Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA842525
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`Filing date:
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`08/29/2017
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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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`91235695
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Defendant
`Lara International Inc
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`LARA INTERNATIONAL INC
`1921 CARNEGIE AVE
`SUITE O
`SANTA ANA, CA 92705
`Email: oz@sugaryeti.com
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`Answer
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`Answer to the Apposition No 91235695.pdf
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`oz@sugaryeti.com
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`/LARA INTERNATIONAL INC/
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`08/29/2017
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`Attachments
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`Answer to the Apposition No 91235695.pdf(981161 bytes )
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`
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`ESTTA Tracking number:
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`ESTTA842525
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`Filing date:
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`08/29/2017
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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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`91235695
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Defendant
`Lara International Inc
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`LARA INTERNATIONAL INC
`1921 CARNEGIE AVE
`SUITE O
`SANTA ANA, CA 92705
`Email: oz@sugaryeti.com
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`Answer
`
`Answer to the Apposition No 91235695.pdf
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`oz@sugaryeti.com
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`/LARA INTERNATIONAL INC/
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`08/29/2017
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`Attachments
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`Answer to the Apposition No 91235695.pdf(981161 bytes )
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`
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`THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL
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`BOARD
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`_______________________________________
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`YETI COOLERS, LLC
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`Opposer
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`LARA INTERNATIONAL INC
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`Applicant
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`_______________________________________:
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`Apposition No 91235695
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`Serial No 87325505
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`Mark: SUGAR YETI
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`ESTTA834516
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`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION AND AFFIRMATIVE DEFENSES
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`Lara International Inc, a corporation of California, having a principal place of business at 1921 Carnegie
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`Ave., Suite O, Santa Ana, California 92705 (“Applicant”), for its answer to the Notice of Opposition No
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`91235695 (the “Notice of Opposition”) filed by YETI Coolers, LLC, a Delaware limited liability company,
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`having a principal place of business at 5301 Southwest Parkway, Suite 200, Austin, Texas 78735
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`(“Opposer”) against Application No 87325505 published in the Official Gazette dated June 20, 2017 –
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`“SUGAR YETI” - (“Application” and “Mark”, respectively), pleads and avers as follows:
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`1
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`1. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 1 of the Notice of Opposition. Therefore, Applicant denies those allegations.
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`2. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 2 of the Notice of Opposition. Therefore, Applicant denies those allegations.
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`3. Applicant denies each and every allegation contained in the paragraph 3 of the Notice of
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`Opposition.
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`4. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 4 the Notice of Opposition. Therefore, Applicant denies those allegations.
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`5. Applicant denies each and every allegation contained in the paragraph 5 of the Notice of
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`Opposition.
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`6. Answering the paragraph 6 of the Notice of Opposition, Applicant admits that the Mark is
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`comprised of two words “SUGAR YETI”, but otherwise denies each and every allegation contained
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`therein, including, but not limited, to the alleged use of the word “YETI” alone.
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`7. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 7 of the Notice of Opposition. Therefore, Applicant denies those allegations.
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`8. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 8 of the Notice of Opposition. Therefore, Applicant denies those allegations.
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`9. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 9 of the Notice of Opposition. Therefore, Applicant denies those allegations.
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`10. Answering the paragraph 10 of the Notice of Opposition, Applicant admits that the Mark has been
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`used since August 2015.
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`11. Answering the paragraph 11 of the Notice of Opposition, Applicant admits to seek to register the
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`Mark for “on-line retail store services featuring a wide variety of consumer goods of others” in
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`International Class 35.
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`2
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`12. Applicant denies each and every allegation contained in the paragraph 12 the Notice of
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`Opposition.
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`13. Applicant denies each and every allegation contained in the paragraph 13 the Notice of
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`Opposition.
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`14. Applicant denies knowledge and information sufficient to admit or deny the allegations of
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`paragraph 14 of the Notice of Opposition. Therefore, Applicant denies those allegations.
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`15. Applicant denies each and every allegation contained in the paragraph 15 the Notice of
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`Opposition.
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`16. Applicant denies each and every allegation contained in the paragraph 16 the Notice of
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`Opposition.
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`17. Applicant denies each and every allegation contained in the paragraph 17 the Notice of
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`Opposition.
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`18. Applicant denies each and every allegation contained in the paragraph 18 the Notice of
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`Opposition.
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`19. Applicant denies each and every allegation contained in the paragraph 19 the Notice of
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`Opposition.
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`FURTHERMORE, Applicant sets forth the following AFFIRMATIVE DEFENSES in support of its
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`position:
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`First Affirmative Defense
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`First of all, it is important to highlight that, contrary to the allegations by the Opposer, the
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`Applicant has been incorporated as a business among friends and the Mark “SUGAR YETI” was created
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`as a mere joke in reference to one of its founders’ nickname. “Yeti”, which is a common name and
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`means “a big creature like a human covered in hair that is believed by some people to live in the
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`3
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`Himalayas” (Cambridge Online Dictionary). The founders have never any intention to deceive or cause
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`confusion or mistake the Opposer’s consumers.
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`But it is not about the intention of the Applicant, despite the Opposer has made only generic
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`accusations in its claim without showing any association between the marks, business or even its
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`damages, it is important to establish that there is no likelihood of confusion, mistake or deception
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`because (i) inter alia, the Mark and the alleged trademark of Opposer are not confusingly similar, and
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`(ii) the products identified through such distinctive signs are completely different.
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`Indeed, the Mark is very different from the trademarks that are alleged as a barrier to the
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`Application’s approval.
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`First, the Mark is not the word “YETI” alone as alleged by the Opposer, but it is the juxtaposition
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`of two words: (i) “SUGAR”; and (ii) “YETI” and always will be used as “SUGAR YETI” in accordance with
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`the Application
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`Besides, in order to exist the alleged trademark reproduction, there must be very similar/identical
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`graphic characteristics, capable of creating confusion with the existing trademarks, which does not
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`happen in the present case, because in practical terms both logos are unmistakably different in all
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`their senses.
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`Opposer Logo X Applicant Logo
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` X
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`4
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`Notwithstanding the fact that the word "YETI" is contained in both trademarks discussed in this
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`case, the remote possibility of an association between the services provided by the Applicant and the
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`Opposer is eliminated under the analysis of other components of both trademarks and the relevant
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`business.
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`The application of the Principle of Specialty is evident in this case, once the undeniable distance
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`between the Opposer’s products and services provided by the Applicant. This is because, in practical
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`terms and according to the relevant websites, the Opposer sells coolers which are “choice for outdoor
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`enthusiasts, pros, tailgaters, and backyard barbecue kings” (www.yeti.com) and the Applicant “is a
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`leading company specialized in personalizing merchandise with high-end designs and skillful
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`techniques” (www.sugaryeti.com).
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`In other words, while the Opposer is a retail seller of coolers and related products/services like
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`thermal bottles and cups, the Applicant provides customized services/products, such as Cake Toppers,
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`Cell Phone Covers, Cutting Boards, Kitchen Scales and Memorial Pet Stones.
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`Proof of the drastic difference of the trademarks/business involved in this case are the following
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`information obtained from the mentioned websites.
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`Opposer website main page:
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`5
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`Applicant website main page:
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`Opposer history and business X Applicant History and business
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`6
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`The differences are even clearer when the main products sold by the parties are closely compared.
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`Cooler Yeti X Customized Cake Topper Sugar Yeti
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`Finally, in the analysis of consumer confusion, the reasonable person should be taken into
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`account, who would certainly not confuse the business of a retail seller of coolers and related items
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`with the services/products delivered by the Applicant, who provides personalized merchandise and
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`in no way competes in the same market as the Opposer.
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`Therefore, the Notice of Opposition should be dismissed once the products/services under
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`analyzes are unmistakable and the understanding of this Trademark Trial and Appeal Board is that
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`trademarks of same class (International Class 35) can coexist since they present sufficiently distinct
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`elements.
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`Second Affirmative Defense
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`Applicant has been using the Mark and developing consumer recognition and goodwill therein
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`since at least August 2015, such use being open, notorious and known to Opposer and such
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`knowledge, in turn, being known to Applicant. During this time Opposer failed to take timely and
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`meaningful action to assert the claims on which it bases this opposition, on which inaction Applicant
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`has relied to its detriment. Opposer’s claims are consequently barred by the doctrines of laches,
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`acquiescence and estoppel.
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`7
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`Third Affirmative Defense
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`As a result of Applicant’s continuous use of the Mark and the relevant investments since the time
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`of Applicant’s adoption thereof, the Mark has developed significant goodwill among the consuming
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`public and consumer acceptance of the services offered by Applicant in conjunction with the Mark.
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`Such goodwill and widespread usage has caused the Mark to acquire distinctiveness with respect to
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`Applicant, and caused the Mark to become a valuable asset of Applicant.
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`WHEREFORE, Applicant prays that the Trademark Trial and Appeal Board deny the Notice of
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`Opposition and permit registration of Applicant’s proposed mark in Application No 87325505 in the
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`United States Patent and Trademark Office.
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`Dated as of August 29, 2017.
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`Respectfully Submitted,
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`By: /Akin Cakar/
`Title: Director
`LARA INTERNATIONAL INC
`1921 Carnegie Ave., Suite O,
`Santa Ana, California 92705
`oz@sugaryeti.com
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`8
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing APPLICANT’S ANSWER TO NOTICE OF
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`OPPOSITION AND AFFIRMATIVE DEFENSES has been served on KATHERINE LAATSCH FINK, BANNER &
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`WITCOFF, LTD. by forwarding said copy on August 29, 2017, via email to the following e-mail address:
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`Katherine Laatsch Fink
`BANNER & WITCOFF, LTD.
`E-mails:
`kfink@bannerwitcoff.com,
`mknutsson@bannerwitcoff.com,
`ERivera@bannerwitcoff.com,
`bwlitdocket@bannerwitcoff.com,
`bwptotm@bannerwitcoff.com
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`Dated as of August 29, 2017.
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`By: /Akin Cakar/
`Title: Director
`LARA INTERNATIONAL INC
`1921 Carnegie Ave., Suite O,
`Santa Ana, California 92705
`oz@sugaryeti.com
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`9
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