IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application
`Serial NO. 76/429569 for “CEMCO”
`Published in the Official
`
`Gazette on July 27, 2004
`
`The Wellmark Company, L.L.C.
`
`Opposer,
`
`v.
`
`Cemco S.A.
`
`Applicant.
`
`sr\/\./\/\./\./\./\./\/
`
`Opposition No.:
`
`.
`,
`Commissioner for Trademarks
`P.O. Box 1451
`
`02/03/E005 SHILSDNI 00000131 76429569
`
`01 FC:6402
`
`600.00 HP
`
`Alexandria, Virginia
`
`22313-1451
`
`NOTICE OF OPPOSITION
`
`The Wellmark Company, L.L.C.
`
`(hereinafter
`
`referred.
`
`to as
`
`“Opposer"),
`
`a limited liability company organized and existing
`
`under the laws of the State of Oklahoma, with its business offices
`
`located at 1903 South East 29” Street, Oklahoma City, Oklahoma
`
`73129, believes that it will be damaged by registration of the mark
`
`shown in Application Serial No. 76/429,569 in International Class
`
`09 and International Class 011 filed July 10, 2002 by CEMCO S.A.
`
`(hereinafter referred to as “Applicant"), and hereby opposes such
`
`

`
`
`
`registration pursuant
`
`to a previously filed extension of time to
`
`oppose.
`
`As grounds of Opposition, it is alleged that:
`
`1.
`
`Applicant seeks registration on the Principal Register
`
`the mark "CEMCO”
`
`in International Class 09 for valves and pressure
`
`regulators for liquified petroleum gas and natural gas namely,
`
`pneumatic and electrical
`
`level control, safety valves, chemical
`
`pumps, liquid level indicators, back pressure valves, globe valves,
`
`switches; valves
`
`for controlling the on—off
`
`flow through the
`
`cylinder or gas supply to a gas appliance, back check valves, and
`
`in International Class
`
`011
`
`for gas valves
`
`for domestic
`
`and
`
`industrial appliances. Applicant applied for the referenced mark
`
`via an intent—to—use application filed July 10, 2002. The mark was
`
`published for opposition July 7, 2004,
`
`in the Official Gazette.
`
`Opposer filed and the Board approved an extension of time to oppose
`
`Applicant's mark until November 24, 2004.
`
`Opposer filed with
`
`Applicant's consent, and the Board approved another extension of
`
`time to oppose Applicant's mark until January 23, 2005.
`
`This
`
`Notice of Opposition is timely filed.
`
`2.
`
`Custonl Engineering Manufacturing Corp.
`
`(“Cemco”) was
`
`established in the early 1960's in Tulsa, Oklahoma and was engaged
`
`in the nanufacturing and sale of valves and various accessory
`
`products for the petroleum and petrochemical
`
`industries.
`
`These
`
`products were sold under the mark “CEMCO.” Cemco was the owner of
`
`

`
`
`
`Registration No. 958,851 registered May, 15, 1973,
`
`in International
`
`Class
`
`06
`
`for
`
`back pressure
`
`valves
`
`and
`
`globe valves,
`
`in
`
`International Class 07 for piston pumps, and in International Class
`
`09 for liquid level control systems.
`
`3.
`
`In 1998, Opposer acquired the assets of Cemco,
`
`including
`
`its registered and common law rights in the mark “CEMCO.”
`
`Since
`
`acquiring Cemco’s assets, Opposer has continuously used the mark
`
`“CEMCO” to identify and designate its goods and to distinguish such
`
`goods from those of others.
`
`Since Opposer's initial use of the
`
`mark in 1998, Opposer has continuously used, advertised, promoted
`
`and offered its goods
`
`for sale, under its mark,
`
`to the public
`
`through various trade channels in interstate commerce, with the
`
`result
`
`that customers have come to know and recognize Opposer's
`
`mark,
`
`and
`
`associate
`
`such mark with Opposer.
`
`Opposer
`
`unintentionally failed to renew Registration No. 958,851 in 2003.
`
`As such, Registration No. 958,851 is now expired.
`
`4.
`
`By virtue of Opposer's extensive use of the mark and by
`
`virtue of the excellence of its goods, Opposer has gained a most
`
`valuable reputation for its above—identified mark.
`
`5.
`
`The opposed goods of Applicant and the goods of Opposer,
`
`offered under
`
`the
`
`trademark
`
`“CEMCO”
`
`are
`
`identical
`
`and/or
`
`substantially similar and/or related.
`
`6. Applicant's mark, as applied to the goods set forth in
`
`the application and herein opposed,
`
`so resembles Opposer's mark
`
`

`
`that it is likely to cause confusion, mistake and/or deception.
`
`7.
`
`If Applicant is permitted to use and register its mark for
`
`its goods,
`
`as
`
`specified in the application herein opposed,
`
`confusion in trade will result by reason of the similarity between
`
`Applicant's mark and Opposer’s mark,
`
`thereby causing damage and
`
`injury to Opposer.
`
`Persons familiar with Opposer’s mark would
`
`likely purchase Applicant's goods believing that such goods are
`
`being sold, offered for sale, associated with or sponsored by
`
`Opposer. Any such confusion in the trade would inevitably result
`
`in loss of sales to Opposer. Furthermore, any defect, objection or
`
`fault
`
`found in Applicant's goods marketed under its mark would
`
`necessarily reflect upon and seriously injure the reputation
`
`Opposer has established for its goods, which are sold under its
`
`mark.
`
`8.
`
`If Applicant is granted the registration herein opposed,
`
`it would thereby obtain at least a prima facie exclusive right to
`
`the use of its mark.
`
`Such registration would be a source of damage
`
`and injury to Opposer.
`
`WHEREFORE, Opposer prays
`
`that
`
`the application Serial No.
`
`76/429,569 be rejected, and that the mark therein sought for the
`
`services therein specified in International Class 09 and 011 be
`
`denied and refused.
`
`The prescribed fee of $600.00 required in connection with the
`
`filing of
`
`this opposition is being paid via credit card.
`
`Any
`
`

`
`
`
`further fees may be charged to said credit card.
`
`Respectfully submitted,
`
`
`
`Jose h P. Titterington
`Nicholas D. Rouse
`
`DUNLAP, CODDING & ROGERS, P.C.
`1601 Northwest Expressway, Suite 1000
`Oklahoma City, Oklahoma
`73118
`Telephone:(405) 607-8600
`Facsimile:(405) 607-8686
`
`Attorneys for Opposer
`
`CERTIFICATE OF EXPRESS MAILING
`
`"Express Mail" mailing number EV3365l2296US
`
`Date Of Deposit: January 24, 2005
`
`this NOTICE OF OPPOSITION is being
`I hereby certify that
`deposited with the United States Postal Service "Express Mail Post
`Office to Addressee" service on the date indicated above and is
`addressed to the Assistant Commissioner for Trademarks, P.O. Box
`
`1451 Alexandria, Virginia
`
`22313-1451.
`
`Signature of Depositor
`
`

`
`
`
`Express Mail No.:
`
`Date of Deposit:
`
`
`FEE TRANSMITTAL
`FY 2003-TRADEMARK
`
`Trademark fees are subject to annual revision.
`
`A lication/Res No.
`
`76/429569
`
` Complete if Known
`
`
`Filing/Regis. Date
`
`A licant
`Examiner Name
`
`59m°° 5-A
`
`TOTAL AMOUNT or PAYMENT
`
`Law Office
`
`
`
`8438.010
`($) 600
`Attorney Docket No.
`
`METHOD OF PAYMENT
`FEE CALCULATION continued
`
`
`
`3_ ADD|‘|'|oNAL FEES
`
`
`Fee
`Fee
`Fee Description
`
`
`Code
`(8)
`
`6002
`100
`Amendment to Allege Use
`
`6004
`150
`Request for a Six-month Extension of Time
`
`for Filing a Statement of Use, per class
`
`
`
`The Commissioner is hereby authorized to charge
`1 E]
`indicated fees and credit any overpayments to:
`'
`Account
`Number
`_
`Deposit
`Account Dunlap, Codding & Rogers, P.C.
`Name
`
`I7‘ Charge Any Additional Fee Required
`
`
`
`
`
`6204
`
`100
`
`
`
`El Other
`
`2.
`
`
`
`
`
`
`
`
`
`6003
`100
`Statement ofUse, per class
`
`
`6201
`400
`Application for Renewal, per class
`
`6203
`100
`Additional fee for filing renewal application
`Payment Enclosed:
`
`during grace period, per class
`D Check
`Credit card D “O/lfdnsry D other
`
`Correcting a deficiency in a renewal
`
`application
`FEE CALCULATION
`
`5210
`100
`Publication of mark under 12(0), per class
`
`
`1. BASIC FILING FEE
`
`6211
`100
`Issuing New Certificate of Registration
`
`6212
`100
`Certificate of Correction, registrant's error
`
`
`6213
`100
`Filing disclaimer to registration
`
`
`
`
`
`($) 0
`
`
`
`
`
`($) 0
`
`
`
`SUBTOTAL (2)
`
`7. .M%J!I
`
`
`
`
`
`(405) 607-8600
`
`
`
`
`
`
`SEND TO: Assistant Commissioner for Trademarks, Arlington, VA 222023513
`
`01-25-2005
`US. Patent& TMOfcITM Mail Rcpt D1. #64
`
`
`
`_
`Fee Paid
`
`Fee Description
`
`
`
`Fee
`Fee
`(5)
`code
`335 Application filing fee
`6001
`
`Filing amendment to registration
`100
`5214
`
`6205
`100
`Section 8 Affidavit, per class
`
`6206
`100
`Fee for filing Section 8 during grace period per class
`
`6207
`100
`Correcting a deficiency in a Section 8 Affidavit
`6208
`200
`Filing Section 15 Affidavit, per class
`
`6005
`100
`Petition to the Commissioner
`SUBTOTAL (1)
`
`6401
`300
`Petition for cancellation, per class
`2. EXTRA CLASS FEES
`
`
`Extra Classes
`6402
`300
`Notice of Opposition, per class
`
` Total Classes
`6403
`100
`Ex parte appeal, per class
`6006
`100
`Dividing an application, per new application (file
`
`wrapper) created
`
`40 Fee Description
`3521
`Recordation
`
`
`Other fee (specify)
` Classes in excess of 1
`Remarks:
`
`

`
`
`
`
`
`Express Mail No.2
`
`Date of Deposit:
`
`
`
`FEE TRANSMITTAL
`
`FY 2003-TRADEMARK
`
`——_
`
`
`Trademark fees are subject to annual revision.
`
`
`
`T07“ A"'°”“T °F PAYMENT
`
`(5) 60°
`
`
`
`
`
`METHOD OF PAYMENT
`
`FEE CALCULATION continued
`
`1 D The Commissioner is hereby authorized to charge
`'
`indicated fees and credit any overpayments to:
`Deposit
`Account
`
`3_ ADD|1'|oNAL FEES
`
`Number
`.
`Deposit
`Account Dunlap, Coddmg & Rogers, P.C.
`Name
`_
`_
`_
`I2] c"3’9e A"Y Ad""'°"3' Fee Re‘l“"°d
`
`D other
`
`2-
`
`P3Y"‘°"tE"°'°5°d‘
`E] Check
`credncard D Money D Omar
`Order
`FEE CALCULATION
`
`1 BASIC FILING FEE
`'
`
`F”
`Code
`6002
`6004
`
`F99
`(5)
`100
`150
`
`6003
`6201
`6203
`
`6204
`
`5210
`6211
`6212
`
`Fee Description
`
`Amendment to Allege Use
`Request for a Six-month Extension of Time
`for Filing a Statement of Use, per class
`
`Statement of Use, per class
`Application for Renewal, per class
`Additional fee forfiling renewal application
`during grace period,perc|ass
`Correcting a deficiency in a renewal
`application
`
`Publication of mark under 12(c), per class
`Issuing New Certificate of Registration
`Certificate of Correction, registrant's error
`..
`.
`.
`.
`.
`Filingdisclaimertoregistration
`Filing amendment to registration
`Section B Affidavit, per class
`Fee for filing Section 8 during grace period per class
`Correcting a deficiency in a Section 8 Affidavit
`Filing Section 15 Affidavit, per class
`Petition to the Commissioner
`Petition for cancellation, per class
`,
`_
`,
`Notice of Opposition, per class
`Ex parte appeal. per class
`Dividing an application, per new application (file
`wrapper) created
`
`100
`400
`100
`
`100
`
`100
`100
`100
`
`100
`100
`100
`100
`100
`200
`100
`300
`300
`100
`1oo
`
`F98
`Code
`6001
`
`F99 D°S¢|'5P"°"
`
`F68
`(5)
`335 Application filing fee
`
`6213
`5214
`5205
`6206
`6207
`6208
`6005
`SUBTOTAL (1)
`5401
`2. EXTRA CLASS FEES
`6402
`Ext.-3 cusses
`6403
`I
`X I
`Total classes E
`[:1 E X [:1 4:] 6005
`:] =[E
`
`0
`
`Fee from
`
`Fee Paid
`
`Fee
`c°d°
`6001
`
`Fee
`(5)
`335
`
`Fee Description
`Classes in excess of 1
`
`Recordanon
`40
`8521
`Other fee (specify)
`
`Remarks:
`
`SUBTOTAL (2)
`
`(5) 0
`
`SUBMITTED BY
`
`A
`
`_
`
`SUBTOTAL (3)
`
`Complete (ifapplicable)
`
`
`
`
`
`VClTfl%J!J
`
`
`
`SEND TO: Assistant Commissioner for Trademarks. Arlington, VA 22202.3513