Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA834361
`07/19/2017
`
`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
`
`Rain International LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`07/19/2017
`
`825 East 1100 South, Suite 310
`American Fork, UT 84003
`UNITED STATES
`
`Perry S. Clegg
`Attorney
`Clegg Law
`P.O. Box 1198
`Salt Lake City, UT 84111
`UNITED STATES
`Email: mail@cleggiplaw.com
`Phone: 801-532-3040
`
`Applicant Information
`
`Application No
`
`86166421
`
`Publication date
`
`03/21/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`07/19/2017
`
`Opposition Peri-
`od Ends
`
`07/19/2017
`
`Bkon LLC
`113 Barksdale Professional Center
`Newark, DE 19711
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Beverages, namely, hot coffee, cold coffee,
`hot tea, cold tea; Coffee, tea, in single-serving containers for use in commercial beverage making
`machines; Coffee, tea, contained in plastic or metal cartridges having filters for use in commercial
`brewing machines
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Wholesale and retail store services, featur-
`ing commercial beverage-making machines, commercial beverage-dispensing machines, commercial
`beverage vending machines, and beverages, namely, hot coffee, cold coffee, hot tea, cold tea
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`
`ESTTA834361
`07/19/2017
`
`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
`
`Rain International LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`07/19/2017
`
`825 East 1100 South, Suite 310
`American Fork, UT 84003
`UNITED STATES
`
`Perry S. Clegg
`Attorney
`Clegg Law
`P.O. Box 1198
`Salt Lake City, UT 84111
`UNITED STATES
`Email: mail@cleggiplaw.com
`Phone: 801-532-3040
`
`Applicant Information
`
`Application No
`
`86166421
`
`Publication date
`
`03/21/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`07/19/2017
`
`Opposition Peri-
`od Ends
`
`07/19/2017
`
`Bkon LLC
`113 Barksdale Professional Center
`Newark, DE 19711
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Beverages, namely, hot coffee, cold coffee,
`hot tea, cold tea; Coffee, tea, in single-serving containers for use in commercial beverage making
`machines; Coffee, tea, contained in plastic or metal cartridges having filters for use in commercial
`brewing machines
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Wholesale and retail store services, featur-
`ing commercial beverage-making machines, commercial beverage-dispensing machines, commercial
`beverage vending machines, and beverages, namely, hot coffee, cold coffee, hot tea, cold tea
`
`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.
`
`4612357
`
`Registration Date
`
`09/30/2014
`
`Word Mark
`
`Design Mark
`
`RAIN
`
`Application Date
`
`08/08/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2009/01/00 First Use In Commerce: 2009/01/00
`Dietary and nutritional supplements; nutritional supplements in the form of gels;
`nutraceuticals for use as a dietary supplement; nutritionally fortified beverages;
`nutritionally fortified beverages containing a suspension of cold-pressed extracts
`of botanical seeds and D-ribose; nutritional supplements in the form ofgels con-
`taining a suspension of cold-pressed extracts of botanical seeds and D-ribose;
`nutritionally fortified beverages containing natural plant and seed extracts that
`are not for medical purposes; nutritional supplements in the form of gels contain-
`ing natural plant and seed extracts that are not for medical purposes
`
`U.S. Registration
`No.
`
`4956253
`
`Registration Date
`
`05/10/2016
`
`Word Mark
`
`Design Mark
`
`RAIN
`
`Application Date
`
`08/15/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2011/06/00 First Use In Commerce: 2011/06/00
`Beauty beverages, namely, fruit juices and energy drinks containing nutrition-
`alsupplements comprised of a suspension of cold-pressed extracts of botanical
`seeds and D-ribose; Fruit-flavored beverages; Isotonic beverages; Non-al-
`coholic, non-carbonated soft drinks; Sports drinks;Energy drinks; Concentrates,
`syrups or powders used in the preparation of sports drinks, energy drinks and
`fruit-flavored drinks
`
`
`
`Attachments
`
`86032456#TMSN.png( bytes )
`86039531#TMSN.png( bytes )
`0486op-2017-07-19-Notice-of-Opposition.pdf(35793 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Perry S. Clegg/
`
`Perry S. Clegg
`
`07/19/2017
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`DOCKET NO. 0486.RAIN.OP
`
`
`RAIN INTERNATIONAL LLC,
`
`
`Opposer,
`
`v.
`
`BKON LLC,
`
`
`Applicant,
`
`
`Opposition No. (____________)
`
`Mark: RAIN
`Int’l Class: 030 and 035
`Serial No.: 86/166,421
`Filed:
`January 15, 2014
`Published: March 21, 2017
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, Rain International LLC (“RAIN” or “Opposer”) is a limited liability company
`
`organized and existing under the laws of the State of Delaware, with its principal place of
`
`business located in American Fork, Utah. RAIN believes that it will be damaged by registration
`
`of the RAIN mark (the “subject mark”) appearing in pending Trademark Registration
`
`Application Serial No. 86/166,421 (“the ‘421 Application”) of Bkon LLC (“Applicant”) and
`
`hereby opposes the same. As grounds for the present opposition, RAIN alleges, upon actual
`
`knowledge with respect to itself and its own acts, and upon information and belief as to other
`
`matters, as follows:
`
`1.
`
`RAIN is in the business of making and selling beverages and beverage mixes,
`
`including beverages and beverage mixes comprised of natural seed and plant extracts, energy
`
`drinks, sports drinks, and protein drinks.
`
`
`
`
`
`
`
`2.
`
`RAIN sells its beverages and beverage mixes under the mark RAIN (“the RAIN®
`
`Mark”) throughout the world, including throughout the United States, Canada, Europe, Asia, and
`
`Mexico and in certain countries in Africa.
`
`3.
`
`RAIN (and or its predecessor in interest) has been selling its beverages and
`
`beverage mixes, its natural seed and plant extract beverages, under the RAIN® Mark throughout
`
`the United States since at least January, 2009 (more than eight (8) years).
`
`4.
`
`RAIN has spent substantial amounts of time, money, and resources developing
`
`goodwill in its RAIN® Mark, for which RAIN has become well known among consumers in
`
`connection with its natural plant and seed extract beverages and beverage mixes.
`
`5.
`
`Furthermore, RAIN is the owner of the following U.S. Trademark Registrations in
`
`connection with its RAIN® Mark:
`
`
`
`a.
`
`U.S. Trademark Registration No. 4612357 for RAIN in International
`
`Class 005 for “Dietary and nutritional supplements; nutritional supplements in the form of gels;
`
`nutraceuticals for use as a dietary supplement; nutritionally fortified beverages; nutritionally
`
`fortified beverages containing a suspension of cold-pressed extracts of botanical seeds and D-
`
`ribose; nutritional supplements in the form of gels containing a suspension of cold-pressed
`
`extracts of botanical seeds and D-ribose; nutritionally fortified beverages containing natural
`
`plant and seed extracts that are not for medical purposes; nutritional supplements in the form of
`
`gels containing natural plant and seed extracts that are not for medical purposes” (emphasis
`
`added); and
`
`
`
`2
`
`
`
`
`
`b.
`
`U.S. Trademark Registration No. 1253871 for RAIN in International Class 032
`
`for “Beauty beverages, namely, fruit juices and energy drinks containing nutritional
`
`supplements comprised of a suspension of cold-pressed extracts of botanical seeds and D-ribose;
`
`Fruit-flavored beverages; Isotonic beverages; Non-alcoholic, non-carbonated soft drinks; Sports
`
`drinks; Energy drinks; Concentrates, syrups or powders used in the preparation of sports
`
`drinks, energy drinks and fruit-flavored drinks” (emphasis added).
`
`6.
`
`Opposer’s RAIN® Mark has gained wide recognition among relevant consumers
`
`in the United States.
`
`7.
`
`Opposer’s RAIN® Mark is distinctive and readily identifies RAIN as the source
`
`of goods and services associated therewith.
`
`8.
`
`Applicant is currently seeking to register the mark RAIN for coffee and tea (e.g.,
`
`types of beverages made of natural plant and/or seed extracts) and for retail store services for the
`
`sale of coffee and tea as set forth in the ‘421 Application.
`
`9.
`
`RAIN’s first use in the United States of its RAIN® Mark predates Applicant’s
`
`filing date of the ‘421 Application, which was filed as an “intent-to-use” application.
`
`10.
`
`RAIN’s first use in the United States of its RAIN® Mark predates Applicant’s
`
`first use in the RAIN mark or of any similar marks.
`
`11.
`
`RAIN’s rights in its RAIN® Mark are senior and superior to any rights that
`
`Applicant has in the same or any similar marks, including senior to the RAIN mark for which
`
`Applicant seeks registration.
`
`12.
`
`Applicant’s RAIN mark set forth in the ‘421 Application is identical to or
`
`substantially similar to Opposer’s RAIN® Mark and is confusingly similar thereto.
`
`
`
`3
`
`
`
`
`
`13.
`
`The goods and services described in the ‘421 Application are closely related to
`
`the goods offered by RAIN in connection with its RAIN® Mark. Indeed, the goods and services
`
`set forth in the ‘421 Application are for the same or substantially similar to the goods and
`
`services as those associated with Opposer’s RAIN® Mark, including goods and service that are
`
`within the natural scope of expansion of Opposer’s goods/services.
`
`14.
`
`Applicant’s registration of the RAIN mark will create a likelihood of confusion as
`
`to the source, sponsorship, affiliation, or endorsement of Applicant’s goods/services, which
`
`could harm Opposer RAIN and the goodwill represented by its RAIN trademarks.
`
`15.
`
`Applicant’s use of the RAIN mark is likely to cause confusion, mistake, or
`
`deception as to the source or origin, sponsorship or approval of Applicant’s goods and services.
`
`16.
`
`Due to the confusingly similar nature of RAIN’s and Applicant’s marks and the
`
`similarity of the goods offered under the respective marks, the relevant consuming public and the
`
`consuming public generally are likely to believe that Applicant’s goods are those of RAIN or are
`
`in some way connected with, licensed by, or otherwise approved by RAIN and therefore are
`
`likely to injure the purchasing public and RAIN.
`
`17. Applicant’s goods and services would be directed to the same customer segment
`
`of the consuming public as RAIN’s goods.
`
`18.
`
`Applicant’s application for registration of and its use of the RAIN mark are
`
`without the consent or approval of RAIN.
`
`19.
`
`If Applicant is permitted to register the RAIN mark as set forth in the ‘421
`
`Application, the registration is likely to conflict and interfere with RAIN’s ability to register its
`
`own trademarks in connection with the same or related goods and services.
`
`
`
`4
`
`
`
`
`
`20.
`
`Based on the foregoing, RAIN believes that it will be damaged by the registration
`
`of the RAIN mark by Applicant in the United States Patent and Trademark Office.
`
`ACCORDINGLY, Opposer, Rain International LLC prays that the present opposition be
`
`sustained and that registration of the subject mark be refused in Classes 030 and 035.
`
`Respectfully submitted this 19th day of July, 2017.
`
`
`
`
`
` /Perry S. Clegg/
`Perry S. Clegg
`
`CLEGG, PC
`P.O. Box 1198
`Salt Lake City, Utah 84110
`Telephone: (801) 532-3040
`Fax: (801) 532-3042
`
`Attorney for Opposer,
`Rain International LLC
`
`
`
`
`
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I, the undersigned, hereby certify that a true and correct copy of the foregoing NOTICE
`
`OF OPPOSITION and this CERTIFICATE OF SERVICE were served on Applicant via First
`
`Class Mail, postage prepaid, this 19th day of July, 2017, as follows:
`
`BKON LLC
`113 BARKSDALE PROFESSIONAL CENTER
`NEWARK, DELAWARE 19711
`
`
`
`And were served on Applicant’s attorney whose address is on record with the USPTO via
`
`First Class Mail, postage prepaid, this 19th day of July, 2017, as follows:
`
`
`JUSTIN C. ALLEN
`RIVERSIDE LAW LLP
`300 CONSHOHOCKEN STATE RD
`CONSHOHOCKEN, PA 19428-3801
`
`
`
`
`
`
`
`By: /Perry S. Clegg/
`Perry S. Clegg
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
