Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA646424
`ESTTA Tracking number:
`12/22/2014
`
`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
`Entity
`Address
`
`Windy Hill Spirits, Inc.
`Citizenship
`Corporation
`209 10th Avenue South Suite 400
`Nashville, TN 37203
`UNITED STATES
`
`Delaware
`
`Attorney informa-
`tion
`
`Robert L. Brewer and Martha B. Allard
`Bass, Berry & Sims PLC
`150 3rd Ave. S. Suite 2800
`Nashville, TN 37201
`UNITED STATES
`trademarks@bassberry.com Phone:615-742-7944
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86221797
`12/22/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`12/02/2014
`01/01/2015
`
`American Barrels, LLC
`11991 Rosemount Drive
`Fort Myers, FL 33913
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bourbon whisky
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86221837
`12/22/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`12/02/2014
`01/01/2015
`
`American BArrels, LLC
`11991 Rosemount Drive
`Fort Myers, FL 33913
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bourbon whisky
`
`Grounds for Opposition
`
`
`ESTTA646424
`ESTTA Tracking number:
`12/22/2014
`
`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
`Entity
`Address
`
`Windy Hill Spirits, Inc.
`Citizenship
`Corporation
`209 10th Avenue South Suite 400
`Nashville, TN 37203
`UNITED STATES
`
`Delaware
`
`Attorney informa-
`tion
`
`Robert L. Brewer and Martha B. Allard
`Bass, Berry & Sims PLC
`150 3rd Ave. S. Suite 2800
`Nashville, TN 37201
`UNITED STATES
`trademarks@bassberry.com Phone:615-742-7944
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86221797
`12/22/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`12/02/2014
`01/01/2015
`
`American Barrels, LLC
`11991 Rosemount Drive
`Fort Myers, FL 33913
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bourbon whisky
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86221837
`12/22/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`12/02/2014
`01/01/2015
`
`American BArrels, LLC
`11991 Rosemount Drive
`Fort Myers, FL 33913
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bourbon whisky
`
`Grounds for Opposition
`
`
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`85937554
`
`NONE
`
`Word Mark
`Design Mark
`
`DON'T TREAD ON ME
`
`Application Date
`
`05/20/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an image of a coiled, hissing snake centered over the
`words "DON'T TREAD". The words "ON ME" are centered under the words
`"DON'T TREAD".
`Class 033. First use: First Use: 0 First Use In Commerce: 0
`Alcoholic beverages, namely, moonshine
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`
`86482416
`
`Application Date
`
`12/16/2014
`
`NONE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Related Proceed-
`ings
`
`Attachments
`
`The mark consists of an image of a coiled, hissing snake.
`
`Class 033. First use: First Use: 0 First Use In Commerce: 0
`Alcoholic beverages, namely, moonshine
`
`Opposition Nos. 91216036 and 91216796
`
`85937554#TMSN.png( bytes )
`86482416#TMSN.png( bytes )
`notice of opposition.pdf(73086 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
`
`/Martha B. Allard/
`Robert L. Brewer and Martha B. Allard
`12/22/2014
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application
`Serial Nos.: 86/221,797 and 86/221,837
`by American Barrels, LLC
`
`For the Marks: Snake Bottle Design; LIVE FREE OR DIE and Snake Bottle Design
`
`All Filed: March 14, 2014
`
`All Published in the Official Gazette
`
`on December 2, 2014
`
`Windy Hill Spirits, Inc.,
`
`Opposer,
`
`Applicant.
`
`American Barrels, LLC,
`
`Opposition No.
`
`Box TTAB FEE
`
`Assistant Commissioner for Trademarks
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION i
`
`Windy Hill Spirits, Inc. (“Opposer”), by and through its undersigned attorneys, believes
`
`that it will be damaged by the registration of the marks shown in Application Serial Nos.
`
`
`
`86/221,797 and 86/221,837, all in International Class 33 (the “Applications”), hereby opposes
`
`the same, and requests that registration be refused.
`
`In support of its opposition, Opposer asserts the following:
`
`1.
`
`Opposer, Windy Hill Spirits, Inc., is a Delaware corporation with its principal
`
`place of business at 209 10th Avenue South, Suite 400, Nashville, Tennessee 37203.
`
`2.
`
`Opposer filed an application to register its DON’T TREAD ON ME and Snake
`
`Design Mark with the U.S. Patent and Trademark Office for use with “alcoholic beverages,
`
`‘
`
`namely, moonshine.” The application was filed on May 20, 2013 (Ser. No. 85/937,554).
`
`Opposer’s application is currently the subject of an opposition proceeding initiated by Applicant.
`
`3.
`
`Opposer has adopted and is using its DON’T TREAD ON ME with Snake Design
`
`Mark in connection with alcoholic beverages, and the mark has been in use anywhere and in
`
`interstate commerce since at least as early as October 2013. Opposer has common law rights in
`
`and to its DON’T TREAD ON ME with Snake Design Mark.
`
`4.
`
`Opposer has filed an application to register its Snake Design Mark with the U.S.
`
`Patent and Trademark Office for use with “alcoholic beverages, namely, moonshine.” The
`
`application was filed on December 16, 2014 (Ser. No. 86/482,416).
`
`5.
`
`Opposer has adopted and is using its Snake Design Mark in interstate commerce
`
`and has common law rights in and to its mark (Opposer’s Snake Design Mark and its DON’T
`
`TREAD ON ME with Snake Design Mark referred to collectively herein as “Opposer’s Marks”).
`
`Opposer used its Snake Design Mark anywhere and in interstate commerce at least as early as
`
`October, 2013.
`
`
`
`6.
`
`Upon information and belief, American Barrels, LLC (“Applican ”) is a Florida
`
`limited liability company with its principal place of business at 11991 Rosemount Drive, Fort
`
`Myers, Florida 33913.
`
`7.
`
`Upon information and belief, Applicant filed applications to register its Snake
`
`Bottle Design (Ser. No. 86/221,797) and its LIVE FREE OR DIE and Snake Design Mark (Ser.
`
`No. 86/221,837), all for use with “bourbon whiskey” in International Class 33, on March 14,
`
`2014, based on intent to use (collectively, “Applicant’s Marks”). Applicant’s Marks were
`
`published for opposition in the Official Gazette of the U.S. Patent and Trademark Office on 1
`
`December 2, 2014.
`
`8.
`
`Upon information and belief, Applicant’s Marks were first used anywhere and in
`
`interstate commerce no earlier than the fall of 2014.
`
`9.
`
`The filing date of Opposer’s application to register its DON’T TREAD ON ME
`
`and Snake Design Mark is earlier than the filing date of the applications to register App1icant’s
`
`Marks.
`
`10.
`
`Opposer’s date of first use anywhere and in interstate commerce of Opposer’s
`
`Marks is prior to Applicant’s filing date of March 14, 2014.
`
`ll.
`
`Opposer’s date of first use anywhere and in interstate commerce of Opposer’s
`
`Marks is prior to App1icant’s date of first use anywhere and in interstate commerce.
`
`12.
`
`Moonshine offered under Opposer’s Marks has enjoyed tremendous commercial
`
`success. Opposer’s Marks have been heavily advertised in both print form and in electronic form
`
`and heavily promoted. Additionally, Opposer has spent substantial sums of money advertising
`
`and promoting the goods offered under its Marks.
`
`
`
`13.
`
`Applicant’s Marks are confusingly similar to Opposer’s Marks, such that when
`
`Applicant’s Marks are used in connection with Applicant’s goods, they so nearly resemble
`
`Opposer’s Marks as to be likely to cause confusion, to cause mistake, or to deceive. Consumers
`
`are likely to falsely believe that the goods of the Applicant offered under Applicant’s Marks are
`
`sponsored, endorsed, or approved by Opposer, or are in some way affiliated, connected, or
`
`associated with Opposer.
`
`14.
`
`The goods described in the applications to register Applicant’s Marks are highly
`
`related to the goods offered by Opposer under Opposer’s Marks.
`
`15.
`
`Any defect, objection, or fault found with any of Applicant’s goods offered under
`
`Applicant’s Marks would injure the valuable reputation and goodwill that Opposer has built up
`
`and established under Opposer’s Marks.
`16.
`If Applicant is granted registration herein opposed, it would thereby obtain at
`
`least a prima facie exclusive right to use its Marks, which would be a source of damage and
`
`injury to Opposer due to the similarity between Applicant’s Marks and Opposer’s Marks.
`
`WHEREFORE, Opposer believes that
`
`it will be damaged by the registration of
`
`Applicant’s Marks, and requests that this Opposition be sustained, and that registration to
`
`Applicant be refused.
`
`Please direct all communications concerning the referenced opposition proceeding to Robert
`
`L. Brewer, Bass, Berry & Sims PLC, 150 Third Avenue South, Suite 2800, Nashville, Tennessee
`
`37201 at (615) 742-7400.
`
`Please charge any fees due in connection with this proceeding to Deposit Account
`
`No. 502483-l2ll and charge our internal client-matter number 119609-300.
`
`Respectfully submitted,
`
`
`
`Date: Decemberl
`
`, 2014
`
`By:
`
`l[
`
`l if“
`
`Robert L. Brewer, Esq.
`Martha B. Allard, Esq.
`J. Devon Holbrook, Esq.
`Bass, Berry & Sims PLC
`150 Third Avenue South, Suite 2800
`Nashville, Tennessee 37201
`(615) 742-6200
`rbrewer@bassberry.com
`mallard@bassberry.com
`jholbrook@bassberry.com
`
`
`
`I hereby certify that on this
`
`CERTIFICATE OF SERVICE
`‘NC
`day of December, 2014, a true and complete copy of the
`
`foregoing Notice of Opposition was served on the following persons by mailing the same Via
`
`First Class Mail, postage prepaid, in an envelope addressed to:
`
`Erin E. Houck-Toll, Esq.
`John D. Agnew, Esq.
`Henderson, Franklin, Stames & Hoult, P.A.
`P.O. Box 280
`
`Fort Myers, Florida 33902-0280
`erin.houck-toll@henlaw.com
`john.agnew@henlaw.com
`
`Wm» Wm
`
`Marian Moore
`
`Paralegal
`
`136380093
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