Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA409336
`ESTTA Tracking number:
`05/16/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91199295
`Defendant
`The Smiley Company SPRL
`
`THE SMILEY COMPANY SPRL
`RUE DES TROIS ARBRES 16
`BRUSSELS, B-1180
`BELGIUM
`trademarks@smileyworld.co.uk
`Answer
`Steven L. Baron
`sbaron@mandellmenkes.com
`/s/ Steven L. Baron
`05/16/2011
`20110516 Answer and Affirmative Defenses.pdf ( 15 pages )(59885 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
`
`
`In re: U.S. Applications Serial Nos. 85031544, 85031503
`85047985, 85047980, 85034992, 85026954, 85026952
`85026194, and 85026141
`
`Mark: SMILEYWORLD
`Published: October 5, 20l 0
`------------------------------------------------------ ---------)
`MINDSPARK INTERACTIVE, INC,
`
`) Opposition No. 91199295
`
`
`
`
`
`
`
`)
`
`Opposer,
`
`
`)
`
`
`
`
`)
`) ANSWER AND
`
`v.
`
`
`) AFFIRMATIVE DEFENSES
`
`
`
`
`THE SMILEY COMPANY SPRL
`
`
`)
`
`
`
`
`
`
`
`)
`Applicant.
`
`
`)
`---------------------------------------------------------------)
`
`
`
`
`
`Applicant The Smiley Company SPRL (“TSC”) answers Opposer Mindspark Interactive,
`
`Inc’s (“Mindspark”) Opposition as follows:
`
`
`
`
`
`FACTS
`
`1. Upon information and belief, Applicant, The Smiley Company SPRL
`("Applicant"), is a limited liability company organized and existing under the laws of the
`Belgium, having a place of business at Rue des Trois Arbres 16, Brussels Belgium B-1180.
`
`ANSWER: TSC admits the allegations of Paragraph 1.
`
`APP. NO.
`
`
`
`Between April and May 2009, Applicant filed the following United States
`2.
`Trademark Applications for SMILEYWORLD (Applicant's Mark"):
`
`GOODS/SERVICES
`
`FILING
`PARTICULARS
`
`85031544
`
`Class 18: Canvas shopping bags; Leather and
`imitation leather bags; Make-up bags sold empty; School
`bags; Shoulder bags; Sports bags; Textile shopping bags;
`Travel bags; Umbrellas; Wallets
`
`
`
`Filing Date: 5/6/2010
`Filing Basis: § 1 (b)
`
`
`

`
`Filing Date: 5/6/2010
`Filing Basis: §1(b)
`
`Filing Date: 5/26/2010
`Filing Basis: §§ 1(a)
`and (b)
`
`Filing Date: 5/26/2010
`Filing Basis: §§l(a) and
`(b)
`
`Filing Date: 5/11/2010
`Filing Basis: § 1 (b)
`
`
`Filing Date: 4/30/2010
`Filing Basis: §l(b)
`
`
`
`Filing Date: 4/30/2010
`Filing Basis: §§1(a) and
`(b)
`
`
`
`Filing Date: 4/29/2010
`Filing Basis: § 1 (b)
`
`
`Class 4: Candles
`
`Class 5: Air fresheners
`
`Class 6: Keyrings of common metal; Metal money boxes
`
`Class 11: Electric toasters; Lamps
`
`Class 28: (Based on Use in Commerce) Puzzles (Based on
`Intent to Use) Balloons; Balls for games; Board games;
`Dolls; Dominoes; Marbles; Modeled and plastic toy
`figurines; Playing cards; Plush dolls; Plush toys;
`Skateboards; Stress relief balls for hand exercise; Trading
`card games.
`
`Class 25: (Based on Use in Commerce) T- shirts (Based on
`Intent to Use) Aprons; Baby, bodysuits; Bathrobes; Belts;
`Cloth bibs; Coats; Dresses; Ear muffs; Footwear; Gloves;
`Jackets; Jeans; Jumpers; Leggings; Pajamas; Pants;
`Scarves; Shorts; Skirts; Socks; Sweaters; Swimwear;
`Underwear.
`
`Class 20: Cushions; Drinking straws; Hand mirrors;
`Mirrors; Non-metal key rings; Non-metal money boxes;
`Personal compact mirrors; Picture and photograph frames;
`Plastic key rings
`
`Class 21: Cups and mugs; Plates
`
`Class 24: Bed blankets; Bed linen and table linen;
`Duvct covers; Pillow covers; Towcls
`
`Class 3: Bath soaps; Cosmetic creams; Cosmetics;
`Deodorant for personal use; Make-up; Perfume;
`Shampoos; Sun-tanning preparations; Toilet water
`
`Class 9: (Based on Use in Commerce) Downloadable
`graphics for mobile phones; Electronic game programs;
`Electronic game software (Based on Intent to Use)
`Calculating machines; Magnets; Sunglasses.
`
`Class 14: Badges of precious metal; Clocks and watches;
`Jewellery; Jewellery, including imitation jewellery and
`plastic jewellery
`
`
`85031503
`
`
`85047985
`
`85047980
`
`85034992
`
`85026954
`
`85026952
`
`85026194
`
`

`
`Filing Date: 4/29/2010
`Filing Basis: §l(b)
`
`
`85026141
`
`Class 16: Agendas; Baby books; Calendars; Chalk
`boards for school and home use; Chalk erasers;
`Children's books; Color pencils; Coloring books;
`Diaries; Erasers; Folders; Fountain pens; Gift
`wrapping paper; Memory books; Notebooks;
`Notepads; Paper bags; Paper banners; Paper decorative
`garlands for parties; Paper gift bags; Paper hang tags;
`Paper labels; Paper napkins; Paper notebooks; Paper party
`decorations; Paper table linens; Pen and pencil cases and
`boxes; Pen and pencil holders; Pencil sharpeners; Pencils;
`Pens; Picture books; Plastic shopping bags; School supply
`kits containing various combinations of selected school
`supplies, namely, writing instruments, pens, pencils,
`mechanical pencils, erasers, markers, crayons, highlighter
`pens, folders, notebooks, paper, protractors, paper clips,
`pencil sharpeners, writing grips, glue and book marks;
`Stationery; Stationery, boxes; Stationery cases; Stationery
`folders; Stickers; Temporary tattoos; Writing instruments
`
`
`
`ANSWER: TSC admits only that the above-referenced chart accurately summarizes
`
`information reflected in nine (9) of TSC’s United States trademark applications for the mark
`
`SMILEYWORLD filed in April and May 2010 (the “Applications”). TSC denies the remaining
`
`allegations of Paragraph 2.
`
`The Applications were published for opposition in the Official Trademark Gazette
`3.
`on October 5, 2010.
`
`ANSWER: TSC admits the allegations in Paragraph 3.
`
`
`
`Mindspark is a corporation organized and existing under the laws of the state of
`4.
`Delaware, having a place of business at One North Lexington, White Plains, NY 1060l.
`
`ANSWER: TSC is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in Paragraph 4.
`
`
`
`Mindspark is home to some of the most popular and engaging brands on the
`5.
`Internet. Mindspark features a variety of social and entertainment destinations, such as,
`<www.zwinky.com> and <www.iwon.com>, and other fun and interactive products that enable
`users to creatively express themselves through online communication, including, but not limited
`
`

`
`to, <www.webfetti.com>, <www.smileycentral.com>, as well as, personal interest sites like
`<www.excite.com> and <www.life123.com>.
`
`ANSWER: TSC denies that Mindspark is home to some of the most popular and engaging
`
`brands on the Internet. TSC is without knowledge or information sufficient to form a belief as to
`
`the truth of the remaining allegations in Paragraph 5.
`
`
`
`In or around 2003, Mindspark and its predecessor-in-interest revolutionized
`6.
`online communication when it introduced the SMILEY CENTRAL and
`
`(collectively referred to herein as the "SMILEY CENTRAL
`Marks") branded emoticons - clever variations of the classic smiley face that could be sent to
`friends and family with just the click of a mouse. Today there are more than 12,000 emoticons in
`Mindspark's SMILEY CENTRAL library, and that number continues to grow. To date, over 3.2
`billion SMILEY CENTRAL emoticons have been sent around the web and in online
`communications. SMILEY CENTRAL emoticons can be sent via instant messaging, email,
`mobile devices or can be placed on blogs or social networking sites.
`
`ANSWER: TSC denies that in or around 2003, Mindspark and its predecessor-in-interest
`
`revolutionized online communication when it introduced the SMILEY CENTRAL Marks. TSC
`
`is without knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations in Paragraph 6.
`
`As a result SMILEY CENTRAL has become one of the most recognized brands
`
`7.
`in the world.
`
`ANSWER: TSC denies the allegations in Paragraph 7.
`
`
`
`By virtue of a long history of continuous and extensive use, among other things,
`8.
`the SMILEY CENTRAL Marks have generated valuable goodwill and reputation and have
`become distinctive of Mindspark's goods and services.
`
`ANSWER: TSC denies the allegations in Paragraph 8.
`
`
`
`Mindspark builds success by continuously enhancing and improving its websites
`9.
`and products while identifying new, strategic opportunities that it is quickly able to deliver to
`market.
`
`
`

`
`ANSWER: TSC is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in Paragraph 9.
`
`Accordingly, Mindspark has been actively engaged in expanding its use of the
`10.
`SMILEY CENTRAL Marks to numerous other social and entertainment destinations on the
`Internet, as well as a variety of consumer products and business-to-business related services.
`
`ANSWER: TSC is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in Paragraph 10.
`
`11. Mindspark is the owner of the following valid and subsisting United States
`Trademark registrations for its world famous SMILEY CENTRAL Marks:
`
`
`TRADEMARK
`
`
`
`
`SMILEY CENTRAL
`
`
`
`
`GOODS AND SERVICES
`
`REG.
`NO.
`3339226 Class 9: Downloadable computer software
`program for use in attaching fanciful designs, icons
`or symbols in e-mail correspondence.
`
`3339227 Class 9: Downloadable computer software
`program for use in attaching fanciful designs, Icons
`or symbols, in e-mail
`correspondence.
`
`
`
`
`ANSWER: TSC admits only that the above-referenced chart accurately information from
`Mindspark’s United States trademark
`
`
`registration no. 3339226 for the
`remaining allegations in Paragraph 11.
`
` mark. TSC denies the
`
`12. Mindspark is also the owner of the following United States trademark applications.
`
`
`
`
`
`PARTICULARS
`
`Ser. No. 78757456
`Filed: 11/18/2005
`
`GOODS & SERVICES
`
`Class 9: Downloadable computer software for use in providing search
`engine services provided through a browser tool bar; downloadable
`internet browser plug-ins and client server applications in the nature of
`multi-function tool bar plug-ins
`
`

`
`
`Class 35: Business services, namely, providing links to the websites of
`others, namely retail service providers in the field of consumer
`electronics, computers, clothing, automobiles, toys and games and a
`wide variety of other general consumer products; providing links to
`websites of others in the field of consumer products and services;
`providing consumer product information via the internet; providing
`comparison shopping information; providing online consumer and
`retail directory information services also featuring hyperlinks to other
`websites; dissemination of advertising for others via the internet;
`online advertising services for others, namely
`providing advertising space on internet web sites; promoting the goods
`and services of others by placing advertisements and promotional
`displays on electronic sites accessed through computer networks
`
`Class 38: Telecommunications services, namely, telephone
`communications services and delivery of messages by electronic mail;
`providing on-line electronic bulletin boards for the transmission of
`messages among computer users: online electronic bulletin boards;
`chat room services; broadcasting and delivery of audio, video and
`multimedia content by means of cellular and wireless communications
`and computer networks; electronic transmission of data, images,
`documents and messages via computer terminals; electronic data
`messaging
`
`Class 41: Entertainment services, namely, providing on-line computer
`games, films and entertainment content; providing links to web sites of
`others in the field of entertainment
`
`Class 42: Computer services, namely, providing search engines for
`obtaining data on a global computer network; providing customized
`on-line web pages featuring user-defined information, which includes
`search engines and online web links to other websites; providing on-
`line directories, indices and searchable databases of web sites and
`computer networks; providing links to web sites of others in the field
`of. computers and technology
`
`
`
`Class 3: Toiletries and skincare products, namely, lotion, moisturizer,
`hair shampoo, body wash, soap, body powder, skin cleanser and
`bubble bath; fragrances for personal use; perfumes; makeup and
`cosmetics, namely, lipstick, eye shadow, nail polish, and hair coloring;
`face and body glitter; face and body paint
`
`Class 4: Candles
`
`
`Ser. No. 77274735
`Filed: 9/7/2007
`
`

`
`Class 5: Vitamins; air fresheners; adhesive bandages
`
`Class 6: Metal key chains, rings and holders
`
`Class 9: Calculators; eyeglasses; sunglasses; sport goggles; cases for
`glasses; cellular telephones; cellular telephone covers; cases for
`cellular telephones; cellular telephone accessories, namely, travel and
`car chargers, ac chargers, hands-free headsets, belt clips and holsters,
`faceplates, cellular batteries, leather cases, data cables, wireless
`communication headsets, memory cards, snap-on covers, silicon skin
`cases, antennas, phone holders, car kits and phone straps, and
`decorative charms for cellular telephones and decorative ornaments for
`cellular telephones; compact disc players; digital and photographic
`cameras; cases for cameras; dvd machines; blank compact discs and
`dvds; pre-recorded compact discs and dvds featuring audio,
`video, graphics and games; karaoke machines; portable music players;
`protective helmets; radios; televisions; video game software; carrying
`cases for portable music players; downloadable audio, video, graphic
`and game files featuring ring tones, music, graphics and electronic
`games via a global computer network and wireless devices; computer
`game programs and software; electronic game programs and software
`
`Class 14: Alarm clocks, table clocks and wall clocks; jewelry, namely,
`bracelets, necklaces, rings, pins, charms, and earrings; jewelry boxes;
`wrist watches; collectible coins
`
`Class 16: Scrapbooks, children's books; novels; children's activity
`books; comic books; photo albums; address books; binders; crayons,
`pens, pencils, markers and chalk; pen and pencil cases, boxes and
`holders; day planners; composition books; date books; appointment
`books; stationery; blank journals; notebooks; note pads; note paper;
`calendars; bulletin boards; push pins; corkboard pins; book covers;
`bookmarks; book holders; posters; pencil sharpeners; writing and
`sketch pads; desk top organizers; gift wrapping paper; gift, holiday and
`greeting cards; stickers; trading cards; disposable napkins; paper party
`favors; paper party hats; paper tablecloths;
`gift cards; paper and plastic gift bags; paper flags
`
`Class 18: Luggage and luggage tags; umbrellas; purses and handbags;
`overnight and toiletry cases sold empty; vanity cases sold empty; travel
`bags; tote bags; backpacks; athletic bags; book bags; duffle bags;
`wallets; animal carriers; animal leashes; animal collars; leather key
`chains, rings and holders
`
`Class 20: Non-leather, non-metal key chains, rings and holders
`
`
`

`
`Class 21: Cups; mugs; dishes; cake molds; salt and pepper shakers;
`disposable cups; disposable plates; toothbrushes; hair brushes; lunch
`boxes
`
`Class 24: Bed blankets, bed linens, bed pads, bed sheets and bed
`spreads;
`comforters; pillow cases and pillow covers; table covers, namely, table
`cloths not of paper; bath towels, beach towels and dish towels; felt
`pennants
`
`Class 25: Clothing, namely, belts, blouses, t-shirts; coats, dresses,
`gloves, jackets, jeans, tops, mittens, gloves; scarves; bandanas;
`pajamas, pants, ponchos, raincoats, robes, shirts, shorts, skirts, socks,
`sweaters, swimwear, sweats; athletic apparel, namely, track suits, track
`pants, tank tops and sweatshirts; underwear and vests; halloween
`costumes; hats; underwear; hosiery, namely, leggings, panty hose,
`stockings and tights; masquerade costumes; and shoes, namely, athletic
`sneakers, bed slippers, loafers, pumps and sandals; visors; wrist bands
`
`Class 26: Belt buckles; embroidered patches for clothing; cloth patches
`for clothing; hair accessories, namely, claw clips, snap clips, hair bows,
`scrunchies, and hair bands
`
`
`
`Class 28: Action figures and play sets therefor; action skill games;
`arcade games; athletic protective pads, namely, arm pads, knee pads,
`elbow pads and wrist pads for cycling, skating and skateboarding;
`balloons; baseballs; baseball gloves; basketballs; beach balls; bean bag
`dolls; board games; body boards; card games; children's play
`cosmetics; christmas tree ornaments, except confectionery or
`illumination articles; craft sets for decorating balloons; doll
`accessories; doll clothing; doll play sets; dolls; flying discs; footballs;
`hand held unit for playing electronic games; in-line skates;
`kites; mobiles for children; party favors in the nature of crackers and
`noisemakers; playground balls; playing cards; plush toys; puppets;
`puzzles; roller skates; skateboards; skim boards; snow sleds for
`recreational use; soccer balls; bath toys; swim floats for recreational
`use; swim fins; toy action figures and accessories therefor; toy vehicles
`and play sets therefor; toy scooters; volleyballs; water wing swim aids
`for recreational use; wind-up toys; and yo-yos
`
`Class 29: Prepared meals consisting primarily of meat, fish, poultry or
`vegetables
`
`Class 30: Candy; frozen confections
`
`
`

`
`
`Class 32: bottled water; fruit drinks; energy drinks; non-alcoholic
`carbonated beverages; smoothies
`
`Class 34: Lighters not of precious metal (not for automobiles);
`ashtrays
`
`
`Id.
`
`
`
`
`
`
`Ser. No. 77274729
`Filed: 9/7/2007
`
`
`ANSWER: TSC admits only that the above-referenced chart accurately reflects the United
`
`States trademark application serial numbers, filing dates, applied-for mark (Ser. No. 77274729
`
`only) and applied-for goods and services for certain trademark applications owned by
`
`Mindspark. TSC denies the remaining allegations in Paragraph 12.
`
`
`
`Upon information and belief, Applicant has not commenced use of Applicant's
`13.
`Mark in commerce in connection with any of the goods and or services identified in the
`Applications.
`
`ANSWER: TSC denies the allegations in Paragraph 13.
`
`
`
`Upon information and belief, any alleged use of Applicant's Mark in connection
`14.
`with any and or all of the goods and or services identified in the Applications has occurred
`subsequent to Mindspark's use of the SMILEY CENTRAL Marks or after the dates that
`Mindspark filed applications for the SMILEY CENTRAL Marks.
`
`ANSWER: TSC denies the allegations in Paragraph 14.
`
`
`
`

`
`COUNT l
`LIKELIHOOD OF CONFUSION
`
`
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`15.
`through 14 as if fully set forth herein.
`
`ANSWER: TSC repeats and realleges each and every answer to the allegations set forth in
`
`Paragraphs 1 through 14 as if fully set forth herein.
`
`
`
`Applicant's Mark is similar in appearance to the SMILEY CENTRAL Marks in
`16.
`sight, sound, connotation and commercial impression.
`
`ANSWER: TSC denies the allegations in Paragraph 16.
`
`
`
`The goods and or services identified in the Applications are identical or similar
`17.
`and or related to the goods and or services with which the SMILEY CENTRAL Marks are
`registered and or for which United States trademark applications have been filed.
`
`ANSWER: TSC denies the allegations in Paragraph 17.
`
`
`
`The goods and or services identified [sic] the Applications are identical or similar
`18.
`and or related to the goods and or services with which the SMILEY CENTRAL Marks are used.
`
`ANSWER: TSC denies the allegations in Paragraph 18.
`
`
`
`Registration of Applicant's Mark is likely to cause confusion, mistake, or
`19.
`deception as to the source of Applicant's goods and or services and is likely to falsely suggest a
`common association, sponsorship or origin of said goods and or services between Applicant and
`Opposer.
`
`ANSWER: TSC denies the allegations in Paragraph 19.
`
`

`
`
`
`
`
`COUNT II
`DILUTION
`
`Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`20.
`through 19 herein.
`
`ANSWER: TSC repeats and realleges each and every answer to the allegations set forth in
`
`paragraphs 1 through 19 herein.
`
`
`
`By virtue of a long history of continuous and extensive use, among other things,
`21.
`the SMILEY CENTRAL Marks have become famous.
`
`ANSWER: TSC denies the allegations in Paragraph 21.
`
`
`
`Any use by Applicant of Applicant's Mark has occurred after the SMILEY
`22.
`CENTRAL Marks became famous.
`
`ANSWER: TSC denies the allegations in Paragraph 22.
`
`
`
`Relevant consumers are likely to make an association between Applicant's Mark
`23.
`and the SMILEY CENTRAL Marks.
`
`ANSWER: TSC denies the allegations in Paragraph 23.
`
`
`
`Registrant's Mark is likely to impair the distinctiveness of the SMILEY
`24.
`CENTRAL Marks.
`
`ANSWER: TSC denies the allegations in Paragraph 24.
`
`
`
`Applicant's Mark is likely to blur and or tarnish the positive associations of the
`25.
`SMILEY CENTRAL Marks.
`
`ANSWER: TSC denies the allegations in Paragraph 24.
`
`
`
`Thus, if Applicant is permitted to register and use Applicant's Mark, it is likely to
`26.
`cause dilution of the distinctive quality of the SMILEY CENTRAL Marks, pursuant to Section
`43 of the Lanham Act, 15 U.S.C. § 1125(c).
`
`
`

`
`ANSWER: TSC denies the allegations in Paragraph 25.
`
`COUNT III
`LACK OF BONA FIDE INTENT
`
`
`
`
`
`27. Opposer repeats and realleges each and every allegation set forth in paragraphs 1
`through 26 herein.
`
`ANSWER: TSC repeats and realleges each and every answer to the allegations set forth in
`
`Paragraphs 1 through 26 herein.
`
`
`
`28. Upon information and belief, Applicant did not have a bona fide intent to use
`Applicant's Mark in connection with the goods and or services identified in the Applications, on
`the date that Applicant filed the Applications.
`
`ANSWER: TSC denies the allegations in Paragraph 28.
`
`
`
`The Applications are therefore void, ab initio, pursuant to 15 U.S.C. §1051(b),
`29.
`and the Applications should be refused.
`
`ANSWER: TSC denies the allegations in Paragraph 29.
`
`AFFIRMATIVE DEFENSES
`
`Applicant, The Smiley Company SPRL (“TSC”), asserts the following affirmative
`
`defenses to Opposer Mindspark Interactive, Inc’s (“Mindspark”) Notice of Opposition
`
`(“Opposition”):
`
`First Affirmative Defense
`(Failure To State A Claim For Dilution)
`
`Mindspark fails to state a claim for dilution pursuant to Trademark Act § 43(c), 15 U.S.C.
`
`§ 1125, in that Mindspark has not alleged that the SMILEY CENTRAL Marks defined in
`
`Paragraphs 6 and 11 of the Opposition were famous prior to the earliest date on which TSC can
`
`rely for purposes of priority.
`
`

`
`Second Affirmative Defense
`(Prior Registration)
`
`TSC already owns substantially similar registered marks for substantially similar goods
`
`and/or services, including, U.S. Reg. No. 3102995 (SMILEYWORLD); U.S. Reg. No. 2801529
`
`(SMILEY); U.S. Reg. No. 3016430 (SMILEY); U.S. Reg. No. 2970055 (SMILEY); U.S. Reg.
`
`No. 2566529 (SMILEY) and U.S. Reg. No. 2747618 (SMILEY), such that registration of the
`
`TSC marks reflected in the applications listed in Paragraph 2 of the Opposition could cause no
`
`added injury to Mindspark.
`
`
`
`Third Affirmative Defense
`(Unclean Hands)
`
`Mindspark relies in part on certain suspended Mindspark Applications (U.S. Serial No.
`
`78757456 and 77274735) (“Suspended Applications”) in connection with Mindspark’s allegation
`
`that TSC’s Applications for SMILEYWORLD marks will create a likelihood of confusion
`
`(Opposition Pars. 14 and 17). The USPTO cited TSC application serial nos. 75977376
`
`(SMILEY and design), 75302439 (SMILEY and design), 76599965 (SMILEY) and 75514593
`
`(SMILEY BABIES) (“Cited Applications”) as the basis for suspending Mindspark’s Suspended
`
`Applications, noting that if and when the Cited Applications register, they may be cited against
`
`the Suspended Applications in a refusal to register under Trademark Act §2(d). Accordingly,
`
`Mindspark’s reliance upon the Suspended Applications in the Opposition, despite having been
`
`advised by the USPTO that TSC’s Cited Applications may constitute a basis for refusing
`
`registration of the Suspended Applications, demonstrates unclean hands.
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`Respectfully submitted,
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`THE SMILEY COMPANY SPRL
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`Steven L. Baron
`Natalie A. Harris
`Mandell Menkes LLC
`333 W. Wacker Dr., Ste 300
`Chicago, Illinois 60606
`(312) 251-1000 (phone)
`(312) 251- 1010 (fax)
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` /s/ Steven L. Baron
` One of its Attorneys
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`BY:
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`CERTIFICATE OF SERVICE
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`The undersigned, an attorney, hereby certifies that she caused the persons named below,
`to receive a correct copy of the Answer and Affirmative Defenses to Opposition:
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`G. Roxanne Elings, Esq.
`Greenberg Traurig, LLP
`200 Park Ave.
`New York, New York 10166
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`by U.S. Mail and the Trademark Trial and Appeal Board’s ESTTA electronic filing system on
`May 16, 2011.
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`_____/s/ Steven L. Baron
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` Steven L. Baron