Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA516344
`ESTTA Tracking number:
`01/16/2013
`
`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
`Entity
`Address
`
`Branding Costa Rica, S.A.
`Corporation
`Apdo. 159-1260 Escazu,
`San Jose,
`COSTA RICA
`
`Citizenship
`
`Costa Rica
`
`Attorney
`information
`
`Robert H, Thornburg, Esq.
`Allen, Dyer, Doppelt, Milbrath, and Gilchrist, P.A.
`777 Brickell Avenue Suite 1114
`Miami, FL 33131
`UNITED STATES
`rthornburg@addmg.com Phone:305-374-8303
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85680032
`01/16/2013
`
`Publication date
`Opposition
`Period Ends
`
`12/25/2012
`01/24/2013
`
`Sherif, Nader
`10629 Agate Knoll Ln
`Las Vegas, NV 89135
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025.
`All goods and services in the class are opposed, namely: Blouses; Caps; Footwear; Gloves; Hats;
`Headbands; Jackets; Jeans; Jerseys; Jogging suits; Jumpsuits; Lingerie; Pants; Shirts; Shoes;
`Shorts; Skirts; Sleepwear; Sweat pants; Sweat suits; Sweaters; Sweatshirts; Swimwear; T-shirts;
`Tank tops; Tops; Underwear; Visors; Wristbands
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`85797266
`
`NONE
`
`Word Mark
`
`TUANIS
`
`Application Date
`
`12/07/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Class 025. First use:
`Clothing and apparel, namely, caps, shirts, T-shirts, underwear, socks, pants,
`sweaters, jackets, shoes, sandals, bathing suits, Bermuda shorts, walking
`shorts, wet suits, swim trunks, caps with visors, visors, fleece pullovers, sweat
`shirts, surf wear, briefs, boxer briefs, panties, wind resistant jackets
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`Registrations in Costa Rica for the mark TUANIS
`apparel
`
`Attachments
`
`85797266#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition Branding Costa Rica, S.A. vs Nader Sherif.pdf ( 4 pages
`)(185616 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
`
`/Robert H. Thornburg, Esq./
`Robert H, Thornburg, Esq.
`01/16/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 85/680,032
`For the Mark TUANIS
`
`Published in the Official Gazette on December 25, 2012
`
`Branding Costa Rica, S.A.,
`
`Opposer,
`
`vs.
`
`Nader Sherif,
`
`Applicant.
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`Opposer Branding Costa Rica, S.A. (“Opposer”), a corporation organized under the laws
`
`of Costa Rica located at Apdo, 159-1260 Escazu, San Jose, Costa Rica, believes it will be
`
`damaged by registration of the mark TUANIS (“Applicant's mark") shown in U.S. Trademark
`
`Application Serial No. 85/680,032 (“the ‘‘Application'') for certain apparel and clothing items in
`
`International Class 25 and hereby opposes registration of the Application:
`
`The grounds for the Opposition are as follows:
`
`1.
`
`Applicant Nader Sherif (“Applicant”) seeks to register the mark TUANIS as a
`
`trademark for use in connection with apparel including “Blouses; Caps; Footwear; Gloves; Hats;
`
`Headbands; Jackets; Jeans; Jerseys; Jogging suits; Jumpsuits; Lingerie; Pants; Shirts; Shoes;
`
`Shorts; Skirts; Sleepwear; Sweat pants; Sweat suits; Sweaters; Sweatshirts; Swimwear; T-
`
`shirts; Tank tops; Tops; Unden/vear; Visors; Wristbands” in International Class 25 as evidenced
`
`by the publication of the mark in the Official Gazette on December 25, 2012.
`
`2.
`
`Applicant filed its Application on July 18, 2012 under Section 1(b) based on its
`
`alleged intent to use Applicant's mark in commerce within the United States. Applicant has not
`
`

`
`yet filed an amendment to allege use in commerce in the United States in support of the
`
`Application, and upon information and belief, is not yet using Applicant’s mark in commerce.
`
`3.
`
`Opposer is a Costa Rica based entity who maintains a vast portfolio of brands
`
`specific to the culture, history and popularity of eco-tourism (and related forms of tourism) in
`
`Costa Rica - a country that has a heavy focus on tourism of United States citizens. Opposer
`
`has marketed various types of apparel using popular sayings specific to Costa Rica, including
`
`the term TUANIS — and targeted sales of that apparel to United States citizens visiting Costa
`
`Rica.
`
`4.
`
`In addition to registrations already procured in Costa Rica, Opposer on
`
`December 7, 2012 prepared and filed U.S. Trademark Application Serial No. 85/797,266 for the
`
`mark TUANIS (“Opposer’s mark”) in International Class 25 for "Clothing and apparel, namely,
`
`caps, shirts, T-shirts, underwear, socks, pants, sweaters, jackets, shoes, sandals, bathing suits,
`
`Bermuda shorts, walking shorts, wet suits, swim trunks, caps with visors, visors, fleece
`
`pullovers, sweat shirts, surf wear, briefs, boxer briefs, panties, wind resistant
`
`jackets.”
`
`(“Opposer‘s Application"). Opposer’s Application remains pending before the United States
`
`Patent and Trademark Office.
`
`5.
`
`Opposer has used the mark TUANIS in interstate commerce in the United States
`
`or in connection with goods within International 25 for over a decade.
`
`6.
`
`Opposer has continuously used the mark TUANIS 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.
`
`7.
`
`8.
`
`The mark TUANIS is distinctive and is a valuable asset of Opposer.
`
`Opposer used the mark TUANIS in commerce prior to the filing of Applicant's
`
`Trademark Application Serial No. 85/680,032, and, upon information and belief, before
`
`Applicant's first use of the mark TUANIS in commerce in the United States in connection with
`
`apparel in International Class 25.
`
`

`
`9.
`
`Applicant's mark TUANIS is confusingly and deceptively similar to the mark
`
`TUANIS used by Opposer. Applicant’s mark incorporates the word of Opposer’s mark in its
`
`entirety which is descriptive of all of Applicant’s goods. Applicant’s mark is very similar in sight,
`
`sound, connotation, and commercial impression to Opposer’s mark.
`
`10.
`
`Applicant’s specified goods are types of apparel for same that are very similar
`
`and closely related to the consumer electronic goods offered by Opposer under Opposer’s mark
`
`TUANIS.
`
`11.
`
`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.
`
`12.
`
`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 TUANIS 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
`
`TUANIS may reflect upon and expose Opposer to liability and seriously injure the reputation
`
`and valuable goodwill that Opposer has established and accumulated for its products.
`
`13.
`
`If Applicant is granted the registration herein opposed, it would obtain at least a
`
`prima facie exclusive right to use the mark TUANIS in the United States,
`
`thereby causing
`
`damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that Trademark Application Serial No. 85/680,032 be
`
`rejected, that this Opposition be sustained, that the registration sought for the goods specified in
`
`International Class 25 refused, and that Opposer be granted such additional relief as the Board
`
`deems just and proper.
`
`

`
`Dated: Januam 16, 2013
`
`Respectfully submitted,
`
`/s/ Robert H. Thornburg
`
`ROBERT H. THORNBURG
`Florida Bar No. 630829
`MATTHEW N. HOROWITZ
`Florida Bar No. 98564
`
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`777 Brickell Ave., Suite 1114
`Miami, Florida 33131
`Telephone:
`(305)374-8303
`Facsimile:
`(305) 374-8306
`
`Attorneys for Opposer
`Branding Costa Rica S.A.
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a true and correct copy of the foregoing was served by First
`
`Class U. 8. Mail and E-mail on January 16, 2013 to:
`
`Mark Borgese
`10161 Park Run Drive, Suite 150
`Las Vegas, Nevada 89145
`Email: mark@borghese|ega|.com
`
`/s/ Robert H. Thornburg
`
`Robert H. Thornburg