Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA901562
`06/06/2018
`
`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
`
`OTG Experience, LLC
`06/06/2018
`
`1501 Lower State Road, Suite 102
`North Wales, PA 19454
`UNITED STATES
`
`Jordan A. LaVine
`Flaster/Greenberg P.C.
`1835 Market Street, Suite 1050
`Philadelphia, PA 19103
`UNITED STATES
`Email: tmdock@flastergreenberg.com, Jordan.lavine@flastergreenberg.com
`Phone: 215.279.9389
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87392252
`06/06/2018
`
`Publication date
`Opposition Peri-
`od Ends
`MARTINS DA COSTA & CIA LTDA.
`Rua OlÃ-via Guedes Penteado, nb. 375
`São Paulo - SP
`BRAZIL
`
`Goods/Services Affected by Opposition
`
`02/06/2018
`06/06/2018
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Toasted almonds; cookies; cakes; bon-
`bons; candy, namely caramel and chocolate; fruit jellies; Processed peanuts, namely, sweetened
`peanuts
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Ice creams; fruit jelly candy
`Class 043. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Cafeteria services; snack bar ser-
`vices;restaurant services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`
`ESTTA Tracking number:
`ESTTA901562
`06/06/2018
`
`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
`
`OTG Experience, LLC
`06/06/2018
`
`1501 Lower State Road, Suite 102
`North Wales, PA 19454
`UNITED STATES
`
`Jordan A. LaVine
`Flaster/Greenberg P.C.
`1835 Market Street, Suite 1050
`Philadelphia, PA 19103
`UNITED STATES
`Email: tmdock@flastergreenberg.com, Jordan.lavine@flastergreenberg.com
`Phone: 215.279.9389
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87392252
`06/06/2018
`
`Publication date
`Opposition Peri-
`od Ends
`MARTINS DA COSTA & CIA LTDA.
`Rua OlÃ-via Guedes Penteado, nb. 375
`São Paulo - SP
`BRAZIL
`
`Goods/Services Affected by Opposition
`
`02/06/2018
`06/06/2018
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Toasted almonds; cookies; cakes; bon-
`bons; candy, namely caramel and chocolate; fruit jellies; Processed peanuts, namely, sweetened
`peanuts
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Ice creams; fruit jelly candy
`Class 043. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Cafeteria services; snack bar ser-
`vices;restaurant services
`
`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.
`Registration Date
`
`4161420
`
`06/19/2012
`
`Word Mark
`Design Mark
`
`AN OTG EXPERIENCE
`
`Application Date
`
`12/15/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2010/11/30 First Use In Commerce: 2010/11/30
`Nut-based snack foods; Roasted nuts; Seasoned nuts; Shelled nuts; Flavored
`nuts; Snack mix consisting primarily of processed fruits, processed nuts and/or
`raisins; Snack mix consisting of dehydrated fruit and processed nuts; Snack mix
`consisting primarily of dehydrated fruits, processed nuts and also including ses-
`ame sticks; Snack mix consisting of primarily of processed nuts, seeds, dried
`fruit and also including chocolate; Trail mix consisting primarily of processed
`nuts, seeds, dried fruit and also including chocolate; Potato-based snack foods;
`Potato chips; Processed fruits; Fruit salads and vegetable salads; Salads,
`namely, garden and vegetable salads; Caesar salad;Pre-cut vegetable salad;
`Prepared entrees consisting primarily of vegetables, fruit salads and vegetable
`salads; and Yogurt
`Class 030. First use: First Use: 2010/11/30 First Use In Commerce: 2010/11/30
`Pretzels; Cookies; Candy; Candy bars; Chocolate covered nuts; Chocolate bars;
`Snack foods, namely, chocolate-based snack foods; Sandwiches; Sandwich
`wraps; Sushi; Pastries; and Muffins
`Class 032. First use: First Use: 2010/11/30 First Use In Commerce: 2010/11/30
`Fruit drinks and fruit juices; Fruit juice; and Fruit juices, namely, grapefruit juice;
`and Orange juice
`
`U.S. Registration
`No.
`Registration Date
`
`4003677
`
`07/26/2011
`
`Word Mark
`
`OTG
`
`Application Date
`
`06/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the letters "OTG" in the color orange and in a stylized font.
`
`Class 009. First use: First Use: 2010/09/21 First Use In Commerce: 2010/09/21
`Downloadable software in the nature of a mobile application for ordering food,
`beverages and other products in airports, obtaining real-time information relating
`to flight departures, and accessing and engaging personal concierge services
`that allow the user to engage personal shopping services, make restaurant re-
`servations, arrange for the delivery of food, beverages and other items to pas-
`sengerwaiting areas, make personal and preferred service arrangements and
`appointments, and make arrangements to meet customer-specific needs related
`to travel
`
`U.S. Registration
`No.
`Registration Date
`
`4478386
`
`02/04/2014
`
`Word Mark
`Design Mark
`
`OTG DESIRE
`
`Application Date
`
`06/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/12/06 First Use In Commerce: 2013/12/06
`Downloadable software in the nature of a mobile application for ordering food,
`beverages and other products in airports, obtaining real-time information relating
`to flight departures, and accessing and engaging personal concierge services
`
`
`
`that allow the user to engage personal shopping services, make restaurant re-
`servations, arrange for the delivery of food, beverages and other items to pas-
`sengerwaiting areas, make personal and preferred service arrangements and
`appointments, and make arrangements to meet customer-specific needs related
`to travel
`
`U.S. Registration
`No.
`Registration Date
`
`4003676
`
`07/26/2011
`
`Word Mark
`Design Mark
`
`AN OTG EXPERIENCE
`
`Application Date
`
`06/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2010/09/21 First Use In Commerce: 2010/09/21
`Downloadable software in the nature of a mobile application for ordering food,
`beverages and other products in airports, obtaining real-time information relating
`to flight departures, and accessing and engaging personal concierge services
`that allow the user to engage personal shopping services, make restaurant re-
`servations, arrange for the delivery of food, beverages and other items to pas-
`sengerwaiting areas, make personal and preferred service arrangements and
`appointments, and make arrangements to meet customer-specific needs related
`to travel
`
`U.S. Registration
`No.
`Registration Date
`
`4313414
`
`04/02/2013
`
`Word Mark
`Design Mark
`
`OTG INTERACTIVE
`
`Application Date
`
`06/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/10/22 First Use In Commerce: 2008/10/22
`Downloadable software in the nature of a mobile application for ordering food,
`
`
`
`beverages and other products in airports, obtaining real-time information relating
`to flight departures, and accessing and engaging personal concierge services
`that allow the user to engage personal shopping services, make restaurant re-
`servations, arrange for the delivery of food, beverages and other items to pas-
`sengerwaiting areas, make personal and preferred service arrangements and
`appointments, and make arrangements to meet customer-specific needs related
`to travel
`
`U.S. Registration
`No.
`Registration Date
`
`4478385
`
`02/04/2014
`
`Word Mark
`Design Mark
`
`OTG MANAGEMENT
`
`Application Date
`
`06/04/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2013/12/12 First Use In Commerce: 2013/12/12
`Downloadable software in the nature of a mobile application for ordering food,
`beverages and other products in airports, obtaining real-time information relating
`to flight departures, and accessing and engaging personal concierge services
`that allow the user to engage personal shopping services, make restaurant re-
`servations, arrange for the delivery of food, beverages and other items to pas-
`sengerwaiting areas, make personal and preferred service arrangements and
`appointments, and make arrangements to meet customer-specific needs related
`to travel
`
`U.S. Registration
`No.
`Registration Date
`
`4481389
`
`02/11/2014
`
`Word Mark
`Design Mark
`
`OTG DESIRE
`
`Application Date
`
`05/12/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`
`
`Goods/Services
`
`Class 039. First use: First Use: 2013/12/06 First Use In Commerce: 2013/12/06
`The delivery of food, beverages and other items to passenger waiting areas
`Class 043. First use: First Use: 2013/12/06 First Use In Commerce: 2013/12/06
`Making restaurant reservations
`Class 045. First use: First Use: 2013/12/06 First Use In Commerce: 2013/12/06
`Concierge services for others comprising of personal shopping services and
`making other requested personal and preferred service arrangements and ap-
`pointments and providing customer-specific information to meet individual needs
`rendered together in an airport and to travelers
`
`U.S. Registration
`No.
`Registration Date
`
`2908809
`
`12/07/2004
`
`Word Mark
`Design Mark
`
`OTG MANAGEMENT
`
`Application Date
`
`12/12/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 1999/05/06 First Use In Commerce: 1999/05/06
`operation and management of restaurantsand bars for others
`
`U.S. Registration
`No.
`Registration Date
`
`3583951
`
`03/03/2009
`
`Word Mark
`Design Mark
`
`AN OTG EXPERIENCE
`
`Application Date
`
`05/09/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 043. First use: First Use: 2008/10/22 First Use In Commerce: 2008/10/22
`
`
`
`Restaurant and bar services
`
`U.S. Registration
`No.
`Registration Date
`
`3498678
`
`09/09/2008
`
`Word Mark
`Design Mark
`
`OTG
`
`Application Date
`
`02/06/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the letters "OTG" in the color orange and in a stylized font.
`
`Class 035. First use: First Use: 2007/01/18 First Use In Commerce: 2007/01/18
`operation and management of restaurants, bars, markets, bakeries, cafes, cafet-
`erias, food courts, lounges, snack bars, kiosks and other retail food and bever-
`age concepts for others; operation and management of food and beverage and
`other retail stores for others featuring touch screen ordering, computers, internet
`andinformation technology equipment
`
`U.S. Registration
`No.
`Registration Date
`
`3670503
`
`08/18/2009
`
`Word Mark
`Design Mark
`
`AN OTG EXPERIENCE
`
`Application Date
`
`05/14/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2008/10/22 First Use In Commerce: 2008/10/22
`Audio recordings featuring music; multi-function tables and seating in the nature
`of interactive computer kiosks comprised of computers and display screens that
`allow users waiting at gates or other holding areas in venues such as airports,
`train stations, and bus depots to place purchase orders for food, beverages and
`other products for delivery to the holding area, access the Internet, rechargeand
`connect mobile phones, personal digital assistants, computers and other elec-
`tronic devices to the kiosk, obtain real time information relating to flight, train and
`
`
`
`bus departure times, and communicate with others connected to a kiosk
`Class 035. First use: First Use: 2008/10/22 First Use In Commerce: 2008/10/22
`Operation and management of restaurants, bars, food and beverage markets,
`bakeries, cafes, cafeterias, food courts, cocktail lounges, snack bars, kiosks and
`other retail food and beverage concepts for others; operation and management
`of retail stores for others featuring food and beverages; operation and manage-
`ment ofretail stores for others featuring touch screen ordering, computers, and
`internet and information technology equipment;supermarkets featuring food and
`beverages; bakeries, namely, retail bakery shops and take-out bakery services
`Class 043. First use: First Use: 2008/10/22 First Use In Commerce: 2008/10/22
`Restaurant and bar services; cafes; cafeterias; cocktail lounges; snack bars
`
`U.S. Registration
`No.
`Registration Date
`
`3737663
`
`01/12/2010
`
`Word Mark
`Design Mark
`
`OTG INTERACTIVE
`
`Application Date
`
`04/24/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the letters "O","T","G" with the word "Interactive" below it.
`
`Class 035. First use: First Use: 2009/10/26 First Use In Commerce: 2009/10/26
`Management and operation of retail stores and kiosks for others featuring com-
`puters and information technology equipment at airports
`
`U.S. Registration
`No.
`Registration Date
`
`3511478
`
`10/07/2008
`
`Word Mark
`
`OTG MANAGEMENT
`
`Application Date
`
`02/13/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the capital letters "OTG" in the color orange and in a styl-
`ized font appearing above the word Management in lowercase letters.
`Class 035. First use: First Use: 2007/07/01 First Use In Commerce: 2007/07/01
`operation and management of restaurants, bars, markets, bakeries, cafes, cafet-
`erias, food courts, lounges, snack bars, kiosks and other retail food and bever-
`age concepts for others; operation and management of food and beverage and
`other retail stores for others featuring touch screen ordering, computers, internet
`andinformation technology equipment
`
`Attachments
`
`85495935#TMSN.png( bytes )
`85054933#TMSN.png( bytes )
`85054932#TMSN.png( bytes )
`85054930#TMSN.png( bytes )
`85054929#TMSN.png( bytes )
`85054928#TMSN.png( bytes )
`85036576#TMSN.png( bytes )
`78340130#TMSN.png( bytes )
`77176146#TMSN.png( bytes )
`77389716#TMSN.png( bytes )
`77474328#TMSN.png( bytes )
`77457090#TMSN.png( bytes )
`77395508#TMSN.png( bytes )
`OTG Opposition.pdf(100191 bytes )
`
`Signature
`Name
`Date
`
`/jordan lavine/
`Jordan A. LaVine
`06/06/2018
`
`
`
`OTG EXPERIENCE, LLC,
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MARTINS DA COSTA & CIA LTDA,
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Re: Application Serial No. 87392252
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`NOTICE OF OPPOSITION
`
`In the matter of trademark Application Serial No. 87392252 filed March 30, 2017, and
`
`published for opposition in the Official Gazette of February 6, 2018, OTG Experience, LLC.
`
`("Opposer"), a Delaware limited liability company having a business address of 1501 Lower
`
`State Road, Suite 102, North Wales, Pennsylvania 19454, believes that it will be damaged if a
`
`registration issues for the goods and services therein identified and hereby opposes the
`
`registration of said trademark. The grounds for opposition are as follows:
`
`1.
`
`Applicant seeks to register "OTG OFNERTOGO (and design)” as a trademark for
`
`various food and snack products and restaurant/cafeteria services identified in International
`
`Classes 29, 30 and 43, as evidenced by the publication of said mark in the Official Gazette of
`
`February 6, 2018.
`
`2.
`
`Opposer is a restaurateur that operates more than 300 restaurants and retail
`
`concepts across North America. In 2016 and 2014, Opposer ranked among the World’s 50 Most
`
`Innovative Companies by Fast Company magazine
`
`3.
`
` Opposer has used in commerce the trademark and name “OTG” as a house mark
`
`in connection with its restaurant services and retail concepts, and various other aspects of its
`
`
`
`business, since at least as early as May 6, 1999. More specifically, in addition to using the
`
`“OTG” mark in commerce with its restaurant services and retail concepts, Opposer uses the
`
`“OTG” mark on branded food products sold in Opposer’s stores and in connection with
`
`Opposer’s innovative technology solutions that it develops for its customers.
`
`4.
`
`Since the time it first used the “OTG” trademark in commerce, OTG has adopted
`
`and used in commerce various other trademarks that contain the letters “OTG,” e.g., “An OTG
`
`Experience,” “OTG Experience,” “OTG Desire,” “OTG Interactive,” and “OTG Desire.” As a
`
`result, Opposer has developed a “family of marks” around its “OTG” trademark.
`
`5.
`
`Opposer owns numerous trademark registrations in the U.S. Patent and
`
`Trademark Office that include its “OTG” trademark and that identify the products and services
`
`described in the prior paragraphs, including Reg. Nos. 4,161,420, 4,003,677, 4,478,386,
`
`4,003,676, 4,313,414, 3,478,385, 4,481,389, 3,483,951, 3,498,678, 3,670,503, and 3,737,663.
`
`6.
`
`As a result of Opposer’s exclusive and continuous use of its “OTG” trademarks
`
`since at least as early as May 6, 1999, as described above, the “OTG” trademark has become
`
`well known and constitutes an extremely valuable asset of Opposer.
`
`7.
`
`Opposer’s "OTG trademark is inherently distinctive as used in connection with
`
`Opposer's restaurant and bar services, and for all of its related products and services identified in
`
`its pleaded registrations.
`
`8.
`
`Applicant bases its application to register its “OTG OFNERTOGO (and Design)”
`
`trademark based upon its intent to use the mark in commerce.
`
`9.
`
`On information and belief, Applicant did not use the “OTG OFNERTOGO (and
`
`Design)”mark prior to the March 17, 2017 filing date of its intent to use trademark application,
`
`so Opposer’s priority cannot be disputed.
`
`
`
`10.
`
`The respective marks are nearly identical in sight, sound and meaning. The
`
`respective marks each contain the dominant term “OTG.” While Applicant’s mark also contains
`
`the wording “OFNERTOGO” and a slight logo component, the wording and logo is subservient
`
`to the dominant letters “OTG” and appears in a much smaller font. The design component
`
`contained in Applicant’s mark also does not make the letters “OTG” in Applicant’s any less
`
`dominant.
`
`11.
`
`Opposer's products and services and Applicant's products and services are
`
`identical.
`
`12.
`
`To the extent Applicant’s application is not restricted by trade channel,
`
`Applicant's goods and services and Opposer's goods and services are likely to be offered to an
`
`overlapping class of purchasers through the same and similar channels of trade.
`
`13.
`
`Applicant's "“OTG OFNERTOGO (and Design)” mark as used in connection
`
`with the goods and services identified in its application so resembles Opposer's "OTG" marks as
`
`used in connection with the goods and services identified in Opposer’s registrations that it is
`
`likely to cause confusion, mistake or deception.
`
`14.
`
`If Applicant is permitted to register the mark "“OTG OFNERTOGO (and
`
`Design)” for the goods and services identified in the application herein opposed, confusion of the
`
`trade and public is likely to result, such confusion resulting in damage and injury to Opposer.
`
`15.
`
`Purchasers, potential purchasers and the relevant public, upon seeing Applicant's
`
`"“OTG OFNERTOGO (and Design)” mark used in connection with the goods and services
`
`identified in its application would be likely to believe in error that such goods and services are
`
`provided in association or affiliation with or under the sponsorship of or license from Opposer.
`
`
`
`16.
`
`If Applicant is permitted to register its mark for the goods and services set forth in
`
`the application herein opposed, persons familiar with the goods and services of Opposer would
`
`be likely to purchase Applicant's goods and services as goods 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 sold under its mark would necessarily reflect on
`
`and seriously injure the reputation that Opposer has established for its goods and services under
`
`its "OTG" marks.
`
`17.
`
`If Applicant is granted a registration for the mark herein opposed, it would obtain
`
`thereby at least a prima facie exclusive right to use the mark. Such registration would be a
`
`source of damage and injury to Opposer and Opposer's customers.
`
`WHEREFORE, Opposer prays that registration of the mark of Application Serial No.
`
`87392252 be refused and that this opposition be sustained.
`
`
`
`
`
`
`
`
`
`
`
`June 6, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FLASTER GREENBERG P.C.
`
`
`
`
`
`
`Jordan A. LaVine
`Alexis Arena
`1835 Market Street, Suite 1050
`Philadelphia, PA 19103-7086
`215.279-9389
`
`ATTORNEYS FOR OPPOSER
`
`
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