Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA990902 Filing date: 07/28/2019

IN THE PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91247352 Party Defendant Dairyland Sports Properties LLC Correspondence ALAN D POFF Address 980 PRENTICE STREET GRANITE FALLS, MN 56241 UNITED STATES [email protected], [email protected] 612-968-2468

Submission Motion to Amend/Amended Answer or Counterclaim Filer's Name Alan D Poff Filer's email [email protected], [email protected] Signature /Alan D. Poff/ Date 07/28/2019 Attachments USPTO Letter Motion to Amend Answer No. 91247352 7.28.19.pdf(65385 bytes ) USPTO Motion to Amend Answer to Opposition No. 91247352 7.28.19.pdf(299692 bytes ) July 28, 2019

Dairyland Sports Properties LLC 980 Prentice Street Granite Falls, MN 56241

By Electronic Filing

Commissioner of Trademarks Attn: TTAB P.O. Box 1451 Alexandria, VA 22313-1451

Re: Dairyland Sports Properties LLC Answer to Consolidated Notice of Opposition by Club Limited Partnership Ltd. Against applications to register COW SOX and DAIRYLAND COW SOX Opposition No. 91247352

Dear Commissioner:

I enclose a Motion to Amend Answer and Suspend Proceedings and a draft of the proposed Amended Answer to the Consolidated Notice of Opposition No. 91247352 against Application Serial Numbers 88024850 and 88024909 published in the Official Gazette on December 4, 2018.

Respectfully submitted,

______Alan D. Poff Principal and Attorney for Dairyland Sports Properties LLC

Enclosure

NOTICE OF SERVICE

I hereby certify that a true and complete copy of the foregoing Answer to the Consolidated Notice of Opposition has been served on Emily F. Stein of Cowan, Liebowitz and Latman P.C. by forwarding said copy on July 28, 2019 via email to: Emily F. Stein at [email protected].

Date: July 28, 2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application Serial Nos. 88024850 and 88024909 Filed: July 3, 2018 For Marks: COW SOX and DAIRYLAND COW SOX Published in the Official Gazette: December 4, 2018 ------BOSTON RED SOX BASEBALL CLUB ) LIMITED PARTNERSHIP and CHICAGO ) Opposition No. 91247352 WHITE SOX, LTD., ) Opposers, ) ) MOTION TO AMEND ANSWER V. ) AND TO SUSPEND PROCEEDINGS ) DAIRYLAND SPORTS PROPERTIES LLC, ) Applicant. ) ------

Commissioner for Trademarks Attn: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451

APPLICANT’S MOTION TO AMEND ANSWER AND TO SUSPEND PROCEEDINGS

Applicant, Dairyland Sports Properties LLC (the “Applicant”), hereby moves pursuant to Fed R.

Civ. P. 15(a) and TBMP § 507 to amend its Answer to Notice of Opposition and Affirmative Defenses

(the “Answer”) to the Notice of Opposition filed by Boston Red Sox Baseball Club Limited Partnership and Chicago White Sox Ltd. (together, “Opposers”) in Opposition No. 91247352.

Additionally, as the Board’s determination of Applicant’s motion will affect the scope of discovery in this proceeding, Applicant requests that this proceeding be suspended pending consideration of the motion to amend answer and that, after the Board decides the motion, the deadlines for the discovery conference, discovery, and trial be reset.

MEMORANDUM IN SUPPORT OF APPLICANT’S MOTION TO AMEND ANSWER Section 507.02 of the TBMP provides “[T]hat a party may amend its pleadings only by written consent of every adverse party or by leave of the Board; and leave must be freely given when justice so requires.”

(3d ed. rev. 2011); see also Fed. R. Civ. P. 15(a)(2).

Applicant first sought consent from the Opposers to amend its Answer. Because the Applicant’s description of anticipated amendments was considered somewhat vague, and consent is not required,

Opposers were unable to consent to the request. Because of this, Applicant moves to amend its Answer by leave of the Board. Applicant believes its motion is not untimely, will not prejudice the Opposers, and would be in the best interest of justice.

Additionally, the Board should suspend the proceedings pending resolution of this Motion to

Amend Answer. If the Applicant is not allowed to amend its Answer, it could significantly affect the scope of discovery in the proceeding. The motion should therefore be resolved before discovery opens.

The Applicant accordingly requests that the discovery and trial schedules be reset after a decision on the

Motion to Amend Answer.

1. Applicant’s Motion is Not Untimely

First, Fed. R. Civ. P. 15(a)(2) and TBMP § 507.02, do not provide a time requirement to file a

motion to amend answer. Second, the Applicant’s motion to amend answer has been filed

prior to the beginning of the discovery process. Finally, the Applicant has been taking

necessary time to review its Answer and potential responses in light of the Opposers’ Motion

to Strike the Applicant’s defense of acquiescence, which was granted as conceded on Jun 28,

2019.

2. Amending Answer Will Not Prejudice the Opposers

The primary reason for the Applicant to pursue a motion to amend its Answer is to bring facts

into the discovery process that have already been presented to the Opposers in the

Applicant’s original Answer under the acquiescence defense, which was stricken. Applicant believes the facts remain very relevant to the discovery process and the outcome of this

proceeding, and that these facts should be allowed to enter the record via an alternative

defense.

3. Justice Requires Leave to Amend Answer

As stated, the Applicant believes the facts presented under the acquiescence defense, which

was stricken, remain very relevant to the discovery process and the outcome of this

proceeding. If the Applicant is not allowed to amend its Answer, these facts will not be part

of the discovery process and could negatively impact the outcome of the proceeding for the

Applicant.

CONCLUSION

For the forgoing reasons, Applicant’s Motion to Amend Answer should be granted. Further, this proceeding should be suspended pending consideration of the Applicant’s Motion to Amend Answer, and the deadlines for initial discovery conference, discovery, and trial periods should be reset accordingly.

Dated: July 28, 2019 DAIRYLAND SPORTS PROPERTIES LLC Principal and Attorney for Applicant

BY ______Alan D. Poff 980 Prentice Street Granite Falls, MN 56241 (612) 968-2468

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

In re Application Serial Nos. 88024850 and 88024909 Filed: July 3, 2018 For Marks: COW SOX and DAIRYLAND COW SOX Published in the Official Gazette: December 4, 2018 ------BOSTON RED SOX BASEBALL CLUB ) LIMITED PARTNERSHIP and CHICAGO ) Opposition No. 91247352 WHITE SOX, LTD., ) Opposers, ) ) AMENDED ANSWER TO NOTICE V. ) OF OPPOSITION AND ) AFFIRMATIVE DEFENSES DAIRYLAND SPORTS PROPERTIES LLC, ) Applicant. ) ------

Commissioner for Trademarks Attn: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451

AMENDED ANSWER TO NOTICE OF OPPOSITION AND AFFIRMATIVE DEFENSES

Applicant, Dairyland Sports Properties LLC (“Applicant”), for its answer to the Notice of

Opposition filed by Boston Red Sox Baseball Club Limited Partnership and Chicago White Sox Ltd.

(together, “Opposers”), against application for registration of COW SOX, Serial No. 88024850, and

DAIRYLAND COW SOX, Serial No. 88024909, filed July 3, 2018, and published in the Official Gazette

December 4, 2018 (the MARKS), pleads and avers as follows:

1. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 1.

2. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 2.

3. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 3.

4. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 4.

5. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 5. 6. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 6.

7. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 7.

8. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 8.

9. Applicant denies knowledge and information sufficient to admit or deny the allegations of ¶ 9.

10. Admit ¶ 10.

11. Admit ¶ 11.

12. Deny ¶ 12, in that Applicant does not use SOX alone on any goods covered by the Applicant’s

filing.

13. Deny ¶ 13.

14. Deny ¶ 14. The Applicant only filed to register wordmarks. The logo is a temporary design until

a well-known industry branding expert, who is well-versed in trademark and copyright matters, is

enlisted to develop the branding package when a team location is secured. Any alleged

similarities between the Applicant’s temporary logo and the Boston Red Sox’s primary logo

should not preclude registration of the Applicant’s wordmarks. However, the roundel the

Applicant used with a baseball background with team and location names within the roundel are

generic in the baseball industry. Socks come in pairs and typically have heels and toes, which is

the reason the socks design was used. The layout of the socks is different than the Boston Red

Sox logo, and the socks used are intentionally chubby and cartoonish with silly stitching to drive-

home the funny nature of the cow as seen in ads by the Chick-fil-A restaurant chain, in the Far

Side comic strip, and in the South Park cartoon series. See below:

15. Deny¶ 15.

AFFIRMATIVE DEFENSES

No Likelihood of Confusion

There is no likelihood of confusion, mistake, or deceptions between Applicant’s marks and the

Opposers’ marks.

First, Applicant’s marks, COW SOX and DAIRYLAND COW SOX, are sufficiently distinguishable from Opposers’ marks, BOSTON RED SOX, RED SOX, CHICAGO WHITE SOX, and

WHITE SOX, to avoid any consumer confusion about the source of goods sold.

Second, the use of SOX by both the Boston Red Sox and Chicago White Sox is inherently confusing. If a consumer located in the Boston marketplace, they will assume SOX refers to the Boston

Red Sox. If a consumer is located in Chicago marketplace, they will assume SOX refers to the Chicago

White Sox. If a consumer located is outside these markets, they will be confused about which MLB team is being referred to without specific a specific locator to identify the team.

Third, Applicant has no interest is using SOX alone and has no plans to do so. The commercial value in the Applicant’s wordmark filings reside in the COW and everything identifiable and funny about the species of animal. SOX is merely a common baseball identifier used by teams for socks-based team names that have cluttered the professional baseball landscape over the 150-year history of professional baseball going back to the first team, the Cincinnati Red Stockings, in 1869. The nucleus of players from this team made up the Boston Red Stockings in 1875, who eventually evolved to become the Atlanta

Braves, not the Boston Red Sox, of today’s (MLB).

Fourth, the use of socks-based names in conjunction with another identifier in team branding is as common with teams in the 150-year history of baseball as peanuts and Cracker Jacks. The Applicant’s principle, who operates the website Ballpark Business (www.BallparkBiz.com), has documented hundreds of teams using socks-based names, including Red Stockings, White Stockings, Brown Stockings, Blue Stockings, Red Sox, White Sox, Black Sox, Blue Sox, Silk Sox, Green Sox, Gold Sox,

White Socks, Sun Sox, Silver Sox, Red Socks, Sky Sox, Ro-Sox, Sox, Redlegs, JoSox, DavSox, ChaSox,

Cor-Sox, C-Sox, Knox Sox, Coal Sox, Solar Sox, AquaSox, and Baysox.

Fifth, the Applicant’s marks provide substantial difference between all other socks-based marks in the history of baseball, including the Opposers’ marks, because the Applicant’s marks are the only ones tied specifically and overtly to an animal.

Sixth, no consumer is going to confuse the source of goods. Opposers are MLB teams. The

Applicant is working to develop a summer collegiate baseball franchise made up of unpaid college players looking to develop and showcase their skills over the summer.

Seventh, any baseball franchise the Applicant might launch bearing the COW SOX brand will not be located in or Illinois, which will further avoid confusion.

Eighth, no consumer is going to confuse that Applicant’s team, if formed, as an affiliate of one of the Opposers. There are two types of baseball fans: The hardcore baseball fan, who knows and understands the affiliation system very clearly. The other is the casual fan who could care less about the affiliation system and will likely not even know the score after the game. This fan is at for drink, food, fun and entertainment – baseball is merely the vehicle for a cheap night out with family or friends.

Ninth, the affiliation system is so inherently confusing that no fan is going to confuse the

Applicant’s goods with the Opposers’ good and services. The affiliates of the Boston Red Sox include the Pawtucket Red Sox, Portland Sea Dogs, Salem Red Sox, Greenville Drive and Lowell Spinners. Only two teams bear the SOX name. The affiliates of the Chicago White Sox include the Charlotte Knights,

Birmingham Barons, Winston-Salem Dash, and Great Falls Voyagers. No affiliate bears the White Sox name. At the same time, the Bowie Baysox are an affiliate of the (1989-present) and have never been an affiliate of the Boston Red Sox or Chicago White Sox. The Everett AquaSox are an affiliate of the (1995-present) and have never been an affiliate of the Boston Red Sox or

Chicago White Sox. The confusion of the affiliation system is clearly illustrated with the professional

Utica Blue Sox franchise, which ended play in 2001. The team’s affiliates included the Florida Marlins

(1977-2001), Boston Red Sox (1993-1995), Chicago White Sox (1988-1992), (1986-

1987) and a co-op team (1981-1985), and Philadelphia Phillies (1943-1950).

Opposers’ Marks are Only Entitled to a Limited Scope of Protection

The use of Socks-related marks on similar goods by third parties within the baseball industry has proliferated throughout the 150-year history of baseball, and this continues today. As a result, Opposers’ marks have been sufficiently weakened beyond the use of SOX by itself, RED SOX and WHITE SOX, that they are only entitled to a limited scope of protection that should not preclude the registration of

COW SOX and DAIRYLAND COW SOX.

First, the use of socks-based names in conjunction with another identifier in team branding is as common with teams in the 150-year history of baseball as peanuts and Cracker Jacks. The Applicant’s principle, who operates the website Ballpark Business (www.BallparkBiz.com), has documented hundreds of teams using socks-based names, including Red Stockings, White Stockings, Brown

Stockings, Blue Stockings, Red Sox, White Sox, Black Sox, Blue Sox, Silk Sox, Green Sox, Gold Sox,

White Socks, Sun Sox, Silver Sox, Red Socks, Sky Sox, Ro-Sox, Sox, Redlegs, JoSox, DavSox, ChaSox,

Cor-Sox, C-Sox, Knox Sox, Coal Sox, Solar Sox, AquaSox, and Baysox.”

Second, marks for the following baseball teams have been registered for the same or similar goods and services as the Opposers’, including the Bowie Baysox (Serial Nos. 75109837, 76431975,

77148383, 77148446), Everett AquaSox (Serial Nos. 74492269, 74492268, 74492227), Blue Sox

(85665212), and Miami Sun Sox (87921252 and 87920146). In 2002, Gold Sox was registered

(76368294 and 76368254) and is used by a summer collegiate baseball franchise located in Marysville, California, which is a professionally-run business operation that offers the same level of baseball and type of sports entertainment the Applicant is seeking to launch

In addition, four (4) summer-collegiate baseball teams, which are professionally-run businesses operations that offer the same level of baseball and type of sports entertainment the Applicant is seeking to launch, sell the same or similar goods and services as the Boston Red Sox in the MLB club’s market footprint. The Valley (Holyoke) Blue Sox (founded 2008, New England Collegiate Baseball League) are located 88.2 miles from Fenway Park in Holyoke, . The (founded

2009, New England Collegiate Baseball League) are located 67.1 miles from Fenway Park in New

Bedford, Massachusetts. The (founded 2008, Perfect Game Collegiate Baseball League) are located 259 miles from Fenway Park in Utica, New York. The (founded 2003, Futures

Collegiate Baseball League) are located 37 miles from Fenway Park in Brockton, Massachusetts, and use a name similar to Sox. The Massachusetts teams all use same color scheme as the Boston Red Sox. See below:

WHEREFORE, Applicant requests that the Notice of Opposition be dismissed with prejudice, together with whatever other relief the Board may deem appropriate.

Dated: July 28, 2019 DAIRYLAND SPORTS PROPERTIES LLC Principal and Attorney for Applicant

BY ______Alan D. Poff 980 Prentice Street Granite Falls, MN 56241 (612) 968-2468