Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA733647
`03/15/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91221569
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Plaintiff
`Snapchat, Inc.
`
`ROBERT POTTER
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 AVENUE OF THE AMERICAS, 21ST FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`rpotter@ktslaw.com, svayner@ktslaw.com, tmadmin@ktslaw.com,
`dwilson@ktslaw.com
`
`Motion to Amend Pleading/Amended Pleading
`
`Robert Potter
`
`rpotter@ktslaw.com, svayner@ktslaw.com, tmadmin@ktslaw.com,
`dwilson@ktslaw.com
`
`Signature
`
`Date
`
`/Robert Potter/
`
`03/15/2016
`
`Attachments
`
`2016.03.15 Motion for Leave to Amend NOO.pdf(3560908 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/358,450
`For the mark: SCRAP CHAT
`Filed: August 6, 2014
`Published: January 20, 2015
`
`--------------------------------------------------------X
`SNAPCHAT, INC.,
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`:
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`
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`: Opposition No. 91221569
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`:
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`:
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`:
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`:
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`: :
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`Opposer,
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`
` v.
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`JUSTIN SCHWARTZ,
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`:
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`Applicant.
`--------------------------------------------------------X
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`OPPOSER SNAPCHAT, INC.’S MOTION AND BRIEF IN SUPPORT FOR
`LEAVE TO AMEND NOTICE OF OPPOSITION AND TO SUSPEND PROCEEDING
`
`Pursuant to Rule 2.107 of the Trademark Rules of Practice, 37 C.F.R. § 2.107, Trademark
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`
`
`
`
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`Board Manual of Procedure (“TBMP”) §§ 315 and 507, and Rule 15(a) of the Federal Rules of
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`Civil Procedure, and on the basis of information recently obtained through discovery, Opposer
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`Snapchat, Inc. (“Opposer” or “Snapchat”) respectfully moves the Board for leave to amend its
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`Notice of Opposition against Applicant Justin Schwartz (“Applicant” or “Schwartz”) to add a
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`claim that application Serial No. 86/358,450 to register the mark SCRAP CHAT is void ab initio
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`because the Applicant currently does not own the SCRAP CHAT mark and did not own that
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`mark as of the filing date of the application, as required by 15 U.S.C. § 1051(a) and 37 C.F.R. §
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`2.71(d).
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`In accordance with TBMP § 507.01, a signed copy of the proposed Amended Notice of
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`Opposition is attached as Exhibit A, and a redlined copy of the Amended Notice of Opposition,
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`showing the proposed changes from the original Notice of Opposition, is attached as Exhibit B.
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`
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`Additionally, pursuant to 37 C.F.R. § 2.117(c) and TBMP § 510.03, Snapchat requests
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`

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`that the Board suspend this proceeding pending disposition of Snapchat’s Motion for Leave to
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`Amend its Notice of Opposition (the “Motion”).
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`
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`Snapchat’s counsel requested Applicant’s consent to this amendment on February 26, but
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`as of the filing of this Motion has not yet received a substantive response, despite several
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`attempts to follow up with Applicant’s counsel regarding this issue. See Declaration of Robert
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`Potter (“Potter Decl.”) ¶ 2, Ex. 1. Given the passage of two weeks since Snapchat initially
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`requested Applicant’s consent, Snapchat had no choice but to file the present Motion to avoid
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`any further delay.
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`I.
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`
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`FACTS AND PROCEDURAL HISTORY
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`On August 6, 2014, Applicant filed a use-based application to register the mark SCRAP
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`CHAT for “computer application software for mobile phones, tablets, and handheld computers,
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`namely, software for allowing users to share pictures, videos, links, and other content and lets
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`them post them to their own pages if they enjoy the content” in Class 9, claiming a date of first
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`use in commerce of January 2, 2014 (Serial No. 86/358,450) (the “Application”). Snapchat
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`timely filed a Notice of Opposition against the Application on April 20, 2015, objecting on
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`likelihood of confusion grounds. See Dkt. No. 1.
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`
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`As part of ongoing discovery between the parties, counsel for Snapchat took Applicant’s
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`deposition on January 6, 2016. See Potter Decl. ¶ 3, Ex. 2.1 Applicant’s deposition testimony
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`revealed that Applicant was not the current owner of the SCRAP CHAT mark, that Applicant
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`was not the owner of the SCRAP CHAT mark on the filing date of the Application, and that,
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`1 Although discovery in this proceeding closed on December 26, 2015, the parties stipulated – and the
`Board granted – a thirty (30) day extension of this deadline for the limited purpose of taking Applicant’s
`deposition, which had been properly noticed within the discovery period, but which ultimately was
`scheduled for January 2016 to accommodate Applicant’s schedule. See Dkt. Nos. 5-6.
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`2
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`

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`instead, the mark is and always has been owned by Keatman Inc. (“Keatman”), an active New
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`York corporation.2
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`Specifically, among other related statements, Applicant testified that Keatman is the
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`owner of the SCRAP CHAT mark and the application to register that mark with the USPTO:
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`Q: Does Keatman own the SCRAP CHAT application?
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`A: Yes.
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`Q: Does Keatman own the mark you’ve applied for to register
`SCRAP CHAT?
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`A: Yes.
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`Q: Does Keatman own that mark 100 percent?
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`A: I believe so.
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`Potter Decl. ¶ 3, Ex. 2 at 17:11-18.
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`Consequently, and based on this, it appears that Applicant is not, and has never been, the
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`owner of the SCRAP CHAT mark. Under these circumstances, Snapchat respectfully requests
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`that the Board grant Snapchat leave to amend its Notice of Opposition to include a claim that the
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`Application is void ab initio because Applicant did not own the SCRAP CHAT mark as of the
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`filing date of the Application.
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`II.
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`ARGUMENT AND CITATION OF AUTHORITY
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`
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`Pleadings in an opposition proceeding may be amended in the same manner and to the
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`same extent as in a civil action. See 37 C.F.R. § 2.107; TBMP §§ 315 and 507. Rule 15(a) of the
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`Federal Rules of Civil Procedure provides that a party may amend its pleading by leave of court,
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`which should be freely given when justice so requires. Fed. R. Civ. P. 15(a). The Trademark
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`2 Documents filed with the Department of State for the State of New York on June 3, 2013 confirm that
`Keatman was an active New York corporation on the filing date of the Application and that it remains an
`active New York corporation as of the filing date of this Motion. See Potter Decl. ¶ 4, Ex. 3.
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`3
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`

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`Trial and Appeal Board Manual of Procedure provides that “the Board liberally grants leave to
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`amend pleadings at any stage of a proceeding when justice so requires, unless entry of the
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`proposed amendment would violate settled law or be prejudicial to the rights of the adverse party
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`or parties.” TBMP § 507.02; see also, e.g., Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26
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`U.S.P.Q.2d 1503, 1505 (T.T.A.B. 1993) (granting leave to include a claim that applicant lacked a
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`bona fide intent to use the mark in commerce); Combs v. Pac. Rim Mktg. Inc., Opp. No.
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`91187342, 2010 WL 5522991, at *2 (T.T.A.B. Dec. 16, 2010); Am. Univ. v. Van Niekerk, Can.
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`No. 92040938, 2003 WL 22970623, at *1-2 (T.T.A.B. Dec. 15, 2003). Here, entry of the
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`proposed Amended Notice of Opposition would neither violate settled law nor be prejudicial to
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`Applicant’s rights.
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`A.
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`Justice Requires that Snapchat’s Motion for Leave to Amend Its Notice
`of Opposition Be Granted
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`Numerous Board decisions have granted motions for leave to amend an opposer’s notice
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`
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`of opposition to add various claims based on facts developed during or after the discovery
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`period, including the claim that the application at issue was void ab initio. See, e.g., PB Brands,
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`LLC v. KRBL Ltd., Opp. No. 91197238, 2013 WL 11247071, at *1 (T.T.A.B. Dec. 5, 2013)
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`(granting motion for leave to amend answer to add several counterclaims, including counterclaim
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`that “the application underlying opposer’s pleaded registration was filed by the wrong applicant
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`and therefore is void ab initio”); McCauley v. Jillybeans Shoes Corp., Can. No. 92056192, 2013
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`WL 11248342 (T.T.A.B. Dec. 13, 2013) (granting motion to amend petition for cancellation to
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`add claim that registration was void because respondent was not using its mark in commerce as
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`of the filing date of the application); Combs, 2010 WL 5522991 (granting opposer’s motion for
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`leave to amend to add claim that application was void ab initio because applicant did not use
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`mark in commerce prior to filing date of application); Universal City Studios, LLP v. Valen
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`Brost, Opp. No. 91153683, 2004 WL 1957207 (T.T.A.B. Aug. 18, 2004) (granting opposer’s
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`4
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`

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`motion for leave to amend to add claim that application was void ab initio as a result of
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`applicant’s non-use of mark in commerce prior to filing date of use-based application in light of
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`new information discovered during applicant’s deposition); see also, e.g., Commodore, 26
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`U.S.P.Q.2d at 1508 (granting opposer’s motion for leave to amend notice of opposition where
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`opposer learned “through discovery” that applicant “did not have a single document to establish
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`a bona fide intention to use” applied-for mark); L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d
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`1883 (T.T.A.B. 2003) (granting opposer’s motion for summary judgment on lack of bona fide
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`intent to use grounds; noting opposer had amended its notice of opposition).
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`
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`As discussed above, Snapchat’s Motion seeks to add a claim that the Application is void
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`ab initio because Applicant does not own the SCRAP CHAT mark and did not own the mark as
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`of the filing date of the Application, as Applicant’s recent deposition testimony disclosed that the
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`SCRAP CHAT mark is, and always has been, owned by Keatman. See Potter Decl. ¶ 3, Ex. 2.
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`Accordingly, and consistent with the Board’s practice of granting such amendments “liberally,”
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`justice requires that Snapchat be permitted to amend its Notice of Opposition to add this claim.
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`B.
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`Applicant Will Not Suffer Any Prejudice as a Result of the Amended
`Notice of Opposition
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`Applicant will not suffer any prejudice as a result of the proposed amendment. Snapchat
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`
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`is moving the Board for leave to amend shortly after the discovery of this new information, and
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`prior to its pretrial disclosures deadline and the opening of its testimony period.3 Moreover, all
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`relevant information and documents concerning the ownership of the SCRAP CHAT mark are
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`3 A few weeks after the deposition, the parties began discussing the possibility of an amicable resolution
`to their dispute, and filed a consent motion with the Board on February 5, requesting a 60-day extension
`of all proceeding deadlines to accommodate the parties’ settlement discussions, which the Board granted
`the same day. See Dkt. Nos. 7-8. Regardless of whether the parties are ultimately able to reach settlement,
`Snapchat seeks to amend its Notice of Opposition to assert all relevant and potentially dispositive claims.
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`5
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`

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`already in Applicant’s possession and control. Consequently, there is no discovery of Snapchat
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`by Applicant that could clarify this issue for the benefit of the Board or the parties.
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`In determining whether the proposed amendment is prejudicial, an important factor for
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`consideration is the timing of the motion for leave to amend, and the Board generally considers
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`motions for leave to amend timely if filed prior to the opening of the opposer’s testimony period
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`in the proceeding. See TBMP § 507.02; Commodore, 26 U.S.P.Q.2d at 1505-06 (finding no
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`undue delay prejudicing applicant where opposer moved for leave to amend pleadings in view of
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`pending motions for summary judgment); Focus 21 Int’l Inc. v. Pola Kasei Kogyo Kabushiki
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`Kaisha, 22 U.S.P.Q.2d 1316, 1318 (T.T.A.B. 1992) (finding no prejudice where petitioner filed
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`motion to amend petition for cancellation to add claim of abandonment prior to opening of
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`petitioner’s testimony period); see also Boral Ltd. v. FMC Corp., 59 U.S.P.Q.2d 1701, 1703-04
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`(T.T.A.B. 2000) (finding no undue delay where motion to add claim of dilution was filed two
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`years after commencement of the proceeding because the motion was promptly filed after such
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`claim became available); U.S. Olympic Comm. v. O-M Bread Inc., 26 U.S.P.Q.2d 1221, 1223
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`(T.T.A.B. 1993) (granting opposer’s motion to amend notice of opposition where proceeding
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`was still in pre-trial stage and discovery had been extended).
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`Here, Snapchat’s Motion is being filed prior to the opening of its testimony period (April
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`25), and indeed almost a month prior to its pretrial disclosures deadline (April 9). See Dkt. Nos.
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`7-8. Snapchat thus did not unduly delay in seeking leave to amend its Notice of Opposition,
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`having only learned the supporting facts for its new claim at Applicant’s January 2016
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`deposition.
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`Moreover, because Snapchat’s proposed amendment concerns ownership of the SCRAP
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`CHAT mark, Applicant need not take discovery to ascertain the underlying facts, as all
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`information necessary to respond to this new claim is already within Applicant’s possession
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`6
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`

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`and/or control. See, e.g., Combs, 2010 WL 5522991, at *2 (“[W]e agree with opposer that
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`because the facts relevant to whether and when applicant used its mark are within applicant’s
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`control, applicant should not require discovery on this claim and would not be prejudiced by the
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`addition of the proposed claim.”); Am. Univ., 2003 WL 22970623, at *2 (“Inasmuch as . . .
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`information regarding the two new claims resides with respondent, allowance of the proposed
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`amendment would not be prejudicial to respondent.”).
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`III. CONCLUSION
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`
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`For each of the foregoing reasons, Snapchat respectfully requests that the Board grant its
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`motion for leave to amend its Notice of Opposition to add a claim that the Application is void ab
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`initio because Applicant did not own the SCRAP CHAT mark as of the filing date of the
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`Application (and presently does not own the SCRAP CHAT mark).
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`Additionally, pursuant to 37 C.F.R. § 2.117(c) and TBMP § 510.03, Snapchat requests
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`that the Board suspend this proceeding pending disposition of Snapchat’s Motion.
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`This 15th day of March, 2016.
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`
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`
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`Respectfully submitted,
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`/Robert Potter/
`Robert Potter
`Kilpatrick Townsend & Stockton LLP
`The Grace Building
`1114 Avenue of the Americas
`New York, New York 10036
`Telephone: (212) 775-8700
`rpotter@kilpatricktownsend.com
`
`Sabina A. Vayner
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309-4528
`Telephone: (404) 815-6500
`svayner@kilpatricktownsend.com
`
`Attorneys for Opposer Snapchat, Inc.
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`7
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/358,450
`For the mark: SCRAP CHAT
`Filed: August 6, 2014
`Published: January 20, 2015
`
`--------------------------------------------------------X
`SNAPCHAT, INC.,
`
`:
`
`
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`: Opposition No. 91221569
`
`:
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`:
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`:
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`:
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`Opposer,
`
`
` v.
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`JUSTIN SCHWARTZ,
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`
`
`
`
`: :
`
`
`
`
`
`
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`:
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`Applicant.
`--------------------------------------------------------X
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`CERTIFICATE OF SERVICE
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`This is to certify that a copy of the foregoing Opposer Snapchat, Inc.’s Motion and
`
`Brief in Support for Leave to Amend Notice of Opposition and to Suspend Proceeding
`(with all supporting exhibits and declaration) has been served on Applicant’s counsel of record
`on March 15, 2016 by depositing said copy with the United States Postal Service as First Class
`Mail, postage prepaid, addressed to:
`
`
`Jean-Marc Zimmerman, Esq.
`Zimmerman, Weiser & Paray LLP
`233 Watchung Fork
`Westfield, NJ 07090
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Kris Teilhaber/
` Kris Teilhaber
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`CERTIFICATE OF TRANSMITTAL
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`I hereby certify that a true and correct copy of the foregoing Opposer Snapchat, Inc.’s
`Motion and Brief in Support for Leave to Amend Notice of Opposition and to Suspend
`Proceeding (with all supporting exhibits and declaration) is being filed electronically with the
`TTAB via ESTTA on this day, March 15, 2016.
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`
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` /Kris Teilhaber/
` Kris Teilhaber
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`8
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/358,450
`For the mark: SCRAP CHAT
`Filed: August 6, 2014
`Published: January 20, 2015
`
`--------------------------------------------------------X
`SNAPCHAT, INC.,
`
`:
`
`
`
`: Opposition No. 91221569
`
`:
`
`:
`
`:
`
`:
`
`Opposer,
`
`
` v.
`
`JUSTIN SCHWARTZ,
`
`
`
`
`
`
`
`
`
`
`
`: :
`
`:
`
`Applicant.
`--------------------------------------------------------X
`
`
`DECLARATION OF ROBERT POTTER IN SUPPORT OF
`OPPOSER SNAPCHAT, INC.’S MOTION FOR LEAVE TO AMEND
`NOTICE OF OPPOSITION AND TO SUSPEND PROCEEDING
`
`
`I, Robert Potter, declare as follows:
`
`1.
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`I am an attorney at the law firm of Kilpatrick Townsend & Stockton LLP
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`(“Kilpatrick Townsend”), and I am counsel of record for Opposer Snapchat, Inc. (“Opposer” or
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`“Snapchat”) in the above-referenced opposition proceeding. I am over the age of twenty-one, I
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`am competent to make this Declaration, and the facts set forth in this Declaration are based on
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`my personal knowledge or on files maintained in the ordinary course of business by Kilpatrick
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`Townsend employees under my supervision.
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`2.
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`I contacted Applicant Justin Schwartz’s (“Applicant” or “Schwartz”) counsel by
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`email on February 26, 2016 to inform him that Snapchat intended to amend its Notice of
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`Opposition to add a new claim, and to request Applicant’s consent to this amendment. I sent
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`

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`follow-up emails to Applicant’s counsel on March 2 and March 8. A true and correct copy of my
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`February 26-March 9 email correspondence with Applicant’s counsel is attached as Exhibit 1.
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`3.
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`True and correct copies of relevant transcript pages from Applicant’s January 6,
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`2016 deposition are attached as Exhibit 2.
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`4.
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`A true and correct copy of a March 15, 2016 electronic printout from the website
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`of the Department of State for the State of New York is attached as Exhibit 3.
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`The undersigned, being hereby warned that willful false statements and the like so made
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`are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, declares that the facts
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`set forth in this Declaration are true; that all statements made of his own knowledge are true; and
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`that all statements made on information and belief are believed to be true.
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`This 15th day of March, 2016.
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`
`
` /Robert Potter/
` Robert Potter
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`2
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`EXHIBIT 1
`EXHIBIT 1
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`

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`
`
`From: <jmz@zimllp.com>
`Date: March 9, 2016 at 6:57:43 AM EST
`To: "Potter, Rob" <RPotter@kilpatricktownsend.com>
`Subject: RE: Snapchat, Inc. v. Justin Schwartz (SCRAP CHAT), TTAB Opp. No.
`91221569
`
`Rob,
`
`I 'll get back t o you by t om orrow. Thanks.
`
`JM
`
`Jean- Marc Zim m erm an
`Zim m erm an, Weiser & Paray LLP
`233 Wat chung Fork
`West field, NJ 07090
`Tel: ( 908) 768- 6408
`Fax: ( 908) 935- 0751
`j m z@zim llp.com
`w ww .znw law .com
`
`
`- - - - - - - - Original Message - - - - - - - -
`Subj ect : RE: Snapchat , I nc. v. Just in Schwart z ( SCRAP CHAT) , TTAB Opp.
`No. 91221569
`From : " Pot t er, Rob" < RPot t er@kilpat rickt ownsend.com >
`Dat e: Tue, March 08, 2016 8: 37 am
`To: " j m z@zim llp.com " < j m z@zim llp.com > , " j m z@zwpllp.com " < j m z@zwpllp.com >
`Cc: " Wilson, Dennis" < DWilson@kilpat rickt ow nsend.com > , " Vayner, Sabina"
`< SVayner@kilpat r ickt ownsend.com > , " 0935250 - US: OPP. V. SCHWARTZ ( TM:
`SCRAP..." < 0935250.em l.t ownsend@wcs.kilpat rickt ownsend.com >
`
`Jean-Marc,
`
`
`Following up once more. Please advise as to consent to Snapchat’s amendment of its Notice of
`Opposition.
`
`
`1
`
`

`
`Thanks,
`
`
`Rob
`
`
`Rob Potter
`Kilpatrick Townsend & Stockton LLP
`The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703
`office 212 775 8733 | cell 917 392 1066 | fax 212 775 8816
`rpotter@kilpatricktownsend.com | My Profile | vCard
`
`
`
`From: Potter, Rob
`Sent: Wednesday, March 02, 2016 3: 03 PM
`To: 'jmz@zimllp.com'; jmz@zwpllp.com
`Cc: Wilson, Dennis; Vayner, Sabina; 0935250 - US: OPP. V. SCHWARTZ (TM: SCRAP...
`Subject: RE: Snapchat, I nc. v. Justin Schwartz (SCRAP CHAT), TTAB Opp. No. 91221569
`
`Jean-Marc,
`
`
`Thanks, please get back to me as soon as you possibly can.
`
`
`
`
`
`
`Thanks,
`
`
`Rob
`
`
`Rob Potter
`Kilpatrick Townsend & Stockton LLP
`The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703
`office 212 775 8733 | cell 917 392 1066 | fax 212 775 8816
`rpotter@kilpatricktownsend.com | My Profile | vCard
`
`From: jmz@zimllp.com [ mailto: jmz@zimllp.com]
`Sent: Wednesday, March 02, 2016 3: 00 PM
`To: Potter, Rob; jmz@zwpllp.com
`Cc: Wilson, Dennis; Vayner, Sabina; 0935250 - US: OPP. V. SCHWARTZ (TM: SCRAP...
`Subject: RE: Snapchat, I nc. v. Justin Schwartz (SCRAP CHAT), TTAB Opp. No. 91221569
`
`
`Rob,
`
`I 'll get back t o you before t he end of t he week.
`
`
`
`
`
`
`
`JM
`
`Jean- Marc Zim m erm an
`Zim m erm an, Weiser & Paray LLP
`233 Wat chung Fork
`West field, NJ 07090
`Tel: ( 908) 768- 6408
`Fax: ( 908) 935- 0751
`j m z@zim llp.com
`
`2
`
`

`
`w ww .znw law .com
`
`
`- - - - - - - - Original Message - - - - - - - -
`Subj ect : RE: Snapchat , I nc. v. Just in Schwart z ( SCRAP CHAT) , TTAB Opp.
`No. 91221569
`From : " Pot t er, Rob" < RPot t er@kilpat rickt ownsend.com >
`Dat e: Wed, March 02, 2016 12: 50 pm
`To: " j m z@zim llp.com " < j m z@zim llp.com > , " j m z@zw pllp.com "
`< j m z@zw pllp.com >
`Cc: " Wilson, Dennis" < DWilson@kilpat rickt ow nsend.com > , " Vayner,
`Sabina"
`< SVayner@kilpat r ickt ownsend.com > , " 0935250 - US: OPP. V. SCHWARTZ
`( TM:
`SCRAP..." < 0935250.em l.t ownsend@wcs.kilpat rickt ownsend.com >
`
`Jean-Marc,
`
`I’m following up on the below, and would appreciate your reply. We would obviously
`prefer to have your client’s consent here but, unless we hear otherwise, will assume
`he does not consent and has not provided any reasons for that position.
`
`
`Thanks,
`
`
`Rob
`
`
`Rob Potter
`Kilpatrick Townsend & Stockton LLP
`The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703
`office 212 775 8733 | cell 917 392 1066 | fax 212 775 8816
`rpotter@kilpatricktownsend.com | My Profile | vCard
`
`
`
`From: Potter, Rob
`Sent: Friday, February 26, 2016 3: 56 PM
`To: 'jmz@zimllp.com'; jmz@zwpllp.com
`Cc: Wilson, Dennis; Vayner, Sabina; 0935250 - US: OPP. V. SCHWARTZ (TM: SCRAP...
`Subject: RE: Snapchat, I nc. v. Justin Schwartz (SCRAP CHAT), TTAB Opp. No.
`91221569
`
`Jean-Marc,
`
`
`Based on information we learned during Mr. Schwartz’s deposition last month, we
`intend to amend Snapchat’s Notice of Opposition to add a new claim that Mr.
`Schwartz’s application is void ab initio because the application was filed in the name
`of the wrong owner. See TMEP 1201.02(b)-(c); 37 C.F.R. § 2.71(d). Specifically, Mr.
`Schwartz testified that Keatman Inc. is the owner of the SCRAP CHAT mark, but the
`application to register that mark was filed in Mr. Schwartz’s name in his individual
`capacity.
`
`
`Please let us know as soon as possible if your client will consent to Snapchat’s
`amendment of its Notice of Opposition. Absent consent, Snapchat intends to seek
`leave of the Board to amend its Notice next week.
`
`
`3
`
`

`
`Regards,
`
`
`Rob
`
`
`
`Rob Potter
`Kilpatrick Townsend & Stockton LLP
`The Grace Building | 1114 Avenue of the Americas | New York, NY 10036-7703
`office 212 775 8733 | cell 917 392 1066 | fax 212 775 8816
`rpotter@kilpatricktownsend.com | My Profile | vCard
`
`4
`
`

`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`
`Page 1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Ser. No. 86/358,450
`
`For the mark: SCRAP CHAT
`
`Filed: August 6, 2014
`
`Published: January 20, 2015
`
`- - - - - - - - - - - - - - - - - - -x
`
` :
`
`SNAPCHAT, INC., : Opposition No.
`
` : 91221569
`
` Opposer, :
`
` :
`
` v. :
`
` :
`
` :
`
`JUSTIN SCHWARTZ, :
`
` :
`
` :
`
` Applicant. :
`
`- - - - - - - - - - - - - - - - - - -x
`
` Oral deposition of JUSTIN SCHWARTZ, taken
`
`pursuant to Notice, was held at the Law Offices of
`
`KILPATRICK TOWNSEND & STOCKTON, LLP, 1114 Avenue of
`
`the Americas, New York, New York, commencing January
`
`6, 2016, 10:03 a.m., on the above date, before
`
`Amanda McCredo, a Court Reporter and Notary Public
`
`in the State of New York.
`
` MAGNA LEGAL SERVICES
`
` (866) 624-6221
`
` www.MagnaLS.com
`
`

`
`Page 2
`
`A P P E A R A N C E S:
`
`KILPATRICK TOWNSEND & STOCKTON, LLP
`
` Attorneys for Opposer
`
` 1114 Avenue of the Americas
`
` New York, New York 10036
`
`BY: ROBERT POTTER, ESQUIRE
`
`rpotter@kilpatricktownsend.com
`
`(212)775-8733
`
`ZIMMERMAN, WEISER & PARAY, LLP
`
` Attorneys for Applicant
`
` 226 St. Paul Street
`
`1 2
`
`3
`
`4
`
`5
`
`6
`
`7 8
`
`9
`
` Westfield, New Jersey 07090
`
`10
`
`BY: JEAN-MARC ZIMMERMAN, ESQUIRE
`
`jmz@zwpllp.com
`
`(908)654-8000
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`

`
`Page 17
`
` J. Schwartz
`
` him as, but there is nothing super official.
`
` Q And, similarly, he is not the chief
`
` technical officer?
`
` A Same sort of thing. I could call him the
`
` CTO, because, again, he is the technical guy. But
`
` we don't have any official documents.
`
` Q We're going to talk a lot today about a
`
` mobile application called Scrap Chat.
`
` A Sure.
`
` Q Does Keatman own the Scrap Chat
`
` application?
`
` A Yes.
`
` Q Does Keatman own the mark you've applied
`
` for to register Scrap Chat?
`
` A Yes.
`
` Q Does Keatman own that mark 100 percent?
`
` A I believe so.
`
` Q Other than the Scrap Chat mark, does
`
` Keatman own any other trademarks?
`
` A Not that I'm aware of.
`
` Q Does it license any marks to or from
`
` anyone?
`
` A No.
`
` Q Has it assigned any marks to anyone or
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
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`9
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`10
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
`
`24
`
`25
`
`

`
`
`
`EXHIBIT 3
`EXHIBIT 3
`
`

`
`3/15/2016
`
`Entity Information
`
`NYS Department of State 
`Division of Corporations 
`Entity Information
`The information contained in this database is current through March 14, 2016.
`
`Selected Entity Name: KEATMAN INC.
`Selected Entity Status Information
`Current Entity Name: KEATMAN INC.
`DOS ID #: 4411835
`Initial DOS Filing Date: JUNE 03, 2013
`County: NASSAU
`Jurisdiction: NEW YORK
`Entity Type: DOMESTIC BUSINESS CORPORATION
`Current Entity Status: ACTIVE
` 
`Selected Entity Address Information
`DOS Process (Address to which DOS will mail process if accepted on behalf of the entity)
`KEATMAN INC.
`37 TUTHILL POINT ROAD
`EAST MORICHES, NEW YORK, 11940
`Chief Executive Officer
`JUSTIN SCHWARTZ
`3105 QUENTIN ROAD
`BROOKLYN, NEW YORK, 11234
`Principal Executive Office
`JUSTIN SCHWARTZ
`3105 QUENTIN ROAD
`BROOKLYN, NEW YORK, 11234
`Registered Agent
`REGISTERED AGENT REVOKED
`
`, ,
`
` 
`
`This office does not record information
`regarding the names and addresses of
`officers, shareholders or directors of
`nonprofessional corporations except the
`chief executive officer, if provided,
`which would be listed above.
`Professional corporations must include
`the name(s) and address(es) of the initial
`https://appext20.dos.ny.gov/corp_public/CORPSEARCH.ENTITY_INFORMATION?p_nameid=4417849&p_corpid=4411835&p_entity_name=%6B%65%61%7… 1/2
`
`

`
`Name History
`Name Type Entity
`Name
`KEATMAN
`INC.
`
`NOTE: New York State
`does not issue
`organizational
`identification numbers. 
` 
`Search
`Results     New
`Search
` 
`
`3/15/2016
`
`# of Shares
`10000000
`
`Entity Information
`officers, directors, and shareholders in
`the initial certificate of incorporation,
`however this information is not recorded
`and only available by viewing the
`certificate.
`
`*Stock Information
`Type of Stock
`No Par Value
`
`Filing Date
`
`JUN 03, 2013 Actual
`*Stock information is applicable to domestic business
`corporations.
`
`A Fictitious name must be used when
`theActual name of a foreign entity is
`unavailable for use in New York State.
`The entity must use the fictitious name
`when conducting its activities or business
`in New York State.
`
`Services/Programs   |   Privacy Policy   |   Accessibility Policy   |   Disclaimer   |   Return to DOS
`Homepage   |   Contact Us
`
`https://appext20.dos.ny.gov/corp_public/CORPSEARCH.ENTITY_INFORMATION?p_nameid=4417849&p_corpid=4411835&p_entity_name=%6B%65%61%7… 2/2
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/358,450
`For the mark: SCRAP CHAT
`Filed: August 6, 2014
`Published: January 20, 2015
`
`--------------------------------------------------------X
`SNAPCHAT, INC.,
`
`:
`
`
`
`: Opposition No. 91221569
`
`:
`
`:
`
`:
`
`:
`
`
`
`
`
`: :
`
`Opposer,
`
`
` v.
`
`JUSTIN SCHWARTZ,
`
`
`
`
`:
`
`Applicant.
`--------------------------------------------------------X
`
`AMENDED NOTICE OF OPPOSITION
`
`
`
`
`Pursuant to Rule 15(a) of the Federal Rules of Civil Procedure, Opposer Snapchat, Inc.
`
`(“Opposer” or “Snapchat”), a corporation organized and existing under the laws of Delaware
`
`with a principal place of business at 63 Market Street, Venice, California 90291, submits this
`
`Amended Notice of Opposition. Opposer believes that it will be damaged by the issuance of a
`
`registration for the SCRAP CHAT mark shown in Application Serial No. 86/358,450 for goods
`
`in International Class 9, and hereby opposes the same.
`
`
`
`As grounds for its opposition, Opposer alleges as follows, with knowledge concerning its
`
`own acts, and on information and belief as to all other matters:
`
`Facts Relevant to All Claims
`
`1.
`
`Opposer is the designer and distributor of the enormously popular SNAPCHAT
`
`messaging application that, among other things, allows users to share photographs, videos, and
`
`messages with others via mobile devices.
`
`
`
`

`
`2.
`
`Since its launch in 2011, Opposer has extensively promoted and distributed its
`
`application in connection with its highly distinctive SNAPCHAT trademark (the “SNAPCHAT
`
`Mark”). These efforts have been extraordinarily successful. Opposer and its SNAPCHAT
`
`application have been the subject of thousands of articles in a wide range of media venues and
`
`the SNAPCHAT application is currently among the fastest growing and most popular
`
`smartphone applications in the world.
`
`3.
`
`Indeed, an early 2015 report indicated that the SNAPCHAT application was the
`
`fourth most popular social media application among 18-24 year olds, and a November 2014
`
`study indicated that 71% of U.S. social media users between 18-29 years of age accessed the
`
`SNAPCHAT application. Attached as Exhibit 1 is a printout of DEFY Media’s Acumen Report,
`
`released on or about March 3, 2015, reporting (on page 8) usage of the SNAPCHAT application
`
`across various age groups, and attached as Exhibit 2 is a printout of emarketer.com’s January 9,
`
`2015 article reporting that a November 2014 survey by Cowen and Company revealed 71% of
`
`18-29 year olds access the SNAPCHAT application. Currently, there are over 100 million daily
`
`active users of the SNAPCHAT application, with that number growing steadily.
`
`4.
`
`As a testament to Opposer’s success, SNAPCHAT was declared the “Best Mobile
`
`Application” at the 2013 Crunchies Awards. Since then, Opposer’s SNAPCHAT application
`
`growth and development have skyrocketed, with recent high-profile advertising partnerships
`
`with the National Football League, BuzzFeed, Mashable, Cosmopolitan, CNN, and the 2016
`
`MTV Movie Awards, among others. Since 2011, Opposer’s millions of registered users have
`
`shared billions of photo and video messages and, as of today, approximately 8 billion videos are
`
`viewed daily via the SNAPCHAT application (equal to Facebook’s daily video views).
`
`
`
`2
`
`

`
`5.
`
`As a result of Opposer’s extensive use of the SNAPCHAT Mark in connect