Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA990902 Filing date: 07/28/2019 IN THE UNITED STATES 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 Boston Red Sox Baseball Club Limited Partnership Chicago White Sox 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.