ESTTA Tracking number:
`
`ESTTA1334229
`
`Filing date:
`
`01/16/2024
`
`Proceeding no.
`Party
`
`Correspondence
`address
`
`Submission
`Filer's name
`Filer's email
`Signature
`Date
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91288641
`Defendant
`Llapingacho LLC
`SEAN D. DETWEILER
`MORSE, BARNES-BROWN & PENDLETON, P.C.
`480 TOTTEN POND ROAD, 4TH FLOOR
`WALTHAM, MA 02451
`UNITED STATES
`Primary email: ttab@morse.law
`Secondary email(s): sdetweiler@morse.law, pzacharakis@morse.law
`781-622-5930
`Answer and Counterclaim
`Paige K. Zacharakis
`ttab@morse.law, pzacharakis@morse.law, sdetweiler@morse.law
`/Paige K. Zacharakis/
`01/16/2024
`2024.01.16 Answer to Notice of Opposition Kushki Design Logo.pdf(220093
`bytes )
`
`Registration subject to the submission
`
`Registration date
`
`11/23/2021
`
`Registration no.
`Register
`International re-
`gistration no.
`Registrant
`
`6565422
`Principal
`NONE
`
`NONE
`
`International re-
`gistration date
`KUESKI, S.A.P.I. DE C.V., SOFOM, E.N.R.
`FLOOR 03-15, CIRCUNVALACION AMéRICAS
`AV. AMéRICAS #1297
`GUADALAJARA, JALISCO, 44630
`MEXICO
`Email: ip@vila.com.mx
`
`Goods/services subject to the submission
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are requested, namely: Application service provider (ASP),
`namely, hosting computer software applications of others; Consulting in the field of information tech-
`nology; Development of computer platforms; Information technology consulting services; Platform as
`a service (PAAS) featuring computer software platforms for financial information and financial ser-
`vices; Providing temporary use of on-line non-downloadable software and applications for obtaining
`financial information and financial services; Providing temporary use of on-line non-downloadable
`software for allowing users to access various programs; Software as a service (SAAS) services fea-
`turing software for financial information and financial services
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`

`

`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`05/18/2021
`
`Registration date
`
`6352537
`Principal
`KUESKI, S.A.P.I. DE C.V., SOFOM, E.N.R.
`FLOOR 03-15, CIRCUNVALACION AMéRICAS
`AV. AMéRICAS #1297
`GUADALAJARA, JALISCO, 44630
`MEXICO
`Email: ip@vila.com.mx
`
`Goods/services subject to the submission
`
`Class 036. First Use: None First Use In Commerce: None
`All goods and services in the class are requested, namely: Financing services; Banking and financing
`services; Financial affairs and monetary affairs, namely, financial information, management and ana-
`lysis services
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`05/18/2021
`
`Registration date
`
`6352536
`Principal
`KUESKI, S.A.P.I. DE C.V., SOFOM, E.N.R.
`FLOOR 03-15, CIRCUNVALACION AMéRICAS
`AV. AMéRICAS #1297
`GUADALAJARA, JALISCO, 44630
`MEXICO
`Email: ip@vila.com.mx
`
`Goods/services subject to the submission
`
`Class 036. First Use: None First Use In Commerce: None
`All goods and services in the class are requested, namely: Financing services; Banking and financing
`services; Financial affairs and monetary affairs, namely, financial information, management and ana-
`lysis services
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to the submission
`
`Registration no.
`Register
`Registrant
`
`03/03/2020
`
`Registration date
`
`6000277
`Principal
`KUESKI, S.A.P.I. DE C.V., SOFOM, E.N.R.
`22-01
`AV. ADOLFO LOPEZ MATEOS NTE. #95
`GUADALAJARA, JALISCO, 44648
`MEXICO
`Email: DARIO.COSIO@VILA.COM.MX
`
`

`

`Goods/services subject to the submission
`
`Class 036. First Use: None First Use In Commerce: None
`All goods and services in the class are requested, namely: Financing services
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Marks cited by petitioner as basis for cancellation
`
`U.S. application
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`U.S. application
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`
`Goods/services
`
`90785521
`
`Application date
`
`06/21/2021
`
`Principal
`NONE
`
`KUSHKI
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Class 035. First use: First Use: Feb 28, 2016 First Use In Commerce: Feb 28,
`2016
`Commercial business management
`
`97642440
`
`Principal
`NONE
`
`KUSHKI
`
`Application date
`
`10/21/2022
`
`Foreign priority
`date
`
`NONE
`
`The mark consists of a green circle with a white underlined check mark inside
`followed by the word "KUSHKI." The stem of the K is navy blue. The arm of the
`K is green. The leg of the K is green and extends longer than the stem. The U S
`H K and I are navy blue.
`Class 036. First use: First Use: Feb 28, 2016 First Use In Commerce: Feb 28,
`2016
`Electronic foreign exchange payment processing; Electronic payment services
`involving electronic processing and subsequent transmission of bill payment
`data; Merchant services, namely, payment transaction processing services;
`Providing an internet website portal in the field of financial transaction and pay-
`ment processing services
`Class 042. First use: First Use: Feb 28, 2016 First Use In Commerce: Feb 28,
`2016
`Application service provider (ASP) featuring e-commerce software for use as a
`payment gateway that authorizes processing of credit cards or direct payments
`for merchants; Application service provider featuring application programming
`interface (API) software for accepting and sending payments via credit cards,
`debit cards, wire transfer and cash
`
`U.S. application
`no.
`
`90199163
`
`Application date
`
`09/22/2020
`
`

`

`Register
`Registration date
`
`Principal
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`KUSHKI
`
`NONE
`
`Class 036. First use: First Use: Feb 28, 2016 First Use In Commerce: Feb 28,
`2016
`Electronic foreign exchange payment processing; Electronic payment services
`involving electronic processing and subsequent transmission of bill payment
`data; Merchant services, namely, payment transaction processing services;
`Providing an internet website portal in the field of financial transaction and pay-
`ment processing services
`Class 042. First use: First Use: Feb 28, 2016 First Use In Commerce: Feb 28,
`2016
`Application service provider (ASP) featuring e-commerce software for use as a
`payment gateway that authorizes processing of credit cards or direct payments
`for merchants; Application service provider featuring application programming
`interface (API) software for accepting and sending payments via credit cards,
`debit cards, wire transfer and cash
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 97642440
`
`
`
`For the Mark:
`For Classes: 36, 42
`Filing Date: October 21, 2022
`Published for Opposition: November 7, 2023
`__________________________________________
`
`
`
`
`
`
`
`KUESKI, S.A.P.I. DE C.V., SOFOM, E. N. R.,
`a Mexican Company,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`LLAPINGACHO, LLC,
`
`
`
`A Massachusetts Limited Liability Company,
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`_______________________________________
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No: 91288641
`
`ANSWER, AFFIRMATIVE DEFENSES TO NOTICE OF OPPOSITION, AND
`COUNTERCLAIM
`
`
`
`
`Applicant, Llapingacho, LLC, through its undersigned attorneys, hereby responds to the
`
`Notice of Opposition filed by Kueski, S.A.P.I. DE C.V., SOFOM, E.N.R., and states for its
`
`Answer, with each numbered paragraph of the Answer corresponding to the numbered
`
`paragraphs of the Opposition, as follows:
`
`The introduction section appearing above paragraph 1 in the Notice of Opposition
`
`requires no response because it is merely an introduction that purports to summarize the basis for
`
`the Notice of Opposition. To the extent that a response is required, the Applicant denies the
`
`allegations contained in the introduction section.
`
`

`

`Furthermore, Opposer’s inclusion of footnotes in the Notice of Opposition does not
`
`comply with Federal Rules of Civil Procedure 10(b), which requires that allegations be stated “in
`
`numbered paragraphs, each limited as far as practicable to a single set of circumstances.” As
`
`such, no response is required to the footnotes included in the Notice of Opposition. To the extent
`
`a response is required to a footnote, each footnote is discussed in the relevant numbered
`
`paragraph in which it appears.
`
`1.
`
`Applicant lacks sufficient knowledge and information to form a belief as to the
`
`truth of the allegations of paragraph 1 of the Notice of Opposition and therefore denies the same.
`
`2.
`
`Applicant lacks sufficient knowledge and information to form a belief as to the
`
`truth of the allegations of paragraph 2 of the Notice of Opposition and therefore denies the same.
`
`3.
`
`Applicant states that the documents attached as Exhibit A to the Notice of
`
`Opposition speak for themselves. In stating herein that a document speaks for itself, Applicant is
`
`not independently admitting the accuracy of any term or statement in such a document. To the
`
`extent any allegation contained in paragraph 3 constitutes a conclusion of law, no response is
`
`required. Applicant lacks sufficient knowledge and information to form a belief as to the truth of
`
`the remaining allegations of paragraph 3 of the Notice of Opposition and therefore denies the
`
`same.
`
`4.
`
`Applicant lacks sufficient knowledge and information to form a belief as to the
`
`truth of the allegations of paragraph 4 of the Notice of Opposition and therefore denies the same.
`
`5.
`
`Applicant lacks sufficient knowledge and information to form a belief as to the
`
`truth of the allegations of paragraph 5 of the Notice of Opposition and therefore denies the same.
`
`6.
`
`Applicant admits that it filed an Application to register the mark
`
`
`
`
`4889-5388-5854, v. 1
`
`2
`
`

`

`(Application No. 97642440) on October 21, 2022. To the extent paragraph 6 references a
`
`document (namely Application No. 97642440), said document speaks for itself. Applicant
`
`denies any characterization of Application No. 97642440 contained in paragraph 6 that is
`
`inconsistent with its terms. Applicant denies the remaining allegations in paragraph 6.
`
`7.
`
`8.
`
`9.
`
`Admitted.
`
`Denied.
`
`Denied.
`
`10.
`
`Denied.
`
`11.
`
`Admitted that Applicant was aware of Opposer’s four U.S. Trademark
`
`Registrations as alleged in paragraph 3 of the Notice of Opposition at the time that Application
`
`No. 97642440 was filed. Applicant also admits that it was aware of Opposition No. 91272072
`
`that Opposer filed against Applicant’s Application No. 90199163. Applicant denies the
`
`remaining allegations in paragraph 11.
`
`12.
`
`Admitted.
`
`13.
`
`Applicant admits that Opposition Nos. 91272072 and 91283229 (now
`
`consolidated into Opposition No. 91272072) are still in the discovery period. All remaining
`
`allegations contained in paragraph 13 are denied.
`
`14.
`
`Admitted that Applicant has stated in response to written discovery in Opposition
`
`No. 91272072 that after further investigation into Applicant’s records that are in its present
`
`possession, custody, and control, that the first date of “use”, as that term is defined by the
`
`USPTO, of the mark associated with Application No. 90199163 is at least as early as April 2017,
`
`a date that is after February 28, 2016. No written discovery has been conducted in Opposition
`
`No. 91283229 and therefore that portion of the first sentence of paragraph 14 is denied.
`
`
`4889-5388-5854, v. 1
`
`3
`
`

`

`15.
`
`Applicant admits that, according to the USPTO records, Opposer filed what is
`
`now Registration No. 6,000,277 (for the mark ) on April 22, 2019. To the extent that
`
`paragraph 15 implies that all of the “KUESKI Marks” as that term is defined in the Notice of
`
`Opposition are awarded the April 22, 2019 filing date, such allegation is denied.
`
`16.
`
`Applicant admits that it filed its Application No. 97642440 on October 21, 2022.
`
`The remaining allegations contained in paragraph 16 constitute a legal conclusion to which no
`
`response is required.
`
`17.
`
`The allegations contained in paragraph 17 constitute a legal conclusion to which
`
`no response is required.
`
`18.
`
`To the extent the first sentence of paragraph 18 references documents (namely
`
`Opposer’s Registrations and Applications attached to the Notice of Opposition as Exhibit A),
`
`said document speaks for itself. Applicant denies any characterization of Opposer’s listed goods
`
`and services that are not identical to what is included in the respective Registrations and
`
`Applications. To the extent the second sentence of paragraph 18 references a document (namely
`
`Application No. 97642440), said document speaks for itself. Applicant denies any
`
`characterization of Application No. 97642440 contained in paragraph 18 that is inconsistent with
`
`its terms. The third sentence of paragraph 18 constitutes a legal conclusion to which no response
`
`is required.
`
`19.
`
`The allegations contained in paragraph 19 constitute a legal conclusion to which
`
`no response is required.
`
`20.
`
`The allegations contained in paragraph 20 constitute a legal conclusion to which
`
`no response is required.
`
`21.
`
`Denied.
`
`
`4889-5388-5854, v. 1
`
`4
`
`

`

`22.
`
`Denied.
`
`23.
`
`To the extent paragraph 23 references a document (namely Application No.
`
`97642440), said document speaks for itself. Applicant denies any characterization of
`
`Application No. 97642440 contained in paragraph 23 that is inconsistent with its terms.
`
`24.
`
`Denied.
`
`25.
`
`Denied.
`
`26.
`
`Denied.
`
`27.
`
`The allegations contained in paragraph 27 constitute a legal conclusion to which
`
`no response is required.
`
`28.
`
`The allegations contained in paragraph 28 constitute a legal conclusion to which
`
`no response is required.
`
`29.
`
`The allegations contained in paragraph 29 constitute a legal conclusion to which
`
`no response is required.
`
`AFFIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`Opposer’s claims are barred because Applicant is the senior user.
`
`Second Affirmative Defense
`
`There is no likelihood of confusion because the respective goods and services are
`different.
`
`Third Affirmative Defense
`
`There is no likelihood of confusion because the targeted purchasers are different.
`
`
`
`Fourth Affirmative Defense
`
`
`There is no likelihood of confusion because the marks are completely different in sight,
`
`sound, meaning and commercial impression.
`
`
`
`
`
`4889-5388-5854, v. 1
`
`5
`
`

`

`
`
`
`Fifth Affirmative Defense
`
`
`Opposer’s claims may be barred by additional defenses that may arise or become known
`as this matter progresses and Applicant therefore reserves the right to plead additional
`affirmative defenses upon further investigation and discovery.
`
`Applicant asks that the Notice of Opposition be dismissed and that judgment in favor of
`
`Applicant and against Opposer be entered. Alternatively, Applicant asks that the Board sustain
`
`the below Counterclaim to Cancel Opposer’s Registration Nos. 6,000,277 (design mark for
`
`“Kueski” in Class 36), 6,352,536 (design mark for “KueskiPay” in Class 36) 6,352,537 (standard
`
`character mark for “Kueski Cash” in Class 36), and 6,565,422 (design mark for “Kueski” in
`
`Class 42) (collectively referred to as the “KUESKI Registrations”), as pleaded below. In
`
`addition, Applicant hereby notifies the Board that it will be filing Oppositions to Kueski’s
`
`Application No. 97610700 (standard character mark for “Kueski” in Class 42), Application No.
`
`97610694 (standard character mark for “Kueski” in Class 36), Application No. 97610689
`
`(standard character mark for “Kueski” in Class 35), and Application No. 97610685 (standard
`
`character mark for “Kueski” in Class 9), which have been plead in paragraph 3 of the Notice of
`
`Opposition, within the coming weeks.
`
`COUNTERCLAIM TO CANCEL
`
`Llapingacho, LLC (“Applicant”), a limited liability company organized and existing
`
`under the laws of the Commonwealth of Massachusetts, with a United States principal place of
`
`business in Miami, Florida, believes that it has been and will continue to be damaged by U.S.
`
`Trademark Registration Nos. 6,000,277 (design mark for “Kueski” in Class 36), 6,352,536
`
`(design mark for “KueskiPay” in Class 36), 6,352,537 (standard character mark for “Kueski
`
`Cash” in Class 36), and 6,565,422 (design mark for “Kueski” in Class 42) (collectively referred
`
`
`4889-5388-5854, v. 1
`
`6
`
`

`

`to as the “KUESKI Registrations”), and hereby petitions to cancel same pursuant to Section 14
`
`(1) of the Lanham Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. § 1064 (1). Applicant
`
`is compelled to argue in the alternative that if the services and/or marks of the parties are
`
`determined to be closely related under a likelihood of confusion analysis, then Applicant is the
`
`prior, senior user of its mark and the KUESKI Registrations must be cancelled. In addition,
`
`Applicant will be filing Notices of Opposition against Opposer’s pending Applications with the
`
`USPTO for the standard character mark “KUESKI” in International Classes 42, 36, 35, and 9 as
`
`alleged in paragraph 3 of the Notice of Opposition.
`
`1.
`
`Under the
`
` mark, which is the subject of U.S. Application Serial
`
`No. 97642440 (hereinafter the “KUSHKI design mark”), Applicant offers an online payment
`
`processing platform with different payment method options for businesses to securely perform
`
`payment transactions through a single, secure and scalable online platform between the business
`
`and a consumer (“Applicant’s Platform”).
`
`2.
`
`The KUSHKI design mark is prominently displayed all throughout the
`
`kushkipagos.com webpage.
`
`3.
`
`The KUSHKI design mark is prominently displayed throughout the user-interface
`
`of Applicant’s Platform.
`
`4.
`
`Applicant has been using the mark “KUSHKI” in connection with its services
`
`since at least as early as 2015, when its founders started the company out of their New York
`
`office and began soliciting investors for Applicant.
`
`5.
`
`The development of Applicant’s Platform that is the foundation of its services
`
`began in 2016.
`
`6.
`
`A pilot program for Applicant’s Platform was released in 2016.
`
`
`4889-5388-5854, v. 1
`
`7
`
`

`

`7.
`
`Applicant’s Platform was released and began officially performing transactions in
`
`connection with its services in 2017.
`
`8.
`
`The KUSHKI design mark has been continuously displayed in connection with
`
`Applicant’s services since the official launch of Applicant’s Platform in 2017.
`
`9.
`
`Applicant has used the KUSHKI design mark in interstate commerce all across
`
`the United States and abroad continuously since at least as early as 2017 in connection with its
`
`services, including its sales, marketing, advertising, and promotion of its services.
`
`10.
`
`As a result of its widespread, continuous, and exclusive use of the KUSHKI
`
`marks, including the KUSHKI design mark, to identify its services and Applicant as the source
`
`of its services, Applicant owns valid and subsisting federal statutory and common law rights in
`
`the KUSHKI design mark.
`
`11.
`
`Applicant’s KUSHKI design mark is distinctive to the consuming public.
`
`12.
`
`Applicant’s KUSHKI design mark is distinctive to Applicant’s trade.
`
`13.
`
`Applicant has expended substantial time, money, and resources marketing,
`
`advertising, and promoting its services sold under the KUSHKI design mark including through
`
`Applicant’s marketing, advertising, and promotional efforts and channels for services under its
`
`mark.
`
`14.
`
`Applicant first filed an application with the USPTO for its KUSHKI standard
`
`character mark in International Classes 36 and 42 on September 22, 2020 with a Serial No. of
`
`90199163.
`
`15.
`
`Opposer filed a Notice of Opposition against Applicant’s Application Serial No.
`
`90199163, which is the subject of Proceeding No. 91272072 presently pending before the
`
`Trademark Trial and Appeal Board.
`
`
`4889-5388-5854, v. 1
`
`8
`
`

`

`16.
`
`Applicant subsequently filed Application Serial No. 90785521 for its KUSHKI
`
`standard character mark on June 21, 2021 in International Class 35 with the USPTO.
`
`17.
`
`Opposer filed a Notice of Opposition against Applicant’s Application Serial No.
`
`90785521 on February 3, 2023, which is the subject of Opposition No. 91283229.
`
`18.
`
`Opposition No. 91272072 and Opposition No. 91283229 were consolidated into
`
`one proceeding (Opposition No. 91272072) on April 17, 2023.
`
`19.
`
`Applicant has filed a Counterclaim to cancel the KUESKI Registrations, which is
`
`now pending in Opposition No. 91272072.
`
`20.
`
`Upon information and belief, Opposer is the current listed owner of Registration
`
`No. 6,000,277 for International Class 36 for financing services dated March 3, 2020.
`
`Registration No. 6,000,277 describes the mark as “consist[ing] of the stylized words ‘kueski’, in
`
`color blue with just the subscript dot over the ‘i’ in color green. To the left of the word ‘kueski’
`
`there is a graphical representation of a potted plant, with the plant and top portion of the pot
`
`being in color green and the lower portion of the pot being in color blue. The potted plant is
`
`slightly shaded on its left side. The color white represents the background and is not a part of the
`
`mark.”
`
`21.
`
`22.
`
`The filing basis of Registration No. 6,000,277 is Section 44(e) of the Lanham Act.
`
` Upon information and belief, Opposer is the current listed owner of Registration
`
`No. 6,352,536 for International Class 36 for financing services; banking and financing services;
`
`financial affairs and monetary affairs, namely financial information, management and analysis
`
`services, dated May 18, 2021. Registration No. 6,352,536 describes the mark as “consist[ing] of
`
`the stylized words ‘kueski Pay’, with the word ‘kueski’ in blue with a green dot over the ‘i’, and
`
`the word ‘Pay’ fades vertically from orange down to pink. To the left of the words ‘kueski Pay’
`
`
`4889-5388-5854, v. 1
`
`9
`
`

`

`there is a graphical representation of a potted plant, with the plant and top portion of the pot
`
`being in color green and the lower portion of the pot being in color blue. The potted plant is
`
`slightly shaded on its left side. The color white represents the background and is not a part of the
`
`mark.” Further, “[t]he color(s) green, blue, pink, and orange is/are claimed as a feature of the
`
`mark” and “[n]o claim is made to the exclusive right to use the following apart from the mark as
`
`shown: ‘PAY.’”
`
`23.
`
`24.
`
`The filing basis of Registration No. 6,352,536 is Section 44(e) of the Lanham Act.
`
`Upon information and belief, Opposer is the current listed owner of Registration
`
`No. 6,352,537 for International Class 36 for financing services; banking and financing services;
`
`financial affairs and monetary affairs, namely financial information, management and analysis
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`services, dated May 18, 2021. Registration No. 6,352,537 describes the mark as “consist[ing] of
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`standard characters without claim to any particular font style, size or color.” Further, “[n]o claim
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`is made to the exclusive right to use the following apart from the mark as shown: ‘CASH.’”
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`25.
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`26.
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`The filing basis of Registration No. 6,352,537 is Section 44(e) of the Lanham Act.
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`Upon information and belief, Opposer is the current listed owner of Registration
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`No. 6,565,422 for International Class 42 for application service provider (ASP), namely hosting
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`computer software applications of others, consulting in the field of information technology;
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`development of computer platforms; information technology consulting services; platform as a
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`service (PAAS) featuring computer software platforms for financial information and financial
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`services; providing temporary use of on-line non-downloadable software and applications for
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`obtaining financial information and financial services; providing temporary use of on-line non-
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`downloadable software for allowing users to access various programs; software as a service
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`(SAAS) services featuring software for financial information and financial services, dated
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`November 23, 2021. Registration No. 6,565,422 describes the mark as “consist[ing] of the
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`stylized words ‘kueski’, in color blue with just the subscript dot over the ‘i’ in color green. To
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`the left of the word ‘kueski’ there is a graphical representation of a potted plant, with the plant
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`and top portion of the pot being in color green and the lower portion of the pot being in color
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`blue. The potted plant is slightly shaded on its left side. The color white represents the
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`background and is not a part of the mark.”
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`27.
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`The filing basis of Registration No. 6,565,422 is Section 44(d) of the Lanham
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`Act.
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`28.
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`Each KUESKI Registration is for either International Class 36 or 42.
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`29.
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`Applicant’s KUSHKI design mark has priority over the KUESKI Registrations
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`because Applicant first used its KUSHKI design mark in connection with its services in the
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`United States in at least as early as 2017.
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`30.
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`The earliest filing date for any of Opposer’s USPTO applications concerning the
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`KUESKI Registrations is April 22, 2019.
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`31.
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`The earliest registration date of any of Opposer’s USPTO registrations relating to
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`the KUESKI Registrations is March 3, 2020.
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`32.
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`The earliest filing date of any of Opposer’s USPTO applications for any of its
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`KUESKI Registrations is after Applicant first used its KUSHKI design mark in Interstate
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`Commerce in 2017.
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`33.
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`The earliest registration date for any of the KUESKI Registrations is after
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`Applicant first used its KUSHKI mark in Interstate Commerce in 2017.
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`34.
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`Opposer alleges, in paragraph 4 of the Notice of Opposition filed in the above
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`captioned Proceeding (Opposition No. 91288641), that its first use of the KUESKI mark “and/or
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`[a] KUESKI variation mark” in the United States was in August 2021.
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`35.
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`If the parties’ services and/or marks are determined to be closely related for
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`purposes of a likelihood of confusion, then Opposer is not entitled to continue owning the
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`KUESKI Registrations because Opposer’s Registrations are likely to cause confusion, or to
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`cause mistake, or will deceive the public as to the origin of the services under Lanham Act §
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`2(d), 15 U.S.C. § 1052(d) due to the fact that Applicant has common law rights, is the senior user
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`of its KUSHKI marks, and has priority in its KUSHKI design mark in the United States.
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`36.
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`The KUESKI Registrations should be cancelled because they consist of or
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`comprise of a mark which so resembles Applicant’s KUSHKI design mark, of which it has
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`common law rights, senior use, and priority in the United States, as to be likely, when used in
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`connection with Opposer’s services, to cause confusion, mistake or deception within the meaning
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`of 15 U.S.C. § 1052(d), and to thereby cause damage to Applicant.
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`WHEREFORE, Applicant respectfully prays that its Counterclaim for Cancellation be
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`sustained and that the KUESKI Registrations be cancelled.
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`Dated: January 16, 2024
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`Respectfully Submitted,
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`LLAPINGACHO, LLC,
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`By its attorneys,
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`MORSE, BARNES-BROWN, &
`PENDELTON, P.C.
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`/s/ Paige K. Zacharakis _
`Paige K. Zacharakis, Esq.
`Sean Detweiler, Esq.
`Morse, Barnes-Brown, and Pendleton, P.C.,
`480 Totten Pond Rd., 4th Floor
`Waltham, MA 02451
`(781) 622-5930
`pzacharakis@morse.law
`sdetweiler@morse.law
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 16, 2024, I caused a true and correct copy of the
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`foregoing ANSWER, AFFIRMATIVE DEFENSES TO NOTICE OF OPPOSITION, AND
`COUNTERCLAIM to be served by email upon the following attorney of record for KUESKI,
`S.A.P.I. DE C.V., SOFOM, E.N.R.:
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`CAITLIN R. BYCZKO
`BARNES & THORNBURG LLP
`11 S. MERIDIAN ST.
`INDIANAPOLIS, IN 46204
`UNITED STATES
`cbyczko@btlaw.com, ipdocket@btlaw.com, adegler@btlaw.com, jfroemel@btlaw.com
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`/s/ Paige K. Zacharakis
`Paige K. Zacharakis
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