Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1028856
`
`Filing date:
`
`01/14/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91252073
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Ultimate Nutrition, Inc.
`
`WILLIAM C WRIGHT
`EPSTEIN DRANGEL LLP
`60 EAST 42ND STREET, SUITE 2520
`NEW YORK, NY 10165
`UNITED STATES
`mail@ipcounselors.com
`212-292-5390
`
`Submission
`
`Motion for Summary Judgment
`
`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
`
`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 08/27/2020
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Samuel T Kilb
`
`mail@ipcounselors.com
`
`/Samuel T Kilb/
`
`01/14/2020
`
`Opposer s Motion for Summary Judgment.pdf(225824 bytes )
`Declaration of William Wright.pdf(142533 bytes )
`Exhibit A to Wright Decl.pdf(289927 bytes )
`Exhibit B to Wright Decl.pdf(276655 bytes )
`Exhibit C to Wright Decl.pdf(167261 bytes )
`Exhibit D to Wright Decl.pdf(3571977 bytes )
`Exhibit E to Wright Decl.pdf(2991568 bytes )
`Exhibit F to Wright Decl.pdf(2477866 bytes )
`
`

`

`
`
`
`
`
`
`William C. Wright
`Samuel T. Kilb
`
`EPSTEIN DRANGEL LLP
`60 East 42nd Street, Suite 2520
`New York, NY 10165
`Tel: 212-292-5390
`Fax: 212-292-5391
`E-Mail: mail@ipcounselors.com
`Attorney for Opposer
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`–––––––––––––––––––––––––––––––––––––
`
`ULTIMATE NUTRITION, INC.,
`
`
`
`v.
`
`
`WACKER CHEMIE AG,
`
`Applicant.
`
`
`
`
`–––––––––––––––––––––––––––––––––––––
`
`Opposer,
`
`
`
`
`
`
`
`
`
` Opposition No. 91252073
`
`
`
`x
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`X
`
`
`
`
`Pursuant to 37 C.F.R. § 2.127 and Fed R. Civ. P. 56, Opposer Ultimate Nutrition, Inc.,
`
`MOTION FOR SUMMARY JUDGMENT
`
`(“Opposer”) by its undersigned attorneys, hereby moves for summary judgment to sustain the
`
`Opposition against Applicant Wacker Chemie AG’s (“Applicant”) U.S. Trademark Application
`
`Ser. No. 79251481 (“Application”) for the mark FERMOPURE (“Applicant’s Mark”) in Classes
`
`1, 3, and 5.
`
`
`
`As shown below, there are no material facts in dispute and the Application should be
`
`refused as a matter of law.
`
`

`

`PRELIMINARY STATEMENT
`
`Opposer Ultimate Nutrition was founded in 1979 by Victor H. Rubino (“Rubino”). At the
`
`time, Rubino was one of the top amateur power lifters in the United States. Rubino knew that
`
`supplements were the key to improving his performance through increased strength and faster
`
`recovery. Since he was not satisfied with the current supplements that were available to him,
`
`Rubino launched his own company called Ultimate Nutrition.
`
`Rubino's goal was to create high-quality, thoroughly-researched products at an affordable
`
`price for everyone. In the late 1970's and early 1980's, Ultimate Nutrition was among the first
`
`companies to sell amino acid tablets, protein powders, carbohydrate powders, and various types
`
`of fat burners. By the late 1980's and early 1990's Ultimate Nutrition launched several legendary
`
`dietary supplement products such as Sports Energizer, an electrolyte-fueled, ready-to-drink
`
`beverage. By the mid 1990's Ultimate Nutrition again was on the cutting edge as one of the first
`
`companies to sell Whey Protein supplement powder in a bottle.
`
`Today, Ultimate Nutrition continues to excel with a wide range of dietary supplements
`
`and other products.
`
`STATEMENT OF UNDISPUTED FACTS
`
`Opposer is the owner of the mark FERMAPURE (“Opposer’s Mark”) for dietary
`
`supplements. Opposer owns incontestable U.S. Trademark Reg. No. 2818237 for Opposer’s
`
`Mark. That registration is dated February 24, 2004 and is in full force and effect. Declaration of
`
`William C. Wright in Support of Opposer’s Motion for Summary Judgment (“Wright Decl.”) at
`
`Exhibit A.
`
`On October 1, 2018, Applicant filed the Application for FERMAPURE covering goods in
`
`Classes 1, 3, and 5. Wright Decl. at Exhibit B.
`
`

`

`
`
`Opposer’s Mark FERMAPURE and Applicant’s Mark FERMOPURE differ by only a
`
`single letter.
`
`I.
`
`Standard for Summary Judgment
`
`ARGUMENT
`
`Summary judgment is proper where “there is no genuine dispute as to any material fact
`
`and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); see also
`
`T.B.M.P. § 528.01. Where a motion for summary judgment is made in accordance with Rule 56,
`
`it is incumbent on the non-moving party to proffer evidence sufficient to demonstrate the
`
`existence of a genuine dispute as to a material fact. A dispute is genuine only if, on the entirety
`
`of the record, a reasonable jury could resolve a factual matter in favor of the non-movant. See
`
`Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1562, 4 USPQ2d 1793, 1795 (Fed.
`
`Cir. 1987).
`
`II.
`
`Opposer’s Mark Has Priority Over Applicant’s Mark
`
`Opposer has priority over Applicant. Opposer has been using Opposer’s Mark for years
`
`before any date of priority on which Applicant may rely. Opposer’s registration, Reg. No.
`
`2818237, has become incontestable under 15 U.S.C. § 1065, and therefore the registration is
`
`conclusive evidence of the validity of the registered mark and of the registration of Opposer’s
`
`Mark, of the Opposer’s ownership of the mark, and of Opposer’s exclusive right to use the
`
`registered mark in commerce in connection with the goods specified in the registration.
`
`Opposer’s use of Opposer’s Mark has been continuous throughout the period of its
`
`registration, and Opposer continues use of Opposer’s Mark through the date of this motion.
`
`III. Applicant’s Mark is Likely to Cause Confusion
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a
`
`

`

`registered mark that it is likely consumers would be confused, mistaken, or deceived as to the
`
`source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of
`
`confusion is determined by applying the factors set forth in In re E. I. du Pont de Nemours &
`
`Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), commonly known as the du
`
`Pont factors. Two factors are considered the most important of the du Pont factors: (1) the
`
`similarity of the marks, and (2) the relatedness of the goods. See In re i.am.symbolic, llc, 866
`
`F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
`
`1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard
`
`Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry
`
`mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
`
`the goods and differences in the marks.”).
`
`A determination of likelihood of confusion is a question of law based on finding of
`
`relevant underlying facts. See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d (BNA)
`
`1201 (Fed. Cir. 2003). See also Specialty Brands, Inc. v. Coffee Bean Distribs. Inc., 748 F.2d
`
`669, 671, 223 USPQ (BNA) 1281, 1282 (Fed. Cir. 1984) (“[T]he issue of likelihood of confusion
`
`is the ultimate conclusion of law to be decided by the court.”) (citations & quotations omitted);
`
`Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987)
`
`(holding that in the Federal Circuit, the issue of likely confusion is one of law, not fact, on
`
`summary judgment). Here, the relevant facts are undisputed because they are based upon
`
`Applicant’s sworn statements in the United States Patent and Trademark Office, including the
`
`Application and the sworn identification of goods therein. Consideration of the relevant du Pont
`
`factors compels the conclusion that Applicant’s FERMOPURE mark is likely to cause confusion
`
`with Opposer’s FERMAPURE mark.
`
`

`

`A. Applicant’s FERMOPURE Mark is Confusingly Similar to Opposer’s
`
`FERMAPURE Mark
`
`Applicant’s Mark is confusingly similar to Opposer’s Mark in sight, sound, and
`
`commercial impression. The marks at issue, FERMOPURE and FERMAPURE, differ by just
`
`one letter. That letter is buried in the center of the marks, which include identical terms on either
`
`side of that letter. The letter does not serve to alter the meaning of the marks in any way. The
`
`letter does not change the sound of the marks, nor the overall commercial impression.
`
`In short, the marks at issue, FERMOPURE and FERMAPURE, are nearly identical, and
`
`therefore this factor weighs strongly in favor of a finding of likelihood of confusion.
`
`B. Applicant’s Goods are Identical or Highly Related to Opposer’s Goods
`
`The goods in Classes 1, 3, and 5 identified by Applicant in the Application are highly
`
`related and, in some cases, identical to Opposer’s identified goods. As a matter of law, the
`
`analysis of the similarity of the parties’ goods is confined to their respective applications and
`
`registrations. “The authority is legion that the question of registrability of an applicant’s mark
`
`must be decided on the basis of the identification of goods set forth in the application regardless
`
`of what the record may reveal as to the particular nature of an applicant’s goods, the particular
`
`channels of trade, or the class of purchasers to which sales of the goods are directed.” Octocom
`
`Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d (BNA) 1783, 1787
`
`(Fed. Cir. 1990). The description must be construed most favorably to Opposer as the prior user.
`
`Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 1337, 209 USPQ
`
`(BNA) 986, 988 (C.C.P.A. 1981).
`
`The goods at issue need not be identical. It is sufficient that the goods of the applicant
`
`and the registrant are related in some manner or that they are likely to be encountered by the
`
`

`

`same persons under circumstances that, because of the marks used in connection therewith,
`
`would lead to the mistaken belief that they originate from the same source. See, e.g., On-line
`
`Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (holding
`
`ON-LINE TODAY for Internet connection services and ONLINE TODAY for an electronic
`
`publication likely to cause confusion); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
`
`1565, 223 USPQ 1289 (Fed. Cir. 1984) (holding MARTIN’S for wheat bran and honey bread,
`
`and MARTIN’S for cheese, likely to cause confusion); Weider Publ'ns, LLC v. D&D Beauty
`
`Care Co., 109 USPQ2d 1347 (TTAB 2014) (holding SHAPES for a variety of beauty salon, day
`
`spa, and health spa services likely to cause confusion with SHAPE for magazines where the
`
`services are of the type normally featured in the magazines); Joel Gott Wines LLC v. Rehoboth
`
`Von Gott Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (holding GOTT LIGHT for various water
`
`beverages likely to cause confusion with GOTT and JOEL GOTT for wine); In re Toshiba Med.
`
`Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic
`
`apparatus, and TITAN for medical ultrasound device, likely to cause confusion); In re Corning
`
`Glass Works, 229 USPQ 65 (TTAB 1985) (holding CONFIRM for a buffered solution
`
`equilibrated to yield predetermined dissolved gas values in a blood gas analyzer, and
`
`CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion).
`
`The goods identified in Opposer’s registration are “nutritional products, namely dietary
`
`supplements.” According to the United States Food and Drug Administration, the law defines
`
`dietary supplements as products that contain a “dietary ingredient” that can be used to
`
`supplement the diet, including without limitation amino acids. Wright Decl. at Exhibit C.
`
`Several of the goods identified in the Application are subsumed within Opposer’s identification
`
`of dietary supplements and are therefore legally identical to Opposer’s goods, including, but not
`
`

`

`limited to, “dietetic beverages adapted for medical use; dietetic foods adapted for medical use;
`
`nutraceuticals for therapeutic or medical purposes; cyclodextrins and cyclodextrin derivatives for
`
`medical or veterinary purposes; antioxidants for medical, veterinary and dietetic purposes;
`
`cysteine and cysteine derivatives for medical, veterinary and dietetic purposes; cystine and
`
`cystine derivatives for medical, veterinary and dietetic purposes” in Class 5. The remaining
`
`goods are highly related to Opposer’s dietary supplements. The goods identified in Applicant’s
`
`Class 1 identification consist of ingredients that could be used in industry and science to create or
`
`prepare dietary supplements. See, e.g., In re DBC, LLC, Serial No. 85155603, 2012 TTAB
`
`LEXIS 68 (TTAB 2012) (finding applicant’s Class 1 ingredients related to registrant’s Class 5
`
`dietary supplements). The goods identified in Applicant’s Class 3 identification include goods
`
`that could be used in conjunction with dietary supplements to either achieve or complement the
`
`desired results. In re Little Moon Essentials, LLC, Serial No. 86580372, 2018 TTAB LEXIS 269,
`
`*18 (TTAB 2018) (finding a likelihood of confusion in part because applicant’s Class 3 goods
`
`and registrant’s Class 5 dietary supplements to be “related products that are directed to the health
`
`and well-being of the purchaser”); Great Earth Cos. v. Intimate Beauty Corp., Opposition No.
`
`91160752, 2005 TTAB LEXIS 442, *15 (TTAB 2005) (finding a likelihood of confusion at
`
`summary judgment, based in part on the relatedness of the goods: “[T]he numerous registrations
`
`of opposer and the third-parties show that the goods listed therein, namely, various personal body
`
`care products [in Class 3] and dietary and nutritional supplements [in Class 5], are of a type that
`
`may emanate from a single source in connection with the same mark.”).
`
`Applicant’s attempt to draw a distinction between its goods and Opposer’s Goods by
`
`including the limitation “with the exception of dietary supplements” in its identifications is
`
`misguided. Leaving aside that such limitation seems to contradict the specific inclusion of the
`
`

`

`use of “dietetic” for numerous goods in the identifications, such limitation is not enough to
`
`preclude a finding that the goods are related to those of Opposer. See, e.g., Mentholatum Co. v.
`
`TherOx, Inc., Opposition No. 91160810, 2008 TTAB LEXIS 666 (TTAB 2008) (finding
`
`applicant’s Class 3 goods related to opposer’s Class 5 goods as performing complementary
`
`functions, despite applicant’s use of an exclusionary phrase).
`
`The register provides overwhelming evidence that Applicant’s Goods in Classes 1, 3, and
`
`5 are related to Opposer’s Goods and that goods in Classes 1, 3, and 5 are the type of goods that
`
`would be provided by a single source. There are over 770 active trademark registrations in the
`
`USPTO that identify goods in both Classes 1 and 5 and specifically name “dietary supplements”
`
`in the identification. Wright Decl. at Exhibit D. There are over 1,500 active trademark
`
`registrations in the USPTO that identify goods in both Classes 3 and 5 and specifically name
`
`“dietary supplements” in the identification. Wright Decl. at Exhibit E. Applicant is well aware of
`
`the related nature of goods in Classes 1, 3, and 5, as in addition to the application at issue,
`
`Applicant itself is the listed owner of no fewer than 11 active registrations identifying goods in
`
`Classes 1 and 5, including five active registrations that include goods in all of Classes 1, 3, and 5.
`
`Wright Decl. at Exhibit F. Accordingly, Applicant’s goods are identical and/or highly related to
`
`Opposer’s goods, and this factor weighs heavily in favor of a finding of likelihood of confusion.
`
`C. Applicant’s Goods Will Travel in the Same Channels of Trade as
`
`Opposer’s Goods
`
`Another factor that increases the likelihood that Applicant’s Mark will be confused with
`
`Opposer’s Mark is the fact that Applicant’s goods must be presumed to travel in the same
`
`channels of trade as Opposer’s products. “In the absence of any limitation in the parties’
`
`identifications of goods, we must presume that the goods move through all reasonable trade
`
`

`

`channels for such goods to all usual classes of consumers for such goods.” Centraz Industries,
`
`Inc. v. Spartan Chemical Company, Inc., 77 USPQ2d 1698, 1700 (TTAB 2006). The
`
`Application includes no limitation on the channels of trade.
`
`IV. Conclusion
`
`Based on the evidence in the record, there is no question that a likelihood of confusion
`
`exists between Applicant’s FERMOPURE Mark and Opposer’s FERMAPURE mark. To the
`
`extent any doubts may remain regarding the likelihood of confusion in a trademark registration
`
`case, it is proper that they be resolved in favor of the prior registrant. In re Martin’s Famous
`
`Pastry Shoppe, Inc., 748 F.2d at 1568; In re Toshiba Med. Sys. Corp., 91 USPQ2d (BNA) at
`
`1274. Because of this, no reasonable fact-finder could resolve this matter in favor of Applicant.
`
`Thus, Opposer is entitled to judgment as a matter of law.
`
`
`
`For the reasons set forth above, Opposer’s motion for summary judgment should be
`
`granted and the Application should be refused.
`
`
`
`
`Dated: January 14, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EPSTEIN DRANGEL, LLP
`
`
`
`/ Samuel T. Kilb /
`
`By:
`
`Samuel T. Kilb
`60 East 42nd Street, Suite 2520
`New York, New York 10165
`Phone: (212) 292-5390
`Fax: (212) 292-5391
`Attorney for Opposer
`
`
`
`
`
`
`
`
`
`

`

`*******************************************************************************************************
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Motion for Summary
`Judgment was served by e-mail on Applicant’s attorney of record on Tuesday, January 14, 2020
`at the following address:
`
`
`Sara M Dorchak
`Collard & Roe PC
`1077 Northern Blvd
`Roslyn, NY 11576
`United States
`sdorchak@collardroe.com, sbellus@collardroe.com, law@collardroe.com
`Phone: 516-365-9802
`
`
`
`Dated: January 14, 2020
`
`
`
`
`
`By:
`
`
`
`
`
`/ Samuel T. Kilb /
`Samuel T. Kilb
`60 East 42nd Street, Suite 2520
`New York, NY 10165
`Tel: 212-292-5390
`Fax: 212-292-5391
`E-Mail: mail@ipcounselors.com
`Attorney for Opposer
`
`
`
`
`
`*******************************************************************************************************
`
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`–––––––––––––––––––––––––––––––––––––
`
`ULTIMATE NUTRITION, INC.,
`
`
`
`v.
`
`
`WACKER CHEMIE AG,
`
`Applicant.
`
`
`
`
`–––––––––––––––––––––––––––––––––––––
`
`Opposer,
`
`
`
`
`
`
`
`
`
` Opposition No. 91252073
`
`
`
`x
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`X
`
`__________________________________________________________________________
`
`
`DECLARATION OF WILLIAM C. WRIGHT IN SUPPORT OF OPPOSER’S MOTION
`FOR SUMMARY JUDGMENT
`______________________________________________________________________________
`
`
`
`I, William C. Wright, hereby declare as follows:
`
`1. I am an attorney admitted to practice in the State of New York, and am a partner with the
`
`law firm of Epstein Drangel LLP, located at 60 East 42nd Street, Suite 2520, New York,
`
`New York 10165.
`
`2. I represent Opposer Ultimate Nutrition, Inc. (“Opposer”) in the above-captioned
`
`opposition proceeding, and I make and submit this Declaration in support of Opposer’s
`
`Motion for Summary Judgment.
`
`3. I am over eighteen (18) years of age. I have never been convicted of a felony or any
`
`criminal offense involving moral turpitude, and I am fully competent to testify to the
`
`matters stated herein. I have personal knowledge of every statement made in this
`
`Declaration and such statements are true and correct.
`
`

`

`4. A true and correct copy of printouts from the United States Patent and Trademark Office
`
`databases showing U.S. Trademark Reg. No. 2818237 are attached hereto as Exhibit A.
`
`5. A true and correct copy of printouts from the United States Patent and Trademark Office
`
`databases showing U.S. Trademark App. Ser. No. 79251481 are attached hereto as
`
`Exhibit B.
`
`6. A true and correct copy of the United States Food and Drug Administration website page
`
`“FDA 101: Dietary Supplements” available at https://www.fda.gov/consumers/consumer-
`
`updates/fda-101-dietary-supplements is attached hereto as Exhibit C.
`
`7. A true and correct copy of printouts from the United States Patent and Trademark Office
`
`databases showing a representative sample of the 773 results for the query “`RN > "0"
`
`and (live)[ld] and (001)[ic] and (005)[ic] and ("dietary supplements")[gs]”, as well as the
`
`first page showing results of the query from the TESS database, is attached hereto as
`
`Exhibit D.
`
`8. A true and correct copy of printouts from the United States Patent and Trademark Office
`
`databases showing a representative sample of the 1,571 results for the query “`RN > "0"
`
`and (live)[ld] and (003)[ic] and (005)[ic] and ("dietary supplements")[gs]”, as well as the
`
`first page showing results of the query from the TESS database, is attached hereto as
`
`Exhibit E.
`
`9. A true and correct copy of printouts from the United States Patent and Trademark Office
`
`databases showing registrations owned by Applicant covering goods in Classes 1, 3, and
`
`5 are attached hereto as Exhibit F.
`
` I
`
` declare under the penalty of perjury that to the best of my knowledge the foregoing is true
`
`
`
`2
`
`

`

`and correct.
`
`Executed on Tuesday, January 14, 2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`/William C. Wright/
`William C. Wright
`EPSTEIN DRANGEL LLP
`60 East 42nd Street, Suite 2520
`New York, New York 10165
`Tel. No.: (212) 292 5390
`Fax. No.: (212) 292-5391
`mail@ipcounselors.com
`Attorney for Opposer
`
`
`
`3
`
`

`

`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`1/8/2020
`
`Trademark Electronic Search System (TESS)
`
`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help
` Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed Jan 8 04:38:44 EST 2020
`
`
`
`
`
`
`
`
`Logout Please logout when you are done to release system resources allocated for you.
`Record 1 out of 1
`
`
`
`
`
` ( Use the "Back" button of the Internet Browser to return to TESS)
`
`Word Mark
`FERMAPURE
`Goods and Services
`IC 005. US 006 018 044 046 051 052. G & S: nutritional products, namely dietary supplements. FIRST USE: 20030628. FIRST USE IN COMMERCE: 20030628
`Mark Drawing Code
`(1) TYPED DRAWING
`Serial Number
`76475247
`Filing Date
`December 16, 2002
`Current Basis
`1A
`Original Filing Basis
`1B
`Published for Opposition May 27, 2003
`Registration Number
`2818237
`Registration Date
`February 24, 2004
`Owner
`(REGISTRANT) Ultimate Nutrition, Inc. CORPORATION CONNECTICUT 21 Hyde Road Farmington CONNECTICUT 060340643
`Assignment Recorded
`ASSIGNMENT RECORDED
`Attorney of Record
`William C. Wright
`Type of Mark
`TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20140627.
`Renewal
`1ST RENEWAL 20140627
`Live/Dead Indicator
`LIVE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:nw3tdw.2.1
`
`1/1
`
`

`

`1/8/2020
`
`Status Search SN 2818237
`
`BULK DATA: Since May 7 at 12 a.m., the TSDR Application Programming Interface (API) has not included all information. Images of trademark registration certificates issued since July 2016
`and some office actions are absent in the API. Customers who need to retrieve a copy of a registration certificate or an office action should download it directly from the TSDR documents tab.
`
`INTERMITTENT SYSTEM ISSUES: Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m.
`ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email teas@uspto.gov and include your serial number, the document you are
`looking for, and a screenshot of any error messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2020-01-08 15:31:04 EST
`
`Mark: FERMAPURE
`
`US Serial Number: 76475247
`
`US Registration Number: 2818237
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing Date: Dec. 16, 2002
`
`Registration Date: Feb. 24, 2004
`
`TM5 Common Status Descriptor:
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jun. 27, 2014
`
`Publication Date: May 27, 2003
`
`Mark Information
`
`Mark Literal Elements: FERMAPURE
`
`Standard Character Claim: No
`
`Notice of Allowance Date: Aug. 19, 2003
`
`
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`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: nutritional products, namely dietary supplements
`
`International Class(es): 005 - Primary Class
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 28, 2003
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Current Owner(s) Information
`
`Use in Commerce: Jun. 28, 2003
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Owner Name: Ultimate Nutrition, Inc.
`
`Owner Address: 21 Hyde Road
`Farmington, CONNECTICUT UNITED STATES 060340643
`
`Legal Entity Type: CORPORATION
`
`State or Country Where Organized: CONNECTICUT
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: William C. Wright
`
`Attorney Primary Email Address: mail@ipcounselors.com
`
`Correspondent
`
`Docket Number: 2127-603
`
`Attorney Email Authorized: Yes
`
`tsdr.uspto.gov/#caseNumber=2818237&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`Privacy - Terms
`
`1/5
`
`

`

`1/8/2020
`Correspondent Name/Address: William C. Wright
`Epstein Drangel LLP
`60 E 42nd Street, Suite 2410
`New York, NEW YORK UNITED STATES 10165
`
`Status Search SN 2818237
`
`Phone: (212)292-5390
`
`Fax:
`
`(212)292-5391
`
`Correspondent e-mail: mail@ipcounselors.com
`
`Correspondent e-mail Authorized: Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`Jun. 28, 2014
`
`Jun. 27, 2014
`
`Jun. 27, 2014
`
`Jun. 27, 2014
`
`Jun. 13, 2014
`
`Feb. 08, 2012
`
`Aug. 26, 2010
`
`Aug. 26, 2010
`
`Aug. 04, 2010
`
`Jul. 14, 2010
`
`Apr. 22, 2009
`
`Feb. 24, 2004
`
`Dec. 28, 2003
`
`Dec. 15, 2003
`
`Nov. 10, 2003
`
`Nov. 10, 2003
`
`Nov. 10, 2003
`
`Aug. 19, 2003
`
`May 27, 2003
`
`May 07, 2003
`
`Mar. 24, 2003
`
`Mar. 18, 2003
`
`Description
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`TEAS SECTION 8 & 9 RECEIVED
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`TEAS SECTION 8 & 15 RECEIVED
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`REGISTERED-PRINCIPAL REGISTER
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`ASSIGNED TO EXAMINER
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`USE AMENDMENT FILED
`
`PAPER RECEIVED
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`ASSIGNED TO EXAMINER
`
`Proceeding Number
`
`59136
`
`59136
`
`59136
`
`67723
`
`67723
`
`72508
`
`76132
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jun. 27, 2014
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 6
`
`Assignment 1 of 6
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 3969/0830
`
`Date Recorded: Mar. 25, 2009
`
`Supporting Documents: assignment-tm-3969-0830.pdf
`
`Conveyance Filter
`
`Registrant: Ultimate Nutrition, Inc.
`
`
`
`Pages: 17
`
`Assignor
`
`Assignee
`
`Name: ULTIMATE NUTRITION, INC.
`
`Execution Date: Mar. 17, 2009
`
`Legal Entity Type: CORPORATION
`
`State or Country Where Organized: CONNECTICUT
`
`Name: TD BANK, N.A.
`
`Legal Entity Type: BANK
`
`Address: 102 WEST MAIN STREET
`NEW BRITAIN, CONNECTICUT 06050
`
`Correspondent
`Correspondent Name: ROBERT L. IAMONACO, ESQUIRE
`
`Correspondent Address: THE LAW OFFICES OF ROBERT L. IAMONACO &
`ASSOCIATES, P.C.
`150 TRUMBULL STREET, SECOND FLOOR
`HARTFORD, CONNECTICUT 06103
`
`State or Country Where Organized: UNITED STATES
`
`tsdr.uspto.gov/#caseNumber=2818237&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`Privacy - Terms
`
`2/5
`
`

`

`1/8/2020
`Domestic Representative - Not Found
`Assignment 2 of 6
`
`Status Search SN 2818237
`
`Conveyance: CORRECTIVE ASSIGNMENT TO CORRECT THE RECORDS TO IDENTIFY THE DOCUMENT AS A SECURITY AGREEMENT NOT AN ASSIGNMENT PREVIOUSLY
`RECORDED ON REEL 003969 FRAME 0830. ASSIGNOR(S) HEREBY CONFIRMS THE SECURITY AGREEMENT.
`
`Reel/Frame: 4238/0402
`
`Date Recorded: Jul. 08, 2010
`
`Supporting Documents: assignment-tm-4238-0402.pdf
`
`Pages: 22
`
`Name: ULTIMATE NUTRITION, INC.
`
`Execution Date: Mar. 17, 2009
`
`Legal Entity Type: CORPORATION
`
`State or Country Where Organized: CONNECTICUT
`
`Assignor
`
`Assignee
`
`Name: TD BANK, N.A.
`
`Legal Entity Type: BANK
`
`Address: 102 WEST MAIN STREET
`NEW BRITAIN, CONNECTICUT 06050
`
`Correspondent
`Correspondent Name: WILLIAM C. WRIGHT
`
`Correspondent Address: 60 EAST 42ND STREET, SUITE 820
`NEW YORK, NY 10165
`
`Domestic Representative - Not Found
`Assignment 3 of 6
`
`Conveyance: NUNC PRO TUNC SECURITY INTEREST
`
`Reel/Frame: 4239/0098
`
`Date Recorded: Jul. 09, 2010
`
`Supporting Documents: assignment-tm-4239-0098.pdf
`
`State or Country Where Organized: UNITED STATES
`
`Pages: 10
`
`Assignor
`
`Assignee
`
`Name: ULTIMATE NUTRITION, INC.
`
`Execution Date: Jun. 25, 2009
`
`Legal Entity Type: CORPORATION
`
`State or Country Where Organized: CONNECTICUT
`
`Name: TD BANK, N.A.
`
`Legal Entity Type: BANK
`
`Address: 102 WEST MAIN STREET
`NEW BRITAIN, CONNECTICUT 06050
`
`Correspondent
`Correspondent Name: WILLIAM C. WRIGHT
`
`Correspondent Address: 60 EAST 42ND STREET, SUITE 820
`NEW YORK, NY 10165
`
`Domestic Representative - Not Found
`Assignment 4 of 6
`
`State or Country Where Organized: CONNECTICUT
`
`Conveyance: TERMINATION AND RELEASE OF SECURITY AGREEMENT
`
`Reel/Frame: 4238/0945
`
`Date Recorded: Jul. 08, 2010
`
`Supporting Documents: assignment-tm-4238-0945.pdf
`
`Pages: 5
`
`Assignor
`
`Assignee
`
`Name: TD BANK, N.A.
`
`Legal Entity Type: BANK
`
`Execution Date: Jun. 25, 2010
`
`State or Country Where Organized: CONNECTICUT
`
`Name: ULTIMATE NUTRITION, INC.
`
`Legal Entity Type: CORPORATION
`
`State or Country Where Organized: CONNECTICUT
`
`Address: 21 HYDE ROAD
`FARMINGTON, CONNECTICUT 06032
`
`Correspondent
`Correspondent Name: WILLIAM C. WRIGHT
`
`Correspondent Address: 60 EAST 42ND STREET, SUITE 820
`NEW YORK, NY 10165
`
`Domestic Representative - Not Found
`Assignment 5 of 6
`
`Conveyance: SECURITY INTEREST
`
`tsdr.uspto.gov/#caseNumber=2818237&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`Privacy - Terms
`
`3/5
`
`

`

`1/8/2020
`
`Assignor
`
`Assignee
`
`Reel/Frame: 4707/0807
`
`Date Recorded: Jan. 31, 2012
`
`Supporting Documents: assignment-tm-4707-0807.pdf
`
`Status Search SN 2818237
`
`Pages: 18
`
`Name: ULTIMATE NUTRITION, INC.
`
`Execution Date: Jan. 20, 2012
`
`Legal Entity Type: CORPORATION
`
`State or Country Where Organized: CONNECTICUT
`
`Name: TD BANK, NA
`
`Legal Entity Type: A NATIONAL BANKING ASSOCIATION
`
`State or Country Where Organized: CONNECTICUT
`
`Address: 2461 MAIN STREET
`GLASTONBURY, CONNECTICUT 06033
`
`Correspondent
`Correspondent Name: WILLIAM C. WRIGHT
`
`Correspondent Address: 60 EAST 42ND STREET, SUITE 2410
`NEW YORK, NY 10165
`
`Domestic Representative - Not Found
`Assignment 6 of 6
`
`Conveyance: TERMINATION AND RELEASE OF NUNC PRO NUNC CONTINGENT TRADEMARK ASSIGNMENT TO SECURE ASSIGNOR'S OBLIGATION TO ASSIGNEE UNDER
`THE LOAN AGREEMENT
`
`Reel/Frame: 4707/0802
`
`Date Recorded: Jan. 31, 2012
`
`Supporting Documents: assignment-tm-4707-0802.pdf
`
`Pages: 5
`
`Assignor
`
`Assignee
`
`Name: TD BANK, NA
`
`Execution Date: Jan. 30, 2012
`
`Legal Entity Type: A NATIONAL BANKING ASSOCIATION
`
`State or Country Where Organized: CONNECTICUT
`
`Name: UL