Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA757070
`07/08/2016
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Krass USA, LLC
`
`Limited Liability Company
`
`Citizenship
`
`New Jersey
`
`4460 Bordentown Ave.
`Old Bridge, NJ 08857
`UNITED STATES
`
`Mark J. Ingber
`The Ingber Law Firm
`374 Millburn Ave Suite 301
`Millburn, NJ 07041
`UNITED STATES
`ingber.law@verizon.net Phone:(973) 921-0080
`
`Applicant Information
`
`Application No
`
`86876403
`
`Publication date
`
`06/14/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`07/08/2016
`
`Samer Abdelmaseh
`710 Hartle St.
`Sayreville, NJ 08872
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`07/14/2016
`
`Goods/Services Affected by Opposition
`
`Class 034. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Smokers' articles, namely, hookah charcoal
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86862888
`
`Application Date
`
`12/31/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`SUN LIGHT S
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the shaded circular border that contains words Sun and
`Light and a teardrop-shaped flame between the words positioned in the upper
`portionof the border. There is a stylized letter S inside the circlar border with a
`flame design emanating from the middle portion of the letter S.
`
`Class 034. First use: First Use: 2016/01/28 First Use In Commerce: 2016/01/28
`Hookah parts, namely, hoses, bowls, mouthpieces, bases, hookah heads,
`glasses, trays, pipes, filters; Hookahs; Smokers'articles, namely, hookah char-
`coal
`
`Attachments
`
`86862888#TMSN.png( bytes )
`SUNLIGHT CHARCOAL Opposition.pdf(2228066 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
`
`/Mark J. Ingber/
`
`Mark J. Ingber
`
`07/08/2016
`
`

`

`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IN RE APPLICATION OF:
`Samer Abdelmaseh
`
`SERIAL NO: 86/876403
`FILED: January 15’ 2016
`MARK: SUNLIGHT CHARCOAL
`
`CLASS; 34
`
`PUBLISHED: June 14, 2016
`
`
`
`KRASS USA, LLC
`
`Opposer,
`
`vs.
`
`Samer Abdelmaseh
`
`Applicant.
`
`TO: TRADEMARK TRIAL AND APPEAL BOARD
`
`US. Patent and Trademark Office
`PO. Box 1451
`
`Alexandria, VA 22313-1451
`
`A.
`
`Identification of Opposer:
`
`NOTICE OF OPPOSITION
`
`1. Opposer is Krass USA, LLC, a New Jersey corporation with a principal place of business
`at 4460 Bordentown Ave. Old Bridge, NJ 08857 (herein after “Krass”).
`
`2. Opposer is the owner of the following US. Trademark Application:
`
`a) No. 86/862,888, for the mark SUN LIGHT S filed on December 31, 2015 as used since
`at least as early as January 28, 2016, in connection with “Hookah parts, namely, hoses,
`bowls, mouthpieces, bases, hookah heads, glasses,
`trays, pipes, filters; hookahs;
`smokers” articles, namely, hookah charcoal” in Class 34;
`
`3. A copy of the TESS printout of this application is attached hereto as Exhibit A.
`
`4. Applicant, Samer Abdelmaseh, a United States individual, is the owner of U.S. Trademark
`Application Serial No. 86/876,403 for the mark SUNLIGHT CHARCOAL filed on
`January 15, 2016, as intended for use in connection with “Smokers’ articles, namely,
`hookah charcoal” in Class 34.
`
`it will be damaged by the grant of and registration of said
`5. Opposer believes that
`SUNLIGHT CHARCOAL mark in Class 34 shown in the above referenced Application
`Ser. No. 86/876,403, and hereby opposes the registration of such mark.
`
`

`

`6.
`
`Upon information and belief, Applicant has made no use of the SUNLIGHT CHARCOAL
`mark for which it seeks registration in Class 34. There is no issue as to priority. Applicant’s
`foregoing SUNLIGHT CHARCOAL application was filed January 15, 2016, while
`Opposer’s SUN LIGHT S application was originally filed as an intent—to—use application
`with a prior filing date of December 31, 2015, but was later amended to a use application
`with a date of first use of January 28, 2016.
`
`B.
`
`Grounds for Opposition:
`
`As grounds for opposition, it is alleged that:
`
`7'.
`
`Krass USA, LLC (“Opposer”) is presently engaged in and has been continuously engaged
`in its hookah goods and services in the United States since at least as early as 1998. Opposer
`has used its SUN LIGHT S mark in commerce since at least as early as January 28, 2016,
`however the mark was filed as an intent-to-use application, with a filing date of December
`31, 2015. Such date is prior to the January 15, 2016 date of filing by Applicant of its intent-
`to-use Application Ser. No. 86/876,403 for the mark SUNLIGHT CHARCOAL.
`
`As a consequence of Opposer’s continuous, substantial and widespread use of the SUN
`LIGHT S mark,
`the trade and consuming public have come to know and associate
`Opposer’s SUN LIGHT S mark with Opposer’s hookah parts, namely hookah charcoal
`goods and having their source of origin from and originating with Opposer, such
`identification and association with Opposer having occurred prior to the January 15, 2016
`filing date for Applicant’s intent—to-use SUNLIGHT CHARCOCAL mark Ser. No.
`86/876,403.
`
`registration by the Applicant, namely, SUNLIGHT
`The trademark proposed for
`CHARCOAL in Class 34, is so confusingly similar in sight and sound to Opposer’s SUN
`LIGHT S mark that there is a substantial likelihood of confusion amongst the consuming
`public. Moreover, Applicant’s goods, as identified in its trademark application, are
`identical to Opposer’s goods and are likely to cause confusion therewith and mistake
`therefore. The Applicant’s intended SUNLIGHT CHARCOAL mark is deceptively
`similar to Opposer’s prior filed and used SUN LIGHT S mark, so as to cause confusion
`and lead to deception as to the origin of Applicant’s goods bearing Applicant’s marks.
`
`Moreover, the goods of Opposer and the goods of Applicant are identical, are in similar
`channels of commerce, and are offered and/or will be offered to similar customers.
`
`As a result of the confusing similarity between Opposer’s prior filed and used SUN LIGHT
`S mark and the Applicant’s intended SUNLIGHT CHARCOAL mark, and because the
`goods of Applicant and Opposer are identical, are in similar channels of commerce, and
`are directed to similar customers, registration of Applicant’s SUNLIGHT CHARCOAL
`mark in connection with Applicant’s goods is likely to cause confusion and/or is likely to
`deceive the public as to the source or sponsorship of such goods and thereby to damage
`Opposer.
`
`10.
`
`11.
`
`

`

`SUNLIGHT CHARCOAL mark for which registration is sought, because such mark, when
`applied to the goods of Applicant, would:
`
`a
`b.
`0.
`
`d.
`e.
`
`f.
`
`Be likely to continue to cause confusion and to cause mistake and to deceive;
`Falsely suggest a connection with Opposer;
`Cause consumers of Applicant’s goods offered in connection with the
`Applicant’s mark to purchase Applicant’s goods assuming that they were
`purchasing Opposer’s goods;
`Damage Opposer’s valuable goodwill in its SUN LIGHT S mark; and
`Cause confusion in the trade which would inevitably result in the loss of sales
`to the Opposer. Furthermore, any defect, objection or
`fault found with
`Applicant’s goods marketed under its mark would necessarily reflect upon and
`seriously injure the reputation which the Opposer has established for its goods.
`If the Applicant were granted the registration herein opposed, it would thereby
`obtain at least a prima facie exclusive right to the use of its mark. Such
`registration would be a source of damage and injury to the Opposer.
`
`13. By reason of the foregoing, Applicant is not entitled to registration of the mark sought by
`its application Serial No. 86/876,403 for the intended mark SUNLIGHT CHARCOAL.
`
`WHEREFORE, Opposer respectfully prays that:
`a.
`Applicant be required to answer this Notice of Opposition;
`b.
`Application Serial No. 86/876,403 in International Class 34 be rejected, and
`that the mark therein sought for the goods herein specified in International
`Class 34 be denied and refused.
`
`c.
`
`d.
`e.
`
`Opposer hereby gives notice under Rule 2.122(d) of the Rules of Practice
`that after hearing and in any appeal on this opposition proceeding, it will
`rely on its Applications which are annexed as an exhibit to this Notice of
`Opposition as evidence in support of this Notice of Opposition.
`The $300 filing fee required in § 2.6(a)(l7) is submitted herewith.
`Opposer be awarded such other and further relief as may be deemed to be
`just and proper.
`
`Respectfully submitted,
`
`THE TNGBER LAW FIRM
`
`By:
`
`/Mark J. Ingber/
`Mark J. Ingber, Esq.
`
`Dated: July 8, 2016
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and complete copy of the foregoing Notice of
`
`Opposition has been served by First Class Mail, upon Applicant Samer Abdelmaseh, at the
`
`following address on record, this 8th day of July, 2016:
`
`Samer Abdelmaseh
`
`710 Hartle St.
`
`Sayreville, NJ 08872
`
`Mark J. Ingber/
`Mark J. lngber
`
`

`

`EXHIBIT A
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`No Form 1475 [Rev Demons)
`OMB No, cam-none: [Exp 022812313)
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Pius Application
`
`Serial Number: 86862888
`
`Filing Date: 12/31/2015
`
`NOTE: Damfields with the * are mandatory under TEAS Plus. The wording "(ifapplicable) " appears where thefield is only mandatory
`under the facts ofthe particular application
`
`The table below presents the data as entered.
`
`WES
`
`l\\TICRS\EXPORT16\IMAGEOUT
`i716\868\628\86862888\xmll\ FTKOUOZ.JPG
`
`YES
`
`
`N0
`3 Sun Light S
`
`N0
`
`
`
`i
`
`
`
`iThe mark consists of the shaded circular border that contains
`(1 S ii an
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`ere is a
`stylized letter S made the Circlar border With a flame deSIgn
`emanating from the middle portion ofthe letter S.
`
`
`TEAS Plus
`E MARK INFORMATION
`
`1 *MARK
`j
`
`i *SPECIAL FORM
`
`USP’I‘Q—GENERATED IMAGE
`3 LITERAL ELEMENT
`
`i *COLOR MARK
`i.77*C0L0R(S)CLAIMED
`i (If applicable)
`
`'DESCRIPTlON 0F THE MARK
`E
`i (and Color Location, ifapplicable)
`:
`
`7
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`
`7
`
`7
`
`7
`
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`
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`
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`‘77A7PPLICANT INFORMATION
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`777 4460Bordentowri AQWWW 7
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`
`334333;;
`New Jersey
`ragga}! “gags ‘
`
`
`
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`
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`
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`.
`‘ ____________
`
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`LEGAL ENTITYINFORMATION
`:wim
`77 _ 77 "—7 _7
`
`08857
`
`i
`77
`
`7
`
`7
`
`7
`
`7 7
`
`7
`
`77
`
`7 magma“ W W
`
`
`

`

`‘ STATEICOUNTRY \VHERE LEGALLY ORGANIZED
`
`New Jersey
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`
`
`Hookah parts, namely, hoses, howls, mouthgieees, Eases,
`hookah heads, giasses, Trays, pipes, fiiters; Hookahs;
`Smokers articles, namely, hookah charcoal
`
`SECTION 1(b)
`
`
`
`: ‘INTERNATIONAL CLASS
`
`*IDENTIFICATION
`
`‘1.
`
`'FILING BASIS
`
`ADDITIONAL STATEMENTS SECTION
`
`I ”TRANSLATION
`
`E (if applicable)
`*TRANSLITERATION
`3 (if applicable)
`
`*CLAIMED PRIOR REGISTRATION
`; (if applicable)
`
`“CONSENT (NAMEJ'LIKENESS)
`(if applicable)
`
`3 *CONCURRENT USE CLAIM
`(if applicable)
`
`MISCELLANEOUS STATEMENT
`
`:IATTORNEY I NFORMATION
`NAME
`
`ATTORNEY DOCKET NUMBER
`
`3 FIRM MARIE
`STREET
`
`CITY
`
`STATE
`
`i COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`, FAX
`
`E ENIAIL ADDRESS
`
`EAUTHORIZED T0 COMIVIUNICATE VIA EMAIL
`
`i CORRESPONDENCE INFORMATION
`E ’NAME
`
`FIRM NAME
`
`*STREET
`
`”CITY
`
`‘STATE
`; (Required for U.S. addresses]
`'COUNTRY
`
`’ ZIP/POSTAL CODE
`
`Applicant15 the owner of the Trademark Mai‘k Application
`_.86/701,408
`
`
`
`1037 "Route46 East Suite 107
`lCIiftOn
`New Iersey
`
`m... __....._._ unk#_4fi_wwm,
`Umted States
`
`......n.....mmmm.._.w ”MI
`
`
`
`Lawrence G Fridinan
`
`307013
`973-779-2580"-
`9737794473
`
`lany@sflberandfndman com
`
`Yes
`
`SILBER & FRIDMAN
`1037RS1;42’s;1""'s;1;”i07
`EYES};""""""""""""’'''''''
`'
`
`’
`
`:
`
`New Jersey
`
`"USES”;S
`07013
`
`””
`
`fl ‘
`
`' '
`
`
`
`

`

`PHONE
`FAX
` "EMAIL ADDRESS
`
` Q 973-779-4473
`
`973-779-2580
`
`‘AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`FEE INFORMATION
`
`APPLICATION FILING OPTION
`ENUMBIEIRI-OF OLAESES
`FEE PER CLASS
`I *TOTAL FEE PAID
` lGNATURE INFORMATION
`
`:
`r
`
`- SIGNATURE
`- SIGNATORY'S NAME
`
`" SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`I
`
`I
`
`-
`
`_
`
`-
`
`
`TEAS Plus
`U €71 i w___.— a
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`
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`.‘.n.......n..n_.._..m..__.____...... .
`Bishara Nakhia
`
`
`
`President
`
`20 ; 6740551
`
`- DATE SIGNED
`
`12/31/2015
`
`.
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information uniess it displays a valid OMB control number.
`pro ram 1478 {Rev mom}
`OMB Mo, 05:11 70009 [Exp 02282015)
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 86862888
`
`Filing Date: 12/31/2015
`
`To the Commissioner for Trademarks:
`
`MARK: Sun Light S (stylized andfor with design, see mark)
`
`The literal element of the mark consists of Sun Light S.
`The applicant is not claiming color as a feature ofthe mark. The mark consists of the shaded circular border that contains words Sun and Light
`and a teardrop-shaped flame between the words positioned in the upper portion of the border. There is a stylized letter S inside the circlar border
`with a flame design emanating from the middle portion of the letter S.
`The applicant, KRASS USA, LLC, a limited liability company legally organized under the laws of New Jersey, having an address of
`4460 Bordentown Ave.
`
`Old Bridge, New Jersey 08857
`United States
`
`requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act ofJuly 5, 1946 (15 U.S.C. Section 1051 et seq), as amended, for the following:
`
`For specific filing basis information for each item, you must view the display within the Input Table.
`international Ciass 034: Hookah parts, namely, hoses, bowls, mouthpieces, bases, hookah heads, glasses, trays, pipes, filters; Hookahs;
`Smokers' articles, namely, hookah charcoal
`Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified
`goods/services. ( 15 U.S.C. Section 1051(b)).
`
`Miscellaneous Statement
`
`Applicant is the owner of the Trademark Mark Application 86/701,408
`
`The applicant's current Attorney Information:
`Lawrence G. Fridman of SILBER & FRIDMAN
`1037 Route 46 East, Suite 107
`Clifton, New Jersey 07013
`United States
`
`The attorney docket/reference number is F1556.
`
`The applicant's current Correspondence Information:
`Lawrence G. Fridman
`
`SILBER & FRIDMAN
`
`1037 Route 46 East, Suite l0?
`
`Clifton, New Jersey 07013
`973-779-25 80(phone)
`973-779-4473(fax)
`
`1arry@si1berandfridman.com (authorized)
`E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or applicant's attorney
`at the e-mail address provided above. I understand that a valid e—mail address must be maintained and that the applicant or the applicant's
`attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to
`do so will resuit in an additional processing fee of $50 per international class of goods/services.
`
`

`

`A fee payment in the amount of $225 has been submitted with the application, representing payment for 1 class(es).
`
`Declaration
`
`The signatory believes that: ifthe applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner ofthe
`trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the
`application; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed
`an application under 15 U.S.C. § 1051(b), § 1 126(d), and/or § 1 126(e), the applicant has a bona fide intention, and is entitled, to use the mark in
`commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory's knowledge and
`belief, no other persons, except, if applicable, concurrent users, have 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 persons, to cause confusion or mistake, or
`to deceive. The signatory being warned that willful false statements and the like are punishable by fine or impriSOHment, or both, under 18 U.S.C.
`§ 200 t, and that such willful faise 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.
`
`Signature: lbkb/ Date Signed: 12/31/2015
`Signatory‘s Name: Bishara Nakhla
`Signatory‘s Position: President
`
`RAM Sale Number: 86862888
`
`RAM Accounting Date: 12/31/2015
`
`Serial Number: 86862888
`Internet Transmission Date: Thu Dec 31 10:40:46 EST 2015
`
`TEAS Stamp: USPTO/FTK-XX.XXX.XX.XX-20151231104046574
`171-86862888-55042f96fbce327d885fb65748f5
`80715c606278bbf204547ehfe5a2e5748bc740-C
`C-10676-20151228123105979540
`
`

`

`
`
`