Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA205359
`ESTTA Tracking number:
`04/16/2008
`
`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
`
`Hans W Briese
`Individual
`Geilbelstr 46A
`Hamburg, 22303
`GERMANY
`
`Citizenship
`
`GERMANY
`
`Attorney
`information
`
`A. Eric Bjorgum
`Sheldon Mak Rose & Anderson
`100 East Corson Street 3d Floor
`Pasadena, CA 91103
`UNITED STATES
`ebjorgum@usip.com, cassandra@usip.com Phone:626.796.4000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77108339
`04/16/2008
`
`Publication date
`Opposition
`Period Ends
`
`03/25/2008
`04/24/2008
`
`BRIESE USA, INC.
`6609 SANTA MONICA BOULEVARD
`LOS ANGELES, CA 90038
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 1999/01/31 First Use In Commerce: 1999/01/31
`All goods and services in the class are opposed, namely: BALLASTS FOR GAS DISCHARGE
`LAMPS; BALLASTS FOR HALOGEN LIGHTS; ELECTRIC IGNITERS USED IN CONNECTION
`WITH BALLASTS TO START DISCHARGE LAMPS; FLASH LAMPS; FLUORESCENT LAMP
`BALLAST FOR ELECTRIC LIGHTS; LIGHTING BALLASTS; PHOTOGRAPHIC FLASH UNITS
`Class 018. First Use: 1999/01/31 First Use In Commerce: 1999/01/31
`All goods and services in the class are opposed, namely: BAGS FOR UMBRELLAS; UMBRELLA
`COVERS; UMBRELLA BASES; UMBRELLAS
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Consists of or comprises a name, portrait, or
`signature of a living individual without written
`consent, or the name, portrait, or signature of a
`deceased president without the written consent
`of the surviving spouse
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(c)
`
`Trademark Act section 2(d)
`
`

`
`The mark is primarily merely a surname
`
`Trademark Act section 2(e)(4)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`77135439
`
`Application Date
`
`03/20/2007
`
`NONE
`
`BRIESE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Class 009. First use:
`Lamps and reflectors for photographic and cinematographic purposes, and
`accessories and replacement parts therefore
`Class 011. First use:
`Electric light fixtures, namely, fixtures for use with photographic and film
`recording apparatus
`
`Related
`Proceedings
`
`Opposer and Applicant are engaged in trademark infringement litigation in the
`United States District Court for the Central District of California in a case known
`as Briese USA Inc v Briese Lightteknik Vertriebs GmbH Hans Werner Briese et
`al Case No CV 0702735 GHK and two consolidated cases against Briese
`GmbHs customers
`
`Attachments
`
`77135439#TMSN.jpeg ( 1 page )( bytes )
`Opp2.pdf ( 5 pages )(24888 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/A. Eric Bjorgum/
`A. Eric Bjorgum
`04/16/2008
`
`

`
`NOTICE OF OPPOSITION
`
`Application Serial No. 77/108339 for the word mark “Briese” was filed on February 15,
`
`2007 and published for opposition on March 25, 2008. Opposer, Hans—Werner Friedrich Briese,
`
`an individual (“Opposer”), believes that he will be damaged by the registration of the subject
`
`mark on the Principal Register and it hereby opposes same.
`
`As grounds for its opposition, Opposer hereby alleges as follows:
`
`1.
`
`Opposer is an individual, Hans—Werner Friedrich Briese, with a place of business
`
`at Geibelstr 46A, 22303 Hamburg, Germany.
`
`2.
`
`BRIESE is a registered trademark of Opposer. It was registered on June 6, 2006,
`
`in Germany, Registration Number 3749215, for IC 009, 011, and 041. Pursuant to Section 44(e)
`
`of the Lanham Act, 15 U.S.C. §1126(e), Opposer has filed an application for a U.S. Registration
`
`of this mark, Serial No. 77/135,439, filed on March 20, 2007.
`
`3.
`
`Mr. Briese is an engineer and former professional photographer who has, for
`
`many years, been recognized as a leader and pioneer in the design, development, manufacture
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`and sale of illumination equipment for photographic purposes, including lamps, reflectors and
`
`related accessories typically used by professional photographers and studios. Mr. Briese has
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`developed and continues to enhance a valuable international reputation in this field, including a
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`reputation in the United States. He has been awarded patents in countries throughout the world,
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`including the United States, for his inventions in this field. Mr. Briese has carefully guarded his
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`reputation in his field of endeavor, and attaches great value to that reputation. He has never
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`permitted Applicant or anyone else to have control of that reputation in the United States or
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`elsewhere.
`
`4.
`
`Mr. Briese personally began offering for sale and selling illumination equipment
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`in the Untied States in 1980, long before Applicant’s alleged first use of the “Briese” Mark, and
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`did so until 1990, when he formed Briese Lichttechnik Vertriebs GmbH (‘“‘Briese GmbH””), a
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`J :\Briese Gmbh\18681.76 Opposition\OPP2.rtf
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`

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`company to which he has lent his name. The business purpose of Briese GmbH was and is to
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`continue the sale of illumination equipment of the type mentioned above on a worldwide basis,
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`including in the United States.
`
`5.
`
`Since 1990, long before Applicant’s alleged first use of the “Briese” Mark in
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`commerce, Briese GmbH has continuously used the trademark and trade name BRIESE with the
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`consent of Mr. Briese.
`
`6.
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`Through the efforts of Mr. Briese and those of Briese GmbH, the trademark and
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`trade name BRIESE has become well known and respected internationally and in the United
`
`States in particular. The trademark and trade name BRIESE has thus become widely known,
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`particularly among persons in the photography and entertainment businesses, as a symbol of a
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`source of illumination equipment and embodies the reputation of Mr. Briese and Briese GmbH.
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`This reputation and the strength of the mark BRIESE have been enhanced by appearances and
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`participation by Briese GmbH at trade shows attended by United States customers and potential
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`customers, by visits to customers in the United States and elsewhere, and by considerable sales
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`in the United States of high quality illumination equipment of superior design under the mark
`
`and name BRIESE.
`
`7.
`
`To promote and facilitate the sale of genuine Briese illumination equipment,
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`Briese GmbH appointed distributors in the United States and in other countries, with whom
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`written distribution agreements were signed. The first distributor in the United States was
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`appointed in March of 1980 and others have been appointed since. Such distributorship
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`arrangements continue to this day. No distributor has been granted exclusive nationwide rights
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`in the United States and Briese GmbH has reserved the right to, and did in fact, sell directly to
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`some United States customers.
`
`8.
`
`In about 1999, Briese GmbH began to do business with Applicant, who until
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`recently purchased genuine Briese equipment directly from Briese GmbH and rented that
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`equipment to photographers and studios, mostly, on information and belief, motion picture
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`J :\Briese Gmbh\18681.76 Opposition\OPP2.rtf
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`

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`photographers and studios in the Los Angeles, California area, under the trade name Victory
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`Productions. To the knowledge of Mr. Briese and Briese GmbH, Applicant only rented and did
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`not sell this equipment, or any sales were de minimis.
`
`9.
`
`Despite Opposer’s long senior use of the Mark, Opposer is informed and it
`
`believes, that on February 15, 2007, Applicant’s predecessor in interest, Sergio Ortiz, an
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`individual and citizen of Argentina, filed an application with the U.S. Patent and Trademark
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`Office stating that it intended to use the mark “BRIESE” in connection with the IC 009 for
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`BALLASTS FOR GAS DISCHARGE LAMPS; BALLASTS FOR HALOGEN LIGHTS;
`
`ELECTRIC IGNITERS USED IN CONNECTION WITH BALLASTS TO START
`
`DISCHARGE LAMPS; FLASH LAMPS; FLUORESCENT LAMP BALLAST FOR
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`ELECTRIC LIGHTS; LIGHTING BALLASTS; and PHOTOGRAPHIC FLASH UNITS. On
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`December 5, 2007, the application 77/108,339 was assigned to Applicant and was prosecuted to
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`publication on a “use” basis.
`
`10.
`
`Opposer is informed and it believes that its use, in 1980, of the “Briese” Mark in
`
`connection with IC 009 for LAMPS AND REFLECTORS FOR PHOTOGRAPHIC AND
`
`CINEMATOGRAPHIC PURPOSES, AND ACCESSORIES AND REPLACEMENT PARTS
`
`THEREOF, was prior to the filing date of Applicant’s application and prior to Applicant’s
`
`constructive date of first use of its mark. Opposer is informed and believes that Applicant is
`
`already selling IC 009 goods under the “BRIESE” Mark.
`
`ll.
`
`Applicant’s use of its mark on or in connection with goods in the IC 009 for
`
`LAMPS AND REFLECTORS FOR PHOTOGRAPHIC AND CINEMATOGRAPHIC
`
`PURPOSES, AND ACCESSORIES AND REPLACEMENT PARTS THEREOF is likely to
`
`cause confusion, mistake or deception in violation of Section 2(d) of the Lanham Act,
`
`15 U.S.C. § l052(d), in that persons familiar with Opposer’s Mark would be likely to buy
`
`Applicant’s goods and services believing they are Opposer’s goods and services or to believe
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`that Applicant’s goods and services are made, sold or sponsored by, or otherwise associated
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`J :\Briese Gmbh\18681.76 Opposition\OPP2.rtf
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`

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`with, Opposer. Furthermore, any defect, objection or fault found with goods sold or services
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`rendered by Applicant would likely reflect upon Opposer, and irreparably and seriously injure
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`Opposer’s reputation and goodwill.
`
`12.
`
`Registration of Applicant’s mark for the goods and services shown in the above-
`
`described application would also place Applicant in a position to vex and harass Opposer and to
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`cause annoyance to Opposer and its customers as the registration would give Applicant the prima
`
`facie right to use the Mark, thereby impairing and injuriously affecting Opposer’ s rights.
`
`Applicant has sent vexatious letters to Opposer’s customers, resulting in the litigation identified
`
`in the following paragraph.
`
`13.
`
`Furthermore, Opposer and Applicant are engaged in trademark infringement
`
`litigation in the United States District Court for the Central District of California in a case known
`
`as Briese USA, Inc. v. Briese Lightteknik Vertriebs GmbH, Hans Werner Briese, et al., Case No.
`
`CV 07-02735 GHK (CWx) and two consolidated cases against Briese GmbH’s customers.
`
`14.
`
`Next, a registration for the Applicant is not proper because Applicant is not the
`
`rightful owner of the Mark.
`
`15.
`
`Next, the Mark should not be registered because it consists of or comprises the
`
`name of a particular living individual (Opposer) without his consent.
`
`16.
`
`Next, a registration for Applicant would violate l5 U.S.C. § ll52(a) because it
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`falsely suggests a connection with Opposer.
`
`17.
`
`A registration for Applicant would violate l5 U.S.C. § ll52(e) because it is
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`primarily merely a surname.
`
`18.
`
`Finally, the registration will be deceptive as suggesting a connection with
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`Opposer and his company. Furthermore, Applicant seeks to register the mark for umbrellas
`
`which are actually used as part of the lighting system in the other class sought by Applicant.
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`WHEREFORE, Opposer prays that this Opposition be sustained and that Application
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`Serial No. 77/108,339 filed on February 15, 2007, be denied and refused.
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`J :\Briese Gmbh\18681.76 Opposition\OPP2.rtf
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`

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`Opposer hereby appoints Sheldon, Mak, Rose & Anderson, PC, and specifically Robert
`
`A. Schroeder, a member of the bar of the State of California, to act as attorneys for Opposer
`
`herein, with full power to prosecute said opposition, to transact all relevant business with the
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`Patent and Trademark Office and in the United States Courts, and to receive all official
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`communications in with this Opposition.
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`Opposer hereby gives notice under Rule 2. l22(e) of the Rules of Practice that at the
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`hearing and in any appeal on this opposition proceeding, it will rely on its foreign registration
`
`and pending application as evidence in support of this Notice of Opposition. Specifically,
`
`Opposer will rely on German Registration Number 3749215, for IC 009, 01 l, and 041. Opposer
`
`will also rely on the file in an application for a U.S. Registration of this mark, Serial No.
`
`77/135,439, filed on March 20, 2007.
`
`This Notice of Opposition is herewith submitted in duplicate copies and the filing fee is
`
`enclosed herewith.
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`J :\Briese Gmbh\18681.76 Opposition\OPP2.rtf