Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1298071
`ESTTA Tracking number:
`07/18/2023
`
`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.
`
`Marriott International, Inc.
`07/19/2023
`
`10400 FERNWOOD ROAD
`BETHESDA, MD 20814
`UNITED STATES
`
`SARA K. STADLER
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 AVENUE OF THE AMERICAS, 21ST FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: sstadler@kilpatricktownsend.com
`Secondary email(s): sstadler@kilpatricktownsend.com, LKa-
`plan@kilpatricktownsend.com, agarcia@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com
`212-775-8700
`1307265
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97422384
`07/18/2023
`
`Publication date
`Opposition period
`ends
`
`03/21/2023
`07/19/2023
`
`Angrow Company Limited
`1675 SOUTH STATE
`SUITE B
`DOVER, DE 19901
`UNITED STATES
`Goods/services affected by opposition
`
`Class 035. First Use: Feb 10, 2022 First Use In Commerce: Feb 10, 2022
`All goods and services in the class are opposed, namely: Advertising and advertisement services;
`Advertising and marketing; Business advice, inquiries or information; Business merchandising display
`services; Import and export agencies; Market analysis; Marketing analysis services; Marketing re-
`search; Organisation of exhibitions for commercial or advertising purposes; Product merchandising
`for others; Providing business information via a web site; Sales promotion for others; Sample distribu-
`tion; Sponsorship search; Wholesale store services for pharmaceutical, veterinary and sanitary pre-
`parations and medical supplies; Provision of an on-line marketplace for buyers and sellers of goods
`and services
`
`

`

`Grounds for opposition
`
`Priority and likelihood of confusion
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Section 1(a) and (c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`Registration date
`
`6148202
`
`Principal
`09/08/2020
`
`Application date
`
`10/30/2018
`
`Foreign priority
`date
`
`04/30/2018
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MARRIOTT BONVOY
`
`NONE
`
`Class 035. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`Advertising, business management, business administration; incentive award
`programs, namely, programs to promote hotel, resort, airline, car rental, time
`share, travel, and vacation services of others; business administration of con-
`sumer loyalty programs
`Class 036. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`Real estate timesharing services featuring an incentive award program; real es-
`tate listing, rental and leasing services for residential housing, apartments,
`rooms in homes, vacation homes, and villas featuring an incentive award pro-
`gram; credit card services
`Class 043. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`Services for providing food and drink; temporary accommodation; hotel services
`featuring an incentive award program; hotel reservations
`
`U.S. registration
`no.
`Register
`Registration date
`
`6131145
`
`Principal
`08/18/2020
`
`Application date
`
`02/07/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MARRIOTT BONVOY
`
`The mark consists of the stylized wording "MARRIOTT BONVOY" with a line be-
`neath the last "O" in "BONVOY".
`Class 035. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`administration of an incentive award program that allows members to redeem
`points for accommodations and travel-related goods, services, and experiences;
`administration of an incentive award program that allows members to redeem
`points for awards offered by other loyalty programs; promoting hotel, resort, air-
`line, car rental, time share, travel, and vacation services through an incentive
`
`

`

`award program; business organization, operation and supervision of loyalty pro-
`grams
`Class 036. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`real estate timesharing services featuring an incentive award program; real es-
`tate listing, rental and leasing services for residential housing, apartments,
`rooms in homes, vacation homes, and villas featuring an incentive award pro-
`gram; issuance of credit cards; credit card authorization, verification, payment
`processing, and transaction processing services
`Class 043. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`hotel services featuring an incentive award program; hotel reservation services
`for others
`
`6479592
`
`Application date
`
`08/14/2019
`
`Principal
`09/07/2021
`
`Foreign priority
`date
`MARRIOTT BONVOY BOUTIQUES
`
`NONE
`
`NONE
`
`Class 003. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`personal care products, namely, bath soaps, shampoo, hair conditioner, body lo-
`tion and shower gel
`Class 020. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`mattresses; box springs; pillows; mattress toppers
`Class 024. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`bed sheets; pillowcases; duvets; duvet covers; bed blankets; blanket throws;
`mattress pads; towels
`Class 025. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`robes
`Class 035. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`online retail store services featuring linens, bedding products, towels, personal
`care products, apparel and accessories, interior furnishings, and household
`goods
`
`Notice of Opposition - VOIBON and Design.pdf(523381 bytes )
`Exhibits to Notice of Opposition - VOIBON and Design_Part1.pdf(5032465 bytes
`
`Exhibits to Notice of Opposition - VOIBON and Design_Part2.pdf(5578082
`bytes )
`Exhibits to Notice of Opposition - VOIBON and Design_Part3.pdf(5142488 bytes
`)
`
`)-
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`Attachments
`
`Signature
`Name
`Date
`
`/Sara K. Stadler/
`Sara K. Stadler
`07/18/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application Serial No.: 97/422,384
`
`Mark:
`
`
`
`Filing Date: May 20, 2022
`Publication Date: March 21, 2023
`
`
`MARRIOTT INTERNATIONAL, INC.,
`
`
`Opposer,
`
`
`ANGROW COMPANY LIMITED,
`
`
`v.
`
`Applicant.
`
`
`
`
`
`
`
`Opposition No. _______________
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Marriott International, Inc. (“Marriott”), a corporation organized and existing
`
`under the laws of Delaware with a principal place of business at 10400 Fernwood Road,
`
`Bethesda, Maryland 20817, will be damaged by registration of the mark shown in Application
`
`Serial No. 97/422,384 (the “Application”) and published in the Official Gazette on March 21,
`
`2023, and accordingly, Opposer opposes the Application.
`
`As grounds for this Notice, Marriott alleges as follows:
`
`1.
`
`Marriott operates, franchises, and licenses more than 8,500 hotel, residential,
`
`timeshare, and other lodging properties under more than 31 brands and across 138 countries and
`
`territories, giving people more ways to connect, experience and expand their world. Founded by
`
`J. Willard and Alice Marriott, and guided by family leadership and ethical values since 1927,
`
`
`
`1
`
`

`

`their principles remain embedded in the company’s culture and in everything Marriott does
`
`today.
`
`2.
`
`Marriott launched its Marriott Bonvoy® loyalty program on February 13, 2019.
`
`Marriott Bonvoy® is a loyalty rewards program that enables its members to earn points for hotel
`
`stays, tours and activities, shopping with the Marriott Bonvoy® credit cards, and offerings from
`
`Marriott’s travel partners. Members can use their points to redeem hotel stays, flights, car rentals,
`
`gift cards, shopping, and unforgettable Marriott Bonvoy Moments™ experiences.
`
`3.
`
`Following the successful launch of the Marriott Bonvoy® loyalty program,
`
`Marriott expanded its offerings under the Marriott Bonvoy name and marks to a range of
`
`additional services, including as the overall branding for Marriott’s entire portfolio of brands on
`
`marriott.com, as well as branding for retail offerings under the MARRIOTT BONVOY
`
`BOUTIQUES mark; hotel and hospitality in partnerships such as offerings with Uber and with
`
`MGM, and as part of some of Marriott’s own brands such as HOMES & VILLAS BY
`
`MARRIOTT BONVOY; travel entertainment and information under marks such as MARRIOTT
`
`BONVOY TRAVELER; and a family of MARRIOTT BONVOY credit cards, among other uses.
`
`4.
`
`Marriott owns the following United States trademark registrations of marks
`
`containing BONVOY (the “BONVOY Marks”), among many others:
`
`Mark
`
`MARRIOTT BONVOY
`
`Reg. No. /
`Ser. No.
`6,148,202
`
`Dates
`
`Goods and Services
`
`Priority date:
`Apr. 30, 2018
`
`Registration date:
`Sept. 8, 2020
`
`Class 35: Advertising, business
`management, business administration;
`incentive award programs, namely,
`programs to promote hotel, resort,
`airline, car rental, time share, travel,
`and vacation services of others;
`business administration of consumer
`loyalty programs
`Class 36: Real estate timesharing
`services featuring an incentive award
`
`2
`
`
`
`

`

`Mark
`
`Reg. No. /
`Ser. No.
`
`Dates
`
`Goods and Services
`
`6,131,145
`
`
`
`Filing date:
`Feb. 7, 2019
`
`Registration date:
`Aug. 18, 2020
`
`program; real estate listing, rental and
`leasing services for residential
`housing, apartments, rooms in homes,
`vacation homes, and villas featuring
`an incentive award program; credit
`card services
`Class 43: Services for providing food
`and drink; temporary accommodation;
`hotel services featuring an incentive
`award program; hotel reservations
`Class 35: Administration of an
`incentive award program that allows
`members to redeem points for
`accommodations and travel-related
`goods, services, and experiences;
`administration of an incentive award
`program that allows members to
`redeem points for awards offered by
`other loyalty programs; promoting
`hotel, resort, airline, car rental, time
`share, travel, and vacation services
`through an incentive award program;
`business organization, operation and
`supervision of loyalty programs
`Class 36: Real estate timesharing
`services featuring an incentive award
`program; real estate listing, rental and
`leasing services for residential
`housing, apartments, rooms in homes,
`vacation homes, and villas featuring
`an incentive award program; issuance
`of credit cards; credit card
`authorization, verification, payment
`processing, and transaction
`processing services
`Class 43: Hotel services featuring an
`incentive award program; hotel
`reservation services for others
`
`
`
`3
`
`

`

`Mark
`
`MARRIOTT BONVOY
`BOUTIQUES
`
`Reg. No. /
`Ser. No.
`6,479,592
`
`Dates
`
`Goods and Services
`
`Filing date:
`Aug. 14, 2019
`
`Registration date:
`Sept. 7, 2021
`
`Class 3: Personal care products,
`namely, bath soaps, shampoo, hair
`conditioner, body lotion and shower
`gel
`Class 20: Mattresses; box springs;
`pillows; mattress toppers
`Class 24: Bed sheets; pillowcases;
`duvets; duvet covers; bed blankets;
`blanket throws; mattress pads; towels
`Class 25: Robes
`Class 35: Online retail store services
`featuring linens, bedding products,
`towels, personal care products,
`apparel and accessories, interior
`furnishings, and household goods
`
`
`The foregoing registrations (collectively, the “BONVOY Registrations”) are valid and in full
`
`force and effect. Marriott’s BONVOY Registrations constitute prima facie evidence of
`
`Marriott’s exclusive right to use the registered marks in connection with the goods and services
`
`specified in the registrations. Pursuant to 37 C.F.R. § 2.122(d), printouts from the United States
`
`Patent and Trademark Office’s electronic TSDR database showing the current status and title for
`
`each of the BONVOY Registrations are attached as Exhibit A.
`
`5.
`
`In addition to Marriott’s BONVOY Registrations, Marriott owns common law
`
`rights in its BONVOY Marks and its BONVOY word mark for advertising, business
`
`management, and business administration services; business administration of incentive award
`
`programs; online retail store services featuring linens, bedding products, towels, personal care
`
`products, apparel and accessories, interior furnishings, and household goods; and personal care
`
`products, namely, bath soaps, shampoo, hair conditioner, body lotion and shower gel; and
`
`numerous other goods and services, all by virtue of Marriott’s extensive use and promotion of its
`
`BONVOY Marks and its BONVOY word mark in connection with these goods and services.
`
`
`
`4
`
`

`

`Marriott has enjoyed these common law rights since before the filing date of the Application and
`
`any date of first use that Applicant Angrow Company Limited (“Applicant”) may be able to
`
`establish.
`
`6.
`
`As a result of Marriott’s extensive sales, offering for sale, and promotion of these
`
`goods and services under its BONVOY Marks and its BONVOY word mark, as well as
`
`unsolicited media attention, the general consuming public of the United States associates
`
`Marriott’s BONVOY word mark with Marriott and has done so since prior to the filing date of
`
`the Application. Marriott’s BONVOY mark is famous.
`
`7.
`
`Notwithstanding Marriott’s prior rights, Applicant filed the Application on May
`
`20, 2022, under Section 1(a), 15 U.S.C. § 1051(a), to register the following mark (“Applicant’s
`
`Mark”) for the following services in Class 35 (“Applicant’s Services”), citing February 10, 2022,
`
`as the date of first use anywhere and in commerce:
`
`
`
`Advertising and advertisement services; Advertising and marketing; Business
`advice, inquiries or information; Business merchandising display services; Import
`and export agencies; Market analysis; Marketing analysis services; Marketing
`research; Organisation of exhibitions for commercial or advertising purposes;
`Product merchandising for others; Providing business information via a web site;
`Sales promotion for others; Sample distribution; Sponsorship search; Wholesale
`store services for pharmaceutical, veterinary and sanitary preparations and
`medical supplies; Provision of an on-line marketplace for buyers and sellers of
`goods and services
`
`8.
`
`Applicant submitted a specimen of use purporting to be a screen capture of a
`
`WordPress site at a subdomain of angrow.com (“Applicant’s Website”). See Exhibit B. That
`
`specimen describes Applicant’s “Voibon & Ryphra” service as “a skincare-focused website”
`
`
`
`5
`
`

`

`that, inter alia, “can display your products on our website for you and create greater value for
`
`you.” Id.
`
`9.
`
`Before filing the present Application, Applicant had already filed several other
`
`VOIBON applications containing specimens that depicted other parties’ products but apparently
`
`were digitally altered to add Applicant’s Mark. Applicant’s December 22, 2021, specimen for
`
`Application Serial No. 97/183,884 to register VOIBON in Class 3, for example, purported to
`
`depict a product
`
`listing
`
`for “Voibon ethereal” clove
`
`leaf oil at
`
`the website
`
`https://www.worldonlinevip.com/, see Exhibit C, when in fact, those photos apparently were
`
`copied from a different seller’s listing on Amazon.com:
`
`Applicant’s Specimen for
`App. Ser. No. 97/183,884
`
`
`
`
`https://www.amazon.com/UpNature-Essential-
`Undiluted-Unfiltered-
`Toothaches/dp/B01NALXB4X
`
`
`See Exhibit D. Indeed, Applicant conceded in an opposition proceeding in the United Kingdom
`
`that in the United States, it “only provided some images of a digital model for the purpose of
`
`registering the U.S. trademark.” See Exhibit E (emphasis added).
`
`
`
`6
`
`

`

`10.
`
`To test Applicant’s claims of use, Marriott retained an investigator in August
`
`2022 to purchase products from two websites associated with Applicant (https://angrowcompany
`
`limited.shop/ and http://www.voibon.com/shop/), each of which purported to offer personal care
`
`products for sale under Applicant’s Mark. While both websites allowed the investigator to add
`
`items to a cart, neither website was configured to receive payments. The investigator sent several
`
`emails to Applicant inquiring how to complete a purchase, but Applicant did not respond to those
`
`inquiries.
`
`11.
`
`On information and belief, the products shown in Applicant’s “on-line
`
`marketplace” under Applicant’s Mark are not actually available for purchase.
`
`12.
`
`Applicant’s Mark is highly similar to Marriott’s BONVOY Marks and its
`
`BONVOY word mark visually, aurally, and conceptually. Further, Marriot has used its
`
`BONVOY Marks and its BONVOY word mark in connection with goods and services that are
`
`identical, closely related, or complementary to Applicant’s Services.
`
`13.
`
`On information and belief, Applicant selected VOIBON to traffic on Marriott’s
`
`goodwill in its BONVOY Marks and cause consumers to associate Applicant’s Mark with
`
`Marriott.
`
`FIRST GROUND FOR OPPOSITION
`LACK OF BONA FIDE USE IN COMMERCE
`15 U.S.C. § 1051(a)
`
`14. Marriott hereby incorporates each of the preceding paragraphs as if fully set forth
`
`
`
`herein.
`
`15.
`
`The Application cites February 10, 2022, as Applicant’s date of first use of
`
`Applicant’s Mark in United States commerce.
`
`
`
`7
`
`

`

`16.
`
`On information and belief, Applicant is not using, was not using at the time it
`
`filed the Application, and has never used Applicant’s Mark in United States commerce in
`
`connection with Applicant’s Services. First, on information and belief, the products displayed on
`
`Applicant’s “on-line marketplace” are not actually available for purchase. Second, even if
`
`Applicant were offering Applicant’s Services, its mark would be “Voibon & Ryphra” (also
`
`spelled “Voibon and Ryphra”), as Applicant’s specimen uses that term to identify the source of
`
`Applicant’s Services.
`
`17.
`
`Accordingly, on information and belief, Applicant’s recitation of services in the
`
`Application extends beyond any actual, bona fide use of Applicant’s Mark in United States
`
`commerce in violation of Section 1(a), and the Application is therefore void ab initio.
`
`18.
`
`Alternatively, on information and belief, Applicant has not used Applicant’s Mark
`
`in United States commerce in connection with all of Applicant’s Services at the time Applicant
`
`filed the Application. Because registration under Section 1(a) is allowed only as to services in
`
`connection with which the mark is actually being used, registration should be refused as to those
`
`services for which Applicant had not used Applicant’s Mark in United States commerce as of the
`
`filing date of the Application, namely, May 20, 2022.
`
`SECOND GROUND FOR OPPOSITION
`LIKELIHOOD OF CONFUSION
`15 U.S.C. § 1052(d)
`
`19. Marriott hereby incorporates each of the preceding paragraphs as if fully set forth
`
`herein.
`
`20.
`
`Applicant’s Mark is confusingly similar in appearance, sound, and commercial
`
`impression to Marriott’s BONVOY Marks.
`
`21. Marriott’s BONVOY word mark is a coined term lacking any dictionary
`
`definition, see Exhibit F, and the literal element of Applicant’s Mark merely flips the two
`8
`
`
`
`

`

`components of Marriott’s BONVOY word mark, substituting the aurally equivalent and visually
`
`similar “VOI” for “VOY.” See Exhibit G.
`
`22.
`
`In addition, Applicant’s Services are identical, closely related, or complementary
`
`to the goods and services in Marriott’s BONVOY Registrations. As one example, the services in
`
`Marriott’s BONVOY Registrations include “Advertising, business management, [and] business
`
`administration,” and the Application lists “Advertising and advertisement services; Advertising
`
`and marketing; Business advice, inquiries or information; [and] Business merchandising display
`
`services.” As another example, Marriott’s registration of MARRIOTT BONVOY BOUTIQUES
`
`(Reg. No. 6,479,592) includes both “Personal care products” in Class 3 and “Online retail store
`
`services featuring . . . personal care products” in Class 35. The Application lists “Provision of an
`
`on-line marketplace for buyers and sellers of goods and services,” and Applicant’s specimen
`
`makes clear these products are “skincare-focused,” as confirmed by Applicant’s pending
`
`applications to register marks containing VOIBON in Class 3. See Exhibit H.
`
`23.
`
`Applicant’s use of a mark highly similar to Marriott’s BONVOY Marks and
`
`BONVOY word mark for services that are identical, closely related, or complementary to goods
`
`and services offered by Marriott under those marks is likely to lead consumers mistakenly to
`
`believe that Applicant’s Services are associated with, licensed or endorsed by, connected with, or
`
`affiliated with Marriott.
`
`24. Marriott will be damaged by the registration of Applicant’s Mark because
`
`Applicant’s Mark so closely resembles Marriott’s previously used and registered BONVOY
`
`Marks and BONVOY word mark as to be likely to (a) cause confusion, mistake, or deception in
`
`the minds of consumers as to the origin or source of Applicant’s Services or the affiliation
`
`between Applicant and Marriott, and (b) cause consumers to withhold trade from Marriott, all in
`
`
`
`9
`
`

`

`violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Marriott’s interests therefore
`
`fall within the zone of interests protected by Section 13, 15 U.S.C. § 1063, and Marriott is
`
`entitled to bring this statutory cause of action.
`
`
`
`THIRD GROUND FOR OPPOSITION
`LIKELIHOOD OF DILUTION
`15 U.S.C. § 1125(c)
`
`25. Marriott incorporates each of the preceding paragraphs as if fully set forth herein.
`
`26. Marriott’s BONVOY word mark is distinctive in relation to Marriott’s goods and
`
`services under the mark.
`
`27. Marriott’s BONVOY word mark also is widely recognized by the general
`
`consuming public of the United States as designating Marriott as the source of its goods and
`
`services under the mark. Marriott’s BONVOY word mark therefore is famous and distinctive
`
`within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`28. Marriott’s BONVOY word mark has been famous within the meaning of Section
`
`43(c) since prior to the filing date of the Application and any first date of bona fide use in United
`
`States commerce that Applicant may be able to establish.
`
`29. Marriott also has engaged in substantially exclusive use of its BONVOY word
`
`mark.
`
`30.
`
`Applicant’s Mark is highly similar to Marriott’s BONVOY word mark. The literal
`
`element of Applicant’s Mark merely flips the two components of Marriott’s BONVOY word
`
`mark, substituting the aurally equivalent and visually similar “VOI” for “VOY.”
`
`31.
`
`Applicant’s use of Applicant’s Mark in connection with Applicant’s Services
`
`likely would cause consumers to associate Applicant’s Mark with Marriott’s BONVOY word
`
`mark.
`
`
`
`10
`
`

`

`32.
`
`Applicant’s Mark therefore is likely to dilute the distinctiveness of Marriott’s
`
`BONVOY word mark by eroding consumers’ identification of that mark with Marriott, and by
`
`otherwise lessening the capacity of that mark to identify and distinguish Marriott’s goods and
`
`services, in violation of Section 43(c)(1).
`
`33.
`
`If the Application matured into a registration, Applicant would obtain a prima
`
`facie exclusive right to use Applicant’s Mark in connection with Applicant’s Services, thus
`
`causing damage and injury to Marriott.
`
`34. Marriott therefore asks the Board to sustain this proceeding in Marriott’s favor by
`
`refusing registration to the mark underlying Application Serial No. 97/422,384.
`
`The required opposition fee is being electronically processed in connection with this
`
`Notice of Opposition.
`
`This 18th day of July, 2023.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Sara K. Stadler/
`Sara K. Stadler
`KILPATRICK TOWNSEND & STOCKTON LLP
`The Grace Building
`1114 Avenue of the Americas
`New York, New York 10036
`Telephone: (212) 775-8700
`Facsimile: (212) 775-8800
`sstadler@kilpatricktownsend.com
`
`Lindsay R. Kaplan
`KILPATRICK TOWNSEND & STOCKTON LLP
`701 Pennsylvania Ave., Suite 200
`Washington, DC 20004
`Telephone: (202) 508-5821
`Facsimile: (202) 585-0031
`lkaplan@kilpatricktownsend.com
`
`Attorneys for Opposer
`Marriott International, Inc.
`
`
`
`
`
`
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`11
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`

`

`
`
`CERTIFICATE OF TRANSMITTAL
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF OPPOSITION
`
`is being filed electronically with the TTAB via ESTTA on this, the 18th day of July, 2023.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Alberto Garcia/
`Alberto Garcia
`
`
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`
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`12
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`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Generated on: This page was generated by TSDR on 2023-06-02 16:40:21 EDT
`
`Mark: MARRIOTT BONVOY
`
`US Serial Number: 88174329
`
`US Registration
`Number:
`
`6148202
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Oct. 30, 2018
`
`Registration Date: Sep. 08, 2020
`
`Currently TEAS RF: Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Sep. 08, 2020
`Publication Date:Nov. 05, 2019Notice of Allowance Date:Dec. 31, 2019
`
`Mark Information
`
`Mark Literal
`Elements:
`
`MARRIOTT BONVOY
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Foreign Information
`
`Priority Claimed: Yes
`
`74902
`
`Foreign
`Application
`Number:
`
`Foreign
`Application/Registration
`Country:
`
`JAMAICA
`
`Foreign
`Application Filing
`Date:
`
`Apr. 30, 2018
`
`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: Advertising, business management, business administration; incentive award programs, namely, programs to promote hotel, resort,
`airline, car rental, time share, travel, and vacation services of others; business administration of consumer loyalty programs
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 13, 2019
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: Feb. 13, 2019
`
` 
`

`

`For: Real estate timesharing services featuring an incentive award program; real estate listing, rental and leasing services for residential
`housing, apartments, rooms in homes, vacation homes, and villas featuring an incentive award program; credit card services
`
`International
`Class(es):
`
`036 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 13, 2019
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: Feb. 13, 2019
`
`For: Services for providing food and drink; temporary accommodation; hotel services featuring an incentive award program; hotel
`reservations
`
`International
`Class(es):
`
`043 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 13, 2019
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: Yes
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100, 101
`
`Use in Commerce: Feb. 13, 2019
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MARRIOTT INTERNATIONAL, INC.
`
`Owner Address: 10400 FERNWOOD ROAD
`DEPT 92/523
`BETHESDA, MARYLAND UNITED STATES 20817
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`Attorney/Correspondence Information
`
`DELAWARE
`
`Attorney Name: Lindsay R. Kaplan
`
`Attorney Primary
`Email Address:
`
`tmadmin@kilpatricktownsend.com
`
`Correspondent
`Name/Address:
`
`Lindsay R. Kaplan
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Mailstop: IP Docketing - 22
`Atlanta, GEORGIA UNITED STATES 30309
`
`Attorney of Record
`Docket Number: 1112456
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone: 202-508-5800
`
`Fax: 202-508-5858
`
`Correspondent e-
`mail:
`
`tmadmin@kilpatricktownsend.com nytrademarks
`@kilpatricktownsend.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Dec. 02, 2020
`Sep. 08, 2020
`Aug. 06, 2020
`Aug. 05, 2020
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`REGISTERED-PRINCIPAL REGISTER
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Proceeding
`Number
`
`

`

`66154
`66154
`66154
`66154
`66154
`
`88889
`88889
`
`6332
`6332
`76487
`69712
`69712
`69712
`
`6325
`6325
`76487
`76487
`
`Jul. 17, 2020
`Jul. 16, 2020
`Jun. 25, 2020
`Jul. 16, 2020
`Jun. 25, 2020
`Jul. 16, 2020
`Jun. 25, 2020
`Jun. 25, 2020
`Dec. 31, 2019
`Nov. 05, 2019
`Nov. 05, 2019
`Oct. 16, 2019
`Oct. 01, 2019
`Sep. 25, 2019
`Sep. 25, 2019
`Sep. 25, 2019
`Aug. 19, 2019
`Aug. 19, 2019
`Aug. 19, 2019
`Aug. 01, 2019
`Aug. 01, 2019
`Jul. 29, 2019
`Jul. 24, 2019
`Feb. 06, 2019
`Feb. 06, 2019
`Feb. 06, 2019
`Feb. 06, 2019
`Nov. 14, 2018
`Nov. 02, 2018
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`STATEMENT OF USE PROCESSING COMPLETE
`USE AMENDMENT FILED
`SOU EXTENSION 1 GRANTED
`SOU EXTENSION 1 FILED
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`TEAS EXTENSION RECEIVED
`TEAS STATEMENT OF USE RECEIVED
`NOA E-MAILED - SOU REQUIRED FROM APPLICANT
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED
`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
`LETTER OF SUSPENSION E-MAILED
`SUSPENSION LETTER WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`ASSIGNED TO LIE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`Current Location: PUBLICATION AND ISSUE SECTION
`Date in Location: Aug. 05, 2020
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Registrant: Marriott Worldwide Corporation
`
`Assignment 1 of 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 7112/0442
`
`Date Recorded: Nov. 20, 2020
`
`Supporting
`Documents:
`
`assignment-tm-7112-0442.pdf
`
`Name: MARRIOTT WORLDWIDE CORPORATION
`
`Legal Entity Type: CORPORATION
`
`Name: MARRIOTT INTERNATIONAL, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 10400 FERNWOOD ROAD
`
`Pages: 2
`
`Assignor
`Execution Date: Nov. 20, 2020
`
`State or Country
`Where Organized:
`
`MARYLAND
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
` 
`

`

`DEPT 92/523
`BETHESDA, MARYLAND 20817
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`ELIZABETH G. REGAN
`
`10400 FERNWOOD ROAD
`DEPT 52/9223
`BETHESDA, MD 20817
`
`Domestic Representative - Not Found
`
`

`

`Generated on: This page was generated by TSDR on 2023-06-02 16:41:02 EDT
`
`Mark: MARRIOTT BONVOY
`
`US Serial Number: 88292063
`
`US Registration
`Number:
`
`6131145
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 07, 2019
`
`Registration Date: Aug. 18, 2020
`
`Currently TEAS RF: Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Aug. 18, 2020
`Publication Date:Oct. 29, 2019Notice of Allowance Date:Dec. 24, 2019
`
`Mark Information
`
`Mark Literal
`Elements:
`
`MARRIOTT BONVOY
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of the stylized wording "MARRIOTT BONVOY" with a line beneath the last "O" in "BONVOY".
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.17.01 - Straight line(s), band(s) or bar(s); Lines, straight; Bars, straight; Bands, straight
`26.17.05 - Lines, horizontal; Horizontal line(s), band(s) or bar(s); Bars, horizontal; Bands, horizontal
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services