Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA912342
`07/29/2018
`
`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
`
`Shurfine Foods, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/29/2018
`
`6700 S.W. Sandburg Street
`Tigard, OR 97223
`UNITED STATES
`
`Sheila Fox Morrison
`Davis Wright Tremaine LLP
`1300 S.W. 5th Avenue, Suite 2400
`Portland, OR 97201
`UNITED STATES
`Email: stevenklein@dwt.com, sheilafoxmorrison@dwt.com, pdxtrade-
`marks@dwt.com, pdxtmenforcement@dwt.com
`
`Applicant Information
`
`Application No
`
`79191289
`
`Publication date
`
`01/30/2018
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`07/29/2018
`
`1308026
`
`FONTERRA TM LIMITED
`109 Fanshawe Street
`Auckland Central
`Auckland 1010
`NEW ZEALAND
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`07/29/2018
`
`07/01/2016
`
`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: Dietetic foods, drinks, substances,
`powders, beverages, supplemental drinks, meal replacements, vitamins, mineral supplements, and
`additives, none of which areused for veterinary animal healthcare, namely, infant formulas, powdered
`milk for babies and infants, and infant formulas adapted for medical use; dietetic substances, namely,
`powdered nutritional supplement drink mixes and concentrates, powdered milk for babies and infants,
`powdered meal replacement drink mixes adapted for medical use, meal replacement drinks adapted
`for medical use, dietary supplemental drinks in the nature of vitamin and mineral beverages adapted
`for medical use and infant formula; dietetic beverages, namely, supplemental drinks promoting
`healthy growth, bone health, muscle development, cognitive development, immunity development or
`allergy and digestive health; dietetic meal replacements, namely, powdered milk for babies and in-
`fants, drinks, and infant formula adaptedfor medical use; food for babies; food for infants; milk powder
`for babies; milk powder for infants; dietary supplements, intended to supplement a normal diet or to
`have health benefits; vitamins forhuman consumption; vitamin formulationsfor human consumption;
`
`

`

`mineral supplements for foodstuffs; nutritional additives, namely, food additives for use in thefood and
`pharmaceutical industry as dietary supplements for humans in the nature of extracts derived from
`milk; nutritional supplements; nutritional cultures, namely, probiotic cultures; none of the foregoing for
`veterinary animal healthcare
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Dairy based beverages; dairy based
`powders for making dairy-based food beverages and shakes; milk; milk products, excluding ice
`cream, ice milk and frozen yoghurt; milk powder; milk protein; cream, being a dairy product; butter;
`edible oils; edible fats; cheese; whey; yoghurt
`
`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.
`
`3557357
`
`Registration Date
`
`01/06/2009
`
`Word Mark
`
`Design Mark
`
`SHURFINE
`
`Application Date
`
`05/28/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Pre-packaged dinners consisting of primarily of meat, poultry and fish with
`pasta; cheese; cream cheese; processed cheese; cheese spreads; cheese sub-
`stitutes; mold-ripened cheese; soft cheese; white cheese; low-fat cheese; non-
`fat cheese; string cheese; yogurt; butter; butter substitutes; margarine; veget-
`able-based spreads; Maraschino cherries; processed cherries; fruit-based pie
`filling; frozen fish; vegetable oils and fats; canned fish; canned oysters; chili with
`and without beans; beef stew; canned cooked meat;canned pork and beans;
`canned refried beans; canned beans; jerky; frozen meals consisting primarily of
`meat, poultry and/or vegetables; applesauce; canned fruits and vegetables;
`sauerkraut; dried fruits; canned fruits; frozen fruits; fruit-based snack foods;
`snack mix consistingprimarily of processed fruits, processed nuts and/or raisins;
`instant potatoes;frozen potatoes; shortening; edible oils; edible fats; processed
`oils and fats;vegetable oils; non-dairy creamer; broth; bouillon; bouillon concen-
`trates; vegetable protein bits having a bacon flavor; soups; canned soups; soup
`mixes; [ pickled fruits; ] pickled vegetables; processed olives; pickles; processed
`peppers;dried beans; frozen chicken; ham; bacon; luncheon meats; frankfurters;
`hot dogs; sausages; dried meat; canned tomatoes;vegetable juice for cooking;
`sour cream; [ sour cream substitutes; ] cottage cheese; half and half; whipping
`cream; peanut butter; fruit preserves; jellies; jams; marmalade; fruit-based
`spreads; whipped cream; whipped topping; milk; evaporated milk; powdered
`milk; dip; frozen vegetables; and dairy-based dips; processed nuts; raisins;
`potato chips; fruit-based snack food; frozen meals consisting primarily of pota-
`
`

`

`toes
`
`U.S. Registration
`No.
`
`3557357
`
`Registration Date
`
`01/06/2009
`
`Word Mark
`
`Design Mark
`
`SHURFINE
`
`Application Date
`
`05/28/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2005/06/01 First Use In Commerce: 2005/06/01
`Pre-packaged dinners consisting of primarily of meat, poultry and fish with
`pasta; cheese; cream cheese; processed cheese; cheese spreads; cheese sub-
`stitutes; mold-ripened cheese; soft cheese; white cheese; low-fat cheese; non-
`fat cheese; string cheese; yogurt; butter; butter substitutes; margarine; veget-
`able-based spreads; Maraschino cherries; processed cherries; fruit-based pie
`filling; frozen fish; vegetable oils and fats; canned fish; canned oysters; chili with
`and without beans; beef stew; canned cooked meat;canned pork and beans;
`canned refried beans; canned beans; jerky; frozen meals consisting primarily of
`meat, poultry and/or vegetables; applesauce; canned fruits and vegetables;
`sauerkraut; dried fruits; canned fruits; frozen fruits; fruit-based snack foods;
`snack mix consistingprimarily of processed fruits, processed nuts and/or raisins;
`instant potatoes;frozen potatoes; shortening; edible oils; edible fats; processed
`oils and fats;vegetable oils; non-dairy creamer; broth; bouillon; bouillon concen-
`trates; vegetable protein bits having a bacon flavor; soups; canned soups; soup
`mixes; [ pickled fruits; ] pickled vegetables; processed olives; pickles; processed
`peppers;dried beans; frozen chicken; ham; bacon; luncheon meats; frankfurters;
`hot dogs; sausages; dried meat; canned tomatoes;vegetable juice for cooking;
`sour cream; [ sour cream substitutes; ] cottage cheese; half and half; whipping
`cream; peanut butter; fruit preserves; jellies; jams; marmalade; fruit-based
`spreads; whipped cream; whipped topping; milk; evaporated milk; powdered
`milk; dip; frozen vegetables; and dairy-based dips; processed nuts; raisins;
`potato chips; fruit-based snack food; frozen meals consisting primarily of pota-
`toes
`
`U.S. Registration
`No.
`
`3557358
`
`Registration Date
`
`01/06/2009
`
`Word Mark
`
`SHURFINE
`
`Application Date
`
`05/28/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2006/06/01 First Use In Commerce: 2006/06/01
`Pasta and noodles; dried pasta; macaroni and cheese; breakfast cereals; ready
`to eat, cereal derived food bars; hot cereal; ready to eat cereals; bread and
`pastry; muffins; biscuits; cookie dough; taco shells; dessert puddings; instant
`puddings; flavored and sweetened gelatins; coffee; decaffeinated coffee; instant
`coffee; tea; tea bags; instant tea; iced tea mix; cake mixes; brownie mixes; in-
`stant pancake mixes; muffin mixes; stuffingmixes containing bread; flour for
`food;wheat flour; corn flour; sugar; brown sugar; powdered sugar; sugar substi-
`tutes;processed coconut; frosting mixes; cornmeal; croutons; pie crusts; confec-
`tionery chips for baking; chocolate chips; baking soda; yeast; yeast powder;
`bread crumbs; popcorn; candy coated popcorn; microwave popcorn; tortilla
`chips; corn chips; pretzels; cheese curls and puffs; snack mix consisting primar-
`ily of crackers, pretzels, candied nuts and/or popped popcorn; pastries; toaster
`pastries; granola-based snack bars; frozen meals consisting primarily of pasta;
`frozen pizza; frozen appetizers consisting primarily of bread, sauce, and cheese;
`frozen desserts consisting of fruit and cream or cream substitutes; gravies; meat
`gravies; relish; pimiento used as a condiment; unpopped popcorn; rice; rice and
`seasoning mix combined in unitary packages; frozenbakery goods; ketchup;
`mustard; vinegar; barbecue sauces; chili sauce; soy sauce; steak sauce; teriyaki
`sauce; Worcestershire sauce; hot sauce; salsa; picante sauce; marinades; pizza
`sauce; spaghettisauce; pancake syrup; maple syrup; cornsyrup; cocoa mixes;
`cocoa powder; topping syrup; chocolate syrup; honey; waffles; salt; table salt;
`pepper; extracts used as flavoring; spices; baking spices; dry spice rub for
`meats and fish; spice blends; spice rubs; gravy; gravy mixes; taco seasoning;
`sauce mixes; dry seasoning mixes for gravy, spaghetti, stews, meatloaf and
`sloppy Joes; seasoned coatingfor meat, fish, and poultry; tortillas;mayonnaise;
`salad dressing; beverages made of tea; candy; cookies; crackers; ice cream;
`cones for ice cream; and frozenconfections, namely, freezer pops; chocolate
`topping
`
`U.S. Registration
`No.
`
`3557360
`
`Registration Date
`
`01/06/2009
`
`Word Mark
`
`SHURFINE
`
`Application Date
`
`05/28/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2002/03/01 First Use In Commerce: 2002/03/01
`Bottled water; distilled drinking water; seltzer water; sparkling water; soda water;
`flavored waters; vegetable juices;apple-juice beverages; orange-juice bever-
`ages; fruit juice; fruit drinks; fruitjuice concentrates; [ sports drinks; ] soda pops;
`soft drinks; and concentrates, syrups or powders used in the preparation of
`drinks
`
`U.S. Registration
`No.
`
`2170823
`
`Registration Date
`
`07/07/1998
`
`Word Mark
`
`Design Mark
`
`SHUR FINE
`
`Application Date
`
`11/06/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 001. First use: First Use: 1986/05/21 First Use In Commerce: 1986/05/21
`[ automotive maintenance products, namely, antifreeze, windshield washer
`solvent, power steering fluid, brake fluid ] ;rock salt for deicing and ice cream
`making, water softener salt [ , unexposed photographic film ]
`Class 003. First use: First Use: 1989/04/30 First Use In Commerce: 1989/04/30
`household cleaning preparations, namely, [ abrasive household cleanser, ] all-
`purpose household cleaners, [ floor wax, ] furniture polish, toilet bowl cleaners, [
`
`

`

`carpet cleaner, ] bathroom cleaner, fabric softener sheets, dish washing deter-
`gent, laundry detergent, [ stain removers, ] drain openers; [ hair care prepara-
`tions, namely, hair gel, hair spray, hair waving preparations; baby care products,
`namely, baby lotion, baby bath, ] baby towelettes; [ personal hygiene products,
`namely, cotton swabs, cotton balls and cotton sticks for cosmetic purposes, hy-
`drogen peroxide for use on hair, denture cleaning preparations, bubble bath,
`]bar soap [, personal deodorants, antiperspirants, skin cream; sunscreen prepar-
`ations, non-medicated lip balm, automobile cleaning preparations ]
`Class 004. First use: First Use: 1994/09/30 First Use In Commerce: 1994/09/30
`[ fireplace logs, motor oil, carnauba wax ]
`Class 005. First use: First Use: 1995/09/26 First Use In Commerce: 1995/09/26
`[over-the-counter medications, namely, appetite suppressants, travel sickness
`tablets, sleeping pills/tablets, laxatives, calamine lotion, acne medications, anti-
`biotic ointment, antibiotic cream, menthol chest rub, hydrocortisone cream, top-
`ical gel for medical and therapeutic use, topical ointments and topical creams for
`antibiotic, anti-inflammatory, antiseptic and anesthetic use, antacids, decongest-
`ants, antihistamines, cough drops, cold medications, influenza medica-
`tions,allergy medications, throat spray, cough syrup, throat lozenges, nasal
`spray, oral analgesics, diarrhea medications, hemorrhoidal medications, diaper
`rash ointment; feminine hygiene products, namely,douches, sanitary napkins,
`sanitary pads, tampons, panty liners, panty shields;first aid products, namely,
`adhesive bandages, medical adhesive tape, gauze, cotton balls, cotton swabs
`and cotton sticks for medical purposes; pharmaceutical preparations, namely, al-
`cohol for topical use, hydrogen peroxide for medical use, epsom salts, witch
`hazel, boric acid for antiseptic use; eye care products, namely, eye drops, con-
`tact lens cleaning solutions, contact lens saline solutions;foot care products,
`namely, corn pads, callous pads; bunion pads; ] household disinfectants, carpet
`deodorizers, air fresheners, [ domestic pesticides], incontinence garments, in-
`continence pads [ , medicated sunburn preparations, medicatedlip balm , nutri-
`tional supplements, mineral supplements, mineral oil for medical and therapeutic
`use ]
`Class 008. First use: First Use: 1984/12/31 First Use In Commerce: 1984/12/31
`[ cosmetic implements, namely, tweezers, manicure sets, nail clippers, scissors,
`eyelash curlers, nail files; shaving implements, namely, razor blades, razors ]
`Class 009. First use: First Use: 1992/04/30 First Use In Commerce: 1992/04/30
`batteries, single use cameras, [ blank video tapes ]
`Class 010. First use: First Use: 1994/05/04 First Use In Commerce: 1994/05/04
`[thermometers for medical use ]
`Class 011. First use: First Use: 1990/07/31 First Use In Commerce: 1990/07/31
`[ light bulbs ]
`Class 016. First use: First Use: 1985/05/31 First Use In Commerce: 1985/05/31
`[ adhesive tapes for stationary or household use, glue for stationary or house-
`hold use ], paper filters for coffee makers, paper baking cups, disposable di-
`apers, plastic food storage bags for household use [ , litter box liners in the for-
`mof plastic bags ]
`Class 017. First use: First Use: 1993/02/28 First Use In Commerce: 1993/02/28
`strapping tape
`Class 018. First use: First Use: 1991/06/01 First Use In Commerce: 1991/06/01
`[ rawhide chews for dogs, tote bags ]
`Class 020. First use: First Use: 1992/01/31 First Use In Commerce: 1992/01/31
`[ drinking straws ]
`Class 021. First use: First Use: 1990/04/30 First Use In Commerce: 1990/04/30
`[ cleaning implements, namely, steel wool soap pads, scouring sponges and
`pads,mops, mop refills, brooms, dust pans; hair care implements, namely, hair
`
`

`

`brushes, hair combs; household gloves, household rubber gloves, plastic flat-
`ware, plastic plates, plastic bowls and cups, paper plates, paper bowls and
`cups, disposable aluminum cookware , loofah sponges, makeup sponges, eye-
`lash brushes, dental floss ]
`Class 025. First use: First Use: 1992/04/10 First Use In Commerce: 1992/04/10
`[ driving gloves, head bands, shower caps, insoles ]
`Class 026. First use: First Use: 1992/05/01 First Use In Commerce: 1992/05/01
`[ hair implements, namely, non-electrichair curlers, barrettes, hair pins, hair or-
`naments, hair nets, hair bands, hairclips, hair picks ]
`Class 028. First use: First Use: 1992/02/29 First Use In Commerce: 1992/02/29
`[ cat toys, dog toys, athletic tape ]
`Class 029. First use: First Use: 1987/05/05 First Use In Commerce: 1987/05/05
`canned seafood, namely, tuna, oysters, shrimp; [ prepared salads, namely,
`potato salad, ham salad, chicken salad; ] cooking and salad oils, namely, canola
`oil,corn oil, [ cottonseed oil] , peanut oil, vegetable oil, sunflower oil, [ coconut
`oil] ; cooking spray, flaked coconut,processed edible seeds, dried fruits, pro-
`cessed nuts, fruit-based snack foods, yogurt covered raisins, maraschino cher-
`ries, whipped topping mix, fruit-based pie fillings, applesauce, fruit-based
`spreads, jams, canned chicken, condensed milk, non-dairy creamer, processed
`peppers and olives, [ pickled okra ], baked beans, pork and beans, potato mixes,
`bacon flavor bits, shoestring potatoes, shellednuts, slivered nuts, bouillon,
`frozen poultry, [ egg substitutes ], cheese toppings, snack food dips, cheese
`food, yogurt, vegetable-based spreads, sour cream,trail mix consisting primarily
`of processed nuts, raisins, and processed seeds,refried beans, frozen entrees
`consisting primarily of meat, fish, poultry or vegetables, frozen onion rings, sand-
`wich spread, namely, a mayonnaise substitute [, dry packaged meals consisting
`primarily of vegetables ]
`Class 030. First use: First Use: 1995/08/31 First Use In Commerce: 1995/08/31
`baking products, namely, mixes for bakery goods, confectionery chips for bak-
`ing, pie crust shells, vanilla, baking powder, baking soda, frostings, marshmal-
`low creme; corn-based snack foods, namely, [popcorn cakes] , tortilla chips,
`corn chips, cheese curls, nacho cheese chips, syrups, namely, chocolate syrup,
`corn syrup, maple syrup, pancake syrup; snack foods, namely, candy, yogurt
`covered pretzels, [ peanut brittle, snack cakes, ] bread sticks, salsa, [ rice cakes]
`, cereal-derived food bars; sauces, namely, seafood cocktail sauce, [tartar
`sauce] , picante sauce, taco sauce, cheese sauce, sloppy joe sauce, spaghetti
`sauce, pizzasauce, pasta sauces, barbecue sauce, hot sauce, steak sauce,
`worchester sauce, soy sauce, teriyaki sauce; dessert food,namely, [ pies, ] pud-
`ding mixes, flavored gelatin mixes, dessert toppings, namely, chocolate top-
`pings, [ butterscotch toppings, caramel toppings], ice cream cones; breakfast
`foods, namely, waffles, pancakes, bagels, oatmeal, hot cereals, toaster pastries;
`frozen foods, namely, frozen entrees consisting primarily of pasta or rice, frozen
`confections, [ pot pies, ] croutons, stuffing, gravy, gravy mixes, spaghetti sauce
`mix, seasoning mixes, seasoned coating for meat and poultry, bread crumbs,
`stuffing mixes containing bread, biscuits, seasoning blend contained in a roast-
`ing bag, pasta, canned pasta with sauce, dry packaged meals consisting primar-
`ily of pasta or rice, [ chow mein noodles], rice mixes, [ tamales], taco shells, [
`tostada shells, tortilla mix, ] honey, marshmallows, cocoa
`Class 031. First use: First Use: 1988/12/31 First Use In Commerce: 1988/12/31
`dog food, cat food, cat litter, wild bird seed, pet snacks
`Class 032. First use: First Use: 1995/04/18 First Use In Commerce: 1995/04/18
`breakfast fruit-drink mixes, [ fruit nectars, ] non-alcoholic ciders, fruit drinks, car-
`bonated soft drinks, low caloriesoft drinks, soft drink mixes, bottled drinking wa-
`ter, sports drinks, [ beer ]
`Class 034. First use: First Use: 1995/01/31 First Use In Commerce: 1995/01/31
`
`

`

`cigarettes, cigarette lighters not of precious metals
`
`U.S. Registration
`No.
`
`663880
`
`Registration Date
`
`07/01/1958
`
`Application Date
`
`01/18/1957
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SHURFRESH
`
`NONE
`
`Class U046 (International Class 029, 030). First use: First Use: 1950/10/09 First
`Use In Commerce: 1950/00/00
`MILK, CREAM, CHEESE, ICE CREAM, OLEOMARGARINE, CHEESE
`SPREAD [ , AND DRY MILK POWDER ]
`
`Attachments
`
`77485529#TMSN.png( bytes )
`77485537#TMSN.png( bytes )
`77485550#TMSN.png( bytes )
`75194224#TMSN.png( bytes )
`Notice of Opposition SURESTART.pdf(1212222 bytes )
`
`Signature
`
`/s Steven E. Klein/
`
`Name
`
`Date
`
`Steven E. Klein
`
`07/29/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 79/191,289
`For the mark: SURESTART
`Filed: July 1, 2016
`Published: January 30, 2018
`
`SHURFINE FOODS, INC.,
`
`Opposer,
`
`v.
`
`FONTERRA TM LIMITED,
`
`Applicant.
`
`)
`) Opposition No. _______________
`)
`) NOTICE OF OPPOSITION
`)
`)
`)
`)
`)
`
`Shurfine Foods, Inc., an Illinois corporation having its principal place of business at 6700
`
`S.W. Sandburg Street, Tigard, Oregon 97223 (“Opposer”), believes that it will be damaged by
`
`registration of the mark SURESTART (“Applicant’s Mark”) that is the subject of U.S.
`
`Trademark Application Serial No. 79/191,289 (the “Application”) for
`
`Dietetic foods, drinks, substances, powders, beverages, supplemental drinks, meal replacements,
`vitamins, mineral supplements, and additives, none of which are used for veterinary animal
`healthcare, namely, infant formulas, powdered milk for babies and infants, and infant formulas
`adapted for medical use; dietetic substances, namely, powdered nutritional supplement drink
`mixes and concentrates, powdered milk for babies and infants, powdered meal replacement drink
`mixes adapted for medical use, meal replacement drinks adapted for medical use, dietary
`supplemental drinks in the nature of vitamin and mineral beverages adapted for medical use and
`infant formula; dietetic beverages, namely, supplemental drinks promoting healthy growth, bone
`health, muscle development, cognitive development, immunity development or allergy and
`digestive health; dietetic meal replacements, namely, powdered milk for babies and infants,
`drinks, and infant formula adapted for medical use; food for babies; food for infants; milk powder
`for babies; milk powder for infants; dietary supplements, intended to supplement a normal diet or
`to have health benefits; vitamins for human consumption; vitamin formulations for human
`consumption; mineral supplements for foodstuffs; nutritional additives, namely, food additives for
`use in the food and pharmaceutical industry as dietary supplements for humans in the nature of
`extracts derived from milk; nutritional supplements; nutritional cultures, namely, probiotic
`cultures; none of the foregoing for veterinary animal healthcare in Class 5; and
`
`Dairy based beverages; dairy based powders for making dairy-based food beverages and shakes;
`milk; milk products, excluding ice cream, ice milk and frozen yoghurt; milk powder; milk protein;
`cream, being a dairy product; butter; edible oils; edible fats; cheese; whey; yoghurt in Class 29.
`
`4835-8874-6606v.1 0106481-000002
`
`

`

`(“Applicant’s Goods”), filed July 1, 2016, by Fonterra TM Limited (“Applicant”), which is, on
`
`information and belief, a New Zealand limited liability company, having an address of 109
`
`Fanshawe Street, Auckland Central, Auckland 1010, New Zealand.
`
`As the grounds for opposition, Opposer alleges as follows:
`
`1.
`
`Opposer owns numerous trademarks including but not limited to SHURFINE ,
`
`, and SHURFRESH for various food products and ingredients (collectively, the
`
`“SHURFINE Marks”).
`
`2.
`
`Opposer is the owner of U.S. Trademark Registration No. 3557357 for the mark
`
`SHURFINE for, among other things, cheese; cream cheese; processed cheese; cheese spreads;
`
`cheese substitutes; mold-ripened cheese; soft cheese; white cheese; low-fat cheese; non-fat
`
`cheese; string cheese; yogurt; butter; butter substitutes; margarine; milk; evaporated milk;
`
`powdered milk in International Class 29, which mark has been in continuous use in U.S.
`
`commerce since at least as early as June 1, 2005. Said registration issued January 6, 2009 (based
`
`on an application filed May 28, 2008), is currently valid and subsisting, and has achieved
`
`incontestable status under 15 U.S.C. § 1065. A true and correct print-out from the USPTO’s
`
`Trademark Electronic Search System showing the current status and title of the above
`
`registration is attached hereto as Exhibit A.
`
`3.
`
`Opposer is the owner of U.S. Trademark Registration No. 3557358 for the mark
`
`SHURFINE for, among other things, macaroni and cheese; breakfast cereals; ready to eat,
`
`cereal derived food bars; hot cereal; ready to eat cereals; bread and pastry; muffins; biscuits;
`
`flavored and sweetened gelatins; instant pancake mixes; muffin mixes; stuffing mixes containing
`
`bread; flour for food; wheat flour; corn flour; sugar; brown sugar; powdered sugar; corn meal;
`
`gravies; meat gravies; rice; rice and seasoning mix combined in unitary packages; spaghetti
`
`4835-8874-6606v.1 0106481-000002
`
`2
`
`

`

`sauce; pancake syrup; maple syrup; cocoa powder; honey; waffles; gravy; gravy mixes; sauce
`
`mixes; dry seasoning mixes for gravy, spaghetti, stews, meatloaf and sloppy Joes; seasoned
`
`coating for meat, fish, and poultry in International Class 30, which mark has been in continuous
`
`use in U.S. commerce since at least as early as June 1, 2006. Said registration issued January 6,
`
`2009 (based on an application filed May 28, 2008), is currently valid and subsisting, and has
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`achieved incontestable status under 15 U.S.C. § 1065. A true and correct print-out from the
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`USPTO’s Trademark Electronic Search System showing the current status and title of the above
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`registration is attached hereto as Exhibit B.
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`4.
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`Opposer is the owner of U.S. Trademark Registration No. 3557360 for the mark
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`SHURFINE for, among other things, vegetable juices; apple-juice beverages; orange-juice
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`beverages; fruit juice; fruit drinks; fruit juice concentrates; and concentrates, syrups or powders
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`used in the preparation of drinks in International Class 32, which mark has been in continuous
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`use in U.S. commerce since at least as early as March 1, 2002. Said registration issued January
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`6, 2009 (based on an application filed May 28, 2008), is currently valid and subsisting, and has
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`achieved incontestable status under 15 U.S.C. § 1065. A true and correct print-out from the
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`USPTO’s Trademark Electronic Search System showing the current status and title of the above
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`registration is attached hereto as Exhibit C.
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`5.
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`Opposer is the owner of U.S. Trademark Registration No. 2170823 for the mark
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`for, among other things, jams, condensed milk, non-dairy creamer, cheese food, yogurt,
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`vegetable-based spreads in Class 29 and pudding mixes, flavored gelatin mixes, breakfast foods,
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`namely, waffles, pancakes, bagels, oatmeal, hot cereals, toaster pastries; gravy, gravy mixes,
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`spaghetti sauce mix, seasoning mixes, rice mixes in International Class 02, which mark has been
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`in continuous use in U.S. commerce since at least as early as August 31, 1995. Said registration
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`4835-8874-6606v.1 0106481-000002
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`3
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`

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`issued July 7, 1998 (based on an application filed November 6, 1996), is currently valid and
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`subsisting, and has achieved incontestable status under 15 U.S.C. § 1065. A true and correct
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`print-out from the USPTO’s Trademark Electronic Search System showing the current status and
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`title of the above registration is attached hereto as Exhibit D.
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`6.
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`Opposer is the owner of U.S. Trademark Registration No. 663880 for the mark
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`SHURFRESH for, among other things, milk, cream, cheese, and ice cream in Class 29, which
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`mark has been in continuous use in U.S. commerce since at least as early as December 31, 1950.
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`Said registration issued July 1, 1958 (based on an application filed January 18, 1957), is
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`currently valid and subsisting, and has achieved incontestable status under 15 U.S.C. § 1065. A
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`true and correct print-out from the USPTO’s Trademark Electronic Search System showing the
`
`current status and title of the above registration is attached hereto as Exhibit E.
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`7.
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`Opposer, since prior to Applicant’s filing date or any date of first use upon which
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`Applicant can rely, has used and not abandoned the SHURFINE Marks for a variety of food
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`products in Classes 29, 30 and 32.
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`8.
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`Prior to Applicant’s filing date or, on information and belief, any date of first use
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`upon which Applicant can rely, and as a result of Opposer’s longstanding use and promotion of
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`the SHURFINE Marks for goods in Classes 29, 30 and 32, the public has come to recognize
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`goods bearing the SHURFINE Marks as goods coming from a single source, namely, Opposer.
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`9.
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`The food products in Classes 29, 30 and 32 offered by Opposer under the
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`SHURFINE Marks and recited in Opposer’s Registrations Nos. 663880, 2170823, 3557357,
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`3557358, and 3557360 are identical, overlapping with and/or related to Applicant’s Goods.
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`4835-8874-6606v.1 0106481-000002
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`4
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`

`

`10.
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`Applicant’s Mark so resembles Opposer’s SHURFINE Marks as to be likely,
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`when used on or in connection with Applicant’s Goods, to cause confusion, mistake or to
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`deceive within the meaning of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
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`11.
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`Opposer will be damaged by the registration sought by Applicant insofar as
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`Applicant will obtain statutory rights in Applicant’s SURESTART mark in violation and
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`derogation of Opposer’s prior and superior rights in Opposer’s SHURFINE Marks.
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`12.
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`Based on the foregoing, registration of the SURESTART mark, as shown by U.S.
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`Trademark Application Serial No. 79/191,289 for Applicant’s Goods is likely to cause injury and
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`damage to Opposer.
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`WHEREFORE, Opposer respectfully requests that registration of the mark SURESTART
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`as shown by U.S. Trademark Application Serial No. 79/191,289, be denied under Section 2(d) of
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`the Lanham Act, 15 U.S.C. § 1052(d), and that this Notice of Opposition be sustained.
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`Dated: July 29, 2018.
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`Respectfully submitted,
`
`DAVIS WRIGHT TREMAINE LLP
`
`By:
`
` /s Steven E. Klein/
`Sheila Fox Morrison
`Steven E. Klein
`1300 S.W. 5th Avenue, Suite 2400
`Portland, Oregon 97201
`Phone: (503) 241-2300
`Fax: (503) 778-5299
`sheilafoxmorrison@dwt.com
`stevenklein@dwt.com
`
`Attorneys for Opposer Shurfine Foods, Inc.
`
`4835-8874-6606v.1 0106481-000002
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`5
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`7/29/2018
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`SHURFINE
`IC 029. US 046. G & S: Pre-packaged dinners consisting of primarily of meat, poultry and fish with pasta; cheese;
`cream cheese; processed cheese; cheese spreads; cheese substitutes; mold-ripened cheese; soft cheese; white
`cheese; low-fat cheese; non-fat cheese; string cheese; yogurt; butter; butter substitutes; margarine; vegetable-
`based spreads; Maraschino cherries; processed cherries; fruit-based pie filling; frozen fish; vegetable oils and fats;
`canned fish; canned oysters; chili with and without beans; beef stew; canned cooked meat; canned pork and
`beans; canned refried beans; canned beans; jerky; frozen meals consisting primarily of meat, poultry and/or
`vegetables; applesauce; canned fruits and vegetables; sauerkraut; dried fruits; canned fruits; frozen fruits; fruit-
`based snack foods; snack mix consisting primarily of processed fruits, processed nuts and/or raisins; instant
`potatoes; frozen potatoes; shortening; edible oils; edible fats; processed oils and fats; vegetable oils; non-dairy
`creamer; broth; bouillon; bouillon concentrates; vegetable protein bits having a bacon flavor; soups; canned
`soups; soup mixes; [ pickled fruits; ] pickled vegetables; processed olives; pickles; processed peppers; dried
`beans; frozen chicken; ham; bacon; luncheon meats; frankfurters; hot dogs; sausages; dried meat; canned
`tomatoes; vegetable juice for cooking; sour cream; [ sour cream substitutes; ] cottage cheese; half and half;
`whipping cream; peanut butter; fruit preserves; jellies; jams; marmalade; fruit-based spreads; whipped cream;
`whipped topping; milk; evaporated milk; powdered milk; dip; frozen vegetables; and dairy-based dips; processed
`nuts; raisins; potato chips; fruit-based snack food; frozen meals consisting primarily of potatoes. FIRST USE:
`20050601. FIRST USE IN COMMERCE: 20050601
`
`77485529
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`(4) STANDARD CHARACTER MARK
`
`Standard
`Characters
`Claimed
`Mark
`Drawing
`Code
`Serial
`Number
`Filing Date May 28, 2008
`Current
`1A
`Basis
`Original
`Filing Basis 1A
`Published for
`October 21, 2008
`Opposition
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:7z9935.3.1
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`NOTICE OF OPPOSITION
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`EXHIBIT A
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`1/2
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`Trademark Electronic Search System (TESS)
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`3557357
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`January 6, 2009
`
`7/29/2018
`Registration
`Number
`Registration
`Date
`Owner
`Attorney of
`Record
`Prior
`Registrations 0558657;0807575;1134376;AND OTHERS
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text SECT 15. SECT 8 (6-YR).
`Live/Dead
`LIVE
`Indicator
`
`(REGISTRANT) Shurfine