`ESTTA695093
`ESTTA Tracking number:
`09/10/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
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`Name
`Granted to Date
`of previous ex-
`tension
`Address
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`Sazerac Company, Inc.
`10/03/2015
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`3850 North Causeway Boulevard Suite 1695
`Metairie, LA 70002
`UNITED STATES
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`Attorney informa-
`tion
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`Judd D. Lauter
`Cooley LLP
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`UNITED STATES
`jlauter@cooley.com, vbadolato@cooley.com, pwillsey@cooley.com, trade-
`marks@cooley.com Phone:2027287052
`Applicant Information
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`Application No
`Opposition Filing
`Date
`Applicant
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`86379820
`09/10/2015
`
`Publication date
`Opposition Peri-
`od Ends
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`08/04/2015
`10/03/2015
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`Salt Tequila USA LLC
`8226 Douglas Ave., Suite 550
`Dallas, TX 75225
`UNITED STATES
`Goods/Services Affected by Opposition
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`Class 033. First Use: 2011/08/22 First Use In Commerce: 2014/06/05
`All goods and services in the class are opposed, namely: Tequila
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`Applicant Information
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`Application No
`Opposition Filing
`Date
`Applicant
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`86379789
`09/10/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/04/2015
`
`Salt Tequila USA LLC
`8226 Douglas Ave., Suite 550
`Dallas, TX 75225
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 2011/08/22 First Use In Commerce: 2014/06/05
`All goods and services in the class are opposed, namely: Tequila
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`
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`Grounds for Opposition
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`The mark is merely descriptive
`The mark is deceptively misdescriptive
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`Trademark Act section 2(e)(1)
`Trademark Act section 2(e)(1)
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`Attachments
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`Sazerac - Notice of Opposition re SALT.pdf(92673 bytes )
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`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.
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`Certificate of Service
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`Signature
`Name
`Date
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`/Judd D. Lauter/
`Judd D. Lauter
`09/10/2015
`
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Application Serial Nos. 86/379,820 and 86/379,789
`For the Trademark SALT (Stylized)
`Published in the Official Gazette on August 4, 2015
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`SAZERAC COMPANY, INC.,
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`Opposer,
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`v.
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`SALT TEQUILA USA, LLC,
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`Applicant.
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`Opposition No.
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`NOTICE OF OPPOSITION
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`Opposer Sazerac Company, Inc. (“Sazerac”), a Louisiana corporation having its principal
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`place of business at 3850 N. Causeway Blvd., Suite 1695, Metairie, Louisiana 70002, will be
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`damaged by the issuance of registrations for the mark SALT (stylized), as applied for in
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`Application Serial Nos. 86/379,820 and 86/379,789 filed on August 28, 2014 (the
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`“Applications”) by Salt Tequila USA, LLC (“Applicant”). Sazerac, having previously been
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`granted an extension of time to oppose the Applications, hereby opposes same.
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`
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`As grounds for opposition, Sazerac alleges as follows.
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`1.
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`Sazerac is a company that markets and sells a number of different types and
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`brands of alcoholic beverages and distilled spirits, including tequila, vodka, rum, and whiskey.
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`Sazerac has marketed and sold alcoholic beverages and distilled spirits in the United States for
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`over a century.
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`2.
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`Upon information and belief, on August 28, 2014, Applicant filed the
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`Applications to register two stylized versions of the word SALT (the “SALT Marks”), alleging
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`use of the marks in commerce since at least as early as June 5, 2014. Applicant seeks
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`registrations for the SALT Marks in connection with “tequila.”
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`3.
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`Upon information and belief, at least some of Applicant’s tequila products offered
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`under the SALT Marks are infused with or incorporate salt or salt-flavored additives.
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`4.
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`When used on or in connection with the applicable goods set forth in the
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`Applications, the SALT Marks will reasonably be understood by consumers as a flavor
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`descriptor rather than as a trademark or product source identifier.
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`5.
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`Upon information and belief, tequila is often consumed with salt, as in margarita
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`cocktails and tequila shots. Consumers therefore may also construe the SALT Marks as an
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`indication that Applicant’s tequila products are meant to be consumed with salt. In other words,
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`“SALT” merely describes a flavor and/or characteristic of Applicant’s tequila.
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`6.
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`Upon information and belief, the SALT Marks are not inherently distinctive, and
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`have not become distinctive of Applicant’s goods in commerce. Applicant has not acquired
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`secondary meaning in the SALT Marks for its applicable goods.
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`7.
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`Applicant’s SALT Marks will interfere with the rights of others affiliated with the
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`alcohol industry in identifying a quality of their goods, namely the flavor and/or characteristic of
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`an alcoholic beverage.
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`8.
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`Registration of the SALT Marks would give Applicant prima facie evidence of
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`the validity and ownership of the marks and of Applicant’s exclusive right to use the marks, all
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`to the detriment of Sazerac and others in the alcoholic beverage industry.
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`2
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`9.
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`Alternatively, if Applicant sells tequilas under the SALT Marks that are not
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`infused with salt or salt-flavored additives, then the SALT Marks are deceptively misdescriptive
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`of Applicant’s goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052.
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`10.
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`Given the common consumption of tequila in combination with salt, prospective
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`consumers are likely to believe that Applicant’s tequila is flavored with salt or additives that
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`include salt, and, in turn, are likely to rely on that misdescription in their decision to purchase
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`Applicant’s goods to the detriment of competitor tequila distillers.
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`11.
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`Issuance of registrations for the SALT Marks would therefore violate 15 U.S.C. §
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`1052(e)(1) as the marks are either merely descriptive or deceptively misdescriptive of
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`Applicant’s goods.
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`12. Wherefore, for all the foregoing reasons Sazerac prays that this Opposition be
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`sustained and that Application Serial Nos. 86/379,820 and 86/379,789 be denied and refused
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`registration.
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`Date: September 11, 2015
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`COOLEY LLP
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`By: /Vincent J. Badolato/
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`Peter J. Willsey
` Vincent J. Badolato
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` Attorneys for Opposer
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`1299 Pennsylvania Avenue, NW
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`Suite 700
` Washington, DC 20004
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`3
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 11, 2015, I mailed the foregoing NOTICE OF
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`OPPOSITION to counsel for Applicant by depositing a true and correct copy of the same with
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`the United States Postal Service, first-class mail, postage prepaid, in an envelope addressed to:
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`Jay Johnson
`Brown Fox Kizzia & Johnson PLLC
`750 N. Saint Paul St Ste 1320
`Dallas, TX 75201-3239
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`Date: September 11, 2015
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`/Vincent J. Badolato/
`Vincent J. Badolato
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`4