Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA837804
`08/07/2017
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer Information
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`Name
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`Granted to Date
`of previous ex-
`tension
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`Address
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`Attorney informa-
`tion
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`OX ZION, LLC
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`08/05/2017
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`23811 Chagrin BlvdSuite 226
`Cleveland, OH 44122
`UNITED STATES
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`Adam M Runkle
`Starkey Law Firm, LLC
`638 W. MAPLE STREET
`HARTVILLE, OH 44632
`UNITED STATES
`Email: AMR@STARKEYLAWFIRM.COM
`Phone: 3304949077
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`Applicant Information
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`Application No
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`87178792
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`Publication date
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`06/06/2017
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`Opposition Filing
`Date
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`Applicant
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`08/07/2017
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`Opposition Peri-
`od Ends
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`08/05/2017
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`Centeva, LLC
`Jan Esplin
`10813 S River Front Pkwy #135
`South Jordan, UT 84095
`UNITED STATES
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`Goods/Services Affected by Opposition
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`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computer software used for team manage-
`ment and consolidation of tools, resources, information and communications acrossan organization
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`Grounds for Opposition
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`The mark is merely descriptive
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`Trademark Act Section 2(e)(1)
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`The mark is generic
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`Trademark Act Sections 1, 2 and 45
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`Attachments
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`Opposition.pdf(145702 bytes )
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`Signature
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`/s/ Adam M. Runkle
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`Name
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`Date
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`Adam M Runkle
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`08/07/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`OX ZION, LLC,
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` Plaintiff-Opposer
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`CENTEVA, LLC
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` Defendant-Applicant
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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` Serial No.: 87/178792
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` No. 91228807
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` Mark: OX Chat
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` Published: June 6, 2017
` Filing Date: September 21, 2016
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`NOTICE OF OPPOSITION
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` In the matter of Application Serial No. 87/178792 for the registration of “OX CHAT” in
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`International class 009 by CENTEVA, LLC (“Applicant”), which was published in the Official
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`Gazette on June 6, 2017 (“Application”. OZ ZION, LLC (“Opposer”) an Ohio limited liability
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`company, having a principal place of business at 23811 Chagrin Blvd, Suite 244, Beachwood,
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`Ohio 44122, after receiving an extension of time to file this notice, believes it will be damaged by
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`the registration and therefore opposes on the following grounds. Allegations with respect to
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`Opposer are based on knowledge. Allegations with respect to Applicant and third-parties are based
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`upon information and belief.
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`1.
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`Opposer is the owner of the OX ZION business operating system which allows
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`business leaders to represent, prioritize, guide and monitor their underlying business operational
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`scenarios. In the course of the promotion and provision of its business operating system, Opposer
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`uses various modules with prefix “ox” which stands for operational excellence.
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`2.
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`Applicant seeks to register its intent to use mark “OX Chat” in connection with
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`computer software used for team management and consolidation of tools, resources, information
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`and communications across an organization in International Class 009.
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`3.
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`Applicant is a Utah limited liability company having an address of 10813 S. River
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`Front Parkway, Suite 135, South Jordan, Utah, 84095.
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`4.
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`The opposed application Serial No. 87/178792 was filed on or about September 21,
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`2016 under Section 1(b) on an “intent to use” basis. No related Statement of Use or Allegation of
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`Use was filed before the US Trademark Office.
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`5.
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`It appears that Applicant disseminates information from a related or affiliated
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`website https://operationsxchange.com/#/#home, having a physical address the same as that of the
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`Applicant.
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`6.
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`The alleged mark is inherently generic for the designated category of goods and is
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`thus not registrable because the term “OX” is an abbreviation of the term “operational excellence”
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`meaning an optimization of operational processes for companies and organizations, and has been
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`used and is generally understood by the public in the context of operational process optimization,
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`in advertisements, and in trade publications. Adding the term “OX” to the word “chat” for which
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`Applicant make no claim of exclusive use, is simply an expansion of the generic term “OX.”
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`7.
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`For example, other companies in the industry use terms such as “OX Mail,” “OX
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`Contact,” OX Portal,” OX Calendar,” “OX Tasks,” OX Text, “OX Messenger” and the like. The
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`alleged mark is similar to such terms and as such it generic and not registrable because consumers
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`and the public, including other competitors, understand the term “OX” to refer to “Operational
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`Excellence” which is used to describe a wide field of operational process optimization.
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`8.
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`In the alternative, pursuant to 15 U.S.C. §1052(e)(1)the alleged mark is merely
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`description of the recited goods inasmuch as it describes and ingredient, quality, characteristic
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`function, feature, purpose, or use of the recited goods and has not acquired distinctiveness or
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`secondary meaning under Section 2(f) of the Trademark Act due to the fact that the alleged mar is
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`2
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`not adapted to distinguish and does not actually distinguish the goods with which it is allegedly
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`intended to be used, or in respect of which use may be alleged notwithstanding the Section 1(b)
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`status of the Application , from the goods utilized by the Opposer and/or other competitors and
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`suppliers in the industry in the provision of the Opposer’s services and/or a competitor’s goods
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`and/or services; “OX” is a commonly known acronym, initialism or shorthand for “operational
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`excellence” (i.e. the wording that OX stands for is merely descriptive of the goods, and/or the OX
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`acronym or initialism is readily understood by relevant purchasers to be “substantially
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`synonymous with the merely descriptive wording ‘operational excellence’ it representing); and/or
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`the common use of a chat feature related to operational excellence software and/or platforms as
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`evidenced by industry standards, marketing, advertising, sales, and/or other use by the Opposer
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`and/or other companies prior to Applicant’s filing date, and/or prior to any use of the alleged mark
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`by Applicant.
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`9.
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`If the Applicant is granted the registration herein opposed, it would thereby obtain
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`at lease a prima facie exclusive right to the use of the mark. Such registration would be a source
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`of damage and injury to Opposer and others in operational process optimization related industries,
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`and/or software industries who use the commonly accepted designation “OX” to indicate that a
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`specific feature or function is related to operational excellence, require Opposer and others in the
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`trade to abandon its or their use of “OX” or the like use and change any current or planned
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`promotional and advertising tactics, all to the great expense and detriment of Opposer and others
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`in the trade.
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`10.
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`As the Opposer (by itself and/or its related company/companies, or affiliates)
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`presently uses a chat/instant message function in connection with its operational excellence
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`platform, and as the recited products are within the normal expansion of Opposer’s business, the
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`3
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`Opposer has a direct and personal stake in the outcome of the proceeding.
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`11.
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`The Opposer has a direct and personal stake in the outcome of the proceeding as a
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`competitor to the Applicant who engages in the sale of similar or related products and/or related
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`services and because the products and/or related services in question are within the normal
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`expansion of the Opposer’s business.
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`WHEREFORE, Opposer prays that this opposition be sustained, that Application Serial
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`No. 87/178792 b rejected and denied and the mark applied-for therein be refused registration.
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`Payment in the amount of $300.00 is enclosed to cover the statutory filing fee.
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`Please recognize its attorney for Opposer in the proceeding Adam M. Runkle (a member
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`of the State Bar of Ohio) located at 638 W. Maple Street, Hartville, Ohio 44632. Please address
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`all communications to Adam M. Runkle at the address shown below.
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`Date: August 7, 2017
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`Respectfully submitted,
`STARKEY LAW FIRM, LLC
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`/s/ Adam M. Runkle ____________
`RONALD K. STARKEY #0059174
`rks@starkeylawfirm.com
`ADAM M. RUNKLE #0087949
`amr@starkeylawfirm.com
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`638 W. Maple Street
`Hartville, OH 44632
`Ph.
`330.494.9077
`Fax
`866.247.1855
`Attorney for Plaintiff, OX Zion, LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing was served by regular mail and email on
`this ____ day of August on the following:
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`Centeva, LLC
`Attn: Jan Esplin
`10813 S. River Front Pkwy, #135
`South Jordan, UT 84095
`Matthew.thomas@centeva.com
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`/s/ Adam M. Runkle
`Attorney for Defendant-Applicant
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`5
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