Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA199142
`ESTTA Tracking number:
`03/18/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181757
`Defendant
`VillageProfile.com, Inc.
`P STEPHEN FARDY
`SWANSON, MARTIN & BELL LLP
`330 N WABASH STE 3300, ONE IBM PLZ
`CHICAGO, IL 60611
`UNITED STATES
`sfardy@smbtrials.com
`Answer
`Keely Lewis Wise
`klewis@smbtrials.com
`/KLW/
`03/18/2008
`Answer.pdf ( 14 pages )(125836 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA199142
`ESTTA Tracking number:
`03/18/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181757
`Defendant
`VillageProfile.com, Inc.
`P STEPHEN FARDY
`SWANSON, MARTIN & BELL LLP
`330 N WABASH STE 3300, ONE IBM PLZ
`CHICAGO, IL 60611
`UNITED STATES
`sfardy@smbtrials.com
`Answer
`Keely Lewis Wise
`klewis@smbtrials.com
`/KLW/
`03/18/2008
`Answer.pdf ( 14 pages )(125836 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Collegetown Relocation, LLC )
`
`vs.
`Vi|lageProfile.com, Inc.
`
`;
`;
`
`Opposition No. 91181757
`
`ANSWER TO OPPOSITION
`
`Applicant, VillageProfile.com,
`
`Inc.
`
`(hereinafter
`
`“Village
`
`Profile”
`
`or
`
`“Applicant”), who resides at the address of 33 North Geneva, Elgin,
`
`Illinois
`
`60172, and filed trademark applications for
`
`the marks COLLEGE TOWN
`
`PROFILE and COLLEGETOWNPROF|LE.COM, serial numbers 78764020 and
`
`78763994, respectively, hereby submits an answer to the opposition filed on
`
`January 8, 2008 by Collegetown Relocation, LLC (hereinafter
`
`“CR” or
`
`“Opposer”), having a place of business at 217 Nassau Street, Princeton, New
`
`Jersey 08542. The Answer to the Opposition is as follows:
`
`I.
`
`Facts Common to Both Oppositions
`
`1.
`
`The word COLLEGETOWN has been used by Opposer or
`
`its
`
`predecessors in interest since 1995 to identify its business, and Opposer
`
`has, since April 20, 2000, done business under the registered name
`
`“COLLEGETOWN.”
`
`ANSWER: Applicant lacks knowledge or information sufficient to form a
`
`belief as to the truth or falsity of the allegations set forth in this paragraph and,
`
`therefore, denies said allegations and demands strict proof thereof.
`
`
`
`Opposer is the owner of several trademark registrations comprising the
`
`term “COLLEGETOWN”:
`
`A.
`
`US REG. 2011820 for COLLEGETOWN in class 42 for “providing
`
`multiple—user access to a global computer information network for
`
`the transfer and dissemination of a wide range of
`
`information
`
`involving education and educational institutions.”
`
`US REG. 2604309 for COLLEGETOWN in class 41 for provision of
`
`information via a computer network in fields of cultural activities,
`
`community events, college campus events arts and entertainment,
`
`civic organizations, fund raisers and recreation.
`
`US REG. 2569674 for COLLEGETOWN for providing a website on
`
`global computer networks featuring information in the field of real
`
`estate relocation—related services and resources available to
`
`persons and companies moving to a new location; namely goods
`
`and services, advertising, consumer
`
`information, governmental
`
`services, public libraries, newspapers, child care, k—12 education,
`
`employment and senior resources.
`
`US REG. 2714706 for COLLEGETOWN for pencils
`
`US REG. 2635839 for COLLEGETOWNS.COM for provision of
`
`information in the field of real estate and related services, namely
`
`availability of of real estate for lease and/or purchase, form rental
`
`applications, mortgage and insurance information, and moving and
`
`storage information via on line communications network.
`
`
`
`ANSWER: Applicant lacks knowledge or information sufficient to form a
`
`belief as to the truth or falsity of the allegations as stated in this paragraph,
`
`including all subparagraphs, and, therefore, denies said allegations as stated and
`
`demands strict proof thereof. Answering further, Applicant admits that the United
`
`States Patent and Trademark Office records indicate that CR owns trademark
`
`registration numbers 2011820, 2604309, 2569674, 2714706 and 2635839.
`
`3.
`
`All of the foregoing uses by Opposer of the term COLLEGETOWN predate
`
`any use by Applicant of the marks which are the subject of this opposition
`
`proceeding.
`
`ANSWER: Applicant lacks knowledge or information sufficient to form a
`
`belief as to the truth or falsity of the allegations set forth in this paragraph and,
`
`therefore, denies said allegations and demands strict proof thereof.
`
`ll.
`
`Count I
`
`O osition to A lication for Colle e Town Profile Serial No. 78764020
`
`1.
`
`Village Profile Inc. (“Applicant”), has submitted an application for the mark
`
`“college town profile” (Serial Number 78764020) in international Class 35
`
`for providing marketing services for others including through distribution of
`
`printed, electronic audio and video materials, and providing searchable
`
`online retail store services for many goods and services, and for certain
`
`printed materials in Class 16 comprising, inter alia, “community guides,
`
`community
`
`directories
`
`and
`
`publications
`
`providing
`
`information
`
`on
`
`community schools, businesses and organizations, municipal services and
`
`local economic development issues.”
`
`
`
`ANSWER: Applicant admits that it has submitted an application for the
`
`mark “College Town Profile,” Serial Number 78764020, in International Classes
`
`16 and 35. Applicant denies that Opposer has accurately stated Applicant’s
`
`goods and services and, therefore, denies the remaining allegations as stated in
`
`this paragraph.
`
`2.
`
`Although Applicant described its services in general terms, the services
`
`which Applicant provides under its marks are virtually identical
`
`to the
`
`services provided by Opposer, and the specimens submitted by Applicant
`
`support this contention.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`Applicant’s specimens are annexed hereto as Exhibits 1, 2 and 3. Exhibit
`
`1, a table of contents published by Applicant for Wayne State University
`
`(an educational institution) shows that Applicant publishes “a wide range
`
`of
`
`information involving education and educational
`
`institutions” and
`
`information about local communities including local education, health care,
`
`arts and entertainment and community organizations. These are all
`
`services covered by Opposer’s trademark registrations.
`
`ANSWER: Applicant admits that Opposer annexed, as Exhibits 1, 2 and
`
`3 to the Notice of Opposition, three specimens submitted by Applicant in support
`
`of registration of its proposed mark “College Town Profile.” Applicant denies that
`
`Exhibit 1
`
`is a table of contents published by Applicant for Wayne State University,
`
`but admits that Exhibit 1
`
`is a table of contents published by Applicant for Wright
`
`
`
`State University. Applicant denies the remaining allegations set forth in this
`
`paragraph.
`
`4.
`
`Exhibit 2 is a screen shot from a web page
`
`which
`
`shows Applicant’s mark. A search of the web address in October, 2007,
`
`where
`
`the
`
`specimen
`
`is
`
`shown
`
`to
`
`be
`
`located
`
`(www.vpmgobile/webpromos/release.html) did not
`
`turn up the subject
`
`specimen, so the subject specimen is apparently no longer in use.
`
`ANSWER: Applicant denies that Exhibit 2 to the Notice of Opposition is
`
`a screen shot from the web page www.vgmpbiie.us, but admits that Exhibit 2 to
`
`the Notice of Opposition is a screen shot from the web page vwvw.vgmobiie.us
`
`displaying Applicant’s mark “College Town Profile.” Applicant lacks knowledge or
`
`information sufficient
`
`to form a belief as to the truth or falsity of Opposer’s
`
`allegation that its search of the web address in October 2007 did not turn up the
`
`subject specimen. Applicant admits that it no longer uses its mark on the website
`
`but states that it has continuously used and currently uses its
`
`mark elsewhere,
`
`including, as of the date of this Answer, on the website
`
`www.collegetownprofile.com. Applicant denies the remaining allegations set
`
`forth in this paragraph.
`
`5.
`
`Exhibit 3 is a representation of a CD which apparently contains Applicant’s
`
`mobile maps.
`
`ANSWER: Applicant denies the allegations as stated in this paragraph.
`
`Further answering, Applicant admits that Exhibit 3 to the Notice of Opposition is a
`
`representation of a CD that contains Applicant’s mobile maps.
`
`
`
`6.
`
`Applicant has failed to use the mark “College Town Profile” in Interstate
`
`Commerce. None of the specimens in Exhibits 1, 2 or 3, nor Applicant’s
`
`actual website (see Exhibit 4) use the phrase “College Town Profile” as a
`
`trademark, but only as a trade name or business name.
`
`If the matter for
`
`which registration is requested is merely a trade name, registration must
`
`be refused both on the Principal Register and on the Supplemental
`
`Register.
`
`(TMEP 1202.01). Specimens submitted by applicant show the
`
`words “college town profile” being used as a corporate name (College
`
`Town Profile, Inc.) or as a subject in a sentence (“College Town Profile
`
`brings .
`
`.
`
`. College Town Profile introduces .
`
`.
`
`.
`
`“College Town Profile’s
`
`new convergence publishing program”).
`
`If Applicant uses the subject
`
`phrase “merely as a commercial, business, or trade name serving to
`
`identify applicant as a viable business entity,” it
`
`is not registrable as a
`
`trademark.
`
`(TMEP 1202.01, citing In re Lytle Engineering & Mfg. Co., 125
`
`USPQ 308 (TTAB 1960)).
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`To the extent the allegations in this paragraph allege legal conclusions or require
`
`Applicant to admit or deny legal principles, no answer is required or provided.
`
`7.
`
`Applicant has merely added the generic word “profile” to Opposer’s
`
`registered marks. Applicant uses the term “profile” generically, and
`
`describes its services as “The production of Campus/Community profiles
`
`and view books for colleges and universities across the US” (see Exhibit
`
`5, a reprint of the “products and services” section of Applicant’s website).
`
`
`
`Applicant is,
`
`in fact, providing summary descriptions and reports of college
`
`towns.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`8.
`
`Applicant has misused the ® symbol
`
`in connection with college town
`
`profile. See Exhibit 6, which is a reprint from Applicant’s website taken on
`
`January 4, 2008, clearly showing this misuse.
`
`ANSWER: Applicant lacks knowledge or information sufficient to form a
`
`belief as to whether Exhibit 6 is a true and accurate reprint or as to what date on
`
`which the alleged reprint was made and, therefore, denies said allegations in this
`
`paragraph and demands strict proof thereof. Answering further, Applicant admits
`
`that Exhibit 6 appears to be a reprint from Applicant’s website prematurely using
`
`the ® symbol
`
`in connection with Applicant’s mark “College Town Profile.”
`
`Applicant denies that any premature use of the ® symbol was an intentional
`
`misuse of the mark and states that any premature use of the ® symbol was an
`
`unintentional oversight.
`
`Ill.
`
`Count 2
`
`Opposition to Co||egetownprofile.com (Serial No. 78763994)
`
`1.
`
`Opposer repeats and realleges each point in Count 1 as though set forth
`
`herein at length.
`
`ANSWER: Applicant repeats and realleges its Answers provided in
`
`response to the allegations contained in Count 1 of the Notice of Opposition as
`
`though fully set forth herein.
`
`
`
`Applicant, Village Profile Inc. has submitted an application for the mark
`
`“collegetownprofile.com” (Serial Number 78763994) in international Class
`
`35 for providing marketing services
`
`for others
`
`including through
`
`distribution of printed, electronic audio and video materials, and providing
`
`searchable online retail store services for many goods and services.
`
`ANSWER: Applicant admits that it has submitted an application for the
`
`mark
`
`“Collegetownprofile.com,”
`
`Serial
`
`Number 78763994,
`
`in
`
`International
`
`Classes 16 and 35.
`
`Applicant denies that Opposer has accurately stated
`
`Applicant’s goods and services and, therefore, denies the remaining allegations
`
`as stated in this paragraph.
`
`3.
`
`Although Applicant described its services in general terms, the services
`
`which Applicant provides under its marks are Applicant’s services are
`
`virtually identical to the services provided by COLLEGETOWN, and the
`
`specimens submitted by Applicant support this contention.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`Applicant’s specimens are annexed hereto as Exhibits 1 and 2. Exhibit 1,
`
`a table of contents published by Applicant for Wayne State University (an
`
`educational
`
`institution) shows that Applicant publishes “a wide range of
`
`information
`
`involving
`
`education
`
`and
`
`educational
`
`institutions”
`
`and
`
`information about local communities including local education, health care,
`
`arts and entertainment and community organizations. These are all
`
`services covered by Opposer’s trademark registrations.
`
`
`
`ANSWER: Applicant admits that Opposer annexed, as Exhibits 1 and 2
`
`to the Notice of Opposition, two specimens submitted by Applicant in support of
`
`registration of its proposed mark “Collegetownprofile.com.” Applicant denies that
`
`Exhibit 1
`
`is a table of contents published by Applicant for Wayne State University,
`
`but admits that Exhibit 1
`
`is a table of contents published by Applicant for Wright
`
`State University. Applicant denies the remaining allegations in this paragraph.
`
`5.
`
`Applicant has failed to use the mark “Collegetownprofile.com” in Interstate
`
`Commerce.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`5A.
`
`Exhibit 2 is a screen shot from a web page (www.vpmpbile.us) which
`
`shows Applicant’s mark on a button which apparently linked to the
`
`services Applicant provides on its website (wwwcoliegetown,grofiEes.com.)
`
`A search in October of 2007 of the web address where the specimen is
`
`located (wwwvpmgobile/webpromos/release,html) did not
`
`turn up the
`
`subject specimen, so the subject specimen is apparently no longer in use.
`
`ANSWER: Applicant denies the allegations as stated in this paragraph.
`
`Applicant denies that Exhibit 2 to the Notice of Opposition is a screen shot from
`
`the web page www.vpmpbiEe,us. Applicant admits that Exhibit 2 to the Notice of
`
`Opposition is a screen shot
`
`from the webpage
`
`showing
`
`Applicant’s mark used in connection with a link to services provided in connection
`
`with Applicant’s mark. Applicant lacks knowledge or information sufficient to form
`
`a belief as to the truth or falsity of Opposer’s allegation that its search of the web
`
`address in October 2007 did not turn up the subject specimen. Applicant admits
`
`
`
`that it no longer uses its mark on the website www.vpmobiie.us, but states that it
`
`has continuously used and currently uses its mark elsewhere. Applicant denies
`
`the remaining allegations set forth in this paragraph.
`
`5B.
`
`Neither the specimen usage nor Applicant’s actual website use the phrase
`
`“collegetownprofile.com” as a trademark, but only as an informational
`
`indication of the domain name address used to access a web site.
`
`(see
`
`Exhibit 4, a screen shot of Applicant’s home page). The Trademark Trial
`
`and Appeal Board has held that a term that only serves to identify the
`
`applicant’s domain name or the location on the Internet where the
`
`applicant’s web site appears, and does not separately identify applicant’s
`
`services, does
`
`not
`
`function
`
`as
`
`a
`
`service mark.
`
`See USPTO
`
`EXAMINATION GUIDE NO. 2-99, September 29,
`
`1999,
`
`“MARKS
`
` COMPOSED IN WHOLE OR IN PART OF DOMAIN NAMES.” And
`
`TMEP 1215.02
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`To the extent the allegations in this paragraph allege legal conclusions or require
`
`Applicant to admit or deny legal principles, no answer is required or provided.
`
`6.
`
`Applicant has merely added the descriptive word “profile” and the internet
`
`designator “.com” to Opposer’s registered marks.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`Applicant uses the term “profile” generically, and describes its services as
`
`“The production of Campus/Community profiles and view books for
`
`10
`
`
`
`colleges and universities across the US” (see Exhibit 5, an October 2007
`
`printout of the “products and services” section of Applicant’s website).
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`The term “profile” is used generically in this service description, the term
`
`“collegetownprofile.com” does not appear anywhere in any manner in
`
`connection with the description of Applicant’s services, but only as the
`
`internet address in the upper left hand corner.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`IV.
`
`Conclusion
`
`Applicant’s marks, “college town profile” and “collegetownprofile.com” are
`
`substantially equivalent to Opposer’s registered service marks and its
`
`longstanding business name “COLLEGETOWN” and if Applicant were
`
`permitted
`
`to
`
`register
`
`and
`
`use
`
`“college
`
`town
`
`profile”
`
`and
`
`“collegetownprofile.com” confusion in
`
`the trade would be likely, and
`
`customers and potential customers would be likely to consider Opposer as
`
`the source of the services and products offered by Applicant, resulting in
`
`the loss of revenues and concomitant damage and injury to Opposer.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`If Applicant is granted the registrations herein opposed, Applicant would
`
`obtain at least a prima facie exclusive right to the use of such marks,
`
`resulting in the loss of revenues and concomitant damage and injury to
`
`Opposer.
`
`ANSWER: Applicant denies the allegations set forth in this paragraph.
`
`11
`
`
`
`DEFENSES
`
`In further answer to CR’s Notice of Opposition, Applicant asserts that:
`
`Opposer fails to state claims upon which relief may be granted.
`
`Opposer fails to establish a likelihood of confusion.
`
`Opposer’s claims are barred in whole or in part by the doctrine of
`
`1.
`
`2.
`
`3.
`
`laches.
`
`4.
`
`Opposer’s claims are barred in whole or in part by the doctrine of
`
`acquiescence.
`
`5.
`
`6.
`
`Opposer has failed to use its marks in commerce.
`
`Applicant has continuously used its marks in commerce on a
`
`variety of specimens since its stated dates of first use. The fact that Applicant
`
`currently uses its marks on specimens not submitted to the USPTO, and may no
`
`longer use the original specimen(s) submitted to the USPTO,
`
`is irrelevant and
`
`should not serve to defeat Applicant’s right to registration, as long as Applicant
`
`has engaged in continuous use of its marks in commerce.
`
`7.
`
`Applicant’s misuse of the ® symbol, assuming arguendo that
`
`misuse is proven, was not occasioned by an intent to deceive the purchasing
`
`public or others in trade into believing the mark was registered, but was merely
`
`an unintentional error in application of the ® symbol. As such, said misuse
`
`should not defeat applicant’s right to registration.
`
`8.
`
`Applicant reserves the right to rely upon any and all other valid
`
`defenses which may be developed or become known through discovery and/or
`
`the testimony periods in this opposition proceeding.
`
`12
`
`
`
`WHEREFORE, having fully answered the Notice of Opposition, Applicant,
`
`VillageProfile.com,
`
`lnc., hereby respectfully requests
`
`that
`
`the Notice of
`
`Opposition be in all respects dismissed with prejudice, and the Office issue a
`
`Notice of Allowance to Applicant for its marks, Serial Numbers 78764020 and
`
`78763994.
`
`Respectfully submitted,
`
`/KLW/
`
`An attorney for Applicant
`
`Date: March 18, 2008
`
`P. Stephen Fardy
`Keely Lewis Wise
`Swanson, Martin & Bell, LLP
`
`330 North Wabash Avenue, Suite 3300
`Chicago, Illinois 60611
`(312) 321-9100 (Tel)
`(312) 321 -0990 (Fax)
`sfardy@smbtrials.com
`klewis
`smbtrials.com
`
`Attorneys for Applicant
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing ANSWER
`
`TO OPPOSITION and AFFIRMATIVE DEFENSES was served upon Opposer by
`
`mailing a true and correct copy of same via First Class Mail on March 19, 2008,
`
`postage prepaid, to Opposer’s counsel of record at the following address:
`
`Robert D. Frawley, Esq.
`Law Offices of Robert D. Frawley
`64 Maple Avenue
`Morristown, New Jersey 07960
`
`/KLW/
`
`Keely Lewis Wise
`An attorney for Applicant
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