ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1394397
`11/07/2024
`
`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
`
`Entity
`
`Address
`
`S.C. Johnson & Son, Inc.
`
`Corporation
`
`1525 HOWE STREET
`RACINE, WI 53403
`UNITED STATES
`
`Incorporated or
`registered in
`
`Wisconsin
`
`Attorney informa-
`tion
`
`BRIAN LEARY
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: bleary@fzlz.com
`Secondary email(s): bsolomon@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Docket no.
`
`SCJN 2412394
`
`Applicant information
`
`Application no.
`
`98397310
`
`11/07/2024
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`10/08/2024
`
`Opposition period
`ends
`
`11/07/2024
`
`Hu, Linfeng
`RM 301, UNIT 1, BLDG 2, NO. 91
`LIANSHENG RD., HUMEN TOWN
`DONGGUAN, GUANGDONG, 523000
`CHINA
`
`Goods/services affected by opposition
`
`Class 004. First Use: Dec 16, 2023 First Use In Commerce: Dec 16, 2023
`All goods and services in the class are opposed, namely: Anthracite; Candles; Firewood; Paraffin; Al-
`cohol fuel; All purpose lubricants; Butane gas for lighters; Candles containing insect repellant; Char-
`coal briquettes; Charcoal for use as fuel; Firelighters in the nature of kindling wood; Fireplace logs;
`Fuels with an alcohol base; Gun barrel oil; Kindling wood; Soy candles; Vegetable wax; Wood chips
`for use as fuel; Wood logs for fuel
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Fraud on the USPTO
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`

`

`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`1093550
`
`Register
`
`Principal
`
`Registration date
`
`06/20/1978
`
`Word mark
`
`Design mark
`
`TICKS-OFF
`
`Application date
`
`02/18/1977
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Feb 27, 1945 First Use In Commerce: Mar 9,
`1945
`INSECT REPELLENT FOR USE UPON HUMANS, ANIMALS, AND CLOTHING
`
`U.S. registration
`no.
`
`1594843
`
`Register
`
`Principal
`
`Registration date
`
`05/08/1990
`
`Word mark
`
`Design mark
`
`OFF!
`
`Application date
`
`09/11/1989
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: May 9, 1957 First Use In Commerce: May 9,
`1957
`INSECT REPELLENT
`
`U.S. registration
`no.
`
`1596048
`
`Register
`
`Principal
`
`Registration date
`
`05/15/1990
`
`Application date
`
`10/23/1989
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OFF! DEEP WOODS
`
`NONE
`
`Class 005. First use: First Use: Jan 1974 First Use In Commerce: Jan 1974
`INSECT REPELLENT
`
`U.S. registration
`no.
`
`2169628
`
`Register
`
`Principal
`
`Registration date
`
`06/30/1998
`
`Application date
`
`06/23/1997
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`OFF!
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Feb 28, 1995 First Use In Commerce: Feb 28,
`1995
`citronella candles for use as insect repellent
`
`U.S. registration
`no.
`
`2807688
`
`Register
`
`Principal
`
`Registration date
`
`01/27/2004
`
`Word mark
`
`Design mark
`
`OFF! BOTANICALS
`
`Application date
`
`11/27/2000
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Dec 13, 2001 First Use In Commerce: Dec 13,
`2001
`INSECT REPELLENTS
`
`U.S. registration
`no.
`
`2819942
`
`Register
`
`Principal
`
`Registration date
`
`03/02/2004
`
`Word mark
`
`Design mark
`
`OFF! DEEP WOODS
`
`Application date
`
`03/27/2003
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Jan 1, 1997 First Use In Commerce: Jan 1, 1997
`Insect repellents for personal use and on clothing and other fabrics
`
`U.S. registration
`no.
`
`3262973
`
`Register
`
`Principal
`
`Registration date
`
`07/10/2007
`
`Word mark
`
`Design mark
`
`OFF! ACTIVE
`
`Application date
`
`11/17/2005
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Jan 10, 2007 First Use In Commerce: Jan 10,
`2007
`Insect repellents
`
`U.S. registration
`no.
`
`4092154
`
`Register
`
`Principal
`
`Registration date
`
`01/24/2012
`
`Word mark
`
`Design mark
`
`OFF!
`
`Application date
`
`12/09/2010
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of "OFF!" inside an oval.
`
`Class 004. First use: First Use: Jan 22, 2010 First Use In Commerce: Jan 22,
`2010
`citronella candles for use as insect repellents, namely, candles containing insect
`repellent
`
`U.S. registration
`no.
`
`4147182
`
`Register
`
`Principal
`
`Registration date
`
`05/22/2012
`
`Word mark
`
`Design mark
`
`OFF! BUG CONTROL
`
`Application date
`
`06/03/2010
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Dec 22, 2011 First Use In Commerce: Dec 22,
`2011
`Insect repellents
`
`U.S. registration
`no.
`
`4657125
`
`Register
`
`Principal
`
`Registration date
`
`12/16/2014
`
`Word mark
`
`Design mark
`
`OFF!
`
`Description of
`
`NONE
`
`Application date
`
`07/03/2013
`
`Foreign priority
`date
`
`NONE
`
`

`

`mark
`
`Goods/services
`
`Class 005. First use: First Use: Dec 6, 2013 First Use In Commerce: Dec 6,
`2013
`[ insect repellent for tents and tarps, ] mosquito coils, pharmaceutical prepara-
`tions for insect bites, medical preparations for topical treatment of insect bites,
`topical dermatological preparations that treat insect bites and stings, medicated
`ointments for relieving itching and redness from insect bites, anti-itch prepara-
`tions
`
`U.S. registration
`no.
`
`5814753
`
`Register
`
`Principal
`
`Registration date
`
`07/23/2019
`
`Word mark
`
`Design mark
`
`OFF!
`
`Application date
`
`06/01/2018
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "OFF!" in a stylized font inside a shaded oval.
`
`Class 004. First use: First Use: Dec 15, 2018 First Use In Commerce: Dec 15,
`2018
`citronella candles
`Class 005. First use: First Use: Dec 15, 2018 First Use In Commerce: Dec 15,
`2018
`insect repellents
`
`U.S. registration
`no.
`
`6080713
`
`Register
`
`Principal
`
`Registration date
`
`06/16/2020
`
`Word mark
`
`Design mark
`
`OFF! DEFENSE
`
`Application date
`
`05/23/2018
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Jan 7, 2020 First Use In Commerce: Jan 7, 2020
`insect repellents
`
`U.S. registration
`no.
`
`6495932
`
`Register
`
`Principal
`
`Registration date
`
`09/28/2021
`
`Word mark
`
`BUG OFF
`
`Application date
`
`05/03/2019
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: 1992 First Use In Commerce: 1992
`Insect repellents for personal use
`
`U.S. registration
`no.
`
`6782819
`
`Register
`
`Principal
`
`Registration date
`
`07/05/2022
`
`Word mark
`
`Design mark
`
`OFF! KIDS
`
`Application date
`
`01/10/2020
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Attachments
`
`NONE
`
`Class 005. First use: First Use: Dec 21, 2021 First Use In Commerce: Dec 21,
`2021
`insect repellents
`
`73116415#TMSN.png( bytes )
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`88754928#TMSN.png( bytes )
`FINAL Notice of Opposition - NOOFF.pdf(849144 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Brian Leary/
`
`Brian Leary
`
`11/07/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Application Serial No. 98/397,310
`Published in the Official Gazette on October 8, 2024
`Mark: NOOFF
`
`
`
`S.C. JOHNSON & SON, INC.,
`
`
`Opposer,
`
`
`
`-against-
`
`
`LINFENG HU,
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No. _______________
`
`
`NOTICE OF OPPOSITION
`
`Opposer S.C. Johnson & Son, Inc. (“Opposer”) believes that it will be damaged by the
`
`issuance of a registration to Applicant Linfeng Hu (“Applicant”) for the mark NOOFF
`
`(“Applicant’s Mark”) for “Anthracite; Candles; Firewood; Paraffin; Alcohol fuel; All purpose
`
`lubricants; Butane gas for lighters; Candles containing insect repellant; Charcoal briquettes;
`
`Charcoal for use as fuel; Firelighters in the nature of kindling wood; Fireplace logs; Fuels with an
`
`alcohol base; Gun barrel oil; Kindling wood; Soy candles; Vegetable wax; Wood chips for use as
`
`fuel; Wood logs for fuel” in International Class 4 as applied for in U.S. Trademark Application
`
`Serial No. 98/397,310 (the “Application”), and hereby opposes the same. As grounds for this
`
`opposition, Opposer, through its undersigned counsel, alleges as follows:
`
`A.
`
`Opposer and Opposer’s OFF! Marks
`
`FACTS
`
`1.
`
`Opposer is a Wisconsin corporation with a business address of 1525 Howe Street,
`
`M.S. 077, Racine, Wisconsin 53403.
`
`
`
`
`
`
`

`

`2.
`
`Opposer is a leading manufacturer of consumer care and household products and is
`
`the world’s largest manufacturer of personal insect repellent products. Opposer offers its well-
`
`known insect repellent products under its OFF! family of marks.
`
`3.
`
`First sold to consumers in the United States more than six decades ago, Opposer’s
`
`OFF!-branded insect repellent products have expanded from personal repellent products to
`
`products for use outdoors and in backyards. Opposer’s OFF!-branded products include, or have
`
`included, sprays, aerosol pumps, mini pump sprays, first-aid antiseptic sticks, clip-ons, towelettes,
`
`citronella candles, coils, lamps, and candles.
`
`4.
`
`Opposer’s products are sold and marketed under the OFF! mark and a variety of
`
`OFF!-inclusive marks, including: OFF! FAMILY CARE, OFF! KIDS, OFF! CLEAN FEEL, OFF!
`
`ACTIVE, OFF! DEEP WOODS, OFF! DEFENSE, OFF! BOTANICALS, OFF! BACKYARD,
`
`OFF! BUG CONTROL, BUZZOFF, and BUG OFF, all of which share a recognizable common
`
`characteristic—the signature OFF! trademark. Opposer’s OFF!-inclusive marks are promoted
`
`together as a family of marks so as to create recognition amongst consumers that Opposer is the
`
`source of the OFF!-branded goods.
`
`5.
`
`Opposer has continuously used its OFF! mark and OFF! family of marks since a
`
`date prior to any date upon which Applicant can rely.
`
`6.
`
`Opposer’s OFF!-branded products are sold online as well as in tens of thousands of
`
`brick-and-mortar retail locations throughout the United States ranging from supermarkets to
`
`pharmacies to mass market stores and club stores (such as BJ’s, Sam’s Club, and Costco) to
`
`sporting goods stores. The OFF!-branded products are industry leaders, generating gross sales in
`
`the Unites States alone of hundreds of millions of dollars over the past five years.
`
`
`
`
`
`2
`
`

`

`7.
`
`The OFF!-branded products are promoted and advertised online, on Opposer’s
`
`website at https://off.com, in social media, in digital advertising, and in print publications,
`
`including both general interest and hobbyist publications. Over the last five years, Opposer has
`
`spent over $100 million dollars on marketing efforts that reach tens of millions of consumers
`
`throughout the United States.
`
`8.
`
`Through decades of extensive promotion, continuous use, and substantial sales, the
`
`OFF! mark has become famous and immediately recognizable amongst consumers as exclusively
`
`designating Opposer and Opposer’s goods. Moreover, the OFF! mark has become a household
`
`name that represents enormous goodwill and is a substantial asset of Opposer.
`
`9.
`
`Opposer owns numerous federal trademark registrations for OFF! and OFF!-
`
`inclusive marks (collectively, the “OFF! Marks”) for goods in Classes 4 and 5 among others,
`
`including the following:
`
`Mark
`
`Reg’n No.
`
`Reg’n Date
`
`Class and Goods/Services
`
`TICKS-OFF
`
`1,093,550*
`
`6/20/1978
`
`IC 5: Insect repellent for use upon human,
`animals, and clothing.
`
`OFF!
`
`1,594,843*
`
`5/8/1990
`
`IC 5: Insect repellent.
`
`OFF! DEEP
`WOODS
`
`1,596,048*
`
`5/15/1990
`
`IC 5: Insect repellent.
`
`OFF!
`
`2,169,628*
`
`6/30/1998
`
`IC 5: Citronella candles for use as insect
`repellent.
`
`OFF!
`BOTANICALS
`
`OFF! DEEP
`WOODS
`
`2,807,688*
`
`1/27/2004
`
`IC 5: Insect repellents
`
`2,819,942*
`
`3/2/2004
`
`IC 5: Insect repellents for personal use and on
`clothing and other fabrics.
`
`OFF! ACTIVE
`
`3,262,973*
`
`7/10/2007
`
`IC 5: Insect repellents.
`
`
`
`
`
`3
`
`

`

`Mark
`
`Reg’n No.
`
`Reg’n Date
`
`Class and Goods/Services
`
`4,092,154*
`
`1/24/2012
`
`IC 4: Citronella candles for use as insect
`repellents, namely candles containing insect
`repellent.
`
`4,147,182*
`
`5/22/2012
`
`IC 5: Insect repellents.
`
`
`
`OFF! BUG
`CONTROL
`
`OFF!
`
`4,657,125*
`
`12/16/2014
`
`IC 5: Mosquito coils, pharmaceutical
`preparations for insect bites, medical
`preparations for topical treatment of insect
`bites, topical dermatological preparations that
`treat insect bites and stings, medicated
`ointments for relieving itching and redness
`from insect bites, anti-itch preparations.
`
`5,814,753
`
`7/23/2019
`
`IC 4: Citronella candles.
`
`IC 5: Insect repellents.
`
`6,080,713
`
`6/16/2020
`
`IC 5: Insect repellents
`
`
`
`OFF!
`DEFENSE
`
`BUG OFF
`
`6,495,932
`
`9/28/2021
`
`IC 5: Insect repellents for personal use
`
`OFF! KIDS
`
`6,782,819
`
`7/5/2022
`
`IC 5: Insect repellents
`
`
`10.
`
`
`The above registrations are valid, subsisting, in full force and effect, and serve as
`
`prima facie evidence of the validity of the marks, of Opposer’s ownership of the marks, and of
`
`Opposer’s exclusive right to use the marks in connection with the goods identified therein. See 15
`
`U.S.C. § 1115(a). Moreover, the registrations marked with an asterisk have become incontestable
`
`and serve as conclusive evidence of Opposer’s exclusive rights in and to the marks. See 15 U.S.C.
`
`§ 1115(b). Opposer’s trademark registrations also place others, including Applicant, on
`
`constructive notice of Opposer's rights. See 15 U.S.C. § 1072. Printouts from the USPTO’s online
`
`database for the listed registrations are attached hereto as Exhibit A and are made part of the record
`
`in this proceeding pursuant to Trademark Rule of Practice 2.122(d)(1).
`
`
`
`
`
`4
`
`

`

`B.
`
`Applicant and Its Application for NOOFF
`
`11.
`
`Upon information and belief, and according to the records of the U.S. Patent &
`
`Trademark Office (the “USPTO”), Applicant is an individual with an address at Rm 301, Unit 1,
`
`BLDG 2, No. 91, Liansheng Rd., Humen Town, Dongguan, Guangdong China 523000.
`
`12.
`
`Upon information and belief, and according to the records of the USPTO, on
`
`February 8, 2024, Applicant filed the Application to register Applicant’s Mark for “Anthracite;
`
`Candles; Firewood; Paraffin; Alcohol fuel; All purpose lubricants; Butane gas for lighters; Candles
`
`containing insect repellant; Charcoal briquettes; Charcoal for use as fuel; Firelighters in the nature
`
`of kindling wood; Fireplace logs; Fuels with an alcohol base; Gun barrel oil; Kindling wood; Soy
`
`candles; Vegetable wax; Wood chips for use as fuel; Wood logs for fuel” in International Class 4
`
`based on an alleged first use in commerce date of December 16, 2023.
`
`13.
`
`Upon information and belief, at the time that Applicant filed the Application,
`
`Applicant had actual knowledge of Opposer’s prior and exclusive rights in the OFF! Marks. At the
`
`very least, Applicant was deemed to be on constructive notice of Opposer’s prior and exclusive
`
`rights in the OFF! Marks by virtue of Opposer’s federal trademark registrations therefor pursuant
`
`to Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`
`14.
`
`Applicant’s alleged date of first use in commerce and Application filing date are
`
`long after Opposer’s use, adoption, and registration of the OFF! Marks, long after Opposer had
`
`acquired rights in the OFF! Marks, and long after the OFF! Marks had become well-known,
`
`commercially strong, and entitled to a broad scope of protection.
`
`15.
`
`Issuance of a registration to Applicant for Applicant’s Mark as applied for in the
`
`Application is inconsistent with Opposer’s prior rights in the OFF! Marks, is inconsistent with the
`
`
`
`
`
`5
`
`

`

`statutory grant of exclusivity of use flowing from Opposer’s registrations for the OFF! Marks, and
`
`will substantially damage Opposer’s investment and goodwill in the OFF! Marks.
`
`16.
`
`Applicant is not connected to Opposer in any way and was not authorized by
`
`Opposer to register or use Applicant’s Mark.
`
`17.
`
`Opposer is entitled to bring the statutory causes of action asserted below.
`
`FIRST GROUND FOR RELIEF
`LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)
`
`18.
`
`Opposer repeats the allegations contained in paragraphs 1 through 17 above as if
`
`fully set forth herein.
`
`19.
`
`Applicant’s Mark is highly similar to Opposer’s OFF! Marks because Applicant’s
`
`Mark incorporates the term “OFF” in its entirety, which is the recognizable common characteristic
`
`of Opposer’s family of OFF! Marks. The addition of the letter string N-O does not meaningfully
`
`differentiate Applicant’s Mark from Opposer’s OFF! Marks in sight, sound, or commercial
`
`impression. It adds no meaning to the common letter string OFF, which remains the most
`
`recognizable characteristic of Applicant’s Mark.
`
`20.
`
`The goods identified in the Application are highly similar to the goods identified in
`
`Opposer’s trademark registrations and to the goods offered under the OFF! Marks. In particular,
`
`the Application claims “Candles containing insect repellant,” which is identical to goods identified
`
`in Opposer’s trademark registrations and to the goods offered under the OFF! Marks.
`
`21.
`
`The Application is unrestricted as to consumers and trade channels for the identified
`
`goods. Given that the goods identified in the Application are identical to the goods identified in
`
`the registrations for Opposer’s OFF! Marks, it is presumed as a matter of law that the consumers
`
`and trade channels for the parties’ goods do and will overlap.
`
`
`
`
`
`6
`
`

`

`22.
`
`Based on Opposer’s prior rights in the OFF! Marks, the fame and strength of the
`
`OFF! Marks, the similarity of Applicant’s OFF! Marks, the identity of the parties’ goods, and the
`
`presumed overlap in consumers and trade channels for the parties’ goods, registration of
`
`Applicant’s Mark as applied for in the Application is likely to cause consumers to falsely believe
`
`that the goods offered by Applicant under Applicant’s 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 Opposer, all to Opposer’s harm in violation of Section 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d).
`
`23.
`
`For the forgoing reasons, Opposer is likely to be harmed by the issuance of a
`
`registration for Applicant’s Mark as applied for in the Application.
`
`SECOND GROUND FOR RELIEF
`DILUTION UNDER 15 U.S.C. § 1052(f)
`
`24.
`
`Opposer repeats the allegations contained in paragraphs 1 through 17 above as if
`
`fully set forth herein.
`
`25.
`
`Opposer’s OFF! mark is inherently distinctive and/or has acquired distinctiveness
`
`by becoming one of the best-known consumer brands in the United States through decades of use,
`
`sales, advertising, and promotion to hundreds of millions of consumers. As a result, the OFF! mark
`
`is recognized by consumers as a symbol of Opposer’s goods.
`
`26.
`
`Opposer is the owner of numerous federal trademark registrations for the OFF!
`
`mark, including several incontestable registrations that issued prior to any date that Applicant can
`
`rely upon in support of its rights in Applicant’s Mark.
`
`27.
`
`Opposer has been using the OFF! Mark nationally for decades, has engaged in
`
`nationwide promotion and marketing that features the marks, and has otherwise publicized the
`
`OFF! mark throughout the United States. As a result of the foregoing, the OFF! mark has become
`
`
`
`
`
`7
`
`

`

`famous and has acquired extensive actual recognition and fame as a designation of goods coming
`
`from Opposer.
`
`28.
`
`Prior to any date that Applicant can rely upon for its claim of rights in Applicant’s
`
`Mark, Opposer’s OFF! mark had become famous by virtue of generating tens of millions of dollars
`
`in gross annual revenues through sales to hundreds of millions of consumers nationwide.
`
`29.
`
`Applicant’s Mark is highly similar to the OFF! mark, calls to mind the OFF! mark,
`
`creates the same mental impression as the OFF! mark, and otherwise reminds consumers of the
`
`OFF! mark. By virtue of the similarity between Applicant’s Mark and the OFF! mark, the fame of
`
`the OFF! mark, and the exclusive association between the OFF! mark and Opposer, the registration
`
`of Applicant’s Mark would dilute and/or is likely to dilute Opposer’s famous OFF! mark by
`
`impairing its distinctiveness and ability to identify exclusively goods deriving from Opposer in
`
`violation of Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f).
`
`30.
`
`Alternatively, to the extent that Applicant’s Mark differs from the OFF! mark by
`
`inclusion of the letter string N-O, it disparages Opposer’s famous OFF! marks by making a
`
`negative statement, namely “No OFF,” such that the registration of Applicant’s Mark would dilute
`
`and/or is likely to dilute Opposer’s famous OFF! mark by tarnishment in violation of Section 2(f)
`
`of the Lanham Act, 15 U.S.C. § 1052(f).
`
`31.
`
`For the foregoing reasons, Opposer is likely to be harmed by the issuance of a
`
`registration for Applicant’s Mark as applied for in the Application.
`
`THIRD GROUND FOR RELIEF
`FRAUD BASED ON FALSE DECLARATION OF USE
`
`32.
`
`Opposer incorporates by reference Paragraphs 1 through 17 as if fully set forth
`
`herein.
`
`
`
`
`
`8
`
`

`

`33.
`
`Contemporaneously with its filing of the Application, Applicant submitted a
`
`Declaration that states, inter alia, “[t]he mark is in use in commerce and was in use in commerce
`
`as of the filing date of the application on or in connection with the goods . . . in the application.”
`
`34.
`
`Upon information and belief, and based on Applicant’s filing with the USPTO, the
`
`only specimen filed in support of the Application and the claim of use consists of three photographs
`
`of one item out of 19 separately listed goods. All three photographs show that one item—white
`
`tapere candles—against a nondescript backdrop with no indication of whether or where it was ever
`
`sold or offered for sale.
`
`35.
`
`An internet search for the NOOFF mark as applied for revealed zero results for the
`
`candles shown in the specimen or for any of the other items in the list of goods set out in the
`
`Application.
`
`36.
`
`Further, the list of the goods in the Application is of such a diverse nature—
`
`including coal (anthracite), gun barrel oil, butane gas for lighters, and candles with insect repellant,
`
`among others—that it is highly unlikely that any one entity would offer all of these goods no less
`
`under the same mark.
`
`37.
`
`Indeed, a search of the records of the USPTO for other applications or registrations
`
`that covered similar goods identified only two records, which raise further suspicion about the
`
`fraudulent nature of the Application. Application Serial No. 98/283,370 for the mark E500 was
`
`filed on November 23, 2023—six weeks before the Application—and covers an identical list of
`
`goods. Like the Application here, the E500 application was filed pursuant to Section 1(a) of the
`
`Lanham Act and supported by a specimen consisting of three photographs of one item against a
`
`nondescript backdrop with no indication whether or where it was ever sold or offered for sale.
`
`Likewise, Application Serial No. 98/385,621 for the mark FATOK, filed February 1, 2024, covers
`
`
`
`
`
`9
`
`

`

`an identical list of goods (albeit differently ordered), was filed pursuant to Section 1(a) of the
`
`Lanham Act, and was supported by a specimen consisting of three photographs of one item against
`
`a nondescript backdrop with no indication whether or where it was ever sold or offered for sale. It
`
`defies belief that the only three applications covering a similarly diverse list of goods would all be
`
`filed within six weeks and cover not a similar, but an identical list of goods. Although the
`
`applications were filed by different applicants, all three applicants reside in China, where, as the
`
`USPTO has observed, government subsidies have resulted in “a surge in fraudulent trademark
`
`applications” before the USPTO.1
`
`38.
`
`Upon information and belief and based on Opposer’s investigation, the specimen
`
`submitted with the Application is suspect and, in fact, Applicant’s Mark was not in use in United
`
`States commerce in connection with all of the goods identified in the Application at the time
`
`Applicant filed the Application and submitted its statement under oath asserting that the mark in
`
`fact was used for all of the goods listed in the Application.
`
`39.
`
`Because, on information and belief and based on Opposer’s investigation,
`
`Applicant was not using Applicant’s Mark in commerce in connection with all of the goods set
`
`forth in the Application at the time Applicant filed the Application under Section 1(a) of the
`
`Lanham Act, the Declaration submitted in support of the Application was false.
`
`40.
`
`Upon information and belief, Applicant knew at the time it filed the Application
`
`that it was not using Applicant’s Mark in interstate commerce in the United Sates in connection
`
`with all goods specified in the Application and that, therefore, the Declaration submitted in support
`
`of the Application was false or fraudulent. At a minimum, the Application and the declaration
`
`
`1 See Trademarks and Patents in China: The impact of non-market factors on filing trends and IP systems, USPTO,
`at 4 (Jan. 2021), available at: https://www.uspto.gov/sites/default/files/documents/USPTO-
`TrademarkPatentsInChina.pdf (last visited November 5, 2024).
`
`
`
`
`
`10
`
`

`

`submitted with the Application was submitted with reckless disregard of the truth and is thus
`
`fraudulent.
`
`41.
`
`Upon information and belief, by falsely asserting that it was using Applicant’s Mark
`
`in interstate commerce in connection with all of the goods specified in the Application as of the
`
`filing date for the Application, Applicant intended to deceive the USPTO. Upon information and
`
`belief, Applicant’s false statement was made for the purpose of obtaining a registration to which
`
`Applicant was not entitled.
`
`42.
`
`The USPTO would not have approved the Application for registration but for the
`
`false statement that Applicant was using Applicant’s Mark in interstate commerce in connection
`
`with all of the goods identified in the Application at the time Applicant filed the Application under
`
`Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). Thus, the falsehood was a material
`
`misstatement of fact.
`
`43.
`
`As a result of Applicant’s willful and materially false statement made in connection
`
`with the Application, Applicant has committed fraud against the USPTO, which invalidates the
`
`Application.
`
`44.
`
`By reason of the foregoing, Opposer is likely to be harmed by the registration of
`
`the Application for Applicant’s Mark.
`
`
`
`
`
`11
`
`

`

`WHEREFORE, it is respectfully requested that this opposition proceeding be sustained
`
`and that the Application for Applicant’s Mark be refused in its entirety.
`
`
`
`
`
`
`
`Dated: New York, New York
`
`November 7, 2024
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`By: /Brian Leary/
` Barbara A. Solomon (bsolomon@fzlz.com)
` Brian Leary (bleary@fzlz.com)
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`Phone: (212) 813-5900
`
`Attorneys for Opposer S.C. Johnson & Son, Inc.
`
`12
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-11-07 11:11:05 EST
`
`Mark: TICKS-OFF
`
`US Serial Number: 73116415
`
`US Registration
`Number:
`
`1093550
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 18, 1977
`
`Registration Date: Jun. 20, 1978
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jun. 19, 2018
`
` 
`
`Mark Literal
`Elements:
`
`TICKS-OFF
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Acquired
`Distinctiveness
`Claim:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`In whole
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`539082
`
`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: INSECT REPELLENT FOR USE UPON HUMANS, ANIMALS, AND CLOTHING
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 006
`
`First Use: Feb. 27, 1945
`
`Use in Commerce: Mar. 09, 1945
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`

`

`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: S.C. JOHNSON & SON, INC.
`
`Owner Address: 1525 HOWE STREET
`RACINE, WISCONSIN UNITED STATES 53403
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`WISCONSIN
`
`Attorney/Correspondence Information
`
`Attorney Name: Jeunesse M. Rutledge
`
`Attorney Primary
`Email Address:
`
`B050994@scj.com
`
`Correspondent
`Name/Address:
`
`Jeunesse M. Rutledge
`S. C. Johnson & Son, Inc.
`1525 Howe Street
`RACINE, WISCONSIN UNITED STATES 53403
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone: 262/260-0218
`
`Correspondent e-
`mail:
`
`B050994@scj.com
`
`Fax: 262/260-4253
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Sep. 29, 2021
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Sep. 29, 2021
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Sep. 29, 2021
`
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`
`Sep. 29, 2021
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Sep. 29, 2021
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Sep. 29, 2021
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Jun. 19, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jun. 19, 2018
`
`REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS)
`
`Jun. 19, 2018
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jun. 19, 2018
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jun. 08, 2018
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Dec. 07, 2008
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Dec. 07, 2008
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Oct. 14, 2008
`
`ASSIGNED TO PARALEGAL
`
`Oct. 09, 2008
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Dec. 19, 2007
`
`CASE FILE IN TICRS
`
`Jun. 18, 1998
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`May 21, 1998
`
`REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jun. 19, 2018
`
`TM Staff Information - None
`
`File Location
`
`Proceeding
`Number
`
`

`

`Generated on: This page was generated by TSDR on 2024-11-07 11:12:49 EST
`
`Mark: OFF!
`
`US Serial Number: 73824568
`
`US Registration
`Number:
`
`1594843
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Sep. 11, 1989
`
`Registration Date: May 08, 1990
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jul. 06, 2020
`
`Publication Date:Feb. 13, 1990
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`OFF!
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`539082, 1093550
`
`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.
`
`