ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1342746
`02/27/2024
`
`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
`
`Spumanti Valdo S.r.l.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/28/2024
`
`VIA FORO BOARIO 20
`VALDOBBIADENE, TV 31049
`ITALY
`
`ANTHONY P. VENTURINO
`VORYS SATER SEYMOUR & PEASE LLP
`P.O. BOX 2255
`IPLAW@VORYS
`COLUMBUS, OH 43216
`UNITED STATES
`Primary email: iplaw@vorys.com
`Secondary email(s): ybourne@vorys.com, apventurino@vorys.com,
`rfclancy@vorys.com
`No phone number provided
`
`Docket no.
`
`072924-x
`
`Applicant information
`
`Application no.
`
`97669791
`
`Opposition filing
`date
`
`Applicant
`
`02/27/2024
`
`Valpo Beverages LLC
`1310 DELFINO WAY
`MENLO PARK, CA 94025
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`10/31/2023
`
`Opposition period
`ends
`
`02/28/2024
`
`Class 033. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Alcoholic beverages, except beer
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`5869581
`
`Register
`
`Principal
`
`Application date
`
`07/27/2018
`
`

`

`Registration date
`
`09/24/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`VALDO
`
`The mark consists of the wording, "VALDO" in stylized form.
`
`Class 033. First use: First Use: Dec 31, 1960 First Use In Commerce: Dec 31,
`1999
`Alcoholic beverages except beers
`
`U.S. registration
`no.
`
`2818602
`
`Register
`
`Principal
`
`Registration date
`
`03/02/2004
`
`Application date
`
`08/13/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`VALDO
`
`NONE
`
`Class 033. First use: First Use: 1962 First Use In Commerce: 1994
`Wines, sparkling wines [, vermouth, grappa ]
`
`Attachments
`
`Notice of Opposition - VALPO.pdf(140011 bytes )
`Appendix A.pdf(186296 bytes )
`Appendix B.pdf(265107 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Reed F. Clancy/
`
`Reed F. Clancy
`
`02/27/2024
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Serial Number 97669791.
`
`
`
`
`
`
`
`Spumanti Valdo S.R.L.
`
`v.
`
`Valpo Beverages LLC
`
`Opposer,
`
`Applicant.
`
`Opposition No. _______
`Mark: VALPO
`
`Spumanti Valdo S.R.L. (“Opposer”) believes that it is and will continue to be damaged by
`
`NOTICE OF OPPOSITION
`
`registration of Application Serial Number 97/669,791 for the mark VALPO and therefore opposes the same.
`
`In support of this Notice of Opposition, Opposer alleges the following:
`
`1.
`
`Opposer is an Italian joint stock company with an address of Via Foro Boario 20
`
`Valdobbiadene, Italy 31049.
`
`2.
`
`According to current TSDR records, Valpo Beverages LLC (“Applicant”) is a limited
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`liability company organized under the state of California with an address of 1310 Delfino Way, Menlo Park,
`
`California 94025.
`
`Factual Background
`
`3.
`
`Opposer is the owner of the mark VALDO and a stylized version of VALDO (together, the
`
`“VALDO Mark”) which Opposer has used continuously in commerce in connection with alcoholic
`
`beverages other than beers, wine, sparkling wine, vermouth and grappa since at least as early as 1962. As
`
`a result of such continuous use, Opposer has developed common law rights in the VALDO Mark in
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`connection with these goods.
`
`
`
`1
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`

`

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`
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`4.
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`Opposer is the owner of federal trademark Reg. Nos. 5,869,581 and 2,818,602 for goods
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`in Class 33 (the “VALDO Registrations”).
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`5.
`
`On November 9, 2022, Applicant filed Application Serial No. 97/669,791 to register the
`
`mark VALPO in connection with Alcoholic beverages, except beer in Class 33 (the “Application”).
`
`6.
`
`7.
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`The Application was based on Applicant’s claimed intent to use the mark in commerce.
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`On November 9, 2022, Applicant submitted a sworn declaration to the PTO in which it
`
`stated that “The signatory believes that the applicant is entitled to use the mark in commerce; The applicant
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`has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in
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`commerce as of the application filing date on or in connection with the goods/services in the
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`application; and to the best of the signatory's knowledge and belief, the facts recited in the application are
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`accurate.”
`
`8.
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`9.
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`The Application was published for opposition on October 31, 2023.
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`On November 29, 2023, Opposer requested extension of the opposition deadline to
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`December 30, 2023, which the Board granted.
`
`10.
`
`On December 7, 2023, Opposer sent Applicant a cease and desist letter by way of
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`Applicant’s attorneys demanding that Applicant abandon its Application for the goods in Class 33, cease
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`use of the mark VALPO in connection with alcohol and related products, and refrain from using or applying
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`to register any marks that are the same or confusingly similar to the Valdo Mark. A copy of this letter for
`
`this letter is attached as Appendix A.
`
`11.
`
`12.
`
`Applicant did not respond to this correspondence.
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`Having received no response, on December 20, 2023, Opposer requested extension of the
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`opposition deadline to February 28, 2024, which the Board granted.
`
`
`
`2
`
`

`

`
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`13.
`
`On February 22, 2024, attorneys for Opposer sent an e-mail to Applicant’s attorneys
`
`requesting consent to file an additional extension of time to oppose. A copy of this e-mail correspondence
`
`is attached as Appendix B.
`
`14.
`
`Applicant did not respond to this correspondence.
`
`Standing
`
`15.
`
`Opposer has standing in this proceeding because it believes it is and will be damaged by
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`registration of the applied-for mark VALPO appearing in the Application by virtue of Opposer’s common
`
`law rights and registered rights in the VALDO Mark.
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`Likelihood of Confusion
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`16.
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`17.
`
`Opposer re-alleges and incorporates by reference paragraphs 1 through 15.
`
`Applicant’s applied-for mark VALPO appearing in the Application is likely to cause
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`consumer confusion with Opposer’s VALDO Mark and the marks appearing in Opposer’s VALDO
`
`Registrations.
`
`18.
`
`The Class 33 goods claimed in the application are identical and / or highly related to the
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`goods provided under Opposer’s VALDO Mark. All of the goods are alcoholic beverages other than beer.
`
`19.
`
`Opposer has not consented to Applicant’s use of or Application for the mark VALPO or
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`any mark containing the VALPO element or elements similar to VALDO.
`
`20.
`
`Opposer has rights in the VALDO Mark which are prior to and superior to any rights that
`
`Applicant might have in its VALPO Mark.
`
`21.
`
`Therefore, the mark appearing in the VALPO Application so resembles a mark previously
`
`used and / or registered by Opposer as to be likely, when used on or in connection with the Class 33 goods
`
`claimed in the Application, to cause confusion, mistake or deception among the consuming public and
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`should be refused under 15 U.S.C. § 1052(d).
`
`
`
`
`
`
`
`3
`
`

`

`
`
`Relief Sought
`
`For the foregoing reasons, this opposition should be sustained and Application Serial No.
`
`97/669,791 should be refused. Please direct all correspondence to counsel for Opposer at the address
`
`indicated below.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`Reed Fryar Clancy
`Vorys, Sater, Seymour and Pease LLP
`909 Fannin Street
`Suite 2700
`Houston, TX 77010
`Tel: 713-588-7029
`iplaw@vorys.com
`Attorneys for Opposer
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: February 27, 2024
`
`
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`4
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`

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`CERTIFICATE SERVICE
`
`A copy of the foregoing First Amended Notice of Opposition has been filed electronically
`
`through the ESTTA and served via email, on Febrary 27, 2024, to the following counsel of record:
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`RYAN MALKIN
`MALKIN LAW, P.A.
`260 95TH STREET, SUITE 206
`MIAMI BEACH, FL 33154
`UNITED STATES
`ryan@malkin.law, ashley@malkin.law
`
`
`
`Respectfully submitted,
`
`
`
`
`Reed Fryar Clancy
`Vorys, Sater, Seymour and Pease LLP
`909 Fannin Street
`Suite 2700
`Houston, TX 77010
`Tel: 713-588-7029
`iplaw@vorys.com
`
`Attorneys for Opposer
`
`
`
`
`5
`
`

`

`909 Fannin Street, Suite 2700
`Houston, Texas 77010
`
`713.588.7000 | vorys.com
`
`Founded 1909
`
`
`v
`
`
`
`
`
`
`
`Reed Fryar Clancy
`Direct Dial (713) 588-7029
`Direct Fax (713) 588-7029
`Email rfclancy@vorys.com
`
`
`December 7, 2023
`
`
`VIA EMAIL AND FEDERAL EXPRESS
`ryan@malkin.law
`ashley@malkin.law
`
`Malkin Law, P.A.
`c/o Ryan Malkin
`260 95th Street
`Suite 206
`Miami Beach, FL 33154
`
`
`
`
`
`Re: Opposition of VALPO Trademark Application
`U.S. Trademark App Ser. No. 97669791
`
`
`Dear Mr. Malkin:
`
`This law firm represents Spumanti Valdo S.R.L. (“Spumanti”) in the protection of its intellectual
`property. Since 1926, Spumanti has produced and distributed various types of wines. What began in 1883
`as the production of still wines to supply the best establishments in Venice and Milan has evolved into the
`global production and distribution of Spumanti’s world famous wines. VALDO is one of its prominent and
`iconic brands. Spumanti has used the VALDO mark (the “VALDO Mark”) continuously in commerce since
`at least as early as 1994. To protect its intellectual property, Spumanti has obtained several U.S. Trademark
`Registrations, including the VALDO word mark (Reg. No. 2818602) and VALDO design mark (Reg. No.
`5869581) (collectively, the “VALDO Registrations”) for wines, sparkling wines; alcoholic beverages
`except beers in Class 33.
`
`It has come to our attention that on November 9, 2022, your client filed intent-to-use Application
`
`Ser. No. 97669791 for VALPO for alcoholic beverages, except beer in Class 33 (the “Application”).
`VALPO is highly similar to the VALDO Mark. Moreover, the Application claims goods identical and
`highly related to the goods covered by the VALDO Registrations. Without any restriction in the
`Application, your client’s goods are presumed to travel in the same channels of trade as my client’s. Given
`the strong similarity of the marks, the identical goods associated with the marks, and the identity of the
`customers and channels of trade for goods sold under the marks, confusion among consumers is likely to
`occur.
`
`
`Ohio | Washington, D.C. | Texas | Pennsylvania | California | London | Berlin
`
`

`

`v
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`
`
`Malkin Law, P.A.
`December 7, 2023
`Page 2
`
`
`To that end, on behalf of Spumanti, we request that you: (i) file an express abandonment of the
`
`Application with the USPTO for those goods claimed in Class 33; (ii) cease any and all use of the mark
`VALP in association with alcohol and related products; and (iii) refrain from using or applying to register
`any other mark that is the same as or confusingly similar to the VALDO Mark. Please contact me by
`December 14, 2023, confirming the abandonment of the application of the VALPO Mark with assurance
`of your compliance with these demands. This letter is without prejudice to Spumanti’s right to take whatever
`steps it deems necessary to protect its intellectual property without notice.
`
`
`Very truly yours,
`
`
`
`Reed Fryar Clancy
`
`RFC/ccp
`
`
`
`

`

`Clancy, Reed Fryar
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`Attachments:
`
`Dear Mr. Malkin:
`
`Clancy, Reed Fryar
`Thursday, February 22, 2024 12:52 PM
`Kates, Priscilla A.; Clancy, Reed Fryar; ryan@malkin.law; ashley@malkin.law
`Venturino, Anthony P.; IPLaw
`RE: Opposition of VALPO Trademark Application - Ser. No. 97669791
`Opposition of VALPO Trademark Application - Ser No 97669791.pdf
`
`Our client is still interested in an amicable resolution. Please let us know if we have your consent to file a final extension
`of time to oppose.
`
`If we do not hear from you by Tuesday, we will have no choice but to file the opposition.
`
`Regards,
`Reed
`
`Reed Fryar Clancy | Vorys, Sater, Seymour and Pease LLP | 713.588.7029 | rfclancy@vorys.com
`
`From: Kates, Priscilla A. <PAKates@vorys.com>
`Sent: Thursday, December 07, 2023 8:58 AM
`To: vryan@malkin.law; ashley@malkin.law
`Cc: Clancy, Reed Fryar <rfclancy@vorys.com>; Venturino, Anthony P. <apventurino@vorys.com>; IPLaw
`<iplaw@vorys.com>
`Subject: Opposition of VALPO Trademark Application - Ser. No. 97669791
`
`Dear Mr. Malkin:
`
`The attached correspondence is being sent to you on behalf of Reed Fryar Clancy. Please note that a response is
`requested by December 14, 2023. Ms. Clancy can be reached directly by email at rfclancy@vorys.com.
`
`Sincerely,
`Priscilla Kates
`
`Priscilla A. Kates
`Legal Assistant for
`
`Reed Fryar Clancy
`
`o: 202.467.8836
`
`pakates@vorys.com
`
`vorys.com
`
`1
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`