throbber
/l‘ifi\E’>
`
`‘—
`11-29.2002
`US.Patent8:TMOfc/TMMail HcptD1. #7
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`ATTORNEY DOCKET NO: T-57296
`
`1l|||||llliii||||lllll|||||ll||||||||||l|||||H|||
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 78/078915
`For the mark: ACS
`
`Published in the Official Gazette on October 29, 2002
`
`.
`F. Zimmerman GmbH & Co. KG
`V.
`o
`Hamamatsu Photonics K.K.
`
`.
`.
`Commissioner for Trademarks
`Box TTAB-fee
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`x.)
`:9
`Q,
`
`Ch
`3:2
`
`Ci)
`C
`*0
`
`.2-’
`;. C")
`3,‘ ff‘:
`
`‘F’ _. 3.
`.3 ...'-"<
`5:.
`
`73'"
`F.»
`1-3
`
`‘
`
`NOTICE OF OPPOSITION
`
`F. Zimmerman Gmbl-I & Co. KG, (opposer) a corporation duly organized and existing
`
`under the laws of Germany, with a principal place of business at Lutzowstr. 70-73, DE 10785
`
`Berlin, Germany, believes that it would be damaged by the registration ofthe mark shown in
`
`the above-identified application, and hereby opposes that mark, pursuant to 15 USC 1063 and
`
`37 CFR 2.104.
`
`i
`‘
`
`‘
`
`,
`
`3
`
`As grounds for opposition, it is alleged that:
`
`12/12/2002 KGIBBOHB 00000035 78070915
`
`01 FC:6402
`
`300.00 DP
`
`

`
`
`
`°‘
`
`(1) Hamamatsu Photonics K.K., (Applicant) seeks to register ACS as a trademark for
`
`goods in international class 9, as evidenced by the publicationof said mark in the Official
`
`Gazette of October 29, 2002 at page TM344.
`
`(2) Opposer is and has been engaged in the sale and marketing of identical or highly
`
`related goods to those recited in class 9 by applicant in its application to register since a time
`
`prior to the filing date of app1icant’s intent to use application for registration.
`
`(3) There is no issue as to priority. Applicant's filing date, August 13, 2001, is
`
`subsequent to Opposer's dates of first use of its mark of Registration No. 2365019, and
`
`subsequent to the issue date of said registration.
`
`(4) Opposer is and has been engaged in the sale of goods under the registered
`
`trademark ACS since at least as early as October 1997.
`
`(5) By reason of Opposer's continued and exclusive use of its trademark ACS from
`
`a date long prior to Applicant's filing of its mark, Opposer has rights in its mark which are
`
`superior to Applicant's rights.
`
`(6) Opposer is the owner of the following valid and subsisting U.S. trademark
`
`registration:
`
`ACS - registration no. 2,365,019 registered July 4, 2000.
`
`(7) Opposer's registration is prima facie proof of ownership of the mark, pursuant to
`
`15 USC 1057(b), and of the exclusive right to use the registered mark in commerce.
`
`(8) Opposer has used its mark in commerce and has acquired valuable goodwill and
`
`recognition for its mark. Resulting from Opposer's ACS mark, the public has come to
`
`associate "ACS" with Opposer and Opposer's goods.
`
`

`
`
`
`(9) Opposer’s coin redemption machines perform an examination and Verification of
`
`currency within.
`
`1
`
`(10) Applicant's mark is confusingly similar to Opposer's registered trademark and is
`
`likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake or
`
`to deceive. 15 U$C 1052(d).
`
`(1 1) Applicant's mark makes an identical commercial impression to opposer's mark
`1
`due to it being ideintical to opposer’s mark. This identical look and sound, especially when
`
`combined with Opposer’s goods is likely to lead consumers to believe the Applicant's goods
`
`emanate from Opposer.
`l
`
`(12) The dverall commercial impression ofapplicant's mark, when applied to the same
`\
`
`or similar goods, would cause confusion or be likely to cause confusion, mistake, or deception.
`
`(13) Upori information and belief, both the applicant's mark and Opposer's marks are
`1’
`applied to identical or highly related goods and are likely to be sold through the same or
`I
`similar channels of distribution. Applicant's mark so resembles Opposer's registration and
`
`trademark, as useil in the United States and not abandoned, as to be likely to cause confusion,
`
`or to cause mistake or to deceive.
`
`(14) As q)pposer's and Applicant's products are likely to be sold through the same
`
`channels of tradel the public would naturally assume that Applicant's products are a normal
`
`1 4
`
`extension of Opposer's business.
`
`(15) Upon information and belief, ifApplicant is permitted to use and register its mark
`l
`
`for its goods, as specified in the application herein opposed, confusion in the trade is likely to
`
`result by reason of the identity of the two marks and relatedness of the respective products,
`
`

`
`
`fa
`1‘.4
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer's marks would be
`
`likely to buy Applicant's goods as and for a product made and sold by Opposer.
`
`Any such
`
`confiision in trade inevitably would result in loss of sales to Opposer. Furthermore,
`
`any defect
`
`objection or fault found with Applicant's products marketed under its mark would necessarily
`
`reflect upon and seriously injure the reputation which Opposer has established for its products
`\
`
`sold under the mark.
`l
`
`(16) Upori
`
`information and belief,
`
`the Applicant's mark has not been used in
`
`COIIIIIICICC.
`
`(17) Upon information and belief, the Applicant's mark has not acquired distinctiveness
`
`.
`l
`.
`l
`or gained secondary meaning.
`
`(18) Uponl information and belief applicant’s goods in class 9 can be us
`
`ed in coin
`
`redemption machines.
`4
`
`(19) Ifthe Applicant is granted the registration herein opposed, it would thereby obtain
`
`at least prima facie exclusive right to use of its mark. Such registration would be a source of
`
`damage and injury‘ to the Opposer.
`(20) For tlie reasons set forth in the foregoing paragraphs, Applicant is not
`l
`
`entitled to
`
`register its mark and the application should be denied in accordance with Section 2(d) of the
`I
`
`Lanham Act, 15 UԤ.s.c. Section 1052(d).
`
`K
`
`OPPOSERi F. Zimmerman prays that this application Serial No. 78/078,91 5, be
`
`

`
`
`
`refused, that no registration be issued thereon to Applicant and that this Opposition be
`
`sustained in favor of F. Zimmerman.
`
`Respectfully submitted for
`Opposer F. Zimmerman GmbH & Co. KG
`
`By;
`
`0
`
`C€Le,L<,a/VW @%
`
`Cecelia M. Perry
`MCGLEW AND TUTTLE, P.
`
`C.
`
`Scarborough Station
`Scarborough, N.Y. 10510-0827
`
`CMP
`
`Encl. opposition fee $300.00 per class
`2 copies of the Notice of Opposition
`
`DATED: SCARBOROUGH, NEW YORK
`
`’
`
`November 27, 2002
`
`(914) 941-5600
`
`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND TRADEMARK OFFICE
`IS HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR DEPOSIT ACCOUNT 13-
`0410.
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED WITH
`THE UNITED STATES POSTAL SERVICE AS EXPRESS MAIL, REGISTRATION NO.
`ELO§‘7372S 9 ‘2 US
`IN AN ENVELOPE ADDRESSED TO: COMMISSIONER OF
`27, 2002.
`PATENTS AND TRADEMARKS, WASHINGTON, D.C. 20231, ON November
`
`MCGLEW AND TUTTLE, 1>.C.
`
`By:~h>‘v'ul0/u.««.@v~9‘<?/ Date: November 27 2002
`
`t57296.4.wpm
`
`

`
`/ "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`L
`i‘
`ATTORNEY DOCKET NO: T-57296
`
`‘
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`11-29-2002
`U.s. Patent & TMOfc/TM Mail Rcpt D1, #7.
`
`'
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 78/078915
`For the mark: ACS
`
`Published in the Official Gazette on October 29, 2002
`
`F. Zimmerman GmbH & Co. KG
`v
`
`Hamamatsu Photonics K.K.
`
`Commissioner for Trademarks
`
`Box TTAB-fee
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`NOTICE OF OPPOSITION
`
`F. Zimmerman GmbH & Co. KG, (opposer) a corporation duly organized and existing
`
`under the laws of Germany, with a principal place of business at Lutzowstr. 70-73, DE 10785
`
`Berlin, Germany, believes that it would be damaged by the registration of the mark shown in
`
`the above-identified application, and hereby opposes that mark, pursuant to 15 USC 1063 and
`
`i
`
`37 CFR 2.104.
`
`As grounds for opposition, it is alleged that:
`
`

`
`
`
`-ur
`
`(1) Hamamatsu Photonics K.K., (Applicant) seeks to register ACS as a trademark for
`
`goods in international class 9, as evidenced by the publication of said mark in the Official
`
`Gazette of October 29, 2002 at page TM344.
`
`(2) Opposer is and has been engaged in the sale and marketing ofidentical or highly
`
`related goods to those recited in class 9 by applicant in its application to register since a time
`
`prior to the filing date of applicant’s intent to use application for registration.
`
`(3) There is no issue as to priority. Applicant's filing date, August 13, 2001, is
`
`subsequent to Opposer's dates of first use of its mark of Registration No. 2365019, and
`
`subsequent to the issue date of said registration.
`
`(4) Opposer is and has been engaged in the sale of goods under the registered
`
`trademark ACS since at least as early as October 1997.
`
`(5) By reason of Opposer's continued and exclusive use of its trademark ACS from
`
`a date long prior to Applicant's filing of its mark, Opposer has rights in its mark which are
`
`superior to Applicant's rights.
`
`(6) Opposer is the owner of the following valid and subsisting U.S. trademark
`
`registration:
`
`ACS - registration no. 2,365,019 registered July 4, 2000.
`
`(7) Opposer's registration is prima facie proof of ownership of the mark, pursuant to
`
`15, USC 1057(b), and of the exclusive right to use the registered mark in commerce.
`
`(8) Opposer has used its mark in commerce and has acquired valuable goodwill and
`
`recognition for its mark. Resulting from Opposer's ACS mark, the public has come to
`
`_ associate "ACS" with Opposer and Opposer's goods.
`
`

`
`
`
`(9) Opposer’s coin redemption machines perform an examination and verification of
`
`currency within.
`
`‘
`
`(10) Applicant's mark is confusingly similar to Opposer's registered trademark and is
`
`likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake or
`
`to deceive. 15 USC l052(d).
`
`(l 1) Applicant's mark makes an identical commercial impression to opposer's mark
`
`due to it being identical to opposer’s mark. This identical look and sound, especially when
`
`combined with Opposer’s goods is likely to lead consumers to believe the Applicant's goods
`
`emanate from Opposer.
`
`(12) The overall commercial impression ofapplicant's mark, when applied to the same
`
`or similar goods, would cause confusion or be likely to cause confusion, mistake, or deception.
`
`(13) Upon information and belief, both the applicant's mark and Opposer's marks are
`
`applied to identical or highly related goods and are likely to be sold through the same or
`
`similar channels of distribution. Applicant's mark so resembles Opposer's registration and
`
`trademark, as used in the United States and not abandoned, as to be likely to cause confusion,
`or to cause mistake or to deceive.
`(14) As Opposer's and Applicant's products are likely to be sold through the same
`
`channels of trade, the public would naturally assume that Applicant's products are a normal
`
`extension of Opposer's business.
`
`(15) Upon information and belief, ifApplicant is permitted to use and register its mark
`
`for its goods, as specified in the application herein opposed, confusion in the trade is likely to
`
`result by reason of the identity of the two marks and relatedness of the respective products,
`
`l
`
`‘
`
`1
`
`

`
`
`
`resulting in damage and injury to Opposer. Persons familiar with Opposer's marks would be
`
`likely to buy Applicant's goods as and for a product made and sold by Opposer. Any such
`
`confusion in trade inevitably would result in loss of sales to Opposer. Furthermore, any defect
`
`objection or fault found with Applicant's products marketed under its mark would necessarily
`
`reflect upon and seriously injure the reputation which Opposer has established for its products
`
`sold under the mark.
`
`(16) Upon information and belief,
`
`the Applicant's mark has not been used in
`
`commerce.
`
`(17) Upon information and belief, the Applicant's mark has not acquired distinctiveness
`
`or gained secondary meaning.
`
`(18) Upon information and belief applicant’s goods in class 9 can be used in coin
`
`redemption machines.
`
`(19) Ifthe Applicant is grantedthe registration herein opposed, it would thereby obtain
`
`at least prima facie exclusive right to use of its mark. Such registration would be a source of
`
`damage and injury to the Opposer.
`
`(20) For the reasons set forth in the foregoing paragraphs, Applicant is not entitled to
`
`register its mark and the application should be denied in accordance with Section 2(d) of the
`
`Lanham Act, 15 U.S.C. Section l052(d).
`
`OPPOSER F. Zimmerman prays that this application Serial No. 78/078,915, be
`
`

`
`
`
`refused, that no registration be issued thereon to Applicant and that this Opposition be
`
`sustained in favor of F. Zimmerman.
`
`Respectfully submitted for
`Opposer F. Zimmerman GmbH & Co. KG
`
`Cecelia M. Perry
`
`McGLEW AND TUTTLE, P.C.
`
`Scarborough Station
`Scarborough, N.Y. 10510-0827
`
`CMP
`
`Encl. opposition fee $300.00 per class
`2 copies of the Notice of Opposition
`
`DATED: SCARBOROUGH, NEW YORK
`
`November 27, 2002
`
`(914) 941-5600
`
`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND TRADEMARK OFFICE
`IS HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR DEPOSIT ACCOUNT 13-
`0410.
`
`IHEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED WITH
`THE UNITED STATES POSTAL SERVICE AS EXPRESS MAIL, REGISTRATION NO.
`EL0573 725 97 U 3
`IN AN ENVELOPE ADDRESSED TO: COMMISSIONER OF
`PATENTS AND TRADEMARKS, WASHINGTON, D.C. 20231, ON November 27, 2002.
`
`McGLEW AND TUTTLE, P.C.
`
`By:
`
`~f~(-luv-vn *Q“*i?/ Date: November 27 2002
`
`t57296.4.wpm

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket