Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA159790
`ESTTA Tracking number:
`08/29/2007
`
`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
`
`Guthy-Renker Corporation
`08/29/2007
`
`41-550 Eclectic Street, Suite 200
`Palm Desert, CA 92260
`UNITED STATES
`
`Attorney
`information
`
`Daniel M. Cislo
`Cislo & Thomas LLP
`233 Wilshire Boulevard, Suite 900
`Santa Monica, CA 90401
`UNITED STATES
`sduncan@cislo.com Phone:310-451-0647
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77013634
`08/29/2007
`
`Publication date
`Opposition
`Period Ends
`
`05/01/2007
`08/29/2007
`
`Old Toledo Brands, Inc.
`Suite 12W 260 West 39th Street
`New York, NY 10018
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Adhesive bandages; Analgesic
`preparations; Antacids; Anti-inflammatories; Anti-insect spray; Anti-itch ointment; Antiseptics; Aspirin;
`Astringents for medicinal purposes; Athletes' foot preparations; Bandages for dressings; Bandages
`for skin wounds; Breath-freshening chewing gum for medicinal purposes; Bunion pads; Burn
`dressings; Burn relief medication; Calamine lotion; Cold sore treatment preparations; Cough drops;
`Decongestants; Dietary and nutritional supplements; Ear drops; Epsom salts; Eye washes; First aid
`kits; Food supplements; Gauze; General purpose germicide; Herbal supplements; Ibuprofen for use
`as an oral analgesic; Insect repellents; Laxatives; Meal replacement bars; Meal replacement drinks;
`Medical adhesive tape; Medical plasters; Medicated lip balm; Multivitamin preparations; Muscle
`soaks; Nutritional supplements; Nutritionally fortified beverages; Nutritionally fortified water; Oral
`analgesics; Pharmaceutical preparations for wounds; Pharmaceutical products for ophthalmological
`use; Powdered nutritional supplement drink mix; Pre-moistened medicated tissues; Preparation for
`the relief of pain; Preparations for treating colds; Rubbing alcohol; Rubbing compound for medical
`and/or therapeutic use; Sanitizing wipes; Self adhesive dressings; Vitamin and mineral supplements;
`Vitamin fortified beverages; Witch hazel; Wound dressings
`Class 010.
`All goods and services in the class are opposed, namely: Bandages for anatomical joints; Chemically
`
`

`
`activated hot and/or cold compresses; Compression bandages; Crutches; Elastic bandages; Elastic
`stockings; Elbow guard for epicondylitis; Exercise machines for therapeutic purposes; Eye droppers;
`Gloves for massage; Heat lamps for medical use; Heating cushions for medical purposes; Magnets
`for medical purposes; Massage apparatus; Massaging apparatus for personal use; Medical
`compression stockings and tights; Medical hosiery, namely, panty hose, elastic hose supporters,
`knee high hose, thigh high hose; Nasal aspirators; Non-medicated compresses; Orthopedic footwear;
`Orthopedic support bandages; Orthopedic supports; Tongue scrapers
`Class 014.
`All goods and services in the class are opposed, namely: Clocks; Jewelry; Watches
`Class 018.
`All goods and services in the class are opposed, namely: All-purpose athletic bags; Athletic bags;
`Backpacks; Briefbags; Business card cases; Carry-on bags; Cosmetic bags sold empty; Credit card
`cases; Duffel bags; Fanny packs; Garment bags for travel; Golf umbrellas; Gym bags; Handbags;
`Hiking poles; Key cases; Knapsacks; Luggage; Overnight bags; Purses; Shaving bags sold empty;
`Sports bags; Straps for luggage; Suitcases; Travel bags; Umbrellas; Valises; Waist packs; Wallets;
`Wine bags with handles for carrying or holding wine
`Class 028.
`All goods and services in the class are opposed, namely: Action figures; Ankle and wrist weights for
`exercise; Athletic equipment, namely, mouth guards; Athletic sporting goods, namely, athletic wrist
`and joint supports; Athletic supporters; Athletic tape; Bar-bells; Barbells; Beach balls; Bean bags;
`Covers for golf clubs; Dumbbells; Elbow pads for athletic use; Exercise benches; Exercise machines;
`Exercise treadmills; Exercise weights; Exercising equipment, namely, rowing machines; Exercising
`equipment, namely, weight lifting machines; Golf club bags; Golf club covers; Golf clubs; Golf gloves;
`Gymnastic apparatus; Head covers for golf clubs; In-line skates; Inflatable toys; Jock straps; Leg
`guards for athletic use; Leg weights for exercising; Non-motorized golf carts; Remote control toys;
`Sport balls; Toy action figures; Work-out gloves; Wrist and ankle weights for exercise; Yo-yos
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`PROACTIV, PROACTIV SOLUTION
`A variety of goods and services including, but not limited to, acne
`treatment preparations and related cosmetic products
`
`Attachments
`
`Executed Notice of Opposition.PDF ( 7 pages )(406099 bytes )
`
`Signature
`Name
`Date
`
`/Daniel M. Cislo/
`Daniel M. Cislo
`08/29/2007
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF APPLICATION SERIAL NO. 77/013,634
`PUBLISHED IN THE OFFICIAL GAZETTE ON MAY 1, 2007
`
`) OPPOSITION NO.
`
`) )
`
`GUTHY-RENKER CORPORATION, a
`Delaware corporation,
`
`OPPOSER,
`
`vs.
`
`)
`) NOTICE OF OPPOSITION
`
`)
`OLD TOLEDO BRANDS, INC., a New York)
`corporation
`
`) )
`
`) )
`
`APPLICANT.
`
`Opposer, GUTHY-RENKER CORPORATION, a Delaware corporation, having offices
`
`at 41-550 Eclectic Street, Suite 200, Palm Desert, California 92260 (“Guthy-Renker”),
`
`believes that it will be damaged by registration of the mark shown in Application Serial No.
`
`77/013,634 filed by Old Toledo Brands, Inc., a New York corporation, having a listed
`
`business address of 260 West 39"‘ Street, Suite 12W, New York, New York 10018, and hereby
`
`opposes the same and requests that the registration to the Application be refused.
`
`The grounds for opposition are as follows:
`
`1.
`
`Applicant seeks to register a mark which consists of the term PRO ACTIVE
`
`for use in connection with Adhesive bandages; Analgesic preparations; Antacids; Anti-
`
`inflammatories; Anti-insect spray; Anti-itch ointment; Antiseptics; Aspirin; Astringents for
`
`

`
`medicinal purposes; Athletes‘ foot preparations; Bandages for dressings; Bandages for skin
`
`wounds; Breath-freshening chewing gum for medicinal purposes; Bunion pads; Burn dressings;
`
`Burn relief medication; Calamine lotion; Cold sore treatment preparations; Cough drops;
`
`Decongestants; Dietary and nutritional supplements; Ear drops; Epsom salts; Eye washes; First
`
`aid kits; Food supplements; Gauze; General purpose gennicide; Herbal supplements; Ibuprofen
`
`for use as an oral analgesic;
`
`Insect repellents; Laxatives; Meal replacement bars; Meal
`
`replacement drinks; Medical
`
`adhesive
`
`tape; Medical plasters; Medicated lip balm;
`
`Multivitamin preparations; Muscle soaks; Nutritional supplements; Nutritionally fortified
`
`beverages; Nutritionally fortified water; Oral analgesics; Pharmaceutical preparations for
`
`wounds; Pharmaceutical products for ophthalmological use; Powdered nutritional supplement
`
`drink mix; Pre-moistened medicated tissues; Preparation for the relief of pain; Preparations for
`
`treating colds; Rubbing alcohol; Rubbing compound for medical and/or therapeutic use;
`
`Sanitizing wipes; Self adhesive dressings; Vitamin and mineral supplements; Vitamin fortified
`
`beverages; Witch hazel; Wound dressings in Class 005; Bandages for anatomical joints;
`
`Chemically activated hot and/or cold compresses; Compression bandages; Crutches; Elastic
`
`bandages; Elastic stockings; Elbow guard for epicondylitis; Exercise machines for therapeutic
`
`purposes; Eye droppers; Gloves for massage; Heat lamps for medical use; Heating cushions
`
`for medical purposes; Magnets for medical purposes; Massage apparatus; Massaging apparatus
`
`for personal use; Medical compression stockings and tights; Medical hosiery, namely, panty
`
`hose, elastic hose supporters, knee high hose,
`
`thigh high hose; Nasal aspirators; Non-
`
`medicated compresses; Orthopedic footwear; Orthopedic support bandages; Orthopedic
`
`supports; Tongue scrapers in Class 010; Clocks; Jewelry; Watches in Class 014; All-purpose
`
`

`
`athletic bags; Athletic bags; Backpacks; Briefbags; Business card cases; Carry-on bags;
`
`Cosmetic bags sold empty; Credit card cases; Duffel bags; Farmy packs; Garment bags for
`
`travel; Golf umbrellas; Gym bags; Handbags; Hiking poles; Key cases; Knapsacks; Luggage;
`
`Overnight bags; Purses; Shaving bags sold empty; Sports bags; Straps for luggage; Suitcases;
`
`Travel bags; Umbrellas; Valises; Waist packs; Wallets; Wine bags with handles for carrying or
`
`holding wine in Class 018; Action figures; Ankle and wrist weights for exercise; Athletic
`
`equipment, namely, mouth guards; Athletic sporting goods, namely, athletic wrist and joint
`
`supports; Athletic supporters; Athletic tape; Bar-bells; Barbells; Beach balls; Bean bags;
`
`Covers for golf clubs; Dumbbells; Elbow pads for athletic use; Exercise benches; Exercise
`
`machines; Exercise treadmills; Exercise weights; Exercising equipment, namely,
`
`rowing
`
`machines; Exercising equipment, namely, weight lifting machines; Golf club bags; Golf club
`
`covers; Golf clubs; Golf gloves; Gymnastic apparatus; Head covers for golf clubs;
`
`ln—line
`
`skates; Inflatable toys; Jock straps; Leg guards for athletic use; Leg weights for exercising;
`
`Non-motorized golf carts; Remote control toys; Sport balls; Toy action figures; Work-out
`
`gloves; Wrist and ankle weights for exercise; Yo-yos in Class 028 (hereinafter “Applicant’s
`
`Mark”). The application is an intent-to-use based application under 15 U.S.C.§l05l(l)(b).
`
`2.
`
`Opposer has obtained the necessary extension of time in which to file this Notice
`
`of Opposition.
`
`3.
`
`Since as early as 1991, Opposer, its predecessors, or its related companies have
`
`continuously used the terms “PROACTIV” and “PROACTIV SOLUTION” (“Opposer’s
`
`Marks”) in interstate commerce as trademarks for a variety of goods and services, including,
`
`but not limited to, acne treatment preparations and related cosmetic products (“Opposer’s
`
`

`
`Goods”). Opposer’s Marks have also continuously appeared in substantial advertising and
`
`promotion of Opposer’s skin care and cosmetic products, such that the marks are closely
`
`identified with Opposer’s Goods and have gained very valuable public recognition. Opposer
`
`has established an outstanding reputation as to the quality of its products sold under the
`
`“PROACTIV” and “PROACTIV SOLUTION” marks.
`
`4.
`
`Guthy-Renker has continuously used Opposer’s Marks in interstate commerce
`
`since long prior to any date upon which Applicant can rely. By virtue of its sales of high-
`
`quality products bearing the mark in interstate commerce,
`
`its expenditures of considerable
`
`sums for promotional activities and the excellence of its products, Opposer has developed
`
`significant goodwill in its Marks and a valuable reputation.
`
`5.
`
`Opposer’s trademark rights for the PROACTIV and PROACTIV SOLUTION
`
`marks have priority over Applicant’s Mark, inasmuch as Opposer has continuously used its
`
`Marks since it commenced use of its Marks, and Applicant’s Application lists a filing date of
`
`October 22, 2004 and is listed as an intent-to-use application.
`
`6.
`
`Applicant’s Mark so resembles Opposer’s Marks that have been and are
`
`currently used, as to be likely to cause confusion, or cause mistake, or to deceive, in violation
`
`of Section 2(d) of The Trademark Act, 15 U.S.C. §1052(d), when used on or in connection
`
`with Applicant’s Goods.
`
`7.
`
`Under
`
`the circumstances,
`
`registration of the mark that
`
`is
`
`the subject of
`
`Application Serial No. 77/013,634 will injure Opposer by causing the trade and/or purchasing
`
`public to be confused, and/or deceived into believing that Applicant’s Goods are those of
`
`

`
`Opposer, or are sponsored by Opposer,
`
`to Opposer’s damage and will place a cloud over
`
`Opposer’s title to its PROACTIV and PROACTIV SOLUTION marks, in violation of Section
`
`2(d) of the Trademark Act, 15 U.S.C. Section l052(d).
`
`8.
`
`Opposer’s PROACTIV and PROACTIV SOLUTION marks were well
`
`established and famous long before the filing date of App1icant’s subject application, and at the
`
`time that Applicant filed the subject application. Registration by Applicant would diminish and
`
`dilute the distinctive quality of Opposer’s rights in its famous PROACTIV and PROACTIV
`
`SOLUTION marks in violation of 15 U.S.C.§1125(c). Moreover, registration by Applicant
`
`would diminish the advertising value of Opposer’s Mark, and such registration would, in the
`
`event of any quality problems involving the goods offered by Applicant,
`
`tarnish the
`
`distinctiveness of Opposer’s Marks.
`
`9.
`
`Opposer’s Marks are distinctive and famous such that the public would associate
`
`Opposer’s Marks with Opposer when encountering Opposer’s Marks apart from Opposer’s
`
`Goods.
`
`10.
`
`Applicant’s Mark is the same as, or substantially the same as Opposer’s Marks,
`
`including in visual appearance and in pronunciation.
`
`ll.
`
`Applicant's Mark is likely to and/or has diluted and lessened the capacity of
`
`Opposer’s Marks to identify and distinguish Opposer’s Goods.
`
`12.
`
`App1icant’s mark so resembles Opposer’s continuously used, famous and well-
`
`known Marks as to be likely, when used in connection with the goods as set forth in
`
`

`
`,.=“»,{—3"§J§§~t.:;3.}3i"&: a;;apEicai‘i<.:n. ta §t‘:SSe1i} the capacm-‘ Q.§"{);.);'1t‘}:¥.€’§.“E:
`
`:‘via':r§>:.s to i:i::r1:i.?}* zmszi <ii:=.zir;gu.is.h
`
`()p;mser’s (}md.«;.
`
`13.
`
`The s11i3;§£:c.t App}.ic.ati<1n
`
`:=.hm11r:2 he
`
`reftssad hecattsa O;ip0:<:ex"$
`
`rigilis Qf
`
`m‘.::.2t.i._m:i:1g
`
`iii;
`
`pi‘t3'3€3§3i
`
`0%‘
`
`its Miifitfi
`
`in xzaismrnemz are, or weak} ‘ha,
`
`i.hr:;::§I.cx3ad by
`
`..=’&;§p}ic:int.’5-
`
`reg-.:is%£1"m.icm mi‘
`
`the PRC!
`
`:XC.'T}‘\~*"§E§.
`
`r:z:.1';f}:: far Ap;j§icaz1z‘s {i}s3mis;, and Ewmiuse
`
`{')p+p»::ss¢:r":; business W‘(}1}].(}
`
`it»: «otherwise da.m:zges:.i hf; AppEic.;:ni’s mgist.r:H.i:3n m" rm:
`
`I>’.fii{)
`
`AC_Z".i.‘Li’\»’ mVa1'}s: fur Applicant’s Gmcls.
`
`WE€i_E3Li‘{,EE*F‘{T3}T{IZ,
`
`tin: Cippnsitr prag,-‘S that V..=\Vp;5§is::i£.ia;m. Sszrizzzi NC}.
`
`'?'7.ff}I3.€$3«"i.
`
`hf? X’i?jt‘:Cvi.t3"{},
`
`anti mat the mmk s<‘:u;:;§3i. fr)? me gmds; ih:3rei.n in he 5}}€C‘ifi€'.{§
`
`in Int.:3mzztMi.{3:u1§ {.‘J¥a:x:s B03
`
`d.esxi::i,3 and ref1::smi.
`
`The: required fist: fur fiw: 31213363 of gggcynds,
`
`2‘-311:1 any 2!(1.(}‘itiQ1‘lEfi faxes, may he ckmrged tee
`
`{);:pwa;2r‘s repres::m::tiw:‘s; dapusit account. No. (}3»~2..U3{l
`
`Ew
`
`I"}2m::«3: august
`
`12.007
`
`ResV;1:~é.cA£f1:1i.j,-‘ saxianiitisd,
`
`‘
`{TISfi..{‘.J «Sit Tf."IC}M_A LL}?
`
`5’
`
`.2‘?
`-*‘°’m\\
`ff!
`.2
`«..
`;'
`«««\\«‘gm«««««««««««««««««':‘L9l9eiil'f«_-:««-«««««««««~««-
`lfigrixtéi M. £31519, £22223.
`33,973
`
`8
`
`

`
`C'ERT;IFi'CATE {BF ELE{fTRGNl€f
`
`i‘%<‘§z%.'iL‘§N'G
`
`I itemby .L‘.f3.I'iif}" that this pe1p<;2r(alm1;;_; xx-=ia¥1 {my p:1;f3er x‘e1t"m*c:}. to as btzing
`
`z=:i’iac§1e:1 {Jr ::11;:iVe:sed}
`
`hc':ing film} with the United Siam: I}"m‘.»:2n1. arzti '7i‘1";~.u;imna1'i< filffiatss
`
`via t.‘£1e E.}ec.t:x‘(mi.c. System: far '{’radez11:1.rA§< 'if‘r'i.a.§s am} ,Ap;.3e.ai:‘s (I3iS'I.‘T,~<‘s) D11 the date
`
`
`
`3*
`
`j
`,.~»—
`I}sfi3iz=:1 EX-ii, {fish}, iisq.
`Nu. 32,£”-J73
`
`F
`
`s¥1::3wn itaelmv
`
`‘:3
`.=*u':gz1si““"
`
`,
`
`I)ai1:£,i:
`
`.
`
`zévww
`‘_‘
`~
`:‘ 200}
`
`CISLO
`
`'I‘E~iOI\~'iAS LL?
`
`Wiishire Bt)ui§:v';=m;‘£. Shxism Qilfi}
`
`Emmi Mtysxica, iilaiifmrzzigz ¥}(}x£-{} 1 ~ 1.13"! 1
`
`Tel? {3 X0) 45 §.~(3i'r~‘1~’?
`
`Farit {B10} 3E3»‘§~—<'¥~’Jf5’?
`s3..=wsv.césIo.c:z3n1
`
`‘S .'\33‘-’-— 3 '?§'9-i°~.:\=3~f.E:2:“" :33‘
`
`iii.‘-<1?