Estta1074937 08/14/2020 in the United States
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1074937 Filing date: 08/14/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92070438 Party Plaintiff 142 Mercer Street, LLC, John F. McDonald Correspondence ANTHONY A LOPRESTI Address LOPRESTI PLLC 134 SPRING STREET, STE 502 NEW YORK, NY 10012 UNITED STATES Primary Email: [email protected] 646-490-0065 Submission Plaintiff's Notice of Reliance Filer's Name Anthony A. LoPresti Filer's email [email protected] Signature /Anthony A. LoPresti/ Date 08/14/2020 Attachments Petitioner Reliance 5 Exhibits.pdf(3949415 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Registration of DAVID CORTINA Mark: LURE FISH HOUSE Reg. No.: 4,608,249 JOHN F. MCDONALD; and 142 MERCER STREET, LLC d/b/a LURE FISHBAR, Petitioners, CANCELLATION NO. 92070438 v. DAVID CORTINA, Registrant/Respondent. PETITIONERS’ NOTICE OF RELIANCE 5: Pursuant to 37 C.F.R. §§ 2.120 and 2.122, Petitioners John F. McDonald and 142 Mercer Street, LLC, by and through their undersigned counsel, hereby give notice of reliance upon the following materials attached as Exhibits to rebut the alleged defenses of Registrant/Respondent raised in the Trial Declaration of David Cortina, and the materials submitted in Respondent’s Notice of Reliance No. 1 and Notice of Reliance No. 2: (1) Exhibit 5A - Lure Fishbar Media Highlight Summary compiling some of the most notable nationwide press, media, internet and television coverage of Lure Fishbar. This exhibit is relevant to the fame and strength of Petitioners’ mark, the immense good will built by Petitioners with the public, the regional expansion of Petitioners’ use of the LURE FISHBAR marks, and the priority of Petitioners’ marks, and to rebut Respondent’s claims that include lack of likelihood of confusion, dilution, laches, abandonment, lack of strength, differences in the classes of customers, differences in the channels of trade, differences in the advertising channels, the number of similar marks in use, and a lack of fame of Petitioner’s trademark. (2) Exhibit 5B – Price Bracket Comparison for Lure Fishbar and Lure Fish House, detailing the similarities in how the Lure Fishbar restaurants and the Lure Fish House restaurants are represented to consumers on common purchasing and advertising platforms. This exhibit is relevant to the likelihood of confusion between Petitioners’ marks and Respondent’s mark, specifically the classes of customers between the Lure Fishbar restaurants and the Lure Fish House restaurants, the conditions of purchasing between the Lure Fishbar restaurants and the Lure Fish House restaurants, the channels of trade between the Lure Fishbar restaurants and the Lure Fish House restaurants, and the advertising and promotional channels between the Lure Fishbar restaurants and the Lure Fish House restaurants. (3) Exhibit 5C – Becca PR 2011 – 2015 Lure Fishbar Media Spreadsheet tracking media coverage of Lure Fishbar from 2011 to 2015. This exhibit is relevant to the fame and strength of Petitioners’ mark, the immense good will built by Petitioners with the public, and the priority of Petitioners’ marks, and to rebut Respondent’s claims that include lack of likelihood of confusion, dilution, laches, abandonment, lack of strength, differences in the classes of customers, differences in the channels of trade, differences in the advertising channels, the number of similar marks in use, and a lack of fame of Petitioner’s trademark. (4) Exhibit 5D – 2015 Lure Fish House Cease and Desist Letter, sent to Respondent Cortina on or about March 30, 2015 requesting that Respondent discontinue use of the LURE FISH HOUSE mark. This exhibit is relevant to Petitioners’ efforts to enforce their rights in the LURE FISHBAR marks, rebutting Respondent’s claims that Petitioners abandoned their rights in the LURE FISHBAR marks, rebutting Respondent’s defense of laches, and rebutting 2 Respondent’s defense of acquiescence. This exhibit also evidences Respondent’s misrepresentations and bad faith applications. (5) Exhibit 5E – 2015 Fifth Group Restaurants Cease and Desist Letter, sent to Fifth Group Restaurants d/b/a Lure in Atlanta, Georgia, on or about March 31, 2015 requesting that Fifth Group Restaurants discontinue use of the name Lure. This exhibit is relevant to Petitioners’ efforts to enforce their rights in the LURE FISHBAR marks, rebutting Respondent’s claims that Petitioners abandoned their rights in the LURE FISHBAR marks, rebutting Respondent’s defense of laches, and rebutting Respondent’s defense of acquiescence. (6) Exhibit 5F – 2019 Fifth Group Restaurants Cease and Desist Letter, sent to Fifth Group Restaurants d/b/a Lure in Atlanta, Georgia, on or about February 14, 2019 reiterating that Fifth Group Restaurants’ use of the name Lure is an infringement of Petitioners rights in the LURE FISHBAR marks. This exhibit is relevant to Petitioners’ efforts to enforce their rights in the LURE FISHBAR marks, rebutting Respondent’s claims that Petitioners abandoned their rights in the LURE FISHBAR marks, rebutting Respondent’s defense of laches, and rebutting Respondent’s defense of acquiescence. (7) Exhibit 5G – Brad Beckerman 2018 Text Message, evidencing an instance of actual confusion. This exhibit is relevant to the issue of likelihood of confusion, specifically the factor of actual confusion, and rebutting Respondent’s defense of laches. (8) Exhibit 5H – 2019 Chop Restaurants Cease and Desist Letter, sent to Chop Restaurants d/b/a Lure in Wisconsin, on or about February 14, 2019 demanding that Chop Restaurants refrain from expanding its use of the name Lure beyond its respective area of Wisconsin. This exhibit is relevant to Petitioners’ efforts to enforce their rights in the LURE FISHBAR marks, rebutting Respondent’s claims that Petitioners abandoned their rights in the 3 LURE FISHBAR marks, rebutting Respondent’s defense of laches, and rebutting Respondent’s defense of acquiescence. (9) Exhibit 5I – Petitioners’ First Set of Requests for Production, sent to Respondent Cortina on August 22, 2019 requesting the production of certain documents pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure and Rule 2.120 of the Trademark Rule of Practice. This exhibit is relevant as it rebuts Respondent’s claims that Petitioners are responsible for delaying this action by failing to answer discovery requests. This exhibit is also goes to Respondent’s burden of proof, the priority of Petitioners’ marks, the likelihood of confusion between Petitioners’ marks and Respondent’s marks, the strength of Petitioners’ LURE FISHBAR marks, the lack of differences in the classes of customers between Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, the lack of difference in the channels of trade between Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, the lack of differences in the advertising channels of Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, Respondent’s defense of laches, Respondent’s defense of acquiescence, and Respondent’s defense of abandonment. (10) Exhibit 5J – Petitioners’ First Set of Interrogatories, sent to Respondent Cortina on August 22, 2019 requesting the production of certain documents pursuant to Rule 33 of the Federal Rules of Civil Procedure and Rule 2.120 of the Trademark Rule of Practice. This exhibit is relevant as it rebuts Respondent’s claims that Petitioners are responsible for delaying this action by failing to answer discovery requests. This exhibit is also goes to Respondent’s burden of proof, the priority of Petitioners’ marks, the likelihood of confusion between Petitioners’ marks and Respondent’s marks, the strength of Petitioners’ LURE FISHBAR marks, the lack of 4 differences in the classes of customers between Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, the lack of difference in the channels of trade between Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, the lack of differences in the advertising channels of Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, Respondent’s defense of laches, Respondent’s defense of acquiescence, and Respondent’s defense of abandonment. (11) Exhibit 5K – August 22, 2019 Petitioners’ Notice of Deposition, sent to Respondent Cortina on August 22, 2019 requesting the production of certain documents pursuant to Rules 30(b)(6) of the Federal Rules of Civil Procedure and Rule 2.120(b) of the Trademark Rule of Practice. This exhibit is relevant as it rebuts Respondent’s claims that Petitioners are responsible for delaying this action by failing to answer discovery requests. This exhibit is also goes to Respondent’s burden of proof, the priority of Petitioners’ marks, the likelihood of confusion between Petitioners’ marks and Respondent’s marks, the strength of Petitioners’ LURE FISHBAR marks, the lack of differences in the classes of customers between Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, the lack of difference in the channels of trade between Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, the lack of differences in the advertising channels of Petitioners’ LURE FISHBAR restaurants and Respondent’s LURE FISH HOUSE restaurants, Respondent’s