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`ESTTA Tracking number:
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`ESTTA892155
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`Filing date:
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`04/24/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91240068
`
`Party
`
`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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`Defendant
`Detroit Aircraft Corporation
`
`Staci R. DeRegnaucourt
`Quinn IP Law
`Suite 300 21500 Haggerty Road
`Northville, MI 48167
`Email: sderegnaucourt@quinniplaw.com, tm@quinniplaw.com, csy-
`ck@quinniplaw.com, lmuhleck@quinniplaw.com, adomagala@quinniplaw.com
`
`Answer
`
`Staci R. DeRegnaucourt
`
`sderegnaucourt@quinniplaw.com, mmowers@quinniplaw.com,
`tm@quinniplaw.com, adomagala@quinniplaw.com, lmuhleck@quinniplaw.com,
`csyck@quinniplaw.com
`
`Signature
`
`Date
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`/Staci R. DeRegnaucourt/
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`04/24/2018
`
`Attachments
`
`Final_210180420_Answer to Opposition_AirspaceX.pdf(41799 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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`
`
`SPACE EXPLORATION
`TECHNOLOGIES CORP.,
`
`Opposer,
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`v.
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`
`
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`
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`DETROIT AIRCRAFT
`CORPORATION
`
`
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`AIRSPACEX
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`87/368,820
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`March 13, 2017
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`)
`)
`)
`)
`)
`)
`)
`)
`)
`Applicant.
`)
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`____________________________________________________________________________
`
`
`Mark:
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`Application Ser. No.:
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`Filing Date:
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`
`
`
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`Opposition No.:
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`
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`91240068
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`
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`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION AND AFFIRMATIVE
`DEFNESES
`
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`Applicant, Detroit Aircraft Corporation (“Applicant”), by its attorneys, hereby submits an
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`Answer to the Notice of Opposition filed by Space Exploration Technologies, Inc. (“Opposer”)
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`against the application for registration of Applicant’s trademark AIRSPACEX, Serial No.
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`87/368820, filed March 13, 2017, and published in the Official Gazette on February 13, 2018,
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`states as follows:
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`In response to the preamble, otherwise referred to as the paragraph preceding Paragraph 1
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`of the Opposer’s Notice of Opposition, Applicant denies that Opposer would be damaged by the
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`registration of Applicant’s trademark, AIRSPACEX.
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`1.
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` Applicant lacks information sufficient to form a belief on which to base a
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`response regarding the allegations of paragraph 1, and thereby denies the same.
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`2.
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`Applicant admits only that the U.S. Patent and Trademark Office (“USPTO”)
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`records purport to show that Space Exploration Technologies Corp. is the owner of U.S.
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`- 1 -
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`
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`Trademark Registration No. 3,066,872, registered on March 7, 2006, for the word mark
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`SPACEX in International Class 039, U.S. Trademark Registration No. 4,267,520, registered on
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`January 1, 2013, for the word mark SPACEX in International Class 039, and pending U.S.
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`Trademark Application Serial No. 87/576981, filed on August 21, 2017, for the word mark
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`SPACEX in International Classes 009, 038, and 042. Notwithstanding, Applicant lacks
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`information sufficient to form a belief on which to base a response to the remaining allegations
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`in paragraph 2, and thereby denies the same.
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`3.
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`Applicant lacks information sufficient to form a belief on which to base a
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`response regarding the allegations of paragraph 3, and thereby denies the same.
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`4.
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`Applicant lacks information sufficient to form a belief on which to base a
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`response regarding the allegations of paragraph 4, and thereby denies the same.
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`5.
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`Applicant lacks information sufficient to form a belief on which to base a
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`response regarding the allegations of paragraph 5, and thereby denies the same.
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`6.
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`The Applicant admits that Opposer has accurately quoted the description of goods
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`in International Class 012 in U.S. Trademark Application Serial No. 87/368,820 filed with the
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`USPTO on March 13, 2017.
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`7.
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`The Applicant admits that Opposer has accurately quoted the filing date and
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`publication date in the USPTO Official Gazette of U.S. Trademark Application Serial No.
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`87/368,820.
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`8.
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`The Applicant admits only that it was aware of the U.S. Patent and Trademark
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`Office (“USPTO”) records purporting to show that Space Exploration Technologies Corp. was
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`the owner of U.S. Trademark Registration No. 3,066,872, registered on March 7, 2006, for the
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`word mark SPACEX in International Class 039, U.S. Trademark Registration No. 4,267,520,
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`- 2 -
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`
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`registered on January 1, 2013, for the word mark SPACEX in International Class 039, and that
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`Space Exploration Technologies Corp. intentionally abandoned and/or cancelled goods in
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`Trademark Registration No. 3,066,872, covering “aerospace vehicles, namely, launch vehicles
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`and rockets” in International Class 012 on March 3, 2016, over one year prior to the Applicant’s
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`filing of Trademark Application Serial No. 87/368820 for the mark AIRSPACEX on March 13,
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`2017. The Applicant denies the remainder of the allegations contained in paragraph 8.
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`9.
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`The Applicant denies the allegations contained in paragraph 9 in the Notice of
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`Opposition.
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`10.
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`The Applicant denies the allegations contained in paragraph 10 in the Notice of
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`Opposition.
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`11.
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`The Applicant repeats and re-alleges its responses to the preceding paragraphs 1-
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`10 of the Notice of Opposition.
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`12.
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` The Applicant admits only that the U.S. Patent and Trademark Office
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`(“USPTO”) records purport to show that Space Exploration Technologies Corp. is the owner of
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`U.S. Trademark Registration No. 3,066,872, registered on March 7, 2006, for the word mark
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`SPACEX in International Class 039, U.S. Trademark Registration No. 4,267,520, registered on
`
`January 1, 2013, for the word mark SPACEX in International Class 039, and pending U.S.
`
`Trademark Application Serial No. 87/576981, filed on August 21, 2017, for the word mark
`
`SPACEX in International Classes 009, 038, and 042. Notwithstanding, Applicant lacks
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`information sufficient to form a belief on which to base a response to the remaining allegations
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`in paragraph 12, and thereby denies the same.
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`13.
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`The Applicant denies the allegations contained in paragraph 13 in the Notice of
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`Opposition.
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`- 3 -
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`14.
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`The Applicant admits that it is engaged in the development of aeronautical goods
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`in International Class 012 as identified in its Trademark Application Serial No. 87/368820,
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`namely, unmanned, electrically-powered, vertical-takeoff-and-landing (eVTOL) aircraft that can
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`carry modular payloads for local and regional taxi operations. The Applicant lacks information
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`sufficient to form a belief on which to base a response to the remainder of the allegations in
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`paragraph 14, and thereby denies the same.
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`15.
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`Applicant lacks information sufficient to form a belief on which to base a
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`response to the allegations in paragraph 15, and thereby denies the same.
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`16.
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`The Applicant denies the allegations contained in paragraph 16 in the Notice of
`
`Opposition.
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`17.
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`The Applicant admits the allegations contained in paragraph 17 in the Notice of
`
`Opposition.
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`18.
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`The Applicant admits the allegations contained in paragraph 18 in the Notice of
`
`Opposition.
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`19.
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`The Applicant denies the allegations contained in paragraph 19 in the Notice of
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`Opposition.
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`- 4 -
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`In further answer to the Notice of Opposition, Applicant asserts the following affirmative
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`AFFIRMATIVE DEFENSES
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`defenses, without assuming the burden of proof on such defenses that would otherwise rest with
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`Opposer:
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`1.
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`The Opposer fails to state a claim upon which relief may be granted, and in
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`particular, fails to state legally sufficient legal grounds for sustaining the Opposition.
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`2.
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`There is no likelihood of confusion, mistake or deception with respect to the
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`Applicant’s AIRSPACEX mark and the Opposer’s SPACEX mark because the Applicant’s
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`AIRSPACEX mark and the Opposer’s SPACEX mark are not confusingly similar when
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`compared in their entireties as to appearance, sound, connotation and commercial impression.
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`3.
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`The Applicant’s use of Applicant’s AIRSPACEX mark with the aeronautical
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`goods applied-for in International Class 012, namely, unmanned, electrically-powered, vertical-
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`takeoff-and-landing (eVTOL) aircraft that can carry modular payloads for local and regional taxi
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`operations are not related to the astronautical services of the Opposer in International Class 039,
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`related to outer space, namely, launch services, namely, launching the payloads of others into
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`space (U.S. Trademark Registration No. 4267520) and launch and placement in space of
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`satellites of others (U.S. Trademark Registration No. 3066872), and the goods or services in
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`question are not related or marketed in such a way that they would be encountered by the same
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`persons in situations that would create the incorrect assumption that they originate from the same
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`source.
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`4.
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`Applicant’s use of
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`the Applicant’s AIRSPACEX mark on Applicant’s
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`aeronautical goods applied-for in International Class 012 will not mistakenly be thought by the
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`public to derive from the same source as Opposer’s SPACEX mark on Opposer’s astronautical
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`- 5 -
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`
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`services in International Class 039, related to outer space, nor will such use be thought by the
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`public to be a use by Opposer with Opposer’s authorization or approval.
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`5.
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`Opposer’s claims are barred by the doctrine of equitable estoppel. Opposer
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`intentionally cancelled and voluntarily surrendered rights in Opposer’s SPACEX mark for
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`protection of goods in International Class 012 in a filing with the USPTO on March 3, 2016,
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`over one year prior to the Applicant’s filing of Trademark Application Serial No. 87/368820 for
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`AIRSPACEX on March 13, 2017. Specifically, Opposer intentionally abandoned and/or
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`cancelled goods in Trademark Registration No. 3,066,872, covering “aerospace vehicles,
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`namely, launch vehicles and rockets” in International Class 012 in a filing with USPTO on
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`March 3, 2016.
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`6.
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`Upon information and belief, Opposer has failed to object to a multitude of third-
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`party uses and registrations of SPACE-formative and X-formative marks. Opposer’s asserted
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`registrations and pending trademark application are therefore entitled to a limited scope of
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`protection.
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`7.
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`Applicant reserves all affirmative defenses under the Lanham Act, Federal Rule
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`of Civil Procedure 8(c) and any other affirmative defenses or counterclaims in law or equity that
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`may now exist or in the future exist based on factual investigation or discovery in these
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`proceedings or otherwise. Applicant reserves the right to amend its Answer and Affirmative
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`Defenses for the purposes of asserting any such affirmative defenses.
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`- 6 -
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`WHEREFORE, Applicant respectfully requests that:
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`a.
`
`b.
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`The Notice of Opposition be dismissed in its entirety with prejudice;
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`The Applicant’s U.S. Application Serial No. 87/368,820 for
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`the mark
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`AIRSPACEX proceed forward toward registration and a Notice of Allowance be issued for the
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`same; and
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`c.
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`The Board grant such other and further relief as is just and proper.
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`Date: April 24, 2018
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`
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`
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`Respectfully submitted,
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`Detroit Aircraft Corporation
`
`By:__/Staci R. DeRegnaucourt/_____
`Staci R. DeRegnaucourt
`Matthew R. Mowers
`
`QUINN IP LAW
`21500 Haggerty Road
`Northville, Michigan 48167
`Telephone: (248) 380-9300
`Facsimile: (248) 380-8968
`srd@quinnlawgroup.com
`mrm@quinnlawgroup.com
`Attorneys for Applicant
`
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`CERTIFICATE OF ELECTRONIC FILING AND SERVICE
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`I hereby certify that on this 24th day of April, 2018, a copy of the foregoing
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`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION AND AFFIRMATIVE
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`DEFENSES is being electronically filed with the United States Patent & Trademark Office
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`Trademark Trial and Appeal Board, at http://estta.upsto.gov/. I further certify that a copy of
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`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION AND AFFIRMATIVE
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`DEFENSES has been served on opposing counsel by email at the following addresses:
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`bhughes@cooley.com (Brendan J. Hughes)
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`jlauter@cooley.com (Judd Lauter)
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`trademarks@cooley.com
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`By:__/Staci R. DeRegnaucourt/_____
`Staci R. DeRegnaucourt
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`
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`Dated April 24, 2018
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