Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1061872
`06/15/2020
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Solvay SA
`
`06/17/2020
`
`RUE DE RANSBEEK 310
`BRUSSELS, B-1120
`BELGIUM
`
`REBECCA LIEBOWITZ
`VENABLE LLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-9998
`UNITED STATES
`rliebowitz@venable.com, trademarkdocket@venable.com
`202-344-4976
`
`Applicant Information
`
`Application No
`
`88353802
`
`Publication date
`
`02/18/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`06/15/2020
`
`Jeanne M. Gregori
`295 Bentley Court
`Pacheco, CA 94553
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`06/17/2020
`
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 2019/02/03 First Use In Commerce: 2019/03/13
`All goods and services in the class are opposed, namely: Providing temporary use of on-line non-
`downloadable computer software accessible to authorized users through a web-based portal for re-
`porting human traffickinginformation and data and featuring a software template to input the informa-
`tionand data for dedicated program reporting purposes; Providing an online non-downloadable Inter-
`net-based system application featuring technology enabling users to report on human trafficking by
`inputting text and data which can be collected,stored and maintained in the system application
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`
`
`ute
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`
`SOLVAY
`
`educational, scientific and humanitarian endeavors
`
`Related Proceed-
`ings
`
`A Petition for Cancellation of Registration No. 5725016 is being concurrently
`filed.
`
`Attachments
`
`Solvay v. Jeanne Gregori SOLVAY SAFE notice of opposition.pdf(14004 bytes )
`
`Signature
`
`/Rebecca Liebowitz/
`
`Name
`
`Date
`
`REBECCA LIEBOWITZ
`
`06/15/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SOLVAY SA
`
`Opposer,
`
`v.
`
`Jeanne M. Gregori
`
`
`
`Applicant.
`
`
`
`Attorney’s Reference: 32232-519398
`
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`Opposition No.
`Application Serial No. 88/353802
`
`NOTICE OF OPPOSITION
`
`In the matter of the application for registration of the trademark SOLVAY SAFE filed by
`
`Jeanne M. Gregori (“Applicant”), as shown in Application Serial No. 88/353802 and published
`
`for opposition in the Official Gazette of February 18, 2020.
`
`Solvay SA (“Opposer”), a Belgian corporation with an address at Rue de Ransbeek 310,
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`B-1120 Brussels, Belgium believes that it will be damaged by registration of the mark shown in
`
`said Application Serial No.88/353802, and hereby opposes the same:
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`As grounds for opposition it is alleged that:
`
`1.
`
`Opposer is a Belgian based international company founded in 1863, with
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`multinational operations in 62 countries, including throughout the United States.
`
`2.
`
`Opposer employs its scientific, technical and commercial expertise to
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`responsibly provide innovative products and services related to chemistry and
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`human health.
`
`3.
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`Opposer is well known as being among the world leaders in several commodity
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`chemicals, including soda ash, hydrogen peroxide, persalts, barium and
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`strontium carbonate, and caustic soda, as well as such specialty chemicals as
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`fluorochemicals.
`
`
`
`4.
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`Opposer, through its predecessors in interest, has operated in the United States
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`since 1881, with its interests in the United States reorganized in 1984 under the
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`holding company Solvay America, Inc.
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`5.
`
`Opposer engages in corporate philanthropy that is principally directed to
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`educational, scientific and humanitarian endeavors in the United States and
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`around the globe.
`
`6.
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`Opposer, at the corporate level, concentrates its philanthropic or funding efforts
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`in numerous areas, including support to humanitarian initiatives in reaction to
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`certain disasters and/or where its products or services are of particular value.
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`7.
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`Beyond Opposer's philanthropy at the corporate level, each Solvay site,
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`including those in the United States, engages in projects supporting the
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`communities in which it operates.
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`8.
`
`As a result of its widespread, continuous and exclusive use of the SOLVAY
`
`name and mark to identify its various products, services and philanthropic
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`endeavors, Opposer owns valid and subsisting common law rights to the
`
`SOLVAY name and mark.
`
`9.
`
`On March 24, 2019 Applicant filed Application Serial No. 88/353802 to register
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`the mark SOLVAY SAFE in connection with “Providing temporary use of on-
`
`line non-downloadable computer software accessible to authorized users
`
`through a web-based portal for reporting human trafficking information and data
`
`and featuring a software template to input the information and data for dedicated
`
`program reporting purposes; Providing an online non-downloadable Internet-
`
`based system application featuring technology enabling users to report on
`
`human trafficking by inputting text and data which can be collected, stored and
`
`- 2 -
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`
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`maintained in the system application.” Use of that mark since March 13, 2019
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`is alleged.
`
`10.
`
`Opposer's name and mark SOLVAY has priority over Applicant's alleged mark
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`because Opposer's use of that name and mark in the U.S. predates the
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`Applicant's filing date or any other date on which the Applicant may rely for
`
`purposes of priority.
`
`11.
`
`The term SOLVAY in the Applicant's alleged mark is identical to Opposer's
`
`name and mark SOLVAY.
`
`12.
`
`Applicant’s use and registration of the alleged mark SOLVAY SAFE is likely to
`
`cause confusion or to deceive consumers and the public about the affiliation or
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`association of the Applicant with the Opposer within the meaning of and in
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`violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
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`13.
`
`Consumers are likely to be confused and to mistakenly believe that Applicant’s
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`services offered under its alleged mark SOLVAY SAFE either emanate from or
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`are licensed by, sponsored by, or associated with Opposer.
`
`14.
`
`If the applicant were permitted to use and register its mark for its services as
`
`specified in its application, confusion among consumers resulting in damage and
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`injury to Opposer would be caused by virtue of the similarity between
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`Applicant’s alleged mark SOLVAY SAFE and Opposer’s name and mark
`
`SOLVAY. Any defect, objection or fault found with Applicant’s services
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`would reflect upon, seriously injure, and damage the reputation and value that
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`Opposer has established under its SOLVAY name and mark.
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`15.
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`As a result of its distinctiveness and widespread use and promotion throughout
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`the United States, Opposer's SOLVAY name and mark is a famous trademark
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`- 3 -
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`
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`within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), and
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`became famous prior to the filing date of Applicant's application or any other
`
`priority date on which Applicant may rely.
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`16.
`
`Registration and use by Applicant of the alleged mark SOLVAY SAFE for
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`Applicant's services would be likely to impair the distinctiveness, and cause
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`dilution by blurring, of Opposer's famous name and mark SOLVAY in violation
`
`of 15 U.S.C. § 1125(c). Accordingly, pursuant to 15 U.S.C. § 1063, Applicant's
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`alleged mark SOLVAY SAFE is not entitled to registration.
`
`WHEREFORE, Opposer prays that Application Serial No.88/353802 be rejected, that
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`no registration be issued thereon to Applicant, and that this opposition be sustained in favor of
`
`the Opposer.
`
`This Notice of Opposition is submitted together with the statutory filing fee of $400.00
`
`(Class 42). Should any additional fee be required, please charge the same to our Account No.
`
`22-0261 and notify the undersigned accordingly.
`
`Opposer appoints Rebecca Liebowitz, Catherine Mitros, Tanya Curcio and Renato Perez
`
`along with the law firm of Venable LLP, P.O. Box 34385, Washington, D.C. 20043-9998 to
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`transact all business on its behalf in connection with this Opposition.
`
`Date: June 15, 2020
`
`Respectfully submitted,
`
`/Rebecca Liebowitz/
`By: _______________________________
`
` Attorneys for Opposer
` Rebecca Liebowitz
` Catherine Mitros
` Tanya Curcio
` Renato Perez
` VENABLE
` P.O. Box 34385
` Washington, D.C. 20043-9998
` Telephone: 202/344-4976
`
`- 4 -
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`
