throbber
,
`
`)
`
`lllllllllflllllllIilllflllllllllIlllllllllllllllll
`
`02-03-2006
`. S =atent 3 worn/‘M Man amp: gm
`
`TTAB
`
`United States Patent and Iraaemarx umce
`
`A Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Mailed:
`
`January 10, 2006
`
`Opposition No 91168495
`Serial No. 78594832
`
`MICHAEL UTILLA
`
`UTILLA & ASSOC
`
`32 COURT ST STE 1800
`
`BROOKLYN, NY 11201
`
`Barry D. Sears
`
`V.
`
`Zonechefs, L.L.C.
`
`Amy B. Spagnole
`HINCKLEY ALLEN & SNYDER LLP
`28 State Street
`
`Boston, MA 02109
`
`Helen Johnson, Legal Assistant
`
`in the
`A notice of opposition to the registration sought
`The notice of
`above—identified application has been filed.
`opposition can be viewed and printed at
`http://ttabvue.uspto.gov/
`
`ANSWER IS DUE FORTY DAYS after the mailing date hereof.
`(See Trademark Rule 2.196 for expiration date falling on
`Saturday, Sunday or a holiday).
`
`Proceedings will be conducted in accordance with the Trademark
`
`Rules of Practice, set forth in Title 37, part 2, of the Code of
`Federal Regulations.
`The parties are reminded of
`the recent
`amendments to the Trademark Rules that affect the rules of
`
`practice before the TTAB.
`
`See Rules of Practice for Trademark-
`
`Related Filings Under the Madrid Protocol Implementation Act,
`Fed. R. 55,748 (September 26, 2003)
`(effective November 2,
`2003); Reorganization of Correspondence and Other Provisions,
`Fed. Reg. 48,286 (August 13, 2003)
`(effective September 12,
`
`68
`
`68
`
`

`
`2003).
`Notices concerning the rules changes, as well as the
`Trademark Trial and Appeal Board Manual of Procedure (TBMP\,
`available at www.uspto.gov/web/offices[dcom/ttab/.
`
`HT”?!
`
`The parties are particularly referred to Trademark Rule 2.126
`pertaining to the form of submissions.
`Paper submissions,
`including
`but not limited to exhibits and depositions, not filed in accordance
`with Trademark Rule 2.126 may not be given consideration or entered
`into the case file.
`
`Discovery and testimony periods are set as follows:
`
`Discovery period to open:
`
`January 30, 2006
`
`Discovery period to close:
`
`July 29, 2006
`
`30—day testimony period for party
`in position of plaintiff to close:
`
`October 27, 2006
`
`30-day testimony period for party
`in position of defendant
`to close:
`
`December 26, 2006
`
`15-day rebuttal testimony period
`for plaintiff to close:
`
`February 09, 2007
`
`A party must serve on the adverse party a copy of the
`transcript of any testimony taken during the party's
`testimony period,
`together with copies of documentary
`exhibits, within 30 days after completion of the taking of
`such testimony.
`See Trademark Rule 2.l25.
`
`Briefs shall be filed in accordance with Trademark Rule
`2.l28(a) and (b).
`An oral hearing will be set only upon
`request filed as provided by Trademark Rule 2.l29.
`
`The Board allows parties to utilize telephone
`NOTE:
`conferences to discuss or resolve many interlocutory
`matters that arise in inter partes cases.
`See the Official
`Gazette notice titled “Permanent Expansion of Telephone
`Conferencing on Interlocutory Matters in Inter Partes Cases
`Before the Trademark Trial and Appeal Board,” 1235 TMOG 68
`(June 20, 2000).
`The notice is available at
`http://www.uspto.gov.
`Interlocutory matters which the
`Board agrees to discuss or decide by phone conference may
`
`

`
`be decided adversely to any party which fails to
`participate.
`
`If the parties to this proceeding are also parties to other
`Board proceedings involving related marks or, during the
`pendency of this proceeding,
`they become parties to such
`proceedings,
`they should notify the Board immediately,
`so
`that the Board can consider consolidation of proceedings.
`
`New Developments at the Trademark Trial and Appeal Board
`
`TTAB forms for electronic filing of extensions of time to
`oppose, notices of opposition, and inter partes filings are now
`available at http5L1estta;nsp§q gov.
`Images of TTAB proceeding
`files can be viewed using TTABVue at http://ttabvne.uspfg gov
`
`

`
`Hinckleyzétflflensnydertu
`ATTORNEYS AT LAW
`28 State Street
`
`Amy B. Spagnole, Esq.
`aspagnole@haslaw.com
`Direct (61 7) 3 78-42 04
`
`Boston, MA 02109-1775
`TEL: 617.345.9000
`FAX: 617.345.9020
`www.haslaw.com
`
`lllllllIlllllllllllllllllllIllllllllllllllllllllll
`
`01-03-2006
`U 5 Hunt 5 TMOI:/TM Man am Dt. an
`
`December .30, 2005
`
`VIA FIRST CLASS MAIL
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`Notice of Opposition
`of United States Trademark
`
`Application No.: 78/594,832
`Applicant: ZoneChefs LLC
`Mark: VEGGIEZONE
`Class: 39
`
`Dear Madam:
`
`The following documents are submitted in connection with U.S. Application Serial No.
`78/594,832, filed by ZoneChefs LLC, for the mark VEGGIEZONE in International Class 39 on
`the Principal Register:
`
`1. Notice of Opposition With Exhibits 1-9;
`
`2. Opposition fee, $300.00, by check No. 68555 for 1 class;
`
`3. Certificate of Mailing dated December 30, 2005; and
`
`4. Authorization to charge Deposit Account.
`
`The Commissioner is authorized to charge any additional needed fees and to credit any
`overpayments to Account No. 50-0485, Hinckley Allen & Snyder LLP.
`
`Si ce ely,
`
`0
`
`B. Spa
`
`ole
`
`Enclosures
`
`cc:
`
`Deborah L. Benson (w/o Encl.)
`
`565049
`
`1500 Fleet Center, Providence. RI 02903-2393 TEL: 401.274.2000 FAX: 401.277.9600
`43 North Main Street, Concord, NH 03301-4934 TEL: 603.225.4334 FAX: 603.224.8350
`
`

`
`_""“*‘—"\
`
`TTAB
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BARRY D_ SEARS PM)’,
`
`5
`
`Opposer,
`
`)
`)
`)
`)
`)
`)
`)
`)
`Applicant.
`__.______T___._.__)
`
`v.
`
`ZONECHEFS, LLC,
`
`“ll!!!lllllNil!lllllHilllllllllflllllllllllllll
`
`°1'°3'3006
`U,$ =u¢n: L 1'y,,1o1-‘,1-M M.” R”: D!’ -H
`
`Opposition No.
`
`Mark:
`Serial No.:
`Class:
`
`VEGGIEZONE
`78/594,832
`39
`
`NOTICE OF OPPOSITION
`
`Barry D. Sears, Ph.D., a United States citizen, with an address of 222 Rosewood
`
`Drive, Suite 500, Danvers, Massachusetts 01923 (hereafier “Opposer” or “Dr. Sears”)
`
`believes that he will be damaged by registration of the mark shown in Application Serial
`
`No. 78/594,832 for the mark VEGGIEZONE for “food delivery services,” in
`
`Intemational Class 39 on the Principal Register filed on March 24, 2005 by Zone Chefs,
`
`LLC, a New York limited liability company with an address of 8608 Foster Avenue,
`
`Brooklyn, New York 11236, and hereby opposes the same. As grounds for this
`
`opposition, Opposer alleges as follows:
`or/as/apes Immmsz oooooo-as 73594332
`:
`I
`°‘ F“
`3“ °°
`
`.
`
`,
`
`up
`
`FACTS
`
`l.
`
`Opposer is the owner of the trademark ZONE and other marks
`
`incorporating ZONE for health and nutrition products and services.
`
`2.
`
`Since 1995, Opposer has used the trademark ZONE and composite marks,
`
`all incorporating ZONE as the dominant portion thereof, such as ZONE LABS,
`
`

`
`ZONENET, ZONE CAFE, ZONE CUISINE, ZONE SKIN CARE, ZONERX, and DR
`
`SEARS ZONE, in connection with a wide variety of branded health and nutrition
`
`products and services, including print and electronic publications, educational and
`
`\
`
`counseling services, meal delivery services, prepared foods, vitamins and supplements,
`
`meal replacements bars and drinks, skin care products and restaurant and cafe services.
`
`Such use has been ongoing and continuous.
`
`3.
`
`Opposer, Dr. Barry Sears, is the scientist and author who achieved
`
`considerable fame in connection with the lifelong hormonal and insulin control program
`
`that he firstcreated about fifteen (15) years ago. §_eg Declaration of Barry D. Sears
`
`(“Sears Decl.”) 1] 1, attached hereto at Exhibit 1.
`
`4.
`
`Dr. Sears’ program uses food as a drug to help people control and balance
`
`their hormonal and insulin levels to achieve maximum mental productivity and as a
`
`means to improved health. Id, at 1| 2.
`
`5.
`
`Dr. Sears branded his writing, teaching and consulting on the benefits of
`
`an insulin balanced hormonal control diet with the term “ZONE.” Li. at 1] 3.
`
`6.
`
`Dr. Sears adopted the term ZONE as his trademark to analogize the health
`
`benefits of his products and services compliant with his hormonal control program for
`
`ordinary dieters to that of the “flow” achieved by superior athletes during sports
`
`participation. Ll. at 1[ 4.
`
`7.
`
`The terms “flow” or “zone” have been used to denote a heightened state of
`
`consciousness: during sports participation during which an athlete performs to the best of
`
`his or her ability. An article discussing this concept is attached at Exhibit 2.
`
`1
`
`#564063
`
`

`
`8.
`
`The term ZONE in Dr. Sears’ ZONE Marks is not used in its ordinary
`
`sense to mean “an area” -- e.g., “play zone” describing a specific area dedicated to
`
`playing.
`
`9.
`
`Since creation of his hormonal control/insulin balanced program, Dr.
`
`Sears has provided a wide array of health and nutrition products and services that are
`
`compliant with this program under the trademark ZONE and composite trademarks all
`
`containing ZONE as the dominant portion thereof, including, but not limited to, ZONE
`
`ZONE CUISINE, ZONE CAFE, ZONE SKIN CARE, ZONERX, ZONE LABS,
`
`ZONENET and ZONE SHAKES (the “ZONE Marks”).
`
`1c_l, at 1] 5.
`
`10.
`
`Dr. Sears is well known as the source of ZONE branded products and
`
`services.
`
`It
`
`11.
`
`Dr. Sears has authored numerous ZONE branded books which are
`
`premised upon using food as a drug to control and balance hormonal and insulin levels,
`
`including The Zone, Mastering the Zone, Zone Food Blocks, The Anti-Aging Zone, A
`
`Week in the Zone, The Soy Zone, The Top One Hundred Zone Foods, The 0megaRx Zone
`
`and The Anti-Inflammatory Zone. Sears Decl. at 1] 6.
`
`12.
`
`Several of these books have appeared on The New York Times bestseller
`
`list.
`
`_I_<L_ at 1] '7.
`
`13.
`
`Dr. Sears’ The Zone was number one on The New York Times bestseller
`
`list in 1996 and remained on that list for approximately twenty (20) weeks. IQ at 11 8.
`
`14.
`
`More than _fi_\_I_e_: million hard cover copies of Dr. Sears’ ZONE branded
`
`books have been sold in the United States alone. Li at 119.
`
`#564063
`
`

`
`15.
`
`Dr. Sears’ works have been translated into 2; languages and are sold in at
`
`least 4_0 foreign countries. Q at 1] 10.
`
`16.
`
`In addition to his ZONE branded books, Dr. Sears and his ZONE branded
`
`health and nutrition products and services are widely known from his numerous and
`
`frequent live and taped appearances, including seminars, conferences, radio shows, and
`
`network ‘television interviews, throughout the country. Sears Decl. at 1] 11.
`
`17.
`
`In promoting his ZONE branded health and nutrition products and
`
`services, Dr. Sears has appeared on nationally-broadcast television shows, including The
`
`Today Show in 1996 and again in January 2005, 20/20 in 1999, Good Morning America
`
`on June 9, 2000, June 15, 2000 and again in May 2002, Dateline in July 2002, CBS
`
`Evening News on May 21, 2003, The Montel Williams Show on April 1, 2004 and Live
`
`With Regis and Kelly on February 2, 2005. E, at 1[ 12.
`
`18.
`
`Additionally, each year since 1998, Dr. Sears has conducted a week long
`
`ZONE branded seminar aboard a cruise ship, providing a series of presentations and
`
`demonstrations on mastering his hormonal and insulin control program. Ld_. at 11 13.
`
`19.
`
`Dr. Sears is well and favorably known throughout the United States and
`
`has built up ‘valuable goodwill and reputation in his ZONE Marks. Q, at 1] 14.
`
`20.
`
`The widespread recognition, fame and goodwill associated with ZONE for
`
`products and services in the health and nutrition marketplace is a result of the Opposer’s
`
`continuous marketing efforts, national media attention, the expenditure of considerable
`
`amounts of money for advertising and promotional activities and by virtue of the high
`
`quality of the Opposer’s ZONE branded products and services.
`
`#564063
`
`

`
`21.
`
`Opposer is the owner of approximately seventy (70) plus trademarks and
`
`service marks comprising or containing “ZONE” for a wide array of health and nutrition
`
`products and services. 1d_. at 1] 15.
`
`212.
`
`By way of example, Opposer owns the following United States Trademark
`
`Registrations:
`
`Mark:
`
`ZONE
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`In Commerce:
`Goods:
`
`2,689,749
`February 25, 2003
`May 22, 2000
`May 1995
`
`May 1995
`Publications, namely a series of books in the field of
`diet and nutrition.
`
`Mark:
`
`ZONERX
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`In Commerce:
`Goods:
`
`Mark:
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`In Commerce:
`Goods:
`
`2,929,836
`March 1, 2005
`September 17, 2003
`April 23, 2002
`
`April 23, 2002
`Workbooks and printed guides about diet, health,
`and nutrition.
`
`ZONE CUISINE
`
`2,997,305
`September 20, 2005
`March 1, 2004
`September 2003
`
`September 2003
`Prepared and packaged entrees consisting primarily
`of meat, fish, poultry, or vegetables.
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`Date of First Use
`
`ZONE CUISINE
`
`2,968,210
`December 13, 2002
`July 12, 2005
`September 2003
`
`

`
`In Commerce:
`Goods:
`
`September 2003
`Catering services.
`
`Mark:
`
`ZONE SKIN CARE
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`In Commerce:
`
`Goods:
`
`2,623,974
`September 24, 2002
`March 30, 2001
`June 2000
`
`June 2000
`
`Skin care products, namely soaps, lotions, creams,
`and oils for the face, body, and hair.
`
`23.
`
`In accordance with Sections 7(b), 22 and 33(a) of the Lanham Trademark
`
`Act, Opposer’s above-cited registrations constitute primafacie evidence of the validity of
`
`the registered marks and of the registrations thereof, Opposer’s ownership of the marks
`
`shown in said registrations, and Opposer’s exclusive right to use the marks in commerce
`
`in connection with the goods and services named therein, without condition or limitation.
`
`24.
`
`Said registrations constitute notice to Applicant of Opposer’s claim of
`
`ownership of the marks shown within such registrations.
`
`25.
`
`Applicant had constructive notice of Opposer’s registration for ZONE
`
`(Reg. No. 2,689,749) as of February 25, 2003, prior to the filing date of Application
`
`Serial No. 78/594,832 for VEGGIEZONE on March 24, 2005.
`
`26.
`
`The Applicant seeks to register VEGGIEZONE as a trademark for “food
`
`delivery services," in International Class 39.
`
`27.
`
`Applicant’s Application Serial No. 78/594,832 for VEGGIEZONE was
`
`filed on Marc.h 24, 2005 in the United States Patent and Trademark Office.
`
`28.
`
`Application Serial No. 78/594,832 was filed under Section 1(b) of the
`
`Trademark Act claiming a bona fide intent to use the mark in commerce in connection
`
`with “food delivery services."
`
`#564063
`
`6
`
`

`
`129.
`
`Since Application Serial No. 78/594,832 is based upon an alleged bona
`
`fide intent to use, the filing date is the only date upon which Applicant may rely for
`
`purposes of priority.
`
`30.
`
`Application Serial No. 78/594,832 was filed on March 24, 2005, long after
`
`Opposer coined and began using his ZONE Marks in 1995.
`
`3 1.
`
`Application Serial No. 78/594,832 was filed on March 24, 2005, long after
`
`Opposer’s date of first use of May 1995 for ZONE (Reg. No. 2,689,749).
`
`32.
`
`Application Serial No. 78/594,832 was filed on March 24, 2005, long after
`
`Opposer’s date of first use of June 2000 for ZONE SKIN CARE (Reg. No. 2,623,974).
`
`33.
`
`Application Serial No. 78/594,832 was filed on March 24, 2005, long after
`
`Opposer’s date of first use of April 23, 2002 for ZONERX (Reg. No. 2,929,836).
`
`34.
`
`Application Serial No. 78/594,832 was filed on March 24, 2005, long afier
`
`Opposer’s date of first use of September 2003 for ZONE CUISINE (Reg. No. 2,968,210).
`
`35.
`
`Application Serial No. 78/594,832 was filed on March 24, 2005, long afier
`
`Opposer’s date of first use of September 2003 for ZONE CUISINE (Reg. No. 2,997,305).
`
`36.
`
`The Applicant’s VEGGIEZONE mark and the Opposer’s ZONE Marks
`
`are virtually identical in sound and appearance and create the same commercial
`
`impression.
`
`37.
`
`The term ZONE comprises the dominant portion of Applicant’s
`
`VEGGIEZONE mark.
`
`38.
`
`The term ZONE comprises the dominant portion of Opposer’s ZONE
`
`Marks, including Opposer’s ZONE, ZONE SKIN CARE, ZONERX and ZONE
`
`CUISINE marks.
`
`#564063
`
`
`
`

`
`39.
`
`The term ZONE in the Applicant’s mark VEGGIEZONE has the identical
`
`meaning; as the term ZONE in Opposer’s registered marks and common law marks.
`
`40.
`
`The term ZONE in VEGGIEZONE refers to and indicates compliance
`
`with Dr. Sears and his criteria for an insulin and hormonal balanced diet. Print outs from
`
`Applicant’s website are attached at Exhibit 3.
`
`41.
`
`Applicant’s food delivery services are advertised as all about “hormonal
`
`responses to food,” “regulating your body’s insulin,” and thinking of “food as a drug.”
`
`Print outs from Applicant’s website are attached at Exhibit 4.
`
`412.
`
`The App1icant’s services, as set forth in the Application Serial No.
`
`78/594,832, and Opposer’s ZONE branded health and nutrition goods and services are
`
`highly related, if not identical.
`
`43-.
`
`The services set forth in Application Serial No. 78/594,832 are “food
`
`delivery services.”
`
`44.
`
`The Opposer offers food delivery services in connection with its ZONE
`
`CUISINE mark.
`
`45,.
`
`The services set forth in Opposer’s Registration No. 2,968,210 for ZONE
`
`CUISINE are “catering services.”
`
`46.
`
`Food delivery services and catering services are highly related, if not
`
`identical, services.
`
`47.
`
`The goods set forth in Opposer’s Reg. No. 2,689,749 for ZONE are books
`
`in the field of diet and nutrition.
`
`#564063
`
`3
`
`

`
`L
`
`48.
`
`Applicant’s VEGGIEZONE food delivery services are specifically
`
`concerned with diet and nutrition. Print outs from Applicant’s website are attached at
`
`Exhibit .§.
`
`49.
`
`Applicant’s Application Serial No. 78/594,832 does not limit the charmels
`
`of trade through which its services will travel nor does it limit the consumers to whom
`
`such services are directed.
`
`50.
`
`Applicant’s services are presumed to travel through all channels of trade
`
`and to be directed towards all relevant consumers.
`
`51.
`
`There are no limits on the channels of trade or consumers for Opposer’s
`
`goods and services as described in Opposer’s Reg. Nos. 2,689,749, 2,623,974, 2,929,836,
`
`2,997,305 and 2,968,210.
`
`52.
`
`The Applicant’s VEGGIEZONE services and the Opposer’s ZONE
`
`branded goods and services will be sold or offered through the same channels of trade.
`
`53.
`
`The Applicant’s VEGGIEZONE services and the Opposer’s ZONE
`
`branded goo-ds and services will be sold to the same customers.
`
`54.
`
`Consumers are likely to believe that Applicant’s services, similarly
`
`marked and sold in the same channels of trade as Opposer’s ZONE branded goods and
`
`services, come from or are sponsored or endorsed by the same source.
`
`55.
`
`Consumers are likely to expect that Applicant’s services, similarly marked
`
`and creating an identical commercial impression —— as a result of the use of the term
`
`ZONE in the context of food designed to assist dieters with hormonal control and insulin
`
`balance --, are of the same quality as Opposer’s ZONE branded goods and services.’
`
`I
`
`#564063
`
`

`
`56.
`
`Upon information and belief, Applicant adopted and applied to register the
`
`mark VEGGIEZONE with actual lmowledge of Opposer’s prior rights in and to the
`
`ZONE Marks for health and nutrition products and services and with a bad faith intent to
`
`trade off the good will of Opposer’s ZONE Marks.
`
`5'7.
`
`Upon information and belief, Applicant willfiilly copied Dr. Sears’ ZONE
`
`Marks in choosing VEGGIEZONE in a deliberate attempt to associate its services with
`
`Opposer, Opposer’s ZONE Marks and the good will therein.
`
`58.
`
`Applicant maintains a website at the Internet address <zonechefs.com>.
`
`59.
`
`60.
`
`Applicant provides several dietary tips on its <zonechefs.com> website.
`
`Applicant’s dietary tips are virtually identical to tips that Dr. Sears offers
`
`in his own ZONE branded publications.
`
`61.
`
`Applicant’s <zonechefs.com> website suggests using the palm of your
`
`hand to determine the correct amount of protein to consume at each meal. Print outs
`
`from Applicant’s <zonechefs.com> website are attached at Exhibit 6.
`
`62.
`
`Dr. Sears uses this same methodology in his ZONE branded publications.
`
`Excerpts from Dr. Sears Mastering the Zone book, published in 1997, long prior to the
`
`filing of application Serial No. 78/594,832 on March 24, 2005, describing this tip are
`
`attached at Exhibit 7.
`
`63.
`
`Applicant sells pharmaceutical grade fish oil supplements on its
`
`<zonechefs.com> website in connection with the mark Z-OMEGA-3. Print outs from
`
`Applicant’s <zonechefs.com> website are attached at Exhibit 8.
`
`#564063
`
`10
`
`

`
`64.
`
`Dr. Sears has promoted the health benefits of pharmaceutical grade fish oil
`
`for numerous years and recommends such supplement as an essential part of his insulin
`
`and hormonal control program. Sears Decl. at 1] 16.
`
`65.
`
`Dr. Sears sells his own ZONE branded pharmaceutical grade fish oil
`
`supplements. E, at 1[ 17.
`
`66.
`
`Applicant touts one of its chefs as the “former executive pastry chef to Dr.
`
`Barry Sea.rs (author of the ZONE DIET).” Print cuts from App1icant’s <zonechefs.com>
`
`website are attached at Exhibit 9.
`
`FIRST GROUND FOR RELIEF
`
`§QNDER 15 U.S.C. § 1052§d)[
`
`67.
`
`Opposer incorporates by reference paragraphs 1 through 66 as if fully set
`
`forth herein.
`
`68.
`
`The ZONE Marks have been used continually by Opposer since a date
`
`prior to any date on which Applicant may rely.
`
`69.
`
`App1icant’s VEGGIEZONE mark is identical or confusingly similar to
`
`Opposer’s ZONE Marks in appearance and in commercial impression.
`
`70.
`
`The services of Applicant to be offered under its VEGGIEZONE mark are
`
`identical or related to Opposer’s goods and services provided under the ZONE Marks and
`to Dr. Sears himself.
`
`71.
`
`The use by Applicant of VEGGIEZONE for the services listed in the
`
`subject application is likely to create the erroneous impression that Applicant’s services
`
`originate with, are sponsored or promoted by, come from, or are otherwise associated
`
`with Opposer or Opposer’s goods and services provided under the ZONE Marks or that
`
`Applicanl:’s services are endorsed, sponsored, or in some way connected with Opposer.
`
`#564063
`
`1 1
`
`

`
`72.
`
`Use of VEGGIEZONE by Applicant is likely to cause confusion, cause
`
`mistake or to deceive the public into the belief that the services offered under
`
`VEGGIEZONE come from or are otherwise authorized or sponsored by Opposer in
`
`violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`WHEREFORE, the Opposer requests that this opposition be sustained and that
`
`Trademark Application Serial No. 78/594,832 filed on March 24, 2005 by Zone Chefs,
`
`LLC be rejected and its registration refused.
`
`Respectfully submitted,
`
`BARRY D. SEARS, PH.D.
`
`B his attorneys,
`
`
`
`
` eborah L. Benson
`Peter A. Herbert
`
`Amy B. Spagnole
`Hinckley, Allen & Snyder LLP
`28 State Street
`
`Boston, MA 02109
`Tel: (617) 345-9000
`Fax: (617)345-9020
`
`Dated: December 30, 2005
`
`
`
`#564063
`
`

`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`BARRY D. SEARS Ph.D.,
`
`Opposer,
`
`v.
`
`ZONECHEFS, LLC,
`
`)
`)
`)
`)
`)
`Applicant.
`_____m___.—)
`
`Opposition No.
`
`Mark:
`Serial No.:
`Class:
`
`VEGGIEZONE
`78/594,832
`39
`
`DECLARATION OF BARRY D. SEARS PH.D.
`
`1, Barry D. Sears. Ph.D., on oath hereby depose and state as follows:
`
`1.
`
`I am a scientist and author who has achieved considerable fame in
`
`connection with the lifelong hormonal and insulin control program that I first created
`
`about fifteen (15) years ago.
`
`2.
`
`My program uses food as a drug to help people control and balance their
`
`hormonal and insulin levels to achieve maximum mental productivity and as a means to
`
`improved health.
`
`3.
`
`I branded my writing, teaching and consulting on the benefits of an
`
`insulin balanced hormonal control diet with the tenn “ZONE.”
`
`4.
`
`I adopted the term ZONE as my trademark to analogize the health benefits
`
`of my products and services compliant with my hormonal control program for ordinary
`
`dieters to that of the “flow” achieved by superior athletes during sports participation.
`
`

`
`A.
`.3.
`
`Since creation of my hormonal control/insulin balanced program, I have
`
`provided a wide array of health and nutrition products and services that are compliant
`
`with this program under the trademark ZONE and composite trademarks all containing
`
`ZONE as the dominant portion thereof, including, but not limited to, ZONE, ZONE
`
`CUISINE, ZONE CAFE, ZONE SKIN CARE, ZONERX, ZONE LABS, ZONENET and
`
`ZONE SI-IAKES.
`
`6.
`
`I have authored numerous ZONE branded books relating to using food as
`
`a drug to control and balance hormonal and insulin levels, including The Zone, Mastering
`
`the Zone, Zone Food Blocks, The Anti-Aging Zone, A Week in the Zone, The Soy Zone,
`
`The Top One Hundred Zone Foods, The OmegaRx Zone and The Anti-Inflammatory
`
`Zone.
`
`list.
`
`7.
`
`Several of these books have appeared on The New York Times bestseller
`
`8.
`
`The Zone was number one on The New York Times bestseller list in 1996
`
`and remained on that list for approximately twenty (20) weeks.
`
`9.
`
`More than five million hard cover copies of my ZONE branded books
`
`have been sold in the United States alone.
`
`10.
`
`My works have been translated into twenty-two (22) languages and are
`
`sold in at least forty (40) foreign countries.
`
`11.
`
`In addition to my ZONE branded books, myself and my ZONE branded
`
`health and nutrition products and services are widely known from my numerous and
`
`frequent live and taped appearances, including seminars, conferences, radio shows, and
`
`network television interviews, throughout the country.
`
`#564064
`
`2
`
`

`
`p
`
`E
`
`‘
`
`12:.
`
`In promoting my ZONE branded health and nutrition products and
`
`services, I have appeared on nationally-broadcast television shows, including The Today
`
`Show in 1996 and again in January 2005, 20/20 in 1999, Good Morning America on June
`9 and June 15, 2000 and again in May 2002, Dateline in July 2002, CBSEvening News
`
`on May 21, 2003, The Montel Williams Show on April 1, 2004 and Live With Regis and
`
`Kelly on February 2, 2005.
`
`13.
`
`Additionally, each year since 1998, I have conducted a week long ZONE
`
`branded seminar aboard a cruise ship, providing a series of presentations and
`
`demonstrations on mastering the hormonal and insulin control program that I developed.
`
`14.
`
`I am well and favorably known through the United States and I have built
`
`up valuable goodwill and reputation in my ZONE Marks.
`
`15.
`
`I am the owner of approximately seventy (70) plus trademarks and service
`
`marks comp:rising or containing “ZONE” for a wide array of health and nutrition
`
`products and services.
`
`16.
`
`I have promoted the health benefits of pharmaceutical grade fish oil for
`
`numerous years and recommend such supplement as an essential part of my insulin and
`
`hormonal control program.
`
`#564064
`
`1
`l
`mg.
`
`3
`
`

`
`17.
`
`I sell my own ZONE branded pharmaceutical grade fish oil supplements.
`
`The declarant further declares that all statements made herein of his knowledge
`
`are true, and that all statements made on information and belief are believed to be true;
`
`and further declares that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code and that such willful false
`
`statements mayjeopardize the validity ofthisde ;
`
`Decemberzz, 2005
`
`Barry D. Sears Ph.D.
`
`\
`
`#564064
`
`4
`
`

`
`

`
`The Zone: An Empirical ‘Study
`
` I
`
`f'iiS;3ot‘_t_:l§53
`
`- .*it;es:,i
`
`The Zone: Evidence of a Universal Phenomenon for Athletes
`Across Sports
`.IanetA Young and Michelle D Pain
`-Monash University, Melbourne, Australia
`
`.
`
`-
`
`c
`
`ABSTRACT
`
`“ This a
`per examines the heightened states of consciousness during participation in sport, termed the zone
`or flo
`I
`. Theoretical frameworks and studies of the phenomenon are described. The notion of a universal
`none
`sport is explored with a review of Young's (1999a) comparative analysis of flow experiences of
`plrofe sional tennis players with Jackson's (1993, 1996) elite athletes. Qualitative analyses of tennis
`playe
`' and elite athletes‘ narratives of flow support flow.theory's posited structure of flow consisting of
`e»‘ght
`‘imensions. No significant differences were found between tennis players and elite athletes on the
`
`
`
`

`
`'_
`
`(Privette, 1984). These analys
`es suggest that the zone or flow stafe is a
`ough intra-sport and inter-
`athlete differences are evident.
`
`Introduction
`
`"the zone" (e.g., Clarkson,
`ete, the zone characterises a
`
`Studies of the zone or "zone-like states" include
`Gar meld, had Bennett (1984), Jackson (1992, 1993, 1
`hftpt /WWVX/.ath1eticin.<io‘}1+ r-nmrv.-.111..--vml.
`\
`1
`
`those ofRavizza (1977, 1984), Loehr (1986),
`995, 1996) and Young (1999a,* 199913, 19990, -
`
`

`
`S3O ‘S’53
`
`m.5
`
`C!oE- mE’o.'~<
`
`l mcluded those 0
`
`\In a recent study, Y
`tcfinfls players. Adopting dual flow theory and re
`sulppjzrt both theoretical
`‘
`
`sxgm
`
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`
`1
`'
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`
`'
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`
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`
`
`l
`
`

`
`1‘
`
`Jackson's (1993 199 '
`
`‘, (professiona
`\ experiential correlates (e.g., though
`universal.
`
`mes not matching with a
`I irnensions posited b '
`ummary ofthe results ofthis proced
`.
`miscell
`J1] ckson, is presented in Table 1.
`
`l7_.'Transformation oftime
`
`I6. Paradox’ of control
`
`1. Numbers in parentheses reflect the relative importance of.each dimension for each
`1
`
`http: /
`
`1
`
`.a.fl1le.fir~.1'ncin1-.+ ........ /v-11 7-» ~ ~'*
`
`

`
` Elite Athletes
`(Jackson, 1996)
`
`
`
`

`
`I
`
`The Zone: An Empirical Study.
`
`
`
`Ilntention
`IPersona.1 responsibility
`
`, thoughts
`
`Process "clicked"
`I7
`ersonal understanding, expression
`Actions,
`.
`
`
`
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`I
`
`I
`I
`
`418
`
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`
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`
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`
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`itlemsipontained in the Expe '
`sport: in the phenomenolog,ry of flow. Further, it was 11
`inven Iory had to be discard
`tennis Iplayers as a group di
`
`«
`
`._Siunmary
`
`

`
`. Young's (1999a) comparative analysis of flow e
`other sports, together with studies th
`
`»
`
`Page 7 6f 8
`
`Apter, M. J. (1982).
`Academic Press.
`
`Apter, M. J. (1989). _Bev§r§a1meg135; Mgtivatiolg, emgtion and pezsonalm. London: Routedge.
`Clarkson, M. (1999). Q9_mpetig'v§ fire. Champaign, IL: Human Kinetics.
`A
`Cooper, A. (1998).
`'
`'
`I
`'
`1,
`Shambhala. . Boston:
`L . Csikzentmihalyi,M. (1975). Playandintrinsicrewards.
`
`6 .
`
`Jo nal f Humanistic
`
`cholo
`
`41-
`
`. Csikzentmihalyi, M.
`Rdwe.
`
`(1990). Elgw: fl ge pgycbglogx gfoptimal experience, New York’: Harper &
`
`
`
`8). . Champaigii, IL: Human Kinetics.
`Heathcote,.F. (1996). Eeak pggtgmgger Zen gnd the spggjigg zone. Dublin, Ireland: Wolfhound.
`Iaekson, s. A. (.1992). Athletes iii flow: A qualitative investi
`skateits. Jgumal Qfi Applied
`{$12.o:1P§ychQ1c_)gy. 5(2), 161-180. _
`
`gation of flowstates in elitefigure
`
`.
`
`

`
`\
`
`‘
`
`The Zone: An Empirical Study ~_
`
`v Loehr, J. E. (1986). Mental tgughnegg training for spQrt§:.Achievjng athletic ‘excellence, NeW.York:
`Plume.
`'
`.
`Loehr, J‘. E. (1995, July). Six keys to getting and stayingin the zone. Tennis, p. 36.
`Maslow, A. H. (1962). I1 gwggd a psychology of being. Princeton, NJ: VanNostrand.
`Murphy, S. (1996). The achieyement zone. New York: Berkley.
`Privette, G. (1984). Experience Qggestignnake; Pensacola, FL: The Univer
`Ravizza, K. (1977). A subjective study ofthe athlete's
`'
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`sity of West.
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`.
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`
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`inflo ‘F owt eo
`la e
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`Young, J.A. (199921).
`pf;speggjves. Unpublished doctoral thesis. Monash Uni
`'
`Young, J.A. (1999b, May). Inthe zone. 1&1; pp. 40-41.
`3 Young, J.A. (1.999c). Zoning in on peak performance
`
`and
`.
`
`ersal the
`
`
`
`We look forward to your comments and feedback. S
`_._____..._.____.__.
`I
`imply e-mail Athletic Ingight.
`____________________________
`Mental _E_Iea}th Net Award Winner
`Copyright 0 1999 Athletic Insight. Inc.
`ISSN 1536-0431
`
`‘
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