Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1176281
`12/03/2021
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Maxnomic GmbH
`
`limited liability company
`
`Citizenship
`
`Germany
`
`WIESENSTRASSE 13 B
`VELLMAR, 34246
`GERMANY
`
`THEODORE R. REMAKLUS
`WOOD, HERRON & EVANS, L.L.P.
`441 VINE STREET
`2700 CAREW TOWER
`CINCINNATI, OH 45202
`UNITED STATES
`Primary Email: tremaklus@whe-law.com
`5132412324
`
`Docket Number
`
`MARCO-11-122
`
`Applicant Information
`
`Application No.
`
`90583097
`
`Publication date
`
`11/23/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`12/03/2021
`
`Opposition Peri-
`od Ends
`
`12/23/2021
`
`XiaoHua Ji
`NO. 208, DAXING VILLAGE,
`CHANGXING TOWN, CHONGMING COUNTY,
`SHANGHAI, 202150
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 020. First Use: 2020/10/24 First Use In Commerce: 2020/10/24
`All goods and services in the class are opposed, namely: Furniture; Living room furniture; Mirrors; Of-
`fice furniture; Outdoor furniture;Patio furniture; Pet furniture; Pictureframes; Seats
`
`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.
`
`4409262
`
`Registration Date
`
`10/01/2013
`
`Application Date
`
`01/09/2013
`
`Foreign Priority
`Date
`
`10/09/2012
`
`

`

`Word Mark
`
`Design Mark
`
`MAXNOMIC
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "MAXNOMIC" in stylized font. The letters
`"MAX" appear in orange lettering and the letters "NOMIC" appear in black letter-
`ing.The color white appears in a horizontalline running across the top portion of
`the letters in the mark.
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Electronic and electrical apparatus, namely, amplifiers and loudspeaker boxes [;
`computers; computer peripheral devices; downloadable computer software for
`use in database management; computer software recorded on CD-ROM for use
`in database management ]
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`[ Office supplies, namely, paper, pens,pencils and staplers; printed matter,
`namely, pamphlets, brochures, newsletters, journals and magazines in the fields
`of computer software, amplifiers, loudspeaker boxes and chairs ]
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`Furniture, namely, office furniture andtheir spare parts [ and accessories,
`namely, mirrors ] ; goods, namely, chairs of wood [, cork, reed, cane, wicker,
`horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum ] and
`substitutes for all these materials, or of plastics
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Retail store services, wholesale store services, online retail store services, elec-
`tronic catalogue services [ and postal mail order catalog services ] featuring [
`computers, computer peripherals, recorded and downloadable computer soft-
`ware for use in database management, officesupplies, namely, paper, pens,
`pencils and staplers, printed matter, namely, pamphlets, brochures, newsletters,
`journals and magazines in the fields of computer software, ] amplifiers, loud-
`speaker boxes and chairs, furniture, electric and electronic apparatus, namely,
`amplifiersand loudspeaker boxes
`
`U.S. Registration
`No.
`
`4409272
`
`Registration Date
`
`10/01/2013
`
`Word Mark
`
`Design Mark
`
`MAXNOMIC
`
`Application Date
`
`01/09/2013
`
`Foreign Priority
`Date
`
`10/09/2012
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Electronic and electrical apparatus, namely, amplifiers and loudspeaker boxes [;
`computers; computer peripheral devices; downloadable computer software for
`use in database management; computer software recorded on CD-ROM for use
`in database management ]
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`[ Office supplies, namely, paper, pens,pencils and staplers; printed matter,
`namely, pamphlets, brochures, newsletters, journals and magazines in the fields
`of computer software amplifiers, loudspeaker boxes and chairs ]
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`
`

`

`Furniture, namely, office furniture andtheir spare parts [ and accessories,
`namely, mirrors] ; goods, namely, chairs of wood [, cork, reed, cane, wicker,
`horn, bone, ivory, whalebone, shell, amber,mother-of-pearl, meerschaum ] and
`substitutes for all these materials, or of plastics
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Retail store services, wholesale store services, online retail store services, elec-
`tronic catalogue services [ and postal mail order catalog ] services featuring [
`computers, computer peripherals, recorded and downloadable computer soft-
`ware for use in database management, officesupplies, namely, paper, pens,
`pencils and staplers, printed matter, namely, pamphlets, brochures, newsletters,
`journals and magazines in the fields of computer software, ] amplifiers, loud-
`speaker boxes and chairs, furniture, electric and electronic apparatus, namely,
`amplifiersand loudspeaker boxes
`
`U.S. Registration
`No.
`
`4409273
`
`Registration Date
`
`10/01/2013
`
`Word Mark
`
`Design Mark
`
`MAXNOMIC
`
`Application Date
`
`01/09/2013
`
`Foreign Priority
`Date
`
`10/08/2012
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Electronic and electrical apparatus, namely, amplifiers and loudspeaker boxes [;
`computers; computer peripheral devices; downloadable computer software for
`use in database management; computer software recorded on CD-ROM for use
`in database management ]
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`[ Office supplies, namely, paper, pens,pencils and staplers; ] printed mat-
`ter,namely, pamphlets, brochures, newsletters, journals and magazines in the
`fieldsof [ computer software, ] amplifiers, loudspeaker boxes and chairs
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`Furniture, namely, office furniture andtheir spare parts [ and accessories,
`namely, mirrors ] ; goods, namely, chairs of wood [, cork, reed, cane, wicker,
`horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and ]
`substitutes for all these materials, or of plastics
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Retail store services, wholesale store services, online retail store services, elec-
`tronic catalogue services and postalmail order catalog services featuring
`[computers, computer peripherals, recorded and downloadable computer soft-
`ware for use in database management, office supplies, namely, paper, pens,
`pencils and staplers, printed matter, namely, pamphlets, brochures, newsletters,
`journals and magazines in the fields of computer software, ] amplifiers, loud-
`speaker boxes and chairs, furniture, electric and electronic apparatus, namely,
`amplifiers andloudspeaker boxes
`
`Attachments
`
`79127223#TMSN.png( bytes )
`79127520#TMSN.png( bytes )
`79127521#TMSN.png( bytes )
`Notice of opposition.pdf(159395 bytes )
`
`

`

`Signature
`
`/theodore r remaklus/
`
`Name
`
`Date
`
`Theodore R. Remaklus
`
`12/03/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`____________________________________)
`Maxnomic GmbH,
`
`
`
`) Opposition No. _____________
` )
`
`
`
`
`Opposer,
`)
`) Application No. 90/583,097
`) Published: November 23, 2021
`
`
`
`
`
`v.
`)
`
`
`
`
`
`
`)
`
`
`
`
`XiaHua Ji,
`) Mark: Hapnomic
`
`
`
`
`
`
`)
`Applicant.
`
`
`
`
`____________________________________)
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`Opposer, Maxnomic GmbH, a German company having a place of business at
`
`Wiesenstrasse 13 B, Vellmar, Germany 34246 ("Opposer"), believes that it will be damaged by
`
`registration of the Haptronic mark of Application No. 90/583,097 for "Furniture; Living room
`
`furniture; Mirrors; Office furniture; Outdoor furniture; Patio furniture; Pet furniture; Picture
`
`frames; Seats" in International Class 20 and hereby opposes the same.
`
`GROUNDS FOR OPPOSITION
`
`
`
`As grounds for this opposition, Opposer alleges as follows:
`
`1. Opposer is the owner of the well-known MAXNOMIC brand of furniture, with a
`
`focus on office, personal and gaming chairs that are sold through many retailers in the US and
`
`worldwide as well as through the website www.needforseat.com. Opposers MAXNOMIC
`
`branded products have been sold in the United States since at least 2013.
`
`2. Opposer is the owner of the following MAXONOMIC bearing federally-registered
`
`trademarks:
`
`1
`
`

`

` Registration No. 4409262 (incontestable), filed on January 9,
`2013 and registered on October 1, 2013
`Class 9 - Electronic and electrical apparatus, namely,
`amplifiers and loudspeaker boxes
`Class 20 - Furniture, namely, office furniture and their spare
`parts; goods, namely, chairs of wood and substitutes for all
`these materials, or of plastics
`Class 35 - Retail store services, wholesale store services,
`online retail store services, electronic catalogue services
`featuring amplifiers, loudspeaker boxes and chairs,
`furniture, electric and electronic apparatus, namely,
`amplifiers and loudspeaker boxes
`
`
` Registration No. 4409272 (incontestable), filed on January 9,
`2013 and registered on October 1, 2013
`Class 9 - Electronic and electrical apparatus, namely,
`amplifiers and loudspeaker boxes
`Class 20 - Furniture, namely, office furniture and their spare
`parts; goods, namely, chairs of wood and substitutes for all
`these materials, or of plastics
`Class 35 - Retail store services, wholesale store services,
`online retail store services, electronic catalogue services
`featuring amplifiers, loudspeaker boxes and chairs,
`furniture, electric and electronic apparatus, namely,
`amplifiers and loudspeaker boxes
`
`
`Registration No. 4409273 (incontestable), filed on January 9,
`2013 and registered on October 1, 2013
`Class 9 - Electronic and electrical apparatus, namely,
`amplifiers and loudspeaker boxes
`Class 20 - Furniture, namely, office furniture and their spare
`parts; goods, namely, chairs of wood and substitutes for all
`these materials, or of plastics
`Class 35 - Retail store services, wholesale store services,
`online retail store services, electronic catalogue services
`featuring amplifiers, loudspeaker boxes and chairs,
`furniture, electric and electronic apparatus, namely,
`amplifiers and loudspeaker boxes
`
`MAXNOMIC
`
`
`Each of the above registrations is valid and subsisting. The above marks are referred to
`
`collective herein as the "MAXNOMIC Marks".
`
`3. Opposer, and its predecessor in interest, have used the MAXNOMIC Marks in the
`
`United States beginning as early as 2013. Since that time, Opposer and its predecessor in interest
`
`
`
`2
`
`

`

`have widely promoted and sold products under the MAXNOMIC Marks. As a result of the long
`
`and continuous use and promotion of the MAXNOMIC Marks, those marks have come to be
`
`associated exclusively with Opposer as identifying products and services emanating from
`
`Opposer.
`
`4. On information and belief, Applicant is XiaoHua Ji, a Chinese citizen, with an
`
`address of No. 208, Daxing Village, Changxing Town, Chongming County, Shanghai China
`
`202150.
`
`5.
`
`On information and belief, Applicant filed use-based Application No. 90/583,097
`
`(hereinafter "the '097 Application") on March 16, 2021 and claiming a first use date of October
`
`24, 2020, for the mark Hapnomic for "Furniture; Living room furniture; Mirrors; Office
`
`furniture; Outdoor furniture; Patio furniture; Pet furniture; Picture frames; Seats" in International
`
`Class 20.
`
`6.
`
`The '097 Application was published for opposition on November 23, 2021. The
`
`present opposition has been timely filed.
`
`7.
`
`Applicant's filing and alleged first use dates are subsequent to Opposer's filing,
`
`registration and use dates for the MAXNOMIC Marks.
`
`8.
`
`Applicant's Hapnomic mark includes the identical and distinctive suffix
`
`"NOMIC" as in Opposer's MAXNOMIC Marks. While the initial letters of the Applicant's mark
`
`differ from those of Opposer's MAXNOMIC mark, the overall appearance and commercial
`
`impression of Applicant's Hapnomic mark is substantially the same as and confusingly-similar to
`
`the MAXNOMIC Marks.
`
`9.
`
`The goods of the '097 Application are the same as or highly related to the goods
`
`and services that are the subject of the MAXNOMIC Marks.
`
`
`
`3
`
`

`

`10.
`
`The goods of the '097 Application are or will be sold under Applicant's Hapnomic
`
`mark to the same types of consumers and through the same or similar channels of trade as the
`
`consumers of the goods and services under Opposer's MAXNOMIC Marks.
`
`11.
`
`As a result of the similarity of the marks, the goods/services, the consumers and
`
`the channels of trade, the use by Applicant of the Hapnomic mark will likely cause confusion or
`
`cause mistake or deceive consumers by creating the false impression that Applicant's goods
`
`originate with or are from the same source as Opposer's goods/services, or are endorsed by,
`
`sponsored by, or otherwise connected or affiliated in some way with Opposer and its
`
`MAXNOMIC Marks.
`
`12.
`
`Applicant is not entitled to use or register the Hapnomic mark for the opposed
`
`goods.
`
`13.
`
`Under Section 7(b) of the Lanham Act, 15 U.S.C. § 1057(b), if a certificate of
`
`registration were to issue to Applicant it would be prima facie evidence of, among other things,
`
`its right to use the mark in commerce on the opposed goods, and such use would be likely to
`
`cause confusion, or to cause mistake, or to deceive purchasers by reason of the similarity thereof
`
`to Opposer's MAXNOMIC Marks.
`
`
`
`
`
`
`
`
`4
`
`

`

`WHEREFORE, Opposer believes that it will be damaged by registration of Applicant's
`
`OP Stylized Mark and prays that the '097 Application be refused and registration denied.
`
`Date: December 3, 2021
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Maxnomic GmbH
`
`
` By: /s/ Theodore R. Remaklus
`Theodore R. Remaklus
`tremaklus@whe-law.com
`WOOD, HERRON & EVANS, L.L.P.
`2700 Carew Tower
`441 Vine Street
`Cincinnati, Ohio 45202-2917
`(513) 241-2324
`(513) 241-6234 (Facsimile)
`
`Attorneys for Opposer
`Maxnomic GmbH
`
`
`
`5
`
`