Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1168091
`10/25/2021
`
`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
`
`The Quaker Oats Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`10/24/2021
`
`433 WEST VAN BUREN STREET, SUITE 350N
`CHICAGO, IL 60607
`UNITED STATES
`
`JANET SILVERBERG
`PEPSICO, INC.
`433 WEST VAN BUREN STREET, SUITE 350N
`CHICAGO, IL 60607
`UNITED STATES
`Primary Email: trademarks@pepsico.com
`Secondary Email(s): janet.silverberg@pepsico.com,
`donna.j.sanders@pepsico.com
`No phone number provided.
`
`Applicant Information
`
`Application No.
`
`90182585
`
`Publication date
`
`04/27/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/25/2021
`
`Opposition Peri-
`od Ends
`
`10/24/2021
`
`ACE FULFILLMENT USA, LLC
`2815 DIRECTORS ROW, STE 100 OFFICE 763
`ORLANDO, FL 32809
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 030. First Use: 0 First Use In Commerce: 0
`Opposed goods and services in the class: Processed bran; Grits; Granola cereals; Processed grain;
`Processed cereals; Processed oats; Breakfast cereals
`
`Applicant Information
`
`Application No.
`
`90164925
`
`Publication date
`
`04/27/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/25/2021
`
`Opposition Peri-
`od Ends
`
`ACE FULFILLMENT USA, LLC
`2815 DIRECTORS ROW, STE 100 OFFICE 763
`ORLANDO, FL 32809
`UNITED STATES
`
`
`ESTTA1168091
`10/25/2021
`
`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
`
`The Quaker Oats Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`10/24/2021
`
`433 WEST VAN BUREN STREET, SUITE 350N
`CHICAGO, IL 60607
`UNITED STATES
`
`JANET SILVERBERG
`PEPSICO, INC.
`433 WEST VAN BUREN STREET, SUITE 350N
`CHICAGO, IL 60607
`UNITED STATES
`Primary Email: trademarks@pepsico.com
`Secondary Email(s): janet.silverberg@pepsico.com,
`donna.j.sanders@pepsico.com
`No phone number provided.
`
`Applicant Information
`
`Application No.
`
`90182585
`
`Publication date
`
`04/27/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/25/2021
`
`Opposition Peri-
`od Ends
`
`10/24/2021
`
`ACE FULFILLMENT USA, LLC
`2815 DIRECTORS ROW, STE 100 OFFICE 763
`ORLANDO, FL 32809
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 030. First Use: 0 First Use In Commerce: 0
`Opposed goods and services in the class: Processed bran; Grits; Granola cereals; Processed grain;
`Processed cereals; Processed oats; Breakfast cereals
`
`Applicant Information
`
`Application No.
`
`90164925
`
`Publication date
`
`04/27/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`10/25/2021
`
`Opposition Peri-
`od Ends
`
`ACE FULFILLMENT USA, LLC
`2815 DIRECTORS ROW, STE 100 OFFICE 763
`ORLANDO, FL 32809
`UNITED STATES
`
`
`
`Goods/Services Affected by Opposition
`
`Class 030. First Use: 0 First Use In Commerce: 0
`Opposed goods and services in the class: Processed bran; Grits; Granola cereals; Processed grain;
`Processed cereals; Processed oats; Breakfast cereals
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1584991
`
`Registration Date
`
`02/27/1990
`
`Application Date
`
`08/21/1989
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MOTHER'S
`
`NONE
`
`Class 030. First use: First Use: 1895/07/01 First Use In Commerce: 1895/07/01
`PROCESSED HOT AND COLD CEREALS; GRAIN CAKES
`
`U.S. Registration
`No.
`
`3924180
`
`Registration Date
`
`02/22/2011
`
`Application Date
`
`05/07/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MOTHER'S SOMEONE TO TRUST SINCE 1895
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of "mother's someone to trust since 1895", with the "o" in
`mother's depicted as a heart slanted to the left.
`
`Class 030. First use: First Use: 2010/01/31 First Use In Commerce: 2010/01/31
`Breakfast cereals, namely, processed hot and cold cereals; grain cakes; wheat
`germ
`
`U.S. Registration
`No.
`
`3921128
`
`Registration Date
`
`02/15/2011
`
`Word Mark
`
`MOTHER'S
`
`Application Date
`
`05/07/2009
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "mother's" with the "o" depicted as a heart
`slanted to the left.
`
`Class 030. First use: First Use: 2010/01/31 First Use In Commerce: 2010/01/31
`Breakfast cereals, namely, processed hot and cold cereals; grain cakes [;
`wheatgerm]
`
`Attachments
`
`77981089#TMSN.png( bytes )
`77981092#TMSN.png( bytes )
`NOO by Quaker to MOTHERFLOUR Design.pdf(152318 bytes )
`NOO by Quaker to MOTHER FLOUR.pdf(152763 bytes )
`
`Signature
`
`/Janet Silverberg/
`
`Name
`
`Date
`
`JANET SILVERBERG
`
`10/25/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`: MOTHERFLOUR Design
`: Ace Fulfillment USA, LLC
`: 90/182,585
`: September 15, 2020
`
`: April 27, 2021
`
`
`In the Matter of Application
`
`
`
`Mark
`
`Applicant
`
`Serial No
`
`Filed
`
`Published in the
`Official Gazette
`
`------------------------------------------------------x
`
`
`
`
`
`
`:
`THE QUAKER OATS COMPANY,
`:
`
`
`
`
`
`
`:
`
`
`Opposer,
`
`
`:
`
`
`
`
`
`
`:
`
`vs.
`
`
`
`
`:
`
`
`
`
`
`
`:
`ACE FULFILLMENT USA, LLC
`
`:
`
`
`
`
`
`
`:
`
`
`Applicant.
`
`
`:
`
`
`
`
`
`
`:
`------------------------------------------------------x
`
`
`Opposition No. _________________
`
`
`
`
`
`
`
`
`
`
`Opposer, The Quaker Oats Company (“Opposer”), a New Jersey corporation, located and
`
`NOTICE OF OPPOSITION
`
`doing business at 433 West Van Buren Street, Suite 350N, Chicago, Illinois 60607, believes that
`
`it will be damaged by the registration of United States Trademark Application Serial No.
`
`90/182,585, filed on September 15, 2020, in the name of Ace Fulfillment USA, LLC (“Applicant”)
`
`for the mark MOTHERFLOUR Design based on an intent to use the mark in connection with
`
`“Flours from nuts and seeds; Processed bran; Processed herbs; Spices; Grits; Processed bulgur
`
`wheat; Kasha; Rice; Tapioca; Cocoa powder; Wheat germ for human consumption; Gluten free
`
`flour; Nut flour and seed flour; Seed meal, namely, flax and sunflower meal; Granola cereals;
`
`muffin mixes; Mixes for baked goods, namely, cake mixes, muffin mixes, cookie mixes, pizza
`
`
`
`1
`
`
`
`crust mixes, bread mixes, biscuit mixes, and brownie mixes; Processed grain; Biscuit mix; Cookie
`
`mixes; Pancake and waffle mixes; Bread mixes; Processed cereals; Cornmeal; Polenta; Couscous;
`
`Processed oats; Sugar; Food starch; Baking powder; Baking soda; Salt; Cooking salt; Processed
`
`natural seeds and grains; Breakfast cereals, almond butter, cashew butter, peanut butter, coconut
`
`flour; Natural dairy free sweeteners” in International Class 30, and, having been previously granted
`
`extensions of time to oppose, hereby opposes the foregoing application.
`
`
`
`The specific grounds for this Opposition are as follows:
`
`1.
`
`Since at least as early as July 1, 1895, Opposer has been engaged in the
`
`manufacture, advertising, promotion and sale of processed hot and cold cereals and grain cakes
`
`under the MOTHER’S trademark.
`
`2.
`
`Opposer has expanded its product lines under the MOTHER’S trademark to
`
`identify other related products, such as breakfast cereals.
`
`3.
`
`Due to extensive and continuous advertising, sale, use and promotion of these food
`
`products under the MOTHER’S trademark, this mark has not only acquired substantial public and
`
`consumer recognition throughout the United States, but has also enjoyed valuable goodwill, and
`
`become famous since prior to the filing date of the application-at-issue, solely signifying Opposer
`
`as the source of high-quality products.
`
`4.
`
`Opposer registered its MOTHER’S trademark and is the owner of at least three (3)
`
`live United States trademark registrations claimed in Opposer’s Pleaded Marks in the Opposition
`
`filing, each of which incorporates the designation MOTHER’S or variants thereof (hereinafter,
`
`collectively referred to as the “MOTHER’S Marks”).
`
`5.
`
`Opposer’s MOTHER’S Marks are valid, subsisting, in full force and effect, and
`
`serve as evidence of Opposer’s exclusive right to use such marks in commerce on or in connection
`
`
`
`2
`
`
`
`with the goods identified in the registrations, as provided by Section 33(a) of the United States
`
`Trademark (Lanham) Act, 15 U.S.C. § 1115(a). Further, all three (3) of Opposer’s MOTHER’S
`
`registrations have become incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. §
`
`1065.
`
`6.
`
`Collectively, Opposer’s MOTHER’S Marks cover goods including processed hot
`
`and cold cereals, grain cakes and breakfast cereals.
`
`7.
`
`On information and belief, on September 15, 2020, Applicant, Ace Fulfillment
`
`USA, LLC, having an address at 2815 Directors Row, Ste 100 Office 763, Orlando, Florida 32809,
`
`filed Application Serial No. 90/182,585 to register MOTHERFLOUR Design, based on intent to
`
`use the mark in connection with “Flours from nuts and seeds; Processed bran; Processed herbs;
`
`Spices; Grits; Processed bulgur wheat; Kasha; Rice; Tapioca; Cocoa powder; Wheat germ for
`
`human consumption; Gluten free flour; Nut flour and seed flour; Seed meal, namely, flax and
`
`sunflower meal; Granola cereals; muffin mixes; Mixes for baked goods, namely, cake mixes,
`
`muffin mixes, cookie mixes, pizza crust mixes, bread mixes, biscuit mixes, and brownie mixes;
`
`Processed grain; Biscuit mix; Cookie mixes; Pancake and waffle mixes; Bread mixes; Processed
`
`cereals; Cornmeal; Polenta; Couscous; Processed oats; Sugar; Food starch; Baking powder;
`
`Baking soda; Salt; Cooking salt; Processed natural seeds and grains; Breakfast cereals, almond
`
`butter, cashew butter, peanut butter, coconut flour; Natural dairy free sweeteners” in International
`
`Class 30.
`
`8.
`
`Opposer has priority over Applicant because Opposer’s use, application filing dates
`
`and registration dates for the MOTHER’S Marks precede the Applicant’s filing date for its
`
`application-at-issue.
`
`
`
`3
`
`
`
`9.
`
`Applicant’s goods are identical or highly similar to the goods covered by the
`
`MOTHER’S Marks.
`
`10.
`
`The initial and most prevalent portion of Applicant’s mark is MOTHER, which is
`
`identical or highly similar to Opposer’s MOTHER’S Marks.
`
`11.
`
`Applicant’s use of the mark sought to be registered for the goods listed in its
`
`application is barred by the provisions of Section 2(d) of the Trademark Act of 1946 because said
`
`mark consists of or comprises a mark which so resembles Opposer’s MOTHER’S Marks that have
`
`been in use and are also the subject of prior registrations in the United States Trademark Office,
`
`as to be likely, when used in connection with the products of the Applicant to cause confusion,
`
`mistake or deception.
`
`12.
`
`Applicant’s registration and use of the mark sought to be registered will likely dilute
`
`the distinctive quality of Opposer’s MOTHER’S Marks in violation of 15 U.S.C. § 1125(c).
`
`13.
`
`Applicant’s mark so resembles Opposer’s MOTHER’S Marks as to be likely to
`
`cause confusion, to cause mistake or to deceive with consequent injury to Opposer. Persons are
`
`likely to believe that Applicant’s products have their source in Opposer or that Applicant’s
`
`products are in some way legitimately connected or affiliated with, sponsored, approved, endorsed
`
`or licensed by Opposer when, in fact, they are not.
`
`14.
`
`Opposer will be damaged by the issuance of a registration sought by Applicant
`
`within the meaning of 15 U.S.C. § 1063 because such registration would support and assist
`
`Applicant in the confusing, misleading, deceptive and/or dilutive use of Applicant’s MOTHER
`
`FLOUR Design mark and would give color of exclusive statutory rights to Applicant in violation
`
`and derogation of the prior and superior rights of Opposer.
`
`
`
`4
`
`
`
`WHEREFORE, Opposer prays that this opposition be sustained in its favor, that
`
`registration be denied to Applicant on its Application Serial No. 90/182,585, and that the Board
`
`grant all further relief to Opposer that is necessary and just in these circumstances.
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: October 25, 2021
`
`
`
`
`
`Respectfully submitted,
`
`THE QUAKER OATS COMPANY
`
`By: _______________________________
`Janet Silverberg
`Attorney for Opposer
`433 West Van Buren Street
`Suite 350N
`Chicago, Illinois 60607
`Phone: (312) 821-1408
`Email: janet.silverberg@pepsico.com
`
`
`
`
`5
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`: MOTHER FLOUR
`: Ace Fulfillment USA, LLC
`: 90/164,925
`: September 8, 2020
`
`: April 27, 2021
`
`
`In the Matter of Application
`
`
`
`Mark
`
`Applicant
`
`Serial No
`
`Filed
`
`Published in the
`Official Gazette
`
`------------------------------------------------------x
`
`
`
`
`
`
`:
`THE QUAKER OATS COMPANY,
`:
`
`
`
`
`
`
`:
`
`
`Opposer,
`
`
`:
`
`
`
`
`
`
`:
`
`vs.
`
`
`
`
`:
`
`
`
`
`
`
`:
`ACE FULFILLMENT USA, LLC
`
`:
`
`
`
`
`
`
`:
`
`
`Applicant.
`
`
`:
`
`
`
`
`
`
`:
`------------------------------------------------------x
`
`
`Opposition No. _________________
`
`
`
`
`
`
`
`
`
`
`Opposer, The Quaker Oats Company (“Opposer”), a New Jersey corporation, located and
`
`NOTICE OF OPPOSITION
`
`doing business at 433 West Van Buren Street, Suite 350N, Chicago, Illinois 60607, believes that
`
`it will be damaged by the registration of United States Trademark Application Serial No.
`
`90/164,925, filed on September 8, 2020, in the name of Ace Fulfillment USA, LLC (“Applicant”)
`
`for the mark MOTHER FLOUR based on an intent to use the mark in connection with “Flours
`
`from nuts and seeds; Processed bran; Processed herbs; Spices; Grits; Processed bulgur wheat;
`
`Kasha; Rice; Tapioca; Cocoa powder; Wheat germ for human consumption; Gluten free flour; Nut
`
`flour and seed flour; Seed meal, namely, flax and sunflower meal; Granola cereals; muffin mixes;
`
`Mixes for baked goods, namely, cake mixes, muffin mixes, cookie mixes, pizza crust mixes, bread
`
`
`
`1
`
`
`
`mixes, biscuit mixes, and brownie mixes; Processed grain; Biscuit mix; Cookie mixes; Pancake
`
`and waffle mixes; Bread mixes; Processed cereals; Cornmeal; Polenta; Couscous; Processed oats;
`
`Sugar; Food starch; Baking powder; Baking soda; Salt; Cooking salt; Processed natural seeds and
`
`grains; Breakfast cereals, almond butter, cashew butter, peanut butter, coconut flour, Natural dairy
`
`free sweeteners” in International Class 30, and, having been previously granted extensions of time
`
`to oppose, hereby opposes the foregoing application.
`
`
`
`The specific grounds for this Opposition are as follows:
`
`1.
`
`Since at least as early as July 1, 1895, Opposer has been engaged in the
`
`manufacture, advertising, promotion and sale of processed hot and cold cereals and grain cakes
`
`under the MOTHER’S trademark.
`
`2.
`
`Opposer has expanded its product lines under the MOTHER’S trademark to
`
`identify other related products, such as breakfast cereals.
`
`3.
`
`Due to extensive and continuous advertising, sale, use and promotion of these food
`
`products under the MOTHER’S trademark, this mark has not only acquired substantial public and
`
`consumer recognition throughout the United States, but has also enjoyed valuable goodwill, and
`
`become famous since prior to the filing date of the application-at-issue, solely signifying Opposer
`
`as the source of high-quality products.
`
`4.
`
`Opposer registered its MOTHER’S trademark and is the owner of at least three (3)
`
`live United States trademark registrations claimed in Opposer’s Pleaded Marks in the Opposition
`
`filing, each of which incorporates the designation MOTHER’S or variants thereof (hereinafter,
`
`collectively referred to as the “MOTHER’S Marks”).
`
`5.
`
`Opposer’s MOTHER’S Marks are valid, subsisting, in full force and effect, and
`
`serve as evidence of Opposer’s exclusive right to use such marks in commerce on or in connection
`
`
`
`2
`
`
`
`with the goods identified in the registrations, as provided by Section 33(a) of the United States
`
`Trademark (Lanham) Act, 15 U.S.C. § 1115(a). Further, all three (3) of Opposer’s MOTHER’S
`
`registrations have become incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. §
`
`1065.
`
`6.
`
`Collectively, Opposer’s MOTHER’S Marks cover goods including processed hot
`
`and cold cereals, grain cakes and breakfast cereals.
`
`7.
`
`On information and belief, on September 8, 2020, Applicant, Ace Fulfillment USA,
`
`LLC, having an address at 2815 Directors Row, Ste 100 Office 763, Orlando, Florida 32809, filed
`
`Application Serial No. 90/164,925 to register MOTHER FLOUR, based on intent to use the mark
`
`in connection with “Flours from nuts and seeds; Processed bran; Processed herbs; Spices; Grits;
`
`Processed bulgur wheat; Kasha; Rice; Tapioca; Cocoa powder; Wheat germ for human
`
`consumption; Gluten free flour; Nut flour and seed flour; Seed meal, namely, flax and sunflower
`
`meal; Granola cereals; muffin mixes; Mixes for baked goods, namely, cake mixes, muffin mixes,
`
`cookie mixes, pizza crust mixes, bread mixes, biscuit mixes, and brownie mixes; Processed grain;
`
`Biscuit mix; Cookie mixes; Pancake and waffle mixes; Bread mixes; Processed cereals; Cornmeal;
`
`Polenta; Couscous; Processed oats; Sugar; Food starch; Baking powder; Baking soda; Salt;
`
`Cooking salt; Processed natural seeds and grains; Breakfast cereals, almond butter, cashew butter,
`
`peanut butter, coconut flour, Natural dairy free sweeteners” in International Class 30.
`
`8.
`
`Opposer has priority over Applicant because Opposer’s use, application filing dates
`
`and registration dates for the MOTHER’S Marks precede the Applicant’s filing date for its
`
`application-at-issue.
`
`9.
`
`Applicant’s goods are identical or highly similar to the goods covered by the
`
`MOTHER’S Marks.
`
`
`
`3
`
`
`
`10.
`
`11.
`
`Applicant entered a disclaimer of the generic term “FLOUR” in the Application.
`
`Disclaimed matter is generally not regarded as the dominant, or most significant,
`
`feature of a mark, so the most dominant feature of Applicant’s mark is MOTHER, which is
`
`identical or highly similar to Opposer’s MOTHER’S Marks.
`
`12.
`
`Applicant’s use of the mark sought to be registered for the goods listed in its
`
`application is barred by the provisions of Section 2(d) of the Trademark Act of 1946 because said
`
`mark consists of or comprises a mark which so resembles Opposer’s MOTHER’S Marks that have
`
`been in use and are also the subject of prior registrations in the United States Trademark Office,
`
`as to be likely, when used in connection with the products of the Applicant to cause confusion,
`
`mistake or deception.
`
`13.
`
`Applicant’s registration and use of the mark sought to be registered will likely dilute
`
`the distinctive quality of Opposer’s MOTHER’S Marks in violation of 15 U.S.C. § 1125(c).
`
`14.
`
`Applicant’s mark so resembles Opposer’s MOTHER’S Marks as to be likely to
`
`cause confusion, to cause mistake or to deceive with consequent injury to Opposer. Persons are
`
`likely to believe that Applicant’s products have their source in Opposer or that Applicant’s
`
`products are in some way legitimately connected or affiliated with, sponsored, approved, endorsed
`
`or licensed by Opposer when, in fact, they are not.
`
`15.
`
`Opposer will be damaged by the issuance of a registration sought by Applicant
`
`within the meaning of 15 U.S.C. § 1063 because such registration would support and assist
`
`Applicant in the confusing, misleading, deceptive and/or dilutive use of Applicant’s MOTHER
`
`FLOUR mark and would give color of exclusive statutory rights to Applicant in violation and
`
`derogation of the prior and superior rights of Opposer.
`
`
`
`4
`
`
`
`WHEREFORE, Opposer prays that this opposition be sustained in its favor, that
`
`registration be denied to Applicant on its Application Serial No. 90/164,925, and that the Board
`
`grant all further relief to Opposer that is necessary and just in these circumstances.
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: October 25, 2021
`
`
`
`
`
`Respectfully submitted,
`
`THE QUAKER OATS COMPANY
`
`By: _______________________________
`Janet Silverberg
`Attorney for Opposer
`433 West Van Buren Street
`Suite 350N
`Chicago, Illinois 60607
`Phone: (312) 821-1408
`Email: janet.silverberg@pepsico.com
`
`
`
`
`5
`
`
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