`ESTTA Tracking number:
`ESTTA1114866
`02/17/2021
`
`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
`
`Correspondence
`information
`
`DEL MONTE FOODS, INC.
`02/17/2021
`
`3003 OAK ROAD
`WALNUT CREEK, CA 94598
`UNITED STATES
`
`HARA K. JACOBS
`BALLARD SPAHR LLP
`1735 MARKET STREET, 51ST FLOOR
`SUITE 2000
`PHILADELPHIA, PA 19103
`UNITED STATES
`Primary Email: dm_tmdocketing@ballardspahr.com
`Secondary Email(s): jacobsh@ballardspahr.com, auerbachb@ballardspahr.com,
`deschanej@ballardspahr.com, hargensm@ballardspahr.com
`215-864-8209
`
`Applicant Information
`
`Application No.
`Opposition Filing
`Date
`Applicant
`
`88688695
`02/17/2021
`
`Publication date
`Opposition Peri-
`od Ends
`
`10/20/2020
`02/17/2021
`
`El Coto de Rioja, S.A.
`CAMINO VIEJO DE LOGROñO S/N
`OYóN
`ARABA, E01320
`SPAIN
`
`Goods/Services Affected by Opposition
`
`Class 033. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Wines
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`824504
`
`Application Date
`
`03/07/1966
`
`
`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`02/21/1967
`
`DEL MONTE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Class 032. First use: First Use: 1964/04/23 First Use In Commerce: 1964/04/24
`SOFT DRINKS
`
`U.S. Registration
`No.
`Registration Date
`
`827921
`
`04/25/1967
`
`Application Date
`
`03/03/1966
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DEL MONTE
`
`NONE
`
`Class 032. First use: First Use: 1964/04/23 First Use In Commerce: 1964/04/24
`SOFT DRINKS
`Class U046 (International Class 029, 030). First use: First Use: 1964/10/30 First
`Use In Commerce: 1964/10/30
`CANNED VEGETABLES, CANNED FRUITS, CANNED FRUIT AND VEGET-
`ABLE JUICES, CANNED FISH, DRIED FRUITS, PICKLES, VEGETABLE REL-
`ISHES, HOT PEPPERS, AND CATSUP
`
`U.S. Registration
`No.
`Registration Date
`
`881339
`
`11/25/1969
`
`Application Date
`
`04/23/1969
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DEL MONTE
`
`NONE
`
`Class 032. First use: First Use: 1964/04/23 First Use In Commerce: 1964/04/24
`[ SOFT DRINKS ]
`Class U046 (International Class 001, 005, 029, 030, 031, 032). First use: First
`Use: 1891/10/01 First Use In Commerce: 1891/10/01
`FRESH AND CANNED VEGETABLES, FRESH AND CANNED FRUITS,
`CANNED FRUIT AND VEGETABLE JUICES, [ CANNED FISH, ] DRIED
`FRUITS,PICKLES, VEGETABLE RELISHES, HOT PEPPERS, AND CATSUP
`
`U.S. Registration
`No.
`Registration Date
`
`2295935
`
`11/30/1999
`
`Word Mark
`Design Mark
`Description of
`Mark
`
`DEL MONTE QUALITY
`
`NONE
`
`Application Date
`
`10/15/1998
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Goods/Services
`
`Class 029. First use: First Use: 1940/01/00 First Use In Commerce: 1940/01/00
`processed vegetables, processed fruits,[ seafood, ] dried fruits and raisins,
`sauerkraut and canned peppers
`Class 030. First use: First Use: 1940/01/00 First Use In Commerce: 1940/01/00
`vegetable relishes, tomato-based sauces, and catsup
`Class 032. First use: First Use: 1940/01/00 First Use In Commerce: 1940/01/00
`canned fruit and vegetable juices and drinks consisting primarily of fruit juice and
`water
`
`U.S. Registration
`No.
`Registration Date
`
`2302024
`
`12/21/1999
`
`Application Date
`
`10/16/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DEL MONTE QUALITY
`
`NONE
`
`Class 029. First use: First Use: 1940/01/00 First Use In Commerce: 1940/01/00
`Processed vegetables, processed fruits,dried fruits, raisins, canned peppers and
`sauerkraut [, milk-based drinks withfruit juice and water ]
`Class 030. First use: First Use: 1940/01/00 First Use In Commerce: 1940/01/00
`vegetable relishes, tomato-based saucesand catsup [, tea-based drinks with fruit
`juice and water ]
`Class 032. First use: First Use: 1940/01/00 First Use In Commerce: 1940/01/00
`Canned fruit and vegetable juices and drinks consisting primarily of fruit juice
`and water
`
`Attachments
`
`NOTICE OF OPPOSITION 43677433_1.pdf(470755 bytes )
`
`Signature
`Name
`Date
`
`/Hara Jacobs/
`HARA K. JACOBS
`02/17/2021
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 88/688,695
`
`For the mark: BL CAMINO DEL MONTE
`
`Published: October 20, 2020
`
`_______________________________________
`
`Del Monte Foods, Inc.
`
` Opposer,
`
`
`
`
`
`
`v.
`
`
`
`
`
`El Coto de Rioja, S.A.
`
` Applicant.
`
`______________________________________
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`
`:
`:
`:
`
`
`
`
`
`
`
` Opposition No. ________________
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`In the matter of the application of El Coto de Rioja, S.A. (the “Applicant”) for
`
`registration of the mark BL CAMINO DEL MONTE, as depicted below, Application Serial No.
`
`88/688,695 (the “’695 Application”), filed November 12, 2019, and published for opposition in
`
`the Official Gazette on October 20, 2020:
`
`DMEAST #43677433 v1
`
`
`
`
`
`
`
`1.
`
`Del Monte Foods, Inc., a Delaware corporation having a place of business at 3003
`
`Oak Road, Walnut Creek, CA 94598 (the “Opposer”), believes that it will be damaged by the
`
`registration of the mark shown in the ‘695 Application and hereby opposes the same. The
`
`grounds for opposition are as follows:
`
`2.
`
`Since 1891, Opposer and its predecessors have used the DEL MONTE®
`
`trademark in connection with the production, marketing, and sale of premium quality food and
`
`beverages throughout the United States. Among its many offerings, Opposer sells a broad
`
`selection of fruit and vegetable products and beverages, a variety of sauces and condiments, and
`
`tomatoes and tomato-based products (the “DEL MONTE® Goods”), all of which are sold
`
`nationally under the DEL MONTE® brand. The DEL MONTE® Goods are sold online and in
`
`retail grocery stores across the nation as well as to foodservice providers and the U.S. military.
`
`3.
`
`Opposer is the owner of more than twenty-five incontestable federal trademark
`
`registrations for its renowned and famous marks incorporating its house mark DEL MONTE®
`
`(collectively, the “DEL MONTE® Marks”).
`
`4.
`
`Opposer is the owner of several incontestable federal trademark registrations for
`
`its renowned and famous marks incorporating its house mark DEL MONTE® for fruit juices and
`
`other drinks (Reg. Nos. 824,504; 827,921; 881,339; 2,295,935; and 2,302,024). Attached hereto
`
`as Exhibit A are printouts from the electronic database of the U.S. Patent and Trademark Office
`
`(“USPTO”) showing the current status and title of these registrations.
`
`5.
`
`For example, Del Monte is the owner of an incontestable registration (Reg. No.
`
`881,339) for the mark DEL MONTE® for, among other goods, “canned fruit and vegetable
`
`juices,” which has been registered with the USPTO for over 50 years and has been in continuous
`
`use for 130 years. Del Monte is also the owner of an incontestable registration (Reg. No.
`
`DMEAST #43677433 v1
`
`2
`
`
`
`
`
`824,504) for the mark DEL MONTE® for “soft drinks,” which has been registered with the
`
`USPTO and continuously used for nearly 55 years.
`
`6.
`
`Applicant seeks to register the mark BL CAMINO DEL MONTE for “wines” in
`
`International Class 33, as evidenced by the publication of said mark in the Official Gazette on
`
`October 20, 2020.
`
`7.
`
`The ‘695 Application for the goods herein opposed was filed on November 12,
`
`2019 based on an intent to use the mark pursuant to Section 1(b) of the Trademark Act.
`
`8.
`
`Opposer’s dates of first use of the DEL MONTE® Marks and Opposer’s
`
`registration dates for the DEL MONTE® Marks precede the filing date of the ‘695 Application.
`
`9.
`
`10.
`
`Opposer’s registrations for the DEL MONTE® Marks are valid and subsisting.
`
`Opposer’s use of the DEL MONTE® Marks has been continuous, exclusive, and
`
`commercially significant for many years in connection with the DEL MONTE® Goods.
`
`11.
`
`Opposer’s DEL MONTE® Marks are inherently distinctive as applied to the DEL
`
`MONTE® Goods.
`
`12.
`
`Opposer’s DEL MONTE® Marks are widely recognized by the general
`
`consuming public of the United States as a designation of source of the goods sold under the
`
`DEL MONTE® Marks.
`
`13.
`
`Because of the substantial investment of time and resources nationally to market,
`
`promote, and advertise Opposer’s DEL MONTE® Marks, consumers have come to associate
`
`Opposer’s DEL MONTE® Marks exclusively with Opposer and the DEL MONTE® Goods.
`
`14.
`
`By virtue of Opposer’s continuous use in commerce of the DEL MONTE® Marks
`
`in connection with the DEL MONTE® Goods for more than 120 years, such goods have become
`
`favorably known to the relevant trade and public under the DEL MONTE® Mark.
`
`DMEAST #43677433 v1
`
`3
`
`
`
`
`
`15.
`
`Opposer’s DEL MONTE® Marks have been the subject of substantial unsolicited
`
`media attention and publicity for decades.
`
`16.
`
`Consumers’ actual recognition of the DEL MONTE® Marks is widespread, with
`
`Opposer’s net revenues exceeding $1 billion a year, and Opposer’s products found in
`
`supermarkets across the country.
`
`17.
`
`18.
`
`Opposer’s DEL MONTE® Marks are famous.
`
`Opposer’s DEL MONTE® Goods and the goods in the ‘695 Application are
`
`highly related because they are both beverages made from fruit.
`
`19.
`
`In the ‘695 Application for the goods herein opposed, there are no restrictions on
`
`trade channels, so it must be presumed that the goods identified in the Application will travel
`
`through all trade channels appropriate for goods of that type.
`
`20.
`
`On information and belief, the goods recited in the ‘695 Application and the DEL
`
`MONTE® Goods are intended to be marketed through overlapping channels of trade and are
`
`intended to be sold to overlapping classes of purchasers.
`
`21.
`
`The mark in the ’695 Application, as applied to the goods recited in the
`
`Application, so resembles Opposer’s DEL MONTE® Mark as applied to the DEL MONTE®
`
`Goods that it is likely to cause confusion, mistake, or deception.
`
`22.
`
`The mark in the ’695 Application is confusingly similar to Opposer’s
`
`DEL MONTE® Marks because the mark in the mark in the ’695 Application fully incorporates
`
`Opposer’s DEL MONTE® mark and has a similar sound and commercial impression.
`
`23.
`
`If Applicant is permitted to register the mark in the ’695 Application for the goods
`
`recited in the Application, confusion in the relevant trade and public is likely to result, which will
`
`damage and injure Opposer and, therefore, the mark should not register.
`
`DMEAST #43677433 v1
`
`4
`
`
`
`
`
`24.
`
`Applicant’s alleged mark in the ’695 Application when used in association with
`
`the goods identified in the Application, is likely to cause dilution of Opposer’s famous DEL
`
`MONTE® Marks and, therefore, the mark should not register.
`
`25.
`
`Any defect, objection to, or fault found with Applicant’s goods under the mark in
`
`the ’695 Application would necessarily reflect on and seriously injure the reputation that
`
`Opposer has established for its goods and business.
`
`26.
`
`If Applicant is granted a registration for the mark herein opposed, it would obtain
`
`thereby at least a prima facie exclusive right to use the mark in connection with the goods recited
`
`in the Application. Such registration would be a source of damage and injury to Opposer.
`
`WHEREFORE, Del Monte Foods, Inc. prays that registration of the mark of
`
`Application Serial No. 88/688,695 in International Class 33 be refused and that this Opposition
`
`be sustained.
`
`
`
`Dated: February 17, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`By:_/s/ Hara K. Jacobs__________________
`Hara K. Jacobs
`Jodi A. DeSchane
`BALLARD SPAHR LLP
`1735 Market Street, 51st Floor
`Philadelphia, Pennsylvania 19103-7599
`(215) 665-8500
`
`ATTORNEYS FOR OPPOSER
`
`
`
`DMEAST #43677433 v1
`
`5
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`2/17/2021
`
`Trademark Electronic Search System (TESS)
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`DEL MONTE
`IC 032. US 045. G & S: SOFT DRINKS. FIRST USE: 19640423. FIRST USE IN COMMERCE: 19640424
`
`Word Mark
`Goods and
`Services
`Mark Drawing
`Code
`Serial Number 72240255
`Filing Date
`March 7, 1966
`Current Basis
`1A
`Original Filing
`1A
`Basis
`Registration
`Number
`Registration
`Date
`Owner
`
`(1) TYPED DRAWING
`
`0824504
`
`February 21, 1967
`
`(REGISTRANT) CALIFORNIA PACKING CORPORATION CORPORATION NEW YORK 215 FREMONT ST.
`SAN FRANCISCO CALIFORNIA
`
`(LAST LISTED OWNER) DEL MONTE FOODS, INC. CORPORATION DELAWARE 3003 Oak Road Legal
`Department Walnut Creek CALIFORNIA 94597
`ASSIGNMENT RECORDED
`
`Hara K. Jacobs
`
`0075958;0641111;AND OTHERS
`
`TRADEMARK
`PRINCIPAL
`SECT 15. SECTION 8(10-YR) 20170810.
`3RD RENEWAL 20170810
`LIVE
`
`Assignment
`Recorded
`Attorney of
`Record
`Prior
`Registrations
`Type of Mark
`Register
`Affidavit Text
`Renewal
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`Mark
`Drawing
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`DEL MONTE
`IC 032. US 045. G & S: SOFT DRINKS. FIRST USE: 19640423. FIRST USE IN COMMERCE: 19640424
`
`IC 029 030. US 046. G & S: CANNED VEGETABLES, CANNED FRUITS, CANNED FRUIT AND VEGETABLE
`JUICES, CANNED FISH, DRIED FRUITS, PICKLES, VEGETABLE RELISHES, HOT PEPPERS, AND CATSUP.
`FIRST USE: 19641030. FIRST USE IN COMMERCE: 19641030
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`05.11.04 - Tomatoes
`26.03.28 - Miscellaneous designs with overall oval shape, including amoeba-like shapes and irregular ovals ; Oval
`shape (miscellaneous overall shape)
`72240048
`
`Serial
`Number
`Filing Date March 3, 1966
`Current
`1A
`Basis
`Original
`Filing Basis 1A
`Registration
`0827921
`Number
`Registration
`Date
`Owner
`
`April 25, 1967
`
`(REGISTRANT) CALIFORNIA PACKING CORPORATION CORPORATION NEW YORK 215 FREMONT ST. SAN
`FRANCISCO CALIFORNIA
`
`(LAST LISTED OWNER) DEL MONTE FOODS, INC. CORPORATION DELAWARE 3003 Oak Road Legal
`Department Walnut Creek CALIFORNIA 94597
`ASSIGNMENT RECORDED
`
`Hara K. Jacobs
`
`Assignment
`Recorded
`Attorney of
`Record
`
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`2/17/2021
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`Registrations
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`Register
`PRINCIPAL
`Affidavit Text SECT 15. SECTION 8(10-YR) 20170913.
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`Goods and
`Services
`
`DEL MONTE
`(CANCELLED) IC 032. US 045. G & S: [ SOFT DRINKS ]. FIRST USE: 19640423. FIRST USE IN COMMERCE:
`19640424
`
`IC 001 005 029 030 031 032. US 046. G & S: FRESH AND CANNED VEGETABLES, FRESH AND CANNED
`FRUITS, CANNED FRUIT AND VEGETABLE JUICES, [ CANNED FISH, ] DRIED FRUITS, PICKLES,
`VEGETABLE RELISHES, HOT PEPPERS, AND CATSUP. FIRST USE: 18911001. FIRST USE IN COMMERCE:
`18911001
`
`(1) TYPED DRAWING
`
`72325278
`
`April 23, 1969
`1A
`
`Mark
`Drawing
`Code
`Serial
`Number
`Filing Date
`Current
`Basis
`Original
`Filing Basis 1A
`Change In
`Registration CHANGE IN REGISTRATION HAS OCCURRED
`Registration
`0881339
`Number
`Registration
`Date
`Owner
`
`November 25, 1969
`
`(REGISTRANT) DEL MONTE CORPORATION CORPORATION NEW YORK 215 FREMONT ST. SAN
`FRANCISCO CALIFORNIA 94119
`
`(LAST LISTED OWNER) DEL MONTE FOODS, INC. CORPORATION DELAWARE 205 N. Wiget Lane Legal
`Department Walnut Creek CALIFORNIA 94598
`ASSIGNMENT RECORDED
`
`Hara K. Jacobs
`
`Assignment
`Recorded
`Attorney of
`Record
`Prior
`Registrations 0075958;0827921;AND OTHERS
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text SECT 15. SECTION 8(10-YR) 20191212. PARTIAL SECTION 8(10-YR) 20100115.
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`Live/Dead
`Indicator
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`4TH RENEWAL 20191212
`LIVE
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`Goods and
`Services
`
`DEL MONTE QUALITY
`IC 029. US 046. G & S: processed vegetables, processed fruits, [ seafood, ] dried fruits and raisins, sauerkraut
`and canned peppers. FIRST USE: 19400100. FIRST USE IN COMMERCE: 19400100
`
`IC 030. US 046. G & S: vegetable relishes, tomato-based sauces, and catsup. FIRST USE: 19400100. FIRST
`USE IN COMMERCE: 19400100
`
`IC 032. US 045 046 048. G & S: canned fruit and vegetable juices and drinks consisting primarily of fruit juice and
`water. FIRST USE: 19400100. FIRST USE IN COMMERCE: 19400100
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`Mark Drawing
`Code
`Design
`Search Code
`
`26.03.28 - Miscellaneous designs with overall oval shape, including amoeba-like shapes and irregular ovals ;
`Oval shape (miscellaneous overall shape)
`26.11.02 - Plain single line rectangles ; Rectangles (single line)
`26.11.20 - Rectangles inside one another
`Serial Number 75571949
`Filing Date
`October 15, 1998
`Current Basis 1A
`Original Filing
`1A
`Basis
`Published for
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
`
`September 7, 1999
`
`2295935
`
`November 30, 1999
`
`(REGISTRANT) DEL MONTE CORPORATION CORPORATION NEW YORK One Market, P.O. Box 193575 San
`Francisco CALIFORNIA 941193575
`
`(LAST LISTED OWNER) DEL MONTE FOODS, INC. CORPORATION DELAWARE 205 N. Wiget Lane Legal
`Department Walnut Creek CALIFORNIA 94598
`ASSIGNMENT RECORDED
`
`Assignment
`
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`Hara K. Jacobs
`
`Trademark Electronic Search System (TESS)
`
`2/17/2021
`Recorded
`Attorney of
`Record
`Prior
`0137963;0154893;0286243;0827921;0828266;0881338;0881339;1094641;1144394;
`Registrations
`1455602;1486403;2094082;2094090;2127407;2183042;AND OTHERS
`Disclaimer
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "QUALITY" APART FROM THE MARK AS SHOWN
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20191212.
`Renewal
`2ND RENEWAL 20191212
`Live/Dead
`LIVE
`Indicator
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`Trademark Electronic Search System (TESS)
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`Word Mark
`Goods and
`Services
`
`DEL MONTE QUALITY
`IC 029. US 046. G & S: Processed vegetables, processed fruits, dried fruits, raisins, canned peppers and
`sauerkraut [, milk-based drinks with fruit juice and water ]. FIRST USE: 19400100. FIRST USE IN COMMERCE:
`19400100
`
`IC 030. US 046. G & S: vegetable relishes, tomato-based sauces and catsup [, tea-based drinks with fruit juice
`and water ]. FIRST USE: 19400100. FIRST USE IN COMMERCE: 19400100
`
`IC 032. US 045 046 048. G & S: Canned fruit and vegetable juices and drinks consisting primarily of fruit juice and
`water. FIRST USE: 19400100. FIRST USE IN COMMERCE: 19400100
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`26.11.02 - Plain single line rectangles ; Rectangles (single line)
`26.11.21 - Rectangles that are completely or partially shaded
`75572051
`
`October 16, 1998
`1A
`
`2302024
`
`December 21, 1999
`
`Mark
`Drawing
`Code
`Design
`Search Code
`Serial
`Number
`Filing Date
`Current
`Basis
`Original
`Filing Basis 1A
`Published for
`September 28, 1999
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
`
`(REGISTRANT) DEL MONTE CORPORATION CORPORATION NEW YORK One Market P. O. Box 193575 San
`Francisco CALIFORNIA 941193575
`
`(LAST LISTED OWNER) DEL MONTE FOODS, INC. CORPORATION DELAWARE Legal Department 205 N.
`Wiget Lane Walnut Creek CALIFORNIA 94598
`tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:wnt0n1.7.1
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`
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`ASSIGNMENT RECORDED
`
`Hara K. Jacobs
`
`Trademark Electronic Search System (TESS)
`
`2/17/2021
`Assignment
`Recorded
`Attorney of
`Record
`Prior
`Registrations 0827921;0881338;0881339
`Disclaimer
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "QUALITY" APART FROM THE MARK AS SHOWN
`Description
`The mark is lined for the colors, red, green and yellow.
`of Mark
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20191231.
`Renewal
`2ND RENEWAL 20191231
`Live/Dead
`LIVE
`Indicator
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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