Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA191149
`ESTTA Tracking number:
`02/06/2008
`
`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
`
`Namsung America, Inc.
`02/06/2008
`
`250 International ParkwaySuite 230
`Heathrow, FL 32746
`UNITED STATES
`
`Attorney
`information
`
`David L. Sigalow
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 S. Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`dsigalow@addmg.com, bheffernan@addmg.com Phone:407-841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78350777
`02/06/2008
`
`Publication date
`Opposition
`Period Ends
`
`10/09/2007
`02/06/2008
`
`DUALIT LIMITED
`COUNTY OAK WAY CRAWLEY
`WEST SUSSEX, RH11 7ST
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: RADIOS, CAMERAS, TIME CLOCKS,
`COMPUTERS, TELEVISIONS; HOUSEHOLD OR KITCHEN ITEMS NOT OF PRECIOUS METALS
`OR COATED THEREWITH, NAMELY, WEIGHING SCALES
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2527705
`
`01/08/2002
`
`Word Mark
`Design Mark
`
`DUAL
`
`Application Date
`
`03/14/1996
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA191149
`ESTTA Tracking number:
`02/06/2008
`
`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
`
`Namsung America, Inc.
`02/06/2008
`
`250 International ParkwaySuite 230
`Heathrow, FL 32746
`UNITED STATES
`
`Attorney
`information
`
`David L. Sigalow
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 S. Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`dsigalow@addmg.com, bheffernan@addmg.com Phone:407-841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78350777
`02/06/2008
`
`Publication date
`Opposition
`Period Ends
`
`10/09/2007
`02/06/2008
`
`DUALIT LIMITED
`COUNTY OAK WAY CRAWLEY
`WEST SUSSEX, RH11 7ST
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: RADIOS, CAMERAS, TIME CLOCKS,
`COMPUTERS, TELEVISIONS; HOUSEHOLD OR KITCHEN ITEMS NOT OF PRECIOUS METALS
`OR COATED THEREWITH, NAMELY, WEIGHING SCALES
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2527705
`
`01/08/2002
`
`Word Mark
`Design Mark
`
`DUAL
`
`Application Date
`
`03/14/1996
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2000/07/01 First Use In Commerce: 2000/07/01
`phonograph record players, phonograph record changers, and parts thereof,
`audio tape recorders and tape players and parts thereof; CD players, CD
`changers and parts thereof; stereo and mono tuners; stereo amplifiers;
`loudspeakers; television and video equipment, namely, television sets, video
`cameras, video monitors, video tape recorders and video tape players and parts
`thereof and computers
`
`Attachments
`
`75072991#TMSN.gif ( 1 page )( bytes )
`Notice of Opp.pdf ( 5 pages )(87734 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/David L. Sigalow/
`David L. Sigalow
`02/06/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re the matter of Application Serial No. 78/350,777
`Published in the Official Gazette on October 9, 2007
`
`Namsung America, Inc.
`
`Opposer,
`
`Opposition No:
`Mark: DUALIT
`
`V.
`
`Dualit Limited
`
`Applicant.
`
`/
`
`NOTICE OF OPPOSITION
`
`Opposer Namsung America, Inc., a corporation organized under the laws of the State of
`
`Florida, whose address is 250 International Parkway, Suite 230, Heathrow, Florida 32746,
`
`believes it will be damaged by registration of the mark DUALIT, shown in Serial No.
`
`78/350,777, in International Class 9 for “radios, cameras, time clocks, computers, televisions,”
`
`and hereby opposes registration of the application for the referenced goods in International Class
`
`9, only, pursuant to an Extension of Time allowed on November 7, 2007.
`
`As grounds for opposition it is alleged that:
`
`1.
`
`Applicant seeks to register the mark DUALIT as a trademark for “radios,
`
`cameras, time clocks, computers, televisions,” in International Class 9, inter alia,
`
`as evidenced by the publication of the mark in the Official Gazette on October 9,
`
`2007.
`
`
`
`Applicant filed its application on January 12, 2004, based on its intent to use the
`
`mark in commerce, and has not yet filed an Amendment to Allege Use.
`
`Opposer
`
`is affiliated with Namsung Corporation (“Namsung Korea”),
`
`a
`
`corporation organized under the laws of the Republic of Korea, whose address is
`
`197-22 Koolo-Dong, Koolo-Ku Seoul, Republic of Korea.
`
`Namsung Korea is the owner of the mark DUAL (Stylized), shown in U.S.
`
`Trademark Registration No. 2,527,705, which registered on the Principal Register
`
`on January 8, 2002 for use on “phonograph record players, phonograph record
`
`changers, and parts thereof, audio tape recorders and tape players and parts
`
`thereof; CD players, CD changers and parts thereof; stereo and mono tuners;
`
`stereo amplifiers;
`
`loudspeakers;
`
`television and video equipment, namely,
`
`television sets, video cameras, video monitors, video tape recorders and video
`
`tape players and parts thereof and computers,” in International Class 9.
`
`U.S. Trademark Registration No. 2,527,705 attained incontestable status on
`
`January 14, 2008.
`
`Opposer has used the mark DUAL (Stylized) in interstate commerce in the United
`
`States on goods in International Class 9 since at least as early as July 1, 2000,
`
`pursuant to an exclusive license granted to it by Namsung Korea.
`
`Oppo ser has extensively promoted and continuously used the mark throughout the
`
`United States, and has made significant sales of products under the mark, and as a
`
`result, the mark has developed favorable acceptance and recognition for Opposer
`
`in the relevant industry.
`
`The mark DUAL (Stylized) is distinctive and is a valuable asset of Opposer.
`
`2
`
`
`
`10.
`
`ll.
`
`l2.
`
`l3.
`
`Opposer used the mark DUAL (Stylized) in commerce prior to the filing of
`
`Applicant’s application Serial No. 78/350,777 and, upon information and belief,
`
`before Applicant’s first use of its mark DUALIT in connection with the
`
`referenced goods in International Class 9.
`
`Applicant’s mark DUALIT is confilsingly and deceptively similar to the mark
`
`DUAL (Stylized). Applicant’s mark is very similar in sight, sound, connotation,
`
`and commercial impression to Opposer’s mark.
`
`Applicant’s goods in International Class 9, as listed in fill, supra, are consumer
`
`electronic products that are very similar and closely related to Opposer’s goods in
`
`International Class 9, as listed in 114, supra.
`
`Upon information and belief, Applicant’s channels of trade and class of
`
`purchasers are likely to be very similar to those of Opposer.
`
`Due to the similarities between the marks and goods, and the likely similarity of
`
`the respective channels of trade and classes of purchasers, the registration of
`
`Applicant’s mark will cause great damage and injury to Opposer.
`
`Persons
`
`familiar with the mark DUAL (Stylized) and the goods offered under this mark
`
`would likely confuse Applicant’s goods with those provided by Opposer. Any
`
`defect, objection or fault found with Applicant’s goods under the mark DUALIT
`
`may reflect upon and expose Opposer to liability, and seriously injure the
`
`reputation that Opposer has established.
`
`l4.
`
`If Applicant is granted the registration herein opposed, it would obtain at least a
`
`prima facie exclusive right to use the mark DUALIT in the United States, thereby
`
`causing damage and injury to Opposer.
`
`3
`
`
`
`WHEREFORE, Opposer prays that Application Serial No. 78/350,777 be rejected, that
`
`this opposition be sustained,
`
`that the registration therein sought for the goods specified in
`
`International Class 9 be refiased, and that Opposer be granted such additional relief as the Board
`
`deenis just and proper.
`
`Dated: Februag 6, 2008
`
`Respectfully submitted,
`
`/Bridget Heffernan Labutta/
`David L. Sigalow, Esquire
`Bridget Heffernan Labutta, Esquire
`Allen, Dyer, Doppelt,
`Milbrath & Gilchrist, P.A.
`
`255 South Orange Avenue, Suite 1401
`Orlando, Florida 3280l
`Phone: 407 841-2330
`
`Fax: 407 841-2343
`
`E-mail: dsigaloW@addmg.com
`
`bheffernan@addmo‘.com
`
`Attorneys for Opposer
`Namsung America, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and correct copy of the foregoing was served by U. S. Mail on
`February 6, 2008 to:
`
`Susan B. Flohr, Esq.
`Blank Rome LLP
`
`The Watergate
`600 New Hampshire AVe., N.
`Washington, D.C. 22037
`
`/Paul LePore
`
`Signature
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