IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`In re Trademark Application Serial Number: 78/186,420
`
`5175?;
`
`{Q
`
`Opposition No.
`
`) ) ) ) ) 3
`
`J .R. CARLSON LABORATORIES, INC.
`
`Opposer,
`
`-against-
`
`MARUO CALCIUM COMPANY LIMITED )
`
`) )
`
`Applicant.
`
`BOX TTAB - FEE
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTICE OF OPPOSITION
`
`Reference is made to Application Serial No. 78/186,420 for CAL-ACE in International
`
`' Classes 1 and 5, which was published in the Official Gazette on July 1, 2003. Opposer, J .R.
`
`. Carlson Laboratories, Inc. (“Carlson”), timely requested an extension of time to file a notice of
`
`opposition, extending the deadline to August 30, 2003. Carlson believes it would be damaged by
`
`the registration of the mark in Application Serial No. 78/186,420, and hereby opposes same.
`09/09/3003 KGIBBIJNS 00000050 73186420
`01 FC-6402
`eoo.oo up
`
`———PARTIES
`
`A.
`
`Applicant
`
`Upon information and belief, Applicant, Maruo Calcium Company Limited
`
`(“Applicant”), is a Japanese corporation with a principal place of business at 1455 Nishioka,
`
`Uozumi-cho, Akashi-shi Hyogo, Japan.
`
`B.
`
`Opposer
`
`Opposer is a corporation organized and existing under the laws of Illinois, with a
`
`CH1 l0573072.1
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`In re Trademark Application Serial Number: 78/186,420
`
`5175?;
`
`{Q
`
`Opposition No.
`
`) ) ) ) ) 3
`
`J .R. CARLSON LABORATORIES, INC.
`
`Opposer,
`
`-against-
`
`MARUO CALCIUM COMPANY LIMITED )
`
`) )
`
`Applicant.
`
`BOX TTAB - FEE
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTICE OF OPPOSITION
`
`Reference is made to Application Serial No. 78/186,420 for CAL-ACE in International
`
`' Classes 1 and 5, which was published in the Official Gazette on July 1, 2003. Opposer, J .R.
`
`. Carlson Laboratories, Inc. (“Carlson”), timely requested an extension of time to file a notice of
`
`opposition, extending the deadline to August 30, 2003. Carlson believes it would be damaged by
`
`the registration of the mark in Application Serial No. 78/186,420, and hereby opposes same.
`09/09/3003 KGIBBIJNS 00000050 73186420
`01 FC-6402
`eoo.oo up
`
`———PARTIES
`
`A.
`
`Applicant
`
`Upon information and belief, Applicant, Maruo Calcium Company Limited
`
`(“Applicant”), is a Japanese corporation with a principal place of business at 1455 Nishioka,
`
`Uozumi-cho, Akashi-shi Hyogo, Japan.
`
`B.
`
`Opposer
`
`Opposer is a corporation organized and existing under the laws of Illinois, with a
`
`CH1 l0573072.1
`
`
`
`
`
`principal place of business at 15 College Drive, Arlington Heights, Illinois 60004.
`
`GROUNDS FOR OPPOSITION
`
`1.
`
`Applicant is the owner of Application Serial No. 78/186,420 (“Applicant’s
`
`application”), which seeks to register CAL-ACE for “chemicals, namely, inorganic salts for use
`
`in the plastic industry, for use in science, photography, agriculture, horticulture and forestry” in
`
`International Class 1, and “pharmaceutical preparations, namely, nutrient supplements, tonics,
`
`namely medicinal tonics for the prevention and treatment of osteoporosis, and medicinal
`
`alternatives, namely calcium preparations, food for infants” in International Class 5, as
`
`evidenced by the publication of the mark in the July 1, 2003 issue of the Official Gazette.
`
`2.
`
`Applicant’s application was filed on November 19, 2002 based on an intent to
`
`use.
`
`3.
`
`Upon information and belief, Applicant has not yet begun using the proposed
`
`mark CAL-ACE in connection with the above-listed goods.
`
`4.
`
`Carlson owns Registration No. 1,795,580 for the mark ACE for “vitamin
`
`e preparations,” with a filing date of May 28, 1992. Carlson’s ACE mark has been continuously
`
`used in connection with such goods since at least as early as May 11, 1993, and Carlson’s rights
`
`to ACE are incontestable.
`
`5.
`
`Carlson owns Registration No. 1,604,336 for the mark ACES for “vitamin
`
`preparations,” with a filing date of November 27, 1989. Carlson’s ACES mark has been
`
`continuously used in connection with such goods since at least as early as June 13, 1983, and
`
`Carlson’s rights to ACES are incontestable.
`
`6.
`
`Carlson’s incontestable registrations for ACE and ACES provide conclusive
`
`evidence of the validity of the marks, Carlson’s ownership of the marks, and Carlson’s exclusive
`
`right to use the marks in commerce in connection with vitamin preparations.
`
`CH1 1o573o72.1
`
`2
`
`
`
`
`
`7.
`
`Carlson also owns Registration No. 2,230,465 for the mark ACES GOLD for
`
`“vitamin preparations,” with a filing date of December 16, 1997; Registration No. 2,552,273 for
`
`the mark ACES+ZN for “vitamin preparations,” with a filing date of December 11, 2000;
`
`Registration No. 2,677,092 for CARDIO ACES for “nutritional supplement,” with a filing date
`
`of October 30, 2001; and Application Serial No. 76/464,698 for the mark ACES for “nutritional
`
`supplement food bars,” which was filed on November 6, 2002 and has been allowed for
`
`registration.
`
`8.
`
`There is no issue as to the priority of Carlson’s rights. The filing date of
`
`Carlson’s registration for ACE is more than 10 years prior to Applicant’s application; the filing
`
`date of Carlson’s registration for ACES is more than 20 years prior to Applicant’s application;
`
`and each of Carlson’s other registrations or pending applications for variations of the ACES
`
`mark has a filing date prior to Applicant’s application.
`
`9.
`
`Moreover, Carlson’s ACE and ACES marks, and variants thereof, have been in
`
`. continuous use since many years prior to Applicant’s application. Carlson owns substantial
`
`- common law rights in and to the marks ACE and ACES, by virtue of longstanding use and
`
`extensive advertising, promotion and sales of goods bearing those marks.
`
`10.
`
`Applicant’s proposed mark CAL-ACE incorporates Carlson’s ACE mark in its
`
`entirety.
`
`It also incorporates a substantial portion of Carlson’s ACES mark.
`
`11.
`
`The Class 5 goods listed in Applicant’s application are identical to, or very
`
`closely related to, the goods covered by Carlson’s prior registrations and applications, including
`
`nutrient supplements and food.
`
`12.
`
`Upon information and belief, the Class 1 goods listed in Applicant’s application
`
`are closely related to the Class 5 goods listed in Applicant’s application.
`
`CH1 10573072.l
`
`
`
`13.
`
`If Applicant were permitted to register CAL-ACE for the goods listed in
`
`Applicant’s application, the trade and the public would likely be confused as to the source,
`
`giél
`C552,
`
`sponsorship, or affiliation of such goods, thereby causing damage and injury to Carlson. Persons
`
`already familiar with Carlson's products would be likely to be confused as to whether Applicant's
`
`goods are authorized or sponsored by Opposer. Such confusion in the trade and among the
`
`public inevitably would result in damage to Opposer. Furthermore, any defect, objection or fault
`
`found with Applicant's goods would likely reflect upon and injure the good reputation Carlson
`
`has established for its products.
`
`RELIEF RE§ QUESTED
`
`A.
`
`Registration of the mark shown in Application Serial Number 78/186,420 should
`
`be refused in accordance with Section 2(d) of the Lanham Trademark Act of 1946, as amended,
`
`15 U.S.C. Section 1052(d).
`
`B.
`
`Opposer respectfully requests that its opposition be sustained and registration of
`
`i the mark shown in Application Serial Number 78/186,420 be denied.
`
`- Dated: August 29, 2003
`
`Respectfully submitted,
`
`By George H.
`
`erstman
`Bruce Haraguchi
`SEYFARTH SHAW
`
`Attorneys for Opposer
`55 East Monroe Street, Suite 4300
`Chicago, Illinois 60603
`Tel:
`(312) 269-8000
`Fax:
`(312) 269-8869
`
`CH1 l0573072.l
`
`4
`
`
`
`
`
`J_S:E‘YFARTH
`5A;-TTORNEYS SFJZZWV
`
`Writer's direct phone
`(312) 269-8963
`Writer’s e-mail
`
`bharaguchi@seyfarth.com
`
`\ VS?)
`
`55 East Monroe Street
`
`Suite 4200
`
`Chicago, IL 60603-5803
`
`312-346-8000
`
`Fax 312-269-8869
`
`www.seyFo rth .com
`
` l\
`\\\\\\\\\\
`
`08492003 Rep!D1 #22
`im Ma“
`‘
`us. Paw“ “ M
`
`BY EXPRESS MAIL NO. EV012056404US
`
`August 29, 2003
`
`BOX TTAB - FEE
`U.S. Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, VA 22202-3 513
`
`Re: MARK:
`
`CAL-ACE
`
`Opposer:
`Serial No.:
`
`J. R. Carlson Laboratories, Inc.
`78/186,420
`
`Dear Sir/Madam:
`
`Enclosed please find Notice of Opposition for the above-referenced matter along with a check in
`the amount of $600.00 for the filing of the same.
`
`Also enclosed is a self-addressed stamped postcard. Please place your received stamp on the
`postcard and return same to our offices. Please call me if you have any questions regarding this matter.
`
`In the event of insufficient funds, please withdraw the necessary fees from Deposit Account No.
`19-1351.
`
`Very truly yours,
`
`SEYFARTH SHAW
`
`EH
`
`Bruce H aguchi
`
`BH:rw CH2 20145925.1
`Enclosure
`
`cc: George H. Gerstman
`
`EXPRESS MAIL CERTIFICATE
`
`I hereby certify that the attached correspondence is being deposited with the United States Postal Service via Express
`Mail No. EV012056404US to BOX TTAB - FEE, U.S. Patent and Trademark Office, Trademark Trial and Appeal Board, 2900
`
`Crystal Drive, Arlington, Virginia 22202-3513, on August 29, 2003. E
`
`E
`
`Bruce Harag
`
`hi
`
`
`
`
`
`
`
`ATLANTABOSTONCHICAGOHOUSTONLOSANGELESNEWYORKSACRAMENTOSANFRANCISCOWASHINGTON,DC.BRUSSELS
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