Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA913149
`08/01/2018
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Terra Tech Corp.
`08/01/2018
`
`2040 MAIN ST., Suite 225
`IRVINE, CA 92614
`UNITED STATES
`
`Jonathan A. Hyman
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET, 14TH FLOOR
`Irvine, CA 92614
`UNITED STATES
`Email: efiling@knobbe.com, jonathan.hyman@knobbe.com
`Phone: 3105513450
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87618745
`08/01/2018
`
`Publication date
`Opposition Peri-
`od Ends
`
`04/03/2018
`08/01/2018
`
`Hao, Alvin
`PO Box 3194
`Palos Verdes Peninsula, CA 90274
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 2017/06/01 First Use In Commerce: 2017/06/01
`All goods and services in the class are opposed, namely: Essential oils; Fragrances
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act Section 2(d)
`Common law priority and likelihood of confusion
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4879473
`
`01/05/2016
`
`Word Mark
`
`BLÃ#M
`
`Application Date
`
`09/17/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2012/11/00 First Use In Commerce: 2012/11/00
`On-line journals, namely, blogs featuring information on medical marijuana;
`Providing a website featuring current events information about medical
`marijuana
`Class 044. First use: First Use: 2012/11/00 First Use In Commerce: 2012/11/00
`Providing medical, health, and wellnessinformation in the field of medicinal
`marijuana; providing an internet website featuring medical, health, and wellness
`news and information in the field of medicinal marijuana; Providing medical,
`health, and wellness information in the field of medical marijuana, and regarding
`medical marijuana dispensaries
`
`U.S. Application
`No.
`Registration Date
`
`87230672
`
`NONE
`
`Word Mark
`Design Mark
`
`BLÃ#M FANTASTIC
`
`Application Date
`
`11/08/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Topical analgesics; tinctures, namely, medicinal herb extracts; herbal anti-
`inflammatory salves; all of the foregoing containing hemp oils or extracts and
`CBD;Pharmaceutical preparations, namely, herbal sprays and oils containing
`cannabidiol (CBD) derived from industrial hemp in whole or significant part for
`relief of aches, pains, and anxiety; Medicated beverages; Medicated sodas;
`Medicated candy; Medicated chewing gum; Medicated confectionery; Medicinal
`drinks; Medicinal herb extracts; Medicinal herbal preparations; Medicinal herbs
`in dried or preserved form; Medicinal preparations for themouth to be applied in
`the form of drops, capsules, tablets and compressed tablets; Sweets for medi-
`cinal purposes; Balms for medical purposes; Herbal topical creams, gels, salves,
`sprays, powder, balms, liniment and ointments for the relief of aches and pain,
`none of the foregoing containing cannabis, hemp, industrialhemp, CBD, or can-
`
`

`

`nabidiol oil; Medicated beverages containing cannabidiol oil and CBD derived
`from industrial hemp; Medicated sodas containing cannabidiol oil and CBD de-
`rived from industrial hemp; Medicated candy containing cannabidiol oiland CBD
`derived from industrial hemp; Medicated chewing gum containing cannabidiol oil
`and CBD derived from industrial hemp; Medicated confectionery containingcan-
`nabidiol oil and CBD derived from industrial hemp; Medicinal drinks containing
`cannabidiol oil and CBD derived from industrial hemp; Medicinal herb ex-
`tractscontaining cannabidiol oil and CBD derived from industrial hemp; Medicinal
`herbal preparations containing cannabidiol oil and CBD derived from industrial
`hemp;Medicinal herbs in dried or preserved form containing cannabidiol oil and
`CBD derived from industrial hemp; Medicinal preparations for the mouth to be
`applied in the form of drops, capsules, tablets and compressed tablets contain-
`ing cannabidiol oil and CBD derived from industrial hemp; Sweets for medicinal
`purposes containing cannabidiol oil and CBD derivedfrom industrial hemp;
`Balms for medicalpurposes containing cannabidiol oil andCBD derived from in-
`dustrial hemp; Herbal topical creams, gels, salves, sprays, powder, balms, lini-
`ment and ointments for the relief of aches and pain containing cannabidiol oil
`and CBD derived from industrial hemp; Medicated beverages containing indus-
`trial hemp; Medicated sodas containing industrial hemp; Medicated candy con-
`taining industrial hemp; Medicated chewing gum containing industrial hemp;
`Medicated confectionery containing industrial hemp; Medicinal drinks containing
`industrial hemp; Medicinal herb extracts containing industrial hemp; Medicinal-
`herbal preparations containing industrial hemp; Medicinal herbs in dried or pre-
`served form containing industrial hemp; Medicinal preparations for the mouth to
`be applied in the form of drops, capsules, tablets and compressed tablets con-
`taining industrial hemp; Sweets for medicinal purposes containing industrial
`hemp; Balms for medical purposes containing industrial hemp; Herbal topical
`creams, gels, salves, sprays, powder, balms, liniment and ointments for the re-
`lief of aches and pain containing industrial hemp; Medicated beverages contain-
`ing cannabis; Medicated sodas containing cannabis; Medicated candy contain-
`ing cannabis; Medicated chewing gum containing cannabis; Medicated confec-
`tionery containing cannabis; Medicinal drinks containing cannabis; Medicinal
`herb extracts containing cannabis; Medicinal herbal preparations containing can-
`nabis; Medicinal herbs in driedor preserved form containing cannabis; Medicinal
`preparations for the mouth to be applied in the form of drops, capsules, tablets
`and compressed tablets containing cannabis; Sweets for medicinal purposes
`containing cannabis; Balms for medical purposes containing cannabis; Herb-
`altopical creams, gels, salves, sprays, powder, balms, liniment and ointments
`forthe relief of aches and pain containingcannabis; Medicated beverages con-
`taining hemp; Medicated sodas containing hemp;Medicated candy containing
`hemp; Medicated chewing gum containing hemp; Medicated confectionery con-
`taining hemp; Medicinal drinks containing hemp; Medicinal herb extracts con-
`taining hemp; Medicinal herbal preparations containing hemp; Medicinal herbs in
`dried or preserved form containing hemp; Medicinal preparations for the mouth
`to be applied in the form of drops, capsules, tablets and compressed tablets
`containing hemp; Sweets for medicinal purposes containing hemp; Balms for
`medical purposes containing hemp; Herbal topical creams, gels, salves, sprays,
`powder, balms, liniment and ointmentsfor the relief of aches and pain containing
`hemp; Medicated beverages containing CBD; Medicated sodas containing CBD;
`Medicated candy containing CBD; Medicatedchewing gum containing CBD;
`Medicated confectionery containing CBD; Medicinal drinks containing CBD;
`Medicinal herb extracts containing CBD; Medicinal herbal preparations contain-
`ing CBD; Medicinal herbs in dried or preserved form containing CBD; Medicinal
`preparations for the mouth to be applied in the form of drops, capsules, tablets
`and compressed tabletscontaining CBD; Sweets for medicinal purposes contain-
`ing CBD; Balms for medicalpurposes containing CBD; Herbal topicalcreams,
`gels, salves, sprays, powder, balms, liniment and ointments for the relief of
`aches and pain containing CBD; Topical analgesics, tinctures, namely, medicin-
`al herb extracts, herbal anti-inflammatory salves, Medicated beverages, Medic-
`ated sodas, Medicated candy, Medicated chewing gum, Medicated confection-
`
`

`

`ery, Medicinal drinks, Medicinal herb extracts,Medicinal herbal preparations,
`Medicinal herbs in dried or preserved form, Medicinal preparations for the mouth
`to be applied in the form of drops, capsules, tablets and compressed tablets,
`Sweets for medicinal purposes, Balms for medical purposes, Herbal topical
`creams, gels, salves, sprays, powder, balms, liniment and ointments for the re-
`lief of aches andpain, none of the foregoing containing cannabis, hemp, industri-
`al hemp, CBD, orcannabidiol oil
`Class 034. First use: First Use: 0 First Use In Commerce: 0
`Electronic vaporizer cartomizers being combination electronic cigarette refill
`cartridges sold empty and atomizers and refill liquid solutions containing CBD
`being chemical flavorings in liquid form used to refill electronic cigarette cart-
`ridges distributed as a unit; Electronicvaporizer cartomizers being combina-
`tionelectronic cigarette refill cartridges sold empty and atomizers and refill liquid
`solutions containing CBD derived fromindustrial hemp being chemical flavorings
`in liquid form used to refill electronic cigarette cartridges distributed as a unit;
`Electronic vaporizer cartomizersbeing combination electronic cigarette refill cart-
`ridges sold empty and atomizers and refill liquid solutions containing industrial
`hemp being chemical flavorings in liquid form used to refill electronic cigarette
`cartridges distributed asa unit; Electronic vaporizer cartomizers being combina-
`tion electronic cigaretterefill cartridges sold empty and atomizers and refill liquid
`solutions being chemical flavorings in liquid form used torefill electronic cigarette
`cartridges distributed as a unit not containing cannabis, hemp, industrial hemp,
`CBD, or cannabidiol oil
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`BLÃ#M
`medicinal cannabis information services, medicinal cannabis, dis-
`pensary services, horticulture services, clothing, hats, and other
`products and services, including goods, services and information
`
`Attachments
`
`86398076#TMSN.png( bytes )
`87230672#TMSN.png( bytes )
`TTCRP.106TISNotOpp28784768_1.pdf(37241 bytes )
`TTCRP.106TISNotOppExhibit1.pdf(164839 bytes )
`TTCRP.106TISNotOppExhibit2.pdf(31302 bytes )
`TTCRP.106TISNotOppExhibit3.pdf(1370881 bytes )
`
`Signature
`Name
`Date
`
`/jhh/
`Jonathan A. Hyman
`08/01/2018
`
`

`

`TTCRP.106TIS/TTCRP.106M
`
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No.:
`Serial No.: 87/618,745
`Mark: BLOOM TERPENES
`
`
`
` I
`
` hereby certify that this correspondence and all marked attachments are being
`deposited with the United States Patent and Trademark Office, Trademark Trial
`and Appeal Board via electronic filing through their website located at
`http://estta.uspto.gov/ on:
`
`August 1, 2018
`
` (Date)
` /jhh/
` Jonathan A. Hyman
`
`
`
`
`
`) ) ) ) ) ) ) ) ) )
`
`
`
`Terra Tech Corp.,
`
`
`
`
`Opposer,
`
`
`
`ALVIN HAO,
`
`
`
`Applicant.
`
`v.
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Dear Sir:
`
`
`
`Terra Tech Corp., a Nevada corporation with a principal address of 2040 Main Street,
`
`Suite 225, Irvine, California 92614 believes that it is or will be damaged by the registration of
`
`U.S. Trademark Application Serial No. 87/618,745 (“Applicant’s Application”) for the mark
`
`BLOOM TERPENES in International Class 3, filed by ALVIN HAO (“Applicant”), an individual
`
`with a mailing address of P.O. Box 3194, Palos Verdes Peninsula, CA 90274and therefore
`
`opposes the same.
`
`
`
`A description of Applicant’s Application is as follows:
`
`BLOOM TERPENES
`Mark:
`87/618,745
`Serial No.:
`Essential oils; Fragrances in Class 5
`Services:
`3
`Class:
`September 22, 2017
`Filed:
`Filing Basis: 1(a) – Use
`
`-1-
`
`

`

`Alleged Use
`Date:
`
`As grounds for opposition, it is alleged:
`
`June 1, 2017
`
`
`
`1.
`
`Terra Tech Corp. and its predecessors-in-interest and affiliated/related companies
`
`(hereinafter collectively referred to as "Opposer") are leaders in the medicinal cannabis and
`
`horticulture industries and offer a diverse portfolio of goods and services to consumers.
`
`Opposer’s strong reputation in the medicinal cannabis and horticulture industries is built on its
`
`exceptional reputation, including providing goods, services and information that are not barred
`
`by the Controlled Substances Act.
`
`2.
`
`Among the marks owned and used by Opposer is the mark BLÜM, which
`
`Opposer has extensively used in the United States since at least as early as 2010 in connection
`
`with medicinal cannabis information services, medicinal cannabis, dispensary services,
`
`horticulture services, clothing, hats, and other products and services, including goods, services
`
`and information that are not barred by the Controlled Substances Act (hereinafter the ("Opposer’s
`
`Goods and Services").
`
`3.
`
`Since prior to the filing date of Applicant’s Application and Applicant’s alleged
`
`date of first use, Opposer has spent considerable time, effort and money in developing its
`
`reputation under the BLÜM brand. As a result of this investment and the popularity and
`
`widespread commercial success of its goods and services, including its goods and services
`
`offered under the BLÜM brand, Opposer has developed a tremendous amount of goodwill and
`
`recognition in the BLÜM brand.
`
`4.
`
`Since prior to the filing date of Applicant’s Application and Applicant’s alleged
`
`-2-
`
`

`

`date of first use, Opposer has continuously used and promoted the BLÜM mark in United States
`
`interstate commerce in connection with Opposer business on an ever increasing scope of goods
`
`and services. By virtue of Opposer’s continuous and substantial use, the BLÜM mark has
`
`become an identifier of Opposer and its goods and services, and distinguishes Opposer’s Goods
`
`and Services from the goods and services of others. As a result, Opposer has built up, at great
`
`expense and effort, extensive and valuable goodwill in its BLÜM mark.
`
`5.
`
`6.
`
`Opposer’s BLÜM mark is pronounced BLOOM.
`
`Opposer owns United States Trademark Registration No. 4,879,473 for its mark
`
`BLÜM. A true and correct copy of a printout from the electronic database records of the PTO
`
`showing the current status and title of the registration, as well as true and correct copies of the
`
`Certificate of Registration are attached hereto as Exhibit 1.
`
`7.
`
`The registration relied upon herein by Opposer is valid, subsisting, unrevoked,
`
`and uncancelled. Opposer’s registration constitutes prima facie evidence of the validity of the
`
`registered mark, the registration thereof, and of Opposer’s ownership of the mark shown therein
`
`as provided in Section 33(a) of the Trademark Act. Opposer’s registration relied on herein
`
`constitutes constructive use of the BLÜM mark, conferring a right of priority nationwide in effect
`
`to Opposer, as of the filing date of the application therefore as provided in Section 7(c) of the
`
`Trademark Act. The filing date of Opposer’s registration and the date of actual first use of
`
`Opposer mark relied on herein are all prior to the filing date of Applicant’s Application.
`
`8.
`
`Opposer is the owner of and relies on U.S. Trademark Application Serial No.
`
`87/230,672 (the “’672 Application”) for the mark BLÜM for “Topical analgesics; tinctures,
`
`namely, medicinal herb extracts; herbal anti-inflammatory salves; all of the foregoing containing
`
`-3-
`
`

`

`hemp oils or extracts and CBD; Pharmaceutical preparations, namely, herbal sprays and oils
`
`containing cannabidiol (CBD) derived from industrial hemp in whole or significant part for relief
`
`of aches, pains, and anxiety; Medicated beverages; Medicated sodas; Medicated candy;
`
`Medicated chewing gum; Medicated confectionery; Medicinal drinks; Medicinal herb extracts;
`
`Medicinal herbal preparations; Medicinal herbs in dried or preserved form; Medicinal
`
`preparations for the mouth to be applied in the form of drops, capsules, tablets and compressed
`
`tablets; Sweets for medicinal purposes; Balms for medical purposes; Herbal topical creams, gels,
`
`salves, sprays, powder, balms, liniment and ointments for the relief of aches and pain, none of
`
`the foregoing containing cannabis, hemp, industrial hemp, CBD, or cannabidiol oil; Medicated
`
`beverages containing cannabidiol oil and CBD derived from industrial hemp; Medicated sodas
`
`containing cannabidiol oil and CBD derived from industrial hemp; Medicated candy containing
`
`cannabidiol oil and CBD derived from industrial hemp; Medicated chewing gum containing
`
`cannabidiol oil and CBD derived from industrial hemp; Medicated confectionery containing
`
`cannabidiol oil and CBD derived from industrial hemp; Medicinal drinks containing cannabidiol
`
`oil and CBD derived from industrial hemp; Medicinal herb extracts containing cannabidiol oil
`
`and CBD derived from industrial hemp; Medicinal herbal preparations containing cannabidiol oil
`
`and CBD derived from industrial hemp; Medicinal herbs in dried or preserved form containing
`
`cannabidiol oil and CBD derived from industrial hemp; Medicinal preparations for the mouth to
`
`be applied in the form of drops, capsules, tablets and compressed tablets containing cannabidiol
`
`oil and CBD derived from industrial hemp; Sweets for medicinal purposes containing
`
`cannabidiol oil and CBD derived from industrial hemp; Balms for medical purposes containing
`
`cannabidiol oil and CBD derived from industrial hemp; Herbal topical creams, gels, salves,
`
`sprays, powder, balms, liniment and ointments for the relief of aches and pain containing
`
`-4-
`
`

`

`cannabidiol oil and CBD derived from industrial hemp; Medicated beverages containing
`
`industrial hemp; Medicated sodas containing industrial hemp; Medicated candy containing
`
`industrial hemp; Medicated chewing gum containing industrial hemp; Medicated confectionery
`
`containing industrial hemp; Medicinal drinks containing industrial hemp; Medicinal herb
`
`extracts containing industrial hemp; Medicinal herbal preparations containing industrial hemp;
`
`Medicinal herbs in dried or preserved form containing industrial hemp; Medicinal preparations
`
`for the mouth to be applied in the form of drops, capsules, tablets and compressed tablets
`
`containing industrial hemp; Sweets for medicinal purposes containing industrial hemp; Balms for
`
`medical purposes containing industrial hemp; Herbal topical creams, gels, salves, sprays,
`
`powder, balms, liniment and ointments for the relief of aches and pain containing industrial
`
`hemp; Medicated beverages containing cannabis; Medicated sodas containing cannabis;
`
`Medicated candy containing cannabis; Medicated chewing gum containing cannabis; Medicated
`
`confectionery containing cannabis; Medicinal drinks containing cannabis; Medicinal herb
`
`extracts containing cannabis; Medicinal herbal preparations containing cannabis; Medicinal
`
`herbs in dried or preserved form containing cannabis; Medicinal preparations for the mouth to be
`
`applied in the form of drops, capsules, tablets and compressed tablets containing cannabis;
`
`Sweets for medicinal purposes containing cannabis; Balms for medical purposes containing
`
`cannabis; Herbal topical creams, gels, salves, sprays, powder, balms, liniment and ointments for
`
`the relief of aches and pain containing cannabis; Medicated beverages containing hemp;
`
`Medicated sodas containing hemp; Medicated candy containing hemp; Medicated chewing gum
`
`containing hemp; Medicated confectionery containing hemp; Medicinal drinks containing hemp;
`
`Medicinal herb extracts containing hemp; Medicinal herbal preparations containing hemp;
`
`Medicinal herbs in dried or preserved form containing hemp; Medicinal preparations for the
`
`-5-
`
`

`

`mouth to be applied in the form of drops, capsules, tablets and compressed tablets containing
`
`hemp; Sweets for medicinal purposes containing hemp; Balms for medical purposes containing
`
`hemp; Herbal topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the
`
`relief of aches and pain containing hemp; Medicated beverages containing CBD; Medicated
`
`sodas containing CBD; Medicated candy containing CBD; Medicated chewing gum containing
`
`CBD; Medicated confectionery containing CBD; Medicinal drinks containing CBD; Medicinal
`
`herb extracts containing CBD; Medicinal herbal preparations containing CBD; Medicinal herbs
`
`in dried or preserved form containing CBD; Medicinal preparations for the mouth to be applied
`
`in the form of drops, capsules, tablets and compressed tablets containing CBD; Sweets for
`
`medicinal purposes containing CBD; Balms for medical purposes containing CBD; Herbal
`
`topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches
`
`and pain containing CBD; Topical analgesics, tinctures, namely, medicinal herb extracts, herbal
`
`anti-inflammatory salves, Medicated beverages, Medicated sodas, Medicated candy, Medicated
`
`chewing gum, Medicated confectionery, Medicinal drinks, Medicinal herb extracts, Medicinal
`
`herbal preparations, Medicinal herbs in dried or preserved form, Medicinal preparations for the
`
`mouth to be applied in the form of drops, capsules, tablets and compressed tablets, Sweets for
`
`medicinal purposes, Balms for medical purposes, Herbal topical creams, gels, salves, sprays,
`
`powder, balms, liniment and ointments for the relief of aches and pain, none of the foregoing
`
`containing cannabis, hemp, industrial hemp, CBD, or cannabidiol oil,” in International Class 5,
`
`among other goods. The ’672 Application was filed on November 8, 2016. Thus, the filing date
`
`of the ’672 Application is prior to the filing date of Applicant’s Application and Applicant’s
`
`alleged first use date. Upon registration of the ’672 Application, Opposer will be the owner of
`
`and rely upon the United States registration maturing therefrom. This registration, once issued,
`
`-6-
`
`

`

`will constitute constructive use of the mark, conferring rights of priority, nationwide in effect, as
`
`of the filing date pursuant to § 7(c), as well as prima facie evidence of the validity of the
`
`registered mark and of the registration thereof, of Opposer’s ownership of the mark shown
`
`therein and/or of Opposer’s exclusive right to use the mark in commerce in connection with the
`
`services named therein, without condition or limitation as provided in Sections 7(b), 22 and
`
`33(a) of the Trademark Act of 1946 as amended. The ’672 Application was filed in the PTO
`
`prior to the filing date of Applicant’s Application and Applicant’s alleged first use date. In view
`
`of the virtually identical marks and related nature of the goods and services of the respective
`
`parties, it is alleged that Applicant’s mark so resembles the mark BLÜM as to be likely to cause
`
`confusion or to cause mistake or to deceive. A true and correct copy of a printout from the
`
`electronic database records of the PTO showing the current status and title of the application is
`
`attached hereto as Exhibit 2.
`
`9.
`
`In addition to the protection afforded to Opposer by the federal trademark
`
`registration and application, Opposer has extensive non-registered statutory and common law
`
`rights in the BLÜM mark throughout the United States. Opposer’s common law rights in the
`
`BLÜM mark predate the filing date of Applicant’s Application and Applicant’s alleged first use
`
`date. Opposer’s rights in the BLÜM mark are prior and superior to the filing date of Applicant’s
`
`Application and Applicant’s alleged first use date.
`
`10. Applicant operates in the cannabis industry under the mark BLOOM TERPENES
`
`and the mark shown in Applicant’s Application and on its website http://bloomterpenes.com/.
`
`See printout of http://bloomterpenes.com/ (visited August 1, 2018) attached as Exhibit 3.
`
`11. Applicant uses or intends to use the mark shown in Applicant’s Application in
`
`connection with cannabis and cannabis related goods and services.
`
`-7-
`
`

`

`12.
`
`Applicant did not use its BLOOM TERPENES mark prior to June 1, 2017.
`
`13. Opposer’s federal and common law rights in its BLÜM mark are prior to and
`
`superior to Applicant's filing date for Applicant’s Application.
`
`14.
`
`On information and belief, Applicant has applied for or obtained permits to sell
`
`cannabis products.
`
`15.
`
`On information and belief, Applicant operates or intends to operate in the same
`
`industries as Opposer.
`
`16.
`
`Applicant’s proposed goods and services include providing information in the
`
`fields of cannabis and medical marijuana.
`
`17.
`
`The BLOOM TERPENES mark covered under Applicant's Application is
`
`confusingly similar to Opposer’s well-known BLÜM mark. In addition, the goods covered in
`
`Applicant's Application are identical or highly related or related to and complimentary to
`
`Opposer’s Goods and Services on which Opposer uses the BLÜM mark. Moreover, the
`
`respective goods and services are marketed or will be marketed to the same consumers and
`
`potential consumers through similar channels of trade in the United States, its territories, and
`
`possessions.
`
`18.
`
`If Applicant is permitted to register the mark shown in Applicant’s Application,
`
`Applicant’s corresponding prima facie exclusive right to use the BLOOM TERPENES mark in
`
`nationwide commerce will conflict with Opposer’s lawful and prima facie and prior exclusive
`
`right to use the BLÜM mark nationwide
`
`19.
`
`Opposer will be damaged by the registration of Applicant's BLOOM TERPENES
`
`mark in that the BLOOM TERPENES mark so resembles Opposer’s BLÜM mark in which
`
`Opposer owns prior federal and common law trademark rights, as to be likely, when used on or
`
`-8-
`
`

`

`in connection with the services identified in the BLOOM TERPENES application, as to cause
`
`confusion, or to cause mistake or to deceive within the meaning of Section 2(d) of the Trademark
`
`Act, 15 U.S.C. § 1052(d).
`
`20.
`
`In view of Opposer’s prior rights in its BLÜM mark, Applicant is not entitled to
`
`registration of the BLOOM TERPENES mark in connection with identical or highly related
`
`services pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
`
`
`
`
`WHEREFORE, Opposer prays that U.S. Trademark Application Serial No. 87/618,745 be
`
`rejected and stricken, that no registration be issued thereon to Applicant, and that this opposition
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`be sustained in favor of Opposer.
`
`Please charge Deposit Account No. 11-1410 to cover any deficiencies in the opposition fee
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`and any additional fees which may be required, or credit any overpayment to this account.
`
`
`
`
`Dated: August 1, 2018
`
`
`
`
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`
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`28784768
`
`
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`
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`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: /jhh/
`
`Jonathan A. Hyman
`
`2040 Main Street, Fourteenth Floor
`
`Irvine, CA 92614
`
`(310) 551-3450
`
`efiling@knobbe.com
`Attorneys for Opposer, Terra Tech Corp.
`
`
`-9-
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Generated on: This page was generated by TSDR on 2018-08-01 19:49:34 EDT
`
`Mark: BLÜM
`
`US Serial Number: 86398076
`
`US Registration
`Number:
`
`4879473
`
`Register: Principal
`
`Mark Type: Service Mark
`
`Application Filing
`Date:
`
`Sep. 17, 2014
`
`Registration Date: Jan. 05, 2016
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Jan. 05, 2016
`
`Publication Date: Oct. 20, 2015
`
` 
`
`Mark Literal
`Elements:
`
`BLÜM
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: On-line journals, namely, blogs featuring information on medical marijuana; Providing a website featuring current events information
`about medical marijuana
`
`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Nov. 2012
`
`U.S Class(es): 100, 101, 107
`
`Use in Commerce: Nov. 2012
`
`For: Providing medical, health, and wellness information in the field of medicinal marijuana; providing an internet website featuring medical,
`health, and wellness news and information in the field of medicinal marijuana; Providing medical, health, and wellness information in
`the field of medical marijuana, and regarding medical marijuana dispensaries
`
`International
`Class(es):
`
`044 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Nov. 2012
`
`U.S Class(es): 100, 101
`
`Use in Commerce: Nov. 2012
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`

`

`Current Owner(s) Information
`
`Owner Name: Terra Tech Corp.
`
`Owner Address: 2040 Main Street, Suite 225
`Irvine, CALIFORNIA 92614
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CALIFORNIA
`
`Attorney/Correspondence Information
`
`Attorney Name: Jonathan A. Hyman
`
`Attorney Primary
`Email Address:
`
`efiling@knobbe.com
`
`Correspondent
`Name/Address:
`
`JONATHAN A. HYMAN
`KNOBBE MARTENS OLSON & BEAR, LLP
`2040 MAIN ST FL 14
`IRVINE, CALIFORNIA 92614-8214
`UNITED STATES
`
`Attorney of Record
`
`Docket Number: TTCRP.007T
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone: 310-551-3450
`
`Fax: 949-760-9502
`
`Correspondent e-
`mail:
`
`efiling@knobbe.com
`jonathan.hyman@knobbe.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Jun. 15, 2017
`Jun. 15, 2017
`Jun. 14, 2017
`Jan. 05, 2016
`Oct. 20, 2015
`Oct. 20, 2015
`Sep. 30, 2015
`Sep. 16, 2015
`Sep. 14, 2015
`Aug. 20, 2015
`Jul. 21, 2015
`Jul. 20, 2015
`Jul. 20, 2015
`Jan. 20, 2015
`Jan. 20, 2015
`Jan. 20, 2015
`Dec. 31, 2014
`Dec. 30, 2014
`Sep. 25, 2014
`Sep. 20, 2014
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`COUNTERCLAIM OPP. NO. 999999
`REGISTERED-PRINCIPAL REGISTER
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`ASSIGNED TO LIE
`APPROVED FOR PUB - PRINCIPAL REGISTER
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jan. 05, 2016
`
`Proceedings
`
`Proceeding
`Number
`
`88888
`
`232561
`
`68171
`68171
`
`88889
`88889
`
`6325
`6325
`82107
`82107
`85330
`
`

`

`Summary
`
`Number of
`Proceedings:
`
`8
`
`Proceeding
`Number:
`
`91241301
`
`Status: Pending
`
`Interlocutory
`Attorney:
`
`ELIZABETH WINTER
`
`Type of Proceeding: Opposition
`Filing Date: May 17, 2018
`
` 
`
`Status Date: May 17, 2018
`
`Name: Promotorzy Trading Spolka z o.o. Spólka komandytowa
`
`Correspondent
`Address:
`
`KANCELARIA PATENTOWA ANETA BALWIERZ-MICH
`KARD WYSZYNSKIEGO 3/5
`KOSZALIN , PL-75-062
`POLAND
`
`Defendant
`
`Associated marks
`
`Mark
`
`Application Status
`
`THE BLUM FLAVOUR EXPERIENCE ENJOY THE FLAVOUR!
`
`Opposition Pending
`
`Plaintiff(s)
`
`Name: Terra Tech Corp.
`
`Serial
`Number
`
`79208853
`
`Registration
`Number
`
`Correspondent
`Address:
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`BLÜM
`
`Entry Number
`
`1
`2
`3
`4
`
`JASON ZEDECK
`LAW OFFICE OF JASON ZEDECK
`PO BOX 35210
`LOS ANGELES CA , 90035-0210
`UNITED STATES
`
`jason@zedecklaw.com
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`Registered
`
`86398076
`
`4879473
`
`Prosecution History
`
`History Text
`FILED AND FEE
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`PENDING, INSTITUTED
`NOTICE OF DEFAULT
`
`Date
`
`May 17, 2018
`May 22, 2018
`May 22, 2018
`Jul 11, 2018
`
`Due Date
`
`Jul 01, 2018
`
`Proceeding
`Number:
`
`91237887
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`MIKE WEBSTER
`
`Name: UME, LLC
`
`Type of Proceeding: Opposition
`Filing Date: Nov 01, 2017
`
`Status Date: Feb 27, 2018
`
`Defendant
`
`Correspondent
`Address:
`
`JOSE C