Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA500430
`ESTTA Tracking number:
`10/16/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91205228
`Defendant
`Randolph Saint Martin
`PAULO A DE ALMEIDA
`PATEL & ALMEIDA PC
`16830 VENTURA BLVD, SUITE 360
`ENCINO, CA 91436
`UNITED STATES
`Paulo@PatelAlmeida.com
`Answer and Counterclaim
`Paulo A. de Almeida
`Paulo@PatelAlmeida.com
`/Paulo A. de Almeida/
`10/16/2012
`APPLICANT'S AMENDED ANSWER AND COUNTERCLAIM FOR
`CANCELLATION_Parent_91205228_Oct_16_2012.pdf ( 14 pages )(52980
`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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`Registration Subject to the filing
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`Registration No
`Registrant
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`Grounds for filing
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`Registration date
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`1216122
`Yeshiva University
`500 W. 185th Street
`New York, NY 10033-320
`UNITED STATES
`The registration was obtained fraudulently.
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`11/09/1982
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`Goods/Services Subject to the filing
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`Class 041. First Use: 1955/00/00 First Use In Commerce: 1955/00/00
`All goods and services in the class are requested, namely: Educational Services-Namely, Conducting
`a Medical School [and Hospital]
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Opposition No. 91205500
`Opposition No. 91205228 (Parent Case)
`Serial No. 76/710,178
`Mark: EINSTEINHEAD ATHLETE
`E=MC2 and Design
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`YESHIVA UNIVERSITY,
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` Opposer,
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`v.
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`RANDOLPH SAINT MARTIN,
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`Applicant.
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`APPLICANT'S AMENDED ANSWER TO OPPOSER'S AMENDED NOTICE OF
`OPPOSITION AND COUNTERCLAIM FOR CANCELLATION
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`On May 17, 2012, Opposer filed two Notices of Opposition against Applicant's U.S.
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`Trademark Application Ser. Nos. 76/709,668 and 76/710,178. On August 9, 2012, the Board
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`consolidated Opposition Nos. 91205228 and 91205500. The Board designated Opposition No.
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`91205228 as the "Parent" case in this consolidated proceeding. On August 9, 2012, and on August
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`16, 2012, Opposer filed Amended Notices of Opposition in this consolidated proceeding. On
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`September 17, 2012, the Board accepted both Amended Notices of Opposition and allowed
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`Applicant 30 days to file its Amended Answers. Applicant hereby submits (1) its Amended
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`Answers to each Notice of Opposition, filed separately in each proceeding, and (2) a Counterclaim
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`for Cancellation of Opposer's U.S. Trademark Registration No. 1216122 for the mark ALBERT
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`EINSTEIN. Applicant's Counterclaim for Cancellation is pleaded below in the Amended Answer
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`filed in this Parent Case (91205228), and is referred to (but not separately pleaded) in Applicant's
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`Amended Answer filed in the "Child" case (91205500).
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`Applicant, Randolph Saint Martin, an individual, by his attorneys hereby responds to the
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`allegations set forth in the Amended Notice of Opposition filed by Yeshiva University, as follows:
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`1.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 1 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`2.
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`3.
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`Applicant admits the truth of the allegations set forth in Paragraph 2 of the Amended
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`Notice of Opposition.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 3 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`4.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 4 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`5.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 5 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`6.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 6 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`7.
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`Applicant admits that the United States Patent and Trademark Office's TESS database
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`indicates that Opposer is the owner of the trademark registrations identified in Paragraph 7
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`of the Amended Notice of Opposition. Applicant has insufficient knowledge or
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`information as to the truth of the remaining allegations set forth in Paragraph 7 of the
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`Amended Notice of Opposition, and therefore, denies such allegations.
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`8.
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`Applicant admits that the United States Patent and Trademark Office's TESS database
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`indicates that Opposer is the owner of the U.S. trademark application identified in
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`Paragraph 8 of the Amended Notice of Opposition.
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`9.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 9 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`10.
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`Applicant admits that it filed an intent-to-use application with the United States Patent and
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`Trademark Office ("USPTO") for the mark E=MC2 EINSTEINHEAD ATHLETE and
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`Design ("Applicant's Mark") for use in connection with "Education services in the nature
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`of childhood instruction in the fields of math, science and physical fitness at the k-12 level"
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`as alleged in Paragraph 10 of the Amended Notice of Opposition. Applicant has
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`insufficient knowledge or information as to the truth of the remaining allegations set forth
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`in Paragraph 10 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`11.
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`Applicant denies the allegations set forth in Paragraph 11 of the Amended Notice of
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`Opposition.
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`12.
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`Applicant denies the allegations set forth in Paragraph 12 of the Amended Notice of
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`Opposition.
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`13.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 13 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`14.
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`Applicant denies the allegations set forth in Paragraph 14 of the Amended Notice of
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`Opposition.
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`15.
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`Applicant has insufficient knowledge or information as to the truth of the allegation that
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`"'EINSTEIN' is a term widely understood to be a surname" as set forth in Paragraph 15 of
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`the Amended Notice of Opposition, and therefore denies the allegation. Applicant denies
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`the remaining allegations set forth in Paragraph 15 of the Amended Notice of Opposition.
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`16.
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`Applicant denies the allegations set forth in Paragraph 16 of the Amended Notice of
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`Opposition.
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`17.
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`Applicant denies the allegations set forth in Paragraph 17 of the Amended Notice of
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`Opposition.
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`18.
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`Applicant denies the allegations set forth in Paragraph 18 of the Amended Notice of
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`Opposition.
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`19.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 19 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`20.
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`Applicant has insufficient knowledge or information as to the truth of the allegations set
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`forth in Paragraph 20 of the Amended Notice of Opposition, and therefore, denies such
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`allegations.
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`21.
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`Applicant denies the allegations set forth in Paragraph 21 of the Amended Notice of
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`Opposition.
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`22.
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`Applicant denies the allegations set forth in Paragraph 22 of the Amended Notice of
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`Opposition.
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`23.
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`Applicant denies the allegations set forth in Paragraph 23 of the Amended Notice of
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`Opposition.
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`24.
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`Applicant denies the allegations set forth in Paragraph 24 of the Amended Notice of
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`Opposition.
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`25.
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`Applicant denies the allegations set forth in Paragraph 25 of the Amended Notice of
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`Opposition.
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`26.
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`Applicant denies the allegations set forth in Paragraph 26 of the Amended Notice of
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`Opposition.
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`27.
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`Applicant denies the allegations set forth in Paragraph 27 of the Amended Notice of
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`Opposition.
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`28.
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`Applicant denies the allegations set forth in Paragraph 28 of the Amended Notice of
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`Opposition.
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`29.
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`Applicant denies the allegations set forth in Paragraph 29 of the Amended Notice of
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`Opposition.
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`30.
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`Applicant denies the allegations set forth in Paragraph 30 of the Amended Notice of
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`Opposition.
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`31.
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`Applicant denies the allegations set forth in Paragraph 31 of the Amended Notice of
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`Opposition.
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`AFFIRMATIVE DEFENSES
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`32.
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`As a first and separate affirmative defense, Applicant is informed and believes, and on this
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`basis asserts that Opposer's marks are weak due to the fact that numerous third party
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`registrations and applications for registration exist for marks containing the word
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`"EINSTEIN" by itself or joined with additional words. Therefore, Opposer's marks should
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`be entitled to a severely narrow scope of protection.
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`33.
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`As a second and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that Opposer's claim is barred from recovery due to the fact that no
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`likelihood of confusion, mistake or deception exists between Applicant's Mark and
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`Opposer's marks.
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`34.
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`As a third and separate affirmative defense, Applicant is informed and believes, and on this
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`basis asserts that Opposer's claim is barred from recovery due to the fact that Applicant's
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`Mark is not confusingly similar in appearance, sound or meaning to Opposer's marks.
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`35.
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`As a fourth and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that Opposer's claims are barred from recovery due to the fact that the
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`parties' respective marks used in connection with each party's respective services are
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`sufficiently distinct. Specifically, Applicant's services relate to "childhood instruction in
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`the fields of math, science and physical fitness at the k-12 level" which is completely
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`unrelated to the services provided in connection with Opposer's marks.
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`36.
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`As a fifth and separate affirmative defense, Applicant is informed and believes, and on this
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`basis asserts that Opposer's claim is barred from recovery due to the fact that there is no
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`evidence or allegation of any actual confusion, deception or mistake among consumers as
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`to the source of each party's respective goods and services.
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`37.
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`As a sixth and separate affirmative defense, Applicant is informed and believes, and on this
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`basis asserts that Opposer's claims are barred from recovery due to the fact that
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`"EINSTIEN" is a weak mark and is not distinctive to Opposer.
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`38.
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`As a seventh and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that consumers do not associate "Albert Einstein" or "Einstein" with
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`Opposer, and thus Opposer's marks do not point uniquely and unmistakably to Opposer.
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`The names "Albert Einstein" and "Einstein" refer to the deceased scientist, not Opposer.
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`Further, numerous third parties use "Albert Einstein" and "Einstein" as a trademark,
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`precluding the possibility that Opposer's alleged marks point uniquely and unmistakably to
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`Opposer.
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`39.
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`As an eighth and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that consumers would not presume a connection between Applicant or
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`Applicant's Mark and the deceased scientist Albert Einstein because numerous third parties
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`use "Albert Einstein" and "Einstein" as a trademark, and consumers do not presume a
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`connection between such uses and the deceased scientist.
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`40.
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`As a ninth and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that Opposer does not own any trademark rights in ALBERT EINSTEIN
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`or EINSTEIN because the deceased scientist Albert Einstein did not provide his consent to
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`Opposer's exclusive use of his name, likeness or image during his lifetime. Thus, Opposer
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`did not own any trademark rights in ALBERT EINSTEIN or EINSTEIN during the
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`deceased scientist's lifetime.
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`41.
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`As a tenth and separate affirmative defense, Applicant is informed and believes, and on this
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`basis asserts that the deceased scientist Albert Einstein transferred his right of publicity and
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`all other intellectual property rights to other, third parties, and ultimately to The Hebrew
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`University of Jerusalem ("HUJ"), through his Will (the "Will"), thereby giving HUJ
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`exclusive control of Albert Einstein's name and likeness, which includes his trademark
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`rights. Thus, Opposer was precluded by the will from establishing exclusive rights to use
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`ALBERT EINSTEIN or EINSTEIN after Albert Einstein's death.
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`42.
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`As an eleventh and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that EINSTEIN is merely descriptive when used in connection
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`educational services of any kind. Specifically, the term EINSTEIN is synonymous with
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`"intelligence", "smart", and similar words, all of which directly describe the purpose of
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`education, which is to increase the intelligence of students purchasing the educational
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`services. Because EINSTEIN is merely descriptive for educational services, Opposer's
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`marks should be entitled to a severely narrow scope of protection.
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`43.
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`As a twelfth and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that Opposer's claim is barred from recovery due to the fact that
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`Applicant's use of Applicant's Mark has not diluted, blurred, or tarnished Opposer's marks,
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`reputation or good will, and Opposer has not shown any injury to Opposer's business
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`reputation or quality of goods or services relating thereto.
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`44.
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`As a thirteenth and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that there is no likelihood of confusion because the United States
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`Patent and Trademark Office did not cite Opposer's marks as a bar or refusal to registration
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`of Applicant's Mark after considering the reality of the marks existing simultaneously in
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`the marketplace.
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`45.
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`As a fourteenth and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that Opposer's claim is barred from recovery due to the fact that
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`Applicant adopted and created its mark in good faith and without any intent to confuse or
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`deceive the public.
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`46.
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`As a fifteenth and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that Opposer's claim is barred from recovery due to the fact that
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`Applicant's use of Applicant's Mark has not interfered with or damaged Opposer in any
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`manner.
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`47.
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`As a sixteenth and separate affirmative defense, Applicant is informed and believes, and on
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`this basis asserts that Opposer's alleged marks are not famous marks because they fail to
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`distinguish Opposer and Opposer's goods or services from those offered by third parties
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`using the same marks.
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`48.
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`As a seventeenth and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that Opposer's claim is barred from recovery by reason of its own
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`unclean hands.
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`49.
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`As an eighteenth and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that Opposer's claim is barred from recovery by the doctrine of
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`estoppel.
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`50.
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`As a nineteenth and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that Opposer's claim is barred from recovery by the doctrine of
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`acquiescence.
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`51.
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`As a twentieth and separate affirmative defense, Applicant is informed and believes, and
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`on this basis asserts that Opposer's claim is barred from recovery by the doctrine of waiver.
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`WHEREFORE, Applicant prays that this Opposition be denied and the registration of U.S.
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`Application Serial No. 76/710,178 be granted.
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`COUNTERCLAIM FOR CANCELLATION
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`Applicant hereby petitions to cancel Reg. No. 1216122 for the mark ALBERT EINSTEIN
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`(the "ALBERT EINSTEIN Mark"), which Opposer alleges as a basis for its claims in these
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`consolidated oppositions. As grounds in support of its petition to cancel, Applicant alleges as
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`follows:
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`FRAUD
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`1. Upon information and belief, Opposer made willful false representations concerning material
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`facts in its U.S Trademark application for the mark ALBERT EINSTEIN submitted to the
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`USPTO on May 30, 1979, with the intent to deceive authorized USPTO agents and thereby
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`induce them to grant Registration No. 1216122. USPTO agents reasonably relied on
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`Opposer's false statements and granted Registration No. 1216122 on the basis thereof.
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`2. Upon information and belief, on May 30, 1979, one of Opposer's authorized representatives or
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`attorneys, who signed the application on behalf of Opposer, falsely stated in the declaration in
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`the application that (1) "he/she believes the applicant to be the owner of the trademark/service
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`mark sought to be registered" and that (2) "to the best of his/her knowledge and belief no other
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`person, firm, corporation, or association has the right to use the mark in commerce, either in
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`the identical form thereof or in such near resemblance thereto as to be likely, when used on or
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`in connection with the goods/services of such other person, to cause confusion, or to cause
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`mistake, or to deceive".
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`3. Upon information and belief, the signatory's statement "he/she believes the applicant to be the
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`owner of the trademark/service mark sought to be registered" is false because Opposer did not
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`own any trademark rights in the mark ALBERT EINSTEIN or EINSTEIN as of the filing date
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`of the application on May 30, 1979. Specifically, the deceased scientist Albert Einstein
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`transferred his right of publicity and all other intellectual property rights, including his
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`trademark rights, to other third parties, including the HUJ, through his Will dated March 18,
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`1950. Specifically, Article 13 of the Will provides, in relevant part:
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`I give and bequeath all of my manuscripts, copyrights, publication
`rights, royalties and royalty agreements, and all other literary
`property and rights, of any and every kind or nature whatsoever, to
`my Trustees hereinafter named, IN TRUST, to hold the same for a
`term measured by the lives of my secretary Helena Dukas, and my
`step-daughter, Margot Einstein . . . . Upon the death of the said
`Helena Dukas and the said Margot Einstein, this trust shall
`terminate, and thereupon all funds or property, if any, still held in
`this trust, including all accrued, accumulated and undistributed
`income and all literary rights and property, shall pass and be
`distributed to Hebrew University . . . .
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`Albert Einstein's Will dated March 18, 1950 (emphasis added).
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`4. Upon information and belief, Opposer was not a Trustee named in the Will and did not
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`otherwise take from the Will.
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`5. Upon information and belief, Opposer knew that it was not a Trustee named in the Will at the
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`time Opposer filed the application for ALBERT EINSTEIN on May 30, 1979.
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`6. Upon information and belief, Opposer was aware of newspaper articles or other publications
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`widely disseminated to the general public before May 30, 1979, which reported that Albert
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`Einstein transferred his right of publicity and all other intellectual property rights to another
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`third party, but not to Opposer.
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`7. Upon information and belief, the third parties which took from Albert Einstein's will, but not
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`including Opposer, owned Albert Einstein's right of publicity and all other intellectual property
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`rights as of May 30, 1979.
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`8. Upon information and belief, Opposer, through its representative, made the aforementioned
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`false statement that "he/she believes the applicant to be the owner of the trademark/service
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`mark sought to be registered" with the intent to deceive the USPTO into believing that it was
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`the owner of the mark ALBERT EINSTEIN, even though Applicant knew it did not own any
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`trademark rights in ALBERT EINSTEIN or EINSTEIN as of the application filing date, and
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`even though it knew that other, third parties owned such trademarks.
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`9. Upon information and belief, Opposer's statement in its application that "to the best of his/her
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`knowledge and belief no other person, firm, corporation, or association has the right to use the
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`mark in commerce, either in the identical form thereof or in such near resemblance thereto as
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`to be likely, when used on or in connection with the goods/services of such other person, to
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`cause confusion, or to cause mistake, or to deceive" is false because other third parties,
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`including the Trustees who took from the Will and HUJ, had the right to use ALBERT
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`EINSTEIN and EINSTEIN in commerce in 1979, pursuant to the Will.
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`10. Upon information and belief, Opposer was aware of the Will, including the specific provision
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`of the will transferring all of Albert Einstein's rights, including all intellectual property rights
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`and trademark rights, to other third parties, including HUJ. In addition, newspapers and other
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`publications widely disseminated to the public before 1979 discussed Einstein's Will and the
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`transfer of his right of publicity and intellectual property rights to other third parties, but not
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`including Opposer. Because Opposer was aware that another "person, firm, corporation, or
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`association", namely, the Trustees of the Will and HUJ, had the right to use ALBERT
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`EINSTEIN or EINSTEIN in commerce, Applicant made the aforementioned false statement
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`that with the intent to deceive the USPTO into believing that Opposer was the exclusive user of
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`the ALBERT EINSTEIN Mark, when Opposer was not.
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`11. Upon information and belief, Opposer made the above false statements with the intent to
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`deceive authorized USPTO agents and thereby induce them to grant Registration No. 1216122.
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`12. Applicant will be damaged by the continued existence of Reg. No. 1216122 because Opposer
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`has alleged its registration for the ALBERT EINSTEIN Mark as a basis for opposition of
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`Applicant's Mark.
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`WHEREFORE, Petitioner prays that this Counterclaim for Cancellation be sustained on the
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`grounds of fraud; and that registration no. 1216122 be cancelled.
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`Dated as of: October 16, 2012
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`By: ___/Paulo A. de Almeida/__________
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`Paulo A. de Almeida
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`Patel & Almeida, P.C.
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`16830 Ventura Blvd., Suite 360
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`Encino, CA 91436
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`(818) 380-1900
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`Attorneys for Applicant,
`Randolph Saint Martin
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`PROOF OF SERVICE
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` hereby certify that a true and complete copy of the foregoing APPLICANT'S AMENDED
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`ANSWER TO OPPOSER'S AMENDED NOTICE OF OPPOSITION AND
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`COUNTERCLAIM FOR CANCELLATION has been served on Rachelle A. Dubow, Esq.,
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`counsel for Opposer, on October 16, 2012, via First Class U.S. Mail, postage prepaid to:
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`Rachelle A. Dubow, Esq.
`Bingham McCutchen LLP
`One Federal Street
`Boston, MA 02110
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`By: _/Paulo A. de Almeida/_______
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` Paulo A. de Almeida
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`14