Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1219446
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`Filing date:
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`07/05/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91242432
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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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`Defendant
`FS.COM Limited
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`CHIKE EZE
`DAVIS WRIGHT TREMAINE LLP
`920 FIFTH AVE STE 3300
`SEATTLE, WA 98104
`UNITED STATES
`Primary email: SeattleTrademarkDocket@dwt.com
`Secondary email(s): ChikeEze@dwt.com, MichaelaMalone@dwt.com,
`EmilyEskew@dwt.com, MatthewMoersfelder@dwt.com
`206-757-8151
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`Motion to Amend/Amended Answer or Counterclaim
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`Chike Eze
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`chikeeze@dwt.com, SeattleTrademarkDocket@dwt.com, Mi-
`chaelaMalone@dwt.com, EmilyEskew@dwt.com, MatthewMoersfeld-
`er@dwt.com
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`/CUE/
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`07/05/2022
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`Answer to AMENDED Opposition_FS COM Stylized 9 _91242432.pdf(24639
`bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Growmark, Inc.,
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`Opposer,
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`v.
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`FS.COM Limited,
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`Applicant.
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`Opposition No.: 91242432
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`Application No.: 87/463,513
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`Mark:
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` Class: 9
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`ANSWER TO AMENDED NOTICE OF OPPOSITION
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`Applicant FS.COM Limited, by and through its attorneys identified below, answers the
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`Amended Notice of Opposition filed by Opposer Growmark, Inc. as follows:
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`Applicant admits the allegations in the first unnumbered paragraph of this Amended Notice
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`of Opposition. Applicant denies the allegations and/or conclusions in the remaining unnumbered
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`paragraphs of this Amended Notice of Opposition.
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`1.
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`2.
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`Applicant admits the allegations in numbered paragraph 1.
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`Applicant denies the allegations in the last sentence of numbered paragraph 2 and
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`admits the remaining allegations in numbered paragraph 2.
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`3.
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`4.
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`5.
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`Applicant admits the allegations in numbered paragraph 3.
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`Applicant admits the allegations in numbered paragraph 4.
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`Applicant lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations in numbered paragraph 5, and thus denies the same.
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`4864-0618-4741v.1 0114285-000016
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`6.
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`7.
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`8.
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`Applicant denies the allegations in numbered paragraph 6.
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`Applicant denies the allegations in numbered paragraph 7.
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`Applicant lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations in numbered paragraph 8, and thus denies the same.
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`9.
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`Applicant lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations in numbered paragraph 9, and thus denies the same.
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`Count 1: Priority and Likelihood of Confusion
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`10. Applicant denies the allegations in numbered paragraph 10.
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`11. Applicant denies the allegations in numbered paragraph 11.
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`12. Applicant lacks knowledge or information sufficient to form a belief as to the truth
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`of the allegations in numbered paragraph 12, and thus denies the same.
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`13. Applicant denies the allegations in numbered paragraph 13.
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`14. Applicant denies the allegations in numbered paragraph 14.
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`15. Applicant denies the allegations in numbered paragraph 15.
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`16. Applicant denies the allegations in numbered paragraph 16.
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`17. Applicant denies the allegations in numbered paragraph 17.
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`Count 2: Non-Use of Applicant’s Mark with Applied-for Goods
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`18. Applicant denies the allegations in numbered paragraph 18.
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`19. Applicant denies the allegations in numbered paragraph 19.
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`20. Applicant denies the allegations in numbered paragraph 20.
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`21. Applicant admits the allegations: In Request for Admission 118, Opposer asked
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`“Admit that you have searched for and produced all documents responsive to Opposer’s
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`request[s] for production in this proceeding.” Applicant admitted, “Applicant has produced
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`sufficient documents responsive to Opposer’s requests for production.” in numbered paragraph
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`21. Applicant denies the remaining allegations in numbered paragraph 21.
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`22. Applicant denies the allegations in numbered paragraph 22.
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`23. Applicant denies the allegations in numbered paragraph 23.
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`AFFIRMATIVE DEFENSE No. 1
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`Applicant asserts that it is at least entitled to registration of Application Ser. No. 87/463,513
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`opposed in this Amended Notice of Opposition with the following restriction:
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`“Amplifiers; Antenna parameter measuring apparatus; Antennas; Blank optical data
`carriers; Cables, electric; Circuit breakers; Coaxial cables; Computer operating software
`for data networking and excluding software for agricultural purposes; Computer
`peripheral devices; Connections, electric; Data processing apparatus; Data processing
`equipment, namely, couplers; Electrical connection boxes; Modems; Optical cables;
`Radios; Switchboards; Telecommunications transmitters; Transmitters of electronic
`signals; Transponders; Wires, electric” in Class 9
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`Explanation
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`The above restriction further clarifies Applicant’s applied-for software goods in the field of data
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`networking and expressly excludes Opposer’s software for use in the field of agriculture. The
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`restriction clearly limits the type and field of Applicant’s software which does not overlap with
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`or relate to Opposer’s software for use in the field of agriculture. Accordingly, the restriction
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`further obviates any likelihood of confusion regarding the parties’ dissimilar marks.
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`Applicant provides its applied-for software to consumers in the data networking industry, which
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`is distinct from Opposer’s agricultural industry. In M2 Software, Inc. v. M2 Commc'ns, Inc., the
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`Federal Circuit Court affirmed the Trademark Trial and Appeal Board’s holding that confusion
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`was unlikely between the marks M2 and M2 COMMUNICATIONS, in part, because the parties
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`limited their software goods to different industries and, as such, their software goods distributed
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`on similar media platforms were deemed different and unrelated. 450 F.3d 1378, 1381 (Fed. Cir.
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`2006). The Court noted that “given the pervasiveness of software and software-related goods in
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`society, it would be inappropriate to presume relatedness on the mere basis of goods being
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`delivered in the same media format, especially where, as here, the goods described in both the
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`application and registration are defined narrowly, along distinct industry lines.” M2 Software,
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`Inc., 450 F.3d at 1383 (emphasis added). Because Applicant’s and Opposer’s industries are
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`distinct and separate, the software and related services they offer to customers are different and
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`unrelated. Id.
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`AFFIRMATIVE DEFENSE No. 2
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`Applicant asserts that the partial nonuse claim in numbered paragraph 23 of the Amended Notice
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`of Opposition (copied below) is insufficiently pleaded and thus does not provide a basis upon
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`which relief can be granted.
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`Explanation
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`Paragraph 23 of the Notice of Opposition alleges the following:
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`Alternatively, all goods for which no evidence of use has been produced as of the
`filing date of the Opposed Application should be struck from the Opposed
`Application, and the use dates claimed should be adjusted to conform to the
`evidence.
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`66 TTABVUE 17 (emphasis added).
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`On May 25, 2022, the Board issued an order holding, in part, that because Opposer’s proposed
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`nonuse and partial nonuse claims were insufficiently pleaded, Opposer’s motion to amend its
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`pleadings is denied without prejudice. 60 TTABVUE 10. The Board noted that “[a]n opposition
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`based on partial nonuse requires the identification of specific goods or services listed in the
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`application.” 60 TTABUVE 9 citing Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536,
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`1538 (TTAB 2007) (elements of each claim should be stated concisely and directly, and include
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`enough detail to give the defendant fair notice). Opposer initially proposed a consolidated
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`amended pleading in which Opposer asserted a partial nonuse claim (provided below) that is
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`virtually identical to the claim in paragraph 23 of the Amended Notice of Opposition.
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`Opposer then asserts “[a]ccordingly, the Opposed Marks are not entitled to
`registration pursuant to 15 U.S.C. § 1051(a)” or, in the alternative, that “all
`goods and services for which [Applicant has not produced] evidence of use
`[or intent to use the mark] as of the application filing date” should be struck
`from the relevant application, and for the use-based application the claimed
`dates of first use “adjusted to conform with the evidence.”
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`60 TTABVUE 8.
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`In the May 25 order, the Board held that Opposer’s partial nonuse claim was insufficiently
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`pleaded because it did not “specify the goods and services to which the proposed partial nonuse
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`claim is directed” and the claim failed to allege “Applicant was not using its marks on any
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`specific good or services as of the filing date[].” 60 TTABVUE 9. Here also, Opposer’s partial
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`nonuse claim in paragraph 23 of the Amended Notice of Opposition does not specify the specific
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`goods to which Opposer’s partial nonuse claim is directed and the claim fails to allege that
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`Applicant was not using its mark on specific goods as of the filing date of the opposed
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`application. Accordingly, Opposer’s partial nonuse claim in this amended pleading is
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`insufficiently pleaded and thus does not provide a basis on which relief may be granted.
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`DATED July 5, 2022.
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`Respectfully submitted,
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`/s Chike Eze
`Chike Eze
`Matthew E. Moersfelder
`Davis Wright Tremaine LLP
`920 Fifth Avenue, #3300
`Seattle, Washington 98104
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`Attorneys for Applicant
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing document has been served
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`upon the following via electronic mail on July 5, 2022:
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`Jamie N. Nafziger
`Mike Keyes
`Navdeep K. Singh
`Alison Jarzyna
`Dorsey & Whitney LLP
`50 South Sixth St, Ste. 1500
`Minneapolis, MN 55402
`nafziger.jamie@dorsey.com; keyes.mike@dorsey.com; singh.navdeep@dorsey.com;
`jarzyna.alison@dorsey.com; ip.docket@dorsey.com
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`Attorneys for Opposer
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` s/Emily Eskew
`Emily Eskew
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