Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1122661
`03/24/2021
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`SYNGENTA PARTICIPATIONS AG
`
`Aktiengesellschaft
`
`Citizenship
`
`Switzerland
`
`SCHWARZWALDALLEE 215
`BASEL, 4058
`SWITZERLAND
`
`JOVAN N. JOVANOVIC
`THE WATSON IP GROUP, PLC
`3133 HIGHLAND DR.
`SUITE 200
`HUDSONVILLE, MI 49426
`UNITED STATES
`Primary Email: docketing@watson-ip.com
`Secondary Email(s): jjovanovic@watson-ip.com, sstumpo@watson-ip.com,
`global.trademarks@syngenta.com
`6167971000
`
`Docket Number
`
`IPA211552
`
`Applicant Information
`
`Application No.
`
`88874261
`
`Publication date
`
`02/23/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`03/24/2021
`
`Opposition Peri-
`od Ends
`
`03/25/2021
`
`Bladerunner Farms, Inc.
`802 HOWARD ROAD
`POTEET, TX 78065
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 031. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Sod
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2777904
`
`Registration Date
`
`10/28/2003
`
`Application Date
`
`08/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA1122661
`03/24/2021
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`SYNGENTA PARTICIPATIONS AG
`
`Aktiengesellschaft
`
`Citizenship
`
`Switzerland
`
`SCHWARZWALDALLEE 215
`BASEL, 4058
`SWITZERLAND
`
`JOVAN N. JOVANOVIC
`THE WATSON IP GROUP, PLC
`3133 HIGHLAND DR.
`SUITE 200
`HUDSONVILLE, MI 49426
`UNITED STATES
`Primary Email: docketing@watson-ip.com
`Secondary Email(s): jjovanovic@watson-ip.com, sstumpo@watson-ip.com,
`global.trademarks@syngenta.com
`6167971000
`
`Docket Number
`
`IPA211552
`
`Applicant Information
`
`Application No.
`
`88874261
`
`Publication date
`
`02/23/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`03/24/2021
`
`Opposition Peri-
`od Ends
`
`03/25/2021
`
`Bladerunner Farms, Inc.
`802 HOWARD ROAD
`POTEET, TX 78065
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 031. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Sod
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2777904
`
`Registration Date
`
`10/28/2003
`
`Application Date
`
`08/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`PRIMO MAXX
`
`NONE
`
`Class 001. First use: First Use: 1999/09/15 First Use In Commerce: 1999/09/15
`PLANT GROWTH REGULATORS FOR AGRICULTURAL USE, NAMELY TURF
`GROWTH REGULATOR
`Class 005. First use: First Use: 1999/09/15 First Use In Commerce: 1999/09/15
`FUNGICIDES FOR AGRICULTURAL AND DOMESTIC USE
`
`Attachments
`
`NoticeOfOppositionIPA211552.pdf(270314 bytes )
`
`Signature
`
`/s Jovan N. Jovanovic/
`
`Name
`
`Date
`
`Jovan N. Jovanovic
`
`03/24/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Syngenta Participations AG
`
`
`
`v.
`
`
`Bladerunner Farms, Inc.
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`Opposition No.__________________
`
`Serial No.: 88/874,261
`
`Mark:
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Commissioner for Trademarks
`P.O. BOX 1451
`Alexandria, VA 22313-1451
`
`
`Dear Sir or Madam:
`
`
`
`Syngenta Participations AG (“Opposer”), a Aktiengesellschaft, organized under the laws
`
`of Switzerland, having an address of Schwarzwaldallee 215, Basel, 4058, Switzerland, believes it
`
`will be damaged by registration of U.S. Trademark Application Serial No. 88/874,261
`
`(“Application”) for the mark
`
`, hereinafter referred to as PRIMO ZOYSIA
`
`(“Applicant’s Mark”), filed on April 16, 2020, by Bladerunner Farms, Inc, a Texas Corporation
`
`having an address of 802 Howard Road, Poteet, Texas, United States, 78065 (“Applicant”) and
`
`hereby opposes the same.
`
`
`
`
`
`
`
`
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on April 16, 2020, Applicant seeks to obtain registration
`
`on the Principal Register for the trademark PRIMO ZOYSIA for Sod in International Class 031.
`
`(“Applicant’s Goods”). The Application was filed based on Applicant’s bona fide intent to use
`
`the subject mark in commerce.
`
`2.
`
`Through entry of the disclaimer of “PRIMO ZOYSIA”, Applicant makes no claim
`
`to the exclusive right to use “PRIMO ZOYSIA” apart from the mark as shown.
`
`3.
`
`Opposer is a leading global agriculture company that helps improve global food
`
`security by enabling millions of farmers to make better use of available resources. Opposer’s
`
`goods support a broad array of applications, but not limited to, growth regulation for turf, crop
`
`protection, healthy soil and better vegetable availability on the shelf.
`
`4.
`
`Since at least as early as September 15, 1999, long before Applicant filed the
`
`Application, Opposer has provided and continues to provide its goods in connection with
`
`Opposer’s registered PRIMO MAXX (“Opposer’s Mark).
`
`5.
`
`Opposer through substantial use and promotion, has acquired significant goodwill
`
`and consumer recognition it its PRIMO MAXX mark. Opposer’s Mark is strong and well-
`
`known.
`
`6.
`
`To protect its substantial goodwill and investment in its PRIMO MAXX mark, in
`
`addition to any common law rights, Opposer is the owner of U.S. Registration No. 2777904 for
`
`Plant growth regulators for agricultural use, namely turf growth regulation in International
`
`Class 001 and Fungicides for agricultural and domestic use in International Class 005. Opposer
`
`first used the PRIMO MAXX Registration for over twenty-one and a half (21.5) years before
`
`Applicant filed the Application. True and correct copies of the specifics of the PRIMO MAXX
`
`
`
`Registration obtained from the PTO’s TESS database is attached hereto as Exhibit A and made
`
`of record.
`
`7.
`
`Hereinafter in the Notice of Opposition, the goods identified in Opposer’s Federal
`
`registration as specified in Paragraph 5 above are valid, subsisting, unrevoked, and uncancelled.
`
`As such, they constitute prima facie evidence of the validity of the registered mark and of the
`
`registration thereof, Opposer’s ownership of the PRIMO MAXX mark shown therein, and
`
`Opposer’s exclusive right to use the registered mark in commerce in connection with the goods
`
`named therein, without condition or limitation. The Federal registration also constitutes notice to
`
`Applicant of Opposer’s claim of ownership of the PRIMO MAXX mark shown therein, all as
`
`provided in Sections 7(b), 22 and 33(a) of the Trademark Act, as amended.
`
`8.
`
`Further, Opposer’s Federal registration as specified in Paragraph 5 above is
`
`incontestable. Section 15 of the Trademark Act, 15 U.S.C § 1065. Therefore, the registration
`
`constitutes conclusive evidence of the validity of the registered mark and of the registration of
`
`the mark, of Opposer’s ownership of its mark, and of Opposer’s exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Lanham Act, 15 U.S.C. § 1115.
`
`9.
`
`Opposer’s first use date, filing date, and registration date for the Federal
`
`registration specified in Paragraph 5 substantially precede the Application’s filing date.
`
`Accordingly, Applicant knew or should have known of Opposer’s ownership, use and
`
`registration of the PRIMO MAXX mark prior to the filing date of the Application.
`
`10.
`
`In addition to the protection afforded to Opposer by its Federal trademark
`
`registration, Opposer has extensive common law rights in its PRIMO MAXX mark in connection
`
`with the goods with which Opposer uses the PRIMO MAXX mark, including without limitation,
`
`Opposer’s Goods, throughout the United States. Opposer has acquired such common law rights
`
`
`
`through long-standing, exclusive use of its PRIMO MAXX mark in interstate commerce for over
`
`twenty-one and half (21.5) years. Opposer’s common law rights in its PRIMO MAXX mark
`
`were established long before and predate the filing of the Application.
`
`11.
`
`Opposer additionally relies on the foregoing senior common law trademark rights
`
`in Opposer’s PRIMO MAXX mark as a ground for this Opposition.
`
`12.
`
`Applicant’s PRIMO ZOYSIA mark and Opposer’s PRIMO MAXX mark are
`
`highly similar in sight, sound, meaning and commercial impression.
`
`13.
`
`Applicant’s Goods are highly related to Opposer’s Goods.
`
`14.
`
`Applicant’s consumers and trademark channels are identical or overlapping with
`
`Opposer’s consumers and trade channels.
`
`15.
`
`Applicant’s use of the PRIMO ZOYSIA mark will result in confusion by third
`
`parties with Opposer’s PRIMO MAXX mark.
`
`16.
`
`In view of the above, it is alleged that Applicant’s PRIMO ZOYSIA mark so
`
`resembles Opposer’s PRIMO MAXX mark that Applicant’s mark will likely cause, and continue
`
`to cause, confusion or cause mistake or deceive under Section 2(d) of the Trademark Act, 15
`
`U.S.C. § 1052(d). In view of Opposer’s prior statutory and common law trademark rights,
`
`Applicant is not entitled to registration of Applicant’s mark subject to the Application for the
`
`identified Applicant’s Goods pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §
`
`1052(d).
`
`17.
`
`By reason of the foregoing, Opposer will be damaged by the Registration of U.S.
`
`Application Serial No. 88/874,261 for PRIMO ZOYSIA mark.
`
`
`
`
`
`
`
`WHEREFORE, Opposer requests that U.S. Trademark Application Serial No. 88/874,261
`
`be rejected and stricken, that no registration be issued thereon to Applicant, and that this opposition
`
`be sustained in favor of Opposer.
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
`Dated: March 24, 2021
`
`
`
`
`
`
`
`
`THE WATSON IP GROUP, PLC
`
`
`
`/s Jovan N. Jovanovic/
`
`Jovan N. Jovanovic (Reg. No. 40039)
`Samantha Stumpo
`3133 Highland Drive, Suite 200
`Hudsonville, Michigan 49426
`Tel: (616) 797-1000
`Fax: (866) 369-7391
`jjovanovic@watson-ip.com
`sstumpo@watson-ip.com
`
`Attorneys for Opposer
`Syngenta Participations AG
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`3/23/2021
`
`Trademark Electronic Search System (TESS)
`
`United States Patent and Trademark Office
`
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`TESS)
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`Word Mark
`Goods and
`Services
`
`PRIMO MAXX
`IC 001. US 001 005 006 010 026 046. G & S: PLANT GROWTH REGULATORS FOR AGRICULTURAL USE,
`NAMELY TURF GROWTH REGULATOR. FIRST USE: 19990915. FIRST USE IN COMMERCE: 19990915
`
`IC 005. US 006 018 044 046 051 052. G & S: FUNGICIDES FOR AGRICULTURAL AND DOMESTIC USE. FIRST
`USE: 19990915. FIRST USE IN COMMERCE: 19990915
`
`(1) TYPED DRAWING
`
`78150165
`
`August 2, 2002
`1A
`
`2777904
`
`October 28, 2003
`
`Mark
`Drawing
`Code
`Serial
`Number
`Filing Date
`Current
`Basis
`Original
`Filing Basis 1A
`Published for
`August 5, 2003
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
`
`(REGISTRANT) Syngenta Investment Corp. CORPORATION DELAWARE c/o Trademark Department 410 Swing
`Road Greensboro NORTH CAROLINA 27409
`
`(LAST LISTED OWNER) SYNGENTA PARTICIPATIONS AG CORPORATION SWITZERLAND Schwarzwaldallee
`215 Basel SWITZERLAND CH-4058
`ASSIGNMENT RECORDED
`
`Jovan N. Jovanovic
`
`Assignment
`Recorded
`Attorney of
`Record
`Prior
`Registrations 1742090
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20130126.
`Renewal
`1ST RENEWAL 20130126
`
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