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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA788300
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`Filing date:
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`12/09/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91231418
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`Party
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`Correspondence
`Address
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`Defendant
`Wayne Small
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`ERICA M CIPPARONE,
`BEUSSE WOLTER SANKS & MAIRE, PLLC
`390 N. ORANGE AVENUE SUITE 2500
`ORLANDO, FL 32801
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`trade-
`marks@bwsmiplaw.com;ecipparone@bwsmiplaw.com;adavis@bwsmiplaw.com;
`mchapman@bwsmiplaw.com
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Answer
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`Erica M. Cipparone
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`adavis@bwsmiplaw.com, ecipparone@bwsmiplaw.com, bma-
`han@bwsmiplaw.com
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`Signature
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`Date
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`/s/ Erica M. Cipparone
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`12/09/2016
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`Attachments
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`Answer 120916.pdf(160601 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`DIESEL S.P.A.,
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`
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`ANSWER AND AFFIRMATIVE DEFENSES TO
`NOTICE OF OPPOSITION
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`COMES NOW, Applicant, Wayne Small, (hereinafter “Applicant” or “Small”), by and
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`through his undersigned attorneys and pursuant to 37 CFR §2.106(b)(1) serves the instant
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`Answer and Affirmative Defenses to Opposer, Diesel S.p.A.’s, (hereinafter “Opposer” or
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`“Diesel”) Opposition to the registration of U.S. Serial No. 886926512 for and states:
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`1.
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`2.
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`3.
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`Admitted.
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`Without knowledge, and therefore denied.
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`Admitted that Exhibit A speaks for itself and that the USPTO database indicates
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`that Diesel owns the Marks identified in Exhibit A. Without knowledge, however, as to the
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`authenticity of Exhibit A, and therefore denied. All other allegations contained in paragraph
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`three (3) are without knowledge and therefore denied.
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`4.
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`5.
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`6.
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`Without knowledge, and therefore denied.
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`Admitted.
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`Admitted.
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`v.
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`WAYNE SMALL,
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`Opposer,
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`Applicant.
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`Opposition No. 91231418
`Application No. 86926512
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`/
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`COUNT 1- LIKELIHOOD OF CONFUSION
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`7.
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`8.
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`9.
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`Denied.
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`Denied.
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`Denied.
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`10. Without knowledge as to Opposer’s beliefs, and therefore Denied.
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`COUNT 2 - DILUTION
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`11.
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`Applicant, Small, hereby restates and realleges his responses to the allegations of
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`paragraphs 1 through 10, and hereby incorporates same as if fully set forth herein.
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`12. Without knowledge, and therefore Denied.
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`13.
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`14.
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`15.
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`Denied.
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`Denied.
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`Denied.
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`AFFIRMATIVE DEFENSES
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`1.
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`Opposer has failed to state a claim upon which relief can be granted, and in
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`particular, fails to state legally sufficient grounds for sustaining the opposition.
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`2.
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`Opposer’s Notice of Opposition is barred because there can be no likelihood of
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`confusion in the marketplace when Applicant’s DON’T BE A GASHOLE DRIVE A DIESEL
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`mark is clearly referencing diesel engines and not Diesel-branded jeans such that no consumer
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`would be confused into thinking that Applicant or its products are in any way approved,
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`endorsed or associated with Opposer.
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`3.
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`Opposer’s claim is precluded because Opposer has suffered no injury nor is there
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`a likelihood of injury.
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`2
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`4.
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`Opposer’s claim is precluded by the Doctrine of Unclean Hands and Misuse of
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`Trademark. Specifically, Opposer is the epitome of a “trademark bully” in that Opposer has
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`filed over 100 trademark Opposition and/or Cancellation Proceedings against any person/entity
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`that attempts to file any mark with the word DIESEL in it despite the fact that: (1) diesel is a
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`common term found in the dictionary identifying “a machine or vehicle powered by a diesel
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`engine1” such that Opposer does not have exclusive rights to the term “diesel”; and, (2) the large
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`majority of the trademark applications Opposer has opposed are not likely to cause confusion
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`with Opposer’s marks.
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`5.
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`Opposer’s claim is precluded under the anti-dissection rule because the DON’T
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`BE A GASHOLE DRIVE A DIESEL mark as a whole is unlikely to cause confusion, mistake, or
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`to deceive as to origin, sponsorship, or association with that of Opposer. Accordingly, the use
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`and registration of the mark will not damage Opposer and will not cause dilution of Opposer’s
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`marks.
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`6.
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`Opposer’s claim is precluded due to waiver and acquiescence in that Opposer has
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`allowed other diesel marks clearly related to diesel engines based on the Registrant’s logo to
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`proceed to registration in Class 025, namely:
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`a. - Registration No. 4,222,627:
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`b. Registration No. 4,513,915 :
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`1 See Dictionary.Com definition of “diesel”, 2016.
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`3
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`c. Registration No. 4,746,238:
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`7. Opposer’s claim is precluded because no dilution by blurring has occurred, or is
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`likely to occur, by the registration or commercial use of Applicant’s mark for at least the
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`following reasons: 1) Applicant’s mark and Opposer’s marks are dissimilar; 2) Applicant did not
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`intend to create an association with Opposer’s marks; 3) Opposer is not engaging in substantially
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`exclusive use of the mark (see, for example, ¶6 herein); and, 4) no actual confusion between
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`Applicant’s mark and Opposer’s marks has occurred or is likely to occur.
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`8. Opposer’s claim is precluded because no dilution by tarnishing has occurred, or is
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`likely to occur, by the registration or commercial use of Applicant’s mark because: 1)
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`Applicant’s mark is dissimilar from Opposer’s marks, and therefore no association between the
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`marks has occurred or is likely to occur; and, 2) the reputation of Opposer’s mark would not be
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`harmed by Applicant’s mark.
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`DATED this 9th day of December, 2016.
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`Respectfully Submitted,
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`BEUSSE WOLTER SANKS & MAIRE, PLLC
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`4
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`390 N. Orange Avenue, Suite 2500
`Orlando, Florida 32801
`Telephone:
`(407) 926-7700
`Facsimile:
`(407) 926-7720
`E-mail: adavis@bwsmiplawfl.com
`E-mail: ecipparone@bwsmiplaw.com
`Attorneys for Applicant
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`By:
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`
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`/s/ Erica M. Cipparone
`Amber N. Davis
`Florida Bar No.: 0026628
`Erica M. Cipparone
`Florida Bar No.: 0084720
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a true and correct copy of the foregoing has been mailed via
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`U.S. Mail and Electronic mail this 9th of December, 2016 to: Robert S. Pierce, Esquire, John C.
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`Holman, Esquire, Attorneys for the Opposer, JACOBSON HOLMAN PLLC, 400 Seventh
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`Street, Northwest, Suite 700, Washington, District of Columbia 20004.
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`/s/ Erica M. Cipparone
`Attorney
`Attorney for Applicant
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`5

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