Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA943362
`12/21/2018
`
`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
`
`Ecolab USA Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`12/23/2018
`
`1 Ecolab Place
`St. Paul, MN 55102
`UNITED STATES
`
`Attorney informa-
`tion
`
`Scott W. Johnston
`Merchant & Gould P.C
`P.O. Box 2910
`Minneapolis, MN 55402-0910
`UNITED STATES
`ggolla@merchantgould.com, aavery@merchantgould.com, dockm-
`pls@merchantgould.com, sjohnston@merchantgould.com, slindemei-
`er@merchantgould.com
`612-332-5300
`
`Applicant Information
`
`Application No
`
`79223349
`
`Publication date
`
`06/26/2018
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`12/21/2018
`
`1380798
`
`Nanogate SE
`Zum Schacht 3
`66287 Quierschied
`FED REP GERMANY
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
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`12/23/2018
`
`10/26/2017
`
`Goods/Services Affected by Opposition
`
`Class 001. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: chemical preparations for use in industry;
`chemical spray preparations for stretching shoes; Chemical preparations for use in industry, namely,
`chemical compositions for use in waterproofing shoes
`
`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.
`
`1510625
`
`Registration Date
`
`11/01/1988
`
`Application Date
`
`03/23/1988
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`EMPIRE
`
`NONE
`
`Class 003. First use: First Use: 1987/10/00 First Use In Commerce: 1987/10/00
`OUTDOOR CLEANING PREPARATION FOR COMMERCIAL AND INSTITU-
`TIONAL USE IN CLEANING CONCRETE AND DRIVEWAYS
`
`Attachments
`
`2018 12 21 Notice of Opposition EMPIRE 79223349.pdf(146178 bytes )
`
`Signature
`
`/gcg/
`
`Name
`
`Date
`
`Gregory C. Golla
`
`12/21/2018
`
`

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`Ecolab USA Inc.,
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`v.
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`Nanogate SE,
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`Opposer,
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`Applicant.
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`Opposition No._________________
`
`Mark: EMPIRE and Design
`
`Serial No.: 79223349
`
`Filing Date: Oct. 26, 2017
`
`Publication Date: Jun. 26, 2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`NOTICE OF OPPOSITION
`
`Ecolab USA Inc. and its related companies (hereinafter “Opposer” or “Ecolab”), a
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`Delaware corporation, located at 1 Ecolab Place, St. Paul, Minnesota 55102, believes it will be
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`damaged by the registration of the mark shown in Application Serial No. 79223349, filed
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`October 26, 2017, by Nanogate SE (hereinafter “Applicant”), and hereby opposes registration of
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`the mark. The grounds for opposition are as follows:
`
`1.
`
`Applicant’s mark published for opposition on June 26, 2018 and Opposer extended
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`the time to oppose until December 23, 2018. This Notice of Opposition is timely filed.
`
`2.
`
`Applicant is seeking to register the mark EMPIRE and Design in connection with
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`“chemical preparations for use in industry; chemical spray preparations for stretching shoes;
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`Chemical preparations for use in industry, namely, chemical compositions for use in
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`waterproofing shoes” in International Class 1 and “shoe dyes; mordant dyes; dyestuffs” in
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`International Class 2 and “shoe black; shoe wax; shoe cream; shoe polish; shoe polish applicators
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`containing shoe polish; cleaning preparations for shoes; bleaching preparations for shoes for
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`household purposes” in International Class 3. Opposer is opposing the goods in International
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`Class 1.
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`3.
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`Ecolab is the leading global developer and marketer of premium cleaning,
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`sanitizing, chemical preparations and waste related products and services for a variety of
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`markets, including but not limited to the commercial, industry and institutional healthcare
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`markets.
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`4.
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`Since at least 1987, Ecolab has been using the trademark EMPIRE to identify and
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`promote its Outdoor cleaning preparation for commercial and institutional use in cleaning
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`concrete and driveways.
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`
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`5.
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`Ecolab USA Inc., owns the following incontestable registration for its EMPIRE
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`mark (collectively along with the common law usage referred to herein as "Opposer's EMPIRE
`
`Mark"):
`
`Mark/Name
`
`Status/Key Dates
`
`Full Goods/Services
`
`App. No./Reg.
`No.
`RN: 1510625
`SN: 73718366
`
`
`EMPIRE
`
`
`Renewed November 1, 2018
`(Int'l Class: 03)
`Int'l Class: 03
`outdoor cleaning
`First Use: October, 1987
`preparation for
`Filed: March 23, 1988
`commercial and
`Registered: November 1,
`institutional use in
`1988
`cleaning concrete and
`Last Renewal: November 1,
`driveways
`2018
`
`Current printouts of information from the electronic database records of the USPTO showing the
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`current status and title of the registration is attached hereto as Exhibit A.
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`
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`6.
`
`The registration listed in the above table have not been canceled, are valid, and
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`are now in full force and effect.
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`7.
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`Registration 1510625 is incontestable under Section 15 of the Lanham Act, 15
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`U.S.C. § 1065. Consequently, this registration is conclusive evidence of the validity of the
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`2
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`

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`registered mark and of the registration of the mark, of Opposer's ownership of the mark, and of
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`Opposer's exclusive right to use the registered marks in commerce under Section 33 of the
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`Lanham Act, 15 U.S.C. § 1115.
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`8.
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`Opposer has advertised and promoted Opposer's EMPIRE Mark continuously and
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`extensively, and made substantial sales of products and services under said mark. As a result of
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`such continuous use and promotion, Opposer's EMPIRE Mark has developed and represents
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`valuable goodwill inuring to the benefit of Opposer.
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`9.
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`There is no issue of priority concerning Application Serial No. 79223349 since
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`Opposer used and registered Opposer's EMPIRE Mark prior to Applicant’s October 26, 2017,
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`filing date. Opposer adopted and commenced use of Opposer’s EMPIRE Mark as a trademark
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`long before Applicant adopted or used the EMPIRE mark. Opposer’s usage of the term EMPIRE
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`as a trademark commenced at least as early as 1987, thiry years prior to the filing date of
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`Applicant’s application for its EMPIRE mark. Opposer therefore has priority over Applicant
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`with respect to the marks at issue.
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`10.
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`Upon information and belief, Applicant had knowledge of the fact that Opposer
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`used the term EMPIRE as a trademark and/or had constructive knowledge of Opposer’s
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`EMPIRE registration before it adopted the EMPIRE mark.
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`11.
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`Applicant’s EMPIRE mark is confusingly and deceptively similar to Opposer’s
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`previously used and duly registered EMPIRE Mark.
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`12.
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`Applicant’s EMPIRE mark is similar in sight, sound and commercial impression
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`to Opposer’s EMPIRE Mark.
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`13.
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`Applicant’s alleged goods/services are closely related to Opposer’s goods/services
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`marketed and sold by Opposer in connection with Opposer's EMPIRE Mark. Applicant’s
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`3
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`goods/services overlap with Opposer’s business in the industry area. Both Applicant’s goods
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`and Opposer’s goods and services relate generally to chemical preparations.
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`14.
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`Upon information and belief, Opposer’s goods/services and Applicant’s
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`goods/services are promoted in the same channels of trade to the same consumers or class of
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`consumers.
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`
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`15.
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`Due to the similarity between Applicant’s claimed mark, EMPIRE, and Opposer’s
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`previously used and registered EMPIRE Mark, the closely related nature of the goods and
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`services of the respective parties, customers and potential customers are likely to believe that
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`Applicant’s goods/services originate from Opposer, resulting in a likelihood of confusion in the
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`marketplace, and damage to Opposer.
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`
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`16.
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`The use and registration by Applicant of the mark EMPIRE for Applicant’s
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`goods/services is likely to cause confusion or to cause mistake or deception in the trade, and
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`among purchasers and potential purchasers, with Opposer’s previously used and registered
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`EMPIRE Mark, again resulting in damage to Opposer.
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`
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`17.
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`Because of the closely related nature of the goods and services of the parties, and
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`the similarity of the marks, use and registration of the term EMPIRE by Applicant is likely to
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`cause confusion, mistake, or deception that Applicant’s goods/services are those of Opposer, or
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`are otherwise endorsed, sponsored, or approved by Opposer for use with Opposer’s
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`goods/services causing further damage to Opposer.
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`
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`18.
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`Registration of the mark shown in Application Serial No. 79223349 will result in
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`damage to Opposer under the provisions of Section 2 of the U.S. Trademark Act, 15 U.S.C.
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`Section 1052, pursuant to the allegations stated above.
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`
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`4
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`

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`WHEREFORE, Opposer asks that its opposition to this application be sustained and that
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`registration of the term EMPIRE for the services set forth therein be refused.
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`
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`Please direct all correspondence to:
`
`Scott W. Johnston
`MERCHANT & GOULD P.C.
`P.O. Box 2910
`Minneapolis, MN 55402-0910
`
`Opposer herein appoints John A. Clifford, Reg. No. 30,247; Gregory C. Golla; Andrew S.
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`Ehard; Scott W. Johnston, Reg. No. 39,721; Danielle I. Mattessich; Christopher J. Schulte;
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`William D. Schultz, and all other attorneys of the firm of Merchant & Gould P.C., its attorneys to
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`transact all business in the U.S. Patent and Trademark Office relating to this matter with full
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`power of substitution.
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`Date: December 21, 2018
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`Respectfully submitted,
`ECOLAB USA INC.
`By its Attorneys,
`
`
`Scott W. Johnston
`Gregory Golla
`MERCHANT & GOULD P.C.
`80 South Eighth Street, Suite 3200
`Minneapolis, Minnesota 55402-2215
`(612) 332-5300
`
`5
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`

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`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Generated on: This page was generated by TSDR on 2018-12-21 14:10:39 EST
`
`Mark: EMPIRE
`
`US Serial Number: 73718366
`
`US Registration
`Number:
`
`1510625
`
`Register: Principal
`
`Mark Type: Trademark
`
`Status: The registration has been renewed.
`
`Status Date: Apr. 12, 2018
`
`Publication Date: Aug. 09, 1988
`
` 
`
`Mark Literal
`Elements:
`
`EMPIRE
`
`Standard Character
`Claim:
`
`No
`
`Application Filing
`Date:
`
`Mar. 23, 1988
`
`Registration Date: Nov. 01, 1988
`
`Mark Information
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: OUTDOOR CLEANING PREPARATION FOR COMMERCIAL AND INSTITUTIONAL USE IN CLEANING CONCRETE AND
`DRIVEWAYS
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Oct. 1987
`
`U.S Class(es): 052
`
`Use in Commerce: Oct. 1987
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
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`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
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`Currently 44E: No
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`Currently 66A: No
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`Amended Use: No
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`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
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`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: ECOLAB USA INC.
`
`Owner Address: 1 ECOLAB PLACE
`ST. PAUL, MINNESOTA 55102
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Sarah A. Lockner
`Ecolab USA Inc.
`1 ECOLAB PLACE
`ST. PAUL, MINNESOTA 55102
`UNITED STATES
`
`Correspondent e-
`mail:
`
`USTM@ecolab.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Apr. 12, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Apr. 12, 2018
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Apr. 12, 2018
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`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Apr. 11, 2018
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`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Mar. 29, 2018
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Mar. 29, 2018
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Feb. 15, 2012
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Jul. 14, 2008
`
`CASE FILE IN TICRS
`
`Jan. 18, 2008
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Jan. 18, 2008
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 17, 2008
`
`ASSIGNED TO PARALEGAL
`
`Jan. 15, 2008
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Jan. 15, 2008
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Jan. 15, 2008
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Mar. 24, 1994
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`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Nov. 09, 1993
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Nov. 01, 1988
`
`REGISTERED-PRINCIPAL REGISTER
`
`Aug. 09, 1988
`
`PUBLISHED FOR OPPOSITION
`
`Jul. 08, 1988
`
`NOTICE OF PUBLICATION
`
`Jun. 08, 1988
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`May 20, 1988
`
`EXAMINER'S AMENDMENT MAILED
`
`May 19, 1988
`
`ASSIGNED TO EXAMINER
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of
`Continued Use:
`
`Affidavit of
`Incontestability:
`
`Section 8 - Accepted
`
`Section 15 - Accepted
`
`Renewal Date: Nov. 01, 2018
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Apr. 12, 2018
`
`Proceeding
`Number
`
`59136
`
`59136
`
`59136
`
`75461
`
`75461
`
`88888
`
`62177
`
`

`

`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 4714/0408
`
`Date Recorded: Feb. 09, 2012
`
`Supporting
`Documents:
`
`assignment-tm-4714-0408.pdf
`
`Assignment 1 of 1
`
` 
`
`Registrant: KAY CHEMICAL COMPANY
`
`Pages: 4
`
`Name: KAY CHEMICAL COMPANY
`
`Execution Date: Feb. 08, 2012
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: ECOLAB USA INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 370 WABASHA STREET NORTH
`ST. PAUL, MINNESOTA 55102
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`EDWARD R. COURTNEY, ESQ.
`
`370 WABASHA STREET NORTH
`ESC-F7
`ST. PAUL, MN 55102
`
`State or Country
`Where Organized:
`
`NORTH CAROLINA
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`
`Domestic Representative - Not Found
`
`

`

`Int. CL: 3
`
`Prior US. Cl.: 52
`
`Reg. No. 1,510,625
`United States Patent and Trademark Office Registered Nov. 1,1988
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ENIPIRE
`
`KAY CHEMICAL COMPANY (NORTH CAROLI-
`NA CORPORATION)
`PO. BOX 18407
`GREENSBORO, NC 27419
`
`FOR: OUTDOOR CLEANING PREPARATION
`FOR COMMERCIAL AND INSTITUTIONAL
`USE IN CLEANING CONCRETE AND DRIVE-
`WAYS, IN CLASS 3 (US. CL. 52).
`
`FIRST USE
`10-0-1987.
`
`10—0—1987;
`
`IN COMMERCE
`
`SER. NO. 718,366, FILED 3—23-1988.
`
`HELEN ROBERTS WENDEL, EXAMINING AT-
`TORNEY
`
`