Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA827036
`06/14/2017
`
`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
`
`Entity
`
`Address
`
`Advertising Specialty Institute Inc.
`
`Corporation
`
`Citizenship
`
`Pennsylvania
`
`4800 Street Road Bucks County Technology Park
`Trevose, PA 19053
`UNITED STATES
`
`Attorney informa-
`tion
`
`Roberta Jacobs-Meadway
`Eckert Seamans Cherin & Mellott, LLC
`50 South 16th Street Two Liberty Place, 22nd Floor
`Philadelphia, PA 19102
`UNITED STATES
`rjacobsmeadway@eckertseamans.com, rlalonde@eckertseamans.com, ipdock-
`et@eckertseamans.com Phone:215-851-8522
`
`Applicant Information
`
`Application No
`
`87307419
`
`Publication date
`
`06/13/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`06/14/2017
`
`Opposition Peri-
`od Ends
`
`07/13/2017
`
`R & J OLSEN, INC.
`10965 SW Commerce Circle, Suite F
`Wilsonville, OR 97070
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 040. First Use: 2017/01/15 First Use In Commerce: 2017/01/15
`All goods and services in the class are opposed, namely: customized printing of company names and
`logos for marketing, promotional and advertising purposes on the goods of others; custom imprinting
`of paper goods
`
`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.
`
`1176093
`
`Registration Date
`
`11/03/1981
`
`Word Mark
`
`Design Mark
`
`ASI
`
`Description of
`
`NONE
`
`Application Date
`
`07/02/1979
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 016. First use: First Use: 1950/09/00 First Use In Commerce: 1950/09/00
`Printed Material-Namely, Reports, Directories, Indices, Newsletters,
`Magazines,Catalogues and Brochures
`Class 035. First use: First Use: 1950/09/00 First Use In Commerce: 1950/09/00
`Preparing Specialty Advertising for Others; Rental of Mailing Lists to Others; and
`Business Consultation for Others in Connection with Advertising
`
`U.S. Registration
`No.
`
`1729220
`
`Registration Date
`
`11/03/1992
`
`Application Date
`
`05/07/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ASI QUARTERLY REGISTER
`
`NONE
`
`Class 016. First use: First Use: 1990/04/00 First Use In Commerce: 1990/04/00
`printed directories comprising information about specialty advertising companies
`
`U.S. Registration
`No.
`
`2160263
`
`Registration Date
`
`05/26/1998
`
`Application Date
`
`03/14/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ASI CENTRAL
`
`NONE
`
`Class 042. First use: First Use: 1996/07/00 First Use In Commerce: 1996/07/00
`computer services, namely, providing anon-line bulletin board in the field of the
`promotion products industry and providing on-line facilities for real-time interac-
`tion with other computer users concerning the promotional products industry, in-
`cluding scheduled discussions featuring prominent people in the promotional-
`products industry
`
`U.S. Registration
`No.
`
`4193073
`
`Registration Date
`
`08/21/2012
`
`Word Mark
`
`Design Mark
`
`ASI
`
`Application Date
`
`06/29/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 035. First use: First Use: 1995/11/00 First Use In Commerce: 1995/11/00
`Marketing services, namely, providing on-line non-downloadable software that
`permits distributors to locate products and suppliers, program providing supplier
`data over a wireless device, creating and maintaining Internet sites for suppliers
`and distributors; Publishing of magazines and catalogs for the advertising spe-
`cialty/promotional products industry; Promoting, advertising and marketing the
`on-line electronic publications of others; Membership club services, namely,
`providing training to members in the field of advertising/promotional products in-
`dustry; Advertising, promotion and marketing services based on consumer credit
`reports and scores of others
`Class 036. First use: First Use: 1995/11/00 First Use In Commerce: 1995/11/00
`On-line financial credit scoring services that report on the paying habits of dis-
`tributors
`Class 041. First use: First Use: 1997/10/00 First Use In Commerce: 1997/10/00
`Publishing of magazines and catalogs for the advertising specialty/promotional
`products industry; Non-downloadable electronic publications in the nature of pro-
`motional products distributorship in thefield of advertising specialty/promotional
`products; Membership club services, namely, providing training to members
`inthe field of business and professional development; Conducting, arranging,
`and organizing trade shows for commercial and advertising purposes; Educa-
`tional services, namely, providing on-line classes,seminars, workshops in the
`field of advertising specialty/promotional products
`Class 042. First use: First Use: 1995/11/00 First Use In Commerce: 1995/11/00
`Providing a website featuring non-downloadable software that permits distribut-
`ors to locate products and suppliers, program providing supplier data over a
`wireless device, creating and maintaining Internet sites for suppliers and distrib-
`utors; Providing temporary use of on-line non-downloadable software develop-
`ment tools for advertising specialty/promotional products industry for use in the
`fieldof advertising specialty/promotional products
`
`Attachments
`
`85359112#TMSN.png( bytes )
`Notice of Opposition.pdf(269738 bytes )
`NOTICE OF OPPOSITION ASI BUSINESS GROUP EXHIBIT A.pdf(1251797
`bytes )
`NOTICE OF OPPOSITION ASI BUSINESS GROUP EXHIBIT B.PDF(221563
`bytes )
`
`Signature
`
`/Roberta Jacobs-Meadway/
`
`Name
`
`Date
`
`Roberta Jacobs-Meadway
`
`06/14/2017
`
`

`

`la1 Ii ll li I z
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BOX TTAB FEE
`
`ADVERTISING SPECIALTY
`
`INSTITUTE, INC.,
`
`Opposer,
`
`V.
`
`:
`
`:
`
`.
`:
`
`Opposition No.
`
`Mark: ASI BUSINESS GROUP (and
`Design)
`
`7
`
`App. Serial No. 87/307,419
`
`R & J OLSEN, INC.,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Honorable Commissioner for Trademarks
`
`P . O. Box 145 1
`
`'
`
`Alexandria, VA 22313-1451
`
`In the matter of trademark Application Serial No. 87/3 07,419 for the mark ASI
`
`BUSINESS GROUP (and design) filed January 19, 2017 and published for opposition June 13,
`
`2017.
`
`Advertising Specialty Institute, Inc., a Pennsylvania corporation having an address at
`
`Bucks County Technology Park, 4800 Street Road, Trevose, PA 19053, believes that it will be
`
`damaged by registration of the mark shown in the above-identified application for the services
`
`identified therein, and hereby opposes the same. The grounds for opposition are as follows:
`
`1.
`
`R & J Olsen, Inc. (hereinafter “Applicant”) seeks to register ASI BUSINESS
`
`GROUP (and design) as a mark for “customized printing of company names and logos for
`
`marketing, promotional and advertising purposes on the goods of others; custom imprinting of
`
`{M1319944.1}
`
`

`

`paper goods” in International Class 40, as evidenced by the publication of the mark on June 13,
`
`201 7.
`
`2.
`
`The application herein opposed was filed January 19, 2017 on the basis of use,
`
`with a claimed date of first use of January 15, 2017.
`
`3.
`
`Opposer, Advertising Specialty Institute, Inc. (hereinafter “Opposer” or “ASI”), is
`
`and has been engaged in the provision of services and goods for the promotional products
`
`industry for more than sixty years, and has built a successful business in connection therewith.
`
`4.
`
`The services rendered by Opposer under the mark ASI and marks which have ASI
`
`as the dominant component include a wide range of products and programs for the promotional
`
`products industry, including making available information and products for preparation of
`
`custom advertising and facilitating the availability, use and sourcing of promotional products for
`
`others. Opposer’s catalogues in print and on—line feature goods available for production and
`
`distribution as promotional products custom printed with the names and/or marks and logos of
`
`the purchasing companies. Opposer has, since at least as early as September 1950, used ASI as
`
`its name, and as the dominant component of names in connection with its business.
`
`5.
`
`The nature and extent of Opposer’s services rendered and business conducted
`
`under its ASI marks and names may be seen at Opposer’s website, www.asicentral.com.
`
`Exemplary uses of Opposer’s ASI marks in connection with the customized printing of company
`
`names and marks for marketing, promotional and advertising purposes are attached as Exhibit A.
`
`6.
`
`Opposer’s ASI marks and names are inherently distinctive as applied to
`
`Opposer’s services and goods and business, and have acquired further strength and
`
`distinctiveness by virtue of Opposer’s continuous, commercially significant and substantially
`
`exclusive use in commerce of its ASI marks and names in connection with its services and goods
`
`directed to the promotional products industry. Opposer’s services and goods and business have
`
`
`
`

`

`become well and favorably known to the relevant trade and public under Opposer’s ASI marks
`
`and names.
`
`7.
`
`Opposer is the owner of numerous U.S. trademark registrations, which are valid
`
`and subsisting, including: Registrations No. 1,176,093 for ASI issued November 3, 1981; No.
`
`1,729,220 for ASI QUARTERLY REGISTER issued November 3, 1992; No. 2,160,263 for ASI
`
`CENTRAL issued May 26, 1998; and No. 4,193,073 for ASI issued August 21, 2012
`
`(collectively, the “ASI marks”). Printouts from the USPTO records showing the status and title
`
`of each of these registrations are attached as Exhibit B.
`
`8.
`
`Priority is not in issue as Opposer is the owner of federal registrations for its ASI
`
`marks.
`
`9.
`
`In the application herein opposed, there are no restrictions on trade channels, so it
`
`must be presumed that the services identified in the application will be promoted and rendered
`
`through all trade channels to all customers appropriate for services of that type, including
`
`through promotional products channels and to purchasers of promotional products and to
`
`purchasers and recipients of services related to promotional products.
`
`10.
`
`Applicant’s mark is confusingly similar to Opposer’s ASI marks and names in
`
`sound, appearance and overall commercial impression. The primary and dominant term of
`
`Applicant’s mark is the same as Opposer’s ASI name and mark. The application which is the
`
`subject of this opposition expressly disclaims the exclusive right to the term “GROUP” so this
`
`additional term does not and cannot serve to distinguish Applicant’s contested mark from
`
`Opposer’s registered marks and its names. The remaining additional term “BUSINESS” is
`
`similarly descriptive in connection with services directed to promotional products used in the
`
`marketing of businesses, including through the custom printing of promotional products.
`
`Further, the design element of the contested mark does not distinguish Applicant’s contested
`
`

`

`mark from Opposer’s registered marks and its names, because the word mark is the dominant
`
`element of the mark which is the subject of this opposition. The design is merely a non-
`
`distinctive stylization of the word mark with a diagonal line incorporated into the ASI
`
`component.
`
`11.
`
`The services and goods and business of Opposer and the services of Applicant as
`
`identified in the application herein opposed are closely related. Opposer, inter alia, makes
`
`available and facilitates and promotes the rendering of services directed to the custom printing of
`
`company names and marks on the goods of others for marketing, promotional and advertising
`
`purposes.
`
`12.
`
`The services identified in the application herein opposed are such as are promoted
`
`and marketed and rendered to Opposer’s customers, members and distributors through Opposer’s
`
`catalogues and websites.
`
`13.
`
`The services identified in the application herein opposed are such as are promoted
`
`and marketed and rendered to classes of customers which overlap with those classes of
`
`customers who participate in Opposer’s programs and purchase Opposer’s services and who
`purchase and distribute and who receive custom printed promotional products provided through
`
`Opposer’s members and distributors who employ Opposer’s services and programs.
`
`14.
`
`Granted the similarities between Opposer’s ASI marks and names and Applicant’s
`
`ASI BUSINESS GROUP (and design) mark, and the related nature of the services, and the
`
`overlapping trade channels, members of the relevant public and trade on encountering
`
`Applicant’s mark in connection with the services identified in the application herein opposed are
`
`likely to believe in error that Opposer and Applicant are related, or that Applicant’s services
`
`originate with Opposer or one of its members or otherwise are rendered under license from or in
`
`association or affiliation with Opposer.
`
`

`

`15.
`
`If Applicant is permitted to register such mark for the services set forth in the
`
`application herein opposed, the likely confusion of the relevant public and trade will be a source
`
`of damage and injury to Opposer, as it deprives Opposer of control of its own reputation and
`
`impacts adversely on the strength of Opposer’s rights in its ASI marks and names.
`
`16.
`
`Such registration would further be a source of damage and injury to Opposer
`
`because Opposer’s business operates as a channel in the promotional products industry that
`
`connects suppliers with distributors. Opposer’s members who distribute custom printed
`
`promotional products would likely upon seeing Applicant’s mark in connection with Applicant’s
`
`services, reach the erroneous conclusion that Opposer has become a competitor, and that
`
`Opposer has some association or affiliation with Applicant through which Opposer has used
`
`access to its members’ confidential business information to establish a competing distribution
`
`service, resulting in an adverse impact on Opposer’s business relationships with its distributor
`
`members.
`
`17.
`
`Any defect, objection to or fault found with Applicant’s services rendered under
`
`the mark of the application which is the subject of this opposition would necessarily reflect on
`
`and seriously injure the reputation that Opposer has established for its business and its services
`
`and goods.
`
`18.
`
`If the Applicant is granted a registration for the mark herein opposed, it would
`
`obtain thereby at least a prima facie exclusive right to use the mark. Such registration would be
`
`a source of damage and injury to Opposer.
`
`WHEREFORE, Opposer, Advertising Specialty Institute, Inc., prays that registration of
`
`the mark of Application Serial No. 87/307,419 for the services identified therein be refused and
`
`that this Opposition be sustained.
`
`

`

`Dated: June 14, 2017
`
`Respectfully Submitted,
`
`By: s/ Roberta Jacobs-Meadway
`Roberta Jacobs-Meadway, Esquire
`Roger LaLonde, Esquire
`ECKERT SEAMAN S CHERIN &
`
`MELLOTT
`
`50 South 16th Street, 2211d Floor
`Philadelphia, PA 19102
`215—851-8522
`
`rj acobsmeadway@eckertseamans.eom
`rlalonde@eckertseamans.com
`
`ATTORNEYS FOR OPPOSER
`
`

`

`CERTIFICATE OF FILING
`
`The undersigned hereby certifies that in accordance with 37 C.F.R. §2.119(b), a true and
`
`correct copy of the foregoing Notice of Opposition was filed electronically with the United
`
`States Patent and Trademark Office via the Electronic System for Trademark Trial and Appeals
`
`(“ESTTA”) on the date shown below.
`
`Under rule 37 C.F.R. §2.105, the Trademark Trial and Appeal Board shall notify
`
`correspondent for the Applicant, Scott A. Schaffer, Esq., at the email address
`
`scott@schafferiplaw.com.
`
`Dated: June 14, 2017
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

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`
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`
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`Speciany
`
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`institute"
`
`Join - Promotional Products Suppliers & Distributors l ASI Central ~ Advertising Specialties
`
`
`
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`
`
`
`
`
`
`
`
`
`" I
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`
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`
`‘
`
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`
`
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`
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`
`3 I
`
`DISTRIBUTOR
`
`SUPPLIER
`
`NEWS
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`TOOLS
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`l3
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`
`JOIN THE PROMOTIONAL PRODUCTS SUPPLY
`
`CHAIN THROUGH ASI
`
`Promotional products, also known as ad specialties, are a growing $22.9 billion dollar industry and are
`used by nearly every business in America. Businesses use mugs, pens and T-shirts imprinted with their
`logo as an affordable way to create a memorable impression and increase brand awareness. With so
`many businesses buying promotional products, there is a booming opportunity for professionals like you
`looking to create new wealth or open a new market.
`
`The promotional products industry is organized by a supply chain comprised of powerful players including
`distributors, suppliers, decorators, etc., that contribute to the rapid growth of the industry.
`
`Why ASl? Promoting your success is what ASI is all about.
`
`Advertising Specialty institute® (ASl) is the world‘s largest organization serving the promotional products
`industry. For the last 60+ years, our experts have worked to provide you with prospecting, marketing and
`selling elements to help maximize your success. ASl® makes being successful in the industry easy and
`manageable. We have already created a built-in community for buyers and sellers with ESP ®, the #1
`sourcing database used in the industry. When you become an ASl member, you become part of this built—
`in community and network, and in turn get all of the tangible benefits our membership provides.
`
`See below to identify which type of membership best suits you.
`
`‘
`
`
`
`http://www.asicentral.com/member-benefits/join[5/1 1/2017 10:36:30 AM]
`
`

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`Join - Promotional Products Suppliers & Distributors | ASI Central - Advertising Specialties
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`Video: How
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`EXCEWQEEVE
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`A vintage toy doesn‘t seem like the
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`Vinyl sales are booming like it's the
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`70s while independent, brick—
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`REA D M O R E
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`RELATED ARTICLES
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` This Illinois distributor is
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`I
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`Kara Ward
`
`Corporate Image Consultant, City Apparel
`When reflecting on her recent sales success, Kara Ward cites a
`bit of wisdom gleaned from her grandfather: “Why play a game if
`you’re not playing to win?” After several years of impressive
`numbers at City Apparel in Findlay, OH, it's obvious Ward has
`taken his words to heart. Today, she’s a corporate image
`consultant and a newly elected board member of the Ohio
`Promotional Professionals Association. And in three of her five
`
`years at City Apparel. she's reached over a million dollars in
`sales. But it wasn’t an easy road. Just a couple years into her
`promotional career, Ward was diagnosed with breast cancer. “It was a hard year," says Ward,
`who is currently in remission, “but l already had my goals set, so nothing was going to stop me.
`The team had my back 100% and helped me live my life normally. When I wanted to go visit
`eight clients at a time, they never said, ‘No, you‘re not up to it.’ They’d say, ‘Ok, let’s go,’ and
`they’d drive me." At the end of that year, Ward reached more than $1 million in sales for the first
`time. “I very much have my eye on the prize,” she says.
`
`Fun Fact: Ward teaches lyrical and jazz dance four nights a week.
`
`impressive number ofindustry awards.
`Promo Items
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`Cary Heller
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`For Cary Heller, every sale is the best one of his life. "I know it
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`Keego Harbor, Ml-based All USA Clothing. A people person who
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`and winning high-profile converts, including the White House.
`"The textile and garment industry was a thriving American
`industry for decades,” Heller says. “We are bringing American-
`made clothing and uniforms back." When he’s not working, Heller is likely to be volunteering at
`The Friendship Circle, a charity which pairs typical teens with children with special needs. For
`the last decade, Heller has spent 20 to 30 hours a week mentoring a boy with extreme autism
`and cerebral palsy. “He has really become like my adopted child, and I cannot express the depth
`of my relationship with him,” Heller says. "i have learned that when you help someone else, the
`pers