Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1129296 Filing date: 04/23/2021
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92071732 Party Defendant Patricia Apollonia Kotero AKA Apollonia Kotero Correspondence NEVILLE L. JOHNSON Address JOHNSON & JOHNSON LLP 439 N CANON DRIVE SUITE 200 BEVERLY HILLS, CA 90212 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 310-975-1080
Submission Answer Filer's Name Neville L. Johnson Filer's email [email protected], [email protected] Signature /Neville L. Johnson/ Date 04/23/2021 Attachments 2021-04-23 Answer to Petition for Cancellation.pdf(159234 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Paisley Park Enterprises, Inc., a Cancellation No.: 92071732 Minnesota corporation, and The Estate of Prince Rogers Nelson by and In the Matter of U.S. Reg. No. through Comerica Bank & Trust, 5272757 N.A., in its fiduciary capacity as the personal representative, For the mark: APOLLONIA 6
Petitioner,
v.
Patricia Apollonia Kotero, a/k/a Apollonia Kotero, An individual,
Registrant.
ANSWER TO PETITION TO CANCEL
Patricia Apollonia Kotero (“Registrant”) answers the Petition to Cancel
Registrant’s trademark APOLLONIA 6 (the “Mark”) made by Paisley Park
Enterprises, Inc., a Minnesota corporation, and The Estate of Prince Rogers Nelson by and through Comerica Bank & Trust, N.A., in its fiduciary capacity as the
1 personal representative (collectively, “Petitioners”), as follows:
FACTUAL BACKGROUND AS TO PETITIONERS
1. Registrant, in answer to paragraph 1 of the Petition to Cancel, admits the allegations contained therein.
2. Registrant, in answer to paragraph 2 of the Petition to Cancel, admits that
Petitioners are the owner of all intellectual property rights and all rights in the name and likeness of Prince. However, Registrant is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 2 of the Petition to Cancel, and therefore, denies each of said remaining allegations that Petitioners own every single intellectual property right and name and likeness right derived from the musical legacy of the late Prince
Rogers Nelson (“Prince”).
3. Registrant, in answer to paragraph 3 Petition to Cancel, admits that in the early 1980s, PRN Music Corp. (“PRN Music”), a company owned and operated by
Prince, created the musical group Apollonia 6, which featured Registrant as its lead singer. However, Registrant is without knowledge or information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 3 of the Petition to
Cancel, and therefore, denies each of said remaining allegations that PRN Music was the predecessor-in-interest to Petitioners.
2 4. Registrant, in answer to paragraph 4 of the Petition to Cancel, admits that
Registrant entered into a recording agreement (“Agreement”) with PRN Music
Corporation (“PRN”), a California corporation, on August 10, 1984. However,
Registrant denies that the Agreement continues to govern Registrant’s use and right to the Mark.
5. Registrant, in answer to paragraph 5 of the Petition for Cancellation, denies each and every allegation contained in such paragraph, as the term of the
Agreement and PRN Music’s rights to the Mark have long been expired.
6. Registrant, in answer to paragraph 6 of the Petition to Cancel, admits the
allegations contained therein.
7. Registrant, in answer to paragraph 7 of the Petition to Cancel, admits the
allegations contained therein.
8. Registrant, in answer to paragraph 8 of the Petition to Cancel, admits the
allegations contained therein.
9. Registrant, in answer to paragraph 9 of the Petition to Cancel, admits the
allegations contained therein.
FIRST GROUND – ABANDONMENT
10. Registrant incorporates all of the foregoing as if fully restated herein.
11. Registrant, in answer to paragraph 11 of the Petition to Cancel, denies each
and every allegation contained in such paragraph, as Registrant has sold apparel
3 featuring the Mark and has made public appearances in connection with the Mark since registration.
12. Registrant, in answer to paragraph 12 of the Petition to Cancel, denies each and every allegation contained in such paragraph, as Registrant’s use of the Mark since registration is inconsistent with abandonment, and the Mark therefore cannot
be cancelled on such basis under Section 45 of the Trademark Act.
13. Paragraph 10 of the Petition to Cancel contains no allegations requiring a
response.
SECOND GROUND – NO BONA FIDE INTENT TO USE THE MARK AT THE TIME OF FILING
14. Registrant incorporates all of the foregoing as if fully restated herein.
15. Registrant, in answer to paragraph 15 of the Petition to Cancel, denies each
and every allegation contained in such paragraph, as Registrant had a bona fide
intent to use the Mark in the United States and has used the Mark in connection
with the registered services since filing her registration in 2016. Registrant sold
apparel featuring the Mark and has made public appearances in connection with
the Mark since registration. Registrant’s intent to use the Mark at the time of filing
is therefore evident from the fact that she did use the Mark after filing.
16. Paragraph 16 of the Petition to Cancel contains no allegations requiring a response.
4 THIRD GROUND – REGISTRANT IS NOT THE OWNER OF THE MARK SUCH THAT THE APPLICATION WAS VOID AB INITIO
17. Registrant incorporates all of the foregoing as if fully restated herein.
18. Registrant, in answer to paragraph 18 of the Petition to Cancel, denies each and every allegation contained in such paragraph, as her claim to current ownership of the Mark neither necessarily nor exclusively “stems from her work as a member of and lead singer for the musical group Apollonia 6 in the 1980s.”
19. Registrant, in answer to paragraph 19 of the Petition to Cancel, denies each and every allegation contained in such paragraph, as the Agreement on which
Petitioners rely was terminated long ago by its own provisions, and Petitioners have not demonstrated the Agreement was ever validly assigned to them.
20. Paragraph 20 of the Petition to Cancel contains no allegations requiring a response.
FOURTH GROUND – FALSE SUGGESTION OF AN ASSOCIATION WITH PRINCE AND PETITIONERS
21. Registrant incorporates all of the foregoing as if fully restated herein.
22. Registrant, in answer to paragraph 22 of the Petition to Cancel, admits that an association exists between the Mark and Prince, but denies that such association grants Petitioners the sole right to control the use of the Mark.
23. Registrant, in answer to paragraph 23 of the Petition to Cancel, denies each and every allegation contained in such paragraph.
5 24. Registrant, in answer to paragraph 24 of the Petition to Cancel, denies each and every allegation contained in such paragraph.
25. Registrant, in answer to paragraph 25 of the Petition to Cancel, denies each and every allegation contained in such paragraph.
26. Paragraph 26 of the Petition to Cancel contains no allegations requiring a response.
DAMAGE TO PETITIONERS
27. Registrant, in answer to paragraph 27 of the Petition to Cancel, denies each and every allegation contained in such paragraph.
FIRST DEFENSE – LACK OF STANDING
28. Registrant incorporates all of the foregoing as if fully restated herein.
29. The Agreement cited by Petitioners as the basis for cancelling the Mark is between Registrant and PRN Music.
30. PRN Music was dissolved on May 6, 1999.
31. Upon Registrant’s knowledge and belief, the Agreement was never validly assigned from PRN Music to Petitioners.
32. Accordingly, Petitioners lack standing to enforce the Agreement.
SECOND DEFENSE – ABANDONMENT
33. Registrant incorporates all of the foregoing as if fully restated herein.
6 34. Upon information and belief, to the extent the Mark was ever used by
Petitioners, Petitioners discontinued use of the Mark with an intent not to resume such use.
35. As a result of Petitioners’ failure to use the Mark with an intent not to resume use, their interest in the Mark has been abandoned.
THIRD DEFENSE – ESTOPPEL
36. Registrant incorporates all of the foregoing as if fully restated herein.
37. Beginning in June of 2014, Prince Rogers Nelson repeatedly consented to
Registrant’s use and registration of the Mark and actively represented that he
would not assert a claim against Registrant for such activity.
38. Registrant reasonably relied upon the aforementioned representations in
registering the Mark and investing in the entertainment services covered thereby.
39. The four-year delay between the aforementioned representations and the
Petition to Cancel is not excusable and has caused defendant undue prejudice.
40. As a result of the foregoing, the Petition to Cancel should be barred by the
doctrine of estoppel by acquiescence or express consent.
FOURTH DEFENSE – ABSENCE OF LIKELIHOOD OF CONFUSION
41. Registrant incorporates all of the foregoing as if fully restated herein.
7 42. Registrant’s offerings of new live performances and recordings thereof under Class 41 do not present a likelihood of confusion with Petitioners’ offerings of historical audio and video recordings under Class 09.
43. The Mark is most closely associated with Registrant, such that no connection, association, or sponsorship with Petitioners is reasonably presumed when the Mark is used with Registrant’s offerings.
44. Because Registrant’s use of the Mark presents no likelihood of confusion, the Mark cannot be cancelled on such basis.
WHEREFORE, Registrant objects to Petitioners’ Petition to Cancel Registrants’ trademark APOLLONIA 6, and respectfully requests that the Petition to Cancel be dismissed.
Dated: April 23, 2021 /s/ Neville L. Johnson Neville L. Johnson Johnson & Johnson LLP 439 N Canon Drive, Suite 200 Beverly Hills, CA 90210 (310 975-1080 [email protected]
ATTORNEY FOR REGISTRANT
8 CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing ANSWER
TO PETITION TO CANCEL has been served on counsel for Petitioner Cynthia A
Moyer, Fredrikson & Byron, P.A., 200 South Sixth Street, Suite 4000,
Minneapolis, MN 55402 by forwarding said copy on April 23, 2021 via email addresses of record: [email protected], [email protected], [email protected], and [email protected].
Dated: April 23, 2021 /s/ Viktoriya Cassis Viktoriya Cassis Paralegal to Attorney for Registrant Neville L. Johnson Johnson & Johnson LLP 439 N Canon Drive, Suite 200 Beverly Hills, CA 90210 (310) 975-1080 [email protected]
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