Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA391956
`ESTTA Tracking number:
`02/07/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053383
`Defendant
`Heather Daniels
`HEATHER DANIELS
`22682 BRIDLE TRAIL
`KILDEER, IL 60047
`UNITED STATES
`Motion to Amend/Amended Answer or Counterclaim
`Jason A. Berta
`jberta@foley.com, sszczepanski@foley.com, mboldingh@foley.com,
`jolsen@foley.com
`/JasonBerta/
`02/07/2011
`Amended Answer.pdf ( 9 pages )(341689 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92053383
`Registration No. 3,888,346
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`SPENCER GIFTS, LLC
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`
`
` Petitioner,
`
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`v.
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`HEATHER DANIELS,
`
`
`
` Respondent.
`
`
`AMENDED ANSWER
`
`Honorable Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`HEATHER DANIELS (“Daniels), by and through her attorneys, Foley & Lardner LLP, respond
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`to Petition for Cancellation by Spencer Gifts, LLC (“Spencer”) as follows:
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`1.
`Heather Daniels (“Daniels”) has secured Supplemental Register Registration No.
`3,888, 346 for SORRY BOYS MY DADDY SAYS I CAN’T DATE ‘TILL I’M 30 as a
`trademark for shirts for infants, babies, toddlers and children as set forth in said certificate of
`registration (“the Registration”).
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`ANSWER: Daniels admits that it owns Supplemental Register Registration No. 3,888,346 for a
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`trademark (“Registered Trademark”). Daniels further admits that her Registered Trademark is
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`registered for shirts for infants, babies, toddlers and children. Daniels denies the remaining
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`allegations of paragraph 1.
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`2.
`Spencer is and has for many years been engaged in the distribution and sale of
`novelty items and gifts, including t-shirts and hats and sweatshirts with humorous slogans and
`parodies and common catch phrases having then-current popularity.
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`ANSWER: Daniels is without knowledge sufficient to admit or deny the allegations of
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`paragraph 2.
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`3.
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`Spencer has offered for sale and sold the item depicted in Attachment A.
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`CHIC_5253294.1
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`ANSWER: Daniels is without sufficient knowledge as to which item in Attachment A is
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`referred to in paragraph 3; therefore Daniels denies allegations of paragraph 3.
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`4.
`Daniels has objected to Spencer’s sale of the t-shirts with the ornamental slogan
`on the item, namely: “Sorry Boys My Daddy Says I Can’t Date ‘Till I’m 30” alleging such use is
`an infringement of its rights.
`
`ANSWER: Denied.
`
`5.
`This slogan, and other similar slogans, are commonly used by Spencer’s vendor
`and Daniels and others to convey a non-trademark message in connection with the same and
`closely related products.
`
`ANSWER: Denied.
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`6.
`As such, Daniels knowingly made material false statements concerning the nature
`of her rights in the alleged mark and the use by others of identical and similar slogans in
`prosecution of the Registration and, upon information and belief, such statements were made
`with the intent to deceive the Trademark Office in order to secure the Registration.
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`ANSWER: Denied.
`
`7.
`Specifically, Daniels averred in her application that “no other person, firm,
`corporation, or association has the right to use the mark in commerce, either in the identical form
`thereof or in such near resemblance thereto as to be likely, when used on or in connection with
`the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.”
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`ANSWER: Daniels admits that in the application which led to its Registered Trademark,
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`Daniels submitted a declaration which included the following statement:
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`“he/she believes Application to be the owner of the mark sought to
`be registered, or if the application is being filed under 15 U.S.C.
`§ 1051(b) or 15 U.S.C. § 1126, he/she believe Applicant to be
`entitled to use such mark in commerce, to the best of his/her
`knowledge and belief no other person, firm, corporation, or
`association has the right to use the mark in commerce, either in the
`identical form thereof or in such near resemblance thereto as to be
`likely, when used on or in connection with the goods/services of
`such other person, to cause confusion, or to cause mistake, or to
`deceive; and that all statements made of his/her own knowledge
`are true and that all statements made on information and belief are
`believed to be true.”
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`Daniels denies the remaining averments of paragraph 7.
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`8.
`Daniels’ declaration is false and was false when made. The slogan that is the
`subject of the Registration did not originate with Daniels. T-shirts bearing identical or nearly
`identical slogans appear to have been available prior to the date of Daniels’ application and her
`claimed date of first use. See the items depicted in Attachment B which are exemplary.
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`ANSWER: Denied.
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`9.
`Similar slogans employing the “Sorry Boys... “ formula or other similar formulas
`are and have been commonly used in a gag sense to decorate t-shirts and other novelty items.
`See the items depicted in Attachment C which are exemplary.
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`ANSWER: Daniels is without knowledge sufficient to admit or deny the allegations of
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`paragraph 9.
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`10.
`Daniels also knowingly made material false misrepresentations in support of her
`petition to make the application special when she argued the petition to make special was
`imperative because her company Urban Bratz LLC was “in litigation with Spencer gifts LLC for
`copyright and trademark infringement.”
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`ANSWER: Denied.
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`11.
`This statement is also false. The proceeding Daniels referenced is Heather
`Daniels, et al. v. Spencer Gifts, LLC, et al., Case No. 10-cv-5345 (RGW) currently pending in
`the United States District Court for the Northern District of Illinois. Daniels’ complaint
`contained a count for copyright infringement and one single count for False Designation of
`Origin under Section 43(a) of the Lanham Act. Daniels’ complaint centers on an alleged
`copyright infringement of a slogan design, referring only to Daniel’s “copyrighted work” or
`“copyrighted materials.” The slogan design is the same as is shown on the specimen attached to
`the Registration. The complaint contained no claim of trademark rights in Daniels’ alleged
`mark. It contained no claim against Spencer for trademark infringement of the alleged mark.
`See attached as Attachment D, the complaint filed by Daniels in the above referenced proceeding
`(“the Federal Complaint”).
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`ANSWER: Denied.
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`12.
`Upon information and belief, Daniels submitted her trademark application in a
`belated effort to claim trademark rights where no such rights exist, and only after Spencer moved
`to dismiss the count of False Designation for failure to state a claim pursuant to Dastar Corp. v.
`Twentieth Century Fox Corp., 523 U.S. 23 (2003). All of her efforts were conducted with the
`intent to deceive the Trademark Office.
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`ANSWER: Denied.
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`13.
`Based on the aforementioned acts, Daniels has committed fraud in the
`procurement of the Registration, and the Registration should accordingly be cancelled.
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`CHIC_5253294.1
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`ANSWER: Denied.
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`14.
`Even if Daniels’ actions in obtaining the Registration were not fraudulent, the
`alleged mark which is the subject of the Registration is incapable of distinguishing Daniels’
`goods from the like goods of others, including Spencer, so that the Registration should be
`cancelled.
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`ANSWER: Denied.
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`15.
`The slogan claimed as a mark by Daniels is one of a number of common slogans
`employed by numerous entities before and since Daniels’ use of the slogan as ornamental
`designs in a gag sense to decorate t-shirts and other novelty goods. See the items in Attachments
`Band C which are exemplary.
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`ANSWER: Denied.
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`16.
`The slogan claimed as a mark by Daniels is one which has been in general use in
`diverse variations and is not and cannot be associated exclusively with any one entity.
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`ANSWER: Denied.
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`17.
`If Daniels is able to maintain her registration for the mark which is the subject of
`this Petition, Spencer and others would be damaged insofar as there would be a cloud on their
`ability to sell products which use such slogans as humorous, fun ornamental designs.
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`ANSWER: Denied.
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`18.
`The registration which is the subject of this Petition is a source of damage and
`injury to Spencer and others who sell products which use such common variations on popular
`catch phrases to amuse buyers and recipients, having nothing to do with source identification, by
`placing a cloud on their ability to sell products which use such phrases and by providing Daniels
`a basis to advance claims against them under the Lanham Act.
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`ANSWER: Denied.
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`AFFIRMATIVE DEFENSE – Unclean Hands
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`For its affirmative defense, Daniels pleads and states as follows:
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`1.
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`On or about March 23, 2009, Daniels contacted by email Spencer through Cori
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`Totoro who was then Associate Buyer of Spencer and informed Cori Totoro of Daniels products.
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`2.
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`Daniels inquired if Spencer would be interested in carrying Daniels’ line of
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`apparel and gave Spencer access to view Daniels’ apparel on the website:
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` www.Urban-Bratz.com. Daniels’ website included apparel bearing the now Registered
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`Trademark.
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`3.
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`Cori Totoro opened the email sent by Daniels, responded to Daniels and then
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`forwarded Daniels’ email to Spencer’s Roseanne Seger who at the time was Chief or Senior
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`Buyer for Spencer.
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`4.
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`On January 12, 2010, Daniels sent email advertisements to a number of potential
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`vendors, including to Cori Totoro at SpencerGifts.com. The email advertisements featured a
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`photo of a girl wearing a dress with the now Registered Trademark of Daniels. Cori Totoro
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`opened the advertisement email from Daniels on January 12, 2010 at 3:33 PM.
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`5.
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`On February 9, 2010, Cori Totoro, Associate Buyer of Spencer Gifts LLC,
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`requested additional information regarding Daniels’ product line.
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`6.
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`Spencer began using “SORRY BOYS MY DADDY SAYS I CAN’T DATE ‘TIL
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`I’M 30” mark (“the Infringing Mark”) in about October 2009.
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`7.
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`Spencer had actual knowledge of the now Registered Trademark at the time
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`Spencer began using the Infringing Mark and knew about Daniels’ prior use while it was
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`obtaining additional information from Daniels. Spencer appropriated the now Registered
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`Trademark for its own use in willful disregard of Daniels’ rights and with actual knowledge of
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`Daniels’ now Registered Trademark. Exhibit A depicts side by side comparison of Daniels’
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`mark and the Infringing Mark.
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`CHIC_5253294.1
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`8.
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`Therefore, Spencer has unclean hands and its Petition for Cancellation should be
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`dismissed for unclean hands.
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`WHEREFORE, Heather Daniels respectfully requests that the Petition for Cancellation be
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`dismissed and that the Board award such other and further relief as the Board should deem just
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`and equitable.
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`
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`Date: February 7, 2011
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`Respectfully Submitted,
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`
`
` /s/Jason A. Berta
`S.Z. Szczepanski
`Mary Jo Boldingh
`Jason A. Berta
`FOLEY & LARDNER LLP
`321 North Clark Street
`Suite 2800
`Chicago, Illinois 60654
`(312) 832-4500
`
`Attorneys For Respondent
`Heather Daniels
`
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`CHIC_5253294.1
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`CERTIFICATE OF SERVICE
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`I, Jason A. Berta, an attorney, hereby certify that on February 7, 2011, I caused a true and correct
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`copy of the attached AMENDED ANSWER to be served upon the below listed counsel for
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`Spencer Gifts, LLC on the dated stated above via email and First Class U.S. mail postage
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`John T. Gabrielides
`Brinks Hofer Gilson & Lione
`NBC Tower – Ste. 3600
`455 N. Cityfront Plaza Dr
`Chicago, IL 60611-5599
`jtg@brinkshofer.com
`
`
` /s/Jason A. Berta
`
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`prepaid:
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`Roberts Jacobs-Meadway
`Eckert Seamans Cherin & Mellott
`50 S. 16th St, Floor 22
`Two Liberty Place
`Philadelphia, PA 19102
`rjacobsmeadway@ecekrtseamans.com
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`CHIC_5253294.1
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`Exhibit A
`Exhibit A
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`

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`Exhibit A to Respondent's Amended Answer
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`Spencer Gifts, LLC v. Daniels
`Cancellation No. 92053383