Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA160126
`ESTTA Tracking number:
`08/31/2007
`
`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
`Entity
`Address
`
`The Dannon Company, Inc.
`Corporation
`100 Hillside Avenue
`White Plains, New York, 10603, NY 10603
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Perla M. Kuhn
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, NY 10004
`UNITED STATES
`reed@hugheshubbard.com Phone:212-837-6000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77106295
`08/31/2007
`
`Publication date
`Opposition
`Period Ends
`
`08/14/2007
`09/13/2007
`
`NutritionOptions LLC
`130 Weatherly Trail
`Guilford, CT 06437
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Beverages, namely, vitamin and
`nutritionally fortified beverages
`Class 029.
`All goods and services in the class are opposed, namely: Snacks, namely, fruit based, vegetable
`based and protein based snacks; and beverages, namely, dairy based and yogurt based beverages;
`fruit based food beverages; vegetable based food beverages
`Class 030.
`All goods and services in the class are opposed, namely: Lunch and snack kits containing natural
`and organic food products, namely, granola, fresh fruit, fruit and grain bars, processed cereal,
`processed grain, wheat and granola based snacks
`
`Grounds for Opposition
`
`Consists of or comprises the flag or coat of arms
`or other insignia of the United States, or of any
`State or municipality, or of any foreign nation, or
`any simulation thereof
`Priority and likelihood of confusion
`
`Trademark Act section 2(b)
`
`Trademark Act section 2(d)
`
`

`
`Dilution
`
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`2523196
`
`12/25/2001
`
`DANIMALS
`
`NONE
`
`Application Date
`
`07/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Class 032. First use: First Use: 1999/08/15 First Use In Commerce: 1999/08/15
`drinks made with yogurt
`
`2410492
`
`12/05/2000
`
`DANIMALS
`
`NONE
`
`Application Date
`
`10/28/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Class 029. First use: First Use: 1999/08/15 First Use In Commerce: 1999/08/15
`yogurt-based beverages
`
`2410493
`
`12/05/2000
`
`DANIMALS
`
`NONE
`
`Application Date
`
`10/28/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Class 029. First use: First Use: 1999/08/15 First Use In Commerce: 1999/08/15
`yogurt-based beverages
`
`2410494
`
`12/05/2000
`
`DANIMALS
`
`NONE
`
`Application Date
`
`10/28/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Class 029. First use: First Use: 1999/08/15 First Use In Commerce: 1999/08/15
`yogurt-based beverages
`
`U.S. Registration
`No.
`
`2898247
`
`Application Date
`
`04/01/2003
`
`

`
`Registration Date
`
`10/26/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DANIMALS KIDS RULE
`
`NONE
`
`Class 029. First use: First Use: 2004/01/01 First Use In Commerce: 2004/01/01
`Yogurt and yogurt Based beverages
`
`U.S. Registration
`No.
`Registration Date
`
`2924328
`
`02/01/2005
`
`Application Date
`
`06/10/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DANIMALS XL
`
`NONE
`
`Class 029. First use: First Use: 2004/01/31 First Use In Commerce: 2004/01/31
`Yogurt, yogurt based beverages
`
`U.S. Application
`No.
`Registration Date
`
`78863497
`
`NONE
`
`Application Date
`
`04/18/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DANIMALS
`
`NONE
`
`Class 029. First use: First Use: 2006/03/26 First Use In Commerce: 2006/04/01
`Yogurt, yogurt-based beverages; dairy-based snack foods, excluding ice cream,
`ice milk, and frozen yogurt; dairy-based beverages, dairy products excluding ice
`cream, ice milk and frozen yogurt
`Class 032. First use: First Use: 2006/03/26 First Use In Commerce: 2006/04/01
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`drinks
`
`U.S. Application
`No.
`Registration Date
`
`77002034
`
`NONE
`
`Application Date
`
`09/19/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DANIMALS XTREME
`
`NONE
`
`Class 029. First use:
`Yogurt and yogurt-based beverages; dairy-based snack foods excluding ice
`cream, ice milk and frozen yogurt; dairy-based beverages; dairy products
`excluding ice cream, ice milk and frozen yogurt
`Class 032. First use:
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`
`

`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`drinks
`
`78859946
`
`NONE
`
`DANIMALS DEN
`
`NONE
`
`Application Date
`
`04/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Class 029. First use:
`Yogurt, yogurt-based beverages; dairy-based snack foods excluding ice cream,
`ice milk and frozen yogurt; dairy-based beverages, dairy products excluding ice
`cream, ice milk and frozen yogurt
`Class 032. First use:
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`drinks
`
`U.S. Application
`No.
`Registration Date
`
`78859973
`
`NONE
`
`Application Date
`
`04/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DANIMALS WIGGLERS
`
`NONE
`
`Class 029. First use:
`Yogurt, yogurt-based beverages; dairy-based snack foods, excluding ice cream,
`ice milk, and frozen yogurt; dairy-based beverages, dairy products excluding ice
`cream, ice milk and frozen yogurt
`Class 032. First use:
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`drinks
`
`U.S. Application
`No.
`Registration Date
`
`78859979
`
`NONE
`
`Application Date
`
`04/12/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DANIMALS WIGGLERS
`
`NONE
`
`Class 029. First use:
`Yogurt, yogurt-based beverages; dairy-based snack foods, excluding ice cream,
`ice milk, and frozen yogurt; dairy-based beverages, dairy products excluding ice
`cream, ice milk and frozen yogurt
`Class 032. First use:
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`drinks
`
`U.S. Application
`
`78859951
`
`Application Date
`
`04/12/2006
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Foreign Priority
`Date
`DANIMALS DEN THE PLACE FOR GAMES & FUN
`
`NONE
`
`The mark consists of a purple oval with yellow lettering throughout the oval.
`There is a green alligator on the top left of the oval with black sunglasses, white
`teeth, red tongue, purple shirt, and green eyes with a black center and a white
`outline. To the right of the alligator is a purple cat with a blue shirt with white
`stripes. The cat has a black nose, white teeth, black whiskers, white eyes with
`purple pupils and a black center, a purple hat with a yellow D in the center and a
`light blue strip going across the hat. There is a brown monkey to the right of the
`cat with a red tie, light brown abdomen and face, red tongue, white teeth, blue
`goggles with a black strap, and a black armband. The monkey is holding a
`brown stick. There is a white bear to the right of the monkey with a light blue
`jacket, black eyes, white tongue, and black nose.
`Class 029. First use: First Use: 2006/04/30 First Use In Commerce: 2006/04/30
`Yogurt, yogurt-based beverages; dairy-based snack foods excluding ice cream,
`ice milk and frozen yogurt; dairy-based beverages, dairy products excluding ice
`cream, ice milk and frozen yogurt
`Class 032. First use: First Use: 2006/04/30 First Use In Commerce: 2006/04/30
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`drinks
`
`U.S. Application
`No.
`Registration Date
`
`78782624
`
`NONE
`
`Application Date
`
`12/29/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`POWER UP WITH DANIMALS
`
`NONE
`
`Class 029. First use:
`Yogurt, yogurt-based beverages
`Class 032. First use:
`Fruit juices and fruit drinks; fruit-based beverages with yogurt; smoothies; soft
`drinks
`
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`78782624#TMSN.jpeg ( 1 page )( bytes )
`Notice Of Opposition - ORGANIMALS.pdf ( 9 pages )(19527 bytes )
`
`Signature
`Name
`
`/Perla M. Kuhn/
`Perla M. Kuhn
`
`

`
`Date
`
`08/31/2007
`08/31/2°07
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`The Dannon Company, Inc.
`
`: Opposition No.:
`
`—v—
`
`NutritionOptions LLC,
`
`Opposer,
`
`Application Serial No. 77/106,295
`Filing Date: February 13, 2007
`Published: August 14, 2007
`
`Applicant’
`
`I
`
`Trademark: ORGANIMALS
`
`NOTICE OF OPPOSITION
`
`Opposer, The Dannon Company, Inc. (“Dannon”) a corporation organized and existing
`
`under the laws of Delaware, and having its principal place of business at 100 Hillside Avenue,
`
`White Plains, New York, 10603, believes that it will be damaged by the registration of the mark
`
`ORGANIMALS in Classes 5, 29 and 30, currently pending registration in the name of
`
`NutritionOptions LLC (“NutritionOptions” or “Applicant”), published in the Oflicial Gazette on
`
`August 14, 2007.
`
`As grounds for this Opposition, Dannon relies upon the rights developed by it and its
`
`related companies (hereinafter “Dannon” or “Opposer”) and alleges on knowledge as to itself
`
`and otherwise upon information and belief, as follows:
`
`60014619_1.DOC
`
`

`
`Dannon’s Business And DANIMALS Marks
`
`1.
`
`Dannon is engaged, and for many years has been engaged, in the sale in the
`
`United States of dairy products, snack products, foods and beverages, including yogurt and other
`
`products, fruit—based snacks, bakery products, dairy, yogurt and fruit—based drinks and nutritional
`
`supplements.
`
`2.
`
`Dannon has marketed several successful brands of snack foods, dairy products
`
`and beverages, one being snacks foods and beverages marketed under the trademark
`
`DANIMALS.
`
`3.
`
`For many years, and long prior to Applicant’s filing of the application herein
`
`opposed, Dannon has used the mark DANIMALS, and variations thereof, in interstate commerce
`
`throughout the United States in connection with the sale of snack foods, dairy products and
`
`beverages.
`
`4.
`
`Dannon has obtained the following trademark registrations in the United States
`
`Patent and Trademark Office (the “PTO”) for the mark DANIMALS, and variations thereof
`
`(hereinafter, the “DANIMALS Registrations”):
`
`Mark
`
`Registration
`E
`
`Registration
`Date
`
`Goods
`
`DANIMALS
`
`2,523,196
`
`December 25, 2001
`
`DANIMALS & Design
`
`2,410,492
`
`December 5, 2000
`
`DANIMALS & Design
`
`2,410,493
`
`December 5, 2000
`
`DANIMALS & Design
`
`2,410,494
`
`December 5, 2000
`
`DANIMALS KIDS RULE 2,898,247
`
`October 26, 2004
`
`DANIMALS XL
`
`2,924,328
`
`February 1, 2005
`
`“Drinks made with yogurt” in
`class 29
`
`“Yogurt—based beverages” in
`class 29
`
`“Yogurt—based beverages in
`class 29
`
`“Yogurt—based beverages” in
`class 29
`
`“Yogurt and yogurt based
`beverages” in class 29
`“Yogurt, yogurt based
`beverages” in class 29
`
`60014619_1.DOC
`
`

`
`5.
`
`The DANIMALS Registrations are valid and subsisting, unrevoked and
`
`uncancelled, and are prima facie evidence of the validity of Dannon’s exclusive right to use the
`
`marks depicted in those registrations in commerce in connection with the goods described in the
`
`registrations, without condition or limitation, and constitute constructive notice of Dannon’s
`
`ownership of the marks in the DANIMALS Registrations (hereinafter, the “DANIMALS
`
`Marks”) for the goods described in the registrations, as provided for by §§ 7(b), 22, and 33(a) of
`
`the Lanham Act.
`
`6.
`
`Dannon has also filed the following applications with the PTO to register the
`
`mark DANIMALS, and variations thereon (hereinafter, the “DANIMALS Applications”):
`
`Mark
`
`Application
`Ser. No.
`
`Application
`Date
`
`Goods
`
`DANIMALS (Stylized)
`
`78/863,497
`
`April 18, 2006
`
`DANIMALS XTREME 77/002,034
`
`September 19, 2006
`
`“Yogurt and yogurt—based
`beverages; dairy—based snack
`
`foods excluding ice cream, ice
`milk and frozen yo gurt; dairy-
`based beverages; dairy
`products excluding ice cream,
`
`ice milk and frozen yo gurt” in
`Class 29; and “Fruit juices and
`fruit drinks; fruit—based
`
`beverages with yogurt;
`smoothies; soft drinks” in
`Class 32
`
`“Yogurt and yogurt—based
`beverages; dairy—based snack
`
`foods excluding ice cream, ice
`milk and frozen yo gurt; dairy-
`based beverages; dairy
`products excluding ice cream,
`
`ice milk and frozen yo gurt” in
`Class 29; and “Fruit juices and
`fruit drinks; fruit—based
`
`beverages with yogurt;
`smoothies; soft drinks” in
`Class 32
`
`60014619_1.DOC
`
`

`
`Mark
`
`Applical
`Ser. No.
`
`Applical
`Date
`
`Goods
`
`DANIMALS DEN
`
`78/859,946
`
`April 12, 2006
`
`DANIMALS
`
`WIGGLERS
`
`78/859,973
`
`December 5, 2006
`
`DANIMALS
`
`WIGGLERS (Stylized)
`
`78/859,979
`
`April 12, 2006
`
`“Yogurt and yogurt—based
`beverages; dairy—based snack
`foods excluding ice cream, ice
`milk and frozen yogurt; dairy-
`
`based beverages; dairy
`products excluding ice cream,
`ice milk and frozen yogurt” in
`Class 29; and “Fruit juices and
`fruit drinks; fruit—based
`
`beverages with yogurt;
`smoothies; soft drinks” in
`Class 32
`
`“Yogurt and yogurt—based
`beverages; dairy—based snack
`foods excluding ice cream, ice
`milk and frozen yo gurt; dairy-
`
`based beverages; dairy
`products excluding ice cream,
`ice milk and frozen yo gurt” in
`Class 29; and “Fruit juices and
`fruit drinks; fruit—based
`
`beverages with yogurt;
`smoothies; soft drinks” in
`Class 32
`
`“Yogurt, yogurt—based
`beverages; dairy—based snack
`foods, excluding ice cream,
`ice milk, and frozen yogurt;
`
`dairy—based beverages, dairy
`products excluding ice cream,
`ice milk and frozen yo gurt” in
`Class 29 and “Fruit juices and
`fruit drinks; fruit—based
`
`beverages with yogurt;
`smoothies; soft drinks” in
`Class 32
`
`60014619_1.DOC
`
`

`
`Mark
`
`Application
`Ser. No.
`
`Application
`Date
`
`Goods
`
`DANIMALS DEN THE 78/859,951
`PLACE FOR GAMES
`& FUN
`
`April 12, 2006
`
`POWER UP WITH
`DANIMALS
`
`78/782,624
`
`December 29, 2005
`
`“Yogurt and yogurt—based
`beverages; dairy—based snack
`foods excluding ice cream, ice
`milk and frozen yogurt; dairy-
`
`based beverages; dairy
`products excluding ice cream,
`ice milk and frozen yogurt” in
`Class 29; and “Fruit juices and
`fruit drinks; fruit—based
`
`beverages with yogurt;
`smoothies; soft drinks” in
`Class 32
`
`“Yogurt, yogurt—based
`beverages” in Class 29 and
`“Fruit juices and fruit drinks;
`fruit—based beverages with
`
`yogurt; smoothies; soft
`drinks” in Class 32.
`
`Dannon has expended substantial amounts of time and effort in advertising and promoting its
`
`goods under the DANIMALS Marks. As a result of such advertising and promotional activities,
`
`the DANIMALS Marks have become famous and the relevant public has come to associate and
`
`identify the DANIMALS Marks with Dannon, and Dannon derives substantial goodwill from
`
`such identification by consumers.
`
`Applicant’s ORGANIMALS Mark
`
`7.
`
`On February 13, 2007, NutritionOptions filed an intent—to—use application to
`
`register the mark ORGANIMALS, Serial No. 77/106,295 on the Principal Register of the PTO
`
`for “beverages, namely, vitamin and nutritionally fortified beverages” in Class 5, “snacks,
`
`namely, fruit based, vegetable based and protein based snacks; and beverages, namely, dairy
`
`based and yogurt based beverages; fruit based food beverages; vegetable based food beverages”
`
`in Class 29 and “lunch and snack kits containing natural and organic food products, namely,
`
`60014619_1.DOC
`
`

`
`granola, fresh fruit, fruit and grain bars, processed cereal, processed grain, wheat and granola
`
`based snacks” Class 30.
`
`Count I: Likelihood of Confusion
`
`8.
`
`Dannon hereby incorporates by reference the allegations of Paragraphs 1 through
`
`8 hereof as if fully set forth herein.
`
`9.
`
`Dannon has the exclusive right to own and use the DANIMALS Marks in the
`
`United States, and its rights in those marks are prior and superior to any rights which Applicant
`
`may claim in, and to those marks, and the mark ORGANIMALS, in any form or style.
`
`10.
`
`The mark ORGANIMALS depicted in the application herein opposed is
`
`confusing similar in sight, sound, connotation and commercial impression to Opposer’s
`
`DANIMALS Marks and there is a direct overlap between the goods covered by the respective
`
`marks, such that the goods are related.
`
`ll.
`
`Accordingly, Applicant’s mark is likely to cause confusion, mistake or to deceive
`
`under § 2(d) of the Lanham Act.
`
`12.
`
`If Applicant is permitted to use and register the ORGANIMALS mark, there
`
`likely will be confusion in the relevant markets resulting in damage and injury to Opposer by
`
`reason of the similarity between Opposer’s DANIMALS Marks and Applicant’s
`
`ORGANIMALS mark. Persons familiar with Opposer’s DANIMALS Marks would be likely to
`
`avail themselves of Applicant’s goods, believing them to be offered by Opposer. Likewise,
`
`persons exposed to Applicant’s ORGANIMALS mark who subsequently become acquainted
`
`with Opposer’s DANIMALS Marks are likely to conclude that the goods offered by Opposer, are
`
`in some manner related to the goods that Applicant offers under its ORGANIMALS mark. Any
`
`such confusion inevitably would result in damage and injury to Opposer.
`
`60014619_1.DOC
`
`

`
`13.
`
`Opposer will be damaged by registration of the mark shown in the application
`
`herein opposed because such registration will support and assist Applicant in the confusing and
`
`misleading use of Applicant’s mark, and will give color of rights to Applicant in violation of
`
`Opposer’s prior and superior rights in the DANIMALS Marks.
`
`Count II: Likelihood of Dilution
`
`l4.
`
`Dannon hereby incorporates by reference the allegations of Paragraphs 1 through
`
`14 hereof as if fully set forth herein.
`
`l5.
`
`Pursuant to Section 43(c) of the Lanham Act, Opposer’s DANIMALS Marks are
`
`famous. Opposer’s DANIMALS Marks became famous prior to the date that Applicant can first
`
`lay claim to any rights in the ORGANIMALS mark.
`
`16.
`
`The registration and use of Applicant’ s ORGANIMALS mark will likely dilute
`
`the distinctive quality of Opposer’s famous DANIMALS marks.
`
`17.
`
`Opposer will be damaged by registration of the mark shown in the application
`
`opposed herein because such registration will support and assist Applicant in the diluting use of
`
`Applicant’s ORGANIMALS marks, and will give color or rights to Applicant in violation of
`
`Opposer’s prior and superior statutory and common law rights in the DANIMALS Marks.
`
`WHEREFORE, Dannon prays that this Opposition be sustained and that the application
`
`for registration of the mark ORGANIMALS opposed herein be in all respects denied.
`
`60014619_1.DOC
`
`

`
`Dated: New York, New York
`August 30, 2007
`
`Respectfully submitted,
`
`HUGHES HUBBARD & REED LLP
`
`By: /Perla M. Kuhn/
`Perla M. Kuhn
`
`Natasha N. Reed
`
`Attorneys for Opposer
`
`Hughes Hubbard & Reed LLP
`One Battery Park Plaza
`New York, New York 10004
`
`(212) 837-6000
`
`60014619_1.DOC
`
`

`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that an original copy of the foregoing Notice Of Opposition was
`
`transmitted online on August 31, 2007 through the website of the Trademark Trial and Appeal
`
`Board of the United States Patent and Trademark Office.
`
`Dated: New York, New York
`
`August 31, 2007
`
`By
`
`/Natasha N. Reed/
`Natasha N. Reed
`
`60014619_1.DOC