Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA633424
`ESTTA Tracking number:
`10/16/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91217489
`Plaintiff
`Associated Wholesale Grocers, Inc.
`MICHAEL A WILLIAMSON
`POLSINELLI PC
`900 W 48TH PLACE, SUITE 900
`KANSAS CITY, MO 64112
`UNITED STATES
`uspt@polsinelli.com, docketing@polsinelli.com
`Opposition/Response to Motion
`Michael A. Williamson
`uspt@polsinelli.com, docketing@polsinelli.com
`/Michael A. Williamson/
`10/16/2014
`Brief in Opposition to 12b6 and Summary Judgment.pdf(61222 bytes )
`Exhibits A-N.pdf(2115423 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of United States Trademark Application:
`
`Mark:
`
`
`
`Simply the Better Choice
`
`Application No.:
`
`86/171,424
`
`Classes No.:
`
`Filed:
`
`
`
`
`
`030
`
`January 21, 2014
`
`OPPOSITION NO.: 91217489
`
`
`
`
`
`ASSOCIATED WHOLESALE GROCERS,
`INC.
`
`Plaintiff-Opposer,
`
`
`
`v.
`
`Medora Snacks, LLC
`
`Defendant-Applicant.
`
`
`
`
`
`BRIEF IN OPPOSITION TO MOTION TO DISMISS AND IN THE ALTERNATIVE
`
`MOTION FOR SUMMARY JUDGMENT
`
`Defendant-Applicant has filed a Motion to Dismiss Pursuant to Fed. R.Civ. P. 12(b)(6)
`
`For Failure to State a Claim Upon Which Relief Can be Granted and in the alternative a Motion
`
`for Summary Judgment Pursuant to Fed. R. Civ. P. 56. Opposer submits that Applicant’s Motion
`
`to Dismiss under Rule 12(b)(6) lacks sufficient support. See TBMP § 503.03. Opposer further
`
`submits that Applicant’s Motion for Summary Judgment is untimely and unsupported. See 37
`
`C.F.R. 2.127(e)(1). Opposer further responds to Applicant’s Motions as follows:
`
`
`
`
`
`49005866.1
`
`1
`
`

`
`
`
`I.
`
`
`
`Motion to Dismiss Pursuant to Fed. R. Civ. P. 12(b)(6)
`
`A.
`
`The Standard for Rule 12(b)(6) Motions
`
`A motion to dismiss for failure to state a claim upon which relief can be granted is a test
`
`solely of the legal sufficiency of the notice of opposition. See, e.g., Advanced Cardiovascular
`
`Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir.
`
`1993). To withstand a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the notice of opposition
`
`need only allege such facts as would, if proved, establish that Opposer is entitled to the relief
`
`sought, i.e., that (1) Opposer has standing to maintain the proceeding, and (2) a valid ground
`
`exists for denying the registration sought. See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d
`
`1752, 1755 (Fed. Cir. 1988). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
`
`1024, 213 USPQ 185, 187 (CCPA 1982).
`
`When determining whether an opposer has standing, the Board reviews whether the
`
`notice of opposition alleges sufficient facts to show that Opposer has a real interest in the
`
`outcome of the proceeding and a reasonable basis for the belief that it will be damaged by the
`
`issuance of a registration. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025
`
`(Fed. Cir. 1999).
`
`To survive a motion to dismiss, opposer’s notice of opposition must “state a claim to
`
`relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007). It
`
`is the duty of the Board to examine the notice of opposition in its entirety, construing the
`
`allegations therein so as to do justice, as required by Fed. R. Civ. P. 8(e) to determine whether it
`
`contains any allegations, which, if proved, would entitle the opposer to the relief sought. See
`
`IdeasOne Inc. v. Nationwide Better Health, 89 USPQ2d 1952, 1953 (TTAB 2009). See also Fair
`
`49005866.1
`
`2
`
`

`
`
`
`Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007). See Lipton, 213 USPQ
`
`at 189. See also Trademark Rule 2.104(a).
`
`
`
`B.
`
`Factual Background
`
`Opposer’s Notice of Opposition was filed on July 22, 2014 and an Amended Notice of
`
`Opposition (“Notice”) was filed September 9, 2014. Any quotations from either Notice
`
`appearing in Applicant’s motion are of record and available for verification by the Board.
`
`Opposer’s Notice states that since 1983 it has been in the business of providing a wide variety of
`
`products and services in connection with the mark “BEST CHOICE”, alone and in combination
`
`with design features. Opposer’s Notice also asserts ownership and continuous use of marks
`
`including the formative “BEST CHOICE” and comprising a family of marks including at least
`
`13 registrations in 15 international classes. Opposer also states that products offered under its
`
`“BEST CHOICE” marks included “corn-based snack foods.” The opposed intent-to-use
`
`application is for the mark “SIMPLY THE BETTER CHOICE” for “corn-based snack foods.”
`
`Opposer’s Notice asserts priority of use and that Opposer would be damaged by Applicant’s use
`
`of its mark based on likelihood of confusion since the products offered under the respective
`
`marks are identical and the Applicant’s mark so nearly resembles Opposer’s marks as to be
`
`likely to be confused with and mistaken therefor.
`
`
`
`
`
`C.
`
`Arguments
`
`
`
`1.
`
`Standing
`
`Any person who believes it is or will be damaged by registration of a mark has standing
`
`to file a complaint. See TBMP § 303.01 At the pleading stage, all that is required is that a
`
`plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable
`
`basis” for its belief that it would suffer some kind of damage if the mark is registered. To plead
`
`49005866.1
`
`3
`
`

`
`
`
`a “real interest,” plaintiff must allege a “direct and personal stake” in the outcome of the
`
`proceeding. See TBMP 309.03(b). There is no requirement that a plaintiff show a personal
`
`interest in the proceeding different from or “beyond that of the general public” in order to
`
`establish standing. There is also no requirement that actual damage be pleaded or proved in
`
`order to establish standing or to prevail in an opposition proceeding. See Enbridge, Inc. v.
`
`Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009). However, the allegations in
`
`support of plaintiff’s belief of damage must have a “reasonable basis in fact.”
`
`In this case, Opposer has pleaded ownership of 13 registrations, which is sufficient basis
`
`for establishing a “real interest” in a proceeding. See Schering-Plough HealthCare Products Inc.
`
`v. Ing-Jing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007). Current printouts of information from
`
`the USPTO electronic database records showing the status and title of Opposer’s 13 registrations
`
`are attached hereto as Exhibits A-M. See TBMP § 528.05(d).
`
`Opposer has a reasonable belief of damage based on the relatedness of the goods and the
`
`arguable similarities of the marks. That Applicant’s and Opposer’s goods each include the
`
`identical description of goods, i.e., “corn-based snack foods” is evidenced by the pleadings and
`
`the records of the subject application and Opposer’s cited Registration Number 2,550,300
`
`(Exhibit F). In Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis
`
`Kooperatifleri Birligi, 99 USPQ2d 1545, 1548 (TTAB 2011), the Board found that Opposer had
`
`shown a reasonable belief of damage and a real interest in the case in view of arguable
`
`similarities in the marks and relatedness of the goods. That the marks at issue are arguably
`
`similar is evident from the common meanings of the marks, the similar visual appearance, and
`
`similar auditory impression of the terms BEST CHOICE and BETTER CHOICE, the latter of
`
`49005866.1
`
`4
`
`

`
`
`
`which comprises the dominant portion of Applicant’s mark. Thus, the allegations of Opposer’s
`
`complaint are sufficient to allege standing and to support a claim of likelihood of confusion.
`
`
`
`2.
`
`
`
`Opposer Has Stated a Claim Upon Which Relief May be Granted
`
`a.
`
`A Registered Mark is Presumed Valid
`
`Applicant argues that Opposer’s “BEST CHOICE” mark is invalid because it is merely
`
`descriptive. Opposer’s 13 certificates of registration for its BEST CHOICE marks are all on the
`
`Principal Register, as evidenced by Exhibits A-M, and are “prima facie evidence of the validity
`
`of these registered marks and of the registration of the marks, of the owner’s ownership of the
`
`marks, and of the owner’s exclusive right to use the registered marks in commerce on or in
`
`connection with the goods or services specified in the certificates, subject to any conditions or
`
`limitations stated in the certificate.” Lanham Act § 33(a), 15 U.S.C. § 1057(b).
`
`An Incontestable Mark is Presumed to be Nondescriptive or to Have
`b.
`
`Acquired Secondary Meaning
`
`The registered marks of Exhibits A, B, C, D, E, F, G, and M are all “incontestable,” and
`
`these registrations “shall be conclusive evidence of the validity of the registered mark and of the
`
`registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s
`
`exclusive right to use the registered mark in commerce.” Lanham Act § 33(a), 15 U.S.C. §
`
`1115(b). Thus, it is conclusively presumed either that the mark is nondescriptive, or if
`
`descriptive, that the mark has acquired secondary meaning. Park ‘N Fly, Inc. v. Dollar Park &
`
`Fly, Inc., 469 U.S. 189, 205, 83 L. Ed. 2d 582, 105 S. Ct. 658, 224 USPQ 327, 334 (1985),
`
`McCarthy on Trademarks, Vol. 2, § 11:44 (Thompson Reuters, 2014).
`
`
`
`c.
`
`Opposer’s Marks Are Not Merely Descriptive
`
`Even if Registrant’s registered marks were not presumed to be nondescriptive and to have
`
`acquired secondary meaning, Applicant has overlooked that Opposer owns and uses not merely a
`
`49005866.1
`
`5
`
`

`
`
`
`single “BEST CHOICE” mark, but a family of “BEST CHOICE” marks including 13
`
`registrations in 15 different classes. Opposer owns 5 registrations for the word mark BEST
`
`CHOICE, 7 registrations for the mark BEST CHOICE and Design, as well as a registration for
`
`the word mark BEST CHOICE GROWER’S CHOICE. All of these marks incorporate the term
`
`“BEST CHOICE” which is a distinguishing element of the mark that is recognized by customers
`
`as an identifying trademark in and of itself when it appears in a design mark or composite mark.
`
`See for example, Quality Inns Int’l. v. McDonald’s Corp., 695 F. Supp. 198, 8 USPQ2d 1633 (D.
`
`Md. 1988). (“a family of marks may have a synergistic recognition that is greater than the sum
`
`for each mark.”). See also, McDonald’s Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995)
`
`(Opposition of McCLAIM for legal services in which the court acknowledged “the strength of
`
`McDonald’s famous family of marks” and McDonald’s use and licensing on “a wide variety of
`
`goods and services”).
`
`As stated in paragraph 1 of its Notice, Opposer’s common law use of its marks dates back
`
`more than 30 years. Opposer’s Notice cites a registration obtained in 1986. Opposer obtained
`
`registrations for its “BEST CHOICE” marks for various corn-based snack foods in 1991
`
`(Exhibit B) and 2002 (Exhibit F), which are cited in its Notice of Opposition. That Opposer’s
`
`family of “BEST CHOICE” marks is a large and venerable one is evident from the Notice of
`
`Opposition and the cited registrations of record. Opposer denies that its family of marks is
`
`merely descriptive, and asserts that its “BEST CHOICE” marks provide no distinct knowledge of
`
`the characteristics of any of the products offered under the marks. A mark that “requires
`
`imagination, thought, and perception to arrive at the qualities or characteristics of the goods. . .is
`
`suggestive. A suggestive mark qualifies for registration without secondary meaning.” In re Nett
`
`Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564 (Fed. Cir. 2001). Even at the time of
`
`49005866.1
`
`6
`
`

`
`
`
`registration of Opposer’s first “BEST CHOICE” mark, the mark was suggestive of a line of
`
`products offered by independent grocery stores and supermarkets and obtained from Associated
`
`Wholesale Grocers.
`
`
`
`d.
`
`Opposer’s Synergistic Registrations Are Entitled To Broad Protection
`
`Applicant argues that Opposer’s marks are descriptive and thus entitled to only very
`
`narrow protection. For the reasons previously discussed, Opposer’s conclusions regarding the
`
`validity of Opposer’s marks are erroneous. Descriptive marks are indeed registrable on the
`
`Supplemental Register and they may also be registered on the Principal Register based on a
`
`showing of acquired distinctiveness under §2f. The statute provides that the Director may accept
`
`as prima facie evidence that a mark has become distinctive, as used on or in connection with the
`
`applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a
`
`mark by the applicant in commerce for the five years before the date on which the claim of
`
`distinctiveness is made. See 15 U.S.C. § 1052(f); See also TMEP § 1212.
`
`Even if not presumed to have acquired distinctiveness, many of the marks comprising
`
`Opposer’s family of “BEST CHOICE” have been in substantially exclusive and continuous use
`
`as a mark by Opposer in commerce for far longer than five years.1 All of Opposer’s registered
`
`marks are distinctive and are entitled to their registrations. Opposer’s “BEST CHOICE”
`
`formative marks comprise a family of marks with strong secondary meaning as a house line or
`
`brand available at independent grocery stores and supermarkets and provided by Associated
`
`Wholesale Grocers. Opposer is prepared to prove that its family of “BEST CHOICE” marks has
`
`
`1 In particular, as pled in Opposer’s Notice of Opposition: U.S. Registration No. 1,640,147 for BEST CHOICE
`registered April 9, 1991 for, inter alia, cookies, bakery goods, crackers, pretzels, and unpopped popcorn and U.S.
`Registration No. 2,550,300 for BEST CHOICE and Design registered March 19, 2002 for, inter alia, corn chips,
`corn-based snack foods, popped popcorn, flavored popcorn, corn pops, and unpopped popcorn.
`
`49005866.1
`
`7
`
`

`
`
`
`been widely used to generate an enormous volume of sales supported by extraordinary
`
`advertising expenses in a wide variety of advertising media.
`
`Even a weak mark is entitled to protection against the registration of a similar mark for
`
`closely related goods or services. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
`
`182 USPQ 108 (C.C.P.A. 1974). In this case, Applicant’s mark is presumed to be nondescriptive
`
`or to have acquired distinctiveness, has been widely used for decades, has become a very strong
`
`mark in the grocery and supermarket industry, and is entitled to protection against registration of
`
`Applicant’s substantially similar mark for identical goods.
`
`Applicant next notes that marks are considered in their entireties in determining
`
`likelihood of confusion, but proceeds to parse Opposer’s mark into the terms “CHOICE” and
`
`“BEST.” Applicant alleges that it has conducted searches of these independent terms which are
`
`attached to its motion as Exhibits 1-5. The only cited applications and registrations shown on
`
`Applicant’s exhibits that disclose use of the term “BEST CHOICE” are those owned by Opposer.
`
`Since the marks are to be considered in their entireties, Applicant’s evidence showing no use or
`
`registration of the independent terms “CHOICE” and “BEST” by a third party except marks
`
`owned by Opposer is probative of Opposer’s exclusive right to use its “BEST CHOICE” marks.
`
`Applicant’s conclusion that neither “BEST” nor “CHOICE” provide Opposer with the
`
`right to protect its “BEST CHOICE” family of marks is not well-founded, since the proper
`
`inquiry is whether Opposer has used and registered the combination of terms “BEST CHOICE,”
`
`which is properly pled in Opposer’s complaint. Applicant next alleges that “such protection
`
`should now be limited solely to the specific “BEST CHOICE” mark, as a whole and “only when
`
`the mark, as a whole, is used in connection with the specific goods set out in each registration.”
`
`Applicant would like the Board to ignore the fact that many of Opposer’s “BEST CHOICE”
`
`49005866.1
`
`8
`
`

`
`
`
`marks are used together as a family to offer a vast array of grocery items including the corn-
`
`based snack foods described in the application at issue.
`
`The gist of Applicant’s argument seems to be that the marks “BEST CHOICE” and
`
`“SIMPLY THE BETTER CHOICE” are sufficiently dissimilar as to avoid likelihood of
`
`consumer confusion even when used on identical goods. The Federal Circuit Court of Appeals
`
`has provided the following guidance with regard to determining and articulating likelihood of
`
`confusion:
`
`“The basic principle in determining confusion between
`marks is that marks must be compared in their entireties and must
`be considered in connection with the particular goods or services
`for which they are used. It follows from that principle that
`likelihood of confusion cannot be predicated on dissection of a
`mark, that is, on only part of a mark. On the other hand, in
`articulating reasons for reaching a conclusion on the issue of
`confusion, there is nothing improper in stating that, for rational
`reasons, more or less weight has been given to a particular feature
`of a mark, provided the ultimate conclusion rests on consideration
`of the marks in their entireties. Indeed, this type of analysis
`appears to be unavoidable.”
`
`
`In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).
`
`
`
`Thus, in comparing marks, the “dominant” or “salient” features receive greater weight
`
`than other features. See Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 30
`
`U.S.P.Q.2d 1930, 1933 (10th Cir. 1994); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710
`
`F.2d 1565, 218 U.S.P.Q. 390, 395 (Fed. Cir. 1983). If the dominant portion of both marks is the
`
`same, then confusion may be likely notwithstanding peripheral differences. See, e.g., In re
`
`Chatam International Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)
`
`(“Viewed in their entireties with non-dominant features appropriately discounted, the marks
`
`[GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly
`
`identical”). In this case, the terms “SIMPLY THE” in Applicant’s mark “SIMPLY THE
`
`49005866.1
`
`9
`
`

`
`
`
`BETTER CHOICE” are less forceful and meaningful than the terms “BETTER CHOICE,”
`
`which are determinative of the meaning of Applicant’s mark, and thus dominate the mark. The
`
`terms “BETTER CHOICE” and “BEST CHOICE” have virtually identical meanings, and
`
`substantially similar visual appearance and auditory impression. Addition of the terms
`
`“SIMPLY THE” fails to distinguish Applicant’s mark from Opposer’s mark. This is particularly
`
`so if the two marks are encountered in the same grocery or supermarket aisle by an impulse
`
`purchaser of corn-based snack foods.
`
`II. Motion for Summary Judgment
`
`
`
`
`
`A.
`
`Time for Filing the Motion
`
`A party may not file a motion for summary judgment until the party has made its initial
`
`disclosures, except for a motion asserting claim or issue preclusion or lack of jurisdiction by the
`
`Trademark Trial and Appeal Board. 37 C.F.R § 2.127(e)(1). See Qualcomm, Inc. v. FLO Corp.,
`
`93 USPQ2d 1768, 1769-70 (TTAB 2010) (motion for summary judgment denied as premature
`
`where movant had yet to serve initial disclosures).
`
`
`
`
`
`B.
`
`Facts
`
`Opposer has not consented to consideration of Applicant’s untimely Motion for Summary
`
`Judgment. In its scheduling order dated July 22, 2014, the Board set a deadline for providing
`
`initial disclosures of October 30, 2014. As evidenced by affidavit of counsel attached hereto as
`
`EXHIBIT N, Applicant has not yet made its initial disclosures. Registrant’s claim that it will be
`
`damaged by registration of Applicant’s mark has not been litigated in any prior proceeding and
`
`there are no concurrent proceedings. No issues of fact have yet been determined in any
`
`proceeding between Registrant and Applicant on any cause of action. This Board has
`
`jurisdiction over trademark opposition proceedings.
`
`
`
`49005866.1
`
`10
`
`

`
`
`
`
`
`
`
`C.
`
`Argument
`
`Because Applicant has not made its initial disclosures, the Board will only entertain a
`
`Motion for Summary Judgment that is based on claim preclusion, collateral estoppel, or lack of
`
`jurisdiction. Applicant’s Motion does not allege any of these grounds, nor are there any facts to
`
`support them.
`
`
`
`Under the three-part test for claim preclusion: (1) there must be identity of parties (or
`
`their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the
`
`second claim is based on the same set of transactional facts as the first. See Nasalok Coating
`
`Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1375-77 (Fed. Cir. 2008). Since there
`
`has been no prior litigation between the parties, none of the tests for claim preclusion are met.
`
`See Exhibit N.
`
`
`
`Under the four-part test for issue preclusion: there must be (1) identity of an issue in a
`
`prior proceeding, (2) the identical issue was actually litigated, (3) determination of the issue was
`
`necessary to the judgment in the prior proceeding, and (4) the party defending against preclusion
`
`had a full and fair opportunity to litigate the issue in the prior proceeding. Mayer/Berkshire
`
`Corp. v. Berkshire Fashions, 424 F.3d 1229, 76 USPQ2d 1310, 1312 (Fed. Cir. 2005), citing
`
`Montana v. United States, 440 U.S. 147, 153-55, 99 S.Ct. 970, 59 L.Ed.2d 210 (1979). Since
`
`there has been no prior litigation between the parties, none of the tests for issue preclusion are
`
`met.
`
`
`
`The Board is empowered to determine the right to register a mark. 15 U.S.C.
`
`§§ 1067 and 1068 provide that in every case of opposition to registration the Director shall direct
`
`a Trademark Trial and Appeal Board to determine and decide the respective rights of
`
`49005866.1
`
`11
`
`

`
`
`
`registration, and establish actions that may be taken by the Board. Since this action is an
`
`opposition to registration of Applicant’s mark, the Board has jurisdiction over it.
`
`SUMMARY
`
`With regard to the Motion to Dismiss, Opposer has established standing, as well as the
`
`grounds upon which it seeks refusal of registration of Applicant’s mark. The incontestable status
`
`of Opposer’s registered marks establishes that its registrations are conclusively presumed to be
`
`nondescriptive, or if descriptive, to have acquired secondary meaning. The age, number, and
`
`scope of the pleaded registrations for Opposer’s venerable “BEST CHOICE” mark further
`
`establish that it has acquired distinctiveness and functions as a strong source identifier of a line
`
`of grocery and supermarket products, including the corn-based snack products listed in both
`
`Applicant’s and Registrant’s descriptions of goods. Opposer’s “BEST CHOICE” mark
`
`comprises a family of marks which has a synergistic recognition that entitles it to at least the
`
`ordinary right to protect its BEST CHOICE family of marks, without the limitations sought by
`
`Applicant.
`
`In weighing all of the factors, Opposer respectfully requests that the Motion to Dismiss
`
`be denied. Opposer has established standing, and that its claim that a valid ground exists for
`
`denying Applicant’s registration is at least plausible on its face. No sufficient basis has been
`
`provided to dismiss this Opposition proceeding and to deny Opposer the right to establish
`
`likelihood of confusion of Applicant’s mark with Opposer’s mark.
`
`With regard to the Motion for Summary Judgment, no initial disclosures have been made
`
`in this case, there is no claim or issue preclusion or lack of jurisdiction, and Opposer has not
`
`consented to hearing of Applicant’s motion. Opposer respectfully requests that Applicant’s
`
`Motion for Summary Judgment be denied as untimely.
`
`49005866.1
`
`12
`
`

`
`
`
`Date: October 16, 2014
`
`By:
`
`Respectfully submitted,
`
`POLSINELLI PC
`
`
`
`/Michael A. Williamson/
`Michael A. Williamson, Reg. No. 54,541
`mwilliamson@polsinelli.com
`Marcia J. Rodgers, Reg. No. 33,765
`mrodgers@polsinelli.com
`Lawrence A. Swain
`lswain@polsinelli.com
`900 W. 48th Place, Suite 900
`Kansas City, MO 64112
`Tel.: (816) 360-4168
`Fax: (816) 753-1536
`
`ATTORNEYS FOR OPPOSER
`ASSOCIATED WHOLESALE GROCERS, INC.
`
`49005866.1
`
`13
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true complete copy of the foregoing Brief in Opposition to Motion
`
`to Dismiss has been served on Applicant’s Attorney of Record via First Class U.S. Mail, postage
`
`prepaid, with a courtesy copy served via e-mail, on October 16, 2014, addressed to:
`
`Sanford J. Asman
`Law Office of Sanford J. Asman
`570 Vinington Court
`Atlanta, Georgia 30350
`sandy@asman.com
`
`ATTORNEY FOR APPLICANT
`
`
`
`
`/Michael A. Williamson/
`Michael A. Williamson
`
`
`
`49005866.1
`
`14
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 1 of 2
`
`
`
`United States Patent and Trademark Office
`
`Homelsite Indexlsearch I FAQIGlossary|GuidesIContactsIeBusinessIeBiz alertsl News I Help
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Thu Oct 16 03:21:01 EDT 2014
`
`NEWUSER =Wr1'U~E“5E“RC"°G
`
`HELP‘
`
`II-099!-ltél Please Iogout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
`
`.
`to TESS)
`Typed Drawing
`
`( Use the "Back" button of the Internet Browser to return
`
`Word Mark
`Goods and
`Services
`
`BEST CHOICE
`
`IC 029. US 046. G & S: CANNED AND PACKAGED FOODS--NAMELY, FRUIT COCKTAIL, CHOPPED
`AND WHOLE MUSHROOMS, APPLE SAUCE, VEGETABLES, GREEN BEANS, SWEET PEAS, CLING
`PEACHES, SLICED BEETS, WAX BEANS, CORN. FIRST USE: 19831106. FIRST USE IN COMMERCE:
`19841113
`
`IC 030. US 046. G & S: SAUCES EXCLUDING APPLE SAUCE AND CRANBERRY SAUCE, SPICES, AND
`STAPLE FOOD PRODUCTS -- NAMELY, TOMATO SAUCE AND TOMATO CATSUP. FIRST USE:
`19831106. FIRST USE IN COMMERCE: 19841113
`
`IC 032. US 046. G & S: TOMATO JUICE, AND CANNED AND BOTTLED FRUIT JUICES AND
`VEGETABLE JUICES. FIRST USE: 19831106. FIRST USE IN COMMERCE: 19841113
`
`Mark Drawing
`Code
`
`(1) TYPED DRAWING
`
`Serial Number
`
`73552992
`
`Filing Date
`Current Basis
`
`August 12, 1985
`1A
`
`Original Filing
`Basis
`
`1A
`
`Published for
`
`Opposition
`
`Registration
`Number
`
`Registration
`Date
`
`Owner
`
`Attorney of
`Record
`
`Type of Mark
`Register
`Affidavit Text
`
`Renewal
`
`LivelDead
`Indicator
`
`April 8, 1986
`
`1399721
`
`July 1, 1986
`
`(REGISTRANT) ASSOCIATED WHOLESALE GROCERS, INC. CORPORATION MISSOURI 5000
`KANSAS AVENUE KANSAS CITY KANSAS 66106
`
`LAWRENCE A. SWAIN
`
`TRADEMARK
`
`PRINCIPAL
`
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20061031.
`1ST RENEWAL 20061031
`‘
`
`LIVE
`
`http://tmsearch.uspto.gov/bin/showfie1d?f=doc&state=4804:uimeu7.4.1
`
`Opposer’s Ex. A
`Opp. No. 91217489
`AWG, Inc. v. Medora
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
`
`TESS HOME
`
`l‘Ib.‘.‘¢l_JEitH
`
`5%IFv‘L|i.iI1JHH1 Hugs: I-"emu III:-.:-wt-u Una
`
`I.HOME I SITE INDEXI SEARCH I GBUSINESS I HELP I PRIVACY POLICY
`
`http://tmsearch.uspto.gov/bin/showfie1d?f=doc&state=4804:uimeu7.4. 1
`
`10/16/2014
`
`

`
`Status Search SN 73552992
`
`Page 1 of 2
`
`ADVISORY: If you experience any trouble when clicking on the direct links to published records in Notices of
`Publication received via email and/or that appear in TSDR (Trademark Status and Document Retrieval), you can
`access the individual record by either 1) copying the link from the email or Notice of Publication in TSDR and pasting it
`into the url address of a supported browser (IE 10.0 or later and the latest versions of FireFox, Chrome or Safari); or 2)
`visiting the TMOG main page at https://_tmog.uspto.gov/. selecting the Official Gazette issue date from the list of issues
`in the upper left corner and then entering the 8 digit serial number in the box labeled “Search By" and clicking on the
`magnifying glass icon to execute the search.
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on:
`
`This page was generated by TSDR on 2014-10-16 16:30:03 EDT
`
`Mark:
`
`BEST CHOICE
`
`No Image exists for this
`case.
`
`US Serial Number:
`
`73552992
`
`Application Filing Date: Aug. 12, 1985
`
`US Registration Number:
`
`1399721
`
`Registration Date:
`
`Jul. 01, 1986
`
`I
`
`Register:
`
`Principal
`
`Mark Type:
`
`Trademark
`
`Status:
`
`The registration has been renewed.
`
`Status Date:
`
`Oct. 31, 2006
`
`Publication Date:
`
`Apr. 08, 1986
`
`Mark Information
`
`Goods and Services
`
`Basis Information (Case Level)
`
`Current Owner(s) Information
`
`Attorneylcorrespondence Information
`
`Prosecution History
`
`Maintenance Filings or Post Registration Information
`
`TM Staff and Location Information
`
`Assignment Abstract Of Title Information - Click to Load
`
`Proceedings - Click to Load
`
`http://tsdr.uspto.gov/
`
`10/16/2014
`
`

`
`Status Search SN 73552992
`
`Page 2 of 2
`
`http://tsdr.uspto.gov/
`
`10/16/2014
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 1 of 2
`
`United States Patent and Trademark Office
`
` Homelsite Indexlsearch I FAQ[Glossary]GuidesIContacts|eBusinessIeBiz alertsl News|HeIp
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Thu Oct 16 03:21:01 EDT 2014
`
`TESSHCJME Newusrn
`
`smucrunan
`
`tar.-ow.-..:u.m SEARCH 06
`
`
`HELP
`
`II-.°9°UI Please logout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
`
`
` ""3 5“*“"5 . ( Use the "Back" button of the Internet Browser to return
`
`to TESS)
`
`Typed Drawing
`
`Word Mark
`
`BEST CHOICE
`
`GOOQIS and
`SGWICGS
`
`IC 003. US 001 004 006 O50 O51 052. G & S: LAUNDRY BLEACH, LAUNDRY DETERGENT.
`DISHWASHING DETERGENT, FABRIC SOFTENER, [SCOURING CLEANSER,] [SPRAY STARCH ].
`FIRST USE: 19850401. FIRST USE IN COMMERCE: 19850401
`
`IC 004. US 015. G & S: CHARCOAL BRIQUETTES. FIRST USE: 19890201. FIRST USE IN COMMERCE:
`19890201
`
`IC 006. US 016. G & S: ALUMINUM FOIL. FIRST USE: 19850825. FIRST USE IN COMMERCE: 19850825
`
`IC 016. US 002 005 022 023 029 037 038 050. G & S: BATH TISSUE, PAPER TOWELS, PAPER NAPKINS,
`FACIAL TISSUE, PLASTIC WRAP, PLASTIC SANDWICH BAGS, FOOD STORAGE BAGS, [COOKING
`BAGS. ] FREEZER BAGS, TRASH AND GARBAGE BAGS, LAWN AND LEAF BAGS. FIRST USE:
`19850501. FIRST USE IN COMMERCE: 19850501
`
`IC 021. US 022. G 8: S: FOAM CUPS. FIRST USE: 19890220. FIRST USE IN COMMERCE: 19890220
`
`IC 029. US 046. G & S: CANNED AND FROZEN VEGETABLES, SAUERKRAUT, CANNED AND FROZEN
`POTATOES, PORK AND BEANS, CANNED, FROZEN AND DRIED BEANS, CANNED PUMPKIN, CANNED
`PIMIENTOS, OLIVES, PEANUT BUTTER, FRUIT JELLIES, JAMS AND PRESERVES, EGGS, SALAD
`DRESSINGS. MAYONNAISE, SANDWICH SPREAD, VEGETABLE OIL, VEGETABLE SHORTENING.
`APPLE BUTTER, CRANBERRY SAUCE, SWEET AND DILL PICKLES, CANNED SOUPS. NON-DAIRY
`CREAMER, NON-DAIRY WHIPPED TOPPING, MARGARINE, BUTTER, FRUIT-BASED PIE FILLINGS,
`CANNED, FROZEN AND PROCESSED FRUITS, [POTATO CHIPS, ]CURED AND COOKED MEAT AND
`POULTRY, CANNED FISH, CANNED AND INSTANT DRY MILK, SHELLED, ROASTED AND PROCESSED
`NUTS, TOMATO PASTE, CHEESE, NATURAL AND IMITATION, CHEESEFOOD, CHEESESPREAD. FIRST
`USE: 19831106. FIRST USE IN COMMERCE: 19831106
`
`IC 030. US 046. G & S: HONEY, MARSHMALLOWS, PREPARED MUSTARD, PICKLE RELISH, FLAVORED
`SYRUPS FOR TOPPINGS AND TABLE SYRUPS, SALT, VINEGAR, TEA, BAKING MIXES, PANCAKE AND
`WAFFLE MIXES, CHOCOLATE CHIPS, FROSTING AND FROSTING MIX, CORNMEAL, FLOUR, SUGAR,
`HOT COCOA MIX, BREAKFAST CEREALS, RICE, DRIED AND FROZEN PASTA, MACARONI DINNERS,
`COOKIES, BREAD, BAKERY GOODS, FROZEN BREAD DOUGH, CANNED BISCUITS AND BREAD,
`STUFFING, CRACKERS, PRETZELS, PIE SHELLS, [ICE CREAM, ] SAUCES (EXCLUDING APPLESAUCE
`AND CRANBERRY SAUCE), TOMATO SAUCE, TOMATO CATSUP, SPICE, FROZEN PASTA. FIRST USE:
`19831106. FIRST USE IN COMMERCE: 19831106
`
`IC 031. US 001 046. G & S: UNPOPPED POPCORN, DOG FOOD, CAT FOOD. FIRST USE: 19850730.
`
`http://tmsearch.uspto.gov/bin/showfie1d?f=doc&state=4804:uimeu7.5.1
`
`0pposer’s Ex. 3
`Opp. No. 91217489
`AWG, Inc. v. Medora
`
`

`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
`
`FIRST USE IN COMMERCE: 19850730
`
`IC 032. US 045 046. G & S: CANNED, BOTTLED AND FROZEN FRUIT JUICES. FRUIT-FLAVORED
`DRINKS CONTAINING WATER, SOFT DRINKS. FIRST USE: 19831106. FIRST USE IN COMMERCE:
`19831106
`
`Mark Drawing
`(1) TYPED DRAWING
`code
`Serial Number 73814814
`
`July 24, 1989
`Filing Date
`Current Basis 1A
`
`Original Filing
`Basis
`Published for
`opposition
`Registration
`Number
`R '
`t
`t‘
`Diff '3 '°"
`Owner
`
`IA
`
`August 28. 1990
`
`1640147
`.
`April 9. 1991
`(REGISTRANT) ASSOCIATED WHOLESALE GROCERS. INC. CORPORATION MISSOURI 5000 KANSAS
`AVENUE KANSAS CITY KANSAS 66106
`
`(LAST LISTED OWNER) ASSOCIATED WHOLESALE GROCERS, INC. CORPORATION KANSAS 5000
`KANSAS AVENUE KANSAS CITY KANSAS 66106
`
`