Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA955120
`02/19/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91245738
`
`Party
`
`Correspondence
`Address
`
`Defendant
`ROKKER LIZENZ GmbH c/o SVF Treuhand GmbH
`
`STACEY J. WATSON
`MARKERY LAW, LLC
`P.O. BOX 84150
`GAITHERSBURG, MD 20883-4150
`docket@markerylaw.com, staceywatson@markerylaw.com, tar-
`atoth@markerylaw.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Answer and Counterclaim
`
`Jacqueline L. Patt
`
`docket@markerylaw.com, jackiepatt@markerylaw.com, diretheacum-
`mings@markerylaw.com
`
`/Jacqueline L. Patt/
`
`02/19/2019
`
`ROKKER v.3 Answer to Notice of Opposition, Affirmative Defenses and Coun-
`terclaims .pdf(774232 bytes )
`ROKKER Answer - Exhibits_Part1.pdf(4969614 bytes )
`ROKKER Answer - Exhibits_Part2.pdf(5216382 bytes )
`ROKKER Answer - Exhibits_Part3.pdf(3531667 bytes )
`ROKKER Answer - Exhibits_Part4.pdf(3306221 bytes )
`ROKKER Answer - Exhibits_Part5.pdf(3022471 bytes )
`ROKKER Answer - Exhibits_Part6.pdf(5092714 bytes )
`ROKKER Answer - Exhibits_Part7.pdf(1516585 bytes )
`
`Registrations Subject to the filing
`
`Registration No.
`
`3666800
`
`Registration date
`
`08/11/2009
`
`International Re-
`gistration No.
`
`Registrant
`
`NONE
`
`International Re-
`gistration Date
`
`NONE
`
`Ace Cafe London Limited
`Ace Corner North
`Circular Road Stonebridge
`London, NW10 7UD
`UNITED KINGDOM
`Email: tmdocketing@needlerosenberg.com
`
`Goods/Services Subject to the filing
`
`Class 014. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: [ Jewelry and imitation jewelry; precious
`stones; rings being jewelry, necklaces, clip-on earrings, pierced earrings, bracelets, beads, namely,
`beaded necklaces; precious and semi-precious gemstones,namely, body gems and adornments for
`the body; jewelry chains, cuff links, ] tie pins; lapel pins; [ key rings of precious metal; key chains of
`precious metal;key fobs of precious metal; badges of precious metal; charms of precious met-
`al;jewelry collar tips; money clips of precious metal; ] medallions; pendants; [ horological and chrono-
`metric instruments and parts thereof; clocks; wall clocks; alarm clocks; watches and straps for
`
`

`

`watches; alarm clocks incorporating radios;desk clocks ]
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: [ Leather trousers; ] T-shirts; shirts;polo
`shirts; sweatshirts; [ jackets; leather jackets; denim jackets; hats and caps; scarves; silk scarves;
`trousers; jeans; shorts; waterproof jackets and pants; gloves; ] belts [; leather belts; competitors' num-
`bers of textile ]
`
`Grounds for Cancellation
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Registration No.
`
`3666841
`
`Registration date
`
`08/11/2009
`
`International Re-
`gistration No.
`
`Registrant
`
`NONE
`
`International Re-
`gistration Date
`
`NONE
`
`Ace Cafe London Limited
`Ace Corner North
`Circular Road Stonebridge
`London, NW10 7UD
`UNITED KINGDOM
`Email: tmdocketing@needlerosenberg.com
`
`Goods/Services Subject to the filing
`
`Class 026. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: [ Clasps for clothing; ] buckles for clothing;
`belt clasps and belt buckles; ornamental novelty pins; embroidered patches for clothing; adhesive
`patches for clothing made of rubber, plastic and vinyl; heat adhesive patches for clothing made of
`rubber, plastic and vinyl; brooches; buttons for clothing; [ hair ornaments; competitors' numbers not of
`textile; ]decorative studs for clothing
`
`Grounds for Cancellation
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`

`

`Ace Café London Limited,
`
`
`
`Opposer,
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`____________________________________
`)
`)
`)
`)
`)
` vs. )
` )
`Rokker Lizenz GmbH
`
`
`)
`c/o SVF Treuhand GmbH
`
`
`)
`
`)
`
`)
`
`
`Applicant.
`
`____________________________________)
`
`
`
`
`
`
`
`
`
`
`
`Opposition No. 91245738
`Serial No. 87/872379
`Mark: ROKKER
`
`ANSWER, AFFIRMATIVE DEFENSES
`AND COUNTERCLAIM
`
`
`
`
`
`Rokker Lizenz GmbH c/o SVF Treuhand GmbH (“Applicant”), through its
`
`undersigned attorneys, hereby submits this Answer to the Notice of Opposition and states
`
`the following:
`
`With respect to the allegations contained in the preamble, Applicant confirms its
`
`ownership of the subject application, but is without knowledge of information sufficient
`
`to admit or deny the remaining allegations and, therefore, denies the same.
`
`1.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 1 of the Notice of Opposition and, therefore, denies the same.
`
`2.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 2 of the Notice of Opposition and, therefore, denies the same.
`
`3.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 3 of the Notice of Opposition and, therefore, denies the same.
`
`

`

`4.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 4 of the Notice of Opposition and, therefore, denies the same.
`
`5.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 5 of the Notice of Opposition and, therefore, denies the same.
`
`6.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 6 of the Notice of Opposition and, therefore, denies the same.
`
`7.
`
`Applicant admits that it is a GmbH organized under the laws of
`
`Switzerland which is equivalent to a Limited Liability Company with an address of
`
`Tanne 55, Wienacht-Tobel, Switzerland 9405.
`
`8.
`
`Applicant operates under the name The Rokker Company and sells men’s
`
`and women’s clothing, leather goods and imitation leather goods in the United States.
`
`Applicant also operates a website found at www.therokkercompany.com. Applicant
`
`denies the remaining allegations of ¶ 8 of the Notice of Opposition.
`
`9.
`
` Applicant admits that its website found at www.therokkercompany.com
`
`includes the statement that “[o]ur mission is to feel as safe, comfortable and stylishly
`
`dressed on the bike as after the ride.” Applicant denies the remaining allegations of ¶ 9
`
`of the Notice of Opposition.
`
`10.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 10 of the Notice of Opposition and, therefore, denies the same.
`
`11.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 11 of the Notice of Opposition and, therefore, denies the same.
`
`12.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 12 of the Notice of Opposition and, therefore, denies the same.
`
`
`
`2
`
`

`

`13.
`
`Paragraph 13 states a legal conclusion as to validity of the listed marks
`
`and the exclusive right to use the listed marks. To the extent ¶ 13 is construed as an
`
`allegation of fact, Applicant admits that the USPTO records show that Opposer is the
`
`record owner of Registrations listed in ¶ 13. Applicant is without knowledge of
`
`information sufficient to admit or deny the remaining allegations of ¶ 13 of the Notice of
`
`Opposition and, therefore, denies the same.
`
`14.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 14 of the Notice of Opposition and, therefore, denies the same.
`
`15.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 15 of the Notice of Opposition and, therefore, denies the same.
`
`16.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 16 of the Notice of Opposition and, therefore, denies the same.
`
`17.
`
`Applicant admits that the USPTO records show that Applicant filed
`
`Application Serial No. 87/872379 on April 11, 2018 based on an intent to use the mark in
`
`the United States under Section 1(b) which covers clothing, namely, jeans, hooded
`
`sweatshirts, long sleeve and short sleeve shirts, tank tops, jackets, jackets made of leather,
`
`socks, vests, underwear; footwear; headgear, namely, trucker caps baseball caps, skull
`
`caps, beanies” in International Class 25, and “leather and imitations of leather, goods
`
`made of these materials not included in other classes, namely, leather cases, traveling
`
`bags, backpacks, harness and saddlery” in International Class 18.
`
`18.
`
`Applicant sells clothing and other goods listed in its application Serial
`
`No. 87/872379. Applicant is without knowledge of information sufficient to admit or
`
`
`
`3
`
`

`

`deny the remaining allegations of ¶ 18 of the Notice of Opposition and, therefore, denies
`
`the same.
`
`19.
`
`Applicant sells clothing and other goods listed in its application Serial
`
`No. 87/872379. Applicant is without knowledge of information sufficient to admit or
`
`deny the remaining allegations of ¶ 19 of the Notice of Opposition and, therefore, denies
`
`the same.
`
`20.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 20 of the Notice of Opposition and, therefore, denies the same.
`
`21.
`
`Applicant denies the allegations in ¶ 21 of the Notice of Opposition.
`
`22.
`
`Admitted.
`
`23.
`
`Applicant admits Registration No. 3,666,800 was filed on May 6, 2005
`
`and Registration No. 3,666,841 was filed on May 6, 2005. Applicant further admits that
`
`its application Serial No. 87/872379 was filed on April 11, 2018. Applicant is without
`
`knowledge of information sufficient to admit or deny the remaining allegations of ¶ 23 of
`
`the Notice of Opposition and, therefore, denies the same.
`
`24.
`
`Applicant is without knowledge of information sufficient to admit or deny
`
`the allegations of ¶ 24 of the Notice of Opposition and, therefore, denies the same.
`
`25.
`
`Paragraph 25 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 25 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 25 of the Notice of Opposition.
`
`26.
`
`Paragraph 26 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 26 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 26 of the Notice of Opposition.
`
`
`
`4
`
`

`

`27.
`
`Paragraph 27 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 27 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 27 of the Notice of Opposition.
`
`28.
`
`Paragraph 28 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 28 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 28 of the Notice of Opposition.
`
`29.
`
`Paragraph 29 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 29 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 29 of the Notice of Opposition.
`
`30.
`
`Paragraph 30 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 30 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 30 of the Notice of Opposition.
`
`31.
`
`Paragraph 31 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 31 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 31 of the Notice of Opposition.
`
`32.
`
`Paragraph 32 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 32 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 32 of the Notice of Opposition.
`
`33.
`
`Paragraph 33 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 33 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 33 of the Notice of Opposition.
`
`
`
`5
`
`

`

`34.
`
`Paragraph 34 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 34 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 34 of the Notice of Opposition.
`
`35.
`
`Paragraph 35 states a legal conclusion as to confusingly similar marks. To
`
`the extent that ¶ 35 can be construed as an allegation of fact, Applicant denies the
`
`allegations in ¶ 35 of the Notice of Opposition.
`
`AFFIRMATIVE DEFENSES
`
`1. There is no likelihood of confusion, mistake or deception because, inter alia,
`
`Applicant’s Mark and the marks alleged by Opposer are not confusingly similar.
`
`2. Applicant first used its mark ROKKER in 2008 in the United States. Applicant
`
`has been developing consumer recognition and goodwill in its mark in the United States
`
`since 2008, such use being open, notorious and known to Opposer. Applicant also owned
`
`now expired Registration No. 3802636 which was filed on October 19, 2009 and issued
`
`on June 15, 2010. This earlier registration identified the same mark ROKKER and the
`
`same goods: “clothing, namely, jeans, hooded sweatshirts, long sleeve and short sleeve
`
`shirts, tank tops, jackets, jackets made of leather, socks, vests, underwear; footwear;
`
`headgear, namely, trucker caps baseball caps, skull caps, beanies” in International Class
`
`025, and “leather and imitations of leather, goods made of these materials not included in
`
`other classes, namely, leather cases, traveling bags, backpacks, harness and saddlery” in
`
`International Class 018 as the present application Serial No. 87/872379. See Ex. 1.
`
`Therefore, this earlier registration was filed and issued subsequent to the registration of
`
`Opposer’s asserted Registration Nos. 3,666,800 and 3,666,841. Opposer failed to take
`
`meaningful action to assert the claims on which it bases this Opposition, on which
`
`
`
`6
`
`

`

`inaction Applicant has relied to its detriment. Opposer’s claims are consequently barred
`
`by the doctrines of laches, acquiescence and estoppel.
`
`3. Opposer was aware of Applicant in October 2010 when Opposer’s European
`
`counsel contacted Applicant requesting that Applicant cease and desist from using its
`
`ROKKER mark in the European Union and the United States. Opposer failed to take
`
`meaningful action to assert the claims on which it bases this Opposition, on which
`
`inaction Applicant has relied to its detriment. Opposer’s claims are consequently barred
`
`by the doctrines of laches, acquiescence and estoppel.
`
`4. The term ROCKERS shown in Opposer’s mark is descriptive, weak and entitled
`
`to a narrow scope of protection. Opposer, which is located in the United Kingdom, has
`
`asserted that its mark is “[r]ooted in the 1950’s leather/biker movement,” and that its
`
`“overall brand identity as being the most famous motor café in the world.” Opp. ¶¶12,
`
`16. Opposer further states that its locations “all feature a motorcycle theme and are
`
`designed to cater to motorcyclists and motorists.” Opp. ¶5.
`
`5. According to Wikipedia, the term “‘rockers’ was a common term “popular in the
`
`1960’s in England … Rockers ... and possibly café racers are members of a biker
`
`subculture that originated in the United Kingdom during the 1950’s.” See WIKIPEDIA,
`
`Ex. 2. The term “rocker” became known as a style of fashion “[f]irst seen in the United
`
`States and then England, the rocker fashion style was born out of necessity and
`
`practicality. Rockers wore heavily decorated leather motorcycle jackets, often adorned
`
`with metal studs, patches, pin badges.” See id. (emphasis added). Other common items
`
`included t-shirts, leather caps, jeans, leather trousers, tall motorcycle boots. See id.
`
`“Rockers have continued to wear leather motorcycle jackets, often adorned with patches,
`
`
`
`7
`
`

`

`studs, spikes and painted artwork; jeans or leather trousers; and white silk scarves.” See
`
`id. The term “rockers” is synonymous with “bikers”. THE FREE DICTIONARY, EX. 3
`
`(“bikers, rockers” defined as “originally a British youth subculture that evolved out of the
`
`teddy boys in the 1960’s; wore black leather jackets and jeans and boots; had greased hair
`
`and rode motorcycles and listened to rock’n’roll”); see also, OXFORD DICTIONARIES
`
`(rocker is defined as “A young person, especially in the 1960s, belonging to a subculture
`
`characterized by leather clothing, riding motorcycles, and a liking for rock music”);
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`COLLINS DICTIONARY (rocker is defined as “an adherent of a youth movement rooted in
`
`the 1950’s characterized by motorcycles trappings”), attached as Ex. 4.
`
`6. Opposer is using the term ROCKER as synonymous with “biker” as defined to
`
`refer to a biker subculture and fashion style and to market its products motorcyclists and
`
`motorists. As such, the term ROCKERS as used by Opposer describes the goods to
`
`which it relates and “identifies a group to whom the applicant directs its goods or services
`
`is merely descriptive.” See 15 U.S.C. §1052(e)(1); TBMP 1209.03(i). Therefore,
`
`Opposer’s mark is descriptive and, as such, is weak and entitled to a narrow scope of
`
`protection.
`
`7. The term ROCKERS shown in Opposer’s mark is common, weak and entitled to a
`
`narrow scope of protection. Opposer’s own admissions in the prosecution of its parent
`
`application Serial No. 78/624587 (issued as Registration Nos. 3,666,800 and 3,666,841)
`
`confirm the weakness of the term ROCKERS. See Ex. 5, Serial No. 78/624587, Office
`
`Action Response dated January 21, 2009. When responding to the office action that
`
`refused registration based on a likelihood of confusion with four pending and registered
`
`marks that contained the term ROCKER(S) in Classes 14 and 25, Opposer stated that
`
`
`
`8
`
`

`

`“the use of the ROCKERS wording at the beginning of the marks has been used
`
`repeatedly in relation to Classes 14 and 25 and consequently, is not entitled to a broad
`
`protections [sic].” Also, “the term ROCKERS is weakened by its prevalence among
`
`other marks. There are currently at least 5 active trademark registrations and pending
`
`applications for marks that include the term ROCKER/S or a phonetic equivalent at the
`
`beginning of the mark for related goods.” See id. Therefore, Opposer admitted the
`
`weakness of the term ROCKERS in its mark based on the common use of the term in
`
`third party marks.
`
`8. The term ROCKERS shown in Opposer’s mark is common, weak and entitled to a
`
`narrow scope of protection. In its Response to the Office Action of January 21, 2009,
`
`Opposer argued that five active third party marks that include the term ROCKER/S or a
`
`phonetic equivalent was enough to proclaim the term ROCKERS weakened and entitled
`
`to a more narrow scope of protection. See id. Currently, there are 24 active published or
`
`allowed applications and registrations that include the term ROCKER(S) or a phonetic
`
`equivalent (excluding Opposer’s registrations and Applicant’s pending application). See
`
`chart below and TSDR pages, Ex. 6. Therefore, pursuant to Opposer’s own arguments,
`
`the 24 active third party marks noted below and attached are more than sufficient to
`
`establish that the term ROCKERS shown in Opposer’s mark is common, weak and
`
`entitled to a narrow scope of protection.
`
`TM/RN/Disclaimer
`
`1. WWW.ROKER. COM
`RN: 2325118
`
`
`Goods
`(Int'l Class: 21) mugs
`(Int'l Class: 25) clothing, namely, shirts
`and hats
`
`2. ROCKERS IT'S
`DANGEROUS
`(Stylized)
`
`
`(Int'l Class: 25)
`clothing, namely, scarves, shirts, t-shirts,
`under shirts, night shirts, rugby shirts, polo
`shirts, cardigans, jerseys, uniforms, pants,
`
`Owner
`Al Roker
`Productions, Inc.
`
`
`Blue Sun Film
`Company
`
`
`
`
`9
`
`

`

`
`
`TM/RN/Disclaimer
`
`
`
`
`RN: 3363177
`
`
`
`3. MINI BEAT POWER
`ROCKERS
`SN: 87726376
`Allowed
`
`Owner
`
`Discovery
`Communications,
`LLC
`
`Goods
`trousers, slacks, jeans, denim jeans,
`overalls, coveralls, jumpers, gym suits,
`shorts, boxer shorts, tops, crop tops, tank
`tops, halter tops, sweat shirts, sweat shorts,
`sweat pants, wraps, warm-up suits, jogging
`suits, track suits, blouses, skirts, dresses,
`gowns, sweaters, vests, fleece vests,
`pullovers, snow suits, parkas, capes,
`anoraks, ponchos, jackets, reversible
`jackets, coats, blazers, suits, turtlenecks,
`cloth ski bibs, swim wear, beachwear,
`tennis wear, surf wear, ski wear, infant and
`toddler one piece clothing, baby bibs not of
`paper, cloth diapers, caps, swim caps,
`berets, beanies, hats, visors, headbands,
`wrist bands, sweat bands, headwear, ear
`muffs, aprons, scarves, bandanas, belts,
`suspenders, neckwear, ties, neckerchiefs,
`ascots, underwear, briefs, swim and
`bathing trunks, bras, panties, teddies,
`singlets, socks, loungewear, robes,
`underclothes, pajamas, sleepwear,
`nightgowns, lingerie, camisoles, negligees,
`chemises, chemisettes, slips, sarongs, leg
`warmers, hosiery, pantyhose, body
`stockings, knee highs, leggings, tights,
`leotards, body suits, unitards, body shapers,
`gloves, mittens, footwear, shoes, sneakers,
`boots, galoshes, sandals, flip flops, slippers
`and rainwear
`
`(Int'l Class: 18)
`Bags, namely, duffle bags, fanny packs,
`waist packs, handbags, wallets, messenger
`bags, luggage, diaper bags, sport bags,
`backpacks, school bags, fanny pack and
`waist pack; beach bags, gym bags,
`pocketbooks; carrying cases; purses;
`wallets; passport holders, umbrellas,
`money holders, reusable collapsible
`shopping bags, luggage straps, luggage
`tags, suitcases, travelling bags and luggage;
`leashes for animals; baby carriers; baby
`slings; back frames for carrying children;
`clothes for animals; collars for animals;
`diaper bags
`
`4. MINI BEAT POWER
`ROCKERS
`
`(Int'l Class: 25)
`clothing, namely, t-shirts, sweatshirts,
`
`Discovery
`Communications,
`
`
`
`10
`
`

`

`
`
`TM/RN/Disclaimer
`SN: 87726410
`Allowed
`
`5. LILROCKERZ
`SN: 88097567
`Published
`
`6. ROCKERS
`RN: 2278251
`
`7. ROCKERS FOR
`WALKERS
`RN: 1575088
`Disclaimer:
`"WALKERS"
`
`Goods
`sweatsuits, sweatpants, tops, jerseys, vests,
`shirts, tank tops, shorts, pants, sweaters,
`jogging suits, body suits, ponchos, blazers,
`jackets, coats, scarves, gloves, snow suits,
`wrist bands, sleepwear, robes, socks,
`underwear, leggings, leotards, belts,
`blouses, dresses, skirts, vests, swimwear,
`cover-ups, rainwear, namely, raincoats,
`rain hats, rain boots; headwear, namely,
`hats, caps, headbands; sun visors being
`headwear; footwear, namely, shoes, boots,
`sandals, slippers, sneakers and athletic
`shoes
`
`(Int'l Class: 25)
`Beanies; Gloves; Hats; Jackets; Pants;
`Shirts; Shoes; Shorts; Sweatshirts;
`Undergarments
`
`(Int'l Class: 25)
`footwear
`
`(Int'l Class: 25)
`footwear
`
`
`8. HERO BY ROCKERS
`SN: 87519418
`
`(Int'l Class: 25)
`footwear, namely, shoes
`
`9. ROCKERS
`RN: 1242899
`
`(Int'l Class: 25)
`canvas and non-leather shoes
`
`10. ROCKER GIRL
`RN: 4108157
`Disclaimer: "GIRL"
`
`11. ARCHROCKER
`RN: 3845254
`
`
`12. SOUL ROCKER
`RN: 4967200
`
`
`(Int'l Class: 25)
`tops
`
`
`(Int'l Class: 25)
`footwear
`
`
`(Int'l Class: 25)
`clothing, namely, shirts, shoes, hats, jeans,
`jackets, pants, and underwear
`
`13. DUSTY ROCKER
`BOOTS
`RN: 4461499
`Disclaimer: "ROCKER
`BOOTS"
`
`(Int'l Class: 25)
`boots
`
`
`
`
`11
`
`Owner
`LLC
`
`
`Lilrockerz,
`Anthony Tabacco
`- Usa
`
`
`Strategic Partners,
`Inc.
`
`Strategic Partners,
`Inc.
`
`
`Strategic Partners,
`Inc.
`
`Strategic Partners,
`Inc.
`
`All Access
`Apparel, Inc.
`
`
`American Sporting
`Goods
`Corporation
`
`Axion Seven, Inc.
`
`
`Dusty Rocker
`Boots, LLC
`
`
`

`

`TM/RN/Disclaimer
`
`14. ROCKER REGGAE
`RN: 4347143
`
`
`
`Owner
`Karlovic, Alsiona
`
`
`Goods
`(Int'l Class: 25)
`wearing apparel, clothing, and clothing
`accessories, namely, bathing suits, bathing
`trunks, beach coverups, beachwear, belts,
`shorts, bikinis, blouses, bottoms, jackets,
`dresses, tops, halter tops, jackets, skirts,
`nightshirts, sarongs, scarves, shawls, shirts,
`jogging suits, sweatsuits, sweaters, swim
`trunks, swimwear, swimsuits, short-sleeved
`and long-sleeved t-shirts, tank tops, wrist
`sweatbands, and headwear, namely,
`bandannas, headbands, hats, hoods, head
`sweatbands, and caps, head scarves
`
`15. ROCKERTYPE and
`Design
`
`RN: 5642119
`
`
`
`(Int'l Class: 18)
`Leather accessories, namely, bags and
`wallets
`
`
`Mac and Lou, Inc.
`
`
`16. RED ROCKER
`RN: 2954062
`
`(Int'l Class: 25)
`clothing, namely, shirts, t-shirts, tank tops,
`
`Red Head, Inc.
`
`
`17. R RED ROCKER and
`Design
`
`(Int'l Class: 25)
`shorts, shirts, t-shirts, tanktops
`
`
`Red Head, Inc.
`
`RN: 2477358
`
`
`
`18. ROCKER 27 TRIBUTE
`WEAR and Design
`
`
`(Int'l Class: 25)
`bandanas; caps; jackets; sweat shirts; t-
`shirts; tank-tops
`
`
`Rocker, Mike
`
`
`
`
`RN: 4315859
`Disclaimer: "WEAR"
`
`19. ROCKERSNYC
`RN: 4865148
`
`(Int'l Class: 25)
`short-sleeved or long-sleeved t-shirts
`
`Rockers Nyc
`Clothing LLC
`
`20. WEROCKER
`RN: 4895750
`
`
`
`(Int'l Class: 18)
`all-purpose carrying bags; alpenstocks;
`baby carrying bags; backpacks; canes;
`clothing for animals; costumes for animals;
`handbags; knapsacks; rucksacks; saddle
`belts; school bags; traveling bags;
`
`Shenzhen Xinghuo
` Guanghua Electro
`nic Commerce Co.
`, LTD
`
`
`
`
`12
`
`

`

`
`
`TM/RN/Disclaimer
`
`Goods
`travelling trunks; umbrellas; wallets
`
`Owner
`
`South Dakota
`School of Mines &
`Technology
`
`
`Thompson,
`Nichola
`
`Tieguys.Com, Inc.
`
`
`V.P. Music Group,
`Inc., Dba Vp
`Records
`
`
`21. HARDROCKERS
`RN: 3075381
`
`
`
`(Int'l Class: 25)
`clothing, namely, caps, jackets, shirts,
`sweat pants, sweat shirts, t-shirts, sweaters,
`tank tops, polo shirts, rugby shirts,
`turtlenecks, jerseys, blazers, ties, shorts,
`jeans, jackets, and infantwear
`(Int'l Class: 41)
`educational and entertainment services,
`namely, providing courses of instruction at
`the university level, educational research;
`arranging and conducting athletic events
`and competitions, exhibitions, conferences,
`live performances, and student and alumni
`activities and organizations; computer
`services, namely, providing a website
`featuring information regarding university
`alumni activities and the university in
`general
`
`22. KNICKEROCKER
`RN: 4353964
`
`(Int'l Class: 25)
`lingerie; sleepwear
`
`23. THREE ROOKER
`RN: 5318829
`SN: 87357136
`
`(Int'l Class: 25)
`neckties
`
`
`24. DUB ROCKERS
`RN: 4709765
`
`
`
`
`
`
`
`(Int'l Class: 09)
`pre-recorded phonograph records,
`cassettes, cds, dvds, and vinyl records
`featuring musical sound recordings; audio-
`visual recordings, namely, dvds of musical
`performances and music-related
`entertainment; downloadable audio sound
`recordings and audio-visual recordings
`featuring music, musical performances, and
`music-related entertainment
`(Int'l Class: 25)
`clothing and apparel, namely, shirts, t-
`shirts, tank tops, sweatshirts, pullovers,
`jackets, caps, and hats
`(Int'l Class: 41)
`entertainment services in the nature of live
`entertainment and musical performances;
`planning and arrangement of live musical
`performances; audio and video recording
`and production services; music production
`services
`
`13
`
`

`

`
`
`COUNTERCLAIM TO CANCEL REGISTRATIONS NOS. 3,666,800 IN
`CLASSES 14 AND 25 AND 3,666,841 IN CLASS 26
`
`Applicant repeats and re-alleges each and every allegation set forth in the
`
`1.
`
`foregoing paragraphs as if fully set forth herein.
`
`2.
`
`Applicant, Rokker Lizenz GmbH c/o SVF Treuhand GmbH, believes that
`
`it is and will continue to be damaged by Opposer’s Registration No. 3,666,800 in Classes
`
`14 and 25 and Registration No. 3,666,841 for Class 26. Applicant hereby seeks
`
`cancellation of Opposer’s Registration Nos. 3,666,800 and 3,666,841 for the
`
`aforementioned classes.
`
`3.
`
`Opposer filed its application Serial No. 78/624587 on May 6, 2005.
`
`Application Serial No. 78/624587 was divided on March 4, 2009 into a parent application
`
`78/624587 in Classes 14 and 25 and child application Serial No. 78/980870 in Classes 6,
`
`16, 21, 26, 41, and 43. Serial No. 78/624587 issued as Registration No. 3,666,800 and
`
`Serial No. 78/980870 issued as Registration No. 3,666,841. See Opp. Exs, 1 and 2.
`
`4.
`
`Applicant’s date of first use in the United States of its mark in the United
`
`States is 2008. Applicant currently sells its ROKKER clothing through U.S. distributors.
`
`5.
`
`Applicant filed application Serial No. 87/872379 on April 11, 2018.
`
`Applicant’s application was published on September 11, 2018. Opposer filed its Notice
`
`of Opposition against Applicant’s application on January 9, 2019.
`
`COUNT I: FRAUD IN THE PROCUREMENT
`OF OPPOSER’S REGISTRATIONS
`
`
`
`6.
`
`During the prosecution of Opposer’s underlying parent application Serial
`
`No. 78/624587, the Examining Attorney requested that Opposer “state whether the
`
`wording ‘ROCKERS’ has any significance in the relevant trade or industry or as applied
`
`
`
`14
`
`

`

`to the goods and services.” See Office Action dated December 14, 2005, Ex. 7.
`
`7.
`
`In its Response, Opposer stated that the term “‘rockers’ suggests an
`
`adherent of a youth movement in England rooted in the 1950s characterized by
`
`motorcycle trappings and an affinity for rock-and-roll music. Other than to suggest a
`
`connection to a cultural phenomenon ‘across the pond’ from some 50 years ago, the term
`
`has no known meaning.” See Serial No. 78/624587, Office Action Response dated
`
`June 13, 2006, Ex. 8.
`
`8.
`
`Opposer failed to advise the Examining Attorney that the term
`
`“ROCKER” in its mark was synonymous with “biker” and that Opposer intended to use
`
`the term in its common dictionary meaning to refer to a biker subculture and a fashion
`
`style and to market its products to motorcyclists and motorists. The term ROCKERS as
`
`used by Opposer describes the goods to which it relates and “identifies a group to whom
`
`the applicant directs its goods or services is merely descriptive.” See 15 U.S.C.
`
`§1052(e)(1); TBMP 1209.03(i); see also Ex. 8, evidentiary material submitted with
`
`June 3, 2006 Response.
`
`9.
`
`Opposer’s misleading statement on the significance of the term
`
`“ROCKER” to the Examining Attorney was material to the Examining Attorney’s review
`
`of the application and caused the Examining Attorney to approve the application.
`
`10.
`
`Opposer is from the United Kingdom where the “movement” first took
`
`place; therefore, Opposer had full knowledge of the common use of the term “rockers” to
`
`refer to a biker subculture and a fashion style. Further, Opposer had full knowledge that
`
`it intended to market its products to motorcyclists and motorists.
`
`11.
`
`Opposer knew that its representation alleging a lack of significance of the
`
`
`
`15
`
`

`

`term ROCKERS in Opposer’s marks was false and made the false statements knowingly
`
`with the intent to deceive the U.S. Patent and Trademark Office into issuing the
`
`Registration No. 3,666,800 and 3,666,841.
`
`12.
`
`The U.S. Patent and Trademark Office reasonably relying upon the truth
`
`of said false statements would not have issued the Registration No. 3,666,800 and
`
`3,666,841, but for Opposer’s false and material statements regarding the significance of
`
`the term ROCKERS in Opposer’s marks.
`
`13.
`
`Registrant’s actions in the procurement of Registration No. 3,666,800 and
`
`3,666,841 constitute fraud, thereby invalidating Registration No. 3,666,800 and
`
`3,666,841.
`
`COUNT II: FRAUD IN THE MAINTENANCE OF
`OPPOSER’S REGISTRATIONS
`
`Opposer’s Registrations Nos. 3,666,800 and 3,666,841 were issued based
`
`14.
`
`on its European Registration under Section 44(e) without showing any evidence of actual
`
`use of the mark ROCKERS in the United States. See Opp., Ex. 1.
`
`15.
`
`Upon information and belief, Opposer did not use its ROCKERS mark in
`
`commerce in the United States on or in connection with the sale of the goods listed in its
`
`registrations prior to 2017.
`
`16.
`
`Upon information and belief, Opposer’s marks were not in use in the
`
`United States at the time the Registrations were issued. In its Response filed on June 13,
`
`2006 during the examination of the applications, Opposer directed the Examiner to “its
`
`web page promoting a number of its goods and services in the United Kingdom, the
`
`Applicant’s home country, … its ACE Café catalogue as shown on line, … and
`
`photographs of some of its ACE CAFÉ branded goods, … which are representative of the
`
`
`
`16
`
`

`

`proposed use of the ROCKERS (stylized) mark in the United States.” See Ex. 8, Serial
`
`No. 78/624587, Office Action Response dated J