throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA271317
`ESTTA Tracking number:
`03/11/2009
`
`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
`
`Unilever Supply Chain, Inc.
`03/11/2009
`
`1 John Street
`Clinton, CT 06413
`UNITED STATES
`
`Attorney
`information
`
`Gregory P. Gulia
`Duane Morris LLP
`1540 Broadway
`New York, NY 10036-4086
`UNITED STATES
`gpgulia@duanemorris.com, ewmccormick@duanemorris.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77491481
`03/11/2009
`
`Publication date
`Opposition
`Period Ends
`
`11/11/2008
`03/11/2009
`
`Creative Technologies, LLC
`4825 E. 96th Street, Suite 1200
`Indianapolis, IN 46240
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 021. First Use: 2008/05/15 First Use In Commerce: 2008/05/18
`All goods and services in the class are opposed, namely: dispenser for personal care product,
`namely, cotton swabs and cotton balls
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`309256
`
`01/09/1934
`
`Word Mark
`
`Q-TIPS
`
`Application Date
`
`09/14/1933
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class U044 (International Class 005). First use: First Use: 1926/01/01 First Use
`In Commerce: 1926/01/01
`SWABS CONSISTING OF SANITARY ABSORBENT COTTON, ATTACHED TO
`THE END OF A SMALL PIECE OF WOOD
`
`U.S. Registration
`No.
`Registration Date
`
`591736
`
`06/22/1954
`
`Word Mark
`Design Mark
`
`Q-TIPS
`
`Application Date
`
`02/10/1953
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class U044 (International Class 005). First use: First Use: 1926/01/01 First Use
`In Commerce: 1926/01/01
`SWABS CONSISTING OF SMALL STICKS OF WOOD OR PAPER HAVING
`WADS OF COTTON TWISTED ABOUT ONE OR BOTH THEIR ENDS AND
`INTENDED FOR USE PRIMARILY AS A COSMETIC AID AND DRESSING
`TABLE ADJUNCT
`
`U.S. Registration
`No.
`Registration Date
`
`1307624
`
`12/04/1984
`
`Application Date
`
`11/21/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Q-TIPS
`
`NONE
`
`Class 005. First use: First Use: 1983/11/10 First Use In Commerce: 1983/11/10
`Cotton Tipped Applicators for Medical Purposes
`
`U.S. Registration
`
`2809256
`
`Application Date
`
`11/07/2002
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`01/27/2004
`
`Q-TIPS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 003. First use: First Use: 2002/06/17 First Use In Commerce: 2002/06/17
`cotton swabs
`
`71341566#TMSN.gif ( 1 page )( bytes )
`71642047#TMSN.gif ( 1 page )( bytes )
`76466973#TMSN.gif ( 1 page )( bytes )
`OPP - Creative Technologies.pdf ( 6 pages )(450951 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
`
`/Gregory P. Gulia/
`Gregory P. Gulia
`03/11/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application
`Serial No. 77/491,481
`Published: November 11, 2008,
`
`UNILEVER SUPPIJY CHAIN, INC.
`Opposer,
`
`v.
`
`NOTICE OF OPPOSITION
`
`CREATIVE TECHNOLOGIES, LLC
`
`OPPOSITION NO‘
`
`Applicant.
`
`Opposer Unilever Supply Chain, Inc., a corporation organized and existing under the
`
`laws of Delaware, with its address at 1 John Street, Clinton, Connecticut 06413 (hereinafter,
`
`“Unilever Supply Chain” or “Opposer”) believes that it will be damaged by registration of the
`
`mark QUICKTIP & Design as shown in Application Serial No. 77/491,481 as applied to
`
`“dispenser for personal care product, namely, cotton swabs and cotton balls” (hereinafter
`“Applicant’s Goods”) and hereby opposes registration of same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Opposer Unilever Supply Chain, Inc. (“Unilever Supply Chain”) is the owner of
`
`the trademark Q—TIPS® (the “Q-TIPS® Mark”) for cotton swab products.
`
`2.
`
`Unilever Supply Chain owns, among other registrations, the following valid,
`
`subsisting and incontestable federal registrations, issued by the United States Patent and
`
`Trademark Office, for the Q—TIPS® Mark: Registration No. O309,256 for “swabs consisting of
`
`

`
`sanitary absorbent cotton, attached to the end of a small piece of wood” in international class 5;
`
`Registration No. 0591 ,736 for “swabs consisting of small sticks of wood or paper having wads of
`
`cotton twisted about one or both their ends and intended for use primarily as a cosmetic aid and
`
`dressing table adjunct” in international class 5; and Registration No. 1,307,624 for “cotton tipped
`
`applicators for medical purposes” in international class 5. Unilever Supply Chain also owns
`
`United States Trademark Registration No. 2,809,256 for the Q-TIPS® Mark for “cotton swabs”
`
`in international class5, which isha valid and subsisting federal registration. Annexed hereto as
`
`Exhibits 1, 2, 3 and 4 are copies of printouts from the United States Patent and Trademark
`
`Office’s electronic database, located at www.uspto.gov, showing the current status and title of
`
`the United States Trademark Registration Nos. 0309,256, O59l,736, 1,307,624 and 2,809,256
`
`respectively.
`
`3.
`
`For many years, and long prior to any date upon which Applicant can rely for
`
`purposes of priority, Unilever Supply Chain and its predecessors and their licensees have used
`
`the Q-TIPS® Mark in interstate commerce in connection with the nationwide production,
`
`distribution, sale, advertising and promotion of cotton swab products. As a result of these
`
`efforts, the Q-TIPS® Mark is famous in the United States and is associated solely with Unilever
`
`Supply Chain and the high quality products producted by Opposer and its licensees.
`
`4.
`
`The Q-TIPS® Mark became famous long before the filing date of Applicant’s
`
`application or any use of QUICKTIP & Design by Applicant, was famous on the filing date of
`
`Applicant’s application and on the date that Applicant began any use of QUICKTIP & Design,
`
`and is famous as of the date of filing this opposition.
`
`DM2\]708654.1
`
`— 2 —
`
`

`
`5.
`
`Q-TIPS® brand cotton swab products are available and sold to consumers
`
`throughout the United States and in various other countries.
`
`6.
`
`‘
`
`Over the years, the volume of sales of goods in the United States sold under
`
`Opposer’s Q-TIPS® Mark has been enormous.
`
`7.
`
`Q-TIPS® brand cotton swab products are among the largest selling brands for
`
`such products in the United States.
`
`8.
`
`The extraordinary success of Q-TIPS® brand products over many years has
`
`engendered wide renown with the trade and the public and the products sold under the mark have
`
`a reputation for being of the highest quality.
`
`9.
`
`The Q-TIPS® Mark and products are continuously and extensively advertised and
`
`promoted throughout the United States.
`
`10.
`
`Since at least as early as 1926, Opposer and its predecessors and their licensees
`
`have spent many millions of dollars advertising and promoting the Q-TIPS® Mark and products
`
`throughout the United States.
`
`11.
`
`The Q-TIPS® brand has been promoted and advertised in a wide variety of
`
`national media, including in national television commercials, nationally circulated newspapers
`
`and magazines and on the Internet.
`
`12.
`
`Because of the extensive advertising, promotion and use of the Q-TIPS® Mark,
`
`the Q-TIPS® Mark has acquired enormous value and has become extremely well known to the
`
`DM2\1708654.1
`
`— 3 —
`
`

`
`consuming public as identifying and distinguishing Q-TIPS® brand products from those of
`
`competitors.
`
`13.
`
`The Q—TlPS® Mark is a distinctive and famous trademark and represents and
`
`symbolizes a valuable business, which belongs exclusively to Opposer.
`
`14.
`
`As a result of Opposer’s extensive use of the Q—TIPS® Mark, the Q-TIPS® Mark
`
`has come to be recognized by the public as identifying Opposer as the source of goods bearing
`
`the Q-TIPS® Mark, and represents enormous goodwill belonging exclusively to Opposer.
`
`15.
`
`Opposer believes that it will be damaged by registration of QUICKTIP & Design
`
`as a mark under § 13 of the Lanham Act, 15 U.S.C. § 1063, because consumers familiar with the
`
`Q-TIPS® Mark used in connection with high quality cotton swabs products are likely to believe,
`
`mistakenly, that Applicant or Applicant’s Goods emanate from, are sponsored, endorsed or
`
`A
`
`authorized by, or are otherwise associated with Opposer in violation of Section 2(dl ofthe
`
`Lanham Trademark Act, as amended, 15 U.S.C. Section l052(d). As a result, the granting of the
`
`registration applied for will cause substantial damage and injury to Opposer.
`
`16.
`
`Opposer believes that it will be damaged by registration of QUICKTIP & Design
`
`as a mark under § 13 of the Lanham Act, 15 U.S.C. § 1063, because Applicant’s use of
`
`QUICKTIP & Design is likely to dilute the distinctive quality of Opposer’s famous Q-TIPS®
`
`Mark by lessening the capacity for the trademark to identify and distinguish Opposer exclusively
`
`as the source of goods provided under the Q-TIPS® Mark, in violation of § 43(0) of the Lanham
`
`Act, 15 U.S.C. § ll25(c).
`
`DM2\1708654.1
`
`— 4 —
`
`

`
`Based on the foregoing, Opposer believes that it will be damaged by registration of the
`
`mark QUICKTIP & Design shown in Application Serial No. 77/491,481 and respectfully request
`
`that the registration sought by Applicant be denied.
`
`Dated: . March 11, 2009
`
`I hereby certify that this correspondence is being
`transmitted by electronic mail to the United
`States Patent and Trademark Office Trademark
`Trial and Appeal Board on the date shown below. DUANE MORRIS LLP
`
`/InezP. Ve a/
`
`11132 P- Vega
`
`Dated: March 11, 2009
`
`Respectfully submitted,
`
`By; W
`
`
`Gregory P. Gulia
`Eric W. McCormick
`Vanessa C_ Hew
`
`1540 Broadway
`New York, New York 1003 6-4086
`(212) 692-1000
`
`Attorneys for Opposer,
`Unilever Supply Chain, Inc.
`___L__
`
`DM2\1708654.1
`
`—
`
`- 5 -
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Notice of Opposition has
`
`been served on Applicant Creative Technologies, LLC by mailing said copy on March 11, 2009
`
`Via first-class mail, postage prepaid to:
`
`Creative Technologies, LLC
`4825 E. 96th Street, Suite 1200
`Indianapolis, IN 46240
`
`Ccoawt-4
`Signature
`‘
`{Hit
`
`\
`/Vi C(o~"t(/L
`
`Name of Person Signing
`
`/Mm H zna
`
`Date of Signature
`
`DM2\l708654.1
`
`— 6 -

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