IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 85519008
`For the mark “CHANTILLY LANE”
`
`William J. Williamson
`
`Opposition No. 91208056 ‘\
`
`Opposer,
`
`v.
`
`Sonoma Wine Company
`
`Applicant.
`
`FIRST AMENDED NOTICE OF OPPOSITION
`
`Opposer, William J. Williamson, hereby opposes registration of the mark
`
`CHANTILLY LANE which is the subject of application serial no. 85519008. Opposer
`
`files this First Amended Notice Of Opposition as a matter of course within the time
`
`period allowed by Fed. R. Civ. P. 15(a)(1) and T.B.M.P. 315. As grounds for the
`
`opposition, Opposer asserts the following:
`
`1.
`
`William J. Williamson (“Opposer”)
`
`is an individual having an address of
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`134 Matheson Street, Healdsburg, CA 95448.
`
`Matheson Street, Healdsburg, CA 95448, and which currently uses the mark
`
`CHANTILLY in connection with wine.
`
`3.
`
`Sonoma Wine Company (“Applicant”), on January 18, 2012, filed an
`
`application to register the mark CHANTILLY LANE (the “Mark”), which application was
`
`assigned serial no. 85519008 (the “Application”).
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`PH1 3332083v211/19/12
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`US. Patent and Trademark Olfioe #72
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`wines.
`
`4.
`
`5.
`
`The Application presently lists the following description of goods: wine;
`
`The Application was filed based on Applicant’s asserted bona fide intent to
`
`use the mark in commerce.
`
`6.
`
`7.
`
`Applicant had not used the Mark prior to January 18, 2012.
`
`Opposer has used the mark CHANTILLY in connection with wine since at
`
`least as early as October 14, 2008.
`
`8.
`
`Opposer’s use of the mark CHANTILLY with wine, which use has not been
`
`use of its Mark.
`
`9.
`
`Opposer has established a valuable reputation and good will in its
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`CHANTILLY mark by reason of its continuous use, promotion, and sale of goods in
`
`association with its CHANTILLY mark.
`
`10.
`
`Opposer’s CHANTILLY mark is inherently distinctive or had become
`
`distinctive of its wine goods prior to the filing date of the Application, prior to any priority
`date claimed by Applicant, and prior to Applicant’s first use of its Mark.
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`11.
`
`At least as early as October of 2008, Applicant bottled wine for Williamson
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`Wines, which bottles included a label displaying Opposer’s CHANTILLY mark.
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`12.
`
`Applicant’s bottling of wine for Williamson Wines as set forth in paragraph
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`11 above was pursuant to an agreement between Opposer and Applicant.
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`13.
`
`On behalf of Opposer, Applicant filed an “Application For And
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`Certification/Exemption Of Label/Bottle Approval” (the Label Application”) with the
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`PH] 3332083v211/19/12
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`Department Of The Treasury— Alcohol And Tobacco Tax And Trade Bureau, dated
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`September 16, 2008, for a label for use by Williamson Wines that included Opposer’s
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`mark CHANTILLY for use with wine. A true and correct copy of the approved Label
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`Application is attached hereto as Exhibit A.
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`14.
`
`Applicant’s mark CHANTILLY LANE is substantially similar to Opposer’s
`
`previously used CHANTILLY mark.
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`15.
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`The goods “wine; wines” listed in Applicant’s Application is identical to the
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`wine goods sold in connection with Opposer’s CHANTILLY mark.
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`COUNT I
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`LIKELIHOOD OF CONFUSION
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`16.
`
`Opposer repeats and realleges each and every allegation set forth in
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`paragraphs 1 through 15 herein.
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`17.
`
`Applicant’s Mark so resembles Opposer’s CHANTILLY mark, when used
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`on or in conjunction with the goods of Applicant, as to be likely to cause confusion, or to
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`cause mistake, or to deceive.
`
`COUNT ll
`
`FRAUD
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`18.
`
`Opposer repeats and realleges each and every allegation set forth in
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`paragraphs 1 through 17 herein.
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`19.
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`Applicant signed a declaration (the Application Declaration”) in support of
`
`its Application, which declaration included the following statement “he/she believes the
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`applicant to be the owner of the trademark/service mark sought to be registered, or, if
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`PHI 3332083v2 1 1/19/12
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`

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`the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant
`
`to be entitled to use such mark in commerce; to the best of his/her knowledge and belief
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`no other person, firm, corporation, or association has the right to use the mark in
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`commerce, either in the identical form thereof or in such near resemblance thereto as to
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`be likely, when used on or in connection with the goods/services of such other person,
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`to cause confusion, or to cause mistake, or to deceive; and that all statements made of
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`his/her own knowledge are true; and that all statements made on information and belief
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`are believed to be true”.
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`20.
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`Opposer was using its CHANTILLY mark at the time Applicant signed the
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`Application Declaration.
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`21.
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`Opposer's rights in its CHANTILLY mark were superior to any rights
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`Applicant had in its CHANTILLY LANE mark at the time the Application Declaration was
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`signed.
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`22.
`
`Applicant knew that Opposer had rights in its CHANTILLY mark that were
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`superior to the rights Applicant had in its Mark and either believed that a likelihood of
`confusion would result form‘ Applicant’s use of the Mark or had no reasonable basis for
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`believing othen/vise.
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`23. Applicant made a false declaration when it signed the Application
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`Declaration.
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`24.
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`25.
`
`Applicant intended to deceive the U.S. Patent & Trademark Office.
`
`The U.S. Patent & Trademark Office relied on one or more of Applicant's
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`PH1 3332083v2 11/19/12
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`PRAYER FOR RELIEF
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`26.
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`if Applicant were granted registration of the Application herein opposed, it
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`would thereby obtain at least a prima facie exclusive right to the use of Applicant’s
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`Mark. Such registration would be a source of damage and injury to Opposer.
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`WHEREFORE, Opposer prays that its opposition to the registration of Application
`
`Serial Number 85519008 be sustained and that Applicant’s Mark be refused
`
`registration.
`
`Dated: November 19, 2012
`
`Respectfully submitted,
`
`/gah/
`Gary A. Hecht
`Edward L. Brant
`
`Fox Rothschild LLP
`2000 Market Street, 20th Floor
`Philadelphia, PA 19103
`(215) 299-2416
`
`ATTORNEYS FOR OPPOSER
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`PHI 3332083v211/l9/l2
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 85519008
`For the mark “CHANTlLLY LANE”
`
`William J. Williamson
`
`:
`
`Opposition No. 91208056
`
`Opposer,
`
`v.
`
`Sonoma Wine Company
`
`Applicant.
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above First Amended Notice of Opposition
`
`and attachment were served on Applicant on the date listed below by first class mail,
`
`postage prepaid, addressed as follows:
`
`Kit Knudsen, Esq.
`Commins & Knudsen, PC
`400 Montgomery St., Ste 200
`San Francisco, CA 94104-1209
`
`/-d-/
`
`Deanna M. McGregor
`
`Dated: 19 November 2012
`
`PHI 3332083v2 I1/19/12
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 85519008
`For the mark “CHANTlLLY LANE”
`
`William J. Williamson
`
`Opposition No. 91208056
`
`Opposer,
`
`v.
`
`Sonoma Wine Company
`
`Applicant.
`
`EXHIBIT A
`
`PHI 3332083v2 11/19/12
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`

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`9/2/12 ,
`
`.
`
`OMB No. 1513-0020
`
`OMB No. 1513-0020 (01/31/2009)
`
`
`
`
` TTB ID
`E
`APPLICATION FOR AND
`08260001000327
`9 CERTIFICATIONIEXEMPTION OF LABELIBOTTLE
`0
`APPROVAL
`
`(See Instructions and Paperwork Reduction Act Notice on Back)
`
`
`FOR TTB USE ONLY
`
`
`
`
`
`DEPARTMENT OF THE TREASURY
`ALCOHOL AND TOBACCO TAX AND TRADE BUREAU
`
`
`
`3. SOURCE OF
`
`PRODUCT (Required)
`I
`Domestic
`
`
`
`8. NAMEAND ADDRESS OF APPLICANT AS SHOWN ON PLANT REGISTRY,
`BASIC PERMIT OR BREWER'S NOTICE INCLUDE APPROVE) DBA OR
`
`TRADBIAMEIF USED ON LABE. (Required)
`
`
`
`2. PLANT
`REGISTRYIBASIC
`PEMIT/BREWER'S NO.
`(Required)
`BW-CA-541 5
`
`
`
`
`
`
`
` Imported
`SONOMA WINE COMPANY, PURPLE WINE PRODUCTION CONPANY
`4001 HIGHWAY 128
`
`5. TYPE OF PRODUCT
` GEYSERVILLE CA 95441
`(Required)
`y-..”
`_'
`.31 WINE
`
` WILLIAMSON WINE COMPANY (Used on label)
`
`I DISTILLED SPIRITS
`
`
`MALT BEVERAGE
`
`
`
`4. SERIAL NUMBER
`
`(Required)
`080014
`
`
` 7
`
`
` 6. BRAND NAME (Required)
`8a. MAILING ADDRESS, IF DIFFERBIT
`
`WILLIAMSON WINES
`
`. FANCIFUL NAM E (Ifany)
`CHANTILLY
`
`
`
` GAYLEB\IROBBINSCOMPL|ANCE@HUGHES.NEI' )
`any
`
`CERTIFICATE OF LABEL APPROVAL
`
`
`
`
` 750 MILLILITERS
`
`CERTIFICATE OF EXEMPTION
`FROM LABEL APPROVAL
`"For sale in
`only‘ (Fill in
`3 LITERS
`
`State abbreviation.)
`375 M|L|_||_|TERS
`
`DISTINCTIVE LIQUOR BOTTLE
`15. WINE VINTAGE DATE IF ON LABEL
`
`APPROVAL. TOTAL BOTTLE
`
`2007
`CAPACITY BEFORE CLOSURE
`
`(707) 744-1919
`(707) 829-6163
`(Fill in amount)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RESUBMISSION AFTER REJECTION
`TTB ID. NO.
`
`
`19. SHOW ANY WORDING (a) APPEARING ON MATERIALS FIRM_Y AFFIXED TO THE CONTAINER (e.g., caps, celoseals, corks,
`etc.) OTHER THAN THE LABLES AFFIXED BEl.OW, OR (b) BLOWN, BRANDED OR EI\/IBOSSED ON THE CONTAINER (e.g., net
`
`contents etc.). THIS WORDING MUST BE NOTED HERE EVEN IF FF DUPl_|CATES PORTIONS OF THE LABE_S AFFIXED BEI_OW.
`
`ALSO, PROVIDE TRANSLATIONS OF FOREIGN LANGUAGE TB(T APPEARING ON LABELS.
`NET CONTENTS BLOWN INTO BOTTLE
`
`
`
`
`
`
`
`
`
`
`I
`
`PART II - APPLICANT'S CERTIFICATION
`
`Under the penalties of perjury, ldeclare; that all statements appearing on this application are true and correct to the best of my
`knowledge and belief; and, that the representations on the labels attached to this form, including supplemental documents, truly
`
`https://www.ttbonline.gov/colasonline/viewCoIaDetaiIs.do?a ction=publicFormDIspIay&ttbid=0826000lO...
`
`
`
`

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`09/ 1 8/2008
`
`
`FOR TTB USE ONLY
`
`EXPIRATION DATE (If
`any)
`
`9/2/12 ~
`
`OMB No. 1513-0020
`
`and correctly represent the content of the containers to w hich these labels will be applied. I also certify that I have read,
`understood and complied with the conditions and instructions w hich are attached to an original TTB F 5100.31,
`Certificate/B<errption of Label/Bottle Approval.
`
`20. DATE OF
`APPLICATION
`
`09/16/2008
`
`21. SIGNATURE OF APPLICANT OR AUTHORIZE) AGBJT
`
`(Application w as e-filed)
`
`22. PRINT NAM E or APPLICANT OR
`A”T"'°R'ZE° AGE”
`GAYLEEN ROBBINS
`
`This certificate is issued subject to applicable laws, re
`portion of this form.
`
`gulations and conditions as set forth in the instructions
`
`23. DATE ISSUE)
`
`24. AUTHOHZE3 SIGNATURE ALCOHOL AND TOBACCO TAX AND TRADE BUREAU
`
`PART III - TTB CERTIFICATE
`
`QUALIFICATIONS
`
`STATUS
`
`THE STATUS IS APPROVED.
`
`CLASS/TYPE DESCRIPTION
`
`DESSERT /PORT/SHERRY/( COOKING) WINE
`
`AFFIX COMPLETE SET OF LABELS BEl_OW
`
`lrnage Type: Brand (front)
`Actual Dimensions: 2.2 inches W X 3.3 inches H
`
`WILLIAMSON
`WINES
`
`VIOGNIER
`
`SONOMA COUNTY
`DRY CREEK VALLEY
`
`2007
`
`lrnage Type: Back
`Actual Dimensions: 2.2 inches W X 3.3 inches H
`
`https://wwwttbonlinegov/colasonline/viewCo|a Deta ils.do.7a ction=publicForm Disp|ay8Lttbid=0826000l0...
`
`')/I)
`
`

`
`9/2/12
`
`-
`
`u
`
`'
`
`OMB No. 1513-0020
`
`WILLIAMSON
`VVINES
`
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`
`GOQIERNMENT WARNING"
`1
`.'\-
`\
`wEu'_:
`
`J?‘
`
`CC» Ta1.I|‘\"SSL.|LF!TES
`
`TTB F 5100.31 (6/2006) PREVIOUS EDITIONS ARE OBSOLETE
`
`htms://www.ttbon|ine.uov/colasonline/viewCo|a Deta i|s.do?a ction=pub|icFormDisplay&ttbid=082600010...
`
`3/3