Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA886365
`03/28/2018
`
`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
`
`Safeguard Operations, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/04/2018
`
`3384 Peachtree Road NE4th Floor
`Atlanta, GA 30326
`UNITED STATES
`
`John M. Mueller
`Baker & Hostetler LLP
`312 Walnut Street, Suite 3200
`Cincinnati, OH 45202-4074
`UNITED STATES
`Email: bhipdocket@bakerlaw.com, jmueller@bakerlaw.com,
`jbowen@bakerlaw.com, skim@bakerlaw.com
`Phone: 513-929-3413
`
`Applicant Information
`
`Application No
`
`87485100
`
`Publication date
`
`12/05/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`03/28/2018
`
`Opposition Peri-
`od Ends
`
`04/04/2018
`
`R. C. L. Enterpirses LLC
`2161 Commercial Dr.
`Frankfort, KY 40601
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 039. First Use: 2016/01/01 First Use In Commerce: 2016/01/01
`All goods and services in the class are opposed, namely: Providing self-storage facilities for others
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3423313
`
`Registration Date
`
`05/06/2008
`
`Word Mark
`
`S
`
`Application Date
`
`08/26/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA886365
`03/28/2018
`
`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
`
`Safeguard Operations, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/04/2018
`
`3384 Peachtree Road NE4th Floor
`Atlanta, GA 30326
`UNITED STATES
`
`John M. Mueller
`Baker & Hostetler LLP
`312 Walnut Street, Suite 3200
`Cincinnati, OH 45202-4074
`UNITED STATES
`Email: bhipdocket@bakerlaw.com, jmueller@bakerlaw.com,
`jbowen@bakerlaw.com, skim@bakerlaw.com
`Phone: 513-929-3413
`
`Applicant Information
`
`Application No
`
`87485100
`
`Publication date
`
`12/05/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`03/28/2018
`
`Opposition Peri-
`od Ends
`
`04/04/2018
`
`R. C. L. Enterpirses LLC
`2161 Commercial Dr.
`Frankfort, KY 40601
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 039. First Use: 2016/01/01 First Use In Commerce: 2016/01/01
`All goods and services in the class are opposed, namely: Providing self-storage facilities for others
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3423313
`
`Registration Date
`
`05/06/2008
`
`Word Mark
`
`S
`
`Application Date
`
`08/26/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`The mark consists of a shaded or darkened silhouette of a man leaning back
`slightly and carrying a square box, the shape of the square box being outlined
`by a thin line and the interior space of the square box having no shading at all,
`with the exception of a shaded or darkened letter "S" depicted centered therein.
`
`Goods/Services
`
`Class 039. First use: First Use: 2005/03/00 First Use In Commerce: 2005/03/00
`Providing secure self storage facilities for lease to the public
`
`Attachments
`
`76645701#TMSN.png( bytes )
`Notice of Opposition - STORAGE PAL and Man Design.pdf(274804 bytes )
`Certificate of Registration - Exhibit A - Reg No. 3423313.pdf(25210 bytes )
`
`Signature
`
`/John M. Mueller/
`
`Name
`
`Date
`
`John M. Mueller
`
`03/28/2018
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Safeguard Operations, LLC,
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`v.
`
`R. C. L. Enterprises, LLC
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`In Re:
`
`87485100
`Serial No.:
`June 12, 2017
`Filed:
`Published: December 5, 2017
`Mark:
`STORAGE PAL SELF-STORAGE
`CENTER WWW.MYSTORAGEPAL.COM and Design
`
`Opposition No.:
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Safeguard Operations, LLC (“Safeguard” or “Opposer”), a limited liability
`
`company organized under the laws of Louisiana with a place of business at 3384 Peachtree
`
`Road, Fourth Floor, Atlanta, Georgia 30326, believes it will be damaged by registration of
`
`the STORAGE PAL SELF-STORAGE CENTER WWW.MYSTORAGEPAL.COM and
`
`Design designation, which is the subject of U.S. Trademark Application Serial No. 87485100,
`
`filed by R. C. L. Enterprises LLC (“Applicant”), a limited liability company organized under
`
`the laws of Kentucky, with a place of business at 2161 Commercial Dr., Frankfort, KY 40601,
`
`and thus hereby opposes the same.
`
`As grounds of opposition, it is alleged that:
`
`1. Opposer, Safeguard, is a well-known provider of self-storage facilities and
`
`related services throughout the United States.
`
`2. Since at least as early as 2005, and long prior to Applicant’s claimed dates of
`
`first use of the designation covered by the application herein opposed, Safeguard has
`
`
`
`offered for sale in U.S. commerce self-storage facilities and related services under its S and
`
`Design trademark
`
` (the “S and Design Mark”).
`
`3. Safeguard’s S and Design Mark is protected in the United States under U.S.
`
`Reg. No. 3,423,313, which registered with the USPTO on May 6, 2008 (the “S and Design
`
`Registration).
`
`4. Attached as Exhibit A is a printout from the electronic records of the United
`
`States Patent and Office of the certificate of registration for Opposer’s S and Design
`
`Registration. Said registration is valid, subsisting, in-force and incontestable in accordance
`
`with 15 U.S.C. §1065 and 1115(b).
`
`5.
`
`Since at least as early as 2005, and long prior to any alleged use by Applicant,
`
`Safeguard has advertised, promoted and offered for sale self-storage facilities and related
`
`services under the S and Design Mark. Accordingly, Opposer’s S and Design Mark has
`
`become well-known and well-established in connection with Opposer’s business, and the
`
`services offered thereunder.
`
`6.
`
`Consumers and the general public have come to rely upon and recognize the S
`
`and Design Mark as an exclusive trademark and source-identifier of Safeguard. Safeguard’s
`
`S and Design Mark is inherently distinctive and has come to represent and symbolize the
`
`valuable good will of Opposer.
`
`7.
`
`The application herein opposed, for the designation STORAGE PAL SELF-
`
`STORAGE CENTER WWW.MYSTORAGEPAL.COM and Design, was filed on June 12,
`
`2017 for “providing self-storage facilities for others” claiming a first use of January 1, 2016.
`
`
`
`2
`
`
`
`8.
`
` Safeguard has used its S and Design Mark in the United States since at least as
`
`early as 2005, well prior to the date of Applicant’s trademark application for the STORAGE
`
`PAL SELF-STORAGE CENTER WWW.MYSTORAGEPAL.COM and Design designation.
`
`9. Applicant’s STORAGE PAL SELF-STORAGE CENTER
`
`WWW.MYSTORAGEPAL.COM and Design designation is likely to be confused with
`
`Opposer’s S and Design Mark and S and Design Registration since Applicant’s services are
`
`identical to those of Opposer and Applicant’s designation prominently features a design
`
`element of a person carrying a box in essentially the same pose as the person depicted in
`
`Opposer’s S and Design Registration and S and Design Mark. Accordingly, Applicant’s use
`
`of this prominent feature in the opposed application will be likely to confuse consumers into
`
`believing that the services of Applicant are sponsored by, affiliated with, and/or endorsed by
`
`Opposer when they are not.
`
`10. Safeguard is likely to be damaged by Applicant’s registration of the STORAGE
`
`PAL SELF-STORAGE CENTER WWW.MYSTORAGEPAL.COM and Design designation
`
`sought by Applicant because such registration will give Applicant statutory rights in violation
`
`and derogation of Safeguard’s prior and superior rights.
`
`11. Accordingly, Applicant’s application for the STORAGE PAL SELF-STORAGE
`
`CENTER WWW.MYSTORAGEPAL.COM and Design designation should be refused
`
`registration pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the grounds
`
`that Applicant’s STORAGE PAL SELF-STORAGE CENTER
`
`WWW.MYSTORAGEPAL.COM and Design designation so closely resembles Safeguard’s S
`
`and Design Mark and S and Design Registration that, when used in connection with
`
`
`
`3
`
`
`
`Applicant’s services, is likely to cause confusion, to cause mistake, or to deceive, the relevant
`
`consuming public with consequent injury to Opposer, the trade, and such public.
`
`WHEREFORE, Safeguard prays that this Opposition be sustained and that Application
`
`Serial No. 87485100 be refused in its entirety.
`
`Date: March 28, 2018
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`BAKER & HOSTETLER LLP
`
`
`By:
`
`
`/John M Mueller/
`John M. Mueller, Esq.
`jmueller@bakerlaw.com
`312 Walnut Street
`Suite 3200
`Cincinnati, Ohio
`45202-4074
`Telephone: 513.929.3413
`Facsimile: 513.929.0303
`
`
`4
`
`
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`CERTIFICATE OF FILING
`
`
`
`
`
`I hereby certify that the foregoing Notice of Opposition was filed with the Commissioner
`
`for Trademarks, through the Electronic System for Trademark Trials and Appeals on this 28th
`
`day of March, 2018.
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`/John M Mueller/
`John M. Mueller
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing Notice of Opposition was served this 28th day of March
`
`2018, by first-class international mail, postage prepaid, upon Roger C. Lyon III, 2161
`
`Commercial Dr., Frankfort, Kentucky 40601, the correspondence address identified for
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`Applicant in the Trademark Trial and Appeals Board Inquiry System.
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`/John M Mueller /
`John M. Mueller
`
`5
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`Exhibit A
`Exhibit A
`
`
`6
`
`
`
`Int. CL: 39
`
`Prior U.S. Cls.: 100 and 105
`
`United States Patent and Trademark Office
`
`Reg. No. 3,423,313
`Registered May 6, 2008
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`SAFEGUARD OPERATIONS LLC {LOUISIANA
`LTD LIAB CO)
`111 VETERANS BLVD. SUITE 1008
`METAIRIE. LA 70005
`
`FOR: PROVIDING SECURE SELF STORAGE FA-
`CILITIES FOR LEASE TO THE PUBLIC. IN CLASS 39
`(U.S. CLS. 100 AND 105).
`
`FIRST USE 3-0—2005; IN COMMERCE 3-0-2005.
`THE MARK CONSISTS OF A SHADED OR DAR-
`KENED SILHOUETTE OF A MAN LEANTNG BACK
`
`SLIGHTLY AND CARRYING A SQUARE BOX. THE
`SHAPE OF THE SQUARE BOX BEING OUTLINED
`BY A THIN LINE AND THE INTERIOR SPACE OF
`THE SQUARE BOX HAVING NO SHADING AT
`ALL, WITH THE EXCEPTION OF A SHADED OR
`DARKENED LETTER "S" DEPICTED CENTERED
`THEREIN.
`
`SN 76-645,?01, FILED 8-26-2005.
`
`MARTHA FROMM. EXAMINING ATTORNEY
`
`
`
`7
`
`
`
`
`
`Int. CL: 39
`
`Prior U.S. Cls.: 100 and 105
`
`United States Patent and Trademark Office
`
`Reg. No. 3,423,313
`Registered May 6, 2008
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`
`
`SAFEGUARD OPERATIONS LLC (LOUISIANA
`LTD LIAB CO)
`111 VETERANS BLVD., SUITE 1008
`METAIRIE, LA 70005
`
`FOR: PROVIDING SECURE SELF STORAGE FA-
`CILITIES FOR LEASE TO THE PUBLIC, IN CLASS 39
`(US. CLS. 100 AND 105).
`
`SLIGHTLY AND CARRYING A SQUARE BOX, THE
`SHAPE OF THE SQUARE BOX BEING OUTLINED
`BY A THIN LINE AND THE INTERIOR SPACE OF
`THE SQUARE BOX HAVING NO SHADING AT
`ALL, WITH THE EXCEPTION OF A SHADED OR
`DARKENED LETTER "S" DEPICTED CENTERED
`THEREIN.
`
`FIRST USE 3-0-2005; IN COMMERCE 3-0-2005.
`
`SN 76-645,701, FILED 8-26-2005.
`
`THE MARK CONSISTS OF A SHADED OR DAR-
`KENED SILHOUETTE OF A MAN LEANING BACK
`
`MARTHA FROMM, EXAMINING ATTORNEY
`
`
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