Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA787149
`12/05/2016
`
`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
`
`Firefly Distilling Company, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/08/2017
`
`6775 Bears Bluff Road
`Wadmalaw Island, SC 29487
`UNITED STATES
`
`Thomas M. Hadid
`Cooley LLP
`1299 Pennsylvania Ave., NW Suite 700
`Washington, DC 20004
`UNITED STATES
`trademarks@cooley.com, thadid@cooley.com, vbadolato@cooley.com, pwill-
`sey@cooley.com Phone:3108836448
`
`Applicant Information
`
`Application No
`
`87048142
`
`Publication date
`
`10/11/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`12/05/2016
`
`New World Distillery
`PO Box 597
`Eden, UT 84310
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`02/08/2017
`
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Alcoholic beverages, except beer; Distilled
`Spirits; Gin
`
`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.
`
`3656525
`
`Registration Date
`
`07/21/2009
`
`Word Mark
`
`FIREFL
`
`Application Date
`
`02/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA787149
`12/05/2016
`
`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
`
`Firefly Distilling Company, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/08/2017
`
`6775 Bears Bluff Road
`Wadmalaw Island, SC 29487
`UNITED STATES
`
`Thomas M. Hadid
`Cooley LLP
`1299 Pennsylvania Ave., NW Suite 700
`Washington, DC 20004
`UNITED STATES
`trademarks@cooley.com, thadid@cooley.com, vbadolato@cooley.com, pwill-
`sey@cooley.com Phone:3108836448
`
`Applicant Information
`
`Application No
`
`87048142
`
`Publication date
`
`10/11/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`12/05/2016
`
`New World Distillery
`PO Box 597
`Eden, UT 84310
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`02/08/2017
`
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Alcoholic beverages, except beer; Distilled
`Spirits; Gin
`
`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.
`
`3656525
`
`Registration Date
`
`07/21/2009
`
`Word Mark
`
`FIREFL
`
`Application Date
`
`02/25/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "FIREFLY" with a design of a firefly comprising
`the letter "Y".
`
`Class 033. First use: First Use: 2006/05/01 First Use In Commerce: 2006/05/01
`Liquor
`
`U.S. Registration
`No.
`
`3665660
`
`Registration Date
`
`08/11/2009
`
`Application Date
`
`04/28/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`FIREFLY SWEET TEA HAND CRAFTED SWEET TEA FLAVORED VODKA
`
`Description of
`Mark
`
`Goods/Services
`
`The mark comprises the word "FIREFLY" with a design of a circle, a Palmetto
`tree on a landscape, a crescent moon, a horizon with foliage, and images of fire
`flies.
`
`Class 033. First use: First Use: 2008/04/14 First Use In Commerce: 2008/04/14
`Liquor
`
`U.S. Registration
`No.
`
`4354291
`
`Application Date
`
`04/21/2010
`
`
`
`Registration Date
`
`06/18/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`FIREFLY SKINNY TEA
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "FIREFLY SKINNY TEA" with a design of a
`firefly comprising the letter "Y" in firefly. The design of several small star shapes
`trails the tail of the firefly suggesting a trail of light.
`
`Class 033. First use: First Use: 2011/02/00 First Use In Commerce: 2011/02/00
`Low-calorie, low-sugar, tea-flavored vodka
`
`U.S. Registration
`No.
`
`4589509
`
`Registration Date
`
`08/19/2014
`
`Application Date
`
`01/29/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`FIREFLY MOONSHINE LIGHT IT UP!
`
`Description of
`Mark
`
`The mark consists of the words "FIREFLYMOONSHINE LIGHT IT UP!" featuring
`a dotted line representing the trail of a firefly in flight and a stylized image of
`afirefly.
`
`
`
`Goods/Services
`
`Class 033. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`distilled spirits
`
`U.S. Registration
`No.
`
`4846403
`
`Registration Date
`
`11/03/2015
`
`Application Date
`
`01/29/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`FIREFLY MOONSHINE LIGHT IT UP!
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "FIREFLYMOONSHINE LIGHT IT UP!" featuring
`a dotted line representing the trail of a firefly in flight and a stylized image of
`afirefly; a beach cottage, a palmetto tree and a crescent moon.
`
`Class 033. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`distilled spirits
`
`Attachments
`
`77405013#TMSN.png( bytes )
`77459747#TMSN.png( bytes )
`85019459#TMSN.png( bytes )
`85834757#TMSN.png( bytes )
`85834756#TMSN.png( bytes )
`Firefly - Notice of Opposition re FOSSIL FLY.pdf(22928 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
`
`/Thomas M. Hadid/
`
`Name
`
`Date
`
`Thomas M. Hadid
`
`12/05/2016
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`In the matter of application Serial No. 87/048,142
`For the Trademark FOSSIL FLY
`Published in the Official Gazette on October 11, 2016
`
`FIREFLY DISTILLING COMPANY LLC,
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
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`
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`
`
`v.
`
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`
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`NEW WORLD DISTILLERY,
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
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`Opposition No.
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer Firefly Distilling Company LLC (“Firefly”), a Delaware limited liability
`
`company having its principal place of business at 16775 Bears Bluff Road, Wadmalaw Island,
`
`South Carolina 29487, will be damaged by the issuance of a registration for the mark FOSSIL
`
`FLY (the “Applicant’s Mark”), as applied for in Application Serial No. 87/048,142, filed on May
`
`24, 2016, by Applicant New World Distillery, a Utah corporation with a mailing address of P.O.
`
`Box 597, Eden, Utah 84310 (“Applicant”).
`
`
`
`As grounds for opposition, Firefly alleges as follows.
`
`1.
`
`Firefly markets and sells a number of different types and brands of alcoholic
`
`beverages and distilled spirits, including vodka and bourbon prepared cocktails. Firefly has
`
`marketed and sold alcoholic beverages in the United States for a decade. Firefly owns the
`
`following United States trademark registrations pertaining to its FIREFLY brand:
`
`FIREFLY and Design (U.S. Reg. No. 3,656,525), issued on July 21, 2009, for “liquor”;
`
`
`
`FIREFLY SWEET TEA HAND CREATED SWEET TEA FLAVORED VODKA
`
`(U.S. Reg. No. 3,665,660), issued on August 11, 2009, for “liquor”;
`
`FIREFLY SKINNY TEA (U.S. Reg. No. 4,354,291), issued on June 18, 2013, for “low-
`
`calorie, low-sugar, tea-flavored vodka”;
`
`FIREFLY MOONSHINE LIGHT IT UP! (U.S. Reg. No. 4,589,509), issued on August
`
`19, 2014, for “distilled spirits”; and
`
`FIREFLY MOONSHINE LIGHT IT UP! (U.S. Reg. No. 4,846,403), issued on
`
`November 3, 2015, for “distilled spirits”
`
`(collectively, Firefly’s “FIREFLY Marks”).
`
`2. Since at least as early as 2006, Firefly has promoted and sold in commerce
`
`FIREFLY-branded alcoholic beverage products. By virtue of its efforts and the excellence of the
`
`underlying products, the public has come to know, rely on, and recognize Firefly’s FIREFLY
`
`Marks as source identifiers for Firefly’s alcoholic beverage products. Firefly has gained valuable
`
`reputation and a substantial amount of goodwill through the use and recognition of its Marks.
`
`3. On May 24, 2016, Applicant filed an application to register the mark FOSSIL FLY on
`
`an intent-to-use basis in connection with “[a]lcoholic beverages, except beer; [d]istilled [s]pirits;
`
`[g]in.”
`
`4. Firefly’s FIREFLY Marks have priority through use in commerce and/or filing dates
`
`that predate Applicant’s filing date of May 24, 2016.
`
`5. The alcoholic beverage products offered under Applicant’s Mark are likely to be
`
`confused with and mistaken for Firefly’s alcoholic beverages marketed under its FIREFLY
`
`Marks because Applicant’s Mark is similar to Firefly’s FIREFLY Marks in sight, sound,
`
`meaning, and commercial impression.
`
`
`
`6. Applicant’s Mark is intended for use in connection with products that overlap with
`
`and are highly related to products Firefly offers under its FIREFLY Marks, namely alcoholic
`
`beverages and distilled spirits.
`
`7. Upon information and belief, Applicant’s targeted customer base overlaps with the
`
`consumers of Firefly’s alcoholic beverages.
`
`8. As the description of goods in the application for Applicant’s Mark contains no
`
`restrictions or limitations as to Applicant’s channels of trade, Firefly may assume that
`
`Applicant’s Mark, like Firefly’s FIREFLY Marks, will be used in all accepted channels of trade.
`
`Therefore, in addition to overlapping consumer bases, Applicant’s intended channels of trade for
`
`its alcohol-based products overlap with channels of trade used by Firefly in marketing, selling,
`
`and otherwise distributing its alcohol-based products marketed under Firefly’s FIREFLY Marks.
`
`9. If Applicant is permitted to register Applicant’s Mark for the goods specified in the
`
`Application herein opposed, confusion resulting in damage and injury to Firefly would likely
`
`occur. Persons familiar with Firefly’s FIREFLY Marks would likely perceive Applicant’s
`
`products as associated or affiliated with or sponsored by Firefly when they are not.
`
`10. Firefly’s customers and the relevant public are likely to misapprehend Applicant’s
`
`Mark as a Firefly mark rather than a mark of Applicant and/or believe in error that goods offered
`
`under the Applicant’s Mark are offered by, in association with, or under license from Firefly or
`
`Firefly.
`
`11. Any defect, objection to, or fault found with Applicant’s goods marketed under
`
`Applicant’s FOSSIL FLY mark would necessarily reflect on and injure the reputation that Firefly
`
`has established for its alcoholic beverage products.
`
`
`
`12. Registration of Applicant’s Mark would give Applicant prima facie evidence of the
`
`validity and ownership of Applicant’s Mark and of Applicant’s exclusive right to use Applicant’s
`
`Mark, all to the detriment of Firefly.
`
`13. Wherefore, Firefly prays that this Opposition be sustained and that Application Serial
`
`No. 87/048,142 be denied and refused registration.
`
`
`
`
`
`
`
`
` COOLEY LLP
`
`Date: December 5, 2016
`
`
`
`
`
`
`
`
`
`
` By: _ /s/ Thomas M. Hadid
`
`
`Peter J. Willsey, Esq.
`
` Vincent J. Badolato, Esq.
`
`
`Thomas M. Hadid, Esq.
`
`
`1299 Pennsylvania Ave., NW
`
`
`Suite 700
`
` Washington, DC 20004
`
`
`(310) 883-6448
`Attorneys for Opposer
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 5, 2016, I mailed the foregoing NOTICE OF
`
`OPPOSITION regarding Firefly Distilling Company LLC v. New World Distillery to
`
`correspondent for Applicant by depositing a true and correct copy of the same with the United
`
`States Postal Service, first class mail, postage prepaid, in an envelope addressed to:
`
`
`Mr. Daniel Joseph Christopherson
`Lehrman Beverage Law, PLLC
`2911 Hunter Mill Rd, Suite 303
`Oakton, Virginia 22124
`
`
`
`Date: December 5, 2016
`
`
`
`
`
`
`
`
`By:
`
`
`_ /s/ Thomas M. Hadid
`Thomas M. Hadid
`
`
`
`
`
`
`
`139758112
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