Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA17790
`
`Filing date3
`
`10/23/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`ZIH CORP
`
`Granted to
`
`D3“?
`of previous
`extension
`
`Address
`
`10/27/2004
`
`Pearman Building3 Gorham Road, Third Floor
`Hamilton, HM08
`BERMUDA
`
`Bruce Haraguchi
`Seyfarth Shaw LLP
`55 E. Monroe Street, Suite 4300
`
`Domestic
`
`Representative Chicago, IL 60603
`UNITED STATES
`
`bharaguchi@seyfarth.com Phone:312-346-8000
`
`Applicant Information
`
`Application No 76402094
`
`Opposition
`Filing Date
`
`10/23/2004
`
`P“b(':;:‘i°“
`
`06/29/2004
`
`Opposition
`Period Ends
`
`g 10/27/2004
`
`GOLD LINE TELEMANAGEMENT INC.
`
`Applicant
`
`180 West Beaver Creek Road
`Richmond Hill, Ontario, L4B 1B4
`
`
`
`ESTTA Tracking number: ESTTA17790
`
`Filing date3
`
`10/23/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`ZIH CORP
`
`Granted to
`
`D3“?
`of previous
`extension
`
`Address
`
`10/27/2004
`
`Pearman Building3 Gorham Road, Third Floor
`Hamilton, HM08
`BERMUDA
`
`Bruce Haraguchi
`Seyfarth Shaw LLP
`55 E. Monroe Street, Suite 4300
`
`Domestic
`
`Representative Chicago, IL 60603
`UNITED STATES
`
`bharaguchi@seyfarth.com Phone:312-346-8000
`
`Applicant Information
`
`Application No 76402094
`
`Opposition
`Filing Date
`
`10/23/2004
`
`P“b(':;:‘i°“
`
`06/29/2004
`
`Opposition
`Period Ends
`
`g 10/27/2004
`
`GOLD LINE TELEMANAGEMENT INC.
`
`Applicant
`
`180 West Beaver Creek Road
`Richmond Hill, Ontario, L4B 1B4
`
`
`
`CANADA
`
`Goods! Services Affected by Opposition
`
`Class O 16.
`
`All goods and sevices in the class are opposed, namely: Pre-paid telephone calling cards,
`not magnetically encoded; telephone calling cards not magnetically encoded
`
`Attachments
`
`go1d1ine.pdf( 6 pages )
`
`Name
`
`Bruce Haraguchi
`
`Date
`
`l0f23/2004
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application Serial Number: 76/402,094
`
`Opposition No.
`
`) )
`
`) )
`
`)
`
`3
`
`) )
`
`)
`
`ZIH CORP.
`
`V
`
`Opposer,
`
`GOLD LINE TELEMANAGEMENT INC.
`
`Applicant.
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Reference is made to Application Serial No. 76/402,094 for ZEBRA in International
`
`Class 16, published in the Official Gazette on June 29, 2004. Opposer, ZIH Corp. (“ZIH”), has
`
`obtained an extension of time until October 27, 2004 to file a notice of opposition. ZIH believes
`
`it would be damaged by the registration of the mark in Serial No. 76/402,094, and hereby
`
`opposes the same.
`
`GROUNDS FOR OPPOSITION
`
`1.
`
`Opposer, ZIH, is a corporation organized and existing under the laws of
`
`Delaware, with its principal place of business at Pearman Building, 3 Gorharn Road, Third Floor,
`
`Hamilton, HM08 Bermuda.
`
`2.
`
`For many years ZII-I and its predecessors, related companies and licensees
`
`(collectively, “ZII-I”), have used the trademarks ZEBRA and a Zebra Head Design in connection
`
`with printers and related supplies, including card printers and blank cards for on«site printing.
`
`CH1 10782163.1
`
`
`
`3.
`
`ZIH owns U.S. trademark registration no. 1274816 for ZEBRA in connection
`
`with “machines for printing labels, tags and tickets with optically scarmable bar codes,
`
`alphanumeric characters and graphics,” with a filing date of November 10, 1982 and a first use
`
`date of September 9, 1982. This registration issued on April 24, 1984 and has attained
`
`incontestable status.
`
`4.
`
`ZIH owns U.S. trademark registration no. 1360141 for Zebra Head Design in
`
`connection with “label printer device for printing labels, tags, tickets and the like with optically
`
`scannable bar codes, alphanumeric characters and graphics,” with a filing date of March 7, 1985
`
`and a first use date of September 9, 1982. This registration issued on September 17, 1985 and
`
`has attained incontestable status.
`
`' 5.
`
`ZII-I owns U.S. trademark registration no. 1566752 for ZEBRA in connection
`
`with “label printing machines,” “blank or "partially printed labels, tags and tickets to be imprinted
`
`by rnachine; ribbons for label printing machines” and “label printer repair services,” with a filing
`
`date of January 4, 1988. This registration issued on November 21, 1989 and has attained
`
`incontestable status.
`
`6.
`
`ZIH owns U.S. trademark registration no. 1561793 for Zebra Head Design in
`
`connection with “label printing machines,” “blank or partially printed labels, tags and tickets to
`
`be imprinted by machine; ribbons for label printing machines” and “label printer repair services,”
`
`with a filing date of January 4, 1988. This registration issued on October 24, 1989 and has
`
`attained incontestable status.
`
`7.
`
`' Z11-I owns U.S. trademark registration no. 2173307 for ZEBRA in connection
`
`with “software for enabling a general-purpose computer to print and/or read bar code,” with a
`
`filing date of July 10, 1995 and a first use date of October 1995. This registration issued on July
`
`CH1 107821611
`
`
`
`14, 1998 and a Section 15 declaration of incontestability has been filed with the Patent and
`
`Trademark Office.
`
`8.
`
`ZIH owns U.S. trademark registration no. 2059897 for Zebra Head Design in
`
`connection with “software for enabling a general—purpose computer to print and/or read bar
`
`code,” with a filing date of July 10, 1995 and a first use date of October 24, 1995. This
`
`registration issued on May 6, 1997 and has attained incontestable status.
`
`9.
`
`ZIH owns U.S. trademark registration no. 2120347 for ZEBRANET in connection
`
`with “connector to connect printers and computers,” with a filing date of November 16, 1995 and
`
`a first use date of February 1996. This registration issued on December 9, 1997 and has attained
`
`incontestable status.
`
`10.
`
`ZlH’s incontestable registrations ofZEBRA and Zebra Head Design provide
`
`conclusive evidence of the validity of the marks, ZIH’s ownership of the marks, and ZII-I’s
`
`exclusive right to use the marks in commerce in connection with the specified goods and
`
`services.
`
`11.
`
`Since at least 1997, ZIH has used its ZEBRA and Zebra Head Design marks in
`
`commerce in connection with card printers, blank cards and related supplies. Customers use
`
`these goods for a variety of applications, including on-site printing and finishing of phone cards,
`
`identification cards, security cards, controlled access cards, loyalty cards, discount cards, gifi
`
`cards, membership cards and drivers licenses.
`
`12.
`
`By virtue of its longstanding use in commerce and extensive advertising, Z1H’s
`
`ZEBRA and Zebra Head Design marks have become well-known in the relevant industry, and
`
`ZIH owns considerable goodwill in these marks in connection with card printers and related
`
`supplies.
`
`CH1 107821611
`
`
`
`
`
`
`
`13.
`
`On information and belief, Applicant, Gold Line Telemanagement Inc.
`
`(“Applicant”), is a Canadian corporation with its principal place of business at 180 West Beaver
`
`Creek Road, Richmond Hill, Ontario, Canada L4B 1B4.
`
`14.
`
`Applicant owns Serial No. 76/402,094 (“Applicant’s application”), which seeks to
`
`register ZEBRA for “pre-paid telephone calling cards, not magnetically encoded; telephone
`
`calling cards not magnetically encoded” in International Class 16, as evidenced by the
`
`publication of the mark in the June 29, 2004 issue of the Official Gazette.
`
`15.
`
`Applicant’s application was filed on May 1, 2002 based on an intent to use, with a
`
`priority claim based on a foreign application. On information and belief, Applicant’s priority
`
`claim was based on Canadian trademark application no. 1136322, filed on April 4, 2002.
`
`16.
`
`On information and belief, Applicant has not yet begun using the proposed mark
`
`ZEBRA in commerce in connection with the above-listed goods.
`
`17.
`
`The mark in Applicant’s application is identical to ZII-I’s ZEBRA mark.
`
`18.
`
`The mark in Applicant’s application conveys a commercial impression that is
`
`confusingly similar to ZIH’s Zebra Head Design.
`
`19.
`
`On information and belief, Applicant intends to use an image of a zebra head on
`
`its ZEBRA phone cards.
`
`20.
`
`On information and belief, Applicant intends to market and sell its ZEBRA phone
`
`cards to private label resellers in conjunction with on—site card printing and finishing facilities.
`
`21.
`
`Oninformation and belief, the customer markets for ZII-I’s products and
`
`Applicant’s products are likely to overlap.
`
`22.
`
`The goods listed in Applicant’s application are closely related to goods offered by
`
`ZII-I in connection with its ZEBRA and Zebra Head Design trademarks, including card printers
`
`CH1 107821611
`
`
`
`and blank cards for use as phone cards and other related uses.
`
`23.
`
`ZII-I’s registrations of the ZEBRA and Zebra Head Design trademarks predate the
`
`priority filing date of Applicant’s application.
`
`24.
`
`Moreover, since many years prior to Applicant’s application, Z11-I’s ZEBRA and
`
`Zebra Head Design trademarks have been in continuous use in commerce for goods related to
`
`those in Applicant’s application, including card printers and blank cards for use as phone cards
`
`and other related uses.
`
`25.
`
`If Applicant were permitted to register ZEBRA for the goods listed in Applicant’s
`
`application, the trade and customers would likely be confused as to the source, sponsorship, or
`
`affiliation of such goods, thereby causing damage and injury to Z11-I. Persons already familiar
`
`with ZH-I's products would be likely to be confused as to whether Applicant's goods are
`
`authorized or sponsored by ZIH. Such confusion in the trade and among customers inevitably
`
`would result in damage to Z11-I. Furthermore, any defect, objection or fault found with
`
`Applicant's goods would likely reflect upon and injure the good reputation ZIH has established
`
`for its products.
`
`WHEREFORE, ZIH respectfully ‘requests that this opposition be sustained, and
`
`that Applica:nt’s application to register ZEBRA be denied.
`
`Dated: October 23, 2004
`
`Respectfully submitted,
`
`.By E
`
`Z
`
`HaroldV Stotland
`
`Bruce I-Iaraguchi
`SEYFARTH SHAW LLP
`
`Attorneys for Opposer
`55 East Monroe Street, Suite 4300
`Chicago, Illinois 60603
`Tel:
`(312) 269-8000
`
`CH1 107821611
`
`
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that the attached correspondence is being filed electronically with the Trademark
`Trial and Appeal Board via the Electronic System for Trademark Trials and Appeals (ESTTA), on
`October 23, 2004.
`-
`
`2/
`Bruce Hara
`
`-
`
`chi
`
`
`
`CH1 107821631
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
