.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`‘W ~—~2
`
`TTAB
`
`Opposition No.
`
`§/\./\2\/\-/€é%\-I
`
`Our Account No. 14-1140
`
`Our Order No. 2865-404
`
`C# M#
`
`Date: October 26, 2005
`
`-
`
`‘
`‘.
`LORENZ S.P.A.,,
`
`V.
`
`Opposer,
`
`ADVANCE WATCH CO., LTD.,
`
`Applicant
`
`In Re Application/Registration No.
`Filed/Issued
`
`For the Mark
`
`Box TTAB Fee
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Sm
`
`The document indicated below is attached for filing and is incorporated by reference. Fees are
`
`attached as calculated below:
`
`IX
`
`|:]
`
`NOTICE OF OPPOSITION in 1 cIass(es) ($ 300.00 per class) (6402)
`
`PETITION FOR CANCELLATION in 0 class(eS) ($ 300.00 per c|ass)(6401)
`
`$
`
`$
`
`300.00
`
`0.00
`
`TOTAL FEE ENCLOSED $
`
`300.00
`
`The Commissioner is hereby authorized to charge any deficiency, or credit any overpayment, in the
`{v
`fee(s) filed, or asserted to be filed, or which should have been filed herewith (or with any paper
`hereafter filed in this application by this form) to our Account No. 14-1140. A duplicate copy of this '
`sheet is attached.
`s_.
`
`901 North Glebe Road, 11th Floor
`Arlington, Virginia 22201-4714
`Telephone:
`(703) 816-4000
`Facsimile: (703)816-4100
`
`NIXON & VANDERHYE P.C.
`By Atty: Frank P. Presta
`
`FPP:lcb
`
`10-26-2005
`U.S. Patent & TMO1c/TM Mail Rcpt 0t. #72
`
`#1007063 v1 - 2865-404 Oppostion cvr sheet I
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`‘W ~—~2
`
`TTAB
`
`Opposition No.
`
`§/\./\2\/\-/€é%\-I
`
`Our Account No. 14-1140
`
`Our Order No. 2865-404
`
`C# M#
`
`Date: October 26, 2005
`
`-
`
`‘
`‘.
`LORENZ S.P.A.,,
`
`V.
`
`Opposer,
`
`ADVANCE WATCH CO., LTD.,
`
`Applicant
`
`In Re Application/Registration No.
`Filed/Issued
`
`For the Mark
`
`Box TTAB Fee
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Sm
`
`The document indicated below is attached for filing and is incorporated by reference. Fees are
`
`attached as calculated below:
`
`IX
`
`|:]
`
`NOTICE OF OPPOSITION in 1 cIass(es) ($ 300.00 per class) (6402)
`
`PETITION FOR CANCELLATION in 0 class(eS) ($ 300.00 per c|ass)(6401)
`
`$
`
`$
`
`300.00
`
`0.00
`
`TOTAL FEE ENCLOSED $
`
`300.00
`
`The Commissioner is hereby authorized to charge any deficiency, or credit any overpayment, in the
`{v
`fee(s) filed, or asserted to be filed, or which should have been filed herewith (or with any paper
`hereafter filed in this application by this form) to our Account No. 14-1140. A duplicate copy of this '
`sheet is attached.
`s_.
`
`901 North Glebe Road, 11th Floor
`Arlington, Virginia 22201-4714
`Telephone:
`(703) 816-4000
`Facsimile: (703)816-4100
`
`NIXON & VANDERHYE P.C.
`By Atty: Frank P. Presta
`
`FPP:lcb
`
`10-26-2005
`U.S. Patent & TMO1c/TM Mail Rcpt 0t. #72
`
`#1007063 v1 - 2865-404 Oppostion cvr sheet I
`
`
`
`“" Docket No. 2865-404
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/513,223
`
`Published in the Official Gazette on September 27, 2005
`
`LORENZ S.P.A.,
`
`Opposer,
`
`v.
`
`ADVANCE WATCH CO., LTD.
`Applicant.
`
`g/\./\_/\_/\/"g/g
`
`Opposition No.
`
`Docket No. 2865-404
`
`NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Dear Sir:
`
`Lorenz S.p.A., a corporation of Italy, of Viale Jenner 73, Milan, Italy, believes that
`
`it will be damaged by the registration of the mark LAUREN ROSS in Application Serial
`
`No. 78/513,223 and hereby opposes the same.
`10/31/2005 stmsom 00000001 70513223
`
`01 rc:e.4oe
`
`300-00 OP
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Application Serial No. 78/513,223 was filed on November 8, 2004 based
`
`on intent-to-use for watches in Class 14.
`
`434759
`
`l
`
`
`
`
`
`2.
`
`Upon information and belief, Applicant has not used the mark LAUREN
`
`R088 on watches or similar goods in commerce in or with the United States prior to the
`
`filing date of November 8, 2004 of Application Serial No. 78/513,223.
`
`3.
`
`Opposer has used the mark LAURENS in the United States and
`
`throughout the world on and in connection with watches and clocks prior to the filing
`
`date of November 8, 2004 of Application Serial No. 78/513,223.
`
`4.
`
`Opposer is the owner of Registration No. 2,956,491 for the mark
`
`LAURENS and Design for chronometric and horological instruments, namely, watches,
`
`clocks, wrist—watches; pocket watches; table clocks in Class 14. A copy of Registration
`
`N0.2,956,491 is annexed hereto as Opposer’s Exhibit A.
`
`5.
`
`Opposer has used the mark LORENZ throughout the world and since at
`
`least as early as 1971 continuously up to the present in the United States on and in
`
`connection with chronometers, clocks and watches.
`
`6.
`
`Opposer is the owner of Registration No. 1,406,669 for the mark LORENZ
`
`and Design for watches; chronometers; pendulum clock; wrist-watches; table clock;
`
`pocket watches in Class 14. A copy of Registration No. 1,406,669 is annexed hereto
`
`as Opposer’s Exhibit B.
`
`7.
`
`By virtue of the marketing and sale by Opposer of watches, clocks and
`
`chronometers under the marks LAURENS and LORENZ in the United States and
`
`throughout the world, such products have acquired a favorable reputation reflected in a
`
`substantial amount of goodwill which will be severely impaired by the registration of the
`
`very similar mark LAUREN ROSS to Applicant for watches.
`
`- 2 _
`
`1006988
`
`
`
`
`
`8.
`
`Opposer’s marks LAURENS and LORENZ have become well-known
`
`marks in the watch, clock and chronometer field as a result of the substantial use of
`
`these marks by Opposer on and in connection with watches, clocks and chronometers
`
`and the registration of these marks for such goods in the United States and throughout
`
`the world.
`
`9.
`
`Applicant’s mark LAUREN ROSS is so similar to Opposer’s marks
`
`LAURENS and LORENZ, when used on the same goods, namely, watches, as to be
`
`very likely to cause confusion, mistake or lead to deception as to the source or origin of
`
`Applicant’s goods when sold under its LAUREN ROSS mark.
`
`10.
`
`The watches on which App|icant’s mark is intended to be used, and the
`
`watches, clocks and chronometers on which Opposer’s marks LAURENS and LORENZ
`
`are used, are the same or closely related products which are sold, distributed and
`
`advertised through the same channels of trade and to the same classes of purchasers.
`
`Accordingly, confusion, mistake or deception are most likely, and many persons familiar
`
`with Opposer’s marks LAURENS and LORENZ are likely to buy App|icant’s products
`
`under the mark LAUREN ROSS in the belief that the latter are products sold or
`
`authorized by Opposer.
`
`11.
`
`By the grant of a registration for the mark LAUREN ROSS, Applicant will
`
`obtain at least prima facie the exclusive right to use this mark on watches. Such
`
`registration will be a source of damage and injury to Opposer and to its customers who
`
`have traded with Opposer based on reliance on its LAURENS and LORENZ marks.
`
`1006988
`
`
`
`A duplicate copy of this Notice of Opposition is filed herewith, along with a check
`
`for the Opposition fee of $300.00.
`
`WHEREFORE, Opposer prays that this Opposition be sustained and that
`
`registration of the mark LAUREN ROSS in Application Serial No. 78/513,223 be
`
`refused to Applicant.
`
`Respectfully submitted,
`
`LORENZ S.P.A.
`
`Date:
`
`915 QLWV
`
`
`'
`,_. .;.:.7':t/ fly '
`*_
`BY: Frank P. Presta
`
`Attorney for Opposer
`
`NIXON & VANDERHYE PC
`
`901 N. Glebe Road, 11”‘ Floor
`
`Arlington, VA 22203—1808
`
`(703) 816-4041
`
`FPP:|Cb
`
`1006988
`
`
`
`
`
`He? Msta’ W
`
`Int. CI.: 14
`
`Prior U.S. CIs.: 2, 27, 28 and 50
`
`United States Patent and Trademark Office
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`Reg. No. 2,956,491
`Registered May 31, 2005
`
`LAURENS
`
`LORENZ S.P.A. (ITALY CORPORATION)
`VIALE JENNER 73
`MILAN, ITALY
`
`FOR: CI-IRONOMETRIC AND HOROLOGICAL
`INSTRUMENTS. NAMELY, WATCHES, CLOCKS,
`WRIST-WATCHES; POCKET WATCHES; TABLE
`CLOCKS, IN CLASS 14 (U.S. CLS. 2, 27, 28 AND 50).
`
`OWNER OF ITALY REG. NO. 651755, DATED 5-23-
`I995, EXPIRES 3-24-2014.
`
`OWNER OF U.S. REG. NO. 2,050,524.
`
`SER. NO. 76-498.184, FILED 3-14-2003.
`
`INGA ERVIN, EXAMINING ATTORNEY
`
`ilthe
`
`date.
`
`of
`
`rice
`TO
`
`the
`
`.’ing
`lte:
`
`ited
`
`- (or
`gwal
`
`215
`
`OPPOSER’S EXHIBIT
`A
`
`
`
`
`
`q"lorenz" at trademarks.cnidr.org
`
`F
`
`Page 1 of 1
`
`
`LDEENZ
`
`£5-
`
`LORENZ
`Word Mark
`(REGISTRANT) LORENZ S.P.A.
`Owner Name
`Owner Address VIA MARINA 3 MILANO ITALY CORPORATION ITALY
`‘1’§“°"‘°V °f
`FERNANDA M. FIORDALISI
`
`ecord
`
`Serial Number
`
`73-545551
`
`Registration
`Number
`Filing Date
`Registration
`Date
`
`1406669
`06/28/1985
`08/26/1986
`
`26.09.07; 26.09.12; 26.09.21; 26.11.21; 26.17.12
`2335“ S"‘"°h
`Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/oR NUMBERS
`Register
`PRINCIPAL-2(F)
`Published for
`06/03/1986
`Opposition
`Affidavits
`§‘“‘."g° “F
`egistration
`Type of Mark
`
`SECT 8.; SECT 15.; COMBINED SECT 3 AND SECT 15.
`CHANGE IN REGISTRATION HAS OCCURRED
`TRADEMARK
`
`International
`Class
`Goods and
`Services
`
`014
`
`WATCHES; CHRONOMETERS; PENDULUM CLOCK; WRIST WATCHES;
`TABLE CLOCK; POCKET WATCHES; DATE OF FIRST USE: 1970.00.00;
`DATE OF FIRST USE IN COMMERCE: 1971.09.23
`
`
`5$c§ER’s EXHIBIT
`B
`
`http://trademarks.cnidr.org/cgi-bin/ifetch4?ENG+REG+3+915 872+0+0+620246+F+6+7+1+MS?1'I/5/98Zlorenz W
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`OurAccount No. 14-1140
`
`Our Order No. 2865-404
`
`C# M#
`
`Date: October 26, 2005
`
`) ) ) ) ) ) ) ) )
`
`LORENZ S.P.A.,,
`
`Opposer,
`
`V,
`
`ADVANCE WATCH CO., LTD.,
`
`Applicant
`
`In Re Application/Registration No.
`Filed/Issued
`
`For the Mark
`
`Box TTAB Fee
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Sir:
`
`The document indicated below is attached for filing and is incorporated by reference. Fees are
`attached as calculated below:
`
`Q NOTICE OF OPPOSITION in 1 cIass(es) ($ 300.00 per class) (0402)
`
`B PETITION FOR CANCELLATION in 0 class(es) ($ 300.00 per class)(6401)
`
`$
`
`s
`
`300.00
`
`0.00
`
`The Commissioner is hereby authorized to charge any deficiency, or credit any overpayment, in the
`fee(s) filed, or asserted to be filed, or which should have been filed herewith (or with any paper
`hereafter filed in this application by this form) to our Account No. 14-1140. A duplicate copy of this
`sheet is attached.
`‘
`
`TOTAL FEE ENCLOSED $
`
`300.00
`
`901 North Glebe Road, 11th Floor
`Arlington, Virginia 22201-4714
`Telephone:
`(703) 816-4000
`Facsimile: (703)816-4100
`FPP:|cb
`
`NIXON & VANDERHYE P.C.
`
`By Atty: Frank P. Presta
`
`Signaturgfidwnz i,
`
`5
`
`#1007063 v1 - 2865-404 Oppostion cvr sheet
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