Trademark Trial and Appeal Board Electronic Filing System. l1tlp.1[[es§§a,y§p__rt__ggQy
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`ESTTA Tracking number: ESTTA5131
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`Filing d9-l533
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`01/27/2004
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`]N THE UNTTED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
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`Opposer Name Rose Art Industries, Inc.
`
`Granted to
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`Date
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`of previous
`extension
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`_
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`OM28/2004
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`Add"°SS
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`6 Regent Street
`Livingston, NJ 07039
`UNITED STATES
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`. W
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`. W
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`. W
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`Attorney
`information
`
`Robert W. Smith
`McCarter & English, LLP
`100 Mulberry Street Four Gateway Center
`Newark, NJ 07102
`UNITED STATES
`rsmith@rnccarter.com Phone:973-622-4444
`
`Applicant Information
`
`Application No 76444226
`
`
`
`F1;P‘.’.5.i‘.P“. ":i01x27/2004
`Filing Date
`Applicant
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` Spin l\/iIasteriToys
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`date
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`iir..r..;;...o(...i 003
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`ioi/28x2o04
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`6""°Si.ti‘.’.';
`Period Ends
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`A
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`S
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`S
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`S
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`S
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`Address
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`Toronto, Ontario MSV 1B6,
`CANADA
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`....
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`....
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`ESTTA Tracking number: ESTTA5131
`
`Filing d9-l533
`
`01/27/2004
`
`]N THE UNTTED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Name Rose Art Industries, Inc.
`
`Granted to
`
`Date
`
`of previous
`extension
`
`_
`
`OM28/2004
`
`Add"°SS
`
`6 Regent Street
`Livingston, NJ 07039
`UNITED STATES
`
`. W
`
`. W
`
`. W
`
`. W
`
`Attorney
`information
`
`Robert W. Smith
`McCarter & English, LLP
`100 Mulberry Street Four Gateway Center
`Newark, NJ 07102
`UNITED STATES
`rsmith@rnccarter.com Phone:973-622-4444
`
`Applicant Information
`
`Application No 76444226
`
`
`
`F1;P‘.’.5.i‘.P“. ":i01x27/2004
`Filing Date
`Applicant
`
` Spin l\/iIasteriToys
`
`date
`
`iir..r..;;...o(...i 003
`
`ioi/28x2o04
`
`6""°Si.ti‘.’.';
`Period Ends
`
`A
`
`S
`
`S
`
`S
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`S
`
`Address
`
`Toronto, Ontario MSV 1B6,
`CANADA
`
`....
`
`....
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`....
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`
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`Goods/Services Affected by Opposition
`
`.
`.
`.
`All goods and sevices in the class are opposed, namely: CHILDREN'S PAINT SETS;
`CHILDREN'S ARTS AND CRAFT PAINT KITS
`
`CAttachCmentsC ROLL-ART Oppdsitionpdf( 6 [pages
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ROSE ART INDUSTRIES, INC.,
`
`_VS_
`
`SPIN MASTER LTD.,
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`In the matter of the application of SPIN MASTER LTD. (hereinafter
`
`“SPINMASTER”), for the registration of “ROLL—ART,” (“Applicant’s Mark”), Application No.
`
`76/444,226 (the “Application”), published in the Official Gazette of September 30, 2003, Rose
`
`Art Industries, Inc., a corporation of the State of New Jersey, with its principal place of business
`
`at 6 Regent Street, Livingston, New Jersey 07039 (“Rose Art” or “Opposer”), believes that it
`
`would be damaged by the registration of the mark shown in the application and hereby opposes
`
`same. The grounds for the opposition are:
`
`l. Opposer is a corporation which has been engaged in the manufacture and
`
`distribution of writing, coloring and painting instruments, stationery products, arts and crafts
`
`activity sets, and toys and games for sale in the United States for more than seventy years.
`
`2. Since at least as early as December 31, 1982, Rose Art has adopted and used in
`
`United States commerce the mark ROSE ART and/or ROSE ART & Design (“ROSE ART
`
`Mark”).
`
`
`
`3. Rose Art owns the following registrations and trademark registration
`
`applications for marks consisting of or including the terms ROSE ART as used in connection
`
`with stationery, paints and arts and crafts supplies:
`
`[INSERT CHART]
`
`MARK
`
`REG./APP.
`
`REG’N. CLASSIGOODS
`
`NO.
`
`/APP.
`
`FILING
`
`DATE
`
`ROSE ART
`
`1,957,626
`
`2/20/96
`
`ROSE ART
`
`1,957,625
`
`2/20/96
`
`Class 2 — Poster, water color and finger
`paints.
`
`Class 16 — Crayons, paint brushes, chalk,
`slates for writing, blackboards, chalkboards
`for school, office and home use, wipe off
`boards and erasers, cork bulletin boards, flash
`
`cards, markers, felt—tipped pens, pencils, pens,
`poster pen sets consisting of markers, poster
`pens, erasers, stampers, black and white
`posters, and message board cleaner sold as a
`unit, colored pencils, coloring books, color by
`number kits consisting of pre—printed panels,
`crayons, pencils, paints, and paint brushes,
`sold as a unit, playing cards, stencils, stickers,
`construction paper, children's art easel with a
`desk feature, modeling compounds, namely
`putty, dough and clay and modeling
`compound and related accessories, namely
`modeling tools, play mats, extruders, cookie
`cutter shapes, plastic molds, and plastic pieces
`such as geometric shapes, rulers, hats,
`eyeglasses, and facial components, sold as a
`unit therewith.
`
`ROSE ART
`& Design
`
`1,309,985
`
`1,308,936
`
`ROSE ART
`& Double
`Band
`Design
`
`12/18/84 Class 16 — Modeling clay; crayons; markers;
`and a kit containing modeling clay, crayons,
`coloring book, paints, chalk, markers, and a
`chalk board
`
`12/11/84 Class 16 — Chalk, push pins, markers, chalk
`boards, cork bulletin boards, modeling clay,
`blackboard erasers, crayons, paint sets, and
`marker boards.
`
`
`
`ROSE ART
`& Slate
`Design
`
`ROSE ART
`& Design
`ROSE ART
`SINCE 1923
`
`& Design
`
`1,287,540
`
`7/31/84
`
`Class 2 — Poster, water color and finger paints
`Class 16 — Crayons artists’ paint brushes,
`chalk, blackboards, chalk boards, wipe—off
`boards, cork boards and erasers
`
`1,833,319
`
`4/26/94
`
`Class 16 — Crayons.
`
`Class 19 — Clay
`
`75/899,905
`
`1/21/O0
`
`Class 8 — Scissors.
`
`Class 16 — Crayons; markers; colored pencils;
`glue for stationary or household use; arts and
`craft paint kits; modeling compounds; craft
`kits comprised of crayons, markers, colored
`pencils, glue for stationary or household use,
`arts and craft paints, and modeling
`compounds.
`
`2,519,834
`
`ROSE ART
`SINCE 1923
`& Squiggle
`Design
`
`12/ 18/01 Class 16 — Crayons; paintbrushes; chalk;
`slates for writing; blackboards; chalkboards
`for school, office and home use; wipe off
`boards and erasers; chalk erasers; cork
`bulletin boards; flash cards; markers; felt-
`
`tipped pens; pencils; pens; poster pen sets
`consisting of markers, poster pens, erasers,
`stampers, black and white posters, and
`message board cleaner sold as a unit; colored
`pencils; coloring books; color by number kits
`consisting of pre—printed panels, crayons,
`pencils, paints, and paint brushes, sold as a
`unit; playing cards; stencils; stickers;
`construction paper; children's art easel with a
`desk feature; modeling compounds; namely
`putty, dough and clay and modeling
`compound and related accessories; namely
`modeling tools, play mats, extruders, cookie
`cutter shapes, plastic molds, and plastic pieces
`such as geometric shapes, rulers, hats,
`eyeglasses, and facial components, sold as a
`unit therewith; poster paints; watercolor
`paints; finger paints; arts and crafts paint kits;
`cases for pens and pencils; children’s activity
`books; construction paper; craft paper;
`stationery glitter; glue for stationery or
`household use; pencil sharpeners; stampers
`used to make geometric shapes, letters,
`
`
`
`numbers, and animal figures; and stamper
`marker and arts and crafts activity kits
`comprised of one or more of the above goods.
`
`Class 16 — Crayons; paintbrushes; chalk;
`slates for writing; blackboards; chalkboards
`for school, office and home use; wipe off
`boards and erasers; chalk erasers; cork
`
`bulletin boards; flash cards; markers; felt-
`
`tipped pens; pencils; pens; poster pen sets
`consisting of markers, poster pens, erasers,
`stampers, black and white posters, and
`message board cleaner sold as a unit; colored
`pencils; coloring books; color by number kits
`consisting of pre—printed panels, crayons,
`pencils, paints, and paint brushes, sold as a
`unit; stencils; stickers; construction paper;
`children's art easel with a desk feature;
`
`modeling compounds; namely putty, dough
`and clay and modeling compound and related
`accessories; namely modeling tools, play
`mats, extruders, cookie cutter shapes, plastic
`molds, and plastic pieces such as geometric
`shapes, rulers, hats, eyeglasses, and facial
`components, sold as a unit therewith; poster
`paints; watercolor paints; finger paints; arts
`and crafts paint kits; cases for pens and
`pencils; children’ s activity books;
`construction paper; craft paper; stationery
`glitter; glue for stationery or household use;
`pencil sharpeners; stampers used to make
`geometric shapes, letters, numbers, and
`animal figures; and stamper marker and arts
`and crafts activity kits comprised of one or
`more of the above goods.
`
`Class 16 — Toys, namely modeling compound
`and related accessories for use with modeling
`compound sold as a unit.
`
`Class 16 — Toys, namely modeling compound
`and related accessories for use with modeling
`compound sold as a unit.
`
`2,269,344
`
`8/10/99
`
`Class 16 — Modeling compound and related
`accessories for use with modeling compound
`sold as a unit.
`
`78/148,771
`
`7/30/02
`
`ROSE ART
`
`1,968,561
`
`4/16/96
`
`1,967,001
`
`4/9/96
`
`ROSE ART
`FUN
`DOUGH
`
`ROSE ART
`FUN
`DOUGH
`(Stylized)
`
`ROSE ART
`FUN
`DOUGH
`
`
`
`T0 G0 ‘ ‘
`
`2/15/94
`
`Class 16 — Crayons.
`
`ROSE ART
`& Design
`
`1,822,018
`
`4. By reason of the extensive promotion, advertising, and provision of high-
`
`quality products manufactured and distributed by Rose Art in conjunction with the ROSE ART
`
`Mark, the public and the trade have come to recognize products offered in conjunction with this
`
`Mark as signifying Rose Art Industries, Inc., and its products as set forth above.
`
`5. There is no issue as to priority. Rose Art first registered and used the ROSE
`
`ART and/or ROSE ART & DESIGN Mark in United States commerce in connection with related
`
`goods prior to the Applicant’s date of filing for the ROLL—ART mark.
`
`6. Notwithstanding Rose Art Industries, Inc.'s long prior rights in the ROSE ART
`
`Mark, SPINMASTER has filed the Application seeking to register Applicant’s Mark for
`
`“children’s paint sets; children’s arts and craft paint kits” in Class 16.
`
`7. Applicant’s Mark incorporates significant portions of the Opposer's ROSE
`
`ART Mark and is applied to goods related to those goods offered by Opposer in connection with
`
`its ROSE ART Mark. The Applicant's Mark so closely resembles the Opposer's ROSE ART
`
`Mark as to be likely to be confused therewith and mistaken therefor. The Applicant's Mark is
`
`deceptively similar to Opposer's ROSE ART Mark so as to cause confusion and lead to
`
`deception as to the origin of Applicant's goods bearing the Applicant's Mark.
`
`8. If SPINMASTER is permitted to use and register the “ROLL—ART” mark for
`
`its goods, as specified in the Application herein opposed, confusion in the trade resulting in
`
`damage and injury to Rose Art Industries, Inc. would be caused and would result by reason of
`
`the similarity between the Applicant’ s Mark and the Opposer's ROSE ART Mark. Persons
`
`
`
`familiar with Opposer's ROSE ART Mark would be likely to buy Applicant's goods as made and
`
`sold by, or sponsored or approved by, the Opposer.
`
`9. If SPINMASTER were granted the registration herein opposed, it would
`
`thereby obtain at least a prima facie exclusive right to the use of its mark. Such registration
`
`would be a source of damage and injury to the Opposer.
`
`WHEREFORE, the Opposer, Rose Art Industries, Inc., prays that the application
`
`Serial No. 76/444,226 be rejected, and that the mark “ROLL—ART” sought to be registered for
`
`the goods therein specified in International Class 16 be denied and refused.
`
`Respectfully Submitted,
`
`ROSE ART INDUSTRIES, H\IC.
`
`By:
`
`/s/ Robert W. Smith
`Robert W. Smith
`
`McCarter & English, LLP
`Attorneys for Rose Art Industries, Inc.
`Four Gateway Center
`100 Mulberry Street
`Newark, NJ 07102-4096
`
`(973) 622-4444
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