Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA343176
`ESTTA Tracking number:
`04/20/2010
`
`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.
`04/21/2010
`
`250 International ParkwaySuite 230
`Heathrow, FL 32746
`UNITED STATES
`
`Attorney
`information
`
`Allison R. Imber
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 S. Orange Avenue Suite 1401
`Orlando, FL 32801
`UNITED STATES
`aimber@addmg.com, dsigalow@addmg.com Phone:407-841-2330
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicants
`
`77000715
`04/20/2010
`
`NONE
`
`Craig Jameson Baillie
`9 Tynewydd Drive
`Castleton, Cardiff, CF3 8SB
`UNITED KINGDOM
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/22/2009
`04/21/2010
`
`NONE
`
`Stephen Lambert
`Ocle Pychard Lower Castleton
`Herefordshire, HR1 3RF
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Abacuses; adding machines; aerials;
`electric alarm bells, namely, fire and burglar alarms; alarms, namely, fire and burglar; answering
`machines, namely, telephone answering machines; anti-theft warning apparatus, namely, burglar
`alarms; apparatus and instruments for astronomy, namely, machines and instruments for
`astronomical measuring; balancing apparatus, namely, balancing scales; bar code readers;
`barometers; luminous beacons, namely, safety equipment in the nature of beacon lights; binoculars;
`buzzers; electrical buzzers; calculating machines, namely, calculators; camcorders; cinematographic
`cameras; photographic cameras; cash registers; cassette players, namely, audio and video cassette
`players; electrical cell switches, namely, light switches and power switches; cigar lighters for
`automobiles; clothing for protection against fire; coin-operated gates for car parks or parking lots;
`
`

`
`compact disc players; blank audio-video compact discs; blank read-only memory compact discs;
`directional compasses; computer keyboards; computer peripheral devices; computers; printers for
`use with computers; electrical connectors; containers for microscope slides; electric control panels;
`covers for electric outlets; smoke detectors; dictating machines; electric light dimmers as regulators;
`electrical distribution consoles; divers' face masks; dog whistles; dosage dispensers for dispensing
`predetermined dosages of medication; drying racks for photography; ear plugs for sleeping,
`swimming, and soundproofing; ear plugs for divers; sand glasses as egg timers; egg-candlers;
`electric door bells; fire extinguishers and parts therefor; facsimile machines; fire alarms; fire beaters,
`namely, a tool or non-flammable blanket used to put out fires; fire boats; fire engines; fire escapes,
`namely, fire escape ladders; fire extinguishing apparatus; fire hose nozzles; apparatus for games
`adapted for use with television receivers only goggles for sports; headphones; horns for
`loudspeakers; identification sheaths for electric wires; identification threads for electric wires; blank
`integrated circuit cards as smart cards; musical juke boxes; junction sleeves for electric cables; letter
`scales; leveling instruments, namely, level indicators; life belts; life buoys; life jackets; life nets; life-
`saving rafts; lighting ballasts; marine compasses; marine depth finders; marking buoys; measuring
`spoons; mechanical signs; micrometer gauges; money counting and sorting machines, namely,
`automated paper money sorting machines and coin counting and sorting machines; mouse for data
`processing equipment, namely, computer mouse, mouse pads; needles for record players; nose clips
`for divers and swimmers; parking meters; pedometers; sockets for electric connections; portable
`telephones; projection screens; protective helmets; protective helmets for sports; protection masks;
`push buttons for bells; optical character readers; audio and video receivers; telephone receivers;
`safety equipment, namely, reflecting discs for wear for the prevention of traffic accidents; respirators
`other than for artificial respiration; respiratory masks for non-medical purposes; safety restraints other
`than for vehicle seats and sports equipment; road signs that are luminous and mechanical; rulers as
`measuring instruments; signal bells; safety signal lanterns for use by railways; signaling buoys;
`luminous or mechanical signaling safety whistles; safety and railway signals that are luminous or
`mechanical; luminous signs; slide projectors; electrical sockets; electric plugs for electric connections;
`sound recording apparatus; spirit levels; stands for photographic apparatus; swimming jackets,
`namely, flotation vests; electrical switches; telephone apparatus; telephone receivers; telephone
`transmitters; telescopes; television apparatus, namely, television sets; temperature indicators;
`thermostats; thermostats for vehicles; time clocks as time recording devices; chronographs for use as
`specialized time recording apparatus; automatic time switches; vehicle breakdown warning triangles;
`video telephones; wind socks for indicating wind direction; word processors; emergency warning
`lights; helmet safety lights and flashing safety lights, all the aforesaid goods made from luminescent
`plastics
`Class 012.
`All goods and services in the class are opposed, namely: Directional signals for vehicles made from
`luminescent plastics
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`Personal consumer electronics
`
`Attachments
`
`Dual Logo BW.jpg
`Notice of Opposition.pdf ( 4 pages )(244029 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
`
`/Allison R. Imber/
`Allison R. Imber
`04/20/2010
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 77/000,715
`For the Mark DUAL GLO
`
`Published in the Official Gazette on December 22, 2009
`
`Namsung America, lnc.,
`Opposer,
`
`vs.
`
`Craig Jameson Baillie and
`Stephen Lambert,
`Applicants.
`
`Opposition No.
`
`I
`
`NOTICE OF OPPOSITION
`
`Opposer Namsung America, Inc. (“Opposer"), 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 DUAL GLO, shown in U.S.
`
`Trademark Application Serial No. 77/000,715, for various goods in International Classes 9 and
`
`12, and hereby opposes registration of the application pursuant to a second Extension of Time
`
`granted on February 23, 2010.
`
`The grounds for the Opposition are as follows:
`
`1.
`
`Applicant seeks to register the mark DUAL GLO as a trademark for various
`
`consumer electronic products and related goods in International Classes 9 and 12, inter alia, as
`
`evidenced by the publication of the mark in the Official Gazette on December 22, 2009.
`
`2.
`
`Applicant filed its application on September 20, 2006, initially under Section 1(b)
`
`and subsequently under both Section 1(b) and Section 44(e) based on its United Kingdom Reg.
`
`No. 2,345,904 and its intent to use the mark in commerce within the United States. Applicant
`has not yet filed an amendment to allege use in the United States in support of this application
`
`and, upon information and belief,
`
`is not yet selling its DUAL GLO products within the United
`
`States.
`
`

`
`3.
`
`Opposer has used the following DUAL (Stylized) mark in interstate commerce in
`
`the United States on goods within International Class 9 since at least as early as January of
`
`2003:
`
`Opposer has used the mark DUAL (Stylized) pursuant to an exclusive license from Namsung
`
`Corporation.‘
`
`4.
`
`Opposer has extensively promoted and continuously used the mark DUAL
`
`(Stylized) throughout the United States and has made significant sales of products under the
`
`mark; as a result, the mark has developed favorable acceptance and recognition for Opposer in
`
`the relevant industry.
`
`5.
`
`6.
`
`The mark DUAL (Stylized) is distinctive and is a valuable asset of Opposer.
`
`Opposer used the mark DUAL (Stylized) in commerce prior to the filing of
`
`AppIicant’s Trademark Application Serial No. 77/000,715 and, upon information and belief,
`
`before Applicant's first use of its mark DUAL GLO in commerce in the United States in
`
`connection with goods in International Classes 9 and 12.
`
`7.
`
`Applicant's mark DUAL GLO is confusingly and deceptively similar to the mark
`
`DUAL (Stylized). Applicant's mark adds only one (disclaimed) word to Opposer’s mark and is
`
`very similar in sight. sound, connotation, and commercial impression to Opposer’s mark.
`
`8.
`
`Applicant's goods are consumer electronic products that are very similar and
`
`closely related to goods offered by Opposer under Opposer’s mark.
`
`9.
`
`Upon information and belief, Applicant's channels of
`
`trade and class of
`
`purchasers are likely to be identical or very similar to those of Opposer.
`
`' Namsung is not asserting trademark registrations or applications owned by Namsung Corporation as the
`basis for this Opposition, but is instead relying exclusively on Opposer’s common law rights in the mark
`DUAL (Stylized) based on its own use of the same.
`
`

`
`10.
`
`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 Opposer’s 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 DUAL GLO may reflect upon and expose Opposer to liability and seriously
`
`injure the reputation that Opposer has established.
`
`11.
`
`If Applicant is granted the registration herein opposed, it would obtain at least a
`
`prime facie exclusive right to use the mark DUAL GLO in the United States, thereby causing
`
`damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that Trademark Application Serial No. 77/000,715 be
`
`rejected, that this opposition be sustained, that the registration therein sought for the goods
`
`specified in International Classes 9 and 12 be refused and that Opposer be granted such
`
`additional relief as the Board deems just and proper.
`
`Dated: April 20, 2010
`
`Respectfully submitted,
`
`lA|lison R. lmberl
`
`David L. Sigalow, Esq.
`Allison R. lmber, 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: dsiga|ow@addmg.com
`aimber@addmg.com
`Attorneys for Opposer
`Namsung America, Inc.
`
`

`
`CERTEHCATE GF SERVICE
`
`I HEREBY’ CERTIFV that a true and correct copy of the feregoing was served by U. 8.
`Mail on Aprili 20, mm to:
`
`Maria V‘. Hardison
`
`Tassan «if; Hardison
`4243 27*“ Street Nam’:
`
`Ar¥in+gtun, Wx. 222;O?’~52‘§ '1