Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1103388 Filing date: 12/21/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91265866 Party Defendant Gretchen W Frieling MD LLC Correspondence ADRIANO PACIFICI Address INTELLECTUAL PROPERTY CONSULTING, LLC 400 POYDRAS STREET SUITE 1400 NEW ORLEANS, LA 70130 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 504-323-6600
Submission Answer and Counterclaim Filer's Name Adriano Pacifici Filer's email [email protected] Signature /APacifici/ Date 12/21/2020 Attachments Answer to Notice of Opposition GFACEMD and Counterclaim for Cancellat ion.pdf(298554 bytes ) Registration Subject to the filing
Registration No. 3500015 Registration date 09/09/2008 Registrant Langsdon, Phillip, R. 7499 POPLAR PIKE GERMANTOWN, TN 38138 UNITED STATES Email: [email protected] Goods/Services Subject to the filing
Class 003. First Use: 2007/12/21 First Use In Commerce: 2008/03/03 All goods and services in the class are requested, namely: After sun creams; After-shave creams; Age spot reducing creams; Anti-aging cream; Anti-aging creams; Anti-freckle creams; Anti-wrinkle cream; Anti-wrinkle creams; Aromatherapy body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicatedlip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Beauty creams; Beauty creams for body care; Body and beauty care cosmetics; Bodycream; Body cream soap; Body creams; Body deodorants; Body lotion; Body lotions; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; Body powder; Body scrub; Body spray used as a personal deodorant and as fragrance; Body sprays; Body washes; Cleansing creams; Cold cream; Cold creams; Concealers for face, skin, body; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for body care; Cream soaps; Creamyface powder; Deodorants for body care; Exfoliant creams; Eye cream; Face and body beauty creams; Face and body creams; Face and body lotions; Face and body milk; Face creams; Face creams for cosmeticuse; Face milk and lotions; Face powder; Face powder paste; Facial cream; Facial creams; Fair complexion cream; Hair care creams; Hair creams; Hand cream; Hand- creams; Lip cream; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loose face powder; Lotions for face and body care; Lotions for face,skin, body, hair; Make-up for the face and body; Make-up removing milk, gel, lotions and creams; Moisturizing creams; Night cream; Non- medicated body soaks; Non-medicated scalp treatment cream; Non-medicated skin care prepara- tions, namely,creams, lotions, gels, toners, cleanersand peels; Non-medicated skin creams; Per- fumed creams; Pre-shave creams; Pressed face powder; Retinol cream for cosmetic purposes; Scen- ted body lotions and creams; Scented body spray; Shaving cream; Shaving creams; Shower creams; Skin and body topical lotions, creams and oils for cosmetic use; Skin bronzing creams; Skin care pre- paration, namely, body polish; Skin care preparations, namely, body balm; Skin cleansing cream; Skin cream; Skin creams; Skin creams in liquid and insolid form; Skin creams in liquid and solid; Skin creams in liquid and solid form; Skin lightening creams; Skin whitening creams; Soaps for body care; Toning lotion, for the face, body and hands; Wrinkle resistant cream Grounds for Cancellation
Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
) PHILLIP R. LANGSDON, MD, ) ) Opposition No.: 91265866 Opposer, ) ) v. ) Serial No.: 88225451 ) Mark: GFACEMD GRETCHEN W FRIELING MD, LLC, ) ) Applicant. ) ______)
APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION AND AFFIRMATIVE DEFENSES AND APPLICANT’S COUNTERCLAIM TO CANCEL OPPOSER’S U.S. REGISTRATION NO. 3,500,015
Applicant Gretchen W Frieling MD, LLC “pplicant , owner of the Federal
Trademark Application No. 88225451 for the mark GFACEMD “pplicant’s Mark hereby answers the Notice of Opposition the Opposition filed by Phillip R. Langsdon,
MD Opposer as follows:
1. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 1 of the Opposition, and therefore denies all allegations therein
2. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 2 of the Opposition, and therefore denies all allegations therein.
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3. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 3 of the Opposition, and therefore denies all allegations therein.
4. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 4 of the Opposition, and therefore denies all allegations therein.
5. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 5 of the Opposition, and therefore denies all allegations therein.
6. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 6 of the Opposition, and therefore denies all allegations therein.
7. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 7 of the Opposition, and therefore denies all allegations therein.
8. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 8 of the Opposition, and therefore denies all allegations therein.
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9. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 9 of the Opposition, and therefore denies all allegations therein.
10. Applicant admits that it provides services under the GFACEMD mark and denies the remaining allegations of ¶ 10 of the Opposition.
11. “pplicant admits that the initial application for “pplicant’s Mark included
International Class but denies that this class of goods is still present in “pplicant’s
Mark.
12. Applicant denies the allegations of ¶ 12 of the Opposition.
13. Applicant does not believe an answer to ¶ is necessary as “pplicant’s application speaks for itself. However, out of an abundance of caution, Applicant admits that it seeks to register the GFACEMD mark.
14. Applicant does not believe an answer to ¶ 14 is necessary as the information is a matter of public record. However, out of an abundance of caution, Applicant admits that it first began using the GFACEMD mark in October 2017 and denies the remaining allegations there.
15. Applicant does not believe an answer to ¶ is necessary as “pplicant’s
Mark speaks for itself. However, out of an abundance of caution, Applicant admits that its application was filed on October 23, 2019 and denies the remaining allegations in ¶ 15.
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16. Applicant denies the allegations of ¶ 16 of the Opposition as “pplicant’s
Mark was approved for publication.
17. Applicant does not believe an answer to ¶ 17 is necessary as the record history of “pplicant’s Mark speaks for itself. However, out of an abundance of caution,
Applicant admits that it amended its application.
18. Applicant does not believe an answer to ¶ 18 is necessary. However, out of an abundance of caution, Applicant admits that its application was published on July 14,
2020.
19. Applicant does not believe an answer to ¶ 19 is necessary. However, out of an abundance of caution, Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 19 of the Opposition, and therefore denies all allegations therein.
20. Applicant does not believe an answer to ¶ 20 is necessary. However, out of an abundance of caution, Applicant denies the allegations in ¶ 20 of the Opposition.
21. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 21 of the Opposition, and therefore denies all allegations therein.
22. Applicant denies the allegations in ¶ 22 of the Opposition.
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23. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 23 of the Opposition, and therefore denies all allegations therein.
24. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 24 of the Opposition, and therefore denies all allegations therein.
25. Applicant denies the allegations of ¶ 25 of the Opposition.
26. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 26 of the Opposition, and therefore denies all allegations therein.
27. Applicant denies the allegations of ¶ 27 of the Opposition.
28. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 28 of the Opposition, and therefore denies all allegations therein.
29. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 29 of the Opposition, and therefore denies all allegations therein.
AFFIRMATIVE DEFENSES
Applicant asserts that the following affirmative defenses bar Opposer’s requested relief:
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FIRST AFFIRMATIVE DEFENSE
30. Opposer has failed to state a claim upon which relief can be granted.
SECOND AFFIRMATIVE DEFENSE Lack of Confusion and No Priority
31. The parties’ respective marks have entirely different sounds, meanings, pronunciations, and commercial impressions.
32. Specifically, “pplicant’s Mark is pronounced GFace-MD whereas the mark cited by Opposer are pronounced Face-MD .
33. The parties provide entirely different goods and services under their respective marks.
34. The parties’ market to entirely different consumers.
35. The parties’ respective channels of trade are entirely different.
36. “s the parties’ marks are entirely different, Opposer cannot claim priority as grounds for refusal to register “pplicant’s Mark.
37. “pplicant’s GFACEMD mark is not likely to cause confusion, mistake, or deception with the FACEMD mark cited by Opposer.
THIRD AFFIRMATIVE DEFENSE
38. Opposer’s claims are barred by the doctrines and equitable defenses of laches, waiver, acquiescence, and estoppel.
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FOURTH AFFIRMATIVE DEFENSE
39. Opposer’s claims are barred by the doctrine of unclean hands because the registration relied on by Oppose is invalid and subject to cancellation based on fraud.
FIFTH AFFIRMATIVE DEFENSE
40. The above defenses and affirmative defenses are based on the facts and information currently known to Applicant. Applicant reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Lanham Act, and any other defenses or counterclaims at law or in equity that may now exist or in the future be available based on discovery and further factual investigation in this case, and hereby reserves its right to amend this Answer to assert such defense(s).
WHEREFORE, Applicant prays that the Notice of Opposition be dismissed with prejudice because Opposer is not entitled to any relief requested in the Notice of
Opposition.
COUNTERCLAIMS FOR CANCELLATION
Applicant-Counterclaimant Gretchen W Frieling MD, LLC, a Massachusetts limited liability company, believes that it will be damaged by the continued registration of the trademark FACEMD in U.S. Registration No. 3,500,015, and thus for its counterclaims against Opposer-Counterclaim Defendant, Phillip R. Langsdon, petitions to cancel the same.
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As grounds for its counterclaim for cancellation, Applicant-Counterclaimant alleges as follows:
I. BACKGROUND
1. Applicant-Counterclaimant Gretchen W Frieling MD LLC Applicant-
Counterclaimant ) is a Massachusetts limited liability company with a principal business address of 33 Highland Avenue Needham, MA 02494.
2. Since at least as early as October 2017, Applicant-Counterclaimant has provided a wide-variety of dermatology and related cosmetic services under the mark
GFACEMD.
3. Applicant-Counterclaimant has amassed great fame and consumer goodwill under the GFACEMD trademark for its dermatology and related cosmetic services.
4. On October 23, 2019, Applicant-Counterclaimant applied for the mark
GFACEMD (Serial No. 88665461) (the GFACEMD Mark at the United States Patent and Trademark Office USPTO with a first use in commerce date of October 1, 2017 in international class 044 for:
Health spa services, namely, laser treatments for acne, rejuvenation, scars, tattoo removal and for facials and massage; Medical clinic providing weight loss solutions, services and programs, nutrition counseling, hormone therapy, including, bioidentical hormone replacement, anti-aging therapy, and natural hormone therapy, medical aesthetic procedures, including, laser hair removal, laser peels, botulinum toxin treatments, microdermabrasion, liposuction, vein treatments, vein therapy, cellulite treatments, body contouring treatments, injectable filler treatments, facials, and skin care; Providing medical aesthetic
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procedures, namely, treating the skin with dermal fillers and botulinum toxin; Skin treatments, namely, the injection of dermal filling agents and neuromuscular blocking agents to reduce the appearance of facial lines and wrinkles; Laser skin tightening services; Laser skin rejuvenation services; Providing laser and intense pulse light skin enhancement procedures; Facial treatment services, namely, cosmetic peels; Cosmetic surgery services; Cosmetic face care services; Cosmetic body care services; Performing non- invasive cosmetic medical procedures; Medical services in the field of dermatology, dermatopathology; Medical consultations; Providing medical information in the field of dermatology, dermatopathology; Providing medical advice in the field of dermatology, dermatopathology; Providing a website featuring medical information; Provide a website featuring information about holistic cosmetic and plastic surgery practice.
5. Applicant-Counterclaimant seeks cancellation of Registration No. 3,500,015 based on fraud.
II. FRAUD
6. Upon information and belief, Opposer-Defendant Phillip R. Langsdon