Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA328666
`ESTTA Tracking number:
`01/25/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193046
`Defendant
`Secure Medical, Inc.
`KENNETH C. BOOTH
`BOOTH UDALL, PLC
`1155 W. RIO SALADO PKWY SUITE 101
`TEMPE, AZ 85281-2826
`UNITED STATES
`trademark@boothudall.com
`Answer
`Kenneth C. Booth
`trademark@boothudall.com
`/Kenneth C. Booth/
`01/25/2010
`Answer to Notice of Opposition.pdf ( 18 pages )(72567 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`In re Application Serial No.: 77/519,559
`For the Mark: EDRUGSTORE.MD
`Date Published: October 27, 2009
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`INTOUCH COMMUNICATIONS, LLC,
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`Applicant.
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`v.
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`SECURE MEDICAL, INC.,
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`Opposition No.
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`91193046
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`Applicant’s Answer to Notice of Opposition
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`In response to the Notice of Opposition filed on December 16, 2009, Applicant Secure
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`Medical, Inc. (hereinafter “Secure Medical”), by and through its undersigned counsel, answers
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`the Notice of Opposition identified above as follows:
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`1.
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`In response to the allegations of paragraph 1 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`2.
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`In response to the allegations of paragraph 2 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 2 and therefore denies those allegations and demands proof thereof.
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`3.
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`In response to the allegations of paragraph 3 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`/1/
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`4.
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`In response to the allegations of paragraph 4 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`5.
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`In response to the allegations of paragraph 5 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`6.
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`In response to the allegations of paragraph 6 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`7.
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`In response to the allegations of paragraph 7 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`8.
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`In response to the allegations of paragraph 8 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph. Applicant specifically notes, however, that although a
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`non-final office action dated September 24, 2008 rejected Applicant’s submission on July 10,
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`2008 claiming acquired distinctiveness, the Examiner stated that while Applicant’s claim of
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`ownership of a prior registration is insufficient evidence of acquired distinctiveness and
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`apparently did not rely on the prior registration as support, additional evidence may be submitted
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`to make such a showing. In a response to the non-final office action dated March 24, 2009,
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`Applicant submitted a declaration from John Rao, President of Secure Medical, Inc. stating that
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`over $1.75 million dollars has been spent in advertising and marketing efforts for its exclusive
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`use or its licensed use to others of the mark EDRUGSTORE.MD since November, 2002 to
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`establish recognition of the mark and its source of goods. The declaration further stated that the
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`aforementioned marketing efforts resulted in a brand having sales of approximately $750,000 per
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`month in total sales under that mark. In a subsequent office action dated August 12, 2009, the
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`Examiner did not maintain this rejection and a Notice of Publication issued on October 27, 2009.
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`/2/
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`9.
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`In response to the allegations of paragraph 9 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 3 and therefore denies those allegations and demands proof thereof. Applicant also
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`specifically notes, however, that although the domain name may or may not have been purchased
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`previously, the web site E-DRUGSTORE-MD.COM was made available to the public on
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`February 2, 2004 as an affiliate under an affiliate program licensed by EDRUGSTORE.MD and
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`did not use the trademark EDRUGSTORE.MD on the site except to identify Applicant and to
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`direct customers to Applicant’s web site with the statement, “Click here to enter our Online
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`Pharmacy – eDrugstore.md”. Both the “here” and “eDrugstore.md” words included a hyperlink
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`to Applicant’s web site at www.edrugstore.md.
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`10.
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`In response to the allegations of paragraph 10 of the Notice of Opposition, Applicant
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`admits that InTouch Communications was an affiliate for Applicant but currently is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`of paragraph 10 and therefore denies those allegations and demands proof thereof.
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`11.
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`In response to the allegations of paragraph 11 of the Notice of Opposition, Applicant
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`admits that a person who used the name Thomas Parker was at one time the Affiliate Manager of
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`EDRUGSTORE.MD but currently is without knowledge or information sufficient to form a
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`belief as to the truth of the remaining allegations of paragraph 11 and therefore denies those
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`allegations and demands proof thereof.
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`12.
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`In response to the allegations of paragraph 12 of the Notice of Opposition, Applicant
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`admits that InTouch Communications was an affiliate for Applicant for a time but currently is
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`without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of paragraph 12 and therefore denies those allegations and demands proof thereof.
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`/3/
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`13.
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`In response to the allegations of paragraph 13 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 13 and therefore denies those allegations and demands proof thereof.
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`14.
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`Applicant does not object to Opposer’s incorporation by reference of the allegations of
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`Paragraphs 1 through 13 of the Notice of Opposition and admits or denies these allegations in
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`accordance with Applicant’s response to these allegations addressed above.
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`15.
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`In response to the allegations of paragraph 15 of the Notice of Opposition, Applicant
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`denies that Applicant’s purported predecessors abandoned any rights to the mark prior to the
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`June 12, 2008 assignment of the mark to Applicant.
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`16.
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`In response to the allegations of paragraph 16 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 16 and therefore denies those allegations and demands proof thereof.
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`17.
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`In response to the allegations of paragraph 17 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 17 and therefore denies those allegations and demands proof thereof.
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`18.
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`In response to the allegations of paragraph 18 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 18 and therefore denies those allegations and demands proof thereof.
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`19.
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`In response to the allegations of paragraph 19 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 19 and therefore denies those allegations and demands proof thereof.
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`/4/
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`20.
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`In response to the allegations of paragraph 20 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 20 and therefore denies those allegations and demands proof thereof.
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`21.
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`In response to the allegations of paragraph 21 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 21 and therefore denies those allegations and demands proof thereof.
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`22.
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`In response to the allegations of paragraph 22 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`23.
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`Applicant does not object to Opposer’s incorporation by reference of Paragraphs 1-22 of
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`the Notice of Opposition and admits or denies these allegations in accordance with Applicant’s
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`response to these allegations addressed above.
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`24.
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`In response to the allegations of paragraph 24 of the Notice of Opposition, Applicant
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`denies that Applicant cannot claim exclusive use of the trademark and is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of paragraph 24
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`and therefore denies those allegations and demands proof thereof.
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`25.
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`In response to the allegations of paragraph 25 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 25 and therefore denies those allegations and demands proof thereof.
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`26.
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`In response to the allegations of paragraph 26 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 26 and therefore denies those allegations and demands proof thereof.
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`/5/
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`27.
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`In response to the allegations of paragraph 27 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 27 and therefore denies those allegations and demands proof thereof.
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`28.
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`In response to the allegations of paragraph 28 of the Notice of Opposition, Applicant
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`admits that Applicant did not challenge Vision Medical’s use of the domain
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`www.edrugstores.com but is without knowledge or information sufficient to form a belief as to
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`the truth of the allegations of paragraph 28 and therefore denies the remaining allegations and
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`demands proof thereof.
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`29.
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`In response to the allegations of paragraph 29 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 29 and therefore denies those allegations and demands proof thereof.
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`30.
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`In response to the allegations of paragraph 30 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 30 and therefore denies those allegations and demands proof thereof.
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`31.
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`In response to the allegations of paragraph 31 of the Notice of Opposition, Applicant
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`denies that it had any affiliates in November 2008 and denies that it has allowed and acquiesced
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`to any use of a mark confusingly similar to Applicant’s mark. Applicant is without knowledge
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`or information sufficient to form a belief as to the truth of the remaining allegations of paragraph
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`30 and therefore denies those allegations and demands proof thereof.
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`32.
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`In response to the allegations of paragraph 32 of the Notice of Opposition, Applicant
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`denies the allegations that the trademark cannot have developed acquired distinctiveness, that
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`Applicant has allowed, acquiesced and consented to third party uses of the term in a manner that
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`creates a likelihood of consumer confusion as to the source of Applicant’s products and services,
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`/6/
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`that prospective purchasers cannot possibly identify the Applicant as the source of goods or
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`services offered under the applied-for mark, and that the mark cannot function as a trademark. In
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`response to the remaining allegations, Applicant is without knowledge or information sufficient
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`to form a belief as to the truth of the remaining allegations of paragraph 32 and therefore denies
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`those allegations and demands proof thereof.
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`33.
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`Applicant does not object to Opposer’s incorporation by reference of the allegations of
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`Paragraphs 1 through 32 of the Notice of Opposition and admits or denies these allegations in
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`accordance with Applicant’s response to these allegations addressed above.
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`34.
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`In response to the allegations of paragraph 34 of the Notice of Opposition, Applicant
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`denies the allegations Applicant has no right in the EDRUGSTORE.MD mark and that the
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`assignment of U.S. Trademark Registration No. 2,935,610 effected on June 12, 2008 was void ab
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`initio.
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`35.
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`In response to the allegations of paragraph 35 of the Notice of Opposition, Applicant
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`denies the allegations of this paragraph.
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`36.
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`In response to the allegations of paragraph 36 of the Notice of Opposition, Applicant
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`denies the allegations that Applicant has no right in the EDRUGSTORE.MD mark and that U.S.
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`Trademark Registration No. 2,935,610 was procured with fraudulent information.
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`37.
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`In response to the allegations of paragraph 37 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`38.
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`In response to the allegations of paragraph 38 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 38 and therefore denies those allegations and demands proof thereof.
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`/7/
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`39.
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`In response to the allegations of paragraph 39 of the Notice of Opposition, Applicant
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`denies that the application for U.S. Trademark Registration No. 2,935,610 was signed on
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`October 21, 2003. Rather, Applicant notes that the application for U.S. Trademark Registration
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`No. 2,935,610 was signed on October 27, 2003by Richard Porter who listed his title as Director
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`of Crown Trade & Investment, Inc. As to the remaining allegations of paragraph 39, Applicant
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`is without knowledge or information sufficient to form a belief as to the truth of the allegations
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`of paragraph 39 and therefore denies those allegations and demands proof thereof.
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`40.
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`In response to the allegations of paragraph 40 of the Notice of Opposition, Applicant
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`denies that applicant was asked to provide details regarding the existence of the Crown Trade &
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`Investment, Inc. company or its registration number, but admits that no information regarding
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`such was sent by Applicant. Applicant notes, however, for the Record, that Applicant’s Attorney
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`of Record was asked verbally if Applicant had any information regarding the whereabouts or
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`identity of the principals of Crown Trade & Investment, Inc. to which Applicant’s Attorney of
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`Record responded to the verbal request with a verbal answer that Applicant did not have such
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`information and that Opposer should submit such requests in writing to be clear about what he
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`was seeking. Applicant notes that Applicant did not receive any written request for information
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`to clarify the previous verbal request and still does not have any additional information about the
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`whereabouts or identity of the principals.
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`41.
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`In response to the allegations of paragraph 41 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 41 and therefore denies those allegations and demands proof thereof.
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`42.
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`In response to the allegations of paragraph 42 of the Notice of Opposition, Applicant
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`/8/
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`admits the allegations of this paragraph.
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`43.
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`In response to the allegations of paragraph 43 of the Notice of Opposition, Applicant
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`denies the allegation that the assignment recorded against U.S. Trademark Registration No.
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`2,935,610 is null and void.
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`44.
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`Applicant requests a denial of Opposer’s requests for a declaration of invalidity of U.S.
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`Trademark Registration No. 2,935,619 and a denial of Opposer’s request for its removal from the
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`Register because such a request by Opposer is inappropriate here.
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`45.
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`In response to the allegations of paragraph 45 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`46.
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`In response to the allegations of paragraph 46 of the Notice of Opposition, Applicant
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`denies the allegations of this paragraph.
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`47.
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`In response to the allegations of paragraph 47 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph. However, Applicant notes that the Declaration filed on
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`March 24, 2009 also states that “Secure Medical, Inc., or the previous owner of the trademark
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`(collectively “Secure Medical”), has had exclusive use of the trademark in the United States
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`since at least as early November 24, 2002.”
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`48.
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`In response to the allegations of paragraph 48 of the Notice of Opposition, Applicant
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`admits that the EDRUGSTORE.MD affiliate agreement that existed from December 2002 to
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`May 2008 is silent on the matter of Applicant’s mark. However, Applicant notes that while no
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`written trademark licensing agreement existed, the affiliate agreement and the approval process
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`for an unrelated business entity to become an affiliate created an implied trademark license
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`because affiliates were allowed to use the mark for the purpose of directing web traffic to
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`Applicant’s website. Applicant further notes that Applicant’s Attorney of Record attempted to
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`access the DirectTrack.com server at the URL provided in paragraph 48 of the Notice of
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`/9/
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`Opposition and received an error message stating that the site was forbidden and that the page
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`does not exist. Thus, in response to the remaining allegations of paragraph 48, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of paragraph 48 and therefore denies those allegations and demands proof thereof.
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`49.
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`In response to the allegations of paragraph 49 of the Notice of Opposition, Applicant
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`denies the allegations of this paragraph.
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`50.
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`In response to the allegations of paragraph 50 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`51.
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`In response to the allegations of paragraph 51 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 51 and therefore denies those allegations and demands proof thereof. Applicant notes
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`that the Traffic Rank data provided in paragraph 51 of the Notice of Opposition is inconsistent
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`with Applicant’s own data.
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`52.
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`In response to the allegations of paragraph 52 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 52 and therefore denies those allegations and demands proof thereof. Applicant notes,
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`however, that ACCESSRX.COM is a separate site and does not include any hyperlinks to the
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`EDRUGSTORE.MD site or even any reference to the EDRUGSTORE.MD site.
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`53.
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`In response to the allegations of paragraph 53 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 53, the accuracy of the compete.com site or the method by which the data is gathered,
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`and therefore denies those allegations and demands proof thereof. Applicant notes, however,
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`that paragraph 53 attempts to make a comparison between the number of unique visitors to
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`/10/
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`Applicant’s website as recorded by Compete.com and the number of page views per month as
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`stated by Applicant. Applicant notes that these two types of data are not analogous and
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`therefore, the comparison set forth in paragraph 53 is meaningless.
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`54.
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`In response to the allegations of paragraph 54 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 54 and therefore denies those allegations and demands proof thereof. Applicant notes,
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`however, that Quantcast itself acknowledges that its numbers are only a “rough estimate” and
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`shows that for February, 2009, the visitors reached 16,200 visitors and that in December, 2009
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`the visitors numbers reached over 8,500 visitors so that apparently the rough estimate numbers
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`provided by Quantcast fluctuates significantly from month to month.
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`55.
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`In response to the allegations of paragraph 55 of the Notice of Opposition, Applicant
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`denies the allegations and demands proof thereof. Applicant notes that consistent with
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`Applicant's declaration, Applicant’s sales under the EDRUGSTORE.MD mark consistently total
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`approximately $750,000 per month based on an average of monthly sales. Applicant further
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`notes that the Declaration submitted to the PTO indicated that “To my best knowledge, the
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`previous owner of the EDRUGSTORE.MD trademark spent an average of $25,000 per month on
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`advertising marketing each month from 2003-June, 2008.” The Declaration also stated, “on
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`average Secure Medical spends approximately $13,000 per month on advertising marketing for
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`the EDRUGSTORE.MD mark since June, 2008” and the Declaration was signed March 24,
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`2009. Applicant further notes that the Quantcast.com screenshot sent by Opposer is illegible and
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`requests that a legible screenshot image be sent. Regardless, a drop in website traffic is not
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`necessarily indicative of a reduction in advertising expenditures as factors other than advertising
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`/11/
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`expenditures affect website traffic.
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`56.
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`In response to the allegations of paragraph 56 of the Notice of Opposition, Applicant
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`denies the allegations and demands proof thereof. Applicant notes that Applicant’s declaration
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`states that “Secure Medical, Inc., or the previous owner of the trademark (collectively “Secure
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`Medical”), has had exclusive use of the trademark in the United States since at least as early
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`November 24, 2002.” Thus, Applicant denies that any false statements were made in the
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`Declaration under 37 C.F.R. § 2.20 that was filed on March 24, 2009.
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`57.
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`In response to the allegations of paragraph 57 of the Notice of Opposition, Applicant
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`admits that Applicant’s U.S. Trademark Application Serial No. 77/519,559 published on the
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`Principal Register. In response to the remaining allegations, Applicant denies the remaining
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`allegations of paragraph 57.
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`58.
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`In response to the allegations of paragraph 58 of the Notice of Opposition, Applicant
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`denies the allegations of this paragraph.
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`59.
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`In response to the allegations of paragraph 59 of the Notice of Opposition, Applicant
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`denies the allegations of this paragraph.
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`60.
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`Applicant does not object to Opposer’s incorporation by reference of Paragraphs 1-59 of
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`the Notice of Opposition and admits or denies these allegations in accordance with Applicant’s
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`response to these allegations addressed above.
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`61.
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`In response to the allegations of paragraph 61 of the Notice of Opposition, Applicant
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`admits the allegations of this paragraph.
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`62.
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`In response to the allegations of paragraph 62 of the Notice of Opposition, Applicant
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`denies that combining “E” with the term “DRUGSTORE” is clearly a generic term for a service
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`that facilitates web-based transactions between pharmacies and consumers.
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`/12/
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`63.
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`In response to the allegations of paragraph 63 of the Notice of Opposition, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the allegations of
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`paragraph 63 and therefore denies those allegations and demands proof thereof.
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`64.
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`In response to the allegations of paragraph 64 of the Notice of Opposition, Applicant
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`denies that newspapers use the term EDRUGSTORE generically for an online store where
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`prescriptions are filled and medicines are sold. Applicant admits the existence of the Sept. 20,
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`1999 article titled “Your Friendly Neighborhood E-Drugstore.”
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`65.
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`In response to the allegations of paragraph 65 of the Notice of Opposition, Applicant
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`denies that magazine articles use the term EDRUGSTORE generically for an online store where
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`prescriptions are filled and drugs and other articles are sold. Applicant admits the existence of
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`the May 11, 2005 Barron’s article titled “Bill Gates’ Wife Likes E-Drugstore.”
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`66.
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`In response to the allegations of paragraph 66 of the Notice of Opposition, Applicant
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`admits that “.md” is a top level domain country code designation for the Republic of Moldova,
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`but Applicant is without knowledge or information sufficient to form a belief as to the truth of
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`the allegations of paragraph 66 and therefore denies those allegations and demands proof thereof.
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`67.
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`In response to the allegations of paragraph 67 of the Notice of Opposition, Applicant
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`denies that an extension on a domain name has no trademark significance and that the public
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`would not understand EDRUGSTORE.MD would have any meaning apart from the meaning of
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`the individual words combined. As to the remaining allegations of paragraph 67, Applicant is
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`without knowledge or information sufficient to form a belief as to their truth and therefore denies
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`those allegations and demands proof thereof.
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`68.
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`In response to the allegations of paragraph 68 of the Notice of Opposition, Applicant
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`denies that EDRUGSTORE.MD is merely a generic term combined with a top level domain
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`/13/
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`indicator, denies that EDRUGSTORE.MD has no source-identifying significance, denies that the
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`mark is generic and denies that the mark is unregisterable.
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`69.
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`Applicant does not object to Opposer’s incorporation by reference of Paragraphs 1-68 of
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`the Notice of Opposition and admits or denies these allegations in accordance with Applicant’s
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`response to these allegations addressed above.
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`70.
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`In response to the allegations of paragraph 70 of the Notice of Opposition, Applicant
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`admits that Applicant’s undersigned attorney, Kenneth C. Booth sent a letter on July 29, 2008 to
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`Opposer stating: “Secure Medical, Inc. recently purchased and now owns the entire right, title
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`and interest in the federally registered trademark EDRUGSTORE.MD (Federal Reg. Serial No.
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`2,935,610; Direct Link www.ptodirect.com/tm/?76583605; pending application Serial No.
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`77/497,211; Direct Link: www.ptodirect.com/tm/?77497211; and pending application Serial No.
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`77/519,559; Direct Link: www.ptodirect.com/tm/?77519559) and all goodwill and rights
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`associated with that trademark.” Applicant also admits that the July 29, 2008 letter insisted that
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`Opposer transfer to Applicant “the control and ownership of the domain name E-DRUGSTORE-
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`MD.com ….”
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`71.
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`In response to the allegations of paragraph 71 of the Notice of Opposition, Applicant
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`admits that John Rao is President of Secure Medical and that on September 17, 2008 John Rao
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`sent a copy of the July 29, 2008 letter referenced in paragraph 18 by email to
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`abuse@GoDaddy.com regarding the domain E-DRUGSTORE-MD.com. Applicant admits that
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`the email stated “To whom it may concern RE; www.viagraworldwide.com and www.e-
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`drugstore-md.com Please insure that these two websites stop all attempts to infringe on our
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`copyright by restricting any hosting of these illegal sites, Thank you ….” As to the remaining
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`allegations of paragraph 71, Applicant is without knowledge or information sufficient to form a
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`belief as to their truth and therefore denies those allegations and demands proof thereof.
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`72.
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`In response to the allegations of paragraph 72 of the Notice of Opposition, Applicant
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`admits that Richard Bernstein is an employee of Secure Medical and that on October 6, 2009
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`Richard Bernstein sent an email to trademarkclaims@secureserver.net with the subject line
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`“Trademark Violation” that said, “The company I work for, Secure Medical, owns the trademark
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`Edrugstore.md. I have attached a legal letter from our attorney’s that was sent to e-drugsotre-
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`md.com. We sent the trademark infringement letter on July 24th, 2008 and have not heard
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`anything from the owners at e-drugstore-md.com.” “The whois.net information listed
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`Godaddy.com as the point of contact: http://whois.net/whois_new.cgi?d=e-drugstore-
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`md&tld=com.” Applicant also particularly notes that Richard Bernstein received an email on
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`October 6, 2009 from help.desk@hostdime.com with the subject line “Abuse” that said, “Hello,
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`Thank you for bringing this to our attention. Normally, in this situation, we require that a hard
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`copy be sent via regular mail to ensure authenticity, however, online pharmacies are in violation
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`of our terms of service. I went ahead and suspended the site in question.” As to the remaining
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`allegations of paragraph 72, Applicant is without knowledge or information sufficient to form a
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`belief as to their truth and therefore denies those allegations and demands proof thereof.
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`73.
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`In response to the allegations of paragraph 73 of the Notice of Opposition, Applicant
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`denies that it knew Health Solutions Network, Inc. was an advertiser on the E-Drugstore-
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`MD.com web site. Applicant admits that Applicant’s undersigned attorney, Kenneth C. Booth
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`sent a letter on January 9, 2009 to Health Solutions Network, Inc. insisting that they “Ensure that
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`the control and ownership of the domain name E-DRUGSTORE-MD.com and any other domain
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`names you own or control that are confusingly similar to EDRUGSTORE.MD are transferred to
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`Secure Medical.” As to the remaining allegations of paragraph 73, Applicant is without
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`knowledge or information sufficient to form a belief as to their truth and therefore denies those
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`allegations and demands proof thereof.
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`74.
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`In response to the allegations of paragraph 74 of the Notice of Opposition, Applicant
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`denies that it has unlawfully disparaged or tortiously interfered with Opposer’s contracts and that
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`Applicant’s actions have caused any irreparable injury to Opposer. Applicant is without
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`knowledge or information sufficient to form a belief as to the truth of the remaining allegations
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`of paragraph 74 and therefore denies those allegations and demands proof thereof.
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`75.
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`In response to the allegations of paragraph 75 of the Notice of Opposition, Applicant
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`denies that U.S. Trademark Application Serial No. 77/519,559 (the “Mark”) is causing injury to
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`Opposer, denies that U.S. Trademark Application Serial No. 77/519,559 is inconsistent with
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`Opposer’s rights, and denies that registration of U.S. Trademark Application Serial No.
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`77/519,559 will cause any injury to Opposer. Applicant admits that registration of U.S.
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`Trademark Application Serial No. 77/519,559 constitutes prima facie evidence of the rights of
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`Applicant under 15 U.S.C. 1057(b). Applicant is without knowledge or information sufficient to
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`form a belief as to the truth of the remaining allegations of paragraph 75 and therefore denies
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`those allegations and demands proof thereof.
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`76.
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`In response to the allegations of paragraph 76 of the Notice of Opposition, Applicant
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`denies that U.S. Trademark Application Serial No. 77/519,559 is causing injury to Opposer.
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`Applicant is without knowledge or information sufficient to form a belief as to the truth of the
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`remaining allegations of paragraph 76 and therefore denies those allegations and demands proof
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`/16/
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`thereof.
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`WHEREFORE, Applicant respectfully requests that the Board dismiss this cancellation
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`proceeding in its entirety and that Applicant’s Mark remain in good standing.
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`Respectfully,
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`_/Kenneth C. Booth/ signed___
`Kenneth C. Booth
`Reg. No. 42,342
`Booth Udall, PLC
`1155 W. Rio Salado Parkway, Ste. 101
`Tempe, AZ 85281
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`Attorneys for Applicant
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`Date: January 25, 2010
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing:
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`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
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`has been mailed, first-class postage prepaid on January 25, 2010, to Opposer:
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`Michael Davis
`INTOUCH COMMUNICATIONS LLC
`108 W. 13th Street
`Wilmington, DE 19801
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`_/Chantal Martin/ signed________
`Chantal Martin
`IP Legal Assistant
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`January 25, 2010___
`Date
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