ESTTA Tracking number:
`
`ESTTA1354033
`
`Filing date:
`
`04/23/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92084670
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Defendant
`Cascade Maverik Lacrosse, LLC
`
`DOUGLAS A. RETTEW
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`901 NEW YORK AVENUE, NW
`WASHINGTON, DC 20001
`UNITED STATES
`Primary email: docketing@finnegan.com
`Secondary email(s): doug.rettew@finnegan.com,
`patrick.rodgers@finnegan.com, maxime.jarquin@finnegan.com, TTAB-Leg-
`al-Assistants@finnegan.com
`202-408-4000
`
`Answer
`
`Douglas A. Rettew
`
`docketing@finnegan.com, doug.rettew@finnegan.com,
`patrick.rodgers@finnegan.com, maxime.jarquin@finnegan.com, TTAB-Leg-
`al-Assistants@finnegan.com
`
`Signature
`
`Date
`
`/Douglas A. Rettew/
`
`04/23/2024
`
`Attachments
`
`2024-04-23 Respondent Answer-Affirmative Defense.pdf(304101 bytes )
`
`
`
`ESTTA1354033
`
`Filing date:
`
`04/23/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92084670
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Defendant
`Cascade Maverik Lacrosse, LLC
`
`DOUGLAS A. RETTEW
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`901 NEW YORK AVENUE, NW
`WASHINGTON, DC 20001
`UNITED STATES
`Primary email: docketing@finnegan.com
`Secondary email(s): doug.rettew@finnegan.com,
`patrick.rodgers@finnegan.com, maxime.jarquin@finnegan.com, TTAB-Leg-
`al-Assistants@finnegan.com
`202-408-4000
`
`Answer
`
`Douglas A. Rettew
`
`docketing@finnegan.com, doug.rettew@finnegan.com,
`patrick.rodgers@finnegan.com, maxime.jarquin@finnegan.com, TTAB-Leg-
`al-Assistants@finnegan.com
`
`Signature
`
`Date
`
`/Douglas A. Rettew/
`
`04/23/2024
`
`Attachments
`
`2024-04-23 Respondent Answer-Affirmative Defense.pdf(304101 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation No. 92084670
`
`
`
`
`STX, LLC,
`
`
`
`
`
`CASCADE MAVERIK LACROSSE, LLC
`
`
`
`
`Petitioner,
`
`
`
`v.
`
`Respondent.
`
`for a three-dimensional fin
`Mark:
`shape on the back of a helmet
`Reg. No. 5993772
`Registered: February 25, 2020
`
`
`
`RESPONDENT’S ANSWER AND AFFIRMATIVE DEFENSES
`
`
`
`
`
`Respondent Cascade Maverik Lacrosse, LLC answers Petitioner STX, LLC’s Petition to
`
`Cancel as follows:
`
`
`
`Regarding the preamble to the Petition to Cancel, Respondent denies that Petitioner will
`
`be damaged by the continued registration of the three-dimensional fin shape on the back of a
`
`helmet (the “Registered Trade Dress”) shown in Respondent’s Registration No. 5993772 (the
`
`“’772 Registration”). Respondent admits that Petitioner has requested cancellation of the ’772
`
`Registration based on functionality and lack of acquired distinctiveness, but denies the merits of
`
`those claims. Respondent admits that it is a limited liability company located at 4697 Crossroads
`
`Park Dr., Liverpool, New York 13088. Respondent lacks knowledge or information sufficient to
`
`admit or deny the remaining allegations in the preamble to the Petition to Cancel and therefore
`
`denies them.
`
`
`
`With respect to the numbered Paragraphs of the Petition to Cancel:
`
`
`
`1.
`
`Respondent admits that Petitioner sells lacrosse helmets and other lacrosse
`
`equipment, accessories, and apparel. Respondent lacks knowledge or information sufficient to
`
`admit or deny the remaining allegations in Paragraph 1 and therefore denies them.
`
`2.
`
`3.
`
`4.
`
`Admitted.
`
`Admitted.
`
`Admitted. Additionally, on March 29, 2024, Respondent filed (and the Court
`
`accepted) a First Amended Complaint alleging additional claims of patent infringement under
`
`35 U.S.C. § 271.
`
`5.
`
`6.
`
`Denied.
`
`Respondent lacks knowledge or information sufficient to admit or deny the
`
`allegations in Paragraph 6 and therefore denies them.
`
`7.
`
`Respondent lacks knowledge or information sufficient to admit or deny the
`
`allegations in Paragraph 7 and therefore denies them.
`
`8.
`
`9.
`
`Denied.
`
`Admitted. Respondent further admits that Exhibit 1 to Petitioner’s Petition to
`
`Cancel purports to be the NOCSAE Standard Performance Specification for Newly Manufactured
`
`Lacrosse Helmets with Faceguard, revised February 2011.
`
`10.
`
`Respondent admits that it ensured its helmets satisfied the revised 2011 NOCSAE
`
`drop test standards but denies that it added a fin to do so. Respondent denies that it changed its
`
`helmet impact protection designs to satisfy the updated NOCSAE standards. Respondent lacks
`
`knowledge or information sufficient to admit or deny whether or not helmet companies needed to
`
`change helmet impact protection designs to account for dropping their test helmets from higher
`
`heights to achieve the new velocity requirement as a result of the new NOCSAE standard and
`
`2
`
`
`
`
`therefore denies that allegation. To the extent there are additional allegations in Paragraph 10,
`
`Respondent denies them.
`
`11.
`
`12.
`
`13.
`
`Denied.
`
`Denied.
`
`Admitted. Respondent further admits that Exhibit 2 to Petitioner’s Petition to
`
`Cancel is Respondent’s Application Serial No. 88229364 (the “’364 Application”), which
`
`eventually matured to the ’772 Registration.
`
`14.
`
`Respondent admits that it filed a Preliminary Amendment to its ’364 Application
`
`on March 22, 2019 to replace its “Section 2(f) Claim of Acquired Distinctiveness, Based on Five or
`
`More Years’ Use” with “a Section 2(f) Claim of Acquired Distinctiveness, Based on
`
`Evidence.” Respondent admits that Exhibit 3 to Petitioner’s Petition to Cancel is Respondent’s
`
`March 22, 2019 Preliminary Amendment and the evidence Respondent submitted in connection
`
`with that amendment. To the extent there are additional allegations in Paragraph 14, Respondent
`
`denies them.
`
`15.
`
`Respondent admits that, after its March 22, 2019 Preliminary Amendment, it
`
`proved that its Registered Trade Dress had acquired distinctiveness and secured a registration for
`
`its Registered Trade Dress on February 25, 2020. Respondent denies Petitioner’s argumentative
`
`and confusing characterization that, after the Preliminary Amendment, “Respondent was left trying
`
`to build a case for acquired distinctiveness based on evidence.” To the extent there are additional
`
`allegations in Paragraph 15, Respondent denies them.
`
`16.
`
`Respondent admits that, in support of its claim of acquired distinctiveness, it
`
`submitted a declaration titled, “Declaration of Michelle Hanson in Support of Applicant’s Section
`
`2(f) Claim of Acquired Distinctiveness,” along with supporting exhibits, in connection with its
`
`3
`
`
`
`
`March 22, 2019 Preliminary Amendment. Respondent admits that Michelle Hanson was, at the
`
`time, Vice President and General Counsel of Respondent. The content of and exhibits attached to
`
`the Declaration of Michelle Hanson in Support of Applicant’s Section 2(f) Claim of Acquired
`
`Distinctiveness speak for themselves. To the extent there are additional allegations in Paragraph
`
`16, Respondent denies them.
`
`17.
`
`18.
`
`Denied.
`
`Respondent denies that “Ms. Hanson’s declaration was self-serving given her role
`
`as an officer of Respondent.” Respondent admits that Exhibit 4 to Petitioner’s Petition to Cancel
`
`is a copy of the April 5, 2019 Office Action issued against the ’364 Application. Respondent
`
`further admits that Office Action included the following statement: “First, the statements by
`
`applicant’s officer regarding the distinctiveness of the mark is not dispositive given the interested
`
`nature of the declarant.” Respondent, however, denies that the Examining Attorney “disposed of”
`
`Ms. Hansen’s declaration by way of that statement. The April 5, 2019 Office Action speaks for
`
`itself, and Respondent therefore denies Petitioner’s characterization of the Office Action. To the
`
`extent there are additional allegations in Paragraph 18, Respondent denies them.
`
`19.
`
`20.
`
`Denied.
`
`Respondent admits that it did not submit a consumer survey when it made its March
`
`22, 2019 Preliminary Amendment. Respondent, however, denies that such a survey was required;
`
`indeed, Respondent secured registration of its Registered Trade Dress without any survey. To the
`
`extent there are additional allegations in Paragraph 20, Respondent denies them.
`
`21.
`
`Respondent admits that the U.S. Patent and Trademark Office (“USPTO”) issued
`
`an Office Action on April 5, 2019 preliminarily refusing the ’364 Application. The April 5, 2019
`
`Office Action speaks for itself, including as to the bases for refusal, and Respondent therefore
`
`4
`
`
`
`
`denies Petitioner’s characterizations of the Office Action. To the extent there are additional
`
`allegations in Paragraph 21, Respondent denies them.
`
`22.
`
`Respondent admits that the April 5, 2019 Office Action includes the following
`
`statement: “It is noted that none of [sic] examples of social media and advertising materials
`
`demonstrate that applicant expressly promotes the fin feature as a mark.” Respondent denies that
`
`the examples of social media and advertising it submitted did not promote the fin feature as a mark.
`
`Respondent also denies that the USPTO “dismissed the social media and advertising materials,”
`
`based on the quoted statement or otherwise. The April 5, 2019 Office Action speaks for itself, and
`
`Respondent therefore denies Petitioner’s characterizations of the Office Action. To the extent there
`
`are additional allegations in Paragraph 22, Respondent denies them.
`
`23.
`
`Admitted. Respondent further admits that Exhibit 5 (including both Parts 1 and 2)
`
`to Petitioner’s Petition to Cancel is Respondent’s October 5, 2019 Response to Office Action,
`
`along with the evidence submitted in connection with that Response, filed in support of the ’364
`
`Application.
`
`24.
`
`Respondent admits that its October 5, 2019 Response to Office Action included the
`
`following statement: “Applicant further submits herewith media coverage, advertising materials,
`
`and product reviews that explicitly address Applicant’s unique fin design embodied in the applied-
`
`for mark.” The statements made in and evidence submitted in connection with Respondent’s
`
`October 5, 2019 Response to Office Action speak for themselves. To the extent there are additional
`
`allegations in Paragraph 24, Respondent denies them.
`
`25.
`
`Admitted. Respondent further admits that Exhibit 6 to Petitioner’s Petition
`
`to Cancel is the Declaration of Jason Longo submitted in connection with Respondent’s
`
`October 5, 2019 Response to Office Action.
`
`5
`
`
`
`
`26.
`
`Respondent lacks knowledge or information sufficient to admit or deny the
`
`allegations in Paragraph 26 and therefore denies them.
`
`27.
`
`Respondent admits that, as of October 1, 2019, Tyler Gale was a Field Test
`
`Coordinator for Respondent. Respondent lacks knowledge or information regarding the LinkedIn
`
`profile attached as Exhibit 7 to Petitioner’s Petition to Cancel and the corresponding allegations
`
`about that LinkedIn profile in Paragraph 27 and therefore denies those allegations.
`
`28.
`
`Respondent admits that the LinkedIn profile attached as Exhibit 7 to Petitioner’s
`
`Petition to Cancel includes the following sentence (with other text) in the “About” section:
`
`“Advance an organization by delivering meaningful insights that connect target consumers with
`
`the brand and product offerings.” Respondent lacks knowledge or information sufficient to admit
`
`or deny the remaining allegations in Paragraph 28 and therefore denies them.
`
`29.
`
`Respondent denies that Mr. Longo was “not an impartial declarant for purposes of
`
`producing evidence of secondary meaning.” Respondent lacks knowledge or information to admit
`
`or deny whether Mr. Long “worked closely with an employee of Respondent (Mr. Gale)” and
`
`therefore denies that allegation. Whether the USPTO should have “given any weight to the sworn
`
`declaration of Mr. Longo,” and whether Mr. Longo’s statements should be “dispositive of this
`
`issue [of acquired distinctiveness]” are legal conclusions to which no response is required. To the
`
`extent there are additional allegations in Paragraph 28, Respondent denies them.
`
`30.
`
`Admitted. Respondent further admits that Exhibit 8 to Petitioner’s Petition to
`
`Cancel is the Declaration of Jon Gozzo submitted in connection with Respondent’s October 5,
`
`2019 Response to Office Action.
`
`31.
`
`Admitted.
`
`6
`
`
`
`
`32.
`
`Respondent denies that Mr. Gozzo was “not an impartial declarant of evidence for
`
`secondary meaning.” Respondent denies that Ms. Hanson was “not an impartial declarant of
`
`evidence for secondary meaning.” Respondent denies that Mr. Longo was “not an impartial
`
`declarant of evidence for secondary meaning.” Whether the USPTO should have “given any
`
`weight to the sworn declaration of Mr. Gozzo” is a legal conclusion to which no response is
`
`required. To the extent there are additional allegations in Paragraph 32, Respondent denies them.
`
`33.
`
`Respondent lacks knowledge or information sufficient to admit or deny the
`
`allegations in Paragraph 33 and therefore denies them.
`
`34.
`
`35.
`
`Denied.
`
`Respondent admits that it did not submit a consumer survey with its Response to
`
`Office Action. Respondent, however, denies that such a survey was required; indeed, Respondent
`
`secured registration of its Registered Trade Dress without any survey. To the extent there are
`
`additional allegations in Paragraph 35, Respondent denies them.
`
`36.
`
`Denied.
`
`COUNT I - FUNCTIONAL
`
`37.
`
`Respondent repeats and realleges each and every answer set forth in Paragraph 1 to
`
`36 above.
`
`38.
`
`39.
`
`Denied.
`
`Denied.
`
`COUNT II – NO ACQUIRED DISTINCTIVENESS
`
`40.
`
`Respondent repeats and realleges each and every answer set forth in Paragraph 1 to
`
`39 above.
`
`41.
`
`Denied.
`
`7
`
`
`
`
`42.
`
`43.
`
`Denied.
`
`Denied.
`
`AFFIRMATIVE DEFENSE
`
`1.
`
`Petitioner’s claims are barred, in whole or in part, by the doctrine of laches.
`
`Petitioner has unduly delayed in seeking cancellation of the ’772 Registration. Specifically,
`
`Respondent’s ’772 Registration issued on February 25, 2020, and Respondent waited over four
`
`years—until March 11, 2024—to seek to cancel that Registration. Petitioner’s substantial delay in
`
`seeking cancellation of the ’772 Registration has severely prejudiced Respondent at least because,
`
`while Petitioner delayed, Respondent devoted substantial resources into developing its Registered
`
`Trade Dress into a valuable and important intellectual property right and company asset.
`
`
`Dated: April 23, 2024
`
`
`
`
`
`By: / Douglas A. Rettew /
`Douglas A. Rettew
`Patrick J. Rodgers
`Maxime I. Jarquin
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4000
`
`docketing@finnegan.com
`doug.rettew@finnegan.com
`patrick.rodgers@finnegan.com
`maxime.jarquin@finnegan.com
`TTAB-Legal-Assistants@finnegan.com
`
`Attorneys for Respondent
`Cascade Maverik Lacrosse, LLC
`
`8
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing RESPONDENT’S ANSWER AND
`
`AFFIRMATIVE DEFENSES was served on April 23, 2024 via e-mail on counsel for Petitioner
`
`at the following addresses of record:
`
`
`
`
`
`
`
`
`ADAM W. SIKICH
`DUNNER LAW PLLC
`3243 P STREET, N.W.
`WASHINGTON, DC 20007
`
`asikich@dunnerlaw.com
`ldunner@dunnerlaw.com
`docketing@dunnerlaw.com
`
`
`
`
`
`
`
`
` / Judy Valusek /
`Trademark Legal Assistant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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