Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA289776
`ESTTA Tracking number:
`06/15/2009
`
`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
`
`Unit Parts Company
`06/14/2009
`
`4600 SE 59th Street
`Oklahoma City, OK 73135
`UNITED STATES
`
`Attorney
`information
`
`Bradley M. Stohry
`ICE MILLER LLP
`One American Square Suite 2900
`Indianapolis, IN 46282-0200
`UNITED STATES
`ipdocket@icemiller.com, stohry@icemiller.com, jansen@icemiller.com
`Phone:317-236-2100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`77077415
`06/15/2009
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/16/2008
`06/14/2009
`
`NONE
`
`Unipart Group Limited
`Unipart House Garsington Road, Cowley
`Oxford OX4 2PG,
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 007.
`All goods and services in the class are opposed, namely: Radiators for motor land vehicles; parts and
`fittings for engines for motor land vehicles, namely, internal combustion land vehicle engine parts,
`namely, pistons and piston rings, piston sleeves and liners, engine bearings, gaskets, engine valves,
`oil seals for use in relation to motor vehicle engines, intake and exhaust valves, valve guides, valve
`seals and valve spring seals, cam shafts, timing chains, timing chain tensioners, head gaskets, head
`gasket repair sets, namely, head gasket seals, replacement gaskets, bolts and fasteners all for use in
`relation to the repair of motor vehicle engines, big end bearings, main bearings, small end bearings,
`top gaskets, air filters, fuel filters, thrust washers, engine blocks, crankshafts, hydraulic lifters, tappets
`and timing chains, cylinder heads, valves, rocker shafts, rocker arms and rocker shaft axles, oil
`pumps, water pumps, cooling fans, valley cover gaskets, rocker cover gaskets, timing cover gaskets,
`top end gaskets, bottom end gaskets, crankshaft seals, t-cross seals, oil strainer gaskets, oil pump
`gaskets, sump gaskets, exhaust manifold gaskets, water pump gaskets, valve guide seals, rocker
`covers, fuel injection systems, oil sump covers, carburetors, starter motors, ignition systems,
`distributor caps, ignition coil units, spark plugs, fly wheels and head bolts for use in relation to motor
`
`

`
`vehicle engines
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`77077418
`06/15/2009
`
`NONE
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/23/2008
`
`NONE
`
`Unipart Group Limited
`Unipart House Garsington Road, Cowley
`Oxford OX4 2PG,
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 007.
`All goods and services in the class are opposed, namely: Radiators for motor land vehicles; parts and
`fittings for engines for motor land vehicles, namely, internal combustion land vehicle engine parts,
`namely, pistons and piston rings, piston sleeves and liners, engine bearings, gaskets, engine valves,
`oil seals for use in relation to motor vehicle engines, intake and exhaust valves, valve guides, valve
`seals and valve spring seals, cam shafts, timing chains, timing chain tensioners, head gaskets, head
`gasket repair sets, namely, head gasket seals, replacement gaskets, bolts and fasteners all for use in
`relation to the repair of motor vehicle engines, big end bearings, main bearings, small end bearings,
`top gaskets, air filters, fuel filters, thrust washers, engine blocks, crankshafts, hydraulic lifters, tappets
`and timing chains, cylinder heads, valves, rocker shafts, rocker arms and rocker shaft axles, oil
`pumps, water pumps, cooling fans, valley cover gaskets, rocker cover gaskets, timing cover gaskets,
`top end gaskets, bottom end gaskets, crankshaft seals, t-cross seals, oil strainer gaskets, oil pump
`gaskets, sump gaskets, exhaust manifold gaskets, water pump gaskets, valve guide seals, rocker
`covers, fuel injection systems, oil sump covers, carburetors, starter motors, ignition systems,
`distributor caps, ignition coil units, spark plugs, fly wheels and head bolts for use in relation to motor
`vehicle engines
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`77300601
`
`NONE
`
`Word Mark
`Design Mark
`
`UNIT PARTS
`
`Application Date
`
`10/10/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 007. First use: First Use: 1972/12/31 First Use In Commerce: 1972/12/31
`Starter motors; Starters for motors and engines; Alternators for land vehicles
`
`Attachments
`
`77300601#TMSN.jpeg ( 1 page )( bytes )
`INDY-2341754-v1-UNIPART_-_Notice_of_Opposition.pdf ( 4 pages )(15127
`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
`
`/bms/
`Bradley M. Stohry
`06/15/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Serial Nos. 77/077,415 and 77/077,418
`For the Mark UNIPART and UNIPART (and Design)
`Filed on January 5, 2007
`
`Opposition No.:______________
`
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`
`Unit Parts Company,
`
`Opposer
`
`v.
`
`Unipart Group Limited,
`
`Applicant
`
`NOTICE OF OPPOSITION
`
`Unit Parts Company, a Delaware corporation, having a place of business at 4600 SE 59th
`
`Street, Oklahoma City, Oklahoma 73135 ("Opposer"), believes that it will be damaged by the
`
`registration of the above-identified UNIPART and UNIPART (and Design) marks (collectively,
`
`the "UNIPART Marks"), and hereby opposes the same. The applications for the UNIPART
`
`Marks (collectively, the "UNIPART Applications") are owned by Unipart Group Limited, which
`
`is a United Kingdom corporation, having a place of business at Unipart House Garsington Road,
`
`Cowley, Oxford OX4 2PG, United Kingdom ("Applicant"). The grounds for opposition are as
`
`follows:
`
`1.
`
`Opposer is a remanufacturer of automotive parts, whose products include starter
`
`motors, starters for motors and engines, and alternators for vehicles. Opposer's products are sold
`
`throughout the United States.
`
`2.
`
`Opposer is the owner of the UNIT PARTS trademark, which Opposer uses in
`
`connection with several products, including starter motors, starters for motors and engines, and
`
`alternators for vehicles.
`
`

`
`3.
`
`Opposer previously owned U.S. Reg. Nos. 1,414,150 and 1,425,487 for the UNIT
`
`PARTS mark. However, Opposer inadvertently allowed those registrations to be cancelled.
`
`4.
`
`Opposer is the owner of U.S. Trademark Serial No. 77/300,601, which Opposer filed
`
`with the United States Patent and Trademark Office on October 10, 2007, for the trademark
`
`UNIT PARTS in Class 7 for "Starter motors; Starters for motors and engines; Alternators for
`
`land vehicles." A true and accurate copy of Opposer's trademark application for the UNIT
`
`PARTS mark is attached hereto as Exhibit A.
`
`5.
`
`While Opposer does not currently own a trademark registration for the UNIT PARTS
`
`mark, Opposer has been using the UNIT PARTS mark to identify the source of its products in
`
`commerce since at least as early as 1972. Since that time, Opposer has established substantial
`
`goodwill in the UNIT PARTS mark.
`
`6.
`
`The UNIT PARTS mark has come to indicate and stand for the high quality products
`
`offered by Opposer.
`
`7.
`
`As a result of the extensive use of the UNIT PARTS mark by Opposer, the UNIT
`
`PARTS mark has become, and continues to be, a valuable property right of Opposer.
`
`8.
`
`The description of services for the UNIPART Applications indicate that Applicant
`
`sells a variety of automotive parts.
`
`9.
`
`The UNIPART Applications were filed by Applicant under Section 44(e) and
`
`Applicant did not provide the USPTO with evidence of its use of the UNIPART Marks in the
`
`U.S. However, upon information and belief, Applicant is currently using the UNIPART Marks
`
`in the U.S.
`
`10.
`
`Upon information and belief, Opposer's actual, continuous, and continuing use of the
`
`UNIT PARTS mark began long before Applicant began using its UNIPART marks in the U.S.
`
`

`
`11.
`
`Because of the similarities between the UNIT PARTS mark and the UNIPART Marks
`
`(as well as the similarities between Opposer's and Applicant's products and target markets), the
`
`use and registration of the UNIPART Marks is likely to result in confusion and substantial
`
`damage and injury to Opposer. Persons familiar with Opposer's UNIT PARTS mark are likely to
`
`buy Applicant's products under the mistaken belief that they originate with, or are licensed,
`
`sponsored or approved by Opposer. Any such confusion would inevitably result in loss of sales
`
`to Opposer, and tarnish Opposer's goodwill and reputation established in the UNIT PARTS
`
`mark.
`
`WHEREFORE, Opposer prays that Trademark Serial Nos. 77/077,415 and 77/077,418 be
`
`rejected.
`
`Dated this 15th day of June, 2009.
`
`Respectfully submitted,
`
`By: s/Bradley M. Stohry
`Attorney for Opposer
`Bradley M. Stohry
`ICE MILLER LLP
`One American Square
`Suite 2900
`Indianapolis, Indiana 46282-0200
`(317) 236-2100
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was served upon the following by
`first-class United States mail, postage prepaid, on June 15, 2009:
`
`JEFFREY A PORTER
`REED SMITH LLP
`1650 MARKET STREET
`2500 ONE LIBERTY PLACE
`PHILADELPHIA, PA 19103
`
`By: s/Bradley M. Stohry
`Attorney for Opposer