TTAB
`
`Our Ref. No. 006021.MO01
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark: FLOSS’N GO
`
`Serial No.:
`
`78 / 654,927
`
`June 21, 2005
`Filed:
`Published: March 21, 2006
`
`Kenneth H. Nussen
`
`Staino, LLC
`
`Opposer,
`
`Applicant.
`
`Opposition No.
`
`Serial No.: 78/654,927
`
`€§/\-/$/¥/§/\7&/\_/L/Q
`
`NOTICE OF OPPOSITION
`
`Opposer, Kenneth H. Nussen (hereinafter "Opposer"), which has his principal place
`
`of business at 1112 Montana Avenue, Suite D, Santa Monica, California 90403 believes that
`
`he would be damaged by registration of the mark FLOSS’N GO shown in United States
`
`Trademark Application Serial No. 78/ 654,927, filed by Staino, LLC (hereinafter
`
`"Applicant") and published for opposition in the Official Gazette dated March 21, 2006, and
`
`therefore Opposer opposes such application for registration. The application as published
`
`in the Oflicial Gazette may be summarized as follows:
`
`In re trademark application:
`Filed:
`
`Applicant:
`
`78 / 654,927
`June/21, 2005
`
`stamo,LLc
`
`ImmmmmmmmmuuIumluunum
`
`us...a.....°.‘I.2,.‘?;$‘3.3.i...o..
`
`0O6021.MO01
`
`1
`
`
`
`Our Ref. No. 006021.MO01
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark: FLOSS’N GO
`
`Serial No.:
`
`78 / 654,927
`
`June 21, 2005
`Filed:
`Published: March 21, 2006
`
`Kenneth H. Nussen
`
`Staino, LLC
`
`Opposer,
`
`Applicant.
`
`Opposition No.
`
`Serial No.: 78/654,927
`
`€§/\-/$/¥/§/\7&/\_/L/Q
`
`NOTICE OF OPPOSITION
`
`Opposer, Kenneth H. Nussen (hereinafter "Opposer"), which has his principal place
`
`of business at 1112 Montana Avenue, Suite D, Santa Monica, California 90403 believes that
`
`he would be damaged by registration of the mark FLOSS’N GO shown in United States
`
`Trademark Application Serial No. 78/ 654,927, filed by Staino, LLC (hereinafter
`
`"Applicant") and published for opposition in the Official Gazette dated March 21, 2006, and
`
`therefore Opposer opposes such application for registration. The application as published
`
`in the Oflicial Gazette may be summarized as follows:
`
`In re trademark application:
`Filed:
`
`Applicant:
`
`78 / 654,927
`June/21, 2005
`
`stamo,LLc
`
`ImmmmmmmmmuuIumluunum
`
`us...a.....°.‘I.2,.‘?;$‘3.3.i...o..
`
`0O6021.MO01
`
`1
`
`
`
`For:
`
`Dental Floss in International Class 21
`
`International Class:
`
`21
`
`Published:
`
`March 21, 2006
`
`The grounds for this opposition are as follows:
`
`1.
`
`Opposer is in the business of developing and distributing a wide Variety of
`
`oral hygiene products including dental floss.
`
`2.
`
`Upon information and belief, Applicant is a limited liability company
`
`organized under the laws of New York.
`
`3.
`
`Applicant seeks to register the mark FLOSS’N GO (hereinafter ”Applicant's
`
`Mark”) for "dental floss" (hereinafter ”Applicant's Goods").
`
`4.
`
`Commencing as early as April 18, 1996, well prior to the June 21, 2005 filing
`
`date in the Applicant's application, Opposer used and has continued to use FLOSS :3: GO
`
`as a trademark to promote its oral hygiene products.
`
`5.
`
`Opposer was the owner of U.S. Registration No. 2,045,049 for the mark
`
`FLOSS & GO for use with ”indiVidually wrapped 18" strand of dental floss” (attached
`
`hereto as Exhibit A and incorporated herein by reference).
`
`6.
`
`Opposer is the owner of Serial No. 78/817,898 for the mark FLOSS & GO for
`
`use with ”dental floss” (attached hereto as Exhibit B and incorporated herein by reference).
`
`006021 .MOO1
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`2
`
`
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`Q}
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`7.
`
`Upon information and belief, Applicant filed the application for registration
`
`of Applicant's Mark on June 21, 2005, based on an intent to use, and, as of the date of this
`
`Notice of Opposition, has not filed an Amendment to Allege Use, therefore priority of use
`
`is resolved in Opposer's favor.
`
`8.
`
`Opposer has offered its oral hygiene products throughout the United States
`
`under the mark FLOSS & GO for the last decade. Opposer is a premier developer and
`
`distributor of oral hygiene products and markets said products to a wide Variety of
`
`distributors and retailers. As a result of its strong presence in the marketplace, Opposer
`
`has developed valuable goodwill in the mark FLOSS 8: GO.
`
`9.
`
`Opposer has developed extensive common-law trademark rights in the mark
`
`FLOSS 8: G0.
`
`10.
`
`By Virtue of its efforts, and the expenditure of considerable sums for
`
`advertising and other forms of promotion, and by virtue of the consistent excellence of his
`
`products, Opposer has earned an extremely Valuable reputation for the mark FLOSS &
`
`G0.
`
`11. When applied to the Applicant's Goods, Applicant's Mark is the phonetic
`
`equivalent to the Opposer's mark FLOSS & GO, and as such is likely to be confused
`
`therewith and mistaken therefor.
`
`006021 .M001
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`3
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`
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`12.
`
`Due to the practically identical appearance of the Applicant's Mark and
`
`Opposer's mark, and due further to the identical nature nature of the goods intended to be
`
`offered under Applicant's Mark and presently offered under Opposer's mark, and the
`
`consumer recognition of Opposer's mark, it is alleged that Applicant's mark so resembles
`
`Opposer's mark, as to be likely to cause confusion, or to cause mistake, or to deceive.
`
`13.
`
`If Applicant is permitted to use and register Applicant's Mark for Applicant's
`
`Goods, confusion, deception or mistake in the trade would likely occur, thereby causing
`
`damage and injury to Opposer. Persons familiar with Opposer's mark would be likely to
`
`believe that Applicant's Goods are sponsored by or associated therewith.
`
`14.
`
`Furthermore, any defect, objection or fault found with Applicant's Goods
`
`marketed under its mark would necessarily reflect upon and seriously injure the
`
`reputation which Opposer has established for high—quality products.
`
`15.
`
`Applicant's U.S. Application for registration of the mark FLOSS’N G0 is
`
`practically identical to Opposer's mark as to be likely when used in connection with
`
`Applicant's goods to cause or result in dilution of Opposer's famous trademark as defined
`
`in Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(d).
`
`006021 .M0O1
`
`4
`
`
`
`WHEREFORE, the Opposer prays that the application Serial No. 78/ 654,927 be
`
`rejected, and that the mark sought for the Goods therein specified in Class 21 be denied
`
`and refused.
`
`Opposer herewith submits this Notice of Opposition in duplicate along with the
`
`requisite filing fee in the amount of $300. Please charge anyfees or credit any overpayment to
`
`our Deposit Account No. 02-2666.
`
`Respectfully submitted,
`
`BLAKELY SOKOLOFF TAYLOR 8: ZAFMAN LLP
`
`Dated: April 14, 2006
`
`Counsel for Opposer
`
`CERTIFICATE OF MAILING:
`
`I hereby certify that this correspondence is being
`deposited with the United States Postal Service as first
`class mail in an envelope ad essed to: Mail Stop TTAB —
`arks, P.O. Box 1451,
`FEE, Commissioner for Trad
`Alexandr1a,V1r
`1a 22313-
`W on April 14, 2006.
`'
`'
`'
`'
`
`
`Marie Monsod 0
`April 14, 2006
`
`
`
`
`12400 Wilshire Boulevard
`Seventh Floor
`L05 Angelesl California 9002501026
`(310) 207-3800
`
`
`
`006021 .M0O1
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Executed on April 14, 2006, at Los Angeles, California.
`
`Marie Monsod
`
`006021 .M001
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document entitled:
`
`was served on counsel for Applicant by first class mail, postage prepaid, in a sealed
`
`enveloped addressed as follows:
`
`James E. Shlesinger
`Shlesinger, Arkwright 8: Garvey LLP
`1420 King St., Suite 600
`Alexandria, VA 22314-2750
`
`
`
`EXHIBIT A
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 1 of2
`
`United States Patent and Trademark Office
`
` Home I Site Index I Search I FAQ I Glossary I Guides I Contacts I esusiness I eBiz alerts I NewsI Help
`
`Trademarks > Trademark Electronic Search System(Tess)
`
`TESS was last updated on Fri Apr 14 04:16:45 EDT 2006
`
`Please Iogout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
`I*
`Browser to return to TESS)
`
`Typed Drawing
`
`Word Mark
`
`FLOSS & GO
`
`(Use the "Back" button of the Internet
`
`Goods and
`Services
`
`(CANCELLED) IC 010. US 026 039 044. G & S: individually wrapped 18" strand of dental floss.
`FIRST USE: 19960418. FIRST USE IN COMMERCE: 19960418
`
`Ma” °"““”"9
`Code
`
`Design Search
`Code
`
`(1) TYPED DRAWING
`
`Serial Number
`
`74727480
`
`Filing Date
`
`September 11, 1995
`
`Current Filing
`Basis
`
`Original Filing
`Basis
`
`P"'°"5'.“:’°' I"
`Opposition
`
`Registration
`Number
`
`1A
`
`1B
`
`May 21, 1996
`
`2045049
`
`Registration Date March 11, 1997
`Owner
`(REGISTRANT) Nussen, Kenneth H. INDIVIDUAL UNITED STATES 5304 W. Century Blvd.
`Los Angeles CALIFORNIA 90045
`
`Type of Mark
`
`TRADEMARK
`
`PRINCIPAL
`Register
`LiveIDead Indicator DEAD
`
`Cancellation Date December 13, 2003
`
`"rrsssHDE Ntzwussa
`
`nusr-‘mm Haw SE-FIR Tm‘IIl~M_“mNM4MIIWmAlM‘Il
`
`I.HOME I SITE INDEXI SEARCH I eBUSlNESS I HELP I PRIVACY POLICY
`
`http ://tess2 .uspto. gov/bin/showfie1d?f=doc&state=rtdquu.4. 1
`
`4/14/2006
`
`
`
`EXHIBIT B
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 1 of 2
`
`United States Patent and Trademark Office
`
` Home I Site Index I Search I FAQ I Glossary I Guides I Contacts I eeusiness I eBiz alerts I News I Help
`
`Trademarks > Trademark Electronic Search System(Tess)
`
`TESS was last updated on Fri Apr 14 04:16:45 EDT 2006
`
`
`
`Na*wUs2.a:
`l‘»«‘-;£:;:r;*r Flam"
`
`Smucmnm FREEFQRM SEARCH OG
`Last Doc
`
`}-{EL}?
`
`g:m§N_§m-
`
`
`
`Please Iogout when you are done to release system resources allocated for you.
`
`I-istAt=
`
` 10Rt°rec°rd=
`
`Record 1 out of 3
`
`Browser to return to TESS)
`
`I ( Use the "Back" button of the Internet
`
`FLOSS & GO
`
`Word Mark
`Goods and Services
`
`FLOSS & GO
`IC 021. US 002 013 023 029 O30 033 040 050. G & S: Dental floss. FIRST USE: 19960418.
`FIRST USE IN COMMERCE: 19960418
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`
`(4) STANDARD CHARACTER MARK
`
`Design Search Code
`Serial Number
`
`78817898
`
`Filing Date
`Current Filing Basis
`
`February 17, 2006
`1A
`
`Original Filing Basis
`Owner
`
`1A
`(APPLICANT) Nussen, Kenneth INDIVIDUAL UNITED STATES Suite D 1112 Montana
`Avenue Santa Monica CALIFORNIA 90403
`
`Attorney of Record
`Type of Mark
`Register
`LiveIDead lndi
`
`
`Dax Alvarez
`TRADEMARK
`PRINCIPAL
`LIVE
`
`.1 I......
`Imexr
`
`....
`
`....
`
`.......................................................
`
`........
`
`....................W.
`
`4/ 14/2006
`http://tess2 .uspto.gov/bin/showfie1d?f=doc&state=n9htdg.2. 1
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