Estta627792 09/17/2014 in the United States Patent And

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA627792 Filing date: 09/17/2014 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91214384 Party Defendant Steven A. Johnson Correspondence WENDY PETERSON Address NOT JUST PATENTS LLC PO BOX 18716 MINNEAPOLIS, MN 55418 UNITED STATES [email protected] Submission Motion to Amend/Amended Answer or Counterclaim Filer's Name Wendy Peterson Filer's e-mail [email protected] Signature /Wendy Peterson/ Date 09/17/2014 Attachments Motion to Amend Answer and Counterclaim and Amended Answer and Counter- claim.pdf(97363 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Opposition Proceeding 91214384

In the matter of Trademark Application No. 85881514

For the mark: GROCERANT GURU

Publication Date: Sep. 10, 2013

Newspaper Agency Company, LLC, Opposer

Steven A. Johnson, Applicant

MOTION TO AMEND ANSWER AND COUNTERCLAIM

In the Board order of September 17, 2014 in this proceeding, Applicant was allowed to submit an amended counterclaim sufficiently repleading its genericness claim if justified and appropriate.

Applicant has done such in new paragraphs 23-25 applying American Montessori Soc'y, Inc. v.

Association Mostessori Internationale, 155 USPQ 591 (TTAB 1967) where if the teachings of a

‘guru’ are generic or descriptive as Opposer’s common law use is alleged by Applicant, then the tools of the teaching (Opposer’s services as pleaded) are generic or descriptive also.

This amendment is justified and appropriate as it protects the consumer as stated in the new paragraph 25: Consumers identify the term GROCERY GURU as a generic or descriptive category

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 1

of shopping consultants that know how to use the tools of the trade to save money. Opposer cannot monopolize such teachings by asserting trademark rights in the generic or descriptive term used to identify them.

In addition to the new paragraphs 23-25, affirmative defense #2 is stricken from the amended answer (as ordered) and also for purposes of clarity, also stricken is the repetitive paragraph 4 in the counterclaim.

Submitted By: /Wendy Peterson/ Date: September 17, 2014

Wendy Peterson, Attorney for Applicant, Steven A. Johnson Not Just Patents LLC PO Box 18716 Minneapolis, MN 55418 [email protected] 651-500-7590

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 2

CERTIFICATE OF SERVICE

I hereby certify that on September 17, 2014, the foregoing was served upon Newspaper Agency

Company, LLC’s attorney by first mail:

Lester K. Essig Ray Quinney & Nebeker P.C. 36 South State Street, Suite 1400 Salt Lake City, UT 84111

By: /Wendy Peterson/ Date: September 17, 2014

Wendy Peterson, Attorney for Applicant, Steven A. Johnson

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 3

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Opposition Proceeding 91214384

In the matter of Trademark Application No. 85881514

For the mark: GROCERANT GURU

Publication Date: Sep. 10, 2013

Newspaper Agency Company, LLC, Opposer

Steven A. Johnson, Applicant

AMENDED ANSWER TO AMENDED NOTICE OF OPPOSITION AND COUNTERCLAIM

Applicant denies all salient claims and generally alleges that Opposer’s ‘mark’ GROCERY

GURU is a generic term incapable of functioning as a service mark or indicating source or a

merely descriptive mark, is incapable of establishing priority of use and that Opposer was not the

first to use the mark and has not exclusively used the mark in commerce. Further Applicant

denies that any priority claim has been properly made by Opposer based on common law rights

because Opposer did not claim that the mark was inherently distinctive and cannot show that

GROCERY GURU acquired distinctiveness before Applicant started using the mark. In the

counterclaim Applicant seeks to cancel Opposer’s mark for nonexclusive use, nonuse, and

genericism or being merely descriptive.

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 1

Applicant believes that the Counterclaim is timely as it is served with an Answer to an amended

Notice of Opposition and as it is served within 21 days of when the amended Notice was

accepted by the Board and is responsive to the amended Notice.

1. Denied. Applicant believes that Opposer has never provided all the services listed in its

application and there was nonuse at the time of application and that Opposer has abandoned

other services that were listed in ¶ 1 of the Notice.

2. Admitted that Applicant provides business to business advisory services, consultancy and

information for grocerant services. Denied that Applicant provides the same services as Opposer.

3. Denied.

4. Denied. Applicant’s use of the mark GROCERANT GURU has been in interstate commerce

used throughout the US. Denied that Opposer has any prior rights.

5. Denied. Applicant believes that Opposer has never provided all the services listed and there was

nonuse at the time of application and has abandoned others listed in ¶ 1. Nonuse makes the

applicant void and does not serve for priority purposes. Opposer’s mark is generic making it

unenforceable under trademark law.

6. Denied. A state registration is incompetent to establish that the mark shown therein has ever been

used, or that the mark is entitled to federal registration. TBMP 704.03(b)(1)(A). This paragraph

should be struck from the pleading.

7. Admitted that Applicant has not yet registered GROCERANT GURU as a USPTO registered

mark.

8. Denied. Applicant is the senior and exclusive user of Grocerant Guru since 1999.

9. Denied.

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 2

10. Denied.

11. Denied.

12. Denied.

13. Denied.

14. Denied.

15. Denied. Opposer’s ‘mark’ is a generic term incapable of functioning as a service mark or

indicating source. Denied that Opposer’s mark is famous.

16. Denied.

17. Denied.

18. Denied.

19. Denied.

20. Denied.

AFFIRMATIVE DEFENSES AND AMPLIFICATIONS

1. NONEXCLUSIVE USE. Opposer’s registration creates the false impression that

Registrant is the exclusive owner of the subject mark, which it is not. Opposer’s

likelihood of confusion claim is based on its rights to enforce the mark which do not

exist. Even if Opposer could prove that Opposer’s mark and Applicant’s mark were

likely to be confused, Opposer as a nonexclusive owner does not have rights to

enforce its registration or common law use. No one can have the exclusive right to the

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 3

use of these words because they are common, ordinary, descriptive words and do not

apply to any particular person or organization.

2. NO WEIGHT IN LIKELIHOOD OF CONFUSION.

GROCERY GURU is a generic phrase that is entitled to no weight in a likelihood of

confusion analysis. A generic name for a product or service cannot function as a

trademark to indicate source. J. Thomas McCarthy, 3 McCarthy on Trademarks and

Unfair Competition § 12:1 (4th ed. 2009).

a. A mark is a generic name if it refers to the class, genus or category of goods and/or

services on or in connection with which it is used. See In re Dial-A-Mattress

Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H.

Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987,

228 USPQ 528 (Fed. Cir. 1986). The test for determining whether a mark is generic

is its primary significance to the relevant public. See Section 14(3) of the Act.

Evidence of the relevant public's understanding of a term may be obtained from any

competent source, including testimony, surveys, dictionaries, trade journals,

newspapers, and other publications. See In re Northland Aluminum Products, Inc.,

777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).

b. For the mark to be generic it must be established that the phrase as a whole

has been used in a generic manner. In re American Fertility Society, 188 F.3d

1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 4

c. The public views the term GROCERY GURU as meaning ‘how to get the

most for your money at the grocery store’ or ‘saving money using coupons’.

Examples include:

i. HealthCheck360º Article “Be a Grocery Guru!” on August 13th,

2010.

ii. WALMART has been giving away a free mobile app called

GROCERY GURU since as early as October 1, 2011 that helps you

save money while grocery shopping. (See Exhibit A.)

iii. The Arizona GROCERY GURU has been advertising similar services

to Opposer since as early as June 20, 2008 that helps people save

money while grocery shopping.

iv. ABC News ran a national story on Jan 18, 2012 which pit its

GROCERY GURU in a coupon contest to save money against their

anchor. (“Coupon Contest: ABC Anchor vs. Grocery Guru”).

v. The San Francisco Business Times wrote their article “Internet grocery

guru's job is done” on Jul 27, 2003.

d. Even those working with Opposer and specifically referring to Opposer,

KUTV TV, uses the term in a generic sense as a noun to indicate their local

expert. “See the coupon deals that Ken Roesbury, our Grocery Guru, has for

us this week.” (http://www.kutv.com/recipes/features/grocery-guru/)

e. The phrase GROCERY GURU has been used by many parties to refer to a

person who knows how to save money grocery shopping or a method of

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 5

saving money grocery shopping. To allow trademark protection for a generic

term would unduly interfere with competition by preventing competitors from

properly identifying the nature and type of their goods and services.

3. Applicant is at least entitled to registration with a services restriction such as:

Business to business advisory services, consultancy and information.

4. Applicant is at least entitled to registration with a services restriction such as Business

to business advisory services, consultancy and information regarding grocerant

services to supermarkets, mass drug merchants, C-Stores (convenience stores) and

fast food or fast casual restaurants.

COUNTERCLAIM TO CANCEL RN 4353235

1. Applicant has standing as Respondent in this proceeding to bring this counterclaim and

has found facts to make reasonable claims of genericism or descriptiveness and nonuse

for Opposer’s registration in IC 41. Applicant believes that discovery will lead to facts

which will support claims of genericism or descriptiveness and nonuse for IC 35 and

intends to make an additional counterclaim after sufficient gathering of facts to support

the claims.

2. Opposer abandoned the mark GROCERY GURU at least between 2000 and 2004 in

interstate commerce as evidenced by Media One web site archives which is prima facie

abandonment under 15 USC §1127. Opposer’s priority date before 2004 is invalid.

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 6

3. NONUSE. GROCERY GURU was not in use in commerce for all of the services listed in

IC 41 at the time the application was made. One specific example is of a service not used

in commerce at the time of application is ‘Educational services, namely, providing

classes, seminars, workshops, demonstrations, and shopping field trips in the fields of

cruise information.’

4. NONUSE. GROCERY GURU was not in use in commerce for all of the services listed in

IC 41 at the time the application was made. One specific example is of a service not used

in commerce at the time of application is ‘Educational services, namely, providing

classes, seminars, workshops, demonstrations, and shopping field trips in the fields of

store directories.’

5. ABANDONMENT. Opposer has not used the mark GROCERY GURU for business to

business services outside of advertising in the three years preceding this counterclaim and

has prima facie abandoned the mark.

6. GENERIC MARK. Widespread use of the mark GROCERY GURU in the marketplace

makes the mark incapable of distinguishing source by Opposer.

7. Generic terms are, by definition, incapable of indicating a particular source of the goods

or services. “The critical issue in genericness cases is whether members of the relevant

public primarily use or understand the term sought to be protected to refer to the genus of

goods or services in question.” In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92

USPQ2d 1682, 1684 (Fed. Cir. 2009), citing H. Marvin Ginn Corp. v. International

Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).

Determining whether a term is generic involves a two-step inquiry: First, what is the

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 7

genus of goods or services at issue? Second, is the term sought to be registered

understood by the relevant public primarily to refer to that genus of goods or services?

“Evidence of the public's understanding of the term may be obtained from any competent

source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade

journals, newspapers, and other publications.” To be generic, members of the relevant

public must primarily use or understand applicant's term as referring to the genus of its

goods or services.

8. A competent source of how Opposer uses the mark in commerce is found in the specimen

of use submitted with the application. See Exhibit A. In re Reed Elsevier Properties Inc.,

77 USPQ2d 1649, 1655 (TTAB 2005)(the Board may look to the record to interpret the

nature of an applicant's goods or services), aff'd, 482 F.3d 1376, 82 USPQ2d 1378, 1380

(Fed. Cir. 2007).

9. Opposer’s specimen of use (from http://www.gurusdeals.com/) defines The Grocery

Guru as “The Grocery Guru helps you save 70% on your grocery bill every week and

allows you to feed a family of four for less than $40 a week! He puts together a shopping

list and menu each week that takes advantage of the coupons found in The Salt Lake

Tribune and Deseret News. By combining these local coupons with the manufacturers'

discounts, you get maximum savings.”

10. Note that Opposer uses the same specimen of use for both IC classifications showing no

distinction between the uses of the mark as it relates to the actual description of use.

11. Note that Opposer’s actual use in commerce is selling advertising to businesses via the

two Media One newspapers and other Media One businesses and selling newspaper

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 8

subscriptions to shoppers to support the advertisers’ businesses. Both of these services

are primarily marketing services for the Media One that may have other incidental

benefits.

12. The reality is that Opposer is claiming the same services for both classifications.

Moreover, it is settled that we must focus on the “reality” of applicant's use of the term

when determining the genus of goods or services. In re Reed Elsevier Properties Inc., 77

USPQ2d 1649, 1654 (TTAB 2005), aff'd, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir.

2007) (“the analytical focus on the description of [goods and] services is based on the

premise that the description reflects actual conditions of use of a mark).

13. The term GROCERY GURU is in widespread use by third parties for the same services

of ‘how to get the most for your money at the grocery store’ or ‘savings money using

coupons’ that Opposer provides and for Opposer’s educational services. Opposer was not

a substantially exclusive user of GROCERY GURU before Applicant started using the

mark GROCERANT GURU.

14. Google Play (https://play.google.com/store/apps/details?id=com.lunchbox.groceryguru)

gives an app away for free for Android devices called Grocery Guru. “Grocery Guru is

your ultimate shopping tool. This application allows you to create and save multiple

shopping lists and check the items off in store with one tap. Assemble your list from a

variety of preloaded items or create your own custom items. Set up a unique Guru Name

to log in on your Android device or computer and seamlessly sync lists. Then use the

store finder to find a place to get the job done, or send your list to friends via email, text

or the share feature for a little help.”

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 9

15. WALMART (http://see.walmart.com/GroceryGuru/Home) has been giving away the

same free mobile app called Grocery Guru since as early as November 4, 2011 according

to web archives

(http://web.archive.org/web/20111104202855/http://see.walmart.com/GroceryGuru/Hom

e) which is nearly a year before Opposer’s filing date of Oct. 02, 2012.

16. Walmart has dedicated a Grocery Guru blog (http://see.walmart.com/GroceryGuru/Blog).

17. Walmart has a dedicated Grocery Guru Shopping List

(http://see.walmart.com/GroceryGuru/Lists/Login) that can be shared.

18. Money Sense, March 2012, seven months before Opposer’s filing date, identifies three

Grocery Gurus (http://www.indianapoliswoman.com/2012/03/grocery-shopping/) in an

article that uses three grocery gurus to educates the public online on how to save money

shopping for groceries.

a. Grocery Guru 1: John Elliot, Manager of public affairs and media

spokesperson for the central division of The Kroger Co.;

b. Grocery Guru 2: Phil Lempert, A food industry analyst, trend-watcher and

editor of supermarketguru.com; and

c. Grocery Guru 3: Teri Gault, Founder and CEO of thegrocerygame.com, which

teaches people how to save money shopping.

19. Eight years before Opposer applied for their mark, USA Today uses the term grocery

guru as a generic classification and interviews grocery guru Phil Lempert

(http://usatoday30.usatoday.com/life/lifestyle/2004-05-02-shopping-guru_x.htm?csp=34)

“Taking a few inches off your waist can also take a good chunk out of your pocketbook

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 10

— especially if you go with the wildly popular Atkins or South Beach diet. "Be prepared

to dip into your budget," grocery guru Phil Lempert warns.”

20. The Arizona GROCERY GURU has been advertising similar services to Opposer since

as early as June 20, 2008

(http://web.archive.org/web/20080620005218/http://www.azgroceryguru.com/) and

having workshops and published the book The Grocery Guru's Guide to Couponing in

Arizona July 29, 2011, over a year before Opposer’s filing

(http://www.amazon.com/Grocery-Gurus-Guide-Couponing-Arizona-

ebook/dp/B005F9VUQE).

21. In the event that Opposer’s mark is not found to be generic, the mark is merely

descriptive of the services and registration should still be cancelled. The term GROCERY

GURU should not be subject to exclusive appropriation, but rather should remain free for

others in the industry to use in connection with their similar services and goods. See In re

Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).

22. GROCERY and GURU retains the same descriptive meaning when combined as a phrase

because Opposer educates users how to be a guru about grocery shopping to save money.

If each component retains its descriptive significance in relation to the goods or services,

the combination results in a composite that is itself descriptive. In re Oppedahl & Larson

LLP, 373 F.3d 1171, 71 USPQ2d1370 (Fed. Cir. 2004); TMEP §1209.03(d).

23. (new) The common law mark GROCERY GURU pleaded by Opposer conveys a

category of shopping person or consultant who is a guru like Opposer’s Ken Roesbery at

shopping by using the tools of the trade (coupons, rebates, discount information, price

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 11

comparison information, product give-away information, shopping savings strategy

information, shopping demonstration information, lists that reference specific products

and brands offered for sale in stores, shopping lists etc.) The relevant public understands

that this designation primarily to refer to that category of shoppers or consultants to

shoppers. See H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990,

228 USPQ 528, 530 (Fed. Cir. 1986).

24. (new) The term GROCERY GURU is generic or merely descriptive in its common law

use by Opposer, it necessarily follows that it is also generic or merely descriptive as

applied to the services pleaded by Opposer (teaching and consulting methods and tools

used by Opposer) as held in American Montessori Soc'y, Inc. v. Association Mostessori

Internationale, 155 USPQ 591 (TTAB 1967). Opposer’s pleaded services are just as

generic or merely descriptive as its common law usage of the term with which the

services are inextricably woven.

25. (new) Consumers identify the term GROCERY GURU as a generic or descriptive

category of shopping consultants that know how to use the tools of the trade to save

money. Opposer cannot monopolize such teachings by asserting trademark rights in the

generic or descriptive term used to identify them.

CONCLUSION

The Opposition should be dismissed in favor of Applicant and Opposer’s registration for

GROCERY GURU should be cancelled.

Newspaper Agency Company, LLC, Opposer v. Steven A. Johnson, Applicant Proceeding 91214384 Page 12