Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1296579
`07/11/2023
`
`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
`
`Energetics Systems LLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/19/2023
`
`7491 N FEDERAL HWY C5128
`BOCA RATON, FL 33487
`UNITED STATES
`
`AMANDA N. MARSTON
`HOLLAND & HART LLP
`PO BOX 8749
`ATTN: TRADEMARK DOCKETING
`DENVER, CO 80201
`UNITED STATES
`Primary email: docket@hollandhart.com
`Secondary email(s): anmarston@hollandhart.com, mamoore@hollandhart.com
`303-473-2712
`
`Docket no.
`
`119730.0001
`
`Applicant information
`
`Application no.
`
`97379728
`
`07/11/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`03/21/2023
`
`Opposition period
`ends
`
`07/19/2023
`
`H.P. MOTORS LLC
`SUITE 406
`1761, W HILLSBORO BLVD
`DEERFIELD BEACH, FL 33442
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 011. First Use: Oct 18, 2019 First Use In Commerce: Oct 18, 2019
`All goods and services in the class are opposed, namely: Portable ionic foot baths for use at home
`
`Class 035. First Use: Oct 18, 2019 First Use In Commerce: Oct 18, 2019
`All goods and services in the class are opposed, namely: On-line retail store services featuring health
`and wellness products, massagers, supplements, and personal care products
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`
`ESTTA1296579
`07/11/2023
`
`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
`
`Energetics Systems LLC
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/19/2023
`
`7491 N FEDERAL HWY C5128
`BOCA RATON, FL 33487
`UNITED STATES
`
`AMANDA N. MARSTON
`HOLLAND & HART LLP
`PO BOX 8749
`ATTN: TRADEMARK DOCKETING
`DENVER, CO 80201
`UNITED STATES
`Primary email: docket@hollandhart.com
`Secondary email(s): anmarston@hollandhart.com, mamoore@hollandhart.com
`303-473-2712
`
`Docket no.
`
`119730.0001
`
`Applicant information
`
`Application no.
`
`97379728
`
`07/11/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`03/21/2023
`
`Opposition period
`ends
`
`07/19/2023
`
`H.P. MOTORS LLC
`SUITE 406
`1761, W HILLSBORO BLVD
`DEERFIELD BEACH, FL 33442
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 011. First Use: Oct 18, 2019 First Use In Commerce: Oct 18, 2019
`All goods and services in the class are opposed, namely: Portable ionic foot baths for use at home
`
`Class 035. First Use: Oct 18, 2019 First Use In Commerce: Oct 18, 2019
`All goods and services in the class are opposed, namely: On-line retail store services featuring health
`and wellness products, massagers, supplements, and personal care products
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`
`
`Other
`
`The application is void ab initio under 15 U.S.C.
`§ 1051(a) based on the material misrepres-
`entations and misstatements in the application's
`declarations.
`
`Marks cited by opposer as basis for opposition
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`OPTIMUM
`
`Electric foot baths; Portable electric foot baths; Portable foot baths;
`Portable foot baths for use in pedicure salons and day spas and re-
`lated services since at least as early as February 2008.
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`OPTIMUM DETOX FOOTBATH
`
`Electric foot baths; Portable electric foot baths; Portable foot baths;
`Portable foot baths for use in pedicure salons and day spas and re-
`lated services since at least as early as February 2008.
`
`Attachments
`
`NOO Optimum Detox.pdf(183982 bytes )
`
`Signature
`
`/Amanda Marston/
`
`Name
`
`Date
`
`AMANDA N. MARSTON
`
`07/11/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`Energetics Systems LLC,
`
`
`v.
`
`H.P. Motors LLC,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No.:
`
`Mark: OPTIMUM DETOX
`
`Serial No. 97379728
`
`
`
`NOTICE OF OPPOSITION
`
`Energetics Systems LLC (“Energetics”), a Florida limited liability company, with an
`
`address of 7491 N Federal Hwy C5128, Boca Raton, Florida 33487, believes that it will be
`
`damaged by and hereby opposes registration of the mark OPTIMUM DETOX (“Applicant’s
`
`Mark”), as shown in U.S. Trademark Application Serial No. 97379728 covering Portable ionic
`
`foot baths for use at home in Class 11 and On-line retail store services featuring health and
`
`wellness products, massagers, supplements, and personal care products in Class 35 (the
`
`“Application”).
`
`As grounds for its opposition, Energetics alleges that, upon actual knowledge with
`
`respect to itself and its own actions, and upon information and belief as to other matters:
`
`Opposer and Opposer’s Mark
`
`1.
`
`Energetics, together with its predecessors in interest, licensees and affiliates,
`
`including Hymbas LLC (collectively “Opposer”), is a well-known health product business that
`
`has operated for nearly two decades.
`
`2.
`
`Since at least as early as February 2008, Opposer has used the marks OPTIMUM
`
`and OPTIMUM DETOX FOOTBATH (“Opposer’s Mark”) in connection with its foot bath and
`
`
`
`related offerings, including through its website at https://www.hymbas.com/optimum-detox-
`
`footbath.php.
`
`3.
`
`Opposer sells and advertises its OPTIMUM DETOX FOOTBATH goods
`
`throughout the United States.
`
`4.
`
`Opposer has made significant sales of footbath and related products in connection
`
`with Opposer’s Mark and has expended significant resources in the development, advertising,
`
`and promotion of its offerings in connection with Opposer’s Mark. The mark is widely
`
`recognized by consumers as designating Opposer’s premium products and services.
`
`5.
`
`Opposer enjoys nationwide common law rights since at least as early as 2008 in
`
`Opposer’s Mark in connection with health and wellness goods, including footbaths and services
`
`related to same.
`
`Applicant and Applicant’s Activities
`
`6.
`
`Applicant, H.P. Motors LLC (“Applicant”) is a Florida limited liability company
`
`located in Deerfield Beach, Florida, less than 10 miles from Opposer in Boca Raton, Florida.
`
`7.
`
`Opposer first learned of Applicant and its use of Opposer’s Mark when Opposer
`
`received calls from dissatisfied customers who had not received their OPTIMUM DETOX
`
`FOOTBATH products. On further investigation, Opposer learned these consumers were
`
`customers of Applicant that had been confused by Applicant’s use of Opposer’s Mark.
`
`8.
`
`Opposer also learned Applicant’s website incorporated content copied directly
`
`from Opposer’s website.
`
`9.
`
`Well before Applicant’s April 25, 2022 Application filing date, Opposer
`
`contacted Applicant to notify Applicant of Opposer’s rights.
`
`10.
`
`Despite Applicant’s actual notice of Opposer’s rights and notice of the actual
`
`consumer confusion, on April 25, 2022, Applicant applied to register OPTIMUM DETOX in
`
`2
`
`
`
`connection with footbath and related offerings in Classes 11 and 35. The Application published
`
`on March 21, 2023.
`
`11.
`
`The Application claims a first use date of October 18, 2019, over a decade after
`
`Opposer’s 2008 first use date.
`
`12.
`
`In the Application, Applicant, being warned that willful false statements are
`
`punishable by fine or imprisonment, declared that “no other persons…have the right to use the
`
`mark in commerce…” and that “the signatory believes that the applicant is owner of the
`
`trademark/service mark sought to be registered.”
`
`13.
`
`Applicant’s Mark fully incorporates Opposer’s OPTIMUM mark and omitting
`
`only the descriptive term “FOOTBATH” used in Opposer’s OPTIMUM DETOX FOOTBATH
`
`mark. The addition of “DETOX” to Opposer’s OPTIMUM mark and the omission of
`
`“FOOTBATH” from Opposer’s OPTIMUM DETOX FOOTBATH mark are insufficient to
`
`distinguish the mark in the Application from Opposer’s Mark.
`
`14. Moreover, the offerings set forth in the Application are identical to or overlapping
`
`with Opposer’s offerings.
`
`15.
`
`As such, use and registration of this nearly identical mark in connection with the
`
`identical and related/overlapping offerings covered by the Application is likely to cause (and has
`
`caused) consumer confusion.
`
`COUNT I
`Likelihood of Confusion
`(15 U.S.C. § 1052(d))
`
`16.
`
`Opposer realleges and incorporates by reference the preceding allegations of this
`
`Notice of Opposition.
`
`17.
`
`Opposer enjoys priority based on its prior use of Opposer’s Mark, which predates
`
`the filing date of the Application and the purported October 18, 2019 first use date on which
`
`Applicant relies.
`
`3
`
`
`
`18.
`
`The OPTIMUM DETOX mark set forth in the Application so closely resembles
`
`Opposer’s prior used and registered Mark as to be likely, when used in connection with the
`
`offerings set forth in the Application, to cause confusion, or to cause mistake, or to deceive under
`
`section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`COUNT II
`Fraud on the USPTO
`(15 U.S.C. § 1051(a))
`
`19.
`
`Opposer realleges and incorporates by reference the preceding allegations of this
`
`Notice of Opposition.
`
`20.
`
`Because Opposer directly contacted Applicant, and based on Applicant’s copying
`
`of Opposer’s website, on information and belief, Applicant knew of Opposer’s rights well before
`
`filing the Application.
`
`21.
`
`Applicant therefore willfully made knowingly false statements to the USPTO
`
`regarding its ownership of the mark identified in the Application and its knowledge of third-party
`
`rights in the mark.
`
`22.
`
`Accordingly, the Application should be refused pursuant to 15 U.S.C. § 1051(a).
`
`COUNT III
`Application Is Void Ab Initio
`(15 U.S.C. § 1051(a))
`
`23.
`
`Opposer realleges and incorporates by reference the preceding allegations of this
`
`Notice of Opposition.
`
`24.
`
`On information and belief, Applicant knew it did not have rights in Applicant’s
`
`Mark.
`
`25.
`
`On information and belief, Applicant made knowingly false statements in the
`
`declarations in the Application regarding its ownership of Applicant’s Mark and its knowledge
`
`of third-party rights in the mark.
`
`4
`
`
`
`26.
`
`Accordingly, the Application is void ab initio pursuant to 15 U.S.C. § 1051(a)
`
`because Applicant made material, false statements in its Application.
`
`WHEREFORE, Opposer believes it will be damaged by the registration of the mark
`
`shown in the Application and respectfully requests that the opposition be sustained and that
`
`registration to the Applicant be denied.
`
` The filing fee, in the amount of $1200, is being transmitted electronically with this
`
`submission. Any deficiency in the fee should be charged to Deposit Account No. 082623.
`
`
`
`July 11, 2023
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/Amanda Marston
`Amanda Marston
`Mark Moore
`HOLLAND & HART LLP
`P.O. Box 8749
`Denver, Colorado 80201
`Phone: (303) 245-2099
`anmarston@hollandhart.com
`mamoore@hollanhart.com
`docket@hollandhart.com
`
`Attorneys for Opposer
`Energetics Systems LLC
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`NOTICE REGARDING SERVICE
`
`Consistent with the Trademark Trial and Appeal Board Manual of Procedure Rule
`
`309.02(c)(1) (amended June 2018), service of the above NOTICE OF OPPOSITION will be
`
`effected by the Board. To facilitate the Board, the following physical address and email
`
`address(es) are available via TSDR.
`
`
`
`
`
`
`
`Ryan D. Artis
`Riverside Law LLP
`175 Strafford Avenue, Suite 100
`Wayne, Pennsylvania 19087
`dockets@riversidelaw.com; roberta@dmk.group; pminuzzo@dmk.group
`
`
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`
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`30039233_v2
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`6
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