Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA585346
`ESTTA Tracking number:
`02/03/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214205
`Defendant
`Panasonic Corporation
`GEOFFREY D. AURINI
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 CORPORATE DR STE 200
`TROY, MI 48098-2683
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`docketingtm@hdp.com
`Answer and Counterclaim
`Geoffrey D. Aurini
`gaurini@hdp.com, tjcomparoni@hdp.com
`/gda/
`02/03/2014
`2014 02 03 - Answer and Counterclaim - Final - As Filed.PDF(189018 bytes )
`
`Registration Subject to the filing
`
`Registration No
`International
`Registration No.
`Registrant
`
`3639928
`NONE
`
`Registration date
`International
`Registration Date
`
`06/16/2009
`NONE
`
`Crambo, S.A.
`Avda. del Sol, 11
`ESX
`ESX
`Goods/Services Subject to the filing
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: GPS navigation devices; software
`programs for use with browsers, interactive driving guides, maps, mobile phones and with
`telecommunication devices
`
`
`ESTTA585346
`ESTTA Tracking number:
`02/03/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214205
`Defendant
`Panasonic Corporation
`GEOFFREY D. AURINI
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 CORPORATE DR STE 200
`TROY, MI 48098-2683
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`docketingtm@hdp.com
`Answer and Counterclaim
`Geoffrey D. Aurini
`gaurini@hdp.com, tjcomparoni@hdp.com
`/gda/
`02/03/2014
`2014 02 03 - Answer and Counterclaim - Final - As Filed.PDF(189018 bytes )
`
`Registration Subject to the filing
`
`Registration No
`International
`Registration No.
`Registrant
`
`3639928
`NONE
`
`Registration date
`International
`Registration Date
`
`06/16/2009
`NONE
`
`Crambo, S.A.
`Avda. del Sol, 11
`ESX
`ESX
`Goods/Services Subject to the filing
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: GPS navigation devices; software
`programs for use with browsers, interactive driving guides, maps, mobile phones and with
`telecommunication devices
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 9432-400001
`
`Opposition No. 91214205
`Serial No. 85/699,385
`Mark: ECONAVI
`
`)
`
`) )
`
`)
`)
`)
`
`) )
`
`Crambo, S.A.
`Opposer,
`
`v.
`
`Panasonic Corporation,
`Applicant.
`
`
`PANASONIC CORPORATION’S ANSWER AND AFFIRMATIVE
`DEFENSES TO OPPOSITION AND COUNTERCLAIM TO CANCEL OPPOSER’S
`PLEADED REGISTRATION NO. 3,639,928
`
`Applicant, Panasonic Corporation, for its answer to the Notice of Opposition of Opposer,
`
`Crambo, S.A., states as follows:
`
`1 .
`
`In response to paragraph 1 ofOpposer’s Notice ofOpposition, Applicant states that it
`
`lacks knowledge or information sufficient to form a beliefas to the truth ofthe allegations set forth
`
`therein.
`
`2.
`
`In response to paragraph 2 ofOpposer’s Notice ofOpposition, Applicant admits that
`
`U.S. Patent and Trademark Office online records indicate Opposer’s mark ECONAV (Reg. No.
`
`3,639,928) was registered by the U.S. Patent and Trademark Office on June 16, 2009.
`
`3.
`
`In response to paragraph 3 ofOpposer’s Notice ofOpposition, Applicant admits that
`
`Application Serial No. 85/699,385 was filed on August 9, 2012, based on an intention to use and a
`
`foreign registration but denies the remainder of the allegations set forth therein.
`
`4.
`
`In response to paragraph 4 of Opposer’s Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`
`
`5.
`
`In response to paragraph 5 ofOpposer’s Notice ofOpposition, Applicant admits and
`
`denies as pled above.
`
`6.
`
`In response to paragraph 6 ofOpposer’s Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`7.
`
`In response to paragraph 7 ofOpposer’s Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`8.
`
`In response to paragraph 8 of Opposer’s Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`9.
`
`In response to paragraph 9 ofOpposer’s Notice of Opposition, Applicant admits and
`
`denies as pled above.
`
`10.
`
`In response to paragraph 10 of Opposer’s Notice of Opposition , Applicant admits
`
`U.S. Patent and Trademark Office online records indicate Opposer’s ECONAV mark has been
`
`registered in the United States since June 16, 2009 but denies the remainder of the allegations set
`
`forth therein.
`
`1 1.
`
`In response to paragraph 1 1 ofOpposer’s Notice ofOpposition, Applicant denies the
`
`allegations contained therein.
`
`12.
`
`In response to paragraph 12 ofOpposer’s Notice ofOpposition, Applicant denies the
`
`allegations contained therein and further denies Applicant has used the “OMIERA” mark.
`
`General Denial
`
`All allegations in the Notice of Opposition not otherwise expressly admitted are denied.
`
`18348427.!
`
`
`
`Affirmative Defenses
`
`Opposer has failed to state a claim upon which relief can be granted.
`
`Opposer has failed to plead and/or assert facts sufficient to allege or establish a Trademark
`
`Act section 2(d) claim of priority and likelihood of confusion.
`
`Opposer’s asserted U.S. Registration No. 3,639,928 for ECONAV is descriptive and/or weak
`
`for the goods of that registration and not entitled to the breadth of protection Opposer seeks.
`
`Opposer’s asserted U.S. Registration No. 3,639,928 for ECONAV is not famous or well-
`
`known and Applicant’s mark carmot dilute Opposer’s mark.
`
`Opposer’s claims are precluded by the Doctrine of Unclean Hands.
`
`Applicant enjoys priority of use.
`
`Applicant hereby gives notice that it may rely on any other defenses that may become
`
`available or arise during discovery, and hereby reserves its right to amend this Answer to assert any
`
`such defenses.
`
`Agplicant’s Counterclaim for Cancellation of Opposer’s Pleadcd Registration
`
`Applicant hereby counterclaims to cancel Opposer’s pleaded Registration No. 3,639,928
`
`pursuant to Trademark Rule 2.106(b)(2)(i). As grounds in support of the counterclaim, Applicant
`
`alleges as follows:
`
`1. On information and belief, Opposer has made no trademark use in commerce of the mark
`
`ECONAV in connection with “GPS navigation devices” for at least three consecutive years
`
`preceding the filing ofthis counterclaim for cancellation and Opposer has no bona fide intent
`
`to initiate or resume such use.
`
`2. On information and belief, Opposer has made no trademark use in commerce of the mark
`
`ECONAV in connection with “software programs for use with browsers, interactive driving
`
`l8348427.l
`
`
`
`guides, maps, mobile phones and with telecommunication devices” for at least three
`
`consecutive years preceding the filing ofthis counterclaim for cancellation and Opposer has
`
`no bona fide intent to initiate or resume such use.
`
`. As a result of Opposer’s failure to use the ECONAV mark, the ECONAV mark that is the
`
`subject of Registration No. 3,639,928 has become abandoned for purposes of Section 45 of
`
`the Trademark Act.
`
`. With regard to Opposer’s Registration No. 3,639,928 for ECONAV, at the time offiling and
`
`execution of the application, there was no bona fide intent by Opposer to use the mark in
`
`lawful commerce in the United States.
`
`. With regard to the meaning of Applicant’s marks in connection with the registered goods,
`
`the prefix “eco” is an abbreviation for both “ecological” and “economic.” Meanwhile, the
`
`suffix “nav” is an abbreviation for “navigation.” ECONAV is consequently descriptive ofa
`
`feature, quality or attribute of the Registrant’s goods, “GPS navigation devices; software
`
`programs for use with browsers, interactive driving guides, maps, mobile phones and with
`
`telecommunication devices.”
`
`The issuance of Registration No. 3,639,928 for ECONAV has caused and will continue to
`
`cause damage to Applicant by casting a cloud on the trademark rights of Applicant to use
`
`and register ECONAVI for a feature of televisions.
`
`WHEREFORE, Applicant requests that the opposition ofCrambo, S.A. be summarily dismissed
`
`with prejudice and that the counterclaim for cancellation be granted with Reg. No. 3,639,928 being
`
`ordered cancelled. The statutory filing fee of $300.00 accompanies this counterclaim for
`
`cancellation. The United States Patent and Trademark Office is hereby authorized to charge or
`
`18348427. 1
`
`
`
`credit Deposit Account No. 08-0750 for any additional fees or overages in connection with this
`
`proceeding.
`
`Respectfully submitted,
`
`Dated: February 3,2014
`
`By:
`
`Q
`
`*.
`
`obbs, Esq.
`A.
`Greg
`Geoffrey D. Aurini, Esq.
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`(248) 641-1600
`
`Attorneys
`Corporation
`
`for
`
`Applicant
`
`Panasonic
`
`18348427.]
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No. 9432-400001
`
`Crambo, S.A.
`
`Opposer,
`
`V.
`
`Panasonic Corporation,
`Applicant.
`
`
`Opposition No. 91214205
`Serial No. 85/699,385
`Mark: ECONAVI
`
`%\/\/€\./%%\./
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Panasonic Corporation’s
`
`Answer and Affirmative Defenses to Opposition and Counterclaim to Cancel Opposer’s
`
`Pleaded Registration No. 3,639,928 has been served on counsel for Opposer, Crambo, S.A., by
`
`mailing said copy on February 3, 2014, Via First Class Mail, postage prepaid to the following
`
`correspondent address of record with the United States Patent and Trademark Office, Trademark
`
`Trial and Appeal Board:
`
`Stewart J. Bellus
`
`Collard and Roe
`
`1077 Northern Blvd.
`
`Roslyn, NY 1 1576
`
`
`
`Timothy J. Comparoni
`
`l8348427.1
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