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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA765784
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`Filing date:
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`08/22/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92063847
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`Party
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`Correspondence
`Address
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`Defendant
`James Arnim White
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`JAMES ARNIM WHITE
`2214 STEPHANIE BROOKE
`WENATCHEE, WA 98801-1304
`UNITED STATES
`jim@applecapital.net
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Answer
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`James White
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`jim@applecapital.net
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`/James Arnim White/
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`08/22/2016
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`Attachments
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`Answer to Petition to Cancel.pdf(27708 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In Regard: Registration No. 4,380,453
`Filed October 11, 2009
`Registered: August 6, 2013
`Mark: VESTAL VIRGIN WINES
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`VIRGIN ENTERPRISES, LIMITED
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`Petitioner
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`v.
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`JAMES ARNIM WHITE
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`Respondent
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`§
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`Cancelation Number 92063847
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`RESPONDENT’S ANSWER TO PETITION FOR CANCELLATION
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`Respondent James Arnim White, the owner and Registrant of Trademark
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`Registration No. 4,380,453 for the mark VESTAL VIRGIN WINES, hereby answers the
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`Petition for Cancellation filed June 9, 2016.
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`BACKGROUND
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`1.
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`The same allegations raised in Virgin Enterprises, Limited’s (VEL) present
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`Petition to Cancel were previously raised in VEL’s September 13, 2010 Opposition No.
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`91196447 and VEL’s July 1, 2011 Opposition No. 91200481 opposing Registrant’s
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`trademark applications for Vestal Virgin Winery and Vestal Virgins, respectively,
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`pertaining to wines made with grapes crushed by virgin women. Both of these Oppositions
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`filed by VEL were dismissed with prejudice against VEL by the Trademark Trial and
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`Appeal Board in December of 2013. It is important to note that none of Virgin Enterprises,
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`Limited’s trademarks have anything to do with virgin, chaste or celibate women.
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`Registrant’s Answer to Petition for Cancelation 1
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`Cancelation Number 92063847
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`2.
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`As evidenced by VEL’s other two opposition filings, VEL was well aware of
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`Registrant’s October 11, 2009 trademark application for Vestal Virgin Wines, but chose
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`not to timely file an Opposition as required by Section 13(a) of the Lanham Act, 15 U.S.C.
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`§ 1063(a). VEL lack of diligence and activity to move forward with legal proceeding by
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`filing an opposition to Registrant’s application constitutes estoppel by laches under Section
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`19 of the Lanham Act, 15 U.S.C. § 1069, and should preclude the Petitioner from raising
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`these same counts in this Petition to Cancel at this late date.
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`3.
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`Registrant/Respondent has not abandoned his trademark and continues to use the
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`Vestal Virgin Wines mark since it was issued.
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`RESPONDENT’S ANSWER TO PETITION TO CANCEL
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`4.
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`For the reasons stated in paragraphs 1 through 3 above, and for reasons further
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`described in Respondent’s earlier TTAB filings to Petitioner’s unsuccessful Opposition
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`No. 91196447 and Opposition No. 91200481 for Vestal Virgin Winery and Vestal
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`Virgins, the Registrant/Respondent hereby denies the Petitioner’s assertions described in
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`Counts I – Likelihood of Confusion, Count II – Dilution, and Count III – Abandonment,
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`of their Petition to Cancel dated June 9, 2016.
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`COUNTERCLAIM I: PETITIONER’S EXISTING TRADEMARK IS
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`UNREGISTERABLE, 15 U.S.C. § 1052€
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`5.
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`Contrary to Section 2 of the Lanham Act, 15 U.S.C. § 1052(e), VEL’s existing
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`trademark for “Virgin Wines” is deceptively misdescriptive because their wines are not
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`produced from grapes crushed by virgins. This is in contrast to Vestal Virgin Wines, which
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`are marketed as wine made from grapes crushed by virgin women.
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`Registrant’s Answer to Petition for Cancelation 2
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`Cancelation Number 92063847
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`PRAYER FOR RELIEF
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`WHEREFORE, Registrant/Respondent prays that the current Petition to Cancel
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`Vestal Virgin Wines be dismissed, and that the Registrant’s trademark be affirmed.
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`Registrant/Respondent also prays that Petitioner be prohibited from claiming that their
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`wine is made from grapes crushed by virgins unless agreed to by the Registrant.
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`Respectfully submitted,
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`__/James Arnim White/______________________
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`James Arnim White, Registrant/Respondent
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`2214 Stephanie Brooke
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`Wenatchee, Washington 98801
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`RESPONDENT, Pro Se
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`Date: August 21, 2016
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`Registrant’s Answer to Petition for Cancelation 3
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`Cancelation Number 92063847
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Respondent’s
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`Answer to Petition to Cancel has been served on Petitioner’s counsel, Shyla N. Jones, by
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`mailing said copy on this 21st day of August, 2016, via First Class U.S. Mail, postage
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`prepaid to: Norvell IP LLC, P.O. Box 2461, Chicago, IL 60690.
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`__/James Arnim White/_
`James Arnim White, Registrant/Respondent
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`August 21, 2016
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`CERTIFICATE OF ELECTRONIC FILING
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`I hereby certify that this correspondence is being transmitted by electronic mail to
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`the United States Patent and Trademark Office, Trademark Trial and Appeal Board via
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`ESTTA with any required fees on August 21, 2016.
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`__/James Arnim White/_
`James Arnim White, Registrant/Respondent
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`August 22, 2016
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`Registrant’s Answer to Petition for Cancelation 4
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`Cancelation Number 92063847

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