Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA590730
`ESTTA Tracking number:
`03/05/2014
`
`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
`
`OMS Investments, Inc.
`03/05/2014
`
`10250 Constellation Blvd., Suite 2800
`Los Angeles, CA 90067
`UNITED STATES
`
`Attorney
`information
`
`John Gary Maynard, III
`Hunton & Williams LLP
`951 East Byrd Street Riverfront Plaza - East Tower
`Richmond, VA 23219-4074
`UNITED STATES
`HWRITM@hunton.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86021137
`03/05/2014
`
`Publication date
`Opposition
`Period Ends
`
`11/05/2013
`03/05/2014
`
`Apollo Marketing LLC
`17 Yale Road NE
`Rome, GA 30161
`GABON
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Protective gloves for industrial and military
`use, and for protection against bodily harm and blunt force trauma
`Class 021. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Household gloves for general use; work
`gloves
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Gloves; bicycle gloves; snowmobile racing
`gloves
`Class 028. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Gloves for sports, namely, baseball batting
`gloves, football gloves, rock climbing gloves, goalkeepers' gloves, golf gloves, tennis gloves, waterski
`gloves, windsurfing gloves, work-out gloves, competitive lumberjacking gloves and weightlifting
`gloves
`
`Grounds for Opposition
`
`

`
`Deceptiveness
`Priority and likelihood of confusion
`Dilution
`
`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. Registration
`No.
`Registration Date
`
`668868
`
`10/28/1958
`
`Application Date
`
`02/28/1958
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MIRACLE-GRO
`
`NONE
`
`Class 001. First use: First Use: 1951/04/15 First Use In Commerce: 1951/04/15
`WATER SOLUBLE PLANT FOOD
`
`U.S. Registration
`No.
`Registration Date
`
`1223038
`
`01/11/1983
`
`Application Date
`
`10/24/1980
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MIRACLE-GRO
`
`NONE
`
`Class 001. First use: First Use: 1980/10/01 First Use In Commerce: 1980/10/01
`Fertilizer in the Form of Spikes for Trees and Shrubs
`
`U.S. Registration
`No.
`Registration Date
`
`3456832
`
`07/01/2008
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`06/25/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 007. First use: First Use: 2007/03/12 First Use In Commerce: 2007/03/12
`composter machines and components thereof for recycling solid waste
`
`U.S. Registration
`No.
`
`2820953
`
`Application Date
`
`03/04/2003
`
`

`
`Registration Date
`
`03/09/2004
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`The mark consists of the word "MIRACLE-GRO" in a bullseye logo with a green
`leaf dotting the "I" in "MIRACLE-GRO" and ayellow ring in the bullseye.
`Class 001. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`Fertilizers for domestic use; plant food; garden soil; potting mix; seed starter mix
`for domestic use; root stimulatinghormone that converts plant cells to stem cells
`Class 005. First use: First Use: 2000/00/00 First Use In Commerce: 2000/00/00
`Herbicides for domestic use
`Class 021. First use: First Use: 2000/12/31 First Use In Commerce: 2000/12/31
`Garden feeders, namely, containers designed to hold plant food and are used to
`feed and water plants
`Class 031. First use: First Use: 2001/01/00 First Use In Commerce: 2001/01/00
`Sphagnum peat moss
`
`2601682
`
`Application Date
`
`06/29/1999
`
`07/30/2002
`
`Foreign Priority
`Date
`MIRACLE-GRO POUR & FEED
`
`NONE
`
`NONE
`
`Class 001. First use: First Use: 2002/03/04 First Use In Commerce: 2002/03/04
`fertilizer for home and garden use
`
`2618699
`
`Application Date
`
`04/14/2000
`
`09/10/2002
`
`Foreign Priority
`Date
`MIRACLE-GRO GARDEN WEED PREVENTER
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 001. First use: First Use: 2001/03/01 First Use In Commerce: 2001/03/01
`Fertilizers for domestic use
`Class 005. First use: First Use: 2001/03/01 First Use In Commerce: 2001/03/01
`Herbicides for domestic use
`
`U.S. Registration
`No.
`Registration Date
`
`3233837
`
`04/24/2007
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`03/04/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word "MIRACLE-GRO" in a bullseye logo with a green
`leaf dotting the "I" in "MIRACLE-GRO" and ayellow ring in the bullseye.
`Class 001. First use: First Use: 2000/12/00 First Use In Commerce: 2000/12/00
`CHARCOAL FOR HORTICULTURAL PURPOSES ANDFOR USE AS A SOIL
`CONDITIONER; PERLITE FOR HORTICULTURAL PURPOSES AND FOR
`USE AS A SOIL CONDITIONER
`
`U.S. Registration
`No.
`Registration Date
`
`2822655
`
`03/16/2004
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`03/04/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the word "MIRACLE-GRO" in a bullseye logo with a leaf
`dotting the "I" in "MIRACLE-GRO" and a ring in the bullseye.
`Class 001. First use: First Use: 1997/01/00 First Use In Commerce: 1997/01/00
`Fertilizers for domestic use; plant food; garden soil; potting mix; seed starter mix
`for domestic use; root stimulatinghormone that converts plant cells to stem cells
`Class 005. First use: First Use: 2000/00/00 First Use In Commerce: 2000/00/00
`Herbicides for domestic use
`
`

`
`Class 021. First use: First Use: 2000/12/31 First Use In Commerce: 2000/12/31
`Garden feeders, namely containers designed to hold plant food and are used to
`feed and water plants
`Class 031. First use: First Use: 2001/01/00 First Use In Commerce: 2001/01/00
`Sphagnum peat moss
`
`U.S. Registration
`No.
`Registration Date
`
`4026583
`
`09/13/2011
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/07/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 031. First use: First Use: 2011/03/00 First Use In Commerce: 2011/03/00
`Flower, vegetable and plant seeds for domestic use
`
`3190987
`
`Application Date
`
`09/03/2004
`
`01/02/2007
`
`Foreign Priority
`Date
`MIRACLE-GRO GARDEN SOIL FLOWERS & VEGETABLES
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 001. First use: First Use: 2005/02/01 First Use In Commerce: 2005/02/01
`GARDEN SOIL, PLANTING SOIL, SOIL CONTAINING ADDITIVES, SOIL
`CONDITIONERS FOR AGRICULTURAL, DOMESTIC OR HORTICULTURAL
`USE AND FERTILIZERS FOR SOIL AND POTTING SOIL
`
`U.S. Registration
`No.
`
`2877413
`
`Application Date
`
`06/13/2003
`
`

`
`Registration Date
`
`08/24/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MIRACLE-AERATOR
`
`NONE
`
`Class 001. First use: First Use: 1991/12/31 First Use In Commerce: 1991/12/31
`Indoor plant food spikes
`
`U.S. Registration
`No.
`Registration Date
`
`3747803
`
`02/09/2010
`
`Application Date
`
`08/12/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`THE MIRACLE IS IN THE MIX
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 001. First use: First Use: 2009/03/13 First Use In Commerce: 2009/03/13
`Potting mix; potting mix containing fertilizers and other soil amendments for
`domestic use
`
`3180531
`
`Application Date
`
`12/30/2005
`
`12/05/2006
`
`Foreign Priority
`Date
`MIRACLE-GRO ORGANIC CHOICE
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 001. First use: First Use: 2003/03/31 First Use In Commerce: 2003/03/31
`Fertilizers for domestic use, potting soil, blood meal, and bone meal
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`4289145
`
`02/12/2013
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2000/12/31 First Use In Commerce: 2000/12/31
`Herbicides, insecticides
`
`U.S. Registration
`No.
`Registration Date
`
`4289146
`
`02/12/2013
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2005/12/31 First Use In Commerce: 2005/12/31
`Fertilizer and plant food mixers and sprayers attached to garden hoses; pots for
`plants and flowers; containers for plants and flowers
`
`U.S. Registration
`No.
`Registration Date
`
`4289147
`
`02/12/2013
`
`Word Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording Miracle-Gro across the front of a round
`circlewith a 3 leaf flower over the i and a hyphen between the e and g in Miracle-
`Gro.
`Class 005. First use: First Use: 2011/12/00 First Use In Commerce: 2011/12/00
`Insecticides
`
`U.S. Registration
`No.
`Registration Date
`
`4289148
`
`02/12/2013
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "Miracle-Gro" across the front of a round circle
`with a 3 leaf flower over the "i" anda hyphen between the "e" and "g" in "Miracle-
`Gro".
`Class 021. First use: First Use: 2011/03/00 First Use In Commerce: 2011/03/00
`Pots for plants and flowers; containersfor plants and flowers
`
`U.S. Registration
`No.
`Registration Date
`
`4301017
`
`03/12/2013
`
`Word Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/17/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 001. First use: First Use: 1951/04/15 First Use In Commerce: 1951/04/15
`fertilizer, growing media for plants, soil conditioners for domestic and
`horticultural use, soil amendments, garden soil, planting soil, potting soil, potting
`mix, root stimulating hormone for plants, leaf shine
`
`U.S. Registration
`No.
`Registration Date
`
`4301405
`
`03/12/2013
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 031. First use: First Use: 2001/01/31 First Use In Commerce: 2001/01/31
`live plants; peat moss; planting and gardening kits for indoor and outdoor
`planting comprised primarily of pots and growing containers and growing media
`and also including seeds for fruit, seeds for vegetables, seeds for herbs, seeds
`for flowers, and live plants, soil, mulch andfertilizer
`
`U.S. Registration
`No.
`Registration Date
`
`4301406
`
`03/12/2013
`
`Word Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "Miracle-Gro" across the front of a round circle
`with a 3 leaf flower over the "i" anda hyphen between the "e" and "g" in "Miracle-
`Gro".
`Class 001. First use: First Use: 2000/03/00 First Use In Commerce: 2000/03/00
`growing media for plants, soil amendments, soil conditioners for domestic and
`horticultural use, planting soil, pottingsoil, leaf shine
`
`U.S. Registration
`No.
`Registration Date
`
`4301407
`
`03/12/2013
`
`Word Mark
`Design Mark
`
`MIRACLE-GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "Miracle-Gro" across the front of a round circle
`with a 3 leaf flower over the "i" anda hyphen between the "e" and "g" in "Miracle-
`Gro".
`Class 031. First use: First Use: 2011/03/00 First Use In Commerce: 2011/03/00
`live plants; seeds for planting; planting and gardening kits for indoor and outdoor
`planting comprised primarily of pots and growing containers and growing media
`and also including seeds for fruit, seeds for vegetables, seeds for herbs, seeds
`for flowers, and live plants, soil, mulch and fertilizer
`
`U.S. Registration
`No.
`Registration Date
`
`4301408
`
`03/12/2013
`
`Word Mark
`
`MIRACLE GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "MIRACLE-GRO" in white across the front of a
`circle. The outer circle is black, the inner circle is yellow and the interior of the
`circle is black. There is a green 3 leaf flower over the letter "I".
`Class 001. First use: First Use: 2000/03/00 First Use In Commerce: 2000/03/00
`growing media for plants, soil amendments, soil conditioners for domestic and
`horticultural use, planting soil, pottingsoil, leaf shine
`
`U.S. Registration
`No.
`Registration Date
`
`4301409
`
`03/12/2013
`
`Word Mark
`Design Mark
`
`MIRACLE GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "MIRACLE-GRO" in white across the front of a
`circle. The outer circle is black, the inner circle is yellow and the interior of the
`circle is black. There is a green 3 leaf flower over the letter "I".
`Class 005. First use: First Use: 2011/12/31 First Use In Commerce: 2011/12/31
`Insecticides
`
`U.S. Registration
`No.
`Registration Date
`
`4301410
`
`03/12/2013
`
`Word Mark
`
`MIRACLE GRO
`
`Application Date
`
`07/27/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "MIRACLE-GRO" in white across the front of a
`circle. The outer circle is black, the inner circle is yellow and the interior of the
`circle is black. There is a green 3 leaf flower over the letter "I".
`Class 031. First use: First Use: 2011/03/00 First Use In Commerce: 2011/03/00
`live plants; seeds for planting; planting and gardening kits for indoor and outdoor
`planting comprised primarily of pots and growing containers and growing media
`and also including seeds for fruit, seeds for vegetables, seeds for herbs, seeds
`for flowers, and live plants, soil, mulch and fertilizer
`
`U.S. Registration
`No.
`Registration Date
`
`4462833
`
`01/07/2014
`
`Word Mark
`Design Mark
`
`MIRACLE GRO
`
`Application Date
`
`08/07/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "MIRACLE-GRO" in white across the front of a
`circle. The outer circle is black, the inner circle is yellow and the interior of the
`circle is black. There is a green 3 leaf flower over the letter "I".
`Class 021. First use: First Use: 2011/03/00 First Use In Commerce: 2011/03/00
`Pots for plants and flowers; containersfor plants and flowers
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`4376465
`
`Application Date
`
`12/27/2012
`
`07/30/2013
`
`Foreign Priority
`Date
`MIRACLE-GRO PROFESSIONAL TREE & SHRUB CARE
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`The mark consists of the wording "Miracle-Gro" across the front of a round circle
`with a 3 leaf flower over the "i" anda hyphen between the "e" and "g" in "Miracle-
`Gro" above the wording "Professional Tree & Shrub Care".
`Class 044. First use: First Use: 1998/01/31 First Use In Commerce: 1998/01/31
`Lawn, tree and shrub care, landscape gardening services and consulting
`servicesin the field of lawn, tree and shrub care and landscape gardening
`
`2809982
`
`Application Date
`
`09/12/2002
`
`02/03/2004
`
`Foreign Priority
`Date
`MIRACLE-GRO TREE & SHRUB CARE
`
`NONE
`
`NONE
`
`Class 044. First use: First Use: 1998/01/31 First Use In Commerce: 1998/01/31
`lawn, tree and shrub care, landscape gardening services and consulting
`servicesin the field of lawn, tree and shrub care and landscape gardening
`
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`MIRACLE GRIP.pdf(5658915 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
`
`/John Gary Maynard, III/
`John Gary Maynard, III
`03/05/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 86/021,137
`Published in the Oficial Gazette on November 5, 2013
`Mark: MIRACLE GRIP
`
`Opposition No.
`
`) )
`
`)
`
`) )
`
`) )
`
`) )
`
`) )
`
`OMS Investments, Inc.,
`
`Opposer,
`
`V.
`
`Apollo Marketing, LLC,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`OMS Investments, Inc., a corporation organized and existing under the laws of Delaware,
`
`with an office at 10250 Constellation Boulevard, Suite 2800, Los Angeles, California 90067
`
`(“Opposer”), believes it will be damaged by registration of the mark MIRACLE GRIP as shown
`
`in Application Serial No. 86/021,137, and hereby opposes its registration pursuant to 15 U.S.C.
`
`§§ 1051 et seq., including specifically 15 U.S.C. § 1063.
`
`This Notice of Opposition has been timely filed. As grounds for its opposition, Opposer
`
`alleges as follows:
`
`1.
`
`Upon information and belief, applicant Apollo Marketing, LLC is a company in
`
`Georgia with a mailing address of 17 Yale Road NE Rome, GA 30161 (“Applicant”).
`
`2.
`
`As evidenced in Application Serial No. 86/021,137, Applicant seeks to register
`
`the mark MIRACLE GRIP for “protective gloves for industrial and military use, and for
`
`protection against bodily harm and blunt force trauma” in International Class 009; “household
`
`gloves for general use; work gloves” in International Class 021; “gloves; bicycle gloves;
`
`

`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Page 2 of 9
`snowmobile racing gloves” in International Class 025; and “gloves for sports, namely, baseball
`
`batting gloves, football gloves, rock climbing gloves, goalkeepers’ gloves, golf gloves, tennis
`
`gloves, waterski gloves, windsurfing gloves, work—out gloves, competitive lumberjacking gloves
`
`and weightlifting gloves” in International Class 028; (the “Applied—For Mark”).
`
`3.
`
`Opposer, through its predecessors in interest and affiliates, has used in commerce
`
`its family of GRO marks, including its famous and distinctive MIRACLE—GRO mark, since
`
`1951. Over the years, the marks have been used on and in connection with fertilizer, grass seed,
`
`and a variety of other lawn and garden products and services including gloves. Opposer owns
`
`several federal trademark registrations incorporating its GRO marks as reflected in the following
`
`representative registrations (“Opposer’s Marks”):
`
`
`
`
`
`MIRACLE—GRO
`
`
`
`MIRACLEGRO
`
`0,668,868
`
`1,223,038
`
`
`I. g‘
`International Class 10: Water soluble plant food.
`
`
`
`International Class 01: Fertilizer in the Form of Spikes .
`for Trees and Shrubs
`
`
`
`
`
`
`
`
`MIRACLEGRO
`
`3,456,832
`
`International Class 7: Composter machines and
`components thereof for recycling SOl1d waste.
`
`International Class 1: Fertilizers for domestic use;
`plant food; garden soil; potting mix; seed starter mix
`for domestic use; root stimulating hormone that
`converts plant cells to stem cells.
`
`
`
`
`
`International Class 5 2 Herbicides for domestic use.
`
`International Class 21: Garden feeders, namely,
`containers designed to hold plant food and are used to
`feed and water plants.
`
`International Class 31: Sphagnum peat moss.
`International Class Ol: fertilizer for home and garden
`use
`
`MIRACLE—GRO & Design
`
`2,820,953
`
`MIRACLE~GRO POUR &
`FEED
`
`2,601,682
`
`
`
`
`MIRACLE—GRO TREE &
`
`2,809,982
`SHRUB CARE
`
`
`
`
`
`
`
`
`
`International Class 44: lawn, tree and shrub care,
`landscape gardening services and consulting services
`in the field of lawn, tree and shrub care and landscape
`gardening
`
`
`
`MIRACLE—GRO GARDEN
`
`
`
`2,518,699
`
`International Class Ol: Fertilizers for domestic use
`
`

`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Pa e 3 of 9
`
`
`1,
`Goéis/services
`
`International Class 05: Herbicides for domestic use
`
`
`
`
`
`
`
`WEED PREVENTER ‘
`
`
`
`
`
`
`
`
`
`
`
`
`International Class 01: CHARCOAL FOR
`HORTICULTURAL PURPOSES AND FOR USE AS
`A SOIL CONDITIONER; PERLITE FOR
`HORTICULTURAL PURPOSES AND FOR USE AS
`A SOIL CONDITIONER
`
`
`
`
`
`
`
`
`
`MIRACLE—GRO
`
`3,233,837
`
`MIRACLEGRQ
`
`2,822,655
`
`MIRACLEGRO
`
`4,026,583
`
`MIRACLE—GRO GARDEN
`SOIL FLOWERS &
`VEGETABLES
`
`MIRACLE-AERATOR
`
`THE MIRACLE IS IN THE
`MIX
`
`
`
`MIRACLE—GRO
`ORGANIC CHOICE
`
`MIRACLE—GRO
`
`
`
`MIRACLE—GRO
`
`MIRACLE—GRO
`
`MIRACLEGRO
`
`MIRACLE—GRO
`
`
`
`
`
`3,190,987
`
`2,877,413
`
`3,747,803
`
`3 180 53]
`’
`’
`
`4,289,145
`
`4,289,146
`
`
`International Class 01: Fertilizers for domestic use;
`plant food; garden soil; potting mix; seed starter mix
`
`for domestic use; root stimulating hormone that
`
`converts plant cells to stem cells
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`International Class 05: Herbicides for domestic use
`
`International Class 21: Garden feeders, namely
`containers designed to hold plant food and are used to
`feed and water plants
`
`International Class 31: Sphagnum peat moss
`
`International Class 31: Flower, vegetable and plant
`seeds for domestic use
`
`International Class 01: GARDEN SOIL, PLANTING
`SOIL, SOIL CONTAINING ADDITIVES, SOIL
`CONDITIONERS FOR AGRICULTURAL,
`DOMESTIC OR HORTICULTURAL USE AND
`FERTILIZERS FOR SOIL AND POTTING SOIL
`
`International Class 01: Indoor plant food spikes
`
`International Class 01: Potting mix; potting mix
`containing fertilizers and other soil amendments for
`domestic use
`
`International Class 01: Fertilizers for domestic use,
`potting soil, blood meal, and bone meal
`
`International Class 05: Herbicides, insecticides
`
`International Class 21: Fertilizer and plant food
`mixers and sprayers attached to garden hoses; pots for
`plants and flowers; containers for plants and flowers
`
`
`
`
`
`
`
`
`
`
`
`
`
`4,289,147
`
`International Class 05 Insecticides
`
`4,289,148
`
`International Class 21: Pots for plants and flowers;
`containers for plants and flowers
`
`4,301,017
`
`
`
`International Class 01: fertilizer, growing media for
` plants, soil conditioners for domestic and horticultural
`
`use, soil amendments, garden soil, planting soil,
`
`
`potting soil, potting mix, rootstimulating hormone for
`
`
`plants, leaf shine
`
`
`

`
`’
`
`
`
`
`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Pae 4 of 9
`
`
`
`
`
`
`live plants; peat moss; planting
`International Class 31:
`and gardening kits for indoor and outdoor planting
`comprised primarily of pots and growing containers
`and growing media and also including seeds for fruit,
`
`
`
`
`
`seeds for vegetables, seeds for herbs, seeds for
`
`flowers, and live plants, soil, mulch and fertilizer
`
`International Class 0]: growing media for plants, soil
`amendments, soil conditioners for domestic and
`
`horticultural use, planting soil, potting soil, leaf shine
`
`_
`MIRACLE GRO
`
`4’301’4O5
`
`
`
`
`MIRACLE—GRO
`
`4,301,406
`
`MIRACLE—GRO
`
`4,301,407
`
`MIRACLE—GRO
`
`4,301,408
`
`
`
`
`
`
`
`
`MIRACLE—GRO
`
`4,301,410
`
`
`
`
`
`
`
`live plants; seeds for planting;
`International Class 31:
`planting and gardening kits for indoor and outdoor
`planting comprised primarily of pots and growing
`containers and growing media and also including
`seeds for fruit, seeds for vegetables, seeds for herbs,
`seeds for flowers, and live plants, soil, mulch and
`fertilizer
`
`
`
`
`
`
`
`
`International Class 01: growing media for plants, soil
`amendments, soil conditioners for domestic and
`horticultural use, planting soil, potting soil, leaf shine
`
`live plants; seeds for planting;
`International Class 31:
`planting and gardening kits for indoor and outdoor
`planting comprised primarily of pots and growing
`containers and growing media and also including
`seeds for fruit, seeds for vegetables, seeds for herbs,
`seeds for flowers, and live plants, soil, mulch and
`fertilizer
`
`MIRACLEGRO
`
`4,462,833
`
`International Class 21: Pots for plants and flowers;
`containers for plants and flowers
`
`MIRACLEGRO
`International Class 44: Lawn, tree and shrub care,
`
`
`
`PROFESSIONAL TREE &
`landscape gardening services and consulting services
`
`
`
`
`in the field of lawn, tree and shrub care and landscape
`SHRUB CARE
`gardening
`
`
`
`
`
`
`4,376,465
`
`True and correct copies of the electronic records for these registrations printed from the United
`
`States Patent and Trademark Office’s (“USPTO”) Trademark Applications and Registrations
`
`Retrieval (“TARR”) online database are attached hereto as Exhibit A. Each of the registrations
`
`noted above were issued on the Principal Register and are presently in full force and effect.
`
`Notably, Registration Nos. 0,668,868 and 2,820,953 are incontestable. Additionally, Opposer
`
`

`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Page 5 of 9
`owns an intent to use application, filed on August 7, 2012, for MIRACLE GRO in connection
`
`with gardening gloves (Application Serial No. 85/697,466). A true and correct copy of the
`
`electronic record for this application printed from the United States Patent and Trademark
`
`Office’s (“USPTO”) Trademark Applications and Registrations Retrieval (“TARR”) online
`
`database are attached hereto as Exhibit B.
`
`4.
`
`5.
`
`Opposer’s Marks are valid and distinctive.
`
`Opposer has expended and continues to expend substantial time, money and effort
`
`in advertising and promoting Opposer’s Marks to identify itself as the source of its goods and
`
`services, such as in newspapers, magazines, sponsorships, and through nationally broadcast
`
`television and radio commercials. As a result, Opposer’s Marks are some of the most
`
`recognizable and valuable brands in the lawn, garden and horticulture industry. Moreover, due
`
`to the national, and indeed, worldwide consumer recognition of Opposer’s Marks, consumers
`
`have come to recognize MIRACLE—GRO as also symbolizing the goodwill inherent in Opposer’s
`
`Marks, and further, associate MlRACLE—GRO solely with Opposer and its line of high quality
`
`products.
`
`6.
`
`No issue of priority exists with respect to Opposer’s first use of one or more of
`
`Opposer’s Marks as set forth above and the Applied—For Mark. Opposer has used, promoted and
`
`advertised its goods and services under one or more of Opposer’s Marks in commerce for over
`
`62 years, since at least as early as 1951. Conversely, Applicant alleges only an intent to use the
`
`MIRACLE GRIP mark in commerce, which means that Opposer has priority over Applicant with
`
`respect to the Applied—For Mark.
`
`7.
`
`The Applied—For Mark is confusingly similar to Opposer’s Marks because it is
`
`similar in appearance, sound and commercial impression, pursuant to 15 U.S.C. § 1052(d).
`
`

`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Page 6 of 9
`Among other things, the Applied—For Mark contains the distinctive and dominant component
`
`“MIRACLE,” which is a prominent element in Applicant’s mark and which is identical to the
`
`famous and distinctive “MIRACLE” element in Opposer’s Marks.
`
`In addition, the other
`
`elements of the two marks both start with GR: “GRO” and “GRIP”. Taken as a whole, the
`
`Applied—For Mark shares a similar commercial impression with Opposer’s Marks, thereby
`
`creating a risk of consumer confusion. Specifically, consumers may believe, incorrectly, that the
`
`Applied-For Mark is an extension of Opposer’s family of MIRACLE—GRO marks. The
`
`likelihood of confusion between the Applied—For Mark and Opposer’s Marks is further
`
`exacerbated because the goods sold under the Applied—For Mark are closely related to the
`
`products sold under Opposer’s Marks and there is likely to be direct overlap in the parties’
`
`marketing, trade channels and targeted consumers.
`
`8.
`
`Given the goodwill and public recognition arising from the association of
`
`Opposer’s Marks with Opposer, consumers are likely to believe that Opposer has licensed,
`
`approved or otherwise authorized Applicant’s use of the Applied—For Mark when it has not.
`
`9.
`
`Applicant’s use and registration of the Applied—For Mark will also cause dilution
`
`by blurring of Opposer’s famous marks, whose fame was established well before Applicant first
`
`used the Applied—For Mark, as prohibited by 15 U.S.C. § ll25(c).
`
`10.
`
`The maturation of Applicant’s application into registration will cause a likelihood
`
`of confusion, mistake or deception with respect to the source or origin of Applicant’s goods.
`
`Consumers will erroneously believe that Applicant’s goods are produced by or associated with,
`
`Opposer.
`
`

`
`11.
`
`Page 7 of 9
`In summary, registration of the Applied-For Mark would be incorrect and
`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`improper in View of the requirements of the Trademark Act of 1946, as amended, including
`
`specifically but not limited to, the provisions of 15 U.S.C. §§ 1051, et seq.
`
`WHEREFORE, Opposer prays that this Opposition be sustained, and that registration to
`
`Applicant for the mark MIRACLE GRIP as shown in Application Serial No. 86/021,137 for the
`
`goods identified in International Classes 009, 021, 025, and 028 be denied.
`
`Opposer submits this Notice of Opposition Via the e—filing procedure of the Trademark
`
`Trial and Appeal Board (“the Board”), and hereby advises the Board that it may debit the
`
`Deposit Account No. 083436 of Hunton & Williams LLP for the appropriate filing fee.
`
`

`
`Dated: March 5, 2014
`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Page 8 of 9
`
`Respectfully submitted,
`
`1744/»
`/
`
`ohn Gary
`aynar
`
`
`
`951 East Byrd Street
`Riverfront Plaza, East Tower
`Richmond, VA 23219-4074
`
`Telephone (804)788-8200
`
`Attorneys for Opposer,
`OMS Investments, Inc.
`
`

`
`CERTIFICATE OF SERVICE
`
`Serial No. 86/021,137
`Mark: MIRACLE GRIP
`
`Page 9 of 9
`
`I hereby certify that the foregoing NOTICE OF OPPOSITION and exhibits thereto have been
`properly served upon Applicant, Via U.S. first class mail, postage prepaid, on this 5"‘ day of
`March, 2014.
`
`Robert S. Beiser
`
`Vedder Price P.C.
`
`222 N Lasalle St Fl 25
`
`Chicago, IL 60601
`
`Early W01
`
`77730.600028 EMF_US 49576125v2
`
`

`
`EXHIBIT A
`
`

`
`Status Search RN 0668868
`
`Page 1 of 3
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on:
`
`This page was generated by TSDR on 2014~O3-O5 09:47:12 EST
`
`Mark:
`
`MIRACLE-GRO
`
`No image exists
`for this case.
`
`Appiication Filing Date: Feb. 28, 1
`
`Registration Date: Oct. 28, 1!
`
`US Seriai Number:
`
`72046856
`
`US Registration Number:
`
`668868
`
`Register:
`
`Principal
`
`Mark Type:
`
`Trademark
`
`Status:
`
`The registration has been renewed.
`
`Status Date:
`
`Jul. 23, 2008
`
`iiiierk information
`
`Mark Literal Elements:
`
`MIRACLE-GRO
`
`Standard Character Claim:
`
`Mark Drawing Type:
`
`No
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`ote :
` international Class(es):
`
`he foliowing symbois indicate that the registrerztfovmer has amended the goodsfservices:
`~ Brackets {.1 indicate deieted goods/services;
`
`~ Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of
`
`~ Asterisks
`
`identify additionai {new} wording in the goodsiserviczes.
`
`For: WATER SOLUBLE PLANT FOOD
`
`Ciass Status:
`
`Basis:
`
`First Use:
`
`O01
`
`ACTlVE
`
`1(a)
`
`Apr. 15, 1951
`
`U.S Class(es): 010 ~ Prim
`
`Use in Commerce: Apr. 15, 1!
`
`Sasis information (Case Level)
`
`Filed Use:
`
`Filed lTU:
`
`Yes
`
`No
`
`Filed 44D:
`
`No
`
`Currently Use: Yes
`
`Currently lTU: No
`
`Currentiy 44D: No
`
`http://tsdr.uspt0.g0v/
`
`03/05/2014
`
`

`
`Status Search RN 0668868
`
`Page 2 of 3
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currentiy No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: OMS INVESTMENTS, INC.
`
`Owner Address: 10250 Constellation Boulevard Suite 280
`
`Los Angeles, CALIFORNIA 900676228
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`Atterneyicorresponcferice information
`
`ttorney of Record
`
`State or Country Where DELAWAI
`Organized:
`
`Attorney Name: Aimee A. Zaleski
`
`Docket Number: O8-O506—II
`
`Attorney Primary Email
`Address:
`
`tra<iemarks@scotts.com
`
`Attorney Email Authorized: Yes
`
`
`
`Correspondent
`
`Correspondent Aimee A. Zaleski
`NamelAddress: The Scotts Company LLC
`14111 Scottslawn Road
`
`Marysville, OHIO 43041
`UNITED STATES
`Phone: 937-644—7667
`Correspondent e—maiI:
`tracEemarks@scotts.c:om
`
`Domestic Representative - Not Found
`
`Prosecution riistery
`
`Fax: 937-6447
`Correspondent e-mail Yes
`Authorized:
`
`%Date
`
`26, 2013
`22, 2010
`16, 2009
`23, 2008
`
`23, 2008
`
`E
`
`22, 2008
`
`A
`
`Proceeding Number
`
`Description
`NOTICE OF SUIT
`NOTICE OF SUIT
`CASE FILE IN TICRS
`REGISTERED AND RE