Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA550075
`ESTTA Tracking number:
`07/23/2013
`
`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
`
`Eva L Levine
`Individual
`1784 Curtner Avenue
`San Jose, CA 95124
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Correspondence
`information
`
`Eva L Levine
`1784 Curtner Avenue
`San Jose, CA 95124
`UNITED STATES
`evallevine@gmail.com Phone:408-504-8572
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85845976
`07/23/2013
`
`Publication date
`Opposition
`Period Ends
`
`06/25/2013
`07/25/2013
`
`Syngenta Participations AG
`Schwarzwaldallee 215
`Basel, CH-4058
`SWITZERLAND
`Goods/Services Affected by Opposition
`
`Class 001.
`All goods and services in the class are opposed, namely: Chemical preparations for use in
`agriculture, horticulture and forestry, namely, chemical preparations for the treatment of seeds
`Class 005.
`All goods and services in the class are opposed, namely: Fungicides; Insecticides; Nematicides;
`Pesticides
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Other
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`Trademark Act section 43(c) dilution Trademark
`Act section 1 lack of bona fide intent to use
`Trademark Act section 45 unfair competition
`Reverse confusion Unjust enrichment and bad
`faith intent
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`Plenaris Advisers
`IC 036 financial services, financial planning, estate planning,
`retirement planning, insurance planning, college planning
`
`Attachments
`
`Opposition Notice 1A.pdf(4978805 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
`
`/Eva L Levine/
`Eva L Levine
`07/23/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark application Serial No. 85845976
`For the mark Plenaris
`
`Published in the Official Gazette on June 25, 2013
`
`Eva Liang Levine
`v.
`
`Syngenta Participations AG
`
`NOTICE OF OPPOSITION
`
`Opposer Eva Liang Levine, Principal and Owner, Plenaris Advisers®
`950 S. Bascom Avenue, Suite 1113, San Jose, CA 95128
`
`The above-identified opposer believes that she will be irreparably damaged by
`registration of the mark shown in the above-identified trademark application, and hereby
`opposes the same.
`
`The grounds for opposition are as follows:
`
`I. Opposer is the registered owner of the mark Plenaris. Trademark Act §2(d)
`(15 U.S.C. §1052)
`
`1. Opposer Eva Liang Levine is the creator and the original user of the mark Plenaris.
`
`2. It is a fanciful, arbitrary, and unique mark which opposer created for her business in
`financial services known as Plenaris Advisers, as well as Plenaris Advisory. There was
`no such word in the English language until opposer created it.
`
`3. Opposer became the registered owner of the mark when her application for trademark
`protection was approved on June 6, 2008. The registration number is 3446225. (Exhibit
`1)
`
`4. Opposer has perfected the renewal of the mark on June 10, 2013 and will remain the
`registered owner of the mark until June 10, 2018. (Exhibit 2)
`
`5. Opposer has every intention to use the mark for her business until such date and
`beyond.
`
`II. Brand Dilution by Blurring, Trademark Act §43 (c)( 15 U.S.C. §1l25)
`
`‘Dilution by blurring’ under the Trade Act is defined as “association arising from the
`6.
`similarity between a mark or trade name and a famous mark that impairs the
`
`

`
`distinctiveness of the famous mark.” Applicant Syngento Participations AG (hereinafter
`Syngento) seeks to use the identical mark. The subject mark is therefore ipso facto a
`famous mark due to the fact that a global corporation based in Switzerland such as
`Syngenta seeks to use it.
`
`7. The mark is associated with financial planning services. Applicant Syngenta would
`change its meaning by using it differently on its chemical products as indicated in its
`application for registration, which will result in the dilution of the brand. (Exhibit 3)
`
`8. Given the fancifulness and the arbitrariness of the mark, opposer risks confusion on
`the part of the general public whether its name and business are associated in any way
`with Syngenta, such as whether opposer is a licensee of the mark instead of its owner,
`given the fact that Syngenta is a much bigger business and is therefore in a position to
`dominate the use of the mark through its marketing efforts on a global scale.
`
`III. Brand Dilution by Tarnishment, Trademark Act §43(c) (15 U.S.C. §1125)
`
`9. Since Syngenta engages in the manufacturing of chemicals, many of which are known
`to be toxic, opposer objects to its mark being proposed for use on such toxic chemicals.
`
`10. Evidence of Syngenta’s toxic products includes Thiamethoxam, which has been
`banned by the European Union. (Exhibit 4)
`
`1 1. Another well-known product by Syngenta, Atrazine, is also banned by the European
`Union and is the subject of study within the U.S. on environmental damage. (Exhibit 5)
`
`12. To date, the mark has been a benign, though fanciful word that has no significance as
`a scientific or chemical term. Syngenta’s attempt to adopt the name for its own use
`seems to be an attempt to use a benign word for an array of chemical products that are
`controversial. Once the mark is associated with controversy, it will forever be tainted. If
`Syngenta is allowed to use the mark, it is only a matter of time for the mark to be tainted
`to the point where opposer’s brand will also be irreversibly damaged or rendered
`unusable.
`
`13. Under §43(c), opposer is entitled to inj unctive relief for injury under brand dilution
`by blurring and tarnishment regardless of the presence or absence of actual or likely
`confusion, of competition, or of actual economic injury.
`
`IV. Lack of Bona Fide Intent to Use Mark in Commerce, Trademark Act §1 (15
`U.S.C. §1051)
`
`14. The subject application is Syngenta’s third application for registering the mark.
`
`15. Syngenta’s first application, dated October 22, 2010 was abandoned on January 31,
`2011. (Exhibit 6)
`
`

`
`16. Syngenta’s second application, dated October 25, 2010, was abandoned on May 14,
`2012. (Exhibit 7)
`
`It has been more than 33 months since Syngenta’s first application for registering the
`17.
`subject mark. Yet there is no evidence that Syngenta has done anything to use the mark
`in any way, which gives rise to the likelihood that it may be interested in hoarding the
`mark and its associated good name for undisclosed reasons.
`
`18. In addition, a cursory survey of Syngenta’s product lines indicates that the company
`has no shortage of fanciful names that it uses for its products, which gives rise to a
`questionable intent why it seeks to appropriate the subject mark that opposer created,
`knowing full well that opposer is the registered owner of the mark since June 2008.
`(Exhibit 8)
`
`V. Unfair Competition. Trademark Act §45 (15 U.S.C. §1l27)
`
`19. §45 (15 U.S.C. §1127) states that the intent of the Trademark Act is “. . .to protect
`persons engaged in
`commerce against unfair competition;
`
`20. Syngenta seeks to register the mark in the broadest sense without any limitation,
`despite including only two classes of goods in the application. Opposer has reason to
`believe that Syngenta’s intent is to eventually encroach on opposer’s use of the mark,
`dominating the use of it and then appropriating the full use of the mark. For example,
`opposer owns the internet domain names: www.plenaris.com, as well as
`wwwplenarisadvisory.com. (Exhibit 9) Opposer may be forced by Syngenta to cease
`and desist the use of the domain name www.plenaris.com if Syngenta is allowed to use
`the mark because it can claim that it has the right to use the mark in the most general and
`complete sense with no limitations.
`It means that it will use the mark by restricting
`opposer’s use of it, thereby reducing opposer’s ownership rights to the mark.
`
`21. Opposer’s belief in Syngenta’s intent to encroach and dominate the use of the mark
`is based on the fact that Syngenta, as a global corporation (with 27,000 employees in over
`90 countries, and over $11 billion in sales in 2010 (Exhibit 10), has had a corporate
`history and practice of asserting its rights against other businesses through legal actions,
`including legal actions against Bayer and Monsanto over patent infringement. Monsanto
`C0. et al v. Syngenta Seeds, Inc. el al, (Fed Cir. 2007) 503 F. 3d 1352.
`
`22. Not only does Syngenta have a practice of asserting its rights against other
`businesses, it has a history and practice of infringing on other businesses’ rights, as in the
`case of Bayer. In May 2001, Bayer instituted an action against Syngenta for patent
`infringement. (Exhibit 11) The parties settled in January 2002 with Syngenta paying
`Bayer $120 million for using the patent at issue. (Exhibit 12) In April 2013, Bayer again
`filed an action against Syngenta for patent infringement, according to news reports.
`(Exhibit 13)
`
`

`
`23. Since opposer is a small business with limited resources, there is no way she can
`defend herself against any potential legal action perpetrated by Syngenta. This means
`that approving Syngenta’s use of the mark will effectively drive opposer out of business.
`
`24. Another indication of Syngenta’s intent to use the mark in a broad sense is that the
`present registration application indicates two international classes and many more U.S.
`classes of goods with no clear specificity. For example, for Class 001, the mark is used
`for “chemical preparation for use in agriculture, horticulture and forestry. .
`. ,” which
`seems to pertain to a process, while for Class 005, the mark is used for “fungicides,
`insecticides, nematicides, pesticides,” which denotes products that may number in the
`hundreds. Once Syngenta is allowed to use the mark, it’s highly likely that it will expand
`the use of the mark as there is already no clear, limited use of the mark. Since no
`interested party will have the resources to monitor and challenge such expanded use,
`Syngenta will effectively gain full use of the mark with no limitations and no legal
`consequences.
`
`25. Syngenta’s intent to expand the use of the mark is also indicated in its first two
`filings for mark registration, which showed only 1 class of use (IC 005) instead of 2
`classes as in the last application. (Exhibits 3, 6, 7)
`
`26. Similarly, opposer owns the email address: plenaris(a2yahoo.com. (Exhibit 2) If
`Syngenta can use the same mark, opposer runs the risk of having her business email
`misdirected if Syngenta should decide to use similar email addresses. Given the cost of
`trademark litigation and the limited remedy, it’s never feasible for opposer to monitor or
`institute any legal action against Syngenta. The only protection under the Trademark Act
`available to opposer is the denial of its use of the mark.
`
`VI. Reverse Confusion
`
`27. Reverse confusion is the corollary of unfair competition where a small business,
`which is the senior owner/user of a trade mark, can have its rights to the mark overrun by
`a junior user but larger business.
`
`28. In Dreamwerks Production Group, Inc., v. SKG Studio (9th Cir. 1998) 142 F. 3d
`1127, the smaller business Dreamwerks sued the larger business SKG Studio for
`trademark infringement over the use of the word ‘dreamworks.’ The court, in finding for
`Dreamwerks on reverse confusion, stated that if the roles of the parties were reversed,
`there would be no doubt that the larger business would have asserted a claim for
`trademark infringement.
`
`29. Despite the dissimilarities between Syngenta’s and opposer’s business, the outcome
`of reverse confusion remains the same, as the larger business’ action amounts to
`appropriating the smaller business’ brand and identity. Without the appropriate
`protection from USPTO, opposer will likely be irreversibly injured because her
`ownership rights to the subject mark will be seriously impaired by Syngenta’s use of the
`mark.
`
`

`
`VII. Unjust Enrichment and Bad Faith Intent
`
`30. Syngenta’s application for use of the mark has all the hallmark of bad faith intent, as
`it knew that the mark was owned by opposer for her small business. This is unjust
`enrichment because opposer is the creator and the incontestable registered owner of the
`mark. If opposer were as big as Google, Yahoo, or Exxon, which are all fanciful marks,
`Syngenta would not have attempted to use the same name.
`
`31. In Band Stores, Inc., v. Bond Stores, Inc. (3rd Cir. 1939) 104 F. 2d, 124, 125 the court
`captured the essence of trademark ownership by stating that owning a business name is
`“. . .very much akin to that of the patronymically proud, when a newly admitted citizen
`assumes the family name.” It means that one’s own business name can be likened to
`one’s progeny.
`
`32. In this case, opposer does claim to be the creator of the mark Plenaris from whole
`cloth. Syngenta’s application for the use of the mark amounts to requesting that USPTO
`allow it to share in the custody of the mark without any legitimate claim to its parentage,
`and to benefit from opposer’s fruit of labor with no contribution to its cultivation.
`It is a
`patently unfair request, which should not be permitted in law or in equity.
`
`33. Moreover, not only does Syngenta attempt to appropriate the mark for its own use,
`its registration application states that it also intends to extend the use to its related
`company or licensee(s). (Exhibit 3) It means that it will do whatever it pleases with the
`mark, which may include, in addition to licensing the right to use the mark to third
`parties, selling, assigning, or otherwise dispose of the mark every which way, all to the
`detriment of opposer by diminishing her rights and the distinctiveness of the mark.
`
`34. Since no interested party will be able to monitor Syngenta’s use of the mark, as it
`would be an undue burden on opposer to enforce her rights under the law, opposer
`submits that neither will USPTO be able to monitor Syngenta in the long run.
`
`35. Inasmuch as trademark ownership is part of intellectual property laws designed to
`safeguard the owner/creator’s rights to intellectual property, opposer hereby asserts that
`she has the exclusive right to the mark at issue as a matter of public policy as well as the
`law, as she would be irreparably harmed if applicant Syngenta is permitted to use the
`mark. Conversely, there is no evidence that Syngenta would be harmed in any way if it is
`denied the use of the mark.
`
`WHEREF ORE, opposer respectfully prays that the Board deny the applicant Syngenta
`the use and the registration of the mark Plenaris, as it is the only remedy available to
`opposer under the Trademark Act.
`
`July 23, 2013
`
`/Eva Liang Levine/
`Opposer
`
`

`
`Attached are selected exhibits only, as electronic
`filing would not accept the entire file. Opposer
`reserves the right to include all exhibits as referred to
`in the pleading as part of this Notice of Opposition
`and will submit them upon TTAB’s request, since the
`Notice may not be amended.
`
`

`
`Int. Cl.: 36
`
`Prior U.S. Cls.: 100, 101, and 102
`
`Reg. No. 3,446,225
`United States Patent and Trademark Office
`Registered June 10, 2008
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`Plenaris Advisers
`
`LEVINE, EVA LIANG (UNITED STATES INDIVI-
`DUAL)
`1784 CURTNER AVENUE
`SAN JOSE, CA 951241207
`
`FOR: ADMINISTRATION OF EMPLOYEE BENE-
`FIT PLANS; ADMINISTRATION OF EMPLOYEE
`PENSION PLANS; ADMINISTRATION OF EM-
`PLOYEE WELFARE BENEFIT PLANS; ADMINIS-
`TRATION OF PRE-PAID HEALTH CARE PLANS;
`CREDIT AND FINANCIAL CONSULTATION;
`ELECTRONIC FINANCIAL SERVICE FOR THE
`PURCHASE OF SAVINGS BONDS; ESTATE PLAN-
`NING; FINANCIAL ADMINISTRATION OF RE-
`TIREMENT PLANS; FINANCIAL ANALYSIS AND
`CONSULTATION; FINANCIAL CONSULTATION;
`FINANCIAL EVALUATION FOR INSURANCE
`PURPOSES; FINANCIAL EXCHANGE; FINANCIAL
`FORECASTING; FINANCIAL GUARANTEE AND
`SURETY; FINANCIAL INFORMATION IN THE
`NATURE OF RATES OF EXCHANGE; FINANCIAL
`INFORMATION PROCESSING; FINANCIAL IN-
`FORMATION PROVIDED BY ELECTRONIC
`MEANS; FINANCIAL INVESTMENT IN THE FIELD
`OF SECURITIES AND REAL ESTATE; FINANCIAL
`LOAN CONSULTATION; FINANCIAL MANAGE-
`MENT; FINANCIAL PLANNING; FINANCIAL
`PLANNING CONSULTATION; FINANCIAL PLAN-
`NING FOR RETIREMENT; FINANCIAL PLAN-
`NING, NAMELY, THE CREATION OF
`PERSONALIZED STRATEGIES TO ACHIEVE FI-
`NANCIAL INDEPENDENCE; FINANCIAL PORT-
`FOLIO MANAGEMENT; FINANCIAL RESEARCH;
`FINANCIAL RISK MANAGEMENT; FINANCIAL
`SERVICES IN THE NATURE OF AN INVESTMENT
`SECURITY; FINANCIAL SERVICES, NAMELY, AS-
`SISTING OTHERS WITH THE COMPLETION OF
`FINANCIAL TRANSACTIONS FOR STOCKS,
`BONDS, SECURITIES AND EQUITIES; FINANCIAL
`SERVICES, NAMELY ESTATE SETTLEMENT SER-
`VICES; FINANCLAL SERVICES, NAMELY, MONEY
`LENDING; FINANCIAL SERVICES, NAMELY, PRO-
`VIDING INFORMATION IN THE FIELDS OF FOR-
`EIGN CURRENCY, COMMODITIES, FINANCIAL
`
`DERIVATIVES, INTEREST RATE PRODUCTS, AND
`EQUITIES VIA THE INTERNET AND INTRANET
`SYSTEMS; FINANCIAL SERVICES, NAMELY, A
`TOTAL PORTFOLIO OFFERING FOR HIGH NET
`WORTH CLIENTS CONSISTING OF BOTH SEPA-
`RATE ACCOUNTS AND MUTUAL FUNDS FOR
`EQUITY AND FIXED INCOME INVESTMENTS;
`FINANCIAL SERVICES, NAMELY, INVESTMENT
`FUND TRANSFER AND TRANSACTION SERVI-
`CES; FINANCIAL SERVICES, NAMELY, MORT-
`GAGE PLANNING; FINANCIAL SERVICES,
`NAMELY, PROVIDING A VIRTUAL CURRENCY
`FOR USE BY MEMBERS OF AN ONLINE COMMU-
`NITY VIA A GLOBAL COMPUTER NETWORK;
`FINANCIAL SERVICES, NAMELY, PROVIDING
`FOR THE EXCHANGE OF FOREIGN CURRENCY,
`COMMODITIES, FINANCIAL DERIVATIVES, IN-
`TEREST RATE PRODUCTS, AND EQUITIES VIA
`THE INTERNET AND INTRANET SYSTEMS; FI-
`NANCIAL SERVICES, NAMELY, SAVINGS PRO-
`GRAMS FOR YOUTHS; FINANCIAL SERVICES,
`NAMELY, THE PURCHASE OF RESIDENTIAL
`MORTGAGES ON BEHALF OF OTHERS AND THE
`ISSUANCE OF MORTGAGE-BACKED SECURITIES;
`FINANCIAL TRANSACTION SERVICES, NAMELY,
`PROVIDING SECURE COMMERCIAL TRANSAC-
`TIONS AND PAYMENT OPTIONS USING A MO-
`BILE DEVICE AT A POINT OF SALE; FINANCIAL
`TRUST OPERATIONS; FINANCIAL VALUATION
`OF PERSONAL PROPERTY AND REAL ESTATE;
`LEVERAGED BUY OUTS AND INVESTMENTS IN
`FINANCIALLY DISTRESSED OR UNDER PER-
`FORMING COMPANIES; ORGANIZING PRE-PAID
`HEALTH CARE PLANS; PROVIDING A WEB SITE
`WHERE USERS CAN POST RATINGS, REVIEWS
`AND RECOMMENDATIONS ON STOCKS, BONDS,
`MUTUAL FUNDS AND OTHER FINANCIAL IN-
`STRUMENTS; PROVIDING ON-LINE FINANCLAL
`CALCULATORS; PROVIDING ONLINE INFORMA-
`TION IN THE FIELD CHARITABLE MONETARY
`GIVING THROUGH FINANCIAL AND ESTATE
`PLANNING, IN CLASS 36 (US. CLS. 100, 101 AND
`102).
`
`Exh.I.P.l
`
`

`
`From:
`
`Sent:
`To:
`Cc:
`Subject:
`
`TMOfficialNotices @ USPTO.GOV
`
`Monday, June 24, 2013 11:00 PM
`plenaris@yahoo.com
`evallevine@gmail.com
`Trademark RN 3446225: Official Notice of Acceptance and Acknowledgement under Sections 8 and 15 of
`the Trademark Act
`
`Serial Number: 77182747
`
`Registration Number: 3446225
`Registration Date:
`Jun 10, 2008
`Mark: PLENARIS ADVlSERS(STANDARD CHARACTER MARK)
`Owner: Levine, Eva Liang
`
`Jun 24, 2013
`
`NOTICE OF ACCEPTANCE UNDER SECTION 8
`
`The declaration of use or excusable nonuse filed for the above-identified registration meets the requirements of Section 8 of the
`Trademark Act, 15 U.S.C. §1058. The Section 8 declaration is accepted.
`
`NOTICE OF ACKNOWLEDGEMENT UNDER SECTION 15
`
`The declaration of incontestability filed for the above-identified registration meets the requirements of Section 15 of the
`Trademark Act, 15 U.S.C. §1065. The Section 15 declaration is acknowledged.
`
`The registration will remain in force for the class(es) listed below for the remainder of the ten-year period, calculated
`from the registration date, unless canceled by an order of the Commissioner for Trademarks or a Federal Court.
`
`class(es):
`O36
`
`TRADEMARK SPECIALIST
`POST—REG|STRATION DIVISION
`571-272-9500
`
`REQUIREMENTS FOR MAINTAINING REGISTRATION
`
`WARNING: Your registration will be canceled if you do not file the documents below during the specified time periods.
`
`Requirements in the First Ten Years
`
`What and When to File: You must file a declaration of use (or excusable nonuse) and an application for renewal between the
`9th and 10th years after the registration date. See 15 U.S.C. §§1058, 1059.
`
`Requirements in Successive Ten-Year Periods
`
`What and When to File: You must file a declaration of use (or excusable nonuse) and an application for renewal between
`
`Exh.2..P.I