Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA776421
`10/13/2016
`
`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
`
`Proximo Spirits, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`10/19/2016
`
`333 Washington Street
`Jersey City, NJ 07302
`UNITED STATES
`
`Erica R. Halstead
`ABELMAN, FRAYNE & SCHWAB
`666 THIRD AVE.
`NEW YORK, NY 10017
`UNITED STATES
`EHALSTEAD@LAWABEL.COM, docket@lawabel.com Phone:2129499022
`
`Applicant Information
`
`Application No
`
`86844126
`
`Publication date
`
`06/21/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`10/13/2016
`
`Etheridge, Benjamin C.
`15591 77th place north
`loxahatchee, FL 33470
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`10/19/2016
`
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 2013/10/01 First Use In Commerce: 2013/10/01
`All goods and services in the class are opposed, namely: Rum
`
`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.
`
`3820616
`
`Registration Date
`
`07/20/2010
`
`Word Mark
`
`THE KRAKEN
`
`Application Date
`
`07/21/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "THE KRAKEN" appearing within a shield, a
`representation of a sea monster similar to a giant squid, and a three-masted
`ship in the monster's tentacles.
`
`Class 033. First use: First Use: 2009/08/01 First Use In Commerce: 2009/08/01
`Rum
`
`U.S. Registration
`No.
`
`3878786
`
`Registration Date
`
`11/23/2010
`
`Application Date
`
`11/04/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`THE KRAKEN THE KRAKEN BLACK SPICED RUM
`
`

`
`Description of
`Mark
`
`The mark consists of a three-dimensional, capped glass bottle with the literal
`element "THE KRAKEN", appearing directlyon the bottle in raised lettering, and
`the literal elements "THE KRAKEN BLACK SPICED RUM" in stylized lettering
`with associated design element appearing on a label across the bottom based of
`the bottle. The bottle cap appears in black, theglass bottle appears in clear light
`brown, with the color of brown liquid is showing through the glass bottle. The la-
`bel appears in beige and contains a fanciful representation of a kraken, or sea
`monster, which appears in the colors beigeand brown, and a black shield with
`three separate gray border designs and containing the words "THE KRAKEN
`BLACK SPICEDRUM" in the color white in its interior.
`
`Goods/Services
`
`Class 033. First use: First Use: 2009/08/01 First Use In Commerce: 2009/08/01
`Rum
`
`U.S. Application
`No.
`
`87194023
`
`Application Date
`
`10/05/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a representation of a sea monster similar to a giant squid,
`and a three-masted ship in the monster's tentacles.
`
`Class 033. First use: First Use: 2009/08/01 First Use In Commerce: 2009/08/01
`Rum
`
`U.S. Registration
`No.
`
`3741146
`
`Registration Date
`
`01/19/2010
`
`Word Mark
`
`KRAKEN
`
`Application Date
`
`04/16/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 033. First use: First Use: 2009/08/01 First Use In Commerce: 2009/08/01
`Rum
`
`86424964
`
`Application Date
`
`10/15/2014
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`KRAKEN BEAST
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 033. First use: First Use: 0 First Use In Commerce: 0
`Rum
`
`U.S. Registration
`No.
`
`4068154
`
`Registration Date
`
`12/06/2011
`
`Word Mark
`
`Design Mark
`
`RELEASE THE KRAKEN
`
`Application Date
`
`06/15/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 033. First use: First Use: 2011/09/19 First Use In Commerce: 2011/09/19
`Rum
`
`U.S. Registration
`No.
`
`3585895
`
`Registration Date
`
`03/10/2009
`
`Word Mark
`
`Design Mark
`
`KRAKEN
`
`Application Date
`
`05/05/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2005/02/04 First Use In Commerce: 2005/02/04
`Malt liquor
`
`U.S. Registration
`No.
`
`4355033
`
`Registration Date
`
`06/18/2013
`
`Word Mark
`
`Design Mark
`
`KRAKEN
`
`Application Date
`
`03/16/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 032. First use: First Use: 2012/11/01 First Use In Commerce: 2012/11/01
`Non-alcoholic cocktail mix; beer; non-alcoholic malt beverages; flavored brewed-
`malt beverages; alcoholic malt beverages
`
`77786210#TMSN.png( bytes )
`77865216#TMSN.png( bytes )
`87194023#TMSN.png( bytes )
`77978366#TMSN.png( bytes )
`86424964#TMSN.png( bytes )
`85063419#TMSN.png( bytes )
`77466187#TMSN.png( bytes )
`85572320#TMSN.png( bytes )
`KRAKEN v BLACK CORAL RUM.pdf(165015 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
`
`/erh/
`
`Name
`
`Date
`
`Erica R. Halstead
`
`10/13/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application No. 86/844126
`
`
`PROXIMO SPIRITS, INC.,
`
`Opposition No.
`
`Opposer,
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`BENJAMIN C. ETHERIDGE,
`
`
`
`
`
`Applicant
`
`
`
`NOTICE OF OPPOSITION
`
`Proximo Spirits, Inc. (“Opposer”), a corporation of Delaware with a business address at
`
`
`
`
`
`
`
`333 Washington Street, Jersey City, NJ 07302, USA, believes that it will be damaged by
`
`registration of the above identified trademark and hereby opposes the same.
`
`
`
`
`
`As grounds for opposition it is alleged that:
`
`1.
`
`On December 9, 2015, Benjamin C. Etheridge (“Applicant”), an individual with a
`
`business address at 15591 77th Pl. North, Loxahatchee, FL, 33470 USA, filed an application seeking
`
`registration of the mark
`
` (“Applicant’s Mark”) for rum. This application,
`
`assigned Serial No. 86/844126, claims a first commercial use date of October 1, 2013.
`
`
`
`
`
`

`
`2.
`
`
`
`Opposer owns the following Design Marks in the United States:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Reg. No. 3820616
`
`
`
`Reg. No. 3878786
`
`
`
`Ser. No. 87/194023
`
`
`
`
`
`
`
`
`
`“rum” in Cl. 33
`
`“rum” in Cl. 33
`
`“rum” in Cl. 33
`
`(collectively referred to as “Opposer’s Design Marks”).
`
`
`
`4.
`
`Opposer first used Opposer’s Design Marks in United States commerce in
`
`connection with rum since at least as early as 2009.
`
`
`
`5.
`
`The first commercial use of Opposer’s Design Marks predates both the filing date
`
`of Applicant’s Mark as well as Applicant’s claimed date of first use in commerce.
`
`Opposer’s Design Marks contain the design of a KRAKEN.
`
`A KRAKEN is a legendary sea creature of giant size and nearly identical to a squid
`
`
`
`
`
`6.
`
`7.
`
`or an octopus.
`
`
`
`
`
`8. Applicant’s Mark contains the design of an octopus.
`
`2
`
`

`
`9.
`
`Applicant’s Mark is substantially similar in appearance to Opposer’s Design
`
`Marks.
`
`
`
`10. Opposer’s Reg. No. 3878786 contains a claim to the colors black, light brown,
`
`brown, beige, gray and white. Specifically, the “Kraken” design is to be used in the colors beige
`
`and brown.
`
`
`
`11.
`
`12.
`
`Marks.
`
`Applicant’s Mark contains a claim to the colors black, brown, gold and tan.
`
`Applicant’s Mark will be used in the same or similar colors as Opposer’s Design
`
`13.
`
`Applicant’s Mark conveys an overall commercial impression that is similar to that
`
`conveyed by Opposer’s Design Marks.
`
`14.
`
`15.
`
`16.
`
`17.
`
`Opposer’s Design Marks cover rum.
`
`Applicant’s Mark covers rum.
`
`The Parties’ respective goods are identical.
`
`Because the Parties’ respective goods are identical, they will be marketed through
`
`the same or similar retail outlets.
`
`18.
`
`Because the Parties’ respective goods are identical, they will be marketed to the
`
`same or similar consumers.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`19.
`
`Opposer owns the following wordmarks in the United States:
`
`KRAKEN
`
`
`
`KRAKEN BEAST
`
`
`
`
`
`Reg. No. 3741146
`
`Ser. No. 86/424964
`
`RELEASE THE KRAKEN Reg. No. 4068154
`
`KRAKEN
`
`
`
`
`
`Reg. No. 3585895
`
`
`
`
`
`
`
`
`
`“rum” in Cl. 33
`
`“rum” in Cl 33
`
`“rum” in Cl. 33
`
`“malt liquor” in Cl. 32
`
`3
`
`

`
`KRAKEN
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Reg. No. 4355033
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`“non-alcoholic cocktail mix;
`beer; non-alcoholic malt
`beverages; flavored brewed
`malt beverages; alcoholic
`malt beverages” in Cl. 32
`
`(collectively referred to as “Opposer’s KRAKEN Marks”).
`
`20.
`
`Opposer first used the mark KRAKEN in United States commerce in connection
`
`
`
`
`
`
`
`
`
`
`
`with malt liquor since at least as early as 2005.
`
`
`
`21.
`
`The first commercial use of Opposer’s KRAKEN Mark for malt liquor predates
`
`both the filing date of Applicant’s Mark as well as Applicant’s claimed date of first use in
`
`commerce.
`
`
`
`22.
`
`Opposer first used the mark KRAKEN in United States commerce in connection
`
`with rum since at least as early as 2009.
`
`
`
`23.
`
`The first commercial use of Opposer’s KRAKEN Mark for rum predates both the
`
`filing date of Applicant’s Mark as well as Applicant’s claimed date of first use in commerce.
`
`
`
`24.
`
`Opposer first used the mark KRAKEN in United States commerce in connection
`
`with beer and alcoholic malt beverages since at least as early as 2012.
`
`
`
`25.
`
`The first commercial use of Opposer’s KRAKEN Mark for beer and alcoholic
`
`malt beverages predates both the filing date of Applicant’s Mark as well as Applicant’s claimed
`
`date of first use in commerce.
`
`
`
`26.
`
`Because a KRAKEN is a legendary squid or octopus, Opposer’s KRAKEN Marks
`
`connote the image of a squid or octopus in the minds of consumers.
`
`
`
`27.
`
`Applicant’s Mark conveys an overall commercial impression that is similar to that
`
`conveyed by Opposer’s KRAKEN Marks.
`
`
`
`4
`
`

`
`
`
`28. Opposer’s KRAKEN Marks cover “rum, malt liquor, beer and alcoholic malt
`
`beverages.”
`
`
`
`29.
`
`The goods covered by Opposer’s KRAKEN Marks are identical to and/or
`
`commercially related to Applicant’s goods, namely “rum.”
`
`30.
`
`Because the Parties’ respective goods are identical and/or commercially related,
`
`they will be marketed through the same or similar retail outlets.
`
`31.
`
`Because the Parties’ respective goods are identical and/or commercially related,
`
`they will be marketed to the same or similar consumers.
`
`32.
`
`Opposer owns and operates the website www.krakenrum.com. This site provides
`
`a brief history of the KRAKEN as well as links to films featuring the KRAKEN and a supply
`
`shop to order KRAKEN merchandise. It also provides information on the “League of Darkness,”
`
`a KRAKEN fanclub.
`
`33.
`
`By virtue of the distribution, sale, advertising and promotion of products bearing
`
`Opposer’s Design Marks and Opposer’s KRAKEN Marks, they are widely recognized by the
`
`purchasing public as identifying Opposer and its goods.
`
`34.
`
`Applicant’s Mark is confusingly similar to Opposer’s Design Marks and
`
`Opposer’s KRAKEN Marks.
`
`35.
`
`Accordingly, use and registration of Applicant’s Mark is likely to deceive and to
`
`cause mistake or confusion among members of the public as to the source of Applicant’s goods
`
`within the meaning of 15 U.S.C. §1052(d).
`
`
`
`WHEREFORE, Opposer believes that it has a real interest in this proceeding and will be
`
`irreparably damaged by the registration of the Applicant's Mark, and respectfully requests that the
`
`Board sustain this Opposition and refuse registration of same.
`
`
`
`5
`
`

`
`
`
`Opposer requests that the requisite filing fee of $300 be charged to the undersigned’s Deposit
`
`Account No. 010035-6336.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: October 13, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`s/Erica R. Halstead /
`LAWRENCE E. ABELMAN
`ERICA R. HALSTEAD
`
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`New York, New York 10017
`(212) 949-9022
`Attorneys for Opposer
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing NOTICE OF OPPOSITION was served via
`
`
`
`
`
`first class mail, postage prepaid, this13th day of October 2016 upon Applicant:
`
`
`Benjamin C. Etheridge
`15591 77th Place North
`Loxahatchee, FL 33470
`
`s/Erica Halstead/
`ERICA R. HALSTEAD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6

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