IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`Opposition No.
`Serial No. 78/114,013
`Mark: 51
`Published: June 10, 2003
`
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`PARKER PEN PRODUCTS
`
`Opposer,
`
`V.
`
`STEVEN PARKER
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Box TTAB - FEE
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir or Madam:
`
`Parker Pen Products and its predecessors and successors (“Parker Pen”) believes that it
`
`will be damaged by the registration of the trademark 51, U.S. Application Serial No. 78/114,013
`
`(the “‘013 Application”) by Steven Parker (“Applicant”) and opposes registration of this mark
`
`upon the following grounds:
`
`1.
`
`Parker Pen is engaged in the business of, among other things, manufacturing and
`
`selling writing instruments and related products.
`
`Parker Pen uses various trademarks in
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`connection with its business, including the marks 51 and PARKER 51 (collectively, “the Parker
`
`Pen 51 Marks”).
`
`2.
`
`In 1939, in honor of Parker Pen’s 515‘ anniversary, Parker Pen launched a line of
`
`writing instruments and related products bearing the Parker Pen 51 Marks (the “Parker Pen 51
`
`Products”). Parker Pen’s 51 fountain pen became one of the most successful and recognized
`
`pens ever produced. Such pens have received critical acclaim and are featured in the Museum of
`05/ 6/2005 GTHDHRSE 00000001 73114013
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`01
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`13:5-102
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`300.00 on
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`Q 0
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`U.S. Pauanl & TMO1cITM Mail Rcpt 0:. an
`
`5-04-2005
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`Opposition No.
`Serial No. 78/114,013
`Mark: 51
`Published: June 10, 2003
`
`) )
`
`)
`)
`)
`)
`
`) )
`
`)
`
`PARKER PEN PRODUCTS
`
`Opposer,
`
`V.
`
`STEVEN PARKER
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Box TTAB - FEE
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir or Madam:
`
`Parker Pen Products and its predecessors and successors (“Parker Pen”) believes that it
`
`will be damaged by the registration of the trademark 51, U.S. Application Serial No. 78/114,013
`
`(the “‘013 Application”) by Steven Parker (“Applicant”) and opposes registration of this mark
`
`upon the following grounds:
`
`1.
`
`Parker Pen is engaged in the business of, among other things, manufacturing and
`
`selling writing instruments and related products.
`
`Parker Pen uses various trademarks in
`
`connection with its business, including the marks 51 and PARKER 51 (collectively, “the Parker
`
`Pen 51 Marks”).
`
`2.
`
`In 1939, in honor of Parker Pen’s 515‘ anniversary, Parker Pen launched a line of
`
`writing instruments and related products bearing the Parker Pen 51 Marks (the “Parker Pen 51
`
`Products”). Parker Pen’s 51 fountain pen became one of the most successful and recognized
`
`pens ever produced. Such pens have received critical acclaim and are featured in the Museum of
`05/ 6/2005 GTHDHRSE 00000001 73114013
`
`01
`
`13:5-102
`
`300.00 on
`
`Q 0
`
`U.S. Pauanl & TMO1cITM Mail Rcpt 0:. an
`
`5-04-2005
`
`
`
`
`
`Modern Art’s Design Collection, in numerous magazines and news outlets, and are the subject of
`
`a published book entitled “Parker ‘51’.” Several U.S. Presidents have used 51 pens prominently,
`
`including General Dwight D. Eisenhower, who used a 51 pen to sign the peace treaty ending the
`
`Second World War.
`
`3.
`
`Parker Pen has expended substantial monies in marketing, advertising and
`
`promoting the Parker Pen 51 Marks and, through such sales and advertising, has generated
`
`substantial goodwill and customer recognition in such marks.
`
`4.
`
`Parker Pen has derived considerable revenues from its sales of the Parker Pen 51
`
`Products under the Parker Pen 51 Marks.
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`It has sold over twenty million fountain pens bearing
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`the Parker Pen 51 Marks throughout the world, including the United States -- more than any
`
`other line of fountain pens.
`
`5.
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`As a result of the extensive marketing and sales of the Parker Pen 51 Products
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`sold under the Parker Pen 51 Marks for many years, and of the public’s widespread use and
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`collection of the Parker Pen 51 Products, such products have come to be, and now are, well and
`
`favorably known under the Parker Pen 51 Marks as products of high quality, durability, and
`
`reliability.
`
`6.
`
`The Parker Pen 51 Marks are distinctive of the Parker Pen 51 Products and are
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`famous within the meaning of the Lanham Act; valuable goodwill has been built up in such
`
`marks identified solely with, and inuring solely to the benefit of, Parker Pen. Such goodwill has
`
`been built up long before the filing date of the Applicant’s ‘O13 Application.
`
`7.
`
`Parker Pen is the owner of the following registrations for the Parker Pen 51
`
`Marks: (1) U.S. Trademark Registration No. 2,925,750 for the PARKER 51 word mark in
`
`connection with “writing instruments, namely pens, pencils, and markers; ink refills; writing ink;
`
`
`
`
`
`pencil leads; and erasers,” filed on August 20, 2002, registered on February 8, 2005, and stating
`
`a first use date of at least as early as October 1, 2002; (2) U.S. Trademark Registration No.
`
`427,076 for the PARKER “51” Stylized mark‘ in connection with “fountain pens, mechanical
`
`pencils, and desksets,” filed on September 14, 1945, registered on January 28, 1947, expired on
`
`March 26, 1987, and stating a first use date of at least as early as July 28, 1939; and (3) U.S.
`
`Registration No. 374,445 for the “51” Stylized mark2 in connection with “fountain pens,
`
`mechanical pencils, and desk sets,” filed on August 10, 1939, registered on January 9, 1940,
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`expired on January 27, 2001, and stating a first use date of at least as early as July 19, 1939.
`
`8.
`
`In addition to the Parker Pen 51 Marks, Parker Pen has used and registered
`
`various numerical marks in connection with its lines of writing instruments and related products,
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`oftentimes featuring two-digit numerical marks that end in the digit “1,” including the “21”
`
`Stylized mark,3 the 41 word mark, the 61 word mark, the 71 word mark, and the 81 word mark,
`
`which are the subject of expired U.S. Trademark Registration Nos. 626,577; 583,470; 410,946;
`
`410,947; and 583,471, respectively.
`
`PARKER $1"
`
`M51799
`
`T] "
`
`
`
`
`
`9.
`
`Fine writing instrument companies, including Parker Pen, regularly reintroduce
`
`lines of products. As such, at least as early as October 1, 2002, Parker Pen reintroduced its
`
`Parker Pen 51 Products bearing the famous Parker Pen 51 Marks and re-registered the PARKER
`
`51 word trademark on the Principal Register (aforementioned U.S. Trademark Reg. No.
`
`2,925,750).
`
`10.
`
`The reintroduced Parker Pen 51 Products continue to be associated with the
`
`goodwill previously established by Parker Pen under the Parker Pen 51 Marks.
`
`11.
`
`At
`
`the time the now-expired “51” and PARKER “5l” Stylized trademark
`
`registrations came due for renewal, Parker Pen was unable to state that it directly sold pens
`
`bearing the Parker Pen 51 Marks in interstate commerce. Nonetheless, the Parker Pen 51
`
`Products are extremely long-lasting products that have been continuously and actively sold,
`
`collected, traded, and repaired by pen dealers, collectors, and enthusiasts, and continuously used
`
`and celebrated by consumers. There are various websites and Internet chat rooms devoted to the
`
`Parker Pen 51 Products. Due to such continuous use by third parties, the goodwill associated
`
`with the Parker Pen 51 Marks has inured to Parker Pen’s benefit. Therefore, despite the lapsing
`
`of such registrations, Parker Pen never abandoned nor intended to abandon such marks.
`
`Indeed,
`
`as stated above, in 2002, Parker Pen reintroduced its Parker Pen 51 Products, filed for re-
`
`registration of the PARKER 51 word trademark, and again directly used the Parker Pen 51
`
`Marks on the Parker Pen 51 Products.
`
`12.
`
`Applicant is the owner of the ‘O13 Application, alleging an intent to use the
`
`trademark 51 in connection with “writing instruments, namely, pens, pencils, and markers;
`
`writing ink; writing ink refills; pencil leads; erasers; desk sets; pen holders; letter openers.”
`
`
`
`
`
`13.
`
`The alleged intended use of the Applicant’s 51 trademark is without the consent
`
`or permission of Parker Pen.
`
`14.
`
`On information and belief, as of the filing date of the ‘013 Application, Applicant
`
`did not have a bona fide intention to use the 51 mark in connection with any or all of the goods
`
`identified in that application. On information and belief, as of the date of the filing of this Notice
`
`of Opposition, Applicant has not used the 51 mark in connection with any or all of the goods
`
`identified in the ‘O13 Application.
`
`15.
`
`On information and belief, Applicant had full knowledge of the extensive prior
`
`use by Parker Pen of the Parker Pen 51 Marks and Parker Pen’s family of two-digit numerical
`
`marks, before filing the ‘O13 Application. Specifically, Applicant made reference to Parker
`
`Pen’s prior registration in response to an Office Action for the ‘013 Application. Furthermore,
`
`Applicant is a direct descendant of the original owners of Parker Pen. According to the Parker
`
`“5l ” book referenced above, Applicant’s father was a past president of Parker Pen, and
`
`Applicant himself has served the Parker Pen company. Moreover, Applicant has maintained a
`
`presence in the aftermarket of products produced by Parker Pen, including the Parker Pen 51
`
`Products.
`
`16.
`
`On information and belief, Applicant knew of Parker Pen’s plans to reintroduce
`
`the Parker Pen 51 Products prior to his filing of the ‘O1 3 Application.
`
`17.
`
`The goods for which Applicant seeks registration of the 51 mark in the ‘013
`
`Application -- “writing instruments, namely, pens, pencils, and markers; writing ink; writing ink
`
`refills; pencil leads; erasers; desk sets; pen holders; letter openers” -- are identical or nearly
`
`identical to the Parker Pen 51 Products. Further, Applicant’s proposed products will likely be
`
`offered to the same class of purchasers, available for sale through the same or similar channels of
`
`
`
`
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`trade, and advertised in the same media, as the Parker Pen 51 Products. Moreover, Applicant
`
`seeks to register the 51 mark in International Class 16, the identical class in which the Parker Pen
`
`51 Marks are and were registered.
`
`18.
`
`Applicant’s 51 mark is confusingly similar to Parker Pen’s 51 Marks and Parker
`
`Pen’s family of two-digit numerical marks, and Applicant’s alleged intended use in connection
`
`with his proposed products is likely to cause confusion, mistake or deception that Applicant’s
`
`goods are those of Parker Pen, or are otherwise endorsed, sponsored, or approved by Parker Pen,
`
`or Cause confusion, mistake or deception as to the affiliation, connection or association between
`
`Applicant and Parker Pen.
`
`19.
`
`Due to the similarity between Applicant’s 51 mark and the Parker Pen 51 Marks
`
`and Parker Pen’s family of two-digit numerical marks, if Applicant is permitted to use and
`
`register the 51 trademark in connection with his proposed products, confusion in trade would
`
`result, causing irreparable damage and injury to Parker Pen. Persons familiar with the Parker
`
`Pen 51 Marks and Parker Pen’s family of two-digit numerical marks would be likely to buy
`
`Applicant’s goods mistakenly believing that such goods are provided by, endorsed by, or
`
`associated with Parker Pen. Furthermore, any defect, objection or fault found with Applicant’s
`
`goods marketed under the 51 mark would necessarily reflect upon and seriously injure the
`
`reputation that Parker Pen has established for the products sold under the Parker Pen 51 Marks
`
`and Parker Pen’s family of two-digit numerical marks.
`
`20.
`
`Although use by any party of the 51 mark in connection with writing instruments
`
`and related products would be likely to cause confusion with the Parker Pen 51 Marks and Parker
`
`Pen’s family of two-digit numerical marks, confusion is even more likely when such proposed
`
`51 mark is affiliated with Applicant Steven Parker, who, as stated above, is a direct descendant
`
`
`
`
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`of the original owners of Parker Pen and has maintained a presence in the afiermarket of
`
`products produced by Parker Pen.
`
`21.
`
`If Applicant is permitted to use and register the 51 trademark in connection with
`
`his proposed products, such use would dilute the Parker Pen 51 Marks.
`
`22.
`
`If Applicant
`
`is granted registration for the 51 mark as shown in the ‘013
`
`Application, Applicant would thereby obtain a prima facie exclusive right to use such mark, and
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`such registration would be the source of irreparable damage and injury to Parker Pen.
`
`
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Parker Pen prays that
`
`the Application Serial No. 78/114,013 be
`
`rejected, and that the mark therein sought for the goods therein be denied and refused.
`
`Parker Pen submits herewith the requisite filing fee in the amount of $300.00. The
`
`Commissioner is hereby authorized to charge any additional fees which may be required, or
`
`credit any overpayment, to our Deposit Account No. 19-0409.
`
`As required by 37 C.F.R. § 2.104(a), this Notice of Opposition is being submitted in
`
`duplicate (original and one copy).
`
`PARKER PEN PRODUCTS
`
`By: @‘
`
`lark
`James A.
`Adam S. Weiss
`
`Julie C. Rising
`SCHIFF HARDIN LLP
`
`6600 Sears Tower
`
`Chicago, Illinois 60606
`(312) 258-5500
`Attorneys for Opposer
`
`Dated: May 2, 2005
`
`
`
`
`
`CERTIFICATE OF MAILING
`
`The undersigned hereby certifies that an original and one copy of the foregoing NOTICE
`
`OF OPPOSITION was mailed First Class Mail postage prepaid on May 2, 2005, in an envelope
`
`addressed to:
`
`Box TTAB - FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`
`
`Alexandria, VA 22313-1451 61
`
`Adam S. Wei
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