Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1105152
`12/30/2020
`
`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
`
`Aksarben Foods, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`01/02/2021
`
`PO BOX 31013
`OMAHA, NE 68131
`UNITED STATES
`
`Attorney informa-
`tion
`
`MARY ANN NOVAK
`HILGERS GRABEN PLLC
`575 FALLBROOK BOULEVARD
`SUITE 202
`LINCOLN, NE 68521
`UNITED STATES
`Primary Email: trademark@hilgersgraben.com
`4022182106
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88749561
`
`Publication date
`
`11/03/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/30/2020
`
`Opposition Peri-
`od Ends
`
`01/02/2021
`
`Chester's International, LLC
`2020 CAHABA ROAD
`BIRMINGHAM, AL 35223
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 016. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Paper products, namely, napkins, carry out
`boxes, bags, and posters
`
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Marinades; Mixes for making baking bat-
`ters; Mixes for making batters for fried foods; Breading, namely, coatings for foods made with bread-
`ing; Mixes for makingbreading; frozen biscuits
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computerized on-line ordering in the field of
`restaurant and food preparation equipment, paper products and packaging; On-line retail store ser-
`vices in the field of restaurant and food preparation equipment, paper products and packaging;
`providing business advice in the field ofestablishment and operation of restaurants and free standing
`
`
`ESTTA1105152
`12/30/2020
`
`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
`
`Aksarben Foods, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`01/02/2021
`
`PO BOX 31013
`OMAHA, NE 68131
`UNITED STATES
`
`Attorney informa-
`tion
`
`MARY ANN NOVAK
`HILGERS GRABEN PLLC
`575 FALLBROOK BOULEVARD
`SUITE 202
`LINCOLN, NE 68521
`UNITED STATES
`Primary Email: trademark@hilgersgraben.com
`4022182106
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88749561
`
`Publication date
`
`11/03/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`12/30/2020
`
`Opposition Peri-
`od Ends
`
`01/02/2021
`
`Chester's International, LLC
`2020 CAHABA ROAD
`BIRMINGHAM, AL 35223
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 016. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Paper products, namely, napkins, carry out
`boxes, bags, and posters
`
`Class 030. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Marinades; Mixes for making baking bat-
`ters; Mixes for making batters for fried foods; Breading, namely, coatings for foods made with bread-
`ing; Mixes for makingbreading; frozen biscuits
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Computerized on-line ordering in the field of
`restaurant and food preparation equipment, paper products and packaging; On-line retail store ser-
`vices in the field of restaurant and food preparation equipment, paper products and packaging;
`providing business advice in the field ofestablishment and operation of restaurants and free standing
`
`
`
`food stands; operating free standing food preparation and vending stands, namely, retail vending
`stand services featuring cooked chicken, biscuits, potato wedges, and dipping sauces and featuring
`entrees for which the main course is cooked chicken; operatingfree standing food preparation and
`vending stands, namely, providing food kioskservices
`
`Class 043. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Restaurant services; food preparation ser-
`vices; take-out food services, namely,take-out restaurant services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`CHICKEN ON THE RUN
`
`breadings; mixes for making batters for fried foods; marinades; food
`rubs; restaurant services; take-out services; providing business ad-
`vice to others in the field of establishment and operation of restaurant
`and take-out food services; paper products, including carry out boxes,
`bags, napkins, and signage; apparel; banners
`
`Attachments
`
`2020-12-30 Notice of Opposition re Chicken on the Run.pdf(90349 bytes )
`Exhibit A - Chicken on the Run Trademark.pdf(1990811 bytes )
`
`Signature
`
`/Mary Ann Novak/
`
`Name
`
`Date
`
`Mary Ann Novak
`
`12/30/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 88/749,561
`For the mark CHICKEN ON THE RUN in International
`Classes 16, 30, 35 and 43
`Published: November 3, 2020
`
`
`Aksarben Foods, LLC
`
`
`Opposer,
`
`
`
`v.
`
`
`Chester’s International LLC
`
`
`Applicant.
`
`
`Opposition No. ____________
`
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`NOTICE OF OPPOSITION
`
`Aksarben Foods, LLC, a Nebraska limited liability company, having a mailing address of
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`PO Box 31013, Omaha, Nebraska 68131 (hereinafter “Opposer”) believes that it is or would be
`
`damaged by the issuance of registration of the mark show in application Serial No. 88/749,561
`
`filed by Chester’s International LLC (“Applicant”) and published for opposition on November 3,
`
`2020 and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges that:
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`1.
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`Opposer is a Nebraska limited liability company, which does business as
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`Flavor-Crisp.
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`2.
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`Opposer owns common law rights in the CHICKEN ON THE RUN mark,
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`which has been in continuous use since at least 1996.
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`3.
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`Opposer uses its CHICKEN ON THE RUN mark for breadings (which can be
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`
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`used on poultry, seafood, potatoes, vegetables and more), mixes for making batters for fried foods,
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`marinades, and food rubs, which it sells to food distributors, restaurants, and caterers
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`throughout the United States, as well as abroad. Opposer also uses its CHICKEN ON THE
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`RUN mark in connection with restaurant services and take-out services that feature chicken,
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`fries, and a variety of sides, as well as to provide business advice to others in the field of
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`establishment and operation of restaurant and take-out food services. Opposer further uses its
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`CHICKEN ON THE RUN mark on paper products, including but not limited to carry out
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`boxes, bags, napkins, and signage, as well as on apparel and banners. Collectively the goods
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`and services in this paragraph are referred to as “Opposer’s Goods and Services.”
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`4.
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`Attached hereto as Exhibit A are some representative examples of some uses
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`Opposer has made and is making of its CHICKEN ON THE RUN mark.
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`5.
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`Opposer’s CHICKEN ON THE RUN mark, which has been in use since at least
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`1996, is inherently distinctive of Opposer’s Goods and Services. Alternatively, Opposer’s
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`mark had become distinctive of Opposer’s Goods and Services throughout the United States
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`long before the January 7, 2020 filing date of the opposed application and long before
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`Applicant made any use of its mark in commerce.
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`6.
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`Opposer’s CHICKEN ON THE RUN mark has been extensively used and
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`promoted throughout the United States for years and goods bearing Opposer’s CHICKEN ON
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`THE RUN mark are sold throughout the United States.
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`7.
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`By virtue of sales, advertising, and promotion of goods and services bearing
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`Opposer’s CHICKEN ON THE RUN mark, Opposer has built significant goodwill in that
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`mark.
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`8.
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`Applicant touts itself as a leader in the quick-serve restaurant concept with over
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`2
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`
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`1300 locations.
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`9.
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`According to the United States Patent and Trademark Office records, on or
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`about January 7, 2020, Applicant filed Application Serial No. 88/749,561 (the “Application”).
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`10.
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`The Application, which is based on an intent to use the applied-for mark in
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`commerce pursuant to Section 1(b), seeks to register the mark CHICKEN ON THE RUN
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`(“Applicant’s Mark”) for “Paper products, namely, napkins, carry out boxes, bags, and
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`posters” in International Class 16; for “Marinades; Mixes for making baking batters; Mixes
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`for making batters for fried foods; Breading, namely, coatings for foods made with breading;
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`Mixes for making breading; frozen biscuits” in International Class 30; for “Computerized on-
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`line ordering in the field of restaurant and food preparation equipment, paper products and
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`packaging; On-line retail store services in the field of restaurant and food preparation
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`equipment, paper products and packaging; providing business advice in the field of
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`establishment and operation of restaurants and free standing food stands; operating free
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`standing food preparation and vending stands, namely, retail vending stand services featuring
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`cooked chicken, biscuits, potato wedges, and dipping sauces and featuring entrees for which
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`the main course is cooked chicken; operating free standing food preparation and vending
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`stands, namely, providing food kiosk services” in International Class 35; and for “Restaurant
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`services; food preparation services; take-out food services, namely, take-out restaurant
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`services” in International Class 43 (collectively, “Applicant’s Goods and Services”).
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`11. Upon information and belief, Applicant had not used the CHICKEN ON THE
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`RUN mark on all of Applicant’s Goods and Services as of the January 7, 2020 filing date of
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`the Application and had made no use of the CHICKEN ON THE RUN mark until late 2019.
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`12.
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`The Application was published on November 3, 2020.
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`
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`3
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`
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`13. On December 3, 2020, Opposer requested and was granted a 30-day extension
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`of time to oppose the Application. Opposer timely files this Notice of Opposition.
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`14. All of the goods and services in Classes 16, 30, 35 and 43 in the Application are
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`opposed.
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`15.
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`Opposer would be damaged by Applicant’s registration of the CHICKEN ON THE
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`RUN mark for Applicant’s Goods and Services.
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`16.
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`As a result of Opposer’s use of Opposer’s marks in commerce for Opposer’s
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`Goods and Services, Opposer has common law rights in its CHICKEN ON THE RUN mark
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`that pre-date any rights Applicant may claim in the CHICKEN ON THE RUN mark.
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`17.
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`The mark for which Applicant seeks registration is identical to Opposer’s
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`CHICKEN ON THE RUN mark.
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`18. Applicant’s Goods and Services directly overlap with Opposer’s Goods and
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`Services. In short, Applicant seeks registration of a mark that is identical to Opposer’s mark
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`for identical goods and services.
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`19.
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`To the extent Applicant’s Goods and Services include goods or services that do
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`not directly overlap with Opposer’s Goods and Services, these goods and services are closely
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`related to Opposer’s Goods and Services.
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`20. Upon information and belief, Opposer’s Goods and Services and Applicant’s
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`Goods and Services target the same consumer groups and directly compete with one another.
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`21.
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`Opposer will be damaged by registration of Applicant’s Mark, as Applicant’s Mark
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`when used in connection with Applicant’s Goods and Services so resembles Opposer’s Mark as
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`used in connection with Opposer’s Goods and Services as to be likely to cause confusion, or to
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`cause mistake, or to deceive.
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`4
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`22.
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`Registration of Applicant’s Mark would cause confusion among consumers as to
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`the separate and distinct sources of Applicant’s Goods and Services and Opposer’s Goods and
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`Services and as to the relationship of Applicant and Opposer, thereby damaging Opposer.
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`23.
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`For at least the reasons set forth above, the Application is not registerable pursuant
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`to Section 2(d) of the Trademark Act. 15 U.S.C. §1052(d).
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`WHEREFORE, Opposer prays that Application Serial No. 88/749,561 be rejected, that no
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`registration be issued thereon to Applicant, and that this Opposition be sustained in favor of
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`Opposer.
`
`
`DATED: December 30, 2021
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`Respectfully submitted,
`
`HILGERS GRABEN PLLC
`
`By:
`
`
`
`/s/ Mary Ann Novak
`Mary Ann Novak
`
`
`
`Nebraska Bar No. 24851
`HILGERS GRABEN PLLC
`575 Fallbrook Blvd, Suite 202
`Lincoln, NE 68521
`Telephone: (402) 218-2106
`Facsimile: (402) 413-1880
`
` Counsel for Opposer
` Aksarben Foods, LLC.
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`EXHIBIT A
`EXHIBIT A
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`VV»?
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`Mflfl' EH?
`Fam-'flffifl
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`12/30/2020
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`Flavor-Crisp
`
`Products How to Use Our Story Contact
`
`Seasonings,
`Breading, and
`Marinades
`Flavor-Crisp’s seasoned coatings and
`marinades for chicken, fish, and other
`popular foods have successfully
`produced a loyal following of hungry
`customers for over 60 years. The secret
`is our great taste. Nothing compares to
`the great taste of Flavor-Crisp!
`
`How to Use
`
`Only the Finest Ingredients
`Your customers can tell the difference
`when an inferior breading or seasoning is
`used. Some homemade or lesser quality
`competitor products feature grains and
`https://www.flavor-crisp.com
`
`1/2
`
`
`
`12/30/2020
`seasonings that are not as well suited to
`
`Flavor-Crisp
`
`the needs of commercial frying
`equipment.
`
`Our Products
`
`Flavor-Crisp is
`America’s best-
`kept secret!
`Since 1960!
`
`Our Story
`
`https://www.flavor-crisp.com
`
`2/2
`
`
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