Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1290881
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`Filing date:
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`06/12/2023
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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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`91284737
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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
`SAC Health System
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`CANDICE E. KIM
`GREENBERG TRAURIG, LLP
`1840 CENTURY PARK EAST, SUITE 1900
`LOS ANGELES, CA 90067
`UNITED STATES
`Primary email: gtipmail@gtlaw.com
`Secondary email(s): candice.kim@gtlaw.com, lanej@gtlaw.com
`No phone number provided
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`Answer
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`Irene Chen
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`irene.chen@gtlaw.com, candice.kim@gtlaw.com, jeremy.lane@gtlaw.com, gtip-
`mail@gtlaw.com
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`/ic/
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`06/12/2023
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`Answer to American Red Cross Opposition No. 91284737 re Ser. No. 9722
`8096.pdf(177679 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`THE AMERICAN NATIONAL RED CROSS,
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`Opposer,
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`v.
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`SAC HEALTH SYSTEM,
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`Applicant.
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`Opposition No.: 91-284,737
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`Mark:
`Application Ser. No.: 97/228,096
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`ANSWER TO NOTICE OF OPPOSITION
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`Applicant SAC Health System (cid:523)the (cid:498)Applicant(cid:499)(cid:524), by and through its undersigned counsel,
`responds to Opposer The American National Red Cross (cid:523)the (cid:498)Opposer(cid:499)(cid:524) Notice of Opposition as set
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`forth below. Unless expressly admitted, Applicant denies each and every allegation contained in the
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`Notice of Opposition.
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`1.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 1 and therefore denies the same.
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`2.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 2 and therefore denies the same.
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`3.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 3 and therefore denies the same.
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`4.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 4 and therefore denies the same.
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`5.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 5 and therefore denies the same.
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`1
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`6.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 6 and therefore denies the same.
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`7.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 7 and therefore denies the same.
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`8.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 8 and therefore denies the same.
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`9.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 9 and therefore denies the same.
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`10.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 10 and therefore denies the same.
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`11.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 11 and therefore denies the same.
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`12.
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`The TMEP speaks for itself.
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`13.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 13 and therefore denies the same.
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`14.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 14 and therefore denies the same.
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`15.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 15 and therefore denies the same.
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`16.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 16 and therefore denies the same.
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`17.
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`Admitted.
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`18.
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`Admitted.
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`2
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`19.
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`Applicant admits that the Opposed Application was published for opposition on January
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`3, 2023. Applicant lacks knowledge or information sufficient to form a belief about the truth of the
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`remaining allegations of Paragraph 19 and therefore denies the same.
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`20.
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`Admitted.
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`21.
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`22.
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`Applicant incorporates by reference all responses in each of the preceding paragraphs.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 22 and therefore denies the same.
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`23.
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`The TMEP speaks for itself. Applicant lacks knowledge or information sufficient to form
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`a belief about the truth of the remaining allegations of Paragraph 23 and therefore denies the same.
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`24.
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`Admitted.
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`25.
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`The TMEP speaks for itself. Applicant denies that the Opposed Application shows use
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`of Applicant’s Mark that primarily consists of or includes a Greek cross in red which in no way alters
`or merges the mark. Applicant’s Mark contains a cross that is significantly altered, stylized, and merged
`with other elements in the mark, namely, Applicant’s Mark consists of heart design that is dominantly
`visible. Additionally, Applicant’s Mark features the large words (cid:498)SAC (EALT((cid:499) with the design.
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`at the center of a cross so that the cross is clearly in the background and the center of the cross is not
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of the remaining
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`allegations of Paragraph 25 and therefore denies the same.
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`26.
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`27.
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`Applicant denies the allegations of Paragraph 26.
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`Applicant denies the allegations of Paragraph 27.
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`Applicant incorporates by reference all responses in each of the preceding paragraphs.
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`28.
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`29.
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`Applicant denies the allegations of Paragraph 29. Applicant’s Mark contains a cross that
`is significantly altered, stylized, and merged with other elements in the mark, namely, Applicant’s Mark
`background and the center of the cross is not visible. Additionally, Applicant’s Mark features the large
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`consists of heart design that is dominantly at the center of a cross so that the cross is clearly in the
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`3
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`has not done for the past 10 years) and will not falsely suggest to consumers a connection with the
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`30.
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`Admitted.
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`31.
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`words (cid:498)SAC (EALT((cid:499) with the design. As such, use and registration of Applicant’s Mark does not (as it
`American Red Cross and the American Red Cross’s Marks within the meaning of 15 U.S.C. § 1052(a).
`Applicant denies the allegations of Paragraph 31. Applicant’s Mark contains a cross that
`is significantly altered, stylized, and merged with other elements in the mark, namely, Applicant’s Mark
`background and the center of the cross is not visible. Additionally, Applicant’s Mark features the large
`words (cid:498)SAC (EALT((cid:499) with the design. As such, Applicant’s use and registration of Applicant’s Mark
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`consists of heart design that is dominantly at the center of a cross so that the cross is clearly in the
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`does not (as it has not done for the past 10 years) and will not suggest a connection with the American
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`Red Cross within the meaning of Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
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`32.
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`33.
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`Applicant incorporates by reference all responses in each of the preceding paragraphs.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 33 and therefore denies the same.
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`34.
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`35.
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`Applicant denies the allegations of Paragraph 34.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 35 and therefore denies the same.
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`36.
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`consists of heart design that is dominantly at the center of a cross so that the cross is clearly in the
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`Applicant denies the allegations of Paragraph 36. Applicant’s Mark contains a cross that
`is significantly altered, stylized, and merged with other elements in the mark, namely, Applicant’s Mark
`background and the center of the cross is not visible. Additionally, Applicant’s Mark features the large
`words (cid:498)SAC (EALT((cid:499) with the design. As such, a potential consumer would not be confused or
`mistaken or deceived as to the source of the parties’ respective goods and services under Section 2(cid:523)d(cid:524)
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`of the Lanham Act, as amended, 15 U.S.C. § 1052(d).
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`37.
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`Applicant incorporates by reference all responses in each of the preceding paragraphs.
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`4
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`38.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 38 and therefore denies the same.
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`39.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 39 and therefore denies the same.
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`40.
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`Applicant lacks knowledge or information sufficient to form a belief about the truth of
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`the allegations of Paragraph 40 and therefore denies the same.
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`41.
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`Applicant denies the allegations of Paragraph 41.
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`Applicant denies the allegations of Paragraph 42.
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`42.
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`43.
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`Applicant denies the allegations of Paragraph 43. Applicant’s Mark contains a cross that
`is significantly altered, stylized, and merged with other elements in the mark, namely, Applicant’s Mark
`background and the center of the cross is not visible. Additionally, Applicant’s Mark features the large
`words (cid:498)SAC (EALT((cid:499) with the design. As such, Applicant’s Mark does not (as it has not done for the
`past 10 years) and will not dilute the distinctive quality of the American Red Cross’s famous Red Cross
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`consists of heart design that is dominantly at the center of a cross so that the cross is clearly in the
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`Emblem mark under Section 43(c) of the Lanham Act, as amended, 15 U.S.C. § 1125(c).
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`Applicant denies Opposer is entitled to the requested relief.
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`WHEREFORE, Applicant contends that the Notice of Opposition is without grounds and
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`requests judgment denying the Notice of Opposition in its entirety.
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`//
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`//
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`5
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`Dated: June 12, 2023
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`GREENBERG TRAURIG, LLP
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`By:
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`Candice E. Kim
`Irene Chen
` 1840 Century Park East, Suite 1900
` Los Angeles, California 90067
` Tel: (310) 586-3867
` Fax: (310) 586-0567
` candice.kim@gtlaw.com;
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`irene.chen@gtlaw.com;
` GTIPMAIL@gtlaw.com
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`Attorneys for Applicant SAC Health System
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing ANSWER TO
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`NOTICE OF OPPOSITION is being served, via electronic mail, upon the following on the date indicated
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`below:
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`Date: June 12, 2023
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`Allison Leader
`THE AMERICAN NATIONAL RED CROSS
`431 18TH STREET, NW
`WASHINGTON, DC 20006
`UNITED STATES
`trademarks@redcross.org
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`Irene Chen
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`7
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