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

side trip: how does cpaatty answer?

next: Small and Cpaatty get a break

Plaintiff/Counterdefendant Small answers the counterclaim of defendants/counterclaimants Big as follows:

1. As to paragraph 1 of the counterclaim, Small 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 's "TaxHQ" service mark. Small denies that "TaxHQ" was used by Big as a service mark prior to February, 2005 (subsequent to the use of Small's"TaxHQ" mark and the application and registration with respect to that use by Small in 2003 and 2004, respectively), admits that it 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 it 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. Small denies that either party will suffer immediate and irreparable injury pending a trial on the merits.

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

3. As to paragraph 3 and 4 of the counterclaim, Small admits the allegations contained therein.

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

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

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

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

8. As to paragraph 9 of the counterclaim, Small 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 Plaintiff/Counter-defendant's service mark, and denies each and every other allegation contained therein.

9. As to paragraph 10 of the counterclaim, Small lacks knowledge sufficient to form a belief as to the truth of the allegations, and on that basis denies them, except that Small 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.

10. As to paragraph 11 of the counterclaim, Small 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's mark). Small denies each and every other allegation contained in paragraph 11 of the counterclaim.

11. As to paragraph 12 of the counterclaim, Small specifically denies that Big first learned of Small '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. Small 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.

12. As to paragraph 13 of the counterclaim, Small admits that its registered mark "TaxHQ" is prominently displayed on every page of its websites (abouttax.COM and TaxHQ.NET) , that Small registered the domain name "TaxHQ.NET" in July, 2005, and affirmatively alleges that the said website has been operational since June, 2006.

13. As to paragraph 14 of the counterclaim, Small admits that it has used the words "TaxHQ" in keywords. Small 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. Small denies each and every other allegation contained in paragraph 14 of the counterclaim and particularly the allegation that it was Small 's intent, in inserting the keywords, to attract parties who are searching for Big's website.

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

15. As to paragraph 16 of the counterclaim, Small admits that it holds a Federal Trademark Registration for the service mark "TaxHQ", that it 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. Small affirmatively alleges that Big had actual knowledge of the use of the mark by John T. Cpaatty on November 1, 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 's website since June, 2006.

16. As to paragraph 17 of the counterclaim, Small admits that its predecessor, John T. Cpaatty, and Big both became aware of the use of their respective marks on November 1, 2004, that Plaintiff/Counterdefendant's predecessor John T. 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. Small 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 John T. Cpaatty, but admits that several copies of past "TaxHQ" newsletters were sent to him at his request.

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

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

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

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

21. As to paragraph 22 'of the counterclaim, Small incorporates its responses to the allegations contained in paragraphs 1 through 21, inclusive.

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

23. As to paragraph 24 of the counterclaim, Small denies the allegations contained therein.

24. As to paragraph 25 of the counterclaim, Small incorporates its responses to the allegations contained in paragraphs 1 through 21, inclusive.

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

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

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

28. As to paragraph 29 of the counterclaim, Small incorporates its responses to the allegations contained in paragraphs 1 through 21, inclusive.

29. As to paragraph 30 of the counterclaim, Small admits the allegations.

30. As to paragraph 31 of the counterclaim, Small admits the allegation.

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

32. As to paragraph 33 of the counterclaim, Small- denies each and every allegation contained therein.

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

34. As to paragraph 35 of the counterclaim, Small incorporates its responses to the allegations contained in paragraphs 1 through 21, inclusive.

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

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

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

38. As to paragraph 39 of the counterclaim, Small denies each and every allegation contained therein.

39. Any allegation in the counterclaim not expressly admitted above is denied.

AFFIRMATIVE DEFENSES

40. Small asserts the following affirmative defenses to Big's counterclaim:

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

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

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

D. Small '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.

WHEREFORE, Small demands that defendant/counterclaimant's counterclaim be denied and dismissed, for its costs incurred herein, for the relief prayed for in the Complaint, and for such other and further relief as to the Court seems just and proper.