Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA259328
`ESTTA Tracking number:
`01/07/2009
`
`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
`
`Samsung America, Inc.
`01/07/2009
`
`105 Challenger Road
`Ridgefield Park, NJ 07660
`UNITED STATES
`
`Attorney
`information
`
`Robert W. Smith
`McCarter & English LLP
`100 Mulberry Street Four Gateway Center
`Newark, NJ 07102
`UNITED STATES
`mboyce@mccarter.com Phone:973 622 4444
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77450490
`01/07/2009
`
`Publication date
`Opposition
`Period Ends
`
`09/09/2008
`01/07/2009
`
`AmeriMark Direct LLC
`6864 Engle Road
`Cleveland, OH 44130
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 035.
`All goods and services in the class are opposed, namely: Mail order catalog services, computerized
`on-line ordering services, and direct response retail services by means of print advertisements in the
`fields of vitamins and mineral supplements, dietary supplements, nutritional supplements, herbal
`remedies, body supports, homeopathic pharmaceuticals, beauty aides, health care appliances and
`implements, supporters and braces, general merchandise, wigs, toupees and hairpieces, general
`clothing, shoes and slippers, hosiery and accessories, and miscellaneous household items
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2402926
`
`11/07/2000
`
`Application Date
`
`08/12/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2000/03/21 First Use In Commerce: 2000/03/21
`Blood pressure monitors
`
`U.S. Registration
`No.
`Registration Date
`
`3393579
`
`03/04/2008
`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Application Date
`
`09/03/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2003/09/00 First Use In Commerce: 2003/09/00
`Medical thermometers; medical probe protective covers
`
`U.S. Registration
`No.
`Registration Date
`
`3298889
`
`09/25/2007
`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Application Date
`
`12/10/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2006/03/00 First Use In Commerce: 2006/03/00
`
`

`
`Nebulizers for respiratory therapy; nebulizer kits for respiratory therapy
`composed of replacement nebulizers, air tubes and filters
`
`U.S. Registration
`No.
`Registration Date
`
`3387013
`
`02/19/2008
`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Application Date
`
`01/28/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2005/01/00 First Use In Commerce: 2005/01/00
`Medical thermometers; blood pressure monitors; nebulizers for respiratory
`therapy; nebulizer kits for respiratory therapy composed of air tubes,
`replacement nebulizers and filters; medical probe protective covers
`
`U.S. Application
`No.
`Registration Date
`
`78555586
`
`NONE
`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Application Date
`
`01/28/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Pedometers
`Class 010. First use:
`blood glucose meter; medical test strips for monitoring blood glucose; lancets
`
`U.S. Application
`No.
`
`78914533
`
`Application Date
`
`06/22/2006
`
`

`
`Registration Date
`
`NONE
`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Weighing scales with body fat analyzer; weighing scales
`
`U.S. Application
`No.
`Registration Date
`
`78914580
`
`NONE
`
`Word Mark
`Design Mark
`
`HEALTHY LIVING
`
`Application Date
`
`06/22/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use:
`Weighing scales with body fat analyzer; weighing scales
`
`75774364#TMSN.gif ( 1 page )( bytes )
`78979630#TMSN.jpeg ( 1 page )( bytes )
`78530699#TMSN.jpeg ( 1 page )( bytes )
`78979474#TMSN.jpeg ( 1 page )( bytes )
`78555586#TMSN.jpeg ( 1 page )( bytes )
`78914533#TMSN.jpeg ( 1 page )( bytes )
`78914580#TMSN.jpeg ( 1 page )( bytes )
`Samsung v Amerimark Notice Opposition.pdf ( 5 pages )(212715 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
`
`/Robert W. Smith/
`Robert W. Smith
`01/07/2009
`
`

`
`
`
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`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SAMSUNG AMERICA, INC.
`
`Opposer,
`
`..VS_
`
`AMERIMARK DIRECT LLC
`
`Applicant
`
`Mark: HEALTHY LIVING
`BY AMERIMARK
`
`Serial No.
`
`77/450,490
`
`NOTICE OF OPPOSITION
`
`In the matter of the application of AmeriMark Direct LLC (hereinafter
`
`"Applicant"), for the registration of HEALTHY LIVING BY AMERIMARK, Application No.
`
`78/450,,490, published in the Official Gazette of September 9, 2008, Samsung America, Inc., a
`
`corporation of the State of New York with its principal place of business at 105 Challenger
`
`Road, Ridgefield Park, New Jersey 07660 ("Opposer"), believes that it would be damaged by the
`
`registration of the mark shown in the application and hereby opposes same. The grounds for the
`
`opposition are:
`
`1. Opposer has been engaged since at least as early as 2000 in the manufacture
`
`and sale in the U.S. of healthcare products in "connection with marks consisting of or including
`
`the term HEALTHY LIVING.
`
`2. Opposer owns the following registration and trademark registration
`
`applications for marks consisting of or including the term "HEALTHY LIVING" (collectively,
`
`the "HEALTHY LIVING Marks") as used in connection with healthcare products:
`
`ME1 80290l6V. 1
`
`

`
`
`
`
`vwmmmmuwmwwmmmxwmmmxmmxawmmsxamwwlmwnmmwmmmwamzmmemwmmmvram:rmmmmammmmm w;mmmrammssnmswuc»x».ax«..s.m:w.zac>w4a;\.axzx\zse.uxw.».«vmm»e>s.u»vm;mammVemx.»<.x«m.“mmnxmzm2“\,n1."::\v>:‘»\‘c.«‘v'fi\\T~o1».»aw.«-
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`
`
`MARK
`
`REG./APP.
`NO.
`
`REG./FILING
`DATE
`
`HEALTHY LIVING
`
`2,402,926
`
`November 7, 2000
`(now incontestable)
`
`
`
`HEALTHY LIVING
`
`3,3 93,579
`
`March 4, 2008
`
`
`
`HEALTHY LIVING
`
`3,298,889
`
`GOODS
`
`Blood pressure monitors
`
`Medical thermometers;
`medical probe protective
`cover
`
`CLASS
`
`10
`
`10
`
`1 0
`
`
`
`
`HEALTHY LIVING & 3,387,013
`
`
`
`
`
`
`
`
`
`
`September 25, 2007 Nebulizers for respiratory
`
`
`therapy; nebulizer kits for
`respiratory therapy
`
`
`composed of replacement
`
`nebulizers, air tubes and
`filters
`
`February 19, 2008 Medical thermometers;
`blood pressure monitors;
`nebulizers for respiratory
`
`
`
`therapy; nebulizer kits for
`
`respiratory therapy
`
`
`
`composed of air tubes,
`
`
`replacement nebulizers
`
`
`and filters; medical probe
`protective covers
`Class 9: Pedometers
`
`January 28, 2005
`(Allowed)
`
`Class 10: Blood glucose
`
`meters; medical test strips
`
`for monitoring blood
`
`glucose; lancets;
`Weighing scales with
`June 22, 2006
`body fat analyzer;
`weighing scales
`
`Weighing scales with
`body fat analyzer;
`
`weighing scales
`
`HEALTHY LIVING &
`
`78/555,586
`
`LOGO
`
`
`
`HEALTHY LIVING & 78/914,533
`LOGO
`
`
`
`
`
`HEALTHY LIVING
`
`78/914,580
`
`June 22, 2006
`
`3. By reason of the long and extensive promotion, print and intemet advertising,
`
`and provision of high-quality products manufactured and distributed by Opposer in conjunction
`
`MEl 80290l6V. 1
`
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`
`with the HEALTHY LIVING Marks, the public and the trade have come to recognize products
`
`offered in conjunction with these marks as signifying Opposer and its healthcare products.
`
`4. Notwithstanding Opposer's long prior rights in the HEALTHY LIVING
`
`Marks, Applicant has filed an application, Serial No. 77/450,490, for registration of HEALTHY
`
`LIVING BY AMERIMARK for the following services in Class 35:
`
`Mail order catalog services, computerized on—line ordering services, and direct response
`retail services by means of print advertisements in the fields of vitamins and mineral
`supplements, dietary supplements, nutritional supplements, herbal remedies, body supports,
`homeopathic pharmaceuticals, beauty aides, health care appliances and implements, supporters
`and braces, general merchandise, wigs, toupees and hairpieces, general clothing, shoes and
`slippers, hosiery and accessories, and miscellaneous household items
`
`5. There is no issue as to priority. Applicant’s intent to use filing date for its
`
`HEALTHY LIVING BY AMERIMARK mark is April 17, 2008, long after the dates when
`
`Opposer first used, registered or filed applications to register its HEALTHY LIVING Marks.
`
`6. The service mark proposed for registration by the Applicant, HEALTHY
`
`LIVING BY AMERIMARK, is nearly identical to Opposer’s HEALTHY LIVING Marks, as to
`
`be likely to be confused therewith and mistaken therefor. The Applicant's mark is deceptively
`
`similar to Opposer’s marks so as to cause confusion and lead to deception as to the origin of
`
`Applicant's goods and services bearing the Applicant's mark.
`
`7. If Applicant is permitted to use and register its HEALTHY LIVING BY
`
`AMERIMARK mark for its goods and services, as specified in the Application herein opposed,
`
`confusion in the trade resulting in damage and injury to Opposer would be caused and would
`
`result by reason of the similarity between the HEALTHY LIVING BY AMERIMARK mark and
`
`Opposer's HEALTHY LIVING Marks. Persons familiar with Opposer's HEALTHY LIVING
`
`Marks would be likely to buy Applicant's goods or services as and for a product made and sold
`
`ME1 80290l6V.l
`
`

`
`
`
`
`
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`
`
`
`by, or sponsored or approved by, Opposer.
`
`8. If Applicant were granted the registration herein opposed, it would thereby
`
`obtain at least a prima facie exclusive right to the use of its mark. Such registration would be a
`
`source of damage and injury to Opposer by, inter alia, precluding Opposer’s use and/or
`
`registration of its HEALTHY LIVING Marks for healthcare products in Classes 9, 10 and 21.
`
`WHEREFORE, Opposer, Samsung America, Inc., prays that this Opposition be
`
`sustained and that the application Serial No. 77/450,490, for the mark HEALTHY LIVING BY
`
`AMERIMARK, for the services therein specified in International Class 35, be refused
`
`registration, and for such other relief as may be deemed just and proper.
`
`Respectfully submitted,
`
`SAMSUNG AMERICA, INC.
`
`
`
`Four Gateway Center
`100 Mulberry Street
`Newark, NJ 07102-4096
`(973) 622-4444
`
`Dated: January 7, 2009
`
`MEI 80290l6v. 1
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing NOTICE OF OPPOSITION
`has been served by first class mail to App1icant’s attorney of record at the following address:
`
`Joseph J. Corso, Esq.
`Pearne & Gordon LLP
`
`1801 East Ninth Street, Suite 1200
`Cleveland, Ohio 441 14-3108
`
`Date: January 7, 2009
`
`ME1 80290l6V. 1
`
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