Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA554024
`ESTTA Tracking number:
`08/14/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
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`Name
`Granted to Date
`of previous
`extension
`Address
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`CULINARY SYSTEMS INC.
`08/14/2013
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`9351 SIR LAWRENCE CT
`WINDERMERE, FL 34786
`UNITED STATES
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`Attorney
`information
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`Allison R. Imber, Esq.
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange Avenue, Suite 1401
`Orlando, FL 32801
`UNITED STATES
`aimber@addmg.com
`Applicant Information
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`Application No
`Opposition Filing
`Date
`Applicant
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`85448806
`08/14/2013
`
`Publication date
`Opposition
`Period Ends
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`04/16/2013
`08/14/2013
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`Avenir Culinary Systems, Inc.
`555 California Street, Suite 1700
`San Francisco, CA 94104
`UNITED STATES
`Goods/Services Affected by Opposition
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`Class 011.
`All goods and services in the class are opposed, namely: Cooking systems, namely, industrial
`cooking ovens, combination steamers and cooking ovens, convection ovens, Sous-vide ovens,
`cookware, namely, electric temperature controlled Sous-vide cookers with built in water bath
`circulators; electronically controlled multi-purpose electric countertop food preparation apparatus for
`cooking, baking, broiling, roasting, toasting, searing, browning, and grilling food; commercial and
`restaurant kitchens and kitchen appliances, namely, combination multipurpose cooking ovens,
`industrial cooking ovens; flattop griddles also known as planchas
`Class 042.
`All goods and services in the class are opposed, namely: Design and development of cooking
`systems, commercial and restaurant kitchens, kitchen furniture and kitchen appliances for others;
`designing and developing workplace facilities and equipment for commercial kitchens and restaurants
`to reduce energy usage and optimize efficiency and safety; design, development, and testing
`services for others in the fields of new food products and new menus
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`Grounds for Opposition
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`Priority and likelihood of confusion
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`Trademark Act section 2(d)
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`

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`Mark Cited by Opposer as Basis for Opposition
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`U.S. Registration
`No.
`Registration Date
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`2749483
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`08/12/2003
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`Application Date
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`12/17/2001
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`Foreign Priority
`Date
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`NONE
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`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
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`CULINARY SYSTEMS
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`NONE
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`Class 042. First use: First Use: 1997/03/00 First Use In Commerce: 1997/03/00
`Consulting services in the nature of food product development and design for
`the restaurant, food product manufacture and retail food industries
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`Attachments
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`Notice of Opposition.pdf(18547 bytes )
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`Certificate of Service
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`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.
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`Signature
`Name
`Date
`
`/Allison R. Imber/
`Allison R. Imber, Esq.
`08/14/2013
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No:___________
`Mark: AVENIR CULINARY SYSTEMS
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`In the Matter of Application Serial No. 85/448806
`Published in the Official Gazette on April 16, 2013
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`Culinary Systems, Inc.,
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`Opposer,
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`v.
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`Avenir Culinary Systems, Inc.,
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`Applicant.
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` /
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`
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`NOTICE OF OPPOSITION
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`Opposer Culinary Systems, Inc. (“Opposer”), a Florida corporation whose address is
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`9351 Sir Lawrence Court, Windermere, Florida, 34786, believes it will be damaged by
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`registration of the mark AVENIR CULINARY SYSTEMS, shown in U.S. Application Serial
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`No. 85/448806, in International Class 11 for “cooking systems, namely, industrial cooking
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`ovens, combination steamers and cooking ovens, convection ovens, Sous-vide ovens, cookware,
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`namely, electric temperature controlled Sous-vide cookers with built in water bath circulators;
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`electronically controlled multi-purpose electric countertop food preparation apparatus for
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`cooking, baking, broiling, roasting, toasting, searing, browning, and grilling food; commercial
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`and restaurant kitchens and kitchen appliances, namely, combination multipurpose cooking
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`ovens, industrial cooking ovens; flattop griddles also known as planchas,” and International
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`Class 42 for “design and development of cooking systems, commercial and restaurant kitchens,
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`kitchen furniture and kitchen appliances for others; designing and developing workplace
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`facilities and equipment for commercial kitchens and restaurants to reduce energy usage and
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`optimize efficiency and safety; design, development, and testing services for others in the fields
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`of new food products and new menus” (collectively, “Applicant’s Goods and Services”), and
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`hereby opposes registration of the application as follows:
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`1.
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`Applicant Avenir Culinary Systems, Inc. (“Applicant”) seeks to register the mark
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`AVENIR CULINARY SYSTEMS as a trademark for the above-described goods and services,
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`as evidenced by the publication of the mark in the Official Gazette on April 16, 2013.
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`2.
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`Applicant filed its application on October 17, 2011 on the basis of its intent to use
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`the mark in commerce within the United States.
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`3.
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`Opposer is the owner of U.S. Service Mark Registration No. 2749483 for the
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`mark CULINARY SYSTEMS & Design (the “CULINARY SYSTEMS mark”) which is
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`specified for use in connection with “consulting services in the nature of food product
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`development and design for the restaurant, food product manufacture and retail food industries.”
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`This registration was renewed on May 20, 2013 and, on August 14, 2009, was deemed to be
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`incontestable pursuant to Section 15 of the U.S. Trademark Act.
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`4.
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`Opposer has used its CULINARY SYSTEMS mark in commerce since at least as
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`early as March of 1997 in connection with the services specified in paragraph 3 above.
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`5.
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`Opposer has extensively promoted and continuously used the CULINARY
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`SYSTEMS mark throughout the United States, and has had significant commercial success in
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`connection with the consulting services offered under its mark. As a result, Opposer’s mark has
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`developed valuable goodwill within the relevant trade and industry.
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`6.
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`The CULINARY SYSTEMS mark is a distinctive and valuable asset of Opposer,
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`and has acquired secondary meaning in the eyes of consumers.
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`7.
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`Opposer used its CULINARY SYSTEMS mark in commerce prior the filing date
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`of Applicant’s application and, on information and belief, before Applicant’s first use of its mark
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`in connection with its goods and/or services within the United States.
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`8.
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`Applicant’s mark AVENIR CULINARY SYSTEMS is confusingly and
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`deceptively similar to Opposer’s CULINARY SYSTEMS mark. Applicant’s mark is very
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`similar in sight, sound, connotation, and commercial impression to Opposer’s CULINARY
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`SYSTEMS mark. Indeed, Applicant’s mark differs from Opposer’s by only the addition of the
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`word “Avenir” and the deletion of the design shown in Opposer’s CULINARY SYSTEMS
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`mark.
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`9.
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`Applicant’s Goods and Services are very similar and closely related to Opposer’s
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`“consulting services in the nature of food product development and design for the restaurant,
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`food product, manufacture and retail food industries,” which are also classified within
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`International Class 42.
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`10.
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` Upon information and belief, Applicant’s channels of trade and class of
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`purchasers are likely to be very similar or identical to those of Opposer.
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`11. Due to the similarity between Applicant’s mark and its services, as well as
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`Opposer’s mark and its goods and services, not to mention the likely similarity of the respective
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`channels of trade and classes of purchasers, the registration of Applicant’s mark will cause great
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`damage and injury to Opposer. Persons familiar with Opposer’s CULINARY SYSTEMS mark
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`and services would likely confuse Applicant’s goods and services with those provided by
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`Opposer. Any defect, objection or fault found with Applicant’s goods and services offered under
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`the mark AVENIR CULINARY SYSTEMS may reflect upon and expose Opposer to liability,
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`and seriously injure the reputation that Opposer has established for its services.
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`12.
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`If Applicant is granted the registration herein opposed, it would obtain at least a
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`prima facie exclusive right to use the mark AVENIR CULINARY SYSTEMS in the United
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`States, thereby causing damage and injury to Opposer.
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`WHEREFORE, Opposer prays that Application Serial No. 85/448806 be rejected, that
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`this opposition be sustained, that the registration sought by Applicant be refused, and that
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`Opposer be granted such additional relief as the Board deems just and proper.
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`Respectfully submitted,
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`/Allison R. Imber/
`David L. Sigalow, Esquire
`Allison R. Imber, 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: dsigalow@addmg.com
` aimber@addmg.com
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`Attorneys for Opposer
`Culinary Systems, Inc.
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`Dated: August 14, 2013
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`CERTIFICATE OF SERVICE
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`
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`I certify that a true and correct copy of the foregoing was served by First Class Mail and
`email on August 14, 2013 to:
`
`Miriam Claire Beezy, Esq.
`Foley & Lardner LLP
`555 S. Flower St., Ste. 3500
`Los Angeles, California 90071-2411
`mbeezy@foley.com
`Attorneys for Applicant
`Avenir Culinary Systems, Inc.
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`/Michel Rodriguez/
`Michel Rodriguez
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