Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1047043 Filing date: 04/04/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91251483 Party Plaintiff Yarnell Ice Cream, LLC Correspondence DANIEL KEGAN Address KEGAN & KEGAN LTD 79 W MONROE ST #1310 CHICAGO, IL 60603-4931 UNITED STATES [email protected] 312-782-6495 Submission Motion to Amend Pleading/Amended Pleading Filer's Name Daniel Kegan Filer's email [email protected] Signature /daniel kegan/ Date 04/04/2020 Attachments 1 SbY-QuickB-mTmoAmend 2Apr2020pdf.pdf(128120 bytes ) 2 SbY-QuickB-TmoAmend 24Mar2020-QB.pdf(180989 bytes ) 3 SbY-QuickB-TmoAmend Exbts.pdf(4810439 bytes ) 4 SbY-QuickB-TmoAmend Red-4Apr2020.pdf(186621 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD YARNELL ICE CREAM, LLC ) GUILTLESS FRIES Opposer, ) Serial No. 88-294,467 v ) Filed 8 Feb 2019 QUICK BURGER, INC ) Published 18 Jun 2019 Applicant. ) Opposition 91,251,483 CONSENTED MOTION TO AMEND OPPOSITION NOTICE AND RESET CASE CALENDAR Opposer witH tHe explicit written consent of Applicant moves for leave to file Opposer’s Amended Notice of Opposition, and to reset tHe case calendar as if Discovery were to open as of tHe date of tHe Board’s order to grant leave and resetting tHe calendar. The Board, tHe Federal Rules of Civil Procedure, and tHe US Supreme Court all encourage leave to file an amended complaint Be freely given when justice requires, sucH as underlying facts or circumstances should Be included. Foman v Davis (371 US 178, 1962); Fed.R.Civ.P. 15(a)(2); TBMP 507.01(a)(2). Opposer can now tailor its Opposition Notice more directly to Applicant’s recent pre-opening activities and use of GUILTLESS, explicitly including notice of Opposer’s diverse foods marketed under its GUILT FREE Brand, and trademark registrations associated witH tHose diverse foods. Discovery Has only opened 17 March 2020. With the requested resetting of the case calendar as if Discovery were to open as of the date of the Board’s order to grant leave to file the Amended Notice of Opposition there is no prejudice to eitHer party and no material delay in tHe proceeding. Yarnell v Quick Burger • Tmo 91,251,483 • Guiltless Fries • Consented Motion Amend Page 1 Opposer suBmits tHe proposed Amended Notice of Opposition, its Exhibits, and a redlined version of tHe Amended Notice of Opposition, compared witH tHe original Notice of Opposition. Grant of tHe motions is respectfully requested, 2 April 2020 /Daniel Kegan/ Daniel Kegan <[email protected]> Jay Giusti KEGAN & KEGAN, LTD. Attorneys for Opposer Covid-19 Duration: 380 Green Bay Rd #3C Winnetka IL 60093-4051 847-386-7837 CERTIFICATE OF SERVICE. The undersigned certifies tHat a copy of tHis paper is being served By email on counsel for Applicant, Jenny Shin, [email protected], 28600 Mercedes St #100, Temecula CA 92590 on the Below date. 4 April 2020 Signed /daniel kegan/ Daniel Kegan Yarnell v Quick Burger • Tmo 91,251,483 • Guiltless Fries • Consented Motion Amend Page 2 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD YARNELL ICE CREAM, LLC ) GUILTLESS FRIES Opposer, ) Serial No. 88-294,467 v ) Filed 8 Feb 2019 QUICK BURGER, INC ) Published 18 Jun 2019 Applicant. ) Opposition 91,251,483 AMENDED NOTICE OF OPPOSITION Yarnell Ice Cream, LLC, a Delaware LLC, witH Business address at 1133 W 35th St, Chicago IL 60609 (“Yarnell,” “Opposer,” or “Registrant”) believes that it will Be damaged By registration of tHe mark sHown above, Sn 88-294,467, Because the mark is likely to cause confusion, mistake, and/or deception with Opposer’s family of GUILT FREE trademarks for foods and restaurant services. Applicant, Quick Burger, Inc asserts By its application its Business address is 44261 Phelps St, Temecula CA 92592. Opposer appoints as its attorneys in tHis opposition Daniel L Kegan and Jay R Giusti, attorneys duly licensed By tHe Supreme Court of tHe State of Illinois, whose post office addresses are 79 W Monroe St #1310, CHicago IL 60603-4931. All communications are to Be Held witH lead attorney Daniel Kegan. As grounds for opposition, Opposer alleges tHe following. 1. Opposer owns tHe trademark GUILT FREE for various foods and services, including frozen confections, ice cream, restaurant services, and Baked goods. 2. Opposer owns tHe valid incontestaBle United States Trademark Registration 2,120,649, issued 9 December 1997, for GUILT FREE for frozen Yarnell v Quick Burger, Inc • Sn 88-294,467 • Guiltless Fries • Amended Opposition Notice 91,251,483 Page 1 confections, witH first use at least as early as SeptemBer 1996. (See Exhibit 1, Registration, and ExHiBit 2, TESS report). 3. Opposer owns tHe valid incontestaBle United States Trademark Registration 2,316,804, issued 8 February 2000, for GUILT FREE for frozen dairy confections. (See ExHiBit 3, Registration, and ExHiBit 4, TESS report). 4. Opposer owns the valid incontestaBle United States Trademark Registration 2,367,307, issued 18 July 2000, for GUILT FREE for restaurant services etc., witH first use at least as early as 1991. (See ExHiBit 5, Registration, and ExHiBit 6, TESS report, and ExHibit 7, Recorded Assignment R/F 4713/0742). 5. Opposer owns tHe valid United States Trademark Registration 5,931,931, issued 10 DecemBer 2019, for GUILT FREE for Bakery goods, with first use at least as early as 22 May 2019. (See ExHiBit 8, Registration, and ExHiBit 9, TESS report). 6. Opposer, directly, or through licensees inuring goodwill to the Benefit of Yarnell, has used its GUILT FREE trademarks for foods since at least as early as SeptemBer 1996, all of wHicH are entitled to common law trademark protection, and Has not abandoned the marks. 7. Opposer or its licensees Have used its GUILT FREE trademark, typically in a source-indicative distinctive stylized text, on diverse foods and services, including: Frozen dairy confections, Frozen confections, Restaurant services, Bakery goods, Snack bars, Peanut butter; Catsup, and barbeque sauce, Rolls dougHnuts, muffins, cookies, CHocolate pies, Jams, jellies, butter, margarine, eggs, and toppings, namely dairy-based whipped toppings Yarnell v Quick Burger, Inc • Sn 88-294,467 • Guiltless Fries • Amended Opposition Notice 91,251,483 Page 2 and non-dairy based whipped toppings; cocoa, gravies puddings and dairy- based desserts; soft drinks, namely, non-carBonated soft drinks, Processed meat, Non-dairy dips, Processed nuts, Toppings, namely, fruit toppings, Not frozen yogurt and egg nog, Dips, namely dairy-based dips, Cottage cHeese, sour cream, and milk, Toppings, namely, chocolate syrup and fudge topping, Cakes, candy, pies, namely fruit pies, dairy-based spreads and cheese; Cheese cakes, syrup, namely, cHocolate syrup and taBle syrup, cake frosting, sugar suBstitutes, pizza, salad dressing, and GUILT FREE CARB AWARE for Frozen confections and frozen dairy. Opposer's predecessor and its licensees may Have used the GUILT FREE mark on additional goods and services (See ExHiBit 10 selections). 8. Yarnell is tHe owner of federal registrations 2,065,990 (dips); 2,096,125 (cottage cheese, sour cream, milk, frozen yogurt); 2,099,328 (yogurt, eggs); 2,120,649 (Frozen confections); 2,172,033 (cakes, candy, pies—fruit pies); 2,179,680 (toppings, chocolate syrup, fudge topping); 2,181,580 (soft drinks, pizza, mayonnaise, salad dressing, cHocolate toppings, cHocolate syrup, table syrup, cheese cakes, cake frostings, sugar suBstitutes, dairy- based spreads and cheese), 2,189,581 (non-dairy dips); 2,189,588 (rolls, doughnuts, muffins, cookies); 2,192,459 (processed meat); 2,200,081 (processed nuts); 2,200,109 (peanut Butter, catsup, Barbeque sauce); 2,205,913 (soft drinks, cocoa, gravies, puddings, dairy-based desserts, eggs, jams, jellies, Butter, margarine, chocolate pudding, toppings); 2,215,013 (fruit toppings); 2,226,444 (chocolate pies); 2,36,804 (frozen dairy confections). 9. Opposer’s GUILT FREE mark for food is associated witH a single source. Yarnell v Quick Burger, Inc • Sn 88-294,467 • Guiltless Fries • Amended Opposition Notice 91,251,483 Page 3 10. Opposer’s GUILT FREE mark for food is distinctive. 11. About February 2012 the assets of Opposer's predecessor Yarnell Ice Cream, Inc. were purcHased from Yarnell's Bankruptcy estate By an affiliate of Schulze and Burch Biscuit Company (S&B). Included in the purchased assets were trademarks including common law trademarks, trademark registrations, goodwill, and manufacturing facilities. 12. Opposer Yarnell Ice Cream, LLC and ScHulze and BurcH Biscuit Company received extensive puBlicity for S&B's rescue of Yarnell Ice Cream Brand and products. 13. S&B, and its predecessors, have manufactured, marketed, and sold various bakery goods since about 1923. 14. In addition to marketing food products under its own Brands, S&B manufactures and packages food products for otHer companies. 15. Applicant Has applied to register GUILTLESS FRIES for Class 29, FrencH fried potatoes, FrencH fries. 16. Applicant has disclaimed “fries” as descriptive of its goods, and thus FRIES lacks source indicating significance. 17. In tHe United States, “FrencH fried potatoes” and “FrencH fries” are synonyms for tHe same food product (ExHiBit 71). 18. Typical fast food Burger restaurants also serve desserts, including ice cream, soft serve, and otHer frozen confections (for example ExHiBits 72 & 73). 19. Yarnell Has marketed GUILT FREE ketcHup (ExHiBit 64). Yarnell v Quick Burger, Inc • Sn 88-294,467 • Guiltless Fries • Amended Opposition Notice 91,251,483 Page 4 20. Yarnell Has marketed GUILT FREE BarBeque sauce (ExHiBit 64). 21. Yarnell Has marketed GUILT FREE pizza (ExHiBit 65). 22. Yarnell Has marketed GUILT FREE eggs (ExHiBit 66). 23. Yarnell Has marketed organic, vegetarian non-dairy dips. 24. Some vendors sell both Yarnell’s frozen confections and French fries.