Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1185724
`01/20/2022
`
`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
`
`Z-Tuff Products, Inc.
`
`Corporation
`
`Citizenship
`
`Maryland
`
`615 LOFSTRAND LANE
`ROCKVILLE, MD 20850
`UNITED STATES
`
`MIRIAM RICHTER
`RICHTER TRADEMARKS, P.L.
`2312 WILTON DRIVE, SUITE 9
`WILTON MANORS, FL 33305
`UNITED STATES
`Primary email: mrichter@RichterTrademarks.com
`954-977-4711
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`90052461
`
`Opposition filing
`date
`
`Applicant
`
`01/20/2022
`
`Griffin, Rodney
`1229 W. STATE STREET
`1229 W. STATE STREET
`ONTARIO, CA 91762
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`12/21/2021
`
`Opposition period
`ends
`
`01/20/2022
`
`Class 003. First Use: 2015/04/05 First Use In Commerce: 2015/04/05
`All goods and services in the class are opposed, namely: Polishing rouge; Polishing, scouring and
`abrasive preparations; Shining preparations being polish; Automobile polish; Automobile polishes;
`Automobile tire cleaning and polishing preparations; Car polish; Chrome polish; Cleaning, polishing
`and scouring preparations; Cleaning, washing and polishing preparations; Metal polishes; Metal pol-
`ishing and cleaning preparations
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Applicant not rightful owner of mark for identified
`goods or services
`
`Trademark Act Section 1
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`
`4291599
`
`Application date
`
`06/07/2012
`
`
`
`no.
`
`Register
`
`Principal
`
`Registration date
`
`02/19/2013
`
`Word mark
`
`Design mark
`
`Z
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a black square, with a diamond plate design in grey, with a
`stylized letter "Z" in yellow. The "Z"also has a grey diamond plate design. The
`"Z" is centered horizontally in the square and slightly above center vertically.
`Both the letter "Z" and the background have one stylized grey rivet in all four
`corners. There are eight rivets total. The grey rivets in the letter "Z" have a black
`outline. The "Z" has a thin white outline.
`
`Class 003. First use: First Use: 2009/10/00 First Use In Commerce: 2009/10/00
`cleaning and polishing preparations foruse on recreational vehicles, automo-
`biles, and boats
`
`Attachments
`
`85645931#TMSN.png( bytes )
`Ntc of Opposition - TeamZShine.pdf(304831 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Miriam Richter/
`
`Miriam Richter
`
`01/20/2022
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. _________________
`
`In the matter of:
`
`Application SN:
`Mark:
`Filed:
`Published:
`
`90-052,461
`TEAMZSHINE
`July 14, 2020
`December 21, 2021
`
`§ § § § § § § § § § § §
`
`Z-TUFF PRODUCTS, INC.
`a Maryland corporation,
`
`Opposer
`
`v.
`
`RODNEY GRIFFIN, dba ZEPHYR
`SALES CO., a California corporation
`
`Applicant
`
`NOTICE OF OPPOSITION
`
`The Opposer Z-TUFF PRODUCTS, INC., a Maryland corporation, (“Z-Tuff”) by and
`
`through its undersigned counsel, hereby files this Opposition to the Registration of application
`
`serial number 90-052,461 for the mark TEAMZSHINE, for Polishing rouge; Polishing, scouring
`
`and abrasive preparations; Shining preparations being polish; Automobile polish; Automobile
`
`polishes; Automobile tire cleaning and polishing preparations; Car polish; Chrome polish;
`
`Cleaning, polishing and scouring preparations; Cleaning, washing and polishing preparations;
`
`Metal polishes; Metal polishing and cleaning preparations in International Class 003, by
`
`Applicant RODNEY GRIFFIN, dba ZEPHYR SALES CO., a California corporation, and states
`
`as follows:
`
`1.
`
`Opposer Z-Tuff is the owner of a valid, subsisting, and incontestable U.S. federal
`
`trademark registration for Z and design on the Principal Register, registration number 4291599,
`
`for cleaning and polishing preparations for use on recreational vehicles, automobiles, and boats
`
`(“Z mark”).
`
`2.
`
`Since at least 2009, Z-Tuff has continuously used the Z mark in interstate commerce, for
`
`
`
`cleaning and polishing preparations for use on recreational vehicles, automobiles, and boats.
`
`3.
`
`Since 2009, Opposer Z-Tuff has expended considerable sums in advertising, promoting,
`
`marketing, and otherwise developing the Z mark.
`
`4.
`
`Applicant’s mark is confusingly similar to Opposer’s mark, in both appearance, sound,
`
`connotation, trade channels, and commercial impression.
`
`5.
`
`6.
`
`Opposer’s Z mark has the letter Z as the prominent portion of the mark.
`
`Applicant’s proposed mark uses the Z as the dominant portion of its mark as shown in its
`
`specimen of record:
`
`7.
`
`This is highly likely to lead to consumer confusion, mislead consumers regarding the
`
`source of the goods, and mistakenly imply a connection with Opposer Z-Tuff.
`
`8.
`
`Opposer’s mark covers cleaning and polishing preparations for recreational vehicles,
`
`automobiles, and boats and Applicant’s goods directly overlap with Opposer’s goods and are
`
`therefore identical.
`
`9.
`
`Opposer’s consumers are members of the general public and Applicant’s consumers can
`
`be assumed to be the general public as well. Therefore, Applicant’s goods will be advertised and
`
`sold to similar, if not identical consumers, and through the same channels of trade. This is likely
`
`2
`
`
`
`to cause consumers to be confused, deceived, or misled into the mistaken belief that Applicant’s
`
`goods are affiliated with or emanate from Opposer.
`
`10.
`
`Additionally, Applicant’s name and entity type are inconsistent. Applicant has indicated
`
`an individual’s name as the owner of the mark but designated a corporation as the entity type. As
`
`this is not legally tenable, registration of the mark must be refused because the application is
`
`void as filed per 37 C.F.R. §2.71(d).
`
`11.
`
`Further, the registration of Applicant’s mark would prevent Opposer from exercising
`
`exclusive control over the goodwill and reputation associated with the Z mark and therefore, the
`
`registration of Applicant’s mark would damage and injure Opposer.
`
`12.
`
`Opposer will also be damaged by the registration of Applicant’s mark because such
`
`registration will support statutory rights for the Applicant in violation and derogation of
`
`Opposer’s prior, superior, and exclusive rights in the Z mark.
`
`13.
`
`In view of the foregoing, issuance of a registration to the Applicant for the opposed mark
`
`will be damaging to Opposer within the meaning of 15 U.S.C. §1063.
`
`WHEREFORE, Opposer Z-Tuff respectfully requests that Application No. 90-052,461 be
`
`refused, that no registration be issued to Applicant, and that this opposition be sustained in favor
`
`of Opposer.
`
`DATED: January 20, 2022
`
`Respectfully submitted,
`
`MIRIAM RICHTER, ATTORNEY AT LAW, P.L.
`ATTORNEY FOR OPPOSER
`2312 WILTON DRIVE, SUITE 9
`WILTON MANORS, FLORIDA 33305
`TELEPHONE: 954-977-4711
`FACSIMILE:
`954-977-4717
`EMAIL: MRICHTER@RICHTERTRADEMARKS.COM
`
` /s/ Miriam Richter, Esq.
`MIRIAM RICHTER
`FLORIDA BAR NO. 44831
`
`3
`
`
