Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA595637
`ESTTA Tracking number:
`03/31/2014
`
`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
`
`Goya Foods, Inc.
`04/05/2014
`
`100 Seaview Drive
`Secaucus, NJ 07094
`UNITED STATES
`
`Attorney
`information
`
`Stephen L. Baker
`Baker and Rannells PA
`575 Route 28
`Raritan, NJ 08869
`UNITED STATES
`officeactions@br-tmlaw.com,
`s.baker@br-tmlaw.com,p.chang@br-tmlaw.com,k.hnasko@br-tmlaw.com,s.cesa
`ro@br-tmlaw.com Phone:9087225640
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86060111
`03/31/2014
`
`Publication date
`Opposition
`Period Ends
`
`02/04/2014
`04/05/2014
`
`GoYoGo Frozen Yogurt LLC
`83 Morning Watch Road
`Wayne, NJ 07470
`NJ
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Self-serve frozen yogurt shop services
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86037364
`03/31/2014
`
`Publication date
`Opposition
`Period Ends
`
`02/04/2014
`
`GoYoGo Frozen Yogurt LLC
`83 Morning Watch Road
`Wayne, NJ 07470
`NJ
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`
`

`
`All goods and services in the class are opposed, namely: Self-serve frozen yogurt shop services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`1774726
`
`06/01/1993
`
`GO GOYA
`
`NONE
`
`Application Date
`
`06/17/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Class 030. First use: First Use: 1992/12/01 First Use In Commerce: 1992/12/01
`spices
`
`U.S. Registration
`No.
`Registration Date
`
`2502127
`
`10/30/2001
`
`Word Mark
`Design Mark
`
`GOYA
`
`Application Date
`
`04/14/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 1939/08/00 First Use In Commerce: 1939/08/00
`Processed fruits and vegetables; dried fruits and vegetables; meats; seafood
`and fish; applesauce and cranberry sauce; processed olives; dried corn husks;
`snack foods, namely, plantain chips, potato chips, yucca chips and pork rinds;
`processed nuts and processed edible seeds; jams, jellies and fruit preserves;
`pickles; processed garlic, processed artichokes; processed pimentos; tomato
`paste; processed hot peppers; soups; meat extracts,and bouillon; edible oils and
`fats; prepared entrees consisting primarily of meat, poultry, fish or vegetables;
`milk; cheese; and lard
`
`U.S. Registration
`No.
`Registration Date
`
`1354559
`
`08/13/1985
`
`Application Date
`
`06/18/1984
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`GOYA
`
`NONE
`
`Class 032. First use: First Use: 1959/04/06 First Use In Commerce: 1959/04/06
`MALTA, NAMELY A NON-ALCOHOLIC MALT BEVERAGES
`
`U.S. Registration
`No.
`Registration Date
`
`3532388
`
`11/11/2008
`
`Word Mark
`Design Mark
`
`GOYO
`
`Application Date
`
`07/09/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2005/12/25 First Use In Commerce: 2005/12/25
`Processed vegetables
`Class 030. First use: First Use: 2008/08/17 First Use In Commerce: 2008/08/17
`spices and seasonings; adobo
`Class 032. First use: First Use: 2005/07/24 First Use In Commerce: 2005/07/24
`non-alcoholic malt beverages, namely, malta
`
`U.S. Registration
`No.
`Registration Date
`
`764033
`
`01/28/1964
`
`Application Date
`
`01/15/1963
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`GOYA
`
`NONE
`
`Class U046 (International Class 029, 030). First use: First Use: 1939/08/00 First
`Use In Commerce: 1939/08/00
`Coffee, and Edible Olive Oil
`
`3001516
`
`Application Date
`
`07/16/2004
`
`09/27/2005
`
`Foreign Priority
`Date
`...IF IT IS GOYA IT HAS TO BE GOOD
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 1968/11/00 First Use In Commerce: 1968/11/00
`Tomato sauce; salad dressing; hot sauce, salsa, ketchup; hot pepper spice;
`alimentary paste, bakery goods, barbecue sauce, biscuits, breadcrumbs,
`burritos, candy, capers, cereal based snack foods, spices and seasonings,
`tortilla chips, chocolate for baking, coffee, corn chips, cookies, crackers,
`custards, empanadas, enchiladas, frozen entrees consisting primarily of rice or
`pasta, extracts used as flavoring, fajitas, flavoring syrup, flour; grain based food
`beverages, food starch; flavored, sweetened gelatin desserts; honey; noodles,
`picante sauce, puddings, chili sauce; table syrup, taco chips, tamales; vinegar,
`cocoa, pastries; rice, prepared entrees consisting primarily of rice, tapioca,
`yeast, treacle, salt, condiments, namely, sofrito, adobo, sazon, recato,
`marinades and mojo; wine sauce for cooking; food extracts consisting of a
`combination of annatto and lard used to flavor and color foods; corn tortilla mix,
`corn meal, frozen confections, and cornmeal fritter mix; wine vinegar
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`942879
`
`Application Date
`
`03/27/1969
`
`09/12/1972
`
`Foreign Priority
`Date
`...IF IT IS GOYA IT HAS TO BE GOOD
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`NONE
`
`Class 029. First use: First Use: 1968/11/00 First Use In Commerce: 1968/11/00
`CANNED VEGETABLES
`
`1122501
`
`Application Date
`
`05/24/1978
`
`07/17/1979
`
`Foreign Priority
`Date
`SI ES GOYA TIENE QUE SER BUENO
`
`NONE
`
`

`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 030. First use: First Use: 1950/03/00 First Use In Commerce: 1950/03/00
`CRACKERS
`
`4210054
`
`Application Date
`
`03/10/2012
`
`09/18/2012
`
`Foreign Priority
`Date
`SI ES GOYA TIENE QUE SER BUENO
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2001/05/00 First Use In Commerce: 2001/05/00
`Fruit beverages; Fruit drinks; Fruit-based beverages; Fruit-flavored
`beverages;Non-alcoholic beverages containing fruit juices
`
`U.S. Registration
`No.
`Registration Date
`
`1859228
`
`10/18/1994
`
`Application Date
`
`09/21/1992
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`JOYAS DE GOYA
`
`NONE
`
`Class 030. First use: First Use: 1994/03/00 First Use In Commerce: 1994/03/00
`rice, spices and coffee
`
`U.S. Registration
`No.
`Registration Date
`
`1860499
`
`10/25/1994
`
`Application Date
`
`09/21/1992
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`JOYAS DE GOYA
`
`NONE
`
`Class 032. First use: First Use: 1994/03/00 First Use In Commerce: 1994/03/00
`[ fruit drinks, ] soft drinks, and maltsyrups for beverages
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`1689199
`
`05/26/1992
`
`Application Date
`
`03/04/1991
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`GOYA
`
`NONE
`
`Class 030. First use: First Use: 1991/01/14 First Use In Commerce: 1991/01/14
`coffee
`
`U.S. Registration
`No.
`Registration Date
`
`3640777
`
`06/16/2009
`
`Word Mark
`Design Mark
`
`GOYA
`
`Application Date
`
`03/14/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 043. First use: First Use: 2008/04/07 First Use In Commerce: 2008/04/07
`Carry-out restaurants; Catering; Catering in fast-food cafeterias; Catering of food
`and drinks; Restaurant and cateringservices; Restaurant, bar and catering
`services; Fast-food restaurants; Food preparation services; Preparation of food
`and beverages; Restaurant services; Coffee-house and snack-bar services;
`Snack bars; Serving food and drinks; Contract food services
`
`U.S. Registration
`No.
`Registration Date
`
`3654004
`
`07/14/2009
`
`Word Mark
`Design Mark
`
`GOYA LATIN CAFÃ#
`
`Application Date
`
`12/10/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 043. First use: First Use: 2008/04/00 First Use In Commerce: 2008/04/00
`Carry-out restaurants; Fast-food restaurants; Fast-food restaurants and
`snackbars; Food preparation services; Restaurant services; Snack bars
`
`U.S. Registration
`No.
`Registration Date
`
`3825092
`
`07/27/2010
`
`Word Mark
`Design Mark
`
`GOYA
`
`Application Date
`
`01/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2005/10/07 First Use In Commerce: 2005/10/07
`Computerized on-line retail store services in the field of foods and
`beverages;Retail grocery stores; Retail store services featuring foods and
`beverages
`
`U.S. Registration
`No.
`Registration Date
`
`1695011
`
`06/16/1992
`
`Application Date
`
`07/30/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`GOYA
`
`NONE
`
`Class 042. First use: First Use: 1965/00/00 First Use In Commerce: 1965/00/00
`catering services
`
`U.S. Registration
`No.
`Registration Date
`
`962193
`
`06/26/1973
`
`Word Mark
`
`GOYA
`
`Application Date
`
`07/14/1972
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class U046 (International Class 001, 005, 029, 030, 031, 032). First use: First
`Use: 1939/08/00 First Use In Commerce: 1939/08/00
`BEEF STEW, VIENNA SAUSAGE, CANNED FRUITJUICES, CEREAL, CORN
`MEAL, HOMINY, CRACKERS, EDIBLE OILS, CORN OIL, OLIVE OIL, FRUIT
`SYRUP, [ SESAME SEED SYRUP, ]GRAPEJUICE, JELLIES AND
`PRESERVES, MAYONNAISE, OLIVES, RICE, SOUPS, SPAGHETTI, SPICES,
`SALT, PEPPER, OREGANO, VINEGAR, FLAVORING EXTRACTS, MEAT
`SAUCE, SWEET CHOCOLATE, TOMATO SAUCE, CHEESE, CREAM OF
`COCONUT, CANNED VEGETABLES, PAPAYA NECTAR, PEACH NECTAR,
`GUAVA NECTAR, SPAGHETTI AND MEAT BALLS, MEAT SAUCE AND
`CONDIMENT, BREADFUIT; PREPARED SEA FOOD-NAMELY, SHRIMP,
`SPICED SHRIMP, AND [ LOBSTER GUMBO, ]CANNED FISH, PASTELES,
`PUERTO RICAN SANCOCHO, FRUIT COCKTAIL, PREPARED
`COCONUT,AND FLAN CUSTARD
`
`U.S. Registration
`No.
`Registration Date
`
`1283430
`
`06/26/1984
`
`Application Date
`
`12/06/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`GOYA
`
`NONE
`
`Class 025. First use: First Use: 1960/06/01 First Use In Commerce: 1970/06/01
`Hats, Jackets and Shirts
`
`U.S. Registration
`No.
`Registration Date
`
`2653723
`
`11/26/2002
`
`Word Mark
`Design Mark
`
`GOYA
`
`Application Date
`
`06/05/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1968/10/15 First Use In Commerce: 1968/10/15
`Pens, posters, [ writing paper, printedmaterial, namely, price lists, mail order
`catalogs featuring clocks, pot holders, ] [ aprons, ] [ magnetic note pads, note
`pads, cooking utensils, clothing, backpacks, toys, key rings, bibs for children, ]
`drinking utensils, [ cooler bags,writing instruments and umbrellas; notepads, ]
`and cookbooks
`
`U.S. Registration
`No.
`Registration Date
`
`3570054
`
`02/03/2009
`
`Word Mark
`Design Mark
`
`GOYA
`
`Application Date
`
`08/05/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 1939/08/00 First Use In Commerce: 1939/08/00
`Applesauce; Artichoke paste; Bouillon; Cheese; Cheese food; Chili; Cranberry
`sauce; Dairy products excluding ice cream,ice milk and frozen yogurt; Dried
`fruitand vegetables; Dried fruit mixes; Dried fruits; Dried meat; Edible fats; Edible
`oils; Fish; Fish croquettes; Frozen fruits; Frozen vegetables; Fruit paste; Fruit
`preserves; Fruit-based snack food; Instant or pre-cooked soup; Jams; Lard;
`Meat; Meat extracts; Milk; Olive oil; Pickled vegetables; Pork; Pork rinds;
`Poultry; Preserved fruits; Processed artichokes; Processed coconut; Processed
`meat; Processed olives; Processed vegetables; Seafood; Snack mix consisting
`primarily of processed fruits, processed nuts and/or raisins; Soups; Vegetable
`chips; Vegetable oils; Vegetable-based snack foods; vegetable, fish, and meat
`croquettes
`Class 030. First use: First Use: 1939/08/00 First Use In Commerce: 1939/08/00
`Alimentary paste; Bakery desserts; Bakery goods; Barbecue sauce; Burritos;
`Candy; Capers; Chocolate; Chocolates and chocolate based ready to eat
`candies and snacks; Cocoa; Coffee; Corn fritters; Custards; Dumplings;
`Empanadas; Enchiladas; Fajitas; Fish dumplings; Flour; Food seasonings;
`Frozen confections; Grain-basedfood beverages; Grain-based snack foods;
`Hominy; Honey; Hot sauce; Marinades; Mixes for bakery goods; Mixes for
`making baking batters; Mixes for making batter for hushpuppies; Mixes for
`making batters for fried foods; Noodles; Pastries; Pepper; Picante sauce; Rice;
`Rice-based snack foods; Salsa; Sauces; Seasoned coating for meat, fish,
`poultry; Seasoned coating mixtures for foods; Seasonings; Snack cakes; Spices;
`Taco chips; Tacos; Tamales; Tapioca; Tomato sauce; Tortilla chips; Tortillas;
`Vinegar; Wine vinegar
`Class 032. First use: First Use: 1959/04/06 First Use In Commerce: 1959/04/06
`Fruit nectars; Fruits drinks and fruit juices; Non-alcoholic malt beverage; Soft
`
`

`
`Attachments
`
`drinks; Syrups for making soft drinks;Vegetable juice
`
`78004128#TMSN.gif( bytes )
`78448554#TMSN.jpeg( bytes )
`78451791#TMSN.jpeg( bytes )
`72322981#TMSN.gif( bytes )
`85566098#TMSN.jpeg( bytes )
`77421878#TMSN.jpeg( bytes )
`77630588#TMSN.jpeg( bytes )
`77904649#TMSN.jpeg( bytes )
`72429883#TMSN.gif( bytes )
`76267384#TMSN.gif( bytes )
`Baker-Rannells140331171915.pdf(179386 bytes )
`77539854#TMSN.jpeg( 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
`
`/Stephen L Baker/
`Stephen L. Baker
`03/31/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`GOYA FOODS, INC.
`
`Opposer,
`
`Mark. mam
`
` FROZEN IYOGURT
`
`Serial No.: 86060111
`
`Filed:
`
`September 10, 2013
`
`Mark: GOYOGO FROZEN YOGURT
`OUR INGREDIENTS YOUR
`CREATION
`
`Serial No.: 86037364
`
`Filed:
`
`August 14, 2013
`
`GOYOGO FROZEN YOGURT LLC
`
`Applicant.
`
`NOTICE OF OPPOSITION PURSUANT TO 15 U.S.C. § 1063
`
`Opposer, GOYA FOODS, INC. ("Opposer"), by its attomeys Baker and Rannells, PA,
`
`allege on knowledge as to its own acts and otherwise on information and belief and as grounds
`
`for the opposition as follows:
`
`Opposer believes that allowing application Ser. Nos 8606011 and 8603737364 for
`1.
`GOYOGO FROZEN YOGURT OUR INGREDIENTS YOUR CREATION (both word
`mark and design mark), to proceed to registration will cause Opposer damage:
`
`
`GOYOGO opposition
`Page 1
`
`

`
`FILING
`
`DATE
`
`FROZEN IYOGURT
`
`Class 35: Self-serve frozen yogurt shop
`SCFVICCS.
`
`September 10»
`20 I 3
`
`Class 35: Self-serve frozen yogurt shop
`
`GOYOGO FROZEN
`YOGURT OUR
`INGREDIENTS
`YOUR CREATION
`
`86037364
`
`-
`SeW‘°eS'
`
`2.
`
`Opposer is a corporation organized and existing under the laws of the State of
`
`Delaware, doing business at 100 Seaview Drive, Secaucus, New Jersey 07096.
`
`3. Applicant. GOYOGO FROZEN YOGURT LLC ("Applicant")
`
`is a limited liability
`
`company formed under the laws of New Jersey, doing business at 83 Morning Watch Road, Wayne
`
`New Jersey 07470.
`
`4.
`
`On August
`
`14, 2013, Applicant
`
`filed the above
`
`identified applications
`
`for
`
`GOYOGO FROZEN YOGURT OUR INGREDIENTS YOUR CREATION (the "Applicant's
`
`Marks") as service marks for the services set forth above ("Applicant's Services"). On September
`
`10, 2013, Applicant
`
`filed the above identified application for
`
`P .
`FROZEN IVOGURT
`G‘-I‘-=*====m-"-'
`
`(the "Applicant's
`
`Marks") as trademark for goods set forth above ("Applicant’s Services").
`
`5.
`
`Opposer is the owner
`
`of the mark GOYA, and variations thereof (collectively
`
`"Opposer's Mark") as a trademark,
`
`trade name, and as a service mark as applied to a wide range
`
`of food an ubeverage goods directed to wholesale and retail consumers.
`
`6.
`
`Opposer is now and for many years has been trading as and known by the Opposer's
`
`Mark and trade name,
`
`identifying Opposer as the source of a wide variety of goods, including
`
`foods and beverages, which are substantially identical
`
`to and generally related to Applicant’s
`
`Services.
`
`
`GOYOGO opposition
`Page 2
`
`

`
`7.
`
`Opposer is now and for many years has been trading as and known by the Opposer's
`
`Mark and trade name, identifying Opposer as the source of a wide variety of food and beverage
`
`goods, which are substantially identical to and generally related to Applicant’s Services.
`
`8.
`
`Opposer is now and for many years prior to any date which may be claimed by
`
`Applicant, engaged in the use of Opposer's Mark and trade name on and in association with
`
`Opposer's Goods and Services, including z'nter alia,
`
`those identified above in paragraph 5 and
`
`below in paragraph 10.
`
`9.
`
`Since long prior to any date which may be claimed by Applicant, Opposer has been
`
`and is now engaged in the use of Opposer's Mark and trade name on and in association with
`
`Opposer's Goods and Services including inter alia, those identified in paragraph 5, and 10 below,
`
`in interstate commerce.
`
`10.
`
`Opposer is the owner of, inter alia, the following U.S. trademark registrations, all
`
`of which are in good order, and in the name of and owned by Opposer:
`
`
`GOYOGO opposition
`Page 3
`
`

`
`
`
`
`
`
`
`
`
`
`
`MARK
`
`GO GOYA*
`
`GOYA*
`
`
`
`
`REGISTRATION NO.
`
`1774726
`
`2502127
`
`
`
`
`
`
`GOODS
`
`Class 30 — Spices
`
`Processed
`Class 29 -
`dried
`vegetables;
`vegetables; meats;
`
`fruits and
`fiuits
`and
`seafood and
`
`cranberry
`and
`applesauce
`fish;
`sauce; processed olives; dried corn
`
`husks; snack foods, namely, plantain
`chips, potato
`chips,
`yucca
`chips
`and pork rinds; processed nuts and
`processed edible seeds; jams, jellies
`and
`fruit
`preserves;
`pickles;
`processed
`garlic,
`processed
`artichokes; processed
`pimentos;
`tomato paste; processed hot peppers;
`soups; meat extracts,
`and bouillon;
`
`
`
`
`edible oils and fats; prepared entrees
`consisting primarily
`of meat,
`poultry, fish or
`vegetables; milk;
`cheese; and lard.
`
`
`
`
`
`namely,
`Class 32 - Malta,
`non-alcoholic malt beverage.
`
`a
`
`
`
`Class 29 - Processed vegetables;
`Class 30 -spices and seasonings;
`adobo;
`Class
`
`
`
`
`
`32 - non-alcol1olic malt
`
`
`
`
`
`
`
`GOYA*
`
`GOYO
`
`1354559
`
`3532388
`
`GOYA*
`
`0764033
`
`
`
`beverages, namely malta.
`
`
`
`and edible
`
`Class 29-Coffee
`olive oil.
`
`
`
`
`
`...IF IT IS GOYA IT HAS
`3001516
`salad
`Class 30 - Tomato sauce;
`
`TO BE GOOD*
`dressing; hot sauce, salsa, ketchup;
`hot pepper spice; alimentary
`paste,
`
`bakery goods, barbecue
`sauce,
`biscuits,
`breadcrumbs, burritos,
`
`candy, capers, cereal based
`snac
`
`and seasonings,
`spices
`foods,
`
`tortilla chips, chocolate for baking,
`
`coffee,
`corn
`chips,
`cookies,
`crackers,
`custards,
`empanadas,
`
`
`enchiladas, frozen entrees consisting
`primarily of rice or pasta, extracts
`used as flavoring, fajitas, flavoring
`
`
`
`
`
`GOYOGO opposition
`
`Page 4
`
`

`
` syrup,
`
`flour‘; grain based food
`beverages, food starch; flavored,
`sweetened
`gelatin
`desserts;
`
`honey; noodles; picante sauce,
`
`puddings,
`chili
`sauce;
`table
`
`
`
`
`
`tarnales;
`chips,
`taco
`syrup,
`cocoa, pastries;
`rice,
`vinegar,
`entrees
`consisting
`prepared
`primarily of rice, tapioca, yeast,
`treacle,
`salt,
`condiments,
`namely, sofrito, adobo,
`sazon,
`recato, marinades
`and
`rnojo;
`wine sauce for cooking;
`food
`extracts
`consisting
`of
`a
`combination
`of
`annatto
`and
`
`
`
`
`
`
`
`fritter mix; wine vinegar.
`
`
`
`
`
`
`
`lard used to flavor and color
`
`foods; com tortilla mix, corn
`meal,
`frozen confections,
`and
`cornmeal
`
`Class 29- Canned vegetables.
`
`
`
`...IF IT IS GOYA IT HAS
`0 BE GOOD and Design*
`SI ES GOYA TIENE QUE
`SER BUENO
`
`0942879
`
`1122501
`
`
`
`Class 30-Crackers.
`
`SI ES GOYA TIENE QUE 4210054
`SER BUENO
`
`Class 32 - Fruit beverages; Fruit
`drinks; Fruit-based beverages;
`Fruit-flavored beverages; Non-
`alcoholic beverages containing
`fruit juices.
`Class 30 - Rice, spices, coffee
`Class 32 - Fruit drinks, so
`
`drinks, and syrups for bevera es.
`
`Class 30 - Coffee.
`
`Class 43 — Carry-out services fo
`
`restaurants; Catering; Caterin
`of
`fast-foods
`in
`cafeterias
`Catering of food and drinks,
`
`Restaurantarl catering services
`
`Restaurant, bar
`and caterin
`
`services, Fast-food restaurants
`Food
`preparation
`services,
`
`Preparation
`of
`food
`an
`beverages; Restaurant services
`Coffee-house
`and
`snack-ba
`
`JOYAS DE GOYA*
`JOYAS DE GOYA*
`
`GOYA*
`
`GOYA
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1859228
`1860499
`
`
`
`
`
`
`3640777
`
`
`
`
`
`
`
`
`
`Snack-bars; Servin
`services;
`food and drinks.
`
`
`
`
`GOYOGO opposition
`Page 5
`
`

`
`
`
`Class 43 - Carry-out restaurants;
`Fast-food restaurants; Fast-food
`
`
`restaurants
`
`and
`
`snack-bars;
`
`
`
`preparation
`Food
`Restaurant
`services;
`bars.
`
`services;
`Snack-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`GOYA LATIN CAFE
`
`3654004
`
`GOYA
`
`3570054
`
`Class 29 -Applesauce; Artichoke
`paste; Bouillon; Cheese; Cheese
`food; Chili; Cranberry
`sauce;
`Dairy products excluding
`ice
`cream,
`ice milk
`and
`fi'ozen
`
`and
`
`
`
`
`
`yogurt;
`
`Dried
`
`fruit
`
`vegetables; Dried fruit mixes;
`Dried fruits; Dried n1eat;Edible
`
`fats; Edible
`
`oils; Fish; Fish
`
`
`
`
`
`croquettes; Frozen fruits; Frozen
`vegetables; Fruit paste; Fruit
`preserves;
`Fruit-based
`snack
`food;
`Instant or pre- cooked
`soup;
`Jams; Lard; Meat; Meat
`
`extracts; Milk; Olive oil; Pickled
`
`
`
`
`vegetables; Pork; Pork rinds;
`Poultry; Preservedfruits;
`
`coconut; Processed meat;
`
`Processed artichokes; Processed
`
`
`
`
`
`Processed
`
`olives;
`
`Processed
`
`vegetables; Seafood; Snack mix
`consisting
`primarily
`o
`processed fruits, processed nuts
`and/or
`raisins;
`Soups;
`Vegetable chips; vegetable oils;
`
`
`
`
`
`
`
`
`
`
`
`
`GOYOGO opposition
`
`Page 6
`
`

`
`Vegetable- based snack foods;
`vegetable,
`fish,
`and meat
`croquettes.
`
`Class 30 - Alimentary paste;
`Bakery
`desserts;
`Bakery
`goods;
`Barbecue
`sauce;
`Burritos;
`Candy;
`Capers;
`Chocolate;
`Chocolates
`and
`
`chocolate based ready to eat
`candies
`and snacks; Cocoa;
`
`Coffee; Corn fritters; Custards;
`
`Empanadas;
`Dumplings;
`Fajiats;
`Fish
`Enchiladas;
`Flour;
`Food
`dumplings;
`seasonings; Frozen confections;
`Grain-based
`food
`beverages;
`Grain-based
`snack
`foods;
`
`sauce;
`Hominy; Honey; Hot
`Marinades; Mixes
`for bakery
`goods; Mixes
`for making
`baking
`batters; Mixes
`for
`making batter for hushpuppies;
`Mixes
`for making batters for
`fried foods; Noodles; Pastries;
`
`sauce; Rice;
`Pepper; Picante
`Rice- based snack foods; Salsa;
`
`Sauces; Seasoned coating for
`meat,
`fish, poultry; Seasoned
`coating mixtures
`for
`foods;
`Seasonings;
`Snack
`cakes;
`Spices; Taco
`chips; Tacos;
`Tamales;
`Tapioca;
`Tomato
`sauce; Tortilla chips; Tortillas;
`Vinegar; Wine vinegar.
`
`Class 32 - Fruit nectars; Fruits
`drinks and fiuit
`juices; Non-
`alcoholic malt beverage; Soft
`drinks; Syrups for making soft
`drinks; Vegetable juice.
`
`
`
`
`GOYOGO opposition
`
`Page 7
`
`

`
`GOYA
`
`3825092
`
`on-
`Class 35 - Computerized
`line
`retail store services in the
`
`
`
`
`field of foods and beverages;
`Retail grocery stores; Retail
`store services featuring foods
`
`and beverages.
`
`
`
`GOYA*
`
`GOYA*
`
`
`
`
`
`
`
`169501 1
`Class 43 - Catering services.
`
`0962 193
`Classes 29 30 32 - Beef stew,
`
`
`Vienna
`sausage, canned
`fiuit
`juices,
`cereal,
`cornmeal,
`hominy, crackers, edible oils,
`com oil, olive oil, fruit symp,
`sesame seed syrup, grape juice,
`
`jellies and preserves, mayonnaise,
`
`olives,
`rice,
`soups,
`spaghetti,
`
`spices,
`salt, pepper, oregano,
`
`vinegar, flavoring extracts, meat
`sauce, sweet chocolate,
`tomato
`
`
`
`
`
`
`
`
`
`
`sauce, cheese,cream of coconut,
`canned vegetables, papaya
`guava
`nectar,
`peach
`nectar,
`nectar,
`spaghetti
`and meat
`balls,
`meat
`sauce
`and
`
`condiment, breadfuit; prepared
`seafood
`-
`namely,
`shrimp,
`spiced
`shrimp,
`and
`lobster
`gumbo, canned fish, pasteles,
`Puerto rican
`sancocho,
`fruit
`
`prepared
`cocktail,
`
`and flan custard.
`
`coconut,
`
`
`
`Class 25- Hats,
`Shirts
`
`Jackets
`
`and
`
`
`
`GOYA*
`
`GOYA*
`
`1283430
`
`
`
`
`2653723
`Class 16 - Pens, posters,
`
`aprons, drinking utensils and
`
`cookbooks.
`
`
`*Designates an incontestable registration.
`
`11.
`
`Opposer's GOYA mark and name has been in continuous, open, and notorious
`
`use in the United States from 1936 to the present date.
`
`
`
`
`GOYOGO Opposition
`
`Page 8
`
`

`
`12.
`
`Opposer's GOYA mark and name has been continuously and widely advertised and
`
`promoted in the United States from 1936 to the present date and is and has been used in conjunction
`
`with and in sponsorship of many civic, cultural and artistic activities.
`
`13.
`
`As a result of long use, widespread advertising and promotion, and successful sales,
`
`advertising and promotion for over sixty years, Opposer's GOYA mark has become distinctive and
`
`famous,
`
`long prior to the date Applicant filed the application in issue and long prior to any date
`
`of use that may be claimed by Applicant.
`
`14.
`
`As a result of the expenditure by Opposer of substantial sums in establishing,
`
`maintaining, and policing the GOYA mark and trade name as a symbol of Opposer,
`
`its quality
`
`products and services,
`
`the trade and purchasing public have come to recognize the mark GOYA
`
`as distinctive of Opposer's quality products and services and as indicating the sole source of
`
`those products and services.
`
`15.
`
`The use by Opposer of the Opposer's Marks for the Opposer's Goods and Services
`
`alleged herein is
`
`long prior to any date which may be lawfully claimed by Applicant, and
`
`Opposer has priority.
`
`16.
`
`Upon information and belief, Applicant promotes Applicant’s Services through the
`
`same channels of trade as Opposer, and directs its respective goods to the same ultimate consumer
`
`as Opposer.
`
`17.
`
`The goods of Applicant and Opposer are substantially identical
`
`in part, and related in
`
`part, and Applicant's intended use of Applicant's Mark in connection with App1icant’s Services is
`
`without the consent or permission of Opposer.
`
`
`GOYOG0 Opposition
`Page 9
`
`

`
`COUNT 1
`
`LIKELIHOOD OF CONFUSION
`
`18.
`
`19.
`
`Applicant's Mark is confusingly similar to Opposer's Mark and trade name.
`
`Since Opposer owns the mark and name GOYA and variations of the same by
`
`virtue of prior use, mistake or deception as to the source of origin of the goods will arise and will
`
`injure and damage the Opposer and its goodwill.
`
`20.
`
`The registration of Applicant's Mark to Applicant will cause the relevant purchasing
`
`public to erroneously assume and thus be confused, misled, or deceived, that Applicant's Goods are
`
`made by, licensed by, controlled by, sponsored by, or in some way connected, related or associated
`
`with Opposer, all to Opposer's irreparable damage.
`
`COUNT II
`
`DILUTION
`
`21.
`
`Opposer repeats and re-alleges paragraphs 1 to 20 above with the sa1ne force and
`
`effect as if set forth herein at length.
`
`22.
`
`Opposer's Mark is famous, being widely recognized by the general consuming public
`
`of the United States as a designation of source of the goods and services of Opposer.
`
`23.
`
`The registration of Applicant's Mark to Applicant
`
`is likely to cause dilution by
`
`the blurring of the distinctiveness of Opposer's GOYA Mark and
`
`name, all
`
`to Opposer's
`
`irreparable damage.
`
`24.
`
`Opposer's customers have come to recognize that Opposer produces a wide array of
`
`goods and services under Opposer's Mark, such that the inevitable association of Applicant's
`
`
`
`
`GOYOGO Opposition
`
`Page 10
`
`

`
`Goods is likely to cause dilution by tamishment, thus haiming the reputation of Opposer and its
`
`famous GOYA Mark.
`
`COUNT III
`
`FRAUD IN THE USPTO
`
`25.
`
`Opposer repeats and re-alleges paragraphs 1
`
`to 24 above with the same force and
`
`effect as if set forth herein at length.
`
`26.
`
`Applicant's Applications, Applicant, having no bona-fide intent
`
`to use Applicant's
`
`Mark, knowingly made a false and fi'audulent statement
`
`in Applicant's Applications wherein it
`
`falsely claimed, "The applicant has a bona fide intention to use the mark in commerce on or in
`
`connection with the identified goods and/or sen/ices" for Applicant’s Services in International
`
`Class 035.
`
`27.
`
`Applicant knowingly did not have a bona fide intent to use Applicant's Mark as
`
`Applicant has not taken steps to commence use its Mark on Applicant's Services.
`
`28.
`
`The false and fraudulent declaration referred to above with respect to Applicant's
`
`Mark was made by Applicant with actual knowledge of its falsity, and was not made on infonnation
`
`and belief and was made by a person or entity who knew or should have known the same was
`
`false and fraudulent.
`
`29.
`
`Applicant knowingly made a false, material misrepresentation of fact in connection
`
`with Applicant's Applications when it made the false and fraudulent declaration referred to above.
`
`30.
`
`The false and fi'audulent declaration referred to above with respect to Applicant's
`
`Mark was made with the intent to deceive the USPTO and that the USPTO rely upon the same.
`
`
`
`
`GOYOG0 Opposition
`
`Page 11
`
`

`
`3 l.
`
`The USPTO did rely on the false and fi'audulent declaration when it acknowledged the
`
`filing of the application and allowed Applicant's Applications to publish.
`
`32.
`
`As a result, Applicant willfully and knowingly perpetrated a fraud for Applicant's
`
`Mark on the United States Patent and Trademark Office.
`
`33.
`
`Applicant
`
`is not entitled to Registrations on the Principal Register of Applicant's
`
`Mark as Applicant has never had any legitimate interest
`
`in Applicant's Mark, Applicant never
`
`had a bona-fide intent to use Applicant's Mark, and because Applicant knowingly committed
`
`fi'aud when it filed Applicant's Application.
`
`34.
`
`Had it been aware of the false and fraudulent declaration referred to above and of
`
`Applicant's knowing fraudulent acts,
`
`the USPTO would not have accepted the filing of the
`
`application, nor allowed Applicant's Application to publish.
`
`COUNT IV
`
`NO BONA FIDE INTENT TO USE
`
`35.
`
`Opposer repeats and re-alleges paragraphs 1 to 34 above with the same force and
`
`effect as if set forth herein at length.
`
`36.
`
`Applicant's Applications are void ab initio as Applicant had no good faith bona
`
`fide intent to use Applicant's Marks for Applicant’s Services.
`
`37.
`
`Applicant's actions in filing intent to use trademark applications are insufficient to
`
`establish a bona fide intent to use Applicant's Marks as applied for.
`
`38.
`
`Applicant has taken no steps to begin commercial use of Applicant's Marks either
`
`prior to or subsequent to the filing of Applicant's Applications.
`
`
`GOYOGO Opposition
`Page 12
`
`

`
`39.
`
`On August 14, 2013, when Applicant filed Applicant's (word mark) Application.
`
`Applicant had no objective bona-fide intent to use Applicant’s Mark.
`
`40.
`
`On September 10, 2013, when Applicant filed Applicant's (design mark) Application,
`
`Applicant had no objective bona-fide intent to use Applicant's Mark.
`
`41.
`
`Opposer believes that it is and will be damaged by registration of the marks applied
`
`for by Applicant.
`
`42.
`
`Upon information and belief, service is proper upon Applicant as follows:
`
`DENNIE F. GLEASON
`JARDIM MEISNER & SUSSER
`30B VREELAND RD STE 201
`FLORHAM PARK, NJ 07932-1926
`
`WHEREFORE, Opposer prays that the applications for registration of Applicant's Mark
`
`filed on August 14, 2013 for GOYOGO FROZEN YOGURT OUR INGREDIENTS YOUR
`
`CREATION (Ser. No. 86037364 for the word mark), and Applicant's Mark filed on September 10,
`
`2013 for GOYOGO FROZEN YOGURT OUR INGREDIENTS YOUR CREATION (Ser. No.
`
`860601 11 for the design mark), be denied and that this Notice of Opposition be sustained.
`
`Dated: March 31, 2014
`
`Respectfully submitted for Opposer.
`GOYA FOODS, INC.
`
`
`
`Stephen L. Baker, Esq.
`BAKER and RANNELLS, PA
`
`575 Route 28, Suite 102
`
`Raritan, New Jersey 08869
`(908) 722-5640
`
`Officeactions@br-
`tmlaw.com
`
`
`GOYOGO Opposition
`Page 14
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of Opposer's Notice of Opposition by fi1'st
`
`class postage prepaid mail
`
`by depositing
`
`the same with the U.S. Postal Service on this
`
`3 1 thday of April 2014 to the attorney for the Applicant at the following address:
`
`DENNIE F. GLEASON
`
`JARDIM MEISNER & SUSSER
`
`30B VREELAND RD STE 201
`
`FLORHAM PARK, NJ 07932-1926
`
`St
`
`en L.
`
`r
`
`
`
`GOYOGO Opposition
`
`Page 15