Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA755980
`07/01/2016
`
`ESTTA Tracking number:
`
`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
`
`Almendras del Sol, S.A.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/03/2016
`
`C/ Charles Darwin, 13
`Elche, 03203
`SPAIN
`
`Louis Smoller
`Savur Threadgold LLP
`40 Exchange Place #1900
`New York, NY 10005
`UNITED STATES
`LS@savurlaw.com Phone:646-475-2515
`
`Applicant Information
`
`Application No
`
`86562949
`
`Publication date
`
`01/05/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`07/01/2016
`
`Waymouth Farms, Inc.
`5300 Boone Ave N
`New Hope, MN 55428
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/03/2016
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Food products, namely, nut-based and
`seed-based snack foods consisting primarily of sunflower seeds and almonds
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Fraud on the USPTO
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Word Mark
`
`Goods/Services
`
`SUN ALMONDS
`
`Distribution and sale of almond nuts
`
`Attachments
`
`NOO SunAlmonds TTAB 2016-07-01 FINAL.pdf(185515 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`
`Name
`
`Date
`
`/Louis Smoller/
`
`Louis Smoller
`
`07/01/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. _____________
`Serial No. 86562949
`Mark: SUNALMOND
`Filing Date: March 13, 2015
`Publication Date: January 5, 2016
`
`
`
`ALMENDRAS DEL SOL, S.A.
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`WAYMOUTH FARMS, INC.:
`
`
`
`
`
`
`
`Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`
`:
`:
`:
`
`NOTICE OF OPPOSITION
`
`Almendras Del Sol, S.A. (“Almendras”), a public limited company organized under the
`
`
`
`
`
`laws of the country of Spain, located at C/ Charles Darwin, 13 Elche, 03203 Spain, believes that
`
`it will be damaged by the registration of the SUNALMOND trademark in International Class 29
`
`(“Applicant’s Mark”) as shown in application Serial No. 86562949 (the “Application”), filed by
`
`applicant Waymouth Farms, Inc. (“Applicant”), a corporation organized under the laws of
`
`Minnesota with a mailing address of 5300 Boone Ave. N., New Hope, Minnesota 55428, and
`
`hereby opposes the same and requests that registration of Applicant’s Mark be refused.
`
`
`
`
`
`
`The grounds for Almendras’ opposition are as follows:
`
`Introduction
`
`Almendras has timely filed this notice of opposition.
`
`Since 1946, Almendras has worked tirelessly developing and commercializing
`
`1.
`
`2.
`
`their business, which is predominantly centered around the distribution, processing, and
`
`wholesaling of almond nuts, among other things, under the mark “SUN ALMONDS” (the
`
`“Mark”). Almendras operates and/or has accounts in over forty (40) countries throughout the
`
`

`
`world and owns numerous trademark registrations throughout the world in and to the Mark,
`
`including, without limitation, within the European Union (No: 012811014), Switzerland (No.
`
`1217871), Egypt (No. 1217871), Lebanon (No. 159427), Saudi Arabia (Nos. 1435022616,
`
`1435022617, 1435022618), and Tunisia (No. 1217871), and pending applications in the United
`
`Arab Emirates (Nos. 218877, 218878, 218879), Algeria (No. 143114), and Iraq (No. 67795).
`
`3.
`
`Almendras has been operating under the Mark, now and at all relevant times in
`
`the past, throughout the United States, for the commercial distribution, processing, purchasing,
`
`and wholesaling of almond nuts, among other things, since at least 2012 for the purchasing of
`
`almonds from other providers and since at least 2014 for the commercial sale, distribution, and
`
`wholesaling of almond nuts to consumers in the marketplace. Almendras has continuously and
`
`uninterruptedly used the Mark in commerce since that time
`
`4.
`
`Through extensive common law uses of the Mark, Almendras has created a
`
`widespread distinctive and overarching brand that consumers have become accustomed to
`
`seeing, and which consumers recognize as products and/or services originating from Almendras.
`
`5.
`
`Almendras has devoted substantial and considerable resources, time, and effort to
`
`develop, market, and promote the Mark in order to create a common source identifier for the
`
`goods and/or services Almendras offers under the Mark. Such efforts have generated over eight
`
`million two hundred thousand dollars ($8,200,000.00) U.S.D. in goods sold by Almendras under
`
`the Mark in the United States in 2014 and 2015 alone.
`
`6.
`
`Upon information and belief, Applicant is a commercial producer of snack foods,
`
`many of which are nut based.
`
`Applicant’s Knowledge of Almendras Use of the Mark
`Prior to Applicant filing the Application
`
`
`

`
`7.
`
`Between March 4-8, 2015, Almendras representatives attended the Natural
`
`Products Expo West Exhibition held in Anaheim, California (“Expo West 2015”), which is an
`
`industry trade show centered around natural food products.
`
`8.
`
`At Expo West 2015, Almendras’ representatives in attendance were introduced to
`
`a representative of Applicant, and the parties discussed Almendras supplying Applicant with
`
`almond nuts for Applicant’s own internal uses. See, Exhibit A.
`
`9.
`
`Upon information and belief, Almendras presently believes the foregoing is the
`
`first contact between the parties, but such contact may have occurred earlier.
`
`10.
`
`The parties continued their conversation via e-mail, with Almendras sending
`
`Applicant pricing sheets, among other information. See, Exhibit A.
`
`11.
`
`On March 13, 2015, notwithstanding Almendras rights in and to the Mark, which
`
`Applicant was fully and directly aware of based on at least the preceding, Applicant filed an
`
`intent to use application to register a derivation of the Mark, merely omitting the “S” from the
`
`end of “SUN ALMONDS”, in International Class 29 for uses in connection with: Food products,
`
`namely, nut-based and seed-based snack foods consisting primarily of sunflower seeds and
`
`almonds.
`
`Argument
`
`12.
`
`The goods set forth in the Application are the same, similar, complementary,
`
`related to, and/or have the same nature as the goods and/or services marketed by Almendras
`
`under the Mark, that being predominantly the sale of almond nut food products.
`
`13.
`
`Applicant’s advertising and use of Applicant’s Mark, as contemplated in the
`
`Application, will inevitably reach the same consumers that Almendras currently engages in
`
`business with and targets through Almendras uses of the Mark. Likewise, snack products, such
`
`

`
`as nuts and nut-based snacks, are sold in the same distribution and trade channels and the parties’
`
`respective offerings will inevitably be presented or sold side-by-side with one another.
`
`14.
`
`Applicant’s Mark, as contemplated by the application, shares the identical
`
`element “SUNALMOND” with the Mark. The Application merely omits the “S” from the Mark.
`
`Thus, Applicant’s sought for mark is substantially similar in sight, sound, connotation, meaning,
`
`and overall commercial impression to the Mark.
`
`15.
`
`Consumers, upon seeing Applicant’s Mark used in connection with Applicant’s
`
`goods and/or services, are likely to mistakenly believe that Applicant’s Mark, and the goods
`
`and/or services provided in connection therewith, originated from or are connected with,
`
`sponsored by, associated with, or licensed or approved by Almendras, thereby creating a
`
`likelihood of confusion between Almendras and Applicants’ goods and/or services.
`
`16.
`
`As such, Applicant’s Mark is confusingly similar to Almendras’ Mark, and
`
`therefore, if Applicant’s Mark were allowed to register for the goods listed in International Class
`
`29 as set forth in the Application, such registration would likely cause confusion, mistake, or
`
`deception among consumers concerning the origin, source or sponsorship of Applicant’s
`
`products in violation of the Lanham Act and other similar trade practices and competition laws.
`
`17.
`
`Likewise, there is no issue of priority. Almendras has been using the Mark in
`
`commerce within the United States prior to Applicant, including, without limitation, through
`
`contacting Applicant to solicit sales prior to Applicant’s filing date of March 13, 2015.
`
`Almendras’ uses, both actual and constructive, cover goods and/or services that are identical or
`
`closely related to the goods identified in the Application.
`
`

`
`18.
`
`If Applicant’s Mark is allowed to register, the confusion between the Mark and
`
`Applicant’s Mark would result in irreparable damage and injury to both Almendras and to the
`
`public.
`
`19.
`
`In addition, should the quality of Applicant’s goods and/or services be lacking,
`
`Applicant’s use of Applicant’s Mark may also tarnish the Mark, resulting in further harm to
`
`Almendras’ reputation in the marketplace.
`
`20.
`
`In light of the foregoing, especially where Almendras has priority based on prior
`
`uses in commerce in connection with the commercial distribution, processing, purchasing, and
`
`wholesaling of almond nuts, among other things, and the fact that Applicant’s goods are of the
`
`same nature and purpose and specifically target the precise market, distribution, and trade
`
`channels occupied by Almendras’ use of the Mark, Almendras believes that any use by
`
`Applicant of Applicant’s Mark, or confusingly similar derivation thereof, is likely to cause
`
`confusion, mistake, or deception to purchasers in that they are purchasing Almendras’ goods
`
`and/or services.
`
`21.
`
`Accordingly, Almendras will be damaged by the registration of Applicant’s Mark
`
`because such registration gives Applicant prima facie evidence of ownership of and the exclusive
`
`right to use Applicant’s Mark that is confusingly similar to Almendras previously-used and not-
`
`abandoned “SUN ALMONDS” Mark, in derogation of Almendras rights. As such, Applicant’s
`
`Mark is unregisterable under 15 U.S.C. § 1052(d).
`
`22.
`
`Furthermore, since Applicant’s “SUNALMOND” application not just strongly
`
`resembles, but is nearly exactly the same as Almendras “SUN ALMONDS” Mark, Applicant’s
`
`uses are likely to dilute the strength of the Mark by blurring or tarnishing and/or by reducing the
`
`distinctive quality, uniqueness, good image, and/or prestige that consumers have come to expect
`
`

`
`of the distinctive and famous “SUN ALMONDS” mark as used by Almendras. Accordingly,
`
`Applicant is in violation of 15 U.S.C. § 1125(c).
`
`23.
`
`Lastly, the Application includes a verification and declaration by Applicant (via
`
`Applicant’s President Mr. Gerard S. Knight) that “The signatory believes that to the best of the
`
`signatory's knowledge and belief, no other person has the right to use the mark in commerce,
`
`either in the identical form or in such near resemblance as to be likely, when used on or in
`
`connection with the goods/services of such other person, to cause confusion or mistake, or to
`
`deceive. The signatory being warned that willful false statements and the like are punishable by
`
`fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false
`
`statements and the like may jeopardize the validity of the application or any registration resulting
`
`therefrom, declares that all statements made of his/her own knowledge are true and all statements
`
`made on information and belief are believed to be true.” Such declaration is required pursuant to
`
`15 U.S.C. § 1051(b).
`
`24.
`
`Since Applicant had, at the time of declaration, clear and actual knowledge of
`
`Almendras use of the Mark, Almendras asserts that Applicant’s declaration pursuant to 15
`
`U.S.C. § 1051(b) is a knowingly false misrepresentation of fact and constitutes a fraud on the
`
`USPTO, as an attempt to procure a trademark without sufficient rights. The timing of Almendras
`
`meeting with Applicant at Expo West 2015 and Applicant filing for Applicant’s Mark
`
`approximately one (1) week later strongly supports this conclusion.
`
`25.
`
`Accordingly, Applicant’s Application should be voided for fraud on the USPTO.
`
`Conclusion
`
`26.
`
`Overall, Almendras will continue to be irreparably damaged by registration of
`
`Applicant’s confusingly similar mark which will likely cause confusion, mistake, or deceive
`
`

`
`purchasers in the marketplace, where purchasers would believe that the goods and/or services
`
`mentioned in the Application are legitimately connected with, sponsored by, or approved by
`
`Almendras. Deficiencies or faults in the quality of Applicant’s products are likely to reflect
`
`negatively upon, tarnish, and seriously injure the reputation Almendras has established for its
`
`good and/or services marketed under the Mark. This confusion is likely to result in loss of
`
`revenues to Almendras and damage to its reputation, among other things, and on this basis,
`
`Almendras opposes registration of Applicant’s Mark.
`
`WHEREFORE, Opposer, Almendras respectfully requests:
`
`a.
`
`The registration sought by Applicant, as shown in Application Serial Number
`
`
`
`
`
`86562949 be refused and that this Notice of Opposition be sustained;
`
`
`
`b.
`
`That Almendras be awarded any attorney’s fees or costs to which they may be
`
`entitled under law; and
`
`
`
`c.
`
`Any other relief that the Trademark Trial and Appeal Board deems just and
`
`proper under the circumstances.
`
`
`
`
`
`
`
`
`
`
`Dated: July 1, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Louis Smoller
`Attorney for Almendras Del Sol, S.A.
`Savur Threadgold LLP
`40 Exchange Place # 1900
`New York, New York 10005
`Tel. (646) 475-2515
`Email: LS@savurlaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. _____________
`Serial No. 86562949
`Mark: SUNALMOND
`Filing Date: March 13, 2015
`Publication Date: January 5, 2016
`
`:
`:
`:
`:
`:
`:
`
`:
`:
`:
`
`
`
`
`
`ALMENDRAS DEL SOL, S.A.
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`WAYMOUTH FARMS, INC.:
`
`
`
`
`
`
`
`Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a true and complete copy of the foregoing Notice of Opposition has
`been served on the Owner of Record and correspondent for Applicant, Waymouth Farms, Inc. as
`listed on the website for the United States Patent and Trademark Office by U.S.P.S. Certified
`Mail Return Receipt Requested and via email on July 1, 2016 to:
`
`Waymouth Farms, Inc.
`5300 Boone Ave. N.
`New Hope, Minnesota 55428
`Email: gsknight@waymouth.com
`
`Dated: July 1, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Louis Smoller
`Attorney for Almendras Del Sol, S.A.
`Savur Threadgold LLP
`40 Exchange Place # 1900
`New York, New York 10005
`Tel. (646) 475-2515
`Email: LS@savurlaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`

`
`De: Ramón Gambín Romero [mailto:rgambin@sunalmonds.com]
`Enviado el: lunes, 16 de marzo de 2015 13:52
`Para: gcarmes@waymouth.com
`CC: lgambin@sunalmonds.com
`Asunto: EXPO WEST - SUN ALMONDS SPAIN
`
`
`Dear Mr. Carmes,
`
`
`Let me introduce myself, I´m Ramon Gambin and I work on the company Sun Almonds in Spain.
`
`
`Last week I was visiting your booth at the Expo West Exhibition and your colleague Nick give me your
`contact details.
`Please let me make as recap, an introduction of our company:
` We are crackers of almonds, as well as processors. We are located in Elche (Alicante) Spain, in a
`modern building with the latest technology in almond selection and processing
` We are in the almond business since 1946, so we have a good knowledge and experience in this field.
` Please kindly note the list of items that we produce and can offer you:
` SPANISH ALMONDS CONVENTIONAL AND ORGANIC
` All varieties and sizes available in the market: Largueta, Ferragnes, Valencia, Marcona…We can offer
`you natural, blanched and roasted.
` CALIFORNIAN ALMONDS
` All varieties and all sizes available in the market. We can offer you natural, blanched, roasted and
`processed products.
` PROCESSED ALMONDS
` Slices, Slivered, Splits, Diced and meal. We can offer them natural, blanched and roasted in any size that
`you request.
` One of the guidelines of our company is the Quality of the products that we offer. We are IFS and BRC
`certified, therefore we are really concerned about this matter and we keep good standards of quality.
` Apart from that, we offer flexibility to our customer, we know that it is important to be able to adapt
`orders and products to our customers’ needs and we proceed this way as per their requests, proving
`also personalized service.
` This is our website: www.sunalmonds.com, just in case you would like to check more information about
`us.
`Please kindly find below a list of offers with the items that I can offer you:
`CONVENTIONAL SPANISH ALMONDS:
`Natural Conventional Marconas 27/30 AOL…………………………………………5.00$ x lb
`Blanched Conventional Marconas 27/30………………………………………………6.00$ x lb
`Unselected Natural Conventional Valencias (max 1% bitter)……………….4.10 $ x lb
`Blanched Unselected Conventional Valencias (max 1% bitter)……………..5.10$ x lb
`
`
`PROCESSED ALMONDS CONVENTIONAL (USA ORIGIN)
`Blanched Sliced Almonds…………………………….5.05$ x lb
`Blanched Slivered Almonds………………………….5.05$ x lb
`Blanched Diced Almonds………………………………4.90$ x lb
`Natural Diced Almonds………………………………...4.50$ x lb
`Blanched Almond Meal………………………………..4.80$ x lb
`
`
`Natural Almond Meal……………………………………4.35$ x lb
`
`

`
`
`
`
`NATUAL AND PROCESSED ALMONDS ORGANIC (SPAIN ORIGIN)
`Natual Selected Valencias Organic 27/30………………………………………………5.65$ x lb
`Blanched Sliced Almonds…………………………….6.40$ x lb
`Blanched Slivered Almonds………………………….6.40$ x lb
`Blanched Diced Almonds………………………………6.30$ x lb
`Natural Diced Almonds………………………………...6.10$ x lb
`Blanched Almond Meal………………………………..6.05$ x lb
`
`
`Natural Almond Meal………………………………….5.95$ x lb
`
`
`
`CIF USA
`CARTONS/ BAGS OR BIG BAGS
`PROMPT SHIPMENT FROM SPAIN
`FULL CONTAINER LOAD
`OFFER VALID TODAY
`
`
`Mr. Carmes, please kindly check my offers and let me know if you have any doubt or question and I will
`be pleased to reply you.
`
`
`Looking forward to hearing from you.
`
`
`Thanks and best regards
`
`
`Ramón Gambin Romero
`International Sales
`
`
`
`
`
`
`
`Almendras del Sol, S.A.
`Elche Parque Empresarial
`C/ Charles Darwin, 13-15
`03203 Elche (Alicante)
`Spain
`Tel./ Phone: (+34) 965 68 53 60
`Fax: (+34) 965 68 39 68
`Móvil/ Cell: (+34) 664 247 703
`Skype: ramonsunalmonds
`
`

`
`Website: www.sunalmonds.com
`
`
`
`----------------------------------------------------------------------------------------------------------------------------------------------
`CONFIDENTIALITY AND DATA PROTECTION---------------------------------------------------------------------------------------
`----------------------------------The possible information this document could contain, related to personal data, is
`protected by the Spanish Data Protection Act (LOPD) 15/99, which obliges the recipient not to use such
`information for aims which are not strictly for the original intended purpose. In addition, the absolute confidentiality
`and exclusivity, forbids any user to disclose, copy, distribute or exercise any related action to its content, either
`personal data or other information, that is considered, in any case, CONFIDENTIAL. If you have received this e-
`mail in error, please inform the sender and delete it from your mailbox or any other storage mechanism.