Hinckley Eensnydemp
`ATTORNEYS AT LAW
`28 State Street
`
`Amy B. Spagnole, Esq;
`aspagnole@hasIaw.com
`Direct (61 7) 378-4204
`
`Boston, MA 02109-1775
`TEL: 517.345.9000
`FAX: 517.345.9020
`www.has|aw.com
`
`
`
`April 11, 2006
`
`VIA FIRST CLASS MAIL
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`Notice of Opposition
`
`ofUnited States Trademark
`
`Registration No.: 2,885,125
`Registrant: ZoneChefs LLC
`Mark: ZONE CHEF
`
`Class: 29, 30, 39
`
`Dear Madam:
`
`The following documents are submitted in connection with U.S. Registration No. 2,885,125,
`filed by ZoneChefs LLC, for the mark ZONE CHEF in International Classes 29, 30 and 39 on
`the Principal Register:
`
`1. Opposer Barry D. Sears, Ph.D.’s Opposition to Applicant ZoneChefs, LLC’s Motion
`to Dismiss Pursuant to Fed. R. Civ. P. Rule 12(b)(6), with Exhibit 1 (Amended
`Notice of Opposition with Exhibits 1-9);
`
`2. Certificate of Mailing dated April 1 1, 2006;
`
`3. Certificate of Service dated April 11, 2006; and
`
`4. Return postcard.
`
`Sincerely,
`
`/ K $.( Spagnole
`
`Enclosures
`
`cc:
`
`Deborah L. Benson (w/o Encl.)
`Keith A_ We1tsch(w/End)
`
`57765 7
`
`l|||||||||l||||I|||||||||||llI||||||l|||l||l||||||
`
`04-14-2006
`u.s. Patent & TMOfc/TM Mail Rep! 0:. #3:
`
`1500 Fleet Center, Providence, RI 02903-2393 TEL: 401.274.2000 FAX: 401.277.9600
`43 North Main Street, Concord, NH 03301-4934 TEL: 603.225.4334 FAX: 603.224.8350
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`BARRY D. SEARS Ph.D.,
`
`Petitioner,
`
`V.
`
`ZONECHEFS, LLC,
`
`)
`)
`)
`)
`)
`Respondent.
`)
`
`Cancellation No. 92045370
`
`Mark:
`Serial No.:
`Classes:
`
`ZONECHEF
`2,885,125
`29, 30, 39
`
`PETITIONER BARRY D. SEARS PH.D.’S OPPOSITION
`TO RESPONDENT ZONECHEFS LLC’S MOTION TO
`DISMISS PURSUANT TO FED. R. CIV P. RULE 12gbgg6g
`
`Petitioner Barry D. Sears Ph.D. (“Petitioner” or “Dr. Sears”), hereby submits this
`
`Opposition to Respondent ZoneChefs LLC’S (“Respondent” or “ZoneChefs”) Motion to Dismiss
`
`For Failure to State A Claim And, In The Alternative, Motion for a More Definite Statement
`
`(“Respondent’s Motion”). Although Respondent’s Motion is entitled “Motion to Dismiss for
`
`Failure to State A Claim,” this title is misleading in that Respondent’s Motion is g(_)_t_ a motion to
`
`dismiss the 5&3 Notice of Opposition but, rather, a }g_:ltia_l motion to dismiss only with regard
`
`to certain of Petitioner’s trademark applications as listed in “Table A” of the Respondent’s
`
`Motion, which applications were filed after the filing date of the subject application. Respondent
`
`claims that the Notice of Opposition must be dismissed as to these applications because such
`
`applications do not have priority over the application for ZONE CHEFS that is the subject of this
`
`opposition. Respondent’s partial motion to dismiss must be denied because Petitioner has
`
`properly pled facts sufficient to allege that Petitioner is the owner of a family of ZONE marks
`
`

`
`and, thus, is not required to allege that each and every member of the family has a priority date
`
`that precedes the filing date of the subject application of ZONE CHEFS.
`
`I.
`
`Respondent’s Motion for Partial Dismissal Should Be Denied Because Petitioner
`Has Alle ed Sufficient Facts To State A Claim U on Which Relief Ma Be Granted
`
`A motion to dismiss pursuant to Fed. R. Civ. P. l2(b)(6) is well taken only when the
`
`plaintiff has failed to state a claim upon which relief may be granted. Fed. R. Civ. P. l2(b)(6).
`
`Such motion to dismiss is a test solely of the legal sufficiency of the complaint. Libertflille
`
`Saddle Shop Inc. v. E. Jeffries & Sons Ltd., 22 U.S.P.Q.2d 1994 (T.T.A.'B. 1992). In order to
`
`withstand such a motion, a pleading need only allege such facts as would, if proved, establish
`
`that the plaintiff is entitled to the relief sought, that is, (1) the plaintiff has standing to maintain
`
`the proceeding, and (2) a valid ground exists for denying the registration sought therein. i
`
`Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 U.S.P.Q. 185 (C.C.P.A. 1982).
`
`In considering Respondent’s Motion the Board must accept as true the factual allegations of the
`
`Petition for Cancellation [and] construe all reasonable inferences therefrom in favor of the
`
`Petitioner. Baroid Drilling Fluids Inc. v. Sun Drilling Products, 24 U.S.P.Q.2d 1048 (T.T.A.B.
`
`1992). In reviewing a Petition for Cancellation in connection with a motion to dismiss, the
`
`Board construes the allegations therein liberally, as required by Fed. R. Civ. P. 8(1). §_e_e TBMP
`
`503.02.
`
`Viewing the Petition for Cancellation in the light most favorable to Dr. Sears as the
`
`plaintiff, and resolving every doubt in his favor, it is abundantly clear that Dr. Sears has
`
`sufficiently asserted a claim upon which relief may be granted. Petitioner has properly pled
`
`facts sufficient to allege that Petitioner is the owner of a family of ZONE marks and, thus, is not
`
`#573753
`
`2
`
`

`
`required to allege, as Respondent contends, that each and every member of the family has a
`
`priority date that precedes the filing date of the subject application of ZONE CHEFS.
`
`A party opposing registration of a trademark pursuant to Lanham Act's Section 13, 15
`
`U.S.C. 1063, must demonstrate both standing and a statutory ground which negates Respondent's
`
`entitlement to registration, and, at pleading stage, Petitioner must allege facts in support of both.
`
`37 C.F.R. § 2.104(a) ("The opposition must set forth a short and plain statement showing why
`
`the Petitioner believes it would be damaged by the registration of the opposed mark and state the
`
`grounds for opposition."). Respondent's motion to dismiss does not dispute Petitioner's standing
`
`to maintain the proceeding. The motion charges only that Petitioner has not pled facts which, if
`
`proved, would establish grounds for refusing registration to Respondent.
`
`In particular, Respondent claims that Petitioner has failed to establish valid grounds for
`
`denying the registration sought with regard to “many of the alleged “ZONE Marks” that have
`
`been pled by Petitioner” because applications for such marks -- those specifically listed in “Table
`
`A” of Respondent’s Motion -- were filed subsequent to October 23, 2002, the filing date of the
`
`subject application of ZONE CHEFS, and Petitioner has not filed a Statement of Use or
`
`Amendment to Allege Use alleging a date of first use that precedes October 23, 2002 in
`
`connection with such applications and, therefore, Respondent is entitled to partial dismissal of
`
`the Petition for Cancellation on the grounds that the Petitioner does not have priority with respect
`
`to these specific marks. §e_e Respondent’s Motion to Dismiss for Failure to State a Claim, and,
`
`In the Alternative, Motion for a More Definite Statement, p. 10.
`
`Respondent’s argument is misplaced, as Petitioner has sufficiently pleaded in his Petition
`
`for Cancellation that he is the owner of a family of marks all containing the common distinctive
`
`#573753
`
`3
`
`

`
`element ZONE and that, prior to Respondent’s filing of the subject application for registration of
`
`ZONE CHEFS, many of the marks containing the claimed family feature ZONE were used and
`
`promoted together by Petitioner in such a manner as to create public recognition with and an
`
`association of common origin predicated on the family feature. J&J Snack Foods Corp. v.
`
`McDonald’s Cog}, 18 U.S.P.Q.2d 1889 (C.A.F.C. 1991). Specifically, the Petition for
`
`Cancellation provides:
`
`Since 1995, Petitioner has used the trademark ZONE and composite marks, all
`2.
`incorporating ZONE as the dominant portion thereof, such as ZONE LABS, ZONENET,
`ZONE CAFE, ZONE CUISINE, ZONE SKIN CARE, ZONERX, and DR. SEARS
`ZONE, in connection with a wide variety of branded health and nutrition products and
`services, including print and electronic publications, educational and counseling services,
`meal delivery services, prepared foods, vitamins and supplements, meal replacements
`bars and drinks, skin care products and restaurant and cafe services. Such use has been
`ongoing and continuous. (Petition for Cancellation 1] 2)
`
`Since creation of his hormonal control/insulin balanced program, Dr. Sears has
`9.
`provided a wide array of health and nutrition products and services that are compliant
`with this program under the trademark ZONE and composite trademarks all containing
`ZONE as the dominant portion thereof, including, but not limited to, ZONE, ZONE
`CUISINE, ZONE CAFE, ZONE SKIN CARE, ZONERX, ZONE LABS, ZONENET and
`ZONE SHAKES (the “ZONE Marks”). (Petition for Cancellation {I 9)
`
`10.
`
`Dr. Sears is well known as the source of ZONE branded products and services.
`
`(Petition for Cancellation 1] 10)
`
`In addition to his ZONE branded books, Dr. Sears and his ZONE branded health
`16.
`and nutrition products and services are widely known from his numerous and frequent
`live and taped appearances, including seminars, conferences, radio shows, and network
`television interviews, throughout the country. (Petition for Cancellation ‘ll 16)
`
`In promoting his ZONE branded health and nutrition products and services, Dr.
`17.
`Sears has appeared on nationally-broadcast television shows, including The Today Show
`in 1996 and again in January 2005, 20/20 in 1999, Good Morning America on June 9,
`2000, June 15, 2000 and again in May 2002, Dateline in July 2002, CBS Evening News
`on May 21, 2003, The Montel Williams Show on April 1, 2004 and Live With Regis and
`Kelly on February 2, 2005. (Petition for Cancellation 1] 17)
`
`#573753
`
`

`
`18.
`
`Additionally, each year since 1998, Dr. Sears has conducted a week long ZONE
`branded seminar aboard a cruise ship, providing a series of presentations and
`demonstrations on mastering his hormonal and insulin control program. (Petition for
`Cancellation 1] 18)
`
`19.
`Dr. Sears is well and favorably known throughout the United States and has built
`up valuable goodwill and reputation in his ZONE Marks. (Petition for Cancellation 1] 19)
`
`20.
`The widespread recognition, fame and goodwill associated with ZONE for
`products and services in the health and nutrition marketplace is a result of the Petitioner’s
`continuous marketing efforts, national media attention, the expenditure of considerable
`amounts of money for advertising and promotional activities and by virtue of the high
`quality of the Petitioner’s ZONE branded products and services. (Petition for
`Cancellation 11 20)
`
`Petitioner is the owner of approximately seventy (70) plus trademarks and service
`21.
`marks comprising or containing “ZONE” for a wide array of health and nutrition
`products and services. (Petition for Cancellation 11 21)
`
`22.
`
`By way of example, Petitioner owns the following United States Trademark
`Registrations:
`
`Mark:
`
`ZONE
`
`Registration No.2
`Registration Date:
`App. Date:
`Date of First Use:
`
`Date of First Use
`In Commerce:
`
`Goods:
`
`2,689,749
`February 25, 2003
`May 22, 2000
`May 1995
`
`May 1995
`Publications, namely a series of books in the field of diet
`and nutrition.
`
`Mark:
`
`ZONERX
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`
`Date of First Use
`
`In Commerce:
`
`Goods:
`
`2,929,836
`March 1, 2005
`September 17, 2003
`April 23, 2002
`
`April 23, 2002
`Workbooks and printed guides about diet, health, and
`nutrition.
`
`#573753
`
`

`
`Mark:
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`
`ZONE SKIN CARE
`
`2,623,974
`September 24, 2002
`March 30, 2001
`June 2000
`
`In Commerce:
`Goods:
`
`June 2000
`Skin care products, namely soaps, lotions, creams, and oils
`for the face, body, and hair.
`(Petition for Cancellation 1] 22)
`
`The term ZONE comprises the dominant portion of Petitioner’s ZONE Marks,
`32.
`including Petitioner’s ZONE, ZONE SKIN CARE, ZONERX and ZONE CUISINE
`marks. (Petition for Cancellation 1] 32)
`
`The foregoing allegations set forth in Paragraphs 2, 9-10,16-22 and 32 of the Petition for
`
`Cancellation provide a valid basis under which Petitioner may claim that his trademark ZONE
`
`and his other composite marks all containing ZONE, including the marks contained in
`
`Petitioner’s U.S. Applications and Registrations -- referred to as the “Zone Marks” in the Notice
`
`of Opposition -- constitute a family of marks. Where, as here, an Petitioner pleads a family of
`
`marks all containing a common distinctive element, it is not necessary for the Petitioner to allege
`
`that a_ll members of the family were in existence prior to entry in the field of another party with a
`
`mark containing the common family feature. American Standard, Inc. v. Scott & Fetzer
`
`Company, 200 USPQ 457, 459 (TTAB 1978). The cloak of such family of marks will extend to,
`
`and cover, other members of the family that are born and come into existence at a future date,
`
`even though there may be intervening use. Id,
`
`Accordingly, Petitioner is not required, as Respondent claims, to allege that each one of
`
`his trademarks comprising or containing the common distinctive family feature ZONE, including
`
`Dr. Sears’ registrations and applications, has a priority date that precedes any date of first use
`
`#573753
`
`5
`
`

`
`upon which Respondent can rely, actual or constructive. It is sufficient that EL of the marks
`
`that comprise Dr. Sears’ family of ZONE marks were in use or registered before the filing of the
`
`subject application.
`
`I_d. Petitioner has clearly alleged, in paragraph 22 of the Petition for
`
`Cancellation, that tl1_re_e_ (3) of its marks containing or comprising the family feature ZONE, all
`
`of which are included in the Petitioner’s ZONE family of marks, were in use Q to the filing
`
`date of the subject application for registration of ZONE CHEFS.
`
`Whether a claimed family of marks does in fact exist, is a questions of fact, The Norwich
`
` , 168 USPQ 250 (T.T.A.B. 1970), and as such, is
`
`not an appropriate question to be decided by the Board at this stage of the proceeding.
`
`Libertflille Saddle Shop Inc. V. E. Jeffries & Sons Ltd., 22 U.S.P.Q.2d 1994 (T.T.A.B. 1992) (a
`
`l2(b)(6) motion to dismiss is a test solely of the legal sufficiency of the complaint).
`
`Based on the foregoing, Petitioner has alleged sufficient facts in has Petition for
`
`Cancellation to claim that it is the owner of a family of marks all containing ZONE as the
`
`dominant portion thereof and, thus, is not required to allege that all marks that comprise such
`
`family have a priority date that precedes the filing date of the subject application. Accordingly,
`
`Respondent’s motion for partial dismissal of the opposition for failure to state a claim upon
`
`which relief can be granted under Fed. R. Civ. P. 12(b)(6) with regard to Petitioner’s marks listed
`
`in “Table A” of Respondent’s Motion must be denied.
`
`II.
`
`Respondent’s Motion for More Definite Statement Should Be Denied As Moot As
`Petitioner Has Alleged A Family of Marks and Has Filed An Amended Complaint
`
`Respondent’s alternative Motion For A More Definite Statement should be denied as
`
`moot because, as set forth above, Petitioner has alleged facts sufficient to claim a family of
`
`#573753
`
`7
`
`

`
`marks and, thus, is not required to list each mark that comprises the family. Notwithstanding the
`
`foregoing, Petitioner submits contemporaneously herewith an Amended Petition for Cancellation
`
`listing Dr. Sears’ applications, registrations and common law marks upon which he relies for
`
`purposes of this Cancellation. A copy of this Amended Petition for Cancellation is attached
`
`hereto at Exhibit 1.
`
`III.
`
`Conclusion
`
`For all the foregoing reasons, Respondent’s Motion for Partial Dismissal of the Petition
`
`for Cancellation For Failure To State A Claim Upon Which Relief May Be Given And In The
`
`Alternative A Motion For A More Definite Statement should be denied.
`
`Respectfully submitted,
`
`Barry D. Sears, Ph.D.
`
`
`
`Christopher H.M. Carter
`Amy B. Spagnole
`Hinckley, Allen & Snyder LLP
`28 State Street
`
`Boston, MA 02109
`(617) 345-9000
`(617) 345-9020 (fax)
`
`Dated: April 11, 2006
`
`OerflficaIeOfMalIlng
`
`.
`
`I
`
`#573753
`
`8
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 11th day of April, 2006, I served a true and accurate copy of
`the foregoing Opposition to Respondent’s Motion to Dismiss, via first class mail postage
`prepaid, upon Counsel for Respondent, Keith A. Weltsch, Esq., Scully, Scott, Murphy & Presser,
`400 Garden City Plaza, Garden City, New York 11530.
`
`
`
`#573753
`
`9
`
`

`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92045370
`
`Mark:
`Serial No.:
`Classes:
`
`ZONECHEF
`2,885,125
`29, 30, 39
`
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
`)
`)
`
`BARRY D. SEARS Ph.D.,
`
`Petitioner,
`
`v.
`
`ZONECHEFS, LLC,
`
`Respondent.
`
`AMENDED PETITION FOR CANCELLATION
`
`Barry D. Sears, Ph.D., a United States citizen, with an address of 222 Rosewood
`
`Drive, Suite 500, Danvers, Massachusetts 01923 (hereinafter “Petitioner” or “Dr. Sears”)
`
`believes that he has been and will continue to be damaged by United States Trademark
`
`Registration No. 2,885,125 for the mark ZONECHEF for “prepared entrees, side dishes
`
`and meals consisting of primarily meat, poultry, or vegetables,” in International Class 29,
`
`“prepared entrees, side dishes and meals consisting primarily of rice and pasta, baked
`
`goods consisting of cakes, cookies and muffins,” in International Class 30 and “food
`
`delivery services,” in International Class 39, issued on the Principal Register on
`
`September 14, 2004 to Zone Chefs, LLC, a New York limited liability company with an
`
`address of 8608 Foster Avenue, Brooklyn, New York 11236 (hereinafter “Respondent”),
`
`and hereby petitions to cancel such registration pursuant to § 14(3) of the Lanham
`
`Trademark Act of 1946, 15 USC § 1064(3). As grounds for this Petition, Dr. Sears
`
`alleges as follows:
`
`

`
`FACTS
`
`1.
`
`Petitioner is the owner of the trademark ZONE and other marks
`
`incorporating ZONE for health and nutrition products and services.
`
`2.
`
`Petitioner has used the trademark ZONE and composite marks, all
`
`incorporating ZONE as the dominant portion thereof, such as ZONE LABS, ZONENET,
`
`ZONE CAFE, ZONE ‘CUISINE, ZONE SKIN CARE, ZONERX, and DR. SEARS
`
`ZONE, in connection with a wide variety of branded health and nutrition products and
`
`services, including print and electronic publications, educational and counseling services,
`
`meal delivery services, prepared foods, vitamins and supplements, meal replacements
`
`bars and drinks, skin care products and restaurant and café services.
`
`3.
`
`Petitioner, Dr. Barry Sears, is the scientist and author who achieved
`
`considerable fame in connection with the lifelong hormonal and insulin control program
`
`that he first created about fifteen (15) years ago. flag Declaration of Barry D. Sears
`
`(“Sears Decl.”) 1] 1, attached hereto at Exhibit 1.
`
`4.
`
`Dr. Sears’ program uses food as a drug to help people control and balance
`
`their hormonal and insulin levels to achieve maximum mental productivity and as a
`
`means to improved health. 1; at 1] 2.
`
`5.
`
`In 1995, Dr. Sears branded his writing, teaching and consulting on the
`
`benefits of an insulin balanced hormonal control diet with the term “ZONE.” Li. at 11 3.
`
`6.
`
`Dr. Sears adopted the term ZONE as his trademark to analogize the health
`
`benefits of his products and services compliant with his hormonal control program for
`
`ordinary dieters to that of the “flow” achieved by superior athletes during sports
`
`participation. Q at 11 4.
`
`#577375
`
`2
`
`

`
`7.
`
`The terms “flow” or “zone” have been used to denote a heightened state of
`
`consciousness during sports participation during which an athlete performs to the best of
`
`his or her ability. An article discussing this concept is attached at Exhibit 2.
`
`8.
`
`The term ZONE in Dr. Sears’ ZONE trademark and his composite marks
`
`incorporating ZONE is not used in its ordinary sense to mean “an area” —- e.g., “play
`
`zone” describing a specific area dedicated to playing.
`
`9.
`
`ZONE as used by Dr. Sears is fanciful.
`
`10.
`
`Dr. Sears is well known as the source of ZONE branded products and
`
`services.
`
`11.
`
`Dr. Sears has authored numerous ZONE branded books which are
`
`premised upon using food as a drug to control and balance hormonal and insulin levels,
`
`including The Zone, Mastering the Zone, Zone Food Blocks, The Anti—Aging Zone, A
`
`Week in the Zone, The Soy Zone, The Top One Hundred Zone Foods, The 0megaRx Zone
`
`and The Anti-Inflammatory Zone. Sears Decl. at 1] 6.
`
`12.
`
`Several of these books have appeared on The New York Times bestseller
`
`list. Li. at 1] 7.
`
`13.
`
`Dr. Sears’ The Zone was number one on The New York Times bestseller
`
`list in 1996 and remained on that list for approximately twenty (20) weeks. Li. at 11 8.
`
`14.
`
`More than E million hard cover copies of Dr. Sears’ ZONE branded
`
`books have been sold in the United States alone.
`
`I_d. at 119.
`
`15.
`
`Dr. Sears’ works have been translated into 2_2 languages and are sold in at
`
`least Q foreign countries. 1; at 1[ 10.
`
`#577375
`
`3
`
`

`
`16.
`
`In addition to his ZONE branded books, Dr. Sears and his ZONE branded
`
`health and nutrition products and services are widely known from his numerous and
`
`frequent live and taped appearances, including seminars, conferences, radio shows, and
`
`network television interviews, throughout the country. Sears Decl. at 1] ll.
`
`17.
`
`In promoting his ZONE branded health and nutrition products and
`
`services, Dr. Sears has appeared on nationally-broadcast television shows, including The
`
`Today Show in 1996 and again in January 2005, 20/20 in 1999, Good Morning America
`
`on June 9, 2000, June 15, 2000 and again in May 2002, Dateline in July 2002, CBS
`
`Evening News on May 21, 2003, The Montel Williams Show on April 1, 2004 and Live
`
`With Regis and Kelly on February 2, 2005. Q at 1[ 12.
`
`18.
`
`Additionally, each year since 1998, Dr. Sears has conducted a week long
`
`ZONE branded seminar aboard a cruise ship, providing a series of presentations and
`
`demonstrations on mastering his hormonal and insulin control program. Ld_. at 1] 13.
`
`19.
`
`Since at least as early as 1998, Dr. Sears has used the trademarks ZONE,
`
`ZONE DIET, ZONE CRUISE and ZONE CONSULTANTS in connection with
`
`education and counseling services in the fields of diet, health and nutrition including,
`
`meal planning services, diet and nutrition counseling and providing information in the
`
`fields of diet, health and nutrition.
`
`20.
`
`Dr. Sears is well and favorably known throughout the United States and
`
`has built up valuable goodwill and reputation in the trademark ZONE.
`
`I_d_. at 11 14.
`
`21.
`
`The widespread recognition, fame and goodwill associated with ZONE for
`
`products and services in the health and nutrition marketplace is a result of the Petitioner’s
`
`continuous marketing efforts, national media attention, the expenditure of considerable
`
`#577375
`
`4
`
`

`
`amounts of money for advertising and promotional activities and by virtue of the high
`
`quality of the Petitioner’s ZONE branded products and services.
`
`22.
`
`Dr. Sears provides a wide array of health and nutrition products and
`
`services that are compliant with his hormonal control/insulin balanced program under the
`
`trademark ZONE and composite trademarks all containing ZONE as the dominant
`
`portion thereof, including, but not limited to, ZONE, ZONE CUISINE, ZONE CAFE,
`
`ZONE SKIN CARE, ZONERX, ZONE LABS, ZONENET and ZONE SHAKES (the
`
`“ZONE Family of Marks”).
`
`l<_l_. at 11 5.
`
`23.
`
`Dr. Sears’ trademark ZONE and the ZONE Family of Marks have been
`
`extensively advertised and promoted in connection with Dr. Sears’ goods and services
`
`together in such a manner as to establish the ZONE Family of Marks as a family of
`
`marks, with “ZONE” being the family surname.
`
`24.
`
`Petitioner is the owner of approximately seventy (70) plus trademarks and
`
`service marks comprising or containing “ZONE” which are included in the ZONE Family
`
`of Marks for a wide array of health and nutrition products and services.
`
`I_d_. at 1[ 15.
`
`25.
`
`By way of example, Petitioner owns the following United States
`
`Trademark Registrations comprising the ZONE Family of Marks:
`
`Mark:
`
`ZONE
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`
`In Commerce:
`Goods:
`
`2,689,749
`February 25, 2003
`May 22, 2000
`May 1995
`
`May 1995
`Publications, namely a series of books in the field of
`diet and nutrition.
`
`#577375
`
`5
`
`

`
`Mark:
`
`ZONE SKIN CARE
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`
`Date of First Use
`
`2,623,974
`September 24, 2002
`March 30, 2001
`June 2000
`
`In Commerce:
`
`June 2000
`
`Goods:
`
`Skin care products, namely soaps, lotions, creams,
`and oils for the face, body, and hair.
`
`Mark:
`
`ZONERX
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`
`In Commerce:
`Goods:
`
`2,929,836
`March 1, 2005
`September 17, 2003
`April 23, 2002
`
`April 23, 2002
`Workbooks and printed guides about diet, health,
`and nutrition.
`
`(Collectively “ZONE Registered Marks”)
`
`26.
`
`Dr. Sears owns the following additional U.S. trademark registrations
`
`included in the ZONE Family of Marks.
`
`Mark:
`
`ZONE CUISINE
`
`Registration No.:
`Registration Date:
`App. Date:
`Date of First Use:
`Date of First Use
`
`In Commerce:
`Goods:
`
`2,997,305
`September 20, 2005
`March 1, 2004
`September 2003
`
`September 2003
`Prepared and packaged entrees consisting primarily
`of meat, fish, poultry, or vegetables.
`
`Mark:
`
`ZONE CUISINE
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`Date of First Use
`
`2,968,210
`December 13, 2002
`July 12, 2005
`September 2003
`
`In Commerce:
`Goods:
`
`September 2003
`Catering services.
`
`#577375
`
`5
`
`

`
`Mark:
`
`OMEGAZONE
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`
`Date of First Use
`
`In Commerce:
`
`Goods:
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Services:
`
`2,863,212
`
`November 1, 2001
`
`July 13, 2004
`March 1, 2002
`
`March 1, 2002
`Nutritional food bars
`
`DR. SEARS ZONE APPROVED
`
`3,060,942
`
`September 18, 2003
`February 21, 2006
`Providing on-line magazines, newsletters, bulletins,
`in the fields of diet, health, and nutrition; providing
`on-line newsletters in the fields of diet,health and
`
`nutrition by e-mail; catering services; restaurant,
`cafe and snack bar services; computer services,
`namely, providing counseling services, information,
`and educational information in the fields of health
`
`and nutrition via the Internet; counseling services in
`the field of diet, health and nutrition, providing
`information in the fields of diet, health, and
`nutrition via e-mail.
`
`Mark:
`
`DR. SEARS ZONE
`
`Registration No.2
`App. Date:
`Registration Date:
`Services:
`
`3,059,308
`
`October 3, 2003
`
`February 14, 2006
`Providing on-line magazines, newsletters, bulletins,
`in the fields of diet, health, and nutrition; providing
`on-line newsletters in the fields of diet,health and
`nutrition by e-mail; catering services; restaurant,
`cafe and snack bar services; computer services,
`namely, providing counseling services, information,
`and educational information in the fields of health
`
`and nutrition via the Internet; counseling services in
`the field of diet, health and nutrition, providing
`information in the fields of diet, health, and
`nutrition Via e-mail.
`
`Mark:
`
`DR. SEARS ZONE
`
`Registration No.:
`App. Date:
`Registration Date:
`
`3,066,468
`January 24, 2005
`March 7, 2006
`
`#577375
`
`

`
`Services:
`
`Retail store, catalog and mail order services
`featuring vitamins and nutritional supplements,
`nutritional food bars, health foods, and publications
`in the field of diet, health and nutrition.
`
`Mark:
`
`ZONENET
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`
`Date of First Use
`
`3,058,099
`June 14, 2004
`February 7, 2006
`March 2004
`
`In Commerce:
`
`March 2004
`
`Services:
`
`Distributorship and retail services by direct
`solicitation by independent sales representatives,
`door to door retail merchandising, mail order
`services and online retail store services all featuring
`vitamins and nutritional supplements, nutritional
`food bars, health food, edible oils and fats, skin care
`preparations and cosmetics; business consultation in
`the nature of rendering assistance to others in
`connection with the establishment and operation of
`distributorships in the field of diet, health and
`nutrition
`
`Mark:
`
`Registration No.:
`App. Date:
`Registration Date:
`Date of First Use:
`Date of First Use
`
`In Commerce:
`Goods:
`
`ZONE SHAKE
`
`3,038,265
`June 14, 2004
`January 3, 2006
`June 1, 2004
`
`June 1, 2004
`Meal replacement drink mix
`
`27. Dr. Sears owns the following U.S. trademark applications for his ZONE
`
`Family of Marks:
`
`TRADEMARK
`
`APP. NO.
`
`APP. DATE
`
`GOODS AND/OR SERVICES
`
`DR. SEARS ZONE
`
`78/783,017
`
`12/30/05
`12/30/05
`
`-Breakfast cereals, in Class 30.
`-Breakfast cereals, in Class 30.
`
` 78/783,031
`
`#577375
`
`

`
` 10/03/03
`76/553,546
`
`
`-Non-medicated skin care preparations and cosmetics;
`non-medicated skin care preparations for animals,
`
`namely, shampoos, lotions, oils, ointments, creams,
`
`soaps and conditioners, in Class 3
`-Vitamins, nutritional supplements, nutritional food bars
`
`for use as a nutritional supplement or meal replacement
`
`and medicated cosmetics; feed supplements for pets, in
`
`Class 5
`
`-Electronic publications, namely, magazines, a series of
`
`books, newsletters and bulletins, all recorded on
`
`computer media, in the fields of diet, health and
`
`nutrition, in Class 9
`
`-Printed materials, namely newsletters, magazines and a
`
`series of books, all in the field of diet, health and
`
`nutrition, in Class 16
`
`-Prepared entrees consisting primarily of meat, fish
`
`poultry, or vegetable; edible oils and fats, nutritional
`
`food bars, namely, protein based nutrient-dense meal
`
`re lacement and snack bars, in Class 29
`09/20/04
`
`76/613,070
`-Bakery goods, namely, brownies, snack cakes, cookies,
`
`
`biscuits, baking chocolate, cocoa, cocoa mixes, ice
`
`cream, frozen yogurt, sorbet, ice cream sandwiches,
`frozen confections, in Class 30
`-Non-medicated skin care preparations and cosmetics;
`non-medicated skin care preparations for animals,
`
`namely, shampoos, lotions, oils, ointments, creams,
`
`soaps, and conditioners, in Class 3
`-Vitarnins, nutritional supplements; medicated skin care
`
`preparations in the nature of medicated cosmetics;
`
`protein based, nutrient dense meal replacement bars;
`
`feed supplements for pets, in Class 5
`
`-Electronic publications, namely, magazines, a series of
`
`books, newsletters, and bulletins, all recorded on
`
`computer media, in the fields of diet, health and
`
`nutrition, in Class 9
`
`-Printed materials, namely newsletters, magazines and
`
`series of books, all in the field of diet, health and
`
`nutrition, in Class 16
`
`-Prepared entrees consisting primarily of meat, fish,
`
`poultry or vegetables; edible oils and fats; protein based,
`nutrient dense snack bars, in Class 29
`-Retail store, catalog and mail order services featuring
`vitamins and nutritional supplements, nutritional food
`
`bars, health foods, computer software and publications in
`
`the fields of diet, health and nutrition, in Class 35
`09/20/04
`
`
` 76/612,989
`-Bakery goods, namely, brownies, snack cakes, cookies,
`biscuits, baking chocolate, cocoa, cocoa mixes, ice
`
`cream, frozen yogurt sorbet, ice cream sandwiches,
`frozen confections and izza, in Class 30
`
` 01/30/06
` 78/802,356
`-Hot and cold cereal, in Class 30
`
`
`
`
`
`78/302,038
`
`09/18/03
`
`
`
`
`
`
`
`
`
`76/628,970
`
`01/24/05
`
`
`
`
`
`ZDL Sears
`
`DR. SEARS ZONE APPROVED
`
`DR. SEARS ZONE APPROVED
`
`DR. SEARS ZONE APPROVED
`
`v IORSCIYCON
`“*’s%:'€
`
`#577375
`
`

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`
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`
`76/620,899
`
`11/15/04
`
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`
`
`
`
`
`
`Non-medicated skin care preparations and cosmetics;
`non-medicated skin care preparations for animals,
`namely, shampoos, lotions, oils, ointrnents, creams,
`soaps, and conditioners, in Class 3
`-Vitamins; nutritional supplements; protein based
`nutrient dense meal replacement bars; medicated skin
`care preparations in the nature of medicated cosmetics;
`feed supplements for pets; meal replacement drink mix,
`in Class 5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`—Electronic publications, namely, magazines, a series of
`books, newsletters, and bulletins, all recorded on
`computer media, in the fields of diet, health and
`nutrition, in Class 9
`-Printed materials, namely newsletters, magazines, and a
`series of books, all in the field of diet, health and
`nutrition, in Class 16
`-Prepared entrees consisting primarily of meat, fish
`poultry, or vegetable; edible oils and fats; nutritional
`food bars, namely, protein based nutrient dense snack
`bars, in Class 29
`-Ice cream; Bakery goods, namely, brownies, snack
`cakes, cookies, biscuits, in Class 30
`-Animal feed and animal foodstuffs; dog food and edible
`dog treats; cat food and edible cat treats, in Class 31
`-Educational services, namely, conducting workshops,
`seminars, and classes in the fields of health and
`nutrition; providing on-line magazines, newsletters and
`bulletins in the field of diet,