Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1103943
`12/23/2020
`
`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
`
`New Prime, Inc., d/b/a Prime Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`12/23/2020
`
`2740 NORTH MAYFAIR AVENUE
`SPRINGFIELD, MO 65803
`UNITED STATES
`
`AMY BROZENIC
`LATHROP GPM LLP
`10851 MASTIN BOULEVARD
`BUILDING 82, SUITE 1000
`OVERLAND PARK, KS 66210-1669
`UNITED STATES
`Primary Email: internalip@lathropgpm.com
`Secondary Email(s): timothy.hadachek@lathropgpm.com, trav-
`is.mccallon@lathropgpm.com, luke.meriwether@lathropgpm.com,
`amy.brozenic@lathropgpm.com, maggie.jiles@lathropgpm.com,
`terry.mueller@lathropgpm.com, eric.sidler@lathropgpm.com
`913-451-5100
`
`Docket Number
`
`588217
`
`Applicant Information
`
`Application No.
`
`88671191
`
`Publication date
`
`08/25/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/23/2020
`
`Opposition Peri-
`od Ends
`
`12/23/2020
`
`Amazon Technologies, Inc.
`410 TERRY AVE N
`SEATTLE, WA 98109
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 039. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Transport of goods; Shipping, delivery,and
`storage of goods; Goods warehousing; Merchandise packaging for others; Courier services; Coordin-
`ating transportation, shipping, and delivery services of parcel containers and goods of others; Provid-
`ing transportation, shipping, and delivery information; providing transportation, shipping, and delivery
`consultancy and advisory services; vehicle rental; truck rental
`
`Applicant Information
`
`

`

`Application No.
`
`88671197
`
`Publication date
`
`08/25/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/23/2020
`
`Opposition Peri-
`od Ends
`
`Amazon Technologies, Inc.
`410 TERRY AVE N
`SEATTLE, WA 98109
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 039. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Transport of goods; Shipping, delivery,and
`storage of goods; Goods warehousing; Merchandise packaging for others; Courier services; Coordin-
`ating transportation, shipping, and delivery services of parcel containers and goods of others; Provid-
`ing transportation, shipping, and delivery information; providing transportation, shipping, and delivery
`consultancy and advisory services; vehicle rental; truck rental
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`85497826
`
`Application Date
`
`12/16/2011
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`PRIME INC.
`
`The mark consists of stylized outliningof the word "PRIME" in capital letters and
`the word "inc." in lower case letters.
`
`Class 039. First use: First Use: 1980/01/30 First Use In Commerce: 1980/01/30
`Transportation services by truck
`
`87575242
`
`Application Date
`
`08/18/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PRIME INC.
`
`NONE
`
`Class 039. First use: First Use: 1980/01/30 First Use In Commerce: 1980/01/30
`Transportation services by truck
`
`Attachments
`
`2020-12-23 New Prime Ntc of Opp_BUSINESS PRIME.pdf(160608 bytes )
`
`

`

`Ex A_Final_Ps 01-18.pdf(2417370 bytes )
`Ex A_Final_Ps 19-34.pdf(4656759 bytes )
`Ex A_Final_Ps 35-46.pdf(2892920 bytes )
`Ex B.pdf(1225486 bytes )
`Ex C.pdf(24579 bytes )
`Ex Dr.pdf(1571260 bytes )
`Ex E1_1-40.pdf(2235864 bytes )
`Ex E2r_41-50.pdf(461911 bytes )
`Ex E3_51-60.pdf(4372587 bytes )
`Ex E4_61-103.pdf(3877652 bytes )
`Ex F.pdf(16965 bytes )
`Ex G.pdf(15092 bytes )
`Ex H_88671191.pdf(2373677 bytes )
`Ex I_88671197.pdf(2373679 bytes )
`
`Signature
`
`/Amy Brozenic/
`
`Name
`
`Date
`
`AMY BROZENIC
`
`12/23/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In Re: Application Serial No. 88/671,191
`For the Mark: BUSINESS PRIME (Standard Character Mark)
`Filed: October 28, 2019
`Published in the Official Gazette: August 25, 2020
`
`In Re: Application Serial No. 88/671,197
`
`
`
`For the Mark:
`Filed: October 28, 2019
`Published in the Official Gazette: August 25, 2020
`
`
`
`
`NEW PRIME, INC.,
`
`
`
`
`
`AMAZON TECHNOLOGIES, INC.,
`
`
`
`
`
`
`v.
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`Opposition No.
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`
`
`New Prime, Inc., d/b/a Prime Inc., a corporation organized and existing under the laws of
`
`the State of Nebraska, with its principal place of business located at 2740 North Mayfair Avenue,
`
`Springfield, Missouri 65803 (“Opposer”), believes that it will be damaged by the registration of
`
`the marks shown in Application Serial Nos. 88/671,191 and 88/671,197 (referred to collectively
`
`as the “Accused Marks”) and hereby opposes the same. As grounds for its Opposition, Opposer
`
`alleges as follows:
`
`
`
`
`
`
`
`
`
`1
`
`

`

`Opposer’s PRIME INC. Marks
`
`1.
`
`Opposer is a leading transportation company founded in 1970 that provides
`
`refrigerated, flatbed, tanker, and intermodal transportation, trucking, and shipping services
`
`throughout the United States and internationally.
`
`2.
`
`Opposer currently has more than 14,500 remotely-monitored, temperature-
`
`controlled trailers in service throughout the United States and internationally and projects growth
`
`of at least 1,500 to 3,000 additional trailers per year.
`
`3.
`
`Opposer is one of the largest and most successful freight carriers in the United
`
`States. Opposer distributes and provides its transportation, trucking, and shipping services in all
`
`48 contiguous U.S. states, as well as in Canada and Mexico, through its network of approximately
`
`7,000 trucks and more than 14,500 trailers operated by thousands of drivers.
`
`4.
`
`Since at least as early as January 30, 1980, Opposer has continuously used the mark
`
`PRIME INC.—in both standard characters and stylized lettering—throughout the United States
`
`and internationally in connection with its transportation, trucking, and shipping services (the
`
`“PRIME INC. Marks”).
`
`5.
`
`Since at least as early as January 1, 1990, Opposer has continuously used the
`
`PRIME INC. Marks in commerce throughout all 48 contiguous U.S. states, as well as in Canada
`
`and Mexico.
`
`6.
`
`Opposer prominently displays the PRIME INC. Marks, for example, on its website,
`
`on various social media platforms, in written advertisements and promotional materials, and on
`
`each of its approximately 7,000 trucks and more than 14,500 trailers operated throughout all 48
`
`contiguous U.S. states, as well as in Canada and Mexico. Representative specimens of Opposer’s
`
`use of the PRIME INC. Marks in commerce are attached collectively as Exhibit A.
`
`
`
`2
`
`

`

`7.
`
`Opposer has extensively marketed, advertised, and promoted its transportation,
`
`trucking, and shipping services under the PRIME INC. Marks throughout the United States and
`
`internationally.
`
`8.
`
`Every year since at least 2009, Opposer’s trucks have traveled over 500 million
`
`miles throughout all 48 contiguous U.S. states. Every year since at least 2015, Opposer’s trucks
`
`and trailers have traveled over 700 million miles throughout all 48 contiguous U.S. states. These
`
`trucks and trailers operate not only as vessels to transport goods, but also as traveling “billboards”
`
`for Opposer and its services—billboards prominently and conspicuously placed before the eyes of
`
`drivers and passengers on interstates, highways, and roads throughout all 48 contiguous U.S. states
`
`every single day for at least the last 30 years.
`
`9.
`
`In addition to advertising its services through the display of the PRIME INC. Marks
`
`on its thousands of trucks and trailers traveling throughout all 48 contiguous U.S. states, Opposer
`
`also advertises its services through direct consultation and solicitation by its network of sales
`
`representatives throughout the United States, Canada, and Mexico.
`
`10.
`
`Opposer also uses more traditional methods of advertising, including print media
`
`(e.g., Opposer’s Prime Ways magazine) and other written advertisements and promotional
`
`materials disseminated to consumers and the general public throughout the United States for at
`
`least the last forty years.
`
`11.
`
`In addition, Opposer has prominently displayed the PRIME INC. Marks on its
`
`website since at least 1996, and on various social media platforms (including Facebook, Instagram,
`
`Twitter, YouTube, and LinkedIn) since at least 2011. Opposer has also advertised its services
`
`under the PRIME INC. Marks via the nationwide sale of branded apparel and accessories through
`
`its online store located at www.primeincstore.com since at least 2012.
`
`
`
`3
`
`

`

`12.
`
`Every year since at least 2013, and in addition to its ubiquitous advertising on its
`
`trucks and trailers, Opposer has spent multiple millions of dollars on U.S. advertising to promote
`
`its services.
`
`13.
`
`Opposer’s annual revenue on sales of goods and/or services offered under the
`
`PRIME INC. marks is in the billions of dollars, and has been for each year since at least 2011.
`
`14.
`
`15.
`
`Opposer employs more than 8,500 drivers nationwide.
`
`Opposer has operated a network of more than 4,500 trucks and more than 7,000
`
`trailers throughout all 48 contiguous U.S. states every year since at least 2011.
`
`16.
`
`Opposer has operated facilities throughout the United States, including in
`
`Springfield, Missouri; Pittston, Pennsylvania; Salt Lake City, Utah; Denver, Colorado; Laredo,
`
`Texas; Sherwood, Oregon; Oxnard, California; Auburndale, Florida; Miami, Florida; Pierson,
`
`Florida; Reed City, Michigan; Lewiston, Maine; Olney, Illinois; Decatur, Indiana; Port
`
`Wentworth, Georgia; Bellingham, Washington; and Duke, Oklahoma.
`
`17.
`
`The PRIME INC. Marks are arbitrary in that their dominant component—the word
`
`“prime”—has a meaning that has no direct relation to Opposer’s services. Thus, the PRIME INC.
`
`Marks are inherently distinctive identifiers of Opposer and its services.
`
`18.
`
`At the very least, as a result of Opposer’s continuous use of the PRIME INC. Marks
`
`in connection with its transportation, trucking, and shipping services throughout the United States
`
`and internationally for more than forty years, the PRIME INC. Marks have acquired secondary
`
`meaning as distinctive identifiers of Opposer and its services.
`
`19.
`
`As a result of Opposer’s extensive and continuous use and promotion of the PRIME
`
`INC. Marks in connection with its transportation, trucking, and shipping services throughout the
`
`United States and internationally for more than four decades, the PRIME INC. Marks have become
`
`
`
`4
`
`

`

`well and favorably known, and famous, to consumers and the general public throughout the United
`
`States as associated with Opposer, its services, and its widespread recognition and reputation as a
`
`leader in the transportation, trucking, and shipping industry. Opposer therefore has established
`
`substantial and valuable goodwill in the PRIME INC. Marks, which have become valuable assets
`
`of Opposer.
`
`20.
`
`For all of the foregoing reasons, Opposer has established significant common law
`
`rights throughout the United States in the PRIME INC. Marks.
`
`21.
`
`On December 16, 2011, Opposer filed Application Serial No. 85/497,826 for the
`
`stylized PRIME INC. Mark, depicted below, covering “[t]ransportation services by truck” in Class
`
`39 based on first use anywhere and first use in interstate commerce as early as January 30, 1980:
`
`
`The USPTO examining attorney assigned to Application Serial No. 85/497,826
`
`22.
`
`refused to register the stylized PRIME INC. Mark, citing Applicant Amazon Technologies, Inc.’s
`
`(“Applicant”) U.S. Registration No. 3,234,643 for the standard character mark PRIME covering,
`
`inter alia, an “[e]xpedited shipping service for others” in Class 39, and finding a likelihood of
`
`confusion as between these two marks based on the presumptive overlap in services offered in
`
`connection with the marks and the “identical” nature of the dominant component of the marks.
`
`Copies of the examining attorney’s Office Actions dated March 31, 2012, October 29, 2012, and
`
`May 23, 2013, are attached as Exhibits B, C, and D, respectively.
`
`23.
`
`Application Serial No. 85/497,826 abandoned on April 2, 2014.
`
`
`
`5
`
`

`

`24.
`
`On August 18, 2017, Opposer filed Application Serial No. 87/575,242 for the
`
`standard character PRIME INC. Mark covering “[t]ransportation services by truck” in Class 39
`
`based on first use anywhere and first use in interstate commerce as early as January 30, 1980.
`
`25.
`
`In an Office Action dated October 31, 2017, the USPTO examining attorney
`
`assigned to Application Serial No. 87/575,242 cited, inter alia, certain applications owned by
`
`Applicant that were filed before Application Serial No. 87/575,242—including U.S. Application
`
`Serial Nos. 87/394,793, 87/394,812, 87/177,080, and 87/033,547—as bases for the refusal of
`
`registration of the standard character PRIME INC. Mark “because of a likelihood of confusion
`
`with” these PRIME-formative marks. A copy of this Office Action is attached as Exhibit E.
`
`26.
`
`On January 24, 2018, Opposer filed a Notice of Opposition in the USPTO’s
`
`Trademark Trial and Appeal Board, Opposition No. 91239114, in which it opposed Applicant’s
`
`U.S. Application Serial Nos. 87/394,793 and 87/394,812 on the grounds of likelihood of confusion
`
`under § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), false suggestion of connection under § 2(a)
`
`of the Lanham Act, 15 U.S.C. § 1052(a), and no bona fide intent to use under § 1 of the Lanham
`
`Act, 15 U.S.C. § 1051.
`
`27.
`
`Also on January 24, 2018, Opposer filed a Petition for Cancellation in the USPTO’s
`
`Trademark Trial and Appeal Board, Cancellation No. 92067774, in which it sought cancellation
`
`of Applicant’s U.S. Registration No. 3,234,643 on the grounds of fraud under § 14(3) of the
`
`Lanham Act, 15 U.S.C. § 1064(3), and false suggestion of connection under § 2(a) of the Lanham
`
`Act, 15 U.S.C. § 1052(a).
`
`28.
`
`On May 22, 2018, the USPTO examining attorney suspended action on U.S.
`
`Application Serial No. 87/575,242 in view of, inter alia, Opposer’s Opposition No. 91239114. As
`
`another basis for suspension, the examining attorney stated that “action on [U.S. Application Serial
`
`
`
`6
`
`

`

`No. 87/575,242] is suspended until the earlier-filed referenced application(s) [including those
`
`referenced in paragraph 25 above] is either registered or abandoned.” A copy of the examining
`
`attorney’s Suspension Notice is attached as Exhibit F.
`
`29.
`
`On December 3, 2018, Opposer filed a Notice of Opposition in the USPTO’s
`
`Trademark Trial and Appeal Board, Opposition No. 91245113, in which it opposed Amazon
`
`Technologies’ U.S. Application Serial Nos. 87/033,547 and 87/033,480 on the grounds of
`
`likelihood of confusion under § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), false suggestion of
`
`connection under § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), and no bona fide intent to use
`
`under § 1 of the Lanham Act, 15 U.S.C. § 1051.
`
`30.
`
`On February 6, 2019, Opposer filed a Notice of Opposition in the USPTO’s
`
`Trademark Trial and Appeal Board, Opposition No. 91246273, in which it opposed Amazon
`
`Technologies’ U.S. Application Serial No. 87/177,080 on the grounds of likelihood of confusion
`
`under § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), false suggestion of connection under § 2(a)
`
`of the Lanham Act, 15 U.S.C. § 1052(a), and no bona fide intent to use under § 1 of the Lanham
`
`Act, 15 U.S.C. § 1051.
`
`31.
`
`On August 8, 2019, the USPTO examining attorney further suspended action on
`
`U.S. Application Serial No. 87/575,242 in view of, inter alia, Opposer’s Opposition Nos.
`
`91239114, 91245113, and 91246273. A copy of the examining attorney’s Suspension Notice is
`
`attached as Exhibit G.
`
`Applicant’s BUSINESS PRIME Marks
`
`32.
`
`On October 28, 2019, Applicant filed Application Serial No. 88/671,191 and
`
`Application Serial No. 88/671,197 (the “Opposed Applications”) to register the standard character
`
`mark BUSINESS PRIME and
`
` (the “Accused Marks”), on the
`
`
`
`7
`
`

`

`Principal Register for the following Class 39 services: “Transport of goods; Shipping, delivery,
`
`and storage of goods; Goods warehousing; Merchandise packaging for others; Courier services;
`
`Coordinating transportation, shipping, and delivery services of parcel containers and goods of
`
`others; Providing transportation, shipping, and delivery information; providing transportation,
`
`shipping, and delivery consultancy and advisory services; vehicle rental; truck rental.”
`
`33.
`
`Applicant filed the Opposed Applications under § 1(b) of the Lanham Act, 15
`
`U.S.C. § 1051(b), alleging an intent to use the Accused Marks as trademarks and/or service marks
`
`in the United States in connection with the Class 39 services recited above.
`
`34.
`
`The USPTO examining attorney assigned to the Opposed Applications, in Office
`
`Actions dated January 22, 2020, required that Applicant amend its applications to state that “[n]o
`
`claim is made to the exclusive right to use “BUSINESS” apart from the mark as shown.” The
`
`examining attorney determined that the term “business” was unregisterable as not inherently
`
`distinctive and merely descriptive of Applicant’s services. Applicant amended the Opposed
`
`Applications consistent with the examining attorney’s requirement on July 21, 2020. Thus,
`
`“prime” is the dominant component of both the Accused Marks and Opposer’s PRIME INC.
`
`Marks. Copies of these Office Actions are attached at Exhibits H and I.
`
`35.
`
`36.
`
`The Opposed Applications published on August 25, 2020.
`
`On September 11, 2020, Opposer timely filed a request for a ninety-day extension
`
`of time to oppose the Opposed Applications. The Board granted this request the same day,
`
`extending the opposition deadline to December 23, 2020.
`
`COUNT I
`Likelihood of Confusion
`
`Opposer realleges and incorporates by reference all preceding allegations as though
`
`37.
`
`set forth in full here.
`
`
`
`8
`
`

`

`38.
`
`Opposer’s use of the PRIME INC. Marks in commerce has priority over and
`
`precedes Applicant’s use of the Accused Marks.
`
`39.
`
`The Accused Marks so resemble Opposer’s PRIME INC. Marks as to be likely,
`
`when used in connection with services identical or closely related to the transportation, trucking,
`
`and shipping services offered by Opposer under the PRIME INC. Marks, to cause consumer
`
`confusion, mistake, or deception under § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`40.
`
`The Accused Marks are identical or substantially similar in appearance, sound,
`
`meaning, and commercial impression when compared to the PRIME INC. Marks. The dominant
`
`component of each of these marks—the word “prime”—is the same. Indeed, the USPTO
`
`examining attorney assigned to the Opposed Applications required disclaimers of the word
`
`“business,” just as the USPTO examining attorneys assigned to Prime Inc.’s Application Serial
`
`Nos. 85/497,826 and 87/575,242 required disclaimers of the word “inc.”
`
`41.
`
`The Accused Marks are, will be, or could be used by Applicant in connection with
`
`Class 39 services—including those recited in the Opposed Applications—that are identical or
`
`closely related to the services offered by Opposer under the PRIME INC. Marks.
`
`42.
`
`Indeed, the Class 39 services recited in the Opposed Applications contain no
`
`limitation as to their nature, type, channels of trade, or class of purchasers, and so it is presumed
`
`that these services are, will be, or could be offered by Applicant through the same channels of
`
`trade and to the same consumers as the services offered by Opposer under the PRIME INC. Marks.
`
`43.
`
`If Applicant is permitted to register the Accused Marks for Class 39 services,
`
`including those recited in the Opposed Applications, consumer confusion is likely to result due to
`
`the similarity between the Accused Marks and PRIME INC. Marks and the similarity of the
`
`services provided by Opposer and Applicant under their respective marks. Persons familiar with
`
`
`
`9
`
`

`

`the parties’ services offered under their respective marks would be likely to be confused, mistaken,
`
`and/or deceived as to whether some affiliation, connection, or association exists between Applicant
`
`and Opposer, and/or as to the origin, sponsorship, or approval of the parties’ services offered under
`
`their respective marks, including by erroneously believing that services provided by Applicant
`
`under the Accused Marks are provided, authorized, or endorsed by or in some manner associated
`
`with Opposer, and/or that services provided by Opposer under the PRIME INC. Marks are
`
`provided, authorized, or endorsed by or in some manner associated with Applicant, and/or that
`
`Opposer is somehow infringing the Accused Marks. In addition, such persons would likely
`
`associate any defect, objection, or fault found with Applicant’s Class 39 services offered under the
`
`Accused Marks with Opposer’s transportation, trucking, and shipping services offered under the
`
`PRIME INC. Marks. Such confusion is likely to cause the wrongful appropriation of Opposer’s
`
`valuable goodwill associated with the PRIME INC. Marks, causing damage and injury to Opposer.
`
`44.
`
`If Applicant is permitted to register the Accused Marks for Class 39 services,
`
`including those recited in the Opposed Applications, it would thereby obtain at least a prima facie
`
`exclusive right to use the Accused Marks for this purpose, causing further damage and injury to
`
`Opposer.
`
`45.
`
`For all of the foregoing reasons, the Opposed Applications should be refused under
`
`§ 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`COUNT II
`False Suggestion of Connection
`
`Opposer realleges and incorporates by reference all preceding allegations as though
`
`
`46.
`
`set forth in full here.
`
`
`
`10
`
`

`

`47.
`
`Opposer’s name and identity are reflected in and symbolized by the PRIME INC.
`
`Marks, which Opposer has continuously used in connection with its transportation, trucking, and
`
`shipping services throughout the United States and internationally for at least 40 years.
`
`48.
`
`The Accused Marks are the same as or a close approximation of Opposer’s name
`
`and identity reflected in and symbolized by the PRIME INC. Marks. The dominant component of
`
`the Accused Marks and PRIME INC. Marks—the word “prime”—is the same, and therefore the
`
`marks are identical in appearance, sound, meaning, and commercial impression. Indeed, the
`
`USPTO examining attorney assigned to the Opposed Applications required disclaimers of the
`
`word “business,” just as the USPTO examining attorneys assigned to Prime Inc.’s Application
`
`Serial Nos. 85/497,826 and 87/575,242 required disclaimers of the word “inc.”
`
`49.
`
`The Accused Marks, when used in connection with services identical or closely
`
`related to the transportation, trucking, and shipping services offered by Opposer under the PRIME
`
`INC. Marks, including the Class 39 services recited in the Opposed Applications, point uniquely
`
`and unmistakably to Opposer and its services, and is likely to be recognized by consumers as such.
`
`As a result of Opposer’s continuous use of the PRIME INC. Marks throughout the United States
`
`and internationally in connection with its transportation, trucking, and shipping services for more
`
`than 40 years, consumers have come to view the word “prime” as pointing uniquely and
`
`unmistakably to Opposer when used in connection with services of this type.
`
`50.
`
`Opposer is not connected with Applicant or any of its goods or services, including
`
`those recited in the Opposed Applications. Neither Opposer nor Applicant has any ownership
`
`interest in the other, nor has Opposer ever endorsed or sponsored Applicant or any of its goods or
`
`services.
`
`
`
`11
`
`

`

`51.
`
`As a result of Opposer’s longstanding reputation as a leader in the transportation,
`
`trucking, and shipping industry and its continuous use of the PRIME INC. Marks throughout the
`
`United States and internationally in connection with its business for nearly four decades, Opposer’s
`
`name and identity, and the PRIME INC. Marks which reflect and symbolize Opposer’s name and
`
`identity, have become well-known throughout the industry, including among Opposer’s
`
`competitors and consumers. Thus, any use by Applicant of the Accused Marks in connection with
`
`services identical or closely related to the transportation, trucking, and shipping services offered
`
`by Opposer under the PRIME INC. Marks, including the Class 39 services recited in the Opposed
`
`Applications, would lead consumers to falsely presume a connection between Opposer and
`
`Applicant.
`
`52.
`
`Thus, the Accused Marks, as used or intended to be used by Applicant, falsely
`
`suggest a connection with Opposer and its services.
`
`53.
`
`If Applicant is permitted to register the Accused Marks for Class 39 services,
`
`including those recited in the Opposed Applications, it would thereby obtain at least a prima facie
`
`exclusive right to use the Accused Marks for this purpose, causing further damage and injury to
`
`Opposer.
`
`54.
`
`For all of the foregoing reasons, the Opposed Applications should be refused under
`
`§ 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
`
`COUNT III
`No Bona Fide Intent to Use
`
`Opposer realleges and incorporates by reference all preceding allegations as though
`
`
`55.
`
`set forth in full here.
`
`56.
`
`For an activity to constitute a separately registrable service under the Lanham Act,
`
`it must be done primarily for the benefit of others and be qualitatively different from anything
`
`
`
`12
`
`

`

`necessarily done in connection with the sale of the applicant’s goods or the performance of another
`
`service.
`
`57.
`
`On information and belief, as of October 28, 2019, the date on which the Opposed
`
`Applications were filed, Applicant had no bona fide intent to use the Accused Marks in connection
`
`with Class 39 services to be offered primarily for the benefit of the public at large and separate
`
`from Applicant’s principal activities of providing retail store or online retail store services and/or
`
`offering a related loyalty program. Nor has Applicant had any such bona fide intent at any time
`
`since that date.
`
`58.
`
`On information and belief, as of October 28, 2019, the date on which the Opposed
`
`Applications were filed, even if Applicant intended to offer any Class 39 services in connection
`
`with the Accused Mark, it intended to do so only to support its principal activities of providing
`
`retail store or online retail store services and/or offering a related loyalty program. Thus, whatever
`
`Class 39 services Applicant may have intended to offer in connection with the Accused Marks as
`
`of the date of the Opposed Applications is mainly for Applicant’s own benefit, not the benefit of
`
`others.
`
`59.
`
`Further, and relatedly, whatever Class 39 services Applicant may have intended to
`
`offer in connection with the Accused Marks as of the date of the Opposed Applications are not
`
`qualitatively different from anything necessarily done in connection with Applicant’s retail store,
`
`online retail store, and loyalty program services. At most, the Class 39 services Applicant may
`
`have intended to offer in connection with the Accused Marks as of the date of the Opposed
`
`Applications are routine or expected activities to support Applicant’s retail store, online retail
`
`store, and loyalty program services.
`
`
`
`13
`
`

`

`60.
`
`Thus, whatever Class 39 services Applicant may have intended to offer in
`
`connection with the Accused Marks as of the date of the Opposed Applications are not separately
`
`registrable services under the Lanham Act.
`
`61.
`
`Because Applicant had no bona fide intent to use the Accused Marks in connection
`
`with separately registrable Class 39 services as of the date of the Opposed Applications, the
`
`Accused Marks are not properly registrable for Class 39 services.
`
`62.
`
`For all of the foregoing reasons, the Opposed Applications should be refused under
`
`§ 1 of the Lanham Act, 15 U.S.C. § 1051.
`
`WHEREFORE, Opposer requests that the Trademark Trial and Appeal Board sustain its
`
`Opposition and refuse registration of the Accused Marks.
`
`Dated: December 23, 2020
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`LATHROP GPM LLP
`
`
`
`
`
`/Amy Brozenic/
`Amy Brozenic
`10851 Mastin Boulevard
`Building 82, Suite 1000
`Overland Park, KS 66210-1669
`T: (913) 451-5103
`F: (913) 451-0875
`
`Travis W. McCallon
`Eric D. Sidler
`2345 Grand Boulevard
`Suite 2200
`Kansas City, MO 64108
`T: (816) 292-2000
`F: (816) 292-2001
`ipdocketing@lathropgpm.com
`amy.brozenic@lathropgpm.com
`
`Attorneys for Opposer
`
`14
`
`

`

`
`
`CERTIFICATE OF ONLINE SUBMISSION
`
`I hereby certify that a true and correct copy of this NOTICE OF OPPOSITION was filed
`
`online with the Trademark Trial and Appeal Board using the ESTTA on December 23, 2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Amy Brozenic/
`Amy Brozenic
`
`
`
`
`
`
`33579643v.4
`
`15
`
`

`

`
`
`
`
`
`
`EXHIBIT A.1
`EXHIBIT A.1
`
`
`
`

`

`
`
`
`
`I’I‘JQIIIIII£EIhttp:I'll'prlmelnc.cnmII
`IXII Eemmladmousmmifilller gopmmpdffincsfiefikmp HIIéhpenfiindeDutficurrp-amfincs- E)"
`I i: flam¢mw El mmm Emu-mitm flfimflafimflElmmfiwEl.mmthnfimam-ww
`
`afiTrqdfjnq.JqIIzts, Trude.DrI'IIIng.JIobsIIPachi (13!: Training, ...
`I
`13- in?“ a"!
`i_I #3 FagigI=-I-.- W$ minis
`
`VI I-_ -III"‘—1-II§.I I}? prime trucking Springfield
`
`ABOUT '55
`
`[IRI‘UERE
`
`SALES TERRITORIES
`
`'EI'IIPFEITE-
`
`kCAIlRIERS
`
`CAREEIEI r' JOBS WHJ‘T'S NEW
`
`PHIM Em
`
`mHDHE '-.-_-’FAQ5
`
`fiCDMF‘AN‘I’ FIBRE ECDNTAL—I'US giafilTFl'lAP
`
`-
`
`'
`
`My
`“Prime is a Igreat. place to work!
`dis'
`Cher-1- Stage Tags-Sin,
`is
`fanlgsxic,
`|
`love working with hi
`'
`
`LEARN MORE
`
`

`

`:j AItEERS ," JOE'S Wi-ii‘fi '5 I'EE
`hit-{3111' US
`DRIVERS
`Shitf 1ERI11'I'CIRIEE
`EEIEPIJERS
`CARRIERS-
`
`
`
`Key Personnel
`
`Company Store
`
`Technologv
`FaCIlities
`
`a; person.
`Frin'iE values I
`
`Documentation
`
`-> Alcohol Permits.
`
`ass-Io 'r‘u'ei-g-ht Exemptions
`+ Certificates oF Insurance
`
`9 Hazn'lat Permits
`
`-> Operating Authorities
`-> rJther Documents
`
`minor-1e Dos-:35 “com—mm site.
`
`El CIL'H'I'N. T 3J5
`
`ear. SE'IEEJ.
`
`Home
`
`About Us: Companv [nFormation
`
`Company Information
`Prime Inc., North America‘s nlost successful refrigerated,
`flatbed, and tanker carrier, provides safe, reliable and
`continuous on-time service to its expanding international
`customer base.
`
`Independent contractors routinely benefit from Prime's
`exceptional lease plan which offers virtually unlimited earning
`potential. Experienced contractors can get into a late-model
`EDD-horsepower Freightliner with no money down and no
`credit check.
`
`For more information about Prime. customers should call
`1-800-348-4550. Drivers should call our
`
`Flatbed Division at J-BDD-fidZ-SQD?, our
`Refrigerated Division at I-BDfl-221-4535 or our
`Tanker Division at 1-800-232-?085.
`
`
`
`

`

`
`
`hmmq [hm-r5
`
`'Snllu Tr'llllfilF“.
`
`'Ehuzkm
`
`{Amt-r.
`
`farm-rt.
`
`Sir“
`
`PRIME inc.
`Hum»
`Maul
`Pull-Elli.“ 9"er
`
`Welcome To Prime Inc.
`I‘nmu Inc len Amman" mm: Lueccm‘ul lllkaolulli‘fl. “Aw-M1 ran—Aer and
`Inerrradal vucknrg (“WWW Ear-'1 you COL am: an yam dulins; nmnng wlm
`nun-“x N:uu-uu~4—.-p nmm- immunn an: wflllr- waHMg rm mo nr lhr mu
`‘luiklhq :omwnm m 1;» bun’wu'
`
`at min Om Team
`
`3! Ship Wilh tn
`
`
`
`0 Money Guarantee
`Wehelww that commas should!» pm: an
`96de of 1M IW ‘rnm m we
`Mm ¢ m mt alum
`Plugrlll not madam comm
`
`0 Driver Apptlcallon
`Inc.
`1M yuu In yaw Into-m |n Fume.
`In W In:
`a
`slum-n DWIIm ulna»
`nunm-w- Du! m WW io-
`emplnymenl. Cid: hflnwnupiy.
`
`a Onllne Freight Quote
`We efler less Haul “Hood. Inlermadib‘mi.
`1:;me mm Unit mm. «as.
`whim-mod and dry \I'Ifl law and “no
`'19th Ink-mm noun ileum
`
`rAEa-‘I r.'\.T.r..‘
`
`
`
`r-—-u1n|- r.- —.
`
`YOU SEE US NhTIOhM'IDE. HERE'S WHO WE flRE.
`«1. rum-u
`Hahn.- |
`l': fit-1.!» Ml
`'\ mu halLIIUMI'Ju‘ um
`and Lima"
`u: Emu:
`IZOUIFLV'I' P'D'I‘d'flfl m. (Em and
`l unbnm n r. on |=ln|l 'd‘flk .110 d-
`new) mlfln‘flwul max-m.
`[m
`
`I! wu'ur bunk-m I'm a {nil mmnq luv." Ind and Id..- u. .m Ia
`a :mpxr; w: tun lug-Mun more: M and may e! the!