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`10-30-2002
`“'3 ‘°3‘°"t&TM0fc/TMMail FicptDt.#71
`Attorney Docket: 08804.00U1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_
`.
`Opposition No.
`
`) ) ) >
`
`)
`)
`
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`
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`
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`
`AMERICAN LUMBER STANDARD
`
`COMMITTEE, INC.
`
`Opposer,
`
`V.
`
`TOPP CONSTRUCTION SERVICES INC.
`
`Applicant.
`
` C:
`f\_‘)
`
`.2‘.
`
`76/259,542
`May 21, 2001
`July 2, 2002 it
`“NO BUG” logo
`
`Applicant Serial No.:
`Filed:
`Published for Opposition:
`Mark:
`BOX TTAB FEE
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Dear Sir:
`
`3110712002 TSIIITH
`0, M40;
`
`“'
`;;.—
`00000047 762595415
`“$3? “"35 5
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`
`American Lumber Standard Committee, lnc. (“Opposer”) is a non-profit
`
`organization incorporated in the State of Maryland and having its principal place of
`
`business at P.O. Box 210, Germantown, Maryland 20875-0210. Opposer believes that
`
`it is being, and will be damaged by the registration of the “No Bug” mark shown in
`
`_
`_
`_
`Application Serial No. 76/259,542.
`
`Opposer is informed and believes that Applicant Topp Construction Services Inc.
`
`(“Applicant"), a corporation of Pennsylvania with an address of 12 Crozerville Rd.,
`
`Aston, Pennsylvania, is the current owner of Application Serial No. 76/259,542
`
`Fl N N E G A N
`HENDERSON
`F A R A B O W
`G A R R ETT 81
`
`DUNNERE
`1300 I Street, NW
`Washington, DC 20005
`202,408_4000
`Fax 202.408.4400
`www.finnegan.com
`
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`/i’ "/4147 A
`
`’
`
`10-30-2002
`“'3 ‘°3‘°"t&TM0fc/TMMail FicptDt.#71
`Attorney Docket: 08804.00U1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_
`.
`Opposition No.
`
`) ) ) >
`
`)
`)
`
`) )
`
`) )
`
`) )
`
`AMERICAN LUMBER STANDARD
`
`COMMITTEE, INC.
`
`Opposer,
`
`V.
`
`TOPP CONSTRUCTION SERVICES INC.
`
`Applicant.
`
` C:
`f\_‘)
`
`.2‘.
`
`76/259,542
`May 21, 2001
`July 2, 2002 it
`“NO BUG” logo
`
`Applicant Serial No.:
`Filed:
`Published for Opposition:
`Mark:
`BOX TTAB FEE
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Dear Sir:
`
`3110712002 TSIIITH
`0, M40;
`
`“'
`;;.—
`00000047 762595415
`“$3? “"35 5
`»-A...
`
`O
`
`American Lumber Standard Committee, lnc. (“Opposer”) is a non-profit
`
`organization incorporated in the State of Maryland and having its principal place of
`
`business at P.O. Box 210, Germantown, Maryland 20875-0210. Opposer believes that
`
`it is being, and will be damaged by the registration of the “No Bug” mark shown in
`
`_
`_
`_
`Application Serial No. 76/259,542.
`
`Opposer is informed and believes that Applicant Topp Construction Services Inc.
`
`(“Applicant"), a corporation of Pennsylvania with an address of 12 Crozerville Rd.,
`
`Aston, Pennsylvania, is the current owner of Application Serial No. 76/259,542
`
`Fl N N E G A N
`HENDERSON
`F A R A B O W
`G A R R ETT 81
`
`DUNNERE
`1300 I Street, NW
`Washington, DC 20005
`202,408_4000
`Fax 202.408.4400
`www.finnegan.com
`
`0,.
`
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`
`/
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`As grounds for opposition, Opposer alleges that:
`
`
`
`1.
`
`Opposer is a non—profit organization comprised of manufacturers,
`
`distributors, users, and consumers of lumber. Among other things, Opposer has been
`
`appointed by the Animal and Plant Health Inspection Service (“APHIS”) of the United
`
`States Department of Agriculture to administer an accreditation program for the labeling
`
`of non-manufactured wood packaging material produced under the International Plant
`
`Protection Convention ("lPPC") Guidelines for regulating non-manufactured wood
`
`packaging in use for transport of commodities (“lPPC Guidelines”).
`
`2.
`
`The International Plant Protection Convention ("lPPC”) is a multilateral
`
`treaty deposited with and administered by the Food and Agriculture Organization of the
`
`United Nations (“FAO”). The IPPC Guidelines were developed to regulate non-
`
`manufactured wood packaging materials used in the transport of commodities, including
`
`measures to prevent the introduction of foreign pests through wood pallets and other
`
`wood packaging materials. One hundred and seventeen (117) governments belong to
`
`the IPPC, including the United States through APHIS.
`
`3.
`
`An IPPC working group comprised of representatives from various
`
`countries, including representatives from the U.S., developed the “No Bug” logo for use
`
`in connection with the IPPC Guidelines.
`
`4.
`
`APHIS has authorized ALSC to accredit and monitor accredited inspection
`
`agencies that, in turn, authorize non-manufactured wood packaging facilities to use the
`
`IPPC “No Bug” logo shown below to certify that wood packaging materials meet certain
`
`requirements of the IPPC standard. Opposer and its accreditation agencies have been
`
`4319174
`
`2
`
`FINNEGAN
`HENDERSON
`FARABOW
`GARRETTSI
`DUNNERLLL’
`
`1300 I Street, NW
`Washington, DC 20005
`202.408.4000
`Fax 202.408.4400
`www.finnegan.com
`
`
`
`exercising legitimate control over the use the IPPC “No Bug" logo in commerce by these
`
`authorized persons.
`
`Agglicanfs “No Bug" Mark
`
`5.
`
`Upon information and belief, Applicant is the current owner of Application
`
`Serial No. 76/259,542, filed May 21, 2001, for the “No Bug” mark shown below for pest
`
`control services. Applicant claims a date of first use in commerce of May 18, 2001.
`
`6.
`
`Upon information and belief, AppIicant’s pest control services relate to the
`
`treatment of wood packaging materials.
`
`Agglicanfs Objections
`
`7.
`
`Applicant has sent several cease and desist letters to APHIS, Opposer
`
`and its accreditation agencies concerning the IPPC “No Bug"
`
`certification mark.
`
`Count One
`
`Mere Descriptiveness Under Section 2(e)(1) of the Trademark Act
`15 U.S.C.
`1052 e 1
`
`8.
`
`Opposer repeats and realleges each and every allegation set forth in
`
`paragraphs 1 through 7 hereof.
`
`4319174
`
`3
`
`FINNEGAN
`HENDERSON
`FARABOW
`GARRETT 81
`DUNNERELE
`
`1300 I Street, NW
`Washington, DC 20005
`202.408.4000
`Fax 202.408.4400
`www.finnegan.com
`
`
`
`9.
`
`The universal prohibition symbol shown in Applicant’s mark is commonly
`
`known and understood by the general public to mean “No.”
`
`10. When the universal prohibition symbol is combined with Applicant’s
`
`realistic representation of a “bug,” the mark as a whole immediately conveys to
`
`prospective purchasers that Applicant’s pest control services will eliminate pests or
`
`result in “no bugs” in wood packaging materials.
`
`11.
`
`Applicant’s “No Bug” mark is merely descriptive of Applicant’s services
`
`under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
`
`12.
`
`Upon information and belief, Applicant’s mark has not become distinctive
`
`of Applicant’s services, nor has Applicant sought registration on the Principal Register
`
`under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
`
`13.
`
`Opposer is likely to be damaged by the registration of Applicant’s mark
`
`because said registration would grant Applicant prima facie exclusive statutory rights to
`
`the mark, and impair Opposer’s competitive need and right to use the “No Bug” symbol
`
`in a descriptive manner to certify that wood packaging materials comply with IPPC
`
`Guidelines.
`
`Count Two
`
`Likelihood of Confusion Under Section 2(d) of the Trademark Act
`15 U.S.C.
`1052 d
`
`14.
`
`Opposer repeats and realleges each and every allegation set forth in
`
`paragraphs 1 through 13 hereof and pleads the following alternative ground of
`.
`.
`OppOSltlOfl.
`
`15.
`
`The IPPC “No Bug” logo has been in use well prior to the filing date of the
`
`opposed application and any date of first use claimed by Applicant.
`
`FINNEGAN
`HENDERSON
`pARA3ow
`GARRETT &
`DUNNEREE‘
`
`1300 I Street, NW
`Washington, DC 20005
`Fa:‘f;2’?f5;?ff00
`www.finnegan.com
`
`431917—1
`
`4
`
`
`
`16.
`
`Applicant’s “No Bug” mark so resembles the previously used IPPC “No
`
`Bug” logo that, when it is applied to Applicant's services, Applicant’s mark will cause
`
`confusion, mistake and/or deception. Persons familiar with the IPPC “No Bug” logo
`
`would be likely to mistakenly believe that Applicant is associated with FAO, APHIS,
`
`Opposer and/or its accreditation agencies, or that Applicant’s pest control services are
`
`certified by Opposer or its accreditation agencies.
`
`17.
`
`if Applicant is permitted to register the mark for the identified services,
`
`confusion of the trade and public, resulting in damage and injury to Opposer, is likely to
`
`occun
`
`WHEREFORE, Opposer is being, and will be damaged by the registration of the
`
`mark shown in Application Serial No. 76/259,542, and Opposer requests that the
`
`opposition be sustained, and that registration to Applicant be refused.
`
`Respectfully Submitted,
`
`Dated: October 30, 2002
`
`By:
`
`David M. Kelly
`Linda K. McLeod
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`1300 I Street, NW.
`Washington, DC}. 20005-3315
`Telephone: (202) 408-4000
`Facsimile:
`(202) 408-4400
`
`Attorneys for Opposer
`
`AMERICAN LUMBER STANDARD
`COMMITTEE, INC.
`
`4319174
`
`5
`
`FINNECAN
`HENDERSON
`FARABOW
`GARRETT &
`DUNNERLU.’
`
`1300 I Street, NW
`Washington, DC 20005
`202.408.4000
`Fax 202.408.4400
`wvvw.finnegan.com
`
`
`
`
`
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