Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA627801
`ESTTA Tracking number:
`09/17/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216747
`Defendant
`BPI Beverages, LLC
`John C Carey
`Carey Rodriguez et al LLP
`1395 Brickell Avenue Suite 700
`Miami, FL 33131
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`jcarey@careyrodriguez.com, aunderwood@careyrodriguez.com
`Answer
`John Carey
`jcarey@careyrodriguez.com, aunderwood@careyrodriguez.com
`/John Carey/
`09/17/2014
`2014-09-17 Answer to ROXYLEAN Opposition .pdf(110862 bytes )
`
`
`ESTTA627801
`ESTTA Tracking number:
`09/17/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216747
`Defendant
`BPI Beverages, LLC
`John C Carey
`Carey Rodriguez et al LLP
`1395 Brickell Avenue Suite 700
`Miami, FL 33131
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`jcarey@careyrodriguez.com, aunderwood@careyrodriguez.com
`Answer
`John Carey
`jcarey@careyrodriguez.com, aunderwood@careyrodriguez.com
`/John Carey/
`09/17/2014
`2014-09-17 Answer to ROXYLEAN Opposition .pdf(110862 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91216747
`
`In the matter of Trademark
`Application Serial No. 85/521,731
`Mark: ROXYLEAN
`Filing Date: January 20, 2012
`Published for Opposition: April 8, 2014
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`QS Wholesale, Inc.,
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`Opposer,
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`v.
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`
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`BPI Sports, LLC
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`
`
`
`
`Applicant.
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`
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`
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`_____________________________/
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`APPLICANT’S ANSWER AND AFFIRMATIVE DEFENSES
`TO NOTICE OF OPPOSITION
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`Applicant BPI Beverages, LLC (“Applicant”), by and through its undersigned
`
`counsel, hereby sets forth its Answer and Affirmative Defenses to Opposer QS
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`Wholesale, Inc.’s (“Opposer”) Notice of Opposition in the above-styled proceeding
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`(“Notice of Opposition”) as follows:
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`Responding to the first unnumbered paragraph of the Notice of Opposition,
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`Applicant admits that it owns U.S. Trademark Application Serial No. 85/521,731 for use
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`in connection with “non-carbonated sports energy drinks” in Class 32. Applicant denies
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`that Opposers will be damaged by registration of U.S. Trademark Application Serial No.
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`85/521,731. Except as expressly admitted or denied, Applicant is without knowledge or
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`
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`information sufficient to form a belief as to the truth of the allegation contained in the
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`first unnumbered paragraph of the Notice of Opposition, and therefore denies the same.
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`1.
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`Applicant is without knowledge or information sufficient to form a belief
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`as to the truth of the allegation contained in Paragraph 1 of the Notice of Opposition, and
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`therefore denies the same.
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`2.
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`Applicant admits that U.S. Trademark Application Serial No. 85/521,731
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`was filed on January 20, 2012. Except as expressly admitted or denied, Applicant is
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`without knowledge or information sufficient to form a belief as to the truth of the
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`allegation contained in the 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
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`as to the truth of the allegation contained in Paragraph 3 of the Notice of Opposition, and
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`therefore denies the same.
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`4.
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`Applicant is without knowledge or information sufficient to form a belief
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`as to the truth of the allegation contained in Paragraph 4 of the Notice of Opposition, and
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`therefore denies the same.
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`5.
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`Applicant denies each and every allegation contained in Paragraph 5 of the
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`Notice of Opposition.
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`6.
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`Applicant is without knowledge or information sufficient to form a belief
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`as to the truth of the allegation contained in Paragraph 6 of the Notice of Opposition, and
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`therefore denies the same.
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`7.
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`Applicant denies each and every allegation contained in Paragraph 7 and
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`subparagraphs (a), (b) and (c) of the Notice of Opposition.
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`
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`8.
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`Regarding Paragraph 8 of the Notice of Opposition, which constitutes
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`Opposer’s prayer for relief, Applicant denies each and every allegation contained therein
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`and denies that Opposer is entitled to any of the relief requested.
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`AFFIRMATIVE DEFENSES
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`FIRST DEFENSE
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`Applicant is informed and believes, and thereon alleges that the facts set forth in
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`the Notice of Opposition are insufficient to show damage necessary to oppose the subject
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`matter application, and that the Notice of Opposition fails to state a claim upon which
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`relief can be granted.
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`SECOND DEFENSE
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`There is no likelihood of confusion between Opposer’s ROXY marks for clothing,
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`accessories and related clothing store services and the Applicant’s ROXYLEAN mark
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`and application thereof for use in connection with non-carbonated sports energy drinks,
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`considering the marks themselves, the respective goods and services in connection with
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`which the marks are used, the marketing channels of trade and the fields of use.
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`THIRD DEFENSE
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`Opposer does not have the exclusive right to use and/or register and/or enforce its
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`ROXY mark in all classes of goods and services, particularly for unrelated goods and
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`services.
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`FOURTH DEFENSE
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`Opposer's failure to enforce its ROXY marks and registrations has resulted in
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`numerous third-party ROXY registrations for goods and services unrelated to those
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`provided by Opposer.
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`FIFTH DEFENSE
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`Opposer's Notice of Opposition and claims therein are barred, precluded or
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`limited because, upon information and belief, there are significant numbers of third-party
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`users of ROXY marks for a variety of goods and services unrelated to those provided by
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`Opposer. Therefore the term ROXY is highly diluted and unworthy of a wide scope of
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`protection.
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`SIXTH DEFENSE
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`Applicant’s mark is not confusingly similar to Opposer’s mark as none of the
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`goods and services on which Applicant intends to use its proposed mark fall within
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`Opposer’s natural zone of expansion.
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`SEVENTH DEFENSE
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`Opposer will not be damaged and is not likely to be damaged by the registration
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`of U.S. Trademark Application Serial No. 85/521,731.
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`PRAYER FOR RELIEF
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`
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`WHEREFORE, Applicant respectfully prays that the Trademark Trial and
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`Appeal Board:
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`A.
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`dismiss Opposer’s Notice of Opposition in its entirety with prejudice, and
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`B.
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` enter judgment in favor of Applicant, and allow registrations to be issued to
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`Applicant on U.S. Trademark Application Serial No. 85/521,731
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`
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`Dated: September 17, 2014
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`By: /s/ John C. Carey______
`John C. Carey
`jcarey@careyrodriguez.com
`Adam C. Underwood
`aunderwood@careyrodriguez.com
`
`CAREY RODRIGUEZ O’KEEFE
`MILIAN GONYA, LLP
`1395 Brickell Avenue, Suite 700
`Miami, FL 33131
`Tel. 305.372.7474
`Fax. 305.372.7475
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`Attorneys for Applicant,
`BPI Beverages, LLC
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`CERTIFICATE OF SERVICE
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`This is to certify that a copy of the foregoing APPLICANT’S ANSWER AND
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`AFFIRMATIVE DEFENSES TO NOTICE OF OPPOSITION was served via U.S.
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`First Class mail, postage prepaid, and properly addressed to counsel of record:
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`this 17th day of September 2014
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`
`Carlo F. Van Den Bosch
`Gazal J. Pour-Moezzi
`Sheppard, Mullin, Richter & Hampton LLP
`650 Town Center Drive, Fourth Floor
`Costa Mesa, CA 92626
`
`
`By: /s/ Adam C. Underwood______
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` Adam C. Underwood
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` Attorney for Applicant
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