throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA367522
`ESTTA Tracking number:
`09/09/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Barry D. Sears
`Individual
`21 Tioga Way
`Marblehead, MA 01945
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Correspondence
`information
`
`Deborah L. Benson
`Hinckley, Allen & Snyder, LLP
`28 State Street
`Boston, MA 02109
`UNITED STATES
`tmdocket@haslaw.com, jblackowicz@haslaw.com Phone:617-345-9000
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3729183
`Nutrilab Corporation
`Suite 512 111 2nd Avenue N.E.
`St. Petersburg, FL 337014360
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`12/22/2009
`
`Class 005. First Use: 2008/03/25 First Use In Commerce: 2008/03/25
`All goods and services in the class are cancelled, namely: Low glycemic foods and nutraceuticals for
`human consumption, namely, low glycemic meal replacements, namely, drinks, shakes, powders and
`bars; low glycemic beverages for use as a meal replacement; low glycemic weight-management
`systems consisting of thermogenic drinks, energy drinks, fat-burning drinks, namely, tea, coffee,
`appetite-suppressing drinks, protein drinks, chocolate drinks, serotonin drinks, low glycemic candy,
`low glycemic pasta, low glycemic puddings, low glycemic chocolate, all for use as a meal
`replacement
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`Other
`
`Related
`Proceedings
`
`Opposition No. 91168495
`
`Trademark Act section 2(d)
`Lack of Bona Fide Use
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`2689749
`
`Application Date
`
`05/22/2000
`
`

`
`Registration Date
`
`02/25/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ZONE
`
`NONE
`
`Class 016. First use: First Use: 1995/05/00 First Use In Commerce: 1995/05/00
`Publications, namely a series of books in the field of diet and nutrition
`
`U.S. Registration
`No.
`Registration Date
`
`3059308
`
`02/14/2006
`
`Word Mark
`Design Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`10/03/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark is comprised of the stylized words "Dr. Sears" above the word
`"ZONE," with the letter "O" overlapping the letter "Z," in "ZONE."
`Class 041. First use: First Use: 2004/05/21 First Use In Commerce: 2004/05/21
`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
`Class 043. First use: First Use: 2005/01/28 First Use In Commerce: 2005/01/28
`catering services; restaurant, cafe and snack bar services
`Class 044. First use: First Use: 2004/05/21 First Use In Commerce: 2004/05/21
`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
`
`U.S. Registration
`No.
`Registration Date
`
`3128070
`
`08/08/2006
`
`Word Mark
`Design Mark
`
`ZONE FAST
`
`Application Date
`
`03/14/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2005/04/09 First Use In Commerce: 2005/04/09
`Educational services, namely, conducting workshops, seminars and classes in
`the field of diet, health and nutrition and distributing course materials in
`connection therewith; providing educational information in the fields of health
`and nutrition
`
`U.S. Registration
`No.
`Registration Date
`
`3171421
`
`11/14/2006
`
`Word Mark
`Design Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`12/30/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2005/11/28 First Use In Commerce: 2005/11/28
`Breakfast cereals
`
`U.S. Registration
`No.
`Registration Date
`
`3171422
`
`11/14/2006
`
`Word Mark
`Design Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`12/30/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2005/11/28 First Use In Commerce: 2005/11/28
`Breakfast cereals
`
`U.S. Registration
`No.
`
`3254087
`
`Application Date
`
`09/17/2003
`
`

`
`Registration Date
`
`06/19/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ZONE LABS
`
`NONE
`
`Class 003. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`non-medicated skin care preparations and cosmetics
`Class 005. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`vitamins, nutritional supplements, and nutritional food bars
`
`U.S. Registration
`No.
`Registration Date
`
`3176214
`
`11/28/2006
`
`Application Date
`
`04/29/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`DR. SEARS ZONEDIET.COM
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2004/05/21 First Use In Commerce: 2004/05/21
`Providing online magazines and newsletters in the fields of diet, health, and
`nutrition; providing online newsletters in the fields of diet, health and nutrition by
`e-mail
`
`U.S. Registration
`No.
`Registration Date
`
`3066468
`
`03/07/2006
`
`Word Mark
`Design Mark
`
`DR. SEARS ZONE
`
`Application Date
`
`01/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`Retail store, catalog and mail order services featuring vitamins and nutritional
`supplements, nutritional food bars, health foods, and publications in the fields of
`diet, health and nutrition
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`3174669
`
`Application Date
`
`01/24/2005
`
`11/21/2006
`
`Foreign Priority
`Date
`DR. SEARS ZONE APPROVED
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: 2005/11/16 First Use In Commerce: 2005/11/16
`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
`
`U.S. Registration
`No.
`Registration Date
`
`3074328
`
`03/28/2006
`
`Application Date
`
`09/18/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DR. SEARS ZONE LABS
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`On-line retail store and mail order services featuring vitamins and nutritional
`supplements, nutritional food bars, health foods, edible oils and fats, non-
`medicated skin care preparations and cosmetics, and printed publications in the
`fields of diet, health and nutrition
`
`U.S. Registration
`No.
`Registration Date
`
`3161339
`
`10/24/2006
`
`Word Mark
`Design Mark
`
`ZONE
`
`Application Date
`
`01/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`Retail store, catalog ordering 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
`
`U.S. Registration
`No.
`Registration Date
`
`3080411
`
`04/11/2006
`
`Application Date
`
`09/18/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`ZONE LABS
`
`NONE
`
`Class 035. First use: First Use: 2003/11/00 First Use In Commerce: 2003/11/00
`on-line retail store, and mail order services featuring vitamins and nutritional
`supplements, nutritional food bars, health foods, edible oils and fats, non-
`medicated skin care preparations and cosmetics, and printed publications in the
`fields of diet, health and nutrition
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ZONE
`Education and counseling services in the fields of diet, health and
`nutrition, meal planning services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ZONE DIET
`Education and counseling services in the fields of diet, health and
`nutrition, meal planning services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ZONE CRUISE
`Education and counseling services in the fields of diet, health and
`nutrition, meal planning services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ZONE CONSULTANTS
`Education and counseling services in the fields of diet, health and
`nutrition, meal planning services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`THE OMEGA ZONE
`Printed materials, namely newsletters and magazines in the fields of
`diet, health and nutrition, providing on-line newsletters and magazines
`
`

`
`in the field of diet, health and nutrition
`
`U.S. Application/
`Registration No.
`Registration Date
`Design Mark
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`Vitamins, nutritional supplements, nutritional food bars for use as a
`nutritional supplement or meal replacement; prepared entrees
`consisting primarily of meat, fish, poultry or vegetables, edible oils and
`fats, nutritional food bars, namely protein based nutrient dense meal
`snack bars
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`
`Printed materials namely, a series of books in the field of diet, health
`and nutrition
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`Educational services, namely conducting workshops, seminars and
`classes in the fields of diet, health and nutrition, providing on-line
`magazines, newsletters, bulletins, in the fields of diet health and
`nutrition and providing on-line newsletters in the fields of diet, health
`and nutrition by e-mail; providing information in the fields of diet,
`health and nutrition via e-mail
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Design Mark
`
`Goods/Services
`
`Non-medicated skin care preparations and cosmetics
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`ZONE LABS
`Non-medicated skin care preparations and cosmetics; vitamins,
`nutritional supplements and nutritional food bars
`
`76553547#TMSN.jpeg ( 1 page )( bytes )
`78586827#TMSN.jpeg ( 1 page )( bytes )
`78783017#TMSN.jpeg ( 1 page )( bytes )
`78783031#TMSN.jpeg ( 1 page )( bytes )
`78620316#TMSN.jpeg ( 1 page )( bytes )
`76628969#TMSN.gif ( 1 page )( bytes )
`76978324#TMSN.gif ( 1 page )( bytes )
`76628966#TMSN.jpeg ( 1 page )( bytes )
`ZONE.jpg
`ZONE1.jpg
`ZONE2.jpg
`ZONE3.jpg
`Petition_for_Cancellation_-_GLYCEMIC_ZONE_&_Design-#882485-v1-BOSTO
`N.pdf ( 21 pages )(65727 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`

`
`Signature
`Name
`Date
`
`/s/ Deborah L. Benson/
`Deborah L. Benson
`09/09/2010
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BARRY D. SEARS,
`
`Petitioner,
`
`V.
`
`NUTRILAB CORPORATION,
`
`Respondent.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`Cancellation No.:
`
`Reg. No.: 3,729,183
`Mark: GLYCEMIC ZONE & Design
`Class: 5
`
`PETITION FOR CANCELLATION
`
`Barry D. Sears, Ph.D., a United States citizen, with an address of 21 Tioga Way,
`
`Marblehead, Massachusetts 01945 (“Petitioner” or “Dr. Sears”), believes that he has been
`
`and will continue to be damaged by the United States Trademark Registration for
`
`GLYCEMIC ZONE & Design, App. Serial No. 77/424,777, Reg. No. 3,729,183 for
`
`“Low glycen1ic foods and nutraceuticals for human consumption, namely, low glycemic
`
`meal replacements, namely, drinks, shakes, powders and bars; low glycemic beverages
`
`for use as a meal replacement; low glycemic weight—management systems consisting of
`
`thermogenic drinks, energy drinks, fat—burning drinks, namely, tea, coffee, appetite-
`
`suppressing drinks, protein drinks, chocolate drinks, serotonin drinks, low glycemic
`
`candy, low glycemic pasta, low glycemic puddings, low glycemic chocolate, all for use
`
`as a meal replacement in International Class 5” owned by Nutrilab Corporation, a Florida
`
`corporation with an address of Suite 512 111 2nd Avenue N.E. St. Petersburg, Florida
`
`33701 (hereinafter “Respondent” or “Nutrilab”) 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.
`
`Dr. Sears is the owner of the trademark ZONE and other marks
`
`incorporating ZONE as the dominant portion thereof for health and nutrition products and
`
`services designed to help people balance their hormonal and insulin levels.
`
`2.
`
`Dr. Sears uses the trademark ZONE and composite marks, all
`
`incorporating ZONE as the dominant portion thereof, in connection with a wide variety
`
`of branded health and nutrition products and services, including prepared foods, meal
`
`replacement shakes, nutrition bars, print and electronic publications, educational services
`
`and vitan1ins and supplements.
`
`3.
`
`Dr. Sears is the scientist and author who achieved considerable fame in
`
`connection with the lifelong hormonal and insulin control program that he first created
`
`over fifteen (15) years ago.
`
`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 and weight loss.
`
`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.”
`
`6.
`
`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.
`
`7.
`
`ZONE as used by Dr. Sears is fanciful.
`
`#882485
`
`2
`
`

`
`8.
`
`Dr. Sears is well known as the source of ZONE branded health, diet and
`
`nutrition products and services.
`
`9.
`
`Dr. Sears has authored numerous ZONE branded books that 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 OmegaRX Zone and Llie
`
`Anti—Inflammatory Zone.
`
`10.
`
`Several of these books have appeared on The New York Times bestseller
`
`list.
`
`ll.
`
`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.
`
`12.
`
`More than file million hard cover copies of Dr. Sears’ ZONE branded
`
`books have been sold in the United States alone.
`
`13.
`
`Dr. Sears’ works have been translated into twenty two (22) languages and
`
`are sold in at least forty (40) foreign countries.
`
`14.
`
`Dr. Sears’ ZONE diet products and services pay special attention to the
`
`glycemic index of foods, which is a way to measure how quickly a food becomes sugar in
`
`the blood, which impacts insulin levels and weight loss. For instance, Dr. Sears discusses
`
`the use of low glycen1ic diets as a means of reducing inflammation in his 2005 book, The
`
`Anti Inflammation Zone. Dr. Sears’ ZONE diet services, including his writing, teaching
`
`and consulting, focus on strictly limiting high glycemic foods, and replacing them with
`
`more nutrient—rich and lower glycen1ic choices.
`
`#882485
`
`3
`
`

`
`15.
`
`Dr. Sears’ ZONE branded health and nutrition products and services are
`
`widely known as a result of Dr. Sears’ numerous and frequent live and taped
`
`appearances, including sen1inars, conferences, radio shows, and network television
`
`interviews, throughout the United States.
`
`16.
`
`In promoting his ZONE branded health and nutrition products and
`
`services, Dr. Sears has appeared on nationally—broadcast television shows, including Llie
`
`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, the E
`
`M on October 1, 2008, and Live With Regis and Kelly on February 2, 2005. Dr. Sears
`
`has also promoted his ZONE nutrition and diet goods and services on numerous local
`
`television news affiliates, cable television programs and radio programs. Dr. Sears is a
`
`frequent invited speaker to numerous healthcare events and conferences, and most
`
`recently presented at the American Diabetes Association annual meeting on June 26-28,
`
`20 l 0.
`
`17.
`
`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, by using, among
`
`other things, low glycemic load foods.
`
`18.
`
`Dr. Sears is well and favorably known throughout the United States and
`
`has built up valuable goodwill and reputation in the trademark ZONE and composite
`
`marks incorporating ZONE for health and nutrition products and services designed to
`
`help people control hormone levels and insulin levels.
`
`#882485
`
`4
`
`

`
`19.
`
`Since 2003, Dr. Sears has provided prepared foods and meal replacement
`
`products for dieters such as bars and shakes in connection with the mark ZONE and
`
`compound marks containing ZONE. These foods and meal replacement products are
`
`compliant with Dr. Sears’ lifelong hormonal and insulin control program that he branded
`
`ZONE in 1995.
`
`20.
`
`Petitioner is the owner of approximately thirty six registered trademarks
`
`and service marks comprising or containing “ZONE”.
`
`21.
`
`By way of example, Petitioner owns the following United States
`
`Trademark Registrations, which, upon information and belief, issued prior to any date of
`
`first use that Respondent can claim.
`
`Mark
`
`Reg. No.
`
`Goods/Services
`
`ZONE
`
`9 86
`I‘
`
`am
`
`2,689,749
`
`3,059,308
`
`Publications, namely a series of books
`in the field of diet and nutrition
`
`Providing on—line magazines,
`newsletters, bulletins, in the fields of
`diet, health and nutrition; providing
`online 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
`
`materials in connection therewith;
`
`Educational services, namely,
`conducting workshops, seminars and
`classes in the field of diet, health and
`
`nutrition and distributing course
`
`ZONE FAST
`
`3,128,070
`
`#882485
`
`5
`
`

`
`providing educational information in
`the fields of health and nutrition
`
`DR. SEARS ZONE
`
`3,171,421
`
`Breakfast cereals
`
`\
`
`}'\
`
`3,171,422
`
`Breakfast cereals
`
`ZONE LABS
`
`3,254,087
`
`Non—medicated skin care preparations
`and cosmetics
`
`DR. SEARS ZONEDIET.COM
`
`3,176,214
`
`DR. SEARS ZONE
`
`3,066,468
`
`DR. SEARS ZONE APPROVED 3,174,669
`
`DR. SEARS ZONE LABS
`
`3,074,328
`
`3,161,339
`
`.\.‘2
`
`-.:\\.~\\~A§
`
`Vitamins, nutritional supplements,
`and nutritional food bars
`
`Providing online magazines and
`newsletters in the fields of diet,
`
`health, and nutrition; providing online
`newsletters in the fields of diet, health
`
`and nutrition by e—mail
`
`Retail store, catalog and mail order
`services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, and
`
`publications in the fields of diet,
`health and nutrition
`
`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
`On—line retail store and mail order
`
`services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, edible oils
`
`and fats, non—medicated skin care
`
`preparations and cosmetics, and
`printed publications in the fields of
`diet, health and nutrition
`
`Retail store, catalog ordering 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
`
`ZONE LABS
`
`3,080,411
`
`On—line retail store, and mail order
`
`services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, edible oils
`
`#882485
`
`6
`
`

`
`and fats, non—medicated skin care
`
`preparations and cosmetics, and
`printed publications in the fields of
`diet, health and nutrition.
`
`22.
`
`In accordance with Sections 7(b), 22 and 33(a) of the Lanham Trademark
`
`Act, Petitioner’s above—cited registrations constitute prima facie evidence of the validity
`
`of the Registered Marks and of the registrations thereof, Petitioner’s ownership of the
`
`marks shown in said registrations, and Petitioner’s exclusive right to use the marks in
`
`commerce in connection with the goods and services named therein, without condition or
`
`lirr1itation.
`
`23.
`
`Said registrations constitute notice to Respondent of Petitioner’s claim of
`
`ownership of the marks shown within such registrations.
`
`24.
`
`The United States Trademark Registrations set forth in Paragraphs 21 are
`
`collectively referred to as the “ZONE Registered Marks.”
`
`25.
`
`Petitioner filed its Combined Declaration of Use & Incontestability under
`
`15 U.S.C. §§ 1058, 1065 (Sections 8 & 15 of the Lanhan Act) for its ZONE trademark
`
`registration, Reg. No. 2,689,749 resulting in said registration becoming incontestable.
`
`26.
`
`In accordance with 15 U.S.C. § lll5 (b), Petitioner’s trademark
`
`Registration No. 2,689,749 for the mark ZONE is immune from claims that it lacks
`
`secondary meaning or is merely descriptive because of its incontestable status.
`
`27.
`
`Dr. Sears owns the following common law trademarks and, upon
`
`information and belief, has used such marks since prior to Respondent’s first use of the
`
`mark GLYCEMIC ZONE & Design:
`
`#882485
`
`7
`
`

`
`Mark
`
`Date of Fir st
`
`Goods/Ser vices
`
`ZONE
`
`ZONE DIET
`
`ZONE CRUISE
`
`@
`
`1998
`
`1998
`
`1998
`
`ZONE CONSULTANTS
`
`1998
`
`THE OMEGA ZONE
`
`8/31/2002
`
`E
`
`V
`
`:\
`\\\\ \
`
`,
`
`K
`
`§
`
`_
`
`\
`
`—
`
`_
`
`_
`
`-.;;
`
`;
`
`;
`
`‘
`—
`
`ll/2003
`
`p
`
`“ 3
`
`4‘ ‘
`M
`__
`
`\
`
`5/21/2004
`
`#882485
`
`8
`
`Education and counseling services in
`the fields of diet, health and nutrition,
`
`meal lannin; services.
`
`Education and counseling services in
`the fields of diet, health and nutrition,
`
`meal lannin; services.
`
`Education and counseling services in
`the fields of diet, health and nutrition,
`
`meal lannin; services.
`
`Education and counseling services in
`the fields of diet, health and nutrition,
`
`meal lannin; services.
`
`Printed materials, namely newsletters
`and magazines in the fields of diet,
`health and nutrition, providing on—line
`newsletters and magazines in the field
`of diet, health and nutrition.
`.
`.
`.
`.
`Vitamins, nutritional supplements,
`nutritional food bars for use as a
`nutritional supplement or meal
`
`replacement; prepared entrees
`consisting primarily of meat, fish,
`poultry or vegetables, edible oils and
`fats, nutritional food bars, namely
`protein based nutrient dense meal snack
`bars.
`
`Printed materials namely, a series of
`
`books in the field ofdiet, health and
`
`nutrition.
`d
`EduC<1:ational ser\1;i<;1es, namely
`con ucting wor s ops, seminars an
`classes in the fields of diet, health and
`nutrition, providing on—line magazines,
`newsletters, bulletins, in the fields of
`
`diet health and nutrition and providing
`on—line newsletters in the fields of diet,
`
`health and nutrition by e—mail;
`providing information in the fields of
`diet, health and nutrition via e—mail.
`
`

`
`11/2003
`
`Non—medicated skin care preparations
`and cosmetics
`
`\\§
`
`
`
`‘V
`
`ZONE LABS
`
`Non—medicated skin care preparations
`and cosmetics; vitamins, nutritional
`
`su lements and nutritional food bars.
`
`11/2003
`
`Collectively the “ZONE Common Law Marks.”
`
`28.
`
`Dr. Sears’ trademark ZONE, the ZONE Registered Marks and the ZONE
`
`Common Law Marks have been extensively advertised and promoted in connection with
`
`Dr. Sears’ goods and services in such a manner as to establish a family of marks, with
`
`“ZONE” being the family surname.
`
`29.
`
`The trademark ZONE, the ZONE Registered Marks and the ZONE
`
`Common Law Marks are collectively referred to as the “ZONE Family of Marks.”
`
`30.
`
`Through his efforts over the past fifteen (15) plus years, Dr. Sears has
`
`established a strong customer base and is known nationally as a provider of quality goods
`
`and services in the fields of diet, health and nutrition. By virtue of the quality of his
`
`ZONE branded products and services, and as a result of his expenditure of considerable
`
`sums of money on advertising and promotional activity, Dr. Sears has built up valuable
`
`goodwill in his marks ZONE and ZONE DIET and the entire ZONE Family of Marks.
`
`Such marks and the goodwill they represent are of immeasurable value to Dr. Sears.
`
`31.
`
`On March 18, 2008, Respondent filed an intent to use trademark
`
`application for the mark GLYCEMIC ZONE & Design, App. Serial No. 77/424,777, for
`
`“Low glycerr1ic foods and nutraceuticals for human consumption, namely, low glycemic
`
`meal replacements, namely, drinks, shakes, powders and bars; low glycemic beverages
`
`for use as a meal replacement; low glycemic weight—management systems consisting of
`
`thermogenic drinks, energy drinks, fat—burning drinks, namely, tea, coffee, appetite-
`
`#ss24s5
`
`9
`
`

`
`suppressing drinks, protein drinks, chocolate drinks, serotonin drinks, low glycemic
`
`candy, low glycemic pasta, low glycemic puddings, low glycernic chocolate, all for use
`
`as a meal replacement”, in International Class 5.
`
`32.
`
`There is no issue as to priority. Respondent’s Reg. No. 3,729,183 claims
`
`a date of first use anywhere and a date of first use in commerce, long after Petitioner
`
`began using its marks ZONE and ZONE DIET and the entire ZONE Family of Marks.
`
`33.
`
`Respondent had constructive notice of Petitioner’ s ZONE Registered
`
`Marks prior to Respondent’s filing of its application for the GLYCEMIC ZONE &
`
`Design mark.
`
`34.
`
`Petitioner’s actual and constructive date of first use claimed in U.S. Reg.
`
`No. 2,689,749 for ZONE is earlier than any date upon which Respondent can rely.
`
`35.
`
`Petitioner’s actual and constructive date of first use claimed in U.S. Reg.
`
`No. 3,059,308 for DR. SEARS ZONE is earlier than any date upon which Respondent
`
`can rely.
`
`36.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,128,070 for ZONE FAST is earlier than any date upon which Respondent can rely.
`
`37.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,171,421 for DR. SEARS ZONE is earlier than any date upon which Respondent
`
`can rely.
`
`38.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,171,422 for DR. SEARS ZONE is earlier than any date upon which Respondent
`
`can rely.
`
`#882485
`
`10
`
`

`
`39.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,254,087 for ZONE LABS is earlier than any date upon which Respondent can rely.
`
`40.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,176,214 for DR. SEARS ZONE DIET.COM is earlier than any date upon which
`
`Respondent can rely.
`
`41.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,066,468 for DR. SEARS ZONE is earlier than any date upon which Respondent
`
`can rely.
`
`42.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,174,669 for DR. SEARS ZONE APPROVED is earlier than any date upon which
`
`Respondent can rely.
`
`43.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,074,328 for DR. SEARS ZONE LABS is earlier than any date upon which
`
`Respondent can rely.
`
`44.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,161,339 for ZONE is earlier than any date upon which Respondent can rely.
`
`45.
`
`Petitioner’s actual and constructive dates of first use claimed in U.S. Reg.
`
`No. 3,080,411 for ZONE LABS is earlier than any date upon which Respondent can rely.
`
`46.
`
`Because the Respondent’s mark prominently features the term ZONE, and
`
`Petitioner’s Family of ZONE Marks all feature the term ZONE, Respondent’s
`
`GLYCEMIC ZONE & Design mark for low—glycerr1ic and weight—management foods and
`
`meal replacements, including bars and shakes, is likely to be confused by consumers as a
`
`part of the family of ZONE marks owned by Petitioner.
`
`#882485
`
`1 1
`
`

`
`47.
`
`The Respondent’ s mark and the Petitioner’ s ZONE Family of Marks are
`
`similar in sound and appearance and create the same commercial impression.
`
`48.
`
`ZONE is the dominant feature of Petitioner’s ZONE Family of Marks.
`
`49.
`
`ZONE is a dominant feature of the ZONE Registered Marks.
`
`50.
`
`ZONE is a dominant feature of the ZONE Common Law Marks.
`
`51.
`
`ZONE in GLYCEMIC ZONE & Design (GLYCEMIC disclaimed), Reg.
`
`No. 3,729,183, comprises the dominant portion of the mark.
`
`52.
`
`The Respondent’s low glycen1ic foods and meal replacement products for
`
`weight management and Petitioner’ s ZONE branded goods and services for dieters,
`
`including Petitioner’s ZONE branded prepared foods and meal replacement bars and
`
`shakes, are related.
`
`53.
`
`The use of ZONE by Respondent in GLYCEMIC ZONE & Design for
`
`low glycen1ic food products directed to dieters creates a similar commercial impression to
`
`Opposer’s ZONE branded health and nutrition goods and services, including Opposer’s
`
`ZONE branded prepared foods and dietary services.
`
`54.
`
`On information and belief, Respondent’s low glycemic foods and meal
`
`replacement products are directed to individuals concerned about health, diet and
`
`nutrition.
`
`55.
`
`The Respondent’s GLYCEMIC ZONE & Design branded goods and the
`
`Petitioner’s ZONE branded goods and services, including goods and services branded
`
`with any of the ZONE Family of Marks, will be sold to the same customers.
`
`#882485
`
`12
`
`

`
`56.
`
`Respondent’s Reg. No. 3,729,183 does not limit the channels of trade
`
`through which its goods will travel, nor does it lin1it the consumers to whom such goods
`
`are directed.
`
`57.
`
`Respondent’s goods as described in Reg. No. 3,729,183 are presumed to
`
`travel through all channels of trade and to be directed towards all relevant consumers.
`
`5 8.
`
`There are no limits on the channels of trade or consumers for Petitioner’s
`
`goods and services as described in the ZONE Registered Marks.
`
`59.
`
`The Respondent’s GLYCEMIC ZONE & Design branded goods as
`
`described in reg. No. 3,729,183 and the Petitioner’s ZONE branded diet and nutrition
`
`goods and services, including goods and services branded with the ZONE Family of
`
`Marks, are sold or offered through the same channels of trade.
`
`60.
`
`Consumers are likely to believe that Respondent’s GLYCEMIC ZONE &
`
`Design branded goods described in Reg. No. 3,729,183, similarly marked and sold in the
`
`same channels of trade as Opposer’s ZONE branded diet and nutrition goods and
`
`services, including those goods and services branded with the ZONE Family of Marks,
`
`come from or are sponsored or endorsed by the same source.
`
`61.
`
`Consumers are likely to expect that Respondent’s GLYCEMIC ZONE &
`
`Design branded goods described in Reg. No. 3,729,183, designed to assist dieters with
`
`hormonal control and insulin balance, are of the same quality as Opposer’s ZONE
`
`branded diet and nutrition goods and services.
`
`62.
`
`Respondent’s App. Serial No. 77/424,777 was accompanied by a signed
`
`declaration attesting to bonafide intent to use the mark in commerce in connection with
`
`all goods identified in said trademark application.
`
`#882485
`
`13
`
`

`
`63.
`
`On May 26, 2009, Respondent was issued a Notice of Allowance for App.
`
`Serial No. 77/424,777.
`
`64.
`
`On October 29, 2009, Respondent filed a Statement of Use for all goods
`
`listed in the Notice of Allowance, for App. Serial No. 77/424,777 namely “Low glycemic
`
`foods and nutraceuticals for human consumption, namely, low glycemic meal
`
`replacements, namely, drinks, shakes, powders and bars; low glycemic beverages for use
`
`as a meal replacement; low glycen1ic weight—management systems consisting of
`
`thermogenic drinks, energy drinks, fat—burning drinks, namely, tea, coffee, appetite-
`
`suppressing drinks, protein drinks, chocolate drinks, serotonin drinks

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