Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA588704
`ESTTA Tracking number:
`02/21/2014
`
`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
`
`Name Rite, L.L.C.
`02/22/2014
`
`27710 Jefferson Avenue, Suite 105
`Temecula, CA 92590
`UNITED STATES
`
`Attorney
`information
`
`Dana S. Gross
`Morgan, Lewis & Bockius LLP
`1111 Pennsylvania Avenue, NW Attention: TMSU
`Washington, DC 20004
`UNITED STATES
`dgross@morganlewis.com, apolott@morganlewis.com,
`ateixeira@morganlewis.com, trademarks@morganlewis.com
`Phone:202.739.5151
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85653339
`02/21/2014
`
`Publication date
`Opposition
`Period Ends
`
`12/24/2013
`02/22/2014
`
`Rite Value Pharmacy, LLC
`2673 Highway 644, P.O. Box 297
`Louisa, KY 41230
`CAYMAN ISLANDS
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2005/08/00 First Use In Commerce: 2005/08/00
`All goods and services in the class are opposed, namely: Retail drug store services; Retail pharmacy
`services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1280221
`
`05/29/1984
`
`Application Date
`
`01/05/1983
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`RITE AID
`
`NONE
`
`Class 042. First use: First Use: 1966/01/03 First Use In Commerce: 1966/01/03
`Retail Drug Store Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2893035
`
`10/12/2004
`
`RITE AID
`
`Application Date
`
`11/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1979/12/03 First Use In Commerce: 1979/12/03
`RETAIL PHARMACY SERVICES, AND RETAIL STORE SERVICES, IN THE
`FIELDS OF BEAUTY, HEALTHCARE, COSMETICS, PERSONAL CARE,
`CLOTHING, HOUSEWARES, GARDENING, AUTO CARE,GROCERIES, PET
`SUPPLIES, OFFICE SUPPLIES AND PHOTO PROCESSING
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2905999
`
`11/30/2004
`
`RITE AID
`
`Application Date
`
`11/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1979/12/03 First Use In Commerce: 1979/12/03
`RETAIL PHARMACY SERVICES, AND RETAIL STORE SERVICES, IN THE
`
`

`
`FIELDS OF BEAUTY, HEALTHCARE, COSMETICS, PERSONAL CARE,
`CLOTHING, HOUSEWARES, GARDENING, AUTO CARE,GROCERIES, PET
`SUPPLIES, OFFICE SUPPLIES AND PHOTO PROCESSING
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324438
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 004. First use: First Use: 2010/02/00 First Use In Commerce: 2010/02/00
`Fire lighters
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324439
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 006. First use: First Use: 2000/08/00 First Use In Commerce: 2000/08/00
`Metal locks; aluminum foil
`
`U.S. Registration
`No.
`Registration Date
`
`4324440
`
`04/23/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 008. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Forks and spoons; nail clippers; pedicure sets; tweezers; cuticle scissors;
`mustache and beard trimmers; eyelash curlers; manicure sets; disposable
`tableware, namely, knives, forks and spoons; razor blades; shaving blades
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324441
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 010. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Blood pressure monitors; blood glucose monitors; medical test kits for
`diabetesmonitoring for home use; lancets; gloves for medical use; finger splints;
`finger guards for medical purposes; medical scissors; surgical sponges; medical
`apparatus, namely, an ear wash device in the nature of a container to be filled
`with appropriate fluid by the user for flushing ear wax from the ear; ear plugs for
`medical purposes; ice bags for medical purposes; chemically activated hot and
`cold gel packs for medical purposes; orthopedic support bandage, namely,
`wearable pads for the hands; spoons for administering medicine; droppers for
`administeringmedication, sold empty; thermometers for medical purposes;
`tongue scrapers; mouth guards for medical purposes
`
`U.S. Registration
`No.
`Registration Date
`
`4324442
`
`04/23/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 011. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Hot water bottles; lightbulbs
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324446
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 016. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Glue for stationery or household use; glue sticks for stationery or household use;
`disposable diapers; personal medication organizers; file folders; index cards;
`envelopes; paper; adhesive tapes for stationery or household purposes;
`bathroom tissue; facial tissue, paper tissues;paper towels; paper filters for coffee
`makers; paper napkins; cellulose wipes for household use; lunch bags; plastic
`wrap; general purpose plastic bags; plastic food storage bags for household
`use; freezer bags; plastic sandwich bags; plastic trash bags; pre-paid telephone
`calling cards, not magnetically encoded; binders; legal pads; notebook paper;
`notebooks; document portfolios; erasers; pencils; pens; drawing rulers
`
`U.S. Registration
`No.
`Registration Date
`
`4324447
`
`04/23/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 024. First use: First Use: 2010/05/00 First Use In Commerce: 2010/05/00
`Kitchen towels; dish cloths; wash cloths; beach towels
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324448
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 025. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Sleep masks; insoles for footwear; heelinserts
`
`U.S. Registration
`No.
`Registration Date
`
`4324449
`
`04/23/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 028. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Bubble making wand and solution sets; playing cards
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324450
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 029. First use: First Use: 2005/12/00 First Use In Commerce: 2005/12/00
`Fruit salads and vegetable salads; fresh cut fruit packaged for sale; fresh
`cutvegetables packaged for sale; prepared meals consisting primarily of meats
`and vegetables; olive oil; corned beef; coffee creamer; lemon juice for cooking
`purposes; raisins; dried dates; prunes; processed olives; soups; broth;
`processed mushrooms; canned or bottled fruits; beef jerky; snack mix consisting
`primarily ofprocessed fruits, processed nuts and/orraisins; processed nuts;
`processed sunflower seeds
`
`U.S. Registration
`No.
`Registration Date
`
`4324451
`
`04/23/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 031. First use: First Use: 1994/08/00 First Use In Commerce: 1994/08/00
`Cat litter
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4324452
`
`04/23/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 032. First use: First Use: 1999/06/00 First Use In Commerce: 1999/06/00
`Bottled water; fruit juice; vegetable juice; soft drinks flavored with tea
`
`U.S. Registration
`No.
`Registration Date
`
`4332031
`
`05/07/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 021. First use: First Use: 1997/07/00 First Use In Commerce: 1997/07/00
`Drinking straws
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4338340
`
`05/21/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 021. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Cups; plates; bowls; bath sponges; cosmetics brushes; combs; powder puffs;
`microdermabrasion sponges for cosmetic use; facial cleansing sponges;
`sponges used for applying make-up; applicator sticks for applying make-up;
`cotton balls; personal dispensers for pills or capsules fordomestic use; pill boxes
`for personal use; disposable latex gloves for general use; rubber household
`gloves; dusting orcleaning cloths; dusters; lint rollers;plastic water bottles sold
`empty; pre-moistened towelettes for cleaning; oral care kit comprising
`toothbrushes and floss; dental floss; denture baths; electricand non-electric
`toothbrushes; toothbrush holders
`
`U.S. Registration
`No.
`Registration Date
`
`4427788
`
`11/05/2013
`
`Word Mark
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 001. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Unexposed camera film; zinc oxide; boric acid
`Class 021. First use: First Use: 2003/10/00 First Use In Commerce: 2003/10/00
`Reusable cold refrigerant gel packs andfreeze packs used to keep food and
`drinks cold
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4427789
`
`11/05/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 003. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Baby wipes; baby shampoo; baby lotion; baby powder; non-medicated diaper
`rash ointments and lotions; sunscreen preparations; sun care lotions; all
`purpose cotton swabs for personal use; bar soap; hand soaps; liquid soap;
`bubble bath; bath oil; bath salts; body oil; body powder; body butter; body wash;
`eyeglass lens cleaning solutions and cleaning wipes; non-medicated feminine
`hygiene wash; feminine hygiene cleansing towelettes; cotton balls for cosmetic
`purposes; pumice stones for personal use; non-medicated foot powder; liquid
`soap used in foot bath; cosmetics; cotton for cosmetic purposes; nail grooming
`products, namely, tips andglue; emery boards; nail polish remover; petroleum
`jelly for cosmetic purposes;lip balm; shampoos; hair care preparations; hair
`tonic; air fragrancing preparations; dish detergents; denture
`cleaningpreparations; mouth washes; toothpastes; tooth whitening preparations;
`non-medicated feminine hygiene wash; feminine hygiene cleansing towelettes;
`body wash for humans; aftershave; hair tonic; shaving cream; shaving gel;
`shaving lotion; depilatory creams; non-medicated acne treatment preparations;
`
`

`
`astringents for cosmetic purposes; facial scrubs; facial cleansers; cloths or
`tissues impregnated with a skin cleanser; make-up remover, cold creams; skin
`cleansers, beauty serums;anti-aging cream; non-medicated anti-aging serum;
`anti-wrinkle creams; wrinkle removing skin care preparations; eye cream; night
`cream; face and body lotions; non-medicated acne treatment preparations; body
`scrub; astringents for cosmetic purposes; exfoliating body scrubs and washes;
`impregnated cleaning pads impregnated with toilet preparations; moisturizing
`preparations for the skin; body oil; cocoa butter for cosmetic purposes;
`skinlotion; aloe vera gel for cosmetic purposes; all purpose cotton swabs for
`personal use; non-medicated sun care preparations; sun care lotions; sun
`screen preparations; sun block preparations; sun-tanning preparations; sun tan
`oil; non-medicated chest rubs to relieve cold symptoms; all purpose
`disinfectants; disinfectant bathroom cleaners; drain openers; furniture polish;
`glass cleaners; ammonia for cleaning purposes; washing preparations and
`laundry bleach; laundry detergent; fabric softeners; anti-static dryer sheets;
`impregnated cleaning, dusting or polishing cloths
`Class 005. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`All purpose disinfectants; disinfectantbathroom cleaners; air deodorizing
`preparations
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4427790
`
`11/05/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 005. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Diapers for incontinence; incontinence garments; incontinence pads; disposable
`sanitizing wipes; dietary and nutritional supplements; infant formula; electrolytes;
`medicated diaper rash ointments andlotions; antibacterial hand lotions
`andhandwash; glucose for medical purposes;test strips for measuring blood
`glucoselevels; eye drops; contact lens solutions; eye patches for medical
`purposes; personal sexual lubricants; pregnancy testkits for home use; ovulation
`test kits;tampons; feminine hygiene pads; dietarysupplements for urinary health;
`medicated products for feminine use, namely, feminine anti-itch creams;
`antifungal cream; pharmaceutical preparation for the treatment of fungus
`infections of the female reproductive tract; panty liners; first aid kits; topical first
`aid gel; adhesive bandages; antiseptic liquid bandages; antiseptic cotton; gauze;
`adhesive tapes for medical purposes; surgical and medical dressings; anti-itch
`cream, ointment and spray; calamine lotion; fungal medications; ear drops;
`antibacterial substances for medical purposes; petroleum jelly for medical
`purposes; antibiotic creams, ointments and sprays; burn reliefmedication; anti-
`inflammatory salves; lice treatment preparations; hydrogen peroxide for medical
`use; rubbing alcohol; witch hazel; glycerin for medical purposes; epsom salts;
`
`

`
`iodine; corn pads; cornand callus creams; wart removing preparations;
`medicated foot powder; gastro-intestinal treatment preparations; diarrhea
`medication; antacids; anti-gas preparations; nutritional supplements, namely,
`probiotic compositions; motion sickness treatment preparations; nausea
`treatmentpreparations; hemorrhoid treatment preparations; lactose for medical
`purposes; laxatives; enema preparations; stool softeners; dietary supplements
`for medical use in tablets form based on plant extracts, namely, senna leaves;
`dietary fiberto aid digestion; dietary fiber for treating constipation; suppositories;
`medicated shampoos; dandruff shampoos; medicated brush-on oral care gels;
`denture adhesives; oral analgesics; analgesic preparations; anti-pyretic and anti-
`inflammatory preparations; migraine treatment preparations; pharmaceutical
`preparations, namely, preparations for the relief or back pain, muscle pain,
`arthritis and joint pain; pharmaceutical preparations, namely, preparations for
`the relief and prevention of upper respiratory symptoms, headache and
`inflammation; nasal decongestants; pharmaceutical preparations, namely, cough
`and cold preparations; pharmaceutical preparations, namely, sinus preparations;
`pharmaceutical preparations, namely, sleep aids; muscle relaxants;
`multipurpose medicated antibiotic cream, analgesic balm and mentholated
`salve; highly caffeinated energy pills and capsules; styptic pencils; acne
`treatment preparations; medicated skin care preparations; impregnated cleaning
`pads impregnatedwith medicated skin preparations; anti-itch cream and
`ointment; smoking cessation preparations; medicated sun care preparations;
`aloe vera gel for therapeutic purposes; cotton swabs for medical purposes;
`medicated lip balm; antihistamines;allergy medications; preparations for treating
`colds; decongestants; cough expectorants; cough syrups; cough lozenges;
`dietary supplements; decongestant nasal sprays; saline solution for medical
`purposes; concentrated saline capsules for sinus and nasal irrigation; inhaled
`pharmaceutical preparations for the treatmentof respiratory diseases and
`disorders; medicated chest rubs to relieve cold symptoms; medicated throat
`sprays; preparations for treating colds; liquid inhalantmedication for relief of
`cough associated with a cold; motion sickness treatment preparations;
`headache treatment preparations; disinfectant toilet bowl cleaners; vitamin and
`mineral supplements; calcium supplements; prenatal vitamins; nutritional
`supplements
`Class 008. First use: First Use: 2004/10/00 First Use In Commerce: 2004/10/00
`Foot care implements, namely, foot files
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4427792
`
`11/05/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 016. First use: First Use: 2001/12/00 First Use In Commerce: 2001/12/00
`
`

`
`Adhesive packing tape for stationery orhousehold use
`Class 017. First use: First Use: 2001/03/00 First Use In Commerce: 2001/03/00
`Duct tape; masking tape; adhesive tape for packing for industrial or
`commercialuse
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4427793
`
`11/05/2013
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a shield design containing "RITE AID".
`
`Class 029. First use: First Use: 2011/01/00 First Use In Commerce: 2011/01/00
`Canned tomatoes
`Class 030. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Candy; chocolate covered raisins; chocolate covered nuts; lollipops;
`marshmallows; chocolates; caramels; bubble gum; chewing gum; jelly beans;
`sandwiches; panini; parfaits; tea; coffee; powders used in the preparation of tea
`based beverages; sugar; sugar substitutes; ketchup; vinegar; cones for ice
`cream; gravy mixes;spices; honey; tomato sauce; crackers; cookies; cheese
`flavored snacks, namely,cheese curls; cheese flavored snacks, namely, puffed
`cheese balls; pretzels; popcorn
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4464684
`
`01/14/2014
`
`RITE AID
`
`Application Date
`
`09/19/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of a shield design containing "RITE AID".
`
`

`
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Class 008. First use: First Use: 2002/02/00 First Use In Commerce: 2002/02/00
`Eye glasses repair kits featuring a hand-operated screwdriver, lens polishing
`cloth, metal screws
`Class 009. First use: First Use: 1989/09/00 First Use In Commerce: 1989/09/00
`Batteries; cameras; contact lens cases;eyewear accessories, namely, straps,
`neck cords, nose guards, and head straps; swimming goggles; ear plugs not for
`medical purposes; pre-paid telephone callingcards, magnetically encoded;
`graduated rulers for office and stationery; thermometers; covers for
`thermometers
`
`2709892
`
`Application Date
`
`02/07/2001
`
`04/22/2003
`
`Foreign Priority
`Date
`RITE AID WITH US IT'S PERSONAL
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: 2001/02/00 First Use In Commerce: 2001/02/00
`RETAIL PHARMACY SERVICES
`
`U.S. Registration
`No.
`Registration Date
`
`2134953
`
`02/03/1998
`
`Application Date
`
`04/17/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`1-800-RITE AID
`
`NONE
`
`Class 042. First use: First Use: 1996/06/00 First Use In Commerce: 1996/06/00
`retail drug store services
`
`U.S. Registration
`No.
`Registration Date
`
`2161703
`
`06/02/1998
`
`Application Date
`
`03/18/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`RITE ADVICE
`
`NONE
`
`Class 042. First use: First Use: 1996/12/01 First Use In Commerce: 1996/12/01
`providing personalized information to customers regarding prescription drugs
`they have purchased
`
`U.S. Registration
`No.
`Registration Date
`
`4390903
`
`08/27/2013
`
`Application Date
`
`08/31/2012
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`Date
`RITE AID PHARMACY RITE CARE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the terms "RITE AID" in a Shield Design above the term
`"PHARMACY" in a rectangular box with the term "RITE CARE" to the right with a
`semi circle.
`Class 035. First use: First Use: 2008/10/00 First Use In Commerce: 2008/10/00
`Retail pharmacy services; physician referrals
`Class 044. First use: First Use: 2008/10/00 First Use In Commerce: 2008/10/00
`Medication therapy management services,namely, pharmaceutical
`consultations, medication therapy review, personal medication record keeping,
`the development ofmedication-related action plans, the preparation and
`dispensing of medications,and providing information to patients related to the
`administration of medications; health care services, namely, providing
`vaccination services and information relating to vaccination regimens, diabetes
`awareness and counseling services, blood glucose testing and counseling
`services, heart health counseling featuringblood cholesterol testing and blood
`pressure screening services, fitness evaluation and weight management
`counseling, osteoporosis screening and bone density testing services, and
`medication management services
`
`3931809
`
`Application Date
`
`06/29/2009
`
`03/15/2011
`
`Foreign Priority
`Date
`RITE AID PHARMACY WELLNESS+
`
`NONE
`
`The mark consists of a shield design containing "RITE AID" with the word
`"PHARMACY" under the shield with "WELLNESS" and a plus sign to the right.
`The quadrilateral in the mark is intended to be a plus sign and not a cross.
`Class 035. First use: First Use: 2009/10/19 First Use In Commerce: 2009/10/19
`promoting the goods and services of others by means of the issuance of loyalty
`rewards cards; administration of a discount program for enabling participants
`toobtain discounts on goods and services through use of a discount membership
`card
`
`Attachments
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`76558029#TMSN.gif( bytes )
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`

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`76558028#TMSN.jpeg( bytes )
`85732876#TMSN.jpeg( bytes )
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`85733077#TMSN.jpeg( bytes )
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`76205946#TMSN.gif( bytes )
`85718157#TMSN.jpeg( bytes )
`77769924#TMSN.jpeg( bytes )
`Rite-Value Pharmacy - Notice of Opposition.pdf(58834 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
`
`/Dana S. Gross/
`Dana S. Gross
`02/21/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposer,
`
`
`In re Application Serial. No. 85/653,339
`
`Mark: RITE-VALUE X PHARMACY
`
`
`
`
`
`
`NAME RITE, L.L.C.,
`
`
`
`v.
`
`RITE VALUE PHARMACY, LLC,
`
`
`
`
`
`Applicant.
`
`
`Published: December 24, 2013
`
`Opposition No.: _______________
`
`
`
`NOTICE OF OPPOSITION
`
`Name Rite, L.L.C. (“Opposer”), a corporation organized and existing under the laws of
`
`
`
`
`
`
`
`
`
`Delaware, having a principal place of business at 27710 Jefferson Avenue, Suite 105, Temecula,
`
`California 92590, believes that it would be damaged by the registration of the mark RITE-
`
`VALUE X PHARMACY, shown in U.S. Trademark Application Serial No. 85/653,339
`
`(“Applicant’s Mark”), filed by Rite Value Pharmacy, LLC (“Applicant”), and hereby opposes
`
`same.
`
`
`
`As grounds for opposition, Opposer alleges as follows:
`
`1.
`
`Opposer and its affiliates (collectively, “Rite Aid”) first used the RITE AID mark
`
`in interstate commerce at least as early as January 3, 1966, and have used marks consisting of
`
`and containing RITE AID in connection with a wide range of retail services and related products
`
`and services continuously since that time.
`
`2.
`
`Opposer owns numerous federal registrations and pending applications for the
`
`RITE AID mark (collectively, the “RITE AID Marks”), including, but not limited to, the
`
`DB1/ 77432345.3
`
`
`

`
`registrations set forth on Schedule A and the registrations listed below that cover retail drug store
`
`and pharmacy services:
`
`Mark
`RITE AID
`
`Reg. No.
`1,280,221
`May 29, 1984
`2,893,035
`Oct. 12, 2004
`
`2,905,999
`Oct. 12, 2004
`
`Goods/Services
`“Retail Drug Store Services,” in Class 42.
`
`“Retail pharmacy services, and retail store services,
`in the fields of beauty, healthcare, cosmetics,
`personal care, clothing, housewares, gardening, auto
`care, groceries, pet supplies, office supplies and
`photo processing” in Class 35.
`“Retail pharmacy services, and retail store services,
`in the fields of beauty, healthcare, cosmetics,
`personal care, clothing, housewares, gardening, auto
`care, groceries, pet supplies, office supplies and
`photo processing,” in Class 35.
`
`
`
`
`
`
`3.
`
`Opposer also owns federal registrations and pending applications for trademarks
`
`and service marks featuring RITE AID and/or RITE in connection with other terms, and used to
`
`identify a wide range of retail services and related products and services (together with the RITE
`
`AID Marks, the “Opposer’s Marks”), including, but not limited to, the registrations set forth on
`
`Schedule B.
`
`4.
`
`The registrations referenced in Paragraphs 2 and 3 above and listed on Schedules
`
`A and B are valid and subsisting, in full force and effect, and constitute prima facie evidence of,
`
`inter alia, Opposer’s ownership of the exclusive right to use the covered marks in commerce in
`
`connection with the goods and/or services specified in the registrations.
`
`5.
`
`Among the registrations referenced in Paragraphs 2 and 3 above and listed on
`
`Schedules A and B, the following registrations are incontestable pursuant to the provisions of
`
`Section 15 of the Lanham Act, 15 U.S.C. § 1065, and provide conclusive evidence of Opposer’s
`
`exclusive right to use the marks in commerce in connection with the goods and/or services
`
`
`
`2
`
`

`
`specified in the registrations: Registration Numbers 1,280,221, 2,893,035, 2,905,999, 2,709,892,
`
`2,134,953 and 2,161,703.
`
`6.
`
`In addition, Opposer owns significant and extensive common law rights in the
`
`Opposer Marks by virtue of the continuous use of one or more of these marks at all times since at
`
`least as early as January 3, 1966.
`
`7.
`
`Rite Aid currently operates approximately 4,600 Rite Aid retail pharmacy
`
`locations in thirty-one (31) states and the District of Columbia, including the state of Kentucky,
`
`and offers goods and services under the Opposer’s Marks at each of these locations, as well as
`
`on-line via the https://www.riteaid.com/ and http://shop.riteaid.com/ websites.
`
`8.
`
`Rite Aid also currently employs roughly 89,000 associates, including
`
`approximately 11,500 pharmacists, who work at Rite Aid retail pharmacy locations and generally
`
`wear uniforms and/or name tags that displays one or more of the RITE AID Marks.
`
`9.
`
`Through Rite Aid’s extensive and continuous use and promotion of Opposer’s
`
`Marks, Opposer has established a family of “RITE AID” marks. This family of marks has been
`
`used and promoted together in such a way as to create public perception of the distinctive “RITE
`
`AID” as designations of the source of Opposer’s goods and services.
`
`10.
`
`Rite Aid has expended considerable time, effort, and money advertising and
`
`promoting the sale of goods and services under the Opposer’s Marks, which are recognized by
`
`and well-known to consumers throughout the United States of America.
`
`11.
`
`The RITE AID Marks are widely recognized by the general consuming public of
`
`the United States as designations of the source of Rite Aid’s goods and services, and are
`
`“famous” as that term is defined under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`
`
`3
`
`

`
`12.
`
`As a result of Rite Aid’s long-standing, continuous, extensive and well-publicized
`
`use, the Opposer’s Marks are associated exclusively with Rite Aid and its goods and services.
`
`13.
`
`On January 24, 2012, Applicant filed an application under Section 1(a) of the
`
`Lanham Act, 15 U.S.C. § 1051(a), for federal registration of the mark RITE-VALUE X
`
`PHARMACY shown in Application Serial No. 85/653,339. This application covers “Retail drug
`
`store services; Retail pharmacy services” in Class 35, and alleges use in commerce since August
`
`2005.
`
`14.
`
`Application Serial No. 85/653,339 was published for opposition in the Official
`
`Gazette on December 24, 2013.
`
`15.
`
`The Trademark Trial and Appeal Board extended the opposition period for
`
`Application Serial No. 85/653,339 by granting Opposer’s timely request for an extension. The
`
`opposition period for Application Serial No. 85/653,339 is currently set to expire on February
`
`22, 2014. Opposer, therefore, timely files this opposition.
`
`16.
`
`The services identified in Application Serial No. 85/653,339 are identical to the
`
`retail drug store and pharmacy services offered by Rite Aid and covered by Opposer’s
`
`registrations for the Opposer’s Marks.
`
`17.
`
` The services identified in Application Serial No. 85/653,339 are also identical or
`
`closely related to the other goods and services offered by Rite Aid and covered by Opposer’s
`
`registrations for the Opposer’s Marks.
`
`18.
`
`Through Rite Aid’s longstanding and continuous use of the Opposer’s Marks,
`
`Opposer has acquired exclusive rights in the Opposer’s Marks individually, and in the family of
`
`RITE AID marks as a whole, that predate any rights upon which Applicant may rely.
`
`19.
`
`Opposer’s rights to use the Opposer’s Marks in connection with retail drug store
`
`
`
`4
`
`

`
`and pharmacy services and related goods and services are superior to those of Applicant.
`
`20.
`
`The RITE AID mark has been used in commerce since at least as early as January
`
`3, 1966, well before the filing date for the Application or any use of the Applicant’s mark by
`
`Applicant.
`
`21.
`
`Opposer’s RITE AID Marks are famous and became famous well before the filing
`
`date for Application Serial No. 85/653,339 or Applicant’s first use of the Applicant’s mark.
`
`22.
`
`Upon information and belief, Applicant was incorporated as a Kentucky Limited
`
`Liability Company under the name, Rite Value Pharmacy, LLC, by Clayton Patrick Wells on
`
`October 8, 2004.
`
`23.
`
`Upon information and belief, Clayton Patrick Wells is the president and owner of
`
`Applicant and a pharmacist at Applicant’s retail pharmacy.
`
`24.
`
`Clayton Patrick Wells was employed by Opposer’s affiliate, Rite Aid of
`
`Kentucky, Inc., from May 20, 1999 until August 21, 2005, and worked as a pharmacist at Rite
`
`Aid Store Number 000982 in Inez, Kentucky.
`
`25.
`
`Applicant was therefore aware of Opposer’s extensive rights in and to the RITE
`
`AID Marks before Applicant incorporated under th