Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA657625
`ESTTA Tracking number:
`02/24/2015
`
`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
`
`Unique Photo Inc.
`Corporation
`123 US Highway 46
`Fairfield, NJ 07004
`UNITED STATES
`
`Citizenship
`
`New Jersey
`
`Attorney informa-
`tion
`
`Daniel P. Laine
`Lerner, David, Littenberg, Krumholz & Mentlik
`600 South Avenue West
`Westfield, NJ 07090
`UNITED STATES
`dlaine@ldlkm.com, litigation@ldlkm.com Phone:908 654 5000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`79153014
`02/24/2015
`
`1218382
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`
`02/03/2015
`03/05/2015
`
`05/13/2014
`
`Sanjay Agarwal
`Aegis Vision Limited
`London, W7 2QE
`UNITED KINGDOM
`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: Mobile phone cases; camera cases; laptop
`cases, including bags, sleeves and pouches specially adapted for laptops; cases adapted for elec-
`tronic equipment, namely, cases adapted for electronic diariesand portable media players; mobile
`phone accessories, namely, lanyards, pendants and charms all specially adapted for mobile phones;
`hands free kits for mobilephones; battery chargers for mobile phones; headphones; audio speakers;
`speakers, namely, bass speakers, loud speakers;audio equipment, namely, speakers; car audio
`speakers; personal stereos; stereoapparatus, namely, stereo tuners; stereo amplifiers; stereos,
`namely, stereo receivers; computer docking stations; portable music player docking stations; mobile
`phone docking stations; MP3 player docking stations; mobile radio transmitting apparatus;
`earphones; sound generationapparatus, namely, portable media players; sound amplification appar-
`atus, namely, amplifiers; sound reproduction apparatus; sunglasses and sunglasses cases
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`

`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`1987293
`
`07/16/1996
`
`I'M UNIQUE
`
`NONE
`
`Application Date
`
`09/12/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Class 042. First use: First Use: 1995/06/00 First Use In Commerce: 1995/06/00
`mail order catalog, retail store services, and wholesale distributorships featuring
`photographic equipment, photographic supplies, imaging equipment, film pro-
`jectors, video tape, imaging supplies andbinoculars
`
`U.S. Registration
`No.
`Registration Date
`
`2335605
`
`03/28/2000
`
`Word Mark
`Design Mark
`
`UNIQUE
`
`Application Date
`
`04/06/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1977/08/00 First Use In Commerce: 1977/08/00
`RETAIL STORE SERVICES AND MAIL ORDER CATALOG SERVICES BOTH
`FEATURING PHOTOGRAPHIC EQUIPMENT AND SUPPLIES, DARK ROOM
`EQUIPMENT AND SUPPLIES, BINOCULARS, FILM PROJECTORS, AND
`BATTERIES
`
`U.S. Registration
`No.
`Registration Date
`
`3048697
`
`01/24/2006
`
`Word Mark
`
`UNIQUE DIRECT
`
`Application Date
`
`01/13/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2003/12/01 First Use In Commerce: 2003/12/01
`Mail order catalog services featuring batteries, cigarette lighters and accessor-
`ies, umbrellas, health and beauty aids,over-the-counter medicines, food, dolls,
`toys, locks, apparel, light bulbs, flashlights, greeting cards, envelopes, andwrit-
`ing implements
`
`U.S. Registration
`No.
`Registration Date
`
`2033558
`
`01/28/1997
`
`Application Date
`
`10/02/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`UNIQUE PHOTO
`
`NONE
`
`Class 042. First use: First Use: 1968/12/00 First Use In Commerce: 1968/12/00
`mail order catalog services featuring photographic equipment, photographic sup-
`plies, imaging equipment, imaging supplies, film projectors, video tapes, and
`binoculars
`
`U.S. Registration
`No.
`Registration Date
`
`3704895
`
`11/03/2009
`
`Word Mark
`Design Mark
`
`UNIQUE PHOTO
`
`Application Date
`
`04/01/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1996/11/00 First Use In Commerce: 2008/04/00
`RETAIL STORE, RETAIL ON LINE AND RETAILCATALOG SERVICES FEA-
`TURING A WIDE VARIETY OF CONSUMER GOODS OF OTHERS
`Class 040. First use: First Use: 1996/11/00 First Use In Commerce: 2008/04/00
`PHOTOGRAPHIC FILM AND DIGITAL IMAGE PROCESSING
`
`U.S. Registration
`No.
`Registration Date
`
`1988699
`
`07/23/1996
`
`Word Mark
`Design Mark
`
`UNIQUE PHOTO
`
`Application Date
`
`09/12/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1968/12/00 First Use In Commerce: 1968/12/00
`mail order catalog and retail store services featuring photographic equipment,
`photographic supplies, imaging equipment, film projectors, video tape, imaging
`supplies and binoculars
`
`U.S. Registration
`No.
`Registration Date
`
`2920948
`
`01/25/2005
`
`Word Mark
`Design Mark
`
`UNIQUE TOTS
`
`Application Date
`
`03/31/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`Class 035. First use: First Use: 2004/03/15 First Use In Commerce: 2004/03/15
`Wholesale distributorship featuring baby bottles, baby nipples and tops therefor,
`plates, cups, bowls, eating utensils,cleaning supplies, pacifiers, bibs, rattles,
`teethers, toys, mobiles, lamps, night lights, switch plates for lights, blankets, gift
`boxes, rulers, totes, diaper bags, dolls, wash cloths, medicine droppers, aspirat-
`ors, hair bands, hair brushes, combs, window shades, hangers, mittens and tow-
`els
`
`U.S. Registration
`No.
`Registration Date
`
`2994632
`
`09/13/2005
`
`Word Mark
`Design Mark
`
`UNIQUE TOTS
`
`Application Date
`
`03/30/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2004/03/15 First Use In Commerce: 2004/03/15
`Wholesale distributorship featuring baby bottles, baby nipples and tops therefor,
`plates, cups, bowls, eating utensils,cleaning supplies, pacifiers, bibs, rattles,
`teethers, toys, mobiles, lamps, night lights, switch plates for lights, blankets, gift
`boxes, rulers, totes, diaper bags, dolls, wash cloths, medicine droppers, aspirat-
`ors, hair bands, hair brushes, combs, window shades, hangers, mittens and tow-
`els
`
`Attachments
`
`UPHOTO 10.2O-064 Notice of Opposition 24-February-2015.pdf(21447 bytes )
`75676746#TMSN.png( bytes )
`78351284#TMSN.png( bytes )
`77704464#TMSN.png( bytes )
`74727972#TMSN.png( bytes )
`78393964#TMSN.png( bytes )
`78393287#TMSN.png( 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
`
`/Daniel P. Laine/
`Daniel P. Laine
`02/24/2015
`
`

`
`TRADEMARK
`UPHOTO 10.2O-064
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`UNIQUE PHOTO, INC.,
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`v.
`
`
`
`
`
`SANJAY AGARWAL,
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` : Serial No. 79/153014
` :
` : Filed: 5/13/2014
` :
` : For: UUNIQUE
` :
` : Published: 2/3/2015
` :
` : Opposition No. ____________
` X
`
`
`
`NOTICE OF OPPOSITION
`
`Unique Photo Inc., a corporation organized and existing under the laws of the State of
`
`
`
`New Jersey and having an office and place of business at 123 US Highway 46, Fairfield, New
`
`Jersey 07004 ("Opposer"), believes it will be damaged by the registration of the mark shown in
`
`Application Serial No. 79/153014 in International Class 9 (the "Application") and hereby
`
`opposes registration of such mark in International Class 9. The specific grounds for such
`
`opposition are as follows:
`
`1.
`
`Opposer owns and uses the marks I'M UNIQUE, UNIQUE PHOTO, and
`
`UNIQUE PHOTO AND DESIGN in connection with, inter alia, services for photographic
`
`equipment, imaging equipment and supplies, UNIQUE in connection with, inter alia, services
`
`for photographic equipment, dark room equipment and supplies, UNIQUE DIRECT, in
`
`connection with catalog services, UNIQUE TOTS and UNIQUE TOTS AND DESIGN in
`
`
`
`

`
`connection with, inter alia, wholesale distributorship of products for infants in interstate
`
`commerce in the United States.
`
`2.
`
`Opposer has been using the marks UNIQUE PHOTO and UNIQUE PHOTO
`
`AND DESIGN since at least as early as December, 1969, long before Sanjay Agarwal (the
`
`"Applicant") filed the Application for registration of the UUNIQUE mark on May 13, 2014.
`
`3.
`
`Opposer is the owner of and uses, inter alia, the following United States
`
`Trademark Registrations:
`
`Reg. No.
`1,987,293
`
`Trademark Registered First Used Goods/Services
`I'M
`July 16,
`June 1995 Mail order catalog, retail store services,
`and wholesale distributorships
`UNIQUE
`1996
`featuring photographic equipment,
`photographic supplies, imaging
`equipment, film projectors, video tape,
`imaging supplies and binoculars
`Retail store services and mail order
`catalog services both featuring
`photographic equipment and supplies,
`dark room equipment and supplies,
`binoculars, film projectors, and
`batteries
`Mail order catalog services featuring
`batteries, cigarette lighters and
`accessories, umbrellas, health and
`beauty aids, over-the-counter
`medicines, food, dolls, toys, locks,
`apparel, light bulbs, flashlights,
`greeting cards, envelopes, and writing
`implements.
`Mail order catalog services featuring
`photographic equipment, photographic
`supplies, imaging equipment, imaging
`supplies, film projectors, video tapes,
`and binoculars
`Retail store, retail on line and retail
`catalog services featuring a wide
`variety of consumer goods of others
`
`2,335,605 UNIQUE March 28,
`2000
`
`August
`1977
`
`3,048,697 UNIQUE
`DIRECT
`
`January
`24, 2006
`
`December
`2003
`
`2,033,558 UNIQUE
`PHOTO
`
`January
`28, 1997
`
`December
`1968
`
`3,704,895 UNIQUE
`PHOTO
`
`November
`3, 2009
`
`April
`2008
`
`3956440_1.doc
`
`2
`
`

`
`2,920,948 UNIQUE
`TOTS
`
`January
`25, 2005
`
`March
`2004
`
`Trademark Registered First Used Goods/Services
`Reg. No.
`1,988,699 UNIQUE
`Mail order catalog and retail store
`July 23,
`December
`services featuring photographic
`PHOTO
`1996
`1968
`equipment, photographic supplies,
`AND
`imaging equipment, film projectors,
`DESIGN
`video tape, imaging supplies and
`binoculars
`Wholesale distributorship featuring
`baby bottles, baby nipples and tops
`therefor, plates, cups, bowls, eating
`utensils, cleaning supplies, pacifiers,
`bibs, rattles, teethers, toys, mobiles,
`lamps, night lights, switch plates for
`lights, blankets, gift boxes, rulers, totes,
`diaper bags, dolls, wash cloths,
`medicine droppers, aspirators, hair
`bands, hair brushes, combs, window
`shades, hangers, mittens and towels
`Wholesale distributorship featuring
`baby bottles, baby nipples and tops
`therefor, plates, cups, bowls, eating
`utensils, cleaning supplies, pacifiers,
`bibs, rattles, teethers, toys, mobiles,
`lamps, night lights, switch plates for
`lights, blankets, gift boxes, rulers, totes,
`diaper bags, dolls, wash cloths,
`medicine droppers, aspirators, hair
`bands, hair brushes, combs, window
`shades, hangers, mittens and towels
`
`2,994,632 UNIQUE
`TOTS
`AND
`DESIGN
`
`September
`13, 2005
`
`March
`2004
`
`
`
`4.
`
`Based on such use, Opposer has obtained extensive and exclusive federal and
`
`common law rights in the marks I'M UNIQUE, UNIQUE, UNIQUE DIRECT, UNIQUE
`
`PHOTO, UNIQUE PHOTO AND DESIGN, UNIQUE TOTS and UNIQUE TOTS AND
`
`DESIGN such that Opposer's business and services associated with the marks have built up
`
`substantial good will.
`
`5.
`
`Upon information and belief, Applicant made no use of the UUNIQUE mark in
`
`commerce.
`
`3956440_1.doc
`
`3
`
`

`
`6.
`
`Applicant's UUNIQUE mark so resembles Opposer's I'M UNIQUE, UNIQUE,
`
`UNIQUE DIRECT, UNIQUE PHOTO, UNIQUE PHOTO AND DESIGN, UNIQUE TOTS
`
`and UNIQUE TOTS AND DESIGN marks as to result in a likelihood of confusion in
`
`International Class 9.
`
`7.
`
`Applicant intends to use its UUNIQUE mark for mobile phone cases; camera
`
`cases; laptop cases, including bags, sleeves and pouches specially adapted for laptops; cases
`
`adapted for electronic equipment, namely, cases adapted for electronic diaries and portable
`
`media players; mobile phone accessories, namely, lanyards, pendants and charms all specially
`
`adapted for mobile phones; hands free kits for mobile phones; battery chargers for mobile
`
`phones; headphones; audio speakers; speakers, namely bass speakers, loud speakers; audio
`
`equipment, namely speakers; car audio speakers; personal stereos; stereo apparatus, namely
`
`stereo tuners; stereo amplifiers; stereos, namely, stereo receivers; computer docking stations;
`
`portable music player docking stations; mobile phone docking stations; MP3 player docking
`
`stations; mobile radio transmitting apparatus; earphones; sound generation apparatus, namely,
`
`portable media players; sound amplification apparatus, namely amplifiers; sound reproduction
`
`apparatus; sunglasses and sunglasses cases in International Class 9. The goods for which
`
`Applicant seeks registration of the mark UUNIQUE in International Class 9 are in the same or
`
`related fields as the goods and services which have been offered by Opposer under its marks
`
`I'M UNIQUE, UNIQUE, UNIQUE DIRECT, UNIQUE PHOTO, UNIQUE PHOTO AND
`
`DESIGN, UNIQUE TOTS and UNIQUE TOTS AND DESIGN and will result in improper
`
`association and confusion between the marks.
`
`8.
`
`The UUNIQUE mark, when applied to Applicant's goods in International Class
`
`9, may falsely suggest that Applicant's goods identified with such mark are sold, approved, or
`
`3956440_1.doc
`
`4
`
`

`
`sponsored by the Opposer or that there is some connection between Applicant and Opposer
`
`with respect to such products. Applicant's UUNIQUE mark, when applied to Applicant's
`
`goods in International Class 9, is likely to cause confusion or mistake or to deceive as to its
`
`source and accordingly, the granting of the registration applied for by the Applicant would
`
`cause substantial damage and injury to Opposer.
`
`9.
`
`If the application here opposed should be granted, statutory rights will be
`
`created in Applicant in violation and degradation of the established prior rights of Opposer.
`
`10.
`
`Registration in International Class 9 should be refused to Applicant, the
`
`newcomer in the field, in order to prevent deception to the public and damage to the business
`
`and good will of Opposer.
`
`WHEREFORE, Opposer prays that the opposition be sustained and that the Board deny
`
`registration of Application Serial No. 79/153014 in International Class 9.
`
`Please charge the fee of $300.00 for a Notice of Opposition in one class to our Deposit
`
`Account No. 12-1095. The undersigned is authorized to make charges to said deposit account.
`
`
`
`Respectfully submitted,
`
`
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`Attorneys for Opposer
`600 South Avenue West
`Westfield, New Jersey 07090
`(908) 654-5000
`
`
`
`By_/Daniel P. Laine/__
` DANIEL P. LAINE
`
`Dated: February 24, 2015
`
`
`
`
`
`
`
`
`
`3956440_1.doc
`
`5
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the within:
`
`NOTICE OF OPPOSITION was served upon the following this 24th day of February, 2015, as
`follows:
`
`VIA FIRST-CLASS MAIL and
`VIA FEDERAL EXPRESS PRIORITY DELIVERY
`Sanjay Agarwal
`Aegis Vision Limited
`Boundary House, Boston Road
`London, United Kingdom W7 2QE
`
`_/Daniel P. Laine/________
`Daniel P. Laine
`
`
`
`
`
`3956440_1.doc
`
`6