Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA922942
`09/19/2018
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Carbon Coco International Pty Ltd
`
`proprietary limited company
`
`Citizenship
`
`Australia
`
`38 Latitude Bvd
`Thomastown, VIC, 3074
`AUSTRALIA
`
`Bradley M. Stohry
`Reichel Stohry LLP
`212 West 10th Street
`Suite A-285
`Indianapolis, IN 46202
`UNITED STATES
`brad@rsindy.com
`317-423-8820
`
`Applicant Information
`
`Application No
`
`87387886
`
`Publication date
`
`08/21/2018
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`09/19/2018
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`09/20/2018
`
`NONE
`
`Cristian George, Anuta
`Str. Cibinului nr. 4,bl. A11,sc. D,ap 55
`PLOIESTI, PRAHOVA, 100377
`ROMANIA
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Tooth whitening preparation in the nature of
`activated charcoal
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`Other
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Applicant's filing/registration basis under Trade-
`mark Act Section 44(e) is invalid
`
`
`ESTTA922942
`09/19/2018
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Carbon Coco International Pty Ltd
`
`proprietary limited company
`
`Citizenship
`
`Australia
`
`38 Latitude Bvd
`Thomastown, VIC, 3074
`AUSTRALIA
`
`Bradley M. Stohry
`Reichel Stohry LLP
`212 West 10th Street
`Suite A-285
`Indianapolis, IN 46202
`UNITED STATES
`brad@rsindy.com
`317-423-8820
`
`Applicant Information
`
`Application No
`
`87387886
`
`Publication date
`
`08/21/2018
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`09/19/2018
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`09/20/2018
`
`NONE
`
`Cristian George, Anuta
`Str. Cibinului nr. 4,bl. A11,sc. D,ap 55
`PLOIESTI, PRAHOVA, 100377
`ROMANIA
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Tooth whitening preparation in the nature of
`activated charcoal
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`Other
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Applicant's filing/registration basis under Trade-
`mark Act Section 44(e) is invalid
`
`
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`87806486
`
`Application Date
`
`02/22/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`CARBON COCO
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2016/01/00 First Use In Commerce: 2016/02/03
`Toothpaste, teeth whitening preparations; teeth whitening preparations consist-
`ing of or including activated carbon; spearmint based organic oil pulling prepara-
`tions for oral hygiene, namely, non-medicated dental oils for rinsing the
`mouth;oil pulling products for oral hygiene, namely, non-medicated dental oils
`for rinsing the mouth; dentifrices
`Class 021. First use: First Use: 2016/01/00 First Use In Commerce: 2016/02/03
`Toothbrushes; toothpaste applicators; apparatus and instruments for applying
`toothpaste, oils or other teeth whitening products
`
`U.S. Application
`No.
`
`79217666
`
`Application Date
`
`06/14/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`03/20/2017
`
`Word Mark
`
`CARBON COCO NATURAL TEETH WHITENING ORIGINAL
`WWW.CARBONCOCO.COM
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a white single line circle displayed on a larger black circle.
`In the center of the single line circle appears the wording "CARBON COCO" in
`white between two blue horizontal lines. Above the top line appears the wording
`"www.carboncoco.com" in white. Beneaththe lower line appears the wording
`"NATURAL TEETH WHITENING" in white above a white single line rectangle
`with curved ends displaying the word "ORIGINAL" in white.
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Toothpaste, teeth whitening preparations; teeth whitening preparations consist-
`ing of or including activated carbon; spearmint based organic oil pulling prepara-
`tions for oral hygiene, namely, non-medicated dental oils for rinsing the
`mouth;oil pulling products for oral hygiene, namely, non-medicated dental oils
`for rinsing the mouth; dentifrices
`Class 021. First use: First Use: 0 First Use In Commerce: 0
`Toothbrushes; toothpaste applicators; apparatus and instruments for applying
`toothpaste, oils or other teeth whitening products
`
`U.S. Application
`No.
`
`79203007
`
`Application Date
`
`11/10/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`CARBON COCO
`
`Foreign Priority
`Date
`
`11/07/2016
`
`Description of
`
`NONE
`
`
`
`Mark
`
`Goods/Services
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Toothpaste, teeth whitening preparations; teeth whitening preparations consist-
`ing of or including activated carbon; spearmint based organic oil pulling prepara-
`tions for oral hygiene, namely, non-medicated dental oils for rinsing the
`mouth;oil pulling products for oral hygiene, namely, non-medicated dental oils
`for rinsing the mouth; dentifrices
`Class 021. First use: First Use: 0 First Use In Commerce: 0
`Toothbrushes; toothpaste applicators; apparatus and instruments for applying
`toothpaste, oils or other teeth whitening products
`
`Attachments
`
`87806486#TMSN.png( bytes )
`79217666#TMSN.png( bytes )
`79203007#TMSN.png( bytes )
`Notice of Opposition re COCO CARBON Trademark Application.pdf(149237
`bytes )
`
`Signature
`
`/bms/
`
`Name
`
`Date
`
`Bradley M. Stohry
`
`09/19/2018
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark App. Ser. Nos. 87387886
`For the mark COCO CARBON NATURAL TEETH WHITENING ORIGINAL (and Design)
`
`
`
`
`
`
`
`
`Carbon Coco International Pty Ltd,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
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`
`
` v.
`
`
`
`
`
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`
`
`Cristian George Anuta,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`Opposition No.:______________
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`
`
`Carbon Coco International Pty Ltd (“Opposer”) hereby opposes the above-referenced
`
`application to register the COCO CARBON NATURAL TEETH WHITENING ORIGINAL (and
`
`Design) mark filed by Cristian George Anuta (“Applicant”). The grounds for opposition are as
`
`follows:
`
`THE PARTIES
`
`1.
`
`Opposer is an Australian proprietary limited company with a place of business at
`
`38 Latitude Bvd., Thomastown, VIC 3074, Australia.
`
`2.
`
`Applicant is a Romanian citizen with an address at Str. Cibinului nr. 4,bl. A11,sc.
`
`D,ap 55 PLOIESTI, PRAHOVA ROMANIA 100377.
`
`OPPOSER AND ITS USE OF THE CARBON COCO MARK
`
`3.
`
`Opposer is in the business of selling toothpaste, tooth polish, teeth whitening
`
`preparations, and related dental care products.
`
`4.
`
`Opposer is the owner of substantial trademark rights in the CARBON COCO word
`
`mark, as well as the logo mark shown below (collectively, the “CARBON COCO Marks”), both
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`of which are used to promote Opposer’s dental care products.
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`
`
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`Opposer initially started using the CARBON COCO Marks outside of the United
`
`5.
`
`
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`States to promote its dental care products in January 2016.
`
`6.
`
`Opposer has been using the CARBON COCO Marks inside the United States to
`
`promote its dental care products since at least February 3, 2016.
`
`7.
`
`Since that time, Opposer has advertised its products under the CARBON COCO
`
`Marks extensively.
`
`8.
`
`As a result of Opposer’s promotional efforts, Opposer and its products have become
`
`quite popular both within and outside of the United States. Currently, Opposer has over 630,000
`
`Facebook followers and over 660,000 followers on Instagram.
`
`9.
`
`Since Opposer began using the CARBON COCO Marks, it has established valuable
`
`goodwill in the CARBON COCO Marks.
`
`10.
`
`As a result of Opposer’s extensive use of the CARBON COCO Marks, the
`
`CARBON COCO Marks have become valuable property of Opposer.
`
`APPLICANT AND ITS TRADEMARK APPLICATION
`
`11.
`
`
`Trademark App. Ser. No. 87387886 (the “Application”) was filed by Applicant for
`
`the following COCO CARBON logo mark (the “COCO CARBON” Mark”) on March 28, 2017.
`
`Page 2
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`
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`
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`12.
`
`The COCO CARBON Mark is a virtual copy of Opposer’s logo mark, as shown
`
`above. The only differences are: (1) Applicant switched the order of the words “CARBON” and
`
`“COCO”; and (2) Applicant’s logo mark does not display Opposer’s web address. Otherwise, the
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`COCO CARBON Mark and Opposer’s logo mark are identical.
`
`13.
`
`The similarities are not coincidental. Opposer copied Applicant’s logo and is
`
`attempting to reserve rights in its copied logo in various countries throughout the world.
`
`14.
`
`The Application is based on a Romanian registration for the COCO CARBON
`
`Mark (the “Romanian Registration”) pursuant to Trademark Act Section 44(e). The Application
`
`also claims a priority date of October 7, 2016, which is based on the filing date of the application
`
`that resulted in the Romanian Registration.
`
`15.
`
`The Application covers “tooth whitening preparation in the nature of activated
`
`charcoal” in Class 3. The Romanian Registration, on the other hand, covers “carbune activ.” in
`
`Class 1. The identification of goods used in the Romanian Registration roughly means “active
`
`coal” or “activated carbon.”
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`Page 3
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`
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`16.
`
`The Romanian Registration should not have progressed to registration as the grant
`
`of the registration is subject to an appeal of an opposition to grant that was filed by Opposer and
`
`that remains ongoing.
`
`APPLICANT’S USE AND REGISTRATION OF THE COCO CARBON MARK IS
`LIKEY TO CAUSE CONSUMER CONFUSION
`
`
`
`17.
`
`Opposer’s actual, continuous, and continuing use of the CARBON COCO Marks
`
`in commerce began well before the earliest priority date for the Application and/or before
`
`Applicant began using the COCO CARBON Mark.
`
`18.
`
`Applicant’s use and registration of the COCO CARBON Mark for the goods listed
`
`in the Application is likely to cause confusion, mistake, and/or lead to deception as to the origin
`
`of Applicant’s goods in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`19.
`
`The likelihood of confusion is apparent in this instance because the COCO
`
`CARBON Mark is virtually identical to Opposer’s CARBON COCO logo and the Application
`
`covers the same type of goods that Opposer provides under the CARBON COCO Marks.
`
`20.
`
`Applicant’s use and registration of the COCO CARBON Mark is likely to result in
`
`confusion and substantial damage and injury to Opposer. Persons familiar with Opposer’s
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`CARBON COCO Marks are likely to believe that Applicant’s goods originate with, or are
`
`licensed, sponsored or approved by Opposer. Any such confusion would inevitably result in loss
`
`of sales to Opposer, and/or damage the goodwill and reputation that Opposer has established in
`
`the CARBON COCO Marks.
`
`APPLICANT’S FRAUD IN FILING AND PROSECUTING THE APPLICATION
`
`
`
`21.
`
`Applicant made the following statement, sworn to under penalty of perjury, when
`
`filing the Application: “To the best of the signatory’s knowledge and belief, no other persons,
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`except, if applicable, concurrent users, have the right to use the mark in commerce, either in the
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`Page 4
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`
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`identical form or in such near resemblance as to be likely, when used on or in connection with the
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`goods/services of such other persons, to cause confusion or mistake, or to deceive.”
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`22.
`
`The foregoing statement constitutes a false representation made to the USPTO since
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`Applicant was aware of Opposer and its use of the virtually identical CARBON COCO Marks at
`
`the time that the Application was filed.
`
`23.
`
`Applicant also intentionally misled the USPTO when it submitted a copy of the
`
`certificate of registration for the Romanian Registration where Applicant knew that the grant of
`
`registration is subject to an appeal which remains ongoing.
`
`24.
`
`Because the USPTO would not have allowed the Application to proceed to
`
`publication if Applicant had not made the misrepresentation and the submitted the certificate of
`
`registration for the Romanian Registration, the misrepresentation and deceptive submission of the
`
`certificate were material.
`
`25.
`
`Applicant’s misrepresentation and deceptive submission of the certificate were
`
`done with the intent to deceive the USPTO so that Applicant could obtain a registration for the
`
`COCO CARBON Mark.
`
`26.
`
`Applicant’s material misrepresentation made in the Application and deceptive
`
`submission of a copy of the certificate of registration for the Romanian Registration constitute
`
`fraud on the Trademark Office.
`
`APPLICANT HAS NO VALID BASIS FOR OBTAINING REGISTRATION OF THE
`
`COCO CARBON MARK
`
`27.
`
`The Application relies upon the Romanian Registration as the sole basis for
`
`obtaining registration in the U.S.
`
`28.
`
`The Application covers “tooth whitening preparation in the nature of activated
`
`charcoal” in Class 3, while the Romanian Registration covers “activated carbon” in Class 1.
`
`Page 5
`
`
`
`29.
`
`The goods covered by the Application are entirely different types of products than
`
`the goods covered by the Romanian Registration. The goods referenced in the Application are
`
`teeth whitening preparations, such as toothpaste and other teeth whitening/cleaning products. The
`
`Romanian Registration, on the other hand, covers a chemical product that is used in other products
`
`or for industrial purposes.
`
`30.
`
`Because the identification of goods used in the U.S. Application well exceeds the
`
`scope of goods covered by the Romanian Application, Applicant cannot rely on the Romanian
`
`Registration as a basis to obtain registration of the COCO CARBON Mark under §44(e), nor can
`
`Applicant rely on the Romanian application that resulted in the Romanian Registration as a basis
`
`for a claim of priority under §44(d).
`
`31.
`
`Because the Romanian Registration should not have progressed to registration as
`
`the grant of the registration is subject to an appeal of an opposition to grant which is ongoing,
`
`Applicant cannot currently rely on the Romanian Registration as a basis to obtain registration of
`
`the COCO CARBON Mark under §44(e).
`
`
`
`WHEREFORE, Opposer prays that the Application be rejected on the grounds of
`
`likelihood of confusion, fraud on the Trademark Office, and/or lack of valid basis for obtaining
`
`registration.
`
`Dated this 19th day of September, 2018.
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`Respectfully submitted,
`
`By:
`
`
`
`
`
`
`
`
`
`/Bradley M. Stohry/
`Bradley M. Stohry
`REICHEL STOHRY LLP
`212 West 10th Street
`Suite A-285
`Indianapolis, Indiana 46202
`(317) 423-8820
`
`
`
`
`
`Page 6
`
`
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