Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA971441
`
`Filing date:
`
`05/04/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91246388
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Naked Whey Inc.
`
`HEATHER A. ANTOINE
`STUBBS ALDERTON & MARKILES, LLP
`15260 VENTURA BLVD., 20TH FL.
`SHERMAN OAKS, CA 91403
`UNITED STATES
`hantoine@stubbsalderton.com, hcory@stubbsalderton.com,
`uspto@stubbsalderton.com
`8184446353
`
`Answer to Counterclaim
`
`Heather A. Antoine
`
`hantoine@stubbsalderton.com, hcory@stubbsalderton.com,
`uspto@stubbsalderton.com
`
`/Heather Antoine/
`
`05/04/2019
`
`2019.05.04 - Naked Whey v McCarrell Fitness - Answer to Counter-
`claim.pdf(181742 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA971441
`
`Filing date:
`
`05/04/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91246388
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Naked Whey Inc.
`
`HEATHER A. ANTOINE
`STUBBS ALDERTON & MARKILES, LLP
`15260 VENTURA BLVD., 20TH FL.
`SHERMAN OAKS, CA 91403
`UNITED STATES
`hantoine@stubbsalderton.com, hcory@stubbsalderton.com,
`uspto@stubbsalderton.com
`8184446353
`
`Answer to Counterclaim
`
`Heather A. Antoine
`
`hantoine@stubbsalderton.com, hcory@stubbsalderton.com,
`uspto@stubbsalderton.com
`
`/Heather Antoine/
`
`05/04/2019
`
`2019.05.04 - Naked Whey v McCarrell Fitness - Answer to Counter-
`claim.pdf(181742 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Applicant Serial No. 87/648,265
`Published in the Official Gazette on October 16, 2018
`
`NAKED WHEY, INC.,
`
`Opposer,
`
`Opposition No. 91246388
`
`
`Serial No. 87/648,265
`TRADEMARK: LOOK GOOD NAKED
`
`
`
`v.
`
`
`
`
`MCCARRELL FITNESS COMPANIES, LLC,
`
`
`Applicant.
`
`
`
`
`
`
`ANSWER AND AFFIRMATIVE DEFENSES OF NAKED WHEY, INC.
`
`
`Opposer, Naked Whey, Inc. (“Opposer” or “Naked”), by and through its counsel,
`
`hereby Answers the Counterclaim (the “Counterclaim”) filed by Applicant, McCarrell
`
`Fitness Companies, LLC (“Applicant” or “McCarrell”) as follows. To the extent not
`
`explicitly admitted, all allegations in the Counterclaim are denied.
`
`COUNTERCLAIM
`
`1.
`
`Opposer admits that Applicant has filed the instant counterclaim seeking
`
`cancellation.
`
`2.
`
`Opposer admits that it has filed a number of pending trademark
`
`applications.
`
`3.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 3 and, on that basis, denies them.
`
`
`
`1
`
`
`
`4.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 4 and, on that basis, denies them
`
`5.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 5 and, on that basis, denies them
`
`FIRST CLAIM FOR CANCELLATION
`
`6.
`
`In answer to the allegations set forth in Paragraph 6, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`7.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`8.
`
`9.
`
`Admit.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`10.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`11.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`12.
`
`Deny.
`
`13.
`
`Deny.
`
`14.
`
`Deny.
`
`15.
`
`Deny.
`
`16.
`
`Deny.
`
`///
`
`
`
`2
`
`
`
`SECOND CLAIM FOR CANCELLATION
`
`17.
`
`In answer to the allegations set forth in Paragraph 17, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`18.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`19.
`
`Admit.
`
`20.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`21.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`22.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`23.
`
`Deny.
`
`24.
`
`Deny.
`
`25.
`
`Deny.
`
`26.
`
`Deny.
`
`27.
`
`Deny.
`
`THIRD CLAIM FOR CANCELLATION
`
`28.
`
`In answer to the allegations set forth in Paragraph 28, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`
`
`3
`
`
`
`29.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`30.
`
`Admit.
`
`31.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`32.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`33.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`34.
`
`Deny.
`
`35.
`
`Deny.
`
`36.
`
`Deny.
`
`37.
`
`Deny.
`
`38.
`
`Deny.
`
`39.
`
`Deny.
`
`FOURTH CLAIM FOR CANCELLATION
`
`40.
`
`In answer to the allegations set forth in Paragraph 40, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`41.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`42.
`
`Admit.
`
`
`
`4
`
`
`
`43.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`44.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`45.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`46.
`
`Deny.
`
`47.
`
`Deny.
`
`48.
`
`Deny.
`
`49.
`
`Deny.
`
`50.
`
`Deny.
`
`51.
`
`Deny.
`
`FIFTH CLAIM FOR CANCELLATION
`
`52.
`
`In answer to the allegations set forth in Paragraph 52, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`53.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`54.
`
`Admit.
`
`55.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`56.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`
`
`5
`
`
`
`57.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`58.
`
`Deny.
`
`59.
`
`Deny.
`
`60.
`
`Deny.
`
`61.
`
`Deny.
`
`62.
`
`Deny.
`
`63.
`
`Deny.
`
`SIXTH CLAIM FOR CANCEALLTION
`
`64.
`
`In answer to the allegations set forth in Paragraph 64, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`65.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`66.
`
`Admit.
`
`67.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`68.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`69.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`70.
`
`Deny.
`
`71.
`
`Deny.
`
`
`
`6
`
`
`
`72.
`
`Deny.
`
`73.
`
`Deny.
`
`74.
`
`Deny.
`
`75.
`
`Deny.
`
`SEVENTH CLAIM FOR CANCEALLATION
`
`76.
`
`In answer to the allegations set forth in Paragraph 40, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`77.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`78.
`
`Admit.
`
`79.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`80.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`81.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`82.
`
`Deny.
`
`83.
`
`Deny.
`
`84.
`
`Deny.
`
`85.
`
`Deny.
`
`86.
`
`Deny.
`
`87.
`
`Deny.
`
`
`
`7
`
`
`
`EIGTH CLAIM FOR CANCEALLTION
`
`88.
`
`In answer to the allegations set forth in Paragraph 88, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`89.
`
`Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`90.
`
`Admit.
`
`91.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`92.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`93.
`
`Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`94.
`
`Deny.
`
`95.
`
`Deny.
`
`96.
`
`Deny.
`
`97.
`
`Deny.
`
`98.
`
`Deny.
`
`99.
`
`Deny.
`
`NINTH CLAIM FOR CANCELLATION
`
`100.
`
`In answer to the allegations set forth in Paragraph 40, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`
`
`8
`
`
`
`101. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`102. Admit.
`
`103. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`104. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`105. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`106. Deny.
`
`107. Deny.
`
`108. Deny.
`
`109. Deny.
`
`110. Deny.
`
`111. Deny.
`
`112. Deny.
`
`TENTH CLAIM FOR CANCELLATION
`
`113.
`
`In answer to the allegations set forth in Paragraph 113, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`114. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`115. Admit.
`
`
`
`9
`
`
`
`116. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`117. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`118. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`119. Deny.
`
`120. Deny.
`
`121. Deny.
`
`122. Deny.
`
`123. Deny.
`
`124. Deny.
`
`ELEVENTH CLAIM FOR CANCEALLTION
`
`125.
`
`In answer to the allegations set forth in Paragraph 125, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`126. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`127. Admit.
`
`128. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`129. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`
`
`10
`
`
`
`130. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`131. Deny.
`
`132. Deny.
`
`133. Deny.
`
`134. Deny.
`
`135. Deny.
`
`136. Deny.
`
`TWELFTH CLAIM FOR CANCELLATION
`
`137.
`
`In answer to the allegations set forth in Paragraph 137, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`138. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`139. Admit.
`
`140. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`141. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`142. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`143. Deny.
`
`144. Deny.
`
`
`
`11
`
`
`
`145. Deny.
`
`146. Deny.
`
`147. Deny.
`
`148. Deny.
`
`THIRTEENTH CLAIM FOR CANCELLATION
`
`149.
`
`In answer to the allegations set forth in Paragraph 149, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`150. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`151. Admit.
`
`152. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`153. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`154. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`155. Deny.
`
`156. Deny.
`
`157. Deny.
`
`158. Deny.
`
`159. Deny.
`
`160. Deny.
`
`
`
`12
`
`
`
`FOURTEENTH CLAIM FOR CANCELLATION
`
`161.
`
`In answer to the allegations set forth in Paragraph 161, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`162. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`163. Admit.
`
`164. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`165. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`166. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`167. Deny.
`
`168. Deny.
`
`169. Deny.
`
`170. Deny.
`
`FIFTEENTH CLAIM FOR CANCELLATION
`
`171.
`
`In answer to the allegations set forth in Paragraph 171, Opposer hereby
`
`incorporates by reference each and every repose contained it the above paragraphs as
`
`though fully set forth herein.
`
`172. Opposer admits that Applicant seeks cancellation, however, there is no
`
`merit to that request.
`
`
`
`13
`
`
`
`173. Admit.
`
`174. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 9 and, on that basis, denies them.
`
`175. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 10 and, on that basis, denies them.
`
`176. Opposer lacks knowledge or information sufficient to form a belief as the
`
`truth of the matters alleged in Paragraph 11 and, on that basis, denies them.
`
`177. Deny.
`
`178. Deny.
`
`179. Deny.
`
`180. Deny.
`
`181. Deny.
`
`182. Deny.
`
`WHEREFORE, Opposer respectfully submits that this Counterclaim is not only
`
`groundless and baseless, but a wasteful use of Board resources. Accordingly, Opposer
`
`requests that this Counterclaim be dismissed.
`
`AFFIRMATIVE DEFENSES
`
`Opposer expressly reserves the right to plead additional Affirmative Defenses
`
`and/or other defenses and/or claims should any such be revealed by discovery in this
`
`case. As and for its Affirmative and other defenses, Opposer states as follows:
`
`First Affirmative Defense
`
`Opposer fails to state a claim upon which relief can be granted.
`
`///
`
`
`
`14
`
`
`
`Second Affirmative Defense
`
`
`
` Opposer alleges on information and belief that as a result of opposer’s
`
`own acts and/or omissions, the Counterclaim is barred by the doctrine of laches.
`
`Third Affirmative Defense
`
`Opposer alleges on information and belief that the Counterclaim is barred by the
`
`doctrine of estoppel.
`
`Fourth Affirmative Defense
`
`Opposer alleges on information and belief that as a result of its own acts and
`
`omissions, opposer has waived any right to pursue its Counterclaim.
`
`Fifth Affirmative Defense
`
`Opposer alleges on information and belief that the Counterclaim is barred by the
`
`doctrine of unclean hands.
`
`Sixth Affirmative Defense
`
`
`
`
`
`
`
`///
`
`///
`
`///
`
`///
`
`///
`
`
`
`Applicant does not own any trademark rights to LOOK GOOD NAKED.
`
`Seventh Affirmative Defense
`
`Applicant’s claims are barred by fraud.
`
`15
`
`
`
`WHEREFORE, Opposer requests that the Counterclaim be dismissed with
`
`prejudice, together with whatever relief the Board may deem appropriate.
`
`
`
`Dated: May 4, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Heather Antoine/
`
`Heather A. Antoine
`STUBBS ALDERTON & MARKILES, LLP
`15260 Ventura Blvd., 20th Floor
`Sherman Oaks, CA 91403
`(818) 444-4500
`hantoine@stubbsalderton.com
`Attorney for Opposer
`NAKED WHEY, INC.
`
`
`
`
`
`16
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Heather A. Antoine, hereby certify that a copy of the foregoing ANSWER AND
`
`AFFIRMATIVE DEFENSES was served via First Class Mail and email on the date
`indicated below, to the following:
`
`
`
`
`
`
`
`
`CERTIFICATE OF TRANSMISSION
`
`I, Heather A. Antoine, hereby certify that a copy of the foregoing ANSWER AND
`
`AFFIRMATIVE DEFENSES has be transmitted electronically to the United States Patent
`and Trademark Office on the date indicated.
`
`Dated: May 4, 2019
`
`
`
`
`/Heather Antoine/
`Heather A. Antoine
`
`Justin McNaughton
`Greenspoon Marder LLP
`401 West A Street, Suite 1150
`San Diego, CA 92101
`
`Sharon Urias
`Greenspoon Marder LLP
`2398 E. Camelback Road
`Suite 540
`Phoenix, AZ 85016
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`Dated: May 4, 2019
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`/Heather Antoine/
`Heather A. Antoine
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`17
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