Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA788035
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`Filing date:
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`12/08/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91228688
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Defendant
`Smart Juices, LLC
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`CHARLES L RIDDLE
`RIDDLE PATENT LAW LLC
`434 LACKAWANNA AVENUE SUITE 200
`SCRANTON, PA 18503-2053
`UNITED STATES
`charles@charleslriddle.com
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`Motion to Suspend for Civil Action
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`Charles L Riddle
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`charleslriddle@yahoo.com
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`/clr/
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`12/08/2016
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`motion16l8.pdf(81319 bytes )
`memo16l8.pdf(87606 bytes )
`Mot Suspend Exhibit 1.pdf(1027230 bytes )
`certsvsc16j6.pdf(73435 bytes )
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`ESTTA Tracking number:
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`ESTTA788035
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`Filing date:
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`12/08/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91228688
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Defendant
`Smart Juices, LLC
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`CHARLES L RIDDLE
`RIDDLE PATENT LAW LLC
`434 LACKAWANNA AVENUE SUITE 200
`SCRANTON, PA 18503-2053
`UNITED STATES
`charles@charleslriddle.com
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`Motion to Suspend for Civil Action
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`Charles L Riddle
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`charleslriddle@yahoo.com
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`/clr/
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`12/08/2016
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`motion16l8.pdf(81319 bytes )
`memo16l8.pdf(87606 bytes )
`Mot Suspend Exhibit 1.pdf(1027230 bytes )
`certsvsc16j6.pdf(73435 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`GROW SMART KIDS, LLC
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`Opposer,
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`SMART JUICES, LLC
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`Applicant.
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`: Opposition No. 91228688
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`MOTION TO SUSPEND OPPOSITION PENDING OUTCOME OF CIVIL
`ACTION BEFORE THE EASTERN DISTRICT OF PENNSYLVANIA
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`Applicant Smart Juices, LLC hereby moves the Honorable Board to suspend
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`the present opposition pending the final determination of the civil action that is
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`currently pending between the parties in the U.S. District Court for the Eastern
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`District of Pennsylvania that was commenced on September, 22, 2016 and styled
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`Smart Juices, LLC v. Grow Smart Kids, LLC, 5:16-cv-05075-EGS (E.D. Pa.). In
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`support of this Motion, filed concurrently herewith, is the Memorandum of Law in
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`Support of Motion to Suspend Opposition Pending Outcome of Civil Action before
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`the Eastern District of Pennsylvania.
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`WHEREFORE, Applicant respectfully requests that the Honorable Board
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`grant its Motion to Suspend Opposition Pending Outcome of Civil Action Before the
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`Eastern District of Pennsylvania.
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`Dated: December 8, 2016.
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`Respectfully Submitted,
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`RIDDLE PATENT LAW, LLC
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`By: s/Charles L. Riddle/
`Charles L. Riddle, Esq. (PA 89,255)
`434 Lackawanna Ave.
`Suite 200
`Scranton, PA 18503
`(570) 344-4439 p.
`(570) 300-1606 f.
`charles@charleslriddle.com
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`Counsel for Applicant
`Smart Juices, LLC
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`GROW SMART KIDS, LLC
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`Opposer,
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`v.
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`SMART JUICES, LLC
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`Applicant.
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`: Opposition No. 91228688
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`MEMORANDUM OF LAW IN SUPPORT OF MOTION TO SUSPEND
`OPPOSITION PENDING OUTCOME OF CIVIL ACTION BEFORE THE
`EASTERN DISTRICT OF PENNSYLVANIA
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`Applicant Smart Juices, LLC (hereinafter “SJ”) hereby moves the Honorable
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`Board to suspend the present opposition pending the final determination of the civil
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`action that is currently pending between the parties in the U.S. District Court for the
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`Eastern District of Pennsylvania that was commenced on September 22, 2016. A copy of
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`Applicant’s complaint filed in that action is attached as Exhibit 1.
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`DISCUSSION
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`A. The Board Should Suspend This Proceeding Pending Resolution of the Federal
`Action Between these Two Parties
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`In accordance with 37 C.F.R. § 2.117(c) and Trademark Trial and Appeal Board
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`Manual of Procedure § 510.02(a), Applicant respectfully submits that these proceedings
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`should be suspended pending the outcome of the civil action currently pending between
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`the parties before the U.S. District Court for the Eastern District of Pennsylvania entitled
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`Smart Juices, LLC v. Grow Smart Kids, LLC, 5:16-cv-05075-EGS (E.D. Pa.) (the
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`“Federal Court Action”). The Federal Court Action involves issues in common with
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`those raised in this proceeding and will thus have a direct bearing on its outcome.
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`In the Federal Court Action, Applicant seeks a judgment declaring that Applicant,
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`by its conduct, has not infringed, diluted, or otherwise violated the trademark rights of, or
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`otherwise unfairly competed with, Opposer under federal trademark law or applicable
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`state law. Exhibit 1.
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`The Federal Court Action involves the same trademarks as well as the services that are
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`the subject of the application under opposition in this proceeding. Exhibit 1. Accordingly,
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`Applicant submits that the final determination of the Federal Court Action will have a direct
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`bearing on the resolution of the issue of likelihood of confusion involved in these proceedings,
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`such that these proceedings should be stayed pending the outcome of such action. See The Other
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`Telephone Co. v. Connecticut Nat’l Telephone Co., Inc., 181 U.S.P.Q. 125, 127 (T.T.A.B. 1974)
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`(proceedings suspended because decision in civil action for infringement and unfair competition
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`would have bearing on outcome of Section 2(d) claim before the Board). See also Argo & Co.,
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`Inc. v. Carpetsheen Mfg., Inc., 187 U.S.P.Q. 366, 367 (T.T.A.B. 1975) (proceedings suspended
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`because outcome of civil suit could have a direct bearing on the issue of applicant’s right of
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`registration). See also Shen Mfg. Co. Inc. v. Ritz Hotel, Limited, Opposition No. 91156252,
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`TTABVUE Dkt. No. 24, at 3 (August 10, 2005) (Cataldo, Peter W. suspending proceedings that
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`involve same parties and same marks in view of judicial economy).
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`It is respectfully submitted that it is of no consequence that Opposer has not yet
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`filed a response in the Federal Court Action, since the Board may consider a motion to
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`suspend as soon as a civil action is commenced. See The Other Telephone Co., 181
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`U.S.P.Q. at 126.
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`CONCLUSION
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`WHEREFORE, Applicant respectfully requests that the Honorable Board grant its
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`motion to suspend this proceeding pending the disposition of the Federal Court Action,
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`which will have a direct bearing on the issues raised in this proceeding. In the
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`alternative, in the event the Board denies the motion or defers consideration on the same,
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`Applicant respectfully requests that it be allowed to submit its answer and/or responsive
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`pleading within thirty (30) days of the Board’s decision denying the motion to suspend.
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`Dated: December 8, 2016.
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`Respectfully Submitted,
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`RIDDLE PATENT LAW, LLC
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` /clr/
`By:
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`Charles L. Riddle, Esq. (54,779)
`434 Lackawanna Ave.
`Suite 200
`Scranton, PA 18503
`(570) 344-4439 p.
`(570) 300-1606 f.
`charles@charleslriddle.com
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`Counsel for Applicant
`Smart Juices, LLC
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`EXHIBIT 1
`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 1 of 7
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`SMART JUICES, LLC
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`Plaintiff,
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`No.
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`Jury Trial Demanded
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`v.
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`GROW SMART KIDS, LLC.
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`Defendant.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff Smart Juices, LLC, by and through its counsel, for its Complaint for
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`Declaratory Judgment, alleges the following:
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` Parties, Jurisdiction and Venue
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`1. Plaintiff Smart Juices, LLC (hereinafter “Smart Juices”) is a limited liability
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`company organized under the laws of the Commonwealth of Pennsylvania, having its
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`principal place of business at 52 E. Union Blvd. Bethlehem, PA 18018.
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`2. Upon information and belief, Defendant Grow Smart Kids, LLC (hereinafter
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`“GSK”) is a limited liability company organized and existing under the laws of the State
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`of Georgia, having its principal office and place of business at 1 Hickory Head Pl.,
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`Savannah, GA 31411.
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`3. This is an action for declaratory judgment of non-infringement and non-
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`dilution of trademark rights under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
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`2202. An actual justiciable controversy exists between Plaintiff and Defendant that
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 2 of 7
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`warrants the issuance of a judgment declaring that the Plaintiff Smart Juices, by its use of
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`the mark SMART KIDS, and composite variations thereof including other terms and
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`design elements, has not infringed, diluted, or otherwise violated the trademark rights of,
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`or otherwise unfairly competed with, Defendant, either under the U.S. Trademark Act of
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`1946 (the “Lanham Act”), 15 U.S.C. § 1051 et seq. or applicable state law.
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`4. This Court has jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331, 1338 and 2201.
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`5. Upon information and belief, this Court has personal jurisdiction over
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`Defendant in that Defendant advertises and promotes its business in the Commonwealth,
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`and Defendant’s acts will result in harm to Plaintiff’s interests in the district.
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`6. Venue is appropriate in this Court pursuant to 28 U.S.C. § 1391 because a
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`substantial part of the relevant events giving rise to the claim occurred in this District,
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`which give rise to the Complaint, to Smart Juices within the District.
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`Factual Allegations
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`7. Plaintiff, Smart Juices, has developed and produced, is advertising and
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`marketing fruit juices, cereal bars and fruit squeezes in connection with SMART KIDS.
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`Exhibit 1 is a .pdf copy of the web page www.smart-kids.us.
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`8. Defendant claims ownership of United States Trademark Registration No.
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`4,580,372 for “Prepared food kits composed of meat, poultry, fish, seafood, and/or
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`vegetables and also including sauces or seasonings, ready for cooking and assembly as a
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 3 of 7
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`meal” sold under the mark GROW SMART KIDS (hereinafter, the “‘372 Registration”).
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`Exhibit 2
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`9. After the ‘372 Registration issued, Plaintiff, Smart Juices filed with the United
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`States Patent and Trademark Office (USPTO) two intent-to-use trademark applications
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`for SMART KIDS relating to different classes of goods. The intent-to-use applications
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`are Application No. 86/604,234 (hereinafter “the ‘234 Application”) and Application No.
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`86/604,297 (hereinafter the ‘297 Application”).
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`10. Plaintiff, Smart Juices filed the ‘234 Application for SMART KIDS in
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`connection with canned fruits; fruits in preserved form; fruit jelly in a squeeze container;
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`fruit preserves in a squeeze container; preserves. Exhibit 3
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`11. Plaintiff, Smart Juices filed the ‘297 Application for SMART KIDS in
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`connection with vitamin and mineral supplements; vitamins; cereal bars; cereal based
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`snack food; cookies; granola; granola snacks; granola-based snack bars; ready to eat,
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`cereal derived food bars; ready-to-eat cereals; bottled drinking water; bottled water;
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`coconut water; drinking water; flavored bottled water; flavored waters; spring water; and
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`water beverage. Exhibit 4
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`12. The ‘234 Application and the ‘297 Application were assigned to and
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`examined by an Examining Attorney at the USPTO.
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`13. When examining the ‘234 Application and the ‘297 Application owned by
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`Plaintiff Smart Juices, the Examining Attorney searched for conflicting marks and was
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`aware of Defendant’s existing ‘372 Registration for GROW SMART KIDS.
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 4 of 7
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`14. The Examining Attorney did not find that the ‘234 Application and the ‘297
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`Application of Smart Juices for SMART KIDS were likely to be confused with
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`Defendant’s ‘372 Registration for GROW SMART KIDS and differing goods.
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`15. The ‘234 Application and the ‘297 Application of Smart Juices were allowed
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`to proceed for publication by the Examining Attorney in view of Defendant’s ‘372
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`Registration.
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`16. On June 28, 2016, Defendant Grow Smart Kids filed with the USPTO a
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`Notice of Opposition that opposed the ‘234 Application and the ‘237 Application, both
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`owned by Plaintiff Smart Juices. Notice of Opposition (Exhibit 5)
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`17. Defendant implicates Lanham Act §1114 by alleging in its Notice of
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`Opposition Plaintiff’s use of the mark is “without Opposer’s consent or authorization . . .
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`likely to cause confusion . . . or mistake . . . or to deceive consumers . . . .” Notice of
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`Opposition, pars. 8-9 (Exhibit 5)
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`18. Defendant implicates Lanham Act §1125(a) by alleging in its Notice of
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`Opposition that Plaintiff’s “use or potential use of the SMART KIDS is likely to falsely
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`designate the origin . . . likely to disparage and falsely suggest a connection with
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`Opposer’s goods, thereby causing loss, damage and injury . . . and interfering with
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`Opposer’s use of its marks and its ability to avail itself of present and future commercial
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`benefit resulting from its sustained personal and financial investment . . . .” Notice of
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`Opposition, pars. 12-13 (Exhibit 5)
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 5 of 7
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`19. Defendant alleges that the parties are direct competitors. Notice of
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`Opposition, pars. 12-13 (Exhibit 5)
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`20. The facts alleged herein give rise to a substantial controversy between the
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`parties having adverse legal interests, of sufficient immediacy and reality to warrant the
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`issuance of a declaratory judgment. A declaratory judgment is necessary and appropriate
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`at this time so that Plaintiff may ascertain its rights with respect to its SMART KIDS
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`brand.
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`COUNT I
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`Declaration of Non-Infringement
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`21. Plaintiff hereby re-alleges, as if fully set forth herein, the allegations of
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`paragraphs 1-20, inclusive of this Complaint.
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`22. Smart Juice’s use of its SMART KIDS Marks is not an infringement of
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`Defendant’s
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`trademark registration No. 4,580,372 for GROW SMART KIDS,
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`Defendant’s trademark Application No. 87/003,638 for GROW SMART KIDS, or any
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`alleged unregistered marks.
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`23. Smart Juice’s use of its SMART KIDS Marks is not a dilution of Defendant’s
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`trademark registration No. 4,580,372 for GROW SMART KIDS, Defendant’s trademark
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`Application No. 87/003,638 for GROW SMART KIDS, or any alleged unregistered
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`marks. In addition, Defendant’s marks are not famous.
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`5
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 6 of 7
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`24. Smart Juices’ use of its SMART KIDS Marks results in no reasonable
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`likelihood of confusion as to sponsorship, licensing or source between Defendant’s
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`registered or unregistered trademarks.
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`25. Smart Juices’ use of its SMART KIDS Marks does not infringe or otherwise
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`violate Defendant’s alleged trademarks or other intellectual property rights.
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`COUNT II
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`Cancellation of Registration No. 4,580,372 for Fraud and/or Abandonment
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`26. Plaintiff hereby re-alleges, as if fully set forth herein, the allegations of
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`paragraphs 1-25, inclusive of this Complaint.
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`27. Plaintiff Smart Juices believes it has been and will continue to be damaged by
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`Defendant’s ‘372 Registration and hereby claims for cancellation of said Registration
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`pursuant to 15 USC §§ 1064, 1119.
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`28. Upon information and belief, Defendant, has ceased use of the mark GROW
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`SMART KIDS and thus abandoned whatever rights it may have had in GROW SMART
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`KIDS.
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`29. Upon information and belief, Defendant was not using the mark GROW
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`SMART KIDS in commerce at the time it filed a sworn statement of use required to
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`obtain the ‘372 Registration.
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`30. Accordingly, Plaintiff is entitled to the entry of judgment canceling the ‘372
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`Registration.
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`Case 5:16-cv-05075-EGS Document 1 Filed 09/22/16 Page 7 of 7
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff Smart Juices prays that this Court enter judgment against
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`Defendant as follows:
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`A. An order be entered declaring that Smart Juice’s use of its SMART KIDS
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`Marks is not likely to cause confusion with respect to, or likely to dilute, Defendant’s
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`trademark registration No. 4,580,372 for GROW SMART KIDS, Defendant’s trademark
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`application No. 87/003,638 for GROW SMART KIDS, or any other alleged trademark
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`rights, or other rights of Defendant.
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`B. For an order directing the United States Patent and Trademark Office to cancel
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`Defendant’s Trademark Registration No. 4,580,372 for GROW SMART KIDS.
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`C. For Plaintiff’s costs—and for attorneys’ fees under Section 38 of the Lanham
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`Act (15 U.S.C. § 1120).
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`D. Granting such other and further relief as this Court may deem just and proper.
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`Dated: September 15, 2016
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`Respectfully Submitted,
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`RIDDLE PATENT LAW, LLC
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` s/Charles L. Riddle/
`By:
`Charles L. Riddle, Esq. (PA 89,255)
`434 Lackawanna Ave.
`Suite 200
`Scranton, PA 18503
`(570) 344-4439 p.
`(570) 300-1606 f.
`charles@charleslriddle.com
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`Counsel for Plaintiff Smart Juices, LLC
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`7
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 1 of 20
`Case 5:16-cv—05075-EGS Document 1-1 Filed 09/22/16 Page 1 of 20
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`EXHIBIT 1
`EXHIBIT 1
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`EXHIBIT 1
`EXHIBIT 1
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 2 of 20
`'l 6' "Page 2 of 20
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`am “EDT Kids
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`Sfll-rfim
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`1
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 3 of 20
`Case 5:16-cv—05075-EGS Document 1-1 Filed 09/22/16 Page 3 of 20
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`EXHIBIT 2
`EXHIBIT 2
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`EXHIBIT 2
`EXHIBIT 2
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 4 of 20
`United States Patent and Trademark Office
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`Word Mark GROW SMART KIDS
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark
`Drawing
`Code
`
`Serial
`Number
`
`IC 029. US 046. G & S: Prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables and
`also including sauces or seasonings, ready for cooking and assembly as a meal. FIRST USE: 20100217.
`FIRST USE IN COMMERCE: 20140521
`
`(4) STANDARD CHARACTER MARK
`
`85176587
`
`Filing Date November 15, 2010
`
`Current
`Basis
`
`Original
`Filing Basis
`
`Published
`for
`Opposition
`
`Registration
`Number
`
`Registration
`Date
`
`1A
`
`1B
`
`April 12, 2011
`
`4580372
`
`August 5, 2014
`
`
`
`Owner
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 5 of 20
`(REGISTRANT) Grow Smart Kids, LLC LIMITED LIABILITY COMPANY GEORGIA 1 Hickory Head Place
`Savannah GEORGIA 31411
`
`Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KIDS" APART FROM THE MARK AS SHOWN
`
`Type of
`Mark
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`TRADEMARK
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`Register
`
`PRINCIPAL
`
`Live/Dead
`Indicator
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`LIVE
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 6 of 20
`Case 5:16-cv—05075-EGS Document 1-1 Filed 09/22/16 Page 6 of 20
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`EXHIBIT 3
`EXHIBIT 3
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`EXHIBIT 3
`EXHIBIT 3
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 7 of 20
`United States Patent and Trademark Office
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`Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help
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`Word Mark
`
`SMART KIDS
`
`Goods and Services IC 029. US 046. G & S: Canned fruits; Fruits in preserved form; Fruit jelly in a squeeze container;
`Fruit preserves in a squeeze container; Preserves
`
`Standard
`Characters Claimed
`
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`
`Serial Number
`
`86604234
`
`Filing Date
`
`April 21, 2015
`
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`Owner
`
`1B
`
`1B
`
`March 22, 2016
`
`(APPLICANT) Smart Juices, LLC LIMITED LIABILITY COMPANY PENNSYLVANIA 52 E. Union Blvd.
`Bethlehem PENNSYLVANIA 18018
`
`Attorney of Record Charles L. Riddle
`
`Disclaimer
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KIDS" APART FROM THE MARK AS
`SHOWN
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`PRINCIPAL
`
`Live/Dead Indicator LIVE
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`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 8 of 20
`Case 5:16-cv—05075-EGS Document 1-1 Filed 09/22/16 Page 8 of 20
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`EXHIBIT 4
`EXHIBIT 4
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`EXHIBIT 4
`EXHIBIT 4
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`
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 9 of 20
`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help
`
` Trademarks > Trademark Electronic Search System (TESS)
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`TESS was last updated on Thu Sep 15 03:21:44 EDT 2016
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`Word Mark
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`
`SMART KIDS
`
`IC 005. US 006 018 044 046 051 052. G & S: Vitamin and mineral supplements; Vitamins
`
`IC 030. US 046. G & S: Cereal bars; Cereal based snack food; Cookies; Granola; Granola snacks;
`Granola-based snack bars; Ready to eat, cereal derived food bars; Ready-to-eat cereals
`
`IC 032. US 045 046 048. G & S: Bottled drinking water; Bottled water; Coconut water; Drinking water;
`Flavored bottled water; Flavored waters; Spring water; Water beverages
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`86604297
`
`Filing Date
`
`April 21, 2015
`
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`Owner
`
`Attorney of
`Record
`
`1B
`
`1B
`
`March 22, 2016
`
`(APPLICANT) Smart Juices, LLC LIMITED LIABILITY COMPANY PENNSYLVANIA 52 E. Union Blvd.
`Bethlehem PENNSYLVANIA 18018
`
`Charles L. Riddle
`
`
`
`Disclaimer
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 10 of 20
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "KIDS" APART FROM THE MARK AS
`SHOWN
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`Live/Dead
`Indicator
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`PRINCIPAL
`
`LIVE
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`
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`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
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`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 11 of 20
`Case 5:16-cv—05075-EGS Document 1-1 Filed 09/22/16 Page 11 of 20
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`
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`EXHIBIT 5
`EXHIBIT 5
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`EXHIBIT 5
`EXHIBIT 5
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`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 12 of 20
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA754916
`06/28/2016
`
`ESTTA Tracking number:
`
`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
`
`Grow Smart Kids, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/20/2016
`
`1 Hickory Head Place
`Savannah, GA 31411
`UNITED STATES
`
`Kevin Keener
`Keener and Associates, P.C.
`Suite 4700
`Chicago, IL 60601
`UNITED STATES
`rishi.nair@keenerlegal.com, kevin.keener@keenerlegal.com, trade-
`mark@keenerlegal.com Phone:3123751573
`
`Applicant Information
`
`Application No
`
`86604297
`
`Publication date
`
`03/22/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`06/28/2016
`
`Smart Juices, LLC
`52 E. Union Blvd.
`Bethlehem, PA 18018
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/20/2016
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Vitamin and mineral supplements; Vitamins
`
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Cereal bars; Cereal based snack food;
`Cookies; Granola; Granola snacks; Granola-based snack bars; Ready to eat, cereal derived food
`bars; Ready-to-eat cereals
`
`Class 032. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bottled drinking water; Bottled water;
`Coconut water; Drinking water; Flavored bottled water; Flavored waters; Spring water; Water bever-
`ages
`
`Applicant Information
`
`Application No
`
`86604234
`
`Publication date
`
`03/22/2016
`
`Opposition Filing
`Date
`
`06/28/2016
`
`Opposition Peri-
`od Ends
`
`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 13 of 20
`
`Applicant
`
`Smart Juices, LLC
`52 E. Union Blvd.
`Bethlehem, PA 18018
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Canned fruits; Fruits in preserved form;
`Fruit jelly in a squeeze container; Fruit preserves in a squeeze container; Preserves
`
`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.
`
`4580372
`
`Registration Date
`
`08/05/2014
`
`Word Mark
`
`Design Mark
`
`GROW SMART KIDS
`
`Application Date
`
`11/15/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2010/02/17 First Use In Commerce: 2014/05/21
`Prepared food kits composed of meat, poultry, fish, seafood, and/or vegetables
`and also including sauces or seasonings,ready for cooking and assembly as a
`meal
`
`U.S. Application
`No.
`
`87003638
`
`Application Date
`
`04/17/2016
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`GROW SMART KIDS
`
`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 14 of 20
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 0 First Use In Commerce: 0
`Snacks, namely, grain-based, nutrient-dense ready-to-eat food bars, also con-
`taining dried fruits, chocolate, nuts, seeds and soy
`
`Attachments
`
`85176587#TMSN.png( bytes )
`87003638#TMSN.png( bytes )
`2d Notice of Opposition 86604297 and 86604234 Smart Kids.pdf(133997 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`Name
`
`Date
`
`/Rishi Nair/
`
`Rishi Nair
`
`06/28/2016
`
`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 15 of 20
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the matter of:
`Trademark Application Serial Nos. 86/604,297 and 86/604,234
`Published in the Official Gazette March 22, 2016
`Marks: SMART KIDS
`____________________________________
`
`
`
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`)
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`)
`GROW SMART KIDS, LLC,
`
`)
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`)
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`Opposer,
`)
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`)
`v.
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`)
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`SMART JUICES, LLC,
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`Applicant.
`)
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`)
`____________________________________)
`
`Opposition No.
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`Opposer Grow Smart Kids, LLC, ("Opposer"), a Georgia limited liability company with
`
`its principal place of business at 1 Hickory Head Place, Savannah, GA 31411, believes it will be
`
`damaged by registration of the marks shown in Trademark Application Serial Nos. 86/604,297
`
`and 86/604,234, for the mark SMART KIDS, filed by Applicant Smart Juices, LLC,
`
`("Applicant") and hereby opposes that application, alleging as grounds for its opposition:
`
`
`
`1. For Application Serial No. 86/604,297, as is evidenced by the publication of the SMART
`
`KIDS mark in the Official Gazette on March 22, 2016, Applicant seeks to register the
`
`mark SMART KIDS as a trademark in International Class 5 for "Vitamin and mineral
`
`supplements; Vitamins”; International Class 30 for “Cereal bars; Cereal based snack
`
`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 16 of 20
`
`food; Cookies; Granola; Granola snacks; Granola-based snack bars; Ready to eat, cereal
`
`derived food bars; Ready-to-eat cereals”; and International Class 32 for “Bottled drinking
`
`water; Bottled water; Coconut water; Drinking water; Flavored bottled water; Flavored
`
`waters; Spring water; Water beverages”.
`
`2. For Application Serial No. 86/604,234, as is evidenced by the publication of the SMART
`
`KIDS mark in the Official Gazette on March 22, 2016, Applicant seeks to register the
`
`mark SMART KIDS as a trademark in Applicant seeks to register the mark SMART
`
`KIDS as a trademark in International Class 29 for "Canned fruits; Fruits in preserved
`
`form; Fruit jelly in a squeeze container; Fruit preserves in a squeeze container;
`
`Preserves."
`
`3. Opposer has obtained the necessary extensions of time in which to file this Notice of
`
`Opposition.
`
`4. Opposer is the owner of U.S. Registration No. 4,580,372 for the mark GROW SMART
`
`KIDS in International Class 29 for "Prepared food kits composed of meat, poultry, fish,
`
`seafood, and/or vegetables and also including sauces or seasonings, ready for cooking
`
`and assembly as a meal”. The registration issued on August 5, 2014. Said registration is
`
`valid and subsisting and is prima facie evidence of Opposer's exclusive right to use its
`
`mark in commerce in connection with the goods identified in its registration.
`
`5. Further, Opposer has filed for additional registrations for GROW SMART KIDS, U.S.
`
`Ser. No. 87/003,638, in International Class 30 for “Snacks, namely, grain-based, nutrient-
`
`dense ready-to-eat food bars, also containing dried fruits, chocolate, nuts, seeds and soy”
`
`which further conflict and are likely to be confused with Applicant’s filings.
`
`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 17 of 20
`
`6. Opposer has spent significant amounts of revenue and resources in the marketing and sale
`
`of goods bearing the GROW SMART KIDS mark, and, as result of extensive marketing,
`
`promotion, advertising and sales activity, its marks have become well-known as
`
`identifying its goods. Through Opposer's continuing use of its marks in commerce, the
`
`marks have become valuable assets and principal symbols of Opposer's extensive
`
`goodwill.
`
`7. Upon information and belief, neither Applicant nor any predecessor or related company
`
`has made actual use of the marks shown in Application Serial Nos. 86/604,297 and
`
`86/604,234, which were both filed on an intent-to-use basis pursuant to Trademark Act
`
`§l(b), 15 U.S.C. §1051(b).
`
`8. Applicant's applications for registration of the SMART KIDS mark in connection with
`
`the goods identified in the application and any use of the mark that may have taken place
`
`are without Opposer's consent or authorization.
`
`9. The SMART KIDS marks so resemble Opposer's highly similar, registered mark GROW
`
`SMART KIDS and the goods associated with the respective marks are so highly related
`
`that registration of the SMART KIDS marks are likely to cause confusion, reverse
`
`confusion, or mistake among relevant consumers, or to deceive consumers, users and
`
`others who may believe that Applicant's goods are Opposer's goods or that such use is
`
`sponsored, authorized, licensed by, or in some other way legitimately connected with
`
`Opposer.
`
`10. In fact, Applicant’s applied-for Mark, “SMART KIDS” is wholly contained within
`
`Opposer’s registered Mark “GROW SMART KIDS” and thus shares the same sound,
`
`appearance, and pronunciation.
`
`
`
`Case 5:16-cv-05075-EGS Document 1-1 Filed 09/22/16 Page 18 of 20
`
`11. Further, Applicant and Opposer share the same customers, distribution channels,
`
`marketing platforms, and are direct competitors in this space significantly amplifying
`
`these likelihood of confusion concerns.
`
`12. Applicant's use or potential use of the SMART KIDS marks so resemble Opposer's use of
`
`the mark GROW SMART KIDS that it is likely to falsely designate the origin of
`
`Applicant's goods or Opposer's goods
`
`13. Applicant's use of SMART KIDS marks are likely to disparage and falsel
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