throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA892155
`
`Filing date:
`
`04/24/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91240068
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`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
`
`/Staci R. DeRegnaucourt/
`
`04/24/2018
`
`Attachments
`
`Final_210180420_Answer to Opposition_AirspaceX.pdf(41799 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`SPACE EXPLORATION
`TECHNOLOGIES CORP.,
`
`Opposer,
`
`v.
`
`
`
`
`
`
`
`DETROIT AIRCRAFT
`CORPORATION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`AIRSPACEX
`
`87/368,820
`
`March 13, 2017
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`Applicant.
`)
`
`____________________________________________________________________________
`
`
`Mark:
`
`Application Ser. No.:
`
`Filing Date:
`
`
`
`
`
`Opposition No.:
`
`
`
`91240068
`
`
`
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION AND AFFIRMATIVE
`DEFNESES
`
`
`Applicant, Detroit Aircraft Corporation (“Applicant”), by its attorneys, hereby submits an
`
`Answer to the Notice of Opposition filed by Space Exploration Technologies, Inc. (“Opposer”)
`
`against the application for registration of Applicant’s trademark AIRSPACEX, Serial No.
`
`87/368820, filed March 13, 2017, and published in the Official Gazette on February 13, 2018,
`
`states as follows:
`
`In response to the preamble, otherwise referred to as the paragraph preceding Paragraph 1
`
`of the Opposer’s Notice of Opposition, Applicant denies that Opposer would be damaged by the
`
`registration of Applicant’s trademark, AIRSPACEX.
`
`1.
`
` Applicant lacks information sufficient to form a belief on which to base a
`
`response regarding the allegations of paragraph 1, and thereby denies the same.
`
`2.
`
`Applicant admits only that the U.S. Patent and Trademark Office (“USPTO”)
`
`records purport to show that Space Exploration Technologies Corp. is the owner of U.S.
`
`- 1 -
`
`

`

`Trademark Registration No. 3,066,872, registered on March 7, 2006, for the word mark
`
`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
`
`information sufficient to form a belief on which to base a response to the remaining allegations
`
`in paragraph 2, and thereby denies the same.
`
`3.
`
`Applicant lacks information sufficient to form a belief on which to base a
`
`response regarding the allegations of paragraph 3, and thereby denies the same.
`
`4.
`
`Applicant lacks information sufficient to form a belief on which to base a
`
`response regarding the allegations of paragraph 4, and thereby denies the same.
`
`5.
`
`Applicant lacks information sufficient to form a belief on which to base a
`
`response regarding the allegations of paragraph 5, and thereby denies the same.
`
`6.
`
`The Applicant admits that Opposer has accurately quoted the description of goods
`
`in International Class 012 in U.S. Trademark Application Serial No. 87/368,820 filed with the
`
`USPTO on March 13, 2017.
`
`7.
`
`The Applicant admits that Opposer has accurately quoted the filing date and
`
`publication date in the USPTO Official Gazette of U.S. Trademark Application Serial No.
`
`87/368,820.
`
`8.
`
`The Applicant admits only that it was aware of the U.S. Patent and Trademark
`
`Office (“USPTO”) records purporting to show that Space Exploration Technologies Corp. was
`
`the owner of U.S. Trademark Registration No. 3,066,872, registered on March 7, 2006, for the
`
`word mark SPACEX in International Class 039, U.S. Trademark Registration No. 4,267,520,
`
`- 2 -
`
`

`

`registered on January 1, 2013, for the word mark SPACEX in International Class 039, and that
`
`Space Exploration Technologies Corp. intentionally abandoned and/or cancelled goods in
`
`Trademark Registration No. 3,066,872, covering “aerospace vehicles, namely, launch vehicles
`
`and rockets” in International Class 012 on March 3, 2016, over one year prior to the Applicant’s
`
`filing of Trademark Application Serial No. 87/368820 for the mark AIRSPACEX on March 13,
`
`2017. The Applicant denies the remainder of the allegations contained in paragraph 8.
`
`9.
`
`The Applicant denies the allegations contained in paragraph 9 in the Notice of
`
`Opposition.
`
`10.
`
`The Applicant denies the allegations contained in paragraph 10 in the Notice of
`
`Opposition.
`
`11.
`
`The Applicant repeats and re-alleges its responses to the preceding paragraphs 1-
`
`10 of the Notice of Opposition.
`
`12.
`
` The Applicant admits only that the U.S. Patent and Trademark Office
`
`(“USPTO”) records purport to show that Space Exploration Technologies Corp. is the owner of
`
`U.S. Trademark Registration No. 3,066,872, registered on March 7, 2006, for the word mark
`
`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
`
`information sufficient to form a belief on which to base a response to the remaining allegations
`
`in paragraph 12, and thereby denies the same.
`
`13.
`
`The Applicant denies the allegations contained in paragraph 13 in the Notice of
`
`Opposition.
`
`- 3 -
`
`

`

`14.
`
`The Applicant admits that it is engaged in the development of aeronautical goods
`
`in International Class 012 as identified in its Trademark Application Serial No. 87/368820,
`
`namely, unmanned, electrically-powered, vertical-takeoff-and-landing (eVTOL) aircraft that can
`
`carry modular payloads for local and regional taxi operations. The Applicant lacks information
`
`sufficient to form a belief on which to base a response to the remainder of the allegations in
`
`paragraph 14, and thereby denies the same.
`
`15.
`
`Applicant lacks information sufficient to form a belief on which to base a
`
`response to the allegations in paragraph 15, and thereby denies the same.
`
`16.
`
`The Applicant denies the allegations contained in paragraph 16 in the Notice of
`
`Opposition.
`
`17.
`
`The Applicant admits the allegations contained in paragraph 17 in the Notice of
`
`Opposition.
`
`18.
`
`The Applicant admits the allegations contained in paragraph 18 in the Notice of
`
`Opposition.
`
`19.
`
`The Applicant denies the allegations contained in paragraph 19 in the Notice of
`
`Opposition.
`
`
`
`
`
`- 4 -
`
`

`

`
`In further answer to the Notice of Opposition, Applicant asserts the following affirmative
`
`AFFIRMATIVE DEFENSES
`
`defenses, without assuming the burden of proof on such defenses that would otherwise rest with
`
`Opposer:
`
`1.
`
`The Opposer fails to state a claim upon which relief may be granted, and in
`
`particular, fails to state legally sufficient legal grounds for sustaining the Opposition.
`
`2.
`
`There is no likelihood of confusion, mistake or deception with respect to the
`
`Applicant’s AIRSPACEX mark and the Opposer’s SPACEX mark because the Applicant’s
`
`AIRSPACEX mark and the Opposer’s SPACEX mark are not confusingly similar when
`
`compared in their entireties as to appearance, sound, connotation and commercial impression.
`
`3.
`
`The Applicant’s use of Applicant’s AIRSPACEX mark with the aeronautical
`
`goods applied-for in International Class 012, namely, unmanned, electrically-powered, vertical-
`
`takeoff-and-landing (eVTOL) aircraft that can carry modular payloads for local and regional taxi
`
`operations are not related to the astronautical services of the Opposer in International Class 039,
`
`related to outer space, namely, launch services, namely, launching the payloads of others into
`
`space (U.S. Trademark Registration No. 4267520) and launch and placement in space of
`
`satellites of others (U.S. Trademark Registration No. 3066872), and the goods or services in
`
`question are not related or marketed in such a way that they would be encountered by the same
`
`persons in situations that would create the incorrect assumption that they originate from the same
`
`source.
`
`4.
`
`Applicant’s use of
`
`the Applicant’s AIRSPACEX mark on Applicant’s
`
`aeronautical goods applied-for in International Class 012 will not mistakenly be thought by the
`
`public to derive from the same source as Opposer’s SPACEX mark on Opposer’s astronautical
`
`- 5 -
`
`

`

`services in International Class 039, related to outer space, nor will such use be thought by the
`
`public to be a use by Opposer with Opposer’s authorization or approval.
`
`5.
`
`Opposer’s claims are barred by the doctrine of equitable estoppel. Opposer
`
`intentionally cancelled and voluntarily surrendered rights in Opposer’s SPACEX mark for
`
`protection of goods in International Class 012 in a filing with the USPTO on March 3, 2016,
`
`over one year prior to the Applicant’s filing of Trademark Application Serial No. 87/368820 for
`
`AIRSPACEX on March 13, 2017. Specifically, Opposer intentionally abandoned and/or
`
`cancelled goods in Trademark Registration No. 3,066,872, covering “aerospace vehicles,
`
`namely, launch vehicles and rockets” in International Class 012 in a filing with USPTO on
`
`March 3, 2016.
`
`6.
`
`Upon information and belief, Opposer has failed to object to a multitude of third-
`
`party uses and registrations of SPACE-formative and X-formative marks. Opposer’s asserted
`
`registrations and pending trademark application are therefore entitled to a limited scope of
`
`protection.
`
`7.
`
`Applicant reserves all affirmative defenses under the Lanham Act, Federal Rule
`
`of Civil Procedure 8(c) and any other affirmative defenses or counterclaims in law or equity that
`
`may now exist or in the future exist based on factual investigation or discovery in these
`
`proceedings or otherwise. Applicant reserves the right to amend its Answer and Affirmative
`
`Defenses for the purposes of asserting any such affirmative defenses.
`
`
`
`
`
`- 6 -
`
`

`

`
`
`WHEREFORE, Applicant respectfully requests that:
`
`a.
`
`b.
`
`The Notice of Opposition be dismissed in its entirety with prejudice;
`
`The Applicant’s U.S. Application Serial No. 87/368,820 for
`
`the mark
`
`AIRSPACEX proceed forward toward registration and a Notice of Allowance be issued for the
`
`same; and
`
`c.
`
`The Board grant such other and further relief as is just and proper.
`
`Date: April 24, 2018
`
`
`
`
`
`Respectfully submitted,
`
`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
`
`
`- 7 -
`
`

`

`
`
`
`CERTIFICATE OF ELECTRONIC FILING AND SERVICE
`
`I hereby certify that on this 24th day of April, 2018, a copy of the foregoing
`
`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION AND AFFIRMATIVE
`
`DEFENSES is being electronically filed with the United States Patent & Trademark Office
`
`Trademark Trial and Appeal Board, at http://estta.upsto.gov/. I further certify that a copy of
`
`APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION AND AFFIRMATIVE
`
`DEFENSES has been served on opposing counsel by email at the following addresses:
`
`bhughes@cooley.com (Brendan J. Hughes)
`
`jlauter@cooley.com (Judd Lauter)
`
`trademarks@cooley.com
`
`
`
`
`
`
`By:__/Staci R. DeRegnaucourt/_____
`Staci R. DeRegnaucourt
`
`
`
`
`
`Dated April 24, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 8 -
`
`

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