Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA336042
`ESTTA Tracking number:
`03/08/2010
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92049349
`Plaintiff
`Edward B. Beharry & Company, Ltd.
`Jeffrey A. Lindenbaum
`Collen IP
`The Holyoke-Manhattan Building, 80 South Highland Ave
`ossining, NY 10562
`UNITED STATES
`jlindenbaum@collenip.com, docket@collenip.com
`Opposition/Response to Motion
`Jeffrey A. Lindenbaum
`jlindenbaum@collenip.com, docket@collenip.com
`/Jeffrey A. Lindenbaum/
`03/08/2010
`H470_Opposition to motion for summary judgment.pdf ( 13 pages )(42654 bytes
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`)E
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`x. A notice of opp.pdf ( 6 pages )(334993 bytes )
`Ex. B march 3 letter.pdf ( 2 pages )(45477 bytes )
`Ex C. 56f declaration.pdf ( 4 pages )(17809 bytes )
`Ex. D Discov Req.pdf ( 27 pages )(742852 bytes )
`Ex. E Obj to Discov req.pdf ( 5 pages )(91912 bytes )
`Exhibit F.pdf ( 21 pages )(141159 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Edward B. Beharry & Co. Ltd.,
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`REGISTRANT.
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`PETITIONER,
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`vs.
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`AFN Broker, LLC
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`Opposition No. 92,049,349
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`MARK: CHAMPION
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`Registration No. 3,051,908
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`PETITIONER, EDWARD B. BEHARRY & CO. LTD.’S
`OPPOSITION TO DEFENDANT’S MOTION FOR SUMMARY JUDGMENT
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`AND
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`MOTION UNDER RULE 56(f) FOR DISCOVERY ON THE ISSUE OF PRIVITY
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`In its Motion, Defendant AFN argues that Beharry’s Petition for Cancellation of
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`Registration No. 3,051,908 is barred by the doctrine of res judicata. AFN alleges that “Plaintiff
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`seeks to cancel the registration on the same grounds asserted in the [earlier] Opposition, namely
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`abandonment.” AFN’s motion must be denied. Abandonment was neither pled nor litigated in
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`the earlier Opposition. Accordingly there has been no “earlier final judgment on the merits of
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`the claim” of abandonment.
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`Moreover, the facts do not show that AFN is in privity with the defendant (Universal) in
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`the Opposition upon which AFN bases its arguments. These disputed material issues of fact
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`preclude summary judgment as to whether AFN is in privity with the defendant (Universal) in
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`the earlier Opposition. At minimum, Beharry is entitled discovery under Federal Rules 26 and
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`56(f) to learn the basis for AFN’s claim that it is entitled to rely on a prior proceeding regarding
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`another party. In any event, summary judgment must be denied because res judicata could not
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`preclude a claim of abandonment that may be based on events that occurred after the conclusion
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`of the earlier action.
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`A.
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`Background
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`On October 1, 1997, Beharry filed a Notice of Opposition against Application No.
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`74/707,614, which was then owned by an entity called Universal Foods & Merchandising Co.
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`(“Universal”). As evidenced by the Notice of Opposition, which is attached as Ex. A, Beharry,
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`as its grounds for the Opposition alleged it had been using the CHAMPION mark since 1961 and
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`that Universal’s adoption of the same CHAMPION mark would be likely to cause consumer
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`confusion. See, Ex. A. Notably absent from the Notice of Opposition is any allegation by
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`Beharry that the mark had been abandoned by Universal, nor was the Notice of Opposition ever
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`amended to include a claim of abandonment. In fact, the final decision issued by the Board
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`dismissing the Opposition expressly states:
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`In addition, opposer seeks a reopening of discovery so that it can take
`discovery in connection with applicant’s alleged abandonment of the
`involved CHAMPION mark. However, opposer did not plead an
`abandonment claim in its notice of opposition and did not file a motion
`for leave to file an amended notice of opposition to add such a claim.
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`D.E. 29 (AFN’s Motion for Summary Judgment) at Ex. 1, ftn. 2 (emphasis added).
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`After the 1997 Notice of Opposition was filed, the parties engaged in extensive rounds of
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`settlement discussions. Various drafts of settlement agreements were exchanged between the
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`parties. On July 27, 2004 the parties moved for an extension of time, advising the Board that
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`they were engaged in settlement discussions. In response, the Board suspended the matter for six
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`months and advised the parties that if the Board receives no word from the parties as to the
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`progress of the settlement, it would issue an order resuming the proceedings. The parties
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`continued to discuss settlement during and after the suspension. See e.g., Ex. B, letter dated
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`2
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`March 3, 2005. On March 11, 2005 the Board, after receiving no notification that the matter had
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`settled, resumed the proceedings and reset the trial calendar.
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`On April 7, 2005, counsel for Beharry contacted Universal’s counsel to follow-up on a
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`letter sent on March 3, 2005 regarding the latest settlement proposal. During this call,
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`Universal’s counsel indicated that he had been unable to get in contact with his foreign client,
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`and speculated that Universal may be out of business. At this point, Beharry had invested
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`several years and substantial effort to try to settle this matter, and hoped that a settlement could
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`still be salvaged. But after counsel’s subsequent efforts to communicate with his client proved
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`unsuccessful, Beharry could wait no longer, and on November 1, 2005 moved the Board to
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`reopen discovery so that it could formally inquire whether the Applicant was still in business
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`and/or had abandoned its use of the mark. Beharry alternatively contended that the failure of
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`Applicant to respond for over six months provided good cause for an entry of an Order to Show
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`Cause for default judgment.
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`On December 21, 2005, the Board denied Beharry’s motion to reopen discovery and
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`entered judgment against Beharry. In doing so, the Board noted that discovery on the issue of
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`abandonment would be futile because Beharry had not pled abandonment in its Notice of
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`Opposition. Ex. A; D.E. 29 (AFN’s Motion for Summary Judgment) at Ex. 1, ftn 2. The Board
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`further stated that because counsel’s communications with his client, Universal, were
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`unsuccessful “it appears unlikely that opposer could obtain responses to any new discovery
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`requests.” D.E. 29, Ex. 1 at 4. The Board also noted that “the events upon which opposer relies
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`in support of its motion to reopen [i.e., discovering Universal may be out of business] occurred
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`roughly seven years after the close of discovery herein.” Id. The matter was terminated without
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`3
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`amendment to the Notice of Opposition to add a claim of abandonment, and without any
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`discovery permitted on the issue of abandonment. Abandonment was never litigated.
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`Meanwhile, (but unbeknown to Beharry) during much of the earlier Opposition (as now
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`recounted by AFN), Universal purportedly did not even own the CHAMPION mark. As alleged
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`in AFN’s Motion to Substitute Party (D.E. 23, filed July 21, 2009), Universal, on May 5, 1992,
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`entered into an agreement to assign its rights in the mark to an individual named Robert
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`Latchman, and on October 20, 1999 did allegedly assign such rights. D.E. 23. AFN’s motion
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`further alleges that on March 21, 2001, Latchman assigned the rights in the mark to an entity
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`called Worldwide Management, LLC (“Worldwide”). Id. On March 22, 2003 Worldwide
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`assigned rights in the mark back to Latchman. Id. On October 19, 2004, Latchman assigned
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`rights in the mark to a separate entity called Quest Summit LLC (“Quest”). Id. Finally, on
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`November 20, 2006, Quest assigned the mark to AFN.
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`All of these non-disclosed assignments, and alleged changes in ownership of the
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`CHAMPION mark supposedly occurred while the Opposition was pending against Universal.1
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`Yet, Universal never notified the Board of any change in ownership, never amended its Answer
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`to reflect a change in ownership or new parties-in-interest, and never supplemented its discovery
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`responses. See, TBMP 408.03 and Fed. R. Civ. P. 26(e).2 Universal’s counsel through the
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`conclusion of the Opposition on December 21, 2005, never advised Beharry (or its counsel) that
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`Universal had purportedly long since relinquished all rights to the mark – most likely because
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`counsel was unaware of the change in ownership. Instead, Universal, through its counsel
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`continued to actively participate and defend the Opposition up to, and including, its last filing on
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`1 The only exception is the transfer to AFN, which allegedly occurred eleven months after the Opposition
`terminated.
`2 Beharry’s discovery requests are part of the record in the Universal Opposition, and are incorporated herein.
`Opposition No. 91,108,091 at D.E. 31.
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`November 9, 2005. Moreover, as recounted in the papers filed in that Opposition, Universal, as
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`late as July 29, 2004 continued to participate in negotiations for a co-existence agreement
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`between Universal and Beharry, despite the fact that Universal, it has now been alleged, had long
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`since transferred any rights it had in the mark. Remarkably, Beharry was only first made aware
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`of the assignment of the rights in the CHAMPION mark in or around August, 2008, when the
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`present defendant, AFN, made its appearance in this Cancellation proceeding.
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`B.
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`1.
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`Beharry’s Abandonment Claim is Not Barred by Res Judicata (Claim
`Preclusion)
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`The Two Claims are Not Based on the Same Transactional Facts
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`Beharry’s claim of abandonment is not barred by res judicata. Abandonment was neither
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`pled nor litigated in the earlier action.
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`The term res judicata includes two related concepts: "claim preclusion" and "issue
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`preclusion. Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 1370, 79 U.S.P.Q.2d
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`1376 (Fed. Cir. 2006). In this instance, AFN argues that Beharry’s abandonment claim should
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`be barred by the doctrine of claim preclusion. A “second suit will be barred by claim preclusion
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`if: (1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on
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`the merits of a claim; and (3) the second claim is based on the same set of transactional facts as
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`the first." See, Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 1362, 55 USPQ2d 1854,
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`1856 (Fed. Cir. 2000).
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`The Federal Circuit has held that “[w]hen applying res judicata to bar causes of action
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`that were not before the court in the prior action, due process of law and the interest of justice
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`require cautious restraint.” Sharp Kabushiki Kaisha, 448 F.3d at 1372. “[P]recedent weighs
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`heavily against denying litigants a day in court unless there is a clear and persuasive basis for
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`that denial.” Id. (“when a party did not have an opportunity to litigate disputed issues, a decision
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`to permit such litigation is favored”). Further, “[r]estraint is particularly warranted when the
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`prior action was dismissed on procedural grounds,” as was the case here. Id.
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`Finally, for purposes of summary judgment, all doubts as to whether any factual issues
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`are genuinely in dispute must be resolved against the moving party and all inferences must be
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`viewed in the light most favorable to the non-moving party.” See Olde Tyme Foods Inc. v.
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`Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
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`The present claim of abandonment and the earlier pled claim of likelihood of confusion
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`are not based on the same set of transactional facts. Moreover, abandonment is not a claim that
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`could have been litigated in the earlier action because Beharry did not become aware of even the
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`possibility of the abandonment until years after discovery closed. Beharry first learned that there
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`may be even a possibility of abandonment only days before its Testimony opened. Beharry’s
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`request to re-open discovery to obtain evidence as to whether there was in fact abandonment of
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`the mark, was denied by the Board and default judgment entered only as to the Opposition as
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`pled.
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`In the Opposition between Beharry and Universal, Beharry alleged that it had been using
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`the CHAMPION mark since a date earlier than Universal, and that Universal’s application and
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`use of the mark would damage Beharry, as it would likely cause consumer confusion. Ex. A. In
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`contrast, the allegations of this present proceeding between Beharry and AFN involve very
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`different transactional facts – namely that the mark has been abandoned (either directly by
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`Universal or through its successors-in-interest). AFN’s claim that the issue of abandonment was
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`already litigated in the earlier action is baseless.
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`AFN next argues that Beharry’s claim of abandonment could have been raised in the
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`earlier action because Beharry learned that Universal’s counsel was having difficulty reaching
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`Universal as early as April 7, 2005 (mere days before its testimony opened). AFN’s argument is
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`misplaced for two reasons. First, Res judicata “does not bar a suit based on claims that accrue
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`after a previous suit was filed.” Smith v. Potter, 513 F.3d 781, 783 (7th Cir. 2008); Computer
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`Assocs. Int'l v. Altai, Inc., 126 F.3d 365, 370, 44 U.S.P.Q.2d 1281 (2d Cir. 1997) (“For the
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`purposes of res judicata, "the scope of litigation is framed by the complaint at the time it is
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`filed”); Rawe v. Liberty Mut. Fire Ins. Co., 462 F.3d 521, 530 (6th Cir. 2006) (“the opportunity
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`to file a supplemental complaint is not an obligation”) Manning v. Auburn, 953 F.2d 1355, 1360
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`(11th Cir. 1992) (“we do not believe that the res judicata preclusion of claims that "could have
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`been brought" in earlier litigation includes claims which arise after the original pleading is filed
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`in the earlier litigation”).
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`Beharry did not learn that counsel was having difficulty reaching his client until years
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`after the Notice of Opposition had been filed. AFN’s reliance on events that occurred more than
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`seven years after the Notice of Opposition in Beharry v. Universal was filed, as its basis for
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`asserting res judicata, is fatal.
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`Second, adoption of AFN’s argument would in any event lead to absurd results. Prior to
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`the April 7, 2005 phone call, Beharry had no basis to assert abandonment. In fact, very much to
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`the contrary, counsel’s continued litigation of the matter, purportedly on Universal’s behalf,
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`indicated there had been no cessation of Universal’s business. Even during the cited April 7,
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`2005 phone call, counsel could not confirm that the mark had been abandoned. The April 7,
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`2005 phone call only provided Beharry with the limited knowledge that counsel was
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`experiencing some difficulty reaching his foreign client - which is not uncommon, and can be the
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`result of myriad factors. But it certainly does not mean an entity has entirely ceased operation.3
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`It wasn’t until some time had thereafter passed and there remained no communication from
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`Universal, that Beharry believed it had a valid basis to approach the Board and seek discovery on
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`the issue. In fact, Universal’s counsel responded to the motion as late as November 9, 2005 and
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`indicated that he was still in the process of ascertaining whether this client remains in business.
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`See, D.E. 43 and D.E. 45 (Board’s Order) at 2. Beharry’s request for an opportunity for
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`discovery to determine whether there was abandonment (and to determine whether there was a
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`valid basis to assert an abandonment claim), was denied. Accordingly, the issue was never
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`litigated, and could not be litigated by Beharry. Because these facts only arose years after the
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`earlier Notice of Opposition was filed, res judicata does not apply.
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`AFN’s reliance on Vitaline is entirely misplaced. Vitaline Corp. v. General Mills, Inc.,
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`891 F.2d 273, 13 U.S.P.Q.2d 1172 (Fed. Cir. 1989). In Vitaline, the plaintiff sought to litigate, in
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`two separate proceedings, the identical issue – namely, non-use of the mark by the defendant.
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`The Board explained that the plaintiff sought “to relitigate the claim of non-use of General Mills'
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`TOTAL ‘pharmaceutical mark,’ originally asserted as showing fraud, by asserting a new theory,
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`abandonment.” Id. at 275. The Court properly barred the second suit because “Vitaline's
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`theories of abandonment and fraud are not only based upon the same transactional facts -- use of
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`the mark on product containers in connection with certain wording, but rely on the very same
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`proof -- the affidavit and specimens.” Id. Additionally, the Board found that the Vitaline
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`plaintiff had access to the evidence supporting the duplicative issue of non-use at least as early as
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`January, 1985 – prior to the filing of its claim.
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`3 Of course there are any number of alternative explanations, including a change in ownership, address,
`management, or even a client trying to avoid addressing an outstanding legal bill (which we know existed based on
`counsel’s declaration).
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`Unlike in the Vitaline case, Beharry never litigated the issue of abandonment or any facts
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`related to abandonment (or any related claim such as fraud). Instead, the facts alleged in Beharry
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`v. Universal were on the issue of likelihood of confusion. This is different from the facts
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`pertaining to the allegations of abandonment in the current action. Moreover, Beharry, unlike
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`the Vitaline plaintiff, did not have any indication of a possible abandonment at the time it filed its
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`Notice of Opposition against Universal. Instead, the first suggestion of abandonment surfaced
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`almost eight years after the opposition was filed, and several years after discovery closed.
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`Res judicata cannot bar the claim of abandonment which concern facts that Beharry did
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`not earlier litigate, and did not have an adequate opportunity to earlier litigate. AFN’s motion
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`should be denied.
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`2.
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`There can be No Claim Preclusion if AFN is Not in Privity with Universal – An
`Issue Which Requires Discovery
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`There are disputed material issues of fact as to whether AFN is in privity with Universal.
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`Pursuant to Fed. R. Civ. P. 56(f), Beharry moves for additional discovery on the issue of privity.
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`Beharry cannot address this issue without discovery of facts pertaining to the chain of title of
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`AFN’s alleged rights in the mark. This information is believed to be in AFN’s possession – and
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`is not in Beharry’s possession. See, Ex. C (Declaration of Jeffrey A. Lindenbaum in support of
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`Rule 56(f) motion for discovery).
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`Although AFN claims it is a successor-in-interest to Universal’s rights in the
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`CHAMPION mark, Beharry disputes that these rights have been lawfully transferred. Indeed,
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`Beharry already objected to AFN’s motion to substitute itself for Universal in this proceeding.
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`D.E. 19. In granting the motion for substitution, the Board stated: “[t]he substitution of
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`respondent as the party defendant does not preclude petitioner from challenging the validity of
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`any of the assignments of involved Registration No. 3,051,909 or the underlying application
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`thereof.” D.E. 24 at n. 2. Beharry has served discovery requests seeking information to support
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`this very challenge. It is, at best, premature to decide this issue before resolving whether AFN is
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`the lawful owner.
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`On December 28, 2009, Beharry served written discovery requests on AFN which
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`inquired about this transfer of rights.4 Beharry also served Notices of Deposition to further
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`inquire about AFN’s alleged acquisition of rights in the CHAMPION mark. Beharry’s requests
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`and deposition notices are attached hereto as Ex. D. AFN’s responses to these requests were due
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`on February 1, 2010. AFN did not respond to the written requests by the deadline.5 Instead, and
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`undoubtedly without coincidence, AFN filed this Motion for Summary Judgment the day after
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`the deadline to respond had expired, and served (also after the deadline to respond had expired) a
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`one page blanket objection to all requests. Ex. E. The Board suspended the proceedings two
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`days after the Summary Judgment motion was filed. Prior to the suspension, AFN advised
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`Beharry that it was not available for deposition on the noticed dates, but has yet to provide any
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`alternative dates.
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`Even if AFN’s motion was not fatally flawed (because the two claims do not share the
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`same transactional facts) summary judgment in this matter is also not appropriate because there
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`exists disputed issues of fact as to whether AFN owns the claimed rights and goodwill to the
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`CHAMPION mark. International Nutrition Co. v. Horphag Research, Ltd., 220 F.3d 1325,
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`4 Beharry has voluntarily withdrawn Interrogatory Nos. 12, 14, 18, 20-22 and 28.
`5 AFN has waived all untimely objections to the discovery requests. See, Fed. R. Civ. P. 33(b)(4); Giant Food Inc.
`v. Standard Terry Mills, Inc., 1986 TTAB LEXIS 96, 39-41, 229 U.S.P.Q. 955 (TTAB 1986); Senat City of New
`York, 2009 U.S. Dist. LEXIS 10226, 1-2, (E.D.N.Y. 2009). Even if AFN had filed its motion before the deadline to
`respond to the discovery requests (which it did not), the mere filing of a dispositive motion does not suspend the
`deadline to respond to outstanding discovery requests. See, Giant Food, 229 U.S.P.Q. 955.
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`1329, 55 U.S.P.Q.2d 1492 (Fed. Cir. 2000) (privity exists only when rights in the mark being
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`litigated are actually transferred to second party). At the very least, under Rule 56(f) Beharry is
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`entitled to responses to its already-served discovery on this issue before having to respond to this
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`motion for summary judgment. Orion Group, Inc. v. The Orion Insurance Company P.L.C.,
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`1989 TTAB LEXIS 65, *4-5, 12 U.S.P.Q.2D 1923 (TTAB 1989). Because AFN’s responses to
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`the served discovery requests were due before this Motion for Summary Judgment was filed,
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`those responses should be served prior to consideration of this Motion.
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`3.
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`At Best Res Judicata Would Only Bar Re-Litigation of Facts That Existed Prior to
`the Termination of the Earlier Proceeding
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`AFN’s motion must also be denied because, at best, res judicata would only bar litigation
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`of facts that existed prior to the termination of the earlier Opposition proceeding. Res judicata
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`cannot preclude Beharry from challenging the chain of title upon which AFN relies to claim that
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`its rights in the mark arise from, and date back to, use by Univeral and its long string of alleged
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`successors-in-interest. Storey v. Cello Holdings, L.L.C., 347 F.3d 370, 68 U.S.P.Q.2d 1641 (2d
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`Cir. 2003) (claim preclusion does not bar second suit brought on new facts that arose since the
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`prior lawsuit). Even if Beharry were somehow precluded from arguing that Universal abandoned
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`its rights in the mark, Beharry is still entitled, at the very least to move forward with its
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`abandonment claim as to the subsequent alleged use and transfers of the mark. For well-
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`recognized statutory and policy reasons, a claim of abandonment can be raised at any time. See,
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`e.g., 15 U.S.C. § 1064(3).
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`C.
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`Conclusion
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`AFN’s motion for summary judgment should be denied because the claim of
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`abandonment was not litigated in the earlier Opposition, and because the likelihood of confusion
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`claim in the Opposition involved different transactional facts. AFN’s argument that res judicata
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`should in any event apply because Beharry could have litigated abandonment in the earlier action
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`is equally flawed because: (1) facts pertaining to the abandonment only first became available
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`years after the commencement of the earlier action, and can therefore not bar litigation of those
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`facts in a second proceeding; and (2) once discovered, Beharry did not have sufficient time,
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`information or opportunity to litigate the abandonment claim in the earlier matter.
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`Summary judgment should also be denied because Beharry is entitled to discovery under
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`Rule 56(f) as to AFN’s allegation of privity. Finally, AFN’s motion should be denied, because
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`res judicata could not bar an abandonment claim that may be based on facts that arose after the
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`termination of the earlier matter.
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`Beharry requests that AFN’s motion for summary judgment be DENIED, or alternatively,
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`that it be permitted discovery under Rule 56(f) as to AFN’s allegations of privity with Universal.
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`Respectfully submitted for Petitioner
`EDWARD B. BEHARRY & CO. LTD.
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`By: _/Jeffrey A. Lindenbaum/________
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`Jeffrey A. Lindenbaum
`Jess M. Collen
`COLLEN IP
`The Holyoke- Manhattan Building
`80 South Highland Avenue
`Ossining, New York 10562
`Tel: (914) 941-5668
`Fax: (914) 941-6091
`jlindenbaum@collenip.com
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`Dated: March 8, 2010
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`12
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`CERTIFICATE OF FILING AND SERVICE
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`I, Jeffrey A. Lindenbaum hereby certify that on March 8, 2010, the foregoing Petitioner’s
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`Opposition to Defendant’s Motion for Summary Judgment and Motion for Rule 56(f) Discovery
`was filed electronically with the TTAB and served on the following counsel of record via U.S.
`Mail:
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`Davis McGrath LLC
`125 South Wacker Drive, Suite 1700
`Chicago, Illinois 60606-4478
`Attn: William T. McGrath, Esq.
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`_/Jeffrey A. Lindenbaum/_______
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`Jeffrey A. Lindenbaum
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`March 8, 2010
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`SHOULD ANY FEE BE REQUIRED, THE PATENT AND TRADEMARK OFFICE IS
`HEREBY REQUESTED TO CHARGE SUCH FEE TO OUR DEPOSIT ACCOUNT 03-2465.
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`13
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`EXHIBIT A
`EXHIBIT A
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`EXHIBIT A
`EXHIBIT A
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`ATTORNEY DOCKET NO: T-55,565
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`APPLICANT
`SERIAL NO.
`FILED
`FOR
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`: Universal Foods & Merchandise Co.
`2 74/707,614
`: July 28, 1995
`: CHAMPION
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`PUBLISHED
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`: June 3, 1997
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`Assistant Commissioner for Trademarks
`Box TTAB - FEE
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`2900 Crystal Drive
`Arlington, Virginia 22202
`Attention: TRADEMARK TRIAL AND APPEAL BOARD
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`' NOTICE OF OPPOSITION
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`Edward B. Beharry & Company Limited (referred in this Opposition as
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`BEHARRY), a corporation duly organized and ezdsting under the laws of Guyana,
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`located at Charlotte Street, First Floor, Beharry Building, Georgetown, Guyana
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`believes thatit would be damaged by the registration of the mark shown in the above-
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`identified application, and hereby opposes same, pursuant to 15 USC 1063 and 37
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`CFR 2.104.
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`As grounds for opposition, it is alleged that:
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`(1)
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`BEHARRY is and has been engaged in the sale and marketing of
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`identical or highly related goods to those recited by applicant in its application to
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`register since a time prior to the date of first use alleged by applicant in its application
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`for registration.
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`(2)
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`BEHARRY is an internationally~renowned manufacturer, marketer and
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`distributor of food. Its name, reputation and CHAMPION trademark are well and
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`favorably known, including in the United States.
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`(3)
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`BEHARRY has been engaged in the sale and marketing of its food
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`which includes pasta and pasta products, baking powder and custard powder. Sales
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`of CHAMPION brand food products began in Guyana on September 4, 1961, and
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`continue to this day. Through their extensive advertising in Guyana over the years,
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`and through their reputation, the CHAMPION mark has become well known, among
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`other places, not only in Guyana, but in the United States and Canada.
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`(4)
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`Under
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`international
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`treaties, Applicant may not appropriate g the
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`Opposer’s well-known mark for the Applicant’s own use outside the Opposer’s country
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`of origin.
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`(5)
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`BEHARRY has been providing goods under the Guyanese registered
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`trademark CHAMPION in commerce for over a quarter of a century, that is, since at
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`least as early as 1961. The CHAMPION product is dominant in Guyana and well-
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`known in the Guyanese community in the U.S. and elsewhere. BEHARRY has
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`continually manufactured and sold its goods under its CHAMPION trademark since
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`1961. Consumers in the United States, either owing to sales here or fame and
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`association with use in Guyana, particularly among the U.S. Guyanese community, will
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`be confused as to the source or origin of the Applicant’s goods.
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`(6)
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`BEHARRY is the owner of the following pending U.S. trademark
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`application:
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`CHAMPION
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`Serial No. 75/249,482
`Filed: February 4, 1997
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`(7)
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`Applicant’s mark is confusingly similar to BEHARRY’s trademark and
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`is likely, when applied to the goods of the applicant, to cause confusion, or to cause
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`mistake or to deceive. 15 USC 1052(e). Applicant’s mark is the identical mark to
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`Opposer’s mark. Applicant’s mark makes an identical commercial impression to
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`Opposer’s mark due to its identical sound and appearance.
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`(8) Additionally, applicant applies its identical mark to the same or similar
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`goods, namely processed cereals for infants, rice, sugar, starch for foods, powder for
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`making custard, curry powder, flavoring extracts (non-essential oils) spices and spice
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`blends, butter, edible oils, meat in cans, and butter oil. The use of the identical mark
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`on identical and related goods would cause confusion or be likely to cause confusion,
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`mistake, or deception.
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`(9)
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`On information and belief, the Applicant adopted its mark with full
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`knowledge of the Opposer’s trademark and Opposer’s prior rights to the CHAMPION
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`mark as a result of its fame.
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`(10) The Opposer is damaged, as the Applicant’s pending application is an
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`obstacle to BEHARRY’S application to register its famous CHAMPION trademark.
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`(11) Opposer is damaged as a result of any use or registration of its
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`CHAMPION mark by the Applicant.
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`OPPOSER BEHARRY prays that this application Serial No. 74/707,614, be‘
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`refused, that no registration be issued thereon to Applicant, and that this Opposition
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`be sustained in favor of BEHARRY.
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`Respectfully submitted for Opposer
`BEHARRY, Edward B. Beharry & Company,‘ Ltd
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`By:
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`g
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`Jane F. Collen
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`Direct Dial 914-941-5761
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`JFC:wos: afd
`T55455.1
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`Encls:
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`Opposition fee $200.00 per class ($400.00)
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`DATED:
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`BOX 306
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`SCARBOROUGH STATION
`SCARBOROUGH, NEW YORK 10510-806
`’ October 1, 1997
`(914) 941-5761
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`SHOULD ANY OTHER FEE BE REQUIRED, THE PATENT AND
`TRADEMARK OFFICE IS HEREBY REQUESTED TO CHARGE SUCH FEE TO
`OUR DEPOSIT ACCOUNT 03-2465.
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`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED
`WITH THE UNITED STATES POSTAL SERVICE AS EXPRESS MAIL, IN AN
`ENVELOPE 7 NO.
`EM030214781US ADDRESSED TO:
`ASSISTANT
`COMMISSIONER FOR TRADEMARKS, 2900 CRYSTAL DRIVE, ARLINGTON,
`VIRGINIA 22202 ON October 1, 1997.
`’
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`By: Date: October 1 1997
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`EXHIBIT B
`EXHIBIT B
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`EXHIBIT B
`EXHIBIT B
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`r3:C.9,H:l:%l§l..’.l?
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`Telephone (91 4] 941-5668
`Facsimile (914) 941-0091
`www.collenlow.com
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`EMAIL: JCOLLEN@COLl.ENLAW.COM
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`March 3, 2005
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`VIA REGULAR MAIL
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`Mr. Albert Robin, Esq.
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`Flobin, Blecker & Daley
`330 Madison Avenue
`New York, NY 10017-5001
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`Re: U.S. Trademark Opposition No. 91,108,091
`Opposer: Edward B. Beharry & Co., Ltd.
`Applicant: Universal Foods & Merchandise Co.
`Serial No.: 74/704,614
`Mark: CHAMPION
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`Our Ref. No.: T-55565
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`Dear Al:
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`l wanted to follow up with your office to see if there have been any
`updates or changes regarding the draft consent agreement sent to you
`several months ago in the above captioned matter. We believe that this
`agreement reflects the terms your client had previously indicated that he
`would be willing to accept.
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`Presuming these terms are agreeable to your client, please have your
`client sign and return a copy of the consent agreement so that we may
`proceed forward.
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`Very truly yours,
`COLLEN IP
`!
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`..
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`,.z
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`\4 [/ )‘I‘K$/ flt
`Jess M. Collen
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`JMCI/TPG:jmd
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`/1
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`COLLEN IP lnlelleciuol Properly Low, P.C., THE HOLYOKE-MANHATTAN BUILDING,
`80 South Highland Avenue, Ossining—on-Hudson, Weslchesler County, New York 10562 USA
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`EXHIBIT C
`EXHIBIT C
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`EXHIBIT C
`EXHIBIT C
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Edward B. Beharry & Co. Ltd.,
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`REGISTRANT.
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`PETITIONER,
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`vs.
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`AFN Broker, LLC
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`Opposition No. 92,049,349
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`MARK: CHAMPION
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`Registrati