Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA578387
`ESTTA Tracking number:
`12/23/2013
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`Glen Raven, Inc.
`12/25/2013
`
`1831 North Park Avenue
`Glen Raven, NC 27217
`UNITED STATES
`
`Attorney
`information
`
`Christopher Kelly
`Wiley Rein LLP
`1776 K Street, N.W.
`Washington, DC 20006
`UNITED STATES
`ckelly@wileyrein.com Phone:202-719-7000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85829031
`12/23/2013
`
`Publication date
`Opposition
`Period Ends
`
`08/27/2013
`12/25/2013
`
`Suntory Flowers Limited
`4-17-5, Shiba, Minato-ku
`Tokyo, JPX
`JPX
`Goods/Services Affected by Opposition
`
`Class 031. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: seedlings, live plants and flowers
`
`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
`
`3731230
`
`12/29/2009
`
`Word Mark
`
`SUNBRELLA
`
`Application Date
`
`06/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a stylized umbrella design and the word "SUNBRELLA", all
`in orange
`Class 024. First use: First Use: 2008/10/21 First Use In Commerce: 2008/10/21
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach
`umbrellas, area rugs, draperies, sheers, windowtreatments
`
`U.S. Registration
`No.
`Registration Date
`
`3652524
`
`07/07/2009
`
`Word Mark
`Design Mark
`
`SUNBRELLA
`
`Application Date
`
`08/26/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "SUNBRELLA" & Stylized Umbrella Design.
`
`Class 024. First use: First Use: 2008/10/21 First Use In Commerce: 2008/10/21
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture, beach
`umbrellas, area rugs, draperies, sheers, windowtreatments
`
`U.S. Registration
`No.
`Registration Date
`
`2966133
`
`07/12/2005
`
`Application Date
`
`06/09/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`SUNBRELLA "PLUS"
`
`NONE
`
`Class 024. First use: First Use: 1991/06/00 First Use In Commerce: 1991/06/00
`
`

`
`fabrics sold in the piece for use in producing awnings, sun and windscreens,
`tents, canopies, boat covers and tops, indoor and outdoor furniture and beach
`umbrellas
`
`U.S. Registration
`No.
`Registration Date
`
`709110
`
`12/27/1960
`
`Application Date
`
`05/03/1960
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`SUNBRELLA
`
`NONE
`
`Class 024. First use: First Use: 1959/12/11 First Use In Commerce: 1959/12/11
`Fabrics for Awnings, Furniture, Handbags, and Sportswear
`
`77749650#TMSN.jpeg( bytes )
`77556137#TMSN.jpeg( bytes )
`76596398#TMSN.gif( bytes )
`NOTICE OF OPPOSITION SUNBELIA.pdf(348412 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
`
`/Christopher Kelly/
`Christopher Kelly
`12/23/2013
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NOTICE OF OPPOSITION
`
`Opp. N0.
`
`IN RE APPLICATION SER. NO. 85/829,031
`
`FILED:
`MARK:
`
`January 22, 2013
`SUNBELIA
`
`Published:
`
`August 27, 2013
`
`) )
`
`) )
`
`) )
`
`) )
`
`GLEN RAVEN, INC.
`
`Opposer,
`
`V.
`
`SUNTORY FLOWERS LIMITED,
`
`)
`Applicant.
`MT)
`
`Glen Raven, Inc., a corporation organized under the laws of the state of North Carolina,
`
`with principal offices located at 1831 North Park Avenue, Glen Raven, North Carolina 27217
`
`(“Opposer”), hereby opposes registration of application Ser. No. 85/829,031 — SUNBELIA for
`
`“seedlings, live plants and flowers,” in International Class 31, filed January 22, 2013, by Suntory
`
`Flowers Limited (“Applicant”) and published for opposition in the Oflicial Gazette dated August
`
`27, 2013. Opposer filed for and was granted an extension of time to oppose application Ser. No.
`
`85/829,031 to December 25, 2013.
`
`Opposer will be damaged if the opposed application matures to registration and puts forth
`
`the following grounds for opposition:
`
`l.
`
`Opposer is a leading manufacturer of fabrics sold in the piece for use in a diverse
`
`array of applications, including, without limitation, umbrellas, awnings and canopies and outdoor
`
`furniture and accessories.
`
`

`
`2.
`
`Opposer adopted and commenced use of its flagship trademark SUNBRELLA (as
`
`defined below) in 1959 to identify a line of performance fabrics for a wide variety of end uses,
`
`including the products identified in the preceding paragraph.
`
`3.
`
`Opposer’s SUNBRELLA Mark and fabrics are closely associated with most, if
`
`not all, of the finished products containing SUNBRELLA fabrics in the minds of consumers and
`
`consumers frequently base purchasing decisions on whether such goods are made using
`
`SUNBRELLA brand fabrics.
`
`4.
`
`Opposer actively and extensively advertises and promotes its SUNBRELLA
`
`brand fabrics to all classes of purchasers, including purchasers of finished products, in major
`
`newspapers, magazines, trade journals and via the Internet. Opposer also distributes promotional
`
`brochures, pamphlets, promotional videos and podcasts and point of purchase materials.
`
`Opposer also maintains an active presence on the Internet in support of its SUNBRELLA brand
`
`fabrics through its website found at <www.sunbrella.com> and such social networking sites as
`
`Facebook and Twitter.
`
`5.
`
`Opposer’s SUNBRELLA brand fabrics receive considerable gratuitous publicity
`
`and awards.
`
`6.
`
`Due to the renown of Opposer’s SUNBRELLA brand fabrics, manufacturers and
`
`distributors enthusiastically promote use of SUNBRELLA fabrics in their finished products and
`
`these fabrics are advertised prominently at the point of sale.
`
`7.
`
`Opposer routinely supplies pass-through hang tags, labels and other materials
`
`bearing the SUNBRELLA Mark to its manufacturing customers, which are used by these
`
`customers to promote Opposer’s SUNBRELLA fabrics to purchasers of finished products.
`
`

`
`8.
`
`Finished products featuring Opposer’s SUNBRELLA fabrics often are principal
`
`components of outdoor spaces such as patios, decks, gardens, pools and other area where live
`
`flowers and other plants are used.
`
`9.
`
`The close association between Opposer’s SUNBRELLA fabrics, finished
`
`products containing Opposer’s SUNBRELLA fabrics and outdoor venues containing live flowers
`
`and plants is reflected in, among other things, Opposer’s marketing activities directed to
`
`landscape architects and gardeners, among others.
`
`10.
`
`Opposer’s SUNBRELLA brand fabrics and/or products containing SUNBRELLA
`
`fabrics are advertised, promoted and sold through such retail outlets as nurseries, gardening
`
`centers and other venues where live flowers and plants are sold.
`
`1 1.
`
`Based on Opposer’s extensive, exclusive and continuous use of its SUNBRELLA
`
`Mark, the SUNBRELLA Mark is recognized by the consuming public as a designator of origin
`
`with respect to Opposer’s products and related goods and services.
`
`12.
`
`Opposer is the owner of all right, title and interest in the following federal
`
`trademark registrations which presently are valid and subsisting in law (collectively the
`
`“SUNBRELLA Mark”). Photocopies are attached as Exhibit A.
`
`0 Reg. No. 3,731,230 — SUNBRELLA & Umbrella Design for “fabrics sold in the
`piece for use in producing awnings, sun and windscreens, tents, canopies, boat
`covers and tops, indoor and outdoor furniture, beach umbrellas, area rugs,
`draperies, sheers, window treatments,” with a date of first use of 2008 and
`registered on the Principal Register December 29, 2009.
`
`0 Reg. No. 3,652,524 — SUNBRELLA & Umbrella Design for “fabrics sold in the
`piece for use in producing awnings, sun and windscreens, tents, canopies, boat
`covers and tops, indoor and outdoor furniture, beach umbrellas, area rugs,
`draperies, sheers, window treatments,” with a date of first use of 2008 and
`registered on the Principal Register July 7, 2009.
`
`0 Reg. No. 2,966,133 — SUNBRELLA “PLUS” for “fabrics sold in the piece for
`use in producing awnings, sun and windscreens, tents, canopies, boat covers and
`
`

`
`tops, indoor and outdoor furniture and beach umbrellas,” with a date of first use of
`1991 and registered on the Principal Register July 12, 2005.
`
`0 Reg. No. 709,110 — SUNBRELLA in standard character form for “fabrics for
`awnings, furniture, handbags and sportswear,” with a date of first use of 1959 and
`registered on the Principal Register on December 27, 1960.
`
`13.
`
`Opposer’s Reg. No. 709,110 is statutorily incontestable as to the goods listed
`
`therein and is conclusive evidence of the validity of the registered mark, Opposer’s ownership
`
`thereof and of Opposer’s exclusive right to use the SUNBRELLA Mark in commerce on or in
`
`connection with the goods identified in the registration, as provided by Section 33(b) of the
`
`Lanham Act, 15 U.S.C. § l115(b).
`
`14.
`
`Opposer has invested substantial sums advertising and promoting the sale of
`
`goods offered under the SUNBRELLA Mark. Based on the extensive, exclusive and continuous
`
`use of the SUNBRELLA Mark by Opposer, the relevant consuming public has come to
`
`recognize the SUNBRELLA Mark as being used by Opposer and to associate and identify the
`
`SUNBRELLA Mark with Opposer. Opposer has obtained and enjoys an exceedingly Valuable
`
`reputation and goodwill symbolized by the SUNBRELLA Mark.
`
`15.
`
`On information and belief, Applicant has adopted and uses the designation
`
`SUNBELIA on or in connection with seedlings, live plants and flowers.
`
`16.
`
`Applicant’s identified goods are closely related to Opposer’s fabrics and other
`
`products sold under or in connection with Opposer’s SUNBRELLA Mark.
`
`17.
`
`SUNBELIA so resembles Opposer’s SUNBRELLA Mark in terms of appearance,
`
`sound, connotation and commercial impression as to be likely, when applied to Applicant’s
`
`goods, to cause confusion and mistake and to deceive.
`
`18.
`
`SUNBELIA is confusingly similar to Opposer’s SUNBRELLA Mark so that
`
`registration of the name by Applicant would be inconsistent with and damaging to Opposer’s
`
`

`
`prior and exclusive rights in its registered marks as applied to the goods with which they are
`
`used.
`
`19.
`
`Opposer will be damaged by Applicant’s registration of SUNBELIA.
`
`WHEREFORE, Opposer prays that its opposition be sustained and that the opposed
`
`application and subject mark be denied registration.
`
`Contemporaneously with the electronic filing of this Notice of Opposition, Opposer’s
`
`counsel authorizes filing fees in the amount of $300.00 to be debited from counsel’s Deposit
`
`Account No. 501129. If the amount received is insufficient and additional fees are required, the
`
`USPTO is authorized to charge Deposit Account No. 501129.
`
`Please recognize as attorneys for Opposer in this proceeding Christopher Kelly and
`
`Jennifer L. Elgin and the firm WILEY REIN LLP, 1776 K Street, N.W., Washington, D.C.
`
`20006.
`
`This opposition is being filed by the undersigned attorneys at law, duly authorized to
`
`represent Opposer in this proceeding, pursuant to Trademark Rule 2. 1 01 (b).
`
`Respectfully submitted,
`
`GLEN RAVEN, INC.
`
`By:
`
`/Christopher Kelly/
`Christopher Kelly
`Jennifer Elgin
`WILEY REIN LLP
`
`1776 K Street, N.W.
`Washington, D.C. 20006
`(202) 719-7000
`
`Attorneys for Opposer
`
`Dated: December 23, 2013
`
`

`
`EXHIBIT A
`
`

`
`wfiimg étateg of am“.
`flutter: étates ifiateut mm ?!Irah2ma1'Is ®fftn:2
`
`4fl\
`
`smbreila
`
`Reg, No, 3,731,230 GLEN RAVEN, INC. (NORTH CAROLINA CORPORATION)
`Registered Dec. 29, 2009 1831 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`
`11117.
`
`FOR: FABRICS SOLD IN THE PIECE FOR USE IN PRODUCING AWNINGS, SUN AND
`WINDSCREENS, TENTS, CANOPIES, BOAT COVERSAND TOPS, INDOORAND OUTDOOR
`FURNITURE, BEACH UMBRELLAS, AREA RUGS, 1)RAPERIES, SHEERS, WINDOW
`TRADEMARK TREATMENTS. IN CLASS 24 (U.S. CLS. 42 AND 50).
`PRINCIPAL REGISTER
`
`FIRST USE 10-21-2008',1N COMMERCE 10-21-2008.
`
`OWNER OF U.S. REG. NOS. 2,761,048, 3,118,723 AND OTHERS.
`
`THE COLOR(S) ORANGE IS/ARE CLAIMED AS A FEATURE OF THE MARK.
`
`THE MARK CONSISTS OF A STYLIZED UTVIBRELLA DESIGN AND THE WORD “SUN-
`BRELLA", ALL IN ORANGE
`
`SER. NO. 77-749,650, FILED 6-2-2009.
`
`SHANNON TWOHIG, EXAMINING ATTORNEY
`
`
`
`Dimdur of tin. Unitul Sate; Patcnl mu! l'ru<km:Ix'< UITIC-:
`
`

`
`Int. CL: 24
`
`Prior U.S. Cls.: 42 and 50
`
`Reg. No. 3,652,524
`United States Patent and Trademark Office Registered July 7, 2009
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`lfi\
`smbrella
`
`GLIEN RAVEN, INC. (NORTH CAROLINA COR-
`ORATION
`1331 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`
`FIRST USE 10-21-2008; IN COMMERCE 10-21-2008.
`OWN R OF U
`REG. NO 7 911
`2028 355
`AND O-EHERS.
`‘S’
`S‘
`0 ’
`0’
`’
`’
`’
`
`PRF§§‘U§§§I1‘GICi§§,3§?b}IégH§§§C§I§gR‘%§§I§
`SCREENS, TENTS, CANOPIES, BOAT COVERS
`AND TOPS,
`INDOOR AND OUTDOOR FURNI-
`TURE, BEACH UMBRELLAS, AREA RUGS, DRAF-
`ERIES, SHEERS, WINDOW TREATMENTS,
`IN
`CLASS 24 (US_ CLS. 42 AND 50).
`
`THE MARK CONSISTS OF "SUNBRELLA" &
`STYLIZED UMBRELLA DESIGN‘
`SN 77-556,137, FILED 8-26-2008.
`
`KATHLEEN LORENZO, EXAMINTNG ATTORNEY
`
`

`
`Int. Cl.: 24
`
`Prior U.S. Cls.: 42 and 50
`
`Reg. No. 2,966,133
`Registered July 12, 2005
`United States Patent and Trademark Office
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`SUNBRELLA “PLUS”
`
`GLEN RAVEN, INC. (NORTH CAROLINA COR-
`PORATION)
`1831 NORTH PARK AVENUE
`GLEN RAVEN, NC 27217
`
`FOR: FABRICS SOLD IN THE PIECE FOR USE IN
`PRODUCING AWNINGS, SUN AND WIND-
`SCREENS, TENTS, CANOPIES, BOAT COVERS
`AND TOPS, INDOOR AND OUTDOOR FURNITURE
`AND BEACH UMBRELLAS , IN CLASS 24 (U.S. CLS.
`42 AND 50).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 1,815,959, 2,028,355
`AND OTHERS.
`
`SER. NO. 76-596,398, FILED 6-9-2004.
`
`FIRST USE 6-0-1991; IN COMMERCE 6-0-1991.
`
`VERNA BETH RIRIE, EXAMINING ATTORNEY
`
`

`
`United States Patent Office Regimd Dec, Z3f’;§,§,2
`
`PRINCIPAL REGISTER
`
`Trademark
`
`Sol’. No. 96,329, filed May 3, 1969
`
`SUNBRELLA
`
`Glqn Raven Cotton Mills, Inc. (North Carolina eorpora-
`11011)
`Glen Raven, N.C.
`
`For: FABRICS FOR AWNINGS, FURNITURE.
`HANDBAGS, AND SPORTSWEAR, in CLASS 42.
`First use Dec. 11, 1959; in commerce Dec. 11, 1959.
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23rd day of December, 2013, I served the foregoing
`
`Notice of Opposition by causing a copy thereof to be deposited in the United States Mail,
`
`postage prepaid to the following address:
`
`David P. Petersen
`
`Klarquist Sparkman, LLP
`121 SW Salmon Street, Suite 1600
`
`Portland, OR 97204-2988