Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA826334
`06/12/2017
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`MPP Co., Inc.
`
`06/17/2017
`
`8500 Shawnee Mission Parkway, Suite 200
`Merriam, KS 66202
`UNITED STATES
`
`Austin Padgett
`Troutman Sanders LLP
`600 Peachtree St. NE, Suite 5200
`Atlanta, GA 30308
`UNITED STATES
`trademarks@troutmansanders.com, austin.padgett@troutmansanders.com, mi-
`chael.hobbs@troutmansanders.com Phone:4048853155
`
`Applicant Information
`
`Application No
`
`87049703
`
`Publication date
`
`04/18/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`06/12/2017
`
`Opposition Peri-
`od Ends
`
`06/17/2017
`
`St. Jude Medical, Inc.
`One St. Jude Medical Drive
`St. Paul, MN 55117
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 010. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medical device, namely, lead electrode re-
`configuration feature sold as an integral component of a cardiac stimulation device
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3653561
`
`Registration Date
`
`07/14/2009
`
`Application Date
`
`07/02/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`MPP MECHANICAL PROTECTION PLAN
`
`
`ESTTA826334
`06/12/2017
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`MPP Co., Inc.
`
`06/17/2017
`
`8500 Shawnee Mission Parkway, Suite 200
`Merriam, KS 66202
`UNITED STATES
`
`Austin Padgett
`Troutman Sanders LLP
`600 Peachtree St. NE, Suite 5200
`Atlanta, GA 30308
`UNITED STATES
`trademarks@troutmansanders.com, austin.padgett@troutmansanders.com, mi-
`chael.hobbs@troutmansanders.com Phone:4048853155
`
`Applicant Information
`
`Application No
`
`87049703
`
`Publication date
`
`04/18/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`06/12/2017
`
`Opposition Peri-
`od Ends
`
`06/17/2017
`
`St. Jude Medical, Inc.
`One St. Jude Medical Drive
`St. Paul, MN 55117
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 010. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medical device, namely, lead electrode re-
`configuration feature sold as an integral component of a cardiac stimulation device
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3653561
`
`Registration Date
`
`07/14/2009
`
`Application Date
`
`07/02/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`MPP MECHANICAL PROTECTION PLAN
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "MPP" above the wording "MECHANICAL
`PROTECTIONPLAN" against a rectangle background next to a smaller rect-
`angle containing a highway design.
`
`Class 036. First use: First Use: 2008/04/01 First Use In Commerce: 2008/04/01
`PROVIDING EXTENDED WARRANTY SERVICE CONTRACTS IN THE FIELD
`OF AUTOMOBILES
`
`U.S. Registration
`No.
`
`3293950
`
`Registration Date
`
`09/18/2007
`
`Word Mark
`
`Design Mark
`
`MPP
`
`Application Date
`
`05/26/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 036. First use: First Use: 1979/00/00 First Use In Commerce: 1979/00/00
`PROVIDING EXTENDED WARRANTY SERVICE CONTRACTS IN THE FIELD
`OF AUTOMOBILES AND OTHER RECREATIONAL VEHICLES, NAMELY,
`SNOWMOBILES, ALL TERRAIN VEHICLES, PERSONAL WATERCRAFT,
`BOATS, JET BOATS, JET SKIS, YACHTS AND MOTORCYCLES
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`MPP
`
`warranty services and automotive protection plans
`
`
`
`Attachments
`
`77513884#TMSN.png( bytes )
`78894378#TMSN.png( bytes )
`MPP Notice of Opposition.pdf(163771 bytes )
`Exhibit A.pdf(455876 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Austin Padgett/
`
`Austin Padgett
`
`06/12/2017
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`MPP CO., INC.
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
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`
`
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`v.
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`ST. JUDE MEDICAL, INC.
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
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`)
`)
`)
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`)
`)
`)
`)
`)
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`)
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`
`
`Application Serial No. 87049703
`
`Mark: MPP
`
`Opposition No.
`
`___________
`
`NOTICE OF OPPOSITION
`
`Opposer MPP Co., Inc. (“Opposer”), for its Notice of Opposition against Application
`
`
`
`
`
`Serial No. 87049703 for the mark MPP, filed by St. Jude Medical, Inc. (“Applicant”), believes
`
`that it will be damaged by and thus opposes registration of the mark which is the subject matter
`
`of Application Serial No. 87049703. As grounds for opposition, Opposer alleges as follows:
`
`
`
`1.
`
`Opposer MPP is a Kansas corporation with a principal place of business located at
`
`8500 Shawnee Mission Parkway, Merriam, Kansas 66202.
`
`
`
`2.
`
`Upon information and belief, Applicant purports on the face of its application to
`
`be a corporation with a principal place of business located at One St. Jude Medical Drive, St.
`
`Paul, Minnesota 55117.
`
`
`
`3.
`
`Application No. 87049703 was published in the U.S. Patent and Trademark
`
`Office’s (“PTO”) Official Gazette on April 18, 2017. The current deadline to file an opposition
`
`is June 18, 2017. This Notice of Opposition is timely filed.
`
`
`
`4.
`
`Opposer provides a comprehensive selection of extended warranty services and
`
`other automotive protection plans that use the MPP mark.
`
`5.
`
`Opposer provides vehicle service contracts (frequently referred to as “extended
`
`
`31506073v1
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`warranties”), maintenance contracts, paintless dent repair, lease wear coverage, and more.
`
`6.
`
`In addition to the MPP mark, Opposer is the owner of the marks pictured below
`
`and designs and variations of the same for a variety of products and services (the “MPP Marks”),
`
`and it further owns the following incontestable federal trademark registrations incorporating the
`
`MPP Marks (hereinafter, collectively, “Opposer’s Marks”):
`
`Goods/Services
`(Int’l Class: 36)
`extended warranty service contracts in the field of
`automobiles
`
`(Int’l Class: 36)
`extended warranty service contracts in the field of
`automobiles and other recreational vehicles, namely,
`snowmobiles, all terrain vehicles, personal watercraft, boats,
`jet boats, jet skis, yachts and motorcycles
`
`Reg. No.
`
`3653561
`
`
`3293950
`
`
`
`
`
`7.
`
`By virtue of decades of use and the widespread sales and extensive advertising,
`
`Mark
`
`
`
`promotion, and sale of the products and services identified by Opposer’s Marks, Opposer’s
`
`Marks are well-known by and famous among the general public and in the relevant industries,
`
`are recognized and relied upon as identifying Opposer’s services and as distinguishing them
`
`from the products and services of others, and have come to represent and symbolize extremely
`
`valuable goodwill belonging exclusively to Opposer.
`
`
`
`8. Applicant is the owner of Application Serial No. 87049703 for the mark MPP filed
`
`with the PTO on May 25, 2016 (“Applicant’s Mark”). See Exhibit A. The goods covered in the
`
`subject application are medical devices, namely, lead electrode reconfiguration feature sold as an
`
`integral component of a cardiac stimulation device.
`
`
`
`9. Opposer has continuously and exclusively used Opposer’s Marks in interstate
`
`commerce in the United States and in the ordinary course of trade for services originating from
`
`
`31506073v1
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`2
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`
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`Opposer long prior to Applicant’s filing date for Applicant’s Mark with the PTO and Applicant’s
`
`claimed first use date.
`
`
`
`10.
`
`Opposer’s rights in Opposer’s Marks are superior to Applicant’s rights in
`
`Applicant’s Mark.
`
`
`
`11.
`
`Opposer’s Marks are distinctive and “famous marks” within the meaning of
`
`Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
`
`
`
`12.
`
`Opposer’s Marks became distinctive and famous prior to the filing date of
`
`Applicant’s application or any other date on which Applicant may seek to rely for purposes of
`
`priority.
`
`
`
`COUNT I
`
`18.
`
`All previous paragraphs are incorporated as though fully set forth herein.
`
`19.
`
`The use and registration of Applicant’s Mark is likely to cause confusion in the
`
`minds of the purchasing public and to cause the purchasing public to assume that the products
`
`identified by Applicant’s Mark are sold by Opposer or that such products originate with or are in
`
`some way connected to Opposer, which they are not, in violation of 15 U.S.C. §§ 1052(d) and
`
`1125(a).
`
`
`
`20.
`
`Use and registration of Applicant’s Mark will be injurious to Opposer in violation
`
`of Section 13 of the Trademark Act, 15 U.S.C. § 1063(a).
`
`
`
`
`
`COUNT II
`
`21.
`
`All previous paragraphs are incorporated as though fully set forth herein.
`
`22.
`
`The Opposer’s Marks are distinctive and were famous long prior to the filing of
`
`the Applicant’s Marks. Registration of Applicant’s Mark would grant Applicant rights to which
`
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`31506073v1
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`3
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`it is not entitled and would be inconsistent with the prior and established rights of Opposer in
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`Opposer’s Marks.
`
`23.
`
`The registration of Applicant’s Mark is likely to dilute the distinctiveness of the
`
`Opposer’s Marks by blurring the famous source-identifying power of Opposer’s Marks in
`
`violation of 15 U.S.C. § 1125(c).
`
`
`
`WHEREFORE, Opposer believes that it will be damaged by the registration of
`
`Applicant’s Mark and prays that Application No. 87049703 be refused, and that no registration
`
`be issued thereon to Applicant, and that this Opposition be sustained in favor of Opposer.
`
`This 12th day of June 2017.
`
`
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`
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`
`
`Respectfully submitted,
`
` TROUTMAN SANDERS LLP
`
`
`
`By:
`Michael D. Hobbs, Jr.
`Georgia Bar No. 358160
`Austin Padgett
`Ohio Bar No. 0085368
`
`
`
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`ATTORNEYS FOR OPPOSER
`
`
`
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`
`
`
`
`
`
`
`
`
`TROUTMAN SANDERS LLP
`600 Peachtree Street, N.E., Suite 5200
`Atlanta, Georgia 30308-2216
`Tel: (404) 885-3000
`trademarks@troutmansanders.com
`michael.hobbs@troutmansanders.com
`austin.padgett@troutmansanders.com
`
`
`31506073v1
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`4
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`CERTIFICATE OF SERVICE
`
`The foregoing was electronically filed with the Office, along with the correct fee.
`
`This 12th day of June 2017.
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`Austin Padgett
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`31506073v1
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`5
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`United States Patent and Trademark Office
`
`EXHIBIT A - PAGE 1
`
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`MPP
`
`Word Mark
`
`MPP
`
`Goods and
`Services
`Standard
`Characters Claimed
`
`IC 010. US 026 039 044. G & S: Medical device, namely, lead electrode reconfiguration feature sold as an
`integral component of a cardiac stimulation device
`
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`Serial Number
`87049703
`
`Filing Date
`Current Basis
`
`May 25, 2016
`1B
`
`| HOME | SITE INDEXI SEARCH | eBUSINESS | HELP | PRNACY POLICY
`
`Original Filing
`Basis
`
`Published for
`
`Opposition
`
`Owner
`
`1A
`
`April 18, 2017
`
`(APPLICANT) St. Jude Medical, Inc. CORPORATION MINNESOTA One St. Jude Medical Drive St. Paul
`MINNESOTA 55117
`
`Attorney of Record Steven M. Mitchell
`
`Type of Mark
`
`TRADEMARK
`
`PRINCIPAL
`Register
`Live/Dead Indicator LIVE
`
`
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