Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA243686
`ESTTA Tracking number:
`10/20/2008
`
`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.
`10/19/2008
`
`250 International ParkwaySuite 230
`Heathrow, FL 32746
`UNITED STATES
`
`Attorney
`information
`
`Allison R. Imber
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P. A.
`255 South Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`dsigalow@addmg.com, aimber@addmg.com, ebradley@addmg.com
`Phone:407-841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`78430909
`10/20/2008
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`04/22/2008
`10/19/2008
`
`NONE
`
`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: Apparatus for recording, transmission or
`reproduction of sound or images; radios, DAB radios, home entertainment systems comprised of
`televisions, stereo receivers and stereo amplifiers, DVD players, videotape players, and remote
`controls therefor; pre-recorded DVDs and CD-ROMS featuring music, action, comedy, dramatic
`movies, and cookery programs; digital cameras, mobile telephones, computer hardware and
`peripherals; automatic vending machines; parts and fittings of the aforesaid goods
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`
`ESTTA243686
`ESTTA Tracking number:
`10/20/2008
`
`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.
`10/19/2008
`
`250 International ParkwaySuite 230
`Heathrow, FL 32746
`UNITED STATES
`
`Attorney
`information
`
`Allison R. Imber
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P. A.
`255 South Orange AvenueSuite 1401
`Orlando, FL 32801
`UNITED STATES
`dsigalow@addmg.com, aimber@addmg.com, ebradley@addmg.com
`Phone:407-841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`78430909
`10/20/2008
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`04/22/2008
`10/19/2008
`
`NONE
`
`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: Apparatus for recording, transmission or
`reproduction of sound or images; radios, DAB radios, home entertainment systems comprised of
`televisions, stereo receivers and stereo amplifiers, DVD players, videotape players, and remote
`controls therefor; pre-recorded DVDs and CD-ROMS featuring music, action, comedy, dramatic
`movies, and cookery programs; digital cameras, mobile telephones, computer hardware and
`peripherals; automatic vending machines; parts and fittings of the aforesaid goods
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks 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
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`Application Date
`
`Foreign Priority
`Date
`
`NONE
`
`Application Date
`
`Foreign Priority
`Date
`
`NONE
`
`Attachments
`
`75072991#TMSN.gif ( 1 page )( bytes )
`JK3053.PDF ( 6 pages )(88613 bytes )
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`
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`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Allison R. Imber/
`Allison R. Imber
`10/20/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re the matter of Application Serial No. 78/430,909
`Published in the Official Gazette on April 22, 2008
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`Namsung America, Inc.
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`v.
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`Opposer,
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`Opposition No:___________
` Mark: DUALIT
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`Dualit Limited
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`Applicant.
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`/
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`NOTICE OF OPPOSITION
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`Opposer Namsung America, Inc., a corporation organized under the laws of the State of
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`Florida, whose address is 250 International Parkway, Suite 230, Heathrow, Florida 32746,
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`believes it will be damaged by registration of the mark DUALIT, shown in Serial No.
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`78/430,909, in International Class 9 for ÐApparatus for recording, transmission or reproduction
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`of sound or images; radios, DAB radios, home entertainment systems comprised of televisions,
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`stereo receivers and stereo amplifiers, DVD players, videotape players, and remote controls
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`therefor; pre-recorded DVDs and CD-ROMS featuring music, action, comedy, dramatic movies,
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`and cookery programs; digital cameras, mobile telephones, computer hardware and peripherals;
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`automatic vending machines; parts and fittings of the aforesaid goodsÑ and hereby opposes
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`registration of the application for the referenced goods in International Class 9, pursuant to an
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`second Extension of Time allowed on September 3, 2008.
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`1
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`As grounds for opposition it is alleged that:
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`1.
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`Applicant seeks to register the mark DUALIT as a trademark for ÐApparatus for
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`recording, transmission or reproduction of sound or images; radios, DAB radios,
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`home entertainment systems comprised of televisions, stereo receivers and stereo
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`amplifiers, DVD players, videotape players, and remote controls therefor; pre-
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`recorded DVDs and CD-ROMS featuring music, action, comedy, dramatic
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`movies, and cookery programs; digital cameras, mobile telephones, computer
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`hardware and peripherals; automatic vending machines; parts and fittings of the
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`aforesaid goods,Ñ in International Class 9, as evidenced by the publication of the
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`mark in the Official Gazette on April 22, 2008.
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`2.
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`Applicant filed its application on June 14, 2004, under Section 44(d) based on its
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`United Kingdom Reg. No. 2,350,948 and its intent to use the mark in United
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`States commerce. Applicant has not yet filed an Amendment to Allege Use in the
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`United States.
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`3.
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`Opposer is affiliated with Namsung Corporation (ÐNamsung KoreaÑ), a
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`corporation organized under the laws of the Republic of Korea, whose address is
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`197-22 Koolo-Dong, Koolo-Ku Seoul, Republic of Korea.
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`4.
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`Namsung Korea owns U.S. Trademark Registration No. 2,527,705 for the mark
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`DUAL (Stylized).
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`5.
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`The mark as shown in U.S. Trademark Registration No. 2,527,705 has been used
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`in connection with personal consumer electronics since at least as early as July 1,
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`2000.
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`2
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`6.
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`U.S. Trademark Registration No. 2,527,705 was registered on January 8, 2002
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`and attained incontestable status on January 14, 2008.
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`7.
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`On October 20, 2008, Namsung Korea filed U.S. Trademark Application Serial
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`No. 77/595,827 for DUAL (Stylized), which has been used in commerce in
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`connection with Ðpersonal consumer electronics, namely, home audio speakers,
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`loudspeakers, subwoofers, and DVD players; hands free communication devices;
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`USB devices; audio tape recorders and tape players and parts thereof; audio
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`cassette players; CD players, CD changers and parts thereof; MP3 players; stereo
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`and mono tuners; stereo amplifiers; loudspeakers; television and video equipment,
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`namely, television sets, video cameras, video monitors; in car multimedia devices;
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`mobile infotainment electronics, namely, mobile audio receivers, amplifiers,
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`speakers, subwoofers and accessories; mobile video systems; portable GPS
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`navigation devices; marine audio receivers and speakers; mobile HD radios;
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`portable and in-car DVD players; in-car accessories for consumer electronics
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`productsÑ since at least as early as July of 2003.
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`8.
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`On October 20, 2008, Namsung Korea also filed U.S. Trademark Application
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`Serial No. 77/595,801 for DUAL (Stylized), which is intended for use in
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`connection with Ðcomputers, namely, automobile computers, notebook computers,
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`and personal computers; personal computer speakers; hands free communication
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`devices dongle and WiFi dongle; Blu-ray players; cellular phones; two way
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`communication devices; digital TVÓs, namely, portable and 110V; security
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`systems for car and home; collision avoidance systems; digital multimedia,
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`3
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`namely, cameras, recorders for media and voice; phonograph record players,
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`phonograph record changers, and parts thereof; OEM integration devices.Ñ
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`9.
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`Pursuant to an exclusive license agreement with Namsung Korea, Opposer has
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`rights to use the marks DUAL (Stylized) in interstate commerce in the United
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`States on personal consumer electronic goods.
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`10. Opposer has extensively promoted and continuously used its marks throughout the
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`United States in connection with a wide variety of consumer electronic products,
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`and has made significant sales of products under the marks, and as a result, the
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`marks have developed favorable acceptance and recognition for Opposer in the
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`relevant industry.
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`11.
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`The marks DUAL (Stylized) are distinctive and valuable assets of Opposer.
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`12. Opposer used the marks DUAL (Stylized) in commerce prior to the filing of
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`ApplicantÓs application Serial No. 78/430,909 and, upon information and belief,
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`before ApplicantÓs first use of its mark DUALIT in the United States in
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`connection with the above-identified goods.
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`13. ApplicantÓs mark DUALIT is confusingly and deceptively similar to OpposerÓs
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`marks.
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` ApplicantÓs mark is very similar in sight, sound, connotation, and
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`commercial impression to OpposerÓs mark.
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`14. ApplicantÓs goods are consumer electronic products that are very similar and
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`closely related to goods offered under each of ApplicantÓs marks.
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`15. Upon information and belief, ApplicantÓs channels of trade and class of
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`purchasers are likely to be very similar to those of Opposer.
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`4
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`16. Due to the similarities between the marks and goods, and the likely similarity of
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`the respective channels of trade and classes of purchasers, the registration of
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`ApplicantÓs mark will cause great damage and injury to Opposer. Persons
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`familiar with OpposerÓs marks and the goods offered under these marks would
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`likely confuse ApplicantÓs goods with those provided by Opposer. Any defect,
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`objection or fault found with ApplicantÓs goods under the mark DUALIT may
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`reflect upon and expose Opposer to liability, and seriously injure the reputation
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`that Opposer has established.
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`17.
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`If Applicant is granted the registration herein opposed, it would obtain at least a
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`prima facie exclusive right to use the mark DUALIT in the United States, thereby
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`causing damage and injury to Opposer.
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`WHEREFORE, Opposer prays that Application Serial No. 78/430,909 be rejected, that
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`this opposition be sustained, that the registration therein be refused, and that Opposer be granted
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`such additional relief as the Board deems just and proper.
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`Dated: October 20, 2008
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`Respectfully submitted,
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`______
`
`/Allison R. Imber/
`David L. Sigalow, Esquire
`Allison R. Imber, Esquire
`Allen, Dyer, Doppelt,
`Milbrath & Gilchrist, P.A.
`255 South Orange Avenue, Suite 1401
`Orlando, Florida
`
` 32801
`Phone: 407 841-2330
`Fax: 407 841-2343
`E-mail: dsigalow@addmg.com
`aimber@addmg.com
`
`Attorneys for Opposer
`Namsung America, Inc.
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`5
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`CERTIFICATE OF SERVICE
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`I certify that a true and correct copy of the foregoing was served by U. S. Mail on August
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`20, 2008 to:
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`Alexandra T. MacKay
`Stites & Harbison PLLC
`Suite 800
`401 Commerce Street
`Nashville, TN 37219
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`/Allison R. Imber/
`Signature
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`6
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