Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA289119
`ESTTA Tracking number:
`06/10/2009
`
`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
`
`Apex, LLC
`06/10/2009
`
`100 Main Street
`Pawtucket, RI 02860
`UNITED STATES
`
`Attorney
`information
`
`Brent Canning
`Apex, LLC
`100 Main Street
`Pawtucket, RI 02860
`UNITED STATES
`trademarks@theapexcompanies.com
`Applicant Information
`
`77423772
`06/10/2009
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`CHEMPORT INCORPORATION
`JBCB 15-1 Dongsu-dong
`Naju-si, Jeollanam-do,
`KOREA, REPUBLIC OF
`Goods/Services Affected by Opposition
`
`02/10/2009
`06/10/2009
`
`NONE
`
`Class 030.
`All goods and services in the class are opposed, namely: Energy food not for medical use mainly
`comprised of grains, namely, energy bars; pizzas, baking powder, biscuits, cakes, bread rolls, rice
`cakes; a cake made from wheat flour, oil, and honey; bars of sweet jellied bean paste; processed
`grains; and processed wheat
`Class 032.
`All goods and services in the class are opposed, namely: Vegetable juices for beverages, extracts of
`hops for making beer, fruit powders and fruit syrups used in the preparation of soft drinks and sports
`beverages, orange juice, aerated water, isotonic beverages, tomato juice, drinking water, bottled
`water, and beer
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`
`ESTTA289119
`ESTTA Tracking number:
`06/10/2009
`
`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
`
`Apex, LLC
`06/10/2009
`
`100 Main Street
`Pawtucket, RI 02860
`UNITED STATES
`
`Attorney
`information
`
`Brent Canning
`Apex, LLC
`100 Main Street
`Pawtucket, RI 02860
`UNITED STATES
`trademarks@theapexcompanies.com
`Applicant Information
`
`77423772
`06/10/2009
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`CHEMPORT INCORPORATION
`JBCB 15-1 Dongsu-dong
`Naju-si, Jeollanam-do,
`KOREA, REPUBLIC OF
`Goods/Services Affected by Opposition
`
`02/10/2009
`06/10/2009
`
`NONE
`
`Class 030.
`All goods and services in the class are opposed, namely: Energy food not for medical use mainly
`comprised of grains, namely, energy bars; pizzas, baking powder, biscuits, cakes, bread rolls, rice
`cakes; a cake made from wheat flour, oil, and honey; bars of sweet jellied bean paste; processed
`grains; and processed wheat
`Class 032.
`All goods and services in the class are opposed, namely: Vegetable juices for beverages, extracts of
`hops for making beer, fruit powders and fruit syrups used in the preparation of soft drinks and sports
`beverages, orange juice, aerated water, isotonic beverages, tomato juice, drinking water, bottled
`water, and beer
`
`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
`
`1847961
`
`08/02/1994
`
`Application Date
`
`08/27/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APEX
`
`NONE
`
`Class 042. First use: First Use: 1942/09/00 First Use In Commerce: 1942/09/00
`retail department store services
`
`U.S. Registration
`No.
`Registration Date
`
`2155905
`
`05/12/1998
`
`Application Date
`
`05/25/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APEX
`
`NONE
`
`Class 037. First use: First Use: 1924/00/00 First Use In Commerce: 1924/00/00
`automotive repair and maintenance services
`Class 042. First use: First Use: 1924/00/00 First Use In Commerce: 1924/00/00
`retail automobile parts and accessories stores
`
`U.S. Registration
`No.
`Registration Date
`
`2454720
`
`05/29/2001
`
`Word Mark
`Design Mark
`
`APEX
`
`Application Date
`
`10/19/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 012. First use: First Use: 1998/11/13 First Use In Commerce: 1998/11/13
`anti-theft alarms for vehicles, namely programmable anti-theft alarms, horns,
`trunk releases, flashing parking lights, shock sensors, plug-in connectors and
`starter disable relays all for vehicles, and all sold together as a unit
`
`U.S. Registration
`
`2562812
`
`Application Date
`
`08/23/1999
`
`
`
`No.
`Registration Date
`
`04/23/2002
`
`Word Mark
`Design Mark
`
`APEX ONLINE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1996/11/01 First Use In Commerce: 1996/11/01
`Retail store, mail order purchase and computerized on-line retail services,
`featuring, domestics, furniture, bedding, kitchenware, major appliances, small
`appliances, housewares, bathroom accessories, living room and bedroom
`accessories, table top accessories, flatware, power equipment, electronics,
`photography, jewelry, cosmetics, toys, giftware, music and video, gardening,
`handbags, sporting goods, clocks, luggage, home office, grills, clothing, men# s
`and ladies# accessories, shoes, athletic footwear, novelties, food and Christmas
`items
`
`U.S. Registration
`No.
`Registration Date
`
`2443933
`
`04/17/2001
`
`Word Mark
`Design Mark
`
`APEX STORES
`
`Application Date
`
`08/23/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1996/11/01 First Use In Commerce: 1996/11/01
`Retail store, mail order purchase and computerized on-line retail services,
`featuring, domestics, furniture, bedding, kitchenware, major appliances, small
`appliances, housewares, bathroom accessories, living room and bedroom
`accessories, table top accessories, flatware, power equipment, electronics,
`photography, jewelry, cosmetics, toys, giftware, music and video, gardening,
`handbags, sporting goods, clocks, luggage, home office, grills, clothing, men's
`and ladies' accessories, shoes, athletic footwear, novelties, food and Christmas
`items
`
`
`
`U.S. Registration
`No.
`Registration Date
`
`2657639
`
`12/10/2002
`
`Word Mark
`Design Mark
`
`APEX MALL
`
`Application Date
`
`11/01/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1966/00/00 First Use In Commerce: 1966/00/00
`SHOPPING MALL SERVICES AND LEASING OF SHOPPING MALL SPACE
`
`U.S. Registration
`No.
`Registration Date
`
`3557603
`
`01/06/2009
`
`Word Mark
`Design Mark
`
`APEX COMPANIES
`
`Application Date
`
`07/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`Shopping Mall services, namely, leasing and management of shopping mall
`space; real estate management; financial services in the nature of investments
`and financing in the field of real estate, securities, debt, venture capital and
`loans
`Class 037. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`Real estate development
`
`U.S. Registration
`No.
`Registration Date
`
`2918976
`
`01/18/2005
`
`Word Mark
`Design Mark
`
`APEX ADVANTAGE
`
`Application Date
`
`10/27/2003
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 040. First use: First Use: 1996/12/01 First Use In Commerce: 2002/09/01
`CUSTOM FINISHING AND EMBELLISHMENT OF PROMOTIONAL ITEMS,
`NAMELY, EMBROIDERY, EMBOSSING, ENGRAVING, CUSTOMIZED
`PRINTING, IMPRINTING, SCREEN PRINTING AND PAD PRINTING WITH
`COMPANY NAMES, LOGOS, MONOGRAMS, WORDS, AND/OR PICTURES
`FOR PROMOTIONAL AND ADVERTISING PURPOSES ON THE GOODS OF
`OTHERS, NAMELY, SPORTSWEAR, APPAREL AND OTHER PRODUCTS
`
`U.S. Registration
`No.
`Registration Date
`
`3244685
`
`05/22/2007
`
`Word Mark
`Design Mark
`
`APEX COMPANIES
`
`Application Date
`
`07/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 040. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`custom finishing and embellishment of promotional items, namely, embroidery,
`embossing, engraving, customized printing, imprinting, screen printing and pad
`printing with company names, logos, monograms, words, and/or pictures for
`promotional and advertising purposes on the goods of others, namely,
`sportswear, apparel and other products
`
`U.S. Registration
`No.
`Registration Date
`
`3356317
`
`12/18/2007
`
`Word Mark
`Design Mark
`
`APEX COMPANIES
`
`Application Date
`
`07/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`
`
`Goods/Services
`
`Class 042. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`Computer services, namely, creating indexes of information, sites, and other
`resources available on computer networks; computer services, namely,
`providing search engines for obtaining data on a global computer network
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`77588785
`
`Application Date
`
`10/08/2008
`
`Foreign Priority
`Date
`
`NONE
`
`NONE
`
`APEX
`
`NONE
`
`Class 041. First use: First Use: 1951/00/00 First Use In Commerce: 1951/00/00
`Arranging of seminars; Educational demonstrations; Educational services,
`namely, providing classes, seminars, workshops, training and instruction in the
`fields of personal and professional topics of interest
`
`U.S. Application
`No.
`Registration Date
`
`77588760
`
`NONE
`
`Word Mark
`Design Mark
`
`APEX UNIVERSITY
`
`Application Date
`
`10/08/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1994/00/00 First Use In Commerce: 1995/01/01
`Arranging of seminars; Educational demonstrations; Educational services,
`namely, providing classes, seminars, workshops, training and instruction in the
`fields of personal and professional topics of interest
`
`U.S. Application
`
`78928022
`
`Application Date
`
`07/12/2006
`
`
`
`No.
`Registration Date
`
`NONE
`
`Word Mark
`Design Mark
`
`APEX COMPANIES
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 035. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`Promoting the goods and services of others by placing advertisements and
`promotional displays in an electronic site accessed through computer networks;
`providing an on-line advertising guide featuring the goods and services of
`others; electronic retailing services and ordering services via computer featuring
`a wide variety of merchandise; Retail store and advertising services, featuring a
`wide variety of merchandise; arranging for others the repair, service and
`replacement of a wide variety of general merchandise and vehicles; retail
`automobile parts and accessories stores; retail store services featuring customer
`pick-up and/or payment of newly purchased or repaired merchandise; pick up
`and delivery services; business, advertising, marketing and management
`consulting services
`Class 037. First use: First Use: 2002/09/01 First Use In Commerce: 2002/09/01
`Automobile repair and maintenance
`
`75826147#TMSN.gif ( 1 page )( bytes )
`75781411#TMSN.gif ( 1 page )( bytes )
`75781412#TMSN.gif ( 1 page )( bytes )
`75836787#TMSN.gif ( 1 page )( bytes )
`78928052#TMSN.jpeg ( 1 page )( bytes )
`78928036#TMSN.jpeg ( 1 page )( bytes )
`78928010#TMSN.jpeg ( 1 page )( bytes )
`77588785#TMSN.jpeg ( 1 page )( bytes )
`77588760#TMSN.jpeg ( 1 page )( bytes )
`78928022#TMSN.jpeg ( 1 page )( bytes )
`Apex --- Notice of Opposition v Chemport 6.10.09.pdf ( 9 pages )(35444 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
`
`/gailyc c. sonia/
`Gailyc C. Sonia
`
`
`
`Date
`
`06/10/2009
`06/1°/2°09
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`)
`)
`)
`)
`) Opposition No.:
`)
`)
`)
`)
`)
`
`In the matter of Application Serial No. 77/423,772
`
`
`
`
`
`
`
`
`
`
`
`APEX, LLC,
`Opposer
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`CHEMPORT INCORPORATION,
`
`
`
`
`
`
`
`Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Apex, LLC, a limited liability company organized and existing under the laws of
`
`
`
`
`
`the State of Rhode Island, having a business address of 100 Main Street, Pawtucket,
`
`Rhode Island 02860 (“Opposer”), believes that it will be damaged by registration of
`
`Application Serial No. 77/423,772 for the mark MEGAPEX & Design as it relates to
`
`goods in International Class 30, namely, “Energy food not for medical use mainly
`
`comprised of grains, namely, energy bars; pizzas, baking powder, biscuits, cakes, bread
`
`rolls, rice cakes; a cake made from wheat flour, oil, and honey; bars of sweet jellied bean
`
`paste; processed grains; and processed wheat”, and in International Class 32, namely
`
`“Vegetable juices for beverages, extracts of hops for making beer, fruit powders and fruit
`
`syrups used in the preparation of soft drinks and sports beverages, orange juice, aerated
`
`water, isotonic beverages, tomato juice, drinking water, bottled water, and beer” (the
`
`“Chemport Mark”). The grounds for opposition are as follows:
`
`
`PRV 953065.2
`
`
`
`Apex and its Marks
`
`
`
`1. Since at least as early as 1924, Opposer and its predecessors and their
`
`affiliates (collectively, "Apex") have used the mark “APEX” and other marks
`
`incorporating the word “APEX” (collectively the “Apex Marks”). Over the past 85 years,
`
`Apex has used the Apex Marks on and in connection with retail services, retail stores, and
`
`on-line retail stores and services, featuring retail services, food items, kitchenware,
`
`appliances, housewares, accessories, gifts, novelty items, gardening products, gadgets,
`
`automotive items, and holiday items; manufacturing services; automotive services and
`
`sales of automotive parts and accessories; commercial and residential real estate
`
`development and construction services; real estate management services; and advertising
`
`and marketing businesses, among others.
`
`
`
`2. Opposer is the owner of common law rights in the mark “APEX,” as a
`
`result of the continuous use of the APEX mark by Apex since at least as early as 1924.
`
`
`
`3. Opposer owns the following U.S. registrations for its APEX family of
`
`trademarks and service marks, among others:
`
`Mark
`
`APEX
`
`APEX
`
`Registration No./
`Serial No.
`1,847,961
`
`Issue Date/
`Filing Date
`8/2/1994
`
`2,155,905
`
`5/12/1998
`
`APEX
`
`2,454,720
`
`5/29/2001
`
`Goods and Services
`
`Retail department store services
`(Class 42)
`Automotive repair and maintenance
`services (Class 37); retail automobile
`parts and accessories stores (Class
`42)
`Anti-theft alarms for vehicles, namely
`programmable anti-theft alarms,
`horns, trunk releases, flashing parking
`lights, shock sensors, plug-in
`connectors and starter disable relays
`all for vehicles, and all sold together
`as a unit (Class 12)
`
`
`
`- 2 -
`
`
`
`
`
`APEX ONLINE
`
`2,562,812
`
`4/23/2002
`
`APEX STORES
`
`2,443,933
`
`4/17/2001
`
`APEX MALL
`
`2,657,639
`
`12/10/2002
`
`APEX
`COMPANIES
`
`3,557,603
`
`1/6/2009
`
`APEX
`ADVANTAGE
`
`
`2,918,976
`
`1/18/2005
`
`Retail store, mail order purchase and
`computerized online retail services,
`featuring, domestics, furniture,
`bedding, kitchenware, major
`appliances, small appliances, house
`wares, bathroom accessories, living
`room and bedroom accessories, table
`top accessories, flatware, power
`equipment, electronics, photography,
`jewelry, cosmetics, toys, giftware,
`music and video, gardening,
`handbags, sporting goods, clocks,
`luggage, home office, grills, clothing,
`men's and ladies' accessories, shoes,
`athletic foot wear, novelties, food and
`Christmas items (Class 35)
`Retail store, mail order purchase and
`computerized online retail services,
`featuring, domestics, furniture,
`bedding, kitchenware, major
`appliances, small appliances, house
`wares, bathroom accessories, living
`room and bedroom accessories, table
`top accessories, flatware, power
`equipment, electronics, photography,
`jewelry, cosmetics, toys, giftware,
`music and video, gardening,
`handbags, sporting goods, clocks,
`luggage, home office, grills, clothing,
`men's and ladies' accessories, shoes,
`athletic foot wear, novelties, food and
`Christmas items (Class 35)
`Shopping mall services and leasing of
`shopping mall space (Class 36)
`Shopping Mall services, namely,
`leasing and management of shopping
`mall space; real estate management;
`financial services in the nature of
`investments and financing in the field
`of real estate, securities, debt, venture
`capital and loans (Class 36); Real
`estate development (Class 37)
`Custom finishing and embellishment
`of promotional items, namely,
`embroidery, embossing, engraving
`
`
`
`- 3 -
`
`
`
`
`
`APEX
`COMPANIES
`
`3,244,685
`
`5/22/2007
`
`APEX
`COMPANIES
`
`3,356,317
`
`12/18/2007
`
`APEX
`
`77/588,785
`
`10/8/2008
`
`APEX
`UNIVERSITY
`
`77/588,760
`
`10/8/2008
`
`APEX
`COMPANIES
`
`78/928,022
`
`7/12/2006
`
`customized printing, imprinting,
`screen printing and pad printing with
`company names, logos, monograms,
`words and/or pictures for promotional
`and advertising purposes on the
`goods of others, namely, sportswear,
`apparel and other products (Class 40)
`Custom finishing and embellishment
`of promotional items, namely,
`embroidery, embossing, engraving
`customized printing, imprinting,
`screen printing and pad printing with
`company names, logos, monograms,
`words and/or pictures for promotional
`and advertising purposes on the
`goods of others, namely, sportswear,
`apparel and other products (Class 40)
`Computer services, namely, creating
`indexes of information, sites and
`other resources available on computer
`networks; computer
`services, namely, providing search
`engines for obtaining data on a global
`computer network (Class 42)
`Arranging of seminars; Educational
`demonstrations; Educational services,
`namely, providing classes, seminars,
`workshops, training and instruction in
`the fields of personal and professional
`topics of interest (Class 41)
`Arranging of seminars; Educational
`demonstrations; Educational services,
`namely, providing classes, seminars,
`workshops, training and instruction in
`the fields of personal and professional
`topics of interest (Class 41)
`Promoting the goods and services of
`others by placing advertisements and
`promotional displays in an electronic
`site accessed through computer
`networks; providing an on-line
`advertising guide featuring the goods
`and services of others; electronic
`retailing services and ordering
`services via computer featuring a
`
`
`
`- 4 -
`
`
`
`
`
`wide variety of merchandise; Retail
`store and advertising services,
`featuring a wide variety of
`merchandise; arranging for others the
`repair, service and replacement of a
`wide variety of general merchandise
`and vehicles; retail automobile parts
`and accessories stores; retail store
`services featuring customer pick-up
`and/or payment of newly purchased
`or repaired merchandise; pick up and
`delivery services; business,
`advertising, marketing and
`management consulting services
`(Class 35); automobile repair and
`maintenance (Class 37)
`
`4. Registration No. 1,847,961 for the mark APEX, and Registration No.
`
`
`
`2,155,905 for the mark APEX have both been renewed pursuant to the applicable
`
`provisions of the Lanham Act, and affidavits of incontestability have been filed and
`
`acknowledged.
`
`
`
`5. Affidavits of continued use have been filed and accepted, and affidavits
`
`of incontestability have been filed and acknowledged, in connection with Registration
`
`No. 2,562,812 for the mark APEX ONLINE, Registration No. 2,443,933 for the mark
`
`APEX STORES, Registration No. 2,657,639 for APEX MALL, and Registration No.
`
`2,454,720 for the mark APEX.
`
`
`
`6. Opposer has spent a considerable amount of money, time and energy in
`
`connection with the advertising, marketing and promotion of products and services
`
`bearing the APEX trademark. As a result, the APEX trademark has become famous, and
`
`the public has come to identify the APEX trademark with Opposer and its goods and
`
`services.
`
`
`
`- 5 -
`
`
`
`
`
`
`
`
`
`Applicant and its Marks
`
`
`
`7. Upon information and belief, Chemport Incorporation (“Applicant”) is a
`
`Korean corporation with a business address at JBCB 15-1 Dongsu-dong, Naju-si,
`
`Jeollanam-do, Republic of Korea.
`
`
`
`8. Applicant is the record owner of the following U.S. Trademark
`
`Application for the mark MEGAPEX & Design:
`
`Application No.
`
`Filing Date
`
`Goods and Services
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`77/423,772
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`March 17, 2008
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`food for babies; pharmaceutical preparations, namely,
`medicines for sensory organs, medicines for diabetics,
`metabolic preparations, agent for immunity
`adjustment; mineral supplements, vitamin
`supplements, anti-inflammatory agent; pharmaceutical
`preparations, namely, medicines for circulatory organs,
`nervines, agents affecting central nervous system;
`dietary food supplements for medical use; food and
`dietary supplements for nutritional purpose; food
`supplement not for medical use mainly comprised of
`grains; and food supplement not for medical use
`mainly comprised of edible oils, in International Class
`5;
`edible fats, edible oils, fatty substances for the
`manufacture of edible foods, human and animal food
`additives derived from edible fish oils and fats,
`powdered oil and fat for food, edible fish oils, and
`energy food not for medical use mainly comprised of
`fish and shellfish, namely, energy bars, in International
`Class 29;
`energy food not for medical use mainly comprised of
`grains, namely, energy bars; pizzas, baking powder,
`biscuits, cakes, bread rolls, rice cakes; a cake made
`from wheat flour, oil, and honey; bars of sweet jellied
`bean paste; processed grains; and processed wheat, in
`International Class 30;
`pet food, beverages for pets, live animals for breeding,
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`live fishing bait, foodstuffs for dogs, unprocessed
`grains, unprocessed edible seeds, agricultural seeds,
`unprocessed wheat, unprocessed rice, and bird food, in
`International class 31; and
`vegetable juices for beverages, extracts of hops for
`making beer, fruit powders and fruit syrups used in the
`preparation of soft drinks and sports beverages, orange
`juice, aerated water, isotonic beverages, tomato juice,
`drinking water, bottled water, and beer, in
`International Class 32
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`COUNT I: LIKELIHOOD OF CONFUSION
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`9. Opposer repeats and incorporates herein by reference the averments in
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`the preceding paragraphs.
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`10. The Chemport Mark is very similar in appearance and commercial
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`impression to the Apex Marks.
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`11. The goods recited in Application No. 77/423,722 in International
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`Classes 30 and 32 are closely related to those of Opposer, in particular, to Opposer’s
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`retail, mail order and online retail services, and the products sold via those services.
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`12. On information and belief, Opposer is the prior user of the APEX mark.
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`Consequently, Applicant’s date of first use for their mark is subsequent to Opposer’s
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`actual date of first use of the Apex Marks for the identical or closely related goods and
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`services.
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`13. In light of the foregoing, the Chemport Mark for the goods recited in
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`the opposed application, in International Classes 30 and 32, is confusingly similar to
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`Opposer’s Apex Marks and is likely to cause confusion or mistake, and to deceive the
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`public into believing that Applicant’s goods or services originate or are in some manner
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`sponsored, licensed, associated or otherwise authorized by Apex in violation of
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`Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
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`COUNT II: DILUTION
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`14. Opposer repeats and incorporates herein by reference the averments in
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`the preceding paragraphs.
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`15. Opposer is damaged and will continue to be damaged because
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`Applicant’s future use and registration of the Chemport Mark would dilute the distinctive
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`quality of Opposer’s Apex Marks.
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`PRAYER FOR RELIEF
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`WHEREFORE, Opposer respectfully requests that this Opposition be sustained and
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`that registration to Applicant for the MEGAPEX & Design trademark in International
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`Class 30 and in International Class 32 be denied.
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`
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`The filing fee of $600 for this Notice of Opposition is being submitted
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`APEX, LLC
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`By: /Gailyc C. Sonia/
`Gailyc C. Sonia
`Apex, LLC
`100 Main Street
`Pawtucket, RI 02860
`Tel: 401-729-7243
`Fax: 401-723.9452
`trademarks@theapexcompanies.com
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`- 8 -
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`electronically with this Notice.
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`June 10, 2009
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`CERTIFICATE OF ELECTRONIC MAILING
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`I hereby certify that the foregoing Notice of Opposition is being submitted
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`electronically through the Trademark Trial and Appeal Board's ESTTA System on this
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`10th day of June, 2009.
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`
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`/Gailyc C. Sonia/
`Gailyc C. Sonia
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION is being
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`deposited with the U.S. Postal Service with sufficient postage as first class mail this 10th
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`day of June, 2009 in an envelope addressed to Applicant's attorney of record at the
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`following address:
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`
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`Sangwon S. Kim
`LRK Patent Firm , LLC
`1952 Gallows Road, Suite 200
`Vienna VA 22182
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`/Gailyc C. Sonia/
`Gailyc C. Sonia
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`- 9 -
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