Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA252415
`ESTTA Tracking number:
`12/02/2008
`
`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
`
`Duramax Marine, LLC
`limited liability company
`17990 Great Lakes Parkway
`Hiram, OH 44234
`UNITED STATES
`
`Citizenship
`
`Ohio
`
`Attorney
`information
`
`D. Peter Hochberg
`D. Peter Hochberg Co., L.P.A.
`1940 East 6th St. - 6th Floor
`Cleveland, OH 44114
`UNITED STATES
`dphdocket@dpeterhochberg.com, smellino@dpeterhochberg.com
`Phone:216-771-3800
`Applicant Information
`
`77500712
`12/02/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`Ames True Temper Properties, Inc.
`300 Delaware Avenue, Suite 1704
`Wilmington, DE 19801
`UNITED STATES
`Goods/Services Affected by Opposition
`
`11/04/2008
`12/04/2008
`
`Class 017.
`All goods and services in the class are opposed, namely: Watering hoses having a working pressure
`less than about 150 PSI
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`870440
`
`06/03/1969
`
`Application Date
`
`04/19/1968
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DURAMAX
`
`NONE
`
`Class U023 (International Class 007). First use: First Use: 1968/01/16 First Use
`In Commerce: 1968/01/16
`MARINE BEARINGS
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2501329
`
`10/30/2001
`
`DURAMAX
`
`Application Date
`
`08/17/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 012. First use: First Use: 1969/00/00 First Use In Commerce: 1969/00/00
`Components for ships and boats, namely rudder bushings, stuffing boxes, stern
`castings, keel coolers, dock bumpers, ship fenders, batter boards, pusher
`bumpers and deck assemblies, torque journal hub propellers, propeller shaft
`seal systems; brake pedals, gas pedals; cruise control vacuum assemblies,
`namely, hose grommets; fuel shields; gearshift boots and automotive parts
`namely, boots; glove box door bumpers, insulators composed of rubber spring
`seats and vibration isolators for use in sound and vibration isolation; molded air
`ducts for use in engine induction and exhaust applications; structural parts of
`boats, namely, windows and doors, muffler support brackets; closure seals for
`windows and doors
`Class 017. First use: First Use: 1995/08/18 First Use In Commerce: 1995/08/18
`[ Rubber tubing for use in the industrial arts, namely closure seals and gaskets,
`rubber gaskets for marine hatch covers; inflatable rubber air seal rings for
`stuffing boxes, rubber window channels and rubber weather stripping for use on
`ships and boats; rubber fuel vapor hoses; rubber climate control hoses for use in
`heat exchangers; rubber hoses for appliances for use in washing machines,
`refrigerators, heaters; non-metal hoses for use in the manufacture of boats and
`automobiles; non-metallic grommetts for use in the manufacture of automobiles;
`non-metallic tubing; mandrel formed tubing; window weather stripping window
`washer hoses not made of metal, non-metallic hoses, non-metallic gaskets, non-
`metal seals for use in hydraulic machinery; namely, plugs, sealing plugs made of
`rubber ]
`
`U.S. Registration
`No.
`Registration Date
`
`2818603
`
`03/02/2004
`
`Application Date
`
`08/17/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`DURAMAX
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 019. First use: First Use: 1995/08/18 First Use In Commerce: 1995/08/18
`Non-metal flooring systems comprised of wall bases and moldings made of
`wood, carpet edge guards made of wood, tub moldings made of wood, non-
`metal thresholds, non-metal stair nosings, stair treads, vent-coves, non-metal
`matting and flooring; baseboard moldings of rubber and plastic; non-metal
`flooring, namely, fire resistant floor tiles, fire-resistant stair treads, fire-resistant
`risers, fire-resistant stringers, fire-resistant wall bases, fire-resistant rubber floor
`sheeting, photoluminescent stair nosings; non-metal building materials, namely,
`photoluminescent floor tiles, photoluminescent inserts for round raised disk
`rubber tiles, and photoluminescent plastic corner guards; non-metallic parts of
`flooring systems, namely, wall bases, outside corners, and parts of wall
`systems, namely, wall bases, for passing air between the part and the wall
`Class 027. First use: First Use: 1995/08/18 First Use In Commerce: 1995/08/18
`Disposable absorbent and resilient floor pads for use in floor cushion mounting
`systems for attachment to solid or sleeper-type subfloor installations
`
`U.S. Application
`No.
`Registration Date
`
`77180653
`
`NONE
`
`Word Mark
`Design Mark
`
`DURAMAX
`
`Application Date
`
`05/14/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 007. First use: First Use: 2004/07/31 First Use In Commerce: 2004/07/31
`(Based on Use in Commerce) Machine parts, namely, bearings for use in
`rotating shafting pumps, down-hole drilling tools, industrial pumps, stators,
`hydroturbines, wicket gates and product lubricated bearings; industrial pumps,
`namely, pumps with rotating shafts that turn impellers to pump fluids; down-hole
`
`

`
`drilling tools, namely, stators, turbines and tools for drilling holes in the earth for
`the petroleum and mining industry; machine parts, namely, bearing housings
`and stave bearings; bearings for use in industrial applications, namely, hydraulic
`turbines, vertical turbine pumps, domestic well pumps, slurry pumps, low head
`irrigation pumps, drainage pumps, centrifugal pumps, progressive cavity pumps,
`aerators, mixers and clarifiers
`Class 012. First use:
`(Based on Intent to Use) tow knees and wear pads in the nature of rubber
`bonded to a steel plate for use on river push boats, tow boats and for pushing
`barges to protect against rubbing rather than impact; pusher bumpers and rub
`rails for marine vessels
`Class 017. First use:
`(Based on Intent to Use) Shaft seals, namely, packing material for forming
`compression packing seals; shaft seals, namely, compression packings in the
`nature of square braided packing material for sealing stuffing boxes and packing
`glands in marine and industrial applications; shaft seals, namely, compression
`packings in the nature of square braided packing material for sealing stuffing
`boxes and packing glands for use in pumps and industrial pump applications;
`bumpers or pads for truck loading docks; bumpers or pads for plant and
`warehouse loading docks to protect against tow motors and fork lift trucks
`Class 019. First use:
`(Based on intent to use) bumpers for dock posts
`
`U.S. Registration
`No.
`Registration Date
`
`2679395
`
`01/28/2003
`
`Word Mark
`Design Mark
`
`DURAMAX MARINE
`
`Application Date
`
`10/26/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1989/00/00 First Use In Commerce: 1989/00/00
`printed publications, namely brochures, booklets, leaflets and catalogues in the
`field of marine products
`
`U.S. Registration
`No.
`Registration Date
`
`2714841
`
`05/13/2003
`
`Application Date
`
`10/26/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`DURAMAX INTERNATIONAL
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1994/01/00 First Use In Commerce: 1994/01/00
`Distributorships in the field of marine equipment
`
`U.S. Registration
`No.
`Registration Date
`
`3417244
`
`04/29/2008
`
`Word Mark
`Design Mark
`
`DURAMAX ULTRA-X
`
`Application Date
`
`06/08/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 017. First use: First Use: 2007/10/01 First Use In Commerce: 2007/10/01
`packing material for forming seals; compression packings for sealing stuffing
`boxes, packing boxes and packing glands in marine and industrial applications;
`compression packings for sealing stuffing boxes, packing boxes and packing
`glands for use in pumps and industrial pump applications
`
`U.S. Application
`No.
`Registration Date
`
`77180631
`
`NONE
`
`Word Mark
`
`DURAMAX INDUSTRIAL
`
`Application Date
`
`05/14/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 007. First use: First Use: 2004/07/31 First Use In Commerce: 2004/07/31
`(Based on Use in Commerce) Machine parts, namely, bearings for use in
`rotating shafting pumps, down-hole drilling tools, industrial pumps, stators,
`hydroturbines, wicket gates and product lubricated bearings; industrial pumps,
`namely, pumps with rotating shafts that turn impellers to pump fluids; down-hole
`drilling tools, namely, stators, turbines and tools for drilling holes in the earth for
`the petroleum and mining industry; machine parts, namely, bearing housings
`and stave bearings; bearings for use in industrial applications, namely, hydraulic
`turbines, vertical turbine pumps, domestic well pumps, slurry pumps, low head
`irrigation pumps, drainage pumps, centrifugal pumps, progressive cavity pumps,
`aerators, mixers and clarifiers
`Class 012. First use:
`(Based on Intent to Use) tow knees and wear pads in the nature of pads of
`rubber bonded to a steel plate for use on river push boats, tow boats and for
`pushing barges to protect against rubbing rather than impact; pusher bumpers
`and rub rails for marine vessels
`Class 017. First use:
`(Based on Intent to Use) Shaft seals, namely, packing material for forming
`compression packing seals; shaft seals, namely, compression packings in the
`nature of square braided packing material for sealing stuffing boxes and packing
`glands in marine and industrial applications; shaft seals, namely, compression
`packings in the nature of square braided packing material for sealing stuffing
`boxes and packing glands for use in pumps and industrial pump applications;
`bumpers or pads for truck loading docks; bumpers or pads for plant and
`warehouse loading docks to protect against tow motors and fork lift trucks
`Class 019. First use:
`(Based on intent to use) bumpers for dock posts
`
`Attachments
`
`75778192#TMSN.gif ( 1 page )( bytes )
`75778194#TMSN.gif ( 1 page )( bytes )
`77180653#TMSN.jpeg ( 1 page )( bytes )
`75832588#TMSN.gif ( 1 page )( bytes )
`75832589#TMSN.gif ( 1 page )( bytes )
`77201246#TMSN.jpeg ( 1 page )( bytes )
`77180631#TMSN.jpeg ( 1 page )( bytes )
`pleadings.pdf ( 11 pages )(465780 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
`
`/D. Peter Hochberg/
`D. Peter Hochberg
`12/02/2008
`
`

`
`Dear Sir:
`
`NOTICE OF OPPOSITION
`
`Opposer, Duramax Marine, LLC, a limited liability company organized and existing
`
`under the laws of the state of Ohio, located and doing business at 17990 Great Lakes Parkway,
`
`Hiram, Ohio 44234 (hereinafter referred to as "Duramax Marine" or "Opposer") believes that it
`
`will be damaged by the registration of the mark "DURAMAX” shown in the above—identified
`
`application in International Class 17, and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer, Duramax Marine (and its predecessor in interest), is now and has for
`
`many years been involved in the business of manufacturing and marketing bearings for industrial
`
`applications, such as rotating shaftings in pumps and down-hole drilling tools, industrial pumps,
`
`industrial applications, stators, hydroturbines, wicket gates and industrial rotating shaft
`
`apparatus, product lubricated bearings, and housings for bearings, and non-industrial
`
`applications, such as marine applications, including marine bearings, stave bearings, bushings,
`
`stern tube fillers, housings for bearings, cooling systems, such as keel coolers, sealing systems,
`
`including stuffing boxes, packing glands, shaft seal systems, stern castings, and fendering
`
`systems, including dock bumpers, tow knees, batterboard systems, wear pads and weatherstrip
`
`door gaskets.
`
`2.
`
`Opposer has become widely known nationally and internationally as a marketer of
`
`bearings for industrial applications, such as rotating shaftings in pumps and down-hole drilling
`
`tools, industrial pumps, industrial applications, stators, hydroturbines, wicket gates and industrial
`
`rotating shaft apparatus, product lubricated bearings, and housings for bearings, and non-
`
`

`
`industrial applications, such as marine applications, including marine bearings, stave bearings,
`
`bushings, stern tube fillers, housings for bearings, cooling systems, such as keel coolers, sealing
`
`systems, including stuffing boxes, packing glands, shaft seal systems, stern castings, and
`
`fendering systems, including dock bumpers, tow knees, batterboard systems, wear pads and
`
`weatherstrip door gaskets, those goods having good quality, and Opposer has acquired a
`
`favorable reputation throughout large segments of the aforementioned industrial and non-
`
`industrial fields for its above-described goods sold and provided under, and in association with
`
`the marks "DURAMAX," "DURAMAX INTERNATIONAL," "DURAMAX MARINE,"
`
`"DURAMAX ULTRA-X"and "DURAMAX INDUSTRIAL" (the “DURAMAX” marks).
`
`3.
`
`Opposer is the owner of U.S. trademark Registration No. 870,440 registered June
`
`3, 1969 for the mark "DURAMAX" in International Class 7 as used in association with the
`
`goods of “marine bearings.” The registration was based on an application filed in the U.S. Patent
`
`and Trademark Office on April 19, 1968. The mark has been in use for the goods in
`
`International Class 7 since at least January 16, 1968 and has been in use in commerce for the
`
`goods in International Class 7 since at least January 16, 1968, both of which are dates prior to the
`
`filing date of Applicant’s application. Said trademark and registration therefor are valid and
`
`subsisting, and Opposer owns the DURAMAX mark, the registration, and the goodwill of the
`
`business associated with such mark. Registration No. 870,440 for the mark “DURAMAX" has a
`
`registration date which precedes the filing date of the Applicant’s application.
`
`4.
`
`Opposer is the owner of U.S. trademark Registration No. 2,501,329 registered
`
`October 30, 2001 for the mark "DURAMAX" in International Class 12 as used in association
`
`with the goods of “components for ships and boats, namely rudder bushings, stuffing boxes,
`
`

`
`stern castings, keel coolers, dock bumpers, ship fenders, batter boards, pusher bumpers and deck
`
`assemblies, torque journal hub propellers, propeller shaft seal systems; brake pedals, gas pedals;
`
`cruise control vacuum assemblies, namely, hose grommets; fuel shields; gearshift boots and
`
`automotive parts namely, boots; glove box door bumpers, insulators composed of rubber spring
`
`seats and vibration isolators for use in sound and vibration isolation; molded air ducts for use in
`
`engine induction and exhaust applications; structural parts of boats, namely, windows and doors,
`
`muffler support brackets; closure seals for windows and doors.” The registration was based on
`
`an application filed in the U.S. Patent and Trademark Office on August 17, 1999. The mark has
`
`been in use for the goods in International Class 12 since at least 1969 and has been in use in
`
`commerce for the goods in International Class 12 since at least 1969, both of which are dates
`
`prior to the filing date of Applicant’s application. Said trademark and registration therefor are
`
`valid and subsisting, and Opposer owns the DURAMAX mark, the registration, and the goodwill
`
`of the business associated with such mark. Registration No. 2,501,329 for the mark
`
`"DURAMAX" has a registration date which precedes the filing date of the Applicant’s
`
`application.
`
`5.
`
`Opposer is the owner of U.S. trademark Registration No. 2,818,603 registered
`
`March 2, 2004 for the mark "DURAMAX" in International Classes 19 and 27 as used in
`
`association with the goods of “Non-metal flooring systems comprised of wall bases and
`
`moldings made of wood, carpet edge guards made of wood, tub moldings made of wood, non-
`
`metal thresholds, non-metal stair nosings, stair treads, vent-coves, non-metal matting and
`
`flooring; baseboard moldings of rubber and plastic; non-metal flooring, namely, fire resistant
`
`floor tiles, fire-resistant stair treads, fire-resistant risers, fire-resistant stringers, fire-resistant wall
`
`

`
`bases, fire-resistant rubber floor sheeting, photoluminescent stair nosings; non-metal building
`
`materials, namely, photoluminescent floor tiles, photoluminescent inserts for round raised disk
`
`rubber tiles, and photoluminescent plastic corner guards; non-metallic parts of flooring systems,
`
`namely, wall bases, outside comers, and parts of wall systems, namely, wall bases, for passing
`
`air between the part and the wall,” in International Class 19, and “Disposable absorbent and
`
`resilient floor pads for use in floor cushion mounting systems for attachment to solid or sleeper-
`
`type subfloor installations,” in International Class 27. The registration was based on an
`
`application filed in the U.S. Patent and Trademark Office on August 17, 1999. The mark has
`
`been in use for the goods in International Classes 19 and 27 since at least August 18, 1995 and
`
`has been in use in commerce for the goods in International Classes 19 and 27 since at least
`
`August 18, 1995, both of which are dates prior to the filing date of Applicant’s application. Said
`
`trademark and registration therefor are valid and subsisting, and Opposer owns the DURAMAX
`
`mark, the registration, and the goodwill of the business associated with such mark. Registration
`
`No. 2,818,603 for the mark "DURAMAX" has a registration date which precedes the filing date
`
`of the Applicant’s application.
`
`6.
`
`Opposer is the applicant of U.S. trademark application Serial No. 77/180,653 filed
`
`May 14, 2007 for the mark "DURAMAX" in International Classes 7, 12, 17 and 19 for the goods
`
`of "machine parts, namely, bearings for use in rotating shafting pumps, down-hole drilling tools,
`
`industrial pumps, stators, hydroturbines, wicket gates and product lubricated bearings; industrial
`
`pumps, namely, pumps with rotating shafts that turn impellers to pump fluids; down-hole drilling
`
`tools, namely, stators, turbines and tools for drilling holes in the earth for the petroleum and
`
`mining industry; machine parts, namely, bearing housings and stave bearings; bearings for use in
`
`

`
`industrial applications, namely, hydraulic turbines, vertical turbine pumps, domestic well pumps,
`
`slurry pumps, low head irrigation pumps, drainage pumps, centrifugal pumps, progressive cavity
`
`pumps, aerators, mixers and clarifiers," in International Class 7, "tow knees and wear pads in the
`
`nature of pads of rubber bonded to a steel plate for use on river push boats, tow boats and for
`
`pushing barges to protect against rubbing rather than impact; pusher bumpers and rub rails for
`
`marine vessels," in International Class 12, "shaft seals, namely, packing material for forming
`
`compression packing seals; shaft seals, namely, compression packings in the nature of square
`
`braided packing material for sealing stuffing boxes and packing glands in marine and industrial
`
`applications; shaft seals, namely, compression packings in the nature of square braided packing
`
`material for sealing stuffing boxes and packing glands for use in pumps and industrial pump
`
`applications; bumpers or pads for truck loading docks; bumpers or pads for plant and warehouse
`
`loading docks to protect against tow motors and fork lift trucks," in International Class 17 and
`
`"bumpers for dock posts," in International Class 19. The mark has been in use for the goods in
`
`International Class 7 since at least as early as July 31, 2004 and has been in use in commerce for
`
`the goods in International Class 7 since at least as early as July 31, 2004, both of which are dates
`
`prior to the filing date of Applicant’s application. Application No. 77/180,653 for the mark
`
`-
`
`"DURAMAX" has a filing date which precedes the filing date of the Applicant’s application.
`
`7.
`
`Opposer is the owner of U.S. trademark Registration No. 2,679,395 registered
`
`January 28, 2003 for the mark "DURAMAX MARINE" in International Class 16 as used in
`
`association with the goods of “printed publications, namely brochures, booklets, leaflets and
`
`catalogues in the field of marine products.” The registration was based on an application filed in
`
`the U.S. Patent and Trademark Office on October 26, 1999. The mark has been in use for the
`
`

`
`goods in International Class 16 since at least 1989 and has been in use in commerce for the
`
`goods in International Class 16 since at least 1989, both of which are dates prior to the filing date
`
`of Applicant’s application. Said trademark and registration therefor are valid and subsisting, and
`
`Opposer owns the DURAMAX MARINE mark, the registration, and the goodwill of the
`
`business associated with such mark. Registration No. 2,679,395 for the mark "DURAMAX
`
`MARINE" has a registration date which precedes the filing date of the Applicant’s application.
`
`8.
`
`Opposer is the owner of U.S. trademark Registration No. 2,714,841 registered
`
`May 13, 2003 for the mark "DURAMAX INTERNATIONAL" in International Class 35 as used
`
`in association with the services of “distributorships in the field of marine equipment.” The .
`
`registration was based on an application filed in the U.S. Patent and Trademark Office on
`
`October 26, 1999. The mark has been in nse for the services in International Class 35 since at
`
`least January 1994 and has been in use in commerce for the services in International Class 35
`
`since at least January 1994, both of which are dates prior to the filing date of Applicant’s
`
`application. Said trademark and registration therefor are valid and subsisting, and Opposer owns
`the DURAMAX INTERNATIONAL mark, the registration, and the goodwill ofthe business
`
`associated with such mark. Registration No. 2,714,841 for the mark "DURAMAX
`
`INTERNATIONAL" has a registration date which precedes the filing date of the Applicant’s
`
`application.
`
`9.
`
`Opposer is the owner of U.S. trademark Registration No. 3,417,244 registered
`
`April 29, 2008 for the mark "DURAMAX ULTRA-X" in International Class 17 as used in
`
`association with the goods of “packing material for forming seals; compression packings for
`
`sealing stuffing boxes, packing boxes and packing glands in marine and industrial applications;
`
`

`
`compression packings for sealing stuffing boxes, packing boxes and packing glands for use in
`
`pumps and industrial pump applications.” The registration was based on an application filed in
`
`the U.S. Patent and Trademark Office on June 8, 2007. The mark has been in use for the goods
`
`in International Class 17 since at least October 1, 2007 and has been in use in commerce for the
`
`goods in International Class 16 since at least October 1, 2007, both of which are dates prior to
`
`the filing date of Applicant’s application. Said trademark and registration therefor are valid and
`
`subsisting, and Opposer owns the DURAMAX ULTRA-X mark, the registration, and the
`
`goodwill of the business associated with such mark. Registration No. 3,417,244 for the mark
`
`"DURAMAX ULTRA-X" has a registration date which precedes the filing date of the
`
`Applicant’s application.
`
`10.
`Opposer is the applicant of U.S. trademark application Serial No. 77/180,631 filed
`May 14, 2007 for the mark "DURAMAX INDUSTRIAL" in International Classes 7, 12, 17 and
`
`19 for the goods of "machine parts, namely, bearings for use in rotating shafting pumps, down-
`
`hole drilling tools, industrial pumps, stators, hydroturbines, wicket gates and product lubricated
`
`bearings; industrial pumps, namely, pumps with rotating shafts that turn impellers to pump
`
`fluids; down-hole drilling tools, namely, stators, turbines and tools for drilling holes in the earth
`
`for the petroleum and mining industry; machine parts, namely, bearing housings and stave
`
`bearings; bearings for use in industrial applications, namely, hydraulic turbines, vertical turbine
`
`pumps, domestic well pumps, slurry pumps, low head irrigation pumps, drainage pumps,
`
`centrifugal pumps, progressive cavity pumps, aerators, mixers and clarifiers," in International
`Class 7, "tow knees and wear pads in the nature ofpads ofrubber bonded to a steel plate for use
`
`on river push boats, tow boats and for pushing barges to protect against rubbing rather than
`
`

`
`impact; pusher bumpers and rub rails for marine vessels," in International Class 12, "shaft seals,
`
`namely, packing material for forming compression packing seals; shaft seals, namely,
`
`compression packings in the nature of square braided packing material for sealing stuffing boxes
`
`and packing glands in marine and industrial applications; shaft seals, namely, compression
`
`packings in the nature of square braided packing material for sealing stuffing boxes and packing
`
`glands for use in pumps and industrial pump applications; bumpers or pads for truck loading
`
`docks; bumpers or pads for plant and warehouse loading docks to protect against tow motors and
`
`fork lift trucks," in International Class 17 and "bumpers for dock posts," in International Class
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`19. The mark has been in use for the goods in International Class 7 since at least as early as July
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`31, 2004 and has been in use in commerce for the goods in International Class 7 since at least as
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`early as July 31, 2004, both of which are dates prior to the filing date of Applicant’s application.
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`Application No. 77/180,631 for the mark "DURAMAX INDUSTRIAL" has a filing date which
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`precedes the filing date of the Applicant’s application.
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`11.
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`Notwithstanding Opposer's prior rights in and to said marks, Applicant, on June
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`17, 2008, filed an application for registration of the trademark "DURAMAX" in International
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`Class 17 for "Watering hoses having a working pressure less than about 150 PSI." Said
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`application was given Serial No. 77/500,712 and the mark was published for Opposition in the
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`Official Gazette on November 4, 2008 at page TM 654, International Class 17 and is an
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`application based on intent-to-use.
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`12.
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`The goods for which Applicant seeks to register its "DURAMAX" term are
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`identical to, substantially similar to or of the same general type of goods as the goods sold in
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`connection with the goods of Opposer under its “DURAMAX” marks.
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`

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`13.
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`Since prior to June 17, 2008, the filing date of the Applicant’s application,
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`Opposer has become extensively associated with sales of bearings for industrial applications,
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`such as rotating shaftings in pumps and down-hole drilling tools, industrial pumps, industrial
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`applications, stators, hydroturbines, wicket gates and industrial rotating shaft apparatus, product
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`lubricated bearings, and housings for bearings, and non-industrial applications, such as marine
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`applications, including marine bearings, stave bearings, bushings, stern tube fillers, housings for
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`bearings, cooling systems, such as keel coolers, sealing systems, including stuffing boxes,
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`packing glands, shaft seal systems, stern castings, and fendering systems, including dock
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`bumpers, tow knees, batterboard systems, wear pads and weatherstrip door gaskets. Each of the
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`aforementioned industrial and non-industrial applications of the Opposer could reasonably
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`employ the use of “watering hoses” therewith. Opposer's customers include purchasers of goods
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`for industrial and non-industrial applications and are likely to include the same people before
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`whom Applicant is using or intending to use the alleged "DURAMAX" trademark. Applicant's
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`customers or prospective customers are very possibly customers of Opposer, and would
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`unwittingly believe that Opposer was directly or indirectly involved with the goods provided by
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`Applicant. Users of Opposer's products are likely to believe, to be confused or deceived into
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`thinking that Applicant's goods originate with, or in some way are associated with, connected
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`with, sponsored, endorsed or authorized by Opposer. By reason of the identical identity,
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`appearance and sound, or the nearly identical identity, appearance and sound, of Applicant's
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`alleged mark "DURAMAX" and Opposer's “DURAMAX” marks and the likely overlapping of
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`the class of customers and channels of trade, Applicant's alleged mark, when applied to its goods
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`is likely to cause confusion or mistake, or to deceive, all to the injury or threatened injury of
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`

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`Opposer.
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`14.
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`Opposer has developed an exceedingly valuable amount of goodwill with respect
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`to its “DURAMAX” marks. By virtue of its efforts, and the expenditure of considerable sums of
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`promotional activities and by virtue of the excellence of its products, Opposer has gained for its
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`“DURAMAX” marks a most valuable reputation.
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`15.
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`If Applicant is permitted to register "DURAMAX" as specified in the application
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`herein opposed, confusion in the trade resulting in damage and injury to Opposer would be
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`caused and would result by reason of the perception of a relationship between goods bearing the
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`alleged mark and name "DURAMAX" of Applicant and Opposer's goods and services bearing
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`the “DURAMAX” marks. In this respect, consumers may have the impression that the goods
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`and services of Opposer bearing the “DURAMAX” marks" and the goods of the Applicant
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`having the alleged "DURAMAX" mark are being marketed, endorsed, approved or sponsored by
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`Opposer. Persons familiar with the “DURAMAX” marks of Opposer would likely buy
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`Applicant's goods as goods marketed, endorsed, approved or sponsored by ‘Opposer. Any such
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`confusion in the trade inevitably would result in dilution of the goodwill created by Opposer.
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`Furthermore, any defect, objection or fault found with Applicant's goods marketed under the
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`alleged "DURAMAX" mark would unnecessarily reflect upon and seriously injure the reputation
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`which Opposer has established with respect to its goods and services associated with its
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`“DURAMAX” marks."
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`16.
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`Based upon the foregoing, the registration of the mark depicted in Application
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`Serial No. 77/500,712 filed on June 17, 2008 on the Principal Register of the United States
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`Patent and Trademark Office would cause injury and damage to Opposer.
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`10
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`

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`WHEREFORE, Opposer requests that registration of Applicant's alleged mark
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`"DURAMAX," Application Serial No. 77/500,712, in International Class 17, be denied and this
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`opposition be sustained.
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`11