Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1238586
`09/28/2022
`
`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.
`
`GREINER BIO-ONE GMBH
`10/30/2022
`
`BAD HALLER STRAÃ#E 32
`KREMSMÃ#NSTER, A-4550
`AUSTRIA
`
`SARA M. DORCHAK
`COLLARD & ROE, P.C.
`1077 NORTHERN BOULEVARD
`ROSLYN, NY 11576
`UNITED STATES
`Primary email: sdorchak@collardroe.com
`Secondary email(s): law@collardroe.com, tm@collardroe.com
`5163659802
`037324
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`90820383
`09/28/2022
`
`Rames Group, Inc.
`5151 CORPORATE WAY
`JUPITER, FL 33458
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`Opposition period
`ends
`
`05/03/2022
`10/30/2022
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Blood testing apparatus, namely, blood col-
`lecting device
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2330148
`
`Application date
`
`09/25/1997
`
`

`

`Register
`Registration date
`
`Principal
`03/14/2000
`
`Word mark
`Design mark
`
`MINICOLLECT
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Jun 1998 First Use In Commerce: Jun 1998
`laboratory equipment and supplies, namely, test tube holders; blood sample
`tubes; test tubes closed by rubber stoppers,especially with evacuated interiors
`forblood removal; container tubes for testing and analysis of blood; closure cap-
`sules for blood containers specifically designed for test tubes
`Class 010. First use: First Use: Jun 1998 First Use In Commerce: Jun 1998
`vacuum blood collection system using transparent polystyrene tubes and com-
`posedof numerous elements, namely, sterile multiple blood collection needles,
`re-usable tube holders, and plastic round-bottomed tubes with recessed-seal
`safety caps, all for use in drawing blood into a vacuum tube for the purpose of
`increased sterility and blood analysis; needles for medical purposes, namely, for
`blood removal; container tubes for holding bloodduring medical procedures;
`drainage tubes and hoses for medical purposes; cannulae for medical and/or
`clinical purposes
`Class 020. First use: First Use: Jun 1998 First Use In Commerce: Jun 1998
`[ plastic or rubber closure capsules for bottles and containers ]
`
`Attachments
`
`75363259#TMSN.png( bytes )
`Notice of Opposition 4871-1786-3221 v.1.pdf(87587 bytes )
`
`Signature
`Name
`Date
`
`/smd/
`Sara M. Dorchak
`09/28/2022
`
`

`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`-----------------------------------------------------------------------X
`Greiner Bio-One GmbH
`)
`
`)
`Opposer,
`
`)
`
`
`)
`
`
`)
`
`
`)
`v.
`
`)
`
`
`)
`
`Rames Group, Inc.
`)
`
`
`)
`Applicant.
`
`)
`
`
`)
`-----------------------------------------------------------------------X
`
`
`NOTICE OF OPPOSITION
`
`Opposition No.
`
`
`App Serial No. 90/820,383
`MICROCOLLECT
`
`
`
`In the matter of an application for registration of the trademark MICROCOLLECT for
`
`goods in Class 9, filed on April 2, 2019 under Serial No. 90/820,383 by Rames Group, Inc.
`
`(“Applicant”), Greiner Bio-One GmbH (“Opposer”) believes it will be damaged by registration
`
`of said application and opposes same. The grounds for opposition are as follows:
`
`(BACKGROUND)
`
`1.
`
`Opposer is a Gesellschaft mit beschränkter Haftung and located at Bad Haller
`
`Straße 32, Kremsmünster, Austria A-4550.
`
`2.
`
`Opposer’s mark MINICOLLECT (U.S. Registration No. 2,330,148) issued on
`
`March 14, 20000 and claims a first use date of June 1998.
`
`3.
`
`4.
`
`Opposer’s MINICOLLECT U.S. Registration No. 2,330,148 is incontestable.
`
`Application Serial No. 90/820,383 was filed based on a future intention to use
`
`and, as such, its earliest priority date is its filing date of July 9, 2021.
`
`
`
`
`1
`
`

`

`
`
`
`5.
`
`The Applicant’s filing date of the MICROCOLLECT Application is subsequent
`
`to Opposer’s registration and first use date of its mark in the United States. Therefore, Opposer
`
`has prior rights in the United States.
`
`
`
`6.
`
`Count I (Likelihood of Confusion)
`
`Opposer incorporates by reference all the allegations contained in paragraphs 1-5
`
`of this Notice of Opposition.
`
`7.
`
`The commercial impression of Applicant’s MICROCOLLECT mark is extremely
`
`similar to the MINICOLLECT mark owned by Opposer as both contain the suffix COLLECT,
`
`both begin with the same two letters (MI), and the prefixes MINI and MICRO are synonyms
`
`meaning “small” or “little”.
`
`8.
`
`Applicant’s goods, as described in Application Serial No. 90/820,383 encompass
`
`or are closely related to the goods described in Registration No. 2,330,148. Specifically, both
`
`the Applicant and the Opposer offer equipment used for collection and containment of blood.
`
`9.
`
`Applicant’s goods, as described in Application Serial No. 90/820,383, are likely
`
`to be found in the same channels of trade and sold to the same consumers as the goods described
`
`in Registration No. 2,330,148.
`
`10.
`
`Due to similarities between Opposer’s and Applicant’s marks and the
`
`encompassed or closely related goods and services upon which those marks are used, there is a
`
`likelihood that consumers will be confused, mistaken and/or deceived into believing that
`
`Applicant’s goods emanate from, or in some way are associated or connected with, or
`
`sponsored, authorized or warranted by Opposer, all to the detriment of Opposer, and Opposer
`
`will be damaged if a registration is granted to Applicant.
`
`
`
`
`2
`
`

`

`
`
`
`
`
`Count II (Dilution by Blurring)
`
`11.
`
`Opposer incorporates by reference the allegations contained in paragraphs 1-10 of
`
`this Notice of Opposition.
`
`12.
`
`Opposer’s MINICOLLECT mark is distinctive throughout the United States.
`
`Opposer’s MINICOLLECT mark has been registered for several years, has been used and
`
`advertised extensively, and is widely recognized by consumers and those in the trade as a
`
`designation of source for the goods and services of Opposer, and is therefore a famous and
`
`distinctive mark.
`
`13.
`
`Applicant’s use of its MICROCOLLECT mark is in violation of Section 43(c) of
`
`the Lanham Act in that Applicant is likely to cause dilution by blurring by creating a likelihood
`
`of association with Opposer’s MINICOLLECT mark.
`
`14.
`
`Applicant’s use of its MICROCOLLECT mark will cause an association arising
`
`from the similarity with Opposer’s MINICOLLECT mark that will cause dilution by blurring
`
`and impair the distinctiveness of Opposer’s MINICOLLECT mark, all to the detriment of
`
`Opposer who will be damaged by Applicant’s use of its MICROCOLLECT mark.
`
`
`
`
`3
`
`

`

`
`
`
`WHEREFORE, Opposer requests that this opposition be sustained and that the requested
`
`registration of Applicant’s mark in Application Serial Number 90/820,383 be denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: September 28, 2022
`
`4871-1786-3221, v. 1
`
`Respectfully submitted,
`
`Greiner Bio-One GmbH
`
`_____
`
`Sara M. Dorchak
`COLLARD & ROE, P.C.
`1077 Northern Boulevard
`Roslyn, New York 11576
`Telephone: (516) 365-9802
`E-mail: sdorchak@collardroe.com
`Attorney for Opposer
`Greiner Bio-One GmbH
`
`
`
`
`4
`
`

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