IN the UNITED STATES PATENT and TRADEMARK OFFICE BEFORE the TRADEMARK TRIAL and APPEAL BOARD Proceeding 91215279 Party Defendant Alternative Apparel, Inc
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA628717 Filing date: 09/23/2014 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91215279 Party Defendant Alternative Apparel, Inc. Correspondence ERICA L TRITT Address THE SLADKUS LAW GROUP 1827 POWERS FERRY RD SE BLDG 6 STE 200 ATLANTA, GA 30339-5687 UNITED STATES [email protected], [email protected], [email protected], [email protected] Submission Reply in Support of Motion Filer's Name Erica L. Tritt Filer's e-mail [email protected], [email protected] Signature /Erica L. Tritt/ Date 09/23/2014 Attachments Applicant's Reply Brief - Alternative Earth.pdf(101202 bytes ) Exhibit A (Reply Brief).pdf(267254 bytes ) Exhibit B - Reply Brief.pdf(259890 bytes ) Exhibit C - Reply Brief.pdf(294556 bytes ) Exhibit D (Reply Brief).pdf(99518 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD MEYNARD DESIGNS, INC. ) ) Opposer, ) ) v. ) Opposition No. 91215279 ) ALTERNATIVE APPAREL, INC. ) Serial No. 85/963,679 ) Applicant. ) ) APPLICANT’S REPLY BRIEF I. The Opposed Mark Complies with the Agreement A. Socks, Leggings, and Leg Warmers are not Footwear In view of the Agreement’s plain language, Meynard’s position that the Opposed Mark violates the Agreement is unreasonable. First, Meynard’s assertion that “socks”, “leg warmers” and “leggings” are “footwear of any type” is without merit. The Oxford English dictionary defines footwear as “outer coverings for the feet, such as shoes, boots and sandals”. (Exhibit A.) While socks are worn on the feet, they are not outer coverings for the feet and therefore “socks” are not “footwear of any type”. Additionally, “leg warmers” and “leggings” are designed to cover the wearer’s legs. (Exhibits B-C.) While “leg warmers” and “leggings” may cover part of the wearer’s foot, these garments do not serve as outer coverings for the feet, nor can they be used for that purpose. (Id.) Moreover, Meynard owns several trademark registrations covering both “socks” and “footwear” and/or the retail sale of both “socks” and “footwear”1 (the “Sock Registrations”). However, none of the Sock Registrations list “socks” as a type of “footwear”. Therefore, MDI has implicitly acknowledged that it does not consider “socks” to be a type of 1 U.S. Registration No. 2753975 (Alternative notes that “socks” has been deleted from the registration; however, the registration previously included both “socks” and “footwear” as distinct and separate goods). Alternative further notes that Meynard’s Notice of Opposition relies upon this registration (Dkt. No. 1.); U.S. Registration Nos. 3677917, 3757588, 3757587, 3572276. True and correct copies of each registration are attached hereto and incorporated herein as Exhibit D. 1 “footwear”. Since “socks”, “leggings” and “leg warmers” are not “footwear of any type”, the Opposed Mark complies with the terms of Paragraph 1 of the Agreement. B. In the Opposed Mark, ALTERNATIVE is more prominently displayed than EARTH Contrary to Meynard’s assertion, the Agreement does not require that the term EARTH have a “greatly diminished role” in the subject mark (Opposer’s Brief, p. 6). Meynard’s position rests on its mistaken belief that Alternative is limited to using and registering a mark that is substantially similar to the stylized mark illustrated in the Agreement. The stylized mark was included merely as one example of “acceptable usage”, and the Agreement does not commit Alternative to this particular illustration. Rather, Paragraph 4 of the Agreement simply states that “ALTERNATIVE will always be more prominently displayed than the word EARTH” (Dkt. No. 6, Sladkus Decl. Ex. B, ¶4). There is no question that the Opposed Mark complies with Paragraph 4 of the Agreement. C. The Agreement is not Ambiguous Meynard argues that summary judgment is inappropriate because the Agreement is ambiguous, and therefore, a question of fact exists regarding whether the Opposed Mark complies with the Agreement. (Opposer’s Brief p. 7.) However, Meynard failed to point out which of the provisions of the 2 Agreement are ambiguous. As discussed above, the terms “footwear of any type” and “more prominently displayed” are not ambiguous. Because the Agreement is not ambiguous, its interpretation is a matter of law. See Interstate Gen. Gov’t Contractors, Inc. v. Stone, 980 F.2d 1433, 1434 (Fed. Cir. 1992). Given the plain language of the contract and the facts on the record, summary judgment in favor of Alternative is appropriate. II. Meynard’s Opposition is Barred by the Doctrine of Estoppel by Acquiescence A. Evidence of Settlement Negotiations is Admissible to Prove Alternative’s Estoppel Claims Meynard’s assertion that the June 6th Email is inadmissible under FRE 408 is legally incorrect. Evidence regarding settlement negotiations is admissible to prove a party’s estoppel claims. Starter Corp. v. Converse, Inc., 170 F.3d 286, 294 (2d Cir. N.Y. 1999) (holding that settlement negotiations are admissible as evidence to support the claims of contractual and equitable estoppel). Alternative did not introduce the settlement negotiations as evidence in a substantive likelihood of confusion analysis. Instead, the settlement negotiations provide the Board with the proper context for considering Alternative’s affirmative defenses of contractual and equitable estoppel. 3 Therefore, the settlement evidence is admissible under the “another purpose” exception to FRE 408. Id. B. Meynard’s acquiescence was not contingent upon additional actions by Alternative. Meynard’s position that it was “prepared to consent to the use and registration of [the Opposed Mark] only if Alternative agreed to some restrictions” is not supported by the facts (Opposer’s Brief, p. 10). Specifically, Meynard acknowledged that the Opposed Mark complied with the terms of the Agreement on June 6, 2013. It was only subsequent to this acknowledgement, on June 18, 2013, that Meynard advised Alternative that it would require additional consideration in exchange for this acknowledgement. (Opposer’s Brief, Exhibit G.) In view of this chronology, it is clear that Meynard’s acquiescence was not made in exchange for further consideration. Therefore, given the relevant facts, Applicant reasserts its position that under the doctrine of estoppel by acquiescence, Meynard is barred from bringing this Opposition. 4 Respectfully submitted on September 23, 2014. Alternative Apparel, Inc. By: /Erica L. Tritt/ Erica L. Tritt, Esq. Jeffrey B. Sladkus, Esq. The Sladkus Law Group 1827 Powers Ferry Rd. Bldg 6, Ste 200 Atlanta, GA 30339 404-252-0900 [email protected] [email protected] Attorneys for Applicant 5 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD MEYNARD DESIGNS, INC. ) ) Opposer, ) ) v. ) Opposition No. 91215279 ) ALTERNATIVE APPAREL, INC. ) Serial No. 85/963,679 ) Applicant. ) ) CERTIFICATE OF SERVICE I hereby certify that a true and complete copy of the foregoing APPLICANT’S REPLY BRIEF has been served on counsel for Opposer by mailing said copy on September 23, 2014, via First Class Mail, postage prepaid, to: Douglas R. Wolf, Esq. Anderson J. Duff, Esq. Wolf Greenfield & Sacks P.C. 600 Atlantic Avenue Boston, MA 02210 /Erica L. Tritt/ Erica L. Tritt, Esq. Attorney for Applicant 4815-1085-4940, v. 3 9/16/2014 footwear: definition of footwear in Oxford dictionary (American English) (US) Definition of footwear in English: footwear Syllabification: foot·wear Pronunciation: /ˈfo͝otwer / noun Outer coverings for the feet, such as shoes, boots, and sandals. More example sentences They are the timeless sneakers: relaxed footwear that is effortlessly stylish. Some years ago, in many countries, children's feet and footwear were x-rayed regularly. Faced with a wide range in footwear, the shoe we pick touches us in some way. Get more examples Definition of footwear in: The British & World English dictionary http://www.oxforddictionaries.com/us/definition/american_english/footwear 4/6 9/16/2014 Leg warmer - Wikipedia, the free encyclopedia Leg warmer From Wikipedia, the free encyclopedia Leg warmers are coverings for the lower legs, similar to socks but thicker and generally footless. They were originally used as dancewear by ballet and other classic dancers in order to keep the leg muscles warm and to prevent cramping or other muscle injuries. No scientific data has been yet collected to substantiate the claim that leg warmers prevent injury. Traditionally knitted from pure sheep wool, modern variants are more typically made of cotton, synthetic fibers, or both. Some are made of other materials, such as chenille. Leg warmers can vary in length, and in width, due to the material's stretchiness. They are commonly worn between the ankle to just below the knee, though many dancers prefer it to extend to cover the lower parts of the thigh. Some cover the entire foot - these 'warmers' usually have a pad that grips the floor so the dancer does not slip - however this has been known to cause career-ending injury . Some leg warmers are Leg warmers worn as fashion pieces. particularly short and made of thinner material; these are also known as 'ankle warmers'. Originally worn by dancers to keep their muscles from cramping after stretching, in the early 1980s leg warmers became a fad and wearing them was fashionable among teenage girls; later to be an adopted fashion by boys in the city of Berkeley in the San Francisco Bay Area. Their popularity was partly due to the influence of the films Fame and Flashdance and the concurrent aerobics craze. They were worn with leggings, jeans, and tights or as part of aerobic wear. Recently, leg warmers have become popular with new parents as a way to keep babies and toddlers warm while making it easy to change diapers. See also Arm warmer Spats (footwear) References [1] [2] 1. ^ Leg warmers of the 80s (http://www.eightyeightynine.com/culture/legwarmers.html).