TTAB
`Hinckley
`ATTORNEYS AT LAW
`
`Amy B. Spagnole, Esq.
`aspagnole@haslaw.com
`Direct (617) 378-4204
`
`---.
`TEL:~(l-1,7‘-.-343.9000
`FAx; 517_345_9o2o
`
`www.haslaw.com
`
`_
`April 11, 2006
`
`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.: 78/598,426
`Applicant: ZoneChefs LLC
`Mark: FROZONE
`
`Class: 39
`
`Dear Madam:
`
`The following documents are submitted in connection with U.S. Application Serial No.
`78/598,426, filed by ZoneChefs LLC, for the mark FROZONE in International Class 39 on the
`Principal Register:
`
`1. Opposer Barry D. Sears, Ph.D.’s Opposition to Applicant ZoneChefs, LLC’s Motion
`to Dismiss Pursuant to Fed. R. Civ. P. Rule 12(b)(6), with Exhibit 1 (Amended
`Notice of Opposition with Exhibits 1-9);
`
`2. Certificate of Mailing dated April 11, 2006;
`
`3. Certificate of Service dated April 11, 2006; and
`
`4. Return postcard.
`
`Si c rely
`
`A
`
`B. Spagnole
`
`Enclosures
`
`cc:
`
`Deborah L. Benson (w/o Encl.)
`Keith A_ we1tSch(w/End)
`
`5 77662
`
`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
`
`IIlllllIllllIllllllllll|||||l|l|||||l|||l||l|l||||
`
`O4-1 7-2006
`u.s. Patent & TMOfcITM Mail Rcpt or. #3:
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`BARRY D. SEARS Ph.D.,
`
`Opposer,
`
`V-
`
`ZONECHEFS, LLC,
`
`)
`)
`)
`)
`)
`Applicant.
`)
`
`Opposition No. 91169042
`
`Mark:
`Serial No.:
`Class:
`
`FROZONE
`78/598,426
`39
`
`OPPOSER BARRY D. SEARS PH.D.’S OPPOSITION TO APPLICANT ZONECHEFS
`LLC’S MOTION TO DISMISS PURSUANT TO FED. R. CIV P. RULE 12gb)g6g
`
`Opposer Barry D. Sears Ph.D. (“Opposer” or “Dr. Sears”), hereby submits this
`
`Opposition to Applicant ZoneChefs LLC’S (“Applicant” or “ZoneChefs”) Motion to Dismiss For
`
`Failure to State A Claim And, In The Alternative, Motion for a More Definite Statement
`
`(“Applicant’s Motion”). Although Applicant’s Motion is entitled “Motion to Dismiss for Failure
`
`to State A Claim,” this title is misleading in that Applicant’s Motion is n_o_t_ a motion to dismiss
`
`the entire Notice of Opposition but, rather, a partial motion to dismiss only with regard to
`
`certain of Opposer’s trademark applications as listed in “Table A” of the Applicant’s Motion,
`
`which applications were filed after the filing date of the subject application. Applicant claims
`
`that the Notice of Opposition must be dismissed as to these applications because such
`
`applications do not have priority over the application for FROZONE that is the subject of this
`
`opposition. Applicant’s partial motion to dismiss must be denied because Opposer has properly
`
`pled facts sufficient to allege that Opposer is the owner of a family of ZONE marks and, thus, is
`
`

`
`not required to allege that each and every member of the family has a priority date that precedes
`
`the filing date of the subject application of FROZONE.
`
`I.
`
`Applicant’s Motion for Partial Dismissal Should Be Denied Because Opposer Has
`Alle ed Sufficient Facts To State A Claim U on Which Relief Ma Be Grantedl
`
`A motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) is well taken only when the
`
`plaintiff has failed to state a claim upon which relief may be granted. Fed. R. Civ. P. l2(b)(6).
`
`Such motion to dismiss is a test solely of the legal sufficiency of the complaint. Libertflille
`
`Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 U.S.P.Q.2d 1994 (T.T.A.B. 1992). In order to
`
`withstand such a motion, a pleading need only allege such facts as would, if proved, establish
`
`that the plaintiff is entitled to the relief sought, that is, (1) the plaintiff has standing to maintain
`
`the proceeding, and (2) a valid ground exists for denying the registration sought therein. i
`
`Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 U.S.P.Q. 185 (C.C.P.A. 1982).
`
`In considering Applicant’s Motion the Board must accept as true the factual allegations of the
`
`Notice of Opposition [and] construe all reasonable inferences therefrom in favor of the Opposer.
`
`Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 U.S.P.Q.2d 1048 (T.T.A.B. 1992). In
`
`reviewing a Notice of Opposition in connection with a motion to dismiss, the Board construes
`
`the allegations therein liberally, as required by Fed. R. Civ. P. 8(1). §e_:§ TBMP 503.02.
`
`Viewing the Notice of Opposition in the light most favorable to Dr. Sears as the plaintiff,
`
`and resolving every doubt in his favor, it is abundantly clear that Dr. Sears has sufficiently
`
`asserted a claim upon which relief may be granted. Opposer has properly pled facts sufficient to
`
`allege that Opposer is the owner of a family of ZONE marks and, thus, is not required to allege,
`
`as Applicant contends, that each and every member of the family has a priority date that precedes
`
`the filing date of the subject application of FROZONE.
`
`#577130
`
`2
`
`

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`A party opposing registration of a trademark pursuant to Lanham Act's Section 13, 15
`
`U.S.C. 1063, must demonstrate both standing and a statutory ground which negates applicant's
`
`entitlement to registration, and, at pleading stage, opposer must allege facts in support of both.
`
`37 C.F.R. § 2.104(a) ("The opposition must set forth a short and plain statement showing why
`
`the opposer believes it would be damaged by the registration of the opposed mark and state the
`
`grounds for opposition"). Applicant's motion to dismiss does not dispute Opposer's standing to
`
`maintain the proceeding. The motion charges only that Opposer has not pled facts which, if
`
`proved, would establish grounds for refusing registration to Applicant.
`
`In particular, Applicant claims that Opposer has failed to establish valid grounds for
`
`denying the registration sought with regard to “many of the alleged “ZONE Marks” that have
`
`been pled by Opposer” because applications for such marks -- those specifically listed in “Table
`
`A” of Applicant’s Motion -- were filed subsequent to March 30, 2005, the filing date of the
`
`subject application of FROZONE, and Opposer has not filed a Statement of Use or Amendment
`
`to Allege Use alleging a date of first use that precedes March 30, 2005 in connection with such
`
`applications and, therefore, Applicant is entitled to partial dismissal of the Notice of Opposition
`
`on the grounds that the Opposer does not have priority with respect to these specific marks. Sg
`
`Applicant’s Motion to Dismiss for Failure to State a Claim, and, In the Alternative, Motion for a
`
`More Definite Statement, p. 7.
`
`Applicant’s argument is misplaced, as Opposer has sufficiently pleaded in his Notice of
`
`Opposition that he is the owner of a family of marks all containing the common distinctive
`
`element ZONE and that, prior to Applicant’s filing of the subject application for registration of
`
`FROZONE, many of the marks containing the claimed family feature ZONE were used and
`
`#577180
`
`3
`
`

`
`promoted together by Opposer in such a manner as to create public recognition with and an
`
`association of common origin predicated on the family feature. J&J Snack Foods Corp. v.
`
`McDona1d’s Co ., 18 U.S.P.Q.2d 1889 (C.A.F.C. 1991). Specifically, the Notice of Opposition
`
`provides:
`
`Since 1995, Opposer has used the trademark ZONE and composite marks, all
`2.
`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. (Notice of Opposition 1] 2)
`
`Since creation of his hormonal control/insulin balanced program, Dr. Sears has
`9.
`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”). (Notice of Opposition ‘[1 9)
`
`Dr. Sears is well known as the source of ZONE branded products and services.
`10.
`(Notice of Opposition 1] 10)
`
`In addition to his ZONE branded books, Dr. Sears and his ZONE branded health
`16.
`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. (Notice of Opposition 1[ 16)
`
`In promoting his ZONE branded health and nutrition products and services, Dr.
`17.
`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. (Notice of Opposition 1] 17)
`
`Additionally, each year since 1998, Dr. Sears has conducted a week long ZONE
`18.
`branded seminar aboard a cruise ship, providing a series of presentations and
`demonstrations on mastering his hormonal and insulin control program. (Notice of
`Opposition ll 18)
`
`#577180
`
`

`
`19.
`Dr. Sears is well and favorably known throughout the United States and has built
`up valuable goodwill and reputation in his ZONE Marks. (Notice of Opposition 1] 19)
`
`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. (Notice of Opposition 1]
`20)
`
`Opposer is the owner of approximately seventy (70) plus trademarks and service
`21.
`marks comprising or containing “ZONE” for a wide array of health and nutrition
`products and services. (Notice of Opposition 11 21)
`
`22.
`
`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:
`
`2,929,836
`March 1, 2005
`September 17, 2003
`April 23, 2002
`
`April 23, 2002
`Workbooks and printed guides about diet, health, and
`nutrition.
`
`Mark:
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`In Commerce:
`
`ZONE CUISINE
`
`2,997,305
`September 20, 2005
`March 1, 2004
`September 2003
`
`September 2003
`
`#577180
`
`

`
`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:
`
`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.
`
`(Notice of Opposition 1] 22)
`
`The term ZONE comprises the dominant portion of Opposer’s ZONE Marks,
`38.
`including Opposer’s ZONE, ZONE SKIN CARE, ZONERX and ZONE CUISINE
`marks. (Notice of Opposition ‘H 38)
`
`The foregoing allegations set forth in Paragraphs 2, 9-10,16-22 and 38 of the Notice of
`
`Opposition provide a valid basis under which Opposer may claim that his trademark ZONE and
`
`his other composite marks all containing ZONE, including the marks contained in Opposer’s
`
`U.S. Applications and Registrations -- referred to as the “Zone Marks” in the Notice of
`
`Opposition —- constitute a family of marks. Where, as here, an Opposer pleads a family of marks
`
`all containing a common distinctive element, it is not necessary for the Opposer to allege that Q!
`
`members of the family were in existence prior to entry in the field of another party with a mark
`
`containing the common family feature. American Standard, Inc. v. Scott & Fetzer Company,
`
`#577180
`
`5
`
`

`
`200 USPQ 457, 459 (TTAB 1978). The cloak of such family of marks will extend to, and cover,
`
`other members of the family that are born and come into existence at a future date, even though
`
`there may be intervening use.
`
`I_d_,
`
`Accordingly, Opposer is not required, as Applicant claims, to allege that each one of his
`
`trademarks comprising or containing the common distinctive family feature ZONE, including
`
`Dr. Sears’ registrations and applications, has a priority date that precedes any date of first use
`
`upon which Applicant can rely, actual or constructive. It is sufficient that Lug of the marks that
`
`comprise Dr. Sears’ family of ZONE marks were in use or registered before the filing of the
`
`subject application.
`
`I_d_. Opposer has clearly alleged, in paragraph 22 of the Notice of
`
`Opposition, that E (5) of his marks containing or comprising the family feature ZONE, all of
`
`which are included in the Opposer’s ZONE family of marks, were in use my to the filing date
`
`of the subject application for registration of ZONE CHEFS.
`
`Opposer also notes that since the filing of the Notice of Opposition on December 30,
`
`2006, Opposer has been granted registration for fig (5) additional marks all of which contain the
`
`common distinctive family feature ZONE and all of which claim a constructive and/or actual
`
`date of first use that precedes the filing date of the application of FROZONE which is the subject
`
`of this dispute. The details of these registrations are set forth in Paragraph 25 of the Amended
`
`Notice of Opposition filed contemporaneously herewith.
`
`Whether a claimed family of marks does in fact exist, is a questions of fact,
`
`Pharmaceutical Co. v. Salisbury Laboratories, 168 USPQ 250 (T.T.A.B. 1970), and as such, is
`
`not an appropriate question to be decided by theiBoard at this stage of the proceeding.
`
`#577180
`
`7
`
`

`
`Libert
`
`ille Saddle Sho Inc. v. E. Jeffries & Sons Ltd., 22 U.S.P.Q.2d 1994 (T.T.A.B. 1992) (a
`
`12(b)(6) motion to dismiss is a test solely of the legal sufficiency of the complaint).
`
`Based on the foregoing, Opposer has alleged sufficient facts in its Notice of Opposition
`
`to claim that it is the owner of a family of marks all containing ZONE as the dominant portion
`
`thereof and, thus, is not required to allege that all marks that comprise such family have a
`
`priority date that precedes the filing date of the subject application. Accordingly, Applicant’s
`
`motion for partial dismissal of the opposition for failure to state a claim upon which relief can be
`
`granted under Fed. R. Civ. P. 12(b)(6) with regard to Opposer’s marks listed in “Table A” of
`
`Applicant’s Motion must be denied.
`
`II.
`
`Applicant’s Motion for More Definite Statement Should Be Denied As Moot As
`Opposer Has Alleged A Family of Marks and Has Filed An Amended Complaint
`
`Applicant’s alternative Motion For A More Definite Statement should be denied as moot
`
`because, as set forth above, Opposer has alleged facts sufficient to claim a family of marks and,
`
`thus, is not required to list each mark that comprises the family. Notwithstanding the foregoing,
`
`Opposer submits contemporaneously herewith an Amended Notice of Opposition listing Dr.
`
`Sears’ applications, registrations and common law marks upon which he relies for purposes of
`
`this Opposition. A copy of this Amended Notice of Opposition is attached hereto at
`
`#577180
`
`3
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`

`
`III.
`
`Conclusion
`
`For all the foregoing reasons, Applicant’s Motion for Partial Dismissal of the Notice of
`
`Opposition For Failure To State A Claim Upon Which Relief May Be Given And In The
`
`Alternative A Motion For A More Definite Statement should be denied.
`
`Respectfully submitted,
`
`Barry D. Sears, Ph.D.
`
`
`
`Christopher H.M. Carter
`Amy B. Spagnole
`Hinckley, Allen & Snyder LLP
`28 State Street
`
`Boston, MA 02109
`(617) 345-9000
`(617) 345-9020 (fax)
`
`Dated: April 11, 2006
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 11th day of April, 2006, I served a true and accurate copy of
`the foregoing Opposition to Applicant’s Motion to Dismiss, via first class mail postage prepaid,
`upon Counsel for Applicant, Keith A. Weltsch, Esq., Scully, Scott, Murphy & Presser, 400
`Garden City Plaza, Garden City, New York 11530.
`
` Certificate Of Mailing
`
`Ihereby certiiy that this correspondence is being deposited with the
`United States Postal Service with sufficient postage as first~c|ass mall
`in an envelope addressed to the Commissionerf rTra emarks.
`PO Box 451 Alexandr‘ VA 2231451, n
`
`1''
`
`
`I
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`#577180
`
`9
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`
`
`

`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91169042
`
`Mark:
`Serial No.:
`Class:
`
`FROZONE
`78/598,426
`39
`
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
`)
`)
`
`BARRY D. SEARS Ph.D.,
`
`Opposer,
`
`V.
`
`ZONECHEFS, LLC,
`
`Applicant.
`
`AMENDED 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. 78/598,426 for the
`
`mark FROZONE for “food delivery services,” in International Class 39 on the Principal Register
`
`filed on March 30, 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:
`
`FACTS
`
`1.
`
`Opposer is the owner of the trademark ZONE and other marks incorporating
`
`ZONE for health and nutrition products and services.
`
`2.
`
`Opposer uses 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.
`
`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. S_e_e Declaration of Barry D. Sears (“Sears Decl.”) ‘H 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.
`
`_Igl_. at 1] 2.
`
`5.
`
`In 1995, Dr. Sears branded his writing, teaching and consulting on the benefits of
`
`an insulin balanced hormonal control diet with the term “ZONE.” 1; 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. E, 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 trademark and his composite marks
`
`incorporating ZONE is not used in its ordinary sense to mean “an area” -- e.g., “play zone”
`
`describing a specific area dedicated to playing.
`
`9.
`
`ZONE as used by Dr. Sears is fanciful.
`
`#577374
`
`2
`
`

`
`10.
`
`Dr. Sears is well known as the source of ZONE branded products and services.
`
`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 11 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. Li. at 1] 8.
`
`14.
`
`More than mei hard cover copies of Dr. Sears’ ZONE branded books have
`
`been sold in the United States alone. LCL at 119.
`
`15.
`
`Dr. Sears’ works have been translated into ;2_ languages and are sold in at least 50
`
`foreign countries. Id 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 Decl. at 11 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
`
`#577374
`
`3
`
`

`
`Montel Williams Show on April 1, 2004 and Live With Regis and Kelly on February 2, 2005. Q
`
`at {I 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. E, at 1] 13.
`
`19.
`
`Since at least as early as 1998, Dr. Sears has used the trademarks ZONE, ZONE
`
`DIET, ZONE CRUISE and ZONE CONSULTANTS in connection with education and
`
`counseling services in the fields of diet, health, and nutrition including, meal planning services,
`
`diet and nutrition counseling and providing information in the fields of diet, health and nutrition.
`
`20.
`
`Dr. Sears is well and favorably known throughout the United States and has built
`
`up valuable goodwill and reputation in the trademark ZONE. It; at 1] 14.
`
`21.
`
`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.
`
`22.
`
`Dr. Sears provided a wide array of health and nutrition products and services that
`
`are compliant with his hormonal control/insulin balanced 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 Family Marks”). L; at 1] 5.
`
`23.
`
`Dr. Sears’ trademark ZONE and the ZONE Family of Marks have been
`
`extensively advertised and promoted in connection with Dr. Sears’ goods and services together
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`#577374
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`4
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`

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`in such a manner as to establish the ZONE Family of Marks as a family of marks , with “ZONE”
`
`being the family surname.
`
`24.
`
`Opposer is the owner of approximately seventy (70) plus trademarks and service
`
`marks comprising or containing “ZONE” which are included in the ZONE Family of Marks for a
`
`wide array of health and nutrition products and services. 1; at ‘H 15.
`
`By way of example, Opposer owns the following United States Trademark
`
`Registrations comprising the ZONE Family of Marks:
`
`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:
`
`ZONE CUISINE
`
`Registration No.:
`
`2,968,210
`
`#577374
`
`

`
`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:
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`
`Date of First Use
`
`In Commerce:
`
`Goods:
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Services:
`
`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.
`
`OMEGAZONE
`
`2,863,212
`November 1, 2001
`
`July 13, 2004
`March 1, 2002
`
`March 1, 2002
`Nutritional food bars
`
`DR. SEARS ZONE APPROVED
`
`3,060,942
`September 18, 2003
`February 21, 2006
`Providing on-line magazines, newsletters, bulletins, in the
`fields of diet, health, and nutrition; providing on-line
`newsletters in the fields of diet,health and nutrition by e-
`mail; catering services; restaurant, cafe and snack bar
`services; computer services, namely, providing counseling
`services, information, and educational information in the
`fields of health and nutrition via the Internet; counseling
`services in the field of diet, health and nutrition, providing
`infonnation in the fields of diet, health, and nutrition via e-
`mail.
`
`Mark:
`
`DR. SEARS ZONE
`
`Registration No.:
`App. Date:
`Registration Date:
`
`3,059,308
`October 3, 2003
`February 14, 2006
`
`#577374
`
`

`
`Services:
`
`Providing on—line magazines, newsletters, bulletins, in the
`fields of diet, health, and nutrition; providing on-line
`newsletters in the fields of diet,health and nutrition by e-
`mail; catering services; restaurant, cafe and snack bar
`services; computer services, namely, providing counseling
`services, information, and educational information in the
`fields of health and nutrition via the Internet; counseling
`services in the field of diet, health and nutrition, providing
`information in the fields of diet, health, and nutrition via e-
`mail.
`
`Mark:
`
`DR. SEARS ZONE
`
`Registration No.:
`App. Date:
`Registration Date:
`Services:
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`
`Date of First Use
`
`In Commerce:
`
`Services:
`
`3,066,468
`
`January 24, 2005
`March 7, 2006
`Retail store, catalog and mail order services featuring
`vitamins and nutritional supplements, nutritional food bars,
`health foods, and publications in the field of diet, health
`and nutrition.
`
`ZONENET
`
`3,058,099
`June 14, 2004
`February 7, 2006
`March 2004
`
`March 2004
`Distributorship and retail services by direct solicitation by
`independent sales representatives, door to door retail
`merchandising, mail order services and online retail store
`services all featuring vitamins and nutritional supplements,
`nutritional food bars, health food, edible oils and fats, skin
`care preparations and cosmetics; business consultation in
`the nature of rendering assistance to others in connection
`with the establishment and operation of distributorships in
`the field of diet, health and nutrition
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`
`Date of First Use
`
`In Commerce:
`
`Goods:
`
`ZONE SHAKE
`
`3,038,265
`June 14, 2004
`January 3, 2006
`June 1, 2004
`
`June 1, 2004
`Meal replacement drink mix
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`

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`Collectively the “ZONE Registered Marks”.
`
`26.
`
`Dr. Sears owns the following U.S. trademark applications for his ZONE
`Family of Marks:
`
`GOODS AND/OR SERVICES
`-Breakfast cereals, in Class 30.
`-Breakfast cereals, in Class 30.
`
`
`
`-Non-medicated skin care preparations and cosmetics;
`non-medicated skin care preparations for animals,
`namely, shampoos, lotions, oils, ointments, creams,
`soaps and conditioners, in Class 3
`-Vitamins, nutritional supplements, nutritional food bars
`for use as a nutritional supplement or meal replacement
`and medicated cosmetics; feed supplements for pets, in
`Class 5
`
`
`
`TRADEMARK
`DR. SEARS ZONE
`
`APP. NO.
`78/783,017
`78/783,031
`
`APP. DATE
`12/30/05
`12/30/05
`
`76/553,546
`
`10/03/03
`
`-Electronic publications, namely, magazines, a series of
`books, newsletters and bulletins, all recorded on
`computer media, in the fields of diet, health and
`nutrition, in Class 9
`-Printed materials, namely newsletters, magazines and a
`series of books, all in the field of diet, health and
`nutrition, in Class 16
`-Prepared entrees consisting primarily of meat, fish
`poultry, or vegetable; edible oils and fats, nutritional
`food bars, namely, protein based nutrient-dense meal
`relacement and snack bars, in Class 29
`-Bakery goods, namely, brownies, snack cakes, cookies,
`biscuits, baking chocolate, cocoa, cocoa mixes, ice
`cream, frozen yogurt, sorbet, ice cream sandwiches,
`frozen confections, in Class 30
`-Non-medicated skin care preparations and cosmetics;
`non-medicated skin care preparations for animals,
`namely, shampoos, lotions, oils, ointments, creams,
`soaps, and conditioners, in Class 3
`-Vitarnins, nutritional supplements; medicated skin care
`preparations in the nature of medicated cosmetics;
`protein based, nutrient dense meal replacement bars;
`feed supplements for pets, in Class 5
`-Electronic publications, namely, magazines, a series of
`books, newsletters, and bulletins, all recorded on
`computer media, in the fields of diet, health and
`nutrition, in Class 9
`-Printed materials, namely newsletters, magazines and
`series of books, all in the field of diet, health and
`nutrition, in Class 16
`-Prepared entrees consisting primarily of meat, fish,
`poultry or vegetables; edible oils and fats; protein based,
`nutrient dense snack bars, in Class 29
`
`-Retail store, catalog and mail order services featuring
`vitamins and nutritional su lements, nutritional food
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`76/613,070
`
`09/20/O4
`
`78/302,038
`
`09/18/03
`
`76/628,970
`
`01/24/05
`
`
`
`DR. SEARS ZONE APPROVED
`
`DR. SEARS ZONE APPROVED
`
`#577374
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`bars, health foods, computer software and publications in
`
`the fields of diet, health and nutrition, in Class 35
`—Bakery goods, namely, brownies, snack cakes, cookies,
`biscuits, baking chocolate, cocoa, cocoa mixes, ice
`
`cream, frozen yogurt sorbet, ice cream sandwiches,
`
`frozen confections and izza, in Class 30
`-Hot and cold cereal, in Class 30
`
`
`
`
`
`
`
`
`
`Non-medicated skin care preparations and cosmetics;
`non-medicated skin care preparations for animals,
`namely, shampoos, lotions, oils, ointments, creams,
`soaps, and conditioners, in Class 3
`—Vitamins; nutritional supplements; protein based
`nutrient dense meal replacement bars; medicated skin
`care preparations in the nature of medicated cosmetics;
`feed supplements for pets; meal replacement drink mix,
`in Class 5
`
`
`
`
`
`-Electronic publications, namely, magazines, a series of
`books, newsletters, and bulletins, all recorded on
`computer media, in the fields of diet, health and
`nutrition, in Class 9
`-Printed materials, namely newsletters, magazines, and a
`series of books, all in the field of diet, health and
`nutrition, in Class 16
`—Prepared entrees consisting primarily of meat, fish
`poultry, or vegetable; edible oils and fats; nutritional
`food bars, namely, protein based nutrient dense snack
`bars, in Class 29
`-Ice cream; Bakery goods, namely, brownies, snack
`cakes, cookies, biscuits, in Class 30
`-Animal feed and animal foodstuffs; dog food and edible
`dog treats; cat food and edible cat treats, in Class 31
`-Educational services, namely, conducting workshops,
`seminars, and classes in the fields of health