Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1186044
`01/21/2022
`
`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
`
`Docket no.
`
`Kimberly-Clark Worldwide, Inc.
`01/23/2022
`
`2300 WINCHESTER ROAD
`NEENAH, WI 54956
`UNITED STATES
`
`DONNA F. SCHMITT
`ARMSTRONG TEASDALE LLP
`7700 FORSYTH BOULEVARD, SUITE 1800
`ST. LOUIS, MO 63105
`UNITED STATES
`Primary email: iptm@atllp.com
`Secondary email(s): dschmitt@atllp.com, aharris@atllp.com,
`kmowery@atllp.com
`314-621-5070
`35180-54
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`90405103
`01/21/2022
`
`Publication date
`Opposition period
`ends
`
`07/27/2021
`01/23/2022
`
`Yugang,Zhou
`NO. 37, TIYU ROAD, CHENGXIANG STREET
`XIAOSHAN DISTRICT, HANGZHOU
`ZHEJIANG, 311201
`CHINA
`Goods/services affected by opposition
`
`Class 005. First Use: 2020/09/12 First Use In Commerce: 2020/09/12
`All goods and services in the class are opposed, namely: Alcohol for medicinal purposes; Anti-
`inflammatory ointments; Anti-insect spray;Antibacterial hand lotions; Antimicrobial preparations for in-
`hibiting microbiological decomposition in food, beverages,animal feed and pharmaceuticals; Bever-
`ages containing chlorophyll for use as a nutritional supplement; Deodorizing products, namely, all
`purpose deodorizer preparations for household, commercial and industrial use; Diapers for incontin-
`ents; Dietary supplements; Dietary and nutritional supplements; Disinfectants; Disinfectants for med-
`ical instruments; Eye drops; Food for babies; Glycerine for medical purposes; Hemorrhoidal oint-
`ments; Infant cloth diapers; Insecticides; Maltedmilk beverages for medical purposes; Meal replace-
`ment bars for weight loss purposes; Medicated baby powders; Nutritional supplement meal replace-
`ment bars for boosting energy; Nutritional supplements;Sanitary towels; Sanitizing preparations for
`household use; Sanitizing wipes; Soy protein dietary supplements
`
`

`

`Grounds for opposition
`
`Priority and likelihood of confusion
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`Trademark Act Section 2(d)
`Trademark Act Section 2(a)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`Registration date
`
`4501850
`
`Principal
`03/25/2014
`
`Word mark
`Design mark
`
`U
`
`Application date
`
`09/18/2013
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`The mark consists of the letter "u" contained within a black circle.
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`Feminine hygiene pads; Panty liners
`
`U.S. registration
`no.
`Register
`Registration date
`
`4279956
`
`Principal
`01/22/2013
`
`Word mark
`
`U BY KOTEX
`
`Application date
`
`07/18/2012
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`Goods/services
`
`The mark consists of the letter "U" appearing above the words "by Kotex".
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`Feminine care products, namely, sanitary napkins, pantiliners and tampons
`
`U.S. registration
`no.
`Register
`Registration date
`
`5814107
`
`Principal
`07/23/2019
`
`Word mark
`Design mark
`
`U BY KOTEX
`
`Application date
`
`07/25/2017
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`Goods/services
`
`The mark consists of the words "U BY KOTEX" in the color white inside a black
`circle.
`Class 005. First use: First Use: 2019/01/01 First Use In Commerce: 2019/01/01
`Panty liners; Sanitary pads; Tampons
`
`U.S. registration
`no.
`Register
`Registration date
`
`6294839
`
`Principal
`03/16/2021
`
`Word mark
`Design mark
`
`U BY KOTEX
`
`Application date
`
`08/05/2020
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the words "U BY KOTEX" in the color white with the letter
`"o" in pink and the letter "t" in red and combined to resemble the female biologic-
`al symbol, all of which is surrounded by a black circle with a pink and red border.
`Class 005. First use: First Use: 2019/01/01 First Use In Commerce: 2019/01/01
`Tampons; Panty liners; Sanitary pads
`
`U.S. registration
`no.
`Register
`Registration date
`
`3832437
`
`Principal
`08/10/2010
`
`Word mark
`
`U BY KOTEX
`
`Application date
`
`05/19/2008
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`FEMININE SANITARY NAPKINS, FEMININE HYGIENE PADS, PANTY LINERS
`AND TAMPONS
`
`U.S. registration
`no.
`Register
`Registration date
`
`3835809
`
`Principal
`08/17/2010
`
`Word mark
`Design mark
`
`U BY KOTEX ALLNIGHTER
`
`Application date
`
`12/02/2008
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`
`NONE
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`Sanitary pads
`
`3822734
`
`Application date
`
`01/22/2009
`
`Principal
`07/20/2010
`
`Foreign priority
`date
`U BY KOTEX BARELY THERE
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`Panty liners
`
`U.S. registration
`no.
`Register
`Registration date
`
`3835758
`
`Principal
`08/17/2010
`
`Word mark
`Design mark
`
`U BY KOTEX CLICK
`
`Application date
`
`10/29/2008
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`TAMPONS
`
`U.S. registration
`no.
`Register
`Registration date
`
`3835808
`
`Principal
`08/17/2010
`
`Word mark
`
`U BY KOTEX CURVES
`
`Application date
`
`12/02/2008
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: 2010/03/28 First Use In Commerce: 2010/03/28
`Panty liners
`
`U.S. registration
`no.
`Register
`Registration date
`
`4040815
`
`Principal
`10/18/2011
`
`Word mark
`Design mark
`
`U BY KOTEX TWEEN
`
`Application date
`
`10/14/2010
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: 2011/02/28 First Use In Commerce: 2011/02/28
`SANITARY PADS AND PANTILINERS
`
`U.S. registration
`no.
`Register
`Registration date
`
`5756804
`
`Principal
`05/21/2019
`
`Application date
`
`10/05/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`WITH U BY KOTEX SHE CAN
`
`

`

`Design mark
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 036. First use: First Use: 2018/05/01 First Use In Commerce: 2018/05/01
`Charitable services in the nature of coordination of the procurement and distribu-
`tion of donated period products, namely, sanitary pads and tampons, to women
`in need; promoting public awareness on the need for women's period products
`through public advocacy
`
`U.S. registration
`no.
`Register
`Registration date
`
`5891435
`
`Principal
`10/22/2019
`
`Application date
`
`06/13/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`
`WITH U BY KOTEX SHE CAN
`
`Description of
`mark
`Goods/services
`
`Attachments
`
`NONE
`
`Class 005. First use: First Use: 2019/01/01 First Use In Commerce: 2019/01/01
`Panty liners; Sanitary pads; Tampons
`
`86068039#TMSN.png( bytes )
`85679983#TMSN.png( bytes )
`87542293#TMSN.png( bytes )
`90094854#TMSN.png( bytes )
`77478145#TMSN.png( bytes )
`77624444#TMSN.png( bytes )
`77654591#TMSN.png( bytes )
`77603186#TMSN.png( bytes )
`77624351#TMSN.png( bytes )
`85152401#TMSN.png( bytes )
`88144594#TMSN.png( bytes )
`88471477#TMSN.png( bytes )
`
`

`

`Notice of Opposition with Exhibits 21JAN2022-51849702.pdf(1260623 bytes )
`
`Signature
`Name
`Date
`
`/Donna F. Schmitt/
`DONNA F. SCHMITT
`01/21/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Kimberly-Clark Worldwide, Inc.,
`
`v.
`
`Zhou Yugang,
`
`Opposer,
`
`Applicant.
`
`)
`
`)
`) Opposition No. ________
`)
`)
`)
`)
`)
`)
`
` Mark: USCORED
`
` Application No. 90/405,103
`
`NOTICE OF OPPOSITION
`
`Opposer, Kimberly-Clark Worldwide, Inc. (hereinafter “Opposer”), a Wisconsin
`
`corporation having a place of business at 2300 Winchester Road, Neenah, Wisconsin 54956,
`
`believes that it will be damaged by registration on the Principal Register of the purported mark,
`
`USCORED, in International Class 5 (the “USCORED Mark”), as identified in U.S. Trademark
`
`Application Serial No. 90/405,103, which was published for opposition on July 27, 2021 (the
`
`“Subject Application”).
`
`As grounds for this Notice of Opposition, Opposer states as follows:
`
`1.
`
`Opposer’s filing of this Notice of Opposition is timely under 37 C.F.R. § 2.101.
`
`The Subject Application published for opposition in the Official Gazette on July 27, 2021. On
`
`August 26, 2021, the U.S. Patent and Trademark Office granted Opposer an extension of time to
`
`oppose the Subject Application through and until September 25, 2021. On September 15, 2021,
`
`the U.S. Patent and Trademark Office granted Opposer an additional extension of time to oppose
`
`the Subject Application through and until November 24, 2021. On November 19, 2021, the U.S.
`
`Patent and Trademark Office granted Opposer an additional extension of time to oppose the
`
`Subject Application through and until January 23, 2022. This Notice of Opposition is being filed
`
`on or before the January 23, 2022 deadline to oppose.
`
`

`

`2.
`
`For many years, and since long before Applicant filed for registration of the
`
`USCORED Mark, Opposer1 has been engaged in the manufacture, advertising, promotion, and
`
`sale of a wide variety of absorbent articles for personal hygiene, including but not limited to
`
`feminine protection pads, sanitary napkins, sanitary pads, tampons, panty liners, incontinence
`
`pads and undergarments, and other related products and services (the “Opposer’s Goods &
`
`Services”). As a result, Opposer is a well-known source of these goods and services.
`
`3.
`
`Since long before the Subject Application seeking registration of the USCORED
`
`Mark, as well as any actual or constructive first use of same, Opposer has continuously used, and
`
`presently uses, various trademarks including the designation “U” together with other words
`
`and/or design elements (the “U Marks”), in interstate commerce throughout the United States
`
`and beyond in connection with the advertising, promotion, distribution, and sale of Opposer’s
`
`Goods & Services.
`
`4.
`
`5.
`
`Opposer has used the U Marks since at least as early as 2010.
`
`The relevant consumers of the Applicant’s Goods (as defined below) are likely to
`
`recognize that the designation “U” points uniquely and unmistakably to Opposer, given the long,
`
`widespread, and extensive use of the U Marks in connection with the Opposer’s Goods &
`
`Services.
`
`6.
`
`Opposer owns federal trademark registrations on the Principal Register for use in
`
`connection with personal hygiene products such as incontinence pads, feminine protection pads,
`
`sanitary napkins, tampons, and panty liners, that include the “U” designation, together with all
`
`the right, title, interest, and goodwill associated therewith, as shown below (see also Exhibits 1–
`
`12):
`
`1 Kimberly-Clark was founded in 1872 in Neenah, Wisconsin.
`
`2
`
`

`

`Mark
`
`Reg. No.
`
`Reg. Date
`
`Goods/Services
`
`4501850
`
`March 25, 2014
`
`Int'l Class: 05: feminine hygiene pads;
`panty liners
`
`4279956
`
`January 22,
`2013
`
`Int'l Class: 05: feminine care products,
`namely, sanitary napkins, pantiliners and
`tampons
`
`5814107
`
`July 23, 2019
`
`Int'l Class: 05: Panty liners; Sanitary pads;
`Tampons
`
`6294839
`
`March 16, 2021
`
`Int'l Class: 05: Tampons; Panty liners;
`Sanitary pads
`
`U BY KOTEX
`
`3832437
`
`August 10,
`2010
`
`Int'l Class: 05: feminine sanitary napkins,
`feminine hygiene pads, panty liners and
`tampons
`
`U BY KOTEX
`ALLNIGHTER
`
`3835809
`
`August 17,
`2010
`
`Int'l Class: 05: sanitary pads
`
`U BY KOTEX BARELY
`THERE
`
`3822734
`
`July 20, 2010
`
`Int'l Class: 05: panty liners
`
`U BY KOTEX CLICK
`
`3835758
`
`U BY KOTEX CURVES
`
`3835808
`
`U BY KOTEX TWEEN
`
`4040815
`
`August 17,
`2010
`
`August 17,
`2010
`
`October 18,
`2011
`
`Int'l Class: 05: tampons
`
`Int'l Class: 05: panty liners
`
`Int'l Class: 05: sanitary pads and pantiliners
`
`WITH U BY KOTEX
`SHE CAN
`
`5756804
`
`May 21, 2019
`
`Int'l Class: 36: Charitable services in the
`nature of coordination of the procurement
`and distribution of donated period products,
`
`3
`
`

`

`Mark
`
`Reg. No.
`
`Reg. Date
`
`Goods/Services
`
`namely, sanitary pads and tampons, to
`women in need; promoting public
`awareness on the need for women's period
`products through public advocacy
`
`WITH U BY KOTEX
`SHE CAN
`
`5891435
`
`October 22,
`2019
`
`Int'l Class: 05 Panty liners; Sanitary pads;
`Tampons
`
`7.
`
`Registrations for all of the U Marks are valid, subsisting, and in full force and
`
`effect, and serve as prima facie evidence of Opposer’s ownership of the listed marks and its
`
`exclusive right to use each of the marks.
`
`8.
`
`In addition, several of the registrations are incontestable as to all listed goods and
`
`services pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065. Accordingly, the
`
`registrations are conclusive evidence of Opposer’s exclusive right to the registered marks in
`
`commerce on or in connection with the goods and services stated in the registrations, as provided
`
`by Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b).
`
`9.
`
`By virtue of the extensive use, advertising, promotion, distribution, and sale of
`
`Opposer’s Goods & Services over many years, the U Marks have come to be widely recognized
`
`as identifying products sourced from, or otherwise associated with, Opposer, and have come to
`
`represent the substantial goodwill of Opposer.
`
`10.
`
`Indeed, the U brand has become indelibly linked in the minds of the trading and
`
`general public with quality goods from Opposer. The U Marks have become valuable assets of
`
`Opposer, and in doing so, continuously distinguish Opposer’s Goods & Services from the goods
`
`and services of others.
`
`11.
`
`The U Marks have appeared on products, product packaging, point-of-sale
`
`displays, promotional materials, and advertisements for Opposer’s Goods & Services since the
`
`4
`
`

`

`inception of the brand.
`
`12.
`
`Opposer has invested significant time, effort, and resources in promoting the U
`
`Marks and ensuring the high quality of goods provided under the U brand.
`
`13.
`
`Because of the high degree of inherent and acquired distinctiveness of the U
`
`Marks, the length of time and extent to which Opposer has used the U Marks, the vast amount of
`
`advertising and publicity featuring the U Marks, the substantial territory in which the U Marks
`
`have been and continue to be used, and the high degree of consumer recognition of the U Marks,
`
`the designation “U” is a well-known trademark widely recognized by the general consuming
`
`public as a designation of the source of Opposer’s Goods & Services, and has been deserving of
`
`a broad scope of legal protection long before any actual or constructive use that may be claimed
`
`by Applicant.
`
`14.
`
`Upon information and belief, Applicant, Zhou Yugang, is an individual in China
`
`with an address of No. 37, Tiyu Road, Chengxiang Street, Xiaoshan District, Hangzhou,
`
`Zhejiang, China 311201.
`
`15.
`
`As a matter of law, based on Opposer’s federal trademark registrations for the U
`
`Marks, Applicant was deemed on constructive notice of Opposer’s rights in those marks.
`
`16.
`
`The Subject Application opposed herein was filed on December 23, 2020, as an
`
`application based on use of the USCORED Mark in commerce under Section 1(a).
`
`17.
`
`As stated herein, Opposer has used the U Marks since at least as early as 2010.
`
`18.
`
`Therefore, Applicant is unable to establish priority of use or priority of rights in
`
`the United States for the USCORED Mark relative to Opposer’s use of its U Marks.
`
`19.
`
`Applicant seeks to register the standard character mark, USCORED, for use in
`
`connection with “Alcohol for medicinal purposes; Anti-inflammatory ointments; Anti-insect
`
`5
`
`

`

`spray; Antibacterial hand lotions; Antimicrobial preparations for inhibiting microbiological
`
`decomposition in food, beverages, animal feed and pharmaceuticals; Beverages containing
`
`chlorophyll for use as a nutritional supplement; Deodorizing products, namely, all purpose
`
`deodorizer preparations for household, commercial and industrial use; Diapers for incontinents
`
`[sic]; Dietary supplements; Dietary and nutritional supplements; Disinfectants; Disinfectants for
`
`medical instruments; Eye drops; Food for babies; Glycerine for medical purposes; Hemorrhoidal
`
`ointments; Infant cloth diapers; Insecticides; Malted milk beverages for medical purposes; Meal
`
`replacement bars for weight loss purposes; Medicated baby powders; Nutritional supplement
`
`meal replacement bars for boosting energy; Nutritional supplements; Sanitary towels; Sanitizing
`
`preparations for household use; Sanitizing wipes; Soy protein dietary supplements” in
`
`International Class 5 (the “Applicant’s Goods”).
`
`20.
`
`Opposer is not connected or affiliated with Applicant, Applicant’s Goods, the
`
`Subject Application, or the USCORED Mark.
`
`21.
`
`On information and belief, Applicant’s Goods—including Applicant’s absorbent
`
`articles for personal hygiene and sanitary care, such as diapers for incontinence, sanitary towels,
`
`and sanitizing wipes—and Opposer’s Goods & Services—including Opposer’s absorbent articles
`
`for personal hygiene and sanitary care, such as sanitary napkins, feminine protection pads,
`
`tampons, panty liners, and related goods and services—are functionally identical or otherwise
`
`related; are offered through the same and/or related channels of trade; are offered to the same
`
`and/or related classes of purchasers; and are advertised, marketed and promoted through the
`
`same and/or related media channels.
`
`22.
`
`To illustrate, Opposer’s Goods & Services center around absorbent articles for
`
`personal hygiene and sanitary care needs. As demonstrated by the table above, Opposer
`
`6
`
`

`

`manufactures, sells, and promotes products in the realm of sanitary, personal hygiene care,
`
`including sanitary pads, sanitary napkins, and panty liners—all with the U Marks.
`
`23.
`
`Applicant seeks registration of the USCORED Mark for goods that are identical
`
`or related to Opposer’s Goods & Services.
`
`24.
`
`Specifically, the Subject Application seeks registration of the USCORED Mark
`
`for use in conjunction with various goods, including diapers for incontinence—goods that are
`
`virtually identical to those listed in the registrations for the U Marks, such as sanitary pads,
`
`feminine protection pads, and panty liners, as all of these goods are absorbent articles worn on or
`
`adjacent to the body for the purpose of personal hygiene, i.e., the absorption of bodily fluids.
`
`25.
`
`The Subject Application also seeks registration of the USCORED Mark for use
`
`with sanitary towels and sanitizing wipes, which are related goods to Opposer’s Goods &
`
`Services offered in connection with the U Marks. Opposer even offers all of these goods—
`
`sanitary towels and sanitizing wipes, as offered by Applicant under the USCORED Mark, and
`
`sanitary pads, sanitary napkins, and panty liners, as offered by Opposer under the U Marks—
`
`under its POISE brand. See, e.g., Exhibit 13 (USPTO records for U.S. Trademark Registration
`
`Nos. 0416435, 1670716, 4613915, 4218444, and 6412238).
`
`26.
`
`Further, Opposer and Applicant market to the same consumers, including, among
`
`others, females and other individuals with personal care, hygiene, and sanitary preparation needs.
`
`27.
`
` Opposer primarily markets Opposer’s Goods & Services to adults who
`
`experience incontinence and/or females who menstruate.
`
`28.
`
`Upon information and belief, Applicant similarly markets to adults who
`
`experience incontinence and/or females who menstruate.
`
`29. Moreover, upon information and belief, Opposer and Applicant both advertise and
`
`7
`
`

`

`sell their products via the internet. Opposer is unaware of whether Applicant sells in brick-and-
`
`mortar establishments.
`
`30.
`
`Both the USCORED Mark and the U Marks include and emphasize a letter “U”
`
`over other elements in the mark, rendering their overall commercial impressions similar.
`
`31. When encountering the USCORED Mark, consumers would presume a
`
`connection between Applicant and Opposer because of, inter alia, the high degree of similarity
`
`between the marks, the goods and services at issue, the consumers at issue, and the channels of
`
`trade at issue.
`
`COUNT I: CLAIM FOR RELIEF UNDER 15 U.S.C. § 1052(a)
`(False Suggestion of Connection or Affiliation)
`
`32.
`
`Opposer incorporates by reference the preceding paragraphs of this Notice of
`
`Opposition as if fully set forth herein.
`
`33.
`
`Both the USCORED Mark and the U Marks include and emphasize a letter “U”
`
`over other elements in the mark.
`
`34.
`
`The USCORED Mark and the U Marks are used in connection with identical or
`
`otherwise related products. personal care and hygiene products, such as sanitary pants, sanitary
`
`napkins, and incontinence garments—that serve identical functions—sanitary and menstruation
`
`needs.
`
`35.
`
`Applicant’s Goods, specifically diapers for incontinence, are virtually identical to
`
`Opposer’s Goods & Services, such as sanitary pads, feminine protection pads, and panty liners,
`
`as all of these goods are absorbent articles that serve identical functions—they are worn on or
`
`adjacent to the body for the purpose of personal hygiene, i.e., the absorption of bodily fluids.
`
`36.
`
`Additionally, the remainder of Applicant’s Goods, specifically sanitary towels
`
`and sanitizing wipes, are related goods to Opposer’s Goods & Services, as Opposer even offers
`
`8
`
`

`

`all of the goods at issue under its POISE brand. See Exhibit 13.
`
`37.
`
`The relevant consumers of the Applicant’s Goods are likely to recognize that the
`
`designation “U” points uniquely and unmistakably to Opposer, given the long, widespread, and
`
`extensive use of the U Marks in connection with Opposer’s Goods & Services, as set forth
`
`herein.
`
`38.
`
`The relevant consumers, when encountering the USCORED Mark, would
`
`presume a connection between Applicant and Opposer due to the high degree of similarity
`
`between the USCORED Mark and the U Marks, and due further to their use on functionally
`
`identical and/or closely related goods.
`
`39.
`
`Opposer and Applicant also market to the same consumers, including, among
`
`others, females and other individuals with menstruation and incontinence needs.
`
`40.
`
`Additionally, both Opposer and Applicant operate in the same channels of trade—
`
`both market and sell their respective products online.
`
`41.
`
`As mentioned above, Opposer is not connected or affiliated with Applicant,
`
`Applicant’s Goods, the Subject Application, or the USCORED Mark.
`
`42.
`
`Applicant’s USCORED Mark falsely suggests a connection or affiliation with
`
`Opposer in violation of Section 2(a) of the Lanham Act, and Applicant is therefore not entitled to
`
`registration of the USCORED Mark.
`
`43.
`
`By reason of the foregoing, Opposer will be damaged by the registration of the
`
`USCORED Mark to Applicant.
`
`COUNT II: CLAIM FOR RELIEF UNDER 15 U.S.C. § 1052(d)
`(Likelihood of Confusion)
`
`44.
`
`Opposer incorporates by reference the preceding paragraphs of this Notice of
`
`Opposition as if fully set forth herein.
`
`9
`
`

`

`45.
`
`Opposer’s rights in the U Marks were established in connection with Opposer’s
`
`Goods & Services long prior to the filing date of the Subject Application as well as any actual or
`
`constructive first use of the USCORED Mark in connection with Applicant’s Goods.
`
`46.
`
`The U Marks have long designated Opposer’s Goods & Services.
`
`47.
`
`Both the U Marks and the USCORED Mark contain a similar primary attribute—
`
`an emphasized letter “U.”
`
`48.
`
`The Subject Application seeks registration for goods that are identical or related
`
`to Opposer’s Goods & Services and for which Opposer has consistently and continuously used
`
`the U Marks.
`
`49.
`
`Consumers would easily confuse Applicant’s products as being from or otherwise
`
`connected to Opposer.
`
`50.
`
`Applicant’s use of the proposed trademark, USCORED, for functionally identical
`
`and/or related goods is likely to create the erroneous impression that Applicant’s Goods originate
`
`from or are otherwise associated with Opposer, that Opposer is responsible for the Applicant’s
`
`Goods, or that Applicant’s use of “USCORED” is endorsed by or is in some way connected with
`
`Opposer, all to Opposer’s injury and harm.
`
`51.
`
`Registration of the USCORED Mark in connection with Applicant’s Goods is
`
`likely to cause confusion, cause mistake, or to deceive the public into the false belief that the
`
`goods offered by Applicant under the USCORED Mark come from or are otherwise sponsored
`
`by or connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d).
`
`52.
`
`By reason of the foregoing, Opposer will be damaged by the registration of the
`
`USCORED Mark to Applicant.
`
`10
`
`

`

`WHEREFORE, Opposer respectfully requests that registration of the mark applied for in
`
`U.S. Trademark Application Serial No. 90/405,103 be refused, and that this Opposition be
`
`sustained in Opposer’s favor.
`
`Opposer requests such other and further relief as the Board may deem just and proper.
`
`Date: January 21, 2022
`
`Respectfully submitted,
`
`ARMSTRONG TEASDALE LLP
`
` /s/ Donna F. Schmitt
`Donna F. Schmitt
`7700 Forsyth Boulevard, Suite 1800
`St. Louis, Missouri 63105
`(314) 621-5070
`dschmitt@atllp.com
`
`Alec P. Harris
`4643 South Ulster Street, Suite 800
`Denver, Colorado 80237
`(720) 200-0676
`aharris@atllp.com
`
`Kristen H. Mowery
`2005 Market Street, 29th Floor
`Philadelphia, Pennsylvania 19103
`(267) 780-2000
`kmowery@atllp.com
`
`Attorneys for Opposer,
`Kimberly-Clark Worldwide, Inc.
`
`11
`
`

`

`Exhibit 1
`Exhibit 1
`
`

`

`Generated on: This page was generated by TSDR on 2021-12-06 18:01:45 EST
`
`Mark: U
`
`US Serial Number: 86068039
`
`US Registration
`Number:
`
`4501850
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Sep. 18, 2013
`
`Registration Date: Mar. 25, 2014
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: May 02, 2019
`
`Publication Date:Jan. 07, 2014
` 
`
`Mark Literal
`Elements:
`
`Standard Character
`Claim:
`
`U
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of the letter "u" contained within a black circle.
`
`Color Drawing: Yes
`
`Color(s) Claimed: The color(s) black is/are claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.01.21 - Circles that are totally or partially shaded.
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`3822734, 3832437, 4279956 and others
`
`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: Feminine hygiene pads; Panty liners
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Mar. 28, 2010
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`Use in Commerce: Mar. 28, 2010
`
`Basis Information (Case Level)
`
`

`

`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: KIMBERLY-CLARK WORLDWIDE, INC.
`
`Owner Address: 2300 WINCHESTER ROAD
`NEENAH, WISCONSIN UNITED STATES 54956
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`WISCONSIN
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`KIMBERLY-CLARK WORLDWIDE, INC.
`2300 WINCHESTER ROAD
`NEENAH, WISCONSIN UNITED STATES 54956
`
`Phone: 920-721-3975
`
`Correspondent e-
`mail:
`
`trademarks.legal@kcc.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`May 02, 2019
`May 02, 2019
`May 02, 2019
`Mar. 26, 2019
`Mar. 26, 2019
`Mar. 25, 2019
`Mar. 04, 2015
`Mar. 25, 2014
`Jan. 07, 2014
`Jan. 07, 2014
`Dec. 18, 2013
`Nov. 29, 2013
`Nov. 29, 2013
`Sep. 26, 2013
`Sep. 25, 2013
`Sep. 21, 2013
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`TEAS SECTION 8 & 15 RECEIVED
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`REGISTERED-PRINCIPAL REGISTER
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`ASSIGNED TO EXAMINER
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`Current Location: TMEG LAW OFFICE 109
`
`Date in Location: May 02, 2019
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Proceeding
`Number
`
`76874
`76874
`
`81852
`
`

`

`Total Assignments: 1
`
`Registrant: Kimberly-Clark Worldwide, Inc.
`
`Conveyance: ENTITY CONVERSION
`
`Reel/Frame: 5464/0116
`
`Date Recorded: Feb. 16, 2015
`
`Supporting
`Documents:
`
`assignment-tm-5464-0116.pdf
`
`Assignment 1 of 1
`
`Pages: 25
`
`Name: KIMBERLY-CLARK WORLDWIDE, INC.
`
`Execution Date: Dec. 29, 2014
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: KIMBERLY-CLARK WORLDWIDE, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 2300 WINCHESTER ROAD
`NEENAH, WISCONSIN 54956
`
`Correspondent
`Name:
`
`KIMBERLY-CLARK WORLDWIDE, INC.
`
`Correspondent
`Address:
`
`2300 WINCHESTER ROAD
`NEENAH, WI 54956
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`WISCONSIN
`
`Correspondent
`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`2
`
`Proceeding
`Number:
`
`92077917
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`MARY B MYLES
`
`Type of Proceeding: Cancellation
`
`Filing Date: Aug 27, 2021
`
`Status Date: Oct 17, 2021
`
` 
`
` 
`
`Name: SHANDONG SHANGSHANTANG BIOTECHNOLOGY CO., LTD
`
`Defendant
`
`Correspondent
`Address:
`
`SHANDONG SHANGSHANTANG BIOTECHNOLOGY CO., LTD
`NO.2, FUQIAN STREET,WEIHAI INTERNATIONAL, PORT ECONOMIC & TECH. DEVELOPMENT DIST
`WEIHAI CITY, SHANDONG CHINA , 264200
`
`bangongshi@sstgroup.cn
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`UCANRELY
`
`Application Status
`
`Cancellation Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`Registration
`Number
`
`88880760
`
`6252978
`
`Name: Kimberly-Clark Worldwide, Inc.
`
`Correspondent
`Address:
`
`DONNA F. SCHMITT
`ARMSTRONG TEASDALE LLP
`7700 FORSYTH BOULEVARD, SUITE 1800
`ST. LOUIS MO UNITED STATES , 63105
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`iptm@atllp.com , dschmitt@atllp.com , aharris@atllp.com , kmowery@atllp.com
`
`Application Status
`
`Serial
`
`Registration
`
`

`

`U
`
`U BY KOTEX
`
`U BY KOTEX
`
`U BY KOTEX
`
`U BY KOTEX
`
`U BY KOTEX ALLNIGHTER
`
`U BY KOTEX BARELY THERE
`
`U BY KOTEX CLICK
`
`U BY KOTEX CURVES
`
`U BY KOTEX TWEEN
`
`WE GOT U
`
`WITH U BY KOTEX SHE CAN
`
`WITH U BY KOTEX SHE CAN
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Registered
`
`Registered
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Cancelled - Section 8
`
`Registered
`
`Registered
`
`Prosecution History
`
`Number
`
`Number
`
`86068039
`
`85679983
`
`87542293
`
`90094854
`
`77478145
`
`77624444
`
`77654591
`
`77603186
`
`77624351
`
`85152401
`
`86200229
`
`88144594
`
`88471477
`
`4501850
`
`4279956
`
`5814107
`
`6294839
`
`3832437
`
`3835809
`
`3822734
`
`3835758
`
`3835808
`
`4040815
`
`4668689
`
`5756804
`
`5891435
`
`Entry Number
`
`History Text
`
`NOTICE OF DEFAULT
`INSTITUTED
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`FILED AND FEE
`
`Date
`
`Oct 17, 2021
`Aug 27, 2021
`Aug 27, 2021
`Aug 27, 2021
`
`Due Date
`
`Oct 06, 2021
`
`4
`3
`2
`1
`
`Proceeding
`Number:
`
`91270429
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`MARY CATHERINE FAINT
`
`Type of Proceeding: Opposition
`
`Filing Date: Jul 13, 2021
`
`Status Date: Oct 27, 2021
`
`Defendant
`
`Name: Eternally U LLC
`
`Correspondent
`Address:
`
`TIFFANY S REDDICK
`9227 SW 41ST ST 4 104
`MIRAMAR FL UNITED STATES , 33025
`
`beternallyou@gmail.com
`
`Correspondent