Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA447443
`ESTTA Tracking number:
`12/20/2011
`
`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
`
`SPOP, Inc.
`12/21/2011
`
`369 South Doheny Drive
`Beverly Hills, CA 90211
`UNITED STATES
`
`Attorney
`information
`
`Katherine Koyanagi
`Law Offices of Katherine Koyanagi
`11301 W. Olympic Blvd., #324
`Los Angeles, CA 90064
`UNITED STATES
`kkoyanagilaw@gmail.com Phone:310-666-6880
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85258766
`12/20/2011
`
`Publication date
`Opposition
`Period Ends
`
`08/23/2011
`12/21/2011
`
`QFAC
`1135 Terminal Way, #209
`Reno, NV 89502
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 2011/01/03 First Use In Commerce: 2011/01/03
`All goods and services in the class are opposed, namely: Antioxidant dietary and nutritional
`supplements and super antioxidant dietary and nutritional supplements; Amino acids for nutritional
`purposes; Anti-inflammatories; Anti-inflammatory gels; Appetite suppressants; Creatine nutritional
`supplements; Dietary and nutritional supplements, namely, dietary and nutritional supplements for
`endurance sports and weight loss, dietary supplements in the nature of weight loss powders,
`supplements for eliminating toxins from the intestinal tract, supplements for urinary health,
`supplements for eliminating back pain, supplements for animals, men, women, teenagers, and
`children, calcium supplements, magnesium supplements, protein supplements, whey protein
`supplements, herbal supplements, homeopathic supplements, vitamin supplements, nutritional and
`dietary supplements containing super foods and super food extracts; Dietary beverage supplements
`for human consumption in liquid and dry mix form for therapeutic purposes; Dietary fiber as an
`additive for food products; Electrolytes; Electrolyte replacement solutions; Fish oil dietary and
`nutritional supplements in the form of emulsified fish oil, liquid fish oil, and fish oil capsules; Food
`supplements, namely, enzyme food supplements, anti-oxidants, and health food supplements; Hair
`growth stimulants; Hormone replacement therapy preparations; Mineral supplements, namely,
`mineral nutritional and food supplements; Multi-vitamin preparations; Mixed vitamin preparations;
`Medium Chain Triglycerides (MCT) oil for use as dietary and nutritional supplements; Nutraceuticals
`
`

`
`for use as a dietary supplement; Nutritionally fortified beverages; Nutritional drinks, drink powders
`and shakes used for meal replacement; Nutritional supplements, namely, carbohydrates in powdered
`form, probiotic compositions, nutritional supplement in the nature of a nutrient-dense, protein-based
`drink mix, nutritional supplement for eliminating toxins from the body and the intestinal tract; Omegas
`3, 6, and 9 dietary and nutritional supplements; Powdered nutritional supplement drink mix and
`concentrate; Powdered dietary supplemental drink mixes, namely, fruit-flavored, vegetable flavored,
`and antioxidant and super antioxidant drink mixes; Prenatal vitamins; Preparation for the relief of
`pain; Sports cream for relief of pain; Vegan protein for use as a nutritional supplement in ready-
`to-drink beverages; Vitamin and mineral supplements; Vitamins and vitamin preparations; Vitamins
`and dietary food supplements for animals; Vitamin tablets; Vitamin preparations, namely, vitamin B
`preparations, vitamin C preparations, vitamin D, and vitamin K preparations
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`1576511
`
`01/09/1990
`
`PROTEGE
`
`NONE
`
`Application Date
`
`05/23/1989
`
`Foreign Priority
`Date
`
`NONE
`
`Class 025. First use: First Use: 1971/01/28 First Use In Commerce: 1971/01/28
`FOOTWEAR
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3604995
`
`04/14/2009
`
`PROTEGE
`
`Application Date
`
`12/19/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2007/08/28 First Use In Commerce: 2007/08/28
`Footwear
`
`U.S. Registration
`No.
`Registration Date
`
`3551007
`
`12/23/2008
`
`Application Date
`
`06/28/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`PROTEGE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2007/08/28 First Use In Commerce: 2007/08/28
`Men's and women's clothing, namely, pants, shirts, t-shirts, sweatshirts, jackets,
`suits, dresses, coats, tops, bottoms, underwear, shoes, headwear, scarves,
`sweaters, swimwear
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3932200
`
`03/15/2011
`
`PROTEGE
`
`Application Date
`
`12/03/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2009/12/10 First Use In Commerce: 2009/12/10
`Socks
`
`U.S. Registration
`No.
`Registration Date
`
`3768717
`
`03/30/2010
`
`Word Mark
`
`PROTEGE EDGE
`
`Application Date
`
`11/17/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2009/06/01 First Use In Commerce: 2009/06/01
`Men's, women's and children's clothing, namely, pants, shirts, t-shirts,
`sweatshirts, jackets, suits, dresses, coats, tops, bottoms, underwear, shoes,
`socks, slippers, headwear, hats, caps, scarves, sweaters, swimwear, sleepwear
`
`Attachments
`
`77356372#TMSN.jpeg ( 1 page )( bytes )
`77218393#TMSN.jpeg ( 1 page )( bytes )
`77885503#TMSN.jpeg ( 1 page )( bytes )
`77616222#TMSN.jpeg ( 1 page )( bytes )
`Pldg 11 12 20 prot lab.pdf ( 5 pages )(130205 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
`
`/kkoyanagi/
`Katherine Koyanagi
`12/20/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`Serial No. 85/258766
`
`)
`)
`)
`
`) )
`
`) )
`
`) )
`
`) )
`
`Opposer,
`
`Applicant.
`
`SPOP, INC.
`
`V
`
`QFAC
`
`NOTICE OF OPPOSITION
`
`SPOP, Inc., a California corporation, with a principal place of business of 369
`
`South Doheny Drive, No. 200, Beverly Hills, CA 90211, believes that it will be damaged
`
`by registration of the mark shown in the above application and hereby opposes the same.
`
`1.
`
`Opposer SPOP, Inc. is the owner of Registration Nos. 1576511 and
`
`3604995 on the Principal Register of the United States Patent and
`
`Trademark Office for the mark “Protégé” in International Class 25 for
`
`“footwear”.
`
`2.
`
`Opposer SPOP, Inc. is the owner of Registration No. 3551007 on the
`
`Principal Register of the United States Patent and Trademark Office for
`
`the mark “Protége"’ in International Class 25 for “Men's and women's
`
`clothing, namely, pants, shirts, t—shirts, sweatshirts, jackets, suits, dresses,
`
`coats, tops, bottoms, underwear, shoes, headwear, scarves, sweaters,
`
`swimwear.”
`
`
`
`

`
`3.
`
`Opposer SPOP, Inc. is the owner of Registration No. 3932200 on the
`
`Principal Register of the United States Patent and Trademark Office for
`
`the mark “Protege” in International Class 25 for “Socks.”
`
`Opposer SPOP, Inc. is the owner of Registration No. 3768717 on the
`
`Principal Register of the United States Patent and Trademark Office for
`
`the mark “Protege Edge” in International Class 25 for “Men's, women's
`
`and children's clothing, namely, pants, shirts, t-shirts, sweatshirts, jackets,
`
`suits, dresses, coats, tops, bottoms, underwear, shoes, socks, slippers,
`
`headwear, hats, caps, scarves, sweaters, swimwear, sleepwear.”
`
`Opposer SPOP, Inc. is also the owner of Intent—To-Use Application Nos.
`
`77530645 and 77519388 in the United States Patent and Trademark Office
`
`for the mark “Protege” in International Classes 3, 9 and 14 respectively.
`
`Notices of Allowance have been issued for these applications.
`
`Opposer SPOP, Inc. is also the owner of Intent-to-Use Application No.
`
`85500282 in the United States Patent and Trademark Office for the mark
`
`“Protege” in International Class 5 for “dietary and nutritional supplements
`
`for endurance sports; nutritional drink mix for use as a meal replacement;
`
`nutritionally fortified beverages; Vitamin fortified beverages.”
`
`By the application herein opposed, Applicant seeks to register the mark
`
`and logo “Protege Laboratories Science meets Nutrition” for
`
`miscellaneous products in International Class 5, including, but not limited
`
`to “nutritionally fortified beverages; nutritional drinks, drink powders and
`
`shakes used for meal replacement.”
`
`
`
`

`
`8.
`
`If applicant succeeds in registering “Protégé Laboratories Science meets
`
`Nutrition,” said registration could jeopardize SPOP, lnc.’s right and ability
`
`to license, use and register and to continue licensing, using and registering
`
`the mark “Protege” for related goods.
`
`9.
`
`Applicant’s goods and Opposer’s goods would likely be encountered by
`
`the same consumers and Applicant’s goods would likely be confused with
`
`or mistaken for Opposer’s goods.
`
`10.
`
`Applicant’s mark comprises a mark that so resembles the mark “Protege”
`
`as to be likely, when used on or in connection with the applied for goods
`
`referenced in paragraph 7, to cause confusion or mistake, or to deceive as
`
`to the affiliation, connection or association of Applicant’s goods and
`
`services with the owners of the Protégé mark and their sponsorship or
`
`approval of Applicant’s goods and services.
`
`11.
`
`SPOP, Inc. will be damaged by the registration sought by Applicant in
`
`Class 5 because it will dilute the distinctive quality of the Protégé mark
`
`and cause confusion and mistake.
`
`WHEREFORE, Opposer respectfully requests that the application for App1icant’s
`
`
`
`

`
`mark “Protege Laboratories Science meets Nutrition” be denied and this opposition be
`
`sustained.
`
`Respectfully submitted,
`
`
`
`Katherine Koy agi
`Attorney for Applic ’
`rine Koyanagi
`Law Offices of Kat
`11301 W. Olympic Blvd., #324
`Los Angeles, CA 90064
`Tel. (310) 666-6880
`
`Dated: December 20, 2011
`
`
`
`

`
`CERTIFICATE OF FILING
`
`I hereby certify that the foregoing was submitted to the Trademark Trial and
`Appeal Board, via the on—line filing system on the USPTO website, on this 20th day of
`December 201 1.
`
`
`
`
`
`
`Katherine Ko 11 gi
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing Notice of Opposition was mailed
`by depositing with the U.S. Postal Service, with postage pre-paid via first-class mail,
`addressed to counsel for Russ Weinzimmer, Russ Weinzimmer & Associates, P.C., 614
`Nashua St., #53, Milford, New Hampshire 03055-4943 on this 20”‘ day of December
`2011.
`
`
`
`1/4 A;
`Katherine K0