Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA806800
`03/13/2017
`
`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
`
`Dr. Barry Sears Ph.D
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/11/2017
`
`200 Corporate PlaceSuite 7
`Peabody, MA 01960
`UNITED STATES
`
`Craig M. Scott
`Hinckley, Allen & Snyder LLP
`28 State Street
`Boston, MA 02109
`UNITED STATES
`tmdocket@hinckleyallen.com, cscott@hinckleyallen.com, amont-
`gomery@hinckleyallen.com Phone:617-345-9000
`
`Applicant Information
`
`Application No
`
`87224246
`
`Publication date
`
`01/10/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`03/13/2017
`
`Opposition Peri-
`od Ends
`
`03/11/2017
`
`Drinkwel, LLC
`2882 Walnut Ave, Ste C
`Tustin Ranch, CA 92780
`UNITED STATES
`
`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: Dietary and nutritional supplements; Elec-
`trolyte replacement solutions
`
`Class 032. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Isotonic beverages; Preparations for mak-
`ing beverages, namely, sports drinks and isotonic beverages; Sports drinks
`
`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.
`
`2689749
`
`Application Date
`
`05/22/2000
`
`Registration Date
`
`02/25/2003
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`ZONE
`
`NONE
`
`Class 016. First use: First Use: 1995/05/00 First Use In Commerce: 1995/05/00
`Publications, namely a series of books in the field of diet and nutrition
`
`U.S. Registration
`No.
`
`3254087
`
`Registration Date
`
`06/19/2007
`
`Application Date
`
`09/17/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ZONE LABS
`
`NONE
`
`Class 003. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`[ non-medicated skin care preparations and cosmetics ]
`Class 005. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`vitamins, nutritional supplements, and nutritional food bars
`
`U.S. Registration
`No.
`
`3080411
`
`Registration Date
`
`04/11/2006
`
`Application Date
`
`09/18/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ZONE LABS
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`on-line retail store, and mail order services featuring vitamins and nutritional
`supplements, nutritional food bars, health foods, edible oils and fats, non-
`medicated skin care preparations and cosmetics, and printed publications in the
`fields of diet, health and nutrition
`
`U.S. Registration
`No.
`
`3074327
`
`Registration Date
`
`03/28/2006
`
`Application Date
`
`09/18/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`DR. SEARS ZONE LABS
`
`NONE
`
`Class 003. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`non-medicated skin care preparations and cosmetics
`Class 005. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`vitamins, nutritional supplements, and nutritional food bars for use as a nutrition-
`al supplement or meal replacement
`
`U.S. Registration
`
`3074328
`
`Application Date
`
`09/18/2003
`
`

`

`No.
`
`Registration Date
`
`03/28/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`DR. SEARS ZONE LABS
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`On-line retail store and mail order services featuring vitamins and nutritionalsup-
`plements, nutritional food bars, health foods, edible oils and fats, non-medicated
`skin care preparations and cosmetics, and printed publications in the fields of
`diet, health and nutrition
`
`U.S. Registration
`No.
`
`3059308
`
`Registration Date
`
`02/14/2006
`
`Word Mark
`
`Design Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`10/03/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark is comprised of the stylized words "Dr. Sears" above the word
`"ZONE," with the letter "O" overlapping the letter "Z," in "ZONE."
`
`Class 041. First use: First Use: 2004/05/21 First Use In Commerce: 2004/05/21
`educational services, namely, conducting workshops, seminars and classes in
`thefields of diet, health and nutrition; providing on-line magazines, newslet-
`ters,bulletins, in the fields of diet, health, and nutrition; providing on-line newslet-
`ters in the fields of diet,health andnutrition by e-mail
`Class 043. First use: First Use: 2005/01/28 First Use In Commerce: 2005/01/28
`[ catering services; restaurant, cafe and snack bar services ]
`Class 044. First use: First Use: 2004/05/21 First Use In Commerce: 2004/05/21
`computer services, namely, providing counseling services, information, and edu-
`cational information in the fields of health and nutrition via the Internet; counsel-
`ing services in the field of diet, health and nutrition, providing information in the
`fields of diet, health, and nutrition via e-mail
`
`U.S. Registration
`No.
`
`3066468
`
`Registration Date
`
`03/07/2006
`
`Word Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`01/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`[ Retail store,] catalog and mail orderservices featuring vitamins and nutritional
`supplements, nutritional food bars,health foods, and publications in the fields of
`diet, health and nutrition
`
`U.S. Registration
`No.
`
`3161339
`
`Registration Date
`
`10/24/2006
`
`Word Mark
`
`Design Mark
`
`ZONE
`
`Application Date
`
`01/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`Retail store, catalog ordering and mailorder services featuring vitamins and nu-
`tritional supplements, nutritional foodbars, health foods, computer software and
`publications in the fields of diet, health and nutrition
`
`U.S. Registration
`No.
`
`3176214
`
`Registration Date
`
`11/28/2006
`
`Word Mark
`
`DR. SEARS ZONEDIET
`
`Application Date
`
`04/29/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2004/05/21 First Use In Commerce: 2004/05/21
`Providing online magazines and newsletters in the fields of diet, health, and nu-
`trition; providing online newsletters in the fields of diet, health and nutrition by e-
`mail
`
`U.S. Registration
`No.
`
`3144743
`
`Registration Date
`
`09/19/2006
`
`Word Mark
`
`Design Mark
`
`DR. SEARS ZONELABS
`
`Application Date
`
`05/13/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`[ Non-medicated skin care preparations and cosmetics ]
`Class 005. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`Vitamins; nutritional supplements; protein based nutrient dense meal replace-
`ment bars; meal replacement drink mix
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`Retail store, catalog and mail order services featuring vitamins and nutritional
`supplements, nutritional food bars, health foods, computer software and publica-
`tions in the fields of diet, health andnutrition
`
`U.S. Registration
`No.
`
`3171421
`
`Registration Date
`
`11/14/2006
`
`Word Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`12/30/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2005/11/28 First Use In Commerce: 2005/11/28
`Breakfast cereals
`
`U.S. Registration
`No.
`
`4517315
`
`Registration Date
`
`04/22/2014
`
`Word Mark
`
`Design Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`06/18/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/11/30 First Use In Commerce: 2003/11/30
`Nutritional supplements; nutritional supplement meal replacement drink mixes
`for purposes of weight reduction, weight maintenance, and diet planning; nutri-
`tional supplement foods bars for use as a nutritional supplement or meal re-
`placement
`Class 030. First use: First Use: 2013/07/22 First Use In Commerce: 2013/07/22
`Food products, namely, pasta-based prepared meals; snacks, namely, cookies
`
`U.S. Registration
`No.
`
`4383479
`
`Registration Date
`
`08/13/2013
`
`Word Mark
`
`Design Mark
`
`ZONE HEALTH
`
`Application Date
`
`12/07/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 005. First use: First Use: 2012/10/15 First Use In Commerce: 2012/10/15
`Nutritional supplements; meal replacement drink mixes for purposes of weight
`reduction, weight maintenance, and diet planning
`
`U.S. Registration
`No.
`
`4140095
`
`Registration Date
`
`05/08/2012
`
`Word Mark
`
`Design Mark
`
`ZONE PROTEIN
`
`Application Date
`
`02/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2011/06/28 First Use In Commerce: 2011/06/28
`Food products that comply with the Zone-branded diet, namely, cookies, pro-
`cessed cereals, pasta and packaged meals consisting primarily of pasta or rice,
`all containing a predetermined ratio of carbohydrates, fat and protein to assist
`withweight loss and hormonal balance
`
`U.S. Registration
`No.
`
`4137671
`
`Registration Date
`
`05/08/2012
`
`Word Mark
`
`ZONE
`
`Application Date
`
`02/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "ZONE" all in upper case where the letters "Z",
`"N" and "E" are in red and the letter "O"is in yellow.
`
`Class 005. First use: First Use: 2003/00/00 First Use In Commerce: 2003/00/00
`Vitamins, nutritional supplements; nutritional food bars for use as a nutritional
`supplement or meal replacement for purposes of weight reduction, weight main-
`tenance, and diet planning; meal replacement drink mixes for purposes of
`weight reduction, weight maintenance, and diet planning
`
`U.S. Registration
`No.
`
`4076352
`
`Registration Date
`
`12/27/2011
`
`Word Mark
`
`Design Mark
`
`ZONE
`
`Application Date
`
`02/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
`providing seminars, lectures and programs concerning weight reduction, nutri-
`tion and healthy lifestyles
`Class 044. First use: First Use: 1995/00/00 First Use In Commerce: 1995/00/00
`Providing information in the field of weight reduction and healthy lifestyles for
`educational purposes; providing an educational website in the field of weightre-
`
`

`

`duction, weight maintenance, diet planning, nutrition and healthy life-
`styles;Counseling in the fields of nutrition and wellness, meal planning services;
`personal assessments in the field of diet and nutrition
`
`U.S. Registration
`No.
`
`4082569
`
`Registration Date
`
`01/10/2012
`
`Word Mark
`
`Design Mark
`
`ZONE DIET
`
`Application Date
`
`02/24/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 041. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
`Providing seminars, lectures and programs concerning weight reduction, nutri-
`tion and healthy lifestyles
`Class 044. First use: First Use: 1990/00/00 First Use In Commerce: 1990/00/00
`Providing information in the field of weight reduction and healthy lifestyles for
`educational purposes; providing an educational website in the field of weightre-
`duction, weight maintenance, diet planning, nutrition and healthy life-
`styles;Counseling in the fields of nutrition and wellness, meal planning services;
`personal assessments in the field of diet and nutrition
`
`76553547#TMSN.png( bytes )
`76628969#TMSN.png( bytes )
`76628966#TMSN.png( bytes )
`78620316#TMSN.png( bytes )
`78629887#TMSN.png( bytes )
`78783017#TMSN.png( bytes )
`85963478#TMSN.png( bytes )
`85797662#TMSN.png( bytes )
`85251133#TMSN.png( bytes )
`85251126#TMSN.png( bytes )
`85251120#TMSN.png( bytes )
`85251114#TMSN.png( bytes )
`Notice of Opposition Drinkwel LLC LYTEZONE 56665090 v1.pdf(118081 bytes )
`
`Signature
`
`/Alexander P. Montgomery/
`
`Name
`
`Date
`
`Alexander P. Montgomery
`
`03/13/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Serial No. 87/224,246
`In the matter of:
`LYTEZONE
`Mark:
`
`January 10, 2017
`Date of Publication:
`_________________________________________
`
`
`
`
`
`
`
`Dr. Barry Sears, Ph.D, an individual
`
`
`200 Corporate Place, Suite 7
`
`
`
`Peabody, MA 01960
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`Drinkwel, LLC , a CA limited liability company
`2882 Walnut Ave, Ste. C
`
`
`
`Tustin Ranch, CA 92780
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`_________________________________________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. ______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Dr. Barry Sears, Ph.D (“Dr. Sears” or “Opposer”), is a United States citizen, with an address
`
`
`
`of 200 Corporate Place, Suite 7, Peabody, MA 01960.
`
`Opposer believes he will be damaged by registration of U.S. Trademark Application Serial
`
`No. 87/224,246 (the “Application”) filed by Drinkwel, LLC (“Applicant”) for the mark,
`
`LYTEZONE, covering “Dietary and nutritional supplements; Electrolyte replacement solutions” in
`
`Class 5, and “Isotonic beverages; Preparations for making beverages, namely, sports drinks and
`
`isotonic beverages; Sports drinks” in Class 32 (“Applicant’s Mark”) and therefore opposes the same.
`
`As grounds for this opposition, Opposer alleges the following:
`
`1.
`
`Dr. Sears is a scientist and an author who achieved considerable fame in connection
`
`with his research in dietary control of hormonal responses.
`
`56606605 v1
`
`

`

`2.
`
`In 1995, Dr. Sears branded his writing, teaching, and consulting on the benefits of an
`
`insulin balanced hormonal control diet with the term, “ZONE.”
`
`3.
`
`Thereafter, Dr. Sears authored several more books, including The Zone, Mastering
`
`the Zone, Zone Food Blocks, The Anti-Aging Zone, A Week in the Zone, The Soy Zone, The Top
`
`One Hundred Zone Foods, The OmegaRx Zone, and The Anti-Inflammatory Zone, and expanded his
`
`brand into a wide variety of branded health and nutrition products and services, including prepared
`
`foods, meal replacement shakes, nutrition bars, print and electronic publications, educational
`
`services, and vitamins and supplements.
`
`4.
`
`Dr. Sears is well known as the source of ZONE branded health, diet, and nutrition
`
`products and services as a result of his numerous and frequent live and taped appearances, including
`
`seminars, conferences, radio shows, and network television interviews, throughout the United States.
`
`5.
`
`Since 2003, Dr. Sears has provided nutritional supplements and meal replacement
`
`products for dieters in connection with the mark, ZONE, and compound marks containing ZONE.
`
`These supplements and meal replacement products are compliant with Dr. Sears’ lifelong hormonal
`
`and insulin control program that he branded ZONE in 1995.
`
`6.
`
`As a result of his widespread, continuous, and exclusive use of the ZONE family of
`
`marks to identity his goods and services, Dr. Sears owns valid and subsisting federal statutory and
`
`common law rights to the ZONE family of marks.
`
`7.
`
`Additionally, Dr. Sears is the owner of approximately 17 registered trademarks and
`
`service marks comprising or containing the mark, “ZONE.”
`
`8.
`
`By way of example, Dr. Sears owns the following U.S. Trademark Registrations, that
`
`issued prior to any date of first use that Applicant can claim (the “ZONE Marks”):
`
`
`
`56606605 v1
`
`

`

`U.S. Registration No. 2689749
`
`Registration Date
`
`02/25/2003
`
`Mark
`
`ZONE
`
`Goods/Services
`
`
`
`U.S. Registration No. 3254087
`
`Registration Date
`
`06/19/2007
`
`Mark
`
`ZONE LABS
`
`Class 016: Publications, namely a series of books in the field of diet
`and nutrition
`
`
`Goods/Services
`
`Class 003: non-medicated skin care preparations and cosmetics
`Class 005: vitamins, nutritional supplements, and nutritional food bars
`
`
`
`
`U.S. Registration No. 3080411
`
`Registration Date
`
`04/11/2006
`
`Mark
`
`ZONE LABS
`
`Goods/Services
`
`Class 035: on-line retail store, and mail order services featuring
`vitamins and nutritional supplements, nutritional food bars, health
`foods, edible oils and fats, non-medicated skin care preparations and
`cosmetics, and printed publications in the fields of diet, health and
`nutrition
`
`
`
`
`U.S. Registration No. 3074327
`
`Registration Date
`
`03/28/2006
`
`Mark
`
`DR. SEARS ZONE LABS
`
`Goods/Services
`
`Class 003: non-medicated skin care preparations and cosmetics
`Class 005: vitamins, nutritional supplements, and nutritional food bars
`for use as a nutritional supplement or meal replacement
`
`
`
`
`56606605 v1
`
`

`

`U.S. Registration No. 3074328
`
`Registration Date
`
`03/28/2006
`
`Mark
`
`DR. SEARS ZONE LABS
`
`Goods/Services
`
`Class 035: On-line retail store and mail order services featuring
`vitamins and nutritional supplements, nutritional food bars, health
`foods, edible oils and fats, non-medicated skin care preparations and
`cosmetics, and printed publications in the fields of diet, health and
`nutrition
`
`
`
`
`U.S. Registration No. 3059308
`
`Registration Date
`
`02/14/2006
`
`Design Mark
`
`
`Class 044: computer services, namely, providing counseling services,
`information, and educational information in the fields of health and
`nutrition via the Internet; counseling services in the field of diet,
`health and nutrition, providing information in the fields of diet, health,
`and nutrition via e-mail
`Class 041: educational services, namely, conducting workshops,
`seminars and classes in the fields of diet, health and nutrition;
`providing on-line magazines, newsletters, bulletins, in the fields of
`diet, health, and nutrition; providing on-line newsletters in the fields
`of diet, health and nutrition by e-mail
`
`
`
`Goods/Services
`
`
`
`
`
`
`56606605 v1
`
`

`

`U.S. Registration No. 3066468
`
`Registration Date
`
`03/07/2006
`
`Design Mark
`
`Goods/Services
`
`
`Class 035: Retail store, catalog and mail order services featuring
`vitamins and nutritional supplements, nutritional food bars, health
`foods, and publications in the fields of diet, health and nutrition
`
`
`
`
`U.S. Registration No. 3161339
`
`Registration Date
`
`10/24/2006
`
`Design Mark
`
`
`Class 035: Retail store, catalog ordering and mail order services
`featuring vitamins and nutritional supplements, nutritional food bars,
`health foods, computer software and publications in the fields of diet,
`health and nutrition
`
`
`Goods/Services
`
`
`
`U.S. Registration No. 3176214
`
`Registration Date
`
`11/28/2006
`
`Design Mark
`
`
`Class 041: Providing online magazines and newsletters in the fields of
`diet, health, and nutrition; providing online newsletters in the fields of
`diet, health and nutrition by e-mail
`
`
`
`
`Goods/Services
`
`
`
`56606605 v1
`
`

`

`U.S. Registration No. 3144743
`
`Registration Date
`
`09/19/2006
`
`Design Mark
`
`Goods/Services
`
`
`Class 005: Vitamins; nutritional supplements; protein based nutrient
`dense meal replacement bars; meal replacement drink mix
`Class 035: Retail store, catalog and mail order services featuring
`vitamins and nutritional supplements, nutritional food bars, health
`foods, computer software and publications in the fields of diet, health
`and nutrition
`
`
`U.S. Registration No. 3171421
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`Registration Date
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`11/14/2006
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`Mark
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`DR. SEARS ZONE
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`Goods/Services
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`U.S. Registration No. 4517315
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`Class 030: Breakfast cereals
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`Registration Date
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`04/22/2014
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`mark
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`DR. SEARS ZONE
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`Goods/Services
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`Class 005: Nutritional supplements; nutritional supplement meal
`replacement drink mixes for purposes of weight reduction, weight
`maintenance, and diet planning; nutritional supplement foods bars for
`use as a nutritional supplement or meal replacement
`Class 030: Food products, namely, pasta-based prepared meals;
`snacks, namely, cookies
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`U.S. Registration No. 4383479
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`Registration Date
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`08/13/2013
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`mark
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`ZONE HEALTH
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`Class 005: Nutritional supplements; nutritional supplement meal
`replacement drink mixes for purposes of weight reduction, weight
`maintenance, and diet planning
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`Goods/Services
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`56606605 v1
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`U.S. Registration No. 4140095
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`Registration Date
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`05/08/2012
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`mark
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`ZONE PROTEIN
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`Goods/Services
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`Class 030: Food products that comply with the Zone-branded diet,
`namely, cookies, processed cereals, pasta and packaged meals
`consisting primarily of pasta or rice, all containing a predetermined
`ratio of carbohydrates, fat and protein to assist with weight loss and
`hormonal balance
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`U.S. Registration No. 4137671
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`Registration Date
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`05/08/2012
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`Design Mark
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`Goods/Services
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`Class 005: Vitamins, nutritional supplements; nutritional food bars for
`use as a nutritional supplement or meal replacement for purposes of
`weight reduction, weight maintenance, and diet planning; meal
`replacement drink mixes for purposes of weight reduction, weight
`maintenance, and diet planning
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`U.S. Registration No. 4076352
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`Registration Date
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`12/27/2011
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`mark
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`ZONE
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`Class 041: providing seminars, lectures and programs concerning
`weight reduction, nutrition and healthy lifestyles
`Class 044: Providing information in the field of weight reduction and
`healthy lifestyles for educational purposes; providing an educational
`website in the field of weight reduction, weight maintenance, diet
`planning, nutrition and healthy lifestyles; Counseling in the fields of
`nutrition and wellness, meal planning services; personal assessments
`in the field of diet and nutrition
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`Goods/Services
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`U.S. Registration No. 4082569
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`Registration Date
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`01/10/2012
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`mark
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`ZONE DIET
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`Goods/Services
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`Class 041: providing seminars, lectures and programs concerning
`weight reduction, nutrition and healthy lifestyles
`Class 044: Providing information in the field of weight reduction and
`healthy lifestyles for educational purposes; providing an educational
`website in the field of weight reduction, weight maintenance, diet
`planning, nutrition and healthy lifestyles; Counseling in the fields of
`nutrition and wellness, meal planning services; personal assessments
`in the field of diet and nutrition
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`9.
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`The term ZONE in Dr. Sears’ ZONE trademarks and his composite marks
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`incorporating ZONE, is not used in its ordinary sense to mean “an area” – i.e., “play zone” describing
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`a specific area dedicated to playing.
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`10.
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`11.
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`ZONE as used by Dr. Sears is arbitrary.
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`In accordance with Sections 7(b), 22 and 33(a) of the Lanham Act, Dr. Sears’ above-
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`cited registrations constitute prima facie evidence of the validity of the registered marks and the
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`registrations thereof, Dr. Sears’ ownership of the marks shown in said registrations, and Dr. Sears’
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`exclusive right to use the marks in commerce in connection with the goods and services named
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`therein, without condition or limitation.
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`12.
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`Notwithstanding Dr. Sears’ longstanding rights in and to the ZONE Marks, on or
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`about November 2, 2016, Applicant filed U.S. Trademark Application Serial No. 87/224,246 for the
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`mark LYTEZONE covering “Dietary and nutritional supplements; Electrolyte replacement solutions”
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`in Class 5 and “Isotonic beverages; Preparations for making beverages, namely, sports drinks and
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`isotonic beverages; Sports drinks” in Class 32.
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`13.
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`There is no issue as to priority. Applicant filed the Application on an intent to use
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`basis and, upon information and belief, the Applicant has not used the LYTEZONE mark on or in
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`connection with any of the goods listed in the Application.
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`14.
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`Applicant had constructive notice of Dr. Sears’ ZONE Marks prior to the filing of the
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`Application.
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`15.
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`Because the Applicant’s Mark prominently features the term, ZONE, and Dr. Sears’
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`ZONE Marks all feature the term ZONE, Applicant’s LYTEZONE mark for “dietary and nutritional
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`supplements; electrolyte replacement solutions” and “isotonic beverages; preparations for making
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`beverages, namely, sports drinks and isotonic beverages; [and] sports drinks” is likely to be confused
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`by consumers as a part of the family of ZONE Marks owned by Dr. Sears.
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`16.
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`Applicant’s goods as designated in the Application are identical and/or highly related
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`to those offered by Dr. Sears under the ZONE Marks.
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`17.
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`Applicant’s Application does not limit the channels of trade through which its goods
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`will travel, nor does it limit the consumers to whom such goods are directed.
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`18.
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`The nature of Applicant’s goods as designated in the Application suggests they will
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`be directed to individuals concerned about health, diet, and nutrition. Dr. Sears’ ZONE-branded
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`goods are sold to the same type of customers.
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`19.
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`Dr. Sears will be damaged by the registration of the LYTEZONE designation because
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`consumers will likely to believe, falsely, that Applicant’s goods are authorized, sponsored by, or
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`approved by Dr. Sears or that Dr. Sears is otherwise affiliated with the Applicant in violation of
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`Section 2(a) of the Lanham Act, 15. U.S.C. § 1052(a).
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`20.
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`Any registration or use of the LYTEZONE designation by Applicant will damage Dr.
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`Sears because this designation is confusingly similar to Dr. Sears’s ZONE Marks and is likely to
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`cause confusion, deception, and/or mistake among the consuming public in violation of Section 2(d)
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`of the Lanham Act, 15 U.S.C. § 1052(d). Dr. Sears will be further damaged by the registration
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`sought by the Applicant because such registration will support and assist Applicant in the confusing
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`and misleading use of the ZONE Marks, and will give color of exclusive statutory rights to Applicant
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`in violation and derogation of the prior and superior rights of Dr. Sears.
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`WHEREFORE, Opposer asserts that it will be damaged by said registration of Applicant’s
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`Mark and requests that this opposition be sustained and registration of the Application be denied.
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`Respectfully submitted,
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`Dr. Barry Sears, Ph.D
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`By His Attorneys:
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`/Alexander P. Montgomery/
`Craig M. Scott, Esq.
`Alexander P. Montgomery, Esq.
`Attorneys for Opposer
`Hinckley, Allen & Snyder LLP
`28 State Street
`Boston, MA 02109
`Phone: (617) 345-9000
`Fax: (617) 345-9020
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`Dated: March 13, 2017
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`CERTIFICATE OF SERVICE
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`I, Alexander Montgomery, certify that on the March 13, 2017, a true and accurate copy of the
`Notice of Opposition has been served on Applicant’s attorney via First Class Mail, postage prepaid to:
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`Clifford D. Hyra
`Symbus Law Group, LLC
`11710 Plaza America Drive, Suite 2000
`Reston, Virginia 20190
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`/s Alexander P. Montgomery/
`Alexander P. Montgomery
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`56606605 v1
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