Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA251192
`ESTTA Tracking number:
`11/25/2008
`
`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
`
`Pharmavite LLC
`11/26/2008
`
`8520 Balboa Blvd. Suite 300
`Northridge, CA 91325
`UNITED STATES
`
`Correspondence
`information
`
`Daniel J. Russell
`Attorney of record
`BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, LLP
`12400 Wilshire Boulevard 7th Floor
`Los Angeles, CA 90025
`UNITED STATES
`tm_filings@bstz.com, daniel_russell@bstz.com, adriana_vidal@bstz.com
`Phone:310-207-3800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77299278
`11/25/2008
`
`Publication date
`Opposition
`Period Ends
`
`07/29/2008
`11/26/2008
`
`Naturmed, Inc.
`Suite C 661 E. Howards Road
`Camp Verde, AZ 86322
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Vitamins; Dietary and nutritional
`supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1963505
`
`03/19/1996
`
`Application Date
`
`05/22/1995
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA251192
`ESTTA Tracking number:
`11/25/2008
`
`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
`
`Pharmavite LLC
`11/26/2008
`
`8520 Balboa Blvd. Suite 300
`Northridge, CA 91325
`UNITED STATES
`
`Correspondence
`information
`
`Daniel J. Russell
`Attorney of record
`BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, LLP
`12400 Wilshire Boulevard 7th Floor
`Los Angeles, CA 90025
`UNITED STATES
`tm_filings@bstz.com, daniel_russell@bstz.com, adriana_vidal@bstz.com
`Phone:310-207-3800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77299278
`11/25/2008
`
`Publication date
`Opposition
`Period Ends
`
`07/29/2008
`11/26/2008
`
`Naturmed, Inc.
`Suite C 661 E. Howards Road
`Camp Verde, AZ 86322
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Vitamins; Dietary and nutritional
`supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1963505
`
`03/19/1996
`
`Application Date
`
`05/22/1995
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NATURE MADE
`
`NONE
`
`Class 005. First use: First Use: 1971/01/25 First Use In Commerce: 1971/01/25
`vitamins, minerals and dietary supplements
`
`U.S. Registration
`No.
`Registration Date
`
`2451597
`
`05/15/2001
`
`Word Mark
`Design Mark
`
`NATURE MADE
`
`Application Date
`
`01/04/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/03/01 First Use In Commerce: 1999/03/01
`Vitamins, mineral supplements and dietary supplements
`
`U.S. Registration
`No.
`Registration Date
`
`3520080
`
`10/21/2008
`
`Word Mark
`Design Mark
`
`NATURE MADE
`
`Application Date
`
`03/24/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the words "Nature Made" with two leaves above, enclosed
`within a lined border.
`Class 005. First use: First Use: 2005/11/30 First Use In Commerce: 2005/11/30
`dietary supplements
`
`U.S. Registration
`No.
`
`2592200
`
`Application Date
`
`09/07/1999
`
`
`
`Registration Date
`
`07/09/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`NATURE MADE ESSENTIAL
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/08/24 First Use In Commerce: 1999/08/24
`vitamins, minerals and dietary supplements
`
`2753799
`
`Application Date
`
`03/30/2001
`
`08/19/2003
`
`Foreign Priority
`Date
`NATURE MADE WELLNESS ADVISOR
`
`NONE
`
`NONE
`
`Class 042. First use: First Use: 2001/11/01 First Use In Commerce: 2001/11/01
`Providing customized online web pages featuring user-defined information
`relating to health, diet and lifestyle; testing to determine personal profiles in the
`fields of health, diet and lifestyle via a global computer network
`
`Attachments
`
`75611024#TMSN.gif ( 1 page )( bytes )
`77429626#TMSN.jpeg ( 1 page )( bytes )
`75792940#TMSN.gif ( 1 page )( bytes )
`76233111#TMSN.gif ( 1 page )( bytes )
`Notice of Opposition re 77299278.PDF ( 6 pages )(146940 bytes )
`
`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
`
`/DJR/
`Daniel J. Russell
`11/25/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark Application
`Serial No. 77/ 299278
`
`Filed: October 9, 2007
`
`Mark: NATURMED and Design
`
`Published: July 29, 2008
`
`Opposition No.:
`
`)
`)
`)
`
`) )
`
`) )
`
`) )
`
`) )
`
`)
`
`Pharmavite LLC
`
`V.
`
`Naturmed, Inc.
`
`Opposer,
`
`Applicant.
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`Pharmavite LLC believes that it will be damaged by the registration of the mark
`
`shown in US. Trademark Application Serial No. 77/299278 in International Class 5 and,
`
`by and through its undersigned attorneys, hereby opposes the same. As grounds for
`
`opposition, it is alleged that:
`
`1.
`
`Pharmavite LLC (hereinafter ”Opposer”) is a California limited liability company
`
`with an address of 8520 Balboa Blvd., Suite 300, Northridge, California 91325.
`
`
`
`2.
`
`Upon
`
`information
`
`and belief, Applicant Naturmed,
`
`Inc.,
`
`(hereinafter
`
`”Applicant”) is a Nevada corporation with an address of Suite C 661 E. Howards Road,
`
`Camp Verde, Arizona 86322.
`
`3.
`
`Upon information and belief, Applicant seeks to register the mark NATURMED
`
`and Design for goods identified as ”vitamins; dietary and nutritional supplements” in
`
`International Class 5.
`
`4.
`
`Upon information and belief, the subject application was filed on October 9, 2007,
`
`based on an intent to use, and was published for opposition in the Official Gazette on
`
`July 29, 2008.
`
`5.
`
`Opposer is the owner of numerous trademarks and trademark registrations,
`
`including marks either including or wholly comprised of the phrase NATURE MADE
`
`for various goods and services. Opposer’s marks include:
`
`
`Re . N 0.
`Goods/Services
`
`
`Vitamins, minerals and dietary supplements, in
`International Class 5
`
`1963505
`
`Vitamins, mineral supplements and dietary
`supplements, in International Class 5
`
`
`
`
`
`
`
`2451597
`
`Mark
`
`NATURE MADE
`
`
`
`
`
`
`
`Dietary supplements, in International Class 5
`
`3520080
`
`
`
`
`
`NATURE MA DE ESSENTIAL 2592200
`
`Vitamins, minerals and dietary supplements, in
`International Class 5
`
`NATURE MADE WELLNESS
`ADVISOR
`
`2753799
`
`
`
`Providing customized online web pages
`featuring user—defined information relating to
`health, diet and lifestyle; testing to determine
`personal profiles in the fields of health, diet and
`lifestyle via a global computer network, in
`International Class 42
`
`6.
`
`Opposer adopted and commenced interstate use of the mark NATURE MADE
`
`for vitamins, minerals and dietary supplements long prior to any date which may be
`
`lawfully claimed by Applicant.
`
`7.
`
`Opposer adopted and commenced interstate use of its NATURE MADE marks
`
`for vitamins, minerals and dietary supplements, and services related to health, diet and
`
`lifestyle, long prior to any date which may be lawfully claimed by Applicant.
`
`8.
`
`There is no issue as to priority. Opposer has used its NATURE MADE mark
`
`since at
`
`least as early as January 25, 1971 for vitamins, minerals, and dietary
`
`supplements. This date of first use precedes Applicant's October 9, 2007 filing date.
`
`9.
`
`By virtue of its efforts, and the expenditure of considerable sums for advertising
`
`and promotion over many years, Opposer’s NATURE MADE marks enjoy considerable
`
`notoriety and fame among the purchasing public, particularly in the field of vitamins,
`
`minerals, and dietary supplements.
`
`
`
`10.
`
`By virtue of Opposer’s considerable sales as well as the high quality of its
`
`products and services, Opposer’s NATURE MADE marks enjoy considerable and
`
`valuable goodwill
`
`for vitamins, minerals, and dietary supplements, and services
`
`relating to health, diet and lifestyle, among other goods and services.
`
`11. When used in connection with the Applicant's goods, Applicant's mark so nearly
`
`resembles Opposer’s NATURE MADE marks as to result in confusion, mistake, and/ or
`
`deception in that
`
`the public will wrongly assume that Opposer has approved of
`
`Applicant,
`
`is affiliated with Applicant, or has otherwise sanctioned, sponsored, or
`
`licensed the goods of Applicant.
`
`12.
`
`If Applicant is permitted to use and register the above-referenced proposed mark
`
`for the goods named, confusion, deception and / or mistake in the trade would likely
`
`occur, thereby causing damage and injury to Opposer. Persons familiar with Opposer’s
`
`NATURE MADE marks would be likely to believe that Applicant's goods are offered
`
`by, licensed by, sponsored by, or are in some way connected, related or associated with
`
`Opposer.
`
`13.
`
`The registration of Applicant's mark will cause the dilution of the distinctive
`
`quality of Opposer’s marks, to Opposer’s irreparable damage.
`
`
`
`WHEREFORE, Opposer prays that
`
`this opposition be granted and that
`
`Applicant's Application Serial No. 77/299278 for the mark NATURMED and Design be
`
`abandoned.
`
`The United States Patent & Trademark Office is hereby authorized to charge any
`
`additional fees or credit any overpayment to our Deposit Account No. 02-2666.
`
`Please also find attached proof of service of the Notice of Opposition on
`
`Applicant's attorney of record.
`
`Dated:
`
`/I '19 52%
`
`Respectfully submitted,
`
`PHARMAVITELLC
`Q 6
`
`(
`
`Stanley W. Sokoloff
`Lori S. Kozak
`
`Daniel]. Russell
`
`BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, LLP
`
`12400 Wilshire Boulevard, Seventh Floor
`Los Angeles, CA 90025
`(310) 207-3800
`
`
`
`PROOF OF SERVICE
`
`1, Adriana Vidal, hereby declare that I am employed by the law firm of
`
`BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, 12400 Wilshire Boulevard, Seventh
`
`Floor, Los Angeles, California 90025—1026; that I am over 18 years of age and not a party
`
`to the within action; and that I served the following document: NOTICE OF
`OPPOSITION relating to Application No. 77/299278 this 25% day of November, 2008,
`
`by causing a true copy to be deposited in the United States Mail, first class postage
`
`prepaid to the address listed in the USPTO online TARR database for the Applicant's
`
`attorney of record, as follows:
`
`Clinton]. Cusick
`Muskin & Cusick LLC
`
`30 Vine St
`
`Ste 6
`
`Lansdale, PA 19446-3635
`
`I certify under penalty of perjury that the foregoing is true and correct. Executed
`at Los Angeles, California this 25%day of November, 2008.
`
`ggm 14¢
`
`Name: Adriana Vidal
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