Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA75465
`ESTTA Tracking number:
`04/10/2006
`
`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
`
`Mothers Polishes Waxes Cleaners
`04/09/2006
`
`5456 Industrial Drive
`Huntington Beach, CA 92649
`UNITED STATES
`
`Correspondence
`information
`
`Mothers Polishes Waxes Cleaners
`5456 Industrial Drive
`Huntington Beach, CA 92649
`UNITED STATES
`docketla@fulpat.com
`Applicant Information
`
`76605422
`04/10/2006
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`CALIFORNIA CAR COVER COMPANY
`9525 DeSoto Avenue
`Chatsworth, CA 91311
`UNITED STATES
`Goods/Services Affected by Opposition
`
`10/11/2005
`04/09/2006
`
`Class 035.
`All goods and sevices in the class are opposed, namely: MAIL ORDER CATALOG SERVICES
`FEATURING CAR AND TRUCK COVERS; MOTORCYCLE ACCESSORIES, NAMELY,
`MOTORCYCLE STORAGE BAGS, CABLE AND LOCK SYSTEMS, DUFFEL BAGS, ROLLING
`MOTORCYCLE JACK, MOTORCYCLE COVERS, MOTORCYCLE TIRE GAUGES, DETAILER TO
`POLISH MOTORCYCLE; STORAGE AND DISPLAY ITEMS FOR VEHICLES, NAMELY, HARD TOP
`HOISTS, HARDTOP TRANSPORTERS, CAR DOLLIES, ROD TO ELIMINATE DAMPNESS,
`MILDEW, CONDENSATION AND HUMIDITY ON A VEHICLE; CHEMICAL POUCHES TO
`PREVENT RUST, MILDEW AND CORROSION IN A VEHICLE, LASER GUIDANCE ON VEHICLE
`FOR PARKING THE VEHICLE, AUTOMOBILE DOLLIES, VEHICLE SUN SHIELDS, VEHICLE TIRE
`COVERS, VEHICLE POWER JACKS, FLOOR TILES ON WHICH VEHICLES CAN BE PLACED,
`JACK SYSTEMS FOR VEHICLES, STORAGE CARS FOR VEHICLE JACK SYSTEMS, BACKED
`STRANDS ATTACHED TO A PLASTIC OR WOOD RECEIVING MEMBER FOR USE IN DUSTING
`THE INTERIOR OF A HOME OR OFFICE, OR A VEHICLE; INTERIOR PROTECTION ITEMS FOR
`VEHICLES, NAMELY, CARPETED FLOOR MATS, VINYL PROTECTION MATS, SHEEPSKIN
`FLOOR MATS, PLUSH FLOOR MATS, PLUSH CUSTOM FLOOR MATS, MOLDED LINERS FOR
`THE INTERIOR OF A VEHICLE CARGO SPACE, CARGO LINER, ALL WEATHER TREAD MATS,
`SHEEPSKIN SEAT COVERS, SHEEPSKIN VESTS, DASHBOARD COVERS, SEAT COVERS;
`EXTERIOR ENHANCEMENTS FOR VEHICLES, NAMELY, VEHICLE GRILLES, DOOR HANDLES,
`
`

`
`GRILL INSERTS, ANTENNAS, TRUCK AND CAR BRAS, WEATHER REFLECTORS,
`MUDGUARDS, SPARE TIRE COVERS, BUG DEFLECTORS, FRONT AND REAR UPPER
`MARKER LIGHTS, DOOR HANDLE SURROUNDS AND DOOR PULLS, SWING-AWAY TIRE
`CARRIERS, CHROME PLATED LICENSE PLATES; PERFORMANCE PRODUCTS FOR
`VEHICLES, NAMELY, FILTER CHARGERS, FLOW INTAKE SYSTEMS, AND DECORATIVE
`ORNATE GAUGES; VEHICLE LICENSE FRAMES; AUTOMOBILE ACCESSORIES, NAMELY FIRE
`EXTINGUISHERS, AIR HORNS, FLOOR BOARD INSULATORS, WIPER BLADES, EMERGENCY
`TOOL KITS, IMPACT WRENCHES, AC/DC JUMPSTART SYSTEM, ACCIDENT DOCUMENT KIT,
`WORK LIGHT, VEHICLE VACUUM CLEANERS, TRAVEL COOLERS, AIR PURIFIERS, HANGERS
`FOR GARMENTS IN VEHICLES; VEHICLE TRAVEL ACCESSORIES, NAMELY, CHAIRS, TABLES,
`PET BARRIERS, PET CAR SEATS, TRAVEL BEDS, COFFEE MAKERS, LANTERNS,
`COLLAPSIBLE CONTAINERS, ELECTRONIC COMPASSES, ALCOHOL TESTERS, LUMBAR
`CUSHIONS; FLASHLIGHTS, MULTIPURPOSE KNIVES; TRAILER AND TOWING ITEMS FOR
`VEHICLES, NAMELY, REPLACEMENT MIRRORS, RAMPS FOR VEHICLES, BED MATS,
`FOLDING TAILGATE STEPS, TOWING MIRRORS, BED EXPANDERS, HITCHING AND HAULING
`ACCESSORIES, RATCHET TIE DOWNS, TRUNK TIE DOWNS, MOTORCYCLE TIE DOWNS,
`WORK BENCHES, TOOL ORGANIZERS, SAFETY KITS, SHELVES FOR MOTORCYCLE
`HELMETS, SHELVES FOR MOTORCYCLE HOOKS, OIL STORAGE CABINETS, BOTTLE RACKS,
`FLOOR JACK MOUNTS, HANDLING BRACKETS, LIGHTED SPORT MIRRORS, VEHICLE HITCH
`COVERS; GARAGE MATERIALS, NAMELY, BATTERY TENDERS, BATTERY CHARGING
`SYSTEMS, BATTERY DISCONNECT SYSTEMS, MECHANICS GLOVES, TOOL BOXES,
`STORAGE BAGS, AIR BLOWERS, VEHICLE JACKS, STORAGE SYSTEMS FOR VEHICLE
`TOOLS, CARTS CONTAINING VEHICLE TOOLS, CREEPER SEATS TO BE ABLE TO WORK
`UNDER VEHICLES, ALUMINUM LADDERS, TELESCOPING LADDERS, VACUUM CLEANERS
`FOR VEHICLES, VEHICLE CLEANING AND POLISHING MATERIALS, NAMELY, VEHICLE
`WASHING SYSTEMS, CANOPIES FOR VEHICLES TO BE HOUSED UNDER; MODEL CARS
`
`Attachments
`
`mothe 72403 notice of opposition.pdf ( 12 pages )
`
`Signature
`Name
`Date
`
`/Stephen J. Strauss/
`Mothers Polishes Waxes Cleaners
`04/10/2006
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of:
`
`Serial No.: 76/605,422
`Filed: August 2, 2004
`Mark: CALIFORNIA MOTORING ACCESSORIES and Design
`Published: October 11, 2005
`Applicant: California Car Cover Company
`
`MOTHERS POLISHES WAXES CLEANERS,
`
`Opposition No.
`
`Opposer,
`
`Attorney Docket No. 2 MOTHE 72403
`
`V.
`
`CALIFORNIA CAR COVER COMPANY,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Box TTAB
`
`Arlington, VA 22202-3513
`
`To Assistant Commissioner of Trademarks:
`
`Mothers Polishes Waxes Cleaners, a corporation organized and existing under the laws of
`
`California and having its business address at 545 6 Industrial Drive, Huntington Beach, California
`
`92649 ("OPPOSER"), believes that it will be damaged by the registration of the mark shown in
`
`Application Serial No. 76/605,422 and hereby opposes same.
`
`As grounds for this Notice, it is alleged upon information and belief that:
`
`122826.1
`MOTHE 72403
`
`-1-
`
`

`
`1.
`
`Since 1976, OPPOSER, and its predecessors-in-interest, has used the marks
`
`CALIFORNIA, CALIFORNIA GOLD and MOTHERS CALIFORNIA GOLD in connection
`
`with cleaning and waxing preparations for cars, trucks, motorcycles, boats and airplanes (the
`
`"CALIFORNIA" Marks).
`
`2.
`
`OPPOSER is the owner of all goodwill associated with the following prior United
`
`States Trademark Registrations with respect to OPPOSER's goods identified in paragraph 1
`
`above:
`
`MOTHERS CALIFORNIA
`GOLD (Stylized)
`
`MOTHERS CALIFORNIA
`GOLD
`
`1,209,418
`
`September 21, 1982
`
`2
`
`1,457,903
`
`September 22, 1987
`
`CALIFORNIA GOLD
`
`3,057,493
`
`February 7, 2006
`
`
`
`
`
`3.
`
`Each of these registrations has neither been canceled nor abandoned, has been
`
`used continuously since adoption, and is valid and currently in full force and effect. With the
`
`exception of
`
`the CALIFORNIA GOLD registration,
`
`the
`
`remaining registrations
`
`are
`
`incontestable. Copies of each registration are attached hereto as Exhibit A. OPPOSER also
`
`claims common law trademark rights in each of the CALIFORNIA Marks for the goods
`
`identified in paragraph 1 above.
`
`4.
`
`OPPOSER has developed an exceedingly valuable goodwill with respect to its
`
`CALIFORNIA Marks. OPPOSER's CALIFORNIA Marks have become widely and favorable
`
`known throughout
`
`the United States and worldwide and have become recognized by the
`
`automotive wax and cleaner
`
`industry and consumers of automotive wax and cleaning
`
`122826.1
`MOTHE 72403
`
`-2-
`
`

`
`preparations as identifying and distinguishing OPPOSER as the source and origin of the goods
`
`identified in paragraph 1, bearing the CALIFORNIA Marks. These marks are very valuable to
`
`OPPOSER and any registration by APPLICANT of a confusingly similar mark will cause
`
`immediate and irreparable harm to OPPOSER.
`
`5.
`
`OPPOSER has expended great effort and considerable expense in advertising,
`
`promoting, offering for sale and selling its goods under the CALIFORNIA Marks in the United
`
`States and elsewhere throughout the world.
`
`6.
`
`OPPOSER is informed and believes, and on that ground avers that California
`
`Care Cover Company ("APPLICANT") is a corporation organized and existing under the laws of
`
`California with its principal place of business located at 9525 DeSoto Avenue, Chatsworth,
`
`California 91311.
`
`7.
`
`APPLICANT seeks to register the mark CALIFORNIA MOTORING AND
`
`ACCESSORIES and Design and filed an intent-to-use trademark application (No. 76/605,422)
`
`on August 2, 2004 to register the mark for "mail order catalog services featuring car and truck
`
`covers; motorcycle accessories, namely, motorcycle storage bags, cable and lock systems, duffel
`
`bags, rolling motorcycle jack, motorcycle covers, motorcycle tire gauges, detailer to polish
`
`motorcycle; storage and display items for vehicles, namely, hard top hoists, hardtop transporters,
`
`car dollies, rod to eliminate dampness, mildew, condensation and humidity on a vehicle;
`
`chemical pouches to prevent rust, mildew and corrosion in a Vehicle, laser guidance on Vehicle
`
`for parking the vehicle, automobile dollies, vehicle sun shields, vehicle tire covers, vehicle
`
`power jacks, floor tiles on which vehicles can be placed, jack systems for vehicles, storage cars
`
`for vehicle jack systems, backed strands attached to a plastic or wood receiving member for use
`
`in dusting the interior of a home or office, or a vehicle; interior protection items for vehicles,
`
`122826.1
`MOTHE 72403
`
`-3-
`
`

`
`namely, carpeted floor mats, vinyl protection mats, sheepskin floor mats, plush floor mats, plush
`
`custom floor mats, molded liners for the interior of a vehicle cargo space, cargo liner, all weather
`
`tread mats, sheepskin seat covers, sheepskin vests, dashboard covers, seat covers; exterior
`
`enhancements for vehicles, namely, vehicle grilles, door handles, grill inserts, antennas, truck
`
`and car bras, weather reflectors, mudguards, spare tire covers, bug deflectors, front and rear
`
`upper marker lights, door handle surrounds and door pulls, swing-away tire carriers, chrome
`
`plated license plates; performance products for vehicles, namely, filter chargers, flow intake
`
`systems, and decorative ornate gauges; vehicle license frames. automobile accessories, namely
`
`fire extinguishers, air horns, floor board insulators, wiper blades, emergency tool kits, impact
`
`wrenches, ac/dc jumpstart system, accident document kit, work light, vehicle vacuum cleaners,
`
`travel coolers, air purifiers, hangers for garments in vehicles; vehicle travel accessories, namely,
`
`chairs,
`
`tables, pet barriers, pet car seats,
`
`travel beds, coffee makers,
`
`lanterns, collapsible
`
`containers, electronic compasses, alcohol testers,
`
`lumbar cushions; flashlights, multipurpose
`
`knives; trailer and towing items for vehicles, namely, replacement mirrors, ramps for vehicles,
`
`bed mats, folding tailgate steps, towing mirrors, bed expanders, hitching and hauling accessories,
`
`ratchet tie downs, trunk tie downs, motorcycle tie downs, work benches, tool organizers, safety
`
`kits, shelves for motorcycle helmets, shelves for motorcycle hooks, oil storage cabinets, bottle
`
`racks, floor jack mounts, handling brackets, lighted sport mirrors, vehicle hitch covers; garage
`
`materials, namely, battery tenders, battery charging systems, battery disconnect systems,
`
`mechanics gloves, tool boxes, storage bags, air blowers, vehicle jacks, storage systems for
`
`vehicle tools, carts containing vehicle tools, creeper seats to be able to work under vehicles,
`
`aluminum ladders,
`
`telescoping ladders, vacuum cleaners for vehicles, vehicle cleaning and
`
`122826.l
`MOTHE 72403
`
`-4-
`
`

`
`polishing materials, namely, vehicle washing systems, canopies for vehicles to be housed under;
`
`model cars" in International Class 35.
`
`8.
`
`OPPOSER's first use of the CALIFORNIA Marks, as well as the date of
`
`registration for each of the above-identified Federal Registrations is long prior to APPLICANT's
`
`filing of Application Serial No. 76/605,422 or any subsequent claimed first use of the
`
`‘ CALIFORNIA MOTORING ACCESSORIES and Design mark by APPLICANT.
`
`9.
`
`Upon information and belief, the Class 35 services specified in APPLICANT's
`
`CALIFORNIA MOTORING ACCESSORIES and Design service mark application (particularly
`
`the mail-order catalog services featuring vehicle cleaning and polishing materials, namely,
`
`vehicle washing systems) would be distributed through similar, if not identical, channels of trade
`
`and marketed under similar, if not
`
`identical, circumstances to a same or similar class of
`
`purchasers as the products marketed by OPPOSER under its CALIFORNIA Marks.
`
`10.
`
`If the APPLICANT is permitted to use and register
`
`its CALIFORNIA
`
`MOTORING ACCESSORIES and Design mark for the Class 35 services specific in the
`
`application herein oppose, confusion in the automotive wax and cleaner trade resulting in
`
`damage and injury to OPPOSER would be caused and would result by reason of the similarity
`
`between APPLICANT's CALIFORNIA MOTORING ACCESSORIES and Design mark and the
`
`OPPOSER's CALIFORNIA Marks. Persons familiar with OPPOSER's CALIFORNIA Marks
`
`would be likely to buy vehicle washing systems through APPLICANT's CALIFORNIA
`
`MOTORING ACCESSORIES and Design mail-order catalog services as and for a product or
`
`service made and sold by OPPOSER. Any defect, objection or fault found with APPLICANT's
`
`services marketed under the CALIFORNIA MOTORING ACCESSORIES and Design mark
`
`12825.1
`MOTHE 72403
`
`-5-
`
`

`
`would necessarily reflect upon and seriously injure the reputation which the OPPOSER has
`
`established for its goods under its CALIFORNIA Marks.
`
`11.
`
`If APPLICANT is granted the registration herein opposed, it would thereby obtain
`
`a least prima facie exclusive right to the use of its mark. Such registration would be a source of
`
`damage and injury to the OPPOSER, including but not limited to, placing a cloud upon the right
`
`of OPPOSER to naturally expand use or registration of its CALIFORNIA Marks or other
`
`trademarks and service marks, to any other related goods or services not specifically defined
`
`within the above-identified Federal Registrations including those services identified in Serial No.
`
`76/605,422.
`
`12.
`
`By reason of the foregoing allegations, OPPOSER has the right to use and register
`
`trademarks and service marks which are believed to be confusingly similar to the CALIFORNIA
`
`MOTORING ACCESSORIES and Design mark sought to be registered by APPLICANT, and
`
`OPPOSER believes it will be damaged by registration of the mark shown in the opposed
`
`application.
`
`WHEREFORE, OPPOSER prays that registration of the mark shown in Application
`
`Serial No. 76/605,422 published on October
`
`ll, 2005 in the Official Gazette,
`
`for
`
`the
`
`International Class 35 services specified therein, be refused and denied, and that this opposition
`
`be sustained.
`
`OPPOSER hereby gives notice under Rule 2,l22(d) of the Rules of Practice that after
`
`hearing and any appeal on this opposition proceeding, it will rely on its registrations which are
`
`annexed as exhibits to this Notice of Opposition as evidence in support of this Notice of
`
`Opposition.
`
`122826.1
`MOTHE 72403
`
`-6-
`
`

`
`A duplicate copy of this Notice of Opposition, a check in the amount of $300.00 as the
`
`filing fee for an opposition in one International Class, and a separate authorization to charge any
`
`additional fees to Deposit Account No. 06-2425 are enclosed herewith.
`
`Respectfully submitted,
`
`Dated:
`
`n\ 1°
`
`, 2006
`
`(310) 242-2730
`
`6060 Center Drive, Tenth Floor
`Los Angeles, CA 90045
`
`122826.1
`MOTHE 72403
`
`-7-
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing NOTICE OF OPPOSITION upon
`
`Applicant's counsel by depositing one copy thereof in the United States Mail with First Class
`
`postage affixed thereon on April Q, 2006, addressed as follows:
`
`James L. Vana, Esq.
`FOLEY & LARDNER
`
`777 East Wisconsin Avenue, Suite 3800
`Milwaukee, Wisconsin 53202
`
`
`
`122826.1
`MOTHE 72403
`
`-8-
`
`

`
`EXHIBIT A
`
`

`
`Int. Cl.: 3
`
`Prior U.S. Cls.: 4 and 52
`
`United States Patent and Trademark Office -
`
`Reg. No. 1,209,418
`Registered Sep. 21, 1982
`
`TRADEMARK
`
`Principal Register
`
`
`
`Tires-R-Us (California corporation), d.b.a. Mothers
`Polish Company
`13811 Artesis Blvd.
`Cerritos, Calif. 90701
`
`For: CLEANER AND WAX FOR CARS,
`TRUCKS, MOTORCYCLES, BOATS AND AIR-
`PLANES, in CLASS 3 (U.S. C15. 4 and 52).
`First use Jun. 14, 1976; in commerce Jun. 14, 1976.
`Owner of U.S. Reg. No. 1,021,824.
`Applicant hereby disclaims the right to exclusive
`use of the word “California” apart from the mark as
`shown.
`
`Ser. No. 258,575, filed Apr. 18, 1980.
`
`LISA N. KAUFMAN, Primary Examiner
`
`J. G. RICCIUTI, Examiner
`
`-
`
`

`
`Int. c1.:1 3%
`T'Prior U.S. Cls.: 4 and 52
`
`Reg. No. 1,457,903
` United States Patent and Trademark Office Registered Sep.22, 1987
`
`- TRADEMARK
`I PRINCIPAL REGISTER
`
`MOTHERS CALIFORNIA GOLD
`
`MOTHERS POLISHES WAXES CLEANERS
`‘(CALIFORNIA CORPORATION)
`5456 INDUSTRIAL DRIVE
`HUNTINGTON BEACH, CA 92649
`
`FOR: CLEANER AND WAX FOR CARS,
`TRUCKS, MOTORCYCLES, BOATS AND AIR-
`PLANES,
`IN CLASS 3.(_U.S. CLS. 4 AND 52).
`. FIRST USE
`6-0-1984;
`. IN COMMERCE
`6-0-1984.
`
`OWNER OF U.S. REG. NOS. 1,021,824, 1,366,183
`AND OTHERS.
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “CALIFORNIA”, APART
`FROM THE MARK AS SHOWN.
`
`SER. NO. 606,714, FILED 6-27-1986.
`
`MICHAEL HAMILTON, EXAMINING _ATTOR-
`NEY
`
`

`
`Int. Cl.: 3
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 3,057,493
`Registered Feb. 7, 2006
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`MOTHERS POLISHES WAXES CLEANERS (CA-
`LIFORNIA CORPORATION)
`5456 INDUSTRIAL DRIVE
`HUNTINGTON BEACH, CA 92649
`
`FOR: CLEANING AND WAX PREPARATIONS
`FOR AUTOMOBILES, MOTORCYCLES, RECREA-
`TIONAL VEHICLES, TRUCKS, AIRPLANES AND
`BOATS; AND POLISH PREPARATIONS, NAMELY,
`POLISH PREPARATIONS USED TO REMOVE
`SCRATCHES FROM THE PAINT SURFACES OF
`AUTOMOBILES, MOTORCYCLES, RECREATION-
`AL VEHICLES, TRUCKS, AIRPLANES AND BOATS,
`IN CLASS 3 (U.S. CLS. 1, 4, 6, 50, 51 AND 52).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 1,209,418 AND
`1,457,903.
`
`SEC. 2(F) AS TO "CALIFORNIA".
`
`SER. NO. 78-542,062, FILED 1-4-2005.
`
`FIRST USE 6-14-1976; IN COMMERCE 6-14-1976.
`
`REBECCAH GAN, EXAMINING ATTORNEY