Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA782264
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`Filing date:
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`11/10/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`94002699
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`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
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`Date
`
`User
`Frosty King, Inc.
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`FROSTY KING INC
`5190 NIEL RD SUITE 430
`RENO, NV 89502
`UNITED STATES
`
`Other Motions/Papers
`
`James M. Duncan
`
`JDuncan@kleinlaw.com
`
`/James M. Duncan/
`
`11/10/2016
`
`Attachments
`
`Answer.pdf(260507 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA782264
`
`Filing date:
`
`11/10/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`94002699
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`User
`Frosty King, Inc.
`
`FROSTY KING INC
`5190 NIEL RD SUITE 430
`RENO, NV 89502
`UNITED STATES
`
`Other Motions/Papers
`
`James M. Duncan
`
`JDuncan@kleinlaw.com
`
`/James M. Duncan/
`
`11/10/2016
`
`Attachments
`
`Answer.pdf(260507 bytes )
`
`
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`10
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`I5
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`20
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`25
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application No. 85/255106
`for FROSTY KING
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`Filing Date: March I, 2011
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`Frosty King Inc., (FL)
`
`Plaintiff
`
`v.
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`Frosty King, Inc. (NV)
`
`Defendant
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`CONCURRENT
`
`USE NO: 94002699
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`E»O'J0O'JC0>tO'J0&JC0’J¢»O'JC(7)EO'><0OOC71
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`ANSWER IN CONCURRENT USE PROCEEDING
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`1.
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`Defendant, Frosty King Inc., a Nevada Corporation (“Defendant”) files
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`herein its answer in the captioned Concurrent use proceeding which pertains to
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`Application No. 85/255106 (the “Application”) for the trademark FROSTY KING
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`applied for by Frosty King, Inc. a Florida Corporation (“Plaintiff”).
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`2.
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`Plaintiff claims “the exclusive right to use the mark in the area comprising
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`the entire United States except for the area within l00 miles of Bakersfield, California.”
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`3.
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`Plaintiff has not served upon Defendant, as required by the Board’s
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`August 31, 2016 order, a copy of Plaintiffs application, including the specimens of use
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`and mark drawing. All allegations set forth herein are based upon the contents of the
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`application file viewed through the USPTO website. In the absence of a copy of
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`Plaintiffs application, Defendant is without knowledge or information sufficient to form
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`a belief as to the truth of the allegations of Plaintiffs claim and therefore denies all
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`allegations set forth therein.
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`4.
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`As to the concurrent use allegation asserted by the Plaintiff, the Defendant
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`herein denies that the geographic exception as claimed by the Plaintiff, in the absence of
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`further exceptions, conditions and limitations as to the mode or place of use of the mark,
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`is sufficient to prevent a likelihood of confusion, mistake, or deception resulting from the
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`use by Plaintiff of the mark and the use by Defendant of its prior adopted and used marks.
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`AFFIRMATIVE DEFENSES
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`5.
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`For the reasons set forth below, Defendant asserts it has more rights than
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`are acknowledged in the Application.
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`6.
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`For the reasons set forth below, Defendant asserts that the geographic
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`restriction recited in the Application is not an effective restriction due to the impossibility
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`of the enforcement of such restriction.
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`7.
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`On information and belief, Plaintiff has not opened a restaurant, ice cream
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`parlor, or ice cream shop or engaged in any business activity or expansion thereof
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`anywhere in the State of California.
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`8.
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`San Diego, Los Angeles, Bakersfield, Fresno, San Francisco, Sacramento,
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`etc. are connected by air, multiple rail, bus, automobile, and other transportation links,
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`with thousands of persons traveling daily between these cities.
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`9.
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`Defendant operates restaurants under the name FROSTY KING, in Kern
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`County, California. Defendant has operated restaurants under the name FROSTY KING
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`since 1979, thus earlier than the Respondent’s filing date of March 1, 2011 and claimed
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`date of first use no later than February 1, 2008. Defendant was incorporated in Nevada
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`under the name FROSTY KING on April 19, 2006. Under the name FROSTY KING,
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`Plaintiff was issued a certificate of qualification by the California Secretary of State to
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`transact intrastate commerce in the State of California on November 3, 2006. Thus
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`Opposer had created public records in both Nevada and California of doing business
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`under the name FROSTY KING before the date the Respondent filed its application and
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`before the Respondent allegedly began use of the Trademark.
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`10.
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`Defendant owns trademark registration number 120146 issued by the
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`California Secretary of State on July 15, 2015 for the mark FROSTY KING for restaurant
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`services, restaurant fast-food services, take—out food services in Class 43.
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`l 1.
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`Defendant has developed and enjoys goodwill and recognition in
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`California and elsewhere with respect to the FROSTY KING trademark used in
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`connection with Defendant’s restaurant services.
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`12.
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`The FROSTY KING mark has been used by Defendant for many years
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`prior to any use by the Applicant, and the Defendant continues to use the FROSTY
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`KING trademark to identify its restaurants.
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`13.
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`In the view of the marks being identical and being used on similar goods
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`and services, it is alleged that Plaintiffs applied-for mark so resembles Defendant’s
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`mark previously used in the United States by Plaintiff as to be likely to cause confusion,
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`or to cause mistake or to deceive.
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`14.
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`Defendant’s main restaurant is located near the intersection of California
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`State Highway 99 and California State Highway 58, where it has been located for a
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`number of years.
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`15.
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`The street upon which Defendant’s main restaurant is located is a four lane
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`major thoroughfare through Bakersfield.
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`16.
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`California State Highway 99 is a major State Highway running through
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`Bakersfield, and described as follows:
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`“State Route 99 (SR—99) begins at Interstate 5 (I-5), near the base of the
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`Tehachapi Mountains in Kern County, passes through the counties of Tulare,
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`Fresno, Madera, Merced, Stanislaus, San Joaquin, Sacramento, and Sutter and
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`ends at State Route 36 near Red Bluff in Tehama County. SR—99 serves the
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`primary population centers in the SJV [San Joaquin Valley] as well as much of
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`the rural agricultural areas.
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`It is the major transportation backbone for the
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`movement of agricultural products and other commercial goods, and also serves
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`as a major link for recreation-bound traffic. SR—99 is the primary link that
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`connects the SJV with the Sacramento metropolitan area and, via I-5, with the
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`Southern California area. In its capacity as an interregional thoroughfare for the
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`movement of people and goods, it is critical to the economic vitality of the State.”
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`(State Route 99 Corridor System Management Plan San Joaquin County Area,
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`September 2008)
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`17.
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`California State Highway 58 is described as follows:
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`“State Route 58 (SR 58) is an east-west highway across the California Coast
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`Ranges, the southern San Joaquin Valley, the Tehachapi Mountains, which border
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`the southern Sierra Nevada, and the Mojave Desert. It runs between its western
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`terminus near Santa Margarita (junction U.S. Route 101) and its eastern terminus
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`at Barstow (junction Interstate 15). It has junctions with Interstate 5 near
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`
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`Buttonwillow, State Route 99 in Bakersfield, State Route 202 in Tehachapi, State
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`Route 14 in Mojave, and US. Route 395 at Kramer Junction. Route 58 gives good
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`access to Edwards Air Force Base.” (Wikipedia, June 14, 2013)
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`18.
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`By virtue of the long term location of Defendant’s restaurant adjacent to
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`the intersection of a major north-south State Highway (SR—99), and a major east-west
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`State Highway (SR-5 8), the restaurant is exposed to significant consumer traffic
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`originating from greater distances than 100 miles from Bakersfield. Bakersfield is a
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`frequent stopover for travelers between Los Angeles and the cities of northern California
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`along SR-99, as well as travelers traveling between coastal locations, such as San Luis
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`Obispo, and easterly located mountain resorts or Las Vegas along SR-58. The
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`Defendant’s restaurants feature, among other food items,
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`ice cream products which are
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`in high demand during the summer months because temperatures in the San Joaquin
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`Valley frequently exceed 100 degrees.
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`19.
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`Plaintiffs mark is identical to Defendant’s trademark, so that confusion
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`and deception as to the origin of services identified by Plaintiffs mark is likely to occur,
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`not only for consumers located within 100 miles of California, but for consumers passing
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`through Bakersfield on SR 99 and SR 58, all to the damage and detriment of the
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`Defendant. Confusion to the public resulting in damage and injury to the Defendant can
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`and will occur because consumers are likely to believe that Plaintiff or its services are
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`affiliated, associated or endorsed by Defendant, which is false.
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`20.
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`The goods and services of Plaintiff are so related to the goods and
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`services of Defendant that the public is likely to be confused, to be deceived, and to
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`assume erroneously that Plaintiffs goods and services are those of Defendant, or that
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`Plaintiff is in some way connected with or sponsored by or affiliated with Defendant.
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`21.
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`Plaintiff is not affiliated or connected with or endorsed or sponsored by
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`Defendants, nor has Defendant approved any of the goods or services offered or sold by
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`Plaintiff under the FROSTY KING trademark, nor has Defendant granted Plaintiff
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`permission to use said mark.
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`22.
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`By reason of the foregoing, Defendant will be damaged by the registration
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`of Applicant’s alleged mark and the concurrent—use registration should be refused
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`RELIEF REQUESTED
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`1.
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`Defendant requests that this concurrent use proceeding be determined in
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`favor of Defendant and that the registration of the Plaintiffs mark be denied.
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`2.
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`Defendant maintains that Plaintiff is not a lawful concurrent user and is
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`not entitled to registration upon the Application. In the even the Board determines that
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`Plaintiff is a lawful concurrent user, Defendant requests that the this concurrent use
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`proceeding be determined in favor of Defendant and that the registration of Plaintiff’ s
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`mark as a concurrent use registration be issued only under such further considerations
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`and limitations as to the mode and place of use of the mark and/or the services in
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`connection with which such mark is used as to assure that confusion, mistake, or
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`deception is not likely to result from Plaintiff’ concurrent use.
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`Dated: November 10, 2016
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`,/Ms.
`
`./I
`
`V’:
`James M. Duncan, Esq.
`Attorneys for Defendant
`FROSTY KING INC., a Nevada Corp.
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`Concurrent Use No. 94002699
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`PROOF OF SERVICE
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`STATE OF CALIFORNIA, COUNTY OF KERN
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`I am employed in the County of Kern, State of California.
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`I am over the age of eighteen
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`years and not a party to the within action; my business address is 4550 California Ave, Second
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`Floor, Bakersfield, CA 93309. My email address is kratekin@kleinlaw.com.
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`On November 10, 2016, I served the following document(s) described as
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`ANSWER IN CONCURRENT USE PROCEEDING
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`on the interested parties in this action by placing an original thereof enclosed in sealed envelopes
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`addressed as follows:
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`SEE ATTACHED LIST
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`BY MAIL
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`I enclosed such document in sealed envelope(s) with the name(s) and
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`address(s) of the person(s) served as shown on the envelope(s) and caused such envelope(s) to be
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`deposited in the mail at Bakersfield, California. The envelope(s) was/were mailed with postage
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`thereon fully prepaid.
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`I am "readily familiar" with the firm's practice of collection and
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`processing correspondence for mailing. It is deposited with the U.S. postal service on that same
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`day in the ordinary course of business.
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`I am aware that on motion of party, service is presumed
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`invalid if postal cancellation date or postage meter date is more than one day after date of deposit
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`for mailing in affidavit.
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`Executed on November 10, 2016, at Bakersfield, California.
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`I declare under penalty of perjury under the laws of the State of California that the
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`foregoing is true and correct.
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`SERVICE LIST
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`Marvin H. Kleinberg
`Kleinberg & Lerner, LLP
`1875 Century Park E, Suite 1150
`Los Angeles, California 90067-2502
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