Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA552016
`ESTTA Tracking number:
`08/02/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057122
`Plaintiff
`Neways, Inc.
`MATTHEW A BARLOW
`WORKMAN NYDEGGER
`1000 EAGLE GATE TOWER, 60 EAST SOUTH TEMPLE
`SALT LAKE CITY, UT 84111
`UNITED STATES
`mbarlow@wnlaw.com, tvuksinick@wnlaw.com, jstringham@wnlaw.com,
`rphillips@wnlaw.com
`Answer to Counterclaim
`Matthew A. Barlow
`mbarlow@wnlaw.com, vgarrett@wnlaw.com
`/Matthew A. Barlow/
`08/02/2013
`Neways Answer to Counterclaim.pdf(161959 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`CANCELLATION PROCEEDING
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`File No. 14564.127.1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`In the matter of Trademark Registration No. 3,448,249
`Mark: NEW-WHEY
`Registered: June 17, 2008
`-and-
`Trademark Registration No. 4,214,663
`For the Mark: NEW WHEY NUTRITION
`Registered: September 25, 2012
`-and-
`Trademark Registration No. 4,172,454
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`
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`Cancellation No. 92057122
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`RGVKVKQPGT"PGYC[U."KPE0ÓU"
`ANSWER TO REGISTRANT
`NEW WHEY NUTRITION,
`NNEÓU"EQWPVGTENCKO"HQT"
`PARTIAL CANCELLATION OF
`PGYC[UÓ"TGIKUVTCVKQPU
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`For the Mark:
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`Registered: July 10, 2012
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`NEWAYS, INC.,
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`Petitioner,
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`v.
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`NEW WHEY NUTRITION, LLC, f/k/a
`TOPSPIN-IDS ACQUISITION, LLC
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`Registrant.
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`
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`In response to the Counterclaim fqt"Rctvkcn"Ecpegnncvkqp"Qh"Pgyc{uÓ"Tgikuvtcvkqpu"hkngf"
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`
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`by registrant New Whey Nutrition, LLC, f/k/a Topspin-IDS Acquisition, LLC0"*ÐRegistrantÑ+"
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`in New Whey Nutrition, LLEÓu" Cpuygt." Chhktocvkxg" Fghgpugu." cpf" Eqwpvgtenckou" vq"
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`

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`Rgvkvkqpgt" Pgyc{u." Kpe0Óu" Rgvkvkqp" vq" Ecpegn, dated Lwpg" 34." 4235" *Ðvjg" EqwpvgtenckoÑ+,
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`Petitioner and Counterclaim Defendant Neways, Inc. *ÐNewaysÑ+"cpuygts as follows:
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`Neways denies that Registrant iu"qt"yknn"dg"fcocigf"d{"vjg"Pgyc{uÓ"Tgikuvtcvkqpu"cu"
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`alleged in the first unnumbered paragraph of the Counterclaim. To the extent that the
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`remaining allegations of the first unnumbered paragraph of the Counterclaim constitute
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`allegations of fact to which a response is required, Neways hereby denies the same.
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`1.
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`Neways is without knowledge or information sufficient to form a belief as to
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`the truth of the matters asserted paragraph 1 of the Counterclaim, and therefore denies same.
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`2.
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`Neways is without knowledge or information sufficient to form a belief as to
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`the truth of the matters asserted paragraph 2 of the Counterclaim, and therefore denies same.
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`3.
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`Neways is without knowledge or information sufficient to form a belief as to
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`the truth of the matters asserted paragraph 3 of the Counterclaim, and therefore denies same.
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`4.
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`Neways admits that a review of the Trademark Electronic Search System
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`*ÐTESSÑ+ fcvcdcug"qh"vjg"Wpkvgf"Uvcvgu"Rcvgpv"cpf"Vtcfgoctm"Qhhkeg"*ÐRVQÑ+"ujqyu"vjcv"the
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`application that eventually matured into U.S. Trademark Registration No. 3448249 for the
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`octm"ÐPGY-YJG[Ñ"hqt"iqqfu"nkuvgf"cu"Ðpwvtkvkqpcnn{"hqtvkhkgf"dgxgtcigu"eqpvckpkpi"yjg{"
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`rtqvgkpÑ"kp"kpvgtpcvkqpcn"encuu"227"ycu"hkngf"d{"Uwrrngogpv"U{pgti{."Kpe0"qp"Cwiwuv"36."4229"
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`and was registered on June 39."422:"*Ðvjg"Ó46;"TgikuvtcvkqpÑ+0""Pgyc{u"hwtvjgt"cfokvu"vjcv"vjg"
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`Ó46;"Tgikuvtcvkqp"enckou"c"fcvg"qh"hktuv"wug"cv"ngcuv"cu"gctn{"cu"Hgdtwct{"4:."4228"cpf"c"fcvg"qh"
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`first use in commerce at least as early as March 31, 2006. Neways specifically denies the
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`cnngicvkqp"ugv"hqtvj"kp"rctcitcrj"6"qh"vjg"Eqwpvgtencko"vjcv"vjg"Ó46;"Tgikuvtcvkqp"ycu"hkngf"
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`Ð]k_p"4228Ñ."vjcv"vjg"Ó46;"Tgikuvtcvkqp"ycu"hkngf"d{"Pgy"Yjg{"Pwvtkvkqp."cpf"vjcv"vjg"Ó46;"
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`Tgikuvtcvkqp"Ðocvwtgf"È"qp"Cwiwuv"36."4229]0_Ñ""Pgyc{u"hwtvjgt"cfokvu"vhat Topspin-IDS
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`PGYC[UÓ"CPUYGT
`TO COUNTERCLAIM
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`2
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`

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`Acquisition, LLC (which later changed its name to New Whey Nutrition, LLC) is the listed
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`applicant of the trademark application that matured into U.S. Trademark Registration No.
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`6436558"hqt"vjg"octm"PGY"YJG["PWVTKVKQP"hqt"iqqfu"nkuvgf"cu"Ðputritional supplement
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`eqpvckpkpi"yjg{"rtqvgkpÑ"kp"kpvgtpcvkqpcn"encuu"227"*Ðvjg"Ó558"TgikuvtcvkqpÑ+0""Neways further
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`admits that Topspin-IDS Acquisition, LLC is the listed applicant of the trademark application
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`that matured into U.S. Trademark Registration No. 4172454 for the mark NEW WHEY
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`PWVTKVKQP"*rnwu"fgukip+"hqt"iqqfu"nkuvgf"cu"Ðnutritional supplements containing whey
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`proteinÑ"kp"kpvgtpcvkqpcn"encuu"227"*Ðvjg"Ó676"TgikuvtcvkqpÑ+0""Pgyc{u"fgpkgu"all remaining
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`allegations of paragraph 4 of the Counterclaim.
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`5.
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`Neways admits that a review of the Trademark Status & Document Retrieval
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`database of the PTO shows that the database does not identify an instance where any of
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`Pgyc{uÓ"vtcfgoctm"tgikuvtcvkqpu"ygtg"ekvgf"cickpuv"vjg"Pgy"Yjg{"Pwvtkvkqp"Tgikuvtcvkqpu0""
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`Neways further admits that Neways did not oppose the applications that matured into the New
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`Whey Nutrition Registrations, nor did Neways contact New Whey Nutrition to object to the
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`applications before they were registered. Neways denies all remaining allegations of
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`paragraph 5 of the Counterclaim.
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`6.
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`Neways admits that on November 11, 2010, Topspin-IDS Acquisition, LLC
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`filed with the PTO an application for registration of the mark NEW WHEY for goods listed as
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`Ðnutritionally fortified beverages containing whey proteinÑ"kp"kpvgtpcvkqpcn"encuu"227."yjkej"
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`was assigned Trademark Application Serial No. 85174478"*Ðvjg"Ó478"CrrnkecvkqpÑ+0""Pgyc{u"
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`further admits that a review of the Trademark Status and Document Retrieval database of the
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`PTO shows that the examiner did pqv"ekvg"cp{"qh"Pgyc{uÓ"tgikuvtcvkqpu"cickpuv"vjg"Ó478"
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`PGYC[UÓ"CPUYGT
`TO COUNTERCLAIM
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`Crrnkecvkqp."cpf"vjcv"vjg"Ó478"Crrnkecvkqp"ycu"eventually published for opposition. Neways
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`denies all remaining allegations of paragraph 6 of the Counterclaim.
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`7.
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`Neways admits that it filed an opposition cickpuv"vjg"Ó478"Crrnkecvkqp"qp"
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`August 17, 2011, which was assigned Opposition No. 91201238 by the Trademark Trial and
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`Appeal Board and which is currently pending. Neways further admits that as of August 17,
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`2011, it had not petitioned to cancel any of the trademark registrations owned by New Whey
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`Nutrition. Neways denies all remaining allegations of paragraph 7 of the Counterclaim.
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`8.
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`Neways admits that it is a privately held enterprise, and that it manufactures and
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`distributes an extensive line of quality, safety-conscious personal care products, household
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`products, and nutritional supplements. Neways further admits that it sells nutritional
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`supplements under the NEWAYS mark that include Cleansing Tea, Feelin Good, and
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`Digestamin products, among others. Neways further admits that it sells personal care products
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`and household products identified on its website, also under its NEWAYS mark. The
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`Wikipedia web page and the Neways web site referred to in paragraph 8 speak for themselves.
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` Neways denies all remaining allegations of paragraph 8 of the Counterclaim.
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`9.
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`Neways admits that what purports to be a copy of the Wikipedia web page
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`referenced in paragraph 9 is attached to the Counterclaim as Exhibit B. The referenced web
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`page speaks for itself. Neways denies all remaining allegations of paragraph 9 of the
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`Counterclaim.
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`10.
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`Neways admits that it does not distribute its products on Amazon.com. Neways
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`further admits that retail customers that go directly to Neways website, as opposed to accessing
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`Neways website from a distributor website, are required to identify a referring distributor to
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`access and make purchases from the website, and that the referring distributor receives credit
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`PGYC[UÓ"CPUYGT
`TO COUNTERCLAIM
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`for referred retail customer purchases. The referred-to exhibits speak for themselves.]
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`Neways denies all remaining allegations of paragraph 10 of the Counterclaim.
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`11.
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`Neways admits that it has used its NEWAYS marks on its products since at
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`least as early as 1992. Neways is without information and belief as to when New Whey
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`Nutrition began using its NEW WHEY marks, and therefore denies the remaining allegations
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`of paragraph 11 of the Counterclaim.
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`12.
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`Neways admits paragraph 12 of the Counterclaim sets forth a listing of
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`registrations owned by Neways and identified in the Petition for Cancellation filed by Neways
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`in the above-captioned action. The registrations speak for themselves. Neways further admits
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`that Registration Nos. 2656486 and 2656490 were cancelled by the PTO. Neways denies any
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`remaining allegations of paragraph 12 of the Counterclaim.
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`13.
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`The Petition for Cancellation speaks for itself. Neways denies all other
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`allegations of paragraph 13 of the Counterclaim.
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`14.
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`15.
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`Neways denies the allegations of paragraph 14 of the Counterclaim.
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`Neways denies the allegations of paragraph 15 of the Counterclaim.
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`Any allegation of the Counterclaim not specifically admitted is denied.
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`AFFIRMATIVE DEFENSES
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`Without admitting or acknowledging that it bears the burden of proof as to any of the
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`defenses set forth herein, Neways alleges the following as affirmative or additional defenses to
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`the Counterclaim:
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`FIRST AFFIRMATIVE DEFENSE
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`TgikuvtcpvÓu"Eqwpvgtencko"hcknu"vq"uvcvg"c"encko"wrqp"yjkej"tgnkgh"ecp"dg"itcpvgf0
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`PGYC[UÓ"CPUYGT
`TO COUNTERCLAIM
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`5
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`SECOND AFFIRMATIVE DEFENSE
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`Tgikuvtcpv"ku"pqv"nkmgn{"vq"dg"fcocigf"d{"cp{"qh"Pgyc{uÓ"vtcfgoctm"registrations and,
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`therefore, lack standing to partially cancel Pgyc{uÓ"vtcfgoctm registrations.
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`Neways reserves the right to amend or supplement its answers and defenses as more
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`information becomes available during discovery in this matter.
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`RELIEF REQUESTED
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`In view of the foregoing, Neways respectfully requests that the relief requested by
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`Registrant be denied, that the Counterclaim be dismissed with prejudice, and that the
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`registration of United States Registration Nos. Registration Nos. 2471380, 2389764, 2731042,
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`2492629, 279001, 3006252, 3850494, 3709468, 3703119, 2454358, 2414219, 2779438,
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`2943333, 2984458 be upheld.
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`DATED this 2nd day of August, 2013.
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`Respectfully submitted,
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`/Matthew A. Barlow/
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`John C. Stringham, Reg. No. 40,831
`Thomas R. Vuksinick
`Matthew A. Barlow
`
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, Utah 84111
`Telephone:
`(801) 533-9800
`Facsimile:
`(801) 328-1707
`jstringham@wnlaw.com
`tvuksinick@wnlaw.com
`mbarlow@wnlaw.com
`
`ATTORNEYS FOR PETITIONER
`NEWAYS, INC.
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`PGYC[UÓ"CPUYGT
`TO COUNTERCLAIM
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`6
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`

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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a true and correct copy of the foregoing PETITIONER
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`PGYC[U."KPE0ÓU"CPUYGT"VQ"REGISTRANT PGY"YJG["PWVTKVKQP."NNEÓU"
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`EQWPVGTENCKO" HQT" RCTVKCN" ECPEGNNCVKQP" QH" PGYC[UÓ"
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`REGISTRATIONS was served upon Applicant via U.S. Mail and is addressed to the counsel
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`of record for Applicant:
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`Peter M. Brody
`Nicole Rizzo Smith
`Meera Nair
`ROPES & GRAY LLP
`One Metro Center
`700 12th Street NW, Suite 900
`Washington, DC 20005
`peter.brody@ropesgray.com
`nicole.smith@ropesgray.com
`meera.nair@ropesgray.com
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`Dated this 2nd day of August, 2013.
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` /Matthew A. Barlow/ .
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`4173766_1
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`PGYC[UÓ"CPUYGT
`TO COUNTERCLAIM
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`7