Case 3:14-cv-07770-PGS-LHG Document 16 Filed 02/05/15 Page 1 of 34 PageID: 63 Karen A. Confoy, Esq. Christopher R. Kinkade, Esq. FOX ROTHSCHILD LLP Princeton Pike Corporate Center 997 Lenox Drive, Building 3 Lawrenceville, NJ 08648-2311 Telephone: (609) 896-3600 Facsimile: (609) 896-1469 Email: [email protected] [email protected] Jonathan D. Pressment, Esq. (Admitted Pro Hac Vice) HAYNES AND BOONE, LLP 30 Rockefeller Plaza, 26th Floor New York, NY 10112 Telephone: (212) 659-7300 Facsimile: (212) 918-8989 Email: [email protected] Attorneys for Defendant America Can! UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY KARS 4 KIDS INC., Civil Action No. 3:14-cv-07770-PGS-LHG Plaintiff, v. AMERICA CAN!, Defendant. AMERICA CAN!’S ANSWER AND COUNTERCLAIMS America Can! (“America Can!”), by its attorneys, Haynes and Boone, LLP and Fox Rothschild LLP, for its Answer to the Complaint filed by plaintiff Kars 4 Kids Inc. (“Kars” or 1 Case 3:14-cv-07770-PGS-LHG Document 16 Filed 02/05/15 Page 2 of 34 PageID: 64 “Plaintiff”) in this action, states on knowledge as to its own acts and on information and belief as to all other matters except as indicated otherwise as follows: 1. In as much as a portion of Paragraph 1 of the Complaint attempts to characterize the nature of the action and the claims set forth in the Complaint, no response is required. To the extent a response to Paragraph 1 is required, America Can! denies each and every allegation contained in Paragraph 1 of the Complaint, except refers to the content of Registration Number 4,130,622 for its terms, including Plaintiff’s claim that its alleged Kars 4 Kids mark was first used in commerce in 2003 -- not 1998, and states that America Can! lacks knowledge or information sufficient to form a belief as to the alleged time and resources, if any, that Plaintiff has purportedly used to promote, advertise and use its alleged marks in the United States, if any, or its alleged rationales for doing so and, accordingly, denies each and every allegation pertaining to such alleged time, resources and rationales. 2. To the extent Paragraph 2 of the Complaint provides a summary of the relief being requested by Plaintiff and sets forth related conclusions of law, no response is required. To the extent a response is required, America Can! denies each and every allegation contained in Paragraph 2 of the Complaint, except admits that America Can! uses the trademark CARS FOR KIDS in connection with its charitable fundraising activities. THE PARTIES 3. America Can! denies knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 3 of the Complaint and therefore denies each and every allegation contained in Paragraph 3 of the Complaint. 2 Case 3:14-cv-07770-PGS-LHG Document 16 Filed 02/05/15 Page 3 of 34 PageID: 65 4. America Can! admits that it is a Texas not-for-profit corporation with an address of 325 W. 12th Street, Suite 250, Dallas, Texas 75208, and that it solicits and/or receives donations from individuals and entities throughout the United States -- including New Jersey. JURISDICTION AND VENUE 5. As Paragraph 5 of the Complaint asserts conclusions of law, no response is required. To the extent a response is required, America Can! admits that this Court has subject matter jurisdiction to adjudicate this action, but otherwise denies each and every allegation contained in Paragraph 5 of the Complaint. 6. As Paragraph 6 of the Complaint asserts conclusions of law, no response is required. To the extent a response is required, America Can! admits that venue is proper in this District but otherwise denies each and every allegation contained in Paragraph 6 of the Complaint. 7. As Paragraph 7 of the Complaint asserts conclusions of law, no response is required. To the extent a response is required, America Can! admits it is subject to personal jurisdiction in this District as a result of its charitable activities in the State of New Jersey, but otherwise denies each and every allegation contained in Paragraph 7 of the Complaint. 8. America Can! denies each and every allegation contained in Paragraph 8 of the Complaint, except admits that it maintains websites at www.americascarsforkids.org and www.carsforkids.org, which, upon information and belief, are accessible by persons and/or entities in all states. 9. America Can! admits that it promotes its charitable fundraising services in connection with its CARS FOR KIDS Mark through national advertising, including national radio advertisements, which are heard throughout the United States, including in New Jersey. 3 Case 3:14-cv-07770-PGS-LHG Document 16 Filed 02/05/15 Page 4 of 34 PageID: 66 KARS 4 KIDS AND THE KARS 4 KIDS [ALLEGED] TRADEMARKS 10. America Can! denies knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 10 of the Complaint and, accordingly, denies each and every allegation contained in Paragraph 10 of the Complaint, except states that even by its own United States Patent and Trademark Office Registration Plaintiff’s first use in commerce of the alleged KARS 4 KIDS mark was 2003. 11. To the extent Paragraph 11 of the Complaint attempts to summarize the terms and contents of federal Registration Number 4,130,622, America Can! refers to the contents of Registration Number 4,130,622 for its terms and contents and otherwise denies each and every allegation contained in Paragraph 11 of the Complaint. 12. To the extent Paragraph 12 of the Complaint asserts conclusions of law, no response is required. To the extent a response is required, America Can! denies knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 12 of the Complaint and, accordingly, denies each and every allegation contained in Paragraph 12 of the Complaint. 13. To the extent Paragraph 13 of the Complaint attempts to summarize information offered at the website located at www.kars4kids.com, America Can! refers to the www.kars4kids.com website for its content. America Can! denies knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 13 of the Complaint and, accordingly, denies each and every allegation contained in Paragraph 13 of the Complaint. 4 Case 3:14-cv-07770-PGS-LHG Document 16 Filed 02/05/15 Page 5 of 34 PageID: 67 14. America Can! denies knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 14 of the Complaint and, accordingly, denies each and every allegation contained in Paragraph 14 of the Complaint. 15. As Paragraph 15 of the Complaint asserts conclusions of law, no response is required. To the extent a response is required, America Can! denies each and every allegation contained in Paragraph 15 of the Complaint to the extent that they attempt to characterize Plaintiff’s purported use of its alleged KARS 4 KIDS marks, its alleged goodwill and reputation among consumers and any alleged secondary meaning associated with Plaintiff’s alleged KARS 4 KIDS marks, and otherwise denies each and every remaining allegation contained in Paragraph 15 of the Complaint. DEFENDANT’S [ALLEGED] UNLAWFUL ACTIVITIES 16. America Can! admits that it has continuously used the phrase CARS FOR KIDS in connection with its charitable fundraising activities including, among other things, collecting and reselling used automobiles and states that it did not require Plaintiff’s consent or authority to do so because Plaintiff is the junior user of a variation of America Can!’s CARS FOR KIDS Mark and America Can! did not require Plaintiff’s consent or authority in order to utilize its CARS FOR KIDS Mark. America Can! denies knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 16 of the Complaint and, accordingly, denies each and every remaining allegation contained in Paragraph 16 of the Complaint. 17. To the extent Paragraph 17 of the Complaint refers to the terms of a trademark application filed by America Can!, America Can! refers to said application for its date and contents and otherwise admits the allegations contained in Paragraph 17 of the Complaint. 5 Case 3:14-cv-07770-PGS-LHG Document 16 Filed 02/05/15 Page 6 of 34 PageID: 68 18. America Can! admits that its trademark application for CARS FOR KIDS (App. Serial No. 85/796,733) lists a date of first use in commerce of at least as early as 1991, but otherwise denies each and every allegation contained in Paragraph 18 of the Complaint. 19. America Can! admits that Plaintiff filed a Notice of Opposition (the “Opposition”) with respect to America Can!’s trademark application and refers to the Opposition for its date and contents. 20. America Can! admits that it filed an answer to Plaintiff’s Opposition in which it, among other things, asserted a counterclaim seeking cancellation of the 1-877-KARS-4-KIDS Registration (Reg. No. 4,130,622) (the “America Can! Cancellation”), and that Plaintiff filed an answer to the America Can! Cancellation (“Plaintiff’s Answer”) and refers to the America Can! Cancellation and Plaintiff’s Answer for their respective dates and contents. 21. America Can! denies each and every allegation contained in Paragraph 21 of the Complaint, except admits that it is using its CARS FOR KIDS Mark to promote its own charitable fundraising services by means of collecting and reselling used automobiles and watercraft, and that it has further promoted its charitable activities through national advertising on radio and/or satellite broadcasts including radio stations heard nationally through Sirius XM.