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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA62540
`ESTTA Tracking number:
`01/18/2006
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`Allstate Insurance Company
`01/18/2006
`
`Allstate Plaza
`Northbrook, IL 60062
`UNITED STATES
`
`Attorney
`information
`
`Kevin A. Thompson
`Davis McGrath LLC
`125 S. Wacker Drive, Suite 1700
`Chicago, IL 60606
`UNITED STATES
`trademarks@davismcgrath.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78375068
`01/18/2006
`
`Publication date
`Opposition
`Period Ends
`
`09/20/2005
`01/18/2006
`
`OKOJIE, HENRY OSEZEFUA
`P.O. BOC 3184
`LAUREL, MD 20709
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 036.
`All goods and sevices in the class are opposed, namely: Insurance services, namely, insurance
`brokerage in the field of automobile insurance, home insurance, accident insurance; Insurance
`premium rate computing; insurance services, namely, underwriting in the field of automobiles, home,
`life, and health
`
`Attachments
`
`Notice of Opposition 78375068.pdf ( 6 pages )
`
`Signature
`Name
`Date
`
`/kevinathompson/
`Kevin A. Thompson
`01/18/2006
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application
`Serial No. 78/375068
`ALLSAFE
`
`Published in the Official Gazette
`
`on September 20, 2005
`
`Opposition No.
`
`]
`]
`]
`
`] l
`
`]
`
`]
`]
`
`] ]
`
`]
`
`Allstate Insurance Company,
`
`Opposer,
`
`V.
`
`Henry Osezefua Okojie, dba Allsafe
`Driving Schools and Insurance Company
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Allstate Insurance Company (“Allstate”), a corporation organized under the laws
`
`of the State of Illinois, located at Allstate Plaza, Northbrook, Illinois 60062, through its
`
`attorneys, Davis McGrath LLC, hereby opposes the application of Henry Osezefua
`
`Okojie, dba Allsafe Driving Schools and Insurance Company,
`
`Inc.
`
`(“Okojie”), an
`
`individual, pursuant to 37 CFR § 2.l04(a), for the mark ALLSAFE, Application Serial
`
`No. 78/375068, in Class 36.
`
`As grounds of opposition, Opposer states as follows:
`
`1.
`
`Allstate provides insurance and financial services to consumers and
`
`businesses throughout the United States.
`
`It has been using its mark ALLSTATE in
`
`commerce since at least as early as 1931. Its many services offered to consumers include
`
`insurance underwriting in the fields of automobile, home, life and health, the offering and
`
`underwriting of annuities, and ancillary services thereto.
`
`2.
`
`The ALLSTATE family of marks has become famous and distinctive
`
`through long use for insurance underwriting and related services.
`
`

`
`3.
`
`Allstate is the owner of numerous United States trademark applications
`
`and registrations for the mark ALLSTATE and related trademarks (the “ALLSTATE
`
`Marks”), including but not limited to the following:
`
`3..
`
`YOU’RE IN GOOD HANDS WITH ALLSTATE and Design, Reg. No.
`
`0671339, for underwriting of insurance risks, including automobile
`
`(liability, property damage, medical and other coverages), fire, theft,
`
`personal liability and other lines of insurance, in International Class 36.
`
`ALLSTATE, Reg. No. 0717683, for underwriting of the following types
`
`of insurance: life, annuity, accident, and health, in lntemational Class 36.
`
`ALLSTATE LIFE, Reg. No. 0724938, for underwriting of life insurance,
`
`in International Class 36.
`
`ALLSTATE YOU’RE IN GOOD HANDS and Design, Reg. No.
`
`0751044, for insurance underwriting, in International Class 36.
`
`ALLSTATE, Reg. No. 0761091, for the business of making, writing, and
`
`underwriting of insurance, in International Class 36.
`
`ALLSTATE and Design, Reg. No. 0840187, for insurance underwriting
`
`services, in International Class 36.
`
`YOU’RE IN GOOD HANDS WITH ALLSTATE, Reg. No. 1122022, for
`
`insurance underwriting services, in International Class 36.
`
`ALLSTATE YOU’RE IN GOOD HANDS and Design, Reg. No.
`
`1716463, for insurance underwriting services, in International Class 36.
`
`1-800 ALLSTATE, Reg. No. 2597641, for insurance services, namely,
`
`writing and underwriting of property and casualty insurance, and
`
`

`
`providing ancillary services thereto, namely administration and claims
`
`adjustment, in International Class 36.
`
`ALLSTATE AT WORK, Reg. No. 2635201, for insurance services,
`
`namely life, health, and disability insurance, in International Class 36.
`
`. ALLSTATE PARTS AND LABOR PLUS, Reg. No. 2642514, for
`
`providing extended warranties for private passenger vehicles, in
`
`International Class 36.
`
`1-800 ALLSTATE and Design, Reg. No. 2648641, for insurance services,
`
`namely, writing and underwriting of property and casualty insurance, and
`
`providing ancillary services thereto, namely administration and claims
`
`adjustment, in International Class 36.
`
`. ALLSTATE FINANCIAL PERSONAL RETIREMENT MANAGER,
`
`Reg. 2668553, for investment management of and distribution of variable
`
`annuities, in International Class 36.
`
`. ALLSTATE FINANCIAL and Design, Reg. 2684377, for retail services
`
`in the field of annuities in International Class 35, and insurance services,
`
`namely, insurance administration, annuity underwriting, investing and
`
`administering the funds of others, investment advisory services;
`
`investment brokerage, banking, and mortgage lending in International
`
`Class 36.
`
`. ALLSTATE HANDS ON, Reg. No. 2768312, for magazines containing
`
`topics of interest to consumers, namely, information regarding motor
`
`

`
`vehicle, home, and business ownership; insurance, financial services,
`
`financial planning, investment and retirement, in International Class 16.
`
`p. ALLSTATE POWER SPORTS INSURANCE, Reg. No. 2841749, for
`
`insurance services, namely property and casualty insurance relating to the
`
`operation, storage and ownership of boats and motorized vehicles, in
`
`International Class 36.
`
`q. MY LIFE FROM ALLSTATE, Reg. No. 2846919, for financial and
`
`insurance services, namely financial and insurance needs assessment, in
`
`International Class 36.
`
`r. ALLSTATE CHOICERATE ANNUITY, Reg. No. 2949877, for annuity
`
`underwriting; investment management of and distribution of fixed
`
`annuities, in International Class 36.
`
`s. ALLSTATE SELLING POINT, Reg. No. 2950066, for printed
`
`publications, namely newsletters on the subject of insurance and financial
`
`information, in International Class 36.
`
`4. Allstate has expended significant resources in the promotion and advertising
`
`of its services under the ALLSTATE Marks. Accordingly, Allstate has built a substantial
`
`reputation, and its family of ALLSTATE Marks has become widely known and famous
`
`for a wide range of insurance services.
`
`5.
`
`Okojie has filed a service mark application for the designation ALLSAFE
`
`for “insurance services, namely, insurance brokerage in the field of automobile insurance,
`
`home insurance, accident
`
`insurance;
`
`Insurance premium rate computing;
`
`insurance
`
`

`
`services, namely, underwriting in the field of automobiles, home, life, and health” in
`
`International Class 36.
`
`6.
`
`The services covered by Okojie’s application are substantially identical to
`
`those covered by the ALLSTATE Marks services. Further, the mark is phonetically
`
`similar to the mark ALLSTATE. The specimens provided by Okojie in his application
`
`indicate that his services are provided in direct competition with those of Allstate.
`
`7.
`
`Allstate will be damaged by the registration of Okojie’s application
`
`because it so resembles its registered mark ALLSTATE as to be likely, when used in
`
`conjunction with the services specified in the application,
`
`to cause confusion and/or
`
`mistake among consumers of Allstate’s services, including those who may be confused as
`
`to the source or origin of Okojie’s services.
`
`8.
`
`If Okojie is granted a registration on the Principal Register of the
`
`designation ALLSAFE, this would serve as prima facie evidence of Okojie’s exclusive
`
`rights to use said designation with those services. Such a registration would further be a
`
`source of damage and injury to Allstate.
`
`9.
`
`Furthermore, any defect, objection or fault found with Okojie’s services
`
`marketed under his designation ALLSAFE would necessarily reflect upon and seriously
`
`injure the reputation which Allstate has established for its services marketed under its
`
`ALLSTATE Marks.
`
`WHEREFORE, Opposer, Allstate Insurance Company, prays that Application
`
`Serial No. 78/375068 be rejected, and that registration of the designation ALLSAFE be
`
`denied and refused.
`
`

`
`Produced with a Trial Version of PDF Annotator — www.PDFAnnotator.com
`
`This Notice of Opposition is being filed electronically pursuant to the ESTTA
`
`system.
`
`Respectfully submitted,
`
`ALLSTATE INSURANCE COMPANY
`
`I
`
`(2//2004;
`
`7/
`
`[One of Its Attorneys
`
`Marsha K. Hoover
`
`Kevin A. Thompson
`Boris Umansky
`DAVIS MCGRATH LLC
`
`125 S. Wacker Drive, Suite 1700
`
`Chicago, Illinois 60606
`(312) 332-3033

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