Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1084378
`09/25/2020
`
`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
`
`Simply Orange Juice Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`09/27/2020
`
`ONE COCA-COLA PLAZA
`ATLANTA, GA 30313
`UNITED STATES
`
`CHARLOTTE K. MURPHY
`TRADEMARK COUNSEL
`THE COCA-COLA COMPANY
`ONE COCA-COLA PLAZA
`ATLANTA, GA 30313
`UNITED STATES
`Primary Email: charlmurphy@coca-cola.com
`404-676-2819
`
`Applicant Information
`
`Application No.
`
`88665229
`
`Publication date
`
`03/31/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`09/25/2020
`
`Opposition Peri-
`od Ends
`
`09/27/2020
`
`Simply Free Foods Inc.
`5 PHEASANT RUN
`GREAT NECK, NY 11024
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 2019/03/10 First Use In Commerce: 2019/03/10
`All goods and services in the class are opposed, namely: yogurt
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Deceptiveness
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2692046
`
`Application Date
`
`10/12/2000
`
`
`ESTTA1084378
`09/25/2020
`
`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
`
`Simply Orange Juice Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`09/27/2020
`
`ONE COCA-COLA PLAZA
`ATLANTA, GA 30313
`UNITED STATES
`
`CHARLOTTE K. MURPHY
`TRADEMARK COUNSEL
`THE COCA-COLA COMPANY
`ONE COCA-COLA PLAZA
`ATLANTA, GA 30313
`UNITED STATES
`Primary Email: charlmurphy@coca-cola.com
`404-676-2819
`
`Applicant Information
`
`Application No.
`
`88665229
`
`Publication date
`
`03/31/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`09/25/2020
`
`Opposition Peri-
`od Ends
`
`09/27/2020
`
`Simply Free Foods Inc.
`5 PHEASANT RUN
`GREAT NECK, NY 11024
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 2019/03/10 First Use In Commerce: 2019/03/10
`All goods and services in the class are opposed, namely: yogurt
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Deceptiveness
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2692046
`
`Application Date
`
`10/12/2000
`
`
`
`Registration Date
`
`03/04/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY ORANGE
`
`NONE
`
`Class 032. First use: First Use: 2001/04/30 First Use In Commerce: 2001/04/30
`NOT FROM CONCENTRATE, 100% PURE, CHILLED ORANGE JUICE
`
`U.S. Registration
`No.
`
`3121935
`
`Registration Date
`
`07/25/2006
`
`Application Date
`
`11/11/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY LEMONADE
`
`NONE
`
`Class 032. First use: First Use: 2006/03/01 First Use In Commerce: 2006/03/01
`Beverages, namely, Fruit drinks, Fruit juices
`
`U.S. Registration
`No.
`
`3163864
`
`Registration Date
`
`10/24/2006
`
`Application Date
`
`02/15/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY LIMEADE
`
`NONE
`
`Class 032. First use: First Use: 2006/03/01 First Use In Commerce: 2006/03/01
`LIME JUICE BEVERAGES CONSISTING OF WATER AND SWEETENERS,
`NOT FROM CONCENTRATE
`
`U.S. Registration
`No.
`
`3399381
`
`Registration Date
`
`03/18/2008
`
`Application Date
`
`06/30/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY GRAPEFRUIT
`
`NONE
`
`Class 032. First use: First Use: 2007/09/01 First Use In Commerce: 2007/09/01
`Grapefruit juice beverages consisting of water and non-caloric sweetners, not
`from concentrate
`
`U.S. Registration
`No.
`
`3410211
`
`Registration Date
`
`04/08/2008
`
`Word Mark
`
`Design Mark
`
`SIMPLY APPLE
`
`Application Date
`
`02/17/2003
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2007/09/01 First Use In Commerce: 2007/09/01
`non-alcoholic beverages, namely, fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`4100614
`
`Registration Date
`
`02/21/2012
`
`Application Date
`
`03/24/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY JUICES
`
`NONE
`
`Class 032. First use: First Use: 2000/07/00 First Use In Commerce: 2000/07/00
`fruit juice
`
`U.S. Registration
`No.
`
`4136164
`
`Registration Date
`
`05/01/2012
`
`Application Date
`
`07/20/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY CRANBERRY
`
`NONE
`
`Class 032. First use: First Use: 2012/01/23 First Use In Commerce: 2012/01/23
`Fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`4318837
`
`Registration Date
`
`04/09/2013
`
`Application Date
`
`05/23/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY DRINKS
`
`NONE
`
`Class 032. First use: First Use: 2012/12/31 First Use In Commerce: 2012/12/31
`non-alcoholic beverages, namely, fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`4847063
`
`Registration Date
`
`11/03/2015
`
`Application Date
`
`06/19/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY JUICE DRINKS
`
`NONE
`
`Class 032. First use: First Use: 2014/12/15 First Use In Commerce: 2014/12/15
`Fruit drinks and fruit juices
`
`U.S. Registration
`
`4847109
`
`Application Date
`
`07/10/2014
`
`
`
`No.
`
`Registration Date
`
`11/03/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY TROPICAL
`
`NONE
`
`Class 032. First use: First Use: 2014/12/15 First Use In Commerce: 2014/12/15
`Fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`4847110
`
`Registration Date
`
`11/03/2015
`
`Application Date
`
`07/10/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY MIXED BERRY
`
`NONE
`
`Class 032. First use: First Use: 2014/12/15 First Use In Commerce: 2014/12/15
`Fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`5303055
`
`Registration Date
`
`10/03/2017
`
`Application Date
`
`08/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY PEACH
`
`NONE
`
`Class 032. First use: First Use: 2017/02/01 First Use In Commerce: 2017/02/01
`Fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`5372374
`
`Registration Date
`
`01/09/2018
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY
`
`The mark consists of the word "SIMPLY" in a stylized font.
`
`Class 032. First use: First Use: 2001/04/30 First Use In Commerce: 2001/04/30
`Fruit juices and fruit drinks
`
`U.S. Registration
`No.
`
`6087029
`
`Registration Date
`
`06/23/2020
`
`Word Mark
`
`Design Mark
`
`SIMPLY ALMOND
`
`Application Date
`
`07/17/2019
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "SIMPLY" above the word "ALMOND" in a styl-
`ized font.
`
`Class 029. First use: First Use: 2019/12/00 First Use In Commerce: 2020/03/09
`Almond milk; almond milk-based beverages; milk substitutes; nut milk; nut-
`basedmilk for use as a milk substitute
`Class 032. First use: First Use: 2019/12/00 First Use In Commerce: 2020/03/09
`Nut-based beverages not being milk substitutes; almond-based beverages not
`being milk substitutes
`
`U.S. Registration
`No.
`
`4847108
`
`Registration Date
`
`11/03/2015
`
`Application Date
`
`07/10/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY FRUIT PUNCH
`
`NONE
`
`Class 032. First use: First Use: 2014/12/15 First Use In Commerce: 2014/12/15
`Fruit drinks and fruit juices
`
`U.S. Registration
`No.
`
`5372375
`
`Registration Date
`
`01/09/2018
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`SIMPLY
`
`NONE
`
`Class 032. First use: First Use: 2001/04/30 First Use In Commerce: 2001/04/30
`Fruit juices and fruit drinks
`
`Attachments
`
`Notice of Opposition SIMPLY FREE.pdf(171406 bytes )
`
`Signature
`
`/Charlotte K. Murphy/
`
`Name
`
`Date
`
`CHARLOTTE K. MURPHY
`
`09/25/2020
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
` OPPOSITION NUMBER
`
`SIMPLY ORANGE JUICE COMPANY, )
` )
`Opposer )
`)
`)
`)
`SIMPLY FREE FOODS INC. )
`) Application Serial No. 88/665,229
`)
`
`v.
`
`Applicant.
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`SIMPLY ORANGE JUICE COMPANY, a Florida corporation, having its principal place of
`
`business at One Coca-Cola Plaza, Atlanta, Georgia 30313 (hereinafter “SOJC” or “Opposer”),
`
`believes it would be damaged by registration of the mark SIMPLY FREE (“Applicant’s Alleged
`
`Mark”), for “yogurt” in International Class 29, which mark is the subject of application Serial No.
`
`88665229 (the “Application”). Simply Free Foods Inc. (“Applicant”), a New York corporation,
`
`whose address is 5 Pheasant Run Great Neck, New York 11024, filed the Application on October
`
`23, 2019. The Application was published for opposition in the Official Gazette on March 31, 2020.
`
`By and through its undersigned attorney, SOJC herby opposes the Application.
`
`The grounds for this Opposition are as follows:
`
`1. By the Application, Applicant seeks to register Applicant’s Alleged Mark as a trademark for
`
`Applicant’s goods. The Application is based on Section 1(a) of the Lanham Act and claims a
`
`date of first use of March 10, 2019.
`
`2. Since 2001, SOJC has engaged in the development, marketing, advertising, distribution and
`
`sale of its “SIMPLY” line of beverages.
`
`3. SOCJ began selling SIMPLY fruit juices and fruit drinks at least as early as April 30, 2001.
`
`4. SOJC is the owner of the corporate name, trade name and trademark SIMPLY, and has used
`
`
`
`
`
`the trademarks SIMPLY and the mark SIMPLY in the Stylized form below (“SIMPLY Stylized”)
`
`continuously in interstate commerce in connection with its fruit juices and fruit drink
`
`beverage products since at least April of 2001, long prior to the October 23, 2019 filing date
`
`of the Application.
`
`
`
`5. SOJC is the owner of the trademarks SIMPLY, SIMPLY Stylized, SIMPLY JUICE DRINKS,
`
`SIMPLY FRUIT PUNCH, SIMPLY TROPICAL, SIMPLY MIXED BERRY, SIMPLY PEACH, SIMPLY
`
`ORANGE, SIMPLY APPLE, SIMPLY GRAPEFRUIT, SIMPLY LIMEADE, SIMPLY LEMONADE,
`
`SIMPLY CRANBERRY, SIMPLY SMOOTHIE, THE BEST THINGS IN LIFE ARE MADE SIMPLY,
`
`SIMPLY JUICE, SIMPLY DRINKS, and SIMPLY ALMOND Stylized (collectively the “SIMPLY
`
`Marks”), as well as several other trademarks SOJC uses in connection with its beverage
`
`products.
`
`6. SOCJ is the owner of numerous U.S. trademark registrations for the SIMPLY Marks,
`
`including the following registrations:
`
`1. Reg. No. 2,692,046, issued on March 4, 2003 and renewed in 2013, for the SIMPLY
`
`ORANGE mark (“Orange” disclaimed), for “not from concentrate, 100% pure,
`
`chilled orange juice” in International Class 32 (the “SIMPLY ORANGE”
`
`Registration). The SIMPLY ORANGE Registration is incontestable.
`
`2. Reg. No. 3,121,935, issued on July 25, 2006 and renewed in 2016, for the SIMPLY
`
`LEMONADE mark (“Lemonade” disclaimed), for “beverages, namely, fruit drinks,
`
`fruit juices” in International Class 32 (the “SIMPLY LEMONADE” Registration). The
`
`SIMPLY LEMONADE Registration is incontestable.
`
`
`
`
`
`3. Reg. No. 3,163,864, issued on October 24, 2006 and renewed in 2016, for the
`
`SIMPLY LIMEADE mark (“Limeade” disclaimed), for “lime juice beverages
`
`consisting of water and sweeteners, not from concentrate” in International Class
`
`32 (the “SIMPLY LIMEADE” Registration. The SIMPLY LIMEADE Registration is
`
`incontestable.
`
`4. Reg. No. 3,399,381, issued on March 18, 2008 and renewed in 2017, for the
`
`SIMPLY GRAPEFRUIT mark (“Grapefruit” disclaimed), for “grapefruit juice
`
`beverages consisting of water and non-caloric sweeteners, not from concentrate”
`
`in International Class 32 (the “SIMPLY GRAPEFRUIT” Registration). The SIMPLY
`
`GRAPEFRUIT Registration is incontestable.
`
`5. Reg. No. 3,410,211, issued on April 8, 2008 and renewed in 2017, for the SIMPLY
`
`APPLE mark (“Apple” disclaimed), for “non-alcoholic beverages, namely, fruit
`
`drinks and fruit juices” in International Class 32 (the “SIMPLY APPLE” Registration).
`
`The SIMPLY APPLE Registration is incontestable.
`
`6. Reg. No. 4,100,614, issued on February 21, 2012, for the SIMPLY JUICES mark
`
`(“Juices” disclaimed), for “fruit juice” in International Class 32 (the “SIMPLY
`
`JUICES” Registration). The SIMPLY JUICES Registration is incontestable.
`
`7. Reg. No. 4,136,164, issued on May 1, 2012, for the SIMPLY CRANBERRY mark
`
`(“Cranberry” disclaimed), for “fruit drinks and fruit juices” in International Class 32
`
`(the “SIMPLY CRANBERRY” Registration). The SIMPLY CRANBERRY Registration is
`
`incontestable.
`
`8. Reg. No. 4,318,837, issued on April 9, 2013, for the SIMPLY DRINKS mark (“Drinks”
`
`disclaimed), for “non-alcoholic beverages, namely fruit drinks and fruit juices” in
`
`International Class 32.
`
`
`
`
`
`9. Reg. No. 4,847,063, issued on November 3, 2015, for the SIMPLY JUICE DRINKS
`
`mark (“Juice Drinks” disclaimed), for “fruit juices and fruit drinks” in International
`
`Class 32.
`
`10. Reg. No. 4,847,108, issued on November 3, 2015, for the SIMPLY FRUIT PUNCH
`
`mark (“Fruit Punch” disclaimed), for “fruit drinks and fruit juices” in International
`
`Class 32.
`
`11. Reg. No. 4,847,109, issued on November 3, 2015, for the SIMPLY TROPICAL mark
`
`(“Tropical” disclaimed), for “fruit drinks and fruit juices” in International Class 32.
`
`12. Reg. No. 4,847,110, issued on November 3, 2015, for the SIMPLY MIXED BERRY
`
`mark (“Mixed Berry” disclaimed), for “fruit drinks and fruit juices” in International
`
`Class 32.
`
`13. Reg. No. 5,303,055, issued on October 3, 2017, for the SIMPLY PEACH mark
`
`(“Peach” disclaimed), for “fruit drinks and fruit juices” in International Class 32.
`
`14. Reg. No. 5,372,375, issued on January 9, 2018, for the SIMPLY mark, for “fruit
`
`drinks and fruit juices” in International Class 32.
`
`15. Reg. No. 5,372,374, issued on January 9, 2018, for the SIMPLY Stylized mark, for
`
`“fruit juices and fruit drinks” in International Class 32.
`
`16. Reg. No. for 6,087,029, issued on June 23, 2020 for the SIMPLY ALMOND Stylized
`
`mark, for “Almond milk; almond milk-based beverages; milk substitutes; nut milk;
`
`nut-based milk for use as a milk substitute” in International Class 30 and “Nut-
`
`based beverages not being milk substitutes; almond-based beverages not being
`
`milk substitutes” in International Class 32.
`
`7. SOJC’s SIMPLY registrations are prima facie evidence of the validity thereof and of SOJC’s
`
`ownership and exclusive right to use the SIMPLY Marks in commerce, and are
`
`
`
`
`
`constructive notice of SOJC’S ownership thereof, all as provided by Sections 7(b) and 22
`
`of the Federal Trademark Act of 1946, as amended.
`
`8. SOJC also has common law rights in the SIMPLY Marks on which it relies in its opposition
`
`to the Application.
`
`9. SOJC’s SIMPLY Marks have been extensively advertised throughout the United States,
`
`including use of the SIMPLY and SIMPLY Stylized marks on packaging, point- of-sale
`
`materials, print, broadcast and digital advertising. As a result of the widespread and
`
`extensive use, advertising, and promotion by SOJC of the SIMPLY Marks, the SIMPLY
`
`Marks serve to identify and distinguish SOJC’s juice-based beverage products and are
`
`famous marks within the meaning of Section 43(c) of the Federal Trademark Act of 1946.
`
`10. Because SOJC has used the SIMPLY Marks continuously since well in advance of the
`
`October 23, 2019 application date of the Application, the SIMPLY Marks have priority of
`
`use and priority of rights in the United States with respect to Applicant’s Alleged Mark.
`
`11. Applicant’s Alleged Mark is similar, to the SIMPLY Marks in sound, appearance,
`
`connotation and commercial impression.
`
`12. Applicant’s Goods are highly similar and/or closely related to the goods covered by SOJC’s
`
`registration for the SIMPLY Marks.
`
`13. Applicant’s Goods and the goods for which SOJC uses its SIMPLY Marks may be offered, at
`
`least in part, to the same, substantially the same, or related classes of purchasers and
`
`distributed through the same channels of trade.
`
`14. Applicant’s Alleged Mark, when used in connection with Applicant’s Goods, so resembles
`
`the SIMPLY Marks as to be likely to cause confusion, to cause mistake, or to deceive with
`
`respect to the source or origin of applicant’s Goods, with respect to SOJC’s sponsorship
`
`thereof, or connection or affiliation therewith, and/or in other ways.
`
`
`
`
`
`15. Applicant’s Alleged Mark is likely to cause dilution of the SIMPLY Marks.
`
`16. SOJC would be damaged by registration of Applicant’s Alleged Mark because such
`
`registration would constitute prima facie evidence of Applicant’s exclusive right to use
`
`Applicant’s Alleged Mark for and in connection with Applicant’s Goods, which would be
`
`inconsistent with and detrimental to SOJC’s prior, well- established and superior rights in
`
`the SIMPLY Marks.
`
`WHEREFORE, Opposer Simply Orange Juice Company respectfully requests that the
`
`application of Simply Free Foods, Inc. 88/665,229, filed on October 23, 2019, for registration of
`
`Applicant’s Alleged Mark for Applicant’s Goods be refused, that no registration be issued thereon
`
`to Applicant for Applicant’s Alleged Mark, and that this opposition be sustained in favor of
`
`Opposer.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Charlotte K. Murphy
`Charlotte K. Murphy, Esq.
`Trademark Counsel
`The Coca-Cola Company
`One Coca-Cola Plaza
`Atlanta, GA 30313
`(404) 676-2819
`
`Attorney for Opposer
`SIMPLY ORANGE JUICE COMPANY
`
`
`
`
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