Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1097487
`11/24/2020
`
`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
`
`NuttZo LLC
`11/25/2020
`
`3525 DEL MAR HEIGHTS ROAD #728
`SAN DIEGO, CA 92130
`UNITED STATES
`
`STEVEN E. KLEIN
`DAVIS WRIGHT TREMAINE LLP
`1300 SW FIFTH AVENUE, SUITE 2400
`PORTLAND, OR 97201
`UNITED STATES
`Primary Email: stevenklein@dwt.com
`Secondary Email(s): sheilafoxmorrison@dwt.com, pdxtmenforce-
`ment@dwt.com, pdxtrademarks@dwt.com
`503.241.2300
`
`Docket Number
`
`Applicant Information
`
`Application No.
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`NONE
`
`88657110
`11/24/2020
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`REGIOMASANO, S.A. DE C.V.
`LAS CALZADAS RESIDECIA
`CALZADA DE LOS NOGALES, NO. 201
`SAN PEDRO GARZA GARCÃ-A, NuevoLeón
`MEXICO
`
`07/28/2020
`11/25/2020
`
`NONE
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: hazelnut butter and spreads
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`
`ESTTA Tracking number:
`ESTTA1097487
`11/24/2020
`
`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
`
`NuttZo LLC
`11/25/2020
`
`3525 DEL MAR HEIGHTS ROAD #728
`SAN DIEGO, CA 92130
`UNITED STATES
`
`STEVEN E. KLEIN
`DAVIS WRIGHT TREMAINE LLP
`1300 SW FIFTH AVENUE, SUITE 2400
`PORTLAND, OR 97201
`UNITED STATES
`Primary Email: stevenklein@dwt.com
`Secondary Email(s): sheilafoxmorrison@dwt.com, pdxtmenforce-
`ment@dwt.com, pdxtrademarks@dwt.com
`503.241.2300
`
`Docket Number
`
`Applicant Information
`
`Application No.
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`NONE
`
`88657110
`11/24/2020
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`REGIOMASANO, S.A. DE C.V.
`LAS CALZADAS RESIDECIA
`CALZADA DE LOS NOGALES, NO. 201
`SAN PEDRO GARZA GARCÃ-A, NuevoLeón
`MEXICO
`
`07/28/2020
`11/25/2020
`
`NONE
`
`Goods/Services Affected by Opposition
`
`Class 029. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: hazelnut butter and spreads
`
`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
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`3592258
`
`03/17/2009
`
`NUTTZO
`
`NONE
`
`Application Date
`
`09/26/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Class 029. First use: First Use: 2008/07/23 First Use In Commerce: 2008/07/23
`[ Jams; Jellies; ] Nut butters; Peanut butter
`
`6088676
`
`06/30/2020
`
`NUTTZO
`
`NONE
`
`Application Date
`
`06/17/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Class 005. First use: First Use: 2018/02/09 First Use In Commerce: 2018/03/06
`Nutritional supplement energy bars; dietary and nutritional supplement formed
`and packaged as protein based snack bars;protein bars in the nature of nutri-
`tional supplement energy bars
`Class 029. First use: First Use: 2018/02/09 First Use In Commerce: 2018/03/06
`Nut and seed butters; nut-based snack bars; seed-based snack bars; nut and
`seed-based snack bars; fruit and nut and seed-based snack bars
`Class 030. First use: First Use: 2013/04/22 First Use In Commerce: 2013/04/25
`Chocolate confections; nut confections being candy; nut and seed-based con-
`fections being candy
`
`Attachments
`
`Notice of Opposition - NUXTO.pdf(281893 bytes )
`
`Signature
`Name
`Date
`
`/s Steven E. Klein/
`Steven E. Klein
`11/24/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of the Trademark Application No. 88/657,110
`For the Mark: NUXTO stylized
`Published on: July 28, 2020
`
`NUTTZO LLC, a California limited liability
`company,
`
`Opposition No.
`
`Opposer,
`
`v.
`
`REGIOMASANO, S.A. DE C.V., a Mexican
`sociedad anonima (sa de cv),
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`NuttZo LLC, a California limited liability company, having its principal place of business
`
`at 3525 Del Mar Heights Road #728, San Diego, California 92130 (“Opposer”), believes that it
`
`will be damaged by registration of the NUXTO stylized trademark shown in U.S. Trademark
`
`Application Serial No. 88/657,110, in connection with “hazelnut butter and spreads,” in
`
`International Class 29 and hereby opposes registration of same.
`
`Having requested and obtained an extension of time to oppose Application Serial
`
`No. 88/657,110 to and including November 25, 2020, see ESTTA Tracking
`
`No. ESTTA1077869, Opposer now opposes registration of Applicant’s Mark.
`
`As grounds for the opposition, Opposer alleges as follows:
`
`1.
`
`Upon information and belief, Regiomasano, S.A. DE C.V, is a Mexican sociedad
`
`anonima (sa de cv), with an address at Las Calzadas Residecia, Calzada de los Nogales, No. 201,
`
`San Pedro Garza García, Mexico NuevoLeón (hereinafter, “Applicant”).
`
`NOTICE OF OPPOSITION
`4819-8356-9874v.2 0108743-000013
`
`1
`
`
`
`2.
`
`Upon information and belief, Applicant is the listed owner of the Application
`
`Serial No. 88/657,110, filed on October 16, 2019, to register the NUXTO stylized mark in
`
`connection with “hazelnut butter and spreads,” in International Class 29 (“Applicant’s Goods”).
`
`3.
`
`Continuously since 2008, long prior to any date upon which Applicant can rely,
`
`Opposer has used the trademarks NUTTZO and NUTTZO stylized (collectively, the “NUTTZO”
`
`Marks) in connection with, among other goods, nut butters and peanut butter (“Opposer’s
`
`Goods”).
`
`4.
`
`Opposer is the owner of U.S. Trademark Registration No. 3,592,258, for the mark
`
`NUTTZO for “Nut butters; Peanut butter,” in International Class 29, which has been in
`
`continuous use in U.S. commerce since at least as early as July 23, 2008. Said registration issued
`
`March 17, 2009 (based on an application filed September 26, 2007). Registration No. 3,592,258
`
`is currently valid and subsisting, and has achieved incontestable status under 15 U.S.C. § 1065.
`
`A true and correct print-out from the USPTO’s Trademark Electronic Search System showing
`
`the current status and title of the above registration is attached hereto as Exhibit A.
`
`5.
`
`Opposer is the owner of U.S. Trademark Registration No. 6,088,676, for the mark
`
`NUTTZO for “Nut and seed butters; nut-based snack bars; seed-based snack bars; nut and seed-
`
`based snack bars; fruit and nut and seed-based snack bars,” in International Class 29. Said
`
`registration issued June 30, 2020 (based on an application filed June 17, 2019). Registration
`
`No. 6,088,676 is currently valid and subsisting. A true and correct print-out from the USPTO’s
`
`Trademark Electronic Search System showing the current status and title of the above
`
`registration is attached hereto as Exhibit B.
`
`6.
`
`Opposer has invested significant time, energy, and resources in the advertising,
`
`promotion, and distribution of Opposer’s Goods under Opposer’s NUTTZO Marks. The success
`
`NOTICE OF OPPOSITION
`4819-8356-9874v.2 0108743-000013
`
`2
`
`
`
`of Opposer’s marketing and promotional efforts have not gone unnoticed, and Opposer benefits
`
`from the publicity garnered from unsolicited media coverage of its goods and services.
`
`7.
`
`As Opposer used, filed to register and/or registered the NUTTZO Marks long
`
`before the filing date of Applicant’s Application Serial No. 88/657,110 or, on information and
`
`belief, any earlier lawful priority date Applicant can claim in the NUXTO mark shown in
`
`Application Serial No. 88/657,110, Opposer’s rights in the NUTTZO Marks are senior to
`
`Applicant’s rights.
`
`8.
`
`Applicant’s NUXTO mark so resembles Opposer’s registered NUTTZO Marks
`
`that when used in connection with the goods claimed by U.S. Trademark Application Serial
`
`No. 88/657,110, Applicant’s NUXTO mark is likely to cause confusion, or to cause mistake, or
`
`to deceive within the meaning of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Among
`
`other things:
`
`a.
`
`Applicant’s NUXTO mark is confusingly similar in appearance, sound, and
`
`commercial impression to Opposer’s NUTTZO Marks;
`
`b.
`
`The goods recited in Application Serial No. 88/657,110 are identical and/or
`
`related to the goods recited in Opposer’s registrations for the NUTTZO Marks;
`
`c.
`
`The goods recited in Serial No. 88/657,110 are unrestricted as to trade channels
`
`and are presumed to be marketed, advertised, promoted, and sold through all
`
`normal and ordinary channels of trade, which include the same or substantially
`
`similar channels of trade through which the goods recited in Opposer’s
`
`registration for the NUTTZO Marks are marketed, advertised, promoted and sold;
`
`and
`
`NOTICE OF OPPOSITION
`4819-8356-9874v.2 0108743-000013
`
`3
`
`
`
`d.
`
`The goods recited in Serial No. 88/657,110 are directed to the same or
`
`overlapping classes of actual or prospective consumers as the goods recited in
`
`Opposer’s registration for the NUTTZO Marks.
`
`9.
`
`Opposer will be damaged by the registration sought by Applicant insofar as such
`
`registration will constitute prima facie evidence of the validity of the registration, Applicant’s
`
`ownership of the NUXTO mark for the goods claimed by U.S. Trademark Application Serial
`
`No. 88/657,110, and Applicant’s exclusive right to use the NUXTO mark in association with the
`
`goods claimed by Application Serial No. 88/657,110, when in fact, Applicant is not entitled to
`
`the full scope of such rights by virtue of Opposer’s priority in Opposer’s NUTTZO Marks.
`
`10.
`
`Based on the foregoing, registration of the NUXTO mark, as shown by U.S.
`
`Trademark Application Serial No. 88/657,110, is likely to cause injury and damage to Opposer.
`
`WHEREFORE, Opposer respectfully requests that registration of the mark NUXTO, as
`
`shown by U.S. Application Serial No. 88/657,110, be denied under Section 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d), and that this Notice of Opposition be sustained.
`
`Dated this 24th day of November, 2020
`
`DAVIS WRIGHT TREMAINE LLP
`
`
`By: /s Steven E. Klein/
`Sheila Fox Morrison
`Steven E. Klein
`1300 SW Fifth Avenue, Suite 2400
`Portland, OR 97201-5610
`Tel: (503) 778-5311
`Fax: (503) 778-5299
`sheilafoxmorrison@dwt.com
`stevenklein@dwt.com
`
`Attorneys for Opposer NuttZo LLC
`
`NOTICE OF OPPOSITION
`4819-8356-9874v.2 0108743-000013
`
`4
`
`
`
`11/24/2020
`
`Trademark Electronic Search System (TESS)
`
`United States Patent and Trademark Office
`
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` Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Nov 24 03:47:23 EST 2020
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`Record 1 out of 1
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`
`Word Mark
`NUTTZO
`Goods and Services IC 029. US 046. G & S: [ Jams; Jellies; ] Nut butters; Peanut butter. FIRST USE: 20080723. FIRST USE IN COMMERCE:
`20080723
`
`LETTER-3-OR-MORE NUTTZO Combination of three or more letters as part of the mark
`
`Standard
`Characters Claimed
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`Trademark Search
`Facility
`Classification Code
`Serial Number
`77289703
`Filing Date
`September 26, 2007
`Current Basis
`1A
`Original Filing Basis 1B
`Published for
`March 11, 2008
`Opposition
`Change In
`Registration
`Registration
`Number
`Registration Date
`Owner
`
`CHANGE IN REGISTRATION HAS OCCURRED
`
`3592258
`March 17, 2009
`(REGISTRANT) JAGRMA LIMITED LIABILITY COMPANY CALIFORNIA 4875 Caminito Exquisito San Diego CALIFORNIA
`92130
`
`(LAST LISTED OWNER) NUTTZO LLC LIMITED LIABILITY COMPANY CALIFORNIA #728 3525 Del Mar Heights Road San
`Diego CALIFORNIA 92130
`ASSIGNMENT RECORDED
`
`Assignment
`Recorded
`Attorney of Record Sheila Fox Morrison
`Type of Mark
`TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20190407.
`Renewal
`1ST RENEWAL 20190407
`Live/Dead Indicator LIVE
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`tmsearch.uspto.gov/bin/showfield?f=doc&state=4803:6t1qju.2.1
`
`1/1
`NOTICE OF OPPOSITION
`
`EXHIBIT A
`
`
`
`11/24/2020
`
`Trademark Electronic Search System (TESS)
`
`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Contacts|eBusiness|eBiz alerts|News
` Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Tue Nov 24 03:47:23 EST 2020
`
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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
`
`NUTTZO
`IC 005. US 006 018 044 046 051 052. G & S: Nutritional supplement energy bars; dietary and nutritional supplement formed and packaged
`as protein based snack bars; protein bars in the nature of nutritional supplement energy bars. FIRST USE: 20180209. FIRST USE IN
`COMMERCE: 20180306
`
`IC 029. US 046. G & S: Nut and seed butters; nut-based snack bars; seed-based snack bars; nut and seed-based snack bars; fruit and nut
`and seed-based snack bars. FIRST USE: 20180209. FIRST USE IN COMMERCE: 20180306
`
`IC 030. US 046. G & S: Chocolate confections; nut confections being candy; nut and seed-based confections being candy. FIRST USE:
`20130422. FIRST USE IN COMMERCE: 20130425
`
`Standard
`Characters
`Claimed
`Mark
`Drawing
`Code
`Serial
`Number
`Filing Date
`Current
`Basis
`Original
`Filing Basis
`Published for
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
`
`(4) STANDARD CHARACTER MARK
`
`88476326
`
`June 17, 2019
`1A
`
`1A
`
`April 14, 2020
`
`6088676
`
`June 30, 2020
`
`(REGISTRANT) NuttZo LLC LIMITED LIABILITY COMPANY CALIFORNIA 3525 Del Mar Heights Road #728 San Diego CALIFORNIA
`92130
`Sheila Fox Morrison
`
`Attorney of
`Record
`Prior
`Registrations 3592258;5482071
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Live/Dead
`LIVE
`Indicator
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`1/1
`NOTICE OF OPPOSITION
`
`EXHIBIT B
`
`
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