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Estta1043905 03/20/2020 in the United States

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Estta1043905 03/20/2020 in the United States Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1043905 Filing date: 03/20/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91232067 Party Defendant United Refining Company of Pennsylvania Correspondence BASSAM N IBRAHIM Address BUCHANAN INGERSOLL & ROONEY PC 1737 KING STREET, SUITE 500 ALEXANDRIA, VA 22314 UNITED STATES [email protected] 703-836-6620 Submission Testimony For Defendant Filer's Name Laura K. Pitts Filer's email [email protected], [email protected], [email protected], [email protected], [email protected] Signature /Laura K. Pitts/ Date 03/20/2020 Attachments FINAL - March 20 - Kwik Trip v United - Updated Bazil Declaration.pdf(222716 bytes ) Bazil Exhibit 1 - Kwik Trip Loyalty _ Home.pdf(274257 bytes ) Exhibit 2 - Kwik Trip Rewards Program.pdf(63486 bytes ) Exhibit 3 - Kwik Trip designations.pdf(39127 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Kwik Trip, Inc., Opposer, Opposition No. 91232067 v. United Refining Company of Pennsylvania, Applicant. TESTIMONY AFFIDAVIT OF KATHY BAZIL I, Kathy Bazil, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of this document, hereby state as follows: 1. I am a paralegal with the law firm of Buchanan Ingersoll & Rooney, P.C. The statements made herein are based upon my personal knowledge and my review of the documents, websites, and other materials attached as exhibits hereto and/or incorporated herein. 2. On March 11, 2020, I conducted a TESS search of the USPTO database at tmsearch.uspto.gov. I conducted a search for “KWIK TRIP” as a trademark and confirmed that there are no live applications or registrations for marks consisting of or containing “KWIK TRIP.” I also conducted a search of all filings in the name of Kwik Trip, Inc. and confirmed that Kwik Trip, Inc. has not filed a trademark application for the mark, “KWIK TRIP.” 3. On March 11, 2020, I visited the domain, www.kwikrewardsclub.com, and confirmed that this domain automatically redirects to the domain, www.kwikrewards.com. This means that when a user types the domain name, www.kwikrewardsclub.com, into an internet browser, the user is automatically taken to www.kwikrewards.com and the webpage that appears thereon. Attached as Exhibit 1 is a printout of the webpage that appears when I attempt to visit the domain, www.kwikrewardsclub.com. 4. On March 19, 2020, I visited https://www.kwiktrip.com/privacy-terms, which provides links to Privacy Policy and Terms of Use for various programs offered by Kwik Trip. This includes a link to the “Kwik Rewards Program Terms and Conditions,” which is accessible at the following webpage: https://www.kwiktrip.com/wordpress/wp- content/uploads/2020/02/KWIK-REWARDS-Program-TC-12.19.pdf. Attached as Exhibit 2 are the “KWIK REWARDS Program Terms and Conditions” that are accessible at the foregoing link. 5. I reviewed the video file, which was attached as Exhibit A to Mr. Gonczy’s testimony declaration. See 40 TTABVUE 4. Based upon my review of the video, it is directed to the KWIK CARD and focuses on fundraising. 6. The video opens by asking a room full of people if they have “any fundraising ideas.” A talking “Kwik Card” then appears on screen and says “I’m the Kwik Trip Kwik Card. I will help you raise money for your organization.” 7. The talking “Kwik Card” then says you can “earn quick rewards of 3 cents a gallon and 4% on everything you buy.” 2 8. It ends by showing an image of a check written to “Your Organization” and saying that “[f]undraising has never been easier.” There is no direct reference to KWIK REWARDS as the name of a program. 9. Attached as Exhibit 3 are Opposer Kwik Trip, Inc.’s (“Kwik Trip”) 30(b)(6) designations, which were served by Kwik Trip’s counsel on May 22, 2018. 10. The remainder of the exhibits referenced herein are being submitted to the TTAB contemporaneously through the Applicant United Refining Company of Pennsylvania’s (“United” or “Applicant”) Notice of Reliance (“NOR”). Throughout this declaration, I will refer to the exhibits by their exhibit numbers in the Applicant’s NOR (e.g., “NOR Exhibit X”). The NOR Exhibits identified herein are hereby incorporated by reference and will be served on Opposer contemporaneously with this declaration. However, in order to avoid duplicative evidence and to ease judicial burden, the exhibits will only be uploaded to TTABVUE once (through Applicant’s NOR). I visited the websites referenced herein between March 11, 2020 and March 20, 2020 and confirmed that they are active and the NOR exhibits incorporated herein are true and correct copies of same. 11. NOR Exhibit 7 is a true and correct copy of the trademark application for U.S. App. No. 86896053, which was obtained from the USPTO’s electronic database records. This application was filed in the name of Kwik Trip, Inc. on February 3, 2016 for the mark, KWIK REWARDS, on the basis of use in commerce. The specimen submitted in connection with U.S. App. No. 86896053 refers to the “Kwik Rewards Loyalty Program” and identifies three levels of rewards. 3 12. NOR Exhibits 8-10 are true and correct copies of three office actions issued against U.S. App. No. 86896053 and Kwik Trip’s responses, which were obtained from the file history for U.S. App. No. 86896053 from the USPTO’s electronic database records. 13. NOR Exhibit 11 is a true and correct copy of the trademark application for U.S. App. No. No. 87352198, which was obtained from the USPTO’s electronic database records. This application was filed for the stylized KWIK REWARDS mark in the name of Kwik Trip, Inc. on February 28, 2017 as an intent-to-use trademark. 14. NOR Exhibit 12 are true and correct copies of an office action issued against U.S. App. No. No. 87352198 and Kwik Trip’s response, which were obtained from the file history for U.S. App. No. No. 87352198 from the USPTO’s electronic database records. 15. NOR Exhibits 43-44 are true and correct copies of website printouts and screenshots taken from the website, www.doublekwik.com. According to its website, DOUBLE KWIK is the name of a chain of approximately 40 gas/convenience stores located in Kentucky. I visited the following domain (https://www.doublekwik.com/store-locator/) and confirmed that there are several DOUBLE KWIK locations located in Kentucky. 16. The DOUBLE KWIK chain of gas/convenience stores advertises a rewards program under the name DOUBLE KWIK REWARDS, which is available to customers of the DOUBLE KWIK chain and allows customers to save money and earn rewards when they shop in DOUBLE KWIK stores. The DOUBLE KWIK REWARDS program is advertised on the www.doublekwik.com home page, which links to the webpage https://doublekwik.allpointscommunity.com/#/. NOR Exhibit 45 is a screenshot of https://doublekwik.allpointscommunity.com/#/. 4 17. NOR Exhibit 46 is a website printout from the Apple iTunes store, showing use of the DOUBLE KWIK REWARDS mark in connection with a mobile application that is associated with the customer loyalty program. 18. NOR Exhibits 47-48 are website printouts obtained from www.kwikstop.org. KWIK STOP is the name of a chain of more than 20 gas station and convenience stores located in Nebraska and Colorado. As shown in NOR Exhibit 48, the KWIK STOP chain of gas store and convenience stores offers a rewards program for customers of the KWIK STOP under the name KWIK STOP REWARDS. According to its website, KWIK STOP customers can join the program by picking up a rewards card at their nearest KWIK STOP store, which will allow them to enjoy roll-back pricing, exclusive loyalty promotions and more. 19. NOR Exhibit 49 are website printouts and screenshots from www.kwikshop.com. According to its website, www.kwikshop.com, KWIK SHOP is the name of a chain of 127 convenience store chains in the United States. 20. NOR Exhibit 50 is a website printout from www.quikstop.com. On March 19, 2020, I reviewed the history of the QUIK STOP chain at the webpage, https://www.quikstop.com/about/, which could not be printed in readable format. Based upon my review of the website and the company’s history, QUIK STOP is the name of a chain of gas station and convenience store franchises in California that was originally founded in Fremont, California in 1965. According to their company history, both KWIK SHOP and QUIK STOP were purchased by EG Group in 2018. 21. NOR Exhibit 51 are website printouts from the webpage for a chain of gas station and convenience stores which operate under the name KWIK STOP. The first printouts were obtained from www.kwikstop1.com on December 21, 2017 and originally produced under the 5 Bates number starting with URC000772. At that time, the website advertised a chain of 10 KWIK STOP locations throughout Dubuque, Iowa. The updated printouts were obtained on March 18, 2020 from the website https://gokwikstop.com, which is an updated website for the same KWIK STOP chain. I visited https://gokwikstop.com/store-locator/ and confirmed there are around 10 KWIK STOP locations still operating in Dubuque, Iowa. 22. NOR Exhibits 52-53 are website printouts from www.kwikchek.com.
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