Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA708954
`ESTTA Tracking number:
`11/16/2015
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`24 Hour Fitness USA, Inc.
`11/15/2015
`
`647 Alcosta Blvd., 5th Floor
`San Ramon, CA 94583
`UNITED STATES
`
`Correspondence
`information
`
`Susan E. Hollander, Esq.
`K&L Gates LLP
`4 Embarcadero Center, Suite 1200
`San Francisco, CA 94111
`UNITED STATES
`sftrademarks@klgates.com Phone:415-882-8200
`Applicant Information
`
`86538801
`11/16/2015
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition Peri-
`od Ends
`Cardinal Scale Manufacturing Company
`P.O. Box 151, 203 East Daugherty
`Webb City, MO 64870
`UNITED STATES
`Goods/Services Affected by Opposition
`
`05/19/2015
`11/15/2015
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Weighing scales; weighing scales, namely,
`clinical weighing scales
`
`Applicant Information
`
`86538826
`11/16/2015
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition Peri-
`od Ends
`Cardinal Scale Manufacturing Company
`P.O. Box 151, 203 East Daugherty
`Webb City, MO 64870
`UNITED STATES
`Goods/Services Affected by Opposition
`
`05/19/2015
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Weighing scales; weighing scales, namely,
`
`

`
`clinical weighing scales
`
`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
`
`4020452
`
`08/30/2011
`
`Word Mark
`Design Mark
`
`APEX
`
`Application Date
`
`07/01/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1994/03/00 First Use In Commerce: 1994/03/00
`Dietary supplements; diet capsules and pills; dietary drink mix for use as a meal
`replacement; diuretics; electrolyte replacement solutions; electrolytes; mealre-
`placement bars, drinks, powders, shakes and snacks and beverages; therapeut-
`icagents for weight control and appetite suppression; vitamins; vitamin prepara-
`tions
`
`U.S. Registration
`No.
`Registration Date
`
`4046386
`
`10/25/2011
`
`Word Mark
`Design Mark
`
`APEX
`
`Application Date
`
`07/01/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2000/10/00 First Use In Commerce: 2000/10/00
`Temporary use of on-line non-downloadable software for tracking diet, exer-
`cise,fitness, athletic performance and weight management
`
`

`
`Class 044. First use: First Use: 2000/10/00 First Use In Commerce: 2000/10/00
`Computer online services, namely, providing a website featuring information, on-
`line links and electronic resources related to human physiology and health
`
`86601900
`
`Application Date
`
`04/17/2015
`
`NONE
`
`APEX
`
`Foreign Priority
`Date
`
`NONE
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`
`The mark consists of the letters "APEX"in black with the "A" forming the outline
`of a scalene triangle broken horizontally and vertically at the lower left corner.
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Nutritional products, namely, nutritional supplements and nutritionally fortified
`beverages and mixes; nutritional products, namely, nutritional supplements and
`dietary supplements in the nature of nutritional bars and cookies; food and meal
`supplements; meal supplements, namely, calcium supplements; dietary supple-
`ments; nutritional drink mix or powder for use as a meal replacement; nutritional
`and performance dietary supplements, drink mixes and powders; vitamins; vit-
`amin preparations; diet capsules and pills; diuretics; electrolyte replacement
`solutions; electrolytes; meal replacement and dietary supplement drink mixes
`and powders; meal replacement bars, drinks, powders, shakes and snacks and
`beverages; therapeutic agents for weight control and appetite suppression
`
`86601904
`
`Application Date
`
`04/17/2015
`
`NONE
`
`APEX
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letters "APEX"in black with the "A" forming the outline
`of a scalene triangle broken horizontally and vertically at the lower left corner,
`with the lower left corner shaded in blue.
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Nutritional products, namely, nutritional supplements and nutritionally fortified
`beverages and mixes; nutritional products, namely, nutritional supplements and
`dietary supplements in the nature of nutritional bars and cookies; food and meal
`supplements; meal supplements, namely, calcium supplements; dietary supple-
`ments; nutritional drink mix or powder for use as a meal replacement; nutritional
`and performance dietary supplements, drink mixes and powders; vitamins; vit-
`amin preparations; diet capsules and pills; diuretics; electrolyte replacement
`solutions; electrolytes; meal replacement and dietary supplement drink mixes
`and powders; meal replacement bars, drinks, powders, shakes and snacks and
`beverages; therapeutic agents for weight control and appetite suppression
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4050607
`
`11/01/2011
`
`APEX FIT
`
`Application Date
`
`10/20/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/07/00 First Use In Commerce: 2003/07/00
`Nutritional products, namely, nutritional supplements and dietary supplements in
`the nature of nutritional bars and cookies; food and meal supplements; meal re-
`
`

`
`placement and dietary supplement drink mixes and powders; nutritional drink
`mix or powder for use as a meal replacement
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4050608
`
`11/01/2011
`
`APEX FIT
`
`Application Date
`
`10/20/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 030. First use: First Use: 2003/07/00 First Use In Commerce: 2003/07/00
`Food products, namely, grain based foodbars and cookies
`
`U.S. Registration
`No.
`Registration Date
`
`4024062
`
`09/06/2011
`
`Word Mark
`Design Mark
`
`APEX FITNESS
`
`Application Date
`
`07/01/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2000/10/00 First Use In Commerce: 2000/10/00
`Online retail services and distributorship services featuring vitamins, supple-
`ments, diet enhancing and weight management compounds and diet aids, nutri-
`tional,weight management and fitness bars and snacks, and fitness and per-
`formance beverages and shakes, sports, fitness, nutritional and weight manage-
`ment monitoring devices and electronic hardware used to monitor aspects of
`sports, fitness, nutritional and weight management activities, computer software
`used in connection with or to analyze data obtained by sports, fitness, nutritional
`and weight management monitoring devices and provide data review and feed-
`back, computer softwareused to provide sports, fitness, nutritional and weight
`management related information, instruction and guidance, sports, fitness, nutri-
`tional and weight management related audio and video training materials; pedo-
`
`

`
`meters, and heart rate monitors
`
`U.S. Registration
`No.
`Registration Date
`
`4136111
`
`05/01/2012
`
`Word Mark
`Design Mark
`
`APEX FITNESS
`
`Application Date
`
`07/01/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1994/00/00 First Use In Commerce: 1994/00/00
`Online retail store services and distributorship services featuring sports, fitness,
`nutritional and weight management educational materials, equipment and ac-
`cessories for use in connection with fitness and exercise activities, including sta-
`bility balls, weights, medicine balls,kettle balls, training and resistance bands,
`yoga mats, exercise mats
`
`U.S. Registration
`No.
`Registration Date
`
`2936205
`
`03/29/2005
`
`Word Mark
`Design Mark
`
`APEX
`
`Application Date
`
`12/29/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`nutritional and food supplements; vitamins and minerals; vitamin and mineral
`supplements
`Class 009. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`[ audio and visual recordings, namely, pre-recorded cassettes, videos, DVDs,
`and CD-ROMs in the field of health, fitness, or nutrition ]
`Class 016. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`[ Printed matter, namely, books, instruction manuals, periodicals, brochures, and
`magazines in the field of health, fitness, or nutrition ]
`Class 035. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`[ Distributorship featuring vitamins and fitness programs ]
`
`

`
`Class 041. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`[ Instruction and training services in the field of fitness and nutrition ]
`Class 044. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`[ Providing information in the field ofnutrition and fitness ]
`
`U.S. Registration
`No.
`Registration Date
`
`4283994
`
`01/29/2013
`
`Word Mark
`Design Mark
`
`APEX FIT 150
`
`Application Date
`
`02/23/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "APEX" with two arrows following the "X", a vertical
`"FIT"and horizontal "150".
`Class 005. First use: First Use: 2011/05/00 First Use In Commerce: 2011/05/00
`Nutritional products, namely, nutritional supplements and dietary supplements in
`the nature of nutritional bars and cookies; food supplements; meal supplements,
`namely, calcium supplements; dietary supplement drink mixes and powders
`
`U.S. Registration
`No.
`Registration Date
`
`4179095
`
`07/24/2012
`
`Word Mark
`Design Mark
`
`APEX FIT 150
`
`Application Date
`
`11/30/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of "APEX" with two arrows following the "X", a vertical
`"FIT"and horizontal "150".
`Class 029. First use: First Use: 2011/05/00 First Use In Commerce: 2011/05/00
`
`

`
`Food products, namely, protein based snack foods
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3045062
`
`01/17/2006
`
`APEX FIT
`
`Application Date
`
`06/24/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/07/01 First Use In Commerce: 2003/07/01
`Nutritional products, namely nutritional supplements and nutritionally fortified
`beverages; dietary supplements in the nature of nutritional bars and cookies;
`food supplements; meal replacement and dietary supplement drink mixes and
`powders; nutritional drink mix or powder for use as a meal replacement; vitamins
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4050609
`
`11/01/2011
`
`APEX MAX
`
`Application Date
`
`10/20/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2003/07/00 First Use In Commerce: 2003/07/00
`Nutritional and performance dietary supplements, drink mixes and powders; nu-
`tritional products, namely, nutritional supplements and nutritionally fortified
`beverage and mixes
`
`Attachments
`
`85076576#TMSN.png( bytes )
`85076585#TMSN.png( bytes )
`86601900#TMSN.png( bytes )
`86601904#TMSN.png( bytes )
`
`

`
`85157326#TMSN.png( bytes )
`85157352#TMSN.png( bytes )
`85975450#TMSN.png( bytes )
`85076566#TMSN.png( bytes )
`78346264#TMSN.png( bytes )
`85550873#TMSN.png( bytes )
`85483617#TMSN.png( bytes )
`78440633#TMSN.png( bytes )
`85157360#TMSN.png( bytes )
`Notice of Opposition - APEX, SN 86538801, and APEX and Design, SN
`86538826 (Cardinal Scale).pdf(277138 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
`
`/Sharoni S. Finkelstein/
`Sharoni S. Finkelstein
`11/16/2015
`
`

`
`IN UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial Nos. 86/538,801 and 86/538,826
`Published in the Official Gazette on May 19, 2015
`
`
`
`OPPOSITION NO._______________
`
`Marks: APEX and APEX & Design
`
`
`
`
`
`
`
`
`
`
`
`24 Hour Fitness USA, Inc.,
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`Cardinal Scale Manufacturing Company,
`
`
`
`
`Applicant.
`
`
`
`
`
`CONSOLIDATED NOTICE OF OPPOSITION
`
`24 Hour Fitness USA, Inc., a corporation organized and existing under the laws of
`
`California, with a business address of 12647 Alcosta Boulevard, 5th Floor, San Ramon,
`
`California 94583 (“Opposer”) believes that it will be damaged by registration of the APEX and
`
`APEX & Design marks shown in Application Nos. 86/538,801 and 86/538,826, and hereby
`
`opposes their registration pursuant to 15 U.S.C. §§ 1051 et seq., including specifically 15 U.S.C.
`
`§ 1063.
`
`This Notice of Opposition has been timely filed. As grounds for its opposition, Opposer
`
`alleges as follows:
`
`1.
`
`Upon information and belief, applicant Cardinal Scale Manufacturing Company is
`
`a Missouri corporation with a mailing address of P.O. Box 151, 203 East Daugherty, Webb City,
`
`Missouri 64870 (“Applicant”).
`
`
`
`

`
`2.
`
`As illustrated in Application Serial Nos. 86/538,801 and 86/538,826, Applicant
`
`seeks to register the marks APEX and APEX & Design for “Weighing scales; weighing scales,
`
`namely, clinical weighing scales” in International Class 9.
`
`3.
`
`Since at least as early as March 1994, through its predecessor in interest, Opposer
`
`has continuously and pervasively used the mark APEX, and variations thereof, in connection
`
`with nutritional and dietary supplements, and related products and services.
`
`4.
`
`Opposer owns numerous United States Trademark Registrations and Applications
`
`for marks incorporating its well-known APEX marks. Below is a list showing Opposer’s U.S.
`
`registrations and applications for its APEX trademarks. Notably, Registration Nos. 2,936,205
`
`and 3,045,062 are incontestable.
`
`Mark
`
`APEX
`
`APEX
`
`4,046,386
`
`APEX (stylized)
`
`86/601,900
`
`
`
`Reg. / App. No. Goods/Services
`
`4,020,452
`
`Class 5: Dietary supplements; diet capsules and pills; dietary
`drink mix for use as a meal replacement; diuretics; electrolyte
`replacement solutions; electrolytes; meal replacement bars,
`drinks, powders, shakes and snacks and beverages; therapeutic
`agents for weight control and appetite suppression; vitamins;
`vitamin preparations
`
`Class 42: Temporary use of on-line non-downloadable software
`for tracking diet, exercise, fitness, athletic performance and
`weight management
`
`Class 44: Computer online services, namely, providing a
`website featuring information, online links and electronic
`resources related to human physiology and health
`
`Class 5: Nutritional products, namely, nutritional supplements
`and nutritionally fortified beverages and mixes; nutritional
`products, namely, nutritional supplements and dietary
`supplements in the nature of nutritional bars and cookies; food
`and meal supplements; meal supplements, namely, calcium
`supplements; dietary supplements; nutritional drink mix or
`powder for use as a meal replacement; nutritional and
`performance dietary supplements, drink mixes and powders;
`vitamins; vitamin preparations; diet capsules and pills;
`diuretics; electrolyte replacement solutions; electrolytes; meal
`replacement and dietary supplement drink mixes and powders;
`meal replacement bars, drinks, powders, shakes and snacks and
`beverages; therapeutic agents for weight control and appetite
`suppression
`
`

`
`Mark
`
`Reg. / App. No. Goods/Services
`
`APEX (stylized)
`
`86/601,904
`
`
`
`APEX FIT
`
`4,050,607
`
`Class 5: Nutritional products, namely, nutritional supplements
`and nutritionally fortified beverages and mixes; nutritional
`products, namely, nutritional supplements and dietary
`supplements in the nature of nutritional bars and cookies; food
`and meal supplements; meal supplements, namely, calcium
`supplements; dietary supplements; nutritional drink mix or
`powder for use as a meal replacement; nutritional and
`performance dietary supplements, drink mixes and powders;
`vitamins; vitamin preparations; diet capsules and pills;
`diuretics; electrolyte replacement solutions; electrolytes; meal
`replacement and dietary supplement drink mixes and powders;
`meal replacement bars, drinks, powders, shakes and snacks and
`beverages; therapeutic agents for weight control and appetite
`suppression
`
`Class 5: Nutritional products, namely, nutritional supplements
`and dietary supplements in the nature of nutritional bars and
`cookies; food and meal supplements; meal replacement and
`dietary supplement drink mixes and powders; nutritional drink
`mix or powder for use as a meal replacement
`
`APEX FIT
`
`4,050,608
`
`Class 30: Food products, namely, grain based food bars and
`cookies
`
`APEX FITNESS
`
`4,024,062
`
`APEX FITNESS
`
`4,136,111
`
`Class 35: Online retail services and distributorship services
`featuring vitamins, supplements, diet enhancing and weight
`management compounds and diet aids, nutritional, weight
`management and fitness bars and snacks, and fitness and
`performance beverages and shakes, sports, fitness, nutritional
`and weight management monitoring devices and electronic
`hardware used to monitor aspects of sports, fitness, nutritional
`and weight management activities, computer software used in
`connection with or to analyze data obtained by sports, fitness,
`nutritional and weight management monitoring devices and
`provide data review and feedback, computer software used to
`provide sports, fitness, nutritional and weight management
`related information, instruction and guidance, sports, fitness,
`nutritional and weight management related audio and video
`training materials; pedometers, and heart rate monitors
`
`Class 35: Online retail store services and distributorship
`services featuring sports, fitness, nutritional and weight
`management educational materials, equipment and accessories
`for use in connection with fitness and exercise activities,
`including stability balls, weights, medicine balls, kettle balls,
`training and resistance bands, yoga mats, exercise mats
`
`APEX & Design
`
`2,936,205
`
`Class 5: Nutritional and food supplements; vitamins and
`minerals; vitamin and mineral supplements
`
`
`
`

`
`Mark
`
`Reg. / App. No. Goods/Services
`
`APEX FIT 150 & Design
`
`4,283,994
`
`Class 5: Nutritional products, namely, nutritional supplements
`and dietary supplements in the nature of nutritional bars and
`cookies; food supplements; meal supplements, namely, calcium
`supplements; dietary supplement drink mixes and powders
`
`4,179,095
`
`Class 29: Food products, namely, protein based snack foods
`
`APEX FIT 150 & Design
`
`APEX FIT (Stylized)
`
`
`
`
`
`
`
`3,045,062
`
`Class 5: Nutritional products, namely nutritional supplements
`and nutritionally fortified beverages; dietary supplements in the
`nature of nutritional bars and cookies; food supplements; meal
`replacement and dietary supplement drink mixes and powders;
`nutritional drink mix or powder for use as a meal replacement;
`vitamins
`
`Class 5: Nutritional and performance dietary supplements,
`drink mixes and powders; nutritional products, namely,
`nutritional supplements and nutritionally fortified beverage and
`mixes
`
`APEX MAX
`
`4,050,609
`
`
`True and correct copies of pages printed from the USPTO’s online database reflecting Opposer’s
`
`APEX trademark registrations are attached hereto as Exhibit A. (The APEX trademarks
`
`described in this Paragraph 4 are hereinafter referred to collectively as the “APEX Marks.”)
`
`5.
`
`Today, Opposer’s distinctive APEX Marks are highly recognizable and valuable
`
`marks in the nutritional supplement industry. Opposer’s products bearing the APEX Marks are
`
`sold, inter alia, throughout Opposer’s health and fitness chains in the United States. Opposer
`
`currently offers more than 400 facilities located throughout the United States with membership
`
`of over 4 million. Accordingly, due to the national consumer recognition and goodwill of
`
`Opposer’s APEX Marks, consumers have come to recognize the APEX Marks as symbolizing
`
`the goodwill inherent in the APEX Marks and, further, to associate the APEX Marks solely with
`
`Opposer and its high quality dietary and nutritional products.
`
`

`
`6.
`
`No issue of priority exists with respect to Opposer’s first use of its APEX Marks
`
`as set forth above and Applicant’s APEX and APEX & Design marks. Opposer has used,
`
`promoted and advertised its goods under its APEX Marks in commerce in the United States since
`
`at least as early as March 1994. Conversely, Applicant filed Application Serial Nos. 86/538,801
`
`and 86/538,826 for APEX and APEX & Design on February 18, 2015, and bases its applications
`
`on Section 1(b) of the Lanham Act. Applicant has not yet submitted Statements of Use, nor has
`
`it claimed earlier dates of first use.
`
`7.
`
`Applicant’s proposed APEX and APEX & Design marks are confusingly similar
`
`to Opposer’s APEX Marks because they are similar in appearance, meaning, and overall
`
`impression pursuant to 15 U.S.C. § 1052(d). Indeed, Applicant’s APEX word mark is identical
`
`to Opposer’s APEX Marks. Further, Applicant’s APEX & Design mark predominantly consists
`
`of the word element “APEX,” such that it is confusingly similar and/or virtually identical to
`
`Opposer’s APEX Marks. Moreover, because Opposer owns registrations for the word mark
`
`APEX in standard characters, Opposer is entitled to use that mark in any format or depiction
`
`pursuant to TMEP § 1207.01(c)(iii). Accordingly, Applicant’s APEX & Design mark is
`
`confusingly similar, if not identical, to Opposer’s APEX Marks.
`
`8.
`
`In addition, the products and services offered by Applicant and Opposer are
`
`closely related. Opposer uses its APEX Marks in connection with its well known dietary and
`
`nutritional supplements, and related products and services—for example, APEX is registered for
`
`“online retail services and distributorship services featuring . . . nutritional and weight
`
`management monitoring devices . . . ; pedometers, and heart rate monitors” (Reg. No.
`
`4,024,062), whereas Applicant plans to use its APEX and APEX & Design marks in connection
`
`with “weighing scales; weighing scales, namely, clinical weighing scales.”
`
`

`
`9.
`
`Applicant’s goods would also be marketed and advertised through overlapping
`
`channels as Opposer’s goods. Both parties would be marketing their respective products, for
`
`example, on the Internet. Due to the overlap in marketing channels, prospective purchasers and
`
`others are likely to be confused as to whether Applicant’s goods offered under the APEX and
`
`APEX & Design marks emanate from and/or are in some way affiliated with, or sponsored or
`
`approved by, Opposer or are otherwise related to Opposer and/or Opposer’s products, thereby
`
`damaging Opposer.
`
`10.
`
`Given the goodwill and public recognition arising from the association of the
`
`distinctive APEX Marks with Opposer, consumers are likely to believe that Opposer has
`
`licensed, approved or otherwise authorized Applicant’s use of APEX and APEX & Design
`
`marks, when it has not.
`
`11.
`
`The maturation of Applicant’s applications into registration will cause a
`
`likelihood of confusion, mistake or deception with respect to the source or origin of Applicant’s
`
`goods. Consumers will erroneously believe that Applicant’s products are produced by, licensed,
`
`or associated with Opposer.
`
`12.
`
`Pursuant to 15 U.S.C. § 1063(a), Opposer will be damaged by registration of
`
`Applicant’s proposed marks, which would grant Applicant a prima facie exclusive right to use
`
`the proposed marks despite Opposer’s priority over Applicant, resulting in the likelihood of
`
`confusion as well as the likelihood of dilution and injury to Opposer’s goodwill.
`
`13.
`
`In summary, registration of the proposed marks would be incorrect and improper
`
`in view of the requirements of the Trademark Act of 1946, as amended, including specifically
`
`but not limited to the provisions of 15 U.S.C. §§ 1051, et seq.
`
`

`
`WHEREFORE, Opposer prays that this Opposition be sustained, and that registration to
`
`Applicant for APEX and APEX & Design in Application Serial Nos. 86/538,801 and 86/538,826
`
`be denied.
`
`Opposer submits this Notice of Opposition via the e-filing procedure of the Trademark
`
`Trial and Appeal Board, and hereby authorizes the Board to debit Deposit Account No. 021818
`
`of K&L Gates LLP for the appropriate filing fee of $600.00. Please direct all notices, pleading
`
`and correspondence in this matter to the undersigned counsel for Opposer.
`
`Respectfully submitted,
`
`
`
`___________________
`Susan E. Hollander
`Sharoni S. Finkelstein
`K&L Gates LLP
`Four Embarcadero Center, Suite 1200
`San Francisco, CA 94111
`Phone: 415.882.8200
`Fax: 415.882.8220
`Attorneys for Opposer
`24 Hour Fitness USA, Inc.
`
`
`
`
`
`Dated: November 16, 2015
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing NOTICE OF
`
`OPPOSITION has been properly served, via U.S. Mail, on the following correspondent for
`Applicant on this 16th day of November, 2015.
`
`
`Joan Optican Herman
`Hovey Williams LLP
`10801 Mastin Street, Suite 1000
`Overland Park, KS 66210
`
`
`
`
`
`
`_________________________________
`Frances Skaggs
`
`

`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Trademark Electronic Search System (TESS)
`
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`List At:
`
`OR
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`to record:
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`to TESS)
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`
`Word Mark
`
`APEX
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`
`IC 005. US 006 018 044 046 051 052. G & S: Dietary supplements; diet capsules and pills; dietary drink mix
`for use as a meal replacement; diuretics; electrolyte replacement solutions; electrolytes; meal replacement
`bars, drinks, powders, shakes and snacks and beverages; therapeutic agents for weight control and
`appetite suppression; vitamins; vitamin preparations. FIRST USE: 19940300. FIRST USE IN COMMERCE:
`19940300
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`85076576
`
`Filing Date
`
`July 1, 2010
`
`Current Basis
`
`1A
`
`Original Filing
`Basis
`
`1B
`
`Published for
`Opposition
`
`Registration
`Number
`
`Registration
`Date
`
`Owner
`
`December 7, 2010
`
`4020452
`
`August 30, 2011
`
`(REGISTRANT) 24 Hour Fitness USA, Inc. CORPORATION CALIFORNIA 12647 Alcosta Blvd., 5th FL San
`Ramon CALIFORNIA 94583
`
`1 of 2
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`Trademark Electronic Search System (TESS)
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`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:2aoyqy.2.3
`
`Attorney of
`Record
`
`Susan E. Hollander, Esq. & Britt L. Anderson, Esq.
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`Live/Dead
`Indicator
`
`PRINCIPAL
`
`LIVE
`
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`Unit ed St at es Pat ent and Tradem ark Office
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`Word Mark
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`
`APEX
`
`IC 042. US 100 101. G & S: Temporary use of on-line non-downloadable software for tracking diet,
`exercise, fitness, athletic performance and weight management. FIRST USE: 20001000. FIRST USE IN
`COMMERCE: 20001000
`
`IC 044. US 100 101. G & S: Computer online services, namely, providing a website featuring information,
`online links and electronic resources related to human physiology and health. FIRST USE: 20001000.
`FIRST USE IN COMMERCE: 20001000
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`85076585
`
`Filing Date
`
`July 1, 2010
`
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`Registration
`Number
`
`1A
`
`1B
`
`May 24, 2011
`
`4046386
`
`Registration Date October 25, 2011
`
`Owner
`
`Attorney of
`Record
`
`(REGISTRANT) 24 Hour Fitness USA, Inc. CORPORATION CALIFORNIA 12647 Alcosta Blvd., 5th FL
`San Ramon CALIFORNIA 94583
`
`Susan E. Hollander, Esq. & Britt L. Anderson, Esq.
`
`Type of Mark
`
`SERVICE MARK
`
`1 of 2
`
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`Trademark Electronic Search System (TESS)
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`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:2aoyqy.3.1
`
`Register
`
`Live/Dead
`Indicator
`
`PRINCIPAL
`
`LIVE
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`| . HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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`2 of 2
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`11/16/2015 5:01 PM
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`
`Trademark Electronic Search System (TESS)
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`Unit ed St at es Pat ent and Tradem ark Office
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`TESS was last updated on Mon Nov 16 03:21:31 EST 2015
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`
`Word Mark
`
`APEX
`
`Goods and
`Services
`
`IC 005. US 006 018 044 046 051 052. G & S: Nutritional products, namely, nutritional supplements and
`nutritionally fortified beverages and mixes; nutritional products, namely, nutritional supplements and dietary
`supplements in the nature of nutritional bars and cookies; food and meal supplements; meal supplements,
`namely, calcium supplements; dietary supplements; nutritional drink mix or powder for use as a meal
`replacement; nutritional and performance dietary supplements, drink mixes and powders; vitamins; vitamin
`preparations; diet capsules and pills; diuretics; electrolyte replacement solutions; electrolytes; meal
`replacement and dietary supplement drink mixes and powders; meal replacement bars, drinks, powders,
`shakes and snacks and beverages; therapeutic agents for weight control and appetite suppression. USED IN
`ANOTHER FORM The mark was first used anywhere in a different form other than that sought to be
`registered at least as early as 03/00/1994
`
`Mark Drawing
`Code
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`Design
`Search Code
`
`26.07.01 - Diamonds with plain multiple line border; Diamonds with plain single line border
`27.03.01 - Geometric figures forming letters, numerals or punctuation
`
`Serial
`Number
`
`86601900
`
`Filing Date
`
`April 17, 2015
`
`Current Basis 1B
`
`Original
`Filing Basis
`
`1B
`
`Owner
`
`(APPLICANT) 24 Hour Fitness USA, Inc. CORPORATION CALIFORNIA 12647 Alcosta Boulevard, Suite 500
`San Ramon CALIFORNIA 94583
`
`Attorney of
`Record
`
`Prior
`Registrations
`
`Susan E. Hollander
`
`2936205;2997642;4020452
`
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`

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`Trademark Electronic Search System (TESS)
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`
`Description
`of Mark
`
`The mark consists of the letters "APEX" in black with the "A" forming the outline of a scalene triangle broken
`horizontally and vertically at the lower left corner.
`
`Type of Mark TRADEMARK
`
`Register
`
`PRINCIPAL
`
`Live/Dead
`Indicator
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`LIVE
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`Trademark Electronic Search System (TESS)
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`Unit ed St at es Pat ent and Tradem ark Office
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`TESS was last updated on Mon Nov 16 03:21:31 EST 2015
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`Word Mark
`
`APEX
`
`Goods and
`Services
`
`IC 005. US 006 018 044 046 051 052. G & S: N