throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA190968
`ESTTA Tracking number:
`02/06/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181567
`Defendant
`LF, LLC
`Dickson M. Lupo
`Moore & Van Allen, PLLC
`Suite 4700 100 North Tryon Street
`Charlotte, NC 28202-4003
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`dicklupo@mvalaw.com
`Answer
`J. Mark Wilson
`markwilson@mvalaw.com, jennalearoyd@mvalaw.com
`/J. Mark Wilson/
`02/06/2008
`DURAWORX-Greapo-Answer-Opp#91181567.pdf ( 8 pages )(21724 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`GREAPO POWER TOOLS (SUZHOU) CO., LTD. )
`
`V.
`LF, LLC
`
`Opposer
`
`Applicant
`
`5
`5
`5
`5
`
`Opposition No. 91181567
`Application Serial No. 78/931477
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
`
`Please recognize as counsel for Applicant LF, LLC in this proceeding, J. Mark Wilson of
`
`the law firm Moore & Van Allen PLLC, 100 North Tryon Street, Suite 4700, Charlotte, North
`
`Carolina 28202-4003, telephone 704-331-1177, facsin1ile 704-339-5981, email
`
`markwilson@mValaw.com.
`
`Pursuant to 37 C.F.R. § 2.106, Applicant LF, LLC hereby answers the Notice of
`
`Opposition submitted by Opposer Greapo Power Tools (Suzhou) Co., Ltd., as follows:
`
`Applicant denies Opposer’s statement in the preamble that it would be damaged by the
`
`registration of Applicant’s trademarks.
`
`1.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the aVerments in the paragraph, and the same are therefore denied.
`
`2.
`
`Applicant admits that it is a limited liability company pursuant to the laws of the
`
`State of Delaware and has a business address at 2601 Annand DriVe, Suite 17, Wilmington,
`
`Delaware 19808.
`
`3.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the aVerments in the paragraph, and the same are therefore denied.
`
`CHAR2\10690511V1
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`

`
`4.
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`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the aVerments in the paragraph, and the same are therefore denied.
`
`5.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the aVerments in the paragraph, and the same are therefore denied.
`
`6.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the aVerments in the paragraph, and the same are therefore denied.
`
`7.
`
`8.
`
`Admitted.
`
`Applicant admits that its attorney of record and correspondence address of record
`
`is Dickson M. Lupo, Moore & Van Allen, PLLC, Suite 4700, 100 North Tryon Street, Charlotte,
`
`North Carolina 28202-4003.
`
`9.
`
`Applicant admits that it filed pending application Serial No. 78/931477 with the
`
`USPTO on July 18, 2006. Except as expressly admitted herein, the allegations in this paragraph
`
`are denied.
`
`10.
`
`Denied.
`
`11.
`
`Applicant admits that its pending application for the mark DURAWORX
`
`incorporates the letters “W,” “O,” “R,” and “X,” which letters also appear in Opposer’s pending
`
`application for the purported mark WORX. Except as expressly admitted herein, the allegations
`
`in this paragraph are denied.
`
`12.
`
`Denied.
`
`l3.
`
`Denied.
`
`14.
`
`Applicant admits that registration of its mark confers rights upon Applicant
`
`pursuant to the trademark laws of the United States. Otherwise, Applicant denies the aVerments
`
`in this paragraph.
`
`CHAR2\1069051v1
`
`2
`
`

`
`15.
`
`Denied.
`
`16.
`
`Denied.
`
`17.
`
`Applicant admits that its pending application for the mark DURAWORX
`
`incorporates the letters “W,” “O,” “R,” and “X,” which letters also appear in the purported mark
`
`that is the subject of Opposer’s Registration No. 2932683. Except as expressly admitted herein,
`
`the allegations in this paragraph are denied.
`
`1 8.
`
`Denied.
`
`19.
`
`Denied.
`
`20.
`
`Applicant admits that registration of its mark confers rights upon Applicant
`
`pursuant to the trademark laws of the United States. Otherwise, Applicant denies the aVerments
`
`in this paragraph.
`
`21.
`
`Denied.
`
`22.
`
`Denied.
`
`23.
`
`Applicant admits that its pending application for the mark DURAWORX
`
`incorporates the letters “W,” “O,” “R,” and “X,” which letters also appear in the purported mark
`
`that is the subject of Opposer’s Registration No. 3200297. Except as expressly admitted herein,
`
`the allegations in this paragraph are denied.
`
`24.
`
`Denied.
`
`25.
`
`Denied.
`
`26.
`
`Applicant admits that registration of its mark confers rights upon Applicant
`
`pursuant to the trademark laws of the United States. Otherwise, Applicant denies the aVerments
`
`in this paragraph.
`
`27.
`
`Denied.
`
`CHAR2\1069051v1
`
`3
`
`

`
`28.
`
`Denied.
`
`29.
`
`Applicant admits that its pending application for the mark DURAWORX
`
`incorporates the letters “W,” “O,” “R,” and “X,” which letters also appear in the purported mark
`
`that is the subject of Opposer’s Registration No. 3102904. Except as expressly admitted herein,
`
`the allegations in this paragraph are denied.
`
`30.
`
`Denied.
`
`3 l .
`
`Denied.
`
`32.
`
`Applicant admits that registration of its mark confers rights upon Applicant
`
`pursuant to the trademark laws of the United States. Otherwise, Applicant denies the aVerments
`
`in this paragraph.
`
`33.
`
`Denied.
`
`34.
`
`Denied.
`
`(Remainder of this page intentionally left blank)
`
`CHAR2\1069051v1
`
`4
`
`

`
`AFFIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`Opposer’s averments lack substantial merit and the opposition should be dismissed in its
`
`entirety.
`
`Second Affirmative Defense
`
`The Notice of Opposition fails to state a basis for the relief sought.
`
`Third Affirmative Defense
`
`Opposer lacks sufficient rights in the purported marks to maintain its opposition to
`
`Applicant’ s registration.
`
`Fourth Affirmative Defense
`
`Opposer is barred from opposing Applicant’s registration under the doctrines of estoppel,
`
`release, license, Waiver and/or unclean hands.
`
`Fifth Affirmative Defense
`
`Opposer lacks standing to oppose Applicant’s application because Opposer is not likely
`
`to be damaged or injured by registration and use of the mark in dispute.
`
`Sixth Affirmative Defense
`
`There is no likelihood of confusion, mistake or deception between Applicant’s mark and
`
`Opposer’s purported marks.
`
`(Remainder of this page intentionally left blank)
`
`CHAR2\1069051v1
`
`5
`
`

`
`APPLICANT’S ALTERNATIVE PLEADING
`
`PURSUANT TO 15 U.S.C.
`
`1068
`
`1.
`
`2.
`
`Opposer’s opposition of the subject application should be denied in its entirety.
`
`Pleading in the alternative, as is permitted, Applicant requests that, if the Board
`
`ultimately finds that Applicant is not entitled to registration of the subject mark in absence of a
`
`restriction, the Board approve and enter such restriction.
`
`3.
`
`Opposer bases its opposition on pending application Serial No. 78/691191 for the
`
`purported mark WORX for certain goods in International Classes 7 and 8; Registration No.
`
`2932683 for the purported mark WORX & Design for certain goods in International Class 7;
`
`Registration No. 3200297 for the purported mark WORX & Design for certain goods in
`
`International Class 8; and Registration No. 3102904 for the purported mark WORX & Design
`
`for certain goods in International Class 7.
`
`4.
`
`Opposer opposes application Serial No. 78/931477 for all goods identified in
`
`International Classes 7 and 22.
`
`5.
`
`Without limiting Applicant’s pleading in the alternative, if the Board ultimately
`
`finds that Applicant is not entitled to registration of the subject mark unless certain goods or
`
`classes are deleted from the subject application, then Applicant requests that the Board make the
`
`required deletion, approve the application, and otherwise dismiss the opposition.
`
`6.
`
`Moreover, if the Board ultimately finds that any other or additional refinement of
`
`the listing of goods or classes is necessary, Applicant requests that the Board enter such
`
`amendment as necessary for the Board to approve the amended application and otherwise reject
`
`the opposition.
`
`CHAR2\1069051v1
`
`6
`
`

`
`7.
`
`If, on the other hand, the Board ultimately finds, as Applicant contends, that no
`
`amendments are necessary, Applicant requests that the Board approVe the subject application
`
`with its present listings of goods and classes and reject the opposition in its entirety.
`
`WHEREFORE, Applicant LF, LLC requests that the Board dismiss Opposer Greapo
`
`Power Tools (Suzhou) Co., Ltd’s Notice of Opposition filed in this proceeding and that its
`
`registrations be issued forthwith.
`
`Respectfully submitted, this 6th day of February, 2008.
`
`/J. Mark Wilson/
`
`J. Mark Wilson
`
`MOORE & VAN ALLEN PLLC
`
`Suite 4700
`
`100 North Tryon Street
`Charlotte, North Carolina 28202-4003
`
`Telephone:
`Facsimile:
`
`704-33l-l 177
`704-339-5981
`
`Email: markwilson@mValaW.com
`
`Attorney for Applicant LF, LLC
`
`CHAR2\1069051v1
`
`7
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing APPLICANT’S ANSWER TO NOTICE OF OPPOSITION Was
`
`serVed on Opposer by mailing a copy of same by U.S. first class mail, postage prepaid, on the 6th
`
`day of February, 2008, to Opposer’s counsel, addressed as follows:
`
`Scot A. DuVall, Esq.
`MIDDLETON REUTLINGER
`
`2500 Brown & Williamson Tower
`
`Louisville, Kentucky 40202
`
`/J. Mark Wilson/
`
`J. Mark Wilson
`
`CHAR2\1069051v1
`
`8

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