Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA574564
`ESTTA Tracking number:
`12/04/2013
`
`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
`
`Forever, Inc.
`12/04/2013
`
`One PPG Place, 20th Floor
`Pittsburgh, PA 15222
`UNITED STATES
`
`Attorney
`information
`
`Rochelle D. Alpert
`Morgan, Lewis & Bockius LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105
`UNITED STATES
`ralpert@morganlewis.com, shall@morganlewis.com,
`sftrademarks@morganlewis.com Phone:415-442-1326
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85879036
`12/04/2013
`
`Publication date
`Opposition
`Period Ends
`
`08/06/2013
`12/04/2013
`
`Goodman, Eric B.
`13 River Hill Rd.
`Louisville, KY 40207
`USX
`Goods/Services Affected by Opposition
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Providing a nonprofit website that gives
`users the ability to create customizedweb pages memorializing the memory of the loved one(s) that
`they have lost excluding hosting an online community or web-based networking service, offering
`chatrooms, electronic bulletin boards, online forums, weblogs, electronic messaging, or allow users to
`create sharable profiles that display connections with otherusers, and/or share photos and videos in
`connection with the web site
`
`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
`
`85737755
`
`NONE
`
`Application Date
`
`09/25/2012
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`FOREVERTRUST
`
`Date
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer software for the organization,storage and access by others of
`personal documents, data, text, photos, images,graphics, music, audio, video
`and multimedia content, for use in the safeguarding of digital files, including
`audio, video, text, binary, still images, graphics and multimedia files, for
`retrieving personal documents, data, text, photos, images, graphics, music,
`audio, video andmultimedia content from databases and computer networks
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Promoting the goods and services of others via a global computer network;
`Providing consumer product information via the Internet
`Class 036. First use: First Use: 0 First Use In Commerce: 0
`Insurance information and consultancy; Investment advice; Providing
`informationand advice in the field of finance, financial investments, financial
`valuations, and the financial aspects of retirement
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`Electronic storage of digital media, namely, data, documents, text, photos,
`images, graphics, music, audio, video and multimedia content
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Providing a website featuring technology that enables users to organize, store
`and access personal documents, data, text, photos, images, graphics, music,
`audio, video and multimedia content, for usein the safeguarding of digital files,
`including audio, video, text, binary, still images, graphics and multimedia files, to
`retrieve personal documents, data, text, photos, images, graphics, music, audio,
`video and multimedia content from databases and computer networks; Providing
`on-line non-downloadable software forthe organization, storage and access
`byothers of personal documents, data, text, photos, images, graphics, music,
`audio, video and multimedia content, for usein the safeguarding of digital files,
`including audio, video, text, binary, still images, graphics and multimedia files,
`for retrieving personal documents, data, text, photos, images, graphics, music,
`audio, video and multimedia content from databases and computer networks
`Class 045. First use: First Use: 0 First Use In Commerce: 0
`On-line social networking services
`
`Attachments
`
`85737755#TMSN.jpeg( bytes )
`Notice of Opposition (Exhibit A) -- Appl Serial No. 85879036.pdf(433698 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
`
`/RDA/
`Rochelle D. Alpert
`12/04/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 85/879,036
`Filed March 18, 2013
`for the mark FOREVERBOOK
`
`Published in the OFFICIAL GAZETTE on August 6, 2013
`
`Forever, Inc.,
`
`v.
`
`Opposer,
`
`Eric B. Goodman,
`
`Applicant.
`
`Opposition No.:
`
`NOTICE OF OPPOSITION
`
`Forever, Inc. (“Opposer” or “Forever”), a Delaware corporation, having its principal
`
`place of business at One PPG Place, 20th Floor, Pittsburgh, Pennsylvania 15222, believes that it
`
`will be damaged by the application to register the FOREVERBOOK designation that applicant
`
`Eric B. Goodman, (“Applicant”) seeks to protect with the applied—for intent—to—use application
`
`for FOREVERBOOK, Serial No. 85/879,036, and hereby opposes same.
`
`As grounds for the opposition, Forever alleges as follows:
`
`F0rever’s Trademark Rights
`
`1.
`
`Forever owns a valid, allowed federal trademark application for
`
`FOREVERTRUST, Application No. 85/737,755, which was properly filed on September 25,
`
`2012 and for which a Notice of Allowance issued on July 23, 2013 for use in connection with the
`
`following goods and services in International Classes 9, 39, 42, and 45, among other services:
`
`Class 9: Computer software for the organization, storage and access by others of personal
`
`documents, data, text, photos, images, graphics, music, audio, video and multimedia
`
`content, for use in the safeguarding of digital files, including audio, video, text, binary,
`
`still images, graphics and multimedia files, for retrieving personal documents, data, text,
`
`[)B2/ 24552257_1
`
`1
`
`Notice of Opposition
`Serial No. 85/879,036
`
`

`
`photos, images, graphics, music, audio, video and multimedia content from databases and
`
`computer networks
`
`Class 39: Electronic storage of digital media, namely, data, documents, text, photos,
`
`images, graphics, music, audio, video and multimedia content
`
`Class 42: Providing a website featuring technology that enables users to organize, store
`
`and access personal documents, data, text, photos, images, graphics, music, audio, video
`
`and multimedia content, for use in the safeguarding of digital files, including audio,
`
`video, text, binary, still images, graphics and multimedia files, to retrieve personal
`
`documents, data, text, photos, images, graphics, music, audio, video and multimedia
`
`content from databases and computer networks; Providing on-line non-downloadable
`
`software for the organization, storage and access by others of personal documents, data,
`
`text, photos, images, graphics, music, audio, video and multimedia content, for use in the
`
`safeguarding of digital files, including audio, video, text, binary, still images, graphics
`
`and multimedia files, for retrieving personal documents, data, text, photos, images,
`
`graphics, music, audio, video and multimedia content from databases and computer
`
`networks
`
`Class 45: On-line social networking services
`
`A true and correct copy of the TSDR and Assign Status printout for this application is attached
`
`hereto as Exhibit A.
`
`2.
`
`Forever filed its intent—to-use trademark application prior to the filing date of the
`
`opposed intent-to-use application at issue in this proceeding.
`
`3.
`
`Forever has expended time and effort in the development of its
`
`FOREVERTRUST mark for the applied-for products and services.
`
`1332/ 24552257,]
`
`2
`
`Notice of Opposition
`Serial No. 85/879,036
`
`

`
`Applicant’s Intent-to-Use Trademark Application
`
`4.
`
`On March 18, 2013, Applicant filed an intent-to-use application for
`
`FOREVERBOOK, Serial No. 85/879,036 for “Providing a nonprofit website that gives users the
`
`ability to create customized web pages memorializing the memory of the loved one(s) that they
`
`have lost.”
`
`5.
`
`On November 13, 2013, Applicant filed a Post-Publication Amendment amending
`
`the services description for FOREVERBOOK to “Providing a nonprofit website that gives users
`
`the ability to create customized web pages memorializing the memory of the loved one(s) that
`
`they have lost excluding hosting an online community or web—based networking service, offering
`
`chat rooms, electronic bulletin boards, online forums, weblogs, electronic messaging, or allow
`
`users to create sharable profiles that display connections with other users, and/or share photos
`
`and videos in connection with the web site.”
`
`6.
`
`7.
`
`The amendment was entered on December 4, 2013.
`
`The filing date of the opposed intent-to-use application is after the filing date of
`
`Forever’s intent-to-use application for the FOREVERTRUST mark.
`
`8.
`
`Applicant’s designation FOREVERBOOK was published for opposition in the
`
`Official Gazette on August 6, 2013.
`
`9.
`
`The Trademark Trial and Appeal Board extended the opposition period for the
`
`Applicant’s Designation by granting Forever’s timely request for an extension. The opposition
`
`period for Application Serial No. 85/879,036 currently expires on December 4, 2013. Therefore,
`
`Forever timely files this opposition.
`
`FIRST CAUSE OF ACTION
`
`(Likelihood of Confusion)
`
`10.
`
`Forever incorporates by reference and realleges as though fully set forth herein
`
`the allegations of paragraphs 1 through 9 of this Notice of Opposition.
`
`9132/ 245522511
`
`3
`
`Notice of Opposition
`Serial No. 85/879,036
`
`

`
`ll.
`
`The services set forth in the opposed application on their face overlap with and
`
`are directly related to the products and services that Forever intends to market, offer and sell
`
`under its FOREVERTRUST mark. Further, on information and belief, the services listed in the
`
`application will be offered and/or are to be sold through the same or overlapping channels of
`
`trade and/or in the same geographic locations, will be used and/or are likely to be used by the
`
`same or overlapping users, and will be used and/or are likely to be directed to the same or
`
`overlapping type of customers to whom Forever intends to offer, market, promote and sell its
`
`products and services using its FOREVERTRUST mark.
`
`12.
`
`The opposed, applied-for designation is substantially similar in terms of sight,
`
`sound, meaning and overall commercial impression as Forever’s FOREVERTRUST mark, and
`
`thereby is confusingly similar to Forever’s FOREVERTRUST mark. Indeed, the dominant
`
`element of the applied-for designation is the word FOREVER, which is the dominant element of
`
`Forever’s FOREVERTRUST mark.
`
`13.
`
`The designation covered by the opposed application is likely to cause confusion,
`
`or to cause mistake or disparage or deceive by falsely suggesting a connection with Forever and
`
`the products and services for which Forever intends to use its FOREVERTRUST mark, when
`
`there is no such connection.
`
`14.
`
`Forever believes it will be damaged by registration of the applied-for designation
`
`in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § l052(d). Unless Applicant’s
`
`application is denied, Forever will suffer irreparable damage and injury as a result of the
`
`confusion and false association that is likely to arise from the registration of opposed application.
`
`WHEREFORE, Forever prays that application Serial No. 85/879,036 be rejected, that no
`
`registration be issued thereon to Applicant, and that this opposition be sustained in favor of
`
`Forever.
`
`D132/245522574
`
`4
`
`Notice of Opposition
`Serial No. 85/879,036
`
`

`
`December 4, 2013
`
`Respectfully submitted,
`
`By:
`
`/s/ ROCHELLE D. ALPERT
`
`Rochelle D. Alpert
`Attorney for Forever, Inc.
`
`Rochelle D. Alpert
`Stephanie L. Hall
`Morgan, Lewis & Bockius, LLP
`One Market, Spear Street Tower
`San Francisco, CA 94105
`Telephone: (415) 442-1326
`Facsimile: (415) 442-1001
`Email:
`ralpert@morganlewis.com
`shall@morganlewis.com
`
`DB2/ 24552257.l
`
`Notice of Opposition
`Serial No. 85/879,036
`
`

`
`EXHIBIT A
`
`to NOTICE OF OPPOSITION
`
`(In the matter of Application Serial No. 85/879,036)
`
`1332/ 245522571
`
`
`Forever Inc. vs. Eric B. Goodman
`Application Serial No. 85/879,036
`Submitted by: Forever, Inc. (Opposer)
`
`

`
`Trademark Status & Document Retrieval
`
`Page 1 of 4
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2013-12-04 13:24:32 EST
`
`Mark:
`
`FOREVERTRUST
`
`US Serial Number:
`
`85737755
`
`Filed as TEAS Plus:
`
`Yes
`
`Register:
`
`Principal
`
`Mark Type:
`
`Trademark, Service Mark
`
`FOREVERTRU ST
`
`Application Filing Date: Sep. 25, 2
`
`Currently TEAS Plus: Yes
`
`Status:
`
`Notice of Allowance (NOA) sent (issued) to the applicant. Applicant must file a Statement of USl
`of the NOA issuance date.
`
`Status Date:
`
`Jul. 23, 2013
`
`Publication Date:
`
`May 28, 2013
`
`Mark information
`
`Mark Literal Elements:
`
`FOREVERTRUST
`
`Notice of Allowance Date:
`
`Jul. 23, 2C
`
`Standard Character Claim:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or
`
`Mark Drawing Type:
`
`4 — STANDARD CHARACTER MARK
`
`Goods and Services
`
`~ Note:
`
`The following symbols indicate that the registrant/owner has arnended the goods/services:
`~ Brackets [..] indicate deleted goods/services;
`
`~ Doubie parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of
`~ Asterisks *'..* identify additional (new) wording in the goods/services.
`For:
`
`Computer software for the organization, storage and access by others of personal documents, <
`music, audio, video and multimedia content, for use in the safeguarding of digital files, including
`
`graphics and multimedia files, for retrieving personal documents, data, text, photos, images, grz
`multimedia content from databases and computer networks
`
`International Class(es):
`
`009 — Primary Class
`
`U.S Class(es): O21, O23,
`
`Class Status:
`
`ACTlVE
`
`Basis:
`
`1 (b)
`
`For:
`
`Promoting the goods and services of others via a global computer network; Providing consumei
`
`International C|ass(es):
`
`O35 - Primary Class
`
`Class Status:
`
`ACTIVE
`
`U.S Class(es): 100, 101,
`
`http://tsdr.uspto.gov/
`
`12/4/2013
`
`

`
`Trademark Status & Document Retrieval
`
`Page 2 of 4
`
`Basis:
`
`1(b)
`
`For:
`
`insurance information and consultancy; investment advice; Providing information and advice in
`financial valuations, and the financial aspects of retirement
`
`international C|ass(es):
`
`O36 - Primary Class
`
`U.S C|ass(es): 100, 101,
`
`Class Status:
`
`ACTlVE
`
`Basis:
`
`itb)
`
`For:
`
`Electronic storage of digital media, namely, data, documents, text, photos, images, graphics, mi
`
`international C|ass(es):
`
`039 - Primary Class
`
`U.S Class(es): 100, 105
`
`Class Status:
`
`ACTIVE
`
`Basis:
`
`1(b)
`
`For:
`
`Providing a website featuring technology that enables users to organize, store and access persi
`
`images, graphics, music, audio, video and multimedia content, for use in the safeguarding of dig
`
`binary, still images, graphics and multimedia files, to retrieve personal documents, data, text, pt
`video and multimedia content from databases and computer networks; Providing on—line non—dc
`
`organization, storage and access by others of personal documents, data, text, photos, images,
`multimedia content, for use in the safeguarding of digital files, including audio, video, text, binar
`
`files, for retrieving personal documents, data, text, photos, images, graphics, music, audio, vide
`databases and computer networks
`
`international C|ass(es):
`
`042 — Primary Class
`
`U.S C|ass(es): 100, 101
`
`Class Status:
`
`ACTIVE
`
`Basis:
`
`1 (b)
`
`For:
`
`On—line social networking services
`
`international Class(es):
`
`045 - Primary Class
`
`U.S C|ass(es): 100, 101
`
`Class Status:
`
`ACTlVE
`
`Basis:
`
`1(b)
`
`Basis information (Case Level)
`
`Filed Use:
`
`Filed ITU:
`
`Filed 44D:
`
`Filed 44E:
`
`Filed 66A:
`
`Filed No Basis:
`
`No
`
`Yes
`
`No
`
`No
`
`No
`
`No
`
`Currently Use: No
`
`Currentiy ITU: Yes
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`http://tsdr.uspto.goV/
`
`12/4/2013
`
`

`
`Trademark Status & Document Retrieval
`
`Page 3 of 4
`
`Current Owner(s) Information
`
`Owner Name: FOREVER, INC,
`
`Owner Address: ONE PPG PLACE, 20TH FLOOR
`
`PITTSBURGH, PENNSYLVANIA 15222
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`A
`
`Attorney Name: Rochelle D. Alpert
`
`Attorney Primary Email
`Address:
`
`ralpert@morganlewis.com
`
`E Correspondent
`
`Correspondent ROCHELLE D. ALPERT
`NameIAddress: MORGAN, LEWIS & BOCKIUS LLP
`1 MARKET SPEAR STREET TOWER
`
`SAN FRANCISCO, CALIFORNIA 94105
`UNITED STATES
`
`State or Country Where DELAWAI
`
`Organized:
`
`Docket Number: O61729—0’
`
`Attorney Email Authorized: Yes
`
`Phone:
`
`(415) 442-1326
`
`Fax:
`
`(415) 442
`
`Correspondent e-mail:
`
`raipert@morganlewis.com
`
`Correspondent e-mail Yes
`Authorized:
`
`' Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Aug. 21, 2013
`
`Jul. 24,2013
`
`V
`
`IJul. 23, 2013
`‘
`
`Jul. 03, 2013
`
`May 28,2013
`
`May 28, 2013
`%May 08,2013
`
`Description
`
`Proceeding Number
`
`AUTOMATIC UPDATE OF ASSIGNMENT
`OF OWNERSHIP
`
`AUTOMATIC UPDATE OF ASSIGNMENT
`
`OF OWNERSHIP
`
`NOA E—MAlLED — SOU REQUIRED FROM
`APPLICANT
`
`ASSIGNED TO EXAMINER
`
`81092
`
`OFFICIAL GAZETTE PUBLICATION
`CONFIRMATION E-MAILED
`
`PUBLISHED FOR OPPOSITION
`NOTIFICATION OF NOTICE OF
`PUBLICATION E—MAILED
`
`http://tsdr.uspto.g0V/
`
`12/4/2013
`
`

`
`Trademark Status & Document Retrieval
`
`Page 4 of 4
`
`IApr. 19,2013
`
`_
`
`§Apr. 19,2013
`
`‘Mar. 29,2013
`
`4
`Mar. 27, 2013
`
`Mar. 27,2013
`’
`
`Mar. 27, 2013
`
`Mar. 27, 2013
`
`Feb. 25, 2013
`T
`
`iFeb. 25, 2013
`
`Feb. 25, 2013
`
`Feb. 06,2013
`
`‘
`
`Feb. 05, 2013
`
`Feb. 06, 2013
`
`Jan. 23, 2013
`
`ioct. 02, 2012
`
`iSep. 30, 2012
`i
`
` Sep. 28, 2012
`
`77312
`
`77312
`
`88888
`
`6328
`
`6328
`
`85334
`
`88889
`
`88889
`
`6325
`
`6325
`
`85334
`
`85334
`
`LAW OFFICE PUBLICATION REVIEW
`
`COMPLETED
`
`ASSIGNED TO LIE
`
`APPROVED FOR PUB — PRINCIPAL
`
`REGISTER
`EXAMiNER'S AMENDMENT ENTERED
`
`NOTIFICATION OF EXAMINERS
`AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT E—MA|LED
`
`EXAMINERS AMENDMENT WRITTEN
`
`TEAS/EMAIL CORRESPONDENCE
`ENTERED
`
`CORRESPONDENCE RECEIVED IN LAW
`OFHCE
`
`TEAS RESPONSE TO OFFICE ACTION
`RECEIVED
`
`NOTIFICATION OF NON-FINAL ACTION E-
`
`MAILED
`
`NON—FiNAL ACTION E—MAiLED
`
`NON~F|NAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NOTICE OF PSEUDO MARK MAILED
`
`NEW APPLICATION OFFICE SUPPLIED
`DATA ENTERED IN TRAM
`
`NEW APPLICATION ENTERED |N TRAM
`
`Tivi Staff and Location information
`
`TM Staff Information
`
`TM Attorney: HELLMAN, ELI J
`
`Law Office Assigned: LAW OFF
`
`File Location
`Current Location:
`
`INTENT TO USE SECTION
`
`Date in Location:
`
`Jul. 23, 2C
`
`Assignment Abstract Of Title information - Click to Load
`
`Proceedings - Click to Load
`
`http://tsdr.usptO.gOV/
`
`12/4/2013
`
`

`
`TRADEMARK
`
`DOCKET NO. 061729-9020
`
`PROOF OF SERVICE
`
`I am a resident of the State of California and over the age of eighteen years, and not a party
`to the within action; my business address is One Market, Spear Street Tower, San Francisco,
`CA 94105.
`
`On December 4, 2013, I served the within document(s) on the party(ies) listed below:
`
`NOTICE OF OPPOSITION (with Exhibit A) — Serial No. 85/879,036
`
`PARTY SERVED
`
`WENDY PETERSON
`NOT JUST PATENTS
`P.O. BOX 18716
`
`MINNEAPOLIS, MN 55418
`
`METHOD or SERVICE
`
`.
`.
`.
`Via First Class Mail
`
`M (BY MAIL) I placed the sealed envelope(s) for collection and mailing by following the
`ordinary business practices of Morgan, Lewis & Bockius LLP, San Francisco, California.
`readily familiar with the firm’s practice for collecting and processing of correspondence for
`mailing with the United States Postal Service, said practice being that, in the ordinary course of
`business, correspondence with postage fully prepaid is deposited with the United States Postal
`Service the same day as it is placed for collection.
`
`I am
`
`[__|
`
`(BY OVERNIGHT DELIVERY) I placed the sealed envelope(s) or package(s) designated by
`the express service carrier for collection and overnight delivery by following the ordinary
`business practices of Morgan, Lewis & Bockius LLP, San Francisco, California.
`I am readily
`familiar with the firm’s practice for collecting and processing of correspondence for overnight
`delivery, said practice being that, in the ordinary course of business, correspondence for
`overnight delivery is deposited with delivery fees paid or provided for at the carrier’s express
`service offices for next—day delivery the same day as the correspondence is placed for collection.
`
`B (BY PERSONAL SERVICE) I caused t the document(s) listed above to be personally
`delivered to the person(s) at the address(es) set forth above (through Professional Messenger).
`
`E]
`
`(BY FACSIMILE) I caused the documents to be transmitted by facsimile machine at the time
`stated on the attached transmission report(s). The facsimile transmission(s) was reported as
`complete and without error.
`E (E-MAIL) I transmitted via E-MAIL the document(s) listed above to the person(s) at the
`address(es) set forth below.
`
`I declare under penalty of
`Executed on December 4, 2013, at San Francisco, California.
`perjury, under the laws of the United States of America, that the foregoing is true and correct.
`fléaa,
`
`Yel
`
`a Lolua
`
`DB2/24552257.1