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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA907177
`07/03/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Mountaineer Partners Management, LLC
`
`Limited liability company
`
`Citizenship
`
`Delaware
`
`150 East 58th Street
`14th Floor
`New York, NY 10155
`UNITED STATES
`
`Damon A. Neagle
`Design IP, P.C.
`5050 W. Tilghman St
`Suite 435
`Allentown, PA 18104
`UNITED STATES
`Email: tm@designip.com
`Phone: 610-395-4900
`
`Applicant Information
`
`Application No
`
`87674664
`
`Publication date
`
`06/12/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`07/03/2018
`
`Opposition Peri-
`od Ends
`
`07/12/2018
`
`MOUNTAINEER CAPITAL MANAGEMENT LP
`28 HAVEMEYER PLACE
`GREENWICH, CT 06830
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 036. First Use: 2017/11/01 First Use In Commerce: 2017/11/01
`All goods and services in the class are opposed, namely: Financial advisory and consultancy ser-
`vices; Financial and investment services,namely, asset and investment acquisition, consultation, ad-
`visory and development; Financial information; Financial investment brokerage; Financial planning
`andinvestment advisory services; Financialservices, namely, investment advice, investment manage-
`ment, investment consultation and investment of funds for others,including private and public equity
`anddebt investment services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`
`87790500
`
`Application Date
`
`02/08/2018
`
`

`

`No.
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MOUNTAINEER
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2011/12/05 First Use In Commerce: 2011/12/05
`Financial advisory and consultancy services
`
`Attachments
`
`87790500#TMSN.png( bytes )
`Notice of Opposition - FINAL.pdf(439669 bytes )
`
`Signature
`
`/Damon A. Neagle/
`
`Name
`
`Date
`
`Damon A. Neagle
`
`07/03/2018
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________________________________________________________
`
`In the matter of trademark Application Serial No. 87/674,664
`
`For the mark MOUNTAINEER
`
`Date Filed: November 7, 2017
`
`Date Published: June 12, 2018
`___________________________________________________________________________
`
`Mountaineer Partners Management, LLC,
`
`
`
`
`
`Opposer;
`
`
`
`v.
`
` Mountaineer Capital Management, LP,
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No.:________________
`
`____________________________________________________________________________
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer Mountaineer Partners Management, LLC, by and through its undersigned
`
`counsel, states as its Notice of Opposition against Applicant, Mountaineer Capital Management,
`
`LP, the following:
`
`I.
`
`The Parties
`
`1. Opposer Mountaineer Partners Management, LLC, (“MPM”) is a Delaware limited liability
`
`company with a business address of 150 East 58th Street, 14th Floor, New York, NY 10155.
`
`2. MPM is the owner of record of US trademark Application Serial No. 87/790500 the (“the
`
`‘500 Application”).
`
`3. On information and belief, Applicant Mountaineer Capital Management, LP (“MCM”) is a
`
`Delaware limited partnership comprising Colin Kronewitter, a United States citizen, and Cairn
`
`

`

`Rock Capital Partners, LLC, a Delaware limited liability company. MCM has a business address
`
`of 28 Havemeyer Place, Greenwich, Connecticut 06830.
`
`4. On information and belief, MCM is the owner of record of US trademark Application Serial
`
`No. 87/674,664 the (“the ‘664 Application”).
`
`II.
`
`Standing
`
`5. The above-identified Opposer is being injured by MCM’s ‘664 Application, and hereby
`
`opposes the same. Opposer has a direct and personal stake in the outcome of this proceeding.
`
`The facts recited in the following paragraphs establish Opposer’s standing to file this opposition,
`
`pursuant to Trademark Act Section 14, 15 U.S.C. § 1064.
`
`6. Opposer has been injured because it is the senior user of the mark MOUNTAINEER for
`
`financial advisory and consultancy services, and the ‘664 Application impedes the full exercise of
`
`Opposer’s rights to use of its MOUNTAINEER mark. Opposer’s injury includes the inability to
`
`secure the benefits of federal registration for its MOUNTAINEER mark due to the existence of the
`
`‘664 Application.
`
`III.
`
`Grounds for Opposition
`
`7. Opposer’s grounds for this opposition proceeding are priority and an alleged likelihood of
`
`confusion under Trademark Act §2(d), 15 U.S.C. § 1052(d). If, as the USPTO Examining Attorney
`
`contends in his suspension notice for MPM’s ‘500 Application, Opposer’s mark so resembles
`
`Applicant’s mark as to be likely, when applied to the services of the Opposer, to cause confusion,
`
`then the ‘664 Application should be refused because Opposer has priority of use.
`
`8. In the alternative, on information and belief, there was no bona fide use of applicant’s mark
`
`in connection with all of the services listed in the ‘664 application prior to the filing of the use-
`
`based application for registration of the mark under Trademark Act §1(a), 15 U.S.C. §1051(a).
`
`Due to the lack of prior use, the ‘664 application should be refused.
`
`IV.
`
`The Applicant’s and Opposer’s Applications
`
`2
`
`

`

`9. On November 7, 2017, Applicant MCM filed an application, Serial Number 87/674,664, to
`
`register MOUNTAINEER for financial advisory and consultancy services; financial and investment
`
`services, namely, asset and investment acquisition, consultation, advisory and development;
`
`financial information; financial investment brokerage; financial planning and investment advisory
`
`services; financial services, namely, investment advice, investment management, investment
`
`consultation and investment of funds for others, including private and public equity and debt
`
`investment services in International Class 036. This application was published June 12, 2018.
`
`10. On February 8, 2018, Opposer filed an application, Serial Number 87/790,500, to register
`
`MOUNTAINEER for financial advisory and consultancy services in Class 036.
`
`11. On May 23, 2018, the USPTO issued a Suspension Notice in Opposer’s ‘500 application.
`
`In the Notice, the examining attorney took the position that Applicant’s ‘664 Application may
`
`present a bar to Opposer’s application under Trademark Act Section 2(d), 15 U.S.C. §1052(d),
`
`based on an alleged likelihood of confusion.
`
`V.
`
`Priority of Use
`
`12. Opposer had nationwide common law rights to its MOUNTAINEER mark for use with
`
`financial services, as claimed in the ‘500 Application, for nearly 6 years prior to Applicant’s claimed
`
`first use of the MOUNTAINEER mark.
`
`13. Applicant’s ‘664 Application claimed November 1, 2017 as both the date of first use and
`
`the date of first use in commerce of the MOUNTAINEER mark.
`
`14. Opposer has continuously used the trademark MOUNTAINEER, in interstate commerce
`
`on a nationwide basis, for financial advisory and consultancy services since at least as early as
`
`December 5, 2011.
`
`15. A search of the online records of the Delaware Department of State: Division of
`
`Corporations conducted on June 7, 2018 showed that Opposer Mountaineer Partners
`
`Management, LLC was formed on February 17, 2011.
`
`3
`
`

`

`16. A search of the online records of the Delaware Department of State: Division of
`
`Corporations conducted on June 7, 2018 showed that Applicant Mountaineer Capital
`
`Management, LP was formed on November 15, 2017.
`
`17. Marketing and advertising are heavily regulated in the field of investment funds and thus
`
`most of Opposer’s marketing is done via meetings, conferences and coverage in trade
`
`publications.
`
`18. Prior
`
`to November 1, 2017, Opposer was using, and continues
`
`to use, the
`
`MOUNTAINEER mark to advertise the services of its well-established financial advisory and
`
`consultancy business.
`
`19. Prior to November 1, 2017, Opposer had contact with approximately 900 investors,
`
`conducted 329 in person meetings, and 107 onsite visits with potential clients primarily from
`
`across the United States.
`
`20. As of November 1, 2017, Opposer had 5 employees, $75.8 million in firm assets under
`
`management from 19 investors, including high net worth individuals, family offices, foundations,
`
`an outsourced chief investment officer and investors based in New York, Connecticut,
`
`Pennsylvania, Ohio, California and the United Kingdom.
`
`21. On information and belief, on February 8, 2018, Applicant MCM filed a FORM ADV
`
`PART 2A BROCHURE with the Securities and Exchange Commission, which contains the
`
`following statement on page 7 under the heading Assets Under Management: “As of December
`
`31, 2017, we provide continuous management services for $0 in client assets on a discretionary
`
`basis, and $0 in client assets on a non-discretionary basis”.
`
`22. Opposer uses the MOUNTAINEER mark to advertise its services on its website
`
`http://www.mountaineerpartners.com/. The website is accessible to potential customers
`
`throughout the United States and beyond.
`
`23. The
`
`internet
`
`archive
`
`website
`
`web.archive.org
`
`has
`
`captured
`
`the
`
`http://www.mountaineerpartners.com/ website as early as August 23, 2013.
`
`4
`
`

`

`24. Through substantial effort and investment, Opposer has built up substantial goodwill in the
`
`mark.
`
`25. Opposer MPM has incurred average annual expenses of $186,833 marketing the Fund to
`
`investors, including salaries of employees primarily engaged in marketing, travel expenses, and
`
`expenses to attend conferences. Opposer MPM has had contact with approximately 900
`
`investors, conducted 329 in person meetings, and 107 onsite visits prior to November 1, 2017
`
`with potential clients primarily from across the United States.
`
`26. An article in the on-line publication Business Wire (www.businesswire.com) dated May 1,
`
`2012, reports that “Mountaineer Partners Management LLC, a new event-driven long/short hedge
`
`fund, today announced the implementation of Imagine’s powerful, cloud-based ASP service for
`
`its fund launched in 2012.”
`
`27. An article in the on-line publication Risk-Technology (http://risk-technology.typepad.com)
`
`dated May 14, 2012, reports that “Mountaineer Partners Management, an event-driven long/short
`
`hedge fund based in New York and open for business since January 2012, has implemented
`
`Imagine Software’s cloud-based portfolio and risk management solution.”
`
`28. On April 17, 2016, The New York Times published a wedding announcement for Gregory
`
`Stephen Williams who is described as “an investment analyst at Mountaineer Partners
`
`Management, a hedge fund in New York.”
`
`29. Based on the facts of record, Opposer’s use of the MOUNTAINEER mark, as early as
`
`December 5, 2011, predates Applicant’s claimed first use of the MOUNTAINEER mark of
`
`November 1, 2017, by approximately six years. As such, Opposer is the senior user of the
`
`MOUNTAINEER mark.
`
`30. Opposer’s use in commerce of the MOUNTAINEER mark at least as early as 2011 has
`
`been nationwide. The global reach of Opposer’s website, the geographic diversity of the services
`
`offered and the geographic diversity of the consumers outlined in the facts pleaded, supra,
`
`demonstrate nationwide use.
`
`5
`
`

`

`31. Opposer has invested significant amounts of money and labor in the development and
`
`promotion of its financial advisory and consultancy business using the MOUNTAINEER.
`
`32. Opposer now seeks federal registration of it MOUNTAINEER mark in conjunction with
`
`financial advisory and consultancy.
`
`33. Opposer, through its development and promotion efforts, has built a recognized
`
`nationwide notoriety and goodwill around the MOUNTAINEER mark.
`
`VI. Lack of Bona Fide Use
`
`34. On information and belief, at the time Applicant filed the ‘664 Application, applicant did not
`
`have actual use of Applicant’s Mark as a trademark with each of and every one of Applicant’s
`
`services, and on information and belief, Applicant failed to satisfy the requirements of Trademark
`
`Act Section 1(a) and related Trademark Rules and Regulations.
`
`35. Applicant filed the ‘664 Application on November 7, 2017 on in in-use basis under Section
`
`1(a) of the Trademark Act.
`
`36. The specimen of use attached to the application is described as a “screenshot of website
`
`offering services and emblazoned with the mark” and is reproduced below.
`
`
`
`
`
`
`
`6
`
`

`

`37. On
`
`information and belief, Applicant owns and
`
`controls
`
`the website
`
`http://mountaineerfunds.com/.
`
`38. A search of the internet archive website web.archive.org on June 14, 2018 showed that it
`
`had never captured historic images the website http://mountaineerfunds.com/.
`
`39. A review of the http://mountaineerfunds.com/ website on June 14, 2018 showed a web
`
`page identical to the one in the specimen for the ‘664 Application, except that the photograph of
`
`the rock pile was missing.
`
`40. The website consists of a single web page using the MOUNTAINEER mark associated
`
`with the text “Mountaineer Capital manages private investment funds targeting long-term
`
`investments in quality companies, with strong unit economics. The funds are concentrated in
`
`nature and global in construction. Our objective is to identify a select few investments with
`
`sustainable competitive advantages and pricing power. We seek to align our capital behind
`
`disciplined, shareholder friendly management teams.”
`
`41. The services claimed in the ‘664 application are “Financial advisory and consultancy
`
`services; Financial and investment services, namely, asset and investment acquisition,
`
`consultation, advisory and development; Financial information; Financial investment brokerage;
`
`Financial planning and investment advisory services; Financial services, namely, investment
`
`advice, investment management, investment consultation and investment of funds for others,
`
`including private and public equity and debt investment services.”
`
`42. The specimen does not show use of the MOUNTAINEER mark in association with
`
`“financial advisory and consultancy services” or “financial services, namely, investment advice.”
`
`43. On information and belief, as of the filing date of November 7, 2017, Applicant had not
`
`rendered in commerce all of the services listed in the ‘664 Application filed on an in-use basis
`
`under Section 1(a) of the Trademark Act.
`
`7
`
`

`

`44. On information and belief, as described in paragraph 21, Supra, Applicant reported to the
`
`SEC on February 8, 2018, that as of December 31, 2017, it provided continuous management
`
`services for $0 in client assets.
`
`WHEREFORE, Opposer respectfully requests that Applicant’s ‘664 Application be refused
`
`and that this Opposition be sustained.
`
`
`
`Date: July 3, 2018
`
`
`
`
`
`By: /Damon A. Neagle/
`Damon A. Neagle
`PA Bar No. 90738
`Design IP, P.C.
`Commerce Corporate Center
`5050 W. Tilghman St., Suite 435
`Allentown, PA 18104
`tel.: 610-395-4900
`fax: 610-680-3312
`e-mail: tm@designip.com
`
`Attorneys for Opposer
`
`8
`
`

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