Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA571174
`ESTTA Tracking number:
`11/15/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91213026
`Defendant
`ZTE Corporation
`STACY L. EMHOFF
`WALKER & JOCKE
`231 S BROADWAY ST
`MEDINA, OH 44256-2601
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`iplaw@walkerandjocke.com
`Answer
`Stacy L. Emhoff
`iplaw@walkerandjocke.com
`/Stacy L. Emhoff/
`11/15/2013
`ZTE Answer.pdf(89448 bytes )
`
`
`ESTTA571174
`ESTTA Tracking number:
`11/15/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91213026
`Defendant
`ZTE Corporation
`STACY L. EMHOFF
`WALKER & JOCKE
`231 S BROADWAY ST
`MEDINA, OH 44256-2601
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`iplaw@walkerandjocke.com
`Answer
`Stacy L. Emhoff
`iplaw@walkerandjocke.com
`/Stacy L. Emhoff/
`11/15/2013
`ZTE Answer.pdf(89448 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91213026
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`Mark: ZTE AVENGER
`Serial No.: 85887991
`Filed: March 27, 2013
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`MARVEL CHARACTERS, INC.
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`Opposer,
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`vs.
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`ZTE CORPORATION
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`Applicant.
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`APPLICANT'S ANSWER
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`Crrnkecpv"¥VG"Eqtrqtcvkqp"*ÐCrrnkecpvÑ+"uwdokvu"its Answer in response to the Notice
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`of Opposition *vjg"ÐQrrqukvkqpÑ+"hkngf"kp"vjku"cevkqp"d{"Octxgn"Ejctcevgtu."Kpe0"*ÐQrrqugtÑ+0"
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`Applicant denies the allegations in the Opposition that Opposer is and will be damaged by
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`CrrnkecpvÓu"Trademark Registration Application Serial No. 85887991 for the ZTE AVENGER
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`octm"*vjg"ÐCrrnkecvkqpÑ+0""Cnn"cnngicvkqpu"eqpvckpgf"kp"vjg"Qrrqukvkqp"pqv"gzrtguun{"cfokvvgf"ctg"
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`denied. Applicant responds to the averments in the numbered paragraphs of the Notice of
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`Opposition as follows:
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`1.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 1 of the Notice of Opposition, and therefore denies
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`the same.
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`1
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`2.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 2 of the Notice of Opposition, and therefore denies
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`the same.
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`3.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 3 of the Notice of Opposition, and therefore denies
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`the same.
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`4.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 4 of the Notice of Opposition, and therefore denies
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`the same.
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`5.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 5 of the Notice of Opposition, and therefore denies
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`the same.
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`6.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 6 of the Notice of Opposition, and therefore denies
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`the same.
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`7.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 7 of the Notice of Opposition, and therefore denies
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`the same.
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`8.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 8 of the Notice of Opposition, and therefore denies
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`the same.
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`2
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`9.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 9 of the Notice of Opposition, and therefore denies
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`the same.
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`10.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 10 of the Notice of Opposition, and therefore denies
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`the same.
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`11.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 11 of the Notice of Opposition, and therefore denies
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`the same.
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`12.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 12 of the Notice of Opposition, and therefore denies
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`the same.
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`13.
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`Crrnkecpv"cfokvu"vjcv"CrrnkecpvÓu"Trademark Application is identified as
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`Application Serial No. 85887991. Applicant is without knowledge or information sufficient to
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`form a belief as to the truth of any remaining allegations in Paragraph 13 of the Notice of
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`Opposition, and therefore denies the same.
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`14.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 14 of the Notice of Opposition, and therefore denies
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`the same.
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`15.
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`Applicant admits that Opposer is listed as the owner of registrations and
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`applications listed in the chart below Paragraph 15. Applicant denies that Opposer has only
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`registered Trademark Registration No. 4398790 for the goods listed in the chart. Applicant is
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`3
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`without knowledge or information sufficient to form a belief as to the truth of any remaining
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`allegations in Paragraph 15 of the Notice of Opposition, and therefore denies the same.
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`16.
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`17.
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`18.
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`Applicant admits the allegations in Paragraph 16 of the Notice of Opposition.
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`Applicant admits the allegations in Paragraph 17 of the Notice of Opposition.
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`Crrnkecpv"cfokvu"vjcv"CrrnkecpvÓu"octm"ycu"rwdnkujgf"hqt"Qrrqukvkqp"kp"vjg
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`Trademark Official Gazette on June 18, 2013. Applicant admits that Opposer filed an extension
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`of time to oppose on July 17, 2013. Applicant denies any and all remaining allegations in
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`Paragraph 18 of the Notice of Opposition.
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`19.
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`Applicant restates its admissions and denials in Paragraphs 1-18 as if fully
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`restated herein.
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`20.
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`Appnkecpv"cfokvu"vjcv"CrrnkecpvÓu"Vrademark Application is identified as
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`Application Serial No. 85887991. Applicant is without knowledge or information sufficient to
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`form a belief as to the truth of any remaining allegations in Paragraph 20 of the Notice of
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`Opposition, and therefore denies the same.
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`21.
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`22.
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`23.
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`24.
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`Applicant denies the allegations in Paragraph 21 of the Notice of Opposition.
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`Applicant denies the allegations in Paragraph 22 of the Notice of Opposition.
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`Applicant denies the allegations in Paragraph 23 of the Notice of Opposition.
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`Crrnkecpv"cfokvu"vjcv"CrrnkecpvÓu"¥VG"CXGPIGT"octm"ku"kfgpvkhkgf"cu"
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`Application Serial No. 85887991. Applicant denies any and all remaining allegations in
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`Paragraph 24 of the Notice of Opposition.
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`25.
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`Applicant restates its admissions and denials in Paragraphs 1-25 as if fully
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`restated herein.
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`4
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`26.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 26 of the Notice of Opposition, and therefore denies
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`the same.
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`27.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 27 of the Notice of Opposition, and therefore denies
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`the same.
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`28.
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`Crrnkecpv"cfokvu"vjcv"CrrnkecpvÓu"Crrnkecvkqp"ku"kfgpvkhkgf"cu"Crrnkecvkqp"Ugtkcn"
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`No. 85887991. Applicant is without knowledge or information sufficient to form a belief as to
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`the truth of any remaining allegations in Paragraph 28 of the Notice of Opposition, and therefore
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`denies the same.
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`29.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of any and all allegations in Paragraph 29 of the Notice of Opposition, and therefore denies
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`the same.
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`AFFIRMATIVE DEFENSES
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`30.
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`In addition to the defenses described below, Applicant specifically reserves the
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`right to allege additional defenses as factual information in support of which becomes known
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`through the course of discovery.
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`FIRST DEFENSE
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`31.
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`The Opposer fails to state a claim upon which relief can be granted.
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`SECOND DEFENSE
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`32.
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`There is no likelihood of confusion between the mark in the Application and any
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`alleged trademark of Opposer.
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`5
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`THIRD DEFENSE
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`33.
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`The Opposer is not using its AVENGERS INITIATIVE mark (Registration No.
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`4398790) on all of the goods listed in that Registration.
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`34.
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`Qp"kphqtocvkqp"cpf"dgnkgh."QrrqugtÓu"CXGPIGTU"KPKVKCVKXG"octm"
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`(Registration No. 4398790) contains goods improperly included in the registration.
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`35.
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`The original application was filed under Section 1(b) of the Trademark Act.
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`Applicant later filed an Amendment to Allege Use and a Request to Divide the application.
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`36.
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`The Amendment to Allege Use clearly shows that the Opposer was not using all
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`of the goods originally filed for in Class 9.
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`37.
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`CrrnkecpvÓu"Tgswguv to Divide was found to be untimely filed by the United States
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`Patent and Trademark Office *ÐWURVQÑ+, as it was filed on or after the date the application had
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`been approved for publication (i.e., April 22, 2013) and before the notice of allowance had
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`issued.
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`38.
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`Eqpugswgpvn{."QrrqugtÓu"CXGPIGTU"KPKVKCVKXG"crrnkecvkqp"rtqeggfgf"vq"dg"
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`allowed by the USPTO and subsequently issued as Trademark Registration No. 4398790. The
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`Registration included all of the originally filed for goods, including goods that are not currently
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`in use.
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`39.
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`In view of the foregoing allegations, Opposer is not entitled to the continued
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`registration of the AVENGERS INITIATIVE mark.
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`6
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`WHEREFORE, Applicant submits that Opposer will not be injured or damaged by the
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`registration of the mark in the Application, and therefore requests that the Opposition be denied,
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`that the Application be granted, and that a registration be issued thereon.
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`Dated: November 15, 2013
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`WALKER & JOCKE CO., LPA
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`By: /s/ Patricia A. Walker
`Patricia A. Walker (Ohio Bar No. 0001779)
`Ralph E. Jocke (Ohio Bar No. 0011642)
`Stacy L. Emhoff (Ohio Bar No. 0080295)
`231 South Broadway
`Medina, Ohio 44256
`330-721-0000 Telephone
`330-722-6446 Facsimile
`iplaw@walkerandjocke.com
`Attorneys for Applicant
`ZTE Corporation
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`7
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`CERTIFICATE OF SERVICE
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`Applicant states on this 15th day of November, 2013 that it deposited with the United States
`Rquvcn"Ugtxkeg"ÐGzrtguu"Ockn"Rquv"Qhhkeg"vq"Cfftguugg.Ñ"ykvj"egtvkhkecvkqp"tgswguvgf."c"eqr{"qh
`this Answer and Counterclaim to the address listed in the records of the United States Patent and
`Trademark Office for the Opposer, Marvel Characters, Inc., 1600 Rosecrans Avenue, Manhattan
`Beach, California 90266, and to the attorney of record, Linda K. McLeod, Kelly IP, LLP, 1330
`Connecticut Avenue, NW Suite 300, Washington, DC 20036.
`
`
`/s/ Patricia A. Walker
`Patricia A. Walker
`Attorney for Applicant
`ZTE Corporation
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`
`8
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