IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Illlllllllllllllllllllllllllllllllllllllllllllllll
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`06-18-2002
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`US. Patent 8: TMOfcITM Mail Hcpt Dt. #74
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`In the Matter of Application Serial No. 76/172,481
`Published in the Ofiicial Gazette on May 21, 2002 at TM 389
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`Opposition No.:
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`551 Odgen, Inc.,
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`V.
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`Bone Daddy’s Inc.
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`Opposer,
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`Applicant.
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`BOX TTAB
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`FEE
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`Commissioner for Trademarks
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`2900 Crystal Drive
`Arlington, VA 22202-3513
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`NOTICE OF OPPOSITION
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`551 Ogden, Inc., a corporation organized and existing under the laws of the State of Illinois,
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`having its principal place of business at 1641 West Kinzie Avenue, Chicago, Illinois 60622
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`(“Opposer”) believes it will be damaged by registration of the mark shown in Serial No. 76/172,481
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`and hereby opposes the same.
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`As grounds of opposition, Opposer states:
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`1.
`Bone Daddy’s Inc., (“Applicant”) seeks to register BONE DADDY’S HOUSE OF
`SMOKE as a trademark in Class 25 for “clothing, namely, t—shi1ts, hats and apparels advertising
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`applicant’s restaurant and catering food services” (hereinafter “Applicant’s goods”), as published in
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`the Official Gazette of May 21, 2002 at TM 389.
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`. Opposer filed an Intent to Use Application for the mark BONE DADDY in Class 42
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`on April 13, 1998. Opposer filed an Intent to Use Application for the BONE DADDY mark in Class
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`30 on November 8, 1999. Opposer has, since at least as early as December 23, 2000, used the family
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`of BONE DADDY marks in connection with its restaurant and catering food services, with clothing
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`bearing advertising for its restaurant services, as well as with its barbecue sauce and dry rub
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`seasoning. These Intent to Use Applications have matured into registrations.
`3.
`Opposer is the owner of the following two U.S. trademark registrations:
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`BONE DADDY, Registration No. 2,471,883 in Class 42, registered on July 24, 2001, with a
`date of first use of December 23, 2000, for restaurant and bar services.
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`BONE DADDY, Registration No. 2,478,567 in Class 30, registered on August 14, 2001,
`with a date of first use of December 23, 2000, for barbecue sauce and dry rub seasoning.
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`4.
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`Applicant has unsuccessfully attempted to register BONE DADDY’S HOUSE OF
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`SMOKE in Class 42. The application for that mark, serial number 76/172,482, was filed on
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`November 28, 2000. As of April 18, 2001, an office action suspending further action on the
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`application had been mailed.
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`5.
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`The goods for which Applicant seeks to register the mark BONE DADDY’S
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`HOUSE OF SMOKE are closely related to the goods and services actually provided by Opposer, as
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`well as the registrations in Classes 30 and 42. Registration of Applicant’s mark in Class 25 would
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`create the same likelihood of confusion. This is particularly true because, according to its
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`suspended 76/172,482 application, supra, Applicant operates a barbecue restaurant and bar.
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`Moreover, the identification of goods in the present application (76/ 172,481) specifically indicates
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`that the clothing is for the purpose of “advertising applicant’s restaurant and catering food services.”
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`6.
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`Opposer’s marks have priority over Applicant’s mark. Opposer filed an Intent to Use
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`Application for registration of BONE DADDY in Class 42 on April 13, 1998, and filed the same sort
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`_i of application in Class 30 on November 8, 1999. Applicant did not use its mark in commerce until
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`January 1, 2000. Applicant also did not file its application for registration of BONE DADDY’S
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`HOUSE OF SMOKE until November 28, 2000, over two and one half years after Opposer’s initial
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`filing. Accordingly, Opposer has priority.
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`7.
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`Opposer has expended significant resources in the promotion and advertising of
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`goods and services under the BONE DADDY marks and name. Opposer has built a substantial
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`reputation, and its BONE DADDY marks and name have become widely known for denoting high
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`quality goods and services in the barbecue restaurant industry.
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`8.
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`Opposer’s rights in and to its various BONE DADDY marks and names are superior
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`to Applicant’s rights in its BONE DADDY’S HOUSE OF SMOKE application by virtue of
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`Opposer’s prior registrations, and Opposer’s longstanding use of the mark BONE DADDY in
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`interstate commerce within the United States.
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`9.
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`Applicant has substantially incorporated Opposer’s mark BONE DADDY in its
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`proposed mark BONE DADDY’S HOUSE OF SMOKE. Applicant’s mark is intended to identify
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`goods provided to the same type of customers, namely patrons of barbecue restaurants, as the goods
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`and services provided by Opposer. BONE DADDY’S HOUSE OF SMOKE so nearly resembles
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`Opposer’s marks as to be likely to be confused with and mistaken for Opposer’s marks. Applicant’s
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`mark is deceptively similar to Opposer’s marks so as to cause confusion and lead to deception as to
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`the origin of Applicant’s goods associated with the mark.
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`10.
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`If Applicant is permitted to use and register the subject mark for its goods as specified
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`in Application serial number 76/172,482, it will cause confusion in trade, as well as damage and
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`injury to the Opposer. Persons familiar with Opposer’s marks would likely seek Applicant’s goods as
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`and for those of Opposer. Any such confusion in trade inevitably would result in loss of sales to
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`’ Opposer: Furthermore, any defect, objection, or fault found with Applicant’s goods marketed under its
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`mark would necessarily reflect upon and seriously injure the reputation that Opposer has established
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`for the goods and services marketed under its marks.
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`11.
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`If Applicant is granted the registration it seeks, it would have at least a prima facie
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`exclusive right to use the mark BONE DADDY’S HOUSE OF SMOKE. Such registration would be a
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`source of damage and injury to Opposer.
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`WHEREFORE, Opposer prays that the application Serial No. 76/172,482 be rejected, and that
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`the mark therein sought for the services recited be denied and refused.
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`A duplicate copy of this Notice of Opposition and the fee of $300.00 required under 37 C.F.R.
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`§2.6(a)(17) are enclosed. The Commissioner is authorized to charge payment of any additional fees
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`associated with this filing or credit any overpayment to Deposit Account No. 04-0257 (Davis,
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`Mannix & McGrath).
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`Respectfully submitted,
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`551 Ogden, Inc.
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`W/a;..v:)4a
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`One of its attorneys
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`William T. McGrath
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`Kevin A. Thompson
`DAVIS, MANNIX & MCGRATH
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`125 S. Wacker Drive, Suite 1700
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`Chicago, Illinois 60606
`(312) 332-3033 (Voice)
`(312) 332-6376 (Fax)
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`Dated: 5’/3/09;’
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`CERTIFICATE OF EXPRESS MAILING
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`"Express Mail" mailing label number:
`Date of Deposit:
`é lg 03“
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`E V 1, l E, 5 '? El 1 E E, U 3
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`I hereby certify that the foregoing Notice of Opposition, along with the prescribed fee are being
`deposited with the United States Postal Service as Express Mail, postage prepaid, in an envelope
`addressed to BOX TTAB/FEE, Assistant Commissioner for Trademarks, 2900 Crystal Drive,
`Arlington, VA 22202-3513 on the date indicated above.
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`(pf/€409‘
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`Date of signature
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`2%
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`Signature
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`Ex//W Q.
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`/3 R 0 V\l/\/
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`Printed Name
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`DAVIS, MANNIX & MCGRATH
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`125 S. Wacker Drive, Suite 1700
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`Chicago, D. 60606
`(312) 332-3033
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`

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`EVAN D. BROWN
`Licensed Only in Colorado
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`DAVIS, MANNIX & MCGRATH
`ATTORNEYS AT LAW
`125 SOUTH WACKER DRIVE
`SUITE 1700
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`CHICAGO, ILLINOIS 60606-4402
`(312) 332-3033
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`June 1 8, 2002
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`FAX (312) 332-6376
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`06-1 8-2002
`U.S. Patent & TMOfcITM Mail Rep! D1. #74
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`FEB
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`Assistant Commissioner for Trademarks
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`2900 Crystal Drive
`Arlington, VA 22202-3513
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`Re:
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`Notice of Opposition - BONE DADDY’S HOUSE OF SMOKE
`Serial No.: 76/172,481
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`Dear Sir or Madam:
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`Enclosed please find the following documents:
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`1) an original and one copy of a Notice of Opposition — BONE DADDY’S
`HOUSE OF SMOKE - Serial Number: 76/172,481, filed on behalf of 551
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`Ogden, Inc.;
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`2) a check in the amount of $300.00 as the filing fee; and
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`3) a postcard for confirmation of your receipt of this correspondence.
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`81318-HVBZNRFZ0
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`The Commissioner is hereby authorized to charge payment of any additional fees
`associated with this filing to Deposit Account No. 04-0257 (Davis, Mannix & McGrath).
`A duplicate copy of this letter is enclosed for charging purposes.
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`Very truly yours,
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`DAVIS, MANNIX & MCGRATH
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`fly/««/éam
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`Evan D. Brown
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`EDB/st
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`Enclosures