throbber
IllllllIIHIllllllllllllllllllllllllllllllllllllll
`
`Ozoseooa
`Us. Patent s TMO.'c/TM Mall mm D, ,1,
`
`MICHAEL UTILLA
`UTILLA and ASSOCIATES
`32 COURT ST STE 1800
`BROOKLYN, NY 11201-4440
`
`TTAB
`
`United States Patent and Trademark Urrlue
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Mailed:
`
`January 17, 2006
`
`Opposition No 91168601
`Serial No. 78624615
`
`BARRY D. SEARS
`
`V.
`
`Zonechefs, L.L.C.
`
`AMY B. SPAGNOLE
`HINCKLEY, ALLEN & SNYDER LLP
`28 STATE STREET
`
`BOSTON, MA 02109
`
`Denise M. DelGizzi, Paralegal Specialist
`
`in the above-
`A notice of opposition to the registration sought
`identified application has been filed.
`The notice of opposition can be
`viewed and printed at http://ttabvue.uspto.gov/
`
`(See Trademark
`ANSWER IS DUE FORTY DAYS after the mailing date hereof.
`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 Filing§_Under the Madrid Protocol Implementation Act,
`Fed. R. 55,748 (September 26, 2003)
`(effective November 2, 2003);
`Reorganization of Correspondence and Other Provisions,
`68 Fed. Reg. 48,286
`(August 13, 2003)
`(effective September 12, 2003). Notices concerning the
`rules changes, as well as the Trademark Trial and Appeal Board Manual of
`Procedure (TEMP), are available at www.uspto.gov/web/offices/dcom/ttab/.
`
`68
`
`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:
`
`February 06, 2006
`
`Discovery period to close:
`
`August 05, 2006
`
`30-day testimony period for party
`in position of plaintiff to close:
`
`November 03, 2006
`
`30-day testimony period for party
`in position of defendant
`to close:
`
`January 02, 2007
`
`15-day rebuttal testimony period
`for plaintiff to close:
`
`February 16, 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 2.125.
`
`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 2.129.
`
`The Board allows parties to utilize telephone conferences to
`NOTE:
`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
`ht+n'//estta.uspto;gov.
`Images of TTAB proceeding files can be viewed using
`”TABVue at httpg//ttabvue.uspto.gov.
`
`

`
`Hinckieyflflmasnydemp
`ATTORNEYS AT LAW
`28 State Street
`Boston, MA 02109-1775
`TEL: 617.345.9000
`FAX: 617.345.9020
`www.haslaw.com
`
`Amy B. Spagnole, Esq.
`aspagn0Ie@h aslaw.com
`Direct (61 7) 3 78-4204
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`O1-03-2006
`'.' S 731211: & 'r.v|orc/rM Mall Rep: 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.: 78/624,615
`Applicant: ZoneChefs LLC
`Mark: ZONECHEFS
`Class: 39
`
`Dear Madam:
`
`The following documents are submitted in connection with U.S. Application Serial No.
`78/624,615, filed by ZoneChefs LLC, for the mark ZONECHEFS in International Class 39 on
`the Principal Register:
`
`1. Notice of Opposition With Exhibits 1-9;
`
`2. Opposition fee, $300.00, by check No. 68556 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.
`
`
`
`Enclosures
`
`cc:
`
`Deborah L. Benson (w/o Encl.)
`
`565048
`
`1500 Fleet Center. Provldence, 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
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`BARRY D. SEARS Ph.D.,
`
`Opposer’
`
`v.
`
`ZONECHEFS, LLC,
`
`Applicant.
`
`)
`)
`)
`I
`)
`)
`)
`)
`)
`)
`)
`
`llllllllllllfllllllllllllll
`
`llllllllllllllllllllll
`
`O1-0 -
`U.s.FarmA‘rMo1?ITfr?a?R6cptor an
`
`Opposition No.
`
`Mark:
`Serial No.:
`Class:
`
`ZONE CHEFS
`78/624,615
`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 (hereafter “Opposer” or “Dr. Sears”) believes that he
`
`will be damaged by registration of the mark shown in Application Serial No. 78/624,615 for the
`
`mark ZONE CHEFS for “food delivery services,” in lntemational Class 39 on the Principal
`
`Register filed on May 6, 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:
`
`'6‘|'|!ll!li|S2 00000049 70624615 ‘
`300.0009-
`
`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
`
`564055
`
`

`
`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 first created
`
`about fifteen (15) years ago. fig 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.
`
`_Ig_. at 1| 2.
`
`5.
`
`Dr. Sears branded his writing, teaching and consulting on the benefits of an
`
`insulin balanced honnonal 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. Li 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.
`
`8.
`
`The term ZONE in Dr. Sears’ ZONE Marks is not used in its ordinary sense to
`
`mean “an area” -- e.g., “p1ay 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
`
`#564055
`
`2
`
`

`
`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 CENTER, ZONE SKIN CARE, ZONERX, ZONE LABS, ZONENET and ZONE
`
`SHAKES (the “ZONE Marks”).
`
`I_d. at 1[ 5.
`
`10.
`
`Dr. Sears is well known as the source of ZONE branded products and services.
`
`1 1.
`
`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. 1;
`
`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.
`
`I_d. at 1] 8.
`
`14.
`
`More than Ei hard cover copies of Dr. Sears’ ZONE branded books have
`
`been sold in the United States alone. Ll. at 1[9.
`
`15.
`
`Dr. Sears’ works have been translated into 12 languages and are sold in at least 49
`
`foreign countries. Q at 11 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 Dec1.at1] 11.
`
`#564055
`
`3
`
`

`
`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. EL
`
`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. Q at 1[ 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.
`
`I_d_. at ‘H 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.
`
`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.
`
`I_d. at 1] 15.
`
`22.
`
`By way of example, Opposer owns the following United States Trademark
`
`Registrations:
`
`Mark:
`
`ZONE
`
`Registration No.2
`Registration Date:
`App. Date:
`
`2,689,749
`February 25, 2003
`May 22, 2000
`
`#564055
`
`_
`
`4
`
`

`
`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:
`
`Mark:
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`In Commerce:
`Goods:
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration 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:
`
`May 1995
`
`May 1995
`Publications, namely a series of books in the field of diet
`and nutrition.
`
`ZONERX
`
`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.
`
`ZONE CUISINE
`
`2,968,210
`December 13, 2002
`
`July 12, 2005
`September 2003
`
`September 2003
`Catering services.
`
`ZONE SKIN CARE
`
`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.
`
`#564055
`
`

`
`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. 78/624,615
`
`‘ for ZONE CHEFS on May 6, 2005.
`
`26.
`
`The Applicant seeks to register ZONE CHEFS as a trademark for “food delivery
`
`services,” in International Class 39.
`
`27.
`
`Applicant’s Application Serial No. 78/624,615 for ZONE CHEFS was filed on
`
`May 6, 2005 in the United States Patent and Trademark Office under Section 1(a) of the
`
`Trademark Act.
`
`29.
`
`Application Serial No. 78/624,615 claims a date of first use anywhere of June 1,
`
`2003 and a date of first use in commerce of September 1, 2003, long after Opposer coined and
`
`began using his ZONE Marks in 1995.
`
`30.
`
`Application Serial No. 78/624,615 claims a date of first use anywhere of June 1,
`
`2003 and a date of first use in commerce of September 1, 2003, long after Opposer’s date of first
`
`use of May 1995 for ZONE (Reg. No. 2,689,749).
`
`#564055
`
`

`
`31.
`
`Application Serial No. 78/624,615 claims a date of first use anywhere of June 1,
`
`2003 and a date of first use in commerce of September 1, 2003, long after Opposer’s date of first
`
`use of June 2000 for ZONE SKIN CARE (Reg. No. 2,623,974).
`
`32.
`
`Application Serial No. 78/624,615 claims a date of first use anywhere of June 1,
`
`2003 and a date of first use in commerce of September 1, 2003, long afier Opposer’s date of first
`
`use of April 23, 2002 for ZONERX (Reg. No. 2,929,836).
`
`33.
`
`Application Serial No. 78/624,615 claims a date of first use anywhere of June 1,
`
`2003 and a date of first use in commerce of September 1, 2003, long after Opposer’s constructive
`
`use date of December 13, 2002 for ZONE CUISINE (Reg. No. 2,968,210).
`
`34.
`
`The Applicant’s ZONE CHEFS mark and the Opposer’s ZONE Marks are
`
`virtually identical in sound and appearance and create the same commercial impression.
`
`35.
`
`The term ZONE comprises the dominant portion of Applicant’s ZONE CHEFS
`
`mark.
`
`36.
`
`The term ZONE comprises the dominant portion of Opposer’s ZONE Marks,
`
`‘ including Opposer’s ZONE, ZONE SKIN CARE, ZONERX and ZONE CUISINE marks.
`
`37.
`
`The term ZONE in the Applicant’s mark ZONE CHEFS has the identical meaning
`
`as the term ZONE in Opposer’s registered marks and common law marks.
`
`38.
`
`The term ZONE in ZONE CHEFS 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.
`
`39.
`
`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
`
`#564055
`
`7
`
`
`
`

`
`40.
`
`The Applicant’s services, as set forth in the Application Serial No. 78/624,615,
`
`and Opposer’s ZONE branded health and nutrition goods and services are highly related, if not
`
`identical.
`
`41.
`
`The services set forth in Application Serial No. 78/624,615 are “food delivery
`
`services.”
`
`42.
`
`The Opposer offers food delivery services in connection with its ZONE CUISINE
`
`mark.
`
`43.
`
`The services set forth in Opposer’s Registration No. 2,968,210 for ZONE
`
`CUISINE are “catering services.”
`
`44.
`
`Food delivery services and catering services are highly related, if not identical,
`
`services.
`
`45.
`
`The goods set forth in Opposer’s Reg. No. 2,689,749 for ZONE are “books in the
`
`field of diet and nutrition.”
`
`46.
`
`Applicant’s ZONE CHEFS food delivery services are specifically concerned with
`
`diet and nutrition. Print outs from Applicant’s website are attached at Exhibit 5.
`
`47.
`
`Applicant’s Application Serial No. 78/624,615 does not limit the charmels of
`
`trade through which its services will travel nor does it limit the consmners to whom such services
`
`are directed.
`
`48.
`
`Applicant’s services are presumed to travel through all charmels of trade and to be
`
`directed towards all relevant consumers.
`
`49.
`
`There are no limits on the charmels of trade or consmners 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.
`
`
`
`

`
`50.
`
`The App1icant’s ZONE CHEFS services and the Opposer’s ZONE branded goods
`
`and services will be sold or offered through the same channels of trade.
`
`51.
`
`The Applicant’s ZONE CHEFS services and the Opposer’s ZONE branded goods
`
`and services will be sold to the same customers.
`
`52.
`
`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.
`
`53.
`
`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.
`
`54.
`
`Upon information and belief, Applicant adopted and applied to register the mark
`
`ZONE CHEFS with actual knowledge 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.
`
`55.
`
`Upon information and belief, Applicant willfully copied Dr. Sears’ ZONE Marks
`
`in choosing ZONE CHEFS in a deliberate attempt to associate its services with Opposer,
`
`Opposer’s ZONE Marks and the good will therein.
`
`56.
`
`57.
`
`58.
`
`Applicant maintains a website at the Internet address <zonechefs.com>.
`
`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.
`
`#564055
`
`9
`
`

`
`59.
`
`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.
`
`60.
`
`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 Applicant’s
`
`use of ZONE CHEFS, describing this tip are attached at Exhibit 7.
`
`61.
`
`Applicant sells pharmaceutical grade fish oil supplements on its <zonechefs.com>
`
`website in connection with the mark Z-OMEGA-3. Print cuts from Applicant’s
`
`<zonechefs.com> website are attached at Exhibit 8.
`
`62.
`
`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.
`
`63.
`
`Dr. Sears sells his own ZONE branded pharmaceutical grade fish oil supplements.
`
`1; at 11 17.
`
`64.
`
`Applicant touts one of its chefs as the “former executive pastry chef to Dr. Barry
`
`Sears (author of the ZONE DIET).” Print outs from Applicant’s <zonechefs.com> website are
`
`attached at Exhibit 9.
`
`65.
`
`Applicant is using the federal trademark registration symbol, ®, in connection
`
`with the ZONE CHEFS mark for food delivery services on its <zonechefs.com> website. Print
`
`outs from Applicant’s website showing Applicant’s use of the federal registration symbol in
`
`connection with the ZONE CHEFS mark are attached at Exhibits 4-6 and §-2.
`
`66.
`
`Applicant does not own a United States federal trademark registration for the
`
`trademark ZONE CHEFS for food delivery services.
`
`#564055
`
`10
`
`

`
`FIRST GROUND FOR RELIEF
`
`§QNDER 15 U.S.C. § 1052{d[[
`
`67.
`
`Opposer incorporates by reference paragraphs 1 through 66 as if fiilly 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.
`
`Applicant’s ZONE CHEFS 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 ZONE CHEFS mark are
`
`, identical or related to Opposer’s goods and services under the ZONE Marks and to Dr. Sears
`
`himself.
`
`71.
`
`The use by Applicant of ZONE CHEFS 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 Applicant’s services are
`
`endorsed, sponsored, or in some way connected with Opposer.
`
`72.
`
`Use of ZONE CHEFS by Applicant is likely to cause confusion, cause mistake or
`
`to deceive the public into the belief that the services offered under ZONE CHEFS 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).
`
`#564055
`
`‘
`
`1 1
`
`

`
`SECOND GROUNDS FOR RELIEF
`
`QLIISUSE OF THE FEDERAL REGISTRATION SYMBOL[
`
`73.
`
`Opposer incorporates by reference paragaphs 1 through 72 as if fully set forth
`
`74.
`
`Applicant is using the federal trademark registration symbol, ®, on its
`
`<zonechefs.com> website in connection with the ZONE CHEFS mark for food delivery services.
`
`75.
`
`Applicant does not own a United States trademark registration for the trademark
`
`ZONE CHEFS for food delivery services.
`
`76.
`
`Upon information and belief, Applicant is using the federal trademark registration
`
`6 symbol in connection with the ZONE CHEFS mark for food delivery services with the intention
`
`of deceiving the public or others in the trade into believing that the mark was registered.
`
`77.
`
`App1icant’s improper use of the federal trademark registration symbol in
`
`connection with the ZONE CHEFS mark for food delivery services when such mark has not
`
`been so registered constitutes fraud.
`
`#564055
`
`1 2
`
`

`
`WHEREFORE, the Opposer requests that this opposition be sustained and that
`
`Trademark Application Serial No. 78/624,615 filed on May 6, 2005 by Zone Chefs, LLC be
`
`rejected and its registration refused.
`
`Respectfully submitted,
`
`BARRY D. SEARS, PH.D.
`
`By his attorneys,
`
`— If
`
`rah L. Benson
`
`Peter A. Herbert
`Amy B. Spagiiiole
`Hinckley, Allen & Snyder LLP
`28 State Street
`Boston, MA 02109
`Tel: (617) 3451-9000
`Fax: (617) 345-9020
`
`Dated: December 30, 2005
`
`‘
`
`#564055
`
`13
`
`

`
`Exhibit 1
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`BARRY D. SEARS Pli.D.,
`
`Opposer,
`
`v.
`
`ZONECHEFS, LLC,
`
`)
`)
`)
`)
`)
`Applicant.
`_______________)
`
`Opposition No.
`
`Mark:
`Serial No.:
`Class:
`
`ZONE CHEFS
`78/624,615
`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 term “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.
`
`
`
`

`
`5.
`
`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 SHAKES.
`
`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 0megaRx 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.
`
`#564056
`
`2
`
`

`
`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, 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.
`
`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 comprising 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.
`
`#564056
`
`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
`
`statementsmayjeopardizethevalidityofthisde
`
`DecemberZ_‘,2005
`
`Barry D. Sears Ph.D.
`
`#564056
`
`4
`
`

`
`

`
`The Zone: AnEmpirical Study
`
`‘
`
`_
`
`2
`
`.
`
`.
`
`page 1‘ of-'3
`
`I T
`
`he Zone: Evidence of a Universal Phenomenon for- Athletes
`Across Sports
`JanetA Young and Michelle D Pain
`-Monash University, Melbourne, Australia
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Uniersalm 93 theS
`
`
`
`
`
`ABSTRACT
`
`. This paper examines the heightened states of consciousness during participation in sporttermed the zone
`or flow. Theoretical frameworks and studies of the phenomenon are described. The notion of a universal
`zone in sport is explored with a review of Young's (1999a) comparative analysis of flow experiences of
`professional tennis players with Jackson's (1993, 1996) elite athletes. Qualitative analyses of tenms
`players’ and elite athletes" narratives of flow support flow.thcory's posited structure of flow consisting of
`eight dimensions. No significant differences were found between tennis players and elite athletes on the
`
`

`
`universal Ph°n°m°D°D 301055 SPOITS, although intra-sport and inter-athlete differences are evident.
`
`yses suggest that the zone or flow state is a
`
`Introduction
`
`"the zone" (e.g., Claxkson,
`etc, the zone characterises a
`
`Explanations ofthezone or flow state canbe gleaned from two psychological theories, flowtheory
`(Csikszentnihalyi, 1975, 1990) and reversal theory (Apter, 1982, 1989). In brief, flow theory denotes
`
`Zone Sport Research
`
`Studies ofthe zone or "zone-like states" include those ofRavizza (1977, 1984), Loehr (1986),
`G field and Bennett (1984), Jackson (1992, 1993, 1995, 1996) and Young (1999a,- 1999b, 1999c, -
`
`httf://www.athleticin::io'h+ (‘hr-In/‘fnl 1 r....'w mi.
`
`

`
`- Page 3 of8 '
`
`moments during sport participation as salient, highly valued and extremely meaningful.
`-
`Loehr (1986) examined over 300 athletes’ "idealperformance state" by requesting athletes to
`describe their "finesthour" in sportparticipation. Twelve categories were identifiedto reflect the ideal
`
`e>Teriencesof31 Australianprofessionalfemaletennis-playerswithsimilarexperiencesreportedby
`
`i'}¢1:fi§://WWW.2lti'1l6tl.CiIlSiQ1'lt.cnm/\/nl1Tm.'2/E‘---1--5 '
`
`'-
`
`

`
`
`
`' The Zone: An Empirical Study
`
`_
`e, with an equal number from Australia
`and_New Zealarld, representmg sevensports [four athletes per sport], which includedtrack and field,
`ey). To provide the basisfor such a
`kson and asked tennis players to: (a) relate "
`
`
`
`-
`
`Tennis players
`(Young, 1999a)
`
`
`
`all raw data
`
`themes
`
`
`
`

`
`Pageis bf 3-
`
`84). To conduct such an analysis, Young (I‘999a)’ compared -
`Questionnaire items with Jackson's (1993) elite athletes’ from
`
`-
`Table 2.
`a
`oun 's 1
`élan Sco es and t-value for
`rs and] ckso 's
`la
`ennis
`01113; Sports og flpefiegce Quejgnnaire (Bg'vette, 1284) Items
`
`1 93 Elite AthletesF om
`
`
`
`
`
`
`
`Elite Athletes
`(Jaclcson, 1996)
`
`
`
`

`
`4.06
`4.52
`
`3.23
`
`4.58
`
`3.13
`
`E
`.
`
`4.87
`
`1.83
`
`2.71
`
`2.74
`
`3.38
`
`2.03
`
`2.90 ,
`
`'
`
`4.29
`
`4.50
`
`3.26
`
`3.70
`
`4.46
`
`6.57
`
`4.93
`
`2.00
`
`2.86
`
`3.46
`
`3.35
`
`.257
`
`4.86
`
`4.04
`
`The Zone: An Empirical Study
`
`
`
`
`
`Personal responsibility
`
`Overwhewlmed other senses, though
`"
`d"
`
`agévafl-m:1‘aso"$22.55*?;o§,F-';c”:T
`
`"1'1"UD1"U"UE.&,<,?g3:§8%'o§9,og§
`
`expression
`
`9-fig.
`E90 0.5
`
`"0
`
`5'E:O ‘'535
`
`E5,2!!!09»Hz,,,.«E.."‘.;oE5 2'»?E.(VE’.
`
`ace
`
`warn83%’2*-.2.22°‘°ooH‘-4U1”5..$0§‘g‘:3.“1-900:?‘55:3‘:OS.8gs2“‘to
`
`BCD.E.
`
`
`
`
`
`3.65‘
`i
`V 4 18-
`Free from outer restrictions
`Need to complete
`- _
`Absorption
`Intention
`
`4.68
`
`5.0
`
`4.86
`-
`.
`m»
`4.29
`
`0.93
`
`l\J\o-nunE-—-O\N\O
`
`\It\)>—-NO
`
`.
`
`-
`
`1.49
`
`
`
`
`*E
`
`4ox
`4.06
`5200'
`-
`.
`3-52 T-6-55*
`
`Pagefi of 3
`
`-ox9U:C-x- P
`
`-
`
`
`
`- a
`
`*
`
`O -D
`
`oo,_.U,\1o°.——tomAio4>8'—‘:"‘
`
`4*“*0‘"‘Gk:
`
`
`
`.
`otes.
`1iValues of 3.5 or more indicate endorsement.
`2!‘ *Sigm'ficant at an alpha level of .05 divided among 27 comparisons (Bonferroni correction for
`ultiple tests).
`'
`'
`
`With no significant differences between tenms players and elite athletes fiorn other sports on the
`Experience Questionnaire (Privette, 1984) items overall and the majority of individual items, and strong
`enldorsement from each group ofathletes for the key theoretical characteristics offlow (clear irmer
`pripcess and focus, fulfilment, intention, fim, high performance, and inninsic reward), Young (1999a)
`
`rnanners. Notwithstanding this notion of a common flo'w experience, Young proposed that the finding of
`si
`'ficant differences between tennis players and elite athletes on

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