`ESTTA345825
`ESTTA Tracking number:
`05/05/2010
`
`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
`
`Jiangxi Huangshanghuang Group Food Co., Ltd.
`06/30/2010
`
`No.1298 Yingbin Avenue, Nanchang County
`Jiangxi Province,
`CHINA
`
`Domestic
`Representative
`
`Stephen L. Anderson
`Attorney
`Anderson & Associates
`27247 Madison Avenue Suite 120
`Temecula, CA 92590
`UNITED STATES
`attorneys@brandxperts.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77556830
`05/05/2010
`
`Publication date
`Opposition
`Period Ends
`
`03/02/2010
`06/30/2010
`
`JUNXIAN XIAO
`302-1975 E.12 th Ave.
`VANCOUVER, V5N2A6
`CANADA
`Goods/Services Affected by Opposition
`
`Class 029.
`All goods and services in the class are opposed, namely: Dried meat; Duck eggs; Fried meat; Meat;
`Poultry, namely, SAUCED DUCK
`
`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. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`Poultry, (not live); Fish, (food products made from fish); Flakes
`(Potato); Meat, (canned); Vegetables, (preserved); Fruits (Crystallized
`); Eggs; Milk products; Edible oils; Salads (Vegetable); Fruit Jellies;
`Nuts, (prepared); dried mushroom and tofu products in International
`Class 029
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`Meat; Meat Products; Processed meat; Gravy; Broth; Poultry (not live)
`Processed fish; Processed crustaceans (not live) in International
`Class 029
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`Meat; Meat Products; Processed meat; Broth; Poultry (not live) and
`sauced duck in International Class 029
`
`Attachments
`
`5113780 - HUANGSHANGHUANG HUANG QIN and device USPTO pixels.jpg
`1007147 - HUANG QIN and device uspto PIXELS.jpg
`trademark HUANGSHANG HUANG QI ETC.jpg
`Notice of Opposition.pdf ( 7 pages )(183427 bytes )
`Exhibits A-D inclusive to Notice of Opposition.pdf ( 14 pages )(534477 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/StephenLAnderson/
`Stephen L. Anderson
`05/05/2010
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`In re: Trademark Application Ser. No.: 77556830
`
`
`
`Published: M 02, 2010
`
`)
`)
`
`) )
`
`) )
`
`)
`
`) )
`
`Jiangxi Huangshanghuang Group Food
`C0,, Ltd.,
`
`Opposer,
`
`VS.
`
`Junxian Xiao
`
`Applicant.
`
`Opposer, Jiangxi I-luangshanghuang Group Food Co., Ltd., a Limited Liability Company
`
`organized and existing under the laws of the People’s Republic of China, (hereinafter “Opp0ser”)
`
`believes that it will be damaged by registration of the mark shown in Application Serial No.
`
`77/556830, filed on August 27, 2008 by Junxian Xiao, (“Applicant”), published in the Oflicial
`
`Gazette of the United States Patent & Trademark Office on March 02, 2010, and hereby opposes
`
`the registration of such mark under the provisions of Section 13 of the Trademark Act of July 5,
`
`1946 (15 U.S.C. 1063).
`
`The time to oppose was extended by timely request granted for extension of time by
`
`Opposer to file this opposition.
`
`The grounds for opposition are as follows:
`
`
`
`The Applicant seeks to register the mark shown here 5"‘
`
`
`
`1.
`
`which he has described in the subject application as consisting of “nine Chinese characters
`
`design, a crown, an oval and a rectangle , which whole is a rectangular shape design. The nine
`
`Chinese characters transliterate to ”HUANG SHANG HUANG, HUANG QIN, JUE WEI, YA
`
`BO. " There is a crown open at the rectangle top. The crown is inside ofan oval. Inside ofthe
`
`crown are two words ofChinese character that transliterate to ”HUANG QIN. " There is a
`
`rectangular shape design beneath the crown and oval. Inside ofthe rectangular shape design are
`
`three words of Chinese character that transliterate to ”HUANG SHANG HUANG. ” Four angles
`
`ofthe rectangular are inby (sic) concave to right angle. The Chinese characters that
`
`transliterate to "JUE WEI” are located at the left top corner ofthe mark The Chinese characters
`
`that transliterate to ”YA B0" are located at the right top corner ofthe mark. ”
`
`The Applicant has claimed that “the English translation ofChinese characters that
`
`transliterate to "HUANG SHANG HUANG, HUANG QIN, JUE WEI, YA B0" in the mark is
`
`"Resplendent and royal and superexcellent poultry. ”
`
`2.
`
`The Applicant has filed the subject application under Section l(b) of the Act,
`
`claiming a bona fide intent-to—use the mark in connection with: "Dried meat; Duck eggs; Fried
`
`meat; Meat; Poultry, namely, SA UCED DUCK” in International Class 029; However, the
`
`Applicant has not alleged, nor ever demonstrated any use of the mark shown in the subject
`
`application in connection with any goods or services.
`
`3.
`
`Since 1940, the Opposer and its predecessors in title, have continuously used the
`
`marks HUANGSHANGHUANG (Etta), HUANGQIN, tea), and separately, the design of
`
`a crown device within a Q shaped oval with Chinese characters inside the crown that transliterate
`
`
`
`to HUANG QIN, which is typically shown atop a rectangular shape with tapered ends containing
`
`Chinese characters that transliterate to HUANG SHANG HUANG), as a trademark source
`
`identifier in connection with a variety of food products in International Class 029, particularly
`
`including such Chinese delicacies as dried meat; duck eggs; Fried meat; Meat; Poultry, namely,
`
`SAUCED DUCK.
`
`4. Opposer is the owner of Trademark Registration Certificate No. 5113780, issued by
`
`the Trademark Office State Administration for Industry and Commerce, People’s Republic of
`
`China, for the trademark HUANGSHANGHUANG HUANGQIN (JELEEQ) (and device) as
`
`W’
`-ti J. ii
`
`shown in the certificate and shown here:
`
`in connection with Poultry,
`
`(not live); Fish (Food products made from fish); Flakes (Potato); Meat, [canned]; Vegetables,
`
`(preserved); Fruits (Crystallized ); Eggs; Milk products; Edible oils; Salads (Vegetable); Fruit
`
`Jellies; Nuts, (prepared); dried mushroom and tofu products in International Class 029. Such
`
`Trademark Registration is valid and subsisting from August 7, 2009 to August 6, 2019. A true
`
`copy of such Registration and an English translation thereof are respectively attached hereto as
`
`Exhibit A-1 and A-2.
`
`5. Opposer is the owner by assignment of Trademark Registration Certificate No.
`
`1007147, issued by the Trademark Office State Administration for Industry and Commerce,
`
`People’s Republic of China, for the trademark HUANGQIN (E%) (and device) as shown in
`
`
`
`the certificate and shown here:
`
`I
`
`in connection with Meat; Meat Products;
`
`
`
`Processed meat; Gravy; Broth; Poultry (not live) Processed fish; Processed crustaceans (not live)
`
`in International Class 029. Such Trademark Registration is valid and subsisting from May 14,
`
`1997 through May 13, 2017. A true copy of such Registration and an English translation thereof
`
`are respectively attached hereto as Exhibit B-1 and B-2. A true copy of the renewal of such
`
`Trademark Registration Certificate No. 1007147 and an English translation thereof are
`
`respectively attached hereto as Exhibit B-3 and B-4.
`
`6. On March 05, 2008, after examination and research, and on the basis of its
`
`national Trademark Law, Implementing Regulations of the Trademark Law, and The Provisions
`
`for Identification and Protection of Well-Known Trademarks, the Trademark Office, State
`
`Administration for Industry and Commerce, People’s Republic of China, has designated that the
`
`Opposer’s trademark HUANGQIN and device to be as well-known trademark, in connection
`
`with the goods of sauced duck in International Class 29. A true copy of such designation of
`
`Opposer’s trademark for HUANGQIN and devise as a well-known Trademark and an English
`
`translation thereof are respectively attached hereto as Exhibit C-1 and C-2.
`
`7. Opposer ands its predecessors in title have used variations of its trademark on its
`
`packaging and labels for its meat and poultry products, specifically including sauced duck, which
`
`include the same word and design elements as within its well-known HUANGSHANGHUANG
`Q
`0
`W-
`
`and HUANGQIN marks such as the one shown here:
`
`
`
`8. Opposer is one of China’s Top 500 Private Enterprises and its goods, particularly
`
`including, its dried meat products, eggs; poultry, namely, sauced duck, are sold widely
`
`throughout the world, especially in China, where its products enjoy overwhelming popularity and
`
`dominant market share. Opposer and its predecessors’ meat and poultry products sold under the
`
`
`
`HUANGSHANGHUANG and HUANGQIN marks have been designated as an “International
`
`Famous Brand Food,” have been recognized in International Exhibitions, have received
`
`International culinary awards, and the HUANGSHANGI-IUANG mark was designated the “Most
`
`Influential Brand in the Meat Industry of China, by the China Meat Association. True copies of
`
`such representative honors and the respective English translations thereof are attached
`
`collectively hereto as Exhibits D-1, D-2, D-3, D-4, D-5 and D-6.
`
`9.
`
`Opposer has developed and exceedingly valuable goodwill in respect to the marks
`
`covered by the aforesaid use and registrations. By virtue of its efforts and by the expenditure of
`
`considerable sums for promotional activities, and by virtue of the excellence of its services,
`
`Opposer has gained a valuable reputation for goods sold in connection with its marks.
`
`10.
`
`There is no issue as to priority. Upon information and belief, the Applicant’s has
`
`only asserted an intent-to-use the mark, in bad faith, in an attempt to confilse and mislead the
`
`public, and to prevent the Opposer from rightfully owning and/or using its own trademark in the
`
`United States.
`
`11. The trademark proposed for registration by the Applicant wholly incorporates and
`
`misappropriates the Opposer’s word and design elements, including the crown device with
`
`Chinese characters inside the crown that transliterate to HUANG QIN, atop a rectangular shape
`
`with tapered ends containing Chinese characters that transliterate to HUANG SHANG HUANG
`
` Opposer’s Mark
`
`
`
`12.
`
`The remaining Chinese characters shown on the upper right portion of the in the
`
`Applicant’s proposed mark, EF§',E";‘E translates into “sauced duck neck,” and is included within the
`
`listing of goods in the subject Application.
`
`13.
`
`Applicant’s proposed mark is thusly deliberatively and confusingly similar to
`
`Opposer’s marks in sound, appearance and commercial impression. Indeed, the trademark
`
`proposed for registration by the Applicant, substantially incorporates the entirety Opposer’s
`
`HUANGSHANGHUANG and HUANGQIN marks. The mere addition of a term to a registered
`
`mark generally does not obviate the similarity between the marks nor does it overcome a
`
`likelihood of confusion under Trademark Act Section 2(d).
`
`14.
`
`Moreover, the trademark proposed for registration by the Applicant, as applied to
`
`goods in International Class 029, which are identical and/or highly similar to the goods as used
`
`by Opposer, are so closely related, such that the purchasing public would be confused or
`
`deceived thereby.
`
`15.
`
`Applicant’s use of the proposed mark in connection with the proposed goods is
`
`likely to cause C0f1fl.1Sl0Il, mistake or deception as to the source and origin of Applicant’s goods
`
`in that the public, the trade and others are likely to believe that Applicant’s goods are the same
`
`goods as Opposer’s or that the Applicant’s goods are provided by, sponsored by, approved by,
`
`licensed by affiliated with or in some other way are legitimately connected to Opposer’s goods
`
`and services. Persons familiar with Opposer’s HUANGSHANGHUANG and HUANGQIN
`
`marks would be likely to buy Applicant’s goods as and for a product made by Opposer.
`
`Furthermore, any defect, objection or fault found with Applicant’s alleged products marketed
`
`under its alleged mark would necessarily reflect upon and seriously injure the reputation which
`
`the Opposer and their common predecessor have respectively established for Opposer’s own
`
`goods and services. Therefore, any use and registration of the mark as described under the
`
`
`
`Applicant’s application would cause public confusion, and deception and damage and injury to
`
`the Opposer.
`
`16.
`
`If the Applicant were granted the registration herein opposed, it would thereby
`
`obtain at least a primafacie exclusive right to use of its nearly identical mark in connection with
`
`highly similar goods. Such registration would be a further source of damage and injury to
`
`Opposer. Accordingly, the grant of a registration to Applicant for the mark sought in the
`
`Application should be denied under Section 2(d) of the Trademark Act.
`
`WHEREFORE, Opposer respectfully requests that this Opposition be sustained and
`
`Applicanfs Application to register the mark shown in Application Serial No. 77556830 be
`
`denied.
`
`Respectfully submitted,
`
`Anderson & Asso 5 'ates
`
`Dated: April 30, 2010
`
`Attorney for Opposer
`27247 Madison Avenue, Suite 120
`Temecula, CA 92590
`
`(951) 296-1700
`
`
`
`
`
`
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`173730 21:‘
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`
`Trademark Registration Certificate
`
`No.: 5113780
`
`Trademark: HUANGSHANGHUANG
`
`Trademark sample as shown in the certificate
`
`Applicant: Jiangxi Huangshanghuang Group Food Company
`
`Applicant address: NO.1298 Nanchang County, Jiangxi Province China
`
`Items (Class 29):
`
`Poultry, not live; Fish (Food products made from - )
`
`Flakes (Potato —):
`
`Meat, tinned [canned (Am.)]; Vegetables, preserved; Fruits (Crystallized - ): eggs;
`
`Milk products; Edible oils; Salads (Vegetable - ); Fruit jellies: Nuts, prepared:
`
`day edible mushrooms; Bean curd (End)
`
`The term of validity: from August 7, 2009 to August 6, 2019
`
`Sign by Director: Jianchang LI
`
`(sealed by Trademark Office, State Administration for Industry and Commerce, People’s Republic of China)
`
`EXHIBIT A-2
`
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`EXHIBIT B-3
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`
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`Ratify Renewal of Registration Certification
`
`Now ratify the renewal of NO.1007147 Trademark. Period of renewal
`
`from May 14,2007 to May 13,2017.
`
`December 17,2006
`
`(sealed by Trademark Office, State Administration for Industry and
`
`Commerce , People's Republic of China)
`
`Remark: This certification must be used with Trademark registration
`
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`EXHIBIT C-1
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`Trademark Office, State Administration for Industry and Commerce,
`
`People's Republic of China
`
`SI-IANG CHI ZI|2008| No.l26
`
`Reply for identification “HUANGQIN and Logo” as well—known Trademark
`
`Jiangxi Province State for Industry and Commerce:
`We have safe receipt of your Report about the application of Jiangxi
`
`HUANGSHANGHUANG Group Company for identification “HUANGQIN and
`
`Logo ” as well—known trademark.
`On the basis of <Trademark Law>< Implementing Regulations of the Trademark
`Law> and < The Provisions for Identification and Protection of Well-Known
`
`Trademarks>, afier examination and research, we decide to identify
`
`“ HUANGQIN
`
`as well-known trademark ,which used by Jiangxi
`and Logo ”
`HUANGSHANGHUANG Group Company on the goods of sauce duck in class 29 of
`international classification.
`
`Please according to the relevant laws and actual situation of the cases, instruct
`
`registration office to deal with related cases.
`
`(sealed by Trademark Oflice, State Administration for Industry and Commerce , People's Republic of China)
`
`March 5,2008
`
`EXHIBIT C-2
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`Zos.mmmommV55.mmcoo9%Ba$38umowmmmm38om..:C>ZQOE_.BmuwmmEmsn:m=Qunoacofiom32.n:m:.Q5.8mhmsmxm332.
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`bmzmxmm:>zmm:>zm:c>zo_:a:mEm_noauedn
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`Em:05:232:5Oaimoma3,woos0.5:?E6%bmsmfiEmma”
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`EXHIBIT D—4
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`mc>zom:>zomc>zo9.3.3o:Bow”man:53Hogan”wnoacomm3mc>zomm>zomc>zmQ83Oofiwmsw.58
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`mumoimfima3
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`EXHIBIT D-6
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`KamaEmsasooawaa3Zn»:HsacmfiwomGrim.
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`Qozoa3.<m:&J:33¢U533
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`mnaoaguooo
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