Trademark Trial and Appeal Board Electronic Filing System. httpj/estta.uspto.gov
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA109011
`ESTTA Tracking number:
`11/10/2006
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`Applicant:
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`Application Serial Number:
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`Application Filing Date:
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Hernandez, Claudia G
`78732125
`10/12/2005
`QUADRYDERN N.F.
`09/12/2006
`60 Day Request for Extension of Time to Oppose for Good Cause
`60 Day Request for Extension of Time to Oppose for Good Cause
`
`Mark:
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`Date of Publication
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`Pursuant to 37 C.F.R. Section 2.102, YolandaEustaquio, 13912 SW 139 Court, Miami, FL 33186, UNITED
`Pursuant to 37 C.F.R. Section 2.102, Yo|andaEustaquio, 13912 SW 139 Court, Miami, FL 33186, UNITED
`STATES respectfully requests that he/she/it be granted an additional 60-day extension of time to file a notice
`STATES respectfully requests that he/she/it be granted an additional 60-day extension of time to file a notice
`of opposition against the above-identified mark for cause shown .
`of opposition against the above—identified mark for cause shown .
`Potential opposer believes that good causes are established for this request by:
`Potential opposer believes that good causes are established for this request by:
`- The potential opposer needs additional time to investigate the claim
`The potential opposer needs additional time to investigate the claim
`- The potential opposer needs additional time to confer with counsel
`The potential opposer needs additional time to confer with counsel
`- The Potential Opposer (i.e, Yolanda Eustaquio [#Eustaquio#], the owner of a registered trademark for
`The Potential Opposer (i.e, Yolanda Eustaquio [#Eustaquio#], the owner of a registered trademark for
`#CREMA CUADRIDERMA# in International Class 005 for #Cream For Itching And Inflammation, Anti-
`#CREMA CUADRIDERMA# in International Class 005 for #Cream For Itching And Inflammation, Anti-
`Fungus And Anti-biotic# (Registration Number 2906539)) submitted a Letter of Protest on September 11,
`Fungus And Anti—biotic# (Registration Number 2906539)) submitted a Letter of Protest on September 1 1,
`2006 to the Office of the Commissioner for Trademarks, Administrator for Trademark Identification,
`2006 to the Office of the Commissioner for Trademarks, Administrator for Trademark Identification,
`Classification & Practice. No response to that Letter of Protest has been received. Among other
`Classification & Practice. No response to that Letter of Protest has been received. Among other
`reasons, good cause further exists to permit the Trademark Administrator more time to decide on the
`reasons, good cause further exists to permit the Trademark Administrator more time to decide on the
`Letter of Protest which was hand delivered to the office prior to the date of publication. Eustaquio believes
`Letter of Protest which was hand delivered to the office prior to the date of publication. Eustaquio believes
`the Letter of Protest (submitted with exhibits) is meritorious and dispositive of the dispute. Specifically, the
`the Letter of Protest (submitted with exhibits) is meritorious and dispositive of the dispute. Specifically, the
`September 11th Letter Protest was brought pursuant to TMEP Section 1715.01(a)(2) as to the pending
`September 11th Letter Protest was brought pursuant to TMEP Section 1715.01(a)(2) as to the pending
`federal trademark registration application for the mark #QUADRYDERN N.F# in International Class 003
`federal trademark registration application for the mark #QUADR YDERN N. F# in International Class 003
`for #Skin Cream# filed on October 12, 2005 by Claudia Hernandez of Productos Zapotol (#Hernandez#).
`for #Skin Cream# filed on October 12, 2005 by Claudia Hernandez of Productos Zapotol (#Hernandez#).
`The Letter of Protest is brought by Yolanda Eustaquio (#Eustaquio#), the owner of a registered trademark
`The Letter of Protest is brought by Yolanda Eustaquio (#Eustaquio#), the owner of a registered trademark
`for #CREMA CUADRIDERMA# in International Class 005 for #Cream For Itching And Inflammation, Anti-
`for #CREMA CUADRIDERMA# in International Class 005 for #Cream For Itching And Inflammation, Anti-
`Fungus And Anti-biotic# (Registration Number 2906539). A. There Is A Likelihood Of Confusion Between
`Fungus And Anti—biotic# (Registration Number 2906539). A. There Is A Likelihood Of Confusion Between
`Eustaquio#s Registered Mark And Hernandez#s Pending Application. Eustaquio alleges that there is a
`Eustaquio#s Registered Mark And Hernandez#s Pending Application. Eustaquio alleges that there is a
`likelihood of confusion between her registered #CREMA CUADRIDERMA# mark and Hernandez#s
`likelihood of confusion between her registered #CREMA CUADRIDERMA# mark and Hernandez#s
`#QUADRYDERN N.F.# mark that is the subject of the instant registration application. Eustaquio presents
`#QUADRYDERN N.F.# mark that is the subject of the instant registration application. Eustaquio presents
`the following in support of her allegation: Under Section 2 of the Lanham Act (15 U.S.C. §1052), a
`the following in support of her allegation: Under Section 2 of the Lanham Act (15 U.S.C. §1052), a
`trademark shall be refused registration on the principal register on account of its nature if the mark, among
`trademark shall be refused registration on the principal register on account of its nature if the mark, among
`other things, #(d) Consists of or comprises a mark which so resembles a mark registered in the Patent
`other things, #(d) Consists of or comprises a mark which so resembles a mark registered in the Patent
`Office or a mark or trade name previously used in the United States by another and not abandoned, as to
`Office or a mark or trade name previously used in the United States by another and not abandoned, as to
`be likely, when applied to the goods of the applicant to cause confusion, or to cause mistake or to
`be likely, when applied to the goods of the applicant to cause confusion, or to cause mistake or to
`deceive.# Thus, under the statute the Director must refuse registration when confusion is likely because of
`deceive.# Thus, under the statute the Director must refuse registration when confusion is likely because of
`concurrent use of the marks of an applicant and a prior user on their respective goods. In any likelihood of
`concurrent use of the marks of an applicant and a prior user on their respective goods. In any likelihood of
`confusion analysis, two key considerations are the similarity of the marks and the similarity of the goods or
`confusion analysis, two key considerations are the similarity of the marks and the similarity of the goods or
`services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24 (CCPA
`services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S. P. Q. 24 (CCPA
`1976), and In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999). Eustaquio
`1976), and In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999). Eustaquio
`respectfully contends that both the marks and goods at issue are highly similar. The Examining Attorney
`respectfully contends that both the marks and goods at issue are highly similar. The Examining Attorney
`must first look at the marks themselves for similarities in appearance, sound, connotation and commercial
`must first look at the marks themselves for similarities in appearance, sound, connotation and commercial
`impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
`impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S. P. Q. 563 (CCPA 1973).
`Eustaquio respectfully alleges that her #CREMA CUADRIDERMA# and Hernandez#s #QUADRYDERN
`Eustaquio respectfully alleges that her #CREMA CUADRIDERMA# and Hernandez#s #QUADRYDERN
`N.F# are sufficiently similar under this standard so as to permit a finding of likelihood of confusion. For
`N. F# are sufficiently similar under this standard so as to permit a finding of likelihood of confusion. For
`one, both trademarks are phonetically similar in the Spanish language. Further, the dominant portions of
`one, both trademarks are phonetically similar in the Spanish language. Further, the dominant portions of
`the two marks are similar. Here, the dominant portion of CREMA CUADRIDERMA#s mark, which
`the two marks are similar. Here, the dominant portion of CREMA CUADRIDERMA#s mark, which
`disclaims the word #CREMA# (meaning #cream# in Spanish) is #CUADRIDERMA.# See In re National
`disclaims the word #CREMA# (meaning #cream# in Spanish) is #CUADRIDERMA.# See In re National
`Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985) (it is not improper to give more or
`Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985) (it is not improper to give more or
`less weight to a particular feature of a mark). That dominant portion is almost phonetically identical to the
`less weight to a particular feature of a mark). That dominant portion is almost phonetically identical to the
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`

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`proposed #QUADRYDERN# mark, especially when pronounced in Spanish. Neither the design element
`proposed #QUADRYDERN# mark, especially when pronounced in Spanish. Neither the design element
`nor the generic term #N.F.# contained in Hernandez#s proposed #QUADRYDERN# mark offers sufficient
`nor the generic term #N.F.# contained in Hernandez#s proposed #QUADR YDERN# mark offers sufficient
`distinctiveness to create a different commercial impression with the #CREMA CUADRIDERMA# mark.
`distinctiveness to create a different commercial impression with the #CREMA CUADRIDERMA# mark.
`Second, the Examining Attorney must compare the goods or services to determine if they are related or if
`Second, the Examining Attorney must compare the goods or services to determine if they are related or if
`the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck
`the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck
`KG, 218 U.S.P.Q. 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910
`KG, 218 U.S. P. Q. 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 U. S.P. Q. 910
`(TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 U.S.P.Q. 738 (TTAB 1978). In order to
`(TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 U. S.P. Q. 738 (TTAB 1978). In order to
`support a finding of likelihood of confusion, all that is required is a showing that the goods on which the
`support a finding of likelihood of confusion, all that is required is a showing that the goods on which the
`parties' marks are used are related in some manner or are marketed under conditions which would cause
`parties’ marks are used are related in some manner or are marketed under conditions which would cause
`a potential purchaser to assume, because of the marks under which they are sold, that they emanate from
`a potential purchaser to assume, because of the marks under which they are sold, that they emanate from
`the same source. See Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 U.S.P.Q. 851, 1978 WL
`the same source. See Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 U. S.P. Q. 851, 1978 WL
`21294 (Trademark Trial & App. Bd. 1978). Thus, in the absence of any limitations in the Applicant's
`21294 (Trademark Trial &amp,' App. Bd. 1978). Thus, in the absence of any limitations in the Applicant's
`identification of goods, one must assume that those goods are marketed in the same manner as any other
`identification of goods, one must assume that those goods are marketed in the same manner as any other
`related goods and are sold through all the trade channels normal for such goods. See CBS Inc. v. Morrow,
`related goods and are sold through all the trade channels normal for such goods. See CBS Inc. v. Morrow,
`708 F.2d 1579, 218 U.S.P.Q. 198 (Fed. Cir. 1983); Paula Payne Products Co. v. Johnson Pub. Co., Inc..
`708 F.2d 1579, 218 U.S.P.Q. 198 (Fed. Cir. 1983); Paula Payne Products Co. v. Johnson Pub. Co., Inc..
`473 F.2d 901, 177 U.S.P.Q. 76 (C.C.P.A. 1973). Here, Eustaquio respectfully alleges that the goods or
`473 F.2d 901, 177 U. S.P. Q. 76 (C. C.P.A. 1973). Here, Eustaquio respectfully alleges that the goods or
`products containing the #CREMA CUADRIDERMA# mark and the proposed #QUADRYDERN N.F.# mark
`products containing the #CREMA CUADRIDERMA# mark and the proposed #QUADRYDERN N.F.# mark
`are so sufficiently related under this standard so as to make confusion likely. Specifically, CREMA
`are so sufficiently related under this standard so as to make confusion likely. Specifically, CREMA
`CUADRIDERMA is advertised as an anti-inflammatory cream which temporarily relieves burns, rashes
`CUADRIDERMA is advertised as an anti—inflammatory cream which temporarily relieves burns, rashes
`and itching. According to Hernandez#s website (www.zapotol.com), the #QUADRYDERN N.F.# mark also
`and itching. According to Hernandez#s website (www.zapotol. com), the #QUADR YDERN N.F.# mark also
`appears on a cream product advertised to likewise relieve #irritaciones ligeras de la piel,
`appears on a cream product advertised to like wise relieve #irritaciones ligeras de la piel,
`inflamación# (#skin irritations and inflammation#). Indeed, Hernandez#s product packaging
`inflamaci&oacute,'n# (#skin irritations and inflammation#). Indeed, Hernandez#s product packaging
`containing the #QUADRYDERN N.F.# mark claims that the product is #for temporary relief of itching
`containing the #QUADR YDERN N.F.# mark claims that the product is #for temporary relief of itching
`associated with minor skin irritations, inflammation and rashes.# Finally, the fact that Eustaquio#s
`associated with minor skin irritations, inflammation and rashes.# Finally, the fact that Eustaquio#s
`#CREMA CUADRIDERMA# mark and Hernandez#s proposed #QUADRYDERN N.F.# mark are so
`#CREMA CUADRIDERMA# mark and Hernandez#s proposed #QUADRYDERN N.F.# mark are so
`strikingly similar and their products so related is of no accident. Prior to filing her registration for the
`strikingly similar and their products so related is of no accident. Prior to filing her registration for the
`#QUADRYDERN N.F# mark, applicant Hernandez was a regular customer of Eustaquio and her company
`#QUADRYDERN N. F# mark, applicant Hernandez was a regular customer of Eustaquio and her company
`Pro-Mex Distrbiutor, LLC. Indeed, attached hereto as Exhibit 7 are invoices, dated August 2003-August
`Pro—Mex Distrbiutor, LLC. Indeed, attached hereto as Exhibit 7 are invoices, dated August 2003—August
`2005, from Eustaquio#s company, Pro-Mex Distrbiutor, LLC, to Hernandez#s business Zapotal located at
`2005, from Eustaquio#s company, Pro—Mex Distrbiutor, LLC, to Hernandez#s business Zapotal located at
`the same address listed on Hernandez#s trademark application # 13400 Saticoy Street #8, North
`the same address listed on Hernandez#s trademark application # 13400 Saticoy Street #8, North
`Hollywood, California 91605. These invoices demonstrate that Hernandez was purchasing CREMA
`Hollywood, California 91605. These invoices demonstrate that Hernandez was purchasing CREMA
`CUADRIDERMA products from Pro-Mex Distributor, LLC over the course of several years. Indeed,
`CUADRIDERMA products from Pro—Mex Distributor, LLC over the course of several years. Indeed,
`Hernandez ceased purchasing products from Pro-Mex Distrbiutor, LLC around the time that Hernandez
`Hernandez ceased purchasing products from Pro—Mex Distrbiutor, LLC around the time that Hernandez
`filed her trademark application for the #QUADRYDERN N.F# mark. As detailed in a pending Counterclaim
`filed her trademark application for the #QUADRYDERN N.F# mark. As detailed in a pending Counterclaim
`filed by Eustaquio and Pro-Mex Distributor, LLC in the U.S. District Court, Central District of California,
`filed by Eustaquio and Pro—Mex Distributor, LLC in the U. S. District Court, Central District of California,
`Hernandez#s knowledge of the existence of the #CREMA CUADRIDERMA# mark and subsequent sale of
`Hernandez#s knowledge of the existence of the #CREMA CUADRIDERMA# mark and subsequent sale of
`#QUADRYDERN N.F# products constitutes willful trademark and trade dress infringement. Because of the
`#QUADR YDERN N. F# products constitutes willful trademark and trade dress infringement. Because of the
`similarity of Eustaquio#s registered mark and the mark that is the subject of the application and because
`similarity of Eustaquio#s registered mark and the mark that is the subject of the application and because
`of the relatedness of the lines of goods described, Eustaquio respectfully requests that you grant this
`of the relatedness of the lines of goods described, Eustaquio respectfully requests that you grant this
`Letter of Protest and advise the Examining Attorney as appropriate. The Examining Attorney must resolve
`Letter of Protest and advise the Examining Attorney as appropriate. The Examining Attorney must resolve
`any doubt as to the issue of likelihood of confusion in favor of the Registrant (Eustaquio) and against the
`any doubt as to the issue of likelihood of confusion in favor of the Registrant (Eustaquio) and against the
`Applicant (Hernandez) who has a legal duty to select a mark which is totally dissimilar to trademarks
`Applicant (Hernandez) who has a legal duty to select a mark which is totally dissimilar to trademarks
`already being used. Burroughs Wellcome Co. v. Warner-Lambert Company, 203 U.S.P.Q. 191, 1979 WL
`already being used. Burroughs Wellcome Co. v. Warner—Lambert Company, 203 U.S.P.Q. 191, 1979 WL
`24849 (Trademark Trial & App. Bd. 1979). B. Hernanadez#s Application Should Be Suspended
`24849 (Trademark Trial &amp,' App. Bd. 1979). B. Hernanadez#s Application Should Be Suspended
`Because of Pending Litigation Relevant To The Registrability of the Mark. In addition to the likelihood of
`Because of Pending Litigation Relevant To The Registrability of the Mark. In addition to the likelihood of
`confusion between her registered #CREMA CUADRIDERMA# mark and Hernandez#s #QUADRYDERN
`confusion between her registered #CREMA CUADRIDERMA# mark and Hernandez#s #QUADRYDEFlN
`N.F.#, Eustaquio requests that Hernandez#s #QUADRYDERN N.F.# application be suspended because
`N.F.#, Eustaquio requests that Hernandez#s #QUADRYDERN N.F.# application be suspended because
`of a pending lawsuit relevant to the registrability of the #QUADRYDERN N.F.# mark. Specifically, on
`of a pending lawsuit relevant to the registrability of the #QUADRYDERN N. F.# mark. Specifically, on
`December 9, 2005, Hernandez filed a lawsuit against Eustaquio and Pro-Mex Distributor, LLC requesting
`December 9, 2005, Hernandez filed a lawsuit against Eustaquio and Pro—Mex Distributor, LLC requesting
`declaratory judgment of non-infringement of Eustaquio#s #CREMA CUADRIDERMA# trademark. (See
`declaratory judgment of non—infringement of Eustaquio#s #CREMA CUADRIDERMA# trademark. (See
`Hernandez v. Eustaquio et al., U.S.D.C. Case No. CV05-8616.) Further, on March 17, 2006, Eustaquio
`Hernandez v. Eustaquio etal., U.S.D. C. Case No. CV05—8616.) Further, on March 17, 2006, Eustaquio
`filed a counterclaim against Hernandez in the U.S. District Court, Central District of California, in which
`filed a counterclaim against Hernandez in the U.S. District Court, Central District of California, in which
`Eustaquio alleges, among other things, that Hernandez is engaged in the unlawful making, sales and
`Eustaquio alleges, among other things, that Hernandez is engaged in the unlawful making, sales and
`distribution of the #QUADRYDERM N.F.# goods in violation of Eustaquio#s registered trademark
`distribution of the #QUADRYDERM N.F.# goods in violation of Eustaquio#s registered trademark
`#CREMA CUADRIDERMA#. Given this pending lawsuit, which is presently scheduled for trial in April of
`#CREMA CUADRIDERMA#. Given this pending lawsuit, which is presently scheduled for trial in April of
`2007, the #QUADRYDERN N.F.# application should be suspending until final judgment is entered.
`2007, the #QUADRYDERN N.F.# application should be suspending until final judgment is entered.
`The time within which to file a notice of opposition is set to expire on 11/11/2006. YolandaEustaquio
`The time within which to file a notice of opposition is set to expire on 11/11/2006. Yo|andaEustaquio
`respectfully requests that the time period within which to file an opposition be extended until 01/10/2007.
`respectfully requests that the time period within which to file an opposition be extended until 01/10/2007.
`Respectfully submitted,
`Respectfully submitted,
`/andres quintana/
`/andres quintanal
`
`

`
`1 1/ 1 0/2006
`11/10/2006
`Andres F. Quintana, Esq.
`Andres F. Quintana, Esq.
`Quintana Law Group, APC
`Quintana Law Group, APC
`21900 Burbank Boulevard, 3rd Floor
`21900 Burbank Boulevard, 3rd Floor
`Woodland Hills, CA 91367
`Woodland Hills, CA 91367
`UNITED STATES
`UNITED STATES
`andres@qlglaw.com
`andres@q|g|aw.com
`818-992-3114
`818-992-3114