Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA398827
`ESTTA Tracking number:
`03/18/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052047
`Defendant
`The Brainy Baby Company, LLC
`LEE B BEITCHMAN
`BEITCHMAN & HUDSON LLP
`215 14TH ST NW
`ATLANTA, GA 30318
`UNITED STATES
`LeeBeeBee@aol.com
`Other Motions/Papers
`Lee B. Beitchman
`Leebeebee@aol.com
`/Lee B. Beitchman/
`03/18/2011
`scanned_doc.pdf ( 59 pages )(12508893 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MA’I"l‘]3L, INC.,
`
`Petitioner,
`
`VS.
`
`THE BRAINY BABY COMPANY,
`
`LLC,
`
`Registrant.
`
`\-.../N.../'\q_/\n_/\-_/‘-q./‘v.../\u._./\...-/\._/‘~._.l\q_.J
`
`Cancellation No. 92052047
`
`Registration No. 3214699
`Mark: LAUGH & LEARN
`
`REGISTRANT’S RESPONSE IN OPPOSITION TO
`
`PETITION.ER’S MOTION FOR SUMMARY JUDGMENT
`
`Lee Bcitchman
`
`BEITCHMAN & I-IUDSON, LLP
`
`21 S Fourteenth Street, NW
`Atlanta, Georgia 30318
`Tel.: (404) 897-5252
`
`Fax: (404) 52]—4632
`Email : Leebeebee@aol.com
`
`COUNSEL FOR REGISTRANT
`
`

`
`TABLE OF CONTENTS
`
`INDEX OF AUTHORITIES ................................................. ..
`
`1.
`
`STATEMENT OF THE CASE ....................................... ..
`
`II.
`
`STATEMENT OF THE FACTS ..................................... ..
`
`III.
`
`ARGUMENT ............................................................ ..
`
`A. Summary Judgment Standard ..................................... ..
`
`B. Registrant was Using the Subject Mark in Connection with
`the Cited Goods at the Time the Application was Filed. .
`. .
`.
`
`Page
`
`ii
`
`1
`
`2
`
`4
`
`4
`
`6
`
`IV.
`
`CONCLUSION .......................................................... ..
`
`1 I
`
`

`
`INDEX OF AUTHORITIES
`
`Cases
`
`Capitol Speakers Inc. v. Capital Speakers Club of Washington D. C. Inc. ,
`41 USPQ2d 1030, I034 (TTAB 1996)
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986)
`
`Corporate Document Services Inc. v. 1.C.E.D. Management Inc.,
`48 USPQ2d 1477 (TTAB 1998)
`
`Dyneer Corp. 12. Automotive Products pic,
`37 USPQ 125], 1254 (TTAI3 1995)
`
`Gasser Chair Co. Inc. v. Irgfanti Chair Manufacturing Corp,
`60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995).
`
`Opryland USA Inc. v. The Great American Music Show Inc,
`970 F.2d 847, 23 USPQ3d 1471, 1472 (Fed. Cir. 1992)
`
`Rules and Regulations
`
`Fed. R. Civ. P. 56
`
`Other Authorities
`
`Trademark Mantzal 0fExamirn'ng Procedure (“TA/IEP ”) § 1202.08
`
`Trademark Trial and Appeal Board Manual of Procedure ("TEMP
`
`§ 528.01
`
`

`
`1.
`
`STATEMENT OF THE CASE
`
`The Brainy Baby Company, LLC,
`
`is the owner of the mark LAUGH &
`
`LEARN, Reg. No. 3214699, in International Class 09 in connection with a “series
`
`ofprerecorded videotapes, audio cassettes, digital video discs and compact discs
`
`featuring live and animated educational materials intended to develop and
`
`improve the creative and intellectual faculties of infants and children.”
`
`See
`
`Aflidavit of Dennis P. Fedoruk, (“Fedoruk Afif. ”). attached hereto as “Exhibit A, ”
`
`1111 I4 and I5," Attach F. Registranfis date of first use of the mark is February 15,
`
`2004. Id. The filing date 0i"Registrant’s application is July 21, 2004.
`
`Id.
`
`On February 5, 2010, Petitioner, Mattel, Inc. filed a Petition for Cancellation
`
`of the mark. D.E. 1. Petitioner alleged, among other things, that Registrant has
`
`failed to use the mark in commerce for the identified goods.
`
`I).E.. 1, pg. 1. Rather,
`
`Petitioner contends that Registrant was using the mark as a title for a single
`
`creative work when it tiled the subject application. DE. 1, pg. 5. As discussed
`
`herein, however, at the time the application was filed, Registrant was using the
`
`LAUGH & l_.EARN mark in connection with both a video tape and a digital video
`
`disc (DVD) with significantly different content.
`
`Fedoruk A_/j’.
`
`1]
`
`13(a)—(d}.
`
`Therefore, Registrant was using the mark for the recited goods in the registration at
`
`the time it was tiled and the Petition for Cancellation should be denied.
`
`1
`
`

`
`ll.
`
`STATEMEINT OF THE FACTS
`
`Registrant, The Brainy Baby Company, LLC, was, until acquired on a date
`
`after the date of this Petition to Cancel, a small Georgia-based company that
`
`produced and distributed children’s educational products, including DVDS, video
`
`tapes, books, games,
`
`toys and puzzles.
`
`Fedortilc Afj’.
`
`1] 4.
`
`In March 2004,
`
`Registrant received a federal registration for the mark TIIE BRAINY BABY
`
`LEARNING LIBRARY, (U.S. Reg. No. 2826316), in International Class 09 for a
`
`“series of audio/video works, namely prerecorded videotapes and digital video
`
`discs intended to develop and improve the creative and intellectual faculties of
`
`infants and children.” Fedorulc Afi’. 111] 5 and 6, Attach A. The BRAINY BABY
`
`LEARNING LIBRARY included numerous titles for developmental videos for
`
`infants and children. Fedorak Ajf 1l 7.
`
`Sometime in 2003, Registrant created its LAUGI-I & LEARN collection of
`
`videos as part of THE BRAINY BABY Lli3ARNING LIBRARY. Deposidort of
`
`The Brairiy Baby Company Co., LLC ("Brainy Baby Depo. ”), excerpts attached
`
`hereto as “Exl1il7ii B, ” pg. 57,
`
`lm‘. 2}-25; pg. 58,
`
`lrts. 1-5; Fedorulc
`
`1] 8.
`
`Registrant marketed the collection of videos to retailers at the Toy Fair in New
`
`York City on February 15-18, 2004. Brainy Baby Depo. pg. 121, lris. 5-13,‘
`
`2
`
`

`
`Fedora/c Afl 1[1] 9 and 10, Attack B. The LAUGI-1 & LEARN collection consisted
`
`of the video titles “Right Brain,” “Left Brain,” “Laugh and Learn” and “Peek-A-
`
`Boo.” Brainy Baby Depo. pg. 71, Iris. 9-J}; Fedoruk Ajf 1| 1]. All four of the
`
`titles in the collection were promoted at the Toy Fair in February 2004. Brainy
`
`Baby Depo. pg. 120, Iris. 21-25,’ pg. 121, Ins. 5»13,' Fedoruk Ajf 1] 1}, Attach. B.
`
`The LAUGH & LEARN title within that series consisted ofboth a video tape
`
`and a DVD. Brainy Baby Depo. pg. 48,
`
`in. 13; pg. 49, In. 17; Fedora/c Afl 1] I2.
`
`The video tape and DVD differ not just in format, but in content. Brainy Baby
`
`Depo. pg. 34,
`
`irz3.I5-25; pg. 35,
`
`Iris. [-1]; Fealoruk Ag}? 1] 12. For example, the
`
`DVD contains special features including: Baby Bloopers, a Baby Face storybook
`
`which provides for interactivity between parent and child, Sneak Peeks, Behind the
`
`Scenes video and, most importantly, Interactive Learning Activities. The DVD is
`
`also designed to be used in a standard computer and link to interactive web pages.
`
`Fedoruk Aflf 1] i3(a).
`
`Registrant took a purchase order for its LAUGH & LEARN collection,
`
`including all
`
`four titles,
`
`from Blanchard’s Educational & Office Supplies on
`
`December 23, 2003. Brainy Baby Depo. pg. 88, Ins. 19»-23,‘ Fedoruk Afi’. 1] [7,
`
`Attach. G. The purchase order included both the LAUGH & LEARN video tape
`
`and the LAUGH & LEARN DVD.
`
`Id. All of the titles in the collection, including
`
`3
`
`

`
`the LAUGH & LEA RN video tapes and DVD were invoiced and shipped to the
`
`customer on June 4, 2004. Fedoruk Aflf Ti [8, Attach. H.
`
`On July 21, 2004, Registrant filed its application for the mark LAUGI-I &
`
`IJSARN in Intemational Class 09 for a “series of prerecorded videotapes, audio
`
`cassettes, digital video discs and compact discs featuring live and animated
`
`educational materials
`
`intended to develop and improve the creative and
`
`intellectualfaculties o)"irzfants and children.” Fedoruk Afi ii 14 and [5, Attach F.
`
`Although Registrant had actually taken a purchase order
`
`for the product
`
`in
`
`December of 2003, Registrant cited its date of first use as February 15, 2004, the
`
`date of the Toy Fair in New York City. Id.
`
`Ill. ARGUMENT AND CITATIONS OF AUTHORITY
`
`A.
`
`Summary Judgment Standard
`
`A motion for summary judgment is a pretrial device to dispose of cases in
`
`which “the pleadings, depositions, answers to interrogatories, and admissions on
`
`file, together with the afiidavits, if any, show that there is no genuine issue as to
`
`any material fact and that the moving party is entitled to judgment as a matter of
`
`law." Fed. R. Civ. P. 56(0); Celotex Corp. v. Catrett, 477 U.S. 317 (1986). A
`
`party moving for summary judgment has the burden of demonstrating the absence
`
`of any genuine issue of material fact, and that it is entitled to judgment as a matter
`
`of law.
`
`See TBMP §528.0l; Corporate Document Services inc.
`
`v. 1.C.E.D.
`
`

`
`Management 1nc., 48 USPQ2d 1477 (TTAB 1998). This burden is greater than the
`
`evidentiary burden at trial. See TBMP § 528.01; Gasser Chair Co. Inc. v. Infarzti
`
`Chair Manufacturing Corp, 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir.
`
`1995).
`
`The burden of the moving party may be met by showing “that there is an
`
`absence of evidence to support the nonmoving pa1’(y°s case.” See TEMP § 528.01;
`
`Ceiotex Corp.
`
`v. Catretz, supra.
`
`If the moving party meets its burden,
`
`the
`
`nonmoving party may not rest on mere denials or conclusory assertions, but rather
`
`must proffer countering evidence, by affidavit or as otherwise provided in Fed. R.
`
`Civ. P. 56, showing that there is a genuine issue for trial. See TBMP § 528.01;
`
`Fed. R. Civ. P. 56(e). A factual dispute is genuine if sufficient evidence is
`
`presented such that a reasonable fact finder could decide the question in favor of
`
`the non-moving party. See TBMP § 528.01; See Opryland USA Inc. v. The Great
`
`American Music S/t0w1rzc., 970 F.2d 847, 23 U SPQ3d 1471, 1472 (Fed. Cir. 1992)
`
`(not required to present entire case but just sufficient evidence to Show an
`
`evidentlary conflict as to the material fact in dispute).
`
`In deciding a motion for summary judgment, the function of the Board is not
`
`to try issues of fact, but to determine instead if there are any genuine issues of
`
`

`
`material fact
`
`to be tried.
`
`See TBMP § 528.01; Dyneer Corp.
`
`12. Automotive
`
`Products pic, 37 USPQ 1251, 1254 (TTAB 1995). The non—moving party must be
`
`given the benefit of all reasonable doubt as to whether genuine issues of material
`
`fact exist; and the evidentiary record on summary judgment, and all inference to be
`
`drawn from the undisputed facts, must be viewed in the light most favorable to the
`
`non—moVing party. See TBMP § 528.01.
`
`B.
`
`Registrant was Using the Subieet Mark in Connection with the Recited
`Goods at the Time the Application was Filed
`
`It is undisputed that Registrant was using the LAUGH & LEARN mark at
`
`the time it filed the subject application, and in fact well before that date. Fedoruk
`
`Affl 111] 8-H), 16-18. Petitioner even concedes that Registrant was using the mark
`
`as of the date of the application. DE. 15, pg. 10.
`
`It is further undisputed that
`
`Registrant was using the mark on or before the date of its application in connection
`
`with both video tapes and DVDS. Fedora}: Afi.‘ 1H] 1648. Thus, the only issue
`
`before the Board is whether Registrant’s use of the mark in connection with both a
`
`video tape and DVD constitutes use the mark for a “series of prerecorded
`
`videotapes, audio cassettes, digital video discs and compact discs featuring live
`
`and animated educational materials intended to develop and improve the creative
`
`and inielieciuai faculties of infants and children” as stated in Registranfis
`
`application.
`
`

`
`Petitioner erroneously contends that Registrant’s use of the LAUGH &
`
`LI-;‘ARN mark is limited to a single creative work. In support of this, Petitioner
`
`cites to the LAUGH & LEARN video jacket which was submitted as a specimen in
`
`support of Registranfs application, falsely stating that “Registrant has further
`
`admitted that as of the relevant time, no other products it offered carried any form
`
`of the ‘LAUGH & LEARN’ name.” DE. 15, pg. 10. A closer review of the
`
`deposition testimony of Mr. Fedoruk, however, reveals that Mr.
`
`liedoruk was
`
`referring to products other than the LAUGH & LEARN video tape and DVD,
`
`both of which were sold prior to the date of the application. Brainy Baby Depot,
`
`pg. 224, 1:15.] 3-25; Fedoruk Ajf 111] 16-18.
`
`Recognizing the obviousness of this undisputed fact, Petitioner next argues that
`
`“the fact that Registrant released its ‘Laugh & Learn’ video program in both the
`
`VHS and DVD formats does not transform that single creative work into a series
`
`given that the content of the underlying program remained the same despite the
`
`format change.” D.F.. 15, pg. 10. Single creative works include works in which
`
`the content does not change, whether that work is in printed, recorded or electronic
`
`form.
`
`See TMEP § 1202.08(a). Materials such as books, sound recordings,
`
`downloadable songs, downloadable ring tones, Videocassettes, DVDS, audio CDs,
`
`and films are usually (emphasis added) single creative works. Id.
`
`7
`
`

`
`Computer software and computer games are not treated as single creative
`
`works, nor are live performances and educational seminars as they are presumed to
`
`change with each presentation. See TMEP § 1202.08(b). A work in which there
`
`are significant changes in content (emphasis added) from one edition to the next
`
`is not regarded as a single creative work. Id.
`
`Here, as affied by Mr. Fedoruk, the LAUGH & LEARN mark is being used
`
`in connection with two distinct creative works — a VHS and DVD. Although
`
`typically, video tapes and DVDS are regarded as different formats of a single
`
`creative work, the content of the DVD at issue here is significantly different from
`
`that of the VHS, and more importantly, the content of the DVD changes with each
`
`presentation depending on the activities selected by the user each time it is loaded
`
`into a player or computer.
`
`For example,
`
`the DVD contains special features
`
`including: Baby Bloopers, a Baby Face storybook which provides for interactivity
`
`between parent and child, Sneak Peeks, Behind the Scenes and, most importantly,
`
`Interactive Learning Activities. As noted, the DVD is also designed to be used in a
`
`standard computer with links to interactive web pages. Fedoruk Aflf
`
`1] 13(0).
`
`Thus, the content of the DVD is not only significantly different from the VHS, but
`
`also functions to permit
`
`the user
`
`to change the content depending on the
`
`applications selected with each use.
`
`

`
`The DVD operates in the nature of a computer program with content that
`
`operates on the medium of computer hardware, separate and distinct from the
`
`video tape which only offers a linear View of a basic video. Fedoruk Afii ‘ll 13(b).
`
`Thus, the DVD itself will yield different experiences as the parent chooses which
`
`functions and content they want for their child(ren). Fedoruk Afj’. fl 13(aD. These
`
`significant changes in content and functionality between the V1-IS and DVD create,
`
`as affied by Mr. Fedoruk, at a minimum, a triablc issue as to whether the VHS and
`
`DVD constitute a series of creative works, and whether the DVD itself can even be
`
`classified as a single creative work.
`
`The ONLY “evidence” submitted by Petitioner, on the other hand, to support
`
`its contention that the content of the VHS and DVD are the same, is the declaration
`
`of William Lehner,
`
`the administrative assistant who works for the law firm of
`
`Kenyon & Kenyon LLP. See Declaration of William Lehner (“Lehner Decl. ”),
`
`15, pg.
`
`10. Despite having no ascertainable background,
`
`training or
`
`experience in comparing video content for purposes of determining whether a VHS
`
`and DVD constitute multiple creative works, Mr. Lehner states that be viewed both
`
`the LAUGH & LEARN VHS and DVD and that “the content of the program on the
`
`VHS tape gym (emphasis added) to be the same as the content of the program
`
`on the DVD.”
`
`

`
`Mr. Lehner’s biased opinion as to the nature of the content of the videos,
`
`however,
`
`is nothing more than a conelusory assertion which is not sufficient to
`
`sustain Petitioner’s burden of establishing that no genuine issue exists for trial.
`
`Moreover, even if Mr.
`
`l;ehner’s testimony could be considered “evidence” to
`
`support Petitioner’s motion, which it cannot, Registrant has established the
`
`existence of a genuine issue for trial based upon the affidavit of Dennis P. Fedoruk,
`
`the President of The Brainy Baby Company LLC.
`
`As discussed herein, Mr. Fedoruk has testified that the content of the VHS
`
`and DVD are in fact significantly different in a number of ways. These key
`
`differences demonstrate that the VHS and DVD constitute a series of creative
`
`works, and that the DVD in itself is not a single creative work, being used in
`
`connection with the LAUGH & 1.1"-EARN mark. At the very least, Mr. Fedoruk’s
`
`testimony raises a issue of fact as to whether the content of the DVD and VHS is
`
`significantly different, and whether the DVD itself is not a single creative work,
`
`and any inferences raised by Mr. Fedorul<’s testimony must be resolved in favor of
`
`Registrant. See TMBP § 528.01; Capital Speakers Inc. v. Capital Speakers Club of
`
`Washington DC. Inc, 41 USPQ2d 1030, 1034 (TTAB 1996) (Board accepted
`
`nonmovant’s version of the facts for purposes of deciding motion).
`
`Finally, Petitioner erroneously cites Registrant’s lack of use of the LAUGH
`
`10
`
`

`
`& LEARN mark on all of the recited goods in its registration as an alternative basis
`
`for cancelling the subject registration. DB. 15, pg. 12. Petitioner fails to cite any
`
`authority, and the undersigned was unable to find any, to support its contention that
`
`Registrant must make use of its mark on all the goods listed in its application to
`
`establish a series.
`
`IV. CONCLUSION
`
`Registrant was using its LAUGH & LEARN mark at the time it filed the
`
`subject application, and in fact well before that date, in connection with both Video
`
`tapes and DVDS. Although typically, video tapes and DVDs are only recognized
`
`as different formats of a single creative work, the content of the DVD at issue here
`
`is significantly different from that of the VHS, and the content of the DVD
`
`significantly changes with each use. This creates, at a minimum, a triablc issue as
`
`to whether Registrant has used the LAUGH & LEARN mark as the title of a series
`
`of creative works.
`
`WHEREFORE, Registrant respectfully requests that Petitioner‘s Motion for
`
`Summary Judgment be DENIED.
`
`This 18th day of1'\/larch, 2011.
`
`Respectfully Submitted:
`
`BY:
`
`/s/ Lee B. Beirchmcm
`
`LEE B. BEITCI-{MAN
`
`Attorney for Registrant
`I 1
`
`

`
`Bcitchman & Hudson, LLP
`215 14"‘st.,Nw
`Atlanta, Georgia 30318
`Telephone: (404) 897-5252
`Fax: (404) 521—4632
`Email: Leebeebee@a0l.c0m
`
`12
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cziiiccllalion No. 9205204?
`
`Registration No. 3214699
`
`MATTEL, lNC.,
`
`Petitioner,
`
`vs.
`
`TI---IF. BRAINY BABY COMPANY, LLC.
`
`Registrant.
`
`STATE OF GI-“*.0RGIA
`
`COUNTY OF FULTON
`
`\...r\-..u\_.«*~.../-../'-.../H..J~a..r~...o-'\.../-..-
`
`AFFIDAVIT OF DENNIS P. FEDORUK
`
`Personally before me the undersigned officer, duly authorized by law to E1dlI'1ll1lStcl'
`
`oaths, appeared Dl:‘.NNIS I’. FE.-"DORUK, who being duly sworn, deposes and states on
`
`oath the following:
`
`1.
`
`Affiant is a natural person over the age of 21 years and is laboring under no legal
`
`disabilities.
`
`2.
`
`My name is Dennis P. Fedoruk and I currently reside at 418 Sumrliitview CL,
`
`Dawsonvi lle. Georgia.
`
`

`
`3.
`
`I was the President of The Brainy Baby Company. LLC.
`
`I held this position at all
`
`relevant times herein. My testimony herein is based on my personal knowledge.
`
`4.
`
`The Brainy Baby Company, LLC ("‘Registrant"), was a Georgia based company
`
`that produces and distributes childreifs educational products.
`
`including DVDS, video
`
`tapes, books, games. toys and puzzles until its assets were acquired in the later part of
`
`2010.
`
`5.
`
`In March 2004, Registrant received a Federal registration for the mark "l'l-"iii
`
`BRAINY BABY LEARNING LIBRARY, (U.S. Reg. No. 2826316),
`
`in International
`
`Class 09 for a “sert'e.s of audio/video works. mrmely prerecorded videotapes‘ and digital
`
`video discs intended to develop and improve the creative and irztellectuai jiczcutfier of
`
`infimts and chr'!c!ren.”
`
`6.
`
`Attachment A hereto is a true and correct copy of the Trademark Registration for
`
`TI-IE BRAINY BABY LEARNING LIBRARY, Reg. No. 282316, which was printed oft"
`
`of the US. Patent & "I‘rademari<. Office website _\3__N__’\___’\_‘_5_:;'_;l_tffsj1‘_._(_3:_‘_..3_{§)__\._" on March 10. 201 1.
`
`7.
`
`The BRAINY BABY LEARNING LIBRARY included numerous titles for
`
`developmental videos for infants and children.
`
`

`
`8.
`
`Sometime in 2003, Registrant created its LAUGH & LEARN collection of videos
`
`as part of TIIE BRAINY BABY LEARNING LIBRARY.
`
`9.
`
`Registrant marketed the collection of videos to retailers at the Toy Fair in New
`
`York City on FCbi‘LlaI’_V 15-18, 2004. Pre-selling of the videos to retailers began as early
`
`as December 23, 2003.
`
`10.
`
`Attaehnient B hereto is a true and correct copy of the marketing materials that
`
`Registrant distributed at the Toy Fair on February 15-18 to promote its LAUGH &
`
`LEARN collection of videos.
`
`11.
`
`The LAUGH & LEARN collection consists of the video titles “Right Brain,” “Left
`
`Brain,” “Laugh and Learn” and “'Peek—A-Boo.“ All four of the titles in the collection
`
`were promoted at the Toy Fair in February 2004.
`
`12.
`
`The LAUGH & LEARN title within that series consisted of both a video tape and
`
`a DVD. The video tape and DVD differ not just in format. but in content.
`
`I have viewed
`
`both the video tape and "DVD designated under the LAUGH & L-"EARN mark, attached as
`
`Exhs. 2 and 3 to The Brainy Baby Company,
`
`l_,I...C’s 30(b)(6) deposition.
`
`taken on
`
`November 3, 2010, respectively. and referenced in Petitiorfs Motion for Summary
`
`Judgment.
`
`

`
`13.
`
`The content of the LAUGI-1 & LEARN video tape and LAUGH & LEARN DVD is
`
`materially and significantly different as described below:
`
`(a) As is shown in Attachment C hereto, which features the back of the packages of
`
`the video tape on the left and the DVD on t.he right. the DVD contains special
`
`features including: Baby Bloopers, a Baby Face storybook which provides for
`
`interaetivity between parent and child, Sneak Peeks, a Behind the Scenes video
`
`and, most importantly, Interactive Learning Activities. The DVD is also designed
`
`to be used in a standard computer and link to additional web pages that interact
`
`with e.hi.ldren using an educational theme.
`
`(b) it was the intent of The Brainy Baby Company, LLC to create a digital video
`
`product that would vary in content and operate in the nature of a computer
`
`program with content that matches the medium of computers, separate and distinct
`
`from a videotape which would offer only a linear view ofa basic video.
`
`(c) Evidence oi" this
`
`is
`
`reflected by Attachments "D and ti hereto. which are
`
`photographs of computer screen images that appear on the DVD when inserted in
`
`a computer, and which direct the viewer to features that are exclusive to the DVD.
`
`(d) By creating these two individual and unique products as a part of the series of
`
`LAUGH & LEARN products, as with all its products, The Brainy Baby Company,
`
`LLC allows parents to choose which functions and content they want for their
`
`ehild(ren).
`
`

`
`14.
`
`Registrant is the owner of the mark LAUGII & LEARN, Reg. No. 3214699.
`
`in
`
`International Class 09 in connection with a “series of prerecorded videotapes. rmdfo
`
`cczssette.s'_. digital video discs and compact‘ di'scsfeat‘w'r'ng live and animated edm':at:’oncu’
`
`mat'eri'czEs
`
`intended to develop and improve the creative and intellectual faculti‘e.s of
`
`:'a)"nnr.s' and children.” Registranfs date oftirst use of the mark is February I5, 2004. The
`
`filing date of Registranfs application is July 21, 2004.
`
`IS.
`
`Attachment F hereto is a true and correct copy of the Tratiemark Registration for
`
`LAUGH & LEARN, Reg. No. 3214699, filed on July 2 I , 2004, which was printed offof
`
`the U.S. Patent & Trademark Office website him; on March 10, 201 1.
`
`i6.
`
`At the time the application was filed. Registrant was using the LAUGH & Ll:LARN
`
`mark in connection with both at video tape and a digital video disc (1")V'l'J) with
`
`significantly different content.
`
`1?.
`
`Registrant accepted a purchase order
`
`for its LAUGH & I.,IiARN collection,
`
`including all four titles, from Blanchard’s Educational & Office Supplies on December
`
`23, 2003. Attachment (3 hereto is a true and accurate copy of the purchase order for
`
`Blanehard’s Educational & Ollice Supplies. The purchase order included both the
`
`LAUGH & LEARN video tape and the LAUGH & LEARN DVD.
`
`

`
`18.
`
`All of the titles in the collection. including the LAUGH & LEARN video tapes
`
`and DVD were invoiced and shipped to the customer on June 4, 2004. Attacinncnt E-I
`
`hereto is a true and accurate copy of the invoice and shipping order identiliyiiig the
`
`products shipped to Blanch-c1rd’sEducational & Office Supplies on June 4, 2004.
`
`1"LIR’l‘l1lJR Al“['«‘1AN"I' SAYIETI-{ NOT.
`
`This 9%“ day of March, 2011
`
`-Dennis Fecioruk
`
`Sworn to and subscribed before
`
`
`
`6
`
`

`
`ATTACHMENT A
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 1 of 2
`
`United States Patent and Trademark Office
`
` Home I Site Index I Search I FAQ I Glossary I Guides I Contacts I eBusiness I e-Biz alerts I News I Help
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Thu Mar 10 04:05:46 EST 2011
`
`@ 1
`
`-090111 Please logout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
`Browser to return to TESS)
`
`Typed Drawing
`
`( Use the "Back" button of the Internet
`
`Word Mark
`
`THE BRAINY BABY LEARNING LIBRARY
`
`Goods and
`Services
`
`(CANCELLED) IC 009. US 021 023 026 036 038. G & S: series of audiolvideo works. narneiy
`prerecorded videotapes and digital video discs intended to develop and mprove the creative and
`intellectual faculties of infants and children. FIRST USE: 19990201. FIRST USE IN COMMERCE:
`19990201
`
`Mark Drawing
`code
`Serial Number
`
`(1) TYPED DRAWING
`78082473
`
`Filing Date
`
`September 4, 2001
`
`Current Filing M
`Basis
`
`Original Filing
`Basis
`
`1B
`
`Published for
`opposition
`Registration
`Number
`
`Registration
`Date
`
`Owner
`
`’°‘55i9"“"""'"’
`Recorded
`
`ggggpgy of
`Disclaimer
`
`.
`April 8, 2003
`
`2826316
`
`March 23, 2004
`
`(REGISTRANT) Brainy Baby Company, LLC, The LIMITED LIABILITY COMPANY GEORGIA 1200
`Alpha Drive Suite B Alpharetta GEORGIA 30004
`
`ASSIGNMENTRECORDED
`
`Lee B. Beitchman
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BABY LEARNING LIBRARY" APART
`FROM THE MARK AS SHOWN
`
`Type of Mark
`Register
`Livei'Dead
`Indicator
`
`TRADEMARK
`PRINCIPAL
`
`DEAD
`
`http:;’;’tess2.uspt0.govi’binfshowfisId‘?f=doc&state=4004:87oh28 .3.1
`
`3T1 {H201 I
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
`
`Cancellation
`Date
`
`October 29, 2010
`
`[.HO|'U'|E | SITE |NDEX| SEARCH | eBUSENESS I HELP I PRIVACY POLICY
`
`http:r’x’tess2.uspto.goV/biru'showfield?f=d0c&state=4004: 87oh28.3.1
`
`3;’l 032011
`
`

`
`ATTACHMENT B
`
`

`
`BBDCIEISS?
`
`350 New Exhibitors!
`
`
`See Centerfold Section
`
`
`‘I
`
`February 15-18. 2004
`www. tt:y—I i a. org
`
`
`
`An Evening of C
`To»; Industry Association
`Announces Winners
`at the Fourth Annual
`
`
` Retro ad
`
`T.D.T.Y. Awards ceremony
`13)’ Culteen Mchriiilen.
`Communications Manager, TL-it
`
`
`
`educafinn
`
`products drive
`2003 U.S.
`
`Toy Saies
`By David M. Riley
`The NPD Group, Inc.
`According to leading rnaxket
`iltfonnation provider. The NPD
`Group. retail sales in me U.S.
`my indusiry saw sales figutcs
`fall 3 pelccni. to $20.? billion in
`2003 compared to $21.3 billion
`i" 3002'
`,
`,
`cam gagngg and 5m.m,,-,3
`[DPS boa. dcmongn-ma mung
`sales gains. Konamfs Yu-Gi-
`Ohl was the nurnbet-one sel.L|'ng
`license ave:-ell with over 100
`percent
`gtowih. Hasbro’:
`Bcybladc product
`line hciped
`fire] sales as they ended the year
`as
`the number
`two-ranked
`license behind only Yu-Gi-Oh!
`Additional
`bright
`spois
`across Ihe industry. included
`categories
`such as
`fashion
`dails, mini dolls and special
`rcatutr. plush. The dolls sup-cr
`category was able to stay in
`positive territory: due to a 64
`pentcnt sales increase in mini
`doiis & accessories, which
`includes play sets. Mini dolls
`
`‘i.r-.c."‘ (I'IA"J kicked off the
`Toy Industry Association.
`lfllsmmetican International TOY FAIR“ by play-i.rtg host to
`300 industry leaders and irtrtovztots at we fourth annual
`'l'.0.1‘.‘;". troi.» om: Ywmwms. The gala. hair! Fcbn.-a.-y
`14th in New York City's Sheraton NY Hotel and Toweis.
`paid tribute to the past year‘: yuatest and most creative
`achievements in toys.
`-
`Tne 'l‘.CI.T,Y. Awards (pronounced 'Ibh-The) are designed
`to salule Lhl‘. cxealivity. success and piayhil spin't of the toy
`indusuy by honoring the best toys developed by the interna-
`Lionai
`toy indnsny for North Amedcm consL'u‘n:I3. ‘The
`American toy industry continually produces the world‘:
`mo.-;'t
`:imaginaI:iv:.
`ingenious and run piaymings for chil-
`dren." said Tbm Conley, ptesidcm. of'I'I.A. ‘We pause each
`
`
`"
`'
`'
`I
`I
`I
`.
`_ - '
`.- _
`'
`-
`year during this busy timelo
`sure am ti-semen co4‘npa-
`ms and Fmgwm am mmguizn me mdusw m:dmOM_ from Iefi in tight, Pal Feeiy, Pmidanl 8. CH], iinditn Gums; Lid, iunaid Rubin. {(0, fume, int.
`.
`.
`.
`.
`.
`.
`Iintnming {huhmun ofTIA1;
`li:L| Friadmnq, 1’m|denI,Fis!tu-fdte iiruntis, int: and hm foniay,
`edged Md Mm“ mm“ mnmhunom and cmnmyl [us
`Prasidenl of Tliz, nl
`lite 20:13 I.iJ.T_‘i'. Awruds, Saiurtiuy, Feinuaqr H, EBB-i,
`:1! ins Shareian
`See TflT‘I' JWARDS, Page 1?
`iiawiorit Moral and lowers.
`
`
`
` ..‘)
`
`Sea ?UU3 Sdlfi, fiige H
`
`
`
`

`
`350 New Exhibitors!
`See Centerfold Section
`
`
`
`February 15-18, 2004'-
`www. toy-tia . org
`
`
`
`
`01; dusty
`
`Foundation Provides
`Homeless Children
`A Chance To Play
`By Terri ‘Bartlett
`in September 2002 me TLF
`Execttrivc Director
`Board cortianittcd to unite the toy
`No one likes to focus on bad
`industry as a catalyst in bringing
`news... especially not the local
`joy, happiness and comfort
`to -
`Md naL'tonai poiiticizns heading
`children in need through the
`into an election year. That is why
`experience of toys and play,
`you are ::rt§a'kc‘.y to beat the star-
`specifically focusing on the boys
`tling facts about the number of
`and girls living without a home.
`chiidren Living without a harm. in
`There‘: been no looking back
`the United States.
`since!
`It's as ifyou didn't know that
`the
`Over the past two years.
`U‘bc.It'. are 3.5 rttiiiion people Liv.
`industry has raised appro:-u'.tna_lo=
`ing without rt
`i'lrOI'.I'.|¢ in Nrterica
`Iy 5150,0130 to fund prograt-ns to
`today, And. worse than that,
`rtchicve its mission. Wtth these
`39% art: children — 1.35 miiiiort,
`funds, the Til-‘ is actively devol-
`according
`to
`the National
`oping partr.t:rsh.ips to reach out
`Council for tho Homeless and
`on a city. state and national level
`Urban institute.
`In our land of
`to make. ptay and recreation at
`plenty, why do we have these
`daily occurrence for Lite boys and
`conditions
`and why are my
`gifls caugitt in the futility ofih:
`growing at such an uncontrol-
`homelessness web. Tb quantify
`labie rate?
`the irnpact of these ptogrstms, all
`you need to do is sit «rim :1 child
`This startling reality prompted
`Living in a homeless instimtiort
`the Toy Industry Foundation
`('£‘IF‘“} Board of Trustees to
`and follow a playtime activity.
`Once a child has received i1is"i1c1'
`cxpiott ways in which rho toy
`indusu-y could irnpact the lives of
`very own new toy, the sparide in
`children influenced by this dev-
`I11: eyes is an imn'tnd.i2tl-e give-
`away.
`astating development. During
`strategic planning discussions
`These ‘I11’: pttnmr ptogmtns
`designed to create a clear and
`are conducted as pan of the
`distinct direction for
`the toy
`national iniiiativc. The Power of
`'tntiustry's pitilantltropic efforts.
`Play. Following is
`a brief
`the TIF Board made an unatniv
`description of three parI‘nt:r pro-
`trIDLI$ decision:
`the toy industry
`gaams currently in place. to bring
`could make a unique contribu-
`.1 touch of sunshine into what is
`tion by addressing the growing
`often a dreary, dark and scary
`trend.
`of
`homelessness
`in
`America.
`Soc T01’ F|J|Jii|J.itiiD!l, Pttga -1
`
`
`
`

`
`. I ].
`
`a
`
`O I 1
`
`.
`
`f
`aS
`g
`8 0 ‘
`I [ ‘
`I < E
`C‘
`)3
`Cha_'Ch111g _
`
`3
`.
`
`I
`
`quality educational contcnt in our videos
`
`NDL on1y does BrainyBaby‘ provide
`forchiidren ages 6 months no 5 years,
`we give parents a better value for their
`money And that attracts sales.
`.-‘xfutr ail. who doesn't mm more
`fortheirrnoncythesedays?
`
`Our videos run 15 minutes longer
`than most other educational videos,
`and our programs feature lots of real
`children. instead of animated characters.
`
`with the addition of new vidcos_
`books, toys. games, and nursery rtécor.
`Brainy Baby“ is the fresh new brand to
`carry. Stop by our booth #6225. and
`check out our two latest video reicases:
`Path-G-Bar} and Laugh Er Learn.
`
`...« lr'r|J: geu|'u.I rum: :Inflci|:g.“1
`
`
`
`
`
`brainybabysorn
`573-762-1100
`
`
`
`
`
`V1SlT US AT JAVITS CENTER, BOOTH #6225
`OR OUR SHOWROOM AT 110? BROADWAY, ROOM A-151
`
`BBGODSSO
`
`

`
`BBUUO391
`
`Fehrttaqr 15-18. 2004
`wttr-.ii.r.my-tia.o rg
`
`
`
`350 New Exhibitors!
`See Centerifoid Section
`
`
`
`to
`Nashington
`
`r Gary K.Ici.n
`nior VP. Government, Legs]
`id Regt