Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA536582
`ESTTA Tracking number:
`05/07/2013
`
`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
`
`Transamerica Corporation
`05/15/2013
`
`4333 Edgewood Road NE
`Cedar Rapids, IA 52499
`UNITED STATES
`
`Attorney
`information
`
`BRUCE A MCDONALD
`BUCHANAN INGERSOLL & ROONEY PC
`1737 KING STREET, SUITE 500
`ALEXANDRIA, VA 22314
`UNITED STATES
`bruce.mcdonald@bipc.com, holly.lance@bipc.com, michelle.jackson@bipc.com
`Phone:703-838-6620
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79116365
`05/07/2013
`
`1125252
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`01/15/2013
`05/15/2013
`
`06/08/2012
`
`Transtrend B.V.
`Weena 723, Unit C5.070 NL-3013 AM ROTTERDAM
`
`NETHERLANDS
`Goods/Services Affected by Opposition
`
`Class 036.
`All goods and services in the class are opposed, namely: Financial services, namely, capital asset
`management and consultancy in respect thereof
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`718358
`
`07/11/1961
`
`Application Date
`
`02/10/1958
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`TRANSAMERICA
`
`NONE
`
`Class U102 (International Class 035). First use: First Use: 1929/01/00 First Use
`In Commerce: 1929/01/00
`Consultation and Advice in Respect to Investment of Monies of Others
`
`Attachments
`
`T TRANSTREND & Design Opposition.pdf(48456 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
`
`/Bruce A. McDonald/
`BRUCE A MCDONALD
`05/07/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. _____________
`
`Opposed Application:
`T TRANSTREND & Design
`U.S. App. Ser. No. 79/116,365, in
`Int’l Class 36
`
`
`
`
`
`)))))))))))
`
`
`TRANSAMERICA CORPORATION
`
`
`Opposer,
`
`
`
`v.
`
`
`TRANSTREND B.V.,
`
`
`Applicant.
`
`Attorney Docket No. 0077718-000511
`
`
`
`
`NOTICE OF OPPOSITION
`
`Transamerica Corporation (“Opposer”) hereby opposes U.S. Application Serial No.
`
`79/116,365, filed by Transtrend B.V., for registration of T TRANSTREND & Design, illustrated
`
`above (“Applicant’s Mark”) in connection with “financial services, namely, capital asset
`
`management and consultancy in respect thereof” in International Class 36 (“Applicant’s
`
`Services”). Opposer believes that it will be damaged by registration of Applicant’s Mark, and
`
`that registration of the mark is prohibited under Section 2(d) of the Federal Trademark Act of
`
`1946, as amended (the “Lanham Act”), 15 U.S.C. §§ 1052(d) and 1125(c), because the mark is
`
`likely to be confused with Opposer’s numerous service mark registrations featuring the prefix
`
`“TRANS” and used in connection with financial services.
`
`In support of its Opposition, Opposer states as follows:
`
`(1)
`
`Opposer is a Delaware corporation principally located at 4333 Edgewood Road
`
`NE, Cedar Rapids, Iowa 52499.
`
`

`
`(2)
`
`Opposer is a leading provider of financial services including insurance,
`
`investment management and retirement services. These services are provided through Opposer’s
`
`network of subsidiaries, which include:
`
`‚
`
`‚
`
`‚
`
`‚
`
`‚
`
`‚
`
`Transamerica Life Insurance Company and Transamerica Financial Life
`Insurance Company, providing insurance products with approximately $1.3
`trillion of insurance currently in force;
`
`Transamerica Capital, Inc., a wholesale marketing and sales group that assists
`financial professionals in providing retirement services, mutual funds, life
`insurance and annuities;
`
`Transamerica Financial Advisors, Inc., a full service broker/dealer and financial
`services provider;
`
`Transamerica Asset Management, Inc., a provider of investment management
`services;
`
`Transamerica Retirement Services, a provider of assistance to companies in the
`structuring of retirement plans for employees; and
`
`Transamerica Employee Benefits (formerly known as Transamerica Worksite
`Marketing), a provider of voluntary supplemental insurance products including
`term life, universal life, cancer, accident, and vision insurance.
`
`(3)
`
`Opposer offers its services from offices throughout the United States and through
`
`multiple websites including www.transamerica.com, www.transamericaannuities.com,
`
`www.transamericafunds.com, www.ta-retirement.com, www.transamericaseriestrust.com,
`
`www.transamericaemployeebenefits.com, and www.transamericainvestments.com.
`
`
`
`(4)
`
`Opposer, through its affiliates and predecessors, has used the name
`
`“TRANSAMERICA” since 1929 as its principal trade name and service mark for all its services
`
`offered as evidenced by U.S. Service Mark Registration 718,358 for “consultation and advice in
`
`respect to investment of monies of others.”
`
`
`
`-2-
`
`

`
`
`
`(5)
`
`Opposer owns the following federal registrations duly issued by the U.S. Patent
`
`and Trademark Office and appearing on the Principal Register of the United States:
`
`Mark
`
`TRANSAMERICA
`
`TRANSAMERICA
`
`TRANSAMERICA
`
`Reg.
`
`718358
`
`831626
`
`978808
`
`1635682
`
`
`
`Services
`
`Consultation and advice in respect to investment of
`monies of others, in Class 35 (first use 1/1929)
`
`Underwriting of insurance – namely, life, including
`accident and health, in Class 36 (first use 7/18/1959)
`
`Financial services rendered to others – namely,
`providing loan services to others, providing consumer
`credit services, insurance underwriting and investment
`services (first use 1958)
`
`Financial consulting services; investment management
`and counseling services; mutual funds management
`sales and distribution services; insurance premium
`financing services; insurance underwriting services for
`life, disability insurance; life reinsurance services;
`insurance agency services; underwriting services for
`variable life insurance and variable annuity products
`(first use 9/30/1989)
`
`
`(6)
`
`
`
`In addition to TRANSAMERICA, Opposer owns a family of marks with the
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`prefix “TRANS,” used by Opposer’s subsidiaries and their predecessors since at least 1986,
`
`including, but not limited to, the following federally registered marks:
`
`Mark
`
`TRANSPLUS
`
`TRANS-SELECT
`
`TRANSCARE
`
`Reg.
`
`1536748
`
`
`
`1650333
`
`
`
`1672078
`
`
`
`TRANSCARE OPTIONS
`
`2672415
`
`
`
`Services
`
`Annuity underwriting services, in Class 36 (first use
`11/1986)
`
`Investing the pension funds of others, in Class 36 (first
`use 11/17/1988)
`
`Health insurance underwriting services, in Class 36
`(first used 12/3/1990)
`
`Health insurance underwriting services and/or long
`term care indemnity insurance underwriting providing
`for nursing and/or nursing home services, physical
`respiratory and/or speech therapy, audiological
`services, medical and/or social services, home care
`services, namely, bathing, dressing, toilet, adult day
`care services, nursing facility and/or assisted living
`care facility services, home modification services,
`therapeutic device rental or purchase, bed reservation
`services in nursing facilities and/or hospice care
`services, in Class 36 (first used 6/1/2002)
`
`
`
`-3-
`
`

`
`Mark
`
`
`
`
`
`
`
`TRANSSAVERS
`
`TRANSVALUE
`
`TRANSDIRECT
`
`TRANSLIFE
`
`TRANSCENDER
`
`TRANSEQUITY
`
`TRANSMAX
`
`TRANSMILLENIUM
`
`TRANSFREEDOM
`
`TRANSACT
`
`Reg.
`
`1731606
`
`1902999
`
`1934916
`
`1982523
`
`2218549
`
`2125499
`
`
`
`2223978
`
`1424244
`
`1487796
`
`1364880
`
`2277415
`
`2514570
`
`2648195
`
`
`
`TRANSACE
`
`2717097
`
`TRANSACE SURVIVOR
`
`2720613
`
`TRANSSMILE
`
`TRANSSECURE
`
`TRANSCONNECT
`
`TRANSSECURE
`
`2761407
`
`
`
`2812729
`
`
`
`2836281
`
`
`
`3000511
`
`Services
`
`Life insurance underwriting services, in Class 36 (first
`use 11/27/1991)
`
`Life insurance underwriting services, in Class 36 (first
`use 4/12/1994)
`
`Life insurance underwriting services containing
`investment options for policy holders, in Class 36 (first
`use 4/25/1994)
`
`Life insurance underwriting services, in Class 36 (first
`use 5/1/1995)
`
`Life insurance underwriting services, in Class 36 (first
`use 7/2/1997)
`
`Providing information on-line via computer to
`customers regarding pension accounts, in Class 36
`(first use 10/31/1996)
`
`Life insurance underwriting services, in Class 36 (first
`use 9/13/1989)
`
`Life insurance underwriting services, in Class 36 (first
`use 11/1/1985)
`
`Life insurance underwriting services, in Class 36 (first
`use 4/7/1987)
`
`Insurance underwriting services, in Class 36 (first use
`2/15/1985)
`
`Life insurance underwriting services, in Class 36 (first
`use 11/17/1997)
`
`Annuity underwriting services, in Class 36 (first use
`2/1/2000)
`
`Providing marketing information to insurance brokers,
`agents and consumers for purposes of marketing
`insurance products, in Class 35 (first use 9/11/1998)
`
`Providing insurance information to insurance brokers,
`agents and consumers for purposes of marketing
`insurance products, in Class 36 (first use 9/11/1998)
`
`Life insurance underwriting services, in Class 36 (first
`use 5/31/2001)
`
`Life insurance underwriting services, in Class 36 (first
`use 5/31/2001)
`
`Dental insurance underwriting services, in Class 36
`(first used 6/1/2002)
`
`Long-term health care insurance underwriting
`services, in Class 36 (first use 10/15/2002)
`
`Health insurance underwriting services, in Class 36
`(first used 5/15/2003)
`
`Life insurance underwriting, in Class 36 (first use
`9/15/2003)
`
`
`
`-4-
`
`

`
`Mark
`
`TRANSACCUMULATOR
`
`TRANSCHOICE
`
`TRANSEXPRESS
`
`TRANSULTRA PLUS
`
`TRANSWARE
`
`TRANSKEY
`
`TRANS-$AVER
`
`TRANSLINK
`
`TRANSPROTECTOR
`
`TRANSUL
`
`TRANSDI
`
`TRANSQUOTE
`
`TRANSABILITY
`
`Reg.
`
`3003173
`
`3022835
`
`3117788
`
`
`
`3131783
`
`
`
`3170495
`
`
`
`3170496
`
`
`
`3204909
`
`
`
`3209503
`
`
`
`3238738
`
`
`
`3307909
`
`3342536
`
`
`
`3679130
`
`
`
`3765109
`
`
`
`TRANSSECURITY
`
`3935547
`
`TRANSTERM
`
`3989732
`
`Services
`
`Life insurance and annuity underwriting services, in
`Class 36 (first use 2/4/2002)
`
`Health insurance underwriting services, in Class 36
`(first use 3/1/2004)
`
`Life insurance underwriting services, in Class 36 (first
`use 8/1/2005)
`
`Life insurance underwriting services, in Class 36 (first
`use 8/3/2005)
`
`Computer software for use in estimating the
`appropriate amount of life insurance coverage and
`calculating premiums and future value of life insurance
`policies, in Class 9 (first use 9/12/2005)
`
`Insurance and annuity underwriting services;
`investment advisory and mutual fund brokerage
`services; investment advisory services in the nature of
`financial planning for retirement, in Class 36 (first use
`10/1/2005)
`
`Life insurance underwriting, in Class 36 (first use
`3/15/2006)
`
`Health insurance underwriting featuring online
`enrollment, in Class 36 (first use 7/2005)
`
`Life insurance underwriting, in Class 36 (first use
`8/1/2006)
`
`Life insurance underwriting services, in Class 36 (first
`use 9/6/2006)
`
`Disability insurance underwriting services, in Class 36
`(first use 2/1/2007)
`
`Long term care insurance underwriting services, in
`Class 36 (first use 10/2008)
`
`Financial planning and investment advisory services;
`providing information and advice to financial planners
`and life insurance professionals with clients who have
`children or relatives with special needs, in Class 36
`(first use 10/12/2009)
`
`Financial planning and life insurance underwriting;
`providing information and advice to financial planners
`and life insurance professionals relating to the
`establishment of trusts funded by or otherwise using
`life insurance, in Class 36 (first use 1/31/2010)
`
`Insurance services, namely, underwriting, issuing and
`administration of life insurance, in Class 36 (first use
`2/1/2011)
`
`
`
`-5-
`
`

`
`Mark
`
`TRANSLINK
`
`Reg.
`
`4104530
`
`TRANS SELECT
`
`4251049
`
`
`
`Services
`
`Providing referrals in the field of life insurance
`premium financing, in Class 35 (first use 12/31/2010)
`
`Facilitating and arranging for life insurance premium
`financing; consultancy services in the field of life
`insurance premium financing (first use 12/31/2010)
`
`Life insurance underwriting, in Class 36 (first use
`5/31/2012)
`
`(7)
`
`Collectively, the registrations pleaded in the previous two paragraphs are
`
`hereinafter referred to as “Opposer’s Marks” and the services identified therein as “Opposer’s
`
`Services.”
`
`(8)
`
`Of the registrations pleaded above, all those over five years old are incontestable
`
`under Section 15 of the Lanham Act, 15 U.S.C. § 1065, constituting conclusive evidence of (i)
`
`the registration of the marks, (ii) the validity of the registered marks, (iii) Opposer’s ownership
`
`of the marks, and (iv) Opposer’s exclusive right to use the marks in commerce in connection
`
`with the identified goods and services, as provided by Section 33(b) of the Lanham Act, 15
`
`U.S.C. § 1115(b).
`
`(9)
`
`Opposer and its subsidiaries and their predecessors have spent substantial sums of
`
`money since 1929 to advertise and promote the name TRANSAMERICA in connection with
`
`financial services. For at least 25 years, such advertising and promotion has been further
`
`directed to Opposer’s family of “TRANS”-prefix service marks. These marks have acquired
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`distinctiveness and are recognized by the public as a designation of source that identifies
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`Opposer as the origin of financial services offered under these marks.
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`(10) Applicant’s Mark is similar in commercial impression to Opposer’s Marks
`
`because it employs the “TRANS” prefix as part of a non-descriptive, composite term.
`
`
`
`-6-
`
`

`
`(11) Applicant's Services are similar, overlapping and/or materially identical to
`
`Opposer’s Services.
`
`(12) On information and belief, the services described in the opposed application are
`
`offered, likely to be offered, or capable of being offered to classes of consumers that are similar,
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`overlapping or materially identical to those of Opposer, through channels of trade that are
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`similar, overlapping or materially identical to those of Opposer.
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`(13) Under the circumstances, Applicant’s Mark is confusingly similar to Opposer’s
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`Marks, and when used in connection with Applicant's Services, is likely to cause confusion, to
`
`cause mistake, or to deceive, by causing purchasers to believe, mistakenly, that Applicant's
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`Services originate from or are associated with Opposer, or that Applicant's Services are
`
`authorized, endorsed or sponsored by Opposer. Registration of Applicant’s mark is therefore
`
`prohibited under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`(14) Applicant’s filing of U.S. Application Serial No. 79/116,365 was without license,
`
`authorization or permission from Opposer.
`
`(15) Opposer will be damaged if U.S. Application Serial No. 79/116,365 is allowed to
`
`register because Applicant will obtain statutory rights in Applicant's Mark in violation and
`
`derogation of the established prior rights of Opposer in its prior registered Marks.
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`-7-
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`

`
`WHEREFORE, this Opposition should be sustained on the grounds that registration of
`
`Applicant’s mark is prohibited under Section 2(d) of the Lanham Act, 15 U.S.C. §§ 1052(d).
`
`Respectfully submitted,
`
`TRANSAMERICA CORPORATION
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`___________________________________________
`Bruce Alexander McDonald
`Holly B. Lance
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22313-1404
`(703) 836-6620
`Tel:
`Fax:
`(703) 836-2021
`bruce.mcdonald@bipc.com
`Attorneys for Opposer
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`Date: May 7, 2013
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`-8-
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`

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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing NOTICE OF
`
`
`
`OPPOSITION was served this 7th day of May, 2013, by first-class mail, postage prepaid, on
`
`Applicant’s counsel of record:
`
`Merkenbureau Knijff & Partners B.V.
`P.O. Box 5054
`NL-1380 GB Weesp
`Netherlands
`
` courtesy copy is also being sent to:
`
`Karol A. Kepchar, Esq.
`Akin Gump Strauss Hauer & Feld LLP
`1333 New Hampshire Avenue, N.W.
`Washington, DC 20036-1564
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`__________________________________
`Bruce Alexander McDonald
`Attorney
`BUCHANAN INGERSOLL & ROONEY PC
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`-9-
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` A