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Estta559888 09/17/2013 in the United States Patent And Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA559888 Filing date: 09/17/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91211145 Party Plaintiff Joseph M. Merrill Correspondence JOSEPH M MERRILL Address HEIMBACHWEG 24 GOEPPINGEN, BW 73035 GERMANY [email protected] Submission Motion to Dismiss - Rule 12(b) Filer's Name Joseph M. Merrill Filer's e-mail [email protected] Signature /Joseph M. Merrill/ Date 09/17/2013 Attachments motion to dismiss .pdf(172443 bytes ) speak to me - Google Search page 2.pdf(183560 bytes ) speak to me - Google Search page 4.pdf(93000 bytes ) speak to me - Google Search page 5.pdf(102914 bytes ) speak to me - Google Search page 6.pdf(96686 bytes ) speak to me - Google Search page 7.pdf(119138 bytes ) speak to me - Google Search page 8.pdf(87873 bytes ) speak to me - Google Search page 9.pdf(95099 bytes ) speak to me - Google Search page 10.pdf(109711 bytes ) speak to me - Google Search page 11.pdf(89172 bytes ) speak to me - Google Search page 12.pdf(128991 bytes ) speak to me - Google Search page 1.pdf(109079 bytes ) speak to me - Google Search page 3.pdf(113710 bytes ) speak to me esl - Google Search page 1.pdf(237176 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 17 September 2013 Joseph M. Merrill In re to the matter of Pending Application and Opposition Owner with Christel Merrill Serial Nos. 85699212 and 85699204 of SPEAK TO ME® Marks: Speak to Win American English Serial No. 85425900 Speak to Win American English AE + design Registration No. 4189415 Opposition number 91211145 v. Speak to Me AE, Inc. MOTION TO DISMISS COUNTERCLAIM/PETITION FOR CANCELLATION OF U.S. REGISTRATION 4189415 FOR MARK SPEAK TO ME INTRODUCTORY STATEMENT: The Claimant of the Counterclaim hereafter referred to as the Applicant (for the mark Speak to Win) has failed to present any facts on all of his 3 counts, which would entitle him to a legal remedy. He has failed to state a claim upon which relief can be granted. Facts relevant to this case: 1) The Applicant Speak to Me AE is a New York Corporation applying for the mark Speak to Win (serial numbers 85699212 and 5699204). 2) Joseph Merrill (representing himself and his wife Christel Merrill as the owners of the mark Speak to Me®) filed a Notice of Opposition number 91211145 to the mark Speak to Win due to the likelihood of confusion, dilution, and deception. 3) Rather than respond with an Answer to the above-mentioned Opposition, the Applicant has filed a Counterclaim requesting that the USPTO rescind the registration of our Speak to Me ® mark and thereby grant him registration for Speak to Win. 4) The Applicant bases his Counterclaim on 3 major counts all of which will be addressed below in detail. All of them, I unequivocally deny. 5) The Applicant chose the corporate name Speak to Me AE and the mark Speak to Win thereby positioning his products and services as close as possible to our mark Speak to Me®. This is a trademark in which we have invested millions of dollars in advertising over the last 24 years, and is well know among U.S. ethnic communities, schools, universities, and libraries, which are the markets for such services and goods. Now with this Counterclaim, the Applicant would like to be able not only to use the corporate name Speak to Me in connection with the sale of foreign language programs, but also to merge the mark Speak to Me with his mark Speak to Win. 6) However, I will show that the Counterclaim that the Applicant put forward has no basis in fact, and does not meet the plausibility standard. 7) Count 1: Fraud: The Applicant claims that the registered owners of the mark committed fraud when reapplying for the mark Speak to Me. He offers no grounds other than stating “Upon information and belief, Opposer was not using the SPEAK TO ME mark in connection with all of the goods identified in the September 19, 2011 application and the signed Declaration was false at the time it was made and Opposer knew it was false.” 8) Rebuttal of count 1: The goods and services listed in our latest application for the mark Speak to Me are very limited. All of them were used by us through our American Video Language Institute at the time of the application and still are. The Applicant cites no grounds for his “belief,” and states no “information” to suggest that I intentionally committed fraud. 9) Count 2: the Applicant claims that the mark Speak to Me is “merely descriptive of goods or services in connection with which it is sold ”under section 2(e)(1) and therefore should be rescinded by the USPTO. 10) Rebuttal of count 2: Under the Lanham Act that would mean that the mark Speak to Me is descriptive of the goods/ services in language programs. First off, the term Speak to Me in no way suggests that foreign language instruction is involved in the goods and services promoted under this mark. There is no automatic connection between language learning and the mark Speak to Me. Naturally, through our advertising campaign, we seek to have potential students/customers/clients make a mental connection with Speak to Me® and the foreign language learning services and goods we offer. 11) The Applicant is either unknowledgeable about what is the meaning behind our mark or he wishes to sway the USPTO examining attorney to see it in a false light. He states in paragraph 15 that all of the goods and services in connection with Speak to Me® featuring foreign language instruction “ describes a feature of the goods, i.e., DVDs that "speak to me" (the purchaser) to teach language instruction. ” This is totally incorrect. The idea behind the mark and our methodology is that the student speaks to the course, not the other way around. 12) Here is an excerpt from an introduction to a Speak to Me® book that explains the methodology in our foreign language courses. INTRODUCTION ... Speak to Me® makes you THINK in English by challenging you. Your instructor shows you situational scenes and asks you questions about them. From the images on your screen, you can make intelligent decisions and answer the questions. Even if you have a problem answering a question and must wait to hear the correct response from your instructor, you will continue to think in English by associating the correct English word with the image on the screen... Since the sentence is the simplest form of meaningful conversation, we work exclusively with full sentences. Therefore, when asked a question, you should always respond in a complete sentence. We are sure you will find this course both enjoyable and effective. And now ... Speak to Me®. 13) It is obvious that our mark is not descriptive of our goods and services or language instruction in general as the Applicant suggests. 14) Furthermore, the words Speak to Me are exceptionally popular in many fields. Musicians in particular find it appealing and have used it as a title in way over 100 songs, plus it is the title of numerous music albums (Source: Amazon.com MP3 music downloads). It is also very common with themes concerning religion, speaking engagements, seminars on numerous topics, telecommunications products, and generally concerning the need for more or better dialog in the world today. 15) It is telling that the U.S. Patent and Trademark Office has granted the Opposer the mark Speak to Me on three different occasions dating back to 1990. Serial numbers: 7383401, 78380779, and 85425900. In each of those instances a different examining attorney made a determination as to the use and validity of this mark. 16) Additionally, another USPTO examining attorney rejected registration of the mark SPEAK2Me in September 2008 (serial number 77469953) on the grounds of likelihood of confusion with the Opposer’s mark Speak to Me®. In essence, she thereby again confirmed the validity of the latter mark for foreign language instruction. 17) The granting of registration for Speak to Me, the exact same mark as ours, to Speak To Me LLC LIMITED LIABILITY COMPANY US VIRGIN ISLANDS 22 Elaine Avenue Mill Valley CALIFORNIA 94941 in February 2012 by the USPTO (serial number 85195927) for educational speakers and seminars is also telling. There the applicant listed a very large number of topics to be used by their “educational speakers live and via the Internet.” Before registration was approved however, the examining attorney rejected several words or terms for being too vague. His list with his comments follows: speaker events… Inspirational speaking; Speakers bureau; Speaker training - {the particular speaking related services, and their field, must be provided, e.g. providing educational speakers in the field of cooking, art, music and social events, providing training in the field of public speaking}; educational events - {the particular type of events, and their field, must be provided, e.g. organization of events for cultural purposes }; art education training - {this wording is acceptable}; training - {the particular type of training must be specified}; 18) Ultimately, that Speak to Me mark was registered by the USPTO. What follows is a partial description of the educational seminars to be offered under that mark: IC 041. US 100 101 107. G & S: Providing educational speakers to see live or via the internet in the field of women, art, music, cooking, entrepreneurship, innovation, leadership, volunteering, socially responsible business, social and political trends or policies, psychology, genetics, history, evolution, culture, social sciences, political sciences, life sciences, human sciences, the environment, space exploration, sea exploration, foreign cultures, religions, creating change, personal development, economics, societies, managing relationship, parenting, etc.
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