Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA341952
`ESTTA Tracking number:
`04/12/2010
`
`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
`
`Crunch IP Holdings, LLC
`04/11/2010
`
`22 West 22nd Street3rd Floor
`New York, NY 10011
`UNITED STATES
`
`Attorney
`information
`
`Martin Schwimmer
`Moses & Singer LLP
`405 Lexington Avenue
`New York, NY 10174
`UNITED STATES
`mschwimmer@mosessinger.com, vcastanaro@mosessinger.com
`Phone:212-554-7625
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77358572
`04/12/2010
`
`Publication date
`Opposition
`Period Ends
`
`10/13/2009
`04/11/2010
`
`Interserve, Inc.
`Suite 200 654 High Street
`Palo Alto, CA 94301
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041.
`All goods and services in the class are opposed, namely: Arranging and conducting educational
`conferences; arranging of seminars; education services, namely, providing live and online classes,
`seminars, and workshops in the fields of technology, internet products and services, start-up
`companies, entrepreneurship, marketing, design, finance, recruitment, intellectual property, and
`leadership; educational services, namely, developing, arranging and conducting educational
`conferences and programs and providing courses of instruction in the fields of technology, internet
`products and services, start-up companies, entrepreneurship, marketing, design, finance,
`recruitment, intellectual property, and leadership; electronic publishing services, namely, publication
`of text, graphic works, video, pod casts, and sound recordings in online, CD, and DVD formats
`featuring technology, internet products and services and start-up business content; production of
`sound recordings; online electronic publishing of books and periodicals; publication of printed matter;
`publishing of reviews of technology, innovations, products, services, businesses, management;
`organization of seminars, working groups, research groups and conventions in the fields of computer
`and mobile device technology, internet products and services, and start-up businesses; social club
`services, namely, arranging of social events, parties, and social networking events; providing
`recognition and incentives by the way of awards to demonstrate excellence in the fields of
`
`

`
`technology, internet products and services, and entrepreneurship
`Class 045.
`All goods and services in the class are opposed, namely: social networking services; Internet based
`social networking, introduction and dating services
`
`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
`
`Word Mark
`Design Mark
`
`2643475
`
`10/29/2002
`
`CRUNCH
`
`Application Date
`
`11/02/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2001/12/00 First Use In Commerce: 2001/12/00
`Magazines featuring articles about health, fitness, fashion, music and movies
`
`1942852
`
`12/19/1995
`
`CRUNCH
`
`NONE
`
`Application Date
`
`01/30/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Class 025. First use: First Use: 1989/06/01 First Use In Commerce: 1989/06/01
`clothing, namely men's, women's and chidren's polo shirts, skirts, dresses,
`pants, vests, socks, shorts, scarves, gloves, underwear, robes, sports team
`jerseys, unitards, leotards, sweatpants, T-shirts, sweatshirts, body suits, jackets,
`hats, and bandannas
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`
`1949705
`
`01/16/1996
`
`CRUNCH
`
`NONE
`
`Application Date
`
`08/12/1994
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`Class 009. First use: First Use: 1992/07/01 First Use In Commerce: 1992/07/01
`prerecorded video tapes relating to physical fitness
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`1809668
`
`12/07/1993
`
`CRUNCH
`
`Application Date
`
`02/26/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1988/07/13 First Use In Commerce: 1988/07/13
`gymnasiums and physical fitness instruction
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`1942705
`
`12/19/1995
`
`CRUNCH
`
`Application Date
`
`01/10/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1989/07/08 First Use In Commerce: 1989/07/08
`clothing, namely men's, women's and children's polo shirts, skirts, dresses,
`pants, vests, socks, shorts, scarves, gloves, underwear, robes, sports team
`jerseys, unitards, leotards, sweatpants, T-shirts, sweatshirts, body suits, jackets,
`hats, and bandannas
`
`U.S. Registration
`No.
`
`2079601
`
`Application Date
`
`08/19/1994
`
`

`
`Registration Date
`
`07/15/1997
`
`Word Mark
`Design Mark
`
`CRUNCH
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1997/01/01 First Use In Commerce: 1997/01/01
`exercise books
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2053516
`
`04/15/1997
`
`CRUNCH
`
`Application Date
`
`08/24/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1992/09/01 First Use In Commerce: 1992/09/01
`prerecorded video tapes containing music and relating to physical fitness,
`prerecorded audiocassettes and audio compact disks featuring music and used
`in exercising
`
`U.S. Registration
`No.
`Registration Date
`
`2510773
`
`11/20/2001
`
`Word Mark
`
`CRUNCH
`
`Application Date
`
`03/31/1997
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2000/12/01 First Use In Commerce: 2000/12/01
`nutritional supplements in the nature of food bars
`Class 032. First use: First Use: 2001/03/01 First Use In Commerce: 2001/03/01
`carbonated and non-carbonated soft drinks, and powders used in the
`preparation of carbonated and non-carbonated soft drinks
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3146012
`
`09/19/2006
`
`CRUNCH
`
`Application Date
`
`08/26/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2001/00/00 First Use In Commerce: 2001/00/00
`Health club services, namely providing instruction and equipment in the field of
`physical exercise
`
`U.S. Registration
`No.
`Registration Date
`
`1968967
`
`04/16/1996
`
`Word Mark
`
`CRUNCH
`
`Application Date
`
`08/19/1994
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 1992/07/01 First Use In Commerce: 1992/07/01
`prerecorded video tapes relating to physical fitness
`Class 041. First use: First Use: 1995/09/04 First Use In Commerce: 1995/09/04
`television programs in the field of physical fitness
`
`U.S. Registration
`No.
`Registration Date
`
`1815978
`
`01/11/1994
`
`Application Date
`
`02/19/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CRUNCH GEAR
`
`NONE
`
`Class 025. First use: First Use: 1989/07/08 First Use In Commerce: 1989/07/08
`clothing; namely, T-shirts, sweatshirts, body suits, jackets, hats, and bandannas
`
`U.S. Registration
`No.
`Registration Date
`
`1856269
`
`09/27/1994
`
`Application Date
`
`02/19/1993
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CRUNCH GEAR
`
`NONE
`
`Class 018. First use: First Use: 1993/02/08 First Use In Commerce: 1993/02/08
`knapsacks, gym bags, and tote bags
`
`U.S. Registration
`No.
`Registration Date
`
`2721752
`
`06/03/2003
`
`Word Mark
`
`CRUNCH RADIO
`
`Application Date
`
`11/15/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 041. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`ENTERTAINMENT SERVICES, NAMELY AUDIO AND AUDIOVISUAL
`PROGRAMS FEATURING MUSIC, DISSEMINATED VIA TRADITIONAL
`RADIO AND TELEVISION, DIRECT-BROADCAST SATELLITE, DIGITAL
`CABLE RADIO, INTERACTIVE TELEVISION, AND A GLOBAL COMPUTER
`NETWORK
`
`75837473#TMSN.gif ( 1 page )( bytes )
`74363506#TMSN.gif ( 1 page )( bytes )
`74619574#TMSN.gif ( 1 page )( bytes )
`74563560#TMSN.gif ( 1 page )( bytes )
`74719955#TMSN.gif ( 1 page )( bytes )
`75266752#TMSN.gif ( 1 page )( bytes )
`76608732#TMSN.gif ( 1 page )( bytes )
`75975013#TMSN.gif ( 1 page )( bytes )
`75848229#TMSN.gif ( 1 page )( bytes )
`crunch notice of opposition interserve.pdf ( 5 pages )(251055 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
`
`/mschwimmer/
`Martin Schwimmer
`04/12/2010
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL ANI) APPEAL BOARD
`
`In the matter of trademark application Serial No. 77358572
`Filed: December 2}, 2007
`For the mark: CRUNCII
`
`Published for Opposition on October 13, 2009
`
`CRUNCH IP HOLDINGS, LLC,
`
`Opposer,
`
`INTERSERVE, INC.,
`
`NOTICE OF ()I’I’()SITI()N
`
`Opposer, Crunch IP lloldings, LLC, a limited liability company organized and existing
`
`under the laws of Delaware, having its principal place of business at 22 West 22'“ Street, New
`
`York, NY lOO10, believes that it will be damaged by the registration ofthe trademark CRUNCH
`
`(sometimes referred to herein as “Mark” or “the Mark”) in International Classes 041 and 045 as
`
`shown in Application Serial No. 77358572, and hereby opposes the same.
`
`As grounds for its opposition, Opposer, by its attorneys Moses & Singer, LLP, alleges as
`
`follows:
`
`1.
`
`Since no later than June 13, l988, Opposer has been using the mark CRUNCII in
`
`commerce in the United States and interstate commerce for exercise classes, physical litness
`
`instruction, educational services, and entertainment services.
`
`2.
`
`Opposer uses the mark CRUNCII in connection with exercise classes, physical fitness
`
`instruction, educational services, and entertainment services. Opposer promotes its CRUNCII
`
`service through substantial amounts of advertising and other promotional expenditures in the
`
`755558vl
`
`()1 l948.0]00
`
`

`
`United States. As a result, the mark has become distinctive of Opposer’s services and has come
`
`to represent significant goodwill for Opposer.
`
`3.
`
`Opposer, Crunch 11’ Holdings, LLC, is the successor in interest to the CRUNCH Marks
`
`and goodwill therein, and is the owner of the various registrations cited herein, the assignment of
`
`which has been recorded with the USPTO.
`
`4.
`
`Opposer owns the US. trademark registrations listed below for the marks CRUNCH,
`
`CRUNC11 GEAR, and CRUNCH RADIO (collectively, the “CRUNCl“1 Marks”).
`
`Mark
`
`CRl,\1C1el
`
`Registration
`
`Class
`
`2,643,475
`
`016
`
`025
`
`009
`
`041
`
`025
`
`016
`
`009
`
`CR1 \1CH (word and design)
`
`1,942,852
`
`CR1j\1CH
`
`1,949,705
`
`CR1 \1Cl 1 (word and design)
`
`1,809,668
`
`CRL\lCl1 (word and design)
`
`1,942,705
`
`CRL\lCl-1 (word and design)
`
`2,079,601
`
`CRIJNCH (word and design)
`
`2,053,516
`
`CR1,\1Cl—1 (word and design)
`
`2,510,773
`
`005, 032
`
`CRL\1Cl-all (word and design)
`
`3,146,012
`
`041
`
`CR1 \1Cl~l (word and design)
`
`1,968,967
`
`009, 041
`
`CRL \lCH GEAR
`
`CRL'\lCH GEAR
`
`1,815,978
`
`1,856,269
`
`CRLVCH RADIO
`
`2,721,752
`
`025
`
`018
`
`041
`
`5.
`
`On December 21, 2007, Applicant filed an application for the l\/Iark under Serial No.
`
`77358572, covering in part:
`
`755558vl 0119480100
`
`I\.)
`
`

`
`“Arranging and conducting educational conierences; arranging of seminars; education
`services, namely, providing live and online classes, seminars, and workshops in the lields
`of technology, internet products and services, start—up companies, entrepreneurship,
`marketing, design, finance, recruitment, intellectual property, and leadership; educational
`services, namely, developing, arranging and conducting educational conferences and
`programs and providing courses of instruction in the fields of technology, internet
`products and services, start-up companies, entrepreneurship, marketing, design, finance,
`recruitment, intellectual property, and leadership; electronic publishing services, namely,
`publication of text, graphic works, video, pod casts, and sound recordings in online, CI),
`and DVD formats featuring technology, internet products and services and start~up
`business content; production of sound recordings; online electronic publishing of books
`and periodicals; publication of printed matter; publishing of reviews of technology,
`innovations, products, services, businesses, management; organization of seminars,
`working groups, research groups and conventions in the lields ofcomputer and mobile
`device technology, internet products and services, and start-up businesses; social club
`services, namely, arranging ofsocial events, parties, and social networking events;
`providing recognition and incentives by the way of awards to demonstrate excellence in
`the fields of technology, internet products and services, and entrcprencurship” in
`International Class 41;
`
`and
`
`“Social networking services; Internet based social networking, introduction and dating
`services” in International Class 45.
`
`6.
`
`The opposed Application was filed on December 21, 2007, based upon an intent to use
`
`the Mark in commerce.
`
`7.
`
`8.
`
`In the Application, Applicant’s Mark is identical to Opposer’s mark CRUNCII.
`
`In the Application, Applicant offers services under the Mark in International Classes 41
`
`and 45 in channels of trade and market segments identical or closely related to those in which
`
`Opposer offers its services under the same mark.
`
`9.
`
`In the Application, Applieant’s services offered under the Mark in International Classes
`
`4l and 45 are so closely related to the services Opposer offers under its mark, CRUNCII, as to
`
`be likely to cause confusion, to cause mistake, and to deceive the trade and public, who are likely
`
`to associate the services offered by Applicant with those offered by Opposer, or to believe that
`
`um
`75 558vl
`
`()ll948.()l()()
`
`DJ
`
`

`
`Applicant’s services are sponsored, endorsed or licensed by Opposer, or that there is some
`
`relationship between Applicant and Opposer.
`
`10.
`
`If Applicant were granted the registration in International Classes 41 and 45 herein
`
`opposed, it would thereby obtain at least a prima facie exclusive right to use the CRUNCH mark.
`
`Such registration would be a source of damage to Opposer.
`
`1 1.
`
`Because Opposer's date of first use for CRUNCH predates the filing date of /\pplicant’s
`
`intent—to—use application for their Mark, and because registration of/\pplicant’s mark will cause
`
`actual harm to Opposer, Applicant's application should be rejected.
`
`WHEREFORE, Opposer respectfully requests that Application Serial No. 77358572 be rejected,
`
`that no registration be issued thereon to Applicant, and that this Opposition be sustained in favor
`
`of Opposer.
`
`Respectfully submitted,
`
`l\/lOSl'}IS & SINGER 141,11)
`
`/”3
`
`; a
`
`Martin Séhjviniiiier, Esq.
`
`Attorneys for Opposer
`Crunch ll’ Holdings, LLC
`405 Lexington Avenue, 12”‘ Floor
`New York, New York lOl74—l299
`
`(212) 554-7625
`
`Dated: April l2, 2010
`
`755558vl
`
`0ll948.(}l()O
`
`4
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE TH E TRADEMARK TRIAL AND APPEAL BOARD
`
`CRUNCH IP l—IOl,,DlNGS, LLC,
`
`Opposer,
`
`INTERSERVE, lNC.,
`
`Applicant.
`......................................................................................................................"J
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of "Notice of Opposition” was sent by l'1rst—class mail, this 12"‘
`
`day ol’April, 20l O to:
`
`Andrew P. Bridges
`Winston & Strawn l.l.P
`
`lOl California
`
`Suite 3900
`
`San Francisco, CA 941 1 1-58‘
`
`Counsel for Applicant