`additional allegations, and therefore denies same.
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`28.
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`29.
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`30.
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`Registrant denies the allegations of Paragraph 28.
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`Registrant denies the allegations of Paragraph 29.
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`Registrant denies the allegations of Paragraph 30 to the extent they allege
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`that Registrant is not entitled to the rights granted by the Registration. To the extent
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`Paragraph 30 contains any other allegations — including without limitation, that
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`Petitioner owns “prior and established rights” in the WAGYULICIOUS mark —
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`Registrant is without sufficient knowledge or information to determine the truth or falsity
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`of those additional allegations, and therefore denies same.
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`Registrant denies the allegations of Paragraph 31.
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`Registrant denies the allegations of Paragraph 32.
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`31.
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`32.
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`PRAYER FOR RELIEF
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`WHEREFORE Registrant prays that this Cancellation proceeding be dismissed in
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`its entirety with prejudice, and that Registrant have such other and further relief as the
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`Board may deem just and proper.
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`Date: July 24, 2023
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`Respectfully submitted,
`DINSMORE & SHOHL LLP
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`s/michael.g.frey/
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`Michael G. Frey, Esq.
`April L. Besl, Esq.
`255 East Fifth Street, Suite 1900
`Cincinnati, OH 45202
`Telephone: (513) 977-8200
`Facsimile: (513) 977-8141
`E-mail: michael.frey@dinsmore.com;
`aprl.besl@dinsmore.com
`Attorneys for Registrant
`Catalpa Lane Farm, LLC
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`CERTIFICATE OF SERVICE AND FILING
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`The undersigned hereby certifies that a copy of the foregoing Answer was filed
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`electronically with the Trademark Trial and Appeal Board and served upon Petitioner’s
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`counsel of record by electronic mail on July 24, 2023, addressed as follows:
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`ADAM V. VICKERS
`INTELLECTUAL PROPERTY CONSULTING, LLC
`400 POYDRAS STREET, SUITE 1400
`NEW ORLEANS, LA 70130
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`avickers@iplawconsulting.com
`creid@iplawconsulting.com
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`s/michael.g.frey/
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