Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1266689
`02/16/2023
`
`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.
`
`EMCOR Group, Inc.
`02/19/2023
`
`301 MERRITT SEVEN
`6TH FLOOR
`NORWALK, CT 06851
`UNITED STATES
`
`ALESHA M. DOMINIQUE
`STROOCK & STROOCK & LAVAN LLP
`2029 CENTURY PARK EAST, 18TH FLOOR
`LOS ANGELES, CA 90067
`UNITED STATES
`Primary email: tm@stroock.com
`Secondary email(s): adominique@stroock.com, vkoo@stroock.com,
`ajcho@stroock.com
`310-556-5800
`311562/0030
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97067526
`02/16/2023
`
`Publication date
`Opposition period
`ends
`
`08/23/2022
`02/19/2023
`
`Emser Tile
`8431 SANTA MONICA BLVD.
`LOS ANGELES, CA 90069
`UNITED STATES
`Goods/services affected by opposition
`
`Class 019. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Vinyl tiles
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2575099
`
`Application date
`
`01/12/2000
`
`

`

`Register
`Registration date
`
`Principal
`06/04/2002
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`EMCOR SERVICES
`
`NONE
`
`Class 035. First use: First Use: Jun 1999 First Use In Commerce: Jun 1999
`Facilities management services
`Class 037. First use: First Use: Jun 1999 First Use In Commerce: Jun 1999
`Managing, contracting, providing mechanical and electrical construction ser-
`vices; and maintenance services to public, private, institutional and commercial
`buildings
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`
`2562923
`
`Principal
`04/23/2002
`
`EMCOR
`
`Application date
`
`01/12/2000
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Dec 1994 First Use In Commerce: Dec 1994
`Facilities management services
`Class 037. First use: First Use: Dec 1994 First Use In Commerce: Dec 1994
`Managing, contracting, providing mechanical and electrical and construction ser-
`vices; and maintenance services to public, private, institutional and commercial
`buildings
`
`U.S. registration
`no.
`Register
`Registration date
`
`3830710
`
`Principal
`08/10/2010
`
`Word mark
`
`EMCOR
`
`Application date
`
`09/01/2009
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Sep 29, 2009 First Use In Commerce: Sep 29,
`2009
`Vendor management services and the coordination of vendors for commercial
`and industrial facilities
`Class 037. First use: First Use: Sep 29, 2009 First Use In Commerce: Sep 29,
`2009
`Call center services in the nature of responding to calls for assistance concern-
`ing the repair and maintenance, for commercial, industrial, government and non-
`profit facilities, of building interior and exterior surfaces, HVAC systems, plumb-
`ing systems, electrical systems, fire and safety alarm systems, building locks,
`roofs, and windows; providing repair, improvement and maintenance services,
`for commercial and industrial facilities, in the areas of carpentry, janitorial ser-
`vices, heating, ventilation and air conditioning systems (HVAC), plumbing, elec-
`trical systems, fire and life safety alarm systems, painting, construction, building
`maintenance, asphalt paving, road paving, masonry, lock repair, roofing, plate
`glass repair, and repairs of dock lift and scissor lift
`
`3830711
`
`Application date
`
`09/01/2009
`
`Principal
`08/10/2010
`
`Foreign priority
`date
`EMCOR CUSTOMER SOLUTIONS CENTER
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: Sep 29, 2009 First Use In Commerce: Sep 29,
`2009
`Vendor management services and the coordination of vendors for commercial
`and industrial facilities
`Class 037. First use: First Use: Sep 29, 2009 First Use In Commerce: Sep 29,
`2009
`Call center services in the nature of responding to calls for assistance concern-
`ing the repair and maintenance, for commercial, industrial, government and non-
`profit facilities, of building interior and exterior surfaces, HVAC systems, plumb-
`ing systems, electrical systems, fire and safety alarm systems, building locks,
`roofs, and windows; providing repair, improvement and maintenance services,
`for commercial and industrial facilities, in the areas of carpentry, janitorial ser-
`vices, heating, ventilation and air conditioning systems (HVAC), plumbing, elec-
`trical systems, fire and life safety alarm systems, painting, construction, building
`maintenance, asphalt paving, road paving, masonry, lock repair, roofing, plate
`
`

`

`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`glass repair, and repairs of dock lift and scissor lift
`
`4793091
`
`Principal
`08/18/2015
`
`EMCOR
`
`Application date
`
`06/27/2014
`
`Foreign priority
`date
`
`NONE
`
`The mark consists of a diamond shape comprised of horizontal broken lines to
`the left of the word "EMCOR".
`Class 035. First use: First Use: Mar 31, 2000 First Use In Commerce: Mar 31,
`2000
`Vendor management services for commercial, industrial, government and non-
`profit facilities
`Class 037. First use: First Use: Mar 31, 2002 First Use In Commerce: Mar 31,
`2002
`Call center services in the nature of responding to calls for assistance concern-
`ing the repair and maintenance for commercial, industrial, government and non-
`profit facilities, of building interior and exterior surfaces, HVAC systems, plumb-
`ing systems, electrical systems, fire and safety alarm systems, building locks,
`roofs, and windows; snow removal services; janitorial services, namely, cleaning
`of business premises and maintenance and/or repair of business premises; con-
`struction planning; construction consultation
`Class 044. First use: First Use: Mar 31, 2002 First Use In Commerce: Mar 31,
`2002
`Landscaping design services for others; horticultural services for others, namely,
`planting and maintenance of lawn, shrubs, and trees for others
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`
`4767324
`
`Principal
`07/07/2015
`
`EMCOR
`
`Application date
`
`06/27/2014
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: May 31, 1996 First Use In Commerce: May 31,
`1996
`Facilities management services, namely, business consulting services relating to
`operations management for commercial, industrial, government and non-profit
`facilities
`
`

`

`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`Class 036. First use: First Use: May 31, 1996 First Use In Commerce: May 31,
`1996
`Facilities management services, namely, building management services for
`commercial, industrial, government and non-profit facilities
`Class 037. First use: First Use: Mar 31, 2002 First Use In Commerce: Mar 31,
`2002
`Maintenance services to private, public and commercial buildings; snow removal
`services; janitorial services, namely, cleaning of business premises and main-
`tenance and/or repair of business premises; construction planning, construction
`consultation; facilities management services in the nature of maintenance and
`renovation of office buildings
`Class 044. First use: First Use: Mar 31, 2002 First Use In Commerce: Mar 31,
`2002
`Landscaping design services for others; horticultural services for others, namely,
`planting and maintenance of lawns, shrubs, and trees for others
`
`5244303
`
`Principal
`07/18/2017
`
`EMCOR
`
`Application date
`
`06/22/2016
`
`Foreign priority
`date
`
`NONE
`
`The mark consists of a diamond shape comprised of horizontal broken lines to
`the left of the word "EMCOR".
`Class 036. First use: First Use: Dec 31, 1995 First Use In Commerce: Dec 31,
`1995
`Facilities management services, namely, building management services for
`commercial, industrial, government and non-profit facilities
`Class 037. First use: First Use: Dec 31, 2005 First Use In Commerce: Dec 31,
`2005
`Providing repair, improvement and maintenance services, for commercial and
`industrial facilities, in the areas of heating, ventilation and air conditioning sys-
`tems (HVAC); Facilities management services in the nature of maintenance and
`renovation of office buildings; Consulting services in the field of installation and
`maintenance of electrical systems, namely, AC/DC power systems, alternative
`power systems, intelligent highway systems hardware and equipment, building
`plant and lighting, cable tray installations, explosion-proof systems, supervisory
`control and data acquisition systems hardware and equipment; Installation of
`HVAC systems, plumbing and piping systems, process gas and fluid equipment
`systems, boiler systems, chiller systems, cogeneration systems, HVAC control
`systems, unitary heat pump systems, rooftop heating and/or cooling unit sys-
`tems and energy recovery systems; Construction, installation and maintenance
`for others of emergency power systems, access and security systems and fire
`detection and suppression systems; Construction, installation and maintenance
`for others in the field of electrical systems, namely, AC/DC power systems, al-
`ternative power systems, intelligent highway systems hardware and equipment,
`building plant and lighting, cable tray installations, explosion-proof systems, su-
`pervisory control and data acquisition systems hardware and equipment; Con-
`struction, maintenance and renovation of property; Machinery installation, main-
`tenance and repair; Installation, repair and maintenance of heating equipment;
`construction planning in the field of landscaping
`Class 042. First use: First Use: Dec 31, 1995 First Use In Commerce: Dec 31,
`1995
`Construction design services for others, namely, design of commercial, residen-
`
`

`

`tial and industrial facilities and infrastructure; design for others of mechanical
`and electrical systems; providing virtual design services in the nature of provid-
`ing software-as-a-service services featuring software for building information
`modeling (BIM), namely, software that allows user to create 3D computer mod-
`els of buildings prior to the actual construction thereof for testing detail and con-
`struction services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`
`6858612
`
`Application date
`
`09/02/2021
`
`Principal
`09/27/2022
`
`Foreign priority
`date
`EMCOR CUSTOMER SOLUTIONS CENTER
`
`NONE
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 037. First use: First Use: Sep 29, 2009 First Use In Commerce: Sep 29,
`2009
`Providing repair, improvement and maintenance services, for commercial and
`industrial facilities, in the areas of floor care, flood and water damage, irrigation
`systems; carpet maintenance; pressure washing services; and emergency re-
`sponse services relating to the repair, improvement and maintenance of com-
`mercial and industrial facilities
`Class 039. First use: First Use: Sep 29, 2009 First Use In Commerce: Sep 29,
`2009
`parking lot services
`
`Attachments
`
`75895899#TMSN.png( bytes )
`77817636#TMSN.png( bytes )
`86323183#TMSN.png( bytes )
`97009140#TMSN.png( bytes )
`Notice of Opposition.pdf(161246 bytes )
`EXHIBITS.pdf(2758352 bytes )
`
`Signature
`Name
`Date
`
`/Alesha M. Dominique/
`ALESHA M. DOMINIQUE
`02/16/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EMCOR Group, Inc.
`
`v.
`
`Emser Tile, LLC,
`
`
`
`
`
`
`
`
`
`Opposer,
`
`Serial No. 97/067,526
`
`Subject Mark: EMCORE
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`EMCOR Group, Inc. (“Opposer”) hereby opposes the trademark application for the mark
`
`EMCORE (“Opposed Mark”), Serial No. 97/067,526 (“Application”), filed by Emser Tile, LLC
`
`(“Applicant”). Opposer believes that it will be damaged by registration of the mark in the
`
`Application and hereby opposes registration of the same.
`
`Parties
`
`1.
`
`Opposer is a Delaware corporation located at 301 Merritt Seven, 6th Floor,
`
`Norwalk, Connecticut 06851.
`
`2.
`
`Upon information and belief, Applicant is a limited liability company legally
`
`organized under the laws of California with a place of business at 8431 Santa Monica Blvd., Los
`
`Angeles, California 90069.
`
`Grounds for Opposition
`
`3.
`
`Opposer is a leading provider of mechanical and electrical construction, design-
`
`build, engineering, facilities and industrial services, and consulting and professional services
`
`related to the foregoing.
`
`4.
`
`Opposer manages and supports over one billion square feet of facilities space
`
`across the United States and processes over one million work orders annually. Opposer offers
`
`

`

`its services through a vast network of over 33,000 highly skilled professionals across over 180
`
`physical locations in the United States and United Kingdom.
`
`5.
`
`Since at least as early as December 1994, Opposer has achieved national and
`
`international renown with its continuous use of its EMCOR brand. Over the years, Opposer has
`
`extensively used and promoted its services under the trademarks EMCOR, EMCOR & Diamond
`
`Design, EMCOR SERVICES, and EMCOR CUSTOMER SOLUTIONS CENTER (collectively,
`
`the “EMCOR Marks”). Opposer has invested substantially in such use and promotion of the
`
`EMCOR Marks.
`
`6.
`
`Opposer has continuously used the EMCOR Marks for, inter alia, facilities
`
`management and floor care services, including supplier-managed floor installation and repair, for
`
`many years prior to the filing of the Application. Opposer’s trademark rights in the EMCOR
`
`Marks predate any rights that may be asserted or relied upon by Applicant in connection with the
`
`Opposed Mark.
`
`7.
`
`Opposer is the owner of U.S. Registration No. 2,575,099, for the mark EMCOR
`
`SERVICES, issued on June 4, 2002 for facilities management services in Class 35; and
`
`managing, contracting, providing mechanical and electrical construction services; and
`
`maintenance services to public, private, institutional and commercial buildings in Class 37. This
`
`registration is valid and subsisting, in full force and effect and incontestable. A copy of the
`
`registration certificate and TSDR record of Registration No. 2,575,099 is attached as Exhibit 1.
`
`8.
`
`Opposer is the owner of U.S. Registration No. 2,562,923, for the mark EMCOR
`
`& Diamond Design, issued on April 23, 2002 for facilities management services in Class 35; and
`
`managing, contracting, providing mechanical and electrical and construction services; and
`
`maintenance services to public, private, institutional and commercial buildings in Class 37. This
`
`
`
`2
`
`

`

`registration is valid and subsisting, in full force and effect and incontestable. A copy of the
`
`registration certificate and TSDR record of Registration No. 2,562,923 is attached as Exhibit 2.
`
`9.
`
`Opposer is the owner of U.S. Registration No. 3,830,710, for the mark EMCOR,
`
`issued on August 10, 2010 for vendor management services and the coordination of vendors for
`
`commercial and industrial facilities in Class 35; and call center services in the nature of
`
`responding to calls for assistance concerning the repair and maintenance, for commercial,
`
`industrial, government and non-profit facilities, of building interior and exterior surfaces, HVAC
`
`systems, plumbing systems, electrical systems, fire and safety alarm systems, building locks,
`
`roofs, and windows; providing repair, improvement and maintenance services, for commercial
`
`and industrial facilities, in the areas of carpentry, janitorial services, heating, ventilation and air
`
`conditioning systems (HVAC), plumbing, electrical systems, fire and life safety alarm systems,
`
`painting, construction, building maintenance, asphalt paving, road paving, masonry, lock repair,
`
`roofing, plate glass repair, and repairs of dock lift and scissor lift in Class 37. This registration
`
`is valid and subsisting, in full force and effect and incontestable. A copy of the registration
`
`certificate and TSDR record of Registration No. 3,830,710 is attached as Exhibit 3.
`
`10.
`
`Opposer is the owner of U.S. Registration No. 3,830,711, EMCOR CUSTOMER
`
`SOLUTIONS CENTER, issued on August 10, 2010 for vendor management services and the
`
`coordination of vendors for commercial and industrial facilities in Class 35; and call center
`
`services in the nature of responding to calls for assistance concerning the repair and maintenance,
`
`for commercial, industrial, government and non-profit facilities, of building interior and exterior
`
`surfaces, HVAC systems, plumbing systems, electrical systems, fire and safety alarm systems,
`
`building locks, roofs, and windows; providing repair, improvement and maintenance services,
`
`for commercial and industrial facilities, in the areas of carpentry, janitorial services, heating,
`
`
`
`3
`
`

`

`ventilation and air conditioning systems (HVAC), plumbing, electrical systems, fire and life
`
`safety alarm systems, painting, construction, building maintenance, asphalt paving, road paving,
`
`masonry, lock repair, roofing, plate glass repair, and repairs of dock lift and scissor lift in Class
`
`37. This registration is valid and subsisting, in full force and effect and incontestable. A copy
`
`of the registration certificate and TSDR record of Registration No. 3,830,711 is attached as
`
`Exhibit 4.
`
`11.
`
`Opposer is the owner of U.S. Registration No. 4,793,091, for the mark EMCOR
`
`& Diamond Design, issued on August 18, 2015 for vendor management services for commercial,
`
`industrial, government and non-profit facilities in Class 35; call center services in the nature of
`
`responding to calls for assistance concerning the repair and maintenance for commercial,
`
`industrial, government and non-profit facilities, of building interior and exterior surfaces, HVAC
`
`systems, plumbing systems, electrical systems, fire and safety alarm systems, building locks,
`
`roofs, and windows; snow removal services; janitorial services, namely, cleaning of business
`
`premises and maintenance and/or repair of business premises; construction planning;
`
`construction consultation in Class 37; and landscaping design services for others; horticultural
`
`services for others, namely, planting and maintenance of lawn, shrubs, and trees for others in
`
`Class 44. This registration is valid and subsisting, in full force and effect and incontestable. A
`
`copy of the registration certificate and TSDR record of Registration No. 4,793,091 is attached as
`
`Exhibit 5.
`
`12.
`
`Opposer is the owner of U.S. Registration No. 4,767,324, for the mark EMCOR,
`
`issued on July 7, 2015 for facilities management services, namely, business consulting services
`
`relating to operations management for commercial, industrial, government and nonprofit
`
`facilities in Class 35; facilities management services, namely, building management services for
`
`
`
`4
`
`

`

`commercial, industrial, government and non-profit facilities in Class 36; maintenance services to
`
`private, public and commercial buildings; snow removal services; janitorial services, namely,
`
`cleaning of business premises and maintenance and/or repair of business premises; construction
`
`planning, construction consultation; facilities management services in the nature of maintenance
`
`and renovation of office buildings in Class 37; and landscaping design services for others;
`
`horticultural services for others, namely, planting and maintenance of lawns, shrubs, and trees
`
`for others in Class 44. This registration is valid and subsisting, in full force and effect and
`
`incontestable. A copy of the registration certificate and TSDR record of Registration No.
`
`4,767,324 is attached as Exhibit 6.
`
`13.
`
`Opposer is the owner of U.S. Registration No. 5,244,303, for the mark EMCOR
`
`& Diamond Design, issued on July 18, 2017 for facilities management services, namely, building
`
`management services for commercial, industrial, government and non-profit facilities in Class
`
`36; providing repair, improvement and maintenance services, for commercial and industrial
`
`facilities, in the areas of heating, ventilation and air conditioning systems (HVAC); facilities
`
`management services in the nature of maintenance and renovation of office buildings; consulting
`
`services in the field of installation and maintenance of electrical systems, namely, AC/DC power
`
`systems, alternative power systems, intelligent highway systems hardware and equipment,
`
`building plant and lighting, cable tray installations, explosion-proof systems, supervisory control
`
`and data acquisition systems hardware and equipment; installation of HVAC systems, plumbing
`
`and piping systems, process gas and fluid equipment systems, boiler systems, chiller systems,
`
`cogeneration systems, HVAC control systems, unitary heat pump systems, rooftop heating and/or
`
`cooling unit systems and energy recovery systems; construction, installation and maintenance for
`
`others of emergency power systems, access and security systems and fire detection and
`
`
`
`5
`
`

`

`suppression systems; construction, installation and maintenance for others in the field of
`
`electrical systems, namely, AC/DC power systems, alternative power systems, intelligent
`
`highway systems hardware and equipment, building plant and lighting, cable tray installations,
`
`explosion-proof systems, supervisory control and data acquisition systems hardware and
`
`equipment; construction, maintenance and renovation of property; machinery installation,
`
`maintenance and repair; installation, repair and maintenance of heating equipment; construction
`
`planning in the field of landscaping in Class 37; and construction design services for others,
`
`namely, design of commercial, residential and industrial facilities and infrastructure; design for
`
`others of mechanical and electrical systems; providing virtual design services in the nature of
`
`providing software-as-a-service services featuring software for building information modeling
`
`(BIM), namely, software that allows user to create 3D computer models of buildings prior to the
`
`actual construction thereof for testing detail and construction services in Class 42. This
`
`registration is valid and subsisting, in full force and effect and incontestable. A copy of the
`
`registration certificate and TSDR record of Registration No. 5,244,303 is attached as Exhibit 7.
`
`14.
`
`Opposer is the owner of U.S. Registration No. 6,858,612, for the mark EMCOR
`
`CUSTOMER SOLUTIONS CENTER, issued on September 27, 2022 for providing repair,
`
`improvement and maintenance services, for commercial and industrial facilities, in the areas of
`
`floor care, flood and water damage, irrigation systems; carpet maintenance; pressure washing
`
`services; and emergency response services relating to the repair, improvement and maintenance
`
`of commercial and industrial facilities in Class 37; and parking lot services in Class 39. This
`
`registration is valid and subsisting, in full force and effect. A copy of the registration certificate
`
`and TSDR record of Registration No. 6,858,612 is attached as Exhibit 8.
`
`
`
`6
`
`

`

`15.
`
`Through many years of widespread use and promotion throughout the United
`
`States, consumers have come to recognize the EMCOR Marks as uniquely associated with
`
`Opposer, and an indication of origin of Opposer’s high-quality services. As a result, Opposer
`
`has established valuable goodwill and exclusive federal and common law rights in the EMCOR
`
`Marks, prior to the filing of the Application.
`
`16.
`
`On October 10, 2021, Applicant Emser Tile, LLC filed the Application to register
`
`the Opposed Mark in connection with “vinyl tiles” in International Class 19 based on a claimed
`
`bona fide intent to use the mark in commerce pursuant to Section 1(b) of the Lanham Act, 15
`
`U.S.C. § 1051(b).
`
`17.
`
`The Opposed Mark is likely to cause confusion with the EMCOR Marks. The
`
`Opposed Mark is highly similar in appearance, sound, and commercial impression to Opposer’s
`
`EMCOR Marks. In particular, the Opposed Mark incorporates the entirety of the leading literal
`
`element of the EMCOR Marks—the word “EMCOR.” When spoken, the Opposed Mark has the
`
`exact same pronunciation as the leading literal element of Opposer’s EMCOR Marks.
`
`18.
`
`The Opposed Mark is intended for use in conjunction with goods highly related
`
`to the services in which Opposer has rights. In particular, the Opposed Mark is intended for use
`
`in conjunction with “vinyl tiles,” which are related and complementary to, inter alia, the “repair,
`
`improvement and maintenance services, for commercial and industrial facilities, in the areas of
`
`floor care” for which EMCOR CUSTOMER SOLUTIONS CENTER (U.S. Reg. No. 6,858,612)
`
`is registered and the facilities management and floor care services for which the EMCOR Marks
`
`are used.
`
`Count I
`Likelihood of Confusion
`
`
`
`
`7
`
`

`

`19.
`
`Opposer repeats and realleges the allegations in Paragraph 1 through 18, as if fully
`
`set forth herein.
`
`20.
`
`Based on the strength of the EMCOR Marks, the similarity of the Opposed Mark
`
`to the EMCOR Marks, the identity of the parties’ respective goods and services, and other factors,
`
`consumers are likely to be deceived into falsely believing that the goods offered by Applicant
`
`under the Opposed Mark originate from, or are otherwise associated with Opposer, or that there
`
`is some relationship between Applicant and Opposer or the goods of Applicant and the services
`
`of Opposer.
`
`21.
`
`The use and registration of the Opposed Mark by Applicant is likely to damage,
`
`destroy the distinctiveness, goodwill, reputation, secondary meaning and fame created and
`
`established by Opposer in the EMCOR Marks by virtue of the confusion, mistake and deception
`
`likely to occur between the respective marks in derogation of Opposer’s exclusive right to
`
`continue to use the EMCOR Marks for its present services and to expand the use of its EMCOR
`
`Marks to related goods and services.
`
`22.
`
`By reason of the foregoing, Opposer will be gravely damaged by the registration
`
`of the Opposed Mark.
`
`Count II
`Dilution
`
`Opposer repeats and realleges the allegations contained in paragraphs 1-22, as if
`
`23.
`
`fully set forth herein.
`
`24.
`
`The EMCOR Marks are famous and the use and registration of the Opposed Mark
`
`is likely to dilute the distinctive quality of the famous EMCOR Marks and is likely to cause
`
`dilution by blurring of Opposer’s EMCOR Marks.
`
`
`
`8
`
`

`

`25.
`
`By reason of the foregoing, Opposer will be gravely damaged by the registration
`
`of the Opposed Mark.
`
`
`
`WHEREFORE, for the foregoing reasons, Opposer respectfully requests that the
`
`Trademark Trial and Appeal Board sustain this opposition and refuse to register the Application
`
`in its entirety.
`
`
`Dated: February 16, 2023
`
`
`
`
`
`
`
`
`STROOCK & STROOCK & LAVAN
`LLP
`
`By: /Alesha M. Dominique/
`Alesha M. Dominique
`2029 Century Park East, 18th Floor
`Los Angeles, California 90067
`Tel.: 310.556.5913
`adominique@stroock.com
`
`/Alexandra J. Cho/
`Alexandra J. Cho
`180 Maiden Lane
`New York, NY 10038
`Tel.: 212.806.1397
`ajcho@stroock.com
`
`Attorneys for Opposer EMCOR Group,
`Inc.
`
`
`
`
`9
`
`

`

`TTAB Opposition No.: ______________________
`EMCOR Group, Inc. v. Emser Tile, LLC
`
`EXHIBIT 1
`
`

`

`TTAB Opposition No.: ______________________
`EMCOR Group, Inc. v. Emser Tile, LLC
`
`Exhibit 1 - Page 1 of 8
`
`

`

`TTAB Opposition No.: ______________________
`EMCOR Group, Inc. v. Emser Tile, LLC
`
`Generated on: This page was generated by TSDR on 2023-02-15 10:20:10 EST
`
`Mark: EMCOR SERVICES
`
`US Serial Number: 75895801
`
`US Registration
`Number:
`
`2575099
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jan. 12, 2000
`
`Registration Date: Jun. 04, 2002
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Feb. 09, 2022
`
`Publication Date:Mar. 12, 2002
`
`Mark Information
`
`Mark Literal
`Elements:
`
`EMCOR SERVICES
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Disclaimer: "SERVICES"
`
`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: Facilities management services
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 1999
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: Jun. 1999
`
`For: Managing, contracting, providing mechanical and electrical construction services; and maintenance services to public, private,
`institutional and commercial buildings
`
`International
`Class(es):
`
`037 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 1999
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Jun. 1999
`
`Basis Information (Case Level)
`
`Exhibit 1 - Page 2 of 8
`
`

`

`TTAB Opposition No.: ______________________
`EMCOR Group, Inc. v. Emser Tile, LLC
`
`Filed Use: No
`
`Filed ITU: Yes
`
`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: EMCOR Group, Inc.
`
`Owner Address: 301 Merritt Seven - 6th Floor
`Norwalk, CONNECTICUT UNITED STATES 06851
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: LAURA GOLDBARD GEORGE
`
`Docket Number: 311562/0030
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`tm@stroock.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`LAURA GOLDBARD GEORGE
`STROOCK & STROOCK & LAVAN LLP
`180 Maiden Lane, 38th Floor
`NEW YORK, NEW YORK UNITED STATES 10038-4982
`
`Phone: 212-806-5400
`
`Fax: 212-806-6006
`
`Correspondent e-
`mail:
`
`tm@stroock.com lgoldbard@stroock.com vkoo@s
`troock.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 09, 2022
`Feb. 09, 2022
`Feb. 09, 2022
`Feb. 09, 2022
`Sep. 01, 2021
`Jun. 04, 2021
`Apr. 26, 2012
`Apr. 26, 2012
`Apr. 26, 2012
`Apr. 25, 2012
`Apr. 04, 2012
`Feb. 10, 2010
`Jun. 19, 2008
`Jun. 12, 2008
`Jun. 03, 2008
`May 23, 2008
`Apr. 30, 2008
`Apr. 30, 2008
`Apr. 17, 2008
`Apr. 10, 2008
`Feb. 28, 2008
`Feb. 28, 2008
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`ASSIGNED TO PARALEGAL
`TEAS SECTION 8 & 15 RECEIVED
`AMENDMENT UNDER SECTION 7 – PROCESSED
`RESPONSE RECEIVED TO POST REG. ACTION
`PAPER RECEIVED
`POST REGISTRATION ACTION MAILED - SEC. 7
`ASSIGNED TO PARALEGAL
`SEC 7 REQUEST FILED
`PAPER RECEIVED
`
`Exhibit 1 - Page 3 of 8
`
`Proceeding
`Number
`
`74886
`74886
`74886
`
`77315
`77315
`77315
`
`60132
`60132
`
`60132
`60132
`
`

`

`TTAB Opposition No.: ______________________
`EMCOR Group, Inc. v. Emser Tile, LLC
`
`Sep. 11, 2007
`Jun. 28, 2005
`Jun. 04, 2002
`Mar. 12, 2002
`Feb. 20, 2002
`Dec. 12, 2001
`Dec. 06, 2001
`Dec. 05, 2001
`Oct. 01, 2001
`Dec. 05, 2001
`Nov. 05, 2001
`Oct. 12, 2001
`Oct. 12, 2001
`Oct. 01, 2001
`Mar. 30, 2001
`Dec. 22, 2000
`Jun. 28, 2000
`Jun. 15, 2000
`
`CASE FILE IN TICRS
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`REGISTERED-PRINCIPAL REGISTER
`PUBLISHED FOR OPPOSITION
`NOTICE OF PUBLICATION
`APPROVED FOR PUB - PRINCIPAL REGISTER
`USE AMENDMENT ACCEPTED
`AMENDMENT TO USE PROCESSING COMPLETE
`USE AMENDMENT FILED
`PREVIOUS ALLOWANCE COUNT WITHDRAWN
`APPROVED FOR PUB - PRINCIPAL REGISTER
`JURISDICTION RESTORED TO EXAMINING ATTORNEY
`EX PARTE APPEAL-INSTITUTED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`FINAL REFUSAL MAILED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`NON-FINAL ACTION MAILED
`ASSIGNED TO EXAMINER
`
`895801
`
`76427
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`