Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA811035
`04/03/2017
`
`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
`
`GrubHub Holdings Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/05/2017
`
`1065 Avenue of the Americas
`New York, NY 10018
`UNITED STATES
`
`Jordan A. LaVine
`Flaster/Greenberg P.C.
`1835 Market StreetSuite 1050
`Philadelphia, PA 19103
`UNITED STATES
`jordan.lavine@flastergreenberg.com, linda.ladzenski@flastergreenberg.com
`Phone:215.279.9389
`
`Applicant Information
`
`Application No
`
`86730213
`
`Publication date
`
`12/06/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`04/03/2017
`
`Opposition Peri-
`od Ends
`
`04/05/2017
`
`GRUB 2 GATE LLC
`1320 SOUTH DIXIE HIGHWAY #241
`Coral Gables, FL 33146
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer application software for mobile
`phones and portable wireless devices, namely, software for use in searching, selecting, obtaining in-
`formation about, ordering, purchasing and delivering food,beverages and consumer goods from res-
`taurants, concessionaires and retailers atairports; Computer application softwarefor mobile phones
`and portable wirelessdevices, namely, software for use in distributing, managing and tracking food
`and beverage orders and consumer good orders, purchases and deliveries from restaurants, conces-
`sionaires and retailers atairports
`
`Applicant Information
`
`Application No
`
`86730220
`
`Publication date
`
`12/06/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`04/03/2017
`
`Opposition Peri-
`od Ends
`
`GRUB 2 GATE LLC
`1320 SOUTH DIXIE HIGHWAY #241
`Coral Gables, FL 33146
`
`

`

`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 039. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Food delivery and storage services; Con-
`sumer good delivery and storage services; Delivery of merchandise, duty free goods, food, parcels
`and goods
`
`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.
`
`2998028
`
`Registration Date
`
`09/20/2005
`
`Word Mark
`
`Design Mark
`
`GRUBHUB
`
`Application Date
`
`07/31/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2002/09/15 First Use In Commerce: 2003/04/01
`Advertising and commercial information services, via the internet
`
`U.S. Registration
`No.
`
`3980740
`
`Registration Date
`
`06/21/2011
`
`Application Date
`
`08/23/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`GRUBHUB.COM EATING MADE EASY
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized word "grubHub.com" in red above the stylized
`words "eating made easy" in light red.
`
`Class 035. First use: First Use: 2010/08/15 First Use In Commerce: 2010/08/15
`On-line advertising and marketing services
`
`U.S. Registration
`No.
`
`4278460
`
`Registration Date
`
`01/22/2013
`
`Application Date
`
`02/13/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`ORDERHUB POWERED BY GRUBHUB
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/01/25 First Use In Commerce: 2012/01/25
`Providing online non-downloadable software which allows member restaurants
`to manage customer order information using mobile devices; Computer software
`design and development in the fields of restaurant delivery/carryout, customer
`service and mobile applications, specifically design and development of software
`that retrieves orders, indicates order statuses, displays a selected order,
`changes order status of a selected order, and communicates order status up-
`dates to customers or a restaurant server where software adopts on mobile ap-
`pliances to monitor the point-of-sale system for updates to menu information,
`and to transmit updatedmenu information to restaurant servers coupled to a
`database storing menus
`
`U.S. Registration
`No.
`
`4278480
`
`Registration Date
`
`01/22/2013
`
`Application Date
`
`02/20/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`ORDERHUB POWERED BY GRUBHUB
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of words and letters in a stylized form without claim to color.
`
`Class 042. First use: First Use: 2012/02/08 First Use In Commerce: 2012/02/08
`Providing online non-downloadable software which allows member restaurants
`to manage customer order information using mobile devices; Computer software
`design and development in the fields of restaurant delivery/carryout, customer
`service and mobile applications, specifically design and development of software
`that retrieves orders, indicates order statuses, displays a selected order,
`changes order status of a selected order, and communicates order status up-
`dates to customers or a restaurant server where software adopts on mobile ap-
`pliances to monitor the point-of-sale system for updates to menu information,
`and to transmit updatedmenu information to restaurant servers coupled to a
`database storing menus
`
`U.S. Registration
`No.
`
`4279002
`
`Registration Date
`
`01/22/2013
`
`Word Mark
`
`Design Mark
`
`GRUBHUB
`
`Application Date
`
`05/25/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2005/08/31 First Use In Commerce: 2005/08/31
`Printed publications, namely, informational brochures, booklets, forms and flyers
`featuring information about how to advertise goods and services in the market-
`place; folders; stickers, namely, bumperstickers and decals for windows; coast-
`ers made of paper; coasters made of cardboard; document portfolios and docu-
`ment folders made of imitation leather; pens
`
`U.S. Registration
`No.
`
`4279207
`
`Registration Date
`
`01/22/2013
`
`Word Mark
`
`GRUBHUB
`
`Application Date
`
`06/01/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2007/05/31 First Use In Commerce: 2008/09/30
`Shirts; underwear; outerwear in the nature of rain wear
`
`U.S. Registration
`No.
`
`4363972
`
`Registration Date
`
`07/09/2013
`
`Word Mark
`
`Design Mark
`
`GRUBHUB
`
`Application Date
`
`10/25/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 2012/03/31 First Use In Commerce: 2012/03/31
`Cups and mugs
`
`U.S. Registration
`No.
`
`4368564
`
`Registration Date
`
`07/16/2013
`
`Word Mark
`
`Design Mark
`
`GRUBHUB
`
`Application Date
`
`12/12/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2004/09/01 First Use In Commerce: 2004/09/01
`Decorative magnets; downloadable software in the nature of mobile applica-
`tions,namely, software for use in facilitating the advertising and marketing of res-
`taurants to consumers, for accessing restaurant menus, for placing restaurant
`orders, for monitoring the status and/or location of restaurant orders, and for as-
`sisting restaurant delivery operators withmapping, planning, and tracking their
`orders, trips, and finances
`Class 042. First use: First Use: 2004/00/00 First Use In Commerce: 2004/00/00
`Providing websites featuring temporary use of non-downloadable software,
`namely, software for use in facilitating the advertising and marketing of restaur-
`ants to consumers, for accessing restaurant menus, for placing restaurant or-
`ders, formonitoring the status and/or location of restaurant orders, and for res-
`taurantsto manage customer order information
`
`U.S. Registration
`No.
`
`4616605
`
`Registration Date
`
`10/07/2014
`
`Application Date
`
`01/23/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`SEAMLESS PARTNERS WITH GRUBHUB
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "seamless" in the color white with the wording
`"partners" with "GrubHub" underneath the word "seamless" and in the color
`white, all of which appears within a red bone-like rectangular shape.
`
`Class 009. First use: First Use: 2014/02/12 First Use In Commerce: 2014/02/12
`Downloadable software in the nature of mobile applications, namely, software
`for use in facilitating the advertising and marketing of restaurants to con-
`sumers,for accessing restaurant menus, for placing restaurant orders, for monit-
`oring the status and/or location of restaurant orders, and for assisting restaurant
`delivery operators with mapping, planning, and tracking their orders, trips, and
`finances
`Class 035. First use: First Use: 2014/02/12 First Use In Commerce: 2014/02/12
`Computerized online ordering services in the field of restaurants and food; elec-
`tronic processing of restaurant and food orders for others; online ordering ser-
`vices featuring restaurants take-out andfood; online ordering services in the field
`of restaurant take-out and delivery; promoting and marketing the goods and ser-
`vices of others in the field of restaurants and food; administration of programs
`for enabling participants to obtain discounts on products and services in the field
`
`

`

`of restaurants and food; advertising services via the internet; providing con-
`sumer information, namely, ratings and reviews of restaurants and compilations
`of ratings and reviews of restaurants; on-line advertising and marketing services
`for restaurants, namely, social media, internet and mobile marketing; on-line ad-
`vertising and marketing services for restaurants, namely, social media, internet
`and mobile marketing; providing consumer information in the field of restaurants
`and food; providing consumer information via a global computer network in the
`field of restaurants and food; advertising services via the internet; providing con-
`sumer information, namely, ratings and reviews of restaurants and compilations
`of ratings and reviews of restaurants; customer service, namely responding to
`customer inquiries for others in the field of restaurant delivery and carry-out
`Class 041. First use: First Use: 2014/02/12 First Use In Commerce: 2014/02/12
`Blogs featuring news, information and commentary in the field of dining, restaur-
`ants and food; providing recognition and incentives by the way of awards and
`contests to demonstrate excellence in the fields of restaurants and food
`Class 042. First use: First Use: 2014/02/12 First Use In Commerce: 2014/02/12
`Providing websites featuring temporary use of non-downloadable software,
`namely, software for use in facilitating the advertising and marketing of restaur-
`ants to consumers, for accessing restaurant menus, for placing restaurant or-
`ders, formonitoring the status and/or location of restaurant orders, and for res-
`taurantsto manage customer order information; providing online non-
`downloadable software which allows member restaurants to manage customer
`order information using mobile devices; computer software design and develop-
`ment in the fields of restaurant delivery/carryout, customer service and mobile
`applications, specifically design and development of software that retrieves or-
`ders, indicates order statuses, displays a selected order, changes orderstatus of
`a selected order, and communicates order status updates to customers or a res-
`taurant server where software adopts on mobile appliances to monitor thepoint-
`of-sale system for updates to menu information, and to transmit updated menu
`information to restaurant servers coupled to a database storing menus; provid-
`ing online non-downloadable software which allows member restaurants to man-
`age customer order information using mobile devices
`
`Attachments
`
`78460059#TMSN.png( bytes )
`85113194#TMSN.png( bytes )
`85540888#TMSN.png( bytes )
`85547463#TMSN.png( bytes )
`85635406#TMSN.png( bytes )
`85640642#TMSN.png( bytes )
`85763034#TMSN.png( bytes )
`85800677#TMSN.png( bytes )
`86173223#TMSN.png( bytes )
`Grub Choice Opposition.pdf(22792 bytes )
`
`Signature
`
`/jordan lavine/
`
`Name
`
`Date
`
`Jordan A. LaVine
`
`04/03/2017
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`GRUBHUB HOLDINGS, INC.,
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
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`
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`
`
`GRUB 2 GATE LLC
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`
`Re: Application Serial Nos. 86730213 and 86730220
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`In the matter of trademark Application Serial Nos. 86730213 and 86730220, filed August 19,
`
`2015, and published for opposition in the Official Gazette of December 6, 2016, GrubHub Holdings,
`
`Inc. ("Opposer"), a Delaware corporation, having a business address of 1065 Avenue of the
`
`Americas, New York, NY 10018, UNITED STATES, believes that it will be damaged if registrations
`
`issue for the goods and services therein identified and hereby opposes the registration of said
`
`trademarks. The grounds for opposition are as follows:
`
`1.
`
`As evidenced by the publication of said marks in the Official Gazette of
`
`December 6, 2016, Applicant seeks to register GRUB CHOICE AND GRUB CHOICE (and
`
`design) as trademarks for the following goods and services in International Classes 9 and 39,
`
`respectively:
`
`Application Serial No. 86730213: Computer application software for mobile phones and
`portable wireless devices, namely, software for use in searching, selecting, obtaining
`information about, ordering, purchasing and delivering food, beverages and consumer
`goods from restaurants, concessionaires and retailers at airports; Computer application
`software for mobile phones and portable wireless devices, namely, software for use in
`distributing, managing and tracking food and beverage orders and consumer good orders,
`purchases and deliveries from restaurants, concessionaires and retailers at airports, Class
`9.
`
`Application Serial No. 86730220: Food delivery and storage services; Consumer good
`delivery and storage services; Delivery of merchandise, duty free goods, food, parcels and
`goods, Class 39.
`
`5155614 v1
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`

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`2.
`
`Opposer is the nation's leading online and mobile food ordering company
`
`dedicated to connecting diners with local takeout restaurants. Opposer’s online and mobile
`
`ordering platforms allow diners to order directly from approximately 30,000 takeout restaurants
`
`in more than 800 U.S. cities and London.
`
`3.
`
`Since at least as early as September, 2002, Opposer has used the mark and name
`
`GRUBHUB in connection with its business and related products and services. Opposer owns
`
`Registration Nos. 2,998,028, 3,980,740, 4,278,460, 4,278,480, 4,279,002, 4,279,207, 4,363,972,
`
`4,368,564, and 4,616,605 for its various products and services in the U.S. Patent and Trademark
`
`Office.
`
`4.
`
`Opposer’s GRUBHUB trademark is extremely well-known and is an extremely
`
`valuable asset of Opposer.
`
`5.
`
`Opposer’s GRUBHUB mark is inherently distinctive as used in connection with
`
`Opposer's products and services.
`
`6.
`
`Applicant seeks to register the marks GRUB CHOICE and GRUB CHOICE
`
`(and design) under Section 1(b) of the Lanham Act based upon Applicant’s bona fide intent to
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`use the marks in commerce.
`
`7.
`
`On information and belief, Applicant did not use the GRUB CHOICE and
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`GRUB CHOICE (and design) marks prior to the August 19, 2015 filing date of its trademark
`
`applications herein opposed.
`
`8.
`
`Opposer is the prior user of its GRUBHUB mark by virtue of its use of the mark
`
`in commerce since at least as early as September, 2002.
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`5155614 v1
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`9.
`
`The respective GRUBHUB mark and GRUB CHOICE and GRUB CHOICE
`
`(and design) marks are substantially similar in sight, sound and meaning. The respective marks
`
`start with the term “Grub” and end in a term that has the connotation of central location for
`
`obtaining food or food delivery services.
`
`10.
`
`Opposer's products and services and Applicant's products and services are
`
`extremely similar. Opposer is the leading online and mobile food delivery company in the
`
`United States. The products and services identified the opposed applications are the same or
`
`closely similar to Opposer’s products and services.
`
`11.
`
`Applicant’s applications are not restricted by trade channel. Applicant's product
`
`and services and Opposer's products and services are likely to be offered to an overlapping class
`
`of purchasers through the same and similar channels of trade.
`
`12.
`
`Applicant's GRUB CHOICE and GRUB CHOICE (and design) marks as used
`
`in connection with the goods and services identified in its applications so resemble Opposer's
`
`GRUBHUB mark that they are likely to cause confusion, mistake or deception.
`
`13.
`
`If Applicant is permitted to register the mark GRUB CHOICE and GRUB
`
`CHOICE (and design) for the goods and services identified in the applications herein opposed,
`
`confusion of the trade and public is likely to result, such confusion resulting in damage and
`
`injury to Opposer.
`
`14.
`
`Purchasers, potential purchasers and the relevant public, upon seeing Applicant's
`
`GRUB CHOICE and GRUB CHOICE (and design) marks used in connection with the goods
`
`and services identified in its applications would be likely to believe in error that such goods and
`
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`5155614 v1
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`

`

`
`services are provided in association or affiliation with or under the sponsorship of or license
`
`from Opposer.
`
`15.
`
`If Applicant is permitted to register its marks for the goods and services set forth
`
`in the applications herein opposed, persons familiar with the products and services of Opposer
`
`would be likely to purchase Applicant's goods and services as services sponsored by or produced
`
`in affiliation with or under the sponsorship of Opposer. Furthermore, any defect, objection to or
`
`fault found with Applicant's goods and services provided under its marks would necessarily
`
`reflect on and seriously injure the reputation that Opposer has established for its products and
`
`services under the GRUBHUB mark.
`
`16.
`
`If Applicant is granted a registration for the marks herein opposed, it would obtain
`
`thereby at least a prima facie exclusive right to use the marks. Such registrations would be sources of
`
`damage and injury to Opposer and Opposer's customers.
`
`
`
`WHEREFORE, Opposer prays that registration of the marks of Application Serial Nos.
`
`86730213 and 86730220 be refused and that this opposition be sustained.
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`April 3, 2016
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`5155614 v1
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`Respectfully submitted,
`
`FLASTER/GREENBERG P.C.
`
`
`
`Jordan A. LaVine
`Alexis K. Arena
`Eric Clendening
`1835 Market Street, Suite 1050
`Philadelphia, PA 19103
`215.279-9389
`
`ATTORNEYS FOR OPPOSER
`
`