Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1286081
`
`Filing date:
`
`05/18/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081615
`
`Party
`
`Correspondence
`address
`
`Defendant
`The Flemings Group LLC
`
`DAVID S. MCDANIEL
`TAFT STETTINIUS & HOLLISTER LLP
`27777 FRANKLIN ROAD, STE. 2500
`33717 WOODWARD AVE., #202
`SOUTHFIELD, MI 48034
`UNITED STATES
`Primary email: dmcdaniel@taftlaw.com
`248-351-3000
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`David McDaniel
`
`dmcdaniel@taftlaw.com
`
`/David McDaniel/
`
`05/18/2023
`
`Attachments
`
`Answer to Amended Petition for Cancellation.pdf(198743 bytes )
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Petitioner,
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92081615
`
`Registration No. 6404679
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`________________________________
`MARK STARKY,
`
`
`
`
`
`
`v.
`
`THE FLEMINGS GROUP, LLC,
`
`Respondent.
`
`________________________________
`
`
`ANSWER TO PETITIONER’S AMENDED PETITION FOR CANCELLATION
`
`Respondent The Flemings Group, LLC (“TFG”), by its undersigned counsel, states the
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`following for its Answer to Petitioner’s Amended Petition for Cancellation:
`
`1.
`
`On information and belief, Respondent is the owner of U.S. Trademark Registration
`
`No. 6,404,679 for the Flemings Mark for use in connection with “Arranging and conducting
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`educational conferences; Conducting fitness classes; Educational services, namely, conducting
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`classes, seminars, conferences, workshops, and summits being educational conferences in the field
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`of product promotion, marketing and business strategy and distribution of training material in
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`connection therewith; Educational services, namely, conducting festivals featuring primarily
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`instructional and entertaining exhibits in the field of product promotion, marketing and business
`
`strategy and distribution of educational materials in connection therewith; Educational services,
`
`namely, providing educational speakers in the field of product promotion, marketing and business
`
`strategy; Health clubs for physical exercise; Leadership development training in the field of
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`business; Organizing community festivals featuring primarily instructional seminars and
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`educational conferences in the field of promoting entrepreneurship, promotional services,
`
`marketing and business strategy; Personal coaching services in the field of product promotion,
`
`
`
`1
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`

`

`
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`marketing and business strategy; Training in the field of design, advertising and communication
`
`technologies,” in International Class 41.
`
`ANSWER: Admitted that TFG owns U.S. Trademark Registration No. 6404679 (the “‘679
`Registration”) for the standard character mark MODERN ATHLETE for “Arranging and
`conducting educational conferences; Conducting fitness classes; Educational services,
`namely, conducting classes, seminars, conferences, workshops, and summits being
`educational conferences in the field of product promotion, marketing and business strategy
`and distribution of training material in connection therewith; Educational services, namely,
`conducting festivals featuring primarily instructional and entertaining exhibits in the field
`of product promotion, marketing and business strategy and distribution of educational
`materials in connection therewith; Educational services, namely, providing educational
`speakers in the field of product promotion, marketing and business strategy; Health clubs
`for physical exercise; Leadership development training in the field of business; Organizing
`community festivals featuring primarily instructional seminars and educational conferences
`in the field of promoting entrepreneurship, promotional services, marketing and business
`strategy; Personal coaching services in the field of product promotion, marketing and
`business strategy; Training in the field of design, advertising and communication
`technologies” in International Class 41. TFG lacks knowledge or information sufficient to
`form a belief as to the remaining allegations of this paragraph.
`
`
`Petitioner is the owner of U.S. Trademark Application No. 97/188,083 for the mark
`
`2.
`
`MODERN ATHLETE (hereinafter the “Starkey Mark”) based upon his intention to use that mark
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`on and in connection with “Streaming of videos via the internet featuring advice and instruction
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`on health and wellness, weight loss and exercise; providing internet chatrooms in the field of
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`exercise, fitness and nutrition,” in International Class 41, and “Providing a web site featuring on-
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`line instruction in the field of physical exercise and nutrition and tracking progress of exercise
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`workouts; educational services and on-line educational services, namely, providing instruction and
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`training in the fields of exercise equipment, physical exercise and diet and nutrition, and
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`instructional materials distributed in connection therewith; educational services, namely, tracking
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`progress of exercise workouts for others,” in International Class 42.
`
`ANSWER: Admitted that Petitioner is identified on the USPTO website as the listed
`owner of Application Serial No. 97188083 (the “‘083 Application”) for the standard
`character mark MODERN ATHLETE for “Streaming of videos via the internet featuring
`advice and instruction on health and wellness, weight loss and exercise; providing internet
`
`
`
`2
`
`

`

`
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`chatrooms in the field of exercise, fitness and nutrition” in International Class 38, and
`“Providing a web site featuring on-line instruction in the field of physical exercise and
`nutrition and tracking progress of exercise workouts; educational services and on-line
`educational services, namely, providing instruction and training in the fields of exercise
`equipment, physical exercise and diet and nutrition, and instructional materials distributed
`in connection therewith; educational services, namely, tracking progress of exercise
`workouts for others in the nature of providing sports specific skills base training” in
`International Class 41. TFG lacks knowledge or information sufficient to form a belief about
`the truth of the remaining allegations of this paragraph.
`
`
`The Flemings Mark and the Starkey Mark are physically and phonetically identical.
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`3.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`The Flemings Mark and the Starkey Mark are both for, among other things, physical
`
`4.
`
`fitness instruction in International Class 41.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`5.
`
`Petitioner has expended substantial monies in marketing, advertising and
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`promoting the Starkey Mark in connection with the preparation of its services in interstate
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`commerce in the United States.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`COUNT I - ABANDONMENT
`
`
`
`6.
`
`Petitioner hereby incorporates the allegations contained in Paragraph Nos. 1-5 by
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`reference herein.
`
`ANSWER: TFG incorporates its responses to the previous paragraphs by reference as if
`fully stated here.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, research
`
`7.
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`regarding the Flemings Mark did not disclose any existing use of that mark in commerce in
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`connection with the Class 41 services for which it was registered.
`
`
`
`3
`
`

`

`
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, a search of
`
`8.
`
`Respondent’s website at www.modernathlete.com only disclosed use of the Flemings Mark in
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`connection with Class 25 goods. The site stated “Modern Athlete (MA) is an American luxury
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`fashion label[.]” The site did not promote, advertise, or reference the Flemings Mark in connection
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`with any of the Class 41 services listed in the registration.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, a search of
`
`9.
`
`Respondent’s Twitter page at www.twitter.com only disclosed use of the Flemings Mark in
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`connection with Class 25 goods. The page stated “Modern Athlete is a life+style luxury web 3
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`fashion+wellness brand merging physical wearables + NFTs.” The site did not promote, advertise,
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`or reference the Flemings Mark in connection with any of the Class 41 services listed in the
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`registration.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, a search of
`
`10.
`
`Respondent’s Twitter page at www.instagram.com only disclosed use of the Flemings Mark in
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`connection with Class 25 goods. The page stated “Modern Athlete is a life + style luxury wellness
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`brand. It’s a product company …” Emphasis added. The site did not promote, advertise, or
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`reference the Flemings Mark in connection with any of the Class 41 services listed in the
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`registration.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`
`
`4
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`

`

`
`
`11.
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`A search of the U.S. Trademark Office’s TSDR database discloses that Respondent
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`has more recently filed pending U.S. Trademark Application Serial No. 90/749,019 for the word
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`mark MODERN ATHLETE for Class 25 goods only.
`
`ANSWER: Admitted that on June 2, 2021, TFG filed Application Serial No. 90749019 for
`registration of a standard character MODERN ATHLETE mark for various goods in
`International Class 25. TFG lacks knowledge or information sufficient to form a belief about
`the truth of the remaining allegations of this paragraph.
`
`
`A search of the U.S. Trademark Office’s TSDR database discloses that Respondent
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`12.
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`has more recently filed pending U.S. Trademark Application Serial No. 90/771,665 for a design
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`mark also containing the words MODERN ATHLETE for Class 25 goods only.
`
`ANSWER: Admitted that on June 14, 2021, TFG filed Application Serial No. 90771665
`for registration of a composite MODERN ATHLETE mark for various goods in
`International Class 25. TFG lacks knowledge or information sufficient to form a belief about
`the truth of the remaining allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, the two
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`13.
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`aforementioned pending applications confirmed Petitioner’s findings about the current and actual
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`use of the Flemings Mark in commerce.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, and despite
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`14.
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`additional, extensive research, Petitioner had been unable to locate any current or continued use of
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`the Flemings Mark, or any information about how or where it may learn more about the services
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`connected to and bearing the Flemings Mark in connection with any of the Class 41 services
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`depicted in the registration.
`
`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`As a result, Respondent had abandoned any and all use of the Flemings Mark as a
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`15.
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`
`
`5
`
`

`

`
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`source identifier in the United States in actual use in commerce on or in connection with the sale
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`or offer for sale of any of the services in its U.S. Registration No. 6,404,679 with no intent to
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`resume use.
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`ANSWER:
`
`
` Denied as untrue.
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`16.
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`As of February 16, 2023, the date of the initial Petition for Cancellation, Petitioner’s
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`research showed that Respondent clearly had no intention to resume use of the mark in connection
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`with its Class 41 services.
`
`ANSWER: Denied as untrue that TFG abandoned the MODERN ATHLETE mark in the
`‘679 Registration. TFG lacks knowledge or information sufficient to form a belief about the
`truth of the remaining allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation, the lack of
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`17.
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`use of the Flemings Mark in connection with any of the Class 41 services depicted in the
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`registration showed that Respondent clearly had no intention to resume use of the mark in
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`connection with its Class 41 services.
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`ANSWER: Denied as untrue that TFG abandoned the MODERN ATHLETE mark in the
`‘679 Registration. TFG lacks knowledge or information sufficient to form a belief about the
`truth of the remaining allegations of this paragraph.
`
`
`As of February 16, 2023, the date of the initial Petition for Cancellation,
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`18.
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`Respondent’s two more recent application filings of the Flemings Mark and related design mark
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`in Class 25 showed that Respondent clearly had no intention to resume use of the mark in
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`connection with its Class 41 services.
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`ANSWER: Denied as untrue that TFG abandoned the MODERN ATHLETE mark in the
`‘679 Registration. TFG lacks knowledge or information sufficient to form a belief about the
`truth of the remaining allegations of this paragraph.
`
`
`On or about March 29, 2023, two days after Respondent filed and served its Motion
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`19.
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`to Dismiss, Respondent’s website at www.modernathlete.com miraculously contained a
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`
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`6
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`

`

`
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`“Training” link on its website.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`Respondent’s curious and “fast and furious” timing of the addition of a “Training”
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`20.
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`link to its website after it had received the initial Petition for Cancellation but before an amended
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`Petition for Cancellation was filed is a transparent ploy perpetrated upon Petitioner and the Board.
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`It is a mere token effort to show that Respondent maintains an “intention” to use the mark in Class
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`41. It offensively fools nobody.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph, but states in further answer that any allegation or
`implication of wrongdoing contained in this paragraph is denied as untrue.
`
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`In addition, and though the Flemings Mark was registered for “Arranging and
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`21.
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`conducting educational conferences; Conducting fitness classes; Educational services, namely,
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`conducting classes, seminars, conferences, workshops, and summits being educational
`
`conferences in the field of product promotion, marketing and business strategy and distribution of
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`training material in connection therewith; Educational services, namely, conducting festivals
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`featuring primarily instructional and entertaining exhibits in the field of product promotion,
`
`marketing and business strategy and distribution of educational materials in connection therewith;
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`Educational services, namely, providing educational speakers in the field of product promotion,
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`marketing and business strategy; Health clubs for physical exercise; Leadership development
`
`training in the field of business; Organizing community festivals featuring primarily instructional
`
`seminars and educational conferences in the field of promoting entrepreneurship, promotional
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`services, marketing and business strategy; Personal coaching services in the field of product
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`promotion, marketing and business strategy; Training in the field of design, advertising and
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`communication technologies,” the Flemings Mark was never used for many of the listed services.
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`
`
`7
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`

`

`
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`ANSWER: Admitted that the ‘679 Registration is for “Arranging and conducting
`educational conferences; Conducting fitness classes; Educational services, namely,
`conducting classes, seminars, conferences, workshops, and summits being educational
`conferences in the field of product promotion, marketing and business strategy and
`distribution of training material in connection therewith; Educational services, namely,
`conducting festivals featuring primarily instructional and entertaining exhibits in the field
`of product promotion, marketing and business strategy and distribution of educational
`materials in connection therewith; Educational services, namely, providing educational
`speakers in the field of product promotion, marketing and business strategy; Health clubs
`for physical exercise; Leadership development training in the field of business; Organizing
`community festivals featuring primarily instructional seminars and educational conferences
`in the field of promoting entrepreneurship, promotional services, marketing and business
`strategy; Personal coaching services in the field of product promotion, marketing and
`business strategy; Training in the field of design, advertising and communication
`technologies.” TFG lacks knowledge or information sufficient to form a belief about the truth
`of the remaining allegations of this paragraph.
`
`
`As a result of many of the Class 41 services never being used in connection with
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`22.
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`the Flemings Mark, the resulting application should have been void ab initio, as a mark may only
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`be registered in connection with goods and services with which it is actually being used in
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`commerce.
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`ANSWER: Denied as untrue that the resulting application should have been void ab initio.
`TFG lacks knowledge or information sufficient to form a belief about the truth of the
`remaining allegations of this paragraph.
`
`
`Upon information and belief, Respondent never used the Flemings Mark in
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`23.
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`connection with “Educational services, namely, conducting festivals featuring primarily
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`instructional and entertaining exhibits in the field of product promotion, marketing and business
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`strategy and distribution of educational materials in connection therewith.”
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`Upon information and belief, Respondent never used the Flemings Mark in
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`24.
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`connection with “Educational services, namely, providing educational speakers in the field of
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`product promotion, marketing and business strategy.”
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`
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`8
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`

`

`
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
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`25.
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`Upon information and belief, Respondent never used the Flemings Mark in
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`connection with “Health clubs for physical exercise.”
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
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`Upon information and belief, Respondent never used the Flemings Mark in
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`26.
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`connection with “Organizing community festivals featuring primarily instructional seminars and
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`educational conferences in the field of promoting entrepreneurship, promotional services,
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`marketing and business strategy.”
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
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`Upon information and belief, Respondent never used the Flemings Mark in
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`27.
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`connection with “Training in the field of design, advertising and communication technologies.”
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`At the time Respondent declared its proof of use of the Flemings Mark in
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`28.
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`connection with its original application that resulted in the subject registration, Respondent knew
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`or should have known that it was not actually using the Flemings Mark in connection with all of
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`the services for which it applied and for which it subsequently allowed its mark to register.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
`
`COUNT II – FRAUD
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`29.
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`Petitioner hereby incorporates the allegations contained in Paragraph Nos. 1-28 by
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`reference herein.
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`9
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`

`

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`ANSWER: TFG incorporates its responses to the previous paragraphs by reference as if
`fully stated here.
`
`
`On information and belief, when Respondent submitted proof of use of the
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`30.
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`Flemings Mark and declared to the U.S. Patent and Trademark Office that it was using its mark in
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`connection with its Class 41 services, Respondent knew it was not using its mark in connection
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`with all of the Class 41 services listed therein.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
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`On information and belief, when Respondent secured registration of the Flemings
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`31.
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`Mark, Respondent knew it was not using its mark in connection with all of the Class 41 services
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`listed therein.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
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`32.
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`Prior to receiving Petitioner’s Petition for Cancellation on February 16, 2023,
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`Respondent had no intention to resume use of the Flemings Mark for any of the Class 41 services
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`listed in its registration.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
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`When Respondent added a link for “Training” to its website, Respondent did so in
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`33.
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`direct, “knee-jerk” response to the initial Petition for Cancellation.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
`
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`34. When Respondent added a link for “Training” to its website on or about March 29,
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`2023, it had no intention of resuming use of its mark in connection with its Class 41 services.
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`ANSWER: TFG lacks knowledge or information sufficient to form a belief about the truth
`of the allegations of this paragraph.
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`
`
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`10
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`

`
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`35. When Respondent added a link for “Training” to its website in a reactive measure
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`to negate the initial Petition for Cancellation which began this proceeding, Respondent perpetrated
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`a fraud upon both Petition and the Board.
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`ANSWER: Denied as untrue that TFG committed any fraud. TFG lacks knowledge or
`information sufficient to form a belief about the truth of the remaining allegations of this
`paragraph.
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`Respondent only intends to use the Flemings Mark in connection with Class 25
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`36.
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`goods and any illusions to the contrary in an effort to deny the initial Petition for Cancellation are
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`transparently fraudulent.
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`ANSWER: Denied as untrue.
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`37.
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`As a result of Respondent’s actions highlighted in Paragraph Nos. 29-36,
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`Respondent has thus committed fraud upon the U.S. Patent and Trademark Office in the
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`preservation and sustainment of Respondent’s aforementioned U.S. Trademark Registration No.
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`6,79404,6 for the Flemings Mark.
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`ANSWER: Denied as untrue.
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`AFFIRMATIVE DEFENSES
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`Respondent, by undersigned counsel, states the following for its affirmative defenses to the
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`
`
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`foregoing Petition for Cancellation:
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`Petitioner has failed to state a claim on which relief can be granted.
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`Petitioner’s claims are barred, in whole or in part, by latches.
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`Petitioner’s claims are barred, in whole or in part, by waiver, acquiescence, or
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`1.
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`2.
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`3.
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`estoppel.
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`4.
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`Petitioner’s claims are barred, in whole or in part, under the doctrine of unclean
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`hands.
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`11
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`5.
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`6.
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`Petitioner lacks standing, in whole or in part, to pursue its claims.
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`To the extent cancellation is warranted on any ground asserted in the Petition, the
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`registration is subject to only partial, not full, cancellation, such as by striking particular services.
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`7.
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`Respondent reserves the right to assert additional defenses that may appear or
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`become known during the course of these proceedings.
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`CONCLUSION
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`
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`Respondent respectfully requests that the Board enter an order granting this motion,
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`dismissing the Petition, and granting such other relief as the Board deems appropriate.
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`Dated: May 18, 2023
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`Respectfully submitted,
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`TAFT STETTINIUS & HOLLISTER LLP
`
`
`
`/s/ David S. McDaniel
`
`
`David S. McDaniel (MI Bar. No. P56994)
`Counsel for Respondent
`27777 Franklin Road, Ste. 2500
`Southfield, MI 48034
`(248) 351-3000
`dmcdaniel@taftlaw.com
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`12
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on March 18, 2023 he served a copy of the foregoing
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`paper on Petitioner’s counsel of record, Andrew N. Spivak, by email to the email address
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`aspivak@mosiaclegalgroup.com.
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`/s/ David S. McDaniel
`
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`David S. McDaniel (MI Bar. No. P56994)
`TAFT STETTINIUS & HOLLISTER LLP
`Counsel for Respondent
`27777 Franklin Road, Ste. 2500
`Southfield, MI 48034
`(248) 351-3000
`dmcdaniel@taftlaw.com
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`13
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`
`
`