Free Answer to Counterclaim - District Court of California - California

Case 3:07-cv-02173-L-CAB

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THE TAYLER LAW FIRM, P.C. William C. Tayler (Bar No. 171704) 1804 Garnet Avenue, No. 505 San Diego, California 92109 Telephone: (858) 272-8574 Attorney for Plaintiff and Cross-Defendant San Diego Bike & Kayak Tours, Inc.

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA SAN DIEGO BIKE & KAYAK TOURS, INC., a ) California corporation, ) ) Plaintiff, ) ) v. ) ) LA JOLLA KAYAK & COMPANY, LLC, a ) limited liability company, LA JOLLA KAYAK, ) LLC, a California corporation; MICHAEL ) LUSCOMB, an individual; SHARON ) LUSCOMB, an individual, ) ) Defendants. ) ) ) AND RELATED COUNTER-CLAIM ) ) CASE NO.: 07-CV-2173 L(CAB)

ANSWER OF SAN DIEGO BIKE & KAYAK TOURS INC. TO COUNTER-CLAIM JURY TRIAL DEMANDED

ANSWER OF SDB&KT, INC. TO COUNTER-CLAIM

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ANSWER TO COUNTER-CLAIM Plaintiff and Counter-Defendant San Diego Bike & Kayak Tours, Inc. ( SDB&KT ) hereby answers Counter-Claimants counter-claims as follows: 1. In response to paragraph 1, SDB&KT lacks sufficient information or knowledge to

either admit or deny the allegations of this paragraph, and therefore denies them on that basis. 2. In response to paragraph 2, SDB&KT lacks sufficient information or knowledge to

either admit or deny the allegations of this paragraph, and therefore denies them on that basis. 3. 4. In response to paragraph 3, SDB&KT admits the allegations of this paragraph. In response to paragraph 4, SDB&KT admits that Counter-Defendant Marcella

DiMichieli is an individual residing in the County of San Diego, in the State of California. SDB&KT admits that Defendant Marcella Di Michieli did business under the name San Diego Bike & Kayak Tours from April 2004 to March 2006. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 5. In response to paragraph 5, SDB&KT admits that Counter-Defendant Nicholas

Bauman is an individual residing in the county of San Diego, in the State of California. SDB&KT admits that Counter-Defendant Nicholas Bauman is a shareholder of Counter-Defendant San Diego Bike & Kayak Tours, Inc. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 6. In response to paragraph 6, SDB&KT lacks sufficient information or knowledge to

either admit or deny the allegations of this paragraph, and therefore denies them on that basis. 7. In response to paragraph 7, SDB&KT admits that the Counter-Claim purports to

state a counter-claim for damages and injunctive relief under the Lanham Act, and for unfair competition, but denies that Counter-Claimants are entitled to any such relief and denies any remaining allegations of this paragraph. 8. In response to paragraph 8, SDB&KT admits that this Court has original subject

matter jurisdiction over the counter-claims asserted against it. Except as specifically admitted, SDB&KT denies the allegations of this paragraph.

SDB&KT

ANSWER TO COUNTERCLAIM

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9.

In response to paragraph 9, SDB&KT admits that this Court has personal

jurisdiction over SDB&KT, and Counter-Defendants Marcella Di Michieli and Nicholas Bauman. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 10. In response to paragraph 10, SDB&KT admits that venue is proper in this district.

Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 11. In response to paragraph 11, SDB&KT admits that La Jolla Kayak & Co., LLC

( LJK ) is located in La Jolla and provides kayak and snorkeling rentals and tours in La Jolla, including La Jolla Shores, La Jolla Cove, and the La Jolla caves. SDB&KT lacks sufficient information or knowledge to either admit or deny the allegation that LJK has provided kayak tours in La Jolla since January 1, 1995, and therefore denies this allegation on that basis. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 12. In response to paragraph 12, SDB&KT states that Trademark Registration Number

3297782 speaks for itself. SDB&KT admits that Exhibit 1 to the counter-claims appears to be a print-out of Registration Number 3297782 from the United States Patent and Trademark Office TESS system. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 13. In response to paragraph 13, SDB&KT lacks sufficient information or knowledge

to admit or deny the allegation that Counter-Claimants have devoted substantial time, effort and resources to the development and promotion throughout San Diego County and other parts of California of the trade name LA JOLLA KAYAK, and service mark and services sold under said trade name and mark, and therefore denies this allegation on that basis. SDB&KT denies the remaining allegations of this paragraph. 14. In response to paragraph 14, SDB&KT admits that LJK and SDB&KT offer

competing services. SDB&KT admits that Exhibit 2 to the counter-claims is a print-out from SDB&KT s website as of April 3, 2008 and states that it speaks for itself. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 15. kayaks, Jolla, In response to paragraph 15, SDB&KT admits that it has used the phrases La Jolla La Jolla kayaking, kayaking in La Jolla, kayak in La

La Jolla kayak rentals,

La Jolla kayak tours to describe the fact that SDB&KT offers kayak rentals and kayak

SDB&KT

ANSWER TO COUNTERCLAIM

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tours in and around the La Jolla. SDB&KT admits that San Diego Bike & Kayak Tours previously used with LJK s express permission a picture of Michael Luscomb kayaking on one of its web pages. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 16. In response to paragraph 16, SDB&KT admits that Exhibit 4 to the counter-claim is

a copy of SDB&KT s rack-card. SDB&KT lacks sufficient information or knowledge to either admit or deny the allegation that Exhibit 3 to the counter-claims is Counter-Claimants Rack Card, and therefore denies this allegation on that basis. Except as specifically admitted,

SDB&KT denies the allegations of this paragraph. 17. In response to paragraph 17, SDB&KT admits that Counter-Claimants have no

control over SDB&KT s services. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 18. In response to paragraph 18, SDB&KT admits that LJK and SDB&KT offer

competing services. SDB&KT admits that LJK asked SDB&KT to cease and desist from using the words La Jolla and kayak in advertising its services. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. ANSWER TO FIRST CAUSE OF ACTION 19. 18 above. 20. 21. 22. 23. In response to paragraph 20, SDB&KT denies the allegations of this paragraph. In response to paragraph 21, SDB&KT denies the allegations of this paragraph. In response to paragraph 22, SDB&KT denies the allegations of this paragraph. In response to paragraph 23, SDB&KT denies the allegations of this paragraph. ANSWER TO SECOND CAUSE OF ACTION 24. 23 above. 25. 26. 27. In response to paragraph 25, SDB&KT denies the allegations of this paragraph. In response to paragraph 26, SDB&KT denies the allegations of this paragraph. In response to paragraph 27, SDB&KT denies the allegations of this paragraph. In response to paragraph 24, SDB&KT incorporates its responses to paragraphs 1In response to paragraph 19, SDB&KT incorporates its responses to paragraphs 1-

SDB&KT

ANSWER TO COUNTERCLAIM

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28. 29.

In response to paragraph 28, SDB&KT denies the allegations of this paragraph. In response to paragraph 29, SDB&KT denies the allegations of this paragraph. ANSWER TO THIRD CAUSE OF ACTION

30. 30 above. 31. 32. 33. 34. 35. 36.

In response to paragraph 30, SDB&KT incorporates its responses to paragraphs 1-

In response to paragraph 31, SDB&KT denies the allegations of this paragraph. In response to paragraph 32, SDB&KT denies the allegations of this paragraph. In response to paragraph 33, SDB&KT denies the allegations of this paragraph. In response to paragraph 34, SDB&KT denies the allegations of this paragraph. In response to paragraph 35, SDB&KT denies the allegations of this paragraph. In response to paragraph 36, SDB&KT denies the allegations of this paragraph. ANSWER TO FOURTH CAUSE OF ACTION

37. 36 above. 38.

In response to paragraph 37, SDB&KT incorporates its responses to paragraphs 1-

In response to paragraph 38, SDB&KT lacks sufficient information or knowledge

to either admit or deny the allegation that Counter-Claimants have used LA JOLLA KAYAK continuously in commerce since January 1, 1995, and therefore denies this on that basis. SDB&KT denies the remaining allegations of this paragraph. 39. 40. 41. 42. In response to paragraph 39, SDB&KT denies the allegations of this paragraph. In response to paragraph 40, SDB&KT denies the allegations of this paragraph. In response to paragraph 41, SDB&KT denies the allegations of this paragraph. In response to paragraph 42, SDB&KT admits that LJK has asserted exclusive

rights in the name La Jolla Kayak and has asked SDB&KT to cease and desist from using the words La Jolla and kayak in advertising its services. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 43. 44. 45. In response to paragraph 43, SDB&KT denies the allegations of this paragraph. In response to paragraph 44, SDB&KT denies the allegations of this paragraph. In response to paragraph 45, SDB&KT denies the allegations of this paragraph.

SDB&KT

ANSWER TO COUNTERCLAIM

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 57. 56 above. 58. 59. 60. 53. 52 above. 54. 55. 56. 46. 45 above. 47.

ANSWER TO FIFTH CAUSE OF ACTION In response to paragraph 46, SDB&KT incorporates its responses to paragraphs 1-

In response to paragraph 47, SDB&KT lacks sufficient information or knowledge

to either admit or deny the allegation that Counter-Claimants have not yet filed an application for registration of said mark in the State of California covering the use of said mark for services, and therefore denies this on that basis. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 48. 49. In response to paragraph 48, SDB&KT denies the allegations of this paragraph. In response to paragraph 49, SDB&KT admits that LJK has asserted exclusive

rights in the name La Jolla Kayak and has asked SDB&KT to cease and desist from using the words La Jolla and kayak in advertising its services. Except as specifically admitted, SDB&KT denies the allegations of this paragraph. 50. 51. 52. In response to paragraph 50, SDB&KT denies the allegations of this paragraph. In response to paragraph 51, SDB&KT denies the allegations of this paragraph. In response to paragraph 52, SDB&KT denies the allegations of this paragraph. ANSWER TO SIXTH CAUSE OF ACTION In response to paragraph 53, SDB&KT incorporates its responses to paragraphs 1-

In response to paragraph 54, SDB&KT denies the allegations of this paragraph. In response to paragraph 55, SDB&KT denies the allegations of this paragraph. In response to paragraph 56, SDB&KT denies the allegations of this paragraph. ANSWER TO SEVENTH CAUSE OF ACTION In response to paragraph 57, SDB&KT incorporates its responses to paragraphs 1-

In response to paragraph 58, SDB&KT denies the allegations of this paragraph. In response to paragraph 59, SDB&KT denies the allegations of this paragraph. In response to paragraph 60, SDB&KT denies the allegations of this paragraph.

SDB&KT

ANSWER TO COUNTERCLAIM

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 90. 60 above. 91.

ANSWER TO THIRTEENTH CAUSE OF ACTION In response to paragraph 90, SDB&KT incorporates its responses to paragraphs 1-

In response to paragraph 91, SDB&KT admits that there is a controversy between

the parties but denies that Counter-Claimants have any legal rights to LA JOLLA KAYAK as a trade name or any legal rights to variations thereof, including LA JOLLA KAYAKS, JOLLA KAYAK RENTAL, LA JOLLA KAYAKING, LA

LA JOLLA KAYAK TOURS,

KAYAKING LA JOLLA, and denies the allegation that SDB&KT has used the mark in Registration No. 3297782. SDB&KT denies any remaining allegations of this paragraph. 92. In response to paragraph 92, SDB&KT states that it denies that any of Counter-

Claimants stated contentions are true. SDB&KT denies any remaining allegations of this paragraph. 93. In response to paragraph 93, SDB&KT states that SDB&KT s contentions in the

Complaint speak for themselves. 94. In response to paragraph 94, SDB&KT denies that Counter-Claimants have any

legal rights to LA JOLLA KAYAK as a trade name or any legal rights to variations thereof, including LA JOLLA KAYAKS, KAYAKING, LA JOLLA KAYAK RENTAL, LA JOLLA

LA JOLLA KAYAK TOURS,

KAYAKING LA JOLLA, and denies the

allegation that SDB&KT has used the mark in Registration No. 3297782. SDB&KT denies any remaining allegations of this paragraph. AFFIRMATIVE DEFENSES As further answer and as affirmative defense, SDB&KT allege the following: First Affirmative Defense (Lack of Distinctiveness)

1.

Counter-Claimants trademark counter-claims are barred because the claimed

marks lack distinctiveness.

SDB&KT

ANSWER TO COUNTERCLAIM

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Second Affirmative Defense (Lack of Secondary Meaning)

2.

Counter-Claimants trademark counter-claims are barred because the claimed

marks have not acquired secondary meaning. Third Affirmative Defense (Accord & Satisfaction)

3.
satisfaction.

Counter-Claimants counter-claims are barred by the doctrine of accord and

Fourth Affirmative Defense (Release)

4.

Counter-Claimants counter-claims are barred by the doctrine of release. Fifth Affirmative Defense (Statute of Limitations)

5.
limitations.

Counter-Claimants counter-claims are barred by the applicable statute of

Sixth Affirmative Defense (Federal Preemption)

6.

Counter-Claimants counter-claims are preempted by Federal Law and are thus

Seventh Affirmative Defense (Estoppel)

7.

Counter-Claimants counter-claims are barred by the doctrine of estoppel. Eighth Affirmative Defense (Acquiescence)

8.

Counter-Claimants counter-claims are barred by the doctrine of acquiescence. Ninth Affirmative Defense (Laches)

9.

Counter-Claimants counter-claims are barred by the doctrine of laches.

SDB&KT

ANSWER TO COUNTERCLAIM

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (a) relief.

Tenth Affirmative Defense (Unclean Hands)

10.

Counter-Claimants counter-claims are barred by the doctrine of unclean hands. Eleventh Affirmative Defense (Waiver)

11.

Counter-Claimants counter-claims are barred by the doctrine of waiver. Twelfth Affirmative Defense (Implied License)

12.

Counter-Claimants counter-claims are barred by the doctrine of implied license. Thirteenth Affirmative Defense (Consent)

13.

Counter-Claimants counter-claims are barred by the doctrine of consent. Fourteenth Affirmative Defense (Failure to State a Claim)

14.

Counter-Claimants counter-claims fail to state facts sufficient to state a claim for

Fifteenth Affirmative Defense (Fair Use)

15.

Counter-Claimants trademark counter-claims are barred because SDB&KT s

alleged actions constitute fair use. Sixteenth Affirmative Defense (Failure to Mitigate Damages)

16.

Counter-Claimants have has failed to mitigate their damages, if any. RELIEF REQUESTED A judgment in favor of SDB&KT denying Counter-Claimants all relief requested in

their Counter-Claim in this action and dismissing Counter-Claimants Counter-Claim with prejudice;

SDB&KT

ANSWER TO COUNTERCLAIM

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(b)

That SDB&KT be awarded its costs of suit, including reasonable attorneys fees,

(c)

That the Court award SDB&KT such other and further relief as the Court deems

just and proper. DEMAND FOR JURY TRIAL In accordance with Federal Rule of Civil Procedure 38(b), SDB&KT demands a trial by jury on all issues so triable. Dated: May 9, 2008 Respectfully Submitted, THE TAYLER LAW FIRM, P.C.

By __________/s/___________________ William C. Tayler Attorney for Cross-Defendant San Diego Bike & Kayak Tours, Inc.

SDB&KT

ANSWER TO COUNTERCLAIM

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