Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1294118
`06/28/2023
`
`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
`
`Chinonso Okehie
`
`Individual
`
`423 EAST 83RD STREET
`#1G
`NEW YORK, NY 10028
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Attorney informa-
`tion
`
`MICHAEL B. BRESSMAN, TMCP-VAN
`VANDERBILT LEGAL CLINIC
`131 21ST AVENUE SOUTH
`NASHVILLE, TN 37203
`UNITED STATES
`Primary email: trademarks@vanderbilt.edu
`615-322-4964
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97077881
`
`Opposition filing
`date
`
`Applicant
`
`06/28/2023
`
`Publication date
`
`06/13/2023
`
`Opposition period
`ends
`
`07/13/2023
`
`Tea Bags, Etc., LLC
`140 DE KRUIF PLACE APT 14B
`BRONX, NY 10475
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 030. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Cocoa; Honey; Tea; Cocoa-based bever-
`ages; Sugar and sugar substitutes; Tea extracts; Tea for infusions; Tea pods; Tea substitutes; Tea-
`based beverages; Coffee, tea, cocoa and artificial coffee
`
`Class 035. First Use: None First Use In Commerce: None
`Opposed goods and services in the class: Retail store services featuring tea, cocoa, tea- related
`electric and non-electric appliances, tea accessories, herbs and spices, glassware, apparel
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application
`no.
`
`97100898
`
`Application date
`
`10/30/2021
`
`
`ESTTA1294118
`06/28/2023
`
`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
`
`Chinonso Okehie
`
`Individual
`
`423 EAST 83RD STREET
`#1G
`NEW YORK, NY 10028
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Attorney informa-
`tion
`
`MICHAEL B. BRESSMAN, TMCP-VAN
`VANDERBILT LEGAL CLINIC
`131 21ST AVENUE SOUTH
`NASHVILLE, TN 37203
`UNITED STATES
`Primary email: trademarks@vanderbilt.edu
`615-322-4964
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97077881
`
`Opposition filing
`date
`
`Applicant
`
`06/28/2023
`
`Publication date
`
`06/13/2023
`
`Opposition period
`ends
`
`07/13/2023
`
`Tea Bags, Etc., LLC
`140 DE KRUIF PLACE APT 14B
`BRONX, NY 10475
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 030. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Cocoa; Honey; Tea; Cocoa-based bever-
`ages; Sugar and sugar substitutes; Tea extracts; Tea for infusions; Tea pods; Tea substitutes; Tea-
`based beverages; Coffee, tea, cocoa and artificial coffee
`
`Class 035. First Use: None First Use In Commerce: None
`Opposed goods and services in the class: Retail store services featuring tea, cocoa, tea- related
`electric and non-electric appliances, tea accessories, herbs and spices, glassware, apparel
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application
`no.
`
`97100898
`
`Application date
`
`10/30/2021
`
`
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`The mark consists of African woman with a bold headdress. The headdress is
`designed with beads and jewelries. The woman is holding a tea cup with liquid
`inside and vapors in the form of tea leaves. The woman is also wearing earrings
`and a bracelet.
`
`Class 030. First use: First Use: Sep 1, 2019 First Use In Commerce: Sep 1,
`2019
`Coffee and tea
`
`Attachments
`
`Chixotic Petition with Exhibits FINAL 6-28-2023 BW.pdf(1763429 bytes )
`
`Signature
`
`/Michael B. Bressman/
`
`Name
`
`Date
`
`Michael B. Bressman, TMCP-VAN
`
`06/28/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CHINONSO OKEHIE d/b/a
`CHIXOTIC,
`
`
`
`v.
`
`TEA BAGS, ETC., LLC,
`
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`Opposition No.
`Serial No. 97077881
`Mark: SIBAHLE TEAS and Design
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`Opposer, CHINONSO OKEHIE d/b/a CHIXOTIC (“Opposer”), believes that
`
`she will be damaged by the registration of the mark that is the subject of
`
`application Serial No. 97077881. On October 15, 2021, Applicant, Tea Bags, Etc.,
`
`LLC (“Applicant”), filed the application, which was published in the Official Gazette
`
`on June 13, 2023. Opposer hereby opposes registration of Applicant’s Mark (defined
`
`below).
`
`As grounds in support of its opposition, Opposer asserts the following:
`
`1.
`
`Opposer is located at 423 East 83rd Street, #1G, New York, New York
`
`10028, and operates a business under the name Chixotic.
`
`2.
`
`Opposer learned about tea growing and made connections with tea
`
`farmers during a trip to Kenya in 2017.
`
`
`
`3.
`
`Since at least as early as September 2019, Opposer has offered and
`
`sold tea, whole leaf tea, and loose leaf tea (“Opposer’s Goods”). Opposer sells
`
`Opposer’s Goods through her own website (www.chixotic.com), Amazon, Etsy, and
`
`other shopping websites. See, e.g., Ex. 1. Opposer also sells Opposer’s Goods directly
`
`to consumers at festivals, expos, and markets.
`
`4.
`
`Opposer owns and uses the following design mark (“Opposer’s Mark”)
`
`with the sale in commerce of Opposer’s Goods:
`
`5.
`
`Opposer has continuously used Opposer’s Mark in commerce with
`
`Opposer’s Goods since at least as early as September 2019.
`
`6.
`
`Applicant is a New York limited liability company that was legally
`
`formed in March 2020. Applicant’s owner is Regina Brewton-Smith.
`
`7.
`
`In July 2021, Brewton-Smith contacted Opposer to learn about
`
`Opposer’s experiences in the tea industry. See Ex. 2 (phone numbers redacted).
`
`Brewton-Smith had seen an interview on YouTube that Opposer conducted with the
`
`Brand Ambassador Select Podcast.
`
`2
`
`
`
`8.
`
`When Brewton-Smith contacted Opposer in July 2021, Applicant had
`
`not yet used Applicant’s Mark or sold any tea. When Applicant initially launched its
`
`tea business, it called its business Brewteaful Queen.
`
`9.
`
`Beginning in July 2021, Brewton-Smith and Opposer had phone
`
`conversations during which they discussed Opposer’s sourcing and packaging of tea
`
`products, challenges that the Opposer had faced in starting her business, and
`
`information about Opposer’s network.
`
`10. During a phone conversation on October 29, 2021, Brewton-Smith
`
`informed Opposer that she had a new logo for Applicant’s business. After the phone
`
`call, Brewton-Smith sent Opposer a message with the following image of Applicant’s
`
`logo:
`
`
`
`See Ex. 2. Opposer responded to Applicant on the same day via direct message that
`
`their respective logos are “very similar” and that Applicant should change her logo
`
`because Applicant’s logo “looks too similar to [Opposer’s] and we are in the same
`
`line of business.” See id.
`
`11. Unbeknownst to Opposer, on October 15, 2021, Applicant had already
`
`filed application Serial No. 97077881 under 15 U.S.C. § 1051(b) for the following
`
`mark (“Applicant’s Mark”):
`
`
`
`3
`
`
`
`The application sought registration of Applicant’s Mark for intended use with the
`
`sale of goods in International Class 030 that included tea and coffee, and with retail
`
`sales services in International Class 035 that featured tea among other items
`
`(collectively, “Applicant’s Goods”).
`
`12.
`
`Having received no reply from Applicant related to her concerns, on
`
`October 30, 2021, Opposer filed application Serial No. 97100898 under 15 U.S.C. §
`
`1051(a) for registration of Opposer’s Mark for use with the sale of goods in
`
`International Class 030 that included teas.
`
`13.
`
`Despite Opposer’s expressed concerns and Applicant’s knowledge of
`
`Opposer’s Mark, Applicant moved forward with using Applicant’s Mark with its
`
`business. Brewton-Smith finally responded to Opposer’s concerns on November 21,
`
`2021, via direct message, declining to stop using the logo because of costs, but
`
`stating that Applicant “made edits to [Applicant’s] main social media pages.” See
`
`Ex. 2.
`
`14.
`
`On information and belief, Applicant first used Applicant’s Mark in
`
`commerce with Applicant’s Goods in November 2021.
`
`15.
`
`On August 9, 2022, the USPTO issued an office action to Opposer,
`
`informing Opposer that Applicant’s application, Serial No. 97077881, is a prior
`
`4
`
`
`
`pending application that may bar registration of Opposer’s Mark under 15 U.S.C. §
`
`1052(d). On August 15, 2022, the USPTO suspended Opposer’s application to
`
`register Opposer’s Mark, citing Section 2(d) because of a likelihood of confusion with
`
`Applicant’s Mark, until Applicant either abandons its mark or Applicant’s Mark
`
`registers.
`
`16.
`
`The dates of first use and first use in commerce of Opposer’s Mark with
`
`Opposer’s Goods precede the first use or constructive filing date for Applicant’s
`
`Mark with Applicant’s Goods.
`
`17.
`
`Applicant had actual knowledge of Opposer’s Mark and its use with
`
`Opposer’s Goods before Applicant filed application Serial No. 97077881 with the
`
`USPTO.
`
`18.
`
`Applicant had actual knowledge of Opposer’s Mark and its use with
`
`Opposer’s Goods before Applicant used Applicant’s Mark with Applicant’s Goods.
`
`19.
`
`Opposer’s Mark has priority over Applicant’s Mark based on the date
`
`of Opposer’s first use in commerce of Opposer’s Mark with Opposer’s Goods.
`
`20.
`
`Applicant’s Mark is nearly identical visually with Opposer’s Mark.
`
`21.
`
`Applicant’s Mark creates a nearly identical commercial impression
`
`with Opposer’s Mark.
`
`22.
`
`Applicant’s Goods are identical or closely related to Opposer’s Goods.
`
`23.
`
`Applicant and Opposer each has its principal place of business in the
`
`New York City metropolitan area.
`
`5
`
`
`
`24.
`
`Applicant sells Applicant’s Goods through the same or substantially
`
`similar trade channels as Opposer sells Opposer’s Goods.
`
`25.
`
`Applicant’s Mark is likely to cause confusion with Opposer’s Mark,
`
`cause mistake with Opposer’s Mark, or deceive the public.
`
`26.
`
`If Applicant is allowed to register Applicant’s Mark, Opposer would be
`
`damaged within the meaning of 15 U.S.C. § 1063. Therefore, the USPTO should
`
`refuse registration of Applicant’s Mark.
`
`WHEREFORE, Opposer requests that this Notice of Opposition be sustained
`
`and that registration of Applicant’s Mark, Serial No. 97077881, be refused.
`
`Respectfully Submitted,
`
`Dated: June 2(cid:27), 2023
`
`Michael B. Bressman. TMCP-VAN
`VANDERBILT LEGAL CLINIC
`131 21St Avenue South
`Nashville, TN 37203
`Phone: (615) 322-4964
`Email: trademarks@vanderbilt.edu
`
`Attorneys for Opposer,
`Chinonso Okehie d/b/a Chixotic
`
`6
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`6/27/23, 11:23 AM
`
`Home - Chixotic Tea
`
`FREE US SHIPPING ON ORDERS OVER $25
`
`
`
`HOME OUR STORY
`
`SHOP
`
`SOCIAL IMPACT
`
`LETS TALK TEA ACCOUNT
`
`WHERE TO BUY
`
`CONTACT US
`
`100% ALL-NAT
`
`No Arti(cid:237)cial Flavors, Colors or Pre
`
`SHOP NOW
`
`https://chixotic.com
`
`
`
`1/5
`
`
`
`6/27/23, 11:23 AM
`
`Home - Chixotic Tea
`
`PPuurrpple e iiss tthhee NNewew GGrreeneen
`
`Purple tea is a varietal of the camellia sinensis tea plant, which is the same plant from which black, green and oolong teas
`
`are produced. Purple tea has been shown to only flourish in the highlands of Mount Kenya due to the country’s unique
`
`tropical climate and high elevations, which simultaneously trigger the production of anthocyanins to protect the plants from
`
`ultraviolet radiation.
`
`Purple tea contains anthocyanins which are powerful antioxidants naturally found in dark red to purplish-blue fruits and
`
`vegetables including berries, acai and eggplants. Research studies have shown that anthocyanins found in purple tea leaves
`
`may offer protection against a myriad of chronic conditions such as cancer, diabetes, heart diseases and neurodegenerative
`
`diseases. Purple tea has almost twice the amount of antioxidants as green teas with a more delicate taste and lower caffeine
`
`content.
`
`Why Chixotic Purple Tranquilitea?
`
`
`
`
`
`
`
`
`
`
`
`Premium Quality Whole tea leaves
`
`Sustainably and Organically Grown by Small-Scale Farmers
`
`Anti-Viral | Anti-Inflammatory | Anti-Aging
`
`High Antioxidants
`
`Low Caffeine
`
`https://chixotic.com
`
`
`
`2/5
`
`
`
`6/27/23, 11:23 AM
`
`Home - Chixotic Tea
`
`B U Y N O W
`
`https://chixotic.com
`
`
`
`3/5
`
`
`
`6/27/23, 11:23 AM
`
`Home - Chixotic Tea
`
`HOW WOULD YOU LIKE YOUR
`TEA?
`
`By chixotic
`
`CALM-ALERT
`
`By chixotic
`
`GIMME SOME SUGAR
`
`By chixotic
`
`
`
`PuPuPuPuPuPuPuPuP rprprprprprprppleleleeleleleee TTTTTTTTTrrrrrrranananananananququququququququililililililiTiTiTiTiTiTTTeaeaeaeaeaeaeaePurple TranquiliTea
`
`C O N N E C T W I T H U S
`
`
`
`© Copyright by Chixotic All right reserved | Contact Us | Return Policy | Privacy Policy
`
`
`
`ChChiixxoottiicc TTeeTTT aa
`
`https://chixotic.com
`
`
`
`4/5
`
`
`
`6/27/23, 11:20 AM
`
`Purple Tranquilitea - Whole Leaf Purple Tea from Kenya - Chixotic Tea
`
`Please Contact Us for Wholesale Purchase
`
`
`
`HOME OUR STORY
`
`SHOP
`
`SOCIAL IMPACT
`
`LETS TALK TEA ACCOUNT
`
`WHERE TO BUY
`
`CONTACT US
`
`Home
`
`
`
`Chixotic Tea
`
`
`
`Purple Tranquilitea – Whole Leaf Purple Tea from Kenya
`
`PurpPurplle Te Tranranquilitquiliteea – Wha – Whoolle Le Leeafaf
`
`
`PurpPurplle Te Teea Fa Frrom Kom Kenenyynnn aa
`
`(11 customer reviews)
`
`$9.95 – $16.95
`
`https://chixotic.com/product/chixotic-purple-tranquilitea/
`
`1/3
`
`
`
`6/27/23, 11:20 AM
`
`Purple Tranquilitea - Whole Leaf Purple Tea from Kenya - Chixotic Tea
`
`Kenyan Whole Leaf Purple Tea
`
`
`
`TypeType
`
`Roasted
`
`SizeSize
`
`60g
`
`
`
`$$19.9519 95
`
`
`
`$$16.9516.95
`
`ADD TO CART
`
`97 in stock
`
`-+
`
`1
`
`SKU: N/A Category: Chixotic Tea Tags: high tea, Loose leaf tea, low caffeine tea, purple tea, roasted tea, steamed tea, tea, tea
`
`gift, wellness tea
`
`Description
`
`Additional information
`
`Reviews (11)
`
`Product Description
`
`
`
`Product DescriptionProduct Description
`
`Purple Tranquilitea is a premium Kenyan Whole Leaf Purple Tea with a light, floral flavor and low caffeine. This tea
`
`originates from the camellia sinensis tea plant, the same plant from which black, green and oolong teas are produced. Unlike
`
`other types of tea, however, the leaves of this new varietal (camellia sinensis var assamica) are purple as they are grown in
`
`extremely high elevations of 7000+ feet and unique climate conditions in the highlands of Mount Kenya. The exposure to
`
`sunlight causes the tea plants to produce very high levels of anthocyanin (antioxidant) which protects the leaves against UV
`
`radiation and pest, thus eliminating the need for pesticides or chemicals.
`
`Purple tea is widely known for its high level of anthocyanins, which is the same super-antioxidant found in purple fruits and
`
`vegetables like blueberries, eggplant, and purple grapes. In fact, a cup of purple tea contains 15x the amount of anthocyanins
`
`as a cup of blueberries. Purple contains almost twice as much antioxidants as green or black tea and is the only tea that
`
`contains GHG, a polyphenol that supports healthy weight management by inhibiting the digestion of fatty acid.
`
`Brewing Instructions: Add 2 teaspoons of tea to boiled water and steep for 3-5 minutes. Add a squeeze of lemon to your
`
`brew and watch your tea turn a beautiful pinkish-purple color
`
`Ingredients: 100% Purple Tea
`
`
`
`RELATED PRODUCTSRELATED PRODUCTS
`
`Chixotic Gourmet Tea
`Collection
`
`$49.99
`
`https://chixotic.com/product/chixotic-purple-tranquilitea/
`
`2/3
`
`
`
`6/27/23, 11:20 AM
`
`Purple Tranquilitea - Whole Leaf Purple Tea from Kenya - Chixotic Tea
`
`YYOOUU MMAAYY AALSOLSO LLIKKE…E…
`
`Sale!
`
`Sale!
`
`
`
`Golden BeauTea – Loose
`Leaf Black Tea with
`Cinnamon
`
`Black MajesTea –
`Premium Whole Leaf
`Black Tea
`
`
`
`$$10.9510 95
`
`$9.50
`
`$$9.959 95
`
`$8.95
`
`C O N N E C T W I T H U S
`
`
`
`© Copyright by Chixotic All right reserved | Contact Us | Return Policy | Privacy Policy
`
`
`
`ChChiixxoottiicc TTeeTTT aa
`
`https://chixotic.com/product/chixotic-purple-tranquilitea/
`
`3/3
`
`
`
`
`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`
`
`
`
`Q Search
`
`AaeBOO®
`
`@ Sibahle Teas
`
`@
`
`July 21, 2021 10:48 pm
`
`Just watched the you tube of
`you on brand ambassadors.
`Congrats. Great showing. | saw
`the number pop up, are you
`here in NY? Would love to chat.
`lam in NY. This has been a
`process getting up and
`running. Maybe we can trade
`war Stories. All the best.
`ES Regina.
`Regina@brewteafulqueen.com
`
`July 22, 2021 10:36 am
`
`Hi Regina, hope you're well
`and thanks for watching the
`podcast'¢>| hear you.. its very
`tough but we gotta keep
`pushing. | live in NY as well and
`happy to chat. Lookslike
`you're an African tea
`connoisseur <Do you also
`sell?
`Best,
`Chi
`Chixotictea@gmail.com
`
`Mo
`
`
`
`Sibahle Teas
`
`its my intention. I'm working on
`branding, logo, website,
`launch. All things to get ready
`to be a boss in this game. |
`have been in the overthinking
`space for too long. Hopeful to
`get this thing going in the next
`few months. Thanks for
`sharing your contact. How
`about a Friday eve chat?
`
`Ok. Will call between 7-8.
`
`Hope that works. Chat then.
`
`ASCBOO:
`
`
`
`| was in the overthinking space
`for years &. Sure, I'm available
`Friday eve
`
`That works!
`
`A,
`
`
`
`Q Search
`
`i @
`
`@® Oo ®
`
`7;
`
`!
`
`@ Sibahle Teas
`
`July 24, 2027 2:33 pm
`
`@
`
`| have an idea on how we may
`collaborate on something.
`Let's chat aboutstarting a
`digital presence that can
`benefit us both. Let's talk tea
`on a video/audio platform. You
`tube or a podcast where we
`can talk about african teas.
`What do you think. We can
`take our time to map and plan
`it out. Maybe to qolive early
`spring after the wedding. What
`
`g do you think.
`
`July 25, 2027449 pm
`
`Yes! | love the idea. | actually
`have thought about doing
`somethinglike that but
`couldn't think of who to do it
`with so this would be perfect.
`I'll start putting some thoughts
`on paper and maybe we can
`chat again after | get back
`from Italy?
`
`lulv FA A027 TET om
`
`
`
`Q Search
`
`fr @ ®O ®
`
`@ Sibahle Teas
`
`G@)
`
`July 25, 2021 11:11 pm
`
`@ Sure deal. Safe travels.
`
`October 22, 2021 8:10 pm
`
`Hey when you have a moment
`can you reach out. My cell
`
`Q again is
`
`October 29, 2021 5:35 pm
`
`thanksforthe call, here is the
`inspiration picture
`{"A?":"B""a":5,"d":"B","h":"ww
`w.canva.com","c":"DAEq25Qtu
`Cs","i":"WL5V_uZKaDiL9ou3i3
`hXSA","b":1635543219864,"A"
`
`[{"A2":"1","A":108,"B":149.5444
`3295353423,"D":398.769816
`8978565,"C":667.3971830926
`469,"a":{"B"{"A":
`{"A":"MAEq5br8FVw","B":1},"B
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`{"D":398.7698168978565,"C":
`667.3971830926469}}}}],"B":1
`
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