Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA886628
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`Filing date:
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`03/29/2018
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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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`91239180
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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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`Attachments
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`Plaintiff
`Wal-mart Stores, Inc.
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`Elizabeth H. Cohen
`Arent Fox LLP
`1717 K Street, NW
`Washington, DC 20006
`UNITED STATES
`Email: tmdocket@arentfox.com, ustm@walmartlegal.com, dock-
`etuswmt@mcdonaldhopkins.com, diana.bae@arentfox.com,
`teresa.myers@arentfox.com
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`Motion to Strike Pleading/Affirmative Defense
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`Elizabeth H. Cohen
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`tmdocket@arentfox.com, ustm@walmartlegal.com, dock-
`etuswmt@mcdonaldhopkins.com, diana.bae@arentfox.com,
`teresa.myers@arentfox.com, elizabeth.cohen@arentfox.com
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`/Elizabeth H. Cohen/
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`03/29/2018
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`WALMART v. XCHANGELABS - Opposers Motion to Strike Affirmative De-
`fenses.pdf(150041 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application No. 87451784 for the mark EQUATE filed on May 16, 2017 and published on
`August 1, 2017.
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`WALMART INC., and
`WALMART APOLLO, LLC
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`Opposer
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`Opp. No. 91239180
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`v.
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`XCHANGELABS LLC
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`Applicant
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`OPPOSER’S MOTION TO STRIKE
`AFFIRMATIVE DEFENSES
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`Pursuant to Rule 12(f) of the Federal Rules of Civil Procedure and sections 309, 506.01
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`and 311.02 of the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), Opposer1
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`moves to strike the Affirmative Defenses filed by Applicant XCHANGELABS LLC
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`(“Applicant”) on the grounds that they are insufficient, impertinent, argumentative, and
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`immaterial.
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`FACTS
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`On January 29, 2018, Opposer timely opposed trademark application Ser. No. 87/451784
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`for the mark EQUATE, filed by XchangeLabs LLC (“Applicant”). The opposition is based on
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`Opposer’s well-known, federally registered marks consisting of or incorporating the word
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`EQUATE and for which Opposer owns all right, title and interest in the mark EQUATE for a
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`wide variety of goods. See Notice of Opposition, ¶ 4.
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`1 On February 1, 2018, Wal-Mart Stores, Inc. changed its name to Walmart Inc. In addition, assignments have been
`filed and recorded for the following applications that are now owned by Walmart Apollo, LLC: Ser. Nos. 87646993;
`87646991; 87646990; 87646989; and 87648333. Walmart Apollo, LLC, Wal-Mart Stores, Inc. and Walmart Inc. are
`collectively referred to in the singular as “Walmart”.
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`AFDOCS/16166712.2
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`1
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` On March 3, 2018, Applicant filed an Answer with the Board and provided a courtesy
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`copy to Opposer. Opposer notes that the Answer did not contain a Certificate of Service, or any
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`other proof of service, as required by the rules. While the Answer does not technically comply
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`with the rules given the lack of the Certificate of Service, Opposer agrees to accept service in this
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`particular instance in the interest of promoting judicial efficiency. (This is not a waiver of any of
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`the rules going forward, and Walmart reserves the right to object to any violations thereof.).
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`The Answer contained two Affirmative Defenses, neither of which qualify as valid
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`affirmative defenses to a Notice of Opposition and thus should be stricken. Applicant’s first
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`“defense” is that “given the differences in the parties’ uses and consumers of the parties’ marks,
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`it is not likely that there is confusion or deception as to the source of Applicant’s goods and
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`services.” Answer, ¶ 40. Applicant’s second “defense” is that “given the differences in the
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`parties’ uses and consumers of the parties’ marks, it is not likely that Opposer’s marks will have
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`any bearing on the purchasing decisions of Applicant’s goods and services.” Answer, ¶ 41.
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`Neither of these are actual defenses to the claims in the Notice of Opposition. Instead, they are
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`mere denials of allegations made in the Notice of Opposition. As demonstrated below, they are
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`therefore improper and should be stricken.
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`ARGUMENT
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`Applicant’s Affirmative Defenses are invalid and should be stricken. Pursuant to TBMP
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`§ 506.01, “the Board may order stricken from a pleading any insufficient defense or any
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`redundant, immaterial, impertinent, or scandalous matter. The Board also has the authority to
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`strike an impermissible or insufficient claim or portion of a claim from a pleading.” Because the
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`Affirmative Defenses do nothing more than re-state Applicant’s denials of the allegations in the
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`Notice of Opposition, they are insufficient, redundant of the denials, and impermissible.
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`As mentioned above, Applicant’s first “defense” is that “given the differences in the
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`parties’ uses and consumers of the parties’ marks, it is not likely that there is confusion or
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`deception as to the source of Applicant’s goods and services.” Answer, ¶ 40. Applicant’s
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`AFDOCS/16166712.2
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`2
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`second “defense” is that “given the differences in the parties’ uses and consumers of the parties’
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`marks, it is not likely that Opposer’s marks will have any bearing on the purchasing decisions of
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`Applicant’s goods and services.” Answer, ¶ 41. Neither of these are actual defenses to the
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`claims in the Notice of Opposition. Instead, they are mere denials of allegations made in the
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`Notice of Opposition.
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`In the Notice of Opposition, it is alleged that there is a likelihood of confusion and
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`deception. The first Affirmative Defense merely states the negative, that “it is not likely that
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`there is confusion or deception.” The second Affirmative Defense, that Opposer’s mark will not
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`affect the decision to purchase Applicant’s goods, is not relevant. Moreover, to the extent that it
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`can be understood, it also is a mere denial of likelihood of confusion or dilution. These supposed
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`Affirmative Defenses constitute nothing more than legal argument relating to the likelihood of
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`confusion factors, deception or dilution. These type of affirmative defenses are prohibited by
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`Rule 8 of the Federal Rules of Civil Procedure. See Thrifty Corp. v. Bomax Enterprises, 228
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`USPQ 62, 63 (T.T.A.B. 1985) (Board refused to accept applicant’s answer as it was “basically
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`argumentative rather than a proper responsive pleading to the notice of opposition. As such, it
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`plainly does not comply with Rule 8(b) of the Federal Rules of Civil Procedure …”).
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`Applicant’s allegations as to lack of confusion or dilution are impermissible because they merely
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`reiterate the denials in the Answer. See Textron, Inc. v. Gillette Co, 180 USPQ 152, 154 (TTAB
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`1973) (allegations in answer as to likelihood of confusion without adding anything of substance
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`should be stricken as redundant).
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`Accordingly, the purported Affirmative Defenses are improper, immaterial, redundant
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`and impertinent. Applicant will have an opportunity to submit argument and evidence at a later
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`date in this proceeding. Applicant’s defenses should therefore be stricken in their entirety.
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`AFDOCS/16166712.2
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`3
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`CONCLUSION
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`For the foregoing reasons, Opposer respectfully requests that the Motion to Strike be
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`granted.
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`Respectfully submitted,
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`WALMART INC.
`WALMART APOLLO, LLC
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`By:
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`Elizabeth H. Cohen
`Diana S. Bae
`Arent Fox LLP
`1717 K Street, NW
`Washington, DC 20006
`(212) 457-5418
`Elizabeth.Cohen@arentfox.com
`Diana.Bae@arentfox.com
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`Attorneys for Opposer
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`CERTIFICATE OF SERVICE
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`It is hereby certified that a true and correct copy of the foregoing is being served upon Applicant’s
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`counsel Jack Balderson Jr. by email at jack@tbtexlaw.com on March 29, 2018.
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`______
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`Diana S. Bae
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`_________
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`4
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`AFDOCS/16166712.2
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