Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA95314
`ESTTA Tracking number:
`08/18/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Party who filed
`Extension of time
`to oppose
`Relationship to
`party who filed
`Extension of time
`to oppose
`
`Sinclair Finance Company
`08/20/2006
`
`550 East South Temple P.O. Box 30825
`Salt Lake City, UT 84130-0825
`UNITED STATES
`
`Sinclair Oil Corporation
`
`Sinclair Oil Corporation has assigned all its trademark rights to Sinclair Finance
`Company.
`
`Attorney
`information
`
`John C. Stringham
`WORKMAN NYDEGGER
`1000 Eagle Gate Tower 60 East South Temple
`Salt Lake City, UT 84111
`UNITED STATES
`jstringham@wnlaw.com Phone:8015339800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79010396
`08/18/2006
`
`0848026
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`TAHEEBO JAPAN KABUSHIKI KAISHA
`2-12, Kawaramachi 1-chome Chuo-ku,; Osaka-shi; Osaka 541-0048
`
`02/21/2006
`08/20/2006
`
`08/23/2004
`
`JAPAN
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and sevices in the class are opposed, namely: Pharmaceutical preparations, namely,
`pharmaceutical preparations for the prevention of blood platelet cohesion; anti-cancer preparations;
`tumor suppressing agents; cancer prophylactics; antipyretics; analgesics; antipruritics; anti-protozoan
`preparations; astringents; pharmaceutical styptic preparations; anti-inflammatory preparations;
`antitussive compounds; expectorants; preparations for treating colds; pharmaceutical anti-allergic
`preparations and substances; skin emollients for medical purposes; dermatological preparations;
`medicated hair care preparations; ophthalmic preparations; cardio-tonics; diuretics; antidotes; anti-
`
`

`
`hypertensive medications; hemostatic pharmaceutical preparations; anti-coagulants; anti-diarrhea
`medications; intestinal treatment preparations; digestants; evacuants; purgatives; antacids; enema
`preparations; cholagogues; pharmaceutical preparations for the treatment of rheumatism, gout,
`diabetes, infectious dermatosis, cutaneous ulcer, peptic ulcer, hyperlipemia, hemorrhoids,
`Parkinson's diseases, ischemic heart disease, kidney disease, circulatory disorders, urinary
`disorders, genital organ disorders; all purpose disinfectant anti-microbial preparations; agents against
`anti-fast bacteria; fungistats; anti-parasitic preparations; biological preparations for medical purposes;
`reagents for medical purposes; medical diagnostic reagents
`Class 029.
`All goods and sevices in the class are opposed, namely: Tofu, namely, bean curds; natto, namely,
`steamed and fermented soybeans; processed soybeans; processed eggs; soup preparations
`Class 030.
`All goods and sevices in the class are opposed, namely: Tea; coffee; cocoa; coffee substitutes; tea-
`based beverages with fruit flavoring; coffee-based beverages; cocoa-based beverages with milk;
`bread; cakes; pastries; confectionery, namely crystallized sugar pieces, jellies, chocolates, candy,
`nougat, chewing gum, gum drops, chips, caramel and cookies; mixes for ice cream; powders for ice
`cream; sherbet mixes; powders for sherbets; dietary and nutritional supplements in the form of
`powder, granule, capsule or tablet, main ingredient of which is bark of Tabebuia trees; curry mixes;
`stew mixes, namely, thickening agents for use in cooking stews; roux, namely, flour and fat cooked
`together and used as a thickener in the form of powder, granule, paste or cake for making curry;
`roux, namely, flour and fat cooked together and used as a thickener in the form of powder, granule,
`paste or cake for making stew
`Class 032.
`All goods and sevices in the class are opposed, namely: Beer; soft drinks; fruit juice; whey
`beverages; vegetable juice; powders used in the preparation of non-alcoholic beverages, namely,
`soft drinks
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Other
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`Opposer will be damaged if Applicant is granted
`registration, Opposer's reputation may be
`damaged. Applicant will receive a presumption of
`exclusive right in mark sought to be registered.
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`929749
`
`02/22/1972
`
`Application Date
`
`10/28/1968
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class U100 (International Class 035, 036, 037, 038, 039, 040, 041, 042). First
`use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`[ RESTAURANT, HOTEL, LODGING AND NIGHT CLUB SERVICES ]
`Class U101 (International Class 035). First use: First Use: 1964/12/11 First Use
`In Commerce: 1964/12/11
`SALE, LEASING AND MANAGEMENT OF REAL ESTATE; AND RETAIL
`APPAREL AND GIFT STORE SERVICES
`Class U107 (International Class 041). First use: First Use: 1964/12/11 First Use
`In Commerce: 1964/12/11
`
`

`
`PROVIDING RECREATIONAL AND ENTERTAINMENT SERVICES AND
`FACILITIES THEREFOR-NAMELY, PROVIDING INSTRUCTION IN VARIOUS
`OUTDOOR SPORTS ACTIVITIES, SUCH AS SKIING, TENNIS AND GOLF;
`ARRANGEMENT AND ORGANIZATION OF SPORTING CONTESTS AND
`EXHIBITIONS-NAMELY, SKI RACES
`
`U.S. Registration
`No.
`Registration Date
`
`929750
`
`02/22/1972
`
`Application Date
`
`11/12/1968
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SUN VALLEY
`
`NONE
`
`Class U100 (International Class 042). First use: First Use: 1964/12/11 First Use
`In Commerce: 1964/12/11
`RESTAURANT, HOTEL, LODGING, AND NIGHT CLUB SERVICES
`Class U101 (International Class 036, 042). First use: First Use: 1964/12/11 First
`Use In Commerce: 1964/12/11
`SALE, LEASING AND MANAGEMENT OF REAL ESTATE; RETAIL APPAREL
`AND GIFT STORE SERVICES
`Class U107 (International Class 041). First use: First Use: 1964/12/11 First Use
`In Commerce: 1964/12/11
`PROVIDING RECREATIONAL AND ENTERTAINMENT SERVICES AND
`FACILITIES THEREFOR-NAMELY, PROVIDING INSTRUCTION IN VARIOUS
`OUTDOOR SPORTS ACTIVITIES, SUCH AS SKIING, TENNIS AND GOLF;
`ARRANGEMENT AND ORGANIZATION OF SPORTING CONTESTS AND
`EXHIBITIONS-NAMELY, SKI RACES
`
`U.S. Registration
`No.
`Registration Date
`
`2897067
`
`10/26/2004
`
`Application Date
`
`08/26/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SUN VALLEY
`
`NONE
`
`Class 035. First use: First Use: 1961/12/01 First Use In Commerce: 1961/12/01
`Retail gift store services; retail grocery food and delicatessen services
`Class 036. First use: First Use: 1961/12/01 First Use In Commerce: 1961/12/01
`Real estate agency services, namely leasing of real property and real estate
`management of condominiums; leasing of shopping mall space
`Class 039. First use: First Use: 1961/12/01 First Use In Commerce: 1961/12/01
`Transportation services, namely transportation of passengers by van or bus;
`travel agency services, namely making reservations and bookings for
`transportation; rental of bicycles
`Class 041. First use: First Use: 1961/12/01 First Use In Commerce: 1961/12/01
`Providing recreational, sports and entertainment facilities for skiing,
`snowboarding, snowshoeing, golfing, tennis, ice skating, horseback riding,
`mountain biking, trap shooting; providing instruction in various outdoor sports,
`namely, skiing, snowboarding, snowshoeing, golfing, tennis, ice skating,
`swimming, trap shooting; arranging and conducting sporting contests and
`
`

`
`exhibitions, namely, ski races and exhibitions, ice skating shows and exhibitions;
`entertainment services, namely, providing facilities for hayrides, sleigh rides,
`movie theaters, ice rinks, bowling alleys, swimming pools and playground
`facilities; rental of sporting equipment, namely, skis, snowboards, snowshoes,
`ice skates, tennis rackets, golf clubs and related accessories; ski resorts; night
`clubs
`Class 043. First use: First Use: 1961/12/01 First Use In Commerce: 1961/12/01
`Resort hotel and resort lodging services; restaurant services; hotel and lodging
`services; banquet and catering services and facilities; travel agency services,
`namely making reservations and bookings for temporary lodging
`
`U.S. Registration
`No.
`Registration Date
`
`2978288
`
`07/26/2005
`
`Application Date
`
`08/26/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`Class 006. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Goods made of metal, namely figurines of common metal, jewelry boxes of
`metal, metal bells, metal charms for identifying drinks, metal decorative boxes,
`baskets of common metal, metal holiday ornaments - not tree ornaments, metal
`identification bracelets of non-precious metal, metal key chains, metal key fobs,
`metal key rings, statues and statuettes of non-precious metal, non-luminous and
`non-mechanical metal signs
`Class 009. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Decorative magnets
`Class 014. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Jewelry and ornamental pins
`Class 016. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Posters, postcards, note pads, stationery, pens, magazines in the field of resort
`services and telephone directories
`Class 020. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Non-metal key chains, key rings, key tags and plastic banners
`Class 021. First use: First Use: 2000/00/00 First Use In Commerce: 2000/00/00
`Cups, mugs and glassware, namely beverage glasses and plates
`Class 025. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Clothing, namely, t-shirts, shirts, golf shirts, polo shirts, hats, baseball caps, golf
`caps, sweatshirts, sweaters, coats, vests, gloves, scarves and ties
`Class 026. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Embroidered and ornamental cloth patches
`Class 028. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Sporting goods, namely, golf balls, golf ball markers, golf tees, head covers for
`golf clubs, manually operated exercise equipment
`Class 035. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Retail gift store services; retail grocery food and delicatessen services
`Class 036. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Real estate agency services, namely leasing of real property and real estate
`management of condominiums; leasing of shopping mall space
`Class 039. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`
`

`
`Transportation services, namely transportation of passengers by van or bus;
`travel agency services, namely making reservations and booking for
`transportation; rental of bicycles
`Class 041. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Providing recreational, sports and entertainment facilities for skiing,
`snowboarding, snowshoeing, golfing, tennis, ice skating, horseback riding,
`mountain biking, trap shooting; providing instruction in various outdoor sports,
`namely skiing, snowboarding, snowshoeing, golfing, tennis, ice skating,
`swimming, trap shooting; arranging and conducting sporting contests and
`exhibitions, namely ski races and exhibitions, ice skating shows and exhibitions;
`entertainment services, namely providing facilities for hayrides, sleigh rides,
`movie theaters, ice rinks, bowling alleys, swimming pools and playground
`facilities; rental of sporting equipment, namely skis, snowboards, snowshoes, ice
`skates, tennis rackets, golf clubs and related accessories; ski resorts; night
`clubs
`Class 043. First use: First Use: 1964/12/11 First Use In Commerce: 1964/12/11
`Resort hotel and resort logding services; restaurant services; hotel and lodging
`services; banquet and catering services and facilities; travel agency services,
`namely making reservations and bookings for temporary lodging
`
`Attachments
`
`72310611#TMSN.gif ( 1 page )( bytes )
`72311732#TMSN.gif ( 1 page )( bytes )
`78157978#TMSN.jpeg ( 1 page )( bytes )
`78157988#TMSN.jpeg ( 1 page )( bytes )
`15027.291 Notice of Opposition.pdf ( 9 pages )(367323 bytes )
`
`Signature
`Name
`Date
`
`/John C. Stringham 40,831/
`John C. Stringham
`08/18/2006
`
`

`
`TRADEMARK OPPOSITION
`File No. 15027.291
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 79/010396
`Published in the Official Gazette of February 21, 2006, Int'l Classes 5, 29, 30, and 32
`
`Filed: August 23, 2004
`Mark: SUN DESIGN
`
`
`SINCLAIR FINANCE COMPANY
`
`Opposer,
`
`V.
`TAHEEBO JAPAN KABUSKIKI
`
`KAISHA CORPORATION
`
`Applicant.
`
`)
`
`3
`3
`3
`
`3
`
`NOTICE OF OPPOSITION
`
`Opposition No.:
`
`
`
`NOTICE OF OPPOSITION
`
`SINCLAIR FINANCE COMPANY, ("SINCLAIR") a Wyoming corporation, believes
`
`that it will be damaged by registration ofthe mark shown in Application Serial No. 79/01 0396
`
`in International Classes 5, 29, 30 and 32 and hereby opposes the same. The grounds for the
`
`opposition are as follows:
`
`1.
`
`Taheebo Japan Kabushiki Kaisha Corporation, a Japanese corporation, whose
`
`address is 2-12, Kawaramachi
`
`l—chome Chuo—ku; Osaka-shi; Osaka 541-0048, Japan
`
`("Applicant"), seeks to register its SUN DESIGN as a trademark to be used in connection with
`
`" pharmaceutical preparations, namely, pharmaceutical preparations for the prevention of 6
`
`blood platelet cohesion; anti-cancer preparations;
`
`tumor suppressing agents; cancer
`
`

`
`prophylactics; antipyretics; analgesics; antipruritics; anti-protozoan preparations; astringents;
`
`pharmaceutical styptic preparations; anti-inflammatory preparations; antitussive compounds;
`
`expectorants; preparations for treating colds; pharmaceutical anti-allergic preparations and
`
`substances; skin emollients for medical purposes; dermatological preparations; medicated hair
`
`care preparations; ophthalmic preparations; cardio-tonics; diuretics; antidotes; anti-
`
`hypertensive medications; hemostatic pharmaceutical preparations; anti—coagulants; anti-
`
`diarrhea medications; intestinal treatment preparations; digestants; evacuants; purgatives;
`
`antacids; enema preparations; cholagogues; pharmaceutical preparations for the treatment of
`
`rheumatism, gout, diabetes, infectious derrnatosis, cutaneous ulcer, peptic ulcer, hyperlipemia,
`
`hemorrhoids, Parkinson's diseases,
`
`ischemic heart disease, kidney disease, circulatory
`
`disorders, urinary disorders, genital organ disorders; all purpose disinfectant anti-microbial
`
`preparations; agents against anti-fast bacteria; fungistats; anti-parasitic preparations; biological
`
`preparations for medical purposes; reagents for medical purposes; medical diagnostic
`
`reagents” in International Class 5; “Tofu, namely, bean curds; natto, namely, steamed and
`
`fermented soybeans; processed soybeans; processed eggs; soup preparations” in International
`
`Class 29; “tea; coffee; cocoa; coffee substitutes; tea-based beverages with fruit flavoring;
`
`coffee—based beverages;
`
`cocoa—based beverages with milk; bread; cakes; pastries;
`
`confectionery, namely crystallized sugar pieces, jellies, chocolates, candy, nougat, chewing
`
`gum, gum drops, chips, caramel and cookies; mixes for ice cream; powders for ice cream;
`
`sherbet mixes; powders for sherbets; dietary and nutritional supplements in the form of
`
`powder, granule, capsule or tablet, main ingredient of which is bark of Tabebuia trees; curry
`
`mixes; stew mixes, namely, thickening agents for use in cooking stews; roux, namely, flour
`
`and fat cooked together and used as a thickener in the form of powder, granule, paste or cake
`
`

`
`for making curry; roux, namely, flour and fat cooked together and used as a thickener in the
`
`form of powder, granule, paste or cake for making stew” in International Class 30; and “beer;
`
`soft drinks; fruit juice; whey beverages; vegetable juice; powders used in the preparation of
`
`non—alcoholic beverages, namely, soft drinks” in International Class 32, as evidenced by the
`
`publication of such mark in the Official Gazette of the February 21, 2006, issue.
`
`2.
`
`Applicant filed an application for registration under Trademark Act Section
`
`66(a), on August 23, 2004, based on International Registration No. 848026.
`
`3.
`
`Since at least 1964 and long prior to the effective filing date of the subject
`
`application, Opposer has been engaged in providing and offering a wide variety of goods and
`
`services, including, in relevant part, “restaurant services, retail food and delicatessen services,
`
`banquet and catering services,” in association with registered, pending, and common law
`
`marks of Opposer. The goods and services offered by Opposer in association with such
`
`registered, pending and common law marks are such that the consuming public will likely be
`
`confused as to the source of the goods offered by the Applicant.
`
`4.
`
`Opposer is the owner ofthe following relevant trademark registrations which
`
`have been duly and legally issued by the United States Patent and Trademark Office:
`
`REGISTRATIONS
`
`11
`
` Goods and Services
` Sale, leasing and management of real estate; and
`
`retail apparel and gift store services
`
`(International Class 35);
`
`
`
`929,749
`
`“SUN DESIGN”
`
`Providing recreational and entertainment services
`and facilities therefore, namely providing
`
`instruction in various outdoor sports activities,
`
`such as skiing, tennis and golf; arrangement and
`
`organization of sporting contests and exhibitions,
`
`namely ski races (International Class 41).
`
`
`

`
`
`
`
`“SUN VALLEY & SUN
`929,750
`DESIG ”
`Sale, leasing and management of real estate;
`
`retail apparel and gift store services
`
`(International Classes 36, 42);
`
`Restaurant, hotel, lodging, and night club
`services (International Class 42);
`
`
`
`
`
`
`
`
`
`
`
`
`Providing recreational and entertainment services
`
`and facilities therefore, namely proving
`instruction in various outdoor sports activities,
`fiutfvalleg
`
`such as skiing, tennis and golf; arrangement and
`organization of sporting contests and exhibitions,
`
`namely ski races (International Class 41).
`
`
`
`
`
`
`2,897,067
`
`“SUN VALLEY & RISING
`
`SUN DESIGN”
`
`
`
`Gift store services; retail store services; retail
`food and delicatessen services (International
`Class 35); Real estate agency services, namely
`leasing of real property and condominium
`management; leasing of shopping mall space
`(International Class 36); Transportation services,
`
`namely transportation of passengers by van or
`
`bus (International Class 39); Providing
`
`recreational and entertainment services and
`
`facilities for skiing, snowboarding, snowshoeing,
`
`golfing, tennis, ice skating, horseback riding,
`
`mountain biking; trap shooting. Providing
`
`instruction in various outdoor sports, namely,
`
`skiing, snowboarding, snowshoeing, golfing,
`
`tennis, ice skating; swimming, trap shooting.
`
` Arrangement and organization of sporting
`
`contests and exhibitions, namely ski races and
`
`exhibitions, ice skating shows and exhibitions.
`Entertainment services in the nature of hayrides
`
`and sleigh rides. Movie theaters, ice rink,
`
`bowling alley, swimming pool, and playground
`
`facilities and services. Rental of sporting
`
`equipment, namely skis, snowboards, snowshoes,
`
`ice skates, bicycles, tennis rackets, golf clubs and
`
`related accessories (International Class 41);
`
`Resort services; restaurant services; hotel and
`
`lodging services; night club services; banquet
`
`and catering services and facilities; travel agency
`
`services, namely making reservations and
`
`booking for temporary lodging and
`
`transportation (International Class 43).
`
`
`
`

`
`
`
`“SUN DESIGN”
` Goods made of metal (International Class 6);
`2,978,288
`Decorative magnets (International Class 9);
`Jewelry and pins (International Class 14);
`Posters, postcards, note pads, stationery, pens,
`magazines and telephone directories
`
`(International Class 16); Non—metal key chains,
`
`key rings, key tags and plastic banners
`
`(International Class 20); Cups, mugs and
`
`glassware, namely glasses and plates
`
`(International Class 21); Clothing, namely t-
`
`shirts, shirts, golf shirts, polo shirts, hats,
`
`baseball caps, golf caps, sweatshirts, sweaters,
`
`coats, vests, gloves, scarves and ties
`
`(International Class 25); Embroidered and
`
`ornamental cloth patches (International Class
`
`26); Sporting goods, golf balls, golf ball makers,
`
`golf tees, golf towels, head covers for golf clubs,
`
`exercise equipment (International Class 28); Gift
`
`store services; retail store services; retail food
`
`and delicatessen services (International Class
`
`35); Real estate agency services, namely leasing
`
`of real property and condominium management;
`
`leasing of shopping mall space (International
`
`Class 36); Transportation services, namely
`
`transportation of passengers by van or bus
`
`(International Class 39); Providing recreational
`
`and entertainment services and facilities for
`
`skiing, snowboarding, snowshoeing, golfing,
`
`tennis, ice skating, horseback riding, mountain
`
`biking; trap shooting. Providing instruction in
`
`various outdoor sports, namely, skiing,
`
`snowboarding, snowshoeing, golfing, tennis, ice
`
`skating; swimming, trap shooting. Arrangement
`
`and organization of sporting contests and
`
`exhibitions, namely ski races and exhibitions, ice
`
`skating shows and exhibitions. Entertainment
`
`services in the nature of hayrides and sleigh
`
`rides. Movie theaters, ice rink, bowling alley,
`
`swimming pool, and playground facilities and
`
`services. Rental of sporting equipment, namely
`
`skis, snowboards, snowshoes, ice skates,
`
`bicycles, tennis rackets, golf clubs and related
`
`accessories (International Class 41); Resort
`
`services; restaurant services; hotel and lodging
`
`services; night club services; banquet and
`
`catering services and facilities; travel agency
`
`services, namely making reservations and
`
`booking for temporary lodging and
`
`transportation (International Class 43).
`
`
`
`
`
`
`
`
`

`
`5.
`
`Since the date of issuance ofthe above registrations, the names and marks have
`
`been continuously used in interstate commerce. Since the issuance of these trademark
`
`registrations, notice has been given to the public that the marks are registered trademarks by
`
`affixing notice provided in 15 U.S.C._ § 1111.
`
`6.
`
`The marks in U.S. Registration Nos. 929,749 and 929,750 are deemed
`
`incontestable under Trademark Act Section 15, 15 U.S.C. § 1065.
`
`7.
`
`Opposer's SUN DESIGN, SUN VALLEY & SUN DESIGN and SUN
`
`VALLEY & RISING SUN DESIGN marks are distinctive and serve as a designation of origin
`
`with respect to the goods and services offered by Opposer.
`
`8.
`
`Opposer has used its SUN DESIGN, SUN VALLEY & SUN DESIGN and
`
`SUN VALLEY & RISING SUN DESIGN marks to distinguish its goods and services from all
`
`other goods and services of the same type, and Opposer has acquired substantial goodwill in its
`
`SUN DESIGN, SUN VALLEY & SUN DESIGN and SUN VALLEY & RISING SUN
`
`DESIGN marks and names through use thereof.
`9.
`Since Opposer's initial use ofSUN DESIGN, SUN VALLEY & SUN DESIGN
`
`and SUN VALLEY & RISING SUN DESIGN marks, Opposer has made a substantial
`
`investment in marketing and promoting its goods and services under those marks. Opposer
`
`has extensively used, advertised, promoted and offered its goods and services in association
`
`with its SUN DESIGN, SUN VALLEY & SUN DESIGN and SUN VALLEY & RISING SUN
`
`DESIGN marks with the result that Opposer's customers and the general public have come to
`
`know and recognize Opposer's SUN DESIGN, SUN VALLEY & SUN DESIGN and SUN
`
`

`
`VALLEY & RISING SUN DESIGN marks and that the public associates these marks with
`
`Opposer and/or its goods and services. Opposer has built up extensive goodwill in connection
`
`with its goods and services under its SUN DESIGN, SUN VALLEY & SUN DESIGN and
`
`SUN VALLEY & RISING SUN DESIGN marks.
`
`10.
`
`Notwithstanding the inherent distinctiveness of the SUN DESIGN, SUN
`
`VALLEY & SUN DESIGN and SUN VALLEY & RISING SUN DESIGN marks, said SUN
`
`DESIGN, SUN VALLEY & SUN DESIGN and SUN VALLEY & RISING SUN DESIGN
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`marks have also acquired secondary meaning to the public indicating Opposer as the source of
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`a variety of goods and services, including in relevant part, “restaurant services, retail food and
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`delicatessen services, banquet and catering services.”
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`1 1.
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`Applicant's mark wholly incorporates the SUN DESIGN portions of Opposer’ s
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`marks. The mark proposed for registration by Applicant, namely SUN DESIGN is applied to
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`goods that are closely related to goods and services provided by Opposer. Applicant's mark
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`coupled with the goods for which registration is sought so nearly resembles one or more of
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`Opposer's marks and goods and services as to be likely to be confused therewith and mistaken
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`therefore and to confuse, mislead and deceive the consuming public as to the source or origin
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`of Applicant's services.
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`12.
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`The likelihood of confusion in the marketplace exits between Opposer's marks
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`when applied to the goods and services of the respective parties and Applicant's mark.
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`13.
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`Registration ofApplicant's trademark will result in damage to Opposer's marks
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`and Opposer's business.
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`14.
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`If Applicant is permitted to register its mark for its goods as specified in the
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`application herein opposed, such use and registration would result in confusion in the trade by
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`

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`reason of the similarity between Applicant's mark and one or more of Opposer's marks thereby
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`damaging and injuring Opposer. Any such confusion may result in the loss of business to
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`Opposer. Furthermore, any defect, objection or fault found with Applicant's goods marketed
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`under the Applicant’s SUN DESIGN mark may reflect upon and injure the reputation which
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`Opposer has established for its goods and services in association with one or more of
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`Opposer's marks.
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`15.
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`IfApplicant is granted the registration herein opposed, it would thereby obtain
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`at least a prima facie exclusive right to the use of its mark. Such registration would be a
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`further source of damage to Opposer.
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`16.
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`In View of the foregoing, Applicant is not entitled to federal registration of its
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`claimed mark because Applicant does not have a right to exclusive use of said mark in
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`commerce on Applicant's services and further, Applicant's claimed mark does not and cannot
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`function to identify such goods and to distinguish them from similar goods and services
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`offered by Opposer.
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`WHEREFORE, Opposer prays that the registration sought by Applicant be refused
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`and that this Opposition be sustained.
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`The fee required under 37 C.F.R. § §2.6(l7) are enclosed.
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`All correspondence and telephonic communications should be directed to:
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`John C. Stringham
`WORKMAN NYDEGGER
`
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`(801) 533-9800
`jstringham@Wnlaw.com
`
`

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`DATED this
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`/ 8 day ofAugust2006.
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`Respectfully submitted,
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`%¢(>6/8
`
`John C. Stringham, Reg. No. 40,831
`WORKMAN NYDEGGER
`
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`
`Telephone:
`
`(801) 533-9800
`
`(801) 328-1707
`Facsimile:
`'strin Thain c_§}wnlaw.co1n
`
`
`ATTORNEY FOR OPPOSER
`
`SINCLAIR FINANCE COMPANY
`
`W:\15027\291\DFROO00O12790V001.DOC