Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA943699
`12/24/2018
`
`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
`
`Der Grune Punkt-Duales System Deutschland GmbH
`12/26/2018
`
`Frankfurter Strasse 720-726
`Cologne,, 51145
`GERMANY
`
`Jeffrey H. Kaufman
`Muncy, Geissler, Olds & Lowe, P.C.
`4000 Legato Road, Suite 310
`Fairfax, VA 22033
`UNITED STATES
`jhk@mg-ip.com, mailroom@mg-ip.com
`703-649-3800
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87831412
`12/24/2018
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/28/2018
`12/26/2018
`
`Sheila Tooks
`1148 Redan Station
`Stone Mountain, GA 30088
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Disposable slippers
`
`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.
`Registration Date
`
`5543611
`
`08/21/2018
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/27/2017
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of an unshaded stylized arrow and a shaded stylized arrow
`forming a circle.
`Class 001. First use: First Use: 0 First Use In Commerce: 0
`Etching mordants
`Class 002. First use: First Use: 0 First Use In Commerce: 0
`Paints, varnishes, lacquers; rust and wood preservatives in the nature of a coat-
`ing against rust and wood deterioration; dyestuffs; mordant dyes; raw natural
`resins; metal in foil and powder form foruse in painting, decorating, printing and
`art
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Bleaching preparations and other substances in the nature of laundry deter-
`gent,commercial laundry detergent, biological laundry detergent, liquid laundry
`detergent, powder laundry detergent, laundryballs containing laundry detergent,
`laundry soaps, laundry detergent for household cleaning use, soaps for laundry
`use,liquid soaps for laundry use; cleaning,polishing, scouring and abrasive pre-
`parations; non-medicated soaps; perfumery, essential oils, cosmetics in the
`nature of perfumery, hair lotions; dentifrices;sponges impregnated with cleaning
`preparations
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Medicated soaps; sponges impregnated with antiseptics
`Class 006. First use: First Use: 0 First Use In Commerce: 0
`Common metals and their alloys; metallic building materials, namely, metal ceil-
`ing boards and floor boards; transportable buildings of metal; materials of metal
`for railway tracks; non-electrical metallic cables and wires; metallic ironmongery
`and locksmithing articles, namely, door handles of metal; pipes of metal; safes;
`goods of metal included in this class, namely, metal siding, metal safes, metal
`ropes; metal ores; metal door frames; Aluminum, aluminum wire, aluminum foil,
`binding bands of metal, bands of metal for tying-up purposes, clips of metalfor
`cables and pipes, binding thread ofmetal in the nature of wire of common metal
`for agricultural purposes, thread of metal in the nature of wire of common metal
`for tying-up purposes, cermet, boxes of common metal, box fasteners of metal,
`wire of common metal, wire of commonmetal alloys, except fuse wire, wire cloth,
`wire gauze, flanges of metal, namely, collars, bottle caps of metal, capsules of
`metal for bottles, namely, bottle caps of metal, sealing caps of metal forbottles,
`
`

`

`bottle closures of metal, bottle fasteners of metal, foils of metal for wrapping and
`packaging, ores of metal,unwrought and semi-wrought common metals, un-
`wrought and semi-wrought cast iron,unwrought or semi-wrought steel, un-
`wrought and semi-wrought lead, unwrought andsemi-wrought iron, unwrought
`and semi-wrought copper, unwrought or semi-wroughtbrass, tinplate packings,
`industrial packaging containers of metal sealing capsof metal
`Class 007. First use: First Use: 0 First Use In Commerce: 0
`Automatic vending machines; brushes forvacuum cleaners
`Class 008. First use: First Use: 0 First Use In Commerce: 0
`Manually operated hand tools, namely, hand-operated tools and implements for
`treatment of materials, and for construction, repair and maintenance in the
`natureof adjustable spanners, hand tools, namely, adjustable wrenches, Annular
`screw plates, Bit drivers for hand tools, Clamps for carpenters or coopers, Dies
`beinghand tools, Flexible head spanners, non-electric flexible screwdrivers,
`Hand-operated riveting tools, Hex tools in the nature of hex keys, Hand-oper-
`ated wrenches, non-electric miniature screwdrivers,hand tools, namely, nut
`drivers, hand operated tools, namely, monkey wrenches, Pipe wrenches, non-
`electric precision screwdrivers, hand tools, namely, ratchet wrenches, Ring
`spanners, hand tools, namely, riveting hammers and riveters, handoperated
`tools, namely, screw extractors, hand tools, namely, screw extractors in the
`nature of screw stocks and Screwdrivers, Screwdriver bits for hand operated
`screwdrivers, hand tools, namely, socket sets, non-electric screwdrivers, hand
`operated tools, namely, socket spanners and socket wrenches, Spark plug sock-
`ets being hand tools, hand-operated stapling guns not for surgical or stationery
`use, hand operated tackers in the nature of hand powered staple guns, hand op-
`erated tap ratchet wrenches, hand operated tap wrenches, hand operated
`torque spanners, Tommy bars, hand operated torque wrenches, hand-operated
`wrenches; hand-operated implements included in this class for household and
`horticultural purposes as well as for treatment of metals, wood, paper, textile
`products, products madefrom plastic and building materials, namely, hand-
`operated shears, saws; cutlery, namely, knives, forks and spoons; side arms,
`not including firearms, namely, hunting knives; razors; wallpaper brushes
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Scientific apparatus and instruments, namely, ultra-high vacuum chambers; dis-
`tillation apparatus for scientific purposes; optical mirrors; optical tables; scientific
`apparatus and instruments, namely, fluid handling device used for disposable
`bioprocessing applications and partsand fittings therefor; scientific apparatus,
`namely, cellular mixed ester membranes for use in the science and re-
`searchindustry; Microplate readers; Scientific and medical instruments and ap-
`paratus,namely, medical laboratory research instruments for detecting patho-
`gens, DNA analysis, thermal imaging; Scientific instrumentation for measuring
`weight, chemical levels in water, and presence of chemical substances, not for
`medical use; Ionization apparatus for scientific or laboratory use, not for the
`treatment of air or water; Filters used in scientific and forensic apparatus in drug
`detection processes; Scientific apparatus and instruments, namely, chromato-
`graphy columns for use in purification in the laboratory and parts and fittings
`therefor; Scientific apparatus for use with membrane filtration, namely, water fil-
`ter controllers and computer software for detecting and measuring water quality;
`Scientific and technical apparatus, namely, optical mirrors; Scientific apparatus,
`namely, sensing and signaling devices for measurement and quality control of
`materials processing by laser; Drying ovens for laboratory use; heating apparat-
`us, namely, Drying ovens for laboratory use; Laboratory apparatus and instru-
`ments for the exchange of substances and heat; Ionizationapparatus for scientif-
`ic or laboratory use; Scientific apparatus and instruments for measuring relative
`DNA, RNA and protein and parts and fittings therefor; Scientific apparatus,
`namely, spectrophotometer for measuring relative DNA, RNA and protein A; Sci-
`entific apparatus, namely, spectrometers and parts and fittingstherefor; Micro-
`plate readers in the nature of a scientific apparatus for collecting data from
`
`

`

`laboratory samples that have been deposited on flat plates with multiple wells
`known as microplates; nautical apparatus and instruments, namely, underwater
`housings for cameras, underwater enclosures for cameras and underwater en-
`closures for photographic lenses; remotely-controlled sub-aquatic video camera
`containing a TV camera, transmitter, receiver and microphone to record, detect,
`measure, survey and locate objects underwater; Magnetic compasses for sur-
`veying; photographic apparatus and instruments, namely, lenses for photo-
`graphic apparatus, cases for photographic apparatus,photographic cameras,
`Drying apparatus for photographic prints, enclosures for cameras; cinemato-
`graphic apparatus and instruments, namely, video cameras, Clapperboards; op-
`tical apparatus and instruments, namely, optical ports for underwater photo-
`graphy, dome ports for underwaterphotography, wet diopters, adapter lenses for
`underwater photography; weighing apparatus and instruments, namely, weigh-
`ing machines; measuring apparatus and instruments, namely, digitizers; sig-
`nalingapparatus and instruments, namely, traffic light apparatus; checking ap-
`paratus and instruments for supervisory purposes, namely, apparatus for check-
`ing flight parameters; Control systems for airport baggage handling systems,
`consisting of a single or multiple programmable controllers (PLC) with input and
`output features for digital devices, with capability of being connected to external
`supervisory computers; emergency apparatus and instruments for life-saving
`purposes, namely, emergency eyewash stations; emergency button in the
`nature of an electronic personal emergency response system consisting of a
`device worn on the body with a button that users push to notify others in the
`event of an emergency, and a remote unit that dials out on the telephone for
`help; emergency signal transmitters; Emergency auto kits comprised of a battery
`charger and a hand held spotlight;Fire alarm and emergency evacuation
`devices, namely, fire alarm control panels,smoke detectors, heat detectors,
`alarm pull stations, audible and visible notification appliances, strobes, sirens,
`bells, horns, and speakers; Emergency warning lights; life-saving and teaching
`apparatus and instruments, namely, artificial limbs for medical instruction pur-
`poses; teaching apparatus in the nature of a guard that is attached to the body
`of a woodwind instrument for music instruction; electric apparatus and instru-
`ments included in this class, namely, electric navigation instruments; apparatus
`for recording, transmitting and reproducing sound and images; magnetic record-
`ing media in the nature of blank recordable DVDs, sound recording disks in the
`nature of blank recordable optical discs; audio books in the nature of novels;
`typeface fonts recorded on magnetic media; mechanisms for coin-operated ap-
`paratus; cash registers, calculating machines, data processing equipment and
`computer equipment inthe nature of computer peripheral equipment; fire extin-
`guishers; eyeglass frames; clothing for protection against accidents, irradiation
`and fire
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Surgical gowns
`Class 011. First use: First Use: 0 First Use In Commerce: 0
`Apparatus for lighting in the nature oflighting installations, vehicle lighting install-
`ations, oven gas igniters, solar powered all weather lights, room lighting installa-
`tions, apparatus for floor heating, apparatus for steam generating in the nature
`of a steam generator, steamgenerating apparatus, steam generating installa-
`tions, steam boilers in the nature of heating boilers, filters for use with apparatus
`for steam generating, apparatus for cooking in the nature of a cooktop, kitchen
`bread baking machine, smoke generating apparatus for cooking in the nature of
`a barbecue smoker, steam generating apparatus for cooking in the nature of
`electric food steamers, appliances for cooking foodstuff in the nature ofelectric
`griddles, apparatus for refrigerating in the nature of a refrigerator;apparatus for
`drying in the nature of aclothes dryers, drying apparatus for chemical pro-
`cessing, apparatus for drying hair in the nature of hair dryers, electric hand dry-
`ing apparatus for washrooms,appliances for drying hair in the nature of hair dry-
`ers, apparatus for ventilating in the nature of a ventilating exhaust fan, apparatus
`for water supply in the nature of a water purification installation, filter apparatus
`
`

`

`for water supplyinstallations in the nature of a water filtering apparatus, and ap-
`paratus for sanitary purposes in the nature of a steam room installation
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`Bicycle frames; surveying apparatus andinstruments, namely, drones; sun blind-
`sadapted for automobiles
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Paper, cardboard and goods made thereofincluded in this class in the nature
`ofpaper ribbons; printer's goods, namely,galley racks; bookbinding material;
`photographs; stationery; adhesives for stationery or household purposes; artists'
`supplies, namely, pens; paintbrushes; typewriters and office articles except fur-
`niture in the nature of paper weights; printed instructional and teaching material,
`not including apparatuses, in the field of music; plastic materials for packaging
`included in this class, namely, plastic film; printers' type; printing blocks; garbage
`bags of paper or of plastic,stationery stickers, advertising pamphlets, office re-
`quisites in the nature of staplers, not including fur, plastic cling film, extensible,
`for palletization, bottle envelopes of paper or cardboard, bottle wrappers of pa-
`per or cardboard, plastic film for wrapping, sheets of reclaimed cellulose for
`wrapping, stuffing of paper or cardboard, stationery envelopes, paper coffee fil-
`ters, adhesive bandsfor stationery or household purposes, plastic bubble packs
`for wrapping or packaging, paper, paper filtering materials in the nature of paper
`coffee filters, table napkins of paper, handkerchiefs of paper, conical paper
`bags, cardboard, table linen of paper, toilet paper, stationery paper transparen-
`cies, bags, namely,envelopes and pouches of paper or plastics for packaging,
`cardboard packaging material made of starches, wrapping paper, cardboard art-
`icles in the nature of cardboard packaging, absorbent sheets of paper or plastic
`for foodstuff packaging,tablecloths of paper
`Class 018. First use: First Use: 0 First Use In Commerce: 0
`Pet clothing; umbrellas made of textiles
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`Furniture, mirrors, picture frames; goods included in this class of wood,
`cork,reed, cane, wicker, shell, amber, mother-of-pearl, meerschaum and substi-
`tutes for all these materials, or of plastics, namely, drawer pulls of plastic or
`wood,cord, reed, cane, wicker, shell, amber,mother-of-pearl, meerschaum, and
`substitutes for all these materials; fabric window blinds
`Class 021. First use: First Use: 0 First Use In Commerce: 0
`Household and kitchen utensils, namely,serving spoon, small hand operated
`nonelectric apparatus for mincing, grinding,garlic pressing and household and
`kitchen containers, all of the foregoing being neither of precious metal nor
`coated therewith; combs and cleaning sponges; brushes except paintbrushes,
`namely, cleaning brushes for barbeque grills, manual and electric toothbrushes,
`toilet brushes, feather duster; brush making materials; cleaning materials,
`namely, cleaning cloths, pails; broom; scrubbing brush; shaving brushes, dust-
`ing brushes; steel wool; unworked or semi worked glass, except glass used in
`building; beverage glassware, porcelain mugs and earthenware saucepans in-
`cluded in this class
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`Woven fabrics and textiles included in this class, namely, textile fabrics for the
`manufacture of clothing, woven fabric cloths, curtains, household linen, table lin-
`en, bed linen, cushion cover, towels, bath towel, textile handkerchiefs, sleeping
`bags, sheeting in the nature of bed sheets, tapestries of textile, textile wall
`hangings, textile dry goods, namely, woven fabrics of yarn and threads, woven
`fabrics of cotton strings, woven fabrics of cotton cords, woven fabrics ofknitting
`wool; woven hemp cloth, woven cloth pennants, tablecloth made of linenand
`lace; bed and plastic table covers
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Clothing, namely, shirts, shorts, pants; footwear; headwear
`
`

`

`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Playing cards
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat, fish, poultry and game, not live;meat extracts; preserved, dried and
`cooked fruit and vegetables; jellies, jams,compotes; eggs, milk and dairy
`productsbeing cream; edible salad oils and fats
`Class 030. First use: First Use: 0 First Use In Commerce: 0
`Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and prepara-
`tions made from cereals in the nature of cereal bars, wheat flour, breakfast cer-
`eals, namely, cornflakes and oatmeal, rye flour, noodles; processed semolina;
`breadcrumbs, bread, pastry and confectionery made of sugar, edible ice
`cream;honey, treacle; yeast, baking powder; salt; mustard; vinegar, sauces in
`the nature of condiments; spices; ice for refreshment
`Class 032. First use: First Use: 0 First Use In Commerce: 0
`Beers; mineral and aerated waters and other non-alcoholic fruit juice beverages;
`fruit beverages and fruit juices; syrups and other preparations for making bever-
`ages, namely, fruit drinks, mixed fruit drinks, powder for making fruit juices, ef-
`fervescent tablet concentrates for making fruit drinks
`Class 037. First use: First Use: 0 First Use In Commerce: 0
`Waste disposal by chemical, physical and biological processes, namely, waste
`cleaning services
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Transport of goods; packaging and storage of goods
`Class 040. First use: First Use: 0 First Use In Commerce: 0
`Processing of materials in the nature of waste processing; recycling of pack-
`aging materials; waste disposal by chemical, physical and biological processes,
`namely, destruction of waste
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Computer programming
`
`U.S. Registration
`No.
`Registration Date
`
`2013156
`
`11/05/1996
`
`Word Mark
`
`NONE
`
`Application Date
`
`03/20/1995
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 002. First use: First Use: 0 First Use In Commerce: 0
`paints, namely artistic paints, [ interior, exterior and household paint for commer-
`cial and domestic use; ] varnishes, [ lacquers * in the nature of a coating;and *
`wood preservatives and rust [ preservatives ] * preventatives* in the nature of a
`coating ]
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`[ detergents, namely automatic dishwashing, dish and laundry; detergent soap;
`laundry bleach; cleaners for use on glass, masonry, wood, plastic and porcelain;
`cleaning preparations for all purposes, including industrial cleaning; ] pol-
`ish,namely chrome, floor, furniture, shoe and nails; perfume; perfume oils; es-
`sential oils for personal use or for use in air fresheners; products for body and
`beauty care, namely toilet soaps, [ deodorants, shaving cream, ] after-shave lo-
`tion, shampoo, hair mousse, hair spray, [ sunscreen, ] skin and body lotion;
`toothpaste
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`[ pharmaceutical and veterinary pharmaceutical products, namely antibiotics,
`anti-depressants, anti-inflammatories, decongestants, anti-depressants, hydro-
`cortisone and muscle relaxants; veterinary vaccines for horses, cattle, sheep,
`cats and dogs; health care preparations, namely cough syrup, dental rinses,
`medicated skin preparations; dietary products for children and the infirm, namely
`infant formula, laxatives, or dietary drink mix for use as a meal replacement;
`medical plasters; surgical bandages and bandages for skin wounds ]
`Class 006. First use: First Use: 0 First Use In Commerce: 0
`[ metal pipe fittings ]
`Class 008. First use: First Use: 0 First Use In Commerce: 0
`[ manually operated tools, namely hammers, shovels, axes, wrenches, screw-
`drivers, shears, and metal vises; and ] table cutlery, namely forks, spoons, and
`knives
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`electric household equipment, namely irons, [ vacuum cleaners; equipment for
`recording, transmitting, and reproducing sound and pictures, namely video cam-
`
`

`

`eras,video recorders, audio cassette recorders, ] compact disc players, audio re-
`ceivers [ and televisions; magnetic recording media, namely blank and pre-
`recorded video tape featuring movies, fitness videos, documentaries, sports pro-
`grams, educational topics, and other topics of public interest, and blank and pre-
`recorded audio tape featuring music; phonograph records featuring music; data
`processing equipment and computers, namely personalcomputers, printers, mo-
`dems, scanners, ] CD-ROM drives and calculators
`Class 011. First use: First Use: 0 First Use In Commerce: 0
`electric coffee makers for commercial and domestic use; and electric toasters
`Class 012. First use: First Use: 0 First Use In Commerce: 0
`[ manually and machine operated apparatus and equipment for transporting
`waste and secondary raw materials, namely handtrucks, fork lifts, and motorized
`cartsfor transporting recyclable packaging material made from glass, paper,
`cardboard, aluminum, plastic, and composites of paper, plastic, cardboard, and
`aluminum ]
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`paper, namely [ computer, copy, newsprint, ] wrapping; [ cardboard; ] products
`made of paper and cardboard, namely towels, [ table napkins, and handker-
`chiefs; packaging and packaging materials of paper and cardboard, namely
`blister cards and plastic bubble packs for wrapping andpackaging; ] printed
`products, namely [newspapers, magazines featuring sports,fashion, news, en-
`tertainment, hobbies, and other topics of general interest, maps, calendars, ]
`greeting cards, art prints, [ catalogues featuring electronics,sporting goods,
`clothing, home furnishings, pet supplies, and other items of general interest, and
`tickets; stationery for commercial and household use; adhesives for paper and
`stationery; packaging and wrapping materials made of plastic, namely covers,
`bags and foil containers ]
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`timber products, namely [ boxes, crates, ] artistic and decorative figurines,
`[busts, ] sculptures; plastic goods, namely boxes, crates
`Class 021. First use: First Use: 0 First Use In Commerce: 0
`small, manually operated devices and utensils for household and kitchen use,
`namely graters, [ non-electric juicers, ] bottle openers, pepper mills, cooking
`utensils, namely pots, pans, [ bakeware ] (not toys), strainers, and colanders, all
`for household use, corkscrews, [ fly-swatters, citrus squeezers, ] non-electric
`toothbrushes and whisks; [ containers for household or kitchen use, not made of
`metal or plated with precious metal; ]combs for hair; [ scouring pads and
`sponges for household use; ] brushes for [ clothes, ] cosmetics, [ dishwashing,
`fireplace, floor, shoe, ] toilet and not including paint brushes; artistic objects
`made of glass, procelain, and stoneware,namely figurines, busts, * and * sculp-
`tures; goods for household and kitchen made of glass, porcelain and stoneware,
`namely salad bowls, candlesticks, [ wine baskets, cruet stands for oil, flower
`pots, and salt shakers; packaging materialsof glass, namely bottles sold empty; ]
`and serving utensils, namely serving spoons and serving forks
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`textile products, namely textile fabricmade of cotton, polyester, nylon, woolen for
`men's, women's and children's clothing; household linen; tablecloths not of pa-
`per; bed linens
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`[ articles of clothing, namely jackets,shirts, pants, hosiery, T-shirts, sweatshirts,
`jogging suits, for men, women and children; ] shoes, headwear
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`[ meat; ] fish for food purposes, namely fresh, frozen and canned fish; [ chicken;
`turkey; food game; meat extracts; ] canned, fresh and frozen fruit and veget-
`ables; all preserved, dried, and cooked;meat, fish, fruit, and vegetable aspics;
`
`

`

`fruit preserves; [ eggs and milk; ] milk products, namely butter and cheese for
`consumer use; cream, yogurt, [ and milk powder ] for food use; edible oils and-
`fats; salad oil; [ meat, ] fish, and vegetable preserves
`Class 030. First use: First Use: 0 First Use In Commerce: 0
`salad dressings; coffee; tea; [ cocoa; ] sugar; [ rice; tapioca; ] sago; chicory-
`based coffee substitutes; flour and grain products (excluding fodder), namely [
`fruit pies, ] pasta, and processed cereals; bread; fine pastries; confectionery,
`namely cakes, chocolates and hard candies; [ ice cream; ] honey; [ molasses
`syrup; yeast; baking powder; ] salt; mustard; vinegar; [ sauces, namely barbe-
`cue,pizza and tartar; ] spices; [ ice for cooling purposes ]
`Class 032. First use: First Use: 0 First Use In Commerce: 0
`beer; mineral water; [ non-alcoholic beverages, namely non-alcoholic malt
`beverage, namely beer substitute containing less than 0;5% alcohol; ] fruit
`beverages, namely [ apple cider, cherry cider, grape drink, ] lemonade, [
`limeade; fruit juices; syrups for making soft drinks; products for preparing bever-
`ages, namely powdered mixes for making soft drinks ]
`Class 034. First use: First Use: 0 First Use In Commerce: 0
`[ tobacco and tobacco products, namely cigars, cigarettes, cigarillos and chew-
`ing tobacco; articles for smokers, not made of or plated with precious metals,
`namely tobacco tins, ashtrays, pipes, pipecleaners, lighters and matches ]
`Class 036. First use: First Use: 0 First Use In Commerce: 0
`[ financing services, namely negotiating funds for investment in factories, plants,
`equipment, and services which specialize in the collection, transportation,sorting
`and use of waste and secondary raw materials, namely recyclable packaging
`and packaging materials made from glass, paper, cardboard, aluminum,
`plastic,and composites of paper, cardboard, plastic, and aluminum ]
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`[ transportation for others of waste and secondary raw materials, namely recyc-
`lable packaging and packaging materials made from glass, paper, cardboard,
`aluminum, plastic, and composites of paper, cardboard, plastic, and aluminum,
`by truck, rail and barge ]
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`[ sorting for others of waste and secondary raw materials, namely recyclable
`packaging and packaging materials made from glass, paper, cardboard, alumin-
`um, plastic, and composites of paper, cardbaord, plastic, and aluminum, by
`means of chemical, physical, and/or biological process; consultation for con-
`sumers regardingthe purchase, use, and disposal of ecologically compatible
`packaging and packaging materials ]
`
`Attachments
`
`87387239#TMSN.png( bytes )
`74648575#TMSN.png( bytes )
`DSD Notice of Opposition.pdf(270440 bytes )
`
`Signature
`Name
`Date
`
`/Jeffrey H. Kaufman/
`Jeffrey H. Kaufman
`12/24/2018
`
`

`

`Attorney Docket No.: DSD.US.00008.L
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`
` Opposition No. ______________
` Appln. Serial No. 87/831,412
`
`
` Mark: SlipPosables Disposable Guest
`
` Slippers and Stylized Arrow Design
`
`
`
`
`
`
`Der Grune Punkt-Duales System Deutschland GmbH,
`
`
`Opposer,
`
`
` v.
`
`Sheila Tooks,
`
`
`
`
`
`
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`Applicant.
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`NOTICE OF OPPOSITION
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`Der Grune Punkt-Duales System Deutschland GmbH, a Limited Liability Company, duly
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`organized and existing under the laws of Germany, located and doing business at Frankfurter
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`Strasse 720-726, Cologne 51145, Germany (hereinafter "Opposer"), believing that it will be
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`damaged by registration, hereby opposes Application Serial No. 87/831,412, filed March 13,
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`2018, under the Trademark Act of 1946, in the name of Sheila Tooks, published for opposition in
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`the Official Gazette of August 28, 2018, for the mark SlipPosables Disposable Guest Slippers
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`and Stylized Arrow Design.
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`The grounds of Opposition are as follows:
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`1.
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` Opposer, Der Grune Punkt-Duales System Deutschland GmbH, a Limited
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`Liability Company, duly organized and existing under the laws of Germany, having its principal
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`place of business at Frankfurter Strasse 720-726, Cologne 51145, Germany.
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`2.
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`Prior to Applicant’s filing date, Opposer used, itself and/or through its
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`subsidiaries and/or related companies, and is now using, Opposer’s Stylized Arrow Design
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`marks (hereinafter sometimes referred to as “Opposer’s Marks” or “the Green Dot Symbol”) in
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`connection with a broad range of products and services in connection with the recycling of goods
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`(also referred to as “take-back”), which are marketed, distributed, offered and/or sold by Opposer
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`in commerce (hereinafter referred to as “Opposer’s Goods and Services”). A full listing of the
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`goods and services sold and/or provided by Opposer are set forth in the attached Registrations.
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`3.
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`Opposer is the owner of, and will rely herein, upon the following federal
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`trademark and/or service mark registrations:
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`MARK
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`Stylized Arrow Design
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`Stylized Arrow Design
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`REG. NOS.
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`5,543,611
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`2,013,156
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`ISSUED
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`August 21, 2018
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`November 5, 1996
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`Printed information from the TARR and Assignment electronic databases of the USPTO
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`showing the current status and title of these Registrations is attached as Exhibit(s) A (hereinafter
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`referred to “Opposer’s Marks”). These registrations are valid, subsisting, and are prima facie
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`evidence of Opposer’s exclusive rights to use Opposer’s Marks in connection with the goods and
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`services. Registration No. 2,013,156 has obtained incontestable status.
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`4.
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`Commencing prior to Applicant’s filing date, Opposer, itself and/or through its
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`predecessors in interest, has used Opposer’s Marks in connection with Opposer’s Goods and
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`Services, which are offered, distributed and sold by Opposer in commerce.
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`5.
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`Upon information and belief, on March 13, 2018, Applicant filed an application
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`for registration of the alleged SlipPosables Disposable Guest Slippers and Stylized Arrow Design
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`mark for “Disposable slippers, in Class 25.” Said application was assigned Serial No.
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`87/831,412, and was published for Opposition in the Official Gazette of August 28, 2018.
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`6.
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`Opposer believes and alleges that Applicant’s trademark, when applied to
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`Applicant’s goods, is likely to cause confusion or mistake or to deceive the relevant consuming
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`public into believing that Applicant is licensed or controlled by Opposer or that Applicant is a
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`subsidiary of or in some way related to Opposer, in violation of Section 2(d) of the Trademark
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`Act, 15 U.S.C. § 1052(d).
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`7.
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`Upon information and belief, Opposer’s and Applicant’s goods and/or services
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`will be offered and consumed by the same general class of purchasers.
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`8.
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`Opposer has priority based on its prior use and registration of Opposer’s Marks in
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`the United States.
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`9.
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`Upon information and belief, the bona fides of Applicant’s intent-to-use the mark
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`is not apparent from materials of record in the subject application, and Opposer therefore
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`challenges same and leaves Applicant to its proofs with regard to the nature and sufficiency of its
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`intent to use at the time of filing Application Serial No. 87/831,412, or at any time thereafter.
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`10.
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`Opposer, upon information and belief, avers that it will be damaged by the
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`registration by Applicant of the alleged SlipPosables Disposable Guest Slippers and Stylized
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`Arrow Design mark, as set forth in Applicant’s Trademark Application Serial No. 87/831,412, in
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`that the mark is confusingly similar to Opposer’s Marks and common law rights and will be used
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`in connection with goods and services identical and/or related to the goods and services offered
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`by Opposer.
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`WHEREFORE, Opposer, Der Grune Punkt-Duales System Deutschland GmbH, believes
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`and avers that it is being and will continue to be damaged