713923
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 78/094,653
`Filed: November 21, 2001
`For the mark SURE QUIT
`Class: 5
`
`Published in the Official Gazette at TM 305 on July 23, 2002
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`O8-1 6-2002
`U.S. Plttnt ll TMOVOITM MIII Rep! D1. 026
`
`E3
`
`33
`C:
`3.-
`Co
`;.
`:-
`
`Opposition No.
`
`) )
`
`)
`>
`)
`1
`)
`>
`)
`
`NOTICE OF OPPOSITION
`
`SHURFINE FOODS, INC.,
`
`Opposer,
`
`v.
`
`CCA INDUSTRIES, INC.
`
`Applicant.
`
`1.
`
`SHURFINE FOODS, INC., an Illinois corporation having its principal place of
`
`business at 6700 S.W. Sandburg Street, Tigard, Oregon 97223 (hereinafter “Opposer”), believes
`
`that it is damaged by registration of the mark SURE QUIT that is the subject of U.S. Trademark
`
`Application Serial No. 78/094,653 (hereinafter “’653 application”) for dietary supplements for
`
`weight and smoking control in international class 5 by CCA INDUSTRIES, INC., having a
`
`principal place of business at 200 Murray Hill Parkway, East Rutherford, NJ 07073 (hereinafter
`
`“Applicant”). The '653 application was filed November 21, 2001, and published in the Official
`
`Gazette at TM 305 on July 23, 2002. Applicant hereby opposes registration of the ’653
`00/26/2002 TSHITH
`00000110 75094653
`a
`lication.
`pp
`300.00 0P
`
`01 FC:377
`
`As first grounds for opposition, Opposer alleges as follows:
`
`2.
`
`Opposer owns numerous registrations for SHUR— prefix marks, i.e., U.S.
`
`Registration Nos. 2,285,574; 2,341,464; 1,916,702; 1,820,916; 1,691,599; 1,683,923; 807,575;
`
`559,719; and 558,657 for the mark SHURFINE as a service mark, collective mark, and
`
`trademark for a variety of grocery and household products; U.S. Reg. Nos. 2,216,611; 2,153,416;
`
`2,112,899; 1,546,999; and 770,099 for the mark SHUR VALU for grocery and household
`
`NOTICE OF OPPOSITION
`
`PAGE 1
`
`DO. NO. 8381-443
`
`

`
`
`
`products; U.S. Registration Nos. 2,276,332; 1,286,296; 1,152,556; 945,843; 786,505; and
`
`686,418 for the mark SHURFRESH for a variety of grocery products; U.S. Registration Nos.
`
`1,722,210; 1,711,996; 1,703,595; 1,445,491; 1,435,514; 1,435,858; 1,435,631; 1,435,870;
`
`1,431,181; 1,430,811; and 1,237,527 for the mark SHUR SAVING for grocery and household
`
`products; U.S. Reg. No. 2,314,177 for the mark SHUR SAVE for retail grocery store services;
`
`U.S. Reg. No. 2,302,287 for the mark SHUR FLAVOR for frozen dairy products, namely, ice
`
`cream; U.S. Reg. No. 2,222,998 for the mark SHUR TECH for various automotive maintenance
`
`products; U.S. Reg. No. 1,134,376 for the mark SHURFINE (stylized) for aspirin, vitamins, and
`
`vitamin and mineral combinations; U.S. Reg. No. 1,702,791 for the mark SHURFINE for cotton
`
`puffs and swabs for medical purposes, hydrogen peroxide, antacids, cold tablets, decongestant
`
`tablets, ibuprofen, non-aspirin pain relievers, isopropyl alcohol, sanitary napkins, and witch
`
`hazel; and U.S. Reg. No. 2,170,823 for the mark SHURFINE (stylized) for over the counter
`
`medications, namely, nutritional and mineral supplements, appetite suppressants, travel sickness
`
`tablets, sleeping pills/tablets, laxatives, acne medications, antibiotic ointment, antibiotic cream,
`
`menthold, chest rub, hydrocortisone cream, topical gel for medical and therapeutic use, topical
`
`ointments and topical creams for antibiotic, anti-inflammatory, antiseptic and anesthetic use,
`
`antacids, decongestants, antihistamines, cough drops, cold medications, influenza medications,
`
`allergy medications, throat spray, cough syrup, throat lozenges, nasal spray, oral analgesics,
`
`diarrhea medications, and hemorrhoidal medications, and diaper rash ointment.
`
`3.
`
`Applicant’s mark SURE QUIT so resembles ()pposer’s registered SHURFINE,
`
`SHUR VALU, SHURFRESH, SHUR SAVING, SHUR SAVE, SHUR FLAVOR, and SHUR
`
`TECH, marks as to be likely, when used on or in connection with the goods or services of the
`
`Applicant, to cause confusion, mistake or deception.
`
`As second, alternative, grounds for opposition, Opposer alleges as follows:
`
`4.
`
`Opposer, since prior to Applicant’s filing date: or any date of first use upon which
`
`Applicant can rely, used and not abandoned the mark SHURFINE as a service mark, collective
`
`mark, and trademark for a variety of over the counter medications sold in grocery, drug, and
`
`convenience stores including aspirin, vitamins, vitamin and mineral combinations, cotton puffs
`
`and swabs for medical purposes, witch hazel, antacids, cold tablets, decongestant tablets, epsom
`
`NOTICE OF OPPOSITION
`
`PAGE 2
`
`Do. No. 8381-443
`
`

`
`
`
`salt, hydrogen peroxide, isopropyl alcohol, sanitary napkins, ibuprofen, petroleum jelly, non-
`
`aspirin pain relievers, nutritional and mineral supplements, appetite suppressants, travel sickness
`
`tablets, sleeping pills/tablets, laxatives, acne medications, antacids, decongestants,
`
`antihistamines, cough drops, cold medications, influenza medications, allergy medications, throat
`
`spray, cough syrup, throat lozenges, nasal spray, oral analgesics, diarrhea medications,
`
`hemorrhoidal medications, and diaper rash ointment.
`
`5.
`
`Opposer, since prior to Applicant’s filing date or any date of first use upon which
`
`Applicant can rely, used and not abandoned the mark SHUR VALU for grocery and household
`
`products sold in grocery, convenience, and drug stores.
`
`6.
`
`Opposer, since prior to Applicant’s filing date or any date of first use upon which
`
`Registrant can rely, used and not abandoned the mark SHUKFRESH for grocery and household
`
`products sold in grocery, convenience, and drug stores.
`
`7.
`
`Opposer, since prior to Applicant’s filing date or any date of first use upon which
`
`Applicant can rely, used and not abandoned the mark SHUR SAVING for grocery and
`
`household products sold in grocery, convenience, and drug stores.
`
`8.
`
`Opposer, since prior to Applicant’s filing date or any date of first use upon which
`
`Applicant can rely, used and not abandoned the mark SHUR SAVE for retail grocery store
`
`services.
`
`9.
`
`Opposer, since prior to Applicant’s filing date: or any date of first use upon which
`
`Applicant can rely, used and not abandoned the mark SHUR FLAVOR for grocery products sold
`
`in grocery, convenience, and drug stores.
`
`10.
`
`Opposer, since prior to Applicant’s filing date or any date of first use upon which
`
`Applicant can rely, used and not abandoned the mark SHUR TECH for automotive products sold
`
`in grocery, convenience, and drug stores.
`
`NOTICE OF OPPOSITION
`
`PAGE 3
`
`Do. No. 8381-443
`
`

`
`
`
`ll.
`
`Applicant’s mark SURE QUIT so resembles Opposer’s previously used marks
`
`SHURFINE, SHUR VALU, SHURFRESH, SHUR SAVING, SHUR SAVE, SHUR FLAVOR,
`
`and SHUR TECH as to be likely, when used on or in connection with the goods or services of
`
`the Applicant, to cause confusion, mistake or deception.
`
`As third, alternative, grounds for opposition, Opposer alleges as follows:
`
`12.
`
`Opposer owns a family of SHUR- prefix marks including SHURFINE, SHUR
`
`VALU, SHURFRESH, SHUR SAVING, SHUR SAVE, SHUR FLAVOR, and SHUR TECH.
`
`13.
`
`Opposer, since prior to Applicant’s filing date or any date of first use upon which
`
`Applicant can rely, used and promoted its marks SHURFINE, SHUR VALU, SHURFRESH,
`
`SHUR SAVING, SHUR SAVE, SHUR FLAVOR, and SHUR TECH as a family of marks.
`
`14.
`
`Applicant’s mark SURE QUIT is so similar to Opposer’s family of marks that,
`
`when used on or in connection with the goods or services of the Applicant, is likely to be
`
`perceived as another member of Opposer’s family of marks, a:nd is likely to cause confusion,
`
`mistake or deception.
`
`As fourth, alternative, grounds for opposition, Opposer alleges as follows:
`
`15.
`
`Opposer’s marks SHURFINE, SHUR VALU, SHURFRESH, SHUR SAVING,
`
`SHUR SAVE, SHUR FLAVOR, and SHUR TECH have become distinctive and famous within
`
`the meaning of Section 43(c) of the Trademark Act [15 U.S.C. Section ll25(c)].
`
`16.
`
`Applicant’s use and registration of the mark SURE QUIT will cause dilution of
`
`the distinctive quality of Opposer’s famous marks.
`
`As a fifth, alternative, grounds for opposition, Opposer alleges as follows:
`
`17.
`
`Applicant’s mark SURE QUIT when used on or in connection with the goods of
`
`the Applicant falsely suggest a connection with Opposer within the meaning of Section 2(a) of
`
`the Trademark Act [15 U.S.C. Section l052(a)].
`
`As a sixth, alternative, grounds for opposition, Opposer alleges as follows:
`
`NOTICE OF OPPOSITION
`
`PAGE 4
`
`DO. NO. 8381-443
`
`

`
`
`
`18.
`
`Applicant’s mark SURE QUIT when used on or in connection with the goods of
`
`the Applicant is merely descriptive.
`
`WHEREFORE, Opposer asks the Board to sustain this opposition and refuse registration
`to the Applicant.
`
`Respectfully submitted,
`
`MARGER JOHNSON & MCCOLLOM, P.C.
`
`
`
`
`racie a G. Cowger
`Reg. No. 42,444
`Attorney for C)pposer
`
`MARGER JOHNSON & MCCOLLOM, P.C.
`1030 SW Morrison Street
`
`Portland, OR 97205
`(503) 222-3613
`
`I hereby certify that this correspondence is
`being deposited on August 14, 2002 with the
`United States Postal Service as First Class
`
`mail in an envelope addressed to Box TTAB
`Fee, Trademark Trial and Appeal Board,
`2900 Crystal Drive, Arlington, VA 22202-
`3513.
`
`Lisbeth" A. Nichols
`
`zfifia
`
`NOTICE OF OPPOSITION
`
`PAGE 5
`
`DO. NO. 8381-443
`
`

`
`
`
`'
`
`Illlllllllllllllllllllllllllllllllllllllllllllllll
`
`08-1 6-2002
`U.8. Pahnta TMOfc/TM Mill Rep! Dt. #26
`
`1 raoemark Application
`Do. No. 8381-443
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re trademark application of:
`
`CCA Industries, Inc.
`
`Serial No. 78/094,653
`
`C
`
`Trademark Attorney: Keith E. Danish
`
`Filed:
`
`November 21, 2001
`
`Class:
`
`5
`
`Mark: '
`
`SURE QUIT
`
`Box TTAB FEE
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`TRANSMITTAL LETTER
`
`Enclosed are the following items concerning the above-referenced application:
`
`K4
`
`XXIX]
`
`Notice of Opposition (in duplicate)
`PTO Form 2038 authorizing credit card payment in the amount of $300.00
`Return Postcard
`
`Any deficiency or overpayment should be charged or credited to Deposit Account
`Number 13-1703.
`
`Respectfully submitted,
`
`MARGE OHNSON & MCCOLLOM, P.C.
`
`
`
`Gracie a G. Cowger, Reg. No. 42,444
`Attorney for Opposer
`
`&tMCCOLLOM’ PC’
`rec
`
`Ornson
`Portland: OR 97205
`(503) 222-3613
`
`I hereby certify that this correspondence is
`being deposited on August 14, 2002 with the
`United States Postal Service as First Class
`mail in an envelope addressed to Box TTAB
`Fee, Trademark Trial and Appeal Board,
`2900 Crystal Drive, Arlington, VA 22202-
`3513.
`
`Lisbeth A. Nichols