Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA810393
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`Filing date:
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`03/29/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91229513
`
`Party
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`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`Right Connection, Inc.
`
`GREGORY P GOONAN
`THE AFFINITY LAW GROUP
`5755 OBERLIN DRIVE, SUITE 200
`SAN DIEGO, CA 92121
`UNITED STATES
`ggoonan@affinity-law.com
`
`Motion to Amend Pleading/Amended Pleading
`
`Gregory P. Goonan
`
`ggoonan@affinity-law.com
`
`/gregory p. goonan/
`
`03/29/2017
`
`Attachments
`
`2017_03_29 RC Motion to Amend.pdf(500862 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMEARK TRIAL AND APPEAL BOARD
`
`
`
`OPPOSITION NO. 91229513
`
`
`
`
`Mark: PLAYCOUPLES
`
`
`
`
`
`Application Serial No.: 86877408
`Filed: January 15, 2016
`Published: June 14, 2016
`Deadline for Opposition: August 13, 2016
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`RIGHT CONNECTION, INC.,
`
`
`Opposer,
`
`v.
`
`
`ROBERT L. MCGINLEY,
`
` Applicant.
`
`
`
`
`
`
`
`
`
`OPPOSER’S MOTION FOR LEAVE TO FILE AMENDED OPPOSITION PETITION
`
`
`A.
`
`INTRODUCTION
`
`Opposer Right Connection, Inc. (“Opposer”) brings this motion pursuant to Section 507
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`of the Trademark Board Manual of Procedure (TBMP), Rule 15 of the Federal Rules of Civil
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`Procedure, and Trademark Rules 2.107 and 2.115 to obtain an order granting Opposer leave to
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`file an amended opposition petition (the “Amended Petition”).
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`
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`As discussed herein, Opposer seeks leave to file the Amended Petition solely to correct
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`certain inadvertent factual errors in its initial opposition and clean up a few cosmetic and
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`typographical errors. Opposer does not seek to raise additional grounds for opposition and
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`Opposer’s Amended Petition does not change the substantive nature of Opposer’s opposition
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`claims in any way.
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`
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`Critically, there will be absolutely no prejudice whatsoever from the Amended Petition.
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`Indeed, it was Applicant’s counsel himself who first requested that Opposer’s petition be
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`amended to correct the inadvertent factual errors (although he now inexplicably will not sign a
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`stipulation to consent to the amendment he requested).
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`
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`1
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`

`

`
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`Given the Board’s policy of being extremely liberal in allowing amendment of pleadings,
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`Opposer submits this Motion should be granted and the Amended Petition should be allowed.
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`Pursuant to TMBP § 507.0, Opposer submits a red-lined copy of the Amended Petition as
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`Exhibit A and a clean, signed copy of the Amended Petition as Exhibit B to this motion.
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`
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`
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`B.
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`DISCUSSION
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`Amendment of pleadings in opposition proceedings like the present one are governed by
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`Rule 15 of the Federal Rules of Civil Procedure and pleadings in opposition proceedings may be
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`amended in the same manner and to the same extent as in a civil action. [TMBP § 507.01;
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`Trademark Rules 2.107, 2.115.] Under Rule 15, the courts freely give leave to amend when
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`justice so requires. [Fed. R. Civ. Proc. 15(a)(2).] The Board, in ruling on motions to amend like
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`the present one, is extremely liberal in allowing amended pleadings and will generally grant a
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`motion to amend provided that the proposed amended pleading does not prejudice the adverse
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`party and does not violate settled law.1
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`
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`The circumstances requiring the amendment of Opposer’s petition are explained in the
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`accompanying Declaration of Gregory P. Goonan (the “Goonan Declaration”). As set forth in
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`the Goonan Declaration, the associate attorney in the law firm representing Opposer who drafted
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`the original opposition petition made an error in interpreting certain information provided to
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`counsel by Opposer. As a result of such error, paragraph 5 of Opposer’s original petition alleged
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`that Opposer owned certain domain names that Opposer in fact does not own.
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`
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`We regret that we must burden the Board with this motion to amend. We would have
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`hoped that counsel for Applicant would have consented to the proposed amended petition given
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`the Board’s policy of being extremely liberal in allowing amendment of pleadings. However, for
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`reasons we do not understand, Applicant’s counsel refused to consent to the filing of the
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`
`1 Jafree v. Barber, 689 F.2d 640 (7th Cir. 1982); Commodore Electronics Ltd. v. Cbm Kabushiki
`Kaisha, 26 U.S.P.Q. 2d 1503 (TTAB 1993); United States Olympic Committee v. O-M Bread
`Inc., 26 U.S.P.Q. 2d 1221(TTAB 1993); Focus 21 International Inc. v. Pola Kasei Kogyo
`Kabushiki Kaisha, 22 U.S.P.Q. 2d 1316 (TTAB 1992); Estate of Biro v. BIC Corp., 18 U.S.P.Q.
`2d 1382 (TTAB 1991); Space Base Inc. v. Stadis Corp., 17 U.S.P.Q. 2d 1216 (TTAB 1990).
`
`
`
`2
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`

`

`Amended Petition even though he himself requested the amendment to correct the referenced
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`factual error.
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`
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`After Applicant’s counsel was served with Opposer’s original petition, Applicant’s
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`counsel contacted Opposer’s counsel and informed him of the inadvertent factual error about the
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`domain name ownership in paragraph 5 of the original petition. Applicant’s counsel
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`consequently requested that Opposer file an amended petition to correct such error.
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`
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`After some investigation, Applicant’s counsel confirmed that an error in drafting
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`paragraph 5 had in fact been made, and determined that an amended petition needed to be filed to
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`correct the error. Consequently, given that Applicant’s counsel had himself requested the filing
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`of an amended petition, Opposer’s counsel sent Applicant’s counsel a stipulation to allow the
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`filing of an amended petition along with clean and red-lined copies of the proposed amended
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`petition. [See Stipulation (Exhibit C); November 17, 2016 Email (Exhibit D).] However, for
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`reasons that have never been explained and that are unknown, Applicant’s counsel would not
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`sign the stipulation. Therefore, Opposer has no choice but to seek leave to amend by this
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`motion.
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`
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`As reflected in the red-lined copy of the proposed Amended Petition submitted as Exhibit
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`A, Opposer seeks leave to amend solely to correct the inadvertent factual error in paragraph 5 of
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`the original petition and to clean up some cosmetic issues and typographical errors with the
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`original petition. There will be absolutely no prejudice whatsoever if Opposer is granted leave to
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`file the Amended Petition. This is especially true since Applicant’s counsel himself requested
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`that Opposer amend the petition to correct the inadvertent factual error in paragraph 5.
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`/././
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`/././
`
`/././
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`/././
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`3
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`
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`Given the Board’s policy to be extremely liberal in granting leave to amend pleadings,
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`and the complete absence of any prejudice to Applicant from the Amended Petition, we
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`respectfully ask that the Board grant this motion and allow the filing of the Amended Petition.
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`
`
`DATED: March 29, 2017
`
` THE AFFINITY LAW GROUP
`
` By: /s/ Gregory P. Goonan
`
`Gregory P. Goonan
`
`5755 Oberlin Drive, Suite 200
`San Diego, CA 92121
`Telephone: (858) 412-4296
`Facsimile: (619) 243-0088
`Email: ggoonan@affinity-law.com
`
`Attorneys for Opposer
`Right Connection, Inc.
`
`
`
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`4
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`

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`DECLARATION OF GREGORY P. GOONAN MOTION FOR LEAVE TO FILE AMENDED
`OPPOSITION PETITION
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`
`
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`1.
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`I am an attorney duly licensed to practice law in the State of California and before
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`the Board and am counsel of record for Opposer in this matter. I have personal knowledge of the
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`facts set forth in this declaration and if called as a witness I could and would testify competently
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`thereto.
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`
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`2.
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`I offer this declaration in support of Opposer’s motion for leave to file an
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`amended opposition petition (the “Amended Petition”). A red-lined copy of the proposed
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`Amended Petition is submitted as Exhibit A and a clean, signed copy of the proposed Amended
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`Petition is submitted as Exhibit B.
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`
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`3.
`
`As reflected in Exhibit A and Exhibit B, Opposer seeks leave to amend solely to
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`correct the inadvertent factual error in paragraph 5 of the original petition and to clean up some
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`cosmetic issues and typographical errors with the original petition.
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`
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`4.
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`The need to file an amended opposition petition in this case arises because the
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`associate attorney working at my law firm who drafted the original opposition petition
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`inadvertently made a factual error in drafting the original petition that needs to be corrected by
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`an amended petition.
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`
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`5.
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`The error made by my associate attorney that needs to be corrected is set forth in
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`paragraph 5 of the original opposition petition. My associate attorney made an error in
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`interpreting certain information provided to us by Opposer. As a result of such error, paragraph
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`5 of Opposer’s original petition alleged that Opposer owned certain domain names that Opposer
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`in fact does not own.
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`
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`6.
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`After Applicant’s counsel was served with Opposer’s original petition,
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`Applicant’s counsel contacted me and informed me of the inadvertent factual error about the
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`domain name ownership in paragraph 5 of the original petition. Applicant’s counsel
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`consequently requested that Opposer file an amended petition to correct such error.
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`
`
`5
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`

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`
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`7.
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`After investigating the matter, I confirmed that an error in drafting paragraph 5
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`had in fact been made, and determined that an amended petition needed to be filed to correct the
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`error.
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`
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`8.
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`Consequently, given that Applicant’s counsel had himself requested the filing of
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`an amended petition, on November 17, 2016 I sent Applicant’s counsel a stipulation to allow the
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`filing of an amended petition along with clean and red-lined copies of the proposed amended
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`petition.
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`
`
`9.
`
`Submitted as Exhibit C is a true and correct copy of the Stipulation I sent to
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`Applicant’s counsel. Submitted as Exhibit D is a true and correct copy of my November 17,
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`2016 Email transmitting the Stipulation along with clean and red-lined copies of the proposed
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`amended petition.
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`
`
`10.
`
`For reasons that have never been explained and that are unknown to me,
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`Applicant’s counsel would not sign the Stipulation. Therefore, Opposer has no choice but to
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`seek leave to amend by this motion.
`
`
`
`I declare under the penalty of perjury under the laws of the United States of America that
`the foregoing is true and correct. Executed on March 29, 2017 at San Diego, California.
`
`
`
`
`
`
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`
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`
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`
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`
`
`/s/ Gregory P. Goonan
`Gregory P. Goonan
`
`
`
`6
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`

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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true and complete copy of this document has been served on
`Applicant by a sending a copy of the document to Allan B. Gelbard, counsel for Applicant, via
`electronic mail to the following email address on the date stated: XXXesq@aol.com
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`
`
`Dated: March 29, 2017
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`
`
`
`
`
`
`
`
`
`
`By: /s/ Gregory P. Goonan
`
`
`
`7
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`

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`
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`EXHIBIT A
`
`EXHIBIT A
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMEARK TRIAL AND APPEAL BOARD
`
`OPPOSITION NO. _____________91229513
`
`
`
`
`
`
`Mark: PLAYCOUPLES
`
`
`
`
`
`Application Serial No.: 86877408
`Filed: January 15, 2016
`Published: June 14, 2016
`Deadline for Opposition: August 13, 2016
`
`
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`RIGHT CONNECTION, INC.,
`
`
`Opposer,
`
`v.
`
`
`ROBERT L. MCGINLEY,
`
` Applicant.
`
`
`
`
`
`AMENDED NOTICE OF OPPOSITION
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`Right Connection, Inc., (“Opposer”), a corporation organized and existing under the laws
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`of the State of Nevada with its principal place of business at 2375 East Tropicana, Suite 172, Las
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`Vegas, Nevada 89119, believes that it will be damaged by the registration of the trademark (the
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`“Mark”) shown in United States Trademark Application Serial No. 86/877408 (the
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`“Application”) and, therefore, through its attorneys, hereby opposes registration of the Mark for
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`all of the services in all classes set forth in the Application.
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`Description of Applicant’s Application: The Applicant is Robert L. McGinley. The
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`Application was filed on January 15, 2016 as an intent-to-use application pursuant to Section
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`1(b), 15 U.S.C. § 1051(b). The Applicant filed an amendment to allege use on May 3, 2016,
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`alleging a date of first use of January 15, 2016 and a date of first use in commerce of May 1,
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`2016. The Mark was published for opposition in the Official Gazette of June 14, 2016. The
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`deadline for filing a notice of opposition is August 13, 2016 (extended). The Mark is
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`“PLAYCOUPLES” (Standard Character Mark). The Application seeks registration in (1)
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`
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`1
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`

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`International Class 035 for “Advertising services, namely, promoting and marketing the goods
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`and services of others in the field of adult oriented goods and services for couples in the lifestyle
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`via print and electronic media; Marketing advisory services in the field of adult oriented goods
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`and services for couples in the lifestyle; Promoting and conducting trade shows in the field of
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`adult oriented goods and services for couples in the lifestyle;” (2) International Class 039 for
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`“Advertising services, namely, promoting and marketing the goods and services of others in the
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`field of adult oriented goods and services for couples in the lifestyle via print and electronic
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`media; Marketing advisory services in the field of adult oriented goods and services for couples
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`in the lifestyle; Promoting and conducting trade shows in the field of adult oriented goods and
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`services for couples in the lifestyle;” and (3) International Class 041 for “On-line journals,
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`namely, blogs featuring information regarding adult oriented goods and services for couples in
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`the lifestyle; Providing a website featuring blogs and non-downloadable publications in the
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`nature of articles and reviews in the field(s) of adult oriented goods and services for couples in
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`the lifestyle.
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`As grounds for this opposition, Opposer alleges as follows:
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`1.
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`Opposer is a company that specializes in the marketing and sale of tours, travel,
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`cruises and related services and products for individuals interested in alternative adult travel and
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`entertainment.
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`2.
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`Opposer is a leader in the alternative adult travel and entertainment industry.
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`Although there are numerous individuals and businesses who are involved in the adult travel and
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`entertainment industry, many of them are operators who are unreliable, offer poor quality
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`services, and in a number of cases have defrauded consumers.
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`2
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`

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`3.
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`In sharp contrast to many of its competitors, Opposer is well known both by
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`consumers and by its competitors for the high quality, honest, reliable travel and entertainment
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`services, and related products and services that it has provided its customers over its many years
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`of business.
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`4.
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`An essential part of Opposer’s business is the trademarks and trade names that it
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`uses to market and sell its services and products. Among the trademarks that Opposer uses to
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`market and sell its services and products is the trademark “Playcouples.”
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`5.
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`Opposer itis the owner of multiplethe domain namesname
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`“PlayCouplesTravel.com” related to the alternative adult travel and entertainment industry that
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`utilize. The website maintained at the “PlayCouplesTravel.com” domain utilizes and
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`featurefeatures the trademarks “playcouplePlaycouples” and “playcouples,” including but not
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`limited to “playcouplestravel.com,” “playcouple.mobi,” “playcouple.org,”
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`“playcouplesclub.com,” “playcouplesfestival,com,” “playcouplesfestival.info,”
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`“playcouplesfestival.net,” “playcouplesfestival.org,” “playcouples-travel.com,”
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`“playcouple.tours,” and “playcoupletravel.com.”Playcouples Travel” (collectively the
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`“Playcouples trademarks”).
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`6.
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`Opposer has been usingused the term “playcouples” in various formulations as its
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`trademark in the commerce of the United States starting on date that is earlier than the date of
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`first use by Applicant.
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`7.
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`For the reasons alleged herein, Opposer’s rights in and to the
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`“Playcouplesplaycouples” name as a trademark are superior to and have priority over whatever
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`rights, if any, Applicant has in such name and/or that he gained by filing the Application.
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`3
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`

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`8.
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`Applicant’s Mark is substantially identical and/or confusingly similar to the
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`Playcouples trademarks used by Opposer to advertise and sell its services.
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`9.
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`Applicant’s Mark so completely resembles Opposer’s Playcouples trademarks so
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`as to be likely to be confused therewith and mistaken therefor, which will lead to deception,
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`confusion and/or mistakes by consumers as to the origin of Applicant’s services.
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`10.
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`If Applicant is allowed to register Applicant’s Mark as he seeks by his
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`Application, confusion in trade resulting in damage and injury to Opposer is inevitable because
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`Applicant’s Mark is substantially identical and/or confusingly similar to the Playcouples
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`trademarks used by Opposer and Opposer has priority of rights.
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`11.
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`Because Applicant’s Mark is identical or confusingly similar to Opposer’s
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`Playcouples trademarks, it falsely suggests a connection between Applicant and Opposer,
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`Applicant’s authorization by Opposer, and/or Applicant’s right to offer the services identified in
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`his Application using the Playcouples name, in violation of Section 2(a) of the Trademark Act.
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`12.
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`Any defect, objection or fault found with any services marketed and sold under
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`Applicant’s Mark would necessarily reflect upon and seriously injure the good reputation that
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`has been established for the services offered by Opposer using the Playcouples
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`trademarktrademarks, which would result in damage and injury to Opposer.
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`13.
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`In filing the Application, Applicant’s attorney of record, on behalf of Applicant,
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`submitted a Declaration in which he stated “[t]he undersigned, being hereby warned that willful
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`false statements and the like so made are punishable by fine or imprisonment, or both, under 18
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`U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the
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`validity of the application or any resulting registration, declares 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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`4
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`

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`mark in commerce, either in the identical form thereof or in such near resemblance thereto as to
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`be likely, when used on or in connection with the goods/services of such other person, to cause
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`confusion, or to cause mistake, or to deceive; and that all statements made of his/her own
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`knowledge are true; and that all statements made on information and belief are believed to be
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`true (emphasis added).”
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`14.
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`Opposer is informed and believes, and on that basis alleges, that the foregoing
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`statements are not true and that Applicant either knew they were not true or, in the alternative,
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`had no reasonable basis for believing that the foregoing statements are true.
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`15.
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`Applicant made such false representations with the intent to deceive the United
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`States Patent and Trademark Office into concluding that Applicant had the exclusive right to use
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`the Mark for the services identified in the Application, and that no one else had the right to use
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`that name.
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`16.
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`Applicant knew at the time he submitted the Application that Opposer was using
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`the Playcouples trademarktrademarks to market and sell travel services and related services, that
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`Opposer’s use of its Playcouples trademarktrademarks started before Applicant’s filing of the
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`Application, and that Applicant’s use of the Mark was likely to cause confusion, or to cause
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`mistake, or to deceive.
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`17.
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`In filing the Application, Applicant’s attorney of record, on behalf of Applicant,
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`submitted a Declaration in which he stated “the applicant has a bona fide intention, and is
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`entitled, to use the mark in commerce on or in connection with the goods/services in the
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`application.”
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`5
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`18.
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`Opposer is informed and believes and on that basis alleges that such statement
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`was false and that Applicant did not have a bona fide intention to use the Mark with all of the
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`services identified in the Application.
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`19.
`
`As alleged herein, the Application originally was filed as an intent-to-use
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`application pursuant to Section 1(b), 15 U.S.C. § 1051(b). The Applicant filed an amendment to
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`allege use (the “AAU”) on May 3, 2016, alleging a date of first use of January 15, 2016 and a
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`date of first use in commerce of May 1, 2016.
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`20.
`
` In filing the AAU, Applicant’s attorney of record, on behalf of Applicant,
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`submitted a Declaration in which he stated “[t]he mark is in use in commerce on or in connection
`
`with all of the goods/services . . .” and “[t]he mark was first used by the applicant, or the
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`applicant's related company, licensee, or predecessor in interest at least as early as 01/15/2016,
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`and first used in commerce at least as early as 05/01/2016, and is now in use in such commerce.
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`The applicant is submitting one specimen for the class showing the mark as used in commerce on
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`or in connection with any item in the class . . . .”
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`21.
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`Opposer is informed and believes and on that basis alleges that Applicant does not
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`use, and has not used, the Mark in commerce on or in connection with all of the services
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`identified in the Application, as Applicant falsely stated in the AAU.
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`22.
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`Opposer is informed and believes and on that basis alleges that Applicant did not
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`succeed to any rights by any company, licensee or predecessor of Applicant as Applicant falsely
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`stated in the AAU.
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`23.
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`Applicant made the false representations in the AAU with the intent to deceive
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`the United States Patent and Trademark Office into concluding that Applicant had used the Mark
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`on or in connection with all of the services identified in the Application, that Applicant had the
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`
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`6
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`

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`exclusive right to use the Mark for the services identified in the Application, and that no one else
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`had the right to use the Mark.
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`24.
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`For the reasons alleged herein, Opposer is informed and believes and on that basis
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`alleges that the foregoing statements are not true, that Applicant either knew they were not true
`
`or, in the alternative, had no reasonable basis for believing that the foregoing statements were
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`true, and that such false statements were made for the purpose and with the intention of
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`deceiving the United States Patent and Trademark Office and inducing the United States Patent
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`and Trademark Office into approving registration of the Mark.
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`25.
`
`26.
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`For the foregoing reasons, registration of the Mark must be denied.
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`The registration of Applicant’s Mark would interfere with Opposer’s use of its
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`Sigma trademarks and registration of Applicant’s Mark will seriously damage Opposer.
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`
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`WHEREFORE, Opposer prays that this Opposition be sustained and that the registration
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`of the Mark be denied and refused.
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`Respectfully submitted,
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`
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`DATED: August 12,November __, 2016 THE AFFINITY LAW GROUP
`
`
`March 29, 2017
`
`
`
`
`
`
` By: /s/ Gregory P. Goonan
`
`Gregory P. Goonan
`
`7
`
`

`

`
`
`5755 Oberlin Drive, Suite 301200
`San Diego, CA 92121
`Telephone: (858) 750-1615 412-4296
`Facsimile: (619) 243-0088
`Email: ggoonan@affinity-law.com
`
`Attorneys for Opposer
`Right Connection, Inc.
`
`
`
`
`8
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`

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`CERTIFICATE OF FILING AND SERVICE
`
`
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`I hereby certify that this pleading is being electronically filed in PDF format with the
`Trademark Trial and Appeal Board through the Electronic System for Trademark Trials and
`Appeals (ESTTA) on August 12,November __, 2016 and that a true and complete copy of this
`pleading has been served on Applicant by mailing a copy of this pleading to Allan B. Gelbard,
`counsel for Applicant, via First Class U.S. Mail, postage prepaid, at the following address:
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`Allan B. Gelbard
`The Law Offices of Allan B. Gelbard
`15760 Ventura Boulevard, Suite 801
`Encino, CA 91436
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a true and complete copy of this document has been served on
`Applicant by a sending a copy of the document to Allan B. Gelbard, counsel for Applicant, via
`electronic mail to the following email address on the date stated: XXXesq@aol.com
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`
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`By: /s/ Gregory P. Goonan
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`By: /s/ Gregory P. Goonan
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`Dated: March 29, 2017
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`Dated: August 12,November __, 2016
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`9
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`EXHIBIT B
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`EXHIBIT B
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMEARK TRIAL AND APPEAL BOARD
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`OPPOSITION NO. 91229513
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`Mark: PLAYCOUPLES
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`Application Serial No.: 86877408
`Filed: January 15, 2016
`Published: June 14, 2016
`Deadline for Opposition: August 13, 2016
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`RIGHT CONNECTION, INC.,
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`Opposer,
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`v.
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`ROBERT L. MCGINLEY,
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` Applicant.
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`AMENDED NOTICE OF OPPOSITION
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`Right Connection, Inc., (“Opposer”), a corporation organized and existing under the laws
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`of the State of Nevada with its principal place of business at 2375 East Tropicana, Suite 172, Las
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`Vegas, Nevada 89119, believes that it will be damaged by the registration of the trademark (the
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`“Mark”) shown in United States Trademark Application Serial No. 86/877408 (the
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`“Application”) and, therefore, through its attorneys, hereby opposes registration of the Mark for
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`all of the services in all classes set forth in the Application.
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`Description of Applicant’s Application: The Applicant is Robert L. McGinley. The
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`Application was filed on January 15, 2016 as an intent-to-use application pursuant to Section
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`1(b), 15 U.S.C. § 1051(b). The Applicant filed an amendment to allege use on May 3, 2016,
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`alleging a date of first use of January 15, 2016 and a date of first use in commerce of May 1,
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`2016. The Mark was published for opposition in the Official Gazette of June 14, 2016. The
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`deadline for filing a notice of opposition is August 13, 2016 (extended). The Mark is
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`“PLAYCOUPLES” (Standard Character Mark). The Application seeks registration in (1)
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`1
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`International Class 035 for “Advertising services, namely, promoting and marketing the goods
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`and services of others in the field of adult oriented goods and services for couples in the lifestyle
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`via print and electronic media; Marketing advisory services in the field of adult oriented goods
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`and services for couples in the lifestyle; Promoting and conducting trade shows in the field of
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`adult oriented goods and services for couples in the lifestyle;” (2) International Class 039 for
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`“Advertising services, namely, promoting and marketing the goods and services of others in the
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`field of adult oriented goods and services for couples in the lifestyle via print and electronic
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`media; Marketing advisory services in the field of adult oriented goods and services for couples
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`in the lifestyle; Promoting and conducting trade shows in the field of adult oriented goods and
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`services for couples in the lifestyle;” and (3) International Class 041 for “On-line journals,
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`namely, blogs featuring information regarding adult oriented goods and services for couples in
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`the lifestyle; Providing a website featuring blogs and non-downloadable publications in the
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`nature of articles and reviews in the field(s) of adult oriented goods and services for couples in
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`the lifestyle.
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`As grounds for this opposition, Opposer alleges as follows:
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`1.
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`Opposer is a company that specializes in the marketing and sale of tours, travel,
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`cruises and related services and products for individuals interested in alternative adult travel and
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`entertainment.
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`2.
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`Opposer is a leader in the alternative adult travel and entertainment industry.
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`Although there are numerous individuals and businesses who are involved in the adult travel and
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`entertainment industry, many of them are operators who are unreliable, offer poor quality
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`services, and in a number of cases have defrauded consumers.
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`2
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`3.
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`In sharp contrast to many of its competitors, Opposer is well known both by
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`consumers and by its competitors for the high quality, honest, reliable travel and entertainment
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`services, and related products and services that it has provided its customers over its many years
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`of business.
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`4.
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`An essential part of Opposer’s business is the trademarks and trade names that it
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`uses to market and sell its services and products. Among the trademarks that Opposer uses to
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`market and sell its services and products is the trademark “Playcouples.”
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`5.
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`Opposer is the owner of the domain name “PlayCouplesTravel.com” related to the
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`alternative adult travel and entertainment industry. The website maintained at the
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`“PlayCouplesTravel.com” domain utilizes and features the trademarks “Playcouples” and
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`“Playcouples Travel” (collectively the “Playcouples trademarks”).
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`6.
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`Opposer has used the term “playcouples” in various formulations as its trademark
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`in the commerce of the United States starting on date that is earlier than the date of first use by
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`Applicant.
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`7.
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`For the reasons alleged herein, Opposer’s rights in and to the “playcouples” name
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`as a trademark are superior to and have priority over whatever rights, if any, Applicant has in
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`such name and/or that he gained by filing the Application.
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`8.
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`Applicant’s Mark is substantially identical and/or confusingly similar to the
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`Playcouples trademarks used by Opposer to advertise and sell its services.
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`9.
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`Applicant’s Mark so completely resembles Opposer’s Playcouples trademarks so
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`as to be likely to be confused therewith and mistaken therefor, which will lead to deception,
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`confusion and/or mistakes by consumers as to the origin of Applicant’s services.
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`3
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`10.
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`If Applicant is allowed to register Applicant’s Mark as he seeks by his
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`Application, confusion in trade resulting in damage and injury to Opposer is inevitable because
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`Applicant’s Mark is substantially identical and/or confusingly similar to the Playcouples
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`trademarks used by Opposer and Opposer has priority of rights.
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`11.
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`Because Applicant’s Mark is identical or confusingly similar to Opposer’s
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`Playcouples trademarks, it falsely suggests a connection between Applicant and Opposer,
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`Applicant’s authorization by Opposer, and/or Applicant’s right to offer the services identified in
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`his Application using the Playcouples name, in violation of Section 2(a) of the Trademark Act.
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`12.
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`Any defect, objection or fault found with any services marketed and sold under
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`Applicant’s Mark would necessarily reflect upon and seriously injure the good reputation that
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`has been established for the services offered by Opposer using the Playcouples trademarks,
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`which would result in damage and injury to Opposer.
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`13.
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`In filing the Application, Applicant’s attorney of record, on behalf of Applicant,
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`submitted a Declaration in which he stated “[t]he undersigned, being hereby warned that willful
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`false statements and the like so made are punishable by fine or imprisonment, or both, under 18
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`U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the
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`validity of the application or any resulting registration, declares 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 to
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`be likely, when used on or in connection with the goods/services of such other person, to cause
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`confusion, or to cause mistake, or to deceive; and that all statements made of his/her own
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`knowledge are true; and that all statements made on information and belief are believed to be
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`true (emphasis added).”
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`4
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`14.
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`Opposer is informed and believes, and on that basis alleges, that the foregoing
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`statements are not true and that Applicant either knew they were not true or, in the alternative,
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`had no reasonable basis for believing that the foregoing statements are true.
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`15.
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`Applicant made such false representations with the intent to deceive the United
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`States Patent and Trademark Office into concluding that Applicant had the exclusive right to use
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`the Mark for the services identified in the