side trip: what does this mean? (minimum legal mumbo-jumbo)

side trip: how does Small answer?

next: Cpaatty and Small get a break

Counterdefendant John T. Cpaatty ("Cpaatty") answers the counterclaim of defendants/counterclaimants Big, as follows:

As to paragraph 1 of the counterclaim, Cpaatty admits that this Court has jurisdiction over Big's federal trademark claim, denies infringement of either of Big's marks, admits that Big named a newsletter "TaxHQ" in 1997 and registered "TaxHQ" as a trademark for the "goods" (the newsletter) in 2006, subsequent to the filing of Small P.C.'s "TaxHQ" service mark. Cpaatty denies that "TaxHQ" was used by Big as a service mark prior to February, 2005 (subsequent to the use of "TaxHQ" and the application and registration with respect to that use by Cpaatty in 2003 and 2004, respectively), admits that Small P.C. is using the mark "TaxHQ" to promote its tax and legal services in the nature of determining choice of entity questions, including tax document preparation and the formation of corporate entities, alleges that such use is not infringement of any rights Big may have with respect to its newsletter name "TaxHQ", and states that he is without information sufficient to form a belief with respect to the allegation that Big is using the mark "Big TaxHQ" to promote virtually identical services to those offered by Small P.C., in a manner likely to confuse the public as to the source of those services, and therefore denies the same. Cpaatty denies that any party will suffer immediate and irreparable injury pending a trial on the merits.

As to paragraph 2 of the counterclaim, Cpaatty lacks knowledge sufficient to form a belief as to the truth of the allegations, and on that basis denies them.

As to paragraph 3 of the counterclaim, Cpaatty admits the allegations contained therein.

As to paragraph 4 of the counterclaim, Cpaatty admits the allegations contained therein.

As to paragraph 5 of the counterclaim, Cpaatty admits that this Court has jurisdiction over the claims set forth in the counterclaim.

As to paragraph 6 of the counterclaim, Cpaatty admits the allegations contained therein.

As to paragraph 7 of the counterclaim, Cpaatty lacks knowledge sufficient to form a belief as to the truth of the allegations, and on that basis denies them.

As to paragraph 8 of the counterclaim, Cpaatty lacks knowledge sufficient to form a belief as to the truth of the allegations, and on that basis denies them, except that Cpaatty admits that Big named its newsletter "TaxHQ" in 1997

As to paragraph 9 of the counterclaim, Cpaatty admits that the name of the newsletter ("TaxHQ") was filed and then registered in the United States Patent and Trademark Office, in both cases subsequent to the filing and registration, respectively, of Small P.C.'s service mark, and denies each and every other allegation contained therein.

As to paragraph 10 of the counterclaim, Cpaatty lacks knowledge sufficient to form a belief as to the truth of the allegations, and on that basis denies them, except that Cpaatty admits that Big registered the domain name "TaxHQ.com". Small specifically denies that any visitor to Big's web site can arrange for, or provide the information required, to file a tax return, make a choice of entity election or form an entity.

As to paragraph 11 of the counterclaim, Cpaatty admits that Big filed and later registered the service mark "Big TaxHQ", first used in February, 2005 (with both the filing and registration being subsequent in time to the registration of Small P.C.'s mark). Cpaatty denies each and every other allegation contained in paragraph 11 of the counterclaim.

As to paragraph 12 of the counterclaim, Cpaatty specifically denies that Big first learned of Cpaatty's use of its registered mark "TaxHQ" in June, 2007 and alleges that first knowledge of Small's use was on November 1, 2004 or earlier. Cpaatty denies the remainder of the allegations contained in paragraph 12 of the Counterclaim, and affirmatively alleges that the promotional materials and the websites speak for themselves.

As to paragraph 13 of the counterclaim, Cpaatty admits that its registered mark "TaxHQ" is prominently displayed on every page of Small's websites (abouttax.COM and TaxHQ.NET) , that Cpaatty registered the domain name "TaxHQ.NET" in July, 2005, and affirmatively alleges that the identical website, for all purposes material to this litigation (abouttax.COM), was registered with NSI in July, 2005, and has been operational since June, 2006.

As to paragraph 14 of the counterclaim, Cpaatty admits that it has used "TaxHQ" in keywords. Cpaatty affirmativeiy alleges that it is common practice in electronic commerce on the Internet to insert variations of the website's name (a fortiori in the case of a registered service mark), so that people who are searching for you under the name of your registered service mark will be able to find you, even if they misspell your name. Cpaatty denies each and every other allegation contained in paragraph 14 of the counterclaim and particularly the allegation that it was Cpaatty's intent, in inserting the keywords, to attract parties who are searching for Big's website.

As to paragraph 15 of the counterclaim, Cpaatty denies each and every allegation contained therein.

As to paragraph 16 of the counterclaim, Cpaatty admits that Small P.C. holds a Federal Trademark Registration for the service mark "TaxHQ", that Cpaatty used the mark as early as 1999, that it was registered in October, 2005 (seven months before the Federal registration of Big's first mark to be registered), and denies each and every other allegation contained therein. Cpaatty affirmatively alleges that Big had actual knowledge of the use of the mark by Cpaatty in October, 2004, constructive notice as a result of the Federal Trademark filing, actual notice by prominent display of the mark in the Seattle newspaper (a city in which Big has an office), and open use of the mark on Small P.C.'s website since June, 2006.

As to paragraph 17 of the counterclaim, Cpaatty alleges that Cpaatty and Big both became aware of the use of their respective marks by the other in October, 2004, that Cpaatty was the person who initiated the contact, and that none of the parties had any further direct contact with each other until Big's cease and desist letter in July, 2007. Cpaatty denies each and every other allegation contained in paragraph 17 of the counterclaim including the allegation that past issues of the "Big TaxHQ" newsletters were sent to Cpaatty, but admits that several copies of past "TaxHQ" newsletters were sent to him at his request.

As to paragraph 18 of the counterclaim, Cpaatty denies that Big was unaware of Small P.C.'s acts prior to June, 2007, admits receipt of the letter attached to the counterclaim as Exhibit C, and that Small P.C. responded to that letter by instituting this lawsuit and denies the remaining allegations contained therein.

As to paragraph 19 of the counterclaim, Cpaatty denies the allegations contained therein.

As to paragraph 20 of the counterclaim, Cpaatty denies the allegations contained therein.

As to paragraph 21 of the counterclaim, Cpaatty denies the allegations contained therein.

As to paragraph 22 of the counterclaim, Cpaatty incorporates his responses to the allegations contained in paragraphs 1 through 21, inclusive.

As to paragraph 23 of the counterclaim, Cpaatty denies the allegations contained therein.

As to paragraph 24 of the counterclaim, Cpaatty denies the allegations contained therein. As to paragraph 25 of the counterclaim, Cpaatty incorporates his responses to the allegations contained in paragraphs 1 through 21, inclusive.

As to paragraph 26 of the counterclaim, Cpaatty denies each and every allegation.

As to paragraph 27 of the counterclaim, Cpaatty denies each and every allegation.

As to paragraph 28 of the counterclaim, Cpaatty.denies each and every allegation.

As to paragraph 29 of the counterclaim, Cpaatty incorporates his responses to the allegations contained in paragraphs 1 through 21, inclusive.

As to paragraph 30 of the counterclaim, Cpaatty admits the allegations.

As to paragraph 31 of the counterclaim, Cpaatty admits the allegation.

As to paragraph 32 of the counterclaim, Cpaatty admits that Big named its newsletter "TaxHQ" in 1997, and denies each and every other allegation contained therein.

AS to paragraph 33 of the counterclaim, Cpaatty denies each and every allegation contained therein.

As to paragraph 34 of the counterclaim, Cpaatty denies each and every allegation contained therein.

As to paragraph 35 of the counterclaim, Cpaatty incorporates his responses hereinabove set forth.

As to paragraph 36 of the counterclaim, Cpaatty denies each and every allegation contained therein.

As to paragraph 37 of the counterclaim, Cpaatty denies each and every allegation contained therein.

As to paragraph 38 of the counterclaim, Cpaatty denies each and every allegation contained therein.

As to paragraph 39 of the counterclaim, Cpaatty denies each and every allegation contained therein. Any allegation in the counterclaim not expressly admitted above is denied.

AFFIRMATIVE DEFENSES

Cpaatty asserts the following affirmative defenses to Big's counterclaim:

1. The counterclaim fails to state a claim against this counterdefendant upon which relief can be granted.

2. Big's claims are barred under the doctrine of estoppel.

3. Big's claims are barred under the doctrine of laches.

4. Big's claims are barred under the doctrine of waiver.

5. Small P.C.'s service mark ("TaxHQ") was the first service mark to be used, and the first mark of any kind to be registered with the United States Patent and Trademark Office, and nothing related to the use by Big of either of its marks disturbs that priority.

6. Big has abandoned any rights it had in the trademark TaxHQ.