Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA788296 Filing date: 12/09/2016 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91231123 Party Defendant Cold Brewtus Coffee Roasters, Inc. Correspondence MATTHEW H. SWYERS Address The Trademark Company 344 Maple Ave W PMB 151 Vienna, VA 22180-5612 [email protected] Submission Answer and Counterclaim Filer's Name Rishi Nair Filer's e-mail [email protected], [email protected], trade- [email protected] Signature /Rishi Nair/ Date 12/09/2016 Attachments Cold Brewtus Answer Filing sm.pdf(3244309 bytes ) Registrations Subject to the filing Registration No 1783594 Registration date 07/20/1993 Registrant APPLEBEE'S INTERNATIONAL, INC. 8140 WARD PARKWAY KANSAS CITY, MO 64114 UNITED STATES Goods/Services Subject to the filing Class 032. First Use: 1992/03/09 First Use In Commerce: 1992/03/09 All goods and services in the class are requested, namely: beer Grounds for Cancellation The registration is being used by, or with the per- Trademark Act Section 14(3) mission of, the registrant so as to misrepresent the source of the goods or services on or in con- nection with which the mark is used. Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Registration No 4292476 Registration date 02/19/2013 Registrant APPLEBEE'S INTERNATIONAL, INC. 8140 WARD PARKWAY KANSAS CITY, MO 64114 UNITED STATES Goods/Services Subject to the filing Class 033. First Use: 2012/07/23 First Use In Commerce: 2012/07/23 All goods and services in the class are requested, namely: PREPARED ALCOHOLIC COCKTAILS IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Trademark Serial No. 86716562 For the Mark COLD BREWTUS VERMONT COLD BREW COFFEE EST. MMXV (& Design) Filed on: November 9, 2016 Published for Opposition on: July 12, 2016 Applebee’s Restaurants, LLC Opposition No. 91231123 Opposer, v. Cold Brewtus Coffee Roasters, Inc. Applicant. APPLICANT'S ANSWER TO NOTICE OF OPPOSITION AND COUNTERCLAIM TO CANCEL OPPOSER’S REGISTRATION NOS. 1,782,594 AND 4,292,476 The following is the Answer of Cold Brewtus Coffee Roasters, Inc. (hereinafter “Applicant”) to the Notice of Opposition of Registration filed by Applebee’s Restaurants, LLC (hereinafter “Opposer”) on November 9, 2016 and assigned Opposition No. 91231123 (hereinafter “Notice of Opposition”). Applicant hereby Answers, asserts Affirmative Defenses, and Counterclaims against Opposer’s Registration Nos.1,782,594 and 4,292,476 (Collectively “Opposer’s Marks”), solely for the purpose of this proceeding, to each of the grounds set forth in the Notice of Opposition, as follows: Page 1 of 9 1. Applicant is without knowledge or information sufficient to form a belief as to paragraph 1 of the Notice of Opposition and therefore denies the same. 2. Applicant is without knowledge or information sufficient to form a belief as to paragraph 2 of the Notice of Opposition and therefore denies the same. 3. Applicant is without knowledge or information sufficient to form a belief as to paragraph 3 of the Notice of Opposition and therefore denies the same. 4. Applicant admits the allegations contained in paragraph 4 of the Notice of Opposition. 5. Opposer pleads inappropriate legal conclusions in paragraph 5 and therefore no response is required but Applicant nevertheless denies them. Applicant admits it filed the application seeking to register their mark. 6. Applicant admits the allegations contained in paragraph 6 of the Notice of Opposition. 7. Applicant admits its application was published in the Official Gazette of the USPTO on July 12, 2016 but Application is without knowledge or information sufficient to form a belief as to the other allegations contained paragraph 7 of the Notice of Opposition and therefore denies the same. 8. Applicant is without knowledge or information sufficient to form a belief as to paragraph 8 of the Notice of Opposition and therefore denies the same. 9. Denied. 10. Denied. 11. Denied. WHEREFORE, Applicant prays that the Notice of Opposition be dismissed with prejudice and costs be assessed against the Opposer. Page 2 of 9 AFFIRMATIVE DEFENSES For its affirmative defenses, Applicant states as follows: 1. Opposer fails to state a claim upon which relief can be granted because Opposer’s marks are not being used in commerce and cannot be used in commerce for the goods associated because they misapprehend the statutory definition of a trademark and should have registered their mark in association with glasses or vessels for alcoholic beverages and not the beverages themselves. 2. Applicant’s rights are senior to Opposer because their use in commerce precedes Opposer’s non use of their marks with their goods. 3. Opposer has not and will not be damaged by the continued registration of the Mark and therefore lacks standing oppose the application. 4. There is no likelihood of confusion because Applicant’s product is non-alcoholic, is not sold at Applebee’s nor does Applebee’s even sell cold brewed coffee. The products have very different distribution channels and retail customers will never be confused between non-alcoholic coffee and libations. 5. Opposer has acquiesced to competitive marks which have existed in the marketplace that use the exact same Mark or something substantially similar. They are now not in a position to claim confusion is likely given they have permitted many similar products with similar marks throughout the marketplace for many many years. See Acquiesence Documents, true and accurate copies attached and incorporated herein, as Group Exhibit B. WHEREFORE, Applicant prays that the Notice of Opposition be dismissed with prejudice. Page 3 of 9 COUNTERCLAIM TO CANCEL OPPOSER’S REGISTRATION NOS. 1,782,594 AND 4,292,476 Applicant believes it will be damaged by the continued registration of Opposer’s Marks, U.S Reg. Nos. 1,782,594 and 4,292,476 and hereby petitions for the cancellation of both marks in their entirety for the reasons set forth herein: Count I Non Use of Trademark U.S. Reg. Nos. 1,783,594 and 4,292,476 1. Opposer does not use a trademark in commerce because the manner in which Opposer uses “Brewtus” does not comport with the Lanham Act’s definition of trademark in 15 U.S. Code § 1127. 2. Opposer uses its mark as a signifier of size of beverage and not of the actual beverage or product. See Improper Use Examples, a true and accurate copy is attached as Group Exhibit A. 3. Opposer merely puts another branded item, such as Guinness beer, into the “brewtus” sized mug. See Exhibit A. 4. Opposer claims a trademark in International Class 32, for “beer” and International Class 33 for “prepared alcoholic cocktails” but does not actually do anything to those products to “identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown” because the source of those goods are the same as those available in any liquor store or home fridge. 5. In order for a phrase to be registrable, it must have some element of originality or Page 4 of 9 uniqueness that would render the expression capable of distinguishing applicant’s goods from like goods of others. 6. Thus, the real issue here is whether BREWTUS is capable of indicating origin, i.e., whether Opposer’s Marks are of such a nature that ordinary purchasers would be likely to consider that the phrase indicated such origin. Applicant asserts that the usage of Opposer’s Marks do not adequately serve to designate an origin or quality or identify or distinguish goods in any meaningful manner to be unique and therefore do not operate as registrable trademarks under the Lanham Act. 7. Accordingly, the registration should have been refused registration because it was not being used as a signifier of origin or quality of the actual alcoholic drink which is merely being served in a specific size glass (23 fluid ounces) and must be cancelled. Count III Void Ab Initio U.S. Reg. No. 1,783,594 8. Applicant re-pleads and incorporates the preceding Paragraphs 1-7 as this Paragraph 8. 9. Opposer could not have made sufficient use in commerce of their claimed mark for beer because it violates the statutory definitions for trademarks and use in commerce under the Lanham Act. 10. Thus, the registration should be cancelled for failure to adhere to 15 U.S.C. § 1052(a) because the underlying use application could never have supported use in commerce sufficient for registration and the specimens subsequently filed for renewals show that the mark is actually used for 23 fluid ounce beverage containers and not the beverages themselves which are merely commonly available alcoholic beverage brands merely poured into a “brewtus mug.” Page 5 of 9 11. A use-based application is void if the mark is not in use on the identified goods at the time of filing, regardless of whether the applicant understood the statutory requirement for use or intended to mislead the USPTO. Count IV Fraud on the USPTO U.S. Reg. No. 1,783,594 12. Applicant re-pleads and incorporates Paragraphs 1-11 above as this Paragraph 12. 13. Opposer filed a combined Section 8 and Section 9 Declaration of Use with the USPTO in connection with U.S. Reg. No. 1,783,594 on July 16, 2013. Opposer's Vice President of Franchise & International, Patrick Dandino, signed a sworn statement in connection with this Declaration stating that "the mark is in use in commerce on or in connection with the goods" identified in the Registration.