Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1122962
`03/25/2021
`
`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
`
`IPA211550
`
`Applicant Information
`
`Application No.
`
`90179209
`
`Publication date
`
`03/02/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`03/25/2021
`
`Opposition Peri-
`od Ends
`
`04/01/2021
`
`UPL Corporation Limited
`5TH FLOOR, NEWPORT BUILDING
`LOUIS PASTEUR STREET
`PORT LOUIS
`MAURITIUS
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Herbicides, pesticides, insecticides, fungi-
`cides, vermicides, rodenticides, weedicides, preparations for killing weeds and destroying vermin
`
`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.
`
`2482623
`
`Application Date
`
`02/27/1997
`
`
`ESTTA1122962
`03/25/2021
`
`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
`
`IPA211550
`
`Applicant Information
`
`Application No.
`
`90179209
`
`Publication date
`
`03/02/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`03/25/2021
`
`Opposition Peri-
`od Ends
`
`04/01/2021
`
`UPL Corporation Limited
`5TH FLOOR, NEWPORT BUILDING
`LOUIS PASTEUR STREET
`PORT LOUIS
`MAURITIUS
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Herbicides, pesticides, insecticides, fungi-
`cides, vermicides, rodenticides, weedicides, preparations for killing weeds and destroying vermin
`
`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.
`
`2482623
`
`Application Date
`
`02/27/1997
`
`
`
`Registration Date
`
`08/28/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`ACTARA
`
`NONE
`
`Class 005. First use: First Use: 1998/04/08 First Use In Commerce: 1998/04/08
`agricultural insecticides
`
`Attachments
`
`NoticeOfOppositionIPA211550.pdf(274305 bytes )
`
`Signature
`
`/s Jovan N. Jovanovic/
`
`Name
`
`Date
`
`Jovan N. Jovanovic
`
`03/25/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Syngenta Participations AG
`
`
`
`v.
`
`
`UPL Corporation Limited
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`Opposition No.__________________
`
`Serial No.: 90/179,209
`
`Mark: ARATKA
`
`
`
`
`
`
`
`
`
`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. 90/179,209
`
`(“Application”) for the mark ARATKA (“Applicant’s Mark”), filed on September 14, 2020, by
`
`UPL Corporation Limited, a Limited Company organized under the laws of Mauritius having an
`
`address of 5th Floor, Newport Building, Louis Pasteur Street, Port Louis, Mauritius (“Applicant”)
`
`and hereby opposes the same.
`
`
`
`
`
`
`
`
`
`As grounds for opposition, it is alleged:
`
`1.
`
`By the Application filed on September 14, 2020, Applicant seeks to obtain
`
`registration on the Principal Register for the trademark ARATKA for Herbicides, pesticides,
`
`insecticides, fungicides, vermicides, rodenticides, weedicides, preparations for killing weeds and
`
`destroying vermin in International Class 005. (“Applicant’s Goods”). The Application was filed
`
`based on Applicant’s bona fide intent to use the subject mark in commerce.
`
`2.
`
`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, crop protection, healthy soil and
`
`better vegetable availability on the shelf.
`
`3.
`
`Since at least as early as April 8, 1998, long before Applicant filed the
`
`Application, Opposer has provided and continues to provide its goods in connection with
`
`Opposer’s registered ACTARA (“Opposer’s Mark).
`
`4.
`
`Opposer through substantial use and promotion, has acquired significant goodwill
`
`and consumer recognition it its ACTARA mark. Opposer’s Mark is strong and well-known.
`
`5.
`
`To protect its substantial goodwill and investment in its ACTARA mark, in
`
`addition to any common law rights, Opposer is the owner of U.S. Registration No. 2482623 for
`
`Agricultural insecticides in International Class 005. Opposer first used the ACTARA
`
`Registration for over twenty-two and a half (22.5) years before Applicant filed the Application.
`
`True and correct copies of the specifics of the ACTARA Registration obtained from the PTO’s
`
`TESS database is attached hereto as Exhibit A and made of record.
`
`6.
`
`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 ACTARA 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 ACTARA mark shown therein, all as provided
`
`in Sections 7(b), 22 and 33(a) of the Trademark Act, as amended.
`
`7.
`
`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.
`
`8.
`
`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 ACTARA mark prior to the filing date of the Application.
`
`9.
`
`In addition to the protection afforded to Opposer by its Federal trademark
`
`registration, Opposer has extensive common law rights in its ACTARA mark in connection with
`
`the goods with which Opposer uses the ACTARA 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 ACTARA mark in interstate commerce for over twenty-two
`
`and half (22.5) years. Opposer’s common law rights in its ACTARA mark were established long
`
`before and predate the filing of the Application.
`
`
`
`10.
`
`Opposer additionally relies on the foregoing senior common law trademark rights
`
`in Opposer’s ACTARA mark as a ground for this Opposition.
`
`11.
`
`Applicant’s ARATKA mark and Opposer’s ACTARA mark are highly similar in
`
`sight, sound, meaning and commercial impression.
`
`12.
`
`Applicant’s Goods are highly related to Opposer’s Goods.
`
`13.
`
`Applicant’s consumers and trademark channels are identical or overlapping with
`
`Opposer’s consumers and trade channels.
`
`14.
`
`Applicant’s use of the ARATKA mark will result in confusion by third parties
`
`with Opposer’s ACTARA mark.
`
`15.
`
`In view of the above, it is alleged that Applicant’s ARATKA mark so resembles
`
`Opposer’s ACTARA 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).
`
`16.
`
`By reason of the foregoing, Opposer will be damaged by the Registration of U.S.
`
`Application Serial No. 90/179,209 for ARATKA.
`
`
`
`
`
`
`
`WHEREFORE, Opposer requests that U.S. Trademark Application Serial No. 90/179,209
`
`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 25, 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
`
`
`
`3/24/2021
`
`Trademark Electronic Search System (TESS)
`
`United States Patent and Trademark Office
`
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`ACTARA
`IC 005. US 006 018 044 046 051 052. G & S: agricultural insecticides. FIRST USE: 19980408. FIRST USE
`IN COMMERCE: 19980408
`(1) TYPED DRAWING
`
`Word Mark
`Goods and
`Services
`Mark Drawing
`Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing
`Basis
`Published for
`Opposition
`Registration
`Number
`Registration Date August 28, 2001
`Owner
`(REGISTRANT) NOVARTIS AG CORPORATION SWITZERLAND Schwarzwaldallee 215 Basel
`SWITZERLAND CH4058
`
`75248677
`February 27, 1997
`1A
`1B
`
`November 4, 1997
`
`2482623
`
`(LAST LISTED OWNER) SYNGENTA PARTICIPATIONS AG CORPORATION SWITZERLAND
`Schwarzaldallee 215 Basel SWITZERLAND CH-4058
`Jovan N. Jovanovic
`
`Attorney of
`Record
`Type of Mark
`Register
`Affidavit Text
`Renewal
`Live/Dead
`Indicator
`https://tmsearch.uspto.gov/bin/showfield?f=doc&state=4803:gy8hu7.2.4
`
`TRADEMARK
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20101104.
`1ST RENEWAL 20101104
`LIVE
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`1/2
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`
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`3/24/2021
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`Trademark Electronic Search System (TESS)
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`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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