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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA485105
`ESTTA Tracking number:
`07/24/2012
`
`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
`
`Shamballa Jewels ApS
`Corporation
`Gronnegade 36, Ground Floor
`Copenhagen, DK-1107
`DENMARK
`
`Citizenship
`
`Denmark
`
`Attorney
`information
`
`Kristen M. Walsh
`Nixon Peabody LLP
`1300 Clinton Square
`Rochester, NY 14604
`UNITED STATES
`nytm@nixonpeabody.com,kwalsh@nixonpeabody.com,jkravitz@nixonpeabody.
`com Phone:585-263-1000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85533394
`07/24/2012
`
`Publication date
`Opposition
`Period Ends
`
`06/26/2012
`07/26/2012
`
`Spirit of Shamballa, Inc.
`Suite # 560 10 Bank Street
`White Plains, NY 10606
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 014. First Use: 2012/01/15 First Use In Commerce: 2012/02/01
`All goods and services in the class are opposed, namely: Beads for making jewelry; Bracelets;
`Broaches; Bronze jewelry; Brooches; Cameos; Charms for collar jewelry and bracelet; Costume
`jewelry; Jewelry brooches; Jewelry, namely, anklets; Jewelry, namely, arm cuffs; Jewelry, namely,
`crosses; Jewelry, namely, magnetic necklaces; Jewelry, namely, magnetic pendants; Jewelry,
`namely, stone pendants; Pins being jewelry; Plastic bracelets in the nature of jewelry; Precious and
`semi-precious crystal stones and beads for use in jewelry; Rings; Rings being jewelry; Stainless steel
`jewelry bracelets; Women's jewelry
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`79102992
`
`NONE
`
`Application Date
`
`08/02/2011
`
`Foreign Priority
`Date
`
`04/05/2011
`
`

`
`Word Mark
`Design Mark
`
`SHAMBALLA
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use:
`Spectacles and sunglasses, parts for these goods in the form of spectacle
`frames, spectacle cases
`Class 014. First use:
`Jewellery, personal ornaments in the nature of jewelry, costume jewellery,
`cufflinks, key rings of precious metals, tie pins, jewellery cases, watches and
`their parts in the form of watch bands, cases for watches
`Class 018. First use:
`Leather bags for packaging; boxes of leather or of leather board
`Class 020. First use:
`Display stands, including display stands for jewellery, cases and boxes of wood
`
`Attachments
`
`79102992#TMSN.jpeg ( 1 page )( bytes )
`Notice_of_Opposition.pdf ( 4 pages )(60356 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
`
`/kristenmwalsh/
`Kristen M. Walsh
`07/24/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Shamballa Jewels ApS,
`
`Spirit of Shamballa, Inc.,
`
`Opposition No.
`
`Serial No. 85/533394
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Shamballa Jewels ApS, (“Shamballa”), a corporation organized under the
`
`laws of Denmark having an address at Gronnegade 36 Ground Floor, DK I107 Copenhagen,
`
`Denmark, hereby opposes registration of the mark SPIRIT OF SHAMBALLA (and Design),
`
`subject of United States Trademark Application Serial No. 85/533394, published on June 26,
`
`2012 (the ‘‘Application”), and requests that registration to Applicant be refused. Shamballa
`
`believes it will be damaged by registration of the mark shown in Serial No. 85/533394, and
`
`opposes the same on grounds stated below.
`
`As grounds in support of its opposition, Shamballa asserts as follows:
`
`1.
`
`This Notice of Opposition is based on Shamballa’s prior rights in the
`
`trademark SHAMBALLA. Shamballa has actively, continuously, and consistently promoted
`
`and sold its distinctive jewelry under the mark SHAMBALLA (the “SHAMBALLA Mark”)
`
`in the United States since at least 1996, long prior to Applicant’s asserted date of first use of
`
`its mark in commerce of February 1, 2012, or any other date of first use upon which
`
`Applicant can rely.
`
`140681 52.l
`
`

`
`_ 2 _
`
`2.
`
`As a result of Shamballa’s extensive use and promotion of its jewelry under the
`
`SHAMBALLA Mark; Shamballa has developed an extraordinarily valuable brand and reputation
`
`and has generated substantial goodwill that is symbolized by the SHAMBALLA Mark. The
`
`public has come to recognize and associate the SHAMBALLA Mark exclusively with Shamballa
`
`and its reputation for distinctive and fashionable designs and high quality products.
`
`3.
`
`Shamballa owns U.S. Trademark Application Serial No. 79/102992 for the
`
`SHAMBALLA Mark.
`
`4.
`
`Shamballa is the exclusive owner of all right; title, and interest in and to the
`
`SHAMBALLA Mark.
`
`5.
`
`On February 3, 2012, Spirit of Shamballa, Inc. (“Applicant”) filed the
`
`Application for the mark SPIRIT OF SIIAMBALLA (and Design) (“Applicant’s Mark”)
`
`under Section 1(a), 15 U.S.C. § l05l(a). The Application covers the following goods:
`
`Class 14: Beads for making jewelry; Bracelets; Broaches; Bronze jewelry;
`Brooches; Cameos; Charms for collar jewelry and bracelet; Costume
`jewelry; Jewelry brooches; Jewelry, namely, anklets; Jewelry, namely,
`arm cuffs; Jewelry, namely, crosses; Jewelry, namely, magnetic
`necklaces; Jewelry; namely, magnetic pendants; Jewelry; namely; stone
`pendants; Pins being jewelry; Plastic bracelets in the nature of jewelry;
`Precious and semi—precious crystal stones and beads for use in jewelry;
`Rings; Rings being jewelry; Stainless steel jewelry bracelets; Women's
`jewelry
`
`In the Application, Applicant asserted that it has used Applicant’s Mark in commerce since
`
`February 1, 2012.
`
`6.
`
`7.
`
`Applicant’s Mark is confusingly similar to the SHAMBALLA Mark.
`
`The goods listed in the Application are either the same or closely related to
`
`goods provided by Shamballa under the SHAMBALLA Mark.
`
`8.
`
`Applicant’s Mark so resembles the SHAMBALLA Mark as to be likely, when
`
`

`
`-3-
`
`applied to the jewelry and related goods set forth in the Application, to cause confusion,
`
`mistake, or deception as to the source of the goods within the meaning of Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § l052(d).
`
`9.
`
`Based on the foregoing, the registration of Applicant’s Mark will cause injury
`
`and damage to Shamballa.
`
`WHEREFORE, Opposer Shamballa Jewels ApS prays that the opposition be
`
`sustained and that registration to Applicant of Application No. 85/533394 be refused.
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
`flat,
`
`Jason C. Kravitz
`
`Kristen M. Walsh
`
`1300 Clinton Square
`Rochester, New York 14604
`
`(585)263-1000
`Telephone:
`Facsimile: (585)263-1600
`
`Attorney for Opposer
`Shamballa Jewels ApS
`
`Date: July 24, 2012
`
`14068152.]
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I served the foregoing Notice of Opposition upon the Applicant by
`causing true and correct copies thereof to be sent on July 24, 2012 by First Class Mail, postage
`prepaid, to:
`
`Spirit of Shamballa, Inc.
`10 Bank St., Ste 50
`
`White Plains, NY 10606-1952
`
`(Correspondence address of recordfor the Application)
`
`and
`
`Paul 1*‘. Millus
`
`Snitow Kanfer Holtzcr &Millus, LLP
`575 Lexington Avenue, 14”‘ Floor
`New York, NY 10022
`
`Attorneys for Applicant
`Spirit of Shamballa, Inc.
`
`Dated: July 24, 2012
`
`lC:M~l.w.i»u 2
`
`Kristen M. Walsh
`
`14068152.)

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