Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA907134
`07/03/2018
`
`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
`
`Perdue Foods LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/04/2018
`
`31149 Old Ocean City Road
`Salisbury, MD 21804
`UNITED STATES
`
`REBECCA LIEBOWITZ
`VENABLE LLP
`PO BOX 34385
`WASHINGTON, DC 20043
`UNITED STATES
`Email: trademarkdocket@venable.com, rliebowitz@venable.com,
`cmitros@venable.com, pjmiles@venable.com
`Phone: 2023444976
`
`Applicant Information
`
`Application No
`
`79199451
`
`Publication date
`
`03/06/2018
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`07/03/2018
`
`1215629
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`07/04/2018
`
`04/22/2014
`
`AUSNUTRIA DAIRY CHINA CO., LTD
`No. 2 Wangwang East Road,
`Hexi, Changsha ??
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Intravenous fluids used for rehydration, nu-
`trition and the delivery of pharmaceutical preparations; food for babies; powdered milk for babies;
`mosquito-repellent incense; baby diapers; breast-nursingpads; sanitary sterilizing preparations; anti-
`infective products for veterinaryuse
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Meat; processed fish; fruit pulp; soya milk;
`milk products excluding ice cream,ice milk and frozen yogurt; cows' milk;cooking oil; prepared nuts;
`tofu-based snacks
`
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Tea; royal jelly for food purposes; farin-
`aceous food pastes for human consumption; noodles; rice-based snack food; ice cream; condiment,
`namely, pepper sauce
`
`

`

`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.
`
`5256543
`
`Registration Date
`
`08/01/2017
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`11/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "PERDUE" in white lettering with yellow shading
`and a yellow horizontal line underneath with white shading all within a blue rect-
`angle design that is outlined in white.
`
`Class 029. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`Prepared entrees consisting primarily of poultry
`
`U.S. Registration
`No.
`
`5256537
`
`Registration Date
`
`08/01/2017
`
`Word Mark
`
`PERDUE
`
`Application Date
`
`11/14/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "PERDUE" with a horizontal line underneath with-
`ina rectangle design.
`
`Class 029. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`Prepared entrees consisting primarily of poultry
`
`U.S. Registration
`No.
`
`5256536
`
`Registration Date
`
`08/01/2017
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`11/14/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`Prepared entrees consisting primarily of poultry
`
`Application Date
`
`06/29/2015
`
`Foreign Priority
`Date
`
`NONE
`
`U.S. Registration
`No.
`
`5006053
`
`Registration Date
`
`07/26/2016
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 036. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`
`

`

`providing grants to organizations and programs focusing on education, agricul-
`ture, the environment, health and social services, public safety and fighting hun-
`ger and poverty
`
`U.S. Registration
`No.
`
`4886035
`
`Registration Date
`
`01/12/2016
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`06/29/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "PERDUE" with a horizontal line underneath with-
`ina rectangle design.
`
`Class 036. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`providing grants to organizations and programs focusing on education, agricul-
`ture, the environment, health and social services, public safety and fighting hun-
`ger and poverty
`
`U.S. Registration
`No.
`
`4709700
`
`Registration Date
`
`03/24/2015
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`11/14/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2014/11/12 First Use In Commerce: 2014/11/12
`Stock, Chicken stock, broth, soups
`
`U.S. Registration
`No.
`
`4709699
`
`Application Date
`
`11/14/2013
`
`Registration Date
`
`03/24/2015
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`PERDUE
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "PERDUE" with a horizontal line underneath with-
`ina rectangle design.
`
`Class 029. First use: First Use: 2014/11/12 First Use In Commerce: 2014/11/12
`Stock, Chicken stock, broth, soups
`
`U.S. Registration
`No.
`
`4709693
`
`Registration Date
`
`03/24/2015
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`11/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the term "PERDUE" in white lettering with yellow shading
`and a yellow horizontal line underneath with white shading all within a blue rect-
`angle design that is outlined in white.
`
`Class 029. First use: First Use: 2014/11/12 First Use In Commerce: 2014/11/12
`Stock, Chicken stock, broth, soups
`
`

`

`U.S. Registration
`No.
`
`3677911
`
`Registration Date
`
`09/01/2009
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`01/19/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2008/03/05 First Use In Commerce: 2008/03/05
`Frozen entrees consisting primarily of meat or poultry
`
`U.S. Registration
`No.
`
`3608347
`
`Registration Date
`
`04/21/2009
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`05/05/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2005/00/00 First Use In Commerce: 2005/00/00
`edible oils
`
`U.S. Registration
`No.
`
`2357699
`
`Registration Date
`
`06/13/2000
`
`Word Mark
`
`PERDUE
`
`Application Date
`
`08/25/1999
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 1994/06/01 First Use In Commerce: 1994/06/01
`POULTRY
`
`U.S. Registration
`No.
`
`2311032
`
`Registration Date
`
`01/25/2000
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`09/01/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1998/03/27 First Use In Commerce: 1998/03/27
`PROVIDING INFORMATION REGARDING FOOD PRODUCTS, FOOD PRE-
`PARATION, FOOD STORAGE, RECIPES, AND THE POULTRY INDUSTRY
`VIA A GLOBAL COMPUTER NETWORK; RECIPE EXCHANGESERVICES,
`NAMELY, PROVIDING A WEBSITE FOR THE EXCHANGE OF FOOD RE-
`CIPES
`
`U.S. Registration
`No.
`
`2232432
`
`Registration Date
`
`03/16/1999
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`PERDUE
`
`NONE
`
`Application Date
`
`07/01/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Goods/Services
`
`Class 016. First use: First Use: 1975/01/00 First Use In Commerce: 1975/01/00
`
`

`

`Recipes and Recipe Booklets
`
`U.S. Registration
`No.
`
`2013952
`
`Registration Date
`
`11/05/1996
`
`Application Date
`
`01/05/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PERDUE
`
`NONE
`
`Class 025. First use: First Use: 1994/03/01 First Use In Commerce: 1994/03/01
`clothing, namely, shirts, hats, jackets, aprons and tee shirts
`
`U.S. Registration
`No.
`
`1931041
`
`Registration Date
`
`10/31/1995
`
`Application Date
`
`07/07/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PERDUE
`
`NONE
`
`Class 036. First use: First Use: 1986/06/30 First Use In Commerce: 1986/06/30
`trading in commodities for others, namely edible oil; grain, grain products andoil
`seeds; animal products and by-products; and chemical feed additives for agricul-
`tural use
`
`U.S. Registration
`No.
`
`1978243
`
`Registration Date
`
`06/04/1996
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`05/25/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of the term "PERDUE" with a horizontal line underneath with-
`ina rectangle design.
`
`Goods/Services
`
`Class 025. First use: First Use: 1993/09/15 First Use In Commerce: 1993/09/15
`
`

`

`clothing, namely shirts, uniforms, aprons, jackets, hats, lab coats, and sweat
`shirts
`
`U.S. Registration
`No.
`
`1916662
`
`Registration Date
`
`09/05/1995
`
`Application Date
`
`02/14/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PERDUE
`
`NONE
`
`Class 029. First use: First Use: 1968/00/00 First Use In Commerce: 1968/00/00
`poultry and parts thereof and processedmeats made from poultry and parts
`thereof
`
`U.S. Registration
`No.
`
`1923871
`
`Registration Date
`
`10/03/1995
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`07/05/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 1968/00/00 First Use In Commerce: 1968/00/00
`poultry and parts thereof and processedmeats made from poultry and parts
`thereof
`
`U.S. Registration
`No.
`
`1923865
`
`Registration Date
`
`10/03/1995
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`04/11/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 029. First use: First Use: 1987/09/09 First Use In Commerce: 1987/09/09
`poultry and parts thereof and processedmeats made from poultry and parts
`thereof
`
`U.S. Registration
`No.
`
`1923866
`
`Registration Date
`
`10/03/1995
`
`Word Mark
`
`Design Mark
`
`PERDUE
`
`Application Date
`
`04/11/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 1987/09/09 First Use In Commerce: 1987/09/09
`poultry and parts thereof and processedmeats made from poultry and parts
`thereof
`
`U.S. Registration
`No.
`
`1326205
`
`Registration Date
`
`03/19/1985
`
`Application Date
`
`06/08/1983
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PERDUE
`
`NONE
`
`Class 029. First use: First Use: 1983/04/04 First Use In Commerce: 1983/04/04
`CHICKEN BASED PROCESSED MEATS
`Class 042. First use: First Use: 1981/02/06 First Use In Commerce: 1981/02/06
`[ RESTAURANT SERVICES ]
`
`U.S. Registration
`No.
`
`1602592
`
`Registration Date
`
`06/19/1990
`
`Word Mark
`
`PERDUE
`
`Application Date
`
`09/25/1989
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 1968/00/00 First Use In Commerce: 1968/00/00
`CHICKEN AND TURKEY AND PARTS THEREOF
`
`U.S. Registration
`No.
`
`998551
`
`Registration Date
`
`11/19/1974
`
`Application Date
`
`01/21/1974
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`PERDUE
`
`NONE
`
`Class 029. First use: First Use: 1968/00/00 First Use In Commerce: 1968/00/00
`CHICKEN AND PARTS THEREOF
`
`86129518#TMSN.png( bytes )
`86119196#TMSN.png( bytes )
`86119124#TMSN.png( bytes )
`86677319#TMSN.png( bytes )
`86677337#TMSN.png( bytes )
`86975956#TMSN.png( bytes )
`86975955#TMSN.png( bytes )
`86975760#TMSN.png( bytes )
`78794477#TMSN.png( bytes )
`77465400#TMSN.png( bytes )
`75783931#TMSN.png( bytes )
`75546126#TMSN.png( bytes )
`74679881#TMSN.png( bytes )
`74545709#TMSN.png( bytes )
`74511310#TMSN.png( bytes )
`74511311#TMSN.png( bytes )
`Notice of Opposition - PUREDO - Application Serial No. 79199451.pdf(4048836
`bytes )
`
`Signature
`
`/Rebecca Liebowitz/
`
`Name
`
`Date
`
`REBECCA LIEBOWITZ
`
`07/03/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. ____________
`Serial No. 79/199451
`Mark: PUREDO
`
`)
`
`) )
`
`) ) )
`
`)
`)
`
`) )
`
`) )
`
`_______________________________________
`
`Perdue Foods LLC
`
`Opposer,
`
`v.
`
`Ausntria Dairy China Co., Ltd.
`
`Applicant.
`
`Attorney’s Reference: 29546-428286
`
`NOTICE OF OPPOSITION
`
`The application for
`
`registration of
`
`the trademark PUREDO (the “PUREDO
`
`Application”) filed by Ausnutria Dairy China Co., Ltd, a Chinese limited liability company,
`
`Application Serial No. 79/199451, covers the goods: “Intravenous fluids used for rehydration,
`
`nutrition and the delivery of pharmaceutical preparations; food for babies; powdered milk for
`
`babies; mosquito-repellent incense; baby diapers; breast-nursing pads; sanitary sterilizing
`
`preparations; anti-infective products for veterinary use” in Class 5, “Meat; processed fish;
`
`fruit pulp; soya milk; milk products excluding ice cream, ice milk and frozen yogurt; cows'
`
`milk; cooking oil; prepared nuts; tofu-based snacks” in Class 29 and “Tea; royal jelly for food
`
`purposes; farinaceous food pastes for human consumption; noodles; rice-based snack food;
`
`ice cream; condiment, namely, pepper sauce” in Class 30 (“PUREDO Mark”).
`
`The
`
`application was published for opposition in the Official Gazette on March 6, 2018. Perdue
`
`Foods LLC, a Maryland limited liability company (“Opposer”), believes that it will be
`
`damaged by registration of the mark shown in said Application Serial No. 79/199451 and
`
`

`

`hereby opposes the same.
`
`The USPTO records show the correspondence address as Hunan Huixin, Trademark
`
`Agency Co., Ltd, Room 504, No. 12 Building, Living Art City, No. 103, Hunan, China. The
`
`correspondence address does not list an email address.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Opposer is an industry-leading provider of protein and protein-based food
`
`products.
`
`2.
`
`Opposer
`
`is the owner of
`
`the following U.S. Registrations (the “Perdue
`
`Registrations”) for the mark PERDUE (U.S. Trademark Registration Nos. 5256543, 5256537,
`
`5256536, 5006053, 4886035, 4709700, 4709699, 4709693, 3677911, 3608347, 2357699,
`
`2311032, 2232432, 2013952, 1931041, 1978243, 1916662, 1923871, 1923865, 1923866,
`
`1326205, 1602592, 998551) (collectively, the “PERDUE Marks”). See Exhibit A.
`
`3.
`
`The PERDUE Marks cover the following food products and related services (the
`
`“Perdue Goods and Services”):
`
`Mark/Name
`
`Goods/Services
`
`PERDUE and
`Design
`
`PERDUE and
`Design
`
`Class 29: prepared entrees consisting primarily of poultry
`
`Class 29: prepared entrees consisting primarily of poultry
`
`PERDUE
`
`Class 29: prepared entrees consisting primarily of poultry
`
`PERDUE
`
`Class 36: providing grants to organizations and programs focusing
`on education, agriculture, the environment, health and social
`services, public safety and fighting hunger and poverty
`
`Reg. No./Serial No.
`
`RN: 5256543
`SN: 86129518
`
`RN: 5256537
`SN: 86119196
`
`RN: 5256536
`SN: 86119124
`
`RN: 5006053
`SN: 86677319
`
`

`

`Mark/Name
`
`Goods/Services
`
`Reg. No./Serial No.
`
`PERDUE and
`Design
`
`Class 36: providing grants to organizations and programs focusing
`on education, agriculture, the environment, health and social
`services, public safety and fighting hunger and poverty
`
`RN: 4886035
`SN: 86677337
`
`PERDUE
`
`Class 29: stock, chicken stock, broth, soups
`
`PERDUE and
`Design
`
`Class 29: stock, chicken stock, broth, soups
`
`RN: 4709700
`SN: 86975956
`
`RN: 4709699
`SN: 86975955
`
`PERDUE and
`Design
`
`Class 29: stock, chicken stock, broth, soups
`
`RN: 4709693
`SN: 86975760
`
`PERDUE
`
`Class 29: frozen entrees consisting primarily of meat or poultry
`
`PERDUE
`
`Class 29: edible oils
`
`PERDUE and
`Design
`
`Class 29: poultry
`
`PERDUE
`
`Class 42: providing information regarding food products, food
`preparation, food storage, recipes, and the poultry industry via a
`global computer network; recipe exchange services, namely,
`providing a website for the exchange of food recipes
`
`PERDUE
`
`Class 16: recipes and recipe booklets
`
`RN: 3677911
`SN: 78794477
`
`RN: 3608347
`SN: 77465400
`
`RN: 2357699
`SN: 75783931
`
`RN: 2311032
`SN: 75546126
`
`RN: 2232432
`SN: 75513456
`
`PERDUE
`
`PERDUE
`
`Class 25: clothing, namely, shirts, hats, jackets, aprons and tee
`shirts
`
`RN: 2013952
`SN: 75042648
`
`Class 36: trading in commodities for others, namely edible oil;
`grain, grain products and oil seeds; animal products and by-
`products; and chemical feed additives for agricultural use
`
`RN: 1931041
`SN: 74546681
`
`PERDUE and
`Design
`
`Class 25: clothing, namely shirts, uniforms, aprons, jackets, hats,
`lab coats, and sweat shirts
`
`RN: 1978243
`SN: 74679881
`
`

`

`Mark/Name
`
`Goods/Services
`
`Reg. No./Serial No.
`
`PERDUE
`
`Class 29: poultry and parts thereof and processed meats made from
`poultry and parts thereof
`
`RN: 1916662
`SN: 74489401
`
`PERDUE (Stylized) Class 29: poultry and parts thereof and processed meats made from
`poultry and parts thereof
`
`RN: 1923871
`SN: 74545709
`
`PERDUE and
`Design
`
`Class 29: poultry and parts thereof and processed meats made from
`poultry and parts thereof
`
`RN: 1923865
`SN: 74511310
`
`PERDUE and
`Design
`
`Class 29: poultry and parts thereof and processed meats made from
`poultry and parts thereof
`
`RN: 1923866
`SN: 74511311
`
`PERDUE
`
`Class 29: chicken based processed meats
`
`PERDUE
`
`Class 29: chicken and turkey and parts thereof
`
`PERDUE
`
`Class 29: chicken and parts thereof
`
`RN: 1326205
`SN: 73429264
`
`RN: 1602592
`SN: 73827216
`
`RN: 998551
`SN: 73011462
`
`3.
`
`4.
`
`Opposer filed Registration Number 5256543 on November 26, 2013.
`
`Opposer’s Registration Number 5256543 was in use in commerce at least as
`
`early as March 2013.
`
`5.
`
`6.
`
`Opposer filed Registration Number 5256537 on November 14, 2013.
`
`Opposer’s Registration Number 5256537 was in use in commerce at least as
`
`early as March 2013.
`
`Opposer filed Registration Number 5256536 on November 14, 2013.
`
`Opposer’s Registration Number 5256536 was in use at least as early as March
`
`7.
`
`8.
`
`2013.
`
`

`

`9.
`
`Opposer filed Registration Number 5006053 on June 29, 2015.
`
`10.
`
`Opposer’s Registration Number 5006053 was in use in commerce at least as
`
`early as March 2013.
`
`11.
`
`Opposer filed Registration Number 4886035 on June 29, 2015.
`
`12.
`
`Opposer’s Registration Number 4886035 was in use in commerce at least as
`
`early as March 2013.
`
`13.
`
`Opposer filed Registration Number 4709700 on November 14, 2013.
`
`14.
`
`Opposer’s Registration Number 4709700 was in use at
`
`least as early as
`
`November 12, 2014.
`
`15.
`
`Opposer filed Registration Number 4709699 on November 14, 2013.
`
`16.
`
`Opposer’s Registration Number 4709699 was in use in commerce at least as
`
`early as November 12, 2014.
`
`17.
`
`Opposer filed Registration Number 4709693 on November 26, 2013.
`
`18.
`
`Opposer’s Registration Number 4709693 was in use in commerce at least as
`
`early as November 12, 2014.
`
`19.
`
`Opposer filed Registration Number 3677911 on January 19, 2006.
`
`20.
`
`Opposer’s Registration Number 3677911 was in use at least as early as March
`
`5, 2008.
`
`21.
`
`Opposer filed Registration Number 3608347 on May 5, 2008.
`
`22.
`
`Opposer’s Registration Number 3608347 was in use in commerce at least as
`
`early as 2005.
`
`23.
`
`Opposer filed Registration Number 2357699 on August 25, 1999.
`
`

`

`24.
`
`Opposer’s Registration Number 2357699 was in use in commerce at least as
`
`early as June 1, 1994.
`
`25.
`
`Opposer filed Registration Number 2311032 on September 1, 1998.
`
`26.
`
`Opposer’s Registration Number 2311032 was in use at least as early as March
`
`27, 1998.
`
`27.
`
`Opposer filed Registration Number 2232432 on July 1, 1998.
`
`28.
`
`Opposer’s Registration Number 2232432 was in use in commerce at least as
`
`early as January 1975.
`
`29.
`
`Opposer filed Registration Number 2013952 on January 5, 1996.
`
`30.
`
`Opposer’s Registration Number 2013952 was in use in commerce at least as
`
`early as March 1, 1994.
`
`31.
`
`Opposer filed Registration Number 1931041 on July 7, 1994.
`
`32.
`
`Opposer’s Registration Number 1931041 was in use at least as early as June
`
`30, 1986.
`
`33.
`
`Opposer filed Registration Number 1978243 on May 25, 1995.
`
`34.
`
`Opposer’s Registration Number 1978243 was in use in commerce at least as
`
`early as September 15, 1993.
`
`35.
`
`Opposer filed Registration Number 1916662 on February 14, 1994.
`
`36.
`
`Opposer’s Registration Number 1916662 was in use in commerce at least as
`
`early as 1968.
`
`37.
`
`Opposer filed Registration Number 1923871 on July 5, 1994.
`
`38.
`
`Opposer’s Registration Number 1923871 was in use at least as early as 1968.
`
`39.
`
`Opposer filed Registration Number 1923865 on April 11, 1994.
`
`

`

`40.
`
`Opposer’s Registration Number 1923865 was in use in commerce at least as
`
`early as September 9, 1987.
`
`41.
`
`Opposer filed Registration Number 1923866 on April 11, 1994.
`
`42.
`
`Opposer’s Registration Number 1923866 was in use at
`
`least as early as
`
`September 9, 1987.
`
`43.
`
`Opposer filed Registration Number 1326205 on June 8, 1983.
`
`44.
`
`Opposer’s Registration Number 1326205 was in use in commerce at least as
`
`early as April 4, 1983.
`
`45.
`
`Opposer filed Registration Number 1602592 on September 25, 1989.
`
`46.
`
`Opposer’s Registration Number 1602592 was in use in commerce at least as
`
`early as 1968.
`
`47.
`
`Opposer filed Registration Number 998551 on January 21, 1974.
`
`48.
`
`Opposer’s Registration Number 998551 was in use at least as early as 1968.
`
`49.
`
`Applicant filed the PUREDO Application on July 1, 2016 based upon an
`
`International Registration.
`
`50.
`
`Opposer’s first use and filing dates for the Perdue Registrations listed above
`
`predate Applicant’s July 1, 2016 filing date, and predate the earliest date on which Applicant
`
`can rely, and thus Opposer’s rights are senior to those of Applicant.
`
`51.
`
`Applicant’s PUREDO Mark is confusingly similar to Opposer’s PERDUE
`
`Marks. As such, consumers will undoubtedly associate Applicant’s goods under the PUREDO
`
`Mark with the Perdue Goods and Services.
`
`52.
`
`Opposer's PERDUE Marks and Applicant's PUREDO Mark are highly similar in
`
`appearance, sound, connotation, and commercial impression.
`
`

`

`53.
`
`Opposer's PERDUE Marks and Applicant's PUREDO Mark are phonetic
`
`equivalents.
`
`54.
`
`Applicant’s PUREDO Mark may be pronounced PURE-DOO.
`
`55.
`
`The PERDUE Marks and PUREDO Mark each begin with the letter P.
`
`56.
`
`The PERDUE Marks and PUREDO Mark each have six letters.
`
`57. With the exception of the second E in the PERDUE Marks and the O in the
`
`PUREDO Mark, the marks have the same letters.
`
`58.
`
`The goods listed in the PUREDO Application for which Applicant seeks to
`
`register the mark PUREDO are identical to or substantially related to the Perdue Goods and
`
`Services
`
`59.
`
`Opposer believes and alleges that Applicant’s PUREDO Mark, when applied
`
`to the goods listed in Application Serial No. 79/199,451, is likely to cause confusion or
`
`mistake or to deceive and mislead the trade and purchasing public into believing that Opposer
`
`is (a) the source of the Applicant’s goods; (b) that Opposer sponsors, approves or endorses
`
`Applicant’s goods; (c) that Applicant is authorized, licensed to and/or controlled by Opposer;
`
`or (d) that Applicant is a division or subsidiary of, or in someway related to Opposer.
`
`60.
`
`Applicant’s PUREDO Mark “so resembles a mark registered in the Patent and
`
`Trademark Office, or a mark…previously used in the United States and not abandoned, as to
`
`be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake
`
`or to deceive.” 15 U.S.C §1052(d).
`
`61.
`
`For the reasons set forth in the foregoing paragraphs, Applicant is not entitled
`
`to register its PUREDO Mark and the application should be denied in accordance with
`
`Section 2(d) of the Lanham Act, 15 U.S.C §1052(d).
`
`

`

`62.
`
`Under Section 2 of the Lanham Act, 15 U.S.C. §1052, trademark applications
`
`may be opposed if the application is likely to cause dilution as set forth in Section 43(c) of the
`
`Lanham Act, 15 U.S.C. §1125(c).
`
`63.
`
`Opposer, its predecessors-in-interest and its licensees have used certain of the
`
`PERDUE Marks in interstate commerce for roughly fifty (50) years.
`
`64.
`
`Opposer, its predecessor-in-interest and its licensee, have advertised, promoted
`
`and marketed the Perdue Goods and Services under the PERDUE Marks throughout the
`
`United States and the world.
`
`65.
`
`By virtue of
`
`this extensive use, promotional activities and advertising,
`
`Opposer’s PERDUE Marks are famous.
`
`66.
`
`Upon information and belief, Opposer’s PERDUE Marks were famous prior to
`
`the earliest date that Applicant may rely on for its PUREDO Mark.
`
`67.
`
`Applicant’s PUREDO Mark trades off Opposer’s famous PERDUE Marks and
`
`dilutes or is likely to dilute the distinctive character of the PERDUE Marks.
`
`68.
`
`For the reasons set forth in the foregoing paragraphs, Applicant is not entitled
`
`to register its alleged mark and the application should be denied in accordance with Section
`
`43(c) of the Lanham Act, 15 U.S.C. §1125(c).
`
`69.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain
`
`at least a prima facie exclusive right to the use of its PUREDO Mark. Such registration would
`
`be a source of further damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that Application Serial No. 79/199451 be rejected, and
`
`that registration of Applicant’s PUREDO Mark shown and specified therein be refused and
`
`denied, and that this Opposition be sustained in favor of Opposer.
`
`

`

`This Notice of Opposition is submitted together with the statutory filing fee of $1200.00.
`
`Should any additional fee be required, please charge the same to our Account No. 22-0261 and
`
`notify the undersigned accordingly.
`
`Opposer appoints Rebecca Liebowitz and Catherine Mitros along with the law firm of
`
`Venable LLP, P.O. Box 34385, Washington, D.C. 20043-9998 to transact all business on its
`
`behalf in connection with this Opposition.
`
`Date: July 3, 2018
`
`Respectfully submitted,
`
`By:
`Rebecca Liebowitz, Esq.
`Catherine Mitros
`Venable LLP
`P.O. Box 34385
`Washington, D.C. 20043
`Telephone: (202) 344-4000
`Facsimile (202) 344-8300
`Attorney for Opposer
`
`

`

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` Exhibit A
`
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`
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`Record 1 out of 1
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`( Use the "Back" button of the Internet Browser to return to TESS)
`
`Word Mark
`
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Design Search
`Code
`
`PERDUE
`
`IC 029. US 046. G & S: Prepared entrees consisting primarily of poultry. FIRST USE: 20130300. FIRST USE IN
`COMMERCE: 20130300
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`26.11.21 - Rectangles that are completely or partially shaded
`26.17.13 - Letters or words underlined and/or overlined by one or more strokes or lines; Overlined words or letters;
`Underlined words or letters
`
`Serial Number
`
`86129518
`
`Filing Date
`
`November 26, 2013
`
`Current Basis
`
`1A
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`Registration
`Number
`
`NO FILING BASIS
`
`April 29, 2014
`
`5256543
`
`Registration Date August 1, 2017
`
`Owner
`
`Assignment
`Recorded
`
`Attorney of
`Record
`
`Prior
`Registrations
`
`Description of
`Mark
`
`(REGISTRANT) PERDUE FOODS LLC LIMITED LIABILITY COMPANY MARYLAND 31149 OLD OCEAN CITY
`ROAD SALISBURY MARYLAND 21804
`
`ASSIGNMENT RECORDED
`
`Rebecca A. Liebowitz
`
`0998551;4483675;AND OTHERS
`
`The color(s) blue, yellow and white is/are claimed as a feature of the mark. The mark consists of the term "PERDUE"
`in white lettering with yellow shading and a yellow horizontal line underneath with white shading all within a blue
`rectangle design that is outlined in white.
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`Live/Dead
`Indicator
`
`PRINCIPAL
`
`LIVE
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:hndlxo.2.1
`
`7/2/2018
`
`

`

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`
`Word Mark
`
`PERDUE
`
`Goods and Services IC 029. US 046. G & S: Prepared entrees consisting primarily of poultry. FIRST USE: 20130300. FIRST
`USE IN COMMERCE: 20130300
`
`Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`Design Search Code 26.11.21 - Rectangles that are completely or partially shaded
`26.17.13 - Letters or words underlined and/or overlined by one or more strokes or lines; Overlined words or
`letters; Underlined words or letters
`
`Serial Number
`
`86119196
`
`Filing Date
`
`November 14, 2013
`
`Current Basis
`
`1A
`
`Original Filing Basis 1B
`
`Published for
`Opposition
`
`April 29, 2014
`
`Registration Number 5256537
`
`Registration Date
`
`August 1, 2017
`
`Owner
`
`Assignment
`Recorded
`
`(REGISTRANT) PERDUE FOODS LLC LIMITED LIABILITY COMPANY MARYLAND 31149 OLD OCEAN
`CITY ROAD SALISBURY MARYLAND 21804
`
`ASSIGNMENT RECORDED
`
`Attorney of Record Rebecca A. Liebowitz
`
`Prior Registrations
`
`0998551;4483675;AND OTHERS
`
`Description of Mark Color is not claimed as a feature of the mark. The mark consists of the term "PERDUE" with a horizontal
`line underneath within a rectangle design.
`
`Type of Mark
`
`TRADEMARK
`
`Register
`
`PRINCIPAL
`
`Live/Dead Indicator LIVE
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:hndlxo.3.1
`
`7/2/2018
`
`

`

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`return to TESS)
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`
`Word Mark
`
`PERDUE
`
`Goods and Services
`
`IC 029. US 046. G & S: Prepared entrees consisting primarily of poultry. FIRST USE:
`20130300. FIRST USE IN COMMERCE: 20130300
`
`Standard Characters
`Claimed
`
`Mark Drawing Code
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`86119124
`
`Filing Date
`
`Current Basis
`
`Original Filing Basis
`
`Published for
`Opposition
`
`November 14, 2013
`
`1A
`
`1B
`
`April 29, 2014
`
`Registration Number 5256536
`
`Registration Date
`
`August 1, 2017
`
`Owner
`
`Assignment
`Recorded
`
`(REGISTRANT) PERDUE FOODS LLC LIMITED LIABILITY COMPANY MARYLAND 31149
`OLD OCEAN CITY ROAD SALISBURY MARYLAND 21804
`
`ASSIGNMENT RECORDED
`
`Attorney of Record
`
`Rebecca A. Liebowitz
`
`Prior Registrations
`
`0998551;4483675;AND OTHERS
`
`Type of Mark
`
`Register
`
`TRADEMARK
`
`PRINCIPAL
`
`Live/Dead Indicator
`
`LIVE
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:hndlxo.4.1
`
`7/2/2018
`
`

`

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`Word Mark
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`
`PERDUE
`
`IC 036. US 100 101 102. G & S: providing grants to organizations and programs focusing on
`education, agriculture, the environment, health and social services, public safety and fighting hunger
`and poverty. FIRST USE: 20130300. FIRST USE IN COMMERCE: 20130300
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`86677319
`
`Filing Date
`
`June 29, 2015
`
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`Opposition
`
`Registration
`Number
`
`1A
`
`1A
`
`May 10, 2016
`
`5006053
`
`Registration Date July 26, 2016
`
`Owner
`
`Attorney of
`Record
`
`Prior
`Registrations
`
`(REGISTRANT) Perdue Foods LLC LIMITED LIABILITY COMPANY MARYLAND 31149 Old Ocean
`City Road Salisbury MARYLAND 21804
`
`Rebecca Liebowitz
`
`4886035
`
`Type of Mark
`
`SERVICE MARK
`
`Register
`
`Live/Dead
`Indicator
`
`PRINCIPAL-2(F)
`
`LIVE
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:hndlxo.5.1
`
`7/2/2018
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`

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`
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`
`Mark Drawing
`Code
`
`Design Search
`Code
`
`PERDUE
`
`IC 036. US 100 101 102. G & S: providing grants to organizations and programs focusing on education,
`agriculture, the environment, health and social services, public safety and fighting hunger and poverty. FIRST
`USE: