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`08-20-2001
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`u.s. Puunza. TMOfclTM Mall acptm. was TRADEMARK
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`) Opposition No.
`)
`) Mark: DeNOVUS [Stylized]
`)
`Serial No: 75/371,426
`
`) )
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`Mark: DENOVUS
`Serial No. 75/371,084
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`)
`)
`) Mark: DeNOVUS OUT OF THE NEW and Design
`)
`Serial No. 75/437,672
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`TCG INTERNATIONAL INC.
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`V.
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`DENOVUS L.L.C.
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`Opposer,
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`Applicant.
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`CERTIFICATE UNDER 37 CFR 1.8: The undersigned hereby certifies that this correspondence is being deported in the United States Postal
`:
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`'-' addressed to: Assistant Commissioner for Trademarks, Box TTAB, 2900 Crystal Drive, Arlington, V -
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`NOTICE OF OPPOSITION
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`To The Assistant Commissioner for
`Trademarks
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`ATTN: BOX TTAB
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`2900 Crystal Drive
`Arlington, VA 22202-3513
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`Dear Sir:
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`TCG International Inc., a corporation duly organized and existing under the laws of the
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`Canada, with a mailing address of 4710 Kingsway, 28”‘ F1. Burnaby, British Columbia, Canada,
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`VSH 4M2, believes that it will be damaged by the registration of the marks shown in application
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`Serial No. 75/437,672, filed February 20, 1998, Serial No. 75/371,426, filed October 10, 1997,
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`and Serial No. 75/371,084, filed October 10, 1997 by DeNovus L.L.C., with a mailing address of
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`2000 US Hwy 63 South, Moberly, MO 65270, and hereby opposes registration of the marks.
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`The grounds for opposition are as follows:
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`1. By applications herein opposed, Applicant is seeking to obtain under the provisions of
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`the Trademark Act of 1946 as amended, registration on the principal register of the Trademark
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`DeNOVUS OUT OF THE NEW and Design for “adhesives for applying wall coverings;
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`adhesives for use in the manufacture or repair of aircraft, vehicles, and residential and
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`commercial housing; adhesives for use in the metal building industry and in industrial
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`manufacturing; epoxy containing foams for use in the manufacture or repair of aircraft, vehicles,
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`and residential and commercial housing, in International Class 1; corrosion resistant coatings for
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`use as corrosion inhibitors, neutralizers and releases in the molding industry including injection
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`molding, in International Class 2; caulking; adhesive sealants and caulking compounds for
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`general use; sealants for use in the metal building industry and industrial manufacturing in
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`International Class l7”; and the Trademarks DeNOVUS [Stylized] and DENOVUS for
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`“adhesives for use in the manufacture or repair of aircraft, vehicles, and residential and
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`commercial housing; polyurethane free foams for use in the manufacture or repair of aircraft,
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`vehicles, and residential and commercial housing in lntemational Class 1; corrosion resistant
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`coatings for use in protecting metal, ceramic and wood from deterioration in International Class
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`2; and adhesive sealants and caulking compounds for general use in International Class l7”. The
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`applications are based on an intention to use the mark pursuant to section l(b) of the Trademark
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`Act. No Amendments to Allege Use have been filed.
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`7
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`.
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`2. Opposer is the owner of U.S. Trademark Registration No. 1,438,761, registered on
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`May 5, 1987 for the mark NOVUS for “repairing damaged glass”; U.S. Trademark Registration
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`No. 1,295,361, registered September 18, 1984 for the mark NOVUS for “synthetic liquid
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`polymerizable material for repairing cracks in glass for electrically operated hand held dri11s.and
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`drill bits for drilling holes in glass for repair apparatus for repair of cracks in glass such as
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`
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`automotive Windshields-namely, a support that mounts on the glass surface and an injector for
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`mounting on the support and for injecting repair material into a crack to be repaired, and a curing
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`lamp for curing the repair material”; and U.S. Trademark Registration No. 1,045,704, registered
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`on August 10, 1976 for the mark NOVUS for “polish for all plastic surfaces”. Attached are two
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`certified copies of Registration Nos. 1,438,701, 1,295,361, and 1,045,704 showing the current
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`status of and current title to the registrations, pursuant to 37 C.F.R. § 2.122 (d). See Exhibits A,
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`B, and C, respectively. Furthermore, Opposer has sold its goods and offered its services listed in
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`its registrations in interstate commerce for many years and has common law rights in and to its
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`marks.
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`3. There is no issue priority concerning application Serial Nos. 75/437,672, 75/371,426,
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`and 75/371,084 since Opposer’s NOVUS marks were used and registered prior to Applicant's
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`filing dates, and Applicant asserts no date of first use for any of these marks.
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`4. Opposer’s marks have been in use in interstate commerce, have been advertised and
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`promoted by Opposer or its affiliates, and have developed and represent valuable good will in the
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`benefit of Opposer. Opposer’s marks have trademark significance to purchasers and potential
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`purchasers.
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`5. Applicant's marks are confusingly similar to Opposer’s marks. Applicant’s use of
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`“DeNOVUS” in its marks is nearly identical in sight, sound, and meaning to Opposer’s marks.
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`For example, Applicant’s stylized use of “DeNOVUS” emphasizes the word 3‘NOVUS”.
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`Furthermore, the term “de” may be translated in Spanish or French to mean “or” suggesting that
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`Applicant’s marks can be translated to mean “of NOVUS”. Consumers may interpret
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`Applicant’s use of DeNOVUS to mean that Applicant’s goods are “of”, or related to, Opposer’s
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`goods or services marketed under the NOVUS marks.
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`6.
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`Applicant’s products include adhesives for use in the manufacture or repair of
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`aircraft and vehicles, corrosion resistant coatings, caulking and adhesive sealants. Opposer’s
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`products and services include repairing damaged glass, synthetic material and tools for repairing
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`cracks, and polish for all surfaces. Consumers are likely to view Applicant's products as
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`Opposer's products or a line extension of Opposer's products marketed under Applicant’s marks.
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`7.
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`Opposer has for many years used it NOVUS mark on adhesives used during the
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`installation and repair of glass in vehicles, and elsewhere. The adhesive is a key component in
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`properly installing glass. Customers might mistakenly believe that Applicant’s adhesives and
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`related products are suitable for use in place of Opposer's similar products, possibly resulting in
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`improperly installed glass, and a serious risk of injury to persons and damage to Opposer.
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`8.
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`The goods sold by Opposer under Opposer’s NOVUS marks are closely related to
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`the goods .to be sold by Applicant under Applicant’s DeNOVUS OUT OF THE NEW and
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`Design, DeNOVUS [Stylized], and DENOVUS marks.
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`9.
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`Opposer's and Applicant's products may be sold in the same channels of trade to
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`the same consumers or class of consumers.
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`10.
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`Due to the similarity of Opposer's previously used and registered NOVUS marks
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`with Applicant's DeNOVUS OUT OF THE NEW and Design, DeNOVUS [Stylized], and
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`DENOVUS marks and the closely related nature of the goods and services of the respective
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`parties, customers and potential customers are likely to believe that Applicantls products
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`originate from Opposer, resulting in a likelihood of confusion in the marketplace and damage to
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`Opposer.
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`1 1.
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`The use or registration by Applicant of the DeNOVUS OUT OF THE NEW. and
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`Design, DeNOVUS [Stylized], and DENOVUS marks are likely to cause confusion or to cause
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`C‘
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`mistake or deception in the wholesale and the retail trade, and among purchasers and potential
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`purchasers, with Opposer‘s previously used and registered NOVUS marks, again resulting in
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`damage to Opposer.
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`12.
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`Because of the closely related nature of Applicant’s goods with Opposer’s goods
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`and services, and the near identity of the marks, use and registration of the DeNOVUS OUT OF
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`THE NEW and Design, DeNOVUS [Stylized], and DENOVUS marks by Applicant are likely
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`to cause confusion, mistake, or deception that Applicant's goods are those of Opposer or
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`otherwise endorsed, sponsored, or approved for Opposer causing further damage to Opposer.
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`13.
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`Registration of the mark shown in Application Serial Nos. 75/437,672,
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`75/371,426, and 75/371,084 will result in damage to Opposer under provisions of Section 2(a)
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`and 2(d) of the U.S. Trademark Act, 15 U.S.C. Section 1052, pursuant to the allegations stated
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`above.
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`WHEREFORE, Opposer asks that its opposition to these applications be sustained and
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`that the registrations of the DeNOVUS OUT OF THE NEW and Design, DeNOVUS
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`[Stylized], and DENOVUS marks set forth therein be refused. Please direct all correspondence
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`to the attention of John A. Clifford:
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`Merchant & Gould P.C.
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`PO Box 2910
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`Minneapolis, MN 55402
`612/332-5300
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`Opposer hereby appoints Kristina M. Foudray; Brian H. Batzli, Reg. No. 32,960; John L.
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`Beard, Reg. No. 27,612; Linda M. Byme, Reg. No. 32,404; John A. Clifford, Reg. No. 30,247;
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`Sandra Epp Ryan, 39,667; Gregory C. Golla; John D. Gould, Reg. No. 18,223; Curtis B. Hainre,
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`Reg. No. 29,165; Scott W. Johnston, Reg. No. 39,721; D. Randall King; Anna W. Manville; and
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`

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`
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`‘ Paul A. Welter, Reg. No. 20,890 of Merchant & Gould as attorneys with the full power to
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`represent the applicant in connection with this application.
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`Accompanying the duplicate signed copies of this Notice of Opposition is the required
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`fee of $2,700.00. Please charge any excess fees or credit any overpayment to Deposit Account
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`No. 13-2725 of Opposer’s counsel noted above.
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`Respectfully submitted,
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`TCG INTERNATIONAL INC.
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`By its attorneys,
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`
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`I
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`Datedzfr 2 5 ZOO]
`'
`
`i
`
`(%
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`A
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`John A. Clifford
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`Kristina M. Foudray
`MERCHANT & GOULD
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`PO Box 2910
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`Minneapolis, MN 55402
`612/332-5300