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