Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA600938
`ESTTA Tracking number:
`04/28/2014
`
`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 ex-
`tension
`Address
`
`Peer Bearing Company
`06/18/2014
`
`2200 Norman Drive South
`Waukegan, IL 60085
`UNITED STATES
`
`Attorney informa-
`tion
`
`Thomas C. McDonough
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street - Suite 1700
`Chicago, IL 60602
`UNITED STATES
`tmcdonough@ngelaw.com, twillliams@ngelaw.com, afraker@ngelaw.com,
`mbenson@ngelaw.com, DocketMail@ngelaw.com Phone:312-269-8000
`Applicant Information
`
`78664362
`04/28/2014
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition Peri-
`od Ends
`Roller Bearing Company of America, Inc.
`One Tribology Center
`Oxford, CT 06478
`UNITED STATES
`Goods/Services Affected by Opposition
`
`02/18/2014
`06/18/2014
`
`Class 007. First Use: 1946/00/00 First Use In Commerce: 1946/00/00
`All goods and services in the class are opposed, namely: Machine parts, namely, thin section roller
`bearings.
`
`Grounds for Opposition
`
`The mark is merely descriptive
`The mark comprises matter that, as a whole, is
`functional
`Torres v. Cantine Torresella S.r.l.Fraud
`Genericness
`Other
`
`Trademark Act section 2(e)(1)
`Trademark Act section 2(e)(5)
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 23
`Misidentification of the goods
`
`Attachments
`
`1621_Notice_of_Opposition.pdf(36183 bytes )
`Exhibit 1 Peer Catalog 1600 Series pages.pdf(495883 bytes )
`
`

`
`Exhibit 2 Page from 1621 File History showing measurement (78
`664362).pdf(1002518 bytes )
`Exhibit 3 Sunray, Inc. webpages.pdf(119982 bytes )
`Exhibit 4 National Precision Bearings catalgo pages.pdf(240727 bytes )
`Exhibit 5 Bostongear.com.pdf(367062 bytes )
`Exhibit 6 ChampionBearingsScan.pdf(358095 bytes )
`Exhibit 7 Dynaroll.pdf(257017 bytes )
`Exhibit 8 Hi-Light USA.pdf(576456 bytes )
`Exhibit 9 Third Amended Complaint.pdf(597081 bytes )
`Exhibit 10 Memo of Decision and Order.pdf(2281780 bytes )
`Exhibit 11 Arbitration Final Decision.pdf(1160539 bytes )
`Exhibit 12 Request for Remand.pdf(123602 bytes )
`Exhibit 13 Plt's Obj & Resp to 3rd Rogs.pdf(90038 bytes )
`Exhibit 14 Request for Suspension 8-11-2011.pdf(5266604 bytes )
`Exhibit 15 Response to OA 5-15-2013.pdf(2578764 bytes )
`Exhibit 16 Kinney Afft 5-15-13.pdf(893200 bytes )
`Exhibit 17 Kinney Afft 12-16-13.pdf(824929 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
`
`/Thomas C. McDonough/
`Thomas C. McDonough
`04/28/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`Peer Bearing Company
`
`
`
`
`
`
`
`v.
`
`
`Roller Bearing Co. of America, Inc.
`
`
`
`
`
`
`
`
`Applicant.
`
`)
`)
`) Application Serial No.: 78/664,362
`)
`
`) Mark: 1621
`)
`
`) Published: February 18, 2014
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`Peer Bearing Company, an Illinois corporation located and doing business at 2200
`
`Norman Drive South, Waukegan, Illinois 60085 (“Opposer” or “Peer”), believes that it will be
`
`damaged by registration of the mark “1621” shown in Application Serial No. 78/664,362, and
`
`opposes the same.
`
`The grounds for opposition are as follows:
`
`I. The “1621” Designation Does Not Function as a Trademark and
`Applicant Does Not Have Exclusive Rights to use 1621 as a Trademark
`
`
`1.
`
`The “1621” application covers “machine parts, namely thin section roller
`
`bearings.” Roller bearings or ball bearings are commodity goods that are sold in various sizes
`
`depending on the application for which they are being used.
`
`2.
`
`The number “1621” is a part number or model number used by Opposer Peer and
`
`many other entities in the ball bearing business for many years. This “1621” number designates a
`
`roller bearing having fixed dimensions, namely a bore diameter of 0.50 inch, an outer diameter
`
`of 1.375 inch and a width of 0.4375 inch (the “1621 Dimensions”).
`
`
`
`1
`
`

`
`3.
`
`Opposer Peer has used “1621” as a model number and size designation in
`
`connection with ball bearings since at least the early 1960’s. Opposer uses “1621” for a ball
`
`bearing that is the exact same size and tolerances as the Applicant’s “1621” model bearing.
`
`Selected pages from a Peer catalog showing the “1621” model bearing, showing that this bearing
`
`has the specific 1621 Dimensions stated above, are attached as Exhibit 1. Selected pages from
`
`Applicant’s catalog, submitted in the file of this application, showing that Applicant’s “1621”
`
`bearing has the exact same 1621 Dimensions are attached as Exhibit 2.
`
`4.
`
`Many other companies in addition to Opposer sell “1621” size bearings, having
`
`the identical 1621 Dimensions (i.e., 0.50 inch bore diameter, 1.375 inch outer diameter and
`
`0.4375 inch width) to be physically interchangeable with one another. Examples of such uses
`
`include the following:
`
`Exhibit 3:
`
`Sunray, Inc.: pages from its website showing Sunray’s sale of
`“1621 bearings” have the same dimensions.
`
`Exhibit 4: National Precision: Bearings: pages from an NPB catalog
`showing “NPB Part No.” 1621 having the same dimensions.
`
`Exhibit 5:
`
`Exhibit 6:
`
`Exhibit 7:
`
`Boston Gear: pages from a Boston Gear catalog showing, within
`the “1600 Series,” radial ball bearings using numbers including
`“1621DS” having the same dimensions.
`
`Champion Bearings: page from a Champion Bearings catalog
`showing various numbers in the 1600 series, including 1621
`bearings having the same dimensions.
`
`Dynaroll: pages from the Dynaroll website showing, within the
`“1600 Series,” bearings with “Dynaroll Bearing No. 1621” having
`the same dimensions.
`
`Exhibit 8: Hi-Light USA, Inc. (Memphis, TN): pages from the Hi-Light
`USA website showing the “Radial Bearings 1600 Series” including
`the 1621 bearing having the same dimensions.
`
`
`
`2
`
`

`
`
`
`5.
`
`Other numbers in the 1600 series have standard dimensions, regardless of whether
`
`they are sold by Peer or one of the third parties listed above. For example, a “1630” size bearing
`
`sold by each of these companies has dimensions of 0.75 inch bore diameter, 1.625 inch outer
`
`diameter and 0.5 inch width. A “1635” size bearing has dimensions of 0.75 inch bore diameter,
`
`1.75 inch outer diameter and 0.5 inch width and a “1640” size bearing has dimensions of 0.875
`
`inch bore diameter, 2.0 inch outer diameter and 0.5625 inch width.
`
`6.
`
`Applicant has tried but failed to enjoin Opposer’s use of “1621” and other
`
`numbers in the 1600 series, due to Opposer’s longstanding and continuous use of these model
`
`numbers. Applicant filed Civil Action No. 3:06-cv-01380-MRK in the United States District
`
`Court for the District of Connecticut (the “Peer Litigation”) alleging, among other things, that
`
`Opposer infringed Applicant’s trademark rights in the term “1621,” and other numbers and series
`
`designations. Applicant specifically alleged that Opposer Peer’s use of “1621” infringed these
`
`rights. See, Exhibit 9, Third Amended Complaint, ¶¶ 11, 16-18.
`
`7.
`
`As alleged in the Peer Litigation, Opposer Peer is using the term “1621” in
`
`connection with the sale of radial ball bearings identical to those of Applicant, and such use
`
`began prior to the filing date of this application. Exhibit 9, Third Amended Complaint, ¶18.
`
`8.
`
`On October 29, 2009, the Court granted Opposer Peer’s Motion for Summary
`
`Judgment on the grounds of laches for the term “1600 SERIES,” which included all the numbers
`
`in that series, such as 1621, 1630, 1635 and 1641. See, Exhibit 10, Memorandum of Decision and
`
`Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment; RBC
`
`Nice Bearings, Inc. et al. v. Peer Bearing Co., 676 F. Supp. 9. (D. Conn 2009).
`
`9.
`
`The Second Circuit Court of Appeals affirmed the district court’s ruling in favor
`
`of Opposer Peer. RBC Nice Bearings, Inc. et al, v. Peer Bearing Co., 410 Fed. Appx. 362 (2d
`
`
`
`3
`
`

`
`Cir. 2010). Opposer is, therefore, forever entitled to use the model number “1621” for ball
`
`bearings in a manner substantially identical to the use by Applicant RBC, along with the other
`
`numbers in the 1600 series.
`
`10.
`
`Applicant made another effort to stop Opposer Peer’s use of these part numbers,
`
`but that failed as well. On September 14, 2009, RBC Nice Bearings, Inc., Roller Bearing
`
`Company of America, Inc. and Roller Bearing Company of America, Inc. d/b/a Nice Ball
`
`Bearings, Inc. filed a Demand for Arbitration against SKF USA Inc. (the “Arbitration”). See,
`
`Demand for Arbitration, attached as Exhibit A to Applicant’s Request for Suspension filed
`
`August 10, 2011. SKF USA, Inc. had acquired Peer during the Peer Litigation. Applicant asked
`
`the Panel to enjoin Opposer Peer’s use of the 1600 Series numbers, including 1621, 1630, 1635,
`
`and 1641. This attempt failed when the Arbitration panel refused to enjoin Opposer Peer’s use of
`
`these designations. See, Exhibit 11, Arbitration Final Decision.
`
`11.
`
`Opposer and these other third parties are not using “1621” as a trademark but
`
`instead are using it as a designation of a bearing having a particular size and tolerance. The
`
`model number “1621” therefore designates to the industry a ball bearing having the 1621
`
`Dimensions of 0.5 inch bore diameter and 1.375 inch outer diameter and a 0.4375 inch width.
`
`Opposer even alleged in the Peer Litigation that, within the 1600 series of numbers, “[e]ach
`
`bearing number corresponds to a bearing with a defined structure and dimensions.” Exhibit 9,
`
`Third Amended Complaint, ¶ 15.
`
`12.
`
`Applicant’s use of the “1621” model number for ball bearings is, therefore, not
`
`exclusive and will remain non-exclusive. The longstanding and continuous use of the same term
`
`for the exact same goods and in the same channels of trade as those of Applicant by Opposer and
`
`other entities is sufficient grounds for denying registration of the term “1621.”
`
`
`
`4
`
`

`
`13.
`
`Registration of the term “1621” by Applicant would damage Opposer because
`
`registration would confer nationwide trademark rights and exclusivity of use to Applicant with
`
`respect to a common designation used to designate a bearing having a particular size by Opposer
`
`and Applicant’s competitors, thereby creating the false and misleading impression to consumers
`
`that only Applicant’s goods may be sold having that designation. Opposer’s ability to record its
`
`registration with U.S. Customs would damage Opposer in that it may lead to seizures of goods
`
`that Opposer is legally permitted to import and sell in the United States.
`
`14.
`
`The public would be damaged by registration of the term “1621” by Applicant, as
`
`it has come to rely on the use of the term “1621” as a common designation of a bearing having a
`
`particular size by multiple entities, thereby creating the false and misleading impression to the
`
`public that only Applicant may sell bearings having that size designation.
`
`II. The Term Applicant Seeks to Register is Descriptive
`
`15.
`
`The “1621” number which Applicant seeks to register is a common designation
`
`for a ball bearing having a specific size and tolerance. The term “1621” is, therefore, merely
`
`descriptive of the goods which are described in Application Serial No. 78/664,362.
`
`16.
`
`Opposer and many others in the industry have used and continue to use the term
`
`“1621” in an identical, descriptive manner for ball bearings having this particular size. Based in
`
`part on the extensive identical and descriptive use by many in the ball bearing industry, the term
`
`which Applicant seeks to register does not function as a source identifier for Applicant’s goods
`
`or distinguish them from similar goods offered by others.
`
`17.
`
`Registration of the term “1621” by Applicant would damage Opposer because
`
`registration would confer nationwide trademark rights and exclusivity of use to Applicant with
`
`respect to a common designation used descriptively and/or generically by Opposer and
`
`
`
`5
`
`

`
`Applicant’s competitors for sized ball bearings that are each physically interchangeable with one
`
`another regardless of the manufacturer, thereby creating the false and misleading impression to
`
`consumers that only Applicant’s goods may be sold having that designation.
`
`18.
`
`In view of the above, Applicant is not entitled to federal registration of the term
`
`“1621” or to exclusive use of this term in commerce on the goods specified in its application.
`
`III. The Term Applicant Seeks to Register is Generic
`
`19.
`
`The “1621” term which Applicant seeks to register as a trademark is a common
`
`descriptive or generic term for ball bearings. Opposer Peer Bearing Company and others
`
`throughout the ball bearing industry have used and continue to use this term in the identical,
`
`common descriptive or generic manner to refer and/or distinguish bearings based on their size or
`
`other physical attributes.
`
`20.
`
`Registration of the term “1621” by Applicant would damage Opposer because
`
`registration would confer nationwide trademark rights and exclusivity of use to Applicant with
`
`respect to a common designation used descriptively and/or generically by Opposer and
`
`Applicant’s competitors for ball bearings that are each physically interchangeable with one
`
`another regardless of the manufacturer, thereby creating the false and misleading impression to
`
`consumers that only Applicant’s goods may be sold having that designation.
`
`21.
`
`In view of the above, Applicant is not entitled to federal registration of the term
`
`“1621” or to exclusive use of this term in commerce on the goods specified in its application.
`
`
`
`6
`
`

`
`
`
`IV. Applicant is Not Using “1621” as a Trademark and has
`Misidentified the Goods in the Subject Application
`
`22.
`
`Applicant is not using 1621 as a trademark but, as outlined above, is using this
`
`term as a designation of a bearing having a specific size and tolerance.
`
`23.
`
`The specimens submitted by Applicant do not support use as a trademark, but
`
`instead show that it is being used as a model number or part number.
`
`24.
`
`The “1621” application covers “machine parts, namely thin section roller
`
`bearings.” Thin section roller bearings are a subset of roller bearings in general, and this term
`
`generally means a bearing that has a thinner cross-section than a standard bearing. In its
`
`advertising materials, Applicant defines a “thin section roller bearing” as a bearing that has a
`
`bore diameter that is greater than four times the radial cross section.
`
`25.
`
`The “1621” sized bearing sold by Applicant and identified in the specimens is not
`
`a “thin section roller bearing” but instead has dimensions that fall outside of even Applicant’s
`
`definition. Applicant has therefore misidentified the goods in its application. In order to correct
`
`this error, Applicant would need to broaden its identification of the goods. This error is fatal to
`
`the application.
`
`26.
`
`Registration of the term “1621” by Applicant would damage Opposer because
`
`registration would confer nationwide trademark rights and exclusivity of use to Applicant with
`
`respect to a common designation that is not being used as a trademark by Applicant and that is
`
`used descriptively and/or generically by Opposer, Applicant and other competitors for ball
`
`bearings that are each physically interchangeable with one another regardless of the
`
`manufacturer, thereby creating the false and misleading impression to consumers that only
`
`Applicant’s goods may be sold having that designation.
`
`
`
`7
`
`

`
`27.
`
`In view of the above, Applicant is not entitled to federal registration of the term
`
`“1621” or to exclusive use of this term in commerce on the goods specified in its application.
`
`V. Applicant’s Representatives Made False and
`Misleading Statements in Prosecuting this Application
`
`The subject application should be denied registration because Applicant made
`
`28.
`
`false and misleading statements to the Trademark Trial and Appeal Board and to the Examining
`
`Attorney. First, Applicant falsely represented to the Board that it possessed evidence of acquired
`
`distinctiveness for the “1621” mark in an attempt to delay final affirmation of the mark’s
`
`rejection for registration. Subsequently, Applicant failed to be forthright in response to the
`
`Examining Attorney’s direct questions about the status of the Peer Litigation, and made
`
`additional false or misleading statements at several times during prosecution of this application.
`
`29.
`
`On February 15, 2008, Applicant filed a request to suspend its appeal of the final
`
`rejection of the “1621” application and to remand the application to the Examining Attorney.
`
`Applicant relied on representations that it possessed evidence that, among other things, showed
`
`consumers associate the “1621” term solely with Applicant’s goods, but that Applicant was
`
`unable to produce due to a protective order in pending civil litigation. See, Exhibit 12, Request
`
`for Remand, p. 1-2. Such statements were knowingly false but advantageous to Applicant, as
`
`final affirmation of the Examining Attorney’s rejection would have undermined Applicant’s
`
`arguments in the Peer Litigation.
`
`30.
`
`The falsity of Applicant’s statements was confirmed by Applicant’s subsequent
`
`discovery responses in the Peer Litigation, where Applicant was unable to provide any support
`
`for this statement to the Board. See, Exhibit 13, Plaintiff’s Objections and Responses to
`
`Defendant Peer Bearing Company’s Third Set of Interrogatories, Response Nos. 28 and 29.
`
`
`
`8
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`

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`Thus, Applicant secured remand of its application based on representations of evidence it knew
`
`did not exist.
`
`31.
`
`After the appeal was suspended and the application was remanded to the
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`Examining Attorney, Applicant was not forthright about the status and end result of the
`
`Arbitration after specifically relying on the Arbitration in requesting a second suspension.
`
`Applicant was also not forthright about the end result of the Peer Litigation, and made specific
`
`representations in declarations that were contrary to the result of that litigation.
`
`32.
`
`In a Suspension Inquiry dated April 30, 2011 and again in an Office Action dated
`
`November 14, 2012, the Examining Attorney specifically requested a copy of any final decisions
`
`in the Peer Litigation. Applicant, however, never gave the Examining Attorney the decisions of
`
`the District Court or the Second Circuit Court of Appeals.
`
`33.
`
`After the Peer Litigation concluded, Applicant asked the Examining Attorney to
`
`again suspend the application based on the Arbitration. Applicant specifically alleged that the
`
`Arbitration was relevant, as follows:
`
`Whether or not Peer was allowed to use the trademarks, including the
`1621 mark, has bearing on whether such use would be considered
`substantial third party use or infringing use of the trademarks. Such
`information has bearing at least on Applicant’s claim of acquired
`distinctiveness in the alternative in an effort to overcome the Section 2(e)
`rejection. The Arbitration is still pending to address Peer’s usage of the
`trademarks. It follows that the Arbitration has bearing on the present
`application. Applicant respectfully submits that the Arbitration is “good
`and sufficient cause” for suspending the examination of the present
`application pursuant to 37 CFR§ 2.67.
`
`Exhibit 14, August 11, 2011 Request for Suspension, p. 2 (emphasis in original). To support this
`
`position, Applicant attached an “Interim Order” in the Arbitration as Exhibit B to its August 11,
`
`2011 Request for Suspension. See, Exhibit 14.
`
`
`
`9
`
`

`
`34.
`
`Following these statements by Applicant, on August 26, 2011, the Examining
`
`Attorney suspended the application based on the Arbitration.
`
`35.
`
`On September 17, 2012, Applicant advised the Examining Attorney that the
`
`Arbitration was terminated and requested removal of the suspension. No further details were
`
`provided at that time.
`
`36.
`
`On May 15, 2103, in response to a specific request from the Examining Attorney,
`
`Applicant provided a copy of the Final Award and order in the Arbitration, stating as follows:
`
`In the November 15, 2012 Office Action, the Examining Attorney
`requires additional information with respect to final resolutions of
`a civil proceeding, U.S. District Court, District of Connecticut,
`Civil Action No.: 3:06-CV-01380-MRK, and American Arbitration
`Association Case No, 14 152 01622 09. As reported to the Office,
`both the civil proceeding and arbitration have been terminated.
`The only substantive decision received with respect to trademark
`issues was in the arbitration proceeding. Copies of a Final Award
`and Order in the arbitration is attached hereto as Exhibit J, as well
`as a Dissenting Opinion of Arbitrator Pratt in the arbitration, which
`is attached hereto as Exhibit K.
`
`Exhibit 15, May 15, 2013 Response to Outstanding Office Action, p.14 (emphasis in original).
`
`Applicant again, however, did not provide a copy of the decisions of the District Court or the
`
`Second Circuit Court of Appeals in the Peer Litigation.
`
`37.
`
`Applicant also did not explain the relevance or impact of the Arbitration
`
`decisions. This failure to provide any details about the termination of the Arbitration was at best
`
`misleading in light of Applicant’s earlier statements. Applicant failed to specifically tell the
`
`Examining Attorney is that (i) it had lost the Arbitration on the specific issue referenced in its
`
`August 11, 2011 filings, and (ii) its request for an injunction against Opposer’s use of the mark at
`
`issue was denied.
`
`38.
`
`Furthermore, Applicant’s statement that “[t]he only substantive decision with
`
`respect to trademark issues was in the arbitration proceeding” was also false and misleading, as
`
`
`
`10
`
`

`
`the decision by the Connecticut District Court and the Second Circuit Court of Appeals to permit
`
`Peer to continue to use the exact same “trademarks” was certainly material and substantive.
`
`39.
`
`Applicant’s failure to notify the Examining Attorney of the basis for the decision
`
`in the Peer Litigation, and of the fact that Opposer was entitled to continue to use the “1621”
`
`model number, was material to allowance of this application. Furthermore, Applicant and its
`
`counsel made statements that were directly contrary to this fact. By way of example, Applicant’s
`
`counsel submitted an Affidavit stating as follows:
`
`Applicant competes with a number of manufacturers offering the
`4.
`recited goods in the marketplace. However, the market is dominated by
`two (2) manufactures, Applicant, Roller Bearing Company America, Inc.
`(sic) and General Bearing Corporation of West Nyack, NY, that offer thin
`section roller bearings under different trademarks, each of which hold
`almost fifty percent (50%) share of the inch type, thin section roller
`bearings market in the US.
`
`Applicant’s 1621 mark has become distinctive of thin section roller
`5.
`bearings through Applicant’s substantially exclusive and continuous use in
`commerce for over sixty six (66) years immediately before the date of this
`statement, and based on Applicant’s extensive use of the marks since at
`least as earlier as 1946 to the present as is represented by printed an on-
`line products catalogs, already in the record of the present application, in
`which the mark is displayed with the recited goods. The commercial uses
`of the 1621 mark have resulted in consumers recognizing Applicant as the
`primary source of the goods bearing the mark
`
`Exhibit 16, Michael Kinney Affidavit dated May 15, 2013, ¶¶ 4-5. On December 16, 2013,
`
`Applicant submitted essentially the same Affidavit from Mr. Kinney, but without Paragraph 4,
`
`above. See, Exhibit 17.
`
`
`
`40.
`
`The statements in Paragraph 4 of the Declaration were false or misleading
`
`because they failed to advise the Examining Attorney of, or acknowledge in any way, Opposer’s
`
`continued use of the “1621” model number. These statements were material, as Applicant had
`
`already admitted the relevance of Opposer’s continued use in its August 11, 2011 Request for
`
`
`
`11
`
`

`
`Suspension, and that “[w]hether or not Peer was allowed to use the trademarks, including the
`
`1621 mark, has bearing on whether such use would be considered substantial third party use or
`
`infringing use of the trademarks.” Since the Peer Litigation and the Arbitration determined that
`
`Peer’s use was not an infringing use of the trademarks, then it was admittedly “substantial third
`
`party use.” These declarations were also misleading in that they did not address the Peer
`
`Litigation and Opposer’s long and continuous use of the “1621” size designation, and false with
`
`regard to the statements about the market.
`
`41.
`
`The subject application should be denied registration because the Applicant made
`
`material false and misleading statements to the Examining Attorney, and failed to be forthright
`
`about the status of the Peer Litigation or the Arbitration. These statements were made with the
`
`knowledge of the correct underlying facts and with the intent to mislead the Examiner to obtain
`
`allowance of the subject application. These false and misleading statements misled the
`
`Examining Attorney and resulted in this Application being allowed. Opposer Peer will be
`
`damaged if Applicant is allowed to obtain this registration.
`
`42.
`
`In view of the above, Applicant is not entitled to federal registration of the term
`
`“1621” or to exclusive use of this term in commerce on the goods specified in its application.
`
`
`
`12
`
`

`
`
`
`WHEREFORE, Opposer prays that the opposition be sustained and the application for
`
`registration of the term which Applicant seeks to register as a trademark be refused.
`
`Respectfully submitted,
`
`/Thomas C. McDonough/
`One of the Attorneys for Opposer,
`Peer Bearing Company
`
`Thomas C. McDonough
`Thomas E. Williams
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street, Suite 1700
`Chicago, IL 60602
`Telephone: (312) 269-8000
`Facsimile: (312) 269-1747
`
`
`
`By:
`
`
`
`
`Date: April 28, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`

`
`
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that the enclosed NOTICE OF OPPOSITION is being electronically
`transmitted via the Electronic System for Trademark Trials and Appeals (“ESTTA”) at
`http://estta.uspto.gov/ on the date noted below:
`
`Date: April 28, 2014
`
`
`
`
`
`By:
`
`/Thomas C. McDonough/
`One of the Attorneys for Opposer,
`Peer Bearing Company
`
`Thomas C. McDonough
`Thomas E. Williams
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street, Suite 1700
`Chicago, IL 60602
`Telephone: (312) 269-8000
`Facsimile: (312) 269-1747
`
`
`
`CERTIFICATE OF SERVICE
`I, Thomas C. McDonough, an attorney, state that I served a copy of the enclosed
`NOTICE OF OPPOSITION upon:
`
`Michael K. Kinney
`Michaud-Kinney Group LLP
`306 Industrial Park Rd 206
`Middletown Connecticut 06457-1532
`
`
`by depositing said copy in a properly addressed envelope, first class postage prepaid, and
`depositing same in the United States mail at Two North LaSalle Street, Chicago, Illinois, on the
`date noted below:
`
`
`
`
`
`
`
`/Thomas C. McDonough/
`
`
`
`
`
`Date: April 28, 2014
`
`
`NGEDOCS: 2162240.5
`
`
`
`14
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`Peer Bearing Company,
`
`
`
`
`
`
`
`v.
`
`
`Roller Bearing Co. of America, Inc.,
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`) Application Serial No.: 78/664,362
`)
`
`) Mark: 1621
`)
`
`)
`Published: February 18, 2014
`)
`)
`)
`
`Exhibit 1 to Notice of Opposition
`
`
`
`
`
`

`
`:M1—UmE:3uwu:£.«m_n
`
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`
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`
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`
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`
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`
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`
`
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`
`
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`
`
`
`
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`
`
`
`
`
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`
`
`
`
`
`
`
`

`
`
`
`
`
`1600 SERIES
`
`
`
`
`
`
`
`
`
`
`
`Designed to be dimensionally interchange-
`
`able with standard domestic inch series
`
`bearings. By using 52100 steel and holding
`dimensions to ABEC1 tolerances,
`this
`series offers economy with electric motor
`quality. Close tolerance and improved ball
`complement allow an increased load
`capacity. This series is available with
`shields and seals. Consult the Peer sales
`engineer for availability.
`
`
`
`
`
` %i!?%%%%
`ZRSA
`
`Width (inch)
`
`‘Maximum fillet whirh corner radius of hearing will clear.
`
`twidth 5/16 for RS and 2llS types.
`
`fiMdlh ll/32 for R5 and ZRS types.
`
`15
`
`_;l¥
`
`

`
`55‘?‘
`
`1600 SERIES (continued)
`
`Designed to be dimensionally interchangeable with stan-
`dard domestic inch series bearings. By using 52100 steel
`and holding dimensions to ABEC 1 tolerances, this series
`offers economy with electric motor quality. Close tolerance
`and improved ball complement allow an increased load
`capacity. This series is available with shields and seals.
`Consult the Peer sales engineer for availability.
`
`%i!i%%%%%ZRSA
`
`OD
`0
`
`13/5
`1.3750
`
`Pu"
`Numb"
`
`um
`,,
`
`1522
`
`1523
`
`1520
`
`1530
`
`1533
`
`1535
`
`Tolennmo
`4.0000
`to min:
`
`005
`
`.
`
`.
`
`.
`
`.
`
`.
`
`05
`
`05
`
`05
`
`05
`
`05
`
`N
`
`NR
`
`Tolerance
`+.o000
`to minus
`
`MM‘ (1MM
`
`-f;|pe”,,d;;
`'
`
`Units:
`
`Inches
`Meir}:
`Basic Load Ratings
`M
`N
`
`.0
`
`0
`
`0
`
`0
`
`0
`
`.0
`
`5
`
`5
`
`5
`
`5
`
`5
`
`5
`
`.25
`
`.25
`
`.25
`
`.25
`
`.25
`
`.25
`
`1
`
`.0050
`
`
`
`
`
`
`
`.
`DY'""“"
`(7
`1090
`0,407
`1090
`0,407
`2500
`11,554
`2320
`,1
`2325
`10,343
`2325
`10,343
`2405
`11,054
`2405
`11 054
`3455
`15,414
`3955
`17,593
`3955
`17,593
`390
`17 571
`3950
`17,571
`
`SM"
`(or
`035
`3,715
`035
`3,715
`1010
`4,492
`1117
`4956
`1142
`5,079
`1142
`5,079
`1330
`5,952
`1330
`5952
`1752
`7,794
`2300
`10,231
`2300
`10,231
`2317
`10 305
`2317
`10,305
`
`.35
`
`.35
`
`.35
`
`.35
`
`.35
`
`.35
`
`.35
`
`M1
`.4375
`745
`.4375
`V2
`.5000
`‘/2
`111
`‘/2
`.5000
`‘/2
`.5000
`7/15
`.5525
`9/15
`.5525
`945
`.5525
`5/0
`.5250
`5/5
`.5250
`"44
`.5075
`“A5
`.5075
`
`.0
`
`5
`
`.005
`
`0
`
`0
`
`5
`
`5
`
`.005
`
`.005
`
`.005
`
`1530
`
`1540
`
`1541
`
`1552
`
`1554
`
`1557
`
`1550
`
`.
`
`.
`
`.
`
`.
`
`.
`
`.
`
`.
`
`05
`
`05
`
`05
`
`05
`
`05
`
`05
`
`05
`
`‘Maximum fillel which miner radius of hearing will clear.
`16
`
`.0047
`
`.0047
`
`0047
`
`.0047
`
`.0047
`
`.0047
`
`.0047
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`Peer Bearing Company,
`
`
`
`
`
`
`
`v.
`
`
`Roller Bearing Co. of America, Inc.,
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`) Application Serial No.: 78/664,362
`)
`
`) Mark: 1621
`)
`
`)
`Published: February 18, 2014
`)
`)
`)
`
`Exhibit 2 to Notice of Opposition
`
`
`
`
`
`

`
`0 15- .SeriesT"" Pre.c.isi.on.Ground Radial Bearings
`
`Precision ground 1600 Series” bearings are specially riesigiirrcl to provide a line of low cost yet high quality hearings for
`adaptation to a majority of precision bearing applications. They are made in easy to use inch dimensions and are recommended
`for medium loads and for maximum speeds in the range of 5000 rpm.
`The 1600 Series“ bearings are precision ground on all surfaces with exceptional care given to the ball grooves. Careful heat
`treatment provides a uniform and exact degree of hardness for maximum life. A ball retainer, or separator, is used to increase the
`range of allowable speeds by reducing ball—to—ba1l contact friction. The 1600. Sericsm radial bearings are available open, single or
`doubled shielded, or single or double sealed. Double sealed and double shielded bearings are supplied grease packed as stan-
`dard. Open and single closure bearings can be supplied greased on request.
`
`BEARING NUMBER
`
`PRINCIPLE DIMENSIONS
`
`DOUBLE SEAL ‘ SINGLE SEAL DOUBLE SHIELD SINGLE SHIELD
`
`ill
`
`16u2Dc 6
`
`16o2sc 6
`
`1602DS
`
`160253
`
`1602NS
`
`1603DC
`
`1603SC
`
`1603 D5
`
`160353
`
`1603NS
`
`1604DC
`
`160480
`
`1604DS
`
`160455
`
`1604NS
`
`1605DC
`
`1605SC
`
`1605DS
`
`1605SS
`
`1605NS
`
`1606DC
`
`1606SC
`
`160605
`
`160685
`
`1 6U6NS
`
`1.60TDC
`
`1507SC
`
`1607DS
`
`160733
`
`1 GOTNS
`
`1614DC
`
`1614-SC
`
`1614DS
`
`1615DC
`
`1615SC
`
`1615DS
`
`161 GDC
`
`1616SC
`
`1616'DS
`
`1620DC
`
`162osc
`
`1621 DC
`
`1621 SC
`
`1's2ons
`
`1621 DS
`
`1614NS
`
`1615NS
`
`1616NS
`
`1620NS
`
`1621 NS
`
`0 Width for sealed versions = 0.3125 (7.938)
`8 Width for sealed versions = 0.3438 (8.733)
`9 Weights given are for greased and sealed versions
`9 1638 and larger +.O0O0/-.0006 (+.000l-.15)
`9 Multi-part seal see page 42
`All part numbers listed herein are considered to be trademarks of HBC Bearings incorporated.
`
`

`
`TO CLEAR r
`
`wane:-rr
`
`ABUTMENT AND I-'ILLE'l' DIMENSIONS
`
`3A5'° WAD
`an-rmas
`DYNAMIC
`STATIC
`C
`Co
`(lbs)
`(lbs)
`(N)
`(N)
`
`

`
`IN THE UNITED STATES