Free Answer to Complaint - District Court of California - California

Case 3:08-cv-00410-BTM-JMA
1

Document 3

Filed 03/26/2008

Page 1 of 14

Michelle D. Mitchell, Esq. (221841)
LAW OFFICES OF MICHELLE D. MITCHELL

2
3

5430 Li nda Vista Rd. # 1 9 San Diego, CA 92110

Telephone: (858) 829-2920
Facsimile: (270)573-0510
Attorneys For Defendants, Spencer Gifts, LLC, Spencer Gifts Holding, LLC and Spencer
Gifts Online, LLC.

4 5
6
7

8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA
TUNI & G, a California General Partnership
)
)

10
11

Case No. 08 CV 0410 BTM JMA

Plaintiffs,
v.

12 13 14 15 16 17

SPENCER GIFTS, LLC, a Delaware Limited

Liability Company; SPENCER GIFTS HOLDING, LLC, a Delaware Limited Liability
Company; SPENCER GIFTS ONLINE, LLC, a

) ) ) ) ) )

ANSWER TO COMPLAINT

WITH COUNTERCLAIM OF
DEFENDANT SPENCER GIFTS, llC,SPENCER GIFTS HOLDING, llC and SPENCER GIFTS ONLINE, LLC

)
) ) ) ) )

Delaware Limited Liability Company; and

(DEMAND FOR JURY TRIAL)

DOES 1 through 10, inclusive,
Defendants.

18 19

Spencer Gifts, LLC, Spencer Gifts Holding, LLC and Spencer Gifts Online, LLC

("Spencer") by its undersigned counsel answers the Complaint as follows:

20
1. Spencer is without knowledge or information sufficient to form a

21

belief as to the truth or falsity of the allegations of Paragraph number one (1) of the

22
Complaint and so denies the same and leaves Tuni & G ("Tuni") to its proofs.

23
2. Admitted.

24
3.

Denied.

25
4.

Admitted.
Spencer admits that the court has jurisdiction over the subject

26
5.

27
matter of the action.

28

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 2 of 14

1

6. Spencer admits that venue is proper in this district.
7. To the extent understood, denied. 8. To the extent understood, denied.
9. Spencer is without knowledge or information, Spencer is without

2
3

4
5

knowledge or information sufficient to form a belief as to the truth or falsity of the

6
7

allegations of Paragraph number nine (9) of the Complaint and so denies the same and
leaves Tuni to its proofs, except that Spencer admits that Tuni claims ownership of U.S.

8

Trademark Registration No. 3158551 and the mark thereof for the goods identified

9

therein, which registration is the subject of a petition for cancellation filed March 12, 2008.

10
11

10. Spencer is without knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of Paragraph number 10 of the Complaint
and so denies the same and leaves Tuni to its proofs.
11. Denied. 12. Denied.

12

13
14 15 16

13. Spencer is without knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of Paragraph number 13 of the Complaint
and so denies the same and leaves Tuni to its proofs.

17 18
19

14. Spencer denies that the slogan employed on the product it sells, as
depicted in Exhibit 2 to the Complaint, is identical except for a spelling change to what
Tuni alleges is a mark. Except to the extent expressly denied, Spencer is without

20
21

knowledge or information sufficient to form a belief as to the truth or falsity of the

22
23

allegations of Paragraph number 14 of the Complaint and so denies the same and leaves
Tuni to its proofs.
15. Spencer admits that it has refused to commit to discontinue sale of

24
25 26

the products alleged to infringe, on the basis that it has a right to sell such products.
Except to the extent admitted, the allegations of Paragraph number 15 of the Complaint

27
are denied.

28
¡M0642399.1 J

2

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 3 of 14

1

16. Denied. 17. Denied.

2 3
4 5

18. Spencer is without knowledge or information sufficient to form a

belief as to the truth or falsity of the allegations of Paragraph number 18 of the Complaint
and so denies the same and leaves Tuni to its proofs.
19. Denied.
20. Spencer incorporates by reference its responses to Paragraph

6
7

8

numbers 1-19 of the Complaint.

9 10
11

21. Spencer admits that the registration cited by Tuni is a federal
registration which is now subject to a petition for cancellation. Except to the extent admitted, Spencer is without knowledge or information sufficient to form a belief as to the

12

truth or falsity of the allegations of Paragraph number 21 of the Complaint and so denies
the same and leaves Tuni to its proofs.
22. Denied.

13
14 15

23. Spencer admits that Tuni has not consented to its sale of the product
alleged to infringe. Spencer admits that a federal registration is constructive notice of the

16 17
18

registrant's claim to the exclusive right to use the mark as shown in the registration on the

goods identified in the registration. Except to the extent admitted, the allegations of
Paragraph number 23 of the Complaint are denied.
24. Denied.

19

20
21
25. Denied.

22
26. Spencer incorporates by reference its responses to Paragraph

23
numbers 1-25 of the Complaint.

24
27. Denied.

25
28. Denied.

26
29. Spencer incorporates by reference its responses to Paragraph

27
numbers 1-28 of the Complaint.

28
¡M0642399.1J

3

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 4 of 14

1

30. Denied.

2
3 4 5

31. Denied.
32. Denied.

AFFIRMATIVE DEFENSE
33. Tuni has no trademark rights in the ornamental phrase alleged to be

6
7

its mark.
34. The phrase alleged to be a mark functions as ornamentation and is
not source-indicating.

8 9

35. Spencer's use of the phrase on the product depicted in Exhibit A to

10
11

the Complaint is a fair use of common language and not as a trademark and not infringing.
COUNTERCLAIM
36. This court has jurisdiction over the subject matter of this

12

13
counterclaim pursuant to 15 USC 1119.

14
37. Tuni has asserted against Spencer the mark of Registration No.

15 16

3158551 and said registration.

38. As set forth in the petition for cancellation attached as Exhibit 1, Tuni

17
18 19

is not entitled to such registration on the grounds that the alleged mark is mere
ornamentation, a commonplace slogan used as amusing decoration and derived from a
third party's song, and is not capable of identifying source.

20
21

39. The alleged registration is subject to cancellation pursuant to 15 USC
1052 and 1064.

22
PRAYER FOR RELIEF

23
WHEREFORE, Spencer prays:

24
1. that Tuni & G's complaint be dismissed, with prejudice;

25
2. that the court order the cancellation of Registration No. 1258551;

26
27 28

///
///
¡M0642399.! J

4

Case 3:08-cv-00410-BTM-JMA
1

Document 3

Filed 03/26/2008

Page 5 of 14

3.

that Spencer be awarded its fees and costs of this action pursuant to

2
3 4
5

15 USC 1117 and such other relief as may be appropriate.
Dated: March 1.(0 , 2008 LAW OFFICES OF MICHELLE D. MITCHELL

By:

6
7 8

M' elle D. Mitchell Attorneys for Defendants

9

10
11

12 13
14

15 16

17
18 19

20
21

22 23

24
25 26
27 28
¡M0642399.1l

5

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 6 of 14

EXHIBIT 1

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 7 of 14

Trademark Trial and Appeal Board Electronic Filíng System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA197864

Filing date: 03/12/2008
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Petition for Cancellation
Notice is hereby given that the following party requests to cancel indicated registration,

Petitioner Information
Name
Entity
Spencer Gifts, LLC

Limited Liability Cormpany 6826 Black Horse Pike

I Citizenship

I Delaware

Address

Egg Harbor Township, NJ 08234
UNITED STATES

Attorney information

Roberta Jacobs-Meadway Eckert Seamans Cherin & Mellott, LLC 50 South 16th Street 22nd Floor

Philadelphia, PA 19102
UNITED STATES rjacobsmeadway(Qeckertseamans.com Phone:215-851-8522

Registration Subject to Cancellation
Registration No

3158551

I Registration date

I 10/17/2006

Registrant

Tuni & G 10755 F Scripps Poway Pkwy., Suite #515 San Diego, CA 92131 UNITED STATES

Goods/Services Subject to Cancellation
Class 025. First Use: 2005/08/01 First Use In Commerce: 2005/10/25 All goods and services in the class are cancelled, namely: Adult, child and infant clothing, namely, hats, socks, tank tops, t-shirts, long sleeve shirts, short sleeve shirts, hooded shirts, sweat shirts, sweat pants, relaxed pants; women's clothing, namely maternity shirts; infant and toddler clothing, namely one-piece clothing

Grounds for Cancellation
The mark comprises matter that, as a whole, is functional

Trademark Act section 2(e)(5)

Attachments

PETITION FOR CANCELLATION OF REGISTRATION 3158551 (M0641394),PDF (6 pages )(156696 bytes)

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date,

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 8 of 14

Signature Name Date

/Roberta Jacobs-Meadway/ Roberta Jacobs-Meadway 03/12/2008

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 9 of 14

BOX TT AB - FEE

IN THE UNITED STATES PATENT AN TRAEMAR OFFICE BEFORE THE TRAEMAR TRIAL AN APPEAL BOARD
SPENCER GIFTS, LLC
Petitioner,
v.

Cancellation No. Registration No. 3,158,551

TUN&G
Respondent

PETITION FOR CANCELLATION
Honorable Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513

In the matter of

Trademark Registration No. 3,158,551 issued October 17,2006:

Spencer Gifts, LLC, a Delaware limited liability company with a place of
business located at 6826 Black Horse Pike, Egg Harbor Township, New Jersey, 08234-4197

("Spencer"), believes that it wil be damaged by the above-identified registration issued for the
goods therein identified and hereby petitions to cancel the registration of said trademark. The
grounds for cancellation are as follows:
1. Tuni & G ("Tuni") has secured Registration No. 3,158,551 for DON'T

Y A WISH YOUR MOMMY W AS HOT LIKE MINE? as a trademark for adult, child and

infant clothing as identified in said certificate of registration.

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 10 of 14

2. Spencer is and has for many years been engaged in the distribution and

sale of novelty items and gifts, including t-shirts and hats and sweatshirts with humorous slogans

and parodies of catch phrases having then-current popularty.
3. Spencer has offered for sale and sold the item depicted in Attachment A.

4. Tuni has objected to Spencer's use of

the ornamental slogan on the item,
=

namely: "Don't You Wish Your Mommy Was Hot Like Mine," alleging such use is an
infrngement of its rights in the alleged mark of the registration which is the subject of

this

Petition.
5. Tuni's alleged mark which is the subject of

its registration is incapable of

distinguishing Tuni' s goods from the like goods of others, including Spencer. Tuni and others

have used and use such slogans as ornamentation and to convey a non-trademark message in
connection with the same and closely related products.
6. The slogan which Spencer has used which is the subject ofTuni's

objection is derived from a song by the Pussycat Dolls, "Don't Cha (Wish Your Girlfrend Was
Hot Like Me").
7. The slogan is one which has been in general use in diverse varations and

is not associated exclusively with anyone entity.
8. IfTuni is able to maintain its registration for the mark which is the subject

of this Petition, Spencer and others would be damaged insofar as there would be a cloud on their

ability to use and to continue to use such slogans as fu, ornamental designs.
9. The registration which is the subject of

this Petition accords aprimafacìe

exclusive right to Tuni to use the mark. Such registration is a source of damage and injury to

2

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 11 of 14

Spencer and others who use and have a right to use such common varations on popular catch
phrases to amuse buyers and recipients having nothing to do with source identification.
WHEREFORE, Spencer Gifts, LLC prays that this Petition be sustained and that

Registration No. 3,158,551 be cancelled.
Any additional fees in connection with this cancellation may also be charged to

the credit card number used to fie this petition and any overpayment may be credited to that
account.

Date: M...b \ i. 1. ß
i

Respectfully submitted,

BY:~ R~
Philadelphia, P A 19102
Phone: 215-851-8522 Fax: 215-851-8383

Richard J. Peirce Eckert Seamans Cherin & Mellott, LLC Two Liberty Place
50 South 16th Street, 22nd Floor

ijacobsmeadwa y(feckertseamans.com

ATTORNYS FOR PETITIONER

3

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 12 of 14

ATTACHMENT A

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 13 of 14

Case 3:08-cv-00410-BTM-JMA

Document 3

Filed 03/26/2008

Page 14 of 14

CERTIFICATE OF SERVICE
The undersigned hereby certifies that a tre and correct copy of the attached

Petition for Cancellation was served on counsel for Tuni & G on the dated listed below via
facsimile and U.S. Mail:

Matthew A. Becker, Esquire The Law Offce of Matthew A. Becker, P.C. 1003 Isabella Avenue Coronado, CA 92118-2863
Facsimile: 619-522-6763

Dated: tW L~(~ùor

Mary T:~oeSenhOfer ~

'~ iJ~il2

4