Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTT A507 90
`
`Filing date3
`
`10/27/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Name
`
`UnumProVident Corporation
`
`Granted to
`
`D3“?
`of previous
`extension
`
`Address
`
`12/21/2005
`
`1 Fountain Square
`Chattanooga, TN 37402
`UNITED STATES
`
`B. Brett Heavner
`§ Attorney
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Correspondence 901 New York Avenue, NW.
`information Washington, DC 20001-4413
`§ UNITED STATES
`docketing@finnegan.com, b.brett.heaVner@finnegan.com,
`martha.parker@finnegan.com Phone:(202) 408-4000
`
`Applicant Information
`
`Application No 78482222
`
`Opposition
`Filing Date
`
`10/27/2005
`
`Applicant
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`Brianas, Demetrious V.
`
`P“b::;‘i°“
`
`he/23/2005
`
`Opposition
`Period Ends
`
`,12/21/2005
`
`

`
`704 Ivory Trail
`Woodstock, GA 30188
`UNITED STATES
`
`Goods/ Services Affected by Opposition
`
`Class 033.
`
`All goods and sevices in the class are opposed, namely: Wines
`
`Attachments
`
`O0O7487.PDF ( 4 pages )
`
`Signature
`
`fB. BRETT HEAVNERJ
`
`Name
`
`B. Brett Heavner
`
`

`
`Attorney Docket No.: 052620289
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`UnumProvident Corporation
`Opposer,
`
`v.
`
`Demetrious V. Brianas
`
`Applicant.
`
`\./&/\./\/\../§/\/\./\/
`
`Opposition No.:
`App. No. 78/482,222
`Mark: UNUM WINE CELLARS
`Published: August 23, 2005
`
`NOTICE OF OPPOSITION
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`UnumProvident Corporation ("Opposer"), a Delaware corporation located and
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`doing business at 1 Fountain Square, Chattanooga, Tennessee 37402, believes that it
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`is, or will be, damaged by registration of Application Serial No. 78/482,222 filed by
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`Demetrious V. Brianas. ("Applicant"), a U.S. individual located and residing at 704 Ivory
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`Trail, Woodstock, Georgia, and hereby opposes same.
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`As grounds for the opposition, and based on information and belief, Opposer
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`alleges that:
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`1.
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`Applicant is the owner of Application Serial No. 78/482,222 for the mark
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`UNUM WINE CELLARS covering "wines" in Class 33. Applicant filed its application on
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`filed September 13, 2004, alleging an intention to use the mark in commerce.
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`2.
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`Since long before Applicant’s filing date, and at least as early as 1985,
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`Opposer has used the mark UNUM and other UNUM—formative marks for its insurance
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`and financial services.
`
`980268_1
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`

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`3.
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`UNUM owns the following federal trademark registrations for the mark
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`UNUM and UNUM—formative marks (collectively the "UNUM Marks"):
`
`(3)
`
`(b)
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`Registration No. 1,392,617, for the mark "UNUM" in block letters for
`"insurance underwriting services," registered on May 6, 1986, and
`now incontestable.
`
`Registration No. 1,392,620 for the mark "UNUM" in stylized form for
`"insurance unden/vriting services," registered on May 6, 1986, and
`now incontestable.
`
`Registration No. 2,077,150 for the mark UNUM for "Computer
`programs for analyzing and administration of insurance policies;
`estimating insurance premiums; policy enrollment; administration of
`claims commissions, and underwriting; and management of local
`area networks; Publications, namely pamphlets, brochures, flyers,
`and newsletters in the fields of insurance, finance, and employee
`benefits; Providing financial consultation and financial management
`services, real estate financing service, namely mortgage lending,
`reinsurance administrative services, annuity underwriting and
`annuity administrative services, financial investment services in the
`field of real estate, securities, and insurance; processing insurance
`claims and self-insurance claim, and administration, to individuals
`and organizations," registered on July 8, 1997.
`
`(d)
`
`Registration No. 2,646,982 for the mark UNUMPROVIDENT for
`“insurance services, namely underwriting disability and group life
`insurance,” registered on November 5, 2002.
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`4.
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`The foregoing registrations are valid and subsisting and constitute prima
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`facie evidence of the validity of the UNUM Marks and registrations, of Opposer’s
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`ownership of and exclusive right to the marks in commerce, and provide constructive
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`notice of ownership thereof by Opposer. Opposer’s pleaded registrations were filed and
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`issued well prior to the filing date of the opposed application.
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`5.
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`Founded over 150 years ago, UNUM is a global leader in protecting
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`income and lifestyles. UNUM, through its subsidiaries, offers comprehensive insurance
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`solutions to protect against the effects of accident, illness, or death. Recent industry
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`

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`surveys have ranked UNUM as the top insurer in group and individual income
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`protection. UNUM's services include group and individual disability products designed
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`to provide coverage for loss of income in the event of disability, and group life insurance
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`products, providing term insurance to a broad range of employees.
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`6.
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`UNUM serves nearly one out of every four U.S. employers that offer group
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`disability insurance coverage, protecting more than 11 million American workers.
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`in
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`2004, UNUM paid approximately $5.9 billion in total benefits to its insured.
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`7.
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`UNUM's goods and services are not limited to insurance. For example,
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`some of UNUM's affiliated companies have offered mortgage loans under the UNUM
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`mark to real estate developers. UNUM currently services these mortgages under the
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`UNUM mark.
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`in addition, thousands of promotional items, including shirts, pens, clocks,
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`umbrellas, and backpacks, bearing one of the UNUM or UNUM—formative Marks are
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`distributed each year.
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`8.
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`UNUM extensively promotes and advertises its services through various
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`forms of media, including television, consumer magazines, trade magazines, daily and
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`weekly newspapers, trade shows, personal sales calls by agents, direct mail, and the
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`UNUM website at wvvw.unum.com which has been operational since 1996. UNUM also
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`owns the domain names www.unum.org, www.unum.us, and www.unum.info, as well as
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`several others using UNUM-formatives. Between 2000 and 2004, UNUM spent in
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`excess of $25,000,000 advertising and promoting UNUM and UNUM-branded products
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`and services to consumers and members of the trade.
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`9.
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`in view of the inherent distinctiveness of the UNUM Marks; the duration
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`and extent of use of the UNUM Marks, the duration and extent of advertising featuring
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`the UNUM Marks; the geographic area in which services have been sold and advertised
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`under the UNUM Marks; the nature of the trade channels UNUM uses to market
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`services featuring UNUM Marks; the degree of public recognition of UNUM's Marks; and
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`-3-
`
`

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`the federal registration of the UNUM Marks, the UNUM Marks have become famous.
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`Opposer’s marks became famous well prior to the September 13, 2004 filing date for
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`Application Serial No. 78/482,222.
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`10.
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`in view of the similarities between the parties’ marks and the fame of
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`Opposer’s UNUM Marks, Applicant’s UNUM WINE CELLARS mark so closely
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`resembles Opposer’s famous marks that it is likely to dilute and will dilute the distinctive
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`quality of Opposer’s UNUM Marks.
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`11.
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`If Applicant is permitted to register the UNUM WINE CELLARS mark for
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`wines as listed in App. No. 78/482,222, such registration would be a source of damage
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`and injury to Opposer.
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`Wherefore, Opposer prays Application Serial No. 78/482,222 be refused, that no
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`registration issue, and that this Opposition be sustained in favor of Opposer.
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`if the filing fee is found to be insufficient for any reason, please charge the
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`deficiency to Deposit Account No. 06-0916.
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`Dated: October 27, 2005
`
`Respectfully submitted,
`
`
`
`
`
`By:
`David M. Kelly
`B. Brett Heavner
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`1300 I Street, N.W.
`
`Washington, D.C. 20005-3315
`(202) 408-4000
`
`Attorneys for Opposer,
`UnumProvident Corporation