Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA669788
`ESTTA Tracking number:
`04/30/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91220956
`Defendant
`Sanjay Agarwal
`SANJAY AGARWAL
`AEGIS VISION LIMITED
`BOSTON RD, BOUNDARY HOUSE
`LONDON W7 2QE,
`UNITED KINGDOM
`zlatinzlatev@yahoo.com
`Answer
`Sanjay Agarwal
`zlatinzlatev@yahoo.com
`/Sanjay Agarwal/
`04/30/2015
`answer pdf.pdf(118794 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA669788
`ESTTA Tracking number:
`04/30/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91220956
`Defendant
`Sanjay Agarwal
`SANJAY AGARWAL
`AEGIS VISION LIMITED
`BOSTON RD, BOUNDARY HOUSE
`LONDON W7 2QE,
`UNITED KINGDOM
`zlatinzlatev@yahoo.com
`Answer
`Sanjay Agarwal
`zlatinzlatev@yahoo.com
`/Sanjay Agarwal/
`04/30/2015
`answer pdf.pdf(118794 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`: Serial No. 79/153014
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`:
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`: Filed: 5/13/2014
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`:
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`: For: UUNIQUE
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`:
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`: Published: 2/3/2015
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`:
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`: Opposition No. ____________
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`UNIQUE PHOTO, INC.,
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`Opposer,
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`v.
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`SANJAY AGARWAL,
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`Applicant.
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`___________________________X
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`Commissioner for Trademarks
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`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`ANSWER TO NOTICE OF OPPOSITION
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`Sanjay Agarwal (“Applicant”) answers Unique Photo, Inc.’s (“Opposer”) Notice of Opposition
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`as follows:
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`1. The allegations of paragraph 1 related to ownership of the enlisted trademarks are
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`admitted and no opinion because of lack of information might be formed on the
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`allegations related to the usage of these marks.
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`2. The applicant has no information related to usage of the opposer’s trademarks and these
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`allegations are therefore denied. The allegations related to usage of the applicant’s
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`trademarks are denied. The applicant’s trademark is not unknown to the consumers in
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`the United States. The trademark UUnique was represented at CES 2015 organised by
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`the applicant’s US distributor Brightstar in Las Vegas – one of the biggest consumer
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`electronic shows in the world. The applicant’s trademark was also advertised in few
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`leading American newspapers, including New York Times.
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`3. The allegations of paragraph 3 related to ownership of the enlisted trademarks are
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`admitted and no opinion because of lack of information might be formed on the
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`allegations related to the usage of these marks.
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`4. The Applicant has no information regarding the usage of the Opposer’s trademarks and
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`therefore the allegations of paragraph 4 are denied.
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`5. The allegations of paragraph 5 are denied. Apart from the usage as stated in paragraph
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`2 above, the Applicant’s trademark has been registered in various jurisdictions,
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`including European Union and the United Kingdom, where the trademark is well-known
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`on the market with products sold under the Applicant’s trade mark. These products are
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`also sold in Japan, Middle East, South Africa and Australia, where UUnique trademark
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`is used too.
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`6. The allegations of paragraph 6 are denied.
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`7. The allegations related to the list of products that the Applicant’s trademark is intended
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`to be sued for is admitted, the remaining allegations are denied.
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`8. The allegations of paragraph 8 are denied.
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`9. The allegations of paragraph 9 are denied.
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`10. The allegations of paragraph 10 are denied.
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`AFFIRMATIVE DEFENCE
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`11. The trademark Uunique (reproduced as
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`) was registered on 8
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`December 2009 in the United Kingdom and soon after that in the European Union. Since
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`its registration it has been used actively in the commercial activities in Aegis Vision
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`Limited, incorporated and registered in England and Wales with company number
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`05134589 whose registered office is at Gladstone House, 77-79 High Street, Egham,
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`Surrey TW20 9HY, including advertising campaigns, public presentations, direct sales
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`via a special website (www.uunique.uk.com) and other internet retailers.
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`12. For this period of time there were no disputes with any other legal entities with regard
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`to any possible conflicts related to usage of the Applicant’s trademark. The Applicant’s
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`trademark Uunique is part of the applicant’s corporate identity and the applicant
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`believes that its registration in the USA will be in best interest in the Applicant’s
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`potential customers therein.
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`13. The only common element of the Applicant’s marks and the opposer’s marks is the word
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`‘unique’. This hypothetically can only lead to association of these marks, but the other
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`elements that distinguish them prevent any similarity.
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`14. The mere association of two marks does not necessarily lead to similarity of the marks
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`and therefore cannot in any cases cause ‘confusion’. The mere ‘association’ of two
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`marks by virtue of their ‘analogous semantic content’ is insufficient ground for
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`concluding that there is ‘similarity’ or even ‘confusion’ between them.
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`15. ‘Likelihood of association’ is not an alternative to ‘likelihood of confusion’ but a
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`subcategory of it. ‘Association’ of marks is not therefore an infringement or a bar to
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`registration in the absence of confusion.
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`16. The fact that some of the marks that are enlisted in the opposition contain the word
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`‘unique’ does not in itself lead to confusion. Even though the marks contain the word
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`‘unique’, the opposer does not prove that this leads at least to association of the marks.
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`17. The availability of common word in two marks is not considered to be hindering
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`condition for their registration as it is not leading to association of the marks or to further
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`consequences like similarity. This can be best demonstrated by the fact that so many
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`marks having the word ‘unique’ have already been registered in the United States and
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`no grounds for specific treatment of the mark Uunique can be substantiated on this
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`ground.
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`18. The Opposer’s allegations of likelihood of confusion are not proved in any of its
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`elements. The connotation of the Applicant’s mark is opposite to the one that can be
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`implied from the other marks: the presence of the first letter ‘U’ for the pronoun “you”
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`in the mark specifies the uniqueness of the consumers rather than the uniqueness of the
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`products. Therefore there is even no semantic similarity between the Applicant’s mark
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`and the marks in the opposition. Without any similarity of the marks no conclusion
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`about likelihood of confusion can be drawn.
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`19. Furthermore, comparison of marks should be made from the standpoint of the average
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`relevant consumer. Global appreciation of marks must be based on the overall
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`impression given by them, bearing in mind their distinctive and dominant components.
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`We think that the perception of marks in the mind of the average consumer of the
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`relevant goods or services plays a decisive role in the global appreciation of the
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`likelihood of confusion, since the average consumer normally perceives a mark as a
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`whole and does not proceed to analyse its various elements.
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`20. The Applicant’s mark in that respect has no similar elements in its global appreciation
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`with the other marks enlisted in the opposition. Its graphical and semantic perception is
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`generally different than those of the other marks where even without knowledge of their
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`additional elements like the relatedness of goods, imply different visual perception.
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`21. By the doctrine of the impression conveyed, where it is necessary to determine the
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`similarity of an earlier mark and a later mark that comprises the earlier mark together
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`with another integer such as the company name or house mark of the proprietor of the
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`later sign, one should consider the overall impression conveyed by each of the latter two
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`signs in order to ascertain whether the component shared by the two marks characterizes
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`the latter composite mark to the extent that the other components are largely secondary
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`to its overall impression.
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`22. Once this comparison is made, no likelihood of confusion will be said to exist where
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`that common component merely contributes to the overall impression of the later sign,
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`regardless of whether the common component still has an independent distinctive role
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`in the composite sign. In this case the earlier mark (and thus the common component of
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`both parties’ marks) was the word UNIQUE. The doctrine dictates that, when UNIQUE
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`is not the dominant element of the latter sign (UNIQUE PHOTO, UNIQUE TOTS etc.)
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`the composite sign could not be said to be confusingly similar to the earlier mark.
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`23. The trademark ‘UNIQUE’ contains one single adjective which meaning can only be
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`related to the products that are sold. Being an adjective, its function is just to provide
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`additional meaning to the noun to which it is used. As in the trademark there is no noun,
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`the nearest possible object to which this word can be associated are the products sold
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`under the trademark.
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`24. In all other marks the word ‘unique’ appears just as an adjective whose function is to
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`provide additional meaning to the noun which is bearing the main semantic burden and
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`therefore defines the general connotation of the mark.
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`25. In both cases the distinctive and dominant component will be the noun and the adjective
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`should be merely supplementing the main meaning. The Applicant’s trademark contains
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`the words “UUunique” which stands for “You are unique” and in that respect the
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`adjective is related to the qualities of the recipient of the mark rather than the products
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`that are offered.
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`26. Therefore we consider that the Applicant’s trademark is not similar to any of the
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`previously registered marks as there is no similarity in its appearance, sound,
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`connotation, and commercial impression. With regard to such conclusion we are asking
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`that the opposition should be dismissed.
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`27. The applicant’s goods neither move in similar trade channels, nor they are legally
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`identical or closely related to registrants’ goods and therefore there is no likelihood of
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`confusion as to the source of goods.
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`28. The fact that all products are in international class 9 does not in any case mean that the
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`products are identical.
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`29. There is no registrant that offers similar aggregation of goods that we offer under the
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`applied-for trade mark. Moreover, there is not even a single product overlap with some
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`of the Opposer’s marks. Therefore it cannot be concluded that the products are either
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`moving in similar trade channels or there is any single element of identity between the
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`Applicant’s mark and the Opposer’s marks.
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`30. The Opposer does not substantiate its claim about similarity of the products but merely
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`mentions that its products are in international class 9 too. If it is assumed that in all cases
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`where the products are merely within one international class there is similarity of the
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`marks, this would lead to significant restriction of the principles of the free trade and
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`market economy and would allow for registration of only one trademark per class. On
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`the contrary, the requirement for identical or closely related to goods is applied only in
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`cases where (i) there is similarity in the marks and (ii) the aggregation of goods is
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`identical. For none of the enlisted previously registered marks these conditions, even if
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`taken separately, are met.
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`31. Commercial Impression is one of the four factors (along with appearance, sound and
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`meaning that were discussed above) considered when comparing trademarks for
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`similarities. Once a consumer has had an opportunity to encounter the trademark with
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`its goods or services in the market place and it has observed the appearance of the mark,
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`perhaps heard the sound of the mark, and considered the meaning of the mark, it now
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`has developed a “commercial impression” of the mark along with the goods or services.
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`This main image or idea that has developed is considered to be the commercial
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`impression or consumer impression and it should weigh as part of the likelihood of
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`confusion analysis. In that respect UUnique trademark is significantly distinctive
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`compared to the trademarks that the opposer represents.
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`32. We think that the distinctiveness of the mark should be construed in its regular meaning.
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`When considering the distinctive character of the earlier mark for the purposes of
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`assessing the degree of protection against a similar mark to which it is entitled, we
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`believe that the standard of distinctiveness is that employed in determining whether a
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`trade mark has the capacity to identify the goods or services for which it is registered as
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`coming from a single origin.
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`33. For the purpose of registration, the criterion is one of whether an applied-for sign has
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`the necessary degree of distinctiveness to enable it to identify goods or services as
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`coming from a single origin, not that of how much surplus distinctiveness there exists
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`over the minimal level at which a sign becomes sufficiently distinctive to be registered.
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`Every trade mark that is the basis upon which opposition or infringement proceedings
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`are brought is a mark which has already satisfied, at the point of registration, these
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`criteria of distinctiveness.
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`34. From the overall visual and semantic appearance of the Applicant’s registration mark
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`there is no similarity to any of the Opposer’a marks. Moreover, none of the Opposer’s
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`goods are identical to those that are to be offered under the Applicant’s mark. Therefore
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`we consider that the opposition should be quashed as there is no likelihood of confusion
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`with the Applicant’s trademark. The trademark Uunique was registered about 5 years
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`ago in the United Kingdom and European Union and since then it has become part of
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`the corporate identity of Aegis Vision Limited as it is invariably and actively used in its
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`all commercial activities and it is widely associated with the products that it sells.
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`WHEREFORE, Applicant respectfully prays that the mark sought to be registered and that the
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`oppostion be dismissed.
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`Respectfully submitted on this the 30th day of April, 2015.
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`By: /Sanjay Agarwal/
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`Sanjay Agarwal
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on this 30th day of April, 2015, a true copy of the
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`foregoing ANSWER and AFFIRMATIVE DEFENSES was served in the following manner,
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`per the prior written agreement of counsel: VIA FIRST CLASS MAIL (Royal Mail First
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`Class International Service, Tracked and Signed upon delivery) at the following
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`addresses:
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`DANIEL P LAINE
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`LERNER DAVID LITTENBERG KRUMHOLZ & MENTLIK
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`600 SOUTH AVENUE WEST
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`WESTFIELD, NJ 07090
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`UNITED STATES OF AMERICA
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`Unique Photo Inc.
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`123 US Highway 46
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`Fairfield, NJ 07004
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`UNITED STATES OF AMERICA
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`VIA EMAIL at the following addresses:
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`dlaine@ldlkm.com, bsales@ldlkm.com, litigation@ldlkm.com
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`CERTIFICATE OF ELECTRONIC FILING
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`The undersigned certifies that this submission (along with any paper referred to as being
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`attached or enclosed) is being filed with the United States Patent and Trademark Office via the
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`Electronic System for Trademark Trials and Appeals (ESTTA) on this 30th day of April, 2015.
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`By: ___/Sanjay Agarwal/_______
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`SANJAY AGARWAL
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