Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA436511
`ESTTA Tracking number:
`10/18/2011
`
`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
`
`Biotivia, LLC
`10/22/2011
`
`1 River Place, Ste. 1001
`New York, NY 10036
`UNITED STATES
`
`Attorney
`information
`
`Aaron Shechet, Esq.
`Chandler & Shechet, LLP
`1844 Bagley Ave.
`Los Angeles, CA 90035
`UNITED STATES
`Counsel@SolutionsLLP.com Phone:310-339-1354
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85193003
`10/18/2011
`
`Publication date
`Opposition
`Period Ends
`
`08/23/2011
`10/22/2011
`
`ChromaDex Inc.
`10005 Muirlands Suite G
`Irvine, CA 92618
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 001.
`All goods and services in the class are opposed, namely: Phytochemicals for use in the
`manufacturing of dietary supplements, nutritional supplements, nutritional beverages,
`pharmaceuticals and cosmetics
`
`Grounds for Opposition
`
`The mark is merely descriptive
`
`Trademark Act section 2(e)(1)
`
`Attachments
`
`Oppsigned85193003.pdf ( 6 pages )(1080578 bytes )
`ExhibitAfinal.pdf ( 2 pages )(338147 bytes )
`ExhibitBfinal.pdf ( 2 pages )(342324 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
`
`/Aaron Shechet/
`Aaron Shechet, Esq.
`10/18/2011
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 85193003
`For the mark: THE NEXT GENERATION RESVERATROL
`Published in the Official Gazette on August 23, 201 1
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`BIOTIVIA, LLC
`Opposer
`
`V.
`
`CHROMADEX, INC.
`
`Applicant
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Biotivia, LLC
`
`A Delaware Limited Liability Company
`1 River Place, Ste. 1001
`New York NEW YORK 10036
`
`The above—identified opposer believes that it will be damaged by registration of the mark
`
`shown in the above—identified application, and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1. According to the Trademark Office records, on or about December 8, 2010,
`
`Applicant, Chromodex, lnc. (“Chromadex“), filed an intent—to—use application,
`
`under section 1B, for the registration of the mark “The Next Generation
`
`Resveratrol,“ with Serial No. 85193003, (the “Mark") in International Class 001
`
`for “Phytochemicals for use in the manufacturing of dietary supplements,
`
`nutritional supplements, nutritional beverages, pharmaceuticals and cosmetics.“
`
`
`
`The Mark was published for opposition on or about August 23”], 201 l.
`
`Opposer, Biotivia, LLC (“Biotivia“), has timely filed for, and the Trademark Trial
`
`and Appeal Board has granted, a 30-day extension of time to file an opposition to
`
`the registration of the Mark until October 22, 201 I.
`
`Biotivia is a Delaware Limited Liability Company with a principal place of
`
`business at 1 River Place, Ste. 1001, New York, NEW YORK IOO36 and
`
`manufactures and sells a variety of dietary supplements, including supplements
`
`which contain resveratrol and/or pterostilbene ingredients.
`
`U1
`
`Biotivia sells one or more finished products which contain the ingredient
`
`Pterostilbene.
`
`Chromodex sells one or more finished products which contain the ingredient
`
`Pterostilbene, and is a direct competitor of Biotivia.
`
`Chromodex applies the Mark, on its website and in its advertising, to pterostilbene
`
`products.
`
`
`
`8.
`
`9.
`
`10.
`
`ll.
`
`The phrase “Next Generation" is defined as “pertaining to the next generation in a
`
`family; also, pertaining to the next stage of development or version of a product,
`
`service, or technology." (See Exhibit A).
`
`Pterostilbene is described, in scientific and advertising literature, as a compound
`
`which is chemically related to resveratrol but has certain advantages over
`
`resveratrol, including higher bioavailability. Specifically, Pterostilbene is “a
`
`double—methylated version of resveratrol exhibiting a higher bioavailability as it is
`
`more easily transported into the cell and more resistant to degradation and
`
`elimination.“ (See Exhibit B).
`
`Pterostilbene is often described as the next stage of development of resveratrol.
`
`Words like “next generation of resveratrol" and “next level of resveratrol” are
`
`used to describe pterostilbenes in general, and not any particular brand of
`
`pterostilbene, even when referring to Chromadex’s products.
`
`At least one article dating back to 2009, well before Applicants use of the Mark,
`
`touts pterostilbene as an advancement on resveratrol.
`
`. The Mark “The Next Generation Resveratrol,” by indicating that Chromadex’s
`
`products, or pterostilbene in general, is an improvement over existing resveratrol
`
`supplements, is laudatory and informational, and thus is descriptive. Trademark
`
`Act section (e)(l); 15 USC. § l052(e)(l).
`
`L»)
`
`
`
`13. The Mark consists primarily of a combination of words which, when applied to
`
`the goods of Chromadex, is merely descriptive under Section 2(e)( l) of the
`
`Trademark Act, 15 U.S.C. § l052(e)(l), in that the Mark describes an ingredient,
`
`quality, characteristic, function, feature, purpose, or use of the goods identified in
`
`the application for registration of the Mark, and/or is merely laudatory, and has no
`
`acquired distinctiveness or secondary meaning sufficient to support registration.
`
`14. The Mark does not function to identify Chromadex’s goods and distinguish them
`
`from those offered by others and has no acquired distinctiveness or secondary
`
`meaning sufficient to support registration.
`
`15. Registration of the Mark will prevent Biotivia, a seller of pterostilbene
`
`supplements, from using phrases which are descriptive of pterostilbene, and will
`
`inhibit Biotivia’s ability to accurately describe and effectively market its products.
`
`I6. Chromadex seeks to prevent Biotivia from using phrases it deems “similar“ to the
`
`Mark, and has filed a lawsuit in the Central District ofCalifornia, case number
`
`8:! l—CVl 1-0 l273 CJC (MLGX), partly based on Biotivia’s use of phrases such as
`
`“taking resveratrol to the next level," which are descriptive of pterostilbene.
`
`17. Because the Mark is descriptive, registration should be refused.
`
`
`
`WHEREFORE, Biotivia prays that said application Serial No. 85193003 be
`
`rejected, that no registration be issued thereon to applicant, and that this opposition be
`
`sustained in favor of Biotivia.
`
`Biotivia appoints as its attorneys in this proceeding Aaron Shechet and Leigh Chandler of
`
`the firm Chandler & Shechet, LLP, 1844 Bagley Ave., Los Angeles, CA 90035, to whom
`
`all correspondence in this proceeding should be addressed.
`
`Dated October 18, 201 l
`
`Respectfully submitted,
`
`CHANDLER & SHECHET, LLP
`
`L;
`
`AARON SHECHET
`
`Counsel for Opposer,
`BIOTIVIA, LLC
`
`1844 Bagley Ave.,
`Los Angeles, CA 90035
`(310) 339-1354
`
`’
`'
`CERTIFICATE OF SERVICE 37 C.F.R.
`
`
`
`l, AARON SHECHET, Attorney of Record for Opposer, Biotivia, LLC, hereby certify
`that a true and correct copy of the foregoing Notice of Opposition, along with all
`Exhibits thereto, was served by:
`
`
`
`.
`l
`2.
`
`transmission by the first class mail service of the United States Postal Service, and
`by transmission by the Certified first class mail service of the United States
`Postal Service,
`
`on the attorney of record for the opposed application, at the correspondence address of
`record in the USPTO for said person as of the date of service, as set forth below:
`
`JOSEPH T. NABOR
`FITCH EVEN TABIN & FLANNERY
`120 S LASALLE ST STE 1600
`
`CHICAGO, IL 60603-3590
`
`Date ofMailing: October I8, 201 l
`
`zwaéaz
`
`Aaron Shechet
`
`
`
`In the matter of trademark application Serial No. 85193003
`For the mark: THE NEXT GENERATION RESVERATROL
`
`Opposer: BIOTIVIA, LLC
`Opposition No.:
`
`
`Notice of Opposition
`
`EXHIBIT A
`
`
`
`
`
`EXHIBIT F
`
`
`
`
`
`dictionary.reference.com/browse/next-generation
`
`
`
`
`
`
`
`In the matter of trademark application Serial No. 85193003
`For the mark: THE NEXT GENERATION RESVERATROL
`
`Opposer: BIOTIVIA, LLC
`Opposition No.:
`
`
`Notice of Opposition
`
`EXHIBIT B
`
`
`
`
`
`
`
`EXHIBIT G
`
`
`
`
`
`
`en.wikipedia.org/wiki/Pterostilbene
